Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 1 of 18 PageID #: 7416
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`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
`
`
`Defendants.
`
`
`
`
`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
`
`JURY TRIAL DEMANDED
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
`
`§
`Case No. 2:21-cv-00072-JRG
`(LEAD CASE)
`§
`§
`
`JURY TRIAL DEMANDED
`§
`§
`
`§
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
`
`
`Defendant.
`
`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO DEFENDANT UBER TECHNOLOGIES, INC.,
`D/B/A UBER’S MOTION TO STAY PENDING PATENT OFFICE
`PROCEEDINGS REGARDING THE ASSERTED PATENTS (DKT. 180)
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 2 of 18 PageID #: 7417
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`TABLE OF CONTENTS
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`Page(s)
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`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1
`
`BACKGROUND ................................................................................................................ 2
`
`LEGAL STANDARDS ...................................................................................................... 3
`
`ARGUMENT ...................................................................................................................... 5
`
`A.
`
`B.
`
`C.
`
`Defendants Have Not Shown That a Stay Will Simplify the Issues in this
`Case ......................................................................................................................... 5
`
`This Case is Not in its Infancy ................................................................................ 8
`
`AGIS Will Suffer Undue Prejudice if a Stay is Granted ........................................ 9
`
`V.
`
`CONCLUSION ................................................................................................................. 11
`
`
`
`
`i
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 3 of 18 PageID #: 7418
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Affinity Labs of Texas, LLC v. Dice Elecs.,
`LLC, No. 9:08-CV-163, 2009 WL 10296818 (E.D. Tex. 2009) .............................................10
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-361-JRG, Dkt. 219 (E.D. Tex. Feb. 9, 2021) ........................................................8
`
`AGIS Software Dev. LLC v. Google LLC,
`No. 2:19-cv-361-JRG, Dkt. 223 (E.D. Tex. July 28, 2021) ...................................................1, 8
`
`Ambato Media, LLC v. Clarion Co.,
`No. 2:09-cv-242-JRG, 2012 WL 194172 (E.D. Tex. Jan. 23, 2012) .........................................9
`
`Cellular Comm’s Equip. LLC v. HTC Corp.,
`6:16-cv-475-KNM, Dkt. 275 (E.D. Tex. May 8, 2018) .............................................................9
`
`Cellular Commc’ns Equip. LLC v. HTC Corp.,
`No. 6:16-cv-475-KNM, 2018 WL 4261194 (E.D. Tex. May 8, 2018) ......................................6
`
`Comcast Cable Commc’ns Corp., LLC v. Finisar Corp.,
`No. C 06-04206 WHA, 2007 WL 1052883 (N.D. Cal. Apr. 5, 2007) .......................................3
`
`Cooper Notification, Inc. v. Twitter, Inc.,
`No. 09-865-LPS, 2010 WL 5149351 (D. Del. Dec. 13, 2010) ..................................................9
`
`EMG Tech., LLC v. Apple, Inc.,
`No. 6:09 CV 367, 2010 WL 10029483 (E.D. Tex. Nov. 15, 2010) ...........................................9
`
`Eon Corp IP Holdings LLC v. Sensus USA Inc.,
`No. 6:09-cv-116, 2009 WL 9506927 (E.D. Tex. Dec. 18, 2009) ........................................7, 10
`
`Freeny v. Apple, Inc.,
`No. 2:13–cv–00361–WCB, 2014 WL 3611948 (E.D. Tex. July 22, 2014) ..............................5
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`721 F.3d 1330 (Fed. Cir. 2013)..................................................................................................7
`
`Greenthread LLC v. Samsung Elecs. Co.,
`2:19-cv-00147-JRG, Dkt. 43 (E.D. Tex. Feb. 4, 2020) .............................................................5
`
`Intellectual Ventures II LLC v. BITCO Gen. Ins. Corp.,
`No. 6:15-CV-59, 2016 WL 4394485 (E. D. Tex. May 12, 2016) .............................................4
`
`ii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 4 of 18 PageID #: 7419
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`KIPB LLC v. Samsung Elecs. Co.,
`No. 2:19-cv-00056-JRG-RSP, Dkt. 55 (E.D. Tex. Nov. 20, 2019) ...........................................4
`
`MacroSolve, Inc. v. Antenna Software, Inc.,
`No. 6:11-cv-287-MHS-KNM, 2013 WL 7760889 (E.D. Tex. Aug. 30, 2013) .....................4, 6
`
`Maxell Ltd. v. Apple Inc.,
`No. 5:19-cv-00036-RWS, Dkt. 298 (E.D. Tex. Apr. 27, 2020) .................................................6
`
`Murata Mach. USA v. Daifuku Co.,
`830 F. 3d 1357 (Fed. Cir. 2016).................................................................................................4
`
`NFC Techs. LLC v. HTC Am., Inc.,
`No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ..............................4, 5
`
`Oyster Optics, LLC v. Infinera Corp.,
`No. 2:19-cv-00257-JRG, Dkt. 62 (E.D. Tex. Feb. 4, 2020) ......................................................5
`
`Parthenon Unified Memory Architecture LLC v. HTC Corp.,
`No. 2:14-cv-00690-RSP, 2016 WL 3365855 (E.D. Tex. Jun. 17, 2016) ...................................6
`
`Peloton Interactive, Inc. v. Flywheel Sports, Inc.,
`No. 2:18-cv-00390-RWS-RSP, Dkt. 104 (E.D. Tex. Aug. 14, 2019)........................................6
`
`Procter & Gamble Co. v. Kraft Foods Glob., Inc.,
`549 F.3d 842 (Fed. Cir. 2008)....................................................................................................4
`
`Ramot At Tel Aviv Univ. Ltd. v. Cisco Sys., Inc.,
`2:19-cv-00225-JRG, Dkt. 54 (E.D. Tex. Feb. 4, 2020) .............................................................5
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 (E.D. Tex. June 14, 2016) ......................9, 11
`
`Realtime Data LLC v. Actian Corp.,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov. 29, 2016) ..........................3
`
`Realtime Data, LLC v. Hewlett Packard Enter. Co.,
`No. 6:16-cv-00086-RWS-JDL, 2017 WL 3712916 (E.D. Tex. Feb. 3, 2017) ..........................4
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`No. 2:13-cv-213-JRG-RSP, 2015 WL 627887 (E.D. Tex. Jan. 29, 2015) ..............................10
`
`Secure Axcess, LLC v. U.S. Bank Nat’l Ass’n,
`No. 6:13-CV-717, 2014 WL 11394519 (E.D. Tex. Oct. 20, 2014) .........................................10
`
`Solas OLED Ltd. v. Samsung Display Co.,
`2:19-cv-00152-JRG, Dkt. 69 (E.D. Tex. Feb. 4, 2020) .............................................................5
`
`iii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 5 of 18 PageID #: 7420
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`Soverain Software LLC v. Amazon.com, Inc.,
`356 F. Supp. 2d 660 (E.D. Tex. 2005) .......................................................................................3
`
`Thinkoptics, Inc. v. Nintendo of Am., Inc.,
`No. 6:11-cv-455, Dkt. 345 (E.D. Tex. Feb. 27, 2014) ...............................................................6
`
`Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
`No. 2:19-cv-00125-JRG, Dkt. 34 (E.D. Tex. Feb. 4, 2020) ..................................................4, 5
`
`Statutes
`
`35 U.S.C. § 302 ..............................................................................................................................10
`
`
`iv
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 6 of 18 PageID #: 7421
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
`
`undersigned counsel, hereby submits this response in opposition to Defendant Uber Technologies,
`
`Inc., d/b/a Uber’s (“Defendant” or “Uber”) Motion to Stay Pending Patent Office Proceedings
`
`Regarding the Asserted Patents (Dkt. 180) (the “Motion”).
`
`I.
`
`INTRODUCTION
`
`Defendant Uber asks this Court, once again, to stay this case. Uber has already filed a
`
`motion to stay pending what it purports is a standing issue and filed a request for hearing regarding
`
`its motion to dismiss. The Court denied Uber’s motion to stay on June 15, 2021 (Dkt. 85) stating
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`that it would not “stay the case to resolve this alleged issue.” Uber filed a motion to compel and
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`renewed motion to stay for the Court to resolve the alleged standing issue. The Court has not yet
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`ruled on Uber’s renewed motion. Uber now files the current motion to stay based on its filing of
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`three petitions for inter partes review (“IPR”) and two requests for ex parte reexamination.
`
`However, the PTAB has not instituted any of the IPR petitions or granted any of the ex parte
`
`reexamination requests. Thus, Uber’s request is premature.
`
`Uber’s premature request is also based on the improper speculation that the PTAB will
`
`institute review and ultimately cancel patent claims. Uber ignores that numerous IPR petitions
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`have been filed against the Asserted Patents and nearly all of those petitions were denied
`
`institution. Uber ignores that numerous IPR petitions have been filed against other AGIS patents
`
`and those reexaminations have been resolved in favor of AGIS. AGIS Software Dev. LLC v.
`
`Google LLC, No. 2:19-cv-361-JRG, Dkt. 223 (E.D. Tex. July 28, 2021). Moreover, the Examiners
`
`in the ex parte reexamination of the ’970 Patent have indicated allowable subject matter in that
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`proceeding. With regard to Uber’s requests for ex parte reexamination, there is neither evidence
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`nor any indication that its requests will be granted.
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 7 of 18 PageID #: 7422
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`In light of the foregoing, Uber has not, and cannot, satisfy its burden to show that the
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`relevant factors weigh in favor of granting a stay of this litigation. First, Uber has not shown that
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`a stay will result in simplification of the issues in this case. Uber’s motion is based on improper
`
`speculation and fails to address all of the Asserted Patents. Second, this case is not in its infancy.
`
`The Complaint against Uber was filed on January 29, 2021 and the parties have and are continuing
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`to actively litigate this matter. The Court held a claim construction hearing on October 21, 2021,
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`fact discovery closed on November 3, 2021, and opening expert reports are due to be exchanged
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`today, November 8, 2021. A stay would be highly disruptive to the progress made by the Court
`
`and the parties in this case.
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`Lastly, an unnecessary stay would unduly burden AGIS. The PTAB is at least three months
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`away from determining whether to institute the IPR petitions. AGIS is due to file its pre-institution
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`preliminary responses this month, and Uber will likely request permission to file a reply to AGIS’s
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`preliminary responses. Uber’s requests for additional pre-institution briefing may delay any
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`institution decisions by weeks, if not months (hence the timing of this Motion). A stay of this
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`litigation would serve as an unnecessary delay tactic to pause an active litigation without reason.
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`Even if the IPRs are instituted and the reexamination requests are granted, an indefinite stay would
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`prevent AGIS from exercising its rights to defend its patents, particularly where one of the Asserted
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`Patents, the ’970 Patent, is not at issue in either of Uber’s IPR petitions or reexamination requests.
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`Accordingly, Uber’s Motion should be denied.
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`II.
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`BACKGROUND
`
`On January 29, 2021, AGIS filed a patent infringement actions against Uber Technologies,
`
`Inc., d/b/a Uber, alleging infringement of U.S. Patent Nos. 8,213,970 (the “’970 Patent”),
`
`7,630,724 (the “’724 Patent”), 7,031,728 (the “’728 Patent”), 10,299,100 (the “’100 Patent”); and
`
`10,341,838 (the “’838 Patent”). See AGIS Software Dev. LLC v. Uber Technologies, Inc., d/b/a
`
`2
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 8 of 18 PageID #: 7423
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`
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`Uber, No. 2:21-cv-00026-JRG (E.D. Tex. Jan. 29, 2021). The Court consolidated this action with
`
`the cases filed against Defendants T-Mobile USA, Inc. and T-Mobile US, Inc., Lyft, Inc., and
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`WhatsApp, Inc. See AGIS Software Dev. LLC v. T-Mobile USA, Inc. et al., No. 2:21-cv-00072-
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`JRG (E.D. Tex. Mar. 3, 2021) (Lead Case); AGIS Software Dev. LLC v. Lyft, Inc., No. 2:21-cv-
`
`00024-JRG (E.D. Tex. Jan. 29, 2021); and AGIS Software Dev. LLC v. WhatsApp, Inc., No. 2:21-
`
`cv-00029-JRG (E.D. Tex. Jan. 29, 2021).
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`On July 23, 2021, Uber filed three petitions for inter partes review against the ’838 and
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`’100 Patents. See IPR2021-01306; IPR2021-01307; IPR2021-01308. Patent Owner’s Preliminary
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`Responses are due November 9, 2021 with respect to IPR2021-01306 and November 12, 2021
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`with respect to IPR221-01307 and IPR2021-01308.
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`Uber also filed two requests for ex parte reexamination of the ’724 and ’728 Patents on
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`October 22, 2021. See Appl. No. 90/014,889; Appl. No. 90/014,890.
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`III. LEGAL STANDARDS
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`“In all cases before it, the Court places great importance on going to trial on the date set in
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`the scheduling order unless extraordinary circumstances arise.” Soverain Software LLC v.
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`Amazon.com, Inc., 356 F. Supp. 2d 660, 663 (E.D. Tex. 2005). Accordingly, courts have
`
`frequently cautioned against broadly granting requests for stays pending IPR proceedings.
`
`Realtime Data LLC v. Actian Corp., No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796, at *2 (E.D.
`
`Tex. Nov. 29, 2016) (“[T]here is no per se rule that patent cases should be stayed pending PTO
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`proceedings, because such a rule ‘would invite parties to unilaterally derail litigation.’”); Comcast
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`Cable Commc’ns Corp., LLC v. Finisar Corp., No. C 06-04206 WHA, 2007 WL 1052883, at *1
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`(N.D. Cal. Apr. 5, 2007) (“If litigation were stayed every time a claim in suit undergoes
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`reexamination, federal infringement actions would be dogged by fits and starts. Federal court
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`calendars should not be hijacked in this manner.”).
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 9 of 18 PageID #: 7424
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`“The Supreme Court has long recognized that district courts have broad discretion to
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`manage their dockets, including the power to grant a stay of proceedings.” Murata Mach. USA v.
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`Daifuku Co., 830 F. 3d 1357, 1362 (Fed. Cir. 2016) (quoting Procter & Gamble Co. v. Kraft Foods
`
`Glob., Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008)). In deciding whether to grant a stay pending
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`inter partes review, this Court typically considers: “(1) whether the stay will unduly prejudice the
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`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
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`including whether discovery is complete and a trial date has been set, and (3) whether the stay will
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`likely result in simplifying the case before the court.” Intellectual Ventures II LLC v. BITCO Gen.
`
`Ins. Corp., No. 6:15-CV-59, 2016 WL 4394485, at *2 (E. D. Tex. May 12, 2016) (quoting NFC
`
`Techs. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar.
`
`12, 2015)). While these factors pertain to stays pending inter partes review, the analysis is
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`substantially the same for reexamination proceedings. KIPB LLC v. Samsung Elecs. Co., No. 2:19-
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`cv-00056-JRG-RSP, Dkt. 55 (E.D. Tex. Nov. 20, 2019). The party seeking the stay bears the
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`burden of showing a stay is appropriate. Realtime Data, LLC v. Hewlett Packard Enter. Co., No.
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`6:16-cv-00086-RWS-JDL, 2017 WL 3712916, at *3 (E.D. Tex. Feb. 3, 2017). Courts in this
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`District do not generally grant stays before any action by the PTAB to institute or deny a party’s
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`petitions. See Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No. 2:19-cv-00125-JRG, Dkt. 34
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`(E.D. Tex. Feb. 4, 2020) (“It is the Court’s established practice to consider that motions to stay
`
`pending IPR proceedings that have not been instituted are inherently premature and should be
`
`denied as such. At this nascent stage, it is impossible for the Court to determine whether the stay
`
`will likely result in simplifying the [litigation].”) (citation omitted); MacroSolve, Inc. v. Antenna
`
`Software, Inc., No. 6:11-cv-287-MHS-KNM, 2013 WL 7760889, at *2 (E.D. Tex. Aug. 30, 2013)
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`(finding against a stay because of defendant’s speculation regarding the outcome of proceedings
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`4
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`

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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 10 of 18 PageID #: 7425
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`
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`at the PTAB where, as here, “reexamination [proceedings are] far from complete,” and because
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`the ultimate outcome is “unpredictable.”).
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`IV. ARGUMENT
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`A.
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`Defendants Have Not Shown That a Stay Will Simplify the Issues in
`this Case
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`This factor weighs against granting a stay. It is undisputed that the PTAB has not instituted
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`review on any of Uber’s IPR petitions, nor granted any of Uber’s reexamination requests. This
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`Court has consistently held that staying district court litigations pending IPRs before a decision to
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`institute those IPRs is premature, as it is impossible for a court to determine at such time whether
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`a stay will simplify any issues before the court. See, e.g., Greenthread LLC v. Samsung Elecs.
`
`Co., 2:19-cv-00147-JRG, Dkt. 43 (E.D. Tex. Feb. 4, 2020); Solas OLED Ltd. v. Samsung Display
`
`Co., 2:19-cv-00152-JRG, Dkt. 69 (E.D. Tex. Feb. 4, 2020); Ramot At Tel Aviv Univ. Ltd. v. Cisco
`
`Sys., Inc., 2:19-cv-00225-JRG, Dkt. 54 (E.D. Tex. Feb. 4, 2020); Oyster Optics, LLC v. Infinera
`
`Corp., No. 2:19-cv-00257-JRG, Dkt. 62 (E.D. Tex. Feb. 4, 2020); see also Uniloc 2017 LLC v.
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`Samsung Elecs. Am., Inc., No. 2:19-cv-00125-JRG, Dkt. 34 (E.D. Tex. Feb. 4, 2020) (“It is the
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`Court’s established practice to consider that motions to stay pending IPR proceedings that have
`
`not been instituted are inherently premature and should be denied as such. At this nascent stage,
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`it is impossible for the Court to determine ‘whether the stay will likely result in simplifying the
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`case before the court’”) (citing NFC Tech., 2015 WL 10691111, at *3); Freeny v. Apple, Inc., No.
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`2:13–cv–00361–WCB, 2014 WL 3611948 at *3 (E.D. Tex. July 22, 2014) (holding that the
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`“largest consideration” in denying a motion to stay was that the reexamination petition was not yet
`
`decided).
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`Second, Uber greatly overstates the likelihood that its IPR petitions will be instituted and/or
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`ex parte reexaminations granted, much less that they will lead to the cancellation of any patent
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 11 of 18 PageID #: 7426
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`
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`claims. Uber’s argument that it is likely that the claims asserted in its pending petitions will result
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`in cancellation (Dkt. 180 at 9-10) is based on improper and unsupported speculation. See Maxell
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`Ltd. v. Apple Inc., No. 5:19-cv-00036-RWS, Dkt. 298 at 6 (E.D. Tex. Apr. 27, 2020) (declining to
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`speculate on the likelihood of simplification “absent any action by the PTAB”).
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`Third, even if Uber’s IPRs are instituted, they concern only a subset of claims of two of
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`the five patents asserted against Uber in this litigation. This weighs against a stay of the broader
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`district court litigation. See, e.g., Peloton Interactive, Inc. v. Flywheel Sports, Inc., No. 2:18-cv-
`
`00390-RWS-RSP, Dkt. 104 (E.D. Tex. Aug. 14, 2019); Cellular Commc’ns Equip. LLC v. HTC
`
`Corp., No. 6:16-cv-475-KNM, 2018 WL 4261194, at *3 (E.D. Tex. May 8, 2018) (finding the
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`simplification factor weighs against a stay where IPRs were only instituted on two of the three
`
`asserted patents); Parthenon Unified Memory Architecture LLC v. HTC Corp., No. 2:14-cv-00690-
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`RSP, 2016 WL 3365855, at *3-*4 (E.D. Tex. Jun. 17, 2016) (finding the simplification factor
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`weighs against a stay where IPRs were instituted on only three of the five asserted patents).
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`With respect to the reexaminations, courts have held that even where reexamination
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`proceedings are already under way, they are “far from complete,” because “[t]he ultimate outcome
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`[of a reexamination proceeding] is unpredictable,” which weighs against a stay. MacroSolve, Inc.,
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`2013 WL 7760889, at *2 (finding simplification factor weighed against stay even where
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`reexamination was already in progress); see also Thinkoptics, Inc. v. Nintendo of Am., Inc., No.
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`6:11-cv-455, Dkt. 345 at 3 (E.D. Tex. Feb. 27, 2014) (explaining that because the reexamination
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`proceedings were far from complete, it gives little indication regarding “the final scope of the
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`claims that will eventually emerge from reexamination after [the plaintiff] has exhausted all
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`administrative and judicial courses of review.”) (citation omitted).
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`6
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 12 of 18 PageID #: 7427
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`Moreover, even if the Examiner grants Uber’s reexaminations, they will not simplify the
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`issues in this case. An ex parte reexamination proceeding, unlike an IPR, does not have estoppel
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`effect. Eon Corp IP Holdings LLC v. Sensus USA Inc., No. 6:09-cv-116, 2009 WL 9506927 at *2
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`(E.D. Tex. Dec. 18, 2009). Because estoppel will not apply to reexamination, this Court would
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`still need to address validity issues after any stay has concluded. Thus, even if the Examiner grants
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`one or more of Uber’s requests for reexamination, a stay would merely delay this case indefinitely
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`should reexamination fail to cancel each and every asserted claim after completion of the entire
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`process, which includes both the Examiner and Federal Circuit appeals. See Fresenius USA, Inc.
`
`v. Baxter Int’l, Inc., 721 F.3d 1330, 1344-46 (Fed. Cir. 2013) (noting that PTAB decisions are not
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`‘final’ until the patent owner has exhausted all avenues of appeal, including appeal to the Federal
`
`Circuit). Moreover, the USPTO has confirmed the validity of three other AGIS patents. See Appl.
`
`Nos. 90/014,509; 90/014,510; and 90/014,629.
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`Lastly, Uber alleges it has been “diligent” in pursuing its IPR petitions and reexamination
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`requests. To the contrary, the Complaint against Uber was filed on January 29, 2021. Uber waited
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`six months, until July 23, 2021, to file its three IPR petitions. Further, Uber waited until October
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`22, 2021 to file its requests for reexamination because it alleges it waited until “WhatsApp
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`terminated its pending IPR petitions covering the same patents.” Dkt. 180 at 9. Uber offers no
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`explanation for why it could not file its own IPR petitions against the same patents, or why it was
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`unable to file its requests for reexamination prior to its belated October date.
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`With respect to the ’970 Patent, the “examiners indicated that the rewritten versions of the
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`claims with the scope identical to the patentable subject matter would be entered and allowed.”
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`Ex. A, 9-10. These claims include the same claims asserted against Uber in the present action.
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`Accordingly, whether the ’970 Patent was subject to reexamination bears no relevance to Uber’s
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`7
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 13 of 18 PageID #: 7428
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`Motion, and rather, weighs against granting a stay. Even if Uber’s IPR petitions were instituted
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`and reexamination requests were granted, the ’970 Patent, which is free of any proceedings, would
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`stand. Accordingly, Uber’s allegation that “[c]ancellation of all the asserted claims would
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`completely resolve the case” is incorrect. Further, Uber waited to file both its IPR petitions and
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`reexamination requests and, accordingly, any decisions would come after the service of opening
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`expert reports. Any purported simplification of issues would have no bearing on expert reports
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`and possibly, dispositive motions.
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`Accordingly, Defendant has failed to show that a stay will simplify the issues in this case
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`and this factor weighs against a stay.
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`B.
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`This Case is Not in its Infancy
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`The stage of this case weighs against a stay. As stated above, Uber was not diligent in its
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`requests for ex parte reexamination of the ’724 and ’728 Patents. Uber waited until October 22,
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`2021, when fact discovery was nearly complete and expert reports are pending. Uber’s contention
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`that the stage of this case warrants a stay ignores the significant discovery conducted by the parties
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`including the exchange of thousands of documents, discovery responses, depositions of witnesses,
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`and the filing of motions to compel. Further, the Markman hearing is complete with the parties
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`merely awaiting an order from this Court. Lastly, opening expert reports are due to be exchanged.
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`Uber’s reliance on the Google case is unpersuasive, particularly where the USPTO had
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`already granted Defendant’s requests for ex parte reexamination on all of the Asserted Patents in
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`that case. See AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-361-JRG, Dkt. 219 (E.D.
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`Tex. Feb. 9, 2021). Nonetheless, as stated above, the USPTO confirmed the validity of four of the
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`six Asserted Patents and has indicated that it will allow the amended claims of the ’970 Patent
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`which is asserted here. Accordingly, this factor weighs against a stay.
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`8
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 14 of 18 PageID #: 7429
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`C.
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`AGIS Will Suffer Undue Prejudice if a Stay is Granted
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`A lengthy stay will prejudice AGIS because it is likely that witnesses may become
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`unavailable, their memories may fade, and evidence may be lost. See EMG Tech., LLC v. Apple,
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`Inc., No. 6:09 CV 367, 2010 WL 10029483, *1-*3 (E.D. Tex. Nov. 15, 2010). A stay would delay
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`the patent holder’s recovery, potentially preventing him from receiving any monetary recovery in
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`this case. The time for an IPR decision, as well as a potential appeal, could cause a lengthy delay.
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`See Realtime Data LLC v. Actian Corp., No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259, at *2
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`(E.D. Tex. June 14, 2016) (explaining the potential delay awaiting completion of the IPR and
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`appeals and finding that delay weighed against a stay). Similarly, the Court has recognized that
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`waiting for a process, such as the reexamination proceeding to conclude, “could [ ] take several
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`years to reach resolution.” Ambato Media, LLC v. Clarion Co., No. 2:09-cv-242-JRG, 2012 WL
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`194172, at *1 (E.D. Tex. Jan. 23, 2012). Notably, however, no reexamination has been granted or
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`any IPR instituted at this stage. It would be prejudicial to delay AGIS’s opportunity to assert its
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`patent rights in this Court based on speculative predictions, particularly where the Patent Owner’s
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`Preliminary Responses have not yet been filed and, as Uber concedes, the Examiner will not act
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`on the reexamination until January 2022. General arguments regarding timely enforcement of a
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`plaintiff’s rights are insufficient, but specific concerns, such as the one put forth here, have been
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`considered by this Court. Cellular Comm’s Equip. LLC v. HTC Corp., 6:16-cv-475-KNM, Dkt.
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`275 at 3 (E.D. Tex. May 8, 2018). Moreover, Defendants will not face the same harmful effects
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`from denial of a stay as its invalidity claims “are based largely on prior art references, which do
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`not change.” Cooper Notification, Inc. v. Twitter, Inc., No. 09-865-LPS, 2010 WL 5149351, at *4
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`(D. Del. Dec. 13, 2010).
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`AGIS will not only be prejudiced by an unnecessary delay, but this case risks being stayed
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`indefinitely because there is no statutory time limit for requesting reexaminations as with IPRs,
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 15 of 18 PageID #: 7430
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`and Defendant has not limited its requested stay of this litigation to the temporal confines of the
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`IPR proceedings. See 35 U.S.C. § 302. Consequently, if dissatisfied with the results of
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`reexamination, Defendant could request yet another proceeding, relying on other prior art
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`references. Affinity Labs of Texas, LLC v. Dice Elecs., LLC, No. 9:08-CV-163, 2009
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`WL 10296818, at *3 (E.D. Tex. 2009) (finding prejudice because “if things do not go well at the
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`PTO, each Defendant in turn can file a request for ex parte reexamination”). The Court has
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`declared that this too, constitutes potential prejudice to the Plaintiff and weighs against a stay. See
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`Eon Corp IP Holdings, 2009 WL 9506927, at *3 (finding prejudice and unfair tactical advantage
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`because “if the defendants in this and the related case are not pleased with the outcome, they could
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`subject EON to serial filings of ex parte reexamination requests”) (internal citations omitted).
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`Lastly, Defendant’s argument that AGIS does not suffer any prejudice because it “waited
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`until 2021 to file against Uber” and the “users . . . are ‘first responders, law enforcement, and
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`military personnel” are without merit. Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No.
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`2:13-cv-213-JRG-RSP, 2015 WL 627887, at *2 (E.D. Tex. Jan. 29, 2015) (“However, the mere
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`fact that Rembrandt is not currently practicing the patents does not mean that, as a matter of law,
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`it is not prejudiced by a substantial delay of an imminent trial date. Accordingly, taken as a whole,
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`this factor weighs against a stay.”); Secure Axcess, LLC v. U.S. Bank Nat’l Ass’n, No. 6:13-CV-
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`717, 2014 WL 11394519, at *4 (E.D. Tex. Oct. 20, 2014) (“Although not a direct competitor with
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`Defendants, as a licensing business Secure Axcess may still suffer prejudice from a stay. A stay
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`will consume a significant portion of the remaining life of the patents-in-suit. Extension of this
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`suit may consume Secure Axcess’s resources, denying it the opportunity that it otherwise might
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`have had to enforce its patents. Moreover, Secure Axcess’s decision to wait several years after the
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`’191 issued to file complaints against the Defendants does not establish that Secure Axcess was
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 16 of 18 PageID #: 7431
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`dilatory. Rather, Secure Axcess made a tactical decision, possibly compelled by limited resources,
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`to first assert the ’191 Patent against larger bank defendants in a previous lawsuit.”). Further,
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`Uber’s arguments that AGIS is “a patent assertion entity that does not compete with Uber” and
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`thus” monetary relief will sufficiently compensate AGIS for any damages” are similarly without
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`merit. This Court has found undue prejudice for a plaintiff pursuing solely monetary damages. In
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`Realtime Data LLC v. Actian Corp., No. 6:15-cv-463-RWS-JDL, 2016 WL 3277259 at *2 (E.D.
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`Tex. June 14, 2016), the court held that the plaintiff was not precluded from experiencing prejudice
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`based on a lengthy delay should a stay be granted merely because it was a non-practicing entity
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`that did not compete with the defendants and was pursuing monetary damages. Id. at *2. Thus,
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`AGIS will be prejudiced by a stay and Defendant has failed to meet its burden to prove otherwise.
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`V.
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`CONCLUSION
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`For the foregoing reasons, none of the factors weigh in favor of granting Defendant’s
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`Motion and AGIS respectfully requests that the Court deny Defendant’s Motion to Stay Pending
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`Patent Office Proceedings Regarding the Asserted Patents (Dkt. 180) in its entirety.
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`Dated: November 8, 2021
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`Respectfully submitted,
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`
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`
` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Avenue,
` Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
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`11
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 17 of 18 PageID #: 7432
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`
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`Facsimile: (212) 257-5796
`
`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`12
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`Case 2:21-cv-00072-JRG-RSP Document 211 Filed 11/08/21 Page 18 of 18 PageID #: 7433
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on November 8, 2021, all counsel of record who
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`are deemed to have consented to electronic service are being served with a copy of this document
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`via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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