Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 1 of 9 PageID #: 7621
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`§
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`§
`Case No. 2:21-cv-00072-JRG
`(LEAD CASE)
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`§
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
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`Defendant.
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`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S RESPONSE
`IN OPPOSITION TO DEFENDANT UBER TECHNOLOGIES, INC.,
`D/B/A UBER’S OPPOSED MOTION TO COMPEL
`PRIOR LITIGATION DOCUMENTS (DKT. 196)
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 2 of 9 PageID #: 7622
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`TABLE OF CONTENTS
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`Page(s)
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`I.
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`II.
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`III.
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`INTRODUCTION .............................................................................................................. 1
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`LEGAL STANDARDS ...................................................................................................... 1
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`ARGUMENT ...................................................................................................................... 2
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`A.
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`B.
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`AGIS Does Not Have Damages Expert Reports Within its Possession,
`Custody, or Control, or Third Parties Have Objected to the Production of
`Damages Expert Reports......................................................................................... 2
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`AGIS Has Produced Contentions and Deposition Transcripts it Has in its
`Possession, Custody, or Control ............................................................................. 4
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`IV.
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`CONCLUSION ................................................................................................................... 5
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`i
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 3 of 9 PageID #: 7623
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Herbert v. Lando,
`441 U.S. 153 (1979) ...................................................................................................................1
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`Oppenheimer Fund, Inc. v. Sanders,
`437 U.S. 340 (1978) ...................................................................................................................1
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`ORIX USA Corp. v. Armentrout,
`No. 3:16-mc-63-N-BN, 2016 WL 4095603 (N.D. Tex. Aug. 1, 2016) .....................................2
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`Tivo, Inc. v. Verizon Commc’ns, Inc.,
`No. 2:09-cv-257-JRG, 2012 WL 12906511 (E.D. Tex. June 8, 2012) ......................................4
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`Van Dyke v. Retzlaff,
`No. 4:18-CV-247, 2020 WL 1866075 (E.D. Tex. Apr. 14, 2020) .............................................2
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`Other Authorities
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`Fed. R. of Civ. P. 26(b)(1) ...........................................................................................................1, 2
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`ii
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 4 of 9 PageID #: 7624
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, hereby submits this response in opposition to Defendant Uber Technologies,
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`Inc., d/b/a Uber’s (“Defendant” or “Uber”) Opposed Motion to Compel Prior Litigation
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`Documents (Dkt. 196) (the “Motion”).
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`I.
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`INTRODUCTION
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`Uber’s Motion seeks to compel production of prior litigation documents. However, AGIS
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`has already produced documents it has within its possession, custody, or control or has permission
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`to produce pursuant to the protective orders entered with third parties. AGIS has repeatedly
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`informed Uber that it does not have access to certain experts reports from prior cases because
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`AGIS properly destroyed such reports following the dismissal of those cases pursuant to the
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`Protective Order, and upon request by those parties to destroy any confidential materials pursuant
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`to the Protective Order. With regard to cases that are ongoing, AGIS has informed Uber that those
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`third parties have not agreed to the disclosure of their confidential materials. Accordingly, AGIS
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`does not have in its possession, custody, or control, the third-party confidential materials requested
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`by Uber, or has not been given permission to disclose the third-party confidential materials. AGIS
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`has repeatedly notified Uber that it should subpoena those parties for their confidential documents,
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`as consolidated defendant Lyft, Inc. has done. Accordingly, AGIS respectfully requests that the
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`Court deny Uber’s Motion.
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`II.
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`LEGAL STANDARDS
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`Rule 26(b)(1) of the Federal Rules of Civil Procedure provides that “[p]arties may obtain
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`discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense . . .”
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`Fed. R. Civ. P. 26(b)(1). While “discovery rules are to be accorded broad and liberal treatment to
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`effect their purpose of adequately informing the litigants in civil trials” (Herbert v. Lando, 441
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`U.S. 153, 177 (1979)), discovery does have “ultimate and necessary boundaries.” Oppenheimer
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 5 of 9 PageID #: 7625
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`Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978). Courts “cannot compel [a party or non-party] to
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`produce non-existent documents” because a party “cannot produce what it does not have.” ORIX
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`USA Corp. v. Armentrout, No. 3:16-mc-63-N-BN, 2016 WL 4095603, at *5 (N.D. Tex. Aug. 1,
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`2016).
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`On a motion to compel, “[t]he moving party bears the burden of showing that the materials
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`and information sought are relevant to the action or will lead to the discovery of admissible
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`evidence.” Van Dyke v. Retzlaff, No. 4:18-CV-247, 2020 WL 1866075, at *1 (E.D. Tex. Apr. 14,
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`2020). “The federal rules follow a proportionality standard for discovery.” Id. Under this
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`standard, “the burden falls on both parties and the Court to consider the proportionality of all
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`discovery in resolving discovery disputes.” Fed. R. Civ. P. 26(b)(1), advisory committee note
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`(2015).
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`III. ARGUMENT
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`A.
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`AGIS Does Not Have Damages Expert Reports Within its
`Possession, Custody, or Control, or Third Parties Have Objected to
`the Production of Damages Expert Reports
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`AGIS cannot produce documents it does not have in its possession, custody, or control, or
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`to which third-parties have objected to their disclosure. AGIS has repeatedly informed Uber that
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`it does not have access to certain technical and damages reports and deposition transcripts of expert
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`witnesses from prior cases because AGIS destroyed such reports following the dismissal of those
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`cases pursuant to the Protective Order, and upon request by those parties to destroy any
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`confidential materials pursuant to the Protective Order. While Uber misleads this Court by
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`alleging that it did not seek permission from previous defendants, to the contrary, as is apparent
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`by Uber’s own recitation of the facts, AGIS has represented that it does not have access to these
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`materials. This response is no surprise to Uber. AGIS has repeatedly informed Uber that such
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`documents were either destroyed pursuant to a request from counsel from prior defendants
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 6 of 9 PageID #: 7626
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`following the dismissal of the case or pursuant to the relevant provision in the Protective Order.
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`With regard to cases that are ongoing, Uber itself has stated that Google has not agreed to the
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`disclosure of its confidential materials. Motion at 3-4.
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`AGIS has produced the invalidity and validity expert reports from the prior cases, most of
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`which were not designated RESTRICTED—ATTORNEYS’ EYES ONLY or only contained the
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`confidential material of AGIS. Contrary to Uber’s representations, all the invalidity reports from
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`the AGIS I cases were produced and from those cases, only one invalidity report was designated
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`RESTRICTED—ATTORNEYS’ EYES ONLY because it contained AGIS, Inc.’s LifeRing source
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`code. With respect to AGIS’s validity reports, AGIS’s validity expert reports were not designated
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`RESTRICTED—ATTORNEYS’ EYES ONLY, contrary to Uber’s misrepresentations. Id. at 4.
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`With respect to the damages and technical expert reports from the AGIS II cases, AGIS has
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`communicated that the redaction of these expert reports would redact most information as it
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`contains the confidential third-party information of Google, Waze, and Samsung. The same
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`applies to the deposition transcripts of these expert witnesses which contain the confidential
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`information of Google, Waze, and Samsung. Such heavy redactions would render the documents
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`irrelevant to the specific information sought and identified in Uber’s motion (i.e., “value of the
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`Asserted Patents”), and redactions would be unduly burdensome and non-proportional to the needs
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`of this case. Similarly, if Uber has not identified a specific reason for the unredacted portions of
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`these documents, Uber has not met its burden to show relevance and proportionality. Moreover,
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`Uber asserts that “the prior litigations have resulted in several licenses to the Asserted Patents.”
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`Id. at 6. Those license agreements have already been produced to Uber. Nonetheless, AGIS does
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`not have in its possession, custody, or control, the AGIS I technical and damages expert reports
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`requested by Uber and, accordingly, cannot be compelled to produce them.
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 7 of 9 PageID #: 7627
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`With respect to Uber’s allegations that AGIS has produced “unredacted confidential
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`information,” this is not true. AGIS has not produced any confidential information of third parties
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`in an unredacted format. Again, AGIS has produced the invalidity and validity reports from AGIS
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`I.
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`Uber’s reliance on Tivo, Inc. v. Verizon Commc’ns, Inc., No. 2:09-cv-257-JRG, 2012 WL
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`12906511, at *1 (E.D. Tex. June 8, 2012) is unavailing. In Tivo, the Court held that the patent
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`asserted in the prior action served as prior art and thus “any analysis of the patent may be relevant
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`to the patent-in-suit.” Id. Further, Uber’s arguments that it has produced “at least a subset of this
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`information already,” is unpersuasive where the documents produced do not have the same
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`confidentiality concerns as those sought by Uber in the present Motion. In fact, Uber’s arguments
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`confirm that this information would be cumulative of the record and requiring AGIS to heavily
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`redact any documents would be unduly burdensome and non-proportional to the needs of the case.
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`Accordingly, Uber’s Motion should be denied.
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`B.
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`AGIS Has Produced Contentions and Deposition Transcripts it Has
`in its Possession, Custody, or Control
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`AGIS has produced infringement contentions that it has within its possession, custody, or
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`control. For example, AGIS has produced infringement contentions with respect to prior
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`defendants Apple, ZTE, HTC, LG, and Huawei. Similarly, AGIS has produced infringement
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`contentions with respect to Google and Samsung but could not produce the infringement
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`contentions with respect to defendant Waze because, as represented to Uber on the meet-and-
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`confer leading up to the filing of the present Motion, it does not have copies of the preliminary
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`infringement contentions in its records due to counsel for AGIS transitioning to a new firm during
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`its representation of AGIS. Uber does not explain what infringement contentions specifically are
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`missing that require production. Accordingly, Uber’s Motion should be denied.
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`4
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 8 of 9 PageID #: 7628
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`IV. CONCLUSION
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`For the foregoing reasons, AGIS respectfully requests that the Court deny Defendant’s
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`Motion (Dkt. 196) in its entirety.
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`Dated: November 17, 2021
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`Respectfully submitted,
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` /s/ Vincent J. Rubino, III
`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
`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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`5
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`Case 2:21-cv-00072-JRG-RSP Document 223 Filed 11/17/21 Page 9 of 9 PageID #: 7629
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on November 17, 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/ Vincent J. Rubino, III
` Vincent J. Rubino, III
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