Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 1 of 12 PageID #: 7830
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§§§§§§§§§§§§
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`§§§§§§§§§§§
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`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
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`
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`CASE NO. 2:21-cv-00026-JRG
`(Member Case)
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`
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`DEFENDANT UBER TECHNOLOGIES, INC.’S OPPOSITION TO PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC’S MOTION TO COMPEL UBER TO PROVIDE
`DISCOVERY RELATING TO FOREIGN RIDES
`
`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
`
`v.
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
`
`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
`
`v.
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`UBER TECHNOLOGIES, INC., d/b/a UBER,
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`Defendant.
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`

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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 2 of 12 PageID #: 7831
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ............................................................................................................. 1
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`FACTUAL AND PROCEDURAL BACKGROUND....................................................... 1
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`III.
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`ARGUMENT ..................................................................................................................... 4
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`A.
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`B.
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`AGIS Must Prove All Alleged Infringing Steps Occur In The United States. ...... 4
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`Judicial Estoppel Bars AGIS’s Request. ................................................................ 6
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`AGIS’s Motion Ignored The Actual Dispute Between the Parties, and AGIS
`C.
`Should be Sanctioned for Its Conduct. .............................................................................. 7
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`CONCLUSION .................................................................................................................. 7
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`IV.
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`i
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 3 of 12 PageID #: 7832
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`
`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`
`Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd.,
`807 F.3d 1283 (Fed. Cir. 2015)..................................................................................................8
`
`Finjan, Inc. v. Qualys Inc.,
`2020 WL 5569704 (N.D. Cal. Sept. 17, 2020) ..........................................................................8
`
`Internet Machines LLC v. Alienware Corp.,
`2011 WL 13152813 (E.D. Tex. Nov. 29, 2011) ........................................................................8
`
`IRIS Corp. v. Japan Airlines Corp.,
`769 F.3d 1359 (Fed. Cir. 2014)..................................................................................................7
`
`Kajeet, Inc. v. Qustodio, LLC,
`2019 WL 8060078 (C.D. Cal. Oct. 22, 2019) ............................................................................8
`
`Love v. Tyson Foods, Inc.,
`677 F.3d 258 (5th Cir. 2012) .....................................................................................................9
`
`NTP, Inc. v. Rsch. In Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005)..................................................................................................7
`
`STATUTES
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`35 U.S.C. § 271 ................................................................................................................................7
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`
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`ii
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`

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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 4 of 12 PageID #: 7833
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`I.
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`INTRODUCTION
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`AGIS’s motion to compel Uber to produce financial information relating to foreign rides
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`ignores the representations AGIS made to this Court in opposition to Uber’s venue-related motion
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`to dismiss, ignores Uber’s discovery responses, ignores the law, and misrepresents the facts.
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`Respectfully, the Court should deny the motion and award Uber its fees incurred in responding to
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`this frivolous motion.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`One of the patents asserted in this case, U.S. Patent No. 10,341,838, has claims which,
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`according to the preambles, are directed to systems and methods of operation of servers. Given
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`the server-focus of the ’838 patent, Uber filed a motion to dismiss for improper venue, explaining
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`that Uber does not have any servers in this District, and so no acts of infringement occurred in this
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`District to support venue. See Dkt. No. 24 at 5–6.
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`In its Opposition to Uber’s motion, AGIS argued that venue is appropriate in this District
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`because at least one claim element was satisfied in the District, citing Seven Networks, LLC v.
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`Google LLC. Dkt. No. 43 at 9. In support, AGIS argued that Uber engages “in a classic hybrid
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`cloud approach[,] which utilizes co-located data centers located in the United States and multiple
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`third-party cloud computing services.” Dkt. No. 43 at 8 (internal quotation marks and citation
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`omitted). AGIS also pointed the Court to Uber’s “massive network” consisting of “tens of millions
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`of Drivers, consumers, restaurants, shippers, [and] carriers,” id. at 8, such that “Uber and its
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`customers have performed at least one step of the ’838 Patent claims in the District,” id. at 10.
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`AGIS repeated these arguments in its sur-reply: “Defendant [Uber] and its customers have
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`performed at least one step of the ’838 Patent claims in this District and some portion of
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`Defendant’s infringing products, systems, and/or servers is located in this District.” Dkt. No. 69
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`1
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 5 of 12 PagelD #: 7834
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`at 1-2. In short, AGIS repeatedly asserted that because drivers, riders, and co-located servers were
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`present in the District, regardless of the location of Uber’s servers, at least one step or act of
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`infringement occurred in this District, making venue proper. Jd.
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`On September 3, 2021, the Court denied Uber’s motion to dismiss for improper venue,
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`adopting AGIS’s position. Specifically, the Court pointed to the co-located data centers, the third-
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`party cloud computing services, and the drivers and riders in the District as evidence that acts of
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`infringementoccur in the District. See Dkt. No. 142 at 6.
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`On October13, 2021, AGIS took the deposition of Tate Postnikoff. Mr. Postnikoff is an
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`engineer who works on the Riderapplication at Uber, and he was designated as a Rule 30(b)(6)
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`witness on topics relating to the Rider app. He wasnot designated on topics relating to Uber’s
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`servers. Despite this, AGIS asked Mr. Postnikoff about Uber’s servers.
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`In response, Mr.
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`Postikot? ‘ested
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`Pe Mr.Postnikoff’s answers were neither on behalf of the company nor were they
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`definitive.
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`Based on this testimony, AGISasserted all activity relevant to the ’838 patent, including
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`activity related to rides outside of the United States, occurred in the United States and demanded
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`

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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 6 of 12 PageID #: 7835
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`worldwide financial data. See Ex. 1 at 4. Uberinvestigated the request and provided a detailed
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`response that corrected AGIS’s inaccurate characterizations of Mr. Postnikoff’s testimony,
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`reminded AGISof the positions it took in opposing Uber’s venue-related motion to dismiss, and
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`explained that because the Court accepted AGIS’s positions, judicial estoppel precluded AGIS
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`fromlimiting acts of infringement to the situs of Uber’s data centers. Jd. at 2-4.
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`Uberalso supplemented its response to AGIS’s Interrogatory No. 1, explaining:
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`In its motion and during the parties’ meet and confer, AGIS ignored this supplemental response.
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`After AGISfiled the present motion, AGIS served its expert report on alleged infringement.
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`In that report, with respect to the ’838 patent, and in apparent recognition of the position it took in
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`opposition to Uber’s venue motion to dismiss, AGIS’s expert repeatedly identified activity
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`performed by the mobile devices—as opposedto the servers.
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`In other words, Mr. McAlexander does not limit his allegations of
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 7 of 12 PageID #: 7836
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`infringement to acts that occur solely on servers; instead, he relies on acts that occur on both the
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`rider’s phone and the driver’s phone. Accordingly, AGIS has made clear that when rides occur
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`outside the United States, those phones, and the alleged infringing acts performed by those phones,
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`also occur outside of the United States.
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`III. ARGUMENT
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`A.
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`AGIS Must Prove All Alleged Infringing Steps Occur In The United States.
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`In NTP, Inc. v. Rsch. In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005),1 the Federal Circuit
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`held that infringement under United States patent laws occurs only when each and every claimed
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`step is performed in the United States, or when the mobile devices that put the system into service
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`are located in the United States. In NTP, each of the claims referenced an “interface” or “interface
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`switch,” which was only satisfied by a server component located in Canada. Id. at 1318. In finding
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`no infringement of the method claims, the Federal Circuit explained that “a process cannot be used
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`‘within’ the United States as required by section 271(a) unless each of the steps is performed within
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`this country.” Id. Addressing the system claims, the Court held that “the place at which the
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`system as a whole is put into service, i.e., the place where control of the system is exercised and
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`beneficial use of the system obtained,” is the place of alleged infringement. Id. at 1317. However,
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`if that place is outside of the United States, there is no infringement, which section 271(a) makes
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`clear: “[W]hoever without authority makes, uses, offers to sell, or sells any patented invention,
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`within the United States . . . infringes the patent.” 35 U.S.C. § 271(a) (emphasis added). In other
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`words, infringement requires that all steps of a claimed method and the use of a claimed system
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`occur in the United States; absent this, there is no infringement and, pertinent to the present motion,
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`revenue derived from acts outside of the United States is not relevant.
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`1 Abrogated on other grounds as recognized by IRIS Corp. v. Japan Airlines Corp., 769 F.3d
`1359, 1361 n.1 (Fed. Cir. 2014).
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`4
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 8 of 12 PageID #: 7837
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`Recognizing this territorial limitation, courts deny discovery into foreign financial
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`information. See Internet Machines LLC v. Alienware Corp., No. 6:10-CV-23, 2011 WL
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`13152813, at *2 (E.D. Tex. Nov. 29, 2011) (“[T]he sales of the allegedly infringing products to
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`foreign customers fall outside the scope of U.S. patent laws. Therefore, PLX is not required to
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`disclose sales information or documentation related to the sale of any product manufactured and
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`shipped outside the United States.”) (citation omitted); Kajeet, Inc. v. Qustodio, LLC, No. SA-
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`CV18:1519-JAK-PLAx, 2019 WL 8060078, at *13 (C.D. Cal. Oct. 22, 2019) (denying motion to
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`compel information regarding defendant’s foreign sales because “information regarding
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`defendant’s foreign sales [wa]s not relevant to the hypothetical negotiation of the reasonable
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`royalty amount because defendant would not be liable for foreign sales that do not violate U.S.
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`patent laws”); see also Finjan, Inc. v. Qualys Inc., No. 18-CV-07229-YGR-TSH, 2020 WL
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`5569704, at *2 & n.4 (N.D. Cal. Sept. 17, 2020) (similar); Carnegie Mellon Univ. v. Marvell Tech.
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`Grp., Ltd., 807 F.3d 1283, 1305 (Fed. Cir. 2015) (a reasonable royalty determination is “subject . . .
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`to the legal constraint based on territorial limits”).
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`As explained above, AGIS’s expert has specifically relied on acts performed by the mobile
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`device. Given the Federal Circuit’s holding in NTP, when those acts and the use of those devices
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`occur outside of the United States, there can be no infringement. Likewise,
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`.2
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`2 AGIS accuses Uber of “ignor[ing] AGIS’s request [for the financial data] until after the
`scheduled date for Uber’s financial witness,” and it suggests that Uber ignored AGIS’s request
`until AGIS threatened to go to the Court with a motion to compel. Dkt. No. 200 at 1. This is
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 9 of 12 PageID #: 7838
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`B.
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`Judicial Estoppel Bars AGIS’s Request.
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`AGIS speaks out of both sides of its mouth. On the one hand, for purposes of venue,
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`AGIS has argued that at least one step or element of the claims of the ’838 Patent occurred in
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`this District, pointing to Uber’s “massive network” and its in-district drivers and consumers. The
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`Court adopted AGIS’s arguments and denied Uber’s motion, finding that venue was proper. See
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`supra. On the other hand, AGIS now argues that foreign rides infringe because only servers
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`located in the United States are relevant; stated differently, AGIS asserts the relevant acts of
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`infringement occur only where the servers are located. If that were the case, then Uber’s motion
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`for improper venue must be reconsidered and granted because it is not disputed that Uber has no
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`servers in this District. But because the Court did not grant Uber’s motion, and instead accepted
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`AGIS’s representations, judicial estoppel bars AGIS’s new theory. Indeed, judicial estoppel
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`precludes a party from taking a position that is 1) inconsistent with a position it took earlier, 2)
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`which the Court accepted, and 3) which was not argued inadvertently. See, e.g., Love v. Tyson
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`Foods, Inc., 677 F.3d 258, 261 (5th Cir. 2012). Each of these elements is satisfied here:
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`● AGIS’s position, that foreign rides infringe because Uber’s servers are located in the
`U.S., is irreconcilable with its prior position that venue is proper in the District because at
`least one step or element was satisfied wherever the co-located servers, riders, or drivers
`are located.
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`● The Court adopted AGIS’s position on this issue. Dkt. No. 142 at 6.
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`● AGIS’s position was not inadvertent. AGIS made the argument in its Complaint, and it
`repeatedly made the argument in its opposition and sur-reply addressing the motion to
`dismiss. See Dkt. Nos. 43, 69; No. 2:21-cv-00026-JRG, Dkt. No. 1 ¶¶ 3–5, 11–17
`(member case).
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`false. AGIS first raised the issue of foreign financial data on October 13, 2021, following Mr.
`Postnikoff’s deposition. See Ex. 1 at 4. Uber thereafter investigated the issue and responded on
`October 26, providing a detailed explanation of why the information requested was not relevant.
`Id. at 4–5. That explanation was provided the day before AGIS deposed Uber’s financial
`witness. AGIS did not respond to Uber’s explanation and instead demanded a meet and confer.
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`6
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 10 of 12 PageID #: 7839
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`AGIS cannot escape the consequences of its prior—successful—arguments.
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`C.
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`AGIS’s Motion Ignored The Actual Dispute Between the Parties, and AGIS Should
`be Sanctioned for Its Conduct.
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`AGIS knows why Uber refuses to produce the foreign data. Uber laid out its reasoning in
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`its October 26 response, and it repeated its explanations during the meet and confer. In its motion,
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`AGIS ignores the law, its own expert’s analysis and the facts, forcing Uber—and this Court—to
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`waste time on a manifestly meritless motion. Uber respectfully submits that AGIS be sanctioned
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`for its conduct. At minimum, the motion should be denied outright and AGIS should be ordered
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`to pay Uber’s fees incurred in responding to this motion.
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`IV. CONCLUSION
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`AGIS’s motion to compel should be denied.
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`7
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 11 of 12 PageID #: 7840
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`Dated: November 18, 2021
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`
`By
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`
`/s/ Mark N. Reiter
`Mark N. Reiter
`Texas State Bar No. 16759900
`mreiter@gibsondunn.com
`Robert A. Vincent
`Texas State Bar No. 24056474
`rvincent@gibsondunn.com
`Nathan R. Curtis
`Texas State Bar No. 24078390
`ncurtis@gibsondunn.com
`Ashbey N. Morgan
`Texas State Bar No. 24106339
`anmorgan@gibsondunn.com
`GIBSON, DUNN & CRUTCHER LLP
`2001 Ross Avenue, Suite 2100
`Dallas, TX 75201-6912
`Telephone: 214.698.3360
`Facsimile: 214.571.2907
`
`
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gillamsmithlaw.com
`
`
`Attorneys for Defendant Uber Technologies,
`Inc. d/b/a Uber
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`8
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`Case 2:21-cv-00072-JRG-RSP Document 231 Filed 11/22/21 Page 12 of 12 PageID #: 7841
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 18, 2021, the foregoing was electronically filed in
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`compliance with Local Rule CV-5(a) and that Plaintiff’s counsel of record were served with true
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`and correct copies of the foregoing document and accompanying Exhibit 1 by electronic mail on
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`the 18th day of November, 2021.
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`/s/ Mark N. Reiter
`Mark N. Reiter
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`9
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