Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 1 of 5 PageID #: 7842
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`Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 2 of 5 PageID #: 7843
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Enrique Iturralde
`
`Robb, Andrew; Reiter, Mark; *** GDC-Uber-Agis; melissa@qillamsmithlaw.com
`AGIS; jtruelove@mckoolsmith.com; sbaxter@mckoolsmith.com
`Re: AGIS v. Uber - discovery deficiency
`Tuesday, October 26, 2021 8:39:14 PM
`image002.pngq
`
`[WARNING:External Email]
`
`Hi Andrew,
`
`Please provide Uberlead and local counsel’s availability to meet and confer tomorrow in
`advance of AGIS’s motion to compel.
`
`Thanks,
`Enrique
`
`From: Robb, Andrew <ARobb@gibsondunn.com>
`Sent: Tuesday, October 26, 2021 11:23 PM
`To: Enrique Iturralde <eiturralde@fabricantllp.com>; Reiter, Mark <MReiter@gibsondunn.com>; ***
`GDC-Uber-Agis <GDC-Uber-Agis@gibsondunn.com>; melissa@gillamsmithlaw.com
`<melissa@gillamsmithlaw.com>
`Cc: AGIS <AGIS@fabricantllp.com>; jtruelove@mckoolsmith.com <jtruelove@mckoolsmith.com>;
`sbaxter@mckoolsmith.com <sbaxter@mckoolsmith.com>
`Subject: RE: AGIS v. Uber- discovery deficiency
`
`Enrique,
`
`AGIS appearsto justify its demand for world-wide Uber revenue based on alleged deposition
`<tr
`EE. First, the witness whoprovided that testimony was not designated onthatissue.
`
`PE (\'". Postnikoff did nottestify that servers did not exist outside of the
`United States, nor did he testify that servers outside of the United States are not involved ride
`
`Next, AGIS’s treatmentof this testimony, as well as its demand for world-wide revenue,conflicts
`with the arguments AGIS presented to the Court in opposition to Uber’s Motion to Dismiss for
`Improper Venue.
`Indeed,in its Motion to Dismiss, Uber explained thatin its Complaint, AGIS
`acknowledgedthat the ’838 patent claims were limited to server claims. Dkt. No 24 at 6,citing
`AGIS’s Complaint at 9] 82-87. Uber further explained to the Court that AGIS had failed to allege
`that Uber operates any servers in the Eastern District of Texas, nor could it because Uber has no
`servers in the District or in Texas.
`/d.
`In response, AGIS asserted that Uber “has publicly disclosed
`that it engagesin a ‘classic hybrid cloud approach’ which utilizes co-located data centers located in
`the United States and multiple third-party cloud computing services.” Dkt. 43 at 8. AGIS continued
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 3 of 5 PageID #: 7844
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`that Uber relies on “‘third-party service providers to host or otherwise process some of [its] data and
`that of platform users.’” Id. As a result, AGIS argued, “the physical server infrastructure used by
`[Uber] appears to be much broader than just the ‘servers,’ as submitted by Mr. Rapipong and
`[Uber].” Id. And in its Sur-Reply, AGIS represented to the Court that “[Uber] and its customers have
`performed at least one step of the ’838 Patent claims in this District and some portion of [Uber’s]
`infringing products, systems, and/or servers is located in this District.” Dkt. 69 at 2.
`
`As you know, the Court accepted AGIS’s arguments and representations. In his order, Judge Payne
`wrote: “AGIS has presented evidence that Uber engages in a ‘classic hybrid cloud approach’ which
`‘utilizes co-located data centers located in the United States and multiple third-party cloud
`computing systems.’” Dkt. 142 at 6. Judge Payne, moreover, relied specifically on AGIS’s statement
`that “‘[a]ccordingly, the physical infrastructure used by [Uber] appears to be much broader than just
`the ‘servers,’ as submitted by Mr. Rapipong and [Uber].’” Id.
`
`AGIS now seeks to walk away from these representations, which the Court accepted and relied upon
`in denying Uber’s motion. AGIS represented that acts of infringement occurred in the District
`because Uber and its customers have performed at least one step of the ’838 claims in the District,
`and as a result of Uber’s cloud approach that utilizes servers and third-party cloud computing
`systems, allegedly located in the District. Given these representations, AGIS cannot now assert that
`all steps of the ’838 patent claims occur solely in the United States by Uber’s servers located in the
`United States. The doctrine of judicial estoppel precludes AGIS from taking such a contrary position.
`See, e.g., Love v. Tyson Foods, Inc., 677 F.3d 258, 261 (5th Cir. 2012). Indeed, (1) AGIS’s current
`position is inconsistent with the legal position presented in opposition to Uber’s Motion to Dismiss,
`(2) the Court accepted AGIS’s position, and (3) AGIS clearly did not act inadvertently. Id.
`
`Indeed, AGIS’s prior position—that acts of infringement occur wherever the riders or drivers are
`located—is fully consistent with the positions AGIS has taken in its infringement contentions.
`Repeatedly, AGIS relies on the rider or driver application to prove infringement for claims of the ’838
`patent. See, e.g., Third Amended Contentions at E-3 et seq., E-13 et seq., E-19 et seq., E-32 et seq.,
`E-37 et seq., E-39 et seq., E-44 et seq., E-48 et seq., E-53 et seq. For example, claim limitation 1[H]
`requires that the mobile device be configured in certain ways, and AGIS relies heavily on application
`code of the mobile device to show that those limitations are satisfied. See id. at E-32 through E-36
`(attempting to map Uber application source code modules to configuration requirements set forth in
`claim). AGIS’s new position, that infringement occurs solely at Uber’s own servers, is an
`abandonment of this position.
`
`Because AGIS has represented that the location of Uber’s servers is irrelevant, which (again) the
`Court accepted, to the extent a rider or driver is located outside of the United States or co-located
`third-party or cloud servers are located outside of the United States, steps of the ’838 patent occur
`outside of the United States. In other words, based on AGIS’s own representations to the Court that
`certain claim elements of the ’838 patent are satisfied wherever the rider, driver, or co-located
`third-party or cloud servers are physically located, it necessarily follows that, for riders, drivers, or
`co-located third-party or cloud servers outside of the United States, at least one step of the ’838
`patent claims occurs in that non-U.S. jurisdiction. Under established Federal Circuit law, there can
`be no infringement for foreign rides. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed.
`
`

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`Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 4 of 5 PageID #: 7845
`aaeee
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`Cir. 2005), abrogated on other grounds, see IRIS Corp. v. Japan Airlines Corp., 769 F.3d 1359, 1361
`n.1 (Fed. Cir. 2014) (“A method or process consists of one or more operative steps, and, accordingly,
`‘[iJt is well established that a patent for a method orprocessis not infringement unless all steps or
`mn
`stages of the claimed processare utilized.’”) (emphasis added).
`
`At least for the foregoing reasons, the requested information is not relevant and is not proportional
`to the needsof the case, and Uber therefore will not produceit.
`
`Regards,
`Andrew
`
`Andrew Robb
`
`GIBSON DUNN
`
`Gibson, Dunn & Crutcher LLP
`1881 Page Mill Road, Palo Alto, CA 94304-1211
`Tel +1 650.849.5334 » Fax +1 650.849.5034
`
`ARobb@gibsondunn.com » www.gibsondunn.com
`
`From:EnriqueIturralde <eiturralde@fabricantllp.com>
`Sent: Wednesday, October 13, 2021 8:05 PM
`To: Reiter, Mark <MReiter@gibsondunn.com>; *** GDC-Uber-Agis <GDC-Uber-
`Agis@gibsondunn.com>; melissa@gillamsmithlaw.com
`Cc: AGIS <AGIS@fabricantllp.com>; jtruelove@mckoolsmith.com; sbaxter@mckoolsmith.com
`Subject: AGIS v. Uber- discovery deficiency
`
`[WARNING: External Email]
`
`Counsel for Uber:
`
`During today's deposition of Mr. Tate Postnikoff, the Uber corporate representative testified I
`
`Because AGIS hasasserted infringement of server method claims and server system claims and
`because domestic and foreign usage/requests/transactions of Uber's rider/driver apps result in
`infringing activities that occur on Uber's servers in the United States, Uber's responses to
`Interrogatory No. 3 and Uber's document productions concerningfinancial information
`(transactions/sales/revenues/profits/costs/pricing) are deficient and incorrectly limited to US-only
`financial information. AGIS requests that Uber immediately supplementits interrogatory responses
`and accompanying documentproductions to further include worldwidefinancial informationforall
`accused activities occurring on U.S. servers. Please confirm that Uberwill complete this
`supplementation by October 20, 2021.
`
`Regards,
`Enrique
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 5 of 5 PageID #: 7846
`Case 2:21-cv-00072-JRG-RSP Document 231-1 Filed 11/22/21 Page 5of 5 PagelD #: 7846
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`=
`
`Enrique W.Iturralde
`Associate
`
`Fabricant LLP
`
`T: 212-257-5797
`F: 212-257-5796
`
`eiturralde@fabricantllp.com
`fabricantllp.com
`
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