Case 2:21-cv-00072-JRG-RSP Document 373 Filed 03/29/22 Page 1 of 18 PageID #: 23377
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:21-cv-00072-JRG
`(Lead Case)
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`JURY TRIAL DEMANDED
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`CASE NO. 2:21-cv-00024-JRG
`(Member Case)
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`JURY TRIAL DEMANDED
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`§§
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`§
`§
`§
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`§§§
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`§§
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`§
`§
`§
`§
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`AGIS SOFTWARE DEVELOPMENT LLC
`
`v.
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`T-MOBILE USA, INC., and T-MOBILE
`US, INC.
`
`AGIS SOFTWARE DEVELOPMENT LLC
`
`v.
`
`LYFT, INC.
`
`DEFENDANT LYFT, INC.’S OPPOSED MOTION FOR ATTORNEYS’ FEES
`UNDER 35 U.S.C. § 285 AND ENTRY OF BILL OF COSTS
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`

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`Case 2:21-cv-00072-JRG-RSP Document 373 Filed 03/29/22 Page 2 of 18 PageID #: 23378
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`On January 19, 2022, this Court granted Lyft, Inc.’s (“Lyft’s”) motion to dismiss for
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`improper venue (Dkt. 334), confirming what Lyft has maintained throughout the entirety of this
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`case: this District is not an appropriate forum for AGIS Software Development LLC’s (“AGIS”)
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`patent infringement claims against Lyft. AGIS premised its venue allegations on a falsehood that
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`AGIS could have, and should have, confirmed before filing suit—that Lyft had an Express Drive
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`at 928 West Spring Creek Parkway, Plano, Texas at the time the complaint was filed, when it did
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`not. Not only did AGIS fail to verify its venue allegations before filing suit (something that could
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`have been done as easily as simply driving to the cited address), as was its obligation, but when
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`Lyft informed AGIS shortly after the lawsuit was filed that it had no Express Drive location in
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`Plano, AGIS ignored Lyft and pressed forward with litigation. AGIS forced the Court and the
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`parties to waste their time on unnecessary motion practice, discovery, an evidentiary hearing, and
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`objections to the Court’s report and recommendation to dismiss the case for improper venue, which
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`all just reaffirmed a fact presented to AGIS at the start of this action: Lyft did not maintain an
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`Express Drive Location in Plano, Texas.
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`AGIS’s inadequate pre-suit investigation on venue was compounded by AGIS’s refusal to
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`stay the case when the Court recommended dismissal for improper venue, agreeing with Lyft that
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`it did not maintain a regular and established place of business in this District. AGIS’s refusal to
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`stay the case, because it planned to re-argue again that Lyft maintained an Express Drive in Plano,
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`resulted in the parties having to prepare expert reports, exchange discovery motions, and engage
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`in other time-consuming activities in late November. These were unnecessary efforts that would
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`have been avoided if AGIS had performed an adequate pre-suit investigation and/or agreed to
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`mitigate the damages resulting from its inadequate pre-suit investigation with a prompt stay
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`following the Court’s report and recommendation to dismiss. The unreasonable manner in which
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`AGIS has litigated this case is reminiscent of the conduct of AGIS’s affiliate and predecessor-in-
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`interest to the Asserted Patents, Advanced Ground Information Systems, Inc., which was
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`sanctioned in 2015 for litigating “an exceptionally weak case.” Advanced Ground Information
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`Systems, Inc. v. Life360, Inc., No. 9:14-cv-80651 (S.D. Fla.), Dkt. 200 at 2.
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`The Court granted Lyft’s motion to dismiss this case for improper venue, making Lyft the
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`prevailing party against AGIS’s attempt to hold Lyft legally liable for patent infringement. As the
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`prevailing party, Lyft respectfully requests this Court to enter its Bill of Costs. Separately, Lyft
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`respectfully requests an award of a limited portion of its attorneys’ fees relating to issues that
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`would have been avoided if AGIS had performed an adequate pre-suit investigation and agreed to
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`mitigate ongoing costs when the Court confirmed Lyft’s position.
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`I.
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`STATEMENT OF FACTS
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`AGIS initiated the instant lawsuit against Lyft on January 29, 2021. AGIS Software
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`Development LLC v. Lyft, Inc., No. 2:21-cv-00024-JRG (E.D. Tex. Jan 29, 2021), Dkt. 1
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`(“Complaint”); see also Dkt. 14 (consolidating 2:21-cv-00024-JRG with 2:21-cv-00072-JRG). In
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`its Complaint, AGIS alleged venue was proper in the Eastern District of Texas based primarily on
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`a purported Express Drive location located at 928 West Spring Creek Parkway, Plano, Texas
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`75023 (“Alleged Plano Express Drive Location”). See Complaint, ¶¶ 6-7. The only other bases
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`for venue that AGIS identified in its Complaint were “dedicated pickup locations,” which AGIS
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`abandoned during briefing on Lyft’s motion to dismiss, and “vehicles of Lyft Drivers” allegedly
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`located in the Eastern District of Texas, which the Court swiftly dismissed as far removed from
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`the “established” place of business required to find venue in a district. See id., ¶¶ 8-10.
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`After reviewing the Complaint, Lyft informed AGIS that the Alleged Plano Express Drive
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`Location could not serve as a basis for venue because it had closed over 1.5 years earlier and filed
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`a motion to dismiss on this basis, but AGIS neither withdrew nor amended its Complaint upon
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`2
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`receiving this information. See Dkt. 30 (Lyft’s April 27, 2021 Motion to Dismiss for Improper
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`Venue (“Motion”)). In its Motion, Lyft explained via a sworn declaration that the Alleged Plano
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`Express Drive Location closed in 2019, and thus, it could not serve as a basis for venue in this case
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`because venue is assessed at the time the complaint is filed. See id. at 4; Pers. Audio, LLC v.
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`Google, Inc., 280 F. Supp. 3d 922, 930 (E.D. Tex. 2017). In its Motion, Lyft also explained that
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`it does not have “dedicated pickup locations”—an assertion AGIS tacitly dropped in its response
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`to Lyft’s motion—and that it is implausible to consider moving vehicles as “established” places
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`of business under In re Cray. See id.; see also In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017).
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`The parties completed briefing on the venue issues on June 22, 2021, with AGIS maintaining that
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`the Alleged Plano Express Drive Location both existed and could serve as a basis for venue against
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`Lyft, ignoring Lyft’s sworn declaration testifying to its closure, and apparently refusing to visit the
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`Plano location to confirm its alleged presence. See Dkt. 64 (AGIS’s Response to Lyft’s Motion);
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`Dkt. 87 (Lyft’s Reply in Support of Lyft’s Motion); Dkt. 90 (AGIS’s Sur-Reply in Support of Dkt.
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`64). Lyft invited AGIS to serve venue discovery shortly after the parties completed their briefing,
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`but AGIS never took Lyft up on its offer. See Ex. 1.
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`On August 18, 2021, the Court sua sponte ordered an evidentiary hearing on Lyft’s Motion,
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`specifically identifying “the operations at 928 West Spring Creek Parkway, Plano, Texas, at the
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`time of filing suit” to be a factual issue “that must be determined.” Dkt. 125. It was only then that
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`AGIS propounded venue discovery on Lyft—three months after fact discovery had first opened
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`and nearly two months after Lyft had invited AGIS to serve discovery—in the form of
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`interrogatories, document requests, and a 30(b)(6) deposition, and requested Lyft’s compliance
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`with the requested discovery on an expedited basis. See Ex. 2. Lyft worked diligently to provide
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`written discovery responses, several document productions containing documents responsive to
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`AGIS’s requests, and a 30(b)(6) witness (Mr. Loosen) for deposition all before the Court-ordered
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`evidentiary hearing on September 29, 2021, and all of which confirmed the information Lyft
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`provided at the start of the litigation: the Alleged Plano Express Drive location closed 1.5 years
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`ago in 2019. Lyft also made Mr. Loosen available for further questioning by counsel for AGIS
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`and the Court at the evidentiary hearing. Mr. Loosen confirmed again through sworn testimony at
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`both his deposition and the evidentiary hearing that Lyft closed the Alleged Plano Express Drive
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`Location in August 2019. See Ex. 3; Ex. 4; see also Dkt. 212 at 8.
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`Judge Payne issued a Report and Recommendation on November 10, 2021, which
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`recommended that Lyft’s Motion to Dismiss for improper venue be granted. See Dkt. 212.
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`Notably, the Report and Recommendation included specific findings that the Alleged Plano
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`Express Drive Location “was closed at the time of filing suit” and that AGIS’s alternative bases
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`for venue either “fail as matter of law under Cray or lack factual support in the record.” Id. at 9,
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`13. Shortly after issuance of the Report and Recommendation, counsel for Lyft reached out to
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`counsel for AGIS to discuss a stipulated stay of case deadlines while the parties awaited a decision
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`from Judge Gilstrap regarding the recommendation to dismiss. AGIS refused to agree to a stay
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`because it intended to object to the Report and Recommendation, arguing again (and without
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`evidence) that the Alleged Plano Express Drive location existed despite ample testimony to the
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`contrary, forcing the parties to continue preparing rebuttal expert reports, respond to discovery
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`motions, and other pressing tasks required during the close-of-discovery and expert phases of the
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`case. Dkt. 217 at 2. As a result of AGIS’s refusal, Lyft promptly filed an Opposed Motion to Stay
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`Pending Adoption of the Dispositive Report and Recommendation (Dkt. 212) (“Motion to Stay”)
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`and a request for an expedited briefing schedule. See Dkts. 217 & 218. In its Motion to Stay, Lyft
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`identified the many impending briefing and expert report deadlines that could be avoided if the
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`case was stayed while awaiting the Court’s final decision on the Report and Recommendation.
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`Dkt. 217 at 3.
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`Almost two weeks after Lyft requested a stipulated stay, on the day before Thanksgiving
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`and two business days before rebuttal expert reports were due, AGIS agreed to a stipulated stay of
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`the case in order to secure an extension on its deadline to file its objections to the Court’s Report
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`and Recommendation. See Dkt. 235. In the nearly two-week period when AGIS refused to stay
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`the case (before it ultimately agreed when it needed an extension for itself), Lyft incurred
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`substantial legal expenses related to preparing court filings and expert reports.
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`On January 19, 2022, the Court adopted Judge Payne’s Report and Recommendation over
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`AGIS’s objections and granted Lyft’s Motion, dismissing this case. Dkt. 334.
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`II.
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`LEGAL STANDARD
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`FED. R. CIV. P. 54(d)(1) gives district courts discretion to award costs to the “prevailing
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`party” unless “a federal statute, [the Federal Rules of Civil Procedure], or a court order provides
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`otherwise.” FED. R. CIV. P. 54(d)(1). “Prevailing party” is interpreted consistently between Rule
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`54(d) and 35 U.S.C. § 285. B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 677 (Fed. Cir.
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`2019); see also Manildra Milling Corp. v. Ogilvie Mills, Inc., 76 F.3d 1178, 1182 (Fed. Cir. 1996)
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`(“By establishing a single definition of prevailing party in the context of patent litigation, we
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`promote uniformity in the outcome of patent trials.”).
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`Under 35 U.S.C. § 285, a court “may award reasonable attorney fees to the prevailing
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`party” in “exceptional cases.” An “exceptional” case under § 285 is “simply one that stands out
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`from others with respect to the substantive strength of a party’s litigating position (considering
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`both the governing law and the facts of the case) or the unreasonable manner in which the case
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`was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014).
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`The exceptionality determination is made on a “case-by-case” basis based on “the totality of the
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`circumstances.” Id. If the case is exceptional, courts are to determine whether fees should be
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`awarded and, if so, in what amount. See, e.g., Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340,
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`1344 (Fed. Cir. 2001).
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`III.
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`DISCUSSION
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`a. AS THE PREVAILING PARTY IN THIS CASE, LYFT IS ENTITLED TO ITS COSTS.
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`i. Lyft is the Prevailing Party
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`This Court’s adoption of Judge Payne’s November 10, 2021 Report and Recommendation
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`makes Lyft a prevailing party for purposes of FED. R. CIV. P. 54. See Dkt. 334. As an initial
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`matter, the Supreme Court has expressly recognized that a “defendant may prevail even if the
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`court’s final judgment rejects the plaintiff’s claim for a nonmerits reason.” CRST Van Expedited,
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`Inc. v. EEOC, 578 U.S. 419, 431 (2016); see also B.E. Tech., 940 F.3d at 679 (“[A] defendant can
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`be deemed a prevailing party even if the case is dismissed on procedural grounds rather than on
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`the merits.”); O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, 955 F.3d 990 (Fed. Cir. 2020).
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`Indeed, “Congress could not have intended to bar defendants from obtaining attorney’s fees in
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`[cases where ‘significant attorney time and expenditure may have gone into contesting the claim’]
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`on the basis that, although the litigation was resolved in their favor, they were nonetheless not
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`prevailing parties. CRST, 578 U.S. at 434.
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`Lyft is the prevailing party in this case because Lyft successfully rebuffed AGIS’s attempt
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`to “alter the parties’ legal relationship in an infringement suit.” Dragon Intellectual Prop., LLC v.
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`Dish Network LLC, 956 F.3d 1358, 1361 (Fed. Cir. 2020) (citation omitted); see also CRST, 578
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`U.S. at 431 (explaining that “[p]laintiffs and defendants come to court with different objectives”;
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`a “plaintiff seeks a material alteration in the legal relationship between the parties” and a
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`“defendant seeks to prevent this alteration to the extent it is in the plaintiff’s favor.”). Notably,
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`Lyft received a decision with judicial imprimatur that defeated AGIS’s attempt to adjudicate its
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`claims against Lyft in this District. See B.E. Tech., 940 F.3d at 678 (“A decision with judicial
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`imprimatur is required to give rise to prevailing party status.”).
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`AGIS disagrees that Lyft is the prevailing party in this case simply because this Court has
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`not yet made the explicit declaration. As set forth in AGIS’s responses to Lyft’s now-moot motions
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`to extend its deadline for the instant motion, AGIS contests Lyft’s status as the prevailing party in
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`this lawsuit because “the Court must have identified the requesting party as the ‘prevailing party’”
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`as “a threshold matter in requesting costs and attorney fees.” Dkt. 362 at 3. But AGIS has
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`identified no authority in support of this alleged predicate requirement, and Lyft is unaware of any
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`such case law. See id. With respect to AGIS’s discussion of CRST and B.E. Tech. (in its filings
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`opposing Lyft’s extension motions), AGIS reads in findings that the Court did not make. See id.
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`at 3-4. Indeed, neither of these cases stand for the proposition that a district court must declare a
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`prevailing party before considering a motion seeking costs or fees. The fact that this Court has not
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`yet made an express declaration of whether Lyft is the prevailing party does not preempt it from
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`doing so now. In fact, this Court has previously made such findings of prevailing party status on
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`motions seeking costs and/or fees. See, e.g., Order Entering Bill of Costs, Nichia Corp. v. Everlight
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`Elecs. Co., No. 2:13-cv-00702-JRG (E.D. Tex. Nov. 13, 2017), ECF No. 223 (finding plaintiff to
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`be the prevailing party in the same order awarding costs to plaintiff); Memorandum Opinion and
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`Order, WPEM, LLC v. SOTI Inc., No. 2:18-cv-00156-JRG (E.D. Tex. Feb. 4, 2020), ECF No. 55
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`(finding defendant to be the prevailing party in the same order awarding fees to defendant).
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`Moreover, this Court has even invited briefing regarding prevailing party status in fee motions.
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`See, e.g., Order WPEM, LLC v. SOTI Inc., No. 2:18-cv-00156-JRG (E.D. Tex. Mar. 5, 2019), ECF
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`No. 36 at 2 (“[A]ny such motion for an award of fees must address whether a party is a ‘prevailing
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`party’ when the plaintiff voluntarily dismisses its claims with prejudice.”).
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`If the Court declines to find Lyft the prevailing party, then AGIS will never be required to
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`reimburse Lyft for the costs that it imposed or be subject to a fee claim based on its unreasonable
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`litigation conduct in this case. Such an outcome is especially concerning given that AGIS’s
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`behavior in this case does not appear to be an isolated occurrence. Indeed, unreasonable litigation
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`tactics appear to be AGIS’s modus operandi when it comes to litigating its infringement claims
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`concerning the Asserted Patents or related patents. See, e.g., Lyft, Inc. v. AGIS Software
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`Development LLC, No. 5:21-cv-04653-BLF (N.D. Cal.), Dkt. 51 at 1 & 10 (explaining AGIS’s
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`proposal to start discovery anew in the Northern District of California case rather than allowing
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`use of discovery from this case). A finding that Lyft is the prevailing party in this case enables
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`Lyft to seek its costs and fees incurred as a result of AGIS subjecting Lyft to nearly ten months of
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`unnecessary litigation. Awarding fees in this scenario is aligned with the deterrent purpose of the
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`fee-shifting provision, allowing prevailing defendants “to recover whenever the plaintiff’s ‘claim
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`was frivolous, unreasonable, or groundless.’” See CRST, 578 U.S. at 432 (citing Christiansburg
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`Garment Co. v. EEOC, 434 U.S. 412, 420 (1978)). Absent a finding here that Lyft is the prevailing
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`party, AGIS will never suffer the consequences of its egregious behavior. In view of the above,
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`Lyft now seeks a declaration from this Court that it is the prevailing party in this case.
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`ii. THE COSTS LYFT SEEKS ARE RECOVERABLE.
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`As the prevailing party, Lyft is entitled to recover certain costs incurred during this
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`litigation. See FED. R. CIV. P. 54(d)(1); Ex. 5. The Parties agree that most items in Lyft’s bill of
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`costs are recoverable by the prevailing party, but AGIS contests Lyft’s ability to pursue two
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`categories of costs enumerated in Exhibit 5. Specifically, AGIS contends that Lyft cannot recover
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`the printing costs identified within Exhibit 5 and the costs associated with the depositions of
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`Rebecca Clark, Malcolm K. Beyer III, and George Barros because, per counsel for AGIS, “none
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`of the costs are associated with any trial preparation or event because this matter did not proceed
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`as far.” Ex. 6. However, that is not the standard. This Court’s Standing Order Regarding Bills of
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`Costs specifically permits the recovery of deposition transcripts, copying costs, and printing costs,
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`and AGIS has not provided Lyft any authority in support of its position that recoverable costs are
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`limited to those required for “trial.” In fact, the various categories of recoverable costs identified
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`in the Court’s Standing Order Regarding Bills of Costs identify costs “obtained for use in the case”
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`without any reference to AGIS’s purported “trial” limitation.
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`Pursuant to 28 U.S.C. § 1920, Fifth Circuit precedent, and this Court’s Standing Order, the
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`objected-to costs are recoverable, and Lyft respectfully requests that costs be taxed against AGIS
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`in the amount shown in Lyft’s proposed Bill of Costs.
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`b. THIS CASE IS EXCEPTIONAL UNDER 35 U.S.C § 285 AND THE COURT SHOULD
`AWARD LYFT SOME OF ITS FEES
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`AGIS’s conduct in litigating the present action renders this case exceptional under 35
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`U.S.C. § 285. AGIS filed the instant case against Lyft without performing an adequate pre-suit
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`investigation which would have confirmed that Lyft does not maintain a regular and established
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`place of business at the Alleged Plano Express Drive Location, a fact that Lyft informed AGIS
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`about at the beginning of the case, maintained throughout the case, and formed the basis of the
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`Court’s order to dismiss this case. Compounding AGIS’s inadequate pre-suit investigation, when
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`Judge Payne rendered an opinion confirming what Lyft had told AGIS from the start of the case,
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`AGIS refused to agree to stay proceedings pending a final ruling on the venue issue only to relent
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`when it needed an extension to its own deadline to file objections to Judge Payne’s Report and
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`Recommendation. These objections, when ultimately filed, recycled arguments that Judge Payne
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`already overruled and even included a bald and egregious accusation that Mr. Loosen committed
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`perjury. These actions and inactions of AGIS were entirely unreasonable, forcing Lyft to incur
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`substantial costs which would have otherwise been avoided if AGIS had 1) filed suit in a proper
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`venue; 2) accepted sworn facts indicating AGIS’s basis for venue was unfounded; or 3) mitigated
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`the harm it had caused by agreeing to stay the action after a recommendation for dismissal on
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`improper venue had been made by this Court. Lyft therefore respectfully requests the Court grant
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`Lyft’s request for a limited amount of its fees related to unnecessary expenses incurred as a result
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`of AGIS’s inadequate pre-suit investigation and AGIS’s refusal to mitigate expenses following the
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`Court’s recommendation to dismiss the case.
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`i. LYFT WAS PREJUDICED BY AGIS’S FAILURE TO PERFORM AN ADEQUATE
`PRE-SUIT INVESTIGATION
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`AGIS’s primary basis for asserting venue in this case rested on Lyft allegedly maintaining
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`a regular and established place of business at the Alleged Plano Express Drive Location.1
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`Complaint, ¶¶ 7-8. But Lyft did not maintain a place of business at the alleged site at the time the
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`Complaint was filed, nor has it maintained a place of business there since summer 2019, a fact that
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`AGIS could have easily confirmed by simply driving to the purported Express Drive location. See
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`Ex. 3; Ex. 4. AGIS’s sole evidence was an outdated webpage, which Lyft rebutted with a sworn
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`declaration. See Complaint, n.2; Dkt. 30 at 4; Dkt. 64 at 9; Dkt. 87 at 2. But even after Lyft
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`provided this probative evidence, AGIS refused to drop the non-existent Express Drive location as
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`a basis for venue. See Dkt. 90 at 1. AGIS’s refusal to investigate and accept a sworn truth resulted
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`in Lyft incurring substantial expense to move to dismiss AGIS’s case for improper venue, respond
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`to written discovery concerning improper venue served nearly four months later, defend a
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`deposition on improper venue, prepare for and attend an evidentiary hearing on improper venue,
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`1 The other bases upon which AGIS alleged venue was proper included (1) alleging that certain
`vehicles that could move freely between this and other districts were “established” in the district,
`which the Court soundly rejected; and (2) “dedicated pickup locations” that don’t exist and that
`AGIS tacitly dropped in its response to Lyft’s motion to dismiss, neither of which could support
`venue under Cray. See Complaint, ¶¶ 8-10; Cray, 871 F.3d 1355; see also Dkt. 212 & 217.
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`and oppose AGIS’s objections to this Court’s recommendation to grant Lyft’s motion to dismiss
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`for improper venue filed nearly eight months after Lyft’s initial motion. AGIS pursued its baseless
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`venue allegations through venue discovery2—where Lyft again told AGIS that the Alleged Plano
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`Express Drive Location was closed at all times relevant to the venue inquiry through written
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`discovery responses, document productions, and a corporate witness—and an evidentiary hearing,
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`where Lyft reiterated the same thing yet another time before AGIS and the Court. See Ex. 3; Ex.
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`4. Lyft should never have had to endure these unnecessary expenses to demonstrate that the
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`Alleged Plano Express Drive Location was closed when AGIS could have, and should have,
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`confirmed as much by performing a rudimentary pre-suit investigation.
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`Courts routinely find cases to be exceptional for § 285 purposes based on case deficiencies
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`that could have been resolved with an adequate pre-suit investigation. See, e.g., Lumen View Tech.
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`LLC v. Findthebest.com, Inc., 811 F.3d 479, 481 (Fed. Cir. 2016) (affirming an exceptionality
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`ruling where the court found “that the suit was frivolous and objectively unreasonable . . . and ‘the
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`most basic’ pre-suit investigation would have shown [non-infringement]”); WPEM, Inc. v. SOTI
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`Inc., No. 2:18-CV-00156-JRG, 2020 U.S. Dist. LEXIS 17449, at *8 (E.D. Tex. Feb. 4, 2020)
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`(“Having failed to conduct a pre-filing investigation, the Court finds that WPEM has unreasonably
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`subjected SOTI to the costs of litigation and should properly bear its attorneys’ fees”); Xiaohua
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`Huang v. Huawei Techs. Co., No. 2:15-CV-01413-JRG-RSP, 2017 U.S. Dist. LEXIS 43817, at *9
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`(E.D. Tex. Mar. 25, 2017) (finding case exceptional under § 285 based in part on the fact that there
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`was “no evidence of any meaningful pre-suit investigation”).
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`The parties’ entire dispute concerning the Alleged Plano Express Drive Location could
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`2 As mentioned supra n. 1, Lyft invited AGIS to serve venue discovery months before the Court
`ordered such discovery in a good-faith effort to expedite resolution of the venue issue. AGIS did
`not take advantage of Lyft’s offer.
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`have been avoided if AGIS had simply attempted to verify its accusation that Lyft maintained an
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`Express Drive location in Plano. Doing so would not have even required AGIS to send an
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`investigator to Plano; AGIS could have easily confirmed this fact by simply calling the Pep Boys
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`location that Lyft allegedly operated out of. See Complaint, ¶ 7. Rather than taking the few
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`minutes needed to perform this diligence, AGIS subjected Lyft to nearly ten months of litigation
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`to demonstrate a public fact. Then, instead of accepting the factual record or Judge Payne’s ruling
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`that the “Alleged Plano Express Drive Location could not serve as a basis for venue,” AGIS
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`resorted to unfounded allegations of perjury to try and revive its rejected venue theory. See Dkt.
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`258 at 7; see also Dkt. 312 at 4. The Federal Circuit has condoned fee awards in view of this kind
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`of unreasonable persistence in party positions. See Energy Heating, LLC v. Heat On-The-Fly,
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`LLC, 15 F.4th 1378, 1384 (Fed. Cir. 2021) (affirming an exceptionality ruling based on a finding
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`that the patent owner “litigated the case in an unreasonable manner by persisting in its positions”).
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`In view of the above, AGIS’s conduct with respect to the venue issue alone warrants a
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`finding of exceptionality. See Internet Machs. LLC v. Alienware Corp., No. 6:10-cv-23, 2013 U.S.
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`Dist. LEXIS 115723, at *50 (E.D. Tex. June 19, 2013) (“Cases qualifying as exceptional under
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`§ 285 ‘usually feature some material, inappropriate conduct related to the matter in litigation, such
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`as . . . misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal
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`Rule of Civil Procedure 11, or like infractions.’”) (citing Serio-US Indus., Inc. v. Plastic Recovery
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`Techs. Corp., 459 F.3d 1311, 1321-22 (Fed. Cir. 2006).
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`ii. AGIS’S INITIAL REFUSAL AND SUBSEQUENT AGREEMENT TO STAY
`PROCEEDINGS WAS AN UNREASONABLE LITIGATION TACTIC.
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`Almost immediately after Judge Payne issued his Report and Recommendation (Dkt. 212)
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`concerning Lyft’s Motion, Lyft contacted AGIS regarding a potential stay of proceedings so that
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`the parties and the Court would not have to expend further resources on a case slotted for dismissal.
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`See Dkt. 217 at 6 (see certificate of conference). But AGIS rejected Lyft’s request for a stipulation
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`to stay pending a ruling on the Report and Recommendation, providing no explanation for doing
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`so other than that it intended to file objections. Id. at 2. Lyft submits that AGIS’s refusal was
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`objectively unreasonable, as a stipulated stay would not have prevented AGIS from filing its
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`objections, as was ultimately the case when AGIS finally agreed to a stipulated stay two weeks
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`later in exchange for an extension of its deadline on those same objections. See Dkt. 235; Dkt.
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`258. As the Supreme Court recognized in Octane Fitness, “the unreasonable manner in which [a]
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`case [is] litigated” may support a finding of exceptionality under 35 U.S.C. § 285. Octane Fitness,
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`572 U.S. at 554; see also Optis Wireless Tech., LLC v. Huawei Device USA, Inc., 421 F. Supp. 3d
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`410, 413 (E.D. Tex. 2019) (“In assessing the ‘totality of the circumstances,’ courts may consider
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`factors such as ‘frivolousness, motivation, objective unreasonableness (both in the factual and
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`legal components of the case) and the need in particular circumstances to advance considerations
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`of compensation and deterrence.’”) (citing Octane Fitness, 572 U.S. at 554 n.6). And, though
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`AGIS’s refusal on its own constitutes an unreasonable litigation tactic supporting a fee award, it
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`is AGIS’s subsequent agreement to stay the case, only when it needed to obtain an extension for
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`its own deadline and which directly conflicts with its original stated reason for refusing to agree
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`to a stay, that makes AGIS’s litigation conduct especially egregious.
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`As Lyft explained in its Motion to Stay (Dkt. 217), Lyft sought a stay of proceedings “to
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`preserve resources and avoid the burden and expense of litigating this case” as multiple,
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`significant, deadlines were imminent. Dkt. 217 at 3. Specifically, as Lyft explained in its Motion
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`to Stay, the parties were set to exchange rebuttal expert reports and engage in briefing related to
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`Motions to Compel and Lyft’s Motion to Strike in the following weeks, in addition to preparing
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`for expert depositions, dispositive motions, and motions to strike expert testimony. Id. at 1-3. The
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`amount of work Lyft required at that stage of the case was substantial, and it would all be moot if
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`the Court adopted Judge Payne’s recommendation to dismiss the case. Id. at 1-2. Lyft nevertheless
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`pressed forward to meet its deadlines, incurring significant legal costs along the way. Then, on
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`November 24—the day before Thanksgiving and two business days before rebuttal expert reports
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`were due—AGIS contacted Lyft to inform that it would agree to a stipulated stay if Lyft agreed to
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`an extension of AGIS’s deadline to file objections to Judge Payne’s report and recommendation
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`to dismiss the case for improper venue. Lyft set aside the self-serving nature of AGIS’s request
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`and agreed to AGIS’s proposal without hesitation because doing so was prudent for all involved,
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`including the Court. The parties filed their Joint Motion to Stay (Dkt. 235) later that day.
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`AGIS’s conduct here—its initial refusal and subsequent agreement to stay—appears to
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`have been a litigation tactic intended to prejudice Lyft. Indeed, in the two weeks it took for AGIS
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`to come around and agree to stay this case, Lyft incurred nearly $
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` in legal fees to meet
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`pressing deadlines, all of which could have been avoided but not for AGIS’s objectively
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`unreasonable refusal to agree to a stay when first requested. See Ex. 7. These actions are
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`reminiscent of those found by courts to support an award of fees under § 285. See, e.g., SRI Int’l,
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`Inc. v. Cisco Sys., Inc., 14 F.4th 1323, 1332 (Fed. Cir. 2021) (“Cisco’s litigation strategies …
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`created a substantial amount of work for both SRI and the court, much of which work was
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`needlessly repetitive or irrelevant or frivolous); Optis Wireless Tech., 421 F. Supp. 3d at
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`413(“Huawei engaged in litigation conduct where it used timing and delay to its advantage and
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`forced PanOptis to expend unnecessary resources.”); see also Advanced Ground Info. Sys. v.
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`Life360, Inc., No. 14-cv-80651-MIDDLEBROOKS, 2015 U.S. Dist. LEXIS 185188, at *4 (S.D.
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`Fla. Dec. 1, 2015) (explaining, when sanctioning AGIS’s predecessor-