Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 1 of 9 PageID #: 23562
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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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`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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`§
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`AGIS SOFTWARE DEVELOPMENT LLC
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`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 REPLY IN SUPPORT OF OPPOSED MOTION FOR
`ATTORNEYS’ FEES UNDER 35 U.S.C. § 285 AND ENTRY OF BILL OF COSTS
`(DKT. 372)
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`

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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 2 of 9 PageID #: 23563
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`I.
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`INTRODUCTION
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`In its Response, AGIS argues that Lyft has not yet been declared the prevailing party by
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`the Court and that fees would otherwise be improper because AGIS’s venue claims were not
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`objectively baseless. Neither argument withstands scrutiny. On the first issue, if this Court agrees
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`that fees should be awarded for AGIS’s insufficient pre-suit investigation, it can identify Lyft as
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`the prevailing party in its order on Lyft’s Motion. On the second issue, if AGIS even attempted to
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`verify whether an Express Drive location existed in Plano when it filed its complaint, it could have
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`simply driven to or called the Pep Boys at the Plano site to confirm that Lyft was not operating an
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`Express Drive at that location. It did neither and instead maintained its path of willful blindness,
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`forcing Lyft to incur substantial legal fees to defend itself against AGIS’s baseless venue
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`allegations. Lyft seeks only fees associated with the motion, discovery, hearing, and post-decision
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`briefing needed to defend itself from AGIS’s baseless venue allegations. With respect to costs, if
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`the Court decides Lyft is the prevailing party, costs should be awarded as a matter of course, and
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`AGIS’s attempt to be the arbiter of discovery necessary for Lyft to defend itself should be rejected.
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`II.
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`ARGUMENT
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`a. Lyft is the Prevailing Party.
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`In its Response, AGIS argues that Lyft cannot seek its fees and costs because “the Court
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`has not identified Lyft as the ‘prevailing party’” in this case. Dkt. 374 at 4. But just because the
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`Court has not yet made such finding does not mean that it cannot or will not. Indeed, as Lyft
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`pointed out in its Motion, this Court has previously made declarations of prevailing party status
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`simultaneously when ruling on motions seeking costs and fees. See Dkt. 372 at 7-8. Lyft
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`respectfully requests that the Court do the same here and declare Lyft as the prevailing party in
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`this case consistent with controlling precedent. The “touchstone of the prevailing party inquiry
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`must be the material alteration of the legal relationship of the parties,” which a “plaintiff seeks”
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`1
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`

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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 3 of 9 PageID #: 23564
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`and a “defendant seeks to prevent.” CRST Van Expedited, Inc. v. EEOC, 578 U.S. 419, 422, 431
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`(2016); see also B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 679 (Fed. Cir. 2019). Because
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`it rebuffed AGIS’s infringement claims, Lyft is the prevailing party.
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`B.E. Tech. is particularly instructive. In that case, the Federal Circuit identified Facebook
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`as the prevailing party in a case dismissed as moot. See generally, id. Relying on CRST, the
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`Federal Circuit affirmed the district court’s determination that Facebook was the prevailing party
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`because it “obtained the outcome it sought via the mootness dismissal; it rebuffed B.E.’s attempt
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`to alter the parties’ legal relationship in an infringement suit.” Id. at 678–79. Additionally, the
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`Federal Circuit recognized that such dismissal “placed a judicial imprimatur upon B.E.’s claim for
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`patent infringement” giving rise to the prevailing party status. Id.
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`For the same reasons Facebook was the prevailing party in B.E. Tech., this Court should
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`declare Lyft the prevailing party here. Namely, Lyft rebuffed AGIS’s attempt to alter the parties’
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`legal relationship in an infringement suit, and the Court’s dismissal placed a judicial imprimatur
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`on AGIS’s infringement claim. AGIS’s attempt to distinguish B.E. Tech. and CRST by arguing
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`the district court “explicitly held out the prevailing party,” puts form before function and ignores
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`the Courts’ finding of prevailing parties in non-merits decisions. See Dkt. 374 at 4. Controlling
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`authority confirms Lyft is the prevailing party here, and Lyft requests this Court make such finding.
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`b. This Court Should Award Lyft’s Limited Request for Fees
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`Lyft’s Motion requests a limited subset of its total fees incurred in the instant case—those
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`relating to (1) defending against AGIS’s venue assertions premised on an inadequate pre-suit
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`investigation1; and (2) AGIS’s failure to mitigate the damages with a prompt stay following the
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`1 AGIS criticizes Lyft for relying on cases awarding fees based on inadequate pre-suit
`investigations, characterizing those cases as inapposite because the pre-suit investigations related
`to the merits of the case. Dkt. 374 at 10. Lyft respectfully disagrees but nonetheless submits that
`the merits of this case provide an independent basis for exceptionality due to the weakness of
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 4 of 9 PageID #: 23565
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`Court’s report and recommendation to dismiss (Dkt. 212). As detailed in Lyft’s Motion, these fees
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`were directly incurred as a result of AGIS’s unreasonable actions and inactions, which make this
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`case “exceptional” under 35 U.S.C. § 285 when considering the totality of the circumstances. See
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`generally, Dkt. 372; Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554
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`(2014). AGIS subjected Lyft to needless litigation for nearly ten months (most of which Lyft does
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`not seek to recover fees for2) all because AGIS failed to perform a rudimental pre-suit investigation
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`to confirm its venue allegations. Even after being confronted with sworn evidence establishing
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`the Plano Express Drive location did not exist, AGIS refused to perform its own independent
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`investigation (e.g., by calling or visiting the location) and maintained its unverified venue
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`allegations. Although AGIS disputes the reasonableness of its venue allegations, it does not
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`dispute that AGIS acted unreasonably by initially refusing and subsequently relenting to stipulate
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`to a stay. See Dkts. 372 & 374. The Court should adopt Lyft’s unrebutted positions on this point.
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`Instead of accepting its mistakes, AGIS attempts to blame Lyft for its own unreasonable
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`litigation conduct. See Dkt. 374 at 8-9. In doing so, AGIS ignores that Lyft invited AGIS to
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`propound venue discovery months before AGIS served any, and—once it eventually did—Lyft
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`provided responses and documents on an expedited basis, in addition to providing numerous
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`supplementations while simultaneously obtaining necessary third-party permissions. See Dkt. 372
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`at 3-4. Even now, AGIS continues to take untenable and inaccurate positions, asserting that Lyft
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`is a bad actor because it did not produce “any materials related to the termination of its relationship
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`with Hertz and Pep Boys in the District.” Dkt. 374 at 9. As an initial matter, AGIS’s assertion is
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`AGIS’s positions. See, e.g., Dkt. 213 at 25-28 (finding a claim indefinite); Dkt. 190 at 13 & 18-
`19 (alleging that AGIS’s infringement claims were barred due to a breach of contract).
`2 AGIS takes the position that Lyft should be unable to request fees incurred as a result of preparing
`its Motion. See Dkt. 374 at 10. These fees, however, are properly included in Lyft’s request as
`these fees were incurred only because AGIS failed to perform an adequate pre-suit investigation.
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`3
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`

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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 5 of 9 PageID #: 23566
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`factually incorrect—Lyft did provide documentary evidence demonstrating that Lyft discontinued
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`its relationship with Hertz and Pep Boys at the Plano site, which was further supported by sworn
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`deposition and hearing testimony. See Dkt. 30-1, ¶ 6. Furthermore, as both AGIS and this Court
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`knows, Lyft did not produce documentation evincing the termination of Lyft’s relationship with
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`Hertz because no such documentation exists. See Dkt. 312 at 4-5.
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`AGIS’s recitation of events also fails to recognize that Lyft was unnecessarily cooperative
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`and unquestionably reasonable by agreeing to share its deposition time with the co-defendants in
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`this case. See Dkt. 374 at 9. The Discovery Order entered in this case permits Lyft to take its own
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`7-hour deposition of an AGIS witness, and Lyft only asked this Court for additional time with
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`respect to one witness whom Lyft never had the opportunity to ask a single question. See Dkt. 79
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`at 5 (“Each party may take up to 40 total hours of deposition testimony of another party . . . each
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`deposition will be limited to no more than 7 hours.”); Dkt. 199 at 3-5. The fact of the matter is
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`that Lyft went to great lengths to efficiently manage and streamline this case while, in parallel,
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`preparing for trial in an improper venue by meeting its obligations to AGIS and this Court.
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`c. The Costs Sought by Lyft are Recoverable.
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`AGIS explains—for the first time in its response—that it objects to Lyft’s ability to recover
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`certain costs identified as “fees advanced in connection with subpoena to [witness]” in a previous
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`version of Lyft’s proposed Bill of Costs. See Dkt. 374 at 13-14; Dkt. 373-5. Had AGIS raised
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`such objection during the parties’ meet and confer regarding Lyft’s proposed bill of costs, Lyft
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`would have prepared a corrected version seeking only the witness costs specifically contemplated
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`in 28 U.S.C. § 1821. See Halupka v. Fed. Express Corp., No. 4:03-cv-350, 2006 U.S. Dist. LEXIS
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`115956, at *9 (E.D. Tex. Aug. 1, 2006) (granting prevailing party witness-related costs under 28
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`U.S.C. § 1821). Instead, AGIS waited to present this non-issue to the Court in briefing, resulting
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`in a waste of time and resources for the parties and Court. Likewise, AGIS contests—for the first
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`4
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`

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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 6 of 9 PageID #: 23567
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`time—particular printing costs identified in Lyft’s proposed Bill of Costs. See Dkt. 374 at 14.
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`Notwithstanding the foregoing, Lyft submits herewith a corrected and supplemented Bill of Costs
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`that withdraws all private process server fees and provides additional documentation responsive
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`to AGIS’s stated concerns regarding the disputed printing costs.3 See Ex. 1 at 3-4 & 89-95.
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`Because the remainder of the costs Lyft seeks are recoverable for the reasons explained below,
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`Lyft respectfully requests that costs be taxed against AGIS in the amount shown in Ex. 1.
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`AGIS disputes that Lyft can recover certain deposition costs despite such costs being
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`recoverable under 28 U.S.C. § 1920, Fifth Circuit precedent, and this Court’s Standing Order. See
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`Dkt. 374 at 12-14. Specifically, AGIS asserts that costs of certain third-party witness depositions
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`should be excluded because Lyft rejected AGIS’s offer to “not bring these witnesses to trial if Lyft
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`withdrew the deposition notices for these witnesses.” Dkt. 374 at 12. But it was AGIS who put
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`these witnesses at issue by identifying each in its Initial Disclosures as having “discoverable
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`information regarding the parties’ claims or defenses.” See id. at 12-13; Ex. 2 at 8 & 9. That AGIS
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`subsequently and unilaterally decided that it would not rely on these individuals’ testimony is not
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`a reason to preclude Lyft from seeking relevant testimony and recovering these costs. Lyft noticed
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`and took these depositions because the witnesses had relevant knowledge pertaining to this case
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`which was reasonably expected to be used for trial preparation, as confirmed by AGIS’s own initial
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`disclosures. Accordingly, such costs are recoverable. See Smith v. Chrysler Grp., No. 1:15-CV-
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`218, 2017 U.S. Dist. LEXIS 235402, at *14 (E.D. Tex. Oct. 23, 2017).
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`III.
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`CONCLUSION
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`For the foregoing reasons, Lyft respectfully requests this Court grant Lyft’s Motion.
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`3 The costs for printing documents for expert Dr. Neil Siegel are reasonably included in Lyft’s proposed Bill of Costs
`as such costs include the printing of his full report and Bates-stamped versions of documents produced with his report.
`Similarly, the costs incurred for the translation of 1996-005394 by Ozaki, a prior art reference identified in Lyft’s
`invalidity contentions and invalidity report, are recoverable as such translation was obtained for use in this case.
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 7 of 9 PageID #: 23568
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`Date: April 15, 2022
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`Respectfully submitted,
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`/s/ Jeremy J. Taylor
`
`Jeremy J. Taylor
`Arya Moshiri (Pro Hac Vice)
`Baker Botts L.L.P.
`jeremy.taylor@bakerbotts.com
`arya.moshiri@bakerbotts.com
`101 California St., Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Facsimile: (415) 291-6300
`
`Danny David
`Baker Botts L.L.P.
`danny.david@bakerbotts.com
`910 Louisiana Street
`Houston, TX 77002
`Telephone: (713) 229-1234
`Facsimile: (713) 229-1522
`
`Kurt Pankratz
`Bethany R. Salpietra
`Megan LaDriere White
`Baker Botts L.L.P.
`kurt.pankratz@bakerbotts.com
`bethany.salpietra@bakerbotts.com
`megan.ladriere@bakerbotts.com
`2001 Ross Ave., Ste. 900
`Dallas, TX 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`Jennifer C. Tempesta
`Baker Botts L.L.P.
`jennifer.tempesta@bakerbotts.com
`30 Rockefeller Plaza, 44th Floor
`New York, NY 10112
`Telephone: (212) 408-2571
`Facsimile: (212) 259-2571
`
`6
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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 8 of 9 PageID #: 23569
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`Lauren J. Dreyer
`Baker Botts L.L.P.
`lauren.dreyer@bakerbotts.com
`700 K Street NW
`Washington, DC 2000
`Telephone: (202) 639-7823
`Facsimile: (202) 639-1153
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`Brianna Potter (Pro Hac Vice)
`Baker Botts L.L.P.
`brianna.potter@bakerbotts.com
`1001 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 739-7556
`Facsimile: (650) 739-7656
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`Deron R. Dacus
`The Dacus Firm, P.C.
`ddacus@dacusfirm.com
`821 ESE Loop 323, Suite 430
`Tyler, Texas 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
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`Attorneys for Defendant Lyft, Inc.
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`7
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`Case 2:21-cv-00072-JRG-RSP Document 375 Filed 04/15/22 Page 9 of 9 PageID #: 23570
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that counsel of record who are deemed to have consented
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`to electronic services are being served with a copy of this document via the Court’s CM/ECF
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`system per Local Rule CV-5(a)(3) on this the 15th of April, 2022.
`
`/s/ Jeremy J. Taylor
`Jeremy J. Taylor
`
`8
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