Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 1 of 11 PageID #: 1151
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:21-cv-00072-JRG-RSP
`(Lead Case)
`
`CASE NO. 2:21-cv-00024-JRG-RSP
`(Member Case)
`
`CASE NO. 2:21-cv-00026-JRG-RSP
`(Member Case)
`
`CASE NO. 2:21-cv-00029-JRG-RSP
`(Member Case)
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`§
`
` §
`
`
`§
`§
`§
`§
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LYFT, INC.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`WHATSAPP, INC.
`
`DEFENDANT UBER TECHNOLOGIES, INC.’S REPLY IN SUPPORT OF ITS
`MOTION TO STAY PENDING RESOLUTION OF STANDING ISSUE
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 2 of 11 PageID #: 1152
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`INTRODUCTION .......................................................................................................... 1
`II.
`ARGUMENT ................................................................................................................. 1
`A.
`AGIS Ignores Uber’s Cited Case Law. .......................................................................... 1
`1. AGIS Bears the Burden of Proof to Establish Standing. ................................................ 1
`2. Standing Is a Threshold Issue. ........................................................................................ 2
`“Hereby Assigns” Conveys a Present Assignment. ........................................................ 3
`3.
`B.
`AGIS Ignores Uber’s Uncontroverted Factual Information. .......................................... 3
`C.
`The Factors Favor a Stay. ............................................................................................... 4
`CONCLUSION .............................................................................................................. 5
`III.
`
`
`
`
`
`i
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 3 of 11 PageID #: 1153
`
`
`
`
`
`
`
`TABLE OF ABBREVIATIONS
`
`Meaning
`Abbreviation
`U.S. Patent No. 8,213,970 (Dkt. No. 1-1)
`’970 Patent
`U.S. Patent No. 7,630,724 (Dkt. No. 1-2)
`’724 Patent
`U.S. Patent No. 7,031,728 (Dkt. No. 1-3)
`’728 Patent
`U.S. Patent No. 10,299,100 (Dkt. No. 1-4)
`’100 Patent
`U.S. Patent No. 10,341,838 (Dkt. No. 1-5)
`’838 Patent
`Complaint/Compl. Complaint for Patent Infringement (Dkt. No. 1) (Jan. 29, 2021)
`Defendant Uber’s Motion to Stay Pending Resolution of Standing Issue
`Mot.
`(Dkt. No. 25)
`Plaintiff AGIS’s Opposition to Uber’s Motion to Stay (Dkt. No. 42)
`
`Opp.
`
`
`
`ii
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 4 of 11 PageID #: 1154
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Aerotel, Ltd. v. Radiant Telecom Inc.,
`569 F. Supp. 2d 387 (S.D.N.Y. Aug. 8, 2008) ...........................................................................2
`
`AGIS Software Dev. LLC v. HTC Corp.,
`2018 WL 4680558 (E.D. Tex. Sept. 28, 2018) ..........................................................................4
`
`Alps South, LLC v. Ohio Willow Wood Co.,
`787 F.3d 1379 (Fed. Cir. 2015)..................................................................................................1
`
`Alzheimer’s Inst. of Am. v. Elan Corp. PLC,
`2011 WL 6748634 (N.D. Cal. Dec. 22, 2011) ...........................................................................4
`
`AntennaSys, Inc. v. AQYR Techs., Inc.,
`976 F.3d 1374 (Fed. Cir. 2020)..................................................................................................2
`
`Belfer Cosms., LLC v. Nordstrom, Inc.,
`2016 WL 8792318 (S.D. Tex. Feb. 26, 2016) ...........................................................................5
`
`ESN, LLC v. Cisco Sys., Inc.,
`685 F. Supp. 2d 631 (E.D. Tex. 2009) .......................................................................................2
`
`Israel Bio-Engineering Project v. Amgen Inc.,
`475 F.3d 1256 (Fed. Cir. 2005)..................................................................................................2
`
`Nomadix, Inc. v. Hewlett-Packard Co.,
`2012 WL 1577436 (C.D. Cal. May 7, 2012) .............................................................................3
`
`Sicom Sys., Ltd. v. Agilent Techs., Inc.,
`427 F.3d 971 (Fed. Cir. 2005)................................................................................................1, 2
`
`U.S. Philips Corp. v. Iwasaki Elec. Co.,
`505 F.3d 1371 (Fed. Cir. 2007)..................................................................................................2
`
`STATUTES
`
`35 U.S.C. § 100(d) ...........................................................................................................................1
`
`
`
`
`iii
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 5 of 11 PageID #: 1155
`
`
`
`I.
`
`INTRODUCTION
`
`Uber asks this Court to stay this case to resolve a threshold issue: Whether AGIS has
`
`standing to bring claims of infringement for three of the five asserted patents. In support of that
`
`request, Uber presented substantial case law, including from this Court, that recognizes the
`
`plaintiff bears the burden of establishing standing and that questions of standing must be resolved
`
`before proceeding to the merits of the case. AGIS does not dispute, nor does it even address this
`
`case law. In support of its request, Uber also presented substantial evidence—evidence that
`
`showed one of the inventors worked at Microsoft at the time he purported to assign his inventions
`
`to AGIS and that Microsoft’s employment agreement included language whereby employees
`
`assign, upon employment, rights to any future inventions to Microsoft. AGIS does not dispute any
`
`of the evidence, and in large part also does not even address much of the evidence. The absence
`
`of any challenge to either the law or to the evidence leaves little room for doubt that a stay will
`
`simplify the issues in this case. Uber, therefore, respectfully requests that the Court grant the
`
`motion to stay, permit discovery regarding the standing issue and enter an order setting a briefing
`
`and hearing schedule that will resolve the standing question expeditiously.
`
`II.
`
`ARGUMENT
`
`A.
`
`AGIS Ignores Uber’s Cited Case Law.
`
`1.
`
`AGIS Bears the Burden of Proof to Establish Standing.
`
`“Standing to sue is a threshold requirement in every federal action.” Sicom Sys., Ltd. v.
`
`Agilent Techs., Inc., 427 F.3d 971, 975–76 (Fed. Cir. 2005). A plaintiff must satisfy both Article
`
`III standing, as well as standing defined by § 281 of the Patent Act, which limits claims for patent
`
`infringement to the “patentee.” Alps South, LLC v. Ohio Willow Wood Co., 787 F.3d 1379, 1382
`
`(Fed. Cir. 2015). The “patentee,” however, “is not limited to the person to whom the patent issued,
`
`but also includes ‘successors in title to the patentee.’” Id. (quoting 35 U.S.C. § 100(d)). Because
`
`
`
`1
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 6 of 11 PageID #: 1156
`
`
`
`the statute allows for assignment of title, the “[a]ssignation printed on the face of a patent is not a
`
`conclusive indication of the patent’s current ownership.” U.S. Philips Corp. v. Iwasaki Elec. Co.,
`
`505 F.3d 1371, 1375 (Fed. Cir. 2007). And, as Uber explained, when those assignments result in
`
`co-owners, absent joinder of all co-owners there is no standing. Israel Bio-Engineering Project v.
`
`Amgen Inc., 475 F.3d 1256, 1264–65 (Fed. Cir. 2005). Finally, “[t]he party bringing the action
`
`bears the burden of establishing that it has standing.” Sicom, 427 F.3d at 976.
`
`Taking this together, AGIS bears the burden to show that it alone has standing to bring
`
`claims for infringement of the ’724, ’100 and ’838 Patents. And, as U.S. Philips confirms, AGIS
`
`cannot satisfy that burden by pointing simply to the assignee designations appearing on the covers
`
`of the patents. Likewise, in Aerotel, Ltd. v. Radiant Telecom Inc., 569 F. Supp. 2d 387, 392
`
`(S.D.N.Y. 2008), which AGIS cites (Opp. at 4), the court’s observation that issuance by the PTO
`
`constitutes prima facie proof of title does not absolve AGIS of that burden. This is particularly
`
`true here, given that Uber has presented substantial, unrebutted evidence that objectively calls into
`
`question AGIS’s standing. See Dkt. Nos. 25-2, 25-3, 25-4, 25-5, 25-6. Instead, as this Court held:
`
`“The burden of demonstrating standing falls to [Plaintiff], as [i]t is well established . . . that before
`
`a federal court can consider the merits of a legal claim, the person seeking to invoke the jurisdiction
`
`of the court must establish the requisite standing to sue.” ESN, LLC v. Cisco Sys., Inc., 685 F.
`
`Supp. 2d 631, 641 (E.D. Tex. 2009) (alterations in original).
`
`2.
`
`Standing Is a Threshold Issue.
`
`In its opposition, AGIS does not dispute—or even address—that (1) all co-owners of a
`
`patent must be joined to satisfy the statutory standing requirements (Mot. at 6–7) and (2) courts
`
`“must resolve” statutory standing questions before addressing the merits of the infringement
`
`claims (Mot. at 7–8). This unrebutted, black-letter law alone mandates a stay of this case. See,
`
`e.g., AntennaSys, Inc. v. AQYR Techs., Inc., 976 F.3d 1374, 1377, 1378–79 (Fed. Cir. 2020).
`
`
`
`2
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 7 of 11 PageID #: 1157
`
`
`
`3.
`
`“Hereby Assigns” Conveys a Present Assignment.
`
`AGIS also fails to address the cases Uber cited in its Motion that hold the language “hereby
`
`assigns” in an agreement indicates a present assignment of future inventions. Mot. at 4–5. Rather
`
`than confront that law, AGIS turns to cases that do not include the “hereby assigns” language.
`
`Indeed, the only case cited by AGIS that discusses an employment agreement—Nomadix—did not
`
`contain this language. Opp. at 4–5 (citing Nomadix, Inc. v. Hewlett-Packard Co., 2012 WL
`
`1577436, at *2 (C.D. Cal. May 7, 2012)). There, the agreement contained the language “shall . . .
`
`assign” and the court found this “promissory language . . . [wa]s insufficient to transfer legal title.”
`
`Nomadix, 2012 WL 1577436 at *2. Neither does AGIS challenge that the 2005 Microsoft
`
`Agreement included a “hereby assigns” provision, in contrast to promissory language found in the
`
`agreement at issue in Nomadix. Nor can it; the Microsoft Agreement required employees “to grant
`
`and [] hereby grant, transfer, and assign to MICROSOFT” all rights to any inventions conceived
`
`during employment. Mot. at 3.
`
`B.
`
`AGIS Ignores Uber’s Uncontroverted Factual Information.
`
`Rather than address, much less dispute, the evidence Uber presented, AGIS blankly asserts
`
`that Uber provided no evidentiary basis of standing issues. Opp. at 1. This is simply not true—
`
`Uber submitted evidence that establishes that:
`
`•
`
`•
`
`•
`
`Mr. Rice was employed by Microsoft at the time he executed assignments
`to the ’724, ’100, and ’838 Patents (Mot. at 3–4, Dkt. Nos. 25-2, 25-5, 25-
`6);
`Mr. Rice’s work at Microsoft included location-based technology that
`overlaps with the technology claimed in the Asserted Patents (Mot. at 3,
`Dkt. Nos. 25-2, 25-3);
`The Microsoft employment agreement in effect in 2005 included language
`that conveyed a present assignment of future inventions.
`
`3
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 8 of 11 PageID #: 1158
`
`
`
`Mot. at 3, Dkt. No. 25-4. AGIS presents no contrary evidence to any of these points. There is no
`
`declaration from Mr. Rice1 stating that (i) he did not work for Microsoft, or disputes when he
`
`joined Microsoft, (ii) he did not sign an employment agreement, or explains that the employment
`
`agreement he did sign omitted a “hereby assigns” provision, or (iii) his work at Microsoft was
`
`unrelated to the technology claimed in the Asserted Patents. The absence of even a half-hearted
`
`dispute strongly supports the stay and the discovery requested by Uber to allow the Court to resolve
`
`this threshold issue.
`
`
`
`Apparently unable to challenge the evidence, AGIS responds with the obvious: The
`
`exemplary 2005 Microsoft Agreement Uber submitted was signed by someone other than Mr.
`
`Rice. But that is precisely why Uber filed its motion—Uber recognizes that the Court cannot
`
`resolve the standing issue without more information and thus seeks limited discovery on the issue.
`
`Notably, AGIS does not even argue that the discovery sought or the timing of that discovery and
`
`subsequent motion practice (other than who files the first brief) is unreasonable.
`
`C.
`
`The Factors Favor a Stay.
`
`In its opposition, AGIS argues that Uber “did not address any factors in submitting that a
`
`stay be granted.” Opp. at 3 (emphasis in original). Not so. Uber addressed all three factors and
`
`cited numerous decisions staying cases pending resolution of standing issues. Mot. at 8–10. As
`
`those cases make clear, given the potentially dispositive nature of the standing issue, the factors
`
`weigh in favor of a stay. See, e.g., Alzheimer’s Inst. of Am. v. Elan Corp. PLC, 2011 WL 6748634,
`
`at *7 (N.D. Cal. Dec. 22, 2011) (“A stay . . . is warranted where a decision by the court on the
`
`issue of patent ownership [] is potentially dispositive of the dispute in this case.”).
`
`Prejudice. AGIS’s only claim of prejudice is that it has an interest in timely enforcement
`
`
`1 At least as of 2018, Mr. Rice was an employee of AGIS. AGIS Software Dev. LLC v. HTC
`Corp., 2018 WL 4680558, at *8 (E.D. Tex. Sept. 28, 2018).
`
`
`
`4
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 9 of 11 PageID #: 1159
`
`
`
`of its patent rights. Opp. at 3. Despite filing numerous other lawsuits (such as in 2017 and 2019,
`
`for example), one of which included the ’728 patent, AGIS waited until now to assert its patents
`
`against Uber. AGIS’s claim of prejudice thus rings hollow in light of its history of repeated patent
`
`litigation campaigns—all of which excluded Uber.
`
`Stage of Case. AGIS concedes that this case is in its early stages. Given that statutory
`
`standing defects are threshold issues that the Court must resolve, staying the case at its early stages
`
`will save resources and time that may otherwise be wasted by proceeding with discovery and claim
`
`construction on patents for which AGIS has no right to assert on its own.
`
`Simplification of Case. Throughout its opposition, AGIS improperly characterizes this
`
`factor as whether the stay will conclusively simplify issues. Opp. at 1, 5. But the cases do not
`
`require such a showing. See, e.g., Belfer Cosms., LLC v. Nordstrom, Inc., 2016 WL 8792318, at
`
`*5–6 (S.D. Tex. Feb. 26, 2016) (collecting cases). AGIS’s only argument in support of this factor
`
`is that the standing issue doesn’t apply to two of the five asserted patents. However, as explained
`
`in Uber’s motion, for one of these two patents—the ’970 patent—all claims are subject to an ex
`
`parte reexamination proceeding, and its claim scope is likely to change. Mot. at 10. The other
`
`patent—the ’728 patent—is subject to a pending motion to dismiss for failure to state a claim of
`
`infringement and failure to satisfy 35 U.S.C. § 101.
`
`That this case has been consolidated with other cases only tilts the scale more in favor of a
`
`stay. While there is not a complete overlap in asserted patents, there is an asserted patent in each
`
`action that names Mr. Rice as a co-inventor and presents the same co-ownership issue. Thus, this
`
`standing issue is pervasive in all member cases, and early resolution will only simplify the issues.
`
`III. CONCLUSION
`
`For the above reasons, and given that statutory standing defects are threshold issues, Uber
`
`respectfully requests that the Court stay the case and order limited discovery.
`
`
`
`
`
`5
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 10 of 11 PageID #: 1160
`
`
`
`Respectfully submitted,
`
`Dated: May 17, 2021
`
`
`
`By:
`
`
`By:
`
`
`
`
`
`
`
`
`
`/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
`
`
`
`/s/ Melissa R. Smith
`Melissa R. Smith
`Texas State Bar No. 24001351
`GILLIAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: 903.934.8450
`Facsimile: 903.934.9257
`Email: melissa@gilliamsmithlaw.com
`
`
`Attorneys for Defendant Uber Technologies, Inc.
`d/b/a Uber
`
`
`
`6
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 52 Filed 05/17/21 Page 11 of 11 PageID #: 1161
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 17, 2021, the foregoing was electronically filed in compliance
`
`with Local Rule CV-5(a) and served via the Court’s electronic filing system on all counsel who
`
`have consented to electronic service on this 17th day of May, 2021.
`
`/s/ Mark N. Reiter
`Mark N. Reiter
`
`
`
`
`
`7
`
`