Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 1 of 7 PageID #: 1903
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`T-MOBILE USA, INC. and T-MOBILE US,
`INC.,
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`Defendants.
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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
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`(LEAD CASE)
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`JURY TRIAL DEMANDED
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`UBER TECHNOLOGIES, INC., d/b/a
`UBER,
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`Defendant.
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`Case No. 2:21-cv-00026-JRG
`(MEMBER CASE)
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`JURY TRIAL DEMANDED
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`PLAINTIFF AGIS SOFTWARE DEVELOPMENT LLC’S SUR-REPLY
`IN OPPOSITION TO DEFENDANT UBER TECHNOLOGIES, INC.,
`D/B/A UBER’S MOTION TO STAY PENDING
`RESOLUTION OF STANDING ISSUE (DKT. 25)
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 2 of 7 PageID #: 1904
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`Plaintiff AGIS Software Development LLC (“AGIS” or “Plaintiff”), by and through its
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`undersigned counsel, hereby submits this sur-reply in opposition to Defendant Uber Technologies,
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`Inc., d/b/a Uber’s (“Defendant” or “Uber”) Motion to Stay Pending Resolution of Standing Issue
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`(Dkt. 25) (the “Motion”).
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`Defendant misrepresents AGIS’s arguments and alleges that AGIS has allegedly not
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`disputed or not addressed much of Defendant’s “evidence.” Dkt. 52 (“Reply”) at 5. To the
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`contrary, it is Defendant that largely ignores much of AGIS’s arguments. Defendant has not
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`submitted any evidence that calls into question AGIS’s standing. The motion lacks any factual
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`representations that are clear or accurate. The entire motion is based on excerpts of a draft
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`“Candidate Document” that appears to be generated by a non-party for an unknown individual.
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`Dkt. 25-4. The “Candidate Document” has no relation or relevance to any party to this case or to
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`Mr. Rice. Id. Moreover, other than bare attorney speculation, there is no evidence to support that
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`this “Candidate Document” was in any way “in effect in 2005” as to any of the non-parties, to the
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`extent the meaning of the term “in effect” is ascertainable. AGIS maintains that Defendant’s
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`motion is frivolous and designed to vexatiously multiply the proceedings.
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`AGIS does not dispute that standing is a requirement to bring suit in federal court. Rather,
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`AGIS disputes that (1) standing is not met here; and (2) a stay is not warranted in light of
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`Defendant’s unsubstantiated allegations regarding standing. Defendant attempts to create a factual
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`dispute regarding standing by submitting unsupported assumptions based on a generic “Candidate
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`Document” that is unrelated to any party to this case or Mr. Rice. Such submissions are insufficient
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`to warrant a stay here.
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`As a preliminary matter, Defendant incorrectly alleges that AGIS has failed to address the
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`case law it has set forth in its Motion. However, all of the cases cited by Defendant are inapposite.
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 3 of 7 PageID #: 1905
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`For example, in both Sicom Sys. Ltd. v. Agilent Techs., Inc. and Alps South LLC v. Ohio Willow
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`Wood Co., it was found that a licensee lacked standing to sue for infringement because (1) an
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`agreement executed permitted licensee “the exclusive right to sue for commercial infringement”
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`was insufficient to establish licensee had all substantial rights in the patent necessary to have
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`standing 427 F.3d 971, 974 (Fed. Cir. 2005); and (2) the licensee agreement executed restricted
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`licensee’s rights, for example, settling infringement actions without written consent from the
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`licensor (787 F.3d 1379, 1383-84 (Fed. Cir. 2015), respectively. Moreover, the issue in U.S.
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`Philips Corp. v. Iwasaki Elec. Co., was whether the purported infringer had notice of the patent
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`under § 287(a). 505 F.3d 1371, 1375 (Fed. Cir. 2007). In Israel Bio-Eng’g Project v. Amgen Inc.,
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`the Federal District reviewed the District Court’s determination on summary judgment regarding
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`“ownership of a future invention, which became the subject matter of only one claim” based on a
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`provision of research and development agreements entered between Israel and the Israel Bio-
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`Engineering Project. 475 F.3d 1256, 1267 (Fed. Cir. 2007). The same applies for AntennaSys,
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`Inc. v. AQYR Techs., Inc., where the court had determined on summary judgment that a co-owner
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`must be joined for proper standing. 976 F.3d 1374, 1376 (Fed. Cir. 2020). However, the dispute
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`there concerned two inventors who assigned their interests to their respective employers, therein
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`the parties entered into a license agreement where one of the requirements (a sales requirement)
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`was not met, which resulted in only one half-interest in the patent becoming non-exclusive. Id. at
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`1376. None of these cases provide a legal basis to bring this frivolous motion.
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`As stated, AGIS has made a prima facie showing that AGIS is the owner of the Patents-in-
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`Suit, and accordingly, “[t]he burden thus shifts to Defendants to demonstrate that, though [the
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`inventors] conceived of the invention leading to the [Patents-in-Suit], ownership of this invention
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`automatically vested in one of [Mr. Rice’s] employers by operation” of the agreement. Dkt. 42
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`2
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 4 of 7 PageID #: 1906
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`(“Resp.”) at 8. Defendant incorrectly contends that it has provided “substantial, unrebutted
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`evidence that objectively calls into question AGIS’s standing.” Motion at 6. It has not.
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`Defendant’s citation to a generic “Candidate Document” from Microsoft without any
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`authentication nor any evidence that this is the agreement binding Mr. Rice is insufficient.
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`Moreover, Defendant offers no reason why, if it purportedly has “unrebutted” evidence, it has yet
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`to bring a motion to dismiss. Cf. ESN, LLC v. Cisco Sys., Inc., 685 F. Supp. 2d 631 (E.D. Tex.
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`2009). As AGIS has stated in its opposition, Defendant offers no reason why if it has such
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`substantial evidence, it seeks a motion to stay instead of properly seeking a motion to dismiss for
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`lack of standing. Instead, Defendant seeks to conduct a fishing expedition to create a “factual
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`attack.” In support, Defendant cites to ESN, LLC, where defendants moved to dismiss the
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`complaint for lack of standing based on the actual employment agreement signed by the inventor
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`with an employer. Id. at 641. The Court found that based on this submission, the defendant had
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`made a sufficient “factual attack.” Id. at 640. In contrast, Defendant attaches a generic “Candidate
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`Document” from Microsoft without any authentication or any credible basis that the document is
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`an actual agreement, that the document was “in effect in 2005,” or that the document was signed
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`by Mr. Rice (it was signed by an unknown individual).
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`With regard to Defendant’s argument that AGIS was somehow required to submit a
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`declaration from Mr. Rice to rebut Defendant’s “evidence,”, there is no evidence to rebut. Mr.
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`Rice’s name or signature do not appear on the “Candidate Document.” Dkt. 25-4. In fact, the
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`document is electronically signed by an unknown individual having no relevance to this case or
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`Mr. Rice. Id. There is no evidence in the record to support that the “Candidate Document” is an
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`actual agreement or that the “Candidate Document” was “in effect in 2005.” Motion at 3; Reply at
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`3.
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`3
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 5 of 7 PageID #: 1907
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`As AGIS has established, the factors do not weigh in favor of granting a stay. Resp. at 7-
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`10. A stay would unduly prejudice AGIS despite Defendant’s conclusory statements that AGIS
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`was dilatory in bringing suit. See Secure Axcess, LLC v. U.S. Bank Nat’l Ass’n, No. 6:13-CV-717,
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`2014 WL 11394519, at *4 (E.D. Tex. Oct. 20, 2014) (“Moreover, Secure Axcess’s decision to wait
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`several years after the ’191 Patent issued to file complaints against the Defendants does not
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`establish that Secure Axcess was dilatory. Rather, Secure Axcess made a tactical decision,
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`possibly compelled by limited resources, to first assert the ’191 Patent against larger bank
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`defendants in a previous lawsuit.”). Further, while Defendant alleges that this issue will simplify
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`the case, it argues that (1) one of the Patents-in-Suit is subject to reexamination; and (2) one Patent-
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`in-Suit is subject to Defendant’s own Motion to Dismiss. See Reply at 9. As AGIS submitted
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`above, the alleged standing issue only affects one of the Patents-in-Suit, the ’724 Patent, contrary
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`to Defendant’s contentions. See supra 1. Even if a stay were granted, it would only address one
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`of the five Patents-in-Suit, and accordingly, would not simplify the case. AGIS respectfully
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`requests that Defendant’s Motion be denied.
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`I.
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`CONCLUSION
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`For the foregoing reasons, none of the factors weigh in favor of a stay and AGIS
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`respectfully requests that the Court deny Defendant’s Motion to Stay Pending Resolution of
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`Standing Issue (Dkt. 25) in its entirety.
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`Dated: May 31, 2021
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`FABRICANT LLP
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` /s/ Alfred R. Fabricant
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: ffabricant@fabricantllp.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@fabricantllp.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
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`4
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 6 of 7 PageID #: 1908
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`Email: vrubino@fabricantllp.com
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
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`Samuel F. Baxter
`State Bar No. 01938000
`Email: sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`State Bar No. 24012906
`Email: jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
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`ATTORNEYS FOR PLAINTIFF AGIS
`SOFTWARE DEVELOPMENT LLC
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`5
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`Case 2:21-cv-00072-JRG-RSP Document 70 Filed 05/31/21 Page 7 of 7 PageID #: 1909
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on May 31, 2021, all counsel of record who are
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`deemed to have consented to electronic service are being served with a copy of this document via
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`the Court’s CM/ECF system per Local Rule CV-5(a)(3).
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`/s/ Alfred R. Fabricant
` Alfred R. Fabricant
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