Case 2:21-cv-00072-JRG-RSP Document 85 Filed 06/15/21 Page 1 of 4 PageID #: 2220
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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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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`Case No. 2:21-cv-00072-JRG-RSP
` LEAD CASE
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`Before the Court is Defendant Uber Technologies, Inc.’s (“Uber”) Motion to Stay Pending
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`ORDER
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`Resolution of Standing Issue. Dkt. No. 25. Uber’s Motion seeks to stay the above captioned matter
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`for sixty days and requests (1) discovery of Plaintiff AGIS Software Development LLC (“AGIS”),
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`(2) a third-party subpoena to Microsoft Corporation, (3) discovery of Christopher R. Rice, and (4)
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`a briefing schedule wherein AGIS is required to file an opening brief establishing standing.
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`I.
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`BACKGROUND
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`On April 16, 2021, Case No. 2:21-cv-00026-JRG-RSP (the “Uber case”) was consolidated
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`alongside two other member cases under the lead Case No. 2:21-cv-00072-JRG-RSP. Dkt. No. 14.
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`AGIS alleges Uber infringes U.S. Patent Nos. 7,031,728, 7,630,724, 8,213,970, 10,299,100, and
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`10,341,838 (the “Patents-in-Suit against Uber”). Uber case, Dkt. No. 1 at 1. AGIS has asserted
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`other patents against other defendants. See, e.g., Dkt. No. 47 at 1 (alleging infringement of U.S.
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`Patent Nos. 9,408,055, 9,445,251, and 9,749,829 alongside U.S. Patent Nos. 7,031,728, 7,630,724,
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`and 9,467,838).
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`Uber’s Motion asserts AGIS lacks standing to assert U.S. Patent Nos. 7,630,724,
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`10,299,100, and 10,341,838 (“Patents-at-Issue”) because inventor Christopher R. Rice allegedly
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`Case 2:21-cv-00072-JRG-RSP Document 85 Filed 06/15/21 Page 2 of 4 PageID #: 2221
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`assigned the Patents-at-Issue to third-party Microsoft as part of an employment agreement prior to
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`assigning the Patents-at-Issue to AGIS. Dkt. No. 25 at 5–8. This issue does not affect U.S. Patent
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`Nos. 7,031,728 and 8,213,970, which are asserted by AGIS against Uber but not part of the Patents-
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`at-Issue, nor other patents asserted against other defendants where Mr. Rice is not identified as an
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`inventor. Uber’s Motion states that U.S. Patent Nos. 7,031,728 and 8,213,970 “have recognized
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`validity issues,” citing to a Federal Circuit appeal of litigation in Florida wherein “many”—but not
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`all—“of the claims of the ’728 patent were affirmed invalid” and an ongoing ex parte
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`reexamination of U.S. Patent No. 8,213,970. Id. at 8–9.
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`II.
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`LEGAL STANDARDS
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`A. Motion to Stay
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`District courts have the power to stay proceedings as part of the inherent power to control
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`their own docket. Landis v. N. Am. Co., 299 U.S. 248, 254 (1936); Nelson v. Grooms, 307 F.2d
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`76, 78 (5th Cir. 1962). In deciding whether to stay litigation pending reexamination, courts
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`consider: “(1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the
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`nonmoving party, (2) whether a stay will simplify the issues in question and trial of the case, and
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`(3) whether discovery is complete and whether a trial date has been set.” Soverain Software LLC
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`v. Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D. Tex. 2005) (citing Xerox Corp. v. 3Com
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`Corp., 69 F.Supp.2d 404, 406 (W.D. N.Y. 1999)).
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`B. Standing and Patent Ownership
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`Language such as “do hereby assign” and “shall belong” in an employment agreement can
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`create a present assignment of future inventions. See, e.g., Bd. of Trustees of Leland Stanford
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`Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832, 842 (Fed. Cir. 2009), aff’d, 563 U.S.
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`776 (2011) (“[T]he VCA’s language of ‘do hereby assign’ effected a present assignment of
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`Holodniy’s future inventions to Cetus.”); see also Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245,
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`1253 (Fed. Cir. 2000) (interpreting “shall belong” as a present assignment).
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`“Where one co-owner possesses an undivided part of the entire patent, that joint owner
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`must join all the other co-owners to establish standing. . . . Absent the voluntary joinder of all co-
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`owners of a patent, a co-owner acting alone will lack standing.” Israel Bio-Engineering Project v.
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`Amgen Inc., 475 F.3d 1256, 1264 (Fed. Cir. 2005). A plaintiff’s failure to join a co-owner forestalls
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`the plaintiff’s “ability to satisfy the statutory prerequisites for bringing an infringement suit.”
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`AntennaSys, Inc. v. AQYR Techs., Inc., 976 F.3d 1374, 1378–79 (Fed. Cir. 2020). Further, “a non-
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`consenting co-owner or coinventor can never be involuntarily joined in an infringement action . .
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`. because ‘the right of a patent co-owner to impede an infringement suit brought by another co-
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`owner is a substantive right.’” Id. at 1378 (citing STC.UNM v. Intel Corp., 754 F.3d 940, 946 (Fed.
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`Cir. 2014)).
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`III. ANALYSIS
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`Uber’s Motion asks the Court to stay proceedings in the above captioned matter until
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`resolution of an alleged standing issue. Dkt. No. 25 at 5–6. Even if AGIS does not have standing
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`to bring suit with respect to three of the patents asserted against Uber, there are still two other
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`patents asserted against Uber as well as several other defendants with other patents issued against
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`them. A stay will unduly prejudice and present a clear tactical disadvantage to the nonmoving
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`party by delaying adjudication, including regarding patents and issues not affected by Uber’s
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`motion. While a stay may simplify the issues in question if indeed AGIS does not have standing
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`to bring suit with respect to the three Patents-at-Issue, such simplification is minimal with respect
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`to the several other patents and defendants in this case. Discovery is not complete and a trial has
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`not been set, but discovery has begun and accordingly Uber’s request for discovery is moot.
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`Case 2:21-cv-00072-JRG-RSP Document 85 Filed 06/15/21 Page 4 of 4 PageID #: 2223
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`Discovery has been open for nearly a month. See Dkt. No. 15. Uber has not filed a motion
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`to dismiss due to lack of standing. The Court will consider expediting briefing on a motion to
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`dismiss filed by Uber due to lack of standing if and when it is filed, but the Court will not stay the
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`case to resolve this alleged issue.
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`IV. CONCLUSION
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`After due consideration, the Court DENIES Uber’s Motion.
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 15th day of June, 2021.
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