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`EXHIBIT L
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`DARIN SNYDER (CA S.B. #136003)
`dsnyder@omm.com
`LUANN L. SIMMONS (CA S.B. #203526)
`lsimmons@omm.com
`MARK LIANG (CA S.B. # 278487)
`mliang@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`+1 415 984 8700
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`Attorneys for Plaintiff
`GOOGLE LLC
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`GOOGLE LLC,
` Plaintiff,
`v.
`AGIS HOLDINGS, INC., ADVANCED
`GROUND INFORMATION SYSTEMS,
`INC., AND AGIS SOFTWARE
`DEVELOPMENT LLC,
`Defendants.
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`Case No.
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR DECLARATORY
`JUDGMENT
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`Plaintiff Google LLC (“Google”) brings this action for declaratory judgment against
`Defendants AGIS Holdings, Inc. (“AGIS Holdings”), Advanced Ground Information Systems,
`Inc. (“AGIS, Inc.”), and AGIS Software Development LLC (“AGIS Software”) (collectively
`“AGIS” or “AGIS Entities”) and alleges:
`NATURE OF THE ACTION
`1.
`This is an action for declaratory judgment of non-infringement, invalidity, and
`unenforceability of U.S. Patent No. 8,213,970 (“’970 Patent”) against AGIS pursuant to the
`Declaratory Judgment Act, 28 U.S.C. §§ 2201-02, and the patent laws of the United States, 35
`U.S.C. § 100 et seq., and for other relief the Court deems just and proper.
`2.
`Google requests this relief because AGIS has asserted in multiple cases that
`Google and others infringe the ’970 Patent based on Google’s Find My Device (“FMD”)
`application.
`3.
`In 2017, AGIS asserted infringement of the ’970 Patent based on FMD in cases
`filed in the Eastern District of Texas (“EDTX”), against Huawei, LG, ZTE, and HTC. See AGIS
`Software Development LLC v. ZTE Corp., 2:17-cv-00517 (E.D. Tex.); AGIS Software
`Development LLC v. LG Elecs. Inc.., 2:17-cv-00515 (E.D. Tex.); AGIS Software Development
`LLC v. HTC Corp., 2:17-cv-00514 (E.D. Tex.); AGIS Software Development LLC v. Huawei
`Device USA Inc., 2:17-cv-00513 (E.D. Tex.). As part of those actions, AGIS served a subpoena
`to Google seeking discovery relating to FMD.
`4.
`In 2019, AGIS filed a complaint against Google in the Eastern District of Texas
`(“EDTX”) asserting, among other claims, the ’970 Patent against FMD. AGIS Software
`Development LLC v. Google LLC, EDTX, No. 2:19-CV-00361-JRG (“AGIS I”). While AGIS I
`was pending, AGIS amended the claims of the ’970 Patent to overcome prior art asserted during
`an ex parte reexamination (“EPR”) of the patent. After the EPR proceedings concluded, Google
`filed a Rule 12(b)(1) motion to dismiss AGIS’s claims regarding the ’970 Patent for lack of
`subject matter jurisdiction because AGIS had substantively amended the patent’s asserted claims
`to avoid prior art. Before the EDTX court resolved that motion, the Federal Circuit ordered the
`case transferred to the Northern District of California (“NDCA”). In re Google LLC, No. 2022-
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`140-42, 2022 WL 1613192, at *1 (Fed. Cir. May 23, 2022).
`5.
`The case was assigned to Judge Beth Labson Freeman in this District. AGIS
`Software Development LLC v. Google LLC, NDCA, No. 5:22-CV-04826-BLF (“the NDCA
`Case”). Google then refiled in this District its motion to dismiss the ’970 Patent for lack of
`subject matter jurisdiction. In response, AGIS dismissed the ’970 Patent with prejudice. See
`NDCA Case, Dkts. 437, 438. The remainder of the NDCA Case remains pending before Judge
`Freeman.
`6.
`Before AGIS agreed to dismiss the ’970 Patent with prejudice from the NDCA
`case, it filed a duplicative action against Google in the Western District of Texas, asserting the
`amended claims of the ’970 Patent against the same Google FMD application. AGIS Software
`Development LLC v. Google LLC, No. 6:23-CV-00160-DC-DTG (“the WDTX Case”).
`7.
`On April 4, 2023, the WDTX granted Google’s unopposed motion to stay the
`WDTX Case. See WDTX Case, Dkt. 11. As stated in the unopposed motion to stay, AGIS
`agreed to transfer the WDTX Case to this District following the stay: “[t]he parties have agreed
`that if and after the requested stay has been lifted, AGIS will not oppose a motion by Google to
`transfer this case to the Northern District of California following the stay.” See WDTX Case,
`Dkt. 10 at 3 n.1.
`8.
`On July 20, 2023, while the case was still stayed, AGIS voluntarily dismissed the
`WDTX Case without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i). See
`WDTX Case, Dkt. 12.
`9.
`Google denies that it has infringed or is infringing any claims of the ’970 Patent,
`denies that any claim of the ’970 Patent is valid or enforceable, and denies that AGIS can assert
`any claim of the ’970 Patent against Google.
`10.
`An actual and justiciable controversy therefore exists under 28 U.S.C. §§ 2201-
`2202 between Google and AGIS regarding the ’970 Patent.
`THE PARTIES
`11.
`Plaintiff Google LLC is a subsidiary of Alphabet Inc. with its principal place of
`business located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
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`12.
`According to Florida public records, Defendant AGIS Holdings, Inc. is organized
`and existing under the laws of the State of Florida, and maintains its principal place of business at
`92 Lighthouse Drive, Jupiter, FL 33469.
`13.
`According to Florida public records, Defendant AGIS, Inc. is organized and
`existing under the laws of the State of Florida, and maintains its principal place of business at 92
`Lighthouse Drive, Jupiter, FL 33469.
`14.
`On information and belief, Defendant AGIS Software is an agent and alter ego of
`AGIS, Inc. According to AGIS Software’s allegations in another litigation between the parties,
`AGIS software is a Texas limited liability company, having its principal place of business at 100
`W. Houston Street, Marshall, Texas 75670. Exhibit K ¶ 1.
`JURISDICTION AND VENUE
`15.
`This is a declaratory judgment action for patent non-infringement, invalidity, and
`unenforceability arising under the patent laws of the United States, Title 35, United States Code,
`Section 100 et seq. This Court has subject matter jurisdiction over this controversy pursuant to 28
`U.S.C. §§ 1331, 1338(a), 2201 and 2202.
`I.
`AGIS Accused Google of Infringing the ’970 Patent Based on FMD
`16.
`AGIS asserted the ’970 Patent against FMD and Google in AGIS I, which was
`transferred to the NDCA and became the NDCA Case, in International Trade Commission
`(“ITC”) Investigation No. 337-TA-1347 (“ITC Action”), and in the WDTX Case. AGIS
`dismissed its ’970 Claims from the NDCA case and voluntarily dismissed the WDTX case.
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`II.
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`Google Seeks Declaratory Judgments That It Does Not Infringe The ’970 Patent
`and That The ’970 Patent Is Invalid and Unenforceable
`17.
`Google denies that it infringes or has infringed the ’970 Patent through the
`making, using, distributing, sale, offering for sale, exportation, or importation of FMD or any
`related services for FMD or through the making, using, distributing, sale, offering for sale,
`exportation, or importation of devices that a may be configured to run FMD.
`18.
`AGIS’s infringement allegations, asserted in related actions, threaten actual and
`imminent injury to Google that can be redressed by judicial relief and warrants the issue of a
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`directed, requested, or facilitated any such infringement, and has never had any specific intent to
`do so.
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`COUNT I
`(Declaratory Judgment of Non-Infringement of the ’970 Patent by FMD)
`147. Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 146 of this Complaint as if fully set forth herein.
`148. AGIS claims to own all right, title, and interest in the ’970 Patent.
`149.
`In both the NDCA Case and the WDTX Case, AGIS alleged that Google infringed
`the ’970 Patent based on its design, development, and distribution of FMD. See, e.g., Exhibit K
`¶¶ 14, 15. AGIS further alleged that Google devices running FMD infringe the ’970 Patent. Id.
`150. FMD and Google products running FMD do not include or practice multiple claim
`limitations of the claims of the ’970 Patent, including, but not limited to:
`a.
`“a predetermined network of participants, wherein each participant has a
`similarly equipped PDA/cell phone that includes a CPU and a touch screen
`display a CPU and memory,”
`“a forced message alert software application program including a list of
`required possible responses to be selected by a participant recipient of a
`forced message response loaded on each participating PDA/cell phone,”
`“a sender PDA/cell phone and at least one recipient PDA/cell phone for
`each electronic message; a forced message alert software application
`program including a list of required possible responses to be selected by a
`participant recipient of a forced message response loaded on each
`participating PDA/cell phone,”
`“means for attaching a forced message alert software packet to a voice or
`text message creating a forced message alert that is transmitted by said
`sender PDA/cell phone to the recipient PDA/cell phone, said forced
`message alert software packet containing a list of possible required
`responses and requiring the forced message alert software on said recipient
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`b.
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`c.
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`d.
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`PDA/cell phone to transmit an automatic acknowledgment to the sender
`PDA/cell phone as soon as said forced message alert is received by the
`recipient PDA/cell phone,”
`“means for requiring a required manual response from the response list by
`the recipient in order to clear recipients response list from recipients cell
`phone display,”
`“means for receiving and displaying a listing of which recipient PDA/cell
`phones have automatically acknowledged the forced message alert and
`which recipient PDA/cell phones have not automatically acknowledged the
`forced message alert,”
`“means for periodically resending said forced message alert to said
`recipient PDA/cell phones that have not automatically acknowledged the
`forced message alert,”
`“means for receiving and displaying a listing of which recipient PDA/cell
`phones have transmitted a manual response to said forced message alert
`and details the response from each recipient PDA/cell phone that
`responded,”
`“means for transmitting the acknowledgment of receipt to said sender
`PDA/cell phone immediately upon receiving a forced message alert from
`the sender PDA/cell phone,”
`“means for allowing a manual response to be manually selected from the
`response list or manually recorded and transmitting said manual response
`to the sender PDA/cell phone,”
`“means for clearing the text message and a response list from the display of
`the recipient PDA/cell phone or stopping the repeating voice message and
`clearing the response list from the display of the recipient PDA/cell phone
`once the manual response is transmitted,”
`“A method of receiving, acknowledging and responding to a forced
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`m.
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`message alert from a sender PDA/cell phone to a recipient PDA/cell phone,
`wherein the receipt, acknowledgment, and response to said forced message
`alert is forced by a forced message alert software application program,”
`“transmitting an automatic acknowledgment of receipt to the sender
`PDA/cell phone, which triggers the forced message alert software
`application program to take control of the recipient PDA/cell phone and
`show the content of the text message and a required response list on the
`display recipient PDA/cell phone or to repeat audibly the content of the
`voice message on the speakers of the recipient PDA/cell phone and show
`the required response list on the display recipient PD A/cell phone,”
`“transmitting a selected required response from the response list in order to
`allow the message required response list to be cleared from the recipient's
`cell phone display, whether said selected response is a chosen option from
`the response list, causing the forced message alert software to release
`control of the recipient PDA/cell phone and stop showing the content of the
`text message and a response list on the display recipient PDA/cell phone
`and or stop repeating the content of the voice message on the speakers of
`the recipient PDA/cell phone,” and
`“providing a list of the recipient PDA/cell phones have automatically
`acknowledged receipt of a forced alert message and their response to the
`forced alert message,”
`151. Google does not infringe literally or under the doctrine of equivalents claims 2 and
`10-13 of the ’970 Patent, directly or indirectly, contributorily or otherwise through its or its user’s
`activities in conjunction with FMD.
`152. As set forth above, an actual and justiciable controversy therefore exists between
`Google and AGIS regarding whether FMD or any Google devices running FMD have infringed
`any of the asserted claims of the ’970 patent. A judicial declaration is necessary to determine the
`parties’ respective rights regarding the ’970 patent.
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`153. Google seeks a judgment declaring that Google does not directly or indirectly
`infringe claims 2 and 10-13 of the ’970 patent, either literally or under the doctrine of equivalents.
`COUNT II
`(Declaratory Judgment of Invalidity of the ’970 Patent)
`154. Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 146 of this Complaint as if fully set forth herein.
`155. AGIS claims to own all right, title, and interest in the ’970 Patent, including the
`right to assert all causes of action arising under that patent and the right to any remedies for
`infringement of it.
`156. The original claims 1 and 3-9 of the ’970 patent were already found invalid in
`view of prior art as part of an inter partes review proceeding, IPR2018-01079, and the Federal
`Circuit affirmed that finding. See AGIS Software Development, LLC v. Google LLC, No. 2020-
`1401 (Fed. Cir.). The remaining original claims 2 and 10-13 were found to be invalid in USPTO
`Reexamination Control Number 90/017,507 in view of the same or similar prior art as that
`presented in the inter partes review proceeding. In response to office actions rejecting those
`original claims, AGIS amended claims 2 and 10-13 to overcome those references to add new
`claim limitations, which the USPTO allowed.
`157. Google has a reasonable apprehension that AGIS will assert the ’970 Patent’s
`amended claims 2 and 10-13 against Google in the United States for alleged infringement based
`on FMD.
`158. Each of the claims 2 and 10-13 of the ’970 patent that has not been invalidated is
`invalid for failure to comply with at least one or more conditions for patentability set forth in one
`or more provisions of 35 U.S.C. §§ 101, 102, 103 and/or 112.
`159.
`For example, claims 2 and 10-13 are invalid as obvious in view of one or more of
`the following prior art references, either alone or in combination with each other:
`a.
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`b.
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`c.
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”)
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`during the reexamination of the ’970 patent even though paragraph 11 of the protective order
`entered by the E.D. Texas court expressly prohibited each of those activities given that Iturralde
`and Rubino had received “Highly Sensitive Material” of a technical nature from Google. As a
`result, Iturralde and Rubino were able to assist Jialin Zhong in pursuing amended claims that they
`believed would cover Google functionalities while purportedly overcoming the prior art Google
`had identified in its reexamination request. This conduct violated the protective order and has an
`immediate and necessary connection to AGIS’s assertion of the reexamined claims of the ’970
`patent in this suit. Accordingly, the equities require that AGIS be barred from enforcing the ’970
`patent against any products that AGIS accuses of infringement based on functionalities developed
`by Google given that Iturralde and Rubino advised, consulted, and participated in the drafting of
`amended claims in the ’970 patent despite having received highly confidential technical
`information concerning those functionalities.
`PRAYER FOR RELIEF
`WHEREFORE, Google prays for judgment as follows:
`A.
`Declaring that FMD and Google devices running FMD do not directly or
`indirectly infringe any asserted claims of the ’970 Patent, either literally or under the doctrine of
`equivalents;
`B.
`Declaring that each claim of the ’970 Patent is invalid and unenforceable;
`C.
`Declaring that the AGIS is barred from asserting the ’970 Patent against
`Google or FMD under Claim Preclusion, Res Judicata, and the Kessler Doctrine;
`D.
`Declaring that judgment be entered in favor of Google and against AGIS on
`Google’s claims;
`E.
`F.
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`Finding that this is an exceptional case under 35 U.S.C. § 285;
`Awarding Google its costs and attorneys’ fees in connection with this action;
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`and
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`proper.
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`G.
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`Awarding Google such other and further relief as the Court deems just and
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`JUDGMENT
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`JURY DEMAND
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`Pursuant to Federal Rule of Civil Procedure 38 and Civil Local Rule 3-6, Google demands
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`a jury trial on all issues and claims so triable.
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`Dated: July 21, 2023
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`O’MELVENY & MYERS LLP
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`By: /s/ Luann L. Simmons
` Luann L. Simmons
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`DARIN SNYDER
`LUANN L. SIMMONS
`MARK LIANG
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`Attorneys for Plaintiff Google LLC
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