Lyft, Inc. v. Agis Software Dev.

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LYFT, INC., Plaintiff, v. AGIS SOFTWARE DEVELOPMENT LLC, Defendant.

No. 21-cv-04653-BLF

United States District Court, N.D. California, San Jose Division

March 14, 2022

ORDER DENYING MOTION TO TRANSFER TO THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS PURSUANT TO 28 U.S.C. 1404(A) [RE: ECF NO. 34]

BETH LAB SON FREEMAN, United States District Judge.

Before the Court is AGIS Software Development LLC's (“AGIS Software”) Motion to Transfer to the United States District Court for the Eastern District of Texas Pursuant to 28 U.S.C. § 1404(a) in this declaratory judgment action brought by Lyft, Inc. (“Lyft”) regarding various AGIS Software patents. Lyft seeks declaratory judgment of non-infringement as to five AGIS Software patents: U.S Patent Nos. 7, 031, 728 (“'728 Patent”); 7 630, 724 (“'724 Patent”); 8, 213, 970 (“'970 Patent”); 10, 299, 100 (“'100 Patent”); and 10, 341, 838 (“'838 Patent”) (collectively, the “Asserted Patents” or “Patents-in-Suit”). The Patents-in-Suit generally pertain to mobile applications. AGIS Software previously sued Lyft for infringement of these patents in the Eastern District of Texas, but the suit was dismissed for improper venue. Now AGIS Software seeks to transfer this case to the Eastern District of Texas, citing convenience of witnesses the familiarity of the Eastern District of Texas court with these patents, AGIS Software's incorporation and headquarters in the Eastern District of Texas, among other factors. Lyft opposes, citing, inter alia, its headquarters in the Northern District of California, its own choice to sue in this forum, and the Eastern District of Texas's dismissal of AGIS Software's Texas case.

Based on the below reasoning, the Court DENIES AGIS Software's motion. The Court notes, however, that this ruling is made without regard to whether this Court has personal jurisdiction over AGIS Software. In a separate ruling, the Complaint was dismissed with leave to amend to allow Lyft the further opportunity to plead facts sufficient to demonstrate specific jurisdiction. See Order, ECF No. 61. Absent such pleading, this case will be dismissed.

I. BACKGROUND

Lyft is a Delaware limited liability corporation with its principal place of business in California that provides rideshare services through its software applications. See Complaint, ECF No. 1 ¶¶ 1, 4; id., Ex. A ¶ 11. AGIS Software is a Texas limited liability company with its principal place of business in Texas. See Complaint, ECF No. 1 ¶ 2. Lyft alleges that AGIS Software is an “agent and alter ego” of Advanced Ground Information Systems, Inc. (“AGIS, Inc.”), a Florida corporation with its principal place of business in Florida. See Id. Lyft further alleges that the sole member of AGIS Software is AGIS Holdings, Inc. (“AGIS Holdings”), a Florida corporation with its principal place of business at the same Florida location as AGIS, Inc. See id.

On January 29, 2021, AGIS Software filed a patent infringement action against Lyft in the Eastern District of Texas regarding the Asserted Patents based on “the Lyft and Lyft Driver applications and the related services and/or servers for the applications.” See Id. ¶ 4. The case was consolidated with AGIS Software's cases against T-Mobile US, Inc., T-Mobile USA, Inc. (collectively, “T-Mobile”), Uber Technologies, Inc. (“Uber”), and WhatsApp, Inc. (“WhatsApp”) before Judge Gilstrap under the caption AGIS Software Dev. LLC v. T-Mobile USA, Inc., No. 2:21-cv-00072-JRG-RSP (E.D. Tex.) (“T-Mobile Texas Case”). On January 19, 2022, Judge Gilstrap dismissed Lyft from the case for improper venue. See T-Mobile Texas Case, ECF No. 334. AGIS Software's claims against T-Mobile and WhatsApp in the Eastern District of Texas have been dismissed. See id., ECF Nos. 169, 220. Further, AGIS Software's case against Uber has been stayed pending dismissal following settlement. See id., ECF No. 355.

AGIS Software's patent infringement actions filed in 2021 were the third in a series of patent infringement litigation campaigns it has brought in the Eastern District of Texas. See AGIS Software Dev. LLC v. Apple, Inc., No. 2:17-cv-516 (E.D. Tex.); AGIS Software Dev. LLC v. HTC Corp., No. 2:17-cv-514 (E.D. Tex.); AGIS Software Dev. LLC v. Huawei Device USA Inc., et al., No. 2:17-cv-513 (E.D. Tex.); AGIS Software Dev. LLC v. ZTE Corp. et al., No. 2:17-cv-517 (E.D. Tex.); and AGIS Software Dev. LLC v. LG Elecs., Inc., No. 2:17-cv-515 (E.D. Tex.) (collectively, “AGIS I Cases”); see also AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-361 (E.D. Tex.); AGIS Software Dev. LLC v. Samsung Elecs. Co., Ltd. et al., No. 2:19-cv-362 (E.D. Tex.); and AGIS Software Dev. LLC v. Waze Mobile Limited, No. 2:19-cv-359 (E.D. Tex.) (collectively, “AGIS II Cases”). AGIS Software asserted the'970 Patent in some of its prior Eastern District of Texas lawsuits. The AGIS II Cases, which AGIS Software filed in 2019 and one of which (No. 2:19-cv-361) involves the '970 Patent, are still pending in the Eastern District of Texas.

On June 16, 2021, while AGIS Software's Eastern District of Texas action against Lyft was still pending, Lyft filed the present action for declaratory judgment of noninfringement of the same patents asserted against it in the Texas case. See Complaint, ECF No. 1. On September 27, 2021, AGIS Software moved to dismiss this action under Rule 12(b)(2) for lack of personal jurisdiction, which the Court granted with leave to amend. See ECF Nos. 32, 61. On October 5, 2021, AGIS Software moved to transfer this action to the Eastern District of Texas. See Motion, ECF No. 34.

AGIS Software argues that this case should be transferred to the Eastern District of Texas because (1) this action could have been brought there; (2) judicial economy favors transfer because Judge Gilstrap is familiar with the Asserted Patents; (3) the Eastern District of Texas is more convenient for the parties, party witnesses, and third-party witnesses; (4) sources of proof are located in both the Northern District of California and the Eastern District of Texas and can easily be transferred electronically; (5) Northern District of California courts are more congested than Eastern District of Texas courts; and (6) Texas has a substantial local interest in adjudicating a case involving a Texas corporation like AGIS Software. See Motion, ECF No. 34; Reply, ECF No. 50. In response, Lyft argues that transfer is unwarranted since (1) the interest of justice weighs against transferring to the Eastern District of Texas since Judge Gilstrap already dismissed the patent infringement action in that district; (2) Lyft's choice of forum takes precedence; (3) the convenience of the parties, party witnesses, and third-party witnesses weighs against transfer; (4) the bulk of relevant evidence is in the Northern District of California where the Accused Products were developed; and (5) the Northern District of California has a substantial interest in a controversy involving a resident company like Lyft. See Opposition, ECF No. 49.

II. LEGAL STANDARD

A district court may transfer a case in the interest of justice for the convenience of the parties and of the witnesses. 28 U.S.C. § 1404(a). In a case not involving a forum-selection clause, a district court considering a § 1404(a) motion “must evaluate both the convenience of the parties and various public-interest considerations.” Atl. Marine Const. Co. v. U.S. Dist. Court for W. Dist. of Texas, 571 U.S. 49, 62 (2013). The parties' convenience and other private interests entail consideration of a number of factors including the plaintiff's choice of forum, the parties' contacts with the forum, the contacts relating to the plaintiff's claims in the chosen forum, the “relative ease of access to sources of proof; availability of compulsory process for attendance of unwilling, and the cost of obtaining attendance of willing, witnesses; . . . and all other practical problems that make trial of a case easy, expeditious and inexpensive.” Id. at 62 n.6 (quoting Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)); Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000). “Public-interest factors may include ‘the administrative difficulties flowing from court congestion; the local interest in having localized controversies decided at home; [and] the interest in having the trial of a diversity case in a forum that is at home with the law.'” Atl. Marine, 571 U.S. at 62 n.6 (quoting Piper Aircraft, 454 U.S. at 241 n.6) (alteration in original).

A transfer is not appropriate if it “merely shift[s] rather than eliminate[s] the inconvenience.” Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986). The party seeking to transfer a case bears the burden of demonstrating that the balance of convenience and interests of justice factors “clearly favor transfer.” Lax v. Toyota Motor Corp., 65 F.Supp.3d 772, 781 (N.D. Cal. 2014).

III. DISCUSSION

The parties dispute whether two categories of factors favor transfer to the Eastern District of Texas: (1) private interest factors and (2) public interest factors. The Court considers each category of factors in turn.

A. Private Interest Factors

The Court first considers the “private interest factors” disputed by the parties. Atl. Marine, 571 U.S. at 62 n.6. The parties dispute whether (1) Lyft's choice of forum; (2) convenience for the parties and party witnesses; (3) convenience for third-party witnesses; (4) the relative ease of access to sources of proof favor transfer to the Eastern District of Texas; and (5) the cost of litigation. The Court considers each factor in turn.

i. Plaintiff's Choice of Forum

The parties dispute whether Lyft's choice of the Northern District of California in filing this...