AGIS Software Development LLC v. Samsung Electronics Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Samsung Electronics Co., Ltd. (Republic of Korea) and Samsung Electronics America, Inc. (New York)
  • Plaintiff’s Counsel: McKool Smith, P.C.; Brown Rudnick LLP
• Case Identification: 2:19-cv-362, E.D. Tex., 11/04/2019
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendants are subject to personal jurisdiction, have committed acts of infringement, and maintain a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Android-based mobile devices and associated software applications infringe patents related to establishing and managing ad hoc, password-protected communication networks for sharing location and other data.
• Technical Context: The technology at issue facilitates real-time situational awareness by allowing groups of users to create temporary, secure networks on mobile devices to track each other's locations on a map and communicate.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or specific licensing history concerning the patents-in-suit. Both patents-in-suit are subject to a terminal disclaimer.

Case Timeline

Date	Event
2004-09-21	Earliest Priority Date for ’123 and ’829 Patents
2017-08-29	U.S. Patent No. 9,749,829 Issues
2017-11-14	U.S. Patent No. 9,820,123 Issues
2019-11-04	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,820,123 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"

The Invention Explained

• Problem Addressed: The patent describes a significant communication problem for first responders, military, and other emergency groups during a disaster. These groups often cannot easily communicate with each other ("cross communicate") or quickly establish a temporary, secure network to coordinate activities, as conventional systems lack interoperability and require pre-configuration ('123 Patent, col. 2:7-38).
• The Patented Solution: The invention provides a method for users to quickly form an ad hoc, password-protected network using mobile devices (like PDAs or smartphones) running specialized software. By entering a common network name and password to a central server, participants can automatically share their GPS location, status, and other data, which is then displayed on an interactive map for all members of the group ('123 Patent, col. 2:51-68, col. 3:46-59). This enables real-time, coordinated situational awareness without needing to pre-enter user information.
• Technical Importance: This approach aimed to solve the critical "chain of command" and inter-agency communication gaps that plagued emergency response efforts by leveraging commercial mobile technology for rapid, secure group formation and data sharing ('123 Patent, col. 2:21-49).

Key Claims at a Glance

• The complaint asserts independent claim 23 (Compl. ¶19).
• Essential elements of claim 23 include:
  • Performing, by a first device, a method that includes receiving a message from a second device to join a group.
  • Sending first location information to a first server and receiving second location information from the server, where the second location info pertains to other devices in the group.
  • Sending a request for and receiving georeferenced map data from a second server.
  • Presenting the map and user-selectable symbols for the other devices on an interactive display.
  • Identifying user interaction with a symbol and, based on that interaction, using an Internet Protocol to send data to the corresponding device.
• The complaint does not explicitly reserve the right to assert dependent claims but makes a general prayer for relief on "one or more claims of each of the Patents-in-Suit" (Compl. ¶(a) at p. 22).

U.S. Patent No. 9,749,829 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"

The Invention Explained

• Problem Addressed: Like its related ’123 Patent, this patent addresses the challenge emergency and military personnel face in establishing rapid, secure, and interoperable voice and data networks in the field without prior setup ('829 Patent, col. 2:7-20). The patent highlights the difficulty of coordinating different organizations, such as police and fire departments, at a disaster scene. ('829 Patent, col. 2:21-38).
• The Patented Solution: The patented system allows a server to manage an ad hoc group of devices. The server receives requests to join a group, shares location information among group members, and facilitates remote control actions. For instance, a second device can request the location of a first device, receive it, and then send a message to remotely control an action on that first device (e.g., play a sound), all mediated by one or more servers ('829 Patent, Abstract; col. 15:1-40).
• Technical Importance: The invention provides a server-based architecture for managing dynamic groups on mobile devices, enabling not only location tracking but also remote device interaction, which is particularly useful in emergency or asset-tracking scenarios ('829 Patent, col. 2:39-49).

Key Claims at a Glance

• The complaint asserts independent claim 68 (Compl. ¶33).
• Essential elements of claim 68 include:
  • A system with a second device programmed to receive a request to join a group from a first device via a first server.
  • The second device sends an acceptance, joins the first device to the group, and authorizes repeated location sharing.
  • The second device sends a message to the first server requesting the first device's location.
  • The second device receives the first device's location and georeferenced map data.
  • The second device presents the first device's location as a symbol on a georeferenced map.
  • The second device identifies user interaction with the display specifying an action and sends a message to the first server to remotely control the first device to perform that action.
• The complaint does not explicitly reserve the right to assert dependent claims but makes a general prayer for relief on "one or more claims of each of the Patents-in-Suit" (Compl. ¶(a) at p. 22).

III. The Accused Instrumentality

Product Identification

• The complaint names a wide array of Samsung's Android-based smartphones, tablets, and smart watches as the "Accused Devices" (Compl. ¶15). It also identifies specific software features and applications, such as Google Maps, Find My Device (formerly Android Device Manager), Messages, and Google Latitude, that are pre-configured or downloadable on these devices (Compl. ¶15, ¶16).

Functionality and Market Context

• The complaint alleges the Accused Devices are configured with map-based communication features that allow users to form groups, view each other’s locations on a map, and engage in communication (Compl. ¶16). A key accused functionality is "Find My Device," which allows a user to remotely locate, ring, lock, or erase their own lost or stolen devices by viewing their location on a map (Compl. ¶16). The complaint includes a screenshot of the "Find My Device" interface showing a map with a phone's location and options to "PLAY SOUND," "LOCK," and "ERASE" (Compl. p. 9). Another accused functionality is location sharing within Google Maps, which allows users to share their real-time location with others who can then view it on a map (Compl. ¶22).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,820,123 Infringement Allegations

Claim Element (from Independent Claim 23)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
performing, by a first device... a method comprising: receiving a message sent by a second device, wherein the message relates to joining a group;	Accused Devices are programmed to form and join groups by receiving messages, such as when a user shares their location with another contact in Google Maps or adds a device to their Google account for tracking via Find My Device (Compl. ¶¶16, 22, 24).	¶24	col. 10:35-46
sending first location information comprising a location of the first device to a first server and receiving second location information from the first server, the second location information comprising one or more locations of one or more respective second devices included in the group;	Accused Devices send their location to Google's or Samsung's servers and receive location information for other devices in a shared group, which is then displayed (Compl. ¶¶23, 25, 26). A visual from Google Maps shows a user's icon and another user's icon ("Tina's Place") on a shared map (Compl. p. 11).	¶25, ¶26	col. 3:15-24
sending, from the first device to a second server, a request for georeferenced map data; receiving, from the second server, the georeferenced map data;	The Accused Devices are programmed to request and retrieve map information, including street-view and satellite maps, from multiple sources, such as Google's servers, to display user locations (Compl. ¶¶24, 27).	¶24, ¶27	col. 3:39-44
presenting, via an interactive display of the first device, a georeferenced map and one or more user-selectable symbols corresponding to one or more of the second devices...	The Accused Devices present location information on interactive maps with user-selectable symbols corresponding to other devices, as shown in screenshots for Google Maps location sharing and Find My Device (Compl. ¶¶26, 44).	¶26	col. 5:40-49
identifying user interaction with the interactive display selecting a particular user-selectable symbol... and user interaction with the display specifying an action and, based thereon, using an Internet Protocol to send data to the particular second device.	The Accused Devices permit a user to select a symbol on the map, which allows further data to be sent to the corresponding device, such as initiating communication or a remote action like "PLAY SOUND" in Find My Device (Compl. ¶¶16, 27).	¶27	col. 7:8-14

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "group" as described in the patent (e.g., a password-protected, ad hoc network for first responders) can be read to cover the alleged functionalities, such as an individual user tracking their own lost phone (a "group" of one) or informal location sharing between two consumer devices in Google Maps.
  • Technical Questions: The claim requires sending a request for and receiving map data from a "second server," distinct from the "first server" that handles location information. The infringement analysis will need to show that the accused system architecture involves two separate servers performing these distinct functions as claimed, rather than a single server or cloud service.

U.S. Patent No. 9,749,829 Infringement Allegations

Claim Element (from Independent Claim 68)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A system comprising: a second device programmed to perform operations comprising: receiving, from a first device via a first server, a request to join a group, wherein the group includes the first device;	The system includes a user's device (e.g., a PC or another phone, the "second device") which receives a request to join a group when a user adds their primary phone (the "first device") to their Google account for tracking via "Find My Device" (Compl. ¶¶16, 36).	¶16, ¶36, ¶42	col. 17:58-62
sending, to the first server, an indication of acceptance of the request... joining the first device to the group...	By signing into a Google account on the "Find My Device" service, the user accepts the joining of their phone to the tracking group, which is managed by Google's servers (Compl. ¶36).	¶36	col. 18:1-5
sending a first message to the first server, wherein the first message comprises data identifying the first device and a request for a first updated location...	The "Find My Device" application, on a user's PC or other device, sends a request to Google's servers to locate the user's lost phone (Compl. ¶¶16, 43-44).	¶43, ¶44	col. 18:25-33
after sending the first message, receiving, from the first server, a response to the first message, the response including first location information comprising the first updated location of the first device;	After the request, the user's "Find My Device" interface receives and displays the location of the lost phone from the server (Compl. ¶16, and p. 9 visual).	¶16, ¶44	col. 18:34-39
identifying user interaction with the display specifying an action and, based thereon, sending, to the first server, a third message related to remotely controlling the first device to perform an action...	A user can interact with the "Find My Device" display to select an action like "PLAY SOUND," "LOCK," or "ERASE." This sends a command to the server to remotely control the lost phone (Compl. p. 9 and p. 18 visuals).	¶16, ¶45	col. 18:49-59

• Identified Points of Contention:
  • Scope Questions: Claim 68 recites a "second device" receiving a request from a "first device" to join a group. In the context of "Find My Device," it raises the question of whether a user's phone ("first device") sending its registration data to a Google server, which is then accessed by the user's PC ("second device"), meets the "request to join a group" limitation as described in the patent.
  • Technical Questions: The claim requires the "second device" to perform the operations. The infringement theory may depend on whether the actions are performed by the client-side application (e.g., the browser running "Find My Device") or primarily by the server. The locus of the claimed programming and actions (client vs. server) may be a key point of dispute.

V. Key Claim Terms for Construction

• The Term: "group"
• Context and Importance: This term is foundational to both asserted patents. Its interpretation will determine whether the patents' scope, which appears focused on coordinated activities among multiple distinct users (e.g., first responders), can extend to the accused functionalities, such as an individual tracking their own device or two friends sharing locations. Practitioners may focus on this term because the strength of the infringement case depends on mapping the patent's specific "ad hoc password protected" group context to modern, consumer-facing applications.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of the asserted claims does not explicitly limit a "group" to a minimum number of users or to any particular purpose (e.g., emergency response).
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the invention in the context of "military, first responder, and other public and private emergency groups" ('829 Patent, col. 2:7-9) and solving coordination problems at a "disaster" ('829 Patent, col. 2:21-22). The method for forming a group is described as entering an "ad hoc event name and password" ('829 Patent, col. 3:46-49), which may suggest a more formal and secure formation process than the accused consumer features.
• The Term: "remotely controlling the first device to perform an action" ('829 Patent, Claim 1)
• Context and Importance: The complaint alleges this limitation is met by the "Find My Device" feature, which can make a phone ring, lock it, or erase its data (Compl. p. 9). The construction of "action" will be critical to determine if these specific device-management functions fall within the scope of what the patent teaches.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language "perform an action" is broad and not explicitly limited. The accused functions (playing audio, locking the device) are undeniably actions performed by the remote device.
  • Evidence for a Narrower Interpretation: The specification's description of remote control may be read in the context of coordinating group activities, rather than just device security. For example, the patent describes using soft switches for functions like initiating calls or sending messages between group members ('829 Patent, col. 7:35-42), which could be argued as the intended type of "action."

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Samsung instructs its customers on how to use the accused functionalities through "training videos, demonstrations, brochures, installations and/or user guides" (Compl. ¶¶21, 35). This is intended to show Samsung's active encouragement of the allegedly infringing acts performed by end-users.
• Willful Infringement: The complaint pleads willfulness based on knowledge of the patents "at least as of the date of this Complaint" (Compl. ¶¶20, 30, 34, 39). This establishes a basis for post-suit willfulness, alleging that any continued infringement after receiving the complaint is deliberate and justifies enhanced damages.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "group", which is described in the patent specification in the context of coordinated, password-protected networks for first responders, be construed to cover the accused consumer use cases, such as an individual tracking their single lost device or two friends informally sharing locations via a map application?
• A second central question will be one of architectural mapping: do the accused systems, which are complex, multi-component cloud services, actually operate in a manner that maps onto the specific server-client architecture recited in the claims, particularly the requirements in claim 23 for a "first server" and a "second server" performing distinct functions?
• A key evidentiary question will concern divided infringement: since the asserted claims are method and system claims involving actions by end-users, servers (operated by Google and/or Samsung), and multiple devices, the case may turn on whether Plaintiff can prove that a single actor performs all steps of any given claim or, alternatively, can attribute the actions of multiple parties to the Defendant under a theory of joint infringement.