DCT
5:22-cv-04827
AGIS Software Development LLC v. Waze Mobile Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AGIS Software Development LLC (Texas)
- Defendant: Waze Mobile Ltd (Israel)
- Plaintiff’s Counsel: McKool Smith, P.C.; Brown Rudnick LLP
- Case Identification: 2:19-cv-00359, E.D. Tex., 11/04/2019
- Venue Allegations: Venue is alleged to be proper in any judicial district on the basis that the Defendant is a foreign entity not resident in the United States.
- Core Dispute: Plaintiff alleges that Defendant’s Waze mobile navigation application infringes two patents related to methods and systems for providing ad hoc, password-protected communication networks that enable location sharing and group coordination.
- Technical Context: The technology enables users on mobile devices to rapidly form secure, temporary groups for sharing real-time location data and communicating, a system originally framed for coordinating first-responders or military units.
- Key Procedural History: The complaint alleges that the patented technology is licensed to AGIS, Inc. and is practiced by its LifeRing product, and that the product is marked pursuant to 35 U.S.C. § 287(a).
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 Issued |
| 2017-11-14 | U.S. Patent No. 9,820,123 Issued |
| 2019-11-04 | Complaint Filing Date |
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" (Issued Nov. 14, 2017)
The Invention Explained
- Problem Addressed: The patent describes a need for military, first responder, and other emergency groups to establish digital and voice networks quickly and easily, particularly in disaster scenarios where different organizations must coordinate without prior setup ('829 Patent, col. 2:7-18, col. 2:21-36).
- The Patented Solution: The invention provides a method for users to join a private, temporary network by entering a shared network name and password. Once connected via a central server, participants can automatically exchange location and status information, which is then displayed on an interactive map on each user's device, allowing for real-time situational awareness and coordination ('829 Patent, col. 2:51-65; Fig. 5).
- Technical Importance: This approach aimed to eliminate conventional communication problems between different emergency units by creating a common operational picture without requiring users to pre-enter contact information for other participants ('829 Patent, col. 2:11-18, col. 2:32-45).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims (Compl. ¶¶16-17).
U.S. Patent No. 9,749,829 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks" (Issued Aug. 29, 2017)
The Invention Explained
- Problem Addressed: The patent identifies the difficulty of coordinating different organizations (e.g., police and fire departments) at a disaster scene, where separate communication systems prevent effective cross-communication and shared situational awareness ('829 Patent, col. 2:21-36).
- The Patented Solution: The invention describes a client-server system where IP-capable devices (e.g., PDAs) running specific software connect to a remote server. By joining a mutually agreed-upon network with a name and password, each device reports its GPS position and status, and the server relays this data to all other network participants for display on their respective devices ('829 Patent, col. 2:57-col. 3:2; Fig. 7).
- Technical Importance: The system is designed to allow disparate groups to rapidly form a unified communication network, enabling both "up and down the chain of command" and inter-organization data and voice communications ('829 Patent, col. 2:41-45).
Key Claims at a Glance
- The complaint asserts independent claim 68 and reserves the right to assert other claims (Compl. ¶¶28-29).
- The essential elements of independent claim 68, a system claim directed to a "second device," include:
- Receiving a request from a first device to join a group.
- Sending an indication of acceptance of the request to a server.
- Sending a message to the server requesting an updated location of the first device.
- Receiving location information for the first device from the server.
- Receiving georeferenced map data.
- Presenting a georeferenced map with a symbol positioned at the first device's location.
- Identifying user interaction with the display to specify an action and, based thereon, sending a message to the server to remotely control the first device to perform that action.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the Waze mobile application and its associated features and services (Compl. ¶13).
Functionality and Market Context
- The complaint alleges that the Waze app provides functionality for users to form groups, view each other's locations on a map, and communicate using text, voice, and multimedia messages (Compl. ¶13). Users can share their location with contacts, who can then see the user's icon moving on a live map (Compl. ¶19, ¶21). The complaint includes a screenshot from a Waze support page that instructs users how to "Send location" and "Send a message to a friend" (Compl. p. 6). This functionality is facilitated by a client-server architecture, which the complaint supports with a screenshot from a Waze community wiki describing "Banks of servers" used for its operations (Compl. ¶20, p. 7).
IV. Analysis of Infringement Allegations
'123 Patent Infringement Allegations
- The complaint alleges infringement of at least claim 1 but does not provide the claim's text or a detailed element-by-element analysis. The infringement theory can be inferred from the general allegations. A screenshot from a YouTube video shows the Waze user interface with a map and symbols representing other users, which the complaint alleges is part of the infringing activity (Compl. ¶21, p. 8).
'829 Patent 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... | The Waze app allows users to form groups with friends to track each other's locations and communicate. | ¶13, ¶31 | col. 17:21-25 |
| sending, to the first server, an indication of acceptance of the request... | The Waze app, by successfully enabling group formation and communication, necessarily performs the background steps to establish the connection between users. | ¶13, ¶31 | col. 17:26-32 |
| 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 of the first device... | The Waze app sends and receives location information to and from its servers, allowing users to "share their location and view other users' locations on a map." | ¶19, ¶20, ¶31, ¶32 | col. 17:33-40 |
| receiving, from a second server, georeferenced map data; presenting, via a display of the second device, a georeferenced map...and a symbol corresponding to the first device... | The Waze app presents location information on an interactive map, displaying user-selectable symbols that correspond to other devices at their respective locations. A screenshot of the Waze interface depicts such symbols on a map (Compl. p. 12). | ¶21, ¶32 | col. 17:50-61 |
| 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... | The Waze app permits a user to select a symbol on the display and send data (e.g., a message or a "Beep Beep") to the corresponding user's device based on that interaction. A support page screenshot shows instructions for sending messages (Compl. p. 10). | ¶22, ¶31 | col. 18:1-14 |
Identified Points of Contention
- Scope Questions: A central issue may be whether the term "ad hoc... network," described in the patent in the context of temporary emergency response, can be read to cover Waze's system of persistent social connections between "friends."
- Technical Questions: The infringement allegation for the '829 patent hinges on whether sending a text message or a "Beep Beep" in Waze constitutes "remotely controlling the first device to perform an action" as required by claim 68. The court may need to determine if this general communication meets the functional requirements of the claim, especially in light of more specific actions like "playing audio" or "vibrating" disclosed elsewhere in the patent family (e.g., '829 Patent, cl. 2).
V. Key Claim Terms for Construction
The Term: "ad hoc... network"
- Context and Importance: This term is foundational to the patents. The dispute may turn on whether Waze’s network of users who have added each other as friends qualifies as "ad hoc." Practitioners may focus on this term because the patent’s specification heavily emphasizes a temporary, emergency-response context.
- Intrinsic Evidence for a Broader Interpretation: The specification states that these private networks "may be temporary or longer lasting in nature," which could support an argument that the term is not limited to short-term emergency use ('829 Patent, col. 4:10-12).
- Intrinsic Evidence for a Narrower Interpretation: The Background and Summary sections repeatedly frame the invention as a solution for coordinating "Military, first responder, and other public and private emergency groups" at the "scene of a disaster," suggesting a more limited scope tied to coordinating previously unknown parties ('829 Patent, col. 2:7-8, col. 2:21-23).
The Term: "remotely controlling the first device to perform an action"
- Context and Importance: This limitation from claim 68 of the '829 patent is critical to infringement. The analysis will require defining both "controlling" and "action." Practitioners may focus on this term because the complaint's evidence (sending messages) may not align with the more specific examples of control and action disclosed in the patent.
- Intrinsic Evidence for a Broader Interpretation: The patent abstract states the method allows users to "coordinate their activities," which Plaintiff may argue is a broad concept that includes prompting a response through any form of communication ('829 Patent, Abstract).
- Intrinsic Evidence for a Narrower Interpretation: Dependent claim 2 of the '829 patent, which narrows a related method claim, recites a specific list of "actions," including "playing audio, initiating a phone call, vibrating, converting text to speech, changing sound intensity, and displaying information" ('829 Patent, col. 15:43-46). A defendant may argue this list informs the ordinary meaning of "action" and requires more than simply displaying a received text message.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Waze induces infringement by providing its app to customers along with instructions on how to use the allegedly infringing features. Specific examples cited include "training videos, demonstrations, brochures, installations and/or user guides" available on Waze's and Google's support websites (Compl. ¶18, ¶30).
Willful Infringement
- The complaint alleges that Defendant's infringement is willful, asserting that Waze had knowledge of the patents "at least as of the date of this Complaint" and also that it "knew or should have known" its conduct constituted an unjustifiably high risk of infringement (Compl. ¶17, ¶25, ¶29, ¶35). This pleading supports a claim for willful infringement based on conduct occurring after the filing of the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "ad hoc network," which is rooted in the patent’s disclosure of coordinating previously unacquainted first-responders at a disaster, be construed to cover the persistent, social-graph-based "friends" network in the accused Waze consumer application?
- A key evidentiary question will be one of functional equivalence: does the accused Waze app's feature of sending a text message or a "Beep Beep" alert perform the same function as "remotely controlling the first device to perform an action" as required by claim 68, or is there a fundamental mismatch between this standard data communication and the specific, device-level control actions contemplated by the patent's specification?