DCT

5:23-cv-03624

Google LLC v. AGIS Holdings Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:23-cv-03624, N.D. Cal., 12/06/2023
  • Venue Allegations: Plaintiff alleges venue is proper as a substantial part of the acts giving rise to the claim occurred in the district, the defendants are subject to personal jurisdiction, and the defendants previously consented to litigate related disputes in the district.
  • Core Dispute: Plaintiff Google seeks a declaratory judgment that its Find My Device application does not infringe U.S. Patent No. 8,213,970, and that the patent is invalid and unenforceable due to claim preclusion, inequitable conduct, and unclean hands.
  • Technical Context: The technology concerns mobile communication systems that send "forced message alerts" requiring automatic acknowledgment and specific manual responses from recipients.
  • Key Procedural History: The complaint describes an extensive and contentious history between the parties. Original claims of the patent-in-suit were invalidated in an inter partes review (IPR) initiated by Google. In parallel litigation, defendants dismissed claims on the original patent with prejudice. The remaining claims were then amended during an ex parte reexamination. Defendants subsequently filed a new suit on the amended claims, which they later voluntarily dismissed. The current action by Google alleges this history gives rise to claim preclusion and that the patent is unenforceable due to alleged inequitable conduct during reexamination and unclean hands from alleged violations of a protective order in prior litigation.

Case Timeline

Date Event
2004-09-21 '970 Patent Earliest Priority Date
2006-04-18 Related '728 Patent Issued
2012-07-03 '970 Patent Issued
2014-05-16 AGIS, Inc. sues Life360, Inc. over related '728 Patent
2017-06-21 AGIS Software asserts '970 Patent against Huawei, LG, ZTE, and HTC
2018-05-15 Google files IPR petition on '970 Patent
2019-11-04 AGIS Software sues Google in E.D. Tex. (AGIS I)
2019-11-19 PTAB issues Final Written Decision finding original claims 1, 3-9 unpatentable
2020-05-15 Third-party requests ex parte reexamination of '970 Patent claims 2, 10-13
2021-02-04 Federal Circuit affirms PTAB's IPR decision
2021-12-09 '970 Patent Ex Parte Reexamination Certificate issued with amended claims
2023-04-10 Court grants dismissal with prejudice of AGIS's allegations on original '970 claims
2023-07-20 AGIS voluntarily dismisses WDTX case on amended '970 claims
2023-12-06 Google files Amended Complaint for Declaratory Judgment

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

U.S. Patent No. 8,213,970 - "Method of Utilizing Forced Alerts for Interactive Remote Communications"

  • Patent Identification: U.S. Patent No. 8,213,970, "Method of Utilizing Forced Alerts for Interactive Remote Communications," issued July 3, 2012.

The Invention Explained

  • Problem Addressed: The patent addresses a need in group communications to not only send a message but also to confirm its receipt and obtain a specific response from each recipient, a function the patent states is not provided by standard digital messaging services like SMS ('970 Patent, col. 1:51-62).
  • The Patented Solution: The invention is a system using "forced message alert software" on mobile devices (e.g., PDA/cell phones). A sender transmits a message that forces the recipient's device to issue an alert. This alert, which may be a repeating voice message or a persistent on-screen text, can only be cleared when the recipient manually selects a response from a predetermined list. The system then tracks which users have acknowledged and responded ('970 Patent, Abstract; Fig. 4). Subsequent amendments during reexamination added functionality for displaying recipient locations on a geographical map on the sender's device ('970 C1 Cert., col. 2:57-65).
  • Technical Importance: The technology provides a closed-loop communication system with guaranteed receipt and response tracking, which is valuable in contexts like military, first responder, or logistics operations where command and control are critical ('970 Patent, col. 7:26-32).

Key Claims at a Glance

The complaint seeks declaratory judgment on amended claims 2 and 10-13, which survived reexamination (Compl. ¶¶ 178, 184). The independent claims are amended Claim 2 and amended Claim 10.

  • Independent Claim 2 (as amended): A communication system comprising:
    • A predetermined network of participants with similarly equipped PDA/cell phones.
    • A forced message alert software application program with a list of required possible responses.
    • Means for attaching a software packet to a message, creating a "forced message alert."
    • Means for requiring a manual response from the list to clear the alert from the recipient's display.
    • Means for displaying which recipients have and have not acknowledged the alert.
    • Means for periodically resending the alert to non-acknowledging recipients.
    • Means for displaying a geographical map with georeferenced entities on the sender's device.
    • Means for obtaining location and status data associated with the recipient device.
    • Means for presenting a recipient symbol on the geographical map corresponding to the recipient's correct location.
  • Independent Claim 10 (as amended): A method for receiving, acknowledging, and responding to a forced message alert, comprising steps that mirror the functions of the system in Claim 2, including the added steps of displaying a geographical map, obtaining location data, and presenting a recipient symbol on the map.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is Google's Find My Device ("FMD") application and service (Compl. ¶ 2).

Functionality and Market Context

  • The complaint describes FMD as a service allowing an individual to remotely "trace, locate, and wipe devices, including Android powered smartphones and tablets" (Compl. ¶ 166). FMD is a widely available application on the Android operating system for consumer use (Compl. ¶ 165).
  • The complaint alleges that FMD does not operate as a "predetermined network of participants" and lacks the core "forced message alert" functionality that requires a response from a specific list to be cleared (Compl. ¶ 177a-b).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The following table summarizes Google's allegations regarding why FMD does not meet the limitations of the patent, focusing on the representative independent system Claim 2.

U.S. Patent No. 8,213,970 Infringement Allegations

Claim Element (from Independent Claim 2) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone... The FMD service is available to any user with a Google account and an Android device; it does not constitute a "predetermined network" of "similarly equipped" devices as contemplated for coordinated group communication. ¶177a col. 9:1-5
a forced message alert software application program including a list of required possible responses to be selected by a participant recipient... FMD does not present a list of required responses that a user must select to clear an alert. Its functions are primarily to locate, ring, lock, or wipe a device. ¶177b col. 9:10-14
means for attaching a forced message alert software packet... containing a list of possible required responses and requiring... an automatic acknowledgment... FMD does not attach a software packet containing a response list to its signals or require an automatic acknowledgment in the manner claimed. ¶177d col. 9:15-28
means for requiring a required manual response from the response list by the recipient in order to clear... [the] display; Clearing an alert from FMD (e.g., stopping a ringing phone) does not require selecting a response from a predefined list. ¶177e col. 9:24-27
means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged... FMD does not periodically resend alerts to devices that have not acknowledged them. ¶177g col. 9:31-34
  • Identified Points of Contention:
    • Scope Questions: A primary question is whether FMD, a consumer-oriented device location service, falls within the patent's scope, which describes a closed-loop system for coordinated groups requiring explicit, structured responses. The complaint suggests a fundamental mismatch between FMD's purpose and the patent's claimed system (Compl. ¶¶ 173, 177).
    • Technical Questions: The analysis will question whether FMD's functions (e.g., "play sound") are technically equivalent to the patent's "forced message alert," which is inextricably linked to a "list of required possible responses" that must be used to clear the alert (Compl. ¶ 177b, 177k). Another key technical issue is the validity of the "means for presenting a recipient symbol" limitation, which the complaint alleges is indefinite for lacking a disclosed algorithm (Compl. ¶¶ 206, 227-228).

V. Key Claim Terms for Construction

  • The Term: "forced message alert"

  • Context and Importance: This term is at the heart of the invention. Its construction will determine whether any of FMD's features (like remotely causing a phone to ring) can be considered infringing. Practitioners may focus on whether the term requires the integrated "required response list" functionality or can be read more broadly.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself could be argued to encompass any alert that a user is compelled to address.
    • Evidence for a Narrower Interpretation: The patent repeatedly links the "forced message alert" to a specific process: forcing an acknowledgment and requiring a manual response from a list to be cleared ('970 Patent, Abstract; col. 2:10-24; Claim 10). This suggests the term is not just any alert, but one that is part of a specific, defined interactive protocol.

  • The Term: "means for presenting a recipient symbol on the geographical map"

  • Context and Importance: This means-plus-function limitation was added during reexamination to secure allowance of the claims. Its validity is directly challenged by Google's inequitable conduct allegations. The central issue is whether the specification discloses adequate structure (i.e., a specific algorithm) for performing the claimed function.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation (supporting patentability): AGIS, during reexamination, argued that the patent's disclosure of software with an "algorithm that relates the x and y coordinates to latitude and longitude" provides sufficient structure ('970 Patent, col. 5:39-44). The patent owner could argue this disclosure, combined with the knowledge of a person of ordinary skill, is sufficient.
    • Evidence for a Narrower Interpretation (supporting indefiniteness): Google's complaint argues that this disclosure is purely functional. It points to prior litigation on the parent '728 patent, where nearly identical language was found to be indefinite because it failed to disclose how the symbols were generated, describing only a function, not a specific algorithm (Compl. ¶¶ 225-227, 232). The complaint includes a visual from the Markman hearing transcript where an expert for AGIS describes the corresponding "symbol generator" as "the software that displays the symbols on the screen," which Google argues is a purely functional description (Compl. p. 47).

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement, stating Google has not caused, directed, or facilitated any infringement and has never had specific intent to do so (Compl. ¶ 173).
  • Willful Infringement: While this is a DJ action for non-infringement, the complaint notes that AGIS has previously argued that Google had pre-suit knowledge based on subpoenas and settlement negotiations in prior litigations, which would be the basis for a willfulness claim against Google (Compl. ¶¶ 59-60).
  • Claim Preclusion and Unenforceability: The complaint contains extensive allegations beyond standard infringement analysis:
    • Claim Preclusion (Res Judicata): Google argues that AGIS's claims are barred. It alleges that because AGIS dismissed its claims on the original '970 patent with prejudice in one case, and then voluntarily dismissed its claims on the amended patent in a second case, the "two-dismissal rule" under Federal Rule of Civil Procedure 41(a)(1)(B) creates an adjudication on the merits, precluding further litigation (Compl. ¶¶ 190-196).
    • Inequitable Conduct: Google alleges that during reexamination, AGIS and its attorneys failed to disclose to the USPTO that the "means-plus-function" language they were adding to the claims was structurally identical to a term ("symbol generator") in a parent patent that had already been ruled indefinite by a district court and the Federal Circuit. The complaint alleges this was a material omission intended to deceive the patent examiner (Compl. COUNT IV, ¶¶ 206, 252). To support this, the complaint provides a side-by-side textual comparison of disclosures from the '970 patent and its parent '728 patent, highlighting their near-identical nature to argue that adverse findings in the '728 litigation were material (Compl. p. 45).
    • Unclean Hands: Google alleges that AGIS attorneys who participated in amending the patent claims during reexamination had previously reviewed Google's confidential and "Highly Sensitive" FMD source code under a protective order in a prior lawsuit, and that using this knowledge to draft claims violated the terms of that order (Compl. COUNT V, ¶¶ 259, 267).

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

This declaratory judgment action presents several threshold legal questions that may precede any technical infringement analysis. The case will likely turn on the court’s resolution of these core issues:

  • A central issue will be one of procedural preclusion: Does the complex litigation history, particularly AGIS’s dismissal of the original claims with prejudice followed by a voluntary dismissal of the amended claims, legally bar AGIS from ever again asserting the '970 patent against Google's FMD service under the doctrines of res judicata or the "two-dismissal rule"?
  • A second core issue is one of patent enforceability: Did AGIS's failure to disclose the adverse indefiniteness ruling on the parent '728 patent during the '970 patent's reexamination constitute inequitable conduct? Separately, did its attorneys' alleged use of confidential information from a protective order to amend the claims constitute unclean hands, rendering the patent unenforceable against Google?
  • If the case reaches the technical merits, a key question will be one of scope and validity: Can the claims, rooted in a system for coordinated groups using "forced message alerts" with "required response lists," be construed to cover a general consumer device-finding service? Furthermore, is the "means for presenting a recipient symbol" limitation, added to overcome prior art, itself invalid for indefiniteness for the same reasons its predecessor term was invalidated in related litigation?