DCT

2:22-cv-00263

AGIS Software Development LLC v. Samsung Electronics Co Ltd

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00263, E.D. Tex., 06/16/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction, have committed acts of infringement, and maintain regular and established places of business within the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s Android-based mobile devices and associated software—including tactical applications (Samsung Tactical, TAK, ATAK), security platforms (Samsung Knox), and device location services (Find My Device)—infringe four patents related to ad hoc mobile communication networks, location sharing, and forced alert messaging.
  • Technical Context: The patents address technologies for enabling situational awareness and coordinated communication on mobile devices, primarily for first responder, law enforcement, and military applications.
  • Key Procedural History: All four patents-in-suit have survived Ex Parte Reexamination proceedings at the USPTO, confirming the validity of the asserted claims. Additionally, U.S. Patent No. 8,213,970 survived an Inter Partes Review (IPR) that cancelled several original claims, but the claims now asserted in this litigation were subsequently amended and confirmed patentable during reexamination, suggesting they have undergone significant scrutiny.

Case Timeline

Date Event
2004-09-21 Earliest Priority Date for all Patents-in-Suit
2012-07-03 U.S. Patent No. 8,213,970 Issues
2016-10-11 U.S. Patent No. 9,467,838 Issues
2017-08-29 U.S. Patent No. 9,749,829 Issues
2017-11-14 U.S. Patent No. 9,820,123 Issues
2021-05-27 ’838 Patent Ex Parte Reexamination Certificate Issues
2021-08-16 ’829 Patent Ex Parte Reexamination Certificate Issues
2021-09-01 ’970 Patent Inter Partes Review Certificate Issues
2021-09-24 ’123 Patent Ex Parte Reexamination Certificate Issues
2021-12-09 ’970 Patent Ex Parte Reexamination Certificate Issues
2023-06-16 Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: The patent’s background section identifies a deficiency in standard mobile messaging (like SMS), where a sender cannot compel a recipient to acknowledge receipt of a message or provide a required manual response before the message can be cleared from their device (Compl. Ex. A, ’970 Patent, col. 1:52-64).
  • The Patented Solution: The invention is a system for sending a "forced message alert" from one device to another. This alert forces the recipient's device to automatically transmit an acknowledgment of receipt. It then takes control of the recipient’s display to show the message content and a "required response list," and the display cannot be cleared until the user selects and transmits a response from that list (’970 Patent, Abstract; col. 2:7-34).
  • Technical Importance: This technology provides a closed-loop communication system that ensures messages are not only delivered but also seen and acted upon, a critical function in time-sensitive, high-stakes environments like emergency response or military operations (’970 Patent, col. 1:15-24).

Key Claims at a Glance

  • The complaint asserts independent method claim 10 (Compl. ¶23).
  • The essential elements of claim 10 (as amended) include:
    • Receiving an electronically transmitted electronic message.
    • Identifying the message as a forced message alert comprising a voice/text message and a software packet.
    • The packet triggers activation of a forced message alert software application program on the recipient device.
    • Transmitting an automatic acknowledgment of receipt to the sender.
    • The sender's device is triggered to take control of the recipient device and show the message content and a required response list.
    • Transmitting a selected required response from the list to allow the list to be cleared.
    • Displaying the response on the sender device.
    • Displaying a geographical map with georeferenced entities on the sender device.
    • Obtaining location and status data of the recipient device.
    • Presenting a recipient symbol on the map corresponding to the recipient's location.

U.S. Patent No. 9,467,838 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"

The Invention Explained

  • Problem Addressed: The patent identifies the challenge faced by emergency responders and military personnel from different organizations in establishing secure, temporary ("ad hoc") communication networks quickly during a crisis, without needing to pre-configure devices or manually enter contact information for every participant (Compl. Ex. B, ’838 Patent, col. 1:5-16).
  • The Patented Solution: The invention describes a method where users can join a private network on a server using a common "ad hoc event name" and password. Once authenticated, their devices automatically begin exchanging location and status information with other group members. This information is presented on an interactive, georeferenced map where each participant is represented by a selectable symbol, allowing for seamless communication and coordination (’838 Patent, Abstract; col. 2:48-67).
  • Technical Importance: The technology streamlines interoperability between disparate groups in chaotic situations, allowing for rapid formation of a common operational picture without prior technical integration (’838 Patent, col. 1:17-28).

Key Claims at a Glance

  • The complaint asserts independent system claim 54 (Compl. ¶34).
  • The essential elements of claim 54 include a first device programmed to perform operations comprising:
    • Joining a communication network for a group by transmitting a message with a group identifier.
    • Participating in the group by sending its own location to a server and receiving the locations of other devices.
    • Presenting a "first interactive, georeferenced map" with user-selectable symbols for other devices at their respective locations.
    • Sending a request to a second server for "second georeferenced map data different from the first."
    • Receiving the second map data from the second server.
    • Presenting a "second georeferenced map" with a second set of user-selectable symbols.
    • Identifying user interaction selecting a symbol and specifying an action, and based thereon, sending data to the selected device via the first server.

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

  • Technology Synopsis: This patent continues the subject matter of the ’838 Patent, focusing on server-mediated interactions within an ad hoc network. The claims describe a system where a server forwards a request from a second device for a first device to join a group, and upon acceptance, authorizes the first device to share location data and engage in remote control operations with other group members (Compl. Ex. C, ’829 Patent, Abstract).
  • Asserted Claims: Independent system claim 34 (Compl. ¶54).
  • Accused Features: The complaint alleges that Samsung’s Tactical, TAK, ATAK, and Knox applications and services allow users to form groups, request and share location data, display users on maps, and remotely control devices in a manner that infringes the patent (Compl. ¶¶56-58).

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

  • Technology Synopsis: This patent also relates to the ad hoc networking technology of the ’838 and ’829 patents, with a specific focus on the user interface mechanics. The claims detail a method for identifying which on-screen symbol a user has selected by detecting the coordinates of the user's interaction with the display and searching a set of symbols to find the one located nearest to those coordinates (Compl. Ex. D, ’123 Patent, Abstract).
  • Asserted Claims: Independent system claim 23 (Compl. ¶69).
  • Accused Features: The complaint accuses Samsung’s Tactical, TAK, ATAK, and Knox applications, which allegedly present interactive maps where users can select symbols corresponding to other devices to initiate actions, thereby practicing the claimed method of identifying user selections (Compl. ¶¶71-73).

III. The Accused Instrumentality

Product Identification

  • The "Accused Products" are an extensive list of Samsung's Android-based devices (including Galaxy smartphones and tablets) when running certain software applications and services. These include Samsung Tactical, Team Awareness Kit (TAK), Android Tactical Assault Kit (ATAK), Samsung Knox, and Google's Find My Device application, along with the supporting server infrastructure (Compl. ¶¶17-18).

Functionality and Market Context

  • The complaint alleges the Accused Products provide functionalities for users to form groups, view the locations of other users as symbols on a map, and communicate via text, voice, and other data (Compl. ¶19).
  • The Tactical, TAK, and ATAK applications are specifically marketed for government, military, and public safety use, providing "mission-ready mobility" and "situational awareness" by integrating tactical data on a mobile device (Compl. p. 10). A brochure for the Samsung Galaxy S20 Tactical Edition, cited in the complaint, shows an interactive map displaying tactical data and team member locations (Compl. p. 21).
  • The Find My Device application is alleged to enable users to track, remotely monitor, and control their own devices, which are functionalities that Plaintiff maps to the claims of the ’970 and ’838 Patents (Compl. ¶18, p. 9 n.4).

IV. Analysis of Infringement Allegations

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

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving an electronically transmitted electronic message; identifying said electronic message as a forced message alert... Accused Products like Find My Device receive remote commands (e.g., to lock or locate the device), which are identified as forced alerts. ¶26 col. 12:50-57
...wherein said forced message alert comprises a voice or text message and a forced message alert application software packet... The remote command from the Find My Device service allegedly comprises the message content and a software packet that triggers the alert software on the recipient device. ¶26 col. 12:53-57
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone... The recipient device automatically acknowledges receipt of the command from the server/sender device. ¶26 col. 12:58-60
...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... The Find My Device application takes control to display a message on the lock screen and presents options (e.g., "Play Sound," "Secure Device") that allegedly constitute a "required response list." ¶26 col. 12:61-67
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... The user selecting an option, such as securing the device, transmits a response that clears the alert state. ¶26 col. 13:10-14
displaying a geographical map with georeferenced entities on the display of the sender PDA/cell phone; obtaining location and status data...and presenting a recipient symbol on the geographical map... The Find My Device interface on a web browser or another device displays a map showing the location of the target device as a symbol based on its GPS data. The complaint includes a screenshot showing the Find My Device map interface with a device location pin (Compl. p. 14). ¶26, 27 col. 16:59-65
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "forced message alert," described in the patent in the context of interactive, two-way communication between different users, can be construed to read on the functionality of a device-finder application designed for a single user to locate their own property.
    • Technical Questions: The infringement theory hinges on whether the on-screen options in an application like Find My Device (e.g., "Secure device") function as a "required response list" from which a "selected required response" is transmitted to clear an alert, as required by the claim. A court may need to determine if these actions are technically equivalent to selecting a response like "will comply" from a list of pre-formatted replies to a received message.

U.S. Patent No. 9,467,838 Infringement Allegations

Claim Element (from Independent Claim 54) Alleged Infringing Functionality Complaint Citation Patent Citation
a first device programmed to perform operations comprising: joining a communication network corresponding to a group... The Accused Products are programmed to join networks (e.g., TAK servers, Samsung Knox services, Google accounts for Find My Device) that correspond to a group of users or devices. ¶37 col. 14:60-64
participating in the group, wherein participating in the group includes sending first location information to a first server and receiving second location information from the first server... The device sends its own location to a server and receives the locations of other devices in the group for display. ¶37, 41 col. 15:1-9
presenting, via an interactive display of the first device, a first interactive, georeferenced map and a first set of one or more user-selectable symbols corresponding to a first set of one or more of the second devices... The Accused Products display an interactive map showing symbols for other group members at their respective locations. The complaint provides a marketing image showing such a tactical map display on a Samsung device (Compl. p. 46). ¶37, 42 col. 15:10-18
sending, to a second server, a request for second georeferenced map data different from the first georeferenced map data; receiving, from the second server, the second georeferenced map data... The complaint alleges that when a user moves the map screen or selects a different map type (e.g., satellite view), the device requests and receives different map data from a map server. ¶37, 48 col. 15:19-24
identifying user interaction with the interactive display selecting one or more of the second set of user-selectable symbols...and user interaction with the display specifying an action and, based thereon, sending third data to the selected one or more second devices via the first server. When a user selects a symbol on the map and chooses an action (e.g., send message), the device sends data to the corresponding second device via the server. ¶37, 48 col. 15:35-43
  • Identified Points of Contention:
    • Scope Questions: A likely point of dispute will be the claim limitation requiring a request for and receipt of "second georeferenced map data different from the first." The question will be whether this is met by simply panning or zooming a continuous map (which loads new map tiles), or if it requires a more distinct action, such as switching between fundamentally different map layers (e.g., road map to satellite imagery).
    • Technical Questions: What is the architecture of the server system? The claim recites sending location information to a "first server" and requesting map data from a "second server." The infringement case may require evidence that the Accused Products utilize a server architecture that maps onto this specific claimed structure.

V. Key Claim Terms for Construction

Patent: U.S. Patent No. 8,213,970

  • The Term: "required response list"
  • Context and Importance: The existence of a "required response list" is a cornerstone of claim 10. The definition of this term is critical to determining whether the user interface of an application like Find My Device, which presents device command options, meets this limitation. Practitioners may focus on this term because the accused functionality is for device management, whereas the patent's examples relate to acknowledgments of a message's content.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language does not specify that the responses must relate to the content of the message, only that a response must be selected from the list to clear the display. This could support an interpretation where any set of interactive options that dismiss an alert qualifies (’970 Patent, col. 13:10-14).
    • Evidence for a Narrower Interpretation: The detailed description provides an example of a military default response list with choices like "will comply," "will not comply," and "have complied," which are substantive replies to a command, not general device functions (’970 Patent, col. 7:29-32). This could support a narrower construction requiring content-based reply options.

Patent: U.S. Patent No. 9,467,838

  • The Term: "joining a communication network corresponding to a group"
  • Context and Importance: The infringement analysis depends on what action constitutes "joining" a network. The construction will determine whether simply logging into a persistent account (like a Google account for Find My Device) satisfies this element, or if a more specific act of connecting to a temporary, event-based network is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is general and does not explicitly require the network to be temporary. It could be argued that any system where authentication provides access to a shared pool of location data for a defined "group" (e.g., devices under one account) meets the limitation (’838 Patent, col. 14:60-64).
    • Evidence for a Narrower Interpretation: The patent’s summary and background repeatedly emphasize the creation of "ad hoc" and "temporary" networks for specific emergency situations using a shared "event name and password," distinguishing the invention from persistent, pre-configured systems (’838 Patent, col. 1:8-16, col. 2:48-52). This context may support a narrower definition of "joining."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all four patents. The basis for these allegations is that Samsung provides instructional materials—such as user guides, training videos, marketing brochures, and websites—that allegedly instruct and encourage customers to use the Accused Products in a manner that directly infringes the asserted claims (Compl. ¶¶24-25, 35-36, 55-56, 70-71).
  • Willful Infringement: For all four patents, the complaint alleges that Defendants "actually knew or should have known" their conduct constituted infringement, and that this infringement "has been and continues to be willful" (Compl. ¶¶30, 51, 66, 81). While some paragraphs ground knowledge as of the date of the complaint, this broader language suggests an allegation of pre-suit willfulness, which could expose Defendants to enhanced damages if proven.

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

  • A core issue will be one of definitional scope: Can claim terms rooted in the patent family's context of creating temporary, ad hoc communication networks for coordinating teams of people (e.g., "joining a...group," "forced message alert") be construed to cover the functionality of consumer-grade applications like "Find My Device," which are primarily designed for an individual to manage their own personal devices?
  • A key evidentiary question will be one of functional and architectural mapping: Does the technical operation of the accused Samsung software and server systems—particularly how they request and render different types of map data and process user interactions with on-screen symbols—align with the specific, multi-step processes and server structures recited in the independent claims of the '838 patent family?