DCT
2:22-cv-00440
AGIS Software Development LLC v. ASUSTeK Computer Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AGIS Software Development LLC (Texas)
- Defendant: ASUSTek Computer Inc. (Taiwan) and ASUS Computer International (California)
- Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
- Case Identification: 2:22-cv-00440, E.D. Tex., 11/18/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction, have committed acts of infringement, and have regular and established places of business in the district through authorized sellers and representatives.
- Core Dispute: Plaintiff alleges that Defendant’s ZenFone and ROG Phone smartphones infringe five patents related to location-based group communications, ad hoc networking, and forced alert messaging.
- Technical Context: The technology relates to providing situational awareness and coordinated communication on mobile devices, a domain originally developed for first responders and military personnel.
- Key Procedural History: The complaint notes that all five patents-in-suit have undergone Ex Parte Reexamination, with their claims confirmed or amended. U.S. Patent No. 8,213,970 was also subject to an Inter Partes Review (IPR) that resulted in the cancellation of original claims 1 and 3-9, leaving amended claims 2 and 10-13 as the basis for assertion. This post-grant history may significantly influence claim construction and validity analyses.
Case Timeline
| Date | Event |
|---|---|
| 2004-09-21 | Earliest Priority Date for ’970, ’251, ’838, ’829, and ’123 Patents |
| 2012-07-03 | U.S. Patent No. 8,213,970 Issues |
| 2016-09-13 | U.S. Patent No. 9,445,251 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 | Ex Parte Reexamination Certificate issued for ’838 Patent |
| 2021-06-08 | Ex Parte Reexamination Certificate issued for ’251 Patent |
| 2021-08-16 | Ex Parte Reexamination Certificate issued for ’829 Patent |
| 2021-09-01 | Inter Partes Review Certificate issued for ’970 Patent |
| 2021-09-24 | Ex Parte Reexamination Certificate issued for ’123 Patent |
| 2021-12-09 | Ex Parte Reexamination Certificate issued for ’970 Patent |
| 2022-11-18 | 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," issued July 3, 2012
The Invention Explained
- Problem Addressed: Conventional digital messaging systems like SMS do not provide a sender with confirmation that a message was received or a mechanism to compel a response from the recipient (’970 Patent, col. 1:56-62).
- The Patented Solution: The invention describes a "forced message alert" software application for mobile devices. When a sender transmits a forced alert, the recipient's device is required to send an automatic acknowledgment of receipt. The software then takes control of the recipient's device, displaying the message content and a list of required responses, which must be selected to clear the alert from the screen (’970 Patent, Abstract; col. 2:9-24).
- Technical Importance: This approach aims to provide closed-loop communication for time-sensitive situations, ensuring message receipt and compelling a substantive reply beyond a simple delivery confirmation (’970 Patent, col. 1:62-65).
Key Claims at a Glance
- The complaint asserts independent method claim 10, as amended during reexamination (Compl. ¶22).
- Essential elements of claim 10 include:
- Receiving an electronic message and identifying it as a "forced message alert" comprising a message and a software packet.
- Transmitting an automatic acknowledgment of receipt to the sender device.
- Triggering software to take control of the recipient device to display the message content and a "required response list."
- Transmitting a selected response from the list to allow the message to be cleared from the display.
- Displaying a geographical map with georeferenced entities on the sender's device.
- Obtaining location data of the recipient device and presenting a symbol for the recipient on the geographical map.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,445,251 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued September 13, 2016
The Invention Explained
- Problem Addressed: In emergency situations, personnel from different organizations (e.g., police, fire departments) need to establish secure digital and voice communication networks quickly and easily, without needing to pre-enter names, phone numbers, or email addresses for all participants (’251 Patent, col. 2:9-36).
- The Patented Solution: The invention discloses a method where users can join a temporary, password-protected network by entering a server IP address and an ad hoc event name. A central server receives location and status data from each participant's device and forwards it to all other members of the ad hoc group, enabling shared situational awareness on a map-based display (’251 Patent, Abstract; col. 4:51-58).
- Technical Importance: This system is designed to facilitate rapid, cross-organizational coordination during emergencies by abstracting away the need for individual contact information, relying instead on a shared, secure session (’251 Patent, col. 2:37-45).
Key Claims at a Glance
- The complaint asserts independent system claim 24 (Compl. ¶31).
- Essential elements of claim 24 include:
- A first device programmed to perform operations comprising:
- Receiving a message related to joining a group.
- Participating in the group by sending first location information to a server and receiving second location information from the server (comprising locations of other devices in the group).
- Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the other devices.
- Sending a request for a different georeferenced map and receiving it from the server.
- Identifying user interaction with a symbol to specify an action and, based thereon, using an Internet Protocol to send data to the corresponding second device via the server.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,467,838
- Patent Identification: U.S. Patent No. 9,467,838, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued October 11, 2016.
- Technology Synopsis: This patent is part of the same family as the ’251 Patent and also relates to creating temporary, secure communication networks. It focuses on the server-side and device-side methods for joining a group and exchanging location information for display on a georeferenced map (’838 Patent, Abstract).
- Asserted Claims: At least independent claim 54 (Compl. ¶45).
- Accused Features: The complaint alleges that the Accused Products' use of the Google Maps application for location sharing and group communication infringes this patent (Compl. ¶48-53).
U.S. Patent No. 9,749,829
- Patent Identification: U.S. Patent No. 9,749,829, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued August 29, 2017.
- Technology Synopsis: Also from the same patent family, this patent details a system comprising server devices that manage group membership and the exchange of location data between devices. The claims cover the full sequence of a second device requesting a first device's location, the server relaying this request, and the second device displaying the received location on a map (’829 Patent, Abstract).
- Asserted Claims: At least independent claim 34 (Compl. ¶58).
- Accused Features: The complaint's infringement theory again centers on the functionality of Google Maps on the Accused Products, which allegedly allows users to establish groups, share locations, and interact with symbols on a map (Compl. ¶62-67).
U.S. Patent No. 9,820,123
- Patent Identification: U.S. Patent No. 9,820,123, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued November 14, 2017.
- Technology Synopsis: This patent continues the themes of the family, with claims directed to a system where a first device receives a group-joining message from a second device, exchanges location data via servers, and presents symbols on an interactive map. It further specifies identifying user interaction with a symbol to send data to the corresponding device (’123 Patent, Abstract).
- Asserted Claims: At least independent claim 23 (Compl. ¶72).
- Accused Features: Infringement allegations are based on the Accused Products being pre-installed with Google Maps, which allegedly enables users to form groups, view others' locations, and communicate (Compl. ¶76-81).
III. The Accused Instrumentality
Product Identification
- A range of ASUS smartphones, including various models from the "ZenFone" and "ROG Phone" lines (collectively, the "Accused Products") (Compl. ¶17).
Functionality and Market Context
- The complaint alleges the Accused Products include functionalities allowing users to form and join networks or groups, share and view locations on a map, and communicate via text and voice (Compl. ¶18).
- Specifically, the infringement allegations for the ’970 Patent focus on the "Find My Device" application (formerly Android Device Manager), which allows a user to remotely locate, secure, or erase a lost device (Compl. ¶24). A screenshot in the complaint shows the "Find My Device" map interface with options to "Play Sound," "Secure Device," and "Erase Device" (Compl. p. 8).
- Allegations for the ’251, ’838, ’829, and ’123 Patents focus on the pre-installed Google Maps application. The complaint asserts this app allows users to create groups, share their location with others, view those locations as symbols on an interactive map, and communicate (Compl. ¶34, ¶48, ¶62, ¶76). A visual from the complaint depicts the Google Maps "Share location" interface, showing user icons on a map (Compl. p. 16).
IV. Analysis of Infringement Allegations
’970 Patent 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... | The Accused Products, via the Find My Device service, receive a command (e.g., "Play Sound") from a user's other device or web interface. | ¶25 | col. 11:20-22 |
| transmitting an automatic acknowledgment of receipt to the sender... | The Find My Device service sends a confirmation back to the sending interface indicating the command was received and the device is being contacted. | ¶25 | col. 11:26-30 |
| which triggers the forced message alert software application program to take control of the recipient PDA/cell phone... | The Find My Device application on the lost phone is triggered to take control and execute the remote command (e.g., ring at full volume). | ¶25 | col. 11:30-34 |
| and show the content of the text message and a required response list on the display recipient PDA/cell phone... | The user is presented with options on the lost device's screen or on the sender's interface, such as "Secure Device" or "Erase Device." | ¶25 | col. 11:34-40 |
| transmitting a selected required response from the response list in order to allow the message... to be cleared... | The user selects an option like "Secure Device," which is transmitted to the lost phone, causing the action to be performed and the alert state to resolve. | ¶25 | col. 11:41-48 |
| displaying a geographical map with georeferenced entities on the display of the sender PDA/cell phone... | The Find My Device interface on the sending device or web browser displays the lost phone's location on a geographical map. | ¶25 | col. 11:58-61 |
| obtaining location and status data associated with the recipient PDA/cellphone; and presenting a recipient symbol on the geographical map... | The service obtains the GPS location of the lost phone and displays it as an icon on the map presented to the user. | ¶25 | col. 11:62-67 |
Identified Points of Contention
- Scope Questions: A central question may be whether a lost-phone utility like "Find My Device" constitutes a "forced message alert" system for "interactive remote communications" between a "sender" and a "recipient" as contemplated by the patent. The court may need to determine if a single user locating their own device fits the claimed sender/recipient paradigm.
- Technical Questions: The analysis may focus on whether the accused functionality meets specific claim limitations, such as transmitting an "automatic acknowledgment" and presenting a "required response list" that must be used to "clear" the message. It is a question for the court whether options like "Play Sound" or "Secure Device" function as the claimed response list.
’251 Patent Infringement Allegations
| Claim Element (from Independent Claim 24) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first device programmed to perform operations comprising: receiving a message... related to joining a group... | The Accused Products, using Google Maps and Google Contacts, can receive invitations or messages related to joining location-sharing groups. | ¶36 | col. 15:61-63 |
| participating in the group... sending first location information to a server and receiving second location information from the server... | A user's device sends its GPS location to Google's servers and receives location data for other users who are sharing their location with the user. | ¶37 | col. 15:64-16:2 |
| presenting, via an interactive display... a georeferenced map and... user-selectable symbols corresponding to... second devices... | The Google Maps application displays a map showing the user's location and the locations of contacts as selectable icons. | ¶38 | col. 16:3-10 |
| sending, from the first device to the server, a request for a second georeferenced map different from the first... | Users can pan, zoom, or switch to satellite view within Google Maps, which sends requests to Google's servers for new map data. | ¶39 | col. 15:12-16 |
| identifying user interaction with the interactive display selecting one or more of the user-selectable symbols... and... using an Internet Protocol to send data to the... second device... | A user can select a contact's symbol on the map to initiate communication (e.g., via the integrated Messages app). | ¶34, ¶40 | col. 16:51-58 |
Identified Points of Contention
- Scope Questions: A primary issue may be the definition of "group." The patent describes ad hoc networks for first responders, while the complaint points to consumer-level location sharing between contacts. The court will need to construe whether forming a "group" in Google Contacts or sharing a location with an individual meets the claim limitation.
- Technical Questions: It raises the question of whether the standard functionality of a mapping application (requesting new map tiles when a user pans/zooms) satisfies the claim element of "sending... a request for a second georeferenced map different from the first."
V. Key Claim Terms for Construction
For the ’970 Patent
- The Term: "forced message alert"
- Context and Importance: This term is the core of the invention. Its construction will determine whether the remote commands in the "Find My Device" application fall within the scope of the claims. Practitioners may focus on this term because the patent's specification repeatedly describes a system that seizes control of a recipient's device and compels a response from a specific list, a potentially higher bar than the accused functionality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims state the alert "comprises of a voice or text message and a forced message alert application software packet," which could be argued to cover any command that triggers a remote application to perform an action (’970 Patent, col. 12:48-52).
- Evidence for a Narrower Interpretation: The summary of the invention describes a system where a manual response list "can only be cleared by manually selecting and transmitting a response," suggesting a mandatory, interactive loop that may not be present in a simple "Play Sound" command (’970 Patent, col. 2:27-33).
For the ’251 Patent
- The Term: "group"
- Context and Importance: The patent is titled and described in the context of "Ad Hoc" networks for emergency responders. The definition of "group" is critical to determining if the patent's scope extends to informal, one-to-one location sharing between consumers in Google Maps, as alleged.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not explicitly limit the size or formation method of the "group." One could argue that any collection of two or more devices sharing data via a server constitutes a group for the purposes of the claim (’251 Patent, col. 17:60-63).
- Evidence for a Narrower Interpretation: The specification repeatedly discusses the need for military and first responders to coordinate, implying a "group" is a collection of personnel organized for a common, temporary purpose, joined via a password-protected ad hoc network name, which may differ from simply adding a contact to a list (’251 Patent, col. 2:9-20).
VI. Other Allegations
- Indirect Infringement: The complaint alleges Defendants induce infringement by providing the Accused Products with the infringing applications and instructing users on how to use them through user guides, training videos, and other materials (Compl. ¶24, ¶33, ¶47, ¶60, ¶74). The specific acts alleged are customers using the "Find My Device" and "Google Maps" applications in an infringing manner.
- Willful Infringement: The complaint alleges Defendants had knowledge of the patents "at least as of the date of this Complaint," which supports a claim for post-suit willfulness (Compl. ¶23, ¶32). It also alleges that Defendants "believed there was a high probability that others would infringe the... Patent but remained willfully blind to the infringing nature of others' actions," which pleads the standard for pre-suit willfulness through willful blindness (Compl. ¶24, ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms rooted in the context of first responder and military coordination—such as "ad hoc... network" and "group"—be construed to cover the general-purpose, consumer-facing features of Google Maps, such as sharing one's location with a contact?
- A key question of functional operation will be whether the accused "Find My Device" utility performs the specific steps required by the ’970 Patent’s "forced message alert" method. The analysis will likely focus on whether its commands constitute a "required response list" that "takes control" of the recipient device in the manner claimed.
- A central legal and evidentiary question will be the impact of the extensive post-grant proceedings. The prosecution history from the multiple reexaminations and the IPR on the ’970 Patent will provide significant evidence for claim construction and may limit the scope of the asserted claims.