AGIS Software Development LLC v. BLU Products

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: BLU Products (Florida)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:22-cv-00441, E.D. Tex., 11/18/2022
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant sells infringing products through authorized retailers such as Best Buy and Walmart with physical locations in the district, commits acts of patent infringement in the district, and has regular and established places of business there.
• Core Dispute: Plaintiff alleges that Defendant’s mobile devices infringe five patents related to remote device communication, location sharing, and the creation of ad hoc, password-protected networks.
• Technical Context: The technology enables mobile devices to be used for enhanced situational awareness, allowing users to track locations, exchange information within secure groups, and compel responses, with applications in commercial location-based services and coordination among first responders.
• Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant review at the U.S. Patent and Trademark Office. U.S. Patent No. 8,213,970 survived an Inter Partes Review that cancelled several claims and an Ex Parte Reexamination that confirmed the patentability of amended claims. The other four patents each had their validity confirmed through Ex Parte Reexamination. This extensive prosecution history may narrow the scope of the asserted claims and will be a central feature of claim construction and validity disputes.

Case Timeline

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 Jul. 3, 2012)

The Invention Explained

• Problem Addressed: In conventional digital messaging (e.g., SMS), a sender cannot be certain that recipients have received a message or compel them to respond, which is a significant drawback in time-critical coordination efforts. (’970 Patent, col. 1:50-61).
• The Patented Solution: The patent describes a "forced message alert" system. A sender transmits a message that includes a software packet. Upon receipt, the recipient's device automatically sends an acknowledgment and then "takes control" of the device, displaying the message and a required response list that the user must interact with to clear the alert. (’970 Patent, Abstract; col. 2:6-35). This allows the sender to monitor both receipt and response status for all recipients.
• Technical Importance: The technology provides a mechanism for confirmed delivery and compulsory response in communication networks, a feature with applications in military and first responder contexts where accountability is critical. (’970 Patent, col. 1:12-24).

Key Claims at a Glance

• The complaint asserts independent method claim 10, as amended by the Ex Parte Reexamination Certificate issued December 9, 2021. (Compl. ¶21).
• Essential elements of amended Claim 10 include:
  • Receiving an electronic message and identifying it as a "forced message alert" comprising a voice or text message and a software packet.
  • The software packet triggering an application on the recipient device.
  • Transmitting an automatic acknowledgment of receipt to the sender.
  • The sender's device taking control of the recipient's device to show the message and a required response list.
  • Transmitting a selected response from the list to clear the alert from the recipient's display.
  • Displaying the response on the sender's device.
  • Providing a list of recipients that have acknowledged receipt.
  • Displaying a geographical map on the sender's device, obtaining location data for the recipient, and presenting a symbol for the recipient on the map at the correct location.

U.S. Patent No. 9,445,251 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks" (Issued Sep. 13, 2016)

The Invention Explained

• Problem Addressed: First responders and military personnel from different organizations need to establish temporary, secure voice and data networks rapidly during an emergency without the ability to pre-configure their devices with each other's contact information. (’251 Patent, col. 2:7-20).
• The Patented Solution: The invention provides a method where users join a network by entering a server IP address, an "ad hoc event name," and a password into their devices. A central server then uses this common event name to interconnect all authorized participants, allowing them to exchange location, status, and other digital data automatically, thereby creating a temporary, purpose-built communication group. (’251 Patent, Abstract; col. 4:46-59).
• Technical Importance: This approach facilitates interoperability between disparate groups in disaster situations by bypassing the need for pre-shared contact lists or complex network configuration, relying instead on a simple, shared password and event name. (’251 Patent, col. 2:21-36).

Key Claims at a Glance

• The complaint asserts at least claim 24. (Compl. ¶30).
• Essential elements of independent system claim 24 include:
  • A first device programmed to perform operations.
  • Receiving a message from a second device related to joining a group.
  • Based on receipt, participating in the group by sending first location information to a server and receiving second location information (comprising locations of other devices in the group) from the server.
  • Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the locations of the other devices.
  • Sending a request for a second, different georeferenced map.
  • Receiving and presenting the second map with the symbols.
  • Identifying user interaction with a symbol to specify an action and sending data to the corresponding device via an Internet Protocol.

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• Multi-Patent Capsule: U.S. Patent No. 9,467,838

  • Patent Identification: 9,467,838, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued Oct. 11, 2016.
  • Technology Synopsis: Similar to the ’251 patent, this patent addresses the need for rapid, secure formation of temporary communication networks for groups like first responders. The system allows users to join by providing a common network name and password, enabling a server to route location and status data among participants. (’838 Patent, col. 2:7-20).
  • Asserted Claims: At least claim 54. (Compl. ¶44).
  • Accused Features: The complaint alleges that functionalities within the Accused Products, including the Google Maps application, allow users to establish groups, exchange messages, share locations, and view other users on a map. (Compl. ¶¶47-48).

• Multi-Patent Capsule: U.S. Patent No. 9,749,829

  • Patent Identification: 9,749,829, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued Aug. 29, 2017.
  • Technology Synopsis: This patent is also in the same family as the ’251 patent and is directed at methods for establishing temporary, secure communication networks. It enables users to join a common group via a shared network name and password to facilitate server-based exchange of location and other data for coordination. (’829 Patent, col. 2:7-20).
  • Asserted Claims: At least claim 34. (Compl. ¶57).
  • Accused Features: The complaint alleges infringement by features that allow users to share locations, view others on a map via Google Maps, establish groups, and remotely control other devices. (Compl. ¶¶60-62).

• Multi-Patent Capsule: U.S. Patent No. 9,820,123

  • Patent Identification: 9,820,123, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued Nov. 14, 2017.
  • Technology Synopsis: Also from the same family as the ’251 patent, this patent describes a system for creating ad hoc, password-protected networks for emergency response and other coordinated activities. The method relies on a server, a network name, and a password to connect participants for data and location sharing. (’123 Patent, col. 2:7-20).
  • Asserted Claims: At least claim 23. (Compl. ¶71).
  • Accused Features: Infringement allegations target functionalities for joining groups, presenting maps with user symbols, sharing location information via Google Maps, and interacting with symbols to send data. (Compl. ¶¶74-76).

III. The Accused Instrumentality

Product Identification

A broad category of "BLU mobile devices," with an extensive, non-exhaustive list provided in the complaint. (Compl. ¶16).

Functionality and Market Context

The complaint alleges the Accused Products incorporate functionalities that allow users to form groups, share and view locations on a map, and communicate via voice and text. (Compl. ¶17). Specifically, the complaint identifies Google's "Find My Device" (formerly Android Device Manager) and "Google Maps" applications as the instrumentalities that practice the claimed inventions. (Compl. ¶¶23, 33). The complaint alleges these features are used to improve the user experience and Defendant's market position. (Compl. ¶17). The complaint includes a screenshot of the "Find My Device" interface, showing options to remotely locate, play a sound on, secure, or erase a device. (Compl. p. 8).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

’251 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over the term "forced message alert." The complaint applies it to the "Find My Device" feature, which is primarily a user interacting with their own device. (’970 Patent, Compl. ¶23). This raises the question of whether a user can be both the "sender" and the effective "recipient" under the patent's framework, which is described in the context of coordinating multiple, distinct participants. (’970 Patent, col. 1:12-24).
  • Technical Questions: For the ’251 patent and its family, a key question will be whether creating a contact group in Google Contacts and sharing one's location in Google Maps constitutes the claimed "ad hoc... network." The patent describes a specific method of joining by entering a server IP, a network name, and a password, which appears technically distinct from sharing data with pre-existing contacts. (’251 Patent, col. 4:46-59; Compl. ¶35).

V. Key Claim Terms for Construction

• Term: "forced message alert" (’970 Patent, Claim 10)

  • Context and Importance: This term is the foundation of the '970 patent. Its construction will determine if the patent's scope can cover the accused "Find My Device" functionality. Practitioners may focus on this term because the complaint's theory appears to equate a user locating their own phone with the patent's system of interpersonal alerts for group coordination.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself refers broadly to "a sender PDA/cell phone" and "a recipient PDA/cell phone" without explicitly requiring them to be owned or operated by different people. (’970 Patent, col. 10:11-13, as amended).
    • Evidence for a Narrower Interpretation: The patent’s summary of the invention describes a system for an "operator to create and transmit" an alert "to one or more recipient PCs and PDA/cell phones within said communication network," suggesting a one-to-many communication model between distinct users, not a user-to-self model. (’970 Patent, col. 2:10-17).

• Term: "ad hoc... network" (’251 Patent and family)

  • Context and Importance: Plaintiff's infringement theory for the '251, '838, '829, and '123 patents depends on construing the use of Google Maps and Google Contacts for location sharing as the formation of an "ad hoc network."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term "ad hoc" generally means "for a specific purpose," which could arguably be applied to sharing one's location with a friend for a specific meeting or event. The patent also describes the network as potentially "temporary." (’251 Patent, col. 2:11).
    • Evidence for a Narrower Interpretation: The specification repeatedly describes a specific method for creating these networks: "all intended participants that enter the agreed ad hoc network name and password are both digitally and voice interconnected." (’251 Patent, col. 2:14-18). This explicit procedure of using a network name and password seems technically distinct from selecting existing contacts from an address book to share a location.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement to infringe for all five patents. The basis for this allegation is that Defendant provides instructions, user manuals, and other guides (with specific URLs cited) that allegedly instruct customers on how to use the accused functionalities (e.g., Google Maps, Find My Device) in an infringing manner. (Compl. ¶¶ 22-23, 31-32, 45-46, 58-59, 72-73).
• Willful Infringement: The complaint alleges knowledge of infringement "at least as of the date of this Complaint" to support its inducement claims and pleads willful blindness as an alternative. (Compl. ¶¶ 22-23, 31). The prayer for relief seeks a judgment that infringement has been "willful and deliberate" and asks for treble damages under 35 U.S.C. § 284. (Compl. p. 34, ¶b; p. 35, ¶e).

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

• A core issue will be one of definitional scope: can the term "forced message alert," described in the context of multi-party coordination, be construed to cover a user interacting with their own lost device through the "Find My Device" service?
• A key technical question will be one of methodological equivalence: does the process of creating a group in Google Contacts and sharing one's location via Google Maps meet the specific claim limitations of establishing an "ad hoc network," which the patents describe as a process involving a server IP, network name, and password?
• A central legal question will concern the impact of post-grant proceedings: how will the cancellation of original claims in the ’970 patent and the confirmation of claims in the other patents during reexamination influence the court’s construction of the asserted claims and the viability of Defendant’s potential invalidity defenses?