AGIS Software Development LLC v. Caterpillar Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Caterpillar Inc. (Delaware)
  • Plaintiff’s Counsel: Fabricant LLP
• Case Identification: 2:22-cv-00442, E.D. Tex., 11/18/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has authorized sellers and sales representatives that offer and sell products in the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s CAT-branded mobile devices infringe five patents related to systems for interactive remote communication, location tracking, and the formation of ad-hoc communication networks.
• Technical Context: The patents relate to situational awareness technology for mobile devices, enabling users to form groups, share locations on interactive maps, and engage in compelled, acknowledged communications, with applications in emergency response and enterprise coordination.
• Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant review. U.S. Patent No. 8,213,970 had several claims cancelled in an Inter Partes Review, while the asserted claims survived an Ex Parte Reexamination in amended form. The other four patents (U.S. Patent Nos. 9,445,251; 9,467,838; 9,749,829; and 9,820,123) had their validity and patentability confirmed in separate Ex Parte Reexamination proceedings. The survival of claims through post-grant review may be presented by the Plaintiff to suggest the patents' robustness.

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: July 3, 2012

The Invention Explained

• Problem Addressed: The patent’s background section describes a need in digital messaging to confirm not only that a message was received by a party, but also to compel a substantive response from that party, functions not provided by standard SMS or TCP/IP messaging protocols at the time (’970 Patent, col. 1:50-61).
• The Patented Solution: The invention is a system using specialized software on mobile devices to send a "forced message alert." Upon receipt, the recipient's device is forced to automatically transmit an acknowledgment back to the sender. The alert then takes control of the recipient's device, displaying the message (text or voice) and a list of required manual responses. This display cannot be cleared until the recipient selects and transmits a response from the list, ensuring a closed-loop communication exchange. (’970 Patent, Abstract; col. 2:7-24).
• Technical Importance: The technology creates a verifiable, high-priority communication channel that ensures message receipt and compels a user response, a critical capability for coordination in tactical, emergency, or enterprise environments (Compl. ¶13-14).

Key Claims at a Glance

• The complaint asserts at least independent claim 10 (as amended) (Compl. ¶21).
• The essential elements of independent method claim 10 include:
  • Receiving an electronically transmitted message identified as a "forced message alert" comprising a message and a software packet.
  • Transmitting an automatic acknowledgment of receipt to the sender.
  • Having the software take control of the recipient device to display the message content and a required response list.
  • Transmitting a selected required response from the list, which causes the software to release control and clear the display.
  • Displaying the received response on the sender's device.
  • Providing a list on the sender's device of which recipients have acknowledged receipt.
  • Displaying a geographical map on the sender's device.
  • Obtaining location and status data from the recipient's device.
  • Presenting a symbol for the recipient on the geographical map at their correct location.

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: The patent identifies the difficulty faced by emergency responders and military groups from different organizations in establishing rapid and secure digital and voice communication networks during a disaster or operation. Such situations preclude the pre-entry of contact data (names, phone numbers) typically required to form a communication group. (’251 Patent, col. 2:7-19).
• The Patented Solution: The invention provides a method for users to quickly form a temporary, password-protected, ad-hoc network. Users on disparate devices connect to a central server by entering only a shared "ad hoc event name" and password. The server then automatically relays location, status, and other data between all authenticated members of the group, enabling them to see each other on a map and communicate without needing to pre-configure contact lists. (’251 Patent, Abstract; col. 4:6-14).
• Technical Importance: This approach significantly lowers the barrier to creating secure, interoperable communication and situational awareness networks in high-stress, time-critical environments (Compl. ¶13-14).

Key Claims at a Glance

• The complaint asserts at least independent claim 24 (Compl. ¶30).
• The essential elements of independent system claim 24 include a first device programmed to:
  • Receive a message from a second device relating to joining a group.
  • Participate in the group by sending its location information to a server and receiving location information for other group devices from the server.
  • Present an interactive, georeferenced map with user-selectable symbols representing other devices at their respective locations.
  • Send a request for a different georeferenced map to the server and receive and present that new map.
  • Identify user interaction with the map (e.g., selecting a symbol and specifying an action) and, based on that interaction, send data to other devices via the server.

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: Belonging to the same family as the ’251 patent, this patent addresses the challenge of establishing rapid, interoperable communications for groups like first responders. It describes a client-server system where users join a password-protected ad-hoc network, enabling automatic sharing of location and status data on a georeferenced map without prior exchange of contact information (Compl. ¶47-48).
• Asserted Claims: At least independent claim 54 (Compl. ¶44).
• Accused Features: The complaint alleges infringement by the accused devices’ use of pre-installed applications like Google Maps to form groups and share and view user locations on an interactive map (Compl. ¶47).

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: This patent, also from the ’251 patent family, details a system for creating ad-hoc groups for location sharing and remote device control. The system relies on a server to manage group membership, receive location updates from a first device, forward that information to a second device for display on a map, and relay remote control commands from the second device back to the first (Compl. ¶60).
• Asserted Claims: At least independent claim 34 (Compl. ¶57).
• Accused Features: The complaint accuses functionalities within the CAT mobile devices, facilitated by Google Maps and related services, that allegedly allow users to form groups, share location information for display on a map, and remotely communicate with or control other devices (Compl. ¶61-62).

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: A further member of the same patent family, this patent describes a system where a device joins a group via a server, receives map and location data for other group members, and presents them as user-selectable symbols on an interactive display. A key aspect is the method of identifying which symbol a user has selected by detecting the coordinates of the user's interaction on the map (Compl. ¶74).
• Asserted Claims: At least independent claim 23 (Compl. ¶71).
• Accused Features: Infringement allegations target the accused products’ use of applications like Google Maps to form and join groups, display group members as symbols on a map, and allow user interaction with those symbols (Compl. ¶75).

III. The Accused Instrumentality

Product Identification

• The complaint names a series of "CAT mobile devices," including the Cat S53, Cat Q10 5G, Cat S62 Pro, and others (collectively, the “Accused Products”) (Compl. ¶16).

Functionality and Market Context

• The complaint alleges the Accused Products are equipped with functionalities enabling users to form and join groups, share and view locations on a map, and communicate via text and voice (Compl. ¶17).
• A specific feature identified is the "Find My Device" application (formerly Android Device Manager), which allows users to remotely locate, track, and control lost or stolen devices (Compl. ¶23). The complaint includes a screenshot from promotional material for this application, showing a phone's location on a map with options to "Ring," "Lock," or "Erase" the device (Compl. p. 7).
• The complaint also alleges that the pre-installed Google Maps application allows users to share their locations, view others' locations on a map, and communicate (Compl. ¶33).

IV. Analysis of Infringement Allegations

'970 Patent Infringement Allegations

'251 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: For the '970 patent, a primary question will be whether the remote device management functions of "Find My Device" fall within the scope of a "forced message alert," which the patent describes as a specific, interactive communication method involving a predefined response list. For the '251, '838, '829, and '123 patents, a potential issue is whether creating a label in a contacts application that is then usable in a separate mapping application constitutes "receiving a message... relating to joining a group" as contemplated by the claims.
• Technical Questions: What evidence does the complaint provide that the "Find My Device" feature forces a manual response from a recipient user to clear an alert, as opposed to simply executing a remote command? For the '251 family of patents, what is the specific "message" that facilitates joining a group, and how is it "received" in a manner consistent with the claim language when a user creates a contact group for their own use?

V. Key Claim Terms for Construction

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

  • Context and Importance: This term is the central concept of the '970 patent. The viability of the infringement allegation hinges on whether the remote commands sent by the "Find My Device" application can be characterized as a "forced message alert." Practitioners may focus on this term because the accused functionality appears to be for device security and management rather than the specific type of compelled, two-way user communication detailed in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract states the invention "enables a participant to force an automatic acknowledgement and a manual response," which could be argued to cover any system that compels a remote action and confirms its execution (’970 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The specification repeatedly describes the alert as presenting a "required response list" from which a user must select a reply (e.g., "will comply," "will not comply") in order to "clear the forced text message alert from the user operator's PC or PDA/cell phone display" (’970 Patent, col. 7:22-30). This suggests a more limited scope tied to interactive, text-based communication between human users.

• The Term: "receiving a message... wherein the message relates to joining a group" (’251 Patent, claim 24)

  • Context and Importance: The infringement theory for the '251 family of patents relies on combining functionalities from different applications (e.g., Google Contacts and Google Maps). The definition of this term will be critical to determining whether creating a contact list and subsequently using it for location sharing meets this claim limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff may argue that any electronic data transfer between a client and server that results in the device becoming part of a defined group for data exchange constitutes "receiving a message."
    • Evidence for a Narrower Interpretation: The patent's detailed description focuses on users establishing a network by entering a specific "ad hoc event name and a password" into their device, which then connects to a server (’251 Patent, col. 4:51-54). This could support a narrower construction requiring an explicit, singular act of joining a network session, rather than leveraging a pre-existing contact list.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by providing customers with the Accused Products and instructing them on how to use the accused features through "training videos, demonstrations, brochures, installations and/or user guides" (Compl. ¶23, 32).
• Willful Infringement: The complaint alleges knowledge of the patents "at least as of the date of this Complaint" to support post-suit willfulness (Compl. ¶22, 31). It also pleads that Defendant "believed there was a high probability that others would infringe the... Patent but remained willfully blind to the infringing nature of others' actions," which may support a claim of pre-suit willfulness (Compl. ¶23, 31). The prayer for relief requests a finding of willful infringement and treble damages (Compl. p. 33-34).

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

• A core issue will be one of definitional scope: Can the "Find My Device" feature, a tool for remotely securing a lost phone, be construed as the "forced message alert" system of the ’970 patent, which is described as a method for compelling a manual, text-based response from a human user to ensure closed-loop communication?
• A key question of claim interpretation will apply to the '251, '838, '829, and '123 patents: Does the act of creating a contact list in one application and later using that list to share location in a separate mapping application satisfy the claim requirement of "receiving a message... relating to joining a group," or does the claim require a more direct, singular action to join a specific communication session?
• An evidentiary question will be one of system infringement: How does Caterpillar's act of selling a device with pre-installed, general-purpose third-party software (e.g., Google Maps) constitute the direct infringement of system claims that require specific interactions between multiple devices and a server to form an "ad-hoc" network?