DCT
2:22-cv-00443
AGIS Software Development LLC v. HMD Global
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: AGIS Software Development LLC (Texas)
- Defendant: HMD Global, HMD Global OY (Finland), and HMD America, Inc. (Florida)
- Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
- Case Identification: 2:22-cv-00443, E.D. Tex., 11/18/2022
- Venue Allegations: Venue is alleged to be proper as Defendants are subject to personal jurisdiction, have committed acts of infringement, and have regular and established places of business within the Eastern District of Texas. HMD Global and HMD Global OY are also identified as foreign corporations.
- Core Dispute: Plaintiff alleges that Defendant’s Nokia-branded smartphones, which utilize Android features like "Find My Device" and Google Maps, infringe five patents related to forced-alert messaging, location sharing, and the creation of ad hoc communication networks.
- Technical Context: The technology at issue involves systems for enhancing situational awareness and coordinating group activities on mobile devices by ensuring message receipt and enabling the rapid formation of temporary, secure communication groups.
- Key Procedural History: The complaint notes that all five patents-in-suit have been subject to post-grant proceedings. U.S. Patent No. 8,213,970 survived an Inter Partes Review that cancelled several claims, with an subsequent Ex Parte Reexamination confirming the patentability of the remaining asserted claims as amended. The other four patents-in-suit each underwent Ex Parte Reexamination, with the complaint stating that all claims were confirmed as valid and patentable. These proceedings may provide a detailed record of prior art and claim interpretation arguments that could be relevant to the current litigation.
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 |
| 2016-09-13 | 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 for ’838 Patent Issues |
| 2021-06-08 | Ex Parte Reexamination Certificate for ’251 Patent Issues |
| 2021-08-16 | Ex Parte Reexamination Certificate for ’829 Patent Issues |
| 2021-09-01 | Inter Partes Review Certificate for ’970 Patent Issues |
| 2021-09-24 | Ex Parte Reexamination Certificate for ’123 Patent Issues |
| 2021-12-09 | Ex Parte Reexamination Certificate for ’970 Patent Issues |
| 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"
The Invention Explained
- Problem Addressed: The patent addresses the shortcomings of standard digital messaging systems (like SMS or TCP/IP) where a sender has no way to confirm a message was received or to compel a response from the recipient (’970 Patent, col. 1:50-60).
- The Patented Solution: The invention proposes a "forced message alert" software system. When a sender transmits a message, software on the recipient's device forces an automatic acknowledgment of receipt back to the sender. The alert (e.g., a text message or a repeating voice message) takes control of the recipient's device and can only be cleared after the recipient manually selects a response from a required list, ensuring the sender receives both a delivery confirmation and a substantive reply (’970 Patent, Abstract; col. 2:10-24).
- Technical Importance: This method provides a closed-loop communication system with guaranteed receipt acknowledgment and a mechanism to compel user response, which is valuable in coordinating time-sensitive activities for groups like first responders or military units (Compl. ¶15-16).
Key Claims at a Glance
- The complaint asserts at least independent claim 10, as amended by reexamination (Compl. ¶23).
- Essential elements of method claim 10 include:
- Receiving and identifying an electronic message as a "forced message alert" comprising a message and a software packet.
- Transmitting an automatic acknowledgment of receipt to the sender.
- The sender's device taking control of the recipient's device to show the message content and a "required response list."
- Transmitting a selected response from the list to clear the alert from the recipient's display.
- Displaying the received response on the sender's device.
- Displaying a geographical map with georeferenced entities on the sender's device.
- Obtaining location data of the recipient's device and presenting a corresponding symbol on the 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"
The Invention Explained
- Problem Addressed: The patent identifies a need for emergency groups (e.g., military, first responders) to quickly establish temporary, private digital and voice networks without needing to pre-enter participant data like names or phone numbers. The technology aims to solve challenges in coordinating different organizations at a disaster scene (’251 Patent, col. 2:8-18, 2:21-36).
- The Patented Solution: The invention describes a method where users can join a network by entering three key pieces of information: a server's IP address, an "ad hoc event name," and a password. A central server receives this information, stores the participant's IP address, and then automatically forwards location and status data between all users who have joined the same named and password-protected event, thereby creating an "ad hoc" situational awareness network (’251 Patent, Abstract; col. 4:51-58).
- Technical Importance: This system simplifies the creation of secure, temporary communication groups among users who may not know each other beforehand, which is critical for inter-agency coordination in emergency response scenarios (’251 Patent, col. 2:32-45).
Key Claims at a Glance
- The complaint asserts at least independent claim 24 (Compl. ¶32).
- Essential elements of 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 from the server (comprising locations of other group devices).
- Presenting a georeferenced map with user-selectable symbols corresponding to the second devices.
- Sending a request for a different georeferenced map and receiving/presenting it.
- Identifying user interaction with a symbol to specify an action and sending 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 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"
Technology Synopsis
Continuing the technology of the '251 patent, this patent family describes methods for establishing temporary, password-protected communication networks. Users join by providing a server IP, an event name, and a password, enabling a server to route location and status data among participants for real-time situational awareness.
Asserted Claims
At least independent claim 54 is asserted (Compl. ¶46).
Accused Features
The complaint alleges infringement by functionalities in Google Maps and Messages that allow users to establish groups, share and view locations on a map, and communicate with other users (Compl. ¶49-51).
U.S. Patent No. 9,749,829 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"
Technology Synopsis
This patent is part of the same family as the '251 and '838 patents, relating to the creation of ad hoc, password-protected networks for group communication and location sharing, particularly for emergency response scenarios. The system relies on a server to manage participant data and route communications based on a shared event name and password.
Asserted Claims
At least independent claim 34 is asserted (Compl. ¶59).
Accused Features
Infringement allegations target server-side systems and user devices utilizing Google Maps and Messages for group creation, requesting and sharing updated locations, and displaying user symbols on a map (Compl. ¶62-63).
U.S. Patent No. 9,820,123 - "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks"
Technology Synopsis
As the latest patent in this asserted family, it further details the methods for establishing and operating within ad hoc, password-protected networks. The technology enables users to join temporary groups for situational awareness, view other members as symbols on a map, and interact with those symbols to initiate communications.
Asserted Claims
At least independent claim 23 is asserted (Compl. ¶73).
Accused Features
The accused features are the use of Google Maps and Messages on HMD devices to form groups, present georeferenced maps with user-selectable symbols, and interact with those symbols to send data (Compl. ¶76-77).
III. The Accused Instrumentality
Product Identification
The accused products are a wide range of HMD mobile devices sold under the Nokia brand (the "Accused Products") (Compl. ¶18).
Functionality and Market Context
The complaint targets specific software functionalities available on the Accused Products rather than the hardware itself. For the ’970 Patent, the accused functionality is the "Find My Device" application, which allows a user to remotely locate, play a sound on, or erase a lost or stolen device (Compl. ¶25). For the remaining patents, the accused functionalities are the pre-installed Google Maps and Messages applications, which allegedly allow users to form groups, share their locations, view the locations of other users on an interactive map, and communicate (Compl. ¶¶35, 49, 63, 77). The complaint includes a screenshot from a Nokia user guide illustrating the "Find My Device" feature's ability to locate a phone and display it on a map (Compl. p. 9). The complaint alleges that these functionalities improve user experience and Defendants' market position (Compl. p. 8).
IV. Analysis of Infringement Allegations
’970 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method of receiving, acknowledging and responding to a forced message alert...wherein the receipt, acknowledgment, and response to said forced message alert is forced by a forced message alert software application program... | The Accused Products use the "Find My Device" app, which allegedly forces alerts and responses. | ¶26 | col. 8:15-20 |
| receiving an electronically transmitted electronic message; identifying said electronic message as a forced message alert...which triggers the activation of the forced message alert software application program... | A user sends a remote command (e.g., "Play Sound") from a computer or other device to a lost Accused Product. | ¶26 | col. 8:20-29 |
| transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone, which triggers the forced message alert software application program to take control of the recipient PDA/cell phone... | The lost phone receives the command and sends a notification back to the sender's device (e.g., confirming connection) and executes the command (e.g., playing a sound). | ¶26 | col. 8:29-41 |
| transmitting a selected required response from the response list...causing the forced message alert software to release control of the recipient PDA/cell phone... | The user controlling the sender device remotely locates the phone or stops the sound, which constitutes the "response" that clears the alert state. | ¶26 | col. 8:42-55 |
| 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" service displays the location of the lost phone as a symbol on a map on the sender's controlling device. | ¶26 | col. 8:56-65 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the "Find My Device" feature, typically used by one person to find their own device, constitutes a "forced message alert" between a "sender" and a "recipient" as described in the patent. The analysis may focus on whether remotely commanding a device to play a sound or report its location meets the claim requirement of forcing a response from a "required response list" to clear the alert.
’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...wherein the message relates to joining a group... | Users utilize Google Contacts and Messages to create groups and send messages inviting others to share their location. A screenshot shows instructions for creating a group in Google Contacts (Compl. p. 18). | ¶37 | col. 15:60-63 |
| based on receipt of the message...participating in the group...sending first location information to a server and receiving second location information from the first server... | The device sends its location to Google's servers and receives location data for other group members who have opted to share. | ¶38 | col. 15:64-16:2 |
| presenting, via an interactive display...a georeferenced map and one or more user-selectable symbols corresponding to one or more of the second devices... | The Google Maps app displays a map with symbols representing the locations of other users in the group. A screenshot shows user icons overlaid on a map in the Google Maps application (Compl. p. 19). | ¶39 | col. 16:3-11 |
| identifying user interaction with the interactive display selecting a particular user-selectable symbol...and, based thereon, using an Internet Protocol to send data to the particular second device... | A user can tap on another user's symbol on the map to initiate communication (e.g., send a message) via Google's servers. | ¶40 | col. 16:26-34 |
- Identified Points of Contention:
- Technical Questions: The infringement theory may depend on whether the process of creating a Google contact list and sharing location via Google Maps is technically equivalent to the patent's description of joining an "ad hoc" network by entering a server IP, event name, and password. The court may need to determine if a system built on pre-existing user accounts and contacts can be considered "ad hoc" in the manner claimed by the patent.
V. Key Claim Terms for Construction
For the ’970 Patent:
- The Term: "forced message alert"
- Context and Importance: This term is central to claim 10 and the core of the asserted invention. Whether the "Find My Device" functionality falls within the scope of this term is a dispositive question for infringement. Practitioners may focus on whether the term requires two distinct human users (a sender and a recipient) or if it can cover a single user interacting with their own remote device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Abstract describes a system that "enables a participant to force an automatic acknowledgement and a manual response," which could be argued to cover any system that compels a device action and provides confirmation.
- Evidence for a Narrower Interpretation: The specification describes the system in the context of compelling a response from another person, where "a sender can compel an automatic acknowledgement of receipt from each recipient's PC or PDA/cell phone and require a manual response from the recipient" (’970 Patent, col. 2:50-54). This language suggests an interaction between distinct parties.
For the ’251 Patent:
- The Term: "ad hoc... network"
- Context and Importance: The patent is titled "Method to Provide Ad Hoc and Password Protected... Networks." The definition of "ad hoc" is critical, as the accused Google Maps/Messages functionality operates within a persistent, account-based ecosystem. The infringement analysis will turn on whether creating a temporary location-sharing group within Google's framework constitutes the claimed "ad hoc" network.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states a goal is "eliminating the need for pre-entry of data... and or identifying others by name, phone numbers or email addresses" (’251 Patent, col. 2:12-15). This could support a broader view that any temporary network that doesn't require users to manually input contact details for every other member is "ad hoc."
- Evidence for a Narrower Interpretation: The Abstract and Summary of the Invention repeatedly define the specific user action for joining as entering "a specific Server IP address and an ad hoc event name, a password" (’251 Patent, Abstract). This provides a specific, narrow definition of how the ad hoc network is formed, which may not align with the accused functionality of creating groups from existing contact lists.
VI. Other Allegations
- Indirect Infringement: For all five patents, the complaint alleges induced infringement. The basis for this allegation is that Defendants provide instructions to customers on how to use the accused features (Find My Device, Google Maps) through user guides, training videos, and other materials, thereby intentionally encouraging direct infringement by end-users (Compl. ¶¶25, 34, 48, 61, 75).
- Willful Infringement: The complaint alleges that Defendants had knowledge of the patents "at least as of the date of this Complaint" (e.g., Compl. ¶¶24, 33). This allegation appears to support a claim for post-filing willful infringement. The prayer for relief requests a declaration that infringement has been willful and an award of treble damages (Compl. p. 37-38).
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely center on fundamental questions of claim scope and the technical operation of the accused Android software features. The key issues for the court to resolve include:
- A core issue will be one of definitional scope: can the term "forced message alert", which the ’970 patent describes in the context of compelling a response from a human recipient, be construed to cover a single user remotely commanding their own lost device to play a sound or report its location?
- A key technical question will be one of operational equivalence: does creating a location-sharing group within the persistent, account-based Google ecosystem constitute the formation of an "ad hoc... network" as claimed by the ’251 patent family, which the specification describes as being established by the specific steps of entering a server IP, event name, and password?
- An evidentiary question will be one of system architecture: what evidence will be presented to show how the server-side components of Google's services, which are not directly controlled by the Defendant, perform the specific server-related steps required by the asserted system and method claims?