DCT

2:22-cv-00444

AGIS Software Development LLC v. Kyocera Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00444, E.D. Tex., 11/18/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant, through authorized sellers and its own acts, sells the accused products in the district, has committed acts of patent infringement in the district, and maintains regular and established places of business there.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile devices infringe five U.S. patents related to systems for interactive remote communications, forced alerts, and the creation of ad hoc, password-protected networks for location and data sharing.
  • Technical Context: The patents relate to technologies for providing situational awareness and guaranteed communications on mobile devices, a domain relevant to both consumer applications and specialized first-responder or military systems.
  • 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 had several original claims canceled via Inter Partes Review but had other claims, including the now-asserted claim 10, confirmed as patentable in an amended form following an Ex Parte Reexamination. The other four patents (’251, ’838, ’829, ’123) had their claims confirmed as valid and patentable in separate Ex Parte Reexamination proceedings. The survival of asserted claims through these post-grant challenges may be a focal point in the 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 Issued
2016-09-13 U.S. Patent No. 9,445,251 Issued
2016-10-11 U.S. Patent No. 9,467,838 Issued
2017-08-29 U.S. Patent No. 9,749,829 Issued
2017-11-14 U.S. Patent No. 9,820,123 Issued
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: The patent addresses the shortcomings of standard digital messaging (like SMS), where a sender cannot be certain if a message was received or get a required response from recipients in a group (’970 Patent, col. 1:50-61).
  • The Patented Solution: The invention is a "forced message alert" method implemented via a software application. This software allows a sender to transmit a message that forces the recipient's device to automatically send back an acknowledgment of receipt. The software then takes control of the recipient's display to show the message and a list of required manual responses, which must be selected before the alert can be cleared (’970 Patent, Abstract; col. 2:10-24). For voice messages, the alert may repeat until a response is made (’970 Patent, col. 8:46-52).
  • Technical Importance: This technology provides a closed-loop communication system that guarantees message receipt and compels a response, which is valuable in time-critical coordination scenarios (’970 Patent, col. 1:56-61).

Key Claims at a Glance

  • The complaint asserts at least independent claim 10 (Compl. ¶21).
  • 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.
    • Having the software take control of the recipient device to display the message content and a required response list.
    • Transmitting a selected response from the list, which in turn allows the alert and response list to be cleared from the recipient's display.
    • On the sender's device, displaying the response received and a list of which recipients have acknowledged the alert.
    • Displaying a geographical map, 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 September 13, 2016

The Invention Explained

  • Problem Addressed: The patent identifies a need for emergency groups (e.g., military, first responders) to establish secure, temporary digital and voice networks rapidly, without needing to pre-enter contact information for all participants. This is particularly difficult when coordinating different organizations at a disaster scene (’251 Patent, col. 2:7-36).
  • The Patented Solution: The invention provides a method for creating an "ad hoc network" where participants connect to a central server using only a shared network name and password. Once connected, each user's device reports its location and status to the server, which then distributes this information to all other participants in the ad hoc group, enabling real-time situational awareness and communication on an interactive map (’251 Patent, Abstract; Fig. 5).
  • Technical Importance: The technology streamlines the process of creating secure, interoperable communication networks for on-the-fly team coordination in dynamic environments like emergency response situations (’251 Patent, col. 2:7-13).

Key Claims at a Glance

  • The complaint asserts at least independent claim 24 (Compl. ¶30).
  • Essential elements of system claim 24 (describing a "first device") include:
    • Receiving a message from a second device related to joining a group.
    • Participating in the group by sending its location to a server and receiving other devices' locations from the server.
    • Presenting a georeferenced map with user-selectable symbols representing other devices in the group.
    • Sending a request to the server for a second, different georeferenced map and receiving it.
    • Presenting the second map with the device symbols.
    • Identifying user interaction with a symbol and, based on that interaction, using an Internet Protocol to send data to that device 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: This patent, part of the same family as the ’251 Patent, describes a system for rapidly creating temporary, password-protected communication networks. Users join by providing a network name and password to a server, which then facilitates the exchange of location, status, and other data among participants for display on an interactive map (Compl. ¶9; ’838 Patent, Abstract).
  • Asserted Claims: At least independent claim 54 (Compl. ¶44).
  • Accused Features: The complaint alleges that functionalities within the pre-installed Google Maps application, which allow users to share locations, view other users' locations on a map, and communicate, infringe the patent (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: Also in the same family as the ’251 Patent, this patent details a server-based system for managing ad hoc groups. The server forwards requests to join a group, authorizes location sharing, and relays location updates and remote control messages between devices, which display participant locations as symbols on a georeferenced map (Compl. ¶10, ¶60).
  • Asserted Claims: At least independent claim 34 (Compl. ¶57).
  • Accused Features: The complaint targets features in the Accused Products that allow users to share locations, view others on a map, establish groups, and exchange messages via servers that provide the Google Maps service (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: This patent, also from the ’251 Patent family, describes a system where a first device joins a group, exchanges location information with other devices via a server, and presents the group members as selectable symbols on an interactive map. The patent further specifies a method for identifying a user's selection of a symbol on the map based on the coordinates of the user's touch on the display (Compl. ¶11, ¶74).
  • Asserted Claims: At least independent claim 23 (Compl. ¶71).
  • Accused Features: The allegations focus on the pre-installed Google Maps and Messages apps, which are alleged to allow users to form groups, share and view locations on a map, and communicate via interaction with servers (Compl. ¶75-76).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Kyocera-branded mobile devices, including the DuraSlate Wifi Tablet, DuraSport 5G, DuraForce Ultra 5G, DuraForce PRO 2, DuraForce XD, and DuraForce (collectively, the "Accused Products") (Compl. ¶16).

Functionality and Market Context

  • The complaint focuses on specific software applications available on the Accused Products rather than the hardware itself. For the ’970 Patent, the accused functionality is the "Find My Device" application (formerly Android Device Manager) (Compl. ¶23). For the '251, '838, '829, and '123 patents, the accused functionalities are provided by the pre-installed Google Maps and Messages applications (Compl. ¶33, ¶47). These applications allegedly enable users to form groups, share and view device locations on a map, and communicate via text, voice, and other media (Compl. ¶17). The complaint includes a screenshot from the "Find My Device" service showing the location of a "Kyocera DuraForce Pro 2" on a map, illustrating the accused device-location functionality (Compl. p. 8).

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, wherein said forced message alert comprises a voice or text message and a forced message alert application software packet, which triggers the activation of the forced message alert software application program within the recipient PDA/cell phone; The Accused Products, via the "Find My Device" service, receive electronic messages (e.g., a command to play a sound or secure the device) that trigger an alert. ¶24 col. 11:21-26
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... Upon receiving an alert, the "Find My Device" service automatically updates the device's status on the sender's interface, which the complaint alleges constitutes an automatic acknowledgment. ¶24 col. 11:1-5
...and shows the content of the text message and a required response list on the display recipient PDA/cell phone or to repeat audibly the content of the voice message... The "Find My Device" service allegedly takes control to display a message on the lock screen or play a sound, which the complaint maps to showing content and a "required response list." ¶24 col. 11:5-13
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...causing the forced message alert software to release control... The complaint alleges that user interaction with the device to stop the alert (e.g., dismissing a notification) constitutes transmitting a selected response that clears the display and releases software control. ¶24 col. 11:13-20
obtaining location and status data associated with the recipient PDA/cellphone; and presenting a recipient symbol on the geographical map corresponding to a correct geographical location of the recipient PDA/cellphone based on at least the location data. The "Find My Device" service obtains the location of the Accused Products and presents a symbol on a geographical map indicating that location to the sender. This is depicted in a screenshot showing a located Kyocera device. ¶11, ¶24; Compl. p. 8 col. 16:60-65
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the commands sent via the "Find My Device" service (e.g., "PLAY SOUND," "SECURE DEVICE") meet the definition of a "forced message alert application software packet" as required by the claim.
    • Technical Questions: The analysis may focus on whether the accused functionality includes a "required response list" from which a user must select to clear the alert. It raises the question of what evidence demonstrates that dismissing a standard notification or stopping a ringing sound performs the specific function of "transmitting a selected required response" that causes the software to "release control."

U.S. Patent No. 9,445,251 Infringement Allegations

Claim Element (from Independent Claim 24) Alleged Infringing Functionality Complaint Citation Patent Citation
A system comprising: a first device programmed to perform operations comprising: receiving a message sent by a second device, wherein the message relates to joining a group; The Accused Products, using Google services, are allegedly programmed to receive messages, such as invitations, related to joining groups for location sharing. ¶35; Compl. p. 16 col. 11:1-8
based on receipt of the message sent by the second device, participating in the group, wherein participating in the group includes sending first location information to a server and receiving second location information from the first server... The Accused Products allegedly participate in groups by communicating with a server (e.g., Google's servers) to send their own location and receive the locations of other group members. ¶36 col. 12:50-54
presenting, via an interactive display of the first device, a first interactive, georeferenced map and a plurality of user-selectable symbols corresponding to the plurality of second devices... The Google Maps app on the Accused Products presents an interactive map displaying user-selectable symbols (icons representing users) at positions corresponding to their locations. The complaint provides a screenshot of this interface. ¶37; Compl. p. 17 col. 13:59-65
sending, from the first device to a second server, a request for georeferenced map data; receiving, from the second server, the georeferenced map data... The complaint alleges users can retrieve additional map information, such as by moving the map screen or selecting satellite images, which is argued to meet this limitation. ¶38 col. 4:40-44
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 one or more second devices via the server... The Accused Products are allegedly programmed to permit interaction with the display where a user may select a symbol, which permits data to be sent to other devices. ¶38 col. 5:45-56
  • Identified Points of Contention:
    • Scope Questions: The case may turn on whether creating a consumer location-sharing session in Google Maps constitutes establishing an "ad hoc...network" within the meaning of the patent, which has a background focused on first-responder and military coordination.
    • Technical Questions: It raises the question of whether standard map interactions like panning and zooming in Google Maps satisfy the specific claim step of "sending...a request for a second georeferenced map" and "receiving...the second georeferenced map."

V. Key Claim Terms for Construction

  • For the ’970 Patent:
    • The Term: "forced message alert software application program"
    • Context and Importance: This term is foundational to the asserted claim. The infringement theory depends on construing this term to cover the "Find My Device" service. Practitioners may focus on whether the "forced" nature requires a specific level of device control and user interaction not present in the accused service.
    • Intrinsic Evidence for a Broader Interpretation: The Summary of the Invention describes the software's ability to "compel an automatic acknowledgement of receipt...and require a manual response" (’970 Patent, col. 2:50-54), which could be argued to encompass any system that ensures a device has received a command and logs user interaction.
    • Evidence for a Narrower Interpretation: The detailed description specifies that the software "effectively takes control of the recipient PC or PDA/cell phone" and that a voice message "cannot be stopped from repeating until one of the entries on the response list is selected" (’970 Patent, col. 8:41-52). This language suggests a highly intrusive form of software that overrides normal user control, potentially narrowing the term's scope.
  • For the ’251 Patent:
    • The Term: "ad hoc...network"
    • Context and Importance: The patent's title and background are centered on "ad hoc" networks. Whether a temporary location-sharing group in Google Maps falls within this definition is critical to infringement for the entire asserted patent family.
    • Intrinsic Evidence for a Broader Interpretation: The abstract states the method allows "individuals to set up an ad hoc digital and voice network easily and rapidly," and the specification describes allowing "a group of people to be able to set up a network easily and rapidly" (’251 Patent, Abstract; col. 1:48-50). This general language could support a construction covering any temporary, easily formed group communication system.
    • Evidence for a Narrower Interpretation: The "Background of the Invention" section is heavily focused on the specific needs of "Military, first responder, and other public and private emergency groups" to coordinate "different organizations at the scene of a disaster" (’251 Patent, col. 2:7-21). This context may support a narrower construction limited to networks formed for such specialized, mission-critical purposes.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all five patents. The basis for inducement is Defendant’s alleged instruction of customers—through user guides, training videos, demonstrations, and brochures—to use the accused functionalities (e.g., "Find My Device," Google Maps), thereby causing them to directly infringe (Compl. ¶22-23, ¶31-32).
  • Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of infringement "at least as of the date of this Complaint" (Compl. ¶22, ¶31). The prayer for relief requests a judgment that Defendant’s infringement has been "willful and deliberate," which could support a claim for enhanced damages under 35 U.S.C. § 284 (Compl. p. 35, ¶b).

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

  • A core issue will be one of definitional scope: can the term "forced message alert," which the patent describes as a program that takes control of a device and requires a specific response to be cleared, be construed to cover the functions of a general-purpose device security and location service like "Find My Device"?
  • A second central issue will be one of contextual scope: does the term "ad hoc...network," rooted in the patent's explicit context of coordinating first-responder and military units in disaster scenarios, extend to the consumer-grade functionality of creating temporary location-sharing groups among friends or family in Google Maps?
  • A key evidentiary question will be one of functional correspondence: the case will likely require a detailed, feature-by-feature comparison to determine if the actual operation of the accused applications performs the specific, multi-part sequences required by the asserted claims, or if there are fundamental mismatches in their technical methods of operation.