DCT

2:22-cv-00446

AGIS Software Development LLC v. OnePlus Technology Shenzhen Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00446, E.D. Tex., 11/18/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant, directly or through others, makes, uses, and sells infringing products in the district, solicits business there, and maintains regular and established places of business.
  • Core Dispute: Plaintiff alleges that Defendant’s OnePlus-branded mobile devices infringe five U.S. patents related to forced-alert messaging systems and the creation of ad hoc, password-protected communication networks for location and data sharing.
  • Technical Context: The patents address technologies for enabling reliable, coordinated communication and situational awareness on mobile devices, particularly in contexts like emergency response or military operations.
  • Key Procedural History: The complaint notes that all five patents-in-suit have survived post-issuance validity challenges at the U.S. Patent and Trademark Office. U.S. Patent No. 8,213,970 had certain claims cancelled in an Inter Partes Review but the asserted claim (claim 10) was subsequently confirmed as valid in an Ex Parte Reexamination. The other four patents were each confirmed as valid in separate Ex Parte Reexamination proceedings. This history suggests the patents possess a heightened presumption of validity against the prior art considered in those proceedings.

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 ’838 Patent Ex Parte Reexamination Certificate Issued
2021-06-08 ’251 Patent Ex Parte Reexamination Certificate Issued
2021-08-16 ’829 Patent Ex Parte Reexamination Certificate Issued
2021-09-01 ’970 Patent Inter Partes Review Certificate Issued (cancelling claims 1, 3-9)
2021-09-24 ’123 Patent Ex Parte Reexamination Certificate Issued
2021-12-09 ’970 Patent Ex Parte Reexamination Certificate Issued (confirming amended claims 2, 10)
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: Standard digital messaging services like SMS do not provide a sender with confirmation that a message has been received by the recipient, nor do they compel a response from the recipient (’970 Patent, col. 1:50-61). This is a critical deficiency in situations requiring guaranteed communication.
  • The Patented Solution: The invention describes a "forced message alert" software application for mobile devices. When a sender transmits a message using this system, it forces the recipient's device to automatically transmit an acknowledgment of receipt back to the sender. The alert (e.g., a text message on screen or a repeating audio message) then takes control of the recipient's device and can only be cleared when the recipient manually selects and transmits a response from a predefined list (’970 Patent, col. 2:6-24). This creates a closed-loop communication system ensuring receipt and compelling a reply.
  • Technical Importance: The technology provides a mechanism for confirmed message delivery and mandatory user response, which is valuable in command-and-control, emergency, or other high-stakes communication environments (’970 Patent, col. 2:49-56).

Key Claims at a Glance

  • The complaint asserts at least independent claim 10 (’970 Patent, C1 col. 2:22-65).
  • The essential elements of claim 10 include:
    • Receiving an electronically transmitted message.
    • Identifying the message as a forced message alert comprising a voice/text message and a software packet that activates a forced alert program on the recipient phone.
    • Transmitting an automatic acknowledgment of receipt to the sender, which triggers the sender's software to take control of the recipient phone and display the message content and a required response list.
    • Transmitting a selected response from the list to clear the alert and release control of the recipient phone.
    • Displaying the received response on the sender's phone.
    • Providing a list of recipients that have acknowledged and responded.
    • Displaying a geographical map with georeferenced entities on the sender's phone, obtaining location data from the recipient, and presenting a symbol for the recipient on the map.

U.S. Patent No. 9,445,251 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks

The Invention Explained

  • Problem Addressed: In emergency or military situations, different organizations (e.g., police and fire departments) need to establish secure, temporary ("ad hoc") communication networks quickly to coordinate efforts, but they lack a simple method to do so without pre-configuring devices or pre-entering contact information for all participants (’251 Patent, col. 2:7-19, col. 2:21-36).
  • The Patented Solution: The patent describes a system where users can join a temporary, password-protected network by providing a server IP address, an ad hoc event name, and a password to software on their mobile device (’251 Patent, Abstract). A central server manages the network, receiving GPS location and status from each participant and forwarding that data to all other members of the ad hoc group, allowing them to see each other on a map and communicate without having previously exchanged contact details (’251 Patent, col. 4:15-24).
  • Technical Importance: This approach enables rapid, cross-organizational situational awareness and communication for dynamic teams that are not part of a pre-existing, unified communication system (’251 Patent, col. 2:37-45).

Key Claims at a Glance

  • The complaint asserts at least independent claim 24 (Compl. ¶30).
  • The complaint does not provide sufficient detail for analysis of the specific elements of claim 24.

U.S. Patent No. 9,467,838 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks

  • Technology Synopsis: The technology is directed to a system for establishing temporary, password-protected communication networks. The system allows users to join a network via a server and an "ad hoc event name," enabling participants to exchange location, status, and other data for coordinated activities (Compl. ¶9; ’838 Patent, Abstract).
  • Asserted Claims: At least claim 54 (Compl. ¶44).
  • Accused Features: The complaint alleges that functionalities for sharing locations, viewing users on a map, and communicating within groups using applications like Google Maps infringe this patent (Compl. ¶47).

U.S. Patent No. 9,749,829 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks

  • Technology Synopsis: This patent covers a system for creating ad hoc communication groups where a server manages the process of joining the group and exchanging location information between devices. The system relays requests and location data between a first and second device, enabling the second device to display the first device's location on a georeferenced map (Compl. ¶10; ’829 Patent, Abstract).
  • Asserted Claims: At least claim 34 (Compl. ¶57).
  • Accused Features: The complaint accuses features that allow users to share locations and view other users on a map via services like Google Maps and associated servers (Compl. ¶60-61).

U.S. Patent No. 9,820,123 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks

  • Technology Synopsis: The invention relates to a system where a first device can join a group, send its location to a server, and receive back location data for other devices in the group. The system enables the first device to present these locations as user-selectable symbols on a map and to identify and interact with a specific symbol to send data to the corresponding device (’123 Patent, Abstract).
  • Asserted Claims: At least claim 23 (Compl. ¶71).
  • Accused Features: The complaint alleges infringement by features that allow users to share locations, view other users' locations as symbols on a map, and communicate with them via applications like Google Maps (Compl. ¶75).

III. The Accused Instrumentality

Product Identification

  • OnePlus mobile devices, including models from the OnePlus 3 through the OnePlus 10 Pro (collectively, the “Accused Products”) (Compl. ¶16).

Functionality and Market Context

  • The complaint alleges that the Accused Products include functionalities that allow users to find, track, and remotely control their own devices, as well as to form groups, share locations with other users, and view those users' locations as symbols on a map (Compl. ¶17). These features are allegedly provided through pre-installed applications and services such as "Find My Device" (formerly Android Device Manager) and Google Maps, which is integrated with the Messages application (Compl. ¶23, ¶33). A screenshot provided in the complaint shows the "Find My Device" interface displaying a phone's location on a map with options to "Play Sound," "Lock," or "Erase" the device (Compl. p. 8). Another visual shows the Google Maps interface for sharing a user's live location with selected contacts, who appear as icons on the map (Compl. p. 17). The complaint alleges these features improve the user experience and OnePlus's market position (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed mapping of the elements of claim 24 of the ’251 Patent, or the asserted claims of the ’838, ’829, and ’123 patents, to the Accused Products. The general infringement theory for these patents is that the combination of Google Maps, Google Contacts, and underlying Android services on the Accused Products allows users to form groups and share location information with each other and a central server in a manner that allegedly infringes the claims (Compl. ¶32-38, ¶46-52, ¶59-66, ¶73-80).

’970 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
[A method of]...receiving an electronically transmitted electronic message; identifying said electronic message as a forced message alert... The Accused Products receive remote commands via the "Find My Device" service, which allegedly function as a forced message alert. ¶24 col. 12:59-65
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 Accused Products, upon receiving a command from the user's Google account (the sender), automatically acknowledge it and allow the service to execute a function, such as displaying a message or playing a sound, thereby taking control. ¶24 col. 13:1-10
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 on the speakers... The "Find My Device" service can remotely cause the Accused Product to play a sound or display a lock screen message. A visual in the complaint shows options to "Play Sound" or "Lock" the device. ¶24; Compl. p. 8 col. 13:3-9
and 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... A user must interact with the device (e.g., unlock it or stop the sound) to clear the alert, which allegedly constitutes transmitting a response that releases software control. ¶24 col. 13:11-20
displaying a geographical map with georeferenced entities on the display of the sender PDA/cell phone; obtaining location and status data associated with the recipient... The "Find My Device" service displays the location of the Accused Product on a map on another device or web browser logged into the same Google account. The complaint includes a screenshot depicting this functionality. ¶24; Compl. p. 8 col. 11:1-12
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 Accused Product's location is shown as an icon or symbol on the map within the "Find My Device" interface. ¶24 col. 11:13-17

Identified Points of Contention

  • Scope Questions: A central question for the '970 patent may be whether the "Find My Device" feature, which is designed for a user to locate their own device, meets the claim requirements for a "sender PDA/cell phone" communicating with a "recipient PDA/cell phone." The analysis may focus on whether a user's web browser and their own lost phone constitute the distinct sender/recipient entities contemplated by the patent.
  • Technical Questions: For the ad hoc networking patents ('251, '838, '829, '123), a key technical question is whether using a persistent, global, consumer-facing service like Google Maps to share location data with a pre-existing group of contacts performs the same function as the claimed method of creating a temporary, password-protected network for a specific "ad hoc event," as described in the patents' specifications.

V. Key Claim Terms for Construction

  • The Term: "forced message alert"
  • Context and Importance: This term is central to the '970 patent. Its construction will determine whether the accused "Find My Device" functionality falls within the scope of the claims. Practitioners may focus on whether the term requires an alert to be initiated by a different person or entity, or if it can cover a user remotely commanding their own device.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The language of claim 10 is functional, describing a process of receiving a message, forcing an acknowledgment, taking control, and requiring a response to clear the alert, which could arguably be read on any system that performs these steps regardless of the relationship between sender and recipient.
    • Evidence for a Narrower Interpretation: The patent's background describes a communication system for "coordination of two or more people" and discusses communications "between any combination of PC users or PDA/cell phone users" (’970 Patent, col. 1:15-18, col. 2:36-39). This context, using terms like "sender" and "recipient," suggests the invention is directed to communications between distinct participants in a network, not a user interacting with their own property.
  • The Term: "ad hoc ... network"
  • Context and Importance: This term is foundational to the '251, '838, '829, and '123 patents. The dispute may turn on whether creating a group in Google Contacts and sharing locations in Google Maps constitutes the formation of an "ad hoc" network.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patents describe a system where users connect via a central server using a shared "event name" and password, which is structurally analogous to how users might form a temporary group for an event using a shared Google service (’251 Patent, Abstract). The term "ad hoc" can mean "for a specific purpose," which could describe a temporary location-sharing group.
    • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of "Military, first responder, and other public and private emergency groups" who need to "set up ad hoc digital and voice networks easily and rapidly" to coordinate during a disaster when pre-existing systems are unavailable (’251 Patent, col. 2:7-12). This suggests the term "ad hoc network" refers to a temporary network created for a specific, time-limited event, rather than the use of a persistent, general-purpose consumer application.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The basis for this allegation is that OnePlus provides instructions to its customers through user manuals, training videos, and other guides that allegedly direct users to use the accused features (e.g., Find My Device, Google Maps) in an infringing manner (Compl. ¶23, ¶32, ¶46, ¶59, ¶73).
  • Willful Infringement: The complaint alleges that Defendant had knowledge of the patents "at least as of the date of this Complaint" and continued to induce infringement, forming a basis for post-suit willfulness (Compl. ¶22, ¶31). It also pleads in the alternative that Defendant was willfully blind to the infringing nature of its actions (Compl. ¶23, ¶32).

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 '970 patent's context of interactive communication between network participants, be construed to cover the functionality of a device-location service where a user remotely commands their own device?
  • A central question of technical correspondence will arise for the ad hoc networking patents: does using persistent consumer applications like Google Maps and Google Contacts to create groups and share locations constitute the "ad hoc ... network" described in the patents, which are framed in the context of rapid, temporary network creation for emergency response?
  • An initial procedural question may concern the sufficiency of the infringement allegations for the ad hoc networking patents ('251, '838, '829, '123), as the complaint presents a high-level theory without a detailed, element-by-element mapping of the asserted claims to the accused functionalities.