DCT

2:22-cv-00447

AGIS Software Development LLC v. Panasonic Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: AGIS Software Development LLC v. Panasonic Corporation, 2:22-cv-00447, E.D. Tex., 11/18/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction in the district, have committed acts of patent infringement in the district, and have regular and established places of business in the district through the sale of accused products.
  • Core Dispute: Plaintiff alleges that Defendant’s Toughbook line of ruggedized mobile devices infringes five patents related to forced message alerts, interactive remote communications, and the formation of ad hoc, password-protected digital and voice networks.
  • Technical Context: The technology at issue facilitates situational awareness and coordinated communication for groups of mobile device users, particularly in contexts such as emergency response, military, and enterprise logistics.
  • Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant proceedings. U.S. Patent No. 8,213,970 had several claims cancelled in an Inter Partes Review, while the asserted claim 10 was amended and confirmed as patentable in a subsequent Ex Parte Reexamination. The other four patents-in-suit had their claims confirmed as valid and patentable in separate Ex Parte Reexaminations. This history may influence claim construction by focusing the court's attention on the scope of the surviving and amended claims.

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 Issues for ’838 Patent
2021-06-08 Ex Parte Reexamination Certificate Issues for ’251 Patent
2021-08-16 Ex Parte Reexamination Certificate Issues for ’829 Patent
2021-09-01 Inter Partes Review Certificate Issues for ’970 Patent
2021-09-24 Ex Parte Reexamination Certificate Issues for ’123 Patent
2021-12-09 Ex Parte Reexamination Certificate Issues 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 Jul. 3, 2012)

The Invention Explained

  • Problem Addressed: Senders of digital messages, such as SMS, often lack confirmation that the message was received and have no mechanism to compel a response from the recipient (ʼ970 Patent, col. 1:50-60).
  • The Patented Solution: The invention provides a software application on mobile devices that enables a sender to transmit a "forced message alert." Upon receipt, the recipient's device automatically sends an acknowledgment and presents the message (text or audio) along with a "manual response list." The alert can only be cleared from the recipient's display by selecting and transmitting a response from this list, ensuring the sender receives both receipt confirmation and a required reply (’970 Patent, Abstract; col. 2:6-24).
  • Technical Importance: This system provides a closed-loop communication protocol that ensures message receipt and responsive action in time-sensitive environments like military or first responder operations (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent method claim 10, which was amended during reexamination (Compl. ¶22).
  • Essential elements of amended claim 10 include:
    • Receiving an electronically transmitted message and identifying it as a forced message alert comprising a voice/text message and a software packet.
    • The packet triggers activation of a software program on the recipient device.
    • Transmitting an automatic acknowledgment of receipt to the sender.
    • The sender's software then takes control of the recipient device to show the message content and a "required response list."
    • Transmitting a selected response from the list to clear the message and release software control.
    • Displaying the response on the sender's device.
    • Displaying a geographical map with a symbol for the recipient's 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: Emergency response teams, such as police and fire departments from different organizations, need to establish secure, temporary communication networks rapidly at the scene of a disaster without pre-configuring devices with each other's contact information (’251 Patent, col. 2:7-22, col. 2:23-36).
  • The Patented Solution: The invention describes a method where users on mobile devices can join a network by entering a common server IP address, an "ad hoc event name," and a password. A central server receives this information, stores the users' IP addresses, and then acts as a forwarder to route location, status, text, and voice data between all authenticated members of the ad hoc group, enabling rapid and secure collaboration (’251 Patent, Abstract; col. 4:46-58).
  • Technical Importance: This approach facilitates interoperability and situational awareness among disparate groups in dynamic, time-critical situations by simplifying the process of network formation (Compl. ¶15).

Key Claims at a Glance

  • The complaint asserts independent system claim 24 (Compl. ¶31).
  • Essential elements of claim 24 include:
    • A first device programmed to perform operations.
    • Receiving a message from a second device relating to joining a group.
    • Participating in the group, which includes sending first location information to a server and receiving second location information (comprising locations of other group devices) from the server.
    • Presenting a georeferenced map with symbols for the second devices at their respective locations.
    • Requesting and receiving a second, different georeferenced map from a server.
    • Identifying user interaction with a symbol to specify an action and using an Internet Protocol to send data to the corresponding device via the server.

U.S. Patent No. 9,467,838 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks (Issued Oct. 11, 2016)

  • Technology Synopsis: This patent, related to the ’251 Patent, discloses methods and systems for establishing temporary, secure digital and voice communication networks. It focuses on the server-side operations that facilitate group formation and data exchange based on a shared ad hoc network name and password, enabling users to coordinate activities without pre-entry of contact data.
  • Asserted Claims: At least independent method claim 54 is asserted (Compl. ¶45).
  • Accused Features: The accused features include functionalities within the Accused Products, such as the Google Maps application, that allegedly allow users to form groups and exchange location and communication data via servers (Compl. ¶¶48-49).

U.S. Patent No. 9,749,829 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks (Issued Aug. 29, 2017)

  • Technology Synopsis: This patent, also related to the ’251 Patent, claims a system where server devices are programmed to manage the process of joining a group, sharing location information, and engaging in remote control operations. The claims detail a specific sequence of message exchanges between a first device, a second device, and a server to establish and maintain situational awareness on a map-based interface.
  • Asserted Claims: At least independent system claim 34 is asserted (Compl. ¶58).
  • Accused Features: The complaint alleges that the Accused Products, through applications like Google Maps and associated services, allow users to share locations, view those locations on a map, and communicate in a manner that infringes the claimed system (Compl. ¶¶61-62).

U.S. Patent No. 9,820,123 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks (Issued Nov. 14, 2017)

  • Technology Synopsis: This patent, also in the same family, focuses on the operations performed by a first device within an ad hoc network. The claims cover receiving a message to join a group, exchanging location data with a server, presenting a map with symbols for other users, and identifying user interaction with the map to select another user's symbol and initiate data transmission.
  • Asserted Claims: At least independent system claim 23 is asserted (Compl. ¶72).
  • Accused Features: The accused functionalities are the capabilities of the Accused Products, allegedly enabled by applications like Google Maps, to form groups and interact with a map display to share location data and communicate with other users (Compl. ¶¶75-76).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Panasonic mobile devices, including the Toughbook G2, Toughbook 33, Toughbook CF-33LE, Toughbook G1, Toughbook FZ-Q1, Toughbook S1, Toughbook A3, Toughbook N1, and Toughbook FZ-N1 (Compl. ¶17).

Functionality and Market Context

The complaint alleges these devices are marketed as ruggedized tools for first responders, law enforcement, and military personnel, providing a "tactical operations center built into hand-held mobile devices" (Compl. ¶15). The infringement allegations center on software functionalities available on these devices:

  • The "Find My Device" application (formerly Android Device Manager), which allows a user to remotely locate a device and cause it to play a sound (Compl. ¶24). A screenshot in the complaint depicts the "Find My Device" interface showing a map with a device location and options to "Play Sound," "Secure Device," or "Erase Device" (Compl. p. 8).
  • The pre-installed Google Maps application and associated services, which allow users to establish groups, share their location with others, view others' locations on an interactive map, and exchange messages (Compl. ¶¶34-35). A provided screenshot shows the Google Maps interface for sharing a user's location with selected contacts, who then appear as symbols on a map (Compl. p. 16).

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 said forced message alert comprises of a voice or text message and a forced message alert application software packet... The Accused Products, via the "Find My Device" application, receive a remote command to locate the device or play a sound, which is alleged to be a "forced message alert" (Compl. ¶24-25). ¶25 col. 2:11-15
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone... The complaint alleges this step is performed but does not specify what constitutes the automatic acknowledgment in the "Find My Device" service (Compl. ¶25). ¶25 col. 2:16-19
...show the content of the text message and a required response list on the display...or to repeat audibly the content of the voice message...and show the required response list on the display... The "Play Sound" feature forces an audible alert on the recipient device. The complaint does not identify a corresponding "text message" or a "required response list" presented on the display. ¶25 col. 2:19-24
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... The complaint alleges this step is performed but does not specify what user action on the recipient device constitutes selecting a response from a list to clear the alert. ¶25 col. 8:17-25
displaying a geographical map with georeferenced entities on the display of the sender...presenting a recipient symbol on the geographical map...based on at least the location data. The "Find My Device" application on the sender's device displays a map showing the location of the recipient device (Compl. p. 8). ¶25 col. 6:25-34

’251 Patent 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 from a second device, wherein the message relates to joining a group; The Accused Products are programmed to receive messages related to joining groups, for example through Google Contacts or Google Maps location sharing invitations (Compl. ¶36). ¶36 col. 13:59 - col. 14:2
participating in the group, wherein participating in the group includes sending first location information to a server and receiving second location information from the server... Users of the Accused Products allegedly participate in groups by communicating with a server to send their own location and receive location information of other group members via services like Google Maps (Compl. ¶37). ¶37 col. 14:3-9
presenting, via an interactive display of the first device, a...georeferenced map and...user-selectable symbols corresponding to...second devices, wherein the symbols are positioned on the...map at respective positions... The Accused Products present an interactive map via Google Maps with symbols representing other users positioned at their reported geographic locations (Compl. ¶38; Compl. p. 16). ¶38 col. 14:10-18
sending, from the first device to a second server, a request for a second georeferenced map different from the first...; receiving, from the second server, the second georeferenced map... The Accused Products are programmed to permit users to request and display additional maps, such as satellite maps or by moving the map screen, which involves interaction with a server (Compl. ¶39). ¶39 col. 14:25-29
  • Identified Points of Contention:
    • Scope Questions (’970 Patent): A central question may be whether the remote "Play Sound" command in the "Find My Device" application meets the claim limitation of a "forced message alert" which comprises a "voice or text message" and triggers the display of a "required response list." The complaint does not allege facts showing that the accused feature presents a list of responses from which a user must select to clear the alert.
    • Technical Questions (’251 Patent Family): The dispute may focus on whether the standard operation of consumer-grade applications like Google Maps constitutes the specific, structured method of forming an "ad hoc" network as claimed. For example, the claims recite a sequence of sending local information, receiving other users' information, and requesting map data. A key question will be whether the underlying architecture and data flows of the accused Google services map onto these specific claimed steps, which are described in the patent in the context of purpose-built emergency response systems.

V. Key Claim Terms for Construction

Term from the ’970 Patent: "forced message alert"

  • The Term: "forced message alert"
  • Context and Importance: This term is the lynchpin of the infringement allegation against the "Find My Device" feature. Its construction will determine whether a remote command that triggers an audible sound, without an accompanying text/voice message or a required response list, can fall within the scope of the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that a forced alert "is comprised of a text or voice message file and a forced alert software packet" (’970 Patent, col. 2:12-14). Plaintiff may argue that the command to "Play Sound" is a form of message and the underlying software instruction is the "packet."
    • Evidence for a Narrower Interpretation: The specification repeatedly and consistently links the alert to the presentation of a "manual response list on the display...that can only be cleared by manually selecting and transmitting a response from the list" (’970 Patent, col. 2:19-23; Abstract). The figures and detailed description of the process reinforce that the "required response" is a core component of the invention (’970 Patent, Fig. 4).

Term from the ’251 Patent: "ad hoc...network"

  • The Term: "ad hoc...network"
  • Context and Importance: The claims are directed to methods of providing "ad hoc" networks. The accused functionality relies on permanent, globally available infrastructure (Google servers). Practitioners may focus on whether creating a temporary group of contacts within a persistent service like Google Maps meets the patent's description of an "ad hoc" network, which is described as being for temporary or emergency situations.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the purpose as allowing users to "quickly establish a temporary ad hoc network especially in an emergency" (’251 Patent, col. 3:12-14). Plaintiff may argue any temporary grouping of users for a specific purpose, facilitated by the claimed server method, qualifies as "ad hoc."
    • Evidence for a Narrower Interpretation: The patent’s background emphasizes the need for networks that can be set up "easily and rapidly" for "Military, first responder, and other...emergency groups" without "pre-entry of data" like email addresses (’251 Patent, col. 2:7-16). Defendant may argue that this context limits the term to networks created for a specific, time-limited event, rather than persistent groups within a consumer social mapping application.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement by instructing customers to use the accused functionalities. This is supported by references to user guides, training videos, and other instructional materials for the Accused Products (Compl. ¶¶ 24, 33, 47, 60, 74).
  • Willful Infringement: The complaint alleges Defendants had knowledge of the patents "at least as of the date of this Complaint" and continued to infringe, supporting a theory of post-suit willfulness (Compl. ¶¶ 23, 32, 46, 59, 73). The complaint also pleads in the alternative that Defendants were "willfully blind to the infringing nature of others' actions," potentially to support a claim of pre-suit willfulness (Compl. ¶¶ 24, 32, 46, 59, 74).

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 ’970 Patent specification consistently describes as being paired with a mandatory "response list," be construed to cover a remote "Play Sound" command that does not present such a list?
  • A key question of technical application will be whether the routine operation of a ubiquitous, pre-installed consumer application like Google Maps on a general-purpose operating system constitutes the specific, server-mediated method of forming a temporary, password-protected "ad hoc" network as contemplated and claimed by the ’251 patent family.
  • A central legal question will concern the impact of post-grant proceedings: how will the amendment of asserted claim 10 and cancellation of other claims in the ’970 Patent during IPR and reexamination narrow the available infringement theories and influence the court’s construction of the surviving claim language?