DCT

2:22-cv-00448

AGIS Software Development LLC v. Sony Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00448, E.D. Tex., 11/18/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction, have committed acts of infringement, and have regular and established places of business in the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s Xperia smartphones and tablets infringe five patents related to forced message alerts, remote communication, and the creation of ad hoc, password-protected digital networks.
  • Technical Context: The technology concerns systems for real-time situational awareness, enabling mobile device users to form secure groups, share location data on maps, and ensure message receipt and response.
  • Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant proceedings at the U.S. Patent and Trademark Office. U.S. Patent No. 8,213,970 survived both an Inter Partes Review, which cancelled some claims, and an Ex Parte Reexamination, which confirmed or amended the remaining asserted claims. The other four patents-in-suit each had their claims confirmed as valid and patentable in separate Ex Parte Reexamination proceedings. This history suggests the patents' validity has previously withstood USPTO scrutiny, which may influence subsequent invalidity arguments.

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
2021-06-08 '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
2021-09-24 '123 Patent Ex Parte Reexamination Certificate Issued
2021-12-09 '970 Patent Ex Parte Reexamination Certificate Issued
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's background section describes a deficiency in standard digital messaging (like SMS), where a sender cannot be certain if a message was received or compel a response from the recipient (ʼ970 Patent, col. 1:50-64).
  • The Patented Solution: The invention is a system using "forced message alert software" on mobile devices (ʼ970 Patent, col. 1:19-24). When a sender transmits a "forced message alert," the recipient's device is compelled to automatically transmit an acknowledgment of receipt back to the sender. The alert then takes control of the recipient's display, showing the message and a list of required manual responses. The alert cannot be cleared until the user selects and transmits a response from this list (ʼ970 Patent, Abstract; Fig. 4).
  • Technical Importance: This technology provided a method for guaranteed message delivery confirmation and mandatory response, addressing a critical need for coordination and accountability in time-sensitive communications (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts at least independent claim 10 (Compl. ¶22).
  • Essential elements of Claim 10 (as amended):
    • A method of receiving, acknowledging, and responding to a forced message alert from a sender PDA/cell phone to a recipient PDA/cell phone.
    • Receiving an electronic message and identifying it as a forced message alert comprising a voice/text message and a software packet.
    • The packet triggers the activation of a forced message alert software application on the recipient device.
    • Transmitting an automatic acknowledgment of receipt to the sender.
    • The sender's device is triggered to take control of the recipient's device and show the message content and a required response list.
    • Transmitting a selected required response from the list to clear the message from the recipient's display.
    • Displaying the received response on the sender's device.
    • Providing a list of recipients that have acknowledged receipt and their responses.
    • Displaying a geographical map on the sender's device, obtaining location data from the recipient, and presenting a symbol for the recipient 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 "set up ad hoc digital and voice networks easily and rapidly" without the typical requirement of pre-entering data like names, phone numbers, or email addresses for all participants ('251 Patent, col. 2:8-18). This is particularly difficult when coordinating different, "not pre-known, organizations responding to a disaster" ('251 Patent, col. 2:42-44).
  • The Patented Solution: The invention describes a method where users can quickly join a temporary, secure network using only a server IP address, an "ad hoc event name," and a password ('251 Patent, Abstract). Once connected, a central server manages communications, relaying location, status, and other data between all authenticated participants, thereby creating a common operating picture without prior configuration ('251 Patent, col. 4:1-14; Fig. 5).
  • Technical Importance: This technology simplified the creation of secure, interoperable communication networks for on-the-fly coordination among disparate groups, a critical capability in emergency response scenarios (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts at least independent claim 24 (Compl. ¶31).
  • Essential elements of Claim 24:
    • A system with 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, which includes sending the first device's location to a server and receiving location information for other devices in the group from the server.
    • Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the locations of the other devices.
    • Sending a request for a second, different georeferenced map and receiving it from the server.
    • Presenting the second map with the device symbols.
    • Identifying user interaction with the map to select a symbol and specify an action, and using an Internet Protocol to send data to the corresponding 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: Similar to the ’251 Patent, this patent addresses the need for rapid formation of temporary, secure communication networks for groups like first responders. The technology allows users to join a network using a common event name and password, enabling a server to coordinate the exchange of location and status data among all participants.
  • Asserted Claims: At least independent claim 54 is asserted (Compl. ¶45).
  • Accused Features: The complaint alleges that Sony devices infringe by using pre-installed applications like Google Maps to allow users to establish groups, share locations, and communicate via servers (Compl. ¶¶ 48-49).

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

  • Technology Synopsis: This patent is also directed to methods for creating ad hoc, password-protected networks for digital and voice communications. The system facilitates coordination among emergency response units by allowing them to join a temporary network and share location data on a common map display, managed by one or more servers.
  • Asserted Claims: At least independent claim 34 is asserted (Compl. ¶58).
  • Accused Features: Infringement allegations target the ability of Sony devices to use Google Maps and related services to allow users to form groups, request and view the locations of other users on a map, and communicate through servers (Compl. ¶¶ 61-62).

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

  • Technology Synopsis: Continuing the theme of the patent family, this invention covers a system for creating temporary, secure communication groups. It focuses on the interaction between devices and servers to join a group, exchange location information, and present that data on an interactive map with selectable symbols for further communication.
  • Asserted Claims: At least independent claim 23 is asserted (Compl. ¶72).
  • Accused Features: The complaint accuses Sony devices of infringement through their use of pre-installed Google Maps and Messages apps, which enable users to form groups, share locations on a map, and communicate with other users by interacting with symbols on the display (Compl. ¶¶ 75-76).

III. The Accused Instrumentality

Product Identification

  • Sony mobile devices including the Xperia Z4 Tablet, Xperia 1 IV, Xperia PRO-I, Xperia 5 III, and numerous other Xperia-branded smartphones and tablets (collectively, the "Accused Products") (Compl. ¶17).

Functionality and Market Context

  • The complaint alleges the Accused Products include functionalities that allow users to form or join groups, share and view their own and others' locations, display symbols for users on a map, and communicate via text, voice, and multimedia (Compl. ¶18). The infringement allegations center on features that are either part of the Android operating system or are pre-installed applications on the devices, such as Google's "Find My Device" service and the Google Maps application (Compl. ¶¶ 24, 34). For example, a screenshot in the complaint depicts the "Find My Device" service locating a "Sony Xperia 5 III" on a map (Compl. p. 8). Another visual shows the Google Maps interface for sharing a user's location with selected contacts (Compl. p. 18). Plaintiff alleges these features are used to improve user experience and enhance Defendants' market position (Compl. ¶18).

IV. Analysis of Infringement Allegations

’970 Patent 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... The Accused Products receive messages via the "Find My Device" service, which acts as the forced message alert. ¶25 col. 8:17-25
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone... The Accused Products, upon receiving the alert, automatically acknowledge receipt to the sender's device. ¶25 col. 8:26-34
which triggers the forced message alert software application program to take control of the recipient PDA/cell phone and shows the content of the text message and a required response list on the display... The "Find My Device" service takes control to display location information and provides options like "Play Sound," "Secure Device," or "Erase Device," which allegedly function as the required response list. ¶25 col. 8:35-48
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 user selects an option (e.g., securing the device), which constitutes the selected response that clears the alert. ¶25 col. 8:49-59
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 PDA/cellphone... The "Find My Device" service on a sender's device displays a map showing the location of the recipient device. ¶25 col. 16:2-4
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 sender's device displays an icon on the map representing the recipient device at its current location. The complaint includes a screenshot showing this functionality (Compl. p. 8). ¶25 col. 16:5-8
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "forced message alert," as defined in the patent, can be construed to cover a consumer-facing service like "Find My Device." The patent describes a system that seizes control of a device and requires a specific user response from a list to be cleared, a functionality that may differ from locating a lost phone.
    • Technical Questions: The analysis will likely focus on whether the "Find My Device" service actually performs the specific steps of (1) transmitting an "automatic acknowledgment of receipt" separate from any location data response, and (2) presenting a "required response list" that a user must select from to clear the alert, as recited in claim 10.

’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 sent by a second device, wherein the message relates to joining a group... Accused Products receive messages (e.g., via Google Contacts or Maps) inviting them to join location-sharing groups. ¶¶ 35-36 col. 15:58-62
based on receipt of the message... participating in the group, wherein participating in the group includes sending first location information to a first server and receiving second location information from the first server... Upon joining a group, the device sends its location to Google's servers and receives the locations of other group members from those servers. ¶37 col. 16:1-6
presenting, via an interactive display of the first device, a... georeferenced map and... user-selectable symbols corresponding to... the second devices... The Accused Products display a Google Map with icons representing the locations of other users in the sharing group. ¶38 col. 16:7-13
identifying user interaction with the interactive display selecting one or more of the user-selectable symbols... and user interaction with the display specifying an action and, based thereon, using an Internet Protocol to send data to the one or more second devices via the server... A user can tap on another user's symbol on the map to initiate an action, such as sending a message, which transmits data to the other device via Google's servers. ¶39 col. 16:26-35
  • Identified Points of Contention:
    • Scope Questions: A key dispute may be whether using a persistent, global service like Google Maps to share location with a pre-defined set of contacts constitutes the formation of a temporary, "ad hoc" network as contemplated by the patent, which is described in the context of emergency response among potentially "not pre-known" organizations.
    • Technical Questions: The analysis may question whether an invitation to share location in Google Maps is technically equivalent to "receiving a message... related to joining a group," or if it is a distinct function of enabling a permission setting within an existing application framework.

V. Key Claim Terms for Construction

  • For the ’970 Patent:

    • The Term: "forced message alert"
    • Context and Importance: This term is the central concept of the '970 patent. The Plaintiff's infringement theory rests on the allegation that services like "Find My Device" are a "forced message alert." The definition of this term will determine whether there is a fundamental match or mismatch between the claimed invention and the accused functionality.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states the object is to "compel an automatic acknowledgement of receipt" and "require a manual response" ('970 Patent, col. 2:50-54). A party could argue this language describes the purpose, and any technical implementation achieving that purpose, such as a high-priority notification that requires user interaction, falls within its scope.
      • Evidence for a Narrower Interpretation: The claim language and specification describe a specific sequence: an alert packet triggers software that "takes control" of the device, shows a message, and presents a "required response list" that "can only be cleared by manually selecting and transmitting a response" ('970 Patent, Abstract; col. 8:35-54). This suggests a specific, multi-step process that may be narrower than a general high-priority notification.

  • For the ’251 Patent and its family:

    • The Term: "joining a group"
    • Context and Importance: Practitioners may focus on this term because the infringement theory equates using Google's location-sharing features with the patent's method of forming an "ad hoc" network. The patent was developed for emergency situations where participants may not know each other beforehand ('251 Patent, col. 2:42-44), whereas the accused functionality is alleged to occur within pre-existing applications and contact lists (Compl. ¶36).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes users entering an "ad hoc event name and password" to connect ('251 Patent, col. 4:51-55). A party might argue that creating a shared group in an app like Google Contacts or Google Maps and giving it a name serves the same function of defining a collective for communication.
      • Evidence for a Narrower Interpretation: The specification emphasizes the need to eliminate "pre-entry of data" and identifying others by name or phone number to allow for rapid coordination among "not pre-known, organizations" ('251 Patent, col. 2:12-16, 42-44). This context suggests that "joining a group" refers to the dynamic formation of a temporary network among unfamiliar entities, not sharing location with existing, known contacts in a consumer application.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement by instructing users on how to use the accused functionalities. It cites specific Sony help guide URLs for Xperia devices that allegedly provide instructions for using Google Maps and location services, thereby encouraging users to perform the steps of the claimed methods (Compl. ¶¶ 24, 33, 47, 60, 74).
  • Willful Infringement: The complaint alleges that Defendants had knowledge of the patents "at least as of the date of this Complaint" (e.g., Compl. ¶¶ 23, 32), which forms a basis for post-suit willfulness. It further alleges that Defendants "believed there was a high probability that others would infringe" but "remained willfully blind," potentially supporting a claim for pre-suit willful infringement (e.g., Compl. ¶¶ 24, 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 patent as a system that seizes device control and mandates a response from a pre-defined list, be construed to cover the functions of consumer-level applications like Google's "Find My Device"?
  • A key technical question will be one of operational equivalence: Does using persistent, cloud-based services like Google Maps to share location data among pre-existing contacts constitute the creation of a temporary "ad hoc network" as claimed in the patents, which were framed to solve the problem of coordinating unknown groups in emergency situations?
  • A central evidentiary question will be whether the accused Sony devices, by leveraging standard Android and Google functionalities, can be shown to perform the specific, multi-step sequences required by the claims, such as the automatic acknowledgment and mandatory response list of the '970 patent.