DCT

2:22-cv-00449

AGIS Software Development LLC v. TCL Technology Group Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-00449, E.D. Tex., 11/18/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are subject to personal jurisdiction, have committed acts of patent infringement, and have regular and established places of business in the district. The complaint further alleges that Defendants have previously admitted or not contested venue in the Eastern District of Texas in other patent cases.
  • Core Dispute: Plaintiff alleges that Defendants’ TCL-branded mobile devices, including smartphones and tablets, infringe five patents related to interactive remote communications, forced message alerts, and the creation of ad hoc, password-protected digital networks.
  • Technical Context: The technology at issue involves systems for location sharing, group communication, and remote device interaction on mobile devices, with applications aimed at improving coordination and situational awareness.
  • Key Procedural History: 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 an Inter Partes Review that cancelled several original claims and an Ex Parte Reexamination that confirmed the patentability of amended and other claims, including the asserted claim 10. The other four patents-in-suit each had their validity and patentability confirmed through Ex Parte Reexamination 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 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 Reexamination Certificate Issues for ’838 Patent
2021-06-08 Reexamination Certificate Issues for ’251 Patent
2021-08-16 Reexamination Certificate Issues for ’829 Patent
2021-09-01 Inter Partes Review Certificate Issues for ’970 Patent
2021-09-24 Reexamination Certificate Issues for ’123 Patent
2021-12-09 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"

  • Patent Identification: 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 describes a deficiency in conventional messaging systems (like SMS and 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. 1:52-62).
  • The Patented Solution: The invention proposes a method using a "forced message alert software application program" on mobile devices. A sender transmits a message that forces the recipient's device to automatically transmit an acknowledgment of receipt. The software then takes control of the recipient’s device to display the message alongside a "required response list," which can only be cleared when the user selects and transmits a response, thus ensuring both receipt and reply (’970 Patent, Abstract; col. 2:7-34).
  • Technical Importance: This technology was designed to create a closed-loop communication system for contexts requiring high reliability and accountability, such as coordinating first responders or military personnel (Compl. ¶16).

Key Claims at a Glance

  • The complaint asserts at least independent claim 10 (as amended by ex parte reexamination) (Compl. ¶24).
  • Essential elements of independent claim 10 include:
    • Receiving an electronic message identified as a "forced message alert" containing a message and a software packet.
    • The packet triggers activation of a "forced message alert software application program" on the recipient device.
    • Transmitting an automatic acknowledgment of receipt to the sender device.
    • Transmitting a "selected required response from the response list" to clear the alert from the recipient's display.
    • On the sender's device: displaying the response received, providing a list of recipients that have acknowledged, and displaying a geographical map with a symbol showing the recipient's location based on obtained location data.

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

  • Patent Identification: 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 responders and other groups to establish temporary, private digital and voice networks quickly and easily, without needing to pre-configure each device with the names, phone numbers, or email addresses of all other participants (’251 Patent, col. 2:7-18).
  • The Patented Solution: The invention is a method where users can join a temporary, secure network by entering three pieces of information: a server's IP address, an "ad hoc event name," and a password. A central server then acts as a forwarder, enabling all authenticated members of the ad hoc network to exchange location, status, and communication data, thereby allowing them to see each other's positions on a map and coordinate activities (’251 Patent, Abstract; col. 4:1-14).
  • Technical Importance: This system simplifies the rapid deployment of secure, interoperable communication groups, a critical capability for coordinating different organizations during emergency situations (Compl. ¶16).

Key Claims at a Glance

  • The complaint asserts at least independent claim 24 (Compl. ¶33).
  • Essential elements of independent 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 its location to a server and receiving location information for other devices from the server.
    • Sending a request for and receiving georeferenced map data from a second server.
    • Presenting a georeferenced map with user-selectable symbols representing the other devices.
    • Identifying user interaction selecting a symbol and, based thereon, using an Internet Protocol to send data to the corresponding device.

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

  • Patent Identification: U.S. Patent No. 9,467,838, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued October 11, 2016 (Compl. ¶12).
  • Technology Synopsis: Continuing the technology of the '251 patent, the ’838 patent describes a system for establishing ad hoc, password-protected networks. Users join a group via a server using shared credentials, which enables the server to facilitate the exchange of location, status, and communication data among group members on a map-based interface (’838 Patent, Abstract).
  • Asserted Claims: At least independent claim 54 (Compl. ¶47).
  • Accused Features: The complaint accuses TCL devices pre-installed with Google Maps and Messages, which allegedly allow users to establish groups, share and view locations on a map, and exchange messages via interaction with servers (Compl. ¶¶50-51).

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

  • Patent Identification: U.S. Patent No. 9,749,829, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued August 29, 2017 (Compl. ¶13).
  • Technology Synopsis: The ’829 patent claims a system where server devices manage group communications by forwarding requests to join, processing location requests between devices, and providing map data. This enables a second device to display the location of a first device as a symbol on a map and remotely control it (’829 Patent, Abstract).
  • Asserted Claims: At least independent claim 34 (Compl. ¶60).
  • Accused Features: The complaint targets the functionality of TCL devices using Google's services, where servers allegedly manage group formation, relay location information, and provide map data, allowing users to track each other and communicate (Compl. ¶¶63-64).

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

  • Patent Identification: U.S. Patent No. 9,820,123, "Method to Provide Ad Hoc and Password Protected Digital and Voice Networks," issued November 14, 2017 (Compl. ¶14).
  • Technology Synopsis: The ’123 patent describes a system where a device can join a group, send its location to a server, and receive map data and other members' locations for display. The invention specifies a method for identifying user interaction with the map, such as selecting a symbol by tapping near its coordinates, to initiate an action with the corresponding device (’123 Patent, Abstract).
  • Asserted Claims: At least independent claim 23 (Compl. ¶74).
  • Accused Features: The complaint alleges that TCL devices with Google Maps infringe by allowing users to form groups, view other members as selectable symbols on an interactive map, and interact with those symbols to initiate communications (Compl. ¶¶77-78).

III. The Accused Instrumentality

Product Identification

  • The complaint names a broad range of TCL-branded smartphones and tablets as the "Accused Products" (Compl. ¶19).

Functionality and Market Context

  • The core accused functionality involves software applications on the devices, specifically the "Find My Device" service (formerly Android Device Manager) and pre-installed Google applications like Google Maps and Messages (Compl. ¶¶26, 36).
  • The complaint alleges these applications enable users to form groups, share and view device locations on a map, and communicate through various means (Compl. ¶20). For the '970 patent, the accused functionality is the ability to remotely locate, ring, or secure a lost or stolen device (Compl. ¶27). A screenshot in the complaint shows the "Find My Device" interface displaying a phone's location on a map with options to "Play Sound" or "Setup Secure & Erase" (Compl. p. 9). For the other patents, the accused functionality is the location-sharing feature within Google Maps, which allows users to form groups and view each other's real-time locations as icons on a map (Compl. ¶¶36, 40).
  • Plaintiff alleges that Defendants are "leading manufacturer[s] and seller[s] of smartphones in the world" and that the accused functionalities are included to "improve user experiences and to improve Defendants' position in the market" (Compl. ¶¶3, 20).

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... A user of the Find My Device service sends a command (e.g., "Play Sound") to a lost Accused Product, which receives it as a forced alert. ¶27 col. 12:58-65
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone... The Accused Product automatically acknowledges receipt of the command to the Find My Device server. ¶27 col. 12:35-42
transmitting a selected required response from the response list in order to allow the message required response list to be cleared... The complaint alleges this step is performed but does not describe a "response list" from which a user on the recipient device makes a selection. ¶27 col. 12:43-57
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 on a sender device or web interface obtains the location of the lost Accused Product and displays it as a symbol on a map. A provided screenshot illustrates this feature. ¶27; Compl. p. 9 col. 12:28-34

’251 Patent Infringement Allegations

Claim Element (from Independent Claim 24) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a message sent by a second device, wherein the message relates to joining a group... An Accused Product receives a message, such as a location-sharing invitation via Google Maps, which relates to forming or joining a group to share location information. ¶38 col. 18:61-64
based on receipt of the message, sending first location information to a first server and receiving second location information from the first server... The Accused Product communicates with Google servers, sending its own location and receiving the locations of other users in the location-sharing group. ¶39 col. 18:61-67
presenting, via an interactive display of the first device, a georeferenced map and one or more user-selectable symbols corresponding to one or more of the second devices... The Google Maps application on an Accused Product displays a map showing icons representing the real-time locations of other users in the group. A complaint visual depicts this functionality. ¶40; Compl. p. 18 col. 19:1-10
identifying user interaction with the interactive display selecting a particular user-selectable symbol... and... using an Internet Protocol to send data to the particular second device... A user interacts with the map display by selecting a symbol corresponding to another user, which permits data (e.g., a message) to be sent to that user's device. ¶41 col. 19:11-32
  • Identified Points of Contention:
    • Technical Questions: For the '970 patent, a primary question is whether the accused "Find My Device" functionality includes a "required response list" from which a user of the recipient device must select a response to clear the alert, as recited in claim 10. The complaint's theory appears to equate performing the remote action (e.g., ringing) with fulfilling this step, which may present a mismatch with the claim's specific language.
    • Scope Questions: For the '251 patent and its family, a key dispute may arise over the term "ad hoc... network." The patents' specifications describe creating temporary, password-protected networks for specific events, often in an emergency context. The infringement analysis will question whether the general consumer functionality of sharing one's location with a contact in Google Maps falls within the scope of creating such a network.

V. Key Claim Terms for Construction

  • The Term: "forced message alert" (’970 Patent)

  • Context and Importance: This term is the central concept of the '970 patent. Its construction will determine whether a one-way remote command from a device owner to their own device (as in Find My Device) can infringe a claim describing a two-way communication protocol between a distinct sender and recipient that compels a manual response.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's summary describes the invention's object as a method where "a sender can compel an automatic acknowledgement of receipt from each recipient's PC or PDA/cell phone and require a manual response" (’970 Patent, col. 2:50-54). This focus on compelling acknowledgment and response could support a broader definition.
    • Evidence for a Narrower Interpretation: Claim 10 recites 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" (’970 Patent, col. 12:43-48, Reexam. Cert.). This language suggests a specific user interface element on the recipient device that may narrow the term's scope to systems that include such a list.

  • The Term: "joining a group" (’251 Patent and family)

  • Context and Importance: The infringement theory against Google Maps hinges on construing temporary location sharing as "joining a group." Practitioners may focus on this term because the patent specification repeatedly ties the concept to entering an "ad hoc event name and password," suggesting a more formal and secure process than the accused functionality.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: Claim 24 of the '251 patent recites "receiving a message sent by a second device, wherein the message relates to joining a group" (’251 Patent, col. 18:61-63). This could be argued to encompass any message that initiates a mutual data-sharing arrangement between devices.
    • Evidence for a Narrower Interpretation: The patent's summary of the invention states that "all intended participants that enter the agreed ad hoc network name and password are both digitally and voice interconnected" (’251 Patent, col. 2:15-18). This explicit linkage of group formation with password authentication could support a narrower construction limited to systems with such security features.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement to infringe for all five patents. The basis for this allegation is that Defendants provide user manuals, training videos, demonstrations, and other instructional materials that allegedly guide customers to use the accused functionalities (e.g., Find My Device, Google Maps location sharing) in an infringing manner (Compl. ¶¶26, 35, 49, 62, 76).
  • Willful Infringement: Willfulness is alleged for all patents based on knowledge "at least as of the date of this Complaint" (Compl. ¶¶25, 34, 48, 61, 75). The complaint also pleads that Defendants were willfully blind to the infringing nature of their actions, which may be an attempt to establish pre-suit knowledge.

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

  • A core issue will be one of functional equivalence: Does the accused "Find My Device" feature, which remotely triggers an action on a user's own device, perform the specific, multi-step method of a "forced message alert" as claimed in the '970 patent, which requires an interactive, manual response from a predefined list on the recipient device to clear the alert?
  • A central question of definitional scope will be whether the term "ad hoc... network," described in the patents with an emphasis on password-protection for temporary, event-based coordination, can be construed to cover the common consumer practice of sharing one's real-time location with contacts through a general-purpose mapping application.
  • The case will also present an evidentiary challenge concerning the operation of the accused system, particularly how TCL devices and backend Google servers actually implement the accused group formation, data exchange, and remote control functionalities, and whether that implementation maps to the specific server-client interactions recited in the asserted claims.