AGIS Software Development LLC v. Xiaomi Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Xiaomi Corporation (Cayman Islands), Xiaomi H.K. Ltd. (Hong Kong), Xiaomi Communications Co., Ltd. (People's Republic of China), and Xiaomi Inc. (People's Republic of China)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:22-cv-00450, E.D. Tex., 11/18/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendants, directly or through intermediaries such as Best Buy and Walmart, sell the accused products within the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s smartphones infringe five U.S. patents related to mobile communication systems for group coordination, location sharing, and forced message alerts.
• Technical Context: The technology relates to software on mobile devices that provides situational awareness and coordinates communications, a field significant for military, first responder, and commercial location-sharing applications.
• 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 (1, 3-9) cancelled via an Inter Partes Review (IPR), while the asserted claim 10 survived an Ex Parte Reexamination. The remaining four patents each had their claims confirmed as valid and patentable in separate Ex Parte Reexaminations. These proceedings may inform the scope and validity arguments for the surviving asserted claims.

Case Timeline

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 describes a deficiency in standard digital messaging (e.g., SMS), where a sender has no way to confirm receipt of a message or to compel a response from the recipient (Compl. ¶16; ’970 Patent, col. 1:50-62).
• The Patented Solution: The invention is a method and system where a sender can transmit a "forced message alert" to a recipient's device. This alert triggers software on the recipient's device that automatically sends an acknowledgment of receipt back to the sender. The software then takes control of the recipient's device, displaying the message content and a required list of responses. The alert can only be cleared by the recipient manually selecting and transmitting a response from that list (’970 Patent, col. 2:7-24).
• Technical Importance: This technology provides senders with guaranteed delivery confirmation and a mechanism to compel responses, which is critical in time-sensitive coordination scenarios such as those involving first responders or military personnel (Compl. ¶16-17).

Key Claims at a Glance

• The complaint asserts independent claim 10 (as amended by reexamination) (Compl. ¶24).
• Essential elements of claim 10 include:
  • Receiving an electronically transmitted electronic message.
  • Identifying the message as a forced message alert comprising a voice or text message and a software packet.
  • Transmitting an automatic acknowledgment of receipt to the sender.
  • The sender's device taking control of the recipient's device to show the message content and a required response list.
  • Transmitting a selected response from the list to clear the alert.
  • Displaying a geographical map on the sender's device.
  • Obtaining location and status data associated with the recipient's device.
  • Presenting a recipient symbol on the geographical map corresponding to the recipient's location.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 the need for emergency groups, such as military or first responders from different organizations, to establish secure, temporary (ad hoc) digital and voice communication networks quickly and easily, without needing to pre-enter identifying data for all participants (e.g., names, phone numbers) (’251 Patent, col. 2:7-19).
• The Patented Solution: The invention provides a method where users can join a network simply by entering a server's IP address, an ad hoc event name, and a password. Once connected, a server facilitates the exchange of location, status, and other data among all network participants automatically, enabling rapid coordination (’251 Patent, Abstract; col. 4:46-58).
• Technical Importance: This approach significantly simplifies and accelerates the creation of secure, interoperable communication networks for coordinating multiple, potentially unknown groups during emergency situations (Compl. ¶17; ’251 Patent, col. 2:35-45).

Key Claims at a Glance

• The complaint asserts independent claim 24 (Compl. ¶33).
• Essential elements of claim 24 include a system comprising a first device programmed to perform operations for:
  • Receiving a message relating to joining a group.
  • Participating in the group by sending its location to a server and receiving location information of 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 and receiving a second, different georeferenced map from a server.
  • Presenting the second map and the symbols.
  • Identifying user interaction with the symbols and an action, and based thereon, using an Internet Protocol to send data to the other devices.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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, from the same family as the ’251 patent, addresses the need for emergency responders to rapidly form temporary, secure communication networks for sharing location and status data without pre-registering user information (’838 Patent, col. 2:7-19). The solution involves users joining a network via a common server IP, event name, and password, which then enables automated data exchange (’838 Patent, Abstract).
• Asserted Claims: At least independent claim 54 (Compl. ¶47).
• Accused Features: The complaint alleges that functionalities within the Accused Products, such as using the pre-installed Google Maps App to share locations, view other users on a map, and establish groups, infringe this patent (Compl. ¶50-52).

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: This patent continues the theme of its parent patents, describing a system for creating ad hoc, password-protected networks for emergency coordination (’829 Patent, col. 2:7-19). The claims focus on the server-side operations of managing group membership, relaying location requests and data between devices, and providing map data to enable shared situational awareness on a map display (’829 Patent, Abstract).
• Asserted Claims: At least independent claim 34 (Compl. ¶60).
• Accused Features: The complaint alleges that the Accused Products, in conjunction with servers for services like Google Maps, infringe by allowing users to form groups, request and share location information that is then displayed on a map, and remotely control other devices (Compl. ¶63-65).

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 in the same family, details a system from the perspective of a user device joining an ad hoc network. It describes the device sending its location to a server, receiving location data for other group members, requesting and displaying maps, and presenting selectable symbols for other users on the map to enable interaction (’123 Patent, Abstract).
• Asserted Claims: At least independent claim 23 (Compl. ¶74).
• Accused Features: The infringement allegations target the use of Google Maps on the Accused Products to join groups, share and display user locations as interactive symbols on a map, and interact with those symbols to communicate with other users (Compl. ¶78-80).

III. The Accused Instrumentality

Product Identification

• The Accused Products are a range of Xiaomi-branded mobile devices, including the Xiaomi 12, Redmi Note series, and Mix Fold 2 smartphones (Compl. ¶19).

Functionality and Market Context

• The complaint alleges these devices are pre-installed with and utilize applications and services such as Google's "Find My Device" (formerly Android Device Manager), Google Maps, and Messages (Compl. ¶26, ¶36).
• The accused functionality for the ’970 Patent centers on the Find My Device service, which allows a user to remotely locate a lost device and cause it to play a sound (Compl. ¶26). The complaint provides a screenshot of the "Find My Device" interface showing a map with a device's location and options to "Play Sound," "Secure Device," and "Erase Device" (Compl. p. 9).
• For the '251, '838, '829 and '123 Patents, the accused functionality involves using Google Maps integrated with other services like Google Contacts to create user groups, share real-time locations with those groups, and view the locations of group members as symbols on an interactive map (Compl. ¶36-38). The complaint includes a screenshot illustrating how users can be added to a group to share location information via Google Maps (Compl. p. 17).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

’251 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question for the '251, '838, '829, and '123 Patents may be whether creating a contact group and sharing locations via a consumer application like Google Maps constitutes the claimed "ad hoc and password protected... network" described in the patents' context of coordinating first responders in emergency situations. Similarly, for the '970 patent, a question is whether the "Find My Device" feature, designed to locate a lost phone, qualifies as a "forced message alert" system that compels a manual response from a predefined list to be cleared.
• Technical Questions: For the '970 patent, the analysis may focus on whether the accused "Find My Device" functionality includes a "required response list" that must be used to "clear" the alert, as recited in claim 10. The complaint does not specify what functionality in the accused service corresponds to this claimed element. For the '251 patent family, a question may arise as to whether the standard security of a Google account constitutes the "password protected" network entry as contemplated by the patents.

V. Key Claim Terms for Construction

• Term: "forced message alert" (’970 Patent, claim 10)

  • Context and Importance: The definition of this term is fundamental to the infringement allegation against the "Find My Device" feature. The dispute will likely center on whether a remote command to play a sound or show a location meets the specific operational and functional requirements of a "forced message alert" as described in the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's summary states the invention provides the ability to transmit a "forced voice alert, wherein said forced voice alert is comprised of a text or voice message file and a forced alert software packet" (’970 Patent, col. 2:10-14). This could suggest the term encompasses any message bundled with a software trigger.
    • Evidence for a Narrower Interpretation: Claim 10 itself recites that the alert "triggers the activation of the forced message alert software application program" which then takes "control of the recipient PDA/cell phone" and requires a "selected required response from the response list" to be cleared (’970 Patent, col. 13:3-15). This language suggests a specific, multi-step protocol that may be narrower than the accused functionality.

• Term: "ad hoc... network" (’251 Patent, claim 24 and related patents)

  • Context and Importance: The infringement theory relies on construing a Google Maps location-sharing group as an "ad hoc... network." Practitioners may focus on this term because the patent's specification repeatedly frames the invention in the context of "Military, first responder, and other public and private emergency groups" setting up "private networks" that may be "temporary" (’251 Patent, col. 2:7-12).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims do not explicitly limit the network's purpose to emergencies. The summary describes establishing an "ad hoc network of devices so that the devices can either broadcast to a group or selectively transmit to each of the other" by using a "mutually agreed to network name and password" (’251 Patent, col. 2:60-66), which could be argued to read on general-purpose group formation.
    • Evidence for a Narrower Interpretation: The Background section heavily emphasizes the specific problem of coordinating "different, not pre-known, organizations responding to a disaster" (’251 Patent, col. 2:42-44). This context could support an interpretation that the claimed network is distinct from a conventional social or contact-based group in a consumer application.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement to infringe for all five patents. The basis for this allegation is that Defendants provide instructions to customers through "training videos, demonstrations, brochures, installations and/or user guides" that allegedly encourage use of the infringing functionalities, such as Find My Device and Google Maps location sharing (Compl. ¶26, ¶35, ¶49, ¶62, ¶76).
• Willful Infringement: The complaint alleges that Defendants had knowledge of the patents "at least as of the date of this Complaint" (e.g., Compl. ¶34, ¶48). It also pleads, in the alternative, that Defendants "believed there was a high probability that others would infringe" but "remained willfully blind to the infringing nature of others' actions," which suggests a basis for pre-suit willfulness (e.g., Compl. ¶34, ¶48).

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

This case appears to present two central questions for the court that bridge both claim construction and infringement analysis:

• A core issue will be one of contextual scope: can claim terms rooted in specialized communication systems for emergency response and compulsory alerts, such as "ad hoc... network" and "forced message alert," be construed to cover the functionality of ubiquitous, general-purpose consumer applications like Google Maps and Find My Device?
• A key evidentiary question will be one of functional correspondence: does the accused functionality of the Xiaomi devices, which relies on standard Google services, perform the specific, multi-step methods required by the asserted claims, or is there a fundamental mismatch in technical operation (e.g., the absence of a "required response list" in Find My Device to clear an alert as required by claim 10 of the ’970 Patent)?