DCT

2:24-cv-00599

AGIS Software Development LLC v. GPSWOX Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00599, E.D. Tex., 07/29/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants purposefully place infringing products into the stream of commerce through channels like the Google Play Store with the expectation they will be used by consumers in the Eastern District of Texas, and that Defendants have regular and established places of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s GPS tracking and fleet management products infringe five patents related to interactive remote communications, forced alerts, and the creation of ad hoc, password-protected digital and voice networks.
  • Technical Context: The technology at issue involves GPS-based situational awareness systems on mobile devices, enabling users to form groups, view member locations on a map, and communicate, a domain with significant applications in personal safety, logistics, and tactical coordination.
  • Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant review at the USPTO. One patent, U.S. Patent No. 8,213,970, had several claims cancelled in an Inter Partes Review, while its remaining asserted claims were confirmed as patentable in a subsequent Ex Parte Reexamination. The other four patents-in-suit were each the subject of Ex Parte Reexaminations that confirmed the patentability of all their respective claims. This history suggests the asserted claims have withstood validity challenges before the patent office.

Case Timeline

Date Event
2004-09-21 Earliest Priority Date for all Patents-in-Suit
2012-07-03 U.S. Patent No. 8213970 Issues
2016-09-13 U.S. Patent No. 9445251 Issues
2016-10-11 U.S. Patent No. 9467838 Issues
2017-08-29 U.S. Patent No. 9749829 Issues
2017-11-14 U.S. Patent No. 9820123 Issues
2021-05-27 '838 Patent Ex Parte Reexamination Certificate Issues
2021-06-08 '251 Patent Ex Parte Reexamination Certificate Issues
2021-08-16 '829 Patent Ex Parte Reexamination Certificate Issues
2021-09-01 '970 Patent Inter Partes Review Certificate Issues
2021-09-24 '123 Patent Ex Parte Reexamination Certificate Issues
2021-12-09 '970 Patent Ex Parte Reexamination Certificate Issues
2024-07-29 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. (Compl. ¶8).

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty in conventional digital messaging of ensuring a recipient has actually received a message and compelling a timely response. (Compl. ¶14; ’970 Patent, col. 1:55-60).
  • The Patented Solution: The invention proposes a "forced message alert" system where a sender's message automatically triggers an acknowledgment from the recipient's device. The alert then takes control of the recipient's display, showing the message and a required response list that can only be cleared by the recipient selecting and transmitting a response from that list. (’970 Patent, Abstract; col. 2:7-24).
  • Technical Importance: This technology aims to provide message delivery certainty and mandate a response, which can be critical for coordinating teams in time-sensitive environments like first responder or military operations. (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent claim 10, which was amended during an Ex Parte Reexamination. (Compl. ¶¶8, 24).
  • Essential elements of Claim 10 include:
    • A method of receiving, acknowledging, and responding to a forced message alert.
    • Receiving an electronic message identified as a forced message alert, which comprises a message and a software packet.
    • Automatically transmitting an acknowledgment of receipt back to the sender.
    • Having the alert software take control of the recipient's device to display the message and a required response list.
    • Transmitting a selected required response from the list to clear the alert from the display.
    • Displaying the response on the sender's device and providing a list of which recipients have acknowledged and responded.
    • Displaying a geographical map on the sender's device, obtaining location data for the recipient, and presenting a symbol for the recipient on the map at the correct location.

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. (Compl. ¶9).

The Invention Explained

  • Problem Addressed: The patent identifies a need for emergency response, military, and other groups to establish temporary, secure ("ad hoc") communication networks quickly and easily, without needing to pre-load contact information like names or phone numbers for all participants. (’251 Patent, col. 2:7-19).
  • The Patented Solution: The invention describes a method where users join a network on their mobile devices by entering a server IP address, a network name, and a password. A central server then authenticates users and manages the exchange of location and status data, enabling all group members to see each other on a map and communicate securely without prior setup. (’251 Patent, Abstract; col. 4:46-54).
  • Technical Importance: The solution facilitates rapid, secure, and interoperable group communications for coordinating different organizations at the scene of an emergency or disaster. (’251 Patent, col. 2:7-14).

Key Claims at a Glance

  • The complaint asserts independent claim 24. (Compl. ¶34).
  • Essential elements of Claim 24 include:
    • A system with a first device programmed to receive a message from a second device relating to joining a group.
    • Based on receipt, participating in the group, which includes sending its own location information to a server and receiving location information for other group devices from the server.
    • Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the other group devices at their respective locations.
    • Sending a request to the server for a different georeferenced map and receiving that map data.
    • Presenting the new map with the group member symbols.
    • Identifying user interaction with a symbol and, based on that interaction, using an Internet Protocol to send data to the corresponding device via the server, without the first device needing to know the IP address of the second 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. ¶10).

Technology Synopsis

Belonging to the same family as the ’251 Patent, this patent addresses the problem of creating temporary, secure communication networks for groups like first responders. The patented solution involves a server-based system where users join a network with a name and password to exchange location and status data for display on a map. (Compl. ¶¶14-15).

Asserted Claims

The complaint asserts at least independent claim 54. (Compl. ¶48).

Accused Features

The complaint alleges that the Accused Products' features for user group formation, location sharing on a map, and server-based communication infringe this patent. (Compl. ¶¶52-53).

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. ¶11).

Technology Synopsis

This patent, also in the same family, focuses on a system where a first device joins a group and then communicates with a server to send its location and receive the locations of other group members. The system presents these members as selectable symbols on a georeferenced map and allows for interaction with those symbols to trigger further actions. (Compl. ¶66).

Asserted Claims

The complaint asserts at least independent claim 23. (Compl. ¶63).

Accused Features

Infringement allegations target the Accused Products' functionalities for joining groups, communicating with servers to exchange location and map data, and displaying interactive symbols for group members on a map. (Compl. ¶¶67-68).

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. ¶12).

Technology Synopsis

This patent describes a system where a second device receives and accepts a request from a first device to join a group. Joining authorizes the first device to share its location information and engage in remote control operations with other group members, with a server managing the data exchange and display of symbols on a map. (Compl. ¶81).

Asserted Claims

The complaint asserts at least independent claim 34. (Compl. ¶¶78-79).

Accused Features

The accused functionalities include the ability for users to establish and join groups, exchange messages and location information via servers, and view other users' locations on an interactive map. (Compl. ¶¶82-83).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Products" as at least the Mobile GPS Tracker, GPSWOX Mobile Client, Family Locator, GPS Vehicle Tracking System, and GPS Fleet Tracking applications and services. (Compl. ¶19).

Functionality and Market Context

The Accused Products are described as providing functionalities that allow users to form and join groups or networks, share and view the real-time locations of other users on a map, and communicate via text and voice. (Compl. ¶20). The complaint highlights features for personal tracking (e.g., Family Locator) and commercial fleet management, alleging these features are used to improve user experience and Defendants' market position. (Compl. ¶¶7, 19). For example, the complaint includes a screenshot from a promotional video showing how a user can create a "New Family Circle" to begin sharing location data. (Compl. p. 27, fig. 26).

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...forced by a forced message alert software application program The Accused Products provide alerts for events like speeding or low battery, which allegedly function as forced alerts compelling a user response. ¶27 col. 12:56-61
receiving an electronically transmitted electronic message; identifying said electronic message as a forced message alert... The Accused Products receive and process various electronic messages, including notifications for speed limits, low battery, and geofence entries/exits, which are identified as alerts. ¶¶15, 27 col. 13:1-7
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 system automatically tracks user locations and alert statuses, which requires acknowledgment of message receipt by the recipient device to the central server system. The application then displays the alert to the user. ¶27 col. 13:8-14
transmitting a selected required response from the response list in order to allow the message required response list to be cleared... Users interact with alerts and can send messages or take other actions in response, such as communicating with the person being tracked. ¶¶15, 27 col. 13:15-26
displaying a geographical map with georeferenced entities...obtaining location and status data...and presenting a recipient symbol on the geographical map... The Accused Products display a map showing symbols for tracked users/devices at their GPS-determined locations and provide status information like battery level. ¶¶20, 27 col. 13:31-40

’251 Patent Infringement Allegations

Claim Element (from Independent Claim 24) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a message from a second device, wherein the message relates to joining a group The Accused Products allow users to create groups (e.g., "New Family Circle") and receive invitation codes or messages to join them. A screenshot shows a user entering an "invitation code" to join a circle. ¶39 col. 17:62-64
based on receiving the message...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... After joining a group, a user's device communicates with the GPSWOX servers to send its own location and receive the locations of other group members for display. ¶¶38, 40 col. 17:65-col. 18:5
presenting, via an interactive display...a first interactive, georeferenced map and a plurality of user-selectable symbols corresponding to the plurality of second devices... The products display a map with interactive symbols representing each group member at their respective real-time locations. A screenshot shows icons for "Julie" and "John" on a map. ¶41 col. 18:6-14
sending, from the first device to the server, a request for a second georeferenced map different from the first... The applications permit users to request different map views, such as by moving the map or selecting a satellite image layer, which requires sending a request for new map data to a server. ¶42 col. 18:15-19
identifying user interaction with the interactive display selecting one or more of the user-selectable symbols...and...using an Internet Protocol to send data to the...second devices via the server... Users can select symbols on the map to interact with other devices (e.g., to get directions or send a message), which triggers data transmission via the server. ¶42 col. 18:29-37

Identified Points of Contention

  • Scope Questions: A central question for the ’970 Patent may be whether the various alerts provided by the Accused Products (e.g., speed limit, low battery) constitute a "forced message alert" as claimed. The analysis may focus on whether these alerts "take control" of the recipient device and can "only be cleared" by sending a specific response, as described in the patent, or if they are standard, dismissible notifications that fall outside the claim scope.
  • Technical Questions: For the ’251 Patent and its family members, a key technical question may be whether the specific client-server communication protocol of the Accused Products maps onto the claim language detailing the sequence of sending and receiving location information and requesting and receiving different map data. While the overall functionality appears similar, the dispute could turn on precise differences in the technical implementation of the data exchange between the user devices and the GPSWOX servers.

V. Key Claim Terms for Construction

"forced message alert" (’970 Patent, Claim 10)

  • Context and Importance: This term is the central inventive concept of the ’970 Patent. The outcome of the infringement analysis for this patent will likely depend on whether the alerts in the Accused Products meet this definition. Practitioners may focus on this term because the patent describes a highly specific, intrusive type of alert, which may differ from the common notifications used in modern mobile apps.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself is not inherently limited. A party could argue that any alert designed to compel a user's attention and prompt an action, such as a safety or emergency notification, falls within a plain and ordinary meaning of a "forced" alert.
    • Evidence for a Narrower Interpretation: The specification provides a specific definition, stating the software "takes control of the recipient PC or PDA/cell phone" and that the displayed response list "can only be cleared by manually selecting and transmitting a response." (’970 Patent, col. 2:16-22). This language may support a narrower construction requiring a complete takeover of the user interface that cannot be dismissed without a responsive action.

"participating in the group" (’251 Patent, Claim 24)

  • Context and Importance: Claim 24 explicitly defines what "participating in the group includes," tying it to a specific sequence of sending location data to a server and receiving other members' location data from that server. Infringement will depend on whether the Accused Products perform this exact sequence.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The plain meaning of "participating" could be argued to cover any active membership in a location-sharing group where data is exchanged.
    • Evidence for a Narrower Interpretation: The claim uses the transitional phrase "wherein participating in the group includes," which may be interpreted as defining the term by the specific steps that follow: "sending first location information to a server and receiving second location information from the server." (’251 Patent, col. 18:1-5). This suggests that any group participation that does not involve this precise, two-way server communication may fall outside the claim's scope.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all asserted patents. The basis for this allegation is that Defendants provide user guides, training videos, marketing materials, and other instructions that allegedly encourage and direct customers to use the Accused Products in an infringing manner (e.g., by creating groups and setting up alerts). (Compl. ¶¶25-26, 35-36, 50-51, 64-65, 79-80).

Willful Infringement

The complaint alleges that Defendants had knowledge of the patents "at least as of the date of this Complaint," supporting a claim for post-suit willful infringement. 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 appears to be a basis for pre-suit willfulness. (Compl. ¶¶25, 35, 50, 64, 79).

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 describes as a system that "takes control" of a device and requires a response to be cleared, be construed to cover the potentially dismissible notifications (e.g., speed limit, low battery) in the accused GPS tracking applications?
  • A key evidentiary question will be one of architectural correspondence: does the specific client-server data exchange protocol used by the Accused Products for group creation, location sharing, and map rendering align with the precise, multi-step sequences recited in the independent claims of the ’251 patent family, or is there a fundamental mismatch in technical operation?
  • A third question will relate to damages and willfulness: assuming infringement is found, the case will examine what evidence supports Plaintiff's claim of willful blindness, which could be critical for establishing pre-suit willfulness and the potential for enhanced damages.