AGIS Software Development LLC v. L3 Harris Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: L3 Harris Technologies, Inc. (Delaware)
  • Plaintiff’s Counsel: Fabricant LLP; McKool Smith, P.C.
• Case Identification: 2:24-cv-00600, E.D. Tex., 07/29/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains regular and established places of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s situational awareness and tactical communication products infringe five patents related to interactive remote communications and the formation of ad hoc digital networks.
• Technical Context: The technology at issue involves systems for real-time location tracking, group communication, and data sharing on mobile devices, primarily for first responders, military, and other tactical teams.
• Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant review at the USPTO. U.S. Patent No. 8,213,970 had several claims (1, 3-9) cancelled via an Inter Partes Review, while asserted claim 10 survived an Ex Parte Reexamination. The other four patents-in-suit each had their claims confirmed as valid and patentable in separate Ex Parte Reexamination proceedings, a fact that may be presented to bolster their presumption of validity.

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"

The Invention Explained

• Problem Addressed: The patent describes a need for a communication system where a sender can be certain that a message sent to a group has been received and to know the response of each recipient, functions not provided by standard digital messaging protocols of the time (e.g., SMS) (ʼ970 Patent, col. 1:51-62).
• The Patented Solution: The invention is a method and system using a "forced message alert" software application on mobile devices. When a sender transmits a forced alert, the recipient's device is compelled to automatically transmit an acknowledgment of receipt back to the sender. The alert (e.g., a displayed text message or a repeating audio message) can only be cleared from the recipient's device after the recipient manually selects and transmits a response from a predefined list. (’970 Patent, Abstract; col. 2:7-24).
• Technical Importance: This technology provides a closed-loop communication system ensuring message receipt and response accountability, which is critical in tactical, first responder, or other high-stakes environments. (’970 Patent, col. 2:50-56).

Key Claims at a Glance

• The complaint asserts independent claim 10 (Compl. ¶23).
• Essential elements of claim 10 include:
  • Receiving an electronically transmitted message.
  • Identifying the message as a "forced message alert", which comprises a voice or text message and a software packet that triggers a "forced message alert software application 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 display the message and a "required response list".
  • Transmitting a selected response from the list to clear the alert and release control of the recipient's device.
  • Displaying the received response on the sender's device.
  • Providing a list of recipients that have acknowledged and responded.
  • Displaying a geographical map with georeferenced entities on the sender's device.
  • Obtaining location and status data from the recipient's device.
  • Presenting a symbol for the recipient on the map at its correct location based on the location data.

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 the challenge faced by emergency responders, military personnel, and other groups from different organizations in establishing rapid and secure ad hoc communication networks during a crisis. Conventional methods often require pre-configuration or are not interoperable between different organizations' systems. (’251 Patent, col. 2:21-36).
• The Patented Solution: The invention provides a method for individuals to quickly form a temporary, password-protected digital and voice network. Users on disparate devices only need to enter a specific server IP address, a common ad hoc event name, and a password. Once authenticated by the server, their devices begin sharing location and status data with all other authenticated members of the ad hoc group, enabling coordinated communication and situational awareness. (’251 Patent, Abstract; col. 4:46-58).
• Technical Importance: This approach enables rapid, on-the-fly creation of secure, interoperable communication networks among groups that may have no prior coordination, a critical capability in disaster response and tactical operations. (’251 Patent, col. 2:7-20).

Key Claims at a Glance

• The complaint asserts independent claim 24 (Compl. ¶33).
• Essential elements of claim 24, a system claim directed to a first device, include:
  • Receiving a message sent by a second device related to joining a group.
  • Based on receipt, sending the first device's location information to a "first server" and receiving location information of other group members from that server.
  • Sending a request for georeferenced map data to a "second server".
  • Receiving the georeferenced map data from the "second server".
  • Presenting an interactive map with user-selectable symbols representing other devices at their respective locations.
  • Identifying user interaction that selects a symbol and specifies an action, and using an Internet Protocol to send data to the corresponding second device.

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

• Technology Synopsis: This patent, related to the ’251 patent, also describes methods for creating and managing temporary, password-protected communication networks. The focus is on enabling rapid coordination among users by allowing them to join a network using a shared name and password, after which a server facilitates data exchange. (’838 Patent, Abstract).
• Asserted Claims: At least independent claim 54 (Compl. ¶47).
• Accused Features: The complaint alleges infringement by accused product features that allow users to share locations, view other users on a map, and communicate within established groups (Compl. ¶¶51-52).

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 patent details a system where a device can join a group, exchange location information with a server, request and receive map data from another server, and interact with symbols on the map to communicate with other users. (’123 Patent, col. 15:1-36).
• Asserted Claims: At least independent claim 23 (Compl. ¶62).
• Accused Features: Allegations focus on the accused products' system for joining groups, exchanging location and map data via servers, and allowing users to interact with symbols on the display to initiate actions (Compl. ¶65).

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

• Technology Synopsis: This patent describes a system focused on the interaction between devices within an ad hoc group. It claims a method where one device can request to join a group, and upon acceptance, is authorized to share location data and engage in remote control operations with other devices in the group, facilitated by a server. (’829 Patent, Abstract).
• Asserted Claims: At least independent claim 34 (Compl. ¶77).
• Accused Features: The complaint targets features that allow users to request and accept group membership, repeatedly share location data, and engage in remote control operations with other devices in the group (Compl. ¶81).

III. The Accused Instrumentality

Product Identification

• The L3Harris BeOn, Location Services, RO-MAP, and Situational Awareness Mapping solutions (Compl. ¶18).

Functionality and Market Context

• The complaint alleges these products constitute a suite of tactical communication and situational awareness tools. Their core functionality includes allowing users to form or join groups, view the real-time location of other users as symbols on a map, and communicate through voice, text, and other media (Compl. ¶19). A screenshot provided in the complaint shows the BeOn application displaying a map with icons representing different units, such as "K-9Unit2" and "Truck-7," and a list of group members with their status (Compl. p. 13). The products are marketed for enabling Push-To-Talk communications over cellular networks, locating and tracking field staff, and sharing voice and data (Compl. p. 8).

IV. Analysis of Infringement Allegations

8,213,970 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the standard communication functions of the accused products (e.g., a Push-to-Talk call) meet the specific definition of a "forced message alert" as recited in claim 10. This includes determining if those functions involve a special "software packet," compel an "automatic acknowledgment," and "take control" of the recipient device in the manner claimed.
  • Technical Questions: What evidence does the complaint provide that the accused products present a "required response list" that must be used to clear a message from the display, as opposed to a standard user interface for replying to a communication?

9,445,251 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: Claim 24 recites sending location data to a "first server" and requesting map data from a "second server". A potential issue is whether the accused L3 Harris system uses two distinct servers (physically or logically) for these functions, or if a single integrated server architecture would fall outside the literal scope of the claim.
  • Technical Questions: The complaint alleges that upon selecting a symbol, the system uses an Internet Protocol to send data to the corresponding device. What technical evidence will be presented to show that this specific back-end process occurs as claimed, beyond the user-facing interface elements?

V. Key Claim Terms for Construction

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

• Context and Importance: This term is the central inventive concept of the asserted '970 patent claim. The outcome of the infringement analysis for this patent may depend entirely on whether the accused products' functionalities are construed as implementing a "forced message alert." Practitioners may focus on this term because it appears to describe a very specific protocol beyond standard messaging.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification's background describes the object of the invention as providing a method where "a sender can compel an automatic acknowledgement of receipt... and require a manual response" (’970 Patent, col. 2:50-54). An argument could be made that any system achieving this purpose, such as one that automatically transmits location upon receiving a call, falls within the term's scope.
  • Evidence for a Narrower Interpretation: Claim 10 itself provides a detailed definition, requiring a "forced message alert application software packet" that "triggers the activation" of a program, "take[s] control of the recipient PDA/cell phone," and shows a "required response list" that must be used to clear the message (’970 Patent, col. 12:59 - col. 13:20). This language suggests a highly structured and specific type of message, not a conventional PTT call or text.

• Term: "a first server" and "a second server" (’251 Patent, Claim 24)

• Context and Importance: Claim 24 recites separate actions involving two distinct servers: one for location information exchange and another for map data. Defendant may argue non-infringement if its system architecture uses a single, integrated server for both functions.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly state that the servers must be physically separate hardware. An interpretation could be advanced that "server" refers to a logical software function, and a single physical machine could host both a "location server" function and a "map server" function, thereby meeting the limitation.
  • Evidence for a Narrower Interpretation: The claim uses the distinct terms "a first server" and "a second server." Standard principles of claim differentiation suggest that these terms refer to two different entities. The patent's description of a system architecture involving external map sources could be used to support the argument that the map server is intended to be distinct from the primary communication server.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all asserted patents, stating that Defendant provides customers with user guides, brochures, training videos, and other instructional materials that direct users to operate the accused products in an infringing manner (e.g., Compl. ¶¶25, 35, 50, 64, 79).
• Willful Infringement: The complaint alleges that Defendant had knowledge of the patents and infringement at least as of the filing date of the complaint (e.g., Compl. ¶24). The prayer for relief requests a judgment that the infringement has been "willful and deliberate" and seeks treble damages under 35 U.S.C. § 284, grounding the willfulness allegation primarily in post-suit knowledge (Compl., Prayer for Relief ¶¶ b, e).

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

• A core issue will be one of definitional scope: can the functions of the accused products' conventional communication protocols, which may trigger location updates, be construed to meet the specific, multi-part definition of a "forced message alert" as claimed in the ’970 patent, particularly the requirements of "taking control" of the recipient device and clearing the alert via a "required response list"?
• A key architectural question will be one of server identity: do the claims in the ’251 patent family that recite "a first server" (for group/location data) and "a second server" (for map data) require two distinct server entities, and what evidence will be dispositive in showing whether the accused L3 Harris architecture meets this structural limitation?
• A central evidentiary question will be one of functional equivalence: beyond the user interface and marketing materials, what technical evidence will demonstrate that the accused products' back-end systems perform the specific server-side logic and device-to-device interactions for group formation, symbol selection, and remote control as recited in the asserted claims?