AGIS Software Development LLC v. Motorola Solutions Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Motorola Solutions, Inc. (Delaware)
  • Plaintiff’s Counsel: Fabricant LLP; McKool Smith, P.C.
• Case Identification: 2:24-cv-00601, 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 for manufacturing, distribution, and corporate administration in Allen, Plano, and Richardson, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s public safety and command center software suite infringes five patents related to forced-alert messaging, situational awareness, and the creation of ad hoc digital and voice communication networks.
• Technical Context: The technology at issue involves real-time command and control systems that provide location tracking, mapping, and interoperable communications for first responders, law enforcement, and military personnel.
• Key Procedural History: The complaint notes that all five patents-in-suit have undergone post-grant review at the U.S. Patent and Trademark Office. One patent (’970) had several claims cancelled in an Inter Partes Review but had other claims confirmed as patentable in a subsequent Ex Parte Reexamination. The other four patents (’251, ’838, ’123, ’829) had their claims confirmed as valid and patentable in separate Ex Parte Reexaminations. The survival of these patents through post-grant challenges may be a significant factor in the litigation.

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 addresses the limitations of standard digital messaging (e.g., SMS), where a sender has no way to confirm a message was received or to compel a timely response from the recipient, which is critical in emergency or command-and-control situations (’970 Patent, col. 1:50-65).
• The Patented Solution: The invention is a system and method where a "forced message alert" is sent to a recipient's device. Upon receipt, a software application automatically transmits an acknowledgment to the sender, takes control of the recipient's device, and displays the message along with a required list of responses. The alert cannot be cleared, and control of the device is not released, until the recipient selects and transmits a response from the provided list (’970 Patent, Abstract; Fig. 4). The sender's device can monitor which recipients have acknowledged receipt and what their manual responses were (’970 Patent, Fig. 3B).
• Technical Importance: This approach provides a closed-loop communication system that ensures message receipt and mandates a user response, creating a higher of accountability than conventional messaging protocols (’970 Patent, col. 2:50-56).

Key Claims at a Glance

• The complaint asserts independent method claim 10 (as amended by Ex Parte Reexamination) (Compl. ¶27).
• Essential elements of Claim 10 include:
  • Receiving an electronic message identified as a forced message alert, which comprises a voice or text message and a software packet.
  • The packet triggers activation of a forced message alert software program on the recipient device.
  • Transmitting an automatic acknowledgment of receipt to the sender.
  • The sender's software is triggered to take control of the recipient device to show the message content and a required response list.
  • Transmitting a selected response from the list, which causes the software to release control of the recipient device.
  • Displaying the response on the sender's device.
  • Providing a list of recipients that have acknowledged and responded.
  • Displaying a geographical map on the sender's device with a symbol for the recipient at their geographical location.

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 challenge faced by first responders from different, unacquainted organizations during an emergency, who need to establish secure voice and data communication networks rapidly without pre-configuration or prior knowledge of each other's contact information (’251 Patent, col. 2:8-23).
• The Patented Solution: The invention describes a method where users can join a temporary, private network by entering a shared "ad hoc event name" and password into their devices. A central server authenticates users based on these credentials and then acts as a router to exchange data—such as location, status, and messages—among all participants in the ad hoc group (’251 Patent, Abstract; Fig. 5). This allows for the rapid creation of a common operating picture among disparate users.
• Technical Importance: The technology is designed to solve the critical interoperability problem in multi-agency emergency response by allowing for the spontaneous creation of a secure, shared communication environment (’251 Patent, col. 2:40-49).

Key Claims at a Glance

• The complaint asserts independent system claim 24 (Compl. ¶37).
• Essential elements of 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 first location information to a server and receiving second location information from the server (comprising locations of a plurality of second devices).
  • Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the second devices.
  • Sending a request for a second, different georeferenced map to the server.
  • Receiving and presenting the second georeferenced map with the symbols.
  • Identifying user interaction with the display to select symbols and specify an action, and based thereon, using an Internet Protocol to send data to the selected second devices via the server.

Multi-Patent Capsule: U.S. Patent No. 9,467,838

• 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.
• Technology Synopsis: This patent, related to the ’251 Patent, further details methods for establishing and managing ad hoc communication networks. It focuses on the server-side and device-side operations for joining a group, sharing location information, and displaying participants on a georeferenced map (’838 Patent, Abstract).
• Asserted Claims: The complaint alleges infringement of at least one claim but does not specify which claim(s) are asserted.
• Accused Features: The accused features are the functionalities within the Accused Products that allow users to form groups, share locations, and communicate on a map-based interface (Compl. ¶23).

Multi-Patent Capsule: U.S. Patent No. 9,820,123

• 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.
• Technology Synopsis: This patent, from the same family as the ’251 and ’838 patents, claims a system for ad hoc networking. The claims focus on the interaction between devices and servers to join groups, exchange location data, request and display maps, and interact with on-screen symbols to initiate communication (’123 Patent, Abstract).
• Asserted Claims: Independent system claim 23 is asserted (Compl. ¶51).
• Accused Features: The complaint alleges that the Accused Products’ ability to form groups, exchange location data with servers, display maps from multiple sources, and allow users to interact with on-map symbols to communicate infringes this patent (Compl. ¶54-60).

Multi-Patent Capsule: U.S. Patent No. 9,749,829

• 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.
• Technology Synopsis: This patent, also from the same family, claims a system and method focused on authorizing a new device to join an ad hoc group. It details the process of a device requesting to join, an existing member accepting, and the server subsequently enabling the new device to repeatedly share location information and engage in remote control operations with other group members (’829 Patent, Abstract).
• Asserted Claims: Independent system claim 34 is asserted (Compl. ¶66).
• Accused Features: The complaint alleges that the Accused Products’ functionalities for forming and joining groups, facilitating group communication via servers, and sending and receiving location information for display on interactive maps infringe this patent (Compl. ¶70-74).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Motorola’s CommandCentral Inform, CommandCentral Aware, SmartMapping, SmartMessaging, and Astro 25 Mission Critical Data products and services (the "Accused Products") (Compl. ¶22).

Functionality and Market Context

• The Accused Products constitute a suite of software and services for public safety and other organizations that provide situational awareness and a common operating picture (Compl. ¶23). Functionalities highlighted in the complaint include the ability for users to form groups, share and view the real-time locations of other users on a map, display symbols corresponding to users and incidents, and communicate via text, voice, and multimedia messages (Compl. ¶23). The complaint presents a marketing image from a CommandCentral Aware brochure showing a dispatcher's screen with a map overlay of unit locations, incident markers, and event data streams, illustrating the product's function as a centralized command hub (Compl. p. 9). These products are marketed for use in command centers and on mobile devices and radios for personnel in the field (Compl. ¶6).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: A primary technical question is whether the Accused Products actually perform the specific function of "taking control" of a recipient's device and forcing a response from a "required response list" to clear an alert. The complaint alleges this functionality (Compl. ¶30), but it raises the evidentiary question of whether Motorola's general alert or messaging systems implement this specific, claimed workflow.
  • Scope Questions: The case may turn on the scope of the term "forced message alert." The dispute will likely center on whether this term, as defined by the patent, can read on the priority messaging, alert, and read-receipt features common in modern communication systems, or if it is limited to the specific implementation of locking the user interface until a pre-defined response is selected.

’251 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: Claim 24 recites sending a request for a map to "the server" after having already communicated with a "first server" for location data. This raises the question of whether Motorola's architecture uses a single, integrated server infrastructure or a distributed one that aligns with the claim's potential two-server requirement (one for location data, one for map data).
  • Scope Questions: A central point of contention may be the meaning of joining a group via a "message." Does this require a specific type of invitation/acceptance message sequence, or can it be construed to cover the process of a user logging into a system and selecting a pre-existing talkgroup associated with their user profile?

V. Key Claim Terms for Construction

• For the ’970 Patent:

  • The Term: "forced message alert software application program"
  • Context and Importance: This term is the central inventive concept of the ’970 Patent. The outcome of the infringement analysis for this patent will depend on whether Motorola's messaging and alert features are found to be a "forced" system. Practitioners may focus on this term because its construction will determine if the claim covers modern priority alert systems or is limited to the patent's specific implementation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not specify the exact mechanism of "taking control," which could support an interpretation covering any software that brings an alert to the forefront of the user interface and requires interaction.
    • Evidence for a Narrower Interpretation: The specification describes a specific sequence where the software "effectively takes control of the recipient PC or PDA/cell phone" and requires a response "until one of the entries on the response list is selected" (’970 Patent, col. 11:39-52). This language may support a narrower construction requiring a complete UI lockout pending a specific type of response.

• For the ’251 Patent (and related family):

  • The Term: "receiving a message...wherein the message relates to joining a group"
  • Context and Importance: The infringement theory depends on construing this phrase to cover how users form and join groups in the Accused Products. Its construction is key to determining whether the patent applies to enterprise-grade systems with pre-configured users or is limited to the patent's "ad hoc" context where unknown parties join on the fly.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is general and does not specify the sender, content, or protocol of the "message," which could support reading it on any system signal or user action that results in group membership.
    • Evidence for a Narrower Interpretation: The patent's background focuses on solving problems for "not pre-known, organizations responding to a disaster" (’251 Patent, col. 2:42-44). This context suggests the "message" for joining a group is part of a system for spontaneous, temporary network formation, potentially narrowing the term's scope to exclude joining pre-defined groups within a corporate or governmental system.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Motorola induces infringement by instructing its customers to use the Accused Products in an infringing manner. This is allegedly done through materials such as "training videos, demonstrations, brochures, installations and/or user guides" (Compl. ¶28, ¶38).
• Willful Infringement: The complaint alleges that Motorola has knowledge of the patents "at least as of the date of this Complaint" and seeks a finding that the infringement is "willful and deliberate" (Compl. ¶28; Prayer for Relief ¶b). The allegations appear to be based on post-suit knowledge, as no facts supporting pre-suit knowledge are pleaded.

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

• A core issue will be one of functional equivalence: do Motorola’s alert and messaging systems perform the specific, multi-step process recited in the ’970 patent—seizing control of a device and compelling a response from a predefined list to clear an alert—or do they represent a more general priority notification function that lacks the claimed "forced" control and response mechanism?
• A second central issue will be one of architectural scope: can the claims of the ad hoc networking patents (’251, ’838, ’123, ’829), which are rooted in a context of enabling unknown parties to spontaneously form a network, be construed to cover Motorola’s established public safety platforms, which may rely on pre-provisioned user accounts and organizational structures for group formation?
• A key evidentiary question will be one of structural mapping: does Motorola's system architecture align with the specific claim limitations that recite interactions with distinct servers for different data types (e.g., location data vs. map data), or does it employ an integrated architecture that may not literally meet these structural requirements?