AGIS Software Development LLC v. AT&T Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: AT&T Inc., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (Delaware corporations and LLCs with principal places of business in Texas and Georgia)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:24-cv-00602, E.D. Tex., 07/29/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s operation of numerous regular and established places of business within the district, including retail stores, corporate offices, and innovation centers.
• Core Dispute: Plaintiff alleges that Defendant’s location-based service applications, including AT&T Secure Family, Fleet Complete, and FirstNet, infringe five patents related to interactive remote communications, forced messaging alerts, and the creation of ad hoc digital networks.
• Technical Context: The technology at issue involves systems for group communication and coordination on mobile devices, including location tracking, map-based displays of group members, and priority messaging, which are foundational features in modern consumer, enterprise, and first-responder mobile applications.
• Key Procedural History: The asserted patents have undergone post-grant review. Notably, U.S. Patent No. 8,213,970 survived an Inter Partes Review that cancelled several original claims, with the asserted claim 10 being amended and confirmed during a subsequent Ex Parte Reexamination. The other four patents-in-suit each had their validity and patentability confirmed through Ex Parte Reexamination proceedings.

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 then-existing digital messaging systems (like SMS), where a sender cannot be certain if a message was received or compel a timely response from recipients in a large group (Compl. ¶23; ’970 Patent, col. 1:50-61).
• The Patented Solution: The invention proposes a "forced message alert" system where a software packet is sent with a text or voice message. This packet forces the recipient's device to automatically transmit an acknowledgment of receipt back to the sender. The software then takes control of the recipient's device, displaying the message and a required list of responses. The alert can only be cleared by selecting and transmitting a response, ensuring the sender receives both delivery confirmation and a substantive reply (’970 Patent, Abstract; col. 8:16-52).
• Technical Importance: This approach aimed to provide reliable, closed-loop communication for critical situations where simple message delivery is insufficient and a specific, timely response is required (’970 Patent, col. 1:61-66).

Key Claims at a Glance

• The complaint asserts independent method claim 10 (as amended during reexamination) (Compl. ¶38).
• Essential elements of claim 10 include:
  • Receiving an electronic message and identifying it as a "forced message alert" comprising a message and a software packet.
  • The packet triggers an application program on the recipient device.
  • Automatically transmitting an acknowledgment of receipt to the sender.
  • The application takes control of the recipient device to show the message content and a "required response list."
  • Transmitting a selected response from the list to clear the alert from the recipient's display.
  • Displaying the received response on the sender's device.
  • 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.
• The complaint notes that claims 11-13, which depend on claim 10, were also determined to be valid and patentable (Compl. ¶17).

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 addresses the need for emergency responders and other groups from different organizations to establish temporary, secure, and interoperable communication networks quickly, without the need to pre-configure devices with other users' contact information (’251 Patent, col. 2:8-23).
• The Patented Solution: The invention describes a system where users join a network by providing a server IP address, a network name, and a password to their device. A central server authenticates users and acts as a forwarder for IP communications, routing location and status data between all authenticated participants. This allows group members to automatically see each other as selectable symbols on an interactive map and communicate without prior setup (’251 Patent, Abstract; col. 4:1-15).
• Technical Importance: The technology simplifies the creation of dynamic, secure communication groups, a critical capability for coordinating responses in emergency situations involving multiple, previously unacquainted agencies (’251 Patent, col. 2:45-50).

Key Claims at a Glance

• The complaint asserts independent system claim 24 (Compl. ¶48).
• Essential elements of claim 24, directed to a system of a first device, include:
  • Receiving a message from a second device related to joining a group.
  • Participating in the group by sending its own location information to a server and receiving location information for other devices from the server.
  • Presenting a first interactive, georeferenced map with user-selectable symbols corresponding to the locations of the other devices.
  • Sending a request to the server for a second, different georeferenced map.
  • Receiving and presenting the second map with the user symbols.
  • Identifying user interaction selecting a symbol and specifying an action, and based thereon, using an Internet Protocol to send data to the selected device via the server, without having direct access to the other device's IP address.
• 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”

• Patent Identification: 9,467,838, issued October 11, 2016 (Compl. ¶19).
• Technology Synopsis: This patent discloses a system for joining a group communication network by transmitting a message with a group identifier. The system involves exchanging location information with a first server, presenting group members on an interactive map, and requesting different map data from a second server (’838 Patent, Abstract).
• Asserted Claims: Independent system claim 54 (Compl. ¶63).
• Accused Features: The complaint accuses the AT&T Secure Family applications of infringing by enabling users to join groups, share location data via servers, and display interactive maps with user symbols (Compl. ¶¶67-69).

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

• Patent Identification: 9,820,123, issued November 14, 2017 (Compl. ¶20).
• Technology Synopsis: This patent describes a system for group communication where users are displayed as symbols on an interactive map. A key technical feature is the method of selecting a user symbol by detecting a user's touch on the map and searching a set of symbols to identify the one located nearest to the coordinates of the selected position (’123 Patent, Abstract).
• Asserted Claims: Independent system claim 23 (Compl. ¶79).
• Accused Features: The complaint alleges that AT&T’s products, like Secure Family, infringe by allowing users to establish groups, view members on a map, and interact with those members by selecting their corresponding symbols (Compl. ¶¶82-84).

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

• Patent Identification: 9,749,829, issued August 29, 2017 (Compl. ¶21).
• Technology Synopsis: This patent focuses on a system with a first (tracked) device and a second (tracking) device. It details a process where the second device requests to join a group, receives updated location information from the first device via a server, displays the first device as a symbol on a map, and sends messages to the server to remotely control the first device to perform an action (’829 Patent, Abstract).
• Asserted Claims: Independent system claim 34 (Compl. ¶94).
• Accused Features: The complaint targets features in the Accused Products that allow users to form groups, share location, and remotely interact with or control other devices in the group (Compl. ¶¶97-100).

III. The Accused Instrumentality

Product Identification

The complaint identifies a range of AT&T services, collectively termed the "Accused Products," including AT&T Secure Family, AT&T Fleet Complete, AT&T Fleet Tracker, AT&T Workforce Manager, and various AT&T FirstNet applications (Compl. ¶28).

Functionality and Market Context

The Accused Products are described as providing location-based services for consumer, enterprise, and first-responder markets. The core accused functionalities include allowing users to form groups, view the real-time location of other group members on a map, receive location-based alerts, and communicate through voice and text (Compl. ¶29). For example, the complaint alleges AT&T Secure Family enables location sharing and remote parental controls (Compl. ¶30), while AT&T Fleet Complete allows for GPS tracking of vehicles and employees (Compl. ¶31). A diagram in the complaint shows the AT&T Secure Family dashboard, which displays a user's location history and web activity (Compl. p. 11). The complaint asserts that these features improve user experience and AT&T's market position (Compl. ¶29).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

Identified Points of Contention (’970 Patent)

• Scope Questions: A central question will be whether the term "forced message alert" can be construed to read on the general-purpose notification systems (e.g., "Set location alerts," "SOS alerts") in the Accused Products. The patent describes a specific mechanism where an alert "takes control" of a device and can only be cleared by selecting from a "required response list" (’970 Patent, col. 8:41-52), which raises the question of whether a modern, easily dismissible notification meets this limitation.
• Technical Questions: What evidence does the complaint provide that the Accused Products transmit an "automatic acknowledgment of receipt" separate from standard network-level delivery receipts, or that they feature a "required response list" as described in the patent? The complaint alleges this functionality but does not detail the underlying technical mechanism in the Accused Products (Compl. ¶41).

’251 Patent Infringement Allegations

Identified Points of Contention (’251 Patent)

• Scope Questions: The analysis may focus on whether routine map interactions like panning or zooming constitute a "request for a second georeferenced map different from the first." The defense may argue this language requires a more discrete request for a fundamentally different map (e.g., switching from a street map to a topographical map), not merely fetching new tiles for a continuous map view.
• Technical Questions: Does the server architecture of the Accused Products align with the claim elements? The claim specifies sending data "via the server, wherein the first device does not have access to respective Internet Protocol addresses of the second devices." While this describes a common client-server model, the precise data flows and server functions in AT&T's infrastructure will be subject to discovery and scrutiny.

V. Key Claim Terms for Construction

For the ’970 Patent

• The Term: "forced message alert"
• Context and Importance: This term is the central inventive concept of the ’970 Patent. Its construction will be critical, as the infringement case depends on mapping this term to modern alert and notification features in the Accused Products. Practitioners may focus on this term because its definition will likely determine whether there is a fundamental mismatch between the claimed invention and the accused functionality.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The Summary of the Invention describes a method to "compel an automatic acknowledgement of receipt... and require a manual response" (’970 Patent, col. 2:50-54). This could be argued to cover any alert that requires user interaction before it can be dismissed.
  • Evidence for a Narrower Interpretation: The detailed description and claim language are more specific, stating the software "takes control of the recipient PDA/cell phone" and requires the user to transmit a "selected required response from the response list" to clear the display (’970 Patent, col. 11:39-49; col. 12:53-61). This language may support a narrower construction requiring a mandatory, predefined list of response options, not just a simple dismissal action.

For the ’251 Patent

• The Term: "a request for a second georeferenced map different from the first georeferenced map"
• Context and Importance: The infringement allegation relies on interpreting standard user interactions like panning and zooming as meeting this limitation. The construction of "different" will therefore be a key point of dispute.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not explicitly define "different." A party could argue that any request that results in the server sending new map data (e.g., tiles for an adjacent area or a higher zoom level) results in a "different" map being displayed, as the collection of data presented has changed.
  • Evidence for a Narrower Interpretation: The claim recites requesting a "second... map different from the first," which could imply two distinct and separate map objects. An opposing party may argue this requires more than an incremental update to a continuous map, such as switching from a street view to a satellite view, or loading a map of an entirely new city.

VI. Other Allegations

Indirect Infringement

The complaint alleges that AT&T induces infringement of all five patents by providing instructions to its customers on how to use the accused features. This is allegedly done through user guides, support articles, training videos, and marketing materials available on AT&T's websites (Compl. ¶¶39-40, 49-50, 65-66, 80-81, 95-96).

Willful Infringement

While the word "willful" does not appear in the infringement counts, the prayer for relief seeks treble damages for "willful and deliberate infringement" (Prayer for Relief, ¶e). The factual predicate for willfulness appears to be knowledge acquired no later than the filing of the complaint, as each count alleges AT&T has knowledge of infringement "at least as of the date of this Complaint" (e.g., Compl. ¶39, 49). For the ’123 and ’829 patents, the complaint alternatively pleads that AT&T was "willfully blind" to the infringing nature of others' actions (Compl. ¶¶80, 95).

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

• A core issue will be one of definitional scope and technological evolution: Can the term "forced message alert," as described in a 2004-priority patent involving taking "control" of a device and requiring a selection from a "response list," be construed to cover the functionally different and more flexible notification systems in modern smartphone applications?
• A second key question will be one of claim interpretation in a software context: Will standard map interactions, such as panning and zooming, be found to constitute a "request for a second georeferenced map different from the first," as required by the ad hoc networking patents, or is there a technical distinction that places the accused functionality outside the scope of the claims?
• Finally, a central theme will be the impact of the post-grant history: How will the cancellation of several original claims and the amendment of the asserted claim in the ’970 patent during IPR and reexamination influence claim construction, potentially creating prosecution history estoppel arguments and shaping the overall narrative of the invention's scope?