AGIS Software Development LLC v. Acer Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Acer Inc. (Taiwan)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:24-cv-00660, E.D. Tex., 08/13/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district and sells the accused products through authorized retailers, including Best Buy and Walmart locations within the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s device tracking and family safety applications infringe five U.S. patents related to interactive remote communications, location sharing on georeferenced maps, and the formation of ad hoc digital networks.
• Technical Context: The technology at issue involves systems for location-based group communication and remote device management, which are foundational features in modern consumer applications for family safety and device security.
• 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 during an Inter Partes Review but other claims were confirmed patentable in a subsequent Ex Parte Reexamination. The remaining four patents had their claims confirmed as valid and patentable in Ex Parte Reexamination proceedings. This extensive prosecution history may be presented by the Plaintiff to suggest the patents' resilience to validity challenges.

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's background describes a deficiency in standard digital messaging (like SMS), where a sender cannot be certain that a message has been received by all recipients in a group, nor can they compel a response. (ʼ970 Patent, col. 1:50-61).
• The Patented Solution: The invention is a system for sending "forced message alerts." A sender transmits a text or voice message that is bundled with a software packet. Upon receipt, the recipient's device is compelled to send an automatic acknowledgment. The alert software then "takes control" of the recipient's device, for example by repeatedly playing a voice message or displaying a text message, until the user manually chooses a reply from a predefined response list to clear the alert. (ʼ970 Patent, Abstract; col. 2:7-34).
• Technical Importance: This technology creates a closed-loop communication system that ensures message delivery is confirmed and a response is required, a capability described as valuable for first responders and military personnel. (Compl. ¶¶ 14-15).

Key Claims at a Glance

• The complaint asserts independent claim 10 (as amended during reexamination) (Compl. ¶24).
• Essential elements of claim 10 include:
  • Receiving an electronically transmitted electronic message.
  • Identifying the message as a forced message alert, which comprises a voice or text message and a software packet that triggers an application on the recipient device.
  • Transmitting an automatic acknowledgment of receipt to the sender, which triggers the application to take control of the recipient device.
  • Showing a text message and a required response list on the display, or audibly repeating a voice message and showing the response list.
  • Transmitting a selected required response from the list to clear the alert.
  • Displaying a geographical map with georeferenced entities on the sender's device.
  • Obtaining location data from the recipient device and presenting a symbol for the recipient on the map.
• The complaint does not explicitly reserve the right to assert dependent claims.

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 a need for emergency response groups, such as police and fire departments, to rapidly establish temporary, secure, and interoperable digital and voice communication networks without needing to pre-configure devices with other users' contact information. (’251 Patent, col. 2:7-36).
• The Patented Solution: The invention describes a method for creating an ad hoc network using a central server. A user joins the network by providing three pieces of information to their device: the server's IP address, a network name (e.g., "Katrina Fire"), and a password. Once connected, the device sends its location and status to the server, which then relays that information to all other authenticated members of the same ad hoc network, allowing them to see each other on a map and communicate. (’251 Patent, Abstract; col. 4:46-67).
• Technical Importance: This approach allows for rapid deployment of a shared operational picture for disparate groups who can join a secure, common network simply by sharing a name and password. (Compl. ¶¶ 14-15).

Key Claims at a Glance

• The complaint asserts independent claim 24 (Compl. ¶34).
• Essential elements of claim 24 include:
  • A first device programmed to perform operations.
  • Receiving a message sent by a second device, where the message relates to joining a group.
  • Based on receipt, participating in the group, which includes sending first location information to a server and receiving second location information (comprising locations of other group devices) from the server.
  • Presenting an interactive georeferenced map with user-selectable symbols corresponding to the other devices in the group.
  • Sending a request for a new georeferenced map to the server and presenting the new map upon receipt.
  • Identifying user interaction with the map to select a symbol and, based on a specified action, using an Internet Protocol to send data to the corresponding device via the server.
• The complaint does not explicitly reserve the right to assert dependent claims.

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, similar to the ’251 Patent, addresses the problem of creating temporary, password-protected communication networks for groups like first responders. The solution involves devices connecting to a server using a shared network name and password to exchange location and status information for display on a map. (Compl. ¶¶ 14-15, 52-53).
• Asserted Claims: At least independent claim 54 (Compl. ¶48).
• Accused Features: The complaint alleges that the Accused Products' features for forming groups, sharing locations, viewing other users on a map, and communicating within the group 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"

Issued November 14, 2017

• Technology Synopsis: This patent also relates to ad hoc, server-mediated communication networks. It specifically claims a system where a first device joins a group, sends its location to a server, and receives back location data for other group members, which it then displays as selectable symbols on a georeferenced map. The system includes functionality for identifying user selection of a symbol on the map to initiate an action. (Compl. ¶66).
• Asserted Claims: At least independent claim 23 (Compl. ¶63).
• Accused Features: The complaint targets the Accused Products' ability to form groups and display member locations as interactive symbols on a map, allowing a user to select a symbol to perform an action, such as sending data (Compl. ¶¶ 67, 72).

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 describes a system focused on the dynamic updating and control within an ad hoc network. A device joins a group, repeatedly shares its location via a server, receives updated locations of other devices, and repositions corresponding symbols on a map. The system also includes claims directed at remotely controlling a device in the network based on user interaction with its symbol on the map. (Compl. ¶81).
• Asserted Claims: At least independent claim 34 (Compl. ¶78).
• Accused Features: The infringement allegations focus on the Accused Products' features for joining a group, displaying and updating user locations on a map, and enabling remote control actions on another user's device (Compl. ¶¶ 82, 85-86).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Accused Products" as the Microsoft "Family Safety Application," the Microsoft "Find My Device" application, and the "Absolute Software" application, as used on Defendant Acer's devices (Compl. ¶19).

Functionality and Market Context

• The complaint alleges the Accused Products provide functionalities that allow users to form and join groups, share and view the real-time locations of other group members on a map, and communicate with them (Compl. ¶20, ¶37). It also describes features for locating lost or stolen devices and remotely controlling them, for example, by locking the device (Compl. ¶20). The complaint includes a screenshot from Microsoft's support page titled "Find your Windows device," which shows instructions for locating a device on a map and selecting a "Lock" option (Compl. p. 12). Another screenshot, from the Absolute Software application, depicts icons for features including "LOCATE," "LOCK," and "DELETE" for managing a lost or stolen computer (Compl. p. 13). These features are positioned as tools to improve user experience and security, thereby enhancing the defendant's market position (Compl. ¶20).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,213,970 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether a remote command, such as "lock device," can be construed as a "forced message alert" that "comprises a voice or text message" as required by the claim. A further question is whether the subsequent user action of resetting a password on a locked device constitutes selecting a response from a "required response list," as the accused functionality does not appear to present a list of choices to the user.

U.S. Patent No. 9,445,251 Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The analysis may focus on whether the accused system's method of requesting and rendering map tiles from a commercial mapping service constitutes "sending...a request for georeferenced map data" and "receiving...the georeferenced map data" in the manner contemplated by the patent. The specific client-server architecture and data protocols used by the accused products will be compared against the claim limitations.

V. Key Claim Terms for Construction

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

  • Context and Importance: This term is central to the infringement theory for the '970 patent. The patentability of the surviving claims rests on this concept, and its construction will determine whether a remote security command, like "lock device," falls within the scope of a "message alert" that includes a text/voice component and requires a response from a list.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the alert as a "forced alert software packet" bundled with a message file, which could support an argument that the functional software command is the core of the "alert." (ʼ970 Patent, col. 2:12-15).
    • Evidence for a Narrower Interpretation: The claim explicitly requires the alert to comprise "a voice or text message." The abstract and detailed description consistently describe the alert as a communicative message that is audibly repeated or visually displayed until a user selects from a response list, suggesting more than a silent, background command. (ʼ970 Patent, Abstract; col. 8:39-51).

• Term from ’251 Patent, Claim 24: "receiving a message...relat[ing] to joining a group"

  • Context and Importance: This preamble language defines the triggering condition for the claimed system's operation. Practitioners may focus on this term because the nature of the "message" and the "group" will be critical. The dispute could center on whether creating a "family" in a consumer application is equivalent to joining a "group" in the context of the patent, which was developed for first responders.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is general, referring simply to "a group." The specification discusses the benefits for "Military, first responder, and other public and private emergency groups," but the use of "other...private...groups" could support a construction that is not limited to an emergency context. (’251 Patent, col. 2:7-9).
    • Evidence for a Narrower Interpretation: The patent's background is heavily focused on solving communication problems for "different organizations at the scene of a disaster." (’251 Patent, col. 2:21-22). This context could be used to argue that the claimed "group" is intended to be a temporary, ad hoc collection of users for a specific event, rather than a persistent social group like a family.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement for all five patents. The basis for this allegation is that Defendant provides customers with instructions, training videos, user guides, and support websites that allegedly instruct users on how to operate the Accused Products in an infringing manner, such as by setting up a family group or finding a lost device (Compl. ¶26, ¶36, ¶51, ¶65, ¶80).
• Willful Infringement: The complaint alleges that Defendant had knowledge of its infringement "at least as of the date of this Complaint" and alternatively that it was willfully blind to the infringing nature of its actions (Compl. ¶25, ¶35, ¶50, ¶64, ¶79). The prayer for relief requests a finding of willful and deliberate infringement, which appears to be based on alleged post-suit knowledge, as no pre-suit notice is alleged.

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

This case presents several critical questions concerning claim scope and technical operation, framed by an extensive post-grant review history. The outcome will likely depend on the court’s determination of the following issues:

• A core issue will be one of definitional scope: can the term "forced message alert," which the ’970 patent describes as a text or voice communication that compels a response from a list, be construed to cover a remote security command like "lock device" that does not present a communicative message or a list of response options?
• A second key question will be one of technical equivalence: do the accused consumer applications, which allow users to form persistent "family" groups and display location data using modern mapping APIs, operate in the same way as the systems claimed in the ad hoc networking patents, which are described in the context of creating temporary, secure networks for coordinating emergency response?
• Finally, a procedural question will be one of estoppel and patent strength: how will the fact that all asserted patents have survived reexamination—with the ’970 patent being narrowed in the process—affect arguments regarding claim construction and the presumption of validity?