AGIS Software Development LLC v. Dell Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Dell Inc. and Dell Technologies, Inc. (Delaware)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:24-cv-00662, E.D. Tex., 08/13/2024
• Venue Allegations: Plaintiff alleges venue is proper based on Defendant's regular and established places of business in the district, including a physical office in Plano, an "aggregate network" of employee homes under a work-from-home policy, and sales of accused products through authorized retailers located within the district.
• Core Dispute: Plaintiff alleges that Defendant’s computer devices, when running certain location-based applications such as Microsoft Family Safety, Find My Device, and Absolute Software, infringe five patents related to forced message alerts and the creation of ad hoc, password-protected communication networks.
• Technical Context: The asserted patents relate to mobile communication and situational awareness systems, originally developed for first responders and military personnel, that enable users to track locations, form secure groups, and compel responses to messages.
• Key Procedural History: All five patents-in-suit have undergone post-issuance review at the U.S. Patent and Trademark Office. U.S. Patent No. 8,213,970 survived an Inter Partes Review that cancelled several claims, with an subsequent Ex Parte Reexamination confirming the patentability of the remaining asserted claims. The other four patents-in-suit each had their validity and patentability confirmed in 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: Standard digital messaging services like SMS do not provide a sender with confirmation that a message was received, nor do they provide a mechanism to compel a response from the recipient (Compl. ¶17; ’970 Patent, col. 1:50-62).
• The Patented Solution: The invention is a software-based method for sending a "forced message alert" to a recipient's device. The software forces the recipient's device to automatically transmit an acknowledgment of receipt. It then takes control of the recipient's display, showing the message and a required list of responses, and will not clear the alert until the recipient selects and transmits a response from that list (’970 Patent, Abstract; col. 2:6-24).
• Technical Importance: This system provides guaranteed delivery confirmation and compels a timely response, which is described as critical in communication scenarios for first responders or military personnel (Compl. ¶17; ’970 Patent, col. 1:15-24).

Key Claims at a Glance

• The complaint asserts at least independent claim 10 (Compl. ¶27).
• Essential Elements of Claim 10 (as amended by reexamination):
  • A method of receiving, acknowledging, and responding to a forced message alert at a recipient device.
  • Receiving an electronic message and identifying it as a forced message alert.
  • The alert comprises a voice/text message and a software packet that triggers a forced message alert program on the recipient device.
  • Automatically transmitting an acknowledgment of receipt to the sender device.
  • The acknowledgment triggers the program to take control of the recipient device and 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 with georeferenced entities on the sender device display.
  • Obtaining location and status data of the recipient device and presenting a symbol for it on the geographical map.

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: In emergency situations, personnel from different organizations (e.g., police, fire departments) need to establish secure, temporary ("ad hoc") communication networks quickly without needing to pre-configure each device with the contact information of all other participants (’251 Patent, col. 2:7-20).
• The Patented Solution: The invention provides a method where users can join a password-protected network hosted on a server by entering a common "ad hoc event name" and password. Once authenticated, the server facilitates the exchange of location and status information between all group members, allowing them to see each other's positions on a map and communicate directly (’251 Patent, Abstract; col. 4:46-59).
• Technical Importance: This approach enables rapid interoperability and creates a shared "common operating picture" for coordinating teams during dynamic events like disaster response (’251 Patent, col. 2:21-44).

Key Claims at a Glance

• The complaint asserts at least independent claim 24 (Compl. ¶37).
• Essential Elements of Claim 24:
  • A system comprising a first device programmed to perform operations.
  • Receiving a message from a second device relating to joining a group.
  • Participating in the group by sending first location information to a server and receiving second location information (of other group members) from the server.
  • Sending a request for georeferenced map data to a server and receiving it.
  • Presenting, on an interactive display, a georeferenced map with user-selectable symbols corresponding to the locations of other devices in the group.
  • Identifying user interaction selecting a particular symbol and, based on a specified action, using an Internet Protocol to send data to that particular second device.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 (Compl. ¶13).
• Technology Synopsis: Continuing the ad hoc networking theme of the ’251 Patent, this patent further details a system where users join a temporary, password-protected network via a server. The invention enables participants to see each other on a map and communicate without pre-entry of contact data, focusing on the method of establishing such a network for emergency response coordination (’838 Patent, Abstract).
• Asserted Claims: At least independent claim 54 (Compl. ¶51).
• Accused Features: The complaint alleges that the group-creation, location-sharing, and communication features of the Family Safety and Absolute Software applications infringe this patent (Compl. ¶¶55-57).

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 (Compl. ¶14).
• Technology Synopsis: This patent describes a system for ad hoc networking with a specific focus on the user interface interaction. The claims detail a method for selecting a user's symbol on a map by detecting a user's touch on the display and searching for the symbol nearest to the coordinates of the selected position, enabling communication with that user (’123 Patent, Abstract; Compl. ¶69).
• Asserted Claims: At least independent claim 23 (Compl. ¶66).
• Accused Features: The accused features are the functionalities within the Family Safety application that allow users to form groups, view members as symbols on a map, and interact with those symbols to communicate (Compl. ¶¶70-72).

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 (Compl. ¶15).
• Technology Synopsis: This patent builds on the ad hoc networking concept by adding functionalities for remote control and dynamic location updates. The invention describes a system where a second device, after joining a group, can receive updated location information for a first device and reposition its symbol on a map, and can also send messages to remotely control an action on that first device (’829 Patent, Abstract; Compl. ¶84).
• Asserted Claims: At least independent claim 34 (Compl. ¶81, correcting a typographical error from '839 to '829).
• Accused Features: The complaint targets the location sharing, mapping, and communication features of the Family Safety and Absolute Software applications (Compl. ¶¶85-87).

III. The Accused Instrumentality

Product Identification

• The Accused Products are identified as "the Family Safety, Find My Device, and Absolute Software applications and services and all Dell computer devices running Windows-based operating systems," including various Dell product lines such as XPS, Latitude, and Alienware (Compl. ¶22).

Functionality and Market Context

• The complaint alleges the Accused Products contain functionalities that allow users to form and join groups, share and view the real-time locations of other users on a map, and communicate via text, voice, and multimedia messages (Compl. ¶23).
• The "Find My Device" and "Absolute Software" functionalities are alleged to allow users to track their own lost or stolen devices, view their location on a map, and remotely control them (e.g., lock the device) (Compl. ¶¶23, 30-31). The complaint includes a screenshot from a Microsoft support page showing how a user can find a Windows device on a map (Compl. p. 12).
• The "Family Safety" application is alleged to allow users to create a "family group" by inviting members, after which they can view each other's locations on an interactive map and communicate through a server (Compl. ¶¶40-41). A visual from the complaint shows the user interface for adding a family member via phone number or email (Compl. p. 19).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

Identified Points of Contention:

• Scope Questions: A central question may be whether a one-way device command, such as "lock device," constitutes a "forced message alert" within the meaning of the patent. The patent's specification appears to describe an interactive communication system between human users that compels a manual response from a list, which raises the question of whether a simple device command meets the "required response list" limitation.
• Technical Questions: The complaint alleges the transmission of a "selected required response" to clear the alert (Compl. ¶30). It is an open evidentiary question what constitutes the "response list" on the recipient device's screen and how selecting from it clears the display, particularly when the recipient device is lost or stolen and not in the user's possession.

’251 Patent Infringement Allegations

Identified Points of Contention:

• Scope Questions: A potential dispute may arise over whether a persistent "family group" in a consumer application qualifies as a "temporary ad hoc network" as described in the patent's specification, which focuses heavily on emergency and first-responder scenarios.
• Technical Questions: Claim 24 requires specific methods of identifying user interaction, including searching for the nearest symbol to selected coordinates. The complaint alleges users can "select one or more symbols" (Compl. ¶45) but does not provide technical details on whether the accused software performs the specific nearest-symbol search method required by the claim.

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 in determining whether administrative commands like "find device" or "lock device" fall within the scope of a claim that also requires a "required response list," a feature that suggests interactive communication between users.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent claims define the alert as comprising a "voice or text message and a forced message alert application software packet" (’970 Patent, Claim 10). A party could argue that any software packet that triggers a remote action is a "forced message alert."
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the alert as something that "forces an automatic acknowledgement upon receipt and a manual response from the recipient" (’970 Patent, col. 1:21-24) and provides a "manual response list... that can only be cleared by manually selecting and transmitting a response" (’970 Patent, col. 2:19-22). This language may support a narrower construction requiring a human-interactive messaging system.

For the ’251 Patent:

• The Term: "ad hoc ... network"
• Context and Importance: Practitioners may focus on this term because the patent's specification is heavily grounded in the context of temporary, emergency-response scenarios. The applicability of the claims to a persistent, consumer-facing "family group" will depend on whether "ad hoc" is construed to require temporariness.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not explicitly include a temporal limitation. Claim 1 describes a method to "quickly establish" a network, which could apply to any user-created group formed on demand, regardless of its intended duration (’251 Patent, col. 15:53-61).
  • Evidence for a Narrower Interpretation: The Summary of the Invention states that "one of the purposes of the invention is to allow an ad hoc network to be formed on a temporary basis in a rapid manner" (’251 Patent, col. 4:11-14). The background section extensively discusses the needs of "Military, first responder, and other public and private emergency groups" for "temporary" networks (’251 Patent, col. 2:7-12). This context may be used to argue for a more limited scope.

VI. Other Allegations

• Indirect Infringement: For all asserted patents, the complaint alleges induced infringement. The basis for inducement is Defendant’s alleged instruction of its customers to use the Accused Products in an infringing manner through materials such as "training videos, demonstrations, brochures, installations and/or user guides" (e.g., Compl. ¶¶29, 39, 54, 68, 83). The complaint provides URLs to Microsoft and Dell support pages as examples of such instructional materials.
• Willful Infringement: The complaint alleges that Defendant had knowledge of its infringement "at least as of the date of this Complaint" (e.g., Compl. ¶¶28, 38, 53, 67, 82). The prayer for relief requests a finding that infringement has been willful and deliberate, which would be based on this alleged post-suit knowledge (Compl., p. 69, ¶b).

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

• A core issue will be one of contextual scope: can patent claims rooted in the specification's detailed descriptions of technology for first responders and emergency situations (e.g., "forced message alerts," "ad hoc networks") be construed to cover the functionally analogous but contextually different features in mainstream consumer applications, such as family location sharing and remote device locking?
• A key evidentiary question will be one of technical and functional mapping: does the accused "Find My Device" functionality technically meet the "required response list" limitation of the ’970 Patent's claims, and do the accused map-based applications technically implement user selection by performing the specific "nearest symbol" search recited in the ’123 Patent's claims?
• The case may also present a significant question of damages apportionment: should infringement be found, a central dispute will likely involve determining the proper royalty base and apportioning the value of the accused software features from the overall value of the Defendant's multi-component computer devices and the Windows operating system on which they run.