DCT

2:24-cv-00663

AGIS Software Development LLC v. Hewlett Packard Enterprises Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00663, E.D. Tex., 08/13/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain regular and established places of business within the Eastern District of Texas, including offices in Plano and Frisco, and because infringing products are offered for sale and sold within the district through authorized retailers.
  • Core Dispute: Plaintiff alleges that Defendants’ device security products and location-based services infringe five patents related to interactive remote communications, forced messaging alerts, and the formation of ad hoc digital networks.
  • Technical Context: The technology at issue involves systems for group communication, location tracking, and remote device control, which are foundational to modern enterprise security solutions and consumer-facing device-finder applications.
  • Key Procedural History: All five patents-in-suit have undergone post-grant proceedings at the USPTO. Notably, U.S. Patent No. 8,213,970 survived an Inter Partes Review that cancelled several original claims, and the asserted claim (Claim 10) was subsequently amended during an Ex Parte Reexamination. The remaining four patents have each been confirmed as valid and patentable through Ex Parte Reexamination Certificates. This history suggests that the validity of the asserted claims has already been scrutinized by the USPTO, a factor that may be noted in subsequent proceedings.

Case Timeline

Date Event
2004-09-21 Earliest Priority Date for all Patents-in-Suit
2012-07-03 U.S. Patent No. 8,213,970 Issued
2016-09-13 U.S. Patent No. 9,445,251 Issued
2016-10-11 U.S. Patent No. 9,467,848 Issued
2017-01-01 Accused Products Launch Period Begins (approx.)
2017-08-29 U.S. Patent No. 9,749,829 Issued
2017-11-14 U.S. Patent No. 9,820,123 Issued
2021-05-27 Ex Parte Reexamination Certificate Issued for ’838 Patent
2021-06-08 Ex Parte Reexamination Certificate Issued for ’251 Patent
2021-08-16 Ex Parte Reexamination Certificate Issued for ’829 Patent
2021-09-01 Inter Partes Review Certificate Issued for ’970 Patent
2021-09-24 Ex Parte Reexamination Certificate Issued for ’123 Patent
2021-12-09 Ex Parte Reexamination Certificate Issued for ’970 Patent
2024-08-13 Complaint Filed

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: Conventional digital messaging systems 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, which is a deficiency in situations requiring coordination. (’970 Patent, col. 1:50-61).
  • The Patented Solution: The patent describes a method and system using a "forced message alert." A sender transmits a message bundled with a software packet that forces the recipient's device to automatically transmit an acknowledgment of receipt. 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 when the recipient manually selects and transmits a response from the provided list. (’970 Patent, Abstract; col. 2:7-24).
  • Technical Importance: This technology aims to provide closed-loop communication for time-sensitive coordination, ensuring message delivery is confirmed and a structured response is obtained. (Compl. ¶15).

Key Claims at a Glance

  • The complaint asserts independent method claim 10, which survived IPR and was amended during reexamination. (Compl. ¶25).
  • Essential elements of Claim 10 include:
    • Receiving an electronic message identified as a forced message alert (comprising a voice/text message and a software packet).
    • The packet triggers activation of a software program on the recipient device.
    • Transmitting an automatic acknowledgment of receipt to the sender device.
    • The software then 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 display.
    • Displaying the received response on the sender device.
    • Displaying a geographical map with georeferenced entities on the sender device.
    • Obtaining location data of the recipient device and presenting a symbol for the recipient on the map at the correct geographical location. (Compl. ¶28; ’970 Patent, col. 16:21-67).
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’970 patent.

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 response groups (e.g., police, fire, military) to establish temporary, secure digital and voice communication networks rapidly, without the need for pre-configuring devices with team members' contact information. (’251 Patent, col. 2:7-19).
  • The Patented Solution: The invention provides a method where users can join a temporary, password-protected network simply by entering a server IP address and an "ad hoc event name." Once authenticated, their devices can exchange location and status data with other group members, whose locations are then displayed as symbols on an interactive map. (’251 Patent, Abstract; col. 4:46-54).
  • Technical Importance: This approach significantly lowers the technical and logistical barriers to establishing secure, interoperable communication networks among different organizations during emergency situations. (Compl. ¶15).

Key Claims at a Glance

  • The complaint asserts independent system claim 24. (Compl. ¶35).
  • Essential elements of Claim 24 include:
    • A first device programmed to perform operations.
    • Receiving a message from a second device relating to joining a group.
    • Based on receipt, participating in the group by sending its own location to a server and receiving location information for other group devices from the server.
    • Presenting an interactive, georeferenced map with user-selectable symbols corresponding to the locations of the other devices.
    • Identifying user interaction with the interactive display selecting a particular symbol and specifying an action.
    • Based on the interaction, using an Internet Protocol to send data to the particular second device. (’251 Patent, col. 18:60–col. 19:24).
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’251 Patent.

U.S. Patent No. 9,467,848 - “Method to Provide Ad Hoc and Password Protected Digital and Voice Networks”

  • Issued: October 11, 2016

Technology Synopsis

  • Continuing the technology of the ’251 Patent, this patent further describes methods for establishing and operating within temporary, password-protected communication networks for purposes of location sharing and coordination among a group of users. (’838 Patent, Abstract).

Asserted Claims & Accused Features

  • Asserted Claims: The complaint asserts at least claim 54. (Compl. ¶49).
  • Accused Features: The complaint alleges that features allowing users to form groups, share and view locations on a map, and communicate via the Family Safety Application infringe this patent. (Compl. ¶¶ 53-54).

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 is also part of the same family and describes systems for creating ad hoc networks. It includes specific limitations regarding how a user's device identifies interaction with symbols on a georeferenced map, such as by searching for the symbol nearest to the coordinates of a user's selection. (’123 Patent, Abstract; Compl. ¶67).

Asserted Claims & Accused Features

  • Asserted Claims: The complaint asserts at least claim 23. (Compl. ¶64).
  • Accused Features: The complaint alleges infringement by systems that allow users to form groups, view member locations as symbols on a map, and interact with those symbols to send data to other devices. (Compl. ¶¶ 68-69, 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

  • Also in the same family, this patent describes a system where a second device receives and accepts a request to join a group initiated by a first device. The system enables repeated location sharing and remote control operations among group members, including repositioning symbols on a map based on updated location data. (’829 Patent, Abstract; Compl. ¶82).

Asserted Claims & Accused Features

  • Asserted Claims: The complaint asserts at least claim 34. (Compl. ¶79).
  • Accused Features: Accused features include those that allow users to join groups, share locations that are updated and displayed on a map, and remotely control other devices within the group. (Compl. ¶¶ 83, 86).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a suite of HP's device security, tracking, and family safety applications and services, including HP Wolf Protect and Trace, Family Safety, Find My Device, HP Touchpoint, and Absolute Software. The complaint also accuses all HP computer devices running these services. (Compl. ¶20).

Functionality and Market Context

  • The complaint alleges the accused products provide functionalities that allow users to form or join groups, view the locations of other users or devices as symbols on a map, and communicate. (Compl. ¶21). A screenshot from the Microsoft Family Safety application depicts a user interface for viewing family members and their last known locations. (Compl. p. 9).
  • A central accused feature is the ability to track, monitor, and remotely control lost or stolen devices. This includes commands to find a device on a map, lock the device, and erase its data. (Compl. ¶21). A document excerpt describing HP Wolf Protect and Trace shows "Find," "Lock," and "Erase" commands, with the "Find" command allowing IT administrators to locate a missing device on a map. (Compl. p. 14).
  • The complaint alleges that Defendants implement these features to improve user experiences and enhance their market position. (Compl. p. 8, ¶2).

IV. Analysis of Infringement Allegations

’970 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving an electronically transmitted electronic message; identifying said electronic message as a forced message alert... The Accused Products receive commands, such as from an IT administrator or user, to locate, lock, or erase a device. ¶28 col. 8:16-24
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone... The complaint does not specify the mechanism for automatic acknowledgment but implies it occurs as part of the system's operation. ¶28 col. 8:25-30
which triggers the forced message alert software application program to take control of the recipient PDA/cell phone and shows the content of the text message and a required response list... When a lock command is received, the target device reboots to a "locked screen" at the BIOS level, displaying a message such as "This system has been LOCKED." An image shows this locked screen message. (Compl. p. 18). ¶28 col. 8:40-51
transmitting a selected required response from the response list in order to allow the message required response list to be cleared from the recipient's cell phone display... The user of the locked device must enter a unique numeric unlock PIN, provided by the operator, to clear the lock screen and regain control of the PC. ¶28 col. 8:52-64
displaying a geographical map with georeferenced entities on the display of the sender PDA/cell phone; obtaining location and status data... and presenting a recipient symbol on the geographical map... The HP TechPulse console allows an operator to select a device and view its location on a map, with the system attempting a new location fix upon selection. An image shows a device location displayed on a map. (Compl. p. 17). ¶28 col. 10:27-39
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether a remote security command (e.g., "Lock Device") initiated by an administrator or owner qualifies as a "forced message alert" from a "sender PDA/cell phone" to a "recipient PDA/cell phone" as framed in the patent. The analysis may explore whether the patent's context of peer-to-peer messaging differs fundamentally from the administrator-to-device or owner-to-own-device model alleged in the complaint.
    • Technical Questions: The complaint alleges the transmission of an "automatic acknowledgment," but it does not provide technical details distinguishing this from standard network protocol acknowledgments (e.g., TCP ACK). Further, it will be a point of dispute whether displaying a lock screen message and requiring a PIN for entry meets the limitation of showing a "required response list" and transmitting a "selected required response from the response list."

’251 Patent Infringement Allegations

Claim Element (from Independent Claim 24) Alleged Infringing Functionality Complaint Citation Patent Citation
a first device programmed to perform operations comprising: receiving a message... relating to joining a group... The Accused Products allow users to be invited to and join a "family group" via email or by entering a phone number/email address. A screenshot shows the interface for adding a family member. (Compl. p. 27). ¶¶39, 40 col. 18:62-64
based on receipt of the message... sending first location information to a first server and receiving second location information from the first server... Once location sharing is enabled, a user's device sends its location to a server and receives location information for other members of the family group. ¶41 col. 18:65-col. 19:5
presenting, via an interactive display of the first device, a first interactive, georeferenced map and a plurality of user-selectable symbols corresponding to the plurality of second devices... The Family Safety application displays a map showing the real-time locations of family members, who are represented by symbols. An image shows this map interface with symbols for different users. (Compl. p. 32). ¶42 col. 19:6-14
identifying user interaction with the interactive display selecting one or more of the user-selectable symbols... and user interaction with the display specifying an action and, based thereon, using an Internet Protocol to send data to the one or more second devices... Users can interact with the display by selecting a symbol, which allows further data (such as location alerts) to be sent to other devices based on that interaction. ¶43 col. 19:15-24
  • Identified Points of Contention:
    • Scope Questions: A likely point of contention is whether a "family group" within a consumer application constitutes an "ad hoc... network" as described in the patent. The defense may argue that the patent's specification, which heavily emphasizes coordination for "Military, first responder, and other public and private emergency groups," limits the term's scope to temporary, mission-specific networks, rather than persistent social or family groups. (’251 Patent, col. 2:7-9).
    • Technical Questions: The complaint alleges that user interaction with symbols on the map leads to data being sent to other devices. The technical implementation of how this interaction is identified and processed by the accused system will be a factual question for the infringement analysis.

V. Key Claim Terms for Construction

For the ’970 Patent:

  • The Term: "forced message alert"
  • Context and Importance: This term is the central concept of the asserted claim. Its construction will determine whether HP’s remote device management commands (e.g., lock, wipe, locate) fall within the scope of the invention. Practitioners may focus on this term because the accused functionality appears to be a command-and-control system, whereas the patent describes a peer-to-peer messaging system.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes a "specialized software application... that enables a participant to force an automatic acknowledgement and a manual response," which could be argued to cover any system that seizes control of a remote device's interface and requires a specific user action to release it. (’970 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description repeatedly characterizes the alert as comprising a "text or voice message file" and a "manual response list on the display... that can only be cleared by manually selecting and transmitting a response from the list." (’970 Patent, col. 2:13-22). This could support a narrower construction requiring a message with a menu of explicit reply options, as opposed to a lock screen that requires a PIN.

For the ’251 Patent:

  • The Term: "ad hoc... network"
  • Context and Importance: The nature of the "network" is critical, as the accused products involve forming persistent "family groups" in consumer applications. Whether this structure qualifies as "ad hoc" will be a key issue. Practitioners may focus on this term because of the potential mismatch between the patent's emergency-response context and the accused products' consumer-facing application.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The abstract describes a method to "set up an ad hoc digital and voice network easily and rapidly to allow users to coordinate their activities by eliminating the need for pre-entry of data." This could be argued to broadly cover any system where users can form a group with minimal setup (e.g., just a name and password). (’251 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The background of the invention states that "Military, first responder, and other public and private emergency groups need to be able to set up ad hoc digital and voice networks easily and rapidly. These private networks may be temporary or longer lasting in nature." (’251 Patent, col. 2:7-12). This language suggests the term implies a network for a specific, often temporary, purpose among professional or emergency groups, which may not read on a standing consumer "family group."

VI. Other Allegations

Indirect Infringement

  • The complaint alleges Defendants induce infringement of all five patents by "instructing users of the Accused Products to perform methods claimed in the" patents. (Compl. ¶26, ¶36, ¶51, ¶65, ¶80). This inducement is allegedly accomplished through "training videos, demonstrations, brochures, installations and/or user guides." (Compl. ¶27, ¶37, ¶52, ¶66, ¶81).

Willful Infringement

  • Willfulness is alleged based on knowledge "at least as of the date of this Complaint." (Compl. ¶26, ¶36, ¶51, ¶65, ¶80). The complaint also pleads in the alternative that Defendants "remained willfully blind to the infringing nature of others' actions," which suggests an allegation of pre-suit willfulness. (Compl. ¶26, ¶36, ¶67, ¶82).

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

  • A core issue will be one of definitional scope: can the term "forced message alert," which originates in the patent's context of peer-to-peer messaging with required response lists, be construed to cover the security commands (e.g., remote lock with a PIN unlock) used in the accused enterprise and consumer device management systems?
  • A second primary question will be one of contextual scope: does the "ad hoc... network" described in the '251 patent family, with its specification heavily focused on coordinating first responders in temporary emergency situations, encompass the creation of persistent "family groups" within general-purpose consumer software applications?
  • A key evidentiary question will be one of technical implementation: beyond high-level functional descriptions, the case will require evidence demonstrating how the accused products perform specific, granular steps recited in the claims, such as the transmission of an "automatic acknowledgment of receipt" ('970 Patent) and the precise method for "identifying the particular user-selectable symbol as the symbol located nearest to the coordinates of the selected position" ('123 Patent).