AGIS Software Development LLC v. Lenovo Group Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Lenovo Group, Limited, et al. (China)
  • Plaintiff’s Counsel: Fabricant LLP; Truelove Law Firm, PLLC
• Case Identification: 2:24-cv-00666, E.D. Tex., 08/13/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendants are not residents of the United States and may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s computer devices and associated software applications for family safety, device location, and remote security infringe five patents related to interactive remote communications, ad hoc networking, and location sharing.
• Technical Context: The patents relate to technologies for creating, managing, and communicating within secure, location-aware digital networks, primarily for mobile devices.
• Key Procedural History: The complaint notes that each of the five patents-in-suit has undergone post-grant proceedings. U.S. Patent No. 8,213,970 survived an Inter Partes Review which cancelled claims 1 and 3-9, and an Ex Parte Reexamination which confirmed amended claims 2 and 10 and claims 11-13 as patentable. The other four patents ('251, '838, '123, and '829) each had their claims confirmed as valid and patentable in respective Ex Parte Reexaminations. These proceedings may influence subsequent claim construction by providing context from the U.S. Patent and Trademark Office's reevaluation of the claims in light of prior art.

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 Jul. 3, 2012)

The Invention Explained

• Problem Addressed: The patent’s background describes the need for a communication method where a sender can be certain a message was received and can compel a response from the recipient, which is not guaranteed by standard SMS or TCP/IP messages (ʼ970 Patent, col. 1:50-65).
• The Patented Solution: The invention is a system for sending a "forced message alert" to a recipient's device (e.g., a PDA/cell phone). This alert software automatically transmits an acknowledgment of receipt back to the sender and takes control of the recipient's device, displaying the message and a list of required manual responses. The alert can only be cleared by the recipient selecting and transmitting a response from the list (ʼ970 Patent, Abstract; col. 2:7-24).
• Technical Importance: This technology provided a mechanism for confirmed and accountable communication, which is particularly critical in tactical, first responder, or enterprise environments where receipt of an instruction and a corresponding acknowledgment are essential.

Key Claims at a Glance

• The complaint asserts at least independent claim 10 (Compl. ¶54).
• Essential elements of claim 10 (as amended) include:
  • Receiving an electronically transmitted electronic message.
  • Identifying the message as a "forced message alert" comprising a voice/text message and a software packet that triggers a local software program.
  • Transmitting an automatic acknowledgment of receipt to the sender.
  • The sender's device is triggered to take control of the recipient's device and show the message content and a required response list.
  • Transmitting a selected required response from the list to clear the message from the recipient's display.
  • Displaying the received response on the sender's device.
  • Displaying a geographical map with georeferenced entities on the sender's device.
  • Obtaining location data of the recipient device and presenting a corresponding symbol on the geographical map.

U.S. Patent No. 9,445,251 - Method to Provide Ad Hoc and Password Protected Digital and Voice Networks (Issued Sep. 13, 2016)

The Invention Explained

• Problem Addressed: The patent identifies the need for first responders, military, and other emergency groups to establish temporary, private digital and voice networks "easily and rapidly" without the "need for pre-entry of data into a web or identifying others by name, phone numbers or email" (ʼ251 Patent, col. 2:7-19).
• The Patented Solution: The invention describes a method where users can join an ad hoc network by providing minimal information: a server IP address, a network name, and a password. Once connected, a central server facilitates the exchange of location, status, and other data between participants, allowing them to see each other on a map and communicate without prior setup (ʼ251 Patent, Abstract; col. 4:51-65). A screenshot in the complaint shows the Microsoft Family Safety application, which allows users to add family members to a group to share location information (Compl. p. 34).
• Technical Importance: The technology streamlines the creation of secure, temporary communication groups, which is critical for coordinating multi-agency responses to disasters or other dynamic situations where participants may not know each other beforehand.

Key Claims at a Glance

• The complaint asserts at least independent claim 24 (Compl. ¶64).
• Essential elements of claim 24 include a system with a first device programmed to perform operations comprising:
  • Receiving a message from a second device relating to joining a group.
  • Based on receipt, participating in the group by 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 for the other devices.
  • Sending a request to a server for a second, different georeferenced map.
  • Receiving and presenting the second map with the symbols.
  • Identifying user interaction with the symbols to specify an action and, based thereon, sending data to the corresponding second device 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 Oct. 11, 2016.
• Technology Synopsis: This patent, from the same family as the '251 patent, also describes methods for creating and operating in ad hoc, password-protected communication networks. The claims focus on the server-side operations, including receiving location information from devices and forwarding it to other group members, and managing group participation based on a shared network identifier (Compl. ¶¶81-86).
• Asserted Claims: At least independent claim 54 (Compl. ¶78).
• Accused Features: The complaint alleges that the servers providing the Family Safety services, which manage group membership and relay location data for display on user maps, infringe this patent (Compl. ¶¶81-82).

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 Nov. 14, 2017.
• Technology Synopsis: Also from the same patent family, this patent focuses on a system for group communication where a user can select a symbol on an interactive map and, through interaction with the display, send data to the corresponding device. A key aspect is identifying the nearest symbol to a user's touch on the map to determine the intended recipient (Compl. ¶¶95-97).
• Asserted Claims: At least independent claim 23 (Compl. ¶92).
• Accused Features: The accused features include the interactive map in the Family Safety application, which allows a user to view locations of other users and potentially interact with their symbols to initiate communication or other actions (Compl. ¶¶96, 100-101).

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 Aug. 29, 2017.
• Technology Synopsis: This patent, also from the same family, details a system for remote control and data sharing within a group. It describes a second device receiving updated location information from a first device and repositioning its symbol on a map, and also sending a message to remotely control the first device to perform an action (Compl. ¶¶110-111).
• Asserted Claims: At least independent claim 34 (Compl. ¶107).
• Accused Features: The accused features are functionalities for tracking and remotely controlling lost or stolen devices, such as those provided by the Find My Device and Absolute Software applications, which involve displaying a device's location on a map and sending commands to it (Compl. ¶¶110, 117).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Accused Products" as the Family Safety Application, Find My Device application, Absolute Software application and services, and all Lenovo computer devices running Windows-based operating systems (e.g., ThinkPad, Yoga, Legion) (Compl. ¶49).

Functionality and Market Context

• The accused functionalities allow users to form groups, share locations for viewing on a map, and communicate with other users (Compl. ¶50). A screenshot from Microsoft's Family Safety support page shows a map view with family members' locations (Compl. p. 39).
• They also include features to track, remotely monitor, and control lost or stolen devices (Compl. ¶50). A promotional image for Absolute Home & Office on Lenovo devices depicts features to "LOCATE," "LOCK," "DELETE," and "RECOVER" a lost laptop (Compl. p. 28). The complaint alleges these products are used to improve user experience and Defendants' market position (Compl. ¶50).

IV. Analysis of Infringement Allegations

8,213,970 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether a user-initiated remote lock command in a "Find My Device" application constitutes a "forced message alert" as contemplated by the patent. The claim requires the alert to be received and then trigger software that presents a required response list which must be used to clear the display. The complaint's evidence focuses on the sender's action of locking the device, not the recipient's required interaction to clear an alert.
  • Technical Questions: What evidence does the complaint provide that the accused remote lock functionality forces the display of a "required response list" and that clearing the lock screen requires "transmitting a selected required response" from that list back to the sender, as claimed?

9,445,251 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The claim recites sending a request for map data to a "second server" and receiving location data from a "first server." A potential issue is whether the accused cloud-based architecture, which may use a single, distributed service or content delivery network for both user location and map tile data, can be mapped onto this distinct two-server limitation.
  • Technical Questions: What evidence demonstrates that the accused systems use a "second server" for map data that is distinct from the "first server" that handles user location information, as required by the claim language?

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 claim 10. Its construction will determine whether a modern remote security feature like "Find and Lock a Lost Windows Device" (Compl. p. 27), which is initiated by the device owner, falls within the claim scope, which describes a system for sending an alert that compels a specific response from a recipient.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent states the object is to provide a method where a sender "can compel an automatic acknowledgement of receipt...and require a manual response" (ʼ970 Patent, col. 2:50-55). This could be argued to cover any system that forces an interaction on the recipient device.
  • Evidence for a Narrower Interpretation: The claim requires the alert to trigger software that shows a "required response list" that must be used to "clear" the display (ʼ970 Patent, col. 11:7-15). This suggests the term is limited to interactive alerts that present specific, selectable reply options, not just a static lock screen.

For the ’251 Patent

• The Term: "a first server" and "a second server"
• Context and Importance: Claim 24 recites receiving location data from a "first server" and receiving map data from a "second server." Practitioners may focus on this term because modern cloud services often blur the lines between logically distinct functions. Defendant may argue its system uses a single, integrated service, while Plaintiff may argue that the servers providing user data and map tiles are functionally distinct, even if part of the same overall cloud platform.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not appear to explicitly define "server" or require distinct hardware. This may support an interpretation where logically separate services or APIs, even if hosted on the same physical infrastructure, could be considered a "first" and "second" server.
  • Evidence for a Narrower Interpretation: The repeated and distinct use of "first server" and "second server" in the claim may imply two separate and non-identical entities. The patent's description of a "centralized static IP routable Server" (ʼ251 Patent, col. 4:39-40) could be argued to refer to the "first server," suggesting the "second server" for map data is a different entity entirely.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement by instructing users of the Accused Products to perform the claimed methods through "training videos, demonstrations, brochures, installations and/or user guides" available on Defendants' and their partners' websites (Compl. ¶¶56, 66).
• Willful Infringement: The complaint alleges knowledge of infringement "at least as of the date of this Complaint" for each patent, supporting a claim for post-suit willful infringement (Compl. ¶¶55, 65, 79, 93, 108). It also pleads in the alternative that Defendants "believed there was a high probability that others would infringe...but remained willfully blind to the infringing nature of others' actions" (e.g., Compl. ¶55).

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

• A core issue will be one of definitional scope: can the term "forced message alert" from the '970 patent, which describes a system compelling a recipient to select from a response list, be construed to cover modern device security features where an owner initiates a remote lock command?
• Another key issue will be one of architectural congruence: does the accused cloud-based system, which provides both user location data and georeferenced map data, operate using the distinct "first server" and "second server" architecture required by claims of the '251 patent family, or is there a fundamental mismatch in system design?
• A central evidentiary question will be one of functional implementation: what proof will be presented to show that the process of adding a user to a "family group" in the accused applications meets the specific claim limitations of "receiving a message...related to joining a group" and performing the subsequent server communications as claimed in the '251 patent?