DCT

2:24-cv-00762

AGIS Software Development LLC v. Booz Allen Hamilton Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00762, E.D. Tex., 09/19/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business in Plano and McKinney, Texas, within the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s situational awareness software applications, including the Team Awareness Kit (TAK) product suite, infringe six patents related to mobile communication networks, location tracking, and forced alert messaging.
  • Technical Context: The technology at issue involves systems that enable users, typically military or first responder personnel, to form ad hoc communication groups, visualize team members' locations on a map in real-time, and exchange critical data using mobile devices.
  • Key Procedural History: The complaint notes that all six patents-in-suit have undergone post-grant proceedings. U.S. Patent Nos. 7,031,728; 9,445,251; 9,467,838; 9,820,123; and 9,749,829 each survived Ex Parte Reexamination with their asserted claims confirmed as valid and patentable. U.S. Patent No. 8,213,970 had several claims canceled in an Inter Partes Review, but the asserted amended claim was subsequently confirmed as valid and patentable in an Ex Parte Reexamination.

Case Timeline

Date Event
2004-09-21 Earliest Priority Date for all Patents-in-Suit
2006-04-18 U.S. Patent No. 7,031,728 Issued
2009-01-20 Alleged earliest date of Defendant's knowledge of infringement
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. 9,467,838 Issued
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
2023-04-18 Ex Parte Reexamination Certificate Issued for ’728 Patent
2024-09-19 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,031,728 - “Cellular Phone/PDA Communication System,” Issued Apr. 18, 2006

The Invention Explained

  • Problem Addressed: The patent describes the process of using a mobile device to view other users' locations, obtain their contact information, and initiate a call as cumbersome, requiring users to switch between map and dialer applications (ʼ728 Patent, col. 1:50-65). It also notes the desirability of remotely activating another user's device to announce an emergency (ʼ728 Patent, col. 2:5-17).
  • The Patented Solution: The invention is an integrated system on a cellular PDA with GPS that displays participants as unique symbols on a geographical map. A user can initiate a voice call to another participant simply by touching their symbol on the screen and selecting a "call" switch, which automatically retrieves and dials the stored phone number associated with that symbol (ʼ728 Patent, Abstract; col. 4:5-14).
  • Technical Importance: This approach streamlined communication and enhanced situational awareness for mobile teams by tightly integrating location data with communication functions on a single interface.

Key Claims at a Glance

  • The complaint asserts independent method claim 7 (Compl. ¶24).
  • The essential elements of Claim 7 are:
    • Generating one or more symbols on a touch screen display, each representing a different participant with a similarly equipped cellular phone.
    • Providing and storing in each participant's phone one or more cellular phone numbers, with each number relating to a different symbol.
    • Providing calling software in each phone that is activated by touching a symbol on the display to automatically initiate a cellular phone call to the participant represented by that symbol.
    • Generating a geographical location chart on the display screen to show the location of each symbol by latitude and longitude.
  • The complaint reserves the right to assert additional claims (Compl. ¶23).

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: In many situations, it is critical to know not only that a message was delivered but also that it was received and acknowledged by the recipient. Standard messaging systems like SMS or TCP/IP do not inherently provide this functionality (ʼ970 Patent, col. 1:56-67).
  • The Patented Solution: The invention discloses a "forced message alert" method. A sender transmits a message that includes a software packet. Upon receipt, this packet forces the recipient's device to automatically transmit an acknowledgment back to the sender. It then "takes control" of the recipient's display, showing the message and a required list of responses. The display cannot be cleared until the recipient selects and transmits a response from the list ('970 Patent, Abstract; col. 2:5-33).
  • Technical Importance: This created a closed-loop, high-assurance messaging system for environments where confirmation of receipt and a required user response are critical.

Key Claims at a Glance

  • The complaint asserts independent method claim 10, as amended by an Ex Parte Reexamination (Compl. ¶35).
  • The essential elements of Claim 10 are:
    • Receiving an electronic message identified as a forced message alert, which includes a voice/text message and a software packet.
    • Transmitting an automatic acknowledgment of receipt to the sender, which triggers the software to take control of the recipient device and display the message content and a required response list.
    • Transmitting a selected required response from the list to clear the message from the display.
    • Displaying the received response on the sender's device.
    • Providing a list of recipients that have automatically acknowledged receipt.
    • Displaying a geographical map with georeferenced entities on the sender's device.
    • Obtaining location and status data from the recipient's device.
    • Presenting a symbol for the recipient on the geographical map at their correct location.
  • The complaint reserves the right to assert additional claims (Compl. ¶34).

Multi-Patent Capsule: Ad Hoc Networking Patents

  • Patent Identification: U.S. Patent No. 9,445,251; U.S. Patent No. 9,467,838; U.S. Patent No. 9,820,123; U.S. Patent No. 9,749,829. All are titled “Method to Provide Ad Hoc and Password Protected Digital and Voice Networks.”
  • Technology Synopsis: These patents describe a method for users to quickly form a temporary, secure (password-protected) digital and voice network. Users connect to a server using a shared "ad hoc event name" and password. The server manages the exchange of IP addresses, location, and status data, allowing participants to communicate and collaborate without needing to pre-configure their devices or know each other's contact information (’251 Patent, Abstract; col. 2:7-19).
  • Asserted Claims: The complaint asserts independent claim 24 of the ’251 Patent, claim 54 of the ’838 Patent, claim 23 of the ’123 Patent, and claim 34 of the ’829 Patent (Compl. ¶¶ 43, 56, 70, 84).
  • Accused Features: The complaint alleges that the Accused Products' features for creating and joining groups, sharing location data, displaying user symbols on a map, and exchanging messages via a server infringe these patents (Compl. ¶¶ 46-51, 60-65, 74-79, 88-94).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the Accused Products as TAK, ATAK, CivTAK, WinTAK, ATAK-CIV, WinTAK-CIV, TE-Enabler, SU-Enabler, GV, Sit(x), and related situational awareness applications, products, and services (Compl. ¶19).

Functionality and Market Context

  • The Accused Products are described as a suite of software that provides geospatial information and allows for user collaboration (Compl. p. 17). Their core functionalities, as alleged in the complaint, include allowing users to form and join networks or groups, share and view the GPS-based locations of other users, display symbols corresponding to users on a map, and communicate via text, voice, and multimedia messages (Compl. ¶¶ 20, 27-28). A screenshot depicting the "Core ATAK Capabilities" shows distinct modules for Map functions (e.g., markers, overlays), Team functions (e.g., chat, geofencing), and Mission functions (e.g., navigation) (Compl. p. 36). The products were originally developed by the Air Force Research Laboratory and are used by first responders, law enforcement, and military personnel (Compl. ¶¶ 15, p. 17).

IV. Analysis of Infringement Allegations

'728 Patent Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
a) generating one or more symbols on the touch display screen, each representing a different participant... The Accused Products generate symbols on a touch screen display, such as colored circles or blue arrowheads, that correspond to the location of a user's mobile device (Compl. ¶28, p. 14). ¶28 col. 6:3-7
b) providing and storing in each of the participant cellular phones one or more cellular phone telephone numbers, each cellular phone number of which relates to a different symbol of each of the participants... The Accused Products provide and store contact information, including phone numbers, of users in the memory of the mobile device, for example through communication with a server (Compl. ¶29). ¶29 col. 3:36-40
c) providing initiating cellular phone calling software in each cellular phone that is activated by touching a symbol on the touch display that automatically initiates a cellular phone call using the stored cellular phone number to the participant represented by the symbol... The Accused Products enable a user to place a call by selecting a symbol on the touch display (Compl. ¶29). A screenshot of the "Contacts" list shows a "Phone" option for communicating with another user (Compl. p. 15). ¶¶26(c), 29 col. 8:53-61
d) generating a geographical location chart on said display screen to shown the geographical location of each of the symbols representing the participants in the communication network by latitude and longitude. The Accused Products generate a map display showing symbols that correspond to the location of other users, with each symbol having a corresponding latitude and longitude (Compl. ¶28). ¶28 col. 6:35-43

'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, wherein said forced message alert comprises a voice or text message and a forced message alert application software packet... The Accused Products receive electronic messages, such as emergency alerts or GeoChat messages, that function as forced message alerts (Compl. ¶38, p. 16, p. 29). ¶38 col. 8:19-29
transmitting an automatic acknowledgment of receipt to the sender PDA/cell phone, 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... The Accused Products are alleged to automatically acknowledge receipt of messages and present the message content and required responses to the recipient (Compl. ¶38). ¶38 col. 8:31-48
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 Accused Products require a user to select a response to clear an alert, which releases control of the device and stops the message display (Compl. ¶38). ¶38 col. 8:56-62
displaying the response received from the PDA cell phone that transmitted the response on the sender of the forced alert PDA/cell phone... The sender device displays the response received from the recipient (Compl. ¶38). ¶38 col. 5:11-15
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 sender's device displays a map showing the recipient as a symbol at a location based on received location data (Compl. ¶38). A screenshot shows a map with a "Self Marker" and an "Other User's Marker" (Compl. p. 23). ¶38 col. 5:16-20

Identified Points of Contention

  • Scope Questions: A potential point of contention for the ’728 Patent is the scope of the term "cellular phone call." The complaint alleges infringement through features like GeoChat, VoIP, and data packages (Compl. p. 15), which are data-based. This raises the question of whether this term, from a patent with a 2004 priority date, can be construed to cover modern IP-based communication methods in addition to traditional circuit-switched calls.
  • Technical Questions: For the ’970 Patent, a key technical question may be whether the Accused Products' alert functionalities perform the specific function of "tak[ing] control of the recipient PDA/cell phone" as required by the claim. The analysis will likely focus on whether the accused alerts are merely high-priority notifications or if they truly lock the user interface until a required response is selected and transmitted.

V. Key Claim Terms for Construction

Term: "cellular phone call" (from ’728 Patent, Claim 7)

  • Context and Importance: The construction of this term is critical because the Accused Products are alleged to use a variety of modern communication protocols, including VoIP and data-based chat (Compl. p. 15). Whether these methods fall within the scope of a "cellular phone call" will be a central issue for infringement of the ’728 Patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent’s overall goal is to streamline communications between mobile users, regardless of the specific underlying technology. The specification discusses initiating "voice and data call[s]" and "voice and data conference call[s]," suggesting the term could encompass more than just traditional calls (ʼ728 Patent, col. 2:31-43).
    • Evidence for a Narrower Interpretation: The claim language itself recites "cellular phone calling software," "cellular phone call," and "cellular phone telephone numbers" (ʼ728 Patent, Claim 7). This repeated use of "cellular phone" could be interpreted as limiting the claim to traditional circuit-switched telephony, which was the predominant technology at the time of invention.

Term: "forced message alert software application program to take control of the recipient PDA/cell phone" (from ’970 Patent, Claim 10)

  • Context and Importance: This term captures the core novelty of the ’970 Patent. The infringement analysis will hinge on the degree of control the accused software exerts over a recipient's device. Practitioners may focus on this term because it distinguishes a mere notification from the claimed invention's more intrusive, high-assurance functionality.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract states the software provides the ability to provide a response list "that can only be cleared by manually selecting and transmitting a response." This suggests the "control" is primarily related to the inability to dismiss the alert without responding, which a robust notification system might achieve ('970 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The specification states that upon receiving the alert, the software "effectively takes control of the recipient PC or PDA/cell phone" and causes a message to be shown "until a manual response is selected" or a voice message "cannot be stopped from repeating" until a response is chosen ('970 Patent, col. 8:40-52). This language suggests a complete preemption of the user interface, not just a persistent notification.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents, stating that Defendant instructs its customers to infringe through "training videos, demonstrations, brochures, installations and/or user guides" available on various websites (Compl. ¶¶ 25, 37, 45, 59, 72, 87).
  • Willful Infringement: The complaint alleges Defendant has had knowledge of the patents "since at least January 20, 2009 or the issuance date of the Patents-in-Suit" (Compl. ¶18). For each count, it alleges Defendant had knowledge "at least as of the date of this Complaint," thereby pleading facts to support both pre-suit and post-suit willful infringement (Compl. ¶¶ 24, 36, 44, 58, 71, 86).

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

  • A core issue will be one of technological scope: can the term "cellular phone call," rooted in the '728 Patent's 2004 priority date, be construed to cover the varied, IP-based communication methods (VoIP, data chat) implemented in the modern Accused Products, or is its meaning limited to the circuit-switched telephony of that era?
  • A key evidentiary question will be one of functional operation: do the accused TAK/ATAK alert systems perform the specific "take control" function required by the '970 Patent by commandeering the recipient's user interface and preventing other actions until a required response is transmitted, or is there a fundamental mismatch in technical operation where the products merely provide a persistent but dismissible notification?
  • For the family of ad hoc networking patents, a central question will be whether the server-mediated architecture of the Accused Products, where users connect to a central point using a shared password to exchange data, meets the claim limitations for establishing an "ad hoc...network" and performing the claimed steps of group formation and data exchange.