AGIS Software Development LLC v. Google LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AGIS Software Development LLC (Texas)
  • Defendant: Google LLC (Delaware)
  • Plaintiff’s Counsel: The Mort Law Firm, PLLC; Fabricant LLP
• Case Identification: 6:23-cv-00160, W.D. Tex., 03/01/2023
• Venue Allegations: Venue is based on Defendant Google LLC having regular and established places of business within the Western District of Texas, including an office in Austin.
• Core Dispute: Plaintiff alleges that Defendant’s Android operating system, associated mobile devices, and services including "Find My Device" infringe a patent related to forcing message alerts and confirming responses for interactive remote communications.
• Technical Context: The technology concerns mobile communication systems that ensure message delivery and compel a user response, a function critical for situational awareness, remote device management, and coordinated group activities.
• Key Procedural History: The asserted patent has a significant post-grant history. An Inter Partes Review (IPR) resulted in the cancellation of claims 1 and 3-9. A subsequent Ex Parte Reexamination confirmed claims 2 and 10 as patentable in an amended form, along with dependent claims 11-13. The complaint asserts the amended version of claim 10, narrowing the dispute to the specific elements added and confirmed during reexamination.

Case Timeline

Date	Event
2004-09-21	U.S. Patent No. 8,213,970 Priority Date
2012-07-03	U.S. Patent No. 8,213,970 Issued
2021-09-01	Inter Partes Review Certificate Issued, Cancelling Claims
2021-12-09	Ex Parte Reexamination Certificate Issued, Amending Claims
2023-03-01	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"

• Patent Identification: 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 describes a deficiency in conventional messaging systems (like SMS) where a sender cannot be certain that a message was received by all intended recipients in a group, nor can they compel a response. (’970 Patent, col. 1:50-61). This creates uncertainty in time-critical situations where coordinated action is necessary.
• The Patented Solution: The invention is a software-based method for "forced message alerts" on mobile devices. A sender transmits an alert that includes a message (text or voice) and a software packet. Upon receipt, the recipient's device is compelled to automatically transmit an acknowledgment back to the sender. ('970 Patent, col. 2:15-20). The recipient's device is then effectively taken over by the alert—displaying the message and a "required response list"—and cannot be returned to normal operation until the user selects an option from the list and transmits it as a manual response. ('970 Patent, col. 2:26-32; col. 8:40-48). The sender can monitor which users have acknowledged receipt and what their manual responses are.
• Technical Importance: This approach provides a closed-loop communication system that guarantees both receipt confirmation and a mandatory user response, which was identified as a need for first responder, military, and other coordinated command-and-control applications. (Compl. ¶¶11-12).

Key Claims at a Glance

• The complaint asserts independent method claim 10, as amended by the December 9, 2021 Ex Parte Reexamination Certificate. (Compl. ¶19).
• The essential steps of amended Claim 10 include:
  • Receiving an electronic message and identifying it as a "forced message alert" containing a message and a software packet.
  • Automatically transmitting an acknowledgment of receipt back to the sender.
  • Triggering software to "take control" of the recipient device to display the message content and a "required response list."
  • Requiring the user to transmit a "selected required response from the response list" to clear the alert and release control of the device.
  • Displaying the received response on the sender's device.
  • Providing a list of which recipients have acknowledged receipt and responded.
  • Displaying a geographical map on the sender's device showing georeferenced entities.
  • Obtaining location and status data from the recipient device.
  • Presenting a symbol for the recipient device on the geographical map at its correct location.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities include Google mobile devices (e.g., Pixel and Nexus phones), the Android operating system, and associated services such as Google Find My Device, Google Play Services, Google Maps, and Google Messages (collectively, "Accused Products"). (Compl. ¶14).

Functionality and Market Context

• The complaint focuses on the functionality of the Accused Products that allows users to remotely locate, control, and interact with their devices, primarily through the "Find My Device" service. (Compl. ¶¶15-16). This service enables a user to see their device's location on a map and send commands to it, such as "Play sound" (which rings the device at full volume for five minutes, even if on silent) and "Secure device" (which locks the device and allows the user to display a message and phone number on the lock screen). (Compl. p. 12). A screenshot from Google's promotional materials shows the interface for locating a lost Android device, including options to "PLAY SOUND," "SECURE DEVICE," and "ERASE DEVICE." (Compl. p. 7).

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; [and] identifying said electronic message as a forced message alert... which triggers the activation of the forced message alert software application program...	An accused Android device receives a command from Google's servers (e.g., a "Play Sound" command from the Find My Device service) and the Android OS identifies it as a specific system-level action.	¶22	col. 8:17-25
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...	The "Find My Device" service displays the device's status (e.g., "Last seen just now"), allegedly constituting an acknowledgment, which then takes control by locking the screen or playing a sound.	¶22; p. 14	col. 8:25-43
...and show the content of the text message and a required response list on the display... or to repeat audibly the content of the voice message on the speakers... and show the required response list...	The "Secure Device" feature displays a custom message on the lock screen. The "Play Sound" feature audibly rings the phone. These actions are alleged to correspond to showing a message and response list. A visual depicts the 'Play a sound' interface.	¶22; p. 13	col. 8:43-51
transmitting a selected required response from the response list in order to allow the... response list to be cleared from the recipient's cell phone display... causing the forced message alert software to release control of the recipient PDA/cell phone...	A user must perform an action to clear the alert, such as pressing the power key to stop the sound from the "Play Sound" command or entering a PIN to unlock a device secured by the "Secure Device" command.	¶22; p. 13	col. 8:51-58
displaying the response received from the PDA cell phone... on the sender of the forced alert PDA/cell phone; and providing a list of the recipient PDA/cell phones that have automatically acknowledged receipt...	The sender's Find My Device interface displays a list of devices associated with the account and their current status, such as whether a sound is actively playing.	¶22; p. 12	col. 7:1-15
displaying a geographical map with georeferenced entities on the display of the sender... obtaining location and status data... and presenting a recipient symbol on the geographical map...	The Find My Device interface on the sender's side displays a map with a pin showing the current or last known location of the recipient device, along with status data like battery level. A screenshot illustrates the device location on a map.	¶22; p. 7	col. 6:22-40

Identified Points of Contention

• Scope Questions: A central dispute may be whether the actions required by the accused "Find My Device" service constitute a "required response list" as claimed. The patent describes a list of selectable choices (e.g., "will comply"), whereas the accused functionality requires a physical action (pressing a power button) or entering a pre-existing credential (PIN). The court will have to determine if these actions fall within the scope of the claim term.
• Technical Questions: The infringement analysis raises the question of whether Google's server-based architecture performs the specific sequence of steps mandated by the claim. Claim 10 requires the recipient's "automatic acknowledgment" to trigger the sender-side software to take control. It is a question of fact whether Google's system, likely orchestrated by a central server, operates in this precise manner or if the server independently manages the interaction.

V. Key Claim Terms for Construction

The Term: "required response list"

• Context and Importance: This term is critical because the core of the invention is compelling a user to select from a set of predefined responses to clear an alert. The infringement case depends on whether the actions a user takes to dismiss a "Find My Device" alert (e.g., pressing the power button to stop a sound) qualify as selecting from such a "list."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The parties may argue that any set of mandatory actions presented to the user to clear an alert functions as a "response list," even if not displayed as a traditional menu.
  • Evidence for a Narrower Interpretation: The specification repeatedly refers to a "list" being "shown on the display" and a user "select[ing] a reply from this list," which suggests a displayed menu of options. ('970 Patent, col. 7:22-25). The patent also describes default military-style responses like "'will comply,' 'will not comply,' and 'have complied,'" which reinforces the idea of a pre-defined, selectable menu of choices. ('970 Patent, col. 7:29-32).

The Term: "transmitting an automatic acknowledgment of receipt... which triggers the forced message alert software application program to take control"

• Context and Importance: This limitation defines a specific cause-and-effect relationship in the system's architecture. Practitioners may focus on this term because Google's cloud-based architecture may not map directly onto the peer-to-peer or client-server-client control flow described in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that any sequence where an acknowledgment is sent and control is subsequently taken satisfies this element, regardless of the intermediate server architecture.
  • Evidence for a Narrower Interpretation: The claim language and the specification ('970 Patent, col. 11:1-5) suggest a direct sequence: the recipient device sends an ACK, which is received by the sender device, which in turn triggers the sender's software to initiate control. Evidence that a central Google server orchestrates the entire process independently could support an argument for non-infringement.

VI. Other Allegations

Indirect Infringement

• The complaint alleges inducement of infringement, stating that Google provides instructions, user guides, and support webpages that actively encourage and instruct customers to use the accused features (e.g., "Find My Device") in a manner that directly infringes claim 10. (Compl. ¶¶20-21).

Willful Infringement

• The complaint alleges willfulness based on knowledge of infringement acquired "at least as of the date of this Complaint." (Compl. ¶20). It further alleges that Google "knew or should have known" its actions "constituted an unjustifiably high risk of infringement," tracking the legal standard for willfulness. (Compl. ¶25).

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

• A core issue will be one of definitional scope: can the term "required response list," which the patent illustrates with selectable text options, be construed to cover the physical actions (e.g., pressing a power button) or credential entries (e.g., entering a PIN) required to dismiss alerts in the accused "Find My Device" service?
• A key evidentiary question will be one of architectural and functional congruence: does Google's server-centric system for remote device management perform the specific, sequential control flow recited in claim 10—particularly the step where an automatic acknowledgment from the recipient device triggers the sender's software to take control—or is there a fundamental mismatch in technical operation?
• The outcome of the post-grant proceedings, which resulted in the cancellation of several claims and the amendment of the asserted claim to include mapping and location features, will be central. A key question will be how this prosecution history affects the construction of the surviving claim terms and the patent's overall scope.