throbber
Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 1 of 14 PageID #: 1
`
` 
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`AGIS SOFTWARE DEVELOPMENT
`LLC
`
`
`Plaintiff,
`
`
`
`v.
`
`
`WAZE MOBILE LIMITED,
`
`
`Defendant.
`
`
`
`Case No. 2:19-cv-359
`
`JURY TRIAL DEMANDED
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`
`
`Plaintiff, AGIS Software Development LLC (“AGIS Software” or “Plaintiff”) files this
`
`original Complaint against Defendant Waze Mobile Limited (“Defendant” or “Waze”) for patent
`
`infringement under 35 U.S.C. § 271 and alleges as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff AGIS Software is a limited liability company organized and existing
`
`under the laws of the State of Texas, and maintains its principal place of business at 100 W.
`
`Houston Street, Marshall, Texas 75670. AGIS Software is the owner of all right, title, and
`
`interest in and to U.S. Patent Nos. 9,820,123 and 9,749,829 (the “Patents-in-Suit”).
`
`2.
`
`Defendant Waze is an Israeli corporation and maintains a place of business at 98
`
`Alon Igal, 6789141, Tel Aviv Jaffa, Israel. Upon information and belief, Waze does business in
`
`Texas, directly or through intermediaries, and offers its products and/or services, including those
`
`accused herein of infringement, to customers and potential customers located in Texas, including
`
`in the judicial Eastern District of Texas.
`
` 
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 2 of 14 PageID #: 2
`
` 
`
`JURISDICTION AND VENUE
`
`3.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States, 35 U.S.C. §§ 1, et seq. This Court has jurisdiction over this action pursuant to
`
`28 U.S.C. §§ 1331, 1338(a), and 1367.
`
`4.
`
`This Court has personal jurisdiction over Defendant. Defendant conducts
`
`business and has committed acts of patent infringement and/or has induced acts of patent
`
`infringement by others in this Judicial District and/or has contributed to patent infringement by
`
`others in this Judicial District, the State of Texas, and elsewhere in the United States.
`
`5.
`
`Venue is proper in this Judicial District pursuant to 28 U.S.C. § 1391 because,
`
`among other things, the Defendant is a foreign entity not resident in the United States, and thus
`
`venue may be laid in any Judicial District pursuant to 28 U.S.C. § 1391(c)(3).
`
`6.
`
`Defendant is subject to this Court’s jurisdiction pursuant to due process and/or the
`
`Texas Long Arm Statute due at least to its substantial business in the State of Texas and this
`
`Judicial District, including (a) at least part of their past infringing activities, (b) regularly doing
`
`or soliciting business in Texas, and/or (c) engaging in persistent conduct and/or deriving
`
`substantial revenue from goods and services provided to customers in Texas.
`
`PATENTS-IN-SUIT
`
`7.
`
`On November 14, 2017, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 9,820,123 (the “’123 Patent”) entitled “Method to Provide Ad Hoc
`
`and Password Protected Digital and Voice Networks.” A true and correct copy of the ’123
`
`Patent is attached hereto as Exhibit A.
`
`8.
`
`On August 29, 2017, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 9,749,829 (the “’829 Patent”) entitled “Method to Provide Ad Hoc
`
`2
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 3 of 14 PageID #: 3
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` 
`
`and Password Protected Digital and Voice Networks.” A true and correct copy of the ’829
`
`Patent is attached hereto as Exhibit B.
`
`FACTUAL ALLEGATIONS
`
`9.
`
`Malcolm K. “Cap” Beyer, Jr., a graduate of the United States Naval Academy and
`
`a former U.S. Marine, is the CEO of AGIS Software and a named inventor of the AGIS patent
`
`portfolio. Mr. Beyer founded Advanced Ground Information Systems, Inc. (“AGIS, Inc.”)
`
`shortly after the September 11, 2001 terrorist attacks because he believed that many first-
`
`responder and civilian lives could have been saved through the implementation of a better
`
`communication system. He envisioned and developed a new communication system that would
`
`use integrated software and hardware components on mobile devices to give users situational
`
`awareness superior to systems provided by conventional military and first-responder radio
`
`systems.
`
`10.
`
`AGIS, Inc. developed prototypes that matured into its LifeRing system. LifeRing
`
`provides first-responders, law enforcement, and military personnel with what is essentially a
`
`tactical operations center built into hand-held mobile devices. Using GPS-based location
`
`technology and existing or special-purpose cellular communication networks, LifeRing users can
`
`exchange location, heading, speed, and other information with other members of a group, view
`
`each other’s locations on maps and satellite images, and rapidly communicate and coordinate
`
`their efforts.
`
`11.
`
`AGIS Software licenses its patent portfolio, including the ’123 and ’829 Patents,
`
`to AGIS, Inc. AGIS, Inc.’s LifeRing product practices one or more of the patents in the AGIS
`
`portfolio and AGIS, Inc. has marked its products accordingly.
`
`3
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 4 of 14 PageID #: 4
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` 
`
`12.
`
`AGIS Software and all previous assignees of the Patents-in-Suit have complied
`
`with the requirements of 35 U.S.C. § 287(a).
`
`13.
`
`Defendant makes, uses, sells, offers for sale, distributes, and/or imports into the
`
`United States map-based communication applications and/or features such as Waze, among other
`
`relevant applications and/or features. The Accused Products include software including, but not
`
`limited to, the above-listed applications and/or features as components of its operating system
`
`and as downloads from a pre-installed application store, such as Google’s Play Store or Apple’s
`
`App Store. The Accused Products include functionality that allows users to view each other’s
`
`locations on a map and engage in communication including text, voice, and multimedia-based
`
`communication. Additionally, the users may form groups that include their own devices in order
`
`to track their own lost or stolen devices, as shown below.
`
`COUNT I
`(Infringement of the ’123 Patent)
`
`14.
`
`Paragraphs 1 through 14 are incorporated herein by reference as if fully set forth
`
`in their entireties.
`
`15.
`
`AGIS Software has not licensed or otherwise authorized Defendant to make, use,
`
`offer for sale, sell, or import any Accused Products and/or products that embody the inventions
`
`of the ’123 Patent.
`
`16.
`
`Defendant has and continues to directly infringe at least claim 1 of the ’123
`
`Patent, either literally or under the doctrine of equivalents, by making, using, offering to sell,
`
`selling and/or importing into the United States the Accused Products without authority and in
`
`violation of 35 U.S.C. § 271(a).
`
`17.
`
`Defendant has and continues to indirectly infringe at least claim 1 of the ’123
`
`Patent by actively, knowingly, and intentionally inducing others to directly infringe, either
`
`4
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 5 of 14 PageID #: 5
`
` 
`
`literally or under the doctrine of equivalents, by making, using, offering to sell, selling and/or
`
`importing into the United States the Accused Products and by instructing users of the Accused
`
`Products to perform methods claimed in the ’123 Patent. For example, Defendant, with
`
`knowledge that the Accused Products infringe the ’123 Patent at least as of the date of this
`
`Complaint, actively, knowingly, and intentionally induced, and continues to actively, knowingly,
`
`and intentionally induce direct infringement of the ’123 Patent.
`
`18.
`
`For example, Defendant has indirectly infringed and continues to indirectly
`
`infringe at least claim 1 of the ’123 Patent in the United States because Defendant’s customers
`
`use the Accused Products, in accordance with Defendant’s instructions and thereby directly
`
`infringe at least one claim of the ’123 Patent in violation of 35 U.S.C. § 271. Defendant directly
`
`and/or indirectly intentionally instructs its customers to infringe through training videos,
`
`demonstrations, brochures, installations and/or user guides such as those located at one or more
`
`of the following: https://www.waze.com/ and https://support.google.com/waze/, and Waze
`
`agents and representatives located within this Judicial District. Defendant is thereby liable for
`
`infringement of the ’123 Patent under 35 U.S.C. § 271(b).
`
`19.
`
`For example, Defendant’s Accused Products are downloaded onto mobile devices
`
`so that users can share their location and view other users’ locations on a map and to
`
`communicate with those users via the Waze app (as shown below).
`
`5
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 6 of 14 PageID #: 6
`Case 2:19-cv-00359—JRG Document 1 Filed 11/04/19 Page 6 of 14 PagelD #: 6
`
` 
`
`Communicate with friends in Waze
`
`Send location
`
`Next: Send a message to a friend >
`
`Send a location from your Favorites and History when you follow the steps below.
`
`1. Tap Search Q.
`2. Tap the three dots : on Android or
`
`on iOS next to Favorite or address from your history.
`
`3. Tap Send location a.
`a. To send within the app simply select the contact(s) you would like to share the drive with and tap Send.
`
`b. To share your location as a text message. email or copy the link, tap More.
`
`Communicate with friends in Waze
`
`Send a message to a friend
`
`Connect with Facebook and send a message or friendly Beep Beep to say hi to a friend in Waze.
`
`To send a message to a friend:
`
`1. Tap the Menu Q and then tap your name for My Waze.
`2. Tap My friends.
`
`3. Tap the friend you'd like to message (friend has to be online).
`
`4. Tap Message, type your message and tap Send.
`
`To send a Beep Beep to a friend:
`
`1. Tap the Menu Q and then tap your name for My Waze.
`2. Tap My friends.
`
`3. Scroll down to the friend you'd like to beep.
`
`4. To send a beep either:
`
`a. Tap the friend's name and tap Beep Beep .13.
`
`b. Swipe to the left over your friend's name and tap Beep Beep at.
`
`
`
`6
`
`
`
`
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 7 of 14 PageID #: 7
`
` 
`
`Source:
`
`https://support.google.com/waze/answer/6285548?hl=en&ref_topic=6273020&visit_id=6370503
`
`20806903246-2617070820&rd=1.
`
`20.
`
`The Accused Products further facilitate participation in the groups by
`
`communicating with one or more servers and sending to and receiving location information, as
`
`depicted below. (See, e.g., https://wazeopedia.waze.com/wiki/USA/Routing_server).
`
`
`
`21.
`
`This location information is presented on interactive displays on the users’ mobile
`
`devices through the Accused Product which includes interactive maps and a plurality of user
`
`selectable symbols corresponding to other devices. These symbols are positioned on the map at
`
`positions corresponding to the locations of the other devices, as depicted below. (e.g.,
`
`https://www.youtube.com/watch?v=ljjyVnSJukE).
`
`7
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 8 of 14 PageID #: 8
`
` 
`
`
`
`22.
`
`The exemplary Accused Products are further programmed to permit interaction
`
`with the display where a user may select one or more symbols, and where the exemplary
`
`Accused Products further permit data to be sent to other devices based on that interaction.
`
`23.
`
`AGIS Software has suffered damages as a result of Defendant’s direct and
`
`indirect infringement of the ’123 Patent in an amount to be proved at trial.
`
`24.
`
`AGIS Software has suffered, and will continue to suffer, irreparable harm as a
`
`result of Defendant’s infringement of the ’123 Patent for which there is no adequate remedy at
`
`law, unless Defendant’s infringement is enjoined by this Court.
`
`25.
`
`Defendant has committed and continues to commit acts of infringement that
`
`Defendant actually knew or should have known constituted an unjustifiably high risk of
`
`infringement of at least one valid and enforceable claim of the ’123 Patent. Defendant’s
`
`8
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 9 of 14 PageID #: 9
`
` 
`
`infringement of the ’123 Patent has been and continues to be willful, entitling AGIS Software to
`
`an award of treble damages, reasonable attorney fees, and costs in bringing this action.
`
`COUNT II
`(Infringement of the ’829 Patent)
`
`26.
`
`Paragraphs 1 through 14 are incorporated herein by reference as if fully set forth
`
`in their entireties.
`
`27.
`
`AGIS Software has not licensed or otherwise authorized Defendant to make, use,
`
`offer for sale, sell, or import any Accused Products and/or products that embody the inventions
`
`of the ’829 Patent.
`
`28.
`
`Defendant has and continues to directly infringe at least claim 68 of the ’829
`
`Patent, either literally or under the doctrine of equivalents, by making, using, offering to sell,
`
`selling and/or importing into the United States the Accused Products without authority and in
`
`violation of 35 U.S.C. § 271(a).
`
`29.
`
`Defendant has and continues to indirectly infringe at least claim 68 of the ’829
`
`Patent by actively, knowingly, and intentionally inducing others to directly infringe, either
`
`literally or under the doctrine of equivalents, by making, using, offering to sell, selling and/or
`
`importing into the United States the Accused Products and by instructing users of the Accused
`
`Products to perform methods claimed in the ’829 Patent. For example, Defendant, with
`
`knowledge that the Accused Products infringe the ’829 Patent at least as of the date of this
`
`Complaint, actively, knowingly, and intentionally induced, and continues to actively, knowingly,
`
`and intentionally induce direct infringement of the ’829 Patent.
`
`30.
`
`For example, Defendant has indirectly infringed and continues to indirectly
`
`infringe at least claim 68 of the ’829 Patent in the United States because Defendant’s customers
`
`use the Accused Products, in accordance with Defendant’s instructions and thereby directly
`
`9
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 10 of 14 PageID #: 10
`
` 
`
`infringe at least one claim of the ’829 Patent in violation of 35 U.S.C. § 271. Defendant directly
`
`and/or indirectly intentionally instructs its customers to infringe through training videos,
`
`demonstrations, brochures, installations and/or user guides such as those located at one or more
`
`of the following: https://www.waze.com/ and https://support.google.com/waze/, and Waze
`
`agents and representatives located within this Judicial District. Defendant is thereby liable for
`
`infringement of the ’829 Patent under 35 U.S.C. § 271(b).
`
`31.
`
`For example, Defendant’s Accused Products are downloaded onto mobile
`
`devices, which allow users to perform remote control operations on other devices, share their
`
`location and view other users’ locations on a map and to communicate with those users via the
`
`Waze app (as shown below).
`
`
`
`10
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 11 of 14 PageID #: 11
`
` 
`
`
`
`
`
`Source:
`
`https://support.google.com/waze/answer/6285548?hl=en&ref_topic=6273020&visit_id=6370503
`
`20806903246-2617070820&rd=1.
`
`32.
`
`This location information is presented on interactive displays on the users’ mobile
`
`devices through the Accused Product which includes interactive maps and a plurality of user
`
`selectable symbols corresponding to other devices. These symbols are positioned on the map at
`
`positions corresponding to the locations of the other devices, as depicted below. (e.g.,
`
`https://www.youtube.com/watch?v=ljjyVnSJukE.)
`
`11
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 12 of 14 PageID #: 12
`
` 
`
`
`
`33.
`
`AGIS Software has suffered damages as a result of Defendant’s direct and
`
`indirect infringement of the ’829 Patent in an amount to be proved at trial.
`
`34.
`
`AGIS Software has suffered, and will continue to suffer, irreparable harm as a
`
`result of Defendant’s infringement of the ’829 Patent for which there is no adequate remedy at
`
`law, unless Defendant’s infringement is enjoined by this Court.
`
`35.
`
`Defendant has committed and continues to commit acts of infringement that
`
`Defendant actually knew or should have known constituted an unjustifiably high risk of
`
`infringement of at least one valid and enforceable claim of the ’829 Patent. Defendant’s
`
`infringement of the ’829 Patent has been and continues to be willful, entitling AGIS Software to
`
`an award of treble damages, reasonable attorney fees, and costs in bringing this action.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff hereby demands a jury for all issues so triable.
`
`12
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 13 of 14 PageID #: 13
`
` 
`
`PRAYER FOR RELIEF
`
`WHEREFORE, AGIS Software prays for relief against Defendant as follows:
`
`a.
`
`Entry of judgment declaring that Defendant has directly and/or indirectly
`
`infringed one or more claims of each of the Patents-in-Suit;
`
`b.
`
`Entry of judgment declaring that Defendant’s infringement of the Patents-in-Suit
`
`has been willful and deliberate;
`
`c.
`
`An order pursuant to 35 U.S.C. § 283 permanently enjoining Defendant, its
`
`officers, agents, servants, employees, attorneys, and those persons in active concert or
`
`participation with it, from further acts of infringement of the Patents-in-Suit;
`
`d.
`
`An order awarding damages sufficient to compensate AGIS Software for
`
`Defendant’s infringement of the Patents-in-Suit, but in no event less than a reasonable royalty,
`
`together with interest and costs;
`
`e.
`
`An order awarding AGIS Software treble damages under 35 U.S.C. § 284 as a
`
`result of Defendant’s willful and deliberate infringement of the Patents-in-Suit;
`
`f.
`
`Entry of judgment declaring that this case is exceptional and awarding AGIS
`
`Software its costs and reasonable attorney fees under 35 U.S.C. § 285; and
`
`g.
`
`Such other and further relief as the Court deems just and proper.
`
`Dated: November 4, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`MCKOOL SMITH, P.C.
`
`
`
` /s/ Samuel F. Baxter
`Samuel F. Baxter
`Texas State Bar No. 01938000
`sbaxter@mckoolsmith.com
`Jennifer L. Truelove
`Texas State Bar No. 24012906
`jtruelove@mckoolsmith.com
`MCKOOL SMITH, P.C.
`
`13
`
`

`

`Case 2:19-cv-00359-JRG Document 1 Filed 11/04/19 Page 14 of 14 PageID #: 14
`
` 
`
` 
`
`104 E. Houston Street, Suite 300
`Marshall, Texas 75670
`Telephone: (903) 923-9000
`Facsimile: (903) 923-9099
`
`Alfred R. Fabricant
`NY Bar No. 2219392
`Email: afabricant@brownrudnick.com
`Peter Lambrianakos
`NY Bar No. 2894392
`Email: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`NY Bar No. 4557435
`Email: vrubino@brownrudnick.com
`Alessandra C. Messing
`NY Bar No. 5040019
`Email: amessing@brownrudnick.com
`Enrique W. Iturralde
`NY Bar No. 5526280
`Email: eiturralde@brownrudnick.com
`BROWN RUDNICK LLP
`7 Times Square
`New York, NY 10036
`Telephone: (212) 209-4800
`Facsimile: (212) 209-4801
`
`ATTORNEYS FOR PLAINTIFF,
`AGIS SOFTWARE DEVELOPMENT
`LLC
`
`14
`
`

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