Agis Software Development v. Kyocera — Dismissed With Prejudice After 416 Days
Agis Software Development, LLC filed suit against Kyocera Corp. in the Eastern District of Texas asserting five patents covering forced alert communications and ad hoc password-protected digital and voice networks. The case closed with prejudice after 416 days, with each party bearing its own costs — ending Agis’s ability to refile these exact claims against Kyocera.
Five-patent mobile communications dispute exits quietly in East Texas
On November 18, 2022, Agis Software Development, LLC filed a patent infringement complaint against Kyocera Corp. in the U.S. District Court for the Eastern District of Texas (Case No. 2:22-cv-00444), presided over by Chief Judge Rodney Gilstrap. Agis asserted five U.S. patents — US9445251B2, US8213970B2, US9467838B2, US9749829B2, and US9820123B2 — covering methods for forced interactive alert communications and ad hoc password-protected digital and voice networks, technologies central to mobile device and enterprise communication platforms.
The case terminated on January 8, 2024, when Agis filed a Notice of Dismissal With Prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(i). The court accepted the notice and formally dismissed all claims and causes of action with prejudice. Critically, each party was ordered to bear its own costs, expenses, and attorneys’ fees, suggesting no monetary settlement term was made part of the court record — though private arrangements between parties cannot be ruled out.
At 416 days, the case closed well before any trial or Markman hearing appears to have been decided, which is consistent with pre-trial settlement or licensing discussions concluding in the background. The with-prejudice dismissal is notable: Agis voluntarily and permanently relinquished its right to bring these specific claims against Kyocera again. What prompted that decision — whether licensing, commercial resolution, or patent validity concerns — is not reflected in the public record.
Filing to dismissal in 416 days
416 days — closed before trial, suggesting early negotiated resolution
Dismissed with prejudice: what the court order means for both parties
Rule 41(a)(1)(A)(i): plaintiff’s unilateral right to dismiss
Agis invoked FRCP 41(a)(1)(A)(i), which permits a plaintiff to dismiss an action without a court order before the defendant serves an answer or a motion for summary judgment. This procedural route requires minimal court involvement — the court here simply accepted and acknowledged the notice. It is one of the fastest exit routes available to a plaintiff in federal litigation.
Plaintiff-initiated exitWith prejudice: Agis’s claims against Kyocera are permanently closed
A dismissal with prejudice operates as a final adjudication on the merits, barring Agis from refiling the same patent infringement claims against Kyocera in any court. This is a meaningful concession by the plaintiff. By contrast, a dismissal without prejudice would have preserved Agis’s ability to refile. That Agis accepted with-prejudice terms suggests the dispute reached a definitive resolution — the nature of which is not disclosed in the public record.
Claims permanently barredEach party bears its own costs — no prevailing party declared
The court’s order that each party bear its own costs, expenses, and attorneys’ fees is standard in voluntary dismissal scenarios and does not imply either party prevailed. In U.S. patent litigation, cost awards against plaintiffs are reserved for exceptional cases under 35 U.S.C. § 285. The absence of a cost award here reflects the consensual nature of the exit, not a finding on the merits.
No fee-shifting appliedFive patents dropped simultaneously — scope of the surrender
Agis’s with-prejudice dismissal covered all five asserted patents at once: US9445251B2, US8213970B2, US9467838B2, US9749829B2, and US9820123B2. Dropping a multi-patent portfolio claim against a single defendant in a single notice is consistent with a comprehensive licensing resolution or a commercial decision to cease enforcement against Kyocera specifically. Whether these patents remain in active enforcement campaigns against other defendants is not addressed by this order.
All 5 patents released vs. KyoceraFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Agis Software Development, LLC | Company | Patent licensing entity — holder of US9445251B2 and 4 further mobile communication patentsSearch in Eureka ↗ |
| Defendant | Kyocera, Corp. | Company | Kyocera Corp. — multinational electronics and mobile device manufacturerSearch in Eureka ↗ |
| Plaintiff counsel | Alfred Ross Fabricant | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Enrique William Iturralde | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Justin Kurt Truelove | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Justine Minseon Park | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Peter Lambrianakos | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Vincent J. Rubino , III | Attorney | Counsel for Agis Software Development, LLCSearch in Eureka ↗ |
| Defendant counsel | Jose Luis Patino | Attorney | Counsel for Kyocera, Corp.Search in Eureka ↗ |
| Presiding judge | Judge Rodney Gilstrap | Chief Judge | Texas Eastern District Court — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The court’s order is purely administrative — it accepts Agis’s unilateral Rule 41(a)(1)(A)(i) notice and imposes no findings on patent validity, claim construction, or infringement. For Kyocera, the with-prejudice designation provides complete closure on these five patent claims from this plaintiff. For Agis, the order reflects a strategic choice to permanently relinquish these specific claims against Kyocera, likely following a resolution reached outside the public record. The denial of all pending relief as moot confirms no substantive rulings preceded this exit.
US9445251B2 and four further Agis mobile communication patents
The five asserted patents span two core technology domains: (1) methods for delivering forced alerts that require recipient interaction on mobile devices, and (2) methods for establishing ad hoc, password-protected digital and voice communication networks. US9445251B2 and US9749829B2 share application lineage through application no. 14/633804 and 14/633764 respectively, suggesting a common continuation family. US8213970B2, the earliest by application number (12/324122), anchors the portfolio’s foundational priority claims. Together, these patents cover infrastructure-level communication behaviours relevant to push notification systems, emergency alerting, and secure ad hoc network formation on mobile hardware.
For mobile device OEMs, network equipment providers, and enterprise communication platform developers, this portfolio represents a category of IP risk that is difficult to design around without careful claim analysis. Forced-alert and ad hoc network technologies underpin features found in modern smartphones, public safety devices, and field communication tools. Agis’s willingness to assert all five patents simultaneously against a major manufacturer like Kyocera signals that it views this portfolio as commercially viable for licensing. Whether validity challenges — particularly post-grant review at the USPTO — have been or could be mounted against these patents is a key strategic variable for any potential defendant.
Should your product team run an FTO against the Agis mobile alert patent portfolio?
Any company developing or deploying products with forced push notifications, interactive emergency alert systems, or ad hoc encrypted voice and data networks should treat this five-patent portfolio as a live FTO risk. Kyocera — a major device manufacturer — faced assertion of all five patents simultaneously, suggesting Agis views broad hardware and software implementations as within scope. R&D teams building public safety communication tools, enterprise messaging platforms, or mobile OS-level alert systems should specifically review US9445251B2 and US8213970B2 claim language before product launch or market expansion.
PatSnap Eureka’s FTO Search Agent can map the claims of US9445251B2 and its four co-asserted patents against your product’s technical architecture, flagging overlap and identifying prior art that may bear on validity. Claim monitoring across the Agis portfolio will also surface any new continuation applications that could extend enforcement reach. Given that this case resolved without any public claim construction ruling, the operative claim scope remains untested in court — making independent claim analysis especially important for companies in adjacent technology spaces.
Run a freedom-to-operate analysis on US9445251B2 to assess your product’s exposure
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What this case signals for the mobile communications IP landscape
Agis’s five-patent enforcement action against Kyocera reveals patterns worth tracking for any company operating in mobile alerting, push notification, or ad hoc network technology.
Agis runs a multi-defendant enforcement model — monitor all co-pending cases
Patent licensing entities like Agis typically file parallel or sequential suits across multiple defendants using the same patent portfolio. A with-prejudice dismissal against one defendant does not extinguish claims against others. Companies in the mobile communications and device space should audit whether they appear in co-pending Agis actions involving the same five patents.
East Texas remains a preferred venue for this plaintiff class
The Eastern District of Texas, under Chief Judge Gilstrap, continues to attract non-practising entity litigation at a disproportionate rate. Defendants in this district face predictable procedural timelines and Markman schedules. Understanding the local patent rules and Judge Gilstrap’s claim construction tendencies is operationally relevant for any Kyocera-sector peer served there.
Agis v Kyocera — key questions answered
The case was dismissed with prejudice on January 8, 2024, after Agis filed a voluntary notice of dismissal under FRCP 41(a)(1)(A)(i). All five asserted patents were released against Kyocera, each party bore its own costs, and no substantive rulings on validity or infringement were issued. The case ran for 416 days from filing to closure.
Agis asserted five U.S. patents: US9445251B2, US8213970B2, US9467838B2, US9749829B2, and US9820123B2. These patents cover methods for forced interactive alerts on mobile devices and methods for establishing ad hoc, password-protected digital and voice communication networks.
Dismissal with prejudice operates as a final adjudication on the merits, permanently barring Agis from refiling the same infringement claims against Kyocera based on these five patents. Unlike a without-prejudice dismissal, Agis cannot revive this action. The resolution likely reflects a private agreement, though no licensing terms appear in the public court record.
There was no court ruling on the merits. Agis voluntarily dismissed the case with prejudice, which — while permanently closing the claims against Kyocera — does not constitute a court judgment of non-infringement or invalidity. The outcome is practically favorable to Kyocera but is not a litigation ‘win’ in the adjudicated sense.
Agis was represented by Fabricant LLP (including attorneys Alfred Ross Fabricant, Peter Lambrianakos, Vincent J. Rubino III, Enrique William Iturralde, and Justine Minseon Park) and Truelove Law Firm (Justin Kurt Truelove). Kyocera was represented by Jose Luis Patino of Buchalter, A Professional Corporation.
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