Batia Infotech v. Disintermediation Services Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Batia Infotech (California)
  • Defendant: Disintermediation Services, Inc. (Delaware)
  • Plaintiff’s Counsel: Lamkin IP Defense
• Case Identification: 2:23-cv-02721, C.D. Cal., 04/11/2023
• Venue Allegations: Plaintiff Batia Infotech ("Batia") alleges venue is proper in the Central District of California because the alleged "use" of the patented technology by Batia occurs in the district and because Defendant Disintermediation Services, Inc. ("DIS") has engaged in extensive discussions related to the dispute with Batia, a California corporation.
• Core Dispute: Batia seeks a declaratory judgment that its "ProProfs Chat" product does not infringe four of DIS's patents and that the patents are invalid.
• Technical Context: The technology concerns intermediary systems that manage real-time communications between an initiator (e.g., a website visitor) and various potential responders who may be using different, non-interoperable communication platforms (e.g., SMS, instant messaging).
• Key Procedural History: This declaratory judgment action follows a prior lawsuit filed by DIS against Batia in the Western District of Texas, which DIS voluntarily dismissed after Batia challenged the venue. Batia filed this action on the same day that DIS allegedly contacted Batia to discuss refiling the complaint, creating an immediate controversy. The complaint also raises a potential issue with DIS's standing to sue, alleging the inventors may have had a pre-existing obligation to assign the patents to their employer, Microsoft.

Case Timeline

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

U.S. Patent No. 11,240,183 - "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms"

• Patent Identification: U.S. Patent No. 11,240,183, "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued February 1, 2022. (’183 Patent, front page).

The Invention Explained

• Problem Addressed: The patent's background section notes that different modes of real-time communication (RTC), such as SMS and instant messaging, are "not interconnected," meaning users on different platforms cannot easily communicate with each other. (’183 Patent, col. 2:2-5).
• The Patented Solution: The invention proposes a central server-based system that acts as an intermediary. The system receives a communication from an "initiator" (e.g., a website user), identifies potential "responders," and routes the communication to them using their respective native protocols (e.g., SMS, XMPP, SIP), as shown in Figure 1. (’183 Patent, Abstract; Fig. 1). The system then manages the conversation by mapping responses back to the initiator, allowing for a seamless dialogue between parties on otherwise incompatible platforms. (’183 Patent, col. 4:5-10).
• Technical Importance: This architecture enables a business to present a single, unified chat interface to customers on its website while allowing its employees to respond using a variety of disparate devices and communication applications. (’183 Patent, col. 4:46-59).

Key Claims at a Glance

• The complaint references independent claim 1 as an example of non-infringement (Compl. ¶45).
• Essential elements of independent claim 1 include a system with an electronic processor configured to: receive a request from an unauthenticated web user; send a question from a "first responder"; receive a first communication (an answer) from the user; end the conversation with the first responder; identify a "second responder" different from the first; determine the second responder's communication protocol and address; send the first communication to the second responder; and route the reply from the second responder back to the web user anonymously. (’183 Patent, col. 13:3-14:1).
• The complaint seeks a declaration of non-infringement for all claims of the patent (Compl. ¶44).

U.S. Patent No. 11,336,597 - "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms"

• Patent Identification: U.S. Patent No. 11,336,597, "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued May 17, 2022. (’597 Patent, front page).

The Invention Explained

• Problem Addressed: The patent, which shares a specification with the other patents-in-suit, addresses the problem that users of different real-time communication systems cannot directly interact because their underlying protocols are incompatible. (Compl. ¶34; ’597 Patent, col. 2:3-6).
• The Patented Solution: The invention is an intermediary communication system that receives a request from a web browser user, determines a conversation identifier, identifies a suitable responder, and then relays communications back and forth, translating between protocols as needed. (’597 Patent, Abstract). The detailed description explains that this allows for a "two way conversation, all while providing optional anonymity to either or both parties." (’597 Patent, col. 4:55-59).
• Technical Importance: This technology facilitates real-time customer support by connecting web-based customers with support agents who may be using mobile or desktop applications that do not share a common communication platform with the customer's web browser. (’597 Patent, col. 4:48-59).

Key Claims at a Glance

• The complaint references independent claim 1 as an example of non-infringement (Compl. ¶51).
• Essential elements of independent claim 1 include a system with an electronic processor configured to: receive a communication request from an unauthenticated web user; determine a conversation identifier; identify a second responder different from a first responder; determine the second responder's communication protocol; send the user's communication to the second responder; and map the reply back to the web user. (’597 Patent, col. 13:5-14:2).
• The complaint seeks a declaration of non-infringement for all claims of the patent (Compl. ¶50).

U.S. Patent No. 11,349,787 - "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms"

• Patent Identification: U.S. Patent No. 11,349,787, "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued May 31, 2022.
• Technology Synopsis: The patent describes an intermediary system to bridge disparate real-time communication platforms, solving the problem of their lack of interoperability (’787 Patent, col. 2:3-6). The invention focuses on using a "persistent data store" to store associations between a request for information, a user's communication, and a conversation identifier, allowing the system to retrieve and manage the conversation history. (’787 Patent, Abstract; Compl. ¶58).
• Asserted Claims: The complaint references independent claim 1 as an example of non-infringement (Compl. ¶57).
• Accused Features: Batia's "ProProfs Chat" product is alleged not to infringe because it purportedly does not perform the claimed steps of storing first and second associations in a persistent data store and later retrieving the conversation using the conversation identifier (Compl. ¶58, ¶59).

U.S. Patent No. 11,418,466 - "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms"

• Patent Identification: U.S. Patent No. 11,418,466, "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued August 16, 2022.
• Technology Synopsis: This patent, part of the same family, also addresses the problem of disconnected real-time communication systems (’466 Patent, col. 2:3-6). The inventive concept focuses on managing a conversation between a first user and a second user by determining a "second active communication protocol" for the second user that is different from the first user's protocol, and then sending the communication to the second user's device via that different protocol. (’466 Patent, Abstract; Compl. ¶64).
• Asserted Claims: The complaint references independent claim 1 as an example of non-infringement (Compl. ¶63).
• Accused Features: Batia's "ProProfs Chat" product is alleged not to infringe because it purportedly does not perform the claimed steps of determining a second, different communication protocol for a second user and sending communications via that protocol (Compl. ¶64, ¶65).

III. The Accused Instrumentality

Product Identification

• Batia's "ProProfs Chat" product (Compl. ¶42).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the specific functionality of the ProProfs Chat product. It focuses its non-infringement arguments on the high-level assertion that Batia, as a software provider, "does not make, use, or sell electronic processors" and that its product does not perform the specific operations recited in the claims (Compl. ¶40, ¶42, ¶47). No specific details about the product's architecture or features are provided.

Visual Evidence

• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’183 Patent Infringement Allegations

’597 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The complaint's primary argument is that Batia "does not make, use, or sell electronic processors" (Compl. ¶40). This raises the question of whether providing a Software-as-a-Service (SaaS) product constitutes "making, using, or selling" a claimed "system" that comprises "an electronic processor." The resolution will depend on how the court construes the claim term and applies it to the actions of a SaaS provider.
• Technical Questions: A factual dispute will concern whether the ProProfs Chat product architecture actually performs the specific steps recited in the claims, such as identifying a second responder distinct from a first responder and routing communications based on differing protocols. The complaint asserts a lack of evidence for infringement but provides no technical counter-evidence regarding its own product's operation (Compl. ¶48, ¶54).

V. Key Claim Terms for Construction

• The Term: "an electronic processor"
• Context and Importance: This term is the foundation of Batia's primary non-infringement theory. Batia contends that as a software company, it does not "make, use, or sell electronic processors" (Compl. ¶40). Practitioners may focus on this term because its construction will be dispositive; if construed narrowly to mean only a physical hardware component, it may be difficult to prove direct infringement by a SaaS provider like Batia.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint notes the specification does not explicitly define the term (Compl. ¶38). The patent's summary and description focus on the functions performed by a "server," and the specification states the invention can be embodied in "computer-readable media configured to perform the actions of the method," which may support an interpretation where providing the software that configures a processor satisfies this element (’183 Patent, col. 2:39-41, col. 4:41-44).
  • Evidence for a Narrower Interpretation: The specification includes Figure 4, a block diagram of a "computer system" (400) that explicitly depicts a tangible "PROCESSOR" (410) as a hardware component connected via a bus to other components. This specific embodiment could be used to argue that "an electronic processor" must be a tangible hardware unit, which Batia does not sell. (’183 Patent, Fig. 4; col. 12:36-44).

VI. Other Allegations

• Lack of Standing: The complaint raises a threshold challenge to DIS's right to sue, alleging that the inventors were employed by Microsoft when the invention was conceived and may have been subject to an employment agreement requiring assignment of the invention to Microsoft. If Microsoft is a co-owner, DIS may lack standing to sue alone (Compl. ¶¶ 19-22).
• Invalidity (Improper Claiming): Batia alleges that the claims of the patents-in-suit are invalid for being indefinite under 35 U.S.C. § 112. The theory is that the claims improperly mix two statutory classes of invention (apparatus and method) by claiming a system ("an electronic processor configured to...") that is defined by the actions it performs ("receive... send... identify..."), citing the Federal Circuit's decision in IPXL Holdings (Compl. ¶¶ 68-69).
• Invalidity (Patent Ineligibility): Batia alleges the claims are invalid under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter, presumably by claiming an abstract idea (Compl. ¶71). The complaint incorporates by reference a motion to dismiss from an unrelated case to support this allegation (Compl. ¶71).

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

• A threshold issue will be one of ownership and standing: does DIS have sole ownership of the patents-in-suit, or did the inventors' employment with Microsoft create a co-ownership situation that deprives DIS of the right to unilaterally enforce the patents?
• A central infringement issue will be one of definitional scope: can the claim term "a system comprising... an electronic processor" be construed to read on the provision of a cloud-based software service, or is it limited to the sale or use of a tangible hardware system, which Batia contends it does not provide?
• Key validity questions will focus on claim drafting and eligibility: are the claims fatally indefinite for improperly mixing apparatus and method limitations in a single claim, and are they directed to the patent-ineligible abstract idea of intermediating communication without adding a sufficient inventive concept?