DCT
3:24-cv-06724
Lavoultcom LLC v. Meta Platforms Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: LaVoult.com, LLC (California)
- Defendant: Meta Platforms, Inc., Instagram LLC, and WhatsApp, Inc. (Delaware)
- Plaintiff’s Counsel: Technology & Innovation Law Group, PC; Pennington Oliak PLLC
- Case Identification: 5:24-cv-06724, N.D. Cal., 09/24/2024
- Venue Allegations: Venue is based on Defendants maintaining a regular and established place of business in the Northern District of California, including Meta's headquarters in Menlo Park, and on a substantial part of the events giving rise to the claims allegedly occurring in the district.
- Core Dispute: Plaintiff alleges that the "disappearing" or "vanish mode" messaging features in Defendant's Facebook Messenger, Instagram, and WhatsApp platforms infringe a patent related to a dual-mode communication system with a "confidential" messaging mode.
- Technical Context: The technology at issue is ephemeral messaging, a feature that allows users to send messages that are automatically deleted after a certain trigger, which has become a significant privacy and user-experience component in the social media and instant messaging markets.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant Meta with pre-suit notice of infringement via letters to its general counsel on November 10, 2023, and to its Deputy General Counsel on May 1, 2024. These allegations may be used to support claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2011-11-07 | ’594 Patent Priority Date |
| 2012-11-03 | ’594 Patent Application Filing Date |
| 2013 | Facebook launches cross-platform messaging |
| 2014-06-10 | ’594 Patent Issue Date |
| 2014 | Facebook acquires WhatsApp |
| 2016 | Facebook Messenger allegedly launches disappearing messaging |
| 2016 | Instagram allegedly launches disappearing messaging |
| 2023-11-10 | First pre-suit notice letter allegedly sent to Meta |
| 2024-05-01 | Second pre-suit notice letter allegedly sent to Meta |
| 2024-09-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,751,594 - "Messaging System," issued June 10, 2014
The Invention Explained
- Problem Addressed: The patent describes the privacy and confidentiality problems arising from the persistent nature of electronic messages, where users lose control over communications after they are sent, leaving a permanent record that can be accessed or shared indefinitely (Compl. ¶2; ’594 Patent, col. 1:22-27). It also identifies the shortcomings of prior art timed-deletion systems, which may not provide sufficient control or feedback to the sender (’594 Patent, col. 1:28-37).
- The Patented Solution: The invention proposes a communication method within a single software application that features two distinct modes: a "regular" mode where messages are stored in memory for later retrieval, and a "confidential" mode (’594 Patent, Abstract). In the confidential mode, the "history of the confidential message" is automatically deleted from both the sender's and receiver's devices—and is not permanently stored on a server—based on a trigger, such as one of the users exiting the session (’594 Patent, col. 7:10-14, 7:36-43; FIG. 3). This creates a mechanism for users to engage in ephemeral conversations that are designed to leave no retrievable trace.
- Technical Importance: The patented approach provides users with the ability to selectively control the permanence of their digital conversations on a per-session basis within a unified application, addressing a market demand for enhanced communication privacy (Compl. ¶¶3, 40).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶78).
- The essential elements of independent Claim 1 include:
- A communication method comprising switching between a first (regular) and second (confidential) mode of electronic messaging in a single software application.
- Receiving inputs for and sending a "regular message" in the first mode.
- Receiving inputs for and sending a "confidential message" in the second mode.
- Automatically and without user intervention, deleting a "history of the confidential message" on both the first and second users' devices.
- The deletion is triggered based on "at least one of the first user and the second user exiting the second mode of messaging."
- The regular message (first mode) is sent through a server and "saved in a memory."
- The confidential message (second mode) is sent through a server, with the data being displayed only until a user exits the mode.
- The complaint reserves the right to assert other claims of the ’594 patent (Compl. ¶93).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Meta's Facebook Messenger, Instagram, and WhatsApp messaging applications and services (Compl. ¶7).
Functionality and Market Context
- The complaint alleges that the accused applications provide a dual-mode communication system, with a standard chat mode and a "disappearing" or "vanish" mode (Compl. ¶¶79, 81). In Instagram's "vanish mode," content allegedly "disappears when someone leaves the chat or turns vanish mode off" (Compl. ¶79). Similarly, WhatsApp offers a "Disappearing Messages" feature (Compl. ¶98).
- These features are alleged to allow users to send messages that are automatically deleted, thereby providing the functionality of the patent's "confidential mode" (Compl. ¶¶87, 115).
- The complaint asserts that these platforms dominate the messaging market and that their growth is "directly attributable to the offering of disappearing messaging" (Compl. ¶67). The complaint includes a chart showing that WhatsApp and Facebook Messenger are two of the top three global mobile messenger apps by monthly active users as of January 2024 (Compl. p. 18).
IV. Analysis of Infringement Allegations
’594 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| switching between a first mode of electronic messaging and a second mode of electronic messaging while using a single software application... | Instagram and WhatsApp allegedly provide a normal/regular chat mode and a "vanish mode" or "Disappearing Messages" mode that users can switch between. | ¶¶79, 81, 103 | col. 8:55-61 |
| receiving inputs from...and sending the regular message...while in the first mode of messaging. | Users can compose and send standard, persistent messages in the default chat mode of the accused applications. | ¶¶82-83 | col. 8:62-66 |
| receiving inputs from...and sending the confidential message...while in the second mode of messaging. | Users can activate "vanish mode" or "Disappearing Messages," then compose and send ephemeral messages within that mode. | ¶¶84-85, 108 | col. 8:66-9:2 |
| automatically and without user intervention, deleting a history of the confidential message on the first electronic device and on the second electronic device based on at least one of the first user and the second user exiting the second mode of messaging... | Messages sent in "vanish mode" are allegedly automatically deleted when a user leaves the chat or turns the mode off. The complaint includes a screenshot of the WhatsApp interface for turning the "Disappearing messages" feature on or off. | ¶¶86-87, 104, 112; p. 26 | col. 9:3-7 |
| wherein the confidential message is only displayable before the history of the confidential message is deleted... | In "vanish mode," messages are allegedly visible only until the chat is closed or the mode is exited, after which they are deleted and no longer available. | ¶88 | col. 9:8-10 |
| wherein while in the first mode of messaging, a regular message is sent to the second user in data transmitted through a server and saved in a memory... | The complaint alleges that regular Instagram messages are relayed by a network, transmitted via a server, and stored on the user's device. | ¶89 | col. 9:11-13 |
| wherein while in the second mode of messaging, the confidential message is sent to the second user in data transmitted through the server, the data being displayed until at least one of the first user...exits the second mode... | Confidential messages are allegedly transmitted via a server and displayed only until a user leaves the chat or turns off the mode. The complaint provides a screenshot of the WhatsApp "Get started with disappearing messages" screen. | ¶90; p. 30 | col. 9:14-18 |
Identified Points of Contention:
- Scope Questions: The claim requires deletion based on a user "exiting the second mode of messaging." The complaint alleges this is met by leaving a chat, but also describes the accused WhatsApp feature as using timers (e.g., 24 hours, 7 days) (Compl. ¶105). A central question will be whether a time-based deletion mechanism falls within the scope of "exiting the mode," which the patent specification appears to depict as a discrete user action to end a session (’594 Patent, FIG. 3, step 237).
- Technical Questions: Claim 1 requires that regular messages be "saved in a memory." The complaint cites a third-party source stating Instagram direct messages "are stored on your device and nowhere else" (Compl. ¶89). This raises the question of whether device-only storage satisfies the "saved in a memory" limitation, or if the claim, by its structure, implies a more persistent, server-side storage for regular messages that is absent in the confidential mode.
V. Key Claim Terms for Construction
"exiting the second mode of messaging"
- Context and Importance: This phrase defines the trigger for the automatic deletion of confidential messages. The infringement analysis will depend heavily on whether the functionality of the accused products (e.g., timers, closing a chat window, "view once" deletion) aligns with this specific trigger. Practitioners may focus on this term because it appears to be the primary distinction from prior art timed-deletion systems.
- Evidence for a Broader Interpretation: The patent does not explicitly define "exiting." A party could argue that any user action that results in the termination of the confidential session, including closing the application or leaving a specific chat, constitutes "exiting."
- Evidence for a Narrower Interpretation: The patent’s flowchart (FIG. 3) shows a specific decision block for "USER ENDS SESSION" (step 237) that directly causes the message to be "IMMEDIATELY REMOVED FROM STORAGE" (step 239). This could support an interpretation that a specific, affirmative action to toggle the mode off is required, as opposed to a passive timer expiring or simply closing a chat window.
"deleting a history of the confidential message"
- Context and Importance: This term's definition is critical to determining what must be deleted to meet the claim limitation. Infringement may turn on whether deleting individual messages suffices, or if the entire conversation log from the confidential session must be purged.
- Evidence for a Broader Interpretation: The patent uses "message or messages" in the specification when describing deletion (e.g., ’594 Patent, col. 7:41), which could suggest that deleting even a single message's record constitutes deleting its "history."
- Evidence for a Narrower Interpretation: The use of the word "history" in the claim itself (col. 9:4) suggests more than a single message; it implies a record or log of the communication. A party could argue that systems that delete messages individually after a set time do not delete the "history" of the session in the manner claimed.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement by citing Meta's alleged provision of instructions to end-users on how to use the "disappearing messages" features through its help centers and other documentation (Compl. ¶¶136-138). It further alleges contributory infringement, asserting that the accused software features are material to the invention, are not staple articles of commerce, and are specially adapted for an infringing use (Compl. ¶¶140-141).
Willful Infringement
- Willfulness is alleged based on Meta's purported pre-suit knowledge of the ’594 patent. The complaint cites two specific notice letters sent to Meta's legal department on November 10, 2023, and May 1, 2024, and alleges that Meta’s continued infringement after receiving this notice is willful (Compl. ¶135).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can the claim limitation "exiting the second mode of messaging," which the patent specification links to a user "ending a session," be construed to cover the time-based or "view once" deletion mechanisms implemented in the accused products?
- A key evidentiary question will be one of technical implementation: does the storage architecture of Meta's platforms for regular messages meet the "saved in a memory" limitation of Claim 1, especially in light of complaint evidence suggesting device-only storage, or does this create a fundamental mismatch with the claim's requirements?
- The infringement analysis will likely turn on a functional distinction: do the accused products perform the claimed step of "deleting a history of the confidential message" on both users' devices, or do they merely delete individual messages in a way that falls outside the scope of what the patent claims?