DCT

1:22-cv-01490

Disintermediation Services Inc v. Mobilemonkey Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01490, D. Del., 11/14/2022
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and is therefore a resident of the district.
  • Core Dispute: Plaintiff alleges that Defendant’s omnichannel communication software infringes four patents related to systems for managing real-time conversations between an unauthenticated web user and multiple backend responders who may be using disparate communication protocols.
  • Technical Context: The technology at issue involves intermediary platforms that allow businesses to engage with anonymous website visitors, seamlessly handing off conversations between automated bots and human agents using different communication channels (e.g., web chat, SMS, instant messaging).
  • Key Procedural History: The four patents-in-suit belong to a single family and claim priority to a 2011 provisional application. The complaint alleges that this patent family has been forward-cited in at least 53 patent applications from major technology companies. Plaintiff also alleges it provided Defendant with pre-suit notice of U.S. Patent No. 11,240,183 via a letter and claim chart on March 2, 2022.

Case Timeline

Date Event
2011-10-17 Earliest Priority Date for all Patents-in-Suit (’183, ’597, ’787, ’466)
2020-09-29 '183 Patent Application Filed
2022-01-11 '597 and '787 Patent Applications Filed
2022-02-01 '183 Patent Issued
2022-03-02 Plaintiff sent notice letter regarding '183 Patent to Defendant
2022-05-10 '466 Patent Application Filed
2022-05-17 '597 Patent Issued
2022-05-31 '787 Patent Issued
2022-05-31 '466 Patent Issued
2022-11-14 Complaint Filed

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

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

  • Issued: February 1, 2022

The Invention Explained

  • Problem Addressed: The patent’s background section describes deficiencies in prior art real-time communication (RTC) systems, which required both parties to use a common protocol, for the initiator to know the recipient's address, and for both parties to be identified to each other ('183 Patent, col. 1:60-67; Compl. ¶37).
  • The Patented Solution: The invention is a system, acting as an intermediary proxy, that enables an anonymous, unauthenticated user on a website to communicate with one or more "responders" who may be using different communication methods (e.g., SMS, XMPP) ('183 Patent, col. 3:18-25). The system manages the conversation so the initiator sees a unified chat stream, and it can seamlessly hand off the conversation from a first responder to a second, different responder, all without revealing the responders' underlying contact information to the user ('183 Patent, col. 4:5-24; Compl. ¶38).
  • Technical Importance: This architecture aimed to solve the technical problem of bridging disparate communication platforms to create a seamless customer service experience, allowing, for instance, a conversation started with a website chatbot to be transferred to a human agent on a different platform with minimal disruption (Compl. ¶46).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶138).
  • Essential elements of Claim 1 include:
    • An electronic processor configured to receive a request from an unauthenticated user of a web browser.
    • Send a question from a first responder to the user.
    • Receive a first communication (an answer) from the user and send it to the first responder.
    • End the conversation with the first responder.
    • Identify, based on the user's communication, a second responder different from the first.
    • Determine the communication protocol and address of the second responder.
    • Send the user's first communication to the second responder.
    • Receive a reply from the second responder and map it back to the user's web browser, without including the second responder's communication address (Compl. ¶43; ’183 Patent, col. 13:1-43).
  • The complaint reserves the right to assert additional claims (Compl. ¶139).

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

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the '183 Patent, the '597 Patent addresses the same deficiencies in prior art RTC systems (Compl. ¶62; '597 Patent, col. 1:65-2:4).
  • The Patented Solution: The '597 Patent also describes an intermediary system for managing communications between an unauthenticated web user and multiple, disparate responders. The specification is described as "substantially identical" to that of the '183 Patent (Compl. ¶62). The focus remains on creating a seamless, unified conversation by an intermediary proxy that routes messages between different endpoints and protocols ('597 Patent, col. 7:16-24).
  • Technical Importance: The technology provides an improved computer architecture for tracking and transitioning conversations between different responders and communication modes, increasing system efficiency (Compl. ¶69).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶147).
  • Essential elements of Claim 1 include:
    • An electronic processor configured to receive a communication request from an unauthenticated user.
    • Send a request for information from a first responder to the user.
    • Receive a first communication from the user.
    • Identify, based on that communication, a second responder different from the first.
    • Determine a communication protocol of the second responder.
    • Send the first communication to the second responder based on that protocol.
    • Receive a reply from the second responder, map it using a conversation identifier, and send it to the user's web browser (Compl. ¶67; ’597 Patent, col. 13:6-40).
  • The complaint reserves the right to assert additional claims (Compl. ¶148).

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 (Compl. ¶86).
  • Technology Synopsis: As a continuation of the same family, this patent also addresses seamless communication for unauthenticated web users (Compl. ¶87). The invention focuses on providing an "uninterrupted conversational display" by using a persistent data store to save conversation history. This allows a user to continue a conversation even after reloading a webpage or navigating to a different page (Compl. ¶90, 92).
  • Asserted Claims: Independent Claim 1 (Compl. ¶155).
  • Accused Features: The complaint alleges infringement by MobileMonkey's communication system but does not specify which features are accused of meeting the '787 Patent's persistence-related limitations beyond reference to a missing exhibit (Compl. ¶155).

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

  • Issued: May 31, 2022 (Compl. ¶111).
  • Technology Synopsis: Also a continuation, this patent's claimed invention describes modifying a messaging system to allow a single responder to converse in real-time with multiple different users who are themselves using different communication protocols (Compl. ¶114, 116). This shifts the focus from a single user interacting with multiple responders to a single responder interacting with multiple, distinct users.
  • Asserted Claims: Independent Claim 1 (Compl. ¶163).
  • Accused Features: The complaint alleges infringement by MobileMonkey's system, which allegedly coordinates communication between multiple users and a responder using various protocols, but provides no specific details beyond referencing a missing exhibit (Compl. ¶118, 163).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentality as "MobileMonkey's accused instrumentality" without specifying product or service names (Compl. ¶138, 147, 155, 163).

Functionality and Market Context

  • The complaint does not describe the functionality of the accused instrumentality. It alleges that MobileMonkey provides software for omnichannel communications (Compl. ¶9). The infringement counts state that exhibits attached to the complaint contain claim charts detailing the infringing functionality (Compl. ¶138, 147, 155, 163); however, these exhibits were not filed with the complaint. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits E, F, G, H) that are not provided with the filed document (Compl. ¶138, 147, 155, 163). The complaint's narrative text does not contain sufficient detail to map accused product functionality to the claim elements. Therefore, a claim chart summary cannot be constructed.

  • Identified Points of Contention: Based on the language of the asserted claims of the '183 and '597 Patents, the infringement analysis may raise several key questions:
    • Technical Questions:
      • What evidence demonstrates that the accused system performs the specific, sequential hand-off from a "first responder" to a "second responder" as required by Claim 1 of the '183 and '597 Patents?
      • Does the accused system perform the explicit step of "end[ing] the conversation with the first responder" before initiating contact with the second, as required by Claim 1 of the '183 Patent?
      • The complaint suggests a "first responder" may be a virtual agent (Compl. ¶46). A factual question will be whether the accused system’s automated components and human agents map to the claimed "first responder" and "second responder" entities.
    • Scope Questions:
      • Does the accused system's handling of user sessions, which may involve cookies or other identifiers, fall within the scope of an "unauthenticated user" as that term is used in the patents?
      • How does the accused system identify and route communications to a second responder, and does that mechanism meet the limitations of being based on the "first communication" ('183 Patent) or the determined "communication protocol" ('597 Patent)?

V. Key Claim Terms for Construction

  • The Term: "unauthenticated user" (e.g., ’183 Patent, Claim 1)

  • Context and Importance: This term is foundational to the claimed invention, which is framed as an improvement for engaging anonymous users without requiring registration (Compl. ¶41). The definition is critical because modern web systems use various tracking methods (e.g., cookies, IP addresses). The dispute may turn on whether a user tracked by such methods is still "unauthenticated" in the context of the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification contrasts the invention with systems where users were "required to register or provide any account or user information prior to starting a conversation" ('183 Patent, col. 8:22-24). This may support a construction where a user is "unauthenticated" as long as they have not explicitly created an account or logged in.
    • Evidence for a Narrower Interpretation: The claims focus on the user of a "web browser" initiating a request for a "web page" ('183 Patent, Claim 1). This context could be used to argue that the term implies a lack of any persistent identifier, including session cookies, that would distinguish one anonymous user from another.

  • The Term: "first responder" / "second responder" (e.g., ’183 Patent, Claim 1)

  • Context and Importance: The claims require a handoff between two different responders. Practitioners may focus on this term because the nature of these responders (e.g., automated bot, human agent, different software modules) and the meaning of "different" will be central to the infringement analysis. The complaint suggests the first responder can be a "virtual agent" (Compl. ¶70).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes responders broadly, noting they can use a variety of protocols like SMS, XMPP, and SIP, and can be selected based on various criteria ('183 Patent, col. 4:41-47; col. 5:1-4). This could support a broad definition where any two distinct entities (human or machine) capable of communicating constitute different responders.
    • Evidence for a Narrower Interpretation: The claims require identifying the second responder "based on the first communication" ('183 Patent, Claim 1). This suggests the second responder is not pre-determined but is selected in response to the user's input, potentially supporting a narrower construction where the responders must be functionally and contextually distinct (e.g., a general-purpose bot vs. a specialized human agent).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for all four patents. The inducement allegations state that MobileMonkey provides its accused instrumentalities to "customers, clients, partners, developers and end users," which would aid and abet their infringement (Compl. ¶141, 150, 158, 166). The complaint also alleges that infringing aspects of the accused system are not staple articles of commerce suitable for substantial non-infringing uses, forming a basis for contributory infringement (Compl. ¶140, 149, 157, 165).
  • Willful Infringement: Willfulness is alleged for all four patents. The claim is supported for the '183 Patent by an allegation that Plaintiff sent a notice letter with a claim chart to MobileMonkey on March 2, 2022, eight months before filing suit, and that MobileMonkey did not respond (Compl. ¶142, 144). For the other three patents, which issued after the notice letter was sent, the allegation is based on a general assertion that MobileMonkey acted with disregard of Plaintiff's patent rights (Compl. ¶152, 160, 168).

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

  • A central issue will be one of claim construction: how will the court define an "unauthenticated user" in an era of ubiquitous browser cookies and tracking? Further, what technical and functional distinctions are required for two entities to be considered a "first responder" and a "second responder" under the claims?
  • A key evidentiary question will be one of factual proof of operation: since the complaint provides no technical details of the accused system's functionality, the case will depend on whether discovery reveals that MobileMonkey's platform performs the specific, multi-step processes recited in the claims, such as the '183 Patent's requirement to "end the conversation with the first responder" before handing off to a second.
  • The dispute may also involve a temporal question regarding willfulness: while Plaintiff alleges pre-suit knowledge for the '183 patent, a question for the court will be whether that notice put Defendant on notice of the subsequently-issued '597, '787, and '466 patents, which were not explicitly mentioned in the alleged notice letter but are part of the same family.