DCT

1:22-cv-01565

Disintermediation Services Inc v. LiveChat Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01565, D. Del., 02/23/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and is therefore a resident of the district.
  • Core Dispute: Plaintiff alleges that Defendant’s LiveChat web-based communication products infringe four patents related to systems and methods for managing real-time conversations with unauthenticated users across multiple electronic platforms.
  • Technical Context: The technology at issue involves managing web-based chat sessions, particularly in overcoming the stateless nature of HTTP to allow continuous, anonymous conversations that can be routed between different responders using varied communication protocols.
  • Key Procedural History: The asserted patents are part of a larger family and claim priority back to 2011. The complaint notes that the patents-in-suit underwent examination at the USPTO after the Supreme Court's decision in Alice Corp. v. CLS Bank, and were found to contain patent-eligible subject matter by the examiners.

Case Timeline

Date Event
2011-01-01 Plaintiff Disintermediation launches web chat services
2011-10-17 Earliest Priority Date for all Patents-in-Suit ('183, '597, '787, '466)
2021-09-03 USPTO search date for '183 Patent prosecution
2021-12-17 USPTO search date for '183 Patent prosecution
2021-12-17 USPTO issues Notice of Allowance for '183 Patent
2022-02-01 U.S. Patent No. 11,240,183 Issues
2022-03-06 USPTO search date for '597 and '787 Patent prosecution
2022-03-18 USPTO search date for '597 Patent prosecution
2022-03-22 USPTO search date for '597 Patent prosecution
2022-04-01 USPTO search date for '787 Patent prosecution
2022-04-04 USPTO issues Notice of Allowance for '597 Patent
2022-04-05 USPTO search date for '787 Patent prosecution
2022-04-19 USPTO issues Notice of Allowance for '787 Patent
2022-05-17 U.S. Patent No. 11,336,597 Issues
2022-05-31 U.S. Patent No. 11,349,787 Issues
2022-07-05 USPTO issues Notice of Allowance for '466 Patent
2022-08-16 U.S. Patent No. 11,418,466 Issues
2023-02-23 First Amended 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 identifies several deficiencies in prior art real-time communication (RTC) systems. These include requiring both parties to use a common protocol (e.g., SMS, instant messaging), requiring the initiating party to know the recipient's address beforehand, and requiring both parties to be identified to each other (Compl. ¶64; ’183 Patent, col. 1:60-67). The complaint also highlights the problem of HTTP being a "stateless" protocol, where a server does not inherently maintain a history of connections, and prior art solutions required user logins or plugins to maintain state (Compl. ¶47-49).
  • The Patented Solution: The invention describes a system, managed by an intermediary server, that allows an anonymous, unauthenticated user on a web browser to communicate with one or more "responders" who may be using different RTC methods (e.g., SMS, XMPP) (’183 Patent, Abstract; col. 3:18-25). The system uses a "conversation identifier" to track and map messages within a conversation, overcoming HTTP's statelessness without requiring user login or local data storage (Compl. ¶53). A key feature is the ability to seamlessly transfer a conversation from a first responder to a second, different responder, all managed by the central system so the user sees a unified conversation (Compl. ¶65; ’183 Patent, col. 3:18-25).
  • Technical Importance: The described solution purports to lower the barrier for user engagement by not requiring registration or the sharing of personal information, while allowing organizations to utilize a diverse backend of responders and communication technologies (Compl. ¶56-58).

Key Claims at a Glance

  • The complaint asserts infringement of at least representative Claim 1 (Compl. ¶165).
  • Independent Claim 1 is a system claim with the following essential elements:
    • An electronic processor configured to:
    • receive a request from an "unauthenticated user" of a web browser for a web page;
    • send a question from a "first responder" to the user;
    • receive a "first communication" (an answer) from the user;
    • determine a "conversation identifier" for the conversation;
    • end the conversation with the first responder;
    • identify a "second responder" different from the first;
    • determine the protocol and address of the second responder;
    • send the "first communication" to the second responder;
    • receive a "first reply" from the second responder;
    • map the "first reply" to the web browser using the "conversation identifier"; and
    • send the "first reply" to the web browser, concealing the address of the second responder.
  • Plaintiff reserves the right to assert additional claims (Compl. ¶166).

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 '183 Patent, the '597 Patent addresses the same set of problems in prior art RTC systems, namely the requirements for common protocols, pre-existing contact information, mutual identification, and the statelessness of HTTP (Compl. ¶89, incorporating ¶61-66).
  • The Patented Solution: The '597 Patent also discloses an intermediary server-based system for managing communications between an unauthenticated web user and multiple responders. The specification is described as "substantially identical" to that of the '183 Patent (Compl. ¶89). The system architecture, as depicted in Figure 1 of the patent, shows a central server (104) mediating between an initiator (102) and various responder platforms (108a, 108b, 108c), using a data store (106) to manage the conversation ('597 Patent, Fig. 1).
  • Technical Importance: The technical importance is consistent with the '183 Patent, focusing on enabling anonymous, seamless, multi-responder web chat (Compl. ¶92).

Key Claims at a Glance

  • The complaint asserts infringement of at least representative Claim 1 (Compl. ¶173).
  • Independent Claim 1 is a system claim with the following essential elements:
    • An electronic processor configured to:
    • receive a "communication request" from a web browser of an "unauthenticated user";
    • send a "request for information" from a "first responder" to the user;
    • receive a "first communication" from the user;
    • determine a "conversation identifier";
    • identify a "second responder" different from the first;
    • determine a communication protocol of the second responder;
    • send the "first communication" to the second responder;
    • receive a "first reply" from the second responder;
    • map the "first reply" using the "conversation identifier"; and
    • send the "first reply" to the web browser.
  • Plaintiff reserves the right to assert additional claims (Compl. ¶174).

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: This patent, also a continuation, describes a system that allows an unauthenticated user to have a conversation that is continued "across multiple webpages or upon a webpage reload" (Compl. ¶116). The invention focuses on using a persistent data store to save conversation elements (e.g., the request for information and the user's response) associated with a conversation identifier, allowing the conversation to be retrieved and displayed again when the user requests it, such as after a page reload (Compl. ¶119).
  • Asserted Claims: At least representative Claim 1 is asserted (Compl. ¶181).
  • Accused Features: The accused features are functionalities within Defendant's LiveChat products that allegedly perform the claimed steps of storing and retrieving conversations for unauthenticated users (Compl. ¶181).

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 continuation patent describes a system that allows a single responder to communicate with two different users who are themselves using different communication protocols (Compl. ¶141, 143). The system uses conversation identifiers and persistent data storage to manage these parallel conversations, routing communications to and from the single responder and the two different users via their respective protocols (Compl. ¶144).
  • Asserted Claims: At least representative Claim 1 is asserted (Compl. ¶189).
  • Accused Features: The accused features are functionalities within Defendant's LiveChat products that allegedly allow a single agent (responder) to communicate with multiple, distinct users using different protocols (Compl. ¶189).

III. The Accused Instrumentality

  • Product Identification: Defendant’s LiveChat web-based communication products, systems, and services (Compl. ¶1, 165).
  • Functionality and Market Context: The complaint alleges that the accused LiveChat products provide web-based chat services. The functionality at issue involves systems that facilitate communication between website visitors ("unauthenticated users") and customer service agents ("responders") (Compl. ¶165, 173). The complaint incorporates by reference several exhibits (E, F, G, H) that it states contain claim charts detailing the specific infringing functionality of the accused products (Compl. ¶165, 173, 181, 189). The complaint's system architecture diagram, taken from the asserted patents, shows an "Initiator" (web user) communicating through an intermediary server to a "Responder 1" who can use one of several different communication methods like SMS, XMPP, or SIP (’183 Patent, Fig. 1). This figure illustrates the general architecture the complaint alleges the accused products employ (Compl. ¶61-62).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of all four patents-in-suit but states that the specific mapping of claim elements to the accused instrumentality is contained in Exhibits E, F, G, and H (Compl. ¶165, 173, 181, 189). These exhibits were not filed with the public version of the complaint. The complaint itself does not provide a narrative description of the specific infringing operation of the accused products beyond conclusory allegations of infringement. Therefore, the complaint does not provide sufficient detail for a tabular analysis of the infringement allegations.

  • Identified Points of Contention: Lacking a detailed infringement theory in the complaint, any analysis of specific points of contention is speculative. However, based on the claim language, disputes may arise over:
    • Scope Questions: Whether a website visitor who may have a cookie stored in their browser but has not created a formal account qualifies as an "unauthenticated user" under the patent's definition.
    • Technical Questions: What specific mechanism in the LiveChat product constitutes the claimed "conversation identifier" and how it is used to "map" replies. Further questions may arise regarding how the LiveChat system technically handles the hand-off from a "first responder" to a "second responder" or manages communications with multiple users via different protocols, and whether that process maps to the specific steps required by the claims.

V. Key Claim Terms for Construction

For U.S. Patent Nos. 11,240,183 and 11,336,597

  • The Term: "unauthenticated user"

  • Context and Importance: This term is central to the invention's premise of allowing anonymous communication without login credentials, a key alleged departure from prior art (Compl. ¶52, 54). The definition will determine the universe of accused interactions, as systems requiring user authentication would fall outside the claim scope (Compl. ¶59). Practitioners may focus on this term because its scope could be debated, particularly in modern web environments with persistent cookies and other tracking technologies that might be argued to constitute a form of authentication.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The complaint alleges the term means "a user that has not provided login credentials" (Compl. ¶52). The specification contrasts the invention with prior art that required users to "log in" or provide a "password" (Compl. ¶49, 55). This may support a construction where any user who has not actively entered a username/password combination is "unauthenticated."
    • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes that the user can remain "anonymous to the server" ('183 Patent, col. 11:58-59). Defense counsel may argue that if the accused system uses cookies or other identifiers to recognize a return visitor, that user is no longer truly "unauthenticated" or "anonymous" in the manner contemplated by the patent.

  • The Term: "responder" (including "first responder" and "second responder")

  • Context and Importance: The claims of the '183 and '597 Patents hinge on a specific sequence of events involving a "first responder" and a "second responder" who is "different from the first responder" ('183 Patent, cl. 1). The definition will be critical for determining whether the accused system performs this specific hand-off. For example, if a chat is transferred between two agents in the same group, are they "different" responders as the claim requires?

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes responders as potentially being part of a "pool of subscribing respondents" ('183 Patent, col. 6:12-13) and gives examples like a "listing agent" for real estate (col. 6:58-60). This could support a broad definition covering any entity, human or automated, that replies to the user.
    • Evidence for a Narrower Interpretation: Claim 1 of the '183 Patent requires the system to "end the conversation with the first responder" before identifying and engaging the second. This might support a narrow interpretation requiring a formal, discrete termination and re-initiation sequence, rather than a seamless internal transfer within a single agent pool or system.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. For inducement, it alleges LiveChat had "knowledge of the ['183] patent" and that its actions, including offering to sell the accused products, "would aid and abet and induce infringement by customers, clients, partners, developers and end users" (Compl. ¶168). For contributory infringement, it alleges LiveChat knows the infringing aspects of its products "are made for use in an infringement and are not staple articles of commerce suitable for substantial non-infringing uses" (Compl. ¶167).
  • Willful Infringement: Willfulness is alleged for all four patents. The allegation is based on the assertion that LiveChat "has acted with disregard of Disintermediation's patent rights, without any reasonable basis for doing so" (Compl. ¶170, 178, 186, 194). The complaint does not allege specific facts regarding pre-suit notice or knowledge beyond the general knowledge alleged for inducement.

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

  • A primary issue will be one of claim construction: how will the court define "unauthenticated user"? The case may turn on whether a user tracked by a browser cookie, but who has not logged in, falls within the scope of this term, which the patent contrasts with prior art requiring formal logins.
  • A central evidentiary question will be one of technical operation: does the accused LiveChat system, when transferring a chat between agents or handling multiple chats, perform the specific, multi-step processes recited in the independent claims? This includes discrete steps like "end[ing] the conversation with the first responder" before "identify[ing]... a second responder" ('183 Patent, cl. 1), which may not map directly onto the functionality of a modern, integrated chat platform.
  • A third key question will relate to infringement evidence: given that the complaint's infringement theory is contained entirely within unprovided exhibits, the sufficiency of Plaintiff's forthcoming infringement contentions under the court's local rules will be a critical early-stage focus.