DCT

1:22-cv-06539

Disintermediation Services Inc v. Liveadmins LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-06539, N.D. Ill., 11/21/2022
  • Venue Allegations: Venue is based on Defendant being an Illinois limited liability company with a regular and established place of business, including its headquarters, in Chicago.
  • Core Dispute: Plaintiff alleges that Defendant’s web chat services infringe four patents related to systems for managing real-time communications between a website user and multiple backend responders who may be using different communication protocols.
  • Technical Context: The technology addresses omnichannel communication, enabling a seamless chat experience for a website visitor even when their conversation is managed and transferred between different agents (or automated systems) using disparate communication platforms like SMS or proprietary messaging protocols.
  • Key Procedural History: The four patents-in-suit are part of a single family of applications and claim priority to the same 2011 provisional application. The complaint alleges pre-suit notice of infringement for U.S. Patent No. 11,240,183 was provided to the Defendant, including a claim chart, and that Defendant indicated it did not wish to license the technology.

Case Timeline

Date Event
2011-10-17 Earliest Priority Date for all Patents-in-Suit
2022-02-01 U.S. Patent No. 11,240,183 Issues
2022-05-17 U.S. Patent No. 11,336,597 Issues
2022-05-31 U.S. Patent No. 11,349,787 Issues
2022-08-16 U.S. Patent No. 11,418,466 Issues
2022-11-21 Complaint Filed

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, issued February 1, 2022.

The Invention Explained

  • Problem Addressed: The patent’s background section describes deficiencies in prior real-time communication (RTC) systems, which required that: (1) both parties share a common communication protocol (e.g., both use SMS); (2) the initiating party know the recipient’s address beforehand; and (3) both parties be identified to each other during the communication (’183 Patent, col. 1:60-67).
  • The Patented Solution: The invention provides an intermediary system that allows an unauthenticated user on a website to communicate with various backend "responders" who may be using different communication methods (’183 Patent, Abstract). This intermediary proxy manages the conversation flow, making the various responses appear unified to the user and allowing the user to remain anonymous, without needing to know the responders' specific addresses (e.g., phone numbers or email addresses) (’183 Patent, col. 3:18-25). The system is designed to handle "message stream convergence and routing" from these disparate platforms (’183 Patent, col. 7:17-19).
  • Technical Importance: This architecture decouples the front-end user experience from the back-end communication infrastructure, allowing organizations to build more flexible and scalable customer support systems without forcing all parties onto a single, unified platform (Compl. ¶47).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶140).
  • The essential elements of Claim 1 include:
    • Receiving a request from an unauthenticated user of a web browser.
    • Sending a question from a first responder to the user.
    • Receiving a first communication (an answer) from the user and sending it to the first responder.
    • Determining a conversation identifier.
    • Ending the conversation with the first responder.
    • Identifying a second, different responder based on the first communication.
    • Determining the communication protocol and address of the second responder.
    • Sending the first communication to the second responder and receiving a first reply.
    • Mapping the first reply back to the web browser using the conversation identifier, without including the second responder's address.
  • The complaint reserves the right to assert additional claims (Compl. ¶141).

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, issued May 17, 2022.

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’183 Patent, this patent addresses the same technical problems related to disparate communication protocols in RTC systems (Compl. ¶64).
  • The Patented Solution: The ’597 Patent claims a similar intermediary communication system. The specification is described as "substantially identical" to that of the ’183 Patent, focusing on managing communications between an unauthenticated web user and multiple, potentially anonymous responders using different protocols (’597 Patent, Abstract; Compl. ¶64).
  • Technical Importance: As with the ’183 Patent, the technology enables more flexible and efficient omnichannel communication for applications like customer service (Compl. ¶71).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶149).
  • The essential elements of Claim 1 include:
    • Receiving a communication request from a web browser of an unauthenticated user.
    • Sending a request for information from a first responder to the user.
    • Receiving a first communication from the user.
    • Determining a conversation identifier based on the first communication.
    • Identifying a second responder different from the first.
    • Determining the second responder's communication protocol.
    • Sending the first communication to the second responder.
    • Receiving a first reply from the second responder.
    • Mapping and sending the first reply to the web browser using the conversation identifier.
  • The complaint reserves the right to assert additional claims (Compl. ¶150).

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, issued May 31, 2022.
  • Technology Synopsis: As a continuation in the same family, this patent claims a system for maintaining conversation state across multiple web pages or page reloads (Compl. ¶¶89, 91). The invention focuses on storing conversation elements (e.g., a request for information and a user's communication) in a "persistent data store" associated with a conversation identifier, allowing the system to retrieve and re-display the conversation upon a subsequent request from the user's browser (Compl. ¶94).
  • Asserted Claims: Independent Claim 1 (Compl. ¶157).
  • Accused Features: The complaint alleges infringement by the accused instrumentality's ability to facilitate and store conversations that can be continued or retrieved by a user across different interactions with a website (Compl. ¶¶95, 157).

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, issued August 16, 2022.
  • Technology Synopsis: This patent, also a continuation in the same family, claims a system where a single responder can communicate simultaneously with multiple, different users who are themselves using different communication protocols (Compl. ¶¶114, 116). The invention describes managing a first conversation with a first user via a "first active communication protocol" and a second conversation with a second user via a different, "second active communication protocol," with both conversations being coordinated through the same first responder (Compl. ¶¶119, 120).
  • Asserted Claims: Independent Claim 1 (Compl. ¶165).
  • Accused Features: The complaint alleges infringement by the accused instrumentality's functionality that allows a single agent (responder) to handle concurrent chats with multiple, distinct users (Compl. ¶¶120, 165).

III. The Accused Instrumentality

  • Product Identification: Defendant LiveAdmins, LLC’s web chat software and services (referred to in the complaint as the "accused instrumentality") (Compl. ¶¶10, 140).
  • Functionality and Market Context: The complaint alleges that Defendant provides software that supports omnichannel communications (Compl. ¶9). The infringement allegations are detailed in claim chart exhibits attached to the complaint, which were not provided for this analysis (Compl. ¶¶140, 149, 157, 165). Based on the claims asserted, the accused functionality involves a web-based chat system that allows an unauthenticated website visitor to initiate a conversation that is managed by one or more backend agents. The system is alleged to be capable of transferring conversations between agents, persisting conversation history, and allowing a single agent to manage communications with multiple users. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits E, F, G, and H to detail its infringement allegations, but these exhibits were not provided for this analysis (Compl. ¶¶140, 149, 157, 165). The narrative infringement theory is summarized below.

The infringement theory for the '183 and '597 Patents appears to center on the accused system's ability to manage a chat session initiated by an unauthenticated website visitor and subsequently transfer or expand that session from a "first responder" to a "second responder" (Compl. ¶¶46, 70). This suggests an infringement theory based on a common bot-to-human agent handoff, where an automated agent first engages the user and then transfers the conversation to a live agent. The system is alleged to manage this handoff seamlessly from the user's perspective, mapping all communications back to the user's web browser via a conversation identifier without revealing the backend agents' specific contact details or communication protocols (Compl. ¶¶45, 69).

  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the claim construction of "first responder" and "second responder." The viability of the infringement allegations may depend on whether an automated software agent (a chatbot) can be considered a "responder" under the patents' claims, distinct from the system's "electronic processor."
    • Technical Questions: Claim 1 of the ’183 Patent requires the system to "end the conversation with the first responder" before engaging the second. A factual dispute may arise regarding whether the accused system performs this discrete step, or if the handoff is a continuous data transfer without a formal termination of the first session.

V. Key Claim Terms for Construction

  • The Term: "unauthenticated user"

    • Context and Importance: This term appears in the preamble of the asserted independent claims and is central to the patents' claimed improvements over prior art that required user registration (Compl. ¶43). The interpretation of this term is critical because if the accused system performs any action that could be construed as "authenticating" a user (e.g., via a persistent cookie or session ID), the Defendant may argue non-infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification emphasizes that an "initiator may remain anonymous to both the system and the responders," which supports an interpretation that any user who has not actively logged in with credentials is "unauthenticated" (’183 Patent, col. 3:22-25).
      • Evidence for a Narrower Interpretation: A defendant could argue that a user assigned a persistent session identifier for tracking purposes is no longer "unauthenticated" with respect to the system's internal operation. The patent does not appear to provide an explicit definition that would support this narrower reading, but it remains a potential point of contention.

  • The Term: "first responder" and "second responder"

    • Context and Importance: The asserted claims of the ’183 and ’597 Patents require a handoff between two distinct responders. Practitioners may focus on this term because the infringement case may depend on whether a common bot-to-human transfer meets this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The complaint suggests a "virtual agent" can be a responder (Compl. ¶48). The patent specification does not explicitly limit a "responder" to being a human, potentially allowing software agents to qualify.
      • Evidence for a Narrower Interpretation: The patent figures depict "Responder 1" as a block separate from the server architecture, and the specification discusses responders using devices like cell phones, which could suggest a human user (’183 Patent, Fig. 1; col. 4:51-52). A defendant may argue that a chatbot is part of the claimed "system" itself, not a separate "responder."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all four patents. The allegations are based on Defendant knowingly providing its accused chat services to customers for infringing uses, with the assertion that the services are not staple articles of commerce suitable for substantial non-infringing uses (Compl. ¶¶142-143, 151-152, 159-160, 167-168).
  • Willful Infringement: Willfulness is alleged for all four patents. The claim is supported by an allegation of pre-suit notice for the ’183 Patent, which included a letter and claim chart sent to Defendant. The complaint further alleges that Defendant's counsel "indicated that LiveAdmins did not wish to license" the technology (Compl. ¶144). For the remaining patents, the willfulness allegation appears to be predicated on knowledge gained from the filing of the lawsuit itself.

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

  • A core issue will be one of definitional scope: can the term "responder," as used in the claims, be construed to cover an automated software agent, thereby allowing the common chatbot-to-human-agent handoff model to satisfy the "first responder" and "second responder" limitations?
  • A key evidentiary question will be one of process compliance: does the accused system’s handoff functionality perform the specific, discrete step of "ending" the conversation with the first responder as required by Claim 1 of the ’183 Patent, or is there a fundamental mismatch in the technical operation of the transfer process?
  • Regarding damages, a critical question will be the basis for willfulness: did the alleged pre-suit notice for the ’183 patent establish knowledge of infringement sufficient to support willfulness, and can willfulness for the three later-issued patents be established based solely on the notice provided by the filing of this complaint?