E Beacon LLC v. GoTo Tech USA LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: e-Beacon LLC (DE)
  • Defendant: GoTo Technologies USA, LLC (DE)
  • Plaintiff’s Counsel: Dickinson Wright PLLC; Rabicoff Law LLC
• Case Identification: 1:25-cv-10398, D. Mass., 02/17/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains an established place of business in the district and has allegedly committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s products and services for Voice over IP (VoIP) telephony infringe a patent related to providing emergency location services for VoIP users.
• Technical Context: The technology addresses the challenge of locating mobile VoIP users during emergency (e.g., 911) calls, a critical function for dispatching first responders accurately.
• Key Procedural History: The patent-in-suit is subject to a terminal disclaimer, which may limit its enforceable term to that of an earlier patent (U.S. Patent No. 7,933,580). The patent also claims priority as a continuation-in-part of a 2006 application, which itself claims priority to a 2005 provisional application, establishing an early priority date for the claimed subject matter.

Case Timeline

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

U.S. Patent No. 8,515,386 - "Emergency services for voice over IP telephony (E-VoIP)"

• Patent Identification: U.S. Patent No. 8,515,386, "Emergency services for voice over IP telephony (E-VoIP)," issued August 20, 2013.

The Invention Explained

• Problem Addressed: The patent addresses a public safety problem inherent in early VoIP systems: a VoIP phone can be used anywhere with an internet connection, but emergency services have historically relied on a fixed, registered address associated with a traditional phone line. This creates a risk that if a VoIP user dials 9-1-1 from a location other than their registered address, first responders will be dispatched to the wrong place ('386 Patent, col. 1:24-44).
• The Patented Solution: The invention describes a method and system that automatically determines the current physical location of a VoIP device using one or more "location detection technologies" (LDTs) like GPS or cellular network triangulation. When an emergency number is dialed, the system automatically transmits these determined physical coordinates to the emergency call center (Public Safety Answering Point, or "PSAP"), ensuring the operator receives the caller's actual location ('386 Patent, Abstract; col. 2:32-44). The system is designed to use multiple LDTs to increase the reliability of finding a location ('386 Patent, col. 7:51-57).
• Technical Importance: This technology provided a mechanism to enable Enhanced 911 (E911) services for nomadic VoIP users, a critical step in aligning VoIP capabilities with the safety standards of the public switched telephone network ('386 Patent, col. 1:10-14).

Key Claims at a Glance

• The complaint alleges infringement of one or more claims, with specific "Exemplary '386 Patent Claims" identified in an external exhibit not provided with the complaint (Compl. ¶11, ¶16). Independent claim 1 is representative of the core invention.
• Independent Claim 1 (Method):
  • making a plurality of attempts to determine the physical location of the VoIP phone, each using a separate location detection technology ("LDT");
  • if an attempt is successful, storing the physical location determined using the corresponding LDT;
  • placing a call to the emergency services call center with the VoIP phone; and
  • automatically transmitting the physical location of the VoIP phone to the emergency services call center.
• The complaint indicates an intent to rely on the doctrine of equivalents and reserves the right to assert other claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint does not name any specific accused products or services. It refers generally to "Exemplary Defendant Products" that are identified in charts incorporated by reference as Exhibit 2, which was not filed as part of the public complaint document (Compl. ¶11, ¶16).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market context. It alleges in general terms that the accused products "practice the technology claimed by the '386 Patent" (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint references claim charts in an external Exhibit 2 to detail its infringement allegations but does not include this exhibit with the filed complaint (Compl. ¶16-17). Consequently, a detailed element-by-element analysis based on the complaint is not possible.

The complaint’s narrative theory of infringement alleges that Defendant directly infringes the ’386 Patent by making, using, selling, and/or importing the "Exemplary Defendant Products" (Compl. ¶11). It further alleges that Defendant’s own internal testing and use of these products constitutes direct infringement (Compl. ¶12). The core of the allegation is that these unspecified products possess functionality that satisfies all elements of at least one claim of the '386 Patent (Compl. ¶16).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Evidentiary Questions: A primary question will be what evidence Plaintiff introduces to demonstrate that Defendant's accused products perform the claimed steps. Specifically, what proof will show that the products make "a plurality of attempts" using "separate" location detection technologies as required by claim 1?
  • Technical Questions: A key technical dispute may arise over how the accused products transmit location information. The analysis will question whether the products "automatically" transmit the location data in a manner consistent with the claim language, or if user intervention or a different technical mechanism is involved.
  • Scope Questions: The dispute may also involve the scope of "VoIP phone." Practitioners will observe whether this term, as used in the patent, can be read to cover the full range of modern software-based communication clients and services that may be part of the accused instrumentalities.

V. Key Claim Terms for Construction

• The Term: "location detection technology ('LDT')" (Claim 1)

  • Context and Importance: The definition of this term is central to the scope of infringement, as it dictates what methods of finding a user's location are covered by the patent. The infringement analysis will depend on whether the specific technologies used by Defendant's products fall within the construed definition of an "LDT."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list, stating, "In addition to the GPS, CDMA and GSM technologies discussed above, location data can also be obtained from the Assisted Global Positioning System ('A-GPS'), other Cellular systems, Wi-Fi, WiMAX, and other such technologies that can provide geolocation information" ('386 Patent, col. 8:60-65). This language suggests "LDT" is a broad term encompassing any technology that provides geolocation data.
    • Evidence for a Narrower Interpretation: A party might argue that the term should be limited by the examples provided, which are primarily network-based radio-frequency signal technologies. The specification consistently discusses these types of technologies (GPS, cellular) as the primary means of location detection ('386 Patent, col. 2:48-53), potentially supporting an argument to exclude fundamentally different approaches.

• The Term: "automatically transmitting the physical location" (Claim 1)

  • Context and Importance: This term is critical for determining how the location data must be sent to the emergency call center. Practitioners may focus on this term because the degree of automation required could be a point of non-infringement if the accused system requires user confirmation or follows a different workflow.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The context of the invention—solving the problem of a user being unable to verbally communicate their location—suggests "automatically" means without requiring the user to manually read out or enter their coordinates after initiating the emergency call ('386 Patent, col. 1:38-44).
    • Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the location coordinates are sent as "part of a data packet" using a "Quality of Service (QoS) protocol" to ensure priority ('386 Patent, col. 4:57-65). A defendant could argue this disclosed mechanism limits the term to a specific type of machine-to-machine data transmission, excluding other methods.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials" that instruct end users on how to use the products in a manner that allegedly infringes the '386 Patent (Compl. ¶14).
• Willful Infringement: The willfulness allegation is based on knowledge of infringement obtained "at least since being served by this Complaint" and its associated claim charts (Compl. ¶13, ¶15). This frames the willfulness claim as being based on post-suit conduct.

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

1. An initial and central issue will be evidentiary. As the complaint does not identify specific products or their functionality, the case will turn on what discovery reveals about the accused systems and what proof Plaintiff can marshal to show these systems practice the patented method, particularly the requirement to use a "plurality of... separate location detection technolog[ies]."

2. A second key issue will be one of claim scope. The outcome will likely depend on the court’s construction of "location detection technology." The central question is whether this term is broad enough to encompass the full range of modern location-determination techniques that Defendant's products may use, or if it is limited to the specific types of network-based technologies emphasized in the patent's disclosure.

3. The case will also present a question of technical operation. The court will need to determine whether the accused products' method for sending location data to an emergency operator meets the "automatically transmitting" limitation, or if there is a fundamental mismatch between the claimed process and the accused functionality.