DCT

5:25-cv-00385

Ingenioshare LLC v. Epic Games Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:25-cv-00385, E.D.N.C., 09/18/2025
  • Venue Allegations: Venue is alleged on the basis that Defendant Epic Games, Inc. has a principal place of business, as well as a regular and established place of business, within the Eastern District of North Carolina and is registered to transact business in the state.
  • Core Dispute: Plaintiff alleges that Defendant’s video games, including Fortnite and Rocket League, infringe three U.S. patents related to systems for managing multi-channel electronic communications through a network-based portal that uses a single user identifier while preserving user privacy.
  • Technical Context: The technology at issue falls within the domain of unified communications, addressing the challenge of managing disparate communication methods (e.g., voice, text, email) by routing them through a central, Internet-based system that shields users' underlying contact information.
  • Key Procedural History: The complaint alleges an extensive history between the parties, including a prior lawsuit filed in the Western District of Texas in 2021 that was dismissed for improper venue. Subsequently, Defendant challenged all three patents-in-suit via Inter Partes Review (IPR). The Patent Trial and Appeal Board (PTAB) issued Final Written Decisions finding the challenged claims not unpatentable, and these decisions were affirmed by the Court of Appeals for the Federal Circuit. Plaintiff asserts that these proceedings create an estoppel, preventing Defendant from re-litigating certain invalidity arguments.

Case Timeline

Date Event
2003-12-08 Earliest Priority Date for '810, '038, and '727 Patents
2017-07-25 Defendant releases Fortnite
2017-09-26 Defendant releases Fortnite's "Battle Royale" game mode
2018-11-27 U.S. Patent No. 10,142,810 ('810 Patent) is issued
2018-11-29 Plaintiff’s predecessor allegedly provides notice of '810 Patent to Defendant
2019-10-11 Plaintiff’s predecessor allegedly provides further notice of '810 Patent and the allowed '038 application
2019-11-26 U.S. Patent No. 10,492,038 ('038 Patent) is issued
2020-01-07 Plaintiff’s predecessor allegedly provides notice of '038 Patent infringement
2020-07-07 U.S. Patent No. 10,708,727 ('727 Patent) is issued
2021-06-25 Plaintiff files prior lawsuit against Defendant in W.D. Texas
2021-11-15 Defendant files IPR petition for the '810 Patent
2022-03-18 W.D. Texas lawsuit is dismissed for improper venue
2022-05-23 PTAB institutes IPR for the '810 Patent
2022-05-24 PTAB institutes IPR for the '727 Patent
2022-06-07 PTAB institutes IPRs for the '038 Patent
2022-12-07 Defendant files IPR petitions for the '038 and '727 Patents
2023-05-19 PTAB issues Final Written Decisions finding claims of all three patents not unpatentable
2025-04-24 Federal Circuit affirms PTAB's Final Written Decisions
2025-09-18 Complaint is filed in E.D.N.C.

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

U.S. Patent No. 10,142,810 - Method and Apparatus to Manage Different Options of Communication Using One User Identifier Based on Internet Protocol

  • Patent Identification: U.S. Patent No. 10,142,810, issued November 27, 2018 (Compl. ¶39).

The Invention Explained

  • Problem Addressed: The patent describes a technical problem arising from the proliferation of communication methods like landlines, mobile phones, email, and instant messaging, each requiring separate contact information (e.g., phone numbers, email addresses) (Compl. ¶¶9, 12; ’810 Patent, col. 1:50-55). This fragmentation created difficulties in managing communications and compromised user privacy, as recipients lacked a consistent way to enforce preferences across different channels (Compl. ¶¶12-13; ’810 Patent, col. 1:56-61).
  • The Patented Solution: The invention proposes a computer-implemented method using a "network-based portal" that acts as a central gateway for all communications (’810 Patent, Abstract). A user is assigned a single identifier (a "digital identity") that is distinct from their actual contact information (e.g., phone number) (Compl. ¶¶17, 22; ’810 Patent, col. 4:13-23). A sender uses this identifier to contact the user through the portal, which then routes the message according to the recipient's pre-set preferences for availability, contact priority, and message urgency without disclosing the recipient's underlying contact details (Compl. ¶¶21-22; ’810 Patent, col. 3:43-58, Figs. 1-5).
  • Technical Importance: This approach provided a unified, privacy-centric framework for managing cross-platform communications, an increasing challenge as Internet Protocol-based services converged (Compl. ¶¶14-16, 18).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 11 (Compl. ¶108).
  • Independent Claim 1 (Method Claim) Elements:
    • Providing a plurality of communication options (including text and voice) to a first user for sending a message to a second user, where the first user has completed a prior registration process.
    • All communication options use "one identifier" associated with the second user for receiving messages via the portal.
    • Receiving an indication from the first user selecting a communication option.
    • "Permitting the second user to block the first user" from reaching them, with information about the block stored in a medium.
    • Enabling the message to be received by the second user via the selected option if not blocked.
    • Determining the availability of the second user.
    • Requiring contact information for the second user to receive messages, but this contact information is "not provided via the network-based portal to the first user."
    • The "one identifier" is "distinct from the contact information" of the second user.

U.S. Patent No. 10,492,038 - Method and Apparatus to Manage Messaging Providing Different Communication Modes Depending on One Identifier and Not Requiring to Disclose Contact Information

  • Patent Identification: U.S. Patent No. 10,492,038, issued November 26, 2019 (Compl. ¶54).

The Invention Explained

  • Problem Addressed: This patent addresses the same technical field as the ’810 Patent: the need for a unified system to manage diverse electronic communication modes while preserving user privacy and control (’038 Patent, col. 1:55-65).
  • The Patented Solution: The ’038 Patent claims a non-transitory computer-readable medium containing code to implement a similar network-based portal system (’038 Patent, Abstract, Claim 46). The system provides a first user with multiple communication modes (text, voice, image) to contact a second user via an identifier, allows the second user to block the first, and manages message delivery without disclosing either party's underlying contact information to the other (Compl. ¶¶57, 72; ’038 Patent, col. 2:9-30).
  • Technical Importance: It claims the technical solution as a software product (computer-readable medium), which is a distinct statutory class of invention from the method claim of the ’810 Patent, providing a different angle of protection for the core technology (Compl. ¶¶57, 61).

Key Claims at a Glance

  • The complaint asserts claims 46, 58, 59, 60, 61, and 62 (Compl. ¶131).
  • Independent Claim 46 (Computer Readable Medium Claim) Elements:
    • A non-transitory computer-readable medium with code that, when executed, results in a server performing several functions.
    • Providing a plurality of communication modes (including text, voice, and image) to a first user.
    • Receiving a first message from the first user for a second user, based on the second user's identifier.
    • Enabling the second user to block the first user.
    • Enabling the first message to be received by the second user via the selected mode, if not blocked.
    • Receiving a second message from the second user responding to the first, where one message is voice and the other is text.
    • Contact information for both users is provided to the portal but not to each other, with options to keep it confidential.
    • The identifiers for each user are distinct from their respective contact information.

U.S. Patent No. 10,708,727 - Method and Apparatus to Manage Messaging Providing Different Communication Modes Using One Identifier and Not Requiring to Disclose Contact Information

  • Patent Identification: U.S. Patent No. 10,708,727, issued July 7, 2020 (Compl. ¶69).
  • Technology Synopsis: The ’727 patent claims a method for managing communications through a network-based portal, focusing on a scenario involving an initial message and a responsive message between two users (Compl. ¶72). The claimed method specifically addresses situations where one of these messages is voice and the other is text, while continuing to leverage distinct user identifiers to maintain the confidentiality of both parties' actual contact information (e.g., phone number or email address) (’727 Patent, Claim 1).
  • Asserted Claims: The complaint asserts independent claim 1 and a number of dependent claims (Compl. ¶154).
  • Accused Features: The in-game communication systems in Defendant's video games, such as Fortnite and Rocket League, are alleged to practice the claimed methods (Compl. ¶155).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant’s video games, with Fortnite and Rocket League specifically identified (Compl. ¶¶109, 132, 155).

Functionality and Market Context

The complaint characterizes Fortnite as a "multiplayer online experience" and a "social hangout" where player-to-player communication is a crucial feature (Compl. ¶¶87, 94). Players interact and communicate within the game's ecosystem, which Plaintiff alleges constitutes an infringing system (Compl. ¶109). The complaint highlights the commercial success of Fortnite, noting it has over 500 million registered players and generates billions of dollars in annual revenue, suggesting the commercial importance of its features, including the accused communication functionalities (Compl. ¶¶86, 113). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits B, D, and F) that detail the infringement allegations for each patent-in-suit; however, these exhibits were not provided with the complaint document (Compl. ¶¶109, 132, 155). In the absence of the claim charts, the infringement theory must be summarized from the complaint’s narrative allegations.

Plaintiff's central theory is that Defendant's online multiplayer games, such as Fortnite, implement the patented communication management system. The complaint alleges that the game environment functions as the claimed "network-based portal" (Compl. ¶¶23-24). In this environment, each player has a unique username or "gamertag" that serves as the "one identifier," which is distinct from the player's actual contact information (such as the email address used to create the account) (Compl. ¶25). It is alleged that players use these identifiers to communicate with each other through various modes offered by the game (e.g., voice chat, text chat) without their underlying contact information being disclosed to other players (Compl. ¶22). The complaint further alleges that the games provide functionality for players to block communications from others, corresponding to a key element of the asserted claims (Compl. ¶30).

  • Identified Points of Contention:
    • Scope Questions: A primary issue may be whether an in-game communication system, which is a feature within a closed entertainment ecosystem, constitutes a "network-based portal" as that term is used in the patents. The patents describe managing conventional communication modes like phone calls and SMS, which raises the question of whether the claims' scope extends to proprietary, in-game chat systems.
    • Technical Questions: A factual dispute may arise over whether a player's gamertag functions as an identifier that is truly "distinct from the contact information" in the manner required by the claims. The process of account creation, which links a gamertag to an email address, could be a focal point in determining if the technical requirements of this limitation are met.

V. Key Claim Terms for Construction

"network-based portal"

  • Context and Importance: This term appears in all asserted independent claims and is the central architectural element of the invention. The complaint notes that the PTAB, during IPR proceedings, found this term to be "central to the parties' respective positions" and not disclosed by the prior art (Compl. ¶101). Its construction will therefore be critical in defining the scope of infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the invention as a "communication gateway or a portal" that is "based on the web" and allows a user to "receive communications from numerous sources through different modes" (’810 Patent, col. 4:12-16). This language may support a construction that encompasses any centralized, internet-based system for managing communications, including an in-game system.
    • Evidence for a Narrower Interpretation: The patent's background and figures primarily discuss managing traditional telecommunication and internet services like mobile phone calls, SMS, faxes, and email (’810 Patent, col. 1:50-55, Fig. 1). This context could support a narrower construction limited to systems that integrate these conventional, public-network communication modes, as opposed to a proprietary, closed-loop system within a video game.

"one identifier...distinct from the contact information"

  • Context and Importance: This term is the lynchpin of the invention’s claimed privacy feature. Whether a player's gamertag in the accused products meets this definition will be a key aspect of the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the identifier can be a user's "digital identity," providing examples like an "e-mail address" or "driver licenser number" (’810 Patent, col. 4:17-23). This suggests the term could be broadly construed to cover any unique digital handle, such as a gamertag.
    • Evidence for a Narrower Interpretation: The claims require that the "contact information...is not provided via the network-based portal to the first user" (’810 Patent, Claim 1). A potential point of contention is how this interacts with the account registration process, where a gamertag is linked to an email address (contact information). The interpretation may turn on whether the system architecture ensures this separation during communication, regardless of the linkage during setup.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b). The factual basis for inducement is that Defendant allegedly encourages and instructs its customers to use the accused games in an infringing manner, specifically by requiring players to agree to an End User License Agreement to access the in-game communication features (Compl. ¶¶125, 148, 169).
  • Willful Infringement: Plaintiff alleges willful infringement, asserting that Defendant had pre-suit knowledge of the patents and their infringement. The complaint cites multiple written notices sent to Defendant, with the earliest notice of the '810 patent dating back to November 29, 2018, as well as notice provided by the filing of the prior Texas lawsuit in 2021 (Compl. ¶¶116-118, 139-141).

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

This case appears to center on the application of patent claims, drafted in the context of general-purpose unified communications, to the specific environment of an online video game. The extensive procedural history, particularly Defendant's unsuccessful IPR challenges, will likely play a significant role. The central questions for the court may be:

  • A core issue will be one of definitional scope: Can the term "network-based portal," which the PTAB found to be a key inventive element, be construed to read on the integrated social communication features of a video game like Fortnite, or is its meaning limited by the patent's specification to systems that manage conventional telecommunications and email services?
  • A key evidentiary question will be one of technical implementation: Does the architecture of Defendant's accused products meet the specific claim requirement of using a single "identifier" that is "distinct from the contact information" in the claimed manner, particularly concerning how player gamertags relate to the email addresses used for account registration?
  • A significant legal question will be the scope of IPR estoppel: To what extent do the prior, unsuccessful IPR proceedings preclude Defendant from raising certain invalidity arguments in this litigation, potentially narrowing the focus of the case primarily to infringement?