DCT

2:23-cv-00667

LiveHelpNow LLC v. Tawk To Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00667, D. Nev., 04/28/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Nevada as Defendant is a Nevada corporation with its principal place of business in Las Vegas, within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s live chat software products infringe five U.S. patents related to real-time communication systems, particularly a "whisper technology" feature that allows for private communication between website operators during a live customer chat.
  • Technical Context: The technology at issue involves enterprise-level live chat software used on websites to facilitate real-time text-based communication between a company's support agents and its customers.
  • Key Procedural History: The complaint alleges a multi-year history of notifying Defendant of the asserted patents. Plaintiff allegedly sent letters identifying the ’950 and ’375 patents in August 2019, the ’372 patent in January 2020, and the ’559 and ’739 patents in March 2023, which forms the primary basis for the willfulness allegations.

Case Timeline

Date Event
2010-12-17 Earliest Priority Date for all Patents-in-Suit
2015-11-03 U.S. Patent No. 9,178,950 Issues
2017-02-28 U.S. Patent No. 9,584,375 Issues
2019-08-08 Plaintiff allegedly notifies Defendant of ’950 and ’375 Patents
2019-09-17 U.S. Patent No. 10,419,372 Issues
2020-01-24 Plaintiff allegedly notifies Defendant of ’372 Patent
2021-03-16 U.S. Patent No. 10,951,559 Issues
2022-03-22 U.S. Patent No. 11,283,739 Issues
2023-03-21 Plaintiff allegedly notifies Defendant of ’559 and ’739 Patents
2023-04-28 Complaint Filed

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

U.S. Patent No. 9,178,950 - “Method, System And Apparatus For Establishing And Monitoring Sessions With Clients Over A Communication Network,” issued November 3, 2015

The Invention Explained

  • Problem Addressed: The patent’s background section identifies drawbacks in conventional web-based customer support, including delays in response and a lack of live, real-time interaction as would be found in a physical retail store (’950 Patent, col. 1:40-47).
  • The Patented Solution: The invention provides a system for real-time communication between website operators and visitors that enables multitasking functionality for the operator (’950 Patent, col. 3:18-34). A central feature is "whisper technology," which allows one operator to communicate a message to another operator directly within an active chat session, while keeping the message hidden from the website visitor, thereby facilitating real-time coaching or expert assistance (’950 Patent, col. 2:54-60, Fig. 2a).
  • Technical Importance: This approach allows for improved training of new support agents and enables experts to provide real-time input on complex inquiries, which may enhance the quality and efficiency of customer support (Compl. ¶3).

Key Claims at a Glance

  • The complaint asserts independent claim 5 (Compl. ¶34).
  • Essential elements of claim 5 (a method claim) include:
    • Selectively activating a first window frame on a first computing device of an operator.
    • Instantiating at least one chat session for receiving data from the operator and a visitor.
    • Selectively activating a third window frame on the first computing device for monitoring a plurality of chat sessions.
    • During the chat session, instantiating interactive information exchange between the operator and a third party without providing the visitor access to that exchange.
    • Selectively displaying information from the third party, the operator, and the visitor in the first window frame.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,584,375 - “Method, System And Apparatus For Establishing And Monitoring Sessions With Clients Over A Communication Network,” issued February 28, 2017

The Invention Explained

  • Problem Addressed: The patent addresses the same technical problem as its parent ’950 Patent: the delay and lack of live interaction inherent in traditional web-based customer support systems (’375 Patent, col. 1:40-47).
  • The Patented Solution: The ’375 Patent describes a system for conducting a chat session that includes instantiating an "interactive information exchange" between the operator (first party) and a "third party" (e.g., another operator or coach) during a live chat with a visitor (second party), where the exchange is not accessible to the visitor (’375 Patent, Abstract; col. 2:54-65). This is a further articulation of the "whisper technology" concept.
  • Technical Importance: As with the ’950 Patent, this technology aims to improve customer support by allowing for discreet, real-time collaboration and coaching among support agents (Compl. ¶3).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶40).
  • Essential elements of claim 1 (a method claim) include:
    • Conducting a chat session between a first party and a second party.
    • Selectively activating a first window frame on a first computing device of the first party for receiving data input.
    • During the chat session, instantiating interactive information exchange between the first party and a third party without providing access to the exchange to the second party.
    • Selectively displaying information from the third party, first party, and second party in the first window frame.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,419,372 - “Method, System And Apparatus For Establishing And Monitoring Sessions With Clients Over A Communication Network,” issued September 17, 2019

  • Technology Synopsis: Continuing the same inventive theme, this patent describes a method for conducting a chat session between a first party (operator) and second party (visitor), which includes a step of instantiating a separate, private information exchange with a third party (e.g., another operator) that the second party cannot access (’372 Patent, Abstract; col. 2:54-65).
  • Asserted Claims: Independent claim 1 (Compl. ¶46).
  • Accused Features: The complaint alleges that Tawk's live chatting products practice the patented method (Compl. ¶¶ 25, 46).

U.S. Patent No. 10,951,559 - “Method, System And Apparatus For Establishing And Monitoring Sessions With Clients Over A Communication Network,” issued March 16, 2021

  • Technology Synopsis: This patent claims a system, including a first computing device with a processor configured to run software, for conducting chat sessions. The claimed functionality includes instantiating a private interactive exchange between an operator and a third party during a live chat with a visitor (’559 Patent, Abstract).
  • Asserted Claims: Independent claim 14 (Compl. ¶52).
  • Accused Features: The complaint alleges that Tawk's live chatting products meet the limitations of the claimed system (Compl. ¶¶ 25, 52).

U.S. Patent No. 11,283,739 - “Method, System And Apparatus For Establishing And Monitoring Sessions With Clients Over A Communication Network,” issued March 22, 2022

  • Technology Synopsis: This patent claims a system comprising a server and a first computing device configured to conduct a chat session. The system facilitates a private information exchange between an operator and a third party, where the third party's input is displayed in-line with the visitor chat on the operator's screen but remains hidden from the visitor (’739 Patent, Abstract; col. 13:40-43).
  • Asserted Claims: Independent claim 15 (Compl. ¶58).
  • Accused Features: The complaint alleges that Tawk's live chatting products infringe by practicing the claimed system and methods (Compl. ¶¶ 25, 58).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Defendant Tawk’s live chatting products and services, sold under the brand name “tawk.to” or “Tawk.to” (Compl. ¶25).
  • Functionality and Market Context: The complaint alleges that the accused products provide live chat functionality for websites, enabling real-time communication between website operators and visitors (Compl. ¶¶ 2, 4). Plaintiff alleges that a key feature of its own technology, the "LHN Whisper" function, is an "integral part of Tawk's live chatting products" (Compl. ¶5). This functionality is described as the "ability for a website operator to communicate a message to another operator directly in the active chat session, while this message remains hidden to the website visitors/customers" (Compl. ¶2). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits 7-11) purporting to show how the accused products meet the asserted claim limitations (Compl. ¶¶ 34, 40, 46, 52, 58). As these exhibits were not attached to the publicly filed complaint, a detailed element-by-element analysis based on the plaintiff's initial contentions is not possible. The infringement theory is therefore summarized in prose based on the complaint's narrative allegations.

For each of the five patents-in-suit, the complaint alleges that the "Tawk Infringing Products" meet each and every limitation of the asserted independent claim (’950 Patent, claim 5; ’375 Patent, claim 1; ’372 Patent, claim 1; ’559 Patent, claim 14; ’739 Patent, claim 15) (Compl. ¶¶ 34, 40, 46, 52, 58). The core of this allegation appears to be that Tawk's products implement a "whisper" or private inter-agent messaging feature that allows one support agent to communicate with another during a live chat with a customer, without the customer seeing the private messages (Compl. ¶¶ 2, 5).

  • Identified Points of Contention:
    • Scope Questions: A central dispute may concern the meaning of "third party" as used in the claims. The infringement theory appears to cast a second support agent as the "third party" in a chat between a first agent ("first party") and a customer ("second party"). A question for the court may be whether two agents of the same company, using the same software platform, constitute distinct "parties" as contemplated by the patent claims.
    • Technical Questions: The claims require "instantiating interactive information exchange... without providing access to the... visitor." A key technical question will be what evidence demonstrates that the accused "tawk.to" system performs this specific function. The analysis may explore whether the accused system creates a technically separate communication channel for the inter-agent messages or uses an alternative method, such as message flagging, that might not meet the "without providing access" limitation under a particular claim construction.

V. Key Claim Terms for Construction

  • The Term: "third party" (asserted claims of ’950, ’375, and ’372 Patents)

  • Context and Importance: This term is critical because the infringement theory depends on casting a second support agent as the "third party." The definition will determine whether the claims read on internal collaboration between agents or require communication with an entity external to the operator's organization. Practitioners may focus on this term because its plain meaning could be argued to differ from its application in the patent's described embodiments.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification repeatedly describes the inventive feature as enabling an operator to "communicate a message to another operator directly in the active chat session" (’950 Patent, col. 2:56-58). This suggests that "third party" was intended to encompass another agent within the same support system.
    • Evidence for a Narrower Interpretation: A defendant may argue that the ordinary meaning of "party" implies separate legal or organizational entities. The claims use the formal term "third party," while the detailed description often uses the more informal "another operator" or "coach," which could be argued to create ambiguity as to the intended scope of the claim term.

  • The Term: "instantiating interactive information exchange ... without providing access to the ... visitor" (asserted claims of ’950 and ’375 Patents)

  • Context and Importance: The technical mechanism by which the private "whisper" communication is achieved is central to infringement. Whether the accused product's functionality constitutes "instantiating" a new "exchange" and does so "without providing access" will be a key technical dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the result of the technology as the message remaining "hidden to the visitors/customers" (’950 Patent, col. 2:59-60). This focus on the functional outcome could support a broader interpretation that covers any technical implementation achieving this result.
    • Evidence for a Narrower Interpretation: The term "instantiating" suggests the creation of a new process or channel. Language requiring that this is done "without providing access" to the visitor could support a narrow interpretation requiring a specific system architecture where the visitor's client machine is technically firewalled from the inter-agent message data, not merely prevented from displaying it via the user interface.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts inducement based on Defendant allegedly creating and distributing "instructional materials, web pages, marketing materials, and/or similar materials with instructions for using the Tawk Infringing Products in an infringing manner" (Compl. ¶36). It asserts contributory infringement by alleging the accused products are "especially made for use in infringing" the patents and are "not staple articles of commerce suitable for a substantial non-infringing use" (Compl. ¶37).
  • Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents since at least August 8, 2019 (Compl. ¶29). This knowledge is allegedly based on a series of letters sent by Plaintiff's counsel to Defendant identifying the patents-in-suit on multiple dates prior to the lawsuit being filed (Compl. ¶¶ 29-31).

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

  • A core issue will be one of definitional scope: Can the claim term "third party", in the context of a chat between an operator ("first party") and a customer ("second party"), be construed to cover a second operator from the same organization using the same chat platform, as the patent's specification appears to describe?
  • A key evidentiary question will be one of technical implementation: As the complaint lacks specific technical details on the accused product's operation, the case will likely turn on what evidence Plaintiff can produce to show that the "tawk.to" platform's architecture performs the specific claimed step of "instantiating" a separate information "exchange" and does so "without providing access" to the visitor.