1:18-cv-00882
Epic IP LLC v. Sharp Electronics Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Epic IP LLC (Texas)
- Defendant: Sharp Electronics Corporation (New York)
- Plaintiff’s Counsel: Zimmerman Law Group
- Case Identification: 1:18-cv-00882, S.D.N.Y., 05/10/2018
- Venue Allegations: Venue is based on Defendant's incorporation within the state of New York and the allegation that infringing acts occurred within the district.
- Core Dispute: Plaintiff alleges that Defendant’s website-based customer support chat feature infringes a patent related to the dynamic, on-demand formation of on-line chat sessions.
- Technical Context: The technology at issue involves methods and systems for enabling real-time chat between users on a website without relying on traditional, pre-established, topic-based chat rooms.
- Key Procedural History: The complaint notes that the patent-in-suit was distinguished during its prosecution from prior art that disclosed pre-established chat rooms with pre-existing relationships between users. It also states the patent has been cited during the prosecution of over one hundred patent applications by numerous major technology companies, suggesting its potential relevance in the field.
Case Timeline
| Date | Event |
|---|---|
| 1999-09-30 | '599 Patent Priority Date |
| 2002-08-13 | '599 Patent Issue Date |
| 2018-05-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,434,599 - Method and Apparatus for On-Line Chatting
The Invention Explained
- Problem Addressed: The patent describes prior art on-line chat systems as "confining" (Compl. ¶12; ’599 Patent, col. 1:40-41). These systems required users to visit pre-established, topic-based chat rooms, often with requirements for pre-registration, log-ins, and scheduled chat times, which prevented spontaneous conversations related to a user's current web browsing activity (’599 Patent, col. 1:23-36).
- The Patented Solution: The invention claims to provide an "enhanced chatting experience that is more closely related to their real world experience" by allowing for the "dynamic formation of a chat session" for users who are currently visiting a specific "information page" (e.g., a commercial website) (’599 Patent, col. 1:55-57, col. 2:60-65). This allows two users to begin chatting on-demand, in a session that is "unaffiliated with any pre-established chat room" (’599 Patent, col. 10:33-35).
- Technical Importance: This approach enabled websites to integrate context-sensitive, real-time communication tools (such as for customer support or sales) directly into the user experience, rather than directing users to an external or pre-existing chat forum (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 19.
- Independent Claim 1 (Method):
- Facilitating a visit by a first on-line user to an information page of an information site;
- Facilitating dynamic formation of a chat session "unaffiliated with any pre-established chat room" for the first user and a second user; and
- Facilitating the chat session itself.
- Independent Claim 19 (Information Server):
- A plurality of information pages selectively provided to a client computer; and
- A "first script/applet" included with an information page that enables the client computer to initiate the "dynamic formation of a chat session unaffiliated with any pre-established chat room."
- The complaint reserves the right to assert dependent claims, including claims 2 and 3 (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "Live chat" feature on Defendant's support website (Compl. ¶¶16-17).
Functionality and Market Context
The complaint alleges that the "Live chat" feature allows a user visiting Sharp's support website to initiate a real-time text chat with a second user, identified as a customer support representative (Compl. ¶18). A screenshot provided in the complaint shows the user-facing "Live Chat" button on the support webpage. (Compl. ¶17, p. 5). The complaint alleges this feature is implemented via a computer script that, when activated by the user, creates a new chat session in a separate window for the user and the support representative (Compl. ¶¶18, 23). The complaint does not provide detail on the product's market positioning beyond its function as a customer support tool.
IV. Analysis of Infringement Allegations
'599 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| facilitating visit by a first on-line user to an information page of an information site; | Defendant's website (sharpusa.com) facilitates visits by users via standard communication protocols like HTTP. |
¶17 | col. 4:15-23 |
| facilitating dynamic formation of a chat session unaffiliated with any pre-established chat room for said first on-line user and a second on-line user to chat with each other; | Upon a user's request (e.g., clicking the "Live Chat" button), the website allegedly creates a new chat session between the user and a customer support representative that is unaffiliated with any pre-established, topic-based chat room. | ¶18, ¶20 | col. 4:23-28 |
| and facilitating said chat session through which said first and second on-line users chat with each other. | The website facilitates the chat, as shown in screenshots depicting a conversation between a user and a support agent named "Deidra." A screenshot shows a user initiating contact with a support agent. (Compl. ¶19, p. 6). | ¶19 | col. 4:28-29 |
'599 Patent Infringement Allegations (Claim 19)
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of information pages to be selectively provided to a client computer responsive to the client computer's request; | Defendant's website is alleged to be an information server comprising multiple pages (e.g., homepage, support pages) provided to users' computers upon request. | ¶22 | col. 3:51-58 |
| and a first script/applet to be included with a responsive information page to enable the client computer to initiate dynamic formation of a chat session unaffiliated with any pre-established chat room... | The complaint identifies a "script/applet" in the website's HTML code that enables the initiation of the chat session when a user clicks the "live chat" icon. The complaint includes a snippet of HTML code allegedly corresponding to the "Live Chat" link. (Compl. ¶23, p. 8). | ¶23 | col. 6:46-55 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the meaning of "unaffiliated with any pre-established chat room." The defense could argue that a system connecting a user to a pre-existing pool of customer service agents is, in fact, a form of pre-established chat system, even if the specific session is instantiated on demand. The question for the court will be whether the claim term was intended to distinguish from the technical architecture of a chat system or from the user-facing, topic-based public chat rooms described as prior art in the patent.
- Technical Questions: The complaint alleges dynamic formation occurs when a user clicks the chat icon (Compl. ¶20). A technical question is what evidence demonstrates that this action "creates a new chat session" rather than merely connecting the user to an existing, persistent chat server or platform that manages a queue of waiting agents. The distinction between "dynamic formation" and "connecting to a pre-established system" may be a key factual dispute.
V. Key Claim Terms for Construction
The Term
"unaffiliated with any pre-established chat room"
Context and Importance
This term is the primary point of distinction between the claimed invention and the prior art described in the patent. The outcome of the infringement analysis for both asserted independent claims will likely depend heavily on how this term is construed. Practitioners may focus on this term because it appears to be the core inventive concept asserted against the accused system.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent's background section repeatedly contrasts the invention with prior art chat rooms that were "organized by subject matters, such as movies, TV shows, health, family, social and political issues" and hosted by specific portals or interest groups (’599 Patent, col. 1:25-31). This context may support a construction where "pre-established chat room" means a public, topic-specific forum, thereby allowing the claim to read on any on-demand chat that is not one of those specific types.
- Evidence for a Narrower Interpretation: The patent also states that in the prior art, "a user can go to a pre-established on-line chat room" (’599 Patent, col. 1:23-25). A party could argue that any system where a user is routed to a defined group (like a pool of support agents) through a pre-configured software interface constitutes a "pre-established on-line chat room," even if it lacks a public-facing subject matter. The term could be construed to require a system where users can dynamically connect with other individual users who are not part of a pre-defined group.
VI. Other Allegations
Indirect Infringement
The complaint contains a single count for direct patent infringement and does not plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement.
Willful Infringement
The complaint does not include an explicit allegation of willful infringement. It alleges "constructive notice of the ‘599 patent by operation of law," which is a baseline for damages and does not, on its own, typically support a finding of willfulness (Compl. ¶26). No specific facts alleging pre-suit knowledge of the patent are presented.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the following central questions:
A core issue will be one of definitional scope: Can the claim term "unaffiliated with any pre-established chat room", which the patent defines against the backdrop of 1990s-era, topic-based internet forums, be construed to read on a modern corporate customer service system that connects a user to a pre-existing group of support agents?
A key evidentiary question will be one of technical implementation: Does the accused "Live Chat" system, which connects a website visitor to a support agent, perform the "dynamic formation" of a chat session as claimed, or does it function by connecting the user to a persistent, pre-established chat platform, raising a question of a fundamental mismatch in technical operation?