DCT
1:21-cv-08815
Realtime Tracker Inc v. RELX
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Realtime Tracker, Inc. (New York)
- Defendant: RELX, Inc. d/b/a LexisNexis (Massachusetts)
- Plaintiff’s Counsel: Leichtman Law PLLC
- Case Identification: 1:21-cv-08815, S.D.N.Y., 04/18/2022
- Venue Allegations: Venue is alleged based on Defendant maintaining its headquarters and principal place of business in the district, conducting business there, and committing the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Juris® Suite Timer software infringes a patent related to methods and systems for realtime, automated, task-by-task billable timekeeping.
- Technical Context: The technology addresses the automated and contemporaneous tracking of billable time for professionals, aiming to improve the accuracy and efficiency of billing, particularly in the legal services market.
- Key Procedural History: The complaint notes that the patent-in-suit issued after a patent examiner hired an independent contractor for a prior art search and issued Reasons for Allowance distinguishing specific prior art references. The complaint also alleges Defendant received actual notice of the patent and its alleged infringement via a letter dated October 28, 2021.
Case Timeline
| Date | Event |
|---|---|
| 2004-02-25 | U.S. Patent No. 8,229,810 Priority Date |
| 2005-08-25 | Publication of patent application, alleged basis for constructive knowledge |
| 2012-07-24 | U.S. Patent No. 8,229,810 Issue Date |
| 2021-10-28 | Date of letter providing alleged actual notice of infringement |
| 2022-04-18 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,229,810 - “Realtime Billable Timekeeper Method, System And Apparatus” (issued July 24, 2012)
The Invention Explained
- Problem Addressed: The patent background describes the "insurmountable burden for many professionals" who bill on an hourly basis, such as attorneys, in accurately and contemporaneously logging their time. This often results in lost billable time due to the difficulty of retrospectively recalling all tasks performed. (Compl. ¶16; ’810 Patent, col. 1:47-52).
- The Patented Solution: The invention is a computer-based system that automatically detects the initiation of a billable task—such as opening a document, starting an e-mail, or beginning a research session—and generates a corresponding "timekeeper entry box" on the user's screen. (’810 Patent, col. 2:21-34). This interface allows for entry of a personal code and a client identifier and automatically tracks the time spent on that specific task until it is completed, paused, or closed. (’810 Patent, Fig. 3).
- Technical Importance: The invention aims to solve the problem of inaccurate and incomplete time-logging by tightly coupling the act of performing a computer-based task with the act of recording the time for that task in a semi-automated, realtime process. (’810 Patent, col. 1:43-47).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, 18, 26, 27, 28, 29, 30, and 31. (Compl. ¶¶ 31, 40, 45).
- Independent Claim 1 (Method):
- detecting opening of at least one document;
- generating an individual timekeeper entry box including an entry for a personal code and a second entry for a client identifier; and
- contemporaneously tracking time with the entry box, associated with the personal code and client identifier, to track time on a document-by-document basis.
- Independent Claim 29 (Method):
- detecting initiation of at least one telephone call;
- generating an individual timekeeper entry box including an entry for a personal code and a second entry for a client identifier; and
- contemporaneously tracking time with the entry box, associated with the personal code and client identifier, to track time on a telephone call-by-telephone call basis.
- The complaint states that numerous dependent claims are also infringed. (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s Juris® Suite Timer software, including its time entry screen functionality. (Compl. ¶27).
Functionality and Market Context
- The complaint alleges the Juris® Suite Timer is a "time management platform" marketed to legal professionals to "increase productivity and per-partner income" by providing a "real-time view of timekeeper productivity." (Compl. ¶28). The product is alleged to provide realtime billable timekeeping for various tasks, including document drafting, client services, and telephone calls. (Compl. ¶30). A screenshot from a promotional video shows a "My Time Today" dashboard with multiple active timers for different tasks, such as "Case research," "Met with client on case," and "Administration and Plan." (Compl. ¶30). This visual evidence depicts the software's ability to track multiple tasks, for different clients, simultaneously or in seriatim. (Compl. ¶30).
IV. Analysis of Infringement Allegations
’810 Patent Infringement Allegations (Claim 29)
| Claim Element (from Independent Claim 29) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for individual realtime billable timekeeping using a computer, comprising a computer program for: | The Juris® Suite Timer is alleged to be a computer program that provides realtime billable timekeeping. (Compl. ¶¶15-16). | ¶15 | col. 10:9-11 |
| detecting initiation of at least one telephone call; and | The Juris® Suite Timer is alleged to detect the initiation of a telephone call, for example, when a user starts a timer for that task. A provided screenshot shows a time entry screen with a "Start Timer" button. (Compl. ¶16). | ¶16 | col. 17:19-21 |
| generating an individual timekeeper entry box including an entry for a personal code and a second entry for a client identifier corresponding to said at least one telephone call | It is alleged that the Juris® Suite Timer generates a "Juris® Suite Time Entry screen" which serves as the timekeeper entry box. A screenshot shows this screen containing fields for a "Timekeeper" (personal code) and "Client"/"Matter" (client identifier). (Compl. ¶16). | ¶16 | col. 17:22-29 |
| wherein said individual timekeeper entry box contemporaneously tracks time associated with said personal code and said client identifier of said telephone call to track time for an individual by client on a telephone call by telephone call basis using the computer. | Upon initiation, the Juris® Suite Time Entry screen is alleged to comprise a timer that contemporaneously tracks the time associated with the user's personal code and the selected client identifier for the telephone call task. (Compl. ¶16). | ¶16 | col. 17:29-37 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that the accused product's function of a user clicking a "start timer" button constitutes "detecting initiation" of a task. A central question for the court will be whether the term "detecting" as used in the claims, when read in light of the specification, can be construed to cover a user-prompted action, or if it requires a more automated, system-level detection of the task (e.g., the OS-level opening of a document).
- Technical Questions: The patent claims an "individual timekeeper entry box" that is generated for a task. The complaint's visual evidence at paragraph 30 shows a dashboard managing multiple timers simultaneously. An evidentiary question may arise as to whether the accused product generates a distinct, "individual" entry box for each task as claimed, or whether it operates as a single, persistent interface for managing a list of user-defined timers, which may represent a different technical implementation.
V. Key Claim Terms for Construction
The Term: "detecting"
- (e.g., "detecting opening of at least one document" in claim 1; "detecting initiation of at least one telephone call" in claim 29).
- Context and Importance: The construction of "detecting" is critical to the infringement analysis. The dispute may focus on whether this term requires fully automated, background system monitoring or if it can be satisfied by the system's recognition of a user command to begin timing a task.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes embodiments where a "precursor request can be configured to appear... requesting the professional whether the document, service or task should be billed," which implies user interaction before the timekeeper box is generated. (’810 Patent, col. 6:52-55). Plaintiff cites this and other examples of user control to argue that "detecting" is not limited to fully automatic actions. (Compl. ¶¶18-20).
- Evidence for a Narrower Interpretation: The patent's summary states the timekeeper entry box "may automatically appear on the professional's computer screen" and the "time computation... will automatically start upon creation of a LAN document." (’810 Patent, col. 2:38-40, col. 2:58-60). This language could support an interpretation requiring a higher degree of automation without direct user commands to start the timer.
The Term: "individual timekeeper entry box"
- Context and Importance: Practitioners may focus on this term because the specific structure and behavior of the claimed "box" are core to the invention. Infringement will depend on whether the accused product's user interface is properly characterized as an "individual timekeeper entry box" that is "generated" for each task.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent depicts several different configurations of the "Timekeeper Entry Box" (e.g., Figs. 3, 5, 6, 7), suggesting the term is not limited to a single, rigid embodiment but rather covers a graphical user interface with the core claimed functionality.
- Evidence for a Narrower Interpretation: The claims require this "box" to be "generated" upon detecting a task and to include specific fields for a "personal code" and "client identifier." (’810 Patent, col. 10:14-22). This could support a narrower definition requiring the appearance of a new, discrete UI element for each task, as opposed to adding a new entry to a persistent, pre-existing timer list or dashboard.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Defendant encourages infringement through its marketing, demonstrations, training materials, and user instructions for the Juris® Suite Timer. (Compl. ¶¶54-56). It is specifically alleged that Defendant instructs customers to use the software to create time entries, associate them with personal and client codes, and track time contemporaneously with tasks. (Compl. ¶¶57-60).
- Willful Infringement: The complaint alleges willfulness based on both constructive and actual knowledge. Constructive knowledge is asserted from the date of the patent's issuance. (Compl. ¶34). Actual knowledge is alleged based on a letter with the complaint and exhibits sent to Defendant on October 28, 2021, with infringement allegedly continuing thereafter. (Compl. ¶35, 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "detecting," in the context of initiating a billable task, be construed to cover the accused product's mechanism where a user manually starts a timer for a self-described task, or does it require fully automated system-level event monitoring?
- A key evidentiary question will be one of functional and structural correspondence: does the accused Juris® Suite Timer's dashboard, which manages multiple timers in a single view, meet the "individual timekeeper entry box" limitation, which the patent suggests is "generated" for each specific document, service, or call? The court will need to determine if there is a fundamental mismatch in the claimed architecture versus the accused product's implementation.