DCT

1:21-cv-08815

Realtime Tracker Inc v. RELX

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: [Realtime Tracker, Inc.](https://ai-lab.exparte.com/party/realtime-tracker-inc) v. RELX, Inc., 1:21-cv-08815, S.D.N.Y., 11/02/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant maintains its headquarters and a regular and established place of business in the district, solicits business there, and has committed acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Juris® Suite Timer software infringes a patent related to methods and systems for automatically tracking billable time for professionals.
  • Technical Context: The technology concerns software for contemporaneous time tracking, a critical function in professional service industries like law and consulting where billing is often based on time increments.
  • Key Procedural History: The complaint highlights that the patent-in-suit issued after a "thorough and assiduous prosecution," during which the USPTO Examiner distinguished the invention from prior art. The complaint quotes the Examiner's Reasons for Allowance, which states that the prior art did not teach using a computer to "automatically track an individual's task-by-task timekeeping associated with a personal code" or disclose an "individual timekeeper entry box" that contemporaneously tracks time.

Case Timeline

Date Event
2004-02-25 ’810 Patent Priority Date (Application Filing Date)
2005-08-25 ’810 Patent Application Publication Date
2012-07-24 U.S. Patent No. 8,229,810 Issued
2021-10-28 Date of Plaintiff's letter to Defendant alleging infringement
2021-11-02 Complaint Filed

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

  • Patent Identification: 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’s background section describes the difficulty professionals, such as attorneys, face in contemporaneously and accurately recording all their billable time. This often leads to "time being lost and never billed" because professionals are unable to recall every task performed throughout the day (’810 Patent, col. 1:42-46).
    • The Patented Solution: The invention is a computer method and system that automatically generates a "timekeeper entry box" on a professional's computer screen whenever a billable task is initiated, such as opening a document, starting an email, or beginning a research session (’810 Patent, col. 2:27-32, 58-62). This entry box, illustrated in figures like Figure 3, tracks the time spent on the task in real-time and allows for the entry of identifiers for the user ("personal code") and the matter ("client identifier"), thereby creating an automated, contemporaneous billing record for each discrete task (’810 Patent, col. 2:32-38).
    • Technical Importance: This approach aimed to solve the problem of revenue leakage in professional services by shifting timekeeping from a manual, retrospective process to an automated, contemporaneous one integrated directly into the professional's computer workflow (’810 Patent, col. 1:25-34).
  • Key Claims at a Glance:
    • The complaint asserts independent method claims 1, 26, and 29, as well as independent computer readable medium claims 18, 28, and 31 (Compl. ¶23).
    • Independent Claim 1 (document-based):
      • detecting opening of at least one document; and
      • 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 document
      • wherein said individual timekeeper entry box contemporaneously tracks time associated with said personal code and said client identifier said document is in use to track time for an individual by client on a document by document basis using the computer.
    • Independent Claim 26 (service-based):
      • detecting initiation of at least one client service; and
      • 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 client-service
      • wherein said individual timekeeper entry box contemporaneously tracks time associated with said personal code and said client identifier of said client-service to track time for an individual by client on a client-service by client-service basis using the computer.
    • The complaint reserves the right to assert various dependent claims (Compl. ¶¶32, 35).

III. The Accused Instrumentality

  • Product Identification: The accused products are Defendant’s "Juris® Suite Timer software, including a Juris® Suite time entry screen, in multiple versions, including its most recent 3.0 version" (Compl. ¶20).
  • Functionality and Market Context: The complaint alleges that the Juris® Suite Timer is a "time management platform for keeping detailed time records" targeted at legal professionals (Compl. ¶21). The software is promoted as providing firm leaders a "real-time view of timekeeper productivity" (Compl. ¶21). Functionally, it is alleged to use a "computer generated timekeeper entry box to automatically track on a realtime basis an employee's billable time by personal code and client identifier" corresponding to activities like generating documents or participating in telephone calls (Compl. ¶20). A screenshot provided in the complaint shows the "Juris® Suite time entry screen," which includes fields for a timekeeper, client, matter, and a timer function. (Compl. ¶22).

IV. Analysis of Infringement Allegations

The complaint provides exemplary claim charts mapping features of the Juris® Suite Timer to the elements of claims 29 and 31 (’810 Patent, Compl. pp. 9-12). The screenshot from the complaint showing an example of a Juris® Suite time entry screen provides visual support for the allegations regarding the user interface (Compl. ¶22, p. 8).

  • ’810 Patent Infringement Allegations
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: detecting initiation of at least one telephone call; The Juris® Suite Time Entry screen allegedly enables "detecting initiation of a telephone call, in this example, upon clicking on the start timer button." A screenshot shows a time entry interface with a "Start Timer" button. ¶23, p. 9 col. 15:63-65
and 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 The accused software generates a "Juris® Suite Time Entry screen" that includes an entry for a personal code ("Timekeeper") and a second entry for a client identifier ("Client"/"Matter"). A screenshot of the interface shows input fields labeled "Timekeeper," "Client," and "Matter." ¶23, p. 10 col. 5:65-6:2
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. The complaint alleges the Juris® Suite Time Entry screen includes a timer that "contemporaneously tracks time of the telephone call associated with the personal code and client identifier." A screenshot shows the time entry screen with a running timer display after the "Start Timer" button is presumably clicked. This screen is alleged to track time for the user's participation in the telephone call. ¶23, p. 10 col. 2:58-62
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the phrase "detecting initiation" of a task (e.g., a telephone call) requires an automated, system-level event trigger, or if it can be read to cover a user manually clicking a "start timer" button within a general-purpose time entry application, as the complaint's evidence suggests (Compl. p. 9). The patent’s emphasis on automatic operation could be a focus of dispute (’810 Patent, col. 2:58-62).
    • Technical Questions: The complaint asserts infringement of claims specific to different tasks (documents, services, telephone calls). A technical question is whether the accused generic timer functionally "detects" the specific type of task being performed (e.g., distinguishing a telephone call from document work), or if it is a task-agnostic timer that relies entirely on the user to manually associate the time entry with a particular activity.

V. Key Claim Terms for Construction

  • The Term: "detecting" (e.g., "detecting opening of at least one document" or "detecting initiation of at least one client service")

  • Context and Importance: This term is critical because the infringement theory may depend on whether it requires a fully automated process or can encompass a user-initiated action. Practitioners may focus on this term because the complaint's evidence shows a user clicking a "start timer" button (Compl. p. 9), while the patent specification repeatedly highlights automation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain meaning of "detect" does not inherently exclude user input as the trigger for detection. The patent claims different methods for detecting different tasks, which may suggest the mechanism for detection can vary (e.g., Claim 1, Claim 26, Claim 29).
    • Evidence for a Narrower Interpretation: The specification states the "time computation feature... will automatically start upon creation of a LAN document" and the timekeeper entry box "may automatically appear" (’810 Patent, col. 2:38-40, 58-60). The Examiner's Reasons for Allowance distinguished prior art because it did not "automatically track" time (Compl. ¶12). This language may support an argument that "detecting" implies an automated system action without direct user command to start the timer.

  • The Term: "individual timekeeper entry box"

  • Context and Importance: The definition of this term will determine the scope of the required user interface. The defendant may argue its standard time entry screen is not the specific "box" claimed in the patent. The patent's novelty, as recognized by the Examiner, was tied to this "unique computer generated individual timekeeper entry box" (Compl. ¶12).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the box in functional terms, as a mechanism that "may include a field for entry of a client identifier" and other data, suggesting any UI that performs this function could qualify (’810 Patent, col. 2:34-38).
    • Evidence for a Narrower Interpretation: The patent provides multiple, consistent figures (e.g., Fig. 3, 4, 5) depicting a specific type of pop-up or integrated interface element. A party could argue these embodiments limit the term to a UI with a similar structure, distinct from a generic application window.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges RELX induces infringement by providing its customers with the Juris® Suite Timer software and encouraging its use through "demonstrations, instructions and related documentation, materials, marketing, advertising, training or support," including a "LexisNexis University video series" (Compl. ¶¶45-46).
  • Willful Infringement: Willfulness is alleged based on both constructive and actual knowledge. The complaint alleges constructive knowledge from the date of the patent's issuance in 2012 (Compl. ¶26). It alleges actual knowledge from "at least as early as the filing of the Complaint and receipt of a letter from undersigned counsel... on October 28, 2021" (Compl. ¶27).

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

  1. A core issue will be one of claim construction and automation: Can the term "detecting," as used in the claims, be construed to cover a user manually clicking a "start timer" button, or does the patent's emphasis on automated and contemporaneous tracking limit the term to a system-initiated process that occurs without such direct user command?
  2. A second key issue will be one of infringement and specificity: Does the accused general-purpose time entry screen perform the claimed function of "detecting" the initiation of specific tasks (e.g., a "document opening" under Claim 1 or a "telephone call" under Claim 29), or is it a task-agnostic timer whose operation is not sufficiently linked to the specific events required by the distinct independent claims?