DCT
2:22-cv-02655
Disintermediation Services Inc v. 4 Walls Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Disintermediation Services, Inc. (Delaware)
- Defendant: 4 Walls Inc. (Delaware)
- Plaintiff’s Counsel: Flaster Greenberg, P.C.; Freeborn & Peters LLP
- Case Identification: 2:22-cv-02655, E.D. Pa., 09/02/22
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is headquartered and maintains a regular and established place of business within the Eastern District of Pennsylvania.
- Core Dispute: Plaintiff alleges that Defendant’s "Respage" chat services infringe four patents related to real-time communication systems that manage conversations between unauthenticated web users and one or more responders across disparate communication platforms.
- Technical Context: The technology enables anonymous, browser-based users to engage in real-time conversations with customer service or sales agents who may be using different communication methods, such as SMS or dedicated chat applications, without either party needing to know the other's contact information.
- Key Procedural History: The patents-in-suit are all continuations within the same family, sharing a substantially identical specification and a 2011 priority date. Plaintiff alleges it provided Defendant with pre-suit notice of the ’183 Patent via a letter and claim chart on March 2, 2022, and that Defendant subsequently declined to take a license to the patent portfolio.
Case Timeline
| Date | Event |
|---|---|
| 2011-10-17 | Earliest Priority Date for all Patents-in-Suit |
| 2022-02-01 | U.S. Patent No. 11,240,183 Issues |
| 2022-03-02 | Plaintiff sends pre-suit notice letter regarding '183 Patent |
| 2022-05-17 | U.S. Patent No. 11,336,597 Issues |
| 2022-05-31 | U.S. Patent No. 11,349,787 Issues |
| 2022-08-16 | U.S. Patent No. 11,418,466 Issues |
| 2022-09-02 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,240,183 - Two-way real time communication system (RTC) that allows asymmetric participation in conversations across multiple electronic platforms
- Patent Identification: U.S. Patent No. 11,240,183, issued February 1, 2022.
The Invention Explained
- Problem Addressed: The patent identifies deficiencies in prior art real-time communication (RTC) systems, which required: (1) both parties to use a common protocol (e.g., both using the same instant messaging client); (2) the initiating party to know the recipient's contact address beforehand; and (3) both parties to be identified to each other during the communication (’183 Patent, col. 2:60-67; Compl. ¶33).
- The Patented Solution: The invention describes an intermediary system that acts as a proxy, allowing an "unauthenticated" user on a web browser to initiate a conversation with one or more "responders" who may be using different communication platforms (e.g., SMS, XMPP, SIP) (’183 Patent, Fig. 1). The system manages and routes the messages, preserving anonymity by not revealing the responder's underlying contact information to the user, and unifies disparate responses into a single conversation thread for the web user (’183 Patent, col. 3:18-25; Compl. ¶34). This system handles the "message stream convergence and routing" between otherwise incompatible platforms (’183 Patent, col. 7:17-19).
- Technical Importance: This approach decouples the front-end user interface from the back-end communication technologies, allowing businesses to engage with anonymous website visitors for sales or support without forcing either party onto a specific, shared platform (’183 Patent, col. 4:46-54).
Key Claims at a Glance
- The complaint asserts independent claim 1 as representative (Compl. ¶122).
- Essential elements of claim 1 include:
- Receiving a request from an unauthenticated user of a web browser.
- Sending a question from a first responder to the user.
- Receiving a first communication (an answer) from the user.
- Ending the conversation with the first responder.
- Identifying, based on the first communication, a second responder different from the first.
- Determining the communication protocol and address of the second responder.
- Sending the user's first communication to the second responder.
- Receiving a reply from the second responder and sending it to the user's web browser, without including the second responder's communication address.
- Plaintiff reserves the right to assert additional claims (Compl. ¶123).
U.S. Patent No. 11,336,597 - Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms
- Patent Identification: U.S. Patent No. 11,336,597, issued May 17, 2022.
The Invention Explained
- Problem Addressed: As a continuation of the '183 Patent, the ’597 Patent addresses the same technical problems of protocol incompatibility and the need for anonymity in web-based RTC (Compl. ¶55; ’597 Patent, col. 2:60-67).
- The Patented Solution: The ’597 Patent describes the same core intermediary system for managing communications between an unauthenticated web user and multiple, protocol-diverse responders (’597 Patent, Abstract; Compl. ¶58). The specification is alleged to be substantially identical to that of the ’183 Patent (Compl. ¶55).
- Technical Importance: The technical importance is identical to that of the ’183 Patent, as described above.
Key Claims at a Glance
- The complaint asserts independent claim 1 as representative (Compl. ¶131).
- Essential elements of claim 1 include:
- Receiving a communication request from an unauthenticated user.
- Sending a request for information from a first responder to the user.
- Receiving a first communication from the user.
- Identifying, based on the first communication, a second responder different from the first.
- Determining the communication protocol of the second responder.
- Sending the user's first communication to the second responder.
- Receiving a reply from the second responder and sending it to the user's web browser.
- A notable difference from claim 1 of the ’183 Patent is the absence of an explicit step to "end the conversation with the first responder" and the lack of a requirement that the reply "not include the communication address of the second responder."
- Plaintiff reserves the right to assert additional claims (Compl. ¶132).
U.S. Patent No. 11,349,787 - Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms
- Patent Identification: U.S. Patent No. 11,349,787, issued May 31, 2022.
- Technology Synopsis: As a continuation in the same family, this patent also addresses managing communications between anonymous web users and responders (Compl. ¶77). The claims of the ’787 Patent introduce a specific focus on the data management aspect of the system, requiring the system to "store, in a persistent data store, a first association" and later "retrieve, from the persistent data store," the conversation information using a conversation identifier (’787 Patent, Claim 1). This patent emphasizes the technical solution for maintaining conversation state and history.
- Asserted Claims: Representative Claim 1 (Compl. ¶139).
- Accused Features: The "Respage" chat services are accused of infringing by using a persistent data store to create, associate, and later retrieve conversation data to manage user-responder interactions (Compl. ¶¶80, 139).
U.S. Patent No. 11,418,466 - Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms
- Patent Identification: U.S. Patent No. 11,418,466, issued August 16, 2022.
- Technology Synopsis: This continuation patent expands the inventive concept to explicitly cover scenarios involving multiple distinct users interacting with a single responder (Compl. ¶¶99, 102). The claims describe a system where a responder communicates with a "first user" via a "first active communication protocol" and also communicates with a "second user, wherein the second user is different from the first user," via a "second active communication protocol" that is different from the first (’466 Patent, Claim 1). This patent's innovation centers on the system's ability to manage a responder's concurrent conversations across multiple users and protocols.
- Asserted Claims: Representative Claim 1 (Compl. ¶147).
- Accused Features: The "Respage" chat services are accused of infringing by coordinating communication between a responder and multiple, different users who are utilizing different communication protocols (Compl. ¶¶102, 147).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant 4 Walls Inc.’s "chat related services offered as Respage" (Compl. ¶¶122, 131, 139, 147).
Functionality and Market Context
- The complaint describes the accused Respage services as a system that facilitates communication between web users and responders (Compl. ¶122). Based on the infringement allegations across the four patents, the accused functionality includes initiating conversations with unauthenticated web users, handing off conversations between different responders, storing and retrieving conversation data in a persistent manner, and managing communications between a single responder and multiple, distinct end-users using different protocols (Compl. ¶¶37, 80, 102). The complaint does not provide sufficient detail for analysis of the product's specific commercial importance or market positioning. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,240,183 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an electronic processor configured to: receive a request from an unauthenticated user of a web browser for a web page; | The Respage service allegedly receives communication requests initiated by unauthenticated users from a web browser. | ¶¶37, 121, 122 | col. 3:40-44 |
| send to the web browser from a first responder a question for the unauthenticated user... | The Respage service allegedly sends a question, potentially from an automated agent or first-line responder, to the user's browser. | ¶¶37, 121, 122 | col. 6:22-28 |
| receive a first communication as part of a conversation from the unauthenticated user of the web browser, wherein the first communication comprises an answer to the question; | The Respage service allegedly receives a responsive communication back from the user via their web browser. | ¶¶37, 121, 122 | col. 7:31-34 |
| end the conversation with the first responder; | The complaint alleges infringement of this claim, which requires alleging the Respage service ends the initial interaction before escalating. | ¶¶121, 122 | col. 10:25-28 |
| identify, based on the first communication, a second responder, wherein the second responder is different from the first responder; | The Respage service allegedly identifies a new, different responder (e.g., a human agent) to handle the conversation based on the user's initial communication. | ¶¶37, 121, 122 | col. 5:1-4 |
| determine a communication protocol of the second responder; | The Respage service allegedly determines the appropriate communication method (e.g., SMS, proprietary chat) for the second responder. | ¶¶37, 121, 122 | col. 7:5-7 |
| send the first communication to the second responder based on the communication address of the second responder; | The Respage service allegedly forwards the user's message to the identified second responder using their specific protocol and address. | ¶¶37, 121, 122 | col. 8:10-14 |
| receive, from the communication address of the second responder, a first reply...; map the first reply to the web browser...; send the first reply to the web browser... | The Respage service allegedly receives the reply from the second responder, maps it back to the correct user conversation, and delivers it to the user's browser. | ¶¶37, 121, 122 | col. 8:35-39 |
| wherein the first reply and the first communication do not include the communication address of the second responder. | The Respage service allegedly preserves anonymity by not exposing the responder's direct contact information to the user. | ¶¶37, 121, 122 | col. 3:21-25 |
U.S. Patent No. 11,336,597 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an electronic processor configured to: receive a communication request, from a web browser of an unauthenticated user of a web page... | The Respage service allegedly receives communication requests initiated by unauthenticated users from a web browser. | ¶¶58, 130, 131 | col. 3:40-44 |
| send to the web browser from a first responder a request for information for the unauthenticated user... | The Respage service allegedly sends a question from a first responder to the user's browser. | ¶¶58, 130, 131 | col. 6:22-28 |
| receive a first communication as part of the conversation from the unauthenticated user of the web browser; | The Respage service allegedly receives a responsive communication back from the user. | ¶¶58, 130, 131 | col. 7:31-34 |
| identify, based on the first communication, a second responder, wherein the second responder is different from the first responder; | The Respage service allegedly identifies a new, different responder to handle the conversation based on the user's initial communication. | ¶¶58, 130, 131 | col. 5:1-4 |
| determine a communication protocol of the second responder; | The Respage service allegedly determines the appropriate communication method for the second responder. | ¶¶58, 130, 131 | col. 7:5-7 |
| send the first communication to the second responder based on the communication protocol of the second responder; | The Respage service allegedly forwards the user's message to the identified second responder. | ¶¶58, 130, 131 | col. 8:10-14 |
| receive, from the second responder, a first reply...; determine the conversation identifier based on the first reply; map the first reply to the web browser...; and send the first reply to the web browser. | The Respage service allegedly receives the reply from the second responder, associates it with the ongoing conversation, and delivers it to the user's browser. | ¶¶58, 130, 131 | col. 8:35-39 |
Identified Points of Contention
- Scope Questions: A central question for both patents will be the definition of a "responder." Does an automated chatbot qualify as a "first responder," allowing a subsequent human agent to be the "second responder"? The specification's mention of a "virtual assistant" may support this broad interpretation (’183 Patent, col. 6:25). The interpretation of "unauthenticated user" will also be critical to defining the scope of infringing activity.
- Technical Questions: The complaint does not specify how the accused Respage service performs the step of "identify[ing], based on the first communication, a second responder." Discovery will likely focus on whether the accused system performs this identification based on the content or context of the communication, as described in the patent (’183 Patent, col. 5:1-4), or uses a more generic hand-off mechanism that may not meet this limitation.
- Claim Scope Differences: For the ’183 Patent, a potential point of contention is the "end the conversation with the first responder" limitation. Defendant may argue its system does not formally "end" the first interaction but merely places it on hold, which could present a non-infringement defense to that specific patent that would not apply to the ’597 Patent, which lacks this element.
V. Key Claim Terms for Construction
The Term: "responder" ("first responder", "second responder")
- Context and Importance: The construction of this term is critical because many modern chat systems initiate contact with an automated agent (a chatbot) before escalating to a human. Whether a chatbot can be a "first responder" and a human a "second responder" is fundamental to the infringement analysis for the ’183 and ’597 patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not limit "responders" to humans. It describes functionality where an initiator can be engaged by a "concierge or virtual assistant" while waiting for a live agent, which suggests an automated system can act as a responder (’183 Patent, col. 6:22-28).
- Evidence for a Narrower Interpretation: A defendant might argue that in the context of the overall invention, a "responder" implies a party capable of substantively answering a question, which might exclude simple, automated routing bots. The claims describe a back-and-forth "conversation," which may suggest a higher level of interaction than a simple bot provides.
The Term: "identify, based on the first communication, a second responder"
- Context and Importance: This term defines the core logic for escalating or transferring a conversation. Its construction will determine what level of technical sophistication is required for infringement. Practitioners may focus on this term because it appears to require more than a random or default transfer; the identification must be "based on" the user's input.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not specify how the identification must be made. An argument could be made that any non-random assignment triggered by the receipt of the user's message (e.g., routing to a specific department based on a single keyword) meets the "based on" requirement.
- Evidence for a Narrower Interpretation: The specification provides examples of sophisticated criteria for identification, such as "word-choice in the communication," "meta-data," and "syntax of language" (’183 Patent, col. 5:1-4), which could support a narrower construction requiring some level of content analysis, not just a simple trigger.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement for all four patents. Induced infringement is alleged based on Defendant’s knowledge of the patents (at least of the ’183 Patent via a pre-suit letter dated March 2, 2022) and its actions in providing the accused Respage service, which allegedly causes its customers and end-users to infringe (Compl. ¶¶125-126, 134). Contributory infringement is alleged on the basis that the infringing components of the Respage service are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶124, 133).
Willful Infringement
- Willfulness is alleged for all four patents. The allegation for the ’183 Patent is based on alleged pre-suit knowledge stemming from the March 2, 2022 notice letter and subsequent communications in which Defendant allegedly declined to license the technology (Compl. ¶¶126, 128). For the ’597, ’787, and ’466 patents, the willfulness allegation appears to be based on knowledge acquired upon the filing of the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "responder" be construed to cover an automated chatbot as the "first responder" and a human agent as the "second responder"? The viability of the infringement case for the lead patents may depend heavily on whether this common industry practice falls within the patent's language.
- A key evidentiary question will be one of technical implementation: What evidence will emerge in discovery to show that the accused Respage service performs the specific, intelligent functions required by the claims, such as "identify[ing] a second responder based on the first communication"? The case may turn on whether the accused product's hand-off mechanism is merely a generic transfer or a sophisticated, content-aware routing process as contemplated by the patent's specification.
- A central strategic question involves the patent family litigation strategy: Plaintiff has asserted four related patents with slightly different claim scopes against the same product. A key issue will be whether the subtle differences—such as the data storage elements in the ’787 Patent or the multi-user elements in the ’466 Patent—provide distinct and durable infringement theories, or if a finding of non-infringement on the core technology of the lead patents would likely resolve the entire dispute.