DCT
2:15-cv-01247
Turn IP LLC v. HSBC North America Holdings Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Turn IP LLC (Texas)
- Defendant: HSBC North America Holdings Inc. (Delaware)
- Plaintiff’s Counsel: Austin Hansley PLLC.
- Case Identification: 2:15-cv-01247, E.D. Tex., 07/08/2015
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant conducts regular business, solicits and serves customers, and derives substantial revenue within the district, and has committed the alleged acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s service, which allows customers to select preferred contact methods such as paperless billing, infringes a patent related to a user interface for automatically transmitting data according to receiver-defined communication channel preferences.
- Technical Context: The technology concerns networked systems where the receiver of information, rather than the sender, can define and publish their preferred method of receipt (e.g., print, fax, email), which a sender's system then automatically honors.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1993-10-04 | ’461 Patent Priority Date |
| 1997-08-12 | ’461 Patent Issue Date |
| 2015-07-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,657,461 - User Interface for Defining and Automatically Transmitting Data According to Preferred Communication Channels
- Patent Identification: U.S. Patent No. 5,657,461, User Interface for Defining and Automatically Transmitting Data According to Preferred Communication Channels, issued August 12, 1997.
The Invention Explained
- Problem Addressed: The patent’s background section identifies a problem in networked systems where the sender of information typically controls the form in which it is sent, forcing the receiver to accept information in a format not of their choosing, and notes the lack of a mechanism for a sender to easily identify a receiver’s preferred method of receipt (’461 Patent, col. 3:19-24, col. 4:8-14).
- The Patented Solution: The invention proposes a system where a receiver can create and publish a "receiver profile" that defines their preferred properties and modes for receiving information (e.g., via a specific printer, email, or fax) (’461 Patent, Abstract). This profile is stored in a network repository, which a sender’s system can query to automatically transmit information to the receiver using their pre-selected, preferred channel (’461 Patent, col. 4:46-54). The user interface for creating such a profile is depicted in the patent’s figures (’461 Patent, FIG. 4).
- Technical Importance: This receiver-centric approach aimed to provide more efficient and customized communication by shifting control over the delivery format from the sender to the receiver, enabling a "variable receiver definable link" across multiple hardware platforms (’461 Patent, col. 4:58-62).
Key Claims at a Glance
- The complaint quotes language from independent method claim 3 and alleges infringement of "one or more claims" (’461 Patent, col. 13:19-38; Compl. ¶¶10-11).
- Essential elements of Independent Claim 3 include:
- In a network with a repository for storing a "communication channel profile" for each subscriber defining data receipt preferences, a method of sending information from a sender to a receiver.
- Selecting information at a graphical user interface for sending.
- Querying the network repository for the selected receiver's communication channel profile.
- Sending the information to the receiver over a communication channel that corresponds to a preference specified in their profile.
- The graphical user interface includes the capability of "altering the communication channel profile."
- The complaint's general allegation of infringing "one or more claims" reserves the right to assert other claims, including other independent claims (e.g., 1 and 8) (Compl. ¶11).
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentality" is identified as Defendant’s "product and/or service, which allowed its customers to choose their preferred method of contact such as by choosing paperless billing or allowing the customer to choose the address, e-mail, or phone number to be contacted at" (Compl. ¶11).
Functionality and Market Context
- The accused functionality allows an HSBC customer (a receiver of information) to select a preferred method for being contacted (Compl. ¶11). The specific example of "paperless billing" suggests a system where a customer can designate email as their preferred channel for receiving statements, a choice which Defendant’s system then uses for delivery (Compl. ¶11). The complaint does not provide further detail on the technical operation of the system or its market positioning, beyond asserting that Defendant derives "substantial revenue" from its services in Texas (Compl. ¶6).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The following table maps the allegations in the complaint to the elements of Claim 3, which is quoted in the complaint body. No probative visual evidence provided in complaint.
’461 Patent Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| In a graphical user interface for communicating information between senders and receivers over a network...a method of sending information from a sender operating the graphical user interface to a selected receiver... | Defendant provides "systems and methods for defining and automatically transmitting data" which allow customers to choose a preferred contact method (Compl. ¶11). | ¶11 | col. 13:19-26 |
| selecting information at the graphical user interface for sending to the selected receiver; | The complaint does not explicitly describe the "selecting information" step from the sender's (Defendant's) perspective, but this is implied by the allegation of a system for "transmitting data" (Compl. ¶11). | ¶11 | col. 13:27-28 |
| querying the network repository for the communication channel profile of the selected receiver; | The allegation that the system allows a customer "to choose their preferred method of contact" implies the existence of a stored profile that is queried before transmission (Compl. ¶11). | ¶11 | col. 13:29-31 |
| and (3) sending said information to the selected receiver over a first communication channel in response to a first preference of data receipt specified in the communication channel profile...including the capability of altering the communication channel profile...at the graphical user interface. | Defendant's system allegedly sends information via the customer's chosen method (e.g., e-mail for "paperless billing") (Compl. ¶11). The ability for a customer "to choose" their contact method implies the capability of altering the profile (Compl. ¶11). | ¶11 | col. 13:32-38 |
- Identified Points of Contention:
- Scope Questions: The infringement theory may raise a question of claim scope. Claim 3 recites a method of sending information performed by a "sender operating the graphical user interface." The complaint's allegations, however, focus on the customer (the receiver) operating an interface to set preferences. The case may therefore involve a dispute over whether the accused system, taken as a whole, meets this "sender operating" limitation.
- Technical Questions: The complaint alleges a system that functions according to the claim but provides no technical evidence (e.g., architectural diagrams, screenshots, or source code excerpts) to support the assertion that Defendant’s system performs the specific steps of "querying the network repository" or that a customer's preference for "paperless billing" constitutes a "communication channel profile" as contemplated by the patent.
V. Key Claim Terms for Construction
The Term: "a sender operating the graphical user interface"
Context and Importance: This term appears central because the complaint’s infringement theory rests on functionality allowing a receiver (the customer) to set preferences, while the claim language specifies a method step initiated by a sender operating the GUI. Practitioners may focus on this term to determine whether the claim requires the sender to be the party physically interacting with the interface used to initiate the claimed method.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the term covers any integrated system where the sender utilizes a GUI that is part of a larger system, which also includes the receiver-facing preference-setting interface. The patent describes a "multi-device user interface" that is "extensible across network services" (’461 Patent, col. 6:54-59), potentially supporting a view that the "sender's GUI" is part of a distributed system.
- Evidence for a Narrower Interpretation: A party may argue the plain language requires the individual or entity sending the information to be the one operating the specific GUI where the "selecting information" step occurs. The phrasing "a method of sending information from a sender operating the graphical user interface" directly links the sender to the operation of the interface (’461 Patent, col. 13:24-26).
The Term: "network repository"
Context and Importance: The existence and nature of a "network repository" is a core technical requirement of the claim. The infringement case depends on whether the database or system where HSBC stores customer contact preferences qualifies as such a repository.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any network-accessible data store, such as a customer relationship management (CRM) database, that holds the profile information meets this limitation. The patent itself refers to using a "relational database system" as part of the server architecture (’461 Patent, col. 6:21-22).
- Evidence for a Narrower Interpretation: A party could argue that the term implies more than just a private database field. The patent abstract describes the profile as being "published in a network repository for all network users or...accessible by selected groups," suggesting a shared or published resource, rather than a simple internal record (’461 Patent, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege any specific facts to support claims of induced or contributory infringement.
- Willful Infringement: The complaint does not contain an allegation of willful infringement. While the prayer for relief requests a declaration of an "exceptional case" for attorney's fees under 35 U.S.C. §285, it does not explicitly plead willfulness or request enhanced damages under §284 based on pre- or post-suit knowledge (Compl. p. 5).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim limitation "a method of sending information from a sender operating the graphical user interface" be construed to read on a system where the receiver operates an interface to set preferences that are later acted upon by the sender’s automated systems?
- A key evidentiary question will be one of technical mapping: what factual evidence will be produced to demonstrate that Defendant's system for managing customer contact preferences performs the specific, recited claim steps, such as "querying" a "network repository" for a "communication channel profile," as opposed to merely accessing a field in a customer database?