Disintermediation Services Inc v. Kroger Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Disintermediation Services, Inc. (Delaware)
  • Defendant: The Kroger Co. (Ohio) and Kroger Texas L.P.
  • Plaintiff’s Counsel: Global IP Law Group, LLC; Gillam Smith LLP
• Case Identification: 2:24-cv-00525, E.D. Tex., 07/11/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Kroger maintains regular and established places of business within the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s online chat system infringes four patents related to two-way, real-time communication systems that manage conversations between unauthenticated web users and company responders.
• Technical Context: The technology at issue facilitates real-time web chat without requiring users to log in, download special software, or use the same communication platform as the company representative.
• Key Procedural History: The complaint notes that the patents-in-suit survived a patent eligibility challenge under 35 U.S.C. § 101 on a motion to dismiss in a prior case in the Northern District of Illinois. Plaintiff also alleges it provided Defendant with pre-suit notice of infringement via a package containing a letter and claim charts, which was delivered on January 8, 2024.

Case Timeline

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

U.S. Patent No. 11,240,183

• Patent Identification: U.S. Patent No. 11,240,183, Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms, issued February 1, 2022.

The Invention Explained

• Problem Addressed: The patent and complaint describe the technical challenge of conducting stateful, real-time conversations over the internet using stateless protocols like HTTP, which do not inherently maintain a history of connections (Compl. ¶¶32, 34-35). Traditional solutions required users to log in, download common software, or use the same communication platform, creating friction for users. (’183 Patent, col. 2:1-5).
• The Patented Solution: The invention proposes a server-based system that acts as an intermediary. When an "unauthenticated user" of a web browser initiates a chat, the server creates a "conversation identifier" to track the dialogue and routes communications to a "responder" who may be using a different protocol (e.g., SMS, XMPP) (’183 Patent, Abstract; FIG. 3). The server uses this identifier to map replies back to the correct web browser, thereby maintaining the conversation's state without requiring a persistent connection or shared software between the parties. (’183 Patent, col. 8:15-38).
• Technical Importance: This architecture enables businesses to engage with anonymous website visitors without requiring them to create an account or provide personal information, which the complaint identifies as an impediment to user interaction. (Compl. ¶43).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶58).
• Essential elements of independent claim 1 include:
  • An electronic processor configured to: receive a request from an unauthenticated user of a web browser for a web page;
  • send to the web browser from a first responder a question for the unauthenticated user;
  • receive a first communication from the unauthenticated user comprising an answer to the question;
  • determine a conversation identifier for the conversation based on the first communication;
  • end the conversation with the first responder;
  • identify, based on the first communication, a second responder different from the first responder;
  • determine a communication protocol and address of the second responder;
  • send the first communication to the second responder;
  • receive a first reply from the second responder;
  • map the first reply to the web browser using the conversation identifier; and
  • send the first reply to the web browser, without including the communication address of the second responder.
• The complaint also asserts dependent claims 3 and 5 and reserves the right to assert additional claims. (Compl. ¶¶58, 60).

U.S. Patent No. 11,336,597

• Patent Identification: U.S. Patent No. 11,336,597, Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms, issued May 17, 2022.

The Invention Explained

• Problem Addressed: Like the ’183 Patent, this patent addresses the difficulty of enabling real-time chat between parties on disparate platforms (e.g., web browser vs. mobile device) and maintaining a coherent conversation over a stateless protocol like HTTP. (Compl. ¶¶32-35; ’597 Patent, col. 2:1-9).
• The Patented Solution: The system allows an unauthenticated web user to initiate a conversation, which is managed by a server that assigns a conversation identifier. (’597 Patent, col. 13:17-22, claim 1). The system can involve a "first responder," which may be a "virtual responder" (e.g., a bot), and then hand the conversation off to a different "second responder" (e.g., a human agent). (’597 Patent, col. 13:59-60, claim 8). This allows for layered communication, starting with automated interaction and escalating as needed.
• Technical Importance: This technology provides a framework for businesses to offer scalable, real-time customer support to anonymous website visitors, managing interactions across different communication channels seamlessly. (Compl. ¶¶30-31).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶58).
• Essential elements of independent claim 1 include:
  • An electronic processor configured to: receive a communication request from a web browser of an unauthenticated user;
  • send to the web browser from a first responder a request for information;
  • receive a first communication from the user;
  • determine a conversation identifier based on the first communication;
  • identify a second responder different from the first responder;
  • determine a communication protocol of the second responder;
  • send the first communication to the second responder;
  • receive a first reply from the second responder;
  • map and send the first reply to the web browser using the conversation identifier.
• The complaint also asserts dependent claims 3, 8, 15, and 16 and reserves the right to assert additional claims. (Compl. ¶¶58, 60).

Multi-Patent Capsule: U.S. Patent No. 11,349,787

• Patent Identification: U.S. Patent No. 11,349,787, Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms, issued May 31, 2022.
• Technology Synopsis: The ’787 Patent discloses a system for managing web-based chat where communications from an unauthenticated user are stored in a persistent data store using a conversation identifier. The technology allows for the conversation history to be retrieved upon request and enables the transfer of the conversation from a first responder to a second, different responder. (’787 Patent, Abstract; col. 13:5-41, claim 1).
• Asserted Claims: Independent claims 1 and 17. (Compl. ¶58).
• Accused Features: The complaint alleges that Kroger's online chat system, which allows for persistent and transferable customer service conversations, infringes the ’787 Patent. (Compl. ¶¶4, 50).

Multi-Patent Capsule: U.S. Patent No. 11,855,937

• Patent Identification: U.S. Patent No. 11,855,937, Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms, issued December 26, 2023.
• Technology Synopsis: The ’937 Patent claims a system where a conversation with an unauthenticated web user is initiated and stored with a conversation identifier. The system includes a feature to determine, based on the conversation, that the interaction with a first responder should stop, and then transfers the conversation to a second, different responder to continue the dialogue, facilitating hand-offs from automated systems to human agents. (’937 Patent, Abstract; col. 13:5-37, claim 1).
• Asserted Claims: Independent claims 1 and 18. (Compl. ¶58).
• Accused Features: The complaint accuses Kroger's online chat system of infringing the ’937 Patent by implementing a multi-responder architecture where conversations can be escalated or transferred. (Compl. ¶¶4, 50).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is "Kroger's infringing online chat system," which is made available through its websites, such as https://www.kroger.com/. (Compl. ¶4).
• Functionality and Market Context: The complaint describes the accused system as "web chat services software that supports omnichannel electronic communications" (Compl. ¶11). Its function is to allow customers, who are described as "unauthenticated users," to communicate with Kroger representatives using a standard web browser without needing to log in or use specialized software. (Compl. ¶29). The complaint does not provide screenshots or detailed technical diagrams of the accused system's operation but asserts that its functionalities were present during the relevant times of infringement. (Compl. ¶59).

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim charts in an exhibit that detail its infringement contentions (Compl. ¶59). The narrative infringement theory alleges that Kroger's online chat system directly infringes the asserted claims. (Compl. ¶¶56, 62). The core of the theory is that a customer, acting as an "unauthenticated user," initiates a chat via the Kroger website. (Compl. ¶29). The system is alleged to manage this conversation by assigning a unique identifier, which allows it to maintain the dialogue's state over the stateless HTTP protocol and route messages between the user and one or more Kroger "responders." (Compl. ¶40, 45). Plaintiff's theory appears to depend on the idea that the system facilitates a hand-off between a first responder (e.g., an automated bot) and a second, different responder (e.g., a human agent), mirroring the steps laid out in the asserted claims. (Compl. ¶¶39, 45).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A primary point of contention may be the scope of the term "unauthenticated user." The complaint alleges this means a user who has not provided login credentials (Compl. ¶39). A defense could argue that a user identified through other means, such as browser cookies or IP address geolocation, is not "unauthenticated" in the context of the patent, potentially raising a non-infringement argument.
  • Technical Questions: The complaint's theory appears to rely on a specific sequence of operations, including a hand-off from a "first responder" to a "second responder." A technical question for the court will be whether Kroger's system actually performs this multi-responder sequence as claimed. Plaintiff will need to provide evidence, such as system architecture diagrams or expert analysis of the chat platform's operation, to demonstrate that the accused system's functionality maps to these specific claim limitations.

V. Key Claim Terms for Construction

• The Term: "unauthenticated user"

• Context and Importance: This term appears in the preamble or initial steps of the asserted independent claims of all four patents-in-suit and is central to the claimed invention's distinction from prior art that required user login. (Compl. ¶37). The case's outcome may depend heavily on whether a typical visitor to Kroger's website using the chat feature falls within this definition.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests a broad meaning, stating that users can communicate "without having to create an account or provide identifying information" such as "name, e-mail address, phone number, home address, or any other identifying information." (’183 Patent, col. 4:8-9, col. 3:52-54). This language may support an interpretation that any user who has not actively supplied login credentials is "unauthenticated."
  • Evidence for a Narrower Interpretation: The specification also mentions that the system can use information "based upon the initiators domain" to identify potential responders. (’183 Patent, col. 6:10-12). A defendant may argue that if the accused system uses any form of implicit identification, such as persistent cookies or IP-based geolocation, the user is not truly "unauthenticated," supporting a narrower construction that could favor a finding of non-infringement.

• The Term: "first responder" and "second responder"

• Context and Importance: The hand-off between two distinct responders is a key feature of the asserted claims (e.g., ’183 Patent, claim 1). Practitioners may focus on this term because the infringement analysis will require determining what qualifies as a "responder" and whether the accused system uses two distinct ones as claimed.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes a "concierge or virtual assistant" service, which could be construed as an automated "first responder." (’183 Patent, col. 6:25-27). This would support a theory where a bot initiates the chat and a human agent acts as the "second responder." Dependent claim 8 of the ’597 Patent explicitly claims a "virtual responder."
  • Evidence for a Narrower Interpretation: The specification also describes responders as "subscribing respondents" or a "listing agent," which may imply human actors. (’183 Patent, col. 6:12-13, 58-60). A defendant could argue that the claims require a hand-off between two distinct human agents or two functionally equivalent entities, and that a simple automated greeting from a bot does not meet the "first responder" limitation as envisioned by the patent.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a separate count for indirect infringement. The allegations focus on direct infringement by Kroger for making, using, and offering for sale the accused chat system. (Compl. ¶62).
• Willful Infringement: The complaint alleges willful and deliberate infringement. (Compl. ¶66). The basis for this allegation is Defendant's alleged continued infringement after receiving pre-suit notice via a package delivered on January 8, 2024, which the complaint states contained a letter and claim charts identifying the patents and the accused system. (Compl. ¶¶49-51, 64).

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

• A core issue will be one of definitional scope: can the term "unauthenticated user," which is central to the patents' claimed novelty, be construed to cover a website visitor who may be identifiable via modern tracking technologies like browser cookies or IP geolocation, even if they do not formally log in?
• A key evidentiary question will be one of technical operation: does the accused Kroger chat system actually perform the specific multi-step, multi-responder hand-off process recited in the asserted claims? The plaintiff will need to provide concrete evidence of the system's architecture and workflow to prove infringement beyond the general concept of a web chat.
• A third central question will concern patent eligibility: although a § 101 challenge was previously defeated at the pleading stage, the issue may be revisited. The case may turn on whether the court views the claims as being directed to a specific, concrete improvement in computer communication architecture or to the abstract idea of managing a customer service conversation.