DCT

2:24-cv-00891

E Beacon LLC v. NEC Corp

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00891, E.D. Tex., 11/03/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant has an established place of business in the district and has committed acts of patent infringement there, causing Plaintiff harm.
  • Core Dispute: Plaintiff alleges that Defendant’s products and services related to Voice over IP (VoIP) telephony infringe a patent for providing emergency services by determining and transmitting a VoIP phone's physical location.
  • Technical Context: The lawsuit concerns Enhanced 911 (E911) services for VoIP systems, a technology critical for locating users of internet-based phone services who are not tied to a fixed physical address.
  • Key Procedural History: The asserted patent is a continuation-in-part of a prior application that issued as U.S. Patent No. 7,933,580. The asserted patent is also subject to a terminal disclaimer, which may limit its enforceable term to that of the parent patent.

Case Timeline

Date Event
2005-08-05 ’386 Patent Priority Date (via Provisional App. 60/706,088)
2011-04-25 ’386 Patent Application Filing Date
2013-08-20 ’386 Patent Issue Date
2024-11-03 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 8,515,386, Emergency services for voice over IP telephony (E-VOIP), issued August 20, 2013.

The Invention Explained

  • Problem Addressed: Unlike traditional landlines (POTS), VoIP phones are not tied to a fixed physical address. When a user dials 9-1-1 from a nomadic VoIP device, emergency services cannot automatically identify the caller's location, creating a significant public safety risk. (’386 Patent, col. 1:24-44).
  • The Patented Solution: The invention describes a system and method that automatically determines the physical location of a VoIP phone using one or more "location detection technologies" (LDTs) like GPS or cellular network triangulation. When an emergency number is dialed, the system transmits these physical coordinates to the emergency call center (Public Safety Answering Point, or "PSAP"), allowing operators to dispatch help to the correct location, even if the caller cannot speak or does not know their address. (’386 Patent, col. 2:31-44). The system is designed to periodically update and store location coordinates to ensure the most current information is available. (’386 Patent, col. 2:50-62).
  • Technical Importance: The technology aimed to close a critical gap in emergency response capabilities that emerged with the widespread adoption of portable and nomadic VoIP services. (’386 Patent, col. 1:11-14).

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims," including "Exemplary '386 Patent Claims" referenced in an external exhibit, but does not identify specific claims in the body of the complaint (Compl. ¶11). Independent claim 1 is representative of the patented method.
  • Independent Claim 1:
    • A method for determining the physical location of a VoIP phone and transmitting it to an emergency services call center.
    • Making a plurality of attempts to determine the physical location, each using a "separate location detection technology ('LDT')".
    • If an attempt is successful, storing the physical location.
    • Placing a call to the emergency services call center with the VoIP phone.
    • Automatically transmitting the stored physical location to the emergency services call center.
  • The complaint does not explicitly reserve the right to assert dependent claims, but refers generally to "one or more claims." (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products or services by name. It refers generally to "Defendant products identified in the charts incorporated into this Count" and "Exemplary Defendant Products." (Compl. ¶11, ¶16).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market position. It alleges that the accused products "practice the technology claimed by the '386 Patent." (Compl. ¶16). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain element-by-element infringement allegations. Instead, it incorporates by reference "Exhibit 2," which allegedly "includes charts comparing the Exemplary '386 Patent Claims to the Exemplary Defendant Products." (Compl. ¶16, ¶17). As this exhibit was not provided, a detailed claim chart summary cannot be constructed. The complaint's narrative theory is that unspecified NEC products or services satisfy all elements of at least one claim of the ’386 Patent. (Compl. ¶16).

Identified Points of Contention

Based on the technology and the general nature of the claims, the dispute may focus on several key questions:

  • Technical Questions: What evidence demonstrates that NEC's products perform the step of "making a plurality of attempts" to determine location using different LDTs, as opposed to using a single, integrated location service? What specific mechanism is used for "automatically transmitting the physical location" to an emergency call center, and does it align with the method described in the patent?
  • Scope Questions: How will the term "separate location detection technology ('LDT')" be construed? Does it require distinct hardware modules (e.g., a GPS chip separate from a Wi-Fi chip) as depicted in some patent figures, or can it read on different software-based location-sourcing methods running on a single processor? The resolution of this scope question may be critical to the infringement analysis.

V. Key Claim Terms for Construction

  • The Term: "a separate location detection technology ('LDT')" (from Claim 1)
  • Context and Importance: This term is the technological core of the claim, defining how the system determines the caller's location. The infringement case will likely depend on whether the location-finding features in NEC's products qualify as multiple "separate" LDTs. Practitioners may focus on this term because modern devices often use fused location providers that abstract away the underlying technologies (e.g., GPS, Wi-Fi, cellular), raising the question of whether these are "separate" attempts or a single, unified one.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of technologies that can be considered LDTs, including "GPS, CDMA and GSM technologies," as well as "Assisted Global Positioning System ('A-GPS'), other Cellular systems, Wi-Fi, WiMAX, and other such technologies that can provide geolocation information." (’386 Patent, col. 7:59-67). This broad list could support an interpretation where any distinct method of geolocation, whether hardware- or software-based, qualifies as a "separate LDT."
    • Evidence for a Narrower Interpretation: The patent's figures and related description illustrate a system with physically distinct components for different LDTs, such as a "cellular module 120" and a "GPS module 122" connected to a controller via separate buses. (’386 Patent, Fig. 3; col. 6:11-22). This could support a narrower construction requiring a degree of hardware, system, or protocol separation between the technologies used.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials" that instruct end users on how to use its products in a manner that allegedly infringes the ’386 Patent. (Compl. ¶14).
  • Willful Infringement: The complaint alleges knowledge of infringement based on the service of the complaint itself. (Compl. ¶13, ¶15). This suggests the claim for willfulness is based on alleged post-suit continuation of infringing activities.

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

  1. An Evidentiary Question of Fact: Since the complaint lacks specific factual allegations and relies on an external exhibit, a primary issue will be whether the evidence in that exhibit (and produced in discovery) can demonstrate that any specific NEC product actually performs the sequence of steps recited in an asserted claim, particularly the use of multiple, separate location technologies.
  2. A Definitional Question of Claim Scope: The case may turn on the construction of "separate location detection technology ('LDT')." The key legal battle will likely be whether this term is broad enough to cover modern, highly integrated location services, or if it is limited by the specification's embodiments to more physically or architecturally distinct systems prevalent when the patent was filed.
  3. A Question of Post-Suit Conduct: With willfulness allegations predicated on the filing of the lawsuit itself, Defendant's actions after receiving the complaint will be a central focus. The viability of the willfulness and enhanced damages claims will depend on whether Plaintiff can show that Defendant continued its allegedly infringing conduct despite having knowledge of the patent and the infringement allegations.