E Beacon LLC v. Progressive Casualty Insurance Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: e-Beacon LLC (Delaware)
  • Defendant: Progressive Casualty Insurance Company (Ohio)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:24-cv-892, E.D. Tex., Filed 11/03/2024
• Venue Allegations: Venue is alleged to be proper based on Defendant maintaining an established place of business in the district and committing alleged acts of patent infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant infringes a patent related to providing emergency services for Voice over IP (VoIP) telephony by automatically determining and transmitting a user's physical location.
• Technical Context: The technology addresses the challenge of reliably locating users of internet-based phone services during emergency calls, a critical function for dispatching first responders.
• Key Procedural History: The patent-in-suit is subject to a terminal disclaimer, which may limit its enforceable term to that of a related, earlier-expiring patent. The complaint does not mention any other prior litigation or administrative proceedings involving the patent.

Case Timeline

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

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: The patent's background section describes the unreliability of emergency services for VoIP phones (Compl. ¶9; ’386 Patent, col. 1:24-29). Unlike traditional landlines with fixed addresses, a VoIP phone can be used anywhere with an internet connection, making it difficult for emergency operators to automatically determine a caller's actual physical location if they are away from their registered address (’386 Patent, col. 1:24-34).
• The Patented Solution: The invention is a system that automatically determines a VoIP phone's current physical location using technologies like GPS or cellular network data (’386 Patent, col. 2:46-54). When an emergency number is dialed, the system transmits these coordinates to the emergency call center, enabling dispatchers to locate the caller even if they are unable to speak or do not know their location (’386 Patent, col. 2:38-44). The system is designed to use multiple different location detection technologies to enhance reliability (’386 Patent, col. 7:51-57).
• Technical Importance: This approach aims to provide mobile VoIP users with location-finding capabilities comparable to those of the established E-911 system for cellular phones, closing a significant public safety gap for nomadic internet-based communication devices (’386 Patent, col. 1:11-14).

Key Claims at a Glance

• The complaint does not specify which claims are asserted, instead referring to "Exemplary '386 Patent Claims" identified in an "Exhibit 2" that was not included with the filed complaint (Compl. ¶¶11, 16). Independent claim 1 is representative of the patent's core method.
• Independent Claim 1 requires:
  • 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 phone's location, with each attempt using a separate location detection technology ("LDT").
  • If an attempt is successful, storing the determined physical location.
  • Placing a call to the emergency services call center.
  • Automatically transmitting the physical location to the emergency services call center.
• The complaint alleges infringement of "one or more claims," reserving the right to assert additional claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not identify any specific accused products, methods, or services by name (Compl. ¶11). It refers generally to "Defendant products" and "Exemplary Defendant Products" that are purportedly identified in charts within a non-proffered "Exhibit 2" (Compl. ¶¶11, 16).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality or market context. It makes only the conclusory allegation that unspecified products "practice the technology claimed by the '386 Patent" (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint alleges that infringement is detailed in claim charts provided in Exhibit 2; however, this exhibit was not filed with the complaint (Compl. ¶17). The narrative infringement theory is that Defendant's unidentified "Exemplary Defendant Products" practice the claimed technology and "satisfy all elements of the Exemplary '386 Patent Claims" (Compl. ¶16). No specific facts are alleged in the body of the complaint to substantiate how any particular product meets the limitations of any specific claim.

No probative visual evidence provided in complaint.

Identified Points of Contention

Based on the asserted patent and the nature of the defendant, the infringement analysis may raise several technical and legal questions for the court.

• Scope Questions: A primary question may be whether the defendant's products or services (potentially mobile insurance applications or in-vehicle telematics systems) fall within the patent's definition of a "VoIP phone." The interpretation of this term could be critical to determining infringement.
• Technical Questions: Claim 1 requires "making a plurality of attempts to determine the physical location... each using a separate location detection technology ('LDT')." A key factual question will be whether the accused systems use multiple, technologically distinct LDTs (e.g., GPS, Wi-Fi triangulation, and cellular triangulation) in separate attempts, as depicted in the patent's flowcharts (’386 Patent, Fig. 4), or if they rely on a single, integrated location service from a device's operating system that fuses data from multiple sources.

V. Key Claim Terms for Construction

• The Term: "VoIP phone"
  • Context and Importance: The scope of this term is central to the dispute, as it will determine what types of devices are covered by the claims. The defendant, an insurance company, is unlikely to manufacture or sell traditional VoIP desk phones, so the applicability of the patent to software applications or embedded telematics systems will be a focal point.
  • Intrinsic Evidence for a Broader Interpretation: The specification explicitly contemplates "soft phones," which it defines as "a software based VoIP phone which uses the computer's internet connection," suggesting the term is not limited to dedicated hardware (’386 Patent, col. 7:41-45).
  • Intrinsic Evidence for a Narrower Interpretation: The patent's figures and description often depict the "VoIP Phone" (142) as a distinct hardware component separate from a modem or a general-purpose computer, which could support an argument that the invention was directed at dedicated telephony devices (’386 Patent, Fig. 3).
• The Term: "separate location detection technology ('LDT')"
  • Context and Importance: This term is crucial for infringement of claim 1, which requires making attempts with multiple "separate" technologies. Whether the accused system's location-finding method meets this requirement will be a key technical dispute.
  • Intrinsic Evidence for a Broader Interpretation: The patent provides a broad list of potential LDTs, including "geolocation, location based service (LBS), GSM localization, triangulation, automatic location information (ALI) database correlation," and others, suggesting the patentee envisioned using any of a wide array of distinct positioning methods (’386 Patent, col. 7:58-62).
  • Intrinsic Evidence for a Narrower Interpretation: The patent's flowchart in Figure 4 depicts parallel, distinct processes for different technologies like GPS, CDMA, and GSM (steps 2a, 2b, 2c), which could be argued to imply that "separate" requires independent, non-integrated systems, rather than different data inputs into a single, unified location manager (’386 Patent, Fig. 4).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement based on Defendant distributing "product literature and website materials" that allegedly instruct end users to use the accused products in an infringing manner (Compl. ¶14). The complaint states that these materials are referenced in the un-provided Exhibit 2 (Compl. ¶14).
• Willful Infringement: The complaint does not allege pre-suit willfulness. It asserts that "Actual Knowledge of Infringement" commenced with the service of the complaint itself, which may form a basis for seeking enhanced damages for any post-filing infringement (Compl. ¶13).

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

• Pleading Sufficiency: A threshold issue is whether the complaint, which fails to identify any specific accused products or provide the exhibits it incorporates by reference, meets the plausibility standard for pleading patent infringement. Early motion practice may focus on the sufficiency of these allegations.
• Definitional Scope: Assuming the case proceeds, a core issue will be one of definitional scope: can the term "VoIP phone," rooted in the patent's description of telephony devices, be construed to cover the mobile software applications or in-vehicle telematics systems that an insurance company like Progressive is more likely to offer?
• Technical Proof: A key evidentiary question will be one of technical implementation: what evidence will demonstrate that the accused systems perform the specific multi-step method of the claims, particularly the use of "a plurality of attempts" with "separate" location technologies, as distinguished from simply using a modern smartphone's integrated location services?