DCT
3:17-cv-02577
BookIT Oy v. Bank Of America Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BookIT Oy Ajanvarauspalvelu (Finland)
- Defendant: Bank of America Corporation and Bank of America, N.A. (Delaware)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 3:17-cv-02577, N.D. Tex., 09/20/2017
- Venue Allegations: Plaintiff alleges venue is proper because Bank of America maintains regular and established places of business, such as bank branches, within the Northern District of Texas and has allegedly committed acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile text message banking and alert services infringe patents related to managing interactive, two-way communications in asynchronous messaging systems.
- Technical Context: The technology addresses a fundamental challenge in application-to-person (A2P) messaging like SMS: managing conversational state when reply messages do not inherently reference the original inquiry.
- Key Procedural History: The asserted patents are part of the same patent family, descending from a common priority application. The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2001-08-21 | Earliest Priority Date for ’194 and ’268 Patents |
| 2013-11-19 | U.S. Patent No. 8,589,194 Issued |
| 2015-11-03 | U.S. Patent No. 9,177,268 Issued |
| 2017-09-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,589,194, "BOOKING METHOD AND SYSTEM," issued November 19, 2013
The Invention Explained
- Problem Addressed: In communication technologies like SMS text messaging, a reply does not automatically contain a reference to the original message. This makes it difficult for an automated system (a "non-human sender") that sends multiple messages to a user to determine which specific message the user is replying to (Compl. ¶23; ’194 Patent, col. 2:46-58).
- The Patented Solution: The invention describes a "mediator" system that solves this problem by assigning a unique reply address to each outgoing inquiry. The mediator maintains a plurality of distinct addresses (e.g., different phone numbers or short codes) and associates one with each inquiry sent to a user. When a reply is received at that specific address, the mediator can identify the original inquiry it corresponds to without needing an explicit reference in the reply itself (’194 Patent, Abstract; col. 16:36-52). The system then relates the user's identifier, the specific reply address, and the user's choice in a "multi-dimensional data structure" (’194 Patent, col. 16:62-65).
- Technical Importance: This method provided a framework for managing stateful, interactive sessions over stateless, asynchronous communication channels, which was a key enabler for conducting reliable business transactions via SMS (Compl. ¶24).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶37).
- The essential elements of independent claim 1 include:
- A computer program product on a non-transitory medium for a mediator, for use with communication technology where a reply does not automatically reference the inquiry.
- The mediator prepares an inquiry message that includes a choice selection inquiry.
- It associates a particular reply address with the inquiry, selecting that address from a plurality of addresses.
- It sends the inquiry and receives a reply at that particular reply address.
- It identifies the original inquiry based on the particular reply address at which the reply was received.
- It stores information pertaining to the reply, relating the client identifier address, the reply address, and the choice selection in a multi-dimensional data structure.
- The complaint asserts infringement of "one or more claims" of the patent (Compl. ¶56).
U.S. Patent No. 9,177,268, "BOOKING METHOD AND SYSTEM," issued November 3, 2015
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’194 Patent: managing asynchronous A2P communications where replies lack explicit references to the original message (’268 Patent, col. 2:40-52).
- The Patented Solution: This patent claims the physical equipment (e.g., a network server) that implements the session management method. An application on the server controls communications between a service provider computer, which has at least two reply addresses, and a user's mobile device. The application selects one of the available reply addresses for an outgoing message. When a reply is received, the application "uses the stored information to determine" which outgoing communication the reply corresponds to (’268 Patent, col. 16:47-53).
- Technical Importance: Like the ’194 Patent, this invention provides the technical infrastructure to enable reliable, interactive services over SMS (Compl. ¶24).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶53).
- The essential elements of independent claim 1 include:
- Equipment comprising at least one network server executing at least one application.
- The application controls communication between a service provider computer (having at least two reply addresses) and a mobile device.
- The application selects one of the at least two reply addresses to be the reply address for an electronic communication.
- The application stores at least two items for each communication sent (e.g., message content, client address, or the selected reply address).
- The application uses the stored information to determine which communication a received reply is responding to.
- The complaint asserts infringement of "one or more claims" of the patent (Compl. ¶65).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Bank of America's "text banking service for personal and small business accounts" and the "CashPro® automated alert notifications for businesses and institutions" (collectively, the "Accused Products") (Compl. ¶36).
Functionality and Market Context
The Accused Products provide mobile banking functionality through text messaging, including automated alerts for account balances, transactions, and potential fraud (Compl. ¶4, 27). The complaint alleges that these services operate by sending messages to customers from a "plurality of SMS short code numbers" (Compl. ¶28, 40). A screenshot from a short code directory shows Bank of America is associated with numerous distinct short codes (Compl. p. 12). Additional screenshots show text message conversations with Bank of America services originating from different short codes, such as 767-262 and 262-59 (Compl. p. 18). The complaint also alleges that Bank of America collects and stores information related to these messages and customer accounts (Compl. ¶29). A screenshot of Bank of America's privacy FAQ describes its collection of "Information that identifies you, such as your name, address and telephone number" and "Information about your transactions and account experience" (Compl. p. 23).
IV. Analysis of Infringement Allegations
’194 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A computer program product ... for performing functions of a mediator for controlling communications ... where ... a reply to an inquiry does not automatically include an explicit reference to the inquiry | The Bank of America text banking service uses text messaging (SMS), a technology that satisfies this limitation. | ¶38 | col. 16:27-35 |
| preparing at least one inquiry message ... including a choice selection inquiry | The service prepares and provides automatic alert notifications to customers. | ¶39 | col. 16:36-39 |
| associating a particular reply address to the at least one inquiry message, the particular reply address being selected from a plurality of addresses | The service sends alert notifications from a plurality of SMS short code numbers, thereby associating a particular short code (reply address) with the message. | ¶40 | col. 16:40-45 |
| sending the at least one inquiry message to the client terminal device | The service sends automatic alert notifications via text message to customer mobile devices. | ¶41 | col. 16:46-47 |
| receiving, from the client terminal device, a reply to the at least one inquiry message at the particular reply address | The service receives text message replies from customer mobile devices at the specific short code from which an alert was sent. | ¶42 | col. 16:48-52 |
| identifying the at least one inquiry message that the client has responded to based on the particular reply address at which the received reply is received | The service determines which alert the client has responded to based on the particular SMS short code number that received the reply. | ¶43 | col. 16:55-58 |
| storing information ... in a multi-dimensional data structure | The service collects and stores information relating to user phone numbers and account transactions. | ¶44 | col. 16:59-65 |
Identified Points of Contention
- Scope Questions: A primary question may be whether a standard automated bank alert (e.g., a balance notification) constitutes an "inquiry message including a choice selection inquiry." The defense may argue that many such alerts are purely informational and do not present a "choice selection" as required by the claim.
- Technical Questions: The complaint asserts that BofA's storage of user phone numbers and transaction data satisfies the "multi-dimensional data structure" limitation. A point of contention may be whether a standard customer database architecture meets the specific structure described in the patent, which includes an embodiment of a "three dimensional data matrix" (’194 Patent, Fig. 8; col. 16:62-65).
’268 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| Equipment comprising: at least one network server which executes at least one application ... controls electronic communication between a service provider computer ... and at least one mobile device | The text banking service's software application is hosted on a networked computer (server) and controls text messaging between Bank of America and its customers' mobile devices. | ¶47-48 | col. 15:58-65 |
| selects one of the at least two reply addresses to be a reply address for at least one electronic communication | The application sends automatic alert notifications from a plurality of SMS short code numbers, selecting one to serve as the reply address for a given message. | ¶49 | col. 16:1-6 |
| stores at least two items for each electronic communication sent ... selected from: content of the electronic communication ... client identifier address ... and the reply address | The service collects and stores information related to user phone numbers (client identifier address) and account transactions (related to message content). | ¶50, 51 | col. 16:7-18 |
| uses the stored information to determine electronic communication to which each received reply electronic communication is a reply | The service responds to received text message replies, allegedly using the stored information (such as which short code received the reply) to determine which original alert is being replied to. | ¶52 | col. 16:47-53 |
Identified Points of Contention
- Scope Questions: The claim requires the application to "store[] at least two items for each electronic communication sent." A potential dispute is whether BofA's system creates a specific record for each outgoing message containing these items, or whether it relies on general customer data that is not stored on a per-message basis in the manner required by the claim.
- Technical Questions: The infringement theory hinges on the allegation that the BofA system "uses the stored information to determine" the original message. The specific technical mechanism for this determination will be a focal point, particularly how different pieces of stored information (e.g., content, client address, reply address) are used in this process.
V. Key Claim Terms for Construction
The Term: "inquiry message" (’194 Patent, Claim 1)
- Context and Importance: The infringement case for the ’194 patent depends on whether Bank of America's automated text alerts qualify as "inquiry messages." If they are deemed purely informational notifications, this limitation may not be met.
- Evidence for a Broader Interpretation: The specification describes sending a "notice" that can "already include a few options" (e.g., for a dental appointment), suggesting that a notification prompting a user decision could be an inquiry (’194 Patent, col. 6:35-38).
- Evidence for a Narrower Interpretation: The full phrase is "inquiry message including a choice selection inquiry." This language may be construed to require the message to explicitly present a user with multiple, discrete options from which to select, a feature not present in all of the accused bank alerts.
The Term: "multi-dimensional data structure" (’194 Patent, Claim 1)
- Context and Importance: This term defines the required data storage mechanism. The outcome may depend on whether Bank of America's existing database architecture can be characterized as this specific structure.
- Evidence for a Broader Interpretation: The claim language itself is general. A plaintiff may argue that any data structure that functionally relates the three required data points (client ID, reply address, choice) along different axes satisfies the limitation, regardless of its specific implementation.
- Evidence for a Narrower Interpretation: The specification explicitly illustrates this concept as a "three dimensional matrix" (’194 Patent, Fig. 8; col. 16:62-65). A defendant could argue this term is not a generic reference to a database but requires a specific matrix-like architecture that relates these specific data elements for the purpose of resolving asynchronous replies.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement for both patents, asserting that Bank of America encourages and instructs its customers to use the accused services in an infringing manner (Compl. ¶57, 66). The alleged inducing acts include providing online instructions, advertising the benefits of the services, and enabling the functionality on customer devices (Compl. ¶61, 70).
Willful Infringement
The complaint alleges that Bank of America had knowledge of the asserted patents "at least as of the date this lawsuit was filed" (Compl. ¶59, 68). This forms the basis for an allegation of post-suit willful infringement. The complaint also asserts willful blindness pre-suit but does not plead specific facts demonstrating pre-suit knowledge of the patents (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can a one-way, automated financial alert be construed as an "inquiry message including a choice selection inquiry" as required by the '194 patent, and does a standard customer database meet the patent's "multi-dimensional data structure" limitation?
- A key evidentiary question will be one of technical proof: what evidence will be presented to demonstrate the precise mechanism by which the accused system "uses the stored information to determine" which message a reply corresponds to, as claimed in the '268 patent, beyond simply receiving a reply at a unique address?
- The case may also turn on a question of infringement theory vs. reality: does the accused system's functionality, which relies on using different short codes for different alert types (e.g., fraud vs. general banking), map onto the patents' teachings of using a unique reply address per-inquiry to manage a two-way, interactive dialogue?