DCT

1:12-cv-00465

Click To Call Tech v. Ingenio Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:12-cv-00465, W.D. Tex., 08/28/2012
  • Venue Allegations: Venue is alleged to be proper based on Defendants having done business and committed acts of infringement in the district, where the Plaintiff also has its principal place of business.
  • Core Dispute: Plaintiff alleges that Defendants’ local search and voice-commerce websites and applications infringe a patent related to establishing anonymous telephone calls initiated from an online data service.
  • Technical Context: The technology bridges user interactions on a data network (like the internet) with the public switched telephone network (PSTN) to connect two parties anonymously.
  • Key Procedural History: The complaint details a complex history involving the patent-in-suit. A predecessor to Defendant Ingenio, Keen, was previously sued for infringement by a licensee of the patent (InfoRocket). As part of a settlement, Keen acquired InfoRocket and its license. Ingenio (as Keen’s successor) later initiated an ex parte reexamination of the patent in 2004. During the pendency of this reexamination, Defendant AT&T acquired Ingenio. The U.S. Patent and Trademark Office (PTO) ultimately issued a reexamination certificate in 2008, confirming the validity of the patent over the prior art asserted. This history may be central to allegations of knowledge and willful infringement.

Case Timeline

Date Event
1995-08-09 U.S. Patent 5,818,836 Priority Date
1998-10-06 U.S. Patent 5,818,836 Issued
2001-06-01 Inventor Stephen DuVal licenses the ’836 patent to InfoRocket.com
2004-04-01 Ingenio institutes ex parte reexamination proceedings
2007-11-01 AT&T acquires Ingenio
2008-09-01 PTO issues Notice of Intent to Issue Reexamination Certificate
2008-12-30 PTO issues Reexamination Certificate for the ’836 patent
2012-08-28 Complaint Filing Date (Second Amended Complaint)

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

U.S. Patent No. 5,818,836 - "Method and Apparatus for Anonymous Voice Communication Using an Online Data Service"

  • Issued: October 6, 1998

The Invention Explained

  • Problem Addressed: The patent identifies a need for users of online services (e.g., "America Online or Prodigy") to establish confidential, two-party voice calls without divulging their telephone numbers to each other (’836 Patent, col. 1:16-28). Existing methods like "chat lines" or responding to print ads with PINs were described as cumbersome, expensive, or limited in functionality (’836 Patent, col. 1:33-2:4).
  • The Patented Solution: The invention proposes a system where two parties communicating on an "On-line Data Service" (ODS) can initiate an anonymous voice call (’836 Patent, col. 4:1-12). The ODS sends a "connect" command to a separate "Anonymous Voice System" (AVS), which then places separate telephone calls to each party over the traditional circuit-switched network and bridges the two calls together, thereby concealing the parties' actual phone numbers from one another (’836 Patent, Abstract; Fig. 1). The system is designed to integrate the call setup process with the online data service experience (’836 Patent, col. 2:49-51).
  • Technical Importance: The invention provided a method to seamlessly bridge text-based online interactions with real-time, anonymous voice communication, a significant feature for privacy and convenience in the burgeoning online services market of the mid-1990s (’836 Patent, col. 1:16-28).

Key Claims at a Glance

  • The complaint asserts "one or more claims" of the ’836 patent (Compl. ¶14). The analysis below focuses on reexamined independent method Claim 1, which captures the core invention.
  • Reexamined Claim 1 requires a method for creating a voice connection initiated from an on-line data service, comprising the steps of:
    • Establishing an electronic communication between a first and second party through an on-line data service, where the parties are initially anonymous to each other. This includes providing, via the Internet to the first party's data terminal, a graphical user interface (GUI) containing: (1) information characterizing the second party, (2) information representing a communication from the second party, and (3) a user-selectable element visually associated with the first two pieces of information.
    • In response to the first party selecting the user-selectable element, performing the steps of: (1) requesting a voice communication, (2) establishing a first telephone call for the first party, (3) establishing a second telephone call for the second party, and (4) connecting the two telephone calls.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the general assertion of "one or more claims" leaves this possibility open (Compl. ¶14).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendants' services that include "implementing a telephony call initiated on a website or other Internet Protocol interface" (Compl. ¶14). Specific examples include "Ingenio's voice-commerce applications (including Pay Per Call, Live Advice, and Ether)" and "YellowPages.com's local search services," as accessed through websites like www.yellowpages.com, www.ingenio.com, and others, as well as the "YP TV television application" (Compl. ¶14, ¶17, ¶20).

Functionality and Market Context

The complaint alleges that these services allow users and customers to access Defendants' websites or applications and, from that interface, initiate a telephone call (Compl. ¶20-21). This functionality is central to Defendants' "voice-commerce applications" and "local search services," which connect consumers with businesses or service providers via telephone calls triggered from an online platform (Compl. ¶14-17).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The following table summarizes the infringement theory for reexamined Claim 1 based on the narrative allegations.

Claim Element (from Reexamined Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for creating a voice connection... using an on-line data service to initiate the connection... establishing an electronic communication between the first party and the second party through the on-line data service... wherein the establishing includes providing over the Internet, to a data terminal of the first party... information publicly accessible over the Internet... Defendants' websites (e.g., yellowpages.com) and applications (e.g., YP TV) are alleged to be the "on-line data service" through which users ("first party") access information about and can connect with advertisers or service providers ("second party"). ¶14, ¶20 col. 21:23-41
...suitable for presentation within a graphical user interface... wherein the information... includes: (1) first information characterizing the second party, (2) second information representing a communication from the second party, and (3) third information specifying a user-selectable element for display... The complaint alleges that Defendants' websites and applications present information to users about other parties (e.g., business listings, profiles) and provide an interface element (e.g., a button or link) to initiate a call. ¶14, ¶20 col. 21:42-56
...in response to receiving an indication of selection of the user-selectable element... performing the steps of: (1) requesting a voice communication... (3) establishing a first telephone call for the first party; (4) establishing a second telephone call for the second party; and, (5) connecting said first telephone call with said second telephone call. The complaint alleges that users utilize Defendants' services to practice the claimed systems and methods, which involves initiating a telephony call from the website or application, inferentially leading to the system establishing and connecting calls to both parties. ¶20, ¶21 col. 21:57-22:4

No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: A primary question will be whether Defendants' modern, web-based services like YellowPages.com constitute an "on-line data service" as that term is used in the patent, which provides examples from the 1990s like "AMERICA ONLINE and PRODIGY" (’836 Patent, col. 8:21-23).
  • Technical Questions: The infringement analysis may turn on whether the user interfaces of the accused services meet the specific GUI requirements added during reexamination, particularly the "visually associated" relationship between the user-selectable element and the information about the second party (’836 Patent, C1, col. 1:50-56). The complaint does not provide screenshots or detailed descriptions of the accused GUIs to substantiate this element.

V. Key Claim Terms for Construction

The Term: "on-line data service"

  • Context and Importance: This term defines the environment where the invention operates. Its construction is critical to determining whether the patent's scope, conceived in the era of closed online services, extends to the open internet and modern websites like those accused. Practitioners may focus on this term because the technological context has evolved significantly since the patent was filed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the service as a "computing device with storage and communications capability which provides services such as electronic mail, chat, newsgroups, and access to information," which could be argued to describe the functionality of a modern web server (’836 Patent, col. 8:18-22).
    • Evidence for a Narrower Interpretation: The patent explicitly names "AMERICA ONLINE and PRODIGY" as examples, which were distinct, proprietary systems, not open websites (’836 Patent, col. 8:21-23). A defendant could argue this context limits the term to similar closed or subscription-based platforms.

The Term: "user-selectable element"

  • Context and Importance: This term, heavily amended during reexamination, is the trigger for the claimed method. The infringement case depends on whether the "click-to-call" buttons or links on Defendants' websites satisfy the detailed definition in the reexamined claims, including being "visually associated" with specific types of information.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses graphical "icons" (e.g., icon 86) that a user can select to initiate a call, suggesting any clickable GUI object could qualify (’836 Patent, col. 8:65-67; Fig. 4).
    • Evidence for a Narrower Interpretation: The amended claim language requires the element to be visually associated with both "first information characterizing the second party" and "second information representing a communication from the second party" (’836 Patent, C1, col. 1:42-56). This could be interpreted to require a specific layout or grouping of information on the webpage that may not be present in all accused services.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement.

  • Inducement: It is alleged that Defendants "allow and encourage" customers and users of their websites and applications to use the infringing services, creating an inference of intent to induce infringement (Compl. ¶21).
  • Contributory Infringement: The complaint alleges that the accused systems "cannot be used for purposes other than infringement" and have "no substantial non-infringing uses" (Compl. ¶22).

Willful Infringement

The willfulness allegation is based on a detailed history of Defendants' and their predecessors' interactions with the ’836 patent. This includes a prior lawsuit against predecessor Keen, Keen's subsequent acquisition of a license to the patent, successor Ingenio's initiation of a reexamination proceeding, and AT&T's acquisition of Ingenio while that proceeding was pending (Compl. ¶24-29). The complaint specifically alleges that AT&T's attorneys received the PTO's notice validating the patent in 2008, suggesting clear pre-suit knowledge (Compl. ¶29).

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

  1. A central issue will be one of claim construction and technological evolution: Can the term "on-line data service," defined with reference to 1990s-era platforms like AOL, be construed to cover modern, open websites such as YellowPages.com? Similarly, does the specific GUI structure required by the reexamined claims map onto the layout of Defendants' various web and application interfaces?
  2. A key factual dispute will revolve around knowledge and intent: The complaint outlines a long and complex history of litigation, licensing, and reexamination involving the patent and the Defendants' corporate predecessors. The evidence presented regarding this history will be critical to the claim for willful infringement and potential enhanced damages.
  3. An evidentiary question will be one of direct infringement by third parties: Because the claims require actions by end-users (e.g., selecting the element), the Plaintiff will need to prove that Defendants' customers actually performed the claimed steps, which is a necessary predicate for the indirect and willful infringement claims against the Defendants.