DCT

1:22-cv-01261

Disintermediation Services Inc v. Batia Infotech

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01261, W.D. Tex., 12/01/2022
  • Venue Allegations: Venue is asserted based on Defendant maintaining a regular and established place of business within the Western District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s web-based communication products and services infringe four patents related to systems for managing real-time, multi-platform conversations.
  • Technical Context: The technology at issue addresses methods for an intermediary system to connect an unauthenticated web user with one or more responders, potentially across different communication protocols, without requiring shared platforms or prior identification.
  • Key Procedural History: The four patents-in-suit are all continuations within the same patent family, claiming a priority date of October 17, 2011. The complaint emphasizes that the patents were allowed by the USPTO after examination of numerous prior art references and that the patent family has been forward-cited by numerous technology companies, suggesting the technology is directed to specific, non-preemptive improvements in communication architecture.

Case Timeline

Date Event
2011-01-01 Plaintiff launched website for web chat services
2011-10-17 Earliest Priority Date for all four Patents-in-Suit
2022-02-01 U.S. Patent No. 11,240,183 ('183') Issued
2022-05-17 U.S. Patent No. 11,336,597 ('597') Issued
2022-05-31 U.S. Patent No. 11,349,787 ('787') Issued
2022-05-31 U.S. Patent No. 11,418,466 ('466') Issued
2022-12-01 Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: The patent's background section describes deficiencies in prior real-time communication (RTC) systems, which required: (1) both parties to use a common communication protocol (e.g., the same instant messaging application); (2) the initiating party to know the recipient's address beforehand; and (3) both parties to be identified to each other during the communication (’183 Patent, col. 1:60-67; Compl. ¶39).
  • The Patented Solution: The invention describes an intermediary computer system that manages communications between an "initiator" (e.g., a website visitor) and one or more "responders" (e.g., support agents) who may be using different RTC methods. This intermediary proxy handles "message stream convergence and routing," allowing the initiator to see varied responses as a unified conversation without needing to know the responders' contact details or communication protocols, and enabling potential anonymity for both parties (’183 Patent, col. 3:18-25, col. 7:17-19; Compl. ¶¶40-41).
  • Technical Importance: This architecture aimed to increase the efficiency and accessibility of online support by removing the technical barriers of shared platforms and pre-authentication, allowing users to connect with responders more quickly and seamlessly (Compl. ¶43, ¶47).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶45).
  • The essential elements of Claim 1 include:
    • Receiving a web page request from an unauthenticated user.
    • Sending a question from a first responder to the user.
    • Receiving a first communication (an answer) from the user.
    • Sending the first communication to the first responder and then ending the conversation with them.
    • Identifying a second, different responder based on the first communication.
    • Determining the protocol and address of the second responder.
    • Sending the same first communication to the second responder.
    • Receiving a reply from the second responder and sending it to the user's web browser, without including the second responder's address.
  • The complaint reserves the right to assert additional claims (Compl. ¶141).

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: As a continuation of the '183 Patent, the '597 Patent addresses the same deficiencies in prior RTC systems regarding the need for common protocols, known addresses, and mutual identification (Compl. ¶64, incorporating ¶39).
  • The Patented Solution: The invention is a communication system that acts as an intermediary between an unauthenticated web user and multiple responders. The system facilitates a conversation handoff between a first and second responder, managing the communication flow so the user experiences a seamless conversation without needing to know the underlying protocols or addresses of the responders ('597 Patent, Abstract; Compl. ¶¶66, 70).
  • Technical Importance: The technology provides an improved computer architecture for tracking and transitioning conversations between different responders and communication modes, increasing system efficiency over the prior art (Compl. ¶71).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶69).
  • The essential elements of Claim 1 include:
    • Receiving a communication request from an unauthenticated user.
    • Sending a request for information from a first responder to the user.
    • Receiving a first communication from the user.
    • Determining a conversation identifier.
    • Identifying a second, different responder based on the first communication.
    • Determining the protocol of the second responder.
    • Sending the first communication to the second responder based on that protocol.
    • Receiving a reply from the second responder and mapping it back to the user's web browser.
  • The complaint reserves the right to assert additional claims (Compl. ¶149).

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

  • Patent Identification: U.S. Patent No. 11,349,787 ("the '787 Patent"), "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued May 31, 2022 (Compl. ¶88).
  • Technology Synopsis: The patent claims a system that ensures conversation continuity for an unauthenticated user across webpage reloads or navigation to different pages (Compl. ¶91). The system achieves this by storing conversation data (e.g., the initial request and the user's first communication) in a "persistent data store" with an associated identifier, and then retrieving and re-displaying that conversation when the user's browser makes a subsequent request (Compl. ¶¶94-95).
  • Asserted Claims: Independent Claim 1 (Compl. ¶94).
  • Accused Features: The complaint alleges infringement via an external exhibit, implying accusation of Defendant's live chat products that maintain conversation state across user navigation (Compl. ¶156).

Multi-Patent Capsule: U.S. Patent No. 11,418,466

  • Patent Identification: U.S. Patent No. 11,418,466 ("the '466 Patent"), "Two-way real time communication system that allows asymmetric participation in conversations across multiple electronic platforms," issued May 31, 2022 (Compl. ¶113).
  • Technology Synopsis: The patent describes a system that allows a single responder to communicate with multiple users who are using different communication protocols (Compl. ¶¶116, 118). The system receives communications from a first user via a "first active communication protocol" and from a second user via a "second active communication protocol," which is different from the first, and routes them appropriately, thereby improving the computer's functionality by eliminating the need for separate back-end systems for each protocol (Compl. ¶¶118, 120).
  • Asserted Claims: Independent Claim 1 (Compl. ¶119).
  • Accused Features: The complaint alleges infringement via an external exhibit, implying accusation of Defendant's live chat products that allow a single agent to handle conversations with multiple, distinct users (Compl. ¶164).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the accused instrumentalities as Defendant's "services and products using the name ProProfs" (Compl. ¶3). The specific products are not named, but the context of the allegations points toward Defendant's live web chat software.
  • Functionality and Market Context: The complaint does not provide a technical description of the accused instrumentality's functionality. Instead, for each of the four asserted patents, it alleges that infringement is detailed in a corresponding claim chart exhibit (Exhibits E, F, G, and H), which were not provided with the complaint (Compl. ¶¶140, 148, 156, 164). The complaint alleges that Defendant derives "substantial revenues" from its infringing acts but does not offer further detail on market context (Compl. ¶6).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a narrative infringement theory or include the referenced claim chart exhibits. The analysis below is based on the claim language and the general nature of the allegations.

  • '183 Patent Infringement Allegations

    • The complaint alleges that the ProProfs accused instrumentality meets each limitation of representative Claim 1 of the ’183 Patent and incorporates by reference an external claim chart (Exhibit E), which was not included with the pleading (Compl. ¶¶139-140). The complaint does not otherwise describe how the accused product infringes.

  • Identified Points of Contention:

    • Scope Questions: Claim 1 requires the system to "end the conversation with the first responder" before sending the "first communication" to a "second responder." A potential point of contention is whether the accused system performs this discrete sequence of terminating one agent's session before initiating a second. The definition of "ending" a conversation, versus merely transferring or adding another agent, may be a central issue.
    • Technical Questions: The claim recites sending the "first communication" (the user's initial answer) to the second responder. A factual question will be what data the accused system actually transfers during an escalation. If it transfers a full chat transcript or a summary rather than the specific, original user message, it may not meet this limitation.

  • '597 Patent Infringement Allegations

    • The complaint alleges that the ProProfs accused instrumentality meets each limitation of representative Claim 1 of the ’597 Patent, incorporating by reference an external claim chart (Exhibit F) that was not provided (Compl. ¶¶147-148). No narrative theory of infringement is present in the complaint's body.

  • Identified Points of Contention:

    • Scope Questions: Claim 1 requires "determin[ing] a communication protocol of the second responder." If the accused system involves agents communicating within a single, unified software platform, the parties may dispute whether the system is truly "determining" a protocol or if the protocol is simply a fixed, inherent feature of the platform.
    • Technical Questions: Similar to the ’183 Patent, this claim requires sending the "first communication" to the second responder. Evidence will be needed to show whether the accused system forwards the user's original message verbatim or provides a different data package (e.g., a conversation link or transcript) to the escalated agent.

V. Key Claim Terms for Construction

  • Term: "unauthenticated user" (from Claim 1 of '183 and '597 Patents)

    • Context and Importance: This term appears in the preamble and body of the asserted claims and is central to the patents' claimed novelty of allowing communication without prior registration (Compl. ¶¶42-43). The scope of infringement hinges on its definition. Practitioners may focus on this term because its construction will determine whether it applies only to first-time visitors with no tracking data, or more broadly to any user not formally logged into a named account.
    • Intrinsic Evidence for a Broader Interpretation: The specification states that the inventive concepts allow users to begin conversing without being "required to register or provide any account or user information" ('183 Patent, col. 8:3-5). This language suggests any user who has not completed a formal authentication or login process could be considered "unauthenticated."
    • Intrinsic Evidence for a Narrower Interpretation: The specification also states that in some implementations, the "initiator may remain anonymous to both the system and the responders" ('183 Patent, col. 3:23-24). A defendant may argue that a user tracked by persistent cookies or other session identifiers is not truly "anonymous to the system," and therefore not "unauthenticated" for the purposes of the claim.

  • Term: "persistent data store" (from Claim 1 of '787 Patent)

    • Context and Importance: The '787 Patent's point of novelty is maintaining a conversation across page reloads by using a "persistent data store" (Compl. ¶¶94-95). The technical meaning of "persistent" will be critical. If it is construed to require long-term storage (e.g., in a server-side database), it may not read on systems that use temporary client-side storage (e.g., browser session storage or cookies) that is cleared when the browser is closed.
    • Intrinsic Evidence for a Broader Interpretation: The patent does not explicitly define the term or limit its location. A plaintiff could argue that any storage mechanism designed to outlast a single page load, whether server-side or client-side, meets the ordinary meaning of "persistent" in this context.
    • Intrinsic Evidence for a Narrower Interpretation: The patent's figures depict a central server (104) and a database (106), separate from the initiator's client device ('183 Patent, Fig. 1, incorporated by reference into '787 Patent). A defendant could argue this architecture implies the "persistent data store" is a server-side database, not temporary storage on the user's own machine.

VI. Other Allegations

  • Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement for all four patents. It alleges Defendant had knowledge of the patents and induced infringement by providing its products to end users, and that the infringing components are not staple articles of commerce (Compl. ¶¶142-143, 150-151, 158-159, 166-167). The complaint does not allege specific facts supporting these claims, such as referencing user manuals that instruct on infringing use.
  • Willful Infringement: Plaintiff alleges that Defendant acted "with disregard of Disintermediation's patent rights, without any reasonable basis for doing so" (Compl. ¶145, ¶153, ¶161, ¶169). No specific facts indicating pre-suit knowledge, such as a notice letter, are pleaded. The allegation appears to be based on the filing of the lawsuit itself, which may support a claim for post-filing willfulness.

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

  • A core issue will be one of evidentiary sufficiency: As the complaint provides no factual detail and relies entirely on unattached exhibits, the case will depend on Plaintiff’s ability to produce specific technical evidence (e.g., network traffic analysis, source code, expert testimony) showing that the accused ProProfs system performs the precise, multi-step processes recited in the claims, such as the termination-and-transfer sequence of the '183 Patent or the use of a "persistent data store" in the '787 Patent.
  • A key legal battle will likely be over claim scope versus architecture: The patents describe mediating between genuinely disparate communication technologies like SMS and XMPP. A central question for the court will be whether claim terms like "different... communication protocol" ('466 Patent) can be construed to cover interactions where all users and agents connect to a single, unified web-chat platform, or if there is a fundamental mismatch between the claimed invention and the accused system's architecture.
  • The case may also turn on a question of functional equivalency: Do the automated processes within the accused single-platform chat system perform the same function, in substantially the same way, to achieve the same result as the claimed methods of identifying, determining, and routing communications between distinct responders and protocols?