DCT

1:24-cv-01497

Centralsquare Tech LLC v. Carbyne Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01497, W.D. Tex., 12/04/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant has established regular places of business in the district, committed acts of infringement there, employs individuals in the district, maintains a contract with the Texas Department of Information Resources, and has a strategic relationship with AT&T for sales and support within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s emergency response platforms infringe a patent related to initiating communication with a 911 caller via a text message containing a URL link to obtain geolocation data.
  • Technical Context: The lawsuit concerns next-generation 911 (NG911) technology, which aims to enhance traditional voice-only emergency services with modern data capabilities like text, video, and precise location tracking from mobile devices.
  • Key Procedural History: The asserted patent is a reissue of U.S. Patent No. 9,301,117. The parties engaged in pre-suit licensing discussions regarding the original '117 patent between November 2021 and July 2022, during which Defendant disputed infringement and asserted invalidity. The complaint also notes a prior one-year reseller agreement between the parties that has since expired. The reissue of the patent may introduce questions regarding the scope of the asserted claims and the potential for intervening rights.

Case Timeline

Date Event
2013-08-21 Priority Date for U.S. Patent No. RE50,016
2015-01-01 Defendant Carbyne allegedly founded
2016-03-29 Original U.S. Patent No. 9,301,117 Issues
2021-11-04 Plaintiff sends Defendant a licensing proposal for the '117 Patent
2022-01-03 Defendant responds, denying infringement of the '117 Patent
2022-01-28 Plaintiff responds, reiterating infringement allegations
2022-02-22 Defendant responds, again denying infringement
2022-04-09 Plaintiff responds with further infringement analysis
2022-07-21 Defendant responds, alleging invalidity of the '117 Patent
2022-01-01 Parties sign a one-year reseller agreement (sometime "In 2022")
2024-06-18 U.S. Reissue Patent No. RE50,016 (the '016 Patent) issues
2024-06-26 Plaintiff informs Defendant of the reissued '016 Patent
2024-12-04 Complaint Filed

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

U.S. Reissue Patent No. RE50,016 - "SMS Communication During Emergencies," issued June 18, 2024

The Invention Explained

  • Problem Addressed: The patent addresses the challenge emergency call centers face in efficiently and accurately gathering information, particularly the location, from individuals calling from wireless mobile devices (’016 Patent, col. 1:27-44).
  • The Patented Solution: The invention is a system and method that allows an emergency call center, upon receiving a voice call, to automatically or manually send a textual message to the caller's mobile device. This message contains a uniform resource locator (URL) link. When the caller activates the link, it connects their device to a web-hosted application that can query the device for its geolocation data and transmit that precise information back to the emergency operator’s user interface (’016 Patent, Abstract; Fig. 4; col. 4:28-43).
  • Technical Importance: This approach provides a technical mechanism to obtain device-based geolocation data, which is often more accurate than network-based location estimates, thereby enabling faster and more effective emergency response (’016 Patent, col. 3:19-44).

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" without specifying them (Compl. ¶48). The analysis below focuses on the independent claims as representative of the patented technology.
  • Independent Claim 1 (System Claim): The core elements include:
    • A "call reception module" to receive emergency calls from wireless mobile devices over an "emergency communications network".
    • An "outgoing message module" to generate a textual message for the caller's device.
    • A "transmission module" to send the message over a "second communications network" that is different from the emergency one.
    • A "presentation module" for an emergency operator.
    • A "web-hosting module" configured to host "web resources" accessible via a "URL link" in the message, which can "query" the mobile device for "location information" and "share" it with the presentation module.
  • Independent Claim 9 (Method Claim): The core steps include:
    • "receiving" an emergency voice call.
    • "generating" an outgoing textual message that includes a "link to web resources".
    • "transmitting" the message over a "second communications network".
    • "presenting" call information to an operator.
    • "querying", through the web resources, the mobile device for "location information".
    • "sharing" and "presenting" the queried location information to the operator.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the general allegation of infringing "one or more claims" implies this possibility (Compl. ¶48).

III. The Accused Instrumentality

Product Identification

  • The accused products are Defendant’s "APEX" and "Universe" products and services (Compl. ¶37).

Functionality and Market Context

  • The complaint describes the Accused Products as "Software-as-a-Service (SaaS) emergency preparedness and public safety solutions for Next Generation 911 (NG911) call handling" (Compl. ¶24).
  • The allegedly infringing functionality involves a process where the Accused Products enable emergency services to obtain a caller's location by sending a link to the caller's device, which, when clicked, provides the location data back to the dispatcher (Compl. ¶10). This functionality is positioned as a key feature of Defendant's platform (Compl. ¶10). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references "Exemplary claim charts" in Exhibits I and J, which are incorporated by reference but were not attached to the publicly filed document (Compl. ¶49). Therefore, a detailed claim chart summary cannot be provided.

The narrative infringement theory is that Defendant's APEX and Universe products practice the patented method. The complaint alleges that Defendant’s CEO described this exact functionality—"sent her a link, she clicked the link... they got the location"—as being part of Carbyne's capabilities (Compl. ¶10). This directly maps to the core steps of the asserted claims, such as generating and transmitting a message with a URL link to obtain geolocation information (’016 Patent, cl. 9).

Identified Points of Contention

The pre-suit correspondence detailed in the complaint suggests several potential areas of dispute.

  • Scope Questions: The complaint notes that Defendant previously argued its "secondary secure path" for data transmission does not meet the "second communications network" limitation of the claims (Compl. ¶14). This raises the question of how the court will construe the term "second communications network that is different than the emergency communications network" (’016 Patent, col. 15:30-38) and whether Defendant's system architecture falls within that scope.
  • Technical Questions: Defendant previously contended that its Apex product did not include the "claimed functionality directed towards the receipt and distribution of location information recited by the web-hosting module" (Compl. ¶12). A central technical question will be whether the architecture and operation of the APEX and Universe products perform the functions of "querying" for and "sharing" location information in a manner that meets the limitations of the claimed "web-hosting module" (’016 Patent, col. 15:45-54).

V. Key Claim Terms for Construction

"web-hosting module"

  • Context and Importance: This term appears central to the dispute, as Defendant specifically denied that its products included the functionality of this module (Compl. ¶12). The construction of this term will be critical in determining whether Defendant's SaaS platform, which may not use a traditional single-server architecture, infringes.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the module as hosting a "web-site, web page, web-application, mobile application, and/or other software application" (’016 Patent, col. 4:28-32). Plaintiff may argue this functional language is broad enough to encompass various modern software architectures, including distributed or cloud-based systems.
    • Evidence for a Narrower Interpretation: The patent depicts the "Web-hosting Module" (40) as a discrete component within a "server(s) 12" (’016 Patent, Fig. 1). Defendant may argue this suggests a more specific, localized hardware/software configuration that does not read on its potentially different architecture.

"second communications network that is different than the emergency communications network"

  • Context and Importance: Defendant also contested infringement of this limitation, referring to its system's "secondary secure path" (Compl. ¶14). The definition will determine whether using the internet for data transmission (via the URL) while the voice call uses a separate telephony network meets the claim language.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent contrasts the "emergency communications network" for the initial voice call with the network used to transmit the textual message, which can include "the internet" (’016 Patent, col. 5:50-54, col. 13:3-7). This supports a reading where any data network (like the public internet) used for the link is "different" from the dedicated voice network.
    • Evidence for a Narrower Interpretation: The patent does not provide extensive detail on what constitutes a "different" network. Defendant could argue that if its data path and the voice path share significant infrastructure or are part of a single integrated NG911 service, they are not "different" in the manner contemplated by the patent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), stating that Defendant instructs customers on using the accused features through "product manuals, website, instructional videos and/or sales and marketing activities, on-site training," and other support activities (Compl. ¶51-52).
  • Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the technology and potential infringement. The complaint cites the November 4, 2021 notice letter regarding the original '117 Patent, the subsequent correspondence, and the specific notification provided to Defendant on June 26, 2024, about the reissued '016 Patent (Compl. ¶11, ¶17, ¶53, ¶56).

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

  • A core issue will be one of claim scope and technical equivalence: Can the term "web-hosting module", as described in a patent with a 2013 priority date, be construed to cover the architecture of Defendant’s modern, cloud-based SaaS platform? The court's interpretation of this and other terms, like "second communications network", will likely be dispositive for infringement.
  • A second key issue will concern the impact of the patent's reissue status: The court will need to analyze the prosecution history of the '016 Patent to understand why the original claims of the '117 Patent were surrendered and what changes were made. This will be critical not only for claim construction but also for assessing Defendant's potential defenses, such as intervening rights, which could limit past damages even if infringement is found.
  • Finally, a central evidentiary question will be one of functionality: What evidence will Plaintiff present to demonstrate that Defendant's APEX and Universe products actually perform each step of the asserted method claims, particularly the specific "querying" and "sharing" functions attributed to the "web resources" initiated by the URL link?