E Beacon LLC v. Uber Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: e-Beacon LLC (DE)
  • Defendant: Uber Technologies, Inc. (DE)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 6:24-cv-00313, W.D. Tex., 06/10/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has an established place of business in the district and has committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant infringes a patent related to providing emergency location services for Voice over IP (VoIP) telephony systems.
• Technical Context: The technology addresses the challenge of accurately determining and transmitting the physical location of a mobile or nomadic internet-based phone user to emergency services.
• Key Procedural History: The patent-in-suit is subject to a terminal disclaimer. 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 conventional VoIP telephony systems, which are not tied to a fixed physical address like traditional landlines. If a VoIP user places an emergency call from a location other than their registered address, the emergency operator receives incorrect location information, hindering response efforts (ʼ386 Patent, col. 1:24-44).
• The Patented Solution: The invention is a system that determines the current physical coordinates of a VoIP device using technologies like GPS or cellular network triangulation. When an emergency number is dialed, the system automatically transmits these current coordinates to an Emergency Services 911 Call Center, or Public Safety Answering Point (PSAP), ensuring the operator can locate the caller regardless of their physical location (ʼ386 Patent, Abstract; col. 2:31-44). The system is described as capable of using multiple location detection technologies (LDTs) to enhance reliability ('386 Patent, col. 7:51-54).
• Technical Importance: The described technology aims to provide a critical public safety function by bridging the location-information gap that existed with early-generation, nomadic VoIP services ('386 Patent, col. 1:11-13).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" and refers to "Exemplary '386 Patent Claims" in an attached Exhibit 2, which was not provided with the complaint (Compl. ¶¶ 11, 16).
• Independent claim 1 is representative of the patent's core method. Its essential elements include:
  • Making a plurality of attempts to determine the physical location of a VoIP phone, with each attempt using a separate location detection technology ("LDT").
  • If an attempt is successful, storing the determined physical location.
  • Placing a call to an emergency services call center with the VoIP phone.
  • Automatically transmitting the physical location of the VoIP phone to the emergency services call center.

III. The Accused Instrumentality

Product Identification

The complaint does not name specific accused products. It refers generally to "Exemplary Defendant Products" that are allegedly identified in claim charts attached as Exhibit 2, which is not included with the public filing (Compl. ¶¶ 11, 16).

Functionality and Market Context

The complaint provides no description of the accused products' functionality or operation. All infringement allegations are incorporated by reference from the unprovided Exhibit 2 (Compl. ¶¶ 16-17).

IV. Analysis of Infringement Allegations

The complaint does not contain substantive infringement allegations in its body, instead incorporating them by reference from an unprovided exhibit (Compl. ¶¶ 16-17). The narrative theory is that unspecified "Exemplary Defendant Products" practice the technology and "satisfy all elements of the Exemplary '386 Patent Claims" (Compl. ¶16). Without the referenced exhibit, a detailed analysis of the infringement allegations is not possible.

No probative visual evidence provided in complaint.

Identified Points of Contention

Based on the asserted patent and the nature of the defendant's business, the infringement analysis may raise several technical and legal questions:

• Scope Questions: A primary question will likely be whether Defendant's ride-sharing application and associated services constitute a "VoIP phone" as that term is used in the context of the ’386 Patent, which focuses on replacing traditional telephony.
• Technical Questions: What evidence does Plaintiff possess that the accused product actively performs the claimed step of "making a plurality of attempts to determine the physical location... each using a separate location detection technology"? A court may need to distinguish between an application that merely receives fused location data from the underlying mobile operating system and an application that itself executes the specific multi-technology location-finding process described in the patent.

V. Key Claim Terms for Construction

The Term: "VoIP phone"

• Context and Importance: The applicability of the patent to Defendant's technology hinges on the construction of this term. Practitioners may focus on this term because Defendant will likely argue its software application, primarily for transportation logistics, is not a "VoIP phone."
• Intrinsic Evidence for a Broader Interpretation: The specification discloses that the system can be used with "soft phones," defined as a "software based VoIP phone which uses the computer's internet connection to make and receive telephone calls" (’386 Patent, col. 7:40-43). Plaintiff may argue this language covers any software application with a voice-over-internet communication feature.
• Intrinsic Evidence for a Narrower Interpretation: The patent’s background and embodiments consistently frame the invention as a solution for telephony systems that provide an alternative to the "Plain Old Telephone System ('POTS')" (’386 Patent, col. 1:15-18). Figures and descriptions often refer to a "VoIP Phone" as a distinct device (e.g., Fig. 3, element 142) and the act of dialing emergency numbers like "9-1-1" (col. 3:12-13), which may suggest the term is limited to general-purpose telephone replacement services.

The Term: "making a plurality of attempts to determine the physical location... each using a separate location detection technology"

• Context and Importance: This term defines the core technical action of the claimed method. The infringement analysis will turn on whether Defendant's system performs this specific, structured process.
• Intrinsic Evidence for a Broader Interpretation: The patent lists a wide array of LDTs, including GPS, cellular, and Wi-Fi, and states they can be used "simultaneously" (’386 Patent, col. 7:51-54, 7:61-65). Plaintiff may argue that any system that leverages a mobile OS's hybrid location services, which inherently fuse data from these sources, satisfies this element.
• Intrinsic Evidence for a Narrower Interpretation: The language "making a plurality of attempts" suggests an active, deliberate process by the claimed system. Flowcharts in the patent depict a sequential process of trying one LDT, checking for success, and then trying another if the first fails (’386 Patent, Fig. 4, steps 2a-4d). Defendant may argue this requires the accused application to discretely initiate and manage separate location queries, rather than passively accepting a single, pre-processed location coordinate from the operating system.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement, stating on "information and belief" that Defendant distributes "product literature and website materials" that instruct users to operate the accused products in an infringing manner (Compl. ¶14). No specific materials are identified.

Willful Infringement

The complaint's allegations supporting willfulness appear to be based exclusively on post-suit knowledge. It asserts that "service of this Complaint... constitutes actual knowledge of infringement" and that inducement has occurred "[a]t least since being served by this Complaint" (Compl. ¶¶ 13, 15). No facts are alleged to support pre-suit knowledge of the patent or infringement.

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

• A core issue will be one of definitional scope: can the term "VoIP phone," rooted in the patent's disclosure of replacing traditional telephone systems, be construed to cover a specialized software application whose primary function is transportation logistics but which contains an ancillary emergency communication feature?
• A key evidentiary question will be one of technical operation: what evidence will Plaintiff be able to present to demonstrate that the accused system performs the specific, active method of "making a plurality of attempts" using "separate" location technologies, as required by the claims, rather than passively utilizing the fused location data provided by a mobile device's operating system?
• The viability of the willfulness claim raises a procedural and factual question: since the claim is predicated entirely on knowledge gained from the complaint itself, can Plaintiff develop evidence of egregious post-filing conduct sufficient to support an award of enhanced damages?