E Beacon LLC v. Noonlight Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: e-Beacon LLC (Delaware)
  • Defendant: Noonlight, Inc. (Delaware)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 7:25-cv-00168, W.D. Tex., 04/17/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a "foreign corporation" (incorporated outside of Texas) with an established place of business in the district and has committed the alleged acts of patent infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s products infringe a patent related to methods for automatically determining and transmitting the physical location of a Voice over IP (VoIP) phone to an emergency call center.
• Technical Context: The technology addresses the public safety challenge of locating nomadic VoIP users during emergencies, a problem for traditional 911 systems designed for fixed-location landlines.
• Key Procedural History: The patent-in-suit is subject to a terminal disclaimer, which may limit its enforceable term to that of an earlier-expiring, related patent. The complaint does not mention any other prior litigation or administrative proceedings.

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)"

The Invention Explained

• Problem Addressed: The patent’s background section identifies a reliability gap in emergency services for VoIP telephony (Compl. ¶9; ’386 Patent, col. 1:10-13). Unlike traditional landlines with fixed addresses, a VoIP phone can be used anywhere with an internet connection, making it difficult for a 911 operator to automatically determine the caller's physical location, especially if the caller cannot communicate it verbally (’386 Patent, col. 1:24-34).
• The Patented Solution: The invention is a system that automatically determines the physical location of a VoIP device using technologies like GPS or cellular network triangulation. When an emergency number is dialed, the system transmits the determined coordinates to the emergency call center, or Public Safety Answering Point (PSAP) (’386 Patent, Abstract). The system is designed to periodically attempt to find and store location coordinates, so that if a live location fix fails during an emergency call, the most recent stored coordinates can be used instead (’386 Patent, col. 2:51-62).
• Technical Importance: The described technology sought to provide a dynamic, location-aware E911 capability for VoIP services, overcoming the limitations of static databases that only store a user's registered home or office address (’386 Patent, col. 1:35-43).

Key Claims at a Glance

• The complaint does not specify which claims of the ’386 Patent are asserted, instead referring to charts in an un-provided "Exhibit 2" (Compl. ¶11, 16). Independent claim 1 is representative of the patent's core method.
• Independent Claim 1 recites a method with the following essential elements:
  • Making a plurality of attempts to determine the physical location of the 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.
  • Automatically transmitting the physical location of the VoIP phone to the call center.

III. The Accused Instrumentality

Product Identification

• The complaint does not name specific accused products, referring generally to "Exemplary Defendant Products" that are purportedly identified in the un-provided Exhibit 2 (Compl. ¶11, 16).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality. It makes only conclusory statements that Defendant's products "practice the technology claimed by the '386 Patent" (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint incorporates infringement allegations by reference to claim charts in an external "Exhibit 2," which was not filed with the complaint (Compl. ¶16-17). In lieu of a claim chart summary, the complaint's narrative theory alleges that Defendant directly infringes one or more claims of the ’386 Patent by "making, using, offering to sell, selling and/or importing" the accused products (Compl. ¶11). The complaint further alleges direct infringement occurs through Defendant's internal testing and use of the products by its employees (Compl. ¶12).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Based on the patent’s claims and the general nature of the allegations, the infringement analysis raises several potential questions.
  • Scope Questions: A central question may be whether the accused products, potentially software applications on modern smartphones, meet the definition of a "VoIP phone" as that term is used in the patent, which describes embodiments including dedicated telephony hardware and computer "soft phones" (’386 Patent, col. 7:37-43).
  • Technical Questions: The complaint lacks factual allegations explaining how the accused products perform the specific steps of the asserted claims. For instance, a key question for claim 1 will be what evidence demonstrates that the accused product itself makes a "plurality of attempts" to determine location using "separate" technologies, rather than merely receiving a final, fused location from the underlying operating system of a mobile device (’386 Patent, col. 15:20-24).

V. Key Claim Terms for Construction

"VoIP phone"

• Context and Importance: The definition of this term appears central to the dispute. The case may turn on whether a modern smartphone running a third-party application is considered a "VoIP phone" under the patent's disclosure. Practitioners may focus on this term because the accused instrumentality is likely a software-based service on a general-purpose mobile device, not the dedicated VoIP hardware depicted in parts of the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that the term "E-VoIP phone" should be construed to include "any VoIP-type device over a call may be placed" and explicitly includes "soft phones," which are "software based VoIP phone[s] which use[] the computer's internet connection" (’386 Patent, col. 7:37-43). This language may support an interpretation covering software on mobile devices.
  • Evidence for a Narrower Interpretation: The patent’s figures and detailed descriptions heavily feature embodiments that resemble dedicated telephony devices, such as the hardware schematic in Figure 3 showing a distinct "VoIP Phone" module connected to an Ethernet MAC and modem (’386 Patent, FIG. 3; col. 6:49-54). This focus could support an argument for a narrower construction limited to devices whose primary function is VoIP telephony.

"separate location detection technology ("LDT")"

• Context and Importance: Claim 1 requires making attempts using "separate" LDTs. The interpretation of "separate" will be critical to determining infringement. Practitioners may focus on this term because a modern smartphone's location service often provides a single, fused location coordinate derived from multiple sources (GPS, Wi-Fi, cellular), and it may be disputed whether using this service constitutes making attempts with "separate" technologies.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a broad, non-exclusive list of LDTs, including "geolocation, location based service (LBS), GSM localization, triangulation," and others, suggesting any distinct source of location information could be considered "separate" (’386 Patent, col. 7:56-64).
  • Evidence for a Narrower Interpretation: The flowchart in Figure 4 depicts distinct, parallel processing paths for different location methods (e.g., "LDT-GPS," "LDT-CDMA," "LDT-GSM"), which may suggest that "separate" LDTs are distinct, independent systems rather than different data inputs to a single, integrated location engine (’386 Patent, FIG. 4, steps 2a-2d).

VI. Other Allegations

Indirect Infringement

• The complaint alleges induced infringement based on Defendant's distribution of "product literature and website materials" that allegedly instruct end users on how to use the products in an infringing manner (Compl. ¶14). The allegation of knowledge is predicated on the service of the complaint itself (Compl. ¶15).

Willful Infringement

• Willfulness is alleged based on Defendant’s continued infringing conduct after gaining "actual knowledge" of the ’386 Patent upon service of the complaint (Compl. ¶13-14). No facts suggesting pre-suit knowledge are alleged.

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

The resolution of this dispute may depend on the court's view of the following central questions:

1. Pleading Sufficiency: A threshold issue will be whether the complaint’s conclusory allegations, which rely on incorporating an un-provided exhibit, state a plausible claim for relief or will be found deficient under modern pleading standards.
2. Definitional Scope: A core substantive issue will be one of claim construction: can the term "VoIP phone," which is described in the patent in the context of dedicated telephony hardware and early-2000s computer softphones, be construed to cover a modern software application running on a general-purpose smartphone?
3. Evidentiary Proof: A key factual question will be one of operational function: what evidence will Plaintiff be able to produce to demonstrate that the accused service performs the specific, multi-step method of the patent—particularly the requirement to make multiple attempts using "separate" location technologies—as opposed to simply utilizing the host device's integrated location services?