In a notably swift conclusion, Disintermediation Services, Inc. voluntarily dismissed its patent infringement lawsuit against Kroger Co. with prejudice just 34 days after filing in the Texas Eastern District Court. Filed on July 11, 2024, and closed on August 14, 2024, the case (No. 2:24-cv-00525) centered on four U.S. patents — US11240183B2, US11336597B1, US11349787B2, and US11855937B2 — covering a two-way real-time communication system enabling asymmetric participation across multiple electronic platforms. The dismissal with prejudice, accepted and acknowledged by the court under Rule 41(a)(1)(A)(i), forecloses any future refiling of the same claims against Kroger.

This case carries meaningful implications for IP strategists and patent counsel operating in the communication technology space. A dismissal with prejudice at this early stage — before any responsive pleadings or substantive motions — strongly suggests a negotiated resolution, licensing agreement, or a strategic reassessment by the plaintiff. For in-house IP teams at retail and technology companies, this litigation pattern underscores the importance of proactive freedom-to-operate analysis and swift engagement when facing assertion campaigns targeting platform communication technologies.

Case Overview

The Parties

The Patents at Issue

The four asserted patents — US11240183B2, US11336597B1, US11349787B2, and US11855937B2 — collectively cover a two-way real-time communication system that allows parties to participate in conversations asymmetrically across multiple electronic platforms simultaneously. In practical terms, this means one participant can engage via one channel (e.g., a mobile app) while another responds through a different platform (e.g., a web interface or messaging service), with the system managing routing and synchronization in real time. These inventions are broadly applicable to customer service, e-commerce engagement, and omnichannel retail communication systems.

• • US11240183B2
• • US11336597B1
• • US11349787B2
• • US11855937B2

Legal Representation

Plaintiff Counsel: Global IP Law Group LLC (lead: Alison Aubry Richards)

Litigation Timeline & Procedural History

The case was filed in the U.S. District Court for the Eastern District of Texas, a venue historically favored by patent assertion entities for its plaintiff-friendly procedural history and experienced patent litigation docket. As a first-instance district court proceeding, the case was positioned for full merits adjudication — including claim construction, discovery, and potentially trial — before the early voluntary dismissal cut short the litigation lifecycle.

At just 34 days from filing to closure, this case ranks among the fastest-resolved patent infringement actions possible at the district court level. The dismissal was filed by Disintermediation Services, Inc. under Federal Rule of Civil Procedure 41(a)(1)(A)(i), which permits a plaintiff to voluntarily dismiss without a court order before the opposing party has served an answer or motion for summary judgment. No damages were awarded, no injunctive relief was issued, and no substantive rulings on the merits were made. The dismissal with prejudice — accepted by the court on August 14, 2024 — means the plaintiff is permanently barred from reasserting the same claims against Kroger on these patents.

The Verdict & Legal Analysis

Outcome

The court accepted and acknowledged Disintermediation Services, Inc.’s Notice of Voluntary Dismissal with Prejudice on August 14, 2024, pursuant to Rule 41(a)(1)(A)(i), dismissing all pending claims and causes of action. No damages were determined, no injunctive relief was granted, and no costs were publicly allocated as the case resolved before any substantive judicial rulings. All pending requests for relief not explicitly addressed in the dismissal order were denied as moot, and the Clerk of Court was directed to close the case.

Verdict Cause Analysis

The underlying infringement action and its rapid dismissal reveal several important legal and strategic dynamics worth examining in depth.

• The original complaint alleged patent infringement of four U.S. patents (US11240183B2, US11336597B1, US11349787B2, US11855937B2) covering asymmetric two-way real-time communication systems, directed at Kroger’s digital platform infrastructure.
• Plaintiff invoked Rule 41(a)(1)(A)(i) for dismissal, which is only available before the defendant has served an answer or a motion for summary judgment, indicating Kroger had not yet formally responded to the complaint at the time of dismissal.
• The dismissal was entered with prejudice — a material distinction from a without-prejudice dismissal — permanently extinguishing Disintermediation Services, Inc.’s right to refile these specific claims against Kroger on the asserted patents.
• The 34-day case lifecycle is consistent with pre-litigation resolution patterns common in patent assertion campaigns, including licensing agreements or covenants not to sue negotiated shortly after the complaint is filed and served.

Legal Significance

1. A Rule 41(a)(1)(A)(i) dismissal with prejudice, while procedurally simple, carries the full res judicata weight of a final judgment, meaning Disintermediation Services, Inc. cannot reassert any of the four patents against Kroger for the same accused products or substantially similar claims.
2. This outcome does not produce any claim construction record, validity rulings, or infringement findings, leaving the patents in a legally untested state that may embolden future assertion campaigns by DSI against other defendants in the retail and e-commerce sector.
3. The choice of the Eastern District of Texas as venue, combined with the rapid withdrawal, is consistent with a pattern among patent assertion entities of using favorable venue selection as settlement leverage rather than pursuing full merits litigation — a strategy that courts and commentators continue to scrutinize following TC Heartland LLC v. Kraft Foods Group Brands LLC (2017).

Strategic Takeaways

For Patent Attorneys:

• When defending against Rule 41(a)(1)(A)(i) voluntary dismissals, counsel should evaluate whether to seek conversion to a dismissal with prejudice or negotiate reciprocal covenants not to sue across the full patent family before consenting, as the bare dismissal record here offers Kroger protection only against these specific asserted patents.
• The untested validity and claim scope of all four DSI patents (US11240183B2, US11336597B1, US11349787B2, US11855937B2) presents an opportunity for third parties to initiate IPR proceedings at the PTAB to narrow or invalidate claims before DSI targets additional defendants.
• Patent prosecutors advising clients in the multi-platform communication space should monitor the DSI patent family’s continuation applications closely — the corrected application numbers (US17/036709, US17/573056, US17/572958, US17/939730) suggest an active prosecution pipeline that may yield additional claim variants.
• Defense counsel in future DSI actions should investigate whether this dismissal with prejudice was accompanied by any side agreement, as undisclosed settlement terms can affect declaratory judgment standing and licensing defenses in parallel or subsequent litigation.

For IP Professionals:

• In-house IP teams at large retailers and e-commerce platforms should treat this DSI action as an early indicator of an assertion campaign and conduct a portfolio-wide clearance review of their customer communication, omnichannel messaging, and real-time engagement platform architectures against the full DSI patent family.
• Licensing and portfolio managers should note that DSI’s four asserted patents span multiple application families, suggesting a layered claim strategy — a structured licensing audit comparing each patent’s independent claims against current platform features will help prioritize negotiation or design-around investments.

For R&D Teams:

• Engineering and product teams building or upgrading two-way, multi-platform customer communication systems should commission a freedom-to-operate analysis against the DSI patent portfolio, specifically examining whether asymmetric participation routing and cross-platform session management features fall within the claim scope of US11240183B2 or US11855937B2.
• Design-around opportunities may exist in the architecture of message routing and platform-agnostic session handling — R&D teams should document alternative technical implementations during development to establish a prior conception record and support potential design-around arguments if future litigation arises.