Five9 v. Random Chat: Declaratory Judgment Action Dismissed With Prejudice
Five9, Inc. brought a declaratory judgment action against Random Chat LLC in the Northern District of California over US8402099B2, a patent covering chat support features functionality. The case resolved in just 91 days when Five9 voluntarily dismissed with prejudice under Rule 41(a)(1)(A)(i), before Random Chat filed any answer — with each party bearing its own costs.
Five9’s Declaratory Judgment Bid Ends Before Random Chat Could Respond
On June 27, 2025, Five9, Inc. — a cloud contact centre software provider — filed a declaratory judgment action against Random Chat LLC in the U.S. District Court for the Northern District of California, before Judge Jon S. Tigar. The action concerned US8402099B2, a patent tied to chat support features functionality. Declaratory judgment actions of this kind are typically initiated by a party that has received licensing demands or infringement threats and seeks a court ruling that it does not infringe or that the patent is invalid.
The case closed on September 26, 2025, when Five9 filed a notice of voluntary dismissal with prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(i). This rule permits a plaintiff to dismiss unilaterally — without a court order — provided the opposing party has not yet served an answer or a motion for summary judgment. Random Chat had not done so. The dismissal is expressly with prejudice, meaning Five9 has permanently relinquished its declaratory judgment claims arising from the same facts. Each party bears its own costs.
The 91-day duration and pre-answer dismissal suggest the dispute was resolved — or the parties’ commercial positions shifted — before litigation reached any substantive stage. The public record does not disclose whether a licensing agreement, covenant not to sue, or other commercial resolution underpins the dismissal. The with-prejudice designation, chosen explicitly by Five9 rather than defaulting to without-prejudice, is the detail practitioners will note: it forecloses Five9 from re-filing these specific declaratory judgment claims.
Filing to Voluntary dismissal in 91 days
91 days — resolved before defendant filed any answer or summary judgment motion
Dismissed with prejudice: what Five9’s Rule 41 filing means for both parties
Rule 41(a)(1)(A)(i): plaintiff’s right to exit before answer
Federal Rule of Civil Procedure 41(a)(1)(A)(i) allows a plaintiff to dismiss an action without a court order by filing a notice before the defendant serves an answer or motion for summary judgment. Because Random Chat had not yet responded, Five9 could exit unilaterally. Five9 chose to make that dismissal with prejudice — a stricter self-imposed bar than the rule requires by default.
Voluntary, pre-answer exitFive9 accepted a permanent bar on re-filing these DJ claims
A dismissal with prejudice operates as a final adjudication on the merits, barring the plaintiff from re-filing the same claims. A without-prejudice dismissal would have preserved Five9’s right to re-litigate. Five9 expressly chose the with-prejudice designation, which typically signals that the underlying dispute has been commercially resolved — though the public record is silent on any settlement, licence, or covenant not to sue.
Claims permanently extinguishedFive9 exits litigation but forfeits the right to re-assert DJ claims
Five9 avoids the cost and uncertainty of protracted litigation and any court ruling on patent validity or non-infringement. The with-prejudice designation, however, means Five9 cannot re-open a declaratory judgment challenge based on the same facts. If a commercial resolution was reached, Five9 likely obtained sufficient certainty — whether a licence, a covenant, or a settlement — to justify the permanent concession.
Certainty bought at cost of re-filing rightRandom Chat’s patent survives without any validity ruling
US8402099B2 was never adjudicated for validity or infringement. Random Chat avoided full litigation while retaining an intact, unchallenged patent. The dismissal with prejudice protects Random Chat from Five9 re-filing the same DJ action. Random Chat’s patent position in the chat support features space remains commercially viable against other potential targets.
Patent validity untouchedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Five9, Inc. | Company | Cloud contact centre software provider — holder of DJ claims over US8402099B2Search in Eureka ↗ |
| Defendant | Random Chat | Individual | Random Chat LLC — patent holder whose chat-related IP prompted Five9’s DJ actionSearch in Eureka ↗ |
| Plaintiff counsel | Eamon M. Heaney | Attorney | Counsel for Five9, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Michael A. Lavine | Attorney | Counsel for Five9, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Michael C. Hendershot | Attorney | Counsel for Five9, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Jones Day | Law Firm | Representing Five9, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Jon S. Tigar | Judge | California Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
Five9’s dismissal notice invokes Rule 41(a)(1)(A)(i) and expressly designates the dismissal as with prejudice — a choice that goes beyond the rule’s default operation. The verdict text confirms Random Chat had served neither an answer nor a motion for summary judgment, satisfying the procedural prerequisite for unilateral dismissal. The with-prejudice election and the mutual costs-bearing arrangement together suggest a negotiated endpoint, though no settlement terms appear in the public record. US8402099B2 exits the litigation entirely unscathed.
US8402099B2 — Chat support features functionality
US8402099B2 (application number US12/675046) is a U.S. patent covering chat support features functionality — the technical mechanisms enabling real-time chat interactions within contact centre or customer engagement platforms. The patent is relevant to cloud-based SaaS contact centre products that integrate chat as a support channel alongside voice and email. Its grant date and application lineage place it within a generation of patents that captured foundational architectures for multi-channel customer communication.
For the cloud contact centre sector, US8402099B2 represents exactly the type of foundational communication-layer patent that can generate licensing leverage across multiple commercial targets. Five9’s decision to seek declaratory judgment — typically a response to a credible infringement threat — suggests Random Chat had identified Five9’s chat support features as potentially within scope. With no invalidity ruling issued, the patent retains full presumption of validity and remains a credible tool against other operators of chat-enabled contact centre platforms.
Should you run an FTO against US8402099B2?
Any company operating cloud-based chat support features within a contact centre or customer engagement platform should treat US8402099B2 as a priority FTO target. The fact that a publicly traded SaaS company chose to initiate — and then settle — declaratory judgment proceedings over this patent is strong evidence of real infringement risk. Product teams building or scaling live chat, asynchronous messaging, or chat routing functionality should commission a formal FTO assessment before launch or expansion.
PatSnap Eureka’s FTO Search Agent can map the claim scope of US8402099B2 against your product architecture, identify prosecution history estoppel, and surface related continuation or divisional patents in Random Chat’s portfolio that may present additional exposure. Eureka also flags co-pending applications that could extend the patent family’s enforcement lifecycle — giving your legal and R&D teams the full picture before they need it.
Run a freedom-to-operate analysis on US8402099B2 to assess your product’s exposure
Run FTO in Eureka →Similar Declaratory Judgment Cases in Chat and Contact Centre Patent Disputes
Explore comparable DJ actions filed in N.D. California involving cloud communication and chat platform patents — cases that resolved at similar pre-answer stages.
What this case signals for the cloud contact centre IP landscape
Pre-answer withdrawals with prejudice are rare enough to merit attention — they usually point to an off-docket resolution.
DJ actions resolved pre-answer almost always reflect off-docket deal-making
When a plaintiff files a declaratory judgment action and then voluntarily dismisses with prejudice before the defendant even answers, the most commercially logical explanation is a negotiated resolution — licence, covenant not to sue, or settlement. Practitioners monitoring chat and contact centre IP should flag US8402099B2 as a patent whose owner has demonstrated willingness to engage commercially.
With-prejudice election signals Five9 obtained sufficient legal certainty
Five9 could have dismissed without prejudice, preserving optionality. Electing with prejudice suggests Five9 received something of sufficient value — likely freedom to operate assurance — that foreclosing re-filing was an acceptable trade. R&D and product teams at competitors building chat support features should treat this as a signal that Random Chat’s patent has commercial teeth.
Five9 v Random — key questions answered
Declaratory judgment actions are typically filed by a party that has received a patent infringement demand or credible licensing threat and wants a court to declare it does not infringe or that the patent is invalid. Five9’s filing in N.D. California over US8402099B2 is consistent with having received such a demand from Random Chat related to its chat support features functionality, though the specific pre-litigation correspondence is not part of the public record.
A dismissal with prejudice operates as a final judgment on the merits for preclusion purposes, barring Five9 from re-filing the same declaratory judgment claims against Random Chat based on the same facts. Unlike a without-prejudice dismissal, which preserves the right to re-litigate, Five9’s choice permanently extinguishes its DJ claims. This is notable because Rule 41(a)(1)(A)(i) defaults to without-prejudice dismissal — Five9 explicitly chose the stricter designation.
The public record does not disclose any settlement agreement, licence, or covenant not to sue. The case was closed via a Rule 41(a)(1)(A)(i) voluntary dismissal notice filed by Five9. However, the combination of a with-prejudice dismissal, mutual costs-bearing, and the pre-answer timeline is commercially consistent with an off-docket resolution, and practitioners should treat this as a likely — though unconfirmed — signal of a negotiated outcome.
Yes. The case was dismissed without any court ruling on the validity, enforceability, or scope of US8402099B2. The patent exits the litigation with its full presumption of validity intact under 35 U.S.C. § 282. Random Chat retains all rights to enforce the patent against other parties, and there is no estoppel or adverse finding from this proceeding that would assist future defendants.
Rule 41(a)(1)(A)(i) allows a plaintiff to dismiss an action without court approval by filing a notice before the defendant serves an answer or motion for summary judgment. In this case, Random Chat had not yet responded, so Five9 could exit unilaterally. The rule is significant because it gave Five9 full control over the dismissal timing and terms — including the choice to make it with prejudice — without needing judicial involvement.
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