DCT
3:22-cv-03202
VoIP Palcom Inc v. Meta Platforms Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VOIP-PAL.COM, INC. (Nevada)
- Defendant: Facebook, Inc. and WhatsApp, Inc. (Delaware)
- Plaintiff’s Counsel: Hudnell Law Group P.C.
- Case Identification: 6:21-cv-00665, W.D. Tex., 09/28/2021
- Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain regular and established places of business in the district, including offices in Austin, Texas, collectively employing approximately 1,200 people, and have committed acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s messaging platforms, Facebook Messenger and WhatsApp, infringe patents related to methods and systems for routing mobile communications to optimize cost and network selection.
- Technical Context: The technology addresses routing calls from mobile devices by dynamically selecting a communication channel, such as Voice over IP (VoIP), to bypass potentially expensive cellular or public switched telephone networks.
- Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patents-in-suit. Facebook was allegedly notified of the ’234 Patent and the application leading to the ’721 Patent in December 2015. WhatsApp was allegedly notified of the same in February 2016. The complaint also states the parties have been engaged in separate litigation since at least April 2, 2020, which Plaintiff alleges provides Defendants with intimate knowledge of its patent portfolio.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-28 | '234 and '721 Patents - Earliest Priority Date |
| 2014-01-14 | U.S. Patent No. 8,630,234 Issued |
| 2015-12-18 | Facebook allegedly notified of '234 Patent and application for '721 Patent |
| 2016-02-02 | WhatsApp allegedly notified of '234 Patent and application for '721 Patent |
| 2020-04-02 | Parties allegedly engaged in prior litigation |
| 2020-12-29 | U.S. Patent No. 10,880,721 Issued |
| 2021-09-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,630,234, “Mobile Gateway,” issued January 14, 2014.
The Invention Explained
- Problem Addressed: The patent addresses the high costs mobile phone users often incurred for long-distance calls or calls made while roaming outside their home network (Compl. ¶24; ’721 Patent, col. 1:15-24). Existing solutions, such as using calling cards, were described as "cumbersome and undesirable" (Compl. ¶24; ’721 Patent, col. 1:32-38).
- The Patented Solution: The invention proposes a system where a mobile device, instead of dialing a callee directly, first sends an "access code request message" containing the callee's identifier to an access server. The server responds with an "access code," which is different from the callee's identifier (e.g., a local telephone number). The mobile device then initiates the call using this new access code, which routes the communication through a more optimal and less expensive infrastructure, such as an IP network. (’721 Patent, Abstract; ’721 Patent, col. 2:40-52).
- Technical Importance: This method provided a way to intelligently and dynamically route mobile communications to bridge disparate networks (e.g., VoIP and PSTN) and optimize the communication channel based on the user's location to reduce costs (Compl. ¶26).
Key Claims at a Glance
- The complaint asserts independent claims 20 and 30 (’234 Patent, Compl. ¶36).
- Essential elements of independent claim 20 (a method claim) include:
- Receiving a callee identifier from a user of a mobile telephone.
- Transmitting an access code request message, including the callee identifier, to an access server.
- Receiving an access code reply message from the server, which includes an access code different from the callee identifier.
- Initiating a call with the mobile telephone using the received access code to identify the callee.
- Essential elements of independent claim 30 (a system claim) include:
- Provisions for receiving a callee identifier from a user.
- Provisions for transmitting an access code request message.
- Provisions for receiving an access code reply message with a different access code.
- Provisions for initiating a call using the received access code.
- The complaint does not explicitly reserve the right to assert dependent claims.
- Patent Identification: U.S. Patent No. 10,880,721, “Mobile Gateway,” issued December 29, 2020.
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as its parent ’234 Patent: the high cost and complexity for mobile users placing long-distance or roaming calls over conventional cellular and PSTN infrastructure (Compl. ¶24; ’721 Patent, col. 1:15-24).
- The Patented Solution: The solution is materially similar to that of the ’234 Patent. It describes a wireless device transmitting an access code request that includes both a "destination node identifier" (the callee) and a "location identifier." A server provides an "access code" based on this location information, which the device then uses to initiate communication through an optimized channel, such as a gateway to an IP network (’721 Patent, Abstract; ’721 Patent, Fig. 1). This system is designed to seamlessly integrate private VoIP networks with the public telephone network (Compl. ¶25).
- Technical Importance: This technology allows for optimizing call routing based on the caller's current location, enabling access to more suitable and cost-effective communication infrastructure (Compl. ¶26).
Key Claims at a Glance
- The complaint asserts independent claim 38 (’721 Patent, Compl. ¶51).
- Essential elements of independent claim 38 (an apparatus claim) include:
- A processor circuit and network interface.
- A non-transitory computer readable medium with code to direct the processor to:
- Receive a destination node identifier from a user.
- Transmit an access code request message that includes the destination node identifier and a location identifier.
- Receive an access code reply message with an access code that is based on the location identifier and identifies a communications channel.
- Initiate communications using the received access code.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Facebook-Messenger Calling System" and the "Facebook-WhatsApp Calling System," which encompass the messaging and voice-over-IP (VoIP) services offered through the Facebook Messenger and WhatsApp applications (Compl. ¶¶ 28, 31, 34).
Functionality and Market Context
- The accused instrumentalities are described as cross-platform, centralized messaging and VoIP services that allow smartphone and desktop users to make voice and video calls and share various types of content (Compl. ¶¶ 28, 31).
- The complaint alleges that these systems enable mobile device roaming and function by producing an "access code," which it describes as potentially comprising "an Internet Protocol (IP) network address of a calling server that enables a local call to be made to a callee" (Compl. ¶¶ 30, 33). This access code is allegedly based on a location identifier associated with the caller (Compl. ¶¶ 30, 33). The system is alleged to use this access code, in combination with call session information, to initiate the call (Compl. ¶¶ 30, 33).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’234 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, from a user of the mobile telephone, a callee identifier associated with the callee | A user of Messenger or WhatsApp selects a contact to call, thereby providing the callee's identifier to the application and underlying system. | ¶28, ¶32 | col. 2:41-43 |
| transmitting an access code request message to an access server, the access code request message including the callee identifier | The user's device communicates with Facebook's or WhatsApp's servers to initiate the call, which constitutes the alleged access code request. | ¶30, ¶33 | col. 2:43-46 |
| receiving an access code reply message from the access server...the access code reply message including an access code different from the callee identifier | The system allegedly "produces an access code" which the complaint defines as information identifying an IP network address of a calling server and call session information. | ¶30, ¶33 | col. 2:46-50 |
| initiating a call with the mobile telephone using the access code to identify the callee | The system uses the alleged access code (IP address and session information) to initiate and route the call over an IP network. | ¶30, ¶33 | col. 2:50-52 |
’721 Patent Infringement Allegations
| Claim Element (from Independent Claim 38) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| transmit an access code request message to an access server, the access code request message including the destination node identifier and a location identifier identifying a geographical location of the wireless apparatus | The user's device sends a call initiation request to Defendant's servers. The complaint alleges the system's operation is based on a location identifier, implying the request includes or allows for the determination of the user's location. | ¶30, ¶33 | col. 35:8-12 |
| receive an access code reply message from the access server...the access code reply message including an access code based on the location identifier | The system produces and returns an alleged "access code" (e.g., an IP address of a calling server) that is allegedly determined based on the user's location to enable an optimized or local call. | ¶30, ¶33 | col. 35:13-21 |
| initiate communications from the wireless apparatus...using the access code...to initiate communications from the wireless device to the destination node through the channel identified by the access code | The user's device uses the information in the alleged access code to connect the call through Defendant's IP-based server infrastructure. | ¶30, ¶33 | col. 35:22-30 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the definition of "access code." The patent specification frequently provides examples of access codes as telephone numbers that identify a channel on the PSTN (’721 Patent, col. 10:49-51; Fig. 10). The complaint, however, alleges that an "IP network address of a calling server" combined with "call session information" constitutes an "access code" (Compl. ¶¶ 30, 33). This raises the question of whether the claimed "access code" can be construed to read on network routing information used internally by a proprietary VoIP system.
- Technical Questions: For the ’721 Patent, the complaint alleges that the "access code is based on a location identifier" (Compl. ¶¶ 30, 33). A key factual question will be what evidence demonstrates that the accused systems' alleged access code is specifically generated as a function of the user's geographical location, as required by claim 38, rather than being determined by other network factors like server load or latency.
V. Key Claim Terms for Construction
- The Term: "access code"
- Context and Importance: This term is fundamental to the infringement theories for both patents. Whether the technical operations of the accused Facebook Messenger and WhatsApp calling systems fall within the scope of the claims will likely depend on how this term is construed. Practitioners may focus on this term because the complaint's theory appears to equate modern IP-based routing information with the patent's description of an "access code."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the asserted independent claims does not explicitly limit "access code" to a telephone number. For instance, claim 20 of the ’234 Patent only requires "an access code different from the callee identifier." The ’721 Patent abstract states the access code is "associated with the callee identifier," which could support a broader definition beyond a dialable number.
- Evidence for a Narrower Interpretation: The specification repeatedly uses PSTN telephone numbers as the primary embodiment of an "access code" (’721 Patent, Fig. 10; col. 17:46-49). The summary of the invention states the access code may include "a telephone number identifying a channel" that can be used to route a call through an IP network (’721 Patent, col. 2:8-13). This repeated emphasis on telephone numbers as the channel identifier could be used to argue for a narrower construction limited to that embodiment.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b). The basis for this allegation is that Defendants provide the accused applications with the knowledge and intent that users will infringe, and further provide "explicit instructions" and "promotional and marketing materials" that encourage the infringing use (Compl. ¶¶ 43-46, 58-61). The complaint cites to specific help pages on Defendants' websites detailing how to make voice and video calls (Compl. ¶¶ 45, 60).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged based on notice letters sent to Facebook in December 2015 and to WhatsApp in February 2016, as well as knowledge gained from prior litigation between the parties ongoing since April 2020 (Compl. ¶¶ 39, 40, 53-55). Post-suit knowledge is alleged based on the filing of the complaint itself (Compl. ¶¶ 41, 56).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "access code," which is exemplified in the patent specification primarily as a dialable PSTN telephone number used to access a gateway, be construed to cover the internal network routing information (such as a server IP address and session data) allegedly used by the accused modern VoIP platforms?
- A key evidentiary question will be one of technical mechanism: what proof will be offered to demonstrate that the accused systems generate a specific routing instruction "based on a location identifier," as required by claim 38 of the ’721 Patent, as opposed to routing calls based on general network conditions like server availability, latency, or load balancing?
- A third question relates to intent: given the alleged history of notice letters and prior litigation, the factual record concerning Defendants' knowledge and intent will be central to the claims for willful and induced infringement.