DCT
5:18-cv-06054
VoIP Palcom Inc v. Verizon Wireless Services LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VoIP-Pal.com, Inc. (Nevada)
- Defendant: Verizon Wireless Services, LLC; Verizon Communications, Inc.; AT&T, Inc.; AT&T Corp. (Delaware)
- Plaintiff’s Counsel: Alverson, Taylor, Mortensen & Sanders
- Case Identification: 2:16-cv-00271, D. Nev., 02/10/2016
- Venue Allegations: Venue is alleged to be proper in the District of Nevada because Defendants maintain permanent places of business and offer products and services for sale within the district.
- Core Dispute: Plaintiff alleges that Defendants’ Voice-over-IP (VoIP), messaging, and Wi-Fi Calling services infringe patents related to systems for classifying and routing internet-based communications.
- Technical Context: The technology concerns methods for intelligently routing communications in a VoIP system by classifying a call as either internal to a private network or external to the public switched telephone network.
- Key Procedural History: The complaint alleges that Plaintiff provided "numerous notices" of infringement to Defendants between July 2014 and December 2015. It also alleges Defendants had constructive notice of the patent rights as of the parent patent's publication on May 8, 2008. Inter Partes Review (IPR) proceedings were subsequently filed against both patents-in-suit. The U.S. Patent and Trademark Office ultimately issued certificates confirming the patentability of certain claims in both patents.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-02 | Priority Date for ’815 and ’005 Patents |
| 2008-05-08 | Parent Patent Publication Date |
| 2013-09-24 | ’815 Patent Issued |
| 2014-07-01 | Alleged Infringement Notices to Defendants Begin |
| 2015-11-03 | ’005 Patent Issued |
| 2016-02-10 | Complaint Filed |
| 2016-06-15 | IPR Petitions Filed Against ’815 and ’005 Patents |
| 2021-09-20 | Inter Partes Review Certificate Issued for ’815 Patent |
| 2021-09-22 | Inter Partes Review Certificate Issued for ’005 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,542,815 - “Producing Routing Messages for Voice Over IP Communications,” issued September 24, 2013
The Invention Explained
- Problem Addressed: The patent describes the limitations of prior art telecommunication networks, noting that traditional public switched telephone networks (PSTN) are centralized, creating risks of significant service outages from a single node failure, while existing Voice-over-IP (VoIP) systems lacked high availability and resiliency across geographically dispersed areas (ʼ815 Patent, col. 1:30-44).
- The Patented Solution: The invention provides a system where a call routing controller classifies a call based on the caller’s and callee’s identifiers. It uses a "caller dialing profile" containing "calling attributes" to determine if a call is a "private network call" (e.g., between two subscribers of the same VoIP service) or a "public network call" (requiring connection to the traditional phone network). The controller then generates a specific routing message tailored to the classification: either an internal IP address for the private call or the address of a public gateway for the public call (ʼ815 Patent, Abstract; col. 2:1-9).
- Technical Importance: This approach provided a method for VoIP systems to intelligently bridge private IP networks and the public telephone network, improving routing efficiency and enabling more flexible network architectures (Compl. ¶2).
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" but refers to non-proffered exhibits for specifics (Compl. ¶44, ¶51). Independent claim 1 is representative.
- Essential Elements of Independent Claim 1:
- A process of receiving a caller identifier and a callee identifier upon initiation of a call.
- Locating a "caller dialing profile" that contains a "plurality of calling attributes" associated with the caller.
- Determining a "match" where at least one calling attribute matches a portion of the callee identifier.
- Classifying the call as either a "public network call" or a "private network call" based on whether the match meets certain classification criteria.
- Producing a routing message identifying a private network address if classified as a private call, or a public network gateway if classified as a public call.
U.S. Patent No. 9,179,005 - “Producing Routing Messages for Voice Over IP Communications,” issued November 3, 2015
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’815 Patent, the ’005 patent addresses the same technical challenges of routing and resiliency in VoIP systems (’005 Patent, col. 1:16-51).
- The Patented Solution: The patent claims a similar process for a call routing controller that distinguishes between public and private network calls. It receives caller and callee identifiers and uses associated "call classification criteria" to make the determination, then produces a routing message directing the call to either an internal network address or an external public gateway (’005 Patent, Abstract; col. 1:55-67).
- Technical Importance: This continuation patent protects further aspects of the core invention related to classifying and routing calls across hybrid IP and public telephone networks (Compl. ¶26).
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" (Compl. ¶44, ¶51). Independent claim 1 is representative.
- Essential Elements of Independent Claim 1:
- A process of receiving a caller identifier and a callee identifier.
- Using "call classification criteria" associated with the caller identifier to classify the call as a public or private network call.
- Producing a routing message identifying an address on the private network if classified as a private call.
- Producing a routing message identifying a gateway to the public network if classified as a public call.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are communications services offered by Verizon and AT&T, including their respective "VoIP services," mobile messaging applications ("Verizon Messages," "AT&T Messages"), and "WiFi Calling" platforms (Compl. ¶¶26, 41).
Functionality and Market Context
- The complaint alleges that Defendants' services employ the patented technology by using a "caller dialing profile comprising a plurality of calling attributes to form network classification criteria" to route communications (Compl. ¶¶16, 28).
- VoIP Services: Allegedly use customer premises equipment to initiate calls and identify whether the callee is a subscriber or non-subscriber to classify and route the call (Compl. ¶¶17, 30).
- Messaging Services: Allegedly use a server connection to classify the sender and recipient and route the message to either another subscriber on the private network or a non-subscriber (Compl. ¶¶18, 31).
- WiFi Calling: Allegedly uses a profile with calling attributes to classify calls made over Wi-Fi for purposes that include "interpretation of the callee identifier," "handling of inactive, suspended or blocked accounts," and "handling customer billing authorization" (Compl. ¶¶20, 33).
- Plaintiff alleges that Defendants have "undermined VPLM's marketing efforts" and gained substantial profits through their use of the accused services (Compl. ¶3, ¶47, ¶54).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint. The complaint references claim chart exhibits that were not included in the filing. The following summaries are based on the narrative allegations.
’815 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...receiving a caller identifier and a callee identifier... | Defendants' VoIP, messaging, and Wi-Fi Calling services are alleged to initiate communications by identifying a caller/sender and a callee/recipient. | ¶17, ¶18, ¶20 | col. 2:51-54 |
| ...locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes... | The complaint alleges Defendants' systems use a "caller dialing profile" containing "calling attributes" as part of the process that classifies the call or message. | ¶17, ¶18, ¶20, ¶22 | col. 2:1-9 |
| ...classifying the call as a public network call ... or a private network call... | The services allegedly classify whether a callee is a subscriber or non-subscriber and use this classification to determine how to route the communication. | ¶18, ¶22 | col. 2:55-58 |
| ...producing a private network routing message ... identifying an address, on the private network... or ... a public network routing message ... identifying a gateway... | Based on the classification, the services are alleged to route the communication to either another subscriber (a private network call) or a non-subscriber (a public network call). | ¶18, ¶22 | col. 1:59-64 |
’005 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...receiving a caller identifier and a callee identifier... | Defendants' services are alleged to initiate communications by identifying both a caller and a callee. | ¶21, ¶22, ¶24 | col. 1:59-62 |
| ...using call classification criteria associated with the caller identifier to classify the call... | The complaint alleges that a profile containing "calling attributes is used as part of the process that classifies the call" for purposes including interpretation of the callee identifier, billing, and handling of suspended accounts. | ¶21, ¶24 | col. 2:1-4 |
| ...producing a routing message identifying an address, on the private network... or ... a gateway... | The services are alleged to use the classification to route calls and messages to other subscribers within their networks or to non-subscribers via external connections. | ¶22, ¶23 | col. 2:5-12 |
Identified Points of Contention
- Scope Questions: A central question may be whether the data Defendants use for their subscribers (e.g., account status, billing information) constitutes "calling attributes" or a "caller dialing profile" as those terms are used in the patents. The patents' detailed descriptions provide specific examples of dialing-related attributes, such as country codes and area codes ('815 Patent, Fig. 9), which raises the question of whether the claims' scope is limited to such parameters.
- Technical Questions: The infringement theory for the '815 Patent requires a "match" between a caller attribute and a portion of the callee identifier to perform the classification. The complaint alleges attributes are used for "interpretation of the callee identifier" (Compl. ¶20), but it does not specify what evidence supports the claim that this interpretation functions as the specific "match"-based classification required by claim 1.
V. Key Claim Terms for Construction
The Term: "calling attributes"
- Context and Importance: This term is foundational to the claimed invention, as these attributes form the basis of the "call classification criteria." The outcome of the case may depend on whether the term is construed broadly to cover any user-related data point or narrowly to cover only the specific dialing-rule parameters disclosed in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not list or limit the "plurality of calling attributes," which may support an argument that the term should be given its plain and ordinary meaning, encompassing any data associated with the caller used for classification (ʼ815 Patent, col. 36:19-22).
- Evidence for a Narrower Interpretation: The specification provides specific examples of "calling attributes" in a "Dialing Profile," including National Dialing Digit (NDD), International Dialing Digit (IDD), Country Code, and Local Area Codes (’815 Patent, Fig. 9; col. 18:1-24). This explicit disclosure of dialing-specific parameters could be used to argue for a narrower construction limited to such data.
The Term: "classifying the call as a public network call or a private network call"
- Context and Importance: This phrase describes the core function of the claimed process. The dispute will likely center on whether Defendants' systems perform this specific binary classification for routing, or if they use subscriber data for other purposes (e.g., applying features, authorizing billing) that do not constitute the claimed classification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is functional and does not specify the precise algorithm for classification. Any process that functionally segregates calls destined for the internal network from those destined for a public gateway could be argued to meet this limitation (ʼ815 Patent, col. 36:26-30).
- Evidence for a Narrower Interpretation: The specification describes the classification as a determination of whether the callee is another subscriber on the private network, often by checking a Direct-Inward-Dial (DID) bank table (’815 Patent, col. 2:50-58). An argument could be made that if the accused systems classify calls based on different criteria (e.g., network quality, subscription tier), they do not perform the claimed function.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both contributory and induced infringement (Compl. ¶44, ¶51). The inducement allegations are based on Defendants manufacturing and supporting devices and software (e.g., for Wi-Fi Calling) that allegedly cause their customers to directly infringe the patents (Compl. ¶19, ¶32).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint asserts Defendants had actual knowledge through "direct and indirect communications" from July 2014 to December 2015, as well as constructive notice dating back to the parent patent’s publication on May 8, 2008 (Compl. ¶46, ¶53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "calling attributes," which is exemplified in the patent specification with specific dialing-rule parameters, be construed to cover the potentially broader set of user account data (e.g., subscriber status, account features) that Defendants allegedly use to manage their services?
- A key evidentiary question will be one of functional operation: what is the specific technical mechanism by which the accused services classify communications? The case may turn on whether Plaintiff can prove that Defendants’ systems perform the specific binary "public vs. private" classification for the primary purpose of routing, as claimed, or whether Defendants’ classification is for fundamentally different purposes, such as billing or feature authorization.
- Given the allegations of pre-suit notice and the multi-billion dollar damages figures cited in the complaint, the questions of willfulness and the basis for damages will be central to the litigation, should infringement be established.