DCT
5:18-cv-06216
VoIP Palcom Inc v. Apple Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VoIP-Pal.com, Inc. (Nevada)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Alverson, Taylor, Mortensen & Sanders; Malek Moss PLLC
- Case Identification: 5:18-cv-06216, D. Nev., 05/24/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Nevada because Defendant Apple has placed the accused products into the stream of commerce with the knowledge or expectation that they would be purchased and used within the district.
- Core Dispute: Plaintiff alleges that Defendant’s iMessage, FaceTime, and WiFi Calling systems and services infringe four patents related to methods for routing internet protocol (IP) based communications between internal and external networks.
- Technical Context: The technology concerns the intelligent routing of communications, such as messages and calls, by classifying whether the recipient is within the same IP-based network or on an external network (like the public switched telephone network or cellular networks).
- Key Procedural History: The complaint alleges that Defendant has had knowledge of the patents-in-suit since at least April 12, 2018, based on a press release issued by Plaintiff, which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-02 | Earliest Priority Date (’762, ’330, ’002, ’549 Patents) |
| 2017-01-03 | U.S. Patent No. 9,537,762 Issues |
| 2017-11-07 | U.S. Patent No. 9,813,330 Issues |
| 2017-11-21 | U.S. Patent No. 9,826,002 Issues |
| 2018-04-12 | Alleged date of Defendant's knowledge of patents-in-suit via press release |
| 2018-04-17 | U.S. Patent No. 9,948,549 Issues |
| 2018-05-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,537,762 - “Producing Routing Messages For Voice Over IP Communications”
- Patent Identification: U.S. Patent No. 9,537,762, “Producing Routing Messages For Voice Over IP Communications,” issued January 3, 2017.
The Invention Explained
- Problem Addressed: The patent’s background section describes that existing Voice over IP (VoIP) systems lacked the high availability and resiliency of the traditional Public Switched Telephone Network (PSTN), particularly over geographically dispersed areas, making them vulnerable to significant service outages if a network node failed ('762 Patent, col. 1:46-54).
- The Patented Solution: The invention provides a method for a call routing controller to facilitate communication between users on a private IP network and those on external public networks ('762 Patent, col. 2:55-67). Upon receiving a call request, the system uses "call classification criteria" associated with the caller to determine if the call is a "private network call" or a "public network call" and then produces a corresponding routing message—either to an internal network address or to a public network gateway ('762 Patent, Abstract). This allows for intelligent and seamless routing between different network types.
- Technical Importance: The described technology provides a framework for integrating self-contained VoIP systems with legacy telephone networks, a crucial step for enabling services that can communicate universally with any user, regardless of their network. (Compl. ¶¶ 17-18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶29).
- Essential elements of Claim 1 include:
- A method of routing communications in a system with registered participants.
- Receiving a first and second participant identifier from a first participant's device.
- Using the first participant identifier to locate a first participant profile from a database, the profile comprising one or more attributes.
- Processing the second participant identifier based on at least one attribute from the first profile to produce a new second participant identifier.
- Classifying the communication using the new identifier as a "first network communication" or "second network communication" based on meeting classification criteria.
- When a first criterion is met, producing a first routing message identifying an address within the system.
- When a second criterion is met (if the second participant is not registered), producing a second routing message identifying an address for a gateway to an external network.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement is alleged for "one or more claims" (Compl. ¶29).
U.S. Patent No. 9,813,330 - “Producing Routing Messages For Voice Over IP Communications”
- Patent Identification: U.S. Patent No. 9,813,330, “Producing Routing Messages For Voice Over IP Communications,” issued November 7, 2017.
The Invention Explained
- Problem Addressed: As part of the same patent family, the '330 patent addresses the same technical challenge of routing communications between IP-based and external networks ('330 Patent, col. 1:45-53).
- The Patented Solution: The solution is conceptually similar to that of the '762 patent but refines the classification step. The method involves accessing user profiles for the first participant, comparing an attribute from that profile with the second participant's identifier, and then classifying the communication as internal or external based on the comparing step ('330 Patent, Abstract). This focuses on a direct comparison between caller attributes and callee information as the basis for the routing decision.
- Technical Importance: This refined method provides a more specific logic for classification, potentially allowing for more nuanced routing decisions based on attributes like the caller's and callee's country codes or service subscriptions. (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶38).
- Essential elements of Claim 1 include:
- A method for routing communication between an Internet-connected first participant device and a second participant device.
- Receiving a first and second participant identifier over an IP network.
- Accessing a database of user profiles using the first identifier to locate a profile for the first participant, which includes a plurality of attributes.
- Comparing at least a portion of the second participant identifier with at least one attribute from the first participant's profile.
- Searching a database for a user profile of the second participant.
- Classifying the communication as a "system communication" or an "external network communication" based on the comparing step.
- Producing a system routing message to an internal address if classified as a system communication.
- Producing an external network routing message to a gateway if classified as an external communication.
- The complaint alleges infringement of "one or more claims" of the '330 Patent (Compl. ¶38).
Multi-Patent Capsule: U.S. Patent No. 9,826,002
- Patent Identification: U.S. Patent No. 9,826,002, “Producing Routing Messages For Voice Over IP Communications,” issued November 21, 2017.
- Technology Synopsis: This patent discloses a method for routing communications by first accessing a calling user's profile to obtain attributes. It then processes the recipient's identifier based on at least one of the caller's attributes to generate a new second participant identifier. The communication is then classified as a system or external communication based on this newly generated identifier ('002 Patent, Abstract; Compl. ¶21).
- Asserted Claims: The complaint asserts at least exemplary claim 1 (Compl. ¶47).
- Accused Features: The complaint alleges that Apple's iMessage®, FaceTime®, and WiFi Calling systems, as implemented on devices like the iPhone® and Mac®, practice the claimed methods (Compl. ¶47).
Multi-Patent Capsule: U.S. Patent No. 9,948,549
- Patent Identification: U.S. Patent No. 9,948,549, “Producing Routing Messages For Voice Over IP Communications,” issued April 17, 2018.
- Technology Synopsis: This patent describes a method that begins by accessing a stored profile for a first participant. The system then receives a second participant identifier that was inputted by the first participant to initiate a communication. This inputted identifier is then processed based on an attribute from the first participant's profile to create a new identifier, which is subsequently used to classify the communication for routing ('549 Patent, Abstract; Compl. ¶22).
- Asserted Claims: The complaint asserts at least exemplary claim 1 (Compl. ¶56).
- Accused Features: The complaint accuses Apple's messaging, communication, and WiFi Calling services and the devices that support them of infringement (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are methods, systems, and services including Apple's iMessage®, FaceTime®, and WiFi Calling, as well as the devices that operate them, such as the iPhone®, iPad®, Apple Watch®, and Mac® computers (Compl. ¶¶ 29, 38, 47, 56).
Functionality and Market Context
- The complaint alleges that these services allow users of Apple devices to communicate with both other Apple users and users on external networks, such as the PSTN or cellular networks (Compl. ¶¶ 25-27). The core accused functionality is the system's alleged use of "attributes that are part of a profile for the first participant in order to classify communications" (Compl. ¶¶ 25-26). For example, the system determines whether a message to a phone number should be sent as a blue-bubble iMessage (a "system communication") or a green-bubble SMS/MMS message (an "external network communication"), allegedly based on looking up the recipient's identifier against a database of registered users (Compl. ¶¶ 30, 39).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,537,762 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in response to the first participant device initiating the communication... receiving the first participant identifier and the second participant identifier from the first participant device; | When a user initiates a communication in iMessage® or FaceTime®, the system receives the identifiers for both participants, such as their phone numbers or Apple IDs. | ¶30 | col. 2:7-10 |
| using the first participant identifier to locate... a first participant profile from among a plurality of participant profiles that are stored in a database, the first participant profile comprising one or more attributes... | Apple's systems locate a profile for the sending participant within a database using an identifier like a phone number or Apple ID. | ¶30 | col. 2:11-16 |
| processing the second participant identifier... based on at least one of the one or more attributes from the first participant profile, to produce a new second participant identifier; | Apple’s iMessage® and FaceTime® systems allegedly process the recipient's identifier using the sender's profile to produce a new identifier for routing. | ¶30 | col. 2:17-21 |
| classifying the communication... using the new second participant identifier, as a first network communication if a first network classification criterion is met and as a second network communication if a second network classification criterion is met; | Apple's systems classify the communication through a server, for example, by determining if the new identifier represents a registered Apple device. | ¶30 | col. 2:22-27 |
| when the first network classification criterion is met, producing... a first network routing message, the first network routing message identifying an address in the system... associated with the second participant device; | When the recipient is an Apple user, the system produces a routing message that identifies an address on Apple's system for routing to the recipient's Apple device. | ¶30 | col. 2:28-32 |
| and when the second network classification criterion is met... producing... a second network routing message... identifying an address associated with a gateway to a network external to the system, wherein the second network classification criterion is met if the second participant is not registered with the system. | When the recipient is not registered, the system produces a routing message identifying an address for a gateway to an external network, such as for sending an SMS message via WiFi Calling or communicating with the PSTN. | ¶30 | col. 2:33-40 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether Apple's act of checking a recipient's identifier against its user database to determine if they are an iMessage user constitutes "processing the second participant identifier...to produce a new second participant identifier" as required by the claim. The defense may argue this is a simple lookup, not a "processing" step that "produces" a "new" identifier.
- Technical Questions: The complaint alleges infringement at a high functional level. A key factual question will be what technical operations Apple's servers actually perform and whether those operations map to the specific sequence of locating a profile, processing an identifier based on an attribute from that profile, and then classifying the communication based on the newly produced identifier.
U.S. Patent No. 9,813,330 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| causing at least one processor to access at least one database comprising user profiles using the first participant identifier... to locate a user profile for the first participant including a plurality of first participant attributes; | Apple’s iMessage® and FaceTime® systems locate a profile for the sender within a database of users or participants. | ¶39 | col. 6:4-7 |
| comparing at least a portion of the second participant identifier... with at least one of the plurality of first participant attributes obtained from the user profile for the first participant; | Apple's systems allegedly compare an attribute from the sender's profile (such as an international dialing digit (IDD) or national dialing digit (NDD)) with the recipient's identifier. | ¶39 | col. 6:8-11 |
| causing at least one processor to access the at least one database to search for a user profile for the second participant; | The iMessage® and FaceTime® systems search a database of registered users for a profile associated with the recipient. | ¶39 | col. 6:12-13 |
| classifying the communication, based on the comparing, as a system communication or an external network communication...; | Apple's systems classify whether a communication is internal (e.g., iMessage) or external (e.g., SMS over WiFi Calling or a PSTN call) using a processor. | ¶39 | col. 6:14-16 |
| when the communication is classified as a system communication, producing a system routing message identifying an Internet address of a communication system node associated with the second participant device...; | If the communication is classified as internal, a routing message is produced to identify an address within Apple's system to establish communication with the recipient's Apple device. | ¶39 | col. 6:17-22 |
| when the communication is classified as an external network communication, producing an external network routing message identifying an Internet address associated with a gateway to an external network... | If classified as external, a routing message is produced to identify an address for a gateway to an external network, such as for SMS messages or PSTN communications. | ¶39 | col. 6:23-29 |
- Identified Points of Contention:
- Scope Questions: The claim requires "comparing at least a portion of the second participant identifier... with at least one... first participant attributes." The complaint suggests this could be comparing dialing conventions like IDD or NDD. A question for the court will be whether simply checking if a recipient's phone number is registered on iMessage constitutes this specific "comparing" step, or if the claim requires a more direct comparison of attributes between the two user profiles.
- Technical Questions: What specific "attributes" from the first participant's profile are actually used in the accused systems to make a routing decision? The complaint's allegations are general, and the case may turn on evidence of whether Apple’s systems perform the specific comparison recited in the claim, rather than a more direct lookup of the recipient's status.
V. Key Claim Terms for Construction
The Term: "participant profile"
- Context and Importance: This term is foundational to all asserted patents, as the routing and classification decisions are based on attributes from this profile. Its definition will determine what information must be accessed and used by the accused system. Practitioners may focus on this term because its scope could determine whether Apple's combination of on-device data (e.g., contacts) and server-side data (e.g., Apple ID registration) meets the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states a dialing profile includes a "user name... a domain... and at least one calling attribute" ('762 Patent, col. 2:13-16), a potentially broad definition that could encompass various user-related data points.
- Evidence for a Narrower Interpretation: The patent's figures and detailed descriptions consistently depict profiles containing specific dialing rules, such as national and international dialing digits (NDD/IDD), local area codes, and country codes ('762 Patent, Fig. 9; col. 18:45-50). This may support a narrower construction limited to such dialing-specific information.
The Term: "classifying the communication"
- Context and Importance: This is the core decision-making step of the claimed methods. Whether Apple's systems perform this step "based on the comparing" ('330 Patent) or "using the new second participant identifier" ('762 Patent) will be a central point of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The summary of the invention describes the step as using "call classification criteria associated with the caller to classify the call as a public network call or a private network call," suggesting a functional outcome rather than a specific technical implementation ('762 Patent, col. 2:60-64).
- Evidence for a Narrower Interpretation: The specific language varies by patent. Claim 1 of the '330 patent requires classification "based on the comparing," linking the classification directly to the comparison of a caller attribute with the callee identifier. Claim 1 of the '762 patent requires classification "using the new second participant identifier," tying the decision to a transformed identifier. These specific phrasings may support a narrower interpretation that requires more than a simple recipient-status lookup.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Apple induces infringement by providing "product manuals and other technical information that cause Apple customers and other third parties to use and to operate" the accused services in their ordinary and customary manner, which allegedly infringes the patents (Compl. ¶¶ 34, 43, 52, 61).
- Willful Infringement: The complaint bases its willfulness allegations on pre-suit knowledge, alleging that Apple has known of the patents-in-suit "since at least April 12, 2018 when VoIP-Pal issues a press release announcing the issuance" of the patents (Compl. ¶¶ 31, 40, 49, 58). It is alleged that despite this knowledge, Apple continued its infringing activities (Compl. ¶¶ 32, 41, 50, 59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and construction: Can terms like "processing... to produce a new second participant identifier" ('762 Patent) or "comparing... with at least one... attribute" ('330 Patent) be construed to cover the process Apple's systems use to determine if a recipient's phone number is registered for iMessage, or do the claims require a more complex transformation or comparison of user-specific data?
- A key evidentiary question will be one of technical implementation: What specific operations do Apple's iMessage, FaceTime, and WiFi Calling servers perform when routing a communication? The dispute will likely focus on whether the evidence shows a simple lookup of the recipient's identifier against a registration database, or a multi-step process that aligns with the specific elements of locating a caller's profile, extracting an attribute, and using that attribute to process or compare the recipient's information as claimed.