DCT
1:13-cv-00711
Broadsoft Inc v. Callwave Communications LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BroadSoft, Inc. (Delaware)
- Defendant: CallWave Communications, LLC (Delaware)
- Plaintiff’s Counsel: Ashby & Geddes; Cooley LLP
- Case Identification: 1:13-cv-00711, D. Del., 04/23/2013
- Venue Allegations: Venue is asserted in the District of Delaware based on Defendant CallWave being a Delaware corporation and having filed at least seven other patent infringement lawsuits in the district.
- Core Dispute: Plaintiff BroadSoft seeks a declaratory judgment that its Voice over IP (VoIP) software does not infringe, and that the claims are invalid, for four of Defendant CallWave's patents related to call screening and processing.
- Technical Context: The technology relates to network-based call management systems that provide unified communications, allowing users to screen, manage, and transfer calls across different devices and networks, such as traditional phone lines and the Internet.
- Key Procedural History: This declaratory judgment action arises from prior litigation initiated by CallWave against BroadSoft’s customers, Telovations, Inc. and Bright House Networks, LLC. CallWave accused those entities of infringing the patents-in-suit through their use of a "Mobility" product, which is allegedly rebranded BroadSoft software. BroadSoft states it is obligated to defend and indemnify its customers under a license agreement, creating a direct and justiciable controversy between BroadSoft and CallWave.
Case Timeline
| Date | Event |
|---|---|
| 2002-05-20 | Priority Date for '591, '188, '428, and '588 Patents |
| 2007-08-31 | BroadSoft and Telovations enter into a License Agreement |
| 2009-12-22 | U.S. Patent No. 7,636,428 Issues |
| 2010-10-26 | U.S. Patent No. 7,822,188 Issues |
| 2011-11-22 | U.S. Patent No. 8,064,588 Issues |
| 2012-11-25 | Bright House announces agreement to acquire assets of Telovations |
| 2012-12-31 | Telovations assigns its License Agreement rights to Bright House |
| 2013-01-08 | U.S. Patent No. 8,351,591 Issues |
| 2013-01-11 | CallWave files patent infringement complaint against Telovations |
| 2013-02-25 | CallWave files First Amended Complaint, adding Bright House |
| 2013-04-23 | BroadSoft files Complaint for Declaratory Judgment (this action) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,351,591 - Methods and Apparatus for Providing Expanded Telecommunications Service
The Invention Explained
- Problem Addressed: The patent's background describes the challenge for callers trying to reach an individual who uses multiple communication devices, such as a work phone, home phone, and cellular phone, as well as the problem of missed calls when a phone line is occupied by a computer accessing the Internet (’591 Patent, col. 1:49-65).
- The Patented Solution: The invention is a network-based call processing system that intercepts a call intended for a subscriber. It can then place a new outbound call to a different device designated by the subscriber (e.g., a cell phone) and bridge the two calls. Crucially, the system can insert the original caller's phone number into the CallerID field of the new outbound call, allowing the subscriber to screen the call on their alternate device before deciding whether to answer (’591 Patent, col. 2:11-51).
- Technical Importance: This technology provided a method for unifying communications across multiple devices under a single point of contact, giving users sophisticated call management capabilities without requiring specialized on-premises hardware (Compl. ¶8).
Key Claims at a Glance
The complaint seeks a declaratory judgment of non-infringement of the patents-in-suit generally and does not identify specific asserted claims (Compl. ¶¶ 23, 29, 35, 41). For the purpose of analysis, independent claim 1 is representative of the patent's core method:
- A method of processing calls, comprising:
- storing in computer readable memory associated with a call processing system a first phone address associated with a first subscriber;
- storing in computer readable memory a plurality of phone addresses for the first subscriber;
- participating at the call processing system in a first call associated with the first subscriber, the first call associated with a second phone address different than the first phone address;
- placing a first outcall from a call processing system to a first called party, wherein the call processing system inserts at least a portion of the first phone address in a callerID field associated with signaling information associated with the first outcall;
- causing the first call and the first outcall to be bridged.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,822,188 B1 - Methods and Apparatus for Providing Expanded Telecommunications Service
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’591 Patent: managing communications for users with multiple telephone numbers and devices (’188 Patent, col. 1:49-65).
- The Patented Solution: The invention provides a flexible call processing system where an inbound call can be received and a new outbound call can be placed to the intended recipient on a different device. The system provides the called party with a call transfer option, allowing a user who answers a call on one device (e.g., a work phone) to transfer the live call to another device (e.g., a cell phone) by interacting with the call processing system (’188 Patent, Abstract; FIG. 21).
- Technical Importance: This solution offered users real-time control over in-progress calls, enabling mobility by allowing a seamless transfer of a conversation from a fixed device to a mobile one (Compl. ¶8).
Key Claims at a Glance
The complaint does not identify specific asserted claims (Compl. ¶29). For the purpose of analysis, independent claim 1 is representative:
- A method of processing calls, comprising:
- storing in computer readable memory associated with a call processing system a first phone address associated with a first subscriber;
- storing in computer readable memory a plurality of phone addresses for the subscriber;
- participating at the call processing system in a first call with the subscriber, the first call associated with a second phone address;
- placing a first outcall from the call processing system to the first called party, wherein the system inserts the first phone address in a callerID field, and wherein the first phone address is different than the second phone address;
- bridging the first call and the first outcall.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,636,428 B2 - Systems and Methods for Call Screening
- Technology Synopsis: The patent addresses the problem of screening incoming calls when a user's phone line is busy, such as during a dial-up Internet session. The invention forwards the call to a central call management system, which then "streams" the caller's voice message in near-real time over the Internet to the user's computer, allowing the user to listen and decide whether to accept the call (’428 Patent, Abstract; col. 2:19-56).
- Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶35).
- Accused Features: The "Mobility" product licensed by BroadSoft, which provides unified communications services for mobile, fixed-line, and cable service providers (Compl. ¶¶1, 13).
U.S. Patent No. 8,064,588 B2 - Systems and Methods for Call Screening
- Technology Synopsis: This patent, related to the ’428 patent, also describes a system for call screening. An incoming call is forwarded to a call management system that prompts the caller to leave a message. The system simultaneously couples the call audio to a user's device (e.g., a POTS line or VoIP device), allowing the user to screen the message and instruct the system to connect the call if desired (’588 Patent, Abstract).
- Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶41).
- Accused Features: The "Mobility" product licensed by BroadSoft, which provides unified communications services (Compl. ¶¶1, 13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is BroadSoft's Voice over IP (VoIP) application software and services, which was licensed to Telovations, Inc. and Bright House Networks, LLC and allegedly rebranded as the "Mobility" product (Compl. ¶¶1, 11, 19).
Functionality and Market Context
- The complaint describes the accused software as enabling "mobile, fixed-line and cable service providers to offer Unified Communications over their Internet Protocol networks" (Compl. ¶1). It is provided to communications service providers who, in turn, offer hosted voice solutions to business customers (Compl. ¶¶1, 10). The complaint alleges that this software is at the center of infringement claims made by CallWave against BroadSoft's customers (Compl. ¶¶9, 11, 19).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint, being a declaratory judgment action for non-infringement, does not contain detailed infringement allegations or a claim chart mapping product features to claim elements. It makes only conclusory statements of non-infringement (Compl. ¶¶23, 29, 35, 41). The following summary is therefore based on the general description of the accused software and representative Claim 1 of the lead patents.
’591 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storing in computer readable memory ... a first phone address associated with a first subscriber | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:11-14 |
| participating at the call processing system in a first call associated with the first subscriber | The complaint alleges BroadSoft provides VoIP software for Unified Communications, which would involve participating in calls. | ¶1 | col. 2:15-18 |
| placing a first outcall from a call processing system to a first called party | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:19-21 |
| wherein the call processing system inserts at least a portion of the first phone address in a callerID field | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:21-25 |
| causing the first call and the first outcall to be bridged | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:26-27 |
’188 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| storing in computer readable memory ... a first phone address associated with a first subscriber | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:11-14 |
| participating at the call processing system in a first call with the subscriber, wherein the first call is associated with a second phone address | The complaint alleges BroadSoft provides VoIP software for Unified Communications, which would involve participating in calls. | ¶1 | col. 2:18-21 |
| placing a first outcall from the call processing system to the first called party, wherein the call processing system inserts the first phone address in a callerID field | The complaint does not provide sufficient detail for analysis of this element. | ¶19 | col. 2:22-29 |
Identified Points of Contention
- Scope Questions: The patents claim methods performed by a "call processing system." A potential question for the court is whether BroadSoft’s software, as a component licensed to and operated by third-party service providers, constitutes the entire "call processing system" and performs all claimed steps itself, which is required for direct infringement.
- Technical Questions: A key technical question will be whether the accused "Mobility" product performs the specific step of "inserting" a subscriber's phone address into the CallerID field of an outbound call, as required by the claims. The complaint does not provide any factual detail regarding the signaling or call-setup protocols used by the accused software.
V. Key Claim Terms for Construction
The complaint does not provide a basis for identifying specific claim construction disputes. However, based on the technology and the parties' positions, the following terms from the representative independent claims may be central to the case.
The Term: "call processing system"
- Context and Importance: The claims recite a series of steps performed by this system. The definition is critical because BroadSoft provides software to service providers, raising the question of which entity—BroadSoft, the service provider, or the end-user's device—is the "system" performing the claimed method. Practitioners may focus on this term to determine the locus of the alleged infringement and whether any single entity is liable for direct infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specifications describe the system as comprising multiple, interconnected subsystems, such as a Call Management subsystem, a Router subsystem, and a Session Management subsystem, which could support an argument that the "system" is a distributed architecture that does not have to be controlled by a single entity (’428 Patent, FIG. 2; col. 5:29-44).
- Evidence for a Narrower Interpretation: The claims require the "call processing system" to perform a sequence of related actions (e.g., storing, participating, placing, inserting, bridging). This may support an interpretation that a single, integrated entity must perform or control all the recited steps to meet the claim limitation.
The Term: "inserts ... a ... phone address in a callerID field"
- Context and Importance: This term defines a specific technical action at the core of the patented solution. The infringement analysis will depend on whether the accused software's method of presenting caller information constitutes "inserting" an address into a specific "callerID field."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is to have the subscriber's number appear to the recipient, suggesting "inserts" could be construed to cover any technical means of achieving that result (’591 Patent, col. 2:21-25).
- Evidence for a Narrower Interpretation: The specification of a related patent discusses using the SS7 protocol to deliver the "original calling party's number" with an outbound call, which could be argued to limit the scope of "inserts" to the manipulation of specific signaling fields within that or a similar protocol (’428 Patent, col. 3:3-11).
VI. Other Allegations
Indirect Infringement
- BroadSoft seeks a declaration that it has not induced infringement or contributorily infringed any of the patents-in-suit (Compl. ¶¶ 24, 25, 30, 31, 36, 37, 42, 43). The complaint does not, however, detail the specific facts that CallWave would likely allege to support claims of knowledge and intent for indirect infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of system liability: does the BroadSoft software platform, as licensed to third-party service providers, perform every step of any single asserted claim, or is the functionality described in the patents a result of the interaction between BroadSoft's software and its customers' separate network infrastructure? This question will be central to determining whether BroadSoft can be held liable for direct infringement.
- A key evidentiary question will be one of technical implementation: given the absence of detailed factual allegations, the dispute will likely turn on evidence produced in discovery that demonstrates precisely how the accused "Mobility" product manages call setup and signaling. Specifically, does it manipulate CallerID fields in the manner required by the claims, or does it achieve a similar functional outcome through a different, non-infringing technical method?