Coretek Licensing LLC v. Mitel Networks Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: Mitel Networks, Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm PA; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:20-cv-00873, D. Del., 06/28/2020
• Venue Allegations: Venue is alleged to be proper in the District of Delaware based on Defendant’s incorporation in the state, which establishes residency under TC Heartland, and its alleged regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s unified communications software infringes four patents related to enabling network connections without using a network operator's home location register and to dynamic VoIP location systems.
• Technical Context: The technology concerns methods for bypassing traditional cellular network authentication systems to enable more flexible and potentially lower-cost "over-the-top" voice and data communication, a key architecture for modern VoIP services.
• Key Procedural History: The complaint does not allege any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,861,512 - METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER

• Patent Identification: U.S. Patent No. 8,861,512, "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER," issued October 14, 2014.

The Invention Explained

• Problem Addressed: The patent describes a telecommunications environment where users of wireless devices are restricted by their home network operator, which controls call routing and pricing through a central database called a Home Location Register (HLR) (’512 Patent, col. 1:43-53). This system limits user choice and can lead to high costs, particularly when roaming, as operators have little economic incentive to provide users with cheaper routing options (’512 Patent, col. 1:53-61).
• The Patented Solution: The invention proposes a method where a software module on the wireless device bypasses the operator's HLR. Instead of the HLR managing the connection, the device sends a "call request" directly to an independent server, which then determines the most appropriate (e.g., lowest cost) routing for the call over any available network (’512 Patent, Abstract; col. 2:51-57). This communication can occur over various protocols, such as SMS or HTTP, providing flexibility beyond the standard cellular infrastructure (’512 Patent, col. 2:57-62).
• Technical Importance: This architecture provided a technical framework for "over-the-top" (OTT) communication services that operate independently of traditional carrier control, enabling greater competition and service innovation.

Key Claims at a Glance

• The complaint asserts independent claims 1 (method), 23 (system), and 24 (server) (Compl. ¶21).
• The essential elements of independent method claim 1 include:
  • a wireless device using a downloadable software module to contact a server over a wireless link;
  • the wireless device using the module to send data to the server that defines a call request; and
  • in response, a software application on the server deciding the appropriate routing to a third-party end-user "without using the network operator's home or visitor location register."
• The complaint notes that dependent claim 12 is also asserted (Compl. ¶21).

U.S. Patent No. 9,173,154 - METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER

• Patent Identification: U.S. Patent No. 9,173,154, "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER," issued October 27, 2015.

The Invention Explained

• Problem Addressed: As a continuation of the same family as the ’512 Patent, this patent addresses the identical problem of operator-controlled, HLR-dependent call routing that restricts user choice and cost-saving opportunities (’154 Patent, col. 1:44-54).
• The Patented Solution: The solution is functionally identical to that of the ’512 Patent, describing a downloadable module on a "wireless handheld cellular phone device" that communicates with an independent server to manage call routing, thereby bypassing the carrier's HLR (’154 Patent, Abstract; col. 2:55-65). The server, not the network operator, decides the routing over available networks (’154 Patent, col. 2:55-59).
• Technical Importance: This technology is significant for enabling the development of carrier-independent VoIP and other OTT communication applications on mobile devices.

Key Claims at a Glance

• The complaint asserts independent claims 1 (method), 22 (system), 23 (server), and 24 (computer program product) (Compl. ¶35).
• The essential elements of independent method claim 1 are substantively identical to claim 1 of the ’512 patent, but specify the device as a "wireless handheld cellular phone device." The steps include:
  • the wireless handheld cellular phone device using a downloadable software module to contact a server;
  • the device using the module to send a call request to the server; and
  • the server deciding on call routing "without using the network operator's home or visitor location register."
• The complaint notes that dependent claim 11 is also asserted (Compl. ¶35).

U.S. Patent No. 9,369,575 - DYNAMIC VOIP LOCATION SYSTEM

• Patent Identification: U.S. Patent No. 9,369,575, "DYNAMIC VOIP LOCATION SYSTEM," issued June 14, 2016.

Technology Synopsis

The patent addresses the challenge of reliably determining a device's network location (its "VoIP address or return path") for VoIP communications, especially as the device moves between different networks (e.g., from a cellular network to a Wi-Fi hotspot) (’575 Patent, col. 1:22-30; col. 2:31-44). The invention is a system where a software module on the device dynamically extracts and reports this location information to a central server, which maintains a database of current device locations to ensure calls can be routed correctly (’575 Patent, Abstract).

Asserted Claims

Independent claim 1 (system) is asserted (Compl. ¶42).

Accused Features

The complaint alleges that the Mitel MiCollab application, in conjunction with the MiCollab Cloud server, creates an infringing system by determining and collecting a smartphone's IP address and reporting it to a server database to enable continuous voice calling functionality as the user moves between networks (Compl. ¶99, ¶101, ¶104).

U.S. Patent No. 9,591,551 - METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER

• Patent Identification: U.S. Patent No. 9,591,551, "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER," issued March 7, 2017.

Technology Synopsis

Belonging to the same family as the ’512 and ’154 patents, this patent claims a computer program product stored on a non-transitory medium. When executed, this program configures a wireless device to initiate calls by contacting an independent server to handle routing, thus bypassing the network operator's HLR (’551 Patent, Abstract; Compl. ¶46, ¶48).

Asserted Claims

Independent claims 1 (computer program product), 22 (method), 23 (system), and 24 (server) are asserted, along with several dependent claims (Compl. ¶62).

Accused Features

The Mitel MiCollab Mobile Client software is accused of being the computer program product that, when executed on a smartphone, enables calls over an IP network via a server, thereby bypassing the cellular operator's HLR (Compl. ¶109, ¶111).

III. The Accused Instrumentality

• Product Identification: The "Mitel MiCollab Mobile Client" or "Mitel MiCollab Application," which is described as communications software (the "Accused Product") (Compl. ¶63, ¶79).
• Functionality and Market Context: The complaint alleges the Accused Product is a software application for smartphones that operates in conjunction with a "MiCollab Server" (Compl. ¶66, ¶70). Its relevant functionality includes enabling voice calls over IP networks (e.g., Wi-Fi or cellular data) using protocols such as SIP Invite (Compl. ¶65, ¶69). The complaint asserts that this architecture allows the Accused Product to initiate network connections without using the cellular network operator's Home Location Register (HLR) for call routing (Compl. ¶65, ¶81). The system is also alleged to track a device's changing IP address to provide "seamless and smooth voice calling functionality" as the user moves between different networks (Compl. ¶107). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’512 Patent Infringement Allegations

’154 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The central negative limitation in the ’512, ’154, and ’551 patents is "without using a network operator's home location register." A primary point of contention will be factual: does the accused system operate completely independently of the HLR for call routing, or does it rely on HLR-based authentication or services at some stage of establishing the underlying data connection over which the VoIP call is placed?
• Technical Questions: For the ’575 patent, a key question will be whether the accused system's alleged function of providing "seamless and smooth voice calling" (Compl. ¶107) by tracking a device's IP address meets the claim 1 requirement of "extracting and reporting dynamically the 'VoIP address or return path'... from each incoming data communication" (Compl. ¶104). The analysis may turn on whether the accused system uses a periodic polling mechanism versus the dynamically triggered reporting described in the patent.

V. Key Claim Terms for Construction

The Term: "without using a network operator's home location register" (e.g., ’512 Patent, Claim 1)

• Context and Importance: This negative limitation is the core of the asserted invention in three of the four patents and distinguishes it from conventional cellular operations. The entire infringement case for these patents hinges on whether the accused system avoids the HLR in the manner contemplated by the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue this term means only that the decision on call routing is made without the HLR. The patent's background criticizes operators for controlling the "gateway into the mobile communications system" via the HLR, suggesting the invention's focus is on wresting away that specific control point, not necessarily avoiding all interaction with the carrier's network (’512 Patent, col. 2:40-49).
  • Evidence for a Narrower Interpretation: A party could argue the term requires complete independence from the HLR for any aspect of the call session. The patent emphasizes giving users the "freedom to choose the cheapest network," which could imply a system that is not beholden to the home carrier for any part of the service, including initial network authentication (’512 Patent, col. 1:56-61).

The Term: "module" (e.g., ’512 Patent, Claim 1)

• Context and Importance: The complaint identifies the "Mitel MiCollab Mobile Client application" as the claimed "module" (Compl. ¶66). Practitioners may focus on this term because its construction will determine whether a standard software application is sufficient to meet the claim, or if more specialized hardware or firmware interaction is required.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims and specification state the module is "implemented as software and that is downloadable to the device," which directly supports reading the term on a software application (’512 Patent, col. 3:9-12; Claim 1).
  • Evidence for a Narrower Interpretation: The specification also describes embodiments where the module "may itself form part of the single SIM" and enables a device to operate as if it had multiple IMSIs (’512 Patent, col. 3:25-31). A defendant could argue these more specific functionalities are required characteristics of the claimed "module," potentially narrowing its scope to something more than a simple application.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant induced infringement by "encouraging infringement, knowing that the acts Defendant induced constituted patent infringement, and its encouraging acts actually resulted in direct patent infringement" (Compl. ¶139). The factual basis for this is Defendant's commercialization of the Accused Product, which allegedly enables and encourages end-users to perform the infringing methods.

Willful Infringement

The complaint alleges Defendant "has had knowledge" of the patents-in-suit "at least as of the service of the present Complaint" (Compl. ¶137). This forms the basis for a claim of post-filing willfulness and a request for enhanced damages under 35 U.S.C. §285 (Compl. p. 36).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of factual operation: does the Mitel MiCollab system function entirely "without using a network operator's home location register" for the purpose of call routing, as the claims require? The outcome may depend on detailed evidence of the system's architecture and its interaction with the underlying cellular network's authentication and data services.
• A second core issue will be one of claim construction: can the term "module," as used in the patents, be broadly construed to cover a downloadable software application, as the complaint alleges, or does intrinsic evidence limit its meaning to a more specialized component with functions related to SIM management, as described in certain patent embodiments?
• A key evidentiary question for the ’575 patent will be one of technical mechanism: does the accused system's method of maintaining call connectivity by tracking a device's IP address meet the specific claim requirement of "extracting and reporting dynamically the 'VoIP address or return path' from each incoming data communication," or does it use a different method, such as periodic polling, that may fall outside the claim's scope?