Coretek Licensing LLC v. Highfive Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: Highfive Technologies, Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm PA; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:20-cv-01015, D. Del., 07/28/2020
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, establishing residence under TC Heartland, and allegedly maintains a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s video conferencing software and applications infringe four patents related to methods for enabling wireless devices to initiate network connections by bypassing a traditional network operator's Home Location Register (HLR) and for dynamically determining a device's VoIP location.
• Technical Context: The technology relates to over-the-top (OTT) communication services, which allow users to make calls and send messages over internet protocol (IP) networks, bypassing the infrastructure and associated toll charges of traditional cellular network operators.
• Key Procedural History: The complaint does not allege any significant 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," Issued October 14, 2014

The Invention Explained

• Problem Addressed: The patent describes a market where wireless users are restricted by their "home" cellular network operator, which controls call routing and tariffs through a central database called a Home Location Register (HLR) (’512 Patent, col. 1:40-49, col. 2:40-44). This control limits user choice and prevents them from accessing cheaper call-routing options available on other networks (’512 Patent, col. 1:53-59).
• The Patented Solution: The invention proposes a system where a software "module" is downloaded to a wireless device (’512 Patent, col. 3:8-12). Instead of relying on the cellular operator's HLR, this module contacts an independent server over a wireless link (e.g., SMS or HTTP over the internet) with a call request. This server, which maintains its own location database, then determines the most appropriate (e.g., lowest cost) routing for the call across any available network, effectively bypassing the traditional HLR's control (’512 Patent, Abstract; col. 2:51-61).
• Technical Importance: This architecture enables "over-the-top" services that are independent of any single cellular operator, giving users the freedom to select cheaper communication routes and creating competition for legacy network providers (’512 Patent, col. 1:60-65).

Key Claims at a Glance

• The complaint asserts independent claims 1, 23, and 24 (Compl. ¶21).
• Independent Claim 1 (Method):
  • A method for a wireless device to initiate a network connection without using a network operator's HLR.
  • The device uses a downloadable software module to contact a server over a wireless link.
  • The device uses the module to send data defining a call request to the server.
  • In response, a software application on the server decides the appropriate routing to a third party over available networks, without using the network operator's HLR.
• Independent Claim 23 (System): A system comprising a wireless device and a server that performs the method of Claim 1, where the server includes a "calls manager" software application.
• Independent Claim 24 (Server): A server configured to work with a wireless device to perform the method of Claim 1, where the server includes a "calls manager" software application.
• The complaint also asserts dependent claim 12 (Compl. ¶16).

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: Similar to the ’512 Patent, this patent addresses the limitations imposed by a cellular operator's HLR, which restricts users to specific tariffs and networks, thereby limiting their ability to choose more cost-effective communication options (’154 Patent, col. 1:47-56).
• The Patented Solution: The invention is a method and system, specifically for a "wireless handheld cellular phone device," that uses a downloadable software module to communicate with a server (’154 Patent, col. 3:15-17). This server, not the cellular operator's HLR, receives a call request and determines the optimal routing over any available network, thereby circumventing the operator's control (’154 Patent, Abstract; col. 2:55-62). The patent emphasizes that the server can use various protocols, such as SMS or HTTP, for communication, unlike a conventional HLR which is limited to specific cellular protocols like MAP (’154 Patent, col. 2:60-64).
• Technical Importance: This technology provided a framework for applications on cellular phones to offer calling services independent of the underlying carrier, a foundational concept for many modern VoIP and messaging apps.

Key Claims at a Glance

• The complaint asserts independent claims 1, 22, 23, and 24 (Compl. ¶35).
• Independent Claim 1 (Method):
  • A method for a "wireless handheld cellular phone device" to initiate a network connection without using a network operator's HLR.
  • The device uses a downloadable software module to contact a server over a wireless link.
  • The device uses the module to send data defining a call request to the server.
  • A software application on the server decides routing to a third party without using the operator's HLR.
• Independent Claim 22 (System): A system comprising a "wireless handheld cellular phone device" and a server performing the method of Claim 1.
• Independent Claim 23 (Server): A server configured to work with a "wireless handheld cellular phone device" to perform the method of Claim 1.
• Independent Claim 24 (Computer Program Product): A non-transitory storage medium with instructions for a "wireless handheld cellular phone device" to perform the method of Claim 1.
• The complaint also asserts dependent claim 11 (Compl. ¶28).

Multi-Patent Capsule

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

  • Technology Synopsis: The patent describes a system to dynamically determine and track the "VoIP location" (i.e., the current IP address or return path) of a registered wireless device (’575 Patent, Abstract). A software module on the device authenticates with a central server at certain time intervals or upon detecting a network change, reporting its current address to a database. This allows other applications to reliably contact the device via VoIP even as its network connection and IP address change (’575 Patent, col. 4:45-54).
  • Asserted Claims: Independent Claim 1 (Compl. ¶42).
  • Accused Features: The complaint alleges that the "Highfive Video Conferencing App" is a downloadable software module that registers a user's device (e.g., smartphone) with a Highfive server. This system allegedly extracts, stores, and updates the device's IP address in a database to enable VoIP calling functionality between users (Compl. ¶101-105).

• 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: This patent, related to the '512 and '154 patents, claims a computer program product on a non-transitory medium for enabling a wireless device to bypass a network operator's HLR (’551 Patent, Abstract). The program product, when executed, configures the device to contact a server with a call request and relies on the server to decide the routing to a third party, all without using the operator's HLR or visitor location register (’551 Patent, col. 18:1-12).
  • Asserted Claims: Independent Claims 1, 22, 23, and 24 (Compl. ¶62).
  • Accused Features: The complaint alleges that the "Highfive Video Conferencing" software is a computer program product that, when executed on a device like a smartphone, enables it to initiate a network connection (e.g., a SIP Invite) using an IP network, thereby bypassing any cellular operator's HLR (Compl. ¶111). The Highfive application allegedly contacts a Highfive server, which then manages call routing (Compl. ¶112-114).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is Defendant’s "Highfive Video Conferencing" communications software, which includes a smartphone application (the "Accused Product" or "Accused Instrumentality") (Compl. ¶63, ¶99).
• Functionality and Market Context:
  • The complaint alleges the Accused Product is a software solution that enables users to conduct video conferences and make calls over IP networks, such as the internet via Wi-Fi or a cellular data link (Compl. ¶65, ¶81).
  • Functionally, a user device (e.g., a smartphone) with the "Highfive Video Conferencing application" installed allegedly contacts a "Highfive Server" to initiate a communication session (e.g., via a SIP Invite signal) (Compl. ¶66-67).
  • This Highfive Server is alleged to contain software (a "calls manager" or SIP proxy) that processes the call request and determines the appropriate routing to connect the caller to a third-party end-user, such as another Highfive user (Compl. ¶68, ¶73).
  • The complaint alleges this architecture bypasses the need for a traditional cellular network operator's home location register (HLR) because it operates over an IP network (Compl. ¶65, ¶81).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'512 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Question: The central dispute may turn on the definition of "network operator's home location register." Defendant may argue this term is limited to the specific HLR database used in legacy GSM/cellular networks (as described in ’512 Patent, col. 2:3-26), and that its IP-based user authentication server is not an "HLR." Plaintiff may argue for a broader definition encompassing any centralized server database that stores subscriber information and manages call routing.
  • Technical Question: What evidence demonstrates that the Highfive Server's routing decision is made "over all available networks"? The claim requires the server to decide on routing over a plurality of networks, which raises the question of whether the Highfive system, as a closed ecosystem, considers networks beyond its own for routing calls to other High-five users.

'154 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Question: As with the ’512 patent, the interpretation of "network operator's home location register" will be critical. The ’154 patent further specifies the client device as a "wireless handheld cellular phone device." This raises a potential dispute over whether infringement occurs when the Highfive service is used on non-cellular devices like desktops or tablets, or whether the claim is limited to devices with cellular capabilities.
  • Technical Question: The complaint provides a conclusory mapping, stating the Highfive Server decides on routing. A key factual question will be what level of routing intelligence resides on the server versus what is inherent in standard IP protocols (like SIP) that the server merely facilitates.

V. Key Claim Terms for Construction

• The Term: "network operator's home location register" (from '512 Patent, Claim 1; '154 Patent, Claim 1)

  • Context and Importance: This negative limitation is the core of the asserted inventions in the '512, '154, and '551 patents. The entire infringement theory rests on the allegation that the accused system operates without using one. Practitioners may focus on this term because its construction will determine whether the defendant's server-based user database and authentication system is functionally equivalent to an HLR, or if it is the very alternative the patents describe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification defines an HLR as "a database that contains mobile subscriber information for all subscribers to an operator" (’512 Patent, col. 2:3-5). Plaintiff could argue this broad, functional definition covers any centralized database of user information used to enable communication services.
    • Evidence for a Narrower Interpretation: The background section provides a detailed description of an HLR in the context of traditional cellular architecture, involving an International Mobile Subscriber Identity (IMSI), SS7 messaging, and a Visitor Location Register (VLR) (’512 Patent, col. 2:11-39). Defendant could argue the term should be limited to this specific embodiment, which its IP-based system does not use.

• The Term: "deciding on the appropriate routing" (from '512 Patent, Claim 1; '154 Patent, Claim 1)

  • Context and Importance: This term defines the key function of the claimed server. The infringement analysis will require determining whether the Highfive Server performs an active "deciding" function or merely facilitates standard IP-based routing. Practitioners may focus on this term because if the server's role is passive, it may not meet the claim limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the server's decision can be based on finding the "lowest cost routing for the connection" (’512 Patent, col. 3:41-42). This implies an active, discretionary choice among multiple options, which could be argued to cover any server logic that selects a path for a call.
    • Evidence for a Narrower Interpretation: The claims require the server to decide on routing "to a third party end-user over all available networks" (’512 Patent, Claim 1). This could be construed to require an active analysis of multiple, distinct third-party networks (e.g., different carriers), a function which a self-contained VoIP service that only connects its own users may not perform.

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 complaint does not specify the particular "encouraging acts," such as providing user manuals or marketing materials that instruct users on how to operate the accused software in an infringing manner.
• Willful Infringement: The complaint alleges Defendant "has had knowledge of infringement... at least as of the service of the present Complaint" (Compl. ¶137). This allegation supports a claim for post-suit willfulness only and does not allege that Defendant had knowledge of the patents-in-suit prior to the lawsuit being filed.

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

1. A core issue will be one of definitional scope: Can the term "network operator's home location register," which is rooted in the specification's description of legacy cellular network architecture (e.g., SS7, IMSI), be construed to read on the IP-based server and user database architecture of a modern "over-the-top" video conferencing service?
2. A second key issue will be one of technical and factual mapping: Does the accused Highfive Server perform the active step of "deciding on the appropriate routing," as required by the claims, or does it merely facilitate standard, pre-determined IP network protocols (like SIP) where the "routing" is inherent in the protocol itself, not an independent decision made by the server?
3. A third question pertains to the '575 patent and inventive concept: Does the accused system's method of tracking a device's IP address for VoIP connectivity practice the specific system claimed in the '575 patent, or is this functionality a generic and indispensable feature of any modern, mobile VoIP service that does not map to the specific combination of claim elements?