Coretek Licensing LLC v. Alianza Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: Alianza, Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm PA; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:22-cv-00536, D. Del., 04/27/2022
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the district for purposes of patent venue.
• Core Dispute: Plaintiff alleges that Defendant’s "CounterPath – Bria Mobile" communications software and associated systems infringe four patents related to methods for enabling wireless devices to make network connections without using a network operator's Home Location Register (HLR) and for dynamically determining a device's VoIP location.
• Technical Context: The technology concerns Voice over IP (VoIP) and over-the-top (OTT) communications, where mobile devices use IP-based networks (such as Wi-Fi) to place calls, thereby bypassing the routing and billing infrastructure of traditional cellular network operators.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) 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 technical and economic problem where wireless device users are restricted by their home network operator, which controls call routing and tariffs through a central database called a Home Location Register (HLR). This limits user choice and maintains high costs, particularly when roaming. (’512 Patent, col. 1:36-54).
  • The Patented Solution: The invention proposes a method to bypass the HLR. A wireless device uses a downloadable software "module" to send a call request, via protocols like SMS or HTTP, to a separate server. This server, rather than the operator's HLR, then decides the best way to route the call over any available network, effectively breaking the operator's control over call setup. (’512 Patent, Abstract; col. 2:51-61).
  • Technical Importance: This architecture provided a framework for "virtual mobile network operators" (VMNOs) to offer competitive services by selecting the lowest-cost call routes, circumventing the infrastructure and pricing control of incumbent network operators. (’512 Patent, col. 8:35-43).
• Key Claims at a Glance:
  • The complaint asserts independent claims 1, 23, and 24 (Compl. ¶24).
  • Independent claim 1 recites the core method, which includes the following essential elements:
    • A method of enabling a wireless device to initiate a network connection without using a network operator's HLR.
    • The wireless device uses a downloadable software module to contact a server over a wireless link.
    • The module is used to send data defining a "call request" to the server.
    • In response, a software application on the server decides on the appropriate routing for the call to a third-party end-user over available networks, without using the operator's HLR or visitor location register (VLR).
  • The complaint reserves the right to assert all claims, including dependent claims (Compl. ¶¶ 16-19, 24).

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 application leading to the ’512 Patent, this patent addresses the same problem: the restrictions imposed on users by a cellular operator's HLR-centric network architecture. (’154 Patent, col. 1:49-60).
  • The Patented Solution: The invention provides a nearly identical solution focused specifically on a "wireless handheld cellular phone device." A downloadable software module on the phone communicates with an independent server to manage call routing, thereby bypassing the HLR. (’154 Patent, Abstract; col. 2:55-65).
  • Technical Importance: Like its parent, this technology facilitates competition and user choice in mobile communications by enabling services that are not tethered to a single operator's network infrastructure. (’154 Patent, col. 2:45-54).
• Key Claims at a Glance:
  • The complaint asserts independent claims 1, 22, 23, and 24 (Compl. ¶41).
  • Independent claim 1 recites a method with elements nearly identical to claim 1 of the ’512 Patent, but specifically applied to a "wireless handheld cellular phone device."
    • A method for a "wireless handheld cellular phone device" to initiate a connection without using an HLR.
    • The device uses a downloadable software module.
    • The module sends a call request to a server.
    • The server decides on routing without using the HLR/VLR.
  • The complaint reserves the right to assert dependent claims (Compl. ¶¶ 31-34, 41).

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

• Patent Identification: U.S. Patent No. 9,369,575, issued June 14, 2016 (Compl. ¶42).
• Technology Synopsis: This patent addresses the difficulty of reliably determining a wireless device's current network address (or "VoIP location") for communication, a problem compounded by device mobility and the need to conserve battery power. The patented solution is a system where a device uses a software module to periodically report its network return path to a central server, which maintains an updated database of these locations for use by other applications. (’575 Patent, Abstract; col. 2:30-43).
• Asserted Claims: Independent claim 1 is asserted (Compl. ¶48).
• Accused Features: The "CounterPath Bria Mobile" system is accused of infringing by determining and collecting the IP address (VoIP location) of a user's device, storing it in a database, and using that dynamically updated location to establish communications (Compl. ¶¶ 133-137).

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, issued March 7, 2017 (Compl. ¶49).
• Technology Synopsis: This patent, from the same family as the ’512 and ’154 patents, claims the HLR-bypass invention as a "computer program product." It describes software on a non-transitory medium that, when executed, configures a wireless device to contact a server, send a call request, and rely on that server for routing, all independent of the network operator's HLR. (’551 Patent, Abstract; col. 2:51-61).
• Asserted Claims: Independent claims 1, 22, 23, and 24 are asserted (Compl. ¶70).
• Accused Features: The "Bria Mobile" software is accused of being the infringing computer program product, as it is embodied on a non-transitory medium (e.g., a smartphone's memory) and, when executed, performs the claimed steps of communicating with a server to initiate and route calls over an IP network (Compl. ¶¶ 143-146).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is Defendant's "CounterPath – Bria Mobile" communications software, which the complaint also refers to as the "Accused Product" or "Accused Instrumentality" (Compl. ¶¶ 71, 99, 131, 141). The system is described as comprising a client-side application (the "Bria Mobile application") and a server-side component (the "Bria Mobile Server") (Compl. ¶74).
• Functionality and Market Context: The Bria Mobile application is a softphone that allows users to make and receive calls over IP networks, such as Wi-Fi (Compl. ¶73). The complaint alleges that the application, installed on a smartphone, functions as the claimed "module" that contacts a "Bria Mobile Server" to initiate a call (e.g., via a SIP/VoIP Invite) (Compl. ¶¶ 74-75). This server then allegedly routes the call to the intended recipient, thereby bypassing the traditional cellular operator's Home Location Register (HLR) (Compl. ¶76). The complaint does not provide specific details on the product's market positioning but identifies it as a "communications software" solution (Compl. ¶71). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

8,861,512 Infringement Allegations

9,173,154 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The core of the dispute may turn on whether the accused functionality, which resembles standard Session Initiation Protocol (SIP) operation, falls within the scope of the claims. A question for the court will be whether the term "deciding on the appropriate routing" requires a complex, multi-network, least-cost routing analysis as described in the patents' specifications, or if it can read on the function of a standard SIP proxy server that routes a call based on an IP address.
  • Technical Questions: The complaint's theory of infringement rests on the assertion that the accused system operates "without using the network operator's home or visitor location register" (Compl. ¶¶ 73, 76). A central factual question will be what evidence demonstrates this negative limitation. The complaint alleges this is true because "Wi-Fi or internet based calling does not require home location register (HLR)" (Compl. ¶¶ 73, 101), a conclusory statement that will require technical proof.

V. Key Claim Terms for Construction

• The Term: "deciding on the appropriate routing" (from claim 1 of the ’512 and ’154 patents)

  • Context and Importance: This term defines the central function of the server. Its construction is critical because if interpreted broadly, it could cover the standard operation of many VoIP servers; if interpreted narrowly, it may not cover the accused system. Practitioners may focus on this term because the defendant will likely argue its product performs standard SIP routing, while the plaintiff may argue this standard functionality meets the claim limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is open-ended. The abstract simply states the server "decides on the appropriate routing over all available networks," which could encompass any routing determination. (’512 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of "lowest cost routing" and choosing the "cheapest option for each call set-up route" (’512 Patent, col. 4:41-42; col. 1:50-54). This could support an argument that "appropriate routing" is limited to an intelligent, cost-based selection among multiple network types, not merely forwarding a SIP request.

• The Term: "without using the network operator's home or visitor location register" (from claim 1 of the ’512 and ’154 patents)

  • Context and Importance: This negative limitation is the primary point of novelty asserted over traditional cellular systems. The entire infringement case for these patents depends on proving the accused system operates independently of the HLR for the claimed function.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (i.e., making it easier to prove operation is "without using"): Plaintiff may argue that as long as the specific call routing decision is made by the accused server based on its own data (e.g., SIP addresses) and not data from an HLR, the limitation is met, even if the device maintains a background connection to the cellular network for other purposes. The patent distinguishes its server from a "conventional HLR." (’512 Patent, col. 2:57-58).
    • Evidence for a Narrower Interpretation (i.e., making it harder to prove operation is "without using"): The patent's background emphasizes giving the user "freedom" from the network operator. (’512 Patent, col. 1:50-54). A defendant could argue that if the device remains registered with the HLR for any purpose (e.g., to receive traditional cellular calls or maintain a data connection), the system is not operating entirely "without using" it, and thus does not infringe.

VI. Other Allegations

• Indirect Infringement: The complaint includes boilerplate allegations of induced infringement for all four patents, stating that Defendant encouraged infringement knowing its actions would result in direct infringement by others (e.g., end-users) (Compl. ¶¶ 93, 125, 173). The complaint does not, however, plead specific facts to support inducement, such as references to user manuals or advertising that instruct users on how to perform the infringing acts.
• Willful Infringement: The complaint does not explicitly allege "willful infringement." It does allege that Defendant has had knowledge of its infringement "at least as of the service of the present Complaint" (Compl. ¶¶ 91, 123, 171). This allegation serves as a basis for seeking enhanced damages for any infringement that occurs post-filing, rather than asserting pre-suit willfulness.

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

• A core issue will be one of definitional scope: Can the claim term "deciding on the appropriate routing," which is described in the patent specifications in the context of intelligent, least-cost routing across various network types, be construed to cover the standard call-forwarding functions of a SIP/VoIP proxy server as allegedly performed by the accused system?
• A second key question will be evidentiary: How will the parties prove or disprove the negative limitation that the accused system operates "without using the network operator's home...location register"? The case may turn on technical evidence demonstrating the precise interaction, or lack thereof, between the accused Bria Mobile system and the underlying cellular network infrastructure during a call.
• A third question relates to the scope of the patent family: Do the functionally similar claims across the ’512, ’154, and ’551 patents, which cover a method, a system, and a computer program product, respectively, rise and fall together, or are there material distinctions in their scope that could lead to different infringement outcomes for the different claim types?