Coretek Licensing LLC v. Wyzant Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: Wyzant, Inc. (Delaware)
  • Plaintiff’s Counsel: Chong Law Firm PA; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:22-cv-00537, 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 thus resides in the district.
• Core Dispute: Plaintiff alleges that Defendant’s online tutoring platform, which uses internet-based communication, infringes four patents related to methods for enabling a wireless device to establish a network connection without using a conventional mobile network operator's home location register (HLR).
• Technical Context: The patents address "over-the-top" (OTT) communication technologies, such as Voice over IP (VoIP), that bypass traditional cellular network infrastructure for routing calls and data, thereby avoiding operator control and tariffs.
• Key Procedural History: No significant procedural history is mentioned in the complaint.

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 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 can lead to high costs, particularly when roaming abroad. (’512 Patent, col. 1:26-50).
• The Patented Solution: The invention proposes a system where a downloadable software module on a wireless device bypasses the HLR. Instead of relying on the mobile operator's infrastructure for routing, the module sends a "call request" (e.g., via SMS or an internet protocol like HTTP) to an independent server. This server then decides on the most appropriate, often least-cost, routing for the connection over any available network. (’512 Patent, Abstract; col. 2:51-61).
• Technical Importance: This architecture provided a technical pathway for "over-the-top" (OTT) services to decouple communication routing from the incumbent mobile network operator's control, enabling new service models and greater competition. (’512 Patent, col. 1:51-61).

Key Claims at a Glance

• The complaint asserts independent claims 1 (method), 23 (system), and 24 (server). Claim 1 is representative and includes the following essential elements:
  • A method of enabling a wireless device to initiate a network connection without using a network operator's home location register (HLR).
  • (a) The wireless device uses a downloadable software module to contact a server over a wireless link.
  • (b) The wireless device uses the module to send data to the server defining a "call request."
  • (c) In response, a software application on the server decides the appropriate routing to a third-party end-user over available networks, all without using the network operator's HLR. (Compl. ¶15).
• The complaint also asserts dependent claims 4, 5, 8, and 12. (Compl. ¶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: The '154 Patent addresses the same technical problem as its parent '512 Patent: the restrictions and costs imposed by mobile network operators' control over call routing via the HLR. (’154 Patent, col. 2:20-49).
• The Patented Solution: The solution is functionally identical to that of the '512 Patent, involving a downloadable module on a device that contacts an independent server to route communications without using the HLR. The primary distinction is that the claims are directed more specifically to a "wireless handheld cellular phone device" rather than a general "wireless device." (’154 Patent, Abstract; col. 2:54-65).
• Technical Importance: The technical contribution is the same as that of the '512 Patent, focused on enabling HLR-independent OTT communication services. (’154 Patent, col. 1:53-61).

Key Claims at a Glance

• The complaint asserts independent claims 1 (method), 22 (system), 23 (server), and 24 (computer program product). Claim 1 is representative and includes the following essential elements:
  • A method of enabling a "wireless handheld cellular phone device" to initiate a network connection without using an HLR.
  • (a) The device uses a downloadable software module to contact a server.
  • (b) The device sends a "call request" to the server.
  • (c) A server-side application decides on routing to a third party without using the HLR. (Compl. ¶30).
• The complaint also asserts dependent claims 3, 4, 7, and 11. (Compl. ¶41).

Multi-Patent Capsule: U.S. Patent No. 9,369,575 - “DYNAMIC VOIP LOCATION SYSTEM”

Issued June 14, 2016.

• Technology Synopsis: This patent describes a system for dynamically determining and tracking the network location (i.e., the "VoIP address or return path") of a VoIP-enabled wireless device. A software module on the device periodically authenticates with a server, reporting its current network address. The server stores and updates this address in a database, enabling other applications to reliably contact the device even as its network connection changes. (’575 Patent, Abstract).
• Asserted Claims: Claim 1 (system) is asserted. (Compl. ¶48).
• Accused Features: The complaint alleges that the "Wyzant App" is a system that infringes by determining, collecting, and storing the IP addresses of user devices in Wyzant's databases to facilitate VoIP calling between users. (Compl. ¶¶133, 136).

Multi-Patent Capsule: 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 claims a "computer program product embodied on a non-transitory storage medium" which, when executed, performs the same core method described in the '512 and '154 patents. It covers the software itself that enables a wireless device to initiate a network connection by contacting a server to handle call routing, thereby bypassing the mobile operator's HLR. (’551 Patent, Abstract).
• Asserted Claims: Independent claims 1 (computer program product), 22 (method), 23 (system), and 24 (server) are asserted. (Compl. ¶70).
• Accused Features: The complaint alleges that the Wyzant software, as a computer program product embodied on a device's memory (e.g., a smartphone's memory), performs the steps of contacting a Wyzant server and sending a call request that is then routed by the server without using an HLR. (Compl. ¶¶143, 146).

III. The Accused Instrumentality

Product Identification

• The complaint names the "Wyzant – Find a Tutor" communications software and the "Wyzant App" as the accused products and instrumentalities (collectively, the "Accused Product"). (Compl. ¶¶71, 99, 131, 141).

Functionality and Market Context

• The Accused Product is an online platform that connects tutors with students. The complaint alleges that the platform's communication features rely on internet-based or IP networks for calling (e.g., SIP/VoIP) between users on their devices, such as smartphones. (Compl. ¶73, ¶101). The core of the infringement allegation is that by using IP-based calling, the Accused Product inherently bypasses the traditional mobile network operator's Home Location Register (HLR) for call setup and routing, as this component is not required for such communications. (Compl. ¶73, ¶101).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint. Although the complaint references claim chart exhibits (e.g., Exhibit E), they are not attached. The following analysis is based on the narrative infringement allegations provided in the body of the complaint.

'512 Patent Infringement Allegations

Identified Points of Contention:

• Scope Question: A central question is whether a standard VoIP system that is inherently independent of an HLR infringes a claim for a method that actively functions "without using" an HLR. The dispute may focus on whether the claim requires a specific act of bypassing the HLR, versus simply using a technology (VoIP) to which the HLR is irrelevant.
• Technical Question: What evidence supports the allegation that Wyzant's server is "deciding on the appropriate routing" in the manner claimed by the patent, as opposed to performing standard functions of a SIP/VoIP proxy server? The patent describes a server that can consider multiple networks and routing options, and it is a question for the court whether the accused system performs this function.

'154 Patent Infringement Allegations

Identified Points of Contention:

• Scope Question: The term "wireless handheld cellular phone device" is narrower than the "wireless device" of the '512 Patent. A point of contention will be whether the Accused Product's operation on devices other than smartphones (e.g., tablets, desktop computers) takes it outside the scope of these claims.
• Technical Question: As with the '512 Patent, a key technical question is whether the complaint provides sufficient evidence that the Wyzant server performs the specific "deciding" function required by the claim, beyond the standard operation of a VoIP server.

V. Key Claim Terms for Construction

For the '512 Patent and related patents:

• The Term: "without using a network operator's home or visitor location register"
• Context and Importance: This negative limitation is the central feature of the invention, distinguishing it from conventional cellular communication. The entire infringement case rests on whether the accused VoIP system, which is architecturally separate from the HLR, satisfies this element. Practitioners may focus on this term because its construction will determine whether simply using an HLR-agnostic technology like VoIP constitutes infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests that using protocols like SMS or HTTP to communicate with the server is an alternative to the HLR, supporting a broad reading that covers any non-HLR-based routing mechanism. (’512 Patent, col. 2:56-61).
  • Evidence for a Narrower Interpretation: The background section focuses heavily on freeing users from the restrictions of their subscribed network operator. A defendant could argue the term implies a system that actively circumvents the HLR of a subscribed cellular network, not a system that operates in a parallel technological ecosystem like VoIP. (’512 Patent, col. 1:40-50).

For the '154 Patent:

• The Term: "wireless handheld cellular phone device"
• Context and Importance: This term narrows the scope of the '154 Patent relative to the '512 Patent. Its construction is critical because the Accused Product is software that may be used on a variety of devices (smartphones, tablets, PCs). Infringement of the '154 Patent's claims may depend on proving use specifically on devices that meet this definition.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff may argue that a modern smartphone, which is wireless, handheld, and has cellular capabilities, plainly falls within this term's ordinary meaning. The term is recited directly in the claim without further definition. (’154 Patent, claim 1).
  • Evidence for a Narrower Interpretation: The patent specification, in its figures and description, separately depicts and labels "wireless device" (WD) and "wireless handheld device" (HS). A defendant might argue this distinction is meaningful and that "wireless handheld cellular phone device" should be construed narrowly to mean devices whose primary purpose is cellular telephony, not general-purpose computing devices like modern smartphones. (’154 Patent, Fig. 1).

VI. Other Allegations

Indirect Infringement

• The complaint makes conclusory allegations of induced infringement, stating Defendant encouraged acts that constituted infringement. (Compl. ¶¶93, 125). However, it does not plead specific facts to support the requisite knowledge and intent, such as identifying specific instructions, user manuals, or advertisements that direct users to perform the claimed steps.

Willful Infringement

• Willfulness is not explicitly pleaded as a separate count, but the complaint alleges that the Defendant had knowledge of the patents-in-suit "at least as of the service of the present Complaint." (Compl. ¶¶91, 123, 171). This allegation, if proven, could only support a claim for post-filing willful infringement, as no facts supporting pre-suit knowledge are alleged.

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

This dispute appears to center on the application of patents drafted in the context of emerging 2000s-era mobile technology to a modern, mainstream internet service. The resolution will likely depend on the court's answers to the following questions:

• A core issue will be one of definitional scope: Can the key limitation, "without using a network operator's home location register," be construed to read on a standard over-the-top VoIP system that is merely agnostic to the HLR, or does it require a more specific act of bypassing or circumventing a cellular operator's control system as described in the patent?
• A second key issue involves claim differentiation and evidence: Will the '154 Patent's narrower term "wireless handheld cellular phone device" meaningfully limit the scope of infringement compared to the '512 Patent's "wireless device," and what evidence will show that the accused software operates on devices meeting this more specific definition?
• Finally, a central evidentiary question for the '575 patent will be one of functional equivalence: Does the accused platform's standard use of a device's IP address for routing VoIP calls perform the specific functions of dynamically extracting, reporting, and storing a "VoIP address or return path" at defined intervals as required by the claims, or is there a fundamental mismatch in technical operation?