RecepTrexx LLC v. 8x8 Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: 8x8, Inc. (Delaware)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 1:24-cv-00120, D. Del., 01/31/2024
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in Delaware, has an established place of business in the District, has committed acts of infringement in the District, and Plaintiff has suffered harm there.
• Core Dispute: Plaintiff alleges that Defendant’s communications products infringe a patent related to the triggered playback of recorded messages during incoming cellular telephone calls.
• Technical Context: The technology concerns managing incoming telephone calls in situations where immediate answering is inconvenient, by playing a message to the caller while keeping the call active for the recipient to join later.
• Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,975,709. Reissue patents can involve changes to the claims or specification to correct errors, which may become a factor in claim construction or validity analyses.

Case Timeline

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

U.S. Reissue Patent No. RE42,997 - Triggered playback of recorded messages to incoming telephone calls to a cellular phone

Issued December 6, 2011

The Invention Explained

• Problem Addressed: The patent addresses the social and practical problems that arise when receiving cellular phone calls in public places like meetings or theaters, where answering immediately may be disruptive or compromise privacy (RE42,997 Patent, col. 1:15-32). A user who delays answering risks the caller hanging up, assuming the call attempt failed (RE42,997 Patent, col. 1:30-34).
• The Patented Solution: The invention provides a system for a cellular phone user to respond to an incoming call not by speaking, but by triggering the playback of a pre-recorded message to the caller (e.g., "hold on for a moment"). Crucially, after the message plays, the connection to the caller is maintained, allowing the user to begin speaking at any subsequent time (RE42,997 Patent, Abstract; col. 2:61-65). This can be implemented in a "distributed" manner where the message is stored on the phone itself, or in a "centralized" manner where it is stored on a network peripheral (RE42,997 Patent, col. 2:58-61; Fig. 1).
• Technical Importance: The technology offered cellular users a method to manage call interruptions without rejecting the call or sending it to voicemail, providing a "middle ground" that acknowledges the call and asks the caller to wait.

Key Claims at a Glance

• The complaint does not specify which claims it asserts, referring only to the "Exemplary '997 Patent Claims" (Compl. ¶ 11). Independent claim 1 is representative of the "distributed system" embodiment.
• Independent Claim 1:
  • A distributed system to delay answering a call made to a cellular phone, comprising:
  • means to record a message to be provided to a caller making calls to said cellular phone; and
  • means to instruct said message to be played to said caller, said means to instruct being selected from the group consisting of a button on said cellular phone, a keypad entry to said cellular phone, an entry on a calendar, an entry on a clock, an entry into a location device, and combinations thereof;
  • wherein said caller is connected, said message is played, and, after said message is played, said caller remains connected.

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products by name (Compl. ¶ 11). It refers generally to "Exemplary Defendant Products" that are purportedly detailed in an Exhibit 2, which was not filed with the complaint (Compl. ¶ 11, 16).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market context. It alleges in general terms that the unspecified products "practice the technology claimed by the '997 Patent" (Compl. ¶ 16).

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are contained within an "Exhibit 2" which was not attached to the publicly filed complaint (Compl. ¶¶ 16-17). As such, a detailed claim chart summary cannot be constructed. The narrative theory of infringement is that Defendant's unidentified "Exemplary Defendant Products" satisfy all elements of the asserted claims (Compl. ¶ 16). No probative visual evidence provided in complaint.

Identified Points of Contention

• System vs. Method: The complaint alleges direct infringement by Defendant for "making, using, offering to sell, selling and/or importing" the accused products (Compl. ¶ 11). For system claims like Claim 1, infringement occurs when a complete system is made, used, or sold. A key question will be whether Defendant provides a system containing all claimed elements, or if infringement only occurs when an end-user configures or operates the product in a particular way.
• Technical Questions: A central question will be what specific feature in the accused products corresponds to the "means to instruct said message to be played" (RE42,997 Patent, col. 6:52). Given the means-plus-function language of the claim, the analysis will be limited to the structures disclosed in the specification (e.g., a physical button, a keypad entry) and their equivalents. Another question is how the accused products achieve the function that the "caller remains connected" after the message is played, and whether this aligns with the patent's description of keeping a line open for the user to begin speaking at any time (RE42,997 Patent, col. 4:36-39).

V. Key Claim Terms for Construction

"means to instruct said message to be played... selected from the group consisting of a button on said cellular phone, a keypad entry to said cellular phone, an entry on a calendar, an entry on a clock, an entry into a location device, and combinations thereof" (from Claim 1)

• Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is not limitless but is confined to the specific structures recited in the claim itself and their equivalents. The infringement analysis will depend entirely on whether the accused products contain one of these specific structures or a legally equivalent structure for performing the function of instructing the message to be played.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that "equivalents" should encompass modern user interface elements, such as on-screen soft buttons or automated rules in a software application, that perform the same function of triggering a message. The patent's mention of programmatic triggers like calendar entries may support an interpretation that extends beyond simple hardware buttons (RE42,997 Patent, col. 3:51-60).
  • Evidence for a Narrower Interpretation: A party could argue for a narrow interpretation, contending that the enumerated list ("button," "keypad entry," etc.) is exhaustive and defines the scope of the invention. The prosecution history of the reissue patent, if it contains arguments distinguishing prior art, could further limit the scope of equivalents.

"said caller remains connected" (from Claim 1)

• Context and Importance: The definition of "remains connected" is critical to determining infringement. It differentiates the invention from standard voicemail, where the initial connection is typically terminated and the caller is transferred to a separate recording system. Practitioners may focus on this term to dispute whether modern call handling techniques, such as temporarily parking a call or using certain VoIP protocols, meet this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the connection as one where "the user can begin speaking with the caller at any time after the message ends, or in an alternative, the user can interrupt the message" (RE42,997 Patent, col. 2:65-col. 3:1). This functional description could support an interpretation that any technical implementation enabling the user to seamlessly join the call meets the "remains connected" limitation.
  • Evidence for a Narrower Interpretation: The patent frequently discusses the connection in the context of a "three-way bridge" between the caller, the user, and a voice peripheral (RE42,997 Patent, col. 3:15-19). This may support an argument that "remains connected" requires a specific network topology, such as a continuous, bridged call, rather than other forms of call handling.

VI. Other Allegations

• Indirect Infringement: Plaintiff alleges induced infringement, stating that Defendant distributes "product literature and website materials" that instruct end users on how to use the products in a manner that infringes the ’997 Patent (Compl. ¶ 14).
• Willful Infringement: The complaint bases its willfulness allegation on Defendant’s knowledge of the patent gained from the service of the complaint itself (Compl. ¶¶ 13-14). This frames the allegation as one of post-suit willfulness.

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

1. Evidentiary Sufficiency: The primary immediate question is one of factual pleading: given that the complaint's core infringement allegations are contained in an un-filed exhibit, does the complaint as it stands provide Defendant with sufficient notice of the specific products and functionalities at issue?
2. Claim Scope and Equivalence: A central technical issue will be one of structural equivalence: can the "means to instruct" limitation, which is defined by specific structures from the early 2000s (e.g., "keypad entry," "location device"), be proven to read on the user interfaces and software logic of Defendant’s modern communication products under the doctrine of equivalents?
3. The Nature of Connection: A key legal and technical question will be one of definitional scope: does the requirement that a caller "remains connected" after a message is played encompass the methods used by modern VoIP and cloud-based communication platforms to handle, hold, or park calls, or is it limited to the specific "three-way bridge" call topology described in the patent's embodiments?