RecepTrexx LLC v. IntermediaNET Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: Intermedia.net, Inc. (Delaware)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 1:24-cv-00140, D. Del., 02/02/2024
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is incorporated in Delaware, has an established place of business in the District, and has allegedly committed acts of patent infringement in the District.
• Core Dispute: Plaintiff alleges that Defendant’s telecommunication products and services infringe a patent related to the triggered playback of recorded messages to callers on a cellular device.
• Technical Context: The technology addresses methods for managing incoming telephone calls on mobile devices, particularly in situations where immediately answering is inconvenient, by allowing the user to play a message to the caller while keeping the call active.
• 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, which may introduce prosecution history estoppel or other claim scope limitations relevant to the litigation.

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 identifies the problem of receiving cellular phone calls in public places (e.g., meetings, theaters) where answering immediately would be disruptive or compromise privacy, but letting the call go unanswered might cause the caller to disconnect under the assumption the call failed. (’997 Patent, col. 1:15-39).
• The Patented Solution: The invention provides a system allowing 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"). The system is designed to keep the communication line open after the message plays, so the user can begin speaking with the caller at any time. (’997 Patent, Abstract; col. 2:50-67). This functionality can be implemented in a "distributed" manner, where the message is stored on the phone itself, or in a "centralized" manner, where the message is stored on a network peripheral. (’997 Patent, col. 3:1-5).
• Technical Importance: The invention proposed a method to enhance call management flexibility for mobile users, offering an intermediate option between answering a call and sending it directly to voicemail. (’997 Patent, col. 2:26-30).

Key Claims at a Glance

• The complaint does not identify specific claims but references "Exemplary '997 Patent Claims" in an unprovided exhibit (Compl. ¶11, 16). Independent claim 13 is representative of an apparatus claim directed to the mobile device itself.
• Independent Claim 13, essential elements:
  • A mobile communication device configured to receive a call from a caller communication device through a switch device;
  • The mobile communication device is configured to send a signal to the switch device to trigger playing a message to the caller in response to a user action (such as selecting a user interface, or based on a calendar, clock, or location);
  • The mobile communication device is configured to maintain connection to the caller communication device after the message is played.

III. The Accused Instrumentality

Product Identification

• The complaint does not name specific accused products in its text, instead referring to "Exemplary Defendant Products" that are identified in an unprovided "Exhibit 2." (Compl. ¶11, 16).

Functionality and Market Context

• The complaint broadly alleges that Defendant makes, uses, sells, and imports products that "practice the technology claimed by the '997 Patent." (Compl. ¶16). Without specific product identification, the accused functionality is understood to be telecommunication systems and services provided by Intermedia.net, Inc. which allegedly allow users to manage incoming calls in a manner that infringes the patent.

IV. Analysis of Infringement Allegations

The complaint alleges direct and induced infringement based on claim charts included in an unprovided exhibit. (Compl. ¶15, 16, 17). The following table summarizes the likely infringement theory for a representative claim, based on the complaint's narrative allegations.

RE42,997 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether Defendant's modern, cloud-based VoIP and unified communications architecture qualifies as a "switch device" as that term is used in the patent, which was filed in 2007 and depicts traditional "Telephone Switch" architecture. (’997 Patent, Fig. 1).
  • Technical Questions: What evidence will show that the accused products "maintain connection" as required by the claim? The analysis may turn on whether the accused system keeps the original call leg to the user's device active or merely forwards the call to a separate system (like voicemail) that plays a message and terminates the original call attempt, which may not meet the claim limitation.
  • No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "switch device"

• Context and Importance: This term appears in independent claim 13 and is fundamental to the architecture of the claimed system. Practitioners may focus on this term because its construction will determine whether the patent can read on modern, software-defined, cloud-based telecommunication platforms, or if it is limited to the more traditional hardware-centric telephone switches depicted in the patent’s figures.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes embodiments including a "Telephone Soft Switch," which suggests the inventor contemplated software-based switching, potentially broadening the term beyond legacy hardware. (’997 Patent, Fig. 3).
  • Evidence for a Narrower Interpretation: The patent repeatedly illustrates the invention using diagrams of a conventional "Telephone Switch" as a distinct network component, which could support an argument that the term refers to a centralized, physical network switch as understood at the time of the invention. (’997 Patent, Fig. 1, 2, 4, 5).

• The Term: "maintain connection ... after playing the message"

• Context and Importance: This limitation in claim 13 distinguishes the invention from conventional voicemail, which typically plays a message and then ends the interaction (or records a new message). Infringement hinges on whether the accused system keeps the caller in a state where the recipient can seamlessly join the call after the automated message is finished.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that the connection is kept open "so that the user can begin speaking with the caller at any time after the message ends," suggesting the core feature is the potential for the user to join, not a specific technical state. (’997 Patent, col. 2:64-67).
  • Evidence for a Narrower Interpretation: The patent describes a "three-way bridge, between the voice peripheral, the caller and the user," which implies a specific network configuration where all three parties are actively bridged in a single session. An accused system that uses a different method, such as a call-back or transfer, might be argued to fall outside this narrower scope. (’997 Patent, col. 3:15-18).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, asserting that Defendant distributes "product literature and website materials" that instruct end users on how to use the accused products in an infringing manner. (Compl. ¶14).
• Willful Infringement: The complaint makes a claim for post-suit willfulness, alleging that the filing and service of the complaint constitutes "actual knowledge" of infringement, and that any continued infringement is therefore willful. (Compl. ¶13, ¶14).

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

• A primary issue will be one of technological translation: can the term "switch device", which is described in the context of early 2000s telecommunications infrastructure, be construed to encompass the distributed, software-based, cloud-native architecture of Defendant’s modern unified communications services? The outcome of this claim construction dispute may be dispositive.
• A key evidentiary question will concern functional operation: does the accused system "maintain connection" in the manner claimed by the patent, allowing a user to seamlessly join the call after a message is played? Or does it perform a function more akin to an enhanced voicemail or call-forwarding system, which may not meet the specific limitations of the asserted claims?
• A third question relates to pleading sufficiency: the complaint does not name any specific accused products, instead incorporating them by reference to an unprovided exhibit. The court may need to address whether these allegations provide sufficient notice to the Defendant under current pleading standards.