RecepTrexx LLC v. Ooma Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: Ooma, Inc. (Delaware)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 1:24-cv-00142, D. Del., 02/05/2024
• Venue Allegations: Venue is asserted based on Defendant being a Delaware corporation that has an established place of business and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s telecommunications products and services infringe a patent related to the triggered playback of pre-recorded messages during incoming telephone calls.
• Technical Context: The technology concerns features for managing incoming calls on communication devices, allowing a user to play a message to a caller before answering, which is relevant in the VoIP and mobile communications markets.
• Key Procedural History: The patent-in-suit is a reissue patent, which indicates it underwent a second examination at the U.S. Patent and Trademark Office after its original issuance to correct a perceived error, a process that can affect the scope and enforceability of its claims.

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"

• Patent Identification: 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 problem of receiving cellular phone calls in public places like meetings or theaters where answering immediately is disruptive, but letting the call fail may cause the caller to disconnect (RE42997 Patent, col. 1:15-34). The user is often forced to either disturb others or rush to a private location while the phone is ringing (RE42997 Patent, col. 1:35-40).
• The Patented Solution: The invention provides a system that, upon receiving a call, allows the user to trigger the playback of a pre-recorded message (e.g., "hold on") to the caller. Crucially, the system keeps the telephone connection open after the message plays, allowing the user to begin speaking with the caller at any time (RE42997 Patent, col. 2:51-67). This functionality can be implemented in a "distributed" manner, with the message stored on the user's device, or in a "centralized" manner, where the message is stored on a network peripheral (RE42997 Patent, col. 3:1-5).
• Technical Importance: The invention provided a method for call management that offered more flexibility than the binary choice of either answering a call immediately or sending it to voicemail.

Key Claims at a Glance

• The complaint does not specify which claims are asserted, referring only to "Exemplary '997 Patent Claims" (Compl. ¶11). Independent claim 2 is representative of the centralized system embodiment.
• Independent Claim 2 requires:
  • A "centralized system" to delay answering a call to a cellular phone.
  • "means to record a message" for a caller.
  • "means to instruct said message to be played to said caller," where the instruction is selected from a group including a button, keypad entry, calendar entry, location device, webpage interface, etc.
  • The system must ensure the "caller is connected," the "message is played," and "after said message is played, said caller remains connected."
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products or services by name. It refers generally to "Exemplary Defendant Products" (Compl. ¶11) and "numerous other devices that infringe" (Compl. ¶11).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality. It alleges infringement through Defendant's acts of "making, using, offering to sell, selling and/or importing" the unidentified products (Compl. ¶11). All specific infringement allegations are incorporated by reference from an external document, Exhibit 2, which was not filed with the complaint (Compl. ¶¶ 16-17).

IV. Analysis of Infringement Allegations

The complaint’s infringement allegations are conclusory and rely entirely on claim charts in an unprovided "Exhibit 2" (Compl. ¶¶ 16-17). Without this exhibit, a detailed analysis of the plaintiff's infringement theory is not possible based on the complaint's text. The complaint alleges that the "Exemplary Defendant Products practice the technology claimed by the '997 Patent" and "satisfy all elements of the Exemplary '997 Patent Claims" (Compl. ¶16).

No probative visual evidence provided in complaint.

Identified Points of Contention

• Factual Questions: A primary question will be whether the plaintiff can produce evidence that the unspecified Ooma products or services perform the functions required by the asserted claims. Specifically, after a message is played to a caller, does the Ooma system "maintain[...] the connection" such that the called party can begin speaking at any time, as required by the claims (e.g., ’997 Patent, col. 8:14-16), or does it simply route the call to a standard voicemail system?
• Scope Questions: The dispute may turn on the scope of claim terms such as "cellular phone" and "mobile communication device" (’997 Patent, col. 7:1-2, col. 8:20-21) and whether they can be read to cover the accused Ooma products, which may include VoIP desk phones, mobile applications, or backend network infrastructure.

V. Key Claim Terms for Construction

• The Term: "means to instruct said message to be played to said caller" (from independent claims 1 and 2).
• Context and Importance: This term 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 disclosed in the patent's specification that perform the "instructing" function, and their equivalents. The infringement analysis will depend entirely on whether the accused Ooma products use these same structures or their legal equivalents to trigger a message playback. Practitioners may focus on this term because its construction will define the core of the infringing technology.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent lists a wide variety of structures corresponding to the "means to instruct," including "a button on said cellular phone, a keypad entry..., an entry on a calendar, an entry on a clock, an entry into a location device, a telephone order, an electronic message, a webpage interface, interaction with a service representative, and combinations thereof" (’997 Patent, col. 7:56-65). A party might argue this extensive list suggests the inventor envisioned a broad range of user and automated inputs.
  • Evidence for a Narrower Interpretation: A party could argue that the scope is strictly limited to the specific embodiments described. For example, the detailed description explains how a software program running on the phone or on a network "service control point" uses inputs like calendar entries or location data to automatically trigger the message (’997 Patent, col. 3:51-67; col. 4:1-11). The interpretation might be narrowed to these specific software-driven implementations rather than any conceivable method of instruction.

VI. Other Allegations

• Indirect Infringement: The complaint 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 willfulness allegation is based on post-suit conduct. The complaint asserts that the filing and service of the complaint itself provides Defendant with "Actual Knowledge of Infringement," and that any continued infringement thereafter is willful (Compl. ¶¶ 13-14).

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

1. Evidentiary Sufficiency: A threshold issue is whether the plaintiff's infringement contentions, which are absent from the complaint and contained in an unprovided exhibit, can survive a motion to dismiss. The case will depend on the plaintiff providing specific facts linking features of identified Ooma products to the limitations of the asserted patent claims.
2. Claim Construction of "Means to Instruct": The central technical and legal battle will likely be over the construction of the "means to instruct" limitation. The outcome will hinge on whether Ooma’s products utilize the specific structures disclosed in the patent's specification for triggering a message playback, or their equivalents.
3. Functional Mismatch: A key factual question will be one of functional operation: do the accused Ooma systems perform the claimed function of keeping a caller "connected" and available for a live conversation after a message plays, or do they functionally operate as a conventional call-forwarding or voicemail system, which would create a fundamental mismatch with the patent's core inventive concept?