RecepTrexx LLC v. Nextiva Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: Nextiva, Inc. (Delaware)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 1:24-cv-00143, D. Del., 02/05/2024
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and maintains an established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s products infringe a patent related to systems and methods for playing a pre-recorded message to a caller to delay answering an incoming call on a cellular phone.
• Technical Context: The technology addresses the social and logistical challenges of receiving cellular calls in public or inconvenient settings by providing an automated holding message to the caller.
• Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,975,709. Reissue proceedings can involve changes to claim scope and may give rise to defenses such as intervening rights, which could become a factor in 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"

The Invention Explained

• Problem Addressed: The patent's background section describes the increasing prevalence of cellular phones and the resulting problem of receiving calls in public places like meetings or theaters, where answering is disruptive or impractical. A user may wish to delay answering, but doing so without any response risks the caller disconnecting under the assumption the call failed. (’997 Patent, col. 1:15-34).
• The Patented Solution: The invention provides a system that allows a cellular phone user, upon receiving a call, to trigger the playback of a pre-recorded message to the caller (e.g., "please hold on"). This action connects the call and plays the message, keeping the line open so the user can begin speaking at any time, thereby reassuring the caller while affording the user time to move to a more suitable environment. (’997 Patent, Abstract; col. 2:51-65). The system is described as operable in a "distributed" manner, with the message stored on the phone itself, or in a "centralized" manner, where the message is stored on a network peripheral. (’997 Patent, col. 2:58-65).
• Technical Importance: The technology aimed to provide cellular users with greater flexibility in managing incoming communications, addressing a common usability issue as mobile phones became ubiquitous. (’997 Patent, col. 1:40-42).

Key Claims at a Glance

• The complaint alleges infringement of "Exemplary '997 Patent Claims" identified in an attached exhibit, which was not provided with the complaint filing (Compl. ¶11). Independent Claim 1, directed to a "distributed system," is representative:
  • A system comprising "means to record a message" for a caller.
  • And "means to instruct said message to be played to said caller," where the means to instruct is selected from a group including a "button on said cellular phone," a "keypad entry," or an entry on a "calendar," "clock," or "location device."
  • Wherein the "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 refers to "Exemplary Defendant Products" but does not name specific products or services in the body of the complaint (Compl. ¶11). It states these are identified in Exhibit 2, which was not included with the public filing.
• 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 globally that the accused products "practice the technology claimed by the '997 Patent" and that this is detailed in the unprovided Exhibit 2 (Compl. ¶16).

IV. Analysis of Infringement Allegations

The complaint alleges that infringement is detailed in claim charts provided in Exhibit 2, which is not available for analysis (Compl. ¶16-17). The complaint's narrative asserts that the "Exemplary Defendant Products" satisfy all elements of the asserted claims but provides no specific factual allegations in the main pleading to support this conclusion (Compl. ¶16).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "means to instruct said message to be played" (from Claim 1)

  • Context and Importance: This is a means-plus-function limitation governed by 35 U.S.C. § 112(f). Its scope is not the literal words but is confined to the specific structures disclosed in the patent's specification for performing the "instructing" function, and their equivalents. The infringement analysis will depend on whether the accused products' mechanism for triggering a message is structurally equivalent to what the '997 Patent discloses.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself lists a variety of triggers, 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, and combinations thereof," which may suggest the patentee contemplated a range of triggering structures. (’997 Patent, col. 7:46-51).
    • Evidence for a Narrower Interpretation: The specification’s description of the "distributed" embodiment states that "the user can press a button on the telephone that causes the telephone to accept the incoming call and then play the recorded message." (’997 Patent, col. 2:61-64). A party could argue this ties the corresponding structure to a physical user interface element on the phone itself that initiates this specific sequence.

• The Term: "said caller remains connected" (from Claim 1)

  • Context and Importance: This term distinguishes the invention from conventional voicemail, where a caller is typically handed off to a separate system. The viability of the infringement claim depends on whether the accused system maintains a connection between the caller and the called party's device in the manner required by the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification explains the purpose is to keep the connection "open after playing the message, so that the user can begin speaking with the caller at any time after the message ends." (’997 Patent, col. 2:64-66). This could be argued to cover any technical implementation that allows for a seamless transition to a live conversation.
    • Evidence for a Narrower Interpretation: The description of a centralized embodiment discloses a "three-way bridge, between the voice peripheral, the caller and the user," which is a specific network architecture. (’997 Patent, col. 3:15-18). A party might argue that "remains connected" requires a specific type of continuous, real-time voice channel as exemplified by this bridge, rather than a call-parking or other modern VoIP call-handling feature.

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 accused products in an infringing manner (Compl. ¶14-15). Evidence for this is said to be in the unprovided Exhibit 2.
• Willful Infringement: Willfulness allegations are based on post-suit conduct. The complaint asserts that the filing of the complaint and its attached claim charts provides Defendant with "actual knowledge of infringement," rendering subsequent infringement willful (Compl. ¶13). No facts supporting pre-suit knowledge are alleged.

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

• Evidentiary Sufficiency: A threshold issue is whether the evidence, presumably contained in the unprovided Exhibit 2, is sufficient to map the features of Defendant's modern, likely cloud-based, communication products onto the elements of the patent’s claims, which are rooted in the cellular telephone technology of the early 2000s.
• Claim Construction and Technological Match: The case will likely turn on two related questions. First, a legal question of claim scope: what is the structure corresponding to the "means to instruct" limitation, and is it narrow or broad? Second, a technical question of functional equivalence: does the architecture of Defendant’s system, which likely involves complex software and network protocols, maintain a connection where a "caller remains connected" in a manner equivalent to the telecommunication bridges and direct connections described in the patent, or is there a fundamental mismatch in technology?