DCT

3:15-cv-00742

Patent Asset Licensing LLC v. Bright House Networks LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:15-cv-00742, M.D. Fla., 06/19/2015
  • Venue Allegations: Venue is based on Defendant's alleged substantial business contacts within the Middle District of Florida, including deriving revenue and committing the alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s telephony services, which allow users to configure call-handling features like call forwarding and simultaneous ring via the Internet, infringe three patents related to web-enabled call control.
  • Technical Context: The technology integrates web-based user controls with Public Switched Telephone Network (PSTN) infrastructure to provide advanced, dynamically programmable call-routing features.
  • Key Procedural History: The complaint asserts one claim from each of three patents. Subsequent to the filing of the complaint, inter partes review (IPR) proceedings were initiated against all three patents. These proceedings resulted in the cancellation of the specific claims asserted from U.S. Patent Nos. 8,155,298 and 8,457,113. The claim asserted from U.S. Patent No. 7,764,777 survived its IPR challenge.

Case Timeline

Date Event
2000-05-04 Earliest Priority Date for '777, '298, and '113 Patents
2002-XX-XX Defendant authorized to transact business in Florida
2010-07-27 U.S. Patent No. 7,764,777 Issued
2012-04-10 U.S. Patent No. 8,155,298 Issued
2013-06-04 U.S. Patent No. 8,457,113 Issued
2015-06-19 Complaint Filed
2019-06-24 IPR Certificate Issued for '298 Patent (cancelling asserted claim 20)
2019-10-21 IPR Certificate Issued for '777 Patent (asserted claim 17 not cancelled)
2019-10-22 IPR Certificate Issued for '113 Patent (cancelling asserted claim 1)

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

U.S. Patent No. 7,764,777 - “Branch Calling and Caller ID Based Call Routing Telephone Features,” issued July 27, 2010

The Invention Explained

  • Problem Addressed: The patent describes conventional telephone features (e.g., call forwarding) as being awkward for users to program, limited in functionality, and often requiring direct interaction with the telephone company's business office to provision ('777 Patent, col. 2:3-11). Furthermore, existing solutions could degrade transmission quality or require the use of costly toll numbers ('777 Patent, col. 1:50-61, col. 2:21-28).
  • The Patented Solution: The invention proposes a processing system, described as a "tandem access controller" (TAC), that is connected within the Public Switched Telephone Network (PSTN), rather than at the edge like a customer's PBX ('777 Patent, col. 3:25-34, Fig. 1). This controller intercepts incoming calls and applies rules that a subscriber has programmed remotely via a web interface, enabling advanced features like "branch calling," where an incoming call can be routed to ring multiple different phone numbers simultaneously ('777 Patent, Abstract; col. 3:3-7).
  • Technical Importance: The technology aimed to provide users with dynamic, web-based control over their telephone services, combining the quality of the PSTN with the user-friendly programmability of internet applications ('777 Patent, col. 2:54-59).

Key Claims at a Glance

  • The complaint asserts dependent claim 17, which depends on independent claim 7 (Compl. ¶10).
  • The essential elements of independent claim 7 are:
    • A controller connected within the PSTN, comprising a processing system linked to the internet for selecting calling features.
    • The processing system is configured to perform the steps of:
      • receiving a call intended for a subscriber and implementing a calling feature previously designated by the subscriber via the internet;
      • placing at least two calls simultaneously to at least two different communications devices designated by the subscriber;
      • detecting that one of the calls has been answered; and
      • in response to the detection, abandoning the other calls and establishing a connection.

U.S. Patent No. 8,155,298 - “Tandem Access Controller Within the Public Switched Telephone Network,” issued April 10, 2012

The Invention Explained

  • Problem Addressed: The patent addresses the need for a system that allows a subscriber to remotely control telephone service features without the limitations and awkwardness of past systems, which often required manual provisioning by the telephone company ('298 Patent, col. 2:1-14).
  • The Patented Solution: The invention describes a user interaction system, including a web server coupled to a controller, that enables users to control the routing of communications ('298 Patent, col. 13:58-65). The system provides a website for users to sign up, select features, and thereby predetermine the control criteria for routing their calls across different networks, such as the PSTN and Voice over IP (VoIP) networks ('298 Patent, cl. 20).
  • Technical Importance: The described solution provides a centralized, web-based control plane for managing communications, aiming to give users greater flexibility and control over how their calls are handled across increasingly heterogeneous network environments ('298 Patent, col. 2:47-54).

Key Claims at a Glance

  • The complaint asserts independent claim 20 (Compl. ¶17). However, an inter partes review certificate issued on June 24, 2019, indicates that claim 20 has been cancelled.
  • The essential elements of the now-cancelled independent claim 20 include:
    • A method of providing a user interaction system with a web server and controller with access to at least two communication networks.
    • The method includes the steps of providing a website for users to:
      • view features;
      • sign up to become subscribers;
      • make feature selections, which are processed into control criteria;
      • receiving a communication request at the controller; and
      • executing the control criteria to facilitate routing.

U.S. Patent No. 8,457,113 - “Branch Calling and Caller ID Based Call Routing Telephone Features,” issued June 4, 2013

  • Technology Synopsis: This patent describes a method performed by a web-enabled processing system, coupled with telecommunications networks, to process calls based on features designated by a subscriber via the internet (’113 Patent, Abstract). The system is designed to provide users with flexible, real-time control over call routing across different network types, specifically a packet network and a circuit-switched network (’113 Patent, cl. 1).
  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶24). An inter partes review certificate issued on October 22, 2019, indicates that claim 1 has been cancelled.
  • Accused Features: The complaint alleges infringement by services that "enable completion of a telephone call across a circuit switched network (e.g., the PSTN) and a packet switched network (e.g., a VoIP network)" (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentalities as "telephony products and services" offered by Defendant Bright House Networks (Compl. ¶¶ 10, 17, 24).

Functionality and Market Context

  • The complaint alleges the accused services provide functionality that allows a user to "select calling features via the Internet that cause incoming calls to be routed to additional destinations (e.g., call forwarding, simultaneous ring)" (Compl. ¶10). It further alleges that these services execute such features when "enabled by a user via a website" (Compl. ¶17) and can complete calls across both PSTN and VoIP networks (Compl. ¶24).
  • The complaint does not provide sufficient detail for analysis of the specific architecture or technical implementation of the accused services. No information is provided regarding the products' commercial importance or market positioning.
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The infringement allegations for the ’298 and ’113 Patents target claims that were subsequently cancelled in IPR proceedings. As such, the infringement theories for those patents as pleaded in the complaint are moot. The analysis below focuses on the sole surviving asserted claim from the ’777 Patent.

'777 Patent Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
a controller connected within the public switched telephone network (PSTN) and configured to perform enhanced routing operations, comprising: a processing system connected within the PSTN and linked via the internet for selecting at least one calling feature... The complaint alleges Defendant provides "telephony products and services" but does not specify their network architecture. ¶10 col. 3:21-29
...receiving a call from a calling party, using a communications device, intended for a subscriber, whereby said processing system implements a calling feature previously designated by said subscriber via the internet; The accused services allegedly execute calling features, such as call routing, that a user enables via a website. ¶10, ¶17 col. 4:11-16
...placing at least two calls simultaneously to at least two different communications devices previously designated by the subscriber; The accused services allegedly provide features such as "simultaneous ring," which route an incoming call to additional destinations. ¶10, ¶17 col. 11:21-24
...detecting that the call has been answered at one of the communications devices; and The complaint's allegation of "simultaneous ring" functionality implicitly requires detecting an answer on one line to manage the others, though this step is not explicitly pleaded. ¶10 col. 11:4-6
...in response to the detecting, abandoning other calls to the remaining one or more communications devices and establishing a connection between the calling party's communications device and the answered communications device. The functional outcome of the alleged "simultaneous ring" feature requires abandoning the unanswered calls and connecting the answered one, though these specific steps are not explicitly pleaded. ¶10 col. 11:4-6, 11:25-30
  • Identified Points of Contention:
    • Architectural Questions: A primary question will be whether the architecture of Defendant's service includes a "controller connected within the public switched telephone network," as required by the claim. The patent specification heavily emphasizes this internal "tandem access" architecture and distinguishes it from "edge devices" (’777 Patent, col. 3:25-34, col. 5:1-5). The complaint provides no facts regarding the architecture of the accused services, raising the question of a potential mismatch.
    • Evidentiary Questions: The complaint makes conclusory allegations. A point of contention will be what evidence, if any, demonstrates that the accused services perform the specific sequence of claim 7: placing calls "simultaneously," "detecting" that one has been answered, and then "abandoning" the other calls.

V. Key Claim Terms for Construction

  • The Term: "controller connected within the public switched telephone network (PSTN)" (from claim 7 of the '777 Patent)

    • Context and Importance: This term defines the core architecture of the claimed invention. Its construction will be critical to determining infringement, as it addresses where in the network the inventive functionality must reside. Practitioners may focus on this term because the specification's description of a "tandem access controller" may be used to argue for a narrow scope that modern VoIP-centric systems do not meet.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim itself uses the general term "controller," not the more specific "tandem access controller" (TAC) used throughout the specification.
      • Evidence for a Narrower Interpretation: The specification repeatedly describes the invention as a TAC connected "internally to the PSTN in a local service area" and explicitly contrasts this with "edge devices" like a PBX or services that rely on the toll network, suggesting the location "within" the PSTN is a key aspect of the invention ('777 Patent, col. 3:25-34; col. 5:1-5).

  • The Term: "placing at least two calls simultaneously" (from claim 7 of the '777 Patent)

    • Context and Importance: This term is central to the "branch calling" feature. The dispute will likely center on the meaning of "simultaneously."
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue the term does not require perfect, instantaneous synchronization but rather a functional simultaneity from the user's perspective.
      • Evidence for a Narrower Interpretation: The patent contrasts the invention with prior art systems that "must call each forwarding number sequentially" and notes the resulting "unrealistically long delay" ('777 Patent, col. 11:15-21). This contrast suggests "simultaneously" is intended to mean a non-sequential process to overcome this specific prior art problem.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead specific facts to support either induced or contributory infringement. It does not allege that Defendant instructed users to infringe or provided a component with no substantial non-infringing use.
  • Willful Infringement: The complaint does not allege facts to support a claim of willful infringement, such as pre-suit knowledge of the patents or egregious conduct. The requests for enhanced damages and attorney fees appear only in the prayer for relief (Compl. ¶¶ Prayer d, e).

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

  1. Case Viability: The most immediate issue is the legal status of the claims asserted from the ’298 and ’113 patents, which were cancelled in IPR proceedings after the complaint was filed. A central question is whether the causes of action based on these patents can proceed, or if Plaintiff will be required to drop them, fundamentally narrowing the case to the single asserted claim of the ’777 patent.

  2. Architectural Scope: For the remaining ’777 patent, a dispositive issue will be one of definitional scope: can the claim term "controller connected within the public switched telephone network," which is described in the specification as a "tandem access controller," be construed to read on the likely architecture of a modern internet-based telephony provider? Or is there a fundamental mismatch between the claimed 2000-era architecture and the accused system?

  3. Evidentiary Sufficiency: Given the complaint’s conclusory allegations, a key evidentiary question will be one of functional proof: can the Plaintiff produce technical evidence to demonstrate that the accused services perform the specific, multi-step process of branch calling as required by claim 7, including the simultaneous placement of calls, the detection of an answer, and the subsequent abandonment of unanswered calls?