DCT

1:24-cv-01212

RecepTrexx LLC v. Avoxi Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01212, N.D. Ga., 03/20/2024
  • Venue Allegations: Venue is asserted based on Defendant having an established place of business in the Northern District of Georgia and allegedly committing acts of infringement within 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 incoming cellular phone calls.
  • Technical Context: The technology provides a method for a cellular phone user to play a pre-recorded message to an incoming caller, such as "please hold," while keeping the call active, as an alternative to immediately answering or sending the call to voicemail.
  • Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,975,709. The status as a reissued patent may introduce questions regarding claim scope and potential intervening rights defenses for the defendant. The complaint does not mention other litigation or administrative proceedings involving the patent.

Case Timeline

Date Event
2003-07-08 Original Patent Priority Date
2005-12-13 Original U.S. Patent 6,975,709 Issued
2007-12-13 Reissue Application Filed
2011-12-06 Reissue Patent RE42,997 Issued
2024-03-20 Complaint Filed

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 social and practical problem of receiving cellular phone calls in public places like meetings or theaters, where answering immediately is disruptive or a user desires more privacy before speaking. Allowing a call to ring unanswered risks the caller hanging up under the impression that the call attempt failed. (’997 Patent, col. 1:13-34).
  • The Patented Solution: The invention provides a system allowing a user to respond to an incoming call by triggering a pre-recorded message to the caller (e.g., "hold on") without terminating the call connection. This can be implemented in a "distributed" manner, where the message is stored on the phone itself, or a "centralized" manner, where the message is stored on a network voice peripheral. (’997 Patent, Abstract; col. 2:51-68). After the message plays, the connection is maintained, allowing the user to begin speaking at any time. (’997 Patent, col. 2:65-68).
  • Technical Importance: The technology aimed to give cellular users a flexible "third option" for call handling, distinct from either answering immediately or diverting the call to a passive system like voicemail. (’997 Patent, col. 2:25-30).

Key Claims at a Glance

  • The complaint does not specify which claims are asserted, referring generally to the "Exemplary '997 Patent Claims" in an unprovided exhibit (Compl. ¶11). Independent claim 1 is representative of the "distributed system" embodiment.
  • Independent Claim 1 includes these essential elements:
    • A distributed system to delay answering a call made to a cellular phone.
    • "means to record a message" to be provided to a caller.
    • "means to instruct said message to be played to said caller," where the instruction means is selected from a group including a button, a keypad entry, a calendar entry, a clock entry, or a location device entry.
    • A condition wherein the caller is connected, the 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 or services by name. It refers generally to "Exemplary Defendant Products" that are identified in an external exhibit not attached to the pleading. (Compl. ¶11, ¶16).

Functionality and Market Context

  • The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality. It makes only conclusory allegations that Defendant's products "practice the technology claimed by the '997 Patent." (Compl. ¶16). No allegations are made regarding the products' specific market position.

IV. Analysis of Infringement Allegations

The complaint alleges infringement but does not contain a claim chart or a narrative description of how the accused products meet the limitations of the patent claims. It instead incorporates by reference "the claim charts of Exhibit 2," which was not provided with the complaint. (Compl. ¶17). As such, a detailed infringement analysis based on the complaint's allegations is not possible.

No probative visual evidence provided in complaint.

  • Identified Points of Contention: Based on the language of the '997 Patent, several points of contention are likely to arise.
    • Scope Questions: A primary dispute may center on the construction of the "means-plus-function" limitations in Claim 1, such as "means to instruct." The scope of these terms is limited to the corresponding structures disclosed in the patent's specification and their equivalents. The analysis will question whether the software and hardware components of the accused products constitute equivalent structures to those described in the patent.
    • Technical Questions: A key technical question will be whether the accused products meet the limitation that the "caller remains connected" after the message is played. This raises the question of whether the accused system maintains a live, bridged call channel allowing the user to interrupt and speak at any time, as described in the patent, or if it uses a different call-handling architecture that might not meet this limitation.

V. Key Claim Terms for Construction

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

    • Context and Importance: This is a means-plus-function term governed by 35 U.S.C. § 112(f). Its construction is critical as it defines the triggering mechanism for the invention. Practitioners may focus on this term because the infringement analysis will depend entirely on identifying the corresponding structure in the specification and proving that the accused product has an identical or equivalent structure.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that the specification's list of triggers ("a button on the telephone," "phone keys," "electronic calendar entries") is merely exemplary of any user interface or software logic that initiates the message playback. (’997 Patent, col. 3:35-40, col. 3:51-61).
      • Evidence for a Narrower Interpretation: A party could argue the corresponding structure is limited to the specific embodiments disclosed, such as a physical button press initiating a command or a specific software module that interacts with a phone's calendar API, and nothing more. (’997 Patent, col. 3:28-32).

  • The Term: "remains connected" (Claim 1)

    • Context and Importance: This term is vital for distinguishing the claimed invention from a conventional voicemail system, where a call is typically transferred and the direct connection to the user's device is severed. The definition will determine whether modern IP-based call handling or forwarding features fall within the claim's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent states the user "can begin speaking with the caller at any time after the message ends," which could be argued to support any connection state that preserves this capability, regardless of the underlying network architecture. (’997 Patent, col. 2:65-67).
      • Evidence for a Narrower Interpretation: The specification describes a specific "three-way bridge, between the voice peripheral, the caller and the user," which implies a particular, active call structure. (’997 Patent, col. 3:15-18). An opposing party may argue that "remains connected" requires this specific type of bridged connection.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement based on Defendant distributing "product literature and website materials" that instruct end users on how to use the products in an infringing manner. (Compl. ¶14). Knowledge and intent are alleged to exist at least from the date of service of the complaint. (Compl. ¶15).
  • Willful Infringement: The complaint alleges that service of the complaint itself provides "Actual Knowledge of Infringement" and that Defendant's continued infringement thereafter is done despite this knowledge. (Compl. ¶13-14). While the word "willful" is not used, this allegation provides a basis for seeking enhanced damages for post-filing infringement under 35 U.S.C. § 284, which is requested in the prayer for relief. (Compl. ¶D, p. 6).

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

  • A core issue will be one of claim construction under § 112(f): will the court construe the "means-plus-function" terms narrowly to cover only the specific hardware and software implementations from the 2003-era specification, or more broadly to encompass modern equivalents found in Defendant's current technology?
  • A second central issue will be one of technical operation: can Plaintiff demonstrate that the accused systems, once identified, create a call state where a caller "remains connected" in the specific manner required by the claims, as opposed to being transferred to a separate voicemail or automated response platform?
  • Finally, the patent’s status as a reissue patent raises a potential question of intervening rights: if the asserted claims were substantively broadened during reissue, and if Defendant's accused activities began before the 2011 reissue date, Defendant may be able to assert a defense limiting its liability for damages.