DCT
1:02-cv-00256
Glenayre Elec Inc v. Jackson
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Glenayre Electronics, Inc. (Colorado)
- Defendant: Phillip Jackson (Illinois)
- Plaintiff’s Counsel: Christensen O'Connor Johnson Kindness PLLC
- Case Identification: 1:02-cv-00256, N.D. Ill., 01/10/2002
- Venue Allegations: Venue is alleged to be proper based on the defendant being an individual residing in the Northern District of Illinois.
- Core Dispute: Plaintiff seeks a declaratory judgment that its products, which include telephone and voicemail remote control services, do not infringe any of the 116 claims of Defendant's patent related to tone-operated remote control systems.
- Technical Context: The technology involves using dual-tone multi-frequency (DTMF) signals, like those from a Touch-Tone telephone, to remotely control devices and functions over a standard phone line.
- Key Procedural History: The complaint was filed in response to a December 19, 2001 cease-and-desist letter from the Defendant patent owner, which followed litigation that the Defendant had instituted against several of the Plaintiff's customers. The patent-in-suit underwent two separate ex parte reexaminations, resulting in the amendment of numerous original claims and the addition of 99 new claims.
Case Timeline
| Date | Event |
|---|---|
| 1983-06-23 | '900 Patent Priority Date |
| 1986-06-24 | '900 Patent Original Issue Date |
| 1995-10-10 | '900 Patent First Reexamination Certificate Issued |
| 1997-08-26 | '900 Patent Second Reexamination Certificate Issued |
| 2001-12-19 | Defendant's counsel sends infringement allegation letter |
| 2002-01-10 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 4,596,900 - "Phone-line-linked, tone-operated control device"
- Patent Identification: U.S. Patent No. 4,596,900, "Phone-line-linked, tone-operated control device," issued June 24, 1986.
The Invention Explained
- Problem Addressed: The patent describes the field of home automation and remote control, noting that existing solutions like home computers were expensive and required specialized skill to install and operate, making them inaccessible to the average consumer (’900 Patent, col. 1:19-28). The patent also identifies a need to prevent unauthorized access to such remote control systems (’900 Patent, col. 1:49-52).
- The Patented Solution: The invention is an apparatus that connects to a conventional telephone line to detect predetermined sequences of DTMF (Touch-Tone) tones. Upon detecting a correct sequence, it generates a control signal to operate an external device, such as a home appliance (’900 Patent, Abstract). The system is designed to be operated by any standard Touch-Tone telephone without special transmitting equipment and preferably includes a "break-in prevention" feature requiring an access code before commands are accepted (’900 Patent, col. 2:4-18).
- Technical Importance: The described technology aimed to provide a simple, inexpensive, and universally accessible method for remote control, leveraging the ubiquitous telephone network and standard telephone handsets (’900 Patent, col. 1:29-48).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement as to all 116 claims of the reexamined patent (Compl. ¶ 12). The complaint specifically identifies and denies infringement of independent claims 1, 3, 5, 7, 10, 11, 15, 59, 69, 79, 90, 97, 105, and 112, along with their dependent claims (Compl. ¶¶ 13-17).
- Independent Claim 1 (as amended) requires:
- A "detecting means" coupled to a phone line for detecting a predetermined sequence of tone signals and producing a detection signal.
- A "control means" that produces a control signal in response.
- The detecting means includes a "first detecting means" and a "second detecting means" for two different tone sequences.
- The control means produces a "first control signal" and a "second control signal" corresponding to the two sequences.
- The control means includes a "dual state means" for producing only one of the two control signals at a time.
- The detecting means includes a "gating means" that uses the output control signals to disable the detection of a sequence that would produce the same state, thereby preventing redundant operations.
- The complaint implicitly reserves the right to contest all dependent claims by seeking a judgment of non-infringement on the entire patent (Compl., Prayer for Relief ¶ A).
III. The Accused Instrumentality
Product Identification
- Plaintiff’s "telephone or voice mail services," including "one-way and two-way wireless messaging infrastructure equipment" that provide for remote control features identified as ""beeperless" or "tone" remote controls" (Compl. ¶¶ 5, 7).
Functionality and Market Context
- The complaint describes the accused instrumentalities as providing for the "storage and retrieval of voicemail messages" (Compl. ¶ 5). The functionality at issue is the ability to remotely control these services using tones sent over a telephone line (Compl. ¶ 7). The complaint does not provide further technical detail on the operation of these features.
- Plaintiff alleges it is a "pioneer and leader" in personal communications technologies and that its products are the result of its own substantial research and development efforts (Compl. ¶ 6).
IV. Analysis of Infringement Allegations
The complaint does not provide detailed infringement analysis or claim charts, but rather makes conclusory statements of non-infringement for groups of claims. The following table summarizes the core non-infringement allegation for Claim 1. No probative visual evidence provided in complaint.
'900 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein said control means comprises dual state means [capable of] for producing only one of a first control signal and said second control signal at a time | Plaintiff alleges that none of its products include the claimed "dual state means." | ¶13 | col. 5:53-57 |
| and wherein said first and said second detecting means further include gating means coupled in circuit for disabling production of said first and said second detection signals... | Plaintiff alleges that none of its products include the claimed "gating means." | ¶13 | col. 6:31-35 |
Identified Points of Contention
- Scope Questions: The complaint’s denials focus on means-plus-function limitations (e.g., "dual state means," "gating means"). A central dispute will be whether the structures disclosed in the patent to perform these functions—specifically, 1980s-era hardware like JK flip-flops and AND gates—are structurally equivalent to the potentially software-based implementations in Plaintiff’s modern voicemail systems.
- Technical Questions: The complaint provides only legal conclusions of non-infringement without describing how its own products operate. A key question for the court will be what evidence exists regarding the architecture and function of the accused voicemail systems to determine if they perform the functions required by the claims and, if so, whether they do so with structures equivalent to those disclosed in the patent.
V. Key Claim Terms for Construction
The Term: "dual state means"
Context and Importance: This term appears in independent claim 1 and is a specific basis for Plaintiff's non-infringement allegation (Compl. ¶13). As a means-plus-function limitation, its construction is governed by 35 U.S.C. § 112(f), making the corresponding structure in the specification critical. Practitioners may focus on this term because the outcome of an infringement analysis under § 112(f) often turns on the level of abstraction at which the disclosed structure is defined.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The functional language of the claim itself—"producing only one of a first control signal and said second control signal at a time"—could be argued to cover any component, hardware or software, that acts as a binary switch.
- Evidence for a Narrower Interpretation: The specification discloses a specific hardware structure corresponding to this function: a "JK-type flip-flop" (element 66) whose Q and Q-bar outputs provide the "on" and "off" control signals (’900 Patent, col. 5:53-62, FIG. 2). Parties may argue the term is limited to this specific logic gate and its structural equivalents.
The Term: "gating means"
Context and Importance: This term is also in independent claim 1 and is a basis for Plaintiff’s non-infringement allegation (Compl. ¶13). Its construction is also critical under § 112(f). The dispute will likely center on whether the accused software contains an equivalent structure to the patent’s disclosed hardware feedback circuit.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The function is to disable detection of a sequence based on the system's current state. This could be argued to read on any conditional logic (e.g., an "if-then" statement in software) that checks a state variable before processing a new command.
- Evidence for a Narrower Interpretation: The specification discloses that this function is performed by a specific feedback circuit where the output of the "dual state means" (flip-flop 66) is fed back as an input to the AND gates (60, 62) that detect the command sequences (’900 Patent, col. 6:31-39, FIG. 2). Interpretation may be limited to this specific feedback architecture and its equivalents.
VI. Other Allegations
Indirect Infringement
- The complaint does not provide sufficient detail for analysis of indirect infringement. It notes that the Defendant has sued Plaintiff's customers, a fact that could be used by Defendant to support a later claim of induced infringement against Plaintiff (Compl. ¶ 8).
Willful Infringement
- The complaint does not address willfulness directly. However, it establishes that Plaintiff received actual notice of alleged infringement via a letter from Defendant's counsel dated December 19, 2001 (Compl. ¶ 7). This pre-suit notice could form the basis for a subsequent allegation of willful infringement by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and equivalence under § 112(f): can the means-plus-function terms of the claims, which are supported by disclosures of discrete hardware logic circuits from the early 1980s (e.g., flip-flops, AND gates), be construed to cover the potentially software-based logic of a modern voicemail system? The case will likely depend on whether Plaintiff’s software architecture is found to be a structural equivalent to the patent's disclosed hardware.
- A key evidentiary question will be one of technical operation: the complaint offers only conclusory denials of infringement. The resolution of the dispute will require a factual determination of how Plaintiff's accused remote-control features actually function and whether they, in fact, perform the specific state-locking and feedback-gating functions recited in the patent's key claims.