DCT
1:05-cv-07160
Smartcall Licensing Inc v. Cellco Partnership
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SmartCall Licensing Incorporated (Illinois)
- Defendant: Cellco Partnership d/b/a Verizon Wireless (Delaware)
- Plaintiff’s Counsel: Niro, Scavone, Haller & Niro
- Case Identification: 1:05-cv-07160, N.D. Ill., 12/21/2005
- Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business, sells infringing products, has a regular and established place of business, and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s cellular telephone products and services infringe a patent related to using caller identification information to retrieve and display associated data from a database on a portable device.
- Technical Context: The technology addresses the problem of identifying incoming callers on portable devices like pagers by cross-referencing incoming call data with a pre-existing local database.
- Key Procedural History: The patent-in-suit was the subject of a Certificate of Correction, which substantively changed the patent’s title and abstract, and corrected multiple claim limitations. These changes clarify the invention's focus on automatically communicating caller-identification information, which may be a relevant factor in claim construction.
Case Timeline
| Date | Event |
|---|---|
| 1994-01-05 | ’064 Patent Priority Date |
| 2002-07-30 | ’064 Patent Issue Date |
| 2004-06-29 | ’064 Patent Certificate of Correction Issued |
| 2005-12-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,427,064 B1 - Method Of Automatically Communicating Caller-Identification Information Or Optional Data Through A Paging Network To A Portable Communication Device
- Issued: July 30, 2002
The Invention Explained
- Problem Addressed: The patent addresses the issue where a user of a portable communication device, such as a pager, receives a page from an unfamiliar telephone number and is unable to identify the caller, making it difficult to prioritize or return the communication ('064 Patent, col. 1:12-28).
- The Patented Solution: The invention proposes a method where a portable device contains a local database with information about potential callers (e.g., names, addresses). When a page request is made, the system automatically passes caller-identification information from the telephone network to the paging network. The portable device receives this information and compares it against its local database to retrieve and display more useful identifying data about the caller, beyond just the phone number ('064 Patent, col. 1:31-55). Figure 12 of the patent illustrates an exemplary database structure with fields for telephone numbers, names, and other associated data ('064 Patent, FIG. 12).
- Technical Importance: The technology aimed to enhance the utility of paging and mobile communication by integrating caller identification with a local, user-centric database on the device itself, providing richer context for incoming messages.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 10, as well as dependent claims 2-3, 11-12, and 15 (Compl. ¶6).
- Independent Claim 1 (Method):
- Providing a portable communication device with a database containing a numeric field for telephone numbers.
- Initiating communication between a page-originator and a numeric paging network.
- Automatically passing caller-identification information (including a telephone number) from the telephone network to the paging network without requiring user entry of that information.
- Allowing the page-originator to input optional numeric data.
- Transmitting the caller-identification and optional numeric data to the portable device.
- Receiving the data at the portable device.
- Analyzing the data by comparing it with the device's database.
- Displaying information on the device resulting from the analysis.
- Independent Claim 10 (Method):
- A similar method to Claim 1, but with slightly different phrasing. The key steps of providing a device with a database, automatically passing caller-ID, allowing optional numeric input, transmitting, receiving, analyzing by comparison, and displaying results are recited. It culminates in displaying information that provides an "indication of identity of said page-originating communicant."
III. The Accused Instrumentality
Product Identification
The complaint broadly identifies the accused instrumentalities as "cellular telephones and cellular telephone and paging services" provided by Verizon (Compl. ¶6). No specific device models, service plans, or software versions are identified.
Functionality and Market Context
The complaint alleges that Verizon sells cellular telephone products and services within the judicial district (Compl. ¶5). It further alleges these products and services are "covered by the '064 patent" and are "adapted for uses that infringe" (Compl. ¶6). The complaint does not provide sufficient detail for analysis of the specific technical operation of the accused products or services.
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement contentions. The following summary is based on the general allegations of infringement (Compl. ¶6).
’064 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality - | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) providing a portable communication device identified in said paging network to said page-receiving communicant... including: (1) a database recorded in memory with a plurality of associated data fields, including a numeric field which is representative of telephone numbers... | Verizon provides cellular telephones to its customers, which allegedly function as the claimed "portable communication device" and contain a database (e.g., a contact list or address book). | ¶5, ¶6 | col. 15:4-15 |
| (c) automatically passing caller-identification information from said telephone network to said paging network... without requiring entry by said page-originating communicant... | Verizon's network allegedly automatically transmits caller ID information when a call is placed to a subscriber's device. - | ¶6 | col. 16:26-34 |
| (g) utilizing said portable communication device for analyzing said caller-identification information and optional numeric data by utilizing said means for comparing... said database... | The accused cellular telephones allegedly analyze the incoming caller ID data by comparing it against the local database (contact list) to find a match. - | ¶6 | col. 16:55-65 |
| (h) displaying information in said display member of said portable communication device resulting from said step of utilizing said portable communication device... | The accused cellular telephones allegedly display information retrieved from the database (e.g., a contact's name) as a result of the analysis. Figure 10 of the patent provides a block diagram of the components of a portable communication device, including a display unit (207) and CPU (203) for performing these functions (Compl. Ex. A, FIG. 10). | ¶6 | col. 16:66-col. 17:2 |
Identified Points of Contention
- Scope Questions: The patent repeatedly refers to a "paging network" and "paging receiver." A central question will be whether Verizon’s modern cellular network and smartphones can be considered a "paging network" and "portable communication device" within the meaning of the claims, which were drafted in the context of 1990s-era paging technology.
- Technical Questions: What evidence demonstrates that the accused devices perform the specific step of "analyzing" by "comparing" information as claimed? The analysis may focus on whether simply displaying a contact's name from an address book based on an incoming number constitutes the specific comparison and analysis process described in the patent, or if it is a routine, unpatentable function. The complaint does not provide evidence to distinguish between these possibilities.
V. Key Claim Terms for Construction
Term: "paging network"
- Context and Importance: This term appears in the preamble and body of the independent claims. The patent was filed in 1994 and describes systems like a "numeric paging network central office" ('064 Patent, col. 6:27-29, FIG. 3). Infringement will depend on whether this term can be construed to cover modern cellular data networks. Practitioners may focus on this term because the accused technology (cellular services) is technologically distinct from the paging systems described in the patent's specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined. A plaintiff may argue that any network that transmits a notification ("page") to a mobile user falls within the plain and ordinary meaning of the term.
- Evidence for a Narrower Interpretation: The specification consistently describes the network in the context of specific paging protocols like POCSAG and interaction with a "paging network central office" ('064 Patent, col. 6:17-26, FIG. 4). This may support a narrower construction limited to traditional paging architectures.
Term: "analyzing said caller-identification information... by utilizing said means for comparing"
- Context and Importance: This active step is a core limitation of the claimed method. The dispute will likely involve whether the accused devices perform this specific analysis or a different function. A key question is whether a standard address book/caller ID lookup function on a modern smartphone meets this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff could argue that any process where the device's software looks at the incoming number and searches the contact list for a match is a form of "analyzing" by "comparing."
- Evidence for a Narrower Interpretation: The patent describes a specific goal: to identify a "likely page-originating communicant" and determine if they are "calling from a familiar telephone or an unfamiliar telephone" ('064 Patent, col. 13:1-15). The detailed description suggests a more complex process than a simple address book lookup. A defendant may argue the term requires a more sophisticated heuristic or database query than what is performed by the accused devices.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Verizon induced infringement by "providing cellular telephone and paging services which are adapted for uses that infringe the '064 patent" and contributorily infringes (Compl. ¶6). It further alleges that Verizon "knowingly and intentionally induced others to infringe (such as its customers...)" (Compl. ¶6).
Willful Infringement
The complaint does not use the word "willful," but it alleges knowing infringement and seeks enhanced damages under 35 U.S.C. §§ 284 and 285 in its prayer for relief (Compl. ¶6; Relief ¶B). No facts supporting pre-suit knowledge are alleged.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological scope: Can claim terms rooted in 1990s paging technology, such as "paging network", be construed to read on the architecture of modern cellular voice and data networks? The outcome of this question will likely determine whether the patent is applicable to the accused services.
- A second key issue will be one of functional distinction: Does the accused devices' standard caller ID and address book functionality perform the specific method of "analyzing" incoming data by "comparing" it to a "database" as required by the claims, or is there a material difference in the technical process that places the accused functionality outside the scope of the patent? The complaint's lack of technical specifics on the accused services leaves this as a central evidentiary question for discovery.