DCT

1:24-cv-10271

RecepTrexx LLC v. Ringover Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-10271, D. Mass., 02/01/2024
  • Venue Allegations: Venue is alleged to be proper based on Defendant maintaining an established place of business in the District of Massachusetts and committing alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s business communication products infringe a patent related to the triggered playback of recorded messages to callers on mobile devices.
  • Technical Context: The technology concerns methods for managing incoming telephone calls, allowing a user to play a message to a caller to delay answering without the caller disconnecting.
  • Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,995,709. The reissue process, which can be used to correct errors in an issued patent, may create a prosecution history relevant to claim scope. The complaint does not mention any other prior litigation or proceedings.

Case Timeline

Date Event
2003-07-08 '997 Patent Priority Date (Original Application Filing)
2005-12-13 Original U.S. Patent No. 6,975,709 Issued
2007-12-13 Reissue Application Filed
2011-12-06 U.S. Reissue Patent No. RE42,997 Issued
2024-02-01 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"

  • Patent Identification: U.S. Reissue Patent No. RE42,997, "Triggered playback of recorded messages to incoming telephone calls to a cellular phone," issued December 6, 2011. (’997 Patent, cover; Compl. ¶9).

The Invention Explained

  • Problem Addressed: The patent identifies a problem arising from the increased use of cellular phones in public places like meetings or theaters, where answering a call is disruptive. (’997 Patent, col. 1:15-22). If a user delays answering, the caller might assume the call has failed and disconnect. (’997 Patent, col. 1:30-33).
  • The Patented Solution: The invention provides a system and method for a cellular phone user to respond to an incoming call by triggering the playback of a pre-recorded message to the caller, such as "hold on," without terminating the call connection. (’997 Patent, Abstract). This allows the user to keep the line open and begin speaking with the caller at a more convenient moment, either after or during the message playback. (’997 Patent, col. 1:60-65). The system can be implemented in a "distributed" manner, with the message stored on the phone itself, or in a "centralized" manner, where the phone signals a network peripheral to play the message. (’997 Patent, col. 2:58-65; col. 3:1-5).
  • Technical Importance: The technology offered a solution to a common social and practical issue for early mobile phone users, providing greater flexibility in managing call interruptions in various environments. (’997 Patent, col. 1:25-30).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims in its main body. It states that infringement allegations for "Exemplary '997 Patent Claims" are detailed in charts within an Exhibit 2. (Compl. ¶11, ¶16). This exhibit was not publicly available with the complaint. The complaint notes Plaintiff reserves the right to assert other claims. (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not name specific accused products. It refers to "Exemplary Defendant Products" that are identified in the unattached Exhibit 2. (Compl. ¶11, ¶16). Defendant Ringover Inc. is a provider of VoIP-based business phone systems.

Functionality and Market Context

The complaint does not describe the technical functionality of the accused products. It alleges, in general terms, that the products "practice the technology claimed by the '997 Patent." (Compl. ¶16). It further alleges that Defendant distributes "product literature and website materials" that instruct end users on how to use the products in an infringing manner. (Compl. ¶14). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant’s products infringe the ’997 Patent but relies entirely on an external, unattached "Exhibit 2" to provide claim charts and substantiate this allegation. (Compl. ¶16, ¶17). The narrative theory is that the "Exemplary Defendant Products" satisfy all elements of the "Exemplary '997 Patent Claims." (Compl. ¶16). The complaint alleges both direct infringement through Defendant's own making, using, and testing of the products (Compl. ¶11, ¶12) and indirect infringement, as described in Section VI.

Because the asserted claims and specific accused functionalities are not detailed in the provided document, a claim chart summary cannot be constructed.

Identified Points of Contention

  • Technical Questions: A central question will be whether the accused Ringover products, which operate on modern VoIP and cloud-based infrastructure, perform the specific steps of the asserted claims. For example, does the accused system "maintain[...] the connection with said caller after said message has been played," as recited in claim 3 of the patent, or does it utilize a different architecture, such as forwarding to a separate voicemail or announcement server that alters the call path in a way that may not align with the claim language? (’997 Patent, col. 8:14-16).
  • Scope Questions: The patent's claims use terminology from the early 2000s, such as "cellular phone" and "telephone switch." (’997 Patent, col. 7:40-41). A potential dispute may arise over whether these terms, in the context of the patent, can be construed to cover modern software-based communication clients and distributed cloud-based network architecture.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of key claim terms because it does not identify the asserted claims.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendant has actively encouraged infringement "by selling Exemplary Defendant Products to their customers for use...in a manner that infringes." (Compl. ¶15). The factual basis alleged for this inducement is the distribution of "product literature and website materials" that instruct users. (Compl. ¶14).
  • Willful Infringement: The complaint alleges that service of the complaint itself provides "Actual Knowledge of Infringement." (Compl. ¶13). It further alleges that "Defendant continues to make, use, test, sell, offer for sale, market, and/or import" infringing products despite this knowledge. (Compl. ¶14). This forms a basis for post-suit willful infringement, and the prayer for relief seeks enhanced damages pursuant to 35 U.S.C. § 284. (Compl. p. 4, ¶D).

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

  • Evidentiary Sufficiency: The complaint's infringement contentions are almost entirely deferred to an unattached exhibit. A primary issue will be whether the evidence, once presented, can establish a clear mapping between the specific functionalities of Ringover's modern VoIP products and the limitations of the patent's asserted claims.
  • Claim Scope and Evolving Technology: A key legal battle will likely concern claim construction. The case will question whether the scope of terms like "cellular phone" and "telephone switch," originating from a 2003 patent application, can be interpreted to read on the software clients and cloud-based architecture of Defendant’s accused 2024-era services.
  • Impact of Reissue History: The patent-in-suit is a reissue patent. This means its prosecution history includes not only the original examination but also the subsequent reissue proceeding. The reasons for seeking reissue and any arguments or amendments made to secure it could be critical in determining the enforceable scope of the asserted claims, potentially giving rise to arguments of prosecution history estoppel.