DCT
8:07-cv-03012
Technology Patents LLC v. Deutsche Telekom AG
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Technology Patents LLC (Maryland)
- Defendant: Deutsche Telekom AG (Germany), T-Mobile USA, Inc. (Delaware), Vodafone Group PLC (England), Cellco Partnership d/b/a Verizon Wireless (Delaware), Microsoft Corporation (Washington), Motorola, Inc. (Delaware), Samsung Electronics Co., Ltd. (Korea), and numerous other telecommunications carriers, service providers, and device manufacturers.
- Plaintiff’s Counsel: Nixon & Vanderhye P.C.
- Case Identification: 8:07-cv-03012, D. Md., 11/08/2007
- Venue Allegations: Venue is alleged based on Defendants making, using, selling, or importing infringing systems in the U.S. and Maryland, and causing international messages to be sent to and from Maryland, thereby purposefully availing themselves of the district and deriving substantial revenue.
- Core Dispute: Plaintiff alleges that Defendants’ international text/SMS messaging services, related software applications, and mobile devices infringe two patents related to global messaging systems that use packet-switched networks and remote country designation.
- Technical Context: The technology concerns methods for efficiently routing messages (such as pages or text messages) to a user who may be in a different country by using a land-based data network, like the Internet, and allowing for the recipient's location to be designated.
- Key Procedural History: U.S. Reissued Patent No. RE39,870 is a reissue of U.S. Patent No. 6,960,983, which issued on November 1, 2005. The act of seeking reissue suggests the patentee may have amended the original patent's claims, which could introduce limitations on claim scope under the doctrine of prosecution history estoppel.
Case Timeline
| Date | Event |
|---|---|
| 1996-11-19 | Priority Date for U.S. Patent No. 6,646,542 and U.S. Reissued Patent No. RE39,870 |
| 2003-11-11 | U.S. Patent No. 6,646,542 Issue Date |
| 2005-11-01 | Original U.S. Patent No. 6,960,983 Issue Date |
| 2007-10-09 | U.S. Reissued Patent No. RE39,870 Issue Date |
| 2007-11-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissued Patent No. RE39,870 - "Global Paging System Using Packet-Switched Digital Data Network and Remote Country Designation"
The Invention Explained
- Problem Addressed: The patent identifies the inefficiency and high cost of existing global paging systems, particularly those reliant on satellite communications or expensive "roaming" features that require a user to constantly update their location when traveling internationally. (’870 Patent, col. 1:45-55, col. 2:15-24).
- The Patented Solution: The invention describes a global messaging system that uses a land-based, packet-switched data network (such as the Internet) to transmit paging information between countries. A key feature is the ability for a receiving user to pre-designate their current country or a prioritized list of countries where they might be located. When a message is sent, the system first attempts to page the user in the specifically "designated country." If no country is designated or the user is not found, the system attempts to page them sequentially in the countries on their pre-set list, avoiding inefficient global broadcasts. (’870 Patent, Abstract; col. 2:56-65, FIG. 5).
- Technical Importance: This system proposed a more cost-efficient and simplified method for international messaging by leveraging terrestrial data networks and intelligent routing based on a user's likely location. (’870 Patent, col. 2:35-41).
Key Claims at a Glance
- The complaint asserts the patent generally without specifying claims; a representative independent claim is Claim 1. (Compl. ¶144).
- Essential elements of independent Claim 1 include:
- A method of paging a receiving user via a global paging system with servers in different countries interconnected by a land-based packet-switched digital data network.
- An originating user contacts a first server in a first country to page a receiving user in a second country.
- The system determines if the second country is "currently designated by the receiving user."
- If designated, the system sends a paging communication over the network to a server in that second country to initiate the page.
- If not designated, the system initiates paging operations "in another country in a predetermined order in an attempt to page the receiving user."
- The complaint implicitly reserves the right to assert other claims.
U.S. Patent No. 6,646,542 - "Global Paging System Using Packet-Switched Digital Data Network and Remote Country Designation"
The Invention Explained
- Problem Addressed: The patent addresses the need for a more efficient and less complex global paging system than the costly satellite-based or transmission-suspect data network systems of the prior art. (’542 Patent, col. 2:25-34).
- The Patented Solution: The invention discloses a system where an originating user can send a paging signal (e.g., via E-mail) to a server. The system then transmits this signal over a packet-switched network to a server in the recipient's designated country for local wireless transmission. The patent describes features allowing a receiving user to remotely input a "designated country" or a list of countries where they wish to receive pages, which the system can then search. (’542 Patent, Abstract; col. 2:49-68).
- Technical Importance: The invention provided a framework for using the Internet to facilitate international messaging, reducing reliance on specialized and expensive infrastructure. (’542 Patent, col. 2:25-34).
Key Claims at a Glance
- The complaint asserts the patent generally; a representative independent claim is Claim 6. (Compl. ¶158).
- Essential elements of independent system Claim 6 include:
- A plurality of web sites or servers in different countries, interconnected by a land-based packet-switched digital data network.
- Means for an originating user to communicate with a first server to page a receiving user.
- Means for transmitting the paging message from the first server to a second server in a second country, and then to the user's pager.
- "designating means for designating the second country," which includes means for the receiving user to designate the country for future pages.
- "means for the receiving user inputting a list of at least three different countries... in which the receiving user may be paged, one at a time, in a predetermined order."
- The complaint implicitly reserves the right to assert other claims.
III. The Accused Instrumentality
Product Identification
- The complaint broadly accuses the "systems (including components thereof), processes and/or services for sending and/or receiving messages (including but not limited to international text messages or SMS messages)" of all defendants. (Compl. ¶¶ 144, 158). This includes the international messaging services of carriers like T-Mobile, Verizon, and Vodafone; software like Windows Live Messenger and Yahoo! Messenger; and hardware such as mobile devices from Motorola, Samsung, and Palm. (Compl. ¶149).
Functionality and Market Context
- The accused functionality is the provision and use of international messaging, where a message is sent from a user in one country to a recipient in another. (Compl. ¶136). The complaint alleges that the defendant carriers have agreements with each other to enable this cross-border communication, allowing their respective systems and services to be used on foreign networks. (Compl. ¶¶ 151-153). These services represent a fundamental component of the global mobile telecommunications market.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
RE39,870 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an originating user telephoning a first web site or server located in a first country in order to page the receiving user who is located in a secondary country | A user sending an international SMS/text message from their mobile device, which connects to their home carrier's network servers. | ¶149 | col. 4:40-44 |
| the paging system determining if the second country is currently designated by the receiving user | The home carrier's network automatically identifying the recipient's current country of operation (e.g., via network roaming information). | ¶¶151-152 | col. 7:51-54 |
| when the paging system determines that the second country has been designated... sending a paging communication over the packet-switched digital data network to a second web site or server | The home carrier's network routing the SMS data over data backbones to the network servers of the recipient's foreign carrier. | ¶¶149, 151 | col. 8:60-63 |
| when the paging system determines that the second country has not been designated... initiating paging operations in another country in a predetermined order | The complaint does not allege a specific "hunt-and-seek" functionality where different countries are tried in order. | N/A | col. 7:55-58 |
6,646,542 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A global country-selective paging system comprising: a plurality of web sites or servers... located in a different country | The interconnected messaging servers and networks of the numerous defendant carriers located around the world. | ¶¶151-153 | col. 4:16-18 |
| a land based packet-switched digital data network interconnecting said plurality of sites or servers | The internet backbones and inter-carrier data networks used for routing international SMS messages. | ¶139 | col. 4:1-3 |
| means for allowing an originating user to communicate with a first web site or server... to page the receiving user | The user interface on a mobile device for composing and sending a text message, which communicates with the carrier's messaging server. | ¶149 | col. 4:24-26 |
| designating means for designating the second country | The automated network process (e.g., HLR/VLR lookup) by which a carrier's system determines the country in which a recipient's device is currently roaming. | ¶151 | col. 6:50-54 |
| means for the receiving user inputting a list of at least three different countries... in which the receiving user may be paged, one at a time, in a predetermined order | The complaint does not allege that the accused mobile devices or carrier services provide a feature for users to input such a prioritized list. | N/A | col. 6:20-22 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern whether the term "pager" as used in the patents can be construed to read on a modern two-way smartphone, and whether "paging" can encompass two-way SMS/text messaging. Further, it raises the question of whether an automated network-level location lookup constitutes user-driven "designating" as described in the specification.
- Technical Questions: What evidence does the complaint provide that the accused systems perform the "hunt-and-seek" method of trying countries in a "predetermined order" when a recipient's location is unknown, as required by claim 1 of the ’870 Patent? A more significant question is whether the accused systems contain the "means for the receiving user inputting a list of at least three different countries," a specific limitation in claim 6 of the ’542 Patent that appears to have no corresponding feature alleged in the complaint.
V. Key Claim Terms for Construction
The Term: "pager" / "paging"
Context and Importance: These terms are central to defining the scope of the invention. The patents were filed in 1996 when one-way pagers were common. The lawsuit targets modern smartphones and two-way SMS messaging. The defendants will likely argue that "paging" is a distinct, older technology and that a "pager" is not a "smartphone," placing their systems outside the claim scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification states that "cellular phones 23 may be used instead of pagers." (’542 Patent, col. 4:32-33). A plaintiff may argue this shows the inventor contemplated broader application to two-way mobile devices.
- Evidence for a Narrower Interpretation: The patents' titles, abstracts, and detailed descriptions consistently and repeatedly refer to "paging" and "pagers." The core problem is framed in the context of paging, and the figures depict pagers. A defendant may argue the reference to cell phones is a mere alternative embodiment that does not redefine the invention as a whole, which is fundamentally a "paging system."
The Term: "designating a second country"
Context and Importance: The patents describe a user "designating" their location. The infringement theory appears to rely on an accused carrier network's automatic location-finding process (e.g., HLR/VLR lookup) satisfying this limitation. Practitioners may focus on this term because its construction will determine whether an automated, transparent network function can meet a claim limitation that the specification appears to describe as a manual, user-initiated action.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff could argue that any method the system uses to select the target country, whether manual or automatic, meets the plain meaning of "designate." The goal of the invention is to route the message to the correct country, and the specific mechanism is an implementation detail.
- Evidence for a Narrower Interpretation: The specification provides examples that show a user actively providing the designation. For instance, it describes a "subscriber... inputs to system his/her location" (’542 Patent, col. 6:50-52) and shows a flowchart where the user "inputs country designation to system" (’542 Patent, FIG. 4). This may support a narrower construction requiring an explicit user action.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that defendants induce and contribute to infringement. The inducement allegations are based on defendants providing systems, services, and mobile devices (e.g., via advertisements and user manuals) that are "designed to be used for international messaging," thereby encouraging their customers to perform the allegedly infringing acts. (Compl. ¶146). Contributory infringement is alleged based on providing components and entering into agreements with other defendants that enable the infringing international messaging systems. (Compl. ¶¶146, 160).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court's interpretation of key claim terms and the factual evidence presented to map the accused technology onto the patent claims. The central questions for the case appear to be:
- A core issue will be one of definitional scope: Can terms rooted in the 1990s technology of one-way "paging" systems and "pagers" be construed to cover the modern technology of two-way SMS/text messaging on smartphones?
- A key evidentiary question will be one of functional equivalence: Do the accused systems, which automatically identify a user's location via transparent network protocols, perform the functions required by claims that describe a user actively "designating" a country or "inputting a list" of countries for the system to search? The complaint's general allegations raise the question of whether a fundamental mismatch exists between the patented method and the accused functionality.