DCT
2:02-cv-03006
Forward Tech v. SBC Communications
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Forward Technologies LLC (New York)
- Defendant: SBC Communications, Inc. (Delaware); Pacific Telesis Group (California); Pacific Bell Telephone Company (California)
- Plaintiff’s Counsel: Zimmerman & Levi, LLP
- Case Identification: 2:02-cv-03006, D.N.J., 10/28/2002
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendants conduct business and have committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendants’ telecommunication services infringe a patent related to methods and devices for remotely controlling telephone call forwarding.
- Technical Context: The technology concerns enabling a user to change their call forwarding settings (e.g., the destination number) by calling into their own phone line from a remote location, rather than requiring the change to be made from the physical phone instrument itself.
- Key Procedural History: The complaint alleges that the original patentees and Defendant Pacific Telesis Group (PACTEL) entered into an exclusive license agreement for the patent-in-suit in April 1985, which PACTEL then terminated in August 1985. This history may be used to support allegations of pre-suit knowledge of the patent.
Case Timeline
| Date | Event |
|---|---|
| 1982-11-18 | '009 Patent Priority Date (Application Filing Date) |
| 1984-10-02 | U.S. Patent No. 4,475,009 Issued |
| 1985-04-08 | Patentees and Defendant PACTEL execute license agreement |
| 1985-07-01 | License agreement modified |
| 1985-08-01 | Defendant PACTEL terminates license agreement |
| 2002-10-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 4,475,009 - Method and Device for Remotely Controlling Telephone Call Forwarding, issued October 2, 1984
The Invention Explained
- Problem Addressed: The patent's background section describes the state of call forwarding technology at the time, noting that initiation and termination could only be performed "from the telephone instrument connected to the telephone line having such service" ('009 Patent, col. 1:11-14). This made it impossible for a user to change their call forwarding preferences while away from their home or office.
- The Patented Solution: The invention is a system that allows a user to remotely manage call forwarding. A user calls their own line, enters a "preselected identification code," and then provides a new destination telephone number ('009 Patent, col. 2:1-7). A device connected to the user's line detects this sequence, stores the new number, and then automatically seizes the telephone line to input the telephone company's required codes (e.g., dialing "72") followed by the new number, thereby updating the call forwarding settings without the user needing to be physically present ('009 Patent, col. 2:7-11; Fig. 1).
- Technical Importance: The technology untethered call forwarding management from a fixed physical location, providing significant flexibility for users who needed to be reachable at various locations throughout a day or trip ('009 Patent, col. 1:35-44).
Key Claims at a Glance
- The complaint asserts infringement of "the claims of the '009 patent" without specifying particular claims (Compl. ¶14). Independent Claim 1 is representative of the asserted device.
- Independent Claim 1 requires:
- input means for receiving signals remotely applied to a telephone line;
- output means for applying signals to the telephone line;
- means responsive to a preselected identification code for storing a desired call forwarding number and for sequentially applying a call forwarding initiate code and the stored number to the output means; and
- means responsive to signals for applying a call forwarding terminate code to the output means.
III. The Accused Instrumentality
- Product Identification: The complaint accuses Defendants' "Method and Device for Remotely Controlling Telephone Call Forwarding" (Compl. ¶14). This appears to refer to the call forwarding services offered by SBC, PACTEL, and Pacific Bell to their customers.
- Functionality and Market Context: The complaint broadly alleges that Defendants are "importing, making, using, offering for sale, and/or selling" the patented technology (Compl. ¶14). The complaint does not provide specific details regarding the technical operation or architecture of the accused call forwarding services, nor does it describe the specific features that allegedly infringe.
IV. Analysis of Infringement Allegations
The complaint makes general allegations of infringement without providing a detailed mapping of claim elements to specific features of the accused services. No probative visual evidence provided in complaint.
'009 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| input means connectable to the given telephone line for receiving input signals remotely applied to the line; | The complaint alleges infringement without specifying which components of Defendants' services constitute the "input means." | ¶14 | col. 3:1-4 |
| output means connectable to the given telephone line for applying output signals thereto; | The complaint alleges infringement without specifying which components of Defendants' services constitute the "output means." | ¶14 | col. 3:23-27 |
| means responsive to the receipt of a preselected identification code by the input means for storing a desired call forwarding telephone number... and for sequentially applying a call forwarding initiate code and thereafter said stored number to the output means; | The complaint does not provide specific facts detailing how Defendants' services allegedly receive an identification code, store a number, and apply an initiate code. | ¶14 | col. 2:1-11 |
| and means responsive to signals received by the input means for applying a call forwarding terminate code to the output means. | The complaint does not provide specific facts detailing how Defendants' services allegedly receive signals to trigger the application of a terminate code. | ¶14 | col. 2:19-24 |
Identified Points of Contention
- Scope Questions: A central issue may be whether the term "device," as used in the patent and illustrated as a discrete hardware unit connected to a user's phone line (e.g., '009 Patent, Fig. 1), can be construed to read on the Defendants' likely implementation as a distributed, network-level software service.
- Technical Questions: The complaint provides no evidence on the technical operation of the accused services. This raises the question of whether Defendants' systems use a "preselected identification code" and "sequentially apply" initiation codes and numbers in a manner analogous to the patent's disclosure, or if they use a different architecture (e.g., web-based portals, proprietary signaling) that may not meet the claim limitations.
V. Key Claim Terms for Construction
The Term: "device"
Context and Importance
The construction of this term may be critical. The patent's specification and figures describe a physical piece of hardware installed at the customer's premises. Defendants, as telephone service providers, likely implement call forwarding as a software-based function within their central network. Whether a distributed, network-based system constitutes a "device" under the patent's claims could be a primary point of dispute.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language itself is functional, describing what the means-plus-function elements do rather than what they are. A party could argue that any system performing the recited functions, regardless of its physical form or location, constitutes a "device."
- Evidence for a Narrower Interpretation: The patent consistently describes the invention as a unit connected to a "given telephone line" ('009 Patent, col. 1:4-5), and figures like Figure 1 depict a discrete box with inputs from and outputs to the line, suggesting a self-contained, physical apparatus.
The Term: "sequentially applying a call forwarding initiate code and thereafter said stored number"
Context and Importance
Practitioners may focus on this term because it describes the core operational logic. The patent discloses a process that mimics a human user interacting with the phone system of the era—dialing an access code, waiting for a second dial tone, then dialing the number ('009 Patent, col. 1:15-29). Whether Defendants' modern, likely integrated systems perform this two-step "sequential application" will be a key factual question for infringement.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party might argue "sequentially" simply means the initiate code is sent first and the number is sent second, without regard to any intervening steps like waiting for a dial tone.
- Evidence for a Narrower Interpretation: The detailed description explains a multi-step process: "dialing the telephone company call forwarding access code, waiting for a dial tone, dialing the stored telephone number..." ('009 Patent, col. 5:15-18). This could support a narrower construction requiring distinct, separated actions.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants are "actively inducing the infringement of and contributorily infringing" the '009 patent, but does not plead specific facts to support these allegations beyond the general claim of infringement (Compl. ¶14).
- Willful Infringement: The complaint alleges that infringement by SBC and Pacific Bell has been "willful and deliberate" (Compl. ¶17). The factual basis for this allegation appears to be the prior licensing relationship between the original patentees and Defendant PACTEL, which allegedly began in 1985 and was terminated by PACTEL, suggesting pre-suit knowledge of the patent (Compl. ¶¶11, 13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "device," which the patent illustrates as a discrete physical unit attached to a specific telephone line, be construed to cover the Defendants' distributed, network-based call forwarding services that are not located at the customer premises?
- A second central question will be functional operation: does the accused call forwarding service operate by "sequentially applying a call forwarding initiate code and thereafter said stored number" in the multi-step manner disclosed in the patent, or does it utilize a fundamentally different, integrated signaling protocol that falls outside the claim's scope?
- Finally, the case will examine the issue of pre-suit knowledge: what legal effect, if any, does the 1985 license agreement and its termination by Defendant PACTEL have on the claims of willful infringement against PACTEL and its parent and subsidiary corporations seventeen years later?