DCT
2:18-cv-00953
VoIP Palcom Inc v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: VoIP-Pal.com, Inc. (Nevada)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Alverson, Taylor, Mortensen & Sanders; Malek Moss PLLC
- Case Identification: 2:18-cv-00953, D. Nev., 05/24/2018
- Venue Allegations: Plaintiff alleges venue is proper in the District of Nevada because Defendant Apple has placed products into the stream of commerce with the knowledge or expectation that they would be sold and used within the district.
- Core Dispute: Plaintiff alleges that Defendant’s iMessage, Facetime, and WiFi Calling services, as implemented on products like the iPhone, iPad, and Mac, infringe four patents related to routing communications in Voice over IP (VoIP) systems.
- Technical Context: The patents address methods for intelligently routing communications by classifying them as either internal to a specific IP network or external (e.g., to the public switched telephone network) based on user-specific attributes and profiles.
- Key Procedural History: The complaint alleges that Defendant has had knowledge of the patents-in-suit since at least April 12, 2018, following a press release issued by Plaintiff, which forms the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-02 | Earliest Priority Date for all Patents-in-Suit |
| 2017-01-03 | U.S. Patent No. 9,537,762 Issues |
| 2017-11-07 | U.S. Patent No. 9,813,330 Issues |
| 2017-11-21 | U.S. Patent No. 9,826,002 Issues |
| 2018-04-12 | Alleged Date of Defendant's Knowledge of Patents |
| 2018-04-24 | U.S. Patent No. 9,948,549 Issues |
| 2018-05-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,537,762 - "Producing Routing Messages For Voice Over IP Communications"
- Patent Identification: U.S. Patent No. 9,537,762, "Producing Routing Messages For Voice Over IP Communications," issued January 3, 2017.
The Invention Explained
- Problem Addressed: The patent’s background section describes that existing Voice over IP (VoIP) systems lacked the high availability and resiliency of the traditional public switched telephone network (PSTN), as VoIP systems could suffer significant outages if a single node failed ('762 Patent, col. 1:46-55).
- The Patented Solution: The invention provides a process for a call routing controller that facilitates communication between callers and callees. In response to a call, the system receives identifiers for both parties and uses "call classification criteria" associated with the caller to classify the communication as either a private network call or a public network call. Based on this classification, it produces a specific routing message, either identifying an address within the private network or a gateway to the public network ('762 Patent, Abstract; col. 2:5-9).
- Technical Importance: This approach allows for flexible and intelligent routing that can seamlessly bridge communications between distinct network types, such as a private VoIP system and the public telephone network, based on user-specific rules (Compl. ¶17-18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶29).
- Essential elements of Claim 1 include:
- In response to a communication initiation, receiving a first participant identifier and a second participant identifier.
- Using the first participant identifier to locate a first participant profile from a database, the profile comprising one or more attributes associated with the first participant.
- Processing the second participant identifier based on at least one attribute from the first participant profile to produce a new second participant identifier.
- Classifying the communication, using the new second participant identifier, as a first network communication or a second network communication based on whether certain criteria are met.
- When the first network classification criterion is met, producing a first network routing message identifying an address in the system.
- When the second network classification criterion is met, producing a second network routing message identifying an address associated with a gateway to a network external to the system, particularly if the second participant is not registered with the system.
- The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "one or more claims" ('762 Patent, cl. 1; Compl. ¶19, ¶29).
U.S. Patent No. 9,813,330 - "Producing Routing Messages For Voice Over IP Communications"
- Patent Identification: U.S. Patent No. 9,813,330, "Producing Routing Messages For Voice Over IP Communications," issued November 7, 2017.
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenge as the ’762 Patent: the need for resilient and flexible routing in IP-based communication systems that interact with external networks like the PSTN ('330 Patent, col. 1:46-55).
- The Patented Solution: This patent discloses a method for routing a communication between two devices by using the calling party's identifier to access a database of user profiles. A key step involves comparing the receiving party's identifier with attributes from the calling party's profile. This comparison is used to classify the communication as either a "system communication" (internal to the network) or an "external network communication," which determines whether the routing message directs the call to a system node or an external gateway (’330 Patent, Abstract; col. 2:10-21).
- Technical Importance: The invention provides a method for dynamically routing communications based on a comparison of user attributes, enabling a system to decide whether to keep traffic within its own network or pass it to an external one (Compl. ¶17-18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶38).
- Essential elements of Claim 1 include:
- In response to a communication initiation, receiving a first participant identifier and a second participant identifier over an IP network.
- Causing a processor to access a database of user profiles using the first identifier to locate a user profile for the first participant, which includes a plurality of attributes.
- Comparing at least a portion of the second participant identifier with at least one of the attributes from the first participant's profile.
- Causing a processor to search the database for a user profile for the second participant.
- Classifying the communication, based on the comparing step, as a system communication or an external network communication.
- When classified as a system communication, producing a routing message identifying an Internet address of a system node.
- When classified as an external network communication, producing a routing message identifying an Internet address associated with a gateway to an external network.
- The complaint does not explicitly reserve the right to assert dependent claims but makes a general allegation of infringement of "one or more claims" ('330 Patent, cl. 1; Compl. ¶20, ¶38).
U.S. Patent No. 9,826,002 - "Producing Routing Messages For Voice Over IP Communications"
- Patent Identification: U.S. Patent No. 9,826,002, "Producing Routing Messages For Voice Over IP Communications," issued November 21, 2017.
- Technology Synopsis: This patent describes a method for routing communications by receiving identifiers for two participants. The system accesses a database of user profiles using the first participant's identifier to locate attributes, which are then used to process the second participant's identifier and produce a new second identifier. This new identifier is then used to classify the communication as either internal ("system communication") or external, and an appropriate routing message is generated ('002 Patent, Abstract).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶47).
- Accused Features: Plaintiff alleges that Apple's messaging (iMessage), video/audio communication (Facetime), and WiFi calling functionalities infringe this patent (Compl. ¶47).
U.S. Patent No. 9,948,549 - "Producing Routing Messages For Voice Over IP Communications"
- Patent Identification: U.S. Patent No. 9,948,549, "Producing Routing Messages For Voice Over IP Communications," issued April 24, 2018.
- Technology Synopsis: This patent discloses a method for routing communications where a processor accesses a memory storing a first participant's profile containing at least one attribute. After receiving a second participant's identifier, the system processes that identifier based on the first participant's attribute to create a new second identifier. This new identifier is used to classify the communication as internal or external for routing purposes ('549 Patent, Abstract).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶56).
- Accused Features: Plaintiff alleges that Apple's messaging (iMessage), video/audio communication (Facetime), and WiFi calling functionalities infringe this patent (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Apple's communication systems and services, including iMessage, Facetime, and WiFi Calling, as well as the hardware products that operate them, such as the iPhone, iPad, Apple Watch, and Mac computers (Compl. ¶29, ¶38, ¶47, ¶56).
Functionality and Market Context
- The complaint alleges that Apple's iMessage and Facetime services allow users to communicate with each other, and that the system uses attributes from a user's profile to classify the communication (Compl. ¶25-26). For example, the system determines whether to route a message via Apple's proprietary network (e.g., a blue-bubble iMessage to another Apple user) or an external network (e.g., a green-bubble SMS message to a non-Apple user). Similarly, WiFi Calling is alleged to allow an Apple device to initiate communications with participants on external networks, such as the PSTN, using IP-based methods (Compl. ¶27).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’762 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in response to the first participant device initiating the communication... receiving the first participant identifier and the second participant identifier... | In Apple's iMessage and Facetime systems, a communication is initiated by the first participant, and identifiers for both participants (e.g., phone numbers) are received by the system. | ¶30 | col. 2:10-14 |
| using the first participant identifier to locate... a first participant profile from among a plurality of participant profiles that are stored in a database, the first participant profile comprising one or more attributes... | Apple's systems use the first participant's identifier (e.g., phone number, Apple ID) to locate a profile stored in at least one database. | ¶30 | col. 2:15-18 |
| processing the second participant identifier... based on at least one of the one or more attributes from the first participant profile, to produce a new second participant identifier | Apple's iMessage and Facetime systems allegedly process the second participant's identifier using the first participant's profile to produce a new second participant identifier. | ¶30 | col. 2:19-22 |
| classifying the communication... using the new second participant identifier, as a first network communication... and as a second network communication... | Apple's systems classify the communication through a server, using the new identifier, for example, by determining if the identifier represents an Apple-registered device. | ¶30 | col. 2:23-27 |
| when the first network classification criterion is met, producing... a first network routing message... identifying an address in the system... | When routing to another Apple device, the system produces a routing message that identifies an address on Apple's system. | ¶30 | col. 2:28-32 |
| and when the second network classification criterion is met, producing... a second network routing message... identifying an address associated with a gateway to a network external to the system... | When routing to a non-Apple device or the PSTN, the system produces a routing message that identifies an address for an external gateway (e.g., for SMS/MMS or WiFi Calling). | ¶30 | col. 2:33-40 |
- Identified Points of Contention:
- Scope Questions: A central question may be the interpretation of "producing a new second participant identifier." Apple may argue its system does not "produce" a "new" identifier but rather uses existing identifiers to look up routing information or confirm the registration status of the second participant. The dispute may focus on whether modifying routing data or selecting a network path constitutes "producing a new identifier" as claimed.
- Technical Questions: The complaint's allegations regarding the "processing" step are conclusory. A key factual question will be what technical operations Apple's servers perform on the recipient's identifier using the sender's profile data, and whether that operation aligns with the process described in the ’762 Patent specification.
’330 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| in response to initiation of the communication by the first participant device, receiving... a first participant identifier and a second participant identifier | In Apple's iMessage and Facetime systems, participant identifiers (e.g., phone numbers) are received over an IP network when a communication is initiated. | ¶39 | col. 6:2-6 |
| causing at least one processor to access at least one database comprising user profiles using the first participant identifier... to locate a user profile for the first participant... | Apple's systems use the first participant's identifier to locate a user profile within at least one database that stores profiles for users or participants. | ¶39 | col. 6:7-12 |
| comparing at least a portion of the second participant identifier... with at least one of the plurality of first participant attributes obtained from the user profile for the first participant | Apple's systems allegedly compare an attribute of the sender's profile (such as an international or national dialing code) to a portion of the recipient's identifier. | ¶39 | col. 6:13-17 |
| causing at least one processor to access the at least one database to search for a user profile for the second participant | Apple's iMessage and Facetime systems allegedly search at least one database of registered users for a profile associated with the second participant. | ¶39 | col. 6:18-20 |
| classifying the communication, based on the comparing, as a system communication or an external network communication... | Apple's systems classify whether a communication is internal (system) or external (e.g., SMS/MMS over WiFi Calling) based on the alleged comparison. | ¶39 | col. 6:21-24 |
| when the communication is classified as a system communication, producing a system routing message identifying an Internet address of a communication system node... | If classified as a system communication, Apple's system produces a routing message to identify an address for establishing communication with another Apple device. | ¶39 | col. 6:25-32 |
| when the communication is classified as an external network communication, producing an external network routing message identifying an Internet address associated with a gateway... | If classified as an external communication, Apple's system produces a routing message to identify an address for a gateway to an external network (e.g., for SMS or PSTN). | ¶39 | col. 6:33-41 |
- Identified Points of Contention:
- Scope Questions: The term "comparing" may be a key point of dispute. The infringement theory may depend on whether this term is construed to require a specific type of logical operation (e.g., matching dialing conventions) versus a more general lookup or query function.
- Technical Questions: The complaint alleges that classification is based on the "comparing" step. A factual dispute may arise over the causal link: does Apple's system classify the communication because of the specific comparison alleged (e.g., sender's dialing prefix vs. recipient's number), or is the classification based on a simpler, independent database lookup of the recipient's registration status?
V. Key Claim Terms for Construction
The Term: "producing a new second participant identifier" ('762 Patent, cl. 1; '002 Patent, cl. 1; '549 Patent, cl. 1)
Context and Importance: This term appears in the independent claims of three of the four asserted patents and appears central to the patentee's infringement theory. The outcome of the case may hinge on whether Apple's accused systems, which determine routing paths by looking up user registration status, can be said to "produce" a "new" identifier. Practitioners may focus on this term because it distinguishes a simple lookup from a generative act, which could be a critical non-infringement position for Apple.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the process may involve formatting a callee identifier into a "pre-defined digit format to produce a reformatted callee identifier" ('762 Patent, col. 2:36-39). This suggests that "producing a new" identifier could encompass reformatting or modifying existing data for routing purposes, not just creating an identifier from scratch.
- Evidence for a Narrower Interpretation: The detailed description focuses on manipulating dialing digits, such as removing an international dialing digit or prepending a country code ('762 Patent, col. 2:40-47). This could support a narrower construction where "producing a new" identifier requires a specific syntactical modification of the callee's number based on the caller's profile, an act Apple may argue it does not perform.
The Term: "classifying the communication, based on the comparing" ('330 Patent, cl. 1)
Context and Importance: This term establishes a causal link between the "comparing" step and the "classifying" step. Infringement requires not just that Apple's system performs both actions, but that the classification decision is a direct result of the comparison. Practitioners may focus on this term because it creates a specific technical requirement for infringement that may not be met if Apple's classification is based on a more direct lookup of the recipient's status, independent of any comparison to the sender's profile attributes.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the comparison as determining whether a callee identifier includes portions that match attributes (e.g., IDD, NDD, area code) in the caller's dialing profile ('330 Patent, col. 2:22-31). A broad reading could suggest that any routing decision that implicitly considers the relationship between the caller's location/attributes and the callee's identifier meets this limitation.
- Evidence for a Narrower Interpretation: The claim requires classification "based on the comparing," suggesting a direct dependency. If Apple's system simply performs a binary check—"Is the recipient registered with iMessage?"—and routes based on that result, it may argue that this is not a classification "based on" a "comparison" with the sender's attributes as claimed, but is instead based solely on an attribute of the recipient.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Apple induces infringement by selling the accused products with the knowledge and intent that end-users will use them in an infringing manner. This intent is allegedly shown through the creation and dissemination of "promotional and marketing materials, supporting materials, instructions, product manuals, and/or technical information" that instruct customers on how to use the infringing functionalities (Compl. ¶33, ¶42, ¶51, ¶60).
- Willful Infringement: Plaintiff alleges that Apple has had knowledge of the patents and their infringement since at least April 12, 2018, as a result of a press release issued by VoIP-Pal. The complaint alleges that Apple's continued infringement after this date has been and continues to be willful (Compl. ¶31-32, ¶40-41, ¶49-50, ¶58-59).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "producing a new second participant identifier," which appears in three of the four patents, be construed to cover Apple's alleged process of looking up a recipient's network status and selecting a pre-determined routing path (e.g., iMessage vs. SMS), or does it require a more literal generation or syntactical reformatting of the recipient's identifier?
- A key evidentiary question will be one of causation and technical function: for the '330 Patent, does Apple's system actually classify communications "based on" a "comparison" of the recipient's identifier against the sender's profile attributes, as the claim requires? Or is the classification based on a simpler, independent lookup of the recipient's registration status, which may not meet the claim's specific causal language?