Coretek Licensing LLC v. HCL America Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: HCL America, Inc. (California)
  • Plaintiff’s Counsel: Law Office of Nicholas Loaknauth, P.C.; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:20-cv-04996, S.D.N.Y., 06/29/2020
• Venue Allegations: Plaintiff alleges venue is proper because Defendant resides in the district through a regular and established place of business.
• Core Dispute: Plaintiff alleges that Defendant’s HCL Sametime communications software infringes four patents related to methods for establishing wireless network connections and determining device location without using a traditional mobile network operator's infrastructure.
• Technical Context: The technology concerns over-the-top (OTT) communication systems that allow mobile devices to initiate voice and data sessions through a third-party server, bypassing the conventional carrier's Home Location Register (HLR) for call routing decisions.
• Key Procedural History: The complaint does not allege any prior litigation, licensing history, or post-grant proceedings for the patents-in-suit. The front pages of U.S. Patent Nos. 8,861,512 and 9,173,154 indicate they are subject to terminal disclaimers, which may limit their enforceable term to that of an earlier-expiring patent in the family.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,861,512 - "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER"

• Patent Identification: U.S. Patent No. 8,861,512, issued October 14, 2014.

The Invention Explained

• Problem Addressed: The patent’s background section describes the problem of wireless users being restricted by their home network operator, which controls network access and call routing through a Home Location Register (HLR). This control limits user choice and can lead to higher costs, particularly when roaming. (’512 Patent, col. 1:36-51).
• The Patented Solution: The invention describes a system where a software "module" on a wireless device bypasses the HLR for call routing. The module contacts a separate, non-operator server with a "call request." A software application on this server then determines the most appropriate routing for the connection over any available network, effectively decoupling the call setup logic from the carrier's core infrastructure. (’512 Patent, Abstract; col. 3:52-4:42).
• Technical Importance: This architecture enables "over-the-top" services and least-cost routing by creating a pathway for communication that is independent of the mobile operator's proprietary call control systems. (’512 Patent, col. 2:41-51).

Key Claims at a Glance

• The complaint asserts independent claims 1, 23, and 24 (Compl. ¶¶14, 17, 19).
• The essential elements of independent method claim 1 are:
  • A method of enabling a wireless device to initiate a network connection without using a network operator's home location register (HLR).
  • The wireless device uses a downloadable software "module" to contact a server.
  • The module sends data to the server that "defines a call request."
  • In response, a software application on the server decides on the routing to a third-party end-user over available networks, without using the HLR.
• The complaint also asserts dependent claim 12, which adds that the module establishes and controls communication between the device and server (Compl. ¶16).

U.S. Patent No. 9,173,154 - "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER"

• Patent Identification: U.S. Patent No. 9,173,154, issued October 27, 2015.

The Invention Explained

• Problem Addressed: The ’154 Patent, a continuation of the application leading to the ’512 Patent, addresses the same technical problem: the limitations imposed on users by reliance on a mobile network operator's HLR for call routing and network access. (’154 Patent, col. 1:36-51).
• The Patented Solution: The solution is functionally identical to that of the ’512 Patent, involving a software module on a device that communicates with a non-operator server to handle call routing. The claims are distinguished primarily by reciting a "wireless handheld cellular phone device" rather than a more generic "wireless device." (’154 Patent, Abstract; col. 3:55-4:45).
• Technical Importance: As with the parent patent, the invention provides a technical foundation for over-the-top communication services that operate independently of a carrier's core call-processing infrastructure. (’154 Patent, col. 2:41-51).

Key Claims at a Glance

• The complaint asserts independent claims 1, 22, 23, and 24 (Compl. ¶¶26, 29, 31, 33).
• The essential elements of independent method claim 1 are:
  • A method of enabling a "wireless handheld cellular phone device" to initiate a network connection without using an HLR.
  • The device uses a downloadable software "module" to contact a server.
  • The module sends data to the server defining a "call request."
  • In response, a server-side application decides on the routing to an end-user without using the HLR.
• The complaint also asserts dependent claim 11 (Compl. ¶28).

U.S. Patent No. 9,369,575 - "DYNAMIC VOIP LOCATION SYSTEM"

• Patent Identification: U.S. Patent No. 9,369,575, issued June 14, 2016.
• Technology Synopsis: The ’575 Patent describes a system for dynamically determining, reporting, and updating the VoIP location (e.g., IP address) of a wireless device. A software module on the device authenticates and connects with a server at certain time intervals to report its current "VoIP address or return path," which the server stores in a database to ensure a reliable connection can be maintained as the device moves between different networks (e.g., from cellular to Wi-Fi). (’575 Patent, Abstract; col. 2:30-4:67).
• Asserted Claims: The complaint asserts claim 1 (Compl. ¶¶40-42).
• Accused Features: The complaint alleges the HCL Sametime Application utilizes a system for determining a device's VoIP location by extracting and storing its IP address in a database, using a downloadable software module that polls a server at regular intervals to authenticate and connect. (Compl. ¶¶101, 106).

U.S. Patent No. 9,591,551 - "METHOD OF ENABLING A WIRELESS DEVICE TO MAKE A NETWORK CONNECTION WITHOUT USING A NETWORK OPERATOR'S HOME LOCATION REGISTER"

• Patent Identification: U.S. Patent No. 9,591,551, issued March 7, 2017.
• Technology Synopsis: The ’551 Patent, also in the same family as the ’512 and ’154 patents, claims a "computer program product" (i.e., a non-transitory storage medium). The product contains software instructions that, when executed on a wireless device, cause it to perform the patented method of contacting a server to initiate a network connection without relying on a network operator's HLR. (’551 Patent, Abstract; col. 1:15-2:54).
• Asserted Claims: The complaint asserts independent claims 1, 22, 23, and 24 (Compl. ¶¶47, 56, 58, 60).
• Accused Features: Plaintiff alleges the HCL Sametime software is a computer program product that, when executed, performs the claimed steps. This allegedly includes contacting a server to initiate a connection (e.g., a SIP Invite) and having the server decide on call routing, all without using a network operator's HLR. (Compl. ¶¶111-114).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant's "HCL Sametime" communications software, which the complaint refers to as the "Accused Product" or "Accused Application" (Compl. ¶¶63, 79, 99).

Functionality and Market Context

The complaint alleges that HCL Sametime is a software application for devices such as smartphones that enables voice and data communication over an IP network (Compl. ¶¶65, 102). The core accused functionality involves a client application on a user's device that communicates with an HCL Sametime server to initiate and route calls (e.g., via a SIP Invite) to other users, allegedly bypassing the traditional cellular operator's Home Location Register (HLR) for call routing (Compl. ¶¶65-68). The system is also alleged to determine and collect the IP addresses of user devices to maintain a persistent connection as users move between networks (Compl. ¶101). The complaint does not provide detail regarding the product's specific market position or commercial success beyond general allegations that Defendant commercializes it (Compl. ¶21).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint. The complaint references claim chart exhibits (Exhibits E, F, G, H) but does not include them in the filing. The infringement allegations are therefore drawn from the narrative paragraphs of the complaint.

• Summary of Allegations for the ’512 and ’154 Patents:
  The complaint alleges that the HCL Sametime software system infringes the ’512 and ’154 patents. The theory posits that a smartphone running the HCL Sametime application meets the "wireless device" and "wireless handheld cellular phone device" limitations (Compl. ¶¶66, 82). The HCL Sametime application itself is identified as the claimed downloadable software "module" (Compl. ¶¶66, 82). This module is alleged to contact an HCL Sametime server over a wireless link (e.g., Wi-Fi or cellular data) and send it data defining a "call request," which the complaint equates to a SIP Invite signal (Compl. ¶¶67, 83). Finally, the complaint alleges that a software application (e.g., a SIP proxy) running on the HCL server decides on the appropriate call routing to another HCL Sametime user "without using the network operator's home or visitor location register" (Compl. ¶¶68, 84).

• Identified Points of Contention:

  • Scope Questions: A central issue may be whether the term "without using a network operator's home location register" applies to the accused system. While an over-the-top application like HCL Sametime may make its own call routing decisions without querying the HLR, the underlying device must still authenticate with the carrier's network to establish a data connection, a process that typically involves the HLR (or its modern equivalent, the HSS). The dispute may focus on whether the claim requires complete independence from the HLR, or only independence for the specific task of routing the call.
  • Technical Questions: The patents have a 2006 priority date, and the specifications contemplate using protocols like SMS or HTTP for the "call request" (’512 Patent, Abstract). The complaint maps this element to a "SIP Invite" in a modern IP-based system (Compl. ¶65). A technical question for the court will be whether a SIP Invite, which is part of a comprehensive session management protocol, functions as the "data that defines a call request" in the manner contemplated by the patents, or if there is a fundamental operational difference.

V. Key Claim Terms for Construction

• The Term: "without using a network operator's home location register" (’512 Patent, Claim 1)

  • Context and Importance: This negative limitation is the core of the invention and its construction is critical. The infringement analysis for the ’512, ’154, and ’551 patents depends on whether the accused HCL Sametime system, which operates "over the top" of a carrier's data network, is deemed to function "without using" the HLR.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue the term applies to any system where the call routing decision is made independently of the HLR. The specification contrasts the invention with conventional systems where operators "control their own HLR, which can be thought of as the gateway into the mobile communications system" for call control, suggesting the invention's focus is on bypassing this specific gateway function. (’512 Patent, col. 2:41-44).
    • Evidence for a Narrower Interpretation: A party could argue the term requires complete disassociation from the HLR for the entire communication. Since a device using a carrier's cellular data service must first register with the network—a process that involves the HLR—it could be argued that the accused product inherently "uses" the HLR to establish the underlying data channel over which the application operates.

• The Term: "a module that is responsible for contacting a server to communicate with the server" (’512 Patent, Claim 1)

  • Context and Importance: This term defines the client-side software component. The complaint identifies the HCL Sametime application as this "module" (Compl. ¶66). Practitioners may focus on this term to dispute whether a monolithic application that performs many functions meets the definition of a "module" whose responsibility is "contacting a server."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the "proprietary applications module (PAM)" as having numerous sub-modules for various functions, such as location updates and call setup, suggesting "module" can encompass a complex piece of software with multiple responsibilities. (’512 Patent, FIG. 6-10; col. 7:51-8:6).
    • Evidence for a Narrower Interpretation: The claim language recites a module "that is responsible for contacting a server," which could be construed to mean its primary or sole purpose. A party might argue that if an application's main purpose is user interface management, chat, and presence, its function of "contacting a server" is merely incidental to its broader responsibilities and does not define it as the claimed "module."

VI. Other Allegations

• Indirect Infringement: The complaint makes a general allegation of induced infringement, stating Defendant encourages infringement and knows its actions result in direct infringement by others (Compl. ¶139). No specific factual basis, such as citations to user manuals or marketing materials, is provided.
• Willful Infringement: The complaint alleges Defendant has had knowledge of its infringement "at least as of the service of the present Complaint" (Compl. ¶137). This allegation appears to support a claim for post-filing willfulness only and does not allege pre-suit knowledge.

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

• A core issue will be one of definitional scope: can the negative limitation "without using a network operator's home location register," which is central to three of the four asserted patents, be construed to read on an over-the-top application that operates on a cellular data connection that itself requires HLR authentication to be established? The outcome will likely depend on whether "using" is interpreted to mean for the specific purpose of call routing, or for any purpose related to the communication.
• A key evidentiary question will be one of technological translation: do the claims, drafted in a mid-200s context where SMS and HTTP were envisioned as control channels, cover modern, fully IP-based systems using protocols like SIP? The case may turn on whether the accused product's operation is functionally equivalent to the specific embodiments and methods disclosed in the patents, or if there is a fundamental mismatch in technical operation due to technological evolution.
• A third question relates to the relationship between the patents: the ’575 Patent focuses on dynamically updating a device's VoIP location, while the other three patents focus on bypassing the HLR for call setup. The court will need to analyze whether the accused HCL Sametime system, as a whole, practices the distinct inventions of both patent subgroups or if the infringement theories are conflating separate concepts.