DCT
1:21-cv-00718
Schei v. AT&T Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Network Apps, LLC (Washington)
- Defendant: AT&T Inc. (Delaware)
- Plaintiff’s Counsel: Ross LLP; Lazare Potter Giacovas & Moyle LLP; Cadwell Clonts Reeder & Thomas LLP
- Case Identification: 1:21-cv-00718, S.D.N.Y., 03/04/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain a regular and established place of business in the district and have committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s NumberSync service, which allows users to share a single phone number across multiple devices, infringes a patent related to telephone number grouping technology.
- Technical Context: The technology addresses the challenge of synchronizing multiple telecommunication devices, such as a smartphone and a smartwatch, to a single user identity (phone number) for calls and texts, a key feature in the modern mobile ecosystem.
- Key Procedural History: The complaint alleges a prior business relationship where Plaintiff's predecessor, Mya Number, was hired by AT&T to develop the "Twinning Solution" under various agreements. Plaintiff claims AT&T terminated the relationship, misappropriated the technology to launch its own "NumberSync" service, and failed to pay agreed-upon royalties. The complaint also asserts AT&T was on notice of the patent-in-suit due to a prior lawsuit filed in 2016 and that AT&T improperly named its own employees as inventors on a related patent.
Case Timeline
| Date | Event |
|---|---|
| 2012-11-28 | AT&T and Mya Number enter into a Limited Application Programming Interface Usage Agreement |
| 2013-10-07 | AT&T allegedly contacts Mya Number to create and license "Twinning Solution" |
| 2014-01-08 | Mya Number demonstrates its NumberSync Grouping, Call Delivery, and Messaging Services Platform |
| 2014-06-27 | Mya Number and AT&T enter into a Professional Services Agreement and Statement of Work |
| 2014-10-23 | AT&T allegedly informs Mya Number it would no longer pursue the launch of the service |
| 2014-10-27 | Priority Date for U.S. Patent No. 9,438,728 |
| 2014-11-07 | AT&T files application for what becomes the '462 Patent |
| 2015-10-01 | Approximate launch of AT&T NumberSync service |
| 2016-09-06 | U.S. Patent No. 9,438,728 Issues |
| 2016-12-03 | Plaintiff files a previous lawsuit against AT&T, allegedly providing notice of the '728 Patent |
| 2017-08-01 | U.S. Patent No. 9,723,462 Issues to AT&T |
| 2024-03-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,438,728 - Telephone Number Grouping Service for Telephone Service Providers
- Issued: September 6, 2016
The Invention Explained
- Problem Addressed: The patent's background section describes the growing problem of a single person possessing multiple mobile communication devices (e.g., a smartphone and a wearable device), each with its own unique telephone number, which creates confusion for callers and inconvenience for the user ('728 Patent, col. 1:30-41). Previous solutions were seen as "inefficient, ineffective and/or have undesirable side effects," such as requiring devices to be in close physical proximity ('728 Patent, col. 1:42-47).
- The Patented Solution: The invention proposes a "telephone number grouping service" that works with a telephone service provider's network to manage a group of numbers associated with a user's multiple devices ('728 Patent, Abstract). This service can receive "at least partially delegate[d] telephone service control" from the provider, allowing it to intercept calls and messages ('728 Patent, col. 3:4-8). For an incoming call to a user's primary number, the service can "fork" the call to multiple devices simultaneously; for an outgoing call from a secondary device, it can "mask" the call to make it appear as if it originated from the user's primary number ('728 Patent, col. 2:50-59).
- Technical Importance: This approach enabled devices to be truly independent of one another, allowing a user to, for example, leave their primary smartphone at home and still make and receive calls on a smartwatch using their main, recognizable phone number (Compl. ¶115).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, and 17 (Compl. ¶148).
- Independent Claim 1 (Method) recites steps for:
- Provisioning multiple telephone numbers to distinct physical devices.
- Registering at least two of those numbers with a "telephone number grouping service."
- Providing "at least partial call control" from the telephone service provider to the grouping service.
- Activating one or more grouped devices for incoming calls according to a policy.
- Causing an outgoing call to appear to originate from a selected number according to a policy.
- Independent Claim 8 (Method) recites steps performed by a grouping service, including registering numbers, receiving partial service control, and processing service activity so outgoing calls appear to originate from a single number and incoming calls are forwarded to one or more devices.
- Independent Claim 17 (System) recites a system comprising: a user interface component for registering numbers, a telephone service provider interface for receiving partial service control, and a telephone service activity handling component for processing calls and messages according to a policy.
- The complaint reserves the right to assert additional claims (Compl. ¶148).
III. The Accused Instrumentality
Product Identification
- The accused service is AT&T NumberSync (Compl. ¶82).
Functionality and Market Context
- The complaint alleges that AT&T NumberSync allows customers to "use your smartphone number on any compatible device," including wearables and tablets (Compl. ¶149). This enables a user to "make and receive calls and texts from whichever synced device you choose," with outgoing calls appearing to originate from the user's primary smartphone number, regardless of which device is used (Compl. ¶149). A screenshot from an AT&T webpage illustrates these marketing claims. (Compl. p. 39).
- The complaint frames NumberSync as a "standard value-add for all its subscribers" and a key enabling technology for the connected wearables market, which AT&T allegedly launched after terminating its collaboration with Plaintiff's predecessor on a nearly identical solution (Compl. ¶¶81-82).
IV. Analysis of Infringement Allegations
Infringement Allegations: U.S. Patent No. 9,438,728
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| provisioning, by a telephone service provider, a plurality of telephone numbers including associating each... with a distinct physical telephone service user device... | AT&T provides unique telephone numbers for a user's smartphone and a user's smartwatch. | ¶150 | col. 2:41-46 |
| registering, with a telephone number grouping service, at least two telephone numbers... as grouped telephone numbers... | AT&T's NumberSync groups together a user's smartphone number and smartwatch number. | ¶150 | col. 3:9-12 |
| providing, by the telephone service provider to the telephone number grouping service, at least partial call control for incoming and outgoing telephone calls... | NumberSync controls the user's telephone numbers such that incoming and outgoing calls from the same number can be made on multiple devices. | ¶150 | col. 4:30-39 |
| with respect to incoming telephone calls... activating one or more of the grouped... devices... in accordance with a grouped telephone number incoming call policy... | NumberSync allows for simultaneous ringing of a user's smartphone and smartwatch when a call is received to the user's main number. | ¶150 | col. 6:38-43 |
| with respect to an outgoing telephone call... causing the outgoing telephone call to appear to originate from a selected telephone number... in accordance with a grouped telephone number outgoing call policy... | NumberSync allows for all calls originating from a user's smartphone or smartwatch to appear as if they come from the user's main number. | ¶150 | col. 6:50-65 |
Identified Points of Contention
- Scope Questions: The case may raise the question of whether AT&T's integrated NumberSync feature constitutes a separate "telephone number grouping service" to which AT&T, as the "telephone service provider," delegates "at least partial call control." The dispute may center on whether the accused system embodies the two-part, delegated-control architecture required by the claims, or if it operates as a single, unified system that does not map onto the claim limitations.
- Technical Questions: What evidence does the complaint provide that the accused AT&T system performs a distinct "providing" step where "partial call control" is transferred from one logical entity (the provider) to another (the grouping service)? The infringement allegations are based primarily on the system's external functionality as described in marketing materials, which may not resolve the underlying technical architecture.
V. Key Claim Terms for Construction
The Term: "telephone number grouping service"
- Context and Importance: This term is the central component of the claimed invention. The outcome of the case may depend on whether AT&T's NumberSync system is found to be a "telephone number grouping service." Practitioners may focus on this term because the patent was developed in the context of a third-party ("over-the-top") provider, Mya Number, creating a service for a carrier, AT&T, which may influence how a court views a system that is implemented internally by the carrier itself.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the grouping service "may be implemented with one or more components... located in a telephone service provider network..., independent of telephone service provider networks (e.g., at "cloud" hosted servers), and/or... on a telephone service user device" ('728 Patent, col. 3:11-18). This language may support a broad construction that covers various technical architectures.
- Evidence for a Narrower Interpretation: The figures and detailed description consistently depict the "Grouping Service" as a logically separate component from the carrier's core "telecom switches" and "internal network" ('728 Patent, Fig. 2; Fig. 4). The concept of delegating control from the provider to the service may support a narrower construction requiring a distinct architectural separation between the two.
The Term: "at least partial call control"
- Context and Importance: This term defines the relationship and the technical interaction between the telephone service provider and the grouping service. Infringement requires a finding that AT&T's system performs this specific delegation of control.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes delegation as potentially including "interception and/or forwarding of telephone calls and/or short message service (SMS) messages" ('728 Patent, col. 4:37-40). This could be interpreted broadly to encompass any function that redirects call or message routing based on user-defined rules.
- Evidence for a Narrower Interpretation: The examples in the patent, such as the service "fork[ing] the call into two new calls" (col. 6:41-42), suggest an active, specific modification of telephony signals. This could support a narrower definition that requires more than just applying routing logic within a unified system, but an actual hand-off of control to a separate process.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement, stating that AT&T "directs, instructs, and supports" its customers to use NumberSync in an infringing manner through its websites and user interfaces (Compl. ¶152). It also alleges contributory infringement, claiming NumberSync has special features with no substantial non-infringing use (Compl. ¶153).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the '728 Patent. The complaint specifically cites a previous lawsuit filed against AT&T on December 3, 2016, as the date by which AT&T was on notice of the patent (Compl. ¶155).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of architectural mapping: Does the internal architecture of AT&T's NumberSync system align with the claimed structure of a "telephone service provider" that "provid[es]" or "delegate[s]" "at least partial call control" to a distinct "telephone number grouping service"? Or does the accused system operate as a single, integrated platform where such a delegation does not occur?
- The case will also turn on a key evidentiary question: Beyond marketing materials describing the service's user-facing features, what technical evidence will be presented to prove (or disprove) that the specific internal operations of NumberSync, such as call forking and number masking, are performed in the manner required by the patent's claims?