DCT

1:22-cv-05556

Coretek Licensing LLC v. SoftBank Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-05556, S.D.N.Y., 06/29/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant, a Delaware corporation, maintains a regular and established place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s “Line” communications software infringes four patents generally directed to methods for enabling wireless devices to establish network connections by bypassing a traditional cellular network operator's Home Location Register (HLR).
  • Technical Context: The patents relate to the field of over-the-top (OTT) communication services, such as Voice over IP (VoIP), which allow users to make calls and send messages over the internet, thereby circumventing the infrastructure and associated toll systems of conventional mobile network operators.
  • Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date Event
2006-03-07 Earliest Priority Date for ’512, ’154, ’551 Patents
2011-04-04 Earliest Priority Date for ’575 Patent
2014-10-14 U.S. Patent No. 8,861,512 Issues
2015-10-27 U.S. Patent No. 9,173,154 Issues
2016-06-14 U.S. Patent No. 9,369,575 Issues
2017-03-07 U.S. Patent No. 9,591,551 Issues
2022-06-29 Complaint Filed

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”

  • The Invention Explained:
    • Problem Addressed: The patent describes a market where wireless device users are economically constrained by the services and tariffs of their home network operator (’512 Patent, col. 1:49-61). This control is enforced by the Home Location Register (HLR), a central database that authenticates subscribers and manages call routing, thereby limiting user choice and competition (’512 Patent, col. 1:62-col. 2:3).
    • The Patented Solution: The invention proposes a method where a downloadable software "module" on a wireless device bypasses the HLR to initiate a connection (’512 Patent, col. 2:51-54). The module sends a call request directly to a third-party server using protocols like SMS or HTTP over the internet (’512 Patent, col. 2:57-61). This server, rather than the HLR, then determines the appropriate and lowest-cost routing for the call over all available networks (’512 Patent, Abstract; col. 4:39-42).
    • Technical Importance: This architecture provided a technical framework for over-the-top (OTT) services to operate independently of a mobile carrier's core HLR-based routing infrastructure, enabling greater flexibility and cost competition. (’512 Patent, col.2:4-7).
  • Key Claims at a Glance:
    • The complaint asserts independent claims 1 (a method), 23 (a system), and 24 (a server) (Compl. ¶25).
    • Independent Claim 1 recites a method of enabling a wireless device to initiate a network connection without using a network operator's HLR, comprising the steps of:
      • The wireless device using a downloadable software module to contact a server over a wireless link.
      • The wireless device using the module to send data defining a call request to the server.
      • A software application on the server deciding on the appropriate routing for the call request over available networks without using the network operator's HLR.
    • The complaint reserves the right to assert additional claims, including dependent claims 4, 5, 8, and 12 (Compl. ¶25).

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”

  • The Invention Explained:
    • Problem Addressed: As a continuation of the application leading to the '512 patent, the ’154 Patent addresses the same problem: the economic and technical limitations imposed on users by reliance on a single mobile network operator's HLR for call routing and services (’154 Patent, col. 1:49-61).
    • The Patented Solution: The patented solution is substantively identical to that of the ’512 Patent, describing a downloadable module on a device that communicates with a server to establish a connection, with the server making routing decisions to bypass the HLR (’154 Patent, col. 2:55-61). The claims of the ’154 Patent are specifically directed to a "wireless handheld cellular phone device" (’154 Patent, cl. 1).
    • Technical Importance: This technology represents a specific application of the broader OTT concept to the ubiquitous platform of handheld cellular phones. (’154 Patent, col. 1:26-31).
  • Key Claims at a Glance:
    • The complaint asserts independent claims 1 (a method), 22 (a system), 23 (a server), and 24 (a computer program product) (Compl. ¶42).
    • Independent Claim 1 recites a method of enabling a "wireless handheld cellular phone device" to initiate a connection without using an HLR, comprising the steps of:
      • The device using a downloadable software module to contact a server.
      • The device using the module to send a call request to the server.
      • A server-side application deciding on routing for the call request without using the network operator's HLR.
    • The complaint reserves the right to assert additional claims, including dependent claims 3, 4, 7, and 11 (Compl. ¶42).

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

  • Technology Synopsis: This patent addresses the problem of reliably determining the current IP address ("VoIP location") of a mobile device for VoIP communications, which is difficult and power-intensive as devices switch between networks (e.g., Wi-Fi and cellular) (’575 Patent, col. 1:26-44, col. 2:15-21). The invention is a system where a client-side module periodically reports the device's current IP address to a server, which maintains an updated database of device locations for reliable connection routing (’575 Patent, Abstract).
  • Asserted Claims: Independent claim 1 (Compl. ¶49).
  • Accused Features: The complaint alleges that the Line application, when installed on a user device, and the associated Line server together form a system that dynamically detects, extracts, and reports the device's IP address to a central database to facilitate VoIP calling (Compl. ¶¶134-138).

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”

  • Technology Synopsis: Sharing a specification with the ’512 and ’154 patents, this patent also describes a system for bypassing a mobile operator's HLR. A downloadable module on a device sends a call request to a server, which then determines the optimal routing over available networks (’551 Patent, Abstract).
  • Asserted Claims: Independent claims 1 (a computer program product), 22 (a method), 23 (a system), and 24 (a server) (Compl. ¶71).
  • Accused Features: The complaint alleges that the Line application, as a computer program product on a smartphone, executes to contact a Line server to initiate a network connection (e.g., a SIP/VoIP invite) over an IP network, thereby bypassing the cellular operator's HLR (Compl. ¶¶144, 158).

III. The Accused Instrumentality

Product Identification

  • The accused product is the “Line Corporation – Line” communications software, identified as a smartphone application and its associated server infrastructure (the "Accused Product" or "Accused Instrumentality") (Compl. ¶¶72, 100, 132, 142).

Functionality and Market Context

  • The complaint alleges the Accused Product is a communications application that enables users to make VoIP calls and send messages over IP networks such as Wi-Fi or a cellular data network (Compl. ¶¶74, 102).
  • Functionally, a user's device with the Line application (the "module") allegedly communicates with a "Line Mobile Server" to initiate a call (e.g., a SIP/VoIP Invite) (Compl. ¶75). This process is alleged to bypass the traditional mobile network operator's Home Location Register (HLR) (Compl. ¶74).
  • The "Line Mobile Server" is alleged to function as a "calls manager," receiving the call request and deciding on the appropriate routing to connect the call to another Line user (Compl. ¶77).
  • The complaint also alleges that the Line system dynamically determines and collects the IP address of user devices to facilitate these VoIP connections (Compl. ¶134).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

8,861,512 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of enabling a wireless device, located in a region, to initiate a network connection without using a network operator's home location register that covers that region The Accused Product uses the Internet/IP network for calling, which allegedly bypasses the network operator's HLR. ¶74 col. 2:51-54
(a) the wireless device using a module that is responsible for contacting a server to communicate with the server over a wireless link, wherein the device includes the module that is implemented as software and that is downloadable to the device A smartphone uses the downloadable "Line Mobile application" to contact a "Line Mobile Server" over a Wi-Fi link. ¶75 col. 3:8-12
(b) the wireless device using the module to send, over the wireless link, data to the server that defines a call request The smartphone uses the Line application to send a call request (e.g., an Invite signal) over a Wi-Fi link to the Line Mobile Server. ¶76 col. 2:54-55
(c) in response to the call request, a software application running on the server deciding on the appropriate routing to a third party end-user over all available networks for that call request without using the network operator's home or visitor location register. Software on the Line Mobile Server (SIP/VoIP proxy Server) receives the invite signal and routes the call to another Line user without using the network operator's HLR. ¶77 col. 2:55-59
  • Identified Points of Contention (’512 Patent):
    • Scope Question: A central question will be the construction of the phrase "without using a network operator's home location register." Defendant may argue that even in an OTT call, the device's initial access to the cellular data network involves some level of interaction with the HLR for authentication or session establishment, raising the question of whether the accused method is truly "without using" the HLR as claimed.
    • Technical Question: What evidence demonstrates that the "Line Mobile Server" performs the claimed step of "deciding on the appropriate routing"? The court may need to determine if standard IP-based routing in the accused system is equivalent to the specific, HLR-avoiding routing decision described in the patent.

9,173,154 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of enabling a wireless handheld cellular phone device... to initiate a network connection without using a network operator's home location register... The Accused Product, running on a smartphone, uses an IP network for calling, which allegedly bypasses the network operator's HLR. ¶102 col. 2:55-58
(a) the wireless handheld cellular phone device using a module that is... downloadable to the wireless handheld cellular phone device A smartphone uses the downloadable Line Mobile application to contact the Line Mobile Server over a wireless link (e.g., Wi-Fi). ¶103 col. 3:11-14
(b) the wireless handheld cellular phone device using the module to send... data to the server that defines a call request The smartphone uses the Line application to send an "Invite signal" to the Line Mobile Server. ¶104 col. 2:58-59
(c) in response to the call request, a software application running on the server deciding on the appropriate routing to a 3rd party end-user... without using the network operator's home or visitor location register. Software on the Line Mobile Server routes the call to another Line user without using the HLR. ¶105 col. 2:59-63
  • Identified Points of Contention (’154 Patent):
    • Scope Question: As with the ’512 patent, the meaning of "without using a network operator's home location register" will be a focal point.
    • Technical Question: The complaint's allegations for the ’154 patent are nearly identical to those for the ’512 patent. The key factual question remains whether the accused Line architecture performs the specific functions claimed, or if there is a technical distinction between standard VoIP call flows and the patented method.

V. Key Claim Terms for Construction

  • Term (from ’512 and ’154 Patents): "without using a network operator's home location register"

    • Context and Importance: This negative limitation is the central inventive concept of the ’512 and ’154 patents and is crucial for determining infringement. Practitioners may focus on this term because the entire infringement theory rests on whether the accused Line system, which uses IP networks for calls, operates "without using" the HLR in the manner required by the claims. The outcome will likely depend on the degree of separation from the HLR that is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The Summary of the Invention states, "a wireless device can initiate a network connection without using a network operator's home location register (HLR)," and that the server can receive communications using protocols like SMS or HTTP, suggesting the key is simply avoiding the HLR's traditional role in call routing, not total isolation. (’512 Patent, col. 2:51-61).
      • Evidence for a Narrower Interpretation: The Background section extensively details the HLR's functions, including its role in authenticating subscribers for any service. (’512 Patent, col. 2:4-17). A defendant could argue that because a device must first authenticate with the network (an HLR-related function) to get an IP address for data services, the accused method does not operate entirely "without using" the HLR.

  • Term (from ’512 and ’154 Patents): "module"

    • Context and Importance: The "module" is the client-side component that enables the patented method. Its definition is important because the infringement allegation maps this term to the "Line Mobile application." Practitioners may focus on whether the Line app contains the specific sub-components and performs the specific functions described for the "proprietary applications module (PAM)" in the specification.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims describe the module functionally as being "responsible for contacting a server" and being "implemented as software... downloadable to the device," suggesting any downloadable app that performs this function could qualify. (’512 Patent, cl. 1).
      • Evidence for a Narrower Interpretation: The detailed description outlines a "proprietary applications module (PAM)" with numerous specific sub-modules for functions like location updates, international call set-up, and local call set-up. (’512 Patent, col. 9:41-52; FIGS. 6-10). A defendant could argue that for the accused Line app to be a "module," it must contain the specific structure and sub-modules detailed in the specification's embodiments, not just the high-level function.

VI. Other Allegations

  • Indirect Infringement: For all four patents, the complaint alleges that Defendant induced infringement by "encouraging infringement" (Compl. ¶¶94, 126, 174). The complaint does not plead specific underlying facts, such as references to user manuals or marketing materials that instruct users on how to perform the infringing acts.
  • Willful Infringement: The complaint alleges that Defendant has had knowledge of infringement for each patent "at least as of the service of the present Complaint" (Compl. ¶¶92, 124, 172). This appears to be a claim for post-filing willfulness, supported by a prayer for enhanced damages (Compl. p. 40). No facts suggesting pre-suit knowledge are alleged.

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

  1. A central issue will be one of claim scope: what degree of technical separation is required by the limitation "without using a network operator's home location register"? The case may turn on whether this phrase means merely bypassing the HLR for call routing decisions, or if it requires complete isolation from all HLR-related functions, including the initial network authentication needed to obtain an IP address for data services.
  2. A second key issue will be a question of technical and functional equivalence: does the accused "Line" application and server architecture perform the specific functions claimed in the patents? The court will likely need to compare the detailed operation of the accused VoIP system against the specific steps of the server "deciding on the appropriate routing" and the client "module" initiating contact, as described in the patent specifications, to determine if there is a genuine technical overlap or a fundamental mismatch.