DCT
1:22-cv-10111
Coretek Licensing LLC v. Ableto Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coretek Licensing LLC (Texas)
- Defendant: AbleTo, Inc. (Delaware)
- Plaintiff’s Counsel: SAND, SEBOLT & WERNOW CO., LPA
- Case Identification: 1:22-cv-10111, S.D.N.Y., 11/29/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant resides in the district through a regular and established place of business.
- Core Dispute: Plaintiff alleges that Defendant’s "AbleTo App" communications software infringes four patents related to methods for enabling wireless devices to initiate network connections (e.g., VoIP calls) by bypassing a traditional mobile network operator's Home Location Register (HLR) and for dynamically determining a device's network location.
- Technical Context: The technology at issue concerns over-the-top (OTT) communication services, which use internet protocol to route calls and messages, operating independently of the core infrastructure of traditional mobile network operators.
- Key Procedural History: The asserted patents are related, with U.S. Patent Nos. 9,173,154 and 9,591,551 being continuations of the application that issued as U.S. Patent No. 8,861,512. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history concerning the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-07 | Priority Date for ’512, ’154, and ’551 Patents |
| 2011-04-04 | Priority Date for ’575 Patent |
| 2014-10-14 | ’512 Patent Issued |
| 2015-10-27 | ’154 Patent Issued |
| 2016-06-14 | ’575 Patent Issued |
| 2017-03-07 | ’551 Patent Issued |
| 2022-11-29 | 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"
- Issued: October 14, 2014
The Invention Explained
- Problem Addressed: The patent’s background describes how wireless users are typically restricted to the network of their subscribed operator, which controls access and services through a Home Location Register (HLR). This limits user choice and can lead to high costs, particularly when roaming, because the operator has little economic incentive to allow users to access cheaper, alternative networks. (’512 Patent, col. 1:40-65).
- The Patented Solution: The invention proposes a system where a software "module" on a wireless device communicates directly with an independent server to initiate a call, rather than going through the mobile operator’s HLR. The server receives a call request from the device's module and then decides on the most appropriate routing for the call over any available network (e.g., selecting for lowest cost), effectively decoupling the call routing process from the user's primary mobile operator. (’512 Patent, Abstract; col. 2:51-61).
- Technical Importance: This architecture was aimed at enabling new business models, such as "internet mobile virtual network operators" (IMVNOs), that could offer more competitive services by bypassing the infrastructure and control of incumbent network operators. (’512 Patent, col. 8:35-49).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a method), 23 (a system), and 24 (a server) (Compl. ¶¶24, 72).
- Independent Claim 1, a method claim, recites the core steps of the invention:
- A wireless device uses a downloadable software module to contact a server over a wireless link.
- The wireless device, via the module, sends data defining a call request to the server.
- In response, a software application on the server determines the routing for the call to a third-party end-user over available networks, all performed without using the network operator's home or visitor location register.
- The complaint reserves the right to assert additional claims (Compl. ¶¶24, 98).
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"
- Issued: October 27, 2015
The Invention Explained
- Problem Addressed: As a continuation of the application for the ’512 patent, the ’154 patent addresses the same technical problem: the restrictions and costs imposed on users by the control that mobile network operators exert through their Home Location Registers (HLRs). (’154 Patent, col. 1:47-col. 2:2).
- The Patented Solution: The patented solution is architecturally identical to that of the ’512 patent, describing a client-server system for initiating calls without using an HLR. The primary distinction in the independent claims is the explicit focus on a "wireless handheld cellular phone device" as the client device. (’154 Patent, Abstract; col. 2:55-65).
- Technical Importance: The technology's stated importance is to empower end-users and "virtual mobile network operators" with the freedom to choose optimal call routing, thereby introducing more competition and flexibility into the telecommunications market. (’154 Patent, col. 8:40-52).
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. ¶¶41, 100).
- Independent Claim 1, a method claim, recites the following key elements:
- A method for 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 device sends a call request to the server via the module.
- A server-side application decides on the appropriate routing for the call without using the HLR.
- The complaint reserves the right to pursue infringement under other claims (Compl. ¶¶41, 130).
U.S. Patent No. 9,369,575 - "DYNAMIC VOIP LOCATION SYSTEM"
- Issued: June 14, 2016
- Technology Synopsis: This patent addresses the technical challenge of reliably determining and updating the network location (i.e., the "VoIP address or return path") of a wireless device to facilitate VoIP communications. The patented solution is a system where a software module on a device periodically authenticates with a server and reports its location, particularly upon changes in network connectivity, allowing the server to maintain an accurate database for dynamically routing calls while minimizing device power consumption. (’575 Patent, Abstract; col. 2:30-50).
- Asserted Claims: The complaint asserts independent claim 1 (a system) (Compl. ¶48).
- Accused Features: The complaint alleges that the AbleTo App and server infrastructure create a system for dynamically detecting the IP address of a user's device, storing it in databases, and using that information to route VoIP calls between users, thereby practicing the claimed invention (Compl. ¶¶133-138).
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"
- Issued: March 7, 2017
- Technology Synopsis: This patent, also in the same family as the ’512 and ’154 patents, claims the HLR-bypass technology in the form of a computer program product. The invention is a program on a non-transitory medium that, when executed on a wireless device, configures it to contact a server with a call request, which the server then routes over available networks without using the mobile operator's HLR. (’551 Patent, Abstract; col. 2:51-61).
- Asserted Claims: The complaint asserts independent claims 1 (a computer program product), 22 (a method), 23 (a system), and 24 (a server) (Compl. ¶¶70, 143).
- Accused Features: The complaint alleges that the "AbleTo App" is a computer program product that, when executing on a smartphone, initiates calls by contacting an AbleTo server and bypassing the operator's HLR, thereby infringing the patent (Compl. ¶¶144, 147).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s "AbleTo App," a communications software application, and its associated back-end infrastructure, referred to as the "AbleTo Server" (Compl. ¶¶71, 74, 99).
Functionality and Market Context
- The AbleTo App is described as a software application for smartphones that provides communications services (Compl. ¶¶71, 131). It allegedly operates by using internet or IP-based networks, such as Wi-Fi, for calling (Compl. ¶73). The system architecture involves the app on a user's device (e.g., a smartphone) sending a call initiation signal, such as a SIP/VoIP Invite, to a server operated by AbleTo (Compl. ¶75). This server then routes the call to the intended recipient, allegedly without using a traditional mobile network operator's Home Location Register (HLR) (Compl. ¶76). The system also allegedly collects and stores the IP addresses of user devices in databases to facilitate this call routing (Compl. ¶137).
- The complaint does not provide sufficient detail for analysis of the product's commercial importance or market positioning beyond stating that Defendant derives revenue from its website and related systems (Compl. ¶4).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’512 Patent 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 or an IP network for calling, which allegedly bypasses the network operator's home location register (HLR). | ¶73 | col. 17:21-27 |
| (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 "AbleTo application" (module) to contact the "AbleTo Server" over a wireless link (e.g., Wi-Fi). | ¶74 | col. 17:28-34 |
| (b) the wireless device using the module to send, over the wireless link, data to the server that defines a call request; | The smartphone, using the AbleTo application, sends data defining a call request (e.g., an "Invite signal") to the AbleTo Server over a wireless link. | ¶75 | col. 17:35-37 |
| (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. | A software application on the AbleTo Server (e.g., a SIP/VoIP proxy server) decides on the routing of the call to another end-user without using the network operator's HLR. | ¶76 | col. 17:38-46 |
’154 Patent 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, 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, running on a smartphone, uses an Internet or IP network for calling, which allegedly bypasses the network operator's HLR. | ¶101 | col. 17:29-35 |
| (a) the wireless handheld cellular phone device using a module that is responsible for contacting a server... wherein the... module that is implemented as software and that is downloadable... | The smartphone uses the downloadable "AbleTo application" (module) to contact the "AbleTo Server" over a wireless link (e.g., Wi-Fi). | ¶102 | col. 17:36-43 |
| (b) the wireless handheld cellular phone device using the module to send, over the wireless link, data to the server that defines a call request; | The smartphone, using the AbleTo application, sends data defining a call request (e.g., an "Invite signal") to the AbleTo Server over a wireless link. | ¶103 | col. 17:44-47 |
| (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. | A software application on the AbleTo Server decides on the routing of the call to another end-user without using the network operator's HLR. | ¶104 | col. 17:48-55 |
Identified Points of Contention
- Scope Questions: A central question for the '512, '154, and '551 patents is whether the phrase "without using a network operator's home location register" can be construed to read on modern over-the-top (OTT) applications. The patents’ specifications heavily frame the invention as an alternative to the traditional cellular roaming architecture (HLR, VLR, SS7). A dispute may arise over whether a standalone VoIP app, which is architecturally independent of the HLR, "bypasses" the HLR in the manner contemplated by the patents, or whether it simply operates in a different, parallel technical paradigm.
- Technical Questions: The complaint alleges the AbleTo Server is "deciding on the appropriate routing" (Compl. ¶¶76, 104). The patents describe this "deciding" step in the context of choosing among various available networks, potentially based on lowest cost (’512 Patent, col. 3:41-43). An evidentiary question is whether the AbleTo Server performs this type of multi-network, criteria-based routing decision, or if it performs a more conventional function, such as a simple directory lookup of another user on its own closed platform.
V. Key Claim Terms for Construction
- The Term: "without using a network operator's home location register" (from claim 1 of the ’512 and ’154 patents)
- Context and Importance: This negative limitation is central to the asserted patents. The construction of this phrase will be critical to determining whether the claims cover modern OTT communication apps, like the Accused Product is alleged to be, or if they are confined to systems that more directly replace a function within a traditional cellular network architecture.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's focus on giving users the "freedom to choose the cheapest option for each call set-up route" (’512 Patent, col. 1:50-54) may support an interpretation that any system achieving routing choice independent of the HLR falls within the scope, regardless of the specific mechanism. The patent also broadly states the server decides on routing "over all available networks" (’512 Patent, Abstract), which could be argued to include the internet as a whole.
- Evidence for a Narrower Interpretation: The "Background of the Invention" section in the patents is rooted in the specific architecture of cellular networks, discussing IMSI, VLRs, and SS7 messaging (’512 Patent, col. 2:3-39). This context may support a narrower construction, limiting the claims to systems that are designed as direct replacements or workarounds for specific components of that cellular architecture, rather than applications that exist entirely outside of it.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant has induced infringement of the patents-in-suit (e.g., Compl. ¶¶93, 125). The allegations state that Defendant encouraged infringement with knowledge that the induced acts constituted infringement. However, the complaint does not plead specific underlying facts, such as citing to user manuals or marketing materials that allegedly instruct users on how to perform the infringing steps.
- Willful Infringement: The complaint alleges that Defendant has had knowledge of the patents-in-suit "at least as of the service of the present Complaint" (e.g., Compl. ¶¶91, 123). This allegation forms a basis for potential post-filing willful infringement. While the complaint does not use the word "willful," it requests enhanced damages, which are associated with findings of egregious infringement (Prayer for Relief, p. 39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim limitation "without using a network operator's home location register," which is described in the patents within the technical context of 2006-era cellular roaming systems (HLR/VLR), be properly construed to cover a modern, over-the-top (OTT) VoIP application that is architecturally separate from, rather than an active bypass of, the cellular operator's core network?
- A key evidentiary question will be one of functional equivalence: does the accused "AbleTo Server" perform the claimed function of "deciding on the appropriate routing... over all available networks," as described in the patents to potentially include least-cost routing, or does it perform a more limited directory lookup function within its own service, raising a question about a potential mismatch in technical operation?
- A third question will relate to the '575 patent: does the accused system's periodic communication between the client app and the server for maintaining location information meet the specific limitations of claim 1, particularly the timing requirement that the interval between authentications "is less than a time allowed by the registered VoIP enabled wireless device to receive a response from the server"? (Compl. ¶140; ’575 Patent, col. 11:10-14).