Coretek Licensing LLC v. Talkspace Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: Talkspace, Inc. (Delaware, with principal place of business in New York)
  • Plaintiff’s Counsel: SAND, SEBOLT & WERNOW CO., LPA
• Case Identification: 1:22-cv-10120, S.D.N.Y., 11/29/2022
• Venue Allegations: Plaintiff alleges that venue is proper in the Southern District of New York because Defendant has a "regular and established place of business" in the district and therefore resides there for purposes of patent venue.
• Core Dispute: Plaintiff alleges that Defendant’s "Talkspace App" communications platform infringes four patents related to methods for establishing network connections that bypass a mobile network operator's Home Location Register (HLR) and for dynamically determining a device's VoIP location.
• Technical Context: The technology at issue enables "over-the-top" communication applications to operate over internet protocol networks, such as Wi-Fi or cellular data, without relying on traditional carrier infrastructure for call routing and authentication.
• 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

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 the limitations faced by wireless device users who are typically restricted to their subscribed home network for communications, which is controlled by the network operator’s Home Location Register (HLR). This control limits user choice and can lead to higher costs, particularly when roaming abroad ('512 Patent, col. 1:30-51).
• The Patented Solution: The invention proposes a system where a downloadable software module on a wireless device initiates a call by sending a request to an independent server, rather than through the HLR. This server then determines the appropriate routing for the call over any available network (e.g., Wi-Fi, other cellular networks), potentially based on lowest cost. This architecture bypasses the HLR for call routing and allows communication via various protocols, such as SMS or HTTP, not just standard cellular protocols ('512 Patent, Abstract; col. 2:51-68).
• Technical Importance: This technology represents a method for decoupling communication services from the underlying network operator's infrastructure, a foundational concept for "over-the-top" (OTT) applications that offer services independently of the carrier that provides the internet connection ('512 Patent, col. 2:41-49).

Key Claims at a Glance

• The complaint asserts independent claims 1 (a method), 23 (a system), and 24 (a server) (Compl. ¶¶ 15, 21, 23).
• The essential elements of independent method claim 1 include:
  • A wireless device using a downloadable software module to contact a server over a wireless link.
  • The module sending data to the server that defines a call request.
  • In response, a software application on the server deciding on the appropriate routing for the call to a third-party end-user over available networks.
  • This process occurs "without using the network operator's home or visitor location register."
• The complaint also asserts dependent claims 4, 5, 8, and 12, and reserves the right to assert others (Compl. ¶24).

---

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 leading to the '512 Patent, the '154 Patent addresses the same technical problem of user dependence on a single network operator's HLR for call routing and services ('154 Patent, col. 1:35-56).
• The Patented Solution: The solution is structurally identical to that of the '512 Patent, involving a software module on a device that communicates with a server to bypass the HLR for call routing ('154 Patent, Abstract). A key distinction in the claims is the recitation of a "wireless handheld cellular phone device," a more specific term than the "wireless device" recited in the '512 Patent ('154 Patent, col. 17:31-33).
• Technical Importance: The technical importance is the same as described for the '512 Patent.

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. ¶¶ 30, 36, 38, 40).
• The essential elements of independent method claim 1 are substantively identical to claim 1 of the '512 Patent, but specify the device as a "wireless handheld cellular phone device" ('154 Patent, col. 17:30-51).
• The complaint also asserts dependent claims 3, 4, 7, and 11, and reserves the right to assert others (Compl. ¶41).

---

Multi-Patent Capsule: 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 the network location (e.g., IP address or "return path") of a VoIP-enabled wireless device as it moves between different networks ('575 Patent, col. 1:24-42). The patented solution is a system where a software module on the device periodically authenticates with a server, dynamically reporting its current VoIP address, which the server stores in a database to enable reliable, up-to-date communication routing ('575 Patent, Abstract; col. 2:30-49).
• Asserted Claims: The complaint asserts independent claim 1 (a system) (Compl. ¶¶ 47, 48).
• Accused Features: The complaint alleges that the Talkspace platform infringes by detecting and collecting the IP address ("VoIP address or return path") of user devices, storing this information in databases, and using it to establish and route communications between users (Compl. ¶¶ 133-138).

---

Multi-Patent Capsule: 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: As part of the same family as the '512 and '154 patents, the '551 Patent addresses the same problem of HLR bypass ('551 Patent, col. 1:37-col. 2:2). The claims are directed primarily to a "computer program product" (i.e., software on a non-transitory medium) that, when executed, configures a wireless device to perform the method of contacting a server to initiate a call request, which the server then routes without using the HLR ('551 Patent, Abstract).
• Asserted Claims: The complaint asserts independent claims 1 (a computer program product), 22 (a method), 23 (a system), and 24 (a server) (Compl. ¶¶ 54, 65, 67, 69).
• Accused Features: The complaint alleges the Talkspace App, as a computer program product on a smartphone's memory, infringes by enabling the device to initiate VoIP calls over an IP network, thereby bypassing the cellular operator's HLR (Compl. ¶¶ 144, 158).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is the "Talkspace App," a communications software application, and its associated backend systems, including the "Talkspace Server" (Compl. ¶¶ 71, 74).
• Functionality and Market Context: The complaint alleges the Talkspace App is a downloadable software application that enables users to conduct communications (e.g., voice calls, messaging) over internet protocol networks like Wi-Fi or cellular data (4G) (Compl. ¶¶ 73, 101, 118). The alleged functionality involves the app on a user's smartphone contacting a Talkspace Server to establish and route a "call request (e.g., SIP/VoIP Invite)" (Compl. ¶¶ 75, 103). This architecture allegedly bypasses the mobile network operator's Home Location Register (HLR) for call routing (Compl. ¶73). The system is also alleged to determine and collect user device IP addresses to facilitate communication routing (Compl. ¶134). The complaint alleges Defendant commercializes these solutions and derives revenue from them but provides no further detail on market position or commercial importance (Compl. ¶4).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'512 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary dispute may arise over the meaning of "without using a network operator's home location register." Defendant may argue that because the accused app can operate over a cellular data network (e.g., 4G/5G), which itself requires authentication through carrier systems tied to the HLR, the HLR is implicitly "used" to enable the underlying connection. Plaintiff may counter that the claim language refers specifically to the HLR's function in call routing, which is what the invention bypasses.
• Technical Questions: The complaint alleges the server is "deciding on the appropriate routing." A factual question for the court will be what technical operations this "deciding" entails. Does merely forwarding a SIP invite to another user's known IP address satisfy this limitation, or does the claim require a more complex choice among multiple potential routes, as suggested by the patent's disclosure of "lowest cost routing"? ('512 Patent, col. 4:41-42).

---

'154 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: In addition to the "without using" limitation described for the '512 Patent, the term "wireless handheld cellular phone device" is more specific. The infringement analysis may examine whether all accused functionalities operate on devices that meet this narrower definition, as opposed to tablets or desktop computers that might lack cellular phone capabilities.
• Technical Questions: The same technical questions regarding the server's "deciding" function, as described for the '512 Patent, apply here.

V. Key Claim Terms for Construction

• Term: "without using a network operator's home location register" (from '512 Claim 1, '154 Claim 1, and others)
• Context and Importance: This negative limitation is central to the infringement allegations for three of the four asserted patents. Its construction will likely determine whether the accused system falls within the scope of the claims. The core question is whether "using" the HLR is limited to the direct act of call routing, or if it includes any reliance on the carrier's HLR-linked infrastructure for underlying data connectivity.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (Plaintiff's likely view): The specification contrasts the invention with conventional systems where the HLR is the "gateway into the mobile communications system" for routing calls ('512 Patent, col. 2:42-44). The patented solution describes a server that "decides on the appropriate routing over all available networks," and states that "unlike a conventional HLR, the server can receive communications from the device using any one of several different protocols" ('512 Patent, col. 2:54-60). This language may support an interpretation that "using" the HLR refers to its specific role in traditional call setup, a role the invention is designed to replace.
  • Evidence for a Narrower Interpretation (Defendant's likely view): The claim language is absolute. A defendant could argue that if the accused app relies on a cellular data connection (e.g., 4G/LTE), that connection is established and maintained by the network operator's core systems, which are inextricably linked to the HLR for subscriber authentication and data service provisioning. Therefore, the HLR is "used" to enable the entire communication, even if not for the specific application-layer routing decision.

---

• Term: "VoIP address or return path" (from '575 Claim 1)
• Context and Importance: This term defines the information that is dynamically tracked by the system of the '575 Patent. The complaint alleges that this term reads on the "IP address of a user device" (Compl. ¶133). The viability of the infringement claim for this patent will depend on whether a standard IP address is sufficient to meet this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (Plaintiff's likely view): The abstract states the system determines a device's "VoIP location" by extracting its "VoIP address or return path" ('575 Patent, Abstract). In the context of IP communications, an IP address is the fundamental component of a device's location or address. The complaint's direct equation of the term with an IP address suggests this will be the plaintiff's position.
  • Evidence for a Narrower Interpretation (Defendant's likely view): The patent's background discusses the difficulties in establishing a "return path" and the complexities of VoIP networks ('575 Patent, col. 1:12-23). A defendant may argue that a "return path" implies more than just an IP address, potentially requiring port numbers, NAT traversal information, or other data necessary to establish a connection, which is not always conveyed by an IP address alone. The background's reference to a "URI (uniform resource identifier)" as the basis for a 'return path' could support an argument that the term requires more than a simple IP address ('575 Patent, col. 1:33-36).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of induced infringement for all four patents, stating Defendant encouraged infringement "knowing that the acts Defendant induced constituted patent infringement" (e.g., Compl. ¶93; ¶125). The complaint does not, however, plead specific facts to support the element of intent, such as referencing user manuals, advertisements, or other instructions that would encourage infringing use.
• Willful Infringement: Willfulness is alleged based on knowledge of the patents "at least as of the service of the present Complaint" (e.g., Compl. ¶91; ¶123). This allegation supports a claim for post-suit willfulness only, as there are no facts alleged that would establish pre-suit knowledge of the patents or the alleged infringement. The prayer for relief seeks enhanced damages (Compl. p. 40, ¶f).

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" be construed to cover an application that operates over a carrier's data network, where that data network itself relies on HLR-linked systems for subscriber authentication? The resolution of this question will be pivotal for the claims of the '512, '154, and '551 patents.
• A key evidentiary question will be one of technical operation: Does the accused Talkspace Server perform the claimed function of "deciding on the appropriate routing," or does it simply forward connection requests? The case may require a detailed factual analysis of the server's software to determine if its operations meet the specific functional requirements of the claims.
• For the '575 patent, the dispute may center on another definitional question: Does the term "VoIP address or return path" simply mean a device's IP address, as the complaint alleges, or does the patent's context require a more complex set of information needed to establish a reliable connection through modern network complexities like firewalls and NAT?