DCT
2:22-cv-00004
Estech Systems IP LLC v. McKesson
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Estech Systems IP, LLC (Texas)
- Defendant: McKesson Corporation (Delaware)
- Plaintiff’s Counsel: WILLIAMS SIMONS & LANDIS PLLC
- Case Identification: 2:22-cv-00004, E.D. Tex., 01/04/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s VoIP-based communication services infringe four patents related to VoIP telephony, directory services, quality of service, and voicemail features.
- Technical Context: The technology at issue involves Voice over Internet Protocol (VoIP) systems, which enable voice communications over data networks and have become a foundational technology for modern business telecommunications.
- Key Procedural History: Post-filing Inter Partes Review (IPR) proceedings have significantly impacted the patents-in-suit. IPR certificates indicate that the asserted independent claim of U.S. Patent No. 8,391,298 (Claim 1) and the asserted independent claim of U.S. Patent No. 6,067,349 (Claim 12) have been cancelled. These cancellations occurred after the complaint was filed and raise questions about the viability of the infringement counts for those two patents.
Case Timeline
| Date | Event |
|---|---|
| 1997-12-31 | Priority Date for U.S. Patent No. 6,067,349 |
| 2000-05-23 | Issue Date for U.S. Patent No. 6,067,349 |
| 2001-02-01 | Priority Date for U.S. Patents No. 7,068,684; 7,123,699; 8,391,298 |
| 2006-06-27 | Issue Date for U.S. Patent No. 7,068,684 |
| 2006-10-17 | Issue Date for U.S. Patent No. 7,123,699 |
| 2013-03-05 | Issue Date for U.S. Patent No. 8,391,298 |
| 2021-03-05 | IPR Filed for U.S. Patent No. 6,067,349 (IPR2021-00573) |
| 2021-03-05 | IPR Filed for U.S. Patent No. 8,391,298 (IPR2021-00574) |
| 2022-01-04 | Complaint Filing Date |
| 2023-06-30 | IPR Certificate Issued for U.S. Patent No. 6,067,349 |
| 2025-02-12 | IPR Certificate Issue Date for U.S. Patent No. 8,391,298 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,391,298 - "Phone Directory in a Voice Over IP Telephone System"
Issued March 5, 2013
The Invention Explained
- Problem Addressed: The patent addresses the challenge of providing users in a distributed VoIP system, connected across multiple networks, with a seamless way to find and dial other users without needing a printed directory or operator assistance. (’298 Patent, Abstract).
- The Patented Solution: The invention provides a system where a user on one network can use their IP telephone to scroll through a list of remote sites or users stored on a server. Upon selecting a remote user, the system presents the same dialing options as if the user were local, effectively unifying disparate phone directories across a Wide Area Network (WAN). ('298 Patent, Abstract; Fig. 2).
- Technical Importance: This approach aimed to make large, geographically dispersed VoIP networks more user-friendly by abstracting away the underlying network complexity from the end-user dialing experience. (Compl. ¶22).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶30).
- The essential elements of independent claim 1, as alleged in the complaint, include a system with:
- A first, second, and third Local Area Network (LAN) coupled by a Wide Area Network (WAN).
- A VoIP telephony device on one LAN with circuitry enabling a user to observe a list of telecommunications extensions.
- Circuitry to automatically call an extension selected from the list.
- Circuitry enabling the user to select between observing extensions coupled to the second LAN or the third LAN.
- A server on the second LAN that stores the telecommunications extensions. (Compl. ¶¶ 26-29).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,068,684 - "Quality of Service in a Voice Over IP Telephone System"
Issued June 27, 2006
The Invention Explained
- Problem Addressed: The patent identifies the problem of degraded real-time voice quality (e.g., jitter and latency) in VoIP systems that share a network, like Ethernet, with "bursty" data transmissions from devices like PCs. (’684 Patent, col. 1:40-67).
- The Patented Solution: The invention describes an IP telephone that acts as a passthrough for a data-generating workstation. The IP phone monitors its own voice packet buffer levels; if they fall below a threshold (indicating network congestion), it "throttles" the data from the workstation to prioritize the real-time voice traffic and maintain call quality. ('684 Patent, Abstract; Fig. 11).
- Technical Importance: This invention provided a device-level solution to Quality of Service (QoS), allowing for the co-existence of voice and heavy data traffic on the same local network without requiring complex network-wide QoS protocols. (Compl. ¶44).
Key Claims at a Glance
- The complaint asserts at least independent claim 36. (Compl. ¶51).
- The essential elements of independent claim 36, as alleged in the complaint, include a method of:
- Communicating audio information for VoIP calls between a VoIP device and a VoIP server.
- Transferring data through the VoIP device from a connected workstation.
- Sufficiently throttling the data sent from the workstation to increase the transfer rate of the audio information.
- The throttling comprises reducing a future amount of data transfer if the current amount exceeds a predetermined threshold. (Compl. ¶¶ 48-50).
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,123,699 - "Voice Mail in a Voice Over IP Telephone System"
Issued October 17, 2006
- Technology Synopsis: The patent describes a system for accessing voicemail across networks. It enables a user with a VoIP device on a second LAN to connect via a WAN to a voicemail system on a first LAN, receive a notification of a new message, and listen to that message remotely. (Compl. ¶64).
- Asserted Claims: At least independent claim 1. (Compl. ¶72).
- Accused Features: The complaint alleges that Defendant’s VoIP servers store voicemail on a first LAN and that its VoIP telephony devices on a second LAN access these messages using various communication protocols (e.g., TCP/IP, SIP, RTP) to establish a channel and stream the voice data. (Compl. ¶¶ 69-71).
U.S. Patent No. 6,067,349 - "Dialing Using Caller ID"
Issued May 23, 2000
- Technology Synopsis: The patent describes a telephone and voicemail system that captures a caller's Caller-ID information and associates it with the voicemail message they leave. This integration allows the message recipient to automatically call back the person who left the message while listening to it. (Compl. ¶85; ’349 Patent, Abstract).
- Asserted Claims: At least independent claim 12. (Compl. ¶91). Note: An IPR certificate issued June 30, 2023 indicates that claim 12 has been cancelled. ('349 Patent, IPR Certificate).
- Accused Features: The complaint alleges that Defendant's VoIP and voicemail systems are configured to receive Caller-ID, associate it with a voicemail, and enable a user to automatically call back the caller while listening to the message. (Compl. ¶¶ 89-90).
III. The Accused Instrumentality
Product Identification
- The complaint does not identify any specific McKesson products or services by name. It refers generally to the "Accused Instrumentalities." (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the Accused Instrumentalities are "VoIP-based voice calling and data-networking services" provided to VoIP telephony devices. (Compl. ¶25). The functionality is described in broad terms corresponding to the patent claims, including:
- Operating across a network architecture of multiple LANs connected by a WAN. (Compl. ¶26).
- Providing users with access to directories of telecommunications extensions stored on servers. (Compl. ¶¶ 28-29).
- Throttling data from workstations connected through VoIP phones to manage quality of service. (Compl. ¶50).
- Enabling remote access to voicemail messages stored on a central LAN. (Compl. ¶¶ 69-70).
- Allowing a user to automatically call back a party who left a voicemail by using stored Caller-ID information. (Compl. ¶90).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’298 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system comprising a first local area network (LAN), a second LAN, and a third LAN... coupled with a wide-area network (WAN) | The Accused Instrumentalities use first, second, and third LANs that are coupled with a WAN. | ¶26 | col. 4:51-65 |
| a plurality of telecommunications extensions | The Accused Instrumentalities include VoIP telephony devices... having telecommunications extensions associated therewith, the telecommunications extensions being coupled to the second and third LANs. | ¶27 | col. 9:48-56 |
| a server... in the second LAN, wherein the server stores the plurality of telecommunications extensions | The Accused Instrumentalities include servers in the second LAN that store telecommunications extensions accessed across the WAN. | ¶29 | col. 4:55-65 |
| circuitry enabling users... to observe a list of the plurality of telecommunications extensions | The VoIP telephony devices include circuitry... enabling users of VoIP telephony devices to observe a list of telecommunications extensions. | ¶28 | col. 10:48-52 |
| circuitry... enabling the user to select between observing the list... coupled to the second LAN or the third LAN | The VoIP telephony devices include circuitry... enabling the user to select between observing the list of telecommunications extensions coupled to the second LAN or the third LAN. | ¶28 | col. 11:4-14 |
- Identified Points of Contention:
- Architectural Mapping: A central question will be whether McKesson's corporate network can be factually mapped onto the specific "first, second, and third LAN" architecture required by the claim. The complaint makes this assertion without providing supporting evidence.
- Scope Questions: The infringement analysis may hinge on how "telecommunications extensions" is defined. It is a question for the court whether this term is limited to internal company extensions or if it can be read more broadly to cover any phone number in a directory, such as federated users in a corporate network.
- Viability: The most significant issue is that claim 1, the only independent claim asserted, was cancelled in IPR2021-00574, raising the question of whether this entire count is moot.
’684 Patent Infringement Allegations
| Claim Element (from Independent Claim 36) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| communicating audio information for VoIP-based voice calls... between at least one VoIP telephony device and at least one VoIP server | The Accused Instrumentalities include VoIP servers such that audio information for VoIP-based voice calls is communicated between at least VoIP telephony devices and VoIP servers. | ¶48 | col. 4:14-20 |
| transferring data through the at least one VoIP telephony device from at least one workstation | The Accused Instrumentalities include workstations... that transfer data through VoIP telephony devices. | ¶49 | col. 4:5-13 |
| sufficiently throttling data sent from the at least one workstation to the at least one VoIP telephony device to increase a rate of transfer of the audio information | The Accused Instrumentalities sufficiently throttle data sent from workstations to VoIP telephony devices to increase a rate of transfer of audio information during the communication of audio information. | ¶50 | col. 2:20-29 |
| the data throttling comprises reducing a future amount of data from being transferred... if the amount of data exceeds a predetermined threshold | The data throttling comprises reducing a future amount of data from being transferred from the workstation if the amount of data exceeds a predetermined threshold. | ¶50 | col. 2:35-44 |
- Identified Points of Contention:
- Technical Questions: The primary factual dispute will be whether McKesson’s systems perform "throttling" in the specific manner claimed. The complaint does not provide evidence showing that Defendant’s products monitor a data threshold and then actively "reduc[e] a future amount of data" as a result, which is a specific functional requirement of the claim.
- Scope Questions: The analysis will likely focus on whether standard network QoS features, such as traffic prioritization or shaping, meet the specific "throttling" limitation as defined by the patent, which describes a more active flow control process.
V. Key Claim Terms for Construction
Patent: ’298 Patent (Claim 1)
- The Term: "telecommunications extensions"
- Context and Importance: This term is central to defining the scope of the claimed directory. The dispute will likely revolve around whether Defendant’s user directories, which may include various types of contacts, constitute "telecommunications extensions" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is not explicitly limited to a specific type of extension, referring generally to "a plurality of telecommunications extensions." (col. 16:11-12). This may support an argument that it covers any dialable entry in a directory.
- Evidence for a Narrower Interpretation: The detailed description repeatedly discusses dialing an "extension number" in the context of a remote site, which may suggest the term is limited to internal, PBX-style extensions rather than general phone numbers. (e.g., col. 9:1-5).
Patent: ’684 Patent (Claim 36)
- The Term: "throttling data"
- Context and Importance: This term is the core of the asserted QoS invention. Practitioners may focus on this term because its construction will determine whether generic QoS mechanisms infringe, or if infringement requires the specific flow control method detailed in the specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language recites "throttling" as a functional outcome: "to increase a rate of transfer of the audio information." (col. 20:13-15). This could support an interpretation covering any mechanism that achieves this result.
- Evidence for a Narrower Interpretation: The specification describes a specific implementation of throttling using "jabbering," where the IP phone floods the connection to the workstation with collisions to halt its data transmission. ('684 Patent, col. 13:61-14:10). This specific embodiment may be used to argue for a narrower definition that excludes standard traffic shaping protocols.
VI. Other Allegations
- Indirect Infringement: For all four asserted patents, the complaint alleges induced infringement, stating that McKesson took active steps with specific intent by "advising or directing customers... advertising and promoting the use of the Accused Instrumentalities... or distributing instructions that guide users" to infringe. (e.g., Compl. ¶¶ 33, 54, 75). The complaint also alleges contributory infringement, stating the Accused Instrumentalities have "special features that are specially designed to be used in an infringing way and that have no substantial uses other than ones that infringe." (e.g., Compl. ¶¶ 34, 55, 76).
- Willful Infringement: The complaint alleges willful infringement for all four patents. The allegations are based on McKesson having knowledge of the patents "at least as of the date when it was notified of the filing of this action" (e.g., Compl. ¶35), and on an alleged "policy or practice of not reviewing the patents of others," which Plaintiff characterizes as willful blindness. (e.g., Compl. ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be one of case viability: given that the sole asserted independent claims of the '298 and '349 patents have been cancelled in post-filing IPRs, a central question for the court will be whether the counts for infringement of those two patents are moot, potentially narrowing the case to the two remaining patents.
- A key evidentiary question will be one of technical mapping: does the complaint provide sufficient factual support to show that McKesson's general-purpose corporate VoIP network performs the specific functions and maps onto the particular multi-LAN architectures recited in the claims, or is there a fundamental mismatch between the asserted technology and the accused systems?
- The dispute will likely turn on a question of claim scope: can terms like "throttling data" ('684 patent) and "telecommunications extensions" ('298 patent) be construed broadly enough to read on standard QoS and directory functionalities, or will they be limited to the specific, and potentially distinct, implementations described in the patents' specifications?