RecepTrexx LLC v. TCL Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: TCL Technology Group Corp. (China)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:24-cv-00322, E.D. Tex., 05/18/2024
• Venue Allegations: Venue is asserted on the basis that the Defendant is a foreign corporation.
• Core Dispute: Plaintiff alleges that Defendant’s smart phones infringe a patent related to methods for playing a recorded message to an incoming caller on a cellular phone while delaying the user's need to answer.
• Technical Context: The technology concerns call management features on mobile devices, allowing a user to manage interruptions from incoming calls in situations where speaking is inconvenient.
• Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,975,709. The reissue process, which can be used to correct errors in an original patent, may have implications for the scope and interpretation of the asserted claims.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Reissue Patent No. RE42,997 - "Triggered playback of recorded messages to incoming telephone calls to a cellular phone"

• Patent Identification: U.S. Reissue Patent No. RE42,997, "Triggered playback of recorded messages to incoming telephone calls to a cellular phone," issued December 6, 2011.

The Invention Explained

• Problem Addressed: The patent identifies the social and practical problems of receiving cellular phone calls in public places like meetings or theaters, where answering immediately is disruptive or compromises privacy ('997 Patent, col. 1:15-32). If a user delays answering, the caller might hang up, assuming the call attempt failed (ʼ997 Patent, col. 1:30-34).
• The Patented Solution: The invention provides a system where a cellular phone user, upon receiving a call, can trigger the playback of a pre-recorded message to the caller (e.g., "please hold on") without having to speak immediately ('997 Patent, Abstract). Crucially, the system maintains the connection after the message plays, allowing the user to begin speaking with the caller at any time ('997 Patent, col. 2:63-65). The system can be implemented in a "distributed" manner, where the message is stored on the phone itself, or a "centralized" manner, where it is stored on a network peripheral ('997 Patent, col. 2:56-65).
• Technical Importance: The technology offered a way to manage call interruptions with more flexibility than simply ignoring the call or sending it to voicemail, addressing a common issue for mobile phone users.

Key Claims at a Glance

• The complaint asserts infringement of "one or more claims" and "exemplary method claims" without specifying claim numbers (Compl. ¶11). The patent’s two primary independent claims are System Claims 1 and 2.
• Independent Claim 1 (Distributed System):
  • means to record a message to be provided to a caller making calls to said cellular phone; and
  • means to instruct said message to be played to said caller, said means to instruct being selected from the group consisting of a button on said cellular phone, a keypad entry..., an entry on a calendar, an entry on a clock, an entry into a location device, and combinations thereof;
  • wherein said caller is connected, said message is played, and, after said message is played, said caller remains connected.
• The complaint does not explicitly reserve the right to assert dependent claims but alleges infringement of "one or more claims" (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint accuses "smart phones" manufactured and sold by TCL (Compl. ¶3). The specific products are referred to as "Exemplary Defendant Products" identified in charts incorporated by reference, but those charts were not provided with the complaint (Compl. ¶11, ¶13).

Functionality and Market Context

• The complaint alleges that TCL is a "leading manufacturer and seller of smart phones" (Compl. ¶3). It asserts that TCL makes, uses, sells, and imports the accused products in the United States and Texas (Compl. ¶3, ¶11). The complaint does not describe the specific functionality of the accused smart phones that allegedly infringes the ’997 Patent. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement but incorporates by reference claim charts from an "Exhibit 2" that was not attached to the filed document (Compl. ¶13-14). Therefore, a detailed element-by-element analysis based on the plaintiff's specific allegations is not possible. The infringement theory is broadly stated as TCL's smart phones practicing the technology claimed by the ’997 Patent (Compl. ¶13).

• Identified Points of Contention:
  • Evidentiary Questions: The primary question is what specific feature(s) of TCL's smart phones are alleged to perform the claimed functions. The complaint's lack of detail on the accused instrumentality's operation prevents an assessment of the factual basis for infringement.
  • Scope Questions (Means-Plus-Function): A central dispute will likely involve the scope of the "means to instruct" limitation in Claim 1. This is a means-plus-function limitation under 35 U.S.C. § 112(f), and its scope is limited to the corresponding structures disclosed in the specification and their equivalents. The question will be whether the accused smart phones contain a structure (e.g., a specific software module responding to a user interface tap, calendar event, or location trigger) that is the same as or equivalent to the structures described in the patent's specification.
  • Technical Questions: A key technical question is whether the accused products "maintain[] the connection with said caller after said message has been played" as required by the claim (’997 Patent, col. 7:14-16). This distinguishes the invention from standard voicemail systems, where the initial call is typically terminated and a new connection is made to a voicemail server. The court will need to determine if the accused functionality keeps the original call path open between the caller and the user's device.

V. Key Claim Terms for Construction

• The Term: "means to instruct said message to be played to said caller" (from Claim 1)
• Context and Importance: This term is a means-plus-function limitation and is central to the infringement analysis for Claim 1. Its construction will define what specific hardware or software structures in an accused device can satisfy this element. Practitioners may focus on this term because its scope is not determined by the plain meaning of the words but is strictly tied to the patent's disclosure.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself lists a wide variety of triggers: "a button on said cellular phone, a keypad entry..., an entry on a calendar, an entry on a clock, an entry into a location device, and combinations thereof" (’997 Patent, col. 6:54-59). Plaintiff may argue this list is exemplary and supports a broad reading of the types of user and automated inputs covered.
  • Evidence for a Narrower Interpretation: The specification describes the corresponding structure for this function. In the distributed embodiment, the structure appears to be a user's manual action ("user pushes a button on the telephone") or a software program on the phone that acts automatically based on pre-set preferences or triggers ('997 Patent, col. 3:28-29, col. 3:51-66). Defendant may argue the scope is limited to these specific disclosed implementations and their equivalents, potentially excluding different software architectures or user interface mechanisms found in modern smartphones.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of indirect infringement.
• Willful Infringement: The complaint does not contain a specific count for willful infringement or allege facts supporting a claim of pre- or post-suit knowledge of the patent or infringement. The prayer for relief requests that the case be declared "exceptional" under 35 U.S.C. § 285, which is often predicated on a finding of willfulness, but the complaint lacks the factual allegations to support such a finding (Compl. ¶E.i).

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

1. A central issue will be one of evidentiary sufficiency: Can the plaintiff provide specific evidence, absent from the initial complaint, that identifies concrete features within TCL's smart phones that perform each element of the asserted claims, particularly the maintenance of an open call connection after a message is played?
2. The case will likely turn on a question of claim scope and technical equivalence: For the "means to instruct" limitation, what is the precise structure disclosed in the ’997 Patent's specification, and does the software and user interface architecture in TCL's smart phones constitute an equivalent structure under the narrow rules governing means-plus-function claiming?
3. A third key question relates to the distinction from prior art: How does the claimed method of playing a message while "maintain[ing] the connection" differ functionally from well-known features like customized voicemail greetings or call-forwarding services, and does the accused functionality operate as claimed or more like conventional, non-infringing alternatives?