DCT
6:12-cv-00247
Nobelbiz Inc v. T C N Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NobelBiz, Inc. (Delaware)
- Defendant: T C N, Inc. (Utah)
- Plaintiff’s Counsel: Capshaw DeRieux, L.L.P.; Gibbons P.C.
- Case Identification: 6:12-cv-00247, E.D. Tex., 04/25/2013
- Venue Allegations: Venue is alleged based on Defendant’s continuous and systematic business contacts with Texas, where it offers for sale and sells the accused services.
- Core Dispute: Plaintiff alleges that Defendant’s web-based dialing services, which include a feature for managing local caller ID, infringe a patent related to modifying a call originator's caller ID to display a number that is geographically local to the call recipient.
- Technical Context: The technology addresses the call center industry's need to increase call "answer rates" by replacing a long-distance or unfamiliar caller ID with a local number, which recipients are more likely to trust and answer.
- Key Procedural History: The complaint alleges that Defendant was aware of the asserted patent’s parent (U.S. Patent No. 7,899,169) several years before the current suit, and knew or should have known of the patent-in-suit upon its issuance. The patent-in-suit is subject to a terminal disclaimer, linking its enforceability to its parent patent.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-20 | Earliest Priority Date for '122 Patent (via provisional) |
| 2009-04-01 | Alleged date of Defendant's awareness of parent '169 patent |
| 2011-03-01 | Alleged date of Defendant's awareness of parent '169 patent issuance |
| 2012-03-13 | U.S. Patent No. 8,135,122 Issues |
| 2013-04-25 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,135,122 ("SYSTEM AND METHOD FOR MODIFYING COMMUNICATION INFORMATION (MCI)"), issued March 13, 2012. (’122 Patent; Compl. ¶7).
The Invention Explained
- Problem Addressed: The patent's background describes a situation where a call originator (e.g., a national call center) places a call to a target in a different geographic area. If the target wishes to call back—for instance, to be added to a "Do Not Call List"—they might be required to pay long-distance toll charges, which creates a disincentive. (’122 Patent, col. 1:26-40).
- The Patented Solution: The invention is a system that intercepts an outbound call and modifies the originator's caller ID information. It uses the target's telephone number to look up a corresponding "local" telephone number from a database (an "MCI Table") and substitutes this local number into the caller ID field before the call is connected to the target. (’122 Patent, Abstract; col. 2:45-55). This allows the target to return the call without incurring long-distance charges.
- Technical Importance: This method of dynamically presenting a local caller ID was designed to increase the effectiveness of outbound call campaigns by making calls appear more relevant and less like unsolicited long-distance telemarketing. (Compl. ¶12-13).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims" without specifying them. (Compl. ¶29). Independent claim 1 is representative of the system claims.
- The essential elements of independent claim 1 include:
- A database storing a plurality of outgoing telephone numbers.
- An information processor controlled by the call originator and configured to process a trigger comprising a telephone number of the call target.
- Logic to access the database and select a replacement telephone number based on at least the area code of the call target.
- Logic to modify the originator's caller ID to the selected replacement number, which has an area code matching the target's.
- Logic to transmit the modified caller ID data to the call target.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is "Defendant's Service," identified as a "local caller ID management service" that is part of Defendant's "hosted, interactive voice communications, such as web-based dialing services." (Compl. ¶15-16).
Functionality and Market Context
- The service includes a "Local Caller ID" feature that allows a user to "display a caller ID that is local to the receiving party's calling area (i.e., geographic region)." (Compl. ¶17).
- The system allegedly provides users with a "list or 'bucket' of telephone numbers that are local to the call targets ('Local Call Number List')." (Compl. ¶18).
- Functionally, the service is alleged to match a local number from this list to the recipient's phone number using "match criteria that ensure the best local telephone number is chosen for each receiving party." (Compl. ¶19).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'122 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a database storing a plurality of outgoing telephone numbers; | The service provides a "Local Call Number List," which is a "list or 'bucket' of telephone numbers." | ¶18 | col. 2:50-53 |
| an information processor controlled by the call originator and configured to process a trigger comprising a telephone number of the call target; | The service "matches a local caller ID...to the receiving party's phone number," which is alleged to practice every limitation. | ¶19, ¶20 | col. 3:1-5 |
| access the database and select a replacement telephone number...based on at least an area code of the telephone number of the call target; | The service "matches a local caller ID from the Local Call Number List to the receiving party's phone number based on match criteria." | ¶19 | col. 3:30-34 |
| modify caller identification data of the call originator to the selected replacement telephone number, the selected replacement telephone number having at least an area code the same as an area code of the telephone number of the call target; and | The service allows users to "display a caller ID that is local to the receiving party's calling area." | ¶17 | col. 3:50-54 |
| transmit the modified caller identification data of the call originator to the call target. | This functionality is inherent in the allegation that the service allows users to "display a caller ID that is local to the receiving party's calling area." | ¶17 | col. 4:27-29 |
- Identified Points of Contention:
- Scope Questions: A question may arise regarding the limitation "controlled by the call originator." The complaint describes Defendant's service as "hosted" (Compl. ¶15), which raises the question of whether a customer using a third-party, multi-tenant service has sufficient "control" to satisfy this claim element, or if the claim requires more direct operational or physical control.
- Technical Questions: Claim 1 requires "a trigger comprising a telephone number of the call target." The complaint alleges the system "matches" a local number to the target's number (Compl. ¶19) but does not specify what technical event or data acts as the "trigger" to initiate this matching process. Evidence will be needed to show that the trigger mechanism in the accused service meets the specific definition in the claim.
V. Key Claim Terms for Construction
The Term: "information processor controlled by the call originator"
- Context and Importance: The definition of "controlled" is central given the accused service is "hosted" by the Defendant, not the Plaintiff's customers (the "call originators"). Practitioners may focus on this term because its construction could determine whether the claim reads on a wide range of SaaS and cloud-based telecommunication platforms.
- Intrinsic Evidence for a Broader Interpretation: The specification notes the system may operate "within or may be connected to Carrier Network 130," suggesting the processor does not need to be physically located on the originator's premises. (’122 Patent, col. 2:56-58).
- Intrinsic Evidence for a Narrower Interpretation: The specification also states the system may operate in an "Originator's 100 PBX...predictive dialer, call distribution system" or be "embedded within Originator's 100 communication device." (’122 Patent, col. 2:58-62). This language could be used to argue for a narrower construction requiring a higher degree of proprietary or physical control by the originator.
The Term: "trigger"
- Context and Importance: Claim 1 requires the trigger to "compris[e] a telephone number of the call target." The definition is critical for infringement, as it distinguishes the claimed invention from systems that might use other data points (e.g., a campaign ID, a user setting) to initiate the number-swapping process.
- Intrinsic Evidence for a Broader Interpretation: The detailed description states a trigger "may be one or more predetermined numbers in the Caller ID field, ... appended to the telephone number of Target 140..., or may be another predetermined communication." (’122 Patent, col. 3:1-5).
- Intrinsic Evidence for a Narrower Interpretation: An argument may be made that the specific language of Claim 1—"a trigger comprising a telephone number of the call target"—is a deliberate narrowing of the broader possibilities described in the specification. Therefore, only a trigger that actually contains the target's number would satisfy the claim language.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b), stating that Defendant possessed specific intent by "soliciting end users to purchase and use Defendant's Service." (Compl. ¶29). The theory appears to be that Defendant's customers are the direct infringers, and Defendant induces that infringement by providing the tool and encouraging its infringing use.
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint alleges Defendant was aware of the parent '169 patent as early as April 2009 and "knew or should have known of the '122 patent upon its issuance" in March 2012. (Compl. ¶21, ¶23). This alleged knowledge is the basis for the assertion that Defendant disregarded an "objectively high likelihood" of infringement. (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of locus of control: can the "information processor controlled by the call originator" limitation be met by a customer who configures and uses a "hosted," multi-tenant software-as-a-service platform provided by a third party like the Defendant?
- A key evidentiary question will be one of technical mechanism: what specific data or system event constitutes the "trigger" in the accused service? The case may turn on whether evidence demonstrates this trigger "compris[es] a telephone number of the call target," as required by Claim 1, or if the number-swapping logic is initiated by a different, non-infringing method.