DCT
1:22-cv-01070
Coretek Licensing LLC v. Babylon LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Coretek Licensing LLC (Texas)
- Defendant: Babylon, LLC (Delaware)
- Plaintiff’s Counsel: Sand, Sebolt & Wernow Co., LPA
- Case Identification: 1:22-cv-01070, W.D. Tex., 10/20/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant resides in the district through a regular and established place of business.
- Core Dispute: Plaintiff alleges that Defendant’s telehealth application and associated systems infringe four patents related to methods for initiating network connections from a wireless device by bypassing a traditional cellular network operator's Home Location Register (HLR).
- Technical Context: The patents operate in the domain of mobile telecommunications and Voice over Internet Protocol (VoIP), addressing systems that provide flexibility and potential cost savings by routing communications over alternative networks instead of being locked into a single cellular carrier's infrastructure.
- 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
| Date | Event |
|---|---|
| 2006-03-07 | Earliest Priority Date for ’512, ’154, and ’551 Patents |
| 2011-04-04 | Earliest Priority Date for ’575 Patent |
| 2014-10-14 | U.S. Patent No. 8,861,512 Issues |
| 2015-10-27 | U.S. Patent No. 9,173,154 Issues |
| 2016-06-14 | U.S. Patent No. 9,369,575 Issues |
| 2017-03-07 | U.S. Patent No. 9,591,551 Issues |
| 2022-10-20 | 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”
The Invention Explained
- Problem Addressed: The patent’s background section describes the economic and technical constraints imposed on users by cellular network operators, who control call routing and tariffs through a central database called a Home Location Register (HLR). This control limits user choice and can lead to high costs, particularly when roaming. (’512 Patent, col. 1:43-65).
- The Patented Solution: The invention proposes a system where a wireless device uses a downloadable software "module" to send a call request to an independent server, rather than to the operator's HLR. This server, which is not limited to using cellular-specific protocols, then intelligently decides the best and most cost-effective way to route the call over any available network (e.g., VoIP, another cellular network). (’512 Patent, Abstract; col. 2:51-68).
- Technical Importance: This technology represents a method to decouple call control from the physical network infrastructure, enabling service providers to offer more flexible and potentially lower-cost communication services by leveraging internet protocols. (’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).
- Claim 1, the lead asserted method claim, includes the following essential elements:
- A method of enabling a wireless device to initiate a network connection without using a network operator's HLR.
- The wireless device uses a downloadable software module to contact a server over a wireless link.
- The wireless device uses the module to send data to the server that defines a call request.
- In response to the request, a software application on the server decides on the appropriate routing to a third-party end-user over available networks, without using the network operator's HLR.
- The complaint also asserts dependent claims 4, 5, 8, and 12, which add limitations such as using HTTP, requiring manual data entry, and acting as a media server (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”
The Invention Explained
- Problem Addressed: The patent, a continuation of the application leading to the ’512 patent, addresses the same problem of user restrictions and high costs imposed by HLR-based cellular network architectures (’154 Patent, col. 1:43-64).
- The Patented Solution: The patented solution is functionally identical to that of the ’512 patent, involving a downloadable module on a device that contacts an independent server for call routing. The primary distinction in the claims is the recitation of a "wireless handheld cellular phone device" instead of the more general "wireless device" used in the ’512 patent. (’154 Patent, Abstract; col. 2:54-67).
- Technical Importance: The technical importance is identical to that of the ’512 patent, focusing on providing routing flexibility and circumventing the control of traditional cellular operators. (’154 Patent, col. 2:41-49).
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).
- Claim 1, the lead asserted method claim, includes the following essential elements:
- A method of enabling a "wireless handheld cellular phone device" to initiate a network connection without using a network operator's HLR.
- The device uses a downloadable software module to contact a server.
- The device uses the module to send a call request to the server.
- A software application on the server decides the routing to a third-party end-user without using the network operator's HLR.
- The complaint also asserts dependent claims 3, 4, 7, and 11, which add limitations such as using HTTP and transferring media assets (Compl. ¶41).
U.S. Patent No. 9,369,575 - “DYNAMIC VOIP LOCATION SYSTEM”
- Technology Synopsis: This patent addresses the technical challenge of tracking a mobile device's real-time network location (its "VoIP address or return path") to reliably route VoIP calls as the device moves between different networks (e.g., cellular to Wi-Fi). The invention describes a system where a software module on the device periodically authenticates with a server, reporting its current network path, which is stored in a database to enable dynamic and accurate call routing. (’575 Patent, Abstract; col. 2:31-44).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶¶47, 132).
- Accused Features: The complaint alleges that the "Babylon App" infringes by operating as a system that detects the IP address of a user's device, stores this "VoIP address or return path" in a database, and uses this dynamically updated information to route calls between users, with the app periodically authenticating with the "Babylon server" (Compl. ¶¶133-139).
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”
- Technology Synopsis: As part of the same family as the ’512 and ’154 patents, this patent covers the same core technology of bypassing an operator's HLR. The invention is claimed as a computer program product (e.g., an application) that, when executed on a wireless device, configures the device to contact a server for intelligent call routing, thereby circumventing the traditional cellular architecture. (’551 Patent, Abstract; Compl. ¶52).
- 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 "Medici App" is an infringing computer program product on a smartphone that initiates calls (e.g., SIP/VoIP Invite) by contacting a "Babylon Server" over an IP network (e.g., Wi-Fi), which then decides the routing without using the cellular HLR (Compl. ¶¶142, 144, 147).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are communications solutions offered by Defendant, primarily identified as the "Babylon App" and the "Babylon Website," which incorporates related systems like the "Babylon Server" (Compl. ¶¶4, 71). The complaint also refers to a "Medici App" when alleging infringement of the ’551 patent (Compl. ¶142).
Functionality and Market Context
- The complaint alleges the Accused Product is communications software that enables users to make calls over internet or IP networks, such as Wi-Fi (Compl. ¶73). This functionality is allegedly accomplished via a downloadable software application (the "Babylon application") on a user's smartphone, which contacts a "Babylon Server" to manage and route calls (e.g., SIP/VoIP Invite signals) to other users (Compl. ¶¶74, 76). The system is also accused of detecting and storing the IP addresses of user devices to facilitate these connections (Compl. ¶133).
- The complaint alleges that Defendant derives revenue from services provided to customers through the Babylon Website and its related systems (Compl. ¶4).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,861,512 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of enabling a wireless device... 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 (e.g., via Wi-Fi), which "bypasses network operator's home location register (HLR)." | ¶73 | col. 17:21-24 |
| (a) the wireless device using a module that is responsible for contacting a server... wherein the device includes the module that is implemented as software and that is downloadable to the device; | A smartphone uses the downloadable "Babylon application" (module) to contact the "Babylon Server" over a wireless link like Wi-Fi. | ¶74 | col. 17:25-33 |
| (b) the wireless device using the module to send, over the wireless link, data to the server that defines a call request; | The smartphone uses the Babylon application to send an "Invite signal from caller to server" over a Wi-Fi link, which defines the call request. | ¶75 | col. 17:34-37 |
| (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... without using the network operator's home or visitor location register. | Software running on the "Babylon Server" decides on the appropriate routing (e.g., sending an "Invite signal from server to callee") to another user without using the network operator's HLR or visitor location register. | ¶76 | col. 17:38-46 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the phrase "without using a network operator's home location register" should be construed to cover systems like the accused VoIP app, which are inherently independent of the HLR, or if it is limited to systems that actively intercept or bypass calls that would have otherwise used the HLR. The defense may argue that for a pure VoIP-over-WiFi call, the HLR is an irrelevant component, not one that is being "bypassed."
- Technical Questions: The complaint alleges the server is "deciding on the appropriate routing." The patent specification discusses deciding on the "lowest cost routing" (’512 Patent, col. 18:20-21). A factual dispute may arise over whether the Babylon Server's function—which may be a simple IP address lookup for another Babylon user—is technically equivalent to the more complex routing decision described in the patent.
U.S. Patent No. 9,173,154 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... 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 IP network for calling, which bypasses the HLR. | ¶101 | col. 17:36-40 |
| (a) the wireless handheld cellular phone device using a module that is responsible for contacting a server... wherein the... device includes the module that is implemented as software and that is downloadable... | A smartphone uses the downloadable "Babylon application" (module) to contact the "Babylon Server" over a Wi-Fi link. | ¶102 | col. 17:41-48 |
| (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 uses the application to send an "Invite signal from caller to server" over a Wi-Fi link. | ¶103 | col. 17:49-51 |
| (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. | Software on the "Babylon Server" decides the routing to another user without using the network operator's HLR. | ¶104 | col. 17:52-59 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis for the ’154 Patent will turn on the construction of "wireless handheld cellular phone device." A key question is whether a smartphone making a VoIP call over a Wi-Fi network is operating as a "cellular phone device" for the purposes of the claim, or if it is functioning as a general-purpose computing device in a way that falls outside this more specific limitation.
- Technical Questions: As with the ’512 Patent, a technical question remains regarding the correspondence between the accused server's routing function and the "deciding on the appropriate routing" required by the claim.
V. Key Claim Terms for Construction
The Term: "without using a network operator's home location register" (’512 Patent, Claim 1; ’154 Patent, Claim 1)
Context and Importance: This phrase is the central premise of the inventions. Its construction will determine whether the patents cover modern VoIP applications that are architecturally separate from the cellular HLR system. Practitioners may focus on this term because it raises a classic dispute between a patent's original context (bypassing cellular infrastructure) and its application to new technologies (native IP communications).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification emphasizes providing users "the freedom to choose the cheapest option for each call set-up route" and overcoming the "economic incentive" of operators to restrict choice (’512 Patent, col. 1:50-58). This purpose-driven language could support an interpretation covering any system on a mobile device that achieves routing independence from the cellular operator.
- Evidence for a Narrower Interpretation: The patent’s background is heavily focused on the mechanics of cellular systems, explaining HLRs, VLRs, IMSI, and roaming in detail (’512 Patent, col. 2:3-49). This context may support a narrower interpretation where the invention is limited to systems that interact with or re-route calls that would otherwise be subject to HLR control, not systems that are inherently HLR-agnostic.
The Term: "wireless handheld cellular phone device" (’154 Patent, Claim 1)
Context and Importance: This term is narrower than the "wireless device" limitation in the parent ’512 patent, suggesting a deliberate distinction. The viability of the infringement claim for the ’154 patent depends on whether a modern smartphone, when making a VoIP call over Wi-Fi, is considered a "cellular phone device" within the meaning of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that a smartphone is, by its very nature and primary function, a "cellular phone device," and this character does not change when it uses a different network modality like Wi-Fi for a specific task.
- Evidence for a Narrower Interpretation: A defendant may argue that for the accused infringing act (a VoIP call over Wi-Fi), the device is not using its cellular radio or interfacing with the cellular network. Therefore, it is not functioning as a "cellular phone device" in that specific context, but rather as a generic wireless computing device, placing the action outside the scope of this specific term.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induced infringement by "encouraging infringement, knowing that the acts Defendant induced constituted patent infringement" (Compl. ¶¶93, 125, 174). The complaint does not plead specific facts to support this allegation, such as references to user manuals or advertisements that instruct users on how to perform the allegedly infringing steps.
- Willful Infringement: The complaint alleges knowledge of infringement for all four patents "at least as of the service of the present Complaint" (Compl. ¶¶91, 123, 172). There is no allegation of pre-suit knowledge. While the prayer for relief requests enhanced damages, the factual allegations currently only support a claim for post-filing willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "without using a network operator's home location register," which originates in the context of circumventing 2G/3G cellular network controls, be construed to cover modern, IP-native applications that operate independently of the HLR by design, rather than by active bypass?
- A second key issue centers on claim differentiation and technological function: Does a smartphone making a VoIP call over Wi-Fi qualify as a "wireless handheld cellular phone device" under the narrower claims of the ’154 patent, or is it functioning as a general computing device outside that scope? This question probes the boundary between a device's inherent nature and its specific mode of operation during an accused act.
- An important evidentiary question will be one of functional correspondence: Does the accused "Babylon Server," by allegedly performing an IP address lookup for another app user, perform the specific function of "deciding on the appropriate routing" as taught by the patents, which describe a more substantive analysis like "lowest cost routing"? The case may turn on whether the accused functionality is technically equivalent to what is claimed.