RecepTrexx LLC v. ASUSTeK Computer Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: RecepTrexx LLC (Delaware)
  • Defendant: Asustek Computer Inc. (Taiwan)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 6:23-cv-00485, W.D. Tex., 07/07/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation.
• Core Dispute: Plaintiff alleges that certain unidentified products made by Defendant infringe a patent related to triggered playback of recorded messages to an incoming call on a cellular phone.
• Technical Context: The technology addresses the problem of receiving mobile phone calls in inconvenient settings by allowing the user to play a pre-recorded message to the caller while keeping the line open, rather than immediately answering or sending the call to voicemail.
• Key Procedural History: The patent-in-suit is a reissue of U.S. Patent No. 6,975,709. Reissue proceedings can involve amendments to the original patent's claims, which may introduce questions regarding claim scope and the potential for intervening rights defenses.

Case Timeline

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

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

• Patent Identification: U.S. Reissued 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 addresses the social and practical problems that arise when receiving a cellular phone call in a public place, such as a meeting or movie theater. Answering may be disruptive, but ignoring the call might cause the caller to disconnect, thinking the call attempt failed (RE42,997 Patent, col. 1:15-34).
• The Patented Solution: The invention provides a system for a cellular phone user to delay answering a call by triggering the playback of a pre-recorded message (e.g., "hold on") to the caller. The system is designed to keep the telephone connection with the caller open after the message plays, allowing the user to begin speaking with the caller at any time (RE42,997 Patent, col. 1:50-68). The patent describes both a "distributed" system, where the message is stored on the phone itself (RE42,997 Patent, Fig. 1), and a "centralized" system, where the message is stored on a network-based voice peripheral (RE42,997 Patent, Fig. 2).
• Technical Importance: The technology offered a method for managing incoming calls with more flexibility than the binary choice of either answering immediately or sending the call to a passive voicemail system (RE42,997 Patent, col. 2:25-30).

Key Claims at a Glance

The complaint alleges infringement of "Exemplary '997 Patent Claims" identified in an exhibit not attached to the publicly filed complaint (Compl. ¶11, ¶16). Independent claims 1 and 2 are representative of the two main embodiments disclosed in the patent.

• Independent Claim 1 (Distributed System):

  • A distributed system to delay answering a call made to a cellular phone, comprising:
  • means to record a message to be provided to a caller; 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 to said cellular phone, 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.

• Independent Claim 2 (Centralized System):

  • A centralized system to delay answering a call made to a cellular phone, said system comprising:
  • means to record a message to be provided to a caller; 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 to said cellular phone, an entry on a calendar, an entry on a clock, an entry into a location device, a telephone order, an electronic message, a webpage interface, interaction with a service representative, and combinations thereof;
  • wherein said caller is connected, said message is played, and, after said message is played, said caller remains connected.

Plaintiff reserves the right to assert other claims, including dependent claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

• The complaint does not identify any specific accused products, referring only to "Exemplary Defendant Products" (Compl. ¶11).

Functionality and Market Context

• The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality. It alleges that infringement details are contained in "charts comparing the Exemplary '997 Patent Claims to the Exemplary Defendant Products" in an external document, Exhibit 2, which was not filed with the complaint (Compl. ¶16).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint’s substantive infringement allegations are incorporated by reference from an external document, Exhibit 2, which is not available for analysis (Compl. ¶16, ¶17). The complaint alleges in a conclusory manner that the unspecified "Exemplary Defendant Products" practice the technology claimed by the ’997 Patent and "satisfy all elements of the Exemplary '997 Patent Claims" (Compl. ¶16). The infringement theory is alleged to cover direct infringement through making, using, and selling the products, as well as internal testing by Defendant's employees (Compl. ¶11-12). Without access to the claim charts in Exhibit 2, a detailed element-by-element analysis is not possible.

• Identified Points of Contention:
  • Scope Questions: A central dispute may concern the construction of the means-plus-function term "means to instruct." The scope of this term is limited to the structures disclosed in the patent's specification for performing the instruction function and their equivalents. The infringement analysis will depend on whether the accused products contain structures corresponding to those disclosed in the ’997 Patent, such as specific interactions with a phone's keypad, calendar software, or network service control points (RE42,997 Patent, col. 4:41-44).
  • Technical Questions: A key technical question is whether the accused products’ functionality meets the "caller remains connected" limitation. The patent specification describes this as a state where the user can begin speaking with the caller at any time, potentially via a "three-way bridge" (RE42,997 Patent, col. 3:15-18). It raises the question of whether the accused products create such a live, interactive connection or if they use a different mechanism, such as handing the call off to a separate, non-interactive voicemail or announcement system.

V. Key Claim Terms for Construction

• The Term: "means to instruct said message to be played" (Claim 1 and 2)

• Context and Importance: This is a means-plus-function limitation governed by 35 U.S.C. § 112(f). Its construction will be critical because its scope is not defined by the literal words of the claim, but by the specific structures, materials, or acts described in the specification that perform the function of "instructing," and their equivalents. Practitioners may focus on this term because the infringement determination will require identifying a corresponding structure in the accused products.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party could argue that the list of ways to instruct (e.g., "a button," "a keypad entry," "an entry on a calendar") is illustrative, not exhaustive, and that the "means" should cover any corresponding software or hardware in a modern smartphone that achieves the same result of triggering a message.
  • Evidence for a Narrower Interpretation: The specification discloses specific implementations, such as a user pushing a button to send a signal to a network switching system (RE42,997 Patent, col. 3:3-6) or software on the phone interacting with calendar entries to automatically enable the feature (RE42,997 Patent, col. 3:51-60). A party could argue the claim scope is limited to these specific disclosed embodiments and their close equivalents.

• The Term: "said caller remains connected" (Claim 1 and 2)

• Context and Importance: This term distinguishes the invention from conventional voicemail systems where the initial call is typically terminated and a new connection is made to a voicemail server. The definition of "remains connected" will be pivotal in determining whether the accused products, which may have sophisticated call-handling features, fall within the claim scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might argue that "remains connected" simply means the call session is not dropped from the caller's perspective, regardless of the underlying network topology.
  • Evidence for a Narrower Interpretation: The specification suggests an active, bridgeable connection. For example, it states the user can "begin speaking with the caller at any time" after the message plays and describes a "three-way bridge, between the voice peripheral, the caller and the user" (RE42,997 Patent, col. 3:15-18). This language may support a narrower construction requiring a persistent, real-time audio path that the user can join seamlessly.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials" that instruct end users on how to use the accused products in a manner that infringes the ’997 Patent (Compl. ¶14).
• Willful Infringement: The complaint does not explicitly allege willful infringement. It pleads that Defendant has "Actual Knowledge of Infringement" based on the service of the complaint and attached claim charts (Compl. ¶13). This allegation supports a claim for post-filing enhanced damages but does not allege pre-suit knowledge or willfulness.

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

• A core issue will be one of claim construction and equivalence: how will the court construe the "means to instruct" limitation under § 112(f)? The outcome will depend on what structures are identified in the patent's specification as performing the claimed function, and whether the corresponding hardware and software components in the accused products are the same or equivalent.
• A key evidentiary question will be one of technical operation: do the accused products actually perform the claimed function of keeping the "caller remains connected" in the manner envisioned by the patent—a live, bridgeable session—or do they use a fundamentally different architecture, such as a "decline with message" feature that severs the live call path and sends a pre-formatted text or routes to a separate system?
• A threshold procedural question concerns pleading sufficiency: does the complaint's complete reliance on an unfiled external exhibit for all factual details of infringement meet the plausibility pleading standards required by federal court procedure? This may present an immediate challenge for the plaintiff to overcome.