RecepTrexx LLC v. TCL Technology Group 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: 6:23-cv-00487, W.D. Tex., 07/07/2023
• Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign corporation.
• Core Dispute: Plaintiff alleges that Defendant’s cellular phone products infringe a patent related to the triggered playback of recorded messages during incoming calls.
• Technical Context: The technology concerns methods for managing incoming cellular phone calls in situations where immediately answering is inconvenient, such as in a public place.
• Key Procedural History: The patent-in-suit, RE42,997, is a reissue of U.S. Patent No. 6,975,709. Reissue proceedings can involve amendments or arguments that may affect the scope of the patent's claims. The complaint does not mention any other litigation or administrative proceedings.

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, issued December 6, 2011

The Invention Explained

• Problem Addressed: The patent identifies the social and practical problem of receiving cellular phone calls in public places like meetings or theaters, where answering would be disruptive. The patent notes that simply ignoring the call might lead the caller to believe the call attempt failed. (RE42,997 Patent, col. 1:15-33).
• The Patented Solution: The invention provides a system allowing a cellular phone user to respond to an incoming call not by speaking, but by triggering the playback of a pre-recorded message to the caller (e.g., "please hold on"). The system is designed to keep the call connected after the message plays, allowing the user to begin speaking at any time. The patent describes both "distributed" embodiments, where the message is stored on the phone itself, and "centralized" embodiments, where the message is stored on a network peripheral. (RE42,997 Patent, col. 2:51-65).
• Technical Importance: This approach provided a method for call recipients to acknowledge and manage an incoming call without immediate voice communication, offering more flexibility than either answering directly or letting the call go to voicemail. (RE42,997 Patent, col. 2:25-29).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims," with specific "Exemplary '997 Patent Claims" identified in an exhibit not attached to the publicly filed complaint (Compl. ¶11).
• Independent Claim 1, a representative "distributed system" claim, recites the following elements:
  • A distributed 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 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 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.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint does not identify specific products by name. It refers generally to "Exemplary Defendant Products" that are identified in charts within Exhibit 2, which was not filed with the complaint. (Compl. ¶11, ¶16).

Functionality and Market Context

• The complaint alleges that Defendant’s products "practice the technology claimed by the '997 Patent" (Compl. ¶16). This implies the accused products are cellular phones or similar communication devices that possess functionality for managing incoming calls by playing a pre-recorded message to the caller. The complaint does not provide further detail on the specific operation of the accused products or their market context.

IV. Analysis of Infringement Allegations

The complaint incorporates by reference claim charts from Exhibit 2, which was not provided with the filing (Compl. ¶16-17). Therefore, a detailed claim-chart summary cannot be constructed.

The narrative infringement theory alleges that the Defendant's products "satisfy all elements of the Exemplary '997 Patent Claims" (Compl. ¶16). The complaint alleges direct infringement through Defendant's acts of making, using, testing, offering for sale, and selling the accused products (Compl. ¶11-12). The complaint does not provide specific factual allegations detailing how any particular accused product meets the limitations of the asserted claims.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Evidentiary Questions: A primary question will be what evidence Plaintiff can produce to demonstrate that Defendant's unspecified products perform the functions recited in the claims. The absence of specific product identification or technical descriptions in the complaint leaves the factual basis for infringement unstated.
• Scope Questions: The analysis may focus on whether modern smartphone functionalities, which may not have been contemplated when the patent was filed in 2003, fall within the scope of the claims. For example, a court may need to determine if a modern "quick-reply" text message feature constitutes playing a "recorded message" where the "caller remains connected" as required by the claims.

V. Key Claim Terms for Construction

The Term: "means to instruct said message to be played" (from Claim 1)

• Context and Importance: This term is written in means-plus-function format under 35 U.S.C. § 112(f). Its scope is not limitless but is confined to the specific structures disclosed in the patent's specification for performing the "instructing" function, and their equivalents. The outcome of the infringement analysis for Claim 1 will depend heavily on whether the accused products contain a structure corresponding to what is disclosed in the '997 Patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself lists a variety of structures: "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" (RE42,997 Patent, col. 7:47-52). A party might argue this list is exemplary, not exhaustive, of the types of "means" covered.
  • Evidence for a Narrower Interpretation: The scope is strictly limited to the structures actually described in the specification as performing the instruction function. The specification describes a user pushing "a button on the telephone" or entering "a command through the phone keys" as the primary user-initiated actions in a distributed system (RE42,997 Patent, col. 2:61-64; col. 3:35-37). The detailed description also discusses automated triggers based on calendar entries or location (RE42,997 Patent, col. 3:51-66). A party could argue the means is limited to these specific software and hardware implementations.

The Term: "said caller remains connected" (from Claim 1)

• Context and Importance: This limitation distinguishes the invention from standard voicemail systems, where a connection to the called party is typically terminated. The interpretation of "connected" is critical to determining infringement, as it defines the required state of the communication channel after the message is played.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that "connected" only requires that the communication link between the caller and the network (or the called device) is maintained, without necessarily requiring an open, real-time voice path at all moments.
  • Evidence for a Narrower Interpretation: The specification states that the connection is kept open "so that the user can begin speaking with the caller at any time after the message ends, or in an alternative, the user can interrupt the message" (RE42,997 Patent, col. 2:64-67). This language suggests that "connected" requires an active, bridged, three-way connection (caller, user, and message peripheral, if centralized) or a two-way voice channel (caller and user device) that is immediately available for voice communication.

VI. Other Allegations

• Indirect Infringement: Plaintiff alleges induced infringement, asserting that since being served with the complaint, Defendant has continued to sell products and distribute "product literature and website materials" that instruct end users to use the products in a manner that infringes the '997 Patent (Compl. ¶14-15).
• Willful Infringement: The complaint does not allege pre-suit knowledge. It asserts that the filing of the complaint itself provides Defendant with "actual knowledge of infringement," and that any continued infringement thereafter is willful (Compl. ¶13-14).

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

1. A foundational evidentiary question: Given the lack of specificity in the complaint, a central issue will be whether Plaintiff can produce evidence demonstrating that Defendant’s accused products actually perform the specific functions required by the patent claims. Without access to the infringement contentions in Exhibit 2, the factual basis of the lawsuit remains unclear.
2. A critical question of claim scope: The case will likely turn on the construction of the "means to instruct" limitation. The dispute will focus on identifying the corresponding structures disclosed in the 2003-era specification and determining whether the accused modern smartphone features are structural equivalents.
3. A question of technical operation: The interpretation of "remains connected" will be pivotal. The core issue for the court will be to determine whether this requires a continuously open voice channel, as suggested by the specification's goal of allowing the user to interrupt and speak at any time, or if other forms of maintained signaling in modern cellular networks satisfy this limitation.