Coretek Licensing LLC v. American Well Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Coretek Licensing LLC (Texas)
  • Defendant: American Well Corporation (Delaware)
  • Plaintiff’s Counsel: Mann Law Group PLLC
• Case Identification: 2:22-cv-01369, W.D. Wash., 09/27/2022
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s telehealth platform, including its "Amwell App" and associated server infrastructure, infringes four patents related to methods for initiating network communications by bypassing a traditional mobile network operator's Home Location Register (HLR) and for dynamically tracking a device's VoIP location.
• Technical Context: The patents address technologies for routing communications over data networks (like the internet) as an alternative to conventional cellular network call-routing systems, a foundational concept for modern Voice over IP (VoIP) and other over-the-top (OTT) communication applications.
• Key Procedural History: The complaint does not mention any prior litigation, IPR proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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 describes how mobile network operators historically maintained significant control over subscribers through the Home Location Register (HLR), a central database that manages call routing and services. This control structure limited user choice and prevented users from selecting cheaper, alternative networks for calls (Compl. ¶1; ’512 Patent, col. 1:40-67).
• The Patented Solution: The invention proposes a system where a software "module" on a wireless device bypasses the operator's HLR to set up a connection. The module sends a "call request" (e.g., via SMS or HTTP) to a separate server, which then analyzes available networks and determines the most appropriate routing for the connection, such as the lowest cost option (’512 Patent, Abstract; col. 2:51-61). This architecture moves call routing intelligence from the carrier-controlled HLR to an independent server.
• Technical Importance: This approach describes a foundational architecture for over-the-top (OTT) communication services that operate independently of the underlying cellular carrier’s core voice network infrastructure (Compl. ¶14).

Key Claims at a Glance

• Independent claims 1, 23, and 24 are asserted (Compl. ¶25).
• Claim 1, a method claim, includes the following essential elements:
  • A wireless device uses a downloadable software module to contact a server over a wireless link.
  • The module sends data to the server defining a "call request."
  • In response, a software application on the server decides on the routing to a third-party end-user over available networks.
  • This decision is made "without using the network operator's home or visitor location register."
• The complaint does not explicitly reserve the right to assert dependent claims, but infringement of claims 4, 5, 8, and 12 is alleged (Compl. ¶25).

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: As a continuation of the family including the ’512 Patent, the ’154 Patent addresses the same problem: the limitations and control imposed by traditional mobile network operators through their proprietary HLR systems, which restricts user choice for call routing and services (’154 Patent, col. 1:44-67).
• The Patented Solution: The ’154 Patent claims a similar solution, specifically for a "wireless handheld cellular phone device." A downloadable software module on the phone sends a call request to a server, which then determines the optimal routing for the call, thereby bypassing the cellular operator's HLR and VLR infrastructure (’154 Patent, Abstract; col. 2:54-64).

Key Claims at a Glance

• Independent claims 1, 22, 23, and 24 are asserted (Compl. ¶42).
• Claim 1, a method claim, includes the following essential elements:
  • A wireless handheld cellular phone device uses a downloadable software module to contact a server.
  • The module sends data over a wireless link to the server that defines a "call request."
  • A software application on the server responds by deciding on the routing for the call to a third-party end-user.
  • This routing is decided "without using the network operator's home or visitor location register."
• The complaint alleges infringement of dependent claims 3, 4, 7, and 11 (Compl. ¶42).

U.S. Patent No. 9,369,575 - "DYNAMIC VOIP LOCATION SYSTEM"

Technology Synopsis

This patent describes a system for dynamically determining the location of a VoIP-enabled wireless device. The system works by extracting the device's "VoIP address or return path" (e.g., its current IP address) from communications, storing and updating this information in a database, and using it to route future communications to that device (Compl. ¶46; ’575 Patent, Abstract).

Asserted Claims

Independent claim 1 is asserted (Compl. ¶49).

Accused Features

The complaint alleges that the Accused Instrumentality is a system that determines and collects the IP address of a user's device to enable voice calling over an IP network, stores this information in databases, and uses it to route calls (Compl. ¶¶134-139).

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

Belonging to the same family as the ’512 and ’154 patents, this patent claims a "computer program product embodied on a non-transitory storage medium." The product, when executed, configures a wireless device to initiate a network connection by contacting a server to handle call routing, thereby bypassing the network operator's HLR (Compl. ¶53; ’551 Patent, Abstract).

Asserted Claims

Independent claims 1, 22, 23, and 24 are asserted (Compl. ¶71).

Accused Features

The complaint alleges the "Amwell App" is a computer program product that, when executed on a smartphone, contacts the Amwell Server to initiate SIP/VoIP calls over the internet, thus bypassing the cellular operator's HLR (Compl. ¶¶145, 159).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Amwell App" communications software, the associated "Amwell Server," and the broader telehealth platform and systems operated by Defendant (Compl. ¶¶72, 100, 132, 143).

Functionality and Market Context

• The complaint describes the accused system as a Voice over IP (VoIP) platform where a user's smartphone, running the Amwell App, initiates communications over an internet or IP network link (e.g., Wi-Fi or 4G) (Compl. ¶¶74, 102).
• A "SIP/VoIP Invite" signal is sent from the app to the Amwell Server, which functions as a "SIP/VoIP proxy Server to route/manage calls" (Compl. ¶77). This server decides on the appropriate routing for the call to connect to another end-user on the platform (Compl. ¶77).
• The complaint alleges this architecture "bypasses network operator's home location register" because internet-based calling does not require the use of the cellular carrier's HLR (Compl. ¶74).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’512 Patent Infringement Allegations

’154 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A primary issue may be whether the phrase "without using a network operator's home location register" covers over-the-top (OTT) applications that inherently operate on a separate data layer, or if it is limited to methods that provide a direct alternative to HLR-based routing within the conventional cellular telephony framework. The defense may argue that the patents contemplate an alternative to traditional cellular call setup, whereas the accused product uses a fundamentally different (VoIP) technology that never implicates an HLR in the first place.
• Technical Questions: The infringement theory hinges on whether the "SIP/VoIP Invite" signal sent by the Amwell App (Compl. ¶76) constitutes the "data to the server that defines a call request" as required by the claims. The patents describe this request being sent via protocols like SMS or HTTP (’512 Patent, col. 4:33-36), raising the question of whether a standard VoIP session initiation signal performs the same function in the same way as the specific mechanisms disclosed.

V. Key Claim Terms for Construction

• The Term: "without using a network operator's home location register"
• Context and Importance: This limitation is the central inventive concept of the ’512, ’154, and ’551 patents. Its construction will determine whether the patents can read on modern OTT communication apps like the accused product, which function over general-purpose data networks rather than interacting with or modifying traditional cellular call setup procedures.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not specify how the HLR is avoided, only that the routing decision occurs "without using" it. The specification suggests the server can receive communications using "any one of several different protocols" and is not limited to the cellular-specific MAP protocol, which could support applying the claim to non-cellular protocols like VoIP (’512 Patent, col. 2:57-61).
  • Evidence for a Narrower Interpretation: The patent's background is exclusively focused on the problems of the traditional cellular network architecture and operator control via the HLR (’512 Patent, col. 1:24-50). The described embodiments, which use SMS or add prefixes to dialed numbers, suggest a system that integrates with and provides an alternative within the cellular ecosystem, rather than operating entirely outside of it like a pure data-based VoIP application.

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of induced infringement for the ’512 and ’154 patents, stating Defendant encouraged acts that constituted infringement (Compl. ¶¶94, 126, 175). It does not, however, plead specific facts showing active steps taken with the knowledge and specific intent to encourage infringement by others, such as by instructing users in a way that maps to the patented methods.
• Willful Infringement: Willfulness allegations are based on knowledge of the patents "at least as of the service of the present Complaint" (Compl. ¶¶92, 124, 173). This pleading supports a claim for post-suit willful infringement only. Plaintiff requests enhanced damages in its prayer for relief (Compl., p. 44, ¶f).

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

The resolution of this dispute may turn on the court's answers to several core questions:

• A core issue will be one of technological scope: Does the central claim limitation "without using a network operator's home location register," conceived in the context of creating alternatives to traditional cellular call routing, extend to cover modern over-the-top (OTT) VoIP applications that operate on a separate data layer and were never designed to interact with an HLR?
• A related question will be one of claim construction: Can the patentee's broad claim language overcome a specification that is narrowly focused on the problems and architecture of the legacy cellular network, or will the claims be interpreted in light of the specific problems the patents purport to solve?
• A key evidentiary question will concern functionality: Does the accused platform's use of a standard "SIP/VoIP Invite" signal to initiate a data session equate to the patented method of a device module sending a discrete "call request" to a server, which then establishes a conferenced connection?