Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Twilio, Inc. v. Telesign Corp.

United States District Court, N.D. California, San Jose Division

April 17, 2017

TWILIO, INC., Plaintiff,
v.
TELESIGN CORPORATION, Defendant.

          ORDER GRANTING IN PART DEFENDANT'S MOTION TO DISMISS RE: DKT. NO. 31

          LUCY H. KOH United States District Judge

         Plaintiff Twiilio, Inc. (“Twilio” or “Plaintiff”) filed a patent infringement suit against Defendant Telesign Corporation (“Telesign” or “Defendant”) and alleged that Defendant infringed the claims of U.S. Patent Nos. 8, 306, 021 (“the '021 Patent”), 8, 837, 465 (“the '465 Patent”), 8, 755, 376 (“the '376 Patent”), 8, 738, 051 (“the '051 Patent”), 8, 737, 962 (“the '962 Patent”), 9, 270, 833 (“the '833 Patent”), and 9, 226, 217 (“the '217 Patent”) (collectively, the “Asserted Patents”). Before the Court is Defendant's Motion to Dismiss, which seeks to dismiss all seven Asserted Patents. ECF No. 31 (“Mot.”). The Court issued its decision on the '962, '833, '021, '465, and '376 patents on March 31, 2017. ECF No. 57. The present order covers the '051 and '217 patents. Having considered the submissions of the parties, the relevant law, and the record in this case, the Court GRANTS Defendant's Motion to Dismiss with respect to the '051 and '217 patents.

         I. BACKGROUND

         A. Factual Background

         1. The Parties

         Plaintiff Twilio is a Delaware corporation with its primary place of business in San Francisco, California. ECF No. 1 (“Compl.”) ¶ 1. Plaintiff's co-founder, Jeffrey Lawson, is a co-inventor on three of the Asserted Patents. ECF No. 45 at 1. Defendant Telesign is a California corporation with its principal place of business in Marina Del Rey, California. Compl. ¶ 15.

         2. The Twilio Patents

         Plaintiff's complaint and the parties' briefing divides the asserted patents into four families: (1) the '962 and '833 patents (the “Score Patents”), (2) the '051 patent (the “Delivery Receipts Patent”), (3) the '021, '465, and '376 patents (the “Platform Patents”), and (4) the '217 patent (the “Path Selection Patent”). As mentioned above, this order covers the '051 and '217 patents, which are the Delivery Receipts Patent and the Path Selection Patent, respectively. An overview of the two patents follows.

         a. Delivery Receipt Patent (The '051 Patent)

         i. Specification

         The '051 patent is titled “Method and System for Controlling Message Routing.” Compl., Ex. D ('051 patent). It was filed on July 25, 2013 and issued on May 27, 2014. It claims priority to several provisional applications, the earliest of which was filed on July 26, 2012.

         The '051 patent generally relates to “controlling message routing in the telephony messaging field.” '051 patent at col. 1:17-18. In general, when a message is sent from one machine (or “node”) to another, it passes through a series of intermediate machines (or “nodes”) before it reaches its final destination. See id. at col. 1:40-42, 2:55-65. The process of determining the path that the message takes through these intermediate nodes is often referred to as “routing.” See id. at col. 1:40-60.

         In modern networks, the sender or the recipient of a message does not retain control over the route that a message takes through these intermediate nodes. Id. at col. 1:47-49, 2:55-65. This is due in part to the fact that the intermediate nodes are often controlled by third-parties who are not affiliated with the sender or the recipient of the message. See id. at col. 1:29-35. As a result, the sender or the recipient of the message cannot always trust that an intermediate node will reliably pass a message along to the next intermediate node on its route. See id. at col. 1:37-39. Messages can get “altered, delayed dropped, split into multiple messages, suffer from character encoding issues, or have any number of issues due to the message handling of an encountered node on the message's way to the destination.” Id. at col. 1:50-54. This “makes it extremely difficult for a party wishing to send and/or receive a message to ensure the integrity and reliability of communicating a message.” Id. at col. 1:55-57.

         One prior art solution for ensuring that messages have been reliably delivered is using a delivery receipt, which is an indication sent by the recipient that the message was received. Id. at col. 1:46-47. However, a delivery receipt also has reliability problems. Because it also passes through the same third-party, intermediate nodes, there is also no guarantee that it will be reliably transmitted. See id. at col. 1:37-39. Thus, at the time of invention, “there remain[ed] a need in the telephony field to create a new and useful method and system for controlling message routing.” Id. at col. 1:57-59.

         The '051 patent purports to solve this problem through one primary modification to delivery receipt usage: sending the delivery receipt through a “second channel, ” which is different from the one that the original message was sent through. Id. at col. 2:53-55, 3:14-15. For example, if a message is sent as a text message over an “SMS message routing channel, ” the delivery receipt could be sent through an “internet network channel.” Id. at col. 3:14-17.

         The '051 patent integrates this “second channel” feature into a larger method for monitoring and adjusting routing options for sending a message. Id. at col. 2:53-55. Figure 1 illustrates this method:

         (IMAGE OMITTED)

         At step S110, the message is sent through a “first channel” using a “routing option selected from a plurality of routing options.” Id. at col. 3:31-32. In the patent, “[r]outing options are preferably different initial nodes to which a message may be initially sent.” Id. at col. 3:35-37. As discussed above, a message will generally pass through a series of intermediate nodes before it reaches its destination, and the sender of the message does not retain control over the path that the message takes through these intermediate nodes. See id. at col. 1:40-42, 1:47-49, 2:55-65. Thus, the sender's selection of an initial node “functions as the fundamental point of control to the full route a message will take to arrive at a destination.” Id. at col. 3:65-67. After the message is passed off to the initial node, it will then get passed off to a series of intermediate nodes that lie between the initial node and the message's destination. See id. at col. 1:47-49, 2:55-65.

         Eventually, the message will either reach its destination or the destination will determine, after waiting for a certain period of time, that delivery was unsuccessful. See id. at col. 4:23-38. Once either of these events occurs, at step S120, the destination will send a “message delivery report” (i.e., a delivery receipt) to the sender through a “second channel” that is different from the “first channel.” Id. at col. 4:19-20. The message delivery report provides feedback on the message's delivery, such as whether delivery succeeded or failed and/or what condition the message arrived in (e.g., if it was “altered, censored, truncated, encoded improperly, split into multiple messages, or otherwise not conforming to the original outgoing message”). Id. at col. 4:25-31, 4:38-44.

         At step S130, the information in the message delivery report is used to “adjust the criteria used in selecting routing options” for future messages. Id. at col. 6:32-33. The specification refers to this step as “updating message routing data.” Id. at col. 6:31-32. For example, “[u]pdating the message routing data can include ranking routing options based at least in part on delivery success rates.” Id. at col. 6:42-43. At step S140, this adjusted criteria is put into practice: a “second routing option” is selected for a “second outgoing message.” Id. at col. 7:1-5.

         Neither the claims nor the specification provides much limitation on how this process must be implemented, or the contexts in which it can be deployed. Instead, the specification makes a number of non-limiting statements, including that: Messages can include “SMS, multimedia messaging service (MMS), image messaging, animation messaging, video messaging, audio/music messaging, internet protocol (IP) messaging, push notifications, and/or any suitable messaging technique.” Id. at col. 3:4-9; see also id. at col. 11:3-4 (“the messages are preferably SMS or MMS, but can be any suitable type of message”). “There may . . . be a plurality of types of channels available for sending a message such as SMS or MMS, push notifications, or any suitable messaging channel.” Id. at col. 4:9-12. “Generating a delivery report may include a number of various implementations, ” including “providing a user feedback interface [], redirecting internet and app links through a monitored system [], providing a monitored pin code service [], monitoring a user-reply signal [], and/or using any suitable alternative technique.” Id. at col. 4:66-5:7. “The routing options may be characterized by different service providers, networks, geographic locations, physical machines, resource addresses, contractual agreements, communication protocols, time-dependent quality/performance properties, and/or any other suitable distinguishing characteristics of message routing node.” Id. at col. 3:37-42. The “message routing data” can be any collection of data from the message delivery reports or other data sources, including “[d]ata or parameters from routing option contracts, data from message routing infrastructure such as Signaling System No. 7 (SS7), or any other resource that may be used in determining an optimality assessment.” Id. at col. 6:50-55.

         ii. Asserted Claims

         Twilio currently asserts claims 1-8, 11-20, and 22 of the Delivery Receipt Patent. ECF No. 55. Independent claims 1 and 18 recite:

1. A method for transmitting telephony messages comprising:
transmitting a first outgoing telephony message through a first channel using a first routing option selected from a plurality of routing options;
receiving a message delivery report through at least a second channel, wherein the second channel is different from the first channel;
updating message routing data in response to the message delivery report;
selecting a second routing option for at least a second outgoing message, the second routing option selected from the plurality of routing options prioritized by the updated message routing data; and
transmitting the second outgoing telephony message through the first channel using the selected second routing option.
18. A method comprising:
providing a message delivery system with at least two message delivery channel options;
sending a message through the message delivery system with a coded identifier in the content of the message, the message sent through one of the message delivery channel options, and wherein the coded identifier is mapped to the message delivery channel option used in sending the message;
at a code identifier service, tracking use of the coded identifier;
in response to the tracked use of the coded identifier, generating a score of the message delivery channel option based on results of the tracked message delivery.

'051 patent at col. 11:43-59, 12:63-13:9.

         b. The Path Selection Patent (The '217 Patent)

         i. Specification

         The '217 patent is titled “System and Method for Enabling Multi-Modal Communication.” Compl., Ex. G ('217 patent). It was filed on April 17, 2015 and issued on December 29, 2015. It claims priority to a provisional application, which was filed on April 17, 2014.

         The '217 patent generally relates to “enabling multi-modal communication in the telecommunication field.” '051 patent at col. 1:16-17. In modern mobile devices, multiple modes of communication are possible, such as “SMS, MMS, and PSTN voice calls, as well as IP based communication such as client application messaging and VoIP.” Id. at col. 1:23-25. For example, a user can wish a friend “good morning” from his mobile device by sending a text message (SMS or MMS communication), sending an email (IP based communication), or calling the friend (a PTSN voice call). See id. In addition to these options, a user can also communicate with his mobile device using “over the top (OTT) communication” services like WhatsApp. See id. at col. 1:27-32, 2:23-27.

         However, use of OTT services has a downside: it “can fragment the communication channels so that only those within an OTT provider can communicate.” Id. at col. 1:33-34. For example, if a user wishes to send a message through WhatsApp, the recipient must also use WhatsApp to receive this message and send a response. See id. The recipient cannot receive the message through a different OTT service, SMS, MMS, or some other mode of communication. See id.

         The '217 patent purports to address this problem through a method for enabling “transparent multi-modal communication” on a “communication platform” such that users can transparently send and receive communications through different modes. Id. at col. 2:9-19. For example, the method enables a user to send a text message and have it be received by another user as a WhatsApp message, and vice versa. See id at col. 2:9-19, 2:38-45.

         Figure 1 illustrates this method:

         (IMAGE OMITTED)

         A message sent through one of the modes of communication on the left (i.e., “SMS, ” “MMS, ” “IP App, ” “PSTN, ” “SIP, ” “Fax, ” “Email, ” “OTT Comm 1, ” “OTT Comm 2”) is transmitted to the communication platform (i.e., “communication service” at 110). Id. at col. 3:14-4:15, 8:5-9:34. The communication platform then chooses an appropriate mode of communication that suits the message's intended destination (i.e., “SMS, ” “MMS, ” “IP App, ” “PSTN, ” “SIP, ” “Fax, ” “Email, ” “OTT Comm 1, ” “OTT Comm 2” at 112), and then sends the message to that destination using that mode of communication. Id. at col. 4:16-54, 9:35-12:35. For example, if a user sends a message through WhatsApp to a destination device that only accepts SMS (i.e., text) messages, the communication platform selects an SMS service as the appropriate mode of communication and sends the message using that SMS service. See id.

         Figure 10 illustrates the process of selecting the appropriate mode of communication in more detail:

         (IMAGE OMITTED)

         When a user sends a message, this is transmitted to the communication platform as a “communication request.” See id. at col. 3:14-4:15, 17:23-30. The “communication request” identifies the “communication destination” for the message, which can be a phone number, an email address, an IP address, or “any suitable communication endpoint.” Id. at col. 3:17-21, 18:55-58. The “communication request” also includes “account information, ” which can include “an account identifier of the external system and an authentication token associated with the account identifier.” Id. at col. 18:4-6. For example, the “account identifier of the external system” could be an identifier for a user's WhatsApp account. See id. at col. 18:4-14.

         After the “communication request” is received, the communication platform determines whether the “communication request” is authenticated. Id. at col. 18:4-14. This “includes authenticating the communication request by using the authentication token, and determining that the communication request is permitted for an account identified by the account identifier.” Id. at col. 18:8-14.

         Next, the communication platform determines which modes of communication are available for the “communication destination.” Id. at col. 17:60-20:50. It does this through a simple database-style lookup: the communication platform stores “routing address records” in an “endpoint information repository.” Id. at col. 19:48-50. “[E]ach routing address record . . . associates a communication destination with at least one external communication provider.” Id. at col. 18:42-45. For example, a “routing address record” could associate a phone number (the “communication destination”) with an SMS service provider, a PTSN service provider, and an OTT communication service provider (the several “external communication provider[s]”). See id. at col. 18:32-20:50. Then, to determine which modes of communication are available for the “communication destination, ” the communication platform simply locates the “routing address record” for that “communication destination.” Id. at col. 19:44-20:50.

         After the communication platform locates the “routing address record” for the “communication destination, ” it selects one or several “external communication providers” through which to transmit the message. Id. at col. 20:51-23:9. This can be done using a “communications profile, ” which specifies a “priority” and a “weight” for various “external communication providers.” See id. at col. 20:62-22:3. However, “any suitable parameter” (instead of or in addition to “priority” and “weight”) can be “used in selecting [an external] communication provider.” Id. at col. 22:1-3.

         Finally, after the “external communication provider(s)” have been selected, the communication platform “provide[s] a request to establish communication with the communication destination to each selected [external] communication provider.” Id. at col. 23:10-12. The “external communication provider(s)” then transmit the message to the “communication destination.” See id. at col. 23:17-30.

         Neither the claims nor the specification provide much restriction on how this process must be implemented, or the contexts in which it can be deployed. Instead, the specification makes a number of non-limiting statements, including that: “The telephony platform can be . . . any suitable network accessible computing infrastructure. The system may . . . be used in combination with . . . any suitable communication platform.” Id. at col. 2:53-3:4. “Routing options . . . can include . . . any suitable communication service.” Id. at col. 4:16-27. “The communication destination can be . . . any suitable communication endpoint.” Id. at col. 3:17-21. “The communication platform can . . . use any suitable logic to determine a content and destination of a communication.” Id. at col. 4:10-13. “The account information can include . . . any suitable source information.” Id. at col. 13:29-31.

         ii. Asserted Claims

         Twilio currently asserts claims 1-12 and 15-19 of the Path Selection Patent. ECF No. 55.

         Independent claims 1 and 15 recite:

         1. A method comprising: at a multi-tenant communication platform:

receiving a request to establish communication, the request being provided by an external system and specifying a communication destination and an account identifier of the external system;
determining whether the account identifier is a valid account identifier of an account that is permitted to establish communication by using the communication platform;
responsive to a determination that the account identifier is a valid account identifier of an account that is permitted to establish communication by using the communication platform:
determining at least one communication provider for the communication destination based on an a [sic] routing address record matching the communication destination, the matching routing address record associating the communication destination with one or more communication providers, the routing address record being stored at the communication platform, each communication provider being external to the communication platform;
selecting one or more of the determined at least one communication provider; and
providing a request to establish communication with the communication destination to each selected communication provider,
wherein the communication platform generates the matching routing address record based on registration information provided to the communication platform for the communication destination by each determined communication provider, and wherein the communication destination matches at least one of a routing address identifier and a deterministic endpoint address specified in the matching routing address record.
15. A method comprising:
at a multi-tenant communication platform, and responsive to authentication of a communication request provided by an external system, the communication request specifying a communication destination and account information:
determining a routing address record of the communication platform that matches the communication destination of the communication request, the matching routing address record associating the communication destination with a plurality of external communication providers;
selecting at least one communication provider associated with the matching routing address record; and
providing a request to establish communication with the communication destination to each selected communication provider.

'217 patent at col. 29:35-30:3, 31:21-27.

         B. Procedural History

         On December 1, 2016, Plaintiff filed the instant patent infringement suit. In its complaint, Plaintiff alleged that Defendant “has infringed and continues to infringe one or more claims of the [Asserted Patents].” Compl. ¶¶ 75, 91, 106, 135, 156, 169, 184. The products accused included “Defendant's Smart Verify product, ” “Auto Verify product, ” “SMS Verify product, ” “Voice Verify Product, ” “Push Verify product, ” and “Score and Phone ID products.” Id. ¶¶ 40-45.

         On January 25, 2017, Defendant filed the instant Motion to Dismiss, ECF No. 31 (“Mot.”). On February 9, 2017, Plaintiff filed an opposition to Defendant's Motion to Dismiss, ECF No. 37 (“Opp'n”), and on February 15, 2017, Defendant filed a reply, ECF No. 39 (“Reply”).

         On March 30, 2017, the Court ordered the parties to disclose the asserted claims and accused products identified in Plaintiff's infringement contentions. ECF No. 53. On March 31, 2017, the parties disclosed these asserted claims and accused products. ECF No. 55.

         On March 31, 2017, the Court issued its first order on Defendant's Motion to Dismiss and found that the asserted claims of the Score Patents were invalid because they were directed to patent-ineligible subject matter under § 101, but that the asserted claims of the Platform Patents were not invalid because they were not directed to patent-ineligible subject matter under § 101.

         II. LEGAL STANDARD

         A. Motion to Dismiss Pursuant to Federal Rule of Civil ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.