IP Law Daily, PATENT—D. Kan.: Zoom loses motion to dismiss infringement suit over VoIP technology, (May 1, 2023)

By Kevin M. Finson, J.D.

A motion to dismiss was denied because the asserted patent appeared to be directed at technological improvements to computer technology, not an abstract idea.

Zoom Video Communications was not entitled to dismissal of a patent infringement suit brought against it by Marble VoIP Partners, LLC, the U.S. District Court in Kansas City has held. The asserted patent appeared valid at least at the motion to dismiss stage and the patentee had stated claims for indirect infringement (Marble VoIP Partners LLC v. Zoom Video Communications, Inc., April 24, 2023, Robinson, J.).

Marble VOIP Partners, LLC (Marble) was the assignee of all rights in U.S. Patent No. 7,376,129 (the ’129 patent), which was directed to Voice over Internet Protocol (VoIP) communication using Session Initiation Protocol (SIP), including claims for improving security and allowing users to run multiple SIP protocols at the same time without the resource strain that had occurred under the prior art. Shortly after being assigned the ’129 patent, Marble sent a cease and desist letter to Zoom Video Communications, Inc. (Zoom), alleging that Zoom’s Zoom Phone and Zoom Meetings products infringed the patent. Less than 24 hours later, Marble filed suit alleging direct and indirect infringement.

The Zoom Phone is a mobile phone that makes and receives VoIP for computer applications. It registers SIP as a system service to handle inbound and outbound calls, transfer calls, dial-in and dial-out of meetings; to establish a do-not-disturb for a device; and to set up voicemail with a message-waiting indicator. The Zoom Meetings platform supports SIP-connected audio for participants in Zoom meetings, and allows participants to use VoIP to connect audio to the virtual meeting. Marble alleged that the implementation of SIP-based VoIP on the Zoom Meetings platform and Zoom Phone product directly infringes the ’129 Patent. Marble further alleged that Zoom actively induces infringement by others under 35 U.S.C. § 271(b) by providing to the public Zoom Phone and Zoom Meetings, touting the products’ benefits, and instructing users how to use the products in a manner that indirectly infringes the ‘129 Patent. Additionally, Marble alleged that Zoom knows that the Zoom Phone and Zoom Meetings platform is not a staple article or commodity of commerce and that its products are not suitable for substantial, non-infringing use, resulting in conduct that constitutes contributory infringement under 35 U.S.C. § 271(c).

Before the court was Zoom’s motion to dismiss, on the ground that the ’129 patent was invalid for being directed to an abstract idea and that Marble had failed to state a claim as to its induced and contributory infringement claims.

Abstract idea. At the first step of the Alice test, the court held that the ’129 patent was not directed to an abstract idea. The patent claimed specific, technological improvements rather than abstract data gathering and processing. The claim language described novel computer architecture which improved the computer’s functionality, so Zoom’s motion to dismiss was denied.

The court also held, in the alternative, that if it had proceeded to the second step of the Alice test it would need to deny the motion to dismiss because questions of material fact existed as to whether the patent claims recited an inventive concept or merely used elements well-understood or routine in the art. The court clarified that it was not making a final determination of patent eligibility at this stage, but only ruling that there were plausible factual allegations that the patent was not invalid, so the motion to dismiss must be denied.

Indirect infringement. Zoom argued that it lacked the requisite knowledge of the patent to support claims for induced or contributory infringement, because Marble’s cease and desist letter was sent less than 24 hours before suit was filed. The court agreed with Zoom that this was clearly not sufficient notice to allow Zoom to cease infringement or negotiate a license, but held that Zoom could conceivably still be liable for post-suit induced and contributory infringement and denied the motion to dismiss.

The Case is No. 22-CV-2247-JAR-ADM.

Attorneys: Christopher J. Belter (Goldberg Segalla, LLP) for Marble VoIP Partners LLC. Aaron E. Hankel (Shook, Hardy & Bacon, LLP) for Zoom Video Communications, Inc.

Companies: Marble VoIP Partners LLC; Zoom Video Communications, Inc.

Cases: Patent TechnologyInternet KansasNews