Rates Technology Inc. v. Broadvox Holding Co.
Rates Technology Inc. v. Broadvox Holding Co.
Opinion of the Court
OPINION AND ORDER
I. INTRODUCTION
Rates Technology Inc. (“RTI”) brings this action against Broadvox Holding Company, LLC, its named subsidiary, Cypress Communications Operating Company, LLC, and its unnamed subsidiaries or affiliates, ABC Companies 1 to 10 (collectively, “Broadvox”), for infringing two of RTFs telecommunications patents: United States Patent No. 5,425,085 (the “'085 Patent”) and United States Patent No. 5,519,-769 (the “'769 Patent”).
On December 27, 2013, the Court held a Markman hearing. The parties have agreed upon the meaning of three terms in claim 1 of the '085 Patent and two terms in claim 1 of the '769 Patent.
II. BACKGROUND
A. The Invention
RTI has provided products and services in the telecommunications field for thirty years.
B. Claim Language
The full text of claim 1 of the '085 Patent, with the disputed phrases emphasized, follows:
A device for routing telephone calls along a least cost route originating from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising:
[I] a housing forming an enclosure and comprising first jack means for connection to said first telephone, and second jack means for connection to said network;
[ii] switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone;
[in] means operatively connected to said switch means for generating a current through said switch means to the first telephone corresponding to a current provided by said network, w hen the first telephone is disconnected from said network by said switch means;
[iv] database means for storing billing rate parameters for determining a least cost communication path for call corresponding to said telephone number;
[v] means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone;
[vi] means for addressing said database means for identifying a plurality of communication switch*314 paths to said second telephone and the cost rate of each path;
[vii] means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route; and
[viii] means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone.15
The full text of claim 1 of the '769 Patent, with the disputed phrases emphasized, follows:
A method for updating a database that stores billing rate parameters for a call rating device used for cost determinations for a calling station, comprising the steps of:
[I] connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations;
[ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters;
[iii] verifying if billing parameters should be updated; and
[iv] transmitting from the rate provider to the call rating device the updated billing rate parameters when the rate provider determines that an update is required.16
The parties agree on the construction of the following phrases:
TABLE 1
'085 Patent, Claim 1
Term/Phrase Agreed Upon Construction
1. “device” The term should not be a limitation of the claim.
2. “first jack means for connection to said first First jack for connection to said first telephone,
telephone”
3. “second jack means for connection to said Second jack for connection to said network, network”
'769 Patent, Claim 1
Term/Phrase Agreed Upon Construction
1. “a data transfer line” a data transfer line (or path to transfer data)
2. “indicia identifying the call rating device and the indicia identifying call rating device and the date date and time of the last update of the billing rate and time of the last update of the billing rate parameters” parameters.
The parties dispute the construction of the following phrases:
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III. APPLICABLE LAW
Analysis of a patent infringement claim involves two steps: (1) construction of the terms of the asserted claims and (2) determination of whether the accused device infringes the claims, as construed.
[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.... [This inquiry] provides an objective baseline from which to begin claim interpretation .... Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.24
To determine how a person skilled in the art understands a disputed claim term, courts should look to publicly available sources, including intrinsic evidence&emdash;such as “the words of the claims themselves, the remainder of the specification, the prosecution history”&emdash;and “extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.”
A. Intrinsic Evidence
The Federal Circuit views intrinsic evidence as “a more rehable guide to the meaning of a claim term than are extrinsic sources.”
1. Claim Language
Although there is no rigid formula to claim construction, “[j]udicial interpretation must begin with and remain focused upon the ‘words of the claims themselves ... to define the scope of the patented invention.’ ”
2. The Specification
In addition to the claim itself, a patent is required by statute to “contain a written
However, courts must be mindful thát while “using the specification to interpret the meaning of a claim” is permissible, “importing limitations from the specification into the claim” is not.
(1) if the claim “explicitly recite[s] a term in need of definition”; or (2) if the specification unambiguously defines a term, i.e., if “a patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term.”37
Even then, “there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature.”
3. Prosecution History
The prosecution history of a patent is part of the “intrinsic evidence” and “consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.”
Furthermore, the prosecution history “may be given substantial weight in construing a term where that term was added by amendment.”
B. Extrinsic Evidence
The extrinsic record “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
“Generally, a patent’s intrinsic record does not warrant consideration of extrinsic evidence.”
The Federal Circuit has noted that “the decision as to the need for and use of experts is within the sound discretion of the district court.”
[providing] background on the technology at issue, [explaining] how an invention works, [ensuring] that the court’s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or [establishing] that a particular term in the patent or the prior art has a particular meaning in the pertinent field.53
With this in mind, “a court should discount any expert testimony ‘that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in
C. Means-Plus-Function
“Section 112(f) [of Title 35] allows patentees to put structural details into the specification and build into the literal coverage of the claim a certain scope for equivalents in performing a defined function.”
An element in a claim for combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.57
This form of claiming, known as means-plus-function claiming, applies to “purely functional limitations that do not provide the structure that performs the recited function.”
“[W]hether the limitation in question should be regarded as a means-plus-function limitation, like all claim construction issues, is a question of law for the court, even though ... evidence from experts may be relevant.”
The Federal Circuit has established “two guidelines for determining whether the special rules of claim construction set forth in Section 112, ¶ 6 apply to a given claim limitation.”
Conversely, “[i]f a claim term does not use the word ‘means,’ we presume that means-plus-function claiming does not apply.”
Construction of a means-plus-function limitation involves two steps. “First, the court must determine the claimed function.”
D. Indefiniteness
“Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction.”
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.76
Under this section, the inventor has a duty to “inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent.”
If a means-plus-function limitation lacks a “structure disclosed in the specification to perform those functions, the claim limitation would lack specificity, rendering the claim as a whole invalid for indefiniteness.”
IV. DISCUSSION
A. General Claim Construction Issues
At the Markmcm hearing and in their briefs, the parties disagreed on several claim construction issues. Because the issues pertain to claim construction in general, I will address them before construing the individual terms.
1. RTI’s Expert
Broadvox argues that the Court should not consider the declaration of RTFs expert, Bradley Walton.
Second, Broadvox argues that Walton’s opinion is irrelevant because he failed to examine the entire prosecution history, specifically the reexaminations of the patents-in-suit.
2. Prior Judicial Construction of Claim Terms
The parties next disagree on the precedential effect of the MediaCom cases, in which Judge Young construed several of the claim terms at issue here. Broadvox contends that this Court is bound by the prior constructions under stare decisis.
RTI was [before Judge Young in the MediaCom cases] and had a full and fair opportunity to litigate. It sounds like estoppel almost.... [RTI] litigated that very claim term fully, completely, and the Court spent a lot of time on it, had this expert, made a record, issued two decisions. That’s pretty persuasive to me.100
Moreover, as Broadvox notes, “the Media-Com cases were decided before the subsequent reexaminations, where RTI was forced to overcome new prior art.”
3. Effect of Prosecution History
Next, RTI argues that, for purposes of claim construction, it is not bound by statements it made to the PTO Board of Appeals.
Finally, RTI argues that prosecution history statements are never relevant to the determination of whether “means-plus-
B. Disputed Constructions for Claim 1 of the '085 Patent
1. “a housing forming an enclosure and comprising”
RTI argues that “a housing forming an enclosure and comprising” should be construed as “one or more housings forming one or more enclosures.”
I begin with the intrinsic evidence. The plain language of the claim is consistent with the specification and prosecution history and indicates a single housing enclosing both the first and second jack means. The claim refers to “[a] housing forming an enclosure and comprising first jack means for connection to said second jack means ...”
2. “switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone”
The parties disagree on whether “switch means” is a means-plus-function limitation governed by Section 112(f). In MediaCom I, Judge Young ruled that it is not, reasoning:
Although the switch means element employs “means of_ing” language, it is not a means-plus-function claim, because it describes the structure that supports the disconnecting function (i.e. a switch or switches). Not only is the structure named, but it is described as connected to an adjacent structure, the first jack. Because this element of claim 1 recites a definite structure, it is not a means-plus-function claim element.115
In construing “switch means,” Judge Young observed that “[a]lthough the switch means claim element is not limited by the structure shown in the specification, the specification nevertheless informs construction of the terms in the claim.”
3. “disconnecting”
Within the “switch means” phrase, the parties dispute the meaning of the word “disconnecting.” Again, the Media-Com decisions are instructive. In
MediaCom II, Judge Young construed “disconnecting” to mean, “the interruption&emdash;the breaking or opening&emdash;of the electrical circuit between the telephone jack and the network.”
4. & 5. “means operatively connected to said switch means for generating a current through said switch means to the first telephone corresponding to a current provided by said network, w hen the first telephone is disconnected from said network to said switch means”
The parties again disagree on whether the phrase is a “means-plus-function” limitation.
As a preliminary matter, this Court construes the generating means element of the claim as a means-plus-function element because it describes no particular structure for performing the function of generating a current corresponding to a current provided by the network.123
The court then looked to the specification to find a description of the structure that generates current.
RTI argues that even if the term is a means-plus-function limitation, Walton opined that “current source is the level of detail that the artisan would need to know what performs the function.”
6. “means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone”
Once again, the parties debate whether this term is a means-plus-function limitation. Because the term uses the word “means,” there is a presumption that
[B]ecause general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to the corresponding structure, material, or acts that perform the function, as required by Section 112(f).134
Here, “logic” refers to no structure. Because RTI has engaged in “pure functional claiming,” Section 112(f) applies.
The first step in construing a means-plus-function limitation is to “determine the claimed function.”
Next, “the court must identify the corresponding structure in the written description of the patent that performs the function.”
Broadvox further notes that during the '085 Patent reexamination, RTI urged that the phrase be construed as a means-plus-function element and identified the structure as “Ref No. 88, Col. 4, lines 40-43, Fig. 2.”
7. “means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path”
The term “means” gives rise to a presumption that Section 112(f) applies.
First, because the parties urge no particular meaning of the words that recite the function, the Court gives them their ordinary meaning. Thus, the claimed function is “addressing a database that identifies a plurality of communication switch paths to said second telephone and the cost rate of each path.”
Second, the corresponding structure is the algorithm disclosed in the specification column 6 lines 7-47 and Figure 5.
Based on the specification and prosecution history, I construe the phrase to perform the function of “addressing a database that identifies a plurality of communication switch paths to said second telephone and the cost rate of each path.” The corresponding structure is the algorithm disclosed in the specification at column 6 lines 7-47 and Figure 5.
8. “means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route”
As with phrases 6 and 7, this phrase uses the word “means.” By arguing that a skilled artisan “understands the phrase ... to mean comparing logic actuated subsequent to the detection of said telephone number originating from a first telephone for comparing the cost rate of each path so as to determine a least cost route,” RTI again fails to rebut the presumption that Section 112(f) applies.
The parties also disagree on the structure. RTI argues that even if Section 112(f) applies “a person having ordinary skill in the art understands that comparing logic provides sufficient structure for comparing the cost rate of each path.”
Here, based on the specification and prosecution history, I find that the structure is enclosed in the microprocessing unit (“MPU”) 50, which includes a conventional address 60, control 62, and data buses 64, and an input output bus 66.
9. “means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone”
The word “means” gives rise to a presumption that Section 112(f) applies. RTI once again attempts to rebut the presumption by replacing “means” with “logic” and arguing that an artisan would be able to identify structure.
Given that means-plus-function applies, the parties disagree on the proposed structure. Citing to the specification and prosecution history, Broadvox argues that the structure is “the combination of a tone generator with a crystal oscillator (which generates the number sequence), and an analog switch (so that “call is routed through said second jack means to the selected communication path ... ”).
RTI contends that Broadvox’s proposed construction “violates the doctrine of claim differentiation” by limiting claim 1 to the structure of dependent claim 5.
RTFs objections are meritless. Where a claim term and a dependent claim term “concern the same function” and a structure for performing that function is disclosed, “a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures
I therefore construe the claimed functions as “generating a number sequence corresponding to a desired carrier for routing call to establish a switched connection between said first telephone and said second telephone.” I construe the corresponding structure as described in column 2 lines 11-18, column 4 lines 34-39, and Figure 2.
C. Disputed Constructions for Claim 1 of the '769 Patent
1. “at a predetermined time and date”
RTI argues that an artisan would construe the phrase as “at a predetermined date and time.”
It is also noted that [the prior art] fails to meet the claim language because it does not teach that the call rating device connects to the rate provider “at a predetermined time and date.” [The prior art] teaches ... only that the internal clock triggers the processor “at given time intervals.” Programming the system to update at selected time intervals (e.g. once a week) is not the same as programming it to update at a particular date and time (e.g. May 4, 2001 at 8:45 a.m.).165
As Judge Young stated, “[t]he words [at a predetermined date and time] used in the claim are simple English.... On its face, the language signifies that a particular time and date must be selected substantially in advance of the connection.”
2. “call rating device”
Although the patent does not use the word “means,” Broadvox argues that Section 112(f) applies because the Federal Circuit has recognized that “generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote sufficiently
The phrase at issue is not a means-plus-function limitation under Section 112(f). First, the phrase does not contain the word “means.” The Federal Circuit will not apply Section 112(f) if the limitation contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure.”
3. “transmitting over the data transfer line”
Broadvox urges that the term be construed as “conveying information over the same wire operatively connected to a call rating device on one end and a phone network on the other.”
Claim 1 states the following limitations:
[i] connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations;
[ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters ...183
Although RTI is correct that the antecedent phrase, “a data transfer line” is broad enough to cover multiple lines, each use of the phrase “the data transfer line” still refers to the antecedent phrase.
4. “verifying if billing rate parameters should be updated”
Broadvox urges the Court to construe the claim as “the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters should be updated.”
RTI suggests that the Court follow Judge Young’s analysis of a similar term.
I disagree. As I stated at the Mark-man hearing, “verifying” is an act that requires an actor, while “connecting” may not be.
[i] connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations;
[ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters;
[iii] verifying if billing parameters should be updated; and
[iv] transmitting from the rate provider to the call rating device the updated billing rate parameters w hen the rate provider determines that an update is required.193
Thus, the call rating device sends information — including information on the last update — to the rate provider. The rate provider verifies if billing parameters should be updated. If the rate provider determines that an update is required, it transmits updated billing rate parameters to the call rating device. I therefore adopt Bro-advox’s construction. I construe “verifying if billing parameters should be updated” as “the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters should be updated.”
5. “transmitting from the rate provider to the call rating device”
Similarly, Broadvox suggests that the term be construed as “the rate provider, based on the information received from the call rating device, transmits the billing rate parameters to the call rating device.”
Broadvox argues that the phrase derives from the second limitation of claim 1: “transmitting ... indicia identifying the call rating device and the date and time of the last update of the billing rate parameters.”
As shown in Fig. 7, the rate provider receives the update request from the call rating device (block 160). It receives 1) the calling station’s phone number; 2) the date and time of the last update; and 3) the current date and time (block 162) ... If a newer rate table is available, (block 173), then an update flag is initiated by the processing unit of the rate provider (block 174) and the update is sent ...197
RTI responds that Broadvox’s added language “breeds confusion and redundancy,”
SO ORDERED.
. See First Amended Complaint ("FAC”) ¶¶ 13, 21.
. See Table 1. These are the only claims at issue.
. See Table 2.
.See Table 3.
. See Declaration of Gerald Weinberger (President of RTI), Ex. A to 12/19/13 Letter of Milton Springut, RTFs counsel, to the Court, ¶ 2.
. See id.
. See '085 Patent, Ex. 1 to 1/6/14 Letter of Tal Benschar, RTI’s counsel, to the Court ("Benschar Ltr.”), at 1.
. See FAC ¶ 11.
. See id. ¶ 13.
. See '769 Patent, Ex. 4 to Benschar Ltr., at 1.
. See FAC ¶ 19.
. See MediaCom Corp. v. Rates Tech. Inc., 4 F.Supp.2d 17 (D.Mass. 1998) ("MediaCom I”); MediaCom Corp. v. Rates Tech. Inc., 34 F.Supp.2d 76 (D.Mass. 1998) ("MediaCom II").
. See Defendants’ Answering Claim Construction Brief ("Broadvox Brief”) at 1.
. See id.; '085 Patent Reexamination Certificate C2, Ex. 3 to Benschar Ltr., col. 1 11. 1-64; '769 Patent Reexamination Certificate Cl, Ex. 5 to Benschar Ltr., col. 1 1. 15.
. '085 Patent Reexamination Certificate C2 col. 1 11. 1-64.
. '769 Patent col. 6 11. 35-49. The reexamination of the '769 Patent did not affect the language of claim 1.
.The information in Table 1 is derived from Defendants' First Revised Claim Terms Chart (“Claim Terms Chart”), Doc. No. 113.
. The information in Table 2 is derived from the Claim Terms Chart, the Markman hearing transcript ("Tr.”), and the parties' post-hearing letters.
.See Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed.Cir. 2004).
.See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384, 116 S.Ct 1384, 134 L.Ed.2d 577 (1996).
. Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed.Cir. 2005) (internal citations omit
. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed.Cir. 2005) (en banc).
. Edward D. Manzo, Claim Construction in the Federal Circuit § 1.2 (2009).
. Phillips, 415 F.3d at 1313 (citations omitted).
. Id. at 1314 (internal citations omitted).
. Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed.Cir. 2008) (citing Phillips, 415 F.3d at 1318-319).
. V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed.Cir. 2005).
. Investment Tech. Grp., Inc. v. Liquidnet Holdings, Inc., No. 07 Civ. 510, 2010 WL 199912, at *2 (S.D.N.Y. Jan. 19, 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996)).
. Phillips, 415 F.3d at 1314.
.Id.
. 35 U.S.C. § 112.
. See Medisim Ltd. v. BestMed LLC, No. 10 Civ. 2463, 2011 WL 2693896, at *3 n. 28 (S.D.N.Y. July 8, 2011) ("The terminology used to describe the parts of a patent can be slightly confusing. Technically, the specification includes both the claims and the written description. However, courts typically use the term specification to refer to the written description on its own and as distinct from the claims. For purposes of consistency, I adopt this common usage.").
. Id. at *3.
. Phillips, 415 F.3d at 1315 (quotation marks and citations omitted). In fact, a claim interpretation that excludes a preferred embodiment described in the specification is "rarely, if ever, correct.” Vitronics, 90 F.3d at 1583.
. Phillips, 415 F.3d at 1323.
. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed.Cir. 1998).
. Medisim, 2011 WL 2693896, at *4 (quoting Renishaw, 158 F.3d at 1248-49).
. Phillips, 415 F.3d at 1323.
. Id. at 1317 (citation omitted).
. Id.
. Id.
. Board of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1369 (Fed.Cir. 2008).
. Phillips, 415 F.3d at 1311.
. Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed.Cir. 2013).
. Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed.Cir. 2013).
. Phillips, 415 F.3d at 1317 (internal citations omitted).
. Id. at 1317-18.
. BASF Agro B.V. v. Makhteshim Agan of No. Am. Inc., 519 Fed.Appx. 1008, 1015 (Fed.Cir. 2013).
. Id.
. Id.
. Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1357 (Fed.Cir. 2006).
. Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1291 (Fed.Cir. 2008). Accord Phillips, 415 F.3d at 1318 ("[Cjoncluso-ry, unsupported assertions by experts as to the definition of a claim term are not useful to a court.”).
.Id.
. Id. (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed.Cir. 1998)).
. BASF, 519 Fed.Appx. at 1016 (citing Vitronics, 90 F.3d at 1584).
. Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed.Cir. 2013).
. 35 U.S.C. § 112(f). Section 112(f) was formerly known as 35 U.S.C § 112, ¶ 6. See Bennett Marine, Inc. v. Lenco Marine, Inc., 549 Fed.Appx. 947, 952-53 (Fed.Cir. 2013).
. Phillips, 415 F.3d at 1311.
. Chicago Bd. Options Exch. v. International Sec. Exch., 677 F.3d 1361, 1367 (Fed.Cir. 2012) (internal citations omitted).
. Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed.Cir. 2004).
. Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed.Cir. 2011).
. Id. at 1360. Accord Rembrandt Data Techs., LP v. AOL LLC, 641 F.3d 1331, 1341 (Fed.Cir. 2011) (“When determining whether a claim term recites sufficient structure, we examine whether it has an understood meaning in the art.”).
. Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed.Cir. 2012).
. Id.
. Id. (internal citations omitted).
. Id. (internal citations omitted).
. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1364 (Fed.Cir. 2013) (internal citation omitted).
. Inventio, 649 F.3d at 1356.
. Id. (internal citations omitted).
. Power Integrations, 711 F.3d at 1365 (quoting Lighting World, 382 F.3d at 1359-360).
. Id. at 1364.
. Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1311 (Fed.Cir. 2012) (internal citation omitted).
. Id.
. Id. (internal citation and quotation marks omitted).
. Id.
. 35 U.S.C. § 112 ¶2 is now known as 35 U.S.C. § 112(b).
. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.Cir. 2008) (citation omitted).
. Id.
. See 35 U.S.C. § 282.
. See Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed.Cir. 2008).
. See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed.Cir. 2007).
. Star Scientific, Inc. v. R.L. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed.Cir. 2011) ("Star Scientific II”).
. IGT v. Bally Gaming Intern., Inc., 659 F.3d 1109, 1119 (Fed.Cir. 2011) (internal citations omitted).
. Dow Chem. Co. v. Nova Chems. Corp., 458 Fed.Appx. 910, 917 (Fed.Cir. 2012) (internal citations omitted).
. Id.
. Aristocrat Techs., Australia Pty Ltd. v. International Game Tech., 521 F.3d 1328, 1331 (Fed.Cir. 2008).
. Noah Sys., 675 F.3d at 1311 (internal citation omitted).
. Id.
. Id. at 1312 (internal citation omitted).
. See Broadvox Brief at 7-8.
. See id.
. See RTFs Reply Claim Construction Brief ("RTI Reply”) at 3.
. See id.
. See MediaCom I, 4 F.Supp.2d at 29 ("Claim 1 [of the '085 Patent] presents questions that are sufficiently complex and technical that the Court would be remiss to impose its lay understanding on this patent claim without the benefit of expert guidance.”).
. See 12/19/13 Letter of George Pazuniak, Broadvox’s Counsel, to the Court ("12/19/13 Pazuniak Ltr.”) at 2.
. Tr. at 12:2-7.
. See 12/19/13 Pazuniak Ltr. at 4.
. See RTI Reply at 9.
. See TM Patents, L.P. v. International Bus. Machs., Corp., 72 F.Supp.2d 370, 375 (S.D.N.Y. 1999) (applying collateral estoppel where same claims were previously construed in Markman hearing by the District Court of Massachusetts).
. Tr. at 18:10-15.
. 12/19/13 Pazuniak Ltr. to the Court at 4.
. See Tr. at 21:19-25, 22:1-2.
. Biogen Idec, Inc., 713 F.3d at 1095. Accord Tr. at 22:3-4 (The Court: "[A statement made to the Appeals Board] is still a statement made to the patent office by the paten-tee.”).
. See RTI Reply at 12 (citing Robinson v. Cannondale Corp., 81 Fed.Appx. 725, 728 (Fed.Cir. 2003) ("Because th[e] inquiry focuses on the claim language, ... arguments regarding alleged admissions in the prosecution history .... are immaterial in evaluating whether the means-plus-function presumption is rebutted.”)).
. See Robinson, 81 Fed.Appx. at 728.
. See Middleton, Inc. v. Minnesota Mining and Manufacturing, Co., 311 F.3d 1384, 1387 (Fed.Cir. 2002) (“[T]he most important indicator of the meaning of [a disputed claim term] is its usage and context in the claim itself.”). Moreover, in Robinson, the "admissions in the prosecution history did not pertain to [the claim at issue]” but to an entirely different claim. Robinson, 81 Fed.Appx. at 728.
. See, e.g., Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir. 1996) ("We decide on an element-by-element basis, based upon the patent and its prosecution history, whether Section 112, ¶6 applies.”) (emphasis added); Kreepy Krauly U.S.A., Inc. v. Sta-Rite Indus., Inc., 152 F.3d 949, at *3 (Fed.Cir. 1998) (unpublished opinion) (concluding that “[n]oth-ing in [the claim at issue] or the prosecution history suggests that the claim language at issue was intended to be construed in means-plus-function form”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed.Cir. 1996) (considering prosecution history to determine whether means-plus-function applies).
. RTFs Opening Claim Construction Brief ("RTI Brief”) at 10.
. Broadvox Brief at 15.
. '085 Patent col. 7 11. 9-12.
. Id. col. 1 11. 63-64.
. See id. Fig. 7.
. Id. col. 1 11. 59-63.
. Tr. at 44:19-21, 45:11-12.
. MediaCom I, 4 F.Supp.2d at 27 (internal citations omitted).
. Id.
. Id.
. See Tr. at 61:10 (Pazuniak: "There is no change in the language.”). In fact, the phrase "during the routing of said first telephone” was added during the reexamination. But this language relates to timing and is irrelevant to whether "switch means" connotes a sufficient structure to rebut the presumption that Section 112(f) applies.
. MediaCom II, 34 F.Supp.2d at 81.
. RTI argues that judge Young’s construction is not persuasive because he "didn't address the particular question of infringement.” Tr. at 62:24-25. But, like Judge
. Term 5 is "means for generating a current." At the Markman hearing, the parties agreed to construe terms 4 and 5 together. SeeTr. at 89:6-25, 90:1-2.
. See Broadvox Brief at 23.
. MediaCom I, 4 F.Supp.2d at 28.
. See id.
. Id. at 29.
. MediaCom II, 34 F.Supp.2d at 82.
. Tr. at 85:1-3.
. As with "switch means," the subsequent reexaminations do not change the analysis. Although the phrase "when the first telephone is disconnected from said network by said switch means” was added in the reexamination, it relates to timing, not structure.
. See Flo Healthcare, 697 F.3d at 1373.
. RTI Brief at 14.
. Id.
. Tr. at 93:5-8.
. Aristocrat, 521 F.3d at 1333.
. Id.
. Noah Sys, 675 F.3d at 1311.
. See, e.g., Versa Corp. v. Ag-Bag Intern. Ltd., 66 Fed.Appx. 853, 855 (Fed.Cir. 2003).
. Noah Sys., 675 F.3d at 1311 (internal citation omitted).
. Broadvox Brief at 25; RTI Brief at 15.
. See '085 Patent col. 5 11. 64-67.
. See Broadvox Brief at 25 (citing '085 Patent Reexamination Proceeding at 265, 267, 269). See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed.Cir. 1998) (en banc) ("Prosecution history is relevant to the construction of a claim written in means-plus-function form.”).
. See Flo Healthcare, 697 F.3d at 1373.
. See RTI Brief at 15.
. Id.
. Aristocrat, 521 F.3d at 1337.
. See '085 Patent col. 6 11. 7-47, Fig. 5.
. '085 Patent Reexamination Proceeding at 265-267, 270.
. RTI Brief at 16.
. Id.
. See Broadvox Brief at 27.
. See '085 Patent col. 411. 1-15.
. This is the structure RTI urged during the reexamination. See '085 Patent Reexamination Proceeding at 265-266.
. See RTI Brief at 17.
. Saffron v. Johnson & Johnson, 712 F.3d 549, 563 (Fed.Cir. 2013) (internal citations omitted).
. 1/2/14 Letter of George Pazuniak to the Court ("1/2/14 Pazuniak Ltr.") at 1.
. See id. at 1-2.
. 1/7/14 Letter of Milton Springut to the Court (“1/7/14 Springut Ltr.”) at 1.
. '085 Patent col. 7 11. 49-51.
. 1/7/14 Springut Ltr. to the Court at 2.
. Saffron, 712 F.3d at 563.
. 35 U.S.C. § 112(f).
. RTI Brief at 18.
. See Broadvox Brief at 31.
. MediaCom I, 4 F.Supp.2d at 32.
. '769 Patent Reexamination Proceeding at 406.
.MediaCom I, 4 F.Supp.2d at 31.
. As I stated in the Markman hearing, "Why wouldn't [predetermined date and time] just be ‘selected a period in advance of the call’? What is substantial? [Substantial is not a very definite term.” Tr. at 121:2-4.
. Broadvox agreed that "substantially” was not required. See Tr. at 121:17-19 (Pazuniak: “In other words, it is a planned, selected time and date.”).
. Massachusetts Inst. of Tech. and Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed.Cir. 2006).
. Broadvox Brief at 33.
. See 1/2/14 Pazuniak Ltr. to the Court at 2.
. Flo Healthcare, 697 F.3d at 1374.
. See Inventio, 649 F.3d at 1359.
. See Declaration of Bradley Walton ¶ 43.
. See '769 Patent col. 1 II. 25-32; col. 2 II. 53-64.
. Broadvox Brief at 28-29 (citing '085 Patent Reexamination Proceeding at 291, 305-306).
. MediaCom I, 4 F.Supp.2d at 29.
. Tr. at 127:2.
. Broadvox Brief at 33.
. RTI Brief at 20; RTI Reply at 27-28.
. RTI Reply at 38 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-343 (Fed.Cir. 2008)).
. See Broadvox Brief at 34.
. '769 Patent col. 6 11. 38-45 (emphasis added).
. See Creative Internet Adver. Corp. v. Yahoo!, Inc., 476 Fed.Appx. 724, 728 (Fed.Cir. 2011); Baldwin, 512 F.3d at 1342 ("The subsequent use of definite articles 'the' or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule [of ‘a’], but simply reinvokes that non-singular meaning.”).
. At the Markman hearing, Broadvox agreed to use the word “transmitting” rather than "conveying.”
. Claim Terms Chart at 7.
. Id.
. See MediaCom I, 4 F.Supp.2d at 31.
. Id.
. See RTI Brief at 39.
. See Tr. at 138:19-25, 139:1-3 (Court: “ '[V]erifying’ is an act [C]onnecting at a predetermined time and place ... [is] not an act of doing something.”).
. See id. at 140:15-19 (Court: "[I]f you want the claim to fail for mdefmiteness, that’s fine. But it has to explain how to practice this patent. I am worried that without knowing who’s verifying, there isn’t something being claimed here.”).
. '769 Patent col. 6 11. 35-49 (emphasis added).
. Claim Terms Chart at 8.
. Id.
. 1/2/14 Pazuniak Ltr. to the Court at 2 (citing '769 Patent col. 6 11. 42-45).
. Id. (citing '769 Patent col. 5 11. 55-59; col. 6 11. 2-4).
. 1/7/14 Springut Ltr. to the Court at 3.
Reference
- Full Case Name
- RATES TECHNOLOGY INC. v. BROADVOX HOLDING COMPANY, LLC, Cypress Communications Operating Company, LCC, and ABC Companies, 1 to 10
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