Cox Communications Inc. et al v. Sprint Communications Company LP et al

Filing 541

MEMORANDUM ORDER re: claim construction. Signed by Judge Sue L. Robinson on 5/15/2017. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

COX COMMUNICATIONS INC., et al.,
Plaintiffs,

)
)
)

)
v.

SPRINT COMMUNICATIONS
COMPANY L.P., et al.,

)
)
)
)

Civ. No. 12-487-SLR

)

Defendants.

)

MEMORANDUM ORDER

At Wilmington this \~day of May, 2017, having heard argument on, and having
reviewed the papers submitted in connection with, the parties' proposed claim
construction;
IT IS ORDERED that the disputed claim language of U.S. Patent Nos.
7,286,561 1 ("the '6,561 patent"), 6,633,561 ("the '3,561 patent"), 6,463,052 ("the '052
patent"), 6,452,932 ("the '932 patent"), 6,473,429 2 ("the '429 patent"), and 6,298,064
("the '064 patent") shall be construed consistent with the tenets of claim construction set
forth by the United States Court of Appeals for the Federal Circuit in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005), as follows:

1

The '6,561 patent shares a common specification with the '3,561, '052, and '932
patents. These patents are continuations of application Ser. No. 08/568,551, filed on
Dec. 7, 1995, ("the '551 application"). ('3,561 patent, 1:5-8)
2

The '429 patent shares a common specification with the '064 patent. The '429 and
'064 patents are continuations of a continuation-in-part of the '551 application, which is
incorporated by reference. ('429 patent, 1:5-16) Therefore, terms in the '429 and '064
patents may find support in the specification common to the '6,561 patent.

1. Background. The parties are engaged in complex, multi-jurisdictional patent
litigation. (D.I. 231 at

,m 1-3) On February 27, 2015, Cox moved for partial summary

judgment of invalidity, under§ 112,

~

2, of various claims in the '6,561, '3,561, '052,

'932, '429 and '064 patents. (D.I. 207) On May 15, 2015, the court granted partial
summary judgment and held that the "processing system" term within the relevant
claims is indefinite under§ 112, ~ 2. (D.I. 231

at~~

6-15) Sprint appealed to the

Federal Circuit, which reversed "[b]ecause 'processing system' does not prevent the
claims, read in light of the specification and the prosecution history, from informing
those skilled in the art about the scope of the invention with reasonable certainty." Cox
Commc'ns, Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224, 1226 (Fed. Cir. 2016).

2. In Cox, the Federal Circuit declared that "the sole source of indefiniteness that
Cox complains of, 'processing system,' plays no discernable role in defining the scope
of the claims," in that removing the term "processing system" would not change the
meaning of the claim, nor would replacing the term with "computer." Id. at 1229-1231.
"If 'processing system' does not discernably alter the scope of the claims," the Court
reasoned, "it is difficult to see how this term would prevent the claims ... from serving
their notice function under§ 112,

~

2." Id. at 1231. The Court explained that while "the

common practice [is) of training questions of indefiniteness on individual claim terms, ..
. . indefiniteness under§ 112,

~

2 must ultimately turn on the question set forth by

Nautilus: whether the 'claims [and not claim terms], read in light of the specification

delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention."' Id. at 1232
(emphasis in original) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2129 (2014)). The court read claim 1 of the '3,561 patent and claim 1 of the '064 patent
in light of the associated disclosures in the specifications and concluded that a person

2

having ordinary skill in the art would understand the limitations encompassing the
"processing system" terms with reasonable certainty. Id. at 1233.
3. Cox argues that Cox teaches that
a person of ordinary skill would understand the scope of these claims by
reading them in light of what the specification teaches about the claimed
method; namely, the disclosures which describe how the claimed
invention "receives a signal from a traditional telephone network and
processes information related to that voice call to select the path that the
voice call should take through the data network."
(D.I. 505 at 11-12, citing Cox, 838 F.3d at 1226 and 1232-33) Cox contends that the
Federal Circuit's opinion on indefiniteness stands in for claim construction, because the
Court has identified "the basis on which a person of ordinary skill would understand the
scope of the claim." (D.I. 505 at 15) As a result, Cox argues "that the claims [must] be
read the way the Federal Circuit has instructed." (Id.) In the Cox opinion, the Federal
Circuit found claim 1 of the '3,561 patent not indefinite, because "[t]he specification
discloses, as an embodiment of a 'processing system,' the CCP and provides details
about how it functions to 'select[] the network elements and the connections that
comprise the communications path."' Cox, 838 F.3d at 1233 (emphasis added) (citing
'3,561 patent, 6:23-25). Cox cites this (and other) language in the opinion as the reason
for construing the "processing system" term as "a call processing system capable of
receiving and transmitting signaling and processing signaling to select the path for
routing a call." (D.I. 490 at 8) According to Cox, "the Federal Circuit has effectively
resolved this dispute" over claim construction. (D.I. 505 at 23) The court disagrees.
Even in the Federal Circuit's opinion, the cited example is identified "as an
embodiment," which reflects the specification's reference to the example as "one
embodiment." ('3,561 patent, 6:23) The court declines to read limitations into the
claims based solely upon exemplary embodiments relied upon by the Federal Circuit in
its opinion.

3

4. "A network code that identifies a network element to provide egress

from the packet communication system;" 3 "a network code that identifies a
network element to provide egress ... from the packet communication system;" 4
and "a network code representing a network element to egress the call from the
packet system:" 5 "A code identifying a network element that provides an exit from the
packet communication system." Claim 1 of the '3,561 patent recites:
A method of operating a processing system to control a packet
communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a
narrowband communication system into the processing system;
processing the signaling message to select a network code that
identifies a network element to provide egress from the
packet communication system for the user communication;
generating a control message indicating the network code;
transferring the control message from the processing system to the
packet communication system;
receiving the user communication in the packet communication
system and using the network code to route the user
communication through the packet communication system to the
network element; and
transferring the user communication from the network element to
provide egress from the packet communication system.
('3,561 patent, 22:12-32 (emphasis added)) The specification describes, with reference
to figure 1, the role of the communication control processor ("CCP") in establishing
communications paths:
On a standard call that establishes a communications path from first point
170 to second point 172, first point 170 will signal Telecommunications
System 110 that it requests the communications path. This signaling is
directed to CCP 120 over first link 191. CCP 120 processes the signaling

3

Found in '3,561 patent, claim 1.

4

Found in '3,561 patent, claim 24; '052 patent, claim 1.

5

Found in '6,561 patent, claim 14.

4

and selects at least one network characteristic in response to the
signaling. Network characteristics might be network elements,
connections, network codes, applications, or control instructions to name a
few examples.
('3,561 patent, 6:8-16) "One skilled in the art will recognize that the selection process
can be distributed among the CCP and the elements." ('3,561 patent, 7:20-21) The
specification identifies a number of possible architectures:
The CCP might select all the network elements, a portion of the network
elements, or none of the network elements leaving the switches to select
the remainder. The CCP might select all of the connections, a portion of
the connections, or none of the connections, again leaving the elements to
select the remainder. The CCP may select combinations of the above
options, but the CCP will always select at least one network characteristic.
('3,561 patent, 7:22-29) The specification also explains that:
The CCP performs many functions. In one embodiment, it accepts
signaling from a first point or LEC and provides appropriate signals in
accord with the communication control selections it has made. These
selections are network characteristics. The CCP may select network
elements such as switches, servers, or network codes. The CCP may
select connections, such as DSO circuits and ports. The CCP may select
particular telecommunications applications to be applied to the
communications path. The CCP may select particular control instructions
for particular devices. The CCP may also receive information from entities
such as SCPs, operational control, or switches to aid in its selections.
('3,561 patent, 13:28-39) The CCP may select network elements, and "[n]etwork codes
are the logical addresses of network elements. One such code is a destination code
that facilitates egress from telecommunications system 310." ('3,561 patent, 12:49-51)
5. "Packet routing information:" 6 "Information used to route user
communication in a packet format." 7

6

Found in '6,561 patent, claim 11.

7

See infra note 37. Cox argued that this term "cannot be construed outside of the
context provided by the full limitation in which it appears." (D.I. 490 at 5) Cox's
proposed construction narrows "packet routing information" to "select[ing] the network
elements and the connections that comprise the communications path for a call." (D.I.

5

6. "Route the user communication through the packet communication

system to the network element:" 8 "Direct the user communication through the packet
communication system to the network element." 9
7. "Routes the user communication based on the packet routing

information:" 10 "Directs the user communication through the packet system based on
the packet routing information. "11
8. "Transferring the communications to the selected narrowband

switch:" 12 Consistent with Sprint's proposal, the court does not construe this
limitation. 13 •14 Claim 1 of the '932 patent recites:

490 at 13) Nothing in the specification or the claims suggests that applicant intended to
limit this claim term as Cox had proposed.
8

Found in '3,561 patent, claims 1 and 24.

9

Cox proposed "direct the user communication through a packet communication
system over the selected path." (D.I. 490 at 5) Claim 1 of the '3,561 patent recites
"receiving the user communication in the packet communication system and using the
network code to route the user communication through the packet communication
system to the network element." ('3,561 patent, 22:26-29) There is no antecedent
basis for Cox's proposed "the selected path," because no path has been selected. The
"route the user communication" step develops a route to the network element.
Moreover, the specification is not limited to methods that select the entire call path.
('3,561 patent, 7:22-29) For these reasons, the court adopts Sprint's construction.

° Found in '6,561 patent, claim 11.

1

11

Cox proposed "directs the user communication through a packet communication
system over the selected path." (D.I. 490 at 6) For the same reasons as above with the
related term in claims 1 and 24 of the '3,561 patent, the court adopts Sprint's
construction. See supra note 9.
12

Found in '932 patent, claim 1.

13

Cox proposed "transferring the user communication across the asynchronous
communication system over the selected path to the narrowband switch." (D.I. 490 at
6 (emphasis added)) There is no antecedent basis for Cox's proposed "the selected
path" in the claim. Cox's proposal adds limitations not found in the claim or required by
the specification. Therefore, the court adopts Sprint's proposal.
14

The court does not usually apply a plain and ordinary meaning to disputed claim
limitations. However, in the case at bar, the parties' disagreements are not disputes as

6

A method for handling a call having a first message and
communications, the method comprising:
receiving and processing the first message in a processing system
external to narrowband switches to select one of the narrowband
switches;
generating a second message in the processing system based on the
selected narrowband switch and transmitting the second message
from the processing system; and
receiving the second message and the communications in an
asynchronous communication system and transferring the
communications to the selected narrowband switch in response
to the second message.
('932 patent, 22:12-24 (emphasis added)) A call has "a first message and
communications." ('932 patent, 22: 12-13) The "first message" is received "in a
processing system external to narrowband switches" and is processed "to select one of
the narrowband switches." ('932 patent, 22:14-16) This provides antecedent basis for
"the selected narrowband switch" discussed elsewhere in the claim and in the relevant
language. The "communications" are identified in the preamble, leaving "transferring"
as the only term not defined within the claim. The parties propose language that relies
on the plain and ordinary meaning of "transferring." (D.I. 490 at 6) Given a lack of
dispute over the meaning of claim language, the court does not construe this limitation.
9. "Transferring a packet including the network code and the user

communication from the device to the packet communication system;" 15 and
"transferring the user communication in the packet format to a packet system:" 16
Consistent with Sprint's proposal, the court does not construe these limitations.17

to the meaning of the claim language, as opposed to an apparent attempt by Cox to add
narrowing language.
15

Found in '052 patent, claim 1.

16

Found in '6,561 patent, claim 11.

17

Cox proposed limiting this term to "transferring ... from outside of the packet
communication system to a network element within the packet communication system."

7

10. "Processing system:" 18 "A call processing system capable of receiving
and transmitting signaling and processing signaling to select information for routing a
call." The parties agree to this language with the exception of "information." Cox
proposed "the path" instead of "information" and argued extensively that the processing
system must select "the path" for the call. 19 (D.I. 505 at 22-28) The '3,561 specification
employs open-ended language that accommodates numerous architectures:
The CCP might select all the network elements, a portion of the network
elements, or none of the network elements leaving the switches to select
the remainder. The CCP might select all of the connections, a portion of
the connections, or none of the connections, again leaving the elements to
select the remainder. The CCP may select combinations of the above
options, but the CCP will always select at least one network characteristic.

(D. I. 490 at 7) Cox argued that "[t]he transfer has to originate either inside of the
system or outside of it. There are no other possibilities." (D.I. 505 at 22) The claim
limitation is that "the device" "transfer[s] a packet including the network code and the
user communication" "to the packet communication system in response to the
instruction." ('052 patent, 22:22-24) Cox did not identify any support in the specification
for the proposed narrowing limitations. Therefore, the court adopts Sprint's proposal.
See supra note 13.
18

Found in '932 patent, claim 1; '052 patent, claim 1; '3,561 patent, claims 1, 24; '6,561
patent claim 11; '429 patent, claim 1; '064 patent, claim 1.
19

Cox argued that the Federal Circuit's decision on indefiniteness provides the
construction of the "processing system" term. (D.I. 505 at 23-24, citing Cox, 838 F.3d at
1226) According to the Federal Circuit, "[b]oth sets of patents describe the use of a
'processing system,' which receives a signal from a traditional telephone network and
processes information related to that voice call to select the path that the voice call
should take through the data network." Cox, 838 F.3d at 1226 (emphasis added). Cox
contended that "the Federal Circuit held that it was this [selecting the path] functionality
as recited in all of the patents' specifications that defined their scope sufficiently to
permit persons of ordinary skill to understand them." (D.I. 505 at 24) The language
cited by Cox is in the "background" section, and nothing in the opinion suggests that the
Federal Circuit intended to limit the construction of "processing system" to the
embodiments discussed in the background section.

8

('3,561 patent, 7:22-29) In the '429 patent, the signaling processing system 20 routes
calls through an asynchronous transfer mode ("ATM") network with great specificity,
identifying multiplexer inputs and outputs as well as defining the call path through the
A TM cross connect by identifying virtual circuits and virtual paths. ('429 patent, 4:665:39) However, the scope of the '429 patent relates primarily to call routing through the
ATM network but not beyond it. For example, the preferred embodiment, with reference
to figure 12, explains that:
If the data handler is not required at 1210, the service is implemented and
the route is selected at 1215. This may occur if a service can be directly
implemented by the origination manager or through the local resource.
For example, particular 800 [number] translations or dialed number
service profiles (i.e. call forwarding) can be stored in the local resource. In
this case, route selection would be performed by the local resource after
the information is analyzed to identify the correct entry to a local resource
database. When the local resource is used, the messages must be routed
from the detection point processor through the feature manager and
switching manager to the local resource.
('429 patent, 19:6-18) In these embodiments, a "local resource" would perform "route
selection." Neither of the two specifications nor the claims require the processing
system to select "a path" or "the path" for the call. Therefore, the court adopts Sprint's
construction.
11. "Processing the signaling message to select21 a network code that
identifies a network element to provide egress from the packet communication

20

In a preferred embodiment, "the signaling processor" is also known as the call
connection manager ("CCM"). ('429 patent, 10:57-60)
21

The parties agreed that the court's construction of "process[ing] ... to select" to mean
"process[ing] ... to participate in the selecting" applies. (D.I. 490 at 2; D.I. 400, ~ 19)

9

system for the user communication 22 ; [and] generating a control message23
indicating the network code:" 24 Consistent with Sprint's proposal, the court does not
construe this limitation. 25
12. "Selecting a network code that identifies a network element to provide

egress for the user communication from the packet communication system 26 to a
narrowband communication system; [and] generating a control message27
indicating the network code:" 28 Consistent with Sprint's proposal, the court does not
construe this limitation. 29
13. "Processing the first message in a processing system external to

narrowband switches to select30 one of the narrowband switches; [and]

22

The court has construed the "a network code" term above. See supra~ 1.

23

The parties agreed that the court's construction of "generating [e.g., a message]" to
mean "assembling information to create [e.g., a message]" applies. (D.I. 490 at 2; D.I.
400, ~ 21)
24

Found in '3,561 patent, claim 1.

25

Cox proposed the construction "processing signaling to select the network elements
and the connections that comprise the communications path for a call, and generating a
call set up message containing that path." (D.I. 490 at 11) The court has already
provided construction for limitations found within this term, and Cox's proposed
language would add limitations not found in the claim or the specification. Therefore,
the court does not construe this term separately.
25

See supra note 22.

27

See supra note 23.

28

Found in '3,561 patent, claim 24.

29

Cox proposed the construction "processing signaling to select the network elements
and the connections that comprise the communications path for a call, and generating a
call set up message containing that path." (D.I. 490 at 12) The court has already
provided construction for limitations found within this term, and Cox's proposed
language would add limitations not found in the claim or the specification. Therefore,
the court does not construe this term separately.
3o

See supra note 21.

10

generating a second message 31 in the processing system based on the selected
narrowband switch:" 32 Consistent with Sprint's proposal, the court does not construe
this limitation. 33

14. "Processing one of a Signaling System #7 (SS7) signaling message
and a Q.931 signaling message for a call to select34 packet routing information 35
for the call:" 36 Consistent with Sprint's proposal, the court does not construe this
limitation. 37

15. "Processing the signaling to select a network code that identifies a
network element to provide egress for the user communication from the packet
communication system 38 :" 39 Consistent with Sprint's proposal, the court does not
construe this limitation. 40

31

See supra note 23.

32

Found in '932 patent, claim 1.

33

Cox proposed the construction "processing signaling to select the network elements
and the connections that comprise the communications path for a call, and generating a
call set up message containing that path." (D.I. 490 at 13) The court has already
provided construction for limitations found within this term, and Cox's proposed
language would add limitations not found in the claim or the specification. Therefore,
the court does not construe this term separately.
34

See supra note 21.

35

The court has construed the "packet routing information" term above. See supra~ 1.

36

Found in '6,561 patent, claim 11.

37

Cox proposed the construction "processing SS? or Q.931 signaling to select the
network elements and the connections that comprise the communications path for a
call." (D.I. 490 at 13) The court has already provided construction for limitations found
within this term, and Cox's proposed language would add limitations not found in the
claim or the specification. Therefore, the court does not construe this term separately.
38

See supra note 22.

39

Found in '052 patent, claim 1.

4

°

Cox proposed the construction "processing signaling to select the network elements
and the connections that comprise the communications path for a call, and generating a
11

16. "Communication switches;" 41 "narrowband switches;" 42 and

"telecommunication switches:" 43 "Devices that set up calls and relay voice and/or
data information from one connection to another." 44 Claim 23 of the '3,561 patent
recites "[t]he method of claim 1 wherein the processing system is external to any
communication switches." ('3,561 patent, 23:18-19) The specification describes that
"[t]he present invention also includes a telecommunications signaling system for use in
conjunction with a plurality of telecommunication switches." ('3,561 patent, 4:13-15)

call set up message containing that path." (0.1. 490 at 13) The court has already
provided construction for limitations found within this term, and Cox's proposed
language would add limitations not found in the claim or the specification. Therefore,
the court does not construe this term separately.
41

Found in '3,562 patent, claims 23 and 38.

42

Found in '932 patent, claim 1.

43

Found in '429 patent, claim 5; '064 patent, claim 7.

44

Cox proposed construing "switch(es)" as "network element(s) that participate(s) in
setting up calls and that relay(s) signaling and voice for a call to and from other network
elements." (0.1. 490 at 14) Within the '3,561 patent, "network element" is defined
broadly:
A network element is a telecommunications device such as a switch, server,
service control point, service data point, enhanced platform, intelligent
peripheral, service node, adjunct processor, network element of a different
network, enhanced system or other network related device, server, center or
system.
('3,561 patent, 4:58-63) According to this definition, a "switch" is a "network element,"
but a "network element" is not necessarily a "switch." The relevant claims place the
"processing system" external to the narrowband switches, therefore, defining a "switch"
broadly as a "network element" (which is just about any device connected to the
network) would significantly narrow the scope of the relevant claims. Cox has not
identified any support in the specifications to justify such a narrowing. Moreover, many
types of devices "participate" in setting up calls, but not all of those devices are
"switches," so such a definition of "switch" to include the broad range of devices that
"participate in setting up calls" would be unnecessarily broad and would lead to further
narrowing in the relevant claims. The language proposed by Sprint more closely
reflects the specification and the "correspondence between communication control and
a communications path [that] is well known in the art." ('3,561 patent, 1:56-57)
Therefore, the court adopts Sprint's proposal.
12

"Narrowband switches are advantageous for voice .... [u]nfortunately, narrowband
switches do not have the capacity, speed, and multimedia capabilities of broadband
switches." ('3,561 patent, 2:63-3:6) The patents use "communication switches,"
"telecommunications switches," and "narrowband switches" interchangeably to refer to
switches in the traditional telephone network. 45 The '3,561 specification also states that
these "[s]witches select the connections that comprise the communications path ...
[and] the network elements which form an actual part of the communications path."
('3,561 patent, 1:49-52) In addition, a "first switch will ... select other network elements
such as a second switch ... and establish[] a connection between the switches." ('3,561
patent, 1:62-65)
17. The court has provided a construction in quotes for the claim limitations at
issue. The parties are expected to present the claim construction consistently with any
explanation or clarification herein provided by the court, even if such language is not
included within the quotes.

45

By contrast, "broadband switches" (of which "ATM switches" are one type) are the
other type of switch discussed in the patents. ('429 patent, 1:54; '3,561 patent, 3:5-6)
13