Cox Communications Inc. et al v. Sprint Communications Company LP et al
MEMORANDUM OPINION. Signed by Judge Joseph F. Bataillon on 11/9/2017. (fms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
COMPANY L.P., et al.,
COX COMMUNICATIONS INC., et al.,
Civ. No. 12-487-JFB
Richard K. Herrmann, Esquire, and Mary Matterer, Morris James LLP, Wilmington, Delaware.
Counsel for Plaintiffs. Of Counsel: Jordan T. Bergsten, Esquire, Ryan D. Dykal, Esquire, Aaron
E Hankel, Esquire, Robert H. Reckers, Esquire, Ryan J Schletzbaum, Esquire, and Basil Trent
Webb, Esquire of Shook, Hardy & Bacon LLP.
David A. Bilson, Esquire, and John C. Phillips, Jr., Phillips, Goldman, McLaughlin & Hall, P.A.,
Wilmington, Delaware. Counsel for Defendants. Of Counsel: David S. Bloch, Esquire, Michael
L. Brody, Esquire, Krishnan Padmanabhan, Esquire, Pejman F. Sharifi, Esquire, and James
Winn, Esquire of Winston & Strawn LLP.
November 9, 2017
BATAILLON, Senior District Judge
In this patent case involving Plaintiff Sprint Communications Company, L.P. (“Plaintiff”
or “Sprint”) against Defendant Cox Communications, Inc. (“Defendant” or “Cox”), Sprint
alleges that Cox infringes certain of Sprint’s telecommunications and data networking patents.1
Among these patents are U.S. Patent Nos. 7,286,561 (“the ‘6,561 patent”), 6,633,561 (“the
‘3,561 patent”), 6,463,052 (“the ‘052 patent”), and 6,452,932 (“the ‘932 patent”) (collectively
the “Call Control Patents”) and U.S. Patent Nos. 6,473,429 (“the ‘429 patent”), 6,343,084 (“the
‘084 patent”), and 6,298,064 (“the ‘064 patent”) (collectively the “Broadband Patents”). Sprint
asserts approximately 15 claims from the Call Control Patents and the Broadband Patents (the
“patents-in-suit”) against Cox. (D.I. 650 at 2) District Judge Sue L. Robinson construed various
claim terms of the patents-in-suit in March 2016 and May 2017. (D.I. 399; D.I. 400, D.I. 541)
Upon Judge Robinson’s retirement from the bench, the case was reassigned to the undersigned
on June 16, 2017. (D.I. 557) A pre-trial conference is scheduled for November 17, 2017, with a
jury trial set to begin on December 7, 2017. (D.I. 603; D.I. 654) The court has jurisdiction
pursuant to 28 U.S.C. §§ 1331 and 1338(a).
As part of its defenses to the allegation of patent infringement by Sprint, Cox contends
that the patents-in-suit are invalid for lack of written description under 35 U.S.C. § 112, ¶ 1.2
(D.I. 608 at 1) In support, Cox presents the testimony of its expert witnesses Paul S. Min, PhD
(“Dr. Min”) and Kevin Almeroth, PhD (“Dr. Almeroth”). (See, e.g., D.I. 587, ex. 1 at ¶ 105)
Based upon this testimony, and Cox’s admissions, Sprint argues that “the claims as construed are
supported by the specification[,]” (D.I. 587 at 15), and has moved for partial summary judgment
The parties and procedural background for this matter have been documented extensively elsewhere.
(D.I. 399 at ¶¶ 1–3 & nn. 1–5; D.I. 541 at ¶¶ 1–3) Upon Sprint’s motion, (D.I. 641), the court realigned the parties,
Cox cites to 35 U.S.C. § 112(a), which is the post-AIA version of the statute. (D.I. 608 at 7) The patentsin-suit claim priority to the ‘605 application, which was filed on May 5, 1994. The Broadband Patents are
continuations of the ‘897 application, which is a continuation-in-part of the ‘605 application, and which was filed on
September 8, 1995. These dates place all the patents-in-suit well in advance of the AIA. Therefore, the court
applies the pre-AIA version of the statute.
of no invalidity of the patents-in-suit, (D.I. 586). Sprint has also moved to exclude the
testimony of Drs. Min and Almeroth. (Id.)
Meanwhile, Sprint has presented the validity opinions of its expert, Dr. Stephen Wicker
(“Dr. Wicker”). (D.I. 620, exs. 2, 3, 4) Based upon Dr. Wicker’s reports, Cox contends that
“there are no genuine factual disputes” as to its central theory that all of “Sprint’s patents
disclose only connection-oriented technology, namely [Asynchronous Transfer Mode] ATM, for
packet-voice transmissions” and cannot, therefore, read on products and services that employ
Internet Protocol (IP) technologies. (D.I. 608 at 1 (emphasis in original)) As a result, Cox has
moved for partial summary judgment of invalidity of the patents-in-suit. (Id.)
During briefing on the instant motion, in its reply brief, Sprint included an Appendix A,
entitled “Sprint’s Response to Cox’s Statement of Facts (CSUF)[,]” which is a nine-page
response to the statement of facts that Cox presented in its answering brief. (D.I. 620, appx. A;
D.I. 608 at ¶¶ 1–7) Cox moved to strike this material, arguing that it “contain[s] additional pages
of substantive arguments.” (D.I. 634 at 1)
A. The Patents
The patents-in-suit relate to transmission of telephone calls between traditional telephone
networks and packet data networks. All of the patents-in-suit originate from U.S. Patent
Application No. 08/238,605 (“the ‘605 application”), which was filed on May 5, 1994 and was
abandoned by applicant. (See, e.g., ‘052 patent, 1:5–10) The ‘605 application is incorporated by
reference into all of the patents-in-suit. (Id.) The Call Control Patents are continuations of the
‘605 application and share a common specification. (Id.; ‘932 patent, 1:5–12; ‘3,561 patent, 1:5–
12; ‘6,561 patent, 1:6–12) The Broadband Patents share a common specification and are
Cox appears to argue that all asserted “patents” are invalid for lack of written description, without
explaining differences between the Broadband Patents (for which two claim limitations were construed to be limited
to ATM technology) and the Call Control Patents (for which no claim limitations were construed to be limited to
ATM technology). (D.I. 608; D.I. 633) Moreover, as to the written description, Drs. Min and Almeroth did not
identify which claim limitations are involved.
continuations of U.S. Patent Application No. 08/525,897 (“the ‘897 application”), filed on
September 8, 1995, which is now U.S. Patent No. 5,991,301. (‘429 patent, front page, item
4, 1:6–16; ‘084 patent, front page, item 5; ‘064 patent, front page, item 6)
In the written description analysis, the relationship between the Call Control and
Broadband Patents is important.7 Elsewhere in the summary judgment briefing, Cox argues that
the [Broadband Patents] explicitly disclaim any relationship to the [Call Control Patents.]”
(D.I. 627 at 14)
The ‘897 application initially claimed to be a continuation-in-part of the ‘605 application.
(‘301 patent, front page, item ; 1:6–10) By definition, a continuation-in-part application is
“filed during the lifetime of an earlier  application, [and] repeat[s] some substantial portion or
all of the earlier  application and add[s] matter not disclosed in the  earlier  application.”
§ 201.08 MPEP (9th ed., Rev. 07.2015, Nov. 2015). The ‘301 patent issued on November 23,
1999. (‘301 patent, front page) In December 2004, applicant requested a Certificate of
Correction related to “Item , Related U.S. Application Data,” in which the ‘301 patent
claimed it was a “[c]ontinuation-in-part of application No. 08/238,605, May 5, 1994,
abandoned.” (Id., Certificate of Correction)8 A Certificate of Correction operates as follows:
Whenever a mistake of a clerical or typographical nature, or of
minor character, which was not the fault of the Patent and
Trademark Office, appears in a patent and a showing has been
made that such mistake occurred in good faith, the Director may,
upon payment of the required fee, issue a certificate of correction,
if the correction does not involve such changes in the patent as
See January 27, 2004 Certificate of Correction.
See February 22, 2005 Certificate of Correction.
See January 18, 2005 Certificate of Correction.
See infra Section IV.A.2.
The court infers the nature of the request from the certificate itself. The USPTO “Transaction History” in
PAIR shows a “Post Issue Communication – Certificate of Correction” entry dated December 10, 2004. See
USPTO Patent Application Information Retrieval (PAIR) at https://portal.uspto.gov/pair/PublicPair. The Certificate
of Correction issued on January 4, 2005. (‘301 patent, Certificate of Correction) The court notes that the
“Continuity Data” information in PAIR still shows that the ‘897 application is a continuation in part of the ‘605
would constitute new matter or would require re-examination.
Such patent, together with the certificate, shall have the same
effect and operation in law on the trial of actions for causes
thereafter arising as if the same had been originally issued in such
35 U.S.C. § 255. The USPTO has identified “[t]wo separate statutory requirements [that] must
be met before a certificate of correction for an applicant’s mistake may issue.” In Re Arnott, 19
U.S.P.Q.2d 1049 at *5 (Com’r Pat. & Trademarks May 22, 1991); see also § 1481 MPEP (9th
ed., Rev. 07.2015, Nov. 2015). “The first statutory requirement concerns the nature, i.e., type, of
the mistake for which a correction is sought. . . [, which] must be: (1) of a clerical nature, (2) of
a typographical nature, or (3) a mistake of minor character.” In Re Arnott, 19 U.S.P.Q.2d 1049
at *5. “The second statutory requirement concerns the nature of the proposed correction. The
correction must not involve changes which would: (1) constitute new matter or (2) require
reexamination.” Id. The file history of the ‘301 patent is not currently before the court, and it is
unknown what statements applicant made in December 2004; however, even if as the corrected
front page states, the ‘301 patent is not a continuation-in-part of the ‘605 application,9 that does
not change the specification which states that “[t]his application is a continuation-in-part of prior
application Ser. No. 08/238,605, entitled ‘Method, System, and Apparatus for
Telecommunications Control’, filed May 5, 1994, currently pending, and incorporated by
reference into this application.” (‘301 patent, 1:6–10) In other words, while the status of the
‘897 application as a continuation-in-part of the ‘605 application may be in doubt, at a minimum,
the ‘897 application (which forms the basis for the Broadband Patents) incorporates by reference
the ‘605 application (which forms the basis for the Call Control Patents). Therefore, aspects of
the Broadband Patents may find support in the common specification for the Call Control
There is not enough information to determine whether this is, or is not, the case. For example, applicant
did not remove the related language in the specification claiming priority to the ‘605 application, and the USPTO
has not reflected this change. (‘301 patent, 1:6–10); see supra note 8.
Patents,10 but limitations to the Broadband Patents do not necessarily result in limitations to the
Call Control Patents.
1. The Broadband Patents
In 2016, Cox moved for summary judgment of no literal infringement of the ‘084 patent
(which is one of the Broadband Patents) as well as several other patents no longer in suit11 on the
premise that the patents are limited to ATM (asynchronous transfer mode) technologies and that
Cox’s accused products and services are used in IP (Internet protocol) networks. (D.I. 357 at
25). At the time, Cox explained in its reply brief that “[t]o be clear, we agree that if the claims
are read as limited to ATM networks, they will not run afoul of the written description
requirement.” (D.I. 353 at 11 (emphasis in original)) Sprint did not argue to the contrary and
suggested that, under a construction limited to ATM, it would assert infringement under the
Doctrine of Equivalents. (D.I. 329 at 22) Judge Robinson construed, inter alia, the
“interworking unit” limitation of independent claim 1 of the ‘084 patent to be an “ATM
interworking multiplexer[,]” (D.I. 400 at ¶ 9), and granted summary judgment of no literal
infringement, (D.I. 399 at ¶¶ 6–8).
As discussed above, the other two Broadband Patents (the ‘429 and ‘064 patents) share a
common specification with the ‘084 patent, and the parties have agreed to apply the ATM
technology limitation to the ‘429 and ‘064 patents. (See, e.g., D.I. 490 at 2, applying definitions
of “interworking unit” as “ATM interworking multiplexer” and “asynchronous communication”
as “ATM communication” to limitations in the ‘429 and ‘064 patents) As a result, Sprint does
not assert that Cox literally infringes any of the Broadband Patents. (See D.I. 593, ex. 22 at
10:8–13, 11:15–23 (deposition of Sprint’s expert witness on infringement))
For simplicity, the court refers generally to the fact that the “Broadband Patents” incorporate by
reference the specification of the “Call Control Patents” when—technically—it is the ‘605 application that is
incorporated by reference.
At the time, Sprint alleged that Cox’s VoIP services infringe claims 1, 4, and 7 of the ‘084 patent, claims
1, 4, 7, 12, 13, and 14 of U.S. Patent No. 6,330,224 (“the ‘224 patent”), claims 11, 14, and 17 of U.S. Patent No.
6,697,340 (“the ‘340 patent”), claims 11 and 12 of U.S. Patent No. 6,563,918 (“the ‘918 patent”), and claim 1 of
U.S. Patent No. 6,262,992 (“the ‘992 patent”). (D.I. 329 at 21) Sprint no longer asserts the ‘224, ‘340, and ‘918
2. The Call Control Patents
When the court granted summary judgment of no literal infringement of the ‘084 patent,
the Call Control Patents had been ruled invalid as indefinite by Judge Robinson and were on
appeal to the United States Court of Appeals for the Federal Circuit. (D.I. 399 at 1 n.2) As a
result, in 2016, Cox did not argue that the Call Control Patents were invalid for lack of written
description. (D.I. 357 at 19–24) Cox’s Drs. Min and Almeroth expressed opinions on the
written description requirement as to the Call Control Patents in June 2017. (D.I. 587, exs. 1, 5)
Sprint’s Dr. Wicker presented rebuttal arguments, (D.I. 630, ex. 3), and all three experts were
deposed about their opinions, (D.I. 587, exs. 4, 6; D.I. 608, ex. 6).
III. STANDARD OF REVIEW
A. Summary Judgment
“The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine
issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.
10 (1986). A party asserting that a fact cannot be—or, alternatively, is—genuinely disputed
must be supported either by citing to “particular parts of materials in the record, including
depositions, documents, electronically stored information, affidavits or declarations, stipulations
(including those made for the purposes of the motions only), admissions, interrogatory answers,
or other materials,” or by “showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to
support the fact.” Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has carried its burden,
the nonmovant must then “come forward with specific facts showing that there is a genuine issue
for trial.” Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will “draw
all reasonable inferences in favor of the nonmoving party, and it may not make credibility
determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S.
133, 150 (2000).
To defeat a motion for summary judgment, the non-moving party must “do more than
simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475
U.S. at 586–87; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005)
(stating that the party opposing summary judgment “must present more than just bare assertions,
conclusory allegations or suspicions to show the existence of a genuine issue”) (internal
quotation marks omitted). Although the “mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly supported motion for summary
judgment,” a factual dispute is genuine where “the evidence is such that a reasonable jury could
return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–
48 (1986). “If the evidence is merely colorable, or is not significantly probative, summary
judgment may be granted.” Id. at 249–50 (internal citations omitted); see also Celotex Corp. v.
Catrett, 477 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated “against a
party who fails to make a showing sufficient to establish the existence of an element essential to
that party’s case, and on which that party will bear the burden of proof at trial”).
B. Written Description
The Patent Act provides in relevant part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same . . . .
35 U.S.C. § 112, ¶ 1. The written description must “clearly allow persons of ordinary skill in the
art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation and internal quotation marks
omitted). “In other words, the test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Id. (citations omitted). “The level of detail required
to satisfy the written description requirement depends, in large part, on the nature of the claims
and the complexity of the technology.” Streck, Inc. v. Research & Diagnostic Sys., Inc., 665
F.3d 1269, 1285 (Fed. Cir. 2012) (citing Ariad, 598 F.3d at 1351). Neither examples nor actual
reduction to practice is required; “a constructive reduction to practice that in a definite way
identifies the claimed invention can satisfy the written description requirement.” Id. (citing
Ariad, 598 F.3d at 1352).
Accused infringers must ultimately prove that the written description fails these standards
by clear and convincing evidence. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052,
1072–73 (Fed. Cir. 2005) (citation omitted). While compliance with the written description
requirement is a question of fact, it is amenable to summary judgment in cases where no
reasonable fact finder could return a verdict for the nonmoving party. PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (citation omitted). “Thus, a moving
party seeking to invalidate a patent at summary judgment must submit such clear and convincing
evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) “Alternatively, a moving party seeking to have a
patent held not invalid at summary judgment must show that the nonmoving party, who bears the
burden of proof at trial, failed to produce clear and convincing evidence on an essential element
of a defense upon which a reasonable jury could invalidate the patent.” Id.
C. Claim Construction
Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed.
Cir. 2005) (en banc). Claim construction focuses on intrinsic evidence—the claims,
specification, and prosecution history—because intrinsic evidence is “the most significant source
of the legally operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). Claims must be interpreted from the
perspective of one of ordinary skill in the relevant art at the time of the invention. Phillips, 415
F.3d at 1313. In some cases, “the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Teva
Pharm. USA, Inc. v. Sandoz, Inc., _ U.S. _, 135 S. Ct. 831, 841 (2015) (citation omitted).
Claim construction starts with the claims and remains centered on the words of the claims
throughout. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir.
2001). In the absence of an express intent to impart different meaning to claim limitations, “the
words of a claim are generally given their ordinary and customary meaning,” which 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.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics, 90 F.3d at 1582). “The
ordinary meaning may be determined by reviewing various sources, such as the claims
themselves, the specification, the prosecution history, dictionaries, and any other relevant
evidence. Ultimately, the only meaning that matters in claim construction is the meaning in the
context of the patent.” Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d. 999,
1002–03 (Fed. Cir. 2016) (citations, internal quotation marks, and brackets omitted). The
specification is often “the single best guide to the meaning of a disputed term.” Phillips, 415
F.3d at 1315.
D. Excluding Expert Testimony
In Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993), the Supreme Court
explained that Federal Rule of Evidence 702 creates “a gatekeeping role for the [trial] judge” in
order to “ensur[e] that an expert’s testimony both rests on a reliable foundation and is relevant to
the task at hand.” The rule requires that expert testimony “help the trier of fact to understand the
evidence or to determine a fact in issue.” Fed. R. Evid. 702(a). Expert testimony is admissible
only if “the testimony is based on sufficient facts or data,” “the testimony is the product of
reliable principles and methods,” and “the expert has reliably applied the principles and methods
to the facts of the case.” Fed. R. Evid. 702(b)–(d). There are three distinct requirements for
admissible expert testimony: (1) the expert must be qualified; (2) the opinion must be reliable;
and (3) the expert’s opinion must relate to the facts. See generally Elcock v. Kmart Corp., 233
F.3d 734, 741–46 (3d Cir. 2000).
A. Written Description
Sprint has moved for summary judgment of no invalidity, (D.I. 586), and Cox has moved
for summary judgment of invalidity, (D.I. 608 at 1). Therefore, Cox “must submit such clear and
convincing evidence of [lack of written description] so that no reasonable jury could find
otherwise.” Eli Lilly & Co., 251 F.3d at 962. And Sprint “must show that [Cox], who bears the
burden of proof at trial, failed to produce clear and convincing evidence . . . [of lack of written
description] upon which a reasonable jury could invalidate the patent.” Id.
1. Broadband Patents
As discussed above, Sprint’s infringement allegations with respect to the Broadband
Patents are limited to the doctrine of equivalents.12 (D.I. 593, ex. 22 at 10:8–13, 11:15–23)
According to Sprint, Cox has already made its written description arguments as to the Broadband
Patents, the court has construed the relevant claim terms and has ruled in Cox’s favor, and the
issue is now moot. (D.I. 587 at 12) Moreover, Sprint avers that Cox’s arguments are contrary to
the court’s claim construction, and the written description defense is foreclosed as a matter of
law by the doctrine of equivalents. (Id. at 13–15)
Cox responds that, after “applying the [c]ourt’s construction to the claims, Cox’s experts
have opined that a person of ordinary skill would not have understood the Sprint inventor to have
possessed an ‘IP’ invention, because ‘ATM’ and ‘IP’ were separated by a technical chasm.”
(D.I. 608 at 1) Cox ignores Sprint’s equivalents assertions and adheres to its written description
argument, because “by accusing IP systems, Sprint insists that the claims are broader in scope
than the ATM-limited disclosure. . . . [, which] bring[s] the issues of written description front
and center.” (Id. at 8) Based upon Cox’s briefs, the court identifies three major areas of Cox’s
argument: (1) extrinsic evidence, (2) claim construction, and (3) legal principles.
The parties do not explain whether Sprint asserts that Cox infringes the Call Control Patents under the
doctrine of equivalents. To the extent that Sprint alleges infringement of the Call Control Patents under the doctrine
of equivalents and Cox asserts this same invalidity argument, the court’s reasoning of this Section applies.
a. Extrinsic evidence
According to Cox, the doctrine of equivalents is simply not a factor in its written
description argument, and “Drs. Min and Almeroth do not . . . . address the doctrine of
equivalents at all.” (D.I. 608 at 10) Without an opinion on the doctrine of equivalents, Cox has
no evidence to present to a jury. Moreover, the opinions are based entirely on equivalence
between the claimed subject matter (ATM-limited claim limitations) and accused products and
services (that rely on IP) at the time of invention. (See, e.g., D.I. 587, ex. 1 at ¶ 144 (“a person of
ordinary skill in the art at the time of filing of the Asserted Patents (or underlying applications),
would see the claimed system as using ATM.”)) “[T]he proper time for evaluating
equivalency—and thus knowledge of interchangeability between elements—is at the time of
infringement, not at the time the patent was issued.” Warner-Jenkinson Co. v. Hilton Davis
Chem. Co., 520 U.S. 17, 37 (1997). Therefore, Cox does not offer any evidence upon which a
reasonable jury could invalidate the Broadband Patents for lack of written description.
Moreover, to the extent that Cox’s arguments relate to the Call Control Patents as asserted under
the doctrine of equivalents,13 no reasonable jury could invalidate these patents for lack of written
b. Claim Construction
In numerous instances, Cox appears to re-argue claim construction as to the limitations of
the ‘084 patent that, based upon the argument and extrinsic evidence presented by Cox at the
time, the court determined to be limited to ATM technology. Because, Cox does not explain
why it seeks reconsideration or additional claim construction, the court addresses two areas of
Cox’s arguments: broadening the claim construction, and making the claim construction
contingent on Sprint’s infringement theories.
As discussed below, in Section IV.A.1.c, patent validity is not, as Cox argues, a function of the theory of
infringement. However, for the sake of completeness the court addresses the remainder of Cox’s argument.
(i) Broaden the construction
First, Cox appears to re-argue its contention that certain claim limitations of the
Broadband Patents are limited to ATM technology (an argument that Cox has already won)
but—in so doing—Cox appears to attempt to broaden the court’s claim construction by restating
it in numerous ways. (Compare D.I. 400 at ¶ 9 (construing an “interworking unit” in claim 1 of
the ‘084 patent to mean an “ATM interworking multiplexer” and explaining why “[t]he court
concludes that this limitation should be limited to ATM technology.”) and id. at ¶ 13 (construing
an “asynchronous communication” to mean an “ATM communication”) with D.I. 633 at 5 (“The
Court has found Sprint’s invention [in the Broadband Patents] to be ATM-limited, and the
furthest coordinates of Sprint’s plot therefore fall squarely within the realm of ATM.”); see also
D.I. 608 at 8 (“It is undisputed that the only packet-voice technology disclosed in the Broadband
Patents is ATM.”); id. at 9 (“There is no dispute that the Broadband Patents have been limited to
ATM, [and] do not disclose [sic] ATM[.]”); id. at 1 (emphasis in original) (“There is no dispute
Sprint’s patents disclose only connection-oriented technology, namely ATM, for packet-voice
transmissions.”)14 Despite Cox’s efforts in this regard, the court declines to revisit its prior claim
construction. (D.I. 400)
(ii) Construction contingent on infringement
Second, Cox’s renewed claim construction arguments appear to be contingent on Sprint’s
infringement contentions. (See, e.g., D.I. 608 at 2 (“Cox agreed that the written description
requirement would be satisfied if Sprint did not expand the scope of the claims beyond the ATM
constructions issued by the [c]ourt[.]”)) This is contrary to the law:
A claim is construed in the light of the claim language, the other
claims, the prior art, the prosecution history, and the
specification, not in light of the accused device. Contrary to what
[defendant]’s counsel wrote the district court, claims are not
construed “to cover” or “not to cover” the accused device. That
Despite Cox’s broad statements about the disclosure and the specification, Dr. Min did not account for
the fact that the Broadband Patents incorporate by reference the specification common to the Call Control Patents.
(D.I. 587, ex.2)
procedure would make infringement a matter of judicial whim. It
is only after the claims have been construed without reference to
the accused device that the claims, as so construed, are applied to
the accused device to determine infringement.
SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc)
(emphasis in original) (citation omitted); see also Cohesive Techs., Inc. v. Waters Corp., 543
F.3d 1351, 1367 (Fed. Cir. 2008) (“The district court erred . . . by construing the claim merely to
exclude the accused device[.]”), Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442
F.3d 1322, 1327 (Fed. Cir. 2006) (“While a trial court should certainly not prejudge the ultimate
infringement analysis by construing claims with an aim to include or exclude an accused product
or process, knowledge of that product or process provides meaningful context for the first step of
the infringement analysis, claim construction.”), Scripps Clinic & Research Found. v.
Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (“[T]he particular accused product (or
process) is kept in mind, for it is efficient to focus on the construction of only the disputed
elements or limitations of the claims.”). In the case at bar, based upon the written description
argument presented by Cox at the time, (D.I. 357 at 1–3), the court construed the claims and then
the “claims, as so construed, [were] applied to the accused device to determine infringement[,]”
SRI Int’l, 775 F.2d at 1118. Based upon that finding, the court granted summary judgment of no
literal infringement of claim 1 of the ‘084 patent. (D.I. 399 at ¶¶ 7–8)
Cox now asks for a second bite at the apple, specifically for the court to revisit its written
description argument, and for the court to—this time around—determine that “the patent claims”
are invalid for lack of written description. (D.I. 608 at 9 (“Thus, if the patent claims are broad
enough to cover telephony systems, such as Cox’s VoIP networks, that do not use ATM
networks, then the Court should grant Cox partial summary judgment of invalidity under the
written description requirement[.]”)) This is precisely the type of “judicial whim” that the
Federal Circuit warned against. SRI Int’l, 775 F.2d at 1118. Therefore, the court declines to
revisit its prior construction.
c. Legal principles that lead to noninfringement, not invalidity
Despite asserting that the doctrine of equivalents plays no role in its analysis, Cox cites to
case law that relates to the written description requirement (in general15 and as applied to district
court appeals of patent office interference proceedings16) and to the doctrine of equivalents (such
as prosecution history estoppel17 and ensnarement of equivalents18). This leads to an
incomplete,19 if not contradictory,20 presentation of the case law associated with the written
description requirement. Taken together, Cox asserts facts and principles that—in conjunction
with the doctrine of equivalents infringement asserted by Sprint—lead to noninfringement, not
invalidity. These two principles are ensnarement and vitiation.
Cox presents its claim construction argument in a section about the Broadband Patents,
which are patents for which Sprint is asserting infringement under the doctrine of equivalents.21
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479–80 (Fed. Cir. 1998) (cited by Cox in
D.I. 608 at 7–8, 10–11; D.I. 633 at 1, 10); see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d
1356, 1365-66 (Fed. Cir. 2012) (cited by Cox in D.I. 608 at 9).
Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., 590 F.3d 1326, 1336 (Fed. Cir.
2010) (emphasis added) (cited by Cox in D.I. 633 at 2).
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (cited by Cox in D.I. 633 at
1, 4, 5, 10); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368 (Fed. Cir. 2007) (cited by Cox in
D.I. 633 at 1).
Int’l Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 772 (Fed. Cir. 1993) (cited by Cox in D.I. 608
at 8; D.I. 633 at 1, 6); see also Wilson Sporting Goods Co. v. David Geoffrey & Associates, 904 F.2d 677 (Fed. Cir.
1990) (cited by Cox in D.I. 633 at 4 n.2).
Cox offers a quotation of the law of the written description requirement as saying that under the statute
“specifications ‘limit the permissible breadth of claims,’ which ‘may be no broader than the supporting disclosure.’”
(See D.I. 608 at 7–8 (citing Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479–80 (Fed. Cir. 1998)); see
also D.I. 633 at 1). In addition to being an incorrect quotation of the case from two sentence fragments separated by
a paragraph, Cox does not explain the context of these statements. If we put these quotations together, they are as
“[a]ccordingly, his original disclosure serves to limit the permissible breadth of his later-drafted claims. . . .
Rather, [the cases on which plaintiff relies] make clear that claims may be no broader than the supporting
disclosure, and therefore that a narrow disclosure will limit claim breadth.” Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d at 1479–80 (emphasis added to identify language quoted by Cox).
See infra Section IV.A.1.c(ii)
Section I.A of Cox’s answering brief addresses the Broadband Patents and Section I.C addresses the Call
Control Patents, but Section I.B is vague and lacking in specificity, as a result, the court cannot ascertain to which
patents it relates. (D.I. 608 at 7–11)
(D.I. 608 at 7–10) In its answering brief, Cox appears to argue that ATM and IP technologies
are wholly antithetical, namely that “the literature consistently teaches that ATM and IP were
seen as worlds-apart by technologists at the time of the invention.”22 (D.I. 608 at 8) In its
surreply brief, Cox clarifies its argument that “the written description cannot be based on
antithetical teaching, limited to ‘fundamentally different’ technology.” (D.I. 633 at 4 (emphasis
added) (citing extrinsic evidence at D.I. 608, ex.2 at ex. H)) In other words, Cox avers that its
IP-network elements cannot be an equivalent to the ATM-limited structures in the Broadband
The test of “equivalence of a proposed substitute for a missing element is ordinarily a
factual inquiry reserved for the finder of fact.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349,
1356 (Fed. Cir. 2012). However, it is “the role of the court . . . to ensure that the doctrine of
equivalents is not permitted to overtake the statutory function of the claims in defining the scope
of the patentee’s exclusive rights.” Id. For example, the Federal Circuit “has refused to apply
the doctrine [of equivalents] in  cases where the accused device contained the antithesis of the
claimed structure.” Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1345 (Fed. Cir.
2006). “In such a case, application of the doctrine of equivalents would ‘vitiate’ a claim
element.” Deere & Co., 703 F.3d at 1356 (citation omitted). “‘Vitiation’ is . . . a legal
determination that ‘the evidence is such that no reasonable jury could determine two elements to
be equivalent.’” Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39
n.8 (1997)). However, the remedy for vitiation is a finding of noninfringement and not
invalidation of the patent.24 See, e.g., Planet Bingo, 472 F.3d at 1345.
Of course, as discussed above, an evaluation of equivalents would be at the time of infringement and not
the time of invention. Warner-Jenkinson, 520 U.S. at 37
The court construed the ATM limitations in claim 1 of the ‘084 patent. (D.I. 399; D.I. 400) The parties
agreed to include these limitations in the constructions of the ‘429 and ‘064 patents (D.I. 490) Sprint asserts
infringement of the Broadband Patents under the doctrine of equivalents. (D.I. 593, ex. 22 at 10:8–13, 11:15–23)
Perhaps this explains why Cox argues vitiation with respect to its motion for noninfringement, (see, e.g.,
D.I. 592 at 10), but it does not so argue with respect to written description, (D.I. 608; D.I. 633).
Cox argues that the Supreme Court’s decision in Warner-Jenkinson Co., Inc. v. Hilton
Davis Chem. Co., 520 U.S. 17, 37 (1997), “simply does not address using the doctrine of
equivalents to ensnare technology antithetical to what was disclosed.”25 (D.I. 608 at 10)
Meanwhile, Cox cites extensively to an ensnarement case, International Visual Corp. v. Crown
Metal Mfg. Co., 991 F.2d 768 (Fed. Cir. 1993), for a statement of the written description
requirement. (D.I. 608 at 8; D.I. 633 at 1, 6) That case explains that:
Hypothetical claim analysis is an optional way of evaluating
whether prior art limits the application of the doctrine of
equivalents. It is simply a way of expressing the well-established
principle “that a patentee should not be able to obtain, under the
doctrine of equivalents, coverage which he could not lawfully have
obtained from the PTO by literal claims.”
International Visual, 991 F.2d at 772 (quoting Wilson Sporting Goods Co. v. David Geoffrey &
Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990) (hereinafter “Wilson Sporting Goods”)). These
cases discuss the ensnarement principle in detail. “Ensnarement bars a patentee from asserting a
scope of equivalency that would encompass, or ‘ensnare,’ the prior art.” DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322 (Fed. Cir. 2009) (citation omitted)
In its brief, Sprint argues that, Wright Medical Technology, Inc. v. Osteonics Corp., No.
91-10962-GAO, 1999 WL 130578, at *1 (D. Mass. Mar. 3, 1999), explains its position that the
doctrine of equivalents precludes Cox’s written description argument. (D.I. 587 at 15) That case
included, among other things, an ensnarement dispute. Wright Medical, 1999 WL 130578 at *2.
Cox reponds that “Wright Medical, is a twenty-year-old, non-binding, and never-cited decision
with limited relevance.” (D.I. 608 at 10) Moreover, Cox argues, “after Wright Medical, the
Federal Circuit made clear that infringement allegations under the doctrine of equivalents cannot
be used to circumvent [the] requirements of § 112.” (Id.) (citing Smith & Nephew, Inc. v.
The Court in Warner-Jenkinson rejected the argument “that equivalents must not only be known, but
must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.” WarnerJenkinson, 520 U.S. at 37.
Ethicon, Inc., 276 F.3d 1304, 1313 (Fed. Cir. 2001)). But Smith & Nephew relates to a different
principle limiting the scope of equivalents,26 namely the disclosure-dedication doctrine. 276
F.3d at 1313.
Disclosure-dedication is related to ensnarement and prosecution history estoppel and
leads to the same outcome, namely noninfringement—“when a patent drafter discloses but
declines to claim subject matter . . . this action dedicates that unclaimed subject matter to the
public. Application of the doctrine of equivalents to recapture subject matter deliberately left
unclaimed would ‘conflict with the primacy of the claims in defining the scope of the patentee's
exclusive right.’” Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed.
Cir. 2002) (en banc).
Cox explains further that it cites to Smith & Nephew to show that “Sprint cannot skirt the
written description requirement by choosing to assert infringement under the doctrine of
equivalents.” (D.I. 633 at 3) Cox does not explain why the disclosure-dedication doctrine is the
appropriate avenue for the analysis. At the same time, Cox addresses Wright Medical and
explains that the ensnarement analysis from Wilson Sporting Goods (the seminal case on the
subject) is not at issue in the case at bar:
Sprint’s other case, Wright Medical, also fails to address the
correct question. . . . In Wright Medical, the Court addressed a
“hypothetical claim,” similar to the “hypothetical claim”
performed in the Wilson Sporting Goods case to determine whether
a doctrine of equivalents claim would ensnare prior art. No such
hypothetical claim is suggested here[.]
(Id. at 3–4 (footnote omitted)) While Cox is correct that neither of the parties have suggested a
“hypothetical claim” here, that failure is (in part) Cox’s doing. First, Cox argued that WarnerJenkinson is inapposite, because it does not relate to ensnarement. Second, Cox cited
Also mentioned in the briefing are cases that discuss prosecution history estoppel as a limitation to the
scope of equivalents. See, e.g., Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). While
Cox mentions Festo in its surreply brief, (D.I. 633 at 1, 4, 5, 10), Sprint had no opportunity to respond to this new
case citation, nor is it clear that Cox (or its experts) argue prosecution history estoppel as it relates to the Broadband
Patents, (see D.I. 587, ex. 5 at ¶ 496 & n.270 (identifying, but not explaining, a prosecution history argument with
respect to the ‘084 patent)).
ensnarement cases and argued facts aligned with ensnarement principles. Finally, Cox argued
that ensnarement should lead to invalidity for lack of written description. (D.I. 608 at 10, 12 n.4;
D.I. 633 at 4, 6, 10) However, Cox did not, as is its burden in an ensnarement defense,27 produce
evidence of prior art that would challenge a hypothetical claim asserted under the doctrine of
Sprint argues that Cox did not cite to “a single case extending the ensnarement doctrine
to the written description requirement.” (D.I. 620 at 3) The court agrees. Absent such case law,
even if Cox were to present sufficient evidence (which it has not) upon which a reasonable jury
could find that Sprint’s patent claims “ensnare behavior that, as a matter of law, the literal
claims could not,” (D.I. 633 at 6), the remedy would be noninfringement, not invalidity.
d. Conclusion: Broadband Patents
Despite Cox’s repeated attempts to broaden the court’s claim construction, the court
declines to re-cast its earlier constructions to encompass broad limitations to ATM technology to
“the invention” or “the patents” or to add additional limitations, such as “connection-oriented,”
(D.I. 608 at 1), to the claims. Moreover, as discussed above, the court declines to re-construe the
claims to factor in Sprint’s theories of infringement.
Based upon the briefing, Cox has not identified any case law that supports its contention
that, after the written description requirement has been incorporated into the court’s claim
construction to narrow limitations of asserted claims, those same arguments and the written
description requirement extend further to infringement under the doctrine of equivalents. (D.I.
608 at 1) “This proposition not only has no authoritative support, but also runs counter to what
the Supreme Court has said about the doctrine of equivalents.” Wright Medical, 1999 WL
130578, at *2 (citing Warner–Jenkinson, 520 U.S. at 17).
“The burden of producing evidence of prior art to challenge a hypothetical claim rests with an accused
infringer, but the burden of proving patentability of the hypothetical claim rests with the patentee.” Interactive
Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001) (citing Streamfeeder, LLC v. SureFeed Sys., Inc., 175 F.3d 974, 984 (Fed. Cir. 1999)); see also G. David Jang, M.D. v. Boston Sci. Corp., No. 20161275, 2017 WL 4321270, at *6 (Fed. Cir. Sept. 29, 2017).
In addition to the lack of citation to case law supporting its position, Cox’s experts did
not provide opinions as to the doctrine of equivalents, and their written description analysis
explaining that ATM and IP are antithetical technologies is predicated on the time of invention
and not (as required by the doctrine of equivalents) the time of infringement. The facts as
alleged by Cox (even though Cox does not necessarily name its claims accordingly) appear to
reference known patent law principles of vitiation and ensnarement, though these principles lead
to noninfringement of the asserted patents, (see, e.g., D.I. 592 at 10), and not the requested
remedy of “summary judgment of invalidity[,]” (D.I. 608 at 1).
For these reasons, as it relates to claims asserted under the doctrine of equivalents (and
specifically the asserted claims of the Broadband Patents), the court concludes that Cox has not
produced any evidence upon which a reasonable jury could invalidate these claims for lack of
written description. Therefore, summary judgment of no invalidity as to written description is
2. Call Control Patents
Neither party has stated affirmatively whether or not Sprint avers that Cox literally
infringes the Call Control Patents. However, based upon the arguments, Sprint appears to assert
literal infringement of at least some of the claims of the Call Control Patents. (D.I. 587 at 13–14;
D.I 608) With respect to these patents, Sprint contends that “the [c]ourt expressly rejected Cox’s
attempt to inject requirements into the claims, holding that the specification discloses a broader
invention. Yet, Cox (through Dr. Min and Dr. Almeroth) continues to advance opinions that the
[c]ourt considered and expressly rejected as unsupported by the specification.” (D.I. 587 at 13)
In its brief, Sprint chronicles the ways in which, it asserts, Drs. Min and Almeroth contradict the
court’s claim construction. (Id.)
Cox agrees with Sprint that, in regard to the Call Control Patents, claim construction
issues are central to the written description dispute. (D.I. 608 at 11) Cox argues that after the
court’s May 2017 Memorandum Order on claim construction, (D.I. 541), “the Court’s
constructions [do not] reach [the question of] whether the packet network must be connection20
oriented or connectionless. That distinction, which fully accounts for the Court’s constructions,
is the basis for the § 112 opinions expressed by Cox’s experts on the Call Control patents.”28
(D.I. 608 at 11 (citations omitted)) Cox references its statement of facts, paragraphs 2 and 4 (as
well as paragraphs 1 and 3), as explaining its experts’ opinions. (Id.)
a. Claim construction
For the reasons discussed below, the court declines to perform additional, supplemental
construction. Cox acknowledges that its experts performed additional claim construction, and
argues that this is necessary, because “the [c]ourt’s constructions never reach [the question of]
whether the packet network must be connection-oriented or connectionless.” (D.I. 608 at 11)
Sprint does not propose an alternative construction, and instead, Sprint avers that “the [c]ourt
soundly rejected each of Cox’s arguments during claim construction[.]” (D.I. 620 at 2)
Meanwhile, Cox’s experts were not consistent in their proposed limitations to the claim
construction. (Compare D.I. 587, ex. 2 at ¶¶ 8–9 (relying on a “connection-oriented” limitation)
with id., ex, 5 at ¶¶ 509–15 (relying on a limitation to ATM technology)) Nor were Cox’s
experts specific about which claim limitations should be construed or why—Dr. Min explained
his reasoning based upon some of the patents as a group, (D.I. 587; ex. 2 at 8–9 (referring to the
“Call Control Patents”)), and Dr. Almeroth combined the Broadband and Call Control Patents in
single argument, (id., ex. 5 at 509–15 (citing the ‘932 (Call Control) and ‘429 (Broadband)
patent specifications)).29 This lack of specificity is sufficient to terminate the question of claim
construction, which Cox argues, (D.I. 608 at 11), is dispositive of its arguments on written
Dr. Min based his 2017 opinions on his 2016 expert report. (D.I. 587, ex. 2 at ¶ 8 n.14 (citing D.I. 587,
ex. 1 at ¶¶ 40–123)) But this portion of the report makes no reference to the specification of the Call Control Patents
and does not identify any other intrinsic evidence that supports his opinion. (D.I. 587, ex. 1 at ¶¶ 40–123) Although
Cox raised the issue of written description as to the Broadband Patents during summary judgment and claim
construction, (D.I. 357), Cox did not raise written description (now presented under the guise of Dr. Min) in any of
its other claim construction briefs, especially in relation to the most recent claim construction as to the Call Control
Patents, (see D.I. 373; D.I. 505, D.I. 506).
In contrast, the court addressed ATM limitations in claim 1 of the ‘084 patent after the parties had argued
with specificity as to terms and claim limitations. (D.I. 399, D.I. 400)
Additionally, for the reasons discussed below, even if Cox’s experts were to identify with
specificity the claim limitations in need of construction, as is discussed below, the evidence
presented is insufficient to lead the court, as a matter of law, to agree that either of the “ATM” or
“connection-oriented” restrictions (to unknown claim terms and limitations) are either necessary
or appropriate. Finally, were the court to agree with the limiting constructions stated by Cox’s
experts, Cox has not presented evidence upon which a reasonable jury could invalidate the Call
Control Patents for lack of written description. Eli Lilly & Co., 251 F.3d at 962.
b. Cox’s expert opinions
Paragraph 2 of Cox’s statement of facts states that Dr. Min’s 2017 report, at paragraph 7
explains “the vast differences between connectionless (such as IP) and connection-oriented (such
as ATM) protocols[.]” (D.I. 608 at ¶ 2) (brackets omitted) However, paragraph 7 of Dr. Min’s
2017 report relates to the Broadband Patents, and not the Call Control Patents. (D.I. 587, ex. 2 at
¶ 7) Paragraph 9 relates to the Call Control patents, and Cox notes that in it, “Dr. Min opined
that a person of ordinary skill in the art would similarly not [have] understood the inventors of
the Call Control Patents to be in possession of a connectionless invention based on ‘disclosure
regarding only connection[-]oriented ATM.’” (D.I. 608 at ¶ 2)
In paragraph 4 of its statement of facts, Cox identifies paragraphs 490–515 of Dr.
Almeroth’s expert report on invalidity as supporting three arguments—of these, only one relates
to Dr. Min’s ATM-versus-IP argument as to written description.30 (D.I. 608 at ¶ 4) According
to Cox, “Dr. Almeroth opined that a person of ordinary skill would not understand the inventors
of the Call Control Patents . . . to be in possession of an ATM invention, because a person of
Because Cox continues to assert the written description requirement as to the Broadband Patents, Dr.
Almeroth’s report is confusing. In it, he presented two arguments as to “the patents” in general, grouping together
and opining as to invalidity of the Broadband and Call Control Patents in Sections XV.B and C. (D.I. 587, ex. 5 at
¶¶ 500–15) In Section XV.A, he presented an argument related to the Call Control Patents that is not discussed in
detail in the briefs on summary judgment. (Id. at ¶¶ 490–99) The ATM versus IP distinctions are addressed in
relation to all the patents-in-suit in Section XV.C—the court addresses this argument as to the Call Control Patents
in this section. The court addresses Dr. Almeroth’s opinions (and specifically Section XV.A of his report) in
relation to Sprint’s motion to exclude.
This statement is the opposite of Dr. Min’s opinion on written description. (D.I. 587, ex. 2 at ¶ 9)
However, in Section XV.C of his report, Dr. Almeroth never actually opined (in any way) about what a person of
ordinary skill would have understood that ATM and IP ‘are inherently different protocols,’
where ‘ATM is connection oriented,’ and ‘IP on the other hand, is a connectionless protocol.’”
(Id. (emphasis added) (citing D.I. 587, ex. 5 at ¶ 511))
(i) Dr. Min
Dr. Min stated that he based his opinion on the court’s claim construction, “[a]s
construed, the Call Control Patents are not limited to ATM systems or for that matter,
connection-oriented systems.” (D.I. 587, ex. 2 at ¶ 9) Dr. Min even acknowledged that “the full
scope of [the] claimed invention” in the Call Control Patents is broad enough to encompass both
ATM and IP as well as connection-oriented and connectionless protocols. (Id.) None of these
facts are in dispute. And yet, Dr. Min added limitations to the claims as a whole by reading in
limitations from the specification, which he referred to as a “disclosure regarding only
connection[-]oriented ATM[.]” (Id.) Effectively, Dr. Min opined that (unlike the Broadband
Patents in which specific claim limitations were restricted to ATM technology) all claims of the
Call Control Patents should be confined to “connection[-]oriented ATM” technologies.32 In
support of his opinion Dr. Min identified extrinsic and intrinsic evidence.
The extrinsic evidence from Dr. Min is primarily his opinions from paragraphs 40–123 of
his 2016 report and his explanation that “the invention” disclosed in the shared specification of
the Call Control Patents “is directed to the solution of problems that only arise in connectionoriented networks (namely, the fact that the switches that handle bearer traffic also handle the
selection of a communications path)[.]”33 (D.I. 587, ex. 2 at ¶ 8) He filled in the details with
ordinary skill would conclude that the inventor was or was not in possession of. (Id., ex. 5 at ¶¶ 509–15) Therefore,
this is attorney argument, and the court is left confused as to why Cox’s attorneys would characterize Dr.
Almeroth’s (unstated) opinion in such a way as to contradict Dr. Min’s stated opinion.
This is especially problematic, because the Broadband Patents incorporate by reference the commonspecification of the Call Control Patents, which should have been a factor in construing various claim limitations in
the Broadband Patents. Dr. Min did not consider the question of incorporation by reference in his opinions.
(D.I. 587, ex. 4 at 25:19–26:4) Cox does not dispute this fact. (D.I. 587 at ¶¶ 32–33; D.I. 608 at 3–4)
Dr. Min based this statement largely on statements in the specification about prior art approaches and
some embodiments. (D.I. 587, ex. 2 at ¶ 8 n.11) While Dr. Min identifies some of the benefits identified in the
specification, he cites to (but fails to mention) others, for example, he does not mention that “an advantage of the
present invention is its ability to treat narrowband switches . . . interchangeably. . . . This allows the network to pull
(ostensibly) the knowledge of a person of ordinary skill in the art and observed that “[t]hese
problems do not arise in, and these benefits are not achieved in ‘connectionless’ networks where
no path for a call is ever selected, but rather the path for each packet comprising the call is
separately selected.” (Id.)
As for intrinsic evidence, Dr. Min opined that the disclosure of “the transmission of
bearer traffic in one non-TDM [(time division multiplexed)] format: ATM . . . [and the] fact
[that] the term ‘IP’ or ‘internet protocol’ does not appear anywhere in the specification”
supports his conclusion that a person of ordinary skill in the art would not “consider disclosure of
ATM for carrying bearer traffic to teach or express possession of an invention that uses
connectionless protocols, such as IP, to transmit bearer traffic (i.e., voice).” (Id. (footnotes omitted))
The first cited portion of the specification employs open-ended language and refers to
“[b]roadband systems, such as Asynchronous Transfer Mode (ATM)[.]” (‘932 patent, 2:28–29
(emphasis added)) The phrase “such as” is commonly used in patents to identify non-limiting
examples. Additionally, the specification discusses the concept of “a connection” using similarly
A connection is the media between two network elements that
allows the transfer of information. A few examples of connections
are: digital T1 lines, OC-3 optical fibers, packet connections,
dedicated access lines, microwave transmission, and cellular radio.
As those skilled in the art are aware, connections can be described
in a range from general to specific. All of the media between two
switches is a general description and might correspond to a virtual
path in an ATM system or a trunk groups in a Tl system. An
individual circuit between two elements is more specific and
might correspond to a virtual channel in an ATM system or a DS0
circuit in a Tl system. Connections can also be described as being
logical or physical. Physical connections are electrical-mechanical
media. Logical connections are paths which follow physical
narrowband switches out of service without taking extreme measures. In turn, this simplifies the introduction of
new services into the network.” (‘3,561 patent, 21:48–54)
Dr. Min cited to the ‘932 patent at column 2, lines 28-36 and column 4, line 64 through column 5, line 15
as supporting this limitation. (D.I. 587, ex. 2 at ¶ 8 n.12) Dr. Min also explained that the Call Control Patents share
a common specification. (Id.)
connections, but are differentiated from one another based on
format and protocol. The term “connection” includes this entire
range and the meaning varies according to the context in which the
term is used. The present invention could make selections
encompassing the entire range of connections.
(‘932 patent, 4:64-5:15 (exemplary language emphasized)) The cited portions of the
specification are not limiting and do not, on their own, lead to the conclusion that the applicant
intended to disavow all technologies other than ATM. Moreover, the specification does not
employ the terms used by Dr. Min (e.g. “TDM,” “connectionless,” or “connection-oriented”) and
the cited passages directly contradict Dr. Min’s statement about the disclosure of ATM as the
sole “non-TDM” technology, because “packet radio,” “cellular radio,” and “microwave
transmission” could be interpreted to be, inter alia, “non-TDM.” Neither Dr. Min nor Cox
provides any explanation as to why these examples should be limiting. “Where a specification
does not require a limitation, that limitation should not be read from the specification into the
claims.” E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.
Cir. 1988) (citing Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed.Cir.1988)).
(ii) Dr. Wicker’s rebuttal testimony
Sprint’s expert, Dr. Wicker, provided extensive evidence disputing Dr. Min’s 2016 report
about the differences between ATM and IP networks. For example, Dr. Wicker presented
unrebutted evidence that TCP (a connection-oriented protocol) is used extensively with IP in
what is commonly known as “TCP/IP.” (D.I. 620, ex. 2 at ¶¶ 154–55) Dr. Wicker
acknowledged that UDP is a connectionless alternative to TCP that is also used at Layer 4 in
conjunction with IP in what is known as “UDP/IP.” (Id.) However, Dr. Wicker explained that
voice communications were often transported over the connectionless UDP/IP protocol using a
higher-level protocol, named “RTP,” which provided “end-to-end delivery services[,]” and
which Dr. Wicker opined is “akin to the virtual circuit and virtual path identifiers included within
an ATM cell.” (Id. at ¶¶ 160–64) Dr. Wicker also identified other technologies within IP to
manage phone calls, including RSVP and DiffServ, for setting up “connection oriented path[s]
within an IP network.” (Id. at ¶¶ 165–78) Additionally, Dr. Wicker produced evidence, (id. at
¶¶ 193–205), to support his opinion that “at the time of [the] invention[of the patents-in-suit],
those skilled in the art would have known that IP networks were interoperable with ATM
networks and either or both could be used[,]” (id. at ¶ 192). Were the court inclined to engage in
claim construction (which it is not), this unrebutted testimony would most likely be persuasive
extrinsic evidence that would be useful in discounting Dr. Min’s assertions of the all-out war
between ATM and IP at the time of invention. Also, as it relates to summary judgment, Dr.
Wicker’s testimony in the record would most likely demonstrate that Dr. Min’s testimony would
not amount to the clear and convincing evidence that a reasonable jury would need to invalidate
the Call Control Patents for lack of written description. Eli Lilly & Co., 251 F.3d at 962.
(iii) Dr. Almeroth
In paragraph 4 of its statement of facts, Cox identifies several arguments presented by Dr.
Almeroth. (D.I. 608 at 6–7 at ¶ 4) One of these relates to written description. (Id. (citing D.I.
587, ex. 5 at ¶ 511)) Like Dr. Min, Dr. Almeroth relied on the same exemplary language from
the “Background of the Invention” section of the Call Control Patents that identifies
“[b]roadband systems such as Asynchronous Transfer Mode (ATM)[.]” (Id. at ¶ 509 (citing
‘932 patent 2:27–36)) He juxtaposed this (not limiting) language from the ‘932 patent with
limiting language from the ‘429 patent (one of the Broadband Patents) and effectively suggested
a “limitation-by-association.” (Id.) Dr. Almeroth repeated this juxtaposition a second time with
similarly exemplary language (this time using the word “might”) from the ‘932 patent
accompanied by a quotation from the ‘429 specification. (Id. at ¶ 510) As with Dr. Min’s
testimony, Dr. Almeroth’s expert report provides no specific basis for a claim construction, and
the identified intrinsic evidence of exemplary, non-limiting statements is similarly unpersuasive.
c. Conclusion: Call Control Patents
As it relates to the Call Control Patents, Cox has based its argument on a claim
construction restricting unknown limitations from unknown claims of the Call Control Patents to
either “connection-oriented networks”35 or to “ATM technology.” This argument lacks
specificity, and the court declines to construe these unidentified terms. For the reasons discussed
above, summary judgment of no invalidity is appropriate.
Both parties have moved for summary judgment as to written description. With respect
to the Broadband Patents, the court heard argument on the issue of written description and
adopted Cox’s claim construction limiting specific claim limitations to ATM networks. As a
result, the court granted summary judgment of no literal infringement. Sprint now asserts claims
of the Broadband Patents under the doctrine of equivalents. Cox now attempts to re-argue
invalidity for lack of written description, citing facts and case law that stand for various
principles related to the doctrine of equivalents (ensnarement, prosecution history estoppel, and
vitiation) for which the remedy is noninfringment and not invalidity. With regards to the Call
Control Patents, Cox bases its written description argument on a baseless claim construction that
lacks specificity as to which terms and claim limitations are involved. Additionally, the evidence
presented is insufficient to support the claim construction Cox proposes. Taken together, Cox
has presented no evidence of lack of written description as to either the Call Control Patents or
the Broadband Patents. Eli Lilly & Co., 251 F.3d at 962. Therefore, the court grants Sprint’s
motion and denies Cox’s motion.
B. Motion to Exclude
Sprint argues in the alternative that “[e]ven if Cox put forth a viable written description
defense ([which] it has not), the expert opinions provided by Dr. Min and Dr. Almeroth should
be excluded because the testimony is inconsistent with the Court’s claim construction[,] is
unreliable and unhelpful to the finder of fact.” (D.I. 587 at 15–16 (internal quotation marks and
citations omitted)). Cox responds that “both Dr. Min and Dr. Almeroth testified, they applied the
Cox argues, in Section II.A of its brief (the section related to exclusion of the expert testimony) that it
“has always maintained that the asserted patents should be restricted to connection-oriented technologies for the Call
Control Patents, and ATM for the Broadband Patents.” (D.I. 608 at 12) This is attorney argument. Unfortunately,
neither of Cox’s experts stated this argument with such clarity in their reports.
Court’s construction to understand the scope of the claim, and then examined the disclosure to
determine whether that claim scope was supported.” (D.I. 608 at 11–12) Having reviewed the
record, the court agrees with Sprint.
1. Dr. Min
a. Broadband Patents
Dr. Min’s testimony as to the Broadband Patents identified the court’s claim construction
and the various ATM-related constructions for the “interworking multiplexer” and
“asynchronous communication” terms. (D.I. 587, ex. 2 at ¶ 6) However, Dr. Min then opined
that “to the extent the claims of the ‘064 patent and ‘429 patent are found to encompass systems
that use IP or connectionless protocols to transmit bearer traffic through the doctrine of
equivalents, this exceeds the written description of the [Broadband] Patents as would be
understood by a person of ordinary skill in the art.” (Id. at ¶ 7 (emphasis added) (footnotes
omitted)) As discussed extensively above in Section IV.A.1, this statement is contrary to the law
and is, therefore, unhelpful and likely to confuse a jury. Daubert, 509 U.S. at 597.
b. Call Control Patents
In relation to the Call Control Patents, Dr. Min acknowledged the court’s claim
construction and recited that “[a]s construed, the Call Control Patents are not limited to ATM
systems or for that matter, connection-oriented systems.” (D.I. 587, ex. 2 at ¶ 9) However, this
statement is surrounded by language contradicting the construction. First, Dr. Min explained that
“[t]he specification of the Call Control Patents states that the invention they disclose is directed
to the solution of problems that only arise in connection oriented networks[.]” (Id. at ¶ 8)
Second, he read in limitations from his prior reports and characterized the specification as a
“disclosure of ATM for carrying bearer traffic to teach or express possession of an invention that
uses connectionless protocols, such as IP to transmit bearer traffic (i.e., voice).”36 (Id.) Third, he
This is the claim construction that Cox acknowledges is at issue. (D.I. 608 at 11) Here Dr. Min
effectively expressed the opinion that some aspect of at least one of the claims of the Call Control Patents should be
limited to ATM or connection-oriented protocols. (D.I. 587, ex. 2 at ¶ 8)
concluded that “a person of ordinary skill in the art would not understand the inventor of a patent
directed to the solution of problems related to connection-oriented networks and whose benefits
all stemmed from the invention’s ability to solve those problems to be in possession of an
invention that was applicable to connectionless networks.” (Id.) Then, after reciting the court’s
construction, he concluded that the written description requirement was not met, because the
claims were limited to “connection[-]oriented protocols such as ATM.” (Id. at ¶ 9) Elsewhere,
he drew other conclusions based upon reading in this “connection-oriented” limitation. (Id. at
Moreover, Dr. Min read in other limitations contrary to the court’s construction, each
time acknowledging the court’s construction and then expressing an opinion contrary to that
construction based upon some limitation related to ATM and connection-oriented networking.
(Id. at ¶¶ 11, 12, 13). Dr. Min expressed opinions on written description37 that are contrary to the
court’s claim construction. This is unhelpful to the court, and it is likely to confuse the jury.
2. Dr. Almeroth
In the case of Dr. Almeroth, neither party addressed all three of the written description
arguments presented by Dr. Almeroth in his expert report. As mentioned above, the court
addresses this evidence in relation to Sprint’s motion to exclude.
a. All asserted patents
Sections XV.B and C of Dr. Almeroth’s report addressed “the asserted patents” as a
whole. (D.I. 587, ex. 5 at ¶¶500-15)
(i) “Is not an ATM network”
According to Cox, “Dr. Almeroth opined that a person of ordinary skill would not
understand the inventors of the Call Control Patents and Broadband Patents to be in possession
Cox did not present these arguments as to written description during claim construction. (D.I. 490 at 4–
14) Even though Dr. Min had opined generally on these issues in June 2016, (D.I. 587, ex. 1), he did not update his
expert report to include the Call Control Patents until after the court’s claim construction in May 2017, (id., ex. 2).
The court notes that Dr. Min based his 2017 opinions on claim constructions that the court had rejected barely a
month prior. (Compare D.I. 490 at 4–14 with D.I. 587, ex. 2 at ¶¶ 8–13)
of an ATM invention, because a person of ordinary skill would have understood that ATM and
IP ‘are inherently different protocols,’ where ‘ATM is connection oriented,’ and ‘IP on the other
hand, is a connectionless protocol.’” (D.I. 608 at ¶ 4 (citing D.I. 587, ex. 5 at ¶ 511)) As
discussed above in Section IV.A.2.b(iii), Dr. Almeroth did not express an opinion in this regard,
but his report included Section XV.C, which is entitled “The Asserted Patents Do Not Satisfy the
Written Description Requirement to the Extent the Asynchronous Communication System /
Packet Network Is Not an ATM Network[.]” (D.I. 587, ex. 5 at 312)
In this section, Dr. Almeroth combined quotes from the specification of the ‘932 patent
(Call Control) and the ‘429 patent (Broadband). (Id. at ¶ 509–10) The rest of this section
includes various extrinsic evidence, (id. at ¶¶ 511–14), as well as a rebuttal opinion to Dr.
Wicker, (id. at ¶ 515). As discussed earlier, the juxtaposition of the ‘932 patent (which is not
limited to ATM technologies) with text from the ‘429 patent (which is ostensibly limited to
ATM technologies and which incorporates by reference the specification common to the Call
Control Patents) is misleading and will most likely confuse a jury. Dr. Almeroth’s opinion in
this section is also based upon a claim construction that is contrary to the court’s, and therefore
should be excluded. Cf Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 n.2 (Fed.
(ii) “Establishing a communication path”
Section XV.B of Dr. Almeroth’s report is entitled, “The Asserted Patents Do Not Satisfy
the Written Description Requirement to the Extent the Processing System of the Claims Is
Incapable of Establishing a Communication Path[.]” (D.I. 587, ex. 5 at 305) As with Section
XV.C, the court is left guessing as to what Dr. Almeroth’s stated opinion was, because he did not
express or explain it. (Id. at ¶¶ 500-08) Instead, in this section, Dr. Almeroth opined that, in
“the Call Control and [Broadband] patents[,] . . . the CCP . . . establish[es] a communication path
through the network.” (Id. at ¶ 501) After citing various embodiments from the ‘932 patent (a
Call Control Patent), Dr. Almeroth summarized these embodiments as saying ‘[n]o matter how
the call path is established, it results from the decision made by the ‘processing system’ (the
CCP).”38 (Id. at ¶ 503) Elsewhere, Dr. Almeroth explained why “the entire call path” must be
selected by the CCP. (Id. at ¶ 504 (“the Asserted Patents only provide the proposed solution, if
the ultimate decision that determines the entire call path, is made by the CCP/CCM.”); ¶ 507
(“the processing system of the [Broadband] Patents establishes a path through the network.”);
¶ 508 (“Mr. Christie’s  conception documents . . . showed a call control model at center that
establishes the path from the originating point to the destination point.”))
Sprint argues that “Dr. Almeroth contends that the specification for the Call Control
Patents only discloses the processing system setting up an entire path for the communications. . .
[, which is an interpretation of the specification that] this [c]ourt has twice rejected[.]” (D.I. 587
at 19) Cox responds that “[w]hat Dr. Almeroth’s opinion explains, is that a person of skill would
understand that the ‘processing system’ to be critical to that process, i.e., that makes at least one
selection that will determine how the voice will flow[,]” and that paragraph 503 of the report,
which also quotes the specification, is an acknowledgement from Dr. Almeroth “that components
other than the processing system can be involved in the selecting the path the voice will take[.]”
(D.I. 608 at 14–15)
During claim construction, Cox argued extensively that the “processing system” (e.g., the
CCP) must select the entire call path. (D.I. 490 at 5–6 (limitations 2(a), 2(b)); D.I. 505 at 11–12)
The court rejected these constructions. (D.I. 541 passim) Cox identified the one statement
(paragraph 503) in which Dr. Almeroth parsed his language to potentially squeeze within the
boundaries of the court’s construction, but this does not overcome the fact that the rest of his
opinion directly contradicts the court’s claim construction. For this reason, his opinion shall be
excluded. Cf Liquid Dynamics Corp., 449 F.3d at 1224 n.2 (Fed. Cir. 2006).
This statement may fit within the boundaries of the court’s claim construction, but Dr. Almeroth’s report
lacks sufficient detail to determine whether this is, in fact, the case. (D.I. 587, ex. 5 at ¶ 503) Presumably, and the
court must speculate here, because Dr. Almeroth did not explain the logic of his argument, but Dr. Almeroth may
have reasoned that if, as required by the specification, “the CCP will always select at least one network
characteristic[,]” (‘932 patent, 7:28–29), then “[n]o matter how the call path is established, [the call path] results
from the decision made by the ‘processing system’ (the CCP)[,]” (D.I. 587, ex. 5 at ¶ 503). However, he did not
account for situations in which the CCP selects one network characteristic and the call path does not “result” from
the decision made by the CCP. (Id.)
b. Call Control Patents
(i) Signaling the multiplexer
In Section XV.A, paragraphs 490–499, of his 2017 report, Dr. Almeroth opined that
Sprint engaged in nonstatutory-type double patenting, (D.I. 587, ex. 5 at ¶ 493), and that “[i]f the
Call Control Patents are extended to allow messaging to the mux, Sprint effectively would have
been granted a second family of patents, filed a year later in time, that claim the same invention
as the Call Control Patents. That cannot be correct.” (Id. at ¶ 499) As with many of Cox’s
arguments in this regard, the facts do not seem to line up with Cox’s legal theory—for example,
the facts as presented, if true, appear to point to some form of terminal disclaimer for the
Broadband Patents. See generally § 804 MPEP (9th ed., Rev. 07.2015, Nov. 2015).
But Cox argues that Dr. Almeroth’s opinion supports invalidity for lack of written
description. (D.I. 608 at 14–15) Dr. Almeroth identified a number of reasons in his report.
First, “[t]he Call Control Patents teach away from signaling from the CCP to control the MUX.”
(D.I. 587, ex. 5 at ¶ 492) This is based upon a narrow reading of the specification that dismisses
a statement related to an alternative embodiment in which:
As long as the connections correspond through the mux, the CCP
can track the communication path properly. Alternatively, the
connections may not correspond. In that case, signaling links
between the muxes and the CCP would be required for the devices
to communicate and allow the CCP to track the communication
(‘052 patent, 10:37–42 (emphasis added)) Dr. Almeroth interpreted this statement to mean that
“the only messaging that may be passed between the MUX and CCP are to track connections the
MUX makes[,]” (D.I. 587, ex. 5 at ¶ 492). He did not explain what the “to communicate”
language means within the context of the embodiment discussed in Figure 3 of the Call Control
Instead of addressing the “to communicate language,” Cox avers that “Sprint’s own expert acknowledged
that the Call Control Patents teach ‘tracking,’ i.e., a passive action, rather than controlling the interworking
multiplexer.” (D.I. 633 at 8)
Sprint argues that the specification states that “signaling links between the muxes and the
CCP would be required for the devices to communicate,” and that “[c]onfronted with this
disclosure, Dr. Almeroth admitted that the inventor did, in fact, literally disclose “a signaling
link” between the MUX and CCP (even though a direct line was not included in the exemplary
Figure 3).” (D.I. 587 at 18–19 (citing id. at ¶ 36; ‘932 patent, 10:42-45)) Cox alleges that
“Sprint mischaracterizes Dr. Almeroth’s opinion[.]”(D.I. 608 at 14)
Dr. Almeroth’s deposition exposed additional issues not raised in his expert report—for
example, Dr. Almeroth qualified his opinion that Mr. Christie (the inventor) “calls it a signaling
link. But again, I think it’s clear that what he’s describing here is the functionality only of
tracking the communication path.” (D.I. 587, ex. 6 at 210:15–211:14) In his report, Dr.
Almeroth did not explain why he relied on a definition of “signaling link” that is limited to
“tracking the communication path,” (id., ex. 5 at ¶¶ 490–92), to the exclusion of specific
examples of “signaling links” in the specification, (‘932 patent, 10:50–57), as well as discussion
in relation to Figure 5 about signal formats, signal links, and the types of information (i.e.,
messages) transmitted over the signals, (id., 14:60–15:64).40 Based upon Dr. Almeroth’s
explanation, it is far from clear that the Call Control Patents “teach away” from signaling the
Second, Dr. Almeroth opined that further support for this alleged teaching away is claim
differentiation and double patenting. (D.I. 587, ex. 5 at ¶ 493) He explained that if the “device”
in claim 1 of the ‘052 patent (one of the Call Control Patents) “can be the interworking mux,
there is no non-obvious difference in the claims, and Sprint has engaged in double
The court notes that the Broadband Patents, which incorporate by reference the specification of the Call
Control Patents, are not limited to “tracking” over signaling links and explain that “[t]he term ‘link’ will be used to
refer to the transmission media used to carry signaling.” (‘429 patent, 3:32–33) An expert report should address
this consideration when deviating from the ordinary and customary meaning of terms in a patent specification.
Sprint also argues that Dr. Almeroth’s opinion in this section should be excluded, because “Dr. Almeroth
persists that an entire call path, including use of the MUX, results from decisions made by the processing system.”
(D.I. 620 at 8 (citing D.I. 587 at ¶ 37)) Sprint is referring to Dr. Almeroth’s deposition, with reference to the written
description opinion he rendered in Section XV.B of his 2017 report. In that deposition, the section cited by Sprint,
(D.I. 587, ex. 6 at 244:9–14), does not lead the court to a conclusion.
patenting.”42 (Id. (emphasis added)) Dr. Almeroth does not explain why “engaging in double
patenting” would lead a court to read a specification as “teaching away” from an embodiment
(i.e., the “signaling links . . . for the devices to communicate” embodiment at column 10, lines
40–41 of the ‘052 patent) disclosed in the specification. (Id.) Moreover, Dr. Almeroth does not
explain why the remedy would be narrowing the earlier-filed claims.43 (Id.)
Third, Dr. Almeroth explained that the “entire point of the [Broadband Patents] is the
addition [of] communications control by ‘providing virtual connections through the ATM
interworking multiplexer.’” (Id. at ¶ 494) He identified link 191 in Figure 1 of the specification
of the ‘429 patent (a Broadband Patent), which the text at column 4, lines 17–18 explains “could
be any links capable of transporting data messages[,]” and opined that “[s]uch signaling to the
ATM Interworking Multiplexer was missing from the Call Control Patents.” (Id. at ¶ 495) Dr.
Almeroth did not explain the basis for this opinion. (Id.)
Fourth, Dr. Almeroth explained that “during prosecution of the ‘084 patent [which is
one of the Broadband Patents45], the applicants distinguished the [Broadband Patents] on the
basis that they did not teach signaling to a switch, but rather, to an interworking unit.”46 (Id. at
¶ 496 (citing to footnote 270, which is blank in the report)) The file history of the ‘084 patent
contains no record of any such statement. (D.I. 388-1, ex. 2) During prosecution of the ‘084
patent, the examiner twice rejected claims in view of U.S. Patent No. 5,483,527 to Doshi, but
none of the office actions mention any of the patents-in-suit. (Id.) Moreover, the ‘084 patent is
Dr. Almeroth did not discuss the terminal disclaimers filed in the ‘084 and ‘064 patents. (D.I. 587, ex. 5;
‘064 patent, front page; ‘084 patent, front page)
In fact, the USPTO has a simple solution for obvious-type double patenting in commonly-owned
applications from the same inventor—a terminal disclaimer. § 804 MPEP (9th ed., Rev. 07.2015, Nov. 2015).
During prosecution, the USPTO issued a nonstatutory double patenting rejection in light of the ‘301
patent, of which the ‘084 patent is a continuation. (D.I. 388-1, ex.2, Aug. 15, 2000 Office Action) Applicant
responded by filing a terminal disclaimer. (Id., Nov. 29, 2000 Response to Office Action)
See supra Section I
In theory, were the facts in this argument true, it could support some form of prosecution history estoppel
as to claims of various Broadband Patents asserted under doctrine of equivalents. But this is an expert report on the
invalidity of the Call Control Patents for lack of written description, and Dr. Almeroth does not explain (nor does
Cox clarify) the legal theory behind this statement. (D.I. 587, ex. 5 at ¶ 496)
one of the Broadband Patents, so it makes no sense that applicant would seek to distinguish the
patent from other patents that share the same specification.47
Fifth, Dr. Almeroth relied on a document created by Mr. Christie to conclude that “[i]t is
clear . . . that  Mr. Christie had not conceived of an invention in which the processing system
signaled the mux in October 1993[.]” (D.I. 587, ex. 5 at ¶ 497) Then, based upon a statement by
Sprint that “the inventions in the [Broadband Patents] were conceived by [Mr.] Christie no later
than June 1994,” Dr. Almeroth concluded that Mr. Christie did not arrive at “the concept of
signaling to the interworking unit to control call setup . . . until June 1994 – [which was] after the
Call Control Patents were filed on May , 1994.” (Id. at ¶ 498 (emphasis in original)).
Dr. Almeroth did not explain why he interpreted “no later than June 1994” to mean a
point in time in the seven week period immediately following May 5, 1994. (Id.) Presumably,
this priority question would factor into an enablement or written description analysis under
section 112, but that degree of detail is missing from the report. (Id.) Moreover, in his report,
Dr. Almeroth did not address the fact that the Broadband Patents incorporate by reference (and
claim priority to) the Call Control Patents. (Id.) Nor did Dr. Almeroth address whether the
disclosure of the Call Control Patents could (or could not) enable claim 1 of the ‘429 patent.48
(Id.) Finally, Dr. Almeroth returned to his double patenting argument and explained that “[i]f the
Call Control Patents could provide control through [the] interworking mux, . . . this altogether
eliminates the purpose of the supposed invention of the [Broadband] Patents.” (Id. at ¶ 499)
Taken together, Dr. Almeroth’s opinion in Section XV.A of his 2017 report is not
helpful, is contrary to the law, and is likely to confuse a jury. His report lacks the level of detail
and research that usually accompany such reports. Specifically, Dr. Almeroth’s testimony is not
“based upon sufficient facts[,]” as is identified by his lack of investigation into the record, the
patents, and their file histories (his statement about the ‘084 file history is untrue). Dr.
Arguing as suggested could be a violation of the USPTO’s rules of conduct. See, e.g., 37 C.F.R. § 1.56.
This would seem to be a critical question—Dr. Almeroth’s opinion would be moot if this were the case,
because (if his other opinions were to hold true) a terminal disclaimer would be the remedy and not invalidity.
Almeroth’s testimony also makes assumptions about the dates of invention and does not present
facts to support his conclusions. Dr. Almeroth’s testimony is not “the product of reliable
principles and methods” in that, without explanation, he construes claim terms. Additionally, his
testimony improperly applies legal principles, such as those relating to claim construction,
prosecution history estoppel, and double patenting. In all, the court has no confidence that Dr.
Almeroth “has reliably applied the principles and methods to the facts of the case.” Fed. R.
Evid. 702(d). Dr. Almeroth’s testimony is likely to confuse a jury, and therefore, it must be
The testimony of Drs. Min and Almeroth is contrary to the court’s claim constructions.
The testimony of Dr. Almeroth is also likely to mislead and confuse a jury. For these reasons,
their testimony as to written description should be excluded.
C. Motion to Strike
Sprint’s reply brief included an Appendix A, entitled “Sprint’s Response to Cox’s
Statement of Facts (CSUF)[,]” which is a nine-page response to the statement of facts that Cox
presented in its answering brief. (D.I. 620, appx. A; D.I. 608 at ¶¶ 1–7) Also, in responding to
Cox’s separate motion for summary judgment of invalidity for lack of written description (a
motion that Cox introduced in its answering brief, and for which Sprint had presented no facts),
(D.I. 608 at 1), Sprint argued that Drs. Min and Almeroth “have no idea whether Cox’s
implementation of a VoIP network operates, on a limitation-by-limitation basis, substantially
similar to each element of the asserted claims.” (D.I. 620 at 9–10 (citing footnote 14)) In
footnote 14, Sprint details that “[a]s explained in Sprint’s opposition to Cox’s motion for
summary judgment of non-infringement (D.I. 611 at 11–22), which is incorporated herein by
reference, Dr. Wicker has done this analysis[.]” (D.I. 620 at 10 n.14)
Cox moved to strike this material, arguing that it “contain[s] additional pages of
substantive arguments in response to Cox’s statements of fact, as well as supplemental,
affirmative statements of fact, to circumvent the 10-page-limit on reply briefs imposed by Local
Rule 7.1.3(a)(4).”49 (D.I. 634 at 1) “In addition, Cox moves to strike as improper under Local Rule
7.1.3(a)(4) the arguments incorporated by reference into Sprint’s Written Description Reply. The net
effect of Sprint’s failure to adhere to the local rules is an effective doubling of the permitted brief
length.” (Id. (emphasis in original))
Delaware Local Rule 7.1.3(a)(4) relates to the length of reply briefs and states that “[n]o
opening or answering brief shall exceed 20 pages, and no reply brief shall exceed 10 pages, in
each instance exclusive of any table of contents or table of citations.” The undersigned’s
standing order states:
Except in extremely complicated cases, Judge Bataillon prefers
briefs that are less than 25 pages (exclusive of the section
numbering contested and uncontested issues). Examples of
complicated cases include patent and some securities cases.
Certain cases are generally not complicated, such as employment
discrimination, social security, basic contract and tort cases, nor do
most motions to dismiss or for summary judgment require briefs in
excess of 25 pages.
See Brief Preferences, http://www.ned.uscourts.gov/internetDocs/jpar/JFB-Briefs.pdf (last
accessed, Oct. 27 2017). Cox identifies a number of cases that supposedly relate to the remedy it
seeks. Of these, TQ Delta, LLC v. 2Wire, Inc., No. CV 13-1835-RGA, 2016 WL 5402180, (D.
Del. Sept. 26, 2016), addresses a situation where the court struck “five pages of unsworn
attorney argument about the technical scope of certain  patents.” TQ Delta, 2016 WL 5402180,
at *1 n.2. Cox does not explain how the facts in TQ Delta relate to those in the case at bar.
(D.I. 649 at 4)
Cox argues that it “has been disadvantaged by Sprint’s improper use of Appendices A to
expound its legal arguments.” (D.I. 634 at ¶ 7) Cox cites to a case relating to page limits in an
appellate briefing in which the D.C. Circuit explained that “page limits are important to maintain
judicial efficiency and ensure fairness to opposing parties.” Corson & Gruman Co. v. N.L.R.B.,
In its motion, Cox also moved to strike D.I. 621, appendix A, which was attached to Sprint’s reply brief
in relation to its motion of no anticipation by the Weinstein and Weinstein-Forgie references. (D.I. 621, appx. A;
D.I. 582). The court has already resolved this motion, (D.I. 657), therefore, the court denies the motion as moot.
899 F.2d 47, 50 n.4 (D.C. Cir. 1990). Having reviewed the Appendix A in question, the court
discerns no prejudice or disadvantage. Cox moved for summary judgment of invalidity for lack
of written description in its answering brief. (D.I. 608 at 1) In so doing, Cox first responded to
Sprint’s statement of facts, (id. at 1–5), and then presented its own statement of facts related to
its cross-motion, (id. at ¶¶1–7). Sprint’s materials in Appendix A further elucidate the dispute of
the parties, (D.I. 620, appx. A at 13–18), and present additional statements of fact in response to
Cox’s cross-motion, (id. at ¶¶ 1–10). Notwithstanding the pages addressing the contested issues,
as per the court’s Standing Order, the briefing pages have not exceeded the limit imposed by the
Delaware Local Rules. Therefore, Cox’s motion to strike is denied.
As to Sprint’s incorporation by reference of materials in D.I. 611 at 11–22, although Cox
has not explained why this is additional briefing, the brief (D.I. 611) is currently before the court
on a separate summary judgment motion. Moreover, the arguments and expert opinions relevant
to Cox’s motion for noninfringement, (D.I. 590), are also relevant to the motions on written
description, because Cox relies on many of the same factual assertions and legal theories (e.g.,
vitiation) in arguing a lack of written description. In light of the arguments presented in the case
at bar, citation to D.I. 611 at 11–22 is relevant. Incorporating these materials by reference would
technically increase the length of the brief beyond that allowed by the Delaware Local Rules.
And Sprint has not explained why citation to those materials is insufficient, and the “incorporate
by reference” language is necessary. Therefore, it is appropriate to strike the “which is
incorporated by reference” language from footnote 14 on page 10 of D.I. 620.
For the foregoing reasons, the court grants Sprint’s motion, (D.I. 582), denies Cox’s
motion, (D.I. 608), and grants-in-part and denies-in-part Cox’s motion, (D.I. 634).
An appropriate order shall issue.
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