CallWave Communication LLC v. AT&T Mobility LLC et al.

Filing 224

MEMORANDUM OPINION providing claim construction for the disputed terms. Within five days the parties shall submit a proposed order consistent with this Memorandum Opinion suitable for submission to the jury. Signed by Judge Richard G. Andrews on 12/17/2014. Associated Cases: 1:12-cv-01701-RGA, 1:12-cv-01702-RGA, 1:12-cv-01703-RGA, 1:12-cv-01704-RGA, 1:12-cv-01788-RGA(nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CALL WA VE COMMUNICATIONS, LLC,
Plaintiff,
Civil Action No. 12-1701-RGA

v.
AT&T MOBILITY, LLC, et al.,
Defendants.
CALL WA VE COMMUNICATIONS, LLC,
Plaintiff,

v.

Civil Action No. 12-1702-RGA

SPRINT NEXTEL CORP., et al.,
Defendants.
CALL WAVE COMMUNICATIONS, LLC,
Plaintiff,
v.

Civil Action No. 12-1703-RGA

T-MOBILE USA INC., et al.,
Defendants.
CALLWAVE COMMUNICATIONS, LLC,
Plaintiff,
v.

Civil Action No. 12-1704-RGA

VERIZON SERVICES CORP., et al.,
Defendants.

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CALL WAVE COMMUNICATIONS, LLC,
Plaintiff,
Civil Action No. 12-1788-RGA

v.
AT&T MOBILITY, LLC, et al.,
Defendants.

MEMORANDUM OPINION
Edmond D. Johnson, Esq., James G. McMillan, III, Esq., PEPPER HAMILTON, LLP,
Wilmington, DE; William D. Belanger, Esq. (argued), Noah V. Malgeri, Esq., Leah R. McCoy,
Esq., Christopher Boundy, Esq., Supama Datta, Esq., PEPPER HAMILTON, LLP, Boston, MA;
Gregory S. Bishop, Esq. (argued), PEPPER HAMILTON, LLP, Redwood City, CA.
Attorneys for Plaintiff Call Wave Communications, LLC.
Jack B. Blumenfeld, Esq., Paul Saindon, Esq., MORRIS, NICHOLS, ARSHT & TUNNELL,
Wilmington, DE; James F. Hurst, Esq., George C. Lombardi, Esq. (argued), WINSTON &
STRAWN, Chicago, IL; Scott R. Samay, Esq. (argued), Krishnan Padmanabhan, Esq.,
WINSTON & STRAWN, New York, NY.
Attorneys for Defendant Google, Inc.
Arthur G. Connolly, III, Esq., Ryan P. Newell, Esq., CONNOLLY GALLAGHER LLP,
Wilmington, DE; Ramsey M. Al-Salam, Esq., Kaustuv M. Das, Esq., PERKINS COIE LLP,
Seattle, WA; Kirk R. Ruthenberg, Esq., Mark L. Hogge, Esq., DENTONS US LLP, Washington,
DC.
Attorneys for Defendant T-Mobile USA, Inc.
Karen Jacobs, Esq., Stephen J. Kraftschik, Esq., Eleanor G. Tennyson, Esq., MORRIS,
NICHOLS, ARSHT & TUNNELL, Wilmington, DE; Kirk R. Ruthenberg, Esq., Mark L. Hogge,
Esq., DENTONS US LLP, Washington, DC.
Attorneys for Defendants Sprint Spectrum L.P., et al.
Collins J. Seitz, Jr., Esq., Benjamin J. Schladweiler, Esq., SEITZ ROSS ARONSTAM &
MORITZ LLP, Wilmington, DE; Kevin P. Anderson, Esq., Karin A. Hessler, Esq., Paul M. Kim,
Esq., WILEY REIN LLP, Washington, DC.
Attorneys for Defendants Verizon Services Corp., et al.

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Collins J. Seitz, Jr., Esq., Benjamin J. Schladweiler, Esq., SEITZ ROSS ARONSTAM &
MORITZ LLP, Wilmington, DE; Joseph P. Zammit, Esq., Daniel S. Leventhal, Esq. (argued),
Brett McKean, Esq., FULBRIGHT & JAWORSKI LLP, New York, NY; Mark C. Nelson, Esq.,
Steven M. Geiszler, Esq., Daniel A. Valenzuela, Esq., DENTONS US LLP, Dallas, TX.
Attorneys for Defendant AT&T Mobility LLC.
Colm F. Connolly, Esq., Jody C. Barillare, Esq., MORGAN, LEWIS & BOCKIUS LLP,
Wilmington, DE; Eric Kraeutler, Esq., John V. Gorman, Esq. (argued), Andrew C. Whitney,
Esq., Squire J. Servance, Esq., MORGAN, LEWIS & BOCKIUS LLP, Philadelphia, PA.
Attorneys for Defendants Blackberry Corp., et al.

December!+-, 2014

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TruCT

Pending before the Court is the issue of claim construction for the disputed terms found
in U.S. Patent Nos. 6,771,970 ("the '970 patent") and 7,907,933 ("the '933 patent").

I.

BACKGROUND
On December 12 and 28, 2012, CallWave Communications, LLC ("CallWave") filed

these actions for patent infringement against Defendants, alleging infringement of the '970 and
'933 patents. (DJ. 1). 1 The Court has considered the parties' joint claim construction brief (D.I.
168), joint appendix (DJ. 170), and oral argument (D.I. 195).

II.

LEGALSTANDARD
"It is a bedrock principle of patent law that the claims of a patent define the invention to

which the patentee is entitled the right to exclude." Phillips v. AWHCorp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "' [T]here is no magic formula or
catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
weight to appropriate sources 'in light of the statutes and policies that inform patent law.'"

SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
415 F.3d at 1324). When construing patent claims, a matter oflaw, a court considers the literal
language of the claim, the patent specification, and the prosecution history. Markman v.

Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), ajf'd, 517 U.S. 370
(1996). Of these sources, "the specification is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term."

Phillips, 415 F.3d at 1315 (internal quotation marks and citations omitted).

1

All references to docket items use the numbering of the docket in case No. 12-1701.
4

"[T]he 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, i.e., as of the effective filing date of the patent application."
Phillips, 415 F.3d at 1312-13 (internal quotation marks and citations omitted). "[T]he ordinary

meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent."
Id at 1321 (internal quotation marks omitted). "In some cases, the ordinary meaning of claim

language as understood by a person of skill in the art may be readily apparent even to lay judges,
and claim construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words." Id at 1314 (internal citations omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises," in order to assist the court in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works. Id at 1317-19 (internal quotation
marks and citations omitted). Extrinsic evidence, however, is less reliable and less useful in
claim construction than the patent and its prosecution history. Id.
"A claim construction is persuasive, not because it follows a certain rule, but because it
defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa' per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would

exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'! Trade
Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).

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III.

CONSTRUCTION OF DISPUTED TERMS

A.

The '970 Patent
1.

"mobile platform"
a.

Cal/Wave 's proposed construction: No construction is necessary.

b.

Defendants 'proposed construction: Any mobile entity that can be

tracked or have a tracking device installed or attached (including, but not limited to a vehicle, a
person, a portable computer, or a mobile telephone).
c.

Court's construction: Any mobile entity that can be tracked or

have a tracking device installed or attached (for example, a vehicle, a person, a portable
computer, or a mobile telephone).
During oral argument, CallWave informed the Court that the parties had agreed to use
Defendants' construction for "mobile platform." (DJ. 195 at 7:10-11). CallWave originally
proposed this construction as an alternative in the parties' first joint claim construction chart
(D.I. 144, Ex. A at 1), and Defendants adopted this construction in the parties' joint claim
construction brief. (DJ. 168 at 17). The Court made one amendment to Defendants'
construction, changing "including, but not limited to" to "for example," for purposes of clarity.
Otherwise, Defendants' construction remains as the parties agreed.
2.

"remote tracking system" and "remote tracking service"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: A system [service] for determining the
location of one or more mobile platforms.

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b.

Defendants' proposed construction: A system physically separate

from the mobile platform being tracked that determines and returns the location of the mobile
platform.
c.

Court's construction: A system physically separate from the

mobile platform being tracked that determines the location of the mobile platform.
CallWave argues that no construction is necessary for this term, and in the alternative, for
"a system [service] for determining the location of one or more mobile platforms." (D.I. 168 at
19). The Federal Circuit has made clear that patent "claims are interpreted with an eye toward
giving effect to all terms in the claim," and "physical structures and characteristics specifically
described in a claim" should not be interpreted as "merely superfluous." Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Here, CallWave's construction reads out
the word "remote." Call Wave argues that the tracking unit should be interpreted as part of the
remote tracking system. (D.I. 195 at 13:18-14:2). The specification, however, does not support
this construction. The summary of the invention describes "a system for location tracking of
mobile platforms, each mobile platforms [sic] having a tracking unit; the system including ... a
plurality ofremote tracking systems." (D.I. 146, Ex.Tat 148, 2:2-14). The specification further
teaches that the remote tracking systems "determin[e] the location of the remote platform," while
"[t]he tracking unit ... transmits data via a wireless data transmission protocol ... to the
associated location tracking service provider." (Id. at 148, 2:15-16 & 149, 3:64-67). The
specification uses two distinct terms to describe the tracking units and remote tracking systems,
and teaches that the two components serve different functions within the invention. Thus, the
tracking units and remote tracking systems must be treated as distinct elements, and "remote"
must be given its plain and ordinary meaning in the context of the patent.

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The Court removed "and return" from Defendants' construction because it places an
improper limitation on the claim term. Claim 1 teaches that the remote tracking systems are
"adapted to determine the location of a respective mobile platform," and "the appropriate remote
tracking system receiving said mobile platform identity ... and returning mobile platform
location information." (Id. at 150, 6:60-63 & 151, 7:1--4). Claim 14, on the other hand, teaches
only "[a] method of determining the location of mobile platforms ... locatable by a plurality of
remote tracking systems." (Id. at 151, 7:57-59). The summary of the invention mirrors claim 1,
describing a system that includes "a plurality of remote tracking systems ... for determining the
location of the remote platform," and "the appropriate remote tracking system receiving said
mobile platform identity and returning mobile platform location information." (Id. at 148, 2: 1416 & 2:20-22). Although claim 1 includes the "appropriate" remote tracking system "returning"
the location information of a mobile platform, this limitation does not appear in claim 14. In
order to construe remote tracking system in light of the patent as a whole, the construction
cannot include a limitation that appears in one claim, but not another. Therefore, the Court
removes "and return" from Defendants' construction.
3.

"a property that is predetermined for each mobile platform"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: A property of a mobile platform determined

before a remote tracking system determines the location of the mobile platform.
b.

Defendants' proposed construction: A property of the mobile

platform fixed before the time the mobile platform can first be tracked that is used to determine
the remote tracking system by which the mobile platform will be tracked.

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c.

Court's construction: A property of a mobile platform determined

before a remote tracking system determines the location of the mobile platform.
During oral argument, the parties agreed that the relevant period for determining the
property is when a subscriber makes a search request through the system to locate a mobile
platform. (D.1. 195 at 43:13-15). Defendants contend, however, that the predetermined property
must be "fixed before the time the mobile platform can first be tracked." Defendants rely on the
specification, which teaches that the location determination system "determine[s] the appropriate
location tracking system (11-14) for the vehicle." (D.I. 146, Ex.Tat 149, 4:41--42). The
prosecution history also states that the invention determines "the appropriate remote tracking
system for the mobile entity which a user wishes to locate," and "allows multiple remote tracking
systems, each operating according to a respective and different protocol, to determine the
location of a mobile platform." (Id., Ex. Vat 172).
CallWave argues that nothing in the patent or its prosecution history requires the
predetermined property to be fixed. (D.1. 168 at 26). CallWave cites to the specification, which
teaches a method that includes "determining for each remote platform one of the remote tracking
systems that is capable oflocating said remote platform." (D.I. 146, Ex.Tat 149, 3:11-13). The
prosecution history states that "each of the remote tracking systems is adapted to determine the
location of a respective remote platform according to a property that is predetermined for each
mobile platform." (Id., Ex. Vat 173). The specification language implies that multiple remote
tracking systems may be "capable" of locating a mobile platform, and nothing in the intrinsic or
extrinsic record says that the predetermined property must be "fixed." Defendants' construction
adds a limitation that is not supported by the specification or prosecution history, and thus the
Court does not include this limitation in its construction.

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Additionally, Defendants' construction requires that the predetermined property be "used
to determine the remote tracking system." The claim language, however, teaches that the remote
tracking systems are "adapted to determine the location of a respective mobile platform
according to a property that is predetermined for each mobile platform for determining the
location of the mobile platform." (Id., Ex.Tat 150, 6:62-65). The specification also notes that
the remote tracking systems are used for "determining the location of the remote platform." (Id.
at 148, 2:15-16). It follows that Defendants' limitation is contrary to the claim language and the
specification, and the Court does not include it in the term's construction.
4.

"determining [determine] for each mobile platform one of the remote tracking

systems that is capable of locating said mobile platform"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Determining [determine] for each mobile

platform (as defined) one of the remote tracking systems (as defined) that is capable of locating
said mobile platform (as defined).
b.

Defendants' proposed construction: Determining [determine]

which one (and only one) of the remote tracking systems is appropriate for use to locate each
mobile platform.
c.

Court's construction: No construction is necessary.

The point of contention here is whether the word "one" should be construed as "one (and
only one)." (D.I. 195 at 47:8-11). Claim 1 requires the location determination system "to
determine an appropriate one of the plurality ofremote tracking systems," which contemplates
the existence of multiple remote tracking systems capable of locating a mobile platform. (Id. at
150, 6:66-151, 7:1). This language is consistent with claim 14, which describes a method that

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includes "determining for each mobile platform one of the remote tracking systems that is
capable oflocating said mobile platform." (Id at 151, 7:65-67). The specification teaches that a
communication system will "determine an appropriate one of the plurality of remote tracking
systems." (Id at 148, 2:17-19). The claims and specification refer to "an appropriate" remote
tracking system, rather than "the appropriate" remote tracking system, which suggests that more
than one remote tracking system may be capable of locating a mobile platform. Further, the
plain and ordinary meaning of the word "one" is contrary to Defendants' construction of "one
(and only one)."
Defendants cite language from the prosecution history stating that "the invention allows
multiple remote tracking systems, each operating according to a respective and different
protocol, to determine the location of a mobile platform and each being selected by the
communication system so that only one suitable remote tracking system is employed in a manner
that is wholly transparent to the end user." (Id., Ex. V at 172). Defendants rely on the language
"only one suitable remote tracking system," but the full sentence reads "so that only one suitable
remote tracking system is employed in a manner that is wholly transparent to the end user."
Reading the phrase in context does not imply that only one remote tracking system is capable of
locating a specific mobile platform. To the contrary, CallWave points to language in the
prosecution history that states, "[a prior art reference] ... discloses that device 12 [(i.e., mobile
platform)] includes circuitry standard to GPS locator devices and paging/cellular communication
devices." (Id., Ex. X at 194). Thus, the prosecution history contemplates the existence of
multiple technologies capable of locating a single mobile platform. Therefore, the Court does
not impose Defendants' added limitation on the claim term.

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5.

"transmitting [transmit] the location of each mobile platform to said subscriber"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Transmitting [transmit] the location (as
defined) of each mobile platform (as defined) to said subscriber (as defined).
b.

Defendants' proposed construction: Transmitting [transmit] the

location of the mobile platform, as received from the remote tracking system, to the subscriber.
c.

Court's construction: No construction is necessary.

During oral argument, Defendants wanted to "make clear that the location is determined
by the 'remote tracking system' and not some other part of the system." (D.I. 195 at 59:4-6).
For this reason, Defendants added the language "as received from the remote tracking system."
(Id. at 59:7-10). The Court finds that Defendants' added limitation causes more confusion than
clarity. That the remote tracking system is the thing from which the transmitting occurs is clear
from the claim. The term's plain and ordinary meaning would be apparent to a juror. Therefore,
no construction is necessary.
6.

"subscriber"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: User.
b.

Defendants' proposed construction: A user that can request the

location of a plurality of mobile platforms, from which the user is physically separate, through an
intermediary location system with which the user is registered.
c.

Court's construction: A person or company that subscribes to the

location determination services.

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During oral argument, the Court proposed the construction: "A person or company who
purchases the location determination services." (D.I. 195 at 9:8-11). CallWave's primary
objection to the Court's construction was to the use of the word "purchases." (Id at 60:11-12).
Call Wave argues that "purchases" is too narrow because the invention contemplates alternative
forms of payment, such as advertisement. (Id at 60:19-21). CallWave points to language in
claim 4, referring to "free advertising systems" as a source of location information. (D.I. 146,
Ex.Tat 151, 7:25-29). CallWave also argues that the plain meaning of the word "subscribe"
does not require payment, and thus is broader than purchases. (D.I. 195 at 60:13-16). For this
reason, CallWave proposed using "subscribes" instead of purchases. (Id. at 62:9-11).
Defendants, on the other hand, agreed with the use of purchases in the Court's construction. (Id
at 62:23-63:1). The Court finds, upon reflection, that CallWave is correct in arguing that
"purchases" is narrower than "subscribes," and thus uses the latter in the Court's construction.
7.

"plurality of remote tracking systems"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: More than one remote tracking systems (as

defined).
b.

Defendants' proposed construction: Multiple remote tracking

systems, each supervising a different group of mobile platform[ s].
c.

Court's construction: No construction is necessary.

The Court has already defined remote tracking systems, and thus the only word
remaining is "plurality." The Court proposed "two or more" for the construction of plurality
(D.I. 195 at 9:12-14), but the parties agree that no construction is necessary for this term. (Id at
72:4-7).

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8.

"map information"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Information relating to a map.

b.

Defendants' proposed construction: Data which represents a map

c.

Court's construction: No construction is necessary.

image.

Defendants argue that map information should be construed as "data which represents a
map image." Defendants attempt to redefine "map information" as "map image," which is not
supported by the specification or the plain meaning of the words. CallWave cites to the
specification, which provides that "[t]he location data received by a subscriber is normally an
HTML representation of the information requested ... [and] may be composed of, for example,
HTML and a GIF (image) component." (DJ. 146, Ex.Tat 150, 5:19-22). In addition, the
specification refers to other types of data that may be transmitted by the map and location data
servers such as location, traffic, road names, videos, and Yellow Pages information. (Id. at 150,
5:3-10). Thus, the specification contemplates different types of map information-not just
images. Recognizing that "map information" is a broad concept, the Court nevertheless finds no
reason to limit it. Therefore, the Court will not construe it, as a jury can understand its meaning.

B.

The '933 Patent

The parties agree that claim 13 is the only asserted independent claim in the '933 patent,
and the only claim containing disputed terms. (D.I. 195 at 78:6-9).
1.

"information ... related to a user's purchase request" and "the purchase request

information"

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a.

Cal!Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Information related to a user's request to
purchase, lease, or license a good or service.
b.

Defendants' proposed construction: Information ... specific to a

request made to purchase, lease, or license a selected good or service.
c.

Court's construction: Information related to a user's request to

purchase, lease, or license a selected good or service.
During oral argument, the parties agreed, or nearly agreed, to the Court's construction.
(DJ. 195 at 94: 17-95:5). There is no dispute over the meaning of the word "purchase" in the
term because the patentee defines "purchase" to include "a lease or licensing of a good or
service." (DJ. 145, Ex. A at 15, 3:34-35). The only point of contention is whether the word
"selected" should be included before "good or service." (DJ. 195 at 93:23-94:3). Defendants
argue that "selected" should be included because "purchase request information" should relate
only to the request to buy a good or service, and should not include account information
provided by the purchaser when signing up for the service. (Id at 87:15-18). CallWave, on the
other hand, argues that "selected" should not be included because the specification provides that
"[t]he message can include information related to the purchase price and an [Automatic Number
Identification] associated with a phone line of the user." (DJ. 145, Ex. A at 14, 2:4-6).
Additionally, the specification provides that the message can include "an account identifier, such
as a phone number, user identifier, password, or other identifier," and "the amount of the charge,
whether the charge is recurring, ... and the like." (Id at 15, 4:3-9).
CallWave argues that adding "selected" places an unnecessary limitation on the claim
language because the information accompanying the message, as disclosed in the specification,

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may not be related to a "selected good or service." The Court, however, finds that including
"selected" before "good or service" indicates that a purchase is actually taking place, and thus
better reflects the meaning of the claim term. The exact demarcation between "related" and
"unrelated" information is a question of applying the Court's construction to the facts, and is a
matter for trial. Therefore, the Court includes "selected" in the final construction.
2.

"causing at least in part an electronic communication to be originated from

a mobile device"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: At least partly causing an electronic
transmission to be transmitted from a mobile device.
b.

Defendants 'proposed construction: Transmitting instructions to a

mobile device that results in origination of an electronic communication from a mobile device.
c.

Court's construction: No construction is necessary.

The term "electronic communication" is defined in the section below. The remaining
words of the term are ordinary English words, and may be given their plain and ordinary
meaning. Defendants' proposed construction is narrower than that contemplated by the
specification, and reads out the phrase "at least in part." Therefore, the Court finds that no
construction is necessary.
3.

"electronic communication"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: An electronic transmission of information or

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instructions.
b.

Defendants' proposed construction: A telephone call.

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c.

Court's construction: A telephone call.

The issue here is whether "electronic communication" should be construed to be limited
to only a telephone call. CallWave argues that no construction is necessary because the "words
are plain English words that any juror would readily understand." (D.I. 195 at 97:7-8). Claim
13 teaches that the purchase request causes an "electronic communication to be originated from a
mobile device," which in light of the specification appears to be referring to a telephone call.
(D.I. 145, Ex. A at 18, 10:16-18). CallWave highlights that claim 1 refers specifically to "a
call," while claim 13 refers to an "electronic communication." (D.I. 168 at 70). Thus, CallWave
argues that "call" explicitly refers to a telephone call, while "electronic communication" includes
other forms of communication.
Defendants argue that claim differentiation does not save CallWave's construction in
light of the specification and prosecution history. "Any presumption created by the doctrine of
claim differentiation will be overcome by a contrary construction dictated by the written
description or prosecution history." Retractable Techs., Inc. v. Becton, Dickinson and Co., 653
F.3d 1296, 1305 (Fed. Cir. 2011). In addition, "[w]hen a patent ... describes the features of the
'present invention' as a whole, this description limits the scope of the invention." Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). "While clear language

characterizing 'the present invention' may limit the ordinary meaning of claim terms, such
language must be read in context of the entire specification and the prosecution history."
Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003). Here, Defendants

argue that the specification narrows the scope of the invention by stating that "[t]he present
invention is related to systems and methods for routing and placing telephone calls." (D.I. 145,
Ex. A at 14, 1:39-40). Defendants also argue that the prosecution history shows that the patent

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examiner understood the invention to operate by "causing a call to be placed from a mobile
device." (D.I. 146, Ex. Sat 139).
Call Wave argues that the specification contemplates methods of electronic
communication other than just telephone calls. In support of this proposition, CallWave cites a
passage that refers to signaling methods (e.g., ISDN, Advanced Intelligent Network ("AIN"),
and MF Inband Signaling), which are used to pass signal information along with a telephone call.
(D.I. 145, Ex. A at 15, 4:53-61). CallWave relies on the statement that "the invention is not
limited to these methods and contemplates other methods in which [Automatic Number
Identification] or similar signaling information can be passed." (Id. at 15, 4:59-61). This
language, however, refers only to methods for transmitting signal information in conjunction
with a telephone call. The preferred embodiment further explains that "the call manager system
delivers, over a signaling channel ... information identifying the origin of the call through a
service known as Automatic Number Identification (ANI), or using other types of signaling
information." (Id. at 15, 4:36-40). Thus, the specification makes clear that ANI and other
signaling channels are not distinct forms of electronic communication, but rather different
methods for passing signaling information. In light of the written description and prosecution
history, the scope of the invention is limited to telephone calls. Therefore, the Court construes
the term "electronic communication" accordingly.
4.

"over at least one network"
a.

Cal!Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Over one or more networks.
b.

Defendants' proposed construction: Over the network or networks

that interconnect the mobile device to the first destination.

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c.

Court's construction: No construction is necessary.

Defendants argue that the term "over at least one network" should be construed as "over
the network or networks that interconnect the mobile device to the first destination." Defendants
rely on the dictionary definition of the word "over" to argue that "the claim refers to the entire
electronic communication path, from one end (origin) to the other (endpoint)." (D.I. 168 at 77).
CallWave argues that Defendants' proposed construction changes the claim language from "over
at least one network" to "over the entire electronic communication path." (Id. at 78). Call Wave
notes that the specification "refers only to an origin, a destination and at least one network," and
makes no reference to an "electronic communication path." (Id.). Further, Call Wave argues that
the usage of "over" in the claim language and specification "is in complete accord with common
English usage." (Id. at 79). The specification teaches that "the call manager system ...
originates a call over trunk connection 22 to the Public Switched Telephone Network 20 to a
'900', '976' or other pay-per-call number." (D.I. 145, Ex. A at 15, 4:9-13). Thus, "the
specification uses the word 'over' to refer to a single network (trunk connection 22)," and not the
entire electronic communication path. (D.I. 168 at 79). The Court does not see support for
Defendants' proposed limitation, which is the equivalent of, "over all networks in the chain from
the mobile device to the first destination." The Court finds that the words in the term, including
"over," are ordinary English words that take on their plain and ordinary meaning. Therefore, no
construction is necessary.
5.

"first destination"
a.

Cal/Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: A place to which the electronic

communication is going.

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b.

Defendants' proposed construction: A pay-per-call number or

c.

Court's construction: A pay-per-call number or service.

service.

Having defined "electronic communication" as a telephone call, the Court defines the
first destination of that call as "a pay-per-call number or service." The specification teaches that
"embodiments of the present invention provide apparatus and methods for a system connected to
the PSTN to place an authorized call to a pay-per-call number such as a 900 or 976 number, or
the like, on behalf of a user to purchase a good or service." (D.I. 145, Ex. A at 14, 1:45-49).
Further, the specification teaches that "[t]he call manager system ... calls a pay-per-call service
via the call service phone line using the user ANI." (Id. at 14, 2:8-10). The specification
consistently refers to communications as "telephone calls" or "calls," and thus the patentee
makes clear that the invention is limited to electronic communication in the form of telephone
calls. The prosecution history also informs the construction of "first destination," teaching that
"the user is billed for the purchase request partly in response to the call placed to the pay-per-call
service as substantially described in independent claims 1 and 13." (D.I. 146, Ex.Sat 139).
Therefore, the specification and prosecution history demonstrate that the claimed invention
contemplated a pay-per-call number or service as the first destination of the electronic
communication. Thus, the Court construes the claim as such.
6.

"the user is billed for a purchase price associated with the purchase request

at least partly in response to the communication"
a.

Cal!Wave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: The communication at least partly causes the
user to be billed for a purchase price associated with the purchase request.

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b.

Defendants' proposed construction: The user is billed for a

purchase price associated with the purchase request in response to the electronic communication,
and not subsequent communications, from the mobile device.
c.

Court's construction: No construction is necessary.

The term uses ordinary English words, which may be given their plain and ordinary
meaning. Defendants' construction includes "and not subsequent communications," which
places an additional limitation on the claim language that is not supported by the specification.
A juror would not have trouble understanding the meaning of this term, and thus no construction
is necessary.
7.

"causing at least in part a charge for the purchase to be billed via a phone

bill"
a.

CallWave 's proposed construction: No construction is necessary.

If the Court determines construction is necessary: Having some effect upon a charge for the
purchase to be billed via a phone bill.
b.

Defendants' proposed construction: Billing the charge for the

user's purchase to the user's phone bill.
c.

Court's construction: No construction is necessary.

The term uses ordinary English words, which may be given their plain and ordinary
meaning. Defendants' construction transforms "causing" into "billing," which is not supported
by the specification. CallWave's alternative construction includes "having some effect upon a
charge," which is broader than the claim language permits. Therefore, the Court does not adopt
either construction, and applies the term's plain and ordinary meaning.

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IV.

CONCLUSION

Within five days the parties shall submit a proposed order consistent with this
Memorandum Opinion suitable for submission to the jury.

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