Net Talk.Com, Inc. v. magicJack Vocaltec Ltd. et al

Filing 129

ORDER ON CLAIMS CONSTRUCTION. Signed by Judge Darrin P. Gayles on 12/1/2014. (hs01)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case Number: 12- 81022-CIV-GAYLES/TURNOFF
NETTALK.COM, INC., a Florida
corporation,
Plaintiff,
vs.
MAGICJACK VOCALTEC LTD., an
Israel limited partnership; MAGICJACK
LP, a Delaware limited partnership;
MAGICJACK HOLDINGS
CORPORATION f/k/a YMAX
HOLDINGS CORPORATION, a Delaware
corporation; and DANIEL BORISLOW, an
individual and citizen of the State of
Florida,
Defendants.
/
ORDER ON CLAIMS CONSTRUCTION
THIS CAUSE came before the Court on Plaintiff’s Opening Claim Construction
Brief [ECF No. 67], Defendants’ Opposition to Plaintiff’s Opening Claim Construction
Brief [ECF No. 71], and following an evidentiary Markman hearing held on Friday,
August 29, 2014.
BACKGROUND
This action involves a patent dispute over devices utilizing Voice over Internet
Protocol “(VoIP”) technology.

VoIP is an alternative to traditional landline-based

telephone service that allows people to make telephone calls over computer networks
such as the Internet. To use VoIP, a consumer must connect to the Internet through a
computer, a specialized home telephone, a cellular phone based application or a device

designed to connect traditional landline-based telephones to the internet. Plaintiff, Net
Talk.com, (“Plaintiff”) and Defendants magicJack Vocaltec Ltd. (“magicJack”),
Magicjack LP (“MJLP”), Magicjack Holdings Corporation (“MJ Holdings”) and Daniel
Borislow (collectively “Defendants”) both created devices to facilitate VoIP.

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purported similarities between these devices form the dispute in this action.
Plaintiff filed its Complaint on September 21, 2012, against Defendants asserting
infringement of U.S. Patent No. 8,243,722 B2 (the “722 B2 Patent”). Shortly thereafter,
the Court stayed the case pending the outcome of a then-pending ex parte reexamination
of the ‘722 B2 Patent’s claims by the United States Patent and Trademark Office
(“USPTO”). Upon reexamination, the USPTO rejected the ‘722 B2 Patent’s claims, but
allowed the Patent to reissue as amended. On February 27, 2014, the USPTO issued the
reexamination certificate, with the reissued Patent now listed as U.S. Patent No.
8,243,722 C1 (the “722 Patent”).
On February 5, 2014, the Court reopened the case, and Plaintiff filed an Amended
Complaint (DE 48).

Plaintiff alleges that Defendants infringe the ‘722 Patent by

designing, making, or causing to be made, offering to sell, and selling products that
embody and/or practice at least one of the claims of the ‘722 Patent, and that have no
substantial non-infringing use.
On June 24, 2014, Plaintiff filed its Opening Claim Construction Brief setting
forth disputed terms and language in the ‘722 Patent and asking the Court to construe
those terms. [ECF No. 67]. On July 8, 2014, Defendants filed their opposition brief.
[ECF No. 71]. After a reply and sur-reply, the Court held a Markman hearing on August
29, 2015, wherein the parties each presented a tutorial of VoIP technology and argument

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as to the disputed claim terms. By the time of the Markman hearing, the following claims
were in dispute:
1) Whether the language of the preamble limits the scope of the claims;
2) “Plug-in-play functionality;”
3) “Multiple separate and independent internet access connections;”
4) “the ATA to auto configure to use an internet access connection without a
computer connection;”
5) “Multi-port plug-in-play approach;”
6) “the ATA automatically detects a type of internet connection selected by the
user, which connection is automatically detected without a computer
connection;”
7) “Said modem;” and
8) “Memory source”
The parties agreed to the following claim constructions previously in dispute:
a) “the ATA auto configures to operate using the user selected internet
connection” to mean “the ATA automatically configures to use the userselected connection without requiring additional configuration by the user;”
b) “the ATA to auto configure to operate using an independent internet access
connection selected by the user;” to mean “the ATA automatically configures
to use the connection selected by the user and can be used without requiring
additional configuration by the user;”
c) The ATA to auto configure to use an internet access connection selected by
the user” to mean “the ATA automatically configures to use the connection

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selected by the user and can be used without requiring additional
configuration by the user;” and
d) “non-transitory storage medium” to mean “a storage medium that is enduring,
long-lived, or not temporary.”
CLAIM CONSTRUCTION PRINCIPLES
The determination of patent infringement is a two-step process. First, the Court
determines the scope and meaning of the claims as a matter of law. Markman v. Westview
Instruments, Inc., 517 U.S. 370, 387 (1996). Second, the construed claims are compared
to the accused device. Id. “Claim construction is a legal statement of the scope of the
patent right; it does not turn of witness credibility, but on the content of the patent
documents.” Lighting Ballast Control LLC v. Philips Electronics North America Corp.,
744 F.3d 1272, 1284 (Fed. Cir. 2014)(en banc).
“[T]he role of a district court in construing claims is . . . to give meaning to the
limitations actually contained in the claims, informed by the written description, the
prosecution history if in evidence, and any relevant extrinsic evidence.” American
Piledriving Equipment, Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed.Cir. 2011).
“Claim construction is a matter of resolution of disputed meanings and technical scope, to
clarify and when necessary to explain what the patentee covered by the claims, for use in
the determination of infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
1568 (Fed.Cir. 1997). A court only needs to construe claim terms “to the extent necessary
to resolve the controversy.” Wellman, Inc. v. Eastman Chemical Co., 642 F.3d 1355,
1361 (Fed.Cir. 2011) (citing Vivid Technologies, Inc. v. American Science &
Engineering, Inc., 200 F.3d 795, 803 (Fed.Cir. 1999).

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In patent cases, “the words of a claim are generally given their ordinary and
customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir. 2005) (en
banc) (internal quotation marks omitted).

To determine the meaning of a claim term,

“the court looks to those sources available to the public that show what a person of
ordinary skill in the art would have understood disputed claim language to mean.'” Id. at
1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111,
1116 (Fed.Cir. 2004)). Such “sources include ‘the words of the claims themselves, the
remainder of the specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of the art.’” Id.
When interpreting any asserted claim, “court[s] should look first to the intrinsic evidence
of record,” which encompasses “the patent itself, including the claims, the specification
and, if in evidence, the prosecution history.” Vitronics v. Conceptronic, Inc., 90 F.3d
1576, 1583 (Fed.Cir. 1996)(citing Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed.Cir. 1995)). Following this analysis of the intrinsic evidence, extrinsic evidence
may be considered only if necessary to determine the “‘meaning or scope of technical
terms in the claims.’” See id. (quoting Hormone Research Found., Inc. v. Genentech,
Inc., 904 F.2d 1558, 1562 (Fed.Cir. 1990)).
“In most situations, an analysis of the intrinsic evidence[, including the claims
themselves, the remainder of the specification, and the prosecution history,] [ ] will
resolve any ambiguity in a disputed claim term.” Vitronics, 90 F.3d at 1583. However,
there may be “instances in which intrinsic evidence is insufficient to enable the court to
determine the meaning of the asserted claims, and in those instances, extrinsic evidence...
may also properly be relied on to understand the technology and to construe the claims.”

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Id. at 1584 (citing Markman, 52 F.3d at 979). “Extrinsic evidence . . . may be helpful [to
ascertain the meaning of a claim term] but is ‘less significant than the intrinsic record in
determining the legally operative meaning of claim language.’” MBO Labs., Inc. v.
Becton, 474 F.3d 1323, 1329 (Fed.Cir. 2007)(quoting Phillips, 415 F.3d at 1317).
Extrinsic evidence is very broad and includes dictionaries, reference books on the topic of
the art, expert testimony, and “other material not part of the public record associated with
the patent.” Id. A court may only rely on extrinsic evidence when a claim term is
ambiguous and intrinsic evidence does not resolve the ambiguity. See Intel Corp. v. VIA
Techs., Inc., 319 F.3d 1357, 1367 (Fed.Cir. 2003) (emphasis in original) (“When an
analysis of intrinsic evidence resolves any ambiguity in a disputed claim term, it is
improper to rely on extrinsic evidence to contradict the meaning so ascertained.”).
CLAIMS AT ISSUE
I.

Preamble
The preambles of claims 1 and 3 each recite “a Voice over Internet Protocol

(VoIP) telephone system that enables VoIP telephony and facsimile services allowing a
user to gain access to telephone connectivity between an analog handset telephone and
the internet, said system having multiple separate and independent internet access
connections for connecting to the internet, each separate internet connection selectable by
the user.” Plaintiff asserts that the preambles of claims 1 and 3 do not limit the scope of
claims 1 and 3. Defendant disagrees and argues that to infringe claims 1 and 3, an
accused device must meet the limitations of the preambles of the claims.
A preamble is only limiting “if it recites essential structure or steps, or if it is
‘necessary to give life, meaning, and vitality’ to the claim.” Symantec Corp. v. Computer

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Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed.Cir. 2008)(quoting Catalina Mktg. Int’l, Inc.
v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.Cir. 2002)). A preamble might be
limiting if the prosecution history reflects clear reliance on it or if it is necessary to
provide antecedent basis for the body of the claim. Id. Otherwise, it is “generally is not
limiting.” Id.
The Court finds the preamble not limiting because (1) it does not recite essential
steps or structures, and (2) it is not necessary to give life, meaning and vitality to the
claim. See Symantec, 522 F.3d at 1288. Further, there is no evidence that the applicant
relied on the preambles in the prosecution history to distinguish its inventions from the
prior art. Id. Accordingly, the Court finds the preamble should not be used as a
limitation of the scope of claims 1 and 3.
II.

“Plug-in-Play Functionality”
The parties’ proposed constructions for “plug-in-play functionality” are as

follows:
Defendants:
automatically detecting
which internet networking interface is
being selected by a user and automatically
configuring itself so said networking
interface is the ATA’s connection to the
internet used by the ATA for placing and
receiving VoIP calls.

Plaintiff:
automatically detecting the
internet access connection selected by the
user and automatically configuring itself so
said connection is used by the ATA

In construing a patent, the Court must first rely on intrinsic evidence, including
the prosecution history.

See Vitronics, 90 F.3d at 1583.

This includes definitions

provided by the inventor. See, e.g., TecSec, Inc. v. IBM, 731 F.3d 1336, 1345-46
(Fed.Cir. 2013)
The prosecution history of the ‘722 patent includes the sworn declaration of
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Kenneth Hosfeld, an inventor of the ’722 patent.

In his declaration, Mr. Hosfeld

expressly defined plug-in-play as
[A]utomatically detects which networking interface is being selected by a
user and automatically configures itself so said interface is its connection
to the internet for placing and receiving VoIP calls.
See Ex. C to Defendant’s Response. The Patent Office relied on this definition to allow
the current claims. See Ex. G to Defendant Response at 1, 8-9. The Court relies on this
intrinsic evidence to construe the claim. Mr. Hosfeld’s definition is nearly identical to
Defendants’ proposed construction.

Accordingly, the Court construes “plug-in-play

functionality” using Defendants’ proposed definition.
III.

“Multiple separate and independent internet access connections”
The parties’ proposed constructions for “multiple separate and independent

internet access connections are as follows:
Defendants:
multiple separate and
independent internet access points in the
housing of the ATA used by the ATA to
place and receive VoIP calls.

Plaintiff: the ATA can be connected to the
Internet either directly or indirectly, with
the ability to use several means of
connective
to
establish
telephone
communications.

This term does not appear in the specification for the ‘722 patent. However, the
prosecution history does provide some guidance. During reexamination of the ‘722
patent, Plaintiff submitted the declaration of Mr. Papadopulous, in which he testified why
a different device -- prior art -- did not disclose the claimed invention:
while there may be several types of connection used with the Fritz!Box,
there is only one internet access point in the housing. Thus there are not
‘multiple separate and independent internet access connections’ as claimed
in claims 1-3 of the ‘722 Patent . . . For example, the USB port in the
Fritz!Box . . . it does not allow the Fritz!Box device to access the PC’s
internet connection to place a VoIP call, as is claimed in claims 1 and 3 of
the ‘722 Patent.
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Exhibit H to Defendants’ Response.
The Court finds this intrinsic evidence convincing.

Defendants’ proposed

construction closely comports with Mr. Papadopulous’ definition. Therefore, the Court
will construe “Multiple separate and independent internet access connections” using
Defendants’ proposed construction.

IV.

“the ATA to auto configure to use an internet access connection without a
computer connection”
The parties’ proposed constructions for “the ATA to auto configure to use an

internet access connection without a computer connection” are as follows:
Defendants:
the ATA automatically
configures to use the connection selected
by the user without requiring additional
configuration by the user and without the
need for any external software.

Plaintiff:
the ATA automatically
configures to use the connection selected
by the user without requiring additional
configuration by the user and without the
need for a computer connection.

The specification states that “the telephone function is auto configured and the
ATA will take the user configuration from the network.” ‘722 Patent, Col. 3, ln. 17-19.
In addition, Figures 5-8 of the specification illustrate that a computer connection is not
required for the ATA to auto configure to use an internet access connection. See also
‘722 Patent, col. 4, ln. 62-66 (“This allows the ATA 41 to access the Internet through the
modem 43 without a computer connection. The ATA 41 is able to utilize a direct
connection to the Internet through the ATA’s 41 NIC component, which is similar to the
NIC component found in computers.”). The Court finds Plaintiff’s proposed construction
comports with this language in the specification.
Defendants rely, in part, on an agenda item setting forth “issues to be discussed”
in Plaintiff’s request for an interview with the USPTO. Although that agenda item uses
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some of Defendants’ proposed language, the Court finds that it does not clearly define the
claim. Accordingly, the Court will adopt Plaintiff’s proposed construction for “the ATA
to auto configure to use an internet access connection without a computer connection.”
V.

“Multi-port plug-in-play approach”
The parties proposed constructions for “multi-port plug-in-play approach” are as

follows:
Plaintiff: the ATA can be connected to the
Internet either directly or indirectly, with
the ability to use several means of
connecting
to
establish
telephone
communications, the ATA automatically
configuring itself to use a selected
connection without requiring additional
configuration by the user.

Defendants: automatically detects which
one from the ATA’s multiple internet
access points is being selected by a user
and automatically configures itself so said
access point is the ATA’s connection to the
internet used by the ATA for placing and
receiving VoIP calls.

As detailed in Section II, Defendants’ proposed definition comports with the Mr.
Hosfeld’s definition for plug-in-play.

Plaintiff’s proposed definition attempts to

incorporate its proposed definition of “multiple separate and independent access points”
into its proposed definition of “multi-port plug-in-play.”

The Court, however, has

already rejected Plaintiff’s definition of “multiple separate independent access points.”
See supra Section III. Accordingly, the Court will adopt Defendants’ proposed definition
for “multi-port plug-in-play approach.”

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VI.

“the ATA automatically detects a type of internet connection selected by
the user, which connection is automatically detected without a computer
connection”
The parties’ proposed constructions are as follows:

Plaintiff: Plaintiff does not believe any Defendants:
The ATA’s processor
construction of this term is necessary.
automatically discovers which internet
connection from the multiple separate and
independent internet access connections
was selected by the user without being
connected to a computer.
The Court finds that this term is clear and does not need construction.
VII.

“Said modem”

The parties proposed constructions of “said modem” are as follows:
Plaintiff: a modem, router, modem/router Defendants: “said modem” refers to “a
combination, and/or a switch
modem” that appears in the reexamination
certificate on line 66 of claim 1 and line 66
of claim 3; otherwise, the term is indefinite.

The Court finds that Plaintiff’s construction of “said modem” is too broad and
that the Defendants’ construction clarifies the term. However, the Court finds that the
additional language “otherwise, the term is indefinite” is not necessary and only lends to
confusion. Accordingly, the Court construes “said modem” as follows: “’a modem’ that
appears in the reexamination certificate on line 66 of claim 1 and line 66 of claim 3.”
VIII. “Memory Source”
The parties’ proposed constructions are as follows:
Plaintiff: No construction necessary

Defendants: The term is indefinite

The Court agrees with Plaintiff that no construction is necessary for the term
“memory source.” A patent is invalid for indefiniteness if “its claims, read in light of the

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specification delineating the patent, and the prosecution hearing, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). Having considered the
testimony of both Plaintiff and Defendants’ experts, the Court gives greater weight to the
testimony of Plaintiff’s expert, Frank Koperda, based on his greater expertise in the
relevant field. Mr. Koperda opined that the term “memory source” is well known to
those of ordinary skill in the art.

As a result, the Court finds the term needs no

construction.
Based on the foregoing, it is
ORDERED AND ADJUDGED that the claims are construed as follows:
1) The preambles of claims 1 and 3 are not limiting;
2) “Plug-in-Play Functionality” is construed as, “automatically detecting which
internet networking interface is being selected by a user and automatically
configuring itself so said networking interface is the ATA’s connection to the
internet used by the ATA for placing and receiving VoIP calls.”
3) “Multiple separate and independent internet access connections” is construed
as, “multiple separate and independent internet access points in the housing of
the ATA by which the ATA makes an Internet connection and places and
receives VoIP calls.”
4) “the ATA to auto configure to use an internet access connection without a
computer connection” is construed as, “the ATA automatically configures to
use the connection selected by the user without requiring additional
configuration by the user and without the need for a computer connection.”

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5) “Multi-port plug-in-play approach” is construed as, “automatically detects
which one from the ATA’s multiple internet access points is being selected by
a user and automatically configures itself so said access point is the ATA’s
connection to the internet used by the ATA for placing and receiving VoIP
calls.”
6) “the ATA automatically detects a type of internet connection selected by the
user, which connection is automatically detected without a computer
connection” is clear and does not need construction.
7) “Said modem” is construed as, “”a modem’ that appears in the reexamination
certificate on line 66 of claim 1 and line 66 of claim 3.”
8) “Memory Source” needs no construction.
DONE AND ORDERED in Chambers at Miami, Florida, this 1st day of
December, 2014.

____________________________________
DARRIN P. GAYLES
UNITED STATES DISTRICT JUDGE

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