Selex Communications, Inc. v. Google, Inc.
Filing
121
OPINION and ORDER on Claims Construction regarding disputed claims in U. S. Patent No. 6,308,070. Signed by Judge Thomas W. Thrash, Jr on 4/8/2013. (ss)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
SELEX COMMUNICATIONS, INC.,
Plaintiff,
v.
CIVIL ACTION FILE
NO. 1:09-CV-2927-TWT
GOOGLE INC., et al.,
Defendants.
OPINION AND ORDER
Polonius: What do you read, my lord?
Hamlet: Words, words, words.
William Shakespeare, Hamlet, Act II, Scene 2.
This is a patent infringement action. It is before the Court for a Claims
Construction Order regarding the disputed claims in United States Patent No.
6,308,070.
I. Background
Selex Communications, Inc. (“Selex”) holds U.S. Patent No. 6,308,070 (the
“‘070 Patent”). (See Joint Appendix (“J.A.”), Ex. 1, (the “‘070 Patent,” at 1). The
Patent is entitled “Method and Apparatus of Minimizing Incurred Charges by the
Remote Origination of Telephone Calls.” (Id.) Selex filed the complaint on October
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21, 2009, against Google, Inc. (“Google”), alleging that Google was infringing the
‘070 Patent through its “Google Voice” telecommunications service. [See Doc. 1].
On February 9, 2010, this Court stayed the action pending reexamination of the ‘070
Patent. [See Doc. 29]. After the reexamination certificate was issued, the case was
reopened on August 11, 2011. [See Doc. 36]. The parties disagree as to the
construction of 15 claim terms in the ‘070 Patent.
II. Claims Construction Rules
The construction of claims in a patent case is a matter of law for the Court.
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). In construing patent
claims, the Court looks first to the intrinsic evidence. The intrinsic evidence consists
of the patent itself, the claim terms, the specification (or written description), and the
patent prosecution history, if in evidence. Microsoft Corp. v. Multi-Tech Sys., Inc.,
357 F.3d 1340, 1346 (Fed. Cir. 2004). However, not all intrinsic evidence is equal.
Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998). First
among intrinsic evidence is the claim language. Pitney Bowes, Inc. v. HewlettPackard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A “bedrock principle” of patent
law is that the claims of the patent define the patentee’s invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Thus, the Court’s focus must
“begin and remain centered on the language of the claims themselves, for it is that
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language that the patentee chose to use to particularly point out and distinctly claim
the subject matter which the patentee regards as his invention.” Gillette Co. v.
Energizer Holdings, Inc., 405 F.3d 1367, 1370 (Fed. Cir. 2005) (quoting Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001)); see also
Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (“The
written description part of the specification itself does not delimit the right to exclude.
That is the function and purpose of claims.”). When reading claim language, terms
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 at the time of the invention.
Phillips, 415 F.3d at 1313-14.
As a result, an objective baseline from which to begin claims construction is to
determine how a person of ordinary skill in the relevant art would understand the
terms. Phillips, 415 F.3d at 1313. Although “the claims of the patent, not its
specifications, measure the invention,” Smith v. Snow, 294 U.S. 1, 11 (1935), the
person of ordinary skill in the art is deemed to read the claim terms in the context of
the entire patent, including the specification, rather than solely in the context of the
particular claim in which the disputed term appears. Phillips, 415 F.3d at 1313. For
instance, the patentee may act as his own lexicographer and set forth a special
definition for a claim term. Id. at 1316.
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Claims are part of a “fully integrated written instrument” and, therefore, “must be read
in view of the specification, of which they are a part.” Phillips, 415 F.3d at 1315. In
fact, the specification is “the single best guide to the meaning of a disputed term” and
is often dispositive. Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). “It is therefore entirely appropriate for a court, when
conducting claim construction, to rely heavily on the written description for guidance
as to the meaning of the claims.” Phillips, 415 F.3d at 1317. Nevertheless, the Court
must be careful not to read a limitation into a claim from the specification. LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004). In particular, the
Court cannot limit the invention to the specific examples or preferred embodiments
found in the specification. Phillips, 415 F.3d at 1323; see also Resonate Inc. v. Alteon
Websystems, Inc., 338 F.3d 1360, 1364-65 (Fed. Cir. 2003) (“[A] particular
embodiment appearing in the written description may not be read into a claim when
the claim is broader than the embodiment.”). In addition to the specification, the
prosecution history may be used to determine if the patentee limited the scope of the
claims during the patent prosecution. Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1576 (Fed. Cir. 1995). The prosecution history helps to demonstrate how
the patentee and the Patent and Trademark Office (“PTO”) understood the patent.
Phillips, 415 F.3d at 1317. However, because the prosecution history represents the
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ongoing negotiations between the PTO and the patentee, rather than a final product,
it is not as useful as the specification for claim construction purposes. Id.
Extrinsic evidence – such as expert and inventor testimony, dictionaries, and
learned treatises – is only considered when the claim language remains genuinely
ambiguous after considering all of the patent’s intrinsic evidence. Tegal Corp. v.
Tokyo Electron America, Inc., 257 F.3d 1331, 1342 (Fed. Cir. 2001). Although less
reliable than the patent and prosecution history in determining construction of claim
terms, extrinsic evidence may be used to help the Court understand the technology or
educate itself about the invention. Phillips, 415 F.3d at 1317; Vitronics Corp., 90 F.3d
at 1584. In particular, because technical dictionaries collect accepted meanings for
terms in various scientific and technical fields, they can be useful in claim
construction by providing a better understanding of the underlying technology and the
way in which one skilled in the art might use the claim terms. Phillips, 415 F.3d at
1318. But extrinsic evidence, including dictionary definitions, cannot be used to vary
or contradict the terms of the patent claims. Tegal Corp., 257 F.3d at 1342; see also
Vitronics Corp., 90 F.3d at 1584 n.6 (courts are free to consult dictionaries “so long
as the dictionary definition does not contradict any definition found in or ascertained
by a reading of the patent documents”); Phillips, 415 F.3d at 1322-23.
III. Discussion
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A.
Remote Telephone Call Origination
The parties’ first dispute concerns the construction of the term “RTCO,” which
is found in asserted independent claims 7,1 14,2 123,3 and 1484 of the ‘070 Patent.
1
Claim 7 reads: A mobile telephone for use with a telephony network, for use
with a RTCO platform, and for use with a data messaging network configured to relay
messages to the RTCO platform, said mobile telephone comprising:
circuitry for connecting said mobile telephone to the telephony network;
an internal data messaging device for communicating with the data network;
a user input interface for initiating telephone calls, including for dialing
telephone calls; and
control means for monitoring a telephone number dialed by the user, for
determining if a telephone call should be placed using the RTCO platform, and
responsive to the dialing of certain telephone numbers for transmitting a RTCO
message from the internal data messaging device to the data network to initiate
an RTCO call from the RTCO platform.
2
Claim 14 reads: In a mobile telephone of the type for use with a telephony
network and having an internal data messaging device and a keypad for dialing a
telephone number, the improvement therein comprising that control means are
provided for monitoring the dialing of a telephone number by a user of the mobile
telephone, and for determining if telephone call should be placed using an RTCO
platform, and further that the internal data messaging device is operative for
communicating a message to a data messaging network for relaying the message to
the RTCO platform to complete the call using the RTCO platform without requiring
that the user dial any additional numbers.
3
Claim 123 reads: A mobile telephone for use with a telephony network, for use
with an RTCO platform, and for use with a data messaging network configured to
relay messages to the RTCO platform, said mobile telephone comprising:
circuitry for connecting said mobile telephone to the telephony network;
an internal data messaging device for communicating with the data network;
a user input interface for initialing [sic] telephone calls, including forwarding
telephone calls; and
control means for monitoring a telephone number dialed by a user, for
determining if a telephone call should be placed using the RTCO platform, and
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RTCO is an acronym for “Remote Telephone Call Origination.” Selex and Google
agree that neither “RTCO” nor “Remote Telephone Call Origination” were known
terms in the industry before the issuance of the ‘070 Patent. Selex proposes that the
terms be given what it contends are their plain meaning. Thus, it defines RTCO as
“facilitating the initiation of a demand for a voice communication external to the
mobile phone.” (Laster Decl. ¶ 29). Google contends that Laster, the inventor, acted
as a lexicographer and coined the term. Drawing from the specification of the ‘070
Patent, Google proposes that the term RTCO be construed as:
responsive to the dialing of certain telephone numbers for transmitting an
RTCO message from the internal data messaging device to the data network
to initiate an RTCO call from the RTCO platform;
wherein said control means is operative for comparing the telephone number
dialed by the user with a look-up table to determine if the telephone number
dialed should be placed directly or should instead be placed using the RTCO
platform.
4
Claim 148 reads: In a mobile telephone of the type for use with a telephony
network and having an internal data messaging device and a keypad for dialing a
telephone number, the improvement therein comprising that control means are
provided for monitoring the dialing of a telephone number, the improvement therein
comprising that control means are provided for monitoring the dialing of a telephone
number by a user of the mobile telephone, and for determining if a telephone call
should be placed using an RTCO platform, and further that the internal data
messaging device is operative for communicating a message to a data messaging
network for relaying the message to the RTCO platform to complete the call using the
RTCO platform without requiring that the user dial any additional numbers, wherein
said control means is operative for comparing the telephone number dialed by the user
with a look-up table to determine if the telephone number dialed should be placed
directly or should instead be placed using the RTCO platform.
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a specific callback scheme whereby: (1) in response to the dialing of a
telephone number by a user of a mobile telephone, the mobile telephone
sends a data message to a platform; (2) that platform places a first
telephone call to the mobile telephone number and places a second
telephone call to the dialed telephone number; and (3) the platform
connects the two telephone calls together.
(‘070 Patent, Col. 2 ll. 45-67).
Selex contends that Google improperly relies on the specification instead of the
claim language because Laster did not disavow certain meanings or act as his own
lexicographer in the ‘070 Patent. Google, however, contends that the descriptions of
the invention in the abstract and in the preferred embodiment, as well as the use of
“RTCO” throughout the claims, necessarily limit the definition of RTCO. (See,
e.g., ‘070 Patent Abstract (“The mobile telephone analyzes each number dialed to
determine whether to utilize the RTCO platform or to dial normally. If RTCO is
utilized, the mobile telephone transmits a data message with instructions for setting
up the call. The RTCO platform then makes the call to the mobile phone and bridges
this to a second call made to the dialed party.”).
The Court concludes that Google’s construction is more appropriate. The claim
language itself, which Selex purports to rely on, does not reveal a cogent claim term
but rather a made-up term used throughout the claims. Selex attempts to bolster the
plain language definition it proposes by referring to its expert, the inventor under the
‘070 Patent. (See Laster Decl. ¶ 29 (“From the perspective of one of ordinary skill in
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the art, Remote Telephone Call Origination means ‘facilitating the initiation of a
demand for voice communication external to the mobile phone.’”)). But expert
testimony is subordinate to the claim language and to the specification during the
claims construction process. See Phillips, 415 F.3d at 1317. Here, the claim language
and the specification reveal a consistent definition of “Remote Telephone Call
Origination” which does not require consulting extrinsic evidence. In unasserted
claim 1, the method calls for a relay of the data message to the data network, followed
by “placing a first call from the RTCO platform to the mobile telephone; and placing
a second call from the RTCO platform to the number dialed in a manner to connect
the first and second calls to each other.” (‘070 Patent, Col. 9 ll. 5-25). In asserted
claim 7, the apparatus includes control means “for transmitting a RTCO message from
the internal data messaging device to the data network to initiate an RTCO call from
the RTCO platform.” (Id. Col. 9 ll. 41-58). These independent claims are utilizing
a consistent definition of RTCO that is more specific than the plain meaning
construction proposed by Selex because the definition involves the RTCO actually
initiating voice connections.
Indeed, if the RTCO merely facilitated voice
connections, it would not also be capable of placing two calls and bridging them or
receiving and reacting to data messages. Instead, throughout the claims and the
specification, the term RTCO is referenced as a technique or scheme integral to the
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invention rather than a mere facilitation of a voice connection. (See, e.g., ‘070 Patent
Title, Abstract, Col. 2 ll. 45-52, Col. 3 ll. 25-39, Col. 4 ll. 1-14, Col. 9 ll. 42-58); see
Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“a claim term
should be construed consistently with its appearance in other places in the same claim
or in other claims of the same patent.”). Accordingly, the Court construes the term
“Remote Telephone Call Origination” as “a method or apparatus whereby a remote
location is utilized to originate a call to the mobile telephone that initiated a call and
to originate a call to a desired destination and then to connect the two calls in order
to achieve cost savings due to differing long distance telephone rates.”
This definition is consistent with the state of the prior art in 1999, when the
Patent was issued. The specification recognizes that callback schemes existed before
the Patent was applied for on February 4, 1999. See ‘070 Patent Cols. 1-2 ll. 35-43
(“Callback services have the potential of saving up to 50% or more on international
long distance calls. However, known callback services have been difficult for a
customer to use. ... What is needed then is a method and apparatus that allows the
customer to enjoy the cost-savings and benefits of a callback service without the
difficult and time-consuming effort needed to initiate a callback session. It is to the
provision of such a method and apparatus that the present invention is primarily
directed.”); id. Col. 4, ll. 1-14 (“Thus, the user never has to first dial a callback
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platform and then call his destination number. This is much simpler, easier to use, and
faster than known callback schemes.”). Although the specification language is not the
ultimate guidepost for construing claim language, the Patent must indicate how the
invention is distinct from prior art. “The statutory requirement of particularity and
distinctness in claims is met only when the claims clearly distinguish what is claimed
from what went before in the art and clearly circumscribe what is foreclosed from
future enterprise.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (quoting United Carbon Co. v. Binney & Smith Co., 317 U.S. 228,
236 (1942) (internal alterations omitted)). Here, the claims themselves do not indicate
how the RTCO scheme is distinct from the prior art, so the Court must rely on the
distinction provided in the specification. According to the specification, the RTCO
is an improvement on existing callback schemes. (See, e.g., ‘070 Patent Abstract; id.
Cols. 1-2 ll. 35-43; Col. 4 ll. 1-14).
The above construction of RTCO thus
incorporates the state of the prior art. Selex has not identified any technology existing
at the time which would support the broader construction of RTCO which it proposes,
i.e., without a callback component.
There are three disputed claim terms stemming from the definition of RTCO
which can be clarified using the construed definition of RTCO and the plain meaning
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of the terms “platform,” “message,” and “call.”5 Based on its usage in the claims, the
RTCO platform is “hardware and software in a remote location that is programmed
to originate calls to a mobile telephone and to a desired destination.” The term
“RTCO” message must be construed as “a data message sent by a mobile telephone
to the RTCO platform containing information and instructions for the RTCO platform
to originate calls to the mobile telephone and to the destination in order to achieve cost
savings.” Likewise, the final disputed term with respect to RTCO follows the plain
meaning. An “RTCO call” refers to “a voice connection involving the RTCO method
or apparatus.”
B.
The ‘070 Patent’s Means-Plus-Function Claims
The parties dispute the construction of three broad means-plus-function claims
and five narrower means-plus-function claims. Means-plus-function claim limitations
must satisfy the requirements of 35 U.S.C. § 112 ¶ 6. Noah Sys., Inc. v. Intuit Inc.,
675 F.3d 1302, 1311 (Fed. Cir. 2012) (citing S3 Inc. v. nVIDIA Corp., 259 F.3d 1364,
1367 (Fed. Cir. 2001)). There are two steps in construing a means-plus-function
claim. “First, the court must determine the claimed function. Second, the court must
identify the corresponding structure in the written description of the patent that
5
The term “RTCO Platform” appears in claims 7, 14, 123, and 148. The terms
“RTCO Message” and “RTCO Call” appear in claims 7 and 123.
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performs the function.” Id. (citing Applied Med. Res. Corp. v. United States Surgical
Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (internal quotation marks omitted). “A
structure disclosed in the specification qualifies as ‘corresponding structure’ if the
specification or the prosecution history ‘clearly links or associates that structure to the
function recited in the claim.’” Id. (quoting B. Braun Med. Inc. v. Abbott
Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997)). In patents such as the ‘070
Patent, where the means-plus-functions are implemented by a computer, the Federal
Circuit requires “that the structure disclosed in the specification be more than simply
a general purpose computer or microprocessor.” Id. at 1312 (quoting Aristocrat
Techs. Austl. Pty Ltd. v. International Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
2008)). The specification must “disclose an algorithm for performing the claimed
function.” Id. (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008)). “Simply disclosing software, [] without providing some detail
about the means to accomplish the function, is not enough.” Id. (quoting Finisar Corp.
v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). However, the accused
infringer must show by clear and convincing evidence that a claim term is indefinite.
Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
1.
Control Means for Monitoring a Telephone Number Dialed by a
User
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The parties dispute the construction of “control means for monitoring a
telephone number dialed by a user.”6 The parties agree this is a means-plus-function
clause governed by 35 U.S.C. § 112 ¶ 6. Google contends that the specification of the
‘070 Patent does not disclose sufficient information for a person having ordinary skill
in the art to determine the corresponding structure for the “monitoring” function.
Selex argues that the specification does disclose the corresponding structure for the
monitoring function and that monitoring the number dialed by the user of a cell phone
is such a widespread function that only a minimal amount of structure needs to be
disclosed.7
6
This claim language appears in claims 7, 11, 14, 18, 42, 65, 123, 132, 148, and
157.
7
The parties dispute the proper definition of a person having ordinary skill in
the art for the ‘070 Patent. Selex proposes that the relevant person having ordinary
skill in the art is “someone with a bachelor of electrical engineering or computer
science or equivalent, and three to five years of experience in mobile
telecommunications, particularly in call signaling and the various methods of enabling
or enacting call control.” (See Selex Response Ex. A ¶ 6). Google proposes “a person
with a bachelor’s degree in electrical engineering (or electrical and computer
engineering) and at least three years of experience with wireless communication
systems.” (Madisetti Decl. ¶ 20). Because the term “mobile telecommunications” is
narrower and encompasses the sophistication and education necessary for
understanding the mobile apparatus in the ‘070 Patent, the Court will adopt Selex’s
definition of a person having ordinary skill in the art. See Daiichi Sankyo Co., Ltd.
v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (discussing factors to consider
when defining a person of ordinary skill in the art).
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According to Selex, the algorithm is taught in Figure 2 (boxes 31 and 32),
column 5, lines 39-47, and through the example of using the SIM Toolkit Application
described at column 8, lines 19-23. These disclosures are insufficient to teach an
algorithm for the claimed function. Boxes 31 and 32 of Figure 2 are simply boxes that
state “capture # dialed” and “evaluate telephone number dialed.” These are “black
boxes” that simply restate the function and are insufficient to disclose an algorithm.
See ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012) (noting
that, within a figure, the “black box” that represented the purchase-order-generation
function by simply stating “purchase orders” did not describe corresponding structure
for the purchase-order-generation function). The discussion of Figure 2 in column 5
merely walks through the figure and provides no additional detail.
Selex’s expert also asserts that programming SIM cards using the Toolkit
Application was a well-known technique at the time of the invention and that a person
of ordinary skill in the art would be able to use the Toolkit to complete the monitoring
function. (See Laster Decl. ¶ 51; Laster Dep. at 117, ll. 6-11).8 The specification
8
Laster, in his declaration and deposition, points to the Global System for
Mobile Communications (GSM) manual at sections 4.5 and 9 as further structure to
correspond with the monitoring function. (See Laster Dep. Ex. 1, at 12, 50). These
section numbers were not listed in the specification. And, more importantly, the
sections just describe another method for performing the monitoring function. When
there are multiple methods for completing a computer function, the specification is
required to identify a specific method. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d
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discusses the SIM Toolkit Application at Col. 8, lines 19-23. Selex argues that the
disclosure of the SIM Toolkit Application structure is analogous to the disclosure of
the “DDE Protocol” in AllVoice Computing PCL v. Nuance Communications, Inc.,
504 F.3d 1236 (Fed. Cir. 2007), which the court there construed as definite. In
AllVoice, the invention at issue was a speech-recognition interface that allowed users
to utilize speech-recognition software with a variety of end-user applications on a
personal computer. The claim at issue provided “output means for outputting the
recognised words into at least any one of the plurality of different computer-related
applications to allow processing of the recognised words as input text.” Id. at 1238.
The corresponding structure for the means-plus-function clause in the specification
referred to a flow chart and stated: “The speech recognition interface application 12
receives the recognised word at the head of the alternative list shown in FIG. 3 and
outputs the word using the dynamic data exchange (“DDE”) protocol in the Windows
operating system.” Id. at 1241. This language was supported by expert testimony
stating that a “skilled artisan reading the specification would recognize that numerous
applications support the DDE transfer protocol and that preparing the software
instruction to transfer recognized words ... would be a trivial matter well within the
1302, 1317 (Fed. Cir. 2012) (citing Blackboard, 574 F.3d at 1385) (“That various
methods might exist to perform a function is ‘precisely why’ the disclosure of specific
programming is required.”).
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reach of a person of ordinary skill in the art.” Id. at 1242. The court concluded the
reference to DDE was a corresponding structure to the “output means” claim
sufficient to avoid indefiniteness. Id.
Here, the specification is much less precise in describing the structure
corresponding to the monitoring function. Indeed, it describes none. In discussing
the flow chart that restates the function, the specification of the ‘070 Patent does not
direct the use of the SIM Toolkit Application. With respect to boxes 31 and 32 of
Figure 2, which Selex cites as corresponding structure, the specification states:
The process 30 [the entirety of Figure 2] includes an initial step 31 of
capturing a telephone number dialed by the user of the mobile telephone
10. Next, in step 32 the captured telephone number is evaluated to
determine if it would be better to allow the number to be dialed directly
or to employ an RTCO platform to dial the telephone number.
(‘070 Patent Col. 5 ll. 42-48). As noted above, boxes 31 and 32 merely restate the
function they represent and do not constitute structure. Unlike in AllVoice, where the
specification directed the use of the DDE protocol when discussing the associated
figure, the ‘070 Patent specification does not discuss the SIM Toolkit Application in
relation to Figure 2 but rather later in the specification and in a general sense. The
patent states: “As those skilled in the art can appreciate, RTCO can be used by a GSM
mobile phone with the SIM card (a Subscriber Identify Module) serving as the control
module and a SIM Toolkit Application comprising the software in the control
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module.” (‘070 Patent Col. 8 ll. 19-26). Although one with ordinary skill in the art
could use the SIM Toolkit Application to execute the function, the invention does not
mandate the use of the SIM Toolkit as the invention mandated the use of the “DDE
protocol” in AllVoice. Instead, the ‘070 Patent offers the SIM Toolkit Application as
one of several methods for implementing the RTCO scheme. (See ‘070 Patent Col.
8 ll. 27-43 (noting that IS-41 mobile phones or PC connected to landline phones could
implement the RTCO scheme)). However, in a means-plus-function claim, the fact
“[t]hat various methods might exist to perform a function is ‘precisely why’ the
disclosure of specific programming is required.” Noah Sys., Inc. v. Intuit Inc., 675
F.3d 1302, 1317 (Fed. Cir. 2012) (citing Blackboard, 574 F.3d at 1385) (“The
disclosure must identify the method for performing the function, whether or not a
skilled artisan might otherwise be able to glean such a method from other sources or
from his own understanding.”). Accordingly, AllVoice does not assist Selex because
the specification in the patent at issue in AllVoice disclosed a precise structure for
executing the claimed function whereas the ‘070 Patent broadly discloses several
structures that could support the claimed function but does not disclose the required
specific algorithm.
Selex further argues that the disclosure of general corresponding structure is
sufficient because all cell phones necessarily have a monitoring function in order to
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complete calls over a telephony network. But, as noted, in a means-plus-function
claim, “the disclosure must identify the method for performing the function, whether
or not a skilled artisan might otherwise be able to glean such a method from other
sources or from his own understanding.” Noah, 675 F.3d at 1317 (citing Blackboard,
574 F.3d at 1385) (internal alterations omitted). Even though Selex argues that the
function of monitoring the number dialed on a mobile is so widespread that a person
having ordinary skill in the art could choose from a number of methods to achieve the
desired function, the fact “[t]hat various methods might exist to perform a function is
‘precisely why’ the disclosure of specific programming is required.” Id. (citing
Blackboard, 574 F.3d at 1385). Accordingly, Selex’s “efforts to find structure ... in
the common ken of a skilled [mobile telecommunications] artisan does not allow it to
avoid providing the specificity as to structure required by § 112 ¶ 6.” Id. (quoting
Blackboard, 574 F.3d at 1385) (internal alterations omitted). Because the ‘070 Patent
does not disclose specific corresponding structure in the specification for a person
having ordinary skill in the art to determine the specific algorithm by which the dialed
number is monitored, the claim language “control means for monitoring a telephone
number dialed by a user” is indefinite.
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2.
Control Means for transmitting [or communicating] a RTCO
message from the internal data messaging device to the data
network to initiate an RTCO call from the RTCO platform9
The parties agree that this claim term is a means-plus-function claim under §
112 ¶ 6. Google argues that the “communicating” function is indefinite because the
‘070 Patent does not disclose a sufficient algorithm for a person having ordinary skill
in the art to ascertain the preferred function. Selex argues the specification does
disclose specific structure via the algorithm described in box 12 of Figure 1, box 36
in Figure 2, and the specification text at column 8, lines 19-43. Further, Selex argues,
the specification provides examples of several phones with data messaging capability
that could be programmed to carry out the transmitting function. (See ‘070 Patent,
Col. 8 ll. 23-34). According to Selex, these disclosures are sufficient for a person
having ordinary skill in the art to understand the structure the ‘070 Patent teaches for
the function.
Selex’s arguments fail for the same reasons they fail with respect to the
“monitoring” means-plus-function claim. First, the control module in Figure 1 and
9
This claim language comes from independent claims 7, 123, 14, and 148. In
claims 7 and 123 the passages state “control means... for transmitting a RTCO
message from the internal data messaging device to the data network to initiate an
RTCO call from the RTCO platform.” (‘070 Patent, Col. 9 ll. 42-58). In claims 14
and 148 the passages state “control means... for communicating a message to the
RTCO platform to complete the call using the RTCO platform.” (‘070 Patent, Col.
10 ll. 17-28).
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box 36 in Figure 2 do not disclose structure. In Figure 1, box 12 simply states
“control module.” And in Figure 2, box 36 simply states “pass data message to data
messaging network.” As with the “monitoring” function, the disclosures of structure
that simply restate the function do not establish structure. See ePlus, 700 F.3d at 518
(noting that, within a figure, the “black box” that represented the purchase-ordergeneration function by simply stating “purchase orders” did not describe
corresponding structure for the purchase-order-generation function). Second, even
when there are multiple known methods for carrying out a function, the fact “[t]hat
various methods might exist to perform a function is ‘precisely why’ the disclosure
of specific programming is required.” Noah, 675 F.3d at 1317 (citing Blackboard, 574
F.3d at 1385) (internal alterations omitted); ePlus, 700 F.3d at 519 (“The
indefiniteness inquiry is concerned with whether the bounds of the invention are
sufficiently demarcated, not with whether one of ordinary skill in the art may find a
way to practice the invention.”). The specification’s failure to identify a specific
algorithm to serve as corresponding structure to carry out the communicating or
transmitting function renders the “communicating” claim term indefinite.
3.
Control means for determining if a telephone call should be placed
using the RTCO platform10
10
This claim language appears in terms 7, 14, 123, and 148.
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The parties agree that this claim term is a means-plus-function. Selex argues
that the corresponding structure is found in control module 12 of Figure 1, the
algorithm relayed in Figure 2, box 33, and the text found in column 6, lines 39-55.
Selex further states that the structure includes the “look-up table,” which illustrates
how the function can analyze a set list of numbers to determine whether the call
should be placed using the RTCO platform. (See ‘070 Patent, Col. 6 ll. 42-45 (“This
decision making can be carried out in the context of look-up tables which are used to
store logical values from which it can be deduced whether the call involves high
charges.”)).
Google argues that the ‘070 Patent teaches a more limited structure. Google
states that the only algorithm disclosed is the three-tiered cost-based logic found in
Figure 3 and at column 6, lines 14-45. This disclosed structure directs the control
module to determine if a call should be placed using the RTCO scheme by assessing
(1) whether higher long distance charges apply; (2) whether higher roaming charges
apply; and then (3) whether higher local charges apply. (‘070 Patent, Fig. 3). Google
argues that the look-up table disclosed is the only implementation of the algorithm for
the “determining” function.
Here, the three-tiered logic in Figure 3 along with the look-up table is the only
algorithm disclosed in the ‘070 Patent as corresponding structure for the
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“determining” function. As noted above, the control module described in box 12 of
Figure 1 is only a black box that restates the described function and cannot be
considered corresponding structure. See ePlus, 700 F.3d at 518 (noting that, within
a figure, the “black box” that represented the purchase-order-generation function by
simply stating “purchase orders” did not describe corresponding structure for the
purchase-order-generation function). The only adequate structure disclosed is the
three-tiered flow chart in Figure 3 which outlines the three-step process by which the
control module will determine whether a call should be placed directly or indirectly
based on the specified considerations. This structure, however, does not disclose a
concrete algorithm unless it is viewed in conjunction with the look-up table contained
in the specification. The look-up table is a reference point for the control module to
assess whether the destination phone number faces higher long distance charges,
higher roaming charges, or higher local charges. Without the look-up table, a person
having ordinary skill in the art will not be able to discern the parameters of the
invention, regardless of whether they are able to reproduce the art. ePlus, 700 F.3d
at 519 (“The indefiniteness inquiry is concerned with whether the bounds of the
invention are sufficiently demarcated, not with whether one of ordinary skill in the art
may find a way to practice the invention.”). Even accepting Selex’s argument that the
SIM Toolkit and various GSM guidelines could be used by a person having ordinary
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skill in the art to establish a determining function, the disclosure of the Toolkit and
GSM guidelines is insufficient. As noted with the indefinite “transmitting” and
“monitoring” functions, the fact that there are multiple methods to complete a function
does not allow the inventor to claim that any of the methods would suffice. Rather,
the patent must teach specific structures to correspond with the claimed function.
Noah, 675 F.3d at 1317 (citing Blackboard, 574 F.3d at 1385) (internal alterations
omitted); Function Media, LLC v. Google Inc., No. 2012-1020, 2013 U.S. App.
LEXIS 3033, at *16 (Fed. Cir. Feb. 13, 2013) (“[I]t is well established that proving
that a person of ordinary skill could devise some method to perform the function is not
the proper inquiry as to definiteness--that inquiry goes to enablement.”). Without that,
the Patent fails “to ensure that the claims delineate the scope of the invention using
language that adequately notifies the public of the patentee’s right to exclude.”
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citing Honeywell Int’l, Inc. v. ITC, 341 F.3d 1332, 1338 (Fed. Cir. 2003)).
Accordingly, the “determining” function is construed as a means-plus-function
whereby the control module utilizes a look-up table to assess, as taught in Figure 3,
whether high long distance charges apply, whether high roaming charges apply, and
whether high local charges apply to determine whether a telephone call should be
completed using the RTCO platform.
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4.
Control means responsive to the dialing of certain numbers for
transmitting a RTCO message from the internal data messaging
device to the data network to initiate an RTCO call from the
RTCO platform11
Google argues that this means-plus-function is indefinite since it fails to provide
a corresponding algorithm for (1) responding to the dialing of telephone numbers; (2)
transmitting the RTCO message to the data network; and (3) directing the RTCO
platform to initiate a call. Google also argues that the phrase “certain telephone
numbers” is ambiguous and therefore indefinite. Selex argues the Court should
construe the language exactly as it appears in the claims and that there is a
corresponding algorithm in the specification at Figure 1, box 12, Figure 2, box 36, and
in the corresponding text at column 8, lines 19-43. Selex also points to several
examples in the specification that could be programmed accordingly.
This claim term is indefinite at least because the “transmitting” function it
references is indefinite. Selex points to box 12 in Figure 1 and box 36 in Figure 2 as
providing sufficient structure for the transmitting function but, as discussed above,
references to “black boxes” that simply restate the function are insufficient to
demarcate corresponding structure. See ePlus, 700 F.3d at 518 (noting that, within a
figure, the “black box” that represented the purchase-order-generation function by
simply stating “purchase orders” did not describe corresponding structure for the
11
This claim language appears in claims 7 and 123.
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purchase-order-generation function); Function Media, 2013 U.S. App. LEXIS 3033
at *14 (“[Patentee’s] citation to the flow charts as sufficient structure is [] unavailing
because the charts [] do not describe how the transmitting function is performed.”).
Selex’s expert contends the claim is not indefinite because the “certain telephone
numbers” are determined by the “previous step” of assessing whether the RTCO
platform should be utilized. (See Laster Resp. Decl. ¶ 108). But the term is indefinite
because the transmitting function itself has no corresponding structure, without regard
to whether there is corresponding structure for the “certain numbers” portion of the
claim term. Likewise, Selex identifies the text in the specification discussing certain
mobile phones that could easily be programmed by those skilled in the art to carry out
the proposed function. But, as noted above, the bare references to programmable
phones are insufficient to adequately demarcate the structure for transmitting a data
message.
See Noah, 675 F.3d at 1317 (“the disclosure [of structure in the
specification] must identify the method for performing the function, whether or not
a skilled artisan might otherwise be able to glean such a method from other sources
or from his own understanding.”) (citing Blackboard, 574 F.3d at 1385). Accordingly,
this claim term is indefinite.12
12
The monitoring function of this claim term is also indefinite because the
underlying monitoring function has been construed as indefinite.
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5.
Control means for determining if [sic] telephone call should be
placed using the RTCO platform comprises determining that no
calls should be placed using the RTCO platform13
This claim term appears to be redundant of the determining function claim
discussed above with the added stipulation that the control means include a possible
determination that no calls should be placed using the RTCO platform. The Court
construed the “determining” function, without the added stipulation, as a means-plusfunction whereby the control module utilizes a look-up table to assess, as taught in
Figure 3, whether high long distance charges apply, whether high roaming charges
apply, and whether high local charges apply to determine whether a telephone call
should be completed using the RTCO platform.
Selex argues that this claim language concerns a user-option allowing the user
to turn off the RTCO service altogether. Selex contends that the supporting structure
for this function is found in the specification where it states that the user could turn
the use of the RTCO service off. (See‘070 Patent Col. 8, ll. 49-56 (“In this regard, the
user could turn use of the RTCO service on or off. This could be done through a
menu option, such as is currently used to select or de-select many features and
functions in cellular telephones.”)). Google argues that the function of allowing the
13
This claim language is located in claims 52, 74, 142, and 166.
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user to turn off the RTCO service is indefinite as the ‘070 Patent does not disclose
sufficient corresponding structure for the user-option.
In Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106 (Fed. Cir.
2002), the patent included the function of monitoring the ECG signal and activating
a charge in an implanted defibrillator. The corresponding structure made clear that
both monitoring and activating were part of a dual function. The court held the claim
indefinite “because only [a] physician both monitors the ECG signal and activates the
charging means” and “the physician cannot be corresponding structure.” Id. at 1114.
Here, too, the user cannot be the corresponding structure. Selex cannot rely on the
ability of a user to turn off the RTCO options without disclosing structure within the
invention for a user to turn off the RTCO.
Further, Selex’s citation to the specification stating that the structure could
include a menu option that is currently used for many features in cellular telephones
is insufficient because the specification fails to identify a specific method for the menu
option. See Noah, 675 F.3d at 1317 (citing Blackboard, 574 F.3d at 1385) (the fact
“[t]hat various methods might exist to perform a function is ‘precisely why’ the
disclosure of specific programming is required.”). Because the specification language
Selex identifies does not constitute sufficient structure, this claim term is indefinite.
6.
Control means for determining if the telephone call should be
placed using the RTCO platform comprises determining that a
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subset of telephone calls should be placed using the RTCO
platform14
Selex and Google agree that this is a means-plus-function under 35 U.S.C. §
112 ¶ 6. Selex argues that the claim should be construed as “determining that some,
all, or no telephone calls should be placed using the RTCO platform.” Selex points
to corresponding structure in Figure 1, box 12, Figure 2, box 33, Figure 3, and the
patent text found at column 6, line 14 through column 7, line 21, as well as the lookup table. Google argues that Selex cannot include structure beyond the three-tiered
algorithm and the look-up table as that structure alone describes the corresponding
function.
Google’s argument is consistent with Federal Circuit precedent. Selex can only
rely on corresponding structure for a function “if the specification or prosecution
history clearly links or associates that structure to the function recited in the claim.”
Medical Instr. & Diag. Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003)
(quoting B. Braun Medical v. Abbot Lab, 124 F.3d 1419, 1424 (Fed. Cir. 1997)).
While 35 U.S.C. § 112 ¶ 6 does not require the patentee “to recite in the claims all
possible structures that could be used as means in the claimed apparatus, ... [i]f the
specification is not clear as to the structure that the patentee intends to correspond to
the claimed function, then the patentee ... [is] attempting to claim in functional terms
14
This claim language appears in claims 53, 75, 143, and 167.
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unbounded by any reference to the structure in the specification.” Id. at 1211 (quoting
O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997)). Here, it is not clear
from the specification which structure corresponds to the claimed function of
determining that a subset of calls should be made using the RTCO platform because
the identified corresponding structure is the structure corresponding with the
“determining” function. Accordingly, the construction must be limited to the portions
of the specification that specifically relate to determining that calls are made using the
RTCO platform: the three-tiered flow-chart in Figure 3 and the associated look-up
table that serve as corresponding structure for the “determining” function.
7.
Control means is operative for comparing the telephone number
dialed by the user with the look-up table to determine if the
telephone number dialed should be placed directly or should be
placed using the RTCO platform15
The parties agree that this is a means-plus-function governed by 35 U.S.C. §
112 ¶ 6. Selex contends that corresponding structure can be found in Figure 1, box
12, and in the algorithms found in Figures 2 (box 33) and 3, as well as the look-up
table discussed in column 6, line 14 through column 7, line 21. Selex also contends
that the specification teaches that a person having ordinary skill in the art could
complete such a function using the SIM Toolkit Application. Google argues that the
structure must be limited to the look-up table itself.
15
This claim language appears in claims 123 and 148.
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Google’s construction is consistent with Federal Circuit precedent as it derives
its construction from the claim language itself. See Gillette Co. v. Energizer Holdings,
Inc., 405 F.3d 1367, 1370 (Fed. Cir. 2005) (quoting Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (the Court’s focus must
“begin and remain centered on the language of the claims themselves, for it is that
language that the patentee chose to use to particularly point out and distinctly claim
the subject matter which the patentee regards as his invention.”)). Because the claim
language itself references the look-up table disclosed in the specification, Selex cannot
rely on structure disclosed beyond the look-up table. Accordingly, this function
should be limited to the structure described by the look-up table referenced in the
claim language. The look-up table structure comprises (1) a network code for the
country, (2) a location identity number, and (3) a sequence of possible initial digits,
all of which are analyzed by the mobile telephone when the call is placed. (See ‘070
Patent Cols. 6-7, ll. 42-21).
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8.
Control means... for determining if a telephone call should be
placed using the RTCO platform... wherein [such] determining ...
is based on at least one criteria ... wherein at least one criteria
comprises whether the telephone call placed from the mobile
telephone to the telephone is an international call16
Selex again points to Figure 1, box 12, and in the algorithms found in Figures
2 (box 33) and 3, as well as the text in columns 6 and 7, lines 14-21, including the
look-up table, as corresponding structure. However, as Google points out, the only
structure in the specification capable of determining whether to place a call from the
RTCO platform, regardless of whether the number dialed is an international call (i.e.,
a call from one country to another), is the look-up table disclosed in columns 6 and
7 and the multi-tiered logic in Figure 3. As discussed above, the structure Selex refers
to only requires the control module to determine whether higher roaming charges
apply, whether higher long distance rates apply, or whether lower local rates apply.
There is no further structure in the specification concerning international calls.
Accordingly, because the corresponding structure must be linked with the claimed
function, the corresponding structure for this claim only includes the look-up table and
16
This claim language is derived from claims 49, 71, 139, and 163. It appears
that the parties initially disputed whether they were attempting to construct this
means-plus-function or simply the definition of an international call. However, the
parties’ response briefs indicate they view this term as a means-plus-function. (See
Google Claim Construction Response, at 22; Selex Claim Construction Response, at
14).
T:\ORDERS\Closed\2009\Selex Communications, Inc\claimstwt.wpd -32-
the three-tiered logic found in Figure 3. See Medical Instr. & Diag. Corp., 344 F.3d
at 1210; (‘070 Patent, Cols. 6-7, ll. 42-21; Fig. 3).
C.
Remaining Disputed Terms
1.
[Control Means/internal data messaging device] is operative for
communicating a message to a data messaging network for
relaying the message to the RTCO platform to complete the call
using the RTCO platform
The parties dispute whether this is a means-plus-function claim term. The
language is drawn from claims 14 and 148.17 Claim 14 teaches a mobile phone with
a keypad, access to a telephony network and internal data messaging capabilities, “the
improvement therein comprising that control means are provided for monitoring the
dialing of a telephone number by a user of the mobile telephone, and for determining
if telephone call should be placed using an RTCO platform, and further that the
internal data messaging device is operative for communicating a message to a data
messaging network for relaying the message to the RTCO platform to complete the
call using the RTCO platform without requiring that the user dial any additional
numbers.” (‘070 Patent, Col. 10, ll. 17-28). Selex contends that the phrase beginning
with “operative” modifies the internal data messaging device. Google, however,
17
The claim language is also drawn from independent claims 7 and 123, which
use slightly different phrasing. Claim 7 states control means “responsive to the dialing
of certain telephone numbers for transmitting a RTCO message from the internal data
messaging device to the data network to initiate an RTCO call from the RTCO
platform.” (‘070 Patent, Col. 9, ll. 54-59).
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argues that the final phrase modifies the “control means” discussed earlier in the
paragraph and thus restates the “transmitting” and “communicating” functions
construed above as indefinite.
The Court concludes the claim term should be construed as a means-plusfunction claim.
“[A] limitation lacking the term ‘means’ may overcome the
presumption against means-plus-function treatment if it is shown that ‘the claim term
fails to recite sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.’” Massachusetts Inst. of Tech. v.
Abacus Software, 462 F.3d 1344, 1353 (Fed. Cir. 2006) (quoting CCS Fitness, Inc.
v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002)). Even reading the phrase
as Selex reads it, the Court concludes that “internal data messaging device is operative
for communicating a message to a data messaging network for relaying the message
to the RTCO platform to complete the call using the RTCO platform” denotes a
means-plus-function claim because, in general, the term “device” does “not connote
sufficiently definite structure” to avoid § 112 ¶ 6. Id. at 1354 (citing Personalized
Media Communs., LLC v. International Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir.
1998)). There is nothing else in the claim language sufficient itself to recite definite
structure. See Personalized, 161 F.3d at 704 (in determining whether § 112 ¶ 6
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applies, “the focus remains on whether the claim as properly construed recites
sufficiently definite structure.”). Thus, this claim term recites a means-plus-function.
This means-plus-function claim term is indefinite for the same reasons the
“communicating” and “transmitting” claim terms have been construed as indefinite.
The specification does not identify sufficient structure to perform the communicating
functions of the claim term. Selex argues that the structure is found in the black boxes
in Figures 1 and 2 that show the data messaging device and the data messaging
network, and in box 36 of Figure 2 which states “pass data message to data messaging
network.” The structure is further outlined in box 37 which states “relay message
from data msg network to RTCO platform.” That data message would contain the
dialed number, the identity of the mobile phone, and additional information as
necessary. The references to the black boxes in Figures 1 and 2 that restate the
functions are insufficient to establish corresponding structure. See ePlus, 700 F.3d at
518 (noting that, within a figure, the “black box” that represented the purchase-ordergeneration function by simply stating “purchase orders” did not describe
corresponding structure for the purchase-order-generation function). Selex also
argues that those skilled in the art could utilize special programming to perform the
stated function with an IS-41 mobile phone, a GSM mobile phone, or by programming
a SIM card. But to avoid indefiniteness Selex must identify which method a person
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skilled in the art must utilize when completing a known function. See Noah, 675 F.3d
at 1317 (citing Blackboard, 574 F.3d at 1385) (“[E]fforts to find structure ... in the
common ken of a skilled [mobile telecommunications] artisan does not allow [the
patent] to avoid providing the specificity as to structure required by § 112 ¶ 6.”).
Likewise, Selex’s references to various data messaging networks, such as IP
messaging capability, an SS7 signaling network, USSD network, and others, do not
teach a person of ordinary skill in the art which method to utilize in performing the
function. See id. Accordingly, the Court concludes that this claim term is indefinite.
2.
Data messaging network configured to relay messages18
The parties agree that this term should carry its plain meaning according to one
skilled in the art. The parties dispute whether a data messaging network at the time
the ‘070 Patent was issued included the ability to relay data messages over Internet
Protocol, which is landline-based communications, as opposed to only over mobile
telephone networks. Google argues that, during the reexamination of the Patent, Selex
distinguished its invention from “PCs having a landline telecommunications system”
because they are different from mobile telecommunications systems. (See JA Ex. 4,
Part 1, at 113-17). Although it is possible for a patentee to surrender potential
constructions of claims during reexamination, such a surrender does not override the
18
This claim language is drawn from claims 7 and 123.
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specification language. Phillips, 415 F.3d at 1317 (“[B]ecause the prosecution history
represents an ongoing negotiation between the PTO and the applicant, rather than the
final product of that negotiation, it often lacks the clarity of the specification and thus
is less useful for claim construction purposes.”). Here, the specification states: “the
IP (Internet Protocol) messaging capability within the PC can serve as the data
messaging device on an IP network (e.g. 33.6 Kbps dial-up to the Internet Worldwide
Web, a Wide Area Network WAN, etc.) can serve as a data messaging network.”
(‘070 Patent, Col. 8, ll. 38-43). Accordingly, the Court adopts Selex’s proposed
construction and construes “data messaging network configured to relay messages”
as a “communications network that transmits data messages including but not limited
to the following network types: GSM, IS-41, SS7, USSD, GPRS, UMTS, and IP.”
3.
High cost number19
Selex argues that the term “high cost number” should be given its ordinary
meaning. The ‘070 Patent, according to Selex, describes high cost numbers as those
that include roaming costs, long distance costs, or high local costs. (Selex Opening
at 22, ‘070 Patent Col. 6, ll. 19-40). Google argues that the term “high cost number”
is indefinite whether isolated or used in a means-plus-function because “high cost
number” is inherently subjective. Google further argues that the anchors Selex points
19
This claim language is drawn from claims 51, 73, 141, and 165.
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to, such as roaming and long-distance costs, do not provide sufficient guideposts for
someone with ordinary skill in the art to determine what renders a cost “high.”
The Court agrees that the reference to “high cost number” renders the claim
language indefinite. In Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371
(Fed. Cir. 2001), the court reversed the trial court’s holdings of indefiniteness for
several claim terms in a patent concerning natural gas processes after “[t]he trial court
[had] found the term ‘substantial absence of slug flow’ to be indefinite because the
specification did not provide any empirical standard for determining when the process
could be said to be substantially lacking in slug flow.” Id. at 1380. The Federal
Circuit, however, noted that “the fact that some claim language may not be precise
does not automatically render a claim invalid. When a word of degree is used the
district court must determine whether the patent’s specification provides some
standard for measuring that degree.” Id. at 1381 (quoting Seattle Box Co. v. Industrial
Crating & Packaging, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (internal alterations
omitted)). According to the court, “[o]ne of skill in the art would understand from the
specification that the reason slug flow should be avoided is that it may interfere with
reactor efficiency.” Id. “Whether there is a ‘substantial absence of slug flow’
therefore can be determined with reference to whether reactor efficiency is materially
affected,” and “[i]f there is no slug flow or such minimal slug flow that the slug flow
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has no appreciable impact on reactor efficiency,” the court concluded, “then there is
a ‘substantial absence of slug flow’ within the meaning of the claims.” Id.
Here, in contrast, with respect to “high cost number,” there is no standard by
which a person having ordinary skill in the art could determine with a degree of
certainty that a dialed number is a “high cost number.” Unlike in Exxon, where the
term of degree could be associated with a desired and understood technological result,
the term of degree here, “high cost number,” can only be associated with subjective
cost reduction or unanchored desired results. The subjective assessment of a person
skilled in the art cannot render a claim definite. See Datamize, 417 F.3d at 1350
(construction of claim cannot depend on subjective opinion of individual). The
purported anchors that Selex points to -- “roaming charges, high long distance
charges, and high local charges” -- suffer from the same uncertainty as “high cost
number.”20 Where, as here, the only parameters of the claim term depend on
judgments of whether a certain cost may be “high,” and there are no other objective
parameters to rein in the claim terms, the claim language is indefinite. See Exxon, 265
20
This is in contrast to the three-tiered logic associated with the determining
function whereby the control module assesses whether it faces “higher” roaming,
local, or long-distance charges, presumably in comparison to roaming or long-distance
charges assessed where the call originates or higher local charges where the RTCO
platform may originate the destination call. See Exxon, 265 F.3d at 1381 (noting that
words of degree in claim terms are permissible provided they are attached to a
standard for measuring the degree).
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F.3d at 1381 (requiring “a reasonable degree of particularity and definiteness” to
construct a claim term involving terms of degree).
IV. Conclusion
For the reasons set forth above, the disputed terms in the ‘070 Patent will be
construed in the manner described above.
SO ORDERED, this 8 day of April, 2013.
/s/Thomas W. Thrash
THOMAS W. THRASH, JR.
United States District Judge
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