Sprint Communications Company LP v. Vonage Holdings Corp., et al

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REPLY to Response to Motion by Plaintiff Sprint Communications Company LP re: 198 MOTION for Partial Summary Judgment. (Attachments: # 1 Exhibit 23# 2 Exhibit 24# 3 Exhibit 25# 4 Exhibit 26 (filed Under Seal)# 5 Exhibit 27 (filed Under Seal)# 6 Exhibit 28 (filed Under Seal)# 7 Exhibit 29 (filed Under Seal)# 8 Exhibit 30 (filed Under Seal)# 9 Exhibit 31 (Part A)# 10 Exhibit 31 (Part B)# 11 Exhibit 31 (Part C)# 12 Exhibit 31 (Part D)# 13 Exhibit 32# 14 Exhibit 33# 15 Exhibit 34# 16 Exhibit 35# 17 Exhibit 36 (filed Under Seal)# 18 Exhibit 37 (filed Under Seal)# 19 Exhibit 38)(Seitz, Adam)

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS SPRINT COMMUNICATIONS COMPANY L.P., ) ) ) Plaintiff, ) ) v. ) ) VONAGE HOLDINGS CORP., ) VONAGE AMERICA, INC., ) ) ) Defendants.

Case No. 05-2433-J W L

SPRINT'S REPLY TO VONAGE'S OPPOSITION TO SPRINT'S MOTION FOR PARTIAL SUMMARY JUDGMENT In support of its Motion for Partial Summary Judgment, Plaintiff Sprint Communications Company L.P. ("Sprint") hereby provides the following Reply to Vonage's Opposition to Sprint's Motion for Partial Summary Judgment.

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TABLE OF CONTENTS I. REPLY TO VONAGE'S RESPONSES TO SPRINT'S STATEMENT OF UNDISPUTED MATERIAL FACTS .................................................................................1 A. B. C. D. E. F. II. III. The P arties ...............................................................................................................1 J u risdiction ...............................................................................................................2 Venue .......................................................................................................................2 Sprint's Asserted Patents .........................................................................................3 The Present Lawsuit .................................................................................................3 Vonage's Affirmative Defenses ...............................................................................4

RESPONSE TO VONAGE'S STATEMENT OF ALLEGEDLY MATERIAL FACTS IN DISPUTE ........................................................................................................16 RESPONSE TO VONAGE'S STATEMENT OF ALLEGEDLY MATERIAL FACTS NOT IN DISPUTE ...............................................................................................20 A. B. C. D. E. F. Vonage's Claims as to 35 U.S.C. §112 ¶2 ...........................................................20 Notice .....................................................................................................................29 Invention and Prosecution of Asserted Patents ......................................................29 P r o s e c u t i o n L a c h e s ..............................................................................................31 Misuse ...................................................................................................................37 Patent Claims at Issue ............................................................................................39

IV. V.

INTRODUCTION .............................................................................................................40 ARGUMENT .....................................................................................................................41 A. Summary Judgment On Vonage's Second and Seventh Affirmative Defenses Under 35 U.S.C. § 112, ¶ 2 Is Proper .....................................................41 1. 2. 3. B. Vonage's Arguments Must Be Disregarded Under Rule 37(c)(1).............41 Vonage's Alleged Facts Do Not Establish A Material Dispute ................45 Vonage's Seventh Affirmative Defense Similarly Fails ............................47

Vonage's Fifth Affirmative Defense Does Not Present A Triable Issue And Rule 56(f) Does Not Preclude Entry Of Summary Judgment ........................48 1. Competitive Documents Provide No Basis To Avoid Summary Judgment ....................................................................................................48

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2.

Vonage's Appeal From the Court's Orders of May 14 and 16, 2007 Provide No Basis for Vonage to Avoid Summary Judgment As To Its Fifth Affirmative Defense .....................................................................52

C. D. E. F.

Vonage's Untimely Assertion of Prosecution Laches Must Be Rejected..............53 Vonage's Misuse And Unclean Hands Affirmative Defenses Are Barred ............56 Summary Judgment Is Proper As To Vonage's Section 287 Affirmative Defens e ..................................................................................................................58 Summary Judgment Is Proper As To Vonage's § 101 Affirmative Defense .........61 1. 2. Vonage's § 101 Assertions Are Barred .....................................................61 Vonage's Assertion Regarding "Signal" Claims Is Erroneous ..................62

G. H. I. VI.

Summary Judgment Is Proper As To Vonage's Unenforceability Claim ..............65 Summary Judgment Is Proper As To Vonage's Counterclaim and Affirmative Defense of Non-Infringement ............................................................66 Summary Judgment Is Proper As To Vonage's "Additional Defenses" ...............66

CONCLUSION ..................................................................................................................67

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TABLE OF AUTHORITIES Cases A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed. Cir. 1992) .................. 50, 65 Aircapital Cablevision, Inc. v. Starlink Communications Group, Inc., 634 F.Supp. 316 (D. Kan. 1986) ......................................................................................................................................... 57 Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087 (Fed. Cir. 1987) ................................ 66 Argo v. Blue Cross and Blue Shield of Kan., Inc., 452 F.3d 1193 (10th Cir.2006) ...................... 17 C.R. Bard, Inc. v. M3 Systems, Inc., 157 F.3d 1340 (Fed.Cir.1998) ...................................... 56, 58 Cambridge Electronics Corp. v. MGA Electronics, Inc., 227 F.R.D. 313 (C.D.Cal. 2004) .. 43, 44, 55 Committee for First Amendment v. Campbell, 962 F.2d 1517 (10th Cir.1992) ........................... 48 C o n a w a y v . S m i t h , 8 5 3 F . 2 d 7 8 9 ( 1 0t h C i r . 1 9 8 8 ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 0 Diamond v. Chakrabarty , 447 U.S. 303 (1980) ............................................................................ 64 DiCesare v. Stuart, 12 F.3d 973 (10th Cir.1993).......................................................................... 48 Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358 (Fed. Cir. 2001) ............................................... 50 Emergis Technologies, Inc. v. Cable One, Inc., 2006 WL 2644969, *1 (D.Kan. Sept. 14, 2006) ................................................................................................................................. 23, 24, 38, 40 Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371 (Fed.Cir.2001) ........................... 46 Falko-Gunter Falkner, 448 F.3d 1357 (Fed. Cir. 2007) ............................................. 23, 24, 38, 40 Ferluga v. Eickhoff, No. 05-2338 JWL, 2006 WL 3144218, at *2 (D. Kan. Oct. 31, 2006) 17, 35, 36, 37, 38, 39 Freeman v. Gerber Products Co., 466 F.Supp.2d 1242 (D.Kan. 2006) ....................................... 51 Gardco Mfg., Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987) ................................... 65 Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770 (Fed. Cir. 1995) .............................. 49
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Harvey Barnett, Inc. v. Shidler, 338 F.3d 1125 (10th Cir.2003) .................................................. 17 In re Indep. Serv. Orgs. Antitrust Litigation, 85 F.Supp.2d 1130 (D. Kan. 2000) ....................... 43 International Surplus Lines Ins. Co. v. Wyoming Coal Refining Systems, Inc., 52 F.3d 901 (10th Cir. 1995) ................................................................................................................ 49, 50, 5 1 , 5 8 Markman, 517 U.S. at 372 ................................................................................................ 23, 38, 40 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986).................................... 60 McKesson Information Solutions LLC v. Trizetto Group, Inc., 426 F.Supp.2d 203 (D.Del. 2006) ................................................................................................................................................... 50 Medical Graphics Corporation v. SensorMedics Corp., No. 3-94-525 1995 U.S. Dist. LEXIS 11097, at * 7 (D. Minn. June 5, 1995) ...................................................................................... 58 Meyers v. Asics Corp., 974 F.2d 1304 (Fed.Cir.1992) ................................................................. 50 Miksis v. Howard, 106 F.3d 754 (7th Cir. 1997) .......................................................................... 44 O'Reilly v. Morse, 56 U.S. (15 How.) 62, 112-114 (1853) .......................................................... 63 P r o f e s s i o n a l R e a l E s t a t e I n v e s t o r s , I n c . v. Columbia Pictures Industries, Inc. , 5 0 8 U . S . 4 9 (1993) ........................................................................................................................................ 57 Rachbach v. Cogswell, 547 F.2d 502 (10th Cir.1976) .................................................................. 61 Radio Corporation of America v. Radio Station KYFM, Inc., 424 F.2d 14 (10th Cir.1970) ........ 61 Refac Electronics Corp. v. A & B Beacon Business Machines, 695 F. Supp. 753 (S.D.N.Y. 1988) ................................................................................................................................................... 58 Reiffin v. Microsoft Corp., 270 F.Supp.2d 1132 (N.D. Cal. 2003) ......................................... 53, 55 Renfro v. City of Emporia, 948 F.2d 1529 (10th Cir.1991) .......................................................... 61 Solomon v. Kimberly-Clark Corp., 216 F.3d 1372 (Fed. Cir. 2000) .............. 21, 22, 23, 24, 46, 47 Stevens v. Deluxe Financial Services, Inc., 199 F.Supp.2d 1128 (D. Kan. 2002) ........................ 43

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Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).............................. 58, 59 Wine Ry. Appliance Co. v. Enter. Ry. Equip. Co., 297 U.S. 387, 80 L. Ed. 736, 56 S. Ct. 528 (1936) ........................................................................................................................................ 58 Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101 (9th Cir. 2001) ............................ 44 Statutes 28 U.S.C. §1391 .............................................................................................................................. 2 35 U.S.C. § 112 ......................................................................... 4, 5, 6, 7, 20, 21, 4 0, 44, 45, 46, 47 35 U.S.C. § 287 ........................................................................................... 3, 17, 4 0, 58, 59, 60, 61 35 U.S.C. §112 ............................................................................................................................ 4, 5 Rules Fed. R. Civ. P. 37(c)(1) ........................................................................................................... 43, 55 Fed. R. Civ. P. 56(e) ..................................................................................................................... 60 Fed. R. Civ. P. 8(c) ....................................................................................................................... 61

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I.

REPLY TO VONAGE'S RESPONSES TO SPRINT'S STATEMENT OF UNDISPUTED MATERIAL FACTS In support of its motion for partial summary judgment, Plaintiff Sprint

Communications Company L.P. ("Sprint") filed a Statement of Undisputed Material Facts in Support of its Motion for Partial Summary Judgment, which Vonage responded to in its Opposition. Sprint hereby replies to those responses. A. The Parties Sprint's Fact No. 1: Plaintiff Sprint Communications Company L.P. ("Sprint") is a Limited Partnership organized and existing under the laws of Delaware, with its principal place of business at 6500 Sprint Parkway, Overland Park, Kansas 66251. (Doc. No. 2, Sprint's First Amended Complaint, ¶1; Exh. 1, Pretrial Order, § 4.a. ¶ 1). Vonage's Response to N o. 1: this fact is material. Sprint's Reply to No. 1: Fact 1 is undisputed. Undisputed, though Vonage disputes that

Sprint's Fact No. 2: Defendant Vonage Holdings Corp. ("Vonage Holdings") is a corporation organized and existing under the laws of Delaware, with its principal place of business at 2147 Route 27, Edison, New Jersey 08817. (Doc. No. 2, Sprint's First Amended Complaint, ¶ 4; Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, ¶ 4; Exh. 1, Pretrial Order, § 4.a. ¶ 2). Vonage's Response to N o. 2: this fact is material. Sprint's Reply to No. 2: Fact 2 is undisputed. Undisputed, though Vonage disputes that

Sprint's Fact No. 3: Defendant Vonage America, Inc. ("Vonage America") is a wholly owned subsidiary of Vonage Holdings and is a corporation organized and existing under

1
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the laws of Delaware, with its principal place of business at 2147 Route 27, Edison, New Jersey 08817. (Doc. No. 2, Sprint's First Amended Complaint, ¶ 5; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, ¶ 5; Exh. 1, Pretrial Order, § 4.a. ¶ 3). Vonage's Response to N o. 3: this fact is material. Sprint's Reply to No. 3: Fact 3 is undisputed. Undisputed, though Vonage disputes that

Sprint's Fact No. 4: Vonage Holdings Corp. was incorporated in or around May 15, 2000; Vonage America Inc. was incorporated on or around April 29, 2005. (Exh. 1, Pretrial Order, § 4.a. ¶ 39). Vonage's Response to N o. 4: this fact is material. Sprint's Reply to No. 4: B. Jurisdiction Sprint's Fact No. 5: This Court has personal jurisdiction over the parties. (Exh. 1, Pretrial Order, § 4.a. ¶ 4). Vonage's Response to N o. 5: this fact is material. Sprint's Reply to No. 5: C. Venue Sprint's Fact No. 6: Venue is proper in this Court pursuant to 28 U.S.C. §1391. (Exh. 1, Pretrial Order, § 4.a. ¶ 6). Vonage's Response to N o. 6: this fact is material. Sprint's Reply to No. 6: Fact 6 is undisputed. 2
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Fact 4 is undisputed.

Undisputed, though Vonage disputes that

Fact 5 is undisputed.

Undisputed, though Vonage disputes that

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D.

Sprint's Asserted Patents Sprint's Fact No. 7: Sprint has asserted the following patents against Vonage:

United States Patent Nos. 6,304,572; 6,298,064; 6,452,932; 6,463,052; 6,473,429; 6,633,561; and 6,665,294 ("Sprint's Asserted Patents"). (Exh. 1, Pretrial Order, § 4.a. ¶¶ 7-13; 17-27). Vonage's Response to N o. 7: this fact is material. Sprint's Reply to No. 7: E. The Present Lawsuit Sprint's Fact No. 8: Sprint, through its counsel, provided notice of its patent rights to Vonage in five separate letters, from July 13, 2004 to July 15, 2005. (Exhs. 2-6, Letters from Sprint's counsel to Vonage's CEO Jeffrey Citron, with proofs of service attached thereto). Vonage's Response to N o. 8: Disputed. For the reasons set forth in its Fact 7 is undisputed. Undisputed, though Vonage disputes that

Statement of Material Facts in Dispute and in this Memorandum, Vonage disputes that letters sent by Sprint's counsel to Vonage constituted "notice of Sprint's patent rights," or notice of any kind. See Exs. 2-6 to Sprint's Motion. Sprint's Reply to No. 8: It is undisputed that Sprint provided Vonage with

knowledge of the existence of 43 Sprint patents relating to "Voice Over Packet (VoP)" technology, including Sprint's Asserted Patents, in five separate letters. (Exhs. 2-6 to Sprint's Motion). It also is undisputed that Sprint provided Vonage with a CD that contained copies of Sprint's Asserted Patents. Id. Vonage's attorney argument regarding whether the letters

constitute "notice" under 35 U.S.C. § 287 should be disregarded as improper and irrelevant. (See Sprint's Reply Br., at __, infra).

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Sprint's Fact No. 9: Vonage received each of these five letters. (Exh. 1, Pretrial Order, § 4.a. ¶¶ 29-33; Exhs. 2-6, Letters from Sprint's counsel to Vonage's CEO Jeffrey Citron, with proofs of service attached thereto). Vonage's Response to N o. 9: Sprint's Reply to No. 9: Undisputed.

Fact 9 is undisputed.

Sprint's Fact No. 10: Sprint filed its initial Complaint against Vonage for patent infringement on October 4, 2005 (Doc. No. 1, Sprint's Complaint). Vonage's Response to N o. 10: Sprint's Reply to No. 10: F. Undisputed.

Fact 10 is undisputed.

Vonage's Affirmative Defenses Sprint's Fact No. 11: Vonage's Second Affirmative Defense states that Sprint's

Asserted Patents "are invalid under 35 U.S.C. §112 for failing to point out and distinctively claim that part or portion of the subject matter disclosed in the patents' specifications that the named inventor regarded as his `invention' or improvement over the prior art." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 6; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6). Vonage's Response to N o. 11: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 5. Sprint's Reply to No. 11: Fact 11 is undisputed.

Sprint's Fact No. 12: Vonage's Second Affirmative Defense is a defense for invalidity under the second paragraph of 35 U.S.C. § 112. (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 6; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6). 4
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Vonage's Response to N o. 12:

Undisputed.

However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 5. Sprint's Reply to No. 12: Fact 12 is undisputed. First S upplemental R esponse to S print's

Sprint's Fact No. 13: Vonage's Interrogatory No. 5 states:

Further, Vonage asserts that the apparent scope of the asserted claims as set forth in Mr. Wicker's January 12, 2007 expert report of infringement is sufficiently broad such that . . . one or more of the claims of the asserted patents fail to particularly point out and distinctly claim the subject matter which the applicant regards as the invention pursuant to 35 U.S.C. §112. Vonage will provide further d et ails of the i nva lidit y o f t h e asse rted clai ms under § § 101 and 112 in its ex pert report due on Februa r y 23, 20 07. (Exh. 7, Defendants' First Supplemental Response to Plaintiff's Interrogatory No. 5, at 3). In its Second Supplemental Response, Vonage specifically "incorporates by reference the February 28, 2007 Expert Invalidity Report of Frank R. Koperda and its accompanying exhibits and attachments, which inter alia set forth opinions that each asserted claim of the [sic] each of the patents-in-suit is not valid under one or more sections of Title 35 of the U.S. Code." (Exh. 8, Vonage Holdings' Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 3; Exh. 9, Vonage America's Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 3). Vonage's Response to N o. 13: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 5. Sprint's Reply to No. 13: Fact 13 is undisputed.

Sprint's Fact No. 14: Vonage's Seventh Affirmative Defense states "[t]he Complaint is barred by `the doctrine that a patentee may not broaden his claims by describing the 5
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product in terms of function.'" (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 7, Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 7). Vonage's Response to N o. 14: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 5. Sprint's Reply to No. 14: Fact 14 is undisputed.

Sprint's Fact No. 15: The Expert Invalidity Report of Frank R. Koperda provides no opinion regarding 35 U.S.C. § 112, paragraph 2 (Vonage's Second Affirmative Defense) and "the doctrine that a patentee may not broaden his claims by describing the product in terms of function" (Vonage's Seventh Affirmative Defense). (See generally Exh. 10, Expert Invalidity Report of Frank R. Koperda). Vonage's Response to N o. 15: Sprint's Reply to No. 15: Undisputed.

Fact 15 is undisputed.

Sprint's Fact No. 16: Vonage's Counterclaim II seeks a declaration that Sprint's Asserted Patents "are invalid for one or more reasons in the above Affirmative Defenses, which are incorporated herein by reference." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 9; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 9). Vonage's Response to N o. 16: Sprint's Reply to No. 16: Undisputed.

Fact 16 is undisputed.

Sprint's Fact No. 17: Vonage's affirmative defenses do not set forth 35 U.S.C. § 101 as a basis of invalidity. (Doc. No. 73, Vonage Holdings' First Amended Answer and

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Counterclaims, at 6-7; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6-7). Vonage's Response to N o. 17: Undisputed, other than that Sprint fails to

mention that Vonage reserved its right to amend its claims based on ongoing discovery. See Vonage Holdings Corp. and Vonage America, Inc.'s First Amended Answer and Counterclaims, Docs. No. 73, 74, at Additional Defenses. Sprint's Reply to No. 17: Fact 17 is undisputed. Vonage's statement

regarding an alleged reservation of rights to amend based on ongoing discovery is irrelevant because the deadline for such amendments has passed and discovery is now closed. The

statement also is irrelevant because Vonage admits that a defense under § 101 is based purely on the patent claims themselves and, therefore, ongoing discovery is irrelevant to a defense under § 101. (See Vonage Opp., at 34). Sprint's Fact No. 18: In its First Supplemental Response to Sprint's Interrogatory No. 5, Vonage stated, in part: Further, Vonage asserts that the apparent scope of the asserted claims as set forth in Mr. Wicker's January 12, 2007 expert report of infringement is sufficiently broad such that . . . one or more claims of the asserted patents fail to claim statutory subject matter pursuant to 35 U.S.C. §101. . . . Vonage will provide further details of the i nvalidit y o f t he assert ed claims und er §§ 101 and 112 in its expert report due on February 23, 2007. (Exh. 7, Defendants' First Supplemental Response to Plaintiff's Interrogatory No. 5, at 3). In its Second Supplemental Response, Vonage specifically "incorporates by reference the February 28, 2007 Expert Invalidity Report of Frank R. Koperda and its accompanying exhibits and attachments, which inter alia set forth opinions that each asserted claim of the [sic] each of the patents-in-suit is not valid under one or more sections of Title 35 of the U.S. Code." (Exh. 8, Vonage Holdings' Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 7
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3; Exh. 9, Vonage America's Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 3). Vonage's Response to N o. 18: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 5. Sprint's Reply to No. 18: Fact 18 is undisputed.

Sprint's Fact No. 19: The Expert Invalidity Report of Frank R. Koperda provides no opinion on 35 U.S.C. § 101. (See generally Exh. 10, Expert Invalidity Report of Frank R. Koperda). Vonage's Response to N o. 19: Sprint's Reply to No. 19: Undisputed.

Fact 19 is undisputed. Fifth Affirmative Defense states "[t]he

Sprint's Fact No. 20: Vonage's

Complaint is barred by the doctrines of laches, estoppel and acquiescence." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 6; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6). Vonage's Response to N o. 20: Sprint's Reply to No. 20: Undisputed.

Fact 20 is undisputed.

Sprint's Fact No. 21: In response to Interrogatory No. 6, which sought the basis for Vonage's contention that Plaintiff's claim is barred by the doctrines of laches, estoppel, and unclean hands, Vonage stated: . . . Subject to and without waiving these objections, Vonage Holdings states that Sprint's Asserted Patents issued as early as 2001, and because Sprint was aware of Vonage Holdings and its VoIP activities since that time, its decision to wait until 2005 to initiate the present law suit amounts to inexcusable delay and prejudice to Vonage Holdings.

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(Exh. 11, Vonage Holdings' Responses and Objections to Sprint's First Set of Interrogatories, at 4-5). Vonage America provided the same contention. (Exh. 12, Vonage America's Responses

and Objections to Sprint's First Set of Interrogatories, at 4-5). Vonage's Response to N o. 21: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 6. Sprint's Reply to No. 21: Fact 21 is undisputed.

Sprint's Fact No. 22: Vonage supplemented its response to Interrogatory No. 6 and p rovided t he followi ng additional d et ails: . . . [T]o expand on Vonage's response, with respect to the Affirmative Defense of "laches, estoppel and acquiescence" Vonage states that Sprint knew of Vonage's acitivities [sic] in 2001, at the same time as the Asserted Patents were issuing, yet decided to wait until 2005 to file suit. Sprint therefore unreasonably and inexcusably delayed in filing suit, and consequently, Sprint is barred from pursuing its claim by the doctrine of laches. (Exh. 13, Letter from Vonage's counsel to Sprint's counsel dated January 16, 2007). Vonage's Response to N o. 22: Undisputed. However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 6. Sprint's Reply to No. 22: Fact 22 is undisputed.

Sprint's Fact No. 23: There are seven Asserted Patents altogether in this case. Two of the seven Asserted Patents were issued in 2001 and the remaining five patents were issued in either 2002 or 2003. Specifically, the patents issued as follows: The `064 patent issued on October 2, 2001; the `572 patent issued on October 16, 2001; the `932 patent issued on September 17, 2002; the `052 patent issued on October 8, 2002; the `561 patent issued on 9
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October 14, 2003; and the `294 patent issued on December 16, 2003. (Exhs. 14-20, Cover Sheets of Sprint's Asserted Patents). Vonage's Response to N o. 23: Sprint's Reply to No. 23: Undisputed.

Fact 23 is undisputed.

Sprint's Fact No. 24: In response to Sprint's Interrogatory No. 5 regarding Vonage's invalidity contentions, Vonage stated: Subject to and without waiving these objections, Vonage Holdings states that it cannot fully respond to this Interrogatory until such time as Vonage Holdings receives Sprint's infringement contentions. To the extent Vonage Holdings understands the scope of Sprint's Asserted Patents, Vonage Holdings asserts that Sprint's Asserted Patents do not cover VoIP technology. Thus, Sprint's overbroad reading of its Asserted Patents to cover VoIP technology constitutes patent misuse, and further invalidates the Asserted Patents i n v iew o f t he prior a rt. (Exh. 11, Vonage Holdings' Responses and Objections to Sprint's First Set of Interrogatories, at 4) (emphasis added). Vonage America provided the same contention. (Exh. 12, Vonage

America's Responses and Objections to Sprint's First Set of Interrogatories, at 4). Vonage's Response to N o. 24: Sprint's Reply to No. 24: Undisputed.

Fact 24 is undisputed.

Sprint's Fact No. 25: By way of further response to Interrogatory No. 6, Vonage stated: Finally, with respect to unclean hands, Vonage states that Sprint has impermissibly broadened the "physical or temporal scope" of the patent grant with anticompetitive effect. That is, Sprint is now asserting a claim scope that is neither supported by the specification of the Asserted Patents nor the language of the claims themselves. As such, Sprint has impermissibly broadened the scope of its patent grant and, by attempting to enforce these expanded claims against Vonage, Sprint is committing patent misuse and has unclean hands. (Exh. 13, Letter from Vonage's counsel to Sprint's counsel dated January 16, 2007).

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Vonage's Response to N o. 25:

Undisputed.

However, and by way of

further response, concurrently with the filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No. 6. Sprint's Reply to No. 25: Fact 25 is undisputed.

Sprint's Fact No. 26: Sprint is not aware of any product or service made, sold, or offered for sale by Sprint that is within the scope of any claim of Sprint's Asserted Patents. (Exh. 1, Pretrial Order, § 4.a. ¶ 38). Vonage's Response to N o. 26: Disputed. Sprint's representative Michael J.

Setter testified that prototypes were constructed of systems within the scope of the asserted patents, which constitute products made by Sprint. See the April 28, 2006 deposition of Michael J. Setter, Esquire, (excerpts of which are attached as Ex. A hereto) at p. 166, lines 3-5. Sprint's Reply to No. 26: Vonage cannot now dispute an undisputed fact from

the Pretrial Order. Further, the deposition testimony cited by Vonage does not support Vonage's argument. Mr. Setter did not identify a product or service made, sold, or, offered for sale by Sprint that is within the scope of any claim of Sprint's Asserted Patents. (Vonage's Ex. A,1 excerpts from April 28, 2006 deposition of Michael J. Setter, at p. 171, lines 19-25, p. 172, lines 1-6) ("Let me clarify. I did not mean to indicate that the prototype I saw was an

embodiment of anything. It was a prototype that the group ­ Joe Christie, technicians under his direction, put together and process signaling, and handled better user traffic. I don't know the details of the prototype, if it was ­ I assumed it was consistent with what they were working on. . . . But don't intend it ­ I don't mean to tie it as a specific application here. It's the general technology, though.") (emphasis added). Accordingly, Sprint's Fact 26 is uncontroverted.
1

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Sprint's Fact No. 27: Vonage's Counterclaim III seeks a declaration that Sprint's Asserted Patents are unenforceable. (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 9; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 9). Specifically, Counterclaim III states that "[t]he Patents are unenforceable for one or more reasons in the above Affirmative Defenses, which are incorporated herein by reference." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 9; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 9). Vonage's Response to N o. 27: Sprint's Reply to No. 27: Undisputed

Fact 27 is undisputed.

Sprint's Fact No. 28: Vonage has not pled that Sprint committed inequitable conduct. (See generally Doc. No. 73, Vonage Holdings' First Amended Answer and

Counterclaims; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims; Exh. 1, Pretrial Order, §§ 5.b, 7.a). Vonage's Response to N o. 28: Sprint's Reply to No. 28: Undisputed.

Fact 28 is undisputed.

Sprint's Fact No. 29: Vonage sets forth a paragraph entitled "Additional Defenses" in its First Amended Answer and Counterclaims that states: As Vonage Holdings' investigation is ongoing and discovery has not yet been taken, Vonage Holdings is without sufficient information regarding the existence or non-existence of other facts or facts that would constitute a defense to Plaintiff's claims of patent infringement or that would establish the invalidity or unenforceability of the claims of the Patents, including additional prior art or related patents. Vonage Holdings accordingly gives notice that it may assert facts or acts which tend to establish noninfringement, invalidity, unenforceability, or otherwise constitute a defense under Title 35 of the United States Code.

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(Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 7; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6). Vonage's Response to N o. 29: Sprint's Reply to No. 29: Undisputed.

Fact 29 is undisputed.

Sprint's Fact No. 30: Vonage first disclosed its prosecution laches defense in the parties' original Preliminary Pretrial Order, which was submitted to the Court on May 7, 2007. (Exh. 1, Pretrial Order, at 11, 19, and 23). Vonage's Response to N o. 30: Disputed. Vonage has alleged laches since

its original responsive pleading, which encompasses a defense of prosecution laches. Sprint's Reply to No. 30: Sprint's Reply to No. 31, infra. Sprint's Fact No. 31: Vonage did not raise a prosecution laches defense in its Answer, its interrogatory responses, or its expert reports. Vonage's prior assertions of a laches defense--in its First Amended Answer and interrogatory responses--alleged only the general defense of laches based on an alleged unreasonable and inexcusable delay in filing suit. (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 6 (Fifth Affirmative Defense); Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6 (Fifth Affirmative Defense); Exh. 11, Vonage Holdings' Responses and Objections to Sprint's First Set of Interrogatories, at 4-5; Exh. 12, Vonage America's Responses and Objections to Sprint's First Set of Interrogatories, at 4-5; Exh. 13, Letter from Vonage's counsel to Sprint's counsel dated January 16, 2007). Vonage's Response to N o. 31: Disputed. Further, concurrently with the Fact 30 is undisputed. See Sprint's Fact No. 31 and

filing of this opposition, Vonage is supplementing its response to Sprint's Interrogatory No.6.

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Sprint's Reply to No. 31:

Fact 31 is undisputed.

Vonage states no facts

contrary to Sprint's Fact 31 as Vonage previously only asserted a general defense of "laches" and made clear throughout discovery that its defense was based on an alleged unreasonable delay in filing suit. (See Sprint's Fact No. 31). Vonage never identified in response to interrogatories and numerous requests for clarification any allegation of unreasonable delay in the prosecution of Sprint's Asserted Patents. (See Sprint's Fact No. 31). Vonage's belated supplementation of its response to Sprint's Interrogatory No. 6 is a tacit admission that it had not ever previously alleged prosecution laches before the parties' original Preliminary Pretrial Order, which was submitted to the Court on May 7, 2007. Accordingly, Fact No. 31 is undisputed. Sprint's Fact No. 32: Sprint produced copies of each of Sprint's Asserted Patents and their prosecution histories on February 10, 2006, as identified in Sprint's Initial Disclosures. (Exh. 21, Sprint's Initial Disclosures, at 3; Exh. 22, Email dated February 10, 2006 from Sprint's counsel to Vonage's counsel). Vonage's Response to N o. 32: Disputed. Sprint did not produce copies of

the prosecution histories of the parent applications from which the asserted patents issued, nor copies of the prosecution histories of any patents related to the asserted patents, including foreign counterparts thereof. Sprint's Reply to No. 32: Fact 32 is undisputed. Vonage provides no support

for its conclusory statement, and the facts demonstrate that Sprint provided this information during discovery. Sprint produced copies of the prosecution histories of the parent applications (SPRe-022-01-00008 to SPRe-022-01-00238; SPRe-022-01-00239 to SPRe-022-01-00603), as well as prosecution histories of related patents (SPRe-022-01-00604 to SPRe-022-01-00783;

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SPRe-022-01-00784 to SPRe-022-01-00938) to Vonage. (See Exh. 23, 2/15/07 Letter producing documents to Vonage, and cover sheets of file histories). Sprint's Fact No. 33: Vonage's Fourth Affirmative Defense states that it has "not infringed any valid claims of the Patents." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 6; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 6). Vonage's Response to N o. 33: Sprint's Reply to No. 33: Undisputed.

Undisputed.

Sprint's Fact No. 34: Vonage's Counterclaim I seeks a declaration of noninfringement of Sprint's Asserted Patents. (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 9; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 9). Specifically, Counterclaim I states that "[t]he Patents are not infringed for one or more reasons in the above Affirmative Defenses, which are incorporated herein by reference." (Doc. No. 73, Vonage Holdings' First Amended Answer and Counterclaims, at 9; Doc. No. 74, Vonage America's First Amended Answer and Counterclaims, at 9). Vonage's Response to N o. 34: Sprint's Reply to No. 34: Undisputed.

Undisputed.

Sprint's Fact No. 35: Vonage's Second Supplemental Response to Interrogatory No. 7, which seeks the basis for Vonage's non-infringement contentions, incorporates the February 28, 2007 Expert Non-infringement Report of Joel M. Halpern. (Exh. 8, Vonage Holdings' Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 4; Exh. 9, Vonage America's Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 4). Specifically, Vonage responded:

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Vonage incorporates by reference the February 28, 2007 Expert Non-infringement Report of Joel M. Halpern and its accompanying exhibits and attachments, which inter alia set forth opinions that each asserted claim of the [sic] each of the patents-in-suit is not infringed by Vonage, either literally or under the doctrine of equivalents. (Exh. 8, Vonage Holdings' Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 4; Exh. 9, Vonage America's Second Supplemental Responses to Plaintiff's First Set of Interrogatories, at 4). Vonage's Response to N o. 35: Undisputed. However, Vonage Holdings

served a Third Supplemental Response, and Vonage America served a Second Supplemental Response, to Plaintiff's First Set of Interrogatories on May 15, 2007 which further incorporated the April 27, 2007 Supplement to the Expert Non-Infringement Report of Joel M. Halpern. Sprint's Reply to No. 35: Undisputed. It is also undisputed that the

supplemental responses2 referenced by Vonage, which Vonage served on May 15, 2007, merely incorporates the April 27, 2007 Supplement to the Expert Non-Infringement Report of Joel M. Halpern and provides no additional non-infringement contentions outside of those set forth in Mr. Halpern's reports. (Exh. 24, 5/15/07 Third Supplemental Responses of Vonage Holdings to Sprint's First Interrogatories; Exh. 25, 5/15/07 "Second" Supplemental Responses of Vonage America to Sprint's First Interrogatories). II. RESPONSE TO VONAGE'S STATEMENT OF ALLEGEDLY MATERIAL FACTS IN DISPUTE As set forth in Sprint's accompanying reply brief, Vonage's Statement of Material Facts in Dispute (Fact Nos. 1-7) do not constitute a basis to deny Sprint's motion. Vonage's

2

To clarify any confusion, Vonage America's "Second Supplemental Response", which is referenced in Vonage's Response to No. 35, was, in reality, its Third Supplemental Response to Sprint's First Set of Interrogatories. 16

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proffered designation for these facts is self-serving and disingenuous. Sprint hereby responds to these facts as follows. Vonage's Additional Fact No. 1: Sprint's letters to Vonage prior to Sprint's

filing of its Complaint in October 2005 (Sprint's "Letters," see Sprint's Exs. 2-6) provided Vonage no notice of its claims of alleged infringement. Sprint's Response to No. 1: Objection: Vonage's "Fact" 1 is attorney argument and does not comply with Local Rule 56.1(d) and, therefore, should be stricken. Ferluga v. Eickhoff, No. 05-2338 JWL, 2006 WL 3144218, at *2 (D. Kan. Oct. 31, 2006) (J. Lungstrum) ("The statement of material facts itself should consist of nothing but facts; it should not consist of vague and conclusory statements; it should not contain argument about the inferences plaintiff wants the court to draw from the facts; and it should not contain any other argument such as citation to legal authority."); see also Harvey Barnett, Inc. v. Shidler, 338 F.3d 1125, 1136 (10th Cir.2003) (disregarding unsubstantiated conclusory allegations); Argo v. Blue Cross and Blue Shield of Kan., Inc., 452 F.3d 1193, 1200 (10th Cir.2006) (same). If the Court considers Vonage's improper fact, Sprint responds as follows: It is undisputed that Sprint provided Vonage with knowledge of the existence of 43 Sprint patents relating to "Voice Over Packet (VoP)" technology, including Sprint's Asserted Patents, in five separate letters. See Sprint's Reply to Vonage's Response to Sprint's Fact No. 8. It also is undisputed that Sprint provided Vonage with a CD that contained copies of Sprint's Asserted Patents. Id. However, Vonage's argument regarding "notice" under 35 U.S.C. § 287 is immaterial and has no bearing on this case if Vonage does not have sufficient evidence to allow a reasonable juror to find that Sprint failed to mark articles covered by the Asserted Patents that

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it was making, selling, or offering for sale in the U.S. and that were capable of being marked. (See infra Section V.E.). Vonage's Additional Fact No. 2: allegations of infringement. Id. Sprint's Response to No. 2: Undisputed, but immaterial. (See Sprint's Response to Vonage Fact No. 1). Though Sprint did not contend Vonage infringed any patents or claims of patents in its letters, Sprint identified a "Voice Over Packet" portfolio of patents and sought "a meeting t o d iscuss [ S print's] concerns about t h e p o t e n t i a l i m p a c t o f [ t h e p o r t f o l i o ] o n t h e combinations of equipment and network architectures used by Vonage." (See Sprint Exh. 4, 11/12/04 Letter from B. Trent Webb to Jeffrey Citron). Vonage's Additional Fact No. 3: In its Letters, Sprint identified no patents or In Sprint's Letters, Sprint made no

claims of patents Sprint contended were infringed by Vonage. Instead, Sprint enclosed a CD of 43 patents Sprint were "representative" of an unidentified "patent portfolio." See Sprint's Exs. 2-6. Sprint's Response to No. 3: Undisputed, but immaterial. Though Sprint did not contend Vonage infringed any patents or claims of patents in its letters, Sprint identified a "Voice Over Packet" portfolio of patents and sought "a meeting to discuss [Sprint's] concerns about the potential impact of [the portfolio] on the combinations of equipment and network architectures used by Vonage." (See Sprint Exh. 4, 11/12/04 Letter from B. Trent Webb to Jeffrey Citron). Vonage's Additional Fact No. 4: While Sprint suggested it was "willing to

grant a non-exclusive license under these and other patents in its portfolio under mutually acceptable terms," Sprint's Ex. 2, and stated its willingness to meet with Vonage to discuss a

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possible license, Sprint's Exs. 2-6, Sprint never suggested a license was necessary or that Vonage would be in breach of Sprint's patent rights if no such license was achieved. Sprint's Response to No. 4: Undisputed that Sprint stated it was "willing to grant a non-exclusive license under these and other patents in its portfolio under mutually acceptable terms," and that it stated it was willing to meet Vonage to discuss a possible license. Sprint disputes Vonage's statement that Sprint never suggested a license was necessary. Sprint repeatedly informed Vonage that a license may be necessary. (See Sprint's Responses to Fact Nos. 1-3, supra). Vonage's Additional Fact No. 5: In the Letters, Sprint identified no Vonage

product or service it claimed encroached on its purported patent rights. Sprint's Exs. 2-6. Sprint's Response to No. 5: Disputed. In the Letters, Sprint identified "the

combinations of equipment and network architectures used by Vonage," which could be impacted by Sprint's Voice Over Packet portfolio of patents. (See Sprint's Responses to Fact Nos. 1-3, supra). Because Vonage only implemented a single telephony service at the time, this constituted identification of the Vonage product or service at issue. Vonage's Additional Fact No. 6: To the contrary, Sprint only identified the

patents it alleged Vonage infringed in its October 2005 Complaint. Id., see also Sprint's First Amended Complaint (Doc. No.2). Sprint's Response to No. 6: Disputed. Sprint provided Vonage with a CD

containing the Asserted Patents. Sprint's Reply to Vonage's Response to Sprint's Fact No. 8. Moreover, Sprint repeatedly, on five occasions, suggested to Vonage that Sprint's Voice Over Packet portfolio may be applicable to Vonage and that Sprint believed it necessary to enter into discussions to address the relevance of many patent claims to the combinations of equipment and

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network architectures that Sprint believed Vonage could have been using. (See Sprint Exhs. 2-6; See, e.g., Exh. 3). Vonage's Additional Fact No. 7: Sprint articulated no basis for its accusations

of infringement until it submitted is initial Expert Report in January 2007. See Sprint's Response to Vonage Holdings Corp.'s Interrogatory No.6, and its First, Second and Third Supplemental Responses thereto, attached as Exs. B to E. Sprint's Response to No. 7: Disputed. Sprint provided its initial infringement contentions to Vonage at least as early as March 20, 2006, in response to Vonage Holdings' First Set of Interrogatories to Sprint. (Exh. 26, Sprint's Responses to Vonage Holdings' First Set of Interrogatories, dated March 20, 2006, at 7-8 (Answer to Interrogatory No. 6) and Exhibit A, attached thereto, which provides element-by-element basis for accusations of infringement with respect to each of Sprint's Asserted Patents). Additionally, Sprint provided supplemental

contention on October 5, 2006. (Exh. 27, Sprint's Supplemental Infringement Contentions). III. RESPONSE TO VONAGE'S STATEMENT OF ALLEGEDLY MATERIAL FACTS NOT IN DISPUTE In support of its Opposition, Vonage proffered a statement of additional facts not in dispute. Sprint hereby responds to these facts as follows. A. Vonage's Claims as to 35 U.S.C. §112 ¶2 Vonage's Additional Fact No. 8: Every document authored by Mr. Christie

states that his invention was directed to an ATM system for voice communication. See SPRp-010 2 9 - 0 0 0 0 1 t o 0 0 0 2 3 ; S P R p - 0 1 - 0 2 9 0 0 0 3 4 t o 0 0 0 6 5 ; S P Rp - 0 l - 0 2 9 - 0 0 0 7 5 t o 0 0 1 0 4 a n d S P R p 0007-0l-00466 to 00791. For example, the PowerPoint presentation purportedly authored by Mr. Christie on or before October 13, 1993 and relied upon by Sprint as evidence of conception of the inventions claimed in the patents-in-suit, states on its first slide - "Purpose: To describe a

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new switched ATM/circuit network architecture" (SPRp-01-029-0000 1; attached as Ex. F). Similarly, a proposal to Sprint management authored by Mr. Christie and dated June 27, 1994, states "This project also tests concepts described in the Sprint patent application "Method, System and Apparatus for Telecommunications Control", filed May 6, 1994 [the ultimate parent of the patents-in-suit]. Both of these rely upon a new network element, the Call/Connection Manager, that can process signaling messages outside of current network elements and ultimately enables transparent migration of Sprint's voice traffic onto ATM." (SPRp-0l-02900078; attached as Ex. G). Sprint's Response to No. 8: Objection. The evidence relied upon by Vonage is irrelevant and immaterial for a 35 U.S.C. § 112, ¶ 2 analysis. Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000) ("[T]he inquiry under section 112, paragraph 2, now focuses on whether the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the patentee's right to exclude." Id. at 1379. As such, the only evidence material to a § 112, ¶ 2 analysis is the patents themselves and the material cited by Vonage should not be considered. Additionally, the question of what the Asserted Patents were "directed to" calls for a legal conclusion that must be assessed from the perspective of one of ordinary skill in the art. Id. Accordingly, Vonage's legal argument does not present a fact at all and should be stricken for failure to comply with the Court's local rules. If the Court considers Vonage's improper fact, Sprint responds as follows: Disputed. Some documents authored by Mr. Christie discuss ATM implementations of Mr. Christie's inventions. However, there are numerous other documents authored by Mr. Christie that also mention IP and other packet-switched networks. (See, e.g., Exh. 28, SPRp-

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01-029-00001 to 00017, at 00014, which discusses both "IP," "X.25," "Frame Relay," "Broadband," and other packet-switched networks, in addition to "ATM.").3 Vonage's Additional Fact No. 9: Sprint has p roduc ed no document t o s how

that Mr. Christie ever regarded his invention as including the Internet as a component. See id. Sprint's Response to No. 9: Objection. The question of what Mr. Christie

"regarded" as his invention calls for a legal conclusion that must be assessed in light of the patent claims and specification from the perspective of one of ordinary skill in the art. Solomon, 216 F.3d at 1380 ("Although we recognize that `which the applicant regards as his invention' is subjective language, once the patent issues, the claims and written description must be viewed objectively, from the standpoint of a person of skill in the art."). Such a legal question is not amenable to a "fact" and must be stricken for failure to comply with the Court's local rules. If the Court considers Vonage's improper fact, Sprint responds as follows: Disputed, and also immaterial. Sprint has produced the Asserted Patents themselves, whose specifications are the primary documents relevant to the issue of what Mr. Christie regarded as his invention. Extrinsic evidence is immaterial,4 but to the extent it is remotely relevant, Sprint has produced documents authored by Mr. Christie's that mention IP and other packet-switched networks. (See Sprint's Response to Fact No. 8, supra; see also infra Section V.A.2.). Vonage's Additional Fact No. 10: Sprint has also produced no document to show that Mr. Christie regarded an IP address as the "identifier" of the asserted claims. See id. Sprint's Response to No. 10: Objection. The question of what

Mr. Christie "regarded" as his invention calls for a legal conclusion that must be assessed from the perspective of one of ordinary skill in the art. Solomon, 216 F.3d at 1380 ("Although we
3

Vonage's excerpt of this powerpoint presentation (Vonage's Ex. F) only included the title page of this presentation. Sprint submits Exh. 28, which contains the full presentation. 4 Solomon, 216 F.3d at 1379. 22
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recognize that `which the applicant regards as his invention' is subjective language, once the patent issues, the claims and written description must be viewed objectively, from the standpoint of a person of skill in the art."). Moreover, "identifier" is a claim term in numerous asserted claims and Vonage's use of the term in this purported fact calls for a legal conclusion. See Markman, 517 U.S. at 372; see also Falko-Gunter Falkner, 448 F.3d 1357, 1363 (Fed. Cir. 2007); Emergis Technologies, Inc. v. Cable One, Inc., 2006 WL 2644969, *1 (D.Kan. Sept. 14, 2006) ("The construction of a patent, including terms of art within its claim, is a question of law."). Sprint cannot respond to the inherent legal conclusions outside the context of specific asserted claims and, accordingly, objects to Vonage's purported statement of fact. Such a legal question is not amenable to a "fact" and must be stricken for failure to comply with the Court's local rules. If the Court considers Vonage's improper fact, Sprint responds as follows: Disputed, and also immaterial. Sprint has produced the Asserted Patents themselves, whose claims and specifications are the primary sources relevant to the issue of what Mr. Christie regarded as his invention. Extrinsic evidence is immaterial,5 but to the extent it is remotely relevant, Sprint has produced documents authored by Mr. Christie's that mention IP and other packet-switched networks. (See Sprint's Response to Fact No. 8, supra). Vonage's Additional Fact No. 11: Sprint has produced no document to show that Mr. Christie regarded an "interworking device" to be anything other than an ATM interworking multiplexer. See id. Sprint's Response to No. 11: Objection. The question of what

Mr. Christie "regarded" as his invention calls for a legal conclusion that must be assessed from the perspective of one of ordinary skill in the art. Solomon, 216 F.3d at 1380 ("Although we
5

Solomon, 216 F.3d at 1379. 23

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recognize that `which the applicant regards as his invention' is subjective language, once the patent issues, the claims and written description must be viewed objectively, from the standpoint of a person of skill in the art."). Moreover, "interworking device" is a claim term in numerous asserted claims and Vonage's use of the term in this purported fact calls for a legal conclusion. See Markman, 517 U.S. at 372; see also Falko-Gunter Falkner, 448 F.3d at 1363; Emergis Technologies, Inc. v. Cable One, Inc., 2006 WL 2644969, *1 (D.Kan. Sept. 14, 2006) ("The construction of a patent, including terms of art within its claim, is a question of law."). Sprint cannot respond to the inherent legal conclusions outside the context of specific asserted claims and, accordingly, objects to Vonage's purported statement of fact. Such a legal question is not amenable to a "fact" and must be stricken for failure to comply with the Court's local rules. If the Court considers Vonage's improper fact, Sprint responds as follows: Disputed, and also immaterial. Sprint has produced the Asserted Patents themselves, whose claims and specifications are the primary sources relevant to the issue of what Mr. Christie regarded as his invention. Extrinsic evidence is immaterial,6 but to the extent it is remotely relevant, Sprint has produced documents authored by Mr. Christie's that mention IP and other packet-switched networks. (See Sprint's Response to Fact No. 8, supra). Vonage's Additional Fact No. 12: The testimony of current and former Sprint employees shows that Mr. Christie rejected the possibility of using the Internet as a part of his invention. See, e.g., transcript of the deposition of Michael J. Gardner at p. 51, lines 2-12 (attached as Ex. H). Sprint's Response to No. 12: Objection. The question of what

Mr. Christie "regarded" as his invention calls for a legal conclusion that must be assessed based on the patent claims and specification from the perspective of one of ordinary skill in the art.
6

Solomon, 216 F.3d at 1379. 24

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Solomon, 216 F.3d at 1380 ("Although we recognize that `which the applicant regards as his invention' is subjective language, once the patent issues, the claims and written description must be viewed objectively, from the standpoint of a person of skill in the art."). Additionally, testimony from current and former Sprint employees is irrelevant to this analysis. Id. at 1379. Such a legal question is not amenable to a "fact" and must be stricken for failure to comply with the Court's local rules. If the Court considers Vonage's improper fact, Sprint responds as follows: Disputed, and also immaterial. The portion of testimony cited by Vonage does not support its assertion. Contrary to Vonage's assertion, Mr. Gardner testified that Mr. Christie proposed to implement his solution "over packet technologies," and never said that Mr. Christie "rejected" using the Internet as part of his invention. (See Exh. 29, transcript of deposition of Michael J. Gardner at p. 50, lines 16-19).7 When asked which packet technologies Mr. Christie proposed implementing, Mr. Gardner explained that Sprint had both an ATM network and an IP network. (See id., at p. 50, line 20 to p. 51, line 1). Mr. Gardner also testified that Mr. Christie proposed implementing his invention on Sprint's much larger ATM network rather than its IP network solely "as a matter of convenience." (See id., at p. 51, lines 2-8). Vonage's assertion is also disputed because it only cites to one former Sprint employee and not multiple "employees" as its fact claims. In fact, another former Sprint employee, Mr. Albert Duree, also testified that Mr. Christie proposed using IP. (See Exh. 30, transcript of the 3/21/07 deposition Albert Duree, at p. 45, lines 5-16). According to Mr. Duree, Mr. Christie explained his decision to implement his invention using an ATM network rather than an IP network for Sprint's project because Sprint currently had a big ATM network. (See id.). Further, the Asserted Patents and their
7

Vonage's selected excerpt of the transcript takes Mr. Gardner's testimony out of context. Sprint submits Exh. 29, which contains additional testimony relevant to the statements cited by Vonage, and provides the necessary context for Mr. Gardner's statements. 25

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specifications are the primary documents relevant to the issue of what the inventor regarded as his invention and any extrinsic evidence cited by Vonage is immaterial. (See infra Section V.A.2.). Vonage's Additional Fact No. 13: Mr. Christie never authored or reviewed any of the claims being asserted by Sprint in this lawsuit. See the April 28, 2006 deposition of Michael J. Setter, Esquire, (attached as Ex. A) at p. 65, lines 3-16; p. 68, lines 1-13; p. 93, lines 4-9; 109, lines 9-25; p. 1 20, line 10 t o p. 121, line 10; p. 132, line 7, t o p. 1 33, line 7; p. 143, line 20, to p. 144, line 17; and p. 150, line 7, t o p. 151, line 11. Sprint's Response to No. 13: Undisputed, but immaterial. Though

Mr. Christie did not author or review the exact text of the claims being asserted in this lawsuit, Mr. Christie did review the specifications upon which the asserted claims are based. See Sprint's Response to Fact No. 13. Vonage's Additional Fact No. 14: Every asserted claim at issue here was first drafted by Sprint's patent attorneys at least three (3) years after Mr. Christie had died. See id. Sprint's Response to No. 14: Disputed in part, and immaterial. The cited

testimony only indicates that some of the patent applications from which the asserted claims issued were filed with the USPTO at least three years after Mr. Christie died. Mr. Setter only testified with respect to the date of drafting in regard to two of these applications. Specifically, he stated that he drafted the claims for U.S. Appl. No. 09/499,874 (now the `932 patent) "in the time frame of February 7, 2000," (See Vonage's Ex. A, at p. 150, lines 17-18), and that he drafted the claims for U.S. Appl. No. 10/212,503 (now the `294 patent) "before '02." (See Vonage's Ex. A, at p.109, lines 20-21). Further, two of the applications (U.S. Appl. No. 09/082,182, now the `052 patent, and U.S. Appl. No. 09/082,048, now the `572 patent) from

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which two of the Asserted Patents issued were filed on May 20, 1998, just over two years after Mr. Christie died (in February 1996), which Vonage admitted in Fact No. 47, infra. (See Sprint's Exhs. 14 and 16, patent cover sheets; see also Vonage's Ex. A, at p. 120, line 10 to p. 121, line 10; p. 143, line 20 to p. 144, line 17. ). Mr. Setter did not testify as to when he drafted the claims filed with these two applications. See id. Vonage's Additional Fact No. 15: In the parent application of the patents-insuit that was filed while Mr. Christie was still alive and whose claims Mr. Christie reviewed, each of the independent claims contained limitations directed to elements described in Mr. Christie's initial disclosure documents, such as an "ATM interworking multiplexer". See the April 28, 2006 deposition of Michael J. Setter, Esquire, (attached as Ex. A) at p. 53, line 12, to p. 6 5 , l i n e 2. Sprint's Response to No. 15: Disputed. In the very first parent application

(U.S. Pat. Appl. No. 08/238,605 ("the `605 application"), filed May 5, 1994) of the patents-insuit that was filed while Mr. Christie was still alive and reviewed by Mr. Christie, none of the independent claims contained "ATM" limitations. (See Exh. 31, excerpt from file history of U.S. Pat. Appl. No. 08/568,551 ("the `551 application"), which contains the file history of U.S. Pat. Appl. No. 08/238,605, at pp. 42-54 of the application [SPRe-022-01-00285 to 297]). The testimony of Mr. Setter cited by Vonage only refers to U.S. Pat. Appl. No. 08/525,897 ("the `897 application"), which is a continuation-in-part of the `605 application and which was filed after the original `605 application. The `897 application is only a parent application with respect to three of the patents-in-suit (the `429 patent, the `064 patent, and the `294 patent). (See Sprint's Exhs. 18-20, cover sheets of patents). The other four asserted patents (the `572 patent, the `932 patent, the `052 patent, and the `561 patent) are continuations of the `551 application, which was

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a continuation of the `605 application. (See Sprint's Exhs. 14-17, cover sheets of patents). (See also Vonage's Fact No. 27, infra). Vonage's Additional Fact No. 16: Following Mr. Christie's death, Sprint removed these limitations from its claims. See id.,e.g., at p. 68, lines 1-13. Sprint's Response to No. 16: Disputed. As discussed above, the parent

`605 application, the first parent application that was filed, contained only a single dependent claim containing an ATM limitation8, which was not removed from the application. (See Exh. 31, excerpts from `551 file history, which contains `605 file history, at SPRe-022-01-00292 (original claim 45) and SPRe-022-01-00601 (issued claim 61); see also Sprint's Response to No. 15, supra). The original ATM limitation in the single dependent claim remained throughout prosecution and is present in an issued claim of U.S. Patent 5,825,780, which issued as a file wrapper continuation from the original `605 application. (See id., at SPRe-022-01-00601). Further, as discussed above, the cited testimony of Mr. Setter does not discuss claims of the parent