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

Filing 264

MEMORANDUM AND ORDER denying 196 Motion to Exclude; granting in part and denying in part 198 Motion for Partial Summary Judgment; granting in part and denying in part 200 Motion for Summary Judgment; overruling 210 Motion for Review; granting 215 Motion to Strike, and granting 245 MOTION to Strike Arguments Raised for the First Time by Vonage in its Summary Judgment 237 Reply Brief. Signed by Judge John W. Lungstrum on 8/7/2007. (ses)

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

Doc. 264

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 1 of 103

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS SPRINT COMMUNICATIONS COMPANY L.P., Plaintiff, v. VONAGE HOLDINGS CORP. and VONAGE AMERICA, INC., Defendants. Case No. 05-2433-JWL

MEMORANDUM AND ORDER I. Introduction In this lawsuit plaintiff Sprint Communications Company L.P. alleges that the voice over internet protocol telephony system of defendants Vonage Holdings Corp. and Vonage America, Inc. (Vonage) infringes sixty-one claims of seven telecommunications patents owned by Sprint. This matter is currently before the court on the parties' various pretrial motions. In the first set of motions, Vonage seeks summary judgment of non-infringement and Sprint moves to strike certain portions of Vonage's brief in support of its motion for summary judgment as well as its subsequent reply brief (docs. #200, #215 & #245). The second set of motions relates to Vonage's affirmative defenses and includes Sprint's motion for partial summary judgment on most of those defenses, Vonage's Rule 56(f) motion in response to Sprint's motion for partial summary judgment, and Sprint's motion to exclude

Dockets.Justia.com

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 2 of 103

the non-infringement opinion of Vonage's expert Joel M. Halpern (docs. #196, #198 & #218). Vonage has also filed objections to the magistrate judge's orders of May 14 and 16, 2007 (doc. #210) in which the magistrate judge excluded certain matters from the final pretrial order in this case. As to the first set of motions, for the reasons explained below, Sprint's motions to strike are largely granted. Many of the arguments raised by Vonage in Sections II, III, and IV of its opening brief do not comply with the rules governing summary judgment practice in this court and therefore the court will disregard those improperly supported factual assertions except to the extent that they appear to be uncontroverted and helpful to an understanding of the case. Additionally, the court will not consider the arguments raised by Vonage for the first time in its reply brief because Vonage should have raised those arguments in its opening brief. Turning to Vonage's motion for summary judgment, that motion is granted with respect to the issue of literal infringement of the claim terms "interworking device" and "interworking unit" in the `301 Family Patents, which the court construes to mean ATM interworking multiplexer, because it is undisputed that the Vonage system does not use ATM technology, and therefore does not contain an ATM interworking multiplexer. As to the `605 Family Patents, it is granted as to the following issues: the issue of non-infringement of the asserted claims of the `932 Patent in the inbound call scenario; the issue of literal infringement of the limitation in claim 24 of the `561 Patent that the processing system must select a network code and use that network code to route the user communication; the issue of infringement of the asserted claims of the `052 Patent in the
2

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 3 of 103

inbound scenario using an SIP gateway; and the issue of non-infringement of the asserted claims of the `572 Patent in the inbound call scenario. Vonage's motion is denied with respect to all of the other summary judgment arguments raised by Vonage, as either Vonage did not meet its initial summary judgment burden of informing the court of a valid basis for its motion or else the summary judgment record presents a genuine issue of material fact which precludes summary judgment of non-infringement. Sprint's motion for partial summary judgment on Vonage's affirmative defenses and counterclaims is largely granted. Specifically, it is denied with respect to (1) the statutory marking and notice requirements set forth in 35 U.S.C. § 287, and (2) Vonage's defense and counterclaim of non-infringement. As to all other issues, the motion is granted. To the extent that Vonage's memorandum in opposition to Sprint's motion seeks relief under Rule 56(f), Vonage's Rule 56(f) motion is denied because Vonage has not demonstrated how additional time for discovery would enable it to rebut Sprint's allegations that there is no genuine issue of fact sufficient to preclude summary judgment on Vonage's equitable defenses. In denying summary judgment on Vonage's non-infringement defense and counterclaim, the court also denies Sprint's motion to exclude Mr. Halpern's noninfringement opinion. Lastly, as to Vonage's objections and motion to review the magistrate judge's orders of May 14 and 16, 2007, the court first finds that Sprint has demonstrated good cause why it failed to respond to Vonage's objections in a timely fashion. The substance of Vonage's

3

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 4 of 103

objections are overruled because the magistrate judge's rulings were not clearly erroneous or contrary to law.

II. Nature of the Case and Background of the Technology Involved In the summer of 1993, Joe Christie, an employee at Sprint's Advanced Technology Laboratory, invented a new telecommunications system. Mr. Christie was a unique expert in two very dissimilar disciplines: SS7 signaling and packet networks. SS7 signaling is the language used by conventional telephone networks to set up calls and communicate between telecommunications components in the Public Switched Telephone Network (PSTN). In 1993, virtually all voice traffic was carried over the PSTN using switches and other wellestablished components. PSTN is "synchronous" in that every component along a circuit must be synchronized in order for communications to successfully cross the network. Packet networks are entirely different. These networks use "packets" to transport data from point to point. Packets are digital transport units that include a header and a payload. Packet networks are "asynchronous" in that the transmitting and receiving points act out of sync with one another, sending and receiving packets within a message without regard to the timing of one another. Joe Christie essentially devised a way to combine the two types of systems to create a more efficient system. He invented a series of components and architectures of components that would allow the PSTN to "talk" to packet networks and intelligently set up and route telephone calls across the disparate networks. Mr. Christie's invention was significant in that it had the potential to render obsolete major components
4

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 5 of 103

within the PSTN, breaking the grip that a handful of switch manufacturers held on service providers like Sprint. Sprint immediately began the process of patenting Mr. Christie's invention.1 In the following years, Mr. Christie's inventions and the related innovations made by people working with him resulted in a patent portfolio of well over one hundred issued United States patents. The portfolio is one of the largest project portfolios in the United States. In the summer of 2004, Sprint became aware that Vonage was offering residential telephone services that used the Internet to connect calls to and from the PSTN. Vonage's system is known as VoIP (Voice over Internet Protocol). VoIP transmits calls over the Internet using voice packets, each of which contains a header with an IP address and a user datagram protocol port which are used to route the packet. The Vonage system performs this by using a series of components such as switches, connections, gateways, proxies, and signals. Vonage has grown to become one of the largest subscriber-based VoIP service providers in North America. Sprint filed this lawsuit in October of 2005, asserting infringement of sixty-one claims from seven representative patents from its patent portfolio. The patents in suit can be divided into essentially two groups: the `301 Family Patents and the `605 Family Patents. The `301 Family Patents include U.S. Patent Nos. 6,473,429 (the `429 Patent), U.S. Patent No. 6,665,294 (the `294 Patent), and U.S. Patent No. 6,298,064 (the `064 Patent). These three

1

Mr. Christie died unexpectedly in February of 1996.
5

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 6 of 103

patents are collectively referred to as the `301 Family Patents because they all share an identical written description and drawings with U.S. Patent No. 5,991,301 and were filed as continuation applications of the `301 Patent. For priority purposes they all claim the filing date of the `301 Patent, which is September 8, 1995. Each of these patents is entitled "Broadband Telecommunications System," and generally discloses an invention which is "a system for providing virtual connections through an ATM interworking multiplexer on a callby-call basis." `429 Patent, Abstract. The `605 Family Patents include U.S. Patent No. 6,452,932 (the `932 Patent), U.S. Patent No. 6,304,572 (the `572 Patent), U.S. Patent No. 6,463,052 (the `052 Patent), and U.S. Patent No. 6,633,561 (the `561 Patent). These four patents are collectively referred to as the `605 Family Patents because they all share an identical written description and drawings with U.S. Patent Application No. 08/238,605 (the `605 Application, now abandoned) and were filed as continuation applications to the `605 Application. For priority purposes they all claim the filing date of the `605 Application, which is May 5, 1994. Each of these patents is entitled "Method, System and Apparatus for Telecommunications Control," and generally discloses an invention that "includes a method, system, and apparatus for providing communication control." `932 Patent, Abstract. Vonage disputes Sprint's allegations that its VoIP system infringes any claims of the asserted patents, either literally or under the doctrine of equivalents. Vonage also asserts that the patents in suit are invalid as anticipated, obvious, and for failure to comply with the written description, enablement, and definiteness requirements, as well as being
6

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 7 of 103

unenforceable under the doctrines of laches (including prosecution laches), estoppel and acquiescence, unclean hands, that a patentee "may not broaden his claims by describing the product in terms of function," and by virtue of their misuse by Sprint. After well more than a year of discovery, the parties have now filed various motions in an attempt to set the stage for the trial of this case. Vonage seeks summary judgment of non-infringement. Sprint of course opposes the motion and, additionally, has filed motions asking the court to strike or disregard significant portions of Vonage's brief in support of its motion for summary judgment as well as new arguments raised by Vonage in its reply brief. Sprint also seeks partial summary judgment on many of the affirmative defenses asserted by Vonage. On a related note, Sprint has filed a motion to exclude the opinions of Vonage's expert as to non-infringement issues. And, Vonage has filed objections to the magistrate judge's orders of May 14 and 16, 2007, in which the magistrate judge denied Vonage's motion to amend its answer to assert certain affirmative defenses and struck Vonage's related legal and factual contentions from the final pretrial order in this case. The court will begin with the heart of the matter, which is Vonage's motion for summary judgment directed at Sprint's patent infringement claims.

III. Vonage's Motion for Summary Judgment Vonage contends that it is entitled to summary judgment as to all of the asserted claims of the patents in suit. Its overriding theory with respect to the asserted claims of the `301 Family Patents is that one of ordinary skill in the art would understand the invention of
7

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 8 of 103

the `301 Family Patents to be related solely to Asynchronous Transfer Mode (ATM) technology. Vonage contends that, when the claim terms are properly construed in view of this invention, its system cannot be found to infringe several elements of the claims because its system does not use ATM technology. Its overriding theory with respect to the `605 Family Patents is that one of ordinary skill in the art reviewing the `605 Family Patents' specification in its entirety would conclude that the invention of the `605 Family Patents relates to a signal processor which is external to the communications path. Based on this distinction, Vonage contends that its system does not infringe various asserted limitations of the `932, `572, `052, and `561 Patents. A. Statement of Material Facts 1. Sprint's Motion to Strike or Disregard Portions of Vonage's Brief in Support of Its Motion for Summary Judgment

In order to properly resolve Vonage's motion for summary judgment, the court must first consider the arguments raised in Sprint's motion to strike or disregard portions of Vonage's brief in support of its motion for summary judgment. Therein, Sprint asks the court to strike certain portions of the "facts" contained in Vonage's brief because they contain improper argument, unsubstantiated allegations, and inaccurate recitations to the record. Specifically, Sprint contends that Vonage has failed to provide proper factual support for Sections II, III, and IV (except Vonage's Fact 4, which Sprint admits) of its brief in violation of D. Kan. Rule 56.1. The court agrees. Even in the absence of Sprint's motion, the court was struck by many of the same deficiencies in Vonage's brief.
8

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 9 of 103

This court's local rules, specifically D. Kan. Rule 56.1, set forth this court's summary judgment practice. Initially, [t]he memorandum or brief in support of a motion for summary judgment shall begin with a section that contains a concise statement of material facts as to which the movant contends no genuine issue exists. The facts shall be numbered and shall refer with particularity to those portions of the record upon which the movant relies. D. Kan. Rule 56.1(a). The party opposing the motion for summary judgment must respond in a similar fashion. Id. Rule 56.1(b). In doing so, the response must "fairly meet the substance of the matter asserted." Id. Rule 56.1(e). District courts have discretion in applying local rules such as these. Vittoria N. Am., L.L.C. v. Euro-Asia Imports Inc., 278 F.3d 1076, 1081 (10th Cir. 2001) (considering a similar local rule governing summary judgment practice in the Western District of Oklahoma). In this case, Sections II, III, and IV of Vonage's brief in support of its motion for summary judgment do not comply with these rules. These sections of Vonage's brief are largely cluttered with improper attorney argument and commentary as well as legal conclusions, none of which are "facts as would be admissible in evidence." Fed. R. Civ. P. 56(e). To the extent that these sections do actually contain facts which might be admissible in evidence, the facts are not adequately supported by appropriate citations to the record. For example, the five pages comprising Section II, entitled "The Sprint Patents," generally describe the patents in suit. This section is not set forth in numbered paragraph format. It contains mostly argument, attorney commentary, and conclusory statements regarding the patents and technology at issue, with only cursory citations to the record. Vonage's
9

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 10 of 103

purported "factual" description of the Sprint patents in Section II is actually attorney argument that roughly paraphrases the patent disclosures to support Vonage's contentions in this case and, notably, selectively omits those portions of the patents which do not. Section III, entitled "The Vonage System," contains nearly eight pages that generally describe Vonage's allegedly infringing system. It suffers from the same flaws as Section II. Additionally, it is even more troubling because it contains paragraphs, some of which are lengthy, which purport to describe Vonage's technologically complex system with nothing more than a single cursory citation to the record at the end of each paragraph. This makes it virtually impossible for the court to determine what, if any, portions of the record Vonage is relying on to support each of the statements which allegedly describes its system. The problems with Sections II and III are compounded even further in Section IV, Vonage's purported "Statement of Undisputed Material Facts," which contains numerous references to "The Vonage System" described in Section III to support other conclusory statements that Vonage contends are undisputed material facts. Additionally, Section IV is permeated with purported "facts" which, in reality, call for legal conclusions rather than facts that would be admissible as evidence. Vonage contends that its approach to the summary judgment record complies with "the spirit of" this court's summary judgment practices. The court disagrees. One of the purposes of this court's summary judgment rules is to create a clean record to which the opposing party can respond and on which the court can effectively and efficiently rule. The technological and legal complexity of this case, in particular, demands compliance with these
10

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 11 of 103

rules. Vonage has no legitimate excuse for its decision to ignore these rules, as Vonage is represented by sophisticated counsel and competent local counsel who should be familiar with this court's rules governing summary judgment practice. Indeed, given Vonage's ample representation by counsel, the court wonders if Vonage's failure to abide by this court's summary judgment rules may have been a tactical decision. In any event, the prejudicial problems with Vonage's approach is that attorney arguments are interlaced with purported facts and entire pages of purported facts are supported by generalized citations to the record. Neither Sprint nor the court can or should be forced to sift through the record to determine whether Vonage is relying on mere argument or whether there is some support in its broad citations. This is not a case in which the court is considering nothing more than whether to overlook mere unnumbered fact paragraphs by a non-moving party. Here, Vonage is seeking affirmative relief--judgment on the merits--based on a summary judgment record which Vonage has chosen to present in a manner so convoluted and cumbersome that it is unrealistic to expect the non-moving party (Sprint) to be able to fairly meet the substance of the complex factual matters asserted by Vonage. Under these circumstances, Vonage's noncompliance is unfair to Sprint, and the court will not search through the summary judgment record to help Vonage meet its summary judgment burden of demonstrating that it is entitled to judgment as a matter of law. See Cross v. Home Depot, 390 F.3d 1283, 1290 (10th Cir. 2004) (on summary judgment the parties must "ensure that the factual dispute is portrayed with particularity, without . . . depending on the trial court to conduct its own search of the record" (quotation omitted)).
11

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 12 of 103

Accordingly, the court will grant Sprint's motion to the extent that it will largely disregard the arguments set forth in Sections II, III, and IV of Vonage's brief in support of its motion for summary judgment. The motion is denied only in the sense that the court will consider the intrinsic evidence, such as the patents in suit, in construing the disputed claim terms. Thus, for example, the court will disregard Vonage's loose interpretations of those patents as set forth in Section II, and instead will look directly to the patents themselves. As to the remainder of the parties' asserted facts, consistent with the well established standard for evaluating a motion for summary judgment, the following facts are either uncontroverted or stated in the light most favorable to Sprint, the nonmoving party. 2. Statement of Material Facts a. Facts Pertinent to the `301 Family Patents

The parties' arguments concerning the asserted claims of the `301 Family Patents (the `429, `294, and `064 Patents) are primarily directed to claim construction. As such, the court will evaluate the intrinsic record, consisting of the patents-in-suit, in resolving the parties' claim construction arguments. The facts from those patents which are relevant to the court's claim construction analysis will be discussed in detail below. The only other evidence pertinent to the court's claim construction analysis is the fact (a fact which is undisputed by Vonage) that one of skill in the art would understand that the "asynchronous transfer mode virtual identifier" of claim 23 of the `294 Patent is an ATM virtual path identifier/virtual channel identifier (VPI/VCI) pair.

12

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 13 of 103

As will be discussed in more detail below, the court construes the disputed claim term "identifier" to mean data for routing user information in a packet network. The summary judgment record, viewed in the light most favorable to Sprint, establishes that in the Vonage system voice packets are in IP format and include a destination IP address. The destination IP address is used for routing the voice packets in a packet network to the destination network endpoint. Thus, Sprint contends that this destination IP address constitutes the claimed "identifier." Other disputed claim terms are "interworking device" and "interworking unit." As discussed below, the court construes these claim terms to mean ATM interworking multiplexer. The parties agree that the Vonage system does not use ATM technology, and hence apparently does not include an ATM interworking multiplexer. Sprint nonetheless contends that Vonage's system infringes this claim limitation under the doctrine of equivalents by virtue of the gateways in the Vonage system. The summary judgment record submitted by Sprint establishes that the Vonage system includes Session Initiation Protocol (SIP) gateways and media gateways. The gateways receive narrowband telecommunications audio signals from the PSTN and convert those signals into packets in the form of VoIP packets. Thus, the Vonage gateways convert narrowband telecommunication signals into packets, just as the ATM interworking multiplexers disclosed in the `301 Family Patents convert narrowband telecommunication signals into packets. Additionally, the Vonage gateways receive voice data as 8-bit DS0 signals and assemble them into packets with a header appended thereto, which are transmitted onto a packet network, just as the ATM
13

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 14 of 103

interworking multiplexers disclosed in the `301 Family Patents receive voice data as 8-bit DS0 signals and assemble them into packets with a header appended thereto, which are transmitted onto a packet network. The final disputed claim term with respect to the `301 Family Patents is "asynchronous communication." As explained below, the court finds that this claim term does not need to be further construed. The term "asynchronous" is a term of art in the communications field that refers to communications where the transmitting and receiving devices do not communicate based on a synchronized clock. IP communication (such as that at issue in Vonage's VoIP system) does not require a synchronized timing relationship. Thus, it is asynchronous. b. Facts Pertinent to the `605 Family Patents

The parties' arguments concerning infringement of the `605 Family Patents relate largely to the manner in which the Vonage system operates. For reasons discussed previously, the court will largely disregard Vonage's purported "facts" relating to operation of the Vonage system (due to Vonage's failure to abide by the governing summary judgment rules) except to the limited extent that those facts are helpful to an overall understanding of the Vonage system, are otherwise immaterial to the court's resolution of the disputed summary judgment issues, and appear to be uncontroverted by Sprint. The court will of course consider the relevant portions of the patents' specifications, where relevant. But, otherwise, the court will accept as true Sprint's description of the Vonage system, consistent with the well established summary judgment standard that the court must view the evidence
14

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 15 of 103

in the light most favorable to Sprint, as the non-moving party. The Vonage system operates in essentially three relevant call scenarios: (1) outbound calls, (2) inbound calls, and (3) calls using an RTP relay in a NAT'd scenario. i. Outbound Calls (From a Vonage Customer to a PSTN Number)

In an outbound call scenario (from a Vonage customer to a PSTN number), a Vonage user dials the called party's telephone number. The Vonage user's Terminal Adapter (TA) receives the dialed number and sends it to the Vonage outbound proxy. The outbound proxy performs a lookup using the dialed number to select an appropriate signaling gateway. The outbound proxy signals the signaling gateway. The signaling gateway performs a longest match comparison on the dialed number and a load balancing algorithm to select a specific circuit (circuit identification code, or CIC) to extend the call to the PSTN. The identification of a CIC includes information that identifies a specific media gateway that will be used to complete the outbound call. The signaling gateway sends a Create Connection (CRCX) message to the identified media gateway. The media gateway generates information which includes the media gateway's selection of a public IP address. The identified media gateway, after receiving the CRCX message from the signaling gateway, provides its public IP address to the signaling gateway. The signaling gateway processes the information from the media gateway and then creates signaling in the form of an SIP 183 Session in Progress or 200 OK message to identify the media gateway to the Vonage TA so that the call can be completed. When the TA receives the 200 OK message from the signaling gateway, the call can be

15

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 16 of 103

completed. The media gateway selects a DS0 connection to connect to a PSTN switch. A DS0 is connected to only one media gateway and only one PSTN switch. According to a declaration submitted by Sprint's technical expert, Dr. Stephen B. Wicker, in the `932 Patent, one of ordinary skill in the art would not find any disclosure of the processing system selecting a DS0 and not selecting a narrowband switch because the patent recognizes that selecting a connection necessarily also selects a network element. Dr. Wicker's declaration also states that by identifying and selecting the network codes of the respective opposite endpoints, in light of the `572 Patent's claims and specification, one of ordinary skill in the art would recognize that the processing system has selected a "connection" between those two endpoints. ii. Inbound Calls (From a PSTN Number to a Vonage Customer)

An inbound call is received, first, through a PSTN switch. The PSTN switch is connected to the Vonage SIP gateway. When the Vonage gateway receives signaling from the PSTN switch, the gateway generates signaling to a Vonage inbound proxy. The Vonage inbound proxy receives the called number from Vonage's SIP gateway (which received the called number from the PSTN). The inbound proxy processes the called number to determine the identity of the Vonage user and to identify the user's TA. The inbound proxy signals the outbound proxy associated with the identified TA. When the outbound proxy receives an SIP invite from the inbound proxy, it already has the IP address of the identified TA. The outbound proxy signals the TA using the known IP address to set up the call. If the call is answered by the Vonage customer, the TA will reply to the outbound proxy with an
16

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 17 of 103

SIP 200 OK message. The 200 OK message transmitted from the TA to the outbound proxy includes the IP address of the TA. Once the SIP gateway receives the 200 OK message, it signals the PSTN switch to send the audio from the call. The audio arrives from the PSTN switch over a DS0 channel which forms the connection between the PSTN switch and the SIP gateway. The SIP gateway converts the information in the DS0 into voice packets and sends them over the internet to the TA using the TA's address. The TA converts the voice packets received from the SIP gateway into an analog signal, which is converted to audible voice by the Vonage subscriber's conventional phone. At the other end, the TA converts the analog signal from the Vonage subscriber's conventional phone to packets with the SIP gateway's address in the header, which are then sent to the SIP gateway. For an inbound call to a non-NAT'd (the meaning of NAT is discussed below) Vonage customer, the audio IP address in the Session Description Protocol (SDP) portion of the 200 OK message is the same IP address used by the outbound proxy to signal the TA. According to a declaration submitted by Dr. Wicker, in light of the claims and the specification of the `052 and `561 patents, one of ordinary skill would recognize that the phrase "select[ing] the network code" is not limited to a process performed exclusively by a single system. The Vonage network implements certain inbound calls through a Virginia point-ofpresence using a Sonus architecture that includes a separate signaling gateway. In the Sonus

17

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 18 of 103

architecture, the signaling gateway receives signaling from a narrowband network in a narrowband SS7 format. iii. NAT'd Calls Using an RTP Relay

When a Vonage customer's TA is behind a router that employs Network Address Translation (NAT), it has a private IP address which is not publicly routable. Calls to and from a TA behind a NAT are called NAT'd. To account for a NAT'd TA, the processing system invokes the use of a Real Time Protocol (RTP) relay. For a NAT'd inbound call, the processing system instructs the media gateway to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the TA that the Vonage processing system selected. Packets from the Vonage gateways addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the TA. For a NAT'd outbound call, the processing system instructs the TA to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the media gateway that the Vonage processing system selected. Packets from the TA addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the media gateway. The use of an RTP relay is entirely invisible to the endpoint devices as well as to the end users of the telephone system, as the called and calling parties cannot tell whether a call is NAT'd. The TA and media gateway operate in the same manner regardless of whether RTP relays are involved. User communications are transported between the Vonage
18

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 19 of 103

gateways and TAs even when the TA is NAT'd. According to Dr. Wicker's declaration, from the perspective of one of ordinary skill in the art, in the context of the `561 and `052 Patents' asserted claims, any differences in the way the user communications are transferred between end users in NAT'd and non-NAT'd calls are insubstantial. B. Applicable Legal Standards 1. Claim Construction

Claim construction is governed by the methodology set forth by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). It is a bedrock principle of patent law that the claims of the patent define the patentee's invention. Id. at 1312. Thus, claim construction begins with the words of the claim itself. Id. The words of a claim should be given their ordinary and customary meaning as understood by a person of ordinary skill in the art in question at the time of the invention. Id. at 1312-13. "[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms." Id. at 1314. Both "the context in which a term is used in the asserted claim" and the "[o]ther claims of the patent in question" are useful for understanding the ordinary meaning. Id. The claims do not stand alone, but are part of "a fully integrated written instrument." Id. at 1315. Therefore, they "must be read in view of the specification, of which they are a part." Id. (quotation omitted). In fact, the specification is "the single best guide to the meaning of a disputed term" and is often dispositive. Id. The specification may reveal a special definition given to a claim term, or may reveal the inventor's intentional disclaimer or disavowal of claim scope. Id. at 1316. In both instances, the specification serves to
19

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 20 of 103

express the correct claim scope as dictated by the inventor. Id. The fact that the specification includes limited and specific embodiments is insufficient to define a term implicitly, and it is improper to confine the scope of the claims to the embodiments of the specification. Id. at 1323. "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Id. at 1316 (quotation omitted). The court should also consult the patent's prosecution history, if in evidence. Id. at 1317. Like the specification, the prosecution history "provides evidence of how the PTO and the inventor understood the patent." Id. "Yet because the prosecution 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." Id. Finally, the court may consult extrinsic evidence such as expert and inventor testimony, dictionaries, and learned treatises. Id. These have all been recognized as tools that can assist the court in determining the meaning of particular terminology. Id. at 1318. Extrinsic evidence may be helpful to the court in understanding the technology or educating itself about the invention. Id. 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 the court with a better understanding of the underlying technology and the way in which one skilled in the art might use the claim terms. Id. at 1318. "However, conclusory, unsupported assertions by experts as to the definition of a claim term
20

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 21 of 103

are not useful to a court." Id. Extrinsic evidence is less reliable than intrinsic evidence in determining the construction of claim terms, and therefore the court should discount any expert evidence that is at odds with the intrinsic evidence. Id. 2. Summary Judgment

Summary judgment is appropriate if the moving party demonstrates that there is "no genuine issue as to any material fact" and that it is "entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). In applying this standard, the court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party. Spaulding v. United Transp. Union, 279 F.3d 901, 904 (10th Cir. 2002). A fact is "material" if, under the applicable substantive law, it is "essential to the proper disposition of the claim." Wright ex rel. Trust Co. v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001) (citing Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998)). An issue of fact is "genuine" if "there is sufficient evidence on each side so that a rational trier of fact could resolve the issue either way." Adler, 144 F.3d at 670 (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The moving party bears the initial burden of demonstrating an absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Spaulding, 279 F.3d at 904 (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)). In attempting to meet that standard, a movant that does not bear the ultimate burden of persuasion at trial need not negate the other party's claim; rather, the movant need simply point out to the court a lack

21

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 22 of 103

of evidence for the other party on an essential element of that party's claim. Adams v. Am. Guar. & Liab. Ins. Co., 233 F.3d 1242, 1246 (10th Cir. 2000) (citing Adler, 144 F.3d at 671). Once the movant has met this initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Spaulding, 279 F.3d at 904 (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)); see also Anderson, 477 U.S. at 256; Celotex, 477 U.S. at 324. The nonmoving party may not simply rest upon its pleadings to satisfy its burden. Anderson, 477 U.S. at 256; Eck v. Parke, Davis & Co., 256 F.3d 1013, 1017 (10th Cir. 2001). Rather, the nonmoving party must "set forth specific facts that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant." Mitchell v. City of Moore, 218 F.3d 1190, 1197-98 (10th Cir. 2000) (quoting Adler, 144 F.3d at 671). To accomplish this, the facts "must be identified by reference to an affidavit, a deposition transcript, or a specific exhibit incorporated therein." Adams, 233 F.3d at 1246. Finally, the court notes that summary judgment is not a "disfavored procedural shortcut"; rather, it is an important procedure "designed `to secure the just, speedy and inexpensive determination of every action.'" Celotex, 477 U.S. at 327 (quoting Fed. R. Civ. P. 1). C. Analysis For the reasons explained below, Vonage's motion for summary judgment is largely denied. Specifically, it is granted with respect to the issue of literal infringement of the claim terms "interworking device" and "interworking unit" in the `301 Family Patents, which the
22

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 23 of 103

court construes to mean ATM interworking multiplexer, because it is undisputed that the Vonage system does not use ATM technology, and therefore does not contain an ATM interworking multiplexer. As to the `605 Family Patents, it is granted as to the following issues: the issue of non-infringement of the asserted claims of the `932 Patent in the inbound call scenario; the issue of literal infringement of the limitation in claim 24 of the `561 Patent that the processing system must select a network code and use that network code to route the user communication; the issue of infringement of the asserted claims of the `052 Patent in the inbound scenario using an SIP gateway; and the issue of non-infringement of the asserted claims of the `572 Patent in the inbound call scenario. Vonage's motion is denied in all other respects. 1. The `301 Family Patents

Vonage's argument in support of its motion for summary judgment with respect to the `301 Family Patents is premised on its proposed claim construction. Vonage contends that one of ordinary skill in the art would view the inventions disclosed in the `301 Family Patents as relating solely to ATM technology, and therefore the court should construe certain claim terms accordingly. Specifically, Vonage asks the court to construe the claim term "identifier" to mean a VPI/VCI combination; the claim terms "interworking device" and "interworking unit" to mean ATM interworking multiplexer; and the claim term "asynchronous communication" to mean ATM communication. It is undisputed that

Vonage's VoIP system does not use ATM technology and therefore, according to Vonage, those claim elements cannot be found in the Vonage system.
23

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 24 of 103

Vonage's argument is grounded in the specification shared by the `301 Family Patents. The abstract describes the invention as follows: The invention is a system for providing virtual connections through an ATM interworking multiplexer on a call-by-call basis. A signaling processor receives signaling for a call and selects the virtual connection for the call. The signaling processor generates new signaling that identifies the selection and transfers the new signaling to the ATM interworking multiplexer that accepted the access connection for the call. The multiplexer converts user information from the access connection into ATM cells for transmission over the virtual connection in accord with the new signaling. `294 Patent, Abstract. Additionally, the background section frames the invention as being specific to problems formerly associated with ATM networks. It describes the existing need in the art to provide virtual connection switching in ATM networks on a call-by-call basis using ATM multiplexers rather than the more complex ATM switches that were in development at the time of the invention. The summary of the invention describes the system as comprising "an ATM interworking multiplexer and a signaling processor linked to the ATM interworking multiplexer." `294 Patent, col. 2, ll. 14-17. The summary continues to refer to the invention as including an ATM interworking multiplexer, it discusses converting and transmitting ATM cells, and it states that the system includes an ATM adaption processor and ATM interface. The summary concludes as follows: In various embodiments, the invention accepts calls placed over DS0 voice connections and provides virtual connections for the calls. In this way, broadband virtual connections can be provided to narrowband traffic on a callby-call basis without requiring the call processing and signaling capability of an ATM switch.

24

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 25 of 103

`294 Patent, col. 2, ll. 65-67 & col. 3, ll. 1-3. The detailed description describes various versions of the invention with references to diagrams. Suffice it to say without delving into further detail that the common specification shared by the `301 Family Patents certainly appears to support the proposition advanced by Vonage that the inventions disclosed in the written description relate to ATM technology. The pivotal issue is the impact of that specification on the meaning of the claim terms themselves. The Federal Circuit addressed the significance of the written description in its landmark opinion on patent claim construction in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the basic principles of which are set forth in the claim construction standards set forth above. In particular, with respect to the significance of a patent's written description, the Federal Circuit noted that "claims must always be read in view of the specification, of which they are a part." Id. at 1315 (quotation omitted). The specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Id. (quotation omitted). The specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, in which case the inventor's lexicography governs. Id. at 1316. In other cases, it may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor, in which case the inventor has dictated the correct claim scope and that invention, as expressed in the specification, is regarded as dispositive. Id. But, the court must be careful not to import limitations from the specification into the claim. Id. at 1323. In walking the "fine line" between using the
25

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 26 of 103

specification to interpret the meaning of a claim and importing limitations from the specification into the claim, the court must "focus . . . on understanding how a person of ordinary skill in the art would understand the claim terms." Id. The purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. Id. Reading the specification in context should reveal whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. Id. Thus, the court's task is to determine "whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature." Id. With these overriding principles in mind concerning the significance of the specification of the `301 Family Patents, then, the court will turn its focus to the disputed claim terms as they are set forth in the three individual patents which share that specification. These patents include the `294, `429, and `064 Patents. a. The `294 Patent

Sprint asserts that Vonage's VoIP system infringes claims 1, 4, 9, 10, 17, 18, 19, 22, 26, 27, 28, 35, and 36 of the `294 Patent. Claims 1, 10, 19, and 28 are independent claims; the remainder are dependent claims. The independent claims include the disputed claim terms "identifier" and "interworking device." Again, Vonage argues that the court should construe the claim term "identifier" to mean a VPI/VCI combination and the claim term "interworking unit" to mean ATM interworking multiplexer.
26

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 27 of 103

Claim construction begins with the words of the claims themselves. Phillips, 415 F.3d at 1312. The claims state, in relevant part, as follows: 1. A telecommunication signal . . . comprising: a first signal component including user information from a narrowband communication signal; and a second signal component including an identifier for routing the user information, wherein the identifier is selected by processing a signaling message, wherein an interworking device receives the narrowband communication signal and a control signal indicating the narrowband communication signal and the identifier, and in response to the control signal, converts the narrowband communication signal into a packet format having the first signal component including the user information and the second signal component including the identifier to form the telecommunication signal. .... 10. A control signal . . . comprising: a first signal component indicating a narrowband communication signal having user information; and a second signal component indicating an identifier for routing the user information, wherein the identifier is selected by processing a signaling message, wherein an interworking device receives the narrowband communication signal and the control signal indicating the narrowband communication signal and the identifier, and in response to the control signal, converts the narrowband communication signal into a packet format having the user information and the identifier to form a telecommunication signal. `294 Patent, col. 23 ll. 20-34 & 55-67 (emphasis added). Claims 19 and 28 contain essentially identical relevant language, except that they claim methods of transferring signals. i. "Identifier"

Beginning with the claim language itself, the claims do not indicate that the term "identifier" is limited to a VPI/VCI combination. In fact, Sprint correctly points out that the language of the claims identifies two key facts regarding the claimed "identifier": (1) it is part of a communication signal that includes user information in a packet format; and (2) it
27

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 28 of 103

is used for routing the user information. Based on this information, Sprint urges the court to construe the claimed "identifier" to mean data for routing user information in a packet network. Other claims of the patent are useful for understanding the ordinary meaning of claim terms. Phillips, 415 F.3d at 1314. Sprint points out that dependent claims 5, 14, 23, and 32 add the limitation that the identifier comprises an "asynchronous transfer mode [ATM] virtual identifier." It is undisputed that a person of ordinary skill in the art would understand this claim term to mean an ATM VPI/VCI pair. Thus, construing the claim term "identifier" in independent claims 1, 10, 19, and 28 to mean an ATM VPI/VCI pair would render dependent claims 5, 14, 23, and 32 duplicative of the independent claims on which they depend. This invokes the doctrine of claim differentiation. This doctrine is grounded in the notion that "[d]ifferences among claims can . . . be a useful guide in understanding the meaning of particular claim terms." Phillips, 415 F.3d at 1314. "[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id.; see also Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (doctrine of claim differentiation refers to the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim). This is because "reading an additional limitation from a dependent claim into an independent claim would not only make that additional limitation superfluous, it might render the dependent claim invalid." Curtiss-Wright Flow Control Corp., 438 F.3d at 1380.
28

Here, the `294 Patent contains

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 29 of 103

dependent claims which add the particular limitation urged by Vonage. Consequently, a presumption arises that the "identifier" disclosed in claims 1, 10, 19, and 28 is not limited to an "asynchronous transfer mode virtual identifier," or an ATM VPI/VCI pair. Vonage's argument that the court should construe the claim term "identifier" to mean an ATM VPI/VCI pair is based on language contained in the specification. In addition to the overarching language concerning ATM technology discussed previously, Vonage points to language in the written description which discloses that VPI/VCI combinations are designated for the virtual connection. See `294 Patent, col. 7, ll. 15-21; col. 9, ll. 12-29. In fact, the specification's references to VPI/VCI combinations are merely examples set forth as embodiments of the invention. The first reference to a VPI/VCI combination is contained in a portion of the written description describing Figure 2. It begins, "FIG. 2 depicts another embodiment of the invention." `294 Patent, col. 5, at 41. In discussing the signaling received by the call/connection manager (CCM), the written description states as follows: CCM 250 can select a virtual connection to the destination. The selection process can be accomplished through table look-ups. For example, a table could be used to translate a portion of the dialed number into a VPI. The VCI would be selected based on the available VCIs in the selected VPI. The VPI/VCI combination would correspond . . . Id. col. 7, ll. 15-21 (emphasis added). The second discussion of VPI/VCI combinations is contained in a portion of the written description describing Figure 4, which is entitled the "ATM Cross-connect System." That portion of the written description states as follows: FIG. 4 depicts virtual connections provided by the ATM cross connect system in a version of the invention, although numerous other techniques for
29

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 30 of 103

providing virtual connections will be appreciated by one skilled in the art, and the invention contemplates any such system. Id. col. 8, ll. 61-65 (emphasis added). The specification repeatedly states that drawings and the detailed descriptions of those drawings depict versions of the present invention. In fact, just prior to the claims themselves, the specification concludes as follows: Those skilled in the art will appreciate that variations from the specific embodiments disclosed above are contemplated by the invention. The invention should not be restricted to the above embodiments, but should be measured by the following claims. Id. col. 23, ll. 14-18. With respect to the claim term "identifier," the court concludes that a person of skill in the art would understand the specification's reference to VPI/VCI combinations to be exemplary in nature, rather than defining the outer limits of the claim term. First, of course, the doctrine of claim differentiation gives rise to a presumption that the term is not limited to a VPI/VCI combination. Second, the references to VPI/VCI combinations in the written description fall far short of reflecting an intentional disclaimer, or disavowal, of the full scope of the claim. Instead, the written description's references to VPI/VCI combinations contain qualifiers such as the fact that Figures 2 and 4, and the related detailed descriptions, are only versions of the invention; the "[f]or example" language; the statement that numerous other techniques for providing virtual connections will be appreciated by one skilled in the art, and the invention contemplates any such system; and, finally, the statement that the invention should not be restricted to those embodiments, but instead should be measured by the claims, as the invention contemplates variations that would be recognized by one skilled
30

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 31 of 103

in the art. Given the clarity of the language of the claim terms themselves, then, the court will not import this limitation from the specification into the claims. Instead, the court believes that a fair and accurate claim construction, which is based on the claim language itself, is the construction proposed by Sprint. As such, the court construes the claim term "identifier" to mean data for routing information in a packet network. ii. "Interworking Device"

Turning to the second disputed claim term in the `294 Patent, "interworking device," the court once again begins its task of claim construction with the language of the claims themselves. According to the claim language, the interworking device performs the task of "convert[ing] the narrowband communication signal into packet format." In other words, explicit within the claim language itself is that the "interworking device" is a device that interworks or converts between two communication formats ­ specifically, between a narrowband format (such as used in the PSTN) and a packet format (such as ATM or IP). The claim language itself does not limit the packet format to ATM, but rather could encompass the IP technology employed by Vonage. Based on this claim language, Sprint argues that the court should construe the claim term "interworking device" to mean a device that converts narrowband communication signals into a packet format. In support of Vonage's argument that the court should construe the claim term "interworking device" to mean ATM interworking multiplexer, Vonage once again relies on language contained throughout the specification. It is true, as Vonage contends, that the specification repeatedly discloses in numerous important respects that an ATM interworking
31

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 32 of 103

multiplexer is the one and only "interworking device" claimed in the specification. The disclosures in the specification are not merely limited to preferred embodiments or versions of the invention. Reading the claim term in view of the specification, it seems that the only logical conclusion that could be reached by one of ordinary skill in the art is that the inventor intended the term "interworking device" to mean an ATM interworking multiplexer. The abstract describes the invention as a system for providing virtual connections "through an ATM interworking multiplexer" whereby the signaling is transferred to the "ATM interworking multiplexer" and the "multiplexer" converts the information. The background of the invention describes the need to improve upon ATM switch technology, and explains that although ATM multiplexers are being developed "these muxes" are not used to select virtual connections on a call-by-call basis. It concludes that "there is not a

telecommunications system that can provide ATM switching on a call by call basis without relying on the call processing and signaling capability of an ATM switch." The summary of the invention clearly and unequivocally discloses that an ATM interworking multiplexer is the claimed interworking unit which allows virtual connections on a call-by-call basis without requiring the call processing and signaling capability of an ATM switch. The summary states as follows: . . . The system comprises an ATM interworking multiplexer and a signaling processor linked to the ATM interworking multiplexer. The method [receives, processes, generates, and transmits] new signaling to the ATM interworking multiplexer. The method also includes receiving the user information for the call from the particular connection into the ATM interworking multiplexer. . . .
32

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 33 of 103

. . . The system includes an ATM interworking multiplexer to receive user information from a connection . . . . The system could also include an ATM cross-connect system connected to the ATM interworking multiplexer and configured to provide a plurality of virtual connections to the ATM interworking multiplexer. The invention also includes an ATM interworking multiplexer for providing calls with virtual connections . . . . `294 Patent, col. 2, ll. 14-50 (emphasis added). Sprint points out that other language in the specification contained in the detailed description of Figure 1 indicates that the interworking unit could be any muxing system. Specifically, this description explains that "mux 130 could be any muxing system operable to place user information arriving over connection 180 on the virtual connection selected by signaling processing system 160." Id. Col. 4, ll. 32-34 (emphasis added). But, prior to this disclosure the specification implicitly defines the term "mux" as an abbreviation for the term ATM interworking multiplexer. It states that the system "includes ATM interworking multiplexer (mux) 130, mux 140." Id. col. 3, ll. 43-44. Thereafter, the written description refers to 130 and 140 as disclosed in Figure 1 as, simply, "mux." The description of Figure 1 concludes that "[f]rom the above discussion, it can be seen that multiple virtual connections can be pre-provisioned through an ATM cross-connect system to interconnect ATM interworking multiplexers." Id. col. 5, ll. 26-29. Similarly, Sprint points out the disclosure that "Fig. 3 shows one embodiment of the mux that is suitable for the present invention, but muxes that support the requirements of the invention are also applicable." Id. col. 8, ll. 3-5. Again, however, it appears that the use of the term "mux" is nothing more than a continued

33

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 34 of 103

use of this term as a shorthand version of the term ATM interworking multiplexer, as this section is entitled "The ATM Interworking Multiplexer." Id. col. 8, l. 1. The written description in this case is much like the one at issue in Honeywell International, Inc. v. ITT Industries, Inc., 452 F.3d 1312 (Fed. Cir. 2006). There, the Federal Circuit agreed with the district court that the claim term "fuel injection system component" was limited to a fuel filter. Id. at 1318. The court concluded that "the written description uses language that leads to the conclusion that a fuel filter is the only `fuel injection system component' that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment." Id. The written description referred to the fuel filter as "this invention" or "the present invention" on at least four occasions; it did not indicate that a fuel filter was merely a preferred embodiment, but rather it was the only component disclosed as having the claimed features; and limiting the claim term to a fuel filter comported with the discussion of the prior art problem addressed by the patented invention. Id. Similarly, here, the entirety of the written description, and particularly the disclosures in the summary of the invention, establish that an ATM interworking multiplexer is the only type of "interworking device" contemplated by the invention, and not merely a preferred embodiment. Given the clarity of the written description concerning the meaning of the claim term "interworking device," then, the court construes this claim term to mean ATM interworking multiplexer. iii. Infringement

Having construed the disputed claim terms, the court turns to the issue of infringement in which the court must compare the properly construed claims to the accused device or
34

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 35 of 103

process. Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1376 (Fed. Cir. 2005). "To prove infringement, the patentee must show that the accused device meets each claim limitation, either literally or under the doctrine of equivalents." Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 906 (Fed. Cir. 2005). "Infringement, whether literal or under the doctrine of equivalents, is a question of fact." Boss Control, 410 F.3d at 1376. With respect to the claim term "identifier," Vonage's motion for summary judgment is denied. Vonage's motion was premised on its proposed claim construction, which the court has rejected. As such, Vonage has not met its initial summary judgment burden of demonstrating the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Additionally, the court notes that as that claim term has been properly construed (to mean data for routing user information in a packet network), Sprint has raised a genuine issue of material fact sufficient to withstand summary judgment on the issue of literal infringement. Viewing the evidence in the light most favorable to Sprint, as of course the court must at this procedural juncture, voice packets in the Vonage system include a destination IP address and the destination IP address is used for routing the voice packets in a packet network. Thus, according to the evidence submitted by Sprint, the Vonage system literally utilizes and includes the claimed "identifier," which consists of data for routing information in a packet network. Because this evidence is sufficient to withstand summary judgment on the issue of literal infringement, it is also sufficient to raise a genuine issue of material fact on infringement under the doctrine of equivalents.

35

Case 2:05-cv-02433-JWL

Document 264

Filed 08/07/2007

Page 36 of 103

Turning to the claim term "interworking device," Vonage's motion is granted on the issue of literal infringement. The court has construed this claim term to mean ATM interworking multiplexer. Given this claim construction, Sprint has not raised a genuine issue of material fact to withstand summary judgment. It is undisputed that Vonage's allegedly infringing system does not use ATM technology and, therefore, does not contain such a device. Thus, a rational trier of fact could not find based on the summary judgment record that Vonage's system infringes this claim limitation. As such, summary judgment is granted on the issue of literal infringement. Nonetheless, summary judgment is not warranted on the issue of infringement of this limitation under the doctrine of equivalents. "Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent." AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005). An element in the accused product is equivalent to a claim limitation if the differences between the two are insubstantial. Id. The analysis focuses on whether the element in the accused device performs substantially the same function in substantially the same way to obtain the same result as the claim limitation. Id. (quotation omitted). In performing this analysis, the court must of course view the summary judgment record in the light most favorable to Sprint. Viewed as such, Sprint has raised a genuine issue of material fact sufficient to withstand summary judgment as to whether the Vonage system co