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

Filing 297

MEMORANDUM IN SUPPORT of 296 MOTION in Limine to Preclude Evidence of the 301 Family Patents Under the Doctrine of Equivalents by Defendants/Counter Claimants Vonage America, Inc., Vonage Holdings Corp. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G)(Campbell, Terrence)

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

Doc. 297 Att. 1

Case 2:05-cv-02433-JWL

Document 297-2

Filed 08/18/2007

Page 1 of 10

EXHIBIT A

Dockets.Justia.com

Case 2:05-cv-02433-JWL

Document 297-2

Filed 08/18/2007

Page 2 of 10

UNITED STATE DEPARTMENT
Patent and
Address

OF COMMERCE

Trademark
D.C.

Office

COMMISSIONER
Washington.

OF PATENTS 20231

AND TRADEMARKS

SERIAL

NUMBER

FILING

DATE

FIRST

NAMED INVENTOR

ATIORNEY

DOCKET

NO.

08/238605

05/05/94

CHRISTIE

SPT1O57

BLUM.
26M1/0707 HARLEY R. BALL SPRINT LAW DEPARTMENT PARKWAY 8140 WARD MOKCMPO5O6 MAILSTOP CITY MO 64114 KANSAS
This
Is

EXAMINER

ARTUNIT

PAPER

NUMBER

2603
DATE
charge
of

MAILED

07/07/95

communication

from

the

examiner

In

your

application.

COMMISSIONER

OF PATENTS

AND

TRADEMARKS

El

This

applicatIon

has been

examined

esponslve
to this action
wiil is

to

communIcation

filed

on

-5//.c9
days 133 35 U.S.C.

hIs
from
the

action

is

made

finai.

shortened
Failure to

statutory

period the

for

response
for

set the

to expire

__________
to

months
abandoned.

date

of this

letter.

respond

within

period

response

cause

application

become

Part

THE

FOLLOWING

AUACHMENTS
Cited

ARE

PART

OF THIS

ACTION

1.

otice

of

References
Cited

by Examiner PTO-1449.

PTO-892.

2.

ii El El

Notice

of

Draftsmans
Informal

Patent

Drawing

Review P10-152.

P10-948.

3. 5.

Notice

of Art

by Applicant
to Effect

4.

Notice

of

Patent

Application

El

Information

on

How

Drawing

Changes

P10-1474..

6.

Part

II

SUMMARY OF ACTION

1.Ims

_________________________________________________

t//2Q
above
claims

are

pending

In

the

application.

Of

the

_____________________________________________________________

are

withdrawn from

consideration.

lalms
il
Claims

have

been

cancelled.

are

allowed.

4.Clalms Il El
Claims

c/.._/

_O

are

rejected.

are

objected

to.

6.

Claims______________________________________________________________

are

subject

to

restriction

or

eiection

requirement.

7..applicatIon El ll

has been

filed

with

informal

drawings

under

37

C.F.R.

1.85

which

are

acceptable

for

examination

purposes.

8.

Formal drawings

are

required

in

response

to this Office

action.

The
are

corrected

or

substitute not

drawings acceptable

have

been

received or

on __________________________.
Notice of

Under Drawing Review

37

C.F.R.

1.84

these drawings

acceptable

see

explanation

Draftsmans

Patent

PTO-948.

10.

ii The

proposed

additional

or substitute

sheets

of

drawings
explanation.

flied

on ______________.

has

have

been

Dapproved

by

the

examIner

disapproved

by

the

examiner

see

11.iie
12.

proposed

drawing

correction

filed

./t5/q5
for
priority

.has

been

approved

sapproved
has been

see

explanation.

El

Acknowledgement been
filed in

is

made

of the

ciaim

under

35

U.S.C.

119.
filed

The

certified

copy

received

not

been

received

parent

application

serial no.

____________________

on _______________________

13.

Since

this

application with the

apppears
practice

to

be

in

condition parte

for

allowance 1935 C.D.

excpt
11

for formal

matters

prosecution

as

to the

merits

is

closed

In

accordance

under

Ex

Quayle

453

0.G.

213.

14.Other

jY7

13

j4f

flO

4-1L on

nL

4- jt

EXAMINERS
PTOL-326 Rev. 2/93

ACTION

VON_865364

Case 2:05-cv-02433-JWL

Document 297-2

Filed 08/18/2007

Page 3 of 10

Serial Art

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2603

08/238605

Unit

part

III

DETAILED

ACTIO$

DraViIgS The proposed drawing
sheets of

correction
filed

and/or
Ofl

the May to

proposed
1995 have

1.

substitute disapproved
label still shown
2.

drawings
the

15

been does not
310
is

because

proposed correction
345 not the and

figure

elements not
by shown the

328
and

340
it is

338

reference changes

numeral
are

clear

what

intended as

red-lining on
is

proposed correction. submit Office
the

Applicant
in

required to
this
of

proposed drawing
Action. to Any cure

correction
the

response to
for

proposal defects

by

applicant
of two

amendment

drawings

must

OflSjSt

parts
letter and to the

separate NPEP

Draftsman

in

accordance

with

608.02r

print or pen-and-ink
in accordance

sketch

showing

changes

in

red ink

with MPEP

608.02V.
filing may but
in

IMPORTANT correct the

NOTE

The

of

new

formal until

drawings
the

to
is

noted the

defect

be the

deferred

application
ink
in

allowed by

examiner

print or pen-and
ink
is

sketch response

with
to

proposed corrections
this

shown and may

red be

required

Office

Action

not

deferred.

VON_865365

Case 2:05-cv-02433-JWL

Document 297-2

Filed 08/18/2007

Page 4 of 10

Serial Art

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specification The following
IS

3.

quotation

of

the

first

paragraph

of

35

U.S.C.

112
the written description of and using process of making to concise and exact terms as it in such full clear it pertains in the art to which enable any person skilled and use to make connected it is most nearly or with which contemplated by mode forth the best the same and shall set out his invention. the inventor of carrying shall contain the manner and

The specification and of invention

The
first not

specification
as the

is

objected

to

under as

35

U.S.C.

112
does

paragraph
the

specification
as
is

originally filed

support The

invention
of the

now

claimed.

addition
and

triggering
is

terminology
be new

to

the and

specification deleted
in all

claims

deemed to

matter

should

be

instances.

Claia Rejections
4.

35
35

usc

112

ClaimS

6483
for the

are

rejected under
set forth

U.S.C. the

112

first to the

paragraph

reasons

in

objection

specification.
5.

Claims

8693

and as

117120
being

are

rejected

under
failing

35

U.S.C.

112

second point

paragraph
out and the

indefinite for subject

to

particularly applicant

distinctly claim the
invention.

matter

which

regards as

VON_865366

Case 2:05-cv-02433-JWL

Document 297-2

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Page 5 of 10

Serial Art

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2603

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Unit

In

claims

86

and

89

line

13

of
...

both

claims

it

is

not

known

what

is

meant by
or connection.

second

signal

reflecting

on

the

network

element
In by

claim 117

lines

3-4

and

it

is

not

known
is

what
it

is

meant

receiving

communication

path

i.e.

how

possible to

receive

communication

path
and the

Claims being

87

88
on

9093
one of

118120
above

are

rendered

indefinite by

dependent

rejected

claims.

Claia Rejections
6.

35

Usc

102

The

following

of 35 U.S.C. this section

is quotation of the appropriate paragraphs under form the basis for the rejections 102 that made in this Office action shall be

-entitled to patent unless others in this the invention was known or used by in printed publication country or patented or described invention thereof the country before foreign in this or patent. by the applicant for

person

the sale date of on
7.

invention was
in

publication
in

this

patented or described or foreign country or
for

this

country more than
patent
in

application

one year the United

printed public use prior to the
in in

or

States. and by 117 are

Claims

6466
35

7178 8490
U.S.C. The claims
is

94100
as

105

112115

rejected
et
al.

under

102b
to the

being

anticipated invention

Gopal
on

Gopal.
wherein

instant

read

Gopal

there

disclosed comprised elements
the of

telecommunications switches

network

architecture
to of

which

is

11-17

corresponding
20 call any one

the

instant

network
to

and

processor group
processor.

which

corresponds

instant

The

setup

VON_865367

Case 2:05-cv-02433-JWL

Document 297-2

Filed 08/18/2007

Page 6 of 10

Serial Art

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2603

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message response
signal. and
8.

corresponds
from See the

to

the

instant

first

signal to the

and

the

routing second

processor corresponds colUmn
lines line
12.

instant

figure line

4147

column

lines

25-46

column Claims
117 are

51column

6467

7179

82
35

84100
U.S.C.

104

105

110
as

112115
clearly

and

rejected
by Epley.

under
See line

102a
column
20.

being
line

anticipated
line
9.

figures

13

40-COlUmn

18

and

column

56-colUmn

line

Claims

6467
and

6979
119 are

82

8490

93100
35

104
U.S.C.

105

110
being

112117
clearly
line

rejected under
by Rago.
56.

102b
and

as and

anticipated column
18

See

figures

column

line

Claim Rejections
io.

35

Usc

103 forms

the

quotation of 35 The following is rejections basis for all obviousness

103 which U.S.C. set forth in this

Office

action
is not obtained though the invention patent may not be in set forth described as identically disclosed or the title if the differences betweenrt are section 102 of this and the prior a to be patented subject matter sought whole would have been as such that the subject matter person invention was made to obvious at the time the which said subject art to in the skill having ordinary by be negatived patentability shall not matter pertains was made. invention the the manner in which

which qualifies by another person Subject matter developed of section 102 or subsection as prior art only under under this not preclude patentability of this title shall invention matter and the claimed section where the subject owned by the same invention was made at the time the

were

VON_865368

Case 2:05-cv-02433-JWL

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person
person.
ii.

or

subject

to

an

obligation

of

assignment

to

the

same

ClaimS

80

81
35

9193

101104
103

106109
being

and

118120

are Gopal

rejected
in view

under
of

U.s.c.

as

unpatentable
as

over

admitted prior art.
instant

Gopal
with the
of

applied

above
of

encompasses the network element

claims
types the

exception

various
9-

types and
and
36 of

networks.

Pages

10
that

1519
the

2728

present
types

specification
and

indicate types were have
been

claimed network
art at the

element
time of

network
It

known

in the to of as an

invention. of

would

obvious network

artisan at the
to include
in

time the

invention to element

modify the network
to

Gopal was

various
the of

and

types

known

the

art
types

motivation equipment

being
for

provide

compatibility service
12.

with various

providing

to

customers.

claims rejected

68

80

81
35

83

101103
103 as

106109
being

111

and

118120
over

are

under
of

U.S.C.

unpatentable
as

Epley

in view

admitted prior
instant claims types the

art.

Epley
the

applied
of

above

encompasses the network element

with
of

exception

various
9-

types and
36 of

networks.

Pages

10
that

1519
the

2728 and

present
types

specification
and

indicate types were
the use of involve

claimed network
art as at the

element
time of

network further

known

in the such

invention

elements
the use

ATM

broadband
signal format

switches would

obviOUSlY
an

broadband

ATM cells

as

artisan would

VON_865369

Case 2:05-cv-02433-JWL

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recognize
of

it would

have

been

obvious
of as

to

an

artisan at
to include in the

the the

time

invention to

modify the network provide

network

Epley was

various

element and
to

types

known

art the
types of

motivation being equipment
13.

compatibilitY
to

with various

for

providing

service

customers.

Claims
120 are

68

80

81

83

91
35

92

101103
103

106109
as being as

111

118

and over

rejected
of

under

U.S.C.

unpatentable applied

Rago

in view the

admitted prior art.
claims types

Rago

above

encompasses network

instant

with the
of

exception

of

various

element types and
and
36

networks.

Pages

9-10

15the
in

19

2728

of

the

present
types

specification network
the

indicate

that

claimed network
art at the time

element
of

and

types were known
use of

the as

invention would

further

elements
the use

such

ATM

broadband
signal it

switches
format have

obviOUSlY
as an to

involve

broadband recognize
of

ATM cells
been

artisan would
an

would

obvious
of

artisan at
include

the

time

the invention to modify and

network
as was

Rago to
in

the the

various

element

network
to

types
provide

known

the

art

motivation being equipment
for

compatibilitY
to

with

various

types

of

providing

service

customers.

Response
14.

to

Aaendeflt
is

The

amendment
132

filed
it

15

May

1995

objected matter

to

under
the

35

U.S.C.

because

introduces

new

into

VON_865370

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specification. introduce added
is

35

U.S.C. into
is 14

132

states that
of the

no the

amendment
invention.

shall

new

matter which page
is

the

disclosure
by

The

material

not line

supported
13

original disclosure

as

follows
Applicant

triggering and.
the new

required to cancel Office
action. filed
15

matter

in

the

response to
15.

this

Applicants
but

arguments
are not

May to be

1995

have

been

fully In

considered
to

they

deemed

persuasive.

response

applicants
1.

arguments
of and

the be the

addition
new

triggering

limitation has
be

been

deemed
and

to
2.

matter

therefore cannot indicates switch
as

relied
the

upon

current
the

claim language
before been the read

that

processor
the

receives

signal

applies
the

signal
continues
call.

this limitation has
in

before to

switch

setting up

the

call

path

in order

complete

the

Conclusion

16.

Applicants

amendment

necessitated ACTION
IS

the

new

grounds
See of

of M.P.E.P. time

rejection.

Accordingly Applicant
forth
in

THIS
is

MAD
the

FINAL.

706.07a.
policy
as set

reminded of
C.F.R.

extension

37

1.136a.

TO THIS FINAL PERIOD FOR RESPONSE STATUTORY DATE OF THIS THREE MONTHS FROM THE ACTION IS SET TO EXPIRE TWO MONTHS IS FILED WITHIN RESPONSE FIRST IN THE EVENT ACTION. ADVISORY ACTION THE THIS FINAL ACTION AND OF THE MAILING DATE OF SHORTENED

VON_865371

Case 2:05-cv-02433-JWL

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SHORTENED THREE-MONTH THE END OF THE MAILED UNTIL AFTER PERIOD WILL EXPIRE IS NOT STATUTORY FEE PERIOD THEN THE SHORTENEDMAILED AND ANY EXTENSION STATUTORY ADVISORY ACTION IS FROM THE ON THE DATE THE 1.136a WILL BE CALCULATED ILL THE W PURSUANT TO 37 C.F.R. EVENT IN NO ADVISORY ACTION. SIX MONTHS FROM MAILING DATE OF THE EXPIRE LATER THAN FOR RESPONSE PERIOD STATUTORY ACTION. DATE OF THIS FINAL THE or earlier concerning this communication Blum 17. Any inquiry be directed to RUSS should from the examiner can commufliCati0 The examiner is 703 305-4737. whose telephone number from 630am to 430pm. Monday_Thursday normally be reached are the examiner by telephone attempts to reach If Olms can be examiners supervisor Doug for this Group is unsuccessful. the number The fax phone reached at 703305-4703.
status or relating to the general nature Any inquiry to the Group receptionist should be directed this application is 703 3054750. whose telephone number of

7033059508.

of

Russ slum June 29 1995

UGLAS W. PATENT

O1.MS

EXAMINER

UPERV1SO

VON

865372