Williamson v. Verizon Services Corp. et al

Filing 221

MEMORANDUM ORDER: The Court hereby construes the seven disputed claim terms as listed herein. This matter remains referred to Judge Pitman for general pretrial management. A Final Pretrial Conference is scheduled for December 20, 2013, at 2:00 p.m. (Final Pretrial Conference set for 12/20/2013 at 02:00 PM before Judge Laura Taylor Swain.) (Signed by Judge Laura Taylor Swain on 8/12/2013) (ft)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------x
RICHARD A. WILLIAMSON, on behalf of
and as trustee for At Home Bondholders’
Liquidating Trust,
Plaintiff,

No. 11 Civ. 4948 (LTS)(HBP)

-vVERIZON COMMUNICATIONS INC., et al.,
Defendants.
-------------------------------------------------------x
RICHARD A. WILLIAMSON, on behalf of
and as trustee for At Home Bondholders’
Liquidating Trust,
Plaintiff,
-v-

No. 13 Civ. 0645 (LTS)(HBP)

AT&T OPERATIONS, INC., et al.,
Defendants.
-------------------------------------------------------x
MEMORANDUM ORDER
Plaintiff Richard A. Williamson (“Plaintiff” or “Williamson”) brings this patent
infringement action against Verizon Communications, Inc., Verizon Services Corp., Verizon
Corporate Resources Group LLC, Verizon Data Services LLC, Verizon New York Inc.
(collectively, the “Verizon Defendants”), AT&T Operations, Inc., and AT&T Services, Inc.
(collectively, the AT&T Defendants) (together with the Verizon Defendants, “Defendants”)1.
On December 10, 2012, the Court held a Markman hearing regarding the construction of certain

1

On January 22, 2013, the Court granted the AT&T Defendants’ severance motion, and
a new case, 13 civ. 0645, was opened as to the AT&T Defendants. This
Memorandum Order applies to, and will be filed in, both cases.

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terms in the claims of the ‘571 Patent, the ‘275 Patent, the ‘856 Patent, and the ‘749 Patent
(collectively, the “Patents-in-Suit”). The Court has considered thoroughly all of the parties’
written submissions and their arguments at the hearing. For the following reasons, the Court
construes the disputed claim terms as set forth below.

BACKGROUND
The technology described by the Patents-in-Suit generally relates to the delivery
of online multimedia services via a system and method that combine a scalable, hierarchical,
distributed network architecture and processes for replicating and caching frequently-accessed
multimedia content within the network, and multicasting content customized per region or
locality. (See, e.g., ‘57 Patent at 2: 17-25.)2 In their joint claim construction statement, the
parties identified the following seven claim terms or phrases as in dispute: 1) provid[ing/e] a first
level of caching [of the/for/of/of general] content; 2) provid[ing/e] a second level of caching [of
the/for/for the general] content; 3) multicast[ing]; 4) destination address; 5) content is replicated
amongst the regional servers; 6) group of [the] end[-]user systems; and 7) content. The parties’
familiarity with the record is presumed.

DISCUSSION
Claim construction is an issue of law to be determined by the court. Markman v.
Westview Instruments, Inc., 517 U.S. 370, 385 (1996). In interpreting the meaning of claim
terms, “words of a claim are generally given their ordinary and customary meaning” as
understood by “a person of ordinary skill in the art at the time of invention, i.e., as of the

2

The disclosures in the four Patents-in-Suit are substantially identical.

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effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc) (citations and internal quotation marks omitted). The court reads a
claim term “not only in the context of the particular claim in which the disputed term appears,
but in the context of the entire patent, including the specification.” Id. at 1313.
When interpreting claim terms, courts must give priority to intrinsic evidence -i.e., the words of the claim themselves, the written description in the patent’s specification, and
the history of the patent application's prosecution before the U.S. Patent and Trademark Office
(the “PTO”). Id. at 1314–17. The patent specification “acts as a dictionary when it expressly
defines terms used in the claims or when it defines terms by implication . . . [I]t is the single best
guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996). The specification's written description of the invention is relevant to
construction of claims, as it is a “statutory requirement that the specification describe the
claimed invention in ‘full, clear, concise, and exact terms.’” Phillips, 416 F.3d at 1316 (quoting
35 U.S.C. § 112). Therefore, claim terms must be interpreted in a manner consistent with the
specification of which they are a part. Phillips, 415 F.3d at 1316 (citation omitted).
However, preferred embodiments and written descriptions in the specification
should not be used to limit the scope of claims. See Phillips, 416 F.3d at 1320 (“reading a
limitation from the written description into the claims” is “one of the cardinal sins of patent
law”) (quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1340 (Fed. Cir. 2001)). “[I]t is important to keep in mind that the purposes of the specification
are to teach and enable those of skill in the art to make and use the invention,” and not to define
the limits of a claim term. Id. at 1323.
The court may also use the prosecution history of a patent as an aid to the

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construction of claim terms. The prosecution history “can often inform the meaning of the claim
language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it
would otherwise be.” Phillips, 416 F.3d at 1317 (citations omitted). However, “because the
prosecution history represents an ongoing negotiation between the PTO and the applicant, rather
than the final product of that negotiation, it often lacks the clarity of the specification and thus is
less useful for claim construction purposes.” Id.
Finally, courts may resort to “extrinsic” evidence such as dictionaries, treatises,
and expert testimony, which may serve as a source of “accepted meanings of terms used in
various fields of science and technology” or provide “background on the technology at issue.”
Id. at 1317–18. However, such extrinsic evidence is “less significant than the intrinsic record in
determining the legally operative meaning of claim language,” and must be considered in the
context of the intrinsic evidence. Id. at 1317–19 (citations and quotation marks omitted).
Accordingly, where analysis of the intrinsic evidence alone resolves the ambiguity in a disputed
claim term, it is improper to rely on extrinsic evidence to construe the meaning of the term.
Vitronics, 90 F.3d at 1583.
The parties’ arguments are summarized, and the Court’s constructions of the
disputed claim terms are set forth, below.

A. “Provid[ing/e] a first level of caching [of the/for/of/of general] content”3
Plaintiff’s proposed construction of this claim term is “providing a first storage

3

Both this and the following term appear in the following claims: claims 1 and 11 of
the ‘571 Patent, claims 1 and 5 of the ‘275 Patent, claims 1, 7 and 13 of the ‘856
Patent, and claims 1, 7 and 13 of the ‘749 Patent.

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location for content located between the second storage location and the end-user system.”
Defendants’ proposed construction of the claim term is “providing a storage location for content
associated with a sub-region or local area and handling requests for content not stored in that
location.” The parties’ proposed constructions reflect their disagreement as to the fundamental
issue of whether caching encompasses more than mere storage.
Plaintiff argues that a cache is merely a storage location for information.
Defendants argue persuasively, however, that a cache is not simply a passive storage location for
files. Rather, a cache server must be capable of responding to requests for the files that it stores.
In particular, a cache server must be capable of handling a “cache miss,” which occurs when a
requested file is not stored in the cache server’s memory. In the case of a cache miss, the cache
server must retrieve the requested file from the nearest regional server (or, if the file is not stored
at the regional server, from the remote source), store the file, and fulfill the request. Once the
cache server stores the requested file, it can more efficiently fulfill subsequent requests for the
same file.
The intrinsic evidence supports Defendants’ understanding of caching. For
example, the patent specification explains that a caching server must be able to handle a cache
miss. (See, e.g., ‘571 Patent at Fig. 11; id. at 11:46-48 (“Otherwise, the caching server forwards
the request to the regional server 302 at the ‘nearest’ . . . regional data center”).) Additionally,
Figure 6 of the ‘571 Patent refers to “cache storage”; if the Court accepted Plaintiff’s
construction that “storage” and “cache” are synonymous, the patent’s use of the phrase “cache
storage” would be redundant. Defendants’ construction of the caching claim term is further

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supported by the testimony of Dr. Kevin Jeffay4, who asserts credibly that “a person of ordinary
skill in the art as of the alleged dates of invention would understand that the patents-in-suit
disclose the traditional form of hierarchical caching wherein in response to a request by an enduser system, a first-level cache pulls (requests and receives) content from a second-level cache
on a cache-miss.” (Jeffay Decl. ¶ 80, Exhibit C to the Declaration of Jennifer C. Tempesta, ECF
No. 131.) Accordingly, the Court adopts Defendants’ construction of the claim term.

B. “A second level of caching [of the/for/for the general] content”
Plaintiff’s proposed construction of this claim term is “providing a second storage
location for content located between the high-speed backbone and the first storage location.”
Defendants’ proposed construction is “providing a storage location for content associated with
the regional server and handling requests for content not stored in that location.” For
substantially the reasons explained above, the Court adopts Defendants’ construction of the
claim term. (See, e.g., ‘571 Patent at 11: 61-64 (“if the content is not stored in the disk array [of
the regional server], then the regional server determines whether the backbone or a RDC has a
direct connection via a router to the remote LAN source”).)

4

Dr. Kevin Jeffay, Defendants’ retained expert, is a tenured professor in the
Department of Computer Science at the University of North Carolina at Chapel Hill.
Dr. Jeffay has a Ph.D in computer science, an M.Sc. degree in computer science, and
a B.S. degree in mathematics; has been involved in the research and development of
networked computing systems for over 30 years; and has authored or co-authored over
100 articles in peer-reviewed journals, conference proceedings, texts, and monographs
in the area of computer science. (See Jeffay Decl. ¶¶ 1-14, Exhibit C to the

Declaration of Jennifer C. Tempesta, ECF No. 131.)
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C. “Multicast[ing]”5
Plaintiff’s proposed construction of the claim term “multicast[ing] is “the delivery
of information from a single source to multiple destinations.” Defendants’ proposed
construction of the claim term is “the simultaneous transmission of content from a single source
to multiple destinations that requested the data, where only a single copy of the particular
content passes over any network link.”
The primary dispute as to this term concerns whether and how to distinguish
multicasting from broadcasting. The parties agree that broadcasting is the transmission of data
from one sender to all possible recipients, while multicasting is a transmission from one sender
to a particular group of recipients. Defendants further argue, however, that the group of endusers that ultimately receives the multicast content must engage in an explicit affirmative action,
by subscribing to or requesting the content. Plaintiff contends that Defendants’ construction is
improperly narrowed by its incorporation of a requirement that the end user have requested the
data.
The Patents-in-Suit support Defendants’ construction -- the referenced multicasts
are only received by end-user systems that have requested the content. (See, e.g., ‘571 Patent
8:46-48 (“The regional web server 524 may also multicast select multimedia content, such as
audio or video from live events, to select groups of the end-user systems”); id. at 13:3-8 (“Enduser systems in different regions or localities may ‘tune into’ the same IP multicast address and
obtain data which is customized to a particular region or locality”).) Dr. Jeffay has also testified
credibly that “a person of ordinary skill in the art as of the alleged dates of invention would

5

This term appears in claims 1, 10, 11 and 13 of the ‘571 Patent; claims 1 and 5 of the
‘275 Patent; claims 1, 4, 7, 10, 13 and 16 of the ‘856 Patent; and claims 1, 4, 10, 13,
and 16 of the ‘749 Patent.

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understand the phrase ‘multicast[ing]’ to mean ‘transmitting a single copy of data from a source
to multiple destinations that requested the data.” (Jeffay Decl. ¶ 106.) In their submissions and
at the Markman hearing, the parties suggested various terms -- notably, “tune in,” “subscribe”
and “request” -- to describe the action an end-user performs to join a multicast group. The Court
finds that describing the action as a “request” is appropriate and least likely to cause juror
confusion. Accordingly, the Court adopts Defendants’ construction of the claim term.

D. “Destination Address”6
Plaintiff’s proposed construction of the claim term “destination address” is “an
identifier for an intended recipient to which data are to be delivered.” Defendants’ proposed
construction is “address identifying network location through which multicast content is
delivered to requesting end-users.” The parties agree that a destination address is not a location,
but rather is an identifier that is used by routers to guide information to the destinations that are
part of the multicast group. While the parties’ proposed constructions are not dramatically
different, the Court finds that Defendants’ proposed construction is both clearer and better
supported by the intrinsic and extrinsic evidence. For example, claims 1 and 5 of the ‘275 Patent
use the term “destination address” as the destination address for a multicast, language that is
consistent with Defendants’ construction. (See, e.g., ‘275 Patent at 14: 2-3 (“the multicast
content assigned to be multicast to a destination address”); id. at 14: 35-37 (same).) At the
Markman hearing, the parties debated whether content was delivered “to” or “through” a
destination address. While Plaintiff’s proposed construction contemplates that data are delivered
“to” a destination address, his post-Markman brief acknowledges that “through” is the correct

6

This term appears in claims 1 and 5 of the ‘275 Patent.

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word. The only remaining dispute as to the construction of this claim term is whether it is
appropriate to say that content is delivered to “requesting” end-users. As explained above, the
Court finds that “request” is the most appropriate word to describe the action of an end-user in
joining a multicast group. Accordingly, the Court adopts Defendants’ construction of the claim
term.

E. “Content is replicated amongst the regional servers”7
Plaintiff’s proposed construction of this claim term is “content is copied to the
regional servers.” Defendants propose either “content is copied from one or more regional
servers to other regional server(s)” or “content is copied among the regional servers.” Plaintiff
contends that the construction should encompass the copying of content from the central server
onto the regional servers, while Defendants argue that the construction should be limited to
replication at a peer-to-peer level -- that is, only across the regional servers, as distinct from
replication from a central server to a regional server.
Plaintiff asserts that the specification does not distinguish between copying from
a central server to a regional server and copying between regional servers, pointing to
specification language stating that “files may be replicated via replication from the central server
703 and amongst the regional servers 302.” (571 Patent at 8:41-42.) Plaintiff argues that,
because the clauses “replication from the central server” and “amongst the regional servers” are
connected by an “and” rather than an “or,” the options are not alternatives. Defendants read this
language differently, and contend that replication from a central server to a regional server is
distinct from replication amongst regional servers. Defendants also point to Figure 12 of the

7

This term appears in claim 10 of the ‘571 Patent.

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‘571 Patent as support for their contention that replication amongst the regional servers means
replication at a peer-to-peer level. (See ‘571 Patent at Fig. 12; id. at 12:39-43 (after retrieval
from the content provider to a regional server, “the content is replicated from the regional server
to other regional servers”).) Figure 12 is a diagram of a preferred method of replicating data
from a content provider, and so its description of replication may be somewhat narrower than the
scope of the claim term. Nonetheless, after reviewing carefully the specification8 and the
extrinsic evidence9, the Court adopts Defendants’ proposed construction -- “content is copied
from one or more regional servers to other regional server(s),” finding that it best captures the
plain and ordinary meaning of the claim term.

F. “Group of [the] end[-] user systems”10
Plaintiff’s proposed construction of this claim term is “set of recipients intended
to receive specified content.” Defendants’ proposed construction is “end-user systems that
requested the content.” The parties’ only dispute with respect to this term is whether the
construction should require recipients to have “requested” the content.
Plaintiff argues that “end-user systems receive data addressed to the group by

8

The following language from the specification further supports Defendants’ position
that “replication amongst the regional servers” is limited to replication at a peer-topeer level: “The content may be fully or partially replicated amongst the regional
servers 302. In full replication, a full copy of the content would be kept at every
regional server 302. In partial replication, either the copies replicated are not full (i.e.
only a partial fragment of the full copy is replicated), or the copies are not distributed
to every regional server.” (‘571 Patent at 12:43-48.)

9

See, e.g., Defendants’ Markman Presentation at 121 (Webster’s II New College
Disctionary (1995) defines “amongst” as, inter alia, “[i]n the group,” “[w]ith one
another <arguing among themselves>”).

10

This term appears in claims 1, 10 and 11 of the ‘571 Patent, and claims 1 and 5 of the
‘275 Patent.

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virtue of being members of the group, without any requirement to request such data,” and that
Defendants’ proposed construction adds an unsupported limitation to the claim term. (See
Plaintiff’s Opening Claim Construction Brief at 28.) Defendants contend, however, that the
claim language is consistent with the idea that end-user systems requested content. Notably, the
claims refer to end-user systems that are either in a multicast group, or the end-users of the
hierarchical caching arrangement. (See, e.g., ‘571 Patent, Claim 1 (“a broadband distribution
network coupling each of the caching servers to a plurality of end-user systems in the subregion, for providing the cached content to the end-user systems responsive to requests from the
end-user systems for content on the publicly accessible internetwork of networks, and for
providing the regionally-customized multicast content to a group of the end-user systems in the
sub-region”); ‘275 Patent, Claim 1 (“each caching server configured to provide a first level of
caching of general content for a group of end user systems in a region served by the regional
server to which it is coupled, and to provide the customized multicast content formed by the
coupled regional server to an end-user system in the region”).) As explained in the preceding
discussions of the “caching-level” terms and the “multicast” term, content will not be multicast
to an end-user system that did not request to join the multicast group, and a cache will not
respond to an end-user system unless that system requests content. Dr. Jeffay has testified
credibly that a person of ordinary skill in the art would understand that groups of end-user
systems are systems that requested content that is either multicast or cached. (Jeffay Decl. ¶
122.)
Accordingly, the Court adopts Defendants’ proposed construction of the claim
term.

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G. “Content”11
Plaintiff’s proposed construction of the claim term “content” is “information,
such as text, audio and video.” Defendants’ proposed construction of the claim term is “public
network-accessible files.”
Plaintiff argues that Defendants’ proposals that all content come from a public
network and that content be in the form of “files” are unduly limiting, and unjustified by the
specifications. The Court finds, however, that the specifications support the plain meaning that
“content” comes from a public network. (See, e.g., ‘571 Patent at 3:54-57 (“in the architecture
of the present invention, the distributed public Internet (top portion) 170 is separated from a
hierarchical private network (bottom portion) 180 under private control).) Defendants’
construction is also supported by a hand-drawn version of Figure 1 submitted with the original
application, where the “remote source” of all content is labeled “public internet.” (See
Defendants’ Markman Presentation at 146.) Plaintiff points to the version of Figure 1 included
with the ‘571 Patent and argues that there is a direct connection between the remote content
source and the private backbone, which bypasses the public internet. (See ‘571 Patent at Fig. 1;
id. at 4:59-5:2 (“the private backbone 102 connects via an additional router 130 to a particular
LAN 114 in order to give the network more direct access to content on that particular LAN 114
. . . data from that LAN 114 may travel towards an end-user either via the Internet 170 . . . or via
the short-cut through the additional router 130 which bypasses the Internet”).) Whether or not
the content travels to an end-user via the Internet or via the short-cut however, the source of the
content itself is a public network.

11

This term appears in claims 1, 10, 11 and 13 of the ‘571 Patent; claims 1 and 5 of the
‘275 Patent; claims 1, 3, 4, 7, 9, 10, 13, 15 and 16 of the ‘856 Patent; and claims 1, 3,
4, 7, 9, 10, 13, 15 and 16 of the ‘749 Patent.

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Plaintiff next argues that the claim limitation concerning content on the “publicly
accessible internetwork of networks” appears only in the ‘571 Patent, and that the claims in the
other three patents do not include this limitation. The other patents, however, include numerous
references to the Internet, which is a specific type of “public network.” (See, e.g., ‘275 Patent at
2:49-51 (“The digital network architecture couples a high-speed backbone to multiple network
access points (NAPs) of the Internet”);‘856 Patent at 2:36-38 (“The digital network architecture
couples a high-speed backbone to multiple network access points (NAPs) of the Internet”); ‘749
Patent at 2:36-38 (same); id. at 3:62-65 (“In the architecture of the present invention, the
distributed public Internet (top portion) 170 is separated from a hierarchical private network
(bottom portion) 180 under private control”).)
Finally, Plaintiff contends that limiting content to “files” is too narrow a
construction, and points to specification language reciting that “[t]he multimedia content is
served in the form of html, vrml, image, audio, and video files, or may be in other forms,” (‘571
Patent at 8:39-40 (emphasis added)), and that “the regional web server 524 may also multicast
select multimedia content, such as audio or video from live events.” (‘571 Patent 8:46-47.)
Defendants counter, however, that the specifications consistently use the word “content” to mean
only files. (See, e.g., ‘571 Patent at 8:39-42 (emphasis added) (“The multimedia content is
served in the form of hrml, vrml, image, audio, and video files, or may be in other forms. These
files may be updated via replication from the central server 703 and amongst the regional servers
302”); id. at 9:20-26 (“[i]f the requested file is contained in the cache storage 616 then the proxy
server 621 sends the file from the cache storage 616 to the requesting end-user system 124”).)
Finally, Dr. Jeffay has testified credibly that “live events” are transmitted in the form of files.
(See Jeffay Dep. Tr. 123:18-124:14, Exhibit J to the Declaration of Jennifer C. Tempesta, ECF

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No. 131; see also Jeffay Decl. ¶¶ 125-135.) Accordingly, the Court adopts Defendants’
proposed construction of the claim term.

CONCLUSION
For the foregoing reasons, the Court hereby construes the seven disputed claim
terms as follows:
“Provid[ing/e] a first level of caching [of the/for/of/of general] content” means
“Providing a storage location for content associated with a sub-region or local area and handling
requests for content not stored in that location.”
“Provid[ing/e] a second level of caching [of the/for/for the general] content” means
“Providing a storage location for content associated with the regional server and handling
requests for content not stored in that location.”
“Multicast[ing]” means “The delivery of content from a single source to multiple
destinations that requested to join the multicast group, where only a single copy of the particular
content passes over any network link.”
“Destination address” means “Address identifying network location through which
multicast content is delivered to requesting end-users.”
“Content is replicated amongst the regional servers” means “Content is copied from one
or more regional servers to other regional server(s).”
“Group of [the] end[-]user systems” means “End-user systems that requested the
content.”
“Content” means “Public network-accessible files.”

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This matter remains referred to Judge Pitman for general pretrial management. A
Final Pretrial Conference is scheduled for December 20, 2013, at 2:00 p.m.
SO ORDERED.

Dated: New York, New York
August 12, 2013
/S
LAURA TAYLOR SWAIN
United States District Judge

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