Rates Technology Inc. v. Broadvox Holding Company, LLC et al

Filing 125

OPINION AND ORDER: For the aforementioned reasons, I construe the disputed terms as follows re 085 Patent, Claim 1 and 769 Patent, Claim 1, and as further set forth in this opinion. (Signed by Judge Shira A. Scheindlin on 1/28/2014) (cd)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

------------------------------------------------------ )(
RATES TECHNOLOGY INC.,

Plaintiff,
OPINION AND

ORDER

- againstBROADVOX HOLDING COMPANY,
LLC, CYPRESS COMMUNICATIONS
OPERATING COMPANY, LCC, AND
ABC COMPANIES, 1 TO 10,

13 Civ. 0152 (SAS)

Defendants.

------------------------------------------------------ X
SIDRA A. SCHEINDLIN, U.S.D.J.:
I.

INTRODUCTION
Rates Technology Inc. ("RTI") brings this action against Broadvox

Holding Company, LLC, its named subsidiary, Cypress Communications
Operating Company, LLC, and its unnamed subsidiaries or affiliates, ABC
Companies 1 to 10 (collectively, "Broadvox"), for infringing two ofRTI's
telecommunications patents: United States Patent No. 5,425,085 (the '''085
Patent") and United States Patent No. 5,519,769 (the '''769 Patent,,).1

See First Amended Complaint ("F AC") ,r'II 13, 21.
-1­

On December 27, 2013, the Court held a Markman hearing. The
parties have agreed upon the meaning of three terms in claim 1 of the ‘085 Patent
and two terms in claim 1 of the ‘769 Patent.2 The parties dispute the meaning of
nine terms in claim 1 of the ‘085 Patent and five terms in claim 1 of the ‘769
Patent.3 For reference, I have included a list of the constructions I have adopted at
the end of this Opinion.4
II.

BACKGROUND
A.

The Invention
RTI has provided products and services in the telecommunications

field for thirty years.5 RTI designs and manufactures technologies including
private pay telephones, call cost rate chips, and least-cost-routing chips.6 On June
13, 1995, the Patent and Trademark Office (“PTO”) issued the ‘085 Patent,
designating RTI as the sole assignee.7 The claimed invention relates to the routing
2

See Table 1. These are the only claims at issue.

3

See Table 2.

4

See Table 3.

5

See Declaration of Gerald Weinberger (President of RTI), Ex. A to
12/19/13 Letter of Milton Springut, RTI’s counsel, to the Court, ¶ 2.
6

See id.

7

See ‘085 Patent, Ex. 1 to 1/6/14 Letter of Tal Benschar, RTI’s
counsel, to the Court (“Benschar Ltr.”), at 1.
-2-

of calls based on cost.8 Broadvox Holding provides IP-based information services
to approximately three hundred wholesale carriers, businesses, and enterprise retail
customers.9 On May 21, 1996, the PTO issued the ‘769 Patent to RTI.10 The
claimed invention relates to a method for updating a database in a telephone
routing system.11 In two 1998 decisions, Judge William Young of the District
Court of Massachusetts construed several of the claims disputed here.12 Several
years later, the patents were returned to the PTO for reexamination, where the
claims were reconsidered in light of prior art.13 While the reexaminations did not
affect claim 1 of the ‘769 Patent, RTI added limitations to claim 1 of the ‘085
Patent to overcome the prior art.14

8

See FAC ¶ 11.

9

See id. ¶ 13.

10

See ‘769 Patent, Ex. 4 to Benschar Ltr., at 1.

11

See FAC ¶ 19.

12

See MediaCom Corp. v. Rates Tech. Inc., 4 F. Supp. 2d 17 (D. Mass.
1998) (“MediaCom I”); MediaCom Corp. v. Rates Tech. Inc., 34 F. Supp. 2d 76
(D. Mass. 1998) (“MediaCom II”).
13

See Defendants’ Answering Claim Construction Brief (“Broadvox

Brief”) at 1.
14

See id.; ‘085 Patent Reexamination Certificate C2, Ex. 3 to Benschar
Ltr., col. 1 ll. 1-64; ‘769 Patent Reexamination Certificate C1, Ex. 5 to Benschar
Ltr., col. 1 l. 15.
-3-

B.

Claim Language
The full text of claim 1 of the ‘085 Patent, with the disputed phrases

emphasized, follows:
A device for routing telephone calls along a least cost route
originating from a first telephone to a second telephone having an
associated telephone number via a network having a plurality of
alternate communication switch paths corresponding to different
carriers which can be chosen to route the call and normally
providing a current to said first telephone when said first
telephone is in use, comprising:
[I]

a housing forming an enclosure and comprising
first jack means for connection to said first telephone, and
second jack means for connection to said network;

[ii]

switch means operatively connected to said first jack
means for disconnecting said first telephone from said
network during routing of a telephone call from said first
telephone;

[iii]

means operatively connected to said switch means for
generating a current through said switch means to the first
telephone corresponding to a current provided by said
network, when the first telephone is disconnected from said
network by said switch means;

[iv]

database means for storing billing rate parameters for
determining a least cost communication path for call
corresponding to said telephone number;

[v]

means operatively connected to said switch means for
detecting and storing said telephone number originating
from the first telephone;

[vi]

means for addressing said database means for identifying
-4-

a plurality of communication switch paths to said second
telephone and the cost rate of each path;
[vii] means actuated subsequent to the detection of said
telephone number originating from said first telephone for
comparing the cost rate of each path so as to determine a
least cost route; and
[viii] means operatively connected to said switch means and
said second jack means for generating a number sequence
corresponding to a desired carrier so that said call is
routed through said second jack means to the selected
communication path and carrier to establish a switched
connection between said first telephone and said second
telephone.15
The full text of claim 1 of the ‘769 Patent, with the disputed phrases
emphasized, follows:
A method for updating a database that stores billing rate
parameters for a call rating device used for cost determinations for
a calling station, comprising the steps of:
[I]

[ii]

transmitting over the data transfer line indicia identifying
the call rating device and the date and time of the last
update of the billing rate parameters;

[iii]

verifying if billing parameters should be updated; and

[iv]

15

connecting at a predetermined time and date via a data
transfer line the call rating device to a rate provider having
billing rate parameters for a plurality of calling stations;

transmitting from the rate provider to the call rating device
the updated billing rate parameters when the rate provider

‘085 Patent Reexamination Certificate C2 col. 1 ll. 1-64.
-5-

determines that an update is required.16
The parties agree on the construction of the following phrases:
TABLE 1 17
‘085 Patent, Claim 1
Term/Phrase

Agreed Upon Construction

1. “device”

The term should not be a limitation of the
claim.

2. “first jack means for
connection to said first
telephone”

First jack for connection to said first
telephone.

3. “second jack means for
connection to said
network”

Second jack for connection to said network.

‘769 Patent, Claim 1
Term/Phrase

Agreed Upon Construction

1. “a data transfer line”

a data transfer line (or path to transfer data)

2. “indicia identifying the
call rating device and the
date and time of the last
update of the billing rate
parameters”

indicia identifying call rating device and the
date and time of the last update of the billing
rate parameters.

The parties dispute the construction of the following phrases:

16

‘769 Patent col. 6 ll. 35-49. The reexamination of the ‘769 Patent did
not affect the language of claim 1.
17

The information in Table 1 is derived from Defendants’ First Revised
Claim Terms Chart (“Claim Terms Chart”), Doc. No. 113.
-6-

TABLE 2 18
‘085 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

Broadvox’s Proposed
Construction

1. “a housing
forming an enclosure
and comprising”

One or more housings
forming one or more
enclosures

A unitary physical
structure that includes a
first jack for connection to
a first telephone and a
second jack for
connection to a network

Comprising is a
transition term
linking the preamble
to the body of the
claim.
2. “switch means
operatively
connected to said
first jack means for
disconnecting (as
defined below) said
first telephone from
said network during
routing of a
telephone call from
said first telephone”

switch operatively
connected to said first
jack for disconnecting
said first telephone
from said network
during routing of a
telephone call from
said first telephone

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

3. “disconnecting”

Ordinary meaning
should control. In the
context of
specification and
prosecution history,
term should be

Interruption of the
electrical circuit between
the telephone and the
network — the breaking
or opening — of the
electrical circuit between

18

The structure of the
“switch means” is the “2
Form C switch.” It is
referenced in the ‘085
Patent as item 36, and is
described at col. 3 ll. 5164, and Fig. 2.

The information in Table 2 is derived from the Claim Terms Chart,
the Markman hearing transcript (“Tr.”), and the parties’ post-hearing letters.
-7-

‘085 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

Broadvox’s Proposed
Construction

construed as
“disconnecting the
communication such
as signaling”

the telephone jack and the
network

4. “means
operatively
connected to said
switch means for
generating a current
(as defined below)
through said switch
means to the first
telephone
corresponding to a
current provided by
said network, when
the first telephone is
disconnected from
said network to said
switch means”

Current source
operatively connected
to said switch for
generating a current
through said switch to
the first telephone
corresponding to a
current provided by
said network, when
the first telephone is
disconnected from
said network by said
switch

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

5. “means for
generating a current”

Current source for
generating a current

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

The structure of the
“means” is the structure
shown in the Fig. 2
drawing as connecting
item 38, as well as the
structure of item 38.

The structure of the
“means” is the structure
shown in the Fig. 2
drawing as connecting
item 38, as well as the
structure of item 38.
6. “means

Detecting and storing
-8-

This is a means-plus-

‘085 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

operatively
connected to said
switch means for
detecting and storing
said telephone
number originating
from the first
telephone”

logic (e.g., routine or
subroutine)
operatively connected
to said switch for
detecting and storing
said telephone
number originating
from the first
telephone

function element, whose
construction is governed
by 35 U.S.C. § 112(f).

7. “means for
addressing said
database means for
identifying a
plurality of
communication
switch paths to said
second telephone and
the cost rate of each
path”

Database addressing
logic (e.g., routine or
subroutine) for
addressing said
database means for
identifying a plurality
of communication
switch paths to said
second telephone and
the cost rate of each
path

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

-9-

Broadvox’s Proposed
Construction

The structure of the
“means operatively
connected to said switch
means for detecting and
storing said telephone
number originating from
the first telephone” is a
combination of: “the
DTMF tone detector 88”
for detecting a telephone
number, and an unknown
and indefinite structure for
“storing said telephone
number originating from
the first telephone.”

The structure of the
“means for addressing
said database means for
identifying a plurality of
communication switch
paths to said second
telephone and the cost rate
of each path” is the
algorithm at col. 6 ll. 7-47
and Fig. 5.

‘085 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

8. “means actuated
subsequent to the
detection of said
telephone number
originating from said
first telephone for
comparing the cost
rate of each path so
as to determine a
least cost route”

Comparing logic
(e.g., routine or
subroutine) actuated
subsequent to the
detection of said
telephone number
originating from said
first telephone for
comparing the cost
rate of each path so as
to determine a least
cost route.

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

9. “means
operatively
connected to said
switch means and
said second jack
means for generating
a number sequence
corresponding to a
desired carrier so that
said call is routed
through said second
jack means to the
selected
communication path
and carrier to

logic (e.g. routine or
subroutine)
operatively connected
to said switch and
said second jack for
generating a number
sequence
corresponding to a
desired carrier so that
said call is routed
through said second
jack to the selected
communication path
and carrier to
establish a switched

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).

-10-

Broadvox’s Proposed
Construction

The element “means
actuated subsequent to the
detection of said
telephone number
originating from said first
telephone for comparing
the cost rate of each path
so as to determine a least
cost route” is not
described in the
specification and,
therefore, this claim term
is indefinite.

The structure is the
combination of a tone
generator with a crystal
oscillator (which
generates the number
sequence), and an analog
switch (so that “call is
routed through said
second jack means to the
selected communication

‘085 Patent, Claim 1
Term/Phrase
establish a switched
connection between
said first telephone
and said second
telephone”

RTI’s Proposed
Construction
connection between
said first telephone
and said second
telephone.

Broadvox’s Proposed
Construction
path . . .”).

‘769 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

Broadvox’s Proposed
Construction

1. “at a
predetermined time
and date”

at a predetermined
time and date

The time and date for
calling the rate provider
are selected a substantial
period in advance of the
call

2. “call rating
device”

call rating device

This is a means-plusfunction element, whose
construction is governed
by 35 U.S.C. § 112(f).
An identifiable physical
component having the
function of receiving rate
information from a rate
provider over a data
transfer line, incorporating
the rate information and
thereafter managing calls
over the least cost routing
route.

3. “transmitting over
the data transfer line”

transmitting over the
data transfer line

-11-

conveying information
over the same wire
operatively connected to a

‘769 Patent, Claim 1
Term/Phrase

RTI’s Proposed
Construction

Broadvox’s Proposed
Construction
call rating device on one
end and a phone network
on the other

4. “verifying if
billing rate
parameters should be
updated”

verifying if billing
rate parameters
should be updated

the rate provider, based on
the information received
from the call rating
device, verifies if the
billing rate parameters of
the call rating device
should be updated

5. “transmitting from
the rate provider to
the call rating
device”

transmitting from the
rate provider to the
call rating device

the rate provider, based on
the information received
from the call rating
device, transmits the
billing rate parameters to
the call rating device

III.

APPLICABLE LAW
Analysis of a patent infringement claim involves two steps: (1)

construction of the terms of the asserted claims and (2) determination of whether
the accused device infringes the claims, as construed.19 Claim construction is a

19

See Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370
F.3d 1354, 1360 (Fed. Cir. 2004).
-12-

question of law,20 the purpose of which is to determine what is covered by an
asserted claim. In other words, “[t]he construction of claims is simply a way of
elaborating the normally terse claim language in order to understand and explain,
but not to change, the scope of the claims.”21
The Federal Circuit has made clear that “there is no magic formula or
catechism for conducting claim construction.”22 Thus, courts must be mindful that
“applying [the substantive precepts of patent claim interpretation] to the facts of a
case can be . . . perplexing, particularly where precepts can be in opposition to one
another and district judges cannot always tell which one(s) apply in a particular
case.”23 As such, the Federal Circuit has provided district courts with some
guidance:
[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application. . . . [This inquiry]

20

See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384

(1996).
21

Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005)
(internal citations omitted).
22

Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en

23

Edward D. Manzo, Claim Construction in the Federal Circuit § 1.2

banc).
(2009).
-13-

provides an objective baseline from which to begin claim
interpretation. . . . Importantly, the person of ordinary skill in the
art is deemed to read the 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.24
To determine how a person skilled in the art understands a disputed claim term,
courts should look to publicly available sources, including intrinsic evidence —
such as “the words of the claims themselves, the remainder of the specification, the
prosecution history” — and “extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.”25
A.

Intrinsic Evidence
The Federal Circuit views intrinsic evidence as “a more reliable guide

to the meaning of a claim term than are extrinsic sources.”26 Thus, district courts
should use the intrinsic record as “the primary tool to supply the context for
interpretation of disputed claim terms.”27
1.

Claim Language

24

Phillips, 415 F.3d at 1313 (citations omitted).

25

Id. at 1314 (internal citations omitted).

26

Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir.
2008) (citing Phillips, 415 F.3d at 1318-319).
27

V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed.

Cir. 2005).
-14-

Although there is no rigid formula to claim construction, “[j]udicial
interpretation must begin with and remain focused upon the ‘words of the claims
themselves . . . to define the scope of the patented invention.’”28 On occasion, “the
ordinary meaning of claim language as understood by a person of skill in the art”
will be so apparent from the claim language itself that no further inquiry is
needed.29 However, even when the terms in a claim are self-explanatory, “[t]he
context in which a term is used in the asserted claim can be highly instructive.”30
2.

The Specification

In addition to the claim itself, a patent is required by statute to
“contain a written description of the invention . . . .”31 This description — known
as the specification32 — includes: “an abstract of the invention; a description of the

28

Investment Tech. Grp., Inc. v. Liquidnet Holdings, Inc., No. 07 Civ.
510, 2010 WL 199912, at *2 (S.D.N.Y. Jan. 19, 2010) (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
29

Phillips, 415 F.3d at 1314.

30

Id.

31

35 U.S.C. § 112.

32

See Medisim Ltd. v. BestMed LLC, No. 10 Civ. 2463, 2011 WL
2693896, at *3 n.28 (S.D.N.Y. July 8, 2011) (“The terminology used to describe
the parts of a patent can be slightly confusing. Technically, the specification
includes both the claims and the written description. However, courts typically use
the term specification to refer to the written description on its own and as distinct
from the claims. For purposes of consistency, I adopt this common usage.”).
-15-

invention’s background; a summary of the invention; patent drawings; and a
detailed description that discusses preferred embodiments of the invention.”33 The
Federal Circuit has said that specifications are “always highly relevant to the claim
construction analysis” and therefore “claims must be read in view of the
specification, of which they are a part.”34
However, courts must be mindful that while “using the specification
to interpret the meaning of a claim” is permissible, “importing limitations from the
specification into the claim” is not.35 Because words of the claim alone “define the
scope of the right to exclude,”36 the specification should generally be used to limit
a claim only:
(1) if the claim “explicitly recite[s] a term in need of definition”; or (2)
if the specification unambiguously defines a term, i.e., if “a patent
applicant has elected to be a lexicographer by providing an explicit
definition in the specification for a claim term.”37

33

Id. at *3.

34

Phillips, 415 F.3d at 1315 (quotation marks and citations omitted). In
fact, a claim interpretation that excludes a preferred embodiment described in the
specification is “rarely, if ever, correct.” Vitronics, 90 F.3d at 1583.
35

Phillips, 415 F.3d at 1323.

36

Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998).
37

Medisim, 2011 WL 2693896, at *4 (quoting Renishaw, 158 F.3d at

1248-49).
-16-

Even then, “there will still remain some cases in which it will be hard 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.”38
3.

Prosecution History

The prosecution history of a patent is part of the “intrinsic evidence”
and “consists of the complete record of the proceedings before the PTO and
includes the prior art cited during the examination of the patent.”39 “[B]ecause the
prosecution history represents an ongoing negotiation between the PTO and the
applicant, rather than the final product of that negotiation, it often lacks the clarity
of the specification and thus is less useful for claim construction purposes.”40
Nonetheless, “[l]ike the specification, the prosecution history provides evidence of
how the PTO and the inventor understood the patent,” and accordingly, “can often
inform the meaning of the claim language.”41
Furthermore, the prosecution history “may be given substantial weight

38

Phillips, 415 F.3d at 1323.

39

Id. at 1317 (citation omitted).

40

Id.

41

Id.
-17-

in construing a term where that term was added by amendment.”42 This is because
changes made to the claim terms during the prosecution history “demonstrat[e]
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.”43 As such, “[w]hen the patentee unequivocally and
unambiguously disavows a certain meaning to obtain a patent, the doctrine of
prosecution history disclaimer narrows the meaning of the claim consistent with
the scope of the claim surrendered.”44 The doctrine applies even where the
patentee’s statements are not “necessary or persuasive” to the PTO.45
B.

Extrinsic Evidence
The extrinsic record “consists of all evidence external to the patent

and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises.”46 Although the Federal Circuit allows district courts to “rely on

42

Board of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533
F.3d 1362, 1369 (Fed. Cir. 2008).
43

Phillips, 415 F.3d at 1317.

44

Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed.

Cir. 2013).
45

Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315
(Fed. Cir. 2013).
46

Phillips, 415 F.3d at 1317 (internal citations omitted).
-18-

extrinsic evidence,” it views “extrinsic evidence in general as less reliable than the
patent and its prosecution history in determining how to read claim terms.”47
“Generally, a patent’s intrinsic record does not warrant consideration
of extrinsic evidence.”48 “Where a patent’s claims, written description, and
prosecution history are complete and unambiguous, a court need not resort to
extrinsic evidence such as treatises, technical references, or expert testimony.”49
But “[w]here the intrinsic record leaves ambiguities and unresolved questions . . . a
court may consider extrinsic evidence, including expert testimony.”50
The Federal Circuit has noted that “the decision as to the need for and
use of experts is within the sound discretion of the district court.”51 It is unhelpful
if an expert “simply recites how [he] would construe [a term] based on his own
reading of the specification.”52 On the other hand, expert reports and testimony
47

Id. at 1317-318.

48

BASF Agro B.V. v. Makhteshim Agan of No. Am. Inc., 519 Fed. App’x
1008, 1015 (Fed. Cir. 2013).
49

Id.

50

Id.

51

Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350,
1357 (Fed. Cir. 2006).
52

Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1291
(Fed. Cir. 2008). Accord Phillips, 415 F.3d at 1318 (“[C]onclusory, unsupported
assertions by experts as to the definition of a claim term are not useful to a court.”).
-19-

can help the court by:
[providing] background on the technology at issue, [explaining]
how an invention works, [ensuring] that the court’s understanding
of the technical aspects of the patent is consistent with that of a
person of skill in the art, or [establishing] that a particular term in
the patent or the prior art has a particular meaning in the pertinent
field.53
With this in mind, “a court should discount any expert testimony ‘that is clearly at
odds with the claim construction mandated by the claims themselves, the written
description, and the prosecution history, in other words, with the written record of
the patent.’”54 “Even if the judge permissibly decide[s] to hear all the possible
evidence before construing the claim, the expert testimony, which [is] inconsistent
with the specification and file history, should [be] accorded no weight.”55
C.

Means-Plus-Function
“Section 112(f) [of Title 35] allows patentees to put structural details

into the specification and build into the literal coverage of the claim a certain scope
for equivalents in performing a defined function.”56 Section 112(f) states:

53

Id.

54

Id. (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716
(Fed. Cir. 1998)).
55

BASF, 519 Fed. App’x at 1016 (citing Vitronics, 90 F.3d at 1584).

56

Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379
(Fed. Cir. 2013).
-20-

An element in a claim for combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.57
This form of claiming, known as means-plus-function claiming, applies to “purely
functional limitations that do not provide the structure that performs the recited
function.”58 It “represents a quid pro quo by permitting inventors to use a generic
means expression for a claim limitation provided that the specification indicates
what structure(s) constitute(s) the means.”59
“[W]hether the limitation in question should be regarded as a meansplus-function limitation, like all claim construction issues, is a question of law for
the court, even though . . . evidence from experts may be relevant.”60 As with any
claim term, a court examines “the words of the claims themselves, the written

57

35 U.S.C. § 112(f). Section 112(f) was formerly known as 35 U.S.C §
112, ¶ 6. See Bennett Marine, Inc. v. Lenco Marine, Inc., No. 2013 WL 5273116,
at *4 (— Fed. App’x —) (Fed. Cir. Sept. 19, 2013).
58

Phillips, 415 F.3d at 1311.

59

Chicago Bd. Options Exch. v. Interntional Sec. Exch., 677 F.3d 1361,
1367 (Fed. Cir. 2012) (internal citations omitted).
60

Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004).
-21-

description, the prosecution history, and any relevant extrinsic evidence.”61
“[W]hether claim language invokes Section 112, ¶ 6 depends on how those skilled
in the art would understand the structural significance of that claim language,
assessed against the presumptions that flow from a drafter’s choice to employ or
not employ the term ‘means.’”62
The Federal Circuit has established “two guidelines for determining
whether the special rules of claim construction set forth in Section 112, ¶ 6 apply
to a given claim limitation.”63 First, “use of the word ‘means’ creates a rebuttable
presumption that the drafter intended to invoke Section 112, ¶6.”64 A challenger
may rebut the presumption where a claim recites a function “but then goes on to
elaborate sufficient structure, material, or acts within the claim itself to perform
entirely the recited function.”65 In such a case, “the claim is not in means-plus-

61

Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d
1350, 1356 (Fed. Cir. 2011).
62

Id. at 1360. Accord Rembrandt Data Techs., LP v. AOL LLC, 641
F.3d 1331, 1341 (Fed. Cir. 2011) (“When determining whether a claim term recites
sufficient structure, we examine whether it has an understood meaning in the art.”).
63

Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed.

Cir. 2012).
64

Id.

65

Id. (internal citations omitted).
-22-

function format even if the claim uses the term means.”66
Conversely, “[i]f a claim term does not use the word ‘means,’ we
presume that means-plus-function claiming does not apply.”67 “[T]he presumption
flowing from the absence of the term ‘means’ is a strong one that is not readily
overcome.”68

In deciding whether a challenger has rebutted the presumption, “the

focus remains on whether the claim as properly construed recites sufficiently
definite structure to avoid the ambit of § 112, ¶ 6.” 69 The Federal Circuit requires
only that “the claim term be used in common parlance or by ordinarily skilled
artisans to designate sufficiently definite structure, ‘even if the term covers a broad
class of structures.’”70 “If, however, the claim term recites a function without
reciting sufficient structure for performing that function, the presumption falls and
means-plus-function claiming applies.”71
Construction of a means-plus-function limitation involves two steps.
66

Id. (internal citations omitted).

67

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711
F.3d 1348, 1364 (Fed. Cir. 2013) (internal citation omitted).
68

Inventio, 649 F.3d at 1356.

69

Id. (internal citations omitted).

70

Power Integrations, 711 F.3d at 1965 (quoting Lighting World, 382
F.3d at 1359–360).
71

Id. at 1364.
-23-

“First, the court must determine the claimed function.”72 “Second, the court must
identify the corresponding structure in the written description of the patent that
performs the function.”73 “A structure disclosed in the specification qualifies as a
‘corresponding structure’ if the specification or the prosecution history clearly
links or associates that structure to the function recited in the claim.”74
D.

Indefiniteness
“Whether a claim complies with the definiteness requirement of 35

U.S.C. § 112 ¶ 2 is a matter of claim construction.”75 Section 112, ¶ 2 states:
The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the inventor
or a joint inventor regards as the invention.76
Under this section, the inventor has a duty to “inform the public of the bounds of
the protected invention, i.e., what subject matter is covered by the exclusive rights
of the patent.”77 An inventor’s failure to “particularly point[] out and distinctly
72

Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)
(internal citation omitted).
73

Id.

74

Id. (internal citation and quotation marks omitted).

75

Id.

76

35 U.S.C. § 112 ¶ 2 is now known as 35 U.S.C. § 112(b).

77

Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249
(Fed. Cir. 2008) (citation omitted).
-24-

claim[]” the subject matter of her invention renders the claim invalid.78
Patents issued by the PTO enjoy a presumption of validity,79 and so
indefiniteness must be proved by clear and convincing evidence.80 Whether a
claim is indefinite is a question of law,81 although “[e]xpert testimony may be
helpful in making this determination.”82 “A claim is definite if one skilled in the
art would understand the bounds of the claim when read in light of the
specification.”83 “A claim is not indefinite merely because it is difficult to
construe.”84 To be indefinite, it must be such that “no narrowing construction can
properly be adopted” to interpret the claim.85

78

Id.

79

See 35 U.S.C. § 282.

80

See Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
1338 (Fed. Cir. 2008).
81

See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed.

Cir. 2007).
82

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364,
1380 (Fed. Cir. 2011) (“Star Scientific II ”).
83

IGT v. Bally Gaming Intern., Inc., 659 F.3d 1109, 1119 (Fed. Cir.
2011) (internal citations omitted).
84

Dow Chem. Co. v. Nova Chems. Corp., 458 Fed. App’x 910, 917
(Fed. Cir. 2012) (internal citations omitted).
85

Id.
-25-

If a means-plus-function limitation lacks a “structure disclosed in the
specification to perform those functions, the claim limitation would lack
specificity, rendering the claim as a whole invalid for indefiniteness.” 86 A structure
disclosed in the specification qualifies as a “corresponding structure” if the
specification or the prosecution history “clearly links or associates that structure to
the function recited in the claim.”87 “Even if the specification discloses a
‘corresponding structure,’ the disclosure must be adequate . . . [to] show[] what is
meant by that [claim] language.”88 “[T]he testimony of one of ordinary skill in the
art cannot supplant the total absence of structure from the specification.”89
IV.

DISCUSSION
A.

General Claim Construction Issues
At the Markman hearing and in their briefs, the parties disagreed on

several claim construction issues. Because the issues pertain to claim construction
in general, I will address them before construing the individual terms.
1.

RTI’s Expert

86

Aristocrat Techs., Australia Pty Ltd. v. International Game Tech., 521
F.3d 1328, 1331 (Fed. Cir. 2008).
87

Noah Sys., 675 F.3d at 1311 (internal citation omitted).

88

Id.

89

Id. at 1312 (internal citation omitted).
-26-

Broadvox argues that the Court should not consider the declaration of
RTI’s expert, Bradley Walton.90 First, Broadvox objects that Walton’s opinions
are conclusory and contradict the intrinsic record.91 RTI responds that Walton
reviewed the relevant claims, specification, and prosecution history to form his
opinions.92 RTI notes that Walton is an electrical engineer in the
telecommunications field, i.e., a person of ordinary skill in the art.93 Broadvox’s
objections are overruled. Expert testimony may be useful to the Court in
construing RTI’s claims.94 If I find that a construction proposed by Walton
contradicts the intrinsic evidence, I will simply discount it.
Second, Broadvox argues that Walton’s opinion is irrelevant because
he failed to examine the entire prosecution history, specifically the reexaminations
of the patents-in-suit.95 But at the Markman hearing, Mr. Spencer — counsel for
90

See Broadvox Brief at 7-8.

91

See id.

92

See RTI’s Reply Claim Construction Brief (“RTI Reply”) at 3.

93

See id.

94

See MediaCom I, 4 F. Supp. 2d at 29 (“Claim1 [of the ‘085 Patent]
presents questions that are sufficiently complex and technical that the Court would
be remiss to impose its lay understanding on this patent claim without the benefit
of expert guidance.”).
95

See 12/19/13 Letter of George Pazuniak, Broadvox’s Counsel, to the
Court (“12/19/13 Pazuniak Ltr.”) at 2.
-27-

RTI — represented that he had personal knowledge that Walton reviewed “the
entire prosecution history.”96 Thus, I will consider Walton’s opinions, including
his determination of whether means-plus-function applies to certain terms.
2.

Prior Judicial Construction of Claim Terms

The parties next disagree on the precedential effect of the MediaCom
cases, in which Judge Young construed several of the claim terms at issue here.
Broadvox contends that this Court is bound by the prior constructions under stare
decisis.97 RTI urges this Court not to follow the MediaCom opinions, given that
they were interlocutory and decided prior to the reexaminations.98 While I am
certainly not bound by the MediaCom opinions, I find them persuasive.99 As I
stated at the Markman hearing:
RTI was [before Judge Young in the MediaCom cases] and had a full and
fair opportunity to litigate. It sounds like estoppel almost. . . . [RTI]
litigated that very claim term fully, completely, and the Court spent a lot
of time on it, had this expert, made a record, issued two decisions.
That’s pretty persuasive to me.100
96

Tr. at 12:2-7.

97

See 12/19/13 Pazuniak Ltr. at 4.

98

See RTI Reply at 9.

99

See TM Patents, L.P. v. International Bus. Machs., Corp., 72 F. Supp.
2d 370, 375 (S.D.N.Y. 1999) (applying collateral estoppel where same claims were
previously construed in Markman hearing by the District Court of Massachusetts).
100

Tr. at 18:10-15.
-28-

Moreover, as Broadvox notes, “the MediaCom cases were decided before the
subsequent reexaminations, where RTI was forced to overcome new prior art.”101
Thus, the prior constructions are more favorable to RTI, than they would be today.
3.

Effect of Prosecution History

Next, RTI argues that, for purposes of claim construction, it is not
bound by statements it made to the PTO Board of Appeals.102 RTI cites no case
law to support its assertion, and I see no reason why RTI’s statements to the PTO
Appeals Board should not give rise to a prosecution disclaimer where they
“unequivocally and unambiguously disavow[] a certain meaning . . .”103
Finally, RTI argues that prosecution history statements are never
relevant to the determination of whether “means-plus-function” claiming applies.104
RTI cites only to Robinson v. Cannondale Corporation, where the Federal Circuit

101

12/19/13 Pazuniak Ltr. to the Court at 4.

102

See Tr. at 21:19-25, 22:1-2.

103

Biogen Idec, Inc., 713 F.3d at 1095. Accord Tr. at 22:3-4 (The Court:
“[A statement made to the Appeals Board] is still a statement made to the patent
office by the patentee.”).
104

See RTI Reply at 12 (citing Robinson v. Cannondale Corp., 81 Fed.
App’x 725, 728 (Fed. Cir. 2003) (“Because th[e] inquiry focuses on the claim
language, . . . arguments regarding alleged admissions in the prosecution history . .
. . are immaterial in evaluating whether the means-plus-function presumption is
rebutted.”)).
-29-

found that means-plus-function did not apply to a claim that used the word
“means” because it recited sufficient structure to perform the function.105 In that
case, the court did not need to examine the prosecution history because the claim
language clearly recited the claimed structure.106 This does not mean that
prosecution history is never relevant to the determination of whether means-plusfunction applies. To the contrary, under Federal Circuit law, it generally is.107
B.

Disputed Constructions for Claim 1 of the ‘085 Patent
1.

105

“a housing forming an enclosure and comprising”

See Robinson, 81 Fed. App’x at 728.

106

See Middleton, Inc., 311 F.3d at 1387 (“[T]he most important
indicator of the meaning of [a disputed claim term] is its usage and context in the
claim itself.”). Moreover, in Robinson, the “admissions in the prosecution history
did not pertain to [the claim at issue]” but to an entirely different claim. Robinson,
81 Fed. App’x at 728.
107

See, e.g., Cole v. Kimberly–Clark Corp., 102 F.3d 524, 531 (Fed. Cir.
1996) (“We decide on an element-by-element basis, based upon the patent and its
prosecution history, whether Section 112, ¶6 applies.”) (emphasis added); Kreepy
Krauly U.S.A., Inc. v. Sta-Right Indus., Inc., 152 F.3d 949, at *3 (Fed. Cir. 1998)
(unpublished opinion) (concluding that “[n]othing in [the claim at issue] or the
prosecution history suggests that the claim language at issue was intended to be
construed in means-plus-function form”); Greenberg v. Ethicon Endo–Surgery,
Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (considering prosecution history to
determine whether means-plus-function applies).
-30-

RTI argues that “a housing forming an enclosure and comprising”
should be construed as “one or more housings forming one or more enclosures.”108
Broadvox proposes “a unitary physical structure that includes a first jack for
connection to a first telephone and a second jack for connection to a network.”109
The difference between the proposed constructions is whether both the first and
second jack means must be contained in a single housing.
I begin with the intrinsic evidence. The plain language of the claim is
consistent with the specification and prosecution history and indicates a single
housing enclosing both the first and second jack means. The claim refers to “[a]
housing forming an enclosure and comprising first jack means for connection to
said second jack means . . .”110 The patent’s abstract states, “[t]he device
components are contained in the enclosure.”111 Figure 7 illustrates a single housing
forming an enclosure connected to a first jack means and a second jack means.112
Finally, other parts of the specification use similar language, such as “[a] housing
forms an enclosure and has jacks mounted on the housing . . . [a] first jack
108

RTI’s Opening Claim Construction Brief (“RTI Brief”) at 10.

109

Broadvox Brief at 15.

110

‘085 Patent col. 7 ll. 9-12.

111

Id. col. 1 ll. 63-64.

112

See id. Fig. 7.
-31-

interconnects to the phone side of the phone line and a second jack interconnects to
the network side of the phone line.”113 Broadvox agrees with RTI, however, that
the claimed device can have more than one “housing forming an enclosure.”114
Therefore, I define “a housing forming an enclosure” to mean “a unitary physical
structure that includes a first jack for connection to a first telephone and a second
jack for connection to a network. A claimed device may have more than one
housing forming an enclosure, as defined above.”
2.

“switch means operatively connected to said first jack
means for disconnecting said first telephone from said
network during routing of a telephone call from said first
telephone”

The parties disagree on whether “switch means” is a means-plusfunction limitation governed by Section 112(f). In MediaCom I, Judge Young
ruled that it is not, reasoning:
Although the switch means element employs “means of ___ing”
language, it is not a means-plus-function claim, because it
describes the structure that supports the disconnecting function
(i.e. a switch or switches). Not only is the structure named, but it
is described as connected to an adjacent structure, the first jack.
Because this element of claim 1 recites a definite structure, it is
not a means-plus-function claim element.115

113

Id. col. 1 ll. 59-63.

114

Tr. at 44:19-21, 45:11-12.

115

MediaCom I, 4 F. Supp. 2d at 27 (internal citations omitted).
-32-

In construing “switch means,” Judge Young observed that “[a]lthough the switch
means claim element is not limited by the structure shown in the specification, the
specification nevertheless informs construction of the terms in the claim.”116 He
concluded that “[n]o special definition appears in the specification to indicate that
the words ‘switch’ or ‘disconnect’ are to be understood in any way other than their
ordinary meanings.”117 At the Markman hearing, Broadvox conceded that the
subsequent reexaminations did not change the claim language.118 Thus, I see no
reason why MediaCom I should not control and therefore conclude that this phrase
is not governed by the means-plus-function limitation of Section 112(b). I define
the phrase as: “switch operatively connected to said first jack for disconnecting
said first telephone from said network during routing of a telephone call from said
first telephone.”
3.

116

Id.

117

“disconnecting”

Id.

118

See Tr. at 61:10 (Pazuniak: “There is no change in the language.”). In
fact, the phrase “during the routing of said first telephone” was added during the
reexamination. But this language relates to timing and is irrelevant to whether
“switch means” connotes a sufficient structure to rebut the presumption that
Section 112(f) applies.
-33-

Within the “switch means” phrase, the parties dispute the meaning of
the word “disconnecting.” Again, the MediaCom decisions are instructive. In
MediaCom II, Judge Young construed “disconnecting” to mean, “the
interruption—the breaking or opening—of the electrical circuit between the
telephone jack and the network.”119 Broadvox urges this construction and RTI
offers no good reason why I should not adopt it.120 Thus, I construe
“disconnecting” as “the interruption—the breaking or opening—of the electrical
circuit between the telephone jack and the network.”
4. & 5.

“means operatively connected to said switch means for
generating a current through said switch means to the
first telephone corresponding to a current provided by
said network, when the first telephone is disconnected
from said network to said switch means” 121

The parties again disagree on whether the phrase is a “means-plusfunction” limitation.122 The court in MediaCom I answered as follows:

119

MediaCom II, 34 F. Supp. 2d at 81.

120

RTI argues that Judge Young’s construction is not persuasive because
he “didn’t address the particular question of infringement.” Tr. at 62:24-25. But,
like Judge Young, I am not addressing infringement during the claim construction
stage.
121

Term 5 is “means for generating a current.” At the Markman hearing,
the parties agreed to construe terms 4 and 5 together. See Tr. at 89:6-25, 90:1-2.
122

See Broadvox Brief at 23.
-34-

As a preliminary matter, this Court construes the generating
means element of the claim as a means-plus-function element
because it describes no particular structure for performing the
function of generating a current corresponding to a current
provided by the network.123
The court then looked to the specification to find a description of the structure that
generates current.124 After examining the intrinsic evidence, the court concluded
that “claim 1 presents questions that are sufficiently complex and technical that the
court would be remiss to impose its lay understanding on this patent claim without
the benefit of expert guidance.”125 In MediaCom II, the court returned to the
phrase. After considering the testimony of RTI’s expert, Stephen Burns, the court
construed the phrase as “an intermediate element that conditions or regulates
electrical power from a more distant source so that it corresponds to the current
that would otherwise have been provided directly by the telephone network, and
passes the current through the switch to power the telephone.”126
RTI argues that even if the term is a means-plus-function limitation,
Walton opined that “current source is the level of detail that the artisan would need

123

MediaCom I, 4 F. Supp. 2d at 28.

124

See id.

125

Id. at 29.

126

MediaCom II, 34 F. Supp. 2d at 82.
-35-

to know what performs the function.”127 But as I said at the Markman hearing,
Walton may not add language to the claim.128 Moreover, Judge Young construed
the term with the benefit of RTI’s previous expert. I therefore adopt Judge
Young’s construction.129 I construe “means operatively connected . . . switch
means” as “an intermediate element that conditions or regulates electrical power
from a more distant source so that it corresponds to the current that would
otherwise have been provided directly by the telephone network, and passes the
current through the switch to power the telephone.”
6.

“means operatively connected to said switch means for
detecting and storing said telephone number originating
from the first telephone”

Once again, the parties debate whether this term is a means-plusfunction limitation. Because the term uses the word “means,” there is a
presumption that Section 112(f) applies.130 To rebut the presumption, RTI
contends that “the artisan understands the terms ‘detecting’ and ‘storing’ as

127

Tr. at 85:1-3.

128

See id. at 83:25, 84:1-6.

129

As with “switch means,” the subsequent reexaminations do not
change the analysis. Although the phrase “when the first telephone is disconnected
from said network by said switch means” was added in the reexamination, it relates
to timing, not structure.
130

See Flo Healthcare, 697 F.3d at 1373.
-36-

describing or defining a class of logic operations (i.e., structures) that detect and
store.”131 RTI urges that the phrase be construed as “logic operatively connected to
a switch for detecting and storing a telephone number originating from the
telephone.”132 RTI explains that “logic” refers to a “software program.”133 As the
Federal Circuit has held:
[B]ecause general purpose computers can be programmed to
perform very different tasks in very different ways, simply
disclosing a computer as the structure designated to perform a
particular function does not limit the scope of the claim to the
corresponding structure, material, or acts that perform the function,
as required by Section 112(f).134
Here, “logic” refers to no structure. Because RTI has engaged in “pure functional
claiming,” Section 112(f) applies.135
The first step in construing a means-plus-function limitation is to
“determine the claimed function.”136 Because the parties urge no particular
meaning of the words used to recite the function, the Court gives them their

131

RTI Brief at 14.

132

Id.

133

Tr. at 93:5-8.

134

Aristocrat, 521 F.3d at 1333.

135

Id.

136

Noah Sys, 675 F.3d at 131.
-37-

ordinary meaning.137 Thus, looking only at the language of the claim without
narrowing its scope, I construe the function as “detecting and storing said
telephone number originating from the first telephone.”
Next, “the court must identify the corresponding structure in the
written description of the patent that performs the function.”138 Broadvox and RTI
surprisingly cite to the same sections of the specification for the structure, column
4 lines 40-43, which states, “[t]he dial tone detect circuit 86 connects to the line
coming from the polarity guard 42 and connects to the line detector 40. The
DTMF tone detector 88 detects the tones generated from the first phone.”139 Based
on a reading of the full specification, the DTMF tone detector (88) detects and
saves any digit it detects, other than the pound sign.140
Broadvox further notes that during the ‘085 Patent reexamination, RTI
urged that the phrase be construed as a means-plus-function element and identified
the structure as “Ref No. 88, Col. 4, lines 40-43, Fig. 2.”141 Based on the
137

See, e.g., Versa Corp. v. Ag-Bag Intern. Ltd., 66 Fed. App’x 853, 855
(Fed. Cir. 2003).
138

Noah Sys., 675 F.3d at 1311 (internal citation omitted).

139

Broadvox Brief at 25; RTI Brief at 15.

140

See ‘085 Patent col. 5 ll. 64-67.

141

See Broadvox Brief at 25 (citing ‘085 Patent Reexamination
Proceeding at 265, 267, 269). See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d
-38-

specification and prosecution history, I define the function as “detecting and
storing said telephone number originating from the first telephone.” I construe the
corresponding structure as described in column 4 lines 40-43 and as displayed in
Figure 2. The dial tone detect circuit (86) connects to the line coming from the
polarity guard (42) and connects to the line detector (40). The DTMF tone detector
(88) detects and saves tones generated from the first phone.
7.

“means for addressing said database means for identifying
a plurality of communication switch paths to said second
telephone and the cost rate of each path”

The term “means” gives rise to a presumption that Section 112(f)
applies.142 Despite the presumption, RTI argues that the artisan understands the
term “database” as connoting sufficient structure.143 As such, RTI’s proposed
construction for the term is “logic for addressing said database means for
identifying a plurality of communication switch paths to said second telephone and
the cost rate of each path.”144 However, “[i]t is not enough for the patentee simply
to state or later argue that persons of ordinary skill in the art would know what

1448, 1457 (Fed. Cir. 1998) (en banc) (“Prosecution history is relevant to the
construction of a claim written in means-plus-function form.”).
142

See Flo Healthcare, 697 F.3d at 1373.

143

See RTI Brief at 15.

144

Id.
-39-

structures to use to accomplish the claimed function.”145 Because the claim
language itself provides no structure, Section 112(f) applies.
First, because the parties urge no particular meaning of the words that
recite the function, the Court gives them their ordinary meaning. Thus, the claimed
function is “addressing a database that identifies a plurality of communication
switch paths to said second telephone and the cost rate of each path.”
Second, the corresponding structure is the algorithm disclosed in the
specification column 6 lines 7-47 and Figure 5.146 In the reexamination, RTI
identified the structure as “Ref. No. 50, Col. 6 lines 2-30, Fig. 5.”147 However,
column 6 lines 7-47 recites the entire structure required to perform the function.
Based on the specification and prosecution history, I construe the
phrase to perform the function of “addressing a database that identifies a plurality
of communication switch paths to said second telephone and the cost rate of each
path.” The corresponding structure is the algorithm disclosed in the specification
at column 6 lines 7-47 and Figure 5.
8.

“means actuated subsequent to the detection of said
telephone number originating from said first telephone for

145

Aristocrat, 521 F.3d at 1337.

146

See ‘085 Patent col. 6 ll. 7-47, Fig. 5.

147

‘085 Patent Reexamination Proceeding at 265-267, 270.
-40-

comparing the cost rate of each path so as to determine a
least cost route”
As with phrases 6 and 7, this phrase uses the word “means.” By
arguing that a skilled artisan “understands the phrase . . . to mean comparing logic
actuated subsequent to the detection of said telephone number originating from a
first telephone for comparing the cost rate of each path so as to determine a least
cost route,” RTI again fails to rebut the presumption that Section 112(f) applies.148
“Comparing logic” appears nowhere in the claim language. Thus, “means
actuated” is a means-plus-function limitation.
The parties also disagree on the structure. RTI argues that even if
Section 112(f) applies “a person having ordinary skill in the art understands that
comparing logic provides sufficient structure for comparing the cost rate of each
path.”149 Broadvox contends that the specification fails to describe a corresponding
function, rendering the claim indefinite.150
Here, based on the specification and prosecution history, I find that
the structure is enclosed in the microprocessing unit (“MPU”) 50, which includes a
conventional address 60, control 62, and data buses 64, and an input output bus

148

RTI Brief at 16.

149

Id.

150

See Broadvox Brief at 27.
-41-

66.151 I thus construe the function as “comparing the cost rate of each path so as to
determine a least cost route.” The corresponding structure is enclosed in the MPU
50 and described in column 2 lines 10-11, column 4 lines 1-16, column 6 lines 2225, and Figures 2 and 5.152
9.

“means operatively connected to said switch means and said
second jack means for generating a number sequence
corresponding to a desired carrier so that said call is routed
through said second jack means to the selected
communication path and carrier to establish a switched
connection between said first telephone and said second
telephone”

The word “means” gives rise to a presumption that Section 112(f)
applies. RTI once again attempts to rebut the presumption by replacing “means”
with “logic” and arguing that an artisan would be able to identify structure.153
However, Federal Circuit law is clear that “[a] patentee cannot avoid providing
specificity as to structure simply because someone of ordinary skill in the art
would be able to devise a means to perform the claimed function.”154

151

See ‘085 Patent col. 4 ll. 1-15.

152

This is the structure RTI urged during the reexamination. See ‘085
Patent Reexamination Proceeding at 265-266.
153

See RTI Brief at 17.

154

Saffran v. Johnson & Johnson, 712 F.3d 549, 563 (Fed. Cir. 2013)
(internal citations omitted).
-42-

Given that means-plus-function applies, the parties disagree on the
proposed structure. Citing to the specification and prosecution history, Broadvox
argues that the structure is “the combination of a tone generator with a crystal
oscillator (which generates the number sequence), and an analog switch (so that
“call is routed through said second jack means to the selected communication path
. . .”).155 Broadvox cites column 2 lines 11-18, column 4 lines 34-39, and Figure 2
for support.156
RTI contends that Broadvox’s proposed construction “violates the
doctrine of claim differentiation” by limiting claim 1 to the structure of dependent
claim 5.157 Claim 5 states “the device according to claim 1 wherein said means for
generating said number sequence comprises a dual tone multifrequency
generator.”158 RTI also objects that Broadvox improperly imports terms from the
“preferred embodiment” by citing to column 4 lines 34-39 and Figure 2.159
RTI’s objections are meritless. Where a claim term and a dependent
155

1/2/14 Letter of George Pazuniak to the Court (“1/2/14 Pazuniak

Ltr.”) at 1.
156

See id. at 1-2.

157

1/7/14 Letter of Milton Springut to the Court (“1/7/14 Springut Ltr.”)

158

‘085 Patent col. 7 ll. 49-51.

159

1/7/14 Springut Ltr. to the Court at 2.

at 1.

-43-

claim term “concern the same function” and a structure for performing that
function is disclosed, “a patentee cannot rely on claim differentiation to broaden a
means-plus-function limitation beyond those structures specifically disclosed in the
specification.”160 Additionally, Section 112(f) requires a court to import “the
corresponding structure, material, or acts described in the specification.”161
I therefore construe the claimed functions as “generating a number
sequence corresponding to a desired carrier for routing call to establish a switched
connection between said first telephone and said second telephone.” I construe the
corresponding structure as described in column 2 lines 11-18, column 4 lines 3439, and Figure 2.
C.

Disputed Constructions for Claim 1 of the ‘769 Patent
1.

“at a predetermined time and date”

RTI argues that an artisan would construe the phrase as “at a
predetermined date and time.”162 Broadvox responds that this Court should follow
Judge Young’s construction in MediaCom I.163 Judge Young defined the phrase as

160

Saffran, 712 F. 3d at 563.

161

35 U.S.C. § 112(f).

162

RTI Brief at 18.

163

See Broadvox Brief at 31.
-44-

“a time and date for calling the rate provider are selected a substantial period in
advance of the call.”164 Moreover, during the ‘769 Patent reexamination, RTI
limited the meaning of “predetermined date and time to overcome prior art,”
stating:
It is also noted that [the prior art] fails to meet the claim language
because it does not teach that the call rating device connects to the rate
provider “at a predetermined time and date.” [The prior art] teaches . .
. only that the internal clock triggers the processor “at given time
intervals.” Programming the system to update at selected time intervals
(e.g. once a week) is not the same as programming it to update at a
particular date and time (e.g. May 4, 2001 at 8:45 a.m.).165
As Judge Young stated, “[t]he words [at a predetermined date and time] used in the
claim are simple English . . . . On its face, the language signifies that a particular
time and date must be selected substantially in advance of the connection.”166 In
light of the prosecution history and construction, I mostly agree with Judge
Young’s construction. However, I disagree that “at a predetermined date and time”
by its plain terms requires that the date and time be selected substantially in
advance.167 Nothing in the prosecution history or specification suggests that the

164

MediaCom I, 4 F. Supp. 2d at 32.

165

‘769 Patent Reexamination Proceeding at 406.

166

MediaCom I, 4 F. Supp. 2d at 31.

167

As I stated in the Markman hearing, “Why wouldn’t [predetermined
date and time] just be ‘selected a period in advance of the call’? What is
-45-

word “substantially” is required.168 I therefore construe “at a predetermined date
and time” as “a time and date for calling the rate provider selected a period in
advance of the call.”
2.

“call rating device”

Although the patent does not use the word “means,” Broadvox argues
that Section 112(f) applies because the Federal Circuit has recognized that “generic
terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote
sufficiently definite structure.”169 Broadvox proposes that the phrase be
construed as “an identifiable physical component having the function of receiving
rate information from a rate provider over a data transfer line, incorporating the
rate information and thereafter managing calls over the least cost routing route.”170
For structure, Broadvox pieces together various lines from the specification.171
The phrase at issue is not a means-plus-function limitation under
Section 112(f). First, the phrase does not contain the word “means.” The Federal
substantial? [S]ubstantial is not a very definite term.” Tr. at 121:2-4.
168

Broadvox agreed that “substantially” was not required. See Tr. at
121:17-19 (Pazuniak: “In other words, it is a planned, selected time and date.”).
169

Massachusetts Inst. of Tech. and Elecs. for Imaging, Inc. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006).
170

Broadvox Brief at 33.

171

See 1/2/14 Pazuniak Ltr. to the Court at 2.
-46-

Circuit will not apply Section 112(f) if the limitation contains a term that “is used
in common parlance or by persons of skill in the pertinent art to designate
structure.”172 “Call rating device” presumptively connotes a sufficient structure to
those skilled in the art.173 Walton explains that such devices were known.174
Furthermore, the specification explains that the invention in the earlier filed ‘085
Patent is a call rating device, also known as a least cost routing device.175 As
Broadvox notes, during the ‘085 Patent reexamination, RTI distinguished its
invention from prior art that included “more primitive” least cost routing
devices.176 Finally, although he did not construe the phrase, Judge Young noted
that “call rating device” is a known generic term for “Least Cost Routing
Device.”177 Thus, the specification and common parlance impart sufficient
structure such that Section 112(f) does not apply. At the Markman hearing,
Broadvox argued that “call rating device” is a vague term because it is not clear

172

Flo Healthcare, 697 F.3d at 1374.

173

See Inventio, 649 F.3d at 1359.

174

See Declaration of Bradley Walton ¶ 43.

175

See ‘769 Patent col. 1 ll. 25-32; col. 2 ll. 53-64.

176

Broadvox Brief at 28-29 (citing ‘085 Patent Reexamination
Proceeding at 291, 305-306).
177

Mediacom I, 4 F. Supp. 2d at 29.
-47-

what is being rated, but RTI clarified that the rating is “based on cost.”178 For
clarity, I construe “call rating device” as used in the patents-at-issue as “least cost
routing device.”
3.

“transmitting over the data transfer line”

Broadvox urges that the term be construed as “conveying information
over the same wire operatively connected to a call rating device on one end and a
phone network on the other.”179 RTI urges the Court to construe the phrase as
“transmitting over the data transfer line.”180 RTI argues that Broadvox improperly
limits the term to mean a single data transfer line even in the face of Federal
Circuit law that definite articles such as “a,” “an,” or “the” mean “one or more.”181
Broadvox responds that RTI’s proposed construction will mislead the jury into
thinking that information is communicated via a data transfer line different from
the earlier defined line.182 Thus, the debate is whether “data transfer line” refers to
the same “data transfer line” mentioned earlier in Claim 1.

178

Tr. at 127:2.

179

Broadvox Brief at 33.

180

RTI Brief at 20; RTI Reply at 27-28.

181

RTI Reply at 38 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc. 512
F.3d 1338, 1342-343 (Fed. Cir. 2008)).
182

See Broadvox Brief at 34.
-48-

Claim 1 states the following limitations:
[i]

connecting at a predetermined time and date via a data
transfer line the call rating device to a rate provider having
billing rate parameters for a plurality of calling stations;

[ii]

transmitting over the data transfer line indicia identifying
the call rating device and the date and time of the last
update of the billing rate parameters . . .183

Although RTI is correct that the antecedent phrase, “a data transfer line” is broad
enough to cover multiple lines, each use of the phrase “the data transfer line” still
refers to the antecedent phrase.184 The phrase “data transfer line” connects the call
rating device to a rate provider. I therefore adopt Broadvox’s construction with the
modification that more than one wire may connect the call rating device to the
phone network.185 I construe the phrase as “transmitting information over the same
wire or wires operatively connected to a call rating device on one end and a phone
network on the other.”
4.

183

“verifying if billing rate parameters should be updated”

‘769 Patent col. 6 ll. 38-45 (emphasis added).

184

See Creative Internet Adver. Corp. v. Yahoo!, Inc., 476 Fed. App’x
724, 728 (Fed. Cir. 2011); Baldwin, 512 F.3d at 1342 (“The subsequent use of
definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does
not change the general plural rule [of ‘a’], but simply reinvokes that non-singular
meaning.”).
185

At the Markman hearing, Broadvox agreed to use the word
“transmitting” rather than “conveying.”
-49-

Broadvox urges the Court to construe the claim as “the rate provider,
based on the information received from the call rating device, verifies if the billing
rate parameters should be updated.”186 RTI contends that the term should be
construed as is: “verifying if billing rate parameters should be updated.”187 The
issue is whether the Court must identify the actor doing the “verifying.”
RTI suggests that the Court follow Judge Young’s analysis of a similar
term.188 In construing “connecting at a predetermined data and time” in Mediacom
I, Judge Young concluded that “[t]he language does not require that the person
responsible for the selection be identified in order to give meaning to the claim.”189
RTI argues that the same is true for the “verifying” step.190
I disagree. As I stated at the Markman hearing, “verifying” is an act
that requires an actor, while “connecting” may not be.191 If the actor cannot be

186

Claim Terms Chart at 7.

187

Id.

188

See MediaCom I, 4 F. Supp. 2d at 31.

189

Id.

190

See RTI Brief at 39.

191

See Tr. at 138:19-25, 139:1-3 (Court: “‘[V]erifying’ is an act . . . .
[C]onnecting at a predetermined time and place . . . [is] not an act of doing
something.”).
-50-

identified, the claim fails for indefiniteness.192 However, when read in the context
of claim 1,there is no doubt that the rate provider does the “verifying.” Claim 1
recites:
A method for updating a database . . . comprising the steps of:
[i]

connecting at a predetermined time and date via a data
transfer line the call rating device to a rate provider having
billing rate parameters for a plurality of calling stations;

[ii]

transmitting over the data transfer line indicia identifying
the call rating device and the date and time of the last
update of the billing rate parameters;

[iii]

verifying if billing parameters should be updated; and

[iv]

transmitting from the rate provider to the call rating device
the updated billing rate parameters when the rate provider
determines that an update is required.193

Thus, the call rating device sends information — including information on the last
update — to the rate provider. The rate provider verifies if billing parameters
should be updated. If the rate provider determines that an update is required, it
transmits updated billing rate parameters to the call rating device. I therefore adopt
Broadvox’s construction. I construe “verifying if billing parameters should be
192

See id. at 140:15-19 (Court: “[I]f you want the claim to fail for
indefiniteness, that’s fine. But it has to explain how to practice this patent. I am
worried that without knowing who’s verifying, there isn’t something being claimed
here.”).
193

‘769 Patent col. 6 ll. 35-49 (emphasis added).
-51-

updated” as “the rate provider, based on the information received from the call
rating device, verifies if the billing rate parameters should be updated.”
5.

“transmitting from the rate provider to the call rating
device”

Similarly, Broadvox suggests that the term be construed as “the rate
provider, based on the information received from the call rating device, transmits
the billing rate parameters to the call rating device.”194 RTI contends that the term
be construed as is: “transmitting from the rate provider to the call rating device.”195
The parties disagree on whether to include the phrase “based on the information
received from the call rating device.”
Broadvox argues that the phrase derives from the second limitation of
claim 1: “transmitting . . . indicia identifying the call rating device and the date and
time of the last update of the billing rate parameters.”196 If the rate provider
“determines that an update is required” based on this indicia, it transmits the
updated billing parameters to the call rating device. Broadvox also cites to column
5 lines 55-59 of the specification, stating:

194

Claim Terms Chart at 8.

195

Id.

196

1/2/14 Pazuniak Ltr. to the Court at 2 (citing ‘769 Patent col. 6 ll. 42-

45).
-52-

As shown in Fig. 7, the rate provider receives the update request from
the call rating device (block 160). It receives 1) the calling station’s
phone number; 2) the date and time of the last update; and 3) the current
date and time (block 162) . . . If a newer rate table is available, (block
173), then an update flag is initiated by the processing unit of the rate
provider (block 174) and the update is sent . . .197
RTI responds that Broadvox’s added language “breeds confusion and
redundancy,”198 but, based on the claim language and the specification, I disagree.
I construe “transmitting from the rate provider to the call rating device” as “the rate
provider, based on the information received from the call rating device, transmits
the billing rate parameters to the call rating device.”
V.

CONCLUSION
For the aforementioned reasons, I construe the disputed terms as

follows:
Table 3
‘085 Patent, Claim 1
Term/Phrase
1. “a housing forming an
enclosure and comprising”

Construction
“a unitary physical structure that includes a first
jack for connection to a first telephone and a
second jack for connection to a network. A
claimed device may have more than one housing
forming an enclosure, as defined above.”

197

Id. (citing ‘769 Patent col. 5 ll. 55-59; col. 6 ll. 2-4).

198

1/7/14 Springut Ltr. to the Court at 3.
-53-

‘085 Patent, Claim 1
Term/Phrase

Construction

2. “switch means operatively
connected to said first jack
means for disconnecting (as
defined below) said first
telephone from said network
during routing of a telephone
call from said first telephone”

“switch operatively connected to said first jack
for disconnecting said first telephone from said
network during routing of a telephone call from
said first telephone.”

3. “disconnecting”

“the interruption—the breaking or opening—of
the electrical circuit between the telephone jack
and the network.”
“an intermediate element that conditions or
regulates electrical power from a more distant
source so that it corresponds to the current that
would otherwise have been provided directly by
the telephone network, and passes the current
through the switch to power the telephone.”

4 & 5. “means operatively
connected to said switch
means for generating a
current through said switch
means to the first telephone
corresponding to a current
provided by said network,
when the first telephone is
disconnected from said
network to said switch
means”
6. “means operatively
connected to said switch
means for detecting and
storing said telephone
number originating from the
first telephone”

This is a means-plus-function element, whose
construction is governed by 35 U.S.C. § 112(f).
Function: detecting and storing said telephone
number originating from the first telephone.
Structure: col. 4 ll. 40-43 and Fig. 2. The dial
tone detect circuit (86) connects to the line
coming from the polarity guard (42) and
connects to the line detector (40). The DTMF
tone detector (88) detects and saves tones
generated from the first phone.

-54-

‘085 Patent, Claim 1
Term/Phrase
7. “means for addressing said
database means for
identifying a plurality of
communication switch paths
to said second telephone and
the cost rate of each path”

Construction
This is a means-plus-function element, whose
construction is governed by 35 U.S.C. § 112(f).
Function: addressing a database that identifies a
plurality of communication switch paths to said
second telephone and the cost rate of each path.
Structure: the algorithm disclosed in the
specification at col. 6 ll. 7-47 and Fig. 5.

8. “means actuated
subsequent to the detection of
said telephone number
originating from said first
telephone for comparing the
cost rate of each path so as to
determine a least cost route”

This is a means-plus-function element, whose
construction is governed by 35 U.S.C. § 112(f).

9. “means operatively
connected to said switch
means and said second jack
means for generating a
number sequence
corresponding to a desired
carrier so that said call is
routed through said second
jack means to the selected
communication path and
carrier to establish a switched
connection between said first
telephone and said second
telephone”

This is a means-plus-function element, whose
construction is governed by 35 U.S.C. § 112(f).

Function: comparing the cost rate of each path
so as to determine a least cost route.
Structure: Ref. No. 50; col. 2 ll. 10-11; col. 4 ll.
1-16; col. 6 ll. 22-25; Figs. 2, 5.

Function: generating a number sequence
corresponding to a desired carrier for routing call
to establish a switched connection between said
first telephone and said second telephone.
Structure: col. 2 ll. 11-18; col. 4 ll. 34-39 and
Fig. 2.

-55-

,

'.

'.

..........

.

'169 Patebt, Claim 1

,
TermlPhras~

.

'.V.'·

....

., '

..
,.'

:.

.',.

,.....

COllstructi(jn '
,"

1. "at a predetermined time and
date"

"a time and date for calling the rate provider
selected a period in advance of the call."

2. "call rating device"

"least cost routing device."

3. "transmitting over the data
transfer line"

"transmitting information over the same wire
or wires operatively connected to a call rating
device on one end and a phone network on the
other."

4. "verifying if billing rate
parameters should be updated"

"the rate provider, based on the information
received from the call rating device, verifies if
the billing rate parameters should be updated."

5. "transmitting from the rate
provider to the call rating
device"

"the rate provider, based on the information
received from the call rating device, transmits
the billing rate parameters to the call rating
device."

SO ORDERED:

Dated:

New York, New York
January 28, 2014

-56­

- Appearances For RTI:

For Broadvox:

Milton Springut, Esq.
Tal S. Benschar, Esq.
Springut Law PC
75 Rockefeller Plaza
New York, NY 10019
[phone]

Keith D. Nowack, Esq.
Andriy Roman Pazuniak, Esq.
Carter Ledyard & Milburn LLP
2 Wall Street
New York, NY 10005
[phone]

Scott Spencer, Esq.
Scott Spencer Law
75 Rockefeller Plaza
New York, NY 10019
[phone]

George Pazuniak, Esq.
Pazuniak Law Office LLC
216 Sorrel Drive
Wilmington, DE 19803
[phone]
Alexander Gertsburg, Esq.
Law Office of Alexander Gertsburg
8210 Macedonia Commons Blvd., Suite
68 - Pmb 151
Macedonia, OH
[phone]

-57-