GENBAND US LLC v. Metaswitch Networks Corp. et al

Filing 135

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 4/2/2015. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
GENBAND USA LLC,
v.
METASWITCH NETWORKS LTD., et al.

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CASE NO. 2:14-CV-33-JRG-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On February 19, 2015, the Court held a hearing to determine the proper construction of
the disputed claim terms in United States Patents Nos. 6,772,210; 6,791,971; 6,885,658;
6,934,279; 7,047,561; 7,184,427; 7,990,984; and 7,995,589. After considering the arguments
made by the parties at the hearing and in the parties’ claim construction briefing (Dkt. Nos. 108,
118, and 121), 1 the Court issues this Claim Construction Memorandum and Order.

1

Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
Memorandum and Order refer to the page numbers of the original documents rather than the
page numbers assigned by the Court’s electronic docket unless otherwise indicated.

Table of Contents
I. BACKGROUND ........................................................................................................................ 4
II. LEGAL PRINCIPLES ............................................................................................................ 4
III. THE PARTIES’ STIPULATED TERMS ............................................................................ 7
IV. DISPUTED TERMS IN U.S. PATENT NO. 6,772,210 ....................................................... 7
A. “telephone number based device” .......................................................................................... 9
B. “allocat[ing] a second address . . . for use in the second network” ...................................... 11
C. “map[ping] the first address . . . to [a / the] second address”............................................... 14
V. DISPUTED TERMS IN U.S. PATENT NO. 7,047,561 ...................................................... 16
A. “applying the Internet protocol packets associated with the signaling channel and
control channel to [an / the] application proxy” ................................................................. 16
VI. DISPUTED TERMS IN U.S. PATENTS NO. 7,184,427 AND 7,990,984 ........................ 20
A. “the [first and second data communication protocols / data communication protocol]
includes any of Internet Protocol, Asynchronous Transfer Mode, and Frame Relay
protocols” ............................................................................................................................ 20
B. “operable to communicate the [first / second] telecommunication information to a
telecommunication network using a [first / second] [telecommunication interface
format / telecommunication interface] associated with the [first / second] subscriber” ..... 23
C. “means for communicating the [first / second] telecommunication information to
[a / the] telecommunication network using a [first / second] interface format associated
with the [first / second] subscriber” and “means for receiving [first / second] data
packets from a [first / second] broadband network using a [first / second] data
communication protocol” ................................................................................................... 26
D. “means for decompressing the [first / second] telecommunication information using a
[first / second] compression algorithm associated with the [first / second] subscriber” .... 29
E. “means for extracting [first / second] telecommunication information associated with a
[first / second] subscriber from the [first / second] data packets” ...................................... 32
VII. DISPUTED TERMS IN U.S. PATENTS NO. 6,934,279 AND 7,995,589 ...................... 34
A. “telephony device” ............................................................................................................... 35
B. “remote device” .................................................................................................................... 37
C. “control system” ................................................................................................................... 39
VIII. DISPUTED TERMS IN U.S. PATENT NO. 6,791,971 .................................................. 42
A. “Service Control Function” (SCF), “Service Control Point” (SCP), “Service Switching
Function” (SSF), and “Service Switching Point” (SSP) ..................................................... 43
B. “means for receiving on an IP network, a query relating to implementation of a
communications service” .................................................................................................... 46
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C. “means for producing a response to said query to cause said communications service to
be implemented” ................................................................................................................. 48
D. “means for receiving, on an IP network, a message requesting said communications
service” ............................................................................................................................... 50
E. “means for producing a query relating to implementation of said communications
service for receipt by a Service Control Function (SCF), in response to said message,
to cause said communications service to be implemented” ................................................ 51
IX. DISPUTED TERMS IN U.S. PATENT NO. 6,885,658 ..................................................... 54
A. “a superset of functions provided by the first and second IP telephony protocols” ............ 54
B. “protocol” ............................................................................................................................. 58
C. “communicating first parameter to the second protocol agent without alteration” ............. 60
D. “adapted to determine that a first parameter associated with the first IP telephony
protocol does not map to the second IP telephony protocol” ............................................. 63
X. CONCLUSION....................................................................................................................... 66
APPENDIX A .............................................................................................................................. 67

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I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents Nos. 6,772,210 (“the
‘210 Patent”); 6,791,971 (“the ‘971 Patent”); 6,885,658 (“the ‘658 Patent”); 6,934,279 (“the ‘279
Patent”); 7,047,561 (“the ‘561 Patent”); 7,184,427 (“the ‘427 Patent”); 7,990,984 (“the ‘984
Patent”); and 7,995,589 (“the ‘589 Patent”) (collectively, the “patents-in-suit”).
In general, the patents-in-suit relate to telecommunications, such as communications over
an Internet Protocol network, in particular Voice over Internet Protocol (“VoIP”).
The Court herein addresses the patents-in-suit in the groupings used by the parties in their
claim construction briefing. 2
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with preliminary constructions for the disputed terms with the aim of focusing the parties’
arguments and facilitating discussion as to those terms. Those preliminary constructions are set
forth below within the discussion for each term.
II. LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical

2

The present Claim Construction Memorandum and Order does not address additional terms that
Defendants have identified but that have not been briefed by the parties. See Dkt. No. 118 at
App’x A; see also Dkt. No. 126, Jan. 30, 2015 Materiality Statement; Dkt. No. 79, Defendants’
Motion to Enter a Revised Model Order Focusing Patent Claims and Prior Art; Dkt. No. 97, Dec.
2, 2014 Order; Dkt. No. 101, Dec. 5, 2014 Pl.’s Notice of Election of Claims to Be Construed;
Dkt. No. 102, Dec. 5, 2014 Defs.’ Notice of Election of Claim Terms.
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Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim’s
meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314-15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips,
415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This
is true because a patentee may define his own terms, give a claim term a different meaning than
the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d
at 1316. In these situations, the inventor’s lexicography governs. Id. The specification may also

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resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of
the words used in the claims lack sufficient clarity to permit the scope of the claim to be
ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification
may aid the court in interpreting the meaning of disputed claim language, particular
embodiments and examples appearing in the specification will not generally be read into the
claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord
Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patent applicant may also define a term in prosecuting the patent. Home
Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported

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assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
The Supreme Court of the United States has recently “read [35 U.S.C.] § 112, ¶ 2 to
require that a patent’s claims, viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc.
v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim
indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by
Nautilus, 134 S. Ct. 2120.
III. THE PARTIES’ STIPULATED TERMS
The parties have reached agreement on constructions for certain terms, as stated in their
Corrected Joint Claim Construction and Prehearing Statement (Dkt. No. 99 at Ex. A) and their
Joint Claim Construction Chart (Dkt. No. 125). The parties’ agreements are set forth in
Appendix A to this Claim Construction Memorandum and Order.
IV. DISPUTED TERMS IN U.S. PATENT NO. 6,772,210
The ‘210 Patent, titled “Method and Apparatus for Exchanging Communications
Between Telephone Number Based Devices in an Internet Protocol Environment,” issued on
August 3, 2004, and bears a filing date of July 5, 2000. The original assignee of the ‘210 Patent
was Nortel Networks Limited. The Abstract of the ‘210 Patent states:
In an IP communication network, telephone number based services, such as
Voice-over-IP (VoIP), Fax-over-IP, and IP Paging, are supported using network
address translation. A gatekeeper determines a gateway for a connection between
a first telephone number based device in a first network and a second telephone
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number based device in a second network based upon a telephone number for the
second telephone number based device. The gateway is situated between the two
networks, and enables communication between the two telephone number based
devices by having a first address for the first telephone number based device for
use in the first network, allocating a second address or address/port number pair
for the first telephone number based device for use in the second network, and
performing address translation on communication messages exchanged between
the first telephone number based device and the second telephone number based
device such that the first address for the first telephone number based device is
used in the first network and the second address or address/port number pair for
the first telephone number based device is used in the second network.
As a preliminary matter, the parties have cited testimony of the named inventors, but such
testimony has not significantly affected the Court’s analysis in this case. See Howmedica
Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346-47 (Fed. Cir. 2008) (noting that
inventor testimony is “limited by the fact that an inventor understands the invention but may not
understand the claims, which are typically drafted by the attorney prosecuting the patent
application”); but see Phillips, 415 F.3d at 1317 (“Although we have emphasized the importance
of intrinsic evidence in claim construction, we have also authorized district courts to rely on
extrinsic evidence, which consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises.”) (emphasis added;
citations and internal quotation marks omitted); Voice Techs. Grp., Inc. v. VMC Sys., Inc., 164
F.3d 605, 615 (Fed. Cir. 1999) (“An inventor is a competent witness to explain the invention and
what was intended to be conveyed by the specification and covered by the claims. The testimony
of the inventor may also provide background information, including explanation of the problems
that existed at the time the invention was made and the inventor’s solution to these problems.”).
This finding applies to all of the patents-in-suit addressed by this Claim Construction
Memorandum and Order.

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A. “telephone number based device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language Indefinite
does not require construction and should be
accorded its plain and ordinary meaning.
Dkt. No. 108 at 1; Dkt. No. 118 at 1. The parties submit that this term appears in Claims 1-5, 7,
8, 9, 11, 13, 14, 15, 17, 18, 19, 21, 23, 24, 25, 27, 28, 29, 67, 68, 69, and 70 of the ‘210 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “device identified by a telephone number for
communication services.”
(1) The Parties’ Positions
Plaintiff argues that “a person of ordinary skill in the art would understand the claim term
to refer to a device that can be identified by a telephone number for receiving communication
services.” Dkt. No. 108 at 1.
Defendants respond that the patentee referred to “telephone number based devices” to
avoid prior art disclosing general-purpose IP devices, such as personal computers connected to
the Internet, but “[t]hey inexplicably failed, however, to explain or justify this distinction . . . .”
Dkt. No. 118 at 1. Defendants conclude that “[b]ecause there is no well understood definition of
what constitutes a ‘telephone number based device’ to a person of ordinary skill, and the intrinsic
record does not provide one, this term cannot ‘inform those skilled in the art about the scope of
the invention with reasonable certainty’ and is therefore indefinite.” Id. at 2 (quoting Nautilus,
134 S. Ct. at 2129).

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Plaintiff replies that “[t]he specification uses the term, consistent with its plain and
ordinary meaning, to refer to devices that are identified by a telephone number to receive
communication services.” Dkt. No. 121 at 1.
At the February 19, 2015 hearing, Plaintiff stated that the Court’s preliminary
construction was acceptable to Plaintiff.
(2) Analysis
The specification discloses devices that are identified by a telephone number. See, e.g.,
‘210 Patent at 2:36 (“telephone number for the called device”), 4:49-50 (“phone number of the
called VoIP device”), 5:32-33 (“phone number for the called VoIP device”), 6:39 (“phone
number of the called VoIP device”), 6:62 (“phone number of the called VoIP device”) & 9:32-36
(“phone number for the called VoIP device”).
Plaintiff’s expert opines that “[a] telephone number based device is a device that can be
identified by a telephone number for receiving communication services,” which Plaintiff’s expert
submits is the plain and ordinary meaning of the disputed term. Dkt. No. 108, Ex. 9, Nov. 12,
2014 Lipoff Opening Decl. at ¶ 41; see id. at ¶¶ 42-44. Defendants’ expert responds that there is
ambiguity as to whether the disputed term refers to devices that support telephone-number-based
services, devices that are addressed exclusively by a telephone number, or devices that are
capable of being addressed by a telephone number. See Dkt. No. 118, Ex. O, Nov. 11, 2014
Williams Decl. at ¶¶ 70-71; see also id., Ex. P, Nov. 25, 2014 Williams Rebuttal Decl. at ¶¶ 1516.
On balance, the meaning articulated by Plaintiff’s expert is supported by, for example,
the above-cited portions of the specification and is persuasive. See, e.g., ‘210 Patent at 5:30-40.
Defendants’ expert’s opinions fail to demonstrate that the disputed term renders the claim scope

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not “reasonabl[y] certain[].” Nautilus, 134 S. Ct. at 2129; see id. at 2128 (a “modicum of
uncertainty” does not render a claim indefinite). Instead, Defendants’ arguments are primarily
directed to issues of infringement, such as whether a particular number in a particular
implementation is, in fact, a “telephone number.” See PPG Indus. v. Guardian Indus. Corp., 156
F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court has defined the claim with whatever
specificity and precision is warranted by the language of the claim and the evidence bearing on
the proper construction, the task of determining whether the construed claim reads on the
accused product is for the finder of fact.”). Defendants’ indefiniteness argument is hereby
expressly rejected.
Although Plaintiff proposes that no construction is necessary, “some construction of the
disputed claim language will assist the jury to understand the claims.” TQP Dev., LLC v. Merrill
Lynch & Co., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012)
(Bryson, J.).
The Court therefore hereby construes “telephone number based device” to mean
“device identified by a telephone number for communication services.”
B. “allocat[ing] a second address . . . for use in the second network”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “assign[ing] a unique IP address to the first
does not require construction and should be telephone number based device for use in the
accorded its plain and ordinary meaning.
second network”
Dkt. No. 108 at 2; Dkt. No. 118 at 3. The parties submit that these terms appear in Claims 1, 2,
67, and 68 of the ‘210 Patent.

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Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning; Defendants’ proposed requirement
of a ‘unique’ IP address is rejected.”
(1) The Parties’ Positions
Plaintiff argues that “Defendants simply repeat most of the words from the limitation in
[their] construction” except that Defendants also “read into the claim a requirement that the
second address be ‘unique,’” which Plaintiff argues is “inconsistent with the specification of the
‘210 Patent.” Dkt. No. 108 at 2.
Defendants respond that although “port numbers may be used to identify multiple devices
mapped to the same address in one embodiment, that embodiment is plainly not recited in the
claims.” Dkt. No. 118 at 3-4. Defendants argue that “allocating” necessarily results in unique
assignment of IP addresses. Id. at 4. Defendants also cite extrinsic dictionary definitions as well
as testimony of the named inventor. Id. at 4-5.
Plaintiff replies that “Defendants improperly seek to limit the claims to one of th[]e
disclosed embodiments by requiring the second address to be unique,” and Plaintiff argues that
not even the dictionary definitions cited by Defendants support such a limitation. Dkt. No. 121 at
1.
(2) Analysis
Claim 1 of the ‘210 Patent, for example, recites (emphasis added):
1. In an Internet Protocol (IP) communication system having a first network
coupled to a second network through a gateway, wherein the first network and the
second network are both IP networks, a method for exchanging communication
messages between a first telephone number based device in the first network and
a second telephone number based device in the second network, the first
telephone number based device having a first address for use in the first network,
the method comprising:

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allocating a second address for the first telephone number based device
for use in the second network; and
performing address translation on communication messages so that the
first address for the first telephone number based device is used in the first
network and the second address for the first telephone number based device is
used in the second network.
Defendants’ proposal of requiring a “unique” address is not supported by the claim
language. Further, Defendants have not demonstrated that the intrinsic evidence contains any
disclaimer in this regard, and the extrinsic dictionary definitions do not establish that “allocating”
requires that what is allocated must be unique. See Dkt. No. 118, Ex. O, Nov. 11, 2014 Williams
Decl. at ¶ 80.
Defendants’ proposal of uniqueness also runs contrary to disclosures that although some
embodiments may use a unique IP address, port numbers can be used to distinguish devices
sharing a common IP address. See ‘210 Patent at 4:2-7 & 8:59-66; see also id. at 5:21-26,
5:41-57 & 6:14-21.
Although the specification discloses embodiments in which a unique IP address is
allocated (see, e.g., ‘210 Patent at 3:44-55 & 4:18-29), that feature of particular embodiments
should not be imported into the claims. See Comark, 156 F.3d at 1187. Further, even the
disclosure cited by Defendants explains that an IP address may be unique within a private
network but not within the entire communications system:
A VoIP device in the private network may be associated with a ‘private’ IP
address that is unique within the private network but not within the entire
communication system, for example, due to the common practice of reusing IP
addresses.
Id. at 3:47-51.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568

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(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement.”); see also O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and
should not be) required to construe every limitation present in a patent’s asserted claims.”);
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2
Micro, where the court failed to resolve the parties’ quarrel, the district court rejected
Defendants’ construction.”).
The Court therefore hereby construes “allocat[ing] a second address . . . for use in the
second network” to have its plain meaning.
C. “map[ping] the first address . . . to [a / the] second address”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“associat[e/ing] the first address . . . with [a / “matching an IP address in the first network to
the] second address”
a different and unique IP address in the second
network”
Dkt. No. 108 at 3; Dkt. No. 118 at 5. The parties submit that these terms appear in Claims 3, 7,
11, 13, 21, and 23 of the ‘210 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “mapping an address in the first network to a
different address in the second network.”
(1) The Parties’ Positions
The parties present similar arguments regarding “uniqueness” as addressed in the
discussion of the “allocating . . .” term, above. Dkt. No. 108 at 3; Dkt. No. 118 at 5.

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Plaintiff also argues that “mapping” refers to “associating” rather than “matching”
because “the claims and specification . . . describe using an association between the first and
second addresses to support translation between them.” Dkt. No. 108 at 3; see ‘210 Patent
at 3:61-4:7.
Defendants respond that the specification repeatedly refers to a “corresponding” address,
that Defendants argue means a “one-to-one” “mapping.” Dkt. No. 118 at 5. Defendants also cite
extrinsic dictionary definitions of “map.” Id. at 6; see id., Ex. O, Nov. 11, 2014 Williams Decl. at
¶¶ 91-92.
Plaintiff’s reply brief does not address this term. See Dkt. No. 121.
At the February 19, 2015 hearing, Plaintiff stated that it had no objection to the Court
using the word “mapping” in the construction of this disputed term.
(2) Analysis
For substantially the same reasons discussed above as to the term “allocat[ing] a second
address . . . for use in the second network,” the Court hereby expressly rejects Defendants’
proposed construction, in particular as to Defendants’ proposal of requiring a “unique IP
address.”
Also, Plaintiff’s proposal of the word “associating” would provide little if any guidance
to the finder of fact. The Court therefore hereby expressly rejects Plaintiff’s proposed
construction.
Instead, the term “mapping” is sufficiently clear on its face, and no further construction is
necessary. See U.S. Surgical, 103 F.3d at 1568 (“Claim construction is a matter of resolution of
disputed meanings and technical scope, to clarify and when necessary to explain what the
patentee covered by the claims, for use in the determination of infringement. It is not an

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obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d at 1362; Finjan, 626 F.3d
at 1207.
The Court therefore hereby construes “map[ping] the first address . . . to [a / the]
second address” to mean “mapping an address in the first network to a different address in
the second network.”
V. DISPUTED TERMS IN U.S. PATENT NO. 7,047,561
The ‘561 Patent, titled “Firewall for Real-Time Internet Applications,” issued on May 16,
2006, and bears a filing date of September 28, 2000. The original assignee of the ‘561 Patent was
Nortel Networks Limited. The Abstract of the ‘561 Patent states:
The present invention relates to a firewall for use in association with real-time
Internet applications such as Voice over Internet Protocol (VoIP). The firewall
applies an application proxy to the signaling and control channels and a packet
filter to the bearer channels. One of the features of hybrid firewall is that the
application proxy can instruct the packet filter as to which bearer channels to
enable and disable for the duration of a real-time Internet application session. The
hybrid firewall can also intelligently perform network address translation (NAT)
on Internet protocol packets incoming and outgoing to the firewall.
A. “applying the Internet protocol packets associated with the signaling channel and
control channel to [an / the] application proxy”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“applying, for the duration of the real-time “applying all the IP packets associated with the
Internet application, the IP packets associated signaling channel and control channel to the
with the signaling channel and control channel application proxy”
to the application proxy”
Dkt. No. 108 at 4; Dkt. No. 118 at 6. The parties submit that these terms appear in Claims 1, 12,
and 17 of the ‘561 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “applying, for the setup, duration and take down of

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the real-time Internet application, all IP packets associated with the signaling channel and control
channel to the application proxy.”
(1) The Parties’ Positions
“The parties’ dispute is whether the recited applying operation must be performed during
a real-time Internet application (as Plaintiff contends) or whether the applying operation must
also be performed outside the context of a real-time Internet application (as Defendants
contend).” Dkt. No. 108 at 4.
Plaintiff argues that the claims and the specification are explicitly directed to a real-time
Internet application. Id. at 4. Plaintiff also argues that the prosecution history cited by
Defendants does not compel otherwise because the patentee’s statements, regarding handling of
“all” packets, were in the context of a real-time Internet phone call. Id. at 4-5.
Defendants respond that the patentee’s disclaimer is clear and appears twice in the
prosecution history. Dkt. No. 118 at 6-7. Defendants conclude that “[o]ne of ordinary skill in the
art reading the prosecution history would therefore understand that the applicants expressly
disclaimed arrangements where less than all of the packets associated with the signaling channel
and the control channel were processed by the application proxy.” Id. at 7.
Plaintiff replies that “the reference to ‘all’ packets in connection with this statement [in
the prosecution history] referred to packets received during a call.” Dkt. No. 121 at 2.
At the February 19, 2015 hearing, Plaintiff stated that it agreed with the Court’s
preliminary construction.
(2) Analysis
Claim 1 of the ‘561 Patent, for example, recites (emphasis added):
1. A firewall for Internet protocol packets carrying data for a real-time Internet
application, each of said Internet protocol packets being associated with any one
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of a signaling channel, a control channel, or a bearer channel of said real-time
Internet application, the firewall comprising:
an application proxy and a packet filter,
the firewall applying the Internet protocol packets associated with the
signaling channel and the control channel to the application proxy, and the
firewall applying the Internet protocol packets associated with the bearer channel
to the packet filter.
Claims 12 and 17 are method claims but include preambles that refer to a “real-time
Internet protocol.” See ‘561 Patent at 1:62-63 (“real-time Internet applications are based on realtime Internet protocols”).
Because “the Internet Protocol packets” (as well as “the signaling channel” and “the
control channel”) in the disputed term have their antecedent basis in the preambles, the
preambles are limiting, in particular as to the “real-time Internet application” or “real-time
Internet protocol.” See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808-09
(Fed. Cir. 2002); see also Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir.
2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of the claimed invention.”);
Moreover, the specification explicitly states: “The present invention relates to a firewall
which is optimized for use with real-time Internet applications such as voice, fax, video or
multimedia.” ‘561 Patent at 2:21-23 (emphasis added); see id. at Fig. 5 (step 526).
During prosecution, the patentee stated that “all” packets associated with the signaling
channel and the control channel are applied to the application proxy:
Claim 1 recites “applying the Internet protocol packets associated with the
signaling channel and the control channel to the application proxy . . . .” Implicit
in this claim language is that all the packets associated with the signaling channel
and the control channel are applied to the application proxy. In contrast, Baum’s
control processor 344 drops out of the call (as previously argued) and does not
process the call take down or other signaling channel or control channel packets
as recited in the claim.

- 18 -

Dkt. No. 108, Ex. 21, Mar. 24, 2005 Response to the Final Office Action Mailed January 27,
2005, at 3 (emphasis in original); see id., Ex. 22, Jul. 27, 2005 Appeal Brief at 6 (similar).
The patentee thus referred to “all” packets in the context of real-time applications. See,
e.g., Dkt. No. 108, Ex. 21, Mar. 24, 2005 Response to the Final Office Action Mailed January
27, 2005, at 2 (“Each VoIP phone call has a signaling channel that is responsible for call set up,
call take down, and other similar signaling functions. The present invention applies the
application proxy firewall to the signaling channel at all stages of the call.”); id., Ex. 22, Jul. 27,
2005 Appeal Brief at 2 (similar). Nothing in the Notice of Allowability cited by Defendants
compels otherwise. See Dkt. No. 118, Ex. B, Oct. 17, 2005 Reasons for Allowance at 2-6
(GENBAND2834-38).
The patentee therefore did not make any disclaimer in the manner urged by Defendants.
See Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a basic principle
of claim interpretation, prosecution disclaimer promotes the public notice function of the
intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.”) (emphasis added); id. at 1325-26 (“[F]or prosecution disclaimer to attach, our
precedent requires that the alleged disavowing actions or statements made during prosecution be
both clear and unmistakable.”) (emphasis added).
Nonetheless, the claim language, the specification, and the prosecution history all support
reading the disputed term such that for the setup, duration, and take down of a real-time Internet
application, all IP packets associated with the signaling channel and control channel are applied
to the application proxy.
The Court therefore hereby construes “applying the Internet protocol packets
associated with the signaling channel and control channel to [an / the] application proxy” to

- 19 -

mean “applying, for the setup, duration, and take down of the real-time Internet
application, all IP packets associated with the signaling channel and control channel to the
application proxy.”
VI. DISPUTED TERMS IN U.S. PATENTS NO. 7,184,427 AND 7,990,984
The ‘427 Patent, titled “System and Method for Communicating Telecommunication
Information from a Broadband Network to a Telecommunication Network,” issued on
February 27, 2007, and bears a filing date of November 28, 2000. The original assignee of the
‘427 Patent was GenBand Inc. The Abstract of the ‘427 Patent states:
A system for communicating telecommunication information includes a memory,
packetization modules, and a telecommunication interface module. The memory
stores subscriber profiles associating each of several subscribers with a
telecommunication interface. The packetization modules receive data packets
from a broadband network and extract telecommunication information associated
with a subscriber from the data packets. The telecommunication interface module
communicates the telecommunication information to a telecommunication
network using a telecommunication interface associated with the subscriber.
The ‘984 Patent is a continuation of the ‘427 Patent and bears the same title. The ‘984
Patent issued on August 2, 2001, and the original assignee was Genband US LLC.
A. “the [first and second data communication protocols / data communication protocol]
includes any of Internet Protocol, Asynchronous Transfer Mode, and Frame Relay
protocols”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “the [first and second data communication
does not require construction and should be protocols / data communication protocol]
accorded its plain and ordinary meaning.
capable of being supported include Internet
Protocol, Asynchronous Transfer Mode, and
Frame Relay protocols”
Dkt. No. 108 at 5; Dkt. No. 118 at 8. The parties submit that these terms appear in Claims 1, 13,
28, and 38 of the ‘427 Patent and Claims 1, 7, 9, 16, 17, and 20 of the ‘984 Patent.

- 20 -

Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning; Defendants’ request to require
utilization of all three protocols is rejected.”
(1) The Parties’ Positions
Plaintiff argues that the plain language of this term is clear and that “Defendants’
construction is improper because it would change the meaning of the claim by requiring support
for all three recited protocols rather than selected ones of the recited protocols.” Dkt. No. 108
at 5-6. Plaintiff argues that Defendants thereby “improperly try to read ‘any of’ out of the claim
limitation.” Id. at 6.
Defendants respond that their proposed construction “embodies the intrinsic evidence,
which consistently and repeatedly explains the alleged invention is capable of supporting all of
the IP, ATM and FR protocols.” Dkt. No. 118 at 8-9. Defendants also submit that their proposed
construction “requires the claimed ‘packetization modules’ and ‘receiving’ steps, which receive
data packets using the data communication protocols, be capable of supporting IP, ATM, and
FR—not that the data communication protocol is all three simultaneously.” Id. at 11.
Plaintiff replies that “[t]he passages of the specification cited by Defendants discuss
support for ‘several, alternative data communication protocols,’ but none of those passages
require support for all three of IP, ATM, and Frame Relay.” Dkt. No. 121 at 3.
At the February 19, 2015 hearing, Defendants urged that Plaintiff has admitted in its
briefing that the disputed term requires support for at least two of the specified protocols. See
Dkt. No. 108 at 7; see also Dkt. No. 121 at 3 n.5. Plaintiff responded that multiple protocols are
necessary only where required by the language of a particular claim.

- 21 -

(2) Analysis
Claim 1 of the ‘427 Patent, for example, recites (emphasis added):
1. A gateway for communicating telecommunication information, comprising:
one or more packetization modules operable to receive first data packets
from a first broadband network using a first data communications protocol and to
extract first telecommunication information associated with a first subscriber from
the first data packets, the packetization modules further operable to receive
second data packets from a second broadband network using a second data
communication protocol and to extract second telecommunication information
associated with a second subscriber from the second data packets, wherein the
first and second broadband networks include any of digital subscriber line, cable,
and wireless platforms, wherein the first and second data communication
protocols includes any of Internet Protocol, Asynchronous Transfer Mode, and
Frame Relay protocols; and
one or more telecommunication interface modules operable to
communicate the first telecommunication information to a telecommunication
network using a first telecommunication interface format associated with the first
subscriber and to communicate the second telecommunication information to the
telecommunication network using a second telecommunication interface format
associated with the second subscriber, the first and second telecommunication
interface formats including any of GR-303, TR-8, SS7, V5, ISDN, and unbundled
analog lines.
The plain language of the claim thus requires merely that the data communication
protocols must be selected from among Internet Protocol, Asynchronous Transfer Mode, and
Frame Relay. The specification supports such a reading. See ‘427 Patent at 3:60-63 (“according
to Internet Protocol (IP), Asynchronous Transfer Mode (ATM), Frame Relay, or any other
suitable data communication protocol”); see also Dkt. No. 108, Ex. 15, Nov. 25, 2014 Lipoff
Rebuttal Decl. at ¶¶ 142-44. Further, Plaintiff acknowledges that particular claim language may
require more than one protocol. See Dkt. No. 108 at 7; see also Dkt. No. 121 at 3 n.5.
The specification explains that supporting “several,” alternative data communication
protocols can be advantageous. See ‘427 Patent at 2:23-25 (“Rather than provide a single,
technology-dependent

solution,

the

present

- 22 -

invention

uses

several,

alternative

telecommunication, compression, and broadband technologies to couple a telecommunication
network to a broadband network.”), 10:54-11:59, 13:37-40 & 16:3-5.
Defendants have not, however, identified any definitive statements in the specification
that would support their proposed construction. For example, Defendants have not established
that the word “several” necessarily refers to more than two.
Defendants also urge that the prosecution history contains such a disclaimer, but on
balance no such disclaimer is evident. See Omega Eng’g, 334 F.3d at 1324-26. Instead, the
prosecution history is consistent with the above-discussed plain reading of the claim language.
See Dkt. No. 108, Ex. 23, May 19, 2005 Response to Examiner’s Action (‘427 Patent) at 21-22
& 25 (GENBAND4937-38, 41) (pp. 23-24 & 27 of 28 of Ex. 23). In particular, nowhere did the
patentee state that the phrase “any of” must be read to mean a capability as to “all of.”
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “the [first and second data communication
protocols / data communication protocol] includes any of Internet Protocol, Asynchronous
Transfer Mode, and Frame Relay protocols” to have its plain meaning.
B. “operable to communicate the [first / second] telecommunication information to a
telecommunication network using a [first / second] [telecommunication interface format /
telecommunication interface] associated with the [first / second] subscriber”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “operable to communicate the [first / second]
does not require construction and should be telecommunication
information
to
a
accorded its plain and ordinary meaning.
telecommunication network using a [first /
second] [telecommunication interface format /
telecommunication interface] designated for
use with the [first / second] subscriber”
- 23 -

Dkt. No. 108 at 7-8; Dkt. No. 118 at 11 (emphasis added). The parties submit that this term
appears in Claims 1 and 12 of the ‘427 Patent and Claim 7 of the ‘984 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning; Defendants’ proposal is rejected.”
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ proposed construction simply repeats most of the
language from this limitation” except that “Defendants improperly try to rewrite the claim by
changing ‘associated with’ to ‘designated for use with.’” Dkt. No. 108 at 8. Plaintiff submits that
Defendants’ proposed phrase “designated for use with” does not appear in the patents at issue.
Id.
Defendants respond that “[u]nder [Plaintiff’s] proposal, the ‘associated with’ language in
the claims could mean anything, while [Defendants’] construction clarifies the meaning of
‘associated with’ based on the intrinsic evidence.” Dkt. No. 118 at 12.
Plaintiff replies that “Defendants rely on the specification to narrow the meaning of
‘associated,’ but the portions of the specification cited by Defendants use the verb ‘associate’
and never use the verb ‘designate.’” Dkt. No. 121 at 4.
At the February 19, 2015 hearing, Defendants further urged that the disputed term
requires using a previously stored subscriber profile.
(2) Analysis
Defendants have cited various disclosures in the specification regarding resources for use
with subscribers. See ‘427 Patent at 9:3-8 (“Gateway 18 receives subscriber information
indicating a combination of telecommunication interfaces 26, data compression algorithms, data
communication protocols, and data links 28 that gateway 18 should use in servicing either an
- 24 -

individual subscriber or a group of subscribers”); see also id. at 4:5-18, 6:43-55, 12:17-49,
13:10-15, 18:4-30, 19:3-16 & 21:66-22:5; Dkt. No. 118, Ex. Q, Nov. 11, 2014 Madisetti Decl.
at ¶¶ 80-82.
As Plaintiff notes, however, the specification discloses that subscribers can be grouped
rather than treated individually. See ‘984 Patent at 4:43-53, 7:10-19, 9:32-41, 12:45-53 &
14:56-61.
On balance, Defendants have failed to adequately justify replacing the word “associated”
with the phrase “designated for use.” The Court therefore hereby expressly rejects Defendants’
proposed construction. To whatever extent Defendants maintain that the disputed term requires
use of a previously stored subscriber profile, Defendants’ argument is hereby expressly rejected
as lacking support in the intrinsic evidence.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “operable to communicate the [first / second]
telecommunication information to a telecommunication network using a [first / second]
[telecommunication interface format / telecommunication interface] associated with the
[first / second] subscriber” to have its plain meaning.

- 25 -

C. “means for communicating the [first / second] telecommunication information to
[a / the] telecommunication network using a [first / second] interface format associated
with the [first / second] subscriber” and “means for receiving [first / second] data packets
from a [first / second] broadband network using a [first / second] data communication
protocol”
“means for communicating the [first / second] telecommunication information to [a / the]
telecommunication network using a [first / second] interface format associated with the
[first / second] subscriber”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: communicating the [first / second]
telecommunication information to [a / the]
telecommunication network using a [first /
second] interface format associated with the
[first / second] subscriber.

Function: communicating the [first / second]
telecommunication information to [a / the]
telecommunication network using a [first /
second] interface format associated with the
[first / second] subscriber

Structure: telecommunication interface module Structure: indefinite; there is no corresponding
and equivalents thereof.
structure disclosed in the specification
“means for receiving [first / second] data packets from a [first / second] broadband
network using a [first / second] data communication protocol”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: receiving [first / second] data packets
from a [first / second] broadband network
using a [first / second] data communication
protocol.

Function: receiving [first / second] data packets
from a [first / second] broadband network
using a [first / second] data communication
protocol

Structure: network interface module and Structure: indefinite; there is no corresponding
equivalents thereof.
structure disclosed in the specification
Dkt. No. 108 at 9; Dkt. No. 118 at 13; Dkt. No. 125, App’x A at 15 & 18-19. The parties submit
that the first of these disputed terms appears in Claim 20 of the ‘984 Patent and that the second
of these disputed terms appears in Claims 17 and 20 of the ‘984 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction for the “means for communicating . . .”: “Function:
‘communicating

the

[first

/

second]

telecommunication
- 26 -

information

to

[a

/

the]

telecommunication network using a [first / second] interface format associated with the [first /
second] subscriber’ / Corresponding Structure: ‘telecommunication interface module; and
equivalents thereof.’”
The Court also provided the parties with the following preliminary construction for the
“means for receiving . . .”: “Function: ‘receiving [first / second] data packets from a [first /
second] broadband network using a [first / second] data communication protocol’ /
Corresponding Structure: ‘network interface module; and equivalents thereof.’”
(1) The Parties’ Positions
The parties agree that these are means-plus-function terms governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed functions. Dkt. No. 108 at 9. The parties dispute
whether the specification discloses sufficient corresponding structure. Id.
Plaintiff argues that the specification discloses “basic,” “well understood” components.
Dkt. No. 108 at 9.
Defendants respond that “the ‘984 Patent describes these modules [(“telecommunication
interface module” and “network interface module”)] only in functional terms illustrating them as
black boxes, but never once describing any particular structure that corresponds to their insides.”
Dkt. No. 118 at 13. Defendants argue that the disclosure that the modules “can be implemented
on circuit boards connected to the backplane of a gateway,” cited by Plaintiff (Dkt. No. 108 at 9),
“is not a disclosure of the structure of the modules themselves.” Dkt. No. 118 at 14.
Plaintiff replies that “the Federal Circuit has held the specification does not have to
reference a specific structure but may reference ‘a discrete class of . . . structures that perform
known functions.” Dkt. No. 121 at 4-5 (quoting Linear Tech. Corp. v. Impala Linear Corp., 379
F.3d 1311, 1322 (Fed. Cir. 2004)).

- 27 -

At the February 19, 2015 hearing, the parties rested on their briefing and presented no
oral argument as to these disputed terms.
(2) Analysis
Plaintiff’s expert opines that “the plain and ordinary meaning of the term
‘telecommunication interface modules’ denotes structure to one of ordinary skill in the art.” Dkt.
No. 108, Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶ 155.
Defendants’ own expert, Dr. Vijay Madisetti, opines that “the term ‘telecommunication
interface’ refers to ‘an interface to a TDM switch of a telecommunication network that receives
telecommunication information from a subscriber.’ A person of ordinary skill at the time of the
alleged invention would understand this construction to be consistent with the ordinary and
customary meaning of the term ‘telecommunication interface’ within the context of the
‘427/‘984 patents.” Dkt. No. 118, Ex. Q, Nov. 11, 2014 Madisetti Decl. at ¶ 51. 3
On balance, the “telecommunication interface module” and “network interface module”
are sufficient corresponding structure because a person of ordinary skill in the art would
recognize these interfaces as well-known classes of structures. See Linear Tech., 379 F.3d at
1322 (“class of structures . . . identifiable by a person of ordinary skill in the art” is a sufficient
corresponding structure). The Bosch case cited by Defendants is therefore distinguishable. See
Robert Bosch, LLC v. Snap-On, Inc., 769 F.3d 1094 (Fed. Cir. 2014). The Court therefore hereby
expressly rejects Defendants’ indefiniteness argument.
The Court hereby construes these disputed terms as set forth in the following chart:

3

Defendants have previously identified “telecommunication interface” as a disputed term in
these patents. See Dkt. No. 99, Ex. B at 29-30; see also Dkt. No. 126 at 3-4.
- 28 -

Term

Construction

“means for communicating the [first / second]
telecommunication information to [a / the]
telecommunication network using a [first /
second] interface format associated with the
[first / second] subscriber”

Function:
“communicating the [first / second]
telecommunication information to [a / the]
telecommunication network using a [first /
second] interface format associated with the
[first / second] subscriber”

Structure:
“telecommunication interface module;
and equivalents thereof”
“means for receiving [first / second] data Function:
packets from a [first / second] broadband
“receiving [first / second] data packets
network using a [first / second] data from a [first / second] broadband network
communication protocol”
using a [first / second] data communication
protocol”
Structure:
“network
interface
equivalents thereof”

module;

and

D. “means for decompressing the [first / second] telecommunication information using a
[first / second] compression algorithm associated with the [first / second] subscriber”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: de-compressing the [first / second]
telecommunication information using a [first /
second] compression algorithm associated with
the [first / second] subscriber.

Function: de-compressing the [first / second]
telecommunication information using a [first /
second] compression algorithm associated with
the [first / second] subscriber

Structure: hardware and/or software capable of Structure: indefinite; there is no corresponding
executing at least one of the following structure disclosed in the specification
algorithms:
G.711;
G.722;
G.723;
G.728;
G.729;
as well as equivalents of such hardware
and/or software.
Dkt. No. 108 at 10; Dkt. No. 118 at 15; Dkt. No. 125, App’x A at 19-20. The parties submit that
these terms appear in Claim 18 of the ‘984 Patent.
- 29 -

Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘de-compressing the [first / second]
telecommunication information using a [first / second] compression algorithm associated with
the [first / second] subscriber’ / Corresponding Structure: ‘hardware and/or software capable of
executing at least one of the following algorithms: G.711, G.722, G.723, G.728, G.729; and
equivalents thereof.’”
(1) The Parties’ Positions
The parties agree that these are means-plus-function terms governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed functions. Dkt. No. 108 at 10. The parties dispute
whether the specification discloses sufficient corresponding structure. Id.
Plaintiff submits that Defendants fail to explain why the disclosed International
Telecommunication Union (“ITU”) algorithms (G.711, G.722, G.723, G.728, G.729) are
insufficient. Id. at 10-11.
Defendants respond that “G.711, G.722, G.723, G.728 and G.729 are general standards
recommendations that do not disclose the specific functionality at issue here.” Dkt. No. 118
at 15.
Plaintiff replies that G.711, G.722, G.723, G.728, and G.729 are well-known
compression algorithms. Dkt. No. 121 at 6.
At the February 19, 2015 hearing, the parties rested on their briefing and presented no
oral argument as to this disputed term.
(2) Analysis
“[A] means-plus-function claim element for which the only disclosed structure is a
general purpose computer is invalid if the specification fails to disclose an algorithm for

- 30 -

performing the claimed function.” Net MoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed.
Cir. 2008); see WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)
(“In a means-plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general
purpose computer, but rather the special purpose computer programmed to perform the disclosed
algorithm.”).
“A disclosed structure is corresponding only if the specification or the prosecution history
clearly links or associates that structure to the function recited in the claim.” Omega Eng’g, 334
F.3d at 1321.
Here, the specification clearly links the claimed function with the algorithms identified
by Plaintiff. See ‘427 Patent at 11:16-22 & 15:59-62; ‘984 Patent at 11:43-49 & 16:14-17. This
amounts to a sufficient disclosure of corresponding structure. See Dkt. No. 108, Ex. 9, Nov. 12,
2014 Lipoff Opening Decl. at ¶¶ 69-72; see also id., Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl.
at ¶¶ 198-200; id., Ex. 11, Nov. 11, 2014 Madisetti Decl. at ¶ 101; AllVoice Computing PLC v.
Nuance Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007) (“[A]lgorithms in the
specification need only disclose adequate defining structure to render the bounds of the claim
understandable to one of ordinary skill in the art.”).
The Court therefore hereby finds that for the “means for decompressing the [first /
second] telecommunication information using a [first / second] compression algorithm
associated with the [first / second] subscriber,” the function is “de-compressing the [first /
second] telecommunication information using a [first / second] compression algorithm
associated with the [first / second] subscriber,” and the corresponding structure is “hardware

- 31 -

and/or software capable of executing at least one of the following algorithms: G.711, G.722,
G.723, G.728, G.729; and equivalents thereof.”
E. “means for extracting [first / second] telecommunication information associated with a
[first / second] subscriber from the [first / second] data packets”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: extracting [first / second]
telecommunication information associated with
a [first / second] subscriber from the [first /
second] data packets.

Function: extracting [first / second]
telecommunication information associated with
a [first / second] subscriber from the [first /
second] data packets

Structure: hardware and/or software that
Structure: indefinite; there is no corresponding
performs the following algorithm:
structure disclosed in the specification
• process the [first / second] data packets
according to a data communication
protocol;
• extract
the
[first
/
second]
telecommunication information from
the [first / second] data packets; and
• identify the [first / second] subscriber
associated with the [first / second]
telecommunication information;
as well as equivalents of such hardware and/or
software.
Dkt. No. 108 at 11; Dkt. No. 118 at 16; Dkt. No. 125, App’x A at 16-17. The parties submit that
this term appears in Claims 17 and 20 of the ‘984 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘extracting [first / second]
telecommunication information associated with a [first / second] subscriber from the [first /
second] data packets’ / Corresponding Structure: gateway 18.”
(1) The Parties’ Positions
The parties agree upon the claimed functions. Dkt. No. 108 at 11. The parties dispute
whether the specification discloses sufficient corresponding structure. Id.

- 32 -

Plaintiff argues that the steps it has identified are correct because, “[c]ontrary to the
opinion of Defendants’ expert, the recited function is ‘extracting first telecommunication
information associated with a first subscriber from the first data packets’ and not simply
‘extracting first telecommunication information from the first data packets.’” Dkt. No. 108 at 12.
Defendants respond that “[Plaintiff’s] ‘algorithm’ merely parrots the claim language.”
Dkt. No. 118 at 16.
Plaintiff replies:
Defendants are incorrect that the “process” and “identify” steps of the disclosed
algorithm are not required to perform the recited function. Resp. at 16. As
Plaintiff’s expert explained, a packet must be processed according to its protocol
to identify the location of the telecommunication information stored within the
packet and then that identified information can be removed. Ex. 15 at ¶¶ 203-04.
Neither Defendants nor their expert disagreed with this explanation of how
information is extracted from a packet. Identifying the subscriber is also part of
the algorithm because the recited telecommunication information is “associated
with a [first/second] subscriber.”
Dkt. No. 121 at 5.
At the February 19, 2015 hearing, the parties rested on their briefing and presented no
oral argument as to this disputed term, except Plaintiff requested that the Court’s preliminary
construction should be modified from “gateway 18” to “gateway 18; and equivalents thereof.”
(2) Analysis
The specification discloses:
To communicate telecommunication information from BSC 72 to switch 16,
gateway 18 receives data packets from data link 28 associated with the subscriber,
extracts telecommunication information from the data packets according to the
data communication protocol associated with the subscriber, decompresses the
telecommunication information according to the data compression algorithm
associated with the subscriber, and communicates the telecommunication
information to switch 16 using interface 26 associated with the subscriber.
‘984 Patent at 10:3-13 (emphasis added).

- 33 -

On balance, the structure “clearly link[ed] or associate[d]” with the claimed function is
the “gateway 18” that is discussed throughout the specification, in particular as quoted above.
Omega Eng’g, 334 F.3d at 1321.
The Court therefore hereby finds that for the “means for extracting [first / second]
telecommunication information associated with a [first / second] subscriber from the [first /
second] data packets,” the function is “extracting [first / second] telecommunication
information associated with a [first / second] subscriber from the [first / second] data
packets,” and the corresponding structure is “gateway 18; and equivalents thereof.”
VII. DISPUTED TERMS IN U.S. PATENTS NO. 6,934,279 AND 7,995,589
The ‘279 Patent, titled “Controlling Voice Communications over a Data Network,”
issued on August 23, 2005, and bears a filing date of March 13, 2000. The original assignee was
Nortel Networks Limited. The Abstract of the ‘279 Patent states:
A method and apparatus of communicating over a data network includes
providing a user interface in a control system for call control and to display
information relating to a call session. The control system communicates one or
more control messages (e.g., Session Initiation Protocol or SIP messages) over the
data network to establish a call session with a remote device in response to receipt
of a request through the user interface. One or more commands are transmitted to
a voice device associated with the control system to establish the call session
between the voice device and the remote device over the data network. A RealTime Protocol (RTP) link may be established between the voice device and the
remote device.
The ‘589 Patent is a continuation of the ‘279 Patent and bears the same title. The ‘589
Patent issued on August 9, 2011, and the original assignee was Nortel Networks Limited. The
‘279 Patent and the ‘589 Patent share a common specification (see Dkt. No. 118 at 18), so the
Court cites only the ‘279 Patent herein unless otherwise indicated.

- 34 -

A. “telephony device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“device capable of telephony”

“device capable of telephony that identifies the
control system and is commanded by the
control system”

Dkt. No. 108 at 12; Dkt. No. 118 at 17. The parties submit that this term appears in Claims 1, 6,
7, 9, 21, and 22 of the ‘589 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “device capable of telephony.”
(1) The Parties’ Positions
Plaintiff argues that “Defendants have not identified any special definition of ‘telephony
device’ or disclaimer so as to justify further limiting the plain meaning of this term.” Dkt.
No. 108 at 12. Plaintiff submits that “although the term ‘command’ refers to the messages sent to
the telephony device, that term does not mean that all those messages are actually commanding
the telephony device.” Id. at 13. Further, Plaintiff argues, “Defendants simply speculate that if
the control system commands the telephony device, then ‘it is important’ that the telephony
device identify the control system.” Id. (quoting id., Ex. 12, Nov. 11, 2014 Madisetti ‘279/‘589
Decl. at ¶ 56).
Defendants respond that “[e]very embodiment teaches that the telephony device
i[]dentifies the control system, while the remote system does not.” Dkt. No. 118 at 17-19 (citing,
e.g., ‘279 Patent at 7:15-22 & 9:3-6). Defendants urge that “[Plaintiff] has not—and cannot—
articulate any differences for telephony device and remote device under its constructions[,]
[which] eviscerate any meaning of the telephony and remote devices.” Id. at 20-21.

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Plaintiff replies that the functionality cited by Defendants is described with the
permissive words “may” and “can,” and “[f]urther, the specification makes clear that this
functionality is merely ‘in accordance with an embodiment.’” Dkt. No. 121 at 6 (citing
‘279 Patent at 3:9-10 & 7:15-22).
(2) Analysis
Claim 1 of the ‘589 Patent recites (emphasis added):
1. A method of communicating over a data network, comprising:
providing a user interface in a control system for establishing a call
session in which audio and video data are communicated;
communicating, by the control system, one or more control messages over
the data network to establish a call session with a remote device in response to
receipt of a request through the user interface; and
transmitting one or more commands to a telephony device connected to the
data network and associated with the control system to establish the call session
between the telephony device and the remote device over the data network to
exchange the audio data and video data between the telephony device and the
remote device.
The claim language is clear on its face, and Defendants’ proposed construction would
improperly import limitations from preferred embodiments into the seemingly generic term
“telephony device,” specifically as to “identif[ying] the control system” and being “commanded
by the control system.” As Plaintiff has emphasized, the above-quoted claim separately recites
the use of commands. Further, the specification discloses, for example, that the control system
may transmit commands to the telephony device merely to notify it of status. See ‘279 Patent
at 5:38-42.
Although the specification discloses embodiments that are perhaps consistent with
Defendants’ proposed construction, the embodiment features identified by Defendants should not
be imported into the construction of “telephony device.” See Comark, 156 F.3d at 1187; see also
Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is . . . not

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enough that the only embodiments, or all of the embodiments, contain a particular limitation.”).
The Court therefore hereby expressly rejects Defendants’ proposed construction.
The Court therefore adopts the agreed-upon portion of the parties’ proposed constructions
and hereby construes “telephony device” to mean “device capable of telephony.”
B. “remote device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “a device that does not identify the [control
does not require construction and should be system / controller / article] and is not
accorded its plain and ordinary meaning.
commanded by the [control system / controller
/ article]”
Dkt. No. 108 at 14; Dkt. No. 118 at 17. The parties submit that this term appears in Claims 1, 9,
12, 16, 25, 32, 37, and 38 of the ‘279 Patent and Claims 1, 7, 11, 15, 19, 22, 23, and 24 of the
‘589 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning; Defendants’ proposal is rejected.”
(1) The Parties’ Positions
Plaintiff argues that “the patent uses different terms ‘control messages’ and ‘commands’
to distinguish between the messages sent to the remote device and the messages sent to the
telephony device, but that different terminology does not indicate a difference in the substance of
the messages.” Dkt. No. 108 at 14. Plaintiff submits, for example, that the specification discloses
that “control messages” can include Session Initiation Protocol (“SIP”) messages, and “[o]ne of
ordinary skill would understand that SIP messages may include various commands, which are
used to establish call sessions.” Id. (citing id., Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶
254). Finally, Plaintiff argues that Defendants’ proposal of “a device that does not identify the
control system” would exclude a disclosed embodiment: “Because every SIP message must
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include a source and destination address, the remote device must identify the control system by
its destination address to send a SIP message to the control system.” Dkt. No. 108 at 15 (citing
id., Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶ 254).
Defendants argue this disputed term together with the term “telephony device,” addressed
above. See Dkt. No. 118 at 17-21. Defendants submit that a “remote device” is not a “telephony
device,” and “[t]he specification does not teach any remote devices paired with the claimed
control system nor any remote devices that identify the control system.” Id. at 19.
Plaintiff’s reply brief addresses this term together with the term “telephony device,”
addressed above. See Dkt. No. 121 at 6-7.
(2) Analysis
Because Defendants’ proposed construction for “remote device” is premised on
Defendants’ proposed construction for “telephony device,” which the Court has rejected, above,
the Court hereby expressly rejects Defendants’ proposed construction for “remote device.”
Alternatively and in addition, Defendants’ proposed construction would improperly limit the
“remote device” to features of preferred embodiments and is therefore rejected. See Comark, 156
F.3d at 1187; see also Thorner, 669 F.3d at 1366. In particular, whereas Defendants appear to
assume that a “remote device” must be a different type of device than a “telephony device,” a
better reading of the intrinsic evidence is that “remote” refers not to the nature of the device but
rather to its location in a network relative to the telephony device.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2
Micro, 521 F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court therefore hereby construes “remote device” to have its plain meaning.

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C. “control system”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “a computer or other stand-alone system that
does not require construction and should be provides call control for identified devices”
accorded its plain and ordinary meaning.
Dkt. No. 108 at 15; Dkt. No. 118 at 21. The parties submit that this term appears in Claims 1, 7,
10, 12, 15, 17, 18, and 19 of the ‘279 Patent and Claims 1, 6, 8, 11, 14, 21, and 23 of the ‘589
Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning; Defendants’ proposal is rejected.”
(1) The Parties’ Positions
Plaintiff argues that the specification discloses a control system that is not a “stand-alone
system,” and Plaintiff argues that the doctrine of claim differentiation demonstrates that
identifying devices is not a limitation of the claimed “control system.” Dkt. No. 108 at 15-16.
Defendants respond that “[t]he patentees ‘plainly and repeatedly distinguished’
computers with ‘powerful processing capabilities’ that provided built-in telephone voice
capabilities from the claimed[] control system.” Dkt. No. 118 at 22. Defendants also explain that
“[t]he control system may be part of a larger system, however, it stands separate from the
network telephone.” Id. at 23.
Plaintiff replies that “the claims do not require . . . a [stand-alone] configuration, and the
specification describes alternative configurations where the control system and telephone operate
as a single ‘telephony system 31.’” Dkt. No. 121 at 7 (citing ‘279 Patent at 5:28-29). Plaintiff
also argues that “[n]othing in the prosecution history mandates that the control system must be a
‘stand-alone’ system.” Dkt. No. 121 at 7.

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(2) Analysis
Claims 1 and 7 of the ‘279 Patent recite (emphasis added):
1. A method of communicating over a data network, comprising:
providing a user interface in a control system for establishing call sessions;
communicating, by the control system, one or more control messages over
the data network to establish a call session with a remote device in response to
receipt of a request through the user interface; and
transmitting one or more commands to a voice device connected to the
data network and associated with the control system to establish the call session
between the voice device and the remote device over the data network.
***
7. The method of claim 1, further comprising storing, in the control system, an
identifier of the voice device.
The doctrine of claim differentiation thus weighs against requiring that the “control
system” must store an identifier of a voice device. See Phillips, 415 F.3d at 1315 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.”). Although the specification
discloses embodiments in which “a call control system 32 or 36 can identify the network
telephone it is controlling” (‘279 Patent at 7:19-20), such a feature of preferred embodiments
should not be imported into the construction of “control system.”
Also, the specification discloses that “[t]he call control system 32 and the network
telephone 30 may be collectively referred to as a telephony system 31.” ‘279 Patent at 5:28-29.
This disclosure weighs at least somewhat against Defendants’ proposal that the “control system”
must be “stand-alone.”
The remaining dispute, thus, is whether the patentee disclaimed claim scope during
prosecution so as to require separation between the control system and telephony devices.
During prosecution of the ‘589 Patent, the patentee stated:

- 40 -

If the “telephone” or “telephony endpoint” in column 44 of Thornton is
considered to be the “telephony device” of claim 1, then a user dialing a call
number at such a telephony endpoint is contradictory to the subject matter of
claim 1, which recites that one or more control messages are communicated over
the data network to establish a call session in response to receipt of a request
through the user interface of the control system (not the telephony device).
Dkt. No. 188, Ex. D, Aug. 11, 2009 Pre-Appeal Brief Request for Review at 3
(GENBAND7685) (p. 25 of 27 of Ex. D); see id., Jan. 5, 2009 Reply to Office Action Mailed
October 3, 2008, at 10-11 (GENBAND7655-56) (pp. 20-21 of 27 of Ex. D).
During prosecution of the ‘249 Patent, the patentee stated:
As conceded in the Office Action, Thornton also does not disclose transmitting
one or more commands to a voice device connected to the data network and
associated with the control system to establish the call session between the voice
device and the remote device over the data network.
Instead, the Office Action relied upon Jenness as disclosing this element.
Applicant respectfully submits that Jenness also fails to disclose or suggest the
transmitting act of claim 1. The transmitting act includes transmitting one or more
commands to a voice device connected to the data network and associated with
the control system (which communicates one or more control messages over the
data network to establish the call session with the network device in response to
receipt of a request through the user interface). There is no voice device
associated with such a control system disclosed or suggested by Jenness.
Therefore, even if the combination of Thornton and Jenness is proper, the
hypothetical combination of references fails to teach or suggest all the elements of
claim 1.
Id., Dec. 11, 2003 Reply to Office Action Dated September 11, 2003, at 9 (GENBAND2495) (p.
11 of 27 of Ex. D) (emphasis added).
On balance, this prosecution history contains no definitive statements that would warrant
finding a disclaimer as proposed by Defendants. See Omega, 334 F.3d at 1324 (“As a basic
principle of claim interpretation, prosecution disclaimer promotes the public notice function of
the intrinsic evidence and protects the public’s reliance on definitive statements made during
prosecution.”) (emphasis added); id. at 1325-26 (“[F]or prosecution disclaimer to attach, our

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precedent requires that the alleged disavowing actions or statements made during prosecution be
both clear and unmistakable.”) (emphasis added). For example, the requirement of data network
communication does not necessarily demand that the control system be “stand-alone.”
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207. In particular, the meaning of this disputed term is made
clear by surrounding claim language.
The Court accordingly hereby construes “control system” to have its plain meaning.
VIII. DISPUTED TERMS IN U.S. PATENT NO. 6,791,971
The ‘971 Patent, titled “Method and Apparatus for Providing a Communications Service,
for Communication and for Extending Packet Network Functionality,” issued on September 14,
2004, and bears a priority date of March 10, 1999. The original assignee of the ‘971 Patent was
Nortel Networks Limited. The Abstract of the ‘971 Patent states:
Methods, apparatus, systems, media and signals for providing a communications
service are disclosed. One method involves receiving, on a packet network, a
message requesting the communications service, and producing a query relating
to implementation of the communications service for receipt by a Service Control
Function (SCF), in response to the message, to cause the communications service
to be implemented. Another method involves receiving, on a packet network, a
query relating to implementation of a communications service, and producing a
response to the query to cause the communications service to be implemented.

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A. “Service Control Function” (SCF), “Service Control Point” (SCP), “Service Switching
Function” (SSF), and “Service Switching Point” (SSP)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

SCF means “functionality capable
controlling another entity’s provision
communications services”

of SCF/SCP/SSF/SSP “as defined by Intelligent
of Network and Advanced Intelligent Network
standards ITU-T Q.1200-1236, Q[.]1290-1400,
Q.1551-1601, and equivalent Telcordia
SCP means “physical entity that implements a standards”
Service Control Function”
SSF means “the set of processes that provide
the communication path for interaction
between a call control function and a Service
Control Function”
SSP means “physical entity that implements
the service switching function”
Dkt. No. 108 at 16-17; Dkt. No. 118 at 24. The parties submit that “Service Control Function”
appears in Claims 46, 57, 62, 65, 70, 72, 77, 80, 90, 91, and 92, “Service Control Point” appears
in Claims 59, 60, 61, 74, 75, and 76, “Service Switching Function” appears in Claims 18, 19, 22,
25, 33, 40, 41, and 42, and “Service Switching Point” appears in Claim 26.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary constructions: “Service Control Function” means “the application
of service logic to control functional entities in providing intelligent network services”; “Service
Control Point” means “a physical entity in the intelligent network that implements a service
control function”; “Service Switching Function” means “the set of processes that provide the
communication path for interaction between a call control function and a service control
function”; and “Service Switching Point” means “the physical entity that implements the service
switching function.”

- 43 -

(1) The Parties’ Positions
Plaintiff argues that although “both parties look to the Intelligent Networking standards
for guidance on the meaning of the claim terms at issue here,” Defendants overlook the glossary
provided by those standards and instead “simply cite to over thirty standard specifications in
their entireties, without providing any clarity as to how those voluminous documents bound the
claim terms.” Dkt. No. 108 at 17 (footnote omitted). Plaintiff also argues that its proposed
constructions are supported by the “LeBlanc” patent (United States Patent No. 5,570,412,
attached to Plaintiff’s opening brief as Exhibit 25), which is cited by the ‘971 Patent. Id.
at 18-19.
Defendants respond that “[Plaintiff’s] oversimplification guts the key purpose of the IN
standards, which offer hundreds of pages of detailed instructions carefully defining
SCF/SCP/SSF/SSP to enable those skilled in the art to design Intelligent Networks that
interoperate.” Dkt. No. 118 at 25; see, e.g., ‘971 Patent at 3:53-60. Defendants conclude:
Any perceived burden of applying the ITU standards to the accused products is a
problem of [Plaintiff’s] own making. [Plaintiff] chose to assert these terms, which
the patentees amended during prosecution to expressly add SCF/SCP/SSF/SSP to
overcome prior art (Ex. U, ¶¶ 62-72). [Plaintiff] fails to cite any case law that
rejects the correct construction simply to reduce a plaintiff’s infringement
analysis.
Dkt. No. 118 at 25.
Plaintiff replies that “[a]lthough Defendants criticize the glossary definitions provided by
the same standards they identify, they provide no analysis of what, if anything, is missing from
those definitions.” Dkt. No. 121 at 8. Plaintiff argues that Defendants’ proposals “are equivalent
to handing two voluminous books (ITU-T standards and their Telcordia equivalents) to the jury,
and forcing them to determine a proper construction.” Id.

- 44 -

At the February 19, 2015 hearing, Plaintiff stated that the Court’s preliminary
constructions were acceptable to Plaintiff. Defendants responded that the glossary definitions
cited by Plaintiff do not provide enough information for compliance with the standards that
contain these disputed terms. Plaintiff replied that the claims do not refer to the standards, and
Plaintiff noted that the standards cited by Defendants include 3800 pages of documentation.
(2) Analysis
ITU-T Recommendation Q.12904, titled “Glossary of Terms Used in the Definition of
Intelligent Networks,” defines the disputed terms as follows:
Service Control Function (SCF): The application of service logic to control
functional entities in providing intelligent network services.
***
Service Control Point (SCP): A physical entity in the intelligent network that
implements a service control function.
***
Service Switching Function (SSF): The set of processes that provide the
communication path for interaction between a call control function and a service
control function.
***
Service Switching Point (SSP): The physical entity that implements the service
switching function.
Dkt. No. 108, Ex. 24, at 10 & 12 (GENBAND8852 & 54); see id. at 1 (GENBAND8843) (“This
Recommendation provides a glossary of terms and definitions which have been studied for
application in the documentation of intelligent networks.”).
Providing the finder of fact with the ITU standards as a whole would fail to adequately
construe the disputed terms, particularly given that the ITU standards include a glossary. The
Court therefore hereby construes these disputed terms as set forth in the following chart:
- 45 -

Term

Construction

“Service Control Function” (SCF):

“the application of service logic to control
functional entities in providing intelligent
network services”

“Service Control Point” (SCP):

“a physical entity in the intelligent network
that implements a service control function”

“Service Switching Function” (SSF):

“the set of processes that provide the
communication path for interaction between
a call control function and a service control
function”

“Service Switching Point” (SSP):

“the physical entity that implements the
service switching function”

B. “means for receiving on an IP network, a query relating to implementation of a
communications service”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: receiving, on an IP network, a Function: receiving, on an IP network, a
query relating to implementation of a query relating to implementation of a
communications service
communications service
Structure: Input/Output unit and equivalents Structure: the SCP-IP as defined by Figure 3 of
thereof
the ‘971 patent
Dkt. No. 108 at 20; Dkt. No. 125, App’x A at 28. The parties submit that this term appears in
Claim 43 of the ‘971 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘receiving, on an IP network, a query
relating to implementation of a communications service’ / Corresponding Structure:
‘input/output (I/O) unit 94; and equivalents thereof.’”

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(1) The Parties’ Positions
The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed function. Dkt. No. 108 at 19.
Plaintiff argues that whereas the disclosure of “I/O unit 94” is disclosed as performing the
claimed function, Defendants’ proposal incorporates other structures in Figure 3 that are not
necessary to perform the claimed function. Id. at 20-21.
Defendants respond that “[Defendants’] structures are the only detailed structures
provided for the SCF-IP and SSF-IP.” Dkt. No. 118 at 25-26.
Plaintiff replies that Defendants’ proposed structures “ensnare structure beyond that
necessary to perform the claimed function.” Dkt. No. 121 at 8.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
The specification discloses that “I/O unit 94 acts as a receiver for receiving, on the packet
network, a query relating to implementation of a communications service.” ‘971 Patent
at 5:38-40; see id. at 4:21-22 (“packet network 28 includes an Internet Protocol (IP)
network 46”) & 10:1-6 (“a query relating to implementation of a communications service is
received on the IP network at the I/O unit 94”) (emphasis added); see also id. at 5:30-32
(“input/output (I/O) unit 94”).
Thus, the “input/output (I/O) unit 94” is the structure clearly linked to the claimed
function. The Court rejects Defendants’ argument that additional structure is necessary to create
an operable device. See Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1301 (Fed. Cir.
2011) (“That a device will only operate if certain elements are included is not grounds to
incorporate those elements into the construction of the claims.”); but see Lexion Med., LLC v.

- 47 -

Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (“This court prefers a claim
interpretation that harmonizes the various elements of the claim to define a workable
invention.”).
The Court therefore hereby finds that for the “means for receiving on an IP network, a
query relating to implementation of a communications service,” the claimed function is
“receiving, on an IP network, a query relating to implementation of a communications
service,” and the corresponding structure is “input/output (I/O) unit 94; and equivalents
thereof.”
C. “means for producing a response to said query to cause said communications service to
be implemented”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: producing a response to said query to Function: producing a response to said query to
cause said communications service to be cause said communications service to be
implemented
implemented
Structure: processing unit implementing an Structure: the SCP-IP as defined by Figure 3 of
SCP-IP routine, such as that shown in Figure 8 the ‘971 patent
and equivalents thereof
Dkt. No. 108 at 21; Dkt. No. 125, App’x A at 28-29. The parties submit that this term appears in
Claim 43 of the ‘971 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘producing a response to said query to
cause said communications service to be implemented’ / Corresponding Structure: ‘processing
unit 90 configured to perform the SCP-IP routine 164 illustrated in Figure 8.’”
(1) The Parties’ Positions
The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed function. Dkt. No. 108 at 19.
- 48 -

Plaintiff argues that “Defendants’ structure is improper here again because the entire
SCP-IP includes components not necessary for ‘producing a response.’” Id. at 21.
Defendants respond that “[Defendants’] structures are the only detailed structures
provided for the SCF-IP and SSF-IP.” Dkt. No. 118 at 25-26.
Plaintiff replies that Defendants’ proposed structures “ensnare structure beyond that
necessary to perform the claimed function.” Dkt. No. 121 at 8.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
On one hand, the specification discloses that “the SCP-IP routine is embodied in
instruction codes stored in the program memory 92 of the SCP-IP 60 shown in FIG. 3.” ‘971
Patent at 9:56-58 (emphasis added); see id. at 5:29-37.
On the other hand, the specification also discloses:
Generally, referring to FIGS. 1, 3 and 8, when a query relating to implementation
of a communications service is received on the IP network at the I/O unit 94, the
SCP-IP routine 164 programs the processing unit 90 to produce a response to the
query, to cause the communications service to be implemented.
***
Upon locating the routing number, block 168 [in Figure 8] directs the processing
unit 90 to produce a response including the routing number located at block 166
[in Figure 8] for implementing the toll-free call, and to control the I/O unit 94 to
communicate the response to the SSF which sent the query.
Id. at 10:1-6 & 10:20-24 (emphasis added); see id. at Fig. 8.
On balance, the structure “clearly link[ed] or associate[d]” with the claimed function is
not the SCP-IP as illustrated in Figure 3 of the ‘971 Patent but rather is the “processing unit 90”
configured to perform the SCP-IP routine 164 illustrated in Figure 8. Omega Eng’g, 334 F.3d
at 1321; see WMS Gaming, 184 F.3d at 1349.

- 49 -

The Court therefore hereby finds that for the “means for producing a response to said
query to cause said communications service to be implemented,” the function is “producing
a response to said query to cause said communications service to be implemented,” and the
corresponding structure is “processing unit 90 configured to perform the SCP-IP routine 164
illustrated in Figure 8; and equivalents thereof.”
D. “means for receiving, on an IP network, a message requesting said communications
service”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: receiving, on an IP network, a Function: receiving, on an IP network, a
message requesting said communications message requesting said communications
service
service
Structure: Input/Output unit and equivalents Structure: the MGC [(Media Gateway
thereof
Controller)], as defined by Figure 2 of the ‘971
Patent
Dkt. No. 108 at 22; Dkt. No. 125, App’x A at 29. The parties submit that this term appears in
Claim 91 of the ‘971 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘receiving, on an IP network, a message
requesting said communications service’ / Corresponding Structure: ‘input/output (I/O) unit 74;
and equivalents thereof.’”
(1) The Parties’ Positions
The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed function. Dkt. No. 108 at 19.
Plaintiff argues that Defendants’ proposal “incorporates structure beyond that necessary
to perform the claimed function.” Id. at 22.

- 50 -

Defendants respond that “[Defendants’] structures are the only detailed structures
provided for the SCF-IP and SSF-IP.” Dkt. No. 118 at 25-26.
Plaintiff replies by reiterating that Defendants’ proposed structures “ensnare structure
beyond that necessary to perform the claimed function.” Dkt. No. 121 at 8.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
For substantially the same reasons discussed above as to the similar term “means for
receiving on an IP network, a query relating to implementation of a communications service,”
the Court finds that the corresponding structure is “I/O unit 74.” See ‘971 Patent at 5:20-22 (“the
I/O unit 74 acts as a receiver for receiving, on the packet network, a message requesting a
communications service”).
The Court therefore hereby finds that for the “means for receiving, on an IP network, a
message requesting said communications service,” the function is “receiving, on an IP
network, a message requesting said communications service,” and the corresponding
structure is “input/output (I/O) unit 74; and equivalents thereof.”
E. “means for producing a query relating to implementation of said communications
service for receipt by a Service Control Function (SCF), in response to said message, to
cause said communications service to be implemented”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Function: producing a query relating to
implementation of said communications
service for receipt by a Service Control
Function (SCF), in response to said message,
to cause said communications service to be
implemented

Function: producing a query relating to
implementation of said communications
service for receipt by a Service Control
Function (SCF), in response to said message,
to cause said communications service to be
implemented

Structure: processing unit programmed to Structure: the MGC [(Media Gateway
establish a communications service on a packet Controller)], as defined by Figure 2 of the ‘971
network, and equivalents thereof
Patent
- 51 -

Dkt. No. 108 at 22-23; Dkt. No. 125, App’x A at 29-30. The parties submit that this term appears
in Claim 91 of the ‘971 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Function: ‘producing a query relating to
implementation of said communications service for receipt by a Service Control Function (SCF),
in response to said message, to cause said communications service to be implemented’ /
Corresponding Structure: ‘processing unit 70 configured to perform the MGC routine 150
illustrated in Figure 7; and equivalents thereof.’”
(1) The Parties’ Positions
The parties agree that this is a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6, and the parties agree upon the claimed functions. Dkt. No. 108 at 19.
Plaintiff argues that the Media Gateway Controller (“MGC”) identified by Defendants
includes more structure than necessary for performing the claimed function. Id. at 23.
Defendants respond that “[Defendants’] structures are the only detailed structures
provided for the SCF-IP and SSF-IP.” Dkt. No. 118 at 25-26.
Plaintiff replies by reiterating that Defendants’ proposed structures “ensnare structure
beyond that necessary to perform the claimed function.” Dkt. No. 121 at 8.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
The specification discloses:
Referring to FIGS. 1, 2 and 7, when a message requesting a communications
service is received at the I/O unit 74 of the MGC [(Media Gateway Controller)],
the MGC routine 150 directs the processing unit 70 to produce a query relating to
implementation of the communications service for receipt by a Service Control

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Function, in response to the message, to cause the communications service to be
implemented.
‘971 Patent at 8:34-40 (emphasis added).
Thus, the structure “clearly link[ed] or associate[d]” with the claimed function is the
“processing unit 70” programmed to perform an algorithm. Omega Eng’g, 334 F.3d at 1321; see
WMS Gaming, 184 F.3d at 1349.
As for the algorithm, the specification discloses:
For example, in response to receiving a call setup message requesting a toll-free
call from a gatekeeper of the IP network 46, the MGC routine 150 serves to build
and transmit a query to a Service Control Point which is preferably on the IP
network 46 shown in FIG. 1, but which may alternatively be located elsewhere,
such as on the PSTN 34 for example. Effectively, in this embodiment, the MGC is
a network node programmed to establish a toll-free call on the packet network.
Alternatively, the MGC routine may be varied such that the MGC acts as a
network node programmed to establish an intelligent network (IN) service on the
packet network. Such variations would be apparent to one of ordinary skill in the
art upon reading this specification and are not considered to depart from the scope
of the present invention.
‘971 Patent at 8:41-55 (emphasis added).
Thus, the disclosed algorithm is MGC routine 150 illustrated in Figure 7 of the
‘971 Patent. Id.
Purported “variations [that] would be apparent to one of ordinary skill in the art upon
reading this specification” (id.), however, are not expressly disclosed and therefore are not part
of the corresponding structure. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521
F.3d 1328, 1334 (Fed. Cir. 2008) (“[T]h[e] language simply describes the function to be
performed, not the algorithm by which it is performed. Aristocrat’s real point is that devising an
algorithm to perform that function would be within the capability of one of skill in the art, and
therefore it was not necessary for the patent to designate any particular algorithm to perform the

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claimed function. As we have noted above, however, that argument is contrary to this court’s
law.”).
The Court therefore finds that for the “means for producing a query relating to
implementation of said communications service for receipt by a Service Control Function
(SCF), in response to said message, to cause said communications service to be
implemented,” the function is “producing a query relating to implementation of said
communications service for receipt by a Service Control Function (SCF), in response to
said message, to cause said communications service to be implemented,” and the
corresponding structure is “processing unit 70 configured to perform the MGC routine 150
illustrated in Figure 7; and equivalents thereof.”
IX. DISPUTED TERMS IN U.S. PATENT NO. 6,885,658
The ‘658 Patent, titled “Method and Apparatus for Interworking Between Internet
Protocol (IP) Telephony Protocols,” issued on April 26, 2005, and bears a priority date of June 7,
1999. The original assignee of the ‘658 Patent was Nortel Networks Limited. The Abstract of the
‘658 Patent states:
A method and an apparatus for interworking between internet protocol (IP)
telephony protocols includes a call server. The call server includes a first protocol
agent for communicating with a first protocol device according to a first protocol.
A second protocol agent communicates with a second protocol device according
to a second protocol. An interworking agent provides functions usable by the first
and second protocol agents to communicate with each other according to a third
protocol. The third protocol is a superset of functions provided by the first and
second protocols.
A. “a superset of functions provided by the first and second IP telephony protocols”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“one or more functions provided by both the “a set that contains all of the functions
first and second IP telephony protocols”
provided by the first and second IP telephony
protocols”
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Dkt. No. 108 at 23-24; Dkt. No. 118 at 26. The parties submit that this term appears in Claim 1
of the ‘658 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “a set that includes one or more functions provided
by both the first and second IP telephony protocols.”
(1) The Parties’ Positions
Plaintiff argues that “Defendants improperly try to limit Claim 1 to a ‘complete
superset,’” which Plaintiff argues “is inconsistent with the claim language and would improperly
exclude the preferred embodiment of the specification.” Dkt. No. 108 at 24.
Defendants respond that “[Plaintiff’s] proposed construction runs counter to the wellunderstood mathematical concept of a superset as a set that contains all of the objects in other
sets—in this case, the sets of functions provided by the first and second IP telephony protocols.”
Dkt. No. 118 at 26; see id., Ex. W, Nov. 14, 2014 Madisetti Decl. at ¶¶ 64-69.
Plaintiff replies that “[t]he specification describes different types of supersets, such as a
‘reasonable superset’ (which includes some but not all functions of the supported protocols) and
a ‘complete superset’ (which includes all functions of the supported protocols).” Dkt. No. 121
at 9 (citing ‘658 Patent at 6:27, 6:36-37 & 9:2-6).
At the February 19, 2015 hearing, Defendants argued that because computer science
necessarily involves mathematics, the mathematical definition of “superset” is relevant for
construing the disputed term.
(2) Analysis
The disputed term appears in Claim 1 of the ‘658 Patent, and for comparison Defendants
have cited Claim 34 of the ‘658 Patent. Claims 1 and 34 recite (emphasis added):
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1. A call server comprising:
(a) a fi[r]st protocol agent for communicating with a first internet protocol
(IP) telephony device according to a first IP telephony protocol;
(b) a second protocol agent for communicating with a second IP telephony
device according to a second IP telephony protocol; and
(c) an interworking agent for providing functions usable by the first and
second protocol agents to communicate with each other according to a third
protocol, the functions provided by the third protocol being a superset of
functions provided by the first and second IP telephony protocols, said
interworking agent further adapted to determine that a first parameter associated
with the first IP telephony protocol does not map to the second IP telephony
protocol and communicating first parameter to the second protocol agent without
alteration.
***
34. A computer readable medium having software stored thereon, said software
comprising;
a fi[r]st protocol agent for communicating with a first internet protocol
(IP) telephony device according to a first IP telephony protocol;
a second protocol agent for communicating with a second internet protocol
telephony device according to a second IP telephony protocol, wherein said
second IP telephony protocol is distinct from said first IP telephony protocol;
a third protocol agent for communicating with a third internet protocol
telephony device according to a third IP telephony protocol, wherein said third IP
telephony protocol is distinct from said first and second IP telephony protocols;
and
an interworking protocol adapted to represent a partial superset of
messaging capabilities of said first, second, and third IP telephony protocols such
that messages received in any of said first, second, or third IP telephony protocols
from a first IP device are converted to said interworking protocol and then
translated into a different one of said first, second, or third IP telephony protocols
for transmission to a second IP device.
On one hand, “different words or phrases used in separate claims are presumed to
indicate that the claims have different meanings and scope.” Seachange Int’l, Inc. v. C-COR,
Inc., 413 F.3d 1361, 1368 (Fed. Cir. 2005) (internal citations and markings omitted). Further, in
some instances, “[t]he mere fact that there is an alternative embodiment disclosed in the asserted
patent that is not encompassed by our claim construction does not outweigh the language of the
claim, especially when the court’s construction is supported by the intrinsic evidence. This is

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especially true where . . . other unasserted claims in the parent patent cover the excluded
embodiments.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir. 2011)
(citation and internal quotation marks omitted).
On the other hand, “superset” and “partial superset” can be readily distinguished from
one another by interpreting the term “superset” to encompass both partial supersets and complete
supersets (wherein a “complete” superset includes all functions provided by the first and second
IP telephony protocols and a “partial” superset includes some but not all of the functions).
The specification supports such a reading by contrasting a “complete superset” with a
“reasonable superset.” ‘658 Patent at 6:25-28, 6:35-37 & 9:3-7 (“[T]he agent interworking
protocol represents a reasonable superset of the agent protocols sufficient to achieve
interworking. However, the agent interworking protocol is not a complete superset of the
supported protocols.”); see Phillips, 415 F.3d at 1314 (“the claim in this case refers to ‘steel
baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of
steel”). Further, the specification explains that supporting all functions is not necessary. See ‘658
Patent at 6:28-32 (“Designing an interworking protocol that supports all of the capabilities of all
of the supported protocols is an unnecessarily burdensome task since some capabilities are rarely
used or are only useful when communicating between devices that support the particular
protocol.”). Instead, the “superset” requires merely at least one function that appears in both the
first protocol and the second protocol.
As for the prosecution history, Defendants argue that the patentee “disclaimed
[Plaintiff’s] proposed construction of a superset as containing only ‘one or more functions.’”
Dkt. No. 118 at 28 (citing id., Ex. F, Dec. 19, 2003 Response to the Office Action Mailed
26 September 2003, at 9 (GENBAND1630)). In arguing that the examiner failed to show where

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in the cited reference a superset could be found, the patentee stated: “A rule set to govern
translation does not necessarily have to be a superset of the functions provided by the first and
second IP telephony protocols.” Id. Contrary to Defendants’ argument, this does not amount to a
definitive statement requiring that a “superset” must include all the functions of the first and
second protocol. See Omega Eng’g, 334 F.3d at 1324-26. As Plaintiff has explained, the
patentee’s “distinction was not between a complete superset and a partial superset, but rather that
the prior art did not necessarily disclose any kind of superset of functions.” Dkt. No. 121 at 9.
Finally, the extrinsic evidence submitted by the parties does not warrant departing from
the patentee’s above-discussed broad usage of the term “superset.” See, e.g., Dkt. No. 118,
Ex. W, Nov. 14, 2014 Madisetti Decl. at ¶¶ 62-64 & 70.
The Court therefore hereby construes “a superset of functions provided by the first
and second IP telephony protocols” to mean “a set that includes one or more functions
provided by both the first and second IP telephony protocols.”
B. “protocol”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “a set of rules, procedures, or conventions
does not require construction and should be relating to data handling between two
accorded its plain and ordinary meaning.
devices” 4
Dkt. No. 108 at 25; Dkt. No. 125, App’x A at 31. The parties submit that this term appears in
Claims 1-13, 15, 19, 20, and 27-33 of the ‘658 Patent.

4

Defendants previously proposed: “a specific set of rules, procedures, or conventions relating to
the format of data transmitted between two devices”; or “a specific set of rules, procedures, or
conventions relating to the format, timing, order, and other features of data and messages
transmitted between two devices.” Dkt. No. 118 at 28.
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Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “a set of rules, procedures, or conventions relating
to data handling.”
(1) The Parties’ Positions
Plaintiff submits that “‘protocol’ is a well-known term of art,” and Plaintiff argues that
Defendants’ proposal of limiting the term to “format of data” and to communication between two
devices is inconsistent with the specification. Dkt. No. 108 at 25. Plaintiff also argues that the
prosecution history cited by Defendants contains no clear and unambiguous disclaimer. Id.
Defendants respond that they are “open to construing ‘protocol’ as ‘a specific set of rules,
procedures, or conventions relating to the format, timing, order, and other features of data and
messages transmitted between two devices’—a compromise that addresses [Plaintiff’s] concerns
and is based on elements that [Plaintiff] admits would have been understood by those of skill in
the art.” Dkt. No. 118 at 28. Defendants also submit that their proposed construction “can
encompass logical devices and entities such as the protocol agents communicating with one
another within a single physical device.” Id.
Plaintiff replies that “[a] protocol is a set of rules, procedures, or conventions relating to
data handling, but there is no requirement that a protocol specify any particular characteristic of
data handling (such as format, timing or order).” Dkt. No. 121 at 9-10.
At the February 19, 2015 hearing, Defendants reiterated that their proposal of “between
two devices” is not meant to require two physically separate devices but rather could refer to
communication between two “agents” or “entities.” Defendants nonetheless maintained that a
“protocol” must refer to communication between two distinct things.

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(2) Analysis
As noted above, the parties are in substantive agreement that a protocol is a set of rules,
procedures, or conventions relating to data handling. Dkt. No. 121 at 9-10; Dkt. No. 118 at 28;
Dkt. No. 125, App’x A at 31. The specification and the prosecution history are consistent with
such a construction and do not require communication “between two devices.” See ‘658 Patent
at 5:16-23 & 7:15-23; see also Dkt. No. 108, Ex. 27, Dec. 19, 2003 Response to the Office
Action Mailed 26 September 2003, at 9. Also, Plaintiff’s expert’s opinion that “protocol” has a
broad, well-known meaning is credible in light of the apparently broad usage in the intrinsic
record. See Dkt. No. 108, Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶¶ 370-75. Defendants’
proposal of “between two devices” is therefore hereby expressly rejected.
The Court accordingly hereby construes “protocol” to mean “a set of rules, procedures,
or conventions relating to data handling.”
C. “communicating first parameter to the second protocol agent without alteration”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “communicating the first parameter from the
does not require construction and should be first protocol agent to the second protocol
accorded its plain and ordinary meaning.
agent without converting to and from the third
protocol”
Dkt. No. 108 at 26; Dkt. No. 118 at 29. The parties submit that this term appears in Claim 1 of
the ‘658 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “Plain meaning.”
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ proposed construction simply repeats most of the
language from this limitation,” except “Defendants improperly try to rewrite the claim by
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changing ‘without alteration’ to ‘without converting to and from the third protocol.’” Dkt.
No. 108 at 26. Plaintiff also argues that the prosecution history cited by Defendants contains no
clear and unambiguous disclaimer. Id. at 27.
Defendants respond that “the ‘658 Patent’s only disclosure of what it means to
communicate a parameter ‘without alteration’ is by communicating the parameter without
converting it to and from the interworking protocol (i.e., the claimed third protocol).” Dkt.
No. 118 at 29; see id., Ex. W, Nov. 14, 2014 Madisetti Decl. at ¶¶ 74-76.
Plaintiff replies by reiterating that “[n]o special definition or disclaimer justifies
departing from the plain, ordinary meaning of the claim.” Dkt. No. 121 at 10.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 1 of the ‘658 Patent recites (emphasis added):
1. A call server comprising:
(a) a fi[r]st protocol agent for communicating with a first internet protocol
(IP) telephony device according to a first IP telephony protocol;
(b) a second protocol agent for communicating with a second IP telephony
device according to a second IP telephony protocol; and
(c) an interworking agent for providing functions usable by the first and
second protocol agents to communicate with each other according to a third
protocol, the functions provided by the third protocol being a superset of
functions provided by the first and second IP telephony protocols, said
interworking agent further adapted to determine that a first parameter associated
with the first IP telephony protocol does not map to the second IP telephony
protocol and communicating first parameter to the second protocol agent without
alteration.
Plaintiff’s expert opines:
391. One of ordinary skill in the art would recognize that there are multiple ways
to transmit the parameter without alteration, and in particular, one of ordinary
skill in the art would understand that the third protocol could be used to transmit
the parameter without alteration. For example, the value of the parameter can
remain unchanged despite the conversion of the message containing that
parameter from the first protocol to the third protocol and from the third protocol
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to the second protocol. Nothing in the patent suggests that conversion of a
message to and from the third protocol must involve altering the parameters in
that message. To the contrary, the language of claims suggests the opposite:
“transmitting the parameter without alteration.”
392. Dr. Madisetti also attempts to support his incorrect interpretation of these
claim terms by referencing examples in the specification that discuss sending
messages from one agent to another without using an intermediary protocol.
Madisetti ‘658 Op. Decl. at ¶ 76. However, these citations merely state (consistent
with my example above) that whether messages can be communicated with or
without conversion to an intermediate protocol is irrelevant to whether parameters
in those messages will or will not be altered. None of the citations that Dr.
Madisetti references discuss transmitting parameters without alteration. They deal
with communicating messages and describe examples of embodiments where
messages can be tunneled or sent without modification. See ‘658 Patent at 9:33-34
and 9:46-49.
Dkt. No. 108, Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶¶ 391-92 (emphasis added). The
Court finds Plaintiff’s expert’s opinion credible and consistent with the intrinsic evidence, in
particular as to the opinion that the value of a parameter can remain unchanged despite the
conversion of a message containing that parameter from the first protocol to the third protocol
and from the third protocol to the second protocol. Id. at ¶ 391.
Further, the prosecution history cited by Defendants contains no definitive statement
requiring communication without converting to and from a third protocol. See Dkt. No. 118,
Ex. F, May 10, 2004 Response to the Final Office Action Mailed March 10, 2004, at 12
(GENBAND1648) (p. 18 of 29 of Ex. F) (“It is unclear how avoiding protocol differences (i.e.,
determining whether the AS2 connects to an AS that can support H.323 to avoid protocol
differences) supports a motivation to send a portion of the call without performing translation.”);
see also id., Ex. W, Nov. 14, 2014 Madisetti Decl. at ¶¶ 77-79.
Defendants properly note that the specification discloses:
[C]ertain agent protocols can contain messages or parameters which do not map
to any other agent protocols, but provide added value for a call between two
devices of the same type. In this case, the agent interworking protocol preferably
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supports tunneling of the native protocol message. As used herein, tunneling
refers to transferring the native protocol message from one protocol agent to
another protocol agent without converting to and from the agent interworking
protocol. The agent receiving the native protocol message can inspect the
message, and if the agent understands the message, process the message
accordingly.
‘658 Patent at 9:6-16 (emphasis added); see id. at 9:58-10:3. Nonetheless, Defendants have failed
to justify importing such a limitation from a preferred embodiment. See Comark, 156 F.3d at
1187.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Finjan, 626 F.3d at 1207.
The Court accordingly hereby construes “communicating first parameter to the second
protocol agent without alteration” to have its plain meaning.
D. “adapted to determine that a first parameter associated with the first IP telephony
protocol does not map to the second IP telephony protocol”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; this claim language “adapted to determine that a first parameter
does not require construction and should be associated with the first IP telephony protocol
accorded its plain and ordinary meaning.
does not have a match in the second IP
telephony protocol”
Dkt. No. 108 at 27; Dkt. No. 118 at 30. The parties submit that this term appears in Claim 1 of
the ‘658 Patent.
Shortly before the start of the February 19, 2015 hearing, the Court provided the parties
with the following preliminary construction: “adapted to determine that a first parameter
associated with the first IP telephony protocol does not have a corresponding parameter in the
second IP telephony protocol.”

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(1) The Parties’ Positions
Plaintiff argues that “[t]he claim term ‘map’ has a more general meaning that
encompass[es] general associations.” Dkt. No. 108 at 27; see id., Ex. 15, Nov. 25, 2014 Lipoff
Rebuttal Decl. at ¶ 385.
Defendants respond that “[Plaintiff] attempts to read the well understood term ‘map’ so
broadly as to encompass any type of ‘general association,’” which Defendants submit would
render the claim indefinite. Dkt. No. 118 at 30. Defendants also argue that “[Plaintiff] relies
solely on portions of the ‘658 Patent describing the results of exemplary message translations,
not the underlying mapping of parameters that go into generating those results.” Id.
Plaintiff replies, in full, as follows:
Defendants seek to replace the word “map” with “match,” but neither the patent
nor the file history uses the term “match.” The dictionary definitions cited by
Defendants do not even define “map” as “match.” Ex. 15 at ¶¶ 383-85. Rather,
Defendants’ own dictionary confirms what the specification teaches: “map” is
used in accordance with its plain and ordinary meaning (i.e., to associate). Id.
Thus, Defendants’ attempt to rewrite the claim should be rejected. GE Lighting,
750 F.3d at 1309.
Dkt. No. 121 at 10.
At the February 19, 2015 hearing, the parties did not address this disputed term.
(2) Analysis
Claim 1 of the ‘658 Patent recites (emphasis added):
1. A call server comprising:
(a) a fi[r]st protocol agent for communicating with a first internet protocol
(IP) telephony device according to a first IP telephony protocol;
(b) a second protocol agent for communicating with a second IP telephony
device according to a second IP telephony protocol; and
(c) an interworking agent for providing functions usable by the first and
second protocol agents to communicate with each other according to a third
protocol, the functions provided by the third protocol being a superset of
functions provided by the first and second IP telephony protocols, said
interworking agent further adapted to determine that a first parameter associated
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with the first IP telephony protocol does not map to the second IP telephony
protocol and communicating first parameter to the second protocol agent without
alteration.
Defendants’ proposal of a “match” potentially connotes that the parameters must be
identical. Because no such requirement is apparent from the intrinsic evidence, the Court rejects
Defendants’ proposed construction.
Nonetheless, the specification consistently frames “mapping” in the context of a
parameter in a first protocol having a corresponding parameter in a second protocol. See ‘658
Patent at 9:1-17, 9:24-30, 9:56-10:3, 11:34-39, 12:28-31 & 13:62-65; see also Dkt. No. 118,
Ex. W, Nov. 14, 2014 Madisetti Decl. at ¶¶ 71-73. The passages cited by Plaintiff do not
undermine this consistent context. See ‘658 Patent at 14:35-51, 16:48-54 & 18:45-64.
The extrinsic dictionary definition cited by Plaintiff does not compel finding otherwise.
See Dkt. No. 108, Ex. 15, Nov. 25, 2014 Lipoff Rebuttal Decl. at ¶ 384 (citing id., Ex. 10, Nov.
11, 2014 Williams Decl. at ¶ 92 (“[T]he Oxford English Dictionary (2000) defines the verb
‘map’ to mean ‘associate each element of (a set) with an element of another set.’”)); see also
Phillips, 415 F.3d at 1321 (“[H]eavy reliance on the dictionary divorced from the intrinsic
evidence risks transforming the meaning of the claim term to the artisan into the meaning of the
term in the abstract, out of its particular context, which is the specification.”).
The Court therefore hereby construes “adapted to determine that a first parameter
associated with the first IP telephony protocol does not map to the second IP telephony
protocol” to mean “adapted to determine that a first parameter associated with the first IP
telephony protocol does not have a corresponding parameter in the second IP telephony
protocol.”

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.

X. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit.
The parties are ordered that they may not refer, directly or indirectly, to each other’s
claim construction positions in the presence of the jury. Likewise, the parties are ordered to
refrain from mentioning any portion of this opinion, other than the actual definitions adopted by
the Court, in the presence of the jury. Any reference to claim construction proceedings is limited
to informing the jury of the definitions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 1st day of April, 2015.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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APPENDIX A
Term
“first data communication protocol”

Parties’ Agreement
“data communication protocol of a first type”

‘427 Patent, Claims 1, 12, 13, and 21
‘984 Patent, Claims 1, 5, 7, 9, 16, 17, and 20
“second data communication
protocol”

“data communication protocol of a second
type”

‘427 Patent, Claims 1, 12, 13, and 21
‘984 Patent, Claims 1, 7, 9, 16, 17, and 20
“first broadband network”

“broadband network of a first type”

‘427 Patent, Claims 1, 12, 13, and 21
‘984 Patent, Claims 1, 7, 9, 16, 17, and 20
“second broadband network”

“broadband network of a second type”

‘427 Patent, Claims 1, 12, 13, and 21
‘984 Patent, Claims 1, 7, 9, 16, 17, and 20
“first telecommunication interface format”

“telecommunication interface of a first type”

‘427 Patent, Claim 1
‘984 Patent, Claim 7
“second telecommunication interface format”

“telecommunication interface of a second
type”

‘427 Patent, Claim 1
‘984 Patent, Claim 7
“first interface”

“interface of a first type”

‘427 Patent, Claim 21
“second interface”

“interface of a second type”

‘427 Patent, Claim 21

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“first interface format”

“interface format of a first type”

‘427 Patent, Claim 13
‘984 Patent, Claims 16 and 20
“second interface format”

“interface format of a second type”

‘427 Patent, Claim 13
‘984 Patent, Claims 16 and 20
“originating call half functions”

“functions associated with the originating side
of a call (the side that initiated the call)”

‘658 Patent, Claim 8
“terminating call half functions”

“functions associated with the terminating side
of a call (the side that received the call)”

‘658 Patent, Claim 8
“the first network”

“a first Internet protocol network”

‘210 Patent, Claims 1, 4, 5, 8, 9, 10, 11, 20, 21,
30, 67, and 68
“the second network”

“a second Internet protocol network”

‘210 Patent, Claims 1, 2, 4, 5, 6, 8, 9, 10, 11,
16, 20, 21, 22, 26, 30, and 67
“IP”

“Internet Protocol”

‘210 Patent, Claims 1, 11, 21, and 67
“channel”

“stream of packets”

‘561 Patent, Claims 1, 6, 7, 8, 12, 13, 14, 15,
17, 18, 19, and 20
“NAT”

“Network Address Translation”

‘561 Patent, Claims 7, 8, 9, 14, 15, 16, 17, 19,
20, and 21

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“Internet Protocol
Function (SCF-IP)”

(IP)

Service

Control “a Service Control Function capable of directly
communicating with a device on an IP
network”

‘971 Patent, Claims 1, 21, 43, and 44
“Internet Protocol (IP) Service Switching “a Service Switching Function capable of
Function (SSF-IP)”
directly communicating with a device on an IP
network”
‘971 Patent, Claims 46, 70, 91, and 92

Dkt. No. 99 at Ex. A; see Dkt. No. 125 at App’x A.

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