Metaswitch Networks Ltd v. GENBAND US LLC et al

Filing 307

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 3/7/2016. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
METASWITCH NETWORKS LTD.
v.
GENBAND US LLC, ET AL.

§
§
§
§
§

Case No. 2:14-cv-744-JRG-RSP

MEMORANDUM ORDER
Before the Court is a Motion to Exclude Testimony of James R. Bress filed by Metaswitch
Networks Ltd. (“Metaswitch”). (Dkt. No. 179; Motion to Strike). Genband US, LLC (“Genband”)
opposes the motion. The Court previously ruled on Parts A–C of the Motion to Strike. (Dkt. No.
289 at 14–19). This Order pertains to the remaining portions (Parts D–F) of the Motion to Strike.
I. LAW
Rule 702 provides that an expert witness may offer opinion testimony if (a) the expert’s
scientific, technical, or other specialized knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c)
the testimony is the product of reliable principles and methods; and (d) the expert has reliably
applied the principles and methods to the facts of the case. Fed. R. Evid. 702.
“The inquiry envisioned by Rule 702 is . . . a flexible one,” but, in Daubert, the Supreme
Court held that the Rules also “assign to the trial judge the task of ensuring that an expert’s
testimony both rests on a reliable foundation and is relevant to the task at hand.” Daubert v.
Merrell Dow Pharms. Inc., 509 U.S. 579, 594, 597 (1993); see also Apple Inc. v. Motorola, Inc.,
757 F.3d 1286, 1321 (Fed. Cir. 2014) (“Experts routinely rely upon other experts hired by the
party they represent for expertise outside of their field.”).

“The relevance prong [of Daubert] requires the proponent [of the expert testimony] to
demonstrate that the expert’s ‘reasoning or methodology can be properly applied to the facts in
issue.’” Johnson v. Arkema, Inc., 685 F.3d 452, 459 (5th Cir. 2012) (quoting Curtis v. M & S
Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999)). “The reliability prong [of Daubert] mandates
that expert opinion ‘be grounded in the methods and procedures of science and . . . be more than
unsupported speculation or subjective belief.’” Johnson, 685 F.3d at 459 (quoting Curtis, 174 F.3d
at 668).
In assessing the “reliability” of an expert’s opinion, the trial court may consider a list of
factors including: “whether a theory or technique . . . can be (and has been) tested,” “whether the
theory or technique has been subjected to peer review and publication,” “the known or potential
rate of error,” “the existence and maintenance of standards,” and “general acceptance” of a theory
in the “relevant scientific community.” Daubert, 509 U.S. at 593–94; see also Kumho Tire Co.,
Ltd. v. Carmichael, 526 U.S. 137, 150 (1999) (“Daubert makes clear that the factors it mentions do
not constitute a ‘definitive checklist or test.’”); U.S. v. Valencia, 600 F.3d 389, 424 (5th Cir. 2010).
“The proponent need not prove to the judge that the expert’s testimony is correct, but she
must prove by a preponderance of the evidence that the testimony is reliable.” Johnson, 685 F.3d
at 459 (quoting Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc)). At
base, “the question of whether the expert is credible or the opinion is correct is generally a
question for the fact finder, not the court.” Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d
1283, 1296 (Fed. Cir. 2015).
II. ANALYSIS
Metaswitch argues that Mr. Bress’s non-infringement opinions for Patent Nos. 8,488,768
(’768), 8,611,522 (’522), and 8,687,640 (’640) are based on improper interpretations of the claims.

2

Specifically, Metaswitch takes issue with Mr. Bress’s opinions that certain claim preambles and
“whereby” clauses are limiting.
First, Metaswitch argues that the preamble of claim 1 of the ’768 Patent is not limiting.
(Dkt. No. 179 at 14–16). That claim reproduced here:
1. A method of routing calls to a single service destination for multi-service users in
a telecommunications network, each of the multi-service users having access to a
plurality of telephony services including a first telephony service provided in a first
service provider network, and a second, different, telephony service provided in a
second, different service provider network, the method comprising:
receiving, in the first service provider network, an unanswered call directed to a
first telephony party identifier associated with the first telephony service for a user;
altering, in the first service provider network, first signaling information for the
received unanswered call so as to modify destination information therein, the
modified destination information for the call comprising a telephony party identifier
associated with the single service destination, the single service destination being
located in the second service provider network;
adding, in the first service provider network, second signaling information for the
received unanswered call so as to add a second telephony party identifier therein,
the second signaling information for the received unanswered call comprising the
second telephony party identifier, different to both the first telephony party
identifier and the telephone party identifier associated with the single service
destination, the second telephone party identifier being associated with the second
telephony service for the user; and
routing the received unanswered call to the single service destination located in the
second telephony service network, on the basis of the altered first signaling
information, to provide call completion to the single service destination, wherein
the single service destination comprises a mailbox service.
See (Id. at 14–15).
Mr. Bress opines that the accused Genband products do not include the preamble terms
“second, different, telephony service” or “second, different service provider network.” (Dkt. No.
194-6 at ¶¶ 69–83). The phrase “second, different service provider network” was construed by this
Court, and Metaswitch did not argue during claim construction that this term, or that the preamble

3

as a whole, is non-limiting. (Dkt. No. 136 at 9–13). Genband also notes that Metaswitch amended
the preamble during prosecution to add the “provided in a second, different service provider
network” limitation, and used this amendment as a basis to distinguish over prior art. See (Dkt. No.
194-12 at 3, 10); Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1347 (Fed. Cir.
2012) (preamble may be limiting where “the prosecution history suggests that the preamble
language was considered necessary to the patentability of the claims”). Moreover, the preamble of
claim 1 provides the antecedent basis for at least five claim terms. (Dkt. No. 194 at 18–19); Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (“when the 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”) (citations omitted).
Accordingly, the Court finds that the preamble of claim 1 of the ’768 Patent is limiting
because it breathes “life, meaning, and vitality” into the claim. See Catalina Mktg. Int’l v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Mr. Bress’s non-infringement opinions
based on the preamble to claim 1 of the ’768 Patent will not be excluded.
Second, Metaswitch argues the preambles of claims 1, 10, and 12 of the ’522 Patent are not
limiting. (Dkt. No. 179 at 16–17). Specifically, Metaswitch argues that the terms “local exchange”
and “a telephone” in the preambles do not limit the claims and do not provide the antecedent basis
for any claim elements.
Genband responds that these two limitations were added in response to a prior art rejection,
and that both terms (“local exchange” and “a telephone”) were used by the patentee to distinguish
the claim over the prior art. (Dkt. No. 194-10 at 3, 6–9) (“Ohura fails to disclose a local exchange
that connects a telephone to a PSTN and to a packet-based telephony network. To the contrary,
Ohura simply discloses a gateway . . . However, Ohura’s gateway is not a local exchange, and, in

4

any case, Ohura’s gateway does not connect a telephone associated with a multi-service user to a
PSTN”) (emphasis in original).
Here again, the applicant’s decision to amend the preambles of the claims in response to a
rejection and to argue that terms found in the amended preamble provide a distinction over the
prior art establishes that the preambles of claims 1, 10, and 12 of the ’522 Patent are limiting. See
also Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003) (preamble was limiting
where terms “were added to gain allowance of the claims”).
Finally, Metaswitch argues that clauses beginning with the word “whereby” in claims 1,
10, and 12 of the ’522 Patent are non-limiting. (Dkt. No. 179 at 17–19). Metaswitch contends that
Mr. Bress’s non-infringement opinions based on these clauses should be excluded.
Similar to claim preambles, “whereby clauses” often do not limit the scope of a claim and
instead “simply express[] the intended result of a process step positively recited.” Minton v. NASD,
Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003); see also Texas Instruments, Inc. v. United States ITC,
988 F.2d 1165, 1172 (Fed. Cir. 1993) (“A ‘whereby’ clause that merely states the result of the
limitations in the claim adds nothing to the patentability or substance of the claim.”). However,
whereby clauses that “state[] a condition that is material to patentability” may limit the scope of
the claim. Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005).
The whereby clauses at issue here were the subject of claim amendments during
prosecution to overcome a prior art rejection. The claims originally recited “alternate telephony
party identifier whereby the user can be identified in the alternate telephony service and whereby
calls can be routed to the multi-service user by the alternate telephony service without passing
through the packet-based telephony service” but were amended to require “a PSTN telephony
party identifier whereby the user is identified in the PSTN and whereby calls are routed to the

5

multiservice user by the PSTN without passing through the packet-based telephony network.”
(Dkt. No. 194-10 at 3) (emphasis added). The applicant then argued that the claims were
distinguishable over the prior art based on the prior art’s failure to disclose “a PSTN telephony
party identifier whereby the user is identified in the PSTN and whereby calls are routed to the user
by the PSTN without passing through the packet-based telephony network.” (Id. at 9).
Accordingly, the applicant represented that the whereby clauses state a condition material
to patentability. Moreover, the applicant’s decision to modify the claim terms from permissive
(“can be”) to restrictive (“is” or “are”) evinces the applicant’s intent to make these claim terms
limiting.

Accordingly, the whereby clauses limit the claims and Mr. Bress’s opinions are

admissible.
In the alternative, Metaswitch challenges Mr. Bress’s application of the whereby clauses,
arguing that Mr. Bress has improperly excluded an “E.164 number” from the scope of the term
“PSTN telephony party identifier” based on a misunderstanding of what the relevant claim terms
cover. (Dkt. No. 201 at 6). This is an infringement fact dispute, not a Daubert issue. Kemin Foods,
L.C. v. Pigmentos Vegetales Del Centro S.A. De C.V., 464 F.3d 1339, 1349 (Fed. Cir. 2006)
(“Whether a product falls within the literal scope of a properly construed claim is a question of
fact, on which we accord a jury substantial deference”). Mr. Bress’s report explains his reasoning
and methodology for his non-infringement opinions. See (Dkt. No. 194-6 at ¶ 220–31). Metaswitch
is free to cross-examine Mr. Bress and attempt to rebut these opinions, but they will not be
excluded.
III. CONCLUSION
For the foregoing reasons, the relief requested in Parts D–F of Metaswitch’s Motion to
Strike Mr. Bress (Dkt. No. 179) is DENIED.

6

SIGNED this 3rd day of January, 2012.
SIGNED this 7th day of March, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

7