Klausner Technologies, Inc. v. Alcatel-Lucent USA, Inc. et al
MEMORANDUM AND OPINION, ORDER. For ease of reference, the Courts claim interpretations are set forth in a table in Appendix A. Signed by Judge Leonard Davis on 5/20/2013. (gsg)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
KLAUSNER TECHNOLOGIES, INC.,
ALCATEL-LUCENT USA, INC., et al.,
CASE NO. 6:11-CV-231
MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes the disputed claim terms in U.S. Patent Nos.
5,572,576 (“the ‘576 Patent) and 5,283,818 (“the ‘818 Patent) (collectively, “the patents-insuit.”)
On May 10, 2011, Klausner Technologies, Inc. (“Klausner”) filed a complaint alleging
Alcatel-Lucent USA, Inc. and 24 other parties infringed the ‘576 Patent, entitled “Telephone
Answering Device Linking Displayed Data with Recorded Audio Message,” and the ‘818 Patent,
entitled “Telephone Answering Device Linking Displayed Data with Recorded Audio
Message.”1 As the titles suggest, the patents-in-suit generally relate to systems, devices, and
methods for answering telephone calls and storing and retrieving information from the incoming
telephone calls with a telephone answering device. On January 29, 2013, the Court conducted a
Defendants Primus Telecommunications, Inc., Primus Telecommunications Group, Inc., PAETEC
Communications, Inc., PAETEC Corp., and PAETEC Holding Corp. (collectively, “Defendants”) were the only
remaining Defendants in the case when the Court conducted aMarkman hearing.
Markman hearing. All disputed claims presented below are found in claims 3, 4, 18, and 19 in
the ‘576 Patent and claim 10 of the ‘818 Patent.
The Court notes it has already construed many of the terms at issue in a previous case
that involved the ‘576 Patent. See Klausner Technologies, Inc. v. Vonage Holdings Corp., No.
2:06-cv-275, 2007 U.S. Dist. LEXIS 57604 (E.D. Tex. Aug. 07, 2007) (“Vonage”).
“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)). In claim construction, courts examine the patent’s
intrinsic evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S.
Surgical 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). This intrinsic evidence includes
the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
1314; C.R. Bard, Inc., 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; 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 also 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.
(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.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also 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. Also, the specification may resolve 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, Inc., 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)); see also 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.”).
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
(quoting C.R. Bard, Inc., 388 F.3d at 862). 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
assertions as to a term’s definition is 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.
At the hearing, the parties agreed that “selective retrieval” should be construed to mean
“retrieval based on user selection.” Markman Hr’g Tr. 33:16–23, Jan. 29, 2013. Additionally,
the parties originally disputed the term “selectively directly retrieving,” but Defendants withdrew
their construction. See Docket No. 341 at 1; Markman Hr’g Tr. 32:11–23.
CONSTRUCTION OF DISPUTED TERMS
telephone answering device
Klausner proposes “an electronic device for answering an incoming telephone call.”
Defendants propose “a telephone answering machine, not including a computer-based voice
messaging system which utilizes a central computer.”2 Klausner proposes the same construction
Initially, PAETEC Communications, Inc., PAETEC Corp., and PAETEC Holding Corp. (collectively, “PAETEC”)
had proposed a different construction than Primus Telecommunications, Inc. and Primus Telecommunications
Group, Inc., however, at the Markman, counsel for PAETEC represented that PAETEC no longer proposed separate
constructions for any of the disputed claim terms. Markman Hr’g Tr. 32:11–23.
adopted by the Court in Vonage whereas Defendants seek to exclude a centralized computerbased voice messaging system from the construction. See Vonage, 2007 U.S. Dist. LEXIS
57604, at *16; Docket No. 341 at 8–14.
Defendants contend that during prosecution when distinguishing a prior art reference
(“the Ertz reference”), the patentee stated its invention was different from a computer-based
voice messaging system. Docket No. 341 at 12–14. Even though the remarks were made during
the prosecution of the parent application of the ‘818 and ‘576 Patents, Defendants argue these
remarks should be considered, because the application and the patents-in-suit contain almost
Id. at 13.3
Klausner counters that this argument has already been
dismissed by the Court in Vonage, when it stated it “did not find this portion of the prosecution
history [regarding the Ertz reference] to disclaim computer based voice messaging systems, but
rather to be addressing the examiner’s conclusion that certain claims were obvious in light of the
referenced prior art.” 2007 U.S. Dist. LEXIS 57604, at *14–15. During prosecution, claims 11,
12 and 17 of the parent application were rejected as being obvious in light of the Ertz reference
and U.S. Patent No. 4,304,968. Docket No. 341, Exhibit 13, Resp. to Office Action at 4. These
claims were directed towards “telephone answering machines,” not “telephone answering
devices,” which were claimed separately in the parent application. See U.S. Patent No. 5,
390,236 claim 1. Thus, when the patentee made remarks to overcome the obviousness rejection,
the remarks were about a different term, which is not at issue in this case. See Acumed LLC v.
Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (the use of different terms is evidence that the
patentee considered the terms to have distinctly different meanings). Even if the terms were
identical, which Defendants admit they are not, the Court has already found there was no clear
disavowal of claim scope during prosecution. Vonage, 2007 U.S. Dist. LEXIS 57604, at *14–15.
The parent application issued as U.S. Patent No. 5,390,236.
Additionally, Defendants argue that computer-based voice messaging systems were not
disclosed in the specification and that a person of ordinary skill in the art would not understand
the term to encompass this embodiment. Docket No. 341 at 8–11. Defendants contend that the
specification only describes a conventional telephone answering machine and not a centralized
computer-based voice messaging system. Id. at 11 (citing ‘576 Patent col. 1:1–4; id. col. 3:22–
23; id. col. 3:55–56). Defendants also argue that at the time of the alleged invention, one of
ordinary skill would have only understood the term to mean a conventional telephone answering
machine. Id. at 8–10 (citing several patents which use the term “telephone answering machine”
and “telephone answering device” interchangeably). Defendants allege that the claim language,
which states the telephone answering device is “being coupled to a telephone,” supports this
conclusion, because computer-based systems are not coupled to a telephone. Id. at 8–9; see ‘576
Patent col. 13:45. Klausner counters that Defendants are attempting to limit the scope the
claimed invention to only the preferred embodiments, even though the specification discloses
other embodiments. Docket No. 345 at 4–5 (citing ‘576 Patent col. 1:24–27; id. col. 2:41–3:16).
While Defendants assert that one skilled in the art would understand “telephone
answering device” to mean “telephone answering machine,” the patents-in-suit distinguish the
standard telephone answering machine from the claimed invention, explaining the several
disadvantages of the standard telephone answering machine in the Background Sections of the
‘576 Patent col. 1:24–2:38; ‘818 Patent col. 1:16–2:28.
patents-in-suit never limit the claimed inventions to exclude a computer-based voice messaging
system which utilizes a central computer. Cf. Retractable Techs., Inc. v. Becton Dickinson &
Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (limiting the scope of claims when the specification
expressly limited the term to a particular embodiment). Thus, there is no reason to exclude this
particular embodiment from the construction. Accordingly, the Court construes “telephone
answering devices” as “an electronic device for answering an incoming telephone call.”
coupled to a telephone
Klausner proposes “connected to a telephone receiving an incoming call.” Defendants
propose “connected to the called party’s telephone in a manner in which an incoming call can be
detected.” Klausner proposes the same construction adopted by the Court in Vonage. See
Vonage, 2007 U.S. Dist. LEXIS 57604, at *17. Defendants argue “connected” alone does not
sufficiently describe the term, and propose including language regarding the ability to detect an
incoming call in the construction. Docket No. 341 at 15. The claim language recites “a
telephone answering device having a memory and being coupled to a telephone.” ‘576 Patent
col. 13:44–45. Because the specification describes the device as having the ability to detect an
incoming call, Defendants argue the term must be construed to encompass this feature. Id. at
The Court has previously rejected including the limitation “connected to a called party’s
telephone,” noting the specification did not support this limitation. Vonage, 2007 U.S. Dist.
LEXIS 57604, at *16–17. Regarding “in a manner in which an incoming call can be detected,”
there is no support to limit the claim as Defendants propose. The specification specifically notes
that the figures are merely preferred embodiments and “these embodiments are shown only for
the purpose of illustration and not for the purpose of limitation.” ‘818 Patent col. 12:61–64; ‘576
Patent col. 12:61–64. As the Court stated previously, “[t]he patent specification simply describes
the telephone answering devices as being connected to the telephone line that receives an
Vonage, 2007 U.S. Dist. LEXIS 57604, at *17.
Accordingly, the Court
construes “coupled to a telephone” as “connected to a telephone receiving an incoming call.”
Klausner proposes “information,” while Defendants propose “electronic signals generally
unique to the caller which are received and read by the telephone answering device.” The parties
dispute whether the term encompasses all “information” or the term should be limited. Klausner
proposes the same construction adopted by the Court in Vonage, while Defendants argue the
construction should be more detailed to truly capture the scope of the term. See Vonage, 2007
U.S. Dist. LEXIS 57604, at *18; Docket No. 341 at 17. Specifically, Defendants propose
limiting the claim to electronic information that is unique to a caller and can be read by the
telephone answering device. Docket No. 341 at 17. Defendants argue that the specification
supports their proposal, because the specification teaches that these signals are “generally unique
to the caller,” received by the telephone answering device, and are read by the telephone
answering device. Id. (citing ‘576 Patent col. 9:53; id. col. 11:41–42; ‘818 Patent col. 9:32).
Defendants raise similar arguments raised previously in Vonage. 2007 U.S. Dist. LEXIS 57604,
at *18. In Vonage, the Court explained that including limitations that the information is unique
to the caller and can be read or recognized by the telephone answering device were ambiguous
and should be not be included in the construction. Id. For the same reasons stated in Vonage,
the Court construes “first signals” as “information.”
corresponding voice message
Klausner proposes “the voice message received by the telephone answering device with
the first signal.” Defendants propose “the voice message received by the telephone answering
device after it received the first signal.” The primary dispute between the parties is whether a
voice message must be received by the telephone answering device after it receives the first
signal. Defendants argue the term should be limited, because the specification explains that it is
only after a voice signal is detected that the voice record routine begins. Docket No. 341 at 18
(citing ‘576 Patent col. 6:60–62). Therefore, according to Defendants, a signal must be detected
before a voice recording can begin, otherwise the claimed invention is inoperable. Id. Klausner
counters that a term must be construed according to its ordinary meaning, and the Court should
adopt its prior construction in Vonage. Docket No. 337 at 5; Docket No. 345 at 9–10.
Defendants argue there must be a temporal limitation included in the construction,
however there is nothing in the intrinsic record to support this limitation. The claim language
itself does not require receiving the first signals prior to the voice message. Additionally, while
the specification describes an embodiment wherein a signal is first detected, a term should not be
limited to particular embodiment unless it is clear that is the intent of the patentee. See Phillips,
415 F.3d at 1323. Accordingly, the Court construes “corresponding voice message” as “the
voice message received by the telephone answering device with the first signal.”
user remote access device
Klausner proposes “a device that can gain access to voice messages stored on the
telephone answering device from a remote location.” Defendants contend that the term is
expressly defined in claim 1 and Klausner is estopped from asserting otherwise.
The primary dispute between the parties is whether “user remote access device” is
defined by claim 1 such that Klausner cannot argue a different construction. Defendants argue
the term must be defined as it is in claim 1, because the term is not discussed in the specification.
If the term is construed as it defined in claim 1, then the term is a means-plus-function term that
must include a “means for receiving said first signals from said telephone answering device such
that said first signals are available upon user demand.” Docket No. 341 at 21 (citing ‘576 Patent
Defendants note that the structure disclosed for performing this function
includes a telephone receiver, a telephone link, and a telephone coupler. Id. (citing ‘576 Patent
col. 10:37–43; ‘576 Patent col. 10:66–11:10). Defendants argue that the prosecution history
supports their position. Id. at 20. During prosecution, the patentee modified claims 1 and 3,
which both contain the term “user remote access device” in a similar fashion, but did not modify
the claims reciting the “remote access device” limitation. Defendants argue these amendments
demonstrate that the patentee considered “user remote access device” in both claims to have the
same meaning. Klausner counters that it would be improper to import limitations from one
independent claim to another independent claim. Docket No. 345 at 11. Therefore, Klausner
proposes the same construction adopted in Vonage. 2007 U.S. Dist. LEXIS 57604, at *26.
The Court has already addressed Defendants’ concerns in Vonage. In Vonage, Defendant
proposed that “user remote access device” should be defined in all claims as it was defined in
claim 1. 2007 U.S. Dist. LEXIS 57604, at *19. However, the Court explained that claim 1 does
not define a “user remote access device” or a “remote access device.” Id. at *21. Claim 1 instead
“sets forth elements included in the ‘user remote access device’ for purposes of that claim. A
claim’s elements establish the boundaries of that claim . . . rather than define a particular claim
term.” Id. at *21–22 (citing Innova/PureWater Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)). The Court continued and noted that the other asserted claims
“set forth different elements of a ‘remote access device’ but none of these claims purport to
define the term.” Id. at *22. Defendants here do not cite to any authority for holding that meansplus-function elements found in a distinct independent claim should be used to define a term
found in another independent claim.
Accordingly, the Court construes “user remote access device” as “a device that can gain
access to voice messages stored on the telephone answering device from a remote location.”
predetermined list of names
Klausner proposes that no construction is required, while Defendants propose “a list of
caller names stored in memory for later retrieval.” Defendants argue that the term should be
construed to avoid potentially confusing the jury, who may or may not understand the meaning
of the term. Docket No. 341 at 24.
Defendants argue that the specification discloses that the list of caller names is entered by
the user and later retrieved, and thus propose a construction which clarifies that the list of caller
names is determined before the list is retrieved. Id. at 24–25 (citing ‘576 Patent col. 2:46–48; id.
col. 2:66–3; id. col. 8:21–23; id. col. 9:23–27; id. col. 11:54–58; ‘818 Patent col. 2:35–38; id.
col. 2:52–56; id. col. 7:67–8:1; col. 9:1–5). However, Defendants’ proposal goes beyond the
claim language and improperly imports limitations not found in the claim itself. For example,
while a name included in the list may be later retrieved, the specification does not require that the
entire list be retrieved later. Additionally, while a person may be included in the list, there is a
possibility that the person may never actually be a caller. The claim language itself is clear and
would be easily understandable to a juror in the context of the claims at issue. Accordingly, no
construction is required.
For the foregoing reasons, the Court interprets the claim language in this case in the
manner set forth above. For ease of reference, the Court’s claim interpretations are set forth in a
table in Appendix A.
So ORDERED and SIGNED this 20th day of May, 2013.
UNITED STATES DISTRICT JUDGE
telephone answering device
coupled to a telephone
corresponding voice message
user remote access device
predetermined list of names
an electronic device for answering an incoming
connected to a telephone receiving an
the voice message received by the telephone
answering device with the first signal
a device that can gain access to voice messages
stored on the telephone answering device from
a remote location
plain/ ordinary meaning
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