Securus Technologies Inc v. Global Tel*Link Corporation

Filing 134

Markman Memorandum Opinion and Order (Ordered by Judge Ed Kinkeade on 1/27/2015) (jrr)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
SECURUS TECHNOLOGIES, INC.
Plaintiffs
v.
GLOBAL TEL*LINK CORPORATION,
Defendant.

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Civil No. 3:13-CV-03009-K

MARKMAN MEMORANDUM OPINION AND ORDER
Before the Court are the parties’ briefs on the issue of claim construction of the
patents-in-suit, U.S. Patent Number 7,742,581 (“the ‘581 Patent”), U.S. Patent
Number 7,085,359 (“the ‘359 Patent”), and U.S. Patent Number 7,039,171 (“the ‘171
Patent”). The Court has reviewed the parties’ briefs and all related filings and evidence,
including the patents-in-suit, the specifications, the patent prosecution histories to the
extent it was submitted by the parties, as well as the parties’ proposed claim
constructions. The Court hereby construes the disputed claims according to Markman
v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 360
(1996).
I.

Background
A.

Procedural

Plaintiff, Securus Technologies, Inc. (‘Securus’) initiated the current action by

ORDER – PAGE 1

filing Plaintiff’s Original Complaint for Patent Infringement and Demand for Jury Trial. In the
Plaintiff’s complaint, it alleged that Defendant, Golbal Tel*Link Corporation (“GTL”)
infringed upon certain patents owned by or assigned to Securus. Securus’ claims for
patent infringement have been dismissed by the Court by grant of summary judgment
in favor of Defendant. But, in the action, GTL asserted counterclaims against Securus,
including an assertion that Securus infringed upon patents owned or assigned to GTL.
The ‘581 patent, the ‘359 patent, and the ‘171 patent are these patents. Since, a
dispute over these patents exists in this matter, it is necessary for the Court to construe
the disputed claim terms of these patents.
B.

The ‘581 Patent

The ‘581 patent, entitled “Electronic Messaging Exchange,” was issued by the
USPTO on June 22, 2010. It was assigned to GTL who is the sole owner of the entire
right, title, and interest in the ‘581 patent. The ‘581 patent relates to an invention used
for monitoring of inmate communications with people outside of a prison. The patent
discloses an invention that allows for an inmate to create messages, such as emails or
text messages, to people outside of a prison and for an inmate to receive messages from
people outside of a prison. As the messages are processed through the disclosed
invention, they are analyzed and checked and/or intercepted by the prison so that the
prison can monitor and control inmate communication.

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C.

The ‘359 Patent

The ‘359 patent, entitled “Investigation and Reporting of Inmate Security
Threats,” was issued by the USPTO on August 1, 2006. It was assigned to GTL who is
the sole owner of the entire right, title and interest in the ‘359 patent. The ‘359 patent
discloses an invention that monitors inmate involvement and association with security
threat groups, such as gangs or criminal organizations. It discloses an invention for
collecting information about the threat groups, collecting information about those
individuals associated with the threat groups, and using the correlation between the
two types of information to monitor the groups’ and individuals’ related activity. For
example, when an inmate who is suspected of being in a gang dials a phone number that
is also associated with that gang, the system will turn on a recording device to record
the phone call and alert the prison staff.
D.

The ‘171 Patent

The ‘171 patent, entitled “Method and System for Call Tracking to Discover
Inmate-Employee Fraternization” was issued by the USPTO on May 2, 2006. It was
assigned to GTL who is the sole owner of the entire right, title, and interest in the ‘171
patent. The ‘171 patent discloses an invention for detection of prison employee/inmate
fraternization. It does this by monitoring inmate phone calls and associating and
correlating those calls to known prison employee information. Doing so, the system can
potentially indentify if any improper fraternization between an inmate and a prison

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employee.
II.

Applicable Law
A.

Principles of Claim Construction

Claim construction is a matter of law. See Markman, 52 F.3d at 979. The Federal
Circuit Court has held 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). The Supreme Court has stated that the claims are “of primary
importance, in the effort to ascertain precisely what it is that is patented.” Phillips, 415
F.3d at 1312. A court looks to three primary sources when determining the meaning of
claims: (1) the claims, (2) the specification, and (3) the prosecution history. Markman,
52 F.3d at 979. The claims of the patent must be read in view of the specification of
which they are a part. Id. The specification consists of a written description of the
invention which allows a person of ordinary skill in the art to make and use the
invention. Id. This description may act as a dictionary explaining the invention and
defining terms used in the claims. Id. Although a court should generally give such
terms their ordinary meaning, a patentee may choose to be his own lexicographer and
use terms in a manner other than their ordinary meaning, so long as the special
definition of the term is clearly stated in the patent specification or file history. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The court starts with the claim itself, read in light of the specification. See Vivid

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Technologies, Inc. v. American Sci. & Eng’g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999).
While the claims themselves provide significant guidance as to the meaning of a claim
term, the specification is generally dispositive as “it is the single best guide to the
meaning of a disputed term.” Phillips, 415 F.3d at 1314-1315. In addition to the claim
language and specification, the prosecution history is often helpful in understanding
the intended meaning, as well as the scope of technical terms in the claims. See Vivid,
200 F.3d at 804. In particular, the prosecution history is relevant in determining
whether the patentee intends the language of the patent to be understood in its
ordinary meaning. Using these tools, the court construes only the claims that are in
controversy and only to the extent necessary to resolve the dispute. Vivid, 200 F.3d at
803.
The words of a claim are usually given their ordinary and customary meaning.
See Phillips, 415 F.3d at 1312. Ordinary and customary meaning is the meaning the
claim term would have to a person of ordinary skill in the art (e.g., field of the
invention). See Id. at 1313; Markman, 52 F.3d at 979. A person of ordinary skill in the
art would read the claim term in the context of the entire patent, including the
specification, not just the particular claim where the term appears. Phillips, 415 F.3d at
1313. There are instances where the ordinary meaning of claim language, as a person of
skill in the art would understand it, “may be readily apparent even to lay judges,”
thereby requiring “little more than the application of the widely accepted meaning of

ORDER – PAGE 5

commonly understood words.” Phillips, 415 F.3d at 1314. In these situations, general
purpose dictionaries are useful. Id.
But, in many cases, the court must determine the ordinary and customary
meaning of the claim terms which have a certain meaning in a field of art. Id. The court
can look to “those sources available to the public that show what a person of skill in the
art would have understood disputed claim language to mean.” Id. These sources can
include “the words of the claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning relevant scientific principles, the
meaning of the technical terms, and the state of the art.” Id.
Aside from the written description and the prosecution history, the claims
themselves also offer assistance as to the meaning of certain claim terms. Id.
When the intrinsic evidence, that is the patent specification and prosecution
history, unambiguously describes the scope of a patented invention, reliance on
extrinsic evidence, which is everything outside the specification and prosecution
history, is improper. See Vitronics, 90 F.3d at 1583. While the Court may consult
extrinsic evidence to educate itself about the invention and relevant technology, it may
not rely upon extrinsic evidence to reach a claim construction that is clearly at odds
with a construction mandated by the intrinsic evidence. See Key Pharm. v. Hercon Lab.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998).

ORDER – PAGE 6

B.

“Means Plus Function” Language

Some of the disputed claim terms in this case deal with the use of so-called
“means plus function” language. Generally, a court may not read limitations from the
specification and prosecution history into the claims, despite the fact that claims often
receive their interpretive context from the specification and prosecution history. See
Rambus Inc. v. Infineon Technologies Ag, 318 F.3d 1081, 1088 (Fed. Cir. 2003). But, there
is an exception to the rule that the Court does not import limitations from the
specification. When a patentee avails himself of the statutorily authorized “means plus
function” claim form, certain structural limitations from the specification are imported
into the claim construction process. See 35 U.S.C. § 112, ¶ 6. Specifically, the statute
provides that an element in a claim may be expressed as a means or step for performing
a specified function without the recital of structure, material, or acts in support thereof,
and the claim shall be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof. See Id.
The intent of § 112, ¶ 6, is to permit use of means expressions without recitation
of all the possible means that might be used in a claimed apparatus. See O.I. Corp v.
Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). However, the use of means plus
function language carries a price. See Id. Specifically, the price is that claimed function is
limited to the means specified in the written description and equivalents thereof. See Id.
As the Court of Appeals for the Federal Circuit (the “Federal Circuit”) has stated, the

ORDER – PAGE 7

quid pro quo for employing § 112, ¶ 6 is the duty to link or associate structure in the
specification to the recited function. See Texas Digital Systems, Inc. v. Telegenix, Inc., 308
F.3d 1193, 1208 (Fed. Cir. 2002).
Use of the term “means” in a claim followed by a functional statement gives rise
to a presumption that the patentee intended § 112, ¶ 6 to govern the claim’s
construction. See Personalized Media Communications, LLC v. International Trade Com’n,
161 F.3d 696, 703 (Fed. Cir. 1998). This presumption can be overcome in two ways:
(1) a claim element that uses the word “means” but fails to recite function
corresponding to the means does not invoke § 112, ¶ 6; and (2) even if the claim
element specifies a function, if it also recites sufficient structure or material for
performing that function, § 112, ¶ 6 does not apply. See Allen Engineering Corp v. Bartell
Industries, Inc., 299 F.3d 1336, 1347 (Fed. Cir. 2002). In order to recite “sufficient
structure,” a claim term, as the name for structure, has to have a reasonably well
understood meaning in the art. See Id.
Even though a claim does not use the word “means” followed by a function, the
claim may still be a means plus function claim. Apple Inc. v Motorola, Inc, 757 F.3d 1286,
1297-98 (Fed. Cir. 2014). This is true even though neither the patentee nor the
USPTO identified the claim as a means plus function claim during patent prosecution.
Id. But courts must “focus … on the claim terms the patentee chose” and should take
care not “to rewrite a claim in means plus function format.” Id. Under these

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circumstances, there is a strong presumption that the claim is not means plus function
claim. Id.
III.

Construction of the Patent Claims and Terms
A.

The ‘581 Patent Disputed Claim Terms/Phrases

For the ‘581 patent, the parties dispute the meaning and interpretation of the
following phrases:
•

“composition stations each for allowing a local user to create at least a first
message in one of plural input methods,” which occurs in Claim 1 of the ‘581
patent.

•

“wherein at least one of said plurality of composition stations generates said at
least said first message from a local user to said remote user,” which occurs in
Claims 1, and 4-6 of the ‘581 patent.

•

“a multi-function unit for receiving said at least first message from the plurality
of composition stations,” which occurs in Claim 1 of the ‘581 patent.

•

“a control platform coupled to said multi-function unit via communications
medium for transmitting said at least first message to a remote user and for
receiving a second message from said first user,” which occurs in Claim 1 of the
‘581 patent.

The full language of all ‘581 claims is in the record before the Court and the Court has
fully reviewed all the claims of the ‘581 patent, including those containing disputed

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phrases. The Court finds no need to repeat the full claim language in this order.
B.

Construction of Disputed ‘581 Claim Phrases

1.

“composition stations each for allowing a local user to create at

least a first message in one of plural input methods”
The parties dispute the construction of “composition stations each for allowing
a local user to create at least a first message in one of plural input methods,” which is
found in Claim 1 of the ‘581 patent. Securus asserts that the claim is subject to 35
U.S.C. 112 ¶ 6, i.e. that the phrase is a means plus function limitation, even though the
phrase is not written in a means plus function format. Securus asserts that
“composition stations” should be read as “composition means.” Furthermore, Securus
asserts that there is no corresponding structure in the specification to perform the
function. GTL asserts that the phrase is not subject to 35 U.S.C. § 112, ¶ 6 and that
construction of the phrase is not necessary. In the alternative, GTL proposes that if the
Court believes that construction is necessary but the phrase is not subject to 35 U.S.C.
§ 112, ¶ 6, then the phrase should be construed as “different composition stations each
providing multiple input methods for allowing a local user to create at least a first
message,” and if the Court believes that construction is necessary and the phrase is
subject to 35 U.S.C. § 112, ¶ 6 then the function should be “allowing a user to create at
least a first message” and the structure should be “a writing surface for hand-written or
typed text messages, a voicemail that converts voice to text, or a workstation for

ORDER – PAGE 10

sending or receiving messages.”
The Court first addresses Securus’ assertion that the claim is a means plus
function claim. Securus argues that in the phrase “composition station” the word
“station” is a nonce word, i.e a made up word that has no meaning of its own, since
“station” is a nonce word it does not describe a structure, and since it is not a structure
and it is combined with a function in the claim, it is actually a means plus function
claim. Furthermore, Securus argues that there is no supporting structure recited in the
specifications to perform the claimed function and because of this, the claim is invalid.
In response, GTL points out that during patent prosecution neither the patentee
nor the USPTO identified the claim as a means plus claim and that the claim is not
written in the standard means plus format, i.e. “means for [performing a function].”
GTL points out that under these circumstances, there is a presumption that the claim is
not a means plus function claim and argues that Securus has not come close to
overcoming this presumption because the patent makes clear that the “composition
station” of the claim is a structure.
The Court agrees with GTL that Securus falls short in overcoming the
presumption that this claim limitation is not a means plus function limitation. The
Court starts with the claim language itself. The claim recites a “composition station.”
While, the word “station” is somewhat generic, it is a structure. Common usage of the
word “station” connotes a structure designed for some purpose, such as a train station

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or a police station. A train station being a structure designed for trains to stop and
passenger to get onto or leave trains. Likewise, a police station being a structure
designed for police to carry out police business. In comparison, the Federal Circuit has
provided examples of nonce words that do not impart any structure. These include
words like “device,” “element,” and “mechanism.” See Mass Inst. of Tech. v. Abacus
Software, 462 F.3d 1344, 1354. This is not the case presented by this claim language.
The term “composition station” connotes a physical structure that is designed for the
purpose of composing a message.
The ‘581 specification also supports this interpretation. As pointed out by GTL,
the specification describes an inmate being able to go to a composition station that is
located in a correctional facility, (‘581 patent at 7:65-66); describes that a composition
station can a be terminal or a workstation, (‘581 patent at 9:57-58) or a surface for
writing or typing a message (‘581 patent at 7:61-8:12). All of these descriptions of a
composition station indicate that the composition station is a structural element of the
claim and that the limitation recites sufficient structure so that it is not a means plus
function limitation.
Because there is a presumption that this limitation is not a means plus function
limitation, the claim language itself describes a structure, and the specifications
describe a composition station as a structure the Court holds that this phrase is not a
means plus function limitation.

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The Court now turns to the proper construction of the phrase as a non-means
plus function limitation. Securus does not provide a construction of this phrase as a
non-means plus function limitation. GTL proposes that the phrase does not need any
construction and in the alternative that the phrase should be construed as “different
composition stations each providing multiple input methods for allowing a local user to
create at least a first message.” Securus responds that GTL proposed alternative
construction does nothing to clarify the meaning of “composition station.” The
proposed construction simply repeats the words “composition station” and rearranges
the other claim language, which is not helpful in clarifying the meaning of the phrase
for a jury.
The Court disagrees with GTL’s argument that the phrase does not need
construction, and the Court disagrees with GTL proposed alternative construction.
Securus is correct that GTL’s proposed alternative construction does not do anything
to help a jury understand what a composition station is, as used in the ‘581 patent.
Simply reusing the phrase “composition station” and rearranging the order of the other
words in the phrase does not help a jury understand what a composition station is. But,
GTL, in its briefing does provide an adequate description of a composition station.
GTL states that a composition station is “a location where an inmate is provided with
the tools for drafting a message.” Def. Resp. Brief at 6.
The claim language itself and specification support such an interpretation of

ORDER – PAGE 13

“composition station.” The common usage of the word “station” connotes a physical
location that is designed for some purpose. In this case, the modifier “composition”
tells the reader what the purpose of the station is, i.e the purpose of the station is to
provide an inmate with what is necessary to compose a message. The items necessary to
compose a message are “the tools for drafting a message,” just as GTL has described.
The specification also supports this interpretation. The specification describes that the
station is a location in a correctional facility and that the station has the tools that are
necessary to draft a message, such as a workstation, terminal, or writing surface.
So, the Court is of the opinion that “composition station” should be construed
accordingly. The Court holds that “composition station” means “a location where a
user is provided with the tools for drafting a message.” Regarding the remainder of the
disputed phrase, the Court notes that Securus has not provided any non-means plus
function construction and that GTL simply rearranges the words in the phrase. Neither
of these is help to explaining the phrase to a jury. The Court is of the opinion that no
construction of this portion of the phrase is necessary. For these reasons, the Court
refuses to construe this portion of the phrase. In summary, the Court holds that the
phrase “composition stations each for allowing a local user to create at least a first
message in one of plural input methods” means “locations where a user is provided with
the tools for drafting a message, each for allowing a local user to create at least a first
message in one of plural input methods.”

ORDER – PAGE 14

2.

“wherein at least one of said plurality of composition stations

generates said at least said first message from a local user to said remote user”
The parties dispute the meaning of the phrase “wherein at least one of said
plurality of composition stations generates said at least said first message from a local
user to said remote user,” which occurs in Claims 1 and 4-6 of the ‘581 patent. Securus
argues that the phrase should be construed to mean “one or more of the multiple
composition stations brings into existence the message created by the local user.” GTL
argues that the phrase should be construed to mean “wherein at least one of the
plurality of composition stations is used to generate at least first message from a local
user to said remote user.” There are two points of dispute in the construction of this
phrase. The first revolves around the use of “said at least said first message;” the second
is a dispute over the word “generates.”
Regarding the dispute over “said at least said first message,” Securus contends
that this language indicates that the first message that is generated in this limitation
must be the exact same message that a user created using the composition station.
Securus argues that since this must be the exact same message, the message cannot be
in another form and it cannot be a copy or a duplicate of the message created by the
user. GTL argues that Securus is over analyzing the use of “said” and that this usage
does not indicate that this has to be the exact same message as asserted by Securus. In
addition, GTL argues that a message is not defined by the form or medium that the

ORDER – PAGE 15

message is in; it is defined by the informational content expressed.
The Court agrees with GTL that in its usual meaning a message is not limited to
a particular form or medium. In its usual meaning a message is information that is sent
to someone. The message does not vary based on how it is communicated. For example,
a written message can be read to one’s self or the same written message can be read out
loud, the message remains that same. The information that is conveyed is the same
information regardless of the form of the message. So, when the phrase refers to “said at
least said first message,” it does not matter what form the message is in. What matters
is that the informational content of the message is the same as it was in the first
message. Securus’ interpretation of this phrase is incorrect because it limits the
meaning of the phrase to exclude this concept. So, the Court refuses to adopt this
interpretation.
Regarding the second dispute of this phrase, Securus contends that “generate”
should be construed to mean “brings into existence.” GTL asserts that “generate”
should be construed to mean “is used to generate.” From the proposed constructions, it
is clear that this is not actually a dispute over the definition of “generate.” Securus
proposes a construction that provides a normal meaning of generate. But, GTL’s
proposed construction does not. It simply adds “is used to” in front of “generate.”
GTL’s proposed construction does not define generate. What it does is to change the
meaning of the limitation.

ORDER – PAGE 16

The limitation states, “… one of said plurality of composition stations generates
… said first message.” As Securus points out, a plain reading of this limitation makes it
clear that it is a composition station that generates a message. GTL’s proposed
construction changes this limitation so that the composition station is used to generate
a message. These are two different situations. In the first the composition station must
actually bring this message into existence. In the second, the composition station is
merely a way for a user to bring the message into existence.
GTL contends that the plain reading of this limitation should not be applied in
this case because this would create ambiguity in the claim overall. The ambiguity comes
from the fact that other limitations require the user to create the message and to now
require the composition station to generate the message is contradictory. GTL also
argues that imposition of a plain reading of this phrase would read out preferred
embodiments. For example, it would exclude the embodiment in which an inmate uses
paper and pencil to draft a message. In this case, the composition station would be used
to generate the message, but it could not be said that the composition station itself
generated the message.
Securus argues that the plain reading of this limitation should be applied because
the language is clear and using GTL’s proposed construction would change the meaning
of that language.
The Court agrees with Securus that the claim limitation language is clear and

ORDER – PAGE 17

that if GTL’s construction was adopted, this would improperly change the meaning and
scope of the limitation. There can be no dispute that the plain meaning of “… one of
said plurality of composition stations generates … said first message” means that a
composition station is what generates the message. To change this clear language to
other language that allows the composition station to be “used to generate” a message
would change the scope and meaning of the limitation.
In addition, GTL’s argument that imposing the plain meaning of these words
creates ambiguity is not correct. GTL argues that having the user compose a message
and having the composition station generate the same message are at odds with each
other. But, this does not prevent use of composition stations in which the user inputs
the message directly into the composition station. A computer or workstation is an
example of this type of system. The user composes the message with the composition
station and the composition station generates the message simultaneously.
GTL is correct and the parties agree that imposition of a plain reading of this
language would exclude embodiments that are disclosed in the specification. The Court
notes that constructions that exclude disclosed embodiments are disfavored. But, at the
same time, the limit of protection provided by a patent is defined by the claims. In this
case the plain meaning of the claim language is clear. The language is not ambiguous or
difficult to understand. It does not use any technical jargon or words of art. A lay
person could read the language and understand exactly what it conveys. That is, that

ORDER – PAGE 18

the composition station generates the message. The patentee is free to choose the
wording of the claims and the public should be able to rely on those words to define the
extent of the patent protection. In this case, the patentee choose to require the
composition station to generate the message instead of requiring that the composition
station be used to generate the message. The patentee is limited to the wording chosen
and the courts are not in a position to expand upon those words, especially when, as in
this case, the plain meaning is clear. In addition, there is no requirement that a patentee
seek coverage of everything that is disclosed in a specification. A patentee may disclose
an invention in the specification and not claim protection of that invention in the
claims, if the patentee chooses to do so. Whether that was the case here or the case is
that the patentee carelessly drafted the claim language does not make any difference to
the analysis. The public is entitled to rely on what is claimed and the Courts cannot
change the scope or meaning of what is claimed.
In summary because a message is defined by its informational content and not
its form and because the limitation is clear that a composition station generates a
message, the Court construes the phrase “wherein at least one of said plurality of
composition stations generates said at least said first message from a local user to said
remote user” to mean “one or more of the multiple composition stations brings into
existence the message created by the local user.”
3.

“a multi-function unit for receiving said at least first message from

ORDER – PAGE 19

the plurality of composition stations”
The parties dispute the meaning of the phrase “a multi-function unit for
receiving said at least first message from the plurality of composition stations.” Securus
asserts that the limitation is subject to 35 U.S.C. § 112, ¶ 6, i.e. that the limitation is a
means plus function limitation, that the function is “receiving said at least said first
message from the plurality of composition stations” and that there is no corresponding
structure in the specification to perform this function. GTL asserts that the limitation is
not subject to 35 U.S.C. § 112, ¶ 6, and that the phrase does not need any construction.
In support of its argument, that the phrase is a means plus function limitation,
Securus argues that the limitation is a mean plus function limitation because
“multi-function unit” does not recite sufficient structure plus it is followed by a
functional description. So, Securus argues, “multi-function unit” should be read as
“multi-function means.” In response, GTL argues that “multi-function unit” recites
structure because the specification indicates that the multi-function unit is a physical
device, the specification shows the connectivity of the multi-function unit, and the
described capabilities of the multi-function unit indicate that it is structural and not
purely functional. In addition, the presumption that the limitation is not a means plus
limitation applies because the limitation is not written in standard means plus format
and because the patentee and the USPTO did not identify the limitation as a means
plus limitation during patent prosecution.

ORDER – PAGE 20

The Court agrees with GTL that ‘581 patent describes the multi-function unit
sufficiently as a structural component, so it is not a means plus function limitation. In
this case, the patentee chose the word “unit” to describe this limitation, which is a
generic word that it could be considered a nonce word that does not indicate any
structure. But, the descriptions of the multi-function unit in the specification of the
‘581 patent sufficiently describe the unit as a structural component to overcome the
indication that the “unit” is used as a nonce word. This is particularly true in light of
the presumption against subjecting the limitation to 35 U.S.C. § 112, ¶ 6. Figure 1 of
the ‘581 patent shows the connections to the multi-function unit. In this figure, the
multi-function unit is shown as being between a composition station and a conversion
engine. The connections to and from the multi-function unit indicate that the unit is a
structural component of the disclosed invention. But, the figure depicts the
multi-function unit as a black box. It does not inform the reader of what the
multi-function unit actually is, which supports a determination that the limitation is
subject to 35 U.S.C. § 112, ¶ 6. Other portions of the specification, however, fill in
some of the gaps left by Figure 1. The specification describes the multi-function unit as
capable of scanning messages composed by inmates, which indicates that the
multi-function unit is a scanner. ‘581 Patent at 8:23-40. It also describes the
multi-function unit as being capable of printing message received by inmates from
those outside of a correctional facility, which indicates that the multi-function unit is

ORDER – PAGE 21

also a printer. ‘581 Patent at 5:19-20. Securus argues that these specification
descriptions are purely functional descriptions that do not describe a structure. But, a
description in functional terms, such as “scanning” or “printing,” does not necessarily
mean that there is no structure associated with that function. This is particularly true in
the case of devices like printers or scanners, which are named after their function. In
addition, the multi-function unit of the ‘581 patent must also necessarily be
“multi-function.” This is important because it prevents the patentee from simply
referring to a printer or a scanner in the specification. In doing so the patentee would
run the risk of distinguishing the multi-function unit from a printer or a scanner, when
in the patent the scanner and the printer are the same device, i.e. the multi-function
unit.
The claim language itself also supports a determination that the multi-function
unit is a structural component. The claims indicate that the multi-function unit is
connected in some way to the composition stations because the multi-function unit
receives messages from the composition stations; that this multi-function unit is
coupled to a control platform; and that the multi-function unit receives messages from
remote users. ‘581 Patent at 13:25-14:14. The requirements of the claim indicate
connections between the various structural components of the claim, including the
multi-function unit. The descriptions in the claims are also consistent with the
connectivity description presented in the in Figure 1. They are also consistent with the

ORDER – PAGE 22

scanning/printer

capabilities

describe

in

the

specification.

The

connectivity

descriptions and the functional descriptions that are associated with a physical
structure that are provided in both the claims and the specification are more than
enough to show that the multi-function unit is a structural component. This is
particularly true in this case, were there is a presumption that the multi-functional unit
is structural. For these reasons, the Court refuses to adopt Securus’ position that
multi-function unit limitation is a means plus function limitation.
The Court now turns to the construction of the phrase, as a non-means plus
function limitation. Securus only provided the Court with a means plus construction of
the phrase and does not provide the Court with a proposed alternative construction if
the Court found that the phrase is not a means plus function limitation. GTL only
proposes that multi-function unit does not need any construction. The Court disagrees
with GTL that the phrase does not need construction. As discussed above,
“multi-function unit” alone does not convey very much information what the device
actually is. This is the same problem presented by the black box description of the
multi-function unit in Figure 1 of the ‘581 patent. Not construing at least the
“multi-function unit” portion of the phrase leaves it wide open to interpretation of the
lawyers and the imagination of the jury. But, this would not be proper as the
specification provides some understanding about the “multi-function unit.” It specifies
that the multi-function unit is at least both a scanner and a printer. Also, as just

ORDER – PAGE 23

discussed, the claim language itself supports an interpretation that the multi-function
unit is at least a printer and a scanner. The Court is of the opinion that these criteria
should be incorporated into the construction of “multi-function unit.” Doing so is in
line with the specification and the claims. It also clarifies that the unit is multi-function
because it is capable of at least two functions, scanning and printing. For these reasons,
the Court construes the phrase “a multi-function unit for receiving said at least first
message from the plurality of composition stations” as “a multi-function printer and
scanner unit for receiving said at least first message from the plurality of composition
stations.”
4.

“a control platform coupled to said multi-function unit via

communications medium for transmitting said at least first message to a remote
user and for receiving a second message from said first user”
The parties dispute the interpretation of the phrase “a control platform coupled
to said multi-function unit via communications medium for transmitting said at least
first message to a remote user and for receiving a second message from said first user.”
Securus asserts that this phrase is subject to 35 U.S.C. § 112, ¶ 6, i.e. that it is a means
plus function limitation. Securus argues that “control platform” does not recite
sufficient structure. Securus argues that the function should be “transmitting said at
least first message to a remote user and receiving a second message from said remote
user” and that the specification fails to disclose a structure that is capable of performing

ORDER – PAGE 24

this function. GTL asserts that the phrase is not a means plus function limitation and
that the no construction is necessary. In the alternative GTL proposes, if the limitation
is not a means plus function limitation and the Court believes construction is
necessary, the phrase should be construed as “a control platform connected to said
multi-function unit via a communications medium, where the control platform
transmits said at least first message to a remote user and receives a second message from
said remote user” and if the Court believes that the limitation is a means plus function
limitation the function should be “transmitting at least first message to a remote user
and receiving a second message from said remote user” and the structure that performs
this function is “a computer containing one or more servers.”
Regarding the dispute over whether or not this limitation is a means plus
function limitation, Securus argues that “control platform” does not recite structure
and should therefore be read as “control means” and be subject to 35 U.S.C. § 112, ¶ 6.
GTL argues that the a “control platform” is a known structure in the
telecommunications field that is used to route and processes calls and messages and
that the descriptions of the functions and connectivity of the control platform provided
in the specification indicate that this is what the claim language is referring to.
The Court agrees with GTL that the a control platform is a structural component
of the limitation. As in the limitations discussed above, this limitation is not written in
standard means plus format, and neither the patentee not the USPTO identified this

ORDER – PAGE 25

limitation as a means plus function limitation during patent prosecution. Under these
circumstances, there is a presumption that the limitation is not a means plus function
limitation. In this case, this presumption is not rebutted. The claim language itself
indicates that the control platform is structural. ‘581 patent at 13:25-14:24. The claim
identifies that the control platform is connected to the multi-function unit. Being able
to connect the control platform to another structure indicates that the control platform
itself is also a structure. The specification and Figure 1 further describes the
connectivity of the control platform that is consistent with the claim language. Figure 1
of shows the control platform connected to the multi-function unit and the
specification recites that the control platform is connected to the multi-function unit
via an internet protocol connection. ‘581 Patent at 8:23-40. In addition, the
specification describes some of the structural components of the control platform, such
as “one or more server.” ’581 patent at 10:26-42, 13:37-40. The specification even
indicates that a “telephonic communication platform” is “known in the art.” ‘581
patent at 10:43-11:21.
The specification and the claims also describe some of the functions of the
control platform that indicate that the control platform is a known structure in the
telecommunications filed and that a person of ordinary skill in the art would
understand this. Id. The specification indicates that the control platform is able to
process, prepare, and route message and to perform security checks and encrypt

ORDER – PAGE 26

messages. While these are certainly functional descriptions of the control platform, the
functional descriptions provided are the same functions that a “telephonic
communication platform” that is known in the art would perform and a person of skill
in the art would understand that this is what is being referred to in the claim language.
This all indicates that the “control platform” limitation of the phrase does recite
structure. This is particularly true in light of the presumption that the “control
platform” is a structure. For these reasons that Court holds that the limitation is not a
means plus function limitation.
Regarding the construction of the phrase as a non-means plus function
limitation, Securus has not provided the Court with any proposed construction of the
phrase. GTL has proposed that the phrase does not need to be construed and in the
alternative that the phrase be construed to mean “a control platform connected to said
multi-function unit via a communications medium, where the control platform
transmits said at least first message to a remote user and receives a second message from
said remote user.”
The Court disagrees with GTL’s assertion that the phrase does not need to be
construed. As just discussed, the specification indicates that the control platform is a
specialized telecommunications device. The phrase needs construction because a jury is
not likely to have the knowledge needed to correctly understand what this device is.
GTL’s proposed construction is not helpful in understanding the phrase. GTL simply

ORDER – PAGE 27

repeats “control platform,” and the remainder of GTL’s proposed construction only
makes minor changes to the wording and rearranges that other wording. This does not
help a jury understand the meaning of the phrase.
As already discussed, the specification indicates that a “control platform” is a
specialized device in the telecommunications industry for processing and routing calls.
Inclusion of this concept in the claim construction will assist a jury in understanding
the meaning of the phrase. Therefore, the Court is of the opinion that this concept
should be included in the claim construction. For these reasons the Court construes the
phrase “a control platform coupled to said multi-function unit via communications
medium for transmitting said at least first message to a remote user and for receiving a
second message from said first user” as “a message processer and router coupled to said
multi-function unit via communications medium for transmitting said at least first
message to a remote user and for receiving a second message from said first user.”
C.

The ‘359 Patent Disputed Claim Terms/Phrases

For the ‘359 patent, the parties dispute the meaning and interpretation of the
following phrases:
•

“second information regarding inmates known to be affiliated with the security
threat groups,” which occurs in Claims 1 and 13 of the ‘359 patent;

•

“information regarding inmates known to be affiliated with the security threat
groups from the plurality of correctional facilities,” which occurs in Claim 4 of

ORDER – PAGE 28

the ‘359 patent;
•

“information regarding … inmates known to be affiliated with the security threat
groups,” which occurs in Claim 14 of the ‘359 patent; and

•

“regularly updating,” which occurs in Claim 6 the ‘359 patent.

The full language of all ‘359 claims is in the record before the Court, and the Court has
fully reviewed all the claims of the ‘359 patent, including those containing disputed
phrases. The Court finds no need to repeat the full claim language in this order.
D.

Construction of Disputed ‘359 Claim Phrases

1.

The “Information” Phrases

The parties dispute the meanings of “second information regarding inmates
known to be affiliated with the security threat groups,” “information regarding inmates
known to be affiliated with the security threat groups from the plurality of correctional
facilities,” and “information regarding … inmates known to be affiliated with the
security threat groups.” These three phrases share common points of dispute between
the parties. Within the phrases, the parties dispute 1) whether it is necessary to clarify
a distinction between “information” and “second information”; 2) the meaning of
“known to be,” as it is used in the phrases; and 3) the meaning of “affiliated” as it is
used in the phrase. Because the three phrases share common points of dispute, the
Court will collectively construe these phrases. For convenience, the Court will refer to
all of these phrases as the “information” phrases.

ORDER – PAGE 29

Regarding the dispute of whether or not it is necessary to make a distinction in
the claim construction of the phrases of the difference between “information” and
“second information,” Securus argues that this distinction should be made and
proposes that the constructions include “information (different from the first stored
information regarding security threat groups) ….” GTL asserts that this is not necessary
and that it may lead to jury confusion.
In support of its argument, Securus argues that based on the claim language and
specification language, there are at least two types of information. The first type being
the information regarding security threat groups. The other type of information being
the information regarding the inmates’ association with security threat groups.
Securus asserts that it is necessary to include additional language in the claim
constructions to point out this distinction.
GTL acknowledges and agrees that there are two distinct types of information.
But, GTL contends that it is not necessary to include in the claim construction any
language that points out that the information that this claim language is referring to is
different from the security threat group information.
The Court is of the opinion that it is necessary to point out this distinction in the
claim construction. While, Claim 1 is clear that there are the two types of information
are different sets of information; Claim 14 is not. Claim 1 indicates that there is a
difference between the two types of information. Claim 1 of the ‘359 patent reads in

ORDER – PAGE 30

part, “a method … comprising: storing first information regarding security threat groups;
storing second information regarding inmates ….” emphasis added. The fact that the two
sets of information are different sets of information is made clear by the claim language
distinguishing the sets of information as a “first information” and “second
information.”
But, this is not clear in Claim 14. Claim 14 reads in part, “a system, comprising:
a memory to store: information regarding security threat groups and inmates known to
be affiliated with the security threat groups…” and “… an analysis module to analyze
the communication detail records against the information regarding security threat
groups and inmates known to be affiliated with the security threat groups…” ‘359
Patent at 13:30-41. Claim 14 does not make clear that the security threat group is
different set of information from the inmate information. As written, the claim
language could be read so that the there is only one set of information and that single
set of information regards both security threat groups and inmates. The parties,
however, both acknowledge that this is not the case. Securus actively argues that this is
not the case. GTL acknowledges that the first and second informations of Claim 1 are
distinct, but asserts that it is not necessary to point out this distinction. Furthermore,
GTL presents its argument regarding the issue collectively and does not argue that the
there is a distinction between the sets of information in Claim 1 from those of Claim
14. So, the Court is of the opinion that because the parties agree that the sets of

ORDER – PAGE 31

information are unique and Claim 14 does not make this clear construction of these
phrases should include this distinction.
The parties’ second dispute of these phrases relates to the meaning of “known to
be” as it is used in the phrases. Securus proposes that the Court construes “known to
be” as “apprehended with certainty when such information is stored …, in actual fact,
….” GTL argues that no construction of “known to be” is required.
In support of its argument that “known to be” should be construed to mean
“apprehended with certainty when such information is stored …, in actual fact, …,”
Securus argues that this construction is necessary to achieve the fundamental objective
of the ‘359 patent. Securus argues that the fundamental objective of the ‘359 patent is
“indentifying telephone call activities that pose potential security threats,” and that it is
not possible to do this unless the connection between an inmate and a security threat
group is ascertained with certainty at the time the information is stored, … in actual
fact.” Securus appears to argue that it would impossible to indentify actual security
threats (as opposed to potential security threats) with knowing with certainty in actual
fact that the inmate was associated to a security threat group. In this argument, Securus
appears to assert that the disclosed invention only identifies actual security threats and
does not identify potential security threats.
GTL, in support of its position that “known to be” does not need any
construction, argues that Securus’ proposed construction would improperly limit the

ORDER – PAGE 32

meaning of known because there is no support in the patent to impart any degree of
certainty to what is “known.” GTL points to the specification language that discusses
how one might associate an inmate with a security threat group. This language
indentifies “observing behavior, decoding graffiti, observing body markings, clothing
arrangements, handshakes, and the like” (‘359 patent at 1:42-45) and “monitoring
inmate’s telephone conversations” (‘359 patent at 1:45-49) as ways of determining if
an inmate is associated with a security threat group. GTL argues that these
identification methods do not provide any certainty and in fact are they are inherently
uncertain methods of “knowing” something.
The Court agrees with GTL that it would not be correct to include Securus’ strict
knowledge requirement in the claim constructions because this would improperly limit
the claim language. As GTL points out, there is no support in the patent for imposing a
degree of certainty to “known to be” beyond that which the common usage of “known
to be” already connotates. In addition Securus’ proposed construction goes beyond
simply adding some degree of certainty. The proposed construction adds a required
degree of certainty that goes well above and beyond the normal usage of “known to be.”
In addition, the examples in the patent of how one “knows” that an inmate is associated
with a security threat group show that the patentee’s understanding of “knowing” is far
from Securus’ proposed construction. In addition, “known to be” is not a phrase that is
beyond that grasp of a lay juror. For the reasons, the Court holds that there is no need

ORDER – PAGE 33

to construe “known to be,” and that the phrase shall be given its usual meaning.
In addition to the parties dispute over the certainty of “known to be,” the parties
also dispute when this information must be known. In its proposed construction of
“known to be,” Securus includes a temporal limitation. Securus’ construction requires
that an inmate’s association with a security threat group be known at the time the
second information is stored. So, Securus asks that the constructions also include
“when such information is stored.” Securus argues that this is necessary for the claims
to function as described in the ‘359 patent. GTL argues that there is no basis in the
extrinsic record to include Securus’ proposed temporal limitation of “when such
information is stored” in the claim constructions. GTL asserts that inclusion of this
temporal limitation will improperly limit the claims because it excludes embodiments
describing the update of the databases. GTL argues that it is possible that at the time
information is stored a connection between an inmate and a security threat group may
not have been made, but upon subsequent updates a connection may be made and the
information could be correlated to previously recorded information.
The Court disagrees with GTL. As Securus points out, the claimed invention is
not one that is used to identify inmates that might be associated with a security threat
group. The invention is one that uses the connection between a known association of
an inmate with a security threat group, information about the security threat group,
and communication records to identify probable security threats. In order to do this,

ORDER – PAGE 34

one must first know that an inmate is associated with a security threat group. The claim
language itself requires this. For example, Claim 1 read in part: “storing second
information regarding inmates known to be affiliated with the security threat groups.”
The inmate information that is stored is only information for inmates that are already
known to be associated with a security threat group. The system does not simple record
all of the inmate information and then afterwards make a connection between an
inmate and a security threat group, as presented by GTL in its briefing. According to
the claim language, if there is not a known connection between an inmate and a
security threat group at the time the information is recorded, then there is no
information to record. So, the connection must be made at least by the time the inmate
information is stored. For these reasons, the Court agrees with Securus that “when such
information is stored,” should be included in the constructions to specify that the
inmate and security threat group association is already made at when the inmate
information is stored.
The third dispute over the information phrases is over the meaning of “affiliated
with the security threat groups.” Securus proposes that “affiliated with the security
threat groups” means “have been adopted … as members of the security threat groups
with respect to which first information has been stored.” GTL argues that no
construction of this portion of the information phrases is needed.
In support of its argument that “affiliated with the security threat groups” means

ORDER – PAGE 35

“have been adopted … as members of the security threat groups with respect to which
first information has been stored,” Securus points to the specification of the ‘359
patent. The relevant specification portions read: “In response to the identification of a
growing number of security threat group affiliated inmates in correctional facilities …
(DOCs) have attempted to identify, validate and certify street gang members who are
incarcerated in their systems,” (‘359 patent at 1:32-37) and a database data format
template will include “Security Threat Group Detail Record,” “STG Code-Affiliated
security threat group Code,: and “GangLevel-Inmate’s level in security threat group.”
(‘359 patent at 6:36-7:10). Securus argues that this specification language indicates the
patentee’s intent to record the inmate as “members” of a security threat group.
In response, GTL argues that “affiliated” is not confined to “members” of a
security threat group. GTL argues that Securus’ proposed construction of “affiliated
with the security threat groups” improperly restricts the claim language beyond it
normal meaning because there is no support or evidence in the patent to impose
Securus’ limited meaning of affiliated.
The Court agrees with GTL that Securus’ proposed construction would
improperly limit the claim language. The specification language cited by Securus does
indicate that membership in a security threat group is affiliation with a security threat
group. It also indicates that an inmate’s level with the security threat group may be
recorded in the database. But, the specification language does not limit affiliation with

ORDER – PAGE 36

a group as being a member in a group. It merely provides an example of a possible type
of affiliation. Being “affiliated” with a security threat group has a substantially broader
meaning than being a “member” of a security threat group. For example, a first inmate
may be engaged in an illicit business deal with a second inmate who is a member of a
security threat group. This may be an affiliation of the first inmate with the security
threat group, even though the first inmate is not an actual member of the security
threat group. Or, an inmate may desire to become member of a security threat group.
To achieve this goal, the inmate may routinely interact with multiple members of the
security threat group. In this case the inmate is associated with the security threat
group, but is not a member of the group. The patentee chose to use the broader
“affiliated” in the claim language and should be afforded that broader coverage in claim
construction. If the patentee wanted the invention to relate only to “members” of a
security threat group, the patentee could have used “member” in the claim language or
purposefully defined “affiliated” to mean only “member” in specification. Neither of
these is the case at hand. The usage and meaning of “affiliated” the claims and
specification is not any different from the customary usage and meaning of “affiliated.”
For these reasons, the Court holds that no construction of “affiliated” is necessary. The
term shall be given its usual meaning. In addition, the Court notes that Securus also
requested that the construction include “with respect to which first information has
been stored.” Securus, however, has not provided any supporting briefing or argument

ORDER – PAGE 37

to support inclusion of this phrase in the claim construction. So, the Court declines to
include this language in construction of the information phrases.
Because “known to be” does not need construction, clarification that the security
threat group information is a different set of information than the inmate information
is necessary, an inmate association with a security threat group must be known at the
time the information is stored, and “affiliated” does not need construction the Court
construes the information phrases as follows:
•

“second information regarding inmates known to be affiliated with the security
threat groups” is construed as “second information regarding inmates, different
from the first stored information regarding security threat groups, known to be
affiliated with the security threat groups when such information is stored.”

•

“information regarding inmates known to be affiliated with the security threat
groups from the plurality of correctional facilities” is construed as “information
regarding inmates, different from the stored information regarding security
threat groups, known to be affiliated with the security threat groups from the
plurality of correctional facilities when such information is stored.”

•

“information regarding … inmates known to be affiliated with the security threat
groups” is construed as “information regarding … inmates known to be affiliated
with security threat groups when such information is stored.”

ORDER – PAGE 38

2.

“regularly updating”

The parties dispute the meaning of the phrase “regularly updating” as used
Claim 6 of the ‘359 patent. Securus asserts that the phrase should be construed to
mean “revising the first information and the second information at fixed times or
uniform intervals to include the latest facts.” GTL asserts that the phrase does not need
any construction. The Court agrees with GTL that no construction is needed for the
phrase “regularly updating.”
Securus argues that “readily updating” means “revising the first information and
the second information at fixed times or uniform intervals to include the latest facts”
because, Securus argues, the patent uses the phrase in a manner consistent with its
proposed construction, the proposed construction is consistent with extrinsic evidence,
and the specification specifically clarifies that updating includes adding the latest facts
about inmates to the database.
Securus argues that the patentee uses the term “regularly” to mean at fixed or
uniform intervals. In support of this argument Securus points to specification language
that reads, “In one example, information from TIES database 202 and DOTS database
205 is downloaded on a regular basis, for example, every day…” (‘359 patent 4:14-35)
and “In order to keep the database current, the DOCS will send updates to the security
threat group database to the communications provider on a regular basis, e.g., a DOC
uploads the data file to an FTP server each day.” (‘359 patent 7:26-33). According to

ORDER – PAGE 39

Securus, these specification statements support its proposed construction.
In support of its assertion that a construction of regularly updating should
include the limitation that the latest facts are included in the update, Securus points to
the specification language that reads: “Both databases are updated frequently as
information concerning inmates changes and inmates move in and out of the
correctional facility” (‘359 patent at 3:66-4:13). Securus argues that this language
supports inclusion of the “latest facts” limitation in the claim construction.
GTL argues that the phrase “regularly updating” does not need any construction
because it is a phrase that is readily understood by a lay juror and it is not used in the
claims in any manner different than its ordinary lay meaning. GTL further argues that
Securus’ proposed construction improperly narrows the claim language because there is
no support in the ‘359 patent for importation of this narrow limitation into the claim
language.
The Court agrees with GTL that the phrase “regularly updating” does not require
construction. The specification language does not support Securus’ contention that
regularly updating should specifically be limited to fixed times or uniform intervals.
The language in the specification that Securus uses to include this limitation describes
updating every day or on each day. ‘359 patent at 4:14-35; 7:26-33. While updating
every day or on each day would in fact be fixed time or uniform interval, there is
nothing in the specification that indicates that regularly updating must be at a fixed

ORDER – PAGE 40

time or uniform interval. The patent certainly does not impose this definition of
“regularly” on the claim language and there is no indication that are person of ordinary
skill in the art would read this and think that this is what the patentee meant by using
the term regularly. These specification examples are simply examples of what regularly
could be and there is no reason to limit the construction to fixed times or uniform
intervals. In addition, regularly could possibly include other schedules than fixed times
or uniform intervals. For example, a system that is set up to update the database when
a certain amount of new or changed information is acquired, may be considered
regularly updated, even though this is not going to occur at a fixed time or a uniform
interval because it is dependent on the amount of new or changed data acquired.
The Court is also not persuaded by Securus’ argument that regularly updating
should be construed to include the limitation that the latest facts about the inmates are
always included in the update. Securus’ only support for inclusion of this limitation is
the specification language that reads: “Both databases are updated frequently as
information concerning inmates changes and inmates move in and out of the
correctional facility” ‘359 patent at 3:66-4:13. This specification language does not
even use the phrase latest facts. Securus offers no argument how this language should
change the meaning of a readily understood phrase and the Court refuses to import this
specification language as a claim limitation.
Because “regularly updating” is used in the ‘359 patent with its normal usage,

ORDER – PAGE 41

the normal usage will be readily understood by a lay juror, and there is no indication
that the patentee intended to limit the meaning of the phrase the Court holds that no
construction of “regularly updated” is necessary. The phrase will be given the meaning
of its normal usage.
E.

The ‘171 Patent Disputed Claim Terms

For the ‘171 patent, the parties dispute the meaning and interpretation of the
following terms:
•

"fraternization" and “fraternizing,” which occur in Claims 1, 8, 9, 16, 17, and 23
of the ‘359 patent;

The full language of all ‘171 claims is in the record before the Court and the Court has
fully reviewed all the claims of the ‘171 patent, including those containing disputed
phrases. The Court finds no need to repeat the full claim language in this order.
F.

Construction of Disputed ‘171 Claim Terms

1.

"fraternization" and “fraternizing”

The parties dispute meaning of the term “fraternization” and of “fraternizing” as
they are used in claims of the ‘171 patent. Securus asserts that “fraternization” means
“association in an intimate way” and that “fraternizing” means “associating in an
intimate way.” GTL asserts that the terms do not need any construction. The Court
agrees with GTL that the terms do not need any construction.
In support of its proposed construction, “association/associating in an intimate

ORDER – PAGE 42

way,” Securus argues that the meaning of the terms is critical to understanding the
scope of the claims and that a person of skill in the art would not understand how to
practice or avoid practicing the limitations without further defining the terms. Securus
further argues that the patentee has given the terms specific meanings in the claims,
specifications, and prosecution history.
In support of its argument, that the claims and specifications define the
meanings of the terms, Securus points to dependent Claims 8 and 16, which constrict
fraternization to “potential fraternization.” It argues that this further limitation upon
“fraternization” makes it necessary to construe the fraternization terms. Securus also
points to examples of fraternization described in the specification of the ‘171 patent.
The specification describes that “improper inmate-employee fraternization can be
sexual in nature” or “more likely occurs for purposes of economic gain (e.g. smuggling
illegal materials into and out of the correctional facility.” ‘171 patent at 1:36-52.
Securus argues that this description of fraternization supports its proposed
construction because of the language of the specification indicates that the patentee
meant fraternization to connote an intimate, collaborative, albeit illicit, relationship.
Securus further points to the prosecution history to argue that fraternization
must be something more than just an illegal phone call from an inmate to an employee.
Securus points to a exchange of communications between the patentee and the
USPTO, in which, Securus argues, the patentee distinguished the claims of the ‘171

ORDER – PAGE 43

patent from mere detection of illegal phone calls between inmates and employees.
GTL asserts that the terms do not need any construction at all and that to adopt
Securus’ proposed construction would improperly narrow the meaning of the claim. In
support of this argument, GTL points out that Securus’ proposed construction requires
that fraternization be intimate, but that the specification provides examples of
fraternization that is not intimate. For example, GTL points to the same specification
language that Securus argues shows intimacy and argues that the sexual nature
fraternization example of the patent is intimate but the smuggling of illegal drugs
example is not intimate. Since, GTL argues, the specification includes a non-intimate
example of fraternization, construction of the terms cannot limit the meaning to
intimate relationships.
In response to Securus’ argument that GTL defined the scope of the terms
during prosecution history, GTL argues that Securus misinterprets the meaning and
implications of the exchanges between the patentee and the USPTO and that the
exchange actually indicates that Securus’ proposed construction is incorrect.
The Court agrees with GTL that there is no need to construe “fraternization”
and “fraternizing” because in the ‘171 patent, usage of the terms does not indicate that
the patentee meant the terms to mean anything different from their normal meanings
and because the prosecution history does not support limiting the meaning of the terms
beyond their normal meanings.

ORDER – PAGE 44

In regards to Securus’ argument that the claims and specifications indicate that
fraternization must be intimate, the Court simply does not find any support for this.
Dependent Claims 8 and 16 do further limit “fraternization” to “potential
fraternization,” as pointed out by Securus, but this limitation does nothing to help
understand the meaning of fraternization. It merely indicates a difference between
actual and potential fraternization. This does not does not do anything to define
fraternization. It simply makes a distinction between something that is occurring and
something that might be occurring. Securus’ argument that the specification supports
limiting fraternization to something intimate also fails to convince the Court to adopt
Securus’ construction. As pointed out by GTL, the examples of fraternization given in
the specification are not necessarily limited to intimate relationships. An agreement
between an inmate and an employee regarding the smuggling of contraband into a
prison does not have to be intimate. So, limiting fraternization to intimate
relationships would improperly limit the claim language. In addition, use of the word
intimate in a claim construction could add more uncertainty to the claim meaning than
it would resolve. The word intimate can imply different meanings to different people.
This can be seen in the parties’ own briefing. Securus on one hand argues that the
examples provided in the specification are intimate. GTL on the other hand, has a
narrower view of intimate, which only calls the sexual nature example intimate.
Therefore, adding intimate into the claims, will only add more uncertainty to the claim

ORDER – PAGE 45

meanings.
In regards to Securus’ argument that GTL limited the definition of the terms
during patent prosecution, the Court is of the opinion that Securus misinterprets the
meaning and implications of the communications between the patentee and the
USPTO. As pointed out by GTL, in this exchange, the patentee used the fact that the
invention could identify phone calls between inmates and employees to distinguish the
invention from the prior art. The patentee discussed this distinction in an Amendment
dated July 15, 2005. Securus Opening Brief Appx at 835-36. In a previous office action
the examiner had rejected this claim as being unpatentable over two pieces of prior art,
the Brown reference and the Gainsboro reference. In this amendment, the patentee
asserts that patentability of Claim 1 of the amendment over this prior art. The patentee
explains that neither reference discloses or suggests the method of detection of
fraternization of the amendment and that the detection of fraternization distinguishes
Claim 1 of the amendment over the prior art. Securus argues that somehow, these
statements of the patentee limit the meaning of fraternization so that fraternization
cannot include the mere detection of illegal telephone calls. The Court disagrees. The
statements made by the patentee do no such thing. In addition, Securus’ proposed
construction does nothing to address its belief that fraternization cannot include the
mere detection of illegal phone calls. Securus’ proposed construction merely limits
fraternization to an intimate association.

ORDER – PAGE 46

Because “fraternizing” and “fraternization” are used in the ‘171 patent with
their normal meaning, those meanings would be readily understood by a lay jury and
there is nothing in the prosecution history that would indicated another meaning of the
terms the Court hereby holds that there is no need to construe either term. The terms
are to be given their usual meaning.
SO ORDERED.
Signed January 27th , 2015.

________________________________
ED KINKEADE
UNITED STATES DISTRICT JUDGE

ORDER – PAGE 47

SUMMARY CHART OF CLAIM CONSTRUCTIONS OF DISPUTED TERMS

Disputed Terms of the ’581 Patent
Language of
Disputed Priority
Term of Claims
Claim 1:

Securus’ proposed
Construction

GTL’s Proposed
Construction

Judge’s
Construction

“composition stations
each for allowing a
local user to create at
least a first message in
one of plural input
methods”

This claim limitation
is governed by 35
U.S.C. § 112, ¶ 6.

No construction
required.

The claim limitation
is not governed by 35
U.S.C. §112, ¶ 6.

Function: “for
allowing a local user
to create a first
message in one of
plural input methods”
Structure:
specification fails to
disclose adequate
structure; claim is
invalid; in the
alternative structure
is “a pre-printed form
for composing a hand
written of typed text
message, or a safe
terminal or
workstation”

To the extent the
Court believes claim
construction is
required, “different
composition stations
each providing one of
multiple input
methods for allowing
a local user to create
at least a first
message”

“locations where a
user is provided with
the tools for drafting
a message, each for
allowing a local user
to create at least a
first message in one of
plural input
methods.”

If the Court construes
this phrase to be
subject to 35 U.S.C §
112, ¶ 6:
Function: “allowing a
user to create at least
a first message”
Structure: “a writing
surface for hand
written or typed text
messages, a voice mail
that converts voice to
text, or a workstation
for sending or
receiving messages”

“wherein at least one
of said plurality of

ORDER – PAGE 48

“one or more of the
multiple composition

“wherein at least one
of the plurality of

“one or more of the
multiple composition

composition stations
generates said at least
said first message
from a local use to
said remote user”

stations brings into
existence the message
created by the local
user”

composition stations
is used to generate
said at least first
message from a local
user to said remote
user”

stations brings into
existence the message
created by the local
user.”

“a multi-function unit
for receiving said at
least first message
from the plurality of
composition stations”

This claim limitation
is governed by 35
U.S.C. § 112, ¶ 6.

No construction is
required.

This claim limitation
is not governed by 35
U.S.C. §112, ¶ 6.

Function: “for
receiving said at least
said first message
from the plurality of
composition stations”
Structure:
specification fails to
disclose adequate
structure; claim is
invalid

“a control platform
coupled to said
multi-function unit
via communications
medium for
transmitting said at
least first message to a
remote user and for
receiving a second
message from said
remote user”

ORDER – PAGE 49

This claim limitation
is governed by 35
U.S.C. §112, ¶ 6.

If the Court construes
this phrase to be
“a multi-function
subject to 35 U.S.C. § printer and scanner
112, ¶6:
unit for receiving said
at least first message
Function: “receiving
from the plurality of
at least the first
composition
message from the
stations.”
plurality of
composition stations”
Structure:
“multi-function
scanner”
No construction is
required.

“a message processer
and router coupled to
said multi-function
To the extent the
unit via
Function:
Court believes
communications
“transmitting said at
construction is
medium for
least first message to a required: “a control
transmitting said at
remote user and
platform connected
least first message to a
receiving a second
to multi-function unit remote user and for
message from said
via communications
receiving a second
remote user”
medium, where the
message from said
control platform
first user.”
Structure:
transmits said at least
specification fails to
first message to a
disclose adequate
remote user and
structure; claim is
receives a second
invalid
message from said
remote user”

If the Court construes
this phrase to be
subject to 35 U.S.C. §
112, ¶6:
Function:
“transmitting said at
least first message to a
remote user and
receiving a second
message from said
remote user”
Structure: “a
computer containing
one or more servers”

ORDER – PAGE 50

Disputed Terms of the ‘359 Patent
Language of
Disputed Priority
Term of Claims

Securus’ proposed
Construction

“second information
regarding inmates
known to be affiliated
with the security
threat groups”

“information
No construction
required
(different from the
first stored
information regarding
security threat
groups) about
inmates of a
correctional facility
who, it has been
apprehended with
certainty when such
information is stored,
have been adopted, in
actual fact, as
members of the
security threat groups
with respect to which
first information has
been stored”

“second information
regarding inmates,
different from the
first stored
information regarding
security threat
groups, known to be
affiliated with the
security threat groups
when such
information is
stored.”

“information
regarding inmates
known to be affiliated
with the security
threat groups from
the plurality of
correctional facilities”

“information
No construction
(different from the
required
first stored
information regarding
security threat
groups) about
inmates of multiple
correctional facilities
who, it has been
apprehended with
certainty when such
information is stored,
have been adopted, in
actual fact, as
members of the
security threat groups
(with respect to
which first

“information
regarding inmates,
different from the
stored information
regarding security
threat groups, known
to be affiliated with
the security threat
groups from the
plurality of
correctional facilities
when such
information is
stored.”

ORDER – PAGE 51

GTL’s Proposed
Construction

Judge’s
Construction

information has been
stored) from all of the
multiple correctional
facilities”
“information
regarding … inmates
known to be affiliated
with the security
threats groups”

“information
No construction
(different from the
required
first stored
information regarding
security threat
groups) about
inmates of
correctional facilities
who, it has been
apprehended with
certainty when such
information is stored,
have been adopted, in
actual fact, as
members of the
security threat groups
(with respect to
information has been
stored in memory)”

“information
regarding … inmates
known to be affiliated
with security threat
groups when such
information is
stored.”

“regularly updating”

“revising the first
No construction
information and the
required
second information at
fixed times or
uniform intervals to
include the latest
facts”

No construction
necessary. Phrase is to
be given its usual
meaning.

ORDER – PAGE 52

Disputed Terms of the ‘171 Patent
Language of
Disputed Priority
Term of Claims

RIM’s proposed
Construction

Kodak’s Proposed
Construction

Judge’s
Construction

“fraternization”

“association in an
intimate way”

No construction
required.

No construction
required. Term is to
be given its usual
meaning.

“fraternizating”

“associating in an
intimate way”

No construction
required.

No construction
required. Term is to
be given its usual
meaning.

ORDER – PAGE 53