Case 2:12-cv-00009-RGD-TEM Document 36 Filed 09/14/12 Page 1 of 31 PageID# 248
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`NORFOLK DIVISION
`
`
`
`
`C.A. No. 2:12-CV-7-RGD-FBS
`C.A. No. 2:12-CV-8-RGD-DEM
`C.A. No. 2:12-CV-9-RGD-TEM
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`
`
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`))))))))
`
`INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.,
`Plaintiff,
`
`
`
`vs.
`VIVOX, INC., OOVOO, LLC, & STALKER
`SOFTWARE, INC.
`Defendants.
`
`
`
`ICTI’S MARKMAN BRIEF
`
`The Federal Circuit recently strengthened its view that in almost all patent cases a patent
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`claim’s plain language should control. To ensure that this is the case, the Federal Circuit has set
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`a high bar for a party seeking to depart from this presumption. This is especially true here,
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`where the terms at issue (e.g., “query,” “off-line message,” and “computer usable medium”) are
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`straightforward and easy to understand. Rather than following this rule, and focusing this
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`Court’s attention on the one or two actual disputes, Defendants have elected to take a “shotgun”
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`approach to claim construction, asking this Court to adopt overly-complicated definitions for
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`twelve separate terms,1 in hopes that one of their numerous arguments sticks. The Federal
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`Circuit has soundly rejected such arguments.
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`Defendants’ efforts to create non-infringement arguments by claim construction are
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`unsurprising, as they will have an exceedingly difficult time challenging the validity of these
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`1 Just twenty-four hours before the parties’ Markman briefs were due, and four minutes after this
`Court granted Defendants’ motion to file an overlength brief (based in part on the number of
`terms at issue), Defendants notified ICTI that they no longer planned to seek construction of four
`(25%) of the terms (term numbers 7, 10, 11 and 13 in C.A. No. 2:12-cv-8, Dkt. 32-A) originally
`at issue. Ex. A at 2-3. When ICTI suggested that Defendants should apprise this Court that the
`facts underlying its grant of an overlength brief had changed, Defendants decided to re-add two
`terms (numbers 11 and 13, an offline message and online message) and nevertheless use the
`additional pages. Ex. A at 2. Defendants’ gamesmanship on this point is proof that they have
`added terms to this Court’s docket just to see what might stick. See infra Section III.1.
`
`
`
`1
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`patents. The patents-in-suit have been initially examined and then fully reexamined by the
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`Patent Office (where over a thousand prior art references were cited). Defendants’ chances of
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`invalidating these patents are remote, at best.
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`I. BACKGROUND OF THE INVENTION
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`The inventions described in the patents-in-suit solved a key problem in using the internet
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`for communication—a user’s “address” can change. Computers linked to the internet have what
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`is known as an Internet Protocol (“IP”) address. See Ex. B, ’704 Patent col.l ll.22-26. An IP
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`address is analogous to the street address or phone number of a computer on the internet. Just as
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`each street address directs us to a building and each phone number directs us to a telephone on
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`the public telephone network, each IP address directs us to a computer on the internet. Thus,
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`anyone wishing to initiate communication with a user must first get the IP address associated
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`with that user’s computer.
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`What makes this process uniquely difficult is that, unlike a street address or a phone
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`number, an IP address may be “dynamic” and may change as often as every time a user connects
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`to the internet.2 Id. at col.1 ll.35-47. As the inventors explained during prosecution of the ’704
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`Patent, “[o]ne of the major factors inhibiting dynamic communications over the Internet, and
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`other computer networks, is the inability to obtain the current dynamically assigned network
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`protocol address of a user process connected to the network. This problem is analogous to
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`trying to call someone whose telephone number changes after each call.” Ex. C, ’704 Patent File
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`History, Dec. 2, 1997 Amend. at p. 7-8 (emphasis added).
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`The patents-in-suit provide an elegant solution to this long-standing problem. If Bob
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`wants to communicate on the internet, he creates a username (e.g., bob@example.com). From
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`2 For instance, Bob may log in from home then later log in from a local coffee shop.
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`2
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`that point forward, when Bob logs on to the claimed computer network, the software associates
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`Bob’s username (e.g., bob@example.com) with his current IP address (e.g., 123.45.67.89) and
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`sends the username and/or the IP address to a server. Ex. B, ’704 Patent col.5 ll.24-28.
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`If Alice wishes to call Bob, Alice’s computer contacts the server. Id. at col.5 ll.55-67.
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`The server checks to see whether Bob is on-line (via his username) and looks up the IP address
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`that is currently assigned to Bob’s computer. Id. at col.5 ll.55-67. Alice’s computer uses the
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`information from the server to locate Bob’s computer. Id. Alice’s computer then establishes a
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`telephone-like connection over which Alice and Bob can communicate. Id. The crux of the
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`invention is facilitating Alice and Bob’s user-to-user communication, referred to as “point-to-
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`point” in the patents-in-suit. The drawings below illustrate the essence of the invention:
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`?
`
`Problem
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`Bob has a “dynamic network
`protocol address” which may
`change from time to time.
`
`Alice does not know when
`Bob’s address changes and so
`cannot contact him directly
`over the internet.
`Step 1
`
`Bob logs on, ICTI’s system
`associates his network protocol
`address (e.g., his “IP address”)
`with his username.
`
`The software then sends the
`associated username and IP
`address to a server.
`
`Bob
`Bob’s Network
`Protocol Address:
`123.44.55.66
`
`Alice
` “I wish I knew Bob’s
`address so I could
`contact him directly”
`
`
`
`
`
`
`
`
`
`
`
`
`
`Bob
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`Username: bob@example.com
`Network Protocol Address: 123.44.55.66
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`sent via internet (routers, ISPs, etc.)
`
`Alice
`
`
`
`3
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`Step 2
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`The “server” stores Bob’s
`information in its “database.”
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`Step 3
`
`
`Alice wants to communicate
`with Bob online. Alice logs
`on, and Alice’s software
`“queries” the “server” to
`determine if Bob is “on-line.”
`
`Step 4
`
`In response to Alice’s request,
`if Bob is on-line, ICTI’s
`system sends Bob’s current IP
`address to Alice.
`
`Step 5
`
`Alice may then establish a
`“point-to-point” connection
`with Bob, just like a traditional
`telephone line.
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`
`
`
`
`
`
`
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`
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`
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`
`
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`
`
`
`
`
`
`Bob
`
`Bob
`
`Bob
`
`Bob
`
`Username: bob@example.com
`Net. Prot. Address: 123.44.55.66
`
`Username: bob@example.com
`Net. Prot. Address: 123.44.55.66
`
`Query for bob@example.com
`sent via internet (routers, ISPs, etc.)
`
`Username: bob@example.com
`Net. Prot. Address: 123.44.55.66
`
`Bob’s Net. Prot. Address: 123.44.55.66
`sent via internet (routers, ISPs, etc.)
`
`Username: bob@example.com
`Net. Prot. Address: 123.44.55.66
`
`Hey Bob!
`sent via internet (routers, ISPs, etc.)
`
`Alice
`
`Alice
`
`Alice
`
`Alice
`
`
`II.
`
`BACKGROUND ON THE PATENTS-IN-SUIT
`
`The patents at issue are U.S. Patent Nos. 6,108,704 (“’704 Patent”) (Ex. B); 6,131,121
`
`(“’121 Patent”) (Ex. D); 6,009,469 (“’469 Patent”) (Ex. E); 6,701,365 (“’365 Patent”) (Ex. F);
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`and 6,513,066 (“’066 Patent”) (Ex. G). The original patent application describing Net2Phone’s
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`
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`4
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`invention was filed on September 25, 1995; it issued as the ’704 Patent. The four remaining
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`patents all issued from applications that claim priority to that original application. Two of
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`them—the ’066 and ’365 Patents—have virtually identical written descriptions with the ’704
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`Patent. The other two—the ’121 and ’469 Patents—are what is known as continuations-in-part of
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`the ’704 Patent, and contain not only the content of the original application that led to the ’704
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`Patent, but also additional content that further describes the claimed inventions. A family tree of
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`the patents is attached as Exhibit H. All of the asserted patents were reexamined and the Patent
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`Office confirmed the validity of each of the asserted claims (with minor amendments to only one
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`of those claims).
`
`III.
`
`APPLICABLE LAW
`
`Phillips v. AWH Corp. is the seminal case on claim construction. 415 F.3d 1303 (Fed.
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`Cir. 2005) (en banc). Per Phillips, claims should be read as having “the meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the . . . effective
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`filing date of the patent application.” Id. at 1313. Because a person of ordinary skill in the art is
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`understood to have read the claims, specifications, and file histories of the patents at issue,
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`Phillips holds that statements from such “intrinsic evidence” are given weight when construing
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`claims. Id. Only where this Court is unable to determine the meaning of a claim term after
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`considering the intrinsic evidence—the patent and its prosecution history—may it then look to
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`extrinsic evidence to resolve any ambiguity. Dow Chem. Co. v. Sumitomo Chem. Co., Ltd., 257
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`F.3d 1364, 1373 (Fed. Cir. 2005).
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`In construing the claims of a patent, the Federal Circuit has repeatedly held that each
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`claim term should generally be given its “ordinary and customary meaning.” Phillips, 415 F.3d
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`at 1312. To remove ambiguity in this standard, the Federal Circuit earlier this year ruled that
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`there is a “stringent standard for narrowing a claim term beyond its plain and ordinary
`5
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`meaning.” Aventis Pharm. S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (emphasis
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`added). Citing the significant case, Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d 1362
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`(Fed. Cir. 2012), the Federal Circuit stated it “will only interpret a claim term more narrowly
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`than its ordinary meaning under two circumstances: ‘(1) when a patentee sets out a definition
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`and acts as [its] own lexicographer, or (2) when the patentee disavows the full scope of a claim
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`term either in the specification or during prosecution.’” Aventis, 675 F.3d at 1330 (quoting
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`Thorner, 669 F.3d at 1365) (emphasis added). This Court can only adopt Defendants’ narrowed
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`definitions if Defendants can meet one of the two Thorner limiting conditions.
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`Looking specifically at
`
`the first condition of
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`the Thorner
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`test, “[t]o be his
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`own lexicographer, a patentee must use a special definition of the term [that] is clearly stated in
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`the patent specification or file history.” Laryngeal Mask Co. Ltd. v. Ambu, 618 F.3d 1367, 1372
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`(Fed. Cir. 2010) (citations omitted). As Thorner itself teaches, “[i]t is not enough for a patentee
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`to simply disclose a single embodiment or use a word in the same manner in all embodiments,
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`the patentee must clearly express an intent to redefine the term.” 669 F.3d at 1365 (citations
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`omitted); see also Abraxis Bioscience, Inc. v. Maybe Pharm. (USA), Inc., 467 F.3d 1370, 1376
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`(Fed. Cir. 2006) (Patentee acted as lexicographer by stating “by the term ‘edetate,’ we mean . . .”
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`(emphasis added)).
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`Looking specifically at the second condition of the Thorner test, the patentee must
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`unambiguously disavow claim scope. “A statement in the prosecution history can only amount
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`to disclaimer if the applicant ‘clearly and unambiguously’ disavowed claim scope.” Toshiba
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`Corp. v. Imation Corp., 681 F.3d 1358, 1367 (Fed. Cir. 2012) (emphasis added and internal
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`citation omitted). The patentee also cannot disavow claim scope in the specification absent a
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`“clear intention to limit the claim scope using words or expressions of manifest exclusion or
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`
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`6
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`restriction, which is necessary to further narrow the claim language.” Linear Tech. Corp. v. Int’l
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`Trade Comm’n, 566 F.3d 1049, 1058 (Fed. Cir. 2009) (citing cases); see also Dealertrack, Inc. v.
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`Huber, 674 F. 3d 1315, 1327 (Fed. Cir. 2012) (“it is improper to read limitations from a
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`preferred embodiment described in the specification—even if it is the only embodiment—into
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`the claims absent a clear indication in the intrinsic record that the patentee intended the claims
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`to be so limited” (emphasis added)).
`
`1. Governing Federal Circuit law requires a Court to construe claim terms to have
`their plain and ordinary meaning in most circumstances.
`ICTI’s position is that most of the terms at issue have a plain and ordinary meaning.3
`
`This is true of the vast majority of claim terms in this case, to be sure. The parties agree that this
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`Court need not further interpret even technical words such as “Internet Protocol (IP) address,”
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`“network interface” and “E-mail signal.” Using the Markman procedure to put new words in
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`place of the words the patentee chose is an aberration from how the words in patent claims are
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`handled. As the Federal Circuit succinctly stated: “Courts do not rewrite claims; instead, we give
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`effect to the terms chosen by the patentee.” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364
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`(Fed. Cir. 1999) (emphasis added).
`
`Recent Federal Circuit decisions reject the use of narrowed constructions where the plain
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`and ordinary meaning of a term suffices. For instance, in ActiveVideo Networks, Inc. v. Verizon
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`Commc’ns, Inc., the Federal Circuit affirmed that the Eastern District of Virginia “did not err in
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`concluding that these terms have plain meanings that do not require additional construction.”
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`Nos. 2011-1538, 2011-1567, 2012-1129, 2012-1201, 2012 WL 3636908, at *10 (Fed. Cir. Aug.
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`3 All of the claim terms where the parties have not sought construction carry their plain and
`ordinary meaning. Additionally, just yesterday, Defendants “concluded that no construction is
`necessary and that no instruction on the plain and ordinary meaning” for “certain terms” where
`they were originally seeking construction. Ex. A at 1.
`
`
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`7
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`24, 2012).4 The Federal Circuit ruled that rejecting the narrow construction offered by the
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`accused infringer resolved the parties’ dispute and eliminated the need for further construction.
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`Id. (“ActiveVideo’s proposed construction erroneously reads limitations into the claims and the
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`district court properly rejected that construction and resolved the dispute between the parties.”).
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`Similarly, in Toshiba, the patent holder (Toshiba) proposed that “each limitation should
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`have been given its plain and ordinary meaning, as recited in the claim itself.” 681 F.3d at 1367.
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`The district court rejected Toshiba’s construction and narrowly construed the claim terms. Id.
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`The Federal Circuit reversed the district court in light of its holding in Thorner, because the
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`defendant had not proved that either of the two limiting conditions (express definition or
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`unambiguous surrender of claim scope) were met, and instructed the district court to follow the
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`“plain language of the claim” on remand.5 Id. at 1369.
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`2. Defendants’ reliance on prior Markman briefing is a red herring.
`Defendants stated in their motion for an extension of pages that they intend to rely on
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`statements from Net2Phone’s briefing in prior litigation involving these patents. Notably, for
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`many terms, Net2Phone proposed constructions where ICTI simply proposes to use the terms’
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`plain and ordinary meaning. In light of the Federal Circuit’s recent caselaw (Thorner, Aventis,
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`4 This was especially true because the construction proposed by the accused infringer
`(ActiveVideo) was “confusing, unhelpful, add[ed] no clarity to the claim language itself, and
`[were] erroneous to the extent [they] attempt[] to narrow the claims.” ActiveVideo, 2012 WL
`3636908, at *10.
`5 In addition to Thorner, Aventis, Toshiba and ActiveVideo discussed above, several times this
`year, the Federal Circuit has held that a claim term’s plain and ordinary meaning controls. See,
`e.g., Smartmetric Inc. v. Am. Exp. Co., Nos. 22011-1473, 2011-1497, 2012 WL 1367398, at *2
`(Fed. Cir. Apr. 11, 2012) (adopting the accused infringers’ construction would “deviate from the
`term’s plain and ordinary meaning, conflict with the specification, and erroneously rewrite the
`claims”); Woods v. DeAngelo Marine Exhaust, Inc., Case No. 2010-1478, 2012 WL 3683536, at
`*8 (Fed. Cir. Aug. 28, 2012); Meyer Intellectual Props. Ltd. v. Bodum, Inc., No. 2011-1329,
`2012 WL 3329695, at *12 (Fed. Cir. Aug. 15, 2012) (“After careful review of the intrinsic
`evidence, we find that nothing in the claim language or the patent specification limits the
`‘providing’ step to a specific party.”)
`
`
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`8
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`Toshiba, ActiveVideo, etc.) strongly favoring a plain and ordinary meaning unless two specific
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`conditions are met, ICTI simply proposes “plain and ordinary meaning” as a construction instead
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`of using new words to articulate the plain and ordinary meaning.6
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`
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`IV. TERMS IN DISPUTE
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`Defendants’ scattershot arguments can not trump the careful effort the inventors put into
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`describing their innovation. ICTI asks this Court to permit the claims to retain their plain and
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`ordinary meaning.
`
`1. “computer usable medium” (’704 & ’365 Patents)
`ICTI
`DEFENDANTS
`DEFENDANTS’ PROBLEM(S)
`No construction
`“floppy disks, magnetic
`A “computer usable medium” is a medium
`necessary as this term
`tapes, compact disks, or
`that computers can use. Defendant’s
`has a plain and ordinary
`other storage media”
`construction makes the term more
`meaning
`ambiguous because it only discusses
`transferable storage media, and may7
`preclude media that computers can use that
`is not transferable and does more than store
`data—hard drives for example.
`
`Defendants ask this Court to adopt an overly-complicated definition for a self-
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`explanatory term. See, e.g., Bancorp Svcs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d
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`1266, 1274-75 (Fed. Cir. 2012) (noting the parties agreement that “computer readable media”
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`should carry this plain and ordinary meaning). A computer usable medium is exactly what it
`
`
`6 Nor do any statements made in Net2Phone’s litigation with Skype carry any estoppel effect;
`there was no final judgment in the matter, nor did that court issue any rulings construing the
`patents. See Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237, 1249 (2010) (noting that judicial
`estoppel “typically applies when, among other things, a party has succeeded in persuading a
`court to accept that party’s earlier position, so that judicial acceptance of an inconsistent position
`in a later proceeding would create the perception that either the first or the second court was
`misled.” (internal quotation omitted)); see also New Hampshire v. Maine, 532 U.S. 742, 748-49
`(2001) (noting that doctrines of res judicata apply when a prior court reaches judgment on an
`issue or claim).
`7 ICTI says the construction “may” preclude other media because it is not clear what Defendants
`mean by “other storage media.” This ambiguity is another reason to reject Defendants’
`construction.
`
`
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`sounds like—a medium having computer readable code. Defendants, however, propose that this
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`Court replace this self-explanatory term with an open-ended list of media, all of which happen to
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`be transferable storage media. Defendants’ proposal appears to try and exclude non-
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`transferable media (such as hard drives), which are also usable by computers.
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`Applying Thorner, the patents do use the phrase “floppy disks, magnetic tapes, compact
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`disks, or other storage media.” They say:
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`The processor 14 receives input commands and data from a first user associated
`… through the input device 18, which … may be transferable storage media,
`such as floppy disks, magnetic tapes, compact disks, or other storage media ….
`
`Ex. B, ’704 Patent col.3 ll.55-62 (emphasis added) (emphasis added). The patents call these
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`things transferable storage media, not computer usable media. Id. Thus, the patentee did not
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`act as his own lexicographer for the term “computer usable media.”
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`In the patent file histories, the examiner summarized computer usable medium to be:
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`computer usable medium (one or more floppy disks, a CD-ROM, etc ... ) having
`computer readable code means (executable code) embodied in the medium
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`Ex. I, ’469 Patent File History, Apr. 20, 1998 Examiner’s Rejection at p. 4.8 Here, the patentee
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`understood this term in its most basic way as “computer readable code means (executable code)
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`embodied in the medium,” and then provided an open-ended list. Id. Thus, the patentee did not
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`limit or disavow scope of this claim.
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`Because Defendants cannot establish either limiting condition of the Thorner test, this
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`Court should rule that this term has its plain and ordinary meaning.
`
`
`8 For this Court’s convenience, ICTI has only provided relevant excerpts of file histories. ICTI
`will provide full file histories at this Court’s request.
`
`
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`2. “dynamically assigned network protocol address” (’704 & ’121 Patents)
`ICTI
`DEFENDANTS
`DEFENDANTS’ PROBLEM(S)
`“Dynamically” does not mean “on a
`“Network protocol
`No construction
`temporary basis” by its ordinary meaning or
`address that is assigned
`necessary as this term
`on a temporary basis”
`as used in the patents.
`has a plain and
`ordinary meaning.
`
`
`
`Defendants propose that this Court effectively cross out the word “dynamically” in the
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`claims and replace it with “on a temporary basis,” even though “dynamically” is not a
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`complicated word. “Dynamically” means changeable; it has nothing to do with how long (or
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`how “temporarily”) an address is assigned to a given computer. The plain and ordinary meaning
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`of “dynamically” is not “on a temporary basis.”
`
`Applying Thorner, the patentee does not define “dynamically assigned” to mean
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`“assigned on a temporary basis.” Quite the opposite—the specification of the ’121 Patent
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`suggests there is a difference between “temporary” and “dynamically assigned” by referring to
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`them as alternatives. See Ex. D, ’121 Patent col.2 ll.42-60 (“ability to locate users having
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`temporary or dynamically assigned Internet Protocol address has been difficult….” (emphasis
`
`added)). And the patents use “dynamic” more broadly than “temporary.” Id. at col.2 ll.37-39
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`(“Due to the dynamic nature of temporary IP addresses of some devices . . .”).
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`Indeed, the patents are clear that a “dynamically assigned network protocol address” may
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`actually be assigned on a long-term basis. The ’704 Patent teaches that network protocol
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`addresses are the “device addresses” for “devices interfacing to the internet.” Ex. B, ’704 Patent
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`col.1 ll.21-26. As the patents teach, network protocol addresses include “IP addresses” that
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`“may be permanent or dynamic.” Id. at col.1 ll.35-56. The patents further explain that a
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`dynamically assigned network protocol address (e.g., an IP address) is often assigned to a
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`computer by a connection service provider (a.k.a. an “internet service provider” or “ISP”) when
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`the computer logs onto the internet. Id. at col.5 ll.21-24. Because the internet service provider
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`assigns the dynamic IP addresses, the address can be changed as needed but there is no
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`requirement that they must change regularly. Instead, internet service providers may assign so-
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`called “sticky dynamic IP address” to their customers, which may not change for hours, days, or
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`even months.9 Thus, while dynamic addresses may change, there is no requirement that they
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`must change regularly. In short, while the relative impermanence of these addresses might be
`
`considered “temporary” in some sense, importing that word into this claim is misleading since
`
`dynamic addresses may remain unaltered for significant periods of time.
`
`Nor can Defendants meet the second prong of the Thorner test by showing that the
`
`patentee disavowed the full scope of the claim term. The phrase “temporary basis” does not
`
`appear in the prosecution history of the ’704 or ’121 Patents, and Defendants’ construction
`
`therefore fails the Thorner test.
`
`Finally, as a practical matter, Defendants’ proposed construction raises questions as to
`
`how long an address can be used while still being “assigned on a temporary basis.” Claim
`
`construction should add clarity, not ambiguity, to this Court’s analysis, which is reason enough
`
`for this Court to reject Defendants’ proposed construction. See Terlep v. Brinkmann Corp., 418
`
`F.3d 1379, 1382 (Fed. Cir. 2005) (“The construction of claims is simply a way of elaborating the
`
`normally terse claim language in order to understand and explain, but not to change, the scope of
`
`the claims.”).
`
`
`9 This is, in fact, a requirement of the Dynamic Host Configuration Protocol (“DHCP”) under
`which dynamically assigned network protocol addresses operate. This protocol “permit[s]
`addresses to be reused when a computer process disconnect[s] from the network.” Ex. J, ’066
`Patent Reexamination History, Feb. 24, 2009 Response at p. 21 (emphasis added). When a user
`remains constantly connected to the internet (e.g., a cable or DSL internet user) there is no need
`to reset or reuse his IP address since the user seldom, if ever, disconnects.
`
`
`
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`
`
`3. “assigned to the process upon connection to the computer network” (’704 and
`’121 Patents)
`ICTI
`No construction
`necessary as this term has
`a plain and ordinary
`meaning.
`
`DEFENDANTS’ PROBLEM(S)
`There is no basis to require that the
`claimed system only assign addresses on
`a “temporary basis each time.”
`
`Defendants inject “network protocol
`address” into this phrase.
`
`DEFENDANTS
`“network protocol
`address that is assigned
`on a temporary basis
`each time that a
`connection is made to
`the computer network”
`
`The term “assigned to the process upon connection to the computer network” is clear as
`
`
`
`shown in the following exemplary limitation:
`
`maintaining, in a computer memory, a network accessible compilation of entries,
`selected of the entries comprising a network protocol address and a corresponding
`identifier of a process connected to the computer network, the network protocol
`address of the corresponding process assigned to the process upon connection
`to the computer network
`
`Ex. B, ’704 Patent (Claim 33) (emphasis added) (confirmed on reexam). Simply put, when a
`
`user connects to the claimed communication system, the system registers a user’s current address
`
`and associates it with their “corresponding identifier” (e.g. user name or email address). This
`
`enables the system to facilitate point-to-point communication between users by correlating a
`
`user’s “identifier” with a user’s most current network protocol address (i.e. the one utilized when
`
`the user logs on to the network).
`
`Defendants’ proposed construction again attempts to insert the ambiguous words “on a
`
`temporary basis” into an otherwise straightforward claim term. As discussed with respect to
`
`“dynamically assigned network protocol address,” the intrinsic record provides no support for
`
`this construction. There is nothing suggesting the patentee defined “assigned to the process upon
`
`connection to the computer network” to require assignment “on a temporary basis,” and no
`
`indication that the patentee disavowed claim scope as it relates to only the “non-temporary”
`
`associations.
`
`
`
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`
`
`Further, Defendants ask this Court to add “network protocol address” into this phrase
`
`even though those words never appear. This proposed construction renders parts of the claims
`
`superfluous. For example, Claim 33 of the ’704 Patent (Ex. B), for instance, would read as
`
`follows: “the network protocol address of the corresponding process [network protocol address
`
`that is assigned on a temporary basis each time that a connection is made to the computer
`
`network].” The Federal Circuit regularly rejects any construction that renders claim terms
`
`superfluous. Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
`
`claim construction that gives meaning to all the terms of the claim is preferred over one that does
`
`not do so.”).
`
`Because Defendants cannot establish either limiting condition of the Thorner test, this
`
`Court should rule that this term has its plain and ordinary meaning.
`
`4. “server process,” “server” & “address server” (’469, ’066, ’365 & ’121 Patents)
`ICTI
`DEFENDANTS
`DEFENDANTS’ PROBLEM(S)
`No construction
`“a computer system, or
`A “server” is simply a computer system,
`necessary as this term
`collection of
`or collection of coordinated computer
`has a plain and ordinary
`coordinated computer
`systems that serves the requests of others.
`systems, running
`meaning
`
`software that retrieve
`Servers do not always “retrieve and/or
`and/or provide
`provide network address/information from
`network
`a database,” as Defendants’ construction
`address/information
`requires.
`from a database”
`
` Defendants seek to construe the “server” terms by adding several by inserting narrowing
`
`limitations that the server, for instance, (1) retrieves from a database and (2) retrieves specific
`
`network address/information from the database. The plain meaning of “server” is not limited in
`
`the way Defendants suggest. Servers are computers or collections of computers that serve the
`
`requests of others. Given the simplicity of these terms, this Court need not depart from their
`
`plain and ordinary meaning.
`
`
`
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`
`
`Applying Thorner, the patent holder neither defined “server” in the specification nor
`
`disavowed or otherwise limited the scope of this term. Instead, the patents use “server” in its
`
`plain and ordinary sense. For instance, the claims recite a “mail server” “for transmitting an E-
`
`mail signal.” Ex. D, ’121 Patent (claim 1) (not reexamined). Similarly, Figure 9 discusses
`
`“DELIVER[ING] THE E-MAIL SIGNAL THROUGH THE INTERNET USING A MAIL
`
`SERVER.” Ex. G, ’066 Patent, fig.9. The mail server doesn’t “run software that retrieves
`
`specific network address/information from a database.” Instead, unsurprisingly, a “mail server”
`
`carries its plain and ordinary meaning—it serves requests to deliver mail. An another example,
`
`the “directory server process” handles “quer[ies] as to whether a second process is connected to
`
`the computer network.” Ex. D, ’121 Patent (claim 4) (not reexamined). Accordingly, as listed in
`
`the claims and specifications of the patents-in-suit, servers perform all sorts of functions other
`
`than those proposed by Defendants.
`
`Because Defendants cannot establish either limiting condition of the Thorner test, this
`
`Court should rule that this term has its plain and ordinary meaning.
`
`5. “database” (’066 Patent)
`ICTI
`DEFENDANTS
`“a dedicated storage
`No construction
`necessary as this term
`medium for retaining a
`centralized collection
`has a plain and ordinary
`of network protocol
`meanin