`
`IN THE UNITED STATES DISTRICT COUR I
`
`FOR THE EASTERN DISTRICT OF VIRGIN ..
`Norfolk Division
`
`FILED
`
`OCT 26 20l2
`
`
`
`
`
`INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.,
`Plaintiff,
`
`CLERK. US DISTRICT COURT
`NORFOLK. VA
`
`v.
`
`Civil No. 2:12cv7
`
`VIVOX, INC.,
`Defendant,
`
`-and-
`
`INNOVATIVE COMMUNICATIONS
`
`TECHNOLOGIES, INC.,
`Plaintiff,
`
`v.
`
`Civil No. 2:12cv9
`
`STALKER SOFTWARE, INC.,
`Defendant.
`
`OPINION AND ORDER
`
`These cases involve actions alleging infi‘ingement of five patents owned by plaintiff
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`Innovative Communications Technologies,
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`Inc. (“Innovative”) which disclose an invention
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`concerning internet telephony technology, also known as Voice Over Internet Protocol (“VoIP”).
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`The first patent is entitled “Point-to-Point lntemet Protocol” and was issued on August 22, 2000, as
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`United States Patent No. 6,108,704 (the “‘ 704 patent”). The second patent is entitled “Point-to-Point
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`Computer Network Communication Utility Utilizing Dynamically Assigned Network Protocol
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`Addresses” and was issued on October ID, 2000, as United States Patent No. 6,131,121 (the “‘ 121
`
`patent”). The third patent is entitled “Graphic User Interface for lntemet Telephony Application”
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`and was issued on December 28, 1999, as United States Patent No. 6,009,469 (the “‘469 patent“).
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`The fourth patent is entitled “Point-to—Point Internet Protocol” and was issued on March 2, 2004, as
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`Page 1 of 25
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`LG Electronics Exhibit 1009
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 1026112 Page 2 of 25 PagelD# 1890
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`United States Patent No. 6,701 ,3 65 (the “‘365 patent”). The fifth patent is entitled “Establishing a
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`Point-to-Point Internet Communication” and was issued on January 23, 2003, as United States Patent
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`No. 6,513,066 (the “‘066 patent"). The original patent application disclosing the invention was filed
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`on September 25, 1995, and was issued as the-704 patent. The other four patents were issued from
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`continuing patent applications, each of which claims priority to the original September 25, 1995,
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`application.
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`Presently before the Court is the claim construction ofseveral terms found in claims ofthese
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`five patents. The Court’s construction of these terms is explained herein.
`
`1. BACKGROUND
`
`A. The Invention
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`Innovative, a Delaware corporation with its alleged principal place ofbusiness in Virginia, is
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`the assignee of the ‘704, ‘ 121, ‘469, ‘365, and ‘066 patents.
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`In the preferred embodiment, these
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`patents describe a method for delivering real-time “point-to-point” voice communications services
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`over the Internet, similar to direct-dial voice calls made over traditional telephone networks. The
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`invention disclosed in these patents addresses an apparently common problem in the field ofintemet
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`telephony—although real-time “point-to-point” communications are readily supported between
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`computers with fixed Internet Protocol (IP) addresses, such communications are not so easily
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`established between computers with dynamically assigned IP addresses, which may change as ofien
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`as every time the computer user connects to the Internet. The plaintiffhas suggested an apt analogy
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`in which one person seeks to initiate a telephone call to a second person whose telephone number
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`changes afier each call. The “1’04 patent provides a method for overcoming this problem by
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`providing what amounts to an electronic phonebook or directory assistance service, permitting the
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`first computer to obtain the second computer‘s current IP address (or phone number) from a
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`Page 2 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10126!12 Page 3 of 25 PagetD# 1891
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`connection server (the electronic phonebook or directory assistance service), and then initiate “point-
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`10-point” voice communications (a direct-dial call) between the two computers over the Internet,
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`without any further assistance or intervention by the connection server. The other four patents
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`describe refinements or enhancements to the invention as originally disclosed.
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`B. Procedural History
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`On January 4, 2012, Innovative filed suit against defendant Vivox, Inc. (“Vivox”), alleging in
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`a five-count complaint that Vivox infringed the ‘704, ‘ 12] , ‘469, ‘365, and ‘066 patents by “selling,
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`offering to sell, and using VolP prodch and/or services, such as VoiceEverywhere Game Connect.”
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`That same day, Innovative also filed suit against defendant Stalker Software, Inc., doing business as
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`CommuniGate Systems (“CommuniGate”), alleging in a three-count patent that CommuniGate
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`infringed the ‘704, ‘365, and ‘066 patents by “selling, offering to sell, and using VoIP products
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`and/or services, such as the CommuniGate Pro Server.” Innovative also sued a third defendant,
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`ooVoo, LLC (“ooVoo”), but that action was settled and voluntarily dismissed by stipulation on
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`October II, 2012.
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`In ajoint statement submitted to the Court on August 7, 2012, the parties identified twenty-
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`one disputed claim terms, grouped into fifieen sets ofsimilar or related terms. The parties were able
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`to agree, however, that the claim term “process,” found throughout the patents-in-suit, means “a
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`running instance of a computer program or application.”
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`On September 14, 2012, each side filed its claim construction briefand supporting exhibits.
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`In their claim construction brief, the defendants conceded that three of the original disputed claim
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`terms need not be construed as their meaning is clear based upon the plain and ordinary meaning of
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`the terms. These terms include: “in response to an identification ofone ofthe entries by a requesting
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`process providing one of the identifier and the network protocol address to the requesting process
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`Page 3 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10l26!12 Page 4 of 25 PagelD# 1892
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`providing one of the identifier and the network protocol address to the requesting process”;
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`“retrieving the IP address of the second unit from the database using the connection server”; and
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`“retrieving the IP address of the second processing unit in response to the positive on-line status of
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`the second processing unit.”
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`On October 10, 2012, the Court held a Markman hearing. At hearing, the defendants further
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`conceded that an additional eight of the original disputed claim terms need not be censtrued as their
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`meaning is clear based upon the plain and ordinary meaning of the terms. These terms include:
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`59. u
`“query”; “server process ,
`
`is
`99.
`server , address server”; “database”; “program code configured to
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`receive the current network protocol address of one of the processes coupled to the network, the
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`network protocol address being received by said one of the processes from an Intemet access
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`a"
`server , “program code configured to receive an identifier associated with said one process”; and
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`“program code configured to receive queries or one of the network protocol address and the
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`associated identifier ofsaid one ofthe processes from other processes over the computer network at
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`the server, and to allow the establishment ofa packet-based point-to-point communication between
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`said one of the processes and one of said other processes.”l
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`C. Disputed Claim Terms
`
`Eleven claim terms remain in dispute:
`
`1. “point to point” found in claim 1 of the ‘704 patent, claims 8, 13, and 14 of the ‘ l2l
`patent, claim 5 of the ‘469 patent, claims 1 and 3 of the ‘365 patent, and claims I, 2,
`6, and 7 of the ‘066 patent;
`
`2. “establishing a point-to-point communication” found in claim I of the ‘704 patent,
`claims 8, 13, and 14 ofthe ‘ 121 patent, claim 5 of the ‘469 patent, and claims 1, 2, 6,
`and 7 of the ‘066 patent;
`
`' ooVoo appears to have been the defendant primarily concerned with these claim terms.
`ooVoo participated in the claim construction briefing process, but it did not participate in the
`Markman heating on October 10, 2012.
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`Page 4 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10l26I12 Page 5 of 25 PagelD# 1893
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`3. “to allow the establishment of a packet-based point-to-point communication” found
`in claims 1 and 3 of the ‘365 patent;
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`4. “network protocol address” found in claims I, 33, 36, 38, and 41 of the ‘704 patent,
`claims 8, l3, and 14 of the ‘ 121 patent, claims 5 and 6 of the ‘469 patent, and claims
`1 and 3 of the ‘365 patent;
`
`S. “dynamically assigned network protocol address” found in claim 33 of the ‘704
`patent and claim 8 of the ‘l2l patent;
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`6. “computer usable medium” found in claims 1 and 38 of the ‘704 patent and claim I
`of the ‘365 patent;
`
`7. “assigned to the process upon connection to the computer network” found in claims
`33 and 38 of the ‘704 patent;
`
`8. “received by the first process following connection to the computer networ ” found
`in claim 1 of the ‘704 patent and claims 13 and 14 of the ‘121 patent;
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`9. “off-line message” found in claims 3 and 8 of the ‘066 patent;
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`10. “online message” or “on-line message” found in claims 6 and 7 of the ‘066 patent;
`and
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`l 1. “providing one of the network. protocol address and the associated identifier of said
`one process” found in claim 3 of the ‘365 patent.
`
`ll. APPLICABLE LAW
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`Patents consist of“claims,” and claim construction is a matter of law to be determined by the
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`Court. Markman v. Westview Instruments Inc., 517 US. 370, 388 (1996). The purpose of claim
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`construction is to “determin[e] the meaning and scope ofthe patent claims asserted to be infringed.”
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`Markman v. Westview Instruments Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), aff‘d, 517
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`US. 370 (1996). “It is a bedrock principle of patent law that the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp” 415 F.3d
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`1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted).
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`“The words of a claim are generally given their ordinary and customary meaning.” Q at
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`1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would
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`have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the
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`Page 5 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10126112 Page 6 of 25 PagelD# 1894
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`effective filing date ofthe patent application.” Q at 1313. Moreover, “the person ofordinary skill
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`in the art is deemed to read the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context ofthe entire patent, including the specification.” &
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`“In some cases, the ordinary meaning ofclaim language as understood by a person ofskill in
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`the art may be readily apparent even to lay judges, and claim construction in such cases involves
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`little more than application ofthe widely accepted meaning ofcommonly understood words.” E at
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`1314. As the Federal Circuit has repeatedly held, “a district court is not obligated to construe terms
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`with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every
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`word in the asserted claims.” 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d
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`1351, 1360 (Fed. Cir. 2008) (footnote omitted);m ii at 1362 (“[D]istrict courts are not (and
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`should not be) required to construe my limitation present in a patent’s asserted claims. .
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`.
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`. Claim
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`construction ‘is not an obligatory exercise in redundancy”) (quoting U.S. Surgical Com. v. EthicOn,
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`m, 103 F.3d 1554, 1568 (Fed. Cir. 1997)) (emphasis in original).
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`In other cases, however, “determining the ordinary and customary meaning of the claim
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`requires examination ofterms that have a particular meaning in a field of art.” Mg, 415 F.3d at
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`1314. In such cases, the Court must look to “those sources available to the public that show what a
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`person of skill in the art would have understood disputed claim language to mean. Those sources
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`include the words of the claims themselves, the remainder of the specification, the prosecution
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`history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical
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`terms, and the state of the art.” lg, (internal quotation marks omitted).
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`The Court must begin with the intrinsic record, which consists of the claims,
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`the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. “Such intrinsic evidence is the
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`most significant source of the legally operative meaning of disputed claim language.” Vitrionics
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`Page 6 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10126112 Page 7 of 25 PagelD# 1895
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Court looks first to the claim
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`language, then “to the rest ofthe intrinsic evidence, beginning with the specification and concluding
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`with the prosecution history, if in evidence.” nteractive Gift Express, Inc. v. Compuserve Inc., 256
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`F.3d 1323, 1331 (Fed. Cir. 2001).
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`The Court first looks “to the words of the claims themselves, both asserted and nonasserted,
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`to define the scope ofthe patented invention.” m, 90 F.3d at 1582. “Ifthe claim language is
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`clear on its face, then [the Court‘s] consideration of the rest of the intrinsic evidence is restricted to
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`determining if a deviation from the clear language of the claims is specified." Interactive Gift
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`am, 256 F.3d at 1331. As the Federal Circuit has recently reiterated, there are only two
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`circumstances in which claim interpretation may deviate from the ordinary and customary meaning
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`of the claim terms: “1) when a patentee sets out a definition and acts as its own lexicographer, or 2)
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`when the patentee disavows the full scope of a claim term either in the specificatiou or during
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`prosecution.” Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012);m
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`m 415 F.3d at 1316—17; Interactive Gift Express, 256 F.3d at 1331. “If however the claim
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`language is not clear on its face, then our consideration of the rest of the intrinsic evidence is
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`directed to resolving, if possible the lack of clarity.” nteractive Gifi Expres , 256 F.3d at 1331 .
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`The Court looks next to the specification “to determine whether the inventor has used any
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`terms in a manner inconsistent with their ordinary meaning.” Vitrionics, 90 F.3d at 1582. “The
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`specification contains a written description ofthe invention that must enable one ofordinary skill in
`
`the art to make and use the invention.” Markman, 52 F.3d at 979. The specification is statutorily
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`required to describe the claimed invention in “filll, clear, concise, and exact terms.” 35 U.S.C.
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`§ 1 12(a). It “may reveal a special definition given to a claim term by the patentee that differs from
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`the meaning it would otherwise possess.
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`In such cases, the inventor’s lexicography governs."
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`Page 7 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10:26:12 Page 8 of 25 PagelD# 1896
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`miss, 415 F.3d at 1316. “In other cases, the specification may reveal an intentional disclaimer, or
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`disavowal, of claim scope by the inventor.” fl “[A]lthough the specification ofien describes very
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`specific embodiments ofthe invention, [the Federal Circuit has] repeatedly warned against confining
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`the claims to those embodiments.” l_d_, at
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`l323.
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`To avoid importing limitatious from the specification into the claims, it is
`important to keep in mind that the purposes of the specification are to teach
`and enable those of skill in the art to make and use the invention and to
`provide a best mode for doing so. One of the best ways to teach a person of
`ordinary skill in the art how to make and use the invention is to provide an
`example of how to practice the invention in a particular case. Much of the
`time, upon reading the specification in that context, it will become clear
`whether the patentee is setting out specific examples of the invention to
`accomplish those goals, or whether the patentee instead intends for the claims
`and the embodiments in the specification to be strictly coextensive.
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`Li. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually it is
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`dispositive; it is the single best guide to the meaning of a disputed term.” Q at 1315 (quoting
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`Vitrionics 90 F.3d at 1582).
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`In addition to the specification, the Court “should also consider the patent’s prosecution
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`history, if it is evidence.” Markman, 52 F.3d at 980. The prosecution history “consists of the
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`complete record of the proceedings before the PTO and includes the prior art cited during the
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`examination of the patent.” Lillipg, 415 F.3d at 1317; Vitrionics, 90 F.3d at 1582. “Like the
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`specification, the prosecution history provides evidence ofhow the PTO and the inventor understood
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`the patent," but “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Mg, 415 F.3d at 1317.
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`“Nonetheless, the prosecution history can often inform the meaning of the claim language by
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`demonstrating how the inventor understood the invention and whether the inventor limited the
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`Page 8 of 25
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`Case 2:12-cv-00009—RGD-TEM Document 48 Filed 10]26!12 Page 9 of 25 PageiD# 1897
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`invention in the course ofprosecution, making the claim scope narrower than it would otherwise be.”
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`I_d_.
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`Finally, the Court may, in some cases, consider extrinsic evidence, which “consists of all
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`evidence external to the patent and prosecution history.” Markman, 52 F.3d at 980. Although
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`“extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.” Mpg, 415 F.3d at 131?
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`(internal quotation marks omitted). Generally, the Court may turn to extrinsic evidence to construe a
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`claim “only when the claim language remains genuinely ambiguous after consideration of the
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`intrinsic evidence.” nteractive Gift Express, 256 F.3d at 1332; Lalso Vitrionics, 90 F.3d at 1583.
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`“[I]deally there should be no ‘ambiguity’ in claim language to one of ordinary skill in the art that
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`would require resort to evidence outside the specification and prosecution history.” Markman, 52
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`F.3d at 986.
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`“Extrinsic evidence may always be consulted, however, to assist in understanding the
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`underlying technology.” nteractive Gift Express, 256 F.3d at 1332. “[B]ecause extrinsic evidence
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`can help educate the court regarding the field ofthe invention and can help the court determine what
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`a person ofordinary skill in the art would understand claim terms to mean, it is permissible for the
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`district court in its sound discretion to admit and use such evidence.” Lillifi, 41 5 F.3d at 1319.
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`“[C]onsultation of extrinsic evidence is particularly appropriate to ensure that [the Court’s]
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`understanding of the technical aspects ofthe patent is not entirely at variance with the understanding
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`of one skilled in the art.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed.
`
`
`Cir. 1999); see also Dow Chem. Co. v. Sumitomo Chem. Co. Ltd., 257 F.3d 1364, 1373 (Fed. Cir.
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`2001) (“[T]echnical terms often have an ‘ordinary meaning’ as understood by one ofordinary skill in
`
`the art, although these same terms may not be readily familiar to a judge, or may be familiar only in
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`Page 9 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10:26:12 Page 10 of 25 PagelD# 1898
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`a different context”). “This evidence may be helpful to explain scientific principles, the meaning of
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`technical terms, and terms of art that appear in the patent and prosecution history.” Markman, 52
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`F.3d at 980.
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`A judge is not usually a person conversant in the particular technical art
`involved and is not the hypothetical person skilled in the art to whom a patent
`is addressed. Extrinsic evidence, therefore, may be necessary to inform the
`court about the language in which the patent is written. But this evidence is
`not for the purpose of clarifying any ambiguity in claim terminology. It is
`not ambiguity in the document that creates the need for extrinsic evidence but
`rather unfamiliarity of the court with the terminology of the art to which the
`patent is addressed.
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`Q at 986. Thus, the Court must remain mindful that “[e]xtrinsic evidence is to be used for the
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`court’s understanding of the patent, not for the purpose of varying or contradicting the terms in the
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`claims.” Q at 981;m Dow Chem., 25? F.3d at 1373 (“This extrinsic evidence may be used
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`only to assist in the proper understanding of the disputed limitation; it may not be used to vary,
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`contradict, expand, or limit the claim language from how it is defined, even implicitly, in the
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`specification or file history”). As the Federal Circuit has observed, “extrinsic evidence may be
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`useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless
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`considered in the context of the intrinsic evidence.” Mg, 415 F.3d at 1319.
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`With these principles in mind, the construction of the disputed claim terms will proceed.
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`III. CLAIM CONSTRUCTION
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`A. “point to point”
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`The disputed claim term “point to point” is found in claim 1 of the ‘704 patent, claims 8, l3,
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`and 14 ofthe ‘ 12l patent, claim 5 ofthe ‘469 patent, claims 1 and 3 ofthe ‘365 patent, and claims 1,
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`2, 6, and 7 of the ‘066 patent. The plaintiff contends that the claim term “point-to-point” used in
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`these claims means “communications between two processes over a computer network that are not
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`intermediated by a connection server or an address server.” The defendants contend that “point-to-
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`Page 10 of 25
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`Case 2:12-cv-00009—RGD-TEM Document 48 Filed 1026112 Page 11 of 25 PagelD# 1899
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`point” means “direct communication, initiated solely by one ofthe processes, and not intermediated
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`by a connection server, gateway, or similar device.“
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`The Court first looks to the language ofthe claims in which the term “point to point” appears.
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`Several claims in the patents-in-suit use the term to describe “a method ofestablishing point-to-point
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`communication” between two computer processes over a computer network.
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`‘ 121 patent col.44
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`11.30-31 (claim 13); ‘469 patent col.42 11.1 1—1 3 (claim 5); ‘365 patent col. 12 11.14, 31—33 (claim 3).
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`Other claims use the term to describe “program code” or “program logic” configured “to establish a
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`p_oint-to-p_oint communication link” or “to allow establishment of packet-based point-to-point
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`communication” between two computer processes over a computer network.
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`‘704 patent col.ll
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`ll. 1 8-—22 (claim 1); ‘ 121 patent col.43 11.28-31 (claim 8); id_. col.44 11.42—45 (claim 13); fl col. 44
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`11.61-65 (claim 14); ‘365 patent col.11 1124;31 (claim 1). The claims of the ‘066 patent differ
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`slightly in that their use ofthe term to describe a “method” or “system” for “establishing am
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`pm communication link” between two computer un_its over the 1_nt_em___e_t, rather than between
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`computer processes over an unspecified computer network. ‘066 patent col. 12 11.7—8, 18-20 (claim
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`1); fl col.1211.21, 35-38 (claim 2); id_. col.1211.63—64, co|.13 11.9—11 (claim 6); id_. col. 13 11.12, 19-
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`21 (claim 7).
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`It is clear from this language that the invention concerns communication between two
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`processes over a computer network, but the meaning of the term “point to point” is vigorously
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`disputed. The Court thus looks to the rest of”the intrinsic evidence to resolve any lack ofclarity.
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`The Court has reviewed the specifications ofeach ofthe five patents-in-suit. Nowhere in the
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`specifications has the patentee acted as its own lexicographer and clearly defined “point-to-point.”
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`Nor has the patentee clearly disavowed the full scope of the claim language. Each patent’s
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`specification includes the following passage describing a preferred embodiment of the invention:
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`Page 11 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10:26:12 Page 12 of 25 PagelD# 1900
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`The first processing unit 12 then sends a query, including the E-mail address
`of the callee, to the connection server 26. The connection server 26 then
`searches the database 34 to determine whether the callee is logged-in by
`finding any stored information corresponding to the callee’s E-mail address
`indicating that the callee is active and on-line. If the callee is active and on-
`line, the connection server 26 then performs the primary point-to-point
`protocol;2 i.e. the IP address of the callee is retrieved from the database 34
`and sent to the first processing unit 12. The first processing unit 12 may then
`directly establish the point-to-point Internet communications with the callee
`using the [P address of the callee.
`
`‘704 patent col.5 ll.55—67; ‘ 121 patent col.7 "24—37; ‘469 patent col.‘? ll.30—42; ‘365 patent col.5
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`l.66—col.6 1.1 l; ‘066 patent col.6 11.28—41 . The ‘ 121 patent and the ‘469 patent also contain common
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`specification language, further describing a preferred embodiment of the invention:
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`The primary and secondary point—to-point lntemet protocols previously
`described enable users to establish real-time direct communication links over
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`the lntemet or other computer networks without the need for any interaction
`with connection server 26, the connection server providing only directory and
`information related services.
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`‘ 121 patent col. 12 11.41—46; ‘469 patent col."12 11.48—53.
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`The Court has also reviewed the prosecution history, to the extent it is in evidence.
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`In
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`response to an adverse office action by the examiner during prosecution of the ‘704 patent, the
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`patentee provided the following remarks with respect to the nature of the invention:
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`One of the major factors inhibiting dynamic communications over the
`Internet, and other computer networks, is the inability to obtain the current
`dynamically assigned network protoc[o]l address ofa user process connected
`to the network. This problem is analogous to trying to call someone whose
`telephone number changes after each call. Applicant’s invention provides
`techniques for determining the current dynamically assigned network
`protoc[o]l address of a user process connected to the network. The first
`technique utilizes
`a dedicated server which acts as
`a network
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`2 The Court notes that the patents disclose an invention comprising two alternative protocols
`for establishing a point-to-point communication link. The alleged infringement in these cases
`exclusively involves the primary point-to-point protocol, which concerns the use of a connection
`server to furnish one computer process with the dynamically assigned network protocol address ofa
`second computer process. The secondary point-to-point protocol, not at issue in this litigation,
`concerns an exchange of network protocol addresses between two computer processes by e-mail,
`involving no interaction at all with a connection server.
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`Page 12 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10:26:12 Page 13 of 25 PagelD# 1901
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`address/information directOry from which calling processes can obtain
`information. When a first process connects to the network, the process logs-
`on to the server and provides the server with the network protoc[o]l address
`under which the first process is currently operating. A second process[,]
`wishing to establish communications with the first process, connects to the
`server and request[s] the network protoc[o]l address under which the first
`process is currently operating. Upon receipt of the network protoc[o]l
`address of the first process, the second process establishes communications
`with the first process directly, without any interven[t]ion from the
`address/information server.
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`Pl.’s Ex. C, at 7—8. The patentee subsequently provided virtually identical remarks in re5ponse to an
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`adverse office action during prosecution of the ‘365 patent. Pl.’s Ex. K, at 4.
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`Based on the descriptions of the invention as set forth in the Specifications and the
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`prosecution history of the patentSnin-suit, the Court agrees with plaintiff Innovative that “point-to-
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`point” means “communications between two processes over a computer network that are not
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`intermediated by a connection server or an address server.” The descriptions quoted above clearly
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`describe a method or system in which two processes communicate over a computer network without
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`any intermediation by the connection server. Although the connection server provides preliminary
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`assistance to the caller process, fiJrnishing it with the current dynamically assigned network protocol
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`address of the callee process, once this preliminary role is done, the connection server plays no part
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`in establishing the communication link between the caller and callee processes. Based on the claims,
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`the specification, and the prosecution history in evidence, the connection server in the patented
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`invention simply does not intermediate, or come between, the two processes in their communications
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`over a computer network. Si Webster’s Third New International Dictiongy of the English
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`Language, Unabridged l 180 (Philip Babcock Gove ed., 1931) (defining the verb “intermedia " as
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`“to come between”). The Court further notes that the defendants agree that “point-to-point“
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`communications are “not intermediated by a connection server,” incorporating that very same
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`language into their proposed construction of the claim term.
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`Page 13 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10l26l12 Page 14 of 25 PagelD# 1902
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`The defendants’ proposed construction seeks to fiirther narrow the scope of the “point to
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`point" claim language in three respects. First, the defendants seek to limit the construction to
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`“direct” communications between computer processes. But adding this limitation would be
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`redundant and would add nothing to the construction ofthe term “point to point.” Sic Cleancut LLC
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`v. Rug Doctor, Inc., No. 2:08-CV-836-TC, 201 l WL 5057005, at *2 (D. Utah Oct. 19, 201 l). The
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`parties already have agreed, as does the Court, that “point-to-point” communications are “not
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`intennediated by a connection server.” Moreover, to the extent the addition ofthe modifier “direct"
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`would further narrow the scope of the disputed claim language, the specification language upon
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`which the defendants rely describes an exemplary embodiment ofthe invention, and thus it would be
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`improper to construe the claims of the patent as being limited to the described embodiment. &
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`Lillips, 415 F.3d at 1323. The Court also notes that the prosecution history upon which the
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`defendants rely on this point contains no clear and unmistakable disclaimer of the full scope of the
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`claim language. SQm, 669 F.3d at 1366-67.
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`Second, the defendants seek to limit the construction to communications “initiated solely by
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`one ofthe processes.” In support ofthis limitation, the defendants rely on remarks in the prosecution
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`history ofthe ‘704 patent, in which the patentee stated: “[C]ommunications between two nodes, e.g.
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`processes, are initiated .
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`.
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`. solely by one ofthe processes. The address server does not establish the
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`point-to-point communication connection between the nodes.” Pl.’s Ex. C, at 9. This proposed
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`limitation is likewise redundant and adds nothing to the construction of the term “point to point."
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`&m, 201 l WL 5057005, at *2. The cited remarks simply distinguish the patented invention
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`from prior art that appears to have involved inter-mediation by an address server. Moreover, to the
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`extent that the addition of this language would further narrow the scope of the disputed claim
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`language, the Court notes that the prosecution history upon which the defendants rely contains no
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`Page 14 of 25
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`Case 2:12-cv-00009-RGD-TEM Document 48 Filed 10:26:12 Page 15 of 25 PagelD# 1903
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`clear and unmistakable disclaimer ofthe full scope ofthe claim language. & Thorner, 669 F.3d at
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`1 366-67.
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`Third, the defendants seek to limit the construction to communications “not intennediated by
`9!
`a connection server, gateway, or similar device. By adding “gateway or similar device,” the
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`defendants’ proposed construction would broaden the scope of intermediary devices that may not
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`come between the caller and callee processes,.thus narrowing the scope ofthe “point to point” claim
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`language.
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`In support of this limitation, the defendants rely solely upon statements by one of the
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`inventors and by a prior owner of the patents-in-suit, made during litigation against another
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`defendant, before another court, and settled prior to any decision on claim construction. But the
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`Court finds no ambiguity in the claim language after consideration of the intrinsic evidence, thus
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`resort to this extrinsic evidence would be improper. & Interactive Gift Express, 256 F.3d at 1332;
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`Vitrionics 90 F.3d at [583. Moreover, this proposed limitation would exclude a preferred
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`embodiment ofthe invention. .Sfi Primos, Inc. v. Hunter