Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`Ordered accordingly.
`
`West Headnotes (38)
`
`Original Image of 302 F.Supp.3d 597 (PDF)
`302 F.Supp.3d 597
`United States District Court, D. Delaware.
`
`SPRINT COMMUNICATIONS
`COMPANY L.P., et al., Plaintiffs,
`v.
`COX COMMUNICATIONS INC., et al., Defendants.
`
`Civ. No. 12–487–JFB
`|
`Signed 11/09/2017
`
`Synopsis
`Background: Patentee brought action alleging infringement
`of its telecommunications and data networking patents
`relating to transmission of telephone calls between traditional
`telephone networks and packet data networks. Patentee
`moved for partial summary judgment of no invalidity and
`to exclude testimony of alleged infringer's experts. Alleged
`infringer moved for partial summary judgment of invalidity
`and to strike patentee's response to its statement of facts,
`which patentee submitted in its reply brief to alleged
`infringer's answering brief.
`
`Holdings: The District Court, Bataillon, Senior District
`Judge, held that:
`
`[1] alleged infringer failed to submit such clear and
`convincing evidence of lack of written description so that no
`reasonable jury could find otherwise;
`
`[2] reconsideration of prior claim construction was not
`warranted;
`
`[3] additional, supplemental claim construction was not
`warranted;
`
`[1]
`
`[2]
`
`[3]
`
`Patents
`Disclosure as directed to one skilled in the
`
`art
`Patents
`Possession of claimed invention
`The written description of a patent specification
`must clearly allow persons of ordinary skill in the
`art to recognize that the inventor invented what
`is claimed. 35 U.S.C.A. § 112.
`
`Patents
`Disclosure as directed to one skilled in the
`
`art
`Patents
`Possession of claimed invention
`The test for sufficiency under the written
`description requirement is whether the disclosure
`of
`the application relied upon reasonably
`conveys to those skilled in the art that the
`inventor had possession of the claimed subject
`matter as of the filing date. 35 U.S.C.A. § 112.
`
`Patents
`Written Description Requirement
`The level of detail required to satisfy the written
`description requirement depends, in large part,
`on the nature of the claims and the complexity of
`the technology. 35 U.S.C.A. § 112.
`
`Patents
`Specific embodiment
`Neither examples nor actual reduction to practice
`is required to satisfy the written description
`requirement; rather, a constructive reduction
`to practice that in a definite way identifies
`the claimed invention can satisfy the written
`description requirement. 35 U.S.C.A. § 112.
`
`[4] testimony of alleged infringer's expert, that patents did not
`meet written description requirement, was not admissible;
`
`[4]
`
`to alleged
`[5] striking patentee's response
`statement of facts was not warranted; but
`
`infringer's
`
`[6] striking patentee's incorporation by reference of materials
`in brief currently before District Court on separate summary
`judgment motion was warranted.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`Comcast, Ex. 1028
`Comcast v. Rovi
`IPR2019-00231
`
`

`

`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`[5]
`
`[6]
`
`[7]
`
`[8]
`
`Patents
`Weight and sufficiency
`Accused infringers must ultimately prove that
`the written description has not been satisfied by
`clear and convincing evidence. 35 U.S.C.A. §
`112.
`
`Patents
`Questions of law or fact
`Patents
`Patentability and Validity
`While compliance with the written description
`requirement is a question of fact, it is amenable to
`summary judgment in cases where no reasonable
`fact finder could return a verdict for the
`nonmoving party. 35 U.S.C.A. § 112.
`
`Patents
`Patentability and Validity
`A moving party seeking to invalidate a patent
`at summary judgment must submit such clear
`and convincing evidence of invalidity so that no
`reasonable jury could find otherwise.
`
`Patents
`Patentability and Validity
`A moving party seeking to have a patent held not
`invalid at summary judgment must show that the
`nonmoving party, who bears the burden of proof
`at trial, failed to produce clear and convincing
`evidence on an essential element of a defense
`upon which a reasonable jury could invalidate
`the patent.
`
`[9]
`
`Patents
`Questions of law or fact
`Claim construction is a matter of law.
`
`[11]
`
`[12]
`
`[13]
`
`[14]
`
`Claim construction focuses on intrinsic evidence,
`that is, the claims, specification, and prosecution
`history, because intrinsic evidence is the most
`significant source of the legally operative
`meaning of disputed claim language.
`
`Patents
`State of the art
`Claims must be interpreted from the perspective
`of one of ordinary skill in the relevant art at the
`time of the invention.
`
`Patents
`Language of claims in general
`Claim construction starts with the claims and
`remains centered on the words of the claims
`throughout.
`
`Patents
`Plain, ordinary, or customary meaning in
`general
`Patents
`State of the art
`In the absence of an express intent to impart
`different meaning to claim limitations, the words
`of a claim are generally given their ordinary and
`customary meaning, which is the meaning that
`the term would have to a person of ordinary skill
`in the art in question at the time of the invention.
`
`Patents
`Multiple sources for construction
`The ordinary meaning of words of a claim may
`be determined by reviewing various sources,
`such as the claims themselves, the specification,
`the prosecution history, dictionaries, and any
`other relevant evidence; ultimately, the only
`meaning that matters in claim construction is the
`meaning in the context of the patent.
`
`[10]
`
`Patents
`Multiple sources for construction
`
`[15]
`
`Patents
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
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`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
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`[16]
`
`[17]
`
`[18]
`
`Specifications and Drawings;  Written
`Description
`The specification is often the single best guide to
`the meaning of a disputed patent claim term.
`
`Patents
`Patentability and Validity
`Alleged infringer moving for partial summary
`judgment of invalidity failed to submit such
`clear and convincing evidence of lack of
`written description so that no reasonable jury
`could find otherwise, with respect to patentee's
`broadband patents for transmission of telephone
`calls between traditional telephone networks
`and packet data networks using asynchronous
`transfer mode (ATM)
`technologies, where
`patentee's infringement allegations with respect
`to broadband patents were limited to doctrine
`of equivalents, alleged infringer's experts did
`not address doctrine of equivalents, and experts'
`opinions were based entirely on equivalence
`between ATM-limited claim limitations and
`accused products and services that relied on
`separate Internet Protocol (IP) technologies at
`time of invention, not at time patents were issued.
`35 U.S.C.A. § 112.
`
`Patents
`Substitution of Equivalents
`The proper time for evaluating equivalency, and
`thus knowledge of interchangeability between
`elements, is at the time of infringement, not at the
`time the patent was issued.
`
`Patents
`Radio and telecommunications equipment
`Reconsideration of prior claim construction,
`so as to broaden claim construction, was
`not warranted, in patentee's action alleging
`infringement of
`its broadband patents for
`transmission of
`telephone calls between
`traditional telephone networks and packet data
`networks using asynchronous transfer mode
`(ATM) technologies, where alleged infringer had
`already won its argument that certain claim
`
`[19]
`
`[20]
`
`[21]
`
`[22]
`
`limitations of broadband patents were limited to
`ATM technology.
`
`Patents
`Radio and telecommunications equipment
`Reconsideration of prior claim construction,
`so as to make claim construction contingent
`on patentee's infringement contentions, was
`not warranted, in patentee's action alleging
`infringement of
`its broadband patents for
`transmission of
`telephone calls between
`traditional telephone networks and packet data
`networks using asynchronous transfer mode
`(ATM) technologies, since claims were already
`properly construed in light of claim language,
`other claims, prior art, prosecution history, and
`specification, not in light of accused device.
`
`Patents
`Questions of law or fact
`The test of equivalence of a proposed substitute
`for a missing element is ordinarily a factual
`inquiry reserved for the finder of fact; however, it
`is the role of the court to ensure that the doctrine
`of equivalents is not permitted to overtake the
`statutory function of the claims in defining the
`scope of the patentee's exclusive rights.
`
`Patents
`Vitiation test
`Application of the doctrine of equivalents when
`the accused device contained the antithesis of the
`claimed structure would vitiate a claim element.
`
`Patents
`Vitiation test
`Vitiation is a legal determination that the
`evidence
`is such
`that no reasonable
`jury
`could determine two elements to be equivalent;
`however, the remedy for vitiation is a finding
`of noninfringement and not invalidation of the
`patent.
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
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`124 U.S.P.Q.2d 1783
`
`[23]
`
`[24]
`
`[25]
`
`[26]
`
`Patents
`Ensnarement
`Ensnarement bars a patentee from asserting a
`scope of equivalency that would encompass, or
`ensnare, the prior art.
`
`Patents
`Unclaimed subject matter;  disclosure and
`dedication
`Patents
`Ensnarement
`Patents
`Prosecution history estoppel as limiting
`range of equivalents
`Disclosure-dedication is related to ensnarement
`and prosecution history estoppel and leads to
`the same outcome, namely, noninfringement,
`when a patent drafter discloses but declines to
`claim subject matter; such action dedicates that
`unclaimed subject matter to the public.
`
`Patents
`Prosecution history estoppel as limiting
`range of equivalents
`Application of the doctrine of equivalents
`to recapture subject matter deliberately left
`unclaimed would conflict with the primacy of
`the claims in defining the scope of the patentee's
`exclusive right.
`
`Patents
`Patentability and validity
`The burden of producing evidence of prior art
`to challenge a hypothetical claim rests with an
`accused infringer, but the burden of proving
`patentability of the hypothetical claim rests with
`the patentee.
`
`[27]
`
`Patents
`Radio and telecommunications equipment
`Additional, supplemental claim construction was
`not warranted, in patentee's action alleging
`
`[28]
`
`[29]
`
`[30]
`
`infringement of its call control patents for
`connectionless transmission of telephone calls
`between traditional telephone networks and
`packet data networks, where alleged infringer's
`experts were not consistent in their proposed
`limitations to claim construction, nor were they
`specific about which claim limitations should be
`additionally construed or why.
`
`Patents
`Patentability and Validity
`Alleged infringer moving for partial summary
`judgment of invalidity failed to submit such
`clear and convincing evidence of lack of written
`description so that no reasonable jury could
`find otherwise, with respect to patentee's call
`control patents for connectionless transmission
`of telephone calls between traditional telephone
`networks and packet data networks, where
`alleged infringer's argument, based on claim
`construction restricting unknown limitations
`from unknown claims call control patents
`to either connection-oriented networks or to
`asynchronous transfer mode (ATM) technology,
`lacked specificity.
`
`Patents
`Specification as limiting or enlarging claims
`in general
`When a specification does not require a
`limitation, that limitation should not be read from
`the specification into the claims.
`
`Evidence
`Telegraphs and telephones
`Testimony of alleged infringer's expert, that
`patents relating to transmission of telephone
`calls between traditional telephone networks
`and packet data networks using asynchronous
`transfer mode (ATM) technologies failed to meet
`written description requirement, to extent claims
`encompassed systems that used Internet Protocol
`(IP) or connectionless protocols to transmit
`bearer traffic through doctrine of equivalents,
`was unhelpful and likely to confuse a jury,
`
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`
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`

`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`and, thus, expert's testimony was not admissible
`in patent infringement action, where expert's
`testimony was contrary to law. 35 U.S.C.A. §
`112; Fed. R. Evid. 702(a).
`
`[33]
`
`[34]
`
`Evidence
`Telegraphs and telephones
`Testimony of alleged infringer's expert, that
`patents relating to transmission of telephone
`calls between traditional telephone networks
`and packet data networks did not meet
`written description
`requirement
`to extent
`processing system of the claims was incapable
`of establishing a communication path, was
`misleading
`and
`likely
`to
`confuse
`jury
`in determining whether written description
`requirement was met, and,
`thus, expert's
`testimony was not admissible
`in patent
`infringement action, where expert's testimony
`directly contradicted District Court's claim
`construction. 35 U.S.C.A. § 112; Fed. R. Evid.
`702(a).
`
`Evidence
`Telegraphs and telephones
`Testimony of alleged infringer's expert, that
`patentee engaged in nonstatutory-type double
`patenting, was contrary
`to
`law regarding
`invalidity for lack of written description and
`likely to confuse jury in determining whether call
`control patents for connectionless transmission
`of telephone calls between traditional telephone
`networks and packet data networks met
`written description requirement, and,
`thus,
`expert's testimony was not admissible in patent
`infringement action, where expert's testimony
`was not based upon sufficient facts, in light of
`his lack of investigation into record, patents, and
`their file histories, it was based on assumptions
`about dates of invention and did not present facts
`to support expert's conclusions, and it was not
`product of reliable methods given that, without
`explanation, expert construed claim terms. 35
`U.S.C.A. § 112; Fed. R. Evid. 702(a).
`
`[31]
`
`[32]
`
`Evidence
`Telegraphs and telephones
`expert,
`Testimony of
`alleged
`infringer's
`contradicting District Court's claim construction,
`was unhelpful and likely to confuse jury
`in determining whether written description
`requirement was met, and,
`thus, expert's
`testimony was not admissible
`in action
`alleging infringement of call control patents
`for connectionless transmission of telephone
`calls between traditional telephone networks
`and packet data networks, where expert read
`in limitations contrary to Court's construction,
`each time acknowledging Court's construction
`and then expressing opinion contrary to that
`construction. 35 U.S.C.A. § 112; Fed. R. Evid.
`702(a).
`
`Evidence
`Telegraphs and telephones
`Testimony of alleged infringer's expert, that call
`control patents for connectionless transmission
`of telephone calls between traditional telephone
`networks and packet data networks did not
`meet written description requirement to extent
`Asynchronous Communication System / Packet
`Network was not asynchronous transfer mode
`(ATM) network, was misleading and likely to
`confuse jury in determining whether written
`description requirement was met, and, thus,
`expert's testimony was not admissible in patent
`infringement action, where expert combined
`quotes from specification of two different
`patents, juxtaposing patent which was not limited
`to ATM technologies with text from patent which
`was ostensibly limited to ATM technologies and
`which incorporated by reference specification
`common to call control patents, and was based
`upon claim construction that was contrary to
`District Court's. 35 U.S.C.A. § 112; Fed. R. Evid.
`702(a).
`
`[35]
`
`Patents
`Summary Judgment
`Striking patentee's response to alleged infringer's
`statement of facts, which it submitted in its
`
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`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`reply brief in action alleging infringement of
`patents for transmission of telephone calls
`between traditional telephone networks and
`packet data networks, was not warranted;
`response elucidated parties' dispute on alleged
`infringer's motion for summary judgment of
`invalidity for lack of written description, and in
`doing so, first responded to alleged infringer's
`statement of facts, and then presented its own
`statement of facts related to its cross-motion,
`response did not prejudice or disadvantage
`alleged infringer, and patentee's briefing pages
`did not exceed limit imposed by Local Rules. 35
`U.S.C.A. § 112; U.S.Dist.Ct.Rules D.Del., LR
`7.1.3(a)(4).
`
`Patents
`Summary Judgment
`Striking of patentee's incorporation by reference
`of materials in brief currently before District
`Court on separate summary judgment motion
`was warranted, in action alleging infringement
`of patents for transmission of telephone calls
`between traditional telephone networks and
`packet data networks, where
`incorporating
`those materials by reference would technically
`increase length of patentee's brief beyond that
`allowed by Local Rules. U.S.Dist.Ct.Rules
`D.Del., LR 7.1.3(a)(4).
`
`Patents
`In general;  utility
`US Patent 6,298,064, US Patent 6,343,084, US
`Patent 6,452,932, US Patent 6,463,052, US
`Patent 6,473,429, US Patent 6,633,561, US
`Patent 7,286,561. Valid.
`
`Patents
`In general;  utility
`US Patent 5,991,301, US Patent 6,262,992,
`US Patent 6,330,224, US Patent 6,563,918, US
`Patent 6,697,640. Cited.
`
`[36]
`
`[37]
`
`[38]
`
`Attorneys and Law Firms
`
`*601 Richard K. Herrmann, Esquire, and Mary Matterer,
`Morris James LLP, Wilmington, Delaware. Counsel for
`Plaintiffs. Of Counsel: Jordan T. Bergsten, Esquire, Ryan D.
`Dykal, Esquire, Aaron E Hankel, Esquire, Robert H. Reckers,
`Esquire, Ryan J Schletzbaum, Esquire, and Basil Trent Webb,
`Esquire of Shook, Hardy & Bacon LLP.
`
`David A. Bilson, Esquire, and John C. Phillips, Jr., Phillips,
`Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware.
`Counsel for Defendants. Of Counsel: David S. Bloch,
`Esquire, Michael L. Brody, Esquire, Krishnan Padmanabhan,
`Esquire, Pejman F. Sharifi, Esquire, and James Winn, Esquire
`of Winston & Strawn LLP.
`
`MEMORANDUM OPINION
`
`BATAILLON, Senior District Judge
`
`I. INTRODUCTION
`In this patent case involving Plaintiff Sprint Communications
`Company, L.P. (“Plaintiff” or “Sprint”) against Defendant
`*602 Cox Communications, Inc. (“Defendant” or “Cox”),
`Sprint alleges
`that Cox
`infringes certain of Sprint's
`telecommunications and data networking patents. 1 Among
`these patents are U.S. Patent Nos. 7,286,561 (“the '6,561
`patent”), 6,633,561 (“the '3,561 patent”), 6,463,052 (“the '052
`patent”), and 6,452,932 (“the '932 patent”) (collectively the
`“Call Control Patents”) and U.S. Patent Nos. 6,473,429 (“the
`'429 patent”), 6,343,084 (“the '084 patent”), and 6,298,064
`(“the '064 patent”) (collectively the “Broadband Patents”).
`Sprint asserts approximately 15 claims from the Call Control
`Patents and the Broadband Patents (the “patents-in-suit”)
`against Cox. (D.I. 650 at 2) District Judge Sue L. Robinson
`construed various claim terms of the patents-in-suit in March
`2016 and May 2017. (D.I. 399; D.I. 400, D.I. 541) Upon
`Judge Robinson's retirement from the bench, the case was
`reassigned to the undersigned on June 16, 2017. (D.I. 557)
`A pre-trial conference is scheduled for November 17, 2017,
`with a jury trial set to begin on December 7, 2017. (D.I. 603;
`D.I. 654) The court has jurisdiction pursuant to 28 U.S.C. §§
`1331 and 1338(a).
`
`As part of its defenses to the allegation of patent infringement
`by Sprint, Cox contends that the patents-in-suit are invalid
`for lack of written description under 35 U.S.C. § 112, ¶ 1. 2
`(D.I. 608 at 1) In support, Cox presents the testimony of its
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`expert witnesses Paul S. Min, PhD (“Dr. Min”) and Kevin
`Almeroth, PhD (“Dr. Almeroth”). (See, e.g., D.I. 587, ex. 1
`at ¶ 105) Based upon this testimony, and Cox's admissions,
`Sprint argues that “the claims as construed are supported by
`the specification[,]” (D.I. 587 at 15), and has moved for partial
`summary judgment of no invalidity of the patents-in-suit,
`(D.I. 586). Sprint has also moved to exclude the testimony of
`Drs. Min and Almeroth. (Id.)
`
`Meanwhile, Sprint has presented the validity opinions
`of its expert, Dr. Stephen Wicker (“Dr. Wicker”). (D.I.
`620, exs. 2, 3, 4) Based upon Dr. Wicker's reports, Cox
`contends that “there are no genuine factual disputes” as
`to its central theory that all of “Sprint's patents 3 disclose
`only connection-oriented technology, namely [Asynchronous
`Transfer Mode] ATM, for packet-voice transmissions[ ]” and
`cannot, therefore, read on products and services that employ
`Internet Protocol (IP) technologies. (D.I. 608 at 1 (emphasis
`in original)) As a result, Cox has moved for partial summary
`judgment of invalidity of the patents-in-suit. (Id.)
`
`During briefing on the instant motion, in its reply brief,
`Sprint included an Appendix A, entitled “Sprint's Response
`to Cox's Statement of Facts (CSUF)[,]” which is a nine-page
`response to the statement of facts that Cox presented in its
`answering *603 brief. (D.I. 620, appx. A; D.I. 608 at ¶¶ 1–7)
`Cox moved to strike this material, arguing that it “contain[s]
`additional pages of substantive arguments.” (D.I. 634 at 1)
`
`II. BACKGROUND
`
`A. The Patents
`The patents-in-suit relate to transmission of telephone calls
`between traditional telephone networks and packet data
`networks. All of the patents-in-suit originate from U.S.
`Patent Application No. 08/238,605 (“the '605 application”),
`which was filed on May 5, 1994 and was abandoned by
`applicant. (See, e.g., '052 patent, 1:5–10) The '605 application
`is incorporated by reference into all of the patents-in-suit.
`(Id.) The Call Control Patents are continuations of the '605
`application and share a common specification. (Id.; '932
`patent, 1:5–12; '3,561 patent, 1:5–12; '6,561 patent, 1:6–12)
`The Broadband Patents share a common specification and
`are continuations of U.S. Patent Application No. 08/525,897
`(“the '897 application”), filed on September 8, 1995, which
`is now U.S. Patent No. 5,991,301. ('429 patent, front page,
`item [63] 4 , 1:6–16; '084 patent, front page, item [63] 5 ; '064
`patent, front page, item [63] 6 )
`
`In the written description analysis, the relationship between
`the Call Control and Broadband Patents is important. 7
`Elsewhere in the summary judgment briefing, Cox argues that
`the [Broadband Patents] explicitly disclaim any relationship
`to the [Call Control Patents.]” (D.I. 627 at 14)
`
`The '897 application initially claimed to be a continuation-
`in-part of the '605 application. ('301 patent, front page, item
`[63]; 1:6–10) By definition, a continuation-in-part application
`is “filed during the lifetime of an earlier [ ] application, [and]
`repeat[s] some substantial portion or all of the earlier [ ]
`application and add[s] matter not disclosed in the [ ] earlier
`[ ] application.” § 201.08 MPEP (9th ed., Rev. 07.2015, Nov.
`2015). The '301 patent issued on November 23, 1999. ('301
`patent, front page) In December 2004, applicant requested
`a Certificate of Correction related to “Item [63], Related
`U.S. Application Data,” in which the '301 patent claimed it
`was a “[c]ontinuation-in-part of application No. 08/238,605,
`May 5, 1994, abandoned.” (Id., Certificate of Correction) 8 A
`Certificate of Correction operates as follows:
`
`Whenever a mistake of a clerical
`or typographical nature, or of minor
`character, which was not the fault
`of the Patent and Trademark Office,
`appears in a patent and a showing
`has been made that such mistake
`occurred in good faith, the Director
`may, upon payment of the required
`fee, issue a certificate of correction,
`if the correction does not involve
`such changes in the patent as would
`constitute new matter or would require
`re-examination. Such patent, together
`with the certificate, shall have the same
`*604 effect and operation in law on
`the trial of actions for causes thereafter
`arising as if the same had been
`originally issued in such corrected
`form.
`
`35 U.S.C. § 255. The USPTO has identified “[t]wo separate
`statutory requirements [that] must be met before a certificate
`of correction for an applicant's mistake may issue.” In Re
`Arnott, 19 U.S.P.Q.2d 1049 at *5 (Com'r Pat. & Trademarks
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
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`124 U.S.P.Q.2d 1783
`
`May 22, 1991); see also § 1481 MPEP (9th ed., Rev. 07.2015,
`Nov. 2015). “The first statutory requirement concerns the
`nature, i.e., type, of the mistake for which a correction is
`sought... [, which] must be: (1) of a clerical nature, (2) of a
`typographical nature, or (3) a mistake of minor character.” In
`Re Arnott, 19 U.S.P.Q.2d 1049 at *5. “The second statutory
`requirement concerns the nature of the proposed correction.
`The correction must not involve changes which would: (1)
`constitute new matter or (2) require reexamination.” Id. The
`file history of the '301 patent is not currently before the
`court, and it is unknown what statements applicant made in
`December 2004; however, even if as the corrected front page
`states, the '301 patent is not a continuation-in-part of the '605
`application, 9 that does not change the specification which
`states that “[t]his application is a continuation-in-part of prior
`application Ser. No. 08/238,605, entitled ‘Method, System,
`and Apparatus for Telecommunications Control’, filed May
`5, 1994, currently pending, and incorporated by reference into
`this application.” ('301 patent, 1:6–10) In other words, while
`the status of the '897 application as a continuation-in-part of
`the '605 application may be in doubt, at a minimum, the '897
`application (which forms the basis for the Broadband Patents)
`incorporates by reference the '605 application (which forms
`the basis for the Call Control Patents). Therefore, aspects
`of the Broadband Patents may find support in the common
`specification for the Call Control Patents, 10 but limitations to
`the Broadband Patents do not necessarily result in limitations
`to the Call Control Patents.
`
`1. The Broadband Patents
`
`In 2016, Cox moved for summary judgment of no literal
`infringement of the '084 patent (which is one of the
`Broadband Patents) as well as several other patents no longer
`in suit 11 on the premise that the patents are limited to
`ATM (asynchronous transfer mode) technologies and that
`Cox's accused products and services are used in IP (Internet
`protocol) networks. (D.I. 357 at 25). At the time, Cox
`explained in its reply brief that “[t]o be clear, we agree that if
`the claims are read as limited to ATM networks, they will not
`run afoul of the written description requirement.” (D.I. 353
`at 11 (emphasis in original)) Sprint did *605 not argue to
`the contrary and suggested that, under a construction limited
`to ATM, it would assert infringement under the Doctrine
`of Equivalents. (D.I. 329 at 22) Judge Robinson construed,
`inter alia, the “interworking unit” limitation of independent
`claim 1 of the '084 patent to be an “ATM interworking
`
`multiplexer[,]” (D.I. 400 at ¶ 9), and granted summary
`judgment of no literal infringement, (D.I. 399 at ¶¶ 6–8).
`
`As discussed above, the other two Broadband Patents (the
`'429 and '064 patents) share a common specification with
`the '084 patent, and the parties have agreed to apply the
`ATM technology limitation to the '429 and '064 patents. (See,
`e.g., D.I. 490 at 2, applying definitions of “interworking
`unit” as “ATM interworking multiplexer” and “asynchronous
`communication” as “ATM communication” to limitations in
`the '429 and '064 patents) As a result, Sprint does not assert
`that Cox literally infringes any of the Broadband Patents. (See
`D.I. 593, ex. 22 at 10:8–13, 11:15–23 (deposition of Sprint's
`expert witness on infringement))
`
`2. The Call Control Patents
`
`When the court granted summary judgment of no literal
`infringement of the '084 patent, the Call Control Patents
`had been ruled invalid as indefinite by Judge Robinson and
`were on appeal to the United States Court of Appeals for
`the Federal Circuit. (D.I. 399 at 1 n.2) As a result, in 2016,
`Cox did not argue that the Call Control Patents were invalid
`for lack of written description. (D.I. 357 at 19–24) Cox's
`Drs. Min and Almeroth expressed opinions on the written
`description requirement as to the Call Control Patents in June
`2017. (D.I. 587, exs. 1, 5) Sprint's Dr. Wicker presented
`rebuttal arguments, (D.I. 630, ex. 3), and all three experts were
`deposed about their opinions, (D.I. 587, exs. 4, 6; D.I. 608,
`ex. 6).
`
`III. STANDARD OF REVIEW
`
`A. Summary Judgment
`“The court shall grant summary judgment if the movant
`shows that there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of
`law.” Fed. R. Civ. P. 56(a). The moving party bears the
`burden of demonstrating the absence of a genuine issue
`of material fact. Matsushita Elec. Indus. Co. v. Zenith
`Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348,
`89 L.Ed.2d 538 (1986). A party asserting that a fact
`cannot be—or, alternatively, is—genuinely disputed must be
`supported either by citing to “particular parts of materials in
`the record, including depositions, documents, electronically
`stored information, affidavits or declarations, stipulations
`(including those made for the purposes of the motions only),
`admissions, interrogatory answers, or other materials,” or by
`
` © 2019 Thomson Reuters. No claim to original U.S. Government Works.
`
`8
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`

`

`Sprint Communications Company L.P. v. Cox..., 302 F.Supp.3d 597...
`124 U.S.P.Q.2d 1783
`
`“showing that the materials cited do not establish the absence
`or presence of a genuine dispute, or that an adverse party
`cannot produce admissible evidence to support the fact.”
`Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has
`carried its burden, the nonmovant must then “come forward
`with specific facts showing that there is a genuine issue for
`trial.” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (internal
`quotation marks omitted). The court will “draw all reasonable
`inferences in favor of the nonmoving party, and it may
`not make credibility determinations or weigh the evidence.”
`Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
`150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).
`
`To defeat a motion for summary judgment, the non-moving
`party must “do more than simply show that there is some
`metaphysical doubt as to the material facts.” Matsushita,
`475 U.S. at 586–87, 106 S.Ct. 1348; see also Podobnik
`v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005)
`*606 (stating that the party opposing summary judgment
`“must present more than just bare assertions, conclusory
`allegations or suspicions to show the existence of a genuine
`issue”) (internal quotation marks omitted). Although the
`“mere existence of some alleged factual dispute between the
`parties will not defeat an otherwise properly supported motion
`for summary judgment,” a factual dispute is genuine where
`“the evidence is such that a reasonable jury could return a
`verdict for the nonmoving party.” Anderson v. Liberty Lobby,
`Inc., 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d
`202 (1986). “If the evidence is merely colorable, or is not
`significantly probative, summary judgment may be granted.”
`Id. at 249–50, 106 S.Ct. 2505 (internal citations omitted);
`see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106
`S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary
`judgment is mandated “against a party who fails to make a
`showing sufficient to establish the existence of an element
`essential to that party's case, and on which that party will bear
`the burden of proof at trial”).
`
`B. Written Description
`[1]
` [2]
` [3]
` [4] The Patent Act provides in relevant part:
`
`The specification shall contain a
`written description of the invention,
`and of the manner and process of
`making and using it, in such full, clear,
`concise, and exact terms as to enable
`any person skilled in the art to which
`
`it pertains, or with which it is most
`nearly connected, to make and use the
`same ....
`
`35 U.S.C. § 112, ¶ 1. The written description must “clearly
`allow persons of ordinary skill in the art to recognize that
`[the inventor] invented what is claimed.” Ariad Pharm., Inc.
`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc) (citation and internal quotation marks omitted).
`“In other words, the test for sufficiency is whether the
`disclosure of the application relied upon reasonably conveys
`to those skilled in the art that the inventor had possession
`of the claimed subject matter as of the filing date.” Id.
`(citations omitted). “The lev