Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
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`CASE NO. 6:20-cv-00267-ADA
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`JURY TRIAL DEMANDED
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`CASE NO. 6:20-cv-00269-ADA
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`JURY TRIAL DEMANDED
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`CASE NO. 6:20-cv-00272-ADA
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`JURY TRIAL DEMANDED
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`§
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`META PLATFORMS, INC. and
`WHATSAPP LLC,
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`Defendants.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC., et al.,
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`Defendants.
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`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 2 of 24
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1
`THE ASSERTED PATENT .............................................................................................. 2
`ARGUMENT ..................................................................................................................... 3
`A.
`“network element[s]” (claims 1, 4, 8, 14, 19-21, 23, 24, 27, 32) ........................... 3
`B.
`“identifier[s]” (claims 1, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 27, 32, 42, 44) ............ 7
`C.
`“first participant profile” (claims 1, 3, 19-21, 42, 44) ........................................... 8
`D.
`“routing message” (claims 1, 8, 14, 19, 21, 26, 27, 32) ....................................... 11
`E.
`“private network” (claim 8) ................................................................................. 14
`F.
`“gateway” (claims 14, 26) .................................................................................... 15
`CONCLUSION ................................................................................................................ 18
`
`i
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`I.
`II.
`III.
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`IV.
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 3 of 24
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`
`
`Page(s)
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258 (Fed. Cir. 2001)............................................................................................7, 12
`
`BookIT Oy v. Bank of Am. Corp.,
`817 F. App’x 990 (Fed. Cir. 2020) ..........................................................................................12
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004)............................................................................................12, 13
`
`Irdeto Access, Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004)..................................................................................................7
`
`Kumar v. Ovonic Battery Co.,
`351 F.3d 1364 (Fed. Cir. 2003)................................................................................................16
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`347 F.3d 1367 (Fed. Cir. 2003)................................................................................................11
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...................................................................................................................3
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................................18
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)..................................................................................................8
`
`Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374 (Fed. Cir. 2016)................................................................................................12
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`ii
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 4 of 24
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`I.
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`INTRODUCTION
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`Asserted U.S. Patent No. 10,218,606 (Ex. 11) (“’606 patent”) describes a call routing
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`process that builds upon traditional public switched telephone network (PSTN) infrastructure. It
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`purports to make Voice over Internet Protocol (VoIP) calling compatible with traditional PSTNs
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`by describing a method for producing call routing messages. The disputed claim terms focus on
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`aspects of this call routing process, with the exception of the term “network element,” which has
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`no commonly accepted meaning, is not used in the specification, and therefore renders the asserted
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`claims indefinite.
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`Defendants’ proposed constructions of the other disputed terms are consistent with the ’606
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`patent’s description of producing call routing messages to make VoIP calling compatible with
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`traditional PSTNs. By contrast, Plaintiff’s proposed constructions reflect a modern view of
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`communication routing utilized by purely IP-based services that are not compatible with traditional
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`PSTNs. Plaintiff’s constructions are untethered to the specification.
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`The distinction between Plaintiff’s and Defendants’ proposals are exemplified by the
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`dispute over the term “first participant profile,” where Defendants’ construction relates to a “call
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`participant in a PSTN system,” while Plaintiff’s proposed construction relates to a “participant[]
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`of a communication system” generally. The ’606 patent is unequivocal that the first participant
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`(caller) profile contains “calling attributes of respective subscribers” such as area codes and
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`telephone dialing prefixes (Ex. 1 at 18:51-52, 19:36-48) and that for each user there is “an E.164
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`[traditional telephone] number associated with the user on the PSTN network.” Id. at 19:56-58.
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`The other disputed terms involve related issues, as Plaintiff seeks to read the claims of its fifth-
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`generation continuation patent far more broadly than the original disclosure allows.
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`1 Unless otherwise noted, all exhibit citations refer to exhibits to the declaration of Robert W.
`Unikel, filed concurrently herewith.
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`
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`1
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 5 of 24
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`II.
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`THE ASSERTED PATENT
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`The asserted claims describe the process of routing a call originating from a caller in a
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`private network to a call recipient (“callee”) who may be in the private network or in a public
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`network outside the private network. Ex. 1 at Abstract. The components of the system are
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`generally shown in Figure 1:
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`Id. at Figure 1, 13:19-21. Call routing is performed by a routing controller (item 16) in a “super
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`node” (item 11). Id. at 14:50-57. The super node receives call routing requests from subscribing
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`devices and generates routing messages that enable the call to be routed to either a telephone device
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`within the private network or through a gateway (item 20) to a telephone in a public network. Id.
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`
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`at 2:5-11.
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`For example, if a caller in Vancouver (item 12) wants to call a private network subscriber
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`in Calgary (item 15), the calling device must send a routing request to the Vancouver super node
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`(item 11). Id. at 14:50-57. The routing request includes an identifier of the callee that the caller
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`wishes to communicate with. Id. at 1:67-2:2, 14:64-15:9. Upon receipt of the routing request, the
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`2
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 6 of 24
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`routing controller in the super node obtains a dialing profile for the caller from a database (item
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`18). It attempts to determine if the callee identifier identifies a device within the private network
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`or outside. Id. at 2:2-11. To do this, the controller looks up the subscriber’s profile to determine
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`the pre-defined format for a national or international telephone number in the caller’s region. The
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`controller then attempts to match the callee identifier to one of these telephone number formats.
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`Id. at 4:29-46, 19:36-48, 20:33-38. If there is no match with a telephone number format, the
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`routing controller determines if the callee identifier has the pre-defined format of a private network
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`subscriber username. Id. at 22:3-39. After classifying the call based on matching the callee
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`identifier to a pre-defined format, the controller generates an appropriate routing message. If the
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`callee identifier is a telephone number, the routing message directs the routing controller to connect
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`the call to the external telephone network through a gateway device (item 20) that bridges the
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`private and public networks. Id. at 1:67-2:11, 14:64-15:8. If the callee identifier is a private
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`network subscriber username, the routing message indicates how a path can be formed between
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`the caller and callee in the private network. Id. at 21:11-29, 23:16-22. The routing message is
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`then used to initiate the call. Id. at 14:57-63.
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`III. ARGUMENT
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`A.
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`“network element[s]” (claims 1, 4, 8, 14, 19-21, 23, 24, 27, 32)
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`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
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`The term “network element” is indefinite because a POSITA would not understand the
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`Defendants’ Proposed Construction
`Indefinite
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`meaning of the term with reasonable certainty. See Nautilus, Inc. v. Biosig Instruments, Inc., 572
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`U.S. 898, 901 (2014) (“[A] patent is invalid for indefiniteness if its claims, read in light of the
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`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`3
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 7 of 24
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`certainty, those skilled in the art about the scope of the invention.”). In particular, as Dr. Vijay
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`Madisetti explains, a POSITA would not understand whether the claimed “network element” is
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`limited to a single device or could comprise multiple devices, or if “network element” refers to a
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`logical component and does not encompass any physical devices at all. See Madisetti Decl. ¶ 34.
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`The ’606 patent claims repeatedly refer to a “network element,” but they do not provide
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`guidance regarding its meaning. If anything, they exacerbate the confusion. For example, claim
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`1 requires “determin[ing] whether the second network element is the same as the first network
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`element.” Ex. 1 at 37:52-55. But “a POSITA would not be reasonably certain as to whether
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`sameness should be determined by matching the network address for the group of devices [if
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`‘network element’ could encompass a group of physical devices] or by matching the physical
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`devices, or by matching both physical devices and their network addresses.”2 Madisetti Decl. ¶ 48.
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`As a further example, the patent provides no clarity regarding the difference between a “network
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`element” and the “communications devices” recited in claim 4; is a “communication device” such
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`as a mobile phone that interacts with the network itself a “network element,” and if not, what is
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`the dividing line? See Ex. 1 at cl. 4; Madisetti Decl. ¶ 46. Similarly, claim 32 recites “nodes” that
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`are comprised of “network elements” (see Ex. 1 at cl. 32); however, the specification does not
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`teach a POSITA how to determine when a “network element” transitions to being a “node” in the
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`network. See Madisetti Decl. ¶ 47. “This confusion applies whether ‘network element’ is physical
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`in nature and comprised of multiple devices, or if a ‘network element’ is logical in nature—where
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`the box is drawn would seem to be arbitrary in both cases.” Id. In short, therefore, the claims of
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`2 Claim 1’s introduction of “network element” does not resolve this issue, as it states “the first and
`second participant devices being associated with first and second network elements.” “Associated
`with” fails to define the relationship between the “participant device” and “network element” in a
`way that clarifies whether a “network element” is a logical entity, single physical device, or
`multiple devices.
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`4
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 8 of 24
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`the ’606 patent do not clarify for a POSITA whether a “network element” is one device, multiple
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`devices, or a logical component that is not tied to any physical device.
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`The specification does not resolve this ambiguity, as it never even uses the term “network
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`element.” And, regardless of what words are used, there is nothing in the specification that
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`performs the functions attributed to the “network element” by the claims. For example, the claims
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`require a determination of whether two network elements are “the same,” but the specification
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`discloses no comparison of the identity of network components, whether singular or plural,
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`physical or logical. And the prosecution history similarly fails to substantively define or explain
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`the meaning of “network element.”3 Thus, the intrinsic evidence fails to resolve the issue.
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`With respect to the extrinsic evidence, some authoritative technical references equate a
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`“network element” with a particular physical device. See, e.g., Ex. 13 at DEFS-VOIP-2020-CC-
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`00000050 (Federal Standard 1037C: “network element (NE)” is “a piece of telecommunications
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`equipment that provides support or services to the user.” (emphasis added)); Ex. 2 at DEFS-VOIP-
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`2020-CC-00000112; Ex. 3 at DEFS-VOIP-2020-CC-00000059; Ex. 4 at DEFS-VOIP-2020-CC-
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`00000102; Madisetti Decl. ¶ 40. Other references contemplate that a “network element” could
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`comprise multiple devices. See, e.g., Ex. 5 at DEFS-VOIP-2020-CC-00000115; Madisetti Decl.
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`¶ 41. And other technical references treat a “network element” not as a physical device or devices
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`but rather something that is purely logical in nature, such as a data structure. See, e.g., Ex. 6 at
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`3 The only reference to a “network element” in the prosecution history (other than in the claims)
`that is publicly available online from the USPTO (as VoIP-Pal has not produced the complete
`certified file wrapper) is in the context of prior art reference WO2004/008786 (“Tuohino”). See
`Ex. 10 (Oct. 17, 2018 IDS by applicant disclosing Tuohino to Examiner) at VOP_RBR0000185.
`Tuohino provides examples of network elements (Ex. 11 (Tuohino) at VOP_RBR0000523
`(“network elements (I-CSCF 62, a plurality of MGCFs 64, etc)”)), but those examples are not
`discussed at all in the ’606 patent, leaving it unclear whether those examples were intended to be
`indicative of how “network element” should be understood in the context of the ’606 patent. See
`Madisetti Decl. ¶ 37.
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`5
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 9 of 24
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`DEFS-VOIP-2020-CC-00000139-40; Ex. 7 at VOP_RBR0002426; Ex. 8 at DEFS-VOIP-2020-
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`CC-00000148; Ex. 9 at DEFS-VOIP-2020-CC-00000082; Madisetti Decl. ¶¶ 42-43. The
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`interpretation of “network element” is, therefore, context dependent, but the ’606 patent provides
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`no context to disambiguate the term because, again, the term is never used in the specification.
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`See Madisetti Decl. ¶¶ 39-44.
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`VoIP-Pal currently proposes an unspecified construction of “plain and ordinary meaning,”
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`even though in a prior lawsuit it proposed a construction of “a network device associated with a
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`network address.” See Ex. 12 (Joint Disputed Claim Construction Chart, Case No. 5:20-cv-02995-
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`LHK, Dkt. No. 93-2 (N.D. Cal. July 27, 2021)) at DEFS-VOIP-2020-CC-00000026.4 VoIP-Pal
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`has not indicated whether its prior construction was the purported “plain and ordinary” meaning
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`of the term, and if not, how its new “plain and ordinary meaning” proposal in this case differs (and
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`why its proposed construction has changed). The change in VoIP-Pal’s proposal suggests that
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`even VoIP-Pal does not understand the scope of “network element” with reasonable certainty.
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`In sum, the term “network element” is indefinite because the ’606 patent fails to provide a
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`POSITA with reasonable certainty regarding what is within the scope of the claims, particularly
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`whether “network element” is physical or logical in nature, and if physical, then whether it is
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`limited to one device or can comprise multiple devices. See Madisetti Decl. ¶ 49.
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`4 The parties to that prior case stipulated to dismissal without prejudice in advance of the deadline
`for VoIP-Pal’s responsive claim construction brief. AT&T Corp., et al. v. VoIP-Pal.com, Inc.,
`Case No. 5:20-cv-02995-LHK, Dkt. No. 107 (N.D. Cal. Oct. 13, 2021).
`6
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 10 of 24
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`B.
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`“identifier[s]” (claims 1, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 27, 32, 42, 44)
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`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
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`Defendants’ proposed construction of “identifier” reflects the patent’s specific usage of the
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`Defendants’ Proposed Construction
`“value with pre-defined format”
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`term. By contrast, VoIP-Pal proposes an unspecified “plain and ordinary meaning” of the term,
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`without clarifying what the “plain and ordinary meaning” of the term is, nor providing any meaning
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`that would conform with the manner in which the patent requires the system to use identifiers.
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`When a term “lacks an accepted meaning in the art . . . we construe [it] only as broadly as provided
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`for by the patent itself.” Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
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`Cir. 2004); see also Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258,
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`1269–70 (Fed. Cir. 2001) (relying on specification usage when “the ordinary meaning of the non-
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`technical term . . . is sufficiently broad and amorphous that the scope of the claim language can be
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`reconciled only with recourse to the written description”).
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`The intrinsic record supports Defendants’ construction of “identifier[s]” as a “value with a
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`pre-defined format” because both the claimed input (“second participant identifier”) and the
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`produced output (“new second participant identifier”) must correspond to a pre-defined format.
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`The specification discloses only one algorithm to produce the claimed new second participant
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`“identifier,” and that algorithm is based on the participant identifier’s compliance with a “pre-
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`defined username format.” Ex. 1 at 2:61-64; see also id., 20:38-44 (requiring that participant
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`“identifier” complies with “a predefined digit format.”).
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`Moreover, an “identifier” must be a value with a pre-defined format because the system
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`relies on analyzing the identifier’s format to “establish call classification criteria for classifying
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`the call as a public network call or a private network call.” Id. at 23:38-40. If a putative “identifier”
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`7
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 11 of 24
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`does not follow the pre-defined format, it does not act as an identifier and the system cannot
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`classify the call. Id. at 23:14-16; FIG. 8 (block 404 yielding an “Error” if the callee identifier does
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`not satisfy any of the pre-defined formatting analyzed in blocks 257, 380, 390, 396, or 402).
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`Indeed, every decision point in the only algorithm disclosed for producing the claimed identifiers
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`requires that the identifier is in a pre-defined format. See id., 22:7-13, 34-37, 52-59; 23:38-40,
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`FIG. 8B (blocks 257, 380, 390, 396, and 402). And if the produced new identifier is not in one of
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`the accepted predefined formats, the algorithm ends without initiating the call. Id. at 20:50-53.
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`The specification thus dictates that an “identifier” be a value with a pre-defined format because
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`the system cannot operate without it. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
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`242 F.3d 1337, 1344 (Fed. Cir. 2001) (Written description may “dictat[e] the manner in which the
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`claims are to be construed, even if the guidance is not provided in explicit definitional format.”).
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`To the extent VoIP-Pal’s undisclosed “plain and ordinary meaning” construction does not
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`require that the identifier be a value with a pre-defined format, there is no disclosure in the
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`specification as to how the invention could operate using such an unexplained, unformatted
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`identifier.
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`C.
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`“first participant profile” (claims 1, 3, 19-21, 42, 44)
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`Plaintiff’s Proposed Construction
`“stored information specific to a subscriber
`(first participant) of a communication system”
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`VoIP-Pal agrees that “first participant profile” does not have a plain and ordinary meaning
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`Defendants’ Proposed Construction
`“information relating to a call participant in a
`PSTN system”
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`and instead must be construed. The specification teaches that the “profile” associated with the
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`first participant and accessed in the asserted claims relates to a “call participant” or “subscriber”
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`in a PSTN system. See, e.g., Ex. 1 at FIG. 9, 18:40-52. VoIP-Pal’s proposed construction
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`comports with Defendants’ proposed construction in that the “profile” consists of information
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`8
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 12 of 24
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`about a “first participant” (i.e., a “subscriber” or “call participant”). However, VoIP-Pal’s
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`proposed construction would allow the profile to be related to any “communication system”
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`without a requirement that it at least be related to a PSTN system. This construction must be
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`rejected as contrary to the specification because the described profiles all use “information relating
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`to a call participant in a PSTN system” to enable public network communication. Id. at 23:55-59.
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`The specification does not use the phrase “participant profile” (whether a “first” such
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`profile or any other numbered “participant profile”), but it does describe a caller “dialing profile”
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`that, like the first participant profile, “identif[ies] calling attributes of the caller identified by the
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`caller identifier.” Id. at 18:49-51, 37:43-45. It further explains that “dialing profiles represent
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`calling attributes of respective subscribers.” Id. at 18:51-52. Just as the claims require the calling
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`attributes from the profile to be used in generating a “new second participant identifier” used in
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`call setup, the specification describes the use of attributes from the caller dialing profile to generate
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`a “re-formatted callee identifier.” Id. at 4:29-67, 37:46-51. As for the specific “calling attributes”
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`that appear in a “dialing profile,” the specification provides that those attributes include
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`information related to a PSTN system, such as “a national dialing digits (NDD) field 262,” “an
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`international dialing digits (IDD) field 264, a country code field 266, [and] a local area codes field
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`267.” Id. at 18:42-45. Those attributes appear in FIG. 9:
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`9
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 13 of 24
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`Id. at FIG. 9 (emphasis added). The specification describes FIG. 9 as “an exemplary data structure
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`for a dialing profile.” Id. at 18:18-41. While FIG. 9 may only be exemplary of the exact
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`information included in a dialing profile, the inclusion of information specific to a PSTN system
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`is not presented as exemplary. Instead, as noted above, the specification requires that a “dialing
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`profile” include “calling attributes,” which are presented as information specific to a PSTN system.
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`To be clear, a dialing profile can contain other information, including information related
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`to other communication systems. The exemplary data structure for a dialing profile in FIG. 9,
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`separate from the “calling attributes” noted above, also includes “a user name field 258” and “a
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`domain field 260.” Id. at 18:41-42. The three figures following FIG. 9 (i.e., FIGs. 10-12) include
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`exemplary calling profiles with the data structure from FIG. 9. The “domain field 260” in each of
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`those figures includes a domain name for use in an Internet Protocol (“IP”) communication system.
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`Id. at 18:59-3. Thus, consistent with the specification, the information in a dialing profile need
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`not be confined to a PSTN system. It can include information related to other communication
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`systems, such as an IP system.
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`However, to be a dialing profile, consistent with the specification, the stored information
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`must at least include information related to a call participant in a PSTN system. Following the
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`structure of FIG. 9, FIGs. 10-12 each include calling attributes specific to a PSTN system. The
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`“national dialed digit field 262 . . . includes a number specified by the International
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`Telecommunications Union (ITU) Telecommunications Standardization Sector (ITU-T) E.164
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`Recommendation which assigns national dialing digits to countries.” Id. at 19:4-9. Similarly, the
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`“international dialing digit field 264 includes a code also assigned according to the ITU-T
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`according to the country or location of the user.” Id. at 19:10-12. The “country code field 266 . . .
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`includes a number assigned according to the ITU-T to represent the country in which the user is
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`located.” Id. at 19:13-15. The “local area codes field 267 includes a list of area codes that have
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`10
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 14 of 24
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`been assigned by the ITU-T to the geographic area in which the subscriber is located.” Id. at
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`19:16-18. All of these fields relate to the ITU-T E.164 standard used in PSTN systems.
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`The specification requires these PSTN system “calling attributes” to be included in a
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`“dialing profile” to be consistent with the alleged invention. Id. at 18:49-52. Defendants’
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`construction of “first participant profile” incorporates this requirement and should be adopted. To
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`the extent VoIP-Pal’s construction does not incorporate PSTN system “calling attributes” found
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`in the described “dialing profile,” there is no disclosure in the specification as to what constitutes
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`a “first participant profile.”
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`D.
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`“routing message” (claims 1, 8, 14, 19, 21, 26, 27, 32)
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`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“a message that includes a callee user name
`field, a route field, and a time to live field”
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`The ’606 patent itself provides a definition of the term “routing message” that includes the
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`three required components identified in Defendants’ proposed construction: a callee username
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`field, a route field, and a time to live field. Defendants’ proposed construction captures the scope
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`of the purported invention as presented in the specification, clarifying the term’s scope, unlike
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`Plaintiff’s unexplained “plain and ordinary meaning” proposal. See Merck & Co. v. Teva Pharms.
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`USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (construction must be consistent with
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`specification).
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`The ’606 patent states that Figure 15, which identifies six different parts of a “Routing
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`Message Format,” represents a “generic routing message.” Ex. 1 at 21:47-51 (emphasis added).
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`The choice of the word “generic” to characterize the routing message format illustrated in Figure
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`15 reflects the fact that this format is not specific to a particular embodiment; rather, Figure 15
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`identifies the components of the “routing message” that are used in every implementation of the
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 15 of 24
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`invention. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements
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`that describe the invention as a whole, rather than statements that describe only preferred
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`embodiments, are more likely to support a limiting definition of a claim term.”); BookIT Oy v.
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`Bank of Am. Corp., 817 F. App’x 990, 994 (Fed. Cir. 2020) (characterization of claimed element
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`without qualifications such as “preferred” or “optional” treated as definitional). Figure 15, and the
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`accompanying text, identify three of the parts of the message as “optional,” indicating, by
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`necessary implication, that the other parts are required. Ex. 1 at 21:51-60. These three non-
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`optional (i.e. required) components are the elements identified in Defendants’ proposed
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`construction: a callee user name field, a route field, and a time to live field.
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`The necessity of the three required message components identified in Defendants’
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`construction is further evidenced by the fact that they are included in all of the routing message
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`examples given in the patent. These example routing messages, illustrated in Figures 16 and 25,
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`include different sets of optional message components, but always include the three non-optional
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`components from Defendants’ construction. Id. at 21:61-65, 25:48-53. The specification’s
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`consistent use of routing messages that conform to the “generic” template of Figure 15 is strong
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`evidence for Defendants’ definition. See Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1382
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`(Fed. Cir. 2016) (“Consistent use of a term in a particular way in the specification can inform the
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`proper construction of that term.”); Bell Atl. Network Svcs., Inc., 262 F.3d at 1271 (“[W]hen a
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 16 of 24
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`patentee uses a claim term throughout the entire patent specification, in a manner consistent with
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`only a single meaning, he has defined that term ‘by implication.’” (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (1996))).
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`Defendants’ construction is further reinforced by the patent’s description of the routing
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`message in the “Summary of the Invention” portion of the patent. It states:
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`The apparatus further includes a routing message buffer and provisions for loading
`the routing message buffer with the reformatted callee identifier and an
`identification of specific routes associated respective ones of the supplier records
`associated with the route record and loading the routing message buffer with a time
`value and a timeout value.
`The apparatus further includes provisions for communicating a routing message
`including the contents of the routing message buffer to a call controller.
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`Ex. 1 at 6:1-11 (emphasis added). This language refers to each of the three essential components
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`of the routing message, “the reformatted callee identifier” (i.e., a callee username field), the
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`“identification of specific routes” (i.e., a route field), and the “timeout value” (i.e., a time to live
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`field). The word “apparatus” in this passage is a reference back to the “call routing apparatus”
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`first introduced at column 3, where it is identified as “another aspect of the invention.” Id. at
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`3:65-66. Identification of this discussion in the “Summary of the Invention,” without any
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`indication that it is limited to a specific embodiment, reinforces the conclusion that the three non-
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`optional message components are essential parts of the patent’s routing message. C.R. Bard, 388
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`F.3d at 864 (appearance of statement in the “Summary of the Invention” is indicative of its general
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`applicability to the invention and the appropriateness of treating it as definitional).
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`Case 6:20-cv-00272-ADA Document 65 Filed 03/14/22 Page 17 of 24
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`E.
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`“private network” (claim 8)
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`Plaintiff’s Proposed Construction
`“a network for communication that is
`privately controlled”
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`The term “private network” is used only in dependent claim 8. The specification of the
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`Defendants’ Proposed Construction
`Plain and ordinary meaning5
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`’606 patent does not define “private network.” The specification uses the term alone (Ex. 1 at 2:7,
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`61; 3:6; 4:10, 21; 21:26; 23:22, 47) and in context: “private network associated with a callee” (id.
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`at Abstract, 15:4-5, 21:33-34); “private network call” (id. at Abstract; 2:5, 8, 64; 3:2; 4:11; 5:8, 10,
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`11, 19; 15:3, 6; 21:2; 23:19, 21; 23:40, 45); “private network node” (id. at 3:21; 5:37); “private
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`network routing message” (id. at 5:22, 26, 34, 40, 46-47); and “private network routing provisions”
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`(id. at 5:30). The specification uses the term “private network” in contrast to a public network:
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`“public Internet or a private network of a large organization” (id. at 1:30-31); “a private network
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`call or a public network call” (id. at 4:6). Figure 8B refers to a “private system” rather than a
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`“private network.” Id. at 21:2-3; 23:17-19. The specification consistently uses the term “private
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`network” in the context of its plain and ordinary meaning, that is, a network that is not public.
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`VoIP-Pal’s construction unnecessarily introduces confusion and ambiguity to the
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`otherwise plain and ordinary meaning of the term because it refers to “control” of the n