Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 1 of 24
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`META PLATFORMS, INC., and
`WHATSAPP, INC.
`
`Defendants.
`
`
`VOIP-PAL.COM, INC.
`
`
`Plaintiff,
`
`
`
`v.
`
`
`GOOGLE LLC,
`
`
`Defendant.
`
`
`
`VOIP-PAL.COM, INC.
`Plaintiff,
`
`
`
`
`CIVIL ACTION NO. 6:20-cv-267-ADA
`
`
`
`CIVIL ACTION NO. 6:20-cv-269-ADA
`
`
`
`CIVIL ACTION NO. 6:20-cv-272-ADA
`
`v.
`AMAZON.COM, INC.,
`AMAZON.COM SERVICES LLC, and
`AMAZON WEB SERVICES, INC.,
`Defendants.
`
`
`
`
`PLAINTIFF’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`
`
`
`

`

`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 2 of 24
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES .......................................................................................................... ii
`
`TABLE OF ABBREVIATIONS ................................................................................................... iii
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ...............................................................................................................1
`
`THE ’606 PATENT .............................................................................................................1
`
`A.
`
`B.
`
`The Pioneering Work of Digifonica ....................................................................... 1
`
`The ’606 Patent ....................................................................................................... 2
`
`LEGAL STANDARDS .......................................................................................................4
`
`ARGUMENT .......................................................................................................................6
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“network element[s]” (claims 1, 4, 8, 14, 19-21, 23, 24, 27, 32) ............................ 6
`
`“identifier[s]” (claims 1, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 27, 32, 42, 44) ........... 10
`
`“first participant profile” (claims 1, 3, 19-21, 42, 44) .......................................... 11
`
`“routing message” (claims 1, 8, 14, 19, 21, 26, 27, 32) ........................................ 13
`
`“private network” (claim 8) .................................................................................. 15
`
`“gateway” (claims 14, 26) ..................................................................................... 17
`
`V.
`
`CONCLUSION ..................................................................................................................19
`
`
`
`
`
`
`i
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`

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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 3 of 24
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) ........................................................ 10
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ........................................ 5
`Kara Tech Inc. v. Stamps.com Inc., 582 F.3d 1341 (Fed. Cir. 2009) ........................................... 10
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004)........................................... 5
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ...................................................... 4
`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) ......................................... 5
`MBO Laboratories, Inc. v. Benton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) ................. 6
`Modine Mfg Co. v. US. Int 'l Trade Comm 'n, 75 F.3d 1545 (Fed. Cir. 1996) ............................... 6
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) .................................................. 6
`Osram GmbHv. Int 'l Trade Comm'n, 505 F.3d 1351 (Fed. Cir. 2007) .......................................... 6
`Panduit Corp. v. Dennison Mfg. Co., 810 F.2d. 1561 (Fed. Cir. 1987) ......................................... 6
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...................................................... 4, 5, 12
`Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243 (Fed. Cir. 1998) ........................... 6
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) .................................................. 4, 5
`Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360 (Fed.Cir. 2000) ........................ 6
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ........................................... 4
`
`Statutes
`35 U.S.C. § 282 ............................................................................................................................... 6
`35 U.S.C. § 282(b) .......................................................................................................................... 6
`
`
`
`
`
`ii
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`

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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 4 of 24
`
`TABLE OF ABBREVIATIONS
`
`
`ABBREVIATION
`
`TERM
`
`VoIP-Pal
`
`Facebook
`
`WhatsApp
`
`Google
`
`Amazon
`
`
`Defendants
`
`The ’606 patent or the patent-in-suit
`
`The ’234 patent
`
`The ’721 patent
`
`The Mobile Gateway patents
`
`RBR
`
`Mangione-Smith Decl.
`
`POSITA
`
`2020 NDCAL actions
`
`
`Plaintiff VoIP-Pal.com, Inc.
`
`Facebook, Inc.
`
`WhatsApp, Inc.
`
`Google LLC
`
`Amazon.com, Inc., Amazon.com Services,
`LLC, and Amazon Web Services, Inc.
`
`Facebook, WhatsApp, Google, and Amazon
`
`U.S. Patent No. 10,218,606
`
`U.S. Patent No. 8,630,234
`
`U.S. Patent No. 10,880,721
`
`The ’234 and ’721 patents
`
`Routing, Billing, Rating
`
`Declaration of William Henry Mangione-
`Smith
`
`Person of ordinary skill in the art
`
`Twitter, Inc. v. VoIP-Pal.com, Inc., Case No.
`5:20-cv-02397-LHK (N.D. Cal.); Apple, Inc.
`v. VoIP-Pal.com, Inc., Case No. 5:20-cv-
`02460-LHK (N.D. Cal.); AT&T Corp., et al.
`v. VoIP-Pal.com., Inc., Case No. 5:20-cv-
`02995-LHK (N.D. Cal.); and Cellco
`Partnership d/b/a Verizon Wireless v. VoIP-
`Pal.com., Inc., Case No. 5:20-cv-03092-LHK
`(N.D. Cal.)
`
`
`
`
`iii
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`

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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 5 of 24
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`I.
`
`INTRODUCTION
`
`Rather than cease their unlawful use of VoIP-Pal’s intellectual property, Defendants
`
`attempt to misuse the claim construction process to invalidate the patent-in-suit and escape patent
`
`infringement liability. Most if not all of Defendants’ proposed constructions import improper and
`
`unnecessary limitations into the disputed claim terms. Their self-serving constructions seeks to
`
`limit the asserted claims to the preferred embodiment disclosed in the specification and in many
`
`instances violate basic claim construction principles. In addition, Defendants fail to establish that
`
`the term “network element” is indefinite by clear and convincing evidence. Defendants further
`
`fail to appreciate that for one term, “private network,” the specification uses the term in an
`
`unconventional manner. The motive behind Defendants’ proposed constructions is clear—when
`
`properly construed, the asserted claims are valid over the prior art and Defendants’ accused
`
`products literally infringe the patent-in-suit. VoIP-Pal’s proposed constructions of the disputed
`
`claim terms, on the other hand, are consistent with the plain claim language and the intrinsic record.
`
`Accordingly, VoIP-Pal respectfully requests that the Court enter an order adopting its proposed
`
`constructions and reject Defendants’ proposed constructions.
`
`II.
`
`THE ’606 PATENT
`A.
`
`The Pioneering Work of Digifonica
`
`Digifonica was first established in 2004 and eventually came to employ over a dozen top
`
`professionals (e.g., software developers, system administrators, QA/test analysts) including three
`
`Ph.D.’s with engineering backgrounds, to develop innovative solutions for communications.
`
`Digifonica spent over $15,000,000 researching, developing, and testing a communication solution
`
`capable of seamlessly integrating a private voice-over-internet-protocol (“VOIP”) communication
`
`network with an external network, like, for example, a public switched telephone network (“PSTN”).
`
`By the mid-2000’s, Digifonica had successfully tested intra- and inter-network communications (e.g.,
`
`
`
`1
`
`

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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 6 of 24
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`communications within the private Digifonica system and between the Digifonica system and the
`
`PSTN) by implementing high-capacity communication nodes across three geographic regions,
`
`including actual working communication nodes in Vancouver (Canada) and London (UK).1
`
`Digifonica’s R&D efforts led to a number of patent grants, including U.S. Patent No. 8,542,815 (“the
`
`’815 patent”), to which the ’606 patent claims priority. In 2011 the VOIP market had estimated
`
`revenues of $58 billion and was experiencing double-digit year-over-year growth. In 2013 VoIP-Pal
`
`announced a private share purchase acquisition of Digifonica.
`
`B.
`
`The ’606 Patent
`
`The advent of the Internet Protocol (“IP”) and the development of VOIP technology allowed
`
`customers to physically move their telephones from one location to another, even from one continent
`
`to another, with no fundamental change in its operation from the point of view of a caller once a
`
`connection to the Internet was established. However, the integration of network gateways to route
`
`between different types of networks using VOIP, introduced new complications. The VOIP service
`
`needed to distinguish between callees that were within the VOIP network and those that were outside
`
`of it and thus required different methods for identifying callees and routing to them depending on
`
`whether the callees were within or outside the VOIP network. In addition, there was a need for a VOIP
`
`service that would scale to provide services to users distributed over a wide geographical area.
`
`Before the patent-in-suit, private branch exchange (“PBX”) systems typically enabled users to
`
`call destinations internal to the PBX by dialing an extension and destinations on the PSTN by dialing
`
`a phone number. It was a well-known practice to require a user to dial a predefined prefix such as “9”
`
`to indicate that subsequent digits were to be interpreted as a PSTN phone number. If no prefix was
`
`dialed, the dialed digits were interpreted as a private network PBX extension. Thus, the user made an
`
`affirmative decision as to whether the call would be routed over the private network or the PSTN.
`
`
`1 See Dkt. No. 67-3 at Fig. 1 (nodes 11, 21), 13:19-35.
`2
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 7 of 24
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`Digifonica’s system employed an approach fundamentally different from traditional PBX’s: it
`
`did not rely on a caller-specified classification (e.g., a prefix digit) to distinguish private network calls
`
`from PSTN calls. Rather, Digifonica provided flexible, user-specific dialing features and could
`
`decouple the type of number being called from the manner in which the call would be handled. For
`
`example, even if a PSTN number was dialed, Digifonica’s system could determine that the call should
`
`be routed to an internal destination on its private network, thus allowing the advantages of private
`
`network calling even if callers were unaware that the call recipient (“callee”) was a Digifonica system
`
`subscriber. In addition, for calls placed within its internal private network, the Digifonica system
`
`facilitated the routing of the call through an appropriate network node. As shown in Fig. 1 of the ’606
`
`patent, below, a system for making a VOIP telephone/videophone call is shown generally at 10.
`
`The preferred embodiment evaluated callee identifier against network routing criteria to cause a
`
`call to automatically be routed to the callee over a private network node or over a gateway to
`
`another network interconnected to the private network, transparently to the user, without requiring
`
`
`
`
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`3
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 8 of 24
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`the user to know the node or network with which a called party was associated, without requiring
`
`the user to manually specify which network or node to use for routing, and without requiring that
`
`a particular callee identifier be routed to a destination on a particular network or node. Instead, in
`
`Digifonica’s solution, the system itself identifies which network and nodes to use for routing.
`
`VoIP-Pal’s/Digifonica’s technology and patents represent fundamental advancements to IP-
`
`based communication, including improved functioning, classification, routing and reliability of VOIP
`
`and IP-based transmission of video, photographs, messages and mixed media, as well as improved
`
`interoperability of IP-based private communication networks with external networks, such as the
`
`PSTN, interconnected with its own private communication network via one or more gateways.
`
`III. LEGAL STANDARDS
`
`The ultimate question of the proper construction of a patent is a question of law.2 “It is a
`
`bedrock principle of patent law that the claims of a patent define the invention to which the
`
`patentee is entitled the right to exclude.”3
`
`“[T]he 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, i.e., as of the effective filing date of the patent application.”4 “[T]he
`
`ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire
`
`patent.”5 The patent “specification is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”6
`
`
`2 See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015) (citing Markman v.
`Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)).
`3 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citation and internal quotation
`marks omitted).
`4 Id. at 1312-13 (internal citations and quotation marks omitted).
`5 Id. at 1321 (internal quotation marks omitted).
`6 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`4
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 9 of 24
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`While “the claims themselves provide substantial guidance as to the meaning of particular
`
`claim terms,” the context of the surrounding words of the claim also must be considered.7
`
`Furthermore, “[o]ther claims of the patent in question, both asserted and unasserted, can also be
`
`valuable sources of enlightenment ... [b]ecause claim terms are normally used consistently
`
`throughout the patent.”8
`
`It is also possible that “the specification may reveal a special definition given to a claim
`
`term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
`
`inventor’s lexicography governs.”9 It bears emphasis that “[e]ven when the specification describes
`
`only a single embodiment, the claims of the patent will not be read restrictively unless the patentee
`
`has demonstrated a clear intention to limit the claim scope using words or expressions of manifest
`
`exclusion or restriction.”10 In addition to the specification, a court “should also consider the
`
`patent’s prosecution history, if it is in evidence.”11
`
`“In some cases, ... the district court will need to look beyond the patent’s intrinsic evidence
`
`and to consult extrinsic evidence in order to understand, for example, the background science or
`
`the meaning of a term in the relevant art during the relevant time period.”12 “Extrinsic evidence
`
`consists of all evidence external to the patent and prosecution history, including expert and
`
`inventor testimony, dictionaries, and learned treatises.”13
`
`
`
`7 Phillips, 415 F.3d at 1314.
`8 Id. (internal citation omitted).
`9 Phillips, 415 F.3d at 1316.
`10 Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-
`Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)) (alteration in original) (internal
`quotation marks omitted).
`11 Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517 U.S. 370
`(1996).
`12 Teva, 135 S. Ct. at 841.
`13 Markman, 52 F.3d at 980.
`
`
`
`5
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 10 of 24
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`Finally, “[t]he construction that stays true to the claim language and most naturally aligns
`
`with the patent’s description of the invention will be, in the end, the correct construction.”14 It
`
`follows that “a claim interpretation that would exclude the inventor’s device is rarely the correct
`
`interpretation.”15
`
`IV. ARGUMENT
`A.
`
`“network element[s]” (claims 1, 4, 8, 14, 19-21, 23, 24, 27, 32)
`
`VoIP-Pal’s Proposed Construction
`
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`Indefinite
`
`
`VoIP-Pal proposes that the term “network element[s]” be construed according to its plain
`
`
`
`and ordinary meaning. Defendants do not appear to dispute the interpretation of the term “network
`
`element” itself, as a matter of claim construction. Rather, Defendants assert that the term is
`
`indefinite. It is not. A patent has a statutory presumption of validity and claim terms should be
`
`construed to preserve its validity.16 Patent claims when read in conjunction with the specification
`
`and prosecution history, must “inform with reasonable certainty, those skilled in the art about the
`
`scope of the invention.”17 When a claim is alleged to be indefinite, indefiniteness must be proved
`
`by clear and convincing evidence.18 Defendants have not and cannot meet this burden.
`
`Defendants falsely assert that the term “network element” has no commonly accepted
`
`meaning, is not used in the specification, and renders the asserted claims indefinite. The term
`
`
`14 Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
`15 Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Modine
`Mfg Co. v. US. Int 'l Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)).
`16 MBO Laboratories, Inc. v. Benton, Dickinson & Co., 474 F.3d 1323, 1332 (Fed. Cir. 2007); see,
`also, 35 U.S.C. § 282(b) (“A patent shall be presumed valid.”).
`17 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125 (2014).
`18 Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000); Panduit
`Corp. v. Dennison Mfg. Co., 810 F.2d. 1561, 1570 (Fed. Cir. 1987) (stating that presumption
`mandated by § 282 is applicable to all of the many bases for challenging a patent’s validity).
`6
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 11 of 24
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`“network element” would be readily understood by a POSITA with reasonable certainty, especially
`
`given that the specification refers to the term. Indeed, standard telecommunications texts refer to
`
`“network elements” as the base of a telecommunications network and as shown below.19
`
`
`
`More importantly, the ‘606 patent specification describes, among other things, a “system”
`
`or “network” for communication.20 Various devices and components that are part of network and
`
`may be involved in the establishment of a communication from caller to callee are expressly
`
`referred to as being “elements” of this network:
`
`[T]he IP/UDP addresses of all elements such as the caller and callee telephones, call
`controller, media relay, and any others, will be assumed to be valid IP/UDP addresses
`directly accessible via the Internet or a private IP network…. the IP addresses assigned to
`various elements of the system may be in a private IP address space, and thus not directly
`accessible from other elements.21
`
`
`The ’606 patent in Fig. 1, shown below, illustrates various network elements including caller/callee
`
`devices 12/15, call controller 14, media relay 9, gateway(s) 20, routing controller 16.
`
`
`19 Ex. 1 at 296 (“At the base of the hierarchy are all the network elements, i.e. the network itself.”);
`id. at Fig. 11.11; see also id. at 294 (“Real-time monitoring and remote control is provided by the
`extensive deployment of control links from the various network elements (i.e. equipment) to
`network-management centres.”).
`20 Dkt. No. 67-3 at Abstract.
`21 Id. at 14:2-63 (emphasis added).
`
`
`
`7
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`
`
`Different network elements may perform different functions. For example, Fig. 7 shows an
`
`embodiment of a routing controller 16:
`
`FIG. 7 is a block diagram of a processor circuit of a routing, billing, rating element of the
`system shown in FIG. 1.22
`Defendants raise a flurry of irrelevant questions about whether a “network element” is a
`single device or multiple devices or could it be a logical component. It is not necessary to answer
`any of these implementation questions to understand the bounds of the claims with reasonable
`certainty.23 The specification shows that a network element is a device or component of the
`communication network associated with at least one IP address, and furthermore, provides
`multiple examples of such elements.24
`Defendants then pivot to arguments about irrelevant implementation details, namely, how
`the claims would determine the “sameness” of network elements.25 This argument is not about
`
`
`22 Id. at 11:25-27 (emphasis added); compare id. at Fig. 1 (illustrating various network elements
`including caller/callee devices 12/15, call controller 14, media relay 9, gateway(s) 20, routing
`controller 16 (also shown in Fig. 7)).
`23 See Mangione-Smith Decl. at ¶¶22-25.
`24 Id.
`25 Dkt. No. 67 at 4.
`
`
`
`8
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 13 of 24
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`whether the term “network element” is indefinite, but an attempt to nail down a specific
`implementation of how to determine whether network elements are the same. Defendants falsely
`assert that the specification provides no example of how to make such a determination,
`conveniently
`ignoring examples of how preferred embodiments determine whether a
`communications link is to be established to the same node or a different node.26 The specification
`even gives examples of
`routing messages
`identifying
`specific network elements
`(“sp.yvr.digifonica.com”, “sp.lhr.digifonica.com”) to set up a communication to either the “same
`node” or to a “different node.”27 In view of the specification, a POSITA would readily understand
`the claims, but it will be appreciated that the claims do not require the same implementation as the
`preferred embodiments disclosed.28
`Defendants ignore the specification’s disclosure of “elements” of the network as an aid to
`interpretation, and instead, reference a variety of extrinsic sources in support of their claim that the
`meaning of “network element” is unclear. Any differences in how “network element” may be
`defined in extrinsic sources should be resolved by focusing on the specification’s usage. Notably,
`the Defendants concede that at least one reference, WO2004/008786 by applicant Nokia
`Corporation (“Tohino”), included the term “network element[s]” and was considered by the
`Examiner during prosecution.29 In Tohino, the applicant used the term “network element[s]” 19
`times in relation to eight figures without any special definition or indication of uncertainty.30
`Defendants also point to the Joint Claim Construction Chart filed in the 2020 NDCAL
`actions to argue that the term is indefinite.31 But the fact that VoIP-Pal proposed a construction
`for “network element” in those cases does not mean that the term is indefinite. Defendants fail to
`point out that there were competing constructions in the earlier case and thus, there was a dispute
`
`
`26 Dkt. No. 67-3 at 14:57-63, 21:10-24.
`27 Id. at Figs. 16 and 32.
`28 See Mangione-Smith Decl. at ¶¶21-28.
`29 See Dkt. No. 67 at 5 n. 3; Dkt. No. 65-12 (VOP_RBR0000185).
`30 See Dkt. No. 65-13 at VOP_RBR0000499, 507, 523, 525-526, 532, 535, 544-545, 547-549
`(Figs. 1, 3, 4, 10, 12-15).
`31 Dkt. No. 67 at 6 (referring to Dkt. No. 65-14).
`9
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 14 of 24
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`as to what the plain meaning of “network element” was. There are no competing constructions in
`the instant cases because the Defendants simply argue that the term is indefinite. Finally, VoIP-
`Pal’s expert has opined that the bounds of the term “network element” is and would have been
`understandable to a POSITA.32 Accordingly, the Court should reject that the Defendants’
`argument that the term “network element[s]” is indefinite and find that it should be construed as
`“plain and ordinary meaning.”
`
`
`B.
`
`“identifier[s]” (claims 1, 5, 6, 8, 9, 11, 14, 15, 19, 21, 22, 27, 32, 42, 44)
`
`VoIP-Pal’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“value with pre-defined format”
`
`
`
`The meaning of the term “identifier” is self-explanatory and does not require any further
`
`construction beyond the plain and ordinary meaning of the words as used in the claims. The
`
`Federal Circuit has repeatedly held that “it is improper to read limitations from a preferred
`
`embodiment described in the specification.”33 Yet that is exactly what Defendants’ proposed
`
`construction of “identifier[s]” attempts to do and the Court should reject it.
`
`Defendants insist that the plain and ordinary term “identifier” requires claim construction
`
`to elucidate “how the invention could operate using such an unexplained, unformatted identifier.”34
`
`Defendants attempt here to import irrelevant implementation details from a preferred embodiment
`
`into a simple term, pointing to one example of a callee identifier that happens to be in a “username”
`
`format.35 The term “identifier” per se, however, does not require any particular predefined format,
`
`
`32 See Mangione-Smith Decl. at ¶¶21-28.
`33 See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1327 (Fed. Cir. 2012); see also Kara Tech Inc.
`v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full
`scope of his claims, and we will not limit him to his preferred embodiment or import a limitation
`from the specification into the claims.”).
`34 Dkt. No. 67 at 8.
`35 Dkt. No. 67 at 7.
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 15 of 24
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`and a POSITA would appreciate that an “identifier” can use a variety of formats. For example,
`
`the specification shows that a “caller identifier” could be a phone number or a username or even
`
`an IP address, identifying a callee—and a POSITA would understand that other identifiers could
`
`also identify a caller.36 “Identifier” is a broad term, frequently used in claim drafting; Defendants’
`
`attempt to restrict it to a “predefined format” is special pleading that is required neither by the term
`
`itself nor by the specification. Thus, the Court should reject Defendants’ proposed construction.
`
`C.
`
`“first participant profile” (claims 1, 3, 19-21, 42, 44)
`
`VoIP-Pal’s Proposed Construction
`“stored information specific to a subscriber
`(first participant) of a communication
`system”
`
`Defendants’ Proposed Construction
`
`“information relating to a call participant in a
`PSTN system”
`
`The dispute between the parties concerns whether the term “first participant profile” relates
`
`
`
`
`to a “subscriber” or a “call participant” in a PSTN system. It does not. As Defendants admit, the
`
`disclosed embodiments of a profile in the specification merely disclose “an exemplary data
`
`structure.”37 Figure 9 illustrates a “tabular representation” of a profile stored in a database for a
`
`specific subscriber/user, not an essential manner of implementation.38 The “profile” associates
`
`together information which is specific to a particular subscriber, which includes attributes but also
`
`other information associated with the subscriber.39 But a POSITA would know that the precise
`
`data structure or scheme that is used to store the information is immaterial. Thus, the definition of
`
`the term “profile” should not be limited to the specific embodiments or implementations disclosed
`
`
`36 Dkt. No. 67-3 at 16:19-30, 17:35-38, 17:61-63, Fig. 3 (item 60).
`37 Dkt. No. 67 at 10; Dkt. No. 67-3 at 18:40.
`38 Id. at. 11:31-32, Fig. 9 (item 253).
`39 See, e.g., id. at 18:40-19:51, Figs. 9-12.
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 16 of 24
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`in the specification.40 Generally speaking, “dialing profiles represent calling attributes of
`
`respective subscribers,” but a POSITA would know that all kinds of information could be stored
`
`in a profile, whether or not it represents PSTN-related “attributes,” and that there are a variety of
`
`schemes for associating all this information to the specific user.41
`
`Defendants want “first participant profile” to be construed to require inclusion of
`
`information “related to a PSTN system.” Defendants’ special pleading should be rejected because
`
`nothing in the term “profile” requires PSTN-related information. Defendants are simply trying to
`
`import implementation details from preferred embodiments in the specification, which they claim
`
`necessarily contain PSTN-related information. Defendants admit that the disclosed profiles
`
`contain non-PSTN information, but do not argue for “profile” to be construed to require “non-
`
`PSTN information.”42 Indeed, Defendants admit that the specification suggests only an
`
`“exemplary” data structure.43
`
`Defendants’ claim that “FIGs. 10-12 each include calling attributes specific to a PSTN
`
`system” is also misleading.44 While NDD 262 and IDD 264 codes are used on the PSTN, the
`
`specification is crystal clear that the preferred embodiment allows “private network” (non-PSTN)
`
`destinations to be called by using callee identifiers with these codes.45 If a callee identifier
`
`containing NDD, IDD, or other attributes listed in the profile (e.g., FIGS. 10-12) was determined
`
`to be a subscriber, the call would proceed entirely on the system network—without going over a
`
`
`40 See Phillips, 415 F.3d at 1323; see also Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d
`1143, 1151 (Fed. Cir. 2003) (“The general rule, of course, is that claims of a patent are not limited
`to the preferred embodiment, unless by their own language.”).
`41 Dkt. No. 67-3 at 18:51-52, 37:24-28.
`42 Dkt. No. 67 at 10.
`43 Dkt. No. 67-3 at 18:40, 53 (referring to “exemplary” profiles), 19:50 (“for example”).
`44 Dkt. No. 67 at 10.
`45 Dkt. No. 67-3 at Fig. 8B (items 269, 279).
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`Case 6:20-cv-00272-ADA Document 69 Filed 04/08/22 Page 17 of 24
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`PSTN.46 Nowhere does the ’606 patent state that a profile must include a particular type of
`
`information, let alone PSTN information. The preferred embodiment supported placing simulated
`
`PSTN-like calls by using phone numbers (e.g., Calgary subscriber has a number of “1-604-867-
`
`5309” albeit with a non-Calgary area code of “604”)47 or by using a non-PSTN “username.”48 But
`
`the specification nowhere discloses that these codes must be used for PSTN calls, nor even that
`
`they must follow all PSTN conventions. And some attributes (e.g., reseller 273, max number of
`
`concurrent calls 277) are not PSTN-related. Thus, there is no disclosure that a “profile” must
`
`include “information related to a PSTN system.” The preferred embodiment’s use of PSTN-style
`
`numbers allowed the system to act like a PSTN system, without actually being part of a PSTN.
`
`Defendants’ attempt to require “PSTN” information in the term “profile” based on
`
`preferred embodiments should be rejected because the claims are not restricted to such preferred
`
`embodiments.49 And even in the preferred embodiment, the profile information need not
`
`necessarily be PSTN-related, because PSTN-like numbers or usernames could have been used to
`
`initiate calls between subscribers of the system network even without recourse to the PSTN (e.g.,
`
`even if the system was disconnected from the PSTN altogether via gateways 20 in Fig. 1).
`
`D.
`
`“routing message” (claims 1, 8, 14, 19, 21, 26, 27, 32)
`
`VoIP-Pal’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”
`
`
`46 Id. at 21:10-23:49, 25:61-27:59 (non-PSTN calls able to use information that Defendants’ claim
`is “related to a PSTN”).
`47 Id. at Fig. 14.
`48 Id. at 16:19-45, Fig. 3 (using the Calgary subscriber’s username, “200110502222”); but see id.
`at Fig. 11, Fig. 15 (item 358), 35:33 (“PSTN-compatible number or system number”).
`49 Id. at