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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 1 of 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
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`VOIP-PAL.COM, INC.,
`Plaintiff,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6:20-CV-00272-ADA
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
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`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON WEB SERVICES, INC.,
`Defendants.
`
`
`
`
`
`
`
`
`PLAINTIFF VOIP-PAL.COM’S OPPOSED MOTION FOR PARTIAL
`RECONSIDERATION OF CLAIM CONSTRUCTION ORDER
`
`
`i
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 2 of 16
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`TABLE OF CONTENTS
`INTRODUCTION……………………………………………………………………..…1
`
`FACTUAL BACKGROUND……………………………………………………………2
`
`I.
`
`II.
`
`III.
`
`LEGAL STANDARD……………………………………………………………………3
`
`IV. ARGUMENT…………………………………………………………………………….4
`
`A. A Routing Message Does Not Require A TTL Field. ……………………………….4
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`B. Considering The Intrinsic Record As A Whole Shows That A Routing Message
`
`Does Not Require A TTL Field. ……………………………………………………6
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`V.
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`CONCLUSION…………………………………………………………………………9
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`ii
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`Cases
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 3 of 16
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`TABLE OF AUTHORITIES
`
`Asetek Holdings, Inc. v. Coolit Sys., No. C-12-4498 EMC, 2013 U.S. Dist. LEXIS 170488 (N.D.
`
`Cal. Dec. 3, 2013)............................................................................................................................ 8
`
`Atser Research Techs., Inc. v. Raba-Kistner Consultants, Inc., No. SA-07-CA-93-H, 2009 U.S.
`
`Dist. LEXIS 25294 (W.D. Tex. Mar. 2, 2009) ................................................................................ 8
`
`Clare v. Chrysler Grp., LLC, 819 F.3d 1323 (Fed. Cir. 2016) ........................................................... 8
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`Curtiss-Wright Flow Control Corp. v. Velan Inc., 438 F.3d 1374 (Fed. Cir. 2006) .......................... 8
`
`eTool Dev., Inc. v. Nat’l Semiconductor Corp., 881 F. Supp. 2d 745 (E.D. Tex. 2012) .................... 3
`
`Ferring B.V. v. Watson Labs., Inc., 3:11-cv-00481-RCJ-VPC, 2013 U.S. Dist. LEXIS 17536 (D.
`
`Nev. Feb. 6, 2013) ........................................................................................................................... 8
`
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ............................................ 9
`
`In re Benjamin Moore & Co., 318 F.3d 626 (5th Cir. 2002) .............................................................. 3
`
`Interdigital Commuc’ns., Inc. v. ZTE Corp., 1:13-cv-00009-RG, 2014 U.S. Dist. LEXIS 113316
`
`(D. Del. Aug. 8, 2014) ..................................................................................................................... 8
`
`Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352 (Fed. Cir. 2002) ................................. 3
`
`Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004).............................................. 9
`
`Mediatek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-5341 YGR, 2014 U.S. Dist. LEXIS
`
`31461 (N.D. Cal. Mar. 5, 2014) ...................................................................................................... 3
`
`Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308 (Fed. Cir. 2010) ................. 3
`
`Serverside Grp. Ltd. v. Tactical 8 Techs., L.L.C., 927 F. Supp. 2d 623 (N.D. Iowa 2013) ................ 9
`
`Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 440 F. Supp. 2d 120 (D. Conn. 2006) ..... 3
`
`WI-Lan, Inc. v. Acer, Inc., No. 2:07-CV-473-TJW-CE, 2010 U.S. Dist. LEXIS 138111 (E.D. Tex.
`
`Dec. 30, 2010) ................................................................................................................................. 3
`iii
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 4 of 16
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`Wright Asphalt Prods. Co., LLC v. Pelican Ref. Co., LLC, No. H-09-1145, 2012 U.S. Dist. LEXIS
`
`73901 (S.D. Tex. May 29, 2012)..................................................................................................... 3
`
`Yeti Coolers, LLC v. RTIC Coolers, LLC, No. A-15-CV-597-RP, 2017 U.S. Dist. LEXIS 11163, at
`
`*9 (W.D. Tex. Jan. 27, 2017) .......................................................................................................... 3
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`iv
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 5 of 16
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`TABLE OF ABBREVIATIONS
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`
`
`ABBREVIATION
`
`TERM
`
`VoIP-Pal
`
`Amazon
`
`Defendant
`
`Plaintiff VoIP-Pal.com, Inc.
`
`Amazon.com, Inc., Amazon.com Services,
`
`LLC, and Amazon Web Services, Inc.
`
`Amazon
`
`The ’606 patent or the patent-in-suit
`
`U.S. Patent No. 10,218,606
`
`The ’005 patent
`
`The ’864 patent
`
`TTL
`
`PCT
`
`U.S. Patent No. 9,179,005
`
`U.S. Patent No. 11,171,864
`
`Time to Live
`
`Patent Cooperation Treaty
`
`
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`v
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 6 of 16
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`I.
`
`INTRODUCTION
`
`VoIP-Pal respectfully requests that the Court reconsider and refine its construction of the
`
`term “routing message” because part of the construction is clearly erroneous. The Court adopted
`
`Amazon’s proposed construction of this term and construed it to mean “a message that includes a
`
`callee user name field, a route field, and a time to live field.”1 While VoIP-Pal disagrees with this
`
`construction as a whole, by this Motion, VoIP-Pal only asks that the Court fine-tune this
`
`construction by removing the requirement that a routing message must have “a time to live field.”
`
`In the ’606 patent, a routing message is not defined by a TTL field. Indeed, the TTL field has
`
`nothing to do with the routing—it has to do with billing. It “holds a value representing the number
`
`of seconds the call is permitted to be active, based on subscriber available minutes and other billing
`
`parameters.”2 Not only does the specification of the ’606 patent expressly distinguish between
`
`routing and billing, but the entirety of the intrinsic record, which includes eleven other family
`
`members of the ’606 patent, makes it abundantly clear that the TTL field is not a requirement of a
`
`routing message. The Court’s construction, however, would work a manifest injustice because it
`
`would require that all 12 U.S. patents in the family be limited to a routing message that has a TTL
`
`field even though several of those patents expressly claim TTL as an optional feature of a routing
`
`message.
`
`The Court admitted that the parties’ arguments for their respective constructions were
`
`closely counterposed, requiring the Court to go “back and forth … to try and get [the construction]
`
`right.”3 What should not be open to debate, however, is the portion of Amazon’s proposed
`
`
`
`1 Dkt. No. 87 at 2.
`2 Dkt. No. 1-1 at 21:55-60.
`3 Ex. 1 at 25:23-24. All exhibits refer to exhibits to the Declaration of Lewis E. Hudnell, III.
`1
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 7 of 16
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`construction, which the Court adopted, that requires a routing message to have a TTL field.
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`Accordingly, VoIP-Pal respectfully requests that the Court reconsider and modify its construction
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`of “routing message” to be “a message that includes a callee user name field and a route field.”
`
`II.
`
`
`
`FACTUAL BACKGROUND
`
`The Court conducted a Claim Construction Hearing on February 15, 2023 at which the parties
`
`only argued one term—“routing message.” The following table depicts the parties’ proposals and the
`
`
`
`Court’s constructions (preliminary and final):
`
`Term
`
`VoIP-Pal’s
`Proposal
`
`Defendants’
`Proposal
`
`“routing
`message”
`
`Plain and
`ordinary
`meaning
`
`“a message that
`includes a callee
`user name field, a
`route field, and a
`time to live
`field.”
`
`Court’s
`Preliminary
`Construction
`Plain and
`ordinary
`meaning
`
`Court’s
`Final
`Construction
`“a message that
`includes a callee
`user name field, a
`route field, and a
`time to live
`field.”
`
`Although the Court initially agreed with VoIP-Pal’s proposed construction, the Court ultimately
`
`adopted Amazon’s proposed construction. Yet the Court remained undecided as to the proper
`
`construction during the hearing, commenting that “every time [Amazon’s counsel] finished I thought
`
`[he was] right. And every time [VoIP-Pal’s counsel] finished I thought he was right.”4 Before the
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`hearing, the Court’s clerk advised the parties that “it is generally unlikely that the Court will select a
`
`party’s originally proposed construction over the preliminary construction. As such, the Court believes
`
`that making arguments to fine-tune the preliminary construction may be more helpful.”5 In concluding
`
`its arguments, VoIP-Pal briefly argued that, at a minimum, the TTL filed should be excluded from the
`
`construction.6 The parties, however, did not focus their arguments on whether the TTL field should be
`
`excluded from the final construction of “routing message.” VoIP-Pal respectfully submits that such
`
`
`
`4 Ex. 1 at 26:11-13.
`5 Ex. 2.
`6 Id. at 24:10-25:6.
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`2
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 8 of 16
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`fine-tuning is not only more accurate but is necessary in this situation to avoid manifest injustice.
`
`III. LEGAL STANDARD
`
`Rule 54(b) of the Federal Rules of Civil Procedure provides that an order “that adjudicates
`
`fewer than all the claims or the rights and liabilities of fewer than all the parties does not end the
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`action as to any of the claims or parties and may be revised at any time before the entry of a judgment
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`adjudicating all the claims and all the parties’ rights and liabilities.”7 This Court may grant a motion
`
`for reconsideration if there is “the need to correct a clear error of law or prevent manifest injustice.”8
`
`Several district courts, including district courts in this Circuit, have granted reconsideration of claim
`
`construction orders.9
`
`
`
`In addition, the Federal Circuit has repeatedly endorsed “rolling claim construction” by
`
`district courts—that is, the practice of “revisit[ing] and alter[ing]” the court’s “interpretation of the
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`claim terms as its understanding of the technology evolves.”10 Rolling claim construction is
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`especially necessary “where issues involved are complex, either due to the nature of the technology
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`or because the meaning of the claims is unclear from the intrinsic evidence.”11 Indeed, Amazon
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`admitted at the beginning of the Claim Construction Hearing that the issues concerning the term
`
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`7 See eTool Dev., Inc. v. Nat’l Semiconductor Corp., 881 F. Supp. 2d 745, 748 (E.D. Tex. 2012).
`8 See In re Benjamin Moore & Co., 318 F.3d 626, 629 (5th Cir. 2002).
`9 See, e.g., Wright Asphalt Prods. Co., LLC v. Pelican Ref. Co., LLC, No. H-09-1145, 2012 U.S. Dist.
`LEXIS 73901 (S.D. Tex. May 29, 2012); WI-Lan, Inc. v. Acer, Inc., No. 2:07-CV-473-TJW-CE,
`2010 U.S. Dist. LEXIS 138111 (E.D. Tex. Dec. 30, 2010); Tyco Healthcare Grp. LP v. Ethicon
`Endo-Surgery, Inc., 440 F. Supp. 2d 120 (D. Conn. 2006).
`10 See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir.
`2010) (citing cases).
`11 See Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002); see also
`Yeti Coolers, LLC v. RTIC Coolers, LLC, No. A-15-CV-597-RP, 2017 U.S. Dist. LEXIS 11163, at
`*9 (W.D. Tex. Jan. 27, 2017) (quoting Mediatek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-
`5341 YGR, 2014 U.S. Dist. LEXIS 31461, at *9 (N.D. Cal. Mar. 5, 2014)) (“Accordingly, the final
`determination of the construction of any claim occurs at the close of trial and manifests itself in the
`form of jury instructions.”).
`
`3
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 9 of 16
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`“routing message” address “a highly technical area, the area of voice-over IP calling.”12 Thus,
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`reconsideration in this case is warranted.
`
`IV. ARGUMENT
`
`
`A.
`
`A Routing Message Does Not Require A TTL Field.
`
`
`
`The Court should remove the TTL field from the construction of the term “routing message”
`because the use of a TTL field concerns a billing-related concept, independent from the callee and
`route fields. The TTL field has nothing to do with routing a communication and is not claimed in
`the ’606 patent. As the specification states, “[t]he time to live field 362 holds a value representing
`the number of seconds the call is permitted to be active, based on subscriber available minutes and
`other billing parameters.”13 The TTL field relates to the billing aspects of the overall system
`disclosed in the specification and is not an essential aspect of routing a call. Indeed, there is an
`entire section of the specification devoted to determining TTL that has nothing to do with routing.14
`
`The specification states that the TTL field is used in one embodiment of the invention to
`determine a permissible length of a communication session: “[i]n accordance with another aspect
`of the invention, there is provided a method for determining a time to permit a communication
`session to be conducted.”15 The TTL section of the specification explains that the TTL field is set
`based on the cost of a communication in comparison to the funds balance of the caller’s account.
`For example, in one embodiment, if a caller’s funds balance or free time balance are not greater
`than 0, then TTL is set to 0 and the call is denied.16 In other cases, such as a network or cross-
`domain call, calling may be free, and TTL is set to 99999, in which case the call is treated as having
`
`
`
`12 Ex. 1 at 3:13-14.
`13 Dkt. No. 1-1 at 21:55-60.
`14 Id. at 28:45-31:40.
`15 Id. at 6:51-62; see also id. at 28:45-29:5 (“Referring to FIGS. 33A and 33B, a process for
`determining a time to live value for any of blocks 642 in FIG. 8C, 350 in FIG. 8A or 564 in FIG. 8D
`above is described.”).
`16 Id. at 30:26-35; see also id. at 31:26-37, Fig. 33A (746, 748).
`4
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 10 of 16
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`an effectively unlimited duration.17 In some scenarios, TTL may be appended to specific paths
`(routes) to limit communication session duration, but a routing message need not limit session
`duration in order to specify a path (route).18 The determination and use of the TTL field is a separate
`aspect of the invention, not related to routing, and is not an essential feature of a “routing message.”
`
`In contrast to the TTL field, other fields in the routing message are explicitly used for
`routing. For example, the section of the specification entitled “Subscriber to Subscriber Calls
`Between Different Nodes,” in which the example in Fig. 16 is discussed, explains the processing of
`the callee identifier in the routing message to route the call over a private network.19 There is no
`discussion in this section of computing the TTL—the call is free.20 In contrast, in the specification
`section entitled “Subscriber to Non-Subscriber Calls,” in which the example of Fig. 25 is discussed,
`routing paths in a routing message to route the call over a public network are time-limited according
`to each path’s cost.21 Regardless of the type of routing message used, the specification explains that
`the callee user name field and the route field are used to route a message, not the TTL field:
`
`Referring back to FIG. 1, the routing message whether of the type shown in FIG. 16,
`25 or 32, is received at the call controller 14 and the call controller interprets the
`receipt of the routing message as a request to establish a call. …
`
`Where a routing message of the type shown in FIG. 32 is received by the call
`controller 14, the routing to gateway routine 122 shown in FIG. 4 may direct the
`processor 102 [sic] cause a message to be sent back through the internet 13 shown in
`FIG. 1 to the callee telephone 15, knowing the IP address of the callee telephone 15
`from the user name [in the callee user name field].
`
`Alternatively, if the routing message is of the type shown in FIG. 16, which identifies
`a domain associated with another node in the system [in the route field], the call
`controller may send a SIP invite message along the high speed backbone 17 connected
`to the other node. The other node functions as explained above, in response to receipt
`
`
`17 Id. at Figs. 33A-B (700, 702, 730, 732, 752, 753), 28:63-66; see also id. at 29:60-30:1; 30:40-46.
`18 Id. at 27:25-39, Fig. 8C (642-646), Fig. 32.
`19 Id. at 21:10-23:49 (emphasis added).
`20 Id. at 21:25-34 (discloses TTL is set to an arbitrary “maximum” value, “99999, for example”, to
`effect a free call; however, the route is determined by the routing message including a “caller [sic:
`callee] identifier” and an “identifier of a node on the private network”; compare id. at 2:5-8, 3:5-8).
`21 Id. at 23:50-25:60.
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`5
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 11 of 16
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`of a SIP invite message.22
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`Thus, unlike these other fields, the TTL field should not be included in the construction of “routing
`
`message” because it has nothing to do with routing and is not required to route a communication.
`
`Selecting a route for a call is distinct from choosing whether or not to limit a call session duration.
`
`Considering The Intrinsic Record As A Whole Shows That A Routing Message
`Does Not Require A TTL Field.
`When viewed in the context of the entirety of the intrinsic record, it is apparent that the
`inventors did not intend the TTL field to be a required field of a “routing message” and that the TTL
`field is not required to route a message. The ’606 patent is directed to inventive methods of “routing
`and billing.”23 Indeed, VoIP-Pal has obtained multiple patents distinctly focused on either routing
`or billing, based upon the same specification as the ’606 patent, as shown in the following table:
`’606 Patent Family Member
`Title
`
`Producing routing messages for voice over IP communications
`
`B.
`
`8,542,815
`
`
`
`
`
`
`
`
`
`
`
`
`
`8,774,378
`
`9,137,385
`
`9,179,005
`
`9,537,762
`
`9,813,330
`
`9,826,002
`
`9,935,872
`
`9,948,549
`
`9,998,363
`
`10,218,606
`
`
`Allocating charges for communications services
`
`Determining a time to permit a communications session to be
`conducted
`Producing routing messages for voice over IP communications
`
`Producing routing messages for voice over IP communications
`
`Producing routing messages for voice over IP communications
`
`Producing routing messages for voice over IP communications
`
`Producing routing messages for voice over IP communications
`
`Producing routing messages for voice over IP communications
`
`Allocating charges for communications services
`
`Producing routing messages for voice over IP communications
`
`
`
`22 Id. at 27:40-59.
`23 Id. at 1:21-24.
`
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 12 of 16
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`11,171,864
`
`
`Determining a time to permit a communications session to be
`conducted
`
`Notably, while all the patents in the ’606 patent family share the same specification, they do not
`
`share the same title. The ’606 patent is titled “Producing routing messages for voice over IP
`
`communications.” But other family members are titled “Allocating charges for communications
`
`services” or “Determining a time to permit a communications session to be conducted.” The
`
`different titles reflect the different inventions disclosed in the specification. Indeed, the claims of
`
`U.S. Patent No. 11,171,864 are specifically directed to producing a routing message that includes a
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`TTL field for holding a maximum allowable time for a communications session to be conducted.
`
`These distinct inventions are evident early in the intrinsic record. The PCT parent application of
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`the ’606 patent, before entering national stage as App. No. 12/513,147, was determined by PCT
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`authorities to lack unity of invention because its “Group I” routing claims (operating a call routing
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`controller to produce a routing message) were considered distinct from its “Group III” billing claims
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`(determining a time to permit a communications session to be conducted).24
`
`
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`More importantly, the components of the routing message are claimed three different ways
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`in the patent family: (1) a routing message with no mention of TTL in any claim (e.g., in the ’606
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`patent); (2) a routing message recited in an independent claim and a TTL value recited in a
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`dependent claim (e.g., in the ’005 patent); and (3) a routing message and a TTL value in the same
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`independent claim (e.g., in the ’864 patent). The following table illustrates these three scenarios:
`
`(2) U.S. Patent No. 9,179,005
`(claims 1 and 18)
`
`(3) U.S. Patent No. 11,171,864
`(claim 1)
`
`1. A process for producing a routing message
`for routing communications between a caller
`and a callee in a communication system, the
`process comprising:
`…
`
`telecommunications network, a
`In a
`1.
`computer-implemented method of determining
`a time to permit a communication session by
`first and second participants to be conducted,
`the method comprising:
`
`(1) U.S. Patent No. 10,218,606
`(claim 1)
`
`1. A method for routing communications in a
`packet
`switched
`communication
`system
`between a first participant device associated
`with a first participant and a second participant
`device associated with a second participant, the
`
`24 See Ex. 3, Written Opinion, PCT/CA2007/001956, Box IV (in file history of U.S. Patent No.
`8,542,815).
`
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`7
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 13 of 16
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` …
`
`
`
`
`producing a routing message that includes the
`maximum time to permit the communication
`session to be conducted, and sending the
`routing message to a controller to establish the
`communication
`session between a
`first
`communication device associated with the first
`participant and a second communication
`device associated with the second participant
`for a duration of up to the maximum time
`included in the routing message; and
`
` …
`
`
`
` .27
`
`
`when at least one of said calling attributes and
`at least a portion of a callee identifier
`associated with the callee meet private network
`classification criteria, producing a private
`network routing message for receipt by a call
`controller, said private network
`routing
`message identifying an address, on the private
`network, associated with the callee; and
`
`when at least one of said calling attributes and
`at least a portion of said callee identifier meet
`a public network classification criterion,
`producing a public network routing message
`for receipt by the call controller, said public
`network
`routing message
`identifying a
`gateway to the public network.26
`
`
`first and second participant devices being
`associated with first and second network
`elements of
`the communication system,
`respectively, the method comprising:
`…
`is
`second network element
`the
`when
`determined to be the same as the first network
`element, producing a
`routing message
`identifying a first network address associated
`with the first network element, using at least
`one processor; and
`
`is
`second network element
`the
`when
`determined not to be the same as the first
`network element, producing a routing message
`identifying
`a
`second network
`address
`associated with the second network element,
`using at least one processor;
`
`wherein the packet switched communication
`system
`attempts
`to
`establish
`the
`communication from
`the first participant
`device to the second participant device based
`on at least one network address identified in the
`routing message.25
`
`
`
`
`18. The process of claim 17, further
`comprising causing said public network
`routing message to include a time value and
`a timeout value.28
`
`
`
`
`Under the Court’s claim construction, however, all of these claims require the routing message to
`have a TTL field despite the fact that the ’864 patent’s claims and some ’005 patent claims already
`require as much. Applying the Court’s claim construction renders claim language directed to TTL
`fields superfluous, which is improper.29 Applying the Court’s claim construction to the ’005 patent
`violates the claim differentiation doctrine because independent claim 1 is not limited to a routing
`message including a time value.30 Moreover, the Federal Circuit has held that claim differentiation
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`25 Dkt. No. 1-1 at claim 1.
`26 Ex. 4 at claim 1.
`27 Id. at claim 18.
`28 Ex. 5 at claim 1.
`29 See Interdigital Commuc’ns., Inc. v. ZTE Corp., 1:13-cv-00009-RG, 2014 U.S. Dist. LEXIS
`113316, at *6 (D. Del. Aug. 8, 2014); Asetek Holdings, Inc. v. Coolit Sys., No. C-12-4498 EMC,
`2013 U.S. Dist. LEXIS 170488, at *13 (N.D. Cal. Dec. 3, 2013); Ferring B.V. v. Watson Labs., Inc.,
`3:11-cv-00481-RCJ-VPC, 2013 U.S. Dist. LEXIS 17536, at *22 (D. Nev. Feb. 6, 2013); Atser
`Research Techs., Inc. v. Raba-Kistner Consultants, Inc., No. SA-07-CA-93-H, 2009 U.S. Dist.
`LEXIS 25294, at *31-32 (W.D. Tex. Mar. 2, 2009).
`30 See Curtiss-Wright Flow Control Corp. v. Velan Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006) (stating
`the claim differentiation “refers to the presumption that an independent claim should not be construed
`as requiring a limitation added by a dependent claim.”).
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 14 of 16
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`can apply across patents in the same family.31 The claims for the ’005 and ’864 patents show that
`the inventors knew how to claim a routing message that holds a time value for how long a
`communication session can be conducted. Thus, the fact that the claims of the ’606 patent do not
`recite a TTL value and other patents in the same patent family do evidences an intent by the
`inventors not to limit the routing message claimed in the ’606 patent to having a TTL field. The
`PCT routing claims, too, recited a time-dependent element only in the dependent claims.32
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`Finally, 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.”33 Although VoIP-Pal disputes that the specification discloses a single
`embodiment of a routing message, even if it did, Amazon presented no evidence demonstrating a clear
`intent on the part of the inventors to limit a routing message to having a TTL field using words or
`expressions of manifest exclusion or restriction. Indeed, the above comparison of claims across
`different patents in the same patent family as the ’606 patent shows otherwise. Amazon invites the
`Court to commit clear error by incorporating a billing-related feature of an exemplary embodiment—
`a TTL field—into the term “routing message” that has nothing to do with routing and consequently
`implies that an entire family of patents directed to different features should be limited to a single
`embodiment of a routing message. Such a result is manifestly unjust and should be corrected.
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`V.
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`CONCLUSION
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`In conclusion, VoIP-Pal respectfully requests that the Court reconsider its final
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`31 See Clare v. Chrysler Grp., LLC, 819 F.3d 1323, 1330 (Fed. Cir. 2016) (applying the doctrine of
`claim differentiation across different patents); see also Serverside Grp. Ltd. v. Tactical 8 Techs.,
`L.L.C., 927 F. Supp. 2d 623, 686 (N.D. Iowa 2013) (“The doctrine of claim differentiation supports
`the conclusion that independent claims of related patents that use different claim terms must have
`different scope.”).
`32 Ex. 6 at claims 27 and 57.
`33 See 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).
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 15 of 16
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`construction of the term “routing message” and construe the term to mean “a message that includes
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`a callee user name field and a route field.” Nothing more is needed for routing a communication.
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`Dated: March 10, 2023
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`/s/ Lewis E. Hudnell, III
`HUDNELL LAW GROUP P.C.
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@hudnelllaw.com
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
`
`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
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`Case 6:20-cv-00272-ADA Document 89 Filed 03/10/23 Page 16 of 16
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`CERTIFICATE OF SERVICE
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`I certify that on March 10, 2023, I electronically filed the foregoing Plaintiff VoIP-Pal.com’s Opposed
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`Motion for Partial Reconsideration of Claim Construction Order with the Clerk of Court using the CM/ECF
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`system, which will send notification of such filing to all counsel of record.
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`/s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
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