Case 6:20-cv-00272-ADA Document 91 Filed 03/22/23 Page 1 of 13
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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.,
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`
`
`Plaintiff,
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`v.
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`CASE NO. 6:20-cv-00272-ADA
`
`AMAZON.COM, INC.,
`AMAZON.COM SERVICES LLC, and
`AMAZON WEB SERVICES, INC.,
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`
`
`
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`Defendants.
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`
`
`AMAZON’S RESPONSE IN OPPOSITION TO PLAINTIFF VOIP-PAL.COM’S
`OPPOSED MOTION FOR PARTIAL RECONSIDERATION OF THE COURT’S
`CLAIM CONSTRUCTION ORDER
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`Case 6:20-cv-00272-ADA Document 91 Filed 03/22/23 Page 2 of 13
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`TABLE OF CONTENTS
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`PAGE
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`I.
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`II.
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`INTRODUCTION .............................................................................................. 1
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`LEGAL STANDARD ......................................................................................... 1
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`III.
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`ARGUMENT ...................................................................................................... 2
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`A.
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`The Court’s Construction Applies the Definition of “Routing
`Message” in the Specification, and VoIP-Pal’s Recycled
`Arguments Fail to Demonstrate Any Error. ............................................ 2
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`1.
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`2.
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`None of VoIP-Pal’s References to the Specification
`Demonstrate any Error with the Court’s Claim
`Construction. ............................................................................... 3
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`VoIP-Pal’s “Claim Differentiation” Argument Was
`Correctly Rejected by the Court. ................................................ 6
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`IV.
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`CONCLUSION ................................................................................................... 8
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`Case 6:20-cv-00272-ADA Document 91 Filed 03/22/23 Page 3 of 13
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`CASES
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`AstraZeneca Pharms. LP v. Handa Pharms., LLC,
`No. A-10-CA-259-LY, 2010 WL 11506721 (W.D. Tex. July 27, 2010) ..................................7
`
`Krim v. pcOrder.com, Inc.,
`212 F.R.D. 329 (W.D. Tex. 2002) .............................................................................................7
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`Marine Polymer Techs. Inc. v. HemCon, Inc.,
`672 F.3d 1350 (Fed. Cir. 2012)..................................................................................................6
`
`Unification Techs. LLC v. Micron Tech., Inc.,
`No. 6:20-cv-00500-ADA, 2021 WL 9950497 (W.D. Tex. July 16, 2021) ................................2
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`World Class Tech. Corp. v. Ormco Corp.,
`769 F.3d 1120 (Fed. Cir. 2014)..............................................................................................6, 7
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`I.
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`INTRODUCTION
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`In its motion for reconsideration, VoIP-Pal fails to identify any change in law, any new
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`facts, or any manifest error of law or fact. Instead, VoIP-Pal rehashes its prior arguments and asks
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`the Court to reach a different conclusion. That is not a proper basis for reconsideration.
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`The Court correctly held that the “routing message” in the ’606 patent1 is defined to include
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`a time-to-live field, and VoIP-Pal has not demonstrated any error in that holding. VoIP-Pal once
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`again relies instead on inaccurate or incomplete descriptions of the patent specification, and it
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`repeats the claim differentiation argument that it raised for the first time at oral argument and
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`Amazon nevertheless refuted by walking through the multiple differences between the ’606 pa-
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`tent’s claims and those of VoIP-Pal’s other related patents.
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`Remarkably, VoIP-Pal also argues that the parties “did not focus their arguments on
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`whether the TTL field should be excluded from the final construction of ‘routing message.’” (Mot.
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`at 2.) But that was the central disputed issue for the only claim limitation argued at the Markman
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`hearing, with counsel for both parties and the Court extensively discussing the time-to-live field.
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`(See, generally, Ex. A (Markman hearing transcript).)2 The Court decided that issue in Amazon’s
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`favor, and VoIP-Pal has identified no basis to disturb that ruling.
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`VoIP-Pal’s motion for reconsideration should therefore be denied.
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`II.
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`LEGAL STANDARD
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`In addressing another motion to reconsider a claim construction order, this Court noted that
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`a court “should not revisit its prior decisions in the absence of extraordinary circumstances such
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`1 U.S. Patent No. 10,218,606.
`2 Unless otherwise noted, all Exhibits referenced herein refer to the Declaration of Daniel T.
`Shvodian in Support of Amazon’s Response in Opposition to Plaintiff VoIP-Pal.com’s Opposed
`Motion for Partial Reconsideration of Claim Construction Order.
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`as where the initial decision was clearly erroneous and would work a manifest injustice.” Unifi-
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`cation Techs. LLC v. Micron Tech., Inc., No. 6:20-cv-00500-ADA, 2021 WL 9950497, at *1 (W.D.
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`Tex. July 16, 2021) (internal quotation omitted). Instead, reconsideration is “an extraordinary
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`remedy that should be used sparingly,” and motions for reconsideration “are not the proper vehicle
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`for rehashing evidence, legal theories, or arguments that could have been offered or raised before
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`entry of judgment.” Id. (internal quotations omitted.) Furthermore, “[a] motion that repeats pre-
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`viously advanced arguments and case law that was available at the time of the original briefing is
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`insufficient to justify revisiting an issued order.” Id.
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`III. ARGUMENT
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`A.
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`The Court’s Construction Applies the Definition of “Routing Message” in the
`Specification, and VoIP-Pal’s Recycled Arguments Fail to Demonstrate Any
`Error.
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`As Amazon explained in its Opening Claim Construction Brief (ECF No. 65 at 11) and at
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`the oral argument (Ex. A at 4:12-5:23), the ’606 patent defines “routing message” by stating that
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`a “generic” routing message has three non-optional fields – a callee username field, a route field,
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`and a time-to-live field (’606 patent at 21:47-60; id. at Fig. 15). A generic routing message does
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`not describe just a single embodiment but rather indicates the characteristics of all routing mes-
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`sages. (ECF No. 65 at 11-12.) Consistent with that definition, Amazon demonstrated that every
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`embodiment of the invention in the ’606 patent disclosed a routing message that contained all three
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`of those non-optional fields. Amazon further demonstrated that while the Summary of the Inven-
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`tion repeatedly used permissive language to describe different features, the Summary did not use
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`permissive language when describing that the routing message contains those three required fields.
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`(Ex. A at 6:11-7:6.)
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`The parties fully briefed this issue, with Amazon submitting opening and reply briefs (ECF
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`No. 65 at 11-13; ECF No. 71 at 6-7) and VoIP-Pal submitting response and sur-reply briefs (ECF
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`No. 69 at 13-15; ECF No. 72 at 6-7.) The issue was also discussed extensively at the Markman
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`hearing. (See generally Ex. A (discussing throughout the hearing whether “routing message” in-
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`cludes a time-to-live field).) At the conclusion of that hearing, the Court held that “the construction
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`of ‘routing message’ should include a message that includes a callee username, a route field and a
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`time to live field.” (Id. at 25:25-26:3.) In asking the Court to revisit that ruling, VoIP-Pal does no
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`more than reiterate the same arguments it presented—and the Court rejected—the first time
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`around.
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`1.
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`None of VoIP-Pal’s References to the Specification Demonstrate any
`Error with the Court’s Claim Construction.
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`VoIP-Pal first argues that the time-to-live field “concerns a billing-related concept, inde-
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`pendent from the callee and route fields.” (Mot. at 4.) Even if that were true,3 it would not change
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`that “routing message” is defined to contain all three fields, that the summary of the invention says
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`that it contains all three fields, and that every disclosed embodiment of a routing message contains
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`all three fields. The invention made and conveyed to the public through the specification controls
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`when construing the claims.
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`VoIP-Pal next asserts that the time to live is not an essential aspect of routing a call and
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`that “there is an entire section of the specification devoted to determining TTL that has nothing to
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`do with routing.” (Mot. at 4.) As support for that assertion, VoIP-Pal cites 28:45-31:40 of the
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`’606 patent. (Id. at n.14.) But immediately following that section of the specification is a discus-
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`sion of how to calculate the “cost per second” for a call. (’606 patent at 31:41-34:51.) The time
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`3 VoIP-Pal’s assertion that a call’s time to live is independent of the route is not true because
`calculating the time to live for a particular call depends in part on the route of the call and the costs
`per second for communicating over that route. (See, e.g., ’606 patent at 30:47-64 (explaining that
`the time to live depends, in part, on the cost per second for a call); id. at 31:41-61 (explaining that
`cost per second depends on the route).)
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`to live depends, in part, on the cost per second for a call (’606 patent at 30:47-64) and the cost per
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`second depends, in part, on the call route (see, e.g., id. at 31:41-46). Thus, contrary to VoIP-Pal’s
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`assertion, there is a direct relationship between the time to live and the route.
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`VoIP-Pal then incorrectly asserts that the time-to-live field is used only in one embodiment
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`of the invention. (Mot. at 4.) But as Amazon demonstrated previously, every embodiment of a
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`“routing message” disclosed in the patent includes a time-to-live field4, for example:
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`4 The ’606 patent does not disclose a single embodiment of a routing message that excludes a
`time-to-live field or states that it is optional. While not every single mention of a routing message
`in the specification is followed by the statement that it contains a time-to-live field, that does not
`constitute a disclosure of an embodiment lacking a time-to-live field.
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`(See also ’606 patent at 6:1-11, 11:45-50, 12:1-4, 12:19-21, 21:11-29, 21:47-51, 21:61-22:2,
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`25:11-60, 27:31-43 (all discussing a routing message that includes the time-to-live field).)
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`While VoIP-Pal points out that some calls may be free (Mot. at 4-5), the patent never says
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`that a routing message for such calls can exclude a time-to-live field. Instead, the ’606 patent
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`explains that the time-to-live field for such calls is set to its maximum value, effectively placing
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`no limit on the call’s duration. (See, e.g., ’606 patent at 21:10-29, 28:60-66, 29:66-30:1, 30:40-
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`45, Fig. 8A (block 350), Fig. 16, Fig. 33A (block 702).) That routing messages for free calls still
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`include a time-to-live field further confirms that the field is a non-optional part of the “routing
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`message.” VoIP-Pal argues that the specification does not discuss “computing” the time to live in
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`a section titled “Subscriber to Subscriber Calls Between Different Nodes” (Mot. at 5), but that is
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`misleading because the time to live for such intra-network calls does not need to be computed.
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`Instead, as with the other free calls, the specification explains that time to live for such a call is set
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`to the maximum value (’606 patent at 21:24-29), once again confirming that the time-to-live field
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`is a non-optional part of every routing message.
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`Finally, VoIP-Pal quotes another portion of the specification, asserting that it shows the
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`time-to-live field is not used to route a message. (Mot. at 5-6 (quoting ’606 patent at 27:40-59).)
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`That part of the specification begins “Referring back to FIG. 1, the routing message whether of the
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`type shown in FIG. 16, 25 or 32, is received at the call controller . . . .” (’606 patent at 27:40-42).
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`As shown in the figures above, each of those routing messages in Figures 16, 25, and 32 includes
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`a time-to-live field, thus further confirming that the time to live field is a non-optional portion of
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`the “routing message.”
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`2.
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`VoIP-Pal’s “Claim Differentiation” Argument Was Correctly
`Rejected by the Court.
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`While VoIP-Pal did not raise a claim differentiation argument in either of its Markman
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`briefs (see ECF No. 69 at 13-15; ECF No. 72 at 6-7), it did raise such an argument at the Markman
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`hearing. (Ex. A at 15:4-6 (“And Your Honor, we recognize that we are -- that what I’ve just
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`showed is effectively a claim differentiation argument.”).) At the hearing, Amazon refuted VoIP-
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`Pal’s untimely claim differentiation argument by demonstrating that there were other limitations
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`added in the cited dependent claims, thus completely undercutting VoIP-Pal’s argument that the
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`time-to-live field was the basis for differentiating the independent and dependent claims. (Ex. A
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`at 23:7-24:5.) World Class Tech. Corp. v. Ormco Corp., 769 F.3d 1120, 1125-26 (Fed. Cir. 2014)
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`(holding that claim differentiation did not apply where the dependent claim contained other limi-
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`tations on its scope); see also Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1359
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`(Fed. Cir. 2012) (“[C]laim differentiation is not a hard and fast rule and will be overcome by a
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`contrary construction dictated by the written description or prosecution history.”) (internal quota-
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`tion omitted).
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`In its motion for reconsideration, VoIP-Pal rehashes this same argument. Just as it did at
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`the Markman hearing (Ex. A at 14:20-25; Ex. B at slides 10-11), VoIP-Pal points to independent
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`claim 1 and dependent claim 18 of U.S. Patent No. 9,179,005 (“the ’005 patent”). (Mot. at 7-8.)
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`But claim 18 of the ’005 patent recites that the routing message contains both a “time value” (which
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`is the time to live) and a “timeout value,” which holds a different time measurement. (Mot. at 8
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`(quoting claim 18 of the ’005 patent).) Because claim 18 recites the additional “timeout value,”
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`which is not one of the mandatory fields of the generic routing message, VoIP-Pal’s argument that
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`the time-to-live limitation must differentiate the inventions recited in claims 1 and 18 fails. World
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`Class Tech., 769 F.3d at 1125-26.
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`In its slides for the Markman hearing, VoIP-Pal also quoted the entirety of claim 1 of U.S.
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`Patent No. 11,171,864 (“the ’864 patent”), though VoIP-Pal’s counsel chose not to address that
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`claim during the argument. (Ex. B at slide 12.) In its motion for reconsideration, VoIP-Pal now
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`addresses claim 1 of the ’864 patent to argue that the claims of that patent “are specifically directed
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`to producing a routing message that includes a TTL field for holding a maximum allowable time
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`for a communications session to be conducted.” (Mot. at 7.) But claim 1 recites much more than
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`just that,5 as it sets forth a detailed method for calculating the time to live. (Ex. B at slide 12.)
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`That the ’864 patent claims a detailed method for calculating the time to live provides no support
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`for VoIP-Pal’s argument that the time-to-live field is not a mandatory part of the “routing message”
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`recited in the ’606 patent.
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`VoIP-Pal also improperly presents for the first time (Mot. at 6-7) a list of titles from patents
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`related to the ’606 patent and a written opinion of the PCT international searching authority, all of
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`which was available to VoIP-Pal at the time of the original briefing. AstraZeneca Pharms. LP v.
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`Handa Pharms., LLC, No. A-10-CA-259-LY, 2010 WL 11506721, at *1 (W.D. Tex. July 27,
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`2010) (“As various district court judges have eloquently stated, motions to reconsider based on
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`recycled arguments only serve to waste the resources of the court, and are not the proper vehicle
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`to rehash old arguments or advance legal theories that could have been presented earlier.”) (in-
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`ternal quotations omitted, emphasis added); Krim v. pcOrder.com, Inc., 212 F.R.D. 329, 331 (W.D.
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`Tex. 2002) (explaining that motions for reconsideration “serve a narrow purpose: to permit a party
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`5 While VoIP-Pal’s motion quotes just a small portion of claim 1 of the ’864 patent (Mot. at 7-
`8), the entirety of the claim sets forth a detailed method of calculating the time to live, as shown
`in VoIP-Pal’s Markman hearing slides (Ex. B at 12).
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`to correct manifest errors of law or fact, or to present newly discovered evidence”) (emphasis
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`added). The titles of the various patents and the fact that some of the patents, such as the ’864
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`patent, recite detailed methods for calculating the time to live, in no way refutes that the time to
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`live is a mandatory part of the “routing message.” Similarly, that the PCT opinion divided the
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`claims into groups, including claims directed to:
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`• “a call routing controller for facilitating communications between callers and
`callees in a communications system comprising a plurality of nodes in which,
`in response to initiation of a call, uses call classification criteria to classify the
`call as a public network call or a private network call, and produces accordingly
`a routing message;” and
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`• “determining a time to permit a communication session to be conducted, the
`determination based on calculating a cost per unit time, a participant’s billing
`pattern, and the quotient of a funds balance held by the participant.”
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`(ECF No. 89-4 at 3.) That the later claims were directed to a detailed method of calculating a time
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`to live does not mean that the routing message does not include a mandatory time-to-live field, and
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`nothing in that PCT document suggests that the international authority construed any term, much
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`less did so according to U.S. patent law.
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`IV. CONCLUSION
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`VoIP-Pal’s motion for reconsideration just repackages arguments the Court has already
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`rejected. VoIP-Pal has not identified any basis for the Court to revisit its construction of “routing
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`message,” nor has it identified any error in that construction. VoIP-Pal’s motion should be denied.
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`Dated: March 22, 2023
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`Respectfully submitted,
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`/s/ Daniel T. Shvodian
`
`M. Craig Tyler, Bar No. 00794762
`Perkins Coie LLP
`500 W 2nd St, Suite 1900
`Austin, TX 78701-4687
`Tel. No. 737.256.6113
`Fax No. 737.256.6300
`
`Daniel T. Shvodian, Admitted Pro Hac Vice
`Christopher Kelley, Admitted Pro Hac Vice
`Perkins Coie LLP
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Tel. No. 650.838.4300
`Fax No. 650.838.4350
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`ATTORNEYS FOR DEFENDANTS
`Amazon.com, Inc.; Amazon.com Services
`LLC; and Amazon Web Services, Inc.
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`Case 6:20-cv-00272-ADA Document 91 Filed 03/22/23 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served March 22, 2023 to all counsel of record, via the Court’s CM/ECF
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`system.
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`/s/ Daniel T. Shvodian
`Daniel T. Shvodian
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