Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CIVIL ACTION NO. 6:20-cv-00272-ADA
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON WEB SERVICES, INC.
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`Defendants.
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`PLAINTIFF VOIP-PAL.COM, INC.’S REPLY IN SUPPORT OF OPPOSED MOTION FOR
`PARTIAL RECONSIDERATION OF THE COURT’S CLAIM CONSTRUCTION
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`i
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 2 of 14
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................................. 1 
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`ARGUMENT ................................................................................................................................... 2 
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`I. 
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`II. 
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`A. 
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`The Specification Lacks Words Restricting A “Routing Message” To Having A Time-To-Live
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`Field. 2 
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`B. 
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`The Specification And The Claims Show That The Time-To-Live Field Has Nothing To Do
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`With Routing. .......................................................................................................................................... 4 
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`C. 
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`Claim Differentiation Shows That The Claimed Routing Message Does Not Require A Time-
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`To-Live Field. ......................................................................................................................................... 6 
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`III.  CONCLUSION ................................................................................................................................ 7 
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 3 of 14
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`TABLE OF AUTHORITIES
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`Cases
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`Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246 (Fed. Cir. 2011) ............................ 4
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) .................................................... 3
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`Liebel- Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004)...................................................... 3
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`MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir. 2007) ......................................... 5
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`Pisony v. Commando Constr., Inc., No. W-17-CV-00055-ADA, 2019 U.S. Dist. LEXIS 31524 (W.D.
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`Tex. Jan. 23, 2019) .................................................................................................................................. 3
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 4 of 14
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`ABBREVIATION
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`TABLE OF ABBREVIATIONS
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`TERM
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`VoIP-Pal
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`Amazon
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`Defendant
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`Plaintiff VoIP-Pal.com, Inc.
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`Amazon.com, Inc., Amazon.com Services,
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`LLC, and Amazon Web Services, Inc.
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`Amazon
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`The ’606 patent or the patent-in-suit
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`U.S. Patent No. 10,218,606
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`The ’005 patent
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`The ’864 patent
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`U.S. Patent No. 9,179,005
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`U.S. Patent No. 11,171,864
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 5 of 14
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`I.
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`INTRODUCTION
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`Contrary to what Amazon claims, VoIP-Pal has a proper basis for reconsideration because
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`requiring a “routing message” to include a time-to-live field is clearly erroneous. Amazon repeatedly
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`argues that a time-to-live field is a non-optional field of a routing message. But this argument is
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`nothing more than clever misdirection. The Federal Circuit has unequivocally held that in order to
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`limit the claims to a single embodiment, the patentee must have had a clear intent to limit the claim
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`scope using words or expressions of manifest exclusion or restriction. Amazon identifies no such
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`words or expressions in the ’606 patent. Rather, the ’606 patent claims evidence the patentee’s intent
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`not to limit the claims to an embodiment of a routing message that has a time-to-live field. Thus, this
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`limitation is clearly erroneous under the law.
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`Even if the Court determines that VoIP-Pal has not met the reconsideration standard, which it
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`should not, the Court can still modify its construction through rolling claim construction. VoIP-Pal
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`notes this authority in its Motion and Amazon neglects to address it.1
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`Finally, Amazon mischaracterizes the parties’ dispute at the Claim Construction Hearing. At
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`the hearing, the parties argued whether the Court should adopt VoIP-Pal’s proposed construction of
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`“routing message” (plain and ordinary meaning) or Amazon’s proposed construction (a message that
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`includes a callee user name field, a route field, and a time-to-live field). The parties did not argue
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`whether “routing message” should be construed to have only two fields (a callee user name field and a
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`route field) and not a third time-to-live field. VoIP-Pal’s Motion merely asks the Court to fine tune its
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`construction of “routing message,” not to reconsider the parties’ original dispute, and should be
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`granted.
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`1 Dkt. No. 89 at 3-4.
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 6 of 14
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`II.
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`ARGUMENT
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`A.
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`The Specification Lacks Words Restricting A “Routing Message” To Having A
`Time-To-Live Field.
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`The central premise of Amazon’s argument—that the specification defines a routing message to
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`have three non-optional fields is clearly erroneous. Amazon relies on Figure 15 of the ’606 patent to
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`support this assertion.2 Amazon contends that because Figure 15 labels two fields of a routing
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`message as “optional” that the other fields shown are non-optional.3 But under Amazon’s theory,
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`Figure 15 shows four non-optional fields—a callee username field, a route field, a time-to-live field,
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`and an other field—not three. The portion of the specification that Amazon relies on to support its
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`argument that a generic routing message has three non-optional fields expressly states that such a
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`message has at least a fourth field:
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`Referring to FIG. 15, a generic routing message is shown generally at 352 and includes
`an optional supplier prefix field 354, and optional delimiter field 356, a callee user
`name field 358, at least one route field 360, a time-to-live field 362 and other fields
`364.4
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`Thus, Amazon’s own evidence undercuts its argument that a routing message has three non-optional
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`fields. The specification explains that a routing message is used to route a call and neither the other
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`field nor the time-to-live field play any part in that functionality. The fact that these fields are not
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`labeled as optional in the Figure 15 embodiment of the invention does not change the character of what
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`a routing message is, what it does, and how it should be properly construed.
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`Amazon misleadingly and erroneously asserts that the Summary of the Invention does not “use
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`permissive language when describing that the routing message contains those three required fields.”5
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`Amazon purposefully does not assert the Summary uses restrictive language to characterize a routing
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`2 Dkt. No. 91 at 2.
`3 Id.
`4 Dkt. No. 1-1 at 21:47-51 (emphasis added); see also Ex. 7 at 3.
`5 Dkt. No. 91 at 2.
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 7 of 14
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`message. That is because not using permissive language is not the same as using restrictive language.
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`To limit a claim term to a single embodiment, Amazon must demonstrate that the patentee had “a clear
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`intent[] to limit the claim scope using words or expressions of manifest exclusion or restriction.”6
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`Amazon, however, identified no such words of exclusion or restriction, either in its claim construction
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`briefs, in its Opposition, or at the Claim Construction Hearing. Indeed, the portion of the Summary
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`that Amazon relied on at the Claim Construction Hearing to make its non-use of permissive language
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`argument contains no words of restriction.7 In fact, that portion of the Summary indicates that the
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`routing message has a timeout value, which is not a field that Amazon claims a routing message
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`requires; yet elsewhere, permissive language is used.8 Without words expressly requiring a routing
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`message to have a time-to-live field, the Court’s construction of this term is clearly erroneous.
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`The Court has previously rejected attempts to limit claims to a single embodiment where the
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`defendant failed to identify words of exclusion or restriction. In Pisony v. Commando Constr., Inc.,
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`the Court applied the Federal Circuit’s holding in Hill-Rom Services, Inc. v. Stryker Corp. and rejected
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`the defendants’ argument that their construction was required because the figures of the patent-in-suit
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`show only a single embodiment.9 The defendants did not identify any words of exclusion or restriction
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`but rather merely attempted to advance a construction that would preclude a finding of infringement:
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`The Court finds no ‘words or expressions of manifest exclusion or restriction’ limiting
`the extendible mast to a vertical pole. Defendants have not and cannot now make or
`support any such allegation. The Court determines that the intrinsic record is devoid of
`an intent to limit the ‘extendible mast’ to a vertical pole; rather, this is an effort on the
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`6 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) (emphasis added).
`7 See Ex. 7 at 9 (citing ’606 patent at 6:1-11).
`8 Id.; compare Dkt. No. 1-1 at 3:49-54 (a parallel feature description that instead uses permissive
`language (“may”)).
`9 See Pisony v. Commando Constr., Inc., No. W-17-CV-00055-ADA, 2019 U.S. Dist. LEXIS 31524, at
`*10-11 (W.D. Tex. Jan. 23, 2019).
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 8 of 14
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`part of Defendants to obtain a construction that would preclude infringement on its
`part.10
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`The same is true in this case—Amazon identifies no words restricting a routing message to
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`having a time-to-live field yet advocates for a construction that it believes precludes
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`infringement.11 Because Hill-Rom Services, Inc. v. Stryker Corp. equally applies to the facts in
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`this case, the Court’s construction of “routing message” is clearly erroneous and should be
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`modified to exclude the time-to-live field.
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`B.
`The Specification And The Claims Show That The Time-To-Live Field Has
`Nothing To Do With Routing.
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`Amazon again uses selective wording in trying to tie the time-to-live field to the routing
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`message. Tellingly, Amazon never refutes VoIP-Pal’s argument that the time-to-live field has nothing
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`to do with routing. Instead, Amazon argues that calculating a time to live for a particular call depends
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`in part on the route of the call.12 But this argument is irrelevant. The relevant point is the reverse—the
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`route of the call does not depend on the time to live. The portion of the specification that is calculating
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`a cost per second for a call proves this point. Determining how to route a call does not depend on how
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`much the call costs. Amazon cites no evidence that a time to live is needed to route a call.
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`Amazon’s heavy reliance on Figures 15, 16, 25, and 32 of the ’606 patent to assert that every
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`embodiment of a routing message includes a time-to-live field also injects error into the construction.
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`Drawings in a patent need not illustrate the full scope of the invention.13 Defining an invention by
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`what is shown in the figures precisely invokes the dangers of importing limitations from the
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`specification into the claims that the Federal Circuit has expressly warned against:
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`10 Id.
`11 See Dkt. No. 92 (arguing that the Court’s Claim Construction Order is case dispositive on the issue
`of infringement).
`12 Dkt. No. 91 at 3, n.3.
`13 See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011).
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 9 of 14
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`[P]atent coverage is not necessarily limited to inventions that look like the ones in the
`figures. … To hold otherwise would be to import limitations onto the claim from the
`specification, which is fraught with danger.”14
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`Nowhere does the patent use words that restrict “a routing message” to what is shown in Figures 15,
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`16, 25, and 32. Rather, it states expressly that the Figures “illustrate embodiments” of the invention
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`and that each of these figures is only a “representation” of a routing message.15 Amazon pointlessly
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`argues that the ’606 patent does not disclose an embodiment of a routing message that excludes a time-
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`to-live field or states that it is optional.16 But again, the relevant inquiry is whether the specification
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`states that the time-to-live field is required, which the specification does not.
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`Amazon’s claim that the patent never says that a routing message can exclude a time-to-live
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`field also is not accurate.17 The plain claim language indicates that a routing message need not have a
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`time-to-live field. All the claims require is that the routing message identify a route, as shown by the
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`claim language introducing a routing message in each independent claim:
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`[Claims 1 and 19] producing a routing message identifying a first network address
`associated with the first network element …
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`producing a routing message identifying a second network address associated with the
`second network element18
`…
`[Claim 21] produce a routing message identifying a first Internet Protocol (IP) network
`address associated with the first network element …
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`produce a routing message identifying a second Internet Protocol (IP) network address
`associated with the second network element …19
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`Contrary to what Amazon claims, the specification’s description of setting a time to live to a maximum
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`value for free calls and subscriber-to-subscriber calls does not confirm that the time-to-live field is a
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`14 See MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).
`15 See Dkt. No. 1-1 at 11:1-5, 11:9-10, 11:45-50, 12:1-4, 12:19-21.
`16 Dkt. No. 91 at 4; compare ’Dkt. No. 1-1 at 3:49-54 (a routing message “may” have a “time value”).
`17 Dkt. No. 91 at 5.
`18 Dkt. No. 1-1 at 37:57-60, 37:62-65, 40:24-26, 40:29-31 (emphasis added).
`19 Id. at 41:12-14, 41:17-20 (emphasis added).
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 10 of 14
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`non-optional part of a routing message.20 The claims say nothing about free calls. Although the
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`claims cover subscriber-to-subscriber calls, the claims say nothing about setting a time to live to a
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`maximum value for such calls; all they require is producing a routing message that identifies a second
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`network address or a second Internet Protocol network address.21 In other words, the plain claim
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`language shows that the inventors never intended that the claimed routing message include a time-to-
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`live field because it is not required to practice the claims.
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`Finally, Amazon contests that column 27, lines 40-59 of the ’606 patent supports VoIP-Pal’s
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`argument that the time-to-live field is not used to route a message.22 But Amazon fails to explain how
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`this portion of the specification, or any portion of the specification for that matter, shows that the time-
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`to-live field is used, let alone required, to route a message. Instead, Amazon merely states that because
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`this portion of the specification refers to Figures 16, 25, and 32 that that is somehow sufficient to show
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`that the time-to-live field is used to route a message. It is not. The specification expressly states the
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`time-to-live field is used to “hold[] a value representing the number of seconds the call is permitted to
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`be active, based on subscriber available minutes and other billing parameters.” 23 Amazon cannot
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`explain how that value impacts the routing of a message—it does not.
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`C.
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`Claim Differentiation Shows That The Claimed Routing Message Does Not
`Require A Time-To-Live Field.
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`Amazon’s arguments that claim differentiation does not apply lack merit. First, Amazon
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`argues that it is the timeout value limitation of dependent claim 18 of the ’005 patent that
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`differentiates the claim from independent claim 1 of the ’005 patent.24 But Amazon fails to inform
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`the Court what the timeout value is. It represents “a time that the call controller should wait for a
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`20 Dkt. No. 91 at 5.
`21 Dkt. No. 1-1 at 37:57-60, 37:62-65, 40:24-26, 40:29-31, 41:12-14, 41:17-20.
`22 Dkt. No. 91 at 5.
`23 Dkt. No. 1-1 at 21:55-60.
`24 Dkt. No. 91 at 6-7.
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 11 of 14
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`response from the associated gateway before giving up and trying the next gateway.”25 Thus, like the
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`time value recited in claim 18, which Amazon agrees is the time to live, the timeout value also has
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`nothing to do with determining the route of the call. In other words, both the time value and the
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`timeout value differentiate claim 18 of the ’005 patent from claim 1 of the ’005 patent. The
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`information needed to route the call—the identity of a network address or gateway—is contained in
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`claim 1 of the ’005 patent just as it is in claim 1 of the ’606 patent.26
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`Second, Amazon argues that claim differentiation does not apply between claim 1 of the ’606
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`patent and claim 1 of the ’864 patent because the latter recites more than just a time to live; it also
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`recites additional limitations for calculating the time to live.27 But that distinction proves VoIP-Pal’s
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`point. Claim 1 of the ’864 patent claims an embodiment where the time of the call is limited whereas
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`claim 1 of the ’606 patent does not. There is simply no reason that the embodiment of the routing
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`message in claim 1 of the ’606 patent must have a time-to-live field because that field is not used to
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`perform any of the limitations of the ’606 patent claims.
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`Third, despite what Amazon claims, the International Searching Authority’s opinion—that the
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`original claims directed to operating a call routing controller to produce a routing message were a
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`distinct invention from the original claims directed to determining a time to permit a communications
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`session to be conducted—is evidence that the embodiment of a routing message claimed in the ’606
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`patent does not include a time-to-live field for the same reason. The time-to-live field serves no
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`purpose in that embodiment because it is not used to route a call. In fact, it is not used at all.
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`III. CONCLUSION
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`In conclusion, the Court should reconsider the term “routing message” and construe the term to
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`mean “a message that includes a callee user name field and a route field.”
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`25 Dkt. No. 1-1 at 24:67-25:3.
`26 Dkt. No. 89 at 8 (comparison table).
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 12 of 14
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`27 Dkt. No. 91 at 7.
`27 Dkt. No. 91 at 7.
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 13 of 14
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`Dated: March 29, 2023
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`Respectfully submitted,
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` By: /s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@gikkaslaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
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`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
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`Case 6:20-cv-00272-ADA Document 93 Filed 03/29/23 Page 14 of 14
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
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`electronic service are being served with a copy of PLAINTIFF VOIP-PAL.COM, INC.’S REPLY IN
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`SUPPORT OF OPPOSED MOTION FOR PARTIAL RECONSIDERATION OF THE COURT’S
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`CLAIM CONSTRUCTION via the Court’s CM/ECF system under the Federal Rules of Civil
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`Procedure and Local Rule CV-5(b)(1) this 29th day of March, 2023.
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`By: /s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
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