Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 1 of 25 PageID# 1878
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINL l
`Norfolk Division
`
`FILED
`
`OCT 2 6 2012
`
`CLERK, US DISTRICT COURT
`NORFOLK. VA
`
`INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.,
`Plaintiff,
`
`VIVOX, INC.,
`Defendant,
`
`and
`
`INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.,
`Plaintiff,
`
`STALKER SOFTWARE, INC.,
`Defendant.
`
`CiviINo.2:12cv7
`
`Civil No. 2:12cv9
`
`OPINION AND ORDER
`
`These cases involve actions alleging infringement of five patents owned by plaintiff
`
`Innovative Communications Technologies, Inc. ("Innovative") which disclose an invention
`
`concerning internet telephony technology, also known as Voice Over Internet Protocol ("VoIP").
`
`The first patent is entitled "Point-to-Point Internet Protocol" and was issued on August 22,2000, as
`
`United States Patent No. 6,108,704 (the '"704 patent"). The second patent is entitled "Point-to-Point
`
`Computer Network Communication Utility Utilizing Dynamically Assigned Network Protocol
`
`Addresses" and was issued on October 10,2000, as United States Patent No. 6,131,121 (the '"121
`
`patent"). The third patent is entitled "Graphic User Interface for Internet Telephony Application"
`
`and was issued on December 28, 1999, as United States Patent No. 6,009,469 (the '"469 patent").
`
`The fourth patent is entitled "Point-to-Point Internet Protocol" and was issued on March 2,2004, as
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 2 of 25 PageID# 1879
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 2 of 25 Page|D# 1879
`
`United States Patent No. 6,701,365 (the “‘365 patent”). The fifth patent is entitled “Establishing a
`
`Point-to-Point Internet Communication” and was issued on January 28, 2003, as United States Patent
`
`No. 6,513,066 (the “‘066 patent”). The original patent application disclosing the invention was filed
`
`on September 25, 1995, and was issued as the>‘704 patent. The other four patents were issued from
`
`continuing patent applications, each of which claims priority to the original September 25, 1995,
`
`application.
`
`Presently before the Court is the claim construction of several terms found in claims of these
`
`five patents. The Court’s construction of these terms is explained herein.
`
`1. BACKGROUND
`
`A. The Invention
`
`Innovative, a Delaware corporation with its alleged principal place ofbusiness in Virginia, is
`
`the assignee of the ‘704, ‘I21, ‘469, ‘365, and ‘O66 patents.
`
`In the preferred embodiment, these
`
`patents describe a method for delivering real-time “point-to-point” voice communications services
`
`over the Internet, similar to direct-dial voice calls made over traditional telephone networks. The
`
`invention disclosed in these patents addresses‘ an apparently common problem in the field of intemet
`
`te1ephony—although real-time “point-to-point” communications are readily supported between
`
`computers with fixed Internet Protocol (IP) addresses, such communications are not so easily
`
`established between computers with dynamically assigned IP addresses, which may change as often
`
`as every time the computer user connects to the Internet. The plaintiffhas suggested an apt analogy
`
`in which one person seeks to initiate a telephone call to a second person whose telephone number
`
`changes after each call. The ‘704 patent provides a method for overcoming this problem by
`
`providing what amounts to an electronic phonebook or directory assistance service, permitting the
`
`first computer to obtain the second computer’s current IP address (or phone number) from a
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 3 of 25 PageID# 1880
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 3 of 25 Page|D# 1880
`
`connection sewer (the electronic phonebook or directory assistance service), and then initiate “point-
`
`to-point” voice communications (a direct-dial call) between the two computers over the Internet,
`
`without any further assistance or intervention by the connection server. The other four patents
`
`describe refinements or enhancements to the invention as originally disclosed.
`
`B. Procedural History
`
`On January 4, 2012, Innovative filed suit against defendant Vivox, Inc. (“Vivox”), alleging in
`
`a five-count complaint that Vivox infringed the ‘704, ‘I21, ‘469, ‘365, and ‘066 patents by “selling,
`
`offering to sell, and using VoIP products and/or services, such as VoiceEverywhere Game Connect.”
`
`That same day, Innovative also filed suit against defendant Stalker Software, Inc., doing business as
`
`CommuniGate Systems (“CommuniGate”), alleging in a three-count patent that CommuniGate
`
`infringed the ‘704, ‘365, and ‘066 patents by “selling, offering to sell, and using VoIP products
`
`and/or services, such as the CommuniGate 1_’ro Server.” Innovative also sued a third defendant,
`
`ooVoo, LLC (“ooVoo”), but that action was settled and voluntarily dismissed by stipulation on
`
`October 11, 2012.
`
`In a joint statement submitted to the Court on August 7, 2012, the parties identified twenty-
`
`one disputed claim terms, grouped into fifteen sets of similar or related terms. The parties were able
`
`to agree, however, that the claim term “process,” found throughout the patents-in-suit, means “a
`
`running instance of a computer program or application.”
`
`On September 14, 2012, each side filed its claim construction brief and supporting exhibits.
`
`In their claim construction brief, the defendants conceded that three of the original disputed claim
`
`terms need not be construed as their meaning is clear based upon the plain and ordinary meaning of
`
`the terms. These terms include: “in response to an identification ofone ofthe entries by a requesting
`
`process providing one of the identifier and the network protocol address to the requesting process
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 4 of 25 PageID# 1881
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 4 of 25 Page|D# 1881
`
`providing one of the identifier and the network protocol address to the requesting process”;
`
`“retrieving the IP address of the second unit from the database using the connection server”; and
`
`“retrieving the IP address of the second processing unit in response to the positive on-line status of
`
`the second processing unit.”
`
`On October 10, 2012, the Court held a Markman hearing. At hearing, the defendants further
`
`conceded that an additional eight of the original disputed claim terms need not be construed as their
`
`meaning is clear based upon the plain and ordinary meaning of the terms. These terms include:
`
`99, u
`“query”; “server process ,
`
`97. as
`server , address server”; “database”; “program code configured to
`
`receive the current network protocol address of one of the processes coupled to the network, the
`
`network protocol address being received by said one of the processes from an Internet access
`
`server”; “program code configured to receive an identifier associated with said one process”; and
`
`“program code configured to receive queries or one of the network protocol address and the
`
`associated identifier of said one of the processes from other processes over the computer network at
`
`the server, and to allow the establishment of a packet-based point-to-point communication between
`
`said one of the processes and one of said other processes.”'
`
`C. Disputed Claim Terms
`
`Eleven claim terms remain in dispute:
`
`1. “point to point” found in claim 1 of the ‘704 patent, claims 8, 13, and 14 of the ‘I21
`patent, claim 5 of the ‘469 patent, claims 1 and 3 of the ‘365 patent, and claims 1, 2,
`6, and 7 of the ‘066 patent;
`
`2. “establishing a point-to-point communication” found in claim 1 of the ‘704 patent,
`claims 8, 13, and 14 of the ‘I21 patent, claim 5 of the ‘469 patent, and claims 1, 2, 6,
`and 7 of the ‘066 patent;
`
`' ooVoo appears to have been the defendant primarily concerned with these claim terms.
`ooVoo participated in the claim construction briefing process, but it did not participate in the
`Markman hearing on October 10, 2012.
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 5 of 25 PageID# 1882
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 5 of 25 Page|D# 1882
`
`3. “to allow the establishment of a packet-based point-to-point communication” found
`in claims 1 and 3 of the ‘365 patent;
`
`4. “network protocol address” found in claims 1, 33, 36, 38, and 41 of the ‘704 patent,
`claims 8, 13, and 14 of the ‘I21 patent, claims 5 and 6 of the ‘469 patent, and claims
`1 and 3 of the ‘365 patent;
`
`5. “dynamically assigned network protocol address” found in claim 33 of the ‘704
`patent and claim 8 of the ‘ 121 ‘patent;
`
`6. “computer usable medium” found in claims 1 and 38 of the ‘704 patent and claim 1
`of the ‘365 patent;
`
`7. “assigned to the process upon connection to the computer network” found in claims
`33 and 38 of the ‘704 patent;
`
`8. “received by the first process following connection to the computer network” found
`in claim 1 of the ‘704 patent and claims 13 and 14 of the ‘I21 patent;
`
`9. “off-line message” found in claims 3 and 8 of the ‘066 patent;
`
`10. “online message” or “on-line message” found in claims 6 and 7 of the ‘O66 patent;
`and
`
`1 1. “providing one of the network. protocol address and the associated identifier of said
`one process” found in claim 3 of the ‘365 patent.
`
`II. APPLICABLE LAW
`
`Patents consist of “claims,” and claim construction is a matter of law to be determined by the
`
`Court. Markman v. Westview Instruments Inc., 517 U.S. 370, 388 (1996). The purpose of claim
`
`construction is to “determin[e] the meaning and scope ofthe patent claims asserted to be infringed.”
`
`
`Markman v. Westview Instruments Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517
`
`U.S. 370 (1996). “It is a bedrock principle of patent law that the claims of a patent define the
`
`invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Com, 415 F.3d
`
`1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted).
`
`“The words of a claim are generally given their ordinary and customary meaning.” Q at
`
`1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would
`
`have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the
`
`5
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 6 of 25 PageID# 1883
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 6 of 25 Page|D# 1883
`
`effective filing date of the patent application.” Q at I313. Moreover, “the person of ordinary skill
`
`in the art is deemed to read the claim term not only in the context ofthe particular claim in which the
`disputed term appears, but in the context of the entire patent, including the specification.” Q
`
`“In some cases, the ordinary meaning of claim language as understood by a person of skill in
`
`the art may be readily apparent even to lay judges, and claim construction in such cases involves
`
`little more than application ofthe widely accepted meaning ofcommonly understood words.” Id, at
`
`1314. As the Federal Circuit has repeatedly held, “a district court is not obligated to construe terms
`
`with ordinary meanings, lest trial courts be inundated with requests to parse the meaning of every
`
`word in the asserted claims.” 02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d
`
`1351, 1360 (Fed. Cir. 2008) (footnote omitted); _s_e_e_al_sQ i_d_. at 1362 (“[D]istrict courts are not (and
`
`should not be) required to construe fly limitation present in a patent’s asserted claims. .
`99’
`
`.
`
`. Claim
`
`construction ‘is not an obligatory exercise in redundancy.
`
`) (quoting U.S. Surgical Com. v. Ethicon,
`
`Q, 103 F.3d 1554, 1568 (Fed. Cir. 1997)) (emphasis in original).
`
`In other cases, however, “determining the ordinary and customary meaning of the claim
`
`requires examination of terms that have a particular meaning in a field of art.” mpg, 415 F.3d at
`
`1314. In such cases, the Court must look to “those sources available to the public that show what a
`
`person of skill in the art would have understood disputed claim language to mean. Those sources
`
`include the words of the claims themselves, the remainder of the specification, the prosecution
`
`history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical
`
`terms, and the state of the art.” I_d, (internal quotation marks omitted).
`
`The Court must begin with the intrinsic record, which consists of the claims,
`
`the
`
`specification, and the prosecution history. Markman, 52 F.3d at 979. “Such intrinsic evidence is the
`
`most significant source of the legally operative meaning of disputed claim language.” Vitrionics
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 7 of 25 PageID# 1884
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 7 of 25 Page|D# 1884
`
`Cogp. v. Conceptronic, Inc., 90 F.3d 1576, 1552 (Fed. Cir. 1996). The Court looks first to the claim
`
`language, then “to the rest of the intrinsic evidence, beginning with the specification and concluding
`
`with the prosecution history, if in evidence.” nteractive Gifi Express, Inc. v. Compuserve Inc., 256
`
`F.3d 1323, 1331 (Fed. Cir. 2001).
`
`The Court first looks “to the words of the claims themselves, both asserted and nonasserted,
`
`to define the scope of the patented invention.” , 90 F.3d at 1582. “If the claim language is
`
`clear on its face, then [the Court’s] consideration of the rest of the intrinsic evidence is restricted to
`
`determining if a deviation from the clear language of the claims is specified.” Interactive Gift
`
`fig, 256 F.3d at 1331. As the Federal Circuit has recently reiterated, there are only two
`
`circumstances in which claim interpretation may deviate from the ordinary and customary meaning
`
`of the claim terms: ‘‘I) when a patentee sets out a definition and acts as its own lexicographer, or 2)
`
`when the patentee disavows the full scope of a claim term either in the specification or during
`
`prosecution.” Thomer v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); _
`
`mpg, 415 F.3d at 1316-17; Interactive Gifi Express, 256 F.3d at 1331. “If however the claim
`
`language is not clear on its face, then our consideration of the rest of the intrinsic evidence is
`
`directed to resolving, if possible the lack of clarity.” nteractive Gift Express, 256 F.3d at 1331.
`
`The Court looks next to the specification “to determine whether the inventor has used any
`
`tenns in a manner inconsistent with their ordinary meaning.” Vitrionics, 90 F.3d at 1582. “The
`
`specification contains a written description of the invention that must enable one of ordinary skill in
`
`the art to make and use the invention.” Markman, 52 F.3d at 979. The specification is statutorily
`
`required to describe the claimed invention in “full, clear, concise, and exact terms.” 35 U.S.C.
`
`§ 1 l2(a). It “may reveal a special definition given to a claim term by the patentee that differs from
`
`the meaning it would otherwise possess.
`
`In such cases, the inventor’s lexicography governs.”
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 8 of 25 PageID# 1885
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 8 of 25 Page|D# 1885
`
`Lillig, 415 F.3d at 1316. “In other cases, the specification may reveal an intentional disclaimer, or
`
`disavowal, of claim scope by the inventor.”
`
`“[A]lthough the specification often describes very
`
`specific embodiments ofthe invention, [the Federal Circuit has] repeatedly warned against confining
`
`the claims to those embodiments.” ILL at 1323.
`
`To avoid importing limitations from the specification into the claims, it is
`important to keep in mind that the purposes of the specification are to teach
`and enable those of skill in the art to make and use the invention and to
`provide a best mode for doing so. One of the best ways to teach a person of
`ordinary skill in the art how to make and use the invention is to provide an
`example of how to practice the invention in a particular case. Much of the
`time, upon reading the specification in that context, it will become clear
`whether the patentee is setting out specific examples of the invention to
`accomplish those goals, or whether the patentee instead intends for the claims
`and the embodiments in the specification to be strictly coextensive.
`
`Li. “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually it is
`
`dispositive; it is the single best guide to the meaning of a disputed term.”’ Q at 1315 (quoting
`
`
`Vitrionics 90 F.3d at 1582).
`
`In addition to the specification, the Court “should also consider the patent’s prosecution
`
`history, if it is evidence.” Markman, 52 F.3d at 980. The prosecution history “consists of the
`
`complete record of the proceedings before the PTO and includes the prior art cited during the
`
`examination of the patent.” i, 415 F.3d at 1317; Vitrionics, 90 F.3d at 1582. “Like the
`
`specification, the prosecution history provides evidence ofhow the PTO and the inventor understood
`
`the patent,” but “because the prosecution history represents an ongoing negotiation between the PTO
`
`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`
`specification and thus is less useful for claim construction purposes.” mg, 415 F.3d at 1317.
`
`“Nonetheless, the prosecution history can often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention and whether the inventor limited the
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 9 of 25 PageID# 1886
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 9 of 25 Page|D# 1886
`
`invention in the course of prosecution, making the claim scope narrower than it would otherwise be.”
`
`Q
`
`Finally, the Court may, in some cases, consider extrinsic evidence, which “consists of all
`
`evidence external to the patent and prosecution history.” Markman, 52 F.3d at 980. Although
`
`“extrinsic evidence can shed useful light on the relevant art, .
`
`.
`
`. it is less significant than the intrinsic
`
`record in determining the legally operative meaning of claim language.” 1’h_illi_p_s, 415 F.3d at 1317
`
`(internal quotation marks omitted). Generally, the Court may turn to extrinsic evidence to construe a
`
`claim “only when the claim language remains genuinely ambiguous after consideration of the
`
`intrinsic evidence.” nteractive Gifi Express, 256 F.3d at 1332;m Vitrionics, 90 F.3d at 1583.
`
`“[I]deally there should be no ‘ambiguity’ in claim language to one of ordinary skill in the art that
`
`would require resort to evidence outside the specification and prosecution history.” Markman, 52
`
`F.3d at 986.
`
`“Extrinsic evidence may always be consulted, however, to assist in understanding the
`
`underlying technology.” nteractive Gifi Express, 256 F.3d at 1332. “[B]ecause extrinsic evidence
`
`can help educate the court regarding the field of the invention and can help the court determine what
`
`a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the
`
`district court in its sound discretion to admit and use such evidence.” Lilli13_, 415 F.3d at 1319.
`
`“[C]onsultation of extrinsic evidence is particularly appropriate to ensure that [the Court’s]
`
`understanding of the technical aspects of the patent is not entirely at variance with the understanding
`
`of one skilled in the art.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed.
`
`
`Cir. 1999); see also Dow Chem. Co. v. Sumitomo Chem. Co. Ltd., 257 F.3d 1364, 1373 (Fed. Cir.
`
`2001) (“[T]echnical terms often have an ‘ordinary meaning’ as understood by one ofordinary skill in
`
`the art, although these same terms may not be readily familiar to a judge, or may be familiar only in
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 10 of 25 PageID# 1887
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 10 of 25 Page|D# 1887
`
`a different context.”). “This evidence may be helpful to explain scientific principles, the meaning of
`
`technical terms, and tenns of art that appear in the patent and prosecution history.” , 52
`
`F.3d at 980.
`
`A judge is not usually a person conversant in the particular technical art
`involved and is not the hypothetical person skilled in the art to whom a patent
`is addressed. Extrinsic evidence, therefore, may be necessary to inform the
`court about the language in which the patent is written. But this evidence is
`not for the purpose of clarifying any ambiguity in claim terminology. It is
`not ambiguity in the document that creates the need for extrinsic evidence but
`rather unfamiliarity of the court with the terminology of the art to which the
`patent is addressed.
`
`Q at 986. Thus, the Court must remain mindful that “[e]xtrinsic evidence is to be used for the
`
`court’s understanding of the patent, not for the purpose of varying or contradicting the terms in the
`
`claims.” Li. at 981;i Dow Chem., 257 F.3d at 1373 (“This extrinsic evidence may be used
`
`only to assist in the proper understanding of the disputed limitation; it may not be used to vary,
`
`contradict, expand, or limit the claim language from how it is defined, even implicitly, in the
`
`specification or file history.”). As the Federal Circuit has observed, “extrinsic evidence may be
`
`useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless
`
`considered in the context of the intrinsic evidence.” mpg, 415 F.3d at 1319.
`
`With these principles in mind, the construction of the disputed claim terms will proceed.
`
`III. CLAIM CONSTRUCTION
`
`A. “point to point”
`
`The disputed claim term “point to point” is found in claim 1 of the ‘704 patent, claims 8, 13,
`
`and 14 of the ‘I21 patent, claim 5 of the ‘469 patent, claims 1 and 3 of the ‘365 patent, and claims 1,
`
`2, 6, and 7 of the ‘066 patent. The plaintiff contends that the claim term “point-to-point” used in
`
`these claims means “communications between two processes over a computer network that are not
`
`intermediated by a connection server or an address server.” The defendants contend that “point-to-
`
`10
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 11 of 25 PageID# 1888
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 11 of 25 Page|D# 1888
`
`point” means “direct communication, initiated solely by one ofthe processes, and not intermediated
`
`by a connection server, gateway, or similar device.”
`
`The Court first looks to the language of the claims in which the tem “point to point” appears.
`
`Several claims in the patents-in-suit use the term to describe “a method ofestablishing point-to-point
`
`communication” between two computer processes over a computer network.
`
`‘I21 patent col.44
`
`ll.30—3l (claim 13); ‘469 patent col.42 l1.1 1-13 (claim 5); ‘365 patent col. 1211.14, 31-33 (claim 3).
`
`Other claims use the term to describe “program code” or “program logic” configured “to establish a
`
`point-to-point communication link” or “to allow establishment of packet-based point-to-point
`
`communication” between two computer processes over a computer network.
`
`‘704 patent col.l1
`
`ll.l8—22 (claim 1); ‘ 121 patent col.43 ll.28—3l (claim 8); Q col.44 ll.42—45 (claim 13); Q col. 44
`
`ll.6l—65 (claim 14); ‘365 patent col.l1 ll.24l3l (claim 1). The claims of the ‘066 patent differ
`
`slightly in that their use of the term to describe a “method” or “system” for “establishing a poiri
`
`mt; communication link” between two computer Q over the Qemgt, rather than between
`
`computer processes over an unspecified computer network. ‘066 patent col.12 ll.7—8, 18-20 (claim
`
`1); Q col.12 11.21, 35-38 (claim 2); Q col.12ll.63—64, col.13ll.9—1l (claim 6); Q col.l3 11.12, 19-
`
`21 (claim 7).
`
`It is clear from this language that the invention concerns communication between two
`
`processes over a computer network, but the meaning of the term “point to point” is vigorously
`
`disputed. The Court thus looks to the rest ofthe intrinsic evidence to resolve any lack of clarity.
`
`The Court has reviewed the specifications of each of the five patents-in-suit. Nowhere in the
`
`specifications has the patentee acted as its own Iexicographer and clearly defined “point-to—point.”
`
`Nor has the patentee clearly disavowed the full scope of the claim language. Each patent’s
`
`specification includes the following passage describing a preferred embodiment of the invention:
`
`ll
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 12 of 25 PageID# 1889
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 12 of 25 Page|D# 1889
`
`The first processing unit 12 then sends a query, including the E-mail address
`of the callee, to the connection server 26. The connection server 26 then
`searches the database 34 to determine whether the callee is logged-in by
`finding any stored information corresponding to the callee’s E-mail address
`indicating that the callee is active and on-line. If the callee is active and on-
`line, the connection server 26 then performs the primary point-to-point
`protocol;2 i.e. the IP address of the callee is retrieved from the database 34
`and sent to the first processing unit 12. The first processing unit 12 may then
`directly establish the point-to-point Internet communications with the callee
`using the IP address of the callee.
`
`‘704 patent col.5 ll.55—67; ‘I21 patent col.7 ll.24—37; ‘469 patent col.7 ll.30—42; ‘365 patent col.5
`
`l.66-col.6 l.l 1; ‘O66 patent col.6 ll.28—41. The ‘I21 patent and the ‘469 patent also contain common
`
`specification language, further describing a preferred embodiment of the invention:
`
`The primary and secondary point-to-point Internet protocols previously
`described enable users to establish real-time direct communication links over
`
`the Internet or other computer networks without the need for any interaction
`with connection server 26, the connection server providing only directory and
`information related services.
`
`‘I21 patent col. 12 ll.4l—46; ‘469 patent col."l2 ll.48—53.
`
`The Court has also reviewed the prosecution history, to the extent it is in evidence.
`
`In
`
`response to an adverse office action by the examiner during prosecution of the ‘704 patent, the
`
`patentee provided the following remarks with respect to the nature of the invention:
`
`One of the major factors inhibiting dynamic communications over the
`Internet, and other computer networks, is the inability to obtain the current
`dynamically assigned network protoc[o]l address ofa user process connected
`to the network. This problem is analogous to trying to call someone whose
`telephone number changes after each call. Applicant’s invention provides
`techniques for determining the current dynamically assigned network
`protoc[o]l address of a user process connected to the network. The first
`technique utilizes
`a dedicated server which acts
`as
`a network
`
`2 The Court notes that the patents disclose an invention comprising two alternative protocols
`for establishing a point-to-point communication link. The alleged infringement in these cases
`exclusively involves the primary point-to-point protocol, which concerns the use of a connection
`server to fumish one computer process with the dynamically assigned network protocol address of a
`second computer process. The secondary point-to-point protocol, not at issue in this litigation,
`concerns an exchange of network protocol addresses between two computer processes by e-mail,
`involving no interaction at all with a connection server.
`
`12
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 13 of 25 PageID# 1890
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 13 of 25 PagelD# 1890
`
`address/infonnation directory from which calling processes can obtain
`information. When a first process connects to the network, the process logs-
`on to the server and provides the server with the network protoc[o]l address
`under which the first process is currently operating. A second process[,]
`wishing to establish communications with the first process, connects to the
`server and request[s] the network protoc[o]l address under which the first
`process is currently operating. Upon receipt of the network protoc[o]l
`address of the first process, the second process establishes communications
`with the first process directly, without any interven[t]ion from the
`address/information server.
`
`Pl.’s Ex. C, at 7-8. The patentee subsequently provided virtually identical remarks in response to an
`
`adverse office action during prosecution of the ‘365 patent. Pl.’s Ex. K, at 4.
`
`Based on the descriptions of the invention as set forth in the specifications and the
`
`prosecution history of the patents-in-suit, the Court agrees with plaintiff Innovative that “point-to-
`
`point” means “communications between two processes over a computer network that are not
`
`intermediated by a connection server or an address server.” The descriptions quoted above clearly
`
`describe a method or system in which two processes communicate over a computer network without
`
`any interrnediation by the connection server. Although the connection server provides preliminary
`
`assistance to the caller process, furnishing it with the current dynamically assigned network protocol
`
`address of the callee process, once this preliminary role is done, the connection server plays no part
`
`in establishing the communication link between the caller and callee processes. Based on the claims,
`
`the specification, and the prosecution history in evidence, the connection server in the patented
`
`invention simply does not intermediate, or come between, the two processes in their communications
`
`over a computer network. E Webster’s Third New International Dictiong of the English
`
`Language, Unabridged 1 180 (Philip Babcock Gove ed., 1981) (defining the verb “intermediate” as
`
`“to come between”). The Court further notes that the defendants agree that “point-to-point”
`
`communications are “not intermediated by a connection server,” incorporating that very same
`
`language into their proposed construction of the claim tenn.
`
`13
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 14 of 25 PageID# 1891
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 14 of 25 Page|D# 1891
`
`The defendants’ proposed construction seeks to further narrow the scope of the “point to
`
`point” claim language in three respects. First, the defendants seek to limit the construction to
`
`“direct” communications between computer processes. But adding this limitation would be
`
`redundant and would add nothing to the construction of the term “point to point.” E Cleancut LLC
`
`v. Rug Doctor, Inc., No. 2:08-CV-836-TC, 2011 WL 5057005, at *2 (D. Utah Oct. 19, 2011). The
`
`parties already have agreed, as does the Court, that “point-to-point” communications are “not
`
`intermediated by a connection server.” Moreover, to the extent the addition of the modifier “direct”
`
`would further narrow the scope of the disputed claim language, the specification language upon
`
`which the defendants rely describes an exemplary embodiment ofthe invention, and thus it would be
`
`improper to construe the claims of the patent as being limited to the described embodiment. E
`
`illipg, 415 F.3d at 1323. The Court also notes that the prosecution history upon which the
`
`defendants rely on this point contains no clear and unmistakable disclaimer of the full scope of the
`
`claim language. E i, 669 F.3d at 1366-67.
`
`Second, the defendants seek to limit the construction to communications “initiated solely by
`
`one ofthe processes.” In support ofthis limitation, the defendants rely on remarks in the prosecution
`
`history ofthe ‘704 patent, in which the patentee stated: “[C]ommunications between two nodes, e.g.
`
`processes, are initiated .
`
`.
`
`. solely by one of the processes. The address server does not establish the
`
`point-to-point communication connection between the nodes.” Pl.’s Ex. C, at 9. This proposed
`
`limitation is likewise redundant and adds nothing to the construction of the term “point to point.”
`
`E Cleancut, 201 l WL 5057005, at *2. The cited remarks simply distinguish the patented invention
`
`from prior art that appears to have involved intennediation by an address server. Moreover, to the
`
`extent that the addition of this language would further narrow the scope of the disputed claim
`
`language, the Court notes that the prosecution history upon which the defendants rely contains no
`
`14
`
`

`
`Case 2:12-cv-00007-RGD-LRL Document 51 Filed 10/26/12 Page 15 of 25 PageID# 1892
`Case 2:12—cv—0O007—RGD—LRL Document 51 Filed 10/26/12 Page 15 of 25 Page|D# 1892
`
`clear and unmistakable disclaimer ofthe full scope of the claim language. fl Thorner, 669 F.3d at
`
`1366-67.
`
`Third, the defendants seek to l