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Sprint Communications Company L.P. v. Comcast IP Holdings, I, LLC

United States District Court, Third Circuit

January 28, 2014

SPRINT COMMUNICATIONS COMPANY L.P., Plaintiff,
v.
COMCAST IP HOLDINGS, I, LLC and COMCAST IP PHONE, LLC, Defendants.

Richard K. Herrmann, Esq., MORRIS JAMES LLP, Wilmington, DE; B. Trent Webb, Esq., SHOOK, HARDY & BACON LLP, Kansas City, MO; Robert Reekers, Esq. (argued), SHOOK, HARDY & BACON LLP, Houston, TX; Aaron Hankel, Esq., SHOOK, HARDY & BACON LLP, Kansas City, MO; Fiona A. Bell, Esq. (argued), SHOOK, HARDY & BACON LLP, Houston, TX., Attorneys for Plaintiff Sprint Communications Company L.P.

Arthur G. Connolly, III, Esq., CONNOLLY GALLAGHER LLP, Wilmington, DE; Anthony I. Fenwick, Esq. (argued), DAVIS POLK & WARDWELL LLP, Menlo Park, CA; David J. Lisson, Esq. (argued), DAVIS POLK & WARDWELL LLP, Menlo Park, CA; Micah G. Block, Esq. (argued), DAVIS POLK & WARDWELL LLP, Menlo Park, CA. Attorneys for Defendants Comcast IP Holdings, I, LLC and Comcast IP Phone, LLC.

MEMORANDUM OPINION

RICHARD G. ANDREWS, District Judge.

Pending before this Court is the issue of claim construction of various disputed terms found in U.S. Patent Nos. 5, 793, 853 ('"853 patent"), 5, 742, 605 ("'605 patent"), 6, 108, 339 ('"339 patent"), 6, 452, 931 ("'931 patent"), and 6, 870, 832 ("'832 patent").[1]

I. BACKGROUND

On February 21, 2012, Comcast IP Holdings I, LLC filed a patent infringement action against Sprint Communications Company L.P., Sprint Spectrum L.P., and Nextel Operations, Inc. (1:12-cv-205-RGA D.L 1). Sprint answered and asserted counterclaims ofpatent infringement against Comcast Cable Communications, LLC, and Comcast IP Phone, LLC on May 14, 2012. (1:12-cv-205-RGA D.L 11). Sprint's counterclaims alleged infringement of the '853, '605, '339, '931, '832, and '028 patents, [2] which collectively are the patents in suit. ( Id. ). The Court subsequently approved a Joint Stipulation and Proposed Order that severed Sprint's infringement counterclaims into a separate action. (D.I. 1).[3] The Court has considered the Parties' Joint Claim Construction Brief (D.I. 56), appendix (D.L 57), and oral argument on October 10, 2013.

II. LEGAL STANDARD

"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 Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en bane) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction.' Instead, the court is free to attach the appropriate weight to appropriate sources in light of the statutes and policies that inform patent law.'" Soft View LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324). When construing patent claims, a matter of law, a court considers the literal language of the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). Of these sources, "the 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." Phillips, 415 F.3d at 1315 (internal quotations and citations omitted).

Furthermore, "the words of a claim are generally given their ordinary and customary meaning... [which is] the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). "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 the application of the widely accepted meaning of commonly understood words." Id. at 1314 (internal citations omitted).

A court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises, " in order to assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works. Id. at 1317-19 (internal quotation marks and citations omitted). However, extrinsic evidence is less reliable and less useful in claim construction than the patent and its prosecution history. Id.

Finally, "[a] claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).

III. CONSTRUCTION OF DISPUTED TERMS

A. U.S. Patent No. 5, 793, 853

1. "primary network element"

a. Plaintiff's proposed construction: No construction necessary.

b. Defendant's proposed construction: "The first network element to receive the service request."

c. Court's construction: "The first network element to receive the service request."

2. "operator center"

a. Plaintiff's proposed construction: No construction necessary. Alternatively, the term means "a network element providing telecommunications services."

b. Defendant's proposed construction: "A network element providing telecommunications services using one or more human operators."

c. Court's construction: "A network element providing telecommunications services."

3. "means for assigning an identification key to the primary and secondary records"

a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed function: "assigning an identification key to the primary and secondary records"; proposed structure: "a network element (as disclosed at col. 5:48 to col. 6:9) and equivalents thereof."

b. Defendant's proposed construction: A means-plus-function limitation. Proposed function: "assigning an identification key to the primary and secondary records"; proposed structure: "a network element comprising a counter device as disclosed at 5:61-6:9."

c. Court's construction: A means-plus-function limitation. The function is "assigning an identification key to the primary and secondary records, " and the structure is "a network element comprising a counter device as disclosed at 5:61-6:9 and equivalents thereof."

Both parties agree on the function, leaving the structure as the only disputed aspect of this term. Sprint proposes a broad construction that only limits the structure to a network element, whereas Comcast seeks to further narrow the structure to a "network element comprising a counter device."

Section 112(f) permits a patentee to express a claim "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. ยง 112(f) (2012). The quid pro quo for the convenience of utilizing this section is the "duty to link or associate structure to function." B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). Sprint's proposed construction is insufficient because it does not clearly identify an associated structural limitation. The portion of the specification that Sprint relies on explains where the means for assigning the identification key are located, not the structure that corresponds to the assigning process. See '853 patent, 5:48-60. Comcast's proposed inclusion of a counter device, on the other hand, does provide a structural limitation. The specification acknowledges that "it is presently preferred to use a nine-digit identification key wherein the first three digits identify a specific network element and the last six digits are a key identifier generated by a counter device which is incremented for each service request requiring services from a plurality of network elements." Id. at 5:65-6:3. Sprint objects to this proposal because a "network element actually assigns the identification key, " whereas the counter device generates a key identifier. Id. at 5:62; 6:1.

The context in which the discussion of the counter device appears suggests that the generation of a key identifier is subsumed by the process of assigning the identification key. As described above, the identification key is a nine digit number-the first three digits correspond to a specific network element and the last six digits represent the key identifier. The key identifier is generated by the counter device, and there is no disclosure in the specification that would allow for the creation of a nine-digit identification key without the six-digit key identifier. Therefore, the counter device is necessary to the assigning process, and its inclusion in the definition is an appropriate structural limitation.

4. "means for comparing the identification keys assigned to the records"

a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed function: "comparing the identification keys assigned to the records"; proposed structure: "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

b. Defendant's proposed construction: A means-plus-function limitation. Proposed function: "comparing the identification keys assigned to primary and secondary records"; proposed structure: "none identified. Indefinite."

c. Court's construction: A means-plus-function limitation. The function is "comparing the identification keys assigned to primary and secondary records" and the structure is "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

5. "means for merging associated records"

a. Plaintiff's proposed construction: A means-plus-function limitation. Proposed function: "merging associated records"; proposed structure: "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

b. Defendant's proposed construction: A means-plus-function limitation. Proposed function: "merging records that are associated by reference to information included in their identification keys"; proposed structure: "none identified. Indefinite."

c. Court's construction: A means-plus-function limitation. The function is "merging records that are associated by reference to information included in their identification keys" and the structure is "a merge processor (as disclosed at item 42 in Figures 1 and 2) and equivalents thereof."

B. U.S. Patent Nos. 5, 742, 605, 6, 108, 339, and 6, 452, 931

1. "[SONET] ring"

a. Plaintiff's proposed construction: "A synchronous optical networking (SONET) architecture where spans form a loop by interconnecting ring terminals over physical routes."

b. Defendant's proposed construction: "A self-healing SONET architecture connecting ring terminals in a closed loop. Within the loop, each ring terminal is directly connected only to the adjacent ring terminal(s) in each direction around the loop. The architecture provides survivability in the event of an interruption by routing traffic around the operational side of the ring to complete the connection."

c. Court's construction: "A self-healing SONET architecture connecting ring terminals in a loop in which each ring terminal in the loop is directly connected only to the adjacent ring terminal(s) in each direction around the loop."

Comcast is correct that the SONET rings should be limited to self-healing rings because the patentee repeatedly states that this constitutes "the present invention." If a patent "describes the features of the present invention' as a whole, this description limits the scope of the invention." Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). The patentee's reference to "the present invention, " however, "must be read in context of the entire specification and the prosecution history" before the term's meaning can be properly limited. Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081, 1094 (Fed. Cir. 2003). In balancing these two concerns, the Federal Circuit has held that numerous statements in the specification addressing "the present invention" may be sufficient to so limit the term's scope. Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) ("On at least four occasions, the written description refers to the fuel filter as this invention' or the present invention'.... The public is entitled to take the patentee at his word and the word was that the invention is a fuel filter.").

The patentee refers to self-healing rings as comprising "the present invention" no fewer than six times in the specification. See '605 patent, Abstract ("The present invention is a SONET system.... The system uses self-healing rings."); id. at 3:65-66 ("The present invention is a SONET system for a relatively large network that uses self-healing rings."); id. at 8:6-9 ("[S]elf-healing ring technology can be employed in the present invention to provide significantly improved survivability features."); id. at 8: 16-18 ("The present invention employs self-healing capability in particular ring terminals on each ring."); id. at 8:20-23 ("[T]he present invention provides a SONET system that employs self-healing rings which can efficiently span large geographic distances."); id. at 8:34-36 ("By featuring stacked self-healing SONET rings with DCS connections, the present invention eliminates these current problems."). These frequent references strongly point to narrowing the term's definition to reflect its description in the specification. There is nothing in the ...


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