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Sprint Communications Company L.P. v. Cox Communications Inc.

United States District Court, D. Delaware

November 9, 2017

COX COMMUNICATIONS INC., et al., Defendants.

          Richard K. Herrmann, Esquire, and Mary Matterer, Morris James LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Counsel: Jordan T. Bergsten, Esquire, Ryan D. Dykal, Esquire, Aaron E Hankel, Esquire, Robert H. Reckers, Esquire, Ryan J Schletzbaum, Esquire, and Basil Trent Webb, Esquire of Shook, Hardy & Bacon LLP.

          David A. Bilson, Esquire, and John C. Phillips, Jr., Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Delaware. Counsel for Defendants. Of Counsel: David S. Bloch, Esquire, Michael L. Brody, Esquire, Krishnan Padmanabhan, Esquire, Pejman F. Sharifi, Esquire, and James Winn, Esquire of Winston & Strawn LLP.




         In this patent case involving Plaintiff Sprint Communications Company, L.P. (“Plaintiff” or “Sprint”) against Defendant Cox Communications, Inc. (“Defendant” or “Cox”), Sprint alleges that Cox infringes certain of Sprint's telecommunications and data networking patents.[1]Among these patents are U.S. Patent Nos. 7, 286, 561 (“the ‘6, 561 patent”), 6, 633, 561 (“the ‘3, 561 patent”), 6, 463, 052 (“the ‘052 patent”), and 6, 452, 932 (“the ‘932 patent”) (collectively the “Call Control Patents”) and U.S. Patent Nos. 6, 473, 429 (“the ‘429 patent”), 6, 343, 084 (“the ‘084 patent”), and 6, 298, 064 (“the ‘064 patent”) (collectively the “Broadband Patents”). Sprint asserts approximately 15 claims from the Call Control Patents and the Broadband Patents (the “patents-in-suit”) against Cox. (D.I. 650 at 2) District Judge Sue L. Robinson construed various claim terms of the patents-in-suit in March 2016 and May 2017. (D.I. 399; D.I. 400, D.I. 541) Upon Judge Robinson's retirement from the bench, the case was reassigned to the undersigned on June 16, 2017. (D.I. 557) A pre-trial conference is scheduled for November 17, 2017, with a jury trial set to begin on December 7, 2017. (D.I. 603; D.I. 654) The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

         As part of its defenses to the allegation of patent infringement by Sprint, Cox contends that the patents-in-suit are invalid for lack of written description under 35 U.S.C. § 112, ¶ 1.[2](D.I. 608 at 1) In support, Cox presents the testimony of its expert witnesses Paul S. Min, PhD (“Dr. Min”) and Kevin Almeroth, PhD (“Dr. Almeroth”). (See, e.g., D.I. 587, ex. 1 at ¶ 105) Based upon this testimony, and Cox's admissions, Sprint argues that “the claims as construed are supported by the specification[, ]” (D.I. 587 at 15), and has moved for partial summary judgment of no invalidity of the patents-in-suit, (D.I. 586). Sprint has also moved to exclude the testimony of Drs. Min and Almeroth. (Id.)

         Meanwhile, Sprint has presented the validity opinions of its expert, Dr. Stephen Wicker (“Dr. Wicker”). (D.I. 620, exs. 2, 3, 4) Based upon Dr. Wicker's reports, Cox contends that “there are no genuine factual disputes” as to its central theory that all of “Sprint's patents3disclose only connection-oriented technology, namely [Asynchronous Transfer Mode] ATM, for packet-voice transmissions[]” and cannot, therefore, read on products and services that employ Internet Protocol (IP) technologies. (D.I. 608 at 1 (emphasis in original)) As a result, Cox has moved for partial summary judgment of invalidity of the patents-in-suit. (Id.)

         During briefing on the instant motion, in its reply brief, Sprint included an Appendix A, entitled “Sprint's Response to Cox's Statement of Facts (CSUF)[, ]” which is a nine-page response to the statement of facts that Cox presented in its answering brief. (D.I. 620, appx. A; D.I. 608 at ¶¶ 1-7) Cox moved to strike this material, arguing that it “contain[s] additional pages of substantive arguments.” (D.I. 634 at 1)


         A. The Patents

         The patents-in-suit relate to transmission of telephone calls between traditional telephone networks and packet data networks. All of the patents-in-suit originate from U.S. Patent Application No. 08/238, 605 (“the ‘605 application”), which was filed on May 5, 1994 and was abandoned by applicant. (See, e.g., ‘052 patent, 1:5-10) The ‘605 application is incorporated by reference into all of the patents-in-suit. (Id.) The Call Control Patents are continuations of the ‘605 application and share a common specification. (Id.; ‘932 patent, 1:5-12; ‘3, 561 patent, 1:5- 12; ‘6, 561 patent, 1:6-12) The Broadband Patents share a common specification and are continuations of U.S. Patent Application No. 08/525, 897 (“the ‘897 application”), filed on September 8, 1995, which is now U.S. Patent No. 5, 991, 301. (‘429 patent, front page, item [63]4, 1:6-16; ‘084 patent, front page, item [63]5; ‘064 patent, front page, item [63]6)

         In the written description analysis, the relationship between the Call Control and Broadband Patents is important.7 Elsewhere in the summary judgment briefing, Cox argues that the [Broadband Patents] explicitly disclaim any relationship to the [Call Control Patents.]” (D.I. 627 at 14)

         The ‘897 application initially claimed to be a continuation-in-part of the ‘605 application. (‘301 patent, front page, item [63]; 1:6-10) By definition, a continuation-in-part application is “filed during the lifetime of an earlier [] application, [and] repeat[s] some substantial portion or all of the earlier [] application and add[s] matter not disclosed in the [] earlier [] application.” § 201.08 MPEP (9th ed., Rev. 07.2015, Nov. 2015). The ‘301 patent issued on November 23, 1999. (‘301 patent, front page) In December 2004, applicant requested a Certificate of Correction related to “Item [63], Related U.S. Application Data, ” in which the ‘301 patent claimed it was a “[c]ontinuation-in-part of application No. 08/238, 605, May 5, 1994, abandoned.” (Id., Certificate of Correction)8 A Certificate of Correction operates as follows:

Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.

35 U.S.C. § 255. The USPTO has identified “[t]wo separate statutory requirements [that] must be met before a certificate of correction for an applicant's mistake may issue.” In Re Arnott, 19 U.S.P.Q.2d 1049 at *5 (Com'r Pat. & Trademarks May 22, 1991); see also § 1481 MPEP (9th ed., Rev. 07.2015, Nov. 2015). “The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. . . [, which] must be: (1) of a clerical nature, (2) of a typographical nature, or (3) a mistake of minor character.” In Re Arnott, 19 U.S.P.Q.2d 1049 at *5. “The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would: (1) constitute new matter or (2) require reexamination.” Id. The file history of the ‘301 patent is not currently before the court, and it is unknown what statements applicant made in December 2004; however, even if as the corrected front page states, the ‘301 patent is not a continuation-in-part of the ‘605 application, [9] that does not change the specification which states that “[t]his application is a continuation-in-part of prior application Ser. No. 08/238, 605, entitled ‘Method, System, and Apparatus for Telecommunications Control', filed May 5, 1994, currently pending, and incorporated by reference into this application.” (‘301 patent, 1:6-10) In other words, while the status of the ‘897 application as a continuation-in-part of the ‘605 application may be in doubt, at a minimum, the ‘897 application (which forms the basis for the Broadband Patents) incorporates by reference the ‘605 application (which forms the basis for the Call Control Patents). Therefore, aspects of the Broadband Patents may find support in the common specification for the Call Control Patents, [10] but limitations to the Broadband Patents do not necessarily result in limitations to the Call Control Patents.

         1. The Broadband Patents

         In 2016, Cox moved for summary judgment of no literal infringement of the ‘084 patent (which is one of the Broadband Patents) as well as several other patents no longer in suit[11] on the premise that the patents are limited to ATM (asynchronous transfer mode) technologies and that Cox's accused products and services are used in IP (Internet protocol) networks. (D.I. 357 at 25). At the time, Cox explained in its reply brief that “[t]o be clear, we agree that if the claims are read as limited to ATM networks, they will not run afoul of the written description requirement.” (D.I. 353 at 11 (emphasis in original)) Sprint did not argue to the contrary and suggested that, under a construction limited to ATM, it would assert infringement under the Doctrine of Equivalents. (D.I. 329 at 22) Judge Robinson construed, inter alia, the “interworking unit” limitation of independent claim 1 of the ‘084 patent to be an “ATM interworking multiplexer[, ]” (D.I. 400 at ¶ 9), and granted summary judgment of no literal infringement, (D.I. 399 at ¶¶ 6-8).

         As discussed above, the other two Broadband Patents (the ‘429 and ‘064 patents) share a common specification with the ‘084 patent, and the parties have agreed to apply the ATM technology limitation to the ‘429 and ‘064 patents. (See, e.g., D.I. 490 at 2, applying definitions of “interworking unit” as “ATM interworking multiplexer” and “asynchronous communication” as “ATM communication” to limitations in the ‘429 and ‘064 patents) As a result, Sprint does not assert that Cox literally infringes any of the Broadband Patents. (See D.I. 593, ex. 22 at 10:8-13, 11:15-23 (deposition of Sprint's expert witness on infringement))

         2. The Call Control Patents

         When the court granted summary judgment of no literal infringement of the ‘084 patent, the Call Control Patents had been ruled invalid as indefinite by Judge Robinson and were on appeal to the United States Court of Appeals for the Federal Circuit. (D.I. 399 at 1 n.2) As a result, in 2016, Cox did not argue that the Call Control Patents were invalid for lack of written description. (D.I. 357 at 19-24) Cox's Drs. Min and Almeroth expressed opinions on the written description requirement as to the Call Control Patents in June 2017. (D.I. 587, exs. 1, 5) Sprint's Dr. Wicker presented rebuttal arguments, (D.I. 630, ex. 3), and all three experts were deposed about their opinions, (D.I. 587, exs. 4, 6; D.I. 608, ex. 6).


         A. Summary Judgment

         “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10 (1986). A party asserting that a fact cannot be-or, alternatively, is-genuinely disputed must be supported either by citing to “particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials, ” or by “showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then “come forward with specific facts showing that there is a genuine issue for trial.” Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will “draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

         To defeat a motion for summary judgment, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586-87; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005) (stating that the party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Although the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment, ” a factual dispute is genuine where “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247- 48 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (stating entry of summary judgment is mandated “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial”).

         B. Written Description

         The Patent Act provides in relevant part:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .

35 U.S.C. § 112, ¶ 1. The written description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation and internal quotation marks omitted). “In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). “The level of detail required to satisfy the written description requirement depends, in large part, on the nature of the claims and the complexity of the technology.” Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1285 (Fed. Cir. 2012) (citing Ariad, 598 F.3d at 1351). Neither examples nor actual reduction to practice is required; “a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement.” Id. (citing Ariad, 598 F.3d at 1352).

         Accused infringers must ultimately prove that the written description fails these standards by clear and convincing evidence. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed. Cir. 2005) (citation omitted). While compliance with the written description requirement is a question of fact, it is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the nonmoving party. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (citation omitted). “Thus, a moving party seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) “Alternatively, a moving party seeking to have a patent held not invalid at summary judgment must show that the nonmoving party, who bears the burden of proof at trial, failed to produce clear and convincing evidence on an essential element of a defense upon which a reasonable jury could invalidate the patent.” Id.

         C. Claim Construction

         Claim construction is a matter of law. Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005) (en banc). Claim construction focuses on intrinsic evidence-the claims, specification, and prosecution history-because intrinsic evidence is “the most significant source of the legally operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Claims must be interpreted from the perspective of one of ordinary skill in the relevant art at the time of the invention. Phillips, 415 F.3d at 1313. In some cases, “the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm. USA, Inc. v. Sandoz, Inc., ___ U.S. ___, 135 S.Ct. 831, 841 (2015) (citation omitted).

         Claim construction starts with the claims and remains centered on the words of the claims throughout. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). In the absence of an express intent to impart different meaning to claim limitations, “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.” Phillips, 415 F.3d at 1312-13 (quoting Vitronics, 90 F.3d at 1582). “The ordinary meaning may be determined by reviewing various sources, such as the claims themselves, the specification, the prosecution history, dictionaries, and any other relevant evidence. Ultimately, the only meaning that matters in claim construction is the meaning in the context of the patent.” Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d. 999, 1002-03 (Fed. Cir. 2016) (citations, internal quotation marks, and brackets omitted). The specification is often “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315.

         D. Excluding Expert Testimony

         In Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993), the Supreme Court explained that Federal Rule of Evidence 702 creates “a gatekeeping role for the [trial] judge” in order to “ensur[e] that an expert's testimony both rests on a reliable foundation and is relevant to the task at hand.” The rule requires that expert testimony “help the trier of fact to understand the evidence or to determine a fact in issue.” Fed.R.Evid. 702(a). Expert testimony is admissible only if “the testimony is based on sufficient facts or data, ” “the testimony is the product of reliable principles and methods, ” and “the expert has reliably applied the principles and methods to the facts of the case.” Fed.R.Evid. 702(b)-(d). There are three distinct requirements for admissible expert testimony: (1) the expert must be qualified; (2) the opinion must be reliable; and (3) the expert's opinion must relate to the facts. See generally Elcock v. Kmart Corp., 233 F.3d 734, 741-46 (3d Cir. 2000).


         A. Written Description

         Sprint has moved for summary judgment of no invalidity, (D.I. 586), and Cox has moved for summary judgment of invalidity, (D.I. 608 at 1). Therefore, Cox “must submit such clear and convincing evidence of [lack of written description] so that no reasonable jury could find otherwise.” Eli Lilly & Co., 251 F.3d at 962. And Sprint “must show that [Cox], who bears the burden of proof at trial, failed to produce clear and convincing evidence . . . [of lack of written description] upon which a reasonable jury could invalidate the patent.” Id.

         1. Broadband Patents

         As discussed above, Sprint's infringement allegations with respect to the Broadband Patents are limited to the doctrine of equivalents.[12] (D.I. 593, ex. 22 at 10:8-13, 11:15-23) According to Sprint, Cox has already made its written description arguments as to the Broadband Patents, the court has construed the relevant claim terms and has ruled in Cox's favor, and the issue is now moot. (D.I. 587 at 12) Moreover, Sprint avers that Cox's arguments are contrary to the court's claim construction, and the written description defense is foreclosed as a matter of law by the doctrine of equivalents. (Id. at 13-15)

         Cox responds that, after “applying the [c]ourt's construction to the claims, Cox's experts have opined that a person of ordinary skill would not have understood the Sprint inventor to have possessed an ‘IP' invention, because ‘ATM' and ‘IP' were separated by a technical chasm.” (D.I. 608 at 1) Cox ignores Sprint's equivalents assertions and adheres to its written description argument, because “by accusing IP systems, Sprint insists that the claims are broader in scope than the ATM-limited disclosure. . . . [, which] bring[s] the issues of written description front and center.” (Id. at 8) Based upon Cox's briefs, the court identifies three major areas of Cox's argument: (1) extrinsic evidence, (2) claim construction, and (3) legal principles.

         a. Extrinsic evidence

         According to Cox, the doctrine of equivalents is simply not a factor in its written description argument, and “Drs. Min and Almeroth do not . . . . address the doctrine of equivalents at all.” (D.I. 608 at 10) Without an opinion on the doctrine of equivalents, Cox has no evidence to present to a jury. Moreover, the opinions are based entirely on equivalence between the claimed subject matter (ATM-limited claim limitations) and accused products and services (that rely on IP) at the time of invention. (See, e.g., D.I. 587, ex. 1 at ¶ 144 (“a person of ordinary skill in the art at the time of filing of the Asserted Patents (or underlying applications), would see the claimed system as using ATM.”)) “[T]he proper time for evaluating equivalency-and thus knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997). Therefore, Cox does not offer any evidence upon which a reasonable jury could invalidate the Broadband Patents for lack of written description. Moreover, to the extent that Cox's arguments relate to the Call Control Patents as asserted under the doctrine of equivalents, [13] no reasonable jury could invalidate these patents for lack of written description.

         b. Claim Construction

         In numerous instances, Cox appears to re-argue claim construction as to the limitations of the ‘084 patent that, based upon the argument and extrinsic evidence presented by Cox at the time, the court determined to be limited to ATM technology. Because, Cox does not explain why it seeks reconsideration or additional claim construction, the court addresses two areas of Cox's arguments: broadening the claim construction, and making the claim construction contingent on Sprint's infringement theories.

         (i) Broaden the construction

         First, Cox appears to re-argue its contention that certain claim limitations of the Broadband Patents are limited to ATM technology (an argument that Cox has already won) but-in so doing-Cox appears to attempt to broaden the court's claim construction by restating it in numerous ways. (Compare D.I. 400 at ¶ 9 (construing an “interworking unit” in claim 1 of the ‘084 patent to mean an “ATM interworking multiplexer” and explaining why “[t]he court concludes that this limitation should be limited to ATM technology.”) and Id. at ¶ 13 (construing an “asynchronous communication” to mean an “ATM communication”) with D.I. 633 at 5 (“The Court has found Sprint's invention [in the Broadband Patents] to be ATM-limited, and the furthest coordinates of Sprint's plot therefore fall squarely within the realm of ATM.”); see also D.I. 608 at 8 (“It is undisputed that the only packet-voice technology disclosed in the Broadband Patents is ATM.”); id. at 9 (“There is no dispute that the Broadband Patents have been limited to ATM, [and] do not disclose [sic] ATM[.]”); id. at 1 (emphasis in original) (“There is no dispute Sprint's patents disclose only connection-oriented technology, namely ATM, for packet-voice transmissions.”)[14] Despite Cox's efforts in this regard, the court declines to revisit its prior claim construction. (D.I. 400)

         (ii) Construction contingent on infringement

         Second, Cox's renewed claim construction arguments appear to be contingent on Sprint's infringement contentions. (See, e.g., D.I. 608 at 2 (“Cox agreed that the written description requirement would be satisfied if Sprint did not expand the scope of the claims beyond the ATM constructions issued by the [c]ourt[.]”)) This is contrary to the law:

A claim is construed in the light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused device. Contrary to what [defendant]'s counsel wrote the district court, claims are not construed “to cover” or “not to cover” the accused device. That procedure would make infringement a matter of judicial whim. It is only after the claims have been construed without reference to the accused device that the claims, as so construed, are applied to the accused device to determine infringement.

SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc) (emphasis in original) (citation omitted); see also Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1367 (Fed. Cir. 2008) (“The district court erred . . . by construing the claim merely to exclude the accused device[.]”), Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1327 (Fed. Cir. 2006) (“While a trial court should certainly not prejudge the ultimate infringement analysis by construing claims with an aim to include or exclude an accused product or process, knowledge of that product or process provides meaningful context for the first step of the infringement analysis, claim construction.”), Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (“[T]he particular accused product (or process) is kept in mind, for it is efficient to focus on the construction of only the disputed elements or limitations of the claims.”). In the case at bar, based upon the written description argument presented by Cox at the time, (D.I. 357 at 1-3), the court construed the claims and then the “claims, as so construed, [were] applied to the accused device to determine infringement[, ]” SRI Int'l, 775 F.2d at 1118. Based upon that finding, the court granted summary judgment of no literal infringement of claim 1 of the ‘084 patent. (D.I. 399 at ¶¶ 7-8)

         Cox now asks for a second bite at the apple, specifically for the court to revisit its written description argument, and for the court to-this time around-determine that “the patent claims” are invalid for lack of written description. (D.I. 608 at 9 (“Thus, if the patent claims are broad enough to cover telephony systems, such as Cox's VoIP networks, that do not use ATM networks, then the Court should grant Cox partial summary judgment of invalidity under the written description requirement[.]”)) This is precisely the type of “judicial whim” that the Federal Circuit warned against. SRI Int'l, 775 F.2d at 1118. Therefore, the court declines to revisit its prior construction.

         c. Legal principles that lead to noninfringement, not invalidity

         Despite asserting that the doctrine of equivalents plays no role in its analysis, Cox cites to case law that relates to the written description requirement (in general[15] and as applied to district court appeals of patent office interference proceedings[16]) and to the doctrine of equivalents (such as prosecution history estoppel[17] and ensnarement of equivalents[18]). This leads to an incomplete, [19] if not contradictory, [20] presentation of the case law associated with the written description requirement. Taken together, Cox asserts facts and principles that-in conjunction with the doctrine of equivalents infringement asserted by Sprint-lead to noninfringement, not invalidity. These two principles are ensnarement and vitiation.

         (i) Vitiation

         Cox presents its claim construction argument in a section about the Broadband Patents, which are patents for which Sprint is asserting infringement under the doctrine of equivalents.[21] (D.I. 608 at 7-10) In its answering brief, Cox appears to argue that ATM and IP technologies are wholly antithetical, namely that “the literature consistently teaches that ATM and IP were seen as worlds-apart by technologists at the time of the invention.”[22] (D.I. 608 at 8) In its surreply brief, Cox clarifies its argument that “the written description cannot be based on antithetical teaching, limited to ‘fundamentally different' technology.” (D.I. 633 at 4 (emphasis added) (citing extrinsic evidence at D.I. 608, ex.2 at ex. H)) In other words, Cox avers that its IP-network elements cannot be an equivalent to the ATM-limited structures in the Broadband Patents.[23]

         The test of “equivalence of a proposed substitute for a missing element is ordinarily a factual inquiry reserved for the finder of fact.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012). However, it is “the role of the court . . . to ensure that the doctrine of equivalents is not permitted to overtake the statutory function of the claims in defining the scope of the patentee's exclusive rights.” Id. For example, the Federal Circuit “has refused to apply the doctrine [of equivalents] in [] cases where the accused device contained the antithesis of the claimed structure.” Planet Bingo, LLC v. GameTech Int'l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006). “In such a case, application of the doctrine of equivalents would ‘vitiate' a claim element.” Deere & Co., 703 F.3d at 1356 (citation omitted). “‘Vitiation' is . . . a legal determination that ‘the evidence is such that no reasonable jury could determine two elements to be equivalent.'” Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997)). However, the remedy for vitiation is a finding of noninfringement and not invalidation of the patent.[24] See, e.g., Planet Bingo, 472 F.3d at 1345.

         (ii) ...

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