United States District Court, D. Delaware
Jacobs, Stephen J. Kraftchik, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, Delaware; Peter D. Shapiro,
FITZPATRICK, CELLA, HARPER, AND SCINTO, New York, New York;
Jason M. Dorsky, FITZPATRICK, CELLA, HARPER, AND SCINTO,
Washington, District of Columbia; Edward J. DeFranco, Patrick
D. Curran, Joseph Milowic III, QUINN EMANUEL URQUHART &
SULLIVAN LLP, New York, New York; Jonathan Berschadsky,
MERCHANT & GOULD, P.C., New York, New York; Thomas J.
Leach, MERCHANT & GOULD, P.C., Minneapolis, Minnesota
Counsel for the Plaintiff
Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, Delaware;
John M. Desmarais, Justin P.D. Wilcox, Steven Balcof, Jordan
N. Malz, DEMARAIS LLP, New York, New York Counsel for
CONNOLLY, UNITED STATES DISTRICT JUDGE.
parties have presented the Court with ten patent terms to
construe. The terms come from claims in two patents: U.S.
Patent No. 8, 189, 566 ("the '566 Patent") and
U.S. Patent No. 6, 212, 177 ("the '177
Patent"). I held a Markman hearing on October
11, 2018. During the hearing, I construed eight of the terms
from the bench. In this Memorandum Opinion, I discuss my
construction of the two remaining terms, both of which are
found only in the '177 Patent.
'177 Patent is titled "Remotely Accessible Key
Telephone System." The first paragraph of the Patent
reads as follows:
A line telephone stations, often referred to as "trader
turrets", are widely used in financial trading networks
such as between banks, brokerage houses, and other types of
financial institutions. Telephones of this type provide
access to a large number of telephone lines, typically a
hundred or more. A line is selected by depressing a single
key. A trading room can include many telephone key stations
so that many transactions can be completed simultaneously.
'177 Patent, at 1:5-12. The peculiar grammar and diction
of the quoted language give rise to a number of questions and
ambiguities. Did the drafter actually have in mind in the
first sentence "a line o/telephone stations"? But
if so, why did he use the plural "are" instead of
the singular "is" as the verb form? Perhaps, the
drafter meant to refer in the first sentence to
"a-line" telephone stations that are each connected
separately to a telephone network by a private line? But then
again, in the next sentence, the drafter seems to suggest
that a "telephone station" is a "type" of
telephone that provides access to a "large number of
lines." Perhaps the first word of the patent
("A") is a typographical error - an indefinite
article left over from a prior draft of the patent; and the
drafter really had in mind "line telephone
stations," whatever they might be. Things are further
complicated by the introduction in the paragraph's third
sentence of the concept of "telephone key
stations." Are these the same "telephone
stations" referred to in the first sentence or something
different? Is a "telephone key station" also a type
the grammar and diction peculiarities of the first paragraph
are typical of what follows in the written description and
claims of the '177 Patent's
specification. Parsing the' 177 Patent is no easy
patent's written description has a three-paragraph
"Summary of Invention" section. The first of the
three paragraphs reads as follows:
The system according to the invention provides both a voice
channel and a data channel to a remote trader turret via
public networks. The voice channel is preferably established
using the public telephone network. The data channel is
established via the Internet. The World Wide Web (WWW) is
used to supply graphical information via the Internet to
provide a line status display at the remote site. The
channels on these two public networks are coordinated to
provide remote access to the trading room switching network.
With this arrangement a trader can engage in trading
activities from a home office or while traveling.
Id. at 1:30-40. Thus, according to this summary, the
invention purports to connect a remote trader turret to
"the trading room switching network" using one of
more "public networks."
"Detailed Description of A Preferred Embodiment"
section of the patent describes a "typical office
switching network" which "establishes a voice
path" between "trader turrets (key
telephones)" and "selected lines," and which
uses "line cards" to "maintain the status of
each of the lines." Id. at 2:15-20. According
to the preferred embodiment description, "[i]n most
cases lines are private lines connecting to other brokers and
financial traders." Id. at 2:20-22. According
to the "background of the invention" section of the
written description, "[e]ach key telephone station in a
trading room has voice channel access to other stations in
the trading room and to a large number of outside lines of
different types (public, private, four wire, etc.)."
Id. at 1:13-16 (emphasis added).
is no mention of "private lines" in the written
description other than in the two sentences just quoted.
Claim 1 of the patent refers to "private line key
telephones" and claim 8 refers to "a private line
office network"; but those terms are recited nowhere
else in the specification. The term "an office
network" is recited in numerous claims, see, e.g.,
Id. at 3:30; id. at 4:42-43, but it is not
mentioned in the written description. The written description
appears to use the terms "office system,"
"office switching network," "trading room
switching network," and "switching network"
interchangeably. See, e.g., Id. at 1:54-56
("The office system connects to the calling
party and then dials the remote trader via the public
telephone system to connect the parties."); id.
at 2:15-18 ("FIG. 1 illustrates a typical office
switching network 10 which includes the backroom
switching gear such as in the MX system sold by IPC
Information Systems Inc., assignee of this
application."); id. at 1:36-38 ("The
channels on these two public networks are coordinated to
provide remote access to the trading room switching
network."); Id. at 2:19-20 ("Trader turrets
(key telephones) 12 and 13 are coupled to the switching
network which establishes a voice path to selected lines
11."). The written description also appears to equate
"public telephone network," "public switching
telephone network," and "public telephone
system." See Id. at 1:33-34 ("The voice
channel is preferably established using the public
telephone network.")', Id. at 2:58-60 ("A
voice channel can be completed from the office ...