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Sprint Communications Co. LP v. Charter Communications, Inc.

United States District Court, D. Delaware

December 20, 2019


          R. Montgomery Donaldson and Christina B. Vavala, POLSINELLI PC, Wilmington, DE; B. Trent Webb, Aaron E. Hankel, Ryan J. Schletzbaum, Ryan D. Dykal, Jordan T. Bergsten, Lauren E. Douville, Mark D. Schafer, Maxwell C. McGraw, and Samuel J. LaRoque, SHOOK, HARDY & BACON LLP, Kansas City, MO; Robert H. Reckers and Michael W. Gray, SHOOK, HARDY & BACON LLP, Houston, TX, attorneys for Plaintiff Sprint Communications Company LP.

          Kelly E. Farnan, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE; David S. Benyacar and Daniel L. Reisner, ARNOLD & PORTER KAYE SCHOLER LLP, New York, NY; Robert J. Katerberg, ARNOLD & PORTER KAYE SCHOLER LLP, Washington, DC; Gregory Arovas, Jeanne M. Heffernan, and James E. Marina, KIRKLAND & ELLIS LLP, New York, NY; Luke L. Dauchot, KIRKLAND & ELLIS LLP, Los Angeles, CA; Bao Nguyen, KIRKLAND & ELLIS LLP, San Francisco, CA, attorneys for Defendants Charter Communications, Inc., et al.

          Steven J. Balick and Andrew C. Mayo, ASHBY & GEDDES, Wilmington, DE; Robinson Vu, Lindsay Volpenhein Cutie, and Amy E. Bergeron, BAKER BOTTS LLP., Houston, TX; Timothy S. Durst, BAKER BOTTS LLP, Dallas, TX, attorneys for Defendants Mediacom Communications Corp., WideOpenWest Networks, Inc., Atlantic Broadband Finance, LLC, and Grande Communications Networks, LLC, et al.

          Phillip A. Rovner, Jonathan A. Choa, and Alan R. Silverstein, POTTER ANDERSON & CORROON LLP, Wilmington, DE; Brian M. Buroker, Omar F. Amin, and Jessica Airman, GIBSON DUNN & CRUTCHER LLP, Washington, DC; Robert Vincent, GIBSON DUNN & CRUTCHER LLP, Dallas, TX, attorneys for Defendant Frontier Communications Corp.



         Currently before the Court is the issue of claim construction of various terms in U.S. Patent Nos. 6, 452, 932 ("the '932 patent"), 6, 463, 052 ("the '052 patent"), 6, 633, 561 ("the '3, 561 patent"), 7, 286, 561 ("the '6, 561 patent"), 7, 505, 454 ("the '454 patent"), 6, 298, 064 ("the '064 patent"), 6, 343, 084 ("the '084 patent"), 6, 473, 429 ("the '429 patent"), 7, 327, 728 ("the '728 patent"), 7, 324, 534 ("the '534 patent"), 6, 330, 224 ("the '224 patent"), 6, 697, 340 ("the '340 patent"), 6, 999, 463 ("the '463 patent"), 6, 563, 918 ("the '918 patent"), and 7, 693, 131 ("the '131 patent"). I have considered the Parties' Joint Claim Construction Brief. (Civ. Act. No. 17-cv-1734-RGA; D.I. 162). I heard oral argument on October 1, 2019.

         I. BACKGROUND

         The patents in these cases relate to developments in voice-over-packet technology. Today, a version of this technology enables consumers to make telephone calls over the Internet. Specifically, the patents Sprint is asserting here disclose methods for routing calls between traditional telephone lines and packet-based data networks.

         The patents fall into seven groups: 1) Call Control ('932, '052, '3, 561, '6, 561, and '454); 2) Broadband ('064, '084, '429, and '728); 3) Broadband Interface ('534); 4) Enhanced Services ('224 and '340); 5) Number Portability ('463); 6) Addressing Servers ('918); and 7) Residential Hub (' 131). The patents within each group share an identical written description.


         "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 banc) (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.'" SoftView LLC v. Apple Inc., 2013 WL 4758195, at *l (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in original). When construing patent claims, 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 banc), 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 quotation marks omitted).

         "[T]he 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." Id. at 1312-13 (citations and internal 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.

         When a court relies solely upon the intrinsic evidence-the patent claims, the specification, and the prosecution history-the court's construction is a determination of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). The court may also make factual findings based upon consideration of extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks omitted). Extrinsic evidence may assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less useful in claim construction than the patent and its prosecution history. Id.

         "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) (citation and internal quotation marks omitted).


         I adopt the following agreed-upon construction:

Claim Term


"a network code that identifies a network element to provide egress . .. from the packet communication system" ('3, 561 Patent, Claims 1 and 24; '052 Patent, Claim 1)

"a code identifying a network element which network element provides an exit from a packet communication system"

"a network code representing a network element to egress the call from the packet system" (' 6, 561 Patent, Claim 14)


         1. "interworking unit" ('429, '084, '064, '224 Patents, Claim 1; '918 Patent, Claim 11)

a. Plaintiff's proposed construction: "device that translates communications between asynchronous and synchronous formats"
b. Defendants 'proposed construction: "ATM interworking multiplexer"
c. Court's construction: "ATM interworking multiplexer"

         The "interworking unit" is a crucial component of the claimed inventions. The claims of the '429, '084, '064, '224, and '918 patents all describe the "interworking unit" as a device that converts communications between different formats, allowing calls to transfer across phone lines and packet-based networks. The dispute is whether the term is limited to Asynchronous Transfer Mode (ATM)-a specific type of packet-based technology. I, like the other district courts that have considered this question, conclude it is. See Cox Commc'ns Inc. v. Sprint Commc'ns Co. L.P., 2016 WT 1125729 at *4 (D. Del. Mar. 21, 2016); Sprint Commc'ns Co. v. Comcast Cable Commc'ns, 2014 WT 5089402 at *I5-I7 (D. Kan. Oct. 9, 2014); Sprint Commc'ns Co. L.P. v. Big River Tel. Co., 2009 WT 1992537 at * 11-13 (D. Kan. July 8, 2009); Sprint Commc'ns Co. v. Vonage Holdings Corp., 500 F.Supp.2d 1290, 1319 (D. Kan. 2007). The parties are therefore limited to arguments consistent with this holding that the "interworking unit" in these patents is an "ATM interworking multiplexer."

         While claim terms are generally given their plain and ordinary meaning, there are two exceptions: "1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Defendants do not argue that the plain and ordinary meaning of "interworking unit," in isolation, is limited to ATM or that the inventor re-defined the term through lexicography. That leaves disavowal.

         Disavowal "requires that the specification or prosecution history make clear that the invention does not include a particular feature or is clearly limited to a particular form of the invention." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal citations omitted). An explicit re-definition is not necessary. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001). While courts must read claims in view of the specification, they may not simply import limitations from the specification into the claims. Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003). The Federal Circuit has acknowledged "there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998).

         The Federal Circuit has found disavowal where there were "clear, repeated, and consistent statements in the specification." SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1203 (Fed. Cir. 2013). Disavowal also applies when the specification includes language such as "the present invention requires . .." or "the present invention is . .." or "all embodiments of the present invention are.. . ." Hill-Rom Servs., Inc. 755 F.3d at 1372.

         In Microsoft Corp. v. Multi-Tech Sys., Inc., the Federal Circuit construed the words "sending," "transmitting," and "receiving" as limited to communications "over a telephone line." 357 F.3d 1340, 1348 (Fed. Cir. 2004). The court found the specification "repeatedly and consistently" described the claimed inventions as using a telephone line, and those statements were "not limited to describing a preferred embodiment, but more broadly describe[d] the overall inventions." Id. The court therefore reached the "inescapable conclusion" that the claims did not encompass data transmissions over networks such as the Internet. Id.

         Similarly here, the Broadband specification (the '064, '084, and '429 patents) repeatedly and consistently refers to the device that translates communications (i.e., the interworking unit) as an "ATM interworking multiplexer." Other features are clearly optional. The specification explains the multiplexer "could" include a digital signal; the processing "could" include echo control and encryption; "various embodiments" accept calls over DSO connections. ('084 patent, 2:58-64). No. such language suggests the ATM interworking multiplexer is an element of only some embodiments. Instead, the summary of the invention discloses, "The system comprises an ATM interworking multiplexer and a signaling processor linked to the ATM interworking multiplexer." ('084 patent, 2:11-14). The summary further explains that signals are transmitted "to the ATM interworking multiplexer" and that "[t]he invention also includes an ATM interworking multiplexer for providing calls with virtual connections." (Id. at 2:18-19, 2:46-47). Such repeated references might not amount to an explicit re-definition, but they do create a "clear and unmistakable" implication that the patentee intended the term "interworking unit" to mean an "ATM interworking multiplexer." Thorner 669 F.3d at 1366-67 ("To constitute disclaimer, there must be a clear and unmistakable disclaimer.")

         Plaintiff argues the canon of "claim differentiation" counsels a broader reading. (D.I. 162 at 16). According to this canon, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips 415 F.3d at 1315. For example, claim 8 of the '084 patent (unasserted here) claims the "method of claim 1 wherein the identifiers comprise asynchronous transfer mode connections." There would be no reason, Plaintiff argues, for the patentee to recite a dependent claim limited to ATM if the independent claim were itself already limited to ATM. Claim differentiation, however, "is not a hard and fast rule, and the presumption can be overcome by a contrary construction required by the specification or prosecution history." Hill-Rom Servs., Inc. 755 F.3d at 1374; see also Poly-Am., L.P. v. API Indus., Inc., 839 F.3d 1131, 1137 (Fed. Cir. 2016) ("[C]laim differentiation does not serve to broaden claims beyond their meaning in light of the patent as a whole, and it cannot override clear statements of claim scope found in the specification and prosecution history.") The clear and repeated references to an "ATM interworking multiplexer" therefore control over any implication based on claim differentiation.

         Plaintiff asserts the Federal Circuit has already held these patents are broader than ATM technology. (D.I. 162 at 13). That nonprecedential ruling, Sprint Commc'ns Co., L.P. v. Time Warner Cable, Inc., was not about claim construction. 760 Fed.Appx. 977 (Fed. Cir. 2019). Rather, the court concluded, based on the record at trial, that Time Warner had not shown by clear and convincing evidence that the Broadband patents failed the written description requirement of 35 U.S.C. § 112. Id. at 987. That is a fundamentally different inquiry from the task of claim construction. Nonprecedential rulings are, of course, not binding, but they can provide guidance and persuasive reasoning. Because of the different analysis called for here though, I find little guidance from that decision in interpreting this term.

         Plaintiff argues the Broadband specification must be broader than ATM because it incorporates by reference the Call Control specification. (D.I. 162 at 12). Defendants have not sought an ATM limitation on the Call Control patents, which contemplate networks that can be "narrowband, broadband, packet-based, or a hybrid." ('3, 561 patent at 8:44). But just referencing a broader specification does not necessarily expand the scope of a patent, "[incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent." Modine Mfg. v. U.S. ITC, 75 F.3d 1545, 1553 (Fed. Cir. 1996). So, even considering the broader patent specification incorporated by reference, a person of ordinary skill in the art would still read the clear and repeated references to ATM technology in the Broadband specification to infer that the "interworking unit" in the Broadband patents is an "ATM interworking multiplexer."

         The '224 and '918 patents (which are in the Enhanced Services and Addressing Servers groups, respectively) also disclaim any meaning of "interworking unit" beyond ATM technology. The first sentence of the '224 specification summary section discloses, "The present invention comprises a system for providing services for a call from a first communication device in an asynchronous transfer mode format." ('224 patent, 1:26-28). The abstract explains the "asynchronous transfer mode interworking unit" receives user communications and converts them into a compatible format. (Id. at Abstract). Similarly, the '918 patent specification explains, "The present invention further comprises a method for connecting a call through an asynchronous transfer mode system ... ." ('918 patent, 2:11-14). The Federal Circuit has held these kinds of unequivocal statements about the features of the "present invention" limit the scope of the claim terms. See Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316-19 (Fed. Cir. 2006); SciMed, 242 F.3d at 1343-44.

         2. "communication unit" ('728 Patent, Claim 1)

a. Plaintiff's proposed construction: Plain and ordinary. No. construction necessary. Alternative: "device that converts communication between asynchronous and synchronous formats."
b. Defendants' proposed construction: "ATM interworking multiplexer"
c. Court's construction: "ATM interworking multiplexer"

         The '728 patent is in the Broadband group, but unlike the other Broadband patents, it uses the term "communication unit" instead of "interworking unit" for the device that converts communications between different formats. Specifically, claim 1 of'728 describes the communication unit as "receiving the control messages and user communications" and "converting the user communications from a first communication format into a second communication format." The phrases "communication unit" and "interworking unit" do not appear in the Broadband specification. Instead, as discussed above, the specification refers repeatedly and consistently to this device as an "ATM interworking multiplexer." Given that the "communication unit" appears to be essentially the same device as the "interworking unit," I construe it too to mean an "ATM interworking multiplexer."

         3. "bearer interface" ('534 Patent, Claim 1)

a. Plaintiff's proposed construction: Plain and ordinary. No. construction necessary. Alternative: "packet network interface"
b. Defendants 'proposed construction: "ATM interworking multiplexer"
c. Court's construction: Plain and ordinary meaning

         Defendants argue the "bearer interface" in the '534 patent, which is in the Broadband Interface group, is interchangeable with the "interworking unit" described in the Broadband patents and should therefore receive the same construction. (D.I. 162 at 27). The Broadband Interface specification, however, differs in crucial respects from the Broadband specification. While both refer extensively to ATM, the Broadband Interface specification suggests ATM is only a preferred embodiment. It explains the system "interworks between a broadband system, such as an Asynchronous Transfer Mode (ATM) system, and a GR-303 system." ('534 patent, 1:67-2:2). It also states, "Other embodiments include ... an ATM multiplexer." (Id. at 2:19-21). These statements imply ATM technology is a possible, but not essential, feature of the invention. No. such statements appear in the Broadband specification.

         Thus, while the Broadband Interface specification includes numerous references to ATM technology, these references are not enough to meet the "exacting" standard for finding disavowal. See, e.g., Hill-Rom Servs., Inc., 755 F.3d at 1371. "We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that." Thorner, 669 F.3d at 1366. Accordingly, I conclude the "bearer interface" is not limited to ATM, and I instruct Defendants not to attempt to import that limitation into the term.

         Defendants assert "bearer interface" is not a well-known term in the art, but they suggest no alternative construction that is not based on ATM. (D.I. 162 at 28). Given the minimal discussion in the briefing about whether Plaintiffs suggestion of "packet network interface" would be an appropriate definition, I instead apply the plain and ordinary meaning, which is, as always, the default in claim construction. See Phillips, 415 F.3d at 1316.

         4. "service platform system" ('340 Patent, Claim 11)

a. Plaintiff's proposed construction: Plain and ordinary. No. construction necessary. Alternative: "a platform to provide services with respect to user communications"
b. Defendants 'proposed construction: "a system containing a signaling processor, a service platform, and an ATM ...

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