Sprint Communications Company L.P., v. Vonage Holdings Corp.Sprint Communications Company L.P., v. Vonage Holdings Corp.
MEMORANDUM AND ORDER
I. Introduction
In this lawsuit plaintiff Sprint Communications Company L.P. alleges that the voice over internet protocol telephony system of defendants Vonage Holdings Corp. and Vonage America, Inc. (Vonage) infringes sixty-one claims of seven telecommunications patents owned by Sprint. This matter is currently before the court on the parties’ various pretrial motions. In the first set of motions, Vonage seeks summary judgment of non-infringement and Sprint moves to strike certain portions of Vonage’s brief in support of its motion for summary judgment as well as its subsequent reply brief (docs. # 200, # 215 & # 245). The second set of motions relates to Vonage’s affirmative defenses and includes Sprint’s motion for partial summary judgment on most of those defenses, Von-age’s Rule 56(f) motion in response to Sprint’s motion for partial summary judgment, and Sprint’s motion to exclude the non-infringement opinion of Vonage’s expert Joel M. Halpern (docs. # 196, # 198 & # 218). Vonage has also filed objections to the magistrate judge’s orders of May 14 and 16, 2007 (doc. #210) in which the magistrate judge excluded certain matters from the final pretrial order in this case.
As to the first set of motions, for the reasons explained below, Sprint’s motions to strike are largely granted. Many of the arguments raised by Vonage in Sections II, III, and TV of its opening brief do not comply with the rules governing summary judgment practice in this court and therefore the court will disregard those improperly supported factual assertions except to the extent that they appear to be uncon-troverted and helpful to an understanding of the case. Additionally, the court will not consider the arguments raised by Von-age for the first time in its reply brief because Vonage should have raised those arguments in its opening brief. Turning to Vonage’s motion for summary judgment, that motion is granted with respect to the issue of literal infringement of the claim terms “interworking device” and “in-terworking unit” in the '301 Family Patents, which the court construes to mean
ATM interworking multiplexer,
because it is undisputed that the Vonage system does not use ATM technology, and therefore does not contain an ATM interworking multiplexer. As to the '605 Family Patents, it is granted as to the following issues: the issue of non-infringement of the asserted claims of the '932 Patent in the inbound call scenario; the issue of literal infringement of the limitation in claim 24 of the '561 Patent that the processing system must select a network code and use that network code to route the user communication; the issue of infringement of the asserted claims of the '052 Patent in the inbound scenario using an SIP gateway; and the issue of non-infringement of the asserted claims of the '572 Patent in the inbound call scenario. Vonage’s motion is denied with respect to all of the other summary judgment arguments
Sprint’s motion for partial summary judgment on Vonage’s affirmative defenses and counterclaims is largely granted. Specifically, it is denied with respect to (1) the statutory marking and notice requirements set forth in 35 U.S.C. § 287, and (2) Vonage’s defense and counterclaim of non-infringement. As to all other issues, the motion is granted. To the extent that Vonage’s memorandum in opposition to Sprint’s motion seeks relief under Rule 56(f), Vonage’s Rule 56(f) motion is denied because Vonage has not demonstrated how additional time for discovery would enable it to rebut Sprint’s allegations that there is no genuine issue of fact sufficient to preclude summary judgment on Vonage’s equitable defenses. In denying summary judgment on Vonage’s non-infringement defense and counterclaim, the court also denies Sprint’s motion to exclude Mr. Hal-pern’s non infringement opinion.
Lastly, as to Vonage’s objections and motion to review the magistrate judge’s orders of May 14 and 16, 2007, the court first finds that Sprint has demonstrated good cause why it failed to respond to Vonage’s objections in a timely fashion. The substance of Vonage’s objections are overruled because the magistrate judge’s rulings were not clearly erroneous or contrary to law.
II. Nature of the Case and Background of the Technology Involved
In the summer of 1993, Joe Christie, an employee at Sprint’s Advanced Technology Laboratory, invented a new telecommunications system. Mr. Christie was a unique expert in two very dissimilar disciplines: SS7 signaling and packet networks. SS7 signaling is the language used by conventional telephone networks to set up calls and communicate between telecommunications components in the Public Switched Telephone Network (PSTN). In 1993, virtually all voice traffic was carried over the PSTN using switches and other well-established components. PSTN is “synchronous” in that every component along a circuit must be synchronized in order for communications to successfully cross the network. Packet networks are entirely different. These networks use “packets” to transport data from point to point. Packets are digital transport units that include a header and a payload. Packet networks are “asynchronous” in that the transmitting and receiving points act out of sync with one another, sending and receiving packets within a message without regard to the timing of one another. Joe Christie essentially devised a way to combine the two types of systems to create a more efficient system. He invented a series of components and architectures of components that would allow the PSTN to “talk” to packet networks and intelligently set up and route telephone calls across the disparate networks. Mr. Christie’s invention was significant in that it had the potential to render obsolete major components within the PSTN, breaking the grip that a handful of switch manufacturers held on service providers like Sprint. Sprint immediately began the process of patenting Mr. Christie’s invention. 1 In the following years, Mr. Christie’s inventions and the related innovations made by people working with him resulted in a patent portfolio of well over one hundred issued United States patents. The portfolio is one of the largest project portfolios in the United States.
Sprint filed this lawsuit in October of 2005, asserting infringement of sixty-one claims from seven representative patents from its patent portfolio. The patents in suit can be divided into essentially two groups: the '301 Family Patents and the '605 Family Patents. The '301 Family Patents include U.S. Patent Nos. 6,473,429 (the '429 Patent), U.S. Patent No. 6,665,-294 (the '294 Patent), and U.S. Patent No. 6,298,064 (the '064 Patent). These three patents are collectively referred to as the '301 Family Patents because they all share an identical written description and drawings with U.S. Patent No. 5,991,301 and were filed as continuation applications of the '301 Patent. For priority purposes they all claim the filing date of the '301 Patent, which is September 8, 1995. Each of these patents is entitled “Broadband Telecommunications System,” and generally discloses an invention which is “a system for providing virtual connections through an ATM interworking multiplexer on a call-by-call basis.” '429 Patent, Abstract.
The '605 Family Patents include U.S. Patent No. 6,452,932 (the '932 Patent), U.S. Patent No. 6,304,572 (the '572 Patent), U.S. Patent No. 6,463,052 (the '052 Patent), and U.S. Patent No. 6,633,561 (the '561 Patent). These four patents are collectively referred to as the '605 Family Patents because they all share an identical written description and drawings with U.S. Patent Application No. 08/238,605 (the '605 Application, now abandoned) and were filed as continuation applications to the '605 Application. For priority purposes they all claim the filing date of the '605 Application, which is May 5, 1994. Each of these patents is entitled “Method, System and Apparatus for Telecommunications Control,” and generally discloses an invention that “includes a method, system, and apparatus for providing communication control.” '932 Patent, Abstract.
Vonage disputes Sprint’s allegations that its VoIP system infringes any claims of the asserted patents, either literally or under the doctrine of equivalents. Vonage also asserts that the patents in suit are invalid as anticipated, obvious, and for failure to comply with the written description, en-ablement, and definiteness requirements, as well as being unenforceable under the doctrines of laches (including prosecution laches), estoppel and acquiescence, unclean hands, that a patentee “may not broaden his claims by describing the product in terms of function,” and by virtue of their misuse by Sprint.
After well more than a year of discovery, the parties have now filed various motions in an attempt to set the stage for the trial of this ease. Vonage seeks summary judgment of non-infringement. Sprint of course opposes the motion and, additionally, has filed motions asking the court to strike or disregard significant portions of Vonage’s brief in support of its motion for summary judgment as well as new arguments raised by Vonage in its reply brief. Sprint also seeks partial summary judgment on many of the affirmative defenses asserted by Vonage. On a related note, Sprint has filed a motion to exclude the opinions of Vonage’s expert as to
III. Vonage’s Motion for Summary Judgment
Vonage contends that it is entitled to summary judgment as to all of the asserted claims of the patents in suit. Its overriding theory with respect to the asserted claims of the '301 Family Patents is that one of ordinary skill in the art would understand the invention of the '301 Family Patents to be related solely to Asynchronous Transfer Mode (ATM) technology. Vonage contends that, when the claim terms are properly construed in view of this invention, its system cannot be found to infringe several elements of the claims because its system does not use ATM technology. Its overriding theory with respect to the '605 Family Patents is that one of ordinary skill in the art reviewing the '605 Family Patents’ specification in its entirety would conclude that the invention of the '605 Family Patents relates to a signal processor which is external to the communications path. Based on this distinction, Vonage contends that its system does not infringe various asserted limitations of the '932, '572, '052, and '561 Patents.
A. Statement of Material Facts
1. Sprint’s Motion to Strike or Disregard Portions of Vonage’s Brief in Support of Its Motion for Summary Judgment
In order to properly resolve Von-age’s motion for summary judgment, the court must first consider the arguments raised in Sprint’s motion to strike or disregard portions of Vonage’s brief in support of its motion for summary judgment. Therein, Sprint asks the court to strike certain portions of the “facts” contained in Vonage’s brief because they contain improper argument, unsubstantiated allegations, and inaccurate recitations to the record. Specifically, Sprint contends that Vonage has failed to provide proper factual support for Sections II, III, and IV (except Vonage’s Fact 4, which Sprint admits) of its brief in violation of D. Kan. Rule 56.1. The court agrees. Even in the absence of Sprint’s motion, the court was struck by many of the same deficiencies in Vonage’s brief.
This court’s local rules, specifically D. Kan. Rule 56.1, set forth this court’s summary judgment practice. Initially,
[t]he memorandum or brief in support of a motion for summary judgment shall begin with a section that contains a concise statement of material facts as to which the movant contends no genuine issue exists. The facts shall be numbered and shall refer with particularity to those portions of the record upon which the movant relies.
D. Kan. Rule 56.1(a). The party opposing the motion for summary judgment must respond in a similar fashion.
Id.
Rule 56.1(b). In doing so, the response must “fairly meet the substance of the matter asserted.”
Id.
Rule 56.1(e). District courts have discretion in applying local rules such as these.
Vittoria N. Am., L.L.C. v. Euro-Asia Imports Inc.,
In this case, Sections II, III, and IV of Vonage’s brief in support of its motion for summary judgment do not comply with
Vonage contends that its approach to the summary judgment record complies with “the spirit of’ this court’s summary judgment practices. The court disagrees. One of the purposes of this court’s summary judgment rules is to create a clean record to which the opposing party can respond and on which the court can effectively and efficiently rule. The technological and legal complexity of this case, in particular, demands compliance with these rules. Vonage has no legitimate excuse for its decision to ignore these rules, as Vonage is represented by sophisticated counsel and competent local counsel who should be familiar with this court’s rules governing summary judgment practice. Indeed, given Vonage’s ample representation by counsel, the court wonders if Von-age’s failure to abide by this court’s summary judgment rules may have been a tactical decision. In any event, the prejudicial problems with Vonage’s approach is that attorney arguments are interlaced with purported facts and entire pages of purported facts are supported by generalized citations to the record. Neither Sprint nor the court can or should be forced to sift through the record to determine whether Vonage is relying on mere argument or whether there is some support in its broad citations. This is not a case in which the court is considering nothing more than whether to overlook mere unnumbered fact paragraphs by a non-moving party. Here, Vonage is seeking affirmative relief — judgment on the merits — based on a summary judgment record which Vonage has chosen to present in a manner so convoluted and cumbersome that it is unrealistic to expect the non-
Accordingly, the court will grant Sprint’s motion to the extent that it will largely disregard the arguments set forth in Sections II, III, and IV of Vonage’s brief in support of its motion for summary judgment. The motion is denied only in the sense that the court will consider the intrinsic evidence, such as the patents in suit, in construing the disputed claim terms. Thus, for example, the court will disregard Vonage’s loose interpretations of those patents as set forth in Section II, and instead will look directly to the patents themselves. As to the remainder of the parties’ asserted facts, consistent with the well established standard for evaluating a motion for summary judgment, the following facts are either uncontroverted or stated in the light most favorable to Sprint, the nonmoving party.
2. Statement of Material Facts
a. Facts Pertinent to the 'SOI Family Patents
The parties’ arguments concerning the asserted claims of the '301 Family Patents (the '429, '294, and '064 Patents) are primarily directed to claim construction. As such, the court will evaluate the intrinsic record, consisting of the patents-in-suit, in resolving the parties’ claim construction arguments. The facts from those patents which are relevant to the court’s claim construction analysis will be discussed in detail below. The only other evidence pertinent to the court’s claim construction analysis is the fact (a fact which is undisputed by Vonage) that one of skill in the art would understand that the “asynchronous transfer mode virtual identifier” of claim 23 of the '294 Patent is an ATM virtual path identifier/virtual channel identifier (VPI/VCI) pair.
As will be discussed in more detail below, the court construes the disputed claim term “identifier” to mean data for routing user information in a packet network. The summary judgment record, viewed in the light most favorable to Sprint, establishes that in the Vonage system voice packets are in IP format and include a destination IP address. The destination IP address is used for routing the voice packets in a packet network to the destination network endpoint. Thus, Sprint contends that this destination IP address constitutes the claimed “identifier.”
Other disputed claim terms are “inter-working device” and “interworking unit.” As discussed below, the court construes these claim terms to mean
ATM inter-working multiplexer.
The parties agree that the Vonage system does not use ATM technology, and hence apparently does not include an ATM interworking multiplexer. Sprint nonetheless contends that Vonage’s system infringes this claim limitation under the doctrine of equivalents by virtue of the gateways in the Vonage system. The summary judgment record submitted by Sprint establishes that the Vonage system includes Session Initiation Protocol (SIP) gateways and media gateways. The gateways receive narrowband telecommunications audio signals from the PSTN and convert those signals into packets in the form of VoIP packets. Thus, the Vonage
The final disputed claim term with respect to the '301 Family Patents is “asynchronous communication.” As explained below, the court finds that this claim term does not need to be further construed. The term “asynchronous” is a term of art in the communications field that refers to communications where the transmitting and receiving devices do not communicate based on a synchronized clock. IP communication (such as that at issue in Von-age’s VoIP system) does not require a synchronized timing relationship. Thus, it is asynchronous.
b. Facts Pertinent to the '605 Family Patents
The parties’ arguments concerning infringement of the '605 Family Patents relate largely to the manner in which the Vonage system operates. For reasons discussed previously, the court will largely disregard Vonage’s purported “facts” relating to operation of the Vonage system (due to Vonage’s failure to abide by the governing summary judgment rules) except to the limited extent that those facts are helpful to an overall understanding of the Vonage system, are otherwise immaterial to the court’s resolution of the disputed summary judgment issues, and appear to be uncontroverted by Sprint. The court will of course consider the relevant portions of the patents’ specifications, where relevant. But, otherwise, the court will accept as true Sprint’s description of the Vonage system, consistent with the well established summary judgment standard that the court must view the evidence in the light most favorable to Sprint, as the non-moving party. The Vonage system operates in essentially three relevant call scenarios: (1) outbound calls, (2) inbound calls, and (3) calls using an RTP relay in a NAT’d scenario.
i. Outbound Calls (From a Vonage Customer to a PSTN Number)
In an outbound call scenario (from a Vonage customer to a PSTN number), a Vonage user dials the called party’s telephone number. The Vonage user’s Terminal Adapter (TA) receives the dialed number and sends it to the Vonage outbound proxy. The outbound proxy performs a lookup using the dialed number to select an appropriate signaling gateway. The outbound proxy signals the signaling gateway. The signaling gateway performs a longest match comparison on the dialed number and a load balancing algorithm to select a specific circuit (circuit identification code, or CIC) to extend the call to the PSTN. The identification of a CIC includes information that identifies a specific media gateway that will be used to complete the outbound call. The signaling gateway sends a Create Connection (CRCX) message to the identified media gateway. The media gateway generates information which includes the media gateway’s selection of a public IP address. The identified media gateway, after receiving the CRCX message from the signaling gateway, provides its public IP address to the signaling gateway. The signaling gateway processes the information from the media gateway and then creates signaling in the form of an SIP 183 Session in Progress or 200 OK
According to a declaration submitted by Sprint’s technical expert, Dr. Stephen B. Wicker, in the '932 Patent, one of ordinary skill in the art would not find any disclosure of the processing system selecting a DS0 and not selecting a narrowband switch because the patent recognizes that selecting a connection necessarily also selects a network element. Dr. Wicker’s declaration also states that by identifying and selecting the network codes of the respective opposite endpoints, in light of the '572 Patent’s claims and specification, one of ordinary skill in the art would recognize that the processing system has selected a “connection” between those two endpoints.
ii. Inbound Calls (From a PSTN Number to a Vonage Customer)
An inbound call is received, first, through a PSTN switch. The PSTN switch is connected to the Vonage SIP gateway. When the Vonage gateway receives signaling from the PSTN switch, the gateway generates signaling to a Vonage inbound proxy. The Vonage inbound proxy receives the called number from Vonage’s SIP gateway (which received the called number from the PSTN). The inbound proxy processes the called number to determine the identity of the Vonage user and to identify the user’s TA. The inbound proxy signals the outbound proxy associated with the identified TA. When the outbound proxy receives an SIP invite from the inbound proxy, it already has the IP address of the identified TA. The outbound proxy signals the TA using the known IP address to set up the call. If the call is answered by the Vonage customer, the TA will reply to the outbound proxy with an SIP 200 OK message. The 200 OK message transmitted from the TA to the outbound proxy includes the IP address of the TA.
Once the SIP gateway receives the 200 OK message, it signals the PSTN switch to send the audio from the call. The audio arrives from the PSTN switch over a DS0 channel which forms the connection between the PSTN switch and the SIP gateway. The SIP gateway converts the information in the DS0 into voice packets and sends them over the internet to the TA using the TA’s address. The TA converts the voice packets received from the SIP gateway into an analog signal, which is converted to audible voice by the Vonage subscriber’s conventional phone. At the other end, the TA converts the analog signal from the Vonage subscriber’s conventional phone to packets with the SIP gateway’s address in the header, which are then sent to the SIP gateway.
For an inbound call to a non-NAT’d (the meaning of NAT is discussed below) Von-age customer, the audio IP address in the Session Description Protocol (SDP) portion of the 200 OK message is the same IP address used by the outbound proxy to signal the TA.
According to a declaration submitted by Dr. Wicker, in light of the claims and the specification of the '052 and '561 patents, one of ordinary skill would recognize that the phrase “select[ing] the network code” is not limited to a process performed exclusively by a single system.
The Vonage network implements certain inbound calls through a Virginia point-of-presence using a Sonus architecture that includes a separate signaling gateway. In the Sonus architecture, the signaling gate
iii. NAT’d Calls Using an RTP Relay
When a Vonage customer’s TA is behind a router that employs Network Address Translation (NAT), it has a private IP address which is not publicly routable. Calls to and from a TA behind a NAT are called NAT’d. To account for a NAT’d TA, the processing system invokes the use of a Real Time Protocol (RTP) relay.
For a NAT’d inbound call, the processing system instructs the media gateway to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the TA that the Vonage processing system selected. Packets from the Von-age gateways addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the TA.
For a NAT’d outbound call, the processing system instructs the TA to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the media gateway that the Vonage processing system selected. Packets from the TA addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the media gateway.
The use of an RTP relay is entirely invisible to the endpoint devices as well as to the end users of the telephone system, as the called and calling parties cannot tell whether a call is NAT’d. The TA and media gateway operate in the same manner regardless of whether RTP relays are involved. User communications are transported between the Vonage gateways and TAs even when the TA is NAT’d. According to Dr. Wicker’s declaration, from the perspective of one of ordinary skill in the art, in the context of the '561 and '052 Patents’ asserted claims, any differences in the way the user communications are transferred between end users in NAT’d and non-NAT’d calls are insubstantial.
B. Applicable Legal Standards
1. Claim Construction
Claim construction is governed by the methodology set forth by the Federal Circuit in
Phillips v. AWH Corp.,
The claims do not stand alone, but are part of “a fully integrated written instrument.”
Id.
at 1315. Therefore, they “must be read in view of the specification, of which they are a part.”
Id.
(quotation omitted). In fact, the specification is “the single best guide to the meaning of a disputed term” and is often dispositive.
Id.
The specification may reveal a special definition given to a claim term, or may reveal the inventor’s intentional disclaimer or disavowal of claim scope.
Id.
at 1316. In both instances, the specification serves to express the correct claim scope as dictated by the inventor.
Id.
The fact that the specification includes limited and specific embodiments is insufficient to define a term implicitly, and it is improper to confine the scope of the claims to the embodi
The court should also consult the patent’s prosecution history, if in evidence. Id. at 1317. Like the specification, the prosecution history “provides evidence of how the PTO and the inventor understood the patent.” Id. ‘Yet because the prosecution 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.” Id.
Finally, the court may consult extrinsic evidence such as expert and inventor testimony, dictionaries, and learned treatises. Id. These have all been recognized as tools that can assist the court in determining the meaning of particular terminology. Id. at 1318. Extrinsic evidence may be helpful to the court in understanding the technology or educating itself about the invention. Id. In particular, because technical dictionaries collect accepted meanings for terms in various scientific and technical fields, they can be useful in claim construction by providing the court with a better understanding of the underlying technology and the way in which one skilled in the art might use the claim terms. Id. at 1318. “However, concluso-ry, unsupported assertions by experts as to the definition of a claim term are not useful to a court.” Id. Extrinsic evidence is less reliable than intrinsic evidence in determining the construction of claim terms, and therefore the court should discount any expert evidence that is at odds with the intrinsic evidence. Id.
2. Summary Judgment
Summary judgment is appropriate if the moving party demonstrates that there is “no genuine issue as to any material fact” and that it is “entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). In applying this standard, the court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party.
Spaulding v. United Transp. Union,
The moving party bears the initial burden of demonstrating an absence of a genuine issue of material fact and entitlement to judgment as a matter of law.
Spaulding,
Once the movant has met this initial burden, the burden shifts to the nonmov-ing party to “set forth specific facts showing that there is a genuine issue for trial.”
Finally, the court notes that summary judgment is not a “disfavored procedural shortcut”; rather, it is an important procedure “designed ‘to secure the just, speedy and inexpensive determination of every action.’ ”
Celotex,
C. Analysis
For the reasons explained below, Von-age’s motion for summary judgment is largely denied. Specifically, it is granted with respect to the issue of literal infringement of the claim terms “interworking device” and “interworking unit” in the '301 Family Patents, which the court construes to mean ATM interworking multiplexer, because it is undisputed that the Vonage system does not use ATM technology, and therefore does not contain an ATM inter-working multiplexer. As to the '605 Family Patents, it is granted as to the following issues: the issue of non-infringement of the asserted claims of the '932 Patent in the ■ inbound call scenario; the issue of literal infringement of the limitation in claim 24 of the '561 Patent that the processing system must select a network code and use that network code to route the user communication; the issue of infringement of the asserted claims of the '052 Patent in the inbound scenario using an SIP gateway; and the issue of non-infringement of the asserted claims of the '572 Patent in the inbound call scenario. Vonage’s motion is denied in all other respects.
1. The 'SOI Family Patents
Vonage’s argument in support of its motion for summary judgment with respect to the '301 Family Patents is premised on its proposed claim construction. Vonage contends that one of ordinary skill in the art would view the inventions disclosed in the '301 Family Patents as relating solely to ATM technology, and therefore the court should construe certain claim terms accordingly. Specifically, Vonage asks the court to construe the claim term “identifier” to mean a VPI/VCI combination; the claim terms “interworking device” and “in-terworking unit” to mean ATM interwork-ing multiplexer; and the claim term “asynchronous communication” to mean ATM communication. It is undisputed that Vonage’s VoIP system does not use ATM technology and therefore, according to Vonage, those claim elements cannot be found in the Vonage system.
Vonage’s argument is grounded in the specification shared by the '301 Family Patents. The abstract describes the invention as follows:
The invention is a system for providing virtual connections through an ATM interworking multiplexer on a call-by-call basis. A signaling processor receives signaling for a call and selects the virtual connection for the call. The signaling processor generates new signaling that identifies the selection andtransfers the new signaling to the ATM interworking multiplexer that accepted the access connection for the call. The multiplexer converts user information from the access connection into ATM cells for transmission over the virtual connection in accord with the new signaling.
'294 Patent, Abstract. Additionally, the background section frames the invention as being specific to problems formerly associated with ATM networks. It describes the existing need in the art to provide virtual connection switching in ATM networks on a call-by-call basis using ATM multiplexers rather than the more complex ATM switches that were in development at the time of the invention. The summary of the invention describes the system as comprising “an ATM interworking multiplexer and a signaling processor linked to the ATM interworking multiplexer.” '294 Patent, col. 2, 11. 14-17. The summary continues to refer to the invention as including an ATM interworking multiplexer, it discusses converting and transmitting ATM cells, and it states that the system includes an ATM adaption processor and ATM interface. The summary concludes as follows:
In various embodiments, the invention accepts calls placed over DSO voice connections and provides virtual connections for the calls. In this way, broadband virtual connections can be provided to narrowband traffic on a call-by-call basis without requiring the call processing and signaling capability of an ATM switch.
'294 Patent, col. 2,11. 65-67 & col. 3,11.1-3. The detailed description describes various versions of the invention with references to diagrams. Suffice it to say without delving into further detail that the common specification shared by the '301 Family Patents certainly appears to support the proposition advanced by Vonage that the inventions disclosed in the written description relate to ATM technology. The pivotal issue is the impact of that specification on the meaning of the claim terms themselves.
The Federal Circuit addressed the significance of the written description in its landmark opinion on patent claim construction in
Phillips v. AWH Corp.,
With these overriding principles in mind concerning the significance of the specification of the '301 Family Patents, then, the court will turn its focus to the disputed claim terms as they are set forth in the three individual patents which share that specification. These patents include the '294, '429, and '064 Patents.
a. The '291 Patent
Sprint asserts that Vonage’s VoIP system infringes claims 1, 4, 9, 10, 17, 18, 19, 22, 26, 27, 28, 35, and 36 of the '294 Patent. Claims 1, 10, 19, and 28 are independent claims; the remainder are dependent claims. The independent claims include the disputed claim terms “identifier” and “interworking device.” Again, Vonage argues that the court should construe the claim term “identifier” to mean a VPI/VCI combination and the claim term “inter-working unit” to mean ATM interworking multiplexer.
Claim construction begins with the words of the claims themselves.
Phillips,
1. A telecommunication signal ... comprising:
a first signal component including user information from a narrowband communication signal; and
a second signal component including an identifier for routing the user information, wherein the identifier is selected by processing a signaling message, wherein an interworking device receives the narrowband communication signal and a control signal indicating the narrowband communication signal and the identifier, and in response to the control signal, converts the narrowband communication signal into a packet format having the first signal component including the user information and the second signal component including the identifier to form the telecommunication signal.
10. A control signal ... comprising: a first signal component indicating a narrowband communication signal having user information; and
a second signal component indicating an identifier for routing the user information, wherein the identifier is selected by processing a signaling message, wherein an interworking device receives the narrowband communication signal and the control signal indicating the narrowband communication signal and the identifier, and in response to the control signal, converts the narrow-band communication signal into a packet format having the user information and the identifier to form a telecommunication signal.
'294 Patent, col. 23 11. 20-34 & 55-67 (emphasis added). Claims 19 and 28 contain essentially identical relevant language, except that they claim methods of transferring signals.
i. “Identifier”
Beginning with the claim language itself, the claims do not indicate that the term “identifier” is limited to a VPI/VCI combination. In fact, Sprint correctly points out that the language of the claims identifies two key facts regarding the claimed “identifier”: (1) it is part of a communication signal that includes user information in a packet format; and (2) it
Other claims of the patent are useful for understanding the ordinary meaning of claim terms.
Phillips,
Vonage’s argument that the court should construe the claim term “identifier” to mean an ATM VPI/VCI pair is based on language contained in the specification. In addition to the overarching language concerning ATM technology discussed previously, Vonage points to language in the written description which discloses that VPI/VCI combinations are designated for the virtual connection. See '294 Patent, col. 7, 11. 15-21; col. 9, 11. 12-29. In fact, the specification’s references to VPI/VCI combinations are merely examples set forth as embodiments of the invention. The first reference to a VPI/VCI combination is contained in a portion of the written description describing Figure 2. It begins, “FIG. 2 depicts another embodiment of the invention.” '294 Patent, col. 5, at 41. In discussing the signaling received by the call/connection manager (CCM), the written description states as follows:
CCM 250 can select a virtual connection to the destination. The selection process can be accomplished through table look-ups. For example, a table could be used to translate a portion of the dialed number into a VPI. The VCI would be selected based on the available VCIs in the selected VPI. The VPI/VCI combination would correspond ...
Id. col. 7,11. 15-21 (emphasis added). The second discussion of VPI/VCI combinations is contained in a portion of the written description describing Figure 4, which is entitled the “ATM Cross-connect System.” That portion of the written description states as follows:
FIG. 4 depicts virtual connections provided by the ATM cross connect system in a version of the invention, although numerous other techniques for providing virtual connections will be appre-dated by one skilled in the art, and the invention contemplates any such system.
Id. col. 8,11. 61-65 (emphasis added). The specification repeatedly states that drawings and the detailed descriptions of those drawings depict versions of the present invention. In fact, just prior to the claims themselves, the specification concludes as follows:
Those skilled in the art will appreciate that variations from the specific embodiments disclosed above are contemplated by the invention. The invention should not be restricted to the above embodiments, but should be measured by the following claims.
Id. col. 23,11.14-18.
With respect to the claim term “identifier,” the court concludes that a person of skill in the art would understand the specification’s reference to VPI/VCI combinations to be exemplary in nature, rather than defining the outer limits of the claim term. First, of course, the doctrine of claim differentiation gives rise to a presumption that the term is not limited to a VPI/VCI combination. Second, the references to VPI/VCI combinations in the written description fall far short of reflecting an intentional disclaimer, or disavowal, of the full scope of the claim. Instead, the written description’s references to VPI/ VCI combinations contain qualifiers such as the fact that Figures 2 and 4, and the related detailed descriptions, are only versions of the invention; the “[f]or example” language; the statement that numerous other techniques for providing virtual connections will be appreciated by one skilled in the art, and the invention contemplates any such system; and, finally, the statement that the invention should not be restricted to those embodiments, but instead should be measured by the claims, as the invention contemplates variations that would be recognized by one skilled in the art. Given the clarity of the language of the claim terms themselves, then, the court will not import this limitation from the specification into the claims. Instead, the court believes that a fair and accurate claim construction, which is based on the claim language itself, is the construction proposed by Sprint. As such, the court construes the claim term “identifier” to mean data for routing information in a packet network.
ii. “Interworking Device”
Turning to the second disputed claim term in the '294 Patent, “interwork-ing device,” the court once again begins its task of claim construction with the language of the claims themselves. According to the claim language, the interworking device performs the task of “converting] the narrowband communication signal into packet format.” In other words, explicit within the claim language itself is that the “interworking device” is a device that in-terworks or converts between two communication formats — specifically, between a narrowband format (such as used in the PSTN) and a packet format (such as ATM or IP). The claim language itself does not limit the packet format to ATM, but rather could encompass the IP technology employed by Vonage. Based on this claim language, Sprint argues that the court should construe the claim term “interwork-ing device” to mean a device that converts narrowband communication signals into a packet format.
In support of Vonage’s argument that the court should construe the claim term “interworking device” to mean
ATM in-terworking multiplexer,
Vonage once again relies on language contained throughout the specification. It is true, as Vonage contends, that the specification repeatedly discloses in numerous important respects that an ATM inter-
The system comprises an ATM interworking multiplexer and a signaling processor linked to the ATM interworking multiplexer. The method [receives, processes, generates, and transmits] new signaling to the ATM interworking multiplexer. The method also includes receiving the user information for the call from the particular connection into the ATM interworking multiplexer ....
... The system includes an ATM interworking multiplexer to receive user information from a connection.... The system could also include an ATM cross-connect system connected to the ATM interworking multiplexer and configured to provide a plurality of virtual connections to the ATM interwork-ing multiplexer.
The invention also includes an ATM interworking multiplexer for providing calls with virtual connections....
'294 Patent, col. 2, 11. 14-50 (emphasis added).
Sprint points out that other language in the specification- contained in the detailed description of Figure 1 indicates that the interworking unit could be any muxing system. Specifically, this description explains that “mux 130 could be any mux-ing system operable to place user information arriving over connection 180 on the virtual connection selected by signaling processing system 160.”
Id.
Col. 4,11. 32-34 (emphasis added). But, prior to this disclosure the specification implicitly defines the term “mux” as an abbreviation for the term ATM interworking multiplexer. It states that the system “includes ATM interworking multiplexer (mux) 130, mux 140.”
Id.
col. 3, 11. 43-44. Thereafter, the written description refers to 130 and 140 as disclosed in Figure 1 as, simply, “mux.” The description of Figure 1 concludes that “[fjrom the above discussion, it can be seen that multiple virtual connections can be pre-provisioned through an ATM cross-connect system to interconnect ATM interworking multiplexers.”
Id.
col. 5, 11. 26-29. Similarly, Sprint points out the disclosure that “Fig. 3 shows one embodiment of the mux that is suitable for the present invention, but muxes that support the requirements of the invention are
The written description in this case is much like the one at issue in
Honeywell International, Inc. v. ITT Industries, Inc.,
iii. Infringement
Having construed the disputed claim terms, the court turns to the issue of infringement in which the court must compare the properly construed claims to the accused device or process.
Boss Control, Inc. v. Bombardier Inc.,
With respect to the claim term “identifier,” Vonage’s motion for summary judgment is denied. Vonage’s motion was premised on its proposed claim construction, which the court has rejected. As such, Vonage has not met its initial summary judgment burden of demonstrating the absence of a genuine issue of material fact and entitlement to judgment as a matter of law. Additionally, the court notes that as that claim term has been properly construed (to mean
data for routing user information in a packet network),
Sprint has raised a genuine issue of material fact sufficient to withstand summary judgment on the issue of literal infringement. Viewing the evidence in the light most favorable to Sprint, as of course the court must at this procedural juncture, voice packets in the Vonage system include a destination IP address and the destination IP address is used for routing the voice packets in a packet network. Thus, according to the evidence submitted by Sprint, the Vonage system literally utilizes and includes the claimed “identifier,” which consists of data for routing information in a packet network. Because this evidence is sufficient to withstand summary judgment on the issue of literal infringement, it is also sufficient to raise a genuine issue of material
Turning to the claim term “inter-working device,” Yonage’s motion is granted on the issue of literal infringement. The court has construed this claim term to mean ATM interworking multiplexer. Given this claim construction, Sprint has not raised a genuine issue of material fact to withstand summary judgment. It is undisputed that Vonage’s allegedly infringing system does not use ATM technology and, therefore, does not contain such a device. Thus, a rational trier of fact could not find based on the summary judgment record that Vonage’s system infringes this claim limitation. As such, summary judgment is granted on the issue of literal infringement.
Nonetheless, summary judgment is not warranted on the issue of infringement of this limitation under the doctrine of equivalents. “Infringement under the doctrine of equivalents requires that the accused product contain each limitation of the claim or its equivalent.”
AquaTex Indus., Inc. n. Techniche Solutions,
Vonage raised for the first time in its reply brief the argument that Sprint should be barred by prosecution history estoppel from using the doctrine of equivalents to expand the '301 Family Patents to capture non-ATM technology. Vonage’s original brief on the issue of non-infringement of these claim limitations under the doctrine of equivalents was directed solely to a function/way/result argument. Von-age did not argue that Sprint had so clearly and unmistakably surrendered claim scope during.prosecution of the '301 Family Patents that Sprint should be precluded from recapturing through the doctrine of equivalents. Indeed, if Vonage had believed that such was the case, it would not have needed to resort to the function/way/result argument that it raised in its initial brief. It is well settled that “a party seeking summary judgment always bears the initial responsibility of informing the district court of the basis for its motion.”
Celotex Corp. v. Catrett,
b. The 'k29 Patent
The parties’ arguments with respect to claim construction and infringement as to the '429 Patent are essentially the same as' with respect to the '294 Patent. Much like the '294 Patent, the disputed claim terms in the '429 Patent are “identifier” and “interworking unit” (which the parties seem to agree means the same thing as the “interworking device ” disclosed in the '294 Patent). Thus, for essentially the same reasons as stated above, 2 the court construes those claim terms with respect to the '294 Patent, which shares the common specification of the '301 Family Patents, to have the same meaning and scope as set forth above with respect to the '429 Patent. As such, Vonage’s motion for summary judgment as to the asserted claims in the '429 Patent is granted in part and denied in part to the same extent as set forth with respect to the '294 Patent.
c. The '06k Patent
The disputed claim terms in the '064 Patent are “interworking unit” (which, again, the parties seem to agree means the same thing as the “interworking device” disclosed in the.'294 Patent) and “asynchronous communication.” With respect to the claim term “interworking unit,” the parties once again incorporate their arguments as to the same claim term in the '294 Patent. For the same reasons, the court also construes the claim term “interworking unit” in the '064 Patent to mean ATM interworking multiplexer, grants Vonage’s motion for summary judgment on the issue of literal infringement as to this claim limitation, and denies Von-age’s motion as to the issue of infringement of this claim limitation under the doctrine of equivalents.
’ The only new issue presented with respect to the '064 Patent is the disputed claim term “asynchronous communication.” Vonage asks the court to construe this claim term to mean
ATM communication.
To help understand the distinction, “asynchronous” is a term of art in the communications field that refers to communications where the transmitting and receiving devices do not communicate based on a synchronized clock. A declaration submitted by Sprint’s expert, Dr. Wicker, is helpful to an understanding of the relevant technology underlying the distinction between “asynchronous communication” and ATM communication. Dr. Wicker explains that one of skill in the art recognizes “asynchronous” as a term of art in the communications field that refers to communications where the , transmitting and receiving devices do not share a common clock to facilitate communication. This is opposed to synchronous communications such as the PSTN in which time
As Sprint points out, the doctrine of claim differentiation is once again pertinent to the court’s construction of this claim language. Dependent claim 6 claims a method “wherein the asynchronous communication is in asynchronous transfer mode [ATM].” '064 Patent, col. 23, 11. 56-57. Thus, a presumption arises against construing the claim term in the manner suggested by Vonage. Vonage has not directed the court’s attention to any disclosure in the specification which suggests that the court should construe the specific claim term “asynchronous communication” in the manner urged by Vonage. Instead, Vonage relies on its overriding theory that the written description establishes that the inventions disclosed in the '301 Family Patents generally relate to ATM technology. In the absence of some type of link to the disputed claim language at issue, however, these generalized disclosures are insufficient to overcome the presumption created by the doctrine of claim differentiation. As such, the court declines to construe the claim term in the manner urged by Vonage.
In the absence of Vonage’s sought-after claim construction, then, Vonage’s motion for summary judgment is denied as to the issue of infringement with respect to this claim limitation. Vonage’s motion was premised on its proposed claim construction, which the court has rejected. As such, Vonage has not met its initial summary judgment burden of demonstrating the absence of a genuine issue of material fact and entitlement to judgment as a matter of law.
2. The '605 Family Patents
Vonage’s arguments for summary judgment on the asserted claims of the '605 Family Patents are based on its contention that the specification discloses that the invention of the '605 Family Patents relates to a new signal processor which is external to the communications path and selects network elements and/or connections for telephone calls.
a. The '932 Patent
Sprint asserts that Vonage’s VoIP system infringes claims 1 and 18 of the '932 Patent, both of which are independent claims. Vonage argues that it is entitled to summary judgment on these claims because its processing system does not receive and process a message so as to select a narrowband switch to be used for the subsequent telephonic communication, as required by the asserted claims. Specifically, the claims state as follows:
1. A method for handling a call ..., the method comprising:
receiving and processing the first message in a processing system external to narrowband switches to select one of the narrowband switches....
'932 Patent, col. 22,11.12-15.
18. A communications system ..., the communication system comprising:
a processing system external to nar-rowband switches and configured to receive and process the first message to select one of the narrowband switches
'932 Patent, col. 23, 11. 20-27. Thus, the operative claim language is that the “processing system” must receive and process the first message “to select one of the narrowband switches.” The parties do not ask the court to construe the claim terms to give them any particular scope and meaning, and therefore the issue presented is as to infringement only, which is a question of fact.
See PSC Computer Prods., Inc. v. Foxconn Int’l, Inc.,
Vonage’s reasoning that its processing system does not select a narrowband switch is that the specification defines a switch to be a network element whereas it defines a DS0 to be a connection; the specification distinguishes between the selection of a network element and the selection of a connection; that in an outbound call the signaling gateway in the Vonage system selects the DS0 connection; and therefore there can be no literal infringement because the Vonage processor selects a DS0 connection and not a narrowband switch. To further elaborate on the manner in which the Vonage system operates, Sprint points to the deposition testimony of Rohan Dwarkha, one of Vonage’s engineers. He testified that in an outbound call scenario the media gateway (part of the Vonage processing system) plays a role in selecting the DS0 connection, that the DS0 connects the media gateway to the PSTN (narrowband) switch, and that a DS0 is connected to only one media gateway and only one PSTN switch. Viewing this evidence in the light most favorable to Sprint, a rational trier of fact could find that the processing system’s selection of a DS0 connection also constitutes the selection of “one of the narrowband switches,” as required by the claim limitation, because the DS0 connection is connected to only one narrowband switch. Indeed, the written description in the '932 Patent discloses this type of scenario as one embodiment of the invention. It states as follows:
There are situations in which the selection of a network element and the selection of a connection signify the same thing. On FIG. 1 for example, instructing first element 131 to use first connection 141 is synonymous with an instruction to connect to second element 132. This is because the connection inevitably connects to the element. The selection of a connection may effectively select a network element, and the selection of a network element may effectively select a connection (or group of connections) to that network element.
'932 Patent, col. 7, 11. 10-19 (emphasis added). Accordingly, Sprint has presented a genuine issue of material fact sufficient to withstand summary judgment on the issue of literal infringement of this claim limitation in the outbound call scenario.
Vonage further contends that there can be no infringement under the doctrine of equivalents because Sprint dedicated “selection of a connection” (as opposed to selection of a narrowband switch) to the public. Under the disclosure-dedication rule, disclosed but unclaimed subject matter is dedicated to the public.
Johnson & Johnston
Assocs.
Inc. v. R.E. Serv. Co.,
The written description of the '932 Patent falls far short of disclosing the “selection of a connection” with the requisite specificity that one of ordinary skill in the art would understand it to be unclaimed subject matter. Vonage relies on two disclosures in the specification. One states that in one embodiment, the processing system “selects the network elements and the connections that comprise the communications path.” '932 Patent, col. 6,11. 23-25. The other states that in another embodiment, the processing system “may select only the network elements and not the connections.” Id. col. 6, 11. 62-63. Von-age’s argument does not account for the clarity of the language in the next paragraph, quoted above, that there are situations “in which the selection of a network element and the selection of a connection signify the same thing.” Id. col. 7,11. 10-12 (emphasis added). Far from disclosing that this subject matter is unclaimed, it discloses that this matter is, to the contrary, claimed. Consequently, Vonage’s motion for summary judgment on the issue of infringement under the doctrine of equivalents based on this claim limitation in the outbound call scenario is denied.
Vonage points out in its reply that Sprint has never contended that the use of the Vonage system on inbound calls infringes the claims of the '932 patent, literally or under the doctrine of equivalents. Indeed, in Sprint’s response to Vonage’s motion for summary judgment, it does not raise a genuine issue of fact on the issue of infringement of these claim limitations in the inbound call scenario. To this extent, then, Vonage’s motion for summary judgment is granted with respect to infringement of this limitation of the claims in the '932 patent in the inbound call scenario.
b. The '561 & '052 Patents’ Limitation Requiring a Processing System to Select a Network Code That Identifies a Network Element to Provide Egress from the Packet Communication System
Sprint asserts that Vonage’s VoIP system infringes claims 1, 3, 22, 23, 24, 26, 29, 36, and 38 of the '561 Patent, and claims 1, 2, 3, 4, 5, and 11 of the '052 Patent. Claims 1 and 24 of the '561 Patent and claim 1 of the '052 Patent are independent claims; the remainder are dependent claims. The independent claims provide, in relevant part, as follows:
1. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:
receiving a signaling message for the user communication from a narrowband communication system into the processing system;
processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication ...
'561 Patent, col. 22, 11. 12-21 (emphasis added).
24. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:
selecting a network code that identifies a network element to provide egress for the user communication from the packet communication system to a narrowband communication system ...
... and using the network code to route the user communication through the packet communication system to the network element ...
'561 Patent, col. 23, 11. 20-37 (emphasis added).
1. A method of transferring a user communication to a packet communication system, the method comprising:
receiving the user communication into a device;
receiving signaling formatted for a narrowband system into a processing system;
in the processing system, processing the signaling to select a network code that identifies a network element to provide egress for the user communication from the packet communication system ...
'052 Patent, col. 22, 11. 10-18 (emphasis added). These patents share a common specification that explains that network codes are typically selected through table look-ups or algorithm solutions. '561 Patent, col. 14,11. 46-53.
Vonage raises three arguments as to why its system does not infringe these claim limitations. First, it contends that in its system the media gateway and TA, not its processing system, select the network codes. Second, and on a related note, Vonage contends that its system does not infringe the limitation in claim 24 of the '561 Patent that the system must use the network code selected by the processing system to route the user communication. And, third, Vonage contends that in NAT’d calls the processing system selects a network code that identifies an RTP relay, a network element that does not provide egress from the packet communication system.
i. Selection of a Network Code by the Processing System
Vonage’s first argument of non-infringement with respect to these claim limitations is that its processing system does not select the network code that identifies the network element to provide egress from the packet communication system. Von-age’s theory in this respect is that in an outbound call the Vonage media gateway selects the network code and in an inbound call the Vonage customer’s TA selects the network code; neither the media gateway nor the TA are part of the Vonage call processing architecture; therefore the Vonage system does not meet the limitation that the “processing system” select the network code. In so arguing, Vonage essentially contends that its processing system (the inbound and outbound proxies and the signaling gateway) does not select the network code of the egress elements because the egress elements themselves (the media gateway and TA) perform the selection themselves. Sprint does not seem to take issue with Vonage’s argument that the media gateway and TA are not part of the Vonage processing system, or that the media gateway and TA are the components that actually select the network code. Instead, Sprint’s argument focuses on the fact that the Vonage processing system performs a significant part of the selection of the network code by the media gateway and TA. Sprint contends that the court should give the claim term “selecting]” the full breadth of its ordinary meaning, including requesting information from other elements and processing the received information.
In contrast, claim 24 of the '561 Patent claims a method of operating a processing system that includes (among other things) “selecting a network code.” '561 Patent, col. 23, 11. 23 (emphasis added). As to this claim, then, the processing system must do more than merely process the signal to select the network code; it must actually select the network code. The summary judgment record and arguments presented by the parties establishes that the Vonage media gateway and TA, which are not part of the Vonage processing system, perform the function of selecting the network code. Consequently, Von-age’s motion for summary judgment is granted on the issue of literal infringement as to claim 24 of the '561 Patent.
Vonage further seeks summary judgment under the doctrine of equivalents. Vonage’s harguments in this respect are not directed to a lack of evidence that the differences in Vonage’s system are insubstantial so as to meet the same function/way/result test.. Instead, Vonage argues that its system cannot infringe under the doctrine of equivalents because (1) allowing the claims to encompass Vonage’s Media Gateway or TA selecting a network code would violate the “all elements” rule by vitiating this limitation, and (2) during prosecution, Sprint repeatedly emphasized that the “processing system” in its claims must be “external” from the- communications path whereas the Vonage Media Gateway and TA are part of the communications path. The court finds both arguments to be without merit.
The “all elements” rule is a limitation on the doctrine of equivalents.
Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
Vonage’s prosecution history estoppel argument suffers from the same fundamental flaw. Its argument is so cursory and undeveloped that the court could not even begin to find that Vonage is entitled to judgment as a matter of law based on this theory. For example, Vonage contends that “as described above, throughout the prosecution of the '561 and '052 Patents and its parent applications, including the '780 patent, Sprint repeatedly emphasized that the ‘processing system’ in its claims must be ‘external’ from the communications path.” Aside from the fact that Vonage has not directed the court’s attention to any evidence in the record pertaining to the prosecution history, Sprint points out that it has never contended that the-Vonage processing system can be on the communications path. In the absence of any meaningful discussion to demonstrate that Sprint is now taking an approach that is inconsistent with the relevant prosecution history, then, the court finds Vonage’s prosecution history estop-pel argument to be without merit at this procedural juncture.
ii. Using the Network Code to Route the User Communication
Vonage next turns to the limitation in claim 24 of the '561 patent that the processing system must not only select a network code, but must also actually use that network code to route the user communication. According to Vonage, in an outbound call scenario its media gateway, not its processing system, selects the network code. Vonage’s argument in this respect seems to be a repackaged version of its non-infringement arguments in the preceding section. In other 'words, Vonage seems to be arguing that the “using the network code to route the user communication” limitation cannot be met literally because the specified “network code” is not selected by the processing system. For the same reasons stated above, then, as to this claim limitation the court grants Vonage’s motion for summary judgment on the issue of literal infringement and denies it on the issue of infringement under the doctrine of equivalents.
iii. Egress in a NAT’d Scenario Using an RTP Relay
As to selecting the network code discussed above, each of the asserted independent claims in the '561 and '052 Patents requires the selection of “a network code that identifies a network element to provide egress [for the user communication] from the packet communication system.” '561 Patent, col. 22, 11. 18-21 and col. 23, 11. 23-25; '052 Patent, col. 22, 11. 16-18. Vonage contends that its system
The summary judgment record, viewed in the light most favorable to Sprint, establishes that to account for a NAT’d TA, the Vonage processing system invokes the use of an RTP relay. For a NAT’d inbound call, the processing system instructs the media gateway to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the TA that the Vonage processing system selected. Packets from the Vonage gateways addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the TA. Sprint contends that the IP address of the RTP relay is a “network code”; that the TA selected by the Vonage processing system also is a “network code”; that the network code that identifies the RTP relay is correspondingly replaced with the network code that identifies the TA; thus, the RTP relay merely acts as a pass-through device. For a NAT’d outbound call, the processing system instructs the TA to address its user communication packets to the IP address of an RTP relay. The RTP relay then re-addresses the received packets to the media gateway that the Vonage processing system selected. Packets from the TA addressed to a specific IP address of an RTP relay are correspondingly sent to the IP address that identifies the media gateway. Again, Sprint contends that the RTP relay merely acts as a pass-through device.
This description of the system creates a genuine issue of material fact precluding summary judgment on the issue of literal infringement. The claim limitations require that the processing system process the incoming signaling message to select a network code (in the case of claim 1 of the '561 Patent and claim 1 of the '052 Patent) or select a network code (in the case of claim 24 of the '561 Patent) that identifies a network element to provide egress. Not only does the Vonage processing system select the IP address (a network code) of the RTP relay (a network element) that does not provide egress, but it also selects the identity of the TA (in an inbound call) and media gateway (in an outbound call) to which the RTP is to re-address the packets. A rational trier of fact could find based on this record that the TA and the media gateway are network elements that provide egress from the system, and therefore the Vonage processing system infringes these claim limitations in a NAT’d scenario because it selects network codes that identify network elements to provide egress from the packet communication system. Accordingly, Vonage’s motion for summary judgment on the issue of literal infringement of these claim limitations is denied.
Vonage’s motion for summary judgment on the issue of infringement of these claim limitations under the doctrine of equivalents is also denied. According to the summary judgment record, the use of an RTP relay is entirely invisible to the endpoint devices as well as to the end users of the telephone system, as the called and calling parties cannot tell whether a call is NAT’d. The TA and media gateway operate in the same manner regardless of whether RTP relays are
c. The '052 Patent’s Limitation Requiring Receiving Signaling Formatted for a Narrowband System
Vonage seeks summary judgment that its inbound calls do not infringe the '052 patent because the Vonage system does not meet the limitation of “receiving signaling formatted for a narrow-band system into a processing system,” as required by independent claim 1. '052 Patent, col. 22, 11. 13-14. Vonage contends that in the inbound scenario it is the Vonage SIP gateway, not the processing system, that receives signaling formatted for a narrowband switch. In response, Sprint states that it does not contend that the Vonage system infringes in the inbound scenario using an SIP gateway. Accordingly, Vonage’s motion for summary judgment is granted as unopposed as to the asserted claims of the '052 Patent to the extent that infringement is asserted against the Vonage system in the inbound scenario using an SIP gateway.
Sprint further explains that its allegations have focused on implementations within the Vonage system that do not employ an SIP gateway. Specifically, the Vonage system implements certain inbound calls through a Virginia point-of-presence using a Sonus architecture that includes a separate signaling gateway. Sprint contends that, in the Sonus architecture, the signaling gateway receives signaling directly form a narrowband network in a narrowband SS7 format. Thus, for inbound calls in Vonage’s Sonus implementation, the Vonage processing system (specifically, the signaling gateway) receives signaling formatted for a narrowband system. In Vonage’s reply, it raised for the first time the argument that it is entitled to summary judgment of non-infringement in the inbound call scenario involving the Sonus architecture in situations where the Vonage system employs an RTP relay, or NAT’d calls. Once again, the court will not consider this argument because it was not raised for the first time until Vonage’s reply. Dr Wicker’s supplemental expert report, dated April 27, 2007, disclosed that Sprint was asserting infringement of the claims of the '052 Patent with respect to the Sonus architecture, not the architecture involving an SIP gateway. Thus, if Vonage wished to seek summary judgment on the issue of non-infringement for inbound calls where the Vonage system employs an RTP relay, it should have done so in its opening brief, not its reply.
In Vonage’s opening brief, it also moved for summary judgment on claim 1 of the '561 Patent on the same grounds as with respect to claim 1 of the '052 Patent. Significantly, however, claim 1 of the '561 Patent contains a different limitation than claim 1 of the '052 Patent. The limitation in the '561 Patent claims a method where the processing system “receiv[es] a signaling message for the user communication from a narrowband system,” '561 Patent,
d. The '572 Patent’s Limitation Regarding Selecting a Second Connection
Sprint asserts that Vonage’s VoIP system infringes claims 1, 2, 5, 6, 14, 38, 39, 42, 43, and 51 of the '572 Patent. Claims 1 and 38 are independent claims; the remainder are dependent claims. These claims state, in relevant part, as follows:
1. A method for processing telecommunications signaling that comprises:
(a) receiving in-band telecommunications signaling into a first telecommunications device coupled to a first connection;
(b) in the first telecommunications device, converting the in-band telecommunications signaling to an out-of-band telecommunications signaling message;
(c) routing the out-of-band telecommunications signaling message from the first telecommunications device to a processor that is external to the first telecommunications device and a second communication device;
(d) processing the out-of-band telecommunications signaling message in the processor to select a second connection coupled to the first telecommunications device and to the second telecommunications device;
(e) generating a first control message and a second control message indicating the second connection ...
'572 Patent, col. 22, 11. 16-34 (emphasis added).
38. A system for processing telecommunications is signaling that comprises:
a processor that is external to the first telecommunications device and a second telecommunications device and configured to receive the out-of-band telecommunications signaling message from the first telecommunications device and to process the out-of-band telecommunications signaling message to select the second connection, to generate the first control message and a second control message that indicate the second connection ...
'572 Patent, col. 23, 11. 51-67 to col. 24, 11. 1-3 (emphasis added).
The operative claim limitations upon which Vonage’s non-infringement argument focuses is that “a processor that is external” to the communication devices must process the incoming signaling message “to select a second connection” and generate control messages that indicate that connection. The parties discuss these claim limitations in an outbound call see-
On the other hand, Vonage’s motion is granted as to inbound calls. Vonage correctly points out that Sprint’s arguments as to infringement of the asserted claims in the '572 Patent are directed only to the outbound call scenario. Thus, Sprint’s response to Vonage’s motion for summary judgment does not raise a genuine issue of fact on the issue of infringement of these claim limitations in the inbound call scenario.
IV. Sprint’s Motion for Partial Summary Judgment
Sprint’s motion for partial summary judgment is directed to certain affirmative defenses and counterclaims asserted by Vonage in this case. Sprint relies on essentially three predominant theories to support its motion. First, Sprint argues that Vonage did not produce sufficient evidence during discovery to support many of these defenses. Second, Sprint contends that certain of Vonage’s affirmative defenses are legally defective. And, third, Sprint contends that - Vonage’s expert is not qualified to provide testimony on the subject of non-infringement.
A. Statement of Material Facts 3
1. The Written Description, Enablement, and Definiteness Requirements of 35 U.S.C. § 112
Vonage contends that the asserted patents are invalid pursuant to 35 U.S.C. § 112 for failure to comply with the written description, enablement, and definiteness requirements. Pretrial Order (doc. # 207), ¶ 7(a)(6), at 18. Vonage’s amended answers in this case further explain the basis for this defense. Therein, Vonage asserted as its “Second Affirmative Defense” that the asserted patents are invalid because they fail to point out and distinctly claim that part or portion of the subject matter disclosed in the patents’ specifications that the named inventor regarded as
During discovery in this case, Sprint sought to ascertain the nature of Vonage’s evidence to support these asserted affirmative defenses. Sprint’s Interrogatory No. 5 asked Vonage to “[d]escribe, in detail, the full factual basis and explanation for Vonage’s contention that Sprint’s Asserted Patents are invalid, void and/or unenforceable.” Vonage responded, in relevant part, as follows:
Vonage asserts that the apparent scope of the asserted claims as set forth in Mr. Wicker’s January 12, 2007 expert report of infringement is sufficiently broad such that ... one or more of the claims of the asserted patents fail to particularly point out and distinctly claim the subject matter to which the applicant regards as the invention pursuant to 35 U.S.C. § 112. Vonage will provide further details of the invalidity of the asserted claims under [§ 112] in its expert report due on February 23, 2007.
In Vonage’s second supplemental response to this interrogatory, Vonage specifically “incorporate^ by reference the February 28, 2007 Expert Invalidity Report of Frank R. Koperda and its accompanying exhibits and attachments, which inter alia set forth opinions that each asserted claim of ... each of the patents-in-suit is not valid under one or more sections of Title 35 of the U.S.Code.” Mr. Koperda’s expert invalidity report provides no opinion regarding 35 U.S.C. § 112, ¶ 2 (Vonage’s Second Affirmative Defense) or “the doctrine that a patentee may not broaden his claims by describing the product in terms of function” (Vonage’s Seventh Affirmative Defense). Vonage does not dispute this, but states that it served a supplemental response to this interrogatory concurrently with the filing of its opposition to Sprint’s motion for partial summary judgment.
2. Laches (Including Prosecution Laches), Estoppel, and Acquiescence
Vonage asserts that the asserted patents are unenforceable by virtue of the doctrines of laches (including prosecution laches), estoppel, and acquiescence. Pretrial Order (doc. #207), ¶ 7(a)(7) & (8), at 18. Vonage’s amended answers in this case further explain the basis for these defenses. Originally, all of these defenses were set forth in Vonage’s Fifth Affirmative Defense, which asserted that Sprint’s complaint was barred by the doctrines of laches, estoppel, and acquiescence.
In attempting to ascertain the evidentia-ry basis for these affirmative defenses, Sprint served Vonage with its Interrogatory No. 6, asking Vonage to “[d]escribe, in detail, the full factual basis and explanation for Vonage Holding Corp.’s contention that Plaintiffs claim is barred, in whole or in part, by the doctrine of laches, estoppel and unclean hands.” Vonage responded, in relevant part, as follows:
Subject to and without waiving these objections, Vonage Holdings states that Sprint’s Asserted Patents issued as early as 2001, and because Sprint was aware of Vonage Holdings and its VoIP activities since that time, its decision to wait until 2005 to initiate the present law suit [sic] amounts to inexcusable delay and prejudice to Vonage Holdings.
Vonage later supplemented its response to this interrogatory, stating as follows:
[T]o expand on Vonage’s response, with respect to the Affirmative Defense of “laches, estoppel and acquiescence” Von-age states that Sprint knew of Vonage’s activities [sic] in 2001, at the same timeas the Asserted Patents were issuing, yet decided to wait until 2005 to file suit. Sprint therefore unreasonably and inexcusably delayed in filing suit, and consequently, Sprint is barred from pursuing its claim by the doctrine of laches.
The asserted patents in this case issued in 2001, 2002, and 2003. Specifically, the '064 and '572 Patents issued in October of 2001, the '932 and '052 Patents issued in September and October of 2002, the '052 and '561 Patents issued in October of 2003, and the '294 Patent issued in December of 2003. Vonage states that it served a supplemental response to this interrogatory concurrently with the filing of its opposition to Sprint’s motion for partial summary judgment.
As stated previously, the pretrial order in this case includes a defense of prosecution laches. Sprint points out, however, that Vonage did not raise the specific defense of prosecution laches (as opposed to the general laches defense) in its answers, its interrogatory responses, or its expert reports. It is undisputed that Sprint produced copies of the patents and their prosecution histories on February 10, 2006. Additionally, on February 15, 2007, Sprint produced copies of the prosecution histories of the parent applications as well as prosecution histories of related patents. Vonage first specifically disclosed its prosecution laches defense in the parties’ preliminary pretrial order, which was submitted to the court on May 7, 2007. Vonage disputes Sprint’s characterization of its laches defense, contending that the general laches defense Vonage asserted in its original responsive pleading encompassed a defense of prosecution laches. Vonage further states that it served a supplemental response to Sprint’s Interrogatory No. 6 concurrently with the filing of its opposition to Sprint’s motion for partial summary judgment.
3. Unclean Hands and Patent Misuse
Vonage contends that the asserted patents are unenforceable by virtue of the doctrines of unclean hands and patent misuse. Pretrial Order (doc. # 207), ¶ 7(a)(9) & (11), at 18-19. In Vonage’s amended answers in this case, Vonage asserted unclean hands as its “Sixth Affirmative Defense” and patent misuse as its “Eighth Affirmative Defense.” In response to Sprint’s Interrogatory No. 5 (set forth above) as to Vonage’s invalidity contentions, Vonage responded:
Vonage Holdings states that it cannot fully respond to this Interrogatory until such time as Vonage Holdings receives Sprint’s infringement contentions. To the extent Vonage Holdings understands the scope of Sprint’s Asserted Patents, Vonage Holdings asserts that Sprint’s Asserted Patents do not cover VoIP technology. Thus, Sprint’s overbroad reading of its Asserted Patents to cover VoIP technology constitutes patent misuse ...
In response to Sprint’s Interrogatory No. 6 (set forth above), Vonage stated as follows:
Finally, with respect to unclean hands, Vonage states that Sprint has impermis-sibly broadened the “physical or temporal scope” of the patent grant with anti-competitive effect. That is, Sprint is now asserting a claim scope that is neither supported by the specification of the Asserted Patents nor the language of the claims themselves. As such, Sprint has impermissibly broadened the scope of its patent grant and, by attempting to enforce these expanded claims against Vonage, Sprint is committing patent misuse and has unclean hands.
Again, Vonage points out that it served a supplemental response to this interrogatory concurrently with the filing of its oppo
4. Statutory Marking and Notice Requirements of 35 U.S.C. § 287
The parties stipulated in the Pretrial Order that Sprint is not aware of any product or service made, sold, or offered for sale by Sprint that is within the scope of any claim of the Asserted Patents. Von-age nonetheless points to the deposition testimony of Michael J. Setter, Esquire, that he recalled seeing prototypes of the systems disclosed in the patent applications.
5. Non-Infringement
Vonage asserts that its VoIP system does not infringe the asserted patents in that it does not meet every limitation of any claim of any of the asserted patents, either literally or under the doctrine of equivalents. Pretrial Order (doc. #207), ¶ 7(a)(1) & (2), at 18. During discovery in this case, Sprint’s Interrogatory No. 7 asked Vonage to “[djescribe, in detail, the full factual basis and explanation for Von-age’s contention that Vonage has not infringed any of the Asserted Patents.” Vonage responded, in relevant part, as follows:
Vonage incorporates by reference the February 28, 2007 Expert Noninfringement Report of Joel M. Halpern and its accompanying exhibits and attachments, which inte? alia set forth opinions that each asserted claim of the [sic] each of the patents-in-suit is not infringed by Vonage, either literally or under the doctrine of equivalents.
Vonage’s subsequent supplemental responses to Sprint’s interrogatories further reiterated that Mr. Halpern’s expert report contains Vonage’s evidence of non-infringement.
B. Legal Standard for Summary Judgment
The legal standard for summary judgment is set forth in Section 11(B)(2) above. The only difference is that of course rather than viewing the facts in the light most favorable to Sprint as was the case with respect to Vonage’s motion for summary judgment, as to Sprint’s motion for partial summary judgment the court views the facts in the light most favorable to Vonage.
C. Analysis
For the reasons explained below, Sprint’s motion is granted in its entirety except with respect to (1) the statutory marking and notice requirements set forth in 35 U.S.C. § 287, and (2) Vonage’s defense and counterclaim of non-infringement. The affidavit submitted by Vonage does not demonstrate that Vonage is entitled to relief under Rule 56(f) with respect to its equitable defenses. Implicit in the court’s denial of Sprint’s motion on the issue of noninfringement is the fact that the court will also deny Sprint’s motion to exclude Mr. Halpern’s non-infringement opinions.
1. The Written Description, Enablement, and Definiteness Requirements of 35 U.S.C. § 112
Sprint’s request for summary judgment as to Vonage’s “regards as” affirmative defense under 35 U.S.C. § 112, ¶ 2 is based on Vonage’s failure to identify the factual basis for this defense. Vonage does not dispute that the only evidence it identified during discovery in response to Sprint’s interrogatory in support of this defense is Mr. Koperda’s expert invalidity report, and that Mr. Koperda’s report provided no opinion or analysis of this defense. Thus, Sprint has met its initial summary judgment burden of pointing out to the court a lack of evidence in support
Title 35 U.S.C. § 112 requires a patent specification to “conclude with one or more claims particularly pointing-out and distinctly claiming the subject matter which the applicant regards, as his invention.” 35 U.S.C. § 112, ¶ 2. To satisfy this requirement, the claim, read in light of the specification, must apprise those skilled in the art of the scope of the claim.
Smith-Kline Beecham Corp. v. Apotex Corp.,
In response to Sprint’s motion for partial summary judgment on this affirmative defense, Vonage relies on
In re Conley,
Viewed from that standpoint, Vonage’s “regards as” defense is without merit. Vonage has not directed the court’s attention to any particular claim term whose meaning remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction. Instead, Vonage argues that its defense would be
The parties agree that their arguments under the “regards as” provision of § 112, ¶ 2 apply with equal force to Vonage’s related defense that the patents are unenforceable by virtue of the doctrine that a patentee may not broaden its claims by describing the product in terms of function. For the same reasons as set forth with respect to the parties’ § 112, ¶ 2 arguments, then, Sprint’s motion for partial summary judgment is also granted as to Vonage’s defense that the patents are unenforceable by virtue of the doctrine that a patentee may not broaden its claims by describing the product in terms of function.
2. Laches (Including Prosecution Laches), Estoppel, and Acquiescence
Sprint seeks summary judgment on Vonage’s defenses of laches, estoppel, and acquiescence on the grounds that Vonage’s discovery responses make clear that these defenses all rely on the same set of operative facts, which is Sprint’s allegedly unreasonable and inexcusable delay in filing the current lawsuit against Vonage. Sprint contends that any arguable delay by Sprint in filing suit does not provide a sufficient evidentiary basis to support Von-age’s laches, estoppel, and acquiescence defenses. In response to this argument, Vonage seeks relief under Rule 56(f) based on an affidavit submitted by counsel for Vonage stating that Vonage needs further discovery as to certain “competitive documents” as well as licensing and related agreements between Sprint and Cisco Systems, Inc. Vonage further contends that its originally pled laches defense encompassed the defense of prosecution laches, while Sprint contends that Vonage should be precluded from relying on this evidence as to prosecution laches.
a. Vonage’s Rule 56(f) Motion as to Laches, Estoppel and Acquiescence
Rule 56(f) grants a court discretion to deny summary judgment or order a continuance when the nonmovant submits an affidavit averring that it possesses insufficient facts to oppose a summary judgment motion. Fed.R.Civ.P. 56(f). The central tenet of this rule is that summary judgment should be refused where the nonmoving party has not had the opportu
Vonage’s Rule 56(f) affidavit is directed to essentially two categories of documents: (1) so-called “competitive documents,” and (2) licensing and related agreements between Sprint and Cisco Systems, Inc. Turning first to the competitive documents, Vonage contends that it has sought on multiple occasions documents relating to any competitive analyses performed by Sprint with regard to Von-age and other providers of VoIP telephony systems, cable telephony systems, or alternative systems. Counsel for Sprint repeatedly acknowledged the existence of such documents, on multiple occasions assured counsel for Vonage that the documents would be forthcoming, and yet had failed to produce the documents as of the date Vonage filed its Rule 56(f) affidavit. Vonage contends that these documents are likely to present the most candid and contemporaneous evidence of when Sprint became aware of Vonage as a competitor and when Sprint became aware of what Sprint alleges as Vonage’s infringing activity. Vonage categorically argues that these issues are critical to Vonage’s defenses of laches, estoppel, acquiescence, and unclean hands. It raises no further legal argument, except to cite a portion of
Gasser Chair Co. v. Infanti Chair Manufacturing Corp.,
The other aspect of Vonage’s Rule 56(f) affidavit addresses licensing and related agreements between Sprint and Cisco Systems, Inc. Vonage built its VoIP telephony system with the technical advice of, and using components purchased from, Cisco. The affidavit states that Vonage made extensive and persistent requests for all documents referring to or relating to contracts and licenses relating to the technology in the asserted patents. In January of 2007 Sprint produced fully executed agreements between Sprint and Cisco which included the following: an Alliance Agreement reflecting an extensive alliance between Sprint and Cisco for the joint development and ownership of products and intellectual property relating to the asserted patents; a License Agreement by which Sprint agreed to license to Cisco numerous patents relating to the JCS2000 (JCS presumably stands for Joe Christie System) system and covenanted not to sue Cisco customers for infringement of any patent for any invention conceived of prior to the date of the agreement; a Statement of Work detailing extensive obligations between Sprint and Cisco regarding this joint development effort; and a Purchase Agreement providing the terms of any sales of products between Cisco and Sprint. These agreements included a covenant by Sprint not to sue any Cisco customer for infringement of Sprint’s patents during an “Immunity Period.” The patents to which the covenant not to sue applies includes the patents Sprint now accuses Vonage of infringing, and the Immunity Period extended the covenant not to sue into the period Sprint alleges Vonage’s VoIP telephony system infringed the asserted patents. Vonage contends that
Having examined the nature of the evidence that Vonage contends it needs to rebut Sprint’s allegations concerning the absence of a genuine issue of material fact on Vonage’s equitable defenses, the court will examine the relevance of these two categories of evidence as it pertains to each of Vonage’s defenses of laches, estop-pel, and acquiescence.
i. Laches
To successfully invoke the defense of laches, a defendant must prove (1) that the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant, and (2) the delay resulted in material prejudice to the defendant.
A. C. Aukerman Co. v. R.L. Chaides Constr. Co.,
Vonage’s Rule 56(f) affidavit does not state how additional discovery will allow it to establish the two elements of a laches defense,
i.e.,
that Sprint’s delay in filing suit was unreasonable and inexcusable or that it was materially prejudiced by the delay.
See State Contracting & Eng’g Corp.,
ii. Estoppel
“Equitable estoppel may be imposed in a patent case when a patentee
iii. Acquiescence
Vonage has raised no argument, expressly or implicitly, legal or factual, to explain how the evidence set forth in its Rule 56(f) affidavit would be pertinent to its asserted acquiescence defense. Consequently, it has not shown that additional discovery would allow it to rebut Sprint’s allegations concerning the absence of a genuine issue of fact to withstand summary judgment. Vonage’s Rule 56(f) motion is therefore denied as to the defense of acquiescence and Sprint’s motion for summary judgment is granted on this defense.
b. Prosecution Laches
Sprint seeks summary judgment on Vonage’s defense of prosecution laches on the grounds that Vonage asserted this defense for the first time in its defenses section of the preliminary pretrial order, which was submitted to the court a week after discovery closed. Specifically, Von-age pled a generalized “laches” defense and stated in its responses to Sprint’s Interrogatory No. 6 that its laches defense was based solely on Sprint’s asserted unreasonable and inexcusable delay in filing suit. In response to Sprint’s motion for summary judgment on this defense, Von-
The court will assume, without deciding, that Vonage’s assertion of a general laches defense in its amended answers was sufficient to also set forth the defense of prosecution laches. Even so, it is important to note that the factual underpinnings of these two defenses are quite distinct. Laches is concerned with a delay in bringing suit. It may exist where the plaintiffs neglect or delay in bringing suit, taken together with lapse of time and other circumstances, causes prejudice to the defendant and operates as an equitable bar.
A.C. Aukerman Co.,
This situation is precisely the type sought to be avoided by the supplementation requirement set forth in Rule 26(e)(2) of the Federal Rules of Civil Procedure. That rule imposes a continuing duty to amend written discovery responses, as follows:
A party is under a duty seasonably to amend a prior response to an interrogatory ... if the party learns that the response is in some material respect incomplete or incorrect and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing.
Fed.R.Civ.P. 26(e)(2);
see Rodriguez v. IBP, Inc.,
“A party that without substantial justification fails ... to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless,'permitted to use as evidencé at trial, at a hearing, or on a motion any witness or information not so disclosed.” Fed. R.Civ.P. 37(c)(1). The determination of whether a Rule 26 violation is justified or harmless is entrusted to the broad discretion of the district court.
Jacobsen v. Deseret Book Co.,
Having carefully considered these factors in light of the circumstances surrounding Vonage’s belated disclosure that the factual basis for its laches defense is the prosecution history of the patents-in-suit rather than Sprint’s delay in filing suit, the court finds that Vonage’s Rule 26(e)(2) violation is wholly unjustified and not at all harmless from Sprint’s perspective. There is nothing in the summary judgment record from which the court could find that Sprint had any clue before the close of discovery that Vonage was going to be relying on Sprint’s asserted delay in prosecution of the patents-in-suit to support its laches defense. The critical inquiry in a prosecution laches defense is whether the delay in prosecution is unreasonable and unexplained. Given the complexity of the patent prosecution system, the court credits Sprint’s concern that a patentee would typically rely on expert testimony to show that the patentee’s prosecution of the patents was reasonable. Indeed, the court believes that such testimony would be particularly helpful in a case like this which may implicate an extensive patent portfolio. Because Vonage did not disclose its prosecution theory until so late in the case, it has prejudiced Sprint’s ability to muster key testimony to rebut this theory. Although Sprint could theoretically cure this prejudice between now and the trial date approximately four weeks away, doing so would likely be difficult as a practical matter given the trial preparation the parties are undoubtedly facing at this late date. This case involves sixty-one asserted claims of seven patents; it involves complex technology; Vonage has asserted a multitude of affirmative defenses, the two most significant of which (invalidity for anticipation and obviousness based on the prior art) are not even at issue in Sprint’s motion for partial summary judgment. Thus, allowing Vonage to rely on the prosecution history, rather than Sprint’s alleged delay in filing suit, to support its laches defense undoubtedly would be highly disruptive to the parties’ trial preparations.
The court might be willing to put the parties to this inconvenience if Vonage had offered a legitimate justification for its be
Under these circumstances, pursuant to Rule 37(c)(1) the court will not permit Vonage to use the evidence that it now seeks to use to support its defense of laches because Vonage did not timely amend its interrogatory responses to identify that type of evidence as the basis for its laches theory. To be sure, Sprint was obviously aware of the existence of the prosecution histories. Such evidence, however, is commonly disclosed in patent infringement cases. The critical point here is that prosecution laches is not at all a typical defense, and Sprint cannot be expected to have anticipated that these prosecution histories would form the basis of Vonage’s laches defense in the absence of some notice to that effect from Vonage. In the absence of evidence to support Von-age’s prosecution laches defense, then, the record does not present a genuine issue of material fact to support this defense. Accordingly, Sprint’s motion for summary judgment is granted as to this affirmative defense.
3. Patent Misuse and Unclean Hands
Vonage’s stated basis for its patent misuse defense is that Sprint’s overbroad reading of the patents to cover VoIP technology and its attempt to enforce these expanded claims constitutes patent misuse. Vonage’s argument in this respect is once again predicated on its theory that the claims of the '301 Family Patent are limited to ATM technology. Thus, Vonage contends that Sprint has improperly attempted to extend the claims of the asserted patents beyond the scope to which Sprint knows it is entitled.
Patent misuse is an equitable defense to infringement, the purpose of which is to prevent a patentee from using the patent to obtain market benefit beyond that which inheres in the statutory patent right.
U.S. Philips Corp. v. Int’l Trade Comm’n,
Vonage’s theory of patent misuse is based on the fact that Sprint is seeking to enforce its patent rights against infringement. As such, Vonage must establish that Sprint has brought this lawsuit in bad faith and with an improper purpose. The summary judgment record does not present a genuine issue of material fact that Sprint brought this lawsuit in bad faith and with an improper purpose. In support of Vonage’s patent misuse theory it advances nothing more than an argument that it disagrees with Sprint’s proposed scope of some of the claim terms in the '301 Family Patents, which is the type of claim construction argument that is common in most patent infringement actions. Additionally, Vonage’s patent misuse arguments relate to only three of the seven asserted patents and, even with respect to those three patents the court has rejected Vonage’s proposed claim construction with respect to two of the claim terms. There is nothing in the summary judgment record from which a rational trier of fact could find that Sprint has acted with bad faith or an improper purpose in bringing this infringement lawsuit. Accordingly, Sprint’s motion for summary judgment on Vonage’s patent misuse defense is granted.
Sprint also seeks summary judgment on Vonage’s unclean hands defense. In response, Vonage relies on the same facts to support its unclean hands defense. The court construes this same factual argument as invoking the same legal theory as Vonage’s patent misuse defense because the defense of patent misuse arises from the equitable doctrine of unclean hands.
C.R. Bard, Inc. v. MS Sys., Inc.,
4. Statutory Marking and Notice Requirements of 35 U.S.C. § 287
Vonage seeks to limit Sprint’s damages by virtue of Sprint’s asserted failure to comply with the so-called patent “marking” statute. This statute provides as follows:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this can not [sic] be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure to so mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
35 U.S.C. § 287(a). This statute permits either constructive notice, which is accomplished by marking the article with the patent number, or actual notice.
Gart v.
Sprint argues that it is entitled to summary judgment on Vonage’s § 287 defense on the grounds that the marking and notice requirements of § 287 do not apply in this case because the parties stipulated in the pretrial order that Sprint is not aware of any product or service made, sold, or offered for sale by Sprint that is within the scope of any claim of the asserted patents.
See Wine Ry. Appliance Co. v. Enter. Ry. Equip. Co.,
Ultimately, the court agrees with Von-age that the undisputed fact set forth in the pretrial order that Sprint “is not aware of’ any product or service made, sold, or offered for sale “by Sprint” is insufficient to meet its initial summary judgment burden on this issue. Although the parties have presented the § 287 issue to the court as a “defense” by Vonage, the Federal Circuit has stated that a patentee bears the burden of proving compliance with § 287.
Nike, Inc. v. Wal-Mart Stores, Inc.,
5. 35 U.S.C. § 101
In response to one of Sprint’s interrogatories, Vonage stated that one of its asserted bases for its invalidity contentions was 35 U.S.C. § 101 and that any further contentions would be provided by Vonage’s experts. Sprint points out that Vonage did not plead this defense and, furthermore, that Mr. Koperda did not mention § 101 in his report. The pretrial order entered in this case supersedes the parties’ pleadings and controls the subsequent course of the case. Fed.R.Civ.P. 16(e);
Youren v. Tintic Sch. Dist.,
6. Counterclaim for Unenforceability
Sprint’s motion for summary judgment is granted as to Vonage’s counterclaim seeking an order declaring the asserted patents unenforceable. The court has granted summary judgment on all of Von-age’s affirmative defenses relating to the alleged unenforceability of the asserted patents, and Vonage has identified no other basis for its counterclaim. Having failed to raise a genuine issue of material fact on this counterclaim, then, Vonage cannot withstand summary judgment.
7. “Additional Defenses”
Sprint’s motion for summary judgment on Vonage’s “additional defenses” is granted for the same reason as with respect to Vonage’s § 101 defense. Although Vonage originally stated in its amended answers that it was preserving any additional defenses which might arise during discovery, discovery is now closed and the pretrial order does not include the generic category of “additional defenses.” Accordingly, Vonage has waived any such defenses.
8. Non-Infringement
Vonage asserts that its VoIP system does not infringe the asserted patents in that it does not meet every limitation of any claim of any of the asserted patents, either literally or under the doctrine of equivalents, and it seeks a court order declaring that it does not infringe any of the asserted patents. Pretrial Order (doc. # 207), ¶ 7(a)(1) & (2), at 18 and ¶ 11, at 29. It is undisputed that Vonage’s only evidence of non-infringement is set forth in the expert report of Joel M. Halpern. Sprint seeks summary judgment on Von-age’s non-infringement defense and counterclaim on the basis that Mr. Halpern lacks the educational requirements and industry experience necessary to testify to the issues of claim construction and infringement. In support of this argument, Sprint filed concurrently with its motion for partial summary judgment a separate motion to exclude Mr. Halpern’s opinions as to non infringement on the grounds that Mr. Helpern does not have the qualifications of a person of ordinary skill in the art, as is required by the Federal Circuit for expert testimony on the issue of infringement. In response, Vonage argues that Sprint, as the plaintiff in this action,
In many patent cases expert testimony is not necessary because the technology is “easily understandable without the need for expert explanatory testimony.”
Union Carbide Corp. v. Am. Can Co.,
Sprint has certainly raised legitimate concerns about whether Mr. Halpern is qualified to testify as an expert in this case. Sprint points out that Mr. Halpern himself set forth the qualifications of a person of ordinary skill in the art as follows:
A person of ordinary skill in the art at the time of effective fifing dates of the Sprint Patents would have had a bachelors degree in electrical engineering, computer engineering or computer science, and at least three years experience in the telecommunications industry. The person would also have had some familiarity with narrowband and broadband networks, telecommunications signaling requirements and the Public Switched Telephone Network (“PSTN”).
Sprint’s patent invalidity expert, Frank R. Koperda, provided a similar opinion. He set forth his view of the qualifications of a person of ordinary skill in the art as follows:
A person of ordinary skill in the art at the time of filing the applications from which the Asserted Patents ultimatelyissued ... would have had at least a Bachelors degree in electrical engineering and/or computer engineering and/or computer science, or the equivalent skills or knowledge, and/or at least three years experience at a company working with narrowband and broadband networks, telecommunications signaling requirements and the Plain Old Telephone System (POTS), providing equipment, services and/or systems.
Sprint contends that Mr. Halpern’s qualifications fall far below these requirements. Mr. Halpern has a bachelors degree in mathematics rather than in electrical engineering, computer engineering, or computer science. He also does not have experience in the telecommunications industry. Although he has had some general exposure to the field, he has never worked for a telecommunications company and telecommunications was not the principal focus of any of his positions. His work on wireless and cellular networks involved data networking, not telephony or the PSTN. The only mention of “phone companies” in his curriculum vitae (CV) is with respect to a company where he worked on a router device. Even then, in his deposition he admitted that the router was originally aimed at enterprise customers and Internet service providers who were not telephone companies. Additionally, he does not have experience with narrowband signaling requirements or with the transmission of voice over the PSTN.
In
Daubert v. Merrell Dow Pharmaceuticals, Inc.,
If scientific, technical, or other specialized knowledge will assist the trier of fact to understand the evidence or to determine a fact in issue, a witness qualified as an expert by knowledge, skill, experience, training, or education, may testify thereto in the form of an opinion or otherwise, if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.
Fed.R.Evid. 702 (emphasis added). To qualify as an expert, the expert must possess such “knowledge, skill, experience, training, or education” in the particular field as to make it appear that his or her opinion would rest on substantial foundation and would tend to aid the trier of fact in its search for the truth.
LifeWise Master Funding v. Telebank,
Here, despite some arguable deficiencies in Mr. Halpern’s qualifications, the court is satisfied that he possesses sufficient knowledge, skill, experience, training, or education in the field of the invention as to make it appear that his opinion would rest on substantial foundation and tend to aid the trier of fact in its search for the truth. Sprint’s expert, Mr. Koperda, stated that the credentials of a personal of ordinary skill in the art included an electrical engineering, computer engineering, or computer science degree (which Mr. Halpern admittedly does not have) “or the equivalent skills or knowledge.” The court has carefully reviewed Mr. Halpern’s CV, his non-infringement report, and his deposition testimony concerning his qualifications, and the court is satisfied that he possesses the equivalent skills or knowledge. Mr. Halpern has more than twenty-seven years of experience in the computer and networking industries. His relevant experi
V. Vonage’s Objections and Motion to Review the Magistrate Judge’s Orders
The final matter before the court is Von-age’s objections and motion to review certain orders dated May 14 and 16, 2007, in which the magistrate judge denied Von-age’s motion for leave to amend its answer to assert new affirmative defenses and struck related factual and legal contentions from Vonage’s proposed pretrial order in this case. Related to this matter is Sprint’s response to the court’s order to show good cause as to why it failed to respond in a timely fashion to Vonage’s objections and motion to review. As explained below, the court finds that Sprint has demonstrated good cause for failing to file a timely response to Vonage’s objections. Additionally, the court finds that the magistrate judge’s rulings were not clearly erroneous or contrary to law, and therefore Vonage’s objections to the magistrate judge’s orders are overruled.
A. Sprint’s Response to the Court’s Order to Show Cause
On May 29,' 2007, Vonage filed its objections to the magistrate judge’s orders. On June IS, 2007, the court issued an order to show cause noting that Sprint did not file a response to Vonage’s objections within the time period provided in Fed.R.Civ.P. 72, stating that the court ordinarily considers and decides such motions as uncontested if a respondent fails to file a response within the time required by the rule, and directing Sprint to show good cause why it failed to respond to Vonage’s objections in a timely fashion. Sprint responded, explaining that it calculated its response deadline based on the time period set forth in Rule 72(b) for dispositive issues. Rule 72(b) states that “[a] party may respond to another party’s objections within 10 days after being
Sprint’s explanation is certainly understandable. But, it is based on a mistaken understanding that the magistrate judge’s rulings were addressed to disposi-tive issues under Rule 72(b) rather than nondispositive issues under Rule 72(a). The federal statute which sets forth the scope of magistrate judges’ authority, 28 U.S.C. § 636, lists dispositive motions on which a magistrate judge may not issue a final ruling, but instead may issue a report and recommendation subject to de novo review by the district judge.
Id.
§ 636(b)(1)(A). Because motions to amend pleadings are not included on this list, it is generally accepted that a magistrate judge’s order on such a motion is regarded as nondispositive subject to reconsideration by the district court only “where it has been shown that the magistrate judge’s order is clearly erroneous or contrary to law.”
Id.; see, e.g., Hall v. Norfolk S. Ry. Co.,
B. Standard of Review
Magistrate judges may issue orders as to nondispositive pretrial matters and district courts review such orders under a “clearly erroneous or contrary to law” standard of review.
First Union Mortgage Corp. v. Smith,
C. Analysis
In Vonage’s motion to amend its answer, it sought to assert two additional affirmative defenses that Sprint’s claims are barred (1) by license and (2) by misuse of the patents based on the manner in which Sprint licensed the patents. Vonage filed the motion on March 30, 2007, which was eleven months after the deadline for amending the pleadings had passed, see Scheduling Order (doc. # 48), ¶ 3(a), at 7, and on the then-current discovery deadline. Vonage contended that the belated amendment was justified because Vonage had only recently come into possession of a contract between Sprint and Cisco, the terms of which include licenses, covenants not to sue, and other terms that Vonage contended may bar Sprint’s claims against Vonage. The magistrate judge denied Vonage’s motion on the grounds of undue delay and prejudice to Sprint. He noted that Vonage’s motion was filed on the last day of discovery in the case over two months after Sprint produced the purportedly “newly discovered” documents, and implicitly rejected Vonage’s justification that it had been busy pursuing follow-up discovery. He further reasoned that he was persuaded that allowing the belated amendment would subject Sprint to significant prejudice given that discovery was closed and Sprint would be unable to conduct meaningful discovery on these new theories and defenses, which appeared to have no relation to any existing claim or defense in this litigation. On a related note, the magistrate judge directed Von-age to delete all references in the revised pretrial order and issued a separate order noting that in the pretrial order the court had deleted all substantive assertions based on the proposed affirmative defenses relating to the Sprint/Cisco documents.
Vonage now argues that the magistrate judge erred in denying Vonage’s motion for leave to amend because its delay in requesting leave to amend was not undue and because the assertion of its proposed affirmative defenses would not prejudice Sprint. Vonage further argues that, the assertion of the affirmative defenses notwithstanding, the magistrate judge erred in striking from the pretrial order its references to the license documents, as well as its related legal and factual contentions, because those documents support Vonage’s originally pled affirmative defense of es-toppel.
1. Leave to Amend
Rule 15(a) of the Federal Rules of Civil Procedure provides that leave, to amend the pleadings “shall be freely given when justice so requires.” Fed.R.Civ.P. 15(a). The court may deny leave to amend on the grounds of undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party, or futility of the proposed amendment.
Minter v. Prime Equip. Co.,
In considering the timeliness of the proposed amendment, the Tenth Circuit has noted that a party “who delays in seeking an amendment is acting contrary to the spirit of the rule and runs the risk of the court denying permission because of the passage of time.”
Minter,
Additionally, denial of leave to amend is appropriate where the party seeking to amend has no adequate explanation for the delay. Id. Vonage’s attempt to blame Sprint for the belated production is unpersuasive. For example, Vonage contends that the Sprint/Cisco license agreement upon which it relies was “buried in a production of over 55,000 pages.” Yet Vonage is represented by capable counsel (several of them, in fact) who undoubtedly have ample resources to have reviewed those documents promptly given the then-upcoming close of discovery. Also, Vonage explains that it “discovered references to an extensive set of agreements between Sprint and Cisco ... in its review of documents produced by Sprint.” Furthermore, “[i]n light of its discoveries, Vonage immediately and specifically sought confirmation and production of these documents,” referencing a letter from Vonage’s counsel to Sprint’s counsel dated September 20, 2006. This establishes that Vonage was aware of the potential existence of such documents as early as September of 2006, yet Vonage apparently did not view those documents as important enough to warrant a motion to compel production directed at discovering those documents, but instead opted to wait until the close of discovery to begin vigorously pursuing this evidence as supporting potential affirmative defense theories. In short, the record suggests that Vonage pursued a rather lax approach to discovery on this issue, waiting until the close of discovery to recognize what it now contends is the importance of this evidence.
The most important factor in deciding a motion to amend is whether the amendment would prejudice the nonmov-ing party.
Minter,
In sum, for the magistrate judge to have granted Vonage’s motion for leave to amend would have required the re-evaluation of disclosures and witness testimony, additional expert reports, the re-opening of discovery, a second round of dispositive motions, and the possible delay of trial, which is scheduled for September of 2007. Such a result is simply not warranted where, as here, Vonage is represented by capable counsel who appear to have made a free, calculated, and deliberate choice not to be more aggressive in pursuing discovery on these theories. Under these circumstances, the court cannot find that the magistrate judge’s finding that Vonage’s motion to amend was the product of undue delay and would unfairly prejudice Sprint was clearly erroneous or contrary to law. Accordingly, Vonage’s objections to the magistrate judge’s order of May 14, 2007, are overruled.
B. Striking References to the Sprint/Cisco Documents in the Pretrial Order
The magistrate judge’s order of May 16, 2007, noted that the court had revised the proposed pretrial order by deleting all references to the new affirmative defenses that Vonage had sought to plead in its motion to amend. The court has reviewed these revisions to the pretrial order, and does not find that the magistrate judge’s deletion of these references was clearly erroneous or contrary to law. Vonage’s attempt to insert legal estoppel and contractual estoppel defenses, as well as related factual contentions, was clearly an attempt to subvert the magistrate judge’s ruling denying Vonage’s motion to amend its answer to assert the license and misuse defenses. Vonage also objects to the magistrate judge’s deletion of other references in the pretrial order to the Sprint/Cisco documents supporting Vonage’s originally-pled estoppel defense. Although this language was deleted from the pretrial order, the court has nonetheless considered whether these documents can support Vonage’s estoppel defense and has concluded, for reasons stated above, that these documents do not provide a viable basis for Vonage’s estoppel defense. Accordingly, Vonage’s objections to the magistrate judge’s order of May 16, 2007, are also overruled.
IT IS THEREFORE ORDERED BY THE COURT that Vonage’s Motion for
IT IS FURTHER ORDERED that Sprint’s Motion for Partial Summary Judgment (doc. # 198) is granted in part and denied in part as set forth above; Vonage’s Rule 56(f) motion (which is embedded in docs. # 218 & # 219) is denied; and Sprint’s Motion to Exclude the Opinions of Vonage’s Expert Joel M. Halpern (doc. # 196) is denied.
IT IS FURTHER ORDERED that Vonage’s Objections to and Motion for Review of Orders of May 14, 2007 and May 16, 2007 Pursuant to Fed.R.Civ.P. 72 (doc. # 210) are overruled.
IT IS SO ORDERED.
Notes
. Mr. Christie died unexpectedly in February of 1996.
. The doctrine of claim differentiation applies with equal force with respect to the claim term "identifier” in the '429 Patent because it also contains dependent claims (claims 4 and 23) "wherein the identifier is an asynchronous transfer mode [ATM] connection.” '429 Patent, col. 25, 11. 66-67 & col. 27, 11. 40-41. Thus, it must be presumed that the claimed "identifier” in the independent claims of the '429 Patent is not limited to an ATM VPI/VCI combination.
. Consistent with the well established standard for evaluating a motion for summary judgment, the following facts are either un-controverted or stated in the light most favorable to Vonage, the nonmoving party.
. This issue is discussed in detail in Section V, infra.
. On April 4, 2007, Vonage filed a motion to amend the scheduling order, seeking an extension of approximately six months for the key deadlines and the trial setting of this case. On April 16, 2007, the magistrate judge denied the-motion on the grounds that Vonage failed to show sufficient good cause for the requested extension. The magistrate judge directed that all outstanding discovery be completed by May 1, 2007. See Order (doc. # 168).