*1 the rele- in all of included right was ment CORP., Verizon SERVICES VERIZON as well prospectuses, vant documents Inc., Com Laboratories, and Verizon regu- authorizing legislation as Inc., Plaintiffs-Appel munications, remov- disputed It is not lations. lees, litigation. this spawned this condition al of v. incorrect another apply
My colleagues is meas property of the value for premise, CORP., and HOLDINGS VONAGE English First taken. See it is ured when America, Inc., Defen- Glendale Church Lutheran Evangelical dants-Appellants. of 304, 320, County, 482 U.S. Angeles Los v. 2007-1251, 2007-1240, 2007-1274. Nos. (“the (1987) 2378, L.Ed.2d 107 S.Ct. taken has been property of valuation Appeals, States Court United of the time as be calculated must Circuit. Federal & Elevator Farmers Almota taking”); 26, 2007. Sept. States, 409 U.S. v.Co. United Warehouse (1973) 35 L.Ed.2d 93 S.Ct. Banc Rehearing En Rehearing and market (“the to the fair is entitled owner 15, 2007. Nov. Denied at the time his property value of whether speculate need
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must, dissent. respectfully, *3 Taranto, Taranto, of Farr & G.
Richard DC, plaintiffs-ap- for Washington, argued were John him on brief With pellees. VA; Verizon, Brian Thorne, Arlington, of LLP, of Rich- McGuireWoods Riopelle, C. III, VA; Win- mond, Peter C. McCabe and IL, LLP, Chicago, and of ston & Strawn Geoffrey P. III and B. Molster Charles Eaton, Washington, DC. Warm, Steptoe & Johnson E.
Roger DC, for argued de- LLP, Washington, him on the With fendants-appellants. Richard K. Doyle, W. were Sсott brief Watkins, and Daniel L. Willard, A. Seth Girdwood. MICHEL, Judge, and Chief
Before DYK, Judges. Circuit GAJARSA filed Circuit the court Opinion of DYK, Judge Chief Judge Background and joins as to MICHEL Discussion; and I and V of parts joins as to Judge GAJARSA Circuit II, III, and IV parts Background Judge MICHEL Discussion. Chief Circuit dissenting-in-part. opinion an filed opinion an Judge GAJARSA filed dissenting-in-part. concurring-in-part and DYK, Judge. Circuit INTRODUCTION1 claims of the '880 possibili- and the ty of error in the instruction on obvi- Appellants Holdings Corp. and ousness, we remand to the district court to America, Inc. (‘Vonage”) appeal prejudicial determine whether error oc- judgment from the of the United States with respect curred instruc- District Court for the Eastern District of tions that would affect the obviousness Virginia appellees favor of Verizon Ser- respect verdict with to the '880 Inc., Corp., vices Verizon Laboratories entirety We vacate in its the award of (“Verizon”). Communications, Inc. Verizon $58,000,000 damages roy- and the 5.5% $58,000,000 judgment awarded in com- alty and remand to the district court for *4 pensatory damages a royalty and of 5.5% proceedings. further We affirm in- the sales, any infringing on future based on a junction as to the '574 and '711 patents. Vonage infringed verdict that claims injunction We vacate the insofar it per- (“'574 6,282,574 of U.S. Patent Nos. pat- tains to the '880 (“'711 ent”), 6,104,711 patent”) 6,359,- (“'880 patent”), and that those patents BACKGROUND were not invalid Vonage as obvious. also appeals injunction from the entered the I Vonage’s system barring district court Vonage from further claims, infringing the asserted including Since 2002 Vonage has provided tele- provisions that bar the use certain phone service to its subscribers through methods and devices. (“VoIP”) Voice over IP technology. Von- age’s system allows place subscribers to We hold that the district court did not telephone receive calls to and from err in its construction of disputed claim parties Vonage that are subscribers and to terms of the '574 and '711 patents. parties and from that have traditional tele- Therefore, affirm judgment we the of in- phones Vonage without prin- service. The fringement respect with to those claims. cipal difference between service However, we hold that the district court and traditional telephone service is that improperly construed one disputed Vonage’s system uses the internet to terms in the '880 and accordingly transmit signals, rather than us- judgment vacate the of infringement with ing the public traditional switched tele- respect patent to the '880 and remand for (“PSTN”). phone network Vonage When a new trial. place subscribers calls to non-subscribers PSTN, on the Vonage’s system transmits We hold that the district court did not signals the through internet, and then prejudicial commit reversible error in in- relays them to the Vonage’s system PSTN. structing on the law of obvious- uses subscribers’ existing internet connec- ness with respect to the '574 and '711 tions to transmit telephone signals elec- patents, and therefore affirm judgment tronically. that the patents asserted claims of those Howеver, would not have been obvious. There are ways three for Vonage sub- light of the error in the construction of scribers to Vonage’s system. connect to judges agree All Introduction case. accurately Conclusion holding state the a localized describes patent The '880 a traditional can use First, subscribers allows wire- system that wireless using a stan- is connected which telephone, system register with telephones less adapter to a terminal telephone cord dard Ac- abstract. calls. and make ana- (the then converts which agent), user or cordless specification, cording to com- signals and digital signals log voice registered with can be telephones wireless system to send with the municates transceivers, are then base station Second, telephone calls. Von- or receive gateway. internet and connected tele- use can also subscribers age 6-17. Id. col. 411. built-in integrated, have an phones Third, Vonage subscrib- adapter. terminal description limit our simplicity we For on software their can install certain ers presently and defenses the claims be computer to their computers allows asserted Verizon appeal. issue this option, Under telephone. as a used '711, '574, and '880 claims of following into micro- simply speaks the subscriber patents: computer, and hears attached phone depends of the '574 Claim 27 through speakers. responses *5 state: 26 and 27 claim 26. Claims comprising: A26. method patents II Verizon’s request receiving a name translation are relevant patents Verizon Three public packet a coupled to at a server '574, '711, pat- and '880 appeal: this network; data in- do not claim patents These ents. in the name included translating a telephone; rather the internet of vention telephone into a destination request and '711 purpose the basic included a name associated with number (which is to specification) a share patents request; and name trans- a server for enhanced provide lation, implementing in can be useful which containing reply both transmitting a telephone but is limited an internet a and telephone number the destination describes specification The purpose. a tele- network address data packet existing the invention enhances how between gateway coupled phone (“DNS”), System Name Domain and a tele- data network public packet (such as “www. domain names translates public pack- through phone network (“IP”) Protocol Internet fedcir.gov”) into calling device. to a data network et invention enhances The addresses. 26, in claim wherein A method 26. greater a number by allowing for system Protocol ad- an Internet the address translations, translations including dress. The inven- telephone numbers. from and depends on '711 patent 20 of advanta- Claim “particularly to be is said tion state: 15 and 20 claim 15. Claims telephone of voice processing geous for through [internet].” communications comprising: A15. method col.6,11.48-50. request name translation receiving a comput- their can use how users describes public packet coupled to a at server to conduct microphones speakers ers’ network; data are signals the voice where conversations analysis in re- a conditional executing the inter- through digital form carried request; name translation sponse net. analysis if the conditional produces a using the up address to set a voice result, translating first a name included through public communication pack- request in the name translation into a et data communication network and the address; first destination wireless system localized be- calling tween the computer and the if analysis produces the conditional wireless terminal. result, second translating the in- name request cluded the name translation A 1, method as claim wherein address; into a second destination public packet data communication net- packet work ais switched network. transmitting response message con- taining the first or the second destina- 7. A method as in claim wherein the calling address to a device for use packet switched network comprises establishing par- communication least system of interlinked data networks us- tially through public packet data ing protocol. TCP/IP network. 8. A method as in claim whеrein the 20. A method inas claim wherein: system of interlinked data networks comprises the Internet. the first and second destination ad- dress includes numeric Internet Proto- address;
col Ill Limitations at issue in appeal the second destination further address alleges Verizon features of includes information relating to call system correspond to limitations described *6 routing public via a telephone switched patents. Verizon’s The first relevant network. feature Vonage’s system of relates to of the telephone transmission number di- Claims and of 6-8 state: by aled Vonage a subscriber. Vonage 1. A comprising: method system telephone transmits this number a registering wireless telephone ter- a string of text known as a SIP Invite. in a minal localized gateway wireless The telephone number is later extracted system; reformatted Vonage’s server. Ver- izon alleges that this extraction corre- transmitting registration data identi- sponds to the required “translation” fying gateway system from the local- each of the asserted claims of Verizon’s ized gateway system wireless to a home '574 '711 patents. The asserted register location through a database patents claims of those specify translation public packet data communication net- of a “name” into a telephone number or work; into an internet address. Vonage not does receiving request a calling a from agree that the extraction telephone of a сomputer coupled packet to the public number a from SIP invite can be a transla- data communication network for a call to argues tion and that translation within the telephone terminal; the wireless meaning of patents Verizon’s must involve (or in response to request, change accessing protocol language) from a the home location register higher-level database and protocol apparently meaning — obtaining packet data address for the one that everyday is closer to expression localized gateway system; wireless than a native computer language a—to argues It spect to meaning '880 protocol apparently lower-level — gateway “localized wireless patented that the concludes Vonage opposite. limited in several must read as system” be invite from SIP conversion First, argues that it should Vonage ways. system cannot by its performed number with a system operates limited to a be it does not involve infringe because feet, whereas the only of a few range to a lower- higher-level from a translation range with a of Vonage operate devices protocol. level argues Vonage feet. also several hundred other argues that several also Vonage compresses/decom- itself gateway that the of claims in the asserted Verizon’s terms voice packetizes/depaeketizes presses limited patents '711 should be '574 and in the functions conversion signals. These of language based signals digital signals analog voice limited, that if so Von- patents, and those system operate hybrid required are satisfy limita- age’s system does those Vonage’s where calls are transmit- such as argues that the “conditional Vonage tions. through through internet but also ted 20 of the '711 claims 15 and analysis” of telephone lines when called normal called responsive be patent must But Vonage is not a subscriber. party that, by argues Vonage party’s needs. functions are contends these Vonage contrast, anal- system in its the conditional terminal performed at the subscriber’s calls in- redirecting ysis merely results required by than at the rather volving delinquent subscriber Finally Vonage argues the '880 claims. party’s to the called and thus is not related gate- “localized wireless patented that the “ser- argues also needs. Telephone way system” and “Wireless 26 and 27 of ver” claims Terminal,” pat- requirements 15 and 20 of and claims ent, more than one base provide must ordinary beyond its restricted should be among users to roam station and allow manage an and must enhanced meaning stations, whereas users do different base Finally, Vonage service. name translation system. not roam on *7 of that the “destination” address argues must claims and 20 of History IV Procedural the net- final destination on refer inter- address of certain work and that the Vonage against suit on Verizon filеd system called mediary Vonage’s on points 2006, sys- 12, asserting Vonage’s June qualify as relays RTP do not destinations The dis- patents. infringed tem Verizon’s of term. proper construction under the a claim construction hear- judge trict held order a claim construction ing and issued Vonage de- argues that several Verizon 2007, 12, construing a num- February 1 and 6-8 of '880 infringe claims vices terms. disputed of ber include traditional patent. These devices trial, jury jury interact with- telephones After a cordless several-week jury found Vonage sub- The by the its verdict. base station owned rendered '574, '711, (such IP the asserted claims as V-Tech scriber jury infringed. The telephones) patents had been cordless UIP1869V Uniden claims of the the asserted at wi-fi also found that that can be used and wi-fi devices '574, '711, were not inval- patents city. Vonage spots throughout hot obvious, Vonage’s infringe- and that with re- id arguments makes a number jury ment not willful. The object jury was awarded to a instruction at the time the $58,000,000 and damages royalty proposes set district court it. We consider govern any rate of future issues of claim infringe- 5.5% construction without defer- Cybor Techs., Inc., ence. Corp. ment. The district court v. judg- entered FAS 1448, (Fed.Cir.1998) (en 13, ment on the verdict on March banc). 2007, Vonage’s and denied motion for new 12,
trial on April Vonage challenges the district court’s construction of four patents. terms these 12, 2007, April On the district court is- First, Vonage complains about the district permanent injunction sued a barring Von- court’s failure to limit the term “transla age from infringing further the asserted tion” in asserted claims 26 and 27 of the '574, '711, claims patents. and '880 and claims 15 and 20 of the simultaneously court stayed district '711 patent. The district court instructed injunction pending appeal present as to that the term “name translation 6, existing April or customers. On request” query means “a for translation of Emergency filed an Motion for routing name into pub information for a court, Stay in seeking to extend the lic packet data network.” J.A. at 6622. stay injunction district pend- court’s Vonage argues that the district court erred ing appeal to new customers as well. On failing to define the claim term “trans 24, 2007, April oral argument, after we lating,” require system “direct fully stayed injunction pending appeal, ly convert a higher protocol level identifier expedited and ordered briefing. of a node to a different lower proto level Vonage timely appealed the district col.” J.A. at 2726. In its Markman deci judgment court’s to this court. We have sion, the rejected district court jurisdiction pursuant 28 U.S.C. interpretation and noted that “[ajlthough 1295(a)(1). § examples several appear in specifica demonstrating a translation from a higher protocol, to a lower level limi such DISCUSSION properly
tations are not
read from the
specification into the claims.” Verizon
I
Corp.
Servs.
v.
Holdings Corp.,
On appeal, Vonage
that,
contends first
No. 06-0682 at
district court used the same claim con- We see no in error the district in jury structions the instructions as it had court’s construction. Vonage points to articulated in its Markman decision. Be- nothing, and we can nothing, find in the cause we conclude that the district court claim language or specification the that did not err in jury its instructions constru- support would Vonage’s proposed defini ing the claim terms of the '574 and '711 tion. The mere fact that the specification’s patents, we need not reach the question of examples of may translation involve a whether raising claim construction issues in change protocol higher from a to a at the Markman stage compliance excuses protocol lower level does not establish that with the requirement Rule 51 party that a such a limitation imported should be into
1303 in no error the again Here we see Corp., Phillips v. AWH See claims. the (en oth Nothing (Fed.Cir.2005) court’s construction. 1303, district 1323 F.3d banc) limita- examples supports against importing (cautioning specification er than See, into '711 e.g., from the interpretation. tions Instruments, Inc. v. U.S. claims); Texas Although Vonage 11 LL.16-19. patent col. Comm’n, F.2d Trade Int’l discussion of specification’s that the argues (“This (Fed.Cir.1986) has cautioned court that the requires “present invention” claimed invention limiting the against based analysis performed be conditional specific exam- or preferred embodiments party’s preferenсes, the called upon Contrary to specification.”). ples cites mentions language it nowhere also no evi- there is Vonage’s argument, pat '711 preferences. See party’s called trans- ordinary meaning of dence col.6; LL.41-47. ent proto- in change a in the art means lation Third, the district Vonage complains of a lower-level higher-level from col in the term “server” construction of court’s protocol.2 pat- 26 and 27 of the claims asserted Second, challenges the district Vonage pat- 20 of the '711 claims 15 and ent and “condition- of the term construction court’s The district court instructed ent. and 20 of in analysis” asserted claims al computer system, means “a the term that in- court The district computers more one or such as and/or “con- jury that the claim term structed devices, to other provides that services “a analysis” determination ditional means J.A. systems over network.” computer aon a first result based generates that argues that the “server” Vonage at 6622. data, a second result or first condition and '711 claims of the '574 the asserted condition or data.” on a different based “manage! an enhanced ] must patents argues that the district Vonage 6622. J.A. Br. Appellants’ translation service.” name the “conditional have should limited court 49. at is “based to one that analysis” performed An party’s preferences.” called
upon the rejected court the district Again analysis based on of а conditional example in its construction Vonage’s proposed in- would party’s preferences called decision, no error seewe Markman telephones routing calls to different volve at 12-13. ruling. Markman Order that day. The district the time of based on “receiving specify the claims at issue While interpretation its rejected this court server,” request at a name translation Markman Order decision. Markman claim patent, claim '711 14. these cir- Under the term "translation.” alternatively argues that the district Vonage Vonage expected might that one have court should have instructed cumstances change protocol, and requires a testimony that those skilled provide expert translation number the extraction of term "trans- in the art would understand change Vonage system performs is not meaning Vonage have the lation" to argues that a mere protocol. also atten- called our urged. has But These ar- cannot be a translation. extraction testimony. On the other any tion to such *9 Vonage’s raised in guments were not even testify one expert that Verizon’s did hand with in connection claim construction briefs extraction in the art would understand skilled nothing hearing. in There is the Markman We see no error translation. to constitute history prosecution that specification or the include failure to the district court's interpretation. Von- compel Vonage’s would charge. jury interpretation in the diсtionary supporting definition age no offers destination, specification “providing discusses final and not an intermediate processing enhancements to address of destination. The district court did not in server,” patent a name domain col.4 respect struct the with meaning to the 11.27-28, simply is no indication that there term, of this and did not adopt Vonage’s being term “server” is redefined in proposed construction. proposed include specification to these enhanced following construction: “Destination functions. The fact name translation that address means an endpoint identifier of an separately such functions are mentioned public packet data network.”3 J.A. is mentioned in when a “server” the claims that, at Vonage argues 2727. because limiting a “server” weighs against to one of the district court’s failure to construe the functions. performs Phillips, See “destination,” the term Verizon was able to (“[T]he at claim in 415 F.3d this case argue points intermediate baffles,’ refers to ‘steel im- strongly in Vonage’s system {e.g., relays) RTP qual plies that the term ‘baffles’ does not inher- ify as destinations meaning within the steel.”). ently objects mean made of Since the '711 specification does define the term We see no error in the district court’s “server,” ordinary look to meaning we its decision not to adopt Vonage’s proposed person ordinary to a skill in the art. construction. Vonage principally relies on Vonage’s proposed definition restricts the passage that it claims beyond ordinary term “server” mean- defines “destination address” to mean a ing. Computer Dictionary See Microsoft endpoint, final and not an intermediate (5th ed.2002) (defining “server” as “a patent destination. See '711 col.2 LL.26-37. computer ... responds to commands passage That excerpted is not from a de client”); from a Phillips, see also scription of the invention of the '711 pat (noting usefulness of techni- ent, but rather from a description, in the claims). cal construing dictionaries in
“Background Art” section of the how the internet works in Finally, Vonage general. More challenges the dis over, trict the cited passage court’s failure to construe the term describes how a “packet phrase “destination” bearing [of data] “destination destination ad address” in asserted claims 15 and 20 of dress” forwarded through the internet patent so that it only refers ato until it at a arrives “destination computer.” The asserted claims of transmitting response refer message containing multiple to a "destination address” times: the first or the second destination address ato comprising: 15. A method calling establishing device for use in commu- receiving request a name translation at a partially through nication at least public coupled public packet server to a data net- packet data network. work; 20. A method as in claim wherein: executing analysis response сonditional the first and second destination in- address request; to the name translation address; cludes a numeric Internet Protocol analysis produces if the conditional a first result, translating a name included in the the second destination address further in- name request translation into a first destina- relating routing cludes information to call via address; public switched telephone network. analysis produces if the conditional a sec- added). (emphasis result, translating ond the name included in request name translation into a second address; destination
1305 (IP telephone formation address no reason to think same There is and/or number).”) added). (emphasis nor cannot then be forwarded We packet of data destination, mally claim in interpret until it reach- do terms again to another Vonage’s interpre- way examples that excludes disclosed es its final destination. Labs., specification. com- Inc. v. Bec tation assumes that the “destination MBO ton, Co., 1323, But it Dickinson & 474 puter” endpoint. must be a final F.3d 1333 (Fed.Cir.2007) (“[A] just easily interpretation be an intermediate claim could preferred of data could that excludes a endpoint, packet and the embodiment from the claim if scope rarely, then be forwarded to another “destination is correct.”) (internal omitted). ever, computer.” passage Thus the cited does citation Vonage’s proposed not redefine “destination” to mean “final Since constructiоn was wrong by failing to account passage possi The cited also does for the destination.” bility telephone that could meaning not address the of “destination numbers be destinations, invention, Vonage has failed to show patented address” within the but error the district court’s failure to only general op- within the context of the internet, it. adopt Corp. See Biodex v. Loredan eration of the and is limited (Fed.Cir. Biomed., Inc., Further, utility. ordinary meaning 854 1991) party that (holding challenging the term “destination” not limited to a is fact, jury ... final destination. In Dic- instructions must “demonstrate Webster’s requested instruction tionary place prop defines “destination” as “a was er”) added); journey (emphasis see also Advanced which is set for the end of a or to Univ., v. something place point Display Sys., or Inc. Kent State sent: (Fed.Cir.2000) (“A [, party F.3d e.g.,] buying your plane aimed at when always buy through your seeking judgment tickets to alter based on er farthest roneous instructions must Third New In- establish [destination].” Webster’s (2002) ... Dictionary proposed would (empha- [the instruction] ternational error.”). added). have remedied the sis Thus we conclude that there was no Finally, Vonage’s proposed construction error in the district court’s instruc- of “destination address” fails for another out, respect tions with to the terms in the '574 points reason. As Verizon patents. and '711 proposed requires construction part “public packet destination be network,” ie., data the internet.4 This II
reading examples would exclude several where the now whether the district “destination We consider telephone only, require address” is a number court’s failure to the “localized point gateway system” thus not a the internet. '711 wireless of asserted (destination col. 10 l.67 to col. 11 l.3 claims 1 and 6-8 of the (dis- “may operate range address be ... num with a of a “few feet” [a] (“In above) ber”); preferred Again col.5 ll.52-54 cussed was error. we need embodiment, raising the domain name server not decide whether this claim con- stage in- struction issue at the Markman ex- transmits different destination address public packet Vonage proposed following endpoint er of an data construc- added). (emphasis tion: “Destination means an identifi- network.” J.A. at address *11 1306 system of tern” as: “a which is fixed to requirements with the compliance
cuses provides limited or local area and which the trial rec- This is so because Rule 51. coverage within that wireless service local that it indeed would have ord establishes area,” feet” and did not include “few object at the Vonage futile for to been limitation. J.A. at 6623. the court’s charge conference to district of the claim term “localized construction have held that a statement We gateway system,” ground on the wireless by patentee during prosecution the made court failed to limit the that the district family history patent of a the same range system of such a to a “few feet.”5 patent-in-suit operate the cаn as a dis claimer. v. Multi-Tech Corp. proposed construing the term Vonage Microsoft (Fed.Cir. Inc., 1340, Sys., 357 F.3d 1350 gateway system” to “localized wireless 2004) (statement during prosecution made plurality “a of base station transceiv- mean patent operated as a disclaimer limited, of related range and a ers with a of few feet respect patent).6 with to a later-issued To gateway compress- service that packet disclaimer, operate as a the statement es/decompresses packetizes sig- voice history be clear and prosecution the must (emphasis Br. at 26 n. 7 Appellants’ nals.” unambiguous, and constitute a clear disa added). that Vonage argues Id., scope. vowal of at 1356-57. range only to a transmission of is limited feet because of statements made few Such a clear disavowal has occurred patentee during prosecution of a relat- patent origi- here. The claims of the '880 patent family ed of the same as the '880 nated in application U.S. No. The (“'291 that so limited the term. dis- 08/814,291 During application”). interpret trict court instructed the prosecution the examiner issued a restric- gateway sys- requirement ground term “localized wireless tion on the Alloc, Comm’n, During Vonage sought present the trial 6. See Inc. v. Int'l Trade 342 (state expert testimony required (Fed.Cir.2003) that the claims F.3d 1371-72 range patented system to a was limited during prosecution parent pat ments made Vonage system а "few feet" and that the was surrendering subject binding ent matter objected, not so limited. Verizon’s counsel claims); Augustine interpretation later arguing already Court has con- ”[t]he Med., Indus., Inc., Gaymar Inc. v. 181 F.3d need strued claim and there is no for (Fed.Cir. 1999) ("[T|he prosecu anything respect prosecution his- with history parent application may of a limit and, tory. already at it Court has looked scope application using of a later frankly, rejected proposed limitation term.”); Phillips, same claim see also (1144:10- offers.” J.A. at 6046 ("[T]he prosecution history F.3d at 1317 can 14). response the In district court sustained meaning often inform the the claim lan objection. clearly Verizon's Verizon itself un- guage demonstrating how the inventor un derstood the district court to have announced derstood the invention and whether the inven finally was construction of this term tor limited the invention in the course of again determined: later in the trial Verizon prosecution, making scope the claim narrow argued that the claim construction of this be.”); er than it would Chimie v. otherwise finally open term was determined and not Inc., (Fed. PPG Indus. trial, being reargued at and that testi- Cir.2005) ("The consulting purpose of mony regarding operating range of one of prosecution history construing claim to its devices should be excluded. See J.A. any interpretation exclude that was dis 6061. Under these a further circumstances (internal futile, during prosecution.”) quo objection claimed would have beеn and the omitted). preserved. tation claim of error was marks *12 added). applicants The also (emphasis id independent two covered application '291 applicants stated: The and distinct inventions. application No. filed divisional
then arguably ap- prior reference] art [A (“'750 pursuing 09/363,750 application”), a local or local pears to disclose cellular original of the claims of some as, a system, example, wireless such for was allowed as application, which phone oper- cordless that is restricted to of the claims of The remainder ate' within a a base sta- few feet from in turn ma- original application However, tion. does not [the reference] (“'497 6,542,497 into Patent No. tured U.S. anything related to voice-over- disclose ”). applications of both patent’ The claims protocol. internet or voice-over-internet sys- gateway a “localized wireless require added). think (emphasis Id. at 7189 We ap- of the '291 During prosecution tem.” clearly language that this disclaimed cov- reject- applicants’ claims were plication erage systems operating range with prior gateway art wireless ed based on feet,” greater than a “few and that systems. failing court erred in to construe district applicants gained allowance system requiring range the localized application the claims of the '291 after of a few feet. “all prior systems ap that the art stating argues nonetheless that the dis- Verizon sys to be directed to non-localized
pear application process claimer in the '291 tems,” “present-invention,” by (leading patent) to the '497 should not contrast, operate within was “restricted patent to the '880 because it oc- apply (i.e. a few feet from base station wireless curred after the '880 issued. We handsets).” appli at Thus the J.A. 7191. in Mi- reject argument. As we held cants stated: crosoft, faced the same situation where we further, prior Even art [the references] (disclaimer patent-in-suit occurred after all to be directed to non-localized appear issued), it not un- had “we think that is systems. specifically, Applicant More interpretation to apply sound to the same respectfully although submits that though patent[-in-suit],” [that] “even th[e] prior term “wireless” is used in art [the already F.3d at patent had issued.” 357 references], “wireless” does not mean wireless,” pres- “local as claimed Showing that the district court erred invention, ent in the sense of a cordless not instructing the sufficient phone operate that is restricted to with- trial, (i.e. warrant a new however. a base in a station few feet from handsets). prejudiced must show it also was The term “wireless” wireless Vonage argues that district court’s error.7 art is directed prior references] [the prejudiced by it the district court’s systems having wide-ranging net- was oper- error several of its devices switching wоrks of machines. because Int’l, Inc., (internal omitted); less.”) quotation Seachange marks 7. See Inc. v. C-COR 413 (Fed.Cir.2005); ("A Inc. Display Sys., F.3d 1381 Ecolab at Advanced 212 F.3d Inc., (Fed. Paraclipse, v. 285 F.3d seeking judgment party to alter a based trial, ("[T]o Cir.2002) warrant a new Ecolab jury instructions must establish erroneous jury instruction must show that the erroneous effect.”); prejudicial ... had the errors prejudicial. was in fact When the error in Biodex, (holding party that a changed not have instruction could challenging jury a twofold instructions "has result, the erroneous instruction is harm- than “a col.411.1-6.In the of describ range greater few feet” course ate with invention,” therefore, and, ing “present specifica had the district court instruction, com Vonage’s proposed “[t]he then states adopted presses decompresses frequency shown voice would have been those devices above, signals communication and sends and re As discussed because infringe. *13 compressed signals packet claim ceives the in court’s construction of the district via not able to introduce evidence form the network.” Id. ll.12-15. When Vonage was operate beyond patent did not a thus describes the features of the telephones
that its whole, feet.” The record also invention” as a this de “present a of a “few range prepared scription scope that it was to offer limits the of the invention. clearly shows Int’l, Indus., Inc. v. ITT Honeywell Under such circumstances 452 such evidencе. 1312, (Fed.Cir.2006); that has satisfied the F.3d 1318-19 we believe Sys., The Inc. v. prejudice. district SciMed Advanced Car requirement Life Inc., 1337, 242 failing Sys., to limit the localized diovascular F.3d 1343 court’s error (“[T]he (Fed.Cir.2001) range a of a characterization of system to one with few feet requires configuration part a new trial under the the coaxial of the therefore ‘present strong correct construction. invention’ is evidence that
the claims should not to be read encom necessary a new trial is on Since structure.”); pass opposite the see also infringement respect with to the issue of LLC, Corp. Composites, Andersen v. Fiber it appropriate we believe (Fed.Cir.2007) 474 (specifi F.3d other claim terms that are interpret to description cation’s of a “critical element” parties are disputed appeal and limiting).8 found Thus the term “localized in the likely to be at issue new trial. Von- gateway system” wireless must be limited age challenges the district court’s con performing compression packe- to one term struction of the “localized wireless gateway. at the tization functions gateway system” of asserted claims 1 and (the patent argues of the '880 same term also that the
6-8 district limitation) the “few pertinent failing require to feet” on court erred to ground system” that the district court erred in gateway “localized wireless have transceivers, that failing require patented gate multiple base station because way system “eomрress[ ]/deeompress[ states that ] “[t]he inven packetiz[e] signals.” system voice Appellants’ plurality tive includes of base agree. Bf. at n. 7. We The “Disclosure patent station transceivers.” col.4 However, of the Invention” section of the '880 11.7-8. we have held that a limita begins description gateway requiring “plurality” may with be satis system “present single object. invention.” '880 fied Interactive Gift prove jury specification merely task must both instruc cause the to "one [and] refers entirety read in their were incorrect or tions aspect” present of “the invention.” But that given incomplete as and then demonstrate “aspect” is the “localized wireless suggested instruction could have system,” very claim term that issue al., error”); Wright cured the 11 Charles A. et ("Thus, here. See '880 col.4 ll.6-7 (2d § Practice and
Federal Procedure aspect, present one invention relates to a ed.1995). gateway system.”). localized wireless argues "present Verizon invention” language significant is not in this case be- Inc., III Compuserve Inc. v. Express, (Fed.Cir.2001) (“[T]he 1323, 1335 reference Vonage challenges the district court’s ... of one mate plurality can consist jury on obviousness instructions Therefore, Vonage has object.”). rial concerning “suggestion the need to find a court’s show error in the district failed to prior art to combine the elements.”9 interpretation. Vonage’s contention is the district Finally, Vonage challenges the dis rigidly apply court “instructed the claim term triсt court’s construction of the [teaching/suggestion/motivation “wireless terminal” of asserted rejected by the Supreme test combine] claims 1 and 6-8 of the '880 Inc., Teleflex, v. KSR[Int’l Court Co. court instructed the to con district — U.S. —, 167 L.Ed.2d S.Ct. *14 the term as “a that com strue (2007) Appellants’ Br. at 53-54. ”]. through signals provide radio to municates First, two-way prej- voice communication.” J.A. at we note that there cannot be Vonage alleges that district respect 6623. udicial to error with the '574 and .the require failed to that the improperly court patents Vonage '711 because does dis- Terminal” roam Telephone “Wireless pute testimony that the obviousness at tri- among plurality a of base stations. Von- (U.S. al single centered on a reference age’s argument Although is meritless. Application Published No.2003/0193933 on occasion makes reference (“Jonas”)), any alleged and thus error “roaming” telephones, Vonage fails to to requiring finding instructions a of motiva- identify language require that would roam tion to several references combine would ing every Vonage argues case. that respect to the have been harmless. With patent requires multiple base because patent, majority because the is revis- stations, must then roam be telephones ing key the claim construction of several rejected But we have tween base stations. terms, a remand to the district court is multiple that there must be contention necessary to consider whеther new trial stations, base and the claims do not re granted be on the should issue obvious- roaming. quire remand, light ness. In of that we also court erred
We conclude district think it best to allow the district court to construing “localized wireless term ar- consider the first instance system” by that failing require gument concerning alleged error an system operating be limited to KSR, instruction under and to consider the range perform compres- of a few feet and prejudice.10 issue of functions, packetization sion and but hold that in there no error. respects other was IV trial We remand for a new on the '880 light holding In trial is injunc- of our that new accordingly vacate the patent, required infringement on the issue of respect patent. to the '880 with argues Vonage argues that court Vonage that we should hold also the district 9. also regarding given an instruction as a matter of law the claims of the should have obvious standard, try” patent. Since did not make a the "obvious to but judgment showing there was an issue in this motion for as a matter of law on made no charge appropri- theory, Vonage’s argument proper- that such a is not case would make ly ate. before us. infringement have sustained the verdict of we also vacate the deter- patent, patents, to the '574 and '711 respect a dam- with is entitled to mination that Verizon court Vonage argues district $58,000,000 royalty- ages award of by issuing unsup- an abused its discretion 5.5%, gives jury’s verdict since rate injunction respect with to those ported damages of such portion indication what no review the district court’s patents. We infringement were allocated grant injunction for abuse decision In a as this situation —such Techs., Flakt, Joy Inc. v. of discretion. single rendered a one—where the (Fed.Cir.1993). Inc., 770, 772 damages, breaking without verdict to each damages attributable down court in this case made find The district require the normal rule would ings prongs of fact under the four damages. Memphis trial as to See new injunction, test for issuance of an Stachura, Cmty. Dist. v. 477 U.S. Sch. plaintiff seeking injunction an require (1986) L.Ed.2d 249 106 S.Ct. “(1) it an demonstrate: has suffered (“When faulty damages instructions are (2) injury; avail irreparable remedies and the verdict does not reveal the means law, monetary damages, able at such as damages, the which the calculated in inadequate compensate are for that *15 difficult, charge in the is if not im- error (3) that, jury; considering the balance of retrial, light possible, to correct without hardships plaintiff between the and defen verdict.”) (internal jury’s general of the dant, warranted; remedy in equity is omitted). quotation marks (4) that not public interest would by injunction.” a permanent be disserved have not whether parties briefed — L.L.C., eBay MercExchange, Inc. v. any from depart there is reason to this 1837, 1839, —, U.S. 126 S.Ct. 164 think it general rule in this case. We (2006). Vonage argues L.Ed.2d 641 best under these circumstances to remand impermissibly court the district based its by for the district issue consideration finding irreparable harm оn lost sales court the first instance.11 For the same Pharms., alone, see Abbott Labs. v. Andrx reason, the district court should consider Inc., 1331, (Fed.Cir.2006), 452 F.3d 1348 validity in the first instance the court but the district found there were any royalty govern award of a 5.5% rate to harm,” [irreparable] “several areas of J.A. infringement, proper dispo- future and the 6700, and the record contains evidence presently sition of the amounts in escrow as price opportuni- erosion well as lost pursuant stay to the district court’s order. ties to sell other services to the lost cus- tomers.
V injunction Vonage argues also that an injunction Finally, we consider the necessary and that the reasonable was not respect royalty by jury issued the district court with to sufficient decided was compensate Pfizer, the '574 Verizon’s harm. patents. Although we See NTP, Motion, Ltd., infringe separately jury each assert- See Inc. v. Research in (Fed.Cir.2005) (remand claim, 418 F.3d ed the district court will have to deter- ing, jury reasoning verdict that "because the any mine effect of alteration of infringing did specify the amount of sales damage verdict on the district court’s claim, attributed to each individual or award”). specific devices and services determined
13H USA, Inc., Inc. v. Teva Pham. determine whether the F.3d instructions on (Fed.Cir.2005) (citing Polymer light obviousness were erroneous in KSR, Techs., Bridwell, any and whether error Inc. v. prejudi- was (under (Fed.Cir.1996) cial as We vacate the certain circum $58,000,000 in damages award of and the may “it to expect stances be reasonable rate, royalty 5.5% and remand to the dis- patent right can invasion be trict court for further consideration of the recompensed royalty with a rather than damages In respects, issue. other the de- injunction”)). with an
cision of the district court is affirmed. demonstrated no clear has reasons, For foregoing the decision error in the district court’s determination below is injunction respect to award an with to the patents. The district court AFFIRMED-IN-PART, VACATED- testimony considered the detailed on both IN-PART, and REMANDED deciding injunc sides before to issue the
tion. see no abuse of discretion and We COSTS therefore affirm the district court’s deci injunction sion to an with respect issue No costs. the '574 and '711 patents. While injunction
argues that the was overbroad MICHEL, Judge, dissenting Chief as to the '880 it makes no such part. argument injunction with respect patents.12 to the '574 and '711 Although join majority I opinion *16 regard disposition
with
to its
of the claim
construction, invalidity,
injunction
and
is-
CONCLUSION
relating
patents-in-suit,
sues
to two of the
(“'574
6,282,574
to the district court for a
We remand
patent”)
U.S. Patent Nos.
(“'711
infringement
pat-
6,104,711
new trial on
of the '880
patent”), I respectful-
and
light
holding
ent in
of our
that the
ly
disposition
district
to its
dissent as
issues
erroneously
court
instructed the
with regarding
patent-in-suit,
the third
U.S.
(“'880
respect
meaning
6,359,881
of several contest-
patent”),
Patent No.
as
claim
paragraph
ed
terms. We also vacate
vacating
damages
well as its
the
awarded
injunction
by
of3
the
issued
the district
I
by
jury.
would hold that the district
injunc-
рortions
court and all other
correctly
court
construed all of the terms
Further,
patent,
tion that relate to the '880
but
I
appeal.
at issue in this
would
injunction in
respects.
affirm the
other
hold that the district court’s
instruc-
remand to the district court as well to tions on obviousness
consistent with
We
were
injunction
put
infringement
12. One factor that is
to the balance
an
an end to
of
relevant
hardships required by
Supreme
cognizable
patents;
it did not have a
inter-
its
eBay
Court's decision in
was not considered
putting Vonage out
est in
of business. How-
court,
by
namely
the district
whether the dis-
ever,
out,
points
as Verizon
made no
trict
time
court should have allowed
for Von-
request
period
for a workaround
to the dis-
age
implement
a workaround that would
court,
already
trict
has
had sever-
infringement
avoid continued
of the '574 and
judgment
al months
the district court’s
since
patents
issuing
injunction.
before
its
implement a
workaround.
cognizable
obtaining
Verizon had a
interest in
ing
language
Int’l
of the claim
will control.
Court’s decision KSR
Supreme
—Inc.,
—,
Teleflex,
Phillips
Corp.,
v.
U.S.
v.
415 F.3d
Co.
AWH
(2007)
(Fed.Cir.2005).
dispositive applicant when the expressly scоpe. disavowed claim Id. at I. Construction Claim
1317; Amgen Inc. see also v. Hoechst Roussel, Inc., Patent: “Few Feet” A. Marion (Fed.Cir.2003) (holding prosecu that “the majority holds that the district history may not be to infer the used by failing court erred construe narrowing a claim intentional absent systems to limit them to patent’s claims clear of claim cover applicant’s disavowal range of a “few operate within age”). that the claims of undisputed feet.”1 It is any do not include such Here, mentioned, already as the claim majority im- range limitation. But language merely requires gateway sys from the use of the claim term putes one tem to be “localized.” As the district court system,” focus- “localized wireless noted, properly clarifies requirement on the ing specifically by meant It what “localized.” states It gateway system be “localized.” does so gateway system is a localized “[t]he reading snippets out of context based common, private system, opposed to the applicants in the language used networks,” that public cellular prosecution of not the '880 but “provide can communication within an of rather a related not asserted ... complex geo fice or industrial [or] case. interest, graphically public limited area of center, airport, such as an ho shopping made clear the methods We have complex center or the like.” be construed. The ex- claims must tel/convention *17 ll.30-37; col.5 see also id. plicit of the claims must be ex- language amined, typically ordinary (discussing the mean- col.10 ll.30-38 an embodiment and and, majority opinion already 1. The remarks that it was has construed the claim ... lodge any objections futile for to un frankly, rejected proposed limitation proposed 51 as to its “few der Fed.R.Civ.P. (1144:9-14). Id. In offers.” following the district feet” limitation court’s stated, response, simply the district court agree futility hearing. I that the Markman sustained,” "Objection and did not elaborate. applies due to Cardiac Pace doctrine here but (1144:15). Id. But the district court’s terse makers, Med., Inc., F.3d Inc. v. St. Jude evidentiary ruling here is far from a clear (Fed.Cir.2004). majority The any objection indication that further would be opinion exchange an at trial instead relies on provided explanation futile since it no —nor Vonage’s expert when testified he inter that required sustaining was one the basis for —of preted history prosecution the objection. Verizon’s To hold would otherwise applicant to that the intended indicate impose unnecessary an burden on district operate only to limit the claimed invention to judges explain ruling each such to avoid feet J.A. "within few base station.” unintentionally excusing parties comply- from (1143:20-1144:8). objected at 6046 Verizon ing with Rule 51. testimony and moved to strike the because legal “[i]t ”[t]he is a conclusion” and Court merely prior art single distinguishing for a certain application that “a business is “the term ‘wireless’ ... is directed sys whеre factory or office location” where systems having wide-ranging networks” to the area service “would be limited tem’s span large geographic areas. Id. This factory in around the or office loca and in precisely distinction is the same made tion”); 10 ll.42-44. Nowhere does id. col. specification. applicants While the use any mention restriction to example phone operating of a cordless feet;” contrary, it a “few to the discloses why within a few feet to illustrate their operation large airport, areas of as as an different, they clearly invention are not center, shopping complex. or industrial disavowing everything other than such Consequently, properly the district court phones. cordless lim rejected Vonage’s proposed “few feet” itation. excerpt prosecution The from the second history alleged is even less clear as an majority import
The subverts the stated, merely applicants disavowal. The ignores term unquantified “localized” and art prior arguably appears reference] “[a meaning language clear of the claim cellular or local wireless disclose local specification by finding prosecution as, system, example, such a cordless history limiting, disclaimer. To be such a for phone operate that is restricted to within a clearly expressly disclaimer must be few feet from a base station.” J.A. 7189 I Amgen, stated. аdded). (emphasis Applicants are describ- agree majority prosecu- with the reference, ing prior art not their inven- application may tion of a divisional some- tion, again simply “example” use the scope times disclaim claim a co-division- an phone of a cordless as illustration. The family, al if application the same even go distinguish prior on to applicants the disclaimer occurs the co-division- after art is not grounds. on other See id. This application al has been filed or issued as a scope claim re- the “clear disavowal” of separate allegedly But dis- by precedents. our Since no clear quired claiming language history in the file appears prosecution histo- disavowal patent’s application co-divisional re- ry, language, and the claim read in the majority overpowering lied on in- specification, specifically context of the specifi- numerous clear statements ranges cludes numerous embodiments with cation not simply does rise level of feet, greatly exceeding a few I must dis- claim scope. clear disavowal of holding sent from the the district majority passages seizes on two limiting term “local- court erred patent’s application co-divisional gateway system” require ized wireless history, appli- file both instances where the *18 ranges limited to a few feet. distinguishing cants are their invention one, prior appliсants from art. In the note B. Patent: '880 “ in prior ‘wireless’ used the art [as Compression/Packetization wireless,’ does not mean ‘local references] invention, present as claimed majority also finds error in the dis- The phone sense a cordless that is restricted trict court’s not to limit the term decision operate system” within a few feet from a base to re- gateway “localized wireless added). data com- (emphasis quire gateway perform station.” J.A. I cannot applicants they pression packetization. The here are clear that are and 2006). Thus, language the claim I would affirm the district again, agree. Once not to limit the term “lo not mention these func- court’s decision and does silent system” in correctly gateway calized wireless court conclud- tions. The district patent performance '880 of data require should not be so limited. ed that the term compression packetization. or time, majority a pas relies on This it specification in where states: sage II. Obviousness aspect, in one “Thus, present invention sys gateway a localized wireless relates to majority remands to the district gateway compresses .... The and de tem court for reconsideration of the obvious- communica compresses frequency voice relating ness issues '880 signals tion and sends and receives Because I do not discern claim construc- in compressed signals packet form via error, affirm I also would the district ” (em patent col.4 11.6-15 network. patent court’s determination added). majority But the fails to phasis reject ar- is not invalid and also origi consider that this was gument alleged for due to reversal defects support claims that nally penned to also instructions under KSR. Von- in in a ultimately prosecuted separate were age argues applied that the district court pursuant to a re application, divisional “rigid mandatory” requirement PTO, requirement imposed striction “teaching, suggestion, or motivation to they separate constituted a because elements,” combine known which the Su- distinct invention. Those claims were is KSR, KSR. preme rejected in Court (“'497 6,542,497 sued in Patent No. U.S. disagree. S.Ct. at 1741. I patent”), was not asserted The relevant instructions were: patent The '497 claims a “localized action. system” you If find that a combination of items gateway that contains wireless features, prior of the art showed each of the specific including compo certain suit, you elements of the claims must compress packetize data. nents person ordinary determine whether a aspect” cl.l. Thus the “one skill the art would have been motivat- specification actually to in the referred prior ed to combine the art references. subject scope refers to matter outside the patent altogether. And as already and as the district court discussed If you prior conclude that the art dis- notеd, the claims of the '880 do not closes all the elements of claimed type of require any particular “localized invention, but those elements are found system” per or that it wireless references, separate prior you art any form functions.2 In such particular must then consider whether or not it situations, portions held that the we have would have been obvious to combine the specification relating to claims of a elements. separate application divisional should not Elecs., See LG Inc. v. Bizcom limiting. question yes, you be To answer this must Inc., Elecs., (Fed.Cir. that there sugges- determine was some *19 Indeed, gateway system” patent explic- 2. that the fact "localized wireless tends to itly regarding compression typically show that such functions are or adds limitations not packetization inherently system. performed and functions to claim over a such a its judicial Therefore, art the wastes resources. we prior combine suggestion jury’s can be ex- should affirm the determination of elements. The reference, particular in a even that the pressly damages assuming stated Verizon’s may knowledge that improperly or it be within claims of the '880 were available to one of ordi- generally was construed.
nary skill in the relevant art. CONCLUSION it that plain at 6626. I think these
J.A. an rea- require explicit instructions do not view, my In yet this case is another prior be found in the art son to combine to example needlessly upsetting of оur court Rather, themselves. the dis- references judgments by finding legal error in Mark- trict court instructed that such a reason that, rulings perhaps man than while less that gleaned knowledge could be from “the perfectly are correct explained, and that ordinary available of generally was to one follow the methods for claim construction art.” an skill the relevant Id. Such explained precedents. as in our Requiring instruction is correct. justified. more is I Accordingly, dis- sent. Injunction Damages III. and Since I would affirm the district court’s GAJARSA, Judge, concurring Circuit validity, I
judgments infringement on part dissenting part. jury’s would not disturb the determination join I the court’s decisions to vacate the damages perma- of nor the district court’s judgment infringement of as to the '880 Further, injunction. nent even when this patent, infringement to affirm of the '574 finding court reverses district court’s patent, judgment to affirm the some, infringement validity as to and/or patents '574 and '711 are not invalid due all, patents-in-suit, but not of the we do not obviousness, and to remand the issue of necessarily need to vacate and remand the However, of the '880 obviousness damages award. I believe that the district court erred When, here, the evidence shows that failing to the claim term construe “destina- products infringes each of the accused all tion address” and that proposed patents-in-suit, infringer and the substantially construction is correct. I any showing appeal fails to make judgment would therefore vacate the damages sup- award would not be I infringement of the '711 and dis- ported by only patents those for which we judgment sent from the court’s to the con- liability, affirm affirm dam- we must trary. ages despite part our reversal Vonage proposed a definition for the infringer’s liability. Remanding simply to claim term “destination ad- damages that the in- reconfirm award is court, liability arguing before the district supported deed the affirmed dress” remaining impos- identify address must patents-in-suit under the destination “a unnecessary litigants endpoint.”1 es costs on called device or service Vonage's example endpoint” though, Vonage suggested of a "service counsel for satisfy presented court a voicemail voicemail server could not the "desti- district was court, Arg. argument server. At oral before this nation address” claim limitation. Oral *20 the district court’s Markman or- However, traffic, packets pass through variety a resulting way der and its instructions of network routers on their to their destination, any they preferably lacked reference to this term. The but are sent only jury regarding along this the shortest or instruction to otherwise most effi- path provide. claim term arose from a catchall directive: cient the Internet is able to cases, however, terms the court had left undefined “are to In some form of direct instance, given by you jury] customary possible. be their connection is not For if [the ordinary meaning person parties of ordi- one or both of the to the conversa- NAT, nary Failing art.” to construe skill has or “network address translation,” error, this term was both because the dis- device between it and the rest Internet, obligated provide may trict court was some of the technical limitations guidance prevent to the on this term and a direct Internet connection be- Yonage’s because definition is the correct tween the two being conversants from Vonage cases, one. should be entitled to a re- In Vonage provides formed. these proceedings infringe- relay” mand for an “RTP par- further server to which both ment of '711 patent. relays ties connect and which traffic from caller to callee and vice versa.
A understanding dispute full be- parties tween the on this claim term re- an RTP relay interposed When is into call, quires foray a brief into the technical de- IP provided address to the (“VoIP”) calling tails of over IP calls. A computer relay, Voice is that of the placed “public packet VoIP call is over that of the called computer. Verizon as- network,” case, data parlance the '711 serts that in such a the address of patent’s description practice, relay written is the “destination address” as —in using the call the Internet. In placed that term is used in the asserted claims of call, typical telephone patent. Vonage VoIP caller and disagrees, argu- callee each an Internet ing relay have Protocol that because the RTP is not the (“IP”) address, packets and the data com- final making up destination of the data call, prising telephone call are routed over relay’s the RTP address cannot be the routing the Internet between them.2 This destination computer address. The called is more-or-less direct: like all Internet provided is not with a “destination ad- 13:14-13:53, http://www.cafc. regular telephone available at calls on the PSTN side. uscourts.gov/ oralarguments/mp3/07-l240.- Thus, Vonage seeking subscriber to call a mp3. position I would hold to the it telephone gate- number will contact a PSTN took at the and find the district court address Internet, way request gate- over the providing functionality of a server voicemail number, way place a call to that and then to be a “destination address” when that ad- packets gateway, VoIP send re- provided calling party. dress is to a constructs the sound of the caller's voice and telephone sends it over the to the called num- 2. Some VoIP calls have their ultimate desti- reverse, process A ber. similar occurs in public nation at a number on the switched in this manner the subscriber is able ("PSTN”), telephone network the network de- telephone to call or be called a PSTN System scended from the Bell that is used to patent’s description number. The written ex- complete majority the vast calls. pressly contemplates involving embodiments Vonage serves calls to or from tele- PSTN part a PSTN whose IP address is phone by making numbers available "PSTN gateways” the "destination address.” See '711 that are connected both to the In- ternet and the PSTN and which col.13 1.51to col.14 1.15. intermediate packets between VoIP on the Internet side *21 the definition, if used in the '711 is so term is under dress” a call. The endpoint address of the of this claim construction Vonage prevails on patent’s in written examples supplied the finding a likely be entitled to it would issue the “destination” description speak all to of the asserted infringement literal of no being as that of or “destination address” claims. patent instance, For the party. the actual called discussion should illus- As the above “different destinations patent references trate, parties the dispute the between subscribers,” patent col.4 roaming subtle, technical, and sub- is a this term added), (emphasis and “determina ll.15-16 dispute parties do not stantial one. tion of the status of a destination termi call has RTP-relayed in an that the data nal,” example Id. col.5 ll.24-25. A concrete comput- final at the callee’s its destination notes: er, packets IP sent but that the individual embodiment, preferred In the the do- calling computer have as their from the main name transmits different server this relay. the RTP Whether destination (IP ad- destination address information “destination arrangement embodies the number) depend- dress and/or entirely turns on what address” limitation of two or more time win- ing on which In meaning of the term is. scope and dows covers the time of arrival of each interpretation face of such a claim manner, In request. translation duty of the court dispute, it is the can have the server return customer Markman, 52 F.3d resolve the issue. See information at differ- different address (“[I]n jury, a case tried to a at 979 day, ent times of the week or month. power obligation court has the result, seeking to communi- parties As a meaning of law the construe as matter having one name on cate with someone (em- claim.” language used network, actually receive instruc- added)). here did phasis The district court two or more tions to communicate with in its obligation. not meet that Nowhere times. alternate destinations at different Markman order is the term “destination might example, the communications For mentioned. The district court’s address” during office to the customer’s go office in- “customary ordinary meaning” at other times. hours and to the home essentially delegated struction construing task of this claim term—(cid:127) added). This (emphases col.5 ll.52-63 Id. bench, guidance from the without reading is consistent with passage impose its own definition was directed the “desti “destination address” which when Especially on unconstrued terms. endpoint of the call— nation” must be the request that the court construe parties office, here, or as recipient’s home claim term —as did here —such usage This of “destination” appropriate. improper. dеlegation po to an intermediate contradistinction network is not confined to sition failing The district court’s error descriptions preferred embodiment. construe the term “destination address” description In a of Internet preliminary Vonage’s pro- harmless if would have been architecture, the notes: merit. limiting definition lacked posed However, packet bearing a destination I would conclude When router, the source correctly stated the definition of the address leaves has address,” two numbers router examines first a “destination term: number, many argues determine how that such an embodi in matrix table to *22 get improperly the minimum to to the ment would be excluded be hops are packet “Vonage’s proposed It then sends the destination. cause construction re determined from that quires part next router as that the destination be ” table, procedure repeated. is ‘public packet Maj. Op. and the data network.’ However, has a database table Each router at claim con 1305-06. automatically. information This finds the arguments did not to focus struction need packet until the arrives at the restriction, continues depen because the on such computer. destination actually claim dent asserted Verizon requires that “the ... explicitly destina passage clearly dis Id. col.2 ll.26-33. This tion address a numeric Internet include[ ] “routers” —intermediaries tinguishes address,” excluding phone-num Protocol along— traffic simply pass which network ber-only patent embodiments. claim eomputer[s]” at which from “destination Vonage’s argument 20. The thrust of was relays traffic to rest.3 RTP comes “[wjith respect instead that to the asserted acknowledge I function as routers. of the '711 patent, claims the destination only relay an RTP does not function as a always the endpoint address is final technically that term is defined “router” as (em public packet data network.” J.A. 68 Protocol, since the IP by the Internet added). if phasis Vonage’s proposed Even and, relay packets are addressed to definition of “destination address” were routers, perspective from the of Internet technically particu flawed some minor However, relay. terminate at the the re lars, a court’s “task is not to decide which lay than an IP router does little more of the adversaries is correct” but rather to simply repackages does—it the received “independently meaning ... declare the packet data in a different IP and forwards Patents, the claims.” Exxon Chem. Inc. v. I along it to the ultimate destination. do (Fed. 1553, Corp., Lubrizol 64 F.3d 1556 meaningful not believe there is a distinc Cir.1995). power We have the to approve patent tion within the context of this be aspects Vonage’s proposed those claim “relay.” patent tween a The “router” and comport construction which with the evi intermediary clearly distinguishes pass- rejecting aspеcts dence while those through nodes on the network from the do not. endpoints. majority out that the The evidence here indicates that Von- points age’s position endpoint in which on the inter-
describes an embodiment versus only telephone mediary actually is “destination address” issue—-the relevant issue banc)), majority passage 3. The dismisses this as "not in which words are assumed to have ("The meaning description throughout. of the invention of the from a the same Id. description, patent, meaning from a but rather words claims have the 'Background scope they specifi- Art' section of the of how with which are used general.” Maj. Op. prosecution history.” (quoting the internet works in cation and the Comm’n, particular I do not believe that the Kinik Co. v. Int’l Trade 362 F.3d 1359, (Fed.Cir.2004))). passage specifica quot- location of the within the While the 1365 patent specification language specifically "a ed does not matters. A describe instrument,” invention, fully integrated Phillips patentee’s patentee’s written it is in the (Fed.Cir. Corp., helpful v. AWH 415 F.3d words and therefore in under- own 2005) (en banc) (quoting standing they Markman v. Westview what those words mean when truments, Inc., (en appear Ins 52 F.3d in the claims. Read- disputed by parties correct. —is address” in the
ing the term “destination specification, usage
context of its Phillips Corp., v. AWH
see (en (Fed.Cir.2005) banc), I conclude only patentees designate meant to endpoint of the VoIP call. Verizon’s
theory infringement, to the extent that relay
it the address of an RTP identifies address,” is without merit “destination meaning. I vacate the
under that would
judgment infringement pat- of the '711
ent, injunction vacate the to the extent it references the '711 conduct fur-
remand with instructions to proceedings
ther under definition
“destination address” limited to the ulti-
mate data.4 destination VoIP VENTURE, LINE
CITY JOINT
Plaintiff-Appellant,
v. STATES, Defendant-Appellee.
UNITED
No. 2006-5102. Appeals,
United States Court of
Federal Circuit.
Sept. 2007. "server,” analysis,” agree ma- disputed the other in the '574 I with the As to terms patents, "translating,” jority’s conclusions. and '711 "conditional