Rates Technology Inc. v. Broadvox Holding Company, LLC et al, No. 1:2013cv00152 - Document 125 (S.D.N.Y. 2014)

Court Description: OPINION AND ORDER: For the aforementioned reasons, I construe the disputed terms as follows re 085 Patent, Claim 1 and 769 Patent, Claim 1, and as further set forth in this opinion. (Signed by Judge Shira A. Scheindlin on 1/28/2014) (cd)
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ------------------------------------------------------ )( RATES TECHNOLOGY INC., Plaintiff, OPINION AND ORDER - againstBROADVOX HOLDING COMPANY, LLC, CYPRESS COMMUNICATIONS OPERATING COMPANY, LCC, AND ABC COMPANIES, 1 TO 10, 13 Civ. 0152 (SAS) Defendants. ------------------------------------------------------ X SIDRA A. SCHEINDLIN, U.S.D.J.: I. INTRODUCTION Rates Technology Inc. ("RTI") brings this action against Broadvox Holding Company, LLC, its named subsidiary, Cypress Communications Operating Company, LLC, and its unnamed subsidiaries or affiliates, ABC Companies 1 to 10 (collectively, "Broadvox"), for infringing two ofRTI's telecommunications patents: United States Patent No. 5,425,085 (the '''085 Patent") and United States Patent No. 5,519,769 (the '''769 Patent,,).1 See First Amended Complaint ("F AC") ,r'II 13, 21. -1­ On December 27, 2013, the Court held a Markman hearing. The parties have agreed upon the meaning of three terms in claim 1 of the 085 Patent and two terms in claim 1 of the 769 Patent.2 The parties dispute the meaning of nine terms in claim 1 of the 085 Patent and five terms in claim 1 of the 769 Patent.3 For reference, I have included a list of the constructions I have adopted at the end of this Opinion.4 II. BACKGROUND A. The Invention RTI has provided products and services in the telecommunications field for thirty years.5 RTI designs and manufactures technologies including private pay telephones, call cost rate chips, and least-cost-routing chips.6 On June 13, 1995, the Patent and Trademark Office ( PTO ) issued the 085 Patent, designating RTI as the sole assignee.7 The claimed invention relates to the routing 2 See Table 1. These are the only claims at issue. 3 See Table 2. 4 See Table 3. 5 See Declaration of Gerald Weinberger (President of RTI), Ex. A to 12/19/13 Letter of Milton Springut, RTI s counsel, to the Court, ¶ 2. 6 See id. 7 See 085 Patent, Ex. 1 to 1/6/14 Letter of Tal Benschar, RTI s counsel, to the Court ( Benschar Ltr. ), at 1. -2- of calls based on cost.8 Broadvox Holding provides IP-based information services to approximately three hundred wholesale carriers, businesses, and enterprise retail customers.9 On May 21, 1996, the PTO issued the 769 Patent to RTI.10 The claimed invention relates to a method for updating a database in a telephone routing system.11 In two 1998 decisions, Judge William Young of the District Court of Massachusetts construed several of the claims disputed here.12 Several years later, the patents were returned to the PTO for reexamination, where the claims were reconsidered in light of prior art.13 While the reexaminations did not affect claim 1 of the 769 Patent, RTI added limitations to claim 1 of the 085 Patent to overcome the prior art.14 8 See FAC ¶ 11. 9 See id. ¶ 13. 10 See 769 Patent, Ex. 4 to Benschar Ltr., at 1. 11 See FAC ¶ 19. 12 See MediaCom Corp. v. Rates Tech. Inc., 4 F. Supp. 2d 17 (D. Mass. 1998) ( MediaCom I ); MediaCom Corp. v. Rates Tech. Inc., 34 F. Supp. 2d 76 (D. Mass. 1998) ( MediaCom II ). 13 See Defendants Answering Claim Construction Brief ( Broadvox Brief ) at 1. 14 See id.; 085 Patent Reexamination Certificate C2, Ex. 3 to Benschar Ltr., col. 1 ll. 1-64; 769 Patent Reexamination Certificate C1, Ex. 5 to Benschar Ltr., col. 1 l. 15. -3- B. Claim Language The full text of claim 1 of the 085 Patent, with the disputed phrases emphasized, follows: A device for routing telephone calls along a least cost route originating from a first telephone to a second telephone having an associated telephone number via a network having a plurality of alternate communication switch paths corresponding to different carriers which can be chosen to route the call and normally providing a current to said first telephone when said first telephone is in use, comprising: [I] a housing forming an enclosure and comprising first jack means for connection to said first telephone, and second jack means for connection to said network; [ii] switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone; [iii] means operatively connected to said switch means for generating a current through said switch means to the first telephone corresponding to a current provided by said network, when the first telephone is disconnected from said network by said switch means; [iv] database means for storing billing rate parameters for determining a least cost communication path for call corresponding to said telephone number; [v] means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone; [vi] means for addressing said database means for identifying -4- a plurality of communication switch paths to said second telephone and the cost rate of each path; [vii] means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route; and [viii] means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone.15 The full text of claim 1 of the 769 Patent, with the disputed phrases emphasized, follows: A method for updating a database that stores billing rate parameters for a call rating device used for cost determinations for a calling station, comprising the steps of: [I] [ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters; [iii] verifying if billing parameters should be updated; and [iv] 15 connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations; transmitting from the rate provider to the call rating device the updated billing rate parameters when the rate provider 085 Patent Reexamination Certificate C2 col. 1 ll. 1-64. -5- determines that an update is required.16 The parties agree on the construction of the following phrases: TABLE 1 17 085 Patent, Claim 1 Term/Phrase Agreed Upon Construction 1. device The term should not be a limitation of the claim. 2. first jack means for connection to said first telephone First jack for connection to said first telephone. 3. second jack means for connection to said network Second jack for connection to said network. 769 Patent, Claim 1 Term/Phrase Agreed Upon Construction 1. a data transfer line a data transfer line (or path to transfer data) 2. indicia identifying the call rating device and the date and time of the last update of the billing rate parameters indicia identifying call rating device and the date and time of the last update of the billing rate parameters. The parties dispute the construction of the following phrases: 16 769 Patent col. 6 ll. 35-49. The reexamination of the 769 Patent did not affect the language of claim 1. 17 The information in Table 1 is derived from Defendants First Revised Claim Terms Chart ( Claim Terms Chart ), Doc. No. 113. -6- TABLE 2 18 085 Patent, Claim 1 Term/Phrase RTI s Proposed Construction Broadvox s Proposed Construction 1. a housing forming an enclosure and comprising One or more housings forming one or more enclosures A unitary physical structure that includes a first jack for connection to a first telephone and a second jack for connection to a network Comprising is a transition term linking the preamble to the body of the claim. 2. switch means operatively connected to said first jack means for disconnecting (as defined below) said first telephone from said network during routing of a telephone call from said first telephone switch operatively connected to said first jack for disconnecting said first telephone from said network during routing of a telephone call from said first telephone This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). 3. disconnecting Ordinary meaning should control. In the context of specification and prosecution history, term should be Interruption of the electrical circuit between the telephone and the network the breaking or opening of the electrical circuit between 18 The structure of the switch means is the 2 Form C switch. It is referenced in the 085 Patent as item 36, and is described at col. 3 ll. 5164, and Fig. 2. The information in Table 2 is derived from the Claim Terms Chart, the Markman hearing transcript ( Tr. ), and the parties post-hearing letters. -7- 085 Patent, Claim 1 Term/Phrase RTI s Proposed Construction Broadvox s Proposed Construction construed as disconnecting the communication such as signaling the telephone jack and the network 4. means operatively connected to said switch means for generating a current (as defined below) through said switch means to the first telephone corresponding to a current provided by said network, when the first telephone is disconnected from said network to said switch means Current source operatively connected to said switch for generating a current through said switch to the first telephone corresponding to a current provided by said network, when the first telephone is disconnected from said network by said switch This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). 5. means for generating a current Current source for generating a current This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). The structure of the means is the structure shown in the Fig. 2 drawing as connecting item 38, as well as the structure of item 38. The structure of the means is the structure shown in the Fig. 2 drawing as connecting item 38, as well as the structure of item 38. 6. means Detecting and storing -8- This is a means-plus- 085 Patent, Claim 1 Term/Phrase RTI s Proposed Construction operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone logic (e.g., routine or subroutine) operatively connected to said switch for detecting and storing said telephone number originating from the first telephone function element, whose construction is governed by 35 U.S.C. § 112(f). 7. means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path Database addressing logic (e.g., routine or subroutine) for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). -9- Broadvox s Proposed Construction The structure of the means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone is a combination of: the DTMF tone detector 88 for detecting a telephone number, and an unknown and indefinite structure for storing said telephone number originating from the first telephone. The structure of the means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path is the algorithm at col. 6 ll. 7-47 and Fig. 5. 085 Patent, Claim 1 Term/Phrase RTI s Proposed Construction 8. means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route Comparing logic (e.g., routine or subroutine) actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route. This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). 9. means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to logic (e.g. routine or subroutine) operatively connected to said switch and said second jack for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack to the selected communication path and carrier to establish a switched This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). -10- Broadvox s Proposed Construction The element means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route is not described in the specification and, therefore, this claim term is indefinite. The structure is the combination of a tone generator with a crystal oscillator (which generates the number sequence), and an analog switch (so that call is routed through said second jack means to the selected communication 085 Patent, Claim 1 Term/Phrase establish a switched connection between said first telephone and said second telephone RTI s Proposed Construction connection between said first telephone and said second telephone. Broadvox s Proposed Construction path . . . ). 769 Patent, Claim 1 Term/Phrase RTI s Proposed Construction Broadvox s Proposed Construction 1. at a predetermined time and date at a predetermined time and date The time and date for calling the rate provider are selected a substantial period in advance of the call 2. call rating device call rating device This is a means-plusfunction element, whose construction is governed by 35 U.S.C. § 112(f). An identifiable physical component having the function of receiving rate information from a rate provider over a data transfer line, incorporating the rate information and thereafter managing calls over the least cost routing route. 3. transmitting over the data transfer line transmitting over the data transfer line -11- conveying information over the same wire operatively connected to a 769 Patent, Claim 1 Term/Phrase RTI s Proposed Construction Broadvox s Proposed Construction call rating device on one end and a phone network on the other 4. verifying if billing rate parameters should be updated verifying if billing rate parameters should be updated the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters of the call rating device should be updated 5. transmitting from the rate provider to the call rating device transmitting from the rate provider to the call rating device the rate provider, based on the information received from the call rating device, transmits the billing rate parameters to the call rating device III. APPLICABLE LAW Analysis of a patent infringement claim involves two steps: (1) construction of the terms of the asserted claims and (2) determination of whether the accused device infringes the claims, as construed.19 Claim construction is a 19 See Metabolite Labs., Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004). -12- question of law,20 the purpose of which is to determine what is covered by an asserted claim. In other words, [t]he construction of claims is simply a way of elaborating the normally terse claim language in order to understand and explain, but not to change, the scope of the claims. 21 The Federal Circuit has made clear that there is no magic formula or catechism for conducting claim construction. 22 Thus, courts must be mindful that applying [the substantive precepts of patent claim interpretation] to the facts of a case can be . . . perplexing, particularly where precepts can be in opposition to one another and district judges cannot always tell which one(s) apply in a particular case. 23 As such, the Federal Circuit has provided district courts with some guidance: [T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. . . . [This inquiry] 20 See Markman v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996). 21 Terlep v. Brinkmann Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005) (internal citations omitted). 22 Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en 23 Edward D. Manzo, Claim Construction in the Federal Circuit § 1.2 banc). (2009). -13- provides an objective baseline from which to begin claim interpretation. . . . Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.24 To determine how a person skilled in the art understands a disputed claim term, courts should look to publicly available sources, including intrinsic evidence such as the words of the claims themselves, the remainder of the specification, the prosecution history and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. 25 A. Intrinsic Evidence The Federal Circuit views intrinsic evidence as a more reliable guide to the meaning of a claim term than are extrinsic sources. 26 Thus, district courts should use the intrinsic record as the primary tool to supply the context for interpretation of disputed claim terms. 27 1. Claim Language 24 Phillips, 415 F.3d at 1313 (citations omitted). 25 Id. at 1314 (internal citations omitted). 26 Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008) (citing Phillips, 415 F.3d at 1318-319). 27 V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005). -14- Although there is no rigid formula to claim construction, [j]udicial interpretation must begin with and remain focused upon the words of the claims themselves . . . to define the scope of the patented invention. 28 On occasion, the ordinary meaning of claim language as understood by a person of skill in the art will be so apparent from the claim language itself that no further inquiry is needed.29 However, even when the terms in a claim are self-explanatory, [t]he context in which a term is used in the asserted claim can be highly instructive. 30 2. The Specification In addition to the claim itself, a patent is required by statute to contain a written description of the invention . . . . 31 This description known as the specification32 includes: an abstract of the invention; a description of the 28 Investment Tech. Grp., Inc. v. Liquidnet Holdings, Inc., No. 07 Civ. 510, 2010 WL 199912, at *2 (S.D.N.Y. Jan. 19, 2010) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 29 Phillips, 415 F.3d at 1314. 30 Id. 31 35 U.S.C. § 112. 32 See Medisim Ltd. v. BestMed LLC, No. 10 Civ. 2463, 2011 WL 2693896, at *3 n.28 (S.D.N.Y. July 8, 2011) ( The terminology used to describe the parts of a patent can be slightly confusing. Technically, the specification includes both the claims and the written description. However, courts typically use the term specification to refer to the written description on its own and as distinct from the claims. For purposes of consistency, I adopt this common usage. ). -15- invention s background; a summary of the invention; patent drawings; and a detailed description that discusses preferred embodiments of the invention. 33 The Federal Circuit has said that specifications are always highly relevant to the claim construction analysis and therefore claims must be read in view of the specification, of which they are a part. 34 However, courts must be mindful that while using the specification to interpret the meaning of a claim is permissible, importing limitations from the specification into the claim is not.35 Because words of the claim alone define the scope of the right to exclude, 36 the specification should generally be used to limit a claim only: (1) if the claim explicitly recite[s] a term in need of definition ; or (2) if the specification unambiguously defines a term, i.e., if a patent applicant has elected to be a lexicographer by providing an explicit definition in the specification for a claim term. 37 33 Id. at *3. 34 Phillips, 415 F.3d at 1315 (quotation marks and citations omitted). In fact, a claim interpretation that excludes a preferred embodiment described in the specification is rarely, if ever, correct. Vitronics, 90 F.3d at 1583. 35 Phillips, 415 F.3d at 1323. 36 Renishaw PLC v. Marposs Societa Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). 37 Medisim, 2011 WL 2693896, at *4 (quoting Renishaw, 158 F.3d at 1248-49). -16- Even then, there will still remain some cases in which it will be hard to determine whether a person of skill in the art would understand the embodiments to define the outer limits of the claim term or merely to be exemplary in nature. 38 3. Prosecution History The prosecution history of a patent is part of the intrinsic evidence and consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. 39 [B]ecause the prosecution history 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. 40 Nonetheless, [l]ike the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent, and accordingly, can often inform the meaning of the claim language. 41 Furthermore, the prosecution history may be given substantial weight 38 Phillips, 415 F.3d at 1323. 39 Id. at 1317 (citation omitted). 40 Id. 41 Id. -17- in construing a term where that term was added by amendment. 42 This is because changes made to the claim terms during the prosecution history demonstrat[e] how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. 43 As such, [w]hen the patentee unequivocally and unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim consistent with the scope of the claim surrendered. 44 The doctrine applies even where the patentee s statements are not necessary or persuasive to the PTO.45 B. Extrinsic Evidence The extrinsic record consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises. 46 Although the Federal Circuit allows district courts to rely on 42 Board of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1369 (Fed. Cir. 2008). 43 Phillips, 415 F.3d at 1317. 44 Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013). 45 Uship Intellectual Props., LLC v. United States, 714 F.3d 1311, 1315 (Fed. Cir. 2013). 46 Phillips, 415 F.3d at 1317 (internal citations omitted). -18- extrinsic evidence, it views extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms. 47 Generally, a patent s intrinsic record does not warrant consideration of extrinsic evidence. 48 Where a patent s claims, written description, and prosecution history are complete and unambiguous, a court need not resort to extrinsic evidence such as treatises, technical references, or expert testimony. 49 But [w]here the intrinsic record leaves ambiguities and unresolved questions . . . a court may consider extrinsic evidence, including expert testimony. 50 The Federal Circuit has noted that the decision as to the need for and use of experts is within the sound discretion of the district court. 51 It is unhelpful if an expert simply recites how [he] would construe [a term] based on his own reading of the specification. 52 On the other hand, expert reports and testimony 47 Id. at 1317-318. 48 BASF Agro B.V. v. Makhteshim Agan of No. Am. Inc., 519 Fed. App x 1008, 1015 (Fed. Cir. 2013). 49 Id. 50 Id. 51 Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350, 1357 (Fed. Cir. 2006). 52 Symantec Corp. v. Computer Assocs. Int l, Inc., 522 F.3d 1279, 1291 (Fed. Cir. 2008). Accord Phillips, 415 F.3d at 1318 ( [C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court. ). -19- can help the court by: [providing] background on the technology at issue, [explaining] how an invention works, [ensuring] that the court s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or [establishing] that a particular term in the patent or the prior art has a particular meaning in the pertinent field.53 With this in mind, a court should discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent. 54 Even if the judge permissibly decide[s] to hear all the possible evidence before construing the claim, the expert testimony, which [is] inconsistent with the specification and file history, should [be] accorded no weight. 55 C. Means-Plus-Function Section 112(f) [of Title 35] allows patentees to put structural details into the specification and build into the literal coverage of the claim a certain scope for equivalents in performing a defined function. 56 Section 112(f) states: 53 Id. 54 Id. (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)). 55 BASF, 519 Fed. App x at 1016 (citing Vitronics, 90 F.3d at 1584). 56 Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013). -20- An element in a claim for combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.57 This form of claiming, known as means-plus-function claiming, applies to purely functional limitations that do not provide the structure that performs the recited function. 58 It represents a quid pro quo by permitting inventors to use a generic means expression for a claim limitation provided that the specification indicates what structure(s) constitute(s) the means. 59 [W]hether the limitation in question should be regarded as a meansplus-function limitation, like all claim construction issues, is a question of law for the court, even though . . . evidence from experts may be relevant. 60 As with any claim term, a court examines the words of the claims themselves, the written 57 35 U.S.C. § 112(f). Section 112(f) was formerly known as 35 U.S.C § 112, ¶ 6. See Bennett Marine, Inc. v. Lenco Marine, Inc., No. 2013 WL 5273116, at *4 ( Fed. App x ) (Fed. Cir. Sept. 19, 2013). 58 Phillips, 415 F.3d at 1311. 59 Chicago Bd. Options Exch. v. Interntional Sec. Exch., 677 F.3d 1361, 1367 (Fed. Cir. 2012) (internal citations omitted). 60 Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). -21- description, the prosecution history, and any relevant extrinsic evidence. 61 [W]hether claim language invokes Section 112, ¶ 6 depends on how those skilled in the art would understand the structural significance of that claim language, assessed against the presumptions that flow from a drafter s choice to employ or not employ the term means. 62 The Federal Circuit has established two guidelines for determining whether the special rules of claim construction set forth in Section 112, ¶ 6 apply to a given claim limitation. 63 First, use of the word means creates a rebuttable presumption that the drafter intended to invoke Section 112, ¶6. 64 A challenger may rebut the presumption where a claim recites a function but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function. 65 In such a case, the claim is not in means-plus- 61 Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011). 62 Id. at 1360. Accord Rembrandt Data Techs., LP v. AOL LLC, 641 F.3d 1331, 1341 (Fed. Cir. 2011) ( When determining whether a claim term recites sufficient structure, we examine whether it has an understood meaning in the art. ). 63 Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1373 (Fed. Cir. 2012). 64 Id. 65 Id. (internal citations omitted). -22- function format even if the claim uses the term means. 66 Conversely, [i]f a claim term does not use the word means, we presume that means-plus-function claiming does not apply. 67 [T]he presumption flowing from the absence of the term means is a strong one that is not readily overcome. 68 In deciding whether a challenger has rebutted the presumption, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6. 69 The Federal Circuit requires only that the claim term be used in common parlance or by ordinarily skilled artisans to designate sufficiently definite structure, even if the term covers a broad class of structures. 70 If, however, the claim term recites a function without reciting sufficient structure for performing that function, the presumption falls and means-plus-function claiming applies. 71 Construction of a means-plus-function limitation involves two steps. 66 Id. (internal citations omitted). 67 Power Integrations, Inc. v. Fairchild Semiconductor Int l, Inc., 711 F.3d 1348, 1364 (Fed. Cir. 2013) (internal citation omitted). 68 Inventio, 649 F.3d at 1356. 69 Id. (internal citations omitted). 70 Power Integrations, 711 F.3d at 1965 (quoting Lighting World, 382 F.3d at 1359 360). 71 Id. at 1364. -23- First, the court must determine the claimed function. 72 Second, the court must identify the corresponding structure in the written description of the patent that performs the function. 73 A structure disclosed in the specification qualifies as a corresponding structure if the specification or the prosecution history clearly links or associates that structure to the function recited in the claim. 74 D. Indefiniteness Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction. 75 Section 112, ¶ 2 states: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.76 Under this section, the inventor has a duty to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. 77 An inventor s failure to particularly point[] out and distinctly 72 Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012) (internal citation omitted). 73 Id. 74 Id. (internal citation and quotation marks omitted). 75 Id. 76 35 U.S.C. § 112 ¶ 2 is now known as 35 U.S.C. § 112(b). 77 Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (citation omitted). -24- claim[] the subject matter of her invention renders the claim invalid.78 Patents issued by the PTO enjoy a presumption of validity,79 and so indefiniteness must be proved by clear and convincing evidence.80 Whether a claim is indefinite is a question of law,81 although [e]xpert testimony may be helpful in making this determination. 82 A claim is definite if one skilled in the art would understand the bounds of the claim when read in light of the specification. 83 A claim is not indefinite merely because it is difficult to construe. 84 To be indefinite, it must be such that no narrowing construction can properly be adopted to interpret the claim.85 78 Id. 79 See 35 U.S.C. § 282. 80 See Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). 81 See Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 949 (Fed. Cir. 2007). 82 Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) ( Star Scientific II ). 83 IGT v. Bally Gaming Intern., Inc., 659 F.3d 1109, 1119 (Fed. Cir. 2011) (internal citations omitted). 84 Dow Chem. Co. v. Nova Chems. Corp., 458 Fed. App x 910, 917 (Fed. Cir. 2012) (internal citations omitted). 85 Id. -25- If a means-plus-function limitation lacks a structure disclosed in the specification to perform those functions, the claim limitation would lack specificity, rendering the claim as a whole invalid for indefiniteness. 86 A structure disclosed in the specification qualifies as a corresponding structure if the specification or the prosecution history clearly links or associates that structure to the function recited in the claim. 87 Even if the specification discloses a corresponding structure, the disclosure must be adequate . . . [to] show[] what is meant by that [claim] language. 88 [T]he testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification. 89 IV. DISCUSSION A. General Claim Construction Issues At the Markman hearing and in their briefs, the parties disagreed on several claim construction issues. Because the issues pertain to claim construction in general, I will address them before construing the individual terms. 1. RTI s Expert 86 Aristocrat Techs., Australia Pty Ltd. v. International Game Tech., 521 F.3d 1328, 1331 (Fed. Cir. 2008). 87 Noah Sys., 675 F.3d at 1311 (internal citation omitted). 88 Id. 89 Id. at 1312 (internal citation omitted). -26- Broadvox argues that the Court should not consider the declaration of RTI s expert, Bradley Walton.90 First, Broadvox objects that Walton s opinions are conclusory and contradict the intrinsic record.91 RTI responds that Walton reviewed the relevant claims, specification, and prosecution history to form his opinions.92 RTI notes that Walton is an electrical engineer in the telecommunications field, i.e., a person of ordinary skill in the art.93 Broadvox s objections are overruled. Expert testimony may be useful to the Court in construing RTI s claims.94 If I find that a construction proposed by Walton contradicts the intrinsic evidence, I will simply discount it. Second, Broadvox argues that Walton s opinion is irrelevant because he failed to examine the entire prosecution history, specifically the reexaminations of the patents-in-suit.95 But at the Markman hearing, Mr. Spencer counsel for 90 See Broadvox Brief at 7-8. 91 See id. 92 See RTI s Reply Claim Construction Brief ( RTI Reply ) at 3. 93 See id. 94 See MediaCom I, 4 F. Supp. 2d at 29 ( Claim1 [of the 085 Patent] presents questions that are sufficiently complex and technical that the Court would be remiss to impose its lay understanding on this patent claim without the benefit of expert guidance. ). 95 See 12/19/13 Letter of George Pazuniak, Broadvox s Counsel, to the Court ( 12/19/13 Pazuniak Ltr. ) at 2. -27- RTI represented that he had personal knowledge that Walton reviewed the entire prosecution history. 96 Thus, I will consider Walton s opinions, including his determination of whether means-plus-function applies to certain terms. 2. Prior Judicial Construction of Claim Terms The parties next disagree on the precedential effect of the MediaCom cases, in which Judge Young construed several of the claim terms at issue here. Broadvox contends that this Court is bound by the prior constructions under stare decisis.97 RTI urges this Court not to follow the MediaCom opinions, given that they were interlocutory and decided prior to the reexaminations.98 While I am certainly not bound by the MediaCom opinions, I find them persuasive.99 As I stated at the Markman hearing: RTI was [before Judge Young in the MediaCom cases] and had a full and fair opportunity to litigate. It sounds like estoppel almost. . . . [RTI] litigated that very claim term fully, completely, and the Court spent a lot of time on it, had this expert, made a record, issued two decisions. That s pretty persuasive to me.100 96 Tr. at 12:2-7. 97 See 12/19/13 Pazuniak Ltr. at 4. 98 See RTI Reply at 9. 99 See TM Patents, L.P. v. International Bus. Machs., Corp., 72 F. Supp. 2d 370, 375 (S.D.N.Y. 1999) (applying collateral estoppel where same claims were previously construed in Markman hearing by the District Court of Massachusetts). 100 Tr. at 18:10-15. -28- Moreover, as Broadvox notes, the MediaCom cases were decided before the subsequent reexaminations, where RTI was forced to overcome new prior art. 101 Thus, the prior constructions are more favorable to RTI, than they would be today. 3. Effect of Prosecution History Next, RTI argues that, for purposes of claim construction, it is not bound by statements it made to the PTO Board of Appeals.102 RTI cites no case law to support its assertion, and I see no reason why RTI s statements to the PTO Appeals Board should not give rise to a prosecution disclaimer where they unequivocally and unambiguously disavow[] a certain meaning . . . 103 Finally, RTI argues that prosecution history statements are never relevant to the determination of whether means-plus-function claiming applies.104 RTI cites only to Robinson v. Cannondale Corporation, where the Federal Circuit 101 12/19/13 Pazuniak Ltr. to the Court at 4. 102 See Tr. at 21:19-25, 22:1-2. 103 Biogen Idec, Inc., 713 F.3d at 1095. Accord Tr. at 22:3-4 (The Court: [A statement made to the Appeals Board] is still a statement made to the patent office by the patentee. ). 104 See RTI Reply at 12 (citing Robinson v. Cannondale Corp., 81 Fed. App x 725, 728 (Fed. Cir. 2003) ( Because th[e] inquiry focuses on the claim language, . . . arguments regarding alleged admissions in the prosecution history . . . . are immaterial in evaluating whether the means-plus-function presumption is rebutted. )). -29- found that means-plus-function did not apply to a claim that used the word means because it recited sufficient structure to perform the function.105 In that case, the court did not need to examine the prosecution history because the claim language clearly recited the claimed structure.106 This does not mean that prosecution history is never relevant to the determination of whether means-plusfunction applies. To the contrary, under Federal Circuit law, it generally is.107 B. Disputed Constructions for Claim 1 of the 085 Patent 1. 105 a housing forming an enclosure and comprising See Robinson, 81 Fed. App x at 728. 106 See Middleton, Inc., 311 F.3d at 1387 ( [T]he most important indicator of the meaning of [a disputed claim term] is its usage and context in the claim itself. ). Moreover, in Robinson, the admissions in the prosecution history did not pertain to [the claim at issue] but to an entirely different claim. Robinson, 81 Fed. App x at 728. 107 See, e.g., Cole v. Kimberly Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) ( We decide on an element-by-element basis, based upon the patent and its prosecution history, whether Section 112, ¶6 applies. ) (emphasis added); Kreepy Krauly U.S.A., Inc. v. Sta-Right Indus., Inc., 152 F.3d 949, at *3 (Fed. Cir. 1998) (unpublished opinion) (concluding that [n]othing in [the claim at issue] or the prosecution history suggests that the claim language at issue was intended to be construed in means-plus-function form ); Greenberg v. Ethicon Endo Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (considering prosecution history to determine whether means-plus-function applies). -30- RTI argues that a housing forming an enclosure and comprising should be construed as one or more housings forming one or more enclosures. 108 Broadvox proposes a unitary physical structure that includes a first jack for connection to a first telephone and a second jack for connection to a network. 109 The difference between the proposed constructions is whether both the first and second jack means must be contained in a single housing. I begin with the intrinsic evidence. The plain language of the claim is consistent with the specification and prosecution history and indicates a single housing enclosing both the first and second jack means. The claim refers to [a] housing forming an enclosure and comprising first jack means for connection to said second jack means . . . 110 The patent s abstract states, [t]he device components are contained in the enclosure. 111 Figure 7 illustrates a single housing forming an enclosure connected to a first jack means and a second jack means.112 Finally, other parts of the specification use similar language, such as [a] housing forms an enclosure and has jacks mounted on the housing . . . [a] first jack 108 RTI s Opening Claim Construction Brief ( RTI Brief ) at 10. 109 Broadvox Brief at 15. 110 085 Patent col. 7 ll. 9-12. 111 Id. col. 1 ll. 63-64. 112 See id. Fig. 7. -31- interconnects to the phone side of the phone line and a second jack interconnects to the network side of the phone line. 113 Broadvox agrees with RTI, however, that the claimed device can have more than one housing forming an enclosure. 114 Therefore, I define a housing forming an enclosure to mean a unitary physical structure that includes a first jack for connection to a first telephone and a second jack for connection to a network. A claimed device may have more than one housing forming an enclosure, as defined above. 2. switch means operatively connected to said first jack means for disconnecting said first telephone from said network during routing of a telephone call from said first telephone The parties disagree on whether switch means is a means-plusfunction limitation governed by Section 112(f). In MediaCom I, Judge Young ruled that it is not, reasoning: Although the switch means element employs means of ___ing language, it is not a means-plus-function claim, because it describes the structure that supports the disconnecting function (i.e. a switch or switches). Not only is the structure named, but it is described as connected to an adjacent structure, the first jack. Because this element of claim 1 recites a definite structure, it is not a means-plus-function claim element.115 113 Id. col. 1 ll. 59-63. 114 Tr. at 44:19-21, 45:11-12. 115 MediaCom I, 4 F. Supp. 2d at 27 (internal citations omitted). -32- In construing switch means, Judge Young observed that [a]lthough the switch means claim element is not limited by the structure shown in the specification, the specification nevertheless informs construction of the terms in the claim. 116 He concluded that [n]o special definition appears in the specification to indicate that the words switch or disconnect are to be understood in any way other than their ordinary meanings. 117 At the Markman hearing, Broadvox conceded that the subsequent reexaminations did not change the claim language.118 Thus, I see no reason why MediaCom I should not control and therefore conclude that this phrase is not governed by the means-plus-function limitation of Section 112(b). I define the phrase as: switch operatively connected to said first jack for disconnecting said first telephone from said network during routing of a telephone call from said first telephone. 3. 116 Id. 117 disconnecting Id. 118 See Tr. at 61:10 (Pazuniak: There is no change in the language. ). In fact, the phrase during the routing of said first telephone was added during the reexamination. But this language relates to timing and is irrelevant to whether switch means connotes a sufficient structure to rebut the presumption that Section 112(f) applies. -33- Within the switch means phrase, the parties dispute the meaning of the word disconnecting. Again, the MediaCom decisions are instructive. In MediaCom II, Judge Young construed disconnecting to mean, the interruption the breaking or opening of the electrical circuit between the telephone jack and the network. 119 Broadvox urges this construction and RTI offers no good reason why I should not adopt it.120 Thus, I construe disconnecting as the interruption the breaking or opening of the electrical circuit between the telephone jack and the network. 4. & 5. means operatively connected to said switch means for generating a current through said switch means to the first telephone corresponding to a current provided by said network, when the first telephone is disconnected from said network to said switch means 121 The parties again disagree on whether the phrase is a means-plusfunction limitation.122 The court in MediaCom I answered as follows: 119 MediaCom II, 34 F. Supp. 2d at 81. 120 RTI argues that Judge Young s construction is not persuasive because he didn t address the particular question of infringement. Tr. at 62:24-25. But, like Judge Young, I am not addressing infringement during the claim construction stage. 121 Term 5 is means for generating a current. At the Markman hearing, the parties agreed to construe terms 4 and 5 together. See Tr. at 89:6-25, 90:1-2. 122 See Broadvox Brief at 23. -34- As a preliminary matter, this Court construes the generating means element of the claim as a means-plus-function element because it describes no particular structure for performing the function of generating a current corresponding to a current provided by the network.123 The court then looked to the specification to find a description of the structure that generates current.124 After examining the intrinsic evidence, the court concluded that claim 1 presents questions that are sufficiently complex and technical that the court would be remiss to impose its lay understanding on this patent claim without the benefit of expert guidance. 125 In MediaCom II, the court returned to the phrase. After considering the testimony of RTI s expert, Stephen Burns, the court construed the phrase as an intermediate element that conditions or regulates electrical power from a more distant source so that it corresponds to the current that would otherwise have been provided directly by the telephone network, and passes the current through the switch to power the telephone. 126 RTI argues that even if the term is a means-plus-function limitation, Walton opined that current source is the level of detail that the artisan would need 123 MediaCom I, 4 F. Supp. 2d at 28. 124 See id. 125 Id. at 29. 126 MediaCom II, 34 F. Supp. 2d at 82. -35- to know what performs the function. 127 But as I said at the Markman hearing, Walton may not add language to the claim.128 Moreover, Judge Young construed the term with the benefit of RTI s previous expert. I therefore adopt Judge Young s construction.129 I construe means operatively connected . . . switch means as an intermediate element that conditions or regulates electrical power from a more distant source so that it corresponds to the current that would otherwise have been provided directly by the telephone network, and passes the current through the switch to power the telephone. 6. means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone Once again, the parties debate whether this term is a means-plusfunction limitation. Because the term uses the word means, there is a presumption that Section 112(f) applies.130 To rebut the presumption, RTI contends that the artisan understands the terms detecting and storing as 127 Tr. at 85:1-3. 128 See id. at 83:25, 84:1-6. 129 As with switch means, the subsequent reexaminations do not change the analysis. Although the phrase when the first telephone is disconnected from said network by said switch means was added in the reexamination, it relates to timing, not structure. 130 See Flo Healthcare, 697 F.3d at 1373. -36- describing or defining a class of logic operations (i.e., structures) that detect and store. 131 RTI urges that the phrase be construed as logic operatively connected to a switch for detecting and storing a telephone number originating from the telephone. 132 RTI explains that logic refers to a software program. 133 As the Federal Circuit has held: [B]ecause general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to the corresponding structure, material, or acts that perform the function, as required by Section 112(f).134 Here, logic refers to no structure. Because RTI has engaged in pure functional claiming, Section 112(f) applies.135 The first step in construing a means-plus-function limitation is to determine the claimed function. 136 Because the parties urge no particular meaning of the words used to recite the function, the Court gives them their 131 RTI Brief at 14. 132 Id. 133 Tr. at 93:5-8. 134 Aristocrat, 521 F.3d at 1333. 135 Id. 136 Noah Sys, 675 F.3d at 131. -37- ordinary meaning.137 Thus, looking only at the language of the claim without narrowing its scope, I construe the function as detecting and storing said telephone number originating from the first telephone. Next, the court must identify the corresponding structure in the written description of the patent that performs the function. 138 Broadvox and RTI surprisingly cite to the same sections of the specification for the structure, column 4 lines 40-43, which states, [t]he dial tone detect circuit 86 connects to the line coming from the polarity guard 42 and connects to the line detector 40. The DTMF tone detector 88 detects the tones generated from the first phone. 139 Based on a reading of the full specification, the DTMF tone detector (88) detects and saves any digit it detects, other than the pound sign.140 Broadvox further notes that during the 085 Patent reexamination, RTI urged that the phrase be construed as a means-plus-function element and identified the structure as Ref No. 88, Col. 4, lines 40-43, Fig. 2. 141 Based on the 137 See, e.g., Versa Corp. v. Ag-Bag Intern. Ltd., 66 Fed. App x 853, 855 (Fed. Cir. 2003). 138 Noah Sys., 675 F.3d at 1311 (internal citation omitted). 139 Broadvox Brief at 25; RTI Brief at 15. 140 See 085 Patent col. 5 ll. 64-67. 141 See Broadvox Brief at 25 (citing 085 Patent Reexamination Proceeding at 265, 267, 269). See also Cybor Corp. v. FAS Techs., Inc., 138 F.3d -38- specification and prosecution history, I define the function as detecting and storing said telephone number originating from the first telephone. I construe the corresponding structure as described in column 4 lines 40-43 and as displayed in Figure 2. The dial tone detect circuit (86) connects to the line coming from the polarity guard (42) and connects to the line detector (40). The DTMF tone detector (88) detects and saves tones generated from the first phone. 7. means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path The term means gives rise to a presumption that Section 112(f) applies.142 Despite the presumption, RTI argues that the artisan understands the term database as connoting sufficient structure.143 As such, RTI s proposed construction for the term is logic for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path. 144 However, [i]t is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what 1448, 1457 (Fed. Cir. 1998) (en banc) ( Prosecution history is relevant to the construction of a claim written in means-plus-function form. ). 142 See Flo Healthcare, 697 F.3d at 1373. 143 See RTI Brief at 15. 144 Id. -39- structures to use to accomplish the claimed function. 145 Because the claim language itself provides no structure, Section 112(f) applies. First, because the parties urge no particular meaning of the words that recite the function, the Court gives them their ordinary meaning. Thus, the claimed function is addressing a database that identifies a plurality of communication switch paths to said second telephone and the cost rate of each path. Second, the corresponding structure is the algorithm disclosed in the specification column 6 lines 7-47 and Figure 5.146 In the reexamination, RTI identified the structure as Ref. No. 50, Col. 6 lines 2-30, Fig. 5. 147 However, column 6 lines 7-47 recites the entire structure required to perform the function. Based on the specification and prosecution history, I construe the phrase to perform the function of addressing a database that identifies a plurality of communication switch paths to said second telephone and the cost rate of each path. The corresponding structure is the algorithm disclosed in the specification at column 6 lines 7-47 and Figure 5. 8. means actuated subsequent to the detection of said telephone number originating from said first telephone for 145 Aristocrat, 521 F.3d at 1337. 146 See 085 Patent col. 6 ll. 7-47, Fig. 5. 147 085 Patent Reexamination Proceeding at 265-267, 270. -40- comparing the cost rate of each path so as to determine a least cost route As with phrases 6 and 7, this phrase uses the word means. By arguing that a skilled artisan understands the phrase . . . to mean comparing logic actuated subsequent to the detection of said telephone number originating from a first telephone for comparing the cost rate of each path so as to determine a least cost route, RTI again fails to rebut the presumption that Section 112(f) applies.148 Comparing logic appears nowhere in the claim language. Thus, means actuated is a means-plus-function limitation. The parties also disagree on the structure. RTI argues that even if Section 112(f) applies a person having ordinary skill in the art understands that comparing logic provides sufficient structure for comparing the cost rate of each path. 149 Broadvox contends that the specification fails to describe a corresponding function, rendering the claim indefinite.150 Here, based on the specification and prosecution history, I find that the structure is enclosed in the microprocessing unit ( MPU ) 50, which includes a conventional address 60, control 62, and data buses 64, and an input output bus 148 RTI Brief at 16. 149 Id. 150 See Broadvox Brief at 27. -41- 66.151 I thus construe the function as comparing the cost rate of each path so as to determine a least cost route. The corresponding structure is enclosed in the MPU 50 and described in column 2 lines 10-11, column 4 lines 1-16, column 6 lines 2225, and Figures 2 and 5.152 9. means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone The word means gives rise to a presumption that Section 112(f) applies. RTI once again attempts to rebut the presumption by replacing means with logic and arguing that an artisan would be able to identify structure.153 However, Federal Circuit law is clear that [a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. 154 151 See 085 Patent col. 4 ll. 1-15. 152 This is the structure RTI urged during the reexamination. See 085 Patent Reexamination Proceeding at 265-266. 153 See RTI Brief at 17. 154 Saffran v. Johnson & Johnson, 712 F.3d 549, 563 (Fed. Cir. 2013) (internal citations omitted). -42- Given that means-plus-function applies, the parties disagree on the proposed structure. Citing to the specification and prosecution history, Broadvox argues that the structure is the combination of a tone generator with a crystal oscillator (which generates the number sequence), and an analog switch (so that call is routed through said second jack means to the selected communication path . . . ).155 Broadvox cites column 2 lines 11-18, column 4 lines 34-39, and Figure 2 for support.156 RTI contends that Broadvox s proposed construction violates the doctrine of claim differentiation by limiting claim 1 to the structure of dependent claim 5.157 Claim 5 states the device according to claim 1 wherein said means for generating said number sequence comprises a dual tone multifrequency generator. 158 RTI also objects that Broadvox improperly imports terms from the preferred embodiment by citing to column 4 lines 34-39 and Figure 2.159 RTI s objections are meritless. Where a claim term and a dependent 155 1/2/14 Letter of George Pazuniak to the Court ( 1/2/14 Pazuniak Ltr. ) at 1. 156 See id. at 1-2. 157 1/7/14 Letter of Milton Springut to the Court ( 1/7/14 Springut Ltr. ) 158 085 Patent col. 7 ll. 49-51. 159 1/7/14 Springut Ltr. to the Court at 2. at 1. -43- claim term concern the same function and a structure for performing that function is disclosed, a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification. 160 Additionally, Section 112(f) requires a court to import the corresponding structure, material, or acts described in the specification. 161 I therefore construe the claimed functions as generating a number sequence corresponding to a desired carrier for routing call to establish a switched connection between said first telephone and said second telephone. I construe the corresponding structure as described in column 2 lines 11-18, column 4 lines 3439, and Figure 2. C. Disputed Constructions for Claim 1 of the 769 Patent 1. at a predetermined time and date RTI argues that an artisan would construe the phrase as at a predetermined date and time. 162 Broadvox responds that this Court should follow Judge Young s construction in MediaCom I.163 Judge Young defined the phrase as 160 Saffran, 712 F. 3d at 563. 161 35 U.S.C. § 112(f). 162 RTI Brief at 18. 163 See Broadvox Brief at 31. -44- a time and date for calling the rate provider are selected a substantial period in advance of the call. 164 Moreover, during the 769 Patent reexamination, RTI limited the meaning of predetermined date and time to overcome prior art, stating: It is also noted that [the prior art] fails to meet the claim language because it does not teach that the call rating device connects to the rate provider at a predetermined time and date. [The prior art] teaches . . . only that the internal clock triggers the processor at given time intervals. Programming the system to update at selected time intervals (e.g. once a week) is not the same as programming it to update at a particular date and time (e.g. May 4, 2001 at 8:45 a.m.).165 As Judge Young stated, [t]he words [at a predetermined date and time] used in the claim are simple English . . . . On its face, the language signifies that a particular time and date must be selected substantially in advance of the connection. 166 In light of the prosecution history and construction, I mostly agree with Judge Young s construction. However, I disagree that at a predetermined date and time by its plain terms requires that the date and time be selected substantially in advance.167 Nothing in the prosecution history or specification suggests that the 164 MediaCom I, 4 F. Supp. 2d at 32. 165 769 Patent Reexamination Proceeding at 406. 166 MediaCom I, 4 F. Supp. 2d at 31. 167 As I stated in the Markman hearing, Why wouldn t [predetermined date and time] just be selected a period in advance of the call ? What is -45- word substantially is required.168 I therefore construe at a predetermined date and time as a time and date for calling the rate provider selected a period in advance of the call. 2. call rating device Although the patent does not use the word means, Broadvox argues that Section 112(f) applies because the Federal Circuit has recognized that generic terms mechanism, means, element, and device, typically do not connote sufficiently definite structure. 169 Broadvox proposes that the phrase be construed as an identifiable physical component having the function of receiving rate information from a rate provider over a data transfer line, incorporating the rate information and thereafter managing calls over the least cost routing route. 170 For structure, Broadvox pieces together various lines from the specification.171 The phrase at issue is not a means-plus-function limitation under Section 112(f). First, the phrase does not contain the word means. The Federal substantial? [S]ubstantial is not a very definite term. Tr. at 121:2-4. 168 Broadvox agreed that substantially was not required. See Tr. at 121:17-19 (Pazuniak: In other words, it is a planned, selected time and date. ). 169 Massachusetts Inst. of Tech. and Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006). 170 Broadvox Brief at 33. 171 See 1/2/14 Pazuniak Ltr. to the Court at 2. -46- Circuit will not apply Section 112(f) if the limitation contains a term that is used in common parlance or by persons of skill in the pertinent art to designate structure. 172 Call rating device presumptively connotes a sufficient structure to those skilled in the art.173 Walton explains that such devices were known.174 Furthermore, the specification explains that the invention in the earlier filed 085 Patent is a call rating device, also known as a least cost routing device.175 As Broadvox notes, during the 085 Patent reexamination, RTI distinguished its invention from prior art that included more primitive least cost routing devices.176 Finally, although he did not construe the phrase, Judge Young noted that call rating device is a known generic term for Least Cost Routing Device. 177 Thus, the specification and common parlance impart sufficient structure such that Section 112(f) does not apply. At the Markman hearing, Broadvox argued that call rating device is a vague term because it is not clear 172 Flo Healthcare, 697 F.3d at 1374. 173 See Inventio, 649 F.3d at 1359. 174 See Declaration of Bradley Walton ¶ 43. 175 See 769 Patent col. 1 ll. 25-32; col. 2 ll. 53-64. 176 Broadvox Brief at 28-29 (citing 085 Patent Reexamination Proceeding at 291, 305-306). 177 Mediacom I, 4 F. Supp. 2d at 29. -47- what is being rated, but RTI clarified that the rating is based on cost. 178 For clarity, I construe call rating device as used in the patents-at-issue as least cost routing device. 3. transmitting over the data transfer line Broadvox urges that the term be construed as conveying information over the same wire operatively connected to a call rating device on one end and a phone network on the other. 179 RTI urges the Court to construe the phrase as transmitting over the data transfer line. 180 RTI argues that Broadvox improperly limits the term to mean a single data transfer line even in the face of Federal Circuit law that definite articles such as a, an, or the mean one or more. 181 Broadvox responds that RTI s proposed construction will mislead the jury into thinking that information is communicated via a data transfer line different from the earlier defined line.182 Thus, the debate is whether data transfer line refers to the same data transfer line mentioned earlier in Claim 1. 178 Tr. at 127:2. 179 Broadvox Brief at 33. 180 RTI Brief at 20; RTI Reply at 27-28. 181 RTI Reply at 38 (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc. 512 F.3d 1338, 1342-343 (Fed. Cir. 2008)). 182 See Broadvox Brief at 34. -48- Claim 1 states the following limitations: [i] connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations; [ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters . . .183 Although RTI is correct that the antecedent phrase, a data transfer line is broad enough to cover multiple lines, each use of the phrase the data transfer line still refers to the antecedent phrase.184 The phrase data transfer line connects the call rating device to a rate provider. I therefore adopt Broadvox s construction with the modification that more than one wire may connect the call rating device to the phone network.185 I construe the phrase as transmitting information over the same wire or wires operatively connected to a call rating device on one end and a phone network on the other. 4. 183 verifying if billing rate parameters should be updated 769 Patent col. 6 ll. 38-45 (emphasis added). 184 See Creative Internet Adver. Corp. v. Yahoo!, Inc., 476 Fed. App x 724, 728 (Fed. Cir. 2011); Baldwin, 512 F.3d at 1342 ( The subsequent use of definite articles the or said in a claim to refer back to the same claim term does not change the general plural rule [of a ], but simply reinvokes that non-singular meaning. ). 185 At the Markman hearing, Broadvox agreed to use the word transmitting rather than conveying. -49- Broadvox urges the Court to construe the claim as the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters should be updated. 186 RTI contends that the term should be construed as is: verifying if billing rate parameters should be updated. 187 The issue is whether the Court must identify the actor doing the verifying. RTI suggests that the Court follow Judge Young s analysis of a similar term.188 In construing connecting at a predetermined data and time in Mediacom I, Judge Young concluded that [t]he language does not require that the person responsible for the selection be identified in order to give meaning to the claim. 189 RTI argues that the same is true for the verifying step.190 I disagree. As I stated at the Markman hearing, verifying is an act that requires an actor, while connecting may not be.191 If the actor cannot be 186 Claim Terms Chart at 7. 187 Id. 188 See MediaCom I, 4 F. Supp. 2d at 31. 189 Id. 190 See RTI Brief at 39. 191 See Tr. at 138:19-25, 139:1-3 (Court: [V]erifying is an act . . . . [C]onnecting at a predetermined time and place . . . [is] not an act of doing something. ). -50- identified, the claim fails for indefiniteness.192 However, when read in the context of claim 1,there is no doubt that the rate provider does the verifying. Claim 1 recites: A method for updating a database . . . comprising the steps of: [i] connecting at a predetermined time and date via a data transfer line the call rating device to a rate provider having billing rate parameters for a plurality of calling stations; [ii] transmitting over the data transfer line indicia identifying the call rating device and the date and time of the last update of the billing rate parameters; [iii] verifying if billing parameters should be updated; and [iv] transmitting from the rate provider to the call rating device the updated billing rate parameters when the rate provider determines that an update is required.193 Thus, the call rating device sends information including information on the last update to the rate provider. The rate provider verifies if billing parameters should be updated. If the rate provider determines that an update is required, it transmits updated billing rate parameters to the call rating device. I therefore adopt Broadvox s construction. I construe verifying if billing parameters should be 192 See id. at 140:15-19 (Court: [I]f you want the claim to fail for indefiniteness, that s fine. But it has to explain how to practice this patent. I am worried that without knowing who s verifying, there isn t something being claimed here. ). 193 769 Patent col. 6 ll. 35-49 (emphasis added). -51- updated as the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters should be updated. 5. transmitting from the rate provider to the call rating device Similarly, Broadvox suggests that the term be construed as the rate provider, based on the information received from the call rating device, transmits the billing rate parameters to the call rating device. 194 RTI contends that the term be construed as is: transmitting from the rate provider to the call rating device. 195 The parties disagree on whether to include the phrase based on the information received from the call rating device. Broadvox argues that the phrase derives from the second limitation of claim 1: transmitting . . . indicia identifying the call rating device and the date and time of the last update of the billing rate parameters. 196 If the rate provider determines that an update is required based on this indicia, it transmits the updated billing parameters to the call rating device. Broadvox also cites to column 5 lines 55-59 of the specification, stating: 194 Claim Terms Chart at 8. 195 Id. 196 1/2/14 Pazuniak Ltr. to the Court at 2 (citing 769 Patent col. 6 ll. 42- 45). -52- As shown in Fig. 7, the rate provider receives the update request from the call rating device (block 160). It receives 1) the calling station s phone number; 2) the date and time of the last update; and 3) the current date and time (block 162) . . . If a newer rate table is available, (block 173), then an update flag is initiated by the processing unit of the rate provider (block 174) and the update is sent . . .197 RTI responds that Broadvox s added language breeds confusion and redundancy, 198 but, based on the claim language and the specification, I disagree. I construe transmitting from the rate provider to the call rating device as the rate provider, based on the information received from the call rating device, transmits the billing rate parameters to the call rating device. V. CONCLUSION For the aforementioned reasons, I construe the disputed terms as follows: Table 3 085 Patent, Claim 1 Term/Phrase 1. a housing forming an enclosure and comprising Construction a unitary physical structure that includes a first jack for connection to a first telephone and a second jack for connection to a network. A claimed device may have more than one housing forming an enclosure, as defined above. 197 Id. (citing 769 Patent col. 5 ll. 55-59; col. 6 ll. 2-4). 198 1/7/14 Springut Ltr. to the Court at 3. -53- 085 Patent, Claim 1 Term/Phrase Construction 2. switch means operatively connected to said first jack means for disconnecting (as defined below) said first telephone from said network during routing of a telephone call from said first telephone switch operatively connected to said first jack for disconnecting said first telephone from said network during routing of a telephone call from said first telephone. 3. disconnecting the interruption the breaking or opening of the electrical circuit between the telephone jack and the network. an intermediate element that conditions or regulates electrical power from a more distant source so that it corresponds to the current that would otherwise have been provided directly by the telephone network, and passes the current through the switch to power the telephone. 4 & 5. means operatively connected to said switch means for generating a current through said switch means to the first telephone corresponding to a current provided by said network, when the first telephone is disconnected from said network to said switch means 6. means operatively connected to said switch means for detecting and storing said telephone number originating from the first telephone This is a means-plus-function element, whose construction is governed by 35 U.S.C. § 112(f). Function: detecting and storing said telephone number originating from the first telephone. Structure: col. 4 ll. 40-43 and Fig. 2. The dial tone detect circuit (86) connects to the line coming from the polarity guard (42) and connects to the line detector (40). The DTMF tone detector (88) detects and saves tones generated from the first phone. -54- 085 Patent, Claim 1 Term/Phrase 7. means for addressing said database means for identifying a plurality of communication switch paths to said second telephone and the cost rate of each path Construction This is a means-plus-function element, whose construction is governed by 35 U.S.C. § 112(f). Function: addressing a database that identifies a plurality of communication switch paths to said second telephone and the cost rate of each path. Structure: the algorithm disclosed in the specification at col. 6 ll. 7-47 and Fig. 5. 8. means actuated subsequent to the detection of said telephone number originating from said first telephone for comparing the cost rate of each path so as to determine a least cost route This is a means-plus-function element, whose construction is governed by 35 U.S.C. § 112(f). 9. means operatively connected to said switch means and said second jack means for generating a number sequence corresponding to a desired carrier so that said call is routed through said second jack means to the selected communication path and carrier to establish a switched connection between said first telephone and said second telephone This is a means-plus-function element, whose construction is governed by 35 U.S.C. § 112(f). Function: comparing the cost rate of each path so as to determine a least cost route. Structure: Ref. No. 50; col. 2 ll. 10-11; col. 4 ll. 1-16; col. 6 ll. 22-25; Figs. 2, 5. Function: generating a number sequence corresponding to a desired carrier for routing call to establish a switched connection between said first telephone and said second telephone. Structure: col. 2 ll. 11-18; col. 4 ll. 34-39 and Fig. 2. -55- , '. '. .......... . '169 Patebt, Claim 1 , TermlPhras~ . '.V.'· .... ., ' .. ,.' :. .',. ,..... COllstructi(jn ' ," 1. "at a predetermined time and date" "a time and date for calling the rate provider selected a period in advance of the call." 2. "call rating device" "least cost routing device." 3. "transmitting over the data transfer line" "transmitting information over the same wire or wires operatively connected to a call rating device on one end and a phone network on the other." 4. "verifying if billing rate parameters should be updated" "the rate provider, based on the information received from the call rating device, verifies if the billing rate parameters should be updated." 5. "transmitting from the rate provider to the call rating device" "the rate provider, based on the information received from the call rating device, transmits the billing rate parameters to the call rating device." SO ORDERED: Dated: New York, New York January 28, 2014 -56­ - Appearances For RTI: For Broadvox: Milton Springut, Esq. Tal S. Benschar, Esq. Springut Law PC 75 Rockefeller Plaza New York, NY 10019 (212) 813-1600 Keith D. Nowack, Esq. Andriy Roman Pazuniak, Esq. Carter Ledyard & Milburn LLP 2 Wall Street New York, NY 10005 (212) 732-3232 Scott Spencer, Esq. Scott Spencer Law 75 Rockefeller Plaza New York, NY 10019 (646) 535-4336 George Pazuniak, Esq. Pazuniak Law Office LLC 216 Sorrel Drive Wilmington, DE 19803 (302) 478-4230 Alexander Gertsburg, Esq. Law Office of Alexander Gertsburg 8210 Macedonia Commons Blvd., Suite 68 - Pmb 151 Macedonia, OH (216) 373-4811 -57-