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Nobelbiz, Inc. v. Global Connect, LLC

United States District Court, Fifth Circuit

December 13, 2013




This claim construction order construes the disputed claim terms of U.S. Patent No. 8, 135, 122. On October 9, 2013, the Court held a claim construction hearing to construe the disputed terms. For the following reasons, the Court adopts the constructions set forth below. A summary of the final constructions is included with this Order as Attachment A.


This is a patent infringement suit. NobelBiz alleges infringement of U.S. Patent No. 8, 135, 122 (the '122 Patent) by Defendants Global Connect and TCN. The '122 Patent, entitled "System and Method for Modifying Communication Information (MCI), " was filed on November 11, 2011, and issued on March 13, 2012.[1]

In general, the '122 Patent relates to a system, computer, and computer-implemented method to modify a communication from a call originator, such as a call center, to a call target "to provide a call back number or other contact information to the Target that may be closer to or local to the Target, in order to reduce or eliminate the payment of long distance toll charges in the event the Target dials the callback number." The '122 Patent at 1:43-49.


Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). When the parties dispute the scope of a claim term, "it is the court's duty to resolve it." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

The claims of a patent define the scope of the invention. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). They provide the "metes and bounds" of the patentee's right to exclude. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Accordingly, claim construction begins with and "remain[s] centered on the claim language itself." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004).

Claim terms are normally given their "ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Generally, "the 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." Id. at 1313.

The best guide for defining a disputed term is a patent's intrinsic evidence. Teleflex, 299 F.3d at 1325. Intrinsic evidence includes the patent's specification and the prosecution history. Id.

The claims are part of the specification. Markman, 52 F.3d at 979. The context in which a term is used in the claims instructs the term's construction. Phillips, 415 F.3d at 1314; see also Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997) ("[T]he language of the claim frames and ultimately resolves all issues of claim interpretation."). "Differences among claims can also be a useful guide in understanding the meaning of particular claim terms." Phillips, 415 F.3d at 1314.

In addition to the claims, the specification's written description is an important consideration during the claim construction process. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The written description provides further context for claim terms and may reflect a patentee's intent to limit the scope of the claims. Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000). "[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.'" Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582).

The specification may also resolve ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, Inc., 299 F.3d at 1325. For example, "[a] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.'" Globetrotter Software, Inc. v. Elam Computer Grp., Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583).

But care must be taken to avoid unnecessarily reading limitations from the specification into the claims. Teleflex, 299 F.3d at 1326; see also Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983) ("That claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims."). "[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect." Innova/Pure Water, 381 F.3d at 1117; see also Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.").

The prosecution history is also part of the intrinsic evidence. Phillips, 415 F.3d at 1317. It "consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent." Id. "As in the case of the specification, a patent applicant may define a term in prosecuting a patent." Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Statements made during the prosecution of the patent may limit the scope of the claims. Teleflex, 299 F.3d at 1326; see Omega Eng'g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (explaining that the doctrine of prosecution disclaimer "preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution").

Finally, the Court may rely on extrinsic evidence to aid with understanding the meaning of claim terms. Markman, 52 F.3d at 981. Extrinsic evidence includes "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Id. at 980. Extrinsic evidence is generally less useful or reliable, Phillips, 415 F.3d at 1317, and it should not be relied on when it contradicts the intrinsic evidence. Markman, 52 F.3d at 981.


A. Person of Ordinary Skill in the Art

NobelBiz and Defendants agree that the hypothetical person of ordinary skill in the art would have a bachelor's degree plus two years of experience in the field of telecommunication. NobelBiz adds one more requirement, which is that the person of ordinary skill in the art have familiarity with call center telephone operations. NobelBiz states that "[t]his difference is not dispositive, given the proper application of claim construction canons" (Doc. No. 94 at 1).

This Court adopts the agreed definition.


The disputed terms appear in claims 1, 6, 8, 11, 12, 16, 18, 20, and 21. At the beginning of the claim construction hearing on October 9, 2013, the Court provided the parties with the Court's preliminary proposed construction for the disputed terms. The Court provided these preliminary proposed constructions to facilitate discussion and to focus the parties' arguments. After conferring on the Court's proposed constructions, the parties reached agreement on one term, "trigger, " as explained below.

A. "processing an outbound call" and "processing a call originated"

Claim Term, Plaintiff's Proposed Defendants' Proposed Phrase, or Clause Construction Construction "processing an outbound call No construction needed. Performing one or more steps

from a call originator to a call on a telephone call after the target" telephone call has been "processing a call originated by originated and sent to the call a call originator to a call target" recipient.

1. The Parties' Positions

These disputed clauses appear in the preamble of claims 1, 6, and 16. NobelBiz submits that the preambles are not limiting at least because deletion of disputed phrases from the preambles would not affect the structural or functional elements in the body of the claims (Doc. No. 88 at 14). NobelBiz argues that the preambles merely give descriptive names to the set of claim elements in the body of the claim and describe the purpose of the system and computer (Doc. No. 94 at 2).

Defendants urge the Court to adopt the preambles as limiting, particularly so that the term "outbound call" in the preamble of claim 1 and the term "call originated" in the preambles of claims 6 and 16 become limitations (Doc. No. 89 at 4). Defendants argue that all five of the factors outlined by the Federal Circuit for rendering a preamble limiting are met here. The factors are: (a) the terms in the preamble are relied on for antecedent basis to the same terms in the body of the claim; (b) the preamble is necessary to give life, meaning and vitality to the claim; (c) the terms of the preamble are essential to understand terms in the body of the claim; (d) the preamble recites structure or steps that are essential or underscored as important by the specification; and (e) the preamble is used by the claim drafter to define the subject matter of the claimed invention. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002); The C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012).

As to factor (a), Defendants argue that the terms "call originator" and "call target" are introduced by "a" in the preamble, and referred to as "the..." in the claim body (Doc. No. 89 at 5). For factor (b), they argue that the limitations of "modify[ing]" in the body of the claim only make sense in the context of the preamble of claim if the term "outbound" is a limitation (Doc. No. 89 at 5). Regarding factors (c) and (d), Defendants argue that the preambles are essential and underscored as important throughout the specification (Doc. No. 89 at 6). The central point of the '122 Patent is to modify the caller ID of a captured outbound call. The term "outbound" is found in the preamble of claim 1, in the abstract, and in the specification (2:25-55 and 3:21, 39; and 4:21). The term "originated" is found in the preambles of claims 6 and 16, and in the specification at 1:19, 33 and 2:46. Finally, as to factor (e), Defendants argue that the amendments made to the claims by the patent examiner after a telephone interview with the applicant and applicant's attorney show that the preambles were relied on as limiting by the examiner (Doc. No. 89-2 at 5-6).

NobelBiz counters that dependence upon a preamble term for antecedent basis " may limit claim scope" but it is not dispositive (Doc. No. 94 at 3, emphasis original). NobelBiz argues that it did not rely on the preambles to distinguish over any prior art during the prosecution (Doc. No. 88 at 14). It asserts that the patent examiner did not specifically state that any preamble was limiting but merely noted that the prior art failed to teach or render obvious "a system for processing an outbound call from a call originator to a call target comprising the claimed means and their components, relationships, and functionalities as specifically recited in the claims" (Doc. No. 89-2 at 5-6). NobelBiz contends that this makes it clear that the examiner did not consider the preamble to be in the "claims" (Doc. No. 94 at 4).

NobelBiz notes that the particular terms said to be important by Defendants, namely "outbound" and "originated, " are not referenced in the body of the claims (Doc. No. 94 at 3). It further argues that the body of the claims "breathe life" into the claims through terms such as storing, processing, and transmitting without the aid of any preamble limitations. Assuming, arguendo, that the preamble is limiting, NobelBiz argues that Defendants improperly seek to read a temporal sequence of steps into the preamble, namely "after the telephone call has been originated and sent to the call recipient." NobelBiz contends that the patent specification describes the process flow of the invention without any contemplation of a temporal sequence of steps (Doc. No. 94 at 4).

2. Analysis

The "dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention." Catalina Mktg. Int'l, Inc. v., Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). The preamble should be deemed limiting "when the claim drafter chooses to use both the preamble and the body to define the subject matter of the ...

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