United States District Court, W.D. Texas, Austin Division
MEMORANDUM OPINION AND ORDER REGARDING CLAIMS
EAKEL UNITED STATES DISTRICT JUDGE
the court in the above-styled and numbered cause are
Plaintiff Meetrix IP, LLC's ("Meetrix") Opening
Claim Construction Brief filed August 16, 2017 (Doc. #59);
Defendants' Opening Claim Construction Brief filed August
17, 2017 (Doc. #60); Plaintiff Meetrix's Reply Claim
Construction Brief filed September 11, 2017 (Doc. #61);
Defendants' Responsive Claim Construction Brief filed
September 11, 2017 (Doc. #62); the parties' Amended Joint
Claim Construction Statement filed September 21, 2017 (Doc.
#63); and the parties' claim-construction presentations.
court held a claim-construction hearing on September 25,
2017. See Markman v. Westview'Instruments, Inc.,
52 F.3d 967, 976 (Fed. Cir. 1995) (enbanc),
aff'd, 517 U.S. 370 (1996). After considering
the patents and their pro secution history, the parties'
claim-construction briefs, the applicable law regarding claim
construction, and argument of counsel, the court now renders
its order with regard to claim construction.
court renders this memorandum opinion and order to construe
the claims of United States Patent Nos. 9, 094, 525
("the '525 Patent"), entitled "Audio-Video
Multi-Participant Conference Systems Using PSTN and Internet
Networks"; 9, 253, 332 ("the '332
patent"), entitled "Voice Conference Call using
PSTN and Internet Networks"; and 8, 339, 997 ("the
'997 Patent"), entitled "Media Based
Collaboration Using Mixed-Mode PSTN and Internet
Networks" (collectively "the Asserted
Patents"). Meetrix is the owner of the Asserted Patents,
which relate to the field of video-conferencing software. The
software facilitates conferencing over virtual private
networks (VPNs) and the public-switched telephone network
(PSTN). The asserted claims relate generally to adding a
telephone participant to a multi-participant video conference
and mixing audio and video data received from various
video-conference participants and transmitting the mixed data
to other video-conference participants. Meetrix alleges that
Defendants' infringing products and services include
Defendant Citrix's GoToMeeting, Defendant LogMeIn's
Join.me, and all other substantially similar products and
services that provide video conferencing.
Legal Principles of Claim Construction
infringement is a two-step process. See Markman v.
Westview Instruments, Inc., 517 U.S. 370, 384 (1996)
("[There are] two elements of a simple patent case,
construing the patent and detennining whether infringement
occurred ...."). First, the meaning and scope of the
relevant claims must be ascertained. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en
banc). Second, the properly construed claims must be compared
to the accused device. Id. Step one, claim
construction, is the current issue before the court.
court construes patent claims without the aid of a jury.
See Id. at 977-79. The "words of a claim
'are generally given their ordinary and customary
meaning.'" Phillips v. A WH Corp. , 415
F.3d 1303, 1312 (Fed. Cir. 2005) (enbanc) (quoting
Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). "[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." Id. at 1313. The
person of ordinary skill in the art is deemed to have read
the claim term in the context of the entire patent.
Id. Therefore, to ascertain the meaning of a claim,
a court must look to the claim, the specification, and the
patent's prosecution history. Id. at 1314-17;
Markman, 52 F.3d at 979.
Federal Circuit has reaffirmed that a departure from the
ordinary and customary meaning is the exception, not the
rule. See Thorner v. Sony Computer Entm 't Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). There
"are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full
scope of a claim term either in the specification or during
prosecution." Id.; see also Augme Techs., Inc. v.
Yahoo! Inc., 755 F.3d 1326, 1339 (Fed. Cir. 2014)
("Neither the specification nor the prosecution history
includes any lexicography or disavowal that would justify a
departure from the plain meaning."). "To act as its
own lexicographer, a patentee must 'clearly set forth a
definition of the disputed claim term, ' and 'clearly
express an intent to define the term.'" GE
Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014). "It is not enough for a
patentee to simply disclose a single embodiment or use a word
in the same manner in all embodiments, the patentee must
'clearly express an intent' to redefine the
term." Thorner, 669 F.3d at 1365.
language guides the court's construction of a claim term.
Phillips, 415 F.3d at 1314. "[T]he context in
which a term is used in the asserted claim can be highly
instructive." Id. Other claims, asserted and
unasserted, can provide additional instruction because
"terms are normally used consistently throughout the
patent." Id. Differences among claims, such as
additional limitations in dependent claims, can provide
further guidance. Id. at 1314-15.
must also be read "in view of the specification, of
which they are a part." Markman, 52 F.3d at
979. The specification "is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed
term." Teleflex. Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations
omitted). In the specification, a patentee may define a term
to have a meaning that differs from the meaning that the term
would otherwise possess. Phillips, 415 F.3d at 1316.
In such a case, the patentee's lexicography governs.
Id. The specification may also reveal a
patentee's intent to disclaim or disavow claim scope.
Id. Such intention is dispositive of claim
construction. Id. Although the specification may
indicate that a certain embodiment is preferred, a particular
embodiment appearing in the specification will not be read
into the claim when the claim language is broader than the
embodiment. Electro Med. Sys., S.A. v. Cooper Life Scis.,
Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
prosecution history is another tool to supply the proper
context for claim construction because it demonstrates how
the inventor understood the invention. Phillips, 415
F.3d at 1317. A patentee may also serve as his own
lexicographer and define a disputed term in prosecuting a
patent. Home Diagnostics Inc. v. LifeScan, Inc., 381
F.3d 1352, 1356 (Fed. Cir. 2004). Similarly, distinguishing
the claimed invention over the prior art during prosecution
indicates what a claim does not cover. Spectrum Int'l
v. SteriliteCorp., 164F.3d 1372, 1378-79 (Fed. Cir.
1988). The doctrine of prosecution disclaimer precludes a
patentee from recapturing a specific meaning that was
previously disclaimed during prosecution. Omega Eng'g
Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
2003). A disclaimer of claim scope must be clear and
unambiguous. Middleton Inc. v. 3M Co., 311 F.3d
1384, 1388 (Fed. Cir. 2002).
"less significant than the intrinsic record in
determining the legally operative meaning of claim language,
" the court may rely on extrinsic evidence to "shed
useful light on the relevant art." Phillips,
415 F.3d at 1317 (internal quotations omitted). Technical
dictionaries and treatises may help the court understand the
underlying technology and the manner in which one skilled in
the art might use a claim term, but such sources may also
provide overly broad definitions or may not be indicative of
how a term is used in the patent. See /c/. at 1318,
1321. Similarly, expert testimony may aid the court in
determining the particular meaning of a term in the pertinent
field, but "conclusory, unsupported assertions by
experts as to the definition of a claim term are not
useful." Id. at 1318. Generally, extrinsic
evidence is "less reliable than the patent and its
prosecution history in determining how to read claim
terms." Id. Extrinsic evidence may be useful
when considered in the context of the intrinsic evidence,
id. at 1319, but it cannot "alter a claim
construction dictated by a proper analysis of the intrinsic
evidence, " On-Line Techs., Inc. v. Bodenseewerk
Perkin-Elmer GmbH, 386 F.3d 1133, 1139 (Fed. Cir. 2004).
parties dispute whether claims 11-14 of the '997 patent
are invalid as indefinite. A claim is indefinite if it does
not reasonably inform a person of ordinary skill in the art
of the claim scope. IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). A claim
reciting both an apparatus and a method for using that
apparatus is indefinite because it is unclear when
infringement occurs. Id. at 1384. However,
"apparatus claims are not necessarily indefinite for
using functional language." Microprocessor
Enhancement Corp. v. Texas Instruments Inc., 520 F.3d
1367, 1375 (Fed. Cir. 2008). A claim that is clearly limited
to an apparatus "possessing the recited structure and
capable of performing the recited functions" is
not indefinite. UltimatePointer, LLC v. Nintendo Co.,
Ltd., 816 F.3d 816, 826 (Fed. Cir. 2016) (quoting
Microprocessor, 520 F.3d at 1375). By contrast,
limitations that reflect "activities of the user"
rather than "capability of the structure" are
likely indefinite. See Id. at 827; IPXL
Holdings, 430 F.3d at 1384 (finding a system claim
indefinite because it was unclear whether infringement
required user action); In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed.
Cir. 2011) (finding system claims indefinite based on claim
language directed to user actions, "wherein... callers
digitally enter data.").
parties agree to the construction of one claim term. The
court adopts the agreed construction of this claim term, as
used in claims 1, 4, and 12 of the '997 patent, as listed
in the table below.
Adopted Agreed Construction
server for managing a conference
parties dispute the construction of 9 terms. Each disputed
term is discussed separately.
parties' proposed constructions of this term, as used in
claims 1, 3, 5, 11 and 13 of the '997 Patent, are listed
in the following table:
Plaintiffs Proposed Construction
Devices that provide information destined to
multiple locations via a single transmission
Devices that use a group address to send
information to multiple locations via a single
parties disagree as to whether multicast appliances use a
"group address" to transmit information to multiple
locations via a single transmission.
argues that Defendants' inclusion of a "group
address" is unnecessary to send information to multiple
destinations. To support its construction, Meetrix claims
that the plain and ordinary meaning of the claims does not
require that the multicast appliances use a group address to
transmit. Meetrix also asserts that claim differentiation
precludes inclusion of the group address in the definition of
multicast appliance because group addresses are separately
claimed in independent and dependent claims. '997 Patent
at claim 15.
argue that Meetrix's construction improperly encompasses
devices that indiscriminately broadcast messages. Defendants
contend that the '997 specification uses a group address
where it states that multicast information can be
"broadcast." '997 Patent at 6:48-52. Defendants
also assert that where the '997 specification discusses
"multicast, " it indicates that multicast is
performed using a group address. '997 Patent at 4:59-67,
construe "multicast appliances, " the court first
addresses Meetrix's claim-differentiation argument, then
looks to the specification for further guidance. As to claim
differentiation, the court agrees that differences among
claims can be a "useful guide in understanding the
meaning of particular claim terms." Phillips v. AWH
Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005). The
court declines, however, to "apply the doctrine of claim
differentiation where, as here, the claims are not otherwise
identical in scope." Indacon, Inc. v. Facebook,
Inc., 824 F.3d 1352, 1358 (Fed. Cir. 2016). Plaintiff
cannot rely on claim 15, for example, to remove a group
address from the operation of multicast appliances. Claim 15
contains other scope, including a "gateway"
transforming data into "IP packets, " that prevents
claim 15 from clarifying the meaning of "group
address" in other claims. '997 Patent at claim 15.
As claim differentiation does not resolve whether a multicast
appliance uses a "group address, " the court looks
to the teaching of the specification.
specification "is the single best guide to the meaning
of a disputed term." Tele/lex, Inc. v. FicosaN. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal
citations omitted). The '997 specification favors
inclusion of a "group address" in the definition of
"multicast appliances." The specification
consistently teaches that multicast information is
transmitted to a limited number of participants. '997
Patent at Figs. 3, 4, and 6. In the '997
specification's summary of the invention, multicast
appliances provide "multicast data to . . . participants
in the group address." '997 Patent at 4:65-67. The
specification further describes configuring information
"with a group address according to a multicast
protocol." '997 Patent at 4:59-61. Where the
specification discusses broadcasting information, it limits
recipients to those listed in a group address. '997
Patent at 6:50-51, 7:23-26. Plaintiffs provide no support
from the specification for a construction that encompasses
broadcasting information without limitation.
the court construes "multicast appliances" as
devices that use a group address to send information
to multiple locations via a single transmission.
"Virtual Private Network (VPN)" and "VPN
parties' proposed constructions of "virtual private
network (VPN)", as used in claims 1, 3, and 11 of the
'997 Patent and claims 13 and 14 of the '525 patent,
as well as the parties proposed constructions of "VPN
tunnel, " as used in claims 5 and 7 of the '525
patent and claims 1 and 5 of the '332 patent, are listed
in the following table:
Plaintiffs Proposed Construction
"Virtual Private Network (VPN)"
"Virtual Private Network (VPN)"
An approximation of a private network across a
public network using encryption to privatize
Private networks of securely connected appliances
across a public network
"virtual private network tunnel"
"virtual private network tunnel"
VPN, above, "tunnel": Encapsulation
Secure connection between two appliances in a
private network across a public network
parties disagree as to the following: (1) whether a VPN is a
network or an approximation thereof, (2) whether a VPN must
use encryption, and (3) whether a VPN connects
"appliances" or extends to participant's
devices. The parties further disagree on the meaning of the
word "tunnel, " with plaintiffs espousing that
"tunneling" is synonymous with "encapsulation,
" and defendants describing a "tunnel" as a
connection. The court addresses each disagreement in turn.
of a network
argues that a "virtual private network" (VPN) is an
approximation of a private network because of the plain
meaning of the word "virtual." Meetrix also appeals
to the prosecution history of the '997 patent, which
describes a VPN as "a private network that is configured
within a public network" and explains that VPNs
"enjoy the security of a private network." '997
Patent Prosecution History at 64, 73-74 (May 3, 2012 IDS and
foreign reference WO 03/003665). Meetrix points to an
extrinsic definition of "virtual private network"
as "nodes on a public network" that communicate
"as if the nodes were connected by private lines."
MICROSOFT INTERNET AND Networking Dictionary 278 (2003).
argue that a VPN is a network rather than an approximation of
a network. The '997 specification uses the term
"virtual private network" numerous times, but it
nowhere mentions an "approximation" of a network.
'997 Patent. Defendants assert that dictionaries cannot
be used to contradict intrinsic evidence. Phillips v. AWH
Corp.,415 F.3d 1303, 1322-23 (Fed. Cir. 2005).
Defendants also contend that ...