Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 1 of 42
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`
`
`TWILIO, INC.,
`Plaintiff,
`
`v.
`
`TELESIGN CORPORATION,
`Defendant.
`
`
`
`Case No. 16-CV-06925-LHK
`
`ORDER CONSTRUING DISPUTED
`CLAIM TERMS OF U.S. PATENT NOS.
`8,306,021; 8,837,465; AND 8,755,376
`Re: Dkt. No. 105
`
`
`
`
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`Plaintiff Twilio, Inc. (“Twilio” or “Plaintiff”) brings this action for patent infringement
`
`against Defendant Telesign Corporation (“Telesign” or “Defendant”). The parties now seek
`
`construction of nine disputed terms used in the claims of the following patents-in-suit: U.S. Patent
`
`Nos. Patent Nos. 8,306,021 (“the ’021 Patent”), 8,837,465 (“the ’465 Patent”), 8,755,376 (“the
`
`’376 Patent”) (collectively, “Asserted Patents”).
`
`I.
`
`BACKGROUND
`A. Background and Description of the Invention
`The ’021 patent is titled “System and Method for Processing Telephony Sessions.”
`
`Compl. Ex. A (’021 patent). It was filed on April 2, 2009 and issued on November 6, 2012. It
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`1
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 2 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`claims priority to three provisional applications, the earliest of which was filed on April 2, 2008.
`
`The ’465 and ’376 patents are also titled “System and Method for Processing Telephony
`
`Sessions.” Compl. Ex. B (’465 patent); Compl. Ex. C (’376 patent). The ’465 patent was filed on
`
`January 16, 2013 and issued on September 16, 2014. The ’376 patent was filed on January 16,
`
`2013 and issued on June 17, 2014. Both patents are continuations of another patent application,
`
`which is a continuation of the ’021 patent. Accordingly, all three Asserted Patents share the same
`
`specification and priority date.
`
`1. Specification
`The Asserted Patents generally relate to “[a] system and method for processing telephony
`
`sessions.” ’021 patent at col. 1:25-26. Telephony sessions, such as a phone call initiated over a
`
`public switched telephone network (“PSTN”) or a text message sent over the Short Message
`
`Service (SMS), are communications from one point to another. See id. at col. 3:16-53. However,
`
`these communications can be combined with computer logic to create interactive applications,
`
`such as an automated customer service hotline, see id. at col. 15:60-65, or a dial-in conferencing
`
`service, see id. at col. 16:11-20. In order to accomplish this, communication signals need to be
`
`“processed” so that input from the user (e.g., a button pressed, text sent, spoken response) is sent
`
`to the computer logic, and the appropriate response is sent back. See generally id. at col. 6:48-8:5.
`
`For example, processing a call to a customer service hotline would include detecting that the user
`
`selected, say, a “2” from the initial menu, and then retrieving and playing a recording for the new
`
`set of menu options to which option “2” corresponds. See, e.g., id. at col. 15:49-16:4, Fig. 7.
`
`The Background section of the specification explains that, at the time of patenting,
`
`implementation of these interactive applications was complicated. Id. at col. 1:30-58. At that
`
`time, “legislation and the advent of Voice over Internet Protocol (VoIP) ha[d] revolutionized the
`
`communication industry.” Id. at col. 1:30-32. There were new technologies for interactive
`
`applications, accompanied by new business models, and service providers. Id. at col. 1:32-33.
`
`For example, “[o]ne c[ould] implement extensible call switching and voice application logic in
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`2
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 3 of 42
`
`
`
`Open source software applications, such as Asterisk and FreeSwitch.” Id. at col. 1:34-36.
`
`However, getting these modern applications to work with traditional communications networks—
`
`such as telephone networks that handled voice communications and SMS messaging—presented
`
`“new complexities and challenges.” Id. at col. 1:38. In particular, “[d]eploying telephony services
`
`require[d] knowledge of voice networking and codecs, hardware or services to bridge servers to
`
`the public phone infrastructure, capital investment in hardware, and ongoing collocation of that
`
`hardware.” Id. at col. 1:39-43. In addition, the actual interactive application itself had to be
`
`developed, which “require[d] developers to train in new languages, tools, and development
`
`environments.” Id. at col. 1:45-46. Finally, “[o]ngoing operation and maintenance of these
`
`services require[d] teams to adopt new analysis tools, performance metrics, and debugging
`
`methodologies.” Id. at col. 1:50-53. All of these efforts were costly, requiring “significant
`
`upfront and ongoing investment.” Id. at col. 1:54-55.
`
`The Asserted Patents purport to address these problems by providing a way for modern
`
`applications to interact with traditional communication networks that mimics web-based
`
`programming. See id. at col. 2:1-18. In particular, this solution “use[s] the familiar web site
`
`visitor model,” where each step of a phone call is made to act like a web page. Id. at col. 2:5-8.
`
`For example, in one embodiment, input that a user enters into his telephone (e.g., pressing a “2” in
`
`the automated customer hotline example) is sent to the application via HTTP POST, the same
`
`mechanism that is used when a user submits a form on a website. See id. at col. 4:49-57, Fig. 7.
`
`The methods and systems also leverage “familiar concepts such as HTTP redirects, accessing
`
`resources through an API, cookies, and mime-type responses.” Id. at col. 2:9-11. According to
`
`the Asserted Patents, this reduces complexity and expense because it “enables web developers to
`
`use their existing skills and tools with the esoteric world of telephony, making telephony
`
`application development as easy as web programming.” Id. at col. 2:2-5.
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 4 of 42
`
`
`
`In the Asserted Patents, the ability to interact with a traditional communication network in
`
`a web-like way is accomplished through a “call router,” which sits between the traditional
`
`communication network and the modern application and translates between the two. Id. at col.
`
`6:49-8:5, 13:12-14:14. Figures 2A and 3A show this setup for a modern application
`
`communicating with a traditional phone line:
`
`Item 26 represents a server that runs the modern application (“application server”), such as code
`
`that implements the tree of menu options in a customer service hotline. Id. at col. 14:15-15:47. It
`
`communicates with the call router, item 22, using familiar web-like constructs. Id. at col. 13:29-
`
`14:14. The call router then takes these web-based descriptions of interactions and translates them
`
`into telephone signals that can be sent to the user’s telephone, item 21, over a traditional telephone
`
`network, and vice versa. Id. at col. 6:49-8:5, 13:12-14:14. For example, the call router is able to
`
`detect the signal indicating that a user pressed a “2” coming from a traditional telephone line,
`
`translate that into an HTTP POST response, and send that over the internet to the application
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 5 of 42
`
`
`
`server. See id. at col. 13:12-14:14, Fig. 7.
`
`
`
`Figure 1 illustrates the operation of the call router, the application server, and the
`
`communication network:
`
`The call router communicates with the application server using an “application layer protocol,”
`
`such as HTTP or HTTPS. Id. at col. 14:24-26. The location of the application server, or an
`
`application hosted on an application server, is identified using a universal resource identifier
`
`(“URI”). Id. at col. 14:21-23. When a user initiates a telephony session (such as a phone call), the
`
`call router determines the URI that corresponds to the application server responsible for handling
`
`that call, and maps the call to that URI. Id. at col. 3:54-4:10. (For example, if a user calls a dial-in
`
`voice conferencing number, the call router maps that number to the URI for the server hosting the
`
`conferencing application. See id. at col. 3:54-4:10, 15:51-54.) The call router then communicates
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 6 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`that a new call was initiated to the application server by digitally signing any parameters
`
`associated with the call, such as the caller’s number, the number they are calling, and their account
`
`ID, and sending this information to the application server as a web request. Id. at col. 4:11-5:46,
`
`13:29-14:14, Figs. 4A-F. The application server then determines the next action that should be
`
`taken, and sends this information back to the call router as a response. Id. at col. 6:15-48, Figs.
`
`5A-B. (For example, if a user calls a dial-in voice conferencing number, the conferencing
`
`application may determine that the next step would be to play a greeting asking the user to enter
`
`his conference ID. See id. at Fig. 7. In this case, it sends back a response to the call router with an
`
`audio file for this greeting and instructions to play it. See id.) The call router receives this
`
`response and converts it into a “telephony action.” Id. at col. 6:49-8:5. It does this by sending the
`
`appropriate signals over the telephone network to the user’s phone. Id. at col. 6:49-64. Any
`
`subsequent input from the user is processed as a new request using this same request and response
`
`pattern. See, e.g., id. at Figs. 12-15.
`
`
`
`In addition to translating and relaying signals between the communication network and the
`
`application server, the call router also stores state information about the telephony session, such as
`
`the number associated with a particular call, id. at col. 10:1-4, the number to which a call was
`
`directed, id. at col. 10:29-32, or the current state of a call (e.g., in-progress, completed, failed, not
`
`yet initiated), id. at col. 10:40-42. It then makes this information accessible to the application
`
`server through a Call Router Application Programming Interface (“API”), which the application
`
`server can use at any time. Id. at col. 8:52-54; see generally id. at col. 8:7-12:64. In addition, the
`
`application server can use the Call Router API to direct the call router to take certain actions, such
`
`as modify information stored by the call router relating to calls or perform operations on an
`
`existing call. Id. at col. 9:42-48. For example, the application server can direct the call router to
`
`modify data about the number from which a call was initiated, id. at col. 10:1-4, or change the
`
`state of a current call (e.g., hanging up a current call, transferring a current call, or initiating
`
`recording of a current call), id. at col. 10:42-53.
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`6
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 7 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`This functionality is implemented through “resources” located on the call router, which are
`
`web-accessible data elements that each are associated with their own URIs. Id. at col. 9:33-40.
`
`Using the Call Router API, the application server can access or modify a resource by performing
`
`HTTP actions (e.g., POST, PUT, GET, or DELETE) on its associated URI. Id. For example,
`
`information about the number from which a particular call was initiated is associated with the
`
`“caller ID resource.” Id. at col. 10:1-4. To request the number from which a particular call was
`
`initiated, the application server can send a GET request to the URI of the caller ID resource. See
`
`id. at col. 9:42-46, 10:1-4. The call router then sends a response to the application server with that
`
`information. Id. at col. 10:1-4. These resources allow the application server to access information
`
`it needs about the telephony session using familiar web-programming constructs. See id. at col.
`
`8:7-51.
`2. Asserted Claims
`Twilio currently asserts no more than 22 claims across the three Asserted Patents. See
`
`
`
`ECF No. 74. Of these, the parties’ claim construction disputes concern the following claims:
`
`claims 1-3, 6, 7, and 12 of the ’021 patent; claims 1, 4, 5, 9, and 13 of the ’465 patent; and claims
`
`1, 3, 5, 14, 16, and 19 of the ’376 patent. ECF Nos. 105, 110, 114-4.
`
`B. Procedural History
`On December 1, 2016, Twilio filed the instant patent infringement suit. In its complaint,
`
`Twilio alleged that Telesign “has infringed and continues to infringe one or more claims of [the
`
`Asserted Patents and U.S. Patent Nos. 8,738,051 (“the ’051 Patent”), 8,737,962 (“the ’962
`
`Patent”), 9,270,833 (“the ’833 Patent”), and 9,226,217 (“the ’217 Patent”)].” Compl. ¶ 75, 91,
`
`106, 135, 156, 169, 184. The products accused included Telesign’s “Smart Verify product,”
`
`“Auto Verify product,” “SMS Verify product,” “Voice Verify Product,” “Push Verify product,”
`
`and “Score and Phone ID products.” Id. ¶¶ 40-45.
`
`On January 25, 2017, Telesign moved to dismiss all of Twilio’s infringement claims
`
`because the asserted claims were invalid for failure to claim patent-eligible subject matter pursuant
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`7
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 8 of 42
`
`
`
`to 35 U.S.C. § 101. ECF No. 31. On March 31, 2017, the Court granted Telesign’s motion with
`
`respect to U.S. Patent Nos. 8,737,962 and 9,270,833, but denied Telesign’s motion with respect to
`
`the Asserted Patents. ECF No. 57. On April 17, 2017, the Court granted Telesign’s motion with
`
`respect to U.S. Patent Nos. 8,738,051 and 9,226,217. ECF No. 64.
`
`On June 30, 2017, the parties submitted a Joint Claim Construction and Prehearing
`
`Statement. ECF No. 87 (“Joint Statement”). On August 14, 2017, Twilio filed its Opening Claim
`
`Construction Brief. ECF No. 105 (“Opening Br.” or “Opening Brief”). On August 28, 2017,
`
`Telesign filed its Responsive Claim Construction Brief. ECF No. 110 (“Responsive Brief” or
`
`“Resp. Br.”). On August 29, 2017, the Court issued an order striking portions of the Opening
`
`Brief and Responsive Brief because those portions covered terms that were not identified in the
`
`parties’ Joint Statement as terms that “will be the most significant to this case.” ECF No. 111.
`
`On September 5, 2017, Twilio filed its Reply Claim Construction Brief. ECF No. 114-4 (“Reply
`
`Brief” or Reply Br.”). The Court held a tutorial and claim construction hearing on October 5,
`
`2017 (“Markman hearing”).
`II.
`
`LEGAL STANDARD
`A. Claim Construction
`The Court construes patent claims as a matter of law based on the relevant intrinsic and
`
`
`
`extrinsic evidence. See Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d
`
`1272 (Fed. Cir. 2014) (en banc); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`“Ultimately, the interpretation to be given a term can only be determined and confirmed with a full
`
`understanding of what the inventors actually invented and intended to envelop with the claim.”
`
`Phillips, 415 F.3d at 1316 (internal quotation marks and citation omitted). Accordingly, a claim
`
`should be construed in a manner that “stays true to the claim language and most naturally aligns
`
`with the patent’s description of the invention.” Id.
`
`
`
`In construing disputed terms, a court looks first to the claims themselves, for “[i]t is a
`
`‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 9 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`patentee is entitled the right to exclude.’” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
`
`Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Generally, the words of a
`
`claim should be given their “ordinary and customary meaning,” which is “the meaning that the
`
`term[s] would have to a person of ordinary skill in the art in question at the time of the invention.”
`
`Id. at 1312-13. In some instances, the ordinary meaning to a person of skill in the art is clear, and
`
`claim construction may involve “little more than the application of the widely accepted meaning
`
`of commonly understood words.” Id. at 1314.
`
`
`
`In many cases, however, the meaning of a term to a person skilled in the art will not be
`
`readily apparent, and a court must look to other sources to determine the term’s meaning. See id.
`
`Under these circumstances, a court should consider the context in which the term is used in an
`
`asserted claim or in related claims and bear in mind that “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.” Id. at 1313. The
`
`specification “‘is always highly relevant’” and “‘[u]sually . . . dispositive; it is the single best
`
`guide to the meaning of a disputed term.’” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Indeed, “the only meaning that matters in claim
`
`construction is the meaning in the context of the patent.” Trs. of Columbia Univ. v. Symantec
`
`Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). Where the specification reveals that the patentee has
`
`given a special definition to a claim term that differs from the meaning it would ordinarily possess,
`
`“the inventor’s lexicography governs.” Id. at 1316. Likewise, where the specification reveals an
`
`intentional disclaimer or disavowal of claim scope by the inventor, the inventor’s intention as
`
`revealed through the specification is dispositive. Id.
`
`In addition to the specification, a court may also consider the patent’s prosecution history,
`
`which consists of the complete record of proceedings before the United States Patent and
`
`Trademark Office (“PTO”) and includes the cited prior art references. The prosecution history
`
`“can often inform the meaning of the claim language by demonstrating how the inventor
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`9
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 10 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`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.” Id. at 1317.
`
`
`
`A court is also authorized to consider extrinsic evidence in construing claims, such as
`
`“expert and inventor testimony, dictionaries, and learned treatises.” Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). Expert
`
`testimony may be particularly useful in “[providing] background on the technology at issue, . . .
`
`explain[ing] how an invention works, . . . ensur[ing] 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 . . . establish[ing] that
`
`a particular term in the patent or the prior art has a particular meaning in the pertinent field.”
`
`Phillips, 415 F.3d at 1318. Although a court may consider evidence extrinsic to the patent and
`
`prosecution history, such evidence is considered “less significant than the intrinsic record” and
`
`“less reliable than the patent and its prosecution history in determining how to read claim terms.”
`
`Id. at 1317-18 (internal quotation marks and citations omitted). Thus, while extrinsic evidence
`
`may be useful in claim construction, ultimately “it is unlikely to result in a reliable interpretation
`
`of patent claim scope unless considered in the context of the intrinsic evidence.” Id. at 1319. Any
`
`expert testimony “that is clearly at odds with the claim construction mandated by the claims
`
`themselves, the written description, and the prosecution history” will be significantly discounted.
`
`Id. at 1318 (internal quotation marks and citation omitted). Finally, while the specification may
`
`describe a preferred embodiment, the claims are not necessarily limited only to that embodiment.
`
`Id. at 1323; see also Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1151 (Fed. Cir.
`
`2003) (“The general rule, of course, is that claims of a patent are not limited to the preferred
`
`embodiment, unless by their own language.”).
`
`B. Indefiniteness
`Under 35 U.S.C. § 112, ¶ 2 (2006 ed.),1 a patent must “conclude with one or more claims
`
`
`
`
`1 Paragraph 2 of 35 U.S.C. § 112 was replaced with newly designated § 112(b) when § 4(c) of the
`America Invents Act (“AIA”), Pub. L. No. 112-29, took effect on September 16, 2012. Because
`the applications resulting in the patents at issue in this case are continuations of applications that
`10
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 11 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`particularly pointing out and distinctly claiming the subject matter which the applicant regards as
`
`[the] invention.” Section 112, ¶ 2 includes what is commonly called the “definiteness”
`
`requirement. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125 (2014). In Nautilus,
`
`the United States Supreme Court held that “a patent is invalid for indefiniteness if its claims, read
`
`in light of the specification delineating the patent, and the prosecution history, fail to inform, with
`
`reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, 134 S. Ct.
`
`at 2124. As the Court observed, § 112, ¶ 2 “entails a ‘delicate balance.’” Id. (quoting Festo Corp.
`
`v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002)). “On the one hand, the
`
`definiteness requirement must take into account the inherent limitations of language.” Id. (citing
`
`Festo, 535 U.S. at 731). “At the same time, a patent must be precise enough to afford clear notice
`
`of what is claimed, thereby ‘appris[ing] the public of what is still open to them.’” Id. (quoting
`
`Markman, 517 U.S. at 373). Thus, “the certainty which the law requires in patents is not greater
`
`than is reasonable, having regard to their subject-matter.” Id. at 2129 (quoting Minerals
`
`Separation v. Hyde, 242 U.S. 261, 270 (1916)).
`
`The Federal Circuit applied the Nautilus standard in Interval Licensing LLC v. AOL, Inc.,
`
`766 F.3d 1364 (Fed. Cir. 2014). The case involved two patents which covered an “attention
`
`manager for occupying the peripheral attention of a person in the vicinity of a display device.” Id.
`
`at 1366. In one embodiment, the patents involved placing advertising on websites in areas
`
`surrounding the principal content of the webpage, for example in the margins of an article.
`
`Several of the asserted claims included a limitation that the advertisements (“content data”) would
`
`be displayed “in an unobtrusive manner that does not distract a user of the display device.” Id. at
`
`1368. The district court found that the terms “in an unobtrusive manner” and “does not distract
`
`the user” were indefinite, and the Federal Circuit affirmed. Id. at 1368-69. The Federal Circuit
`
`found that the “‘unobtrusive manner’ phrase is highly subjective and, on its face, provides little
`
`guidance to one of skill in the art” and “offers no objective indication of the manner in which
`
`
`were filed before that date, the Court refers to the pre-AIA version of § 112.
`11
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 12 of 42
`
`
`
`content images are to be displayed to the user.” Id. at 1371. Accordingly, the Court looked to the
`
`written description for guidance. The Court concluded that the specification lacked adequate
`
`guidance to give the phrase a “reasonably clear and exclusive definition, leaving the facially
`
`subjective claim language without an objective boundary.” Id. at 1373. Accordingly, the claims
`
`containing the “unobtrusive manner” phrase were indefinite.
`
`In applying the Nautilus standard, the Federal Circuit has cautioned that “the dispositive
`
`question in an indefiniteness inquiry is whether the ‘claims,’ not particular claim terms” fail the
`
`Nautilus test. Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1231 (Fed. Cir.
`
`2016). For that reason, a claim term that “does not discernably alter the scope of the claims” may
`
`fail to serve as a source of indefiniteness. Id. For example, in Cox Communications, the Federal
`
`Circuit determined that the term “processing system” did not render the method claims at issue
`
`indefinite because “the point of novelty resides with the steps of these methods, not with the
`
`machine that performs them.” Id. at 1229. Thus, the court reasoned, “[i]f ‘processing system’
`
`does not discernably alter the scope of the claims, it is difficult to see how this term would prevent
`
`the claims . . . from serving their notice function under § 112, ¶ 2.” Id.
`
`
`
`The Court therefore reviews the claims, specification, and prosecution history to determine
`
`whether the claims “inform, with reasonable certainty, those skilled in the art about the scope of
`
`the invention.” Nautilus, 134 S. Ct. at 2124. Indefiniteness renders a claim invalid, and must be
`
`shown by clear and convincing evidence. See Halliburton Energy Servs. v. M-I LLC, 514 F.3d
`
`1244, 1249 (Fed. Cir. 2008); cf. Nautilus, 134 S. Ct. at 2130 n.10.
`III. DISCUSSION
`The parties request construction of nine 2 terms across the Asserted Patents. The Court
`discusses each in turn.
`
`
`
`
`2 Although discussed in separate sections below, the Court counts “REST API” and “REST API
`response” as one.
`12
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 13 of 42
`
`
`
`A. “URI” (’021 patent, claims 1-3, 7; ’465 patent, claim 1; ’376 patent, claims 1, 14,
`16)
`
`
`Twilio’s Proposed
`Construction
`Uniform Resource Identifier
`(URI), which is a compact
`sequence of characters that
`identifies an abstract or
`physical resource
`The term “URI” appears in claims 1-3 and 7 of the ’021 patent, claim 1 of the ’465 patent,
`
`Telesign’s Proposed
`Construction
`No construction necessary.
`
`Alternatively:
`Uniform Resource Identifier
`
`Parties’ Agreed-Upon
`Construction
`a compact sequence of
`characters that identifies an
`abstract or physical resource
`
`and claims 1, 14, and 16 of the ’376 patent. For example, claim 1 of the ’021 patent recites:
`1. A method of processing telephony sessions comprising:
`communicating with an application server using an application layer protocol;
`processing telephony instructions with a call router;
`creating call router resources accessible through a call router Application
`Programming Interface (API), wherein the call router resources are
`accessible by outside devices at an addressable Uniform Resource
`Identifier (URI);
`mapping a telephony session to the URI, the URI being associated with the
`application server;
`sending a request to the application server;
`embedding state information of the telephony session in the request;
`receiving from the application server a response comprising telephony
`instructions for sequential processing;
`storing state information in the URI of a call router resource;
`modifying call router resources to alter the state of the call router; and
`interacting with media of the call router according to the call router API.
`’021 patent at col. 18:34-55 (emphasis added).
`
`1. The Parties’ Compromise
`Initially, the parties proposed different constructions for this term. Twilio proposed that
`
`“URI” should be construed as “Uniform Resource Identifier (URI), which is a compact sequence
`
`of characters that identifies an abstract or physical resource.” Opening Br. 5-6. Telesign, on the
`
`other hand, proposed that “URI” required no construction, or, in the alternative, should be
`
`construed to mean “Uniform Resource Identifier.” Responsive Br. 5-6. However, at the Markman
`
`Case No. 16-CV-06925-LHK
`ORDER CONSTRUING DISPUTED CLAIM TERMS OF U.S. PATENT NOS. 8,306,021; 8,837,465; AND
`8,755,376
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`United States District Court
`
`

`

`Case 5:16-cv-06925-LHK Document 137 Filed 10/13/17 Page 14 of 42
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`hearing, the parties reached an agreement that “URI” should be construed to mean “a compact
`
`sequence of characters that identifies an abstract or physical resource.” For the reasons discussed
`
`below, the Court agrees that “URI” should be construed as “a compact sequence of characters t