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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`NOVO TRANSFORMA
`TECHNOLOGIES, LLC,
`
`Plaintiff
`
`, v.
`
`ALLIED WIRELESS COMMUNICATIONS
`CORPORATION D/B/A ALLTEL,
`
`
`Defendant.
`
`Civil Action No. 1:13cv01116-RGA
`
`JURY TRIAL DEMANDED
`
`DEFENDANT ALLIED WIRELESS COMMUNICATIONS
`CORPORATION’S
`OPENING CLAIM CONSTRUCTION BRIEF
`
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`Page 1 of 66
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`AT&T EXHIBIT 1012
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`

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`TABLE OF CONTENTS
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`Page
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`NATURE AND STAGE OF PROCEEDINGS .................................................................. 1 
`
`SUMMARY OF ARGUMENT .......................................................................................... 2 
`
`FACTUAL BACKGROUND ............................................................................................. 4 
`
`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION .................................................... 5 
`
`ARGUMENT ...................................................................................................................... 7 
`
`A. 
`
`Disputed Claim Constructions ................................................................................ 7 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`“Payload” .................................................................................................... 7 
`
`“End-to-End Delivery” ............................................................................... 7 
`
`“Guaranteed End-to-End Delivery” .......................................................... 11 
`
`“Payload Delivery Parameters” ................................................................ 13 
`
`“Automatically Notifying Said Sender Upon Receipt Of Said
`Payload By Said Recipient” ...................................................................... 16 
`
`“Administering Media Conversion” ......................................................... 19 
`
`“Unsuccessful Delivery” ........................................................................... 22 
`
`VI. 
`
`CONCLUSION ................................................................................................................. 23 
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`
`
`
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`
`
`i
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`Page 2 of 66
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`Cases
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`TABLE OF AUTHORITIES
`
`Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009) .........................................................6
`
`Advanced Fiber Techs. Trust v. J&L Fiber Servs., 674 F.3d 1365 (Fed. Cir. 2012) .......................6
`
`Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615
`(Fed. Cir. 1995) ..........................................................................................................................6
`
`Catalina Mktg. Int’l v. Coolsavings, Inc., 289 F.3d 801 (Fed. Cir. 2002) .......................................8
`
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) ..........................................6
`
`Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366 (Fed. Cir. 2008) ...........................18
`
`Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) .............................................2, 5
`
`Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (June 2, 2014) ...........1, 5
`
`Netword, LLC v. Centraal Corp., 242 F.3d 1347 (Fed. Cir. 2001) .................................................6
`
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) .............................................6
`
`On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331 (Fed. Cir. 2006) .................................6
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................................... 5-6, 20
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`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ......................... 6, 8-9
`
`Rotatable Techs. LLC v. Motorola Mobility LLC, 2014 U.S. App. LEXIS 12104
`(Fed. Cir. June 27, 2014) .....................................................................................................8, 12
`
`Saffran v. Johnson & Johnson, 712 F.3d 549 (Fed. Cir. 2013) .....................................................18
`
`Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330 (Fed. Cir. 2010) ..........................................9, 13
`
`ii
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`Page 3 of 66
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`I.
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`NATURE AND STAGE OF PROCEEDINGS
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`Plaintiff Novo Transforma Technologies, LLC (“NTT”) is a non-practicing entity that
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`purports to have acquired ownership in U.S. Patent No. 5,826,034 (“the ’034 Patent”).
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`Defendant Allied Wireless Communications Corporation (“AWCC”) is a small
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`telecommunications company that, beginning in summer 2011 through September 2013,
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`provided multimedia message services (“MMS”) to clients in select data networks in the United
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`States (i.e., services that allow “text messages” that include multimedia content such as video or
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`pictures to be sent to and from mobile phones).1 NTT asserts that the MMS previously provided
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`by AWCC have infringed two independent claims (claims 23 and 36) and five dependent claims
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`(claims 24, 31, 34, 35 and 37) (collectively the “asserted claims”) of the ’034 Patent.
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`Importantly, all of the asserted claims are method claims that require steps to be
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`performed by more than one person (e.g., a “sender” and a “recipient” of a MMS message).
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`Thus, in view of the Supreme Court’s decision in Limelight Networks, Inc. v. Akamai
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`Technologies, Inc., 134 S.Ct. 2111 (June 2, 2014), NTT has acknowledged that it cannot pursue a
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`claim of inducement of infringement of the asserted method claims. See 134 S.Ct. at 2117
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`(holding that there can be no direct or induced infringement of a method claim when the
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`performance of all the patent’s steps is not attributable to any one person). As such, the parties
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`are preparing a stipulation of dismissal with respect to NTT’s inducement claims based on the
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`use of the accused MMS by AWCC’s former customers.
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`Nonetheless, despite the fact that: (i) AWCC’s former customers cannot be found to
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`infringe the asserted claims (and, therefore, NTT cannot recover damages for MMS messages
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`sent by AWCC customers), and (ii) AWCC no longer provides any services related to the
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`1 AWCC launched its own network incorporating the accused MMS in the summer of 2011 and
`sold the network operating assets, ceasing all operation of the MMS in September 2013.
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`Page 4 of 66
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`accused MMS, NTT continues to maintain that AWCC itself has infringed the asserted method
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`claims by way of alleged internal “testing” of its MMS network that occurred from summer 2011
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`to September 2013. In response, AWCC has provided NTT with irrefutable evidence
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`demonstrating that AWCC’s alleged “testing” did not perform all of the steps of the asserted
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`method claims. And, in any event, even if NTT were entitled to “damages” for this alleged
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`testing (it is not), such an award would be de minimus as only a small number of “tests” were
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`performed by AWCC. NTT, however, steadfastly refuses to dismiss this action.
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`Accordingly, at this time the parties have exchanged contentions and proposed claim
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`constructions and have submitted a joint claim construction chart (D.I. 35). AWCC respectfully
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`submits this brief regarding the disputed terms in that joint claim construction chart.
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`II.
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`SUMMARY OF ARGUMENT
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`AWCC’s proposed constructions seek to provide clear and helpful definitions of the
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`disputed claim terms that will allow the jury to fully understand the scope of the invention
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`claimed in the asserted claims. Keeping with the fundamental principles of claim construction,
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`AWCC’s proposed constructions are consistent with the claim language and are fully supported
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`by the specification of the ’034 Patent, which “is the single best guide to the meaning of a
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`disputed claim term.” Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1320 (Fed. Cir. 2011)
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`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)).
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`In contrast, NTT seeks to avoid construing many of the terms instrumental to defining the
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`scope of the asserted claims and, in many instances, seeks to avoid construing the claims at all.
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`NTT argues that many of the disputed terms have “plain and ordinary meaning” and, therefore,
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`do not require any construction. As at least one judge in this District has recognized, however,
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`the fiction of a “plain and ordinary meaning” construction can be worse than proposing no
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`construction at all. See Judge Sue Robinson’s Patent Scheduling Order at Fn 6 (“Resorting to
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`2
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`Page 5 of 66
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`‘plain and ordinary’ meaning is not sufficient, as it effectively leaves claim construction in the
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`hands of the experts rather than the court.”). And what constructions NTT does propose, are
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`deliberately broad and vague and are inconsistent with the specification.
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`Indeed, NTT’s “plain and ordinary meaning” proposals are played out by NTT’s overall
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`patent monetization strategy: start with a first round of patent infringement suits against smaller
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`telecom companies in order to build sufficient funds to launch a second infringement campaign
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`against the larger telecom companies. NTT has largely completed its first wave attack (settling
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`or dismissing its Complaint with at least seven other telecom companies), but has been unable to
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`sweep AWCC aside so easily. Now, forced to litigate its dubious infringement claims under its
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`thread-bare “testing” allegations, NTT seeks to avoid having this Court construe or otherwise
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`define the scope of its asserted claims in order to broadly maintain its infringement allegations
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`against AWCC and the second wave of telecom companies. This type of “plain and ordinary”
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`stagecraft should not be tolerated by this Court.
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`The claim construction process is intended to provide the jury with a clear and concise
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`understanding of the meaning of the claim language. Toward this end, two claim terms in
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`particular, “end-to-end delivery” and “automatically notifying said sender upon receipt of said
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`payload by said recipient,” are case dispositive. When those terms are properly construed in
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`accordance with the intrinsic record and/or the plain meaning of those terms as used in the art,
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`AWCC’s “testing” of its accused MMS cannot be found to infringe.
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`
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`
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`3
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`Page 6 of 66
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`

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`III.
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`FACTUAL BACKGROUND
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`There is nothing new or nonobvious about the ‘034 Patent. The ’034 Patent generally
`
`relates to end-to-end ubiquitous payload delivery systems and methods that guarantee delivery of
`
`the complete payload from one end (sender’s device) to another end (recipient’s device) while
`
`always providing the sender with a delivery notification upon recipient’s receipt of the payload.
`
`The inventor does not purport to have invented e-mail, text-messaging, or multi-media
`
`messaging. See ‘034 Patent, 1:15-36. Nor was the inventor the first to convert media from one
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`format (e.g., e-mail) to another format (e.g., facsimile). See id. at 1:38-53. That, too, was well
`
`known. Id. (citing U.S. Pat. No. 4,837,798 to Cohen et al., disclosing a system that allows a
`
`recipient to receive communications in one media format and convert them into a different media
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`format). Instead, the ‘034 Patent purports to address the limited “need… in the industry for a
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`payload delivery system… that [1] enables the sender to designate the delivery parameters as
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`well as [2] provide… notification to the sender if the delivery was not successful.” See id. at
`
`1:61–2:1.
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`Various embodiments depicting
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`the use and operation of the payload
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`delivery system are depicted in FIGs. 5-
`
`10 of the ’034 Patent. See e.g., FIG. 7 of
`
`the ‘034 Patent, reproduced at right. As
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`shown in Figure 7, the sender associated
`
`with device 30 first creates a message or
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`payload. Id.; see also FIGS. 5-10. The
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`sender then specifies a plurality of so-called “payload delivery parameters,” which are rules
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`governing the format, conversion and transmission of the payload in order to guarantee delivery
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`4
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`Page 7 of 66
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`of the payload from the sender to the recipient. Id. The payload is then delivered, converted to a
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`different media if necessary, according to the sender’s payload delivery parameters. Id.
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`Delivery of the payload occurs in one and only direction – from the sender’s device 30 to
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`the recipient’s device 36 – without requiring the recipient to retrieve the payload from any of the
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`intermediary storage devices located within the communication network 13. Id. The only action
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`required by the recipient is to always provide an acknowledgement 132 back to the sender upon
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`receipt of the payload. Id. The payload delivery system is configured to guarantee the
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`successful delivery of the payload by repeating the attempts to deliver the payload until it is
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`successful (see e.g., attempts 126, 128 and 130). Id.
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`As discussed above, NTT has acknowledged that it may not pursue a claim of
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`inducement of infringement of the asserted method claims under the Supreme Court’s decision in
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`Limelight. See Limelight Networks, Inc., 134 S. Ct. at 2117. NTT’s direct infringement claims –
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`based on AWCC’s alleged maintenance and testing of its MMS – fair no better. As discussed
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`below, when the asserted claims are properly construed, any “testing” of AWCC’s accused MMS
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`could not have performed each and every step of the claimed methods.
`
`IV.
`
`LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
`
`While a claim term is generally given its ordinary and customary meaning, in arriving at
`
`that meaning “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.” Phillips, 415 F.3d at 1313. “The specification is the
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`single best guide to the meaning of a disputed claim term.” Eon-Net LP, 653 F.3d at 1320
`
`(quoting Phillips, 415 F.3d at 1315). In other words, “the patent specification is the primary
`
`resource for determining how an invention would be understood by persons experienced in the
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`field.” Advanced Fiber Techs. Trust v. J&L Fiber Servs., 674 F.3d 1365,1375 (Fed. Cir. 2012);
`
`5
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`Page 8 of 66
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`

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`see also Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (“[C]laims are
`
`directed to the invention that is described in the specification[,] they do not have meaning
`
`removed from the context from which they arose.”). This means that “claims cannot enlarge
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`what is patented beyond what the inventor has described as the invention.” Abbott Labs. v.
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`Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (internal quotations omitted); see also On
`
`Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331, 1340 (Fed. Cir. 2006).
`
`With respect to whether a term in the claim preamble is limiting and requires
`
`construction, “a claim preamble has the import that the claim as a whole suggests for it.” Bell
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`Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir.
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`1995). “If the claim preamble, when read in the context of the entire claim, recites limitations of
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`the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim,
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`then the claim preamble should be construed as if in the balance of the claim.” Pitney Bowes,
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`Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
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`A court should also consult the patent’s prosecution history, which, like the specification,
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`provides evidence of how the Patent Office and the inventor understood the claimed invention.
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`Phillips, 415 F.3d at 1317. If the specification or prosecution history defines a claim term, that
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`definition shall apply even if it differs from the term’s ordinary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Moreover, if a patentee makes a
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`clear and unambiguous disavowal of claim scope during prosecution, that disclaimer informs the
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`claim construction analysis by “narrow[ing] the ordinary meaning of the claim congruent with
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`the scope of the surrender.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir.
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`2003).
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`6
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`Page 9 of 66
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`V.
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`ARGUMENT
`
`A.
`
`Disputed Claim Constructions
`
`l.
`
`“Payload”
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`23, 24, 34, A digital
`35 36 37
`compilation of
`,
`,
`data
`
`A digital compilation of data created by the sender,
`comprising one or more of the following: text data, image
`data, video data, audio data, or any combination thereof
`
`Claims
`
`N'lT’s Proposed
`Construction
`
`AWCC’s Proposed Construction
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`OR A digital compilation of data
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`The parties agree that the term “payload” should include “a digital compilation of data.”
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`AWCC asserts that, when read in light of the specification of the ‘034 Patent, the term “payload”
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`properly is properly defined to include “one or more types of text data, image data, video data,
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`audio data, or any combination thereof.” In the interest of narrowing the issues requiring
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`resolution by the Court, however, AWCC agrees with NTT’s proposed construction that the term
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`“payload” refers to “a digital compilation of data.”
`
`2.
`
`“End-to—End Delivery”
`
`m N'IT’s Proposed Construction
`
`AWCC’s Proposed Construction
`
`“delivery from a sender to a recipient.”
`
`As this term only appears in the
`preamble and is not a claim limitation,
`this term does not require construction.
`
`To the extent the Court determines
`
`construction is required, N'IT proposes
`
`Unidirectional delivery of the
`complete payload from the sender’s
`device directly to the recipient’s
`device without requiring the recipient
`to retrieve the payload from an
`intermediary storage source
`
`a.
`
`End-to-End Delivery is a Claim Limitation
`
`There can be little dispute that the term “end-to-end delivery” is a claim limitation
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`requiring construction. “If the claim preamble, when read in the context of the entire claim,
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`recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and
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`Page 10 of 66
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`vitality’ to the claim, then the claim preamble should be construed as if in the balance of the
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`claim.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here,
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`the term “end-to-end delivery” is precisely the type of limiting preamble that the Federal Circuit
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`has found requires construction because it is necessary to give meaning to the claims. Id.;
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`Catalina Mktg. Int’l v. Coolsavings, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“Whether to treat a
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`preamble as a limitation is a determination ‘resolved on review of the entire[]. . . patent to gain
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`an understanding of what the inventors actually invented and intended to encompass by the
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`claim.’”).
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`The specification of the ‘034 Patent is replete with references to “end-to-end delivery,”
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`underscoring the importance of the feature to the claimed invention. See, e.g., Rotatable Techs.
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`LLC v. Motorola Mobility LLC, Case No. 2014-1042, 2014 U.S. App. LEXIS 12104, 4-5 (Fed.
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`Cir. June 27, 2014) (noting that a preamble is limiting when the specification underscores the
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`importance of the limitation) (citing Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d
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`1303, 1310 (Fed. Cir. 2004)). For example, the ‘034 Patent’s Abstract, Field of the Invention,
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`Summary of the Invention, Description of the Drawings, Detailed Description, and all
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`independent claims recite the “end-to-end delivery” limitation. See ‘034 Patent at Abstract; 1:7-
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`11; 2:6-15; 2:37-43; 2:60-67; 5:12-14; 5:39-44; 11:20-33; 12:23-33; 13:7-14:6.
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`The specification explicitly states that “end-to-end delivery” is a key novelty of the
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`invention over the prior art. “The present invention generally relates to payload delivery and,
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`more particularly, to an end-to-end payload delivery system.” Id. at 1:7-10 (emphasis added).
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`“The present invention overcomes the inadequacies and deficiencies of the prior art… [and]
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`provides for a system and method for end-to-end ubiquitous payload delivery.” Id. at 2:6-10
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`(emphasis added). “As a computer application, the end-to-end ubiquitous payload delivery
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`8
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`system allows different communication service applications on different media.” Id. at 2:37-46
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`(emphasis added). As such, the term “end-to-end delivery” in the preamble of claims 23 and 36
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`is not merely a statement of effect that may or may not be desired or appreciated, but is rather a
`
`statement of the intentional purpose for which the claimed method must be performed. See, e.g.,
`
`Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1340 (Fed. Cir. 2010) (holding that the
`
`preamble phrase “apparatus for decoding” in a product claim was “properly construed as a claim
`
`limitation, and not merely a statement of purpose or intended use for the invention, because
`
`‘decoding’ [was] the essence or a fundamental characteristic of the claimed invention.”).
`
`b.
`
`End-to-End Delivery Requires Unidirectional Delivery of the
`Complete Payload And Is Case Dispositive
`
`The proper construction of the “end-to-end delivery” claim term is case dispositive. Just
`
`as the specification underscores the importance of the “end-to-end delivery” limitation, it also
`
`informs the meaning of it. The specification uses the term “end-to-end delivery” to describe the
`
`unidirectional delivery of the complete payload from the sender’s device directly to the
`
`recipient’s device without requiring the recipient to retrieve the payload from an intermediary
`
`storage source. NTT’s construction, “delivery from the sender to the recipient,” is deliberately
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`broad. By intent, NTT’s construction leaves open the possibility of encompassing a system –
`
`like that employed by AWCC – in which the payload is not delivered to the recipient’s device,
`
`but instead, the recipient is required to retrieve the payload from an intermediary storage source.
`
`Notably, NTT attempts to support its construction with a single citation to the
`
`specification. NTT ignores the figures in the specification that disclose the operation of the
`
`claimed method, as well as the vast majority of the text which, consistent with AWCC’s
`
`construction, makes clear that the “entire payload” is delivered all the way “to the recipient.”
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`See, e.g., ‘034 Patent at 9:19-21 and FIGs. 5-10. The specification contains no embodiment in
`
`9
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`which the recipient must retrieve the payload from an intermediary as that would contradict the
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`claimed goal of “guaranteeing” delivery. See id. The only action permitted by the recipient via
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`the recipient’s device 36 is to provide an acknowledgement to the sender after the payload has
`
`been received by the recipient. See e.g., FIG. 5 below.
`
`FIGURES 5-9 teach the various delivery scenarios of the ’034 Patent and support
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`AWCC’s proposed construction. Specifically, the “delivery” arrows in FIGURES 5-9 are all
`
`configured for “unidirectional
`
`delivery” of the payload
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`(“message”) in the direction
`
`from the sender’s device 30 all
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`the way directly to the
`
`recipient’s device 36 (emphasis
`
`added). See, e.g., FIG. 5
`
`reproduced to the right; see also
`
`FIGS. 6-9.
`
`On the other hand, the figures do not demonstrate – and the specification does not support
`
`– any embodiment in which the recipient is required to query and download an intermediary in
`
`order to complete delivery of the message, as would be permitted by NTT’s construction. See
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`‘034 Patent at 9:19-28 (“the present invention is able to guarantee delivery of the entire
`
`payload, not just that portion compatible with the recipient’s system….”) (emphasis added)2.
`
`
`2 Unlike the claimed method, AWCC’s accused MMS does not deliver the payload directly to the
`end recipient but, instead, to an intermediary storage device. The intermediary storage device
`then alerts the recipient’s device of a message available for download by the recipient. As the
`“end-to-end delivery” claim term is incorporated into each asserted claim, proper construction of
`this claim term is dispositive of NTT’s infringement allegations.
`
`10
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`Page 13 of 66
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`

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`NTT’s argument that AWCC’s construction would exclude the use of “intermediary
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`devices” is incorrect. NTT Brf. at 7. AWCC’s construction in no way prohibits the use of
`
`intermediaries as necessary to complete delivery, but instead, simply makes clear that the
`
`payload is delivered to the recipient’s device 36 without any action required by the recipient to
`
`retrieve it from one of those intermediaries (e.g., local digital switch 26 and/or local servers 28,
`
`above). Note that the phrase “directly” in AWCC’s proposed construction is used in conjunction
`
`with the phrase “without requiring the recipient to retrieve the payload from an intermediary
`
`storage source” to convey this meaning. Thus, AWCC’s proposed construction does not
`
`“exclude any preferred embodiment” from the scope of the claim as NTT alleged. See id. To the
`
`contrary, it covers every possible embodiment of payload delivery disclosed by the figures and
`
`specification of the ’034 Patent.
`
`In sum, AWCC’s proposed construction is intended to make it clear to a fact finder how
`
`the claimed method is performed and prevent NTT from impermissibly expanding the scope of
`
`its claims to ensnare products that fall outside the scope permitted by the Patent Office. The
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`Court should adopt AWCC’s construction and reject NTT’s construction.
`
`3.
`
`“Guaranteed End-to-End Delivery”
`
`Claims
`
`23, 36
`
`NTT’s Proposed Construction
`
`As this term only appears in the
`preamble and is not a claim limitation,
`this term does not require construction.
`To the extent the Court determines
`construction is required, NTT proposes
`“guaranteed delivery from a sender to a
`recipient.”
`
`AWCC’s Proposed Construction
`Guaranteed successful unidirectional
`delivery of the complete payload
`from the sender’s device directly to
`the recipient’s device without
`requiring the recipient to retrieve the
`payload from an intermediary storage
`source
`
`
`
`Like the term “end-to-end delivery,” the claim term “guaranteed end-to-end delivery”
`
`requires construction because it is necessary to give meaning to the claims. See, e.g., Rotatable
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`Techs. LLC, 2014 U.S. App. LEXIS 12104 at *4-5 (noting the importance of the specification in
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`construing the preamble) (citing Poly-America, 383 F.3d at 1310). The phrase is used repeatedly
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`throughout the specification to describe the claimed embodiments, and the entire phrase
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`“guaranteed end-to-end delivery” is restated in each of the patent’s independent claims.
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`Specifically, the specification of the ’034 Patent states that:
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`
`
`
`
`
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`
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`
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`“The payload delivery system of the present invention is able to guarantee
`delivery of the entire payload.” ‘034 Patent at 2:57-59 (emphasis added).
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`“If required, media conversions and payload copying can be performed… to
`provide guaranteed delivery in a media independent environment.” Id. at 2:24-
`28 (emphasis added).
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`“The present invention can also be conceptualized as providing for a payload
`delivery method for providing media independent, guaranteed delivery of a
`payload in accordance with delivery parameters defined by the sender.” Id. at
`4:25-28 (emphasis added).
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`“The sender is preferably always given notification of delivery so that the sender
`is guaranteed that the payload has been received by the recipient.” Id. at 4:59-
`63 (emphasis added).
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`“With reference to FIG. 1, the end-to-end ubiquitous payload delivery system
`of the present invention provides… guaranteed payload delivery between users
`in a media independent environment.” Id. at 5:39-44 (emphasis added).
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`As such the term “guaranteed end-to-end delivery” in the preamble of claims 23 and 36,
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`like the term “end-to-end delivery,” is not merely a statement of effect that may or may not be
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`desired or appreciated, but rather is a statement of the intentional purpose for which the method
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`of the claims must be performed. See, e.g., Vizio, 605 F.3d at 1340.
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`With respect to the meaning of this claim phrase, NTT proposes no construction for the
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`term “guaranteed” and instead simply adds the word “guaranteed” before its proposed
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`construction of “end-to-end delivery.” Merely parroting the word “guaranteed,” however, does
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`nothing to inform the fact finder of the meaning of this term. In contrast, AWCC’s proposed
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`construction clarifies that “guaranteed … delivery” means that the delivery is “guaranteed” to be
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`“successful.” This consfiuction is helpful to the trier of fact, consistent with the plain and
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`ordinary meaning of the term, and is fiilly supported by the specification for the same reasons
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`discussed above with respect to “end-to-end delivery.” As such, Court should adopt AWCC ’3
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`construction and reject NTT’s construction.
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`“Payload Delivery Parameters”
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`Ims’NTTs Proposed Construction
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`AWCC’s Proposed Construction
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`payload
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`23, 36 Elements that determine the
`characteristics or behavior of
`a payload delivery
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`Rules governing the format, conversion and
`transmission of the payload, as actively defined by
`the sender, in order to guarantee delivery of the
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`AWCC ’s proposed construction captures two important aspects of the payload delivery
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`parameters. First, they are “rules governing the format, conversion and transmission of the
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`payload” and, second, they are “actively defined by the sender, in order to guarantee delivery of
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`the payload.” These key elements are fully supported by the specification and provide the fact
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`finder with a clear understanding of the meets and bounds of the disputed claim language.
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`In contrast, NTT’s proposed construction is vague and introduces additional words that
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`would themselves require construction. For example, NTT’s use of the word “elements” in place
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`of the word “parameters” is incongruous and broad. Similarly, NTT’s use of words
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`“characteristics” and “behavior” in the context of the ‘034 Patent is entirely unclear and appears
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`to broaden the scope of the invention beyond what is taught in the specification. The words
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`“characteristic” and “behavior” have no readily identifiable meaning in this context and neither
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`of these words appear anywhere in the specification.
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`Instead, NTT purports to find support for its construction by way of an obscure extrinsic
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`“dictionary” definition. Not only is NTT’s “extrinsic evidence first, intrinsic evidence second”
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`approach contrary to the well-established rules of claim construction, Phillips, 415 F.3d at 1318
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`(holding that extrinsic evidence in general is less reliable than intrinsic evidence), but the
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`“Modern Dictionary of Electronics” that NTT purports to rely upon was published in 1999 –
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`three years after the relevant filing date of the ‘034 Patent. Simply put, NTT’s construction
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`ignores the specification and relies on an irrelevant dictionary definition that ultimately creates
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`more uncertainty than it resolves.
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`AWCC’s construction, however, is firmly rooted in the specification and uses words that
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`have readily identifiable meaning in the context of the ‘034 Patent. The terms “format,”
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`“conversion” and “transmission” are used at passim throughout the specification. And all of the
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`“payload delivery parameters” set forth in the specification fall squarely under the umbrella of
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`these three categories of rules that are defined by the sender for the express purpose of
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`guaranteeing delivery of the payload. For example, the specification identifies that “[t]he
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`delivery parameters preferably include a preferred media of delivery and a number of attempts
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`within a given period of time before conversion of the payload to an alternate media ….” ‘034
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`Patent at 2:15-19. The specification goes on to note other format, conversion, and transmission
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`parameters that can be defined by the sender:
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`Payload delivery specific information is also provided, such as the number of
`retries before a media change, the intervals between media retries, a secondary
`media, a number of retries with the secondary media, the intervals between retries
`with the secondary media, a tertiary media, a number of retries with the tertiary
`media, and the intervals between retries with the tertiary media, and so forth and
`so on. The aforementioned information comprises the delivery parameters
`defined by the sender.
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`Id. at 8:53-62 (emphasis added).
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`All of these identified parameters comprise rules governing the format, transmission and
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`conversion of the payload. Finally, the speci