Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 1 of 44 PageID #: 72656
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:14-cv-33-JRG
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`v.
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`METASWITCH NETWORKS LTD;
`METASWITCH NETWORKS CORP.,
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`Plaintiff,
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`Defendants.
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`GENBAND US LLC,
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`MEMORANDUM OPINION AND ORDER
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`Before the Court is the motion filed by Defendants Metaswitch Networks Ltd. and
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`Metaswitch Networks Corp. (collectively, “Metaswitch”), styled Metaswitch’s Rule 50(b)
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`Renewed Motion for Judgment as a Matter of Law on Liability and Invalidity (Dkt. No. 537).
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`For the reasons set forth below, the motion is DENIED in all respects.
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 2 of 44 PageID #: 72657
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`I.
`II.
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`B.
`
`BACKGROUND ............................................................................................................... 3
`APPLICABLE LAW ........................................................................................................ 3
`A.
`Applicable Law Regarding Fed. R. Civ. P. 50........................................................ 3
`B.
`Applicable Law Regarding Infringement ............................................................... 5
`C.
`Applicable Law Regarding Validity ....................................................................... 5
`III. ANALYSIS ........................................................................................................................ 6
`A.
`Judgment as a Matter of Law as to Non-Infringement of the Patents-In-
`Suit .......................................................................................................................... 6
`1)
`Infringement of the ’658 Patent .................................................................. 6
`2)
`Infringement of the ’561 Patent ................................................................ 13
`3)
`Infringement of the ’427 and ’984 Patents ............................................... 18
`4)
`Infringement of the ’971 Patent ................................................................ 23
`5)
`Infringement of the ’279 and ’589 Patents ............................................... 26
`6)
`Induced infringement ................................................................................ 31
`Judgment as a Matter of Law as to Invalidity of the ’561, ’971, ’279, and
`’589 Patents ........................................................................................................... 33
`1)
`Invalidity of the ’561 Patent under §§ 102 and 103 in view of the
`Kuthan and Mercer references .................................................................. 33
`Invalidity of the ’971 Patent under § 102 in light of Cisco’s Open
`Packet Telephony (“Cisco OPT”) ............................................................. 35
`Invalidity of the ’279/’589 Patents under § 102 in light of Lucent’s
`MMCX System (MMCX) and Bayer ....................................................... 39
`IV. CONCLUSION ............................................................................................................... 44
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`2)
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`3)
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 3 of 44 PageID #: 72658
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`I. BACKGROUND
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`The Court held a jury trial in this case and the jury returned a unanimous verdict on
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`January 16, 2016. The asserted claims of United States Patent Nos. 6,791,971 (“ ’971 Patent”),
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`6,885,658 (“ ’658 Patent”), 6,934,279 (“ ’279 Patent”), 7,995,589 (“ ’589 Patent”), 7,047,561
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`(“ ’561 Patent”), 7,184,427 (“ ’427 Patent”) (collectively, the “patents-in-suit”) relate to
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`telecommunications, such as communications over an Internet Protocol network, in particular
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`Voice over Internet Protocol (“VoIP”). The jury returned a verdict that the asserted claims were
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`infringed and not invalid, and it awarded $8,168,400 in damages to Plaintiff Genband for
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`Metaswitch’s infringement of the patent claims. (“Verdict,” Dkt. No. 465.)
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`Metaswitch now asserts that, the jury did not have sufficient evidence for its findings.
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`Metaswitch contends that Genband did not present sufficient evidence to support the jury’s
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`finding of infringement of each of the asserted patents. Additionally, Metaswitch alleges that the
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`asserted claims of the ’561, ’971, and ’279/’589 Patents are invalid as a matter of law under 35
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`U.S.C. §§ 102 and 103 in light of prior art that the jury considered.
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`Having considered the parties’ briefing, arguments, and the entire record, the Court is
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`persuaded that Genband introduced substantial evidence that is more than adequate to support
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`the jury’s verdict as to infringement and validity.
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`II. APPLICABLE LAW
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`A.
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`Applicable Law Regarding Fed. R. Civ. P. 50
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`Upon a party’s renewed motion for judgment as a matter of law following a jury verdict,
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`the Court asks whether “the state of proof is such that reasonable and impartial minds could
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`reach the conclusion the jury expressed in its verdict.” Fed. R. Civ. P. 50(b); Am. Home Assur.
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`Co. v. United Space Alliance, 378 F.3d 482, 487 (5th Cir. 2004). “The grant or denial of a
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 4 of 44 PageID #: 72659
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`motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed
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`under the law of the regional circuit in which the appeal from the district court would usually
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`lie.” Finisar Corp. v. DirectTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). “A JMOL
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`may only be granted when, ‘viewing the evidence in the light most favorable to the verdict, the
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`evidence points so strongly and overwhelmingly in favor of one party that the court believes that
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`reasonable jurors could not arrive at any contrary conclusion.’” Versata Software, Inc. v. SAP
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`Am., Inc., 717 F.3d 1255, 1261 (Fed. Cir. 2013) (quoting Dresser-Rand Co. v. Virtual
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`Automation, Inc., 361 F.3d 831, 838 (5th Cir. 2004)).
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`Under Fifth Circuit law, a court is to be “especially deferential” to a jury’s verdict, and
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`must not reverse the jury’s findings unless they are not supported by substantial evidence.
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`Baisden v. I’m Ready Productions, Inc., 693 F.3d 491, 499 (5th Cir. 2012). “Substantial evidence
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`is defined as evidence of such quality and weight that reasonable and fair-minded men in the
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`exercise of impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum,
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`Inc., 211 F.3d 887, 891 (5th Cir. 2000). A motion for judgment as a matter of law must be denied
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`“unless the facts and inferences point so strongly and overwhelmingly in the movant’s favor that
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`reasonable jurors could not reach a contrary conclusion.” Baisden 393 F.3d at 498 (citation
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`omitted). However, “[t]here must be more than a mere scintilla of evidence in the record to
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`prevent judgment as a matter of law in favor of the movant.” Arismendez v. Nightingale Home
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`Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007).
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`In evaluating a motion for judgment as a matter of law, a court must “draw all reasonable
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`inferences in the light most favorable to the verdict and cannot substitute other inferences that
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`[the court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Const. Co., L.L.C., 731 F.3d
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`444, 451 (5th Cir. 2013) (citation omitted). However, “[c]redibility determinations, the weighing
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 5 of 44 PageID #: 72660
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`of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not
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`those of a judge.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). “[T]he
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`court should give credence to the evidence favoring the nonmovant as well as that ‘evidence
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`supporting the moving party that is uncontradicted and unimpeached, at least to the extent that
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`that evidence comes from disinterested witnesses.’” Id. at 151 (citation omitted).
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`B.
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`Applicable Law Regarding Infringement
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`To prove infringement under 35 U.S.C. § 271, a plaintiff must show the presence of
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`every element, or its equivalent, in the accused product or service. Lemelson v. United States,
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`752 F.2d 1538, 1551 (Fed. Cir. 1985). First, the claim must be construed to determine its scope
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`and meaning; and second, the construed claim must be compared to the accused device or
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`service. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011)
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`(citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). “A
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`determination of infringement is a question of fact that is reviewed for substantial evidence when
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`tried to a jury.” ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1311 (Fed. Cir.
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`2007).
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`C.
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`Applicable Law Regarding Validity
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`An issued patent is presumed valid. 35 U.S.C. § 282; Fox Grp., Inc. v. Cree, Inc., 700
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`F.3d 1300, 1304 (Fed. Cir. 2012). Metaswitch has the burden to show by clear and convincing
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`evidence that the asserted claims were anticipated by or obvious over the prior art. Microsoft
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`Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011). To prevail on judgment as a matter of
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`law, moreover, Metaswitch must show that no reasonable jury would have a legally sufficient
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`evidentiary basis to find for the Plaintiff. Fed. R. Civ. P. 50. “Generally, a party seeking to
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`invalidate a patent as obvious must demonstrate by clear and convincing evidence that a skilled
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 6 of 44 PageID #: 72661
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`artisan would have had reason to combine the teaching of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable expectation of
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`success from doing so.’’ In re Cyclobenzaprine Hydrochoride, 676 F.3d 1063 (Fed. Cir. 2012)
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`(internal quotation marks omitted).
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`III. ANALYSIS
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`A.
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`Judgment as a Matter of Law as to Non-Infringement of the Patents-In-Suit
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`The jury rendered a unanimous verdict of infringement as to each of the asserted claims
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`regarding each of the patents-in-suit. (Verdict.) Metaswitch argues that Genband bore the burden
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`of proving infringement by proof of each limitation of each asserted claim of each asserted
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`patent, but that Genband clearly failed to meet its burden and that the jury verdict of
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`infringement should not be upheld. (Dkt. No. 537, “JMOL,” at 1.) The Court takes up the non-
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`infringement arguments for each patent in turn.
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`1)
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`Infringement of the ’658 Patent
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`First, Metaswitch argues that the Court should enter judgment of non-infringement as a
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`matter of law because no jury could have found that Metaswitch infringed the asserted claims 1
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`and 11 of the ’658 Patent. (JMOL at 1.) Metaswitch challenges the verdict with regard to the
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`’658 Patent on three grounds. First, Metaswitch argues that Genband did not present sufficient
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`evidence regarding the “without alteration” limitation of Claim 1. Next, Metaswitch argues that
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`Genband did not present sufficient evidence regarding the “media capabilities description”
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`limitation of Claim 11. Finally, Metaswitch argues that Genband did not present evidence of
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`actual performance of each and every limitation of Claim 11, which is a method claim. The
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`Court will address each argument in turn.
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 7 of 44 PageID #: 72662
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`i.
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`The “without alteration” limitation of Claim 1
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`Genband alleged that Metaswitch performed each of the limitations of independent Claim
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`1 of the ’658 Patent, which reads as follows:
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`1. A call server comprising:
`(a) a fist protocol agent for communicating with a first internet protocol (IP)
`telephony device according to a first IP telephony protocol;
`(b) a second protocol agent for communicating with a second IP telephony device
`according to a second IP telephony protocol; and
`(c) an interworking agent for providing functions usable by the first and second
`protocol agents to communicate with each other according to a third protocol, the
`functions provided by the third protocol being a superset of functions provided by
`the first and second IP telephony protocols, said interworking agent further
`adapted to determine that a first parameter associated with the first IP telephony
`protocol does not map to the second IP telephony protocol and communicating
`first parameter to the second protocol agent without alteration.
`’658 Patent at Claim 1 (emphasis added).
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`
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`Metaswitch challenges the verdict, arguing that Genband did not introduce substantial
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`evidence of infringement of the “without alteration” limitation of Claim 1. The relevant claim
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`language requires “communicating first parameter to the second protocol agent without
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`alteration.” (Id.) (emphasis added). Genband submitted that the accused Call Feature Server
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`(CFS) and Integrated Softswitch products satisfy this claim element because the products’
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`interworking agent, the ICC agent, passes an unmapped SIP parameter unchanged to the NCS
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`protocol stack. (JMOL Resp. at 2.)
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`First, Metaswitch argues that Dr. Beckmann (Genband’s technical expert) did not analyze
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`source code evidence in support of this claim limitation. However, as this Court has held
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`previously in this case, analysis of source code is not necessarily required to assess infringement.
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`(Dkt. No. 413 at 6) (“There is no per se rule that an expert must analyze source code to opine
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`about patent infringement . . . The Court has not been alerted to any deficiencies in the ‘facts or
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`data’ upon which Dr. Beckmann bases his infringement contentions, so the Court will not strike
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 8 of 44 PageID #: 72663
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`those opinions.”). Genband argues that Dr. Beckmann did indeed rely upon MS-SRC-000269,
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`which is CFS source code showing that the CFS may pass through certain parameters unaltered
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`from the ICC to the outgoing signaling stacks. (JMOL Resp. at 3.)
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`Second, Metaswitch argues that Dr. Beckmann relied solely on his misinterpretation of
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`deposition testimony from a single Metaswitch engineer, Jon Rowland, to support his analysis of
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`this claim limitation. Mr. Rowland, the Metaswitch engineer, testified that:
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`QUESTION: What happens to the part of the message structure that are SIP-
`specific and not common with NCS?
`ANSWER: So there are two parts to the answer to this.
`The first part, I mentioned earlier that as part of determining how to route the call,
`the ICC component can actually alter the set of information that is associated with
`the SGM message. It may be that some of the information that is SIP-specific is
`only relevant to that call routing and therefore has -- will have been discarded by
`ICC.
`It’s like I’ve seen this parameter that’s only needed so I know how to route the
`call. I can then discard that because I’ve used it for what it was needed for.
`So it may have been removed by ICC. If it hasn’t been removed by ICC and is
`still present in the SGM message structure and memory that the NCS
`signaling stack ultimately looks at, then it will just be discarded because the
`NCS protocol has no way to encode that information.
`(1/13/2016 P.M. Trial Tr. (Roland), Dkt. No. 472 at 56:12–57:5) (emphasis added). Metaswitch
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`argues that Mr. Rowland’s testimony establishes that any parameters that do not map are
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`discarded, not communicated “without alteration” as required by the claim.
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`
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`In contrast, Dr. Beckmann, Genband’s expert, testified that Mr. Rowland’s testimony
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`indicates that:
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`The first thing is that the ICC agent could look at it, and for whatever -- whatever
`reasons -- perhaps it’s processed other information that would mean that it’s
`redundant -- it could discard that.
`The second thing that could happen is the ICC agent could simply pass it
`unchanged to the NCS protocol stack.
`So one thing that indicates is that the ICC agent is making a determination. It’s
`deciding what to do with it.
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 9 of 44 PageID #: 72664
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`The second thing is that there are parts of the information that are not common to
`both the SIP and the NCS signaling stacks that are passed unchanged to the NCS
`signaling stack, even though it may not be able to use it.
`(1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470 at 149:2–13) (emphasis added). The jury
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`was free to consider both the testimony of Dr. Beckmann and Mr. Rowland in evaluating
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`Genband’s infringement analysis of this claim.
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`Furthermore, Dr. Beckmann relied upon a Metaswitch manual that described the
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`functionality of the CFS interworking software, including that certain parameters may be
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`discarded, while others may be passed on. (1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470
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`at 148:15–18) (relying on PX0064 at 559–61.) Genband now objects for the first time that the
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`manual was irrelevant because it was merely draft documentation from 1999, five years before
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`the ’658 Accused Products were released in 2004, describing features that were never
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`implemented in the accused products. Genband’s objection as to relevance with regard to the
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`manual is untimely and is therefore denied.
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`The Court finds that Genband presented sufficient evidence of infringement of the
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`“without alteration” limitation of Claim 1 to support the jury’s verdict. The Court is persuaded
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`that Dr. Beckmann analyzed source code properly—to the extent it was necessary—in support of
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`his infringement testimony, properly presented his expert opinion based on testimony of a
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`Metaswitch engineer, and relied on a properly-admitted technical manual, and accordingly
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`Genband has introduced sufficient evidence to support the jury’s conclusion that the Accused
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`Products practice “communicating first parameter to the second protocol agent without
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`alteration.”
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 10 of 44 PageID #: 72665
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`ii.
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`The “media capabilities description” limitation of Claim 11
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`Next, Genband alleged that Metaswitch performed each of the limitations of independent
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`Claim 11 of the ’658 Patent, which reads as follows:
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`11. A method for interworking devices that communicate using different internet
`protocol (IP) telephony protocols, the method comprising:
`(a) receiving, from a first telephony device, a first message formatted according to
`a first IP telephony protocol;
`(b) in response to receiving the first message, generating a second message,
`formatted according to a second protocol, said second protocol being distinct from
`said first protocol, the second message including at least one of a media
`capabilities description and media stream management information derived from
`the first message;
`(c) transmitting the second message to a second protocol agent; and
`(d) in response to receiving the second message, generating a third message
`formatted according to a third IP telephony protocol, the third message including
`at least one of the media capabilities description and media stream management
`information derived from the second message.
`’658 Patent at Claim 11 (emphasis added). The disputed limitation requires a “media capabilities
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`description.” Id. During trial, Genband’s expert testified that the accused products satisfy this
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`claim limitation based on a Metaswitch technical document describing the internal operation of
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`the ICC and signaling stack components:
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`Q In your opinion, does the CFS and the Integrated Softswitch practice Element
`(b) when it’s used?
`A Yes, that’s my opinion.
`Q The claim continues, the second message, including a said -- at least one of
`media capabilities description and media stream management information derived
`from the first message.
`What was your opinion with respect to this language and the CFS and the
`Integrated Softswitches?
`A Well, I indicate here what type -- what -- what media capabilities refer to. So
`they refer to the type of media -- and remember, that’s the type of content –
`content stream.
`Is it high quality? Is it medium quality? Is it low quality? What is the -- what is
`the bit rate? How fast? How many bits per second are being transferred?
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 11 of 44 PageID #: 72666
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`So it’s capabilities like that that are being referred to here in the media capabilities
`description.
`Q And you cited PX-65 at Page 80 for that?
`A That’s correct.
`Q And are those media capabilities that you described, are those capabilities that
`are supported by the CFS, the Call Feature Server, and the Integrated
`Softswitches?
`(1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470 at 151:20–153:18) (discussing
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`PX0065.0080). However, Metaswitch argues that this “media capabilities description” limitation
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`is necessarily software functionality, and therefore Genband’s discussion of the technical
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`document was insufficient—Genband should have shown that Metaswitch’s products contain
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`software that performs this limitation, but it did not.
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`Genband counters that the Metaswitch manual that Dr. Beckmann cited does describe the
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`software of the infringing products, and there is no per se rule that an expert must analyze source
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`code to opine about patent infringement.
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`The Court is persuaded that Dr. Beckmann’s discussion of the Metaswitch product
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`manual provides sufficient evidence to support the jury’s verdict that that Metaswitch performs
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`the “media capabilities description” element of Claim 11.
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`iii. Performance of each and every step of Claim 11
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`Claim 11 of the ’658 Patent, reproduced above, is a method claim. In order to infringe a
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`method claim, substantial evidence of actual performance of each and every step is required. See
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`Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993). Showing that a product is
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`merely capable of infringing a method claim is not enough. See Fujitsu Ltd. v. Netgear Inc., 620
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`F.3d 1321, 1329 (Fed. Cir. 2010).
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 12 of 44 PageID #: 72667
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`Metaswitch argues that Genband did not present any evidence that Metaswitch or its
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`customers have actually performed all steps of Claim 11, and therefore there is no legally
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`sufficient evidentiary basis to support the jury’s verdict of infringement. (JMOL at 5.)
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`During trial, Dr. Beckmann explained that this claim is directly infringed because
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`Metaswitch practices the method “when they are doing installation and commissioning.”
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`(1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470 at 158:17–20.) Specifically, Dr. Beckmann
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`testified that installation and commissioning of the CFS and Integrated Softswitch products
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`would necessitate use of the software, which constitutes direct infringement:
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`Q If a person does commissioning or testing on a customer’s device, how does
`that relate to your opinions of infringement in this case?
`A When -- when the installation -- if an engineer is doing the installation and
`doing the commissioning of the testing, then that would -- that would -- that
`would necessitate the use of the software that was loaded on to the computer
`readable medium.
`Q Would that be true with respect to the Call Feature Server and the Integrated
`Softswitches?
`A That’s correct.
`(Id. at 105:4–14.) Additionally, Metaswitch engineer Darrin Thomas explained that Metaswitch
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`performs commissioning on “[e]very system that’s sent out,” including the accused products.
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`
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`Unlike the patentee in Mirror Worlds, where the patentee “did not present any evidence
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`of testing” and simply argued that “it was reasonable for the jury to infer that Apple necessarily
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`tested the accused products and performed the patented steps,” Genband introduced evidence
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`that all elements of the method are performed during commissioning, which is done for every
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`CFS and Integrated Softswitch that Metaswitch sells. See Mirror Worlds, LLC v. Apple, Inc., 784
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`F. Supp. 2d 703, 712–13 (E.D. Tex. 2011), aff’d 692 F.3d 1351, 1361 (Fed. Cir. 2012). Having
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`reviewed the evidence and the parties’ arguments, the Court is not persuaded that Genband failed
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`to present substantial evidence that method Claim 11 was practiced and infringed. Accordingly,
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 13 of 44 PageID #: 72668
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`the jury’s verdict is properly supported. Metaswitch’s Motion for Judgment as a Matter of Law
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`with regard to infringement of the ’658 Patent is DENIED.
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`2)
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`Infringement of the ’561 Patent
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`Next, Metaswitch argues that the Court should enter judgment of non-infringement as a
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`matter of law because no jury could have found that Metaswitch infringed the asserted claims of
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`the ’561 Patent. (JMOL at 6.) Metaswitch argues that Genband offered no evidence of a “control
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`channel” and failed to introduce substantial evidence that all IP packets are applied to the proxy
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`or the packet filter. (Id. at 6–11.)
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`i. Control Channel
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`Metaswitch first argues that the evidence establishes that the ’561 Accused Products do
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`not include the claimed “control channel,” as required by asserted claims 6, 17, and 20. (PX-5,
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`’561 Patent.) The independent claims require that the claimed firewall must “apply[] the Internet
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`protocol packets associated with the signaling channel and the control channel to the application
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`proxy.” (Id. at Claims 1, 17.) Metaswitch argues that Genband’s expert, Dr. Beckmann,
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`acknowledged that the claims identify a control channel separate from a signaling channel and
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`that applying the control channel to the application proxy is a requirement of the claim. (JMOL
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`at 6–7) (citing 1/13/2016 A.M. Trial Tr. (Beckmann), Dkt. No. 471 at 6:19–22, 27:13–21.)
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`Metaswitch points to testimony by Metaswitch’s expert, Dr. Williams, that the ’561 Accused
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`Products have a signaling channel and a bearer channel, but do not include the required “control
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`channel.” (JMOL at 7) (citing 1/14/2016 A.M. Trial Tr. (Williams), Dkt. No. 543 at 93:3–5.)
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`Metaswitch argues that Genband’s expert, Dr. Beckmann, faced with no evidence of
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`infringement, tried to advance a new infringement theory on cross-examination that the ’561
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`Accused products might infringe because the claimed “control channel” could be the same
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`channel as the separately claimed “signaling channel.” Metaswitch argues that Dr. Beckmann’s
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 14 of 44 PageID #: 72669
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`testimony was inconsistent with his expert report and previous testimony, where he said that the
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`“signaling channel” and “control channel” are not the same channel. (JMOL at 7–8) (citing
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`1/13/2016 A.M. Trial Tr. at 24:5–16, 8:2–4, 22:13–22, 23:19–24:4, 28:2–18.) Further,
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`Metaswitch argues that Dr. Beckmann was impeached on cross-examination confirming that he
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`had not presented any infringement theory under which the ’561 Accused Products have separate
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`control and signaling channels, as required by the claims. (Id.) Metaswitch contends that Dr.
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`Beckmann’s testimony is inconsistent, contradictory, and impeached, and therefore does not
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`meet the “substantial evidence” threshold required to survive a Rule 50 motion. (JMOL at 8)
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`(citing The Johns Hopkins Univ. v. Datascope Corp., 543 F.3d 1342, 1345–48 (Fed. Cir. 2008);
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`ParkerVision, Inc. v. Qualcomm Inc., 621 Fed. App’x 1009, 1013–14 (Fed. Cir. 2015)). Finally,
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`Metaswitch argues that its own expert, Dr. Williams, presented unrebutted evidence that ’561
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`Accused Products do not include the required control channel that must be applied to the
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`application proxy, and even explained why the asserted claims require three channels, while the
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`’561 Accused Products only use two. Accordingly, Metaswitch argues, there was no evidence
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`presented at trial of a control channel in the ’561 Accused Products, and therefore the jury
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`verdict of infringement cannot stand.
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`In response, Genband argues that the jury had a sufficient basis to reasonably conclude
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`that the infringing products satisfy this claim limitation, and that Genband did indeed present
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`evidence of a control channel. (JMOL Resp. at 6.) Specifically, Genband argues that Dr.
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`Beckmann explained during direct examination that, although his testimony and demonstratives
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`focus on the “signaling channel,” the portion of the accused products that handles call signaling
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`(referred to as DC-SIG) also handles call control and thus includes a control channel. (JMOL
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`Resp. at 6) (citing 1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470 at 36:6–25) (discussing
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 15 of 44 PageID #: 72670
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`PX-522.11, which describes the call signaling plane as comprising separate layers that handle
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`both signaling and control packets). Furthermore, Genband argues that there is no support for
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`Metaswitch’s argument that the control channel and signaling channel must be “separate and
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`distinct,” meaning that they cannot be communicated on the same physical wire. (JMOL Resp. at
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`7.) The parties agreed that the claim term “channel” should be construed as “stream of packets”
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`but did not restrict each channel to be on a separate physical wire. (Dkt. No. 135 at 68.) Indeed,
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`Dr. Beckmann testified that two channels can be “multiplexed into a single channel [sic, control]
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`and signaling stream,” in which case the terms signaling and control identify “which Internet
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`Protocol packets” make up each of the two channels applied to the application proxy. (JMOL
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`Resp. at 7) (citing 1/13/2016 A.M. Trial Tr. (Beckmann), Dkt. No. 471 at 24:7–21.) Genband
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`further distinguishes Metaswitch’s citations to Johns Hopkins and ParkerVision from this case,
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`arguing that here Dr. Beckmann did provide an opinion and consistent supporting evidence for
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`the claim element at issue (unlike Johns Hopkins), and Dr. Beckmann did not recant any of his
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`previous testimony (unlike ParkerVision).
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`Metaswitch’s position misreads the “channel” limitation of the patent and overly narrows
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`the meaning of that term. As the parties agreed, the construction of “channel” is simply a “stream
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`of packets,” and the construction of channel is not limited to a single wire. Genband presented
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`sufficient evidence at trial that the ’561 Accused Products include a call signaling plane that
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`contains separate layers that handle both signaling and control packets, and that these packets
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`may be multiplexed and subsequently communicated on the same physical wire. (PX-522;
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`1/12/2016 P.M. Trial Tr. (Beckmann), Dkt. No. 470 at 36:6–25). The jury was free to evaluate
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`the credibility of the testimony of both Dr. Beckmann and Dr. Williams, and the evidence
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`Case 2:14-cv-00033-JRG Document 581 Filed 09/29/16 Page 16 of 44 PageID #: 72671
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`supports the jury’s finding that the ’561 Accused Products meet the “control channel” limitation
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`of the independent claims.
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`ii. Whether all IP packets are applied to the proxy or the packet filter
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`Next, Metaswitch argues that Genband failed to introduce substantial evidence that all IP
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`packets are applied to the proxy or the packet filter. Specifically, Metaswitch argues that the
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`accused Perimeta product’s rate limiting and congestion control capabilities require the Court to
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`set aside the jury’s finding of infringement because, as a result of those features, not all IP
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`packets are applied to an application proxy or packet filter, as the claims require. (JMOL at 9–
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`10.)
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`The Court construed the asserted claim limitations as follows:
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`Claim Term
`the Internet protocol packets
`applying
`associated with the bearer channel to [a /
`the] packet filter
`[’561 Patent, Claims 6 [Claim 1], 17]
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`Court’s Construction
`applying, for the setup, duration, and take
`down of the real-time Internet application, all
`IP packets associated with the bearer channel
`to the packet filter
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`the Internet protocol packets
`applying
`associated with the signaling channel and
`control channel to [an / the] application
`proxy
`[’561 Patent, Claims 6 [Claim 1], 17]
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`applying, for the setup, duration, and take
`down of the real-time Internet application, all
`the signaling
`IP packets associated with
`channel and control channel to the application
`proxy
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`See (Dkt. No. 135 at 19–20; Dkt. No. 310 at 17) (emphasis added).
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`Specifically, the Court specified in bo