Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 1 of 30
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CASE NO. 6:21-cv-00665-ADA
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`JURY TRIAL DEMANDED
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`CASE NO. 6:21-cv-00667-ADA
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`JURY TRIAL DEMANDED
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`CASE NO. 6:21-cv-00668-ADA
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`JURY TRIAL DEMANDED
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`META PLATFORMS, INC. and
`WHATSAPP LLC,1
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`Defendants.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC., et al.,
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`Defendants.
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`1 Defendants have filed a notice of name change and unopposed motion to correct the docket in
`Case No. 6:21-cv-00665-ADA.
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 2 of 30
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`CASE NO. 6:21-cv-00672-ADA
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`JURY TRIAL DEMANDED
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`CASE NO. 6:21-cv-00674-ADA
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`JURY TRIAL DEMANDED
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`VERIZON COMMUNICATIONS, INC.,
`et al.,
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`Defendants.
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`T-MOBILE USA, INC.,
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`Defendant.
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`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 3 of 30
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`TABLE OF CONTENTS
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`Page
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`“roaming” (’234 patent, claims 1, 19, 28, 30, 46, 62; ’721 patent, claims
`
`INTRODUCTION ............................................................................................................. 1
`BACKGROUND OF THE PATENTS .............................................................................. 1
`AGREED CLAIM CONSTRUCTIONS ........................................................................... 2
`ARGUMENT ..................................................................................................................... 2
`A.
`34, 49) .................................................................................................................... 2
`B.
`“callee identifier” (’234 patent, claims 1, 11, 20, 25, 28, 30, 46, 62) .................... 5
`C.
`40) .......................................................................................................................... 7
`D.
`77, 103, 104, 135) .................................................................................................. 9
`77, 103, 124, 135, 138-40) ..................................................................................... 9
`E.
`62, 70; ’721 patent, claims 63, 109) ..................................................................... 10
`F.
`“local call” (’234 patent, claims 1, 11, 20) .......................................................... 12
`G.
`(’234 patent, claim 11) ......................................................................................... 14
`H.
`patent, claim 46) ................................................................................................... 16
`I.
`“gateway” (’721 patent, claims 1, 20, 38, 51, 77, 103, 133) ............................... 18
`CONCLUSION ................................................................................................................ 20
`
`“access code” (’234 patent, claims 1, 10, 11, 19-21, 25, 28, 30-33, 38, 40,
`43, 45-48, 54, 61, 62, 64, 65, 70, 72, 75; ’721 patent, claims 1, 14, 16, 20,
`34, 38, 39, 46, 49-51, 57, 63, 77, 103, 104, 109, 110, 124, 130, 135, 138-
`
`“access code request message” (’234 patent, claims 1, 10, 11, 19-21, 28,
`30, 31, 40, 46, 47, 62, 72; ’721 patent, claims 1, 16, 20, 34, 38, 39, 49-51,
`
`“access code reply message” (’234 patent, claims 1, 10, 11, 19, 20, 25, 28,
`30, 43, 45, 46, 61, 62, 75; ’721 patent, claims 1, 16, 20, 34, 38, 46, 49-51,
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`“pool of access codes” (’234 patent, claims 1, 11, 20, 30, 38, 46, 54, 57,
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`“means for initiating a call using said access code to identify the callee”
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`“means for selecting said access code from a pool of access codes” (’234
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`
`
`I.
`II.
`III.
`IV.
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`V.
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`-i-
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 4 of 30
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`
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`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
`637 F.3d 1324 (Fed. Cir. 2011)..................................................................................................6
`
`In re Aoyama,
`656 F.3d 1293 (Fed. Cir. 2011)................................................................................................18
`
`Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)..........................................................................................16, 17
`
`Kumar v. Ovonic Battery Co.,
`351 F.3d 1364 (Fed. Cir. 2003)............................................................................................4, 20
`
`Legends, Inc. v. Upper Deck Co.,
`No. H-09-3463, 2010 WL 4817050 (S.D. Tex. Nov. 17, 2010) ................................................3
`
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016)..............................................................................................5, 6
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`347 F.3d 1367 (Fed. Cir. 2003)..................................................................................................7
`
`O2 Micro Int’l v. Beyond Innovation Tech.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................4, 20
`
`Proveris Sci. Corp. v. Innovasys., Inc.,
`739 F.3d 1367 (Fed. Cir. 2014)..................................................................................................2
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370 (Fed. Cir. 2017)..................................................................................................5
`
`Retractable Techs., Inc. v. Becton, Dickinson & Co.,
`653 F.3d 1296 (Fed. Cir. 2011)................................................................................................10
`
`SIMO Holdings Inc. v. H.K. uCloudlink Network Tech. Ltd.,
`983 F.3d 1367 (Fed. Cir. 2021)..................................................................................................2
`
`TiVo, Inc. v. EchoStar Commc’ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008)................................................................................................11
`
`Statutes
`
`35 U.S.C. § 112(b) .........................................................................................................................14
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`-ii-
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 5 of 30
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`I.
`
`INTRODUCTION
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`The primary claim construction disputes between the parties regarding asserted U.S. Patent
`
`Nos. 8,630,234 (Ex. 12) (“the ’234 patent”) and 10,880,721 (Ex. 2) (“the ’721 patent”) concern
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`technical terms that will either not have a known meaning to a lay jury or are prone to different
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`interpretations across different generations of jurors. Defendants have proposed constructions
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`supported by the intrinsic evidence and consistent with the meaning of the terms in the art, where
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`the disputed terms have such a defined meaning. Plaintiff’s repeated proposal of “plain and
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`ordinary meaning” fails to inform the jury of what the terms mean and will lead to improper claim
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`construction disputes at trial. The Court should thus define the disputed terms.3
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`II.
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`BACKGROUND OF THE PATENTS
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`The ’234 and ’721 patents relate to the field of telecommunications and, more specifically,
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`to initiating a mobile phone call. Ex. 1, 1:11-14.4 Traditional long-distance calls cost more than
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`local calls. Id., 1:16-17. A common technique to avoid long-distance charges was to use a “calling
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`card,” which would provide, for example, a local or toll-free number that a user could call to avoid
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`long-distance charges. Id., 1:20-26. But, as the applicant explains, the use of a calling card can
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`be complicated and cumbersome. Id., 1:28-32.
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`The ’234 and ’721 patents describe an alternative way to avoid long-distance charges on a
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`mobile device. In the disclosed system, a mobile caller enters the callee’s number. The phone
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`service receives the callee number, assigns it a temporary local number owned by the phone
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`2 Unless otherwise noted, all exhibit citations refer to exhibits to the declaration of Robert W.
`Unikel, filed concurrently herewith.
`3 The parties also disagree as to the corresponding structure for certain means-plus-function terms,
`some of which are briefed below. Other disputed means-plus function terms are not briefed here
`due to the Court’s limits. Pursuant to the Court’s February 18, 2022 email order, Defendants
`intend to address the additional means-plus-function terms later in the case.
`4 Defendants cite to the ’234 patent specification, but the ’721 patent specification is materially
`identical.
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 6 of 30
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`service, and returns that number to the mobile caller. Id., 11:34-13:04. The mobile device can
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`then use that local intermediary number to initiate a call to the callee. Id. By placing the call
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`through the local intermediary number, long-distance charges can be avoided.
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`III. AGREED CLAIM CONSTRUCTIONS
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`The parties agree on the claim constructions identified in Appendix A.
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`IV. ARGUMENT
`A.
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`“roaming” (’234 patent, claims 1, 19, 28, 30, 46, 62; ’721 patent, claims 34, 49)
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`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
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`Defendants’ Proposed Construction
`Preamble is limiting. Plain and ordinary
`meaning of “roaming” is “being in another
`mobile telephone service provider’s network
`and not the mobile telephone’s home network”
`
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`The preambles in these claims are limiting because they are “necessary to give life,
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`meaning, and vitality” to the claims. Proveris Sci. Corp. v. Innovasys., Inc., 739 F.3d 1367, 1372–
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`73 (Fed. Cir. 2014). These preambles give the claims meaning because they provide antecedent
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`basis for other claim elements:
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`● The preambles of claims 1, 19, 28, 30, 46, and 62 of the ’234 patent recite “roaming
`[by/with] a mobile telephone” or “mobile telephone roaming,” which provide antecedent
`basis for “the mobile telephone” recited later in those claims.5 Proveris, 739 F.3d at 1373
`(finding a preamble limiting because its “producing image data” provided antecedent basis
`for “the image data” recited later).
`● The preambles of claims 34 and 49 of the ’721 patent recite “roaming by a wireless
`apparatus,” which provides antecedent basis for “the wireless apparatus” recited later in
`those claims.
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`The Federal Circuit has “repeatedly held a preamble limiting when it serves as antecedent basis
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`for a term appearing in the body of a claim.” SIMO Holdings Inc. v. H.K. uCloudlink Network
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`Tech. Ltd., 983 F.3d 1367, 1375 (Fed. Cir. 2021).
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`5 All emphasis added and internal drawing references omitted, unless otherwise noted.
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`The prosecution history also shows that the preamble is limiting due to the “roaming”
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`element itself. During the ’234 patent’s prosecution, the applicant amended the preamble of
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`representative claim 1 to require “roaming with a mobile telephone,” striking language that merely
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`required “initiating a call to a callee using a mobile telephone.” Ex. 3 (May 24, 2013 Resp. to
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`NFOA), VOP0008174. If the preamble is not construed to be limiting, then the claimed method
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`could still be directed to any “call to a callee”—whether roaming or not—which the applicant
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`expressly disclaimed during prosecution. Moreover, prior art mobile phone systems that “charge
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`significant fees” for roaming were expressly distinguished in the Background (Ex.1, 1:15-19),
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`further evidencing that the claims were limited to purported improvements in methods and systems
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`for roaming specifically. Legends, Inc. v. Upper Deck Co., No. H-09-3463, 2010 WL 4817050, at
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`*4–6 (S.D. Tex. Nov. 17, 2010) (holding that preamble was limiting where, “in the Background
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`section, the patentee distinguished prior art”).
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`The preambles of all of the independent claims identified above recite the term “roaming.”
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`The plain and ordinary meaning of “roaming” in the call routing field is “being in another mobile
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`telephone service provider’s network and not the mobile telephone’s home network.” During
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`prosecution, the applicant described “conventional roaming” as involving “engaging other mobile
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`telephone service providers” in a way to cause an “associated loss of revenue by the home service
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`provider.” This only occurs when a user’s phone is connected to another mobile telephone service
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`provider’s network and not to the user’s home network. Ex. 3 (May 24, 2013 Resp. to NFOA),
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`VOP0008208-09. Defendants’ construction is also taken nearly verbatim from the specification,
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`which states: “Mobile telephone service providers often charge significant fees for long distance
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`telephone calls, particularly when the mobile telephone is roaming in another mobile telephone
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`service provider’s network.” Ex. 1, 1:16-19.
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 8 of 30
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`Additional intrinsic evidence further supports Defendants’ construction. During
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`prosecution, the applicant submitted the Wikipedia entry for “Roaming” to the Examiner, making
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`that document intrinsic evidence. Ex. 4 (Sept. 13, 2013 IDS), VOP0008080; Kumar v. Ovonic
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`Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). Wikipedia (Ex. 5) defined “Roaming” as
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`follows:
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`[R]oaming is a general term referring to the extension of connectivity service in a
`location that is different from the home location where the service was registered.
`. . . Traditional GSM [Global System for Mobile Communications] roaming is
`defined (cf. GSM Association Permanent Reference Document AA.39) as the
`ability for a cellular customer to automatically make and receive voice calls, send
`and receive data, or access other services, including home data services, when
`traveling outside the geographical coverage area of the home network, by means
`of using a visited network.
`Plaintiff’s extrinsic evidence also supports Defendants’ construction. Plaintiff cited
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`
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`“Understanding Telecommunications Networks” for its view that no construction is needed. That
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`reference states “a call between two terminals belonging to mobile network A, but [where] the
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`second terminal has moved temporarily onto (i.e. visiting) mobile network B [is] a process known
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`as ‘roaming.’” Ex. 6, VOP0009420. Defendants’ construction adopts the recognized
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`understanding of the term as reflected in the intrinsic and extrinsic evidence.
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`Plaintiff proposes “plain and ordinary meaning,” without specifying what that plain and
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`ordinary meaning is, nor explaining whether Defendants’ proposed construction is or is not the
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`plain and ordinary meaning. Plaintiff’s lack of construction would only cause confusion and
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`disputes over the meaning of this term, particularly for younger jurors who have not seen roaming
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`charges on cell phone bills. See O2 Micro Int’l v. Beyond Innovation Tech., 521 F.3d 1351, 1360
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`(Fed. Cir. 2008).
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 9 of 30
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`B.
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`“callee identifier” (’234 patent, claims 1, 11, 20, 25, 28, 30, 46, 62)
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`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
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`“Callee identifier” is not an industry term that has a single meaning to a POSITA. The jury
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`Defendants’ Proposed Construction
`“telephone number, and not a username”6
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`will thus need guidance in applying this term to the accused instrumentalities and prior art.
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`Defendants’ construction provides this guidance and should be adopted because it is consistent
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`with the claim language and is required by the specification and prosecution history.
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`First, Defendants’ construction is required by the prosecution history. To overcome prior
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`art rejections, the applicant repeatedly defined the callee identifier as a “number” through the use
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`of “i.e.” Ex. 3 (May 24, 2013 Resp. to NFOA), VOP0008204-05 (“callee identifier (i.e., dialed
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`number)”). Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1376 (Fed. Cir.
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`2017) (“A patentee’s use of ‘i.e.,’ in the intrinsic record, however, is often definitional.”). The
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`applicant should be bound by its definition of “callee identifier” as a number.
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`Second, the specification contains a clear and unmistakable disavowal of claim scope
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`limiting the “callee identifier” to a telephone number and not a username. Any construction must
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`reflect this to prevent recapture by the patent owner of what was disclaimed. Luminara Worldwide,
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`LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). The specification states that,
`
`while embodiments covered by a separate patent application disclose a callee identifier that
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`includes a username, the invention, as a whole, in this specification does not. Ex. 1, 29:61-64 (“In
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`alternative embodiments, such as those illustrated [in a separate patent application] an additional
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`6 Defendant Google LLC (“Google”) does not join the other Defendants’ proposed construction
`and instead believes that this term does not require construction.
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`block . . . may determine whether the callee identifier is a valid username.”).7 But the specification
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`is clear that “in the embodiment disclosed herein, the callee identifier is assumed to be a
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`telephone number of the callee, and not a username.” Id., 29:61-67. The Federal Circuit has
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`repeatedly held that “a statement in a specification that describes the invention as a whole can
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`support a limiting construction of a claim term.” Am. Piledriving Equip., Inc. v. Geoquip, Inc.,
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`637 F.3d 1324, 1334 (Fed. Cir. 2011); Luminara Worldwide, 814 F.3d at 1353 (“We have found
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`disavowal or disclaimer based on clear and unmistakable statements by the patentee that limit the
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`claims, such as . . . ‘all embodiments of the present invention are . . . .’” (citations omitted)). The
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`applicant, in describing this single embodiment, limited the scope of “callee identifier” to
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`telephone numbers and not a username.
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`The specification’s remaining passages also exclusively describe the “callee identifier” as a
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`telephone number. For example, the specification is clear that “[a] callee identifier associated with
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`one of the channels 20, 22, and 24 may be a telephone number of a PSTN telephone 32 . . . or it
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`may be a telephone number of a VoIP telephone 36 . . . .” Ex. 1, 9:63–10:1; see also, e.g., id.,
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`FIGs. 10, 14, and 17; 11:39-41; 18:38-46. Next, the specification consistently describes the
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`username as separate from the callee identifier. See, e.g., id., 11:59-62 (“The access code request
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`message 110 includes a username field 112, a password field 114, a callee identifier field 116, and
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`a caller identifier field 118.”); FIG. 4 (username 112 and callee identifier 116). The applicant’s
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`statements disavowing claim scope and the consistent use of “callee identifier” as a telephone
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`number—and not a username—support Defendants’ construction.
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`7 The embodiment disclosed in that separate application does not describe or use access code
`requests or reply messages, and therefore the “callee identifier” referenced in that application is
`used for a different purpose than the “callee identifier” in the asserted claims of the ’234 patent.
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 11 of 30
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`Finally, Defendants’ construction is also consistent with the use of the phrase “callee
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`identifier” in the claims, which do not include the term username or describe any such
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`functionality.
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`C.
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`“access code” (’234 patent, claims 1, 10, 11, 19-21, 25, 28, 30-33, 38, 40, 43, 45-
`48, 54, 61, 62, 64, 65, 70, 72, 75; ’721 patent, claims 1, 14, 16, 20, 34, 38, 39, 46,
`49-51, 57, 63, 77, 103, 104, 109, 110, 124, 130, 135, 138-40)
`
`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“code used by the [mobile telephone / wireless device
`/ wireless apparatus] in place of the callee identifier”
`
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`Defendants’ construction of “access code” provides clarity to the jury by defining the
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`requisite relationship between the “callee identifier” and “access code.” Defendants’ construction
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`of “access code” additionally ensures that the term is defined in a manner consistent with the
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`specifications and prosecution histories of the ’234 and ’721 patents. Merck & Co. v. Teva Pharms.
`
`USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003) (construction must be consistent with
`
`specification).
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`While “access code” does have an established “plain and ordinary meaning” in the
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`telecommunications field, the patents do not use the term consistent with that meaning. The “plain
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`and ordinary meaning” of “access code” is “[t]he preliminary digits that a user must dial to be
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`connected to a particular outgoing trunk group or line.”8 Ex. 7, DEFS-VOIP-2021-CC-00000052
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`(defining “access code”). Based on the inclusion of the word “preliminary” in this definition, a
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`POSITA would understand that the preliminary digits referenced in the plain and ordinary meaning
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`of “access code” do not comprise the entirety of a phone number and are, instead, just a portion of
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`a phone number. An “area code” is understood to be an example of these preliminary digits. See
`
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`8 Plaintiff proposed an unspecified “plain and ordinary meaning” for this term but does not clarify
`what that plain and ordinary meaning is or whether it aligns with the Federal Standard.
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`id., DEFS-VOIP-2021-CC-00000053 (defining “area code” and referencing “access code”). In
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`the patents, however, “access code” does not mean “area code” or analogous preliminary digits.
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`Instead, the patents explain that the access code identifies a particular channel (e.g., the service
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`provider’s telephone number) to initiate a call, rather than the preliminary digits of a trunk line or
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`group. Ex. 1, 13:40-42 (“the access code . . . is a telephone number identifying a channel 20, 22,
`
`or 24”).
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`Moreover, throughout the specifications, “access code” is exclusively identified as a code
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`that is both different from a “callee identifier” and used by a mobile telephone. For example, the
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`patents explain that “the access code is different from the callee identifier . . . in that the access
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`code identifies a channel, other than that provided by the callee identifier provided by the dialing
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`function . . . that the mobile telephone [] can use to initiate a call to the callee.” Id., 12:66-13:4.
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`This explanation is repeated and supported throughout the specifications. See, e.g., id., 14:34-37
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`(“[T]he access code is different from the callee identifier . . . and is usable by the mobile telephone
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`[] to initiate a call to the callee using the channel . . . .”).
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`
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`Further, during operations where the access code is used to place a call, both the patent
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`specifications and the ’234 patent’s prosecution history clarify that the access code is used instead
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`of the callee identifier. The specifications explain that, while conventional calling processes
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`directly place a call using a callee identifier, the purported improvement of the invention instead
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`uses an access code in place of the callee identifier to avoid long-distance or roaming charges. Id.,
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`13:5-8 (“[T]he access code facilitates avoidance of long-distance or roaming charges that a mobile
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`telephone service provider would charge for a call placed directly using the callee identifier . . . .”).
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`And during prosecution of the ’234 patent, the applicant confirmed that this feature—i.e., the use
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`of an access code instead of a callee identifier—is core to the purported invention. Specifically,
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`in summarizing the method claimed in the then-pending claims, the applicant explained that “the
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`mobile phone automatically dials the access code” and that this process “occurs transparently to
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`the user and the user may have no idea the mobile telephone is actually calling a different number
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`than the one associated with the contact in the contact list [i.e., a callee identifier].” Ex. 3,
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`VOP0008208 (May 24, 2013 Resp. to NFOA).
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`In short, the meaning of “access code” is clear, and it cannot be construed in a manner that
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`encompasses a callee identifier. While conventional calling processes use a callee identifier (such
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`as the callee’s phone number) to directly place a call, these calls may be prone to additional long-
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`distance or roaming charges, a problem that the applicant sought to avoid. To rectify this, the
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`disclosure requires the use of an access code instead of a callee identifier to initiate a call.
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`D.
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`“access code request message” (’234 patent, claims 1, 10, 11, 19-21, 28, 30, 31,
`40, 46, 47, 62, 72; ’721 patent, claims 1, 16, 20, 34, 38, 39, 49-51, 77, 103, 104,
`135)
`
`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“message sent from the [mobile device /
`wireless device / wireless apparatus] and
`received by the access server”9
`
`
`
`“access code reply message” (’234 patent, claims 1, 10, 11, 19, 20, 25, 28, 30,
`43, 45, 46, 61, 62, 75; ’721 patent, claims 1, 16, 20, 34, 38, 46, 49-51, 77, 103,
`124, 135, 138-40)
`
`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“message sent from the access server and
`received by the [mobile device / wireless device
`/ wireless apparatus]”10
`
`
`
`
`9 Google and Amazon do not join the other Defendants’ proposed construction and instead agree
`with Plaintiff’s proposed construction.
`10 Google and Amazon do not join the other Defendants’ proposed construction and instead agree
`with Plaintiff’s proposed construction.
`
`- 9 -
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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 14 of 30
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`Plaintiff seeks construction of the terms “access code request message” and “access code
`
`reply message,” but proposes that these terms be prescribed their plain and ordinary meaning,
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`without explaining what that meaning is. Defendants believe no construction is necessary at this
`
`time.
`
`To the extent any construction is needed, the plain claim language requires Defendants’
`
`constructions, and Plaintiff has not explained whether or how Defendants’ constructions differ
`
`from the plain and ordinary meaning, seemingly seeking to preserve ambiguity. Plaintiff seems to
`
`contend that, at least for some claims, the sender and recipient can be some (unspecified) other
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`device. Neither the specification nor the claims themselves permit that result. Defendants request
`
`the Court confirm as much, which will avoid ambiguity and later disputes on this issue.
`
`E.
`
`“pool of access codes” (’234 patent, claims 1, 11, 20, 30, 38, 46, 54, 57, 62, 70;
`’721 patent, claims 63, 109)
`
`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“table containing access codes for exclusive
`association with a [callee identifier / destination
`node identifier]”11
`
`
`Defendants’ construction of “pool of access codes” provides clarity to the jury by defining,
`
`in a manner consistent with the specifications, a term that has no plain and ordinary meaning. In
`
`particular, Defendants’ construction prevents potential confusion by capturing what the
`
`specifications plainly require: each access code stored in the “pool” of access codes is exclusively
`
`associated with a particular callee identifier. Defendants’ proposed construction captures the scope
`
`of the purported invention and is consistent with the specifications. Retractable Techs., Inc. v.
`
`Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“[W]e strive to capture the scope
`
`
`11 Google does not join the other Defendants’ proposed construction and instead believes that this
`term does not require construction.
`
`- 10 -
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`

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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 15 of 30
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`of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments
`
`. . . .”).
`
`As described above, the core purpose of the purported invention of the ’234 and ’721
`
`patents was to cause a mobile phone to place a call to a local phone number (e.g., “access code”)
`
`rather than a long-distance phone number (e.g., “callee identifier”). To do so, the specifications
`
`temporarily assign a provider-owned local telephone number (“access code”) to a callee identifier
`
`(the originally inputted telephone number, which may be a long-distance telephone number). As
`
`the ’234 patent specification explains, “the access code is different from the callee identifier . . . in
`
`that the access code identifies a channel . . . that the mobile telephone [] can use to initiate a call
`
`to the callee.” Ex. 1, 12:66-13:4. If the same access code were assigned to multiple different
`
`callees, then the system would be unable to determine which callee the caller was attempting to
`
`reach. Thus, an access code in the claimed pool of access codes must be associated exclusively
`
`with only one other callee identifier at any given time. This association is required for operability.
`
`Common sense additionally requires that the association between access codes and callees must
`
`be exclusive. If an access code were simultaneously assigned to multiple callee identifiers, the
`
`access code would be inoperable to initiate a call, as there would be no indication of which callee
`
`identifier is associated with the intended callee.
`
`Indeed, in the patent specifications, a “pool of access codes,” otherwise referenced as an
`
`“access code association table,” is described with respect to FIG. 10. The patent specifications
`
`explain that “each access code may identify a [singular] respective telephone number.” Id., 17:35-
`
`36. By using the singular “a,” the patent specifications require that each access code only be
`
`associated with a single telephone number. TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d
`
`1290, 1303 (Fed. Cir. 2008) (“[T]he question whether ‘a’ or ‘an’ is treated as singular or plural
`
`depends heavily on the context of its use. The general rule [of interpreting “a” or “an” as “one or
`
`- 11 -
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`

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`Case 6:21-cv-00667-ADA Document 37 Filed 03/14/22 Page 16 of 30
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`more”] does not apply when the context clearly evidences that the usage is limited to the singular.”
`
`(citations omitted)).
`
`
`
`The only algorithm for assigning access codes described in the patent ensures that each
`
`access code can only be associated with a single callee identifier at a time. The table that represents
`
`the “pool” of access codes includes, for each access code, a field where a single callee identifier
`
`can be written. Ex. 1, FIG. 10; 18:38-46. The algorithm that assigns access codes ensures that a
`
`callee identifier is associated with an access code only if no other callee identifier has claim to it.
`
`Id., 20:40-46 (“Essentially the process 270 determines whether . . . the access code is currently
`
`available for association with a callee identifier.”), 21:10-13.
`
`F.
`
`“local call” (’234 patent, claims 1, 11, 20)
`
`Plaintiff’s Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`Plain and ordinary meaning, which is “call
`within the PSTN local calling area of the mobile
`telephone”
`
`
`Defendants’ construction of “local call” as a “call within the PSTN local calling area of the
`
`mobile telephone” is the plain and ordinary meaning of the term and supported by the ’234 patent
`
`specification. In the context of telephony, a local call has an understood meaning of “[a]ny call
`
`for which an additional charge, i.e., toll charge, is not made to the cal