Klausner Technologies, Inc. v. Vonage Holdings Corp. et al, No. 2:06-cv-00275 (E.D. Tex. Aug. 7, 2007)

This claim construction opinion construes terms in U.S. Patent No. 5, 572, 576 (“the “576

- patent”). Plaintiff Klausner Technologies, Inc. (“Klausner”) accuses Defendants Vonage Holdings

Corp. and Vonage America, Inc. (collectively “Vonage”) of infringing Claims 3 and 4! of this patent.

The Patent

The ‘576 patent describes, and the asserted claims 3 and 4 recite, a method of automatically

answering incoming telephone calls and storing and retrieving information from the incoming

telephone calls. The method utilizes a telephone answering device that includes a memory and is

coupled to atelephone. The method involves, in general terms, receiving signals that specify a caller

and receiving a voice message from the caller. The voice message is stored in the memory of the

telephone answering device, and the signals specifying the caller are linked to the voice message.

The signals specifying the caller, having been linked to the voice message, may be transmitted to a

‘Claim 4 depends from Claim 3 and, therefore, the terms construed below apply to Claim 4 as well.

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“user remote access device” and may assist in the selective retrieval of the stored voice message.

When a voice message is selected, it is transmitted to the “user remote access device.” The

described method allows a user to select which voice messages he or she is interested in retrieving

and provides for the playback of the selected voice message(s).

Applicable Law

s a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to “It i

which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312

(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381

11, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s intrinsic F.3d 11

define the scope of the patented invention. See id.; C.R. Bard, Inc. v. U.S. Surgical evidence to

F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Comme ‘ns Group, Corp., 388

F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes the claims themselves, Inc., 262

ation, and the prosecution history. See Phillips, 415 F.3d at 1314; CR. Bard, Inc., 388 the specific

Courts give claim terms their ordinary and accustomed meaning as understood by one F.3d at 861.

skill in the art at the time of the invention in the context of the entire patent. Phillips, of ordinary

d at 1312-13; Alloc, Inc. v. Int’l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). 415 F.3

e claims themselves provide substantial guidance in determining the meaning of particular Th

ms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim can be very claim ter

d. Other asserted or unasserted claims can also aid in determining the claim’s meaning instructive. J

m terms are typically used consistently throughout the patent. /d. Differences among because clai

terms can also assist in understanding a term’s meaning. Jd. For example, when a the claim

laim adds a limitation to an independent claim, it is presumed that the independent claim dependent c

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does not include the limitation. /d. at 1314-15.

be read in view of the specification, of which they are a part.” Id. (quoting Claims “must

an vy. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995)). “{T]he specification Markm

vant to the claim construction analysis. Usually, it is dispositive; it is the single ‘is always highly rele

ing of a disputed term.”” Jd. (quoting Vitronics Corp. v. Conceptronic, Inc., best guide to the mean

d. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 90 F.3d 1576, 1582 (Fe

his is true because a patentee may define his own terms, give a claim term a (Fed. Cir. 2002). T

the term would otherwise possess, or disclaim or disavow certain claim different meaning than

F.3d at 1316. In these situations, the inventor’s lexicography governs. Id, scope. Phillips, 415

n may resolve any ambiguity in the meaning of claim terms “where the ordinary Also, the specificatio

aning of the words used in the claims lack sufficient clarity to permit the scope and accustomed me

scertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. But, of the claim to be a

cation may aid the court in interpreting the meaning of disputed claim language, “although the specifi

s and examples appearing in the specification will not generally be read into particular embodiment

mmens, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998); see also the claims.” Comark Co

1323. The prosecution history is another tool to supply the proper context for Phillips, 415 F.3d at

patent applicant may also define a term in prosecuting the patent. claim construction because a

an, Inc., 381 ¥.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of Home Diagnostics, Inc. v. Lifesc

e specification, a patent applicant may define a term in prosecuting a patent.”). th

ce can be useful, it is “less significant than the intrinsic record in Although extrinsic eviden

y operative meaning of claim language.” Phillips, 415 F.3d at 1317 (quoting determining ‘the legall

. Technical dictionaries and treatises may help a court understand C.R. Bard, Inc., 388 F.3d at 862)

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ying technology and the manner in which one skilled in the art might use claim terms, but the underl

dictionaries and treatises may provide definitions that are too broad or may not be technical

of how the term is used in the patent. Jd. at 1318. Similarly, expert testimony may aid indicative

g the underlying technology and determining the particular meaning ofa term a court in understandin

an expert’s conclusory, unsupported assertions as to a term’s definition is in the pertinent field, but

a court. Jd. Generally, extrinsic evidence is “less reliable than the patent and entirely unhelpful to

its prosecution history in determining how to read claim terms.” Jd.

The Terms

sue are:? “automatically answering incoming telephone calls,” “telephone The terms at is

led to a telephone,” “first signals,” “corresponding voice message,” “user answering device,” “coup

transmitting said received first signals to a user remote access device,” and remote access device,” “

emote access device at least one specific voice message linked to a specific “transmitting to a user r

one of said received first signais.”

1, “automatically answering incoming telephone calls”

rm need not be construed while Vonage contends that this term Klausner believes this te

sensing an incoming ring signal on the called party’s telephone line should be construed to mean “

ty’s telephone line in an off-hook state.” To support its contention, Vonage and putting the called par

gures 3A and 3B and the corresponding text in the specification, arguing that primarily relies upon Fi

swer mode of the present invention” and not merely an embodiment these figures “illustrate” the “an

aring, the parties agreed that the term “each incoming call” need not be construed. 2 At the Markman he

ugh “automatically answering incoming telephone calls,” “telephone answering >The parties appear to agree that altho

ephone” are contained in the preamble to Claim 3, these terms are limiting and device,” and “coupled to a tel amenable to construction.

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of the invention. See Col. 3:27-28; Col. 6:10-11. Vonage also contends, essentially, that because the

specification describes a single way of “answering incoming telephone calls,” the term should be

limited to that embodiment. In response, Klausner asserts that Vonage is improperly limiting the

phrase to a specific embodiment. The Court agrees with Klausner.

It is important to remember that although the specification often describes very specific

embodiments of the invention, the Federal Circuit has cautioned against confining the claims to those

embodiments. See Phillips, 415 F.3d at 1323. The roles of the specification are to “teach and enable

those of skill in the art how to make and use the invention and to provide a best mode for doing so.

One of the best ways to teach a person of ordinary skill how to make and use the invention is to

provide an example of how to practice the invention in a particular case.” Id. ‘“[T]he claims of the

patent, not its specifications, measure the invention.” Innova/Pure Water, Inc. v. Safari Water

Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (citation omitted). “Accordingly,

particular embodiments appearing in the written description will not be used to limit claim language

that has broader effect. And, even where a patent describes only a single embodiment, claims wiil

not be ‘restrictively unless the patentee has demonstrated a clear intention to limit the claim scope

‘using words or expressions of manifest exclusion or restriction.”” /d. at 1117 (citations omitted).

ge argues that, where the patent specification makes clear that what is described is “the Vona

” rather than simply “an embodiment” of the invention, the claims may be limited to that invention

. It is true that where a patent clearly indicates that the description is that of “the description

on” and not simply “an embodiment,” that indication should be taken into account in inventi

construing the claim terms at issue. However, as is discussed below, in this particular case, the

patent specification is not so clear as to be directing its description, in any aspect, to “the invention”6 Case 2:06-cv-00275-LED-JDL Documenti116 Filed 08/07/07 Page 6 of 23 PagelD #:

as opposed to an embodiment of the invention.

gins, as it must, with the words of the claim. See Teleflex, 299 F.3d at 1324; The Court be

Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“The terms see also CCS Fitness,

a presumption that they mean what they say and have the ordinary meaning used in the claims bear

to those words by persons skilled in the relevant art.”). Vonage does not that would be attributed

to support its contention. Indeed, Claim 3 cannot be read to define rely on the language of Claim 3

uggests. Claim 3 simply requires a “method of automatically answering the term as Vonage s

ring and retrieving information from the incoming telephone calls.” incoming telephone calls and sto

er presents evidence, which Vonage does not meaningfully dispute, While not determinative, Klausn

nderstand “automatically answering telephone calls” as answering that one skilled in the art would u

ntervention and not limited in the fashion Vonage proposes. See Ex. telephone calls without human i

25 to Pl.’s Claim Const. Br. {J 26-28.

es 3A, 3B, 4 and 5 are described as “illustrating [various features] Vonage argues that Figur

ording to Vonage, this language clearly indicates that what is shown of the present invention.” Acc

nvention itself and is not simply illustrative ofan embodiment of the in these Figures represents the i

sed in the section titled “Brief Description of the Drawings.” invention. The Figures are first discus

ent that the “above and other objects and advantages will become This section begins with the statem

the art upon reviewing the detailed description of the preferred apparent to those skilled in

w of the appended drawings. . .” See Col. 3:18-21. These embodiments in conjunction with a revie

sed in the section titled “Detailed Description of the Preferred drawings are then further discus

ncludes with the statement that “[w]hile the embodiments shown and Embodiments.” This section co

chieving the objects of the invention, it is to be understood that these described are fully capable of a

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wn only for the purpose of illustration and not for the purpose of limitation.” embodiments are sho

Col. 12:61-64.

e discussion of Figures 3A and 3B, the figures are described as At several points in th

haracteristics. See, e.g., Col. 6:30-31 (“The microcontroller then “preferably” containing certain c

er by 6 . . .”); Col. 6:44-45 (“The OGM is preferably stored as preferably multiplies this numb

ory 2.”); Col. 6:48-49 (“When the playing of the OGM is completed, the message #1 in mem

ably waits 5 seconds (block 160).”). While Vonage argues the description of microcontroller prefer

efine what is meant by answering an incoming telephone call, Vonage does not Figures 3A and 3B d

cs of the figures be included in the definition of the term. See, e.g., request that other characteristi

Fig. 3, the TAD first determines if the user has pressed a key on the Col. 6:14-24 (“As illustrated in

his is done by means of the microcontroller reading RS232 serial data TAD (Decision Block 100). T

en 5 through connection to determine if the screen has been touched. port connected to the touch scre

..).

ludes a “DTMF DECODE ROUTINE 230", which is further Moreover, Figure 3B inc

And, as Vonage points out in its brief, Figure 5 uses the “present invention” described in Figure 5.

5 as “illustrating a flow chart illustrating the DTMF decode routine language in describing Figure

ver, at column 9, lines 51-54, the patent specification states that “[1]t of the present invention.” Howe

coming signals over the telephone line with a voice message that is is to be understood that any in

generally unique to the caller may be used instead of DTMF tones.” recognizable by the TAD and is

lear that DTMF tones need not be used, and accordingly, the DIMF Thus, the patent specification is c

s shown in Figure 3B, need not be used. Rather, other incoming decode routine of Figure 5, and a

e clear implication of the patent specification, taken as a whole and signals may be used instead. Th

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ns of the Figures, is that Figures 3A and 3B illustrate an not focusing strictly on the descriptio

odiment in which DTMF tones, and a DTMF decode routine embodiment of the invention, an emb

are used.

a case where the Federal Circuit has held that describing Vonage does not cite the Court to

t invention” alone amounts to a clear intention to limit claim figures as “illustrating . .. the presen

the specification. See Innova/Pure Water, Inc., 381 F.3d scope to a specific embodiment taught in

s “illustrating,” “illustration,” “illustrates,” and “illustrated” at 1117. Itis worth noting that the term

.g., Col. 3:42-43 (“Fig. 10 is an illustration of the display are used throughout the patent. See, e

ers.”); Col. 3:44-45 (“Fig. 1lisa flowchart illustrating recalling information linked to one of the call

”); Col. 3:65-66 (Fig. 1 illustrates the front perspective a typical operation of the present invention.

(TAD) 25 according to the invention.”); Col. 6:14 (“As view of a telephone answering device

rm “illustrating” would not seem to necessarily lead to the illustrated in Fig. 3. ..”). Thus, the te

clusion that claim scope is limited to the “illustrated” embodiments.

con

he specific embodiment described in the figures is The specification does not teach that t

med. Put another way, the specification does not teach somehow important or vital to what is clai

plish the answer mode of the invention. Indeed, as that this embodiment is the only way to accom

t that all features shown in Figures 3A and 3B be already pointed out, Vonage does not reques

f Figures 3A and 3B were considered as illustrating incorporated into “the invention” as claimed. I

ment, the Court would not be at liberty to pick and “the invention” instead of simply an embodi

3B to include and which to not include. And the choose which aspects of Figures 3A and

e guidance as to how such determinations might be made.

specification does not provid

prosecution of the ‘576 patent, Klausner expressly Vonage also asserts that during

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atically answering telephone calls with a “telephone answering distinguished methods of autom

a computer-based voice messaging system. See Ex. 2 to Vonage’s device” from methods using

urt disagrees. The cited excerpt from the prosecution history shows Claim Constr. Br. at 12. The Co

was no motivation or suggestion to combine a 1981 patent issued the inventors arguing that there

5,003,577 issued to Ertz. The Court does not find this portion of to Klausner and U.S. Patent No.

aim computer based voice messaging systems, but rather to be the prosecution history to discl

sion that certain claims were obvious in light of the referenced prior addressing the examiner’s conclu

art.

at one skilled in the art would read the intrinsic evidence as The Court is not persuaded th

exclusion or restriction such that the answer mode of the invention containing explicit expressions of

nt set forth in Figures 3A and 3B. Cf Scimed Life Sys., Inc. v. was limited to the embodime

nc.,242 F.3d 1337, 1342 (Fed. Cir. 2001) (noting that the common Advanced Cardiovascular Sys., I

nescapable conclusion” that patents had disclaimed a particular specification leads to the “i

ourt finds this phrase understandable to a juror in the context of the configuration). Further, the C

claims at issue and, therefore, does not require construction.

2. “telephone answering device”

ner proposed that this term be construed as “an electronic By the time of the hearing, Klaus

hile Vonage proposed “a device for answering an incoming device for answering telephone calls,” w

r to seriously dispute the inclusion of “electronic” in the telephone call.” Vonage does not appea

ere appear to be any serious dispute to including the word definition of this term. Nor does th

as the preamble of Claim 3 describes “storing and retrieving “incoming” in the definition

calls with a telephone answering device.” Throughout the information from the incoming telephone

10‘576 patent, the telephone answering device is described as a device that can receive, store and

retrieve messages left by a calling party, i.e., messages coming in to a called party. See, e.g., ‘576

:23-31, 34-40. Accordingly, the Court construes this term as “an electronic device for patent, col. 5

answering an incoming telephone call.”

3. “coupled to a telephone”

ausner proposes “connected to a telephone so that signals are transferred from one to the Kl

while Vonage proposes “connected to the called party’s telephone line.” The primary dispute other,”

ephone access device (“TAD”) is connected to the “called party’s telephone here is whether the tel

s that the TAD must be connected to the “called party’s telephone line” because line.” Vonage argue

cification limits the invention to the answer mode described in Figures 3A and 3B. For the the spe

e, the Court rejects this argument. In light of the preamble’s description of reasons discussed abov

utomatically answering incoming telephone calls and storing and retrieving the method as one of “a

ncoming telephone calls,” the Court finds Klausner’s proposal to be deficient information from the i

specification simply describes the telephone answering device as being as well. The patent

hone line that receives an incoming call. ‘576 patent, col. 5:41-44. connected to the telep

urt construes this term as “connected to a telephone receiving an incoming call.” Accordingly, the Co

A, “first signals”

term needs no construction. Vonage proposes “signals received Klausner contends that the

e recognizable by the telephone answering device and generally unique to the with a voice messag

proposal, Vonage cites to a portion of the specification that provides “[i]t is caller.” To support its

derstood that any incoming signals over the telephone line with a voice message that is to be un

and is generally unique to the caller may be used instead of DTMF tones.” recognizable by the TAD

11See Col. 9:51-54.

self describes the “first signals” as “specifying each caller of each The claim language it

ol. 13:47-48. The Court fails to see how the portion of the specification cited incoming call.” See C

thing more than clarify that signals other than “DTMF tones” may be used to by Vonage does any

s statement constitutes the exclusive definition of the term would specify the caller. To hold that thi

ary limitations into the claim language. See Phillips, 415 F.3d at seem to clearly import unnecess

mitations, “recognizable by the telephone answering device” and 1323. Moreover, the proposed li

,” are ambiguous and could inject confusion into the construction. “generally unique to the caller

e prosecution history of the ‘236 patent’, the Applicant describes The Court notes that in th

rring to a conveyor of information.” See Ex. 12 to Klausner’s “signal” as a “[g]eneral term refe

he Applicant refers to “caller identity information,” “identifying Claim Constr. Br. at 7. Also, t

ing information.” See Ex. 6 to Klausner Opening Br., p. 21, and Ex. information” and “caller identify

7 to Klausner Opening Br., p. 20.

the meaning of “first signals” in the context of the patent is The Court finds that

“information.”

5. “corresponding voice message”

construction, while Vonage urges “the voice message received by the Klaunser proposes no

h the first signal.” The Court finds that a construction is necessary telephone answering device wit

nfusion as to what the voice message corresponds to. The patent specification to avoid potential co

g device receiving voice messages and DTMF tones during a cal! describes the telephone answerin

e.g., ‘576 patent, col. 7:19-51. Thus, the Court adopts Vonage’s and linking them together. See,

“The ‘576 patent is a continuation of the application that resulted in the “236 patent.

1]

12s this term to mean “the voice message received by the telephone answering proposal and construe

device with the first signal.”

6. “user remote access device”

ce that can from any remote location gain authenticated access to Klausner proposes “a devi

urces from outside the system that does not require separate data and voice internal system reso

ate with the telephone answering device.” Vonages proposes “the user remote channels to communic

he structure specified in Claim 1.” In support ofits proposal, Vonage contends access device having t

e” is not discussed in the written description’ but is expressly defined that “user remote access devic

unction elements in Claim 1. Vonage argues that because there is a only in terms of means-plus-f

s appearing in different claims have the same meanings, the term presumption that the same term

evice” should be defined in all claims as it is in Claim 1. Vonage’s argument “user remote access d

is without merit.

on the idea that a “user remote access device” is different from Vonage’s argument hinges

ce.” See Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 a “remote access devi

nce of any evidence to the contrary, we must presume that the use n.3 (Fed. Cir. 2006) (“in the abse

ms connotes different meanings”). Although different terms in a of .. . different terms in the clai

rent meanings, that presumption is overcome in this case. Claim patent are presumed to have diffe

es the “user remote access device” of Claim | by calling 2, which depends from Claim 1, referenc

Moreover, independent Claims 5 and 20 use the terms “remote access it a “remote access device.”

ce” interchangeably within the same claim. Thus, Vonage’s device” and “user remote access devi

ffect of importing the limitations of Claim 1 into all claims proposed construction would have the e

>The term “remote access device” is discussed but not “user remote access device.”

13mote access device” that contains different elements. when claims 2 and 5-13 include a “re

shows that Claim 1 defines this term because nage also argues that the prosecution history

Vo

remote access device” includes the means-plus-e inventors amended Claim 1 to clarify that a “user th

d by Klausner, however, the examiner expressed function elements in part (b) of Claim 1. As note

mote access device.” (“Regarding claim 15 with the term “system independent user re

concern

s device (line 11)’ and “‘a system-independent Claim 1], it is not clear if a ‘user remote acces

[current

• o Klausner’s Reply Br. at 4, In response, the ess device (line 15) are the same.”). Ex. 27 t

remote acc

he claim language consistent.” Ex. 7 to removed “system independent” to “make t

inventors

t conclude that such an amendment reflects an er’s Claim Constr. Br. at 20. The Court canno

Klausn

Claim 3 in terms of the means-plus-function n to define the “user remote access device” of

intentio

limitations of Claim 1.

aim 1 is not defining a “user remote access Finally, contrary to Vonage’s contention, Cl

m sets forth elements included in the “user r a “remote access device.” Instead, the clai

device” o

aim’s elements establish the boundaries of that access device” for purposes of that claim. A cl

remote

particular claim term. Indeed, Claims 2 and ova, 381 F.3d at 1115, rather than define a

claim, Jnn

s device” but none of these claims purport to t forth different elements of a “remote acces

5-13 se

y holding that means-plus-function elements he term. Vonage does not cite to any authorit

define t

m appearing in another independent claim.° ependent claim can be used to define a ter

in an ind

ms are of different scope.” Amgen, Inc. v. a rebuttable presumption that different clai

“There is

ed by Vonage, PODS, inc. v. Porta Store, Inc., 484 urt finds this situation distinguishable from the case cit

The Co

e definition of “carrier frame” in Claim 1 and there (Fed. Cir. 2007). In that case, the parties agreed on th

F.3d 1359

s used in another claim. Here, the parties have not agreed was no reason to fail to apply that definition to the term a

ttempting to restrict the meaning of a term by way of nition for “user access remote device” and Vonage is a

on a defi

s-function elements, not by way of some sort of definition.

an independent claim’s means-plu

14Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1326 (Fed. Cir. 2003). Vonage has not rebutted this

presumption here.

The construction proposed by Klausner suffers from its own deficiencies. Klausner proposes

“a device that can from any remote location gain authenticated access to internal system resources

from outside the system and that does not require separate data and voice channels to communicate

with the telephone answering device.” Klausner points principally to the prosecution history to

support various aspects of its proposed construction. However, the Court does not find adequate

support for certain aspects of Klausner’s proposal. Klausner refers to an Amendment, dated April

3, 1995, in which the Applicant distinguishes a prior art reference to Jachmann. In his argument, the

Applicant said that “Jachmann does not disclose a flexible and system-independent remote device

that may be used from any remote location to access any TAD wherein visual messages are displayed

on the system-independent remote device.” See Ex. 6 to Klausner Opening Br., p. 28. But, in this

particular argument, the Applicant actually relied on two specific differences to distinguish

Jachmann; namely the “system-independent” remote device, and the fact that, in Jachmann, “remote

retrieval of information must be accomplished without use of any visual messages.” Jd. The

“system-independent” aspect of the claims at issue was deleted in a subsequent Amendment.

Klausner points to its expert Levine as support for that portion of its proposal reciting “from

location gain authenticated access to internal system resources from outside the system.” any remote

Klausner points to nothing specific in the intrinsic record to support these restrictions, However,

at access to voice messages is typically intended to be limited or controlled. other than the notion th

The reference to “internal system resources” does not aid in the understanding of the subject claim

east in the context of the asserted claims of the ‘576 patent. Those claims do not expressly term, at l

15recite a “system,” nor is a “system” implicitly required. Hence, inclusion of a requirement of

“authenticated access to internal system resources from outside the system” interjects limitations not

reasonably connected to any other claim requirement and will likely only cause confusion to a lay

jury. Certainly the word “remote” carries with it the connotation that some distance, and perhaps

a considerable distance, may exist between the remote access device and the telephone answering

device. Dr. Levine, Klausner’s expert, describes that distance as “any distant location” and having

“no range limit on access.” Levine Decl. 451. Klausner’s proposed language of “from any remote

location” adequately describes this limitation.

Finally, Klausner proposes that the term “remote access device” be construed to require that

the device “does not require separate data and voice channels to communicate with the telephone

answering device.” Klausner points to an Amendment dated November 10, 1995, in which the

Applicant again distinguished the Jachmann reference. Klausner points to the Applicant’s statement

that “in the preferred embodiment of Jachmann, two separate data paths are required for retrieving

voice messages.” Therefore, argues Klausner, the “remote access device” of the claims must not

require two separate channels. However, in the November 10, 1995 Amendment, the Applicant went

on to acknowledge that a second embodiment shown by Jachmann “arguably uses only a telephone

link to convey both voice and data information.” See Ex. 7 to Klausner Opening Br., pp. 24-25. But,

said the Applicant, in that second embodiment of J achmann, the user may be restricted in his use of

the single telephone link to only certain times of the day. Thus, the Applicant argued that the

distinction between the claimed invention and the disclosure of Jachmann lie in the fact that, in the

claimed invention, the “first signals are available upon user demand.” Jd. The prosecution history

is insufficient to show that the Applicant surrendered claim scope regarding the number of channels16 required for transmission of voice and data. See Sorenson v. Int’l Trade Comm’n, 427 F.3d 1375,

1378 (Fed. Cir. 2005) (“in order to disavow claim scope, a patent applicant must clearly and

unambiguously express surrender of subject matter during prosecution’’).

For the reasons expressed above, the Court construes the terms “user remote access device”

and “remote access device” identically to mean “a device that can gain access to voice messages

stored on the telephone answering device from a remote location.”

7. “transmitting said received first signals to a user remote access device”

Klausner advocates no construction, while Vonages proposes “the telephone answering

device outputs the first signals over a single telephone link to a user remote access device.” Vonage

contends that the prosecution history shows that the first signals must be transmitted over a single

telephone link. The Court disagrees.

The prosecution history excerpt cited by Vonage demonstrates that first signals may be

transmitted over a single telephone link. See Ex. 3 to Def.’s Claim Constr. Br. at 24-25 (“the

presently claimed invention may use a single telephone link for conveying both voice and data

information’’and “the presently claimed invention places no limitation whatsoever on when a user

may retrieve messages using a single telephone link”). See also the above discussion of these

passages from the prosecution history. Further, the prosecution history provides that “signals may

be transmitted through any medium, including but not limited to, DTMF tones over a telephone line,

radio waves, etc.” See Ex. 8 to Klausner’s Claim Constr. Br. at 11-12. Thus, the Court declines to

adopt Vonage’s proposal and finds this phrase needs no construction apart from the constructions

of “first signals” and “user remote access device” already given.

178. “transmitting to a user remote access device at least one specific voice message linked to a

specific one of said received first signals”

sner argues this term needs no construction apart from the construction of “user remote Klau

vice.” Vonage proposes “the telephone answering device plays back the voice message to access de

the user remote access device over the single telephone link between the telephone answering device

and user remote access device.”

ong other things, Vonage proposes that this phrase requires “play back” by the telephone Am

ing device. While “play back” of a voice message may be one action taken to accomplish the answer

transmission of the voice message, the concept of “play back” does not appear to be inherent in the

word “transmitting,” nor does Vonage point to anything in the intrinsic record, aside from a specific

ment described in the specification, suggesting otherwise. The Court declines to incorporate embodi

isclosed embodiment into a claim term in the absence of clear direction otherwise from details of a d

ecord. See, e.g., Varco, L.P. v. Pason Sys. USA, Corp., 436 F.3d 1368, 1373 (Fed. Cir. the intrinsic r

2006) (“In examining the specification for proper context . . . this court will not at any time import

ns from the specification into the claims.”). Vonage also argues the requirement of using limitatio

phone link” between the telephone answering device” and the “user remote access a “single tele

device.” That argument has been addressed above.

these reasons as well as those discussed in the previous section, the Court rejects For

Vonage’s proposed construction and finds that this phrase needs no construction.

18| #: <pagelD>

Conclusion

For the foregoing reasons, the Court interprets the claim language in this case in the manner

set forth above. For ease of reference, the Court’s claim interpretations are set forth in a table

attached to this opinion.

So ORDERED and SIGNED this 7th day of August, 2007.

febrP Fre UNITED STATES MAGISTRATE JUDGE

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