Free Claim Construction Opening Brief - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ) ) ) ) ) ) ) ) ) ) ) )

CISCO SYSTEMS, INC. and CISCO TECHNOLOGY, INC., Plaintiffs, v. TELCORDIA TECHNOLOGIES, INC., Defendant.

C.A. NO. 07-113-GMS

DEFENDANT TELCORDIA'S OPENING BRIEF IN SUPPORT OF ITS PROPOSED CLAIM CONSTRUCTIONS FOR U.S. PATENT NO. 5,142,622

Of Counsel: Vincent P. Kovalick Christopher T. Blackford FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001 (202) 408-4000 [email protected] [email protected] Dated: May 1, 2008

ASHBY & GEDDES Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) Tiffany Geyer Lydon (I.D. #3950) 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 (302) 654-1888 [email protected] [email protected] [email protected] Attorneys for Defendant Telcordia Technologies, Inc.

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TABLE OF CONTENTS

I. II.

INTRODUCTION .............................................................................................................. 1 LEGAL PRINCIPLES FOR CLAIM CONSTRUCTION ................................................. 1 A. Claim Terms are Construed in Light of the Specification and Prosecution History......................................................................................................................1

III.

THE `622 PATENT ............................................................................................................ 3 A. B. Technology Overview..............................................................................................3 Proposed Constructions of Disputed Claim Terms And Phrases ............................6 1. Construction of "Socket" .............................................................................6

IV.

CONCLUSION................................................................................................................... 8

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I.

INTRODUCTION Defendant Telcordia Technologies, Inc. ("Telcordia") hereby proposes claim

constructions for U.S. Patent No. 5,142,622 ("the `622 Patent").1 Plaintiffs Cisco Systems, Inc. and Cisco Technology, Inc. (collectively, "Cisco") allege infringement of claim 7 of the `622 Patent by Telcordia's Element Communicator CE ("Elcom") product.2 As to the claim constructions, the parties have done well to agree on many constructions, leaving only one claim term in dispute. Telcordia's proposed construction for the last limitation in dispute gives that claim term the ordinary meaning it would have to a person of ordinary skill in the art in light of the intrinsic record, that is, the claims, specification, and prosecution history. To the contrary, Cisco's proposed construction for this claim term is largely driven by its need to contend infringement, not by a proper application of the intrinsic evidence. II. LEGAL PRINCIPLES FOR CLAIM CONSTRUCTION A. Claim Terms are Construed in Light of the Specification and Prosecution History.

"It is a `bedrock principle' of patent law that `the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), cert. denied, 126 S.Ct. 1332 (2006) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim terms are generally given their ordinary and customary meaning to a person of ordinary skill in

1

Since the filing of the Final Joint Claim Chart, the parties have reached an agreement on all but one of the claim terms in dispute. The only remaining claim term in dispute is the term "socket" in claim 7 of the `622 Patent. Cisco also alleges infringement of claim 1 of U.S. Patent No. 6,377,988 by Telcordia's Network Monitoring and Assurance System CE product ("NMA") via Telcordia's Elcom or OCS product. There are no claim terms in dispute for that patent.

2

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the relevant art at the time of the invention. Phillips, 415 F.3d at 1312-13. However, the ordinary meaning of claim terms must be viewed in light of the intrinsic record, particularly the specification and prosecution history.3 See, e.g., id. at 1313 and 1315-17; Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005). To begin with, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. Next, the claims "must be read in view of the specification, of which they are a part." Id. at 1315 (internal citation omitted). "In general, the scope and outer boundary of claims is set by the patentee's description of his invention." On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338 (Fed. Cir. 2006). The claims cannot be of broader scope than the invention as set forth in the specification. Id. at 1340. The specification "is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Philips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also On Demand, 442 F.3d at 1337-38 (Phillips "stressed the dominance of the specification in understanding the scope and defining the limits of the terms used in the claim"). Next, the Court should also consider the patent's prosecution history. Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317. Accordingly, courts must examine the patent's prosecution history to determine whether the inventor disclaimed a particular interpretation of a claim term

3

The prosecution history consists of the complete record of the proceedings before the PTO, including the prior art considered during examination. See id. at 1317.

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during the prosecution of the patent in suit. Id.; Advanced Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d 1294, 1305 (Fed. Cir. 2001); Springs Window Fashions LP v. Nova Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) (stating that "[t]he public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent.") Lastly, the court may consider extrinsic evidence, which is "less significant than the intrinsic record in determining the legally operative meaning of claim language." Phillips, 415 F.3d at 1317 (internal citation omitted). III. THE `622 PATENT A. Technology Overview

Data processing systems communicate with each other using a specified computer language and procedure, otherwise called a protocol. Protocols are designed to work within a specific network domain or network protocol architecture. Therefore, a data processing system located in a particular network domain utilizing a network protocol cannot automatically communicate with a different data processing system residing in a different network domain that uses a different network protocol. The `622 Patent, 1:28-34. (Exhibit A). Originally, the requirement that data processing systems can only communicate to other data processing systems in the same network domain was a reasonable restriction. The `622 Patent, 3:3-5. This

simplified program code for the data processing systems because there was only one really useful domain. The `622 Patent, 3:5-6. With the advent of the usage of other domains, cross domain connections became desirable. The `622 Patent, 3:6-9. Accordingly, various systems and methods were developed to solve the problem whereby data processing systems in different network domains could not communicate. The `622 Patent, 1:46-3:13. For example, the `622 Patent states that it was known in the art to solve this problem by changing the program code at the application program level. The `622 Patent, 1:46-56. "In
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this case, it is known to modify the application in order to reimplement the application to work over another protocol." The `622 Patent, at 1:50-52. It was also known to solve this problem by implementing the same protocol on both machines, allowing the two machines to communicate across the same domain rather than different domains. The `622 Patent, 1:57-2:2. The `622 Patent describes a "system for interconnecting applications across different networks of data processing systems by mapping protocols across different network domains." The `622 Patent, Title. This is generally referred to in the `622 Patent as a cross domain connection. The `622 Patent, 11:29-32; see also Amendment filed February 14, 1992, at 8 (Exhibit B) ("Applicants have further amended Claims 1, 3-7, and 9 to breathe life and meaning to this preamble modification, and these amended claims clearly recite the requisite mapping which is done for dissimilar domains to achieve the claimed cross domain connection."). The patentee states that "[t]he heart of the invention relates to the routing of data between data processing systems operating in these differing network domains." Amendment filed June 29, 1990, at 8 (Exhibit C); see also id. at 10 (stating that Applicant's "clearly and distinctly claimed" "a system for communicating between multiple data processing systems operating in separate and distinct network domains" and "a system and method for establishing automatically routed communication between such systems."). The `622 Patent purports to allow communications between data processing systems in different network domains by automatically routing communications "at the socket level"4 between the two networks when a cross domain connection attempt is detected. The `622 Patent, 3:20-23; see also id. at 3:47-52, 3:62-64, 3:65-4:5, 4:19-23, 4:63-5:5, 7:12-15. Figure 1 of the `622 Patent illustrates a first data processing system 11 (host A) in a network that only supports a

4

The claim term "socket" is in dispute and its meaning is discussed below.

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particular domain of sockets, such as TCP. Data processing system 41 (host C) is within a second, different network that only supports a different domain of sockets, such as SNA. Because data processing systems 11 and 41 are located within different network domains, they cannot automatically communicate. Figure 1 is reproduced below.

With reference to Fig. 1, "no interconnection can take place" between socket layer 12 of data processing system 11 and socket layer 42 of data processing system 41 "without an intermediate routing facility," because data processing systems 41 and 43 are within different network domains. The `622 Patent, 4:67-5:5. Data processing system 31 serves as an intermediate routing facility. "The intermediate facility is the socket routing facility 70 [SRF] in socket layer 32, which exists in data processing system 31, shown as host B." The `622 Patent, 5:1-5. "[T]he socket layer which performs the socket routing contains facilities to automatically route a connection across different domains." The `622 Patent, 3:62-64. Assume a process AA 10 in data processing system 11 needs to communicate with a process CC 40 in data processing system 41. Process AA 10 activates a
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connection through socket layer 12, address family specific socket code 13, and interface 14 to generate a connection request according to network domain "A" protocol. The `622 Patent, 5:616, 28-32. Intermediate routing facility 31 receives the connection request at interface 34, converts the protocol from type "A" to type "C" using socket routing facility 70, and forwards the request through interface 35 to data processing system 41. The `622 Patent, 5:28-50. In this manner, the `622 Patent uses sockets and an intermediate routing facility to provide a connection between data processing systems in different network domains, at the socket layer. B. Proposed Constructions of Disputed Claim Terms And Phrases 1. Construction of "Socket"

"Socket" The `622 Patent - Asserted Claim 7 Telcordia's Construction Cisco's Construction an application program interface (API) that was developed for the Berkeley version of AT&T's UNIX operating system for interconnecting applications running on data processing systems in a network. It is an object that identifies a communication end point in a network, can be connected to other sockets, and hides the protocol of the network architecture beneath a lower layer. an application program interface (API) for interconnecting applications running on data processing systems in a network. It is an object that identifies a communication end point in a network, can be connected to other sockets, and hides the protocol of the network architecture beneath a lower layer.

Cisco seeks to broaden the definition of "socket" by excluding the fact that it "was developed for the Berkeley version of AT&T's UNIX operating system." But Cisco's attempt to broaden their claims through litigation is inconsistent with both the specification and the prosecution history. The specification provides a clear definition for "socket." By the patentee's own words, "the term `socket' has a precise meaning [as] set forth in Applicant's Specification, page 3, line 26, through page 4, lines 1-9:"

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The `622 Patent, 2:23-35, cited in Amendment filed June 29, 1990, at 11 (Exhibit C). Where the specification provides a clear definition for a claim term, that definition "is dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (noting that "[b]ecause the patentee provided an explicit definition . . . in the specification, and because no other intrinsic evidence casts doubt on that definition, the patentee's definition controls.") Telcordia's proposed construction mirrors the explicit definition of socket provided by the patentee in the specification, and therefore provides the proper construction of "socket." Telcordia's construction is also consistent with the prosecution history. In the Office Action mailed March 29, 1990, the Examiner rejected the claims under 35 U.S.C. § 112, second paragraph, stating the terms "socket in a socket layer," "socket layer," "said socket connection," "creating...a socket," "connect a socket," "said socket," and "creating a second socket," were all unclear. Office Action mailed March 29, 1990, at 2-3 (Exhibit D). The Examiner also rejected the claims under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 4,768,150 in view of U.S. Patent No. 4,736,369. Patentee distinguished the Examiner's rejections under § 112 and based on the prior art by amending the claims and arguing: "The Examiner will note, now that the Applicant has

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cleared up the discrepancy, that the use of the term socket has a precise meaning set forth in Applicant's Specification, page 3, line 26, through page 4, lines 1-9," which corresponds to the above-referenced column 2, lines 23-35 of the `622 Patent. Amendment filed June 29, 1990, at 11 (emphasis added) (Exhibit C). Despite having clearly relied on the entire definition set forth in column 2 to distinguish the prior art and "clear[] up the discrepancy," Cisco now seeks to create a discrepancy where none should exist. Cisco asks the Court to modify the "precise meaning" of "socket" that was set forth in the specification, and relied on in the prosecution history to distinguish the prior art, in an effort to grasp an infringement position. But broadening an unambiguous definition in the intrinsic evidence to cover that which the patentee gave up violates the fundamental principal of public notice. See, e.g., Springs Window Fashions LP v. Nova Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) (stating that "[t]he public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent.") Rarely does a patentee so clearly articulate a definition in the specification, delineate the scope of a claim as having that "precise meaning" defined in the specification, and rely on that definition to overcome a rejection based on prior art. Where the patentee has, "the inventor's intention, as expressed in the specification, is dispositive." Phillips, 415 F.3d at 1316. IV. CONCLUSION For the reasons discussed above, Telcordia respectfully submits that the Court should adopt its construction for the claim term "socket."

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ASHBY & GEDDES /s/ Tiffany Geyer Lydon Steven J. Balick (I.D. #2114) John G. Day (I.D. #2403) Tiffany Geyer Lydon (I.D. #3950) 500 Delaware Avenue, 8th Floor P.O. Box 1150 Wilmington, Delaware 19899 (302) 654-1888 [email protected] [email protected] [email protected] Attorneys for Defendant Telcordia Technologies, Inc.

Of Counsel: Vincent P. Kovalick Christopher T. Blackford FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. 901 New York Avenue, N.W. Washington, D.C. 20001 (202) 408-4000 [email protected] [email protected] Dated: May 1, 2008

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