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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE MICROSOFT CORPORATION, Plaintiff, v. ALCATEL-LUCENT ENTERPRISE and GENESYS TELECOMMUNICATIONS LABORATORIES, INC., Defendants. MICROSOFT'S OPENING BRIEF ON CLAIM CONSTRUCTION FISH & RICHARDSON P.C. Thomas L. Halkowski (#4099) 919 N. Market Street, Suite 1100 P.O. Box 1114 Wilmington, DE 19899-1114 Tel: (302) 652-5070 Fax: (302) 652-0607 John E. Gartman 12390 El Camino Real San Diego, CA 92130 Ruffin B. Cordell Linda Liu Kordziel Indranil Mukerji William Sekyi Kfir Levy Kori Anne Bagrowski Robert P. Courtney 1425 K Street N.W., Suite 1100 Washington D.C. 20005 ATTORNEYS FOR PLAINTIFF MICROSOFT CORPORATION DATED: May 16, 2008

C.A. No. 07-090-SLR PUBLIC VERSION

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TABLE OF AUTHORITIES Page(s) Cases Acco Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075 (Fed. Cir. 2003)............................................................................. 36 Autogiro Co. of Am. v. United States, 384 F.2d 391 (Ct. Cl. 1967) .................................................................................. 14 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998)............................................................................... 7 Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003)............................................................................. 13 Diamond v. Diehr, 450 U.S. 175 (1981)................................................................................................ 2 Dolbear v American Bell Tel. Co., 126 U.S. 1 (1888).................................................................................................... 1 Intamin, Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328 (Fed. Cir. 2007)............................................................................. 30 Markman v. Westview Instr., Inc., 517 U.S. 370 (1996)................................................................................................ 7 Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003)............................................................................... 8 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)............................ 8, 9, 18, 21, 22, 30, 32 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999)............................................................................... 9 Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243 (Fed. Cir. 1998)....................................................................... 18, 21 Resqnet.com, Inc. v. Lansa, Inc., 364 F.3d 1374 (Fed. Cir. 2001)............................................................................. 30 Sandisk v. Memorex Products, Inc., 415 F.3d 1278 (Fed. Cir. 2005)....................................................................... 18, 34 ii

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TABLE OF AUTHORITIES (cont'd) Page(s) Texas Instruments Inc. v. Int' l Trade Comm' n, 988 F.2d 1165 (Fed. Cir. 1993)............................................................................. 13 Vitronics Corp. v. Conceptronic, Inc., 90 F. 3d 1576 (Fed. Cir. 1996)...................................................................... 8, 9, 32

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Plaintiff Microsoft Corporation ("Microsoft") hereby submits its opening claim construction brief regarding disputed terms from the claims of U.S. Patent Nos. 6,421,439 ("the ' 439 patent"), 6,430,289 ("the ' 289 patent"), 6,263,064 ("the ' 064 patent") and 6,728,357 ("the ' 357 patent") asserted by Microsoft against Defendants Alcatel-Lucent Enterprise ("ALE") and Genesys Telecommunications Laboratories, Inc. ("Genesys"). For the convenience of the Court, the parties' Joint Claim Construction Chart is attached as Ex. 1, and the Microsoft patents-in-suit are attached as Exs. 2 through 5.1 I. INTRODUCTION A. Overview of the Technology

The technology at issue in this case relates to the integration of telecommunications services. Because they had evolved and developed separately, computer networks (such as distributed computer networks like Local Area Networks) and telephone networks (such as the Public Switched Telephone Network) were traditionally considered separate entities, each with its own infrastructures, protocols and methodologies. The patents-in-suit cover an innovative way to integrate telephony and computer networks together in such a way that the benefits of one network can be used to improve upon the other. For historical and technological reasons, computer and telephone technologies have developed and evolved separately, with little interconnection until recent times. Telephone systems developed first, starting around the end of the 19th century when Alexander Graham Bell invented the telephone. See Dolbear v American Bell Tel. Co., 126 U.S. 1, 531­538 (1888) (discussing development of telephone invention). Since then, "[t]elephone communication systems have increased in both size and complexity." [Ex. 3, ' 289 patent col.1:14­15]. Early
1

All exhibits referenced as "Ex. ___" are exhibits to the accompanying Declaration of Thomas L. Halkowski, dated May 9, 2008, submitted herewith. 1

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telephone networks relied on human operators to connect calls, but new switching and signaling technologies eliminated the need for human intervention, as well as providing a wealth of new features--" voicemail, caller identification, call waiting, call forwarding, three way calling and the like." [Ex. 3, ' 289 patent col.1:15­20.] Today, the Public Switched Telephone Network (" PSTN" ) interconnects local telephone exchanges with international and long distance exchanges, and makes modern telephony possible. Computer technology came about much later than, and independently from, the telephone system. See Diamond v. Diehr, 450 U.S. 175, 194 (1981) (Stevens, J., dissenting) (" [T]he computer industry is relatively young. Although computer technology seems commonplace today, the first digital computer capable of utilizing stored programs was developed less than 30 years ago." ). Computer systems evolved separately from the telephone system, thus developing divergent protocols, different hardware platforms, and distinct software. With time, the computer networks grew into much larger networks in the 1970s and ' 80s, becoming wide area networks (WANs) that reach across cities, states, or even across the world in the form of the Internet. As the ' 439 patent notes, the Internet is " a vast multi-computer network coupled together by data links having various communication speeds." [Ex. 2, ' 439 patent col.5:28­29.] With the wider adoption of the Internet, its network protocol--Internet Protocol (" IP" )--also grew in popularity. [Id. col.5:30­33 (explaining that " a well-known communication protocol used by the Internet is a Transmission Control Protocol/Internet Protocol (TCP/IP)" ).] Over time, it became clear that application of digital technologies to the PSTN could enhance the transmission capacities of its telephone lines. As a result, new technologies emerged to adapt the PSTN' s established infrastructure for new purposes, such as the transmission of computer data. Technologies such as dial-up modems and digital subscriber loop (" DSL" )

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technology made it possible for computers to intercommunicate over the PSTN. Such technologies work by converting a computer' s digital communication (i.e., its 1s and 0s) into analog electrical signals (i.e., continuous, sinusoidal-shaped waveforms) that can be transmitted over the PSTN' s copper wires. At the same time the PSTN was being adapted to carry digital data, computer networking technologies were being adapted to carry telephone information. One technology born from this convergence of telephony with computer networking was " Voice over Internet Protocol," which is often shortened to " VoIP." VoIP permits the routing of voice communications over the Internet or through any other IP-based networks. A VoIP call can be initiated from a user' s computer by launching a software program application called a " softphone," and instructing the software to initiate a call on the network. Instead of using a keyboard to type messages for transmission over the computer data network, the caller simply talks into a computer equipped to receive and convert the speech into data packets for transfer using a VoIP protocol. At the receiving end, the voice packets are converted back into speech. This convergence of computer and telephone technologies for the benefit of consumers is in greater demand today, although the process has been difficult because of the substantially divergent history, development, physical infrastructure, and protocols. While voice and data may travel smoothly from one end of the PSTN to another using telephonic protocols, they do not easily cross over the computer networks, and vice-versa. This inability of the telephone and computer networks to operate well together is an issue addressed in the patents in suit. B. The Patents-in-Suit

Even though the telephone and computer networks came to share the same physical lines (regardless of whether it is a telephone line or computer line), both networks nonetheless remained logically and functionally separate, and continued using their independently-developed 3

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protocols and technology platforms. The field of unified communications emerged from the need to bridge this separation of communication services and options in these networking technologies. The patents-in-suit bridge some of these logical and functional gaps, allowing consumers to leverage the advantages of both networks. 1. The '439 and '289 Liffick Patents

Stephen Liffick, the named inventor of the ' 439 and ' 289 patents, realized that he could leverage computer technology to address certain problems faced by telephone users. As the patents note, " [e]xisting telephone technology does not provide the telephone subscriber with a technique for controlling access to the user' s telephone." [Ex. 2, ' 439 patent col.2:58­60; see also Ex. 3, ' 289 patent col.2:57­59.] For instance, even with all the advancements in telephone systems, users in the later half of the 1990s were " still limited in determining with whom the user wishes to speak, and when the user wishes to speak with certain parties or, at the user' s option, not speak with certain parties." [Ex. 2, ' 439 patent col.1:23­26.] Likewise, despite all of the advances (such as cellular telephones) or options (such as call waiting) in telephone technologies, there was still a " significant need for a system and method that can establish a telephone communication link when both parties are available to communicate." [Ex. 3, ' 289 patent col.1:44­46.] Simply put, " existing telephone technologies do not always provide [the] user with the desired degree of control over incoming calls." [Ex. 2, ' 439 patent col.1:33­35.] By converging the parallel worlds of telephony and computer technologies, Mr. Liffick offered a solution to these problems. [Id. col.2:65­67 (" The present invention combines telephone technology with Internet technology to allow the user to `filter' incoming calls based on user-selected criteria." ).] On March 24 and April 13, 1999, Mr. Liffick filed the applications that would ultimately issue as the ' 439 and ' 289 patents, respectively.

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Entitled " System and Method for User Affiliation in a Telephone Network," the ' 439 patent gave users more control over their incoming calls by allowing them to define callprocessing criteria through their computers. In one of the preferred embodiments, the ' 439 patent teaches that, instead of immediately connecting an incoming call to the destination telephone, the receiving central office switch (116) would first connect with the Internet computer network (134) to access certain user-defined affiliation lists. [Ex. 2, ' 439 patent col.5:21­25, col.6:23­28, col.6:55­65.] To mediate between the two technology platforms, the ' 439 patent contemplates the use of a computer-telephony interface (136) through which the telephone system queries a database which resides on the computer network and which is modifiable by the user through his computer. [Id. col.5:40­50, 6:29­38.] Based on this information, the telephone system could process the incoming call according to the userselectable criteria by blocking the call, allowing certain calls to reach the destination phone, sending it to voicemail, or handling it in some other manner that the user has indicated. [Id. col.8:35­9:6.] The ' 289 patent similarly leverages the advantages of computer technology to process telephone calls. Entitled " System And Method for Computerized Status Monitor and Use in A Telephone Network," the ' 289 patent is directed to determining when a user is available for a call by monitoring the activity of the caller' s computer or callee' s computer, and checking, for example, whether the computer status is active or idle. [Ex. 3, ' 289 patent, Abstract.] As the patent illustrates, the invention " combines telephone technology and computer network technology to monitor a caller and callee' s computer activity and to access call processing criteria selected by the caller and callee and stored on the computer network." [Id.]

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2.

The '064 and '357 O'Neal Patents

The O' Neal patents relate to solutions that allow users to integrate and easily access and manage the various communications services and options associated with data-centric and telephony-centric networks. Although these two types of networks began to converge from a physical infrastructure standpoint, the communications services and options associated with each of these networks (e.g., e-mail, voicemail, facsimile, and pager services and options) remained separate from the perspective of administrative and user accessibility. [Ex. 4, ' 064 patent col.2:46­63.] At the time of the invention, there existed a pronounced separation between the communications services offered through the respective data and telephone networks as viewed in the traditional sense. For example, e-mail service (typically a data-centric network service) was considered separate from voicemail, facsimile and paging services (all typically considered telephony-centric network services). [Id.] From the practical standpoint of a user, this imposed a significant burden in terms of managing and accessing these various services via different providers, using separate account information, and separate devices. [Id. col.3:7­22.] Changing and customizing communications settings for the various options became laborious and time-consuming. Indeed, the inventors of the O' Neal patents recognized that one " serious consequence" of this separation was " the burden on the consumer who needs to manage the communications options associated with different services (which [were] assigned to different physical devices and managed as different accounts) to ensure that incoming and outgoing messages are properly handled." [Id. col.3:7­12.] On January 29, 1999, Stephen O' Neal and John Jiang filed the application that would ultimately issue as the ' 064 patent. Entitled " Centralized Communication Control Center for Visually and Audibly Updating Communication Options Associated With Communication Services of a Unified Messaging System and Methods Therefor," the ' 064 patent is directed to a 6

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unified messaging system that brings together multiple communication services and options on a single graphical user interface (" GUI" ) or telephone user interface (" TUI" ) to " allow a subscriber of various communication services to review and customize his communication options, in an interactive and simplified manner, via either the data-centric network or the telephony-centric network." [Ex. 4, ' 064 patent col.1:56­59.] The ' 357 patent is a continuation of the ' 064 patent and is entitled " Centralized Communications Control Center Methods Therefor." 2 The unified communications systems conceived by the inventors of the O' Neal Patents greatly improved accessibility to a user' s multiple communication services and associated options by presenting multiple services and options to a user at the same time either visually, via the graphical user interface, or audibly, via a telephone user interface. [Id. col.4:27­47.] Using a web browser, for example, a user may easily log into the system, make changes to multiple services (e-mail, voicemail, facsimile) and associated options by simply pointing and clicking, and then storing the changes in the system. The user also can make changes via telephone, by dialing into the system and entering digits in response to audible prompts. This invention fully integrates the various communications services and options associated with the telephony-centric and data-centric networks in a manner that greatly enhances user accessibility. II. THE LEGAL FRAMEWORK FOR CLAIM CONSTRUCTION Claim construction is a question of law reserved solely for the court. Markman v. Westview Instr., Inc., 517 U.S. 370, 391 (1996); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998). The court construes the disputed claim terms by primarily considering the intrinsic evidence, which includes the claim itself, the specification, and the

2

Because the ' 064 and ' 357 patents share a common specification, citations are made to the ' 064 patent for ease of reference. 7

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prosecution history of the patent. Vitronics Corp. v. Conceptronic, Inc., 90 F. 3d 1576, 1582 (Fed. Cir. 1996). Under established rules of claim interpretation, the court must first consider the words of the claims themselves, giving those words their ordinary and customary meaning to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. Phillips v. AWH Corp., 415 F.3d 1303, 1312­13 (Fed. Cir. 2005) (en banc). The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including other claims of the patent-- whether asserted or unasserted-- and the specification. Id. at 1314 (citing Vitronics, 90 F.3d at 1582). Based on the statutory requirement that the inventor provides a " full" and " exact" description of the claimed invention, the specification is " the primary basis for construing the claims," and it is " entirely appropriate for a court . . . to rely heavily on the written description for guidance as to the meaning of the claims." Id. at 1316­17. Nonetheless, characteristics of preferred embodiments should not become part of the claims as extraneous limitations. See id. at 1323. In addition to the claims and the written description, the Court must also review the patent' s prosecution history, which is " the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims." Vitronics, 90 F.3d at 1582­83. A patent applicant can limit claims during prosecution by, for example, altering claim language to overcome an examiner rejection, arguing to overcome or distinguish a reference, or disavowing claim coverage. Omega Eng' g, Inc. v. Raytek Corp., 334 F.3d 1314, 1321 (Fed. Cir. 2003). The Court may also consider " trustworthy" extrinsic evidence to ensure that its claim

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construction is not inconsistent with " clearly expressed, plainly apposite, and widely held understandings in the pertinent technical field." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999). This is especially so for technical terms. Id. Such extrinsic evidence may take the form of expert testimony, dictionaries, technical treatises, and articles. Vitronics, 90 F.3d at 1584. Courts may not, however, rely on extrinsic evidence to contradict or vary the meaning of claims provided by the intrinsic evidence. Phillips, 415 F.3d at 1318. III. THE PROPER CONSTRUCTION OF THE '439 AND '289 PATENTS A. "telephone network" and "computer network" Defendants' Construction " network for carrying telephony information originated by telephones" " network for carrying digital data originated by computers"

Disputed Term Microsoft's Construction " network for carrying telephony "telephone information." network" " network for carrying digital " computer data." network"

While the parties have proposed different constructions for " telephone network" and " computer network," they agree on at least two points. First, there is consensus that the disputed terms should have the same meaning in both the ' 439 and ' 289 patents. Second, the parties agree that the " telephone network" carries telephony information, and the " computer network" carries digital data. Although ALE had agreed to Microsoft' s proposed constructions as the proper constructions for " telephone network" and " computer network" in a prior proceeding,3 Defendants now require the additional restriction that the information carried on the networks must be originated by a particular device. Thus, the parties' dispute boils down to whether the claim construction must include Defendants' additional verbiage that limits " telephone network" to carrying telephony information originated only by telephones and " computer network" to
3

Microsoft and ALE had litigated the Microsoft patents-in-suit in a parallel proceeding before the U.S. International Trade Commission. See Certain Unified Communication Systems, Products Used With Such Systems, and Components Thereof, Inv. No. 337-TA-598, Initial Determination, 2008 WL 683369 (U.S.I.T.C. Jan. 2008) (J. Luckern). 9

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carrying digital data originated only by computers. Incorporating such limitations distorts the ordinary meaning of those terms and contradicts the intrinsic evidence. The Court should adopt Microsoft' s proposed constructions and reject Defendants' attempt to import extraneous limitations into the claim terms. 1. Defendants' Constructions Are Contrary to the Ordinary Meaning of " Telephone Network" and " Computer Network"

Contrary to Defendants' strained constructions, a person skilled in the art would understand-- as their own technical expert readily admitted-- that the terms " telephone network" and " computer network" are defined by the information carried on the network, not by the particular device originating the information. [Ex. 6, Hyde-Thomson Dep. Tr. at 56:13­17; see also Ex. 12, Beckmann at 21­22.] Defendants' technical expert, Mr. Hyde-Thomson testified during his deposition at the ITC that he " agree[d] with the construction . . . that a definition of a telephone network is a network that deals with telephony information." [Ex. 6, Hyde-Thomson Dep. Tr. at 56:13­17 (emphasis added).] More importantly, Mr. Hyde-Thomson admitted that a " telephone network" can include data originating from devices other than traditional " telephone" handsets, such as, for example, from a computer running a softphone application. [Id. at 217:10­ 15 (" [A] soft phone program is dealing with telephony data. It' s transmitting voice data and setting up calls and so on. . . . and that' s the definition of a telephone network." ).] In his latest expert report dated April 18, 2008, Mr. Hyde-Thomson offered no distinction between telephone and computer networks based on the particular device originating the information. For example, he described VoIP as the " transmission of voice in small packets between various points on a telephone or a computer network, such as between computers connected to the Internet, or between IP telephones." [Ex. 7, Hyde-Thomson Rebuttal at 8.]

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Not only are Defendants' constructions contrary to the ordinary meaning of those terms, but they conflict with how those terms are used in the claims of the ' 439 and ' 289 patents. First, there is nothing in the claim language requiring the telephone network or the computer network to be defined by the particular device originating the information. In fact, the claims expressly recognize that a computer may be connected to a computer network, as well as a telephone network. For example, the ' 289 patent claims recite " a system that includes a telephone network and a computer network . . ., wherein each user is connected through a user computer [to] the computer network and is logically connected through the computer network to the telephone network . . . ." [Ex. 3, ' 289 patent col.18:36­40.] A telephone network is still a telephone network, regardless of whether a telephone or computer is connected to that network. Defendants' construction restricting " telephone network" to a network carrying telephony data originated by telephones and " computer network" to a network carrying digital data originated by computers makes no sense in light of their ordinary meaning and usage in the claims. 2. Defendants' Constructions Are Not Supported By the '439 and '289 Patent Specifications

Both the ' 439 and ' 289 patent specifications make it clear that " telephone network" and " computer network" are not limited to any particular device or specific form of communications: Moreover, those skilled in the art will appreciate that the invention may be practiced with other computer system configurations, including hand-held devices, multiprocessor systems, microprocessor-based or programmable consumer electronics, network PCs, minicomputers, mainframe computers, and the like. The invention may also be practiced in distributed computing environments where tasks are performed by remote processing devices that are linked through a communications network. In a distributed computing environment, program modules may be located in both local and remote memory storage devices. [Ex. 2, ' 439 patent col.3:14­24 (emphasis added); Ex. 3, ' 289 patent col.3:19­29.]

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There is no support in the ' 439 and ' 289 patent specifications for limiting telephone and computers networks based on the particular devices originating the information carried on those networks. There is also no indication in the ' 439 and ' 289 patent specifications that telephone networks may not carry information from devices other than telephones or that computer networks may not carry information from devices other than computers. To the contrary, both patents specifically discuss configuration in which networks handle data from a wide variety of devices. For example, the specifications disclose a modem, which was well-known for connecting computers to the telephone network and transmitting data over a telephone network. The specifications state that " personal computer 20 typically includes a modem 45 or other means for establishing communications over the wide area network 44, such as the Internet. The modem 45, which may be internal or external, permits communication with remote computers 46-60." [Ex. 2, ' 439 patent col.4:16­21; Ex. 3, ' 289 patent col.4:23­25.] Likewise, the written descriptions indicate that the telephone voice information transmitted between the central offices of local exchange carriers can also travel over digital media " such as fiber optics." [Ex. 2, ' 439 patent col.4:40; Ex. 3, ' 289 patent col.4:47.] Thus, Microsoft' s proposed constructions for " telephone network" and " computer network" reflect the ordinary meanings of those terms as understood by persons skilled in the art. The Court should reject Defendants' attempt to import extraneous limitations into the claims. B. " current activity of subscribers on the computer network or according to current activity of the user on the computer network" Defendants' Construction " whether the calling party is present on the computer network or the called party is present on the computer network."

Microsoft's Construction " current status of subscribers on the computer network or according to current status of the user on the computer network"

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All of the asserted claims of the ' 439 patent require that the filtering or processing of the incoming call takes place conditioned on or according to " current activity of subscribers on the computer network or according to current activity of the user on the computer network." Microsoft' s use of the word " status" is supported by the specification and encompasses the different types of activity disclosed in the ' 439 patent. By contrast, Defendants' construction improperly reads out the express claim language and is not supported by the intrinsic evidence. 1. Defendants' Construction Is Contrary to the Plain Language of the Claims and Unsupported by the Specification

Defendants' construction reads out express claim language, viz. the terms " current" and " activity," from the text of the claims. It would require filtering or processing of incoming calls based only on whether the user is " present on" the computer network. This ignores the patent' s express requirement that filtering be based on attributes both current and related to the user' s activity. Contrary to Defendants' apparent belief, " present" on the computer network is neither a synonym of nor an appropriate interpretation of " current activity" on the computer network. If anything, " presence" is a mere precursor to " current activity," insofar as a user must be " present" on the network before he can have any " current activity" there. It is well settled that a construction that reads out express claim language is axiomatically wrong. Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1370 (Fed. Cir. 2003) (" Thus, the hose is expressly recited in the body of the claim and was improperly read out of the claim by the district court." ); Texas Instruments Inc. v. Int' l Trade Comm' n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (" [T]o construe the claims in the manner suggested by TI would read an express limitation out of the claims. This we will not do because `[c]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth.' " ) (quoting

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Autogiro Co. of Am. v. United States, 384 F.2d 391, 396 (Ct. Cl. 1967)). For at least this reason, the Court should reject Defendants' proposed construction. Moreover, Defendants' use of the word " present" finds no basis in either the ordinary meaning of " activity" or in the meaning of " activity" set forth in the ' 439 patent specification. Nowhere does the ' 439 patent specification define " activity" on the computer network to mean " present" on the computer network." Nor does the ' 439 patent specification disclose any filtering or processing of incoming calls based on whether the user is present on the computer network. Defendants' proposed construction ignores the direct and straightforward explanation of " activity" provided in the specification. Defendants' proposed construction also ignores the specification' s numerous descriptions of techniques for routing calls based on factors going far beyond simply whether the user is " present" on the network: For example, the user may accept calls from certain work parties during specified period of the day (e.g., 9:00 a.m.­11:00 a.m.), block calls from selected calling parties during other periods of time (e.g., 12:00-- 1:00 p.m.), or allow calls during a business meeting only from certain calling parties (e.g., the boss). [' 439 patent col.9:48­54; see also id. col.11:35­56 (describing techniques for routing a call to a specified message based on whether the callee is in a meeting, or not accepting calls), id. col.11:56­col.12:5 (describing techniques for routing a call based on a callee' s computerized schedule).] The false binary of Defendants' proposed construction-- a party must be either " present" or " not present" on the computer network-- would improperly read out such embodiments. 2. Microsoft's Proposed Construction Is Supported by the Intrinsic Evidence

In contrast to Defendants' flawed construction, Microsoft' s construction is supported by the intrinsic evidence for at least two reasons: (i) the ' 439 patent ties the words " activity" and 14

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" status" closely to one another, repeatedly using them interchangeably, and (ii) the broader term " status" encompasses the different types of activity identified in the specification. Specifically, Microsoft' s construction gives full meaning to this disputed limitation by covering two disclosed embodiments: (i) one based on the user' s dynamic activity on a computer network and (ii) the other based on the user' s conditional activity on the computer network. a. The Intrinsic Evidence Defines " Activity" as " Status"

The ' 439 patent specification defines " activity" as " status" ­ by tying the words " activity" and " status" closely and repeatedly using both terms interchangeably to convey the same idea. For example, the ' 439 patent describes the various sub-lists of the affiliation list 150 in terms of subscriber " activity," with the forward list 160 being a " list of Internet subscribers whose activity is reported to the user," the block list 164 containing " a list of Internet subscribers that the user does not want to monitor his Internet activity," and the allow list 166 being " a list of Internet subscribers . . . whose Internet activity the user does not wish to monitor." [Ex. 2, ' 439 patent col.8:6­34 (emphasis added); see also Ex. 3, ' 289 patent col.8:14­41 (same).] But later, when discussing a specific use of these sub-lists in a preferred embodiment, the ' 439 patent substitutes the word " status" for " activity" when describing how " the affiliation list 150 may contain status data on an individual basis." [Ex. 2, ' 439 patent col.10:17­18 (emphasis added); see also Ex. 3, ' 289 patent col.10:24­25 (same).] This substitution of " status" for the earlier use of " activity" in the affiliation sub-lists is also apparent when the specification explains that, " [i]n the example illustrated in FIG. 7, the affiliation list 150 contains one individual with an `allowed' status, one individual with a `blocked' status, and one individual with a `conditional' status based on user-selected criteria." [Ex. 2, ' 439 patent col.10:21­23 (emphases added); see also Ex. 3, ' 289 patent col.10:28­31 (same).]

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In fact, one may substitute " status" for " activity," and vice-versa, in the specification of the ' 439 patent without any loss or change in meaning. [E.g., Ex. 2, ' 439 patent col.7:57­8:34; Ex. 3, ' 289 patent col.7:65­8:42.] Take for example the sentence " [w]ith the system 100, it is possible to determine who is monitoring the user' s Internet activity." [Ex. 2, ' 439 patent col.8:12­14; Ex. 3, ' 289 patent col.18­21.] When " status" substitutes for " activity," the meaning of the sentence is indeed preserved: " [w]ith the system 100, it is possible to determine who is monitoring the user' s Internet status." This interchangeability of both words is clear evidence that " status" is the correct construction for " activity." Finally, the prosecution history of the ' 439 patent also supports Microsoft' s proposed construction. In distinguishing the prior art, the patentee stated that " Brennan teaches that the flow of information is fixed and is not dependent on any particular status or activity of the user or of the caller and that the flow of information is determined by the user' s requirement for that particular caller." [Ex. 14, U.S. Patent App' n No. 09/275,689, Amendment A, 13 (Dec. 28, 2001) (emphasis added).] There, the patentee used the conjunction " or" to connect " status" and " activity," indicating that both words mean the same thing. b. Microsoft's Construction Covers the Disclosed Embodiments

Not only does Microsoft' s use of the word " status" reflect its usage in the specification, but it also best describes the different types of activity disclosed in the ' 439 patent-- one based on the user' s dynamic activity on the computer network, and the other based on the user' s conditional activity on the computer network. First, the specification describes a dynamic type of activity, where the ongoing " Internet activity [that] a user wishes to monitor" can be used by the system to filter calls. This activity is further apparent in the patent' s teachings that the user' s computer receives information " indicating which Internet subscribers on the forward list 160 are currently active on the 16

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Internet 134." [Ex. 2, ' 439 patent col.8:3­5.] According to the patent, a user can also " prevent the user' s Internet activity from being reported to the particular Internet subscriber." [Id. col.8:26-28.] The monitoring of this activity can also occur in reverse, with others being able to detect the user' s Internet activity as soon as he accesses the Internet using his computer. [Id. col.8:9­13) (" When the user accesses the Internet 134 with the user computer 154, that activity can be monitored by others. With the system 100, it is possible to determine who is monitoring the user' s Internet activity." (underlining and bold added for emphasis)).] As discussed above, the specification refers to this dynamic form of activity as status. [See, e.g., id. col.10:17­23.] Based on the user' s status along with information stored on data structure' s lists, " the central office switch 116 will access the Internet 134 in real-time and review data in the affiliation list 150 to thereby process incoming calls for the user in accordance with the rules present in the affiliation list." [Id. at 9:20-24.] Second, the dynamic activity discussed above is not the only type of activity disclosed in the ' 439 patent. The ' 439 patent explicitly discloses filtering based on various " conditional statuses, " such as the time of day, current availability of the user, work status, or the like." [Ex. 2, ' 439 patent col.9:45­55).] The user' s conditional status serves as a reflection or proxy for the user' s activity on the computer network. For instance, the patent discloses: · Filtering based on dynamic alteration of affiliation list based on time of day: " It should be noted that the affiliation list 150 may be dynamically altered by the user ... to change the call processing options for a particular list depending on the user' s preferences. For example, the user may want to accept all calls from any source at certain times of the day. . . . Thus, the central office switch 116 will access the Internet 134 in real-time and review data in the affiliation list 150 to thereby process incoming calls for the user in accordance with the rules present in the affiliation list." [Id. col.9:7­24 (emphases added).] Conditional blocking, or do-not-disturb, based on status of individual callers: " For example, the user can edit the allow list 166 to specify that certain individuals are `allowed' while other individuals may be allowed, conditionally allowed, or blocked

·

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all together. . . . If the individual calling party has an associated blocked status, the central office switch 116 will not process the call and will not connect it to the destination telephone 104." [Id. col.9:34­44 (emphases added).] Beyond these examples, the specification further teaches that the claimed system processes incoming calls based on individuals' statuses stored on a computer network, like the Internet, with time of day or do-not-disturb blocking being among these statuses: Rather than incoming call filtering on the basis of presence in a particular list, such as the allow list 166, as illustrated in FIG. 6, the affiliation list 150 may contain status data on an individual basis. . . . In the example of FIG. 7, the userselected criteria may be based on the particular phone from which the call is originating as well as the time of day in which the call is originated. For example, the user may wish to allow all calls from a particular number, such as an [sic] caller' work number. However, calls from another number, such as the s caller' home phone, may be blocked. Other calls, such as from a caller' cellular s s telephone, may be allowed only at certain times of day. FIG. 7 is intended to illustrate some of the call processing options that are available to the user. As can be appreciated, a variety of different conditional status criteria may be applied to one or more potential calling parties. However, a common feature of the system 100 is that the telecommunication system (e.g., the central office switch 116) determines calling party status on the basis of information stored on the Internet and processes the incoming call in accordance with the user-specified criteria. [Ex. 2, ' 439 patent col.10:15­42 (emphases added).] The ' 439 patent' s specification discloses a number of user-selectable conditional criteria as status indicators, and Microsoft' s proposed construction correctly captures this embodiment. See, e.g., Sandisk v. Memorex Products, Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005) (" A claim construction that excludes a preferred embodiment, moreover, is rarely, if ever, correct." ). Microsoft' s proposed construction is consistent with the intrinsic evidence, and thus, should be adopted as the proper construction. See Phillips, 415 F.3d at 1317 (" The construction that stays true to the claim language and most naturally aligns with the patent' s description of the invention will be, in the end, the correct construction." ) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

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C.

" monitoring activity of a user computer" Defendants' Construction " determining whether a called party' s computer is active or idle"

Microsoft's Construction Term does not require explicit construction. If construction necessary: " monitoring the status of a user computer"

This term does not require explicit construction, as its ordinary meaning reflects its usage in the ' 289 patent. To the extent the Court determines that an explicit construction for this term is necessary, Microsoft' s proposed construction reflects the teachings of the ' 289 patent. [Ex. 12, Beckmann at 27.] The parties' dispute centers on whether the term should cover many different states, as reflected by Microsoft' s " status" construction or only two particular states, as indicated by Defendants' " active or idle" construction. Microsoft' s construction is consistent with the intrinsic evidence for at least two reasons: (i) the ' 289 patent ties the words " activity" and " status" closely to one another, repeatedly using them interchangeably; and (ii) the broader term " status" encompasses " active or idle," along with other types of " activity" identified in the specification. First, the intrinsic evidence ties the words " status" and " activity" closely. This point is most apparent in the Summary of the Invention of the ' 289 patent, which states that " the potential callee' s computer activity may be monitored and the status of the computer as idle or active may be reported to the computer network." [Ex. 3, ' 289 patent col.2:15­18 (emphasis added).] In this sentence, the phrase " status of the computer" is used interchangeably with " computer activity," demonstrating that " status" and " activity" are one and the same in the patent. This sentence further indicates that the words " active" and " idle" are not the equivalent of " activity," but merely reflect possible statuses of the user' s computer. At repeated points throughout the rest of the ' 289 patent, the terms " activity" and " status" are used to denote the same concept-- a description of what the computer is doing. [See, e.g.,

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Ex. 3, ' 289 patent col.2:15­18 (" [T]he potential callee' s computer activity may be monitored, and the status of the computer as active or idle may be reported to the computer network." ) (emphasis added), 16:18­19 (describing a " data structure containing call processing criteria, such as . . . the current status of the user' s computer (e.g., the idle or active status of the callee computer 154)." ) (emphasis added), 17:59­62 (" The system 100 can apply call processing rules derived from any source, such as the current status (e.g., idle or active) of the callee computer 154 . . . ." ) (emphasis added). Second, Microsoft' s proposed interpretation acknowledges that, while " active" and " idle" can correspond to a state or " activity" of the computer, they are not the only possible states of the computer on the computer network. This point is evidenced by the patent' s use of the abbreviation " e.g." to connect the phrase " idle or active" to the word " status." [Ex. 3, ' 289 patent col.16:18-19 (" current status of the user' s computer (e.g., the idle or active status of the callee computer 154)." ); 17:59-62 (" The system 100 can apply call processing rules derived from any source, such as the current status (e.g., idle or active) of the callee computer 154 or the caller computer 184 . . . ." ) (emphasis added).] Defendants' expert, Mr. Hyde-Thomson, conceded during the ITC hearing that the use of the abbreviation " e.g." means that there are other possibilities besides idle or active. [Ex. 8, Hyde-Thomson ITC Tr. at 1573:24­1574:1; 1575:18­ 22.)] Accordingly, the correct construction of " activity" must be broader than " active" or " idle," and only " status" provides the necessary breadth for this purpose. This phrase does not require explicit construction-- absent Defendants' inappropriate attempts to limit the activity to " active or idle," the phrase' s meaning is clear on its face. By limiting " activity" to either " active or idle," Defendants' construction creates a false binary and improperly reads out the ' 289 patent' s applicability to activity other than " on" or " off."

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However, should construction be necessary, Microsoft' s proposed construction is fully supported by the specification of the ' 289 patent and should be adopted by the Court. " Status" is the only proposed interpretation that comfortably encompasses all the examples of " activity" identified in the ' 289 patent, making " status" the best construction for " activity." See Phillips, 415 F.3d at 1317 (" The construction that stays true to the claim language and most naturally aligns with the patent' s description of the invention will be, in the end, the correct construction." ) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

D.

" at the computer network, receiving information from the telephone network that a first party from whom a call is originating desires to establish telephone communication with a second party" Defendants' Construction " receiving at the computer network an indication from the telephone network that a first party requests to set up a telephone call with a second party prior to the time the call is placed by the first party"

Microsoft's Construction Term does not require explicit construction. If construction necessary: " receiving at the computer network information from the telephone network that a telephone call from a first party to a second party has been initiated"

Microsoft does not believe that this phrase requires explicit construction, as its plain and ordinary meaning reflects its usage in the ' 289 patent. Should the Court determine that this phrase requires explicit construction, Microsoft' s proposed construction best captures the ordinary meaning of the phrase. [Ex. 12, Beckmann at 29.] Defendants have requested that the Court construe this term in order to bootstrap new noninfringement positions, and have proposed a construction that would reduce the claimed invention to nonsense. Remarkably, Defendants' proposal would require that the computer network receive information from the telephone network regarding an incoming call before the call is even placed. Notably, neither ALE nor Mr. Hyde-Thomson ever raised this novel construction theory before the ITC.

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Claim limitations must come from the claims themselves-- not from a selective reading of the specification. Phillips, 415 F.3d at 1323. Nothing in the asserted claims of the ' 289 patent indicates that the computer network must receive information from the telephone network about an incoming call before the call is even made. The ' 289 patent specification also clearly describes the user first placing a telephone call: To place a telephone call, the caller activates the originating telephone 102 to dial in the telephone number corresponding to the destination telephone number 104, thereby establishing the communication link 110 with the central office switch 106. In turn the central office switch 106 establishes . . . a communication link with the central office switch 116. [Ex. 3, ' 289 patent col.5:7­14.] The specification goes on to describe the steps of the invention, beginning from this foundation. [Id. col.5:29­43.] The ' 289 patent fully supports Microsoft' s position that this term' s ordinary meaning would be sufficient for a person of ordinary skill to understand and interpret the asserted claims. The drawings themselves teach call processing after a call has been originated:

[Ex. 3, ' 289 patent fig.8.] In the accompanying disclosure, the ' 289 patent sets forth a series of steps directly contradicting Defendants' proposed construction: At a start 200, the calling party has placed a call from the originating telephone 102 (see FIG. 2) to the destination telephone 104. In step 202, the central office 22

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switch 116 has received call data from the originating telephone 102. . . . In step 204, the central office switch 116 (see FIG. 2) establishes the communication link 132 with the Internet 134. . . . In step 206, the system 100 accesses the affiliation list 105 for the user (i.e., the called party). [Id. col.12 ll.38­50 (emphasis added).] The cited disclosure makes clear that the ' 289 patent discloses a system in which the computer network receives from the telephone network information about an incoming call after the call has been placed. Defendants' proposed construction should therefore be rejected. Defendants also attempt to import the extraneous limitation-- " requests to set up a telephone call with a second party" -- into their proposed construction, despite the fact that the phrase " set up" appears nowhere in the specification of the ' 289 patent. Defendants' choice of terminology is an attempt to import special meanings-- not supported by the specification-- into the claims. Indeed, the only time " call setup" was ever mentioned in the prosecution of the ' 289 patent was during prosecution when the patentee wrote that a cited reference, part of which involved a " call setup" function, was " manifestly unlike the claimed invention." Ex. 13, U.S. Patent App' n No. 09/291,693, Amendment A at 11 (Mar. 4, 2002). And, as discussed, nothing in the ' 289 patent specification requires an exchange of information between the computer and telephone networks prior to the call. Thus, Defendants' attempts to add extraneous limitations to the claim terms should be rejected. This phrase does not require explicit construction-- absent Defendants' inappropriate attempts to import claim limitations, the phrase' s meaning is clear on its face. However, should construction be necessary, Microsoft' s proposed construction is fully supported by the specification of the ' 289 patent and should be adopted by the Court.

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IV.

THE PROPER CONSTRUCTION OF THE '064 AND '357 PATENTS A. " unified messaging system" Defendants' Construction " system that allows messages of a datacentric network and a telephony-centric network to be received, stored, retrieved, and forwarded to the communication devices or networks employed for the transmission of the messages"

Microsoft's Construction " system that allows messages of a datacentric network and a telephony-centric network to be received, stored, retrieved, and forwarded without regard to the communication devices or networks employed for the transmission of the messages (i.e., in a coordinated manner)"

The parties' dispute centers on whether the system allows messages to be received, stored, retrieved, and forwarded without regard to the communication devices or networks (i.e., in a coordinated manner). Specifically, Microsoft' s construction requires the messages to be received, stored, retrieved and forwarded without regard to the communication devices or networks. In other words, a unified messaging system allows messages to be received, stored, retrieved and forward in a coordinated manner. Microsoft' s proposed construction finds direct support in the specifications of the ' 357 and ' 064 patents, which expressly define " unified messaging system" as a system that " allows messages to be received, stored, retrieved, and/or forwarded . . . without regard to the communication devices and/or networks (i.e., data-centric vs. telephony-centric) employed for the transmissions of the messages." [Ex. 4, ' 064 patent col.6:59­65 (emphasis added).] Mr. Hyde-Thomson offered no opinion regarding Microsoft' s construction and, therefore, does not appear to dispute it. [See Ex. 9, Hyde-Thomson at 3­9.] Defendants' construction acknowledges that a unified messaging system allows messages to be received, stored, retrieved, and forwarded, but inexplicably ignores the explicit language of the specification stating that the unified messaging system performs these tasks without regard to the communication devices or networks employed for the transmissions of the messages. [Ex. 4,

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' 064 patent col.6:59­65] A unified messaging system represents a central store for subscribers' messages and manages messages " without regard to the communication devices or networks employed for the transmissions of the messages." Those skilled in the relevant art at the time of the O' Neal inventions would have understood that a unified messaging system' s store is maintained so that a subscriber may retrieve messages using any one the subscriber' s communication devices, and thus, a unified messaging system has to be capable of receiving, storing, retrieving and forwarding messages in a coordinated manner. [Ex. 12, Beckmann at 13­ 14.] In other words, an action taken on a communication using any one of a subscriber' s communication devices needs to be reflected on all other devices that a subscriber might use to access the communication via the centralized store. The coordinated management of messages and communications was a known and important feature of unified messaging systems at the time of the invention. For example, presentations prepared by Cisco Systems during the relevant timeframe plainly describe and illustrate this coordination. As shown below, the presentations compare and contrast POP systems which do not provide such coordinated access to a subscriber' s messages, with unified messaging systems, such as IMAP systems, which allow multiple concurrent access to messages stored in a unified messaging system' s central message store using several subscriber devices:

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[Ex. 10, MSAL05059555, MSAL05059557.] The multiple concurrent access, essential to a unified messaging system, allows changes made using one of a subscriber' s communication devices, to be reflected on the subscriber' s other communication devices that access the same messages. This coordination is shown above in MSAL05059557, for example, by the double headed arrows between the subscriber' s communication devices and the central message store. Another Cisco presentation (shown below) describes and illustrates the multiple concurrent access provided in unified messaging systems which is missing from POP (" Post Office Protocol" ) messaging systems.

[Ex. 10, MSAL05059589.] Defendants' proposed construction for this term inexplicably ignores language in the O' Neal patents' specification describing this coordination (i.e., " without regard to the communication devices or networks employed for the transmissions of the messages" ). [Ex. 4, ' 064 patent col.6:62­65.] Microsoft' s proposed construction reflects this language, as well as the understanding of those skilled in the art, and should therefore be adopted.

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B.

" communication options" Defendants' Construction " parameters associated with specific types of communication services"

Microsoft's Construction " settings that control how communication services will be handled"

The term " communication options" is properly construed in view of the intrinsic record to mean " settings that control how communication services will be handled." [See Ex. 12, Beckmann at 15­16.] The ' 064 and ' 357 patents explain that " [o]nce the subscriber saves the changes...the modified communication option settings will be employed to handle future messages transmitted and/or received through either the telephony centric network or the datacentric network." [Ex. 4, ' 064 patent col.17:5­9 (emphasis added).] The surrounding words of the claims reinforce the fact that communication options are settings that control how future communications will be handled. Claim 1 of the ' 357 patent, for example, recites: receiving from said subscriber . . . a first change to at least one of said communication options . . . updating said first change to said account in said subscriber communication profile database, thereby resulting in a first updated subscriber communication profile database, wherein subsequent messages . . . are handled in accordance with said first updated subscriber communication profile database. [Ex. 5, ' 357 patent col.18:61­19:6 (emphasis added).] It is also clear from the claim language of both patents that communication options modify the operation of communication services. [See, e.g., Ex. 4, ' 064 patent col.18:32­36 (" said communication options for said subscriber, said communication options including parameters associated with individual ones of said plurality of said communication services and routings among said plurality of communication services" .] Defendants' construction, however, ignores the explicit language in the claims and patent specifications explaining that communication options are settings that are applied to future communications and control the way future communications are handled. Defendants' construction would read on functions and controls that apply only to past or current (real time)

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communications, rather than settings that apply to future communications. For example, the patents describe parameters associated with e-mail and voicemail services for listening to voicemail messages, reading e-mails, or composing emails. [Ex. 4, ' 064 patent col.14:18­32.] However, the patents never describe these functions as communication options. Instead, the patents solely and consistently describe " communication options" as stored settings that apply to future communications. Microsoft' s proposed construction is consistent with the intrinsic evidence and should therefore be adopted.

C.

" [first/second] enable option for enabling or disabling the [first/second] communication service" Defendants' Construction " an option that allows a subscriber to turn on or off a communication service"

Microsoft's Construction " communication option that controls the extent to which a communication service is implemented"

The phrase " enable option for enabling or disabling the . . . communication service" should be construed consistent with the disclosure in the' 064 and ' 357 patents to mean a " communication option that controls the extent to which a communication service is implemented." [See Ex. 12, Beckmann at 17­18.] The ' 064 and ' 357 patents use the terms " enable" and " disable" more broadly than in the binary sense of switching a service on or off. The patent specifications do not equate the term " enable" with switching on or the term " disable" with switching off a service. For example, Figures 3 and 4 of the ' 064 and ' 357 patents illustrate several ways of enabling and disabling a service, including selecting an ON or OFF radio button and entering or deleting a telephone number in an appropriate field. In a more specific example, the paging service shown in Figure 4 of the patent will not be enabled if an appropriate PIN number is not entered in addition to a paging number. As yet another example, irrespective of

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whether the fax receiving service depicted in Figure 4 (shown as 319) is on or off, the included fax forwarding service can be independently enabled or disabled. Therefore, it is clear from the patents that certain features of a service can continue to function even though other features have been disabled. [See ' 064 Patent col.13:40­60.] According to Defendants' construction, the enable option simply means an option that allows a subscriber to turn on or off a communication service. The O' Neal patents describe " onoff settings," (see, e.g., ' 064 patent col.14:46­49), but do not suggest that these on-off settings are the claimed enable options. As noted above, one skilled in the art would have understood that there are many ways disclosed in the patents for enabling or disabling functions of a communication service beyond simply turning the entire service on or off. Defendants have again ignored the intrinsic record in an attempt to unduly narrow this claim language. Microsoft' s proposed construction is supported by the intrinsic evidence and should be adopted. D. " a single graphical menu for displaying said communication options for each of said communication services at the same time" Defendants' Construction " one graphical menu that shows all of the communication options associated with the subscriber' s communication services"

Microsoft's Construction " a single graphical menu for displaying at least a first communication service and option and a second communication service and option at the same time"

The phrase " a single graphical menu for displaying said communication options for each of said communication services at the same time" is properly construed to mean " a single graphical menu for displaying at least a first communication service and option and a second communication service and option at the same time." [See Ex. 12, Beckmann at 18­19.] Defendants' construction contradicts the very claim language it purports to construe and fails to consider the import of the surrounding claim language.

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1.

Microsoft's Proposed Construction Finds Direct Support in the Plain Language of the Claims

The actual language of the claims is the starting point in any construction analysis, including the language being construed and the surrounding claim language. Phillips, 415 F.3d at 1314. The disputed phrase recites " a single graphical menu for displaying said communication options for each of said communication services at the same time . . . ." (emphasis added). It is well-settled that the use of the word " said" in a claim simply refers to an earlier use of the term in the claim. Intamin, Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1333 (Fed. Cir. 2007