U.S. International Trade Commission

Publication 4136 March 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-598

Certain Unified Communications Systems, 

Products Used with Such Systems, and 

Components Thereof
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4136 March 2010

In the Matter of

Investigation No. 337-TA-598

Certain Unified Communications Systems, 

Products Used with Such Systems, and 

Components Thereof

UNITEU STJ\TE$ INTERNJ\TIONM. TRMlI'.: COMMISSION 

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COMYlUNICJ\ TIONS SYSTEMS, 

PRODUCTS USED WITII StiCH 

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lovnri!:'1ioa No. 337_TJ\-598 

NOTICE OF COMMISSION DECISION TO REVERS£.IN.PJ.RT ....... U MOUIFY_INPJ.RT J\ FIN..t.L INITIJ\L U£TERlItINJ\TION FINDING J\ VIOU TlON OF SECl10N 

337 "'-ND TERlItINJ\TlON OF THE INVESTIGJ\TION WITH J\ FINDING OJ' NO 

VIOLloTlON 

J\GENCY: U.s. lrltemolional Trade Commisoioo:1. 

J\erION: Notice. 

SUMMJ\RY: Notice ;' badly 1Ii-tbot the U.S. lotcnWional Tndo Cottuniooion 11M 

determi.....J to revene.in-pan aDd modilY-in..part I fmal initial det«mination ("'ID") o{1IIe 

pre<idinv; odminiotmive .... .iudi< (".un. The Con>!ni";on hal detcm>inod !hat 1h«e ;. no 

.;olatioo or_ 337 in 111. obove-captiooed inveotigolioD. 

FOR flJRTIlER INFORA-UTlON CONTJ\er: Oim GerdiDe, &q., Offie. "Ithe Goner:ol 

Counoel. U.S. IntcnWiooII Tndo Comotit&ioo, SOO Ii Str.>ot, S.W., W .... ingllln, D.C. 20436, 

telephone (202) 708-SoI6S. Copi .. of llCl<M:OJlfidco _ liJod in ,"'" •• tiou ..;th this 

iDv<ootig>lion ....... win be lvoilable for jnopt"tion during official to"j ' '" bouro (S:'S 1.IIl. to 

S:IS p.m.) in .... Office 01 .... Scue""" u .s. [ntemalionol T ...... Commi .. ion. 500 E Stre«. 

S.W., WuhiDglOD. D.C. 20436. telephone (202) 2QS·2000. GoneroI inlonnatioo <OnCOming til< 

Commisoiao OIly also be obuinod by ",,_iog i .. "'-___ OlI!!Ir:ilwoow.II!l",fOI', The 

p .... tie n:c<>rd fOl this invatiJlli"" IDly be viewed. "" tho Comm;..;oo .. elocInmi<: do<:l::et (EDIS) 

01 Nlp:l!tdis .... i~. HcariDJ-impaind pa ........ ..m.od "'"' iofonnmom on this _""" 

be obtained byo:rntacting tho Own"'i"''''''' IDD tumioaI "" (202) 2QS·181O. 
importation into the United States, the sale for importation, and the sale within the United States 

after importation of certain unified communications systems, products used with such systems, 

and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 

6,421,439 (“the ‘439 patent”); 6,430,289; 6,263,064 (“the ‘064 patent”); and 6,728,357. The 

complaint further alleges the existence of a domestic industry. The Commission’s notice of 

investigation named Alcatel-Lucent (“ALE”) of Paris, France as the only respondent. 

On April 20,2007, Microsoft moved to amend the complaint to: 1) substitute Alcatel 

Business Systems for Alcatel-Lucent as respondent in this investigation, and 2) add allegations of 

infringement of claims 8,28, 38, and 48 of the ‘439 patent, and claim 20 of the ‘064 patent. 

Respondent and the Commission investigative attorney (“IA”) did not oppose the motion. 

On May 17 and September 20,2007, respectively, the Commission determined not to 

review IDS, issued by the presiding ALJ, granting Microsoft’s motions to amend the complaint 

and to terminate the investigation in part based on Microsoft’s withdrawal of certain claims. On 

October 23 and October 26,2007, respectively, the Commission determined not to review IDS, 

issued by the presiding ALJ, granting Microsoft’s motion to terminate the investigation in part 

based on Microsoft’s withdrawal of certain claims and granting ALE’S motion to amend the 

complaint. 

On January 28,2008, the ALJ issued his final ID and recommended determinations on 

remedy and bonding. The ALJ found a violation of section 337 based on his findings that the 

respondent’s accused products infringe claims 1 and 28 of the ‘439 patent, and that those claims 

were not proven invalid and that the domestic industry and importation requirements of section 

337 were met as to those claims. On February 11,2008, all parties, including the IA, filed 

petitions for review of the final ID. On February 19,2008, all parties filed responses to the 

petitions for review. 

On March 14,2008, the Commission determined to review-in-part the final ID. 

Particularly, the Commission determined to review: 1) the ALJ’s construction of the claim term 

“current activity of subscribers on the computer network;” 2) the ALJ’s determination that ALE’S 

OXE system directly and indirectly infringes the ‘439 patent; 3) the ALJ’s determination that 

ALE’S OXO system does not infringe the ‘439 patent; 4) the ALJ’s determination that claims 1 

and 28 of the ‘439 patent are not invalid in view of U.S. Patent No. 6,041,114 (“the ‘1 14 patent”) 

or U.S. Patent No. 5,652,789 (“the ‘789 patent”); 5) the ALJ’s determination that claim 38 of the 

‘439 patent is invalid in view of the ‘1 14 patent; and 6) the ALJ’s determination that claim 38 is 

not invalid in view of the ‘789 patent. 

With respect to violation, the Commission requested written submissions fiom the parties 

relating to the following issues: 

1) the ALJ’s finding that the “current activity of the user on the 

computer network” as found in the ‘439 patent “can consist of both 

user-selected indicators based on user activity (e.g., ‘conditional 

2 
processing' as per the '439 specification) and the transfer of data 

between the computer and telephone networks while the user is 

engaged in a VoIP phone call" (ID at 47), and the implications of 

this finding for the infringement and invalidity analyses; 

2) what is the exact demarcation between the '439 patent claim 

terms "telephone network" and "computer network" as it relates to 

claim construction, invalidity using the '1 14 and '789 patents, and 

the infringement analysis for a Voice-over-IP (VoIP) 

communication system; 

3) whether the PBX and telecommute server of the '1 14 patent, 

hctioning together, can be considered to disclose the "network 

access port" and "controller" limitations of claim 1 of the '439 

patent to anticipate this claim; 

4) to what extent, if any, does anticipation of claims 1 and 28 of the 

'439 patent depend on a finding that the claim limitations are 

inherently disclosed by the '1 14 and '789 patents; and 

5) please comment on Microsoft's argument that the ALJ, when 

construing the term "current activity" to mean "either the status of 

the user or subscriber at the present time or the most recent status 

of a user or subscriber," did so in a manner inconsistent with 

Federal Circuit precedent. Complainant Microsoft's Contingent 

Petition for Review at 9. In addressing this argument, please 

address Free Motion Fitness, Inc. v. Cvbex Int'l, Inc., 423 F.3d 

1343 (Fed. Cir. 2005) ("[ulnder Phillips, the rule that 'a court will 

give a claim term the full range of its 

ordinary meaning,' . . . does not mean that the term will 

presumptively receive its broadest dictionary definition or the 

aggregate of multiple dictionary definitions . . .")) and Impax Labs, 

Inc. v. Aventis Pharms, Inc. 468 F.3d 1368, 1374 (Fed. Cir. 2006) 

("claim is unpatentable under the preponderance of evidence, 

burden-of-proof standard, giving each term its broadest reasonable 

construction consistent with the specification"). 

73 Fed. Reg. 15005-07. 

Further, the Commission requested written submissions on the issues of remedy, the 

public interest, and bonding. Id. 

3 
On March 24 and March 3 1,2008, respectively, the complainant Microsoft, the 

respondent ALE, and the IA filed briefs and reply briefs on the issues for which the Commission 

requested written submissions. 

Having reviewed the record in this investigation, including the final ID and the parties’ 

written submissions, the Commission has determined to reverse-in-part and modify-in-part the 

ID. Particularly, the Commission has modified the ALJ’s claim construction of the term “current 

activity of the user on the computer network” in claims 1,28, and 38 of the ‘439 patent to be “the 

current status of the user on the computer network” where “current status” includes “either the 

status of a user or subscriber at the present time or the most recent status of a user or subscriber.” 

Further, the Commission has reversed the ALJ’s ruling of infringement of the ‘439 patent by 

ALE’S OXE system and determined that this system does not infringe claims 1,28, and 38 under 

at least the Commission’s modified claim construction of “current activity of the user on the 

computer network.” The Commission has also affirmed the ALJ’s ruling of non-infringement of 

the ‘439 patent by ALE’S OXO system. In addition, the Commission has reversed the ALJ’s 

finding that claims 1 and 28 are not invalid in view of the ‘1 14 patent or the ‘789 patent, reversed 

the ALJ’s finding that claim 38 is not invalid in view of the ‘789 patent, and affirmed the ALJ’s 

finding that claim 38 is invalid in view of the ‘1 14 patent. Particularly, the Commission has 

determined that claims 1,28, and 38 are invalid in view of the ‘1 14 patent, and are also invalid in 

view of the ‘789 patent. 

The authority for the Commission’s determination is contained in section 337 of the 

Tariff Act of 1930, as amended (19 U.S.C. 0 1337), and in sections 210.45, and 210.50 of the 

Commission’s Rules of Practice and Procedure (19 C.F.R.00 210.45,210.50). 

By order of the Commission. 

Marilyn hdott 

Secretary to the Commission 

Issued: May 19,2008 

4 
CERTAIN UNIFIED COMMUNICATIONS SYSTEMS, 

PRODUCTS USED WITH SUCH SYSTEMS, AND 

COMPONENTS THEREOF SAME 

337-TA-598 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DETERMINATION FINDING A VIOLATION OF SECTION 337 AND 

TERMINATION OF THE INVESTIGATION WITH A FINDING OF NO 

VIOLATION has been served by hand upon the Commission Investigative Attorney, 

David 0. Lloyd, Esq., and the following parties as indicated, on Mav 20. 2008 

DECISION TO REVERSE-IN-PART AND MODIFY-IN-PART A FINAL INITIAL 

. 

Marilb R. Abbott, Sec 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

BEHALF OF CO PLAINANT 

COROPORATION: 

Brian R. Nester, Esq. 

Jeffiey,R. Whieldon, Esq. 

Rama G. Elluru, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW - Suite 1100 

Washington, DC 20005 

P-202-783-5070 

F-202-783-233 1 

John E. Gartman, Esq. 

FISH & RICHARDSON PC 

12390 El Camino Real 

San Diego, CA 92130 

P-858-678-5070 

F-858-678-5099 

IICROSOFT 

( ) Via Hand Delivery 

( Fa Overnight Mail 

(L Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ?a Overnight Mail 

(b Via First Class Mail 

( )Other: 
Page 2 - Certificate of Service 

ON BEHALF OF RESPONDENT ALCATEL 

BUSINESS SYSTEMS: 

David A. Nelson, Esq. 

LATHAM & WATKINS LLP 

233 South Wacker Drive, Suite 5800 

Chicago, IL 60606-6306 

P-312-876-7716 

F-3 12-993-9767 

David M. Farnum, Esq. 

LATHAM & WATKINS LLP 

555 Eleventh Street, NW - Suite 1000 

Washington, DC 20004- 1304 

P-202-637-2267 

F-202-637-2201 

F. David Foster, Esq. 

James B. Altman, Esq. 

Kelly Busby, Esq. 

MILLER & CHEVALIER CHARTERED 

655 - 15th Street, NW 

Suite 900 

Washington, DC 20005 

P-202-626-5800 

F-202-626-0858 

( ) Via Hand Delivery 

(ra Overnight Mail 

( Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

(pa Overnight Mail 

( Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

(pa Overnight Mail 

( Via First Class Mail 

( )Other: 
UNITED STATI'S LUERNAllONAL TRADE COM!YIISSION 

W .... I. I ... , D.C. !IMJ' 

1m llot Motter or 

CERTAIN UNIFIED 

COMMlINlC A TIONS SVSTEMS, 

PRODUCTS USW WITH SUCH 

SYSTlMS, AND COMPONI!.NTS 

THEuor 

COMMISSION OPINION 

I. SUMMARY 

0rI January 20. 2008. the preoiding odminiJuaIive I ..... judge (""AU") iaauod his final 

initio! ddawinotio<l ("10") in the obove-captioned jnvertigario<l. findit>a . violalioB of oeetiom 

J37 by ,....,,0&.1\', .-..:uo<d p-oduc\J. The Conuniuion determined IO~"" !be AU', 

dttonninatiotl with '''"''''"'' to U.s. P_ No. 6,~21, ~19 (""the '~39 pot<nt"), but not the AU', 

dttenDination with , ....... to U.S. P_ Noo. 6,43(1,289 ("the '289 palOlIt'); 6.263.064 ("the 

.~ paIeII!"); and 6,728,.3S7 ("tho '3S7 p_j. 0rI ~ow, the Oommiu ion rev ...... the 

AU', delonn.inotioo ofviolalion with respec' to cloima I ...... 28 of tho '439 polmI ODd alii ..... 

hi, de\enninotioo of"" violation with ,.."..., to dam, 38 "rtho '439 pomtt. 

IL BACKCROUND 

, 
The Commission instituted this investigation on March 26,2007, based on a complaint 

filed by Microsoft Corporation (“Microsoft”) of Redmond, Washington. 72 Fed. Reg. 14138-9 

(Mar. 26,2007). The complaint, as amended and supplemented, alleges violations of section 

337 of the Tariff Act of 1930, as amended, 19 U.S.C. 8 1337, in the importation into the United 

States, the sale for importation, and the sale within the United States after importation of certain 

unified communications systems, products used with such systems, and components thereof by 

reason of infringement of certain claims of the the ‘439 patent, the ‘289 patent, the ‘064 patent, 

and the ‘357 patent. The complaint further alleges the existence of a domestic industry. The 

Commission’s notice of investigation named Alcatel-Lucent (“ALE”) of Paris, France as the 

only respondent. 

On January 28,2008, the ALJ issued his final ID on violation and recommended 

determinations on remedy and bonding. The ALJ found a violation of section 337 based on his 

findings that respondent’s accused products infringe claims 1 and 28 of the ‘439 patent, that 

those claims are not proven invalid, and that the domestic industry and importation requirements 

of section 337 were met as to those claims. He also found no violation with respect to claim 38 

of the ‘439 patent and the asserted claims of the ‘289 patent, the ‘064 patent, and ‘357 patent. 

On February 11,2008, all parties, including the Commission investigative attorney (“IA”), filed 

petitions for review of the final ID. On February 19,2008, all parties filed responses to the 

petitions for review. 

On March 14,2008, the Commission determined to review-in-part the ID. Particularly, 

the Commission determined to review: 1) the ALJ’s construction of the claim term “current 

activity of the user on the computer network;” 2) the ALJ’s determination that ALE’S OXE 

system directly and indirectly infringes the ‘439 patent; 3) the ALJ’s determination that ALE’S 

2 
OXO system does not infringe the ‘439 patent; 4) the ALJ’s determination that claims 1 and 28 

of the ‘439 patent are not invalid in view of U.S. Patent No. 6,041,114 (“the ‘1 14 patent” or “the 

Chestnut patent”) or U.S. Patent No. 5,652,789 (“the ‘789 patent” or “the Miner patent”); 5) the 

ALJ’s determination that claim 38 of the ‘439 patent is invalid in view of the Chestnut patent; 

and 6) the ALJ’s determination that claim 38 is not invalid in view of the Miner patent. The 

Commission determined not to review the ALJ’s other determinations including domestic 

industry and unenforceability relating to the ‘439 patent; claim construction, infringement, and 

invalidity relating to the ‘289 patent, the ‘064 patent, and ‘357 patent; and his order denying 

ALE’S motion for sanctions. 

With respect to violation, the Commission requested written submissions from the parties 

relating to the following issues: 

1) the ALJ’s finding that the “current activity of the user on the 

computer network” as found in the ‘439 patent “can consist of both 

user-selected indicators based on user activity (e.g., ‘conditional 

processing’ as per the ‘439 specification) and the transfer of data 

between the computer and telephone networks while the user is 

engaged in a VoP phone call” (ID at 47), and the implications of 

this finding for the infringement and invalidity analyses; 

2) what is the exact demarcation between the ‘439 patent claim 

terms “telephone network” and “computer network” as it relates to 

claim construction, invalidity using the ‘1 14 and ‘789 patents, and 

the infringement analysis for a Voice-over-P (VoP) 

communication system; 

3) whether the PBX and telecommute server of the ‘1 14 patent, 

functioning together, can be considered to disclose the “network 

access port” and “controller” limitations of claim 1 of the ‘439 

patent to anticipate this claim; 

4) to what extent, if any, does anticipation of claims 1 and 28 of 

the ‘439 patent depend on a finding that the claim limitations are 

inherently disclosed by the ‘1 14 and ‘789 patents; and 

3 
5) please comment on Microsoft’s argument that the ALJ, when 

construing the term “current activity” to mean “either the status of 

the user or subscriber at the present time or the most recent status 

of a user or subscriber,” did so in a manner inconsistent with 

Federal Circuit precedent. Complainant Microsoft’s Contingent 

Petition for Review at 9. In addressing this argument, please 

address Free Motion Fitness, Inc. v. Cybex Int ’I, Inc., 423 F.3d 

1343 (Fed. Cir. 2005) (“[ulnder Phillips, the rule that ‘a court will 

give a claim term the full range of its ordinary meaning,’ . . . does 

not mean that the term will presumptively receive its broadest 

dictionary definition or the aggregate of multiple dictionary 

definitions . . .”) and Impax Labs, Inc. v. Aventis Pharms, Inc., 468 

F.3d 1368, 1374 (Fed. Cir. 2006) (“claim is unpatentable under the 

preponderance of evidence, burden-of-proof standard, giving each 

term its broadest reasonable construction consistent with the 

specification”). 

73 Fed. Reg. 15006 (Mar. 20,2008). Further, the Commission requested written submissions on 

the issues of remedy, the public interest, and bonding. Id. 

On March 24 and March 3 1,2008, respectively, complainant Microsoft, respondent ALE, 

and the IA filed briefs and reply briefs on the issues for which the Commission had requested 

written submissions including the issues of remedy, the public interest, and bonding. 

A. Patents at Issue 

This investigation pertains to computer telephony and unified messaging 

communications services which integrate the computer and telephone networks to provide a 

variety of communications services (e.g., phone, fax, internet) and options for a user of the 

services. Particularly, the asserted claims of the ‘439 patent, the only patent relevant to the 

Commission’s review, pertain to the processing of a telephone call based on the activity of the 

user (called party) or a subscriber (calling party) on a computer network. 

4 
The ‘439 patent is entitled “System and Method for User Affiliation in a Telephone 

Network.” The patent is directed to a telecommunications system that combines telephone and 

computer network technology (ie., the telephone network and the internet) to provide userselectable call processing options for a user of the telephone and computer networks, based on 

the user or calling party’s activity on the computer network. The ‘439 patent is based on an 

application filed on March 24, 1999. The ‘439 patent issued on July 16,2002, to Stephen 

Mitchell Liffick and was assigned to Microsoft. See JX-1 . The ‘439 patent has 5 1 claims, but 

only claims 1,28, and 38 are asserted in the investigation. 

B. Products at Issue 

Microsoft contends that claims 1,28, and 38 of the ‘439 patent are infringed, directly, 

contributorily, and by inducement, by the OmniPCX Enterprise (“OXE”) and OmniPCX Office 

IP-PBX (“OXO”), computer telephony communication systems that ALE currently produces. 

The OXE and OXO systems each comprise a combination of products. The OXE 

system includes the following: 1) an OmniPCX Enterprise communication server (“OXE” IPPBX), 2) an OmniTouch Unified Communication (“OTUC”) software suite, 3) a 4980 softphone 

application (“My Softphone”), and 4) OTUC servers. The OXO system includes the following: 

1) an OmniPCX Office IP-PBX (“OXO” IP-PBX) and 2) PIMPhony software (“PIMPhony”) 

that runs and operates on a personal computer and optionally a Telephone Application 

Programming Interface (“TAPI”) server. See ID at 132, CX-603C, CDX-18,19. Softphone and 

Pimphony applications are collectively referred to as personal computer phone (“PC phone”) 

applications. The IP designation refers to “internet protocol” which is the standard 

communications protocol followed for communications over the internet. The PBX designation 

5 
refers to a “private branch exchange” which is a private telephone switch, usually owned or 

controlled by a private business, that is linked to the public switched telephone network 

(“PSTN”) to provide communication services for the private business. See ID at 15. In both 

systems, the PBX includes a call server and a computer supported telephony application 

(“CSTA”) module contained within. 

The OXE system uses various “My Softphone” software applications (e.g., MyAssistant, 

MyPhone), and the OXO systems uses the PIMPhony software, to provide telephone service for 

a user on the computer network. Both of the accused systems operate to provide voice-over-P 

(“VoIP”) communication services to users who can make and receive calls using the PC phone 

applications while on the computer network, and usually a local area network (“LAN”) computer 

system to communicate with other computer users with PC phone applications. The computer 

network interconnects with the telephone network (Le., PSTN) to communicate with 

conventional telephone users. Also, both systems include the capability of having incoming 

calls routed or forwarded to another user device other than the PC phone, e.g., cellphone, 

personal digital assistant (“PDA”), conventional telephone. 

Using the computer software applications, users can set the PC phone with incoming 

call processing options similar to those of the conventional telephone, e.g., call forwarding, do 

not disturb, with either accused system. During operation, an incoming call is received by the 

PBX, e.g., call server and CSTA module contained within, and either a combination of the 

CSTA module and the OTUC server for the OXE system using the OTUC software, or a 

combination of the CSTA module, optional TAP1 server, and the user PC for the OXO system. 

Data structures, stored on the OTUC server or the user PC, in the accused systems are accessed 

to find call processing criteria (e.g., call forwarding, do not disturb, conditional call processing 

6 
criteria based on the calling party, time of day) to route/process the incoming call in accordance 

with the user-selected call processing option. 

111. DISCUSSION 

For the reasons set forth below, we have determined to reverse-in-part and modify-in-part 

the final ID and to find no violation of section 337 by either of ALE’S accused products. Also, 

we adopt the ALJ’s findings fiom the final ID that are not inconsistent with our opinion. 

A. 

We determined to review the ALJ’s construction of the limitation “current 

Claim Construction: “current activity of the user on the computer network” 

activity of the user on the computer network” found in claims 1,28, and 38 of the ‘439 patent. 

See the ‘439 patent, col. 14,11.25-26. 

1. Initial Determination 

The ID construed the phrase “current activity of the user on the computer network” to 

mean “the current status of the user on the computer network.” See ID at 47-50. Although the 

parties had stipulated to a particular meaning of this phrase, the ALJ found that the agreed-upon 

term “current status” was nonetheless in dispute. See ID at 27-28. The ALJ thus decided to 

construe the term “current status” to mean “either the status of a user or subscriber at the present 

time or the most recent status of a user or subscriber,” and where the “status” of a user “can 

consist of both user-selected indicators based on user activity, e.g., ‘conditional processing’ as 

per the ‘439 specification, and the transfer of data between the computer and telephone networks 

while the user is engaged in a VoIP phone call.” See ID at 47-50. 

7 
It is not clear whether the ALJ’s interpretation of “status” was a reference to status “on 

the computer network.” The ALJ acknowledged that the specification discloses that the system 

can determine whether a subscriber is currently active on the Internet, but that it “does not teach 

processing a call based on this activity.” Id. at 48 (citing the ‘439 patent, col. 7,l. 61 to col. 8,l. 

2) (emphasis added). He said also that it discloses that a user can create specific conditions for 

processing based on the user’s current status, but the specification never explicitly discloses 

whether the “user’s current status” includes the user’s status “on a computer network.” Id. 

(citing the ‘439 patent, col. 8,ll. 46-48) (emphasis added). 

The ALJ faced the same difficulty with respect to the prosecution history, noting that 

“[allthough the applicant explains that the ‘439 patent application is patentable because it can, 

among other things, filter calls based on the status of a subscriber or user and not simply based 

on a fixed set of rules, the applicant’s remarks do not add anything to enlighten the proper 

canstruction of the phrase ‘current activity.”’ See ID at 48-50 (emphasis added). Therefore, due 

to the absence of any relevant information concerning this term in the intrinsic evidence, the ID 

relied on the dictionary meaning to construe “current status” (or “current activity”) as “the status 

of a user or subscriber at the present time or the most recent status of a user or subscriber.” Id. 

2. Parties’ Arguments 

ALE challenges the ALJ’s interpretation of “status,” which includes “both user-selected 

indicators based on user activity (e.g., ‘conditional processing’) and the transfer of data between 

the computer and telephone networks while the user is engaged in a VoIP phone call,” because it 

effectively reads out an essential limitation of the relevant claimed feature (e.g., “on the 

computer network”) - a limitation that was added to obtain allowance of the claim in response to 

a PTO rejection. Particularly, ALE argues that there is a significant distinction between 

8 
processing incoming calls based upon rules that are stored on a computer, as the ALJ .appeared to 

construe the claimed feature, and processing calls according to rules that are conditioned upon a 

user’s current activity on a computer network. Also, ALE contends that the ALJ relied upon 

portions of the ‘439 patent specification that do not describe the claimed function to erroneously 

construe the relevant feature as simply processing incoming calls based upon rules that are 

stored on a computer. 

Microsoft contends that the ALJ’s construction gave full meaning to the term “status” by 

covering two embodiments disclosed in the ‘439 patent: (i) one based on the conditional status of 

the user (i.e., user’s status as “do not disturb”), and (ii) the other based on the user’s activity on a 

computer network that can be monitored (i.e., user’s status as “busy” based on the data transfer 

during a VoIP call). See ID at 44-45 (citing the ‘439 patent, col. 1,l. 65 to col. 2,l. 7; col. 7,l. 

57 to col. 9,l. 24). From this disclosure, Microsoft contends that the ALJ correctly determined 

that “status” must cover certain “user selected-indicators” such as conditional processing (e.g., 

“time of day, current availability of the user, work status, or the like”) and that these conditional 

status indicators are not the only type of “status” disclosed in the ‘439 patent. Particularly, 

Microsoft contends that the ALJ recognized that a dynamic type of “status” is disclosed where 

the ongoing “internet activity [that] a user wishes to monitor” can be used by the system to filter 

calls. See the ‘439 patent, col. 7,ll. 61-62. Microsoft argues that this dynamic and real-time 

form of “status” does not depend on a contingent triggering event (such as time of day), but 

relies on the user’s activity on the internet or the computer network as a proxy for the user’s own 

status on the computer network such as the user engaging in a VoIP call from his computer over 

the network. 

The IA contends that the ALJ was correct, and consistent with the specification, by 

9 
finding that “conditional processing” satisfies the “current activity” limitation, but that the ALJ’s 

finding that a “VoIP phone call” satisfies this limitation is ambiguous since it does not clarifL 

whether a VoIP phone call is “activity of the user on the computer network.” Particularly, the IA 

submits that the ‘439 patent does not describe VoIP phone calls as a form of activity on the 

computer network, and although a computer may be “active” when engaged in a VoIP phone 

call, that “activity” is activity on the telephone network by definition. 

3. Analysis 

The plain language of claims 1,28, and 38 requires that incoming calls be filtered 

according to “current activity of the user on the computer network.”’ Therefore, no permissible 

construction can read out the critical limitation “on the computer network.” See Innova/Pure 

Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 11 11, 11 19 (Fed. Cir. 2004) (“While 

not an absolute rule, all claim terms are presumed to have meaning in a claim.”); see aZso FlexRest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1361 (Fed. Cir. 2006) (stating that it is part of “basic 

patent law doctrine that every limitation of a claim is material”). 

The language of the claims further differentiates between a “computer network” on the 

one hand and a “telephone network” on the other. And as previously mentioned, the ALJ found 

’ The full claim phrase in the ‘439 patent is “filter the incoming call according to current 

activity of subscribers on the computer network or according to current activity of the user on 

the computer network.” See the ‘439 patent, col. 14,ll. 23-26. Microsoft does not assert that the 

“current activity of subscribers on the computer network” limitation is met by the accused 

products, and therefore we do not discuss this part of the limitation, but it is noted in our 

discussion regarding infnngement. 

10 
that the specification fails to shed much light on the term “current activity of the user on the 

computer network.” 

The prosecution history for the ‘439 patent also indicates that the claimed computer and 

telephone networks are significantly distinct. During prosecution, the patentee asserted the 

novelty of routing calls based on the current activity of the user on the computer network, and 

even further, emphasized the feature of automatically changing how an incoming call is routed 

based on changes in the current activity of the user on the computer network, without the user 

having to manually change the incoming call processing criteria. See JX-5 (MSAL 00695). 

Particularly, in response to a rejection based on a prior art reference (Brennan), the patentee 

stated: 

Thus, Brennan teaches that the user 

requirements or the caller lists do not change unless the 

user expressly changes the user requirements or unless the 

user specifically requests a system operator to make the 

changes to the user requirements. 

**** 

In contrast to Brennan, claim 1 as amended recites 

that one or more lists used in filtering an incoming call 

change according to current activity of the subscribers 

(e.g., persons making the calls), or according to current 

activity of the user (e.g., intended recipient of the call) . . . the current activity of the subscriber and/or the user does 

not typically occur on the telephone network. Instead the 

current activity of the subscriber andor the user usually 

occurs on a computer network. The ability to process an 

incoming call on a telephone network according to activity 

on a computer network is not taught or suggested by 

Brennan. Id. (emphasis added). 

Therefore, the prosecution history strongly indicates that the term “current activity of the 

user on the computer network,” which was specifically added as part of the amendment to 

11 
overcome the PTO rejection based on Brennan, means something quite special and unique, viz., 

the ability to process an incoming call based on the user’s activity on the computer network, as 

opposed to activity on the telephone network. 

ALE and Microsoft have agreed that whether “activity” constitutes activity on the 

telephone network or the computer network depends upon the type of data that is communicated 

during the activity, i.e., telephony information for the telephone network, and digital data for the 

computer network, and not based on the actual physical network over which the data is 

transferred. See ID at 26 (referring to agreed-upon claim constructions for “telephone network” 

and “computer network”); see also Hyde-Thomson, Tr. 1642-43; Chang, Tr. 1024:7-18, ALE’S 

Pre-Hearing Br. at 91-92; August 23,2007 Deposition Tr. of Chang at 40; July 11,2007 Chang 

Opening Expert Report at 9-1 0. We find that the parties’ agreed-upon claim constructions (e.g., 

telephone network, computer network, the controller) and the experts’ testimony are not 

inconsistent with the ‘439 patent specification.2 

Specifically Microsoft’s expert Chang testified that “[wlhen the packets . . . carry voice 

data, the LAN (local area network) becomes a telephone network.” See Chang, Tr. 1024. Also, 

ALE’S expert, Hyde-Thomson, testified that: 

. . . but all of those are transactions over the telephone 

network. These are SIP [session initiation protocol] 

messages sent [using the OXE or the OTUC] concerning 

Consistent with the record including the ‘439 patent, the final ID, and both parties’ 

expert testimony, the Commission notes that the claimed function of the controller “to receive 

the incoming call” necessarily includes receiving telephony information where the received 

information may include non-voice data such as call setup data (or signaling), and the claimed 

“controller,” performing this recited function, is still part of the telephone network. See the ‘439 

patent, FIG. 2, col. 4,l. 66 to col. 5,l. 21; col. 6,ll. 55-65; see also ID at 26,88; Hyde-Thomson, 

Tr. at 1642-43; August 23,2007 Deposition Tr. of Chang at 40; July 11,2007 Chang Opening 

Expert Report at 9-10. 

12 
setting up phone calls or letting [the user] know there is a 

call waiting . . . [tlhis is all standard telephony things. This 

is what happens in a PBX with hard telephones. And that 

fact that it is now running over the LAN just means that the 

telephone network has been extended over the local area 

network as an overlay on top of the basic Ethernet 

infrastructure of the local area network . . . it is still 

telephony data [without the messages including voice 

information]. It is about data setting up phone calls. 

See Hyde-Thomson, Tr. 1642-43. Therefore, a phone call over a traditional computer network 

(e.g., LAN) is considered a telephone call on a telephone network based on the data that is 

carried. Similarly, a VoIP phone call constitutes activity on the telephone network. 

Given the narrow claim construction that the prosecution history requires and the 

constructions of “telephone network” and “computer network” agreed upon by the parties’ 

experts, we determine that the proper claim construction of “current activity of the user on the 

computer network” cannot include “engaged in a VoIP phone call.” As noted above, the 

specification makes no mention of VoIP phone calls. 

We also disagree with the IA’s and Microsoft’s contention that “conditional processing” 

should be part of the relevant claim feature. The language “conditional processing” in the 

specification referenced by the ALJ, the IA, and Microsoft bears no relation to the current status 

of the user on the computer network since these “lists” are simply names of other subscribers 

and are not lists containing data on current activity of the user, ie., the person receiving the 

incoming call, on the computer network. See the ‘439 patent, col. 8,ll. 6-34. Further, other 

instances of “conditional processing” referenced by Microsoft and the IA relate solely to other 

factors (e.g., time of day, identity of the caller), again bearing no relation to the current activity 

of a user on the computer network. See ID at 47; see also the ‘439 patent, col. 9,ll. 45-55. 

13 
Microsoft cites a portion of the specification that states that the user, via an Internet 

controller 152, may access a forward list “to determine which Internet subscribers contained 

within the forward list are currently active on the Internet 134.” However, this portion of the 

specification has nothing to do with processing an incoming call according to the user’s or 

subscriber’s current activity on a computer network as required by the claim limitation. See the 

‘439 patent, col. 7,l. 63 - col. 8,l. 1. Rather, these lists solely refer to names of subscribers that 

may be used by the user for “conditional processing” (e.g., time of day, day of week), but not for 

linking the current activity of these names (subscribers) on the computer network to callprocessing rules for handling an incoming call. 

Microsoft also refers to the portion of the specification that states “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,” as support for the ALJ’s claim construction. See the ‘439 patent, col. 9:20-24. These lists, 

however, contain only names - the names of subscribers that are allowed, that are blocked fi-om 

monitoring the user’s activity, have the user’s activity forwarded to them, or whose activity is 

forwarded. Nowhere in the specification is the connection made between these lists and the 

processing of an incoming call in accordance with the user’s or subscriber’s current activity on 

the computer network. See ID at 48 (ALJ found that specification contains no reference to 

processing a call based on current activity of the user on the computer network). 

Further, by stating that “the ‘status’ of a user can include the transfer of data between the 

computer and telephone networks while the user is engaged in a VoIP phone call,” the ALJ 

appears to have construed the term in view of the accused product, a procedure that is expressly 

prohibited by the Federal Circuit. See NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 

14 
1062, 1074 (Fed. Cir. 2002) (“It is well settled that claims may not be construed by reference to 

the accused device.”), citing SRI Int ’1 v. Matsushita Elec. Corp. ofArn., 775 F.2d 1 107, 1 1 18 

(Fed. Cir. 1985) (en banc) (“A claim is construed in the light of the claim language, the other 

claims, the prior art, the prosecution history, and the specification, not in light of the accused 

device.”). Because the specification and the prosecution history do not refer to VoIP phone 

calls, the term could only have entered the claim construction from the accused product. 

Finally, we disagree with Microsoft’s argument that the ALJ’s construction for the term 

“current,” i.e., either at the present time or the most recent, was overly broad. We find that, in 

the absence of intrinsic evidence as to its meaning, the ALJ properly looked to a dictionary 

definition to find the plain and ordinary meaning of the claim term. See ID at 49-50 (citing 

Merriam-Webster’s Ninth New Collegiate Dictionary 3 16 (1 984); Merriam-Webster’s Online 

Dictionary (www.m-w.com)). The ALJ properly chose the most reasonable claim construction 

not inconsistent with the intrinsic evidence. See Phillips v. Am Corp., 415 F.3d 1303, 1316 

(Fed. Cir. 2005) (en banc). 

In addition, there is nothing in the portions of the specification that Microsoft cites that 

would limit “current” to a particular meaning, and no relevant testimony from Microsoft’s expert 

to the contrary, and therefore we find it was entirely appropriate for the ALJ to consult a 

dictionary and apply the most reasonable definition of “current.” Id.; see Phillips, 415 F.3d at 

1322-23 (stating that ‘fjudges are free to consult dictionaries and technical treatises ‘at any time 

in order to understand the underlying technology and may also rely on dictionary definitions 

when construing claim terms, so long as the dictionary definition does not contradict any 

definition found in or ascertained by a reading of the patent documents”’). 

15 
Accordingly, the Commission has determined to construe the limitation “current activity 

of the user on the computer network” to mean “the current status of the user on the computer 

network” where “current status” includes “either the status of a user or subscriber at the present 

time or the most recent status of a user or subscriber.” We decline to adopt the portion of the 

ALJ’s claim construction that found that the “status” of a user can “consist of both user selected 

indicators based on user activity, e.g., ‘conditional processing’ as per the ‘439 specification, and 

the transfer of data between the computer and telephone networks while the user is engaged in a 

VoP phone call.” 

B. 

We determined to review the ALJ’s infringement determinations relating 

Infringement: “current activity of the user on the computer network” 

to both ALE’S OXE and OXO systems. 

1. Initial Determination 

The ALJ determined that ALE’S OXE system infringes, both directly and indirectly, 

claims 1 and 28 of the ‘439 patent3 See ID at 133-65. The ALJ’s determination of direct 

infnngement was based on his finding that the accused OXE system satisfies the disputed claim 

limitation of “wherein some of the one or more lists are used to filter the incoming call according 

to current activity of. . . the user [called party] on the computer network” as he had construed 

that limitation. Id. at 42-50, 138-45. The ALJ relied heavily on expert testimony to make his 

determination. Id. at 138-45; see CDX-42, 161; Chang, Tr. at 499-500, 597-99, 1102-05; Hyde3 

The ALJ found that the accused OXE system satisfied all limitations of asserted claim 

38 of the ‘439 patent, but ultimately found no violation with respect to that claim because he 

determined that claim 38 is invalid as anticipated by the Chestnut patent. ID at 100, 166. 

16 
Thomson, Tr. at 1690-92. 

After considering complainant’s and respondent’s expert testimony, the ALJ found that 

the MyAssistant software for the OXE system allows the user (called party) to setup a variety of 

call routing preferences for an incoming VoIP call. See ID at 139-43. These call routing options 

include the following: 1) an “all callers” routing state allowing the user to route calls to a 

particular destination (e.g., office phone, mobile phone, home phone) when available for 

incoming calls, 2) a “VIP screening rules” routing state allowing the user to filter incoming calls 

based on a variety of factors (e.g., caller ID, time of day, day of the week), 3) a “do not disturb” 

or “vacation” routing state allowing the user to route calls to a particular destination (e.g., voice 

mail, other phone number) when not available including allowing certain subscribers to bypass 

the ‘do not disturb’ state, and 4) a “busy” routing state allowing the user to route calls to a 

particular destination when the user’s PC phone is busy. Id.; see also W-lOlC (ABS00009644- 

5 1). 

Even though the ALJ had found that the ‘439 specification contains nothing relevant 

concerning the “current activity” term, the ALJ reviewed the “summary of the invention” portion 

of the specification regarding conditional criteria that may be set by a user (e.g., time of day, day 

of the week, caller ID) to determine that “the user assigns a ‘status’ to various subscribers . . . the 

‘439 patent discloses a flow chart showing how several ‘lists’ of callers are checked in order to 

properly route a call.” Id. at 144-45. Based on expert testimony and the language in the 

specification noted above, the ALJ found that the ALE’S accused OXE system satisfied “current 

activity of the user on the computer network” limitation. Id. 

17 
In addition to direct infringement, the ALJ found that ALE indirectly infringed the ‘439 

patent. See ID at 194-99. Regarding contributory infkingement, the ALJ acknowledged that 

ALE’S OXE system has significant non-infringing uses as a PBX, and becomes infringing only 

with the addition of the OTUC server/sohare. Id. However, based on the record evidence, the 

ID found that the OTUC software is never sold without the OXE hardware (e.g., CSTA call 

server and PBX). Id. Because ALE sells and advertises the complete OXE system with OTUC 

serverhohare as an integrated solution for incoming call processing, and because it admitted 

,that it sells the accused OXE system after importation, the ALJ found that ALE contributorily 

infringes claims 1 and 28 of the ‘439 patent. Id. 

Regarding induced infringement, the ALJ found, based on the record evidence, that ALE 

“had distributed user guides and other public materials to its customers and resellers explaining 

how to use the accused systems.” Id. Further, the ALJ found that these public materials and 

user guides include content relating to the infringing functionality of the accused OXE systems. 

Id.; see also RX-126. Based on this record evidence, the ALJ found that ALE induced others to 

infringe claims 1 and 28 of the ‘439 patent by using its accused OXE system products. Id. 

2. Parties’ Arguments 

ALE argues that the ALJ improperly found that the processing rules in the accused OXE 

system that are unrelated to ‘‘current activity of the user on the computer network” still satisfied 

this limitation. Also, ALE argues that none of the rules that the ALJ found to infringe this 

limitation - e.g., time of day, day of the week, “do not disturb,” - are conditioned upon a user’s 

current activity on the computer network. According to ALE, these are all examples of the type 

of “user-selectable criteria” that are not conditioned upon a user’s current activity on the 

computer network. 

18 
Further, ALE submits that “engaged in a VoIP phone call” does not constitute “current 

activity of the user on the computer network” consistent with the ALJ’s proper finding, relating 

to the OXO system, that phone status is not the same as a user’s status on’the computer network 

and that call routing is always the same regardless of what type of phone is used, e.g., standard 

digital phone or a VoIP softphone. On this basis, ALE contends that this call routing does not 

meet the limitation of call routing or filtering based on a user’s activity on the computer network. 

Microsoft asserts that the record shows that the PC softphone software for the OXE 

system allows the user to set call processing rules that will filter an incoming call based on any 

number of “conditional processing” statuses (e.g., identity of the caller, time of day or day of the 

week, other routing options such as “do not disturb”). Particularly, Microsoft contends that the 

OTUC server in the OXE system undertakes a number of software-based steps to set and store 

these incoming call-processing rules, and thereby is queried by the system for call routing 

instructions when any incoming call arrives. Based on this system operation, Microsoft contends 

that the ALJ correctly found that the OXE system met at least the first part of the “status” claim 

construction - the conditional processing status - by filtering calls based on a “do not disturb” 

status, which the user can set via the PC softphone software and the OTUC server. Particularly, 

Microsoft asserts that, based on the routing rule and the status thus stored on the OTUC server, 

the OXE will query the OTUC server upon receiving an incoming call and will process the call 

according to this status. 

In addition, Microsoft submits that OXE system also practices the second type of status 

covered by the ALJ’s claim construction - “engaged in a VoIP call.” Particularly, Microsoft 

argues that the OXE system’s filtering of incoming calls when a user is busy on a VoIP call also 

19 
practices the second type of status covered by the ID’S claim construction, i.e., “the transfer of 

data between the computer and telephone networks while the user is engaged in a VoIP phone 

call.” Microsoft asserts that VoIP phone calls involve computer activity such as a PC softphone 

application and software programs involved in capturing the user’s voice, compressing the voice 

information using various standards, and digitizing the voice. While performing these tasks in 

the OXE system, Microsoft contends that the user’s computer actively monitors and responds to 

various inputs from the user’s keyboard and mouse, allowing the user to perform other tasks - 

such as sending instant messages - while engaged in a VoIP call. Therefore, Microsoft contends, 

a VoIP call constitutes current activity of the user on the computer network to satisfL the second 

part of the ALJ’s claim construction for “status.” 

The IA contends that the “conditional processing” of the OXE system satisfies the 

relevant claim limitation as these routing methods are described in the ‘439 patent specification. 

Further, the IA argues that both parties’ experts agreed that such statuses are entered into and 

stored by the computer network, not the telephone network, i.e., they are stored in the OTUC 

server or sometimes in the computer memory in the OXE PBX. 

3. Analysis 

The Commission finds that the OXE system’s use of the OTUC software suite to route 

incoming calls does not directly infkinge the ‘439 patent because its system does not meet the 

claim limitation of “current activity of the user [called party] on the computer network.” As a 

basis for finding this element satisfied, the ALJ erroneously focused on the OXE’s callprocessing states unrelated to status on the computer network. 

The accused OXE system processes an incoming VoIP call in a manner similar to how a 

conventional telephone network handles an incoming telephone call. A traditional telephone 

20 
user can set the status of his phone using the keypad and telephone software to process incoming 

calls in a particular manner; a PC phone user in the OXE system can do the same thing for his 

softphone using the keyboard, mouse, and PC phone software. The user can set the PC phone to 

vacation status or “do not disturb,” for example, to forward calls to another destination. See RXlOlC (ABSOOOO9644-51), RX-109C (ABSOO132543-51); see also August 28,2007 Deposition 

Tr. of Hyde-Thomson at 56; Hyde-Thomson, Tr. at 56,1340-43,1401-08,1708-16. ALE’s 

expert testified that “the OXE PBX has an internal register which keeps track of the state of each 

phone line as either busy, and therefore, not available to take an incoming call . . . [the phone 

extensions] happen to be implemented as soflphones. But they could equally easily be 

implemented as hardware phones.” See Hyde-Thomson, Tr. at 1341, 1403. 

All of OXE’s user-selected, incoming-call-processing states can be stored on the OTUC 

computer server but nevertheless relate only to the status of the user’s phone extension and not 

the status of the user on the computer network. ALE’s expert testified that “the OTUC 

(incoming call processing) rules don’t take account of whether or not users are actually active on 

their computers or the current status of the user’s computer in any sense other than whether 

they’re actually on a telephone call . . . it doesn’t make use of any other information than the 

state of the telephone extension.” Hyde-Thomson, Tr. at 1405. While the status of the user’s 

phone extension may be set using the computer network in the OXE system, it is still the status 

of the phone extension to which the incoming call processing routine responds in order to route 

the call to the user-selected destination. Simply put, incoming VoIP phone calls in the OXE 

system are not routed in response to the user’s current activity “on the computer network,” but 

rather the user’s activity “on the telephone network.” This is a crucial distinction, especially in 

21 
view of the intrinsic record and the claim construction for the network limitations agreed upon 

by the parties. 

The ALJ’s infr-ingement analysis focused on the term “status,” essentially overlooking 

status “on the computer network.” The ALJ observed that “a call can be routed by the OXE 

system based on the time of day, day of the week, a ‘do not disturb’ status, or even whether a 

subscriber is on a list of callers who can bypass the ‘do not disturb’ state.” ID at 143. He then 

compared these statuses with the ‘439 patent, noting that the ‘439 patent described several of 

them. ID at 144. Nowhere did the ALJ’s analysis show that these various statuses relate to the 

“current status of the user on the computer network” limitation. Although the OXE system 

stores user-selectable criteria for call processing on the computer network, it does not process an 

incoming call according to the user’s activity on the computer network. Thus, we find no record 

evidence that the user’s activity or status “on the computer network” in the accused OXE system 

directs how an incoming call is processed, and thus we find that the OXE system does not meet 

ths claim limitation. 

We disagree with Microsoft’s contention that the “computer activity” associated with a 

VoIP phone call, e.g., using the softphone software, digital compression and conversion of voice, 

transforms this call into activity on the computer network. This alleged “computer activity” 

(associated control signaling and digital processing) is present when any phone call is made over 

a computer network. We regard the claim limitation as referring to something other than 

standard VoIP phone call processing. See RX- 101 C, 109C. We disagree with Microsoft’s 

contention that other activity that the user may be engaged in while on a VoIP phone call, such 

as checking email using the mouse or keyboard, satisfies the limitation “current activity of the 

22 
user on the computer network” since there is no record evidence that the OXE system routes 

calls to a user based on this additional user activity while engaged in a VoIP phone call. 

Accordingly, we find that the OXE system does not infringe the ‘439 patent. 

Turning to ALE’S other system, the ALJ found that the accused OXO system does not 

infringe because its call processing criteria is stored on the CSTA module or the user’s PC. He 

contrasted this with the OXE system, which uses the OTUC server and associated software. See 

ID at 145-47. The ALJ apparently viewed the specialized client-server architecture of the OXE 

system as inherently involving activity “on the computer network,” but we do not. Regardless of 

the particular architecture used, in order to infringe, a system must filter calls based on user 

activity on the computer network and not just the status of the user’s PC phone extension. In 

both accused systems, the call is routed based on the status of the user’s phone extension, thus 

leaving the claim limitation “current activity of the user on the computer network” unsatisfied. 

Also, although not specifically discussed herein, we further find that the claim limitation 

“current activity of subscribers on the computer network” is not met by ALE’s accused products. 

The record provides no indication that the accused systems process an incoming call based on 

subscribers’ (calling parties’) current activity on the computer network. See ID at 138-47. 

Based on the foregoing, the Commission reverses the ALJ’s determination that ALE’s 

OXE system directly infringes the ‘439 patent. Also, the Commission affirms the ALJ’s 

determination that ALE’s OXO system does not infringe the ‘439 patent. 

This determination is not dependent on our modified claim construction, as we find that 

ALE’S OXE system is not infringing under the ALJ’s original claim construction either. Even 

under his construction, the limitation “on the computer network” is present in the plain language 

of the claim. Thus, while he defined “status” broadly to cover “conditional processing” or 

23 
“engaged in a VoIP phone call,” the “on the computer network” language narrows the relevant 

claimed feature (e.g., “current activity of the user on the computer network”) so that it cannot be 

satisfied by the accused OXE or OXO systems. 

Since the Commission has determined that there is no direct infringement by either 

system, we also determine that there is no indirect infringement of either system since direct 

infringement is a condition precedent for indirect infringement. See GZenayre EZecs., Inc. v. 

Jackson, 443 F.3d 851,858 (Fed. Cir. 2006). 

C. Invalidity 

1. Chestnut Patent 

We determined to review the ALJ’s validity determinations of claims 1,28, and 38 of the 

‘439 patent in view of the Chestnut patent. The ALJ determined that claims 1 and 28 of the ‘439 

patent were not shown to be invalid, but that claim 38 was shown to be invalid as anticipated by 

the Chestnut patent. See ID at 68-100. 

The Chestnut patent discloses a method for controlling call forwarding using a computer 

connected to a data network and a telephone network. Chestnut patent, col. 2,11.34-37. A 

telecommute server programmed with user call routing preferences, in combination with the 

PBX, operates preferably to intercept and route incoming calls according to which specific PC 

the user is currently logged on in order to forward calls to a user telephone co-located 

(associated) with that PC (e.g., forward calls to home phone extension in response to user being 

logged on at home PC). Id. at col. 3,ll. 61-67; col. 4,ll. 48-67; col. 5,ll. 13-17. The 

telecommute server uses a record stored in memory to forward incoming calls to the appropriate 

phone extension associated with the logged-on user PC. Id. 

24 
The Chestnut patent also is directed towards improving on and providing access to 

computer telephony integration (“CTI”) applications in the field of invention. Id. at col. 1,ll. 39- 

67; col. 2,ll. 14-24. These CTI applications facilitate incoming and outgoing call handling and 

control, and are used to seamlessly interface the caller, called party, and information on a host 

computer for a variety of applications. Id. Applications include delivery to a software 

application of “caller ID”, automatic number identification (“ANI”), dialed number 

identification services (“DNIS”), and interactive voice response (“IVR”) dialed digits, such as a 

customer’s account number. Id. The Chestnut invention closely integrates a company’s LAN 

(local area network) with its telephone network, thereby makmg CTI application hnctions 

available to local and remote employees, and controls call forwarding based upon user activity 

on an associated computer terminal. Id. at col. 2,ll. 14-3 1. 

We adopt the ALJ’s findings that Chestnut discloses several of the elements of claim 1 of 

the ‘439 patent, including a “data structure contained within a computer network to store userselectable criteria for call processing” and “one or more lists [that] are used to filter the incoming 

call according to . . . current activity of the user on the computer network.” ID at 70-78. In this 

section we set out the reasons why we find that Chestnut discloses the remaining elements of 

claim 1 so as to anticipate that claim. We also discuss how Chestnut discloses a “computer 

program product” for implementing the call forwarding system, as required by claim 28. 

a. Claim 1: “computer network access port used by the telephone 

network to access the data structure” limitation 

Claim 1 requires a “computer network access port used by the telephone network to 

access the data structure such that the telephone network has access to one or more lists over the 

computer network access port.” The ALJ found that although the Chestnut patent did disclose a 

25 
“computer network access port,” it had not been proven by clear and convincing evidence that 

the Chestnut patent also “discloses a telephone network that accesses the data structure and one 

or more lists over a computer network access port as required by claim 1 .” ID at 84. 

The ALJ found that the “computer network access port” feature was not disclosed by the 

Chestnut patent’s description of CTI applications that interface the caller, the called party, and 

information on a host computer to facilitate incoming and outgoing call handling, nor its 

description of the PBX and the telecommute server operating in combination to route incoming 

calls based on whether the user is logged on to his PC. See ID at 78-84. The ALJ agreed, 

however, with ALE and the IA that the software stack within the telecommute server could serve 

as a “computer network access port.” He viewed the telecommute server as the component that 

accesses the data structure containing the incoming call processing criteria. However, he found 

that the telecommute server is part of the “computer network,” unlike the PBX, which is part of 

the “telephone network.” Id. at 83-84. The ALJ found, therefore, that Chestnut did not satisfy 

the portion of the claim limitation requiring the teZephone network to access the data structure 

using the network access port. Id. 

We disagree with the ALJ’s conclusion that Chestnut shows that the telecommute server 

is exclusively on the computer network. Rather, we find that Chestnut discloses that the 

telecommute server exists on both the telephone and computer networks. 

The specification explains that the telecommute server straddles and connects the two 

networks: “FIG. 1 shows the telecommute server 2 connected to a computer network 8 and a 

private telephone switch (private branch exchange (PBX)) 4 which in hun is connected to a 

Publicly Switched Telephone Network (PSTN) 6.” Chestnut patent, FIG. 1; col. 4,ll. 36-39. 

Also, the specification states that: (1) “[tlhe present invention closely integrates a company’s 

26 
LAN with its telephone network,” id. at col. 2,ll. 25-26; and (2) “[tlhe present invention, 

referred to as a telecommute server, is a method for controlling call forwarding using a computer 

connected to a data network and a telephone network,” id. at col. 2,ll. 24-37. The record 

supports the ALJ’s finding (ID at 83) that the telecommute server contains a port connecting the 

two networks. ALE’S expert confirmed how the telecommute server operated as a bridge 

between the telephone and computer networks: 

[the telecommute] server is a combination of software and hardware running 

in . . . probably a computer . . . which has on one side an interface to the 

telephone network, on the other side an interface to the computer network. 

  

the computer network access port will be a part of the software stack inside 

the telecommute server or possibly the actual physical hardware of the 

ethernet port of the telecommute server. 

** ** 

by definition a computer telephony integration is a system which integrates on 

the one side, the telephone network, and on the other side, the computer 

network . . . [alnd within that system, there will be [I a divisioning, maybe a 

hardware port or a software division between the two networks. 

**** 

in the case here [I with Chestnut, it is fairly clear that on one side of the 

telecommute server, it is connected to the private telephone switch over 

telephony. And on the other, it is connected to the LAN or the WAN [wide 

area network]. 

Hyde-Thomson, Tr. at 141 9-21, 1667-68. We find this testimony and the Chestnut patent 

specification, including those portions quoted above, to establish the existence of the computer 

27 
network access port within the telecommute server. See also Chestnut patent, col. 1,ll. 41-53; 

CO~. 3,ll. 64-65; CO~. 4,ll. 48-57; CO~. 5,ll. 41-45. 

We also find that Chestnut discloses that the telecommute server receives a call, accesses 

its database, and then instructs the PBX on how to route the call. The ALJ specifically 

recognized that the Chestnut telecommute server does indeed “receive” or “accept” the incoming 

call. The ALJ agreed with ALE’S expert that “accepting an incoming call is a key capability of 

the telecommute server . . . [blasically all it does is accept incoming calls, route them to 

appropriate extensions.” Id. at 1426; see also ID at 96-97 (relating to the ALJ’s invalidity 

analysis concerning claim 38). 

The telecommute server accesses its stored data to determine how the call should be 

routed: “[tlhe telecommute server 2 selects the telephone number to which incoming calls 

should be forwarded based upon a record stored in memory,” Chestnut patent at FIG. 1 ; col. 4,ll. 

64-66; and “[tlhe telecommute server 2 may either have the call forwarding preferences 

preprogrammed into it or the forwarding preferences may be entered by the called party,” id. at 

FIG. 1, CO~. 5, 13-17. 

The telecommute server checks to see if and where the called party is logged on to the 

network: “Before the PBX sends the call to the called party office extension 10, the 

telecommute server 2 checks the computer network 8 to see if the called party is logged on.” Id. 

at FIG. 1; col. 4,ll. 50-53. 

Because it receives the call and instructs the PBX on how to process the call, a person of 

ordinary skill in the art would understand that the telecommute server, along with the PBX, is a 

part of the telephone network. See Hyde-Thomson, Tr. at 1420. Because it is also clear, as 

described just above, that the telecommute server obtains information (e.g., user-selectable call 

28 
forwarding preferences) from memory via the computer network access port, Chestnut discloses 

that the teZephone network has access to the lists of the database via the computer network access 

port as claimed. 

Although it does not use the exact words of the ‘439 patent, we find that Chestnut 

provides sufficient disclosure, as supported by expert testimony, that its telecommute server 

fimctions as an interface between the telephone and computer networks so that one of ordinary 

skill in the art, together with his or her own knowledge, would understand that the Chestnut 

patent discloses the limitation of claim 1 of the ‘439 patent of a “computer network access port 

used by the telephone network to access the data structure.” 

b. Claim 1 : “controller” limitation 

The ALJ also found that the Chestnut patent did not disclose the “controller” contained in 

the claim 1 limitation “a controller to receive the incoming call designated for the user telephone 

. . . the controller accessing the user-selectable criteria . . .” See ID at 84-90. He noted that the 

parties agreed to construe this limitation as “hardware or software that accesses the userselectable criteria in one or more lists of the data structure via the computer network access port 

and thereby applying the user-selectable criteria to the incoming call.” See ID at 26. 

The ALJ found that “none of the embodiments described in the Chestnut patent explicitly 

discloses that the telecommute server includes a controller.” ID at 87. He also found that, even 

if one assumed that the controller were present in the telecommute server, then Chestnut must 

disclose that the controller both (1) receives the incoming call and (2) accesses the userselectable criteria in the one or more lists of the data structure via the computer network access 

port. ID at 88. Finding no such operations disclosed in the Chestnut patent, the ALJ concluded 

29 
that the controller limitation is not found within the telecommute server, and thus that the 

limitation is not disclosed by Chestnut. 

On review, the Commission finds that Chestnut in fact discloses the “controller” 

limitation. As a starting point, the Chestnut patent describes the telecommute server as 

“controlling call forwarding” and as connected to a data network and a telephone network. Eg., 

Chestnut patent, FIG. 1, col. 2,ll. 34-37. Moreover, the Chestnut patent discloses that the 

telecommute server functions as a controller. Although it expresses the claimed feature in 

different words, Chestnut discloses both that the telecommute server receives an incoming call 

designated for a user telephone, and that, when processing the incoming call in accordance with 

the user-selectable criteria, it accesses the data structure on the computer network via a computer 

network access port. 

With respect to the receipt of an incoming call designated for a user telephone, Chestnut 

states that the telecommute server “intercepts incoming calls which would be forwarded to voice 

mail.” Id. at col. 3,ll. 64-66. In terms of processing the call in accordance with the userselectable criteria, Chestnut discloses that the telecommute server “intercepts an incoming call 

to check if the called party is logged onto the computer network 8,” “checks the computer 

network 8 to see if the called party is logged on,” and “selects the telephone number to which 

incoming calls should be forwarded based upon a record stored in memory.” Id. at FIG. 1; col. 4, 

11. 50-53,64-66; col. 5,ll. 40-42. And as described above, we find that the telecommute server 

obtains information (e.g., user-selectable call forwarding preferences) fiom memory via the 

computer network access port, and in this way Chestnut discloses that the telecommute server 

accesses the user-selectable criteria in the one or more lists of the data structure over the 

computer network access port as claimed. 

30 
In summary, in order to control call forwarding, the Chestnut telecommute server 

receives the incoming call, including all relevant call setup signaling, checks where the user is 

currently logged on, accesses its database memory for the forwarding number or other userselectable preferences via the computer network access port, and instructs the PBX to forward 

the call to the telephone associated with the computer terminal at which the user is currently 

logged on. See also Hyde-Thomson, Tr. at 14265-10 (ALE’S expert testified that “the controller 

is within that telecommute server . . . it consists of the hardware of the telecommute server and 

the software running on the processor of the telecommute server that controls the computer 

telephony system.”). 

Microsoft argues that Chestnut’s disclosure that it “intercepts” the call does not 

necessarily mean it “receives” the call. However, we find that a person of ordinary skill in the 

art would understand that the telecommute server “receives” incoming calls. It would be 

illogical to direct call forwarding without “receiving” the incoming call, i. e., possessing all 

relevant call setup signaling in order to manage how the call should be processed or forwarded, 

in accordance with the entirety of the Chestnut disclosure. Therefore, we view Chestnut as 

disclosing a telecommute server that receives an incoming call for call processing. 

Microsoft, citing Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. 

Cir. 2004), claims that ALE’S expert testimony was insufficient to show by clear and convincing 

evidence that a person of ordinary skill in the art would view Chestnut as having disclosed each 

element of claim 1. We find this expert testimony to be probative. Moreover, contrary to 

Microsoft’s argument, Koito does not stand for the proposition that anticipation must be 

supported by specific expert testimony relating each claim limitation to a prior art element. 

Rather, Koito stands only for the proposition that if expert testimony is used to support an 

31 
anticipation argument, then it must specifically relate the prior art to the claimed elements rather 

than just generally to the reference. See Koito, 381 F.3d at 1151-52. 

Again, although it does not use the exact words of the ‘439 patent, we find that Chestnut 

provides sufficient disclosure that its telecommute server is essentially a call forwarding 

controller so that one of ordinary skill in the art, together with his or her own knowledge, would 

understand that the Chestnut patent discloses the “controller” limitation of claim 1 of the ‘439 

patent. 

Accordingly, we find that the telecommute server satisfies all elements of claim 1 of the 

‘439 patent and as such anticipates that claim by clear and convincing evidence. 

c. Claim 28: “computer program product” limitation 

Claim 28 recites a software implementation of the call processing system recited in claim 

1. The ALJ found that the Chestnut patent did not disclose a software implementation, despite 

the disclosure of the CTI applications, and therefore found claim 28 not invalid in view of 

Chestnut. See ID at 90-94. Particularly, the ALJ found that a “computer program product” is 

not expressly disclosed by the Chestnut patent, even though he had previously acknowledged 

that the “network access port” is satisfied by software within the telecommute server. Id. at 83- 

84,93-94. 

We find that the Chestnut telecommute server satisfies the software implementation (Le., 

“computer program product” limitation) of claim 28. Chestnut performs the following functions: 

1) describes the telecommute server as providing CTI applications (e.g., software applications) 

as part of its integration of the telephone and LAN (computer) networks; 2) states that the 

present invention is “a method for controlling call forwarding using a computer connected to a 

data network and a telephone network” (emphasis added); and 3) states that “the telecommute 

32 
server may . . . have the call forwarding preferences preprogrammed into it or . . . may be 

entered by the [user] when he/she logs onto or off the computer network.” See Chestnut patent, 

FIG. 1, col. 2,ll. 20-37, col. $11. 13-15. ALE’S expert confirmed that this language from 

Chestnut shows the telecommute server to operate by means of a computer program running on 

hardware components to execute computer readable instructions. See Hyde-Thomson, Tr. at 

1420-25. 

One of ordinary skill in the art understands that a computer operates using software 

programs and Chestnut discloses a computer program running on hardware components (i. e., the 

telecommute server) to execute computer readable instructions. See Chestnut patent, col. 4,ll. 

48-64, col. 5,ll. 1-21, col. 6,ll. 34-42; see also Hyde-Thomson, Tr. at 1424-25. As the ALJ 

acknowledged, Chestnut discloses a software stack and ethemet port in the telecommute server 

that may satisfy the “network access port” feature to link the telephone and computer network. 

See ID at 83-84. 

Therefore, we find that one of ordinary skill in the art would read these portions of the 

Chestnut specification as expressly describing the claimed invention and as such the Chestnut 

reference anticipates claim 28 by clear and convincing evidence. 

d. Conclusion 

The Commission reverses the ALJ’s finding that claims 1 and 28 are not invalid as 

anticipated by the Chestnut patent, and affirms his finding, for the reasons given by the ALJ, that 

claim 38 is invalid as anticipated by Chestnut. Also, we adopt the ALJ’s findings that other 

limitations, not discussed herein, of claims 1 and 28 are disclosed by Chestnut - e.g., “data 

structure,” “current activity of the user on the computer network.” 

33 
Microsoft’s alternative, proposed construction for “current,” as part of the “current 

activity of the user on the computer network” feature, does not affect our invalidity analysis 

because Chestnut discloses that calls are routed based on where the user is presently logged on. 

See Chestnut, FIG. 1, col. 2,ll. 34-67; col. 4,ll. 50-67. Chestnut states that the “call is 

forwarded based upon whether or not the called party is logged onto the data network . . . 

forwarded call is directed to a telephone line associated with the terminal from which the called 

party is logged on.” See Chestnut, FIG. 1, col. 2,ll. 34-67; col. 4,ll. 50-67. Also, Chestnut 

states that “[llogging on to the data network may cause more than one phone line to be 

forwarded. . . logging on from a computer at home may cause voice phone calls to be forwarded 

. . .” See Chestnut, FIG. 1, col. 2,ll. 34-67; col. 4,ll. 50-67. These portions of the Chestnut 

patent describe forwarding a call in response to the real-time act of “logging on” by a user, and 

not solely based on any last known status or location, as Microsoft contends. 

Even though Chestnut may not use the same exact words as the ‘439 patent, we find that 

it discloses all relevant aspects of the claimed invention to one of ordinary skill in the art (i.e., 

one possessing a B.S. degree in electrical engineering involving computer science with a 

minimum of three years in designing and implementing computer telephony systems) and thus 

anticipates claims 1,28, and 38. See Helzym Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. 

Cir. 2000); see also In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (citing In re LeGrice, 301 

F.2d 929,936 (CCPA 1962) (“A reference anticipates a claim if it discloses the claimed 

invention ‘such that a skilled artisan could take its teachings in combination with his own 

knowledge of the particular art and be in possession of the invention.”’) (emphasis in original). 

Accordingly, we find that claims 1,28, and 38 have been proven invalid by clear and convincing 

evidence as anticipated by Chestnut. 

34 
2. Miner Patent 

We determined to review the ALJ’s validity determination of claims 1,28, and 38 of the 

‘439 patent in view of the Miner patent. See ID at 100-09. The ALJ determined that claims 1, 

28, and 38 are not invalid as anticipated by the Miner patent. Id. 

The Miner patent is directed to a method and system implemented by a computer-based 

electronic assistant (“EA”) to receive and manage incoming calls to a subscriber4 (called party) 

including the steps of receiving an incoming call to the subscriber from a caller, establishing a 

first connection between the EA and the caller, establishing a second connection between the EA 

and the subscriber, electronically notifymg the subscriber of the incoming call, and a plurality of 

other steps. Miner Patent (RX-3), Abstract. The Miner system may consist of a computer 

including memory and a plurality of interface cards and ports. Id. at FIGS. 2-5, col. 9,ll. 23-67. 

Particularly, the EA, after receiving an incoming call, performs call processing 

operations including a first step of checking the subscriber’s status. Id. at col. 7,lI. 51-67. If the 

subscriber currently has a connection established with his EA, and he has not enabled a “do not 

disturb” function, then his status is available and the system will attempt to locate the subscriber 

if the subscriber is accepting all calls or calls from the particular calling party. Id. at col. 7,11. 

51-67. As a first step in locating the subscriber, the system may determine if the subscriber is 

already connected to the system by being logged into his PC. Id. at col. 8,ll. 25-39. If the 

subscriber is logged into his PC, then the system may send a visual message to the workstation 

The Miner patent utilizes the term “subscriber” for the called party instead of “user” as 

the ‘439 patent does. For our purposes here in the invalidity analysis, the term “user” from the 

‘439 patent and the term “subscriber” from the ‘789 patent have the same meaning: the called 

Party. 

35 
notifylng the subscriber of the call and identifying the caller. In response, the subscriber may 

accept the call, ask the system to place the caller on hold, or ask the system to take a message. 

Id. Further, if the system does not locate the subscriber, or the subscriber does not accept the 

call or does not respond within a predetermined period of time, it notifies the caller that it was 

unable to locate the subscriber and offers the caller the option of leaving voice mail. Id. at col. 8, 

11. 60-67. 

a. Claim 1 : “data structure” limitation 

Claim 1 requires “a data structure contained within a computer network to store userselectable criteria for call processing.” The ID does not appear to include any particular findings 

on whether the “data structure” limitation of claim 1 is disclosed by Miner. The Commission, 

however, finds that Miner expressly discloses this limitation. 

The specification describes the basic hardware components used to implement the 

invention of the Miner patent: Figure 2 shows one embodiment of the system consists of “a 

high-performance 486 computer” with interface cards which “include network cards to connect 

with standard digital telephone lines.” Id. at FIG. 2 and col. 9,11.23-45. ALE’S expert testified 

that the Miner patent discloses that the EA may be implemented using a computer having 

significant disk space and memory (e.g., 2 GB of disk space and 32 MB of memory), and fixed 

and removable storage. See Hyde-Thomson, Tr. at 1431-41; see also Miner patent, FIGS. 2-5, 

col. 9,ll. 23-67; col. 11,l. 21 to col. 12,l. 44. 

The specification further explains that the EA uses this memory to store pieces of 

information called “objects” or “items.” Id. at col. 5,ll. 29-46. Among other things, the items 

stored may include the subscriber’s schedule which enables the subscriber to input “when and 

where he can be reached and his availability at those times.” Id. at col. 5,ll. 47-57. When the 

36 
system receives an incoming call, the EA checks the subscriber’s schedule to determine his 

availability which may indicate that the subscriber is accepting no calls, all calls or only 

important calls. Id. at col. 7,ll. 63-65. In setting his availability, the subscriber provides 

instructions to the EA on how to process the calls. Id. at col. 7,l. 66 - col. 8,l. 24; col. 32,ll. 54- 

64. 

We find that the portions of the specification referred to above, along with the testimony 

of Mr. Hyde Thompson, establish that the Miner patent discloses the claimed “data structure 

within the computer network to store user-selectable criteria for call processing.” 

b. Claims 1,28, and 38: “current activity of the user on the 

computer network” limitation 

Claim 1 further requires that “the data structure store [I the user-selectable criteria in one 

or more lists that are used in filtering an incoming call .... according to the current activity of the 

user on the computer netw~rk.”~ The ALJ reviewed numerous passages fiom the Miner patent 

and concluded that it does not disclose this limitation. See ID at 100-09. The ALJ agreed with 

ALE and the IA that Miner’s disclosure of a process for checking to see if the subscriber is 

“logged on” to a computer could satisfjr “current activity (or status) of the user on the computer 

network” limitation. However, the ALJ did not view Miner as disclosing any type of call 

processing based on the user’s status or activity on the computer network as is required by this 

limitation. See ID at 105-09; Miner patent, col. 8,ll. 25-35. The ALJ further found that the 

Miner patent “does not disclose any user-selectable criteria conditioned on the status of the user 

as being logged onto his computer.” See ID at 105. 

Claims 28 and 38 require close variation of this limitation contained in claim 1. The 

ALJ addressed the limitation for all three claims simultaneously and we do the same here. 

37 
The record supports the ALJ’s finding that whether a user is logged onto his computer is 

the “current status of the user on the computer network.” ID at 107. The Commission, however, 

disagrees with the ALJ’s conclusion that Miner does not disclose call processing based upon the 

user’s status as being logged onto his computer or user-selectable criteria conditioned on the 

current status of the user on the computer network as required by claims 1,28, and 38. 

The Miner patent contains the following two passages: 

Once the assistant either recognizes the caller either through a match 

with a stored vocalization or through the caller’s phone number or 

labels the caller as unknown, it then attempts to locate the 

subscriber. It does this by carrying out a sequence of operations the 

first of which is to check the subscriber’s status. If the subscriber 

currently has a connection established with his assistant (and he has 

not enabled a do not disturb function), then his status is available. 

If the subscriber is not connected, then the assistant may check a 

secondary information source (such as a cellular network) to 

determine the subscriber’s availability. Finally, the assistant will 

check the subscriber’s schedule. The subscriber can set his 

availability to indicate that he is accepting all calls, he is accepting 

no calls, or he is accepting only important calls. 

Miner patent, col. 7,ll. 5 1-65 (emphasis added). 

As a first step in locating the subscriber, the system determines 

whether the subscriber is already connected to the system, either 

through another call or through some other communications medium 

(e.g. logged into his computer). If the subscriber is on another call 

being handled by the system, the system briefly interrupts that call to 

notify the subscriber that he has a call waiting and it identifies the 

name of the caller. If the caller is also logged onto the system through 

his computer, the system may also send a visual message to the 

workstation notifying the subscriber of the call and identifylng the 

caller. 

Id. at col. 8,ll. 25-35 (emphasis added). The ALJ looked separately at each of these portions of the 

Miner specification, among others, and determined that none of them independently satisfied the 

“current activity of the user on the computer network” limitation. In particular, the ALJ criticized 

38 
the first passage as disclosing only that “a user’s status will be determined depending on whether 

the user currently has a connection established with his assistant” not that “the ‘connection’ 

discussed in the above quoted passage refers to the user’s connection with the computer network.” 

ID at 104. The ALJ found that the second passage indicates “the ‘789 patent will check to see if a 

user is logged into his computer,” but does not discuss processing the call in any way according to 

whether the user is logged onto his computer.” Id. at 103. According to the ALJ, although the EA 

will send a visual message to the user’s computer about the caller, such activity does not amount to 

call processing “because there is no disclosure that the system does anything with the actual 

incoming call.” See ID at 103. Nor did the ALJ find anything in the second passage “that discloses 

any user-selectable criteria conditioned on the status of the user as being logged onto his computer.” 

Id. It does not appear that the ALJ analyzed these two passages when read together. 

Viewed together, the Commission finds that the Miner patent discloses the processing of 

incoming calls based upon whether the user is “connected to the system,” either through a phone 

connection or “through some other communications medium (e.g., being Zogged onto his 

computer”). Miner patent, col. 8,ll. 25-28 (emphasis added). When the Miner system receives a 

call, it attempts to locate the subscriber first by checking the subscriber’s status as the Miner 

specification discloses that “[i] f the subscriber currently has a connection established with his 

assistant . . . then his status is available.” Id. at col. 7,ll. 53-56. The Miner patent, however, does 

not define that the subscriber may be “connected” (either over the computer network or the 

telephone network) until the second passage quoted above from the ‘789 specification. Id. at col. 

8,ll. 25-28. The Commission further finds that once a connection (e.g., subscriber is logged onto 

his computer) has been detected, the Miner system, in response to that connection, will then filter 

the call based upon subscriber-selected preferences stored in the computer. Id. at col. 7,l. 65 - col. 

39 
8,l. 24. Particularly, Miner discloses that the subscriber may “set hs availability to indicate that 

he is accepting all calls, accepting no calls, or he is accepting only important calls.” Id. at col. 7, 

11.56-59,63-65. Thus the relevant call processing that Miner discloses is not the visual notification 

sent to a subscriber about a call, but rather the filtering of calls which occurs based upon how the 

subscriber has defined his availability in accordance with his current activity on the computer 

network (e.g., logged into his computer). 

Our interpretation of incoming call processing is consistent with the ‘439 patent. The ‘439 

patent repeatedly describes incoming “call processing” as occurring when call completion to the 

destination telephone is interrupted in order to access the data structure for the user-selectable 

criteria to determine how to handle the incoming call, in accordance with the user’s current activity 

on the computer network. See the ‘439 patent, FIGS. 2-4, col. 5,ll. 22-27; col. 6,ll. 23-28,55-65; 

CO~. 9,ll. 7-11; CO~. 11,ll. 22-24. 

Accordingly, we find that the Miner system does disclose the “current activity of the user 

on the computer” limitation as required by claims 1,28, and 38 of the ‘439 patent. 

C. Claim 1 : the “controller” limitation 

As previously discussed, claim 1 of the ‘439 patent claims “a controller to receive the 

incoming call designated for the user telephone and to process the incoming call in accordance with 

the user-selectable criteria.” In evaluating whether the Miner patent discloses other limitations of 

claim 1, the ALJ assumed for purposes of argument that Miner discloses such a controller, in the 

form of an electronic assistant (EA). ID at 109. The ALJ did not make an express finding, however, 

as to whether Miner in fact discloses the controller limitation. See ID at 108-09, and generally at 

100-1 09. 

40 
We find that Miner does disclose the controller limitation. The EA of Miner is a 

combination of hardware and software, an integrated computer/telephone network solution, and a 

system implemented as software programs running on a computer with appropriate hardware cards. 

See Hyde-Thomson, Tr. at 143 1-41. The Miner patent discloses that “[wlhen a caller calls into the 

system in an attempt to reach a particular subscriber, . . . the system answers the call.” Miner patent, 

col. 7,ll. 18-21. It also discloses that the inventive method is “implemented by a computer-based 

electronic assistant to receive and manage incoming calls to a subscriber including the steps of 

receiving an incoming call to the subscriber . . .” Miner patent, Abstract. 

More particularly, Miner discloses that: (1) the EA is implemented by a computer, see Miner 

patent, FIG. 2, col. 9,ll. 23-67 (“The system consists of a high-performance 486 computer . . .”); 

(2) the EA answers an incoming call designated for the subscriber telephone, see FIG. 5, col. 7’11. 

9-21 (“The system handles an incoming call to a subscriber . . . the system answers the call.”); (3) 

the EA checks the stored subscriber’s preferences to determine how to handle the call including 

checking the subscriber’s status by determining if the subscriber is connected via the computer 

network (e.g., logged into his computer) and checking to see how the subscriber has set his 

availability (e.g., accepting no calls, only important calls, or all calls)6, see FIGS. 2-5, 24A, 26; 

Abstract, col. 7,l. 1 to col. 8,l. 67; col. 32,ll. 46-64; col. 35,l. 1 to col. 36,l. 67; and (4) the EA 

Portions of Miner disclosing the claimed feature of “accessing the user-selectable 

criteria . . . of the data structure via the computer network access port” include the following: 

“[tlhe electronic assistant 10 works in an office containing the subscriber’s objects, which are 

called ‘items.’ An item is a piece of information that the electronic assistant stores in a database 

. . .,” Miner patent, col. 5,ll. 31-34; “[tlhe system consists of a high-performance 486 computer . . . [ilnterface cards 44 . . . interface cards are special-purpose cards to support many different 

forms of connectivity and communication . . [tlhey include network cards to connect with 

standard digital telephone lines . . .,” id. at FIG. 2, col. 9,ll. 24-38; and “the system can establish 

connections to a Wide Area Network (WAN) or a Local Area Network (LAN) 104 through an 

ethernet card 106,’’ id. FIG. 5, col. 11,l. 21 to col. 12,l. 17. 

41 
performs further call processing including routing of the incoming call in response to the 

subscriber’s pre-selected preferences and the subscriber’s commands, see Abstract, col. 7,l. 5 1 to 

col. 8,l. 63; col. 32,ll. 46-64. As ALE’S expert testified, “[tlhis whole system that’s being described 

in this patent is a hardware and software that accesses the user-selectable criteria in one or more lists 

of the data structure by the computer network access port, thereby applying the user-selectable 

criteria to the incoming call which is the agreed definition of the term ‘controller.”’ Hyde-Thomson, 

Tr. at 1439-41; see Miner patent, Abstract, FIGS. 2-5, cols. 5-9; col. 11,ll. 21 to col. 12,l. 44. 

For these reasons, we find that Miner discloses the “controller” limitation of claim 1. 

d. Claim 1: “computer network access port used by the telephone network 

to access the data structure” 

As discussed previously, claim 1 recites a “computer network access port used by the 

telephone network to access the data structure such that the telephone network has access to one or 

more lists over the computer network access port.” In analyzing whether Miner discloses the 

limitations of this claim language, the ALJ assumed that the EA of Miner is a controller and that the 

EA “access[es] a data structure containing user-based criteria on a computer network via a computer 

access port . . . .” ID at 109. Even making those assumptions, however, he found the limitation not 

satisfied because, in his view, there was no showing in Miner that “said controller is a portion of the 

telephone network, as required by the claims of the ‘439 patent.” ID at 109. Although the ALJ did 

not elaborate, his conclusion follows the reasoning he provided when finding the same limitation 

not disclosed by the Chestnut patent (discussed above). In essence, the ALJ found that unless the 

EA in Miner is shown to constitute a portion of the telephone network, then there is no evidence of 

a “computer network access port used by the telephone network to access the data structure.” See 

ID at 109 (emphasis added). Compare ID at 84-85 (discussing the Chestnut patent). 

42 
We find that the EA in Miner, like the telecommute server in Chestnut, constitutes a portion 

of the telephone network, and thus that the limitation addressed by the ALJ is satisfied. As noted 

above, the EA of Miner is a combination of hardware and software, an integrated 

computer/telephone network solution, and a system implemented as software programs running on 

a computer with appropriate hardware cards. More 

specifically, the Miner EA receives and processes telephone calls, and, in one embodiment, it 

engages in a two-way voice exchange of telephone information with the caller. Miner patent, col. 

3, 11. 6-11; col. 7, 11. 9-50. When the EA is receiving, processing, or exchanging telephone 

information, at least the portion of the EA performing those functions constitutes part of the 

“telephone network,” which the parties agreed in defining as a “network for carrying telephone 

information.” ID at 26 (parties agreeing on definition); Chang, Tr. at 1880. Accordingly, we find 

that the EA of Miner constitutes a portion of the telephone network, and thus that Miner discloses 

the limitation “a computer network access port used by the telephone network to access the data 

structure.” 

See Hyde-Thomson, Tr. at 1431-41. 

We also address the limitations that the ALJ assumed, for purposes of argument, to be 

disclosed by Miner. 

Specifically, we find that Miner discloses a “computer network access port” that functions 

as the interface by which the telephone network accesses the data structure. The portions of the 

record cited above in relation to Miner’s disclosure of the “controller” limitation illustrate the basic 

functioning of the controller (see above). In particular, ALE’S expert testified that “[tlhis whole 

system that’s being described in this patent is a hardware and software that accesses the userselectable criteria in one or more lists of the data structure by the computer network access port, 

thereby applying the user-selectable criteria to the incoming call which is the agreed definition of 

43 
the term “controller.” Hyde-Thomson, Tr. at 1439-41 (emphasis added); see Miner patent at 

Abstract, FIGs. 2-5, cols. 5-9; col. 11,1121 to col. 12,l. 44. ALE’S expert specifically testified that 

Miner teaches a plurality of interface cards and ports to interface with a variety of different 

communication networks, e.g., telephone networks, computer networks (WANs and LANs), wireless 

networks, etc. See Hyde-Thomson, Tr. at 1438; see also Miner patent, FIGs. 2-5, col. 9,ll. 23-67; 

col. 11, 1. 21 to col. 12, 1. 44. These portions of the Miner specification disclose the “computer 

network access port” limitation, as by definition, in accordance with the ‘439 patent, any bridge 

between the telephone and computer networks hctions as a “network access port” providing access 

between the telephone and computer networks. See the ‘439 patent, FIG. 2, col. 5,ll. 37-52; col. 6, 

11. 55-65; CO~. 7,ll. 13-15,25-27,44-50; CO~. 12,ll. 41-44. 

e. Claim 28: “computer program product” limitation 

As appeared to be acknowledged by the ALJ, the Miner EA is implemented by a computer 

including storage and “access ports” to satisfl the “computer program product” limitation of claim 

28. See Miner patent, FIGs. 2-5; Abstract; col. 9,ll. 23-67; see also lD at 109. 

f. Conclusion 

The Commission reverses the ALJ’s finding that claims 1, 28, and 38 are not invalid as 

anticipated by the Miner patent. Again, although Miner may not use the same exact words as the 

‘439 patent, we find that it discloses all relevant aspects of the pertinent limitations “computer 

program product,” “data structure,” “network access port,” “controller,” and “current activity of the 

user on the computer network;” namely receiving an incoming call, accessing call processing criteria 

stored on the computer network, and routing the call accordingly based on the user’s current activity 

on the computer network, all using a computer readable medium executed by a computer. 

44 
Accordingly, we find that Miner discloses all limitations of claims 1,28, and 38 to one of 

ordinary skill in the art, and therefore that claims 1,28, and 38 have been proven invalid by clear 

and convincing evidence as anticipated by Miner. 

IV. CONCLUSION 

In view of our findings that the asserted claims of the ‘439 patent are not inhnged and are 

invalid, we terminate the investigation with a finding of no violation of section 337. 

By order of the Commission. 

Marilyn R. Abbott W 

Secretary to the Commission 

Issued: June 23,2008 

45 
CERTAIN UNIFIED COMMUNICATIONS SYSTEMS, 

PRODUCTS USED WITH SUCH SYSTEMS, AND 

COMPONENTS THEREOF SAME 

337-TA-598 

PUBLIC CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached COMMISSION OPINION has 

been served by hand upon the Commission Investigative Attorney, David 0. Lloyd, Esq., 

and the following parties as indicated, on June 23, 2008 

- w 

Mari1"yn R. Mbott, Secretary 

U.S. Internadonal Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANT MICROSOFT 

COROPORATION: 

Brian R. Nester, Esq. 

Jeffiey R. Whieldon, Esq. 

Rama G. Elluru, Esq. 

FISH & RICHARDSON PC 

1425 K Street, NW - Suite 1100 

Washington, DC 20005 

P-202-783-5070 

F-202-783-233 1 

John E. Gartman, Esq. 

FISH & RICHARDSON PC 

12390 El Camino Real 

San Diego, CA 92130 

P-858-678-5070 

F-858-678-5099 

( ) Via Hand Delivery 

(h ia Overnight Mail 

( ) Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

( J$ Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 
Page 2 - Certificate of Service 

ON BEHALF OF RESPONDENT ALCATEL 

BUSINESS SYSTEMS: 

David A. Nelson, Esq. 

LATHAM & WATKINS LLP 

233 South Wacker Drive, Suite 5800 

Chicago, IL 60606-6306 

P-3 12-876-7716 

F-3 12-993-9767 

David M. Farnm, Esq. 

LATHAM & WATKINS LLP 

555 Eleventh Street, NW - Suite 1000 

Washington, DC 20004- 1304 

P-202-637-2267 

F-202-637-2201 

F. David Foster, Esq. 

James B. Altman, Esq. 

Kelly Busby, Esq. 

MILLER & CHEVALIER CHARTERED 

655 - 15th Street, NW 

Suite 900 

Washington, DC 20005 

P-202-626-5800 

F-202-626-0858 

( ) Via Hand Delivery 

( j( Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

Via Hand Delivery 

Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

(4 Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 
Page 3 - Certificate of Service 

Sherry Robinson 

8891 Gander Creek Drive 

Mimiburg, OH 45342 

LEXIS-NEXIS 

Ronnita Green 

West Group 

901 Fifteenth Street, NW 

Suite 230 

Washington, DC 20005 

( ) Via Hand Delivery (4 Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery (/I Via Overnight Mail 

( ) Via First Class Mail 

( )Other: 
I'UBI.l e n :RSION 

UNITED .'iTA m.s INTF.Jtr.ATIONAL TIlADE COMMISSION 

W .. hin~""" D.C. 

Inth< M .... ,of 

CERT "IN UJ','lRED CO).lMUN1CATIO:-IS 

SYSTEMS, PRODUCrS USIIDWITH 

_din" 1" .......... to Commi",,,,, NIo-s 210.36(. ) &rid 210.042(0)(1)(;,). TI>o odmini""",,,, law 
John E. Gnrtman, Esq. 

12390 El Clarnino Real 

San Diego, CA 92130 

Steven C. Cherny, Esq. 

Latham, & Watkins LLP 

885 Third Avenue, Ste, 1000 

New York, NY 10022-4834 

David A. Nelson, Esy. 

Latham, Cy: Watkins LLP 

233 South Wacker Drive, Ste. 5800 

Chicago, E ~6~~-~~0~ 

Renny Elwang, Esq. 

I.,atham, & Wa~~~~s LLB 

633 West Fifth Street, Suite 4000 

Los Angelcs, CA ~~~71-2~0~ 

F. David Foster, Esy. 

Jamcs B. Altman, Esq. 

Miller CG Chevalier Chartered 

455 ~i~t~~i~th Street, Y W, Suite 900 

W~shin~~on, DC 20005 

ITC STAFF: 
AGE 

UP~I~~ .................................................................... 

I. F~oce~u~d~~i~tory ....................................................... f 

11. Jurisdiction lncluding Parties And ~tnpo~~a~ion ................................. 3 

El. Patents Including Claims In Issue ........................................... 4 

A, Tbe Liffick ‘439 And ‘2S4 Patents ................................... ,4 

B. The <>’Neal ‘064 And ‘357 Patcnts .................................... 8 

J\’. Background Tcchnology ................................................. 13 

V. Person of Ordinary Skill Xn ‘Ihe Art ......................................... 18 

VI. ~l~~irn~nnstruc~iun ..................................................... 19 

A. The Liffick ‘2.89 And ‘439 Patents ................................... 26 

I I Claimcd Phrase Involving ’“activity of 

a user CompUteTy3 ........................................... 28 

2. Claimed Phrase “Independent” ............................... .34 

3. Claimed Phrase “current activity of the user on the 

computer network“‘ ......................................... .42 

B. The O’Neal ‘064 And ‘357 Patents ................................... SO 

1. Tht: GUZ Limitation: The Claimed Phrase “generate [or generating] a 

single graphical 

menu for displaying said ~~~nrnuni~~~~~~ options for each 

of said ~o~i~unl~~~~~~ services at the Same time” ................. 53 

2. The TU1 Limitation: The Claimed Phrase, “said 

telephony server being con-t‘igurcd tu audibly 

rcprcscnt said ~nn~m~i~~~~ti(~n options to said 

telephone when said subscriber etnplnys said 

.. 

11 
telephone to access the computer implc~ent~d 

control center“ (JX-3 at I8:67-19:4; JX-3 at 24:4-8) 

or “audibly r~i3t-~s~~~in~ said ~o~rnuni~~~~~~n 

optioiis tu one of said tel~ph~~~~~, using said 

tekphony server, wtien sard subscriber ernplnys OW 

of said telephones to access said computerimpl~~~nt~d control center.” ......................... ..... 62 

VXX. Validiry ............................................................... 67 

A, The Liffick ‘439 Pateiit ........................................... .68 

1. Chestnut Patent ........................................... ,623 

a. Claim 1 Of The ‘439 Patent ............................ .68 

b. Claim 28 Of The ‘439 Patent ........................... .90 

C. Claim 38 OFThe ’439 Patent ........................... .94 

2. Minerpatent .............................................. 100 

2. CIaims 1: 28 Axid 38 Of The ‘439 Patent. ................. 100 

B. The tiffick ‘259 Patent ........................................... 109 

1. ~un~a~Pate~t ............................................ 110 

a. Claiinl ............................................ 110 

k. Claim7 ............................................ 223. 

2* ~ h e s t n ~ t P ~ t e n ~ ........................................... 226 

a. CXairns I And 7 Of The ‘289 Patent ...................... 126 

C. The O’Neal ‘064 And ‘357 Patents .................................. 228 

I, Swartz Or Wagai Patents .................................... 128 

VU IIi~~iii~~rn~nt.. ........................................................ 130 

A. ~~~~is~~Pr(~~uc~s.. .............................................. 132 
€3 . The Liffrck Patents ............................................... 132 

1 . The ‘439 Prrtent ........................................... 133 

Claim 1 ............................................ 133 

h . Claim 28 ........................................... 149 

c . Cllainl3X ........................................... 1-5‘3 

2 . The‘2WPafent ........................................... 1.. 

Claim 1 ............................................ 166 

b . Claim7 ............................................ 1XU 

a . 

a . 

C . The U’Neal Patents .............................................. 155 

D. Contributory T~~~~~~e~~nt ......................................... 194 

E . ~n~u~e~ln~~~ge~~~~~t ............................................. 194 

~nf~~~~a~iljt~ (‘289 And ‘439 Patents) ..................................... 199 

X . ~~~e~ti~lndust~ ..................................................... 297 

A. Th~~iff~~k~~~e~~~ .............................................. -208 

XX. 

1. Products In Issue .......................................... 208 

2. ~~c~~~caIPr~~~ ........................................... 20. 

‘289 Patent (Claim 1) ................................. 210 

’439 Patent (Claim 1) ................................. 233 

B . The O’Ncal Patents .............................................. 232 

5 . Products In :Issue .......................................... 232 

2 . TechnicalP~o~~ .............................................. 

a . ‘064Patent ......................................... .3. 

a . 

b . 

iv 
;? r b . s~7PateIlt ......................................... 2~~ 

XI Remedy .-. ’? 50 . ............................................................ 

XII Bond ................................................................... 

Xlll . Additional Findings .................................................... 267 

A . ParLies ............................................................ 

€3 . Ex.i>ert-s ........................................................ 267 

CONCLZJSIONS OF LAW .................................................... 268 

ORDER ................................................................... ..9 
CRr 

CDX 

CEW 

CORFF 

COSFF 

CRBr 

CRRFF 

CRSFF 

cx 

JX 

RBr 

RDX 

RX 

RFF 

ROCPFF 

RRBr 

RRCPFF 

SBr 

SFF 

SRKFF 

SRBr 

AB ~REV~ATI~~S 

~orn~lain~~~t’s Post-hearing Biief 

~~rn~la~n~n~’~ Demonstrative Exhi bit 

Complainant‘s Proposed Finding 

Co~i~l~iin~nt~s Objection To Rcspondcnts’ Proposed Finding 

~ut~~lainar~t’s Objection To Staff‘s Proposed Finding 

Complainant’s Post-hearing Reply Brier 

Complaiixmt’s Proposed Rebuttal Finding to KFF 

Cotnplainant’s Proposed Rebuttal Findings to SFF 

~om~~ainant’s Exhibit 

Joint Exhibit 

Respondent’s Post-hearing Brief 

~espondent’ s ~e~o~st~~ti ve Exhibit 

Respondent’s Exhibit 

Respondent‘s Proposed Finding 

Respondent’s Objection To Complainant’s Proposcd Finding 

Respondent’s Post-hearing Reply Brief 

R~s~o~1dent.s Proposed Rebuttal Finding To CFF 

Staff‘s Post-hearing Brief 

Staff‘s Proposed Finding 

Staff‘s Proposed Rebuttal Finding to RFF 

StafE‘s Post-hewing Rcply Brief 

vi 
SRCW 

7'r. 

Staff's Proposed Rebuttal Findiiig To GW 

'Transcript Of Pre-hearing Conference and Hearing 

vii 
OPlh’XUN 

I, Procedural €3 istory 

On February 16,2007, Microsoft Co~orati~~n jMicmsof1 j filed a complaint accusing 

t-espondent “Alcatel Lucent“ of violating Section 337 in the i~€~~rt~i~ion, sale for importation, 

and sate after importation into the United States of certain unified ~o~i~~ir~~cat~ons systems. 

products used wfith such systems, and components thcred. by reason of in~~n~e~ent of clainis 1 

and 3 of U.S. Patent KO. 6,421,439 (the ‘439 patent), claims 1-20 of US. Patent No. 6,430.289 

(the ‘283 patent). claims 1 3-5, 7-9, and 11-1 3 of U.S. Patent No. 6,263,064 (the ‘064 patent) 

arid claims 1: 2,4,6, 8. and 17 of US. Patent No. 6,728,357 (the “357 patent), (72 Fed. Reg. 

14138 (March 26, 2007j.) On March 20 the ~o~~~ission issued the Notice o~In~/estj~~t~on. (id.) 

The Commission’s Notice of Investigation was ~~blis~~d in the Federal Register on March 26, 

200’7. 

which meant that any f3nal initial ~ct~~inatioi~ on violation should be filed by January 28.2008. 

Order No, 3, which issued on Apnl24, 2007, set a target date of April 28, 2008 

On April 19,2007, Microsoft moved to amend the complaint and notice of inves~i~ation 

to substitute Alcatel Busincss Systcms (ABS) as the respondent and to add claims 8,26,38, md 

48 of the ‘439 patent and claim 30 of the ‘064 patent. (In April 3S* 2007, Order No, 4 granted 

the motion. (~om~~ission Decision h’ot to Review, May 17,2007.) 

On August 17, 2007, Microsoft moved for summary ~et~ri~~n~tiori as to the economic 

prong of the domestic indrrsti-y requirenzent, On September 5,2007, Ordcr No. 9 granted said 

motion. (Commjssion Decision Not to Review, Sept. 20,2007.) 

Uti August 22,2007, thc partics filcd a stlp~l~~t~on relating to i~~ortatlo1~ of the accuscd 

products (JX-9) to which the a~mln~st~~~~v~ law judge gave effect by issuing Order No. 8 on 

August 23,200’7. 
On August 23,2007, ~~~~osoft moved to tcrriiinati: the investigation as to claim 8 of the 

‘439 patent, claims 2,435, and B 1-20 of the ‘289 patent, claims 1 4-5,7. and 13 of the ‘064 

patent. and claims lt 2.8, and IT9 of the ’357 patent. On September 6,2007, Order No. I4 

granted said motion ~e~~ina~~n~ said claims from the investigation, ~~o~mission Decision Not 

‘To Review, Sept. 20,2007.) 

A letter dated October 5,2007 by the private parties to the administi-~it~v~ law judge was 

included with Order No. 18 which issued on October 5. Said letter irtcluded certain s~i~ul~tjons 

for ~trea~l~nin~ the issues for the hearing. Also in said letter cIairns 3 and 48 of the ‘439 patent, 

claims 3.6 and 8-10 of thc ‘283 patent, claim 9 of the “064 patent and claim 4 of the ‘3357 patent 

were withdrawn. Said Order No. 18 terminated the ~n~cs~i~at~on as to those claims. 

(Commission Notice Not To Rcview, Oct. 23,2007.) 

On October 12,2007, ABS filed an ~nop~sed Motion to Anzend the Complaint and 

Notice of Investigation to reflect a corporate name change from ABS to Alcatel-Lucent 

Enterprise (ALE). Said motion was granted on October 15,2007 thru ~ssuance of Order No, 19 

(Commission Decision Not To Review, (Oct, 26,2007,) 

An evidentiary hearing was conducted on October 9, 10, 1 1, 12, and 15,2007. In issue at 

the evidentiary hearing, inter alia, was whether the importation into the United States. the sale for 

i mportation, or the sale within the United States after irn~~~a~ioii by respondent of certain 

unified ~~m~nu~icatlon systems, products used with such systems, and components thereof 

involved infringement of claims 1,38 and 38 ofthe ‘439 patent (JX-l)? claims 1 and 7 of the 

‘289 patent, (fX-2). claims 3, 8, 1 l? 12 and 20 of the ‘064 patent (JX-3) and claim 6 of thc ‘357 

patent (.JX-4) and whether an industry in the I-kited States exists, with respect tu each of said 

2 
patents, as required by subsection (a)(2) of Section 337. ~~~sthea~n~ submissions have becn 

filed.’ 

The matter 1s now ready for a final decision. 

The Final Initial and Recommended Determinations are based on the record compiled at 

the hearing and thc exhibits Lrdrnitted into evidence. The adniinis~r~~t~~re Law judge has also taken 

into account his observation of the witnesses who appeared before him during the hcmng. 

Proposed findings of fkt submitted by the parties not herein adopted, in the form submitted or in 

substance, are rejected as either not supported by the evidence or as involving immaterial matters 

andlor as irrelevant. Certain findings of fact includcd herein have references to supporting 

evidence in the record. Such references are intended to ser~c as guides to the testimony and 

exhi bits supporting the finding of fact. They do not necessarily represent complete summaries of 

the evidence supporting said findings. 

El. Jurisdiction Including Parties And I~po~~tio~l 

The private parties in this investigation are Microsoft and ALE. FF 1-4. The 

Commission has subject matter junsdiction over this i~l~~estigatio~ because hlicrosoft has alleged 

violation by ALE of Section 337 in connection with the importation of certain ALE products, 

pursuant to 13 1J.S.C. 3 1337. hen, Inc. v. US. Int-1 Trade Comm’n, 902 F.2d 1532, 1536 

(Fed. Cir, 1c399). Moreover, the parties have further stipulated to the ~~p(~rtation of certain ALE 

products, (JX-3.) In addttion. the Commission tias personal jurisdiction over ALE 112 this 

’ Referring to a telephone call by the attorney adviser, complainant, as stated In a letter 

dated December 19.3007 to the Secretary, submitted a corrected rebuttal to ALE’S propused 

Eindings of fact, and corrected posthearing reply biief to correct certain inadvertent clerrcal errors 

contained in Microsoft’s rebuttal to ALE’S proposed findings of fact md Microsoft’s posrheartng 

reply brief, respectively. which were both filed on November 13, 2007. 

3 
investigation because ALE has participated fully In said in~est~~atio~i~ including ~a~lc~~a~i~1~ in 

discovery and motion practice. 

TA-365, initial RetcI.~inat~o~, I WS ITC: tBXllS 66. *3 (Feb. 3, 1995) (‘The ~o~r~~ss~on has 

personal ~~~risd~ction over respondent M[K because IHK participated fully in discovery and the 

hearing.”) 

UI. Patents iI~cluding Claims In Issue 

The field of art for the ‘439 and ‘289 patents, referred to by the parks as the “XAffxk 

Patents,” is computer telephony. ~Hyde-T~iomso~, Tr. at 1219.)’ The field of art for the ‘064 snd 

‘357 patents, referred to by the parties as the “O’Neal Patents,” is unitkd messaging. 

~Hyd~-~ho~s~~i, Tr, at 1222.) {SFF 15. 16 ~undi~~ute~~.) 

A. The LXick ’339 And “289 Patents 

On March 24 and April 13. 1999, Stephen Liffick filed thc applications that would 

ultimately issue as the ‘339 and ‘289 patents, respectively. (JX-1; JX-3.) The ’439 patent is 

entitled “System and Method for User Affiliation in a Telephone Network.’’ and issiied on July 

36,2002. (JX-I, cover-) The ‘439 patent has been assigned to Microsoft. (Id.). Claims 1. 28 and 

38 are in issue. They read: 

I. It1 an ~i1~jro~~c~t where subscribers call a user over a telephone 

network, wherein a user telephonc is couplcd with thc tclephonc 

network, a systcm for processing an incoming call from a 

subscriber to a user in the telephone network according to user 

specifications, the systcm comprising: 

a data structure contained within a computer network to store 

user-selectable cri teri a for call processing, wherein the data 

?- F3ent-y Hyd~-~r~o~so~ was qualified as respondent’s expert, and Jack Chang was 

qualified as ~omplai~1~~it~s expert. See FF 5, 6. 

4 
strucrure stores the user selectable criteria in one or more lists that 

are wed in filtering an incoming call and wherein some of the one 

01- more lists are used to filter the incoming call according eo 

current activity of subscribers on the computer network or 

according to current activity of the user on the co~pi~ter network; 

a computer network access port used by the telephone network to 

access the data structure such that the telephone network has access 

to the one or more lists over the computer network access port: and 

3 controller to receive the incoming call designated for rhe user 

telephone and to process the incoming call in accordance kith the 

user-selectable criteria, the controller accessing the user-selectable 

critcria in the one or more lists of the data structure via the 

computer network access port and thereby applying the 

user-selectable critcri a to the incoming call+ 

38. In a system where siibscribers call a user over a telephone network, 

wherein a user telephone is coupled with the telephone network, a 

computer program product for i~~lem~nti~g a method fur 

processing a call from a subscriber to a user over a telephone 

network, the computer program product compnsing: 

a compiiter readable niediuin having computer executable 

instructions lor performing the method, the method comprising: 

accepting an incoming caH designated for the user telephone; 

accessing a data strwtare contained within a computer- network 

that: is independent of the telephone network to retrieve 

user-selcctable criteria for call processing stored within the data 

structure, wherean some of the user-selectable critcr-ia is 

conditioned on current activity of subscribers on the computer 

network or according to current activity of the user on the 

computer network; and 

processing the incoming call in accordance with the user-selectable 

criteria. 
38. In a system including a telephone network and a computer nctwork 

where an originating telephone connects witti a user telephone over 

the telephone network, a method for processing a call from the 

or.i~ina~in~ telcphone to thc user telephone according to user 

specifications, the method comprising: 

accepting an incoming calf designated for the user telephone from 

an originatiiig ~el~pho~~e of a subscriber; 

accessing a data structure contained within a computer network 

that is independent of the telephone network to retrieve 

user-sclectahle criteria for call processing stored within the data 

structux-e, wherein some of the user-selectable criteria is 

conditioned on current activity of subscribers on the computer 

network or according to current activity of the user on the 

computer network; and 

prwessing the incoming call of the subscriber in accordance with 

the user-sclectable critcria. 

(JX-1 at 18:1-18.) 

The ‘239 patent is entitlcd “’System and Method for Computerized Status Monitor and 

Use in a Telephone Network,” and issued on August 6.3002, (JX-1. cover). The ‘285, parent is 

assigned to ,Microsoft. (&). Claims 1. and 7 are in issue. They read: 

X. In a system that includes a teIephorie network and a computer 

network with one or more users, wherein each user is connected 

through a user computer the computer network and is logically 

connected through the computer network to the telephone network, 

a method of ~eternijnin~ when to establish telephone 

coniniiinication between two parties, at least one of whom is a user 

connected to said computer network comprising: 

at the computer network, receiving information Erom the tclephonc 

network rhat a first party from whom a call is o~gin~ti~~ desires to 

cstablish telephone cornmimiention with a second pai-xy: 

at the computer network. monitonng activity of a user computer 

connected to the computer network and associated with the second 

party; 

G 
at the computet- network, storing a scc of pre-determined rulcs for 

~~te~jni~~~ when the second party is available to take a call from 

the first party; 

at the computer network, using the set of pre-de~er~iined rules to 

process i) the ~n~orm~~tion received from the telephone network 

regarding the calI being originated by the first party, and ii) 

i~~or~~iltj~n regarding the moni tored activity of the user computer 

of the second party, to determined when the second party is 

available to take the call originated by the first party; and 

using the i[~~~rmati~n processed at the computer network to 

facilitate connecting the call originated by the first party through 

the tetephone network to thc second party. 

(JX-2 at 15:36-55.) 

7. In a system that includes a telephone network and a computer 

network with one or more users, and wherein each user is 

connected through a user computer to the computer network and is 

logically connectcd through the computer network to the telephone 

network, a computer program product comprising: 

il computer readable rnedi um for cmying computer executable 

instructions for i~plementiii~ at the coniputer network a method of 

determining when to establish telephonc ~om~i~i~ication between 

two parties, at least one of whom IS a user connected to said 

coi-nputer network, and wherein said method comprises: 

at the computer nelwork, receiving information from the telephonc 

network that a first party from whom a call is originating desires to 

establish telephone co~ii~u~i~ca~i~n with a second party; 

at the coniputer network, ~on~to~~~ activity of a user computer 

connected to the computer network and associated with the second 

party; 

at ttie computer network, storing a set oF predete~in~~ rules For 

determining when a second party is available to take a call from the 

first party; and 

af the computer network, using the set of ~re~eter~~ncd niles to 

process i> the inf~r~atj~n received from the telephone network 

7 
rcgarding thc call bcing originated by the first party. and ii) 

Information regarding the monitored activity of the user computer 

of‘ the second party, to d~~~r~~i~~e when the second party is 

iivailable to take the call o~i~lnatcd by ttic first party. 

(JX-2 at 1920-38.) 

B. ‘The O’Neal ‘064 And ‘357 Patents 

The “OM patent, the application of which was filed on January 29, 1999, is entitled 

“Centralized ~o~~~nun~~ation Control Center for Visually and Audibly Updating C#~muni~~tio~ 

Options Associated with Com~i~inic~tion Services of a Unified Messaging System snd Methods 

Therefor,” and issued on July 17,2001. to tiarned inventors Stephen O’Keal and Jotin Jiang. 

(JX-3, cover.) The ‘064 patent is assigned to Microsoft. (See JX-32C.j Claim 3, which depends 

on claini I. as welt as claims 8, 11, 12 atid 2U are in issue. Said claims rend: 

I. A computer-implemcnted control center for permitting II subscriber 

of a plurality of com~un~cati(~n services of a unified messaging 

system to customize co~i[nunication options pertaining to said 

plurality of c~rn~nu~~j~a~~o1~ services through either a 

~el~~h~ny-cent~~ network using a telephone or a data-centric 

network using a display terminal, said ~~~put~r-imple~~~ted 

control center compri si rig: 

a subscriber cu~~unic~tion prfile database, said subscriber 

co~~rnu~~i~ati~~i profile database having therein an account 

~~~~ain~Ii~ to said subscriber, said account jIi€ludin~ said 

communi~ati~n options for said subscriber, said co~~~inica~io~ 

options including parameters associated with individual ones of 

said plurality of said c#m~unic~t~on services and routings among 

said plurality of c~~uiiica~i~n services: 

a computer server coupled to exchange data with said subscriber 

c~~i~ur~ication profile database, said computer server being 

configured to generate a single graphical menu fur displaying said 

~oi~~unica~iun options for each of said ~o~~~~~njc~tion serviccs at 

the same time, and to visually display said single graphical menu 

on said display terminal when said subscriber employs said display 

8 
terminal to access said computer-implenietited control cenrer 

through said data-centric network, said cornpileer server also being 

configured to receive from said subscriber via said displriy terminal 

and said ~~ta-cei~tric network ;L first change to said ~oni~~~n~catjon 

options and to update said first ctiang:: to said account in said 

subscriber c~~~unication profile database, wherein said single 

graphical rneiiu comprises at least a first display area for showing a 

first ~o~~rn~nl~atlon service and a first coni~~inicat~on option 

associated with said first co~i~~i~ic~t~o~ service. and a second 

display area for showing a second co~~u~~cation service and a 

second conin~uni~ation option associated with said second 

coni~~in~catio~ service, the first display area and the second 

display area being displayed at the same time in said single 

KiphicaI menu, and wherein the first comni~~nication option 

includes a f%st enable option fur cnabling or disabling the first 

co~n~unlca~ion service, and wherein the second corn~un~c~~t~o~ 

option includes a second enable option for enabling or disabling 

the second ~~m~unicati~n service: and 

a telephony server coupled to exchange data with said 

co~~unication profile database: said telephony server being 

configured to audibly represent said communl~atlon options to said 

tclephone whcn said subscribcr empIoys said telephone to access 

said cumput~r-~mp~e~ented control center, said telephony server 

also being configured to receive from said subscriber via said 

teleplione a second change to said corn~~u~~icatio1i option and to 

update said second change tu said account in said subscriber 

~oI~~unication profile database. 

(fX-3 at 18:22-19:9.) 

3. The computer-~~ple~ented control center of claim I wherein said 

plurality of con~n~~ini~ation sefv~ces include a call ~or~~~rd~ng 

scrvice configured tu pcmit said subscriber to specify whether a 

call received at a telephone number associated with said account be 

forwarded to a forwarding telephone number, said €o~nI~~n~ca~i~n 

options including a call fonvarding enable option and said 

forwarding telephone nurnhcr. 

8. The computer-implemented control center of claim 1 u herein the 

first cornrn~~~~i~ation option includcs a first routing option, and 

9 
wherean the second communi~a~ion option includes a second 

routing option. 

I I. The compiiter-impleinented control center of claim I wherein said 

plurdity of coi~T~uT~ic~tio~i sewices comprise an e-mail setliice 

configured to permit said sub~~~i~~ to receive and ~~a~s~~it e-maiIs 

through said data centric network, and a voice telephone service 

configurcd to pcrmit said subscriber to receive artd transmit voice 

calls through said telephony-centric network. 

12. ‘l‘tic cnmputer-iniplernented control center of claim 1 I wherein said 

pluraIity of comm~ni~ation sewices include a f~~similt: service 

configured to permit sard subscriber to receive at said unified 

messaging system a Facsimile through said tele~liony-cen~ri~ 

network atid said telephony server., said ~o~nmunicati~n options 

including a facsimile receiving enable option associated with said 

facsimile service. 

gx-a at 20: 12-18.) 

20. A computer-i~~l~rn~nted control center for pe~~~t~in~ a subscriber 

of a plurality of co~rnun~catio~ sexvices of a unified messaging 

system to custornize co~muni~ation options pertaining to said 

plurality of comm~inic~tjo~ services through either a 

telephony-centric network using a tclephone or a data-centric 

network using a display terminal, said computer-implemented 

control center comprising: 

a subscriber co~~~nic~~ion profile database, said siibscriber 

coInrnuri~cat~on profile database having therein an account 

pertaining to said subsci-iher, said account including said 

communi~at~on options for said subscriber, said c~mmunication 

options including parameters associated with in~iv~~liial ones of 

said plurality of said c~In~n~nlc~ti~r~ services and routirigs amorig 

said plurality of corn~~ui~~catio~i services; 

a computer server coupled tu exchange data with said subscriber 

~otnrnur~ication profile database, said computer server being 

configured to generate a single graphical menu for displaying said 
~~~mmunication options for each of said ce~~m~ni~at~~~ services at 

the same time, and to vtsually display said single graphical menil 

on said display te~~~na~ when said subscriber employs sand display 

tert~ina~ to access said computcr-i ~ple~ented control center 

through said data-centric network. said computer server also king 

configiired to receive from said subscriber via said displny ternit nal 

and said data-ccntric network a first changc to said co~mu~ica~ion 

options and to update said first change to said account in said 

subscriber ~o~~i~inic~ti~?n profile database, wherein said single 

graphical menu comprises at least a first display area for showing a 

first ~o~m~inication servicc. and a first: ~o~~un~~at~on option 

associated with said first co~~un~~atfon service, and a second 

display area for showing a second corn~un~cat~on servicc, and a 

second cornniuni~~~tlon option associated with said secuiid 

~omni~~jca~jon service, the first display area and the second 

display area being displayed at the same ti me ia said single 

graphical menu, and wherein the first com~nuni~a~ioti service and 

the second c~~munic~~tj~n service are selected €rem a call 

f~~r~~~din~ service, a follow xne service, an alternate number 

service, a message alert service, a fax receiving service or a paging 

service, 

a t~Iephon~ server coupled to exchange data with said 

comInuIi~~atio~~ profi €e database, said telephony server being 

configured to audibly represent said commun~cation optiotls to said 

telephone when said subscriber employs said telephone to access 

said computt=r-impleniclnted control center, said telephony server 

also being configwed to receive from said subscriber via said 

telephone a second change to said ~ommunication options and to 

update said second change to said account in said subscriber 

c~mmunic~tion profile datahase, 

(JX-3 at 22:43-24: 14.) 

The ‘357 patent is entitled “‘Centralized ~orn~~in~catlon Control Cexiter a~id Methods 

Therefor,” and issued on April 27,2004, to named invcntors Stephen C. O’Ncal and John Jiang. 

(JX-4. cover}. The ‘357 patent derives from application no, 09/907,053. filed on July 17,2001, 

which is a continuation of application no. 091239,585, filed on January 29, 1999 which 

appIj~atjon issued as the ‘964 patent. (IcJ). The ‘357 patent 1s assigned to Microsoft. (hi) 

11 
Claim ti of the '357 patent, which depends on clam I (nut in issue E E) of said patent, 

is in issue. Said claims read: 

1. A computer-implemented me~~od for ~er~n~tti~g a subscriber of a 

pltirality of co~~iin~~at~on services of a unified messaging system 

to customize com~iunl~ati~~n options pertaining to said plurality of 

co~~i~uiiica~ i on services, sai d ~om~unic~tion cy tions i ncl ude 

parameters associated with individual ones of said plurality of said 

~omrnunication services and routings among said plurality of 

~om~~~njca~ion services. said plurality of con~~unjca~~on services 

comprising a voice telephone service &hrough a te~ep~iony-~e~itric 

network and an e-mait service through a data-centric network, said 

conimunicati ons options being access tble via di spiay terminals 

coupled to said data-centric network and via tekphones coupled to 

said tele~hony-cent~~G network, said method comprising: 

providing a subscriber comm~~nicat~on profile database, said 

subscriber co~i~u~~ica~ion profile database having therein an 

account pertaining to said subscriber, said acccrtrnt including said 

cflm~unjca~ion optrons for said subscnber; 

generating a single graphical menu for displaying said 

~ommunic~~tion options for each of said coi~~unicafion services at 

the same time, wherein said single graphical menu comprises at 

least a Eirst display area for showing a first ~on~m~n~~ation service 

and a first cornni~Lnicatifln option associated with said first 

cunimunica~ion service. and a second display area for showing a 

second co~I~~~nicatifln service and a second c~mm~i~ication option 

associated with said second ~c~mmunication service, the first 

display area aiid the second display area being displayed at the 

same time in said single graphical menu, and wherein the first 

corn t~~nic~tio~ optnn iricluded a first enable option for enabIing 

or disabling the first coi~i~uIiicatioii se~~i~e, and wherein the 

second cumm~~iGation option includes a second enable option for 

enabling or disabling the second communicat~~n service; 

visually displaying said single graphical menu on one of said 

display terminals, using a computer server cotipled to exchange 

data with said subscriber ~~~~unicatio~ profile dafahase, when 

said subscriber employs said one of said display terminals to access 

said computer-I cnplemented control center: 

12 
providing a teIeph~~~~ scrver coupled to exchange data with said 

conimu~~~a~ion prof1 le database; 

audibly ~cprcsent~ii~ said ~on~rnun~ca~~on options to one of said 

teleph~nes. using said tclephony servcr, when said subsc~ber 

employs said one ctf said telephones tu access said 

computer-i i~plem~r~te~ control center; 

receiving from said subscriber via sard me- of said display 

ter~inaIs at said computer server a first change to at lcast one of 

said comInuri~catior~ options, said first change tu said 

co~~L~n~ca~ion options pertains to either said voice telephone 

sewice or said e-mail servicc: and 

updating said first change to said account in said subscriber 

c~~unic~tion proFiIe database, thereby resulting in ;1 first updated 

subscriber co~mun~ca~ ion profile database. wherein subsequent 

messages to said subscriber at said unified messaging system, 

including said voice telephone service, are handled in accordance 

with said first updated subscriber c~mmun~c~~t~o~ profile database. 

6. The com~~t~r-i~pI~m~nted mcthod of claim I wherein said 

~lu~~lity of Go~~~~Ini~~ti~n services include a call forwarding 

service configured to permit said subscriber to specify whether a 

call received at a telephone number associated with said account be 

foiwarded to a forwarding telephone number, said comniu~icat~on 

options including a call forwarding enable ophn and said 

fomwding telephone number. 

(JX-4 at 29:43-50.) 

IV. ~ack~roun~ Technology 

~~o~p~i~e~ telephony (the field of art for the Liffick Patents) overlaps with unificd 

messaging, (the field of art for the O'Neal Patents) but is broader. (Chang, Tr. at 41 I .I 

Computer telephony, refers to the tn~e~~dtion of computer technology and tclephclne technology. 

13 
Pdeivton’s Telecom Dictionary states: “Computer telep~~~ny adds com~~~~er intelligence to 

the making. receiving, and managing of tekptione calls. Harry Xewton coined the term in 1992 

~om~?~~~er telephony has two basic goals: to make making and receiving phone calls easier. I.G. TO 

enhance one’s personal productivity and second, to please corporate ~~~sto~~ers who call in or 

who arc called for information, servicc, hclp. ete.” (SX-20, at 191.j New7ton’s Telecom 

Dictionary further states: 

Integrated Messasing. Also called Unificd Messaging. Integrated messaging is 

one of may benefits of running your telephony via a local rea netwxk. Here’s 

the scenario: Voice, fax, electronic mail. image and video> All on one screen. 

You arrive in the morning. Turn on your PC. It logs onto your LAN and its 

various servers. In seconds, it gives you a screen listing all your messages - voice 

mail, electronic mail, fax mail, reports, compound documents +. Anything and 

everything that came in for you. Each is une line. Each line rells you whom it’s 

from. What it is. How big it is. How urgent. Shp clown. Click. Your PC loads 

up the application. Your LAN hunts down the message. Bingo. it’s on screen. If 

it contains voice - maybe it’s a voice mail or co~~~ound doc~~e~~t with voice in it 

I.. it rings your phone and plays the voice to you. Or, if you have sound card, it can 

play the voice through your own PC, If it‘s an image it may hunt down (also 

called launch) an imaging ~p~li~~~iun which can open the image you have 

received, letting you see it. Ditto, if it’s a video message. Messages are deluging 

us. To stop them is to stop progress, Run your eye down the list, one line per 

entry. Pick the key ones. junk the junk ones. Postpone the others. 

Lt gets better. You’re out. Dial in on a gateway with your laptop. Skim your 

messages. Dial in on a phone, Punch it1 some buttons. Hear your voice mail 

messages. Or 11 you’re not on your laptop. have yuur e-mail read to yoti, Better, 

have your fax server OCR your faxes and image mail and have it rend them to 

you. A LAW server is the perfect repository for messages. It can search for them, 

asscmble them, process them, store them, convert them, compress them, shape 

them, shuffle them, interpret them. Integrated messaging essentially applies 

intelIigence and order to the messages deluging you each day. 

(SX-20, at 405.) (SPFF 19.21 ~i~~dispu~ed~.) 

The parties have agreed that the constructioii of the term “unified messaging system” 

means “‘system that allows messages of il data-centric network and a telephony-centric network to 
be received, stored, retrieved, and forwarded without regard to ~o~~~ni~ation devices or 

networks employed lor the transmission of the mesmge.’* (Chang, Tr. at 571 :I 8-25; CUX-126.) 

The meaning of unified messaging was understood in the field for many years prior to the 

applications for the patents at issue here. (See SX-19, at 548; (SPFF 22 (un~~ispu~ed~.) The 

problems of integrating tclcphonc and computer networks came about because traditionally 

telephone and computer technoiogics worked j~depc~~dcntl~ of each other and although they 

shared the same physical infrastructure, they failed to work well together logically. (Chang, Tr. at 

427: 15-24; CDX-2.) In 2007, IBM published a white paper addressing some of the challenges 

still faced hy the convergence of teiephone and computer networks. (Chimg, Tr. at 427:4-14; 

CDX-2; CX-454; CFlF 34, 35 ~undls~?u~ed~.) 

A PS‘I’N (public switched telephone networkj3 is a traditional telephoiie network that 

eonnccts up telephones at home. businesses, md consists of a number of local telephone 

exchanges along with ~i~te~ational and Iong distance exchanges. (Chatlg, Tr, at 42&:9- 17; 

CDX-3.) A cellular network is a mobile phone network that most people in the field of art 

consider to be pal-& of the telephone network. (Chatig, Tr. at 428:18-2S; CDX-3.) (CPFF 36,37 

(undisputed) .) 

A Z3BX is a telephone switching system that is usually privately controlled by a business. 

(JX-29C (Tidwell Depo.) at 79: 13- 16.) It is a c#mb~natio~~ of hardware and software. (SX-29C 

(Tidwell Depo.) at 802-4.) and is connected to the PSTN. (Charig, Tr. at 428:4-L6,429:9-10; 

CDX-3.) (CPW 38-40 (un~jsp~tcd~.) 

At a high-level, a computer network, as it exists today and as it existed at the time of the 

See JX-1 at 11-45. 2 

_I 
invetitions in issue, generally consists of a computer server and a cornputer terminal. (Chang. T'r. 

at 42922-2; CDX-4.) Thc way computers commu~ilc~te is through digital data, typically in 

binaries rzeros and ones] and the computers co~~~nicate hy exchanging packets ~so~eti~es 

called cell or frames in the industry) back and forth. (Chang. TI-. at 430:2-7,21-23; CDX-4.) 

Typically, a packet contains three major components: a packet has a header, a trailer. and a data 

payload in the middle. ICliang, Tr, at 430:8-20; CDX-4.) The header of a packet typically 

contains addressing information about the packet's deslrnation. (Chang, Tr. at 430:8-20; CDX-4.) 

The trailer of a packet typically pr-ovides information about integrity of the data, (Chang, Tr. at 

430:X-20; CDX-4: CVFF 4 1? 42,4446 ~undis~~~i~ed).) 

The actual data that is being transferred back and forth between various computing 

devices is called a data payload and is Iocated in the middie of the packet. (Chang, Tr. at 

430:8-20: CDX-4.) Sending a message a packet at a time ovcr the network is much like sending 

a letter page by page in individual ewelops, instead of having the pages stapled together and 

sending all the pages of the letter at one time. (Chang. Tr, tit 429:22-43023; CDX-4; CPEF 47, 

48 (undisp~ted~.) 

Computers com~un~c~te usingcertain protocols. (Chang. Tr. at 430:24-43 1 : I; CDX-4.) 

A protocol typieally refers to an agre~~ient between two computing devices to co~~uni~at~ and 

allows two separate computing devices to share and exchange infomation. (Chang. Tr, at 

43 I: 1-12; CDX-4.) Computers must understand, or support. the same protocols to co~n~~nl~~te 

successfully. (Chang, Tr, at 430:24-432:8.) Protocols ;ire a very important way for various 

computing devices to coniniunic~te with each other. (C?Rang, 'Tr. at 43 1:23-432;1; CDX-4; CPFF 

49-52 (und~sput~d).) 

16 
With the adoption of digital t~~nsn~issiun over larger portions of the PSTN, the physical 

infrastructure carrying telephone conversations was able to transmit many different types of data, 

~ncludin~ computer data. image data and video. (Chang, ’TI-. at 432: 13-434: 14; CDX-5.) DSL 

(digital subscriber loop) is a way for a telephone conversation and the computer session tu take 

place at the same time via the same physical wire. (Chang, Tr, at 433: 18-25: COX-5.) OSL 

transmits digital data in the frequency band from 25 kilokem all the way to 1 megahertz, uses 

that frequency band to transfer computer data, uses the same wire tc~ transmit voice lnf~~ation 

in the 0 to kilohertz voice band. and as a result, allows a voice conversation and the computer 

data t~ans~ijssion to take place at the same time. (Chang, Tr, at 334:1-10; CRX-5: CPFF 58-59 

~und~sp~ited~.) 

An example in which a computer and the telephone networks share the same physical 

infrastructure is when two computers are connected to the computer network and yet they are 

engaged in a telephone conversation from one computer to another computer using a technology 

referred to as Voice over lP [“VoXP”], (Chang, Tr. at 43423-435:12,435:23-25; CDX-6; GPFF 

6 1 ~undisp~t~d~.) 

CDX-fi illustrates another example i ti which the computer and telephone networks share 

the same physical infrastructure. This slide illustrates two computers, labeled PC 2 on the 

Left-hand side of the diagram and another computer that’s labeled PC3 B on the right-hand side of 

the diagram. PC 2 and PC B are connected to the computer network and yet they are engaged in 

a telephotie conversation from one PC to another using a technology referred to as Voice over u) 

(“VoXP‘). IChmg, Tr. at 434:23-435: f2,435:23-25; CDX-6; CPFF 53 ~~~n~isp~ited).) 

VoXP technology was available in 1993 and would have been within the knowledge of 
one of ordinary skill. (C‘hang. Tr. at 1017:16-23: T-~~de-T~~o~son, TI., at 1645: 1-164S:ti.I When a 

packct of a VoSP call arrives at the destination, the packet is de-assembled and it IS converted 

back to analog voice format. (Charrg, TI-. at 435:14-22: CDX-6: CPFF 70, 71 (un~iisput~~i~~~ 

A telephone user interface (TUX) allows a user to interact with a unified messaging or 

other system through a scries of voice prompts, and bc able to set certain options and 

confi~u~~tionsr listen to existing options and services by voice or key-press cot~t~a~ds. 

(Chang. Tr. at 581: 19-58212; JX-3 (‘064 patent) at 1?:65-67 (describing a “tclephone interface if 

the subscriber wishes tu review and/or change the ~oi~inu~~~cat~o~~ options using a telephone 

connected to the tele~~on~-cent~c network. The com~unicaiion options may be presented in a 

sound format and the subscriber may be offered an option menu to review andlor change any 

co~~t~u~icatio~ aption setting’:”); CPFF 76 (~~ndisput~d), j 

A graphical user interface {Cux) is a graphical re~res~ntarian of the user interface for a 

iinified messaging or other system. which allows the user to enter, through a display ea, various 

options and settings on the computer. (Chang, Tr. at 5823-9; JX-3 (‘063 patent) at 11:3?-50 

(describing Fig. 3‘s graphical “user-inrerfkce fur an exerriplary computer-implemented control 

centcr, rcpresenring the visual display panel for d~~playing the comniunication options pertaining 

to a particular subscriber on a computer display screen. Through computer-i~ple~en~ed control 

center 302. the user rnay quickly and conveniently review the co~m~inicatiun option scetings 

associated with the various services and make changes thereto’.).) (CPW 77 (~~djsp~ted~.~ 

V. Person OE Ordinary Skill In The Art 

With respect to the IAfick and O’Neal patents, a person or ordinary skill in the art would 

have a Bachelor’s degree in electrical engrneeering involving computer science with a ~~inin~u~ 

18 
of three years of experience in designing and i~pl~mentlri~ compiiter telephony systems. (Chang, 

Tr. at 407, 41(1.) 

CIaim jnt~~~i~~t~tio~~ is a question of law. Plclarkman v. Westview Instruments, Inc.,52 F.3d 

967,979 (Fed. Cir. 1995) (en banc), aff‘d, 5 17 U.S. 370 ([ 1996) ~Markr~~n~; see Cvbor Coqx v, 

FAS Techs., Inc., 138 F.3d 1445, 1455 (Fed. Cir. 1998). In construing claims, a court should 

look to intrinsic evidence consisting of the language of the claims, the specification and the 

prosecution history as it “is the most significant source of the legally operative me~~~i~~ of 

disputed claim language.” Vitronics Cop. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996) (Vitronics); see Bell AtI. Network Servs.. Xnc. v. Covad Commc’n. Group, Inc., 262 F.3d 

1258, 1267 (Fed. Cir. 2001). 

The claims themselves “provide substantial guidance as to the meaning of particular 

claim terns.” mWH Corp., 415 F.3d 1303, 1314 (Fcd. Cir. 2005) Cjhillips), citing 

Vitronics, 90 F.3d at 1582. It is essential to consider a claim as a whole when construing each 

term, because the context in which a term is uscd in a claim “can be highly instrtictivc.’+ In 

construing claims, the administra~iv~ Law judge should first Look “to the words of the claims 

themselves . . , to define the scope of the patented xnvention.” Vitronics., 90 F.3d at 1582; 

generally Phillips, 415 F,3d at 1312-13. Claim terms ‘+are generally given their ordinary and 

accustomed melining,” Vitronics, 90 F.3d at 1582. 

111 Pause Tectznolorry, Inc. v. TIVD, lnc., 419 F.3d 1324 ([Fed. Cir, 2005) the court stated: 

. . . in clarifying the meaning of claim terns, courts arc free to use 

words that do not appear in the claim so long as +‘the resulting 

claim interpretation . . , accordrs] with the words chosen by the 
patentee to spike out the boL~~id~i-~ of‘ the ctamed property.”’ C:f. 

Renistiaw PLC v. Mamoss Societi r>cr Azio-tii, 158 F.3d 1243, 

1248 (Ped. Cir. 1998) (noting thal “[wjithout any claim term 

susceptible to cIa~~~catj~n . , . thcre is no Iegitiinatc way to iiaii-ow 

the property righf”). 

- ‘Id. at 1333. Also, claim terms arc presumed to tic used consistently throughout the patent, such 

that the usage of the term in one claim can oftcn il~iin~~nate the meaning of the same term in other 

claims. Research Plastics, Xnc. v. Federal Packaging Corn. 421 F.3d 1290, 129.5 (Fed. Gir. 2005) 

(Research Plastics). 

‘The ordinary meaning uf a claim rem may be determitied by reviewing a variety of 

sources, which may include the claims themselves, dictionaries and treatises, and the wntten 

description, the drawings and the prosecution history. Ferauson Beaureaarajic Controls v. 

Mega Sys.. L,I,C, 350 F.3d 1327, 1338 (Fed. Cir. 2003). The use of a dictionary, however, may 

extend patent protection beyond what should properly be afforded by a patent. Also. there is nu 

guarantee that a term is used in the same way in a treatise as it would be by a patentee. m, 

415 F.3d at 1322. Moreover, the pre~u~nption of oixhary meaning will be “‘rebutted if the 

inventor has disavowed or disclaimed scope of coverage, by using words or expressions of 

manifest exclusion or restriction, representing a clear disavowal of claim scope,” ACTV, Inc. v. 

Walt Disnev Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003). 

The prcscnee of a specific ~i~j~tjon in il ~e~endent claim raises a ~~resumptio~ that the 

limitatmi is not present in the ~ndependent claim, Phillips, 415 F.3d at 1315. This presurn~ti~)~ 

is especially strong when thc only difference between the independent and dependant claims is 

the ~i~i~~tion in dispute, SunRace Roots Enter. Go.. Ltd. v. SRAM Cog?., 336 F.3d 1298, 1303 

(Fed. Cir. 2003), Moreover, “claim dif~erent~~~tion takes un relevance in the context of a claim 
construction that would rcndcr ad~iti~nal, or cti-ffcr-cnt. Ianguage in another lnde~en~e~~t claim 

superfluous.” AllVoxce ~o~~~ ~on~~c’ns. Inc., 5004 F.3d 1236,3007 U.S, 

App. I.,EXIS 23949, at %+23 (Fed. Cir. 2007). In addition a claini co~sti~iction that gives meaning 

to all the tcrms of a claim is preferred over one that does not do so. See Mesck & Co. v. Teva 

Pharms. USA, Xnc., 395 F.36 1364, 1372 [Fed. Cir.), cett. denied, 546 U.S. 972 (200Sj (Mcrck): 

AIza Corn+ v. Mylan Lahs. Inc.. 391 F.3d 1365, 1370 (Fed. Cir. 2004) (b) (affirming the 

distmt court’s rejection of both parties’ claim cotistructmn where those const~~tlon~ meant that 

“the inclusion of the word ‘base’ in the claims would be redundant”). Differences between the 

claims are helpful in ~nderstanding the meaning of claim tcrms. .415 F.3d at 1314, 

The preamble of a claim may be significant in interpreting a claim. Thus, -’a claim 

preamble has the import that the claim as a whole suggests for it.” Bell Cornmc’ns Research, Inc. 

Y. Vitalink Commc’ns Cm. 55 F,3d 615,620, 34 U.S.P.Q.2d 1816, 1820 (Feci. Cir. 1995). Xf 

said preamble, when read in the context of ai entire claim, recites limitations of the claim, or if 

the claim preamble is “necessary to give life, meaning, and vitality’’ to the claim, theti the claim 

preamble should be construed as if in the balance of the claim, , 187 F.2d 150, 

152 (CCPA 1951 j (Krona); see also Row v. Dror, 1 L:! F.3d 473,478 (Fed. Cir. 1997) (Rowej; 

.868 F.2d 1251,1257 (Fed. Cir. 1989) 

(Coming Glass). Indeed, when discussing the “claim” in such a circumstance, there is no 

~i~aningfu~ distinction to he drawn between the claim preamble and the rest of the claim, for only 

together do they comprise the “‘claim.” If, however. the body of the claim fully and intrinsically 

sets forth the complete invention, including all of its limitations, and the preamble offers no 

distinct definition of any of the claimed invention’s limitations, but rattier merely states, for 

21 
example, the purpose or inreiided use of the invention, then the preamble miry have no 

significance to claim con~tI-u~tion because it- cannot be said to constitute or explain a claim 

limitation. See Rowe, 112 F.Jd at 478: Clorninlr; Glass, 868 F.2d at 1257: m, I87 F.2d at 153. 

In Pitiicy Bo~tes lnc. v. Wewlctt-Packard Co., I82 F.3d 1298, 1306 (Fed. Cir. 1999) (Fjtney 

Bows), the preamble statement that the patent claimed a method of or appa~tus for “producing 

on a photoreceptor an image of gcncrated shapes made up of spots” was not merely a statement 

describing the invention’s intended field of use. instead, the Court found that said statement was 

i~ti~atel~ meshed with the ensuing language in the claim; and that, for example, both 

inde~en~~nt claim concluded with the clause “whereby the appearance of smoothed edges are 

given to the generated shapes,” Id, Because this was the first appearrince in the claim body of the 

term “generated shapes,” the CouiT found that the term could only be understood in the context of 

the preamble state~ent “producing on a photoreceptor an image of generated shapes made up of 

spots.” Id. SimiIarly. the Court found that the tern ”spots” was initially used in the preamble to 

refer to the elements that made up he image of generated shapes that were produced on the 

ph~torecept~r~ that the term ‘‘spots” then appeared twice in each of the independent claims; and 

that the claim tern “spots” referred to the coi~p~neIits that together made up the images of 

generated shapes on the photorcceptor and was only discernible from the claim prem~ble. 

Court concluded that in such a case. it was essential that the preamble and the remainder of the 

claim be construed a% one unified and internally consistent recit~tiun of the claimed invention. & 

The specification of a patent ”acts as a dictionary” both “when it expressly defines terns 

used in the claims” and ’-when it defines ternis by implication.” Vitronics, 90 F.3d at 1582. For 

example, the specification “may define claim tems by implication such that the meaning may be 

22 
found in or ascertaincd by a reading of the parcnt documents.” Phillips, 315 F.3d at 1323. quoting 

Iredto Access, Inc. v. Echostar Satellite Coiv., 353 F.3d 1295. 1380 (Fed. Cir. 3004). 

Smporrantly, the person of ordinary skill in the art. is deemed to read the claim term not onXp in 

the context of the pirtic&x= claim in which the disputed term appears, but in thc context of the 

entire patent, including the specification. Phillips, 41 5 F.3d at 13 14. 

A patentee may deviate from the conventional nicaning of a partic1.11~ claim term by 

making the intended meaning of a particular claim term clear (I) in the specification or (2) during 

the patent’s prosecution history. ~n~. v. Aeroauip Corn., 733 F.2d 881, 389 (Fed, 

Gir. 1984). If using a definition that is contrary to the definition given by those of ordinary skill 

in the art. however, the patentee’s specification must co~imuniGate adeliberate and clear 

preference for the alternate dcfinition. ,3S1 F,3d 1364,1368 

(Fed. Cir. 2003), citing Apple ~o~p~iters. Xnc. v, Articulate Svs., Inc., 234 F.3d 14,21 n.S (Fed, 

Cir. 2000). In ascribing an alternative definition than the ordinary meaning, the intrinsic 

evidence must “clearly set forth” or ‘“clearly redefine” a claim term so as to put one reasonably 

skilled in the art an notice that the patentee intended to so redefine the ciaim term. Bell Atl. 

Network Servs.. Inc. v. Oovad Communs. Group, Inc,, 263, F.3d 1258, 1268 (Fed. Cir, 200t). 

The prosecution history, including “the prior art cited,” is “parr of thc ‘intrinsic 

evidence.”’ Phillips. 415 F3d at 1317. The prosecution history “provides evidence of how the 

inventor and the PTO understood the patent.” Id. Thus, the prosccution history can often inform 

the meaning of the claim language by det~on~t~at~t~g hew an inventor understood the invention 

and whether the inventor limited the invention in the course of prosecution, making the claim 

scope narrower than it would be otherwise. Vitronics, (30 F.3d at 1582-83; also Chime v. 
PPC;. 4.02 F.3d 1371, 11384 Fed. Cir. 3005) (“The purpose of consulting the 

prosecution history in construing a claim is to exclude any ~nte~retation that was d~s~~ai~ed 

during prosecution”). quoting ZMI Corn. v. Cardiac Resuscitator COT., 834 F.2d 1576, 1550 

(Fed. Cir. 1968); Southwall Techs.. Xnc. v- Cardinal If; Co., F.3d 5570, 1576 (Fed. Cir. 1995); 

- SCC ,503 F.3d 1295, 1306 (Fed. Cir. 2007), 

citing Microsoft ~o~~~., Inc., 357 F.3d 1340, 1350 (Fed. Cir-. 2004) (“We have 

held that a statenleiit made by the patentee durrng prosecution history of a patent in the same 

family as the patent-in-suit can operate as a disclaimer.”) The prosecution history includes ariy 

r~e~~min~t~on of the patent. Intennatic Inc. v. Lamson Rr. Sessions Co,, 273 F.3d 1355, 1367 

(Fed. Crr. 2001). 

Xn addition !o the intrinsic evidence, the administrative law judge may consider extrinsic 

evidence when interpreting the claims. Extrinsic eviderice consists of all evideiice external to the 

patent and the prosecution history, including inventor tcsti~~~y and expert. testimony. This 

extrinsic evicknce may he helpful in explaining scientific principles, the meaning of technical 

terms, and terms of art. ,522 F.3d at 980, However, 

“[eJxtrinsic evidence is to be used for the court’s ~nd~rstandin~ of the patent, not for the pirpose 

of varying or contradicting the terms of the claims.” Markrnan, 52 F.3d at 95 1. Also, the Federal 

Vitronics, 90 F.3d at 1583; 

Circuit has viewed extrinsic evidence in general as less reliable ttian the patent and its 

prosecution history in ~~te~~n~n€ how to readcfaim terms. Phillip, 41s F.3d at 1318, In 

addition, while extrinsic evidence may be useful, it is unlikely to resuIt in a relxable interpretation 

of patent claim scope unless considered in the contat of the intrinsic evidence. Phillips, 41 5 

F.3d at 13 19. 

24 
. . . as explained in Phillips, Nystrom is not entitled lo a claim 

construction divorced from the context of the written dcscription 

and prosectition history, The written ~escri~tion ad prosecution 

history consistently use the tern “board” to refer to wood decking 

xnater-ials cut from a log. Nystrom argues repeatedly that thcrc is 

no ci~savowal of scope of the writZen descnption or prosecution 

history. Nystrom’s argument 1s misplaced. Phi Iligs. 4 15 F.3d at 

I32 L (“The problem is that if the district court starts with the broad 

dictionary definition in every case and hils to fully appreciate how 

the specification implicitly limits tiitit de~ini~~on, the error will 

systematically cause the ~o~istruc~foii of the claim to be unduly 

expansive.”). What Phillius now counsels is that in thc absence of 

soniethlng in the written descriptio11 and/or prosecut ion history to 

provide explicit or implicit notice to the public- i.e., those of 

ordinary skill in the art- that the inventor intended a disputed term 

to cover more than the ordinary and customaxy meaning revealed 

by the context of the intrinsic record, it is improper to read the term 

to encompass a broader definition simply because it nirzy be found 

in a dictionary, treatise, or uthcr extrinsic source. Id. 

L1 Id. at 1144, 1145. In Free Motion Fitness Inc. ~~ 423 F.3d 1343 (Fed. Cir. 3005), 

the Court concluded that: 

under Phillips, the nile that “a court will give a claim term the full 

range of its ordinary meaning”, Rexnord Corn. v. Laitram Corn.. 

274 F.3d 1336, 1342 (Fed.Cir. ZOOl), does not mean that the term 

wilX pre~~mptive1~ receive its broadest dictionary definition or the 

aggregate ~~rnulti~l~ dictionary definitions. Phillips. 415 F.3d at 

1320- 1722. Rather, in those circumstances, where references to 

dictionaries is appropriate, the task is to scrutinizc the intrinsic 

esidence in order to determine the most appropriate definition. 

__ Id. at 1348, L349. In Network Commerce, Inc. v. Microsoft Corn. 422 F.3d 1353 (Feci. Cir. 

ZOOS), the Corn concluded: 

As we recently reaffirmed in Phillips, “conclusory, uns~ip~~)~e~ 

assertions by experts as to the dcfinition of a claim term are not 

useful to a court.” m. 415 F.3d at 1328. Here [expt-t] 

Cooinks does iiot support his conclusiori [the “download 
~oI~poneIit” need not contain the boot prog~~ml with ary 

references to indusfiy ~~~~l~c~~~[)ns or other in~e~~e~~~~~t sour~es, 

Moreover, expert testimony at odds with the intrinsic evidence 

must he disregarded. @. (“LA] court should discount any expert 

~~~~~~ony that is clearly at odds wiih the claim ~~tisrruc~iori 

mandated by . . I the written record of the patent.” jintemal 

quotations and citation omitted). That is the case here. 

I Id, at 1361. 

Patent claims should be construed so zs to maintain thcir validity. However, that maxini 

is limited to cases in which a court concludes, after applying all the available tools of claim 

construction, that the claim is still ambiguous. Phillips, 41s I-;.% at 1327. If the only reasonable 

interpreetation r-eenders the claim invalid, then the claim should he found invalid. &, G, Rhine 

v. Casio, Iric., 183 F.3d 1342, 1345 (Fed. Cir. 1999). 

A. The tiffick ‘289 And ‘439 Patents 

The parties have agreed upon the following claim c#ns~u~tio~ for purposes of this 

investigat~o~: 

Claim Term Agrcett Upon Construction 

lists of the data structure via the lists of the data structure via the 

thereby ilpplying the user-selectable 1 criteria to the incoming call I I I 

26 
(& Order No. 18 (attached letter dated October 5,20071.) 

According to complainant. the disputed claim terms in thc Liffick ‘439 and ‘289 patents 

that need ~oi~s~r~ctlo~i by the administ~ati~~ law jud, oe are: 

“independent” (,claims 25 and 38 of the ‘439 patent); 

‘-activify of a user compute~”’ (claims 1 and 7 of the ‘289 patentj. 

(GBr at 29-30.) 

Respondent argued that otily one claim c~rlstructioiissue remajins regarding asserted 

claims 25 and 38 of the ‘439 patent which is the meaning of the term “independent.” (RBr at f 2.) 

Xt is argued that the “lone claim construction issue“ with regard to the ‘289 patent involves the 

claim limitation “monitoring activity of a user computer” (RRBr ar 8,) 

The staff argued that rhe only dispute as to any claim construction of assertcd claims 28 

and 38 uf the ‘439 patent appears to be the cons~~~Iction of the limitation callirig for “assessing a 

data structure contained within a computer netwiork that is independent of the telephone 

network.” iSRBr at 5-6,) The staff further argued that the private parties appear tu agrec that the 

only issue still in dispute with respect to the assetted claims of the ‘2289 patent is the language 

calling for “mon&ring the activity of a user computer connected to the computer network” and 

then routing calls “based 01.1 the inonitorcd activity of the user computer.” (SRBr at 8.) 

The a~mjni~trative law judge docs not u~d~rstand there~rese~i~dt~~~s of each of the 

 omp plain an^^ respondent and the staff that oi-lly one claim const~~t~o~ issue renzains regarding 

the asserted claims of the ‘439 patents. Thus. while the parties represented thdt the claim phrdse 

“current activity of the user on the computer network“ in asserted claims 3. 28 atid 38 of‘ the ‘439 

patent has an agreed upon construction of “cui-rent status of the user on the computer network,’’ 

27 
the panics in the infr~n~ei~ent and domestic industry portions of their post hearing submissions 

have put in dispute the phrase “status of a user on the computer nctwork.“ The p,Wies have also 

put into issue, in the validity portinris of said post hearing s~b~~~ss~o~s~ the claim phrase “current 

activity’* by disputing thc definition of the agreed-upon construction of “‘current status.” Thus, 

thc a~~ir~istrati~~e law judge construes, rnfra. the claim phrase “cui~ent activity of the user on the 

computer nctwork” in light oE thc parties’ stipulated construction. 

I. Claimed Phrase Involving “activity of a user computer” 

~~~p~~inant argued that its proposed construction for the term “activity” found in cach of 

claims 1 and 2 of the “239 patent is “status” whereas ALE’S proposed constr-uction litnits 

“activity” to ctnly two states, ~ “active or idle.” (CBr at 32.) It is argued that the dispute is not 

over whether “activity” means “status” but whether “activity” is Iimited to only two states, y&. 

“active 01- idle” in the context of the ‘289 patent. (GBr at 18.) 

Respondent argued that the specification of the ‘289 patent supports its construction that 

monitoring activity of a user’s computer requires dctermining whethcr thc computer is active or 

idle and that Microsoft’s proposed co~~struct~o~i rewrites the claims in issue and results in a 

system that does not solve the basic problem the inventor sought to solve in the ‘289 patent (RBr 

at 6,7.) 

The staff argued that the ptmse “monitoring activity of a user compmr connected to the 

computer ncttvork” should be constmcd to mean determining whether the user computer is 

“active or idle.” (SBr at 25.1 

The frrst consideration in construing claims is the language of the claims themselves. 

Referring to said claims in issue, each of the asse~ed claims 1 and 7 of the ‘389 patent exdicitlly 

28 
refers to the activity of a user computer and not to the status or activity of il user. Thus claim I 

reads in part: 

In a system that includes a te~~pl~one network and a computer 

nctwork with one or more users, wherein each user is connected 

through a user computer the computer network and is logically 

coniiccted through the computer network to the telephone 

network, a method of determining when to establish teleplzone 

co~n~n~ini~atiun between two parties, at least one of whom is a 

user coiinected to said computer network ccimprising: 

at the computer tzetwnrk, ~onito~~f a user corn~uter 

connected to the computer network and associzted with the 

second party; 

(JX-2 at 18:36-SO (emphasis added).) Claim 7 rcads in part: 

In a system that includes a telephone network and a computer 

network with one or more users, arid wherein each user is 

connected through a user computer to the computer network and is 

logically connected through the computer network to thc tclephanc 

network, a computer program product comprising: 

at the computer network, monitnrinE activity of a u~~ 

connected to the computer network and associated with the second 

pasty; 

(TX-2 at 19:20-37 (emphasis added).) 

Referring to the abstract of the ‘289 patent, the patentee dis~in~~ished t3etween routing 

caIls based on the user”s status and routing calls based on mon~to~~~ the activity of a user‘s 

computer: 
the caller and cake and stored on the com~uter network. A 

component of the telephone system, such as a central office switch, 

accesses the caller and callee call processing criteria. The system 

evalriates thc call processrng criteria and. when conditions for both 

caller and cake are naef, the telephone systcm initiates a telcphone 

call between the caller and cailee- The call processing criteria may 

include accepting all calls, no calls, or calls only from specified 

partics. In a~ditioi~, thecall processing criteria can vary in 

%3xmkmx with the time of day or an ~ndi~i~~~i~~’s personal 

preferences, or status, such as when an in~i~/idual is in a meeting. 

computer status as idle or ac-d to the, computcr 

network as part of the call ~r~riteri~, 

(JX-2, abstract (emphasis addcd).) This distinction is further confirmed by the “‘third paragraph’ 

of the SUMMARY OF ‘THE I~~E~TI~N section which reads: 

Both the caller and callec can specify user-sclecttihle call 

processing criteria. The potential cake can sp&~call processing 

criteria for all incorning calls, such as such as providing a list of 

individuals from whom the person will accept calls, a list of 

individuals from whom the person will not accept calls, or 

conditional criteria, such as accepting or blocking calls during 

certain times of &ay or during certain periods of activity, such as 

when the user may be otherwise occupied and unwilling to accept 

an incoming call. 

~~~)nitored and the sta~us of the comnuter as active 

or idle may be reported to the computer network. The caller 

indicates a desire to establish a communic~tion link with the callee. 

The cornpuler network accesses the caller’s call processing critcria 

and the callee‘s call processing criteria, The call processing criteria 

for both the caller and callee are analyzed and when all conditions 

arc met, a telephone con~~unjca~io~ link is e~tabl~shed between an 

originating telephone associated with the caller and a destina~i~n 

telephone associated with the callee. 

(JX-2 at 27-26 (emphasis added).) In addition, the distinction between call routing based on the 

activi~y 01- status of a user and call routing based on the activity or status of n user computer is 

30 
repeated in the DETAILED D~~~~~

OF THE 1~~~E~T~~~. Thus it is stated: 

The operation of the system 1 

with both the o~i~in~~in~ telephone 102 and the destination 

~~lephon~ 104 [loo, 102 and 104 as in e.g. Fig. 23 is l lust rated in 

the &lowchait of FIG. 10 whcre, at a start 250, it is assumed that the 

caller and cake both have data in their respective aff~liation lists. 

As previously noted, the a~~iIj~tio~ list 150 for each ~~~~ivi~~~Ia1 may 

comprise separate sublists, such as illustrated in FIG. 5, or a single 

data stTxetiirc containing call processing criteria, such as allowing 

or blocking indivdual calls (see FIG. 7) or establishing conditional 

criteria, such as time resttictions, current iiser status (e.g.. in a 

meeting], or the current status of the user’s computer (e.%., the idle 

or active status of the callce como,utcr 154). Furthermore, as 

previously noted, user status can be auto~ati~~~Ily provided to the 

affiliatioii list 150 by a computerized schedule program. 

to establish a c~~~un~cation link 

As noted above, the system IO0 can ap-U processing rules 

derived from any sotircc. such as the ctirrent status Se-g.. idle or 

-the cake computer 154 or the caller computer, 184. the 

presence or absence on one of the sublists in FIG. 5 (e.g,. the block 

list 164j, the status of one partxrt the allowed status of the 

caller), cake or cnllcr status data provided by computerized 

scheclultng systems, or the like. 

(JX-2 at lG:S-22, 17:59-66 (emphasis added).) Hence, the specification of the ’259 patent 

defines the status or actrvity of the user and the status or activity of the iiser computer as two 

different things. Moreover, it equates computer status to “idle or active.” 

Other portions of thc specification of the ‘289 patent that use the phrase “idle or active” 

to deseribc the computer activity that is being monitored are: 

In. other ~rnp~c~~nt~ti~i~s, such as with tl home computer, only a 

single teleplione line may serve the function of both the 

conln~lInica~i~n link110 and the co~~unicat~oi~ link 132. tinder 

these circumstances, thc caller may use the caller computer 154 to 

indicate a desire to establish the telephone co~~~rn~inica~~or~ link and 

then must terminate the co~~~unic~ti~~~ link 132 so that the centra1 

31 
offke switch may generate thc a~p~~pi~at~ sigi-lais on thc 

~oni~unicati~~i link 1 10 at a point in time when the calk call 

processing criteria and the caller call processing criteria are both 

met. It should be further noted that this ~~n~w~ll 

preclude the use of the status {i.e., idle or active) of the caller 

Si~jlar~~. the c~esti~atio~ tele~~i~ne 104 and the czdlee computer 

154 tnay be connected to the centml officc swtctr I16 and the 

Internet J 34 via separrzte communic;1ti~n links (1.e.. the 

co~~~~ni~ation link 120 and the c~~~nu~ica~ion link 132, 

rcspcctxvely). Zfowcvcr, thc system 100 may alsc:, be in~p~~~~nt~d 

with a single phone fine. The callee may use the callee computer 

154 and the com~~inicati~n lnk 132 to generate or edit the callcc 

call processing cnteria in the affiliation Iist 150. However, the user 

must then terminate the ~o~i~~~injcat~o~ link 133 to permit the 

ccntral office switch 1 IS to establish the ~o~~ni~~ni~at~~n link 120. 

As noted above, a single phone line precludes the usc of computer 

status tnotiitorrng ii.e., idle or~uter 154 

since the status cannot be monitored via the co~~unlcati~~n link 

132. 

For example, the caller may indicate at1 aYaiIabil~~y for a phone call 

after a ~r~d~teT-rnined time. The svstem 100 can dctcct the chans 

in the state of the caller coimuter J 84 from the idle state to the 

active state and interpret that as an indication that thc caller is now 

availablc for a telephone call. The system can apply these 

conditions ln~~~~ldua~l~ or in various co~ib~~atjo~so determine the 

~vai~ab~l~t~ of the callcr and callee, If the call does not meet the 

caller call processing criteria, the result of ciecision 264 is NO. in 

that event. the system 100 can rctum to stcp 258 to access the 

affil~at~on lists for the cake and caller, respectiveIy, and thus 

continuously monitor the callee and caIler call processing criteria 

to deterniinc an appropriate time to make ;1 phone call. 

(JX-2 at 15:47-67, 16: 1-7, 17:20-34 (emphasis added).) 

~~~~pIainant admits that the word activity “has no specific meaning in the field of the 

‘289 patent.” (SFW 82 ~~IIi~is~~itedj~~ Moreover, the issuc at hand is rial the const~~~~i~n nfthe 
Lone word “activity” but rattier the construction of the claimed phrase “nion~toriIi~ activity & 

mer computer” (cmphasis added) which phrase cotitsins the word “activity-” 

~o~~l~ina~it, in support of its ~~~u~~~it that “activity means some undefined status, relies 

on hearing testimony of its expert Chang which testimony is some five years after the issuiince of 

the ‘289 patent. & COSFF 78, CRSIW&-A, CRSFF 78-B.) Here, however, the claims xn issue 

of the ‘289 patent including the claimed phrase ‘~~n~~iitorln~ activity of a user computer 

connected to the computer network,” do not refer to the status OT activity of the user but explicitly 

refer tu the activity of thc user computer. (JX-2 at 18:49-50. l9:36-37.) Thus tu a person of 

ordinary skill in the art, said claims themselves indicate that the status or activity of 3 user in said 

claimed phrase is not covered. Instead, the patentee dcterniined to limit the claimed phrase to 

“monitoring activity of a user comuuter.*’ (emphasis added). Set Vitronics and Phillips, supra 

(stressing the importance of the explicit lsngnagc of claims). 

Regarding co~~~l~in~nt’s contention that the “activity*+ limitations oF the ’439 and ‘289 

patent refer to the same thing, i.C., the status of thc user on the computer network, the ‘439 

patent and the ‘289 patent do not use the same terms. Thus the ‘439 patent specifically refers 

to thc “activity of the user on the computer network’ while the ‘289 patent refers to the 

“activitv of a user commter connected to the coniputer network.” (Commre JX-1 at 14:25-26, 

17:3-4, 18:15-16 with JX-2 at 18:49-50, 1936-37.) In addition, although the ‘289 patent is 

similar to the ‘439 patent and has the same named inventor as the ”339 patent, the specifications 

of the two patents contain s~bstanti~l differences. including live columns of discussion and a 

different abstract. Moreover, the suI~~~~r~ of invention section added to the Later ftled ’259 

33 
sp~cif~cat~on4 indicates hoM the monitorcd activity of‘ the user computer is used to help 

determine when the called pat-ty is available for a call. 

said sumniaty of invention section that uses the phrase “status of the computer as active idle‘’ 

which is not found in the summary of invention section of the ‘439 patent.) 

“third psragraph,”’as cited supra of 

~omp~a~t~ant refcrwd to the use in the ‘289 patent specification of the illustrative 

conjunction ‘‘a7’’ to connect “idle or active” to the word “status,-’ citing JX-2 at 16: 18-19, 

1759-62 (CBr at 341, and argued that examples of other “activity,” presumably covered in the 

claimed phrase .‘~o~ito~n~ activily of a user computer corrnected to the computer network,”’ 

include ‘~~~nw~~li~i~ to accept,” “do not disturb,” ”occupied,” “busy,” “caletidar-based activity” 

and “being in a meeting.” (& CRRFF TV A.12- CRRW IV A. I, 2-P and GRRW IV A. 1.2-X.) 

However, nowhere in the ‘289 patent does the ad~inistrative law judge find those examples 

associated with the user computer. To the contrary, the abstract and summary of the invention 

specifically equate user’s computer activity only to the “computer status as idle or active,” or the 

“status of the computer as active or idle. (See supra.) 

Based on the foregoing, the administratjve law judge interprets the claimed phrase 

.‘~~onito~ng activity of a user computer connected to the computer network” to mean 

detcrrnining whether the user computer is “active or idle.” 

2. Claimed Phrase “Independent” 

Complainant argued that claims 25 and 38 of the ‘339 patent recite “acccssing a data 

structure contained within a computer network that is jndepe~den~ of the telephone network:” 

The ‘289 application was filed on ApriI 13, $999 whik the ‘433 application was filed 4 

CII~ March 24, lW9. (JX-1, JX-3.) 

34 
that the claim ~on~t~u~~iun dispute boils down to whether the term independent=^ means that the 

computer network and teiephone network must be “logical Iy distinct” (as proposed by Micrclsoftl 

cir .‘physjca~l~ distinct or separate” (as proposed by ALE); that according to ~~cr0s~~t.s expert 

Chang, the term “rndependent” denotes a “logical” differetxe between the computer and 

telephone networks, not a physical separation between the two networks; that Itificrosoft’s 

proposed construction IS based on the plain meaning oF the tein “itic~~pencieiit.“ which is simply 

“not dependent or contingent upon something else for exisfence, operation, etc.”; and that the 

‘439 patent specification further siipports Microsoft‘s position that the computer network and 

telephone network are not required to he physically separate. (CBr at 30-32. j 

Respondent argued that the claim term “independent” docs not appear in claim 1 of the 

“439 patent, which only recites a system with a telephone network and a computer network, md 

does not require that these two networks be independent; that in contrast, claim 28 and claim 38 

of the ’289 patent both specify that ttie teleptione network and the computer network must be 

independent by reciting “a data structure contained within a computer network that is 

independent of the telephone network,” and thus, in addition to reciting two distinct networks, 

this language further requires that the networks must be “independent;” and hence that a person 

of ordinary skill in the art would understand the inclusion of the term ~nc~e~~en~~ent in the clams 

to be significant, (RBr at 104-105.) 

The staff is of the view that the intrinsic evidence indicates that the limitation 

‘~~ndep~~~~~~~~ of the telephone ~~etu~ork” should be construed to mean “accessing a data 

structure in the computer network that is physically separate from the teleptione network.*’ 

{SBf at 25.) The stafl‘s proposed construction howevcr does not: require that the telephone 
network arid computer network be completely scpmatc but rather that the data striicttrrc he on 3 

part of the computer nctwcxk that is p~~s~cal~y separate korn the telephone network (SRRr at 

8-9.) It is argued that ~on~~~ainant’s contention that ”1 ndeperident” is construed only as 

“logically independent” means effectively nothing, pointing to complainant’s expert Chmg’s 

testimony that the word independent “just emphasizes the logical separation betwceri the two 

networks”, citing TI-. at 1020. Moreovcr, thc sraff bclieves that all of the accuscd products, the 

domestic industry products, and the cited prior art references satisfy the phrase in issue. (SBr at 

20-1; SRBr at 7,) 

As found the first consideration in construing claims is the language of the claims 

themselves. Here, independent claim 1 of the *439 patent requires a computer network and a 

telephone network, and states “a data structure contained within a computer network to store 

user-selectable cgteria far call processing.” (JX-1 at 14:18-19,) Ctaim 1 does not explicitly state 

that the data structure contained within 3 computer network is independent of the telephoiie 

network. Independent claims 28 and 38. however, do add an additional requirement, y&. “a & 

structure contained within “a computer network that is ~~~c~cndent of the telephone network to 

retrieve user-selectable criteria for call prcocessing stored within the data structure.” (JX-1 at 

16:64-67, 18:8-l? (emphasis added).) Hence, thc languagc of inde~~nden~ claims 28 and 38 

require explicitly that the data structure be independent of the teIep~~one ntwork. The 

administrative law judge finds that construing the claimcd term ~~ind~~ndent” in the cIaimed 

phrase “accessing a data structure contained within a computer network that is ~ of the 

telephone network to retrieve user-selectabk criteria for call processing stored within the data 

structure” (enzphasis added) of claims 23 and 38 requires accessing a & - in the 

34 
computer nctwork that is physically separarc from the telephone network which gives meaning to 

the term ~‘iI~~epen~ent.~’ Otherwise, he finds thai the claimed word “inde~e~~dent” superlluous, 

r~dun~a€it andrneaninglcss. See Mer& and & cited supra. Hie further tjnds that said 

requirement is supported by both the plain meming of the word ‘bindependent” and by the 

specification of the ’439 patent. The word “independent” by definition meam not dependent 

upon something elsc for existcnce. a, Random Housae Diem 676 (rev- ed. 1982) 

(“4. not dependent or contingent upon something else for existence, operation, etc.”); Webster’s 

1148 (2002) (“not reqtming or relying on something clse (as for 

existence, operation, efficiency)”). 

Referring to the specificafion, the specification makes clear that there are physically 

separate computer and telephone networks, and that the required data structures are on parts of 

the system that are p~ys~c~l~y pat‘t of the computer network. Thus even though the specification 

of the ‘439 patent indicates that the “net~rjork link 156” may be a single telephone 

~orn~uni~aLi~~ link, using the modern to communicate with the Internet 134 and thus a sharing 

of phone lines, see JX-1, at 636-38, it shows two sepamte systems that compnse the computer 

network (the internet) and the telephone network (the local and long distance exchanges), & 

JX-I. FIGS. 2, 3 and 4,) 

In the emt~o~~~~ents descr-ibed in the ‘439 patent, the “data structure.” which the phrase in 

issrrc specifically refers to, is entirely located on the internet. Thus the abstract of the ‘439 patent 

reads: 

A telecoi~~uni~at~~t~ system combines telephone technology and 

fnternet technology to establish one or rnorc user-specified 

affiliation lists. The affiliation lists xe stored on the Internet and 

37 
arc accessible by the iiser and by the tc~~communication portion of 

the system. The afliliation lists are used to process incoming calls 

to the user’s desti~ation -telephone number, A centrid office switch 

receives the call being directed to t he ~estina~~on tele~~~o~~~ nuxnher 

and uses a com~iunicati(3n link with ttie Internet to access the 

user’s affiliation lists. The incoming call is processed in 

accordance with the user-specified rules in the affiliation lists. Thc 

user may accept all incoming calls, no incoming calls, or incoming 

calls only from specified parttles. The call processing rules may be 

readily edited by the user and can also include alternative call 

processing rules that vary in accordance with the time of day or 

with the user’s personal desires 

(JX- 1, abstract (emphasis added),) Moreover, under the subheading S~M~ARY OF THE 

A system to specify nser-selcctablc criteria for call processing is 

implei~~nted on a cunven~iona1 telephone system, siich as a public 

switched telephone network (PSTN). The user-specified call 

processing criteria is stored on a network that is accessible by the 

user for data entry andlor editing, 2nd is also accessible by the 

PSTM to determine whether c;dl processing criteria exists for [he 

particular caller. The Internet provides a~a~l~ data 

structtire for storare of the user-selectable call criteria. 

The user can establish 3 database stored on the Internet in 

association with the user’s telenhone number and indicating the 

user-selectable call processing cxitcria for one or more notentla1 

callers. 

The system may be readily in~p~e~nen~ed on current telephone 

systems with no significanf modi€ications. For example. the system 

may apply the user-specified call processing critena at the central 

office switch to which the destination telephone is coupled. All call 

processing prior to atival at that central office switch is performed 

in accordance with ~~n~fenlioi~~~l ~eie~ommii~iicatiun techniques 

arid stanciards. When a call ani ves at the central office switch 

coupled to the dest~nat~(3n relephone, the central office switch does 

not imrii~diat~~y establish a ~~~rnut~1catio~ link with the 

destination telephone, but acccsses the uscr-specified call 

processing critena on the Internet and applies the call processing 

38 
critena. If the call is allowed, ttic central office switch establishes a 

~o~in1~inication Iinkwith the destination teleph~~~~ in a 

conventional fashion to complete the teIg~ho~e call. If the call is 

not allowxl. the central officc switch will not process the call, and 

may gcnernte a busy signal to indicate that the user is unavailable. 

(JX-1 at 1 :44:55-2:8-25 {emphasis added).) in addition. under the suhlieading DETAILED 

~~SCRI~~~U~ OF THE INVENT~O~, the‘439 patent indicates that the data ~t1-~~2t1re is simply 

an ordinary computer database it% any of a wide vxktg, of forms. Thus the ‘439 patent reads: 

FIG. 6 illustrates sample d3ta entries in the allow list 166. The 

allow list 166 may include data, such as a name, Tnternet subscriber 

name, and one or more phone numbers associated with the 

individual data entry. ft should be noted that the calling party need 

not have an hiternet subscriber name for proper operation of the 

system 100. That is, the central office switch 116 accesses the 

allow list 166 utilizing thc calling party number and need not rely 

on any email addresses or other Internet subscriber i~e~i~~~c~~io~ 

for proper operation. The allow list 166 may also include an emnil 

alias in addition to or in place of the Internet subscriber name. 

Some Internet subscribers prefer to “chat’. with other subscribers 

utilizing an alias nither thrtn their actual lnternet subscriber name. 

The data ot’ FIG. 4 illustrates one possible embo~~~~~t for the 

allow list 166, H owewr, thosc ski Iled in the art can amreciate that 

the allow Iist 166 may tVrJically be a Dart of a large database (not 

s~o~ReI-a~i~n is waknown in the ai$, and need not 

 eater detail herein. The database or other form of 

the forward list 160 may be satisfactorily i~i~~~e~~n~e~ usiiig any 

known data structure for storage of data. For example, the various 

lists (e.g., the allow list 166, Zhe reverse list 162, the block list I64 

and the allow list 1661 may all be integrated within a single 

database structure, The present 111~7eiiti~n is not limited by the 

specific structure of the ~~~~i~~atl~n list 150 nor by the form or 

format of data contained sherein. 

(SX-I at 955-67. 1’31-14 (emphasis added).) Hence, as seen From the foregoing, the data 

structure is nut physically part of the klephone network 

At the hearing complair~ant’s expeg Chang was quer-ied about support for c~in~lai~ant’s 
proposal that the daimcd term ~.ind~peIiden~.’ as found in claims 25 and 38 means “logically 

distinct-”’ ‘~‘hus hang testified: 

Q. We haw just e~~~~lished claim 1 requires a coniputer network 

and a telephone network, coil-cct? 

A, Claim I of ‘439 you are rcfemng to, right. Fvfr. Lloyd? 

Q. conect. 

A. Thank you. Yes. 

Q. 

of the telephone network, conlect? 

And claim 28 requires a computer nctwork that is independent 

A. That’s the claim languagc, yeah. 

Q. So what does the word i~de~~e~~dent add to claim X? 

A. 

two networks in claim 28. 

X think it iust emphasizes :he logical separation between the 

Q. Are the two netwctrks going to be lonically separate in claim 

- f? 

A. They can be. 

Q. Well, will they bc? 

A. 

the computer network 2nd made referenee to the telephone 

network. They can share the same physical infrastru~~ure. They 

can be largelv indevendent. 

It depends on the context. X Mean, claim I made reference to 

Q. 

telephone network are no< logically independent? 

Are there situations where the computer network and 

5 

- The terms “logically,” and “‘logically distinct” are not found in the ‘439 patent. 

Morever, the a~mit~~s~~~t~~~e Iaw judge did not find Chang’s testimoriy at the hearing helpful in 

arriving at a defkition for said terms which a perscm of ordinary skill in the art would understand 

at the filing date of fhe ‘4311 patent. 
A. 

dependent on each other'? 

Are not ~o~~c~i~y ~n~~e~en~~ent? You Inem that mcr-ms they arc 

Q. 

rctllly define it for yoii. 

hgically inde~~dent. is your. choice of words. so Z can't 

A. Could you repeat the question, please? 

Q. 

the computer network are not logically inde~endent'~ 

Surc, Are there situations where the telephone network and 

A. 

would be my interpretation. 

That means they're logically dependent on each other. That 

JUDGE L~~K~R~~ Go ahead. 

MK, LLOYD: I will move on as you requested. 

BY m. LLOYD: 

Q. 

telephone network md the computer network are not loeically 

in &pen dent? 

In the real world then, where is there a system where the 

A. 

de-sendent, that would bc my ii~~~~~~.etat~o~~. 

Are not lo~icallv indeoendent, rneaninE th~~ 

Q. Clkav. Using that jnte~~-eta~j~n. 

A. I think that that. is a desimer's choice. I mean, the designer of 

~o~p~te~ networks and telcsystem atid eelenhone network coiild choose todes^ 

where thev are lorrically dependent. 

Q. 

logically dependent in that case? 

Maybe It will ask it this way, Doctor. What do you mean by 

A. 

f~i~~t~~nalit~ of one network depends upon the cxistcncc or 

operation of the other network. 

That means that the ~~nction~li~y or delivery of the 
f7’r. at 1020-24 (emphasis added).) Chang’s test~~on~ did not address the specific requiremerit 

of ~n~e~nden~ claims 23 and 38 that requires that a&& structurc contained wthin a computer 

network be i~~e~en~ent of the telephone network. Moreover, the a~minis~r~~tive law judge finds 

Chang’s testimony confusing. For example, while on the one hand Chang testified, supra, that 

the word “independent” in claims 28 and 35 ‘:just crnphasizes the logical sepamtion between the 

two networks in claim 28.” he later testified, su~fr’a, that the designer of the computer systems and 

the computer networks aiid telephone system and telephone networks could choose to design a 

CTT sysrem where the ‘~~Linction~~ity or delivery of the functlu~~ali~~ of one network depends 

upon the existence or operation of the other network.” The latter appears 40 be something more 

than a situation which ‘;just emphasizes the logiczll separation between the two networks,” Thc 

latter thus gives support to the claim differentjati#n doctrixie, 

Based on the foregoing, the ~d~~in~strati~~ law judge finds that the limitations of claims 

28 axid 38 requiring “accessing a ~ contained within a computer network that 1s 

ind~~~n~~nt of the telephone network“ (emphasis added) would be consttved by a person of 

ordinary ski11 ixi the art at the time of filing for the ‘439 patent to mean “accessing a & 

structure in thc computer network that is physically separate from the telephone network,” 

(etnpliasis added). 

3. Claimed Phrase “current activity of thc uscr on the computcr network” 

The pzrties tiad stipulated that the claimed phrase “current activity of the user on the 

computcr networli“ found in each of claims L ~ 78 and 38 should he construed as “current status of 

the user on the computer network.” The parties did not, however, come to an agreement as to the 

meaning of the phrase that they stipulated to as it relates to rnfringernent, doinestic industry or 

42 
validity. 

~~~n~~~jn~n~ argued, regarding ‘*user status,” that: 

(CI3r at 63.) Regarding the claim word “current activity,” compl~~~nt a-guecf: 

The act of logging on does not satisfy the “ccurrent activity on a 

computer network” limitation, because it is only a pwursol- to a 

user’s activity on the computer network. [CPFF 3023 (Ghang, Tr. 

1743: 14-20); CPFF 3021-3022,3024.] The claim language makes 

this point clear by requiring that filtering depends on the ‘*current 

activity an the cornnuter network.” Since logging onto Ihe network 

necessarily means that the user not yet “uti the computer network,” 

this precursor act cannot satisfy the plain rcq~~j~.~~~~~~ of the 

claims, 

The use of the tern “current” in the ‘439 patent requires the 

activity to be the cnixerit status oF the user’s computer on the 

computer network at that moment in time, not rncrely the last 

location from which the user logged on regardless of liow distant in 

43 
time such logon event ucc~i~~cd. [JX-1 at 14:23-26.] 

~espondent argued that co~pl~ii~ant’s claim that the user’s computer is ‘“busy” when the 

user is engaged in a soft phone calI ts misplaced, as a uscr can use the computer for many other 

things, like taking notes, running progriams, or sending instant messages while the user is on the 

phone call. (RBr at 107-108.) Respondent fiir-ther argued that thcre is a difference between the 

status of being logged onto the network, as disclosed by a Chestnut patent, and the process of 

loggng on. (ROCPFF 3023.) Respondent also argued that the ‘439 patent does not use the 

phrase “at that moment in time” (SCC RRCPFF 3027.A, citing JX-I) and that nothing in the 

parties agreed-upon construction of “according to current activity of the user on the computer 

network” requires the phrase ‘*at that moment in time” (RRCPFF 3027.D.), 

The staff argued that the hct that a user is logged an and where the mer is logged in 

indicate the current status of the user on the computer network. (SRCFF 3020E.) The staff 

further argued that anything that can be rnonitcired by the computer network is status. (SRCFF 

3023 citing Chang, Tr. at 931-32) 

The ‘439 specification describes aftiliation lists in which user-selectable criteria are 

stored: 

The user (Le., the called pat-ty) can specify user-selectable call 

processing criteria for all jnco~~~ng calls,incoming calls from 

selected callers, and may fut-ther apply conditional criteria based on 

user preferenccs. For example, the user may select all calls during 

certain times of the day. calls from selected parties during other 

specified times of the day, and no calls during other times of the 

day. The user-sclectable call processing criteria niay be readily 

edited by the user and may be applied to multiple phone numbers 

associated with a particular caller. 

34 
CJX-1 at I :65-27.) ‘lhe spec~~i~at~o~i further provides the fdlowing regarding said ~~~~~lat~~

lists: 

The affil~~t~o~~ list 150 1s illustrated in greater detail in the 

functional block diagram of FIG. 5. ‘X’hc affi~iat~ott list comprises a 

series of sublists, illustrated in FIG, 3 as a forward list 160, li 

rcvcme list 162.3 block list 164, and an aIiott list 166. The 

forward list 160 contaixis a list of Internet subscribers whose 

Internet activity a user wishes to monitor. This list is sometimes 

referred to as a “buddy” list. When the user operates the user 

computer 154 on the Internet 134, the Internet controller 152 

accesses the fonvard list 160 via an affiliation list in~u~~utput 

(VO) interface 170 to determine which Internet subscribers 

contained within the fotwd list arc currently lictivc on the Internet 

134. In conventional Internet operation, the Internet controller 153 

sends a message to the user computer 154 indicating which lnternet 

Internet 134. 

The forward Iist 160 is a list of Internet subscribers whose activity 

is reported to thc user, Other Internet subscnbers may have their 

own forward list (not shown) and may monitor the Internet activity 

of the user. When the user accesses the Inteinel 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. The reverse list 162 contains a list of Internet 

subscribc~s who have placed the user in their forward list, That is, 

the reverse list 161 contains a list of Internet siibscribers who have 

placed the user in their buddy list, With the reverse list 162, the 

user can deteimine who is ~onito~i~~ his Internet activity. 

The block list 164 contains a list of Internet subscribers that the 

user does not want to monitor his Internet activity. That is, the 

tiser’s Tnternet activity will not be provided to any Internet 

subscriber contained in the block list 264. ‘l‘tius, even if a particular 

Internet subscnber has placed the user on their fonvard list, the 

presence of that p~~l~~Il~ Intcmct subscriber’s name on the block 

list I64 will ~~s~r’~ Internet activity from ~ 

to the imticular Internet subscriber, Thc use of the block list 164 

provides certain security assurances to the user that their Internet 

activity is not being monitored by any Li~des~rablc Intcrnct 

subscribers. 
The allow list 166 contains a list of Internet subscribers for whom 

the user may wish to c~n~niunicate with but whose Iri2ernet activity 

the user does not wish to ~~o~ito~. 

The system 100 combines the ca~a~i~jties of the affiliation list IS0 

with telephone switching technology to Filter iiicoining calls to the 

destination telephone 104, For example, thc user may specify that 

only calls from Internet subscribers contained in the forward list 

154 may contact the user via the destination telephone 104. 

A~te~ati\/el~~ the user may specify that a calling party whose name 

is contained in the forward list 160 or the allow list 166 may place 

a call to the ~e~tinati~n telephone 104. As will be discussed in 

greater detail below. the svstem 100 allows the user to create 

general conditional processing, such as blockiniz calls or allowcalls. 'f-fotvever, the user can ~ 

processing for individual callers cx based on the user's current 

status or m-eferenccs. 

The central office switch 116 accesses the ~~~~l~~~io~ list 150 via 

the eoniniii~icat~on link 132 and determines whether the calling 

party is in a list (e.g., the fomasd list 160) that the user wishes to 

commiin~cate with, XI' the culling party is contained within an 

"approved" list, the central office switch 116 establishes the 

~on~~~nication Link 120 and sends a ring siFal to ttic destination 

telephone 104. Thus, the user can pick up the telephone with the 

knowledge that the calling paty is an individual with whom the 

uscr wishes to communlc~te. 

Conversely, if the calling party is not contailled within an approved 

list. such as the forward list 140 or the allow list 166, the central 

office switch I I6 will not establish the co~m~nicat~~~ link 120 

with the destination telephone 104. Thus, the user will iiot be 

bot~~~e~~ by ~~n~esira~le phone calls, In onc embodi ment, the 

central switch office simply will not establish the c(~m~u~~i~atjon 

link 120 and the calling party will recognize that the call did riot go 

thsou~h. 

signal iIi~~~atjn~he destination telephone 104 1s busti.. In this 

alteniative embodiment,, the ~a~ 

on rhe originating telephone 102. 'Thus, the user has the abilitm 

whom the userwishesto communicate. 

It should be noted that- the affjliation list 150 may be ~yn~~~icalIy 

46 
altered by the user to add or dclete in~l~id~als~ change i~~d~~~id~izlls 

from one list to another, or to change the call processing options 

for a particular list d~pe~~djng on the user’s preferences. For 

example, the user may want to accept zlll calls from any source at 

certain times of the day. tlnder these circumstances, the user can 

edit the allow list 166 to accept calls from any calling party. 

Alternatively, the user may still maintain the block list 164 such 

that calls will not be processed from certain s~e~~~ie~ parties even 

if the user is svilling to accept calls from any other source. Under 

othcr ~~r~u~~st~nc~s~ the user may not wish to ~ominuiilc~te with 

any individuals. In this instance, the user may indicate that all 

calling partscs are on the block list 164. Thus, the central office 

switch 1 16 will access the Internet 134 in real-time and review data 

in the alfiliation list 150 to thereby proccss incoming calls for the 

user in accordance with the rules present in the affiliation list. 

~~rth~~~~or~, the user may attach conditional status to iri~ividual 

callers or to callinn lists. Conditional s~atus~ 

fixtors, such as the time of day, current availability of the user, 

9:UO a.m.- I 1 :fX? a.m.), block calls from selected calling Darties 

during other periods of time (e.~., 12:O-l:OO p.rn.), or allow calls 

lndi~/l~uals or to one 01‘ more lists in the affiliation list 150 

(JX-1 at 757-924 (emphasis added).) Thus, the a~~~ii3~stra~~~~ law judge finds that the “439 

specification contemplates allowing the user to set certain “co~ditional processing” for ~nd~s/~~ua~ 

callers or based on the user’s status at certain times. 

In light of the foregoing, the adm~nistra&i~re law judge finds that the “status” of a user can 

consist of both mer-selected indicators based on user activity a, “conditional processing” as 

per the ‘439 specification) and the trltnsfer of data between the computer and telephone networks 

while the user is cngaged in a VoTP phone call. 

The parties have also put into issue the claim phrase “current status.” Notably, alttiough 

47 
co~~plain~~nt alleges that ttic word “cunent” as used in the “439 patent means “at that momcnt in 

time,” com~la~na~it doesnot cite to anything in the specification or prosecution history of the 

‘439 patent for support. (See senerally CBr at 145: CRBr at 125.) 

The ‘439 patent specification does not expIicitly use the phrase “current activity of the 

uscrlsubsctibers] on the computer network'. atid therc appears to be no djsclosure in thc 

specificatioti of the ‘4.39 patent that explicitly tcaches such a concept. The specification does 

refer- to the ability of the invention of the ‘439 patent to assess thc Internet activity of a subscriber 

to see if the subscriber is currently active on the Internet, but the specification does not teach 

processing a call based on this activity, (a JX-1 at 7:61-8:2,) Additionally, the ‘439 patent 

discloscs that a user can create specific conditional processing based on the user’s current status, 

but the specification never explicitly discloses whether the “Liser’s current status” includes the 

user’s status on a computer network. (See id. at 8:46-4S. j 

Turning to the prosecution history, the limitation requiring a call to be filtered based on 

the current activity of the user or subscriber was added during the prosecution of the ‘439 patent 

to overcome a prior art rejection by the United States Patent and Trademark Olfice (USPTO). 

(& JX-5 at NSAL 0567-Sc33 (Offjce Action), MSAL ~0~~~-0~~0~ (Response to Office 

Action).) In response to the Office Action of July 30, 3001, rejecting the cltlrrns of the ‘439 

patent application as anticipatcd by US. Patcnt No. 5,324,578 (“578 patent) to Brennan and as 

obvious in light of the ‘5’78 patent in view of US. Patent No. 6,005,870 (‘870 patent) to hung, 

the patent applicant remarked: 

With regard to Figures 3,a-2g, Brennan teaches that the flow 

of in~~~~atiot~ IS fjxed and is not dependent on any particular 

status or activity of the user or of the caller and that the Row of 
infori~ati~r~ is determined by the user’s re~uirements for that 

particular caller. 

Thus, the treatment of an incoming call [in Brennan] is 

~epen~e~t on a caller list that does not change. More s~~~ci€~c~~~l~, 

actions or activity of callers on a telephone network or on a 

computer network have no effect on the caller. Xist or other user 

requirements for callers. 

In contrast to Brennan. claini J as amended recites that the 

one or more Iists used in fi‘iltering an incorning call change 

according to current activity of the subscx-ibers (;.e., persons 

making the calls), or according to current activity of the user (e.g.> 

intended recipient of the call). In one example, the current activity 

of the subscriber and/or the user usually OCCLITS on a computer 

iietwork. The ability to process an incoming call on a telephone 

network according tu activity on a computer network is not taught 

or suggested by Brennan, 

(JX-5 at MSAf, 00694-695.) Alttioiigh the applicant explains that the ‘439 patent app~~€at~on is 

patentable because it can, among other things, filter calls based on the status of a subscr-i ber or 

user arid not simpiy based on a tixed set of rules, the applicmt’s remarks do not add anything to 

enlighten the proper construction of the phrase “current activity.” 

111 the absence of anything in the specification or prosecution history to indicate 

otherwise, the word ’%urrent” is construed in accordance with its plain and ordinary meaning. 

The Federal Circuit has stated that. sometimes, the ordinary meaning of claim terms is readily 

apparent to laymen and claxm constr~ction ”involves little more than the application of the 

widely accepted meaning of coimonly understood words.” Phillim v. AWH Corn.. 4 15 F.3d 

1303, 1314 (Fed. Cir. 2005) (en banc). The word “current” is a word that is understood to mean 

either ‘*occurring in or existing at the present time” or “most recent.” & ~ei~ia~~~e~~st~r

49 
Ninth New Collegiate ~ictio~i~I*~ 316 (1984); ~€e~~ia~-We~ster~s Online Dictionary (*ww.rnw.com). As for the intrinsic evidence, the a~r~inlst~~~~ve law judge finds nothing, and 

complainant has cited to nothing, that supports rcading thc claim phrase “current activity” to 

mean the activity at that moment in time. 

Based on rhc foregoing, the administra~i~?~ law judge construes the phrase “~iirrcnt status” 

to include either the status of a user or subscriber at the present time or the most recent status of a 

uscr or subscriber. 

E3. The O’Neal ‘064 And ‘3357 Patents 

The claims at issue in the ‘064 patent are d~~~i~ent claims 3, 8, 11 ~ and 12 which are 

dependent on iiidep~~d~nt claim I and lnd~pe~d~n~ claim 20. (JX-3; iZFF E.C. 1.5 (und~s~uted~.) 

Exh of asserted claims 3, 8, 11. and 12 depend fwrn unassertecf claim 1 of the ‘064 patent, (JX3.) The claim in issue of the ’357 patent is dependent claim 6 of the ’357 patent. (JX-4; RFF 

1.C. 1.23 (u~~~ispute~f).) Claim 6 of the ‘3S7 patent depends from unasserted independent claim 1 

of the ‘357 patent. l‘he parties argued that there a1.e only two clai trt phrases in dispute, Viz. the 

GUl‘ limitation and the TXJ17 lirnilation, (CBr at: 38: RBr at 1-2; SRBr at 11.) Thus the parties 

Claim ’I‘erm 

have agreed upon the followitig claim construction for. purposes of this investigation: 

Agreed Upon Constriiction 

system that allows messages of a datacentric network and a te~ep~iony-ceiitric 

network to be received, stored, retnevcd, 

and forwarded wittiout regard to the 

‘ “GXJI” Stands for “graphical user interkc,” and has been used synonynzously with the 

term “graphical menu.” (RBr at 37 n, 3.) 

’ ‘TUI” stands for “telephony user interface.“ {RBr at 37 n. 4.) 
Claim ’Term 

Ih voice te ep (ne service 

Agreed Upon Construction 

comr~~~~ication devices or netwnrks I 

empIoyed for the t~~nsn~ts~~~n of the 

messages 

used by devices such as telephones, pagers, 

facsirnrle machines, and voice mall boxes 

a nctwork, that can-ies digital data, prtmai-ily 

tu facilitate in~ui.~atjon exchange arnotig 

computers and computer peripherals 

a c#mm~nlc~~~lon service for receiving. 

storing, retrieving, and forwarding telephony 

i n format i on 

[See Order No. 18 (attached letter dated October 5, 3007).] 

According to complainant, the disputed claim terms in the O’Pdeal patents that need 

constivcti on are: 

“said computer server being configured to generate a single 

graphical menu for displaying said cornni~~~ca~jo~ options for each 

of said coi~~u~ication services at the same time” (claims 1 and 20 

of the -063 patent and claim I of the ‘157 patent) 

‘“a telephony server coupled to exchange data with said 

com~~~injcatjon profile database, said tclephoriy server being 

configtrrcd to audibly represent said com~~Linjc~tio~ options to said 

telephone when said subscriber eniploys said telephone to access 

said computer-jmplement~d control center’’ (claims 1 and 20 of the 

‘064 patent and claim 1 of the ‘357 patent) 

(CBr at 35.) 

Respondent argued that only two claim c~n~tructioii issues remain with respect to the 
O‘Neal patents. the meaning of the following two elements €roxn claim 1. of ttrc ’063 patent: 

(1 j a single graphical nieriu for displayrng said ~on~~~n~ca~~on options 

for each of said c~~in~u~ic~tiot~ services at thc same time (the “GUI 

~in~itation.~); and

(7) said telephony server being configured to audibly represent said 

Cot~t~uIricatiot~ptions to said telephone. (the “TU ~i~~~~atior~’~). 

The staff argued that the parties have not stipulated to the construction of the phrase 

.~communica~ion services” as it appears in independent claims 1 and 20 of the ‘064 patent and 

independent claim 1 of the ‘357 patent and of the phrase “cnable option fer enabling 01‘ disabling 

the I . . ~~~~muni~ation service” it appears in iride~e~dent claims 1 and 20 of the ‘604 patent 

and indepeiideiit claim 1 of the ‘35’7 patent. (SBr at 32-3.) 

Each of the GtJI and TU1 limitations is in tinasserted claim 1 of each of die O’Neal 

patents, as well as in independent claim 20 of ttic ’064 patent, (JX-3: JX-4,) The language of the 

disputed claim phrases is s~Ibs~dn~ia11~ the same in each of claivns 1 and 20 of the ‘064 patent and 

claim 1 of the ‘357 patent. The parties agreed that the O”Mea1 patents have the same 

specification, (RW I.C. 1.20 {u~disputed?~~ Each of the party’s arguments treated the disputed 

lin~i~atio~~s identically as between the patents.. atid between claims 1 and 20 of the ‘0064 patent. 

’ Respondent noted that claims 3, 8, 11 and 12 all depend from claim I, which is also 

representative of a11 of the remaining asserted claims (including claim 20 of the “064 patent and 

claim 6 of the ‘357 patent. which also include the limitations at issue). 2nd thus, an analysis of 

claim 1 is appropriate because although claim 1 is no longer asserted, it is “a funda~~n~a1 

principle of patent law that dependent claims cannot be found infringed unlcss the claims from 

which they depend have bccn fonnd to have been infringed.”’ citing ~ene~-Ic/Pent~~n, Inc. v, 

Dillon Co.. 305 F.3d 1377, 1383 (Fed. Cir. 2000). 

52 
(CBr at 38; RBr at 37: SBr at 34-35.) The parties appear to agree that the claim terms appearing 

in the claims of‘ both of said patents should be construed consistently. (CBr at 21 n. 21; RBr at 1: 

SBr at 30) l‘herefore, the ad~irijstr~~ti~e law judge finds that only said disputed claim phrases 

are at issue in construing thc claims of thc assc~~ed O’Neal patents, Moreover, thc administrativ~ 

law judge treats the disputed claim phrases from cIai ms I and 20 of the ‘064 patent and claim L 

of the ’357 patcnt idcntically. 

1. The GUX Li tnitation: ’X’he Claimed Phrase “generate [or generating] a single 

graphical mcnu for displaying said c~inmu~icati~~~ options for each of said 

~o~~~ii~i~cat~#~~ services at the same time” (JX-3 at 1X:38-42; JX-3 at 22:60-63 

1x4 at 18:32-34.) 

This claim phrase appears in i~idepend~nt claims 1 and 20 of the ‘064 patent and 

independent claim 1 of the ‘357 patent. (JX-J at 1 &:39-42,22:60-63: JX-4 at 1852-34) 

Complainant argued that the claim phrase in issue should be canstrued ‘“to require a 

computer server that is configured to generate a single graphical menu for dis~~l~yjn~ at least a 

first comIn~ini~~tion service and option and a second ~~mn~unicatio~ service and option at the 

same tj me.” (CIBr at 39.) 

Respondent argued that “[tlhe claims require that a subscriber haw at least two or more 

c~inInu~icat~o~~ services but, as many services and options as the suhscriher has must be 

displayed on ‘a single graphical menu,”’ (RBr at 2.) 

The staff argued that: 

~~~Ith(~u~h the claim langnage and specifications of the ‘064 and 

‘357 patent only permit all of the available options to be ~~~~~a~~~ 

on a single graphical menu. the pr~~s~cuti~)n history requires it. ‘The 

“‘single graphical mcnu” limitation should therefore be construed to 

mean “me graphical menu that shows all of the commun~cat~~n 

options associated nith all of subsenherbs co~~m~ini~at~o~ 

53 
services.” 

(SBr at 44. j 

Thc prosecution history Ss intrinsic evidence and provides evidence of how the in~cnto~s 

arid the Patent Office understood what IS disclosed in LI patent following the pmsecution. (’ 

Phillips. supra.) The application whtch resulted in the ‘064 patent was filed on January 29, 1999 

with t~e~~~-t~~o original claims. (JX-7 at U~7~~-~80~.~ In an Office Action drrted April 24, 

200[3, thc Examiner rejected original clams 1-_3,5,9-13, 15, and 19-21 under 35 XJ.S.C. 102 (b) 

as being anticipated by Pepe et a1 (US. Patent No. 5,742,905). (JX-7 at 0~~20-~~~~~.) The 

Examiner characterized Pepe as disclosing a “trnified messaging coniputer ccnter that pcrmits 

subscribers to cusromi~e coinm~ni~~ti~~n options pertaining to the unified messaging service 

including routing.” (JX-7 at MSAL 00820-2 1 (citations omitted).) Applicants, in an amendrn~~i~ 

dated July 24,2000, mended original claims 1 and 20’ to read: 

1 I (Once Amended) A ~ompu~~r-j~~le~~ntcd control center for 

permitting a subscriber of a plurality of communic~tion services of 

a unified messaging system to customize ~~~rni~n~c~tl~~ options 

pertaining to said plurality of co~~~un~c~tio~~ services throux 

either a telephonv-centric network usinP a telephone or a 

data-centric network using a diwlav terminal, [said 

cornm~n~~~tion optins include parameters assaciated with 

in~i~idua~ ones of said plurality of said ~om~~Injc~tion serves 

and routings among said pl~ral~t~ of com~unicat~~n services, 

said plurality uf c~mmunicat~on services ~orn~risin~ a voice 

telep~ione service through a ~e~e~hon~-c~n~ri~ network and an 

e-mail service ~~rou~~ a data centric network, said 

€o~~unica~ion options heing accessible via display terminals 

coupled to said ~a~-ce~tr~e network and via telephones 

coupled to said t~lepho~~-centric network,] said 

computer-implemented control center comprising: 

OriginaI clam 20, after being amended and allowed by the Examiner as found, inffa, 9 

bewne crriasscrted claim 16, and IS not to bc confused with asscmd claim 20. 
a subscriber ~o~~~~icat~on profile database, said 

subscriber ~oi~i~uiiica~i~i~ prof% Ieciatabase having ttierern at1 

account pertaining to said subsciiber, said account includjfing said 

~o~~~inication optins for said subscriber, 

of said plurality of said ~o~~i~ni~atjon services and ro~~~ri~ 

among said nluralitv of ~onirnu~icatio~ services: 

a computer server coupled to exchange data with said 

subscribcr commui~i~~t~on profi Ie database. said computer sewcr 

being conf~~~~red to generate a ~~n~r~~~~cal n~enu for 

eo~~~n~ca~ion services at the same time, and to visually 

display said ~ [~~rnI~~~nicatj(~~ options] on 

[one oQ said display terminal~s~ when said subsenher ernploys 

[said me ofj said display terminalts] to access said 

comp"ter-implemented control center ~~ data-centric 

network, said computer server also being configured to receive 

from said subscriber via said [one of said] display te~~nal~s~ and 

said data-centric network a first change to said co~~~unicati~n 

options and to update sard first change to said account in said 

subscriber co~ini~inicatioti pro-fi le database; and 

a t~lep~on~ scI*vcr coupled to exchange data with said 

conimu~ic~t~on pro€ile database, said telephony server being 

configured to audibly represent said com~~unication options lo 

[one 08 said telep~one[s~ when said subscriber eniploys [said one 

J said telephone[s] to access said ~o~pu~~r-i~plemented control 

center, said telephony server also being configured to receive from 

said subscriber via [said one ofl said te~e~hon~[sl a second change 

to said ~om~un~~ation optinsand to update said second change to 

said account in said subscriber con~~u~~catio~ profile database. 

20. 

of a unified rnessziging system to customize ~ornni~nl~~i~l~n 

options peI~ainin~ to a plurality of co~n~un~~ation scrliices [og 

A comFtrter-implemented method for ~~r~~jttjng a subscriber 

network using a disnlay terininaf [, said con~rnunic~t~on 

options ~n~lud~ p~r~i~~t~~s associated with jn~~~j~lu~l ones of 

said ~~~ralit~ of said ~~~imuni~tj~t~ services and rout~~~s 

55 
ion services comprising ig voice telephonc SC~VICL" 

and e-nani1 service, said ~o~ina~ni~~~i:on options being accessible 

pia display terminals coupled to said ~~~ta-~~~it~-ic network and via 

~clephones coupled to [a & ~e~eph(~n~-€~nt~c network, said 

~:omputer-impIement@d method cor~p~isjn~: 

receiving. via either a first- display terminal of said display 

~~~inals or n first tele~~one of said tel~~hoI~e~~ a rey~iest IO access 

an accftunt pertaining to said subscrrber, said account in~~ud~ 

said ~o~~L€n~~atjon options for srrid su~scr~~~~r; 

obta~~iir~g from a subscriher co~~unicatjon profile 

database said co~~u~ica~ion optons for said subscriber in said 

account. said €g~mm~~i€ation options including ~~~d~eters 

~~~~u~i~~tio~ services and rontings among said plurality of 

€~~~unicatio~i services, 

presenting said ~omm~inicatift~ optioi~s for said subscriber 

on respective one of said firsf dispIay terminals [andl or through 

said first telephone from which said request to access is received, 

said co~~~n~cation optins being visually presented in a 

shi~le Praphical rnenu arranged for d~~ 

€o~~~ni~atjo~ options for each of the co~~iu~icatj~ri services 

i~d~~idu~li~e(~ web naee associated with said subscriber or 

audibly presented at Faid flrst telephone; 

receiving com~un~c~~i~~i setting edits from said subscriber 

through said respective one of said first display terminal and said 

first telephone From which said request to access is received, said 

~~~rn~~~ication setting edits p~~ta~~~in~ to said coi~m~i~i~a~io~~ 

options; and 

 mod^^^^^^ said communi~atl~~n options in accordance with 

said c~~~n~~a~io~ sctting edits, wherein said co~~~~~injcat~on 

services are sff~se~~~~~ntly ~o~~t~olled in accordance with said 

cornrn~n~c~ti~n options after said modi fyhg 

Irt In m office action, ~~n~e~li~cd text is addcd, and text in brackets IS rttrnnved 

5 6 
claim 1 and 20 have the liniitatioii “to generate a single graphical nieni~ for displaying said 

c~~i~~ni~~tjo?~ options for each of said ~oni~unic~it~on services at the same time. . .” 

In said ~~end~~~~t, appl~~a~~ts also addcd. inter alia, claims 23, 24, and 30, which read: 

23. 

wherein said single graphical menu comprises at least: 

service, and a first ~~~n~unicatjon optio associated with said first 

~ommunicatioii service; and 

a second dispIay area for showing a second c~m~un~cat~on 

service, and a second c~~~~un~~ation option associated with said 

second coininu~i~~t~oii service, the first display area and the 

second display area being displayed at the same time in said single 

graphical menu, 

The computer ~~plen~ei~t€d control center of claim 1 

a first display area for showing a first co~inunicatio~ 

24, The computer ~~plerne~ted control center of cIaim 23 

wherein the first co~~~~I~ii~ation option includes il first enable 

option for enabling or disab~in~ thefirst c~~~u~ication service, 

arid wherei 11 the second ~omniuni~ation option includes a secund 

enable option for enabling or disabling the second ~ornrnun~c~tt~on 

service. 

30. 

wherein the c~~~~u~~~at~on service is an on-demand 

co~~~~Inicat~on service, and wherein said com~unicat~~n options 

iiiclude an on-demand co~~miinic~tio~ enable option associated 

with said on-demand c~~uni~~ti~n service and a fo~~din~ 

number, said on-demand co~~~~i~~tion enable option when 

enabled by said subscriber, permits a caller to said subscriber at 

said unified messaging system to dect tu forward a call or message 

by said caller to said forwarding number. 

The computer-implcmentcd control center of claim 1 

(JX-7 at MSAL ~997-~U~99~~ As sen from the foregoing, said claim 24 required that the first 

~omniunicati~~~ optionalso include the option oT enabling or disabling the first service and the 

second ~o~r~unicati~Ii option include the option of enabling or disabling the secoBd scwice, arid 

also had &J the limitations of claini 23 & amended claim 1. En addition claim 30 had all the 

57 
In said amend~e~t. the applicants then argrred: 

In contrasf: to Ekpe, indeFendent claim 1 and 20 of the 

present ~ipp~icat~ori require a single ZraDhical menu that is arranged 

to display the co~~iunjc~~tion options for each of the 

~o~1~~nication services at the same time. That is. the 

coini~unication options for each of the coxnmunicatron services axe 

si ~~~~taneous~y displayed oil a computer tertninal when the 

subscriber employs the display tcrminal to access the 

computer-i tnple~er1ted control center through a data-centric 

network. In essence, the graphical menu serves as a centralized 

visual interface or control panel for reviewing andlor customizing 

the co~~~inicati~~n options associated with vaious ~o~imunication 

services. As should be appreciated, by providing a single graphical 

menu, a user may quickly and conveniently review the 

com~unj~ationptions and make changes thereto. Claims 1 and 

20 tiwe been amended to better clarify this aspect of the invention. 

While Pepe may disclose the use of control options and 

subscriber profiies. Pepe does not contemplate a single graphical 

menu where otily one view is used to display the co~muni~~~tion 

optims. Rather. in Pepe, the subscriber must go through a plurality 

of views in~ependently, where the options are displayed at 

different times. . . . In order to access all of the screens in Pepc, a 

subscriber must traverse through at least 18 screens as shown in 

Figures 28-45, In contrast, the present invention does not have to 

access multiple screens to modify options. In fact, the 

~o~i~uni~ation optins, which are displayed on a single screen, 

may be modified as needed with a few keystrokes, Accordingly, it 

is respcctfully s~ib~~tted that asingle graphjcal menu contain in^ 

the c~~~un~ca~~on options is neither disclosed nor reasonably 

suggested hy Pepe et al. . . . 

With respect to the secondary references, it is res~ect~~Il1~ 

submitted that the addition of Feit and BisseI to the Pcpc patent 

does not cure ttie deficiencies of the Pepe et al. patent discussed 

above. ft is the applicant’s understanding that each of the cited 

references completcly fails to suggest displaying a single graphical 

menu. 

(JX-7 at MSAL 1)101)1-02 (emphasis it1 original).) As seen from the foregoing, applicants argued 
that ~~~epeIident claims I and 20, as amended, require a single graphical menu that is arranged to 

display the ~or~i~ui~icatjoT~ options for each of the co~~L~ni~~~ion services at the same time 

~igni~~cantl~, in the next office action mailed on October 4, 2000, which rejected certain 

claim on art, including lnde~endent claims 1 and 20. and dependent claim 23, the Examiner 

specifically stated: 

Pepe fads to disclose a “single gmphicrtl menu for 

displalling said c~~~~~Lini~at~on options for each of said 

co~inu~~icatioi~s services at the same time.” Instead, Pepe teaches 

that the interactive menu program displays the user options in a 

hierarchical manner (Figs. 28-45). 

(JX-7 at MSAL 0101 1.) Noreovet-, as to claims 24-27 and 30. he stated: 

Claims 23-27 and 30 are objected to as being dependent 

upon a rejected base claim, but would be allowable if rewritten in 

independent form includins all of the limitations of the base claim 

-an\i in~er~e~~i~i~. 

(JX-7 at 01017 (emphasis added).) 

In the next a~~n~ment received by the Patent Office on December 5, 2000, following 

what the Examiner had said was allowable subject matter in the Office action of October 4, 2000, 

appticants amended claim 1 to include the limitation of allowed claim 24 and intervening claim 

23, and claim 20 was amended to include the limitations of claim 30. (IX-7 at 01 150-59,) 

Applicants also added several new claims that included similar I~rn~t~t~~ns, tdj%, claims 32 and 37. 

Then number claim 37, akr allowance, was renunibercd claim 20, which is a claim asser-tcd in 

this investigation, and which includes the GUI li~itation at issue. 

Based on the foreping, the admini~t~dt~ve law judge Jlnds that the patentees‘ argument at 

JX-7 at MSAL 01 00 1-0 1(Xl2, cited supra, ts a clear and un~~~~i~~~ous narrowing of the clams to 
a single graphical menu that displays all of the services and options on one screen, Sard 

narrowing also extends to the ‘357 patent. cited cases involving prosecution history, 

Based on the foregoing, the adm~n~strativ~ 1aw judge finds that the claim phrase, 

6Lgener&e [or generating] a single graphical menu for displaying said co~~~nication options for 

each of said comrnunication services at the same time” 1s construed as “generate, or generating, 

one graphical menu for displaying all of the con~munjeatj~n options for all of the plurality of 

c~mm~in~~~tion services.” 

~ompla~nant argued that reading the prosecution history so as to require that all services 

and options be displayed would be “‘inconsistent with the fundam~~~~al premise that a dependent 

claim must be narrower in scope than the claim(sj from which it depends.” (CRr at 45,) 

Spccifically, comp~ainan~ argued that the patentees could not have meant to narrow the base 

independent claim to a single graphical menu including all the ~ommunic~itjon services and 

options because, in the same amendment, the patentees rniidified two dependent claims {viz. 

claims 23 and 24) in such a way that was broader than the base i~d~p~n~ent claini. Claims 1 and 

20 however, after being amended, contained a requirement for ‘ba single gpphical menu for 

displayrng said co~rnun~~at~(~n options for each of said com~uni~atIon services at the same 

time.‘’ (JX-7 at MSAL 00994,00997.) CJaiin 23 included a r~uir~ment for a first 

commun~catjon service to be displayed in a first display area and a second c(~mmuni~ati~)n 

service to be displaycd in a second display area; both being displayed at the same time in a single 

paphical menu. (JX-7 at MSAI, 00997-98. j Clam 24, which depended li-uni claim 23. included 

a limitation that each of the two display areas must include an option for enabling or disabling 

the com~nu~i~a~io~ service so displayed. {JX-7 at MSAL 00398. j In othcr words, independent 

60 
claim 1 recliiired that all co~muntca~~o~ services and options be ~ispla~~d but did not disclose 

the requirement of a “display area.” while dependent claim 23 required that two of said services 

be displayed at the same time, and introduced the requirement of two “display areas.” ‘The 

a~n~iIii~tr~~~~/~ law judge finds fhat the requirement of a first and second display area is narrower 

than not having said requirement. Claim 24 contained the furthcr limitation of including an 

eIi~~ble/~~is~i~l~ option for each d~sp~ay~d communication service, and it was this claim li~l~~~t~on 

the Examiner eventually allowed. ’Hie admi~i~str~t~ye law judge finds that said limitation 1s 

narrower than the limitation in claim 23. Thus. the administrative la~/judge finds that claim I, 

as interpreted herein, wa broader than claim 23, which was broader than claim 24. 

 om plain ant further argued that a person of ordinary shll in the art, “havrng reviewed the 

claims in the context of thc intrinsic evidence, (including the Examiner’s Reasons fox allowance) 

would have understood &e assemd claims zo require oiily the display of first and second 

comrnunlc~~tjo~~ options and services in the single graphical menu.’’ (CBr at 4.9). However. the 

patentees argued that the “single grapl-iical menu” limitation dis~l~~uishec~ thir invention over 

Pepc, and the Examiner thereafter specifically stated “Pepe fails to disclose a ‘single graphical 

menu for displaying said ~om~~nicatl~n options for each of said co~~unicaf~ons services at the 

same time.”’ (& JX-7 at MSAL 0101 1 .) Thus, the “single gpaphical menm” lirnttatton was 

squarely before the Examiner, and the claims that the Examiner allowed included said limitation. 

~o~p~~iii~n~ relies on Omega Enn‘?, Inc. v. Raytek Corp., 334 F.3d 13 14 (Fed. Cir. 2003) 

(Omega) and Slor-age Tech. C:orp. v. Clisco Sys., Xnc,, 329 F.3d 823 {Fed. Cir. 2003) (Storage 

Tech). Omega stands €or the proposition that the doctrine of prosecution djsclaimer should not 

be applied where the alleged disavowal of claim scope is ambiguous. Such is not the case in this 

GI 
inv~stigation~ as found. m. me Tech stands for the pro~~~siti~~n that the “‘[tlhe app~jcants. 

inaccurate statement cannot override the claim language itself, which controls the bounds of the 

claim.” (Storage Tech at 832.) ore completel~, Storage Tech reads: 

Cisco’s usc of thc prosecution history to narrow the meaning of 

claim 1 is also misplaced, D~ir-ing prclseciirion. the patcnt ~~~pl~can~s 

stated that in the invention as recited in claims 1 ~ 11, and 18, the 

instance of network policy and the policy identification 

jnform~~tlon are both cached. While oii its face this statement 

appears to Limit claim scope, it cannot do so absent somc claim 

language refexring to the caching of the Instance of network policy. 

The prosecution history statement describes gene-ralty the features 

of the claiined iiivent~~~ and ermncously suggests that thc 

independent chi ms include a cache for the instance of network 

policy. The applicants’ inaccurate statement cannot override the 

claim language itself, which controls the bounds of the claim. See 

Rarnhus fnc. v, Infineon Techs. AC, 318 F.3d 1081, 1089,65 

lJSPQ2d 1705, 17 1 1 (Fed. Cir, 2003) (holding that general 

starernent introducing new limitations does not limit scope oE 

claims not amended to includc the new ~in~i~ation~~: Intervet, 887 

F.2d at 1054, €2 tJSPQ2d at 1477 (holding that erroneous 

statenieri t made during prosecution does not limit claim scope 

because ‘*the claims themselves control”). 

329 F.3d at %32 (emphasis added).) Thus. the patentees in Storage Tech stated that a limitation 

was in the claim, where there was no basis for that limitation in the claim. Unlike in Storage 

m, the patentees of the ’064 patent added language to the claims to overcome a rejection by 

the Examiner, and cxplained in that same amendment why they Believed that said language 

overcame said rejection. Therefore, there is no “inaccurate s~ate~ent” as there was in 

2. The TUX Limitation: The Claimed Phrase, “said telephony server being 

configured to audibly represent said ~~n~~u~ic~tion options to sard telephone 

when said subscriber employs said telephone to access the computer inipletnented 

control cenrcr“ {JX-3 at B 8:67-19:4: JX-3 at 24:4-8) or “audibly representing said 

co~~~~Inic~t~oii opt ions to one of said tclephoncs, using sard telephony server, 
eylieii said subscriber employs one of said telephones LO access said cornputer- 

~m~lemented control center.” (JX-4 at 18:59-60. ) 

Said claimed phrase appear in independent claims I aid 20 of the ’064 patent and 

independent claim I of the ’357 patent. (JX-3 at 28:67-19:4; JX-3 at 24:4-8; JX-4 at 18:57-60.) 

~~~mplair~~~nt argued that ‘-only some of the c~~mmunic~~~~on options of the eonzputeri t~pie~zented control center. need he audibly represented via the telephony server.’’ (CBr at SO.) 

~esp~n~ent argued that this claim l~~~tation requires that “the telephony server audibly 

represent the same coi~l~u~ii~atio~i options that. are available through the graphical menu.” (KBr 

at 48.) Respondent further argued that: 

A strai~htforw~d reading of the claim language cstabIishes that the 

phrase “said ~ornm~nic~tio~ options” rn the TUX limitation refers 

to the same c~mr~~~iication optios as the phrase “said 

communlc~ti~n options’‘ in the CUI lii-nitation. (RFF III.A.2.6 - 

RFF HI.A.2.7.) The TU1 limitation is thus properly construed to 

mean that the telephony server must audibly represent the same 

~o[~~urI~c~ti~n options that are available through the graphical 

menu. (& ALE Post-Hearing Br. at 48-50,) Indeed, Microsoft’s 

brief acknowlcdgcs that in patent parlance, the word “said” 

requires refers to an earlier use of the term in the claim, (See 

Microsaft Post-IIearing Br. at 51 .) Accordmgiy, the “said 

~ommunI~~tlun options’. in the TU1 and GUI lrmitations 

neccssarily refer to the same options. 

(RRBr at 19.) 

The staff argued that the TCI limitation sho~ild be “construed ~~~isisten~ly with the GUI 

limitation to mean that ‘the telephony server audibly represents all of the corn~uni~atlons 

options to the telephone when the subscriber uses the telephone to access the system.”’ (SBr at 

19.1 The staff further argued that: 

During prosecution, thc patentees limited the GUI limitation such 

that displaying %id ~~~~inic~tio~i options’’ requires displaying 

63 
all c~~mrnuni~ati~~n options. lJnless there arc exccptional 

cir~~~n~stances~ the same claim terms 111 the same patetit should be 

given the same meaning, and so lhe consti~ct~on of the language in 

the CUI Imitation shoiild be applied to the TU1 ~imitatjon as well. 

-7 See a? e,~ PODS, Xnc. v. Porta Stor. Inc., 484 F.3d 1359. 1366 (Fed. 

Cir. 2007) (‘*We apply a ‘presurnption that the same terns 

appearing in different portions of the claims should be given the 

same meaning unless ir is clear from the spe~~~€a~ion and 

prosecution history that the terms have different meanings at 

different portions ofthe claims.”’). 

(SBr at 45 (internal citations oniittcd).) 

‘Ihe claim term ”said com~iuni~at~~~n options” is first disclosed in the preamble of the 

claim, and is found thereafter in several elements prior to the claim element including thc TUI 

limitation. As the admjnisti.at~v~ law judge 1x1s found, supra, “said c~~munic~~ti~~ options” has 

antecedent basis in the preamhle. The preamble of claim 1 of the ‘044 patent states: 

1. A computer-implemented control center for permitting a 

subscriber oC a pl~Ir~illt~ of communication services of a unified 

messaging system to customize c~m~unt~ati~~ options pertaining 

to said plurality of communication services through either a 

teleph~n~-cen~r~c network using a telephone or a data-centric 

nctwork using a 

control center compnsing: 

, said computer-implemented 

[JX-3 at 1822-28 (emphasis added).) Thus, the preamble creates a distinction between using a 

telcptiont: and using a display terminal of a computer to access the control center. Moreover, the 

GUI limi~atioti is found in a claim clement reciting a “computer server.” while the TUI limitation 

is found in a claim element reciting a “telephony server.” Neither of said claim elements refers 

to the other. and both are separale components comprising the “‘computer-implemented control 

center.”’ (JX-3 at X 822- I9:9.) Therefore, the Ianguag of the claims discloses that 

~~~oni~uni~ation options,” in this claim element, refers back to the preamble for antecedent basis. 

64 
and does not incorporate limitations contained solely in other claim elements. The GUI 

limitation tias restrictions not c~nta~Iied in the TtJI limitation; specifically, the TU l~niitati~n 

does not include a reference to the “each of said ~o~iniuti~car~~ti services.” Thus. the plain 

language of the TU limifation, as modified by combining it with the antecedent basis of 

communicatio~ options from the preamble, requires that the telephony service be configured to 

audibly represent “c~~mniunication options pertaining to said plurality of ~o~munlc~~~~on 

services.” The laiiguage of the claims, therefore, does not require that all comn~~ini~atlon 

options, or even a11 com~~~nicatio~ services, be ~-ep~~e~en~ed mdibly. Further, z he specification 

discloses: 

It should be appreciated that the G~rnm~ni~ation services and 

options discussed in connection with FIGS. 3 and 4 are only 

illustrative of the capabilities of the inventive 

comput~r-implemented control center. It should be apparent to 

those skilled in the art that the same comnel may be 

presented to the subscriber throuoh the telephony server and the 

change the c~~unic~tl~~ options using a telephone connected to 

thc teIephon~-Ge~t~c network. The co~municati~n options may be 

presented in a sound fomiat and the subscriber may be offered an 

option menu to review and/or change ally co~l~~~inica~ion option 

setting. Further, it should also be apparent to those skilled in the <at 

that ~o~~muiiica~ioii servces options other than the preferred and 

discusscd ~~rnrn~injc~tion services and options can readily be 

controlled hy the inventive coniputer-implemented control center. 

Irrespective of the services and optxons involved, a subscriber can 

access the centralized co~~uter-imp~e~ien ted control center 

thro~igh either a computer connected to the data-centric network or 

a telephone connected to the ~el~phoIi~-~en~~c network to review 

and/or change the comt~utiicat~o~ options, 

if the subscriber wishes to review arictlor 

(JX-3 at 1459- 15: 13 (emphasis added).) Thus. the language of the specification does not clearly 

disclose that each co~~i~nj~ati~n service and option represented on the graphical display must 
be presented in a sound fomat. 111 Ezt. by use of‘ the words ”may” and “mespecti VB of the 

services and options involved,” the specification itnplici tty leaves open the possibility that the 

graphical display and the felephonic menu comm~nicati~~n options may bc diffct-ent. Further, the 

prosecution history, which was critical to the i~ite~~etation of the GUI limitation. shows that the 

GUI and TU1 limitations arc distinct. The argument with which the patentees ovcrcamc the 

Examiner’s rejection based OT~ Pep explained a proposed a~i~nd~~e~t to the claim Imguage 

purporting to add further requix-eements to the GLJI limitation; language that was not added to the 

TU1 limitation. 

Based on the foregoing, the a~~~~jstr~tive law judge finds, for claims 1 and 20 of the 

‘064 patent, that ttic claim phrase ‘ktici tel~ph~i~y server being configured to audibly represent 

said eo~~u~~ication optins to said telephone when said subscriber employs said telephone to 

access the computer ~mpl~niented control center‘- is construed as “the telephony se~~er being 

configured to audibly represent cu~~u~icatio~i options pertaining to at least two ~on~~~~~ica

services to a telephoiie when the subscriber employs said telephone to access the computer 

j~pl~mented control center.” The adrninlst~~ti~e law judge further finds. for claim 1 of the ’357 

patent, that the claim phrase “audibly representing said com~u~i~atioi~ options to one of said 

telephones, using said telephony server, when said subscrikr employs one of said telephones to 

access said computer-imI,lementcd control center” is construed as “audibly representing 

co~r~urij~atioTi options pertaining to at least two ~~~~utiication services to a telephone, using 

said telephony server, wkn a subscribcr employs one of thc telephones tu access the computcri m~?Iernen~~~ control center,” 

66 
In issuc xs whether the asserted claims of the Lifficli and D’Neal patents are anticipated 

by cetwin prior art.” 

A patent is presumed valid, and ALE has the burden of proving ~n~al~d~ty by clear and 

convittcing esidertce. 35 U.S.C. 8 282; lron Ckip Barbell Go, Y. tJSA-, 392 F.3d 

1317, 1320 (Fed. Cir, 2004); Stryker Collp. v. Davol Tnc,, 234 F.3d 1252, 1255, (Fed. Cir, ~0~). 

Clear and convrncing evidence has been descrrbed as evidence tvhicfi proves in the mind of the 

trier of fact “an abiding conviction that the fntth of [the] factual contentions Lis1 ‘highly 

probablc.’” Intcl Cow- v. United States &@’I Trick Comm’n, 946 P.2d 821, 829-30 (Fed. Cir. 

1991) (quoting Colorado v. New Mexico, 467 US. 310.316 (1984)). 

A patent claim is invalid ns anticipated if “%lie invention was patented or described in a 

printed publication in this or a foreign country, before the invention thereef by the applicant lilr 

patent, or -. . patented or described in a printed p~b1ic~ti~)n in this or a foreign country more than 

one year prior to the date of the application fur patent in the United States.” 35 U.S.C. 8 

102(a)-(b). Anticipation requires that a single prior art reference discloses each and every 

limitation of the clatmed Invention. ~v. Geneva Pharms., 339 F.3d 1373. 1379-80 

(Fed. Cir. 2003). Anticl~a~~on is a question of fact, S~~ithK~i~ie Beecham Corn. v. ArPotex 

Cor-p., 403 F.3d 11331, 1342-43 (Fed. Gir. ZOOS). 

To antrcipafe. a prior art reference must also dcscribc the claimed ~n~~e~tion s~~~lcien~l~ to 

I’ - See CPFF 3001-3 which asserts that ALE did not presetit any evidence that the 

asserted claims are invalid over the prior art based on obviousncss nor did ALE’S technical 

ehpert ~~d~-Th~~so~~ offer any opiriion relating to any obviousness defense. In rebuttal ALE 

merely “specifmlly reser\/es the right to pursue its obviousness defcxiscs in other proceedrngs.” 

_I See ROCPFF 3001-3. 

67 
have placed it rn possession of a pcrsan of ordinary skill in the field of the i~~~e~~~~

and be 

‘“enabling,” Flelifix Ltd. v. B-, 208 F.3d 1339, 1346 (Fed. Cir. 2000). An enabling 

reference contains a description detailed enough to allow one skilled in the art to malie and use 

the claiirred invention without undue e~pe~~~~n~~~iori. Tn re Wright, 999 F.2d 1557, 1561 (Fed. 

Cir. 1993). 

For a reference to anticipate a claim under the doctrine of “iinherent anticipation,” thc 

evidence “fnust make clear that the missing descriptive matter is necessarily present in the thing 

described in the reference. and that xt would be so recognized by persons of ordinary skilL” fnrt: 

Robertson. 169 F.3d 743,745 (Fed, Cir. 399% (quoting Cont’l Can Co. v. Monsanto Co., 945 

F.2d 1364. 1268 (Fed. Clir. 1991)). “Xnhercncy, however, may not he established by pro~abiI~ti~~ 

or possibilities. The mere fact that a ccrttain thing result from a given set of €ir~~imst~n~~s Is 

not sufficient.” Clorit’l Can, 948 F.2d at 1269 (citations omitted) (emphasis added). 

A. The Liffick ‘439 Patent 

I, The Chestnut Patent 

a. CIsirn 1 Of The ‘439 Patent 

Respondent argued that US, Patent No, 6,041,134 which issued to Ghestiiut (the ‘114 

patent) anticipates claim I of the ’439 patent, At the hearing in this j~i~es~i~~~i~~. respondent’s 

expert Hyde-~l~o~~son tetified that all of the limitat~ons of claim 1 were disclosed iri the ‘1 I4 

patent. Tr. at 1413-30; RDX-IO. 

Complainant, however, disputed ~~~de-~~om~on’s testimony and respondent’s 

conclusions regarding anticipation, and argued that respondent has failed to prose, by dear- and 

convincing evidence, that ttic ’1 14 patent discloses all of the li~jt~it~on~ in claim 1. Specifically: 

68 
cot~plain~~nt argued that the ’1 14 patent does not disclose the following limitations of daim I: 

(1) “a data stixicture contained within a coniputer network to store user-selcctablc criteria for call 

processing, wherein the data structure stores the user-seiectabte criteria in one or more lists that 

are used in filtering an incorning call”; (2) “wherein sonie of the one or more lists are used to 

t3lter the incoming call according to current activity of subscribers on the computer network or 

according to current activity of the user an ttie computer network”; (3) *‘a computer network 

access port used by the telephone network to access the data structure such that the telephone 

network has access to the one or more lists over the computer network access port”; and (4) “a 

controller to receive the incoining call designated for the user telephone and to process the 

inconling call in accordance with the user-sclectablc criteria, the controller accessing the userselectable criteria in the one or more Iists ofttie data structure via the coniptiter network access 

port and thereby applying the user-selectable ciiteria to the incorning call.” (CBr at 146-150.) 

A~~~itjonally~ cc-mplainant argued that respondent has failed to show that the ‘ 114 patent 

discloses ail the elements of claim 1 of the ‘439 patent arranged m the same manner and residing 

in the same place as in said claim 1. (CRBr at 119-1 20.) 

The staff argued that the ‘ 114 patent anticipates independent claims 1, 28 and 38 of the 

‘439 patent. (SBr at 72.) Specifically, the staff argued that the ‘1 14 patent ciiscloses both a “data 

structure contained within a computer network to store user-selectable criteria for call 

processing” (claim 1) and a “data structure contained within a computer network that is 

ind~pend~nt of the telephone network” (claims 28 and 38); that the ‘1 14 patent discloses filtering 

incoming calls according to the “current activity of the user on the computer network“ (set: JX-1 , 

col. 14%-26, 17:3-4, 18:15-16); and that the ‘I 14 p;zrent discloses a “controller to receive the 
incoming call designated for the user telephone atid to prcxess the incomtng call in accordance 

with the user-selectable criteria." (JX-I, col. l4:31-33). (SBr at 72-74.) 

-1he Claiined Phrase "a data structure contained within a conipuler network to 

slorc uscr-selectable criteria for call processing, wherein the data structure stores 

the ~lser-selcctdble criteria in one or more lists that are used in filtering an 

incoming call'" 

Rc~p~n~~~nt argued that this ~ir~i~ti~~[i 1s disclosed by the '1 14 patent. relying In support 

0x1 explicit statements in the patent and the testimony of its cxpert, ~y~~-Thomson. (RBr at 115- 

117.) In ptuticiilar, respondent noted that the '1 14 patent discloses that: 

The tclecomrnute server 2, can also forward incoming calls based 

upon other criteria including day or date, time of day, tfrc Identity 

of thc caller, or any preprogranimed set of iules. It is withtn the 

scope of the i~~e~tj~)n €or the telecommute server 2 to utilize a set 

of forwarding preferences which are based on the above criteria as 

we3 as other factors such as who else in the office is loggcd anto 

the computer nctwork 8 or the telephone extensions currently in 

use. 

(RBr at 1 i6; RX-1 at 5: 18-25.) Respondent also rioted that the '1 14 patent states that the: 

Leieco~I~~~ni~a~i~n server 2 selects the telephone number to which 

iricomrng calls should be forwarded based upon a record stored in a 

memory which associates a forwarding telephone number, such as 

the number for called party home phone 22? with a network logon 

device. such as a called party home workstation 26. 

(RBr at I 16; RX-1 at 4:64-5:2.) Further, respondent and the staff both point to the fact that the 

' 114 patent explicitly discloses that: 

[Tlhe telephone number associated with the current called 

party network login device is deterniincd 44 by coniparing the 

idcritity of the Iogoii device with a list of telephone numbers 

indexed by logon device stored in a memory. Other factors 

including time of day, day of week, date, andor the identity of the 

calling paay niay be used to detcrmine thc forwarding number by 

providing additional indexing criteria. 
(RRBr at SG; SBr at 93; SRBr at 36; RX-1 at 6:34-46.) In additio~ to the explicit disclosures 

frclm thc ‘I 14 patent, set forth SUJBX, respondent relies on the testimony of its expert HydeThomson, who stated, when asked if this limitation was disclosed by the ‘1 14 patent: 

Yes. 

for the call processing. which are wed in one or inore lists that are 

used in filtering an incoming call. 

There’s a data structure which stores uscr-selectable cnteria 

So within thc Chestnut system, there are -- well, there 

would bc a data structure associated with the, well, Windows or 

whatever network it is that the users are connected to, which are 

the kind of user directory and user lagon status data sttctui~. 

which will be -- and maybe the Remote Access Server, which 1 

mentioned earlier, which indicates where people tiwe logged on 

from. 

And that data structure is ac~essecl by the ~el~~~rn~ute 

Server and, based on rules that have been set up, will route calls ta 

either the office extension or thc home phone according to the data 

that’s read from the database of the network logons, 

(Tr. at 1415:16-1416:9.) 

Complainant has argued that respondent failed to prove that the limitation 

a data structure contained within a computer network to store userselectable criteria for call processing, wherein the data structure 

stores the user-selectable criteria in one or more Iists that are used 

in filtering an incoming call 

IS disclosed in the ‘I 14 patent. Complainant’s opposition, however, rests solely on the testimony 

of respondent’s expert Hyde-Thotnson cited supra. See CRBr at 120-1 22. Complainant argued 

that ~Iy~e-Tho~son identified a “Remote Access Server” as the data sti-uctwe, and that because 

the ’ 114 pateiit does not disclose a Remote Access Server, that the ‘I14 patent does not satisfy 

the “data structure” limitation of claim 1. (Id) Absent from cornphiant’s post-hearing briefs is 

any argument as to why the explicit passages in thc ‘ 1 14 patent cited by bolh respondent and the 

71 
staff do not satisfy the limitation in issue. 

l‘he limitation of claim I at issue requires a clata structure that stores user-selectable 

criteria in one or more lists for call processing. The passages in the ‘I 1.2 patent, cited supra and 

relied on by respondent and the stalf, disclose that the telecommute setlier selects a forwarding 

phone number by accessing a record in memory that contains a list of telephone numbers indexed 

by Ictgon device. % RX-1 at 5: 18-25,4:64-5:2. The passages also disclose that any set of 

prepro~i.a~nmed rirles or additional indexing criteria niay be used to forward the incoming call. 

-- See id. at 654-46. The ‘439 patent broadly defines what constitutes a data structure, stating that: 

Database operation is well know in the art3 and need nor be 

described in seater detail herein. The database 01- other form of 

the forward list 160 niay be satisfactorily i~~lemented using any 

known data structure for storage of data. For example, the various 

Iists (e.g. the atlow list 166, the reverse list 162, the black list 164 

and the allow list 166) may all be integrated within a. single 

database structure. The present invention is not limited by the 

specific structure of the affiliation list 150 nor by the fom or 

fonnat of the &ita contained therein. 

(JX-1 at 1O:S-lic (emphasis added),) Based on this description irt the ‘439 patent. the 

~~dmin~str~~ti~~ law judge finds that the disclosure in the ‘ 114 patent of a “‘record in memory” that 

contains a list of tefephotie numbers is a data structure. Because said record in memoly may also 

contain any set of p~epro~~~~rn~~d rules or other indexing critcria, the requirement of the 

liniitation at IssLie that the data structure store user-selectable criteria is also met. ~~~d~ti~~nall~, 

the ‘1 14 patent explicitly discloses that the list of telephone numbers, set of pr~progr~Immed 

rules, or other indexing crjteria stored in the record in memory arc used to forward an incoming 

ca% Thus. the requirement of the limitation at issue requiring %hat he user-selectable critcria be 

used to filter an incoming call is also satisfied. Further, as secn in Figure 1 of the ‘1 14 patent, the 

72 
telecommute server 2 may be part of a computer network connected through ;L L~~/~~A

8 with 

the called party home worIistation 16 arid the called party office ~~~rkst~ti~r~ 30. See RX-1, 

Figure 1. Bcca~c the data structure is stored in a record in memory in the telccominute server. 

the data structure 1s contained within a computer network as I-equired by the Imitation at issue. 

Based on the foregoing, the ad~~i~~~stratise law judge finds that the ’ 1 14 patent discloses the 

limitativn of claim 1 of the ‘439 patent calling for “a data structure contained within a computer 

network to store user-selectabie criteria for call processing, wherein the data structure stores the 

user-selectable criteria in me or more lists that icTe used in filtering an incoming call,” 

~o~p~ain~~~~ had argued that Hydc-Thornson‘s testimony identified a Remote Access 

Server as the ciata structure that must be disclosed in the ‘I 14 patent for said patent to anticipate 

the asserted claims ofthe ‘439 patent. (CKBr at 130-122.) The adrni~~i~~~~~tive law judge, 

however. finds that respondent’s expert Hyde-Thornson did not identify the data structure 

element of claim 1 as a “Remote Access Server.” Rather, his testimony indicated that when he 

referenced the Kemote Access Server he was referring back to his previous comment that there 

would be a data structure associated with “Windows or whatever network it is the iisers arz 

connected to.” Tr. at 141521-23. The administrative law judge tkis that Hyde-Thomson 

equates the data structure accessed by the Telecornmute Set-ver with the +‘rules th2t have been set 

up.” Further support for this inte~r~tation can be found in Exhibit Rf)X-109 where the 

~re~ro~rarn~~d set of niles” is again relied on to satisfy zhe “data structure” limitation. See ’i 

KDX-IO at 3. 

The Claimed Phrase “itherein somc of the one or more lists are used ta filter the 

incomirig call according to current activity of subscribers on the computer 

network or according to current activity of the user on the computer networkk”’ 
Respondent and the staff argued that the ‘1 14 patent discloses the limitation “wherein 

some of the one or tnore lists are used to filter the incoming call according to cur-rent activity of 

subscribcrs on the computer network or accorcling to current activity of the user on the computer 

network.” (RBr at 117-1 19; SIE at 73-74.) Specifically, respondent and the staff‘ argued that the 

disclosure in the ‘7 14 patcnt of calI fcmvrit-ding based on whethcr the user is logged onto the 

computer network constitutes routing a call based on the “user‘s current status on the computer 

network.” (CBr at 117, SRBr at 37.) 

Complainant argued that the ‘1 13 patent fails to disclose the one or more lists used to 

filter the incorning call, and also fails to discIose filtenng the incoming call according to current 

activity of the subscriber or user. (CBr at 147-148: CRBr at 125,) With regard to the recitation of 

the one or more lists used to filter an incoming call, ~o~p~a~~ant again argued that this limitation 

is not met because Hyde-Thomsoti identified a Remote Access Server as thc data structure and 

the ‘1 14 patent does not disclose a Remote Access Server. (CBr at 147; CREr 125.) Regatcling 

the requirement that the incoming call be filtered according to the current activity of the 

subscriber or user, complainant argued that the use of the term “current” in the ‘339 patetit 

requires the activity to be the current status of the user on the computcr network at that moment 

in time. (CRBr at 12s.) According to complainant, the ’I 14 patent forwards calls based on the 

last location from which the user logged on, nor thc user's currcnt status on the computer 

network. (I&) C:omplainant argued that the act of logging on does not satisfy the ‘*current activity 

on a computer network” limitation because it is only a precursor to a user’s activity on the 

computer network. (CBr at 147-148; CRRr at 125.) Specifically, cornplairiarit argued that 

fogging on necessarily means that the user is not yet on the computer network as required by the 

74 
~in~ita~i~~ in dispute. (CBr at 14-8.) 

‘The par-ties have agreed to a ~(~nstruct~on of the phrase “curnnt activity of the user 0t7 the 

computer network” as meaning the “‘current status of the user on the computer network.” & 

Order No. 18, attached Eettcr at 2. Thc a~mi~istr~iti~e law judge has found that the “status” of a 

user can consist of both user-selected indicators based on user activity (e.ffl, “conditional 

processing” as per the ‘4439 specification} and the transfer of data between the computer and 

telephone networks while the user IS engaged in a VoIP phone call. (a Section VI.A.3, supra.) 

As fur-thcr found in Section VI.A.3. m, the ~dn~iIi~st~a~~ve law judge has further found that the 

phrase “current status” is construed to include either the status of a user or subscriber at the 

present tinie or the most recent status of a user or subseraber. The li~i~ati~~n of claim 1 at issue 

requires both one or more lists uscd for filtering an incoming call and filtering the incoming call 

according to the current status of the user or subscriber on the computer network. The limitation 

“one or more lists used for filtering an incoming call” finds antecedent basis in thc Iimitation 

supra, y&. 

a data structure contained within it coinpuler network to store userselectable criteria for call processing: wherein the data structure 

stores the user-selectable criteria in one or more lists that are used 

in filtering an ~~~~o~ing call. 

CoT~i~~ai~i~~t’s argument regarding the one or more lists in the I~n~it~tion at issue is the same 

argumcnt it made regarding said data structure limitation. For tile same reasoning as set out in 

Section VI.A.2,A.3, supn-t. the administrative law judge finds ~~~~1a~nant.s argument regarding 

the one or more lists limitation unpersuasive. 

Regarding whcttier being logged into the computer network is a user status, the ‘I I4 

75 
patent states: 

If the called party is identified, then the system checks to see if 

calls are being forwarded 66. IfcaHs are being forwarded, then a 

list of potential forwarding numbers will bc detc~ine~ 68. The list 

of ~oten~~a~ on one or more 

current or most recent tietwork IOZOTI device. . . 

(RX-I at 6:64-7:3 (emphasis added).) The ’1 14 patent further discloses that: 

When an outside caller 30 places a call on the PS’I’N 6 the cali is 

directed to the called party office extension 10 by thc private 

branch exchange 4. Refore the PBX sends -the call to the called 

party office extension IO, the telecorntnute server 3 checks the 

called party is Logged on, the telecommule server 2 instructs the 

pnvate branch exchange 4 to forward the call to the teleptione 

extension associated with the device the called party has used to 

log onto the computer network 8, 

. Ifthe 

{& RX-1 at 4:48-57 (emphasis added).) The patent ‘1 14 ptent alscl discloses: 

The identity of the called pady is determmed 34 by looking up the 

dialed extension in an index stored in a computer memory and 

storing the identity of the associated called pnrty stored in a 

memory. If the identity of the called party is determined, then the 

next step is to determine the current calkd party network logon 

device 40. The current called party nctworl; Io&ice is 

determined 40 by comparine ide~~ed party” . . , with a 

list of Dersons currently logged onta the computer network. 

(RX-1 at 6: 13-24 (emphasis added).) The adm~n~s~~~~ive law judge finds that the passages from 

the specification of the “I 14 patent cited, sugra, disclose a system where an incoming call is 

received, the called party is det~rmi~~e~, the identity of the called party is compared by the 

telccommute server with il list of persons cunmtly logged onto the coniputer network, a private 

branch exchange (PBX) is instructed hy the telecommute server to forward the call to the number 

associated with the user’s computer logon desice, and the call is fonvarded. As pt-eviously found 

76 
in Section VZ.A.3, sup, the ptmse “current activity” can ~xlem eiiher the staftis of the USCI* at the 

current time or ttie most recent status of the user. Further, ~~de-~r~io~~s(~n testified: 

Q. Nou, let’s go to page 4 of RDX-IO. Were wc have the 

agreed-upon construction. 1 believe that’s right this time. The 

language there is: And wherein some of the one or more lists are 

used to filter- the incoming call according to current activity of 

subscribers on the computer network or according to current 

activity of the user on the computer network. 

Do you see that? 

A. Yes. 

Q. Do you believe that element is disclosed in the Chestnut 

patent? 

A. 

tbc current status of the user on the computer network. And that is 

exactly what Chestnut is all about, the status of the user of the 

computer network. 

Yes. The agreed c~ns~ructio~~ of the term is according to 

Et’s either you’re not logged in at all or you‘re logged in 

from the office or you’re logged in at home or from other place 

where there‘s an association already been set up with 3 telephone 

to that login address that can be used to determine wtier-e calls can 

be routed to. 

{Tr. at 1416-1417,) Also, complainant’s expert Chang testified that: 

Q, So undcr your construction, if you sirnply nionitorcd the 

activity of the user’s computer and the user had nu status on that 

computer, then that claim element would not be met, correct? 

A. 

computer. 

I’m not sure what you mean by user has no status on that 

Q. He doesn’t have any -- he didn’t put a schedule, those kinds of 

things that ytiu talked about in the computer. 

A. That by itself could be a form of status 
Q. So what you arc saying is the lack of stattis is status? 

A. Is also a form of status. 

Q. 

if the user has zt computer, period? 

Okay. So basically what you are saying is this clement is met 

A. 

to monitor that ststus, whatever that status might be. 

All I am saying is as long as there is a way to tvack that status, 

(Tr. at 93 1-932.) Thus, complainant’s expert testified that anything that can be monitored is 

status. Thus, a det~~~natioti of whether a uscr is logged onto the network and where the user IS 

logged onto the computer network is a determination of the current status of the user on the 

computer network. The ‘It lit patent explicitly teaches that the ~elecomnmute server is able to see 

if the called party is logged onto the network. Thus, when the telecommute server checks a list 

of users logged onto the computer xietwork and then iristrircts the PBX to forward the call based 

on where a user IS logged onto the computer network, the illcoming call is being filtering based 

on the current status of the user on rhe computer network. 

Based on the foregoing, the a~~~nistrat~~e law judge finds that the ‘1 14 patent discloses 

the limitation at issue in claim 1 of the ‘439 patent requiring that ”whexxin some of the one or 

more lists are used to filter the incoming call according to current activity of subscribers on the 

computer network or according to current activity of the user on the computer network.” 

The Claimcd Phrase % computer nctwork access port used by the tclephone 

network to access fhe dara structure such that the telephone network has z~ccess to 

the one or more lists over the computer networ-k accccss port. . .” 

Respondent and thc staff argucd that the * 1 14 patent discloses the limitation *‘a computer 

network access port used by the telephone network to access the data structure such that the 

telephone iietwork has access to the one or more lists over the computer network access port.” 

75 
(RRBr at 58-59; SRRr at 37-3s.) Specifically, respondent and the staff argued that C”Tl 

a~~lic~tio~3s running on the t~lecommu~e server disclosed in the ‘1 14 patenr satisfy the cornpriter 

network access pc31-t limitation. fee RRBr at 33-59; SRBr at 37-38. In support, respondent and 

the staff noted that the ‘ I14 patent discloses that: 

Computer and telephone systems are being linked through 

Computer Telephony ~ntegra~io~ (CTI) ~~~~~lic~t~o~s which 

facilitate jncoi~ing and outgoing call handlirzg, and control. 

CTT ap~lications can be used to seamlessly interface the 

caller, the called party, and ~n~u~-i~at~on on it host computer for a 

variety of applications. CTl applications deliver caller IT), 

automatic number identification (ANI), dialed number 

identification services (DNIS), and interactive voice response 

(IVR] dialed digits, such as a customer’s account number, to a 

software appli~ation. CTI applications can also deliver request 

signals. such as “hold call” or “‘transfer call”, to a tclephone 

s ys tern 6 

(See I RX-I at 1:41-52; see & RKBr at 58; SlZBr at 38.) The staff, in their reply brief at 37, also 

pointed to the portion of the ‘I 14 patent reading: 

When an outside caller 30 places a ea11 on the PSTN 6 the call is 

directed to the called party office extension 10 by the private 

branch exchange 4. Before the PBX scnds the call to the called 

party office extension IO, the telecommute sel-ver 2 checks the 

coinputer network 8 to see if the called party is logged on, If the 

calIed party is logged on, the tclccornfnute server 2 instructs the 

pnvate branch exchange 4 to forward the call to the tele~hone 

extension associated with the devicc the called party has used to 

log onto the computer network 8. 

(RX-1 at 3:4Ei-S7.) In addition. both respondent and the staff relied OH the test~mony of 

respondcnt’s expert €3 yde-Thomson, who, in response to questionl~g about whether he thought 

the ‘ 114 patent disclosed the computer network access porr. testified: 

Q. Okay. Now, let’s look at page 8 of RDX-If). ‘The next one is: 
A ~o~~p~~te~ network access port used by the telephone network to 

~CCCSS the data structure such that the tclephonc network has access 

to the one or more lists over the computer network access pon. 

Do you believe that element is met by the Chestnut patent? 

A. Yes. In the Chestrrut patent, tic talks about a Telecamxnute 

Server. This server is a combination of software and ha]-clware 

running in a -- probably a computer, but it might be a number of 

computers rn a larger scale system, which tias on one side an 

interkc to the telephone network, 011 the other side an interface to 

the computer network. 

So the computer network access port will be a part of the 

software stack inside the ‘Ielecommute Server or possibly the 

acttial physical hardware of the ethernet porl: of the Telecommute 

Server and according to how much else might be going on on this 

‘Feleco rnrn u te Server. 

(Tt., at 1413-20; RDX-10 at 8.) 

~omp~airi~nt argued that the Iimitation “a computer network: access port used by the 

telephone network to access the data structure such that the telephone network has access to the 

one or rnore lists over the computer network access port” is not disclosed in the * 1 14 patent. (CBr 

at 148-149.) In particular, complainant argued that respondent’s expert Hyde-Thomson could not 

identify a specific computer network access po~? disclosed in the ‘ 1 14 patent or state whether the 

computer network access poi$ would be a physical Ethernet jack or software within the 

telecomrnute server. (rd) ~ddit~at~al~y, complainant asserted that on ~~.o~~-e~~~~ina~~WydcThornson admitted that the ‘ 114 patent does not expressly disclose the computer network access 

port, hut that the computer iietwork access port is “implicit in the description of the telecommtzte 

sewer and the fLin~tion~lityhat it perfurrns.” (a at 149 citing Tr. 16724-9.) Because HydeThornson testified that the computer network accccss port was “implicit,” cornplrtinant asserts that 

80 
T-Iyd~-T~~o~~son must bc making an inlierency zirgument, (Id.) Thus, co~~~~la~n~n~ argued that 

respondent must show that the network access port is necessanly present in the .I I3 patent. 

Complainant ssserted that respondent has faiIed to make such a showing. (Id.) 

~a~p~~~it~aiit further argued that even if it is determined that the computer network access 

port is inherently disclosed in the ‘1 14 patent, respondcnt has failed to point to any disclosure in 

the ‘1 14 patent that the cotnputer network access port is used by the telephone network to access 

the data structure such that the telephone network has access to the one or more lists over the 

computer network access port. (Xd,) Add~tional~~~ corn~1a~~~~i~ repeated its previous argument 

that the ‘1 lit patent does not disclose a Remote Access Server. (Id.) 

Thc limitation of claim 1 at issuc requires a computer network access port that is used by 

the telephone network to access both the data structure and the one or more lists contained in the 

data structure. kcording to thc explicit language of claim lof the ‘439 patent, a computer 

network access port is something that links the telephone network and the computer netwrk. 

which allows the telephone network to access ~nfo~ati~~~ on the computer network. JX-1 at 

14:27-36; see also, JX-l at 52t-622. The ‘I 14 patent discloses in the ~ack~r#und of the 

lnven tjon section: 

computer and telephone system are being Jitikcd through 

Computer Telephony ‘Integration (CTI) appIications which 

Ficilitate incoming and outgoing call handling and control. 

applications can he used t~~r, thc 

called mrtv, and ~~~f~rrnatI~?n on a hast computer, 

(RX-I at I:41-5:2 (emphasis added).) Thus, thc CTI applications not only link a telephone 

network with a computer network, but also allow l~€o~~a~ion OH the computer to be interfaced 

with the caller or called party on fhc tclephone network. Therefore, the adrninistrarive law judge 
finds that the deswption of the CTT appl~~~tjons in the ‘1 13. patent constitutes a disclosure of a 

computer network access port. 

Although the ‘1 14 patent discloses the use of (:TI applications. none of the embodinients 

of the invention described in the “1 14 patent explicitly disclose that a CTf application is used. 

However, as respcmdent’s expert ~-fyde-T~~o~~son testified: 

’There is, in a computer tcIepi~ony system. [as the one discloscd in 

the ‘114 patent,] there 1s on the one side a zelephune network, on 

the other side, a computer network. And in between the two. there 

is a computer network access port. 

- See Tr. at 1671:7-13; Tr, at 1667:23-1668:13: RX-I, Figure I. Also, hc testified that: 

A. 

and confirming now. is that both the existence ol a controller arid 

existence of a computer network access port is implicit in the 

descrbtioti of the telecommute server and the ~U~ctio~iaIi~y that it 

Okay. Well, I would say that what I have argued in my rcpoit, 

performs. 

(Tr. at 2673 (emphasis added),) In addition, as quoted SJJXKI, the ‘1 14 patent explicirly discloses 

the PBX com~u~~c~tin~ with the telecorninute server and ice versa, so there must be something 

between the two to facilitate that com~u~;cat~o~~ See RX-1 at 4:48-56. Furthcrmore, in the 

Backgrouiid of the Invention section of the specification of the ‘1 14 patent, thc applicant 

describes the prior art as already using CTI applications. RX-t at l:tU-3:14. Because CTI 

applications were already known in the prior- art, therc was no need for the applicant to explicitly 

describe the use of CTI applications when describing the embodiments of his itivetitton. & 

Koito Mfa, Co. v. Tum-Key-Tech, LLC, 381 I;.% 1142, 11S6 (Fed. Cir. 3004) (“This Court tms 

repeatedly explained that a patent applicant docs not need to include in the specification that 

which is already known to and availablc to one of ordinary skill in the art.”j); In rc Wowarth, GS4 
F2d 103. 105 fCCPA 1981) (“An inventor need not, however. explain eveiy detail since he is 

speaking to those skilled in the art.”). With regard to ~om~lainant’s criticism that 1-fydeTtionison could riot identify whether the network access port was ~rn~le~~~nt~~ in hardware or 

software, it is noted that Wyde Thomson testified that it was not relevant, & Tr. at 167 1:23- 

1672: 1. In fact. ~(~~p~a~nant’s expert CIitlng also festified that the computer network access port 

could be either hardware or software. See Tr. at. 1025:1-4. Accordingly, the admtnistrdtive law 

judge fmds that the em~odirnents of the iti~rention described in ‘ I I4 patent inherently disclose a 

computer network access port that resides as either hardware or software in the telecommute 

server with the cornputer network access port being necessary in order for the PBX, which is a 

pxt of the telephone network, to co~munjca~e with the telecommute server, which is part of the 

computer network. 

While the a~niiIiistr~t~~e law judge has found herein that the ‘I 14 patent discloses a 

computer network access port in the telecomniute server, claim 1 of the ‘439 patent also reqriires 

that the telephone network be able to access both the data structure and the one or more llsts on 

the computer network through the computer network access port. Fieither respondent nor the 

staff, has shown that the ‘1 14 patent discloses this element of the limitation at issue, as neither 

pointed to any evidence that the telephone system can access the data stmctutz or onc or more 

lists over fhe conlyuter network access port, The ad~~nistr~~ive law judge has found supra that 

the data structure that contains the one or more lists xs disclosed in the $1 14 patent as being stored 

on the telecommute server and the telecorxlmute server is part of the computer network. 

Likewise, the ‘1 14 patent discloses a private telephone switch (PBX) that is part of the tclephone 

system that co~mun~c~i~~s with the telecomrnrite server. However, in contrast to the limitation at 
issue requiring the telephone network to access the data structure and the one or niorc lists, it is 

the teleconiniute server (!..et, the computer network) that accesscs the data structure and one or 

morc Iists and then it is the telecommute server that co~~~n~c~tes inforrnatmn synthesized from 

the data structure and one or more lists back to the PBX for call routing. As disclosed in the ‘1 14 

patent, the PBX {Le., the rclephone network) does not access the data stnicture or the one or more 

Iists, Accordingly, the a~min~strative law judge finds that respondent has failed to prove, by 

clear and convincing evidence, that the ‘I 14 patent discloses a telephone network that accesses 

the dala structure and one or inore lists over a computer network access port as required by claim 

1 of the ‘439 patent. 

The Claimed Phrase “‘a controller to receive the incoming call designated fur the 

user tclephone and to process the incoming call in accordance with the userselectable crite~a, the controller accessing the user-selectable criteria in the one or 

inore lists of the data structure via ttie computer network access port and thcreby 

applying the user-selectable criteria to the incoming call.” 

Respondent and the staff argued that the * 1 14 patent discIoses this limitation of claim I. 

- See KBr- at 119-120; EZRBr at 59-60; SBr at 74; SRBr at 35-39. Both rcspondent and the staff 

relied on the testimony of respondent’s expert ~.~yde-Tho~~[~n, although both also cite to rhc 

specification of the ‘ 114 patent to buttrcss said testimony. Hyde-Thornson testified at the hearing 

that the ‘1 14 patent disclosed a controller. {Tr. at 14227-9.) Specifically, ~yde-~ho~son 

testified that: 

Q. Let’s go back to RDX-10, page 9. So the next element there: 

A controller to receive the incoming call designated for the user 

telephone and to process the incoming call in accordance with &e 

user-sclectable criteria, the controller accessing the user-selectable 

criteria in the one or mort: lists of the data structure via the 

computer network access port and thereby applying the 

user-selectable criterja to the incoming call, 

84 
Ro you believe that element is disclosed in the Chestnut 

patent? 

A. Yes. So the controllcr is within that Telccoriimtlre Server. It 

consists of the hardware of the Telecorninute Server and the 

software running on the processor- of the Telecomrnute Scrvcr that 

controls the computer telephony system. 

(Tr. at 142 I - 1322.) When asked where he found support for his assertion, H~~le-Thoms~n 

pointed to the passage in the ‘1 14 patent that states that “[c]omputer and telephone systenis are 

being linked through Computer Telephony Integration (CTI) applications which facilitate 

incoming and outgoing call handling and control.” liX-1 at 1:41-47; TI.. at 14222-25; 

RDX-IO at 10. According to ~~~e-Tho~son’~ testimony: 

Q. 

element is disclosed, last element of claim f is disclosed? 

And why IS it that that supports your opinion that the last 

A. The controller -- in particular, that it discloses the controller? 

Q. Yes. 

A. 

equals Telecommute Server, which is controlling how telephone 

calls are routcd. And this controller is physically embodied in the 

Telecommute Server hardware and under the control of a~~)I.op~at~ 

software. And, indeed, that’s exactly what Active Voice 

Corporation were making at the time was computer telephony 

software systems. 

Yeah. So the Chestnut system is all about a system which 

(Tr. at 1423.) In addition to the testimony of Hyde Tliomson, respondent and the staff cited the 

followfing passage from the ‘I I4 patent, which states: 

When an outside caller 30 places a call on the PSTX 6 the 

call is directed to the called party officc cxtension 10 by the pr-ivatc 

branch exchange 4. Before the VBX sends the call to the cnIled 

party olfice extension 10, the telec~I~~~~e server 2 checks the 

computer network 8 to see if the called party is logged on. 1F the 

called party is logged on, the tel~~o~mu~e server 2 instructs the 

85 
private branch exchange 4 to forward the call to the telephone 

extension associated with the device the called party has uscd tu 

log onto thc computer network 8. 

If the called party was logged oxito the computer rietwork 8 

from the called party office workstation 20, then the call would be 

directed to the called pany office extension IO. If the called party 

were logged onto the computer network 8 from the ~~llled party 

home workstation 26, then rhe telecommute server 2 would instruct 

the PBX 3 to forward the call to called party home phone 22. The 

telecommute server 2 selects the telephone number to which 

incorning calls should be lo’urwarded based upon a record stored tn a 

memory which associates a forwarding telephone number, such as 

the nuniber For- called party home phone 21, with a ~ietwork logon 

device, such as called party home workstation 26. 

(ax- I at 4:48-5:2.) 

Complainant argued that the limitation “a controller to receive the i~comin€ call 

designated for the user telephone and to process the incoming call in accordance with the userselectable criteria. the controller accessing the user-selectable criteria in the one or more lists of 

the data structure via the computer network access port and thereby applying the user-selectablc 

criteria to the incoming call’’ is not disclosed in the ‘I I4 patent. (CBr at 127-129.) In particular, 

complainant argued that Hyde-Thornson could not identify anything specifically in the 

telecommute server as the controller, nor could he state where the controller resides in the 

telecrtmmute server or whether the controller was hardware or software. (Id, at 128.) 

Addi~io~~~l~~, complainant asserted that, on cr~ss-~xa~iIi~~~~on, ~yde-T~o~son admitted that the 

’114 patent does not expressly disclose the controller but that the conrroller is “implicit in the 

description of the telecommrte server and the fu~~tionality that It performs.’* See id,; sce also ‘Tr. 

at 16724-9. 8ccause Hyde-~~o~~s~n testified that the controller was “‘implicit.” complainant 

asserted that Wydc-Thornson must be making an inhcrcney argirrncnt. ~o~p~aina~~t then argued 

56 
that responde~~t must show that the controller is necessarily present in the “€14 patent. 

~o~p~~~~~t asserted that respondent has Failed to make such a showing. (CBr at 128,) 

~o~pI~ina~~ also argued that even if it is determined that the controller is inherently 

disclosed in the ‘I l4 patent, respondent has failed to point to any teaching in the ‘1 14 patent that 

thc controller accesses the user-selectdAe criteria in the one or more lists via the computer 

network access port. (Id.) Addft~onal~y. complainant repeated its previous argument that the +I 14 

patent does not disclose a Remote Access Server, (Xd. at 128-129,) 

The parties agreed to a construction of the word “controller” as “hardware or so€tware 

that accesses a user selectable criteria in one or more lists of the data structure via the computer 

network access port thereby applying the user selectable criteria to the incoming call.” &g Order 

No, 18, attached Letter at 2. The Iimitation of claim 1 at issue requires a coiitroller that receives 

an incoming call and processes the call in accordance with the user-selectable cnteria in the one 

or more lists of the data structure which the controller accesses via the computer network access 

port. Hyde-Thomson identified the controller as a co~bjnatio~f hardware and software in the 

tele~~m~~te server and part of the Computer ‘Telephony Integration applications. (Tr. at 14229- 

13,22-25.) The ‘I 14 patent explicitly discloses that Computer Telephony ~nL~g~~tlon (CTI) 

applications *‘facilitate incoming and outgoing call handling and control..’ Set RX-I at 1:41-47. 

Although none of the eI~~odj~e~ts descnbed in the ‘I 34 patent expIicitly discloses rising a 

controller, Hyde ’I’homson testified that a controller is “implicit in the description of the 

r-elccornmute server and the f~nc~fo~~lj ty that it perfams.” 

the ~~bo~~~er~ts described in the ‘I 14 patent explicitly discloses that the teIeeommute server 

includes a controller, rcspondent must show that the controller- is inherently present in the 

Tr. a$ l672:4-9. Because none of 

87 
telecoinmute setver. On this point, ~~4e-~rho~~s~)n testified that the “1 I4 patent “is all about: a 

systcm which equals Telecommutc Scrvcr, which is controlling how telephone calls are routed.” 

(Tr. at 1423: 15-20.] 

Assuming arguendo, that the controller is necessart Iy present in the telecornmute scrvcr. 

both the agreed on constri~c~ion of the term by the parties and the explicit requirements of the 

limitation at issue still require that the “cont:roller”: (1) receive the incoming call; and (2) acccss 

the user-selectable criteria in the one or more lists of the data. structure via the computer network 

access port. Neither respondent nor the staff has shown that the ‘ 1 14 patent discloses these 

elements of the limitation at issue. In fact, the administrative law judge finds that the ‘1 14 patent 

teaches away from such a disclosure, Thus. in accord with the explicit language of the limitation 

at issue, the controller must receive the i~iconiing call designated for the user phone. As set forth 

supra, t-espondent and the staff asserted that the controller is a combination of hardware and 

software that resides on the telecoinmute server. Thus, in order for the “1 14 patent to disclose 

this clement of thc limitation at issue, the administrative law judge Rnds that it must disclose that 

the hardware and software that reside oti the telecommute server receive the incoming call. 

Ho.\x;ever, he finds that this is not what the ‘1 14 patent teaches. In contrast to the requirement 

that the hardware and software that reside on the telecomrnute server receive the incoming call, 

the ‘114 patent discloses that it is the PRX that receives the call. KX-1 at 4:48-5:2, 

~ut~hei~~or~, if the controIIer were within the telecommute server, rhe admi~iistrati~e law 

judge finds that there is ncs evidence to support respondent’s and the staFf‘s assertion thar the 

controllcr accesses the user-selectable criteria in the one or more lists of the data structure via the 

computcr network access port as required by the limitation at issue. Thus. there is no evidence 
that the controller is what accesses the data sttwture. ’The ‘114 patent orzly discloses that it is the 

tclecomrnute server in general that accesses the data stizlcture. a, s, RX-1 at 4:51-53,4:@- 

52, In addition, 1-iyde-Thomson testified that the controllcr is what controls the computer 

telephony (&, the comm~nications Iink between the computer network and the telephonc 

network). Hence the a~~~~njst~~tiv€ law judge Finds that the fnnctxon of the controller as 

described by ~yde-Tl~o~iso~ is nt. consistelit with the requirement that the controller “access” 

the data structure, Moreover, even if the controller were the device that accesses the data 

structure he finds that therc is no evidence that the controller accesses the data structure via the 

cornputer network access port. The administrative law judge has found, a, consistent with 

the testimony of Hyde-Thornson and the arguments presented by both respondent and the staff, 

that the data structure that contains the one or more lists is stored on the telecomniute server. 

~d~iti~nalI~, the administrative law judge has found, m, that thc computer network ;iccess 

port that links the telecomrnute server, which is part of the computer network, with the VEX, 

which is pist of the telephone network, is in the tclecornmutc server. Because the controller, data 

structure and the computer network access port are all part of the telecorntnute server, the 

adniinistnitive law judge finds that there is no evidence to support the notion that the controller 

would access the data structure using the computer network access port. Logically, because the 

data structure is already stored on the telecomrnute server the data struclure should be directly 

accessible by the telecommute server and thus there would be no need to use a device @. the 

computer network access port) that links the telecomrnute server with the PBX to access the data 

structure. Accordingly, for the reasons, supra, the adminis~rative law judge fitids that respondent 

has failed to prove, by clear and convincing evidence, that the ‘I 14 patent discloses the limitation 
of claim I requiring “a controller to receive the iricorning call designated for the user telephone 

and to process the incoming call in accordance with the user-selectable criteria, thc controller 

accessing the user-selectable crrteria in the one or more lists or the data structure via the 

computer network access port and thereby applying the user-selectable criteria to the incoming 

call.” 

Based on the foregoing the a~rninlst~~tl~~e law judge finds that respondent has not 

established, by clear aiid convincing evidence, that the ‘I 14 patent anticipates claim 1 of the ‘439 

patenr. 

h. Claim 28 Of The ‘439 Patent 

Respondent argued that claim 28 is anticipated by the ‘I 14 patent. (RBr at 120-123; 

RRBr at 60.) 

~ornpla~n~nt argued that the *I 14 patent does not anticipate claim 28 of the ‘439 patent. 

(CBr at 15 I ; CBr at X30.) 

The staff argued that claim 28 is anticipated by the ‘1 14 patent, (SBr at 74.)12 

Claim 28 is directed to a computer program product that inzplements a method for 

processing calls ovcr a telephone network. Unlike claim I, which sets out very specific 

requi rements iri the manner the data structure, computer network access port, atid controller 

relate to atid interact with each other. the method steps of claini 28 do not expressly require all of 

those reIationships. A~~itionall~, caim 28 does not explicitly recpire a computer network access 

With the exception of the limitation of claim 28 requiring “a computer program 

product for implementing a method for processing a call ~ . . comprising: a computer readable 

medium having computer exectrt-able instructions for ~~~urming the method,” the parties rely on 

the same ~~r~~I~~~nts they made with regard to claini I in arguing whet-her the ‘1 14 paknt 

discloses or docs not dtsclose the limitations of claim 38. 
port or a controller. Claim 28 of the ‘439 patent does, tiowever, explicitly require a compurcr 

program product comprising a computer readable medium having computer executable 

i~s~ru~tions for ~m~~e~entin~ a method for call processing. & JX-I at l6:55-6€. Claim 1 of the 

“43 patent has no such req~iren~ent. The method for call processing as claimed includes thc 

steps of: (1) accepting an Incoming call; (2) accessing a data structure; and (3) processing the 

incoming call, (rd. at fG:G2-17:6.) l’hus, in order tu prove that the limrtatron of claim 25 

requiring a computer program product is disclosed by the ‘I f 3 patent, respondent must stiow that 

the ’ 114 patent discloses ~~plemcntin~ each of thc descnbed method steps in software. 

Respondent relied on several passages in the specification of the ‘I 14 patent and the 

testimony of its cxpet-t ~~~e-Tho~~on t support its argument that the Iimitation of claim 23 

requiring a computer program product is disclosed by the ‘I 14 patent. (RBr at 120.) It1 

p~icular, respondent notcd that the Chestnut patent describes the invention as a “method 2nd 

device for ma nag in^ a t~~ecom~~inications system, including call forwarding, wj th a computer 

network (LAM, WAN, etc.) integrated with a private branch exchange (FBX) connected to a 

Public Switched Network (PSTN).“ (RX-I, Abstract; see also RBr at 120 citing KFF V.C.1.53.) 

Rcspondcnt does not explain the significance of this passage and it is not clear- from a plain 

reading of the passage how it would teach a computer program product for implei~en~in~ a 

method for call processing. Ad~~itionalIy. respondent noted in support of its a~~t~c~~~~

argument that the ‘1 14 patent states that “call fomrar-ding options may be automatic.” See RX-1 

at 3:W-32; see also RBr at 120 citing REF V.C.l.55. Again, however, respondent provided no 

explanation as to the significancc of this passage. Notably, the passage does not state that the 

call forwarding may be automatic. Thc passage only states that the call forwarding “options” 

91 
may be automatic. ~espo~i~e~i~ further noted in support of its argument that the “I 14 patent states 

that the “prcsent invention also iiicludes a call progress rnanagcr which controls the protocols 

used to forward a call ~cpendjng upon where the call onginated and where it was forwarded to.” 

- See RX- 1 at 3:43-46; see also RBr at 120 citing RFF V.C.1.56. Respondent however docs not 

explain the significance of this passage and it is not readrly apparent how this passage would 

support a finding that the ’ 1 I4 patent discloses a computer progmm product for i~~>~~mentin~ a 

method of call processing. Notal>Iy, the passage tu which respondent cites does not state the call 

progress manager controls the fotwarding of the call, The passage only states that the call 

progress manager controls the “protocols” used to fonvslrd a call. 

In addition to the citations supra to the specification of the ‘ 114 patent, respondent also 

relied on the testirnnriy of its expert ~~de-~h~ms~~i, to show that the ‘I 14 patent discloses the 

computer program product limitation of claim 25. (RBr at 120 citing RFF V.C. 1.57.) 

Specifically, Hyde Thornson testified that: 

The system described is ~~plementcd by computers -- a software 

program running on the processor of the Telecommute Server. 

Chestnut is not describing something which is built out of 

hardware. It‘s describing so~~~th~~~ which is built by soft’twarc on 

approp~late computer platform with telephony interface cards, 

(Tr. at 1424-13.25.) Although it appears that ~y~~-~~~o~is~~~ is testifying to what he believes is 

explicitly disclosed in the ‘1 I4 patent, in an answer to a later question, he makes plain that the 

disclosure in the ‘I 14 patent of Computer Telephony Integratiun ~pp~~catio~s “mplied” the 

existence of a computer program product: 

Q. 

referen cc ‘? 

130 you believe that element is disclosed by the Chestnut: 

92 
A. 

defining it as ;-t type of c~~p~te~ tele~~~~ny iniegration, 

that’s exactly what it was. Xt was a ~o~bin~~tton of sftware and 

telephony hardware and a computer. 

Wcl13 f think the -- the language that he already talked about. 

Q. And why is it that a -- it implies that to you? 

A. 

integration. 

Because that’s what people mearlt by computer telephony 

(Tr. at 1425 (emphasis added).) Because ~~~e-Tho~~~~~n argued that the computer program 

product is implied in the ‘114 patent, it appears that he is making an inhercncy argument. Thus, 

in order to show that the ‘ It4 patent discloses the coxnpurer program product limitation of claim 

28, respondent must show that such a product is necessarily present in the ’1 14 patent. 

As found supra, it is unclear how tile passages in the specification of the ‘1 14 patent cired 

to by respondent disclose a method for call processing jmp~emented as a computer prclgmn. 

This is especially so in light of the fact that neither respondent nor its expert provided any 

expIanatron regarding the significance of the passages. Certainly, none of the passages explie~tiy 

reaches accepting an incoming call, accessing a data structure, or processing the incoming call in 

software. Furthermore, bccausc the computer program product is not explicitly disclosed, 

respondent has the additional burden of skowing that such a product is inherent in the ‘114 

patent. The administrative law judge finds nothing in Hy~e-r~h~~son’s ~esti~~o~~ or in the 

specification that shows the ‘ 1 14 patent necessarily ciiscloses a coniputer program product that 

receives an incoming call, accesses a data structure, and processes the incoming call. 

Based on the foregoing, the a~rn~~i~~ratl~f~ law judge finds that respondent has failed to 

prove, by clear and convincing evidence, that the ‘I 14 patent discloses the limitation of claim 28 

requiring “a computer program product for ~l~~lementin~ a method for processing a call , . . 
comprising: a computer readable medium having computer executable inst~~Ictions for 

pedorming the method.” 

Based on the foregoing, the administrative law judge finds that respondent has failed to 

prove by clear and convincing evidence, that. the ‘I 13 patent discloses all the limitations of claim 

28. i9ccorcIingly, the ad~inist~~tive law judge finds thaf the ‘1 I4 patent does not anticipate claim 

28 of the ‘439 patent. 

C. Claim 38 Of The ’439 Patent 

Claim 35 is dirccted to a coniputer program product: that implements a method for 

processing calls over a telephone network. Unlike claim 1, which sets out very specific 

requirements in the manner the daea structure, computer network access poiq, and controller 

relate to and interact with each other, the method steps of claim 38 do not expressly require all of 

those relationships. Ad~it~onally, claim 38 does not explicitly require a computer network access 

porf or a controller. Further, unlike claim 28, claim 35 also does not require that the method for 

call processing bc implemented as a computer program product comprising 3 compwkr readable 

medium having computer executable instructions fur performing the method. 

Respondent and the staff argued that the ‘1 14 patent anticipates claim 38 of the ‘439 

patent. ~o~npl~l~a~it argued that it does not so anticipate. All of the parties rely on their 

anticipation arguments regarding claim 1 of the ‘439 palent to prove that -the ~imlt~t~ons of claim 

38 are disclosed by the ’ I14 patent. 

The Claimed Phrase ‘‘In a system including a telephone network and a computer 

network where an u~~n~~in~ telephone connects with a user telcphone over the 

telephone network. . .” 

Respondent argucd that the ‘1 14 patent discloscs this limitation. {RPFF V.C.1.84,) 
~o~p~a~nai~t does not dispute that this limitation is disclosed by the ’1 14 patent, (SPFF 

35 I ~und~spute~~).~ 

The staff argued that the ‘1 14 patent discloses this limitation. (SPFF 35L.l 

The ‘ 11-4 patent discloses that ’*the presenf invention . . = is a method for controlling call 

forwarding using a computer connected to a data network and a telephone netwoi-k.” (RX-1 at 

2:33-36; 436-39; Figure 1 I j Based on the Fox-egoixlg, the ad~ixl~s~t-at~ve law judge finds that 

respofldent has established that thc ‘L 14 patent discloses this limitation of claim 38. 

The C‘laimed Phrase “a method for processing call from the originating telephone 

to the user telephone according to user s~e~j~ca~~o~~s, the method comprising:” 

Respondent argued that this limitation is disclosed in the ‘1 14 patent, as found in KX-I at 

col. 436-47: Figure 1. (RPFF V.C.1.84; RFI; V.C.l,SS.) 

~~~plajnant argued that respondent has failed to meet its burden of showing that the 

’ 114 patent clearly and convincingly discloses this limitation. (CORFF V.C.1.87.) Specifically, 

complainant argued that, at frial, €~~de-T~oinson did not explain how the citations to Chestnut 

satisfy this limitation. (CRRFF V.C. 1.85-A,) 

The staff argued that this limitation is disclosed in the ‘1 14 patent. (SPFF 352 citing Tr. 

at 1430, RDX-10 tlt 20, RX-I at 4~45-57, RX-L at 5:13-21.) 

Thc ‘ 114 patent discloses that: 

f.lihi.n an outside caller 30 places a call on the PSTN 6 the 

call is directed to the called party oftlce extension LO by the private 

branch exchange 4. Before the PBX sends the call to the called 

party office extension 10, the telecommu&e server 2 checks the 

computer network 8 to see if the called party is logged on. If the 

called party is logged on, the telecommute server 2 instrticts the 

private branch exchange 4 to forward the call to the telephone 

extension associated with the device the called party has used to 

95 
log onto the computer network 8. 

’T’tie teleconimute server 2 selects the telephone number to which 

incoming calls should be forwarded based upon a record stored in a 

meniory which associates a fornarcling telephone number, such as 

the nilinher for called party home phctne 22. with a network logori 

device, such as called party home workstation 26. 

The teleconimute server 2. can also forward incoming calls 

bawd upon ather eiltcria including day or date, time of day. the 

identity of the caller, or any prepr(~~~~nied set of rules. 

forwarding a call k, processing a call) from an outside caller (&, originating telephone) to the 

called party &I.: user telcphone) brised on whcre thc called party is logged onto the computer 

network or based upon other criteria including any prepro~~~~~ed set of rules (&. user 

specifications). Therefore, the ad~~nis~ra~i~e law judge finds that respondent has esrablished that 

the ‘1 14 patent explicitly discloses this limitation of claim 38. 

The Claimed Phrase “accepting an incoming call designated for thc user tclephone 

from im orighating telephone of a subscriber. . .” 

Respondent argued that the ‘1 14 patent discloses this limitation. (RFF V.C.l.88,) 

~o~plain~~nt argued that respondelit has failed tu meet its burden of showing that the ’114 patent 

clearly ad convincingly discloses this limitation. (CRRW V.C.1.91-A.) 

The staff 8rgued that the ’1 14 patent djscloses this limitation. {SPFF 353.) 

As cited, w. the ‘1 13 patent explicitly states that: 

When an outside caller 30 places a call on the PSTN 5 the 

call is directed to the called party office extension 10 hy the private 

96 
branch exchange 4. Bcforc thc PBX sends the call to the called 

party o€ficc extension 10, the teleconiniute sct-vet- 2 checks the 

(RX- 1 at 4:4X-53 (emphasis added).) Thus. the ‘I 14 patent discloses that. hefore an incoming 

call is directed to thc called pany, the PBX accepts the incoming call and checks to see if the 

called party is logged on. Addi~ionally respondent’s expert Hyde-Thornson testified that 

“accepting an incorning call is a key capability of thc Telccomrnute Server. Basically a11 it does 

is accept incoming calk, route them to appropriate extensions.” (Tr. at 1425:5-10,) Thus, the 

~~n~inist~~~i~~ law judge finds that respondent has es-tablished that the “1 14 patent explicitIy 

discloses this limitation of claim 38. 

The Claimed Phrase “accessing a data structure contained within a coniputetnetwork that is i~~de~~~~~dent of the telephone network to retrieve user-selectdble 

criteria for call processing stored within the data structure” 

Respondent argued that the ‘I 14 patent discloses this limitation, citing to RX-1 at 

3:30-32,4:64-5:2, 5:13-28; H~de--~hoIns~n TF. at. 1426:11-1427:21. (RFF V.C. 1.32) 

Complainant argued that respondent’s expert did not explain at trial why the citations 

referred to by respondent show that this limitation is met, and further that the citations do not 

support respondent’s position. (CRRFF V+C* Z,92-A, GRRFF V.C. 1.92-B.) 

The staff argued that. the ‘1 14 patent discloses this limitation. (SPFF 354.) 

As found in detail with regard to the limitation of claim 1 of the *it39 patent requiring ‘% 

data structure contained within a computer network to store user-selectable criteria for call 

processing, wherein the data sfnicture stores the user-selectable criteria in one or 11zore lists that 

are used in filtering an incoming call,” the adm~nist.ratl~e law judge fobund that the data structure 

clement of this limitation disclosed in the descriptrlon in the ‘I 14 patent as a rccord stored in 

97 
meinoi~ on the tele~onin~~ite sewer. See, supra; see also. G, RX-1 at 634-46. Also, as found 

with regard to claim 1 of the ‘434 patent, the ~drn~njs~rat~~e lw judge found that the ‘1 14 patent 

discloses that the data structure stores user-selectable criteria which is used for call processing. 

I_ See, ~JKJ sec also- e.%, RX-I at 5:18-25.6:34-46. A~dltion~ill~, the ‘1 14 patent djscloses that 

“[tlhe telecommute server 2 selects the telephone number to which incoining calls should be 

forwarded based upon a record stored in a mcmoty . . .” (RX-1 at 4:@-66.) Thus, the 

administrative law jiidge finds that respondent has established that the “I 14 patent explicitly 

discloses accessing the data structure lor call processing as required by the limitation at issue. 

Further, Figure Z of the ‘ 113 patent shows the tel~~on~n~~ite server as part of the computer 

network and separate from the PBX and PSTN that are part of the telephone network. See RX-3, 

Figure I, Thus, as construed hcrcin, the administ~~t~~/e law judge finds that the ’1 14 patent 

discloses a data structure contained within a computer network that is physically distinct from the 

telephone network. Accordingly, for the reasons found, supra, the administrative law judze Finds 

that respondent has established that the ‘1 lit patent discloses this li~it~tionf claim 38. 

‘Ihe Claimed Phrase “wherein some of the user-selt=ctable criteria is conditioned 

on current activity of subscribers on the computer netwxk 01- accctrding to current 

activity of the user on the computer network‘” 

~esp~ndent argucd that the ‘1 14 patent discloses this limitation. as it discloses filtering 

an incoming call based on the current status of the user on the computer network, and forwards 

calls based on whethcr a user is logged on to the computer network (current status of the user). 

(REF; V.G. 1 .W.) 

Com~lainant argued that it does not, because the act of logging on is nnt current activity 

of the user on the computer network. but instead is a precursor to such activity. (CRRFF 
V.C I .97-D.) 

The staff argued that this li~i~ation is disclosed by the ‘I I4 patent. (SBr at 73-74: SPFF 

355.) 

As found, supra, regarding the limitation of claim 1 of the “439 patent that states 

“wherein sonie of the one or more lists are used to filter the incoming call according to current 

activity of sutiscribcrs on the computer network or according to current activity of the user on the 

computer network,” the administrative law judge finds that the disclosure in the ‘1 14 patent of 

the Pelecommute Server checking the list contairied in the data structure of where the callcd party 

is logged on, and on what logon device, to determine where to a~propriatel~ forward the 

incoming call satistjes the requirement of this limitation at issue calling far the use~-sel~cL~~ble 

criteria to be conditioned on the cur-t-ent activity of the mer on the computer network. $ee supra; 

--_c see also. ex., RX-1 at. 6:6S-7:3. Accordingly, the ~d~ni~strat~~?e law judge flnds that respondent 

has established that the ‘114 patent discloses this imitation of claim 38. 

‘lhe Claimed Phrase “processing the incoming call of the subscriber in accordance 

with thc uscr-selectable criteria.” 

Respondent argued that this limitation is disclosed by the ‘1 14 patent, citing to RX-1 at 

col. 4354-$2, cot. 5:44-48, col. 6:34-43, cot. 6:67-7:4; ~yde-Tho~so~ Tr. at 1428: 11 -1429: 11. 

(RFF V.C. 1.103.) 

C#mpIaina~t argued that, at trial, Mr. ~-€~de-Tho~son did not explain how the above 

citations to Chestnut satisfy this limitation. (CRKFF V.C. 1.103-A.) 

The staff argued that this ~~~~taL~on is disclosed by the ‘ 114 patent, (SBr at 74.) 

The ‘I 14 patetit espltcitly discloses that: 

99 
Beforc the PBX sends the call to the called party office cxtcnsion 

10, the telecommute server 2 checks the computer network S tu see 

if the called party is logged on. If the called party is logged on. the 

tclecornmute server 2 instructs the private branch exchange 3 to 

forward the call to the telephone extension associated with the 

device the called party has used to log onto the computer network 

8. 

(RX-1 at 4:50-53.) The ‘I 14 patent also discloses that “[tlhe telecomtnute server 2, can also 

forward incoming calls based upon other criteria including day or date, time of day, the identity 

of the caller. or any preprogrammed set of rules.” & KX-1 at S:18-2f; see RX- 1 at 6:34-43. 

As plainly stated in the cited excevts, from the ‘I 14 priknt, the telecomrnule server can forward 

an incoming call based on any number o€ user-selectable criteria, including where the user is 

logged onto the computer network. Thus, the a~rnin~~trati~e law jud3e finds that respondent has 

established that the ‘I 14 patent cxplicitly discloses this ~~~i~atjo~ of claim 38. 

Based on the foregoing, the a~rninistratl~fe Iaw judge finds that respondent has 

established. by clear and convincing evidence, that the ‘1 14 patent discloses each limitation of 

claini 38 of the ‘439 patent. Accordingly, the ~dm~nist~~~ive law judge finds that the ’I. 14 patent 

to Chestnut anticipates claim 33 of the ’4439 patent, 

2. Miner Patent 

a. 

Respondent argued that US. Patent No. 5,652,789 issued to Miner (the ‘789 patent) 

Claims 1,25 And 38 Of Thc ‘439 Patent 

anticipates ii~depend~nt asserted claims 1, 28 and 38 of the ‘439 patent in that it discloses 

l‘orwardmg calls based on the user’s current status mi the c~mputer network. a computer network 

access port, a controller? aijd each of the remaining ~irni~~ti~~ of said claims of the ‘439 patent. 

(KBr :kt t24.) 

100 
~o~pl~~nant argued that claims 1, 28, and 38 of the ‘439 patent ai-e not antici~a~ed. 

because resp>iiderit hils to show, by clear and cizrivincing evidence, that Miner discloses a data 

stnicture, user criteria in said data structure, that the iiser criteria arc uscd to filter incorning calls. 

the usc of computer network access ports, and the existence of a controller- {CBr at 15 1-1.56.) 

Complainant further argued that respondent uses the same arguments regarding claim 28 of the 

’431) patent as for claim 1 of the ‘339 patent, and thus claim 28 is not anticipated by Miner for the 

sanie reasons as claim I of the ‘438 patent is not anticipated. (CBr at 156,) Likewise, 

com~~la~n~~nt argued that for the same reasons that claims 1 and 25 are not anticipated by Miner, 

claim 38 is not anticipated by Miner. {CBr at 156-157.) 

The staff argued that the ,Miner patent discloses the “current activity of the user on the 

computer network” limitation, the controller and computer network access port ll~tat~o~s, and 

each of the other limitations of the asserted claims and hence anticipates the ctaitns in issue. (SBr 

at 75-77.) 

The Claimed Phrases “wherein the data structure stores the user-selectable criteria 

in one or more Iists . . - wherein some of the one or more lisrs are used to filter the 

incoming call according to current activity of suhscribers . . . or . . . user on the 

computer network” (JX-1 at 14: 18-26), “user-selectable critena for call processing 

. . . wherein sonie of the user-selectable criteria is conditioned oti current activity 

of subscribers . . . or . I . user on the computer network” (JX-1 at 16:66-17:4) and 

“user-selectable critena for call processing I , . wherein some of the 

user-selectable criteria is conditioned or1 current activity of subscribers . . . or. . . 

user 011 the computer network“ (JX- 1 at 18: 9- 16.) 

Each of the claimed phrases, supra. of cXai rns 1, 28. and 38 of the ‘$39 patent include a 

limitation that requires call processing based on user-selectable criteria conditioned on the 

current activity of a subscriber or user on the computer network. The parties have agreed that 

properly construed the phrase “curretit activity of the user on the computer network“ means the 

IO I 
“current status of the user on the co~p~ter network.’“ Order No. 15, atiached letter at 2, 

Respondent and the staff argued that the ‘789 patent discloses call processing based on 

user-selectable criteria ~ondlt~one~ on the current activity of a subscriber or user on the computer 

network. & RRr at 124-125; RRBr at 61-62; SBr at 75-76; SRBr at 40. Specif~c~ll~, 

respoIi~ieI~t atid the staff argue that the “789 patent expressly discloses processing phone calls 

based on a user’s current status as logged onto the ~~~p~~~e

network, (RBr at 124; SBr 76.) In 

support, both parties rely on various passages in the specificatton of the ‘769 patent and the 

testimony of respot~d~nt’s expert ~~yde-Tho~son. 

In particular, respondent and the staff noted that. thc ‘789 patent states that: 

As a first step in locating the subscri 

whether the subscriber is already connected to the system, either 

through another call or through some other c~~~~n~~nicat~ons 

medium (e.g. Logged into his computer), If the subscribes is on 

another call being handled by the system, the system bt-iefly 

interrupts that call to notify the subscriber that he has a call waiting 

and it. identifies the name of the caller. 1s’ the caller is also logged 

onto the system through his computer, the system may also send a 

visual message to the workstation notifyxng the subscriber of the 

call and identifying the caller.’4 

the system determines 

fRX-3 at 83-35; see also RBr at 153; SRr 76.) Res~ondent and the staff do not provrde any 

analysis of this passage as it relates to the ~~mitat~on at issue, However, the staff asscrts that the 

passage discloses call routing based on the user’s status as “logged on.” See SBr at 76. Wtiite the 

In the ‘439 patent the “user” is &e person being called and ihe “’subscriber” is the 

person doing thc calling. In the ‘789 patent, the “subscriber” is the person being called and the 

“caller” is the person doing the calling. Except where quoting evidence or testimony, the word 

 sei' will exclusrvely be used to descrrbe the person being called. 

The last sentence of this passage has an apparmrt error. Although the sentence begins 14 

‘‘[i]f the caller is also Iogged onto the system,” it appears plain from the remaining context of the 

sentcnce that the sentcnce should begin ‘“[ijf thc suhscribct- is also logged onto the system.’” 

102 
passage does a~kno~~led~e that in trying to locate the user, the system of the ‘780 patent will 

check to see if a user is logged into his computer, the passage does not discuss processing the calI 

in any way according to whether the user is logged onto his cc?mpurer. The last sentence of the 

states that if the user is logged onto the system, the system may send the user a 

visual messagc to the user’s computer about the caller. However, simply sending a visual 

rnessagc that notifies the user of the inc~~nin~ call and i~e~~t~€~es rhc callcr does not amount to 

call processing because there is no disclosure that the system docs mything with the actual 

incoming call. Additi~nall~~ the ad~i~Iiis~~.ati~/~ law judge finds nothing in the above passage that 

discloses any user-selectable criteria conditioned on the status of the user as being logged onto 

his computer. 

~esp~n~ent and the staff also note that the ‘789 patent discloses that: 

Once the assistant either recognizes the caller either through a 

match with a storcd vocalization or through the caller’s phoric 

number or labels the caller 3s unknown, it then attempts to locate 

the subscriber. It does this by carrying out a sequence of operations 

the first of which is to check the subscriber’s status. 1F the 

subscriber currcntly has ti connection established with his assistant 

(and he has not enabled a do not disturb function), then his status is 

available. lf the subscriber is not connected, then the assistant may 

check a secondary iiif~~ation source (such as a cellular network) 

to determine the subscriber‘s availab~lit~. Finally, the assistant will 

check the subscnber’s schedule+ The subsenher can set his 

ava~~~~i~~ty to indicate that he is accepting all calls, he is accepting 

no calls, or he is accepting oiily iniportaiit calls. 

(RX-3 at 7:s 1-65; sec also REF V.C.4.21; SX3r 75-75,) R~~pon~e~t docs not provide any analysis 

of this passage, Howfever, according to the staff. the passage discloses call routing based on a 

variety of indicators of a user’s status, including whether the user has actiwted a do not disturb 

function, and whether the user is available to take calls based on the icietltity of the caller. See 
SBr at 76, Although the passage does dssclose that a useris status will be cletel-mined dep~t~din~ 

on whether the user currently has a connection established with his assistant, there is no 

disclosure that the “connection” discussed in the above quoted passage rcfcrs to the user’s 

connection with a computer network, Xn fact. Microsoft’s expel? Chang, testified that the ahove 

passage is directed to checking the user’s status on a telephone network. & Tr, at 1750:11-19 

(“So it is pretty clear to me that the paragraphs referenced in this particular section refers to 

ability for the Miner’s elcctronic assistant to determine a user’s status over a telephone line, For 

instance, with reference to a cell or a network. It is not clear to me how this particular parapph 

could possibly indicate the cui-rent status of the user on the computer network.”) Ad~itiun~ily, 

there is nothing in the above passage that discloses any user-selectable criteria conditioned on the 

status of the user as being logged onto his computer. 

In addition, resprmdent noted that the ‘789 patent discloses that: 

When an incoming call arrives for a given subscriber there 

are a number of ways in which the assistant might handle the call, 

depending on the prefererices which the subscriber has previously 

selected. The assisraiit might directly forward the call to a 

telephone on the subscriber‘s desk phone, it might simply offer to 

take a message from the incoming caller, or it might attempt to 

locate the subscriber and offer to connect him to incorning call 

oncc he is locatcd. In h~nd~ing thecall, the answer call task first 

checks the subscriber’s status to determine which preference he has 

selected (step 500). 

(RX-3 at 3254-64; see also RFF S.C.4.19 (citing thc above quoted passage).) ~~~p~~~~edoes 

not provide any analysis of this passage and it is unclear from a plain reading of the text how this 

passage supports rcspondcnt’s argument that the ‘785) parent discloses the limitati~n in issue. 

Although the above quoted passage discloses that when the system receives an incoming call the 

104 
system first checks the user’s status, there is nothing in the passage to suggest that this “status” 

includes the user’s status as being logged onto his computer. In fact, ~~icroso~~’s expert Chang 

testified that, in his opinion, the above quoted passage does not disclose checking a user’s status 

on a computer network (which the limitation in issue requires), but rather discloses checking a 

tiser’s status on a telephone network. & Tr. at 1752: 11-1 8 (30 to me this is another example 

whcre the Miner system with the electronic assistant was trying to figure out what to do with the 

call by attempting to contact the user on the telephone systcm. And it is my opinion that this 

does not -- this is not the same as according to the current sratus of the user on the computer 

network,”), Further, even if “status‘” did include the user‘s status as logged onto his computer, 

the passage ‘”[i]n handling the call, thc answer call task first checks the subscriber’s status to 

deternine which preference he has selected (step 500)’’ (RX-3 at 3262-64) does not disclose any 

type of call processing based on the user’s status. To the contrary, said passage explicitly states 

that any call processing is based on the user’s preferences, not status. 

(showing that call processing is based on whether the user is taking calls immediately, screcning 

calls, or taking no calls). Moreover. the a~~n~strati~e law judge finds that said passage does not 

RX-3, Figure 24A 

disclose any user-selectable criteria conditioned on the status of the uscr as being logged onto his 

computer. 

Respondent and thc staff have relied on the testimony of respondent’s expert HydeThomson, who testified: 

Q- Go to page 4 of RDX-I 1 + The language there: And 

wherein some of the one or more lists arc used to filter the 

incoming call according to the current activity of subscribers on the 

computer network or according to current activity of the user on 

the computer network. 
Do you believe that element is disclosed by the Mincr reference’? 

A. 

Miner is: It then attempts to locate the subscriber. Et does this by 

carrying out a seqiience of operations, the first of which is to check 

the subscriber’s status. If the subscriber currently has a connection 

established with his assistant (and he has not enabled a do not 

disturb function), then his status is av,?ilable, If the subscfibcr. is 

not connected, then the assistant may check a secondary 

information source (such as a cellular network) to determine thc 

subscriber’s availability, Finally. the assistant will check the 

subscriber’s schedule. 

Yes. If we go to the next slide, slide 5, the language in 

So Lhe Miner system determines the L~S~T’S status on the 

computer network. There’s probably some further language in 

Miner that amplifies exactly how that does that. 

Q. If you look at 6 of RDX-1 1. 

A. Yeah. So when an ~nco~~~g call ai-rives for a given 

subscriber, there are a number of ways in which the assistant might 

handle the call depending on the preferences which the subscriber 

has previously selected. The assistant might directly fomwd the 

call to il telephone on the subscriber’s desk. It might simply take a 

messagc or might attempt to locate the subscriber to connect him to 

the incoming call once he is Located. In handling the call, the 

answer call task first checks the subscriBcr’s status to determine 

which preference he has selected. 

Q. 

reference discloses that element? 

And why is it that that indicates to you that the Miner 

A. so, again, slide 7, we -- Miner checks thc user status as 

logged on or logged aft’ the cornptiter network So in this first 

sentence ~i~~~li~hted~ it says: Whether the subscriber is already 

connected to the system, eithcr through another call or through 

some other ~omm~~njcat~(>ns medium (e.g. logged into his 

computer). And then in the last sentence: If the caller is also 

logged on to the system through his computer, the system may also 

send n visual messagc to the workstation notifying the subscriber 

of the calt and identifying the callcr. 

0, And why does that indicate to you that thc -- the element 

106 
that we just read is disclosed? 

A. 

Q. But why is that? 

A. 

the user is iogged onto his computer, and ‘chat’s a status of the user 

on the computer network. 

It does. It definitely indicates that to me. 

’CVhy? Because it explicitly talks about checking whether 

(Tr, at 1435-1437.) Pages 5-7 of RDX-I I, on which ~~~~e-Tho~so~ relies. quote the three 

p~isag~s from thc spccific3tion of the ‘789 patent set foizh supra, €~~de-T~ornso~~ concludes 

from the quoted passages that the ’789 patent discloses “checking whether the user is logged onto 

his computer.” which according tu ~yde-~lio~su~i is “a status of the user on the computer 

network.” [Ir. at 1437: 12-15.) Although Hyde-Thotnson testified that the ‘789 patent discloses 

checking the user’s status on the computer network. claims I, 28 and 38. of the ‘439 pten’c 

recpire more than simply checking a user’s status on the computer network. Rather, the 

hrnitation in issue require call processing based on uscr-selcctabk criteria conditioned on the 

user’s status on the computer network. Hyde-Thomson did not provide any testimony describing 

how the user’s status as lagged onto his computer is used to process an incoming call. Further, 

~yde-~~~o~ison did not testify that the ‘789 patent discloses any user-selectable criteria 

co~~dit~one(1 on the user’s status as logged onto his computer, 

As found, m, the ‘789 patent discloses that, in trying to locate the user. the system will 

check to see if the user is logged onto his computer. As found, suura, with regard to the ‘1 14 

patent to Chestnut, whether a user is logged onto his computer is the “current status of the user 

on thc computer network.” The adn~iI~isL~d~iv~ law judge finds that it is not sufficient, however, 

to merely show that the ‘789 patent discloses checking tlie user’s current status on the computer 

I07 
network Claims I, 28 and 38 of the ‘439 patent require call processing based on ~se~--s~le~t~~le 

criteria ~ond~t~oned on the status of the user on the computer network. The administrative law 

judge also finds no indication in the ‘789 patent that an mcoming cali is processed based on the 

user’s status as logged onto his cornputcr. Rather, he finds that the ‘789 patent simply discloses 

that if the user is logged onto his computer, the system may send the user a message itidicarrng 

that the user has an incoming call arid the identity of the caller. Moreover, assuming muendo 

the ‘7x9 patent did disclose call processing based on whether the user is logged onto his 

computer, the ~~~~inist~~&i ve law judge further finds no evidence presented by either respondent 

or the staff that the ‘789 patent discloses user-selectable criteria eonditioncd on thc current status 

of the user on the cornputer network as required by claims 1, 28 and 38. 

The Claimed Phrase “a computer network acccss port used by the telephone 

network to access the &ta structure such that he telephone network has access to 

the one or more lists over the computer network access port. . .” 

The claimed phrase in issue is found only in claim 1 of the -439 patent, Rzspondent 

argued that the Miner paten4 discloses that “[flor each channel, there is a set of ports that car) be 

attached to it. The pons, which are represented in software by port objects, refer to ~tipu~~~Itp~it 

devices supported on the interface cards. (RBr at 126 citing RFF V.C.4.26.) 

Complainant argued that Miner does not “disclose the controller {;.e. electronic rmistant) 

accessing anythi rig con tal tied with tin 1 the computer network via the computer network access 

port (i.e.* softwxe ports). (CBr at IS6 citing CPFF 3088, Tr. at 1763-1764.) 

The staff argued that Miner discloses this limitation. (SBr at 76-77.) Specifically, the 

staff argued that the controller, or electronic assistant, uses a port to retrieve the call-processing 

information from the database; which database is on thc computer network. (SBr at 77.) 

108 
The li~~ltation of claim I at issue requires a conipciter network access poi? that is rised by 

the telephone network to access both the data structure and the one or more lists contained in the 

data structure. According to the explicit language of claim I of the ‘439 patent, a computer 

network access port is something that links the telephone netuw-k and the computer network, 

which allows the teleptione network to access information on the computer network. & JX-1 at 

1427-36; ,3X-l at 521-522. Claini I of the ‘439 patent also requires that the telephone 

network be able to access both the data structure and the one or more lists an the computer 

network through the computer network access port. The electronic assistant disclosed by the 

Miner patent is “’a ~on~pL~te~*-~ased electronic assistant to receive and manage incoming mils to a 

subscriber,” (RX-3 at 3:4-5.) Thus, assuming u, that the electronic assistant disclosed by 

Miner is a controllcr and does ac~ccess a darta stnicture containing user-based criteria on a 

computer network via a computer network access port, the a~~~in~strative law judge finds that 

neither respondent nor staff has shown that said controller is a portion of the telephone network, 

as required by the claims of the ‘439 patent. Hence, the a~~~ini~t~at~~/e Iaw judge finds that 

respondent has failed to prove, by clear and convincing evidence, that the ‘789 patent discloses 

this limitation. 

Based on che furregoing, the ~d~~ini~t~~ti~/e law judge finds that respondent has not 

established, by clear and convincing evidence, that each of asserted claims 1, 38 and 38 of the 

‘439 patent is anticipated by the Miner patent. 

B. The Liffick ‘389 Patent 

1Zespondent argued that each of the Chestnut patent aiid the Munday patent mticipates 

asserted claims 1 and 7 of the ‘289 patent, (RBr at 89-47. j 

t 09 
~ompfaii~aiit argued that respondent has not e blished, by clear and convincirrg 

evidence, that either the Chestnut patent or the Muriday patent anticjpates the asserted claims in 

issue ofthe ‘289 patent. (CBr at 157-63.) 

The staff argued that the record does not contain clear and convi~cin~ evidence that 

asserted claim 1 and 7 of the ‘259 patcnt are invalid as anticipated by either the Chestnut patent 

or the Munclay patent. (SBr at 78,80.) 

1. Munday Pdtent 

a. Claim 1 

In the system of claim 1 of the ‘289 patent, the method therein has the ~olIo~f~~i~ 

limitation: “at: the computer network, receiving information from the telephone network that a 

first party from who a call is originating desires to establish telephone c#m~un~cation with a 

second patty.” (JX-2 at 18134-47.) (Referred to by respondent as “Limitation 3”). Respnndertt 

argued that the Munday Patent (US. Patent NO. 6,480,593 BI 1‘593 patent) (R~-187)>” 

discloses Limitation Ez, citing KX-187 at 3:56-63. Figure 5; Hyde-~ho~s~n Tr. at1377: 14- 

13789; Chang Tr. at 1901 :15-1904:34.) (WF 1V.C2.14.) 

The invention of the Munday patent (RX- 187) relates to apparatus and methods for 

controlling co~~~n~~ati(~n iietworks and routing, which therefore and particularly, hut not 

exclusively, can be employed to control call divert or data transfer in a communicat~o~~ network. 

(RX-187 at 1:7- I O+)’& The ‘593 patent at 3:56-64, cited by ALE, contains the subheading 

l5 The Munday patent dcrives from an application filed with the PCT on December- 3. 

1997, and is prior art to the ‘389 palent under at least 25 U.S.C. $8 102(a) and 102(e), {RX-187). 

The Munday patent, as to initiating a call divert, states: 

I10 
According to FIG. 1 a scenmo i~co~orat~n~ an 

~~~odi~~ent of the prcsent invention includes a local telcptione 

100 connected to a telephone network I30 via a wall socket 120. 

The confi~~~rati~n of the con~~iI~icatio~~s network 130 is not 

shown since it is not relevant tot he operation of the present 

~n~e~ti~n. This representat~on of the nehork 130 is intended to’ 

depict any type of ~o~i~~~ica~jons network including, for 

example, a local. private, national. or even an international 

network, wfhich pro~~des a call divert facility. For the present 

e~~bodj~e~t, however, the network IS assimed to be a PSTN. [BT 

public switched telephone netwurki71 

Also shown connected to the ~oni~~Iiica~io~s network 130 is a 

telephone 140, designated as a caller telephone, and a mobile 

telephone I SO, designated as a remote telephone. 

Connected in parallel with the local telephone 100, to the wall 

socket 120, is a computer- system 160. ‘The computer system 160. 

The computer system 160 comprises the standard features of a 

computer 1621; a keyboard 162; a mouse 164; a VDtJ 166; and a 

modem 170 which connects the computer to the wall socket 120 

arid thus to the network 130. 

and rhus to the network 130. The computer system 160 is, for 

example, an ~~~-~ornp~~tlbIe Personal Computer CPC ). 

computer to the wall socket 120 

The computer system 160 might alternatjvely initiate call divert via 

one or more other dcvices having a connection with the 

cum~~ini~a~ion network. In this case the computer system 1G0 

might not have its own direct coff~i~~nications network connection. 

The cornp~iter system 160 may be networked connection. The 

computer system 160 may be networked in a local area network 

Process 8, for initiating call divert, will now be described with 

referctice to FIG.4. According to FlG. 4. the process awaits a 

signal from process 7 to initiate call divert, in step 400. When a 

signal is received, the process issues a corntnand. in step 4 10, to 

the modem 170 to seize the telephone line. 

(RX-137 itt 5-15.) 

- See RX- I37 at I : 17- 18. 
(LAE) and he con~ec~e~ to the ~o~~~~unications network via, for 

example, a scrvcr which 1s connected by an a~~pro~riarc mea~is to 

t hc communi cat ions network. 

The cited FIG. 5 is referenced in the following: 

FTG. 5 illustratjve an alternative e~~o~i~~e~t of the prcsent 

invention. In FIG. S. components which are equivalent to 

components shown in FIG. I are indicated hy thc same rcferencc 

numeral increased by 400. ‘I’tic main difference between the 

e~bod~~ent in FIG, 1 and ttie embodiment in FIG. 5 1s that the 

computer system S60 in FIG. 5 is connected, via a modem (not 

shown) to the Internet 5%. Although the Internet S35 and the 

~~~~~njcat~ons network 530 are represented as two separate 

networks, this representation is for the purposes of clarity only, the 

skilled person appreciating that zn Internet connectian, in practice, 

is usually made across a normal co~n~u~~ca~ion~ network. Also, 

whilst in this example ttie Internet is used, it is clertr that other 

network types could be used. Again, however, the 

~o~~~unications nctwork in this ~m~odiment is assumed to be a 

PSTN. 

(RX-187 at 5:50-6_4.) The a~~~inlst~ative law judge does not find ~i~ltat~a~ B in RX-137 at 

3:56-63 or in Figure 5. 

Respondent, supra, relies on direct e~a~~nation of respondent’s expert ~~de-~~o~s~n at 

Q- All right. Let‘s look at page 4 Of KDX-13. NOW, the first 

elerncnt we have there, claim 1, says: At the computer nctwork, 

receiving ~nfo~~tio~ from the telephone network that a first party 

from whom a call is ~ri~itiatin~ desires to establish telephone 

con~n~~~njc~tion with a second party. 

Do you see that? 

A. Yes. 

QcIai in ‘t 

Do you beheve that Munday discloses that element of the 

I12 
A. Yes. 

Q- And why is that? 

A. Because that’s obviously what’s h~i~~eiiin~. When a call is 

initiated, ~t~for~at~on will be registered in the PSTN that a caller 

wishes to make a call to the second party. Arid this control system 

they’re talking about will decide whether that should be put 

through to the local extension or to another extension, another 

phone number. 

(emphasis added) However on cross exa~i~atio~ he testified: 

Q. 

Munday discloses forwarding a call request to the computer 

network; is that right? 

Now let’s look at the next slide, which is page 4. You tell us 

A. Yes. 

Qthat the system is receiving a phone call, correct? 

And you point to figure 4, and yciu say, this is what shows us 

A. Correct. 

Q. You have h~~hl~ghted block 400 of figure 4, and you say that’s 

the point where the system receives the phone call, correct? 

A. Correct. 

Qphone call, eorrcct? 

In fact. sir, block 400 has nothing to do with receiving a 

A. Fig 4 is 110w the system sets up the call divert, actually. 

Q. 

do with receiving a phone call, correct? 

Quite specifically, the block 400 receive signal has nothing to 

A. Correct. 

Q. 

to the computer network, if it does that, it might be somewhere 

else, but it is not in figure L5> correct? 

So where you say Miinday discloses forwarding if call request 
A. Correct. 

Q. 

c oxec t ? 

What figure 4 dcm is it receives a signal ti-om a timer process, 

A. Yes. I niean- when it has detected lack of activity over a 

~lc~-iodf time, such as when the screen saver starts, it will receive 

a signal from the inference engine, whatever they call it, and sees 

the line and set up a call divert and drop the line, and vice versa 

whcti it detects a new activity, w~ll go through a similar process to 

cancel the call. 

Q. 

equivalent of an cgg timer. correct’! 

And that received signal is just frotn like the cotnputer 

A. Yes. 

Q. When the egg timer goes off, it generates that signal to the 

processor figure 4 saying, do your thing, conect? 

A. 

is that if you need tu inomtor a computer’s activity, there is ;I 

couple of different ways you can do it. One is that you can send 3 

signal to the thing that’s doing the monitoring, whenever that state 

changes. And the other way of doing it is that you can just kind of 

kecp looking. 

Yes. I mean, I think what it might be worth just stressing here 

And when you are interested in knowing what the state of the 

computer is9 you can go and look again. But you can implement 

well a system for monitoring a user‘s computer activity through 

these kind of effectively ordoff switches, where this system 

Munday describes basically setting up call divei-ts and then when 

therc is new activity, canceling the call divert. 

So, you know, the telephony netrivork is kept apprised dl the time 

of what the state of Mi.. h~un~ay’s PC IS through this setup and 

strip down of the callQ. So the way it works is when the egg timer goes off, block 300 

receives a signal saying the egg timer has gotie off, and it starts this 

process to adjust whatever it adjusts, correct? 

A. Yes, 

114 
the first party from whom a call is ~ri~e~~rcs to establish 

telephone ~o~~nu~~Ica~Io?~ with a second party, correct? 

A. 

in this slide. 

I agree that the diagram is not cxactly relevant to the hinhlight 

Q. And, in fact, nothing in the Mundav patent receives 

info~-r~atiun from the telcphone network that il first narty from 

whom a,~o establish tekcon~m~inication with a second party. correct? 

A. Tf the definition in the context here is that the comwter 

network is the local PC. I thjnk f would concede that that is true2 

that the local PC doesn't see any inforniation about a new call 

coming in, 

The inf~~~~ation needed to write the call is already in the 

co~~u~iic~~ions network through this process of setting up and 

stt-ipping down the call divcrt. I think in the othcr inslance. where 

he talks in figure 5 about the more elaborate system involving 

computers on an extended Internet network, then X think you could 

argue that one of these blocks that he talks about in figure 5 does 

have knowledge of incoming calls and sirn~~lt~ne~~sl~ knowIcdge 

of the state of the user's PC 

(Tr. at 1680-84 (emphasis added).) 

Respondent, m, relies on the following testimony of c~~~la~nant~~ expert Ghmg for 

the disclosurc of Limitation €3 in the '593 patent: 

Q. All right. So now ~nce that, the computer becomes inactive 

and it. impleme~t~ the automatic call divert procedure, correct, so 

that computer then will ~~m~~nic~te with the Internet 535, right? 

A. Which computer are you referring to? 

Q. Computer 560. 

A. Uh-huh. 
Q. 

correct? 

So that will TIOM. corn~~~i~€~te with the Internet there, 5?S, 

ia. Correcl. 

Q. 

numbers to which the call shotrld be forwarded now, corrcct? 

And there It will co~ii~uii~€ate tohat, in our example, the 

A, 

and 590, which will in turn send the call divert command to the 

telephone network. 

The computer 566 would notify, X guess in this case unit SSO 

Q. It would send it via the Internet, correct? 

A. 

network. 

It will send the command through box 590 to the telephone 

Q. 

be stored 3s a data structure there somewhere, And~ou are 

saving is the telephone network, correct'! 

Okay. And that in€o~ation, the forwarding information, will 

A. 

supposed to go. once the timer expires? 

You mean the forwarding structure as far as wtvRere the call is 

Q. Yes. 

A. 

-r. 

X believe that information is stored somewhere on the 

Q. Right. But once it is ~~~~ar~ed to the, what you say is the 

relephune network, then that infomation will be stored so~ewh~r~ 

there, correct? 

A. There is a comniand that's sent by box 590 to the tekphctne 

network to instruct the tele~?ho~~ network how tu fctzwarcl those 

caIls. 

Q. 

not a permanent event, correct? 

And it has to store that information somewhere. right'? It is 

A. 

where ehc call is supposed to go. 

1 think that, yeah. telephone network has knowfedge about 

116 
Qin and then the caJl would then be forwarded accordirtg to whatever 

number was the result of the call divert procedure, correct? 

Okay. So fhen a call would come in and the call would come 

a. Comcct. 

Q. 

patent is that. you think the call forwarding jt~~or~~~iti~)n is riot 

stored at the coniputer network, coi~ect'! 

Okay. So your distinction then between Munday and the '281) 

A. 

clear to me frotn Nlr. Hvcle-Thornson's testimony where the call 

the first area that I am not clear on. 

The call forvriardine in~o~it is not 

Q. Okay- But in your example, what you are saying is that in the 

two -- with respect to the '259 patent, you heheve that in Mmday, 

there is no indication to the computer network about the incoming 

call; is that what you are saying? 

A. What I was saying earlier is that incoming crrll. telephone call 

comes in, there was no access or no retrieval of any user-selectable 

rules on the computer network, and in order to determine how that 

call should bc routed. 

Q. 

that information must come from the computer network at the 

monzent that the call comes in'! 

Okay. And it is your belief that under the '239 patent, that 

A. Which ~n~or~at~on? 

Q. The infomation about where to route the call. 

A. Information, the information on where to route the call is 

determined by the user-selectable criteria* So that informati on 

and those rules should be stored in the cornsnetwork in '259. 

(Tr. at 1901-04 (emphasis added).) 'lhe ad~injstr~it~v~ law judge does not find at1 admission in 

said ~~stiin~ny that Limitation B is disclnscd in the Munday patent. Moreover there is the 

f'ollowing testimony from complairzant's expert as to processes 7 and 8 of the Munday patent: 
Q. 

to the process 7 and process S and the figures 3 and il? 

Can you explain to the Court what is shown here with respect 

A. 

~~~iid~y does not satisfy the claim li~~tat~on ““receiving 

i~~~ormat~on from the telephone network” as required in the ’289 

claim. So at the bottom of the slide, figure 4. Mr. ~~1yd~-Tho~son 

pointed to figure 4. received signal, which is box 400 in figure 4 as 

receiving a signal from he telephone network. 

Sure. On this slide, I iim going to illustrate the fact that why 

We stated that that will be the condition, that will be the act 

necessary to satisfy the act of receiving info~-~at~oii fromthe 

telephone network. Now, to the contrary, the signal that’s 

referenced in figure 4, received signal, actually came from the 

process identified in -figure 3, which is a timer process or what Mr. 

Cordell referred to as an egg timer this morning in his cross. 

So what we have in front of us, in fact, is IWO computer process. 

coinuuter when^. 

It sends a sigtial to a second process on the con-iDUT(=r, and the sLme 

computer, and the process identified in figure 4, once they receive 

that timer exoiratioii si~s a call ~~ 

lorward to the telexdime network, 

So there is nothing here that indicated that this satisfies the 

remit-ement of receiving ~nfo~~tion from the tetenhone network, 

(Tr. at 17’86-88 (emphasis added).) 

Respondent also make rekrencc to RDX-13 at 7; RX-187, fig. 4, col. 5: 1-18 with respect 

to claim 1 of the ‘289 patent as well as claim ’7 of said patent. Respondent’s expert however 

agreed on cross-~~a~inatio~~ that this citation was it1 error and testified that in the Munday 

patent, where the computer neetvork is a local PC, thc computer clcarly dues not receive any 

information about an incoming calk sugr;l. 

Based on the foregoing the ~dministrat~~e law judge fitids that ALE has not est~~bl~s~e~~, 

118 
by clear and convincing evadence, that Limitation 33, &. whether the call routing procedure takes 

place cntirely 011 the telephone network (’. whether the computer network receives any 

i~~o~ati~n about the incoming call), is nccessarily prcsent in thc in^^^ patent and that iL 

would be so recognized by a person of ordinary skill at the time of filing of the ‘259 patent. 

In the system of claim 1 of the ‘289 patent the method therein, in addition, provides: “at 

fhe computer network, storing a set of pre-~ete~~ne~ rules for d~~errnin~n~ when the second 

party is available to take a call from thc first party,” (JX-2 at 18:52-54) which respondent has 

charicterizcd as “Limitation D.” Respondent argued that the Munday patent discloses Ljrnitation 

D of claim I, citing FCX-187 at abstract, 7:?4-41; ~~de-Th~~~on Tr. at 1382:7-1353:9; Ghang 

Tr. ut 1901: 15-1902:21.“) IKFF’ IV, C. 2.27.) The abstract of the Munday patent cited by 

respondent rncrel y states : 

In a con~~u~~~c~t~oris network (1?0>, call divert, for calls dit-ectzd 

to a local telephone (lOO), from the local telephone (100) to a 

rcmote telephone jlS0) is initiated hy a computer system (160) 

after the user has had no interaction with the computer system for a 

predetemxned period of time. Thus, a user need riot renietnber to 

itiitiajize cal1 divert mantially before leaving the vicinity of the 

local telephone (100) 

(RX-187, cover page.) Munday at 734-41 also cited by respondent states: 

A si~~pl~fied divert procedure can also he used such that more 

complex a~an~em~nts (suchas time of day, day of week 

dependent durarion) can be effected. In stieh cases, a ~redet~rmln~d 

control signal from the telephone or connected compufer or 

detected system may he tra~s~itted to control means of the 

network, the network effecting call diversiori in accordance with 

pre-pro~~m~ie~ a~an~e~ients. 

’‘ The Cliang testimony cited hcrc overlaps with the Chang testimony cited for 

Limitation €3. Sce sm {RFF VI.C.214). 

119 
The ~d~i~is~~ati~~e law judge does not find ~~i~~itat~oTi D in said portions of the ~unda~ patent. 

The testimony of respondent’s expeit Hy~e--~h~~tnson, cited by respondent m, reads: 

Q. Ail right. Let’s go to KDX-13, pagc 9. It says: At the 

computer network, storing a set of ~re~~e~ei~i~~e~ rules for 

determining when thc second party is available to take a call from 

the first party. 

Do you see that? 

A. Yes. 

Q. Do you believe that clement is disclosed by thc ~un~ay 

patent? 

A. Yes. Because you can have a simple nile whxch just says, 

divert to this number when I’m riot there or -- but it also, in the 

Munday patent, taIks about, on the right-hand side here, a more 

sophist~c~ted typc of capability. And he says: A simplified divert 

procedure can also be used such that more complex a~ang~~~nts 

(such as time of day, day of week, dependent duration) can be 

effected. 

So this implies that there are - there’s an ability to set an some 

rules on how calls will be diverted, different numbers that it will be 

diverted to based on time of day, day of week and thax kind of 

m. 

Q. 

wo~ild understarid from reading this? 

And is that something that a person of ordinary skill in the art 

A. 

a~an~ement~ can be effected. 

Yes. Yes. It’s implicit in saying that these complex 

The administrative law judge finds that such testimony on its face, having the word “implies” 

indicates that Limitation D is necessarily present. The €‘hang testimony cited by &E was cited 

by ALE for Limitation E. Sec supra. Moreover, the administrative law judge finds that Chang in 

said testimony, supra. is merely referring to the forwarding i~f@rm~~t~on, ~iice the time expires, as 

I20 
stored somcwhere or1 the computer. S~~njfican~ly Chang also testified: 

Q. 

c DX- 269- 

Can you describe for the Court what you have shown on 

A. On CDX-269,T have reproduced figure Ill-om the Munday 

patent. And this also was referenced in RDX-13, page 2. And here 

I think Mr. ~yde-Thomsoi~ attempted to describe what he 

considered to be a telephone netufork and the computer network, 

and that those were hi~hlighte~. And f believe he pointed to the 

computer 162 as the computer network, and tie pointed to two 

telephones, 100, and 190 as the telephone network. And those zre 

also highlighted. 

The problem with this scenario is that 1 was unable to identify 

where the set of predetermined niles could be stored on the 

system, It wasn’t very explicit. in Mr. ~yde-~hornson~s testimony, 

and I just wasn’t able to figure out how that wouId work. 

Q. Can such rules be stored on aiLJq1 fom? 

A. Abso lu telx, absol ulel y. 

ITr. at 1789-90 (emphasis added).) 

Based on the foregoing. the administ~at~ve law judge finds that Respondent has not met 

its burden in establishing that Limitation D is neccssL-irily prcscnt in the Munday patent and that it 

would be so recognized by a person of ordinary skill at the time of the filing of the ‘289 patent. 

The method in the system oF claim 1 of the ‘289 patent also provides: “at the computer 

network, using the set of a pre-determined rules to process I) the info~atioi~ received from the 

telephone network regarding the call being originated by the first party, and ii) inlormation 

regarding ttie monitored activity of the user computer of the second pai-ty, to detemxne when the 

sccond party is available to take the call originated by the first party.” (JX-2 at 1855-61.) ALE 

A PBX is a telcphonc switching system that is usualIy privatcly controlled by a 

business and is also a cornhination of hardware and software. % Section TV, w. 

121 
has referred to this limitation as '"Limitation E." (KFF lV.C.2.31) ALE argued that 11s expert 

~~dc-~homson explained that the ~~in~~y patent discloses "Limitation E' in the following 

tes tixnoxi y : 

Q. 

computer network, using thc set of a ~r~dctermi~ed rules to 

process the i~fo~ation received from the telephone network 

regarding thc call being originated by the first party, and, two, 

information regarding the monitored activity of the user computer 

of the second pat'ty, to determine when the second party is 

available to take the call originated by the first pmy. 

Now, Iet's look at RDX-3.3, page 10. Here element: At the 

Do you have an opinion 3s to whether that element is met by the 

Munday reference'? 

A, Yes. Yes. Andyes,itis, 

Q. And what's the basis for that? 

A, Well, he describes the process of how the routing of calls will 

be changed based on the activity that's being monitored on the 

computer or, you know, the mouse movements and things. And 

when there is tnouse movements for z period of time after the last 

mouse muvement or keyboard stroke, there will -- calls will be put 

through to onc number. And aftcr that time, timc out, it will go to 

another number. diverted to another number. 

And come back to the first number when there is any renewal of 

activity. 

So he describes the whole process and it's, you know, including 

the spccial codes that you would use in the British tclecom system 

fur setting up call diverts. 

Q- For settmg up Mihat was that? 

A. 

something like star 21 star and then the nurriber you want to divert 

your. phone to. 

Call diverts. You cm set up a call divert by putting in 

Q- And how is it that you belicvc that the ~~nday reference 
discloses using the monitored activity of the user computer to 

determine that the party is availablc to take the call? 

A. 

deduccd that thc user is back at his computer. And under the 

Munday system, a cancel call dive12 instruction is given to the 

network so that calls will now be routed to the desktop phone 

associated Miith the computer. 

Yes. Because as soon as some new activity is detected, it is 

(Tr. at 1383-1385) (RFF XV.C.Z.S?> ‘The administrative law jiidge does riot find that said 

testimony establishes that Ll~~tation E is necessarily present in the Munday patent. Morcrover 

the phrase ~~~Ii€o~~~ti~~n received from the telephone network regarding the call being originated 

by Ihe first party” recited in Limitation E refers back to Limitation B, (JX-2 (col. 18:36-65)) and 

the phrase “set of pre~~ete~ined n1les” recited in Limitation E refers back to the “set of pre- 

~ete~~ned rules” recited in Limitation D, (JX-2 (col, 1 8:36-56). j ‘The ad~i~istr~t~~~e law judge 

has found that Limitation B and D we not necessarily fo~rnd in the Munday patcnr. See supra. 

Based on the foregoing, the ad~i~istrati~e law judge finds that Respondent has not 

established, by clear and convincing evidence that Limitation E would necessarily bc fo~incf in the 

Mundrty patent by a person of ordinary skill at the time of filing 01 the ‘289 patent. 

Claim 1 of the ‘289 patent further provides: “using the info~ati~~ processed at the 

computer network to fkcilitate cannecting the call originated by the first party through the 

telephone network to the secondary party.” (JX-2 at 18:62-65.) Respondent has rekrred to this 

limitation as “Limitation F’ (KFF IV.C.2.41.) The phrase “information processed at the 

computer network” recited in Limitation F refers back in part to “information received from the 

telephone network“ referenced in Li~iitatj~ns E arid E. (JX-2 (col. I 8:36-55).) The 

adminis~ra~i~/~ law judge has found that ~l~it~tions €3 andE are not‘ n~;sc-lesssily found in the 

123 
Mun&dy patent. & sup. Hence, tie finds that respondent has not established, by clear aiid 

convincing cvidcnce, that Limitation F is nccessaril y found in the Mun&iy patcnt. 

Based on the foregoing the ~di~in~strat~~e law judge finds that AXE has not established, 

by clear and convincing evidence, that claim 1 of the “259 patent is anticipated by the Munday 

patent. 

b. Claim 7 

In the system of claim 7 of the ‘289 patent the method therein provides: “at the computer 

network, receiving information from the telephone network that a first party from whom a call is 

o~~inatin~ desires to establish telephone ~o~i~iLinication with a second party.” (JX-2 at 

‘13:32-35), (Rcfcrrcd to by ALE as “Limitation 2)”) (RFF IV.C.2.61) ALE argued that the 

Munday patent discloses limitation D of claim 7, citing KX-187 at col. 3:56-64, Figure 5; 

Wyde-Thomson Tr. at 1377:14-1375:9; Chang Tr. at 1901: 15-1904:2-4.)’” (RFF IV.C.2.62.) 

The ~u~day patent at 356-44, cited hy respondent rcads: 

The computer system 160 might alternatively initiate call divert via 

one or more other devices having a connection with the 

~oni~utiic~tion network. In this case the computer system 160 

might not have its own direct coin~~u~~icatiotis network connection. 

The computer system I60 may be networked in a local arc3 

network (LAN) and he connected to the c~~~rnL~n~~ati~~ns network 

via, for example, a server which is connected by an a~~prop~a~e 

means to the com~unica~ions network, 

As with L&nit&iori B of claim 1 of the ‘289 patcnt, the ad~inistr~ti~/e law judge Finds that 

Li~iitat~o~~ D of claim 7 of the ‘289 patent ha? not been ~~ta~~ish~d hy ALE to be necessarily 

preserit in the ,l/funday patent and that it would be so recctgnrzed by a person of ordinary skill in 

The same citations were cited by ALE with reference to Limitation B of claim 1 of the 

‘289 patent and arc set forth supra. See RFF 1V.C. 2.14. 

124 
the art: at tile time of filing of the ’289 patent. 

In the system of cIairn ’9 of thc Munday patent the method therein also providcs: “at the 

computer network, xtoiing a set of ~red~te~~ne~ niles for dete~~nr~n~ when the seconrd party is 

available to take a call fmm the first party.” (JX-2 at 19:39-41.) (Referred to by ALE as 

“Limitation F’). ALE argwd that at the hexing. its expert My&-Thornson explained that a 

person of ordinary skill in the art would understand that the Munday patent discloses Limitatron 

F. (Tr. at 13827-1 3839.) (RFF IV.C.2.7S) ~yde-~ha~~on however admitted that Munday does 

not expressly disclose Limitation F: 

Q. 

Munday patent? 

Do you believe that element [Limitation FI is disclosed by the 

A. Yes. Because you can have a simple rule which just says, 

divert to this number when I’m not there or -- but it also, in the 

Munday patent, talks about, on rhe right-hand side here, a fnore 

sophisricated type of capability. And he says: A simplified divert 

procedure can also be used such that more complex ~rr~~~~~e~ents 

(such as time of day, day of week, dependent duration) can be 

effected. 

So this implies that there are -- there’s an ability to set up some 

rules on tiow calls will be diverted, different -tiumbers that it will he 

diverted to based on time of day, day of week and that kind of 

thing. 

Q. 

ttould ~n~erstan~ from reading this’? 

And IS that something that a person of ordinary skill in the art 

A. Yes, Yes. It’s imrdicit in saying that these coninlex 

a~~a~i~einents can heeffeered. 

(Tr. at 1352: 14-1383:9 (emphases adcfed).) 

Bzsed on the foregaing, the a~rn~nist~at~~~e law judge finds that Limitations F is not necessarily 

found in the Munday patent. 
Xn the system af claim 7 of the ’289 paterit the method further thereiri provides: 

“at thc computer network, using the set of ~~r~dete~ined rules to 

process II the inf~r~at~o~i received from the telephone nerwork 

regarding the call being oi-iginatcd by fhe first party, and ii) 

inf~r~~at~on regarding the monitored activity OF the user computer 

of the second party, to determine wtieri the sccorrd party is 

available to take the call originated by the first party.” (JX-2 at. 

42-48). 

(Referred to by ALE as “Limitation CY’> The phrase ~‘in~o~at~on received from the telephone 

network regarding the call being originated by the first party’’ recited in limitation G refers back 

to ~i~i~ta~io~i 13. (SX-2 (col. 18:36-65). j ’The adniin~~tr~tive law judge has found that Limitzztion 

D is not necessarily found in the Munday patent. Hence he finds that ALE has not ~s~ablished, 

by clear and convincing evidence that said Limitation C is necessarily found in the Munday 

patent, 

Based 011 the foregoing, the admjni~t~~~i~~~ law judge finds that ALE has not ~stab~lsh~~, 

by clear and convincing evidence, that claim 7 of the ‘289 pajent is anticipated by the Mtinday 

patent. 

2. Chestnut Fatent 

a. 

~es~ondent argued that asserted claims 1 and ’7 of the ‘2x9 patent recite “monitoring 

Claims 1 And 7 Of The ’289 Patent 

activity of a user computer connected to the computer nctwork and associated with the second 

party;” that Microsoft construes this limitation to mean mon~to~n~ the sta~us of a user computer 

connccted to the computer network and associated with second party; and that the Chestnut 

patent discloses this limitation under Microsoft’s constr~~ct~~~n because the Chestnut patent 

monitors whether and from where the user’s computer is logged onto the computer network to 
determine wherc to forward a telephone call. (RBr at 89.) 

Each of ~~~~l~~i~ant aid the staff has argued that respondent has not ~stab~ished~ by clear 

and convincing evidence, that the chest nu^ patent anticipates the asserted claims t and 7 of the 

‘2289 patent. 

The ~d~lnistrat~ve law judge in Section W.A. 1 supra has rejected complainant’s 

proposed construction for “motiitoring activity of a user computer connected to the coinputer 

network‘’ and has found that it means determining whether the user computer is “active or idle.” 

The Chestnut patent relates to a telecommute server that ‘“closely integrates a company’s 

LAM with its telephone network and controls call forwarding based upon user activity on an 

associated con-lpiiter tcnninal.” (RX-1 at 225-28, 1 :4-9.) It discloses that the telccommutc server 

can forward telephone calls “based upon the device used to log onto the computer network by the 

called party.’- {RX-1 at Abstract.) In particular, the Chestnut patent discloses that call forwarding 

can be based on “the called pai’ty’s current or no st recent network logon device.” (RX-1 at 

7:3-3.) Significantly the Chestnut patent discloses routing calls based on whether the user is 

logged in. Thus it states under ‘‘~~~~RY OF TEE ~VEMTI~N: 

so that calls are forwcirded to different telenhone lines associated 

with telephones ordin^ upon a 

predefined schedule. Alternatively, call forwarding may be made 

conditional based upon other information reccxved by the telephone 

system, such as caller D or ANI. The system can also be set up to 

alter the schedule if it detects that thc called nartv is loa~ed orito ;z 

tetlninal associated with a different telephone extension than the 

one defined in the schedule. 

(KX-1 at 2:52-61 (emphasis added).) Later on under DETAILED ~~~~OF THE 

127 
When an outside caller 30 places a call on the PSTM 6 the call is 

directed to the called party office extension 10 by the private 

branch exchange 4. Bcforc the PBX sends the call tu thc called 

party ot‘fice extension 10, the telecornrnittc server 2 checks the 

comzmter network 8 to see if the called art^ is logged on. If rhe 

-ed on, the telecomrnute server 2 instructs the 

private branch exchange 4 to forward the call to the telephone 

extension associated with the device the called party has used to 

log onto the computer network 8. 

(RX-li at 4: 48-51 (emphasis added).) The adtninlstratK~ie law judge finds that being togged in is 

not the same thing as being active or idle. Rather, a user who is logged in can be either active or 

idle, as disclosed by the specification of the ‘239 patent: 

The computer operating system, such as the Windowrs@l operating 

system, is capable of monitoring user activity on the computer. For 

cxample, the opcmting system on the callee computer 154 can 

detect user activity on the keyboard 554 a or the mouse 154 b . & 

monitoring this activity, the operating system can determine the 

user’s status and activate certain software Drograms, such as a 

screen savcr, when no user activity has been detected for a certain 

period of time. Under these circumstances. the operating system 

 ermine that the caIle~ter 154 has entered an “idle” 

- state. 

(JX-2 at 14:37-43 (emphasis added).) Thus, the specification discloses a user who has logged 

irito the computer and tllen ceased using the computer without specifically logging out: that is, 

has become *‘1dIe3’ while still being logged into the computer. 

Based on the foreguing, the ad~ini~trative law judge finds that respondent has not 

establsshed, by clear and convincing evidence, that asserted claims 1 and 7 are anticipated by the 

Chestnut patent. 

C. The O’Keal ‘064 And ‘357 Patents 

1. Swam 01- Nagtli Patents 

128 
Respondent argued that if both the GCI and TUX lin~~~atjons arc construed as Microsoli 

conteilds. then a11 the asserted clairxis of the O’Neal ‘064 and ‘357 patents are invalid on the 

ground that a Swartz patent (U.S. Patent No. 6,445,694) (RX-5)2’ nr the Nagai patent (US. 

Patent No. 6,636,587 (RX-4)”: anticipates said claims. (RBr at SS-68.) 

GompXainant argucd that ALE’S anticipation defense fails ticcause it does not clearly sild 

convincingly demonstrate that each limitation of ~tny of the asscrted claims of the O’Neal patents 

is present in either the Swartz or Nagai parents. /CBr at 163.) 

The slaff argued that under the “correct” construction of the GIB and T7.E li~jtatiotis, 

neither the Swam patent nor the Nil@ patent anticipates the asserted claims of the O’Neal 

patents. (SBr at 82, 85,) 

The administrative law judge has interpreted the claim phrase “generate [or generating] a 

single graphical menu for displa~jng said ~o~n~un~cat~~n options for each of said 

~~mniunicati~n services at the same time” (the GUE iin~ita(ion~, which is present in each of the 

asserted claims of the U’Neal patents, 3s ”generate, or generating, one graphical mew for 

displaying all of the co~m~nic~tion options for all of the pluraIity of con~nl~injcation scr~ices‘~ 

~ See Section VI.B.1, supra. 

The ~~dm~nlstr~tive law judge finds that the graphical user interface disclosed by Swartz is 

not “onc graphical menu” but rather is tiierarchxcal in nature and requires the use of multiple 

screens to change options. RX-5, Figs. 2-1 1. Also, the Nilgai patent is found to disclose not 

” ’I’he Schwartz parent derives from an application filed <>ti Miarcy 2, 1998 and is 

therefore prior art to the O’Ncal patents under at least 35 U.S.C. 5 102(e)(2). 

3’ 

-- The Napai patent derives from itn application filed on June 24, 1998 and is therefore 

prior art to the U’Neal patents under at least 35 U.S.C. 3 10Z(e)(2). 

f 29 
“one graphical menu“ but the usc of nzultiple menus to chanpc options. fee RX-4, Figs. 5,6. 

Based on the foregoing the admin~strati~~ law judge finds thar r~s~~T~~~~t has not 

established, by clear and convincing evidence, that the asseited claims 01 the U’WeaI patents are 

anticipated by either the Swa&z UT the Nagai paletits. 

VIII. Ilnfri ngement 

The unhir acts coves& under Section 337 include “all forms of infringement, including 

direct, contributory, and induced i~i~ri~i~ei~ent.” Certain Home Vacuum Packagin9: Machines, 

Xnv. No. 337-TA-496, Order No. 44, 2004 TTC LEXTS 202 * 2 n.2 (March 3,2004). To establish 

infringement, there must be a pr~pondcr~nce of evidence. 

States, Inc, 441 F.3rd 963 (Fed, Cir. 2006). A ~ete~n~nation of patent i~~~~g~rnent encompasses 

a two-step analysis, ,261 

F.3d 1329, 1336 (Fed. Cir. 2001) (Sci tned). First, the court d~te~ine~ ths scope and meaning of 

the patent claims asserted, and then propcrly construed claims are cornpared to rhe allegedly 

jnf~n~~n~ devxce, Xd. “‘ljteral ~n~~~~~rnent of a cXaim exists when each of the claim limitations 

reads on, or in othcr words is found in, the acctrsed device.” Allen Engrneering. Coin. v. BartelI 

Xndus., 299 F.3d 1336, 1345 (Fed. Cir. 2002). 

Under the doctrine of equivalents, “a product or process that does not literally infringe 

upon the express terms of a patent claim may nonetheless be found to infringe if there is 

equivalence between the elements of the accused product or process and thc clsimed elements of 

the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chern, Co., 520 tJS. 17, 2 1 

(1997). Equivalency may be dctennined using the “triple identity test” and thus “focusing on the 

function se~lred by a particular claim element, the way that element serves that function, and the 

130 
result . I . obtained by that element . . . .” Id. at 39. Regardless of the linguistic frmework of the 

test used. the “essentially inquiry” is: “fldloes the accused product or process contain elements 

rdentical or equivalent to each claimed element of the patented intentioti’?” at 40. 

Direct infringement includes the making, using, selling, offering for sale and importing 

into the United States an infringing product, without authority. 35 U.S.C. 5 271(a). To prove 

direct inf~n~e~~nt. the plaintiff must establish by a preponderance of the evidence that one or 

more claims of the patent read on the accused device either literally or under the doctrine of 

equivalents. w, 241 F.3d at 1336, 

A person may also infringe n patent claim indirectIy. Section 271 (b) of the Patent Act 

provides that ”[wlhoever actively induces lnf~n~e~ent of a patent shall be liable as an 

infringer.” To establish liability for induced i~f~~n~e~~nt~ “a patent holder must. prove that once 

the defendants knew of the patent, they actively md ~~owi~~ly aided and abetted another’s direct 

~ii~ri~i~ement.”-. v. JMS Co., 471 F.3d 1293, 1305 (Fed, Cir. 2006) (DSU Mcd. 

cor71,) (cita~i~~~ omitted). FXowever, +‘[t]he mere knowledge of possible in~~n~ement by ohers 

does not amount to jndu~e~~nt: specific intent and action to induce iiif~n~ei~e~t must be 

proven .” Id. 

A~ditionall~, 35U.S.C. 5 271(c) provides that: 

Lw]hoever oEfers to seIl or sells within the United States . . . a 

component of a patented machine, manufacture, ~oin~ina~i~~ or 

~o~position . . . constituting a material pat? of thc invention, 

knowing the same to be especially made or especially adapted for 

use in an infringement Qf such patent, and not a staple article of 

commodity of commerce suitable for substantial not~i~~~i~l~ii~~ use, 

shall be liable as a contributory itifringer. 

Thus, “[iln order to succeed on a claim of contributory in~ii~~~e~en~. in addition lo proving an 

131 

38 of the “439 patent and claims 1 aiid 7 of the ‘289 patent. 

1. The ‘439 Patent 

The Claimed Phrase, “In an environment where subscribers call a user over a 

telcphone network, whcrcin a user telephone is coupled with the telephone 

network . ,’’ 

Complainant further argued that respondent does not dispute that the accused products meet this 

limitation. (CBr at 55; CPFF 1066 (un~~~s~uted in relevant part).) 

Respondent does not dispute that the accused OXE system meets this limitation. (CPFF 

1066 ~~nd~spLite~ in relevant part).) 

} The staff also argued that complainant “has 

established a & 

system.” (SBr at 5 1 .) 

case that the elements of claim 1 are present in the accused OXE 

{ 

) In the 

claims of the ‘439 patent, the term “user” refers to a called party. (CPFF 1059 (~~ndls~~~ited~.~ In 

CDX-38, c~inplain~~nt’s cxpcn Chang hj~hI~~~ts a callcr who is connected to thc PSTN and is 

133 
about to make a call to a user in the OXE System. (CPFF 1 OS4 {u~disp~tc~~.~ CDX-39 shows a 

user who is sitting ZI~ his computer or PC 1. (CPE 1060 ~~Indis~uted).~ The user shown on 

CDX-39 is the destination of the incoming call. (CPFF 106L ~undis~~~ited).~ The red arrows on 

CDX-39 show the direction of the call from thc caller. (CPW 1063 (~it~dispute~~.~ Thus, the 

adrni~~str~~t~y~ law judge finds that CDX-38 and CDX-39 dexnonstrate that the accused OXE 

system practices this element of claim 1 of thc ’439 patent, Furthcrniorc. respondent does not 

dispute that the accused OXE system practices this element. (CYFF lt%G (undisputed in relevant 

part).) 

Based oti the foregoing, the adm~~ilstratiye law judge finds that ~o~nplai~a~it hs 

established that the accused OXE system products meet this limitatton of claim 1 of the ‘439 

patent. 

oxo S\fstern 

{ 

1 Coniplainant further 

argued that respondent does not dispute that the accwed OXO system products meet this 

limitation. (CBr at 85.) 

~espon~e~~~ did not dispute that this limita~jon is met by the accused OXO system 

products. (CPFF 1662 ~undjs~~ted~~ 1 

The sfaff does not dispute that the accused OXO system products meet this limitation. 

(CPFF 1647 (undisputed by the staff).) 

The administrative law judge agrees with c~~~~ainant. Thus. he finds that ~o~pl~inant 
has estabIisticd that the cc~~~~ai~ant has cstablishcd that thc accused OXO system products meet 

this ljffxi~atio~ of claim 1 of thc '439 patcxxt. 

The Ciainled Phrase, "a system for processing an iiicvnimg call from il subscriber 

to a user in thc teIephone network according to mer spceifications, thc system 

comprising. . . 

t7 

OXE System 

} Respond~~t, however, does not dispute that the OXE system practices this element of 

claim 1 of thc '439 patent. (CPFF 1076 ~und~s~~ited irr relevant part).) 

The staff argued that complainant "has ~sta~l~sh~d a % case that the elements cA 

claim 1 are present in the accused OXE system." (SBr at 5 1 .> 

The administrative law judge finds that CX-606 shows that respondent advertises the 

accused product as an integrated product, (CX-S06.)( 

F~~~~~~~~~respondent does not dispute that the accused UXE system practices this element, 

(CPFF 1076 {undisputed in relevant part).) 

Based on the foregoing, the adm~n~~~ratiye law judge firids that c~~~~la~~~nt lias 

est~~iisIie~ that thc acc~iscd OJE system products meet this li~~~t~~io~ of claim 1 of the '439 

patent f 
OXO System 

l 

1 Complainant further argued that rcspondcnt 

does not dispute that the accused OXO system products meet this limitation. (CBr at 85-86.) 

Respondent does not dispute that the accused OXO system products meet this limitation. 

(CPW 1598 (uI~~js~ute~ in relevant part).’) 

The staff does not dispute that the OXO system meets this limitation, (CPW I664 

~undisp~ited bythe staff).) 

The administrative law judge agrees with complainant. Thus, he finds that cornplairiant 

has established that the accused OXO system products meet this limitation of claim 1 of the ‘439 

patent, 

The Claimed Phrase, “a data structure contained within a computer network to 

store user-selectable criteria for call processing, wherein the data structure Stores 

the user-selectable criteria in one or more lists that arc used in filtering an 

incoming call and . . .’’ 

OXE System 

136 
} Responderit 

did not, howcvcr. disputc that the UXE system meets this limitation in any ~~n~i~u~~t~(CPEF 

1237 ~~nd~sp~it~d in relevatit part).) 

3 

137 
Ttic staff arpcd that com~~la~nant “hasestablished a facie casc that thc elements of 

clai rn 1 are present in thc accused OXE system.” (SRr at 51 .I 

The ~di~~istrat~~~ law judge agrees with complainant. Thus, he finds that c~inplaii~~nt 

has established that this claim limitation is satisfied. 

OXO Svstem 

{ 

} Co~pIa~na~t further argued 

that respondent did not dispute that [he accused OXO system products meet this limitation. (CBr 

at 88.) 

Respondent does not dispute that the accused OXO system products meet this limitation. 

(CRFF 1738 (undisputed in ~etele~anf part).) 

The staff did not dispute that this l~~itatioi~ is met by the accused OXO system products. 

(CRW 1699 (u~~is~i~t~~ by the staff).) 

The ~~~i~jstr~ti~e law judge agrees with co~p~~i~a~t. Tlxis, he Finds that coniplainant 

has established that this limitation of claim 1 of thc ‘339 patent is met by thc accused OXO 

system products. 

The Claimed Phrnse, “’wherein some of the one or more lists are used to filter the 

incoming call according to current activity of subscribers on the computer 

network or according to current activity of the user on the computer network . . .” 

OXE Svstem 

1 
1 

Respondent argued that the accused products do not infringe the ‘439 palent because they 

process calls aceording to whettier a user’s phone is in use, riot according to a user-s slatus on a 

computer nctwork. (RBr at 10s.) 

1 

The pmies agreed that this claim element should be constixi& as“wherein some of the 

one or more lists arc used to filter the incoming call according to current status of subscribers on 

the computer network or according to current status of the user on the computer nctwork.“ (RBr 

at 195; CRRFF VJ3.S.S-B; SBr at Sl-52.) The parties also agreed that ‘‘[j]n the claims of the 

‘439 patent, the term ’user’ refers to a caHed pm-ty-” {CPFF 1059 ~uiidisputed~.) The parties 

further agi-eecl that the tern “subscriber” in the ‘439 patent refers to a caller. (CPFF 1052 

(~ndis~uted~.} { 
In your opinion, does the OXE system meet: this cIaim 

hi tation? 

A. Yes, it does. 

Q- And can you please explain the basis for your opinion. 

A. 

here is 1 displayed a screen capture of the OXE system that I tested 

over at Fish 8L Richardson’s office here in D.C. 

Sure. We are looking at CDX-16 t. Arid what I have done 

'I 

132 
CEECK ~~T~R~l~~~~l~: SIigh t correction from the check 

anterpretcr, In the same way it recognizes tl-tc busy status of a 

~~d~~~~on~~l plione. 

THE I~~~RPR~~R: That’s fine. 

JUDGE LUCKERN: Would the witness agree with tt-tnt? You can 

ask him. Is $hat okay? 

THE WITNESS: Yes, that’s fine. 

BY MR. COLNANNI: 

Q. 

state of the user, correct? 

So being engaged uti a voice over IF call constitutes a busy 

A. 

a status of busy telephone. 

It is correct, I will precise that it is a state of -- it is -- but it is 

(Tr. at 499-500,597-509, 1 102-1 105 (emphasis added).) { 

I43 
1 The a~rni~ist~~itive law judge finds that the specification of the '439 pateilt 

specifically discloses, inter alia, severd of the statuses described in the trzliiscript excerpts, supra: 

The user (Le.. the called party) can specify user-selectable call 

processing criteria for all inco~ii~~ calls, incoming calls from 

selected callers, and may further apply condi tional criteria based oil 

user preferences. For example, the user may select all calls during 

certain times of the day, calls from selected parties dunng other 

specified times of the day, and no calls during other tjrrisx of' the 

day. The user-sekctabk call processing criteria may be readily 

144 
edited by the user and may be applied to i~~iItjple phom numbers 

associated with a pat-ticular callcr. 

{JX-1 at 1:65-2;7.j Thus, the usw assigns a “’status” to various subscribers. Likcwise, FIG. E; of 

the ‘439 patent dxscloses a [low chart shwing how several “Lists” of callers are checked in order 

to properly route a call; said lists are further described in the specification. {Ser; JX-1 at FIG.3; 

Based on the foregoing, the adinin~st~~t~~je law judge finds that complainant has 

establisticd that the OXE accused system meets this element of claim 1 of the ‘439 patent. 

Specifically, co~i~l~~~n~~t argued that the routing of an incoming cull based on 

detccting the software activity on the user computer resulting -from a VoIP cornrnu~i~~~t~on meets 

this claim limitation. (CBr at 88-89,] 

Respondciit argued that “the same issues set furth above with respect to thc accused OXE 

system apply to the accused OXO system. {RBr at 113,) Specifically, respondent argued that the 

accused OXO product does not route or process calls based upon any user computer or user 

computer iietwork activity. [RRCPPT 1729.B.j 

The siafl argued that: 

I 

145 
1 

The prrrties agreed that this claim dement should be construed as “wherein some of the 

one or more lists are used to filter the incoming call according to current status of subscribers 0x1 

the computer network or according to current status of the USCP on the computer network.” (REr 

at LOS: CRKF‘F V.B.S.5-€3; SBr at 51-52.] ‘Thus, as found regarding the accused OXE;: system 

products, supra, when a user sets a status af “do not disturb,” said limitation is met because the 

call is routed according to that user status. Yet, complainant has argued for the accused OXO 

system products that the activity of the mer’s computer, for exarnpte a VoP telephone call, 

would be sufficient to meet this claim limitation. The ad~lnistra~i~e law judge does not agree 

with coi~~la~nant, Thus, for this claim li~itatlon, he finds that showing that there is user activity 

is not sufficient. He further finds that ~o~pl~ina~~ must also show that the accused product uses 

the current user 

allow said subscriber to bypass the “do not disturb” status of the user would also be sufficient to 

tus to filter incorning clhls. Likewise, setting the status of a subscriber to 

meet this claim limitation because of the disjunctive ‘*or.” { 1 

I46 
} Thus, the administrative law judge finds that complainant has not 

established that the accused OXO system prodiicts meet this limifation of claim 1 of the ’439 

patent. 

The Claimed Phrase ‘‘a computer network access port used hy the telephone network to 

access the data structure such that the telephone network has access to the one or more 

Iisrs over the computer network access port. . .” 

t 

1 

Respondent does not dispute that the OXE system meets this limitation. (CPF 1302 

~~ndls~~ited in relcvant part).) 

The staff argued that ~~~~~aj~ant “has established a r,rima facie case that the elements of 

claim 1 arc present in the accused OXE system,” (SBr at 51 .> 

The a~rni~jstr~~tiv~ law judge agrees with complainant. Thus, he finds that ~~~~l~~n

has established that the accuscd OXE system practices this element of claim 1 of the ‘439 patent. 

OXO SJfstem 

{ 

1 ~o€n~~ain~~i~ further argued that respondent does not dispute that the accused 

147 
OXU system products meet this ~i~itati~~. {CBr at 90.) 

Responder~t does not dispute lhat the ac~sed OXO system products meet this ~i~itation. 

(C13FF 1763 ~undis~uted in relevant part).] 

The staff did not dispute that the accuscd OXO system products nicct this limitation. 

(CVFF 17% (undis€~~ited by staff’).) 

The administrative law judge agrees with complainant. Thus, he finds that complainant 

has established that the accused OXO system practices this elenleiit of claim 1 of the ‘439 patent. 

The Claimed Phrase ‘”and a controller to receive the incoming call designated for 

the user telephone and to process the incoming call in accordance with the 

user-selectable criteria, the controller accessing the user-selectable criteria in the 

one 01- more lists of the data structure via thc coniputer network access port and 

thereby applying the user-selectable criteria to the i~c~r~~ng call.” 

UXE System 

1 

Respondent dues not dispute that the UXE system meets this Imitation. (CPFF 13 14 

~tindisp~t~d in relevant part).) 

Thc staff xgticd that ~ompl~~~iant “has established a prima fncie case that the elements of 

cXaim 1 are present in the accused OXE system.” (SBr at 51,) 

The adm~iiistr~ti~e law judge agrees with complainant. ?'bus. he fitids that complainant 

has established that the accused OXE system products meet this limitation of clam lof the ‘439 
patent. 

~ 

I 

1 

Respondent does not dispute that the accused OXO system products meet this claim 

limitation, (CPFF 1775 ~undispute~ in reIevant part).) 

The staff does not dispute that the accused OXO system products meet this cXaitn 

limitation, (CPFF 1764 (undisputed by staff).) 

The ~~~~~~istrati ve law judge agrees with ~om~~ain~nt* Thus, he finds that complainant 

has established that the accused OXO system products meet this limitation of claim I of thc ‘339 

paten t ‘ 

Based on the foregoing, the admini~trative law judge fmds that the accused OXE system 

products infringe claim I of the ‘439 patent, while the accused OXO system products do not 

in-fringc claim 1 of the ‘431) patent, 

b. Claim 28 

The Claimed Phrase “ln a system whcrc subscribers call a uscr over a tclcphone 

network, wherein user telephone IS coupled with the telephone network . . .” 

Complainant argued that this limitation is substantially similar to a limitation of clainz I 

lit9 
of the ‘43‘3 patent, except that claim 28 is a computer product claim rather thatin a mettiod cIaim. 

(CBr at 67-65; CPFF 1331 ~un~isput~~); CYFF 1319.) ~o~~~lainant therefore relies on its 

argument for that limitation of claim 1. (CBr at 67-68.) 

Respondent argued that claim 1 recites a system wirh a telephone network and a computer 

network, but dues not require that these two networks be independent, citing to JX-I at col. 

14: 13-37. (RRCPFF 131 9.A.) Respondent further argued that since the term “~t~d~~~~d~ntdcxs 

not appear in claim 1. it must be givcn meaning in claims 28 and 38. (See RFF V.A.2.1-3.5.) 

The staff argued that the only limitation that respondent argued regarding claim 28 of the 

’439 patent is the ~‘i~depen~e~t of the telephone network” Imitation, and that the accused UXE 

system products meel that ~i~ij~tio~~. (SBr at 22-23.) 

There is only il one word difference between the first elements of claim 1 and claim 28 of 

the ’439 patent, k, the term “environment” of claim 1 is replaced in claim 28 by the tern 

“system.” & JX-l at 14:13; dX-1 at 1653.) The claim phrase “independent of’ the telephone 

network” does not appear in this claim phrase. Thus, respondent has not rebutted co~iplainant~ s 

argument that this claim li~jtatio~ is su~st~~~~lall~ similar to the claim ~i~ita~~o~ of claim 1, 

Moreover, the admin~strati~~ Irtw judge finds no substantial difference lxrween the claim ternis 

“en~iro~~~en~” and “system” in the context of the claims. It-Xcnce, the ad~nlnistr~tiv~ law judge 

finds that complainant has established that the accused UXE system products meet this limitation 

of chi in 28 of the ‘439 patent. 

C~~pla~n~nt argued that this Imitation is similar to the first Jimitatmn of claim I of the 

‘439 patent- (CBr at 91.) Complainant further argued that respondent does not dispute that the 
accused C>Xf> system products meet this limitation. (Ct3-r at 91.) 

Respondent does nut disputc that thc accuscd OXO systcm products meet this claim 

~lrnitatfon. (CPW 1700 ~un~i~pute~ in relevant part).) 

‘Tile staff argued that the analysis for infrin~~m~nt of claim 28 is s~~~~antjal~~ thc same as 

for claim 1. (SBr zt 53.) The staff does not dispute that the sccused OXO system products meet 

this claim limitation. (WFF 1787 ~und~~put~d by staff).) 

The administrative law judge agrees with co~~I~~~aIit. Thus, he finds that com~~ai~~~t 

has es~a~li~h~d that the accused OXO system products rnect this limitation of claim 28 of the 

‘439 patent. 

The Claimed Phrase “a computer program product for ~~~le~~~tln~ a method for 

processing a call from a subscribes to a user over a telephone network? the 

computer program product comprising: a computer readable medium having 

computer executable instructions for performing the method, the method 

comprising: . . .” 

OXE Svstetn 

1 

Respondent does not dispute that the accused OXE system products meet this limitation. 

(CPEF 1330 ~undisp~te~ in relevant part).) 

151 
The staff argued that the only limit&ion that respondent argued regarding claim 28 of the 

‘439 patent is the ~~i~dc~ci~dc~~t of the telephone network” limitation, and that the accrtsed OXE 

system products meel that ~~mit~tio~. (SBr at 22-23.) 

The administrative law judge agrees with ~oIn~~la~nant. Thus,he finds that €~rnpl~~i~~nt 

tias established that the accused OE system products meet this limitation of claim 28 of the 

‘339 patent. 

OXO System 

1 

1 

Respondent does not dispute that the accused OXO system products meet this l~~it~ition. 

(CPP 1800 ~~~djs~uted in relevant part),) 

The staff argued that the analysis for ~nfr~~~erne~t of claim 28 is s~~~stant~all~ the same ;is 

for claim 1. (SBr at 53.) The staff did iiot dqute thaj the accused OXO products meet this 

limitation. (CPW 1792 ~~ind~s~~t~d by staff,).) 

The ~~d~~inist~~~i~~e law judge agrees with complainant, Thus, he finds that €oii~plai~ant 

has established that the ziccused OXO system pradiicts meet this limitation. 

.3 The Claimed Phrase “accepting an incoming call designated for the user telephone . . . 

OXE System 

Co~~plain~nt argued that this limitation of claim 38 is similar to the sixth Imitation of 

clam I. (CBr at 69.) Thus, con~i~l~inan~ arguedthat the accused OXE system products meet this 
Ii~~l~~~~~n for thc same reasons that The accused OXE systcni products meet thc sixth li~n~~~~t~i~n 

of claim 1. (CBr at 69.) 

R~sponden~ does not dispute that the OXE system accused products practice this 

limitation. (CPFF 1346 (undisputed in reIevant. pax).) 

The staff argued that the only limitation that respondent argued regarding claim 28 of the 

’339 patent is the ~~i~~e~en~~nt of thc telephone network“ limitation, and that the accused OXE 

system products meet that Iirnitation. (SBr at 32-23.) 

The a~~inistrat~~~ law judge agrees with complainant. Thus. he fids that complainant 

has established that the accused OXE system products meet this limitation of claim 28 of the 

‘4439 patcnt. 

OXO System 

~orn~laj~ai~t argued that this limitation is similar to the sixth limitation of claim I of the 

‘439 patent, and that the accused OXO system meets this limitation for the saint: reasoning. (CBr 

at 92.) Co~p~ai~~nt further argued that respondent does not dispute that the accused OXO 

system products meet this limitation, {CBr at 92.) 

Respondent does not dispute that the accused OXO system products meet this limitation. 

(CPFF I606 ~un~is€~utcd in rclcvant p.xt)-) 

The staff argued that the analysis for ~nf~ng~~e~t of claim 38 is s~bsta~t.ia11~ the same as 

for claim 1. (SBr at 53.) The staff does not dispute that the acciiscd OXO system prodtrcts meet 

this limitatian. (WFF 1x03 (undisputed by staff).) 

Thc a~m~~i~trati~~ law judge agrees with corn~l~inant. ‘Thus, he finds that complainant 

has established that the accused OXO system products meet this limitation. 

153 
The Claimed Phrase “accessing a data structure contained withtn a computer 

network that is andcpendcnt of the teXephone ncetvork to retricvc user-sdectable 

criteria for call processing stored within the data sttxicture . . <’ 

OXE Svstern 

1 

Respondent argued that “indeg~endent” shouId be constmed as “physically distinct,” and 

that the accused products do not meet this Iimit&on. (RBI at 1 t3,) Respondent furlher argued 

that- even if ”independent” is construed as “not dependent upon anything-” the accused products 

still do not infringe, as the telephone network would be dependent upon the computer network 

for existence. CKBr at 113.) 

The staff argued that: 

1 

For each pcartion of this element except for the limitation of “‘iridepcndent,” as found 

infrcl, the administrative law judge hds that complainant has esLablished that this claim 

154 
limitation is met by thc accuscd prodticts for the same reasoning set forth €or the fifth lii~it~tion 

of claim li of the ‘493 parent. & Section V1TI.B. 1 .a, supra.) 

The ~d~~fnistr~~l~e law judge has found in Section VI.A.2, supra, that the Ximitatton of 

claims 28 and 38 requiring ”accessing a data structure contained within a computer network that 

is independent of the telephone network” is construed to mean “accessing a data structure in thc 

computer network that is physically separate from the telephone network” { 

1 !&ice, the ad~in~st~dti~~ law judge 

finds that complainant has established that the accused Om system products meet this limitation 

of claim 28 of the ‘438 patent. 

~ 

~o~npIaina~it argued that this limitation is similar to the fifth liniitatioti of claini 1 of the 

‘4439 patent, and satisfies the limitation Tor the same reasoning. (CBr at 92.) Compla~nant further 

argued that this claim limitation is met by the accused OXO system products because 

“independent‘” means “Xogically distinct” and not “physically distinct,” as argued by the staff and 

respondent. (CBr at 92.) 

Respondent argued that “the same issues set forth above with respect tu the accused OXE 

system apply to the accused OXO system.” (RBr at 113.) 

The staff argued that with the exception of the claim term “independent,” the analysis of 
claim 28 is the same as for claim 1 as regards the accused OXO system prodiicts and thus, said 

products do not rtifringe for the same reasoning. (SBr at 53-54.) 

The ~~~~~in~st~~tive law judge finds thaf the analysis of whcther thc accuscd OXO system 

products meet this limitation of claim 28 is the same as the analysis of whether the accused (3x0 

system products meet claim 1, except for with respect to the claim term “indepcndent,’” 

Section V1II.B f.a, supra. { 

} ‘l’hus, the ~i~~~i~i~tratlv~ law judge finds 

complainant has ~sta~~lis~~~ that the accused OXO system products meet this liniitation of claim. 

28 of the ‘439 patent. 

The CIaimed Phrase “wherein some of the user-selectable criteria is conditioned 

on current activity of subscribers on the computer network or according to current 

activity of the user on the computer network; and . . .” 

OXE system 

~om~laina~t argued that this limitation of claim 28 is similar- to the fourth limitation of 

claim 1. (C‘Br at 7 1 .) Thus, ~ornpl~~~nt argued that the accused OXE system products meet this 

limitation for thc same reasons that the accused OXE system products meet the fourth Iimitation 

of claim 1. (CBr at 7 1 .> 

Respondent does not dispute that the fcmrth limitation of claim 1 is sirni Iar to this 

limitation of claim 28. (CWF 1362 ~uti~js~ute~~.) 

The staff argucd that the only limitation that respondent argued regarding claim 28 of the 

‘439 patent is the “independent of the telephone network?’ limitation, and that the accused OXE 

systcm products meet that limitation. (SBr at 22-23.) 
The fobtirth elcrnent of claim 1 reads, “wherein some of the one 01- niore lists arc used to 

filter the in~~~~~~n~ call according to cirrrent activity of subscribers on the computer network or 

according to cunxnt activity of the user on the computer network . . >’’ (JX-1 at 1422-26.) The 

partics agreed that this claim phrase is similar to the limitation at issuc in clam 2.8, as shown 

sunra. The adm~n~str~~tive law judge finds that there are no substantial differences between the 

claim limitation from claim 1 and the ~i~it~tion recited, supra, of claim 38. Therefore, he finds 

that complainant has established that the accused OXE system products meet the limitation of 

clziim 28 for the same 1-easons that said accused products met the fourth element of claim I of the 

‘439 patent, (See Section VII.B.f.a, supra.) 

OXO System 

Complainant argued that this limitation IS similar to the fourth hiration of claim I of the 

‘439 patent, and that the accused OXO system products meet this limitation for the same 

reasoning. (CBr at 93.) 

The staff argued that the analysis for inf~.in~emelit of claim 23 is s~bs~#tialI~ the same as 

for claim 1. (SBr at 53.) 1 

1 

The ~~~~ni~trati~e law judge finds that the infr~n~em~nt analysis for this limitation of 

claim 28 is the same as for claim 1 of the ‘439 patent. Thus, he finds that complainant has not 
es~~~l~shed that the accused OXO system pro~~cts meet this claim ~im~tat~ori € the same 

reasons set forth in Sect ion VTJT.B. 1 .a, a. 

The Claimed Phrase “processing the incoming call in accorckance with the 

user-sclectable criteria." 

~ 

Co~nplain~~t argued that this limitation of claim 18 is similar to the sixth litnitation of 

claim I. (car at 71 .) Thus. complainant argued that the accused OXE system products meet this 

limitaiicm for the same rcasons that thc accuscd OXE systcm products meet the sixth limitation 

of claim 1. fCBr at 7 I .) 

Respondent does not dispute that the OXE system accused products practice this 

limitation. (CPEF I379 (un~~~puted in relevant part).) 

The stalf argued that the only limitation that respondent argued regarding claim 28 of the 

‘4439 patent is the “independent of the telephone network“ limitation, and that the accused OXE 

systcin products meet that limitation. (SBr at 22-23,) 

The administr~ti~e law judge agrees with ~o~~plain~nt. Thus, he finds that complainant 

has established that the accused OXE system products meet this limitation of claim 28 of the 

’339 patent. 

oxo System 

C~~~~l~~n~nt argued that this lii~i~ationf claim 28 is similar to the sixth limitation of 

claim 1 of the ‘439 patent, and thus satisfies this limitation for the same reasons. (CBr at 93,) 

~otn~laLr~~~t further argued that respondent does not dispute that the accused OXO system 

products meet this lnnitzktion. (CBr at 93.) 
~~s~~~~dc~t did not dispute that the acciised 0x0 system products meet this limitation. 

1830 (undisputed in relevant part).) 

The staff argued that the analysis for infringement o€ claim 2.5 is su~st~intla~l~ the same as 

for claim 1. (SBr at 53.) The staff does not dispute that the accused OXO system products meet 

this limitation. (CPFF 1827 ~~ndis~~~~~ed by staff).) 

The ~i~~~inist~atj~~c law judge agrees with c~i~pl~inant, Thus, he fmds that com~lair~~nt 

has established that the accused OXO system products meet this limitation of claim 25 of the 

‘439 patent. 

Bsed on the foregoing, the administrative law judge finds that ~o~n~la~n~iit has 

~s~~blish~~ that the accused OXE system producls infringe claim 28 of the ‘439 patent, while it 

has not established that the accused OXO system products infringe said claim 28. 

c. Claim 38 

The &med Phrase, “In a system including a tclcphone network and a computer 

network where an origixiating telephone connects with a user telephone over the 

telephone network. a method for processing a ca11 from the or~~ina~~r~~ telephone 

to the user telephone according to user specifications, the method comprising: , . 1- 

OXE Svstem 

Co~~l~inant argued that this limitation of claim 38 is similar to the first and second 

limitations of claim I of the ‘439 patent, and thus the accused OXE system prodticts meet this 

limitation for the same reasons as the accused 0233 system products meet those linitatians. (CBr 

at 72.) 

Respondent does not dispute that the accused 0XE system prducts tneet this l~mjtatj~n. 
The staff argued that the an;Llysis with respect to claim 38 is subs~ar~t~~~l~ the same as 

with respect to claims 1 and 28. (SBr at 54.) Thus, the staff argued that the accused OXE system 

products infringes claim 38 of the ’439 patent. {SBr at 54.) 

Thc ~~~min~s~rative law judge agrees with complainant. Thus, he fmds that: complainant 

has established that the accused OXE system products meet this li~~~taf~o~ of claim 38 of the 

‘339 patent. 

OXO System 

~o~~Ia~naIit argued that this lirxltation is similar to the first and sccond li~~~~~t~ons of 

claim 1 of the ‘439 patent, and that the accus~ct OXO system products meet this limitation for the 

same reasons, (CBr at 94.) C~i~p~a~~a~t further argued that respondent did not dispute that the 

accused OXO products meet this limitation. {CBr at 94,) 

Respondent did not dispute that the accused OXO system products mcet this limitation. 

(CPFF 1845 (undis~~~ed in relevant part).) 

The staff did not dispute that the accused OXO system products meet this ~~rnit~t~~ii, 

(CPFF IS42 (undis~~~t~d by staff).) 

The ad~i~istrative law judge agrees with c~~~pla~~aiit, Thus, he finds that ~o~p~ain~nt 

has established that the accused OXO system products meet this limitation. 

The Claimed Phrase “accepting an incoming call designated for the user telephone 

from an originating telephone of a subscriber. . .’* 

’‘ CPFF f39G concerns the 0332 system, while RRCPW 1396. A cowems the OXO 

system, and thus the ad~~~~~~~dti~~ la% judge presiimes that RRCPFF 1396.A contains a typo. 

Whether RRCPFF 1396.A is in error is irrelevant to the findings in this i~~~stj~ation. 

I 60 
Q>XE System 

C~mpla~~~aiit arguedthat this l~~~it~ti~~ is similar to the sixth lim~tation of claim 1 and the 

third limitation of claim 28 of the ’439 patent, and thus the accuscd OXE system products 

infringe for the same reasons. (GRr at 73.) 

Respondcnt dues not dispute that the accused OXE system products meet this limitation. 

{CPFF 1404 (~~ndis~uted in relevant part).)” 

The staff argued that the analysis with rcspect to claim 38 is su~st~ntial~y the same as 

with respect to claims 1 and 28. (SBr at S4.) Thus, the staff argued that the accused OXE system 

products infringes claim 38 of the ‘439 patent. {SBr at 54.) 

The ad~~nistr~ti~e law judge agrees with complainant. ’X’hus, he fitlds that complainant 

has established that the accused OXE system produels meet this limitation of claim 38 of the 

‘439 patent. 

OXO System 

~oinpiai~i~Iit argued that this limitation is similar to the sixth limitation of claim 1 and 

third lj~~tatio~ of claim 28 of the ‘439 patent, and that the accused OXO system products meet 

this liinitatinn for the same reasoning. fCBr at 95.) ~om~lainant furlher argued that respondent 

did not dispute that the accused OXO system products meet this limitation. (CBr at 9s.) 

Rcspondcnt did nor dispute that the accused OXO system products meet this ~j~nitation. 

(GVFF 1852 (undisputed in relevant part).) 

The staff did not dispute that the accused OXO system products meet this limitation. 

’’ CPFF 1404 concerns the OW system, bur KRCPFF 1404.A concerns the OXO 

system. and thus thc administrative law judge prcsumes that KKCPFF 1404.A contains a typo. 

Whether RRCPW 1404.A is in error IS irrelevmt to the findings in this i~ves~i~~t~on. 
(CPFF 1850 ~ui~disp~tcd by staff).) 

The a~~in~st~~~ive law judge agrees with coi~pl~~inant~ Thus he finds that co~~~ain~~~ 

has established that the accused OXO system products meet this limitation of claim 38 of the 

‘439 patent. 

‘The Claimed Phrase “accessing a data structure contained within a cornputcr 

network that is iri~~pen~~nt of the telephone network to retrieve user-selectable 

criteria for call processing storcd within thc data structure . . .” 

OXE System 

Complainant argued that this limit~tion of claim 38 is similar to the fifth limitation of 

claim 1 and xhe fourth li~~iratiun of claim 28 of the ‘4439 patent, arid thus the accused OxlE 

system products meet this limitation for the same reasons. (CRr at 73.) 

Respondent argued that claim 38 requires “a computer network that is independent of the 

telephone network,” (RBr at 1 13) where “independent” means “‘physically distinct.” (RBr at 

t 13.) Respondent fuIther argued that under its construction or under complainant’s construction 

or “not dependent on any?hing,” there is no iii~~nge~~~t of claim 38. (RBr at 113.) 

The staff argued that the analysis with respect to claim 38 is su~sta~~tIa1~~he same as 

with respect to claims 1 and 28. (SBr at 54.) Thus, the staff argued thar the accused OXE system 

prodtrcts infringe claim 38 of the ‘439 patent. (SBr at 54.) 

The a~m~~istrati~~ law judge finds that the analysis of this limitation of clzitlm 38 is 

s~ibst~~~~ia~~~ the same as the analysis of the fifth limitation of claim 1 and the fourth limitation of 

claim 28 of the ‘439 patent. Hence, the admi~istr~t~~/e law judge finds that complainant has 

established that the accused OXE system products ineet this limitation of the ’439 patent for the 

same reasoning as applied by the ~~~lrnlnist~dtiy~ law judge for the fourth limitation of claim 25 in 

162 
Section V1II.B. I .b, supra. 

oxo Systcm 

Coniglainant argued that this limitation is similar to the fifth limitation of claim 1 and the 

fourth limitation of claim 28 of the ‘339 patent, and the accused OXO system products practice 

this linitdtion for the same reasons. (CBr at 95,) 

Respondent argued that claim 38 requires that the computer network be physically 

distinct from the telephone network. and that the accused OXO system products do not practice 

this limitation for the same reasons as the OXE system products did not. (RBr at 113.) 

The staff argued that the analysis with respect to claim 38 Is substantia~ly the same as 

with respect to claims 1 and 28. (SBr at 54.) The staff does not dispute that the accused OXO 

system product meet this limitation. (CPFF 1557 (undisputed by staff).) 

The ~dministrati~e law judge finds that the analysis of this claim limitation is 

su~~~antiall~ the same as the reasoning in Sectjon VXX1.B. l.b, supra, regarding the fourth 

limitation of claim 28 of the ‘439 patent. Hence, the ~d~~~i~tr~it~~e law judge finds that 

cornplainant has established that the accused OXO system products meet this li~~i~tion of claim 

38 of the ‘439 patent. 

The Claimed Phrasc “wherein some of the user-selectable criteria is conditioned 

on current activity 01 subscribers on the computer network or according to current 

activity of the user on the computer network; and . . .’* 

Complainant argued that this lj~itatio~ is “similar” to the fourth limitation of claim I and 

the fifth limitation of claim 28, and thus the accused OXE system products meet this linitaitvn of 

claim 38 as well. (CBr at 73-74.) 

163 
~es~on~ent xgnedthat “LQor claims 28 and 38, thc relevant clement for this 

j~f~ri~eme~t issue is very sirmktr.’~ (RBr at 105-06.) 

The staff argued that thc analysis with respect to claim 38 is su~stantially the same as 

with respect to claims 1 and 28. (SBr at 54-) Thus, the staff qyed that the accused OXE system 

products infringe claim 38 of the “439 patent. (SBr at 54.) 

The administrative law judge agrees with complainant. Ttius, he finds that the analysis of 

this limitation of cl,?lrn 38 is s~~s~anti~11~he same as the analysis of the fourth lii-nitation of 

cltlxm 1 and the fifth limitation of claim 28 of the ’439 patent. Hence, the ad~~n~strat~~e law 

judge finds that complainant htis established that the accused UXE system products rnect this 

limitation of the ’439 patent for the same reasoning as applied by the adn~inis~rative law judge 

for the four-th limitation of claim I in Section VIII.B, 7 .ti. supra. 

OXO System 

Con-lplainant argued that this limitation is similar to the fourth limitation of claim 1 and 

the fifth li~ita~~on of claim 28 of the ‘439 pa-tent. and that the accused OXO system products 

practjce this limitation for the same reasons. (CBr at 95-96.) 

Respondent argued that the accused OXO system products do not infringe for the same 

reasons as the OXE system product does not infnnge. (RBr at I 13,) { 

1 

The staff argued that the analysis with respect to claim 38 is subst~ntiall~ thesame as 

with respect to claims 1 and 28. (SBr at 54.) Thus, the staff argued that the OXO system 

protlricts do not infringe claim 38 of the ‘439 patent for the same reasons that -the OXO system 
product does not meet the limitation of claim I of the ”43 patent. (SBr at 54.) { 

1 

The administrati~e law judge finds that the analysis of this liniitation of claim 38 is 

substantially the same 8s the analysis of the foui-th lirnitafion of claim 1 and the fifth litnitation of 

claim 28 oE the ‘439 patent. Hence, the admin~~t~ative law judge ftnds that c~~np~a~~ant has not 

established that the accused OXO system products meet this limitation for the same reasoning as 

set forth in Section VXKB, 1 .a, supra. 

The Claimed Phrase “processing the incoming call of the subscriber in accordance 

with the user-selectable criteria.’- 

Complainant argued that this limitation of claim 33 is similar to the sixth limitation of 

claim I and the sixth limitation of claim 28 of the ‘439 patent, and thus that the accused UXE 

system products meet this limitation. (CBr at 74.) 

Respondent did not dispute that the accused OXE system products meet this Limitation. 

(CPFF 1434 (undisputed in relevant part).) 

The staff sgued that the analysis with respect to claim 36 is ~~~stant~all~ the same as 

with respect to claims 1 2nd 28. fSBr at Sit.) Thus, thc staff argued that thc accused OXE system 

products infringe clai 1z1 38 of the ‘439 patent. (SBr at 54.) 

Tlie ~dmfni~tr~tive law judge agrees with €~~n~lai~~ant. Thus, hc finds that c~m~laj~~nt 

has established that the accused OM2 system pruducfs meet this I~mj~atjo~ of claim 38 of the 

’339 patent. 

165 
oxo Svstem 

C~nipl~~inai~t argtied that the fifth l~initatiun of claim 38 of the ‘439 patent is similar to 

the sixth limitation of claim I and the sixth liniitation of claim 28 of the ‘439 patent, and thus the 

accused OXO system products meet this limitatiori €or. the same reasons, (GBr at 96.) Further, 

co~pl~~n~nt argued that respondent did not dispute that thc accused OXO system products meet 

this limitation. (CBr at 96.) 

Respondent does not dispute that the accused OXO system products meet this limitation. 

(CPFF 1572 (undisputed in relevant part).) 

The staff does not dispute that the accused OXO system products meet this hmitation. 

(CPFF 1876 (undispute~ by staff-),) 

The adirrinistmtive law judge agrees with ~~~~~lai~ant. Thus, he finds that th3s llmltat~on 

is similar to the sixth limitatioiis of claim 1 and claim 28 of the ’439 patent. Hence, the 

admin~st~~tiv~ law judge finds that ~o~pla~~ant has established that the accused OXO system 

products meet this limitation of cl&m 38 of the ‘439 patent. 

Based on the foregoing, the a~~inlstrat~~~ law judge finds that the complainant has not 

established that the accused OXO system products infringe claim 38 of the ‘4439 patent, but that 

complairiatit has established that the accused OXE system products infnnge claim 38 of the ‘439 

patent, assuming claim 35 is valid. 

2. The ‘289 Patent 

a. Claim 1 

OXE System 

Thc Claimed Phrase “Tn a system that includes a teleptione tietwork and a 

1 titi 
computer network with one or more users, ttherein each user is connected through 

a user cotnputer thc computer network and is logically connected through the 

computet- network to the telephone network , . .” 

Coniplainant argued that respondent has stipulated that the accused OXE system products 

meet this litnitation. (CBr at 74.) 

Respondcnt did not dispute that the accused UXE system products meet this limitation. 

(CPFF 1439 (undisputed in relevant part).) 

The staff argued that the “partics have stipulated that the accused products satisfy most of 

the limitations of the claim.” (SBr at 54.) 

The a~mi~ist~~itive law judge agrees with c~mp~alnant, Thus, he finds that complainant 

has established that the accused OXE system products meet this limitation of claim 38 of the 

‘439 patent. 

The Claimed Phrase ” a method of determining when to establish telephone 

communic~tion between two parties, at least one of whom is a user connected to 

said computer network, comprising: . . .” 

Coniplainant argued that respondent has stipulated that the accused OXE system products 

meet this limitation. (CBr at 74.) 

Respondent does not dispute that the accused OXE system products meet this limitation. 

(CPFF 13-44 ~u~disputed m relevant part).) 

The staff argued that the “ppnities have stipuIared that the accused products satisfy most of 

the lj~it~tio~~s of the claim,” (SBr at 54.) 

The ad~inist~~tive law judge agrees with compIainant. Thus he finds that cornplainant 

has established that the accused OXE system products meet this limitation of claim 38 of the 

’4439 patent. 

167 
The Claimed Ptirase “at the cc~mputer network, receiving ~nfoI-i~atjon from the 

tel~ph~~e network that a first party froin whom a call is onginating desires to 

establish telcphonc ~o~rn~nic~t~o~ with ;f. second party; . . .-’ 

~o~~~lainant argued that respondent has stipulated that the accused OXE system products 

meet this limitation. (CBr at 7s.) 

Respondent does iiot dispute that the accused OXE systcni products mect this liniitation. 

(CPEF 1449 ~~~ndispute~ in relevant part).) 

The staff argued that the “parties have stipulated that the accused products satisfy must of‘ 

the limitations of the claim,” (SBr at 54.) 

The administrative law judge agrees with c~mplainan~. Thus, he finds that complai~ant 

has cstahlished that the accused OXE system products meet this li~ni~a~ion of claim 38 of ehe 

‘439 patent. 

The Claimed Phrase “at the computer network, monitoring activity of a user 

computer connected tu the computer network and associated with the second 

party;. , .*’ 

1 Specifically, 

complainant argued that king on a VolP call is a monitored activity that constitutes ‘activity’ 

under either party‘s constr~i~t~on of this term.’’ (CBr at 75.) 

I I 

1 68 
j The staff further 

argued that c~m~lain~nt has “failed to establish infringement of claim 1 because it has not shown 

that the accused systems monitor the activity of a user computer in order to route the calls.” (SBr 

at 54.) 

The ~~~rni~i~tr~~tive law judge has construed the claimed phrase “‘monitoring activity of a 

user computer catinected to the computer network” to mean dete~i~lng whether the user’ 

computer is “‘active or idle,” & Section VI.A.I, supra.) Regarding mon~tori~ig the user 

cornputer”~ activity, the specification of the ‘22x9 patent states: 

The computer operating system, such as the Wi~~~o~s~ operating 

system, is capable of nionitorrng user activity on the computer. For 

example. ~n the callee computer 154 can 

detect user activitv on the kcvboard I54a or the mouse I Wi. By 

monitoring this activity, the operating system can detel-mine the 

user’s status 2nd activate certain sof‘twalre progmms, such :e a 

screen saver, when no user activity has been detected for a certain 

period of time. Under these circumstances, the operating system 

may detcrmine that the callce computer 154 has entered an “iidlc” 

state. Similarly, operating system on the calIer computer 184 may 

perform similar functions to determine user activity on the caller 

computer. Ksing the principles of the present invention, the cake 

computer 154 and the caller computer 184 may report thc current 

status to the affilmiun list 150 Cor each respcctive computer. 

(JX-2 at 1433-49 (emphasis added).) ‘The specification makes a distinctioti between said user 

169 
uter’s activity and the user’s activity, as shown by thc €ol~o~~in~ excerpt: 

Thc fact that both computers’ are not in the idle state indicates that 

tcle~ho~ie conversation. Xn a~di~i~~~. the system 100 can apply call 

processing rules that may also govern operation of the telephon~ 

portion of the system 100 . For example, the cake computer 153 

may be in a11 “‘active” statc (as opposed to the idle state) but. the 

user has indicated that he should not he disturbed at the present 

time. Thus, ttxc central officc switch I I6 ur the call processor 176 

accesses the afflli~~tion list 150 for- the destination telephone 104 to 

determine thc callee-selected call processing criteria, In addition, 

the central office switch 116 or the call processor 176 can zicccss 

the affiliation list 150 for the caller and apply any caller-selected 

call processing rules. For example. the caller computer 184 may be 

in the active state, hut the caller status in the affiliation list 150 

may indicate that the caller is in a meeting and is, therefore. 

~~a~ai~a~le for a telephone call with the cnllee. In this manner, the 

~~nit~r computcr activity and determine when thc 

~buth be available for a tcleTlrhone caIl and 

further aqAies call aessinr criteria for both the caller and callee. 

(JX-2 at 1453- Is:? (emphasis addcd).) Also, co~~lajna~t’s expert testified that the user status 

and the user computer’s status are distinct: 

Q. Okay. Wcll, you agree that monitoring the activity of the user 

comprrter could include. at least, whether the computer is awake 01- 

asleep, right? 

A, Sure. 

Q- And that would be independent of whether f had an electronic 

calendar program or ~nythin~ else? 

A. Absolutcly, 

Q. Correct? 

A. Correct. 

CI‘r. at 924-25.) Furrher, respo~~eiit’s expert testified that routing a call based on a user 

170 
computer’ 3 status is not the same as routing a call bssed on wheihcr the user is uskg the phone: 

Q, Okay. So is there any in~ic~tio~ here to you thal routing c:iIls 

based lipon monito~n~ the current activity of the user computer is 

something different from routing calls based upon phone state? 

A. Yeah. Yeah, it is different. Clearly different. 

Q. Can you cxplain to me why it is? 

A. That’s why he’s su~~est~~~ this is an invention worthy of a 

patent, is that he’s come up with another way of deciding how to 

route a call, 

You can -- instead af just always trying to ring a phone 

when it’s not alrcady busy, to see -- and theti discovering that it 

just rrngs and rings and rings, you can anticipate that it’s not going 

to be answered by rno~~ito~~~ whether there’s any activity of the 

user‘s computer. 

If there is, then there’s a pres~im~tion that it’s a good time 

to call and, therefme, put the call through. But if thcre is no 

computer activity, the presumption may be that the -- typically 

would he that the user is not there and, therefore, the call could be 

routed somewhere else, to an assistant or to a different phone 

number. 

(Tr. at 1350-51.) The specification, as shown in the excerpt cited, m, conternphtes an active 

computer indicating that a user is available for a telephone conv~~-sat~o~. Thus, to meet this 

limitation, the accused products would need to check the activity of the cornputcr itself, not 

simply whether there is a telephone call currently in progress. Each of the examples used by 

c~~plai~~ant~s expert to illustrate alleged in~~~n~e~~nt of the ‘289 patent routed calls away from 

iiscrs engaged in a VolP telephone call: 

Q. 

in~~n~~~nent scenario that you discussed yesterday during your 

direct, correct? 

So this -- what I have here in CUX-75, this was the only 

171 
Q. lhderstood. But in both ~~nf~gu~dtion I and confi~~~~t~oi~ 2, 

it depends upon the called party being on their Softphonu. correct? 

A. Correct. 

(Tr. at 9S6.) Thus, the examples used by ~o~npl~inant’s expert do not d~~initi~e~~ show that the 

accused products have the required capabiiity of determining a computer’s idle or active status, 

as a VoiP telephone call could be detected by either monitoring computer activity or by checking 

the phone extension. Also, respondent’s expert testified: 

Q. So that kind of capability of routing calls to another extension 

or to voice mail when somebody is on the phone, is that something 

that you have seen in your work with unified messaging systems in 

the past‘! 

A. 

concept of routing calls. And if your extension is busy, then they 

route to, typically, the voice mail. 

Sure. I mean, any voice mail system obviously ernbodies this 

But you cart have alternate numbers to route to an 

assistant’s nurnbcr or you can set things up tu route somewhere 

else, IF on a no answer condition, it might indicate you’re out of 

the office, so you can set it up to route to your mobiIe phone. 

Q. 

you have shown here on RDX-20,3? 

Okay. So let’s look at RDX-20. page 3. Can you tell me what 

A. 

the UXE system. Here is a user interface for setting up what they 

call fiItering rules, where we can actually set up conditions based 

on different, for instance, who is calling, what time of day it is and 

whether, for instance, it’s a busy condition or a no answer 

condition. whaz then happens to that call, whether it goes to voice 

mail. whether it gets fomw-dcd to another phone nurnbcr. 

Yes. So here is an cxamplc of doing essentially just that with 

Q, 

rhe current activity of the user computer? 

Now, do any of those mules route calls based upon monitoring 
Q. And wfhy is that’! 

A. 

is the actual state of your extension. 

Because as I said, the only condition that it‘s ro-outitiz based on 

Q. Let’s look at page 4 of KDX-20. Can you explain to me what 

you have shown bel-e? 

A. Yeah. Again, so there’s a drop down box. And basically 

there’s two setups. You can set up different routing options 

according to only one of two things, either 011 no answer or on 

busy. And in each case, you can say route the call to voice mail, to 

another number or -- 1 can’t see what that last option is. & 

basically the only trimers vou can use are whether the r$tone is 

currently busv or not answered, 

Q. Are either of those triggers based upon monj toriathe current 

activity of the user comguter? 

A. No. It’s ~anit#ri~~ the status of the extension in the PBX. 

Qopposed to a tiard phone? 

Now, is that the case if the user is -- using a Softphone as 

A. 11’s the same whether it’s using a Softphone or a hard phone, 

Q. Why is that? 

A. Because the Softphanc is just a software i~~~e~e~t~t~on of a 

telephotie extension over a computer network. But basically it’s a 

telephone. And it works just the same as any other telephone. 

Q. 

Enterprise switch than the hard phone? 

And does thar appear any differcnt to the UniniPCX 

A, No. 

Q. Now, look at RDX-20, page 5. Can you tell me what you 

have shown here’? 

173 
c 

1 Based on the 

foregoing, the administrative law judge finds that complainant has not met its burden of proving 

that the accused UXE system products practice this limitation of claim 1 of the '289 patcnt. 

~o~~l~in~nt has argued that the user status that satisfies the Iimitation "current activity 

of the user on the computer network-' from the '439 patent. & do nut disttrrb, unwilling to 

accept, etc., also satisi'ies this limitation of claim 1 of the '289 patent, citing in support to the 

specification of the "239 patent. (CRSFF 193-A-AT; see also JX-2 at 2:13-15.) The 

specification, however. reads: 

Both the caller and callee car1 specify user-selectable caIl 

processing criteria. The potential callee can specify call processing 

criteria for all incoming calls, such as providing a list of 

~ndi~iduals from whom the person will accept calls, a list of 

iridividnals from whom the person will not accept: calls, or 

conditional criteria, such as accepting or blockirig calIs during 

174 
certain times of day or during certain periods of activity, such as 

when the user rnily be otheiwsc occupied and unwilIing to accept 

an incoming call. 

activity may be monitored arid the status oC thc computer as idle or 

active may be rcported to the ct~mguter network. 

fJX-3 at 27-18 (ernphasrs added].) Thus, thc portion of the specifi~ation cited by c~m~lainant 

discloses that whether the user’s computer is active or idle is in addition to “uscr-selectable call 

processing criteria.” Hence, if a iiser status is set to “do not disturb.” simply cbccking that status 

without also ~~nito~n~ whether the coinputer is active or idle does not meet the claim 

requirement; { 

1 

The Claimed Phrase, “at the computer network, storing a set of pre-determined 

rules fur det~~~ini~~ when the second party is available to take a call from the 

first pnrty . . .” 

~om~lal~~~t argued that the parties have stipulated that this linlitaiton is met by the 

accused UXE system products. (CBr at 78.) 

Respondent did not dispute that the ~ccsued OXE system products meet this limitation. 

(CPFF 15 15, I5 16 (undisputed in r-clevant part).) 

Ttic staff argued that the “parties have stipulated that the accuscd products satisfy most of 

the limitations of the claim-‘’ (SBr at 54.) 

The ad~i~~stratjve law judge agrees with complainant. Thus, he finds rhat complainant 

has established that the accused OXE system products meet this ~iI~lt~~~o~ of claim I of the ‘289 

patent. 

175 
The Claimed Phrase, "at the computer network, usirig the set of a ~re-~~e~errni~~d 

rules to process i) thc in~urrn~~tio~ received from the telephone network regarding 

the call being originated by the first party, and ii) infunnation regarding the 

monitored activity of the user computer of the sccond party. to determine when 

the second party is available to take the call originated by the first party; and . . . 

3. 

} Thc staff further 

argued that cuniplainant has "failed to establish iIi~~ri~~t~~nt of claim 1 because it has not shown 

176 
that the accused systems monitor ttie activity of a user computcr in order to route the calls,” !SBr 

at 53.) 

The admini~tr~~ti~/e law judge has construed the claimed phrase “nmonitoring activity of a 

user computer connected to the computer network‘? to mean determjnitig whether. the user 

computer is “active or idle.” Section VT.A.1, supra.) Thcrcforc. the claim phrase in this 

claim limitation, vi7;. “ii j i~for~lat~~)n regarding the monitored activity of the user computer of 

the second party,” nmeans information regarding whether the user computer is active or idle. The 

~~niii~ist~~ti~e law judge has also found sugra, that the accused 0,333 products do not monitor 

whether the user‘s computer is active or idle, The ad~inist~~~i~~e law judge finds that the 

language of the claim indicates that both i) and iij are required components, through use of the 

word “and.” Also, co~~Iainant~s expert has testified that: 

Q. So according to you then, we talked about the invention and 

the background and the problem he was trying tu solve, wfhat you 

are saying is that Mr, Liffick invented the phone being on a 

computer? 

A. No, that’s not what I am trying to say. Mr. Liffick invented a 

~t~ calls based on a co~bin~tlon of user specified criteria 

and the combination of user’s computer status. 

{Tr, at 980 (emphasis added). j Thus. complainant’s expert stated that the invention concerns the 

comb~nati~~i of user specified criteria the user‘s computer status. Based on the fobrcgoing, the 

ad~inistr~~~~e law judge finds that c~~rnplai~a~t has not established th8t the accused OXE syslenl 

products meet this claim limitation. 

The Claimed Phrase “using the infclrmation processed at. the computer network to 

f:tccllitate connecting the call originated by the first party through the telephone 

network ti, the second party. “ 

177 
1 

Respondent argued that claim 1 of‘the ‘289 patent requires “using the infoxmation 

processed at the computer ncttvork to facilitatc connecting the call originated by the first party 

through the telephone network to the second party.” (RRCPW 1578.8 citing JX-2 at col. 

18:62-65; RFF IV.B.4.1 .I Respondent further argued that co~pla~nant’s expert Chang 

~~~~ow~e~~e~~ that the examples relied upon by Microsoft for its infringement allegations do not 

result in connecting the call to the second party- (RRCPFF 1578.B citing Tr, at 968: 16-!?69:4, 

977:3-978: t 1, 978:22-979:20; RFF IV.B.4.3.) Finally, respondent argued that complainant’s 

expert Chang admitted that ncither he nor Microsoft provided any examples to the Court where 

what they contend to he information regarding the monitored activity of a user computer is used 

to connect a call to the party the €irst p~ty is trying to ca1I. (RRCPFF 1575.C citing Tr. at 

wm-978:1 1; REF rv.s.4.3.) 

The staff argued that the only status monitored by the accused systems whcn a softphone 

is En use is the state of the user’s phone extension. @PET 193; SPFF 198.) The staff further 

argued that complainaiit has “failed to establish i~f~n~c~~nt of claim 1 because it has not shown 

that the accused systems monitor the activity of a user computer in order to route the calls.” (SBr 

178 
at 54,) 

The adn~inistrati~~ law judge finds that the ‘7 t~~or~~~t~~~ prucessed at the computer 

network” must refer to the im€iicdiat~l~-~rior claim element, viz., “at the computer network, 

using the set of a pre-deter-mined rules to process i) the ~n~o~ati~n received from the telephone 

nctxvork . . . and ii) in~orm~~tl~n regarding the monitored activity of the user computer. . .’. (SX-2 

at 18:55-59.) Thus, it is a requirement of this claim limitation that the “~~for~~ition processed” 

include each of the “information received from the telephone network” and “information 

regarditig the monitored activity of the user computer.” The admi~~istrat~~~ lw judge has also 

found, siipra, that the accused OXE system products do not monitor whether thc user’s computer 

is idle or active, Thus, he finds that complainant has not established that the accused OXE 

system products practice this ~~~ltatio~~ of claim 1 of the ‘239 patent. 

OXO System 

Regarding the accused OXO system products, for each element of claim 1 of the ‘289 

patent, coi-nplainant has argued either that said eIement has been stipulated to by the parties, or 

that the accused OXO system products infringe for the same reasons as the accused OXE system 

products. (CBr at 96-100.) 

Res~ondent argued that: 

Microsoft and Mr, Chang relied upon the same scenarios 

for its claim of infringement regarding the accused OXO system as 

it did for the accused OXE system, (RE IV.B.S.1.) As a result, 

the accused OXO system does not inking the asserted claims of‘ 

the ’289 patent for the same reasons discussed above with respect 

to the OXE system. (RFF IV,B.&.2,) 

(RBr at 87.) 

I79 
The administrative law judge agrees with the private parties and thus, he finds that the 

iii~~ii~ei~ent analysis for the accused OXO system products as regards claim 1 of tile ’289 patent 

is identical as for the ~n~~n~e~e~t analysis ol the OXE system products regarding said claim. 

Based on the forcgoing, the ad~~nistrative law judge finds that complainant has not established 

that the accused OX<> system products infringe claim I of the ‘289 pajent. 

Based on the forcgoing, the ad~ini~tr~tiy~ law judge finds that complainant has not 

established that each of the accused OXO system products and the accused OXE system products 

infringc claim 1 of the “2239 patent. 

b, Claim 7 

The Claimed Phrase “Tln a system that includes a telephone network and a 

computer network with one or more users, and wherein each user is connected 

through a uscr computer to the computer network and is logically connected 

through the computer network to the telephone network . . .*’ 

Complainant argued that the parties have stipulated that the accused OXE system 

products meet this claim limitation. (GBr at 33.) 

Respondent did not dispute that the OXE system products meet this limitation. (CPFF 

1606. 1607 (undisputed in relcvannr par-^).) 

180 
The staff argiicd that thc private partics have stlpui~te~~ the accused products satisfy most 

of the li in~tations of file claims. (SBr at 58.) 

The administrative law judge agrees with complainant. Thus, he finds that the 

complainant has established that the accused 0XE system products meet this limitatioa. 

Tlie Claimcd Vt-trase % computer program product comprising: a computer 

readable medtum for carrying computer executable instructions for irnpleff~~ntin~ 

at the computer network a method of detemining when to establish. telephone 

co~m~inic~ti~n between two parties, at least one of whom is a user connected to 

said computer network, and wtierein said method comprises: . . ." 

Co~plainant argued that the parties have stipulated that thc accused UXE systcm 

products meet this claim limitation. (CBr at 82.1 

Respondent did not dispute that the OXE system products nicet this limitation. (CPW 

1609, 1610 (undisputed in relevant parr).) 

The staff argued that the private parties have stipulated thc accused products satisfy most 

of the ljmitati~ns of the claim. (SBr at 58.) 

The a~~~ini~t~~ti~e law judge agrees with complainant. Thus, he finds that complainant 

has established that the accused OXE system products tneet this limitation. 

The Claimed Phrase, "at the computer network, receiving infomation from the 

telephone network that a first party from whom a call is originating desires to 

establish tekphonc ~omn~~~nication wth a second party; . . ." 

Complainant argued that the parties have stipulated that the accused OXE system 

products mcct this claim limitation, (CBr at 82.) 

Respondent did not dispute that the OE system products meet this limitation. (CPFF 

1516, 1637 ~undispute~ in relevant part).) 

The staff' argued that the priwte parties have stipulated the accuscd products satisfy most 
of the limitations of the claims. (SBr at 58.) 

The a~minist~~tiye law judge agrees with complainant. Tkius, he finds that co~~~~~ain~t~t 

has established that the accused OXE system products meet this limitation. 

The Claimed Phrase. ‘-at the computer network, monitoring activity of a user 

computer connected to the conquter network and associated with the second 

party; ~ . . 

’3 

Cornpisinant argued that this limitation is similar to the fourth limitafion of claim 1 of the 

‘289 patent and the accused UXE system products meet this limitation for the same reasoning. 

(CBr at 82, j 

Rcspondcnt did not disprrte that this limitation is similar to the fourth l~mitati~n of claim 

]I of the ‘289 patent. (CPFF 16 19 ~un~isputed~.~ Respondent further argued that “Mr. Chang 

tcstified that his analysis for claim 1 of the ’289 patcnt also applies to claim 7 of the “289 patent, 

but the analysis for claim 7 €ai Is for the same reasons as his analysis for claim 1 .” (RRCPFT;’ 

1620,A,> Respondent also makcs no distinction between the asserted claims of thc ‘389 patent in 

its post-hearing brief. (See generally RBr at 81-87,) 

Thc staff argued that “this limitation is not satisfied with respect to the accrrsed products 

for the same reason that the limitations in claim I are nut satisfied. (SBr at 58.) 

The ~dmi~~str~tiye law judge finds that this lirnit;ition of claim 7 of the ‘259 patent is 

similar to the fourth timilation of claim 1 o€ the ’289 patent. Thus, the ad~ii~~is~rat~~e law judge 

further finds that c~~mp~~i~a~t has not establishcd that the accused Oxf;: systcm products meet 

this limitation €or the same reasoning as in Section VlILB.’l.a, sur,ra. 

Thc Claimed Phrase “at the computer network, storing a set of predetermincd 

rules for ~ete~~n~n~ when the second party is avaiIablc to take a call from the 

Grst party; and . . . 

,. 

182 
~on~pl~i~a~t argixxl that the parties have stipuXatcd that the accused UXE system 

products meet this claim IIm~t~t~on. (CBr at 82,) 

Respondent did not dispute that the OZ system products meet this ~~mi~~tian. ((33% 

t 626, 1627 (und1s~)uted in reelwant part).) 

The staff argued that thc privatc partics have s~ip~lat~d that thc accused products satisfy 

most of the li tnitations af the clai tns. (SBr at 58.) 

The administrative law judge agrees with complainant. Thus, he finds that complainant 

has established that the accused UXE system products meet this limitation. 

The Claimed Phrase, “at the computer network. using the set of predetermined 

rules to process i) thc ~nfo~a~jon received from the telephone network regarding 

the call being originated by the fjrst party, and ii) info~~a~ion regarding the 

moriitol-cd activity of the user computer of the second party, to determine when 

the second party is available to take the call originated by the first pnrty. ” 

Complainant argued that this limitation of claim 4 of the ‘289 patent is similar to the sixth 

limitation of claim I of the ‘289 patent, and that the accused OXE system products tneet this 

limitation also. (CBr at 83.) 

Respondent did not dispute that this ~irni~~tio~ is similclc to the fourth Imitation of claim 

1 of the ‘289 patent. (CPFF 1629 (und€s~ut~d).) Respondent further argued that “Mr, Chang 

testified that his analysis for claim li of the ’289 patent also applies to clairn 7 of the ‘280 patent, 

but the analysis for claim 7 fails for thc same t-easons as his analysis for claim 1.” (RRCPFF 

1630.A.) Respondent also makes no distinction between the asserted claims of the ’289 patent in 

its post-hearing brief. (See generdly RBr ax 81-57.) 

The staff argued that “this ~imitati~~ is notsatisfied with respect to ttic accused products 

for the same reason that the l~~~ita~~o~~~ i~ claim 1 are not satisfied, (SBr at SS.) 

183 
Thc a~~j~is~~ative law judge finds that this Iimitat~on of claim 7 of the ‘389 patent is 

similar to the sixth limitation of claim 1 of the ‘289 patent. He further finds that the accused 

OE system products do not meet this iim~tati~n for the same reasoning in Section VIII.B.2.a, 

OXO Svstem 

Regarding the accused OXO system products, for each element of claim 7 of the ‘259 

patent, complainant has argued either that said element has been stipulated to by the parties, or 

that the accrised OXO system products infringe for the same rcasons as the accused Om system 

products. (CBr at 101-102.) 

R~~~ond~n~ argued that: 

Microsoft and Mr. Chang relied upon the same scenarios 

far its claim of infringement regarding the acctiscd OXO system ils 

it did for the accused OXE system. (RFF IV.B.6.1.) As a result-. 

the accused OXO system does not infringe the asserted claims of 

the “289 patent for the same reasons discussed above with respect 

to the OXE system. (RFF IV.B.6*2,) 

(RBr at 87.) 

3 

The ~~~~~nls~~dti~e law judge finds that the ~n€~n~emerit analysis for the accused OXO 
system products 2s regards clam 7 of the “239 patent is identical as for the itilringetnent analysis 

of the 0x33 system products regarding said cla~m. Thus, ~umpla~nant has not established that the 

accused OXO system products infringe claim 7 of the ‘259 patent. 

Based on the forcgoing, the adm~~istratj~e law judge finds that complainant has not 

estdblished that either of the accused OXO system prodircts or the accused UXE system products 

infringe claim 7 of the “2S9 patent. 

C. The O’Meal Patents 

Complajnant argued that only the OXE system infringes claims 3, S, 11. 12, and 20 of the 

‘064 patent. and claim 6 of the ’357 patent. (CBr at 103.) Complainant also included an analysis 

of claim 1 of the ‘064 patent, because asserted dependent claims 3, 8, 11, and 12 of the ’064 

patent depend from unasserted claim 1 of the ‘064 patent. jCBr at 103 n. 6.) Likewise, 

complain an^ included an analysis of claim 1 of the ‘357 patent because assened dependent cIaim 

6 of the ‘357 patent depends from claim 1 of the ’357 patent. (CBr at 1 10 n. 7,) ~ot~pla~i~~t, in 

support, argued that claims 1 and 20 of the ‘064 patent 2nd claim 1 of thc “357 patent each 

include the GUI and TU1 limitations (CBr- at 104-08; CBr at 109; C?Br at 11 1-1 21, and that: 

[AIS set out in JX-33. Respondent ALE acknowledges that its 

accused products include all of the limitations of the asserted ‘064 

and ‘357 claims except for two: “said computer server being 

configured to generate a singlc graphical menu for displaying said 

com~unicati~)n options for each of said c~~~uni~a~ion services at 

the same time” (“the CUI Iirn~~at~~~~”~, and “a te~ep~~~~ server 

couplcd tu exchange data with said cuinmunicat~on profile 

database, said telephony server being confiigurcd to audibly 

represent said co~~un~cati~n options to said telephone when said 

subscriber employs said telephone to access said computerimpleinented control center” (“the TU1 lin~i~dtjon~’~. [C‘PFF 3028.1 
~es~~o~d~nt argued that the accused P~-o~ucts meet neither the GL:I nor TU1 ~iI~~ta~~o~s. 

(RBr at 51 -55.) 

The staff argued that, regarding thc ‘064 patent: 

The private parties have stipulated that the accused products 

satisfy all of the limitations of claim 8. except for the GUI 

~~~itatiun and thc TU1 ~imit~tion. (JX-33C3 at 8 11.3). The Staff 

is of the view that the evidence of rccord shows that accused 

products do not satisfy the GUI and TU1 l~mjt~t~uns when those 

~~mita~i~~iis are properly construed, arid therefore do tiat infringe 

claim I or the asserted claims that depend from claim I. 

(SBr at 58-59.) The staff also argued that claim 20 of the ‘064 patexit is not infirnged for 

subst~~tia~ly the same reasons that said claim 1 is not infringed. (SBr at 62.) The staff arguied 

that regarding the ‘357 patent: 

The private parties have stjpulate~ that the accused products satisfy 

all of the limitations of independent claim 1 except the GUI and 

TUl liinitations. (JX-33C at 8 11.9). The parties agree, moreover, 

the GUI and TUI limitations should be constixed the same way for 

putposes of claim 1 of the ‘357 patent as claim 1 of the ‘064 

patent, (&, a. CDX-I 27; CDX-138; RDX-1) (discussing both 

O’Neal patents). As discussed above in the context of the ’064 

patent, the accused products do not have either a single graphical 

menu or a. telephone user interface that displays all of the options 

available to the subscriber. ~€~~de-Tho~son, Tr. at 1250-57; RDX19). Because the accused products do not satisfy all of the 

limitations of independent claim I then, by definition, they do nor 

satisfy all of the limitations of dependent claim 6. 

Wahpeton Canvas Cu., 870 F.2d at 1552 n.9 (Fed. Cir. 1989); see 

- also 35 U.S.C. $ 112, r[ 4. Thus, the evidcnce of rccord shows that 

the accused products do not infringe claim 6 of the ‘357 patent for 

s~I~s~anrially the same ieascfns that they do not infringe the asserted 

claims of the ‘064 patent. 

s, 

2007 U.S. App. LEXIS 23225, at *I 5-*16; 

(SBr at 61-62.) 

The parties agreed that each limitation of the asserted claims of the ’064 and ‘357 patents 
is met, except for the GUL and TUT ~irn~tati~ns. (CPFF 2025 ~un~ls~ut~~ in rclevant part).) As 

the paides only provided one anaIysis of the CUI and ‘TtiI I~rnltati~ns. the adrnin~~t~~~lve law 

judge finds that the parties agreed that each of claims I and 20 of the “064 patent and claim 1 of 

the ‘3357 patent disclose said GUf and TU1 ~it~~t~tio~~~. and that the same inf~n~~~~~nt analysis 

applies. (CBr at 102-103;RBr at S1-55: SBr 58-62.) Moreover, as found TI Section V11J3, supra. 

-the a~~inist~~~tlve law judge has found that the claim ~~~s~~~ti~~s of the GUT and TUI 

linzitations are substantially the same as between the claims of the ‘UG4 and ‘357 patents. As for 

the GXJI l~~~it~ti~n, c~~~~a~~~nt argued that: 

f 

187 
1 

The staff argued that the accused products do not satisfy the GUI limitation. (SBr at 59.) 

~pecif~~~~lly. the staff argued hat “It is not possible to modify all of thc available options from 

one screen or one menu of the accused products; the user must go through multiple screens in 

order to do so.” (SBr at 59.) 

The administrative law judge has found in Section V1.B. 1, supra, that the claim phrase 

generate [or generati ngl a single graphical menu for displaying said ~o~i~~~~icatjon options for LC 

each of said coni~iuni~ati~n serviccs at thc same time” is construed 3s “generate, or generating, 

one graphical menu for displaying all of the co~nmunica~ion options far all of the plurality of 

~~r~rnLir~ica~i~r~ scmices.” He thus rejcctcd coin~lainan~~ s proposed construction. 

It is undisputed that the accused OXE system does not generate a single graphical menu 

that shows all of the com~~inic~ti~n options associated with a user’s cotn~nui~i~ation services at 

the same ti me. {RFF II1.B. 1.1 (Lind~s~~ited~.~ In Fact, complainant’s jnfringement arguments 

depend on its claim ~onstT~i~t~on ar_pment: 

I 

Thus. complainant not only provided no argument Zhat the 

accused products infringe under a different clai ID construction, but also admitted that seset-a1 

graphical menus are generated. Also, cornplainant’s cxpcrt had no opinion as to whether the 
accused products infringed, given that all options of all cornrnun~~~~j(~ns services must be 

displayed. (Tr. at 856-57: 1049.) Respondent’s expert, however, testified that the accused 

products did not infgnge undcr these conditions: 

Q. So, then, hased upon your review of the OTXJC product, the -- 

is it your opinion that under the ABS construction of the graphical 

user interface limitation. that the accuscd products would infringe‘? 

A. No. The accused products -- sorry. Which ~on~t~.Licti~n did 

you just say? 

1 Based on the foregoing, the 

administrative law judge finds that complainant has not established that the OXE system accused 

products practice the GUf lifnitatiun as required by the asserted clajtns of the ‘064 and ‘357 

patents, 

Regarding the 1-UI limitatioti, complainant argued that “the evidence establishes that the 

I83 
accused OXE System practices the ‘ttelephon y server’ li rnitatiori under Microsoft’s proposed 

construction bccame the tclephony server of the accused system audibly represents some of the 

co~mu~~ica~io~ options offered by the system. (CBr at 108.) 

Respondent argued that there is no dispute that “in the accused OXE system, the options 

available through the multiple graphical menus are not all available through the TUL (REF 

1II.B. 1.1 1 : KBr at 53 .) 

The stall argued thaj because the interface for the acciised products does not display all of 

the available options, but rather displays only a subset of options, that the TUI limitation is not 

satisfied, (SBr at BO.) 

Thc ~drn~nistr~~tlve law judge has found, in Secrion VII.B.2. sugra, that, for claims 1 and 

20 of the ‘064 patent, the claim phrase “said telephony server being configured to audibly 

represent said co~~~nicat~nn options to said telephone when said subscriber employs said 

telephone to access the computer ~~~p~~~ented control center” is construed as “the telephony 

server being coilfigured to audibly represenr co~munlcati~n options pertaining to at least two 

con~mu~iic~~io~i services to a telephone when the subscriber employs said telephone to access the 

computer irn~le~~ente~ control center.” Thc a~mi~is~rat~ve law judge has also found that, for 

clam li of the ‘357 patent, that the claim phrase “audibly representing said ~o~i~un~eat~on 

options to onc of said telephones, using said telcphotiy server, when said subscriber employs one 

of said telephones to access said computer-irnplemented control center” is construed as “audibly 

seprescnting co~~un~cation options pertaining to at least tuin co~~~iun~c~t~on scrvices to a 

telephone, using said telephony server, when a subscriber employs one of the te~epho~es to 

access the computer-implemented control center,” which is inconsistent with coinp1~ina~~t.s 

1 90 
proposed construction, As the parties agreed, m, the language of the asserted patents 

rcgarding the claims is su~sta~~~i~ll~ the sitme as regards the ~nf~-ing~ment analysis and will be so 

treated by the administrative law judge. 

I 

191 
1 Moreover, respoildent does not prcwide any argument in the 

post-hearing briefs or the rebuttal findings of fact for no~~-i~~~~r~g~~n~nt where the ~d~inistr~t~~e 

law judge substantially found for respondent and staff regarding claim ~onst~uc~i~Ii oF the GUX 

limitation and complainant regarding claim construction of the TU1 limitation, i.e., where the 

GUI is required to have all ~onimunicati~n services and ~~~~~ni~ati~n options, hut the TUX is 

riot required to have a11 of the co~i~un~cation services and options displayed in the GUI. (& 

RBr at 53-54 (arguing that the accused products do not meet the TU1 limitation under 

ALE‘s construction); RRBr at 32 (arguing that the accused products do not meet the ‘TU1 

limitation under ALE’s constructi~n.~ Thus, the administrativc law judge finds that 

coinpEaiiiant’s argument that the accused products meet the TU]: limitation stands essentially 

unrebutted. (CPW 2050 - 2062 ~undisp~ited in relevant part).) Further, complainant’s expert 

Chang has testified: 

I 

3 

192 
1 Hcnce, the ~drni~istr~~~lve law judge finds that CDX-168 and CDX-169 shows 

testing perfumed by ~~~rn~~~i~~n~’~ expert showing that the TU1 of the accused products has a 

inem with more than onc ~~rn~~in~ca~i~~ service-, and that each service has several options. 

CDX-168, CDX- I BO.) Thus, the ~~rni~i~tr~ti~fe law judge finds that ~~rn~l~inat~t has established 

that the OXE systern accused products meet the TU1 limitation. Z-lowever, because thc 

193 
~~driiiiiistrativ~ law judgc has found that co~~l~~i~iant has not es~~bll~hed that thc OXE system 

accused products practice the GtJI ~i~~ta~~on~ he finds that c~~~~lainant has not established, by a 

preponderance of the evidence, that the asserted claims of the ‘Ob4 and ‘357 patents are mfi-mged 

by said accuscd products. 

I>. Coxitributory Infnngenicnt 

Complainant argucd that respondent has contributed to the inf~~n~ement of the 

patents-in-suit by others. (CBr at 113.) Specifically, coniplainant argued that respondent has 

conceded that it (or another ALE company) has used in the United States both the accused OXE 

and OXO system products (CBr at 113-1 14); that there has been at least one use in the United 

Stales, by at least one ALE customer as identified in ABS14433-34. of each of the accused OXE 

and OXO system products (CBr at 114); that said accused products do not have substantial 

nuninfringing use (CRr at 114); and that respondent has been aware of the alleged infringenient 

of the ‘339, ‘289, and ’357 patents siiice December 2004 and the alleged infi.in~ement of thc 

‘064 patent since October 2005 (CBr at 1 IS). ‘Thus: complainant argued that res~onde~t has 

contributed to the ~nfrin~enient of the asserted patents. (CBr at 115-1 16.) 

Respondent argued that there is no direct infringement, and thus there can be no indirect 

lnfringe~eiit. (RBr at 54-55,87-58, 113-1 14.) respondent argued that both the accused 

OXO and OXE system products have substantial non-in~~I~~in~ usc. (RBr at S8-89, 114-1 15.) 

The staff argued that respondent has stipulated that its custorncrs use the accused systems 

in the United States. (SBr at 64 citing JX-9C at qy 2-3.) The staff argued that although 

respondent has known of the patents for several years, the evidence does not show that there are 

no substantial non-infringing uses for the OXE system, and thus ~o~plainai~t has not proven 
~~nt~l~~itoT~ lnfr~n~~~ent, {SBr at 64.) 

The a~inin~st~~tive law jtdse has found, supra, that the accused OE system prodiict~ 

infringe only claims 1 arid 28 of the ’339 patent, (which relates to a “system”) and tione of the 

other asser-tcd claims of the ‘439 patcnt. The ~~ministr~ti~/e la% judge has also found that the 

accused OXO system products do not infringe any of the asserted claims of any asserted patent. 

As direct inkingement is a requirerncnt of ~on~~~~t~~ mfringcincnt, the admin~strati~~ taw 

judge only need analyze contributory infri rigecnent regarding the accused OXE system products 

and claims 1 and 28 or the ‘439 patent. 

Respondent has stipulated that it impurts or has imported. sells 01- has sold for 

importation. or sells or has sold within the United States after ~~po~~tion the accused OXE 

system products, (CPFF 2103 ~u~id~sp~ted in relevant pat); see also SX-9 at 1.) Respondent has 

also stipulated that there has been at least one use in the United States, by at least one of 

respondent’s customer as identified in ABS14633-34, of the accused OXE system products. 

(GPW 2107 ~~indi~p~t~~ in relevant part); see also JX-9 at I.) ALE has been ware of the ‘439, 

patent since December 2W4. (CPFF 2161 ~un~ispu&e~~.) Respondent does not raise any opinions 

of counsel as a defense. (CPFF 21 62 ~un~~sp~te~~~,~ { 
) Thus, OmniPCX Enterprise PBX 

coi~ponertt of the accused Om system products have substantial no~~-i~i~rin~i~~~ use. 

i 

} Thus. the ~drnin~5t~~~tl~~ taw judge finds that the 

accused OXE system products which include the OTUC software. have no substantial noninfrznging use. Based on the foregoing, the ad~~i~istt-ati~~e Iaw judge finds that respondent 

contributorily infringes claims 1 and 28 of thc ‘33‘3 patent by selling the accused OXE system 

products, which include the OTUC software. 

’* Respondent incorporated RRCPW 2T12.A-1. as its rebuttal findings to CPFF 2J 13. 
E. Tnduced Infrin~emei~t 

~orn~~ai~~~it argued that respondent has induced others to inf~nge the p~len~s-i~-suj t. 

(CBr at li 16.) Specifically, complainant argued that respondent's customers and 1-esellers have 

directly infringed the Microsoft Patents by selling. offenng for sale and using the accused 

systems that ALE has admitted to importing into the United States (CBr at 116); that respondent 

has cxhihited an intent to induce these acts of direct jn~~n~~~ient by providing directions, 

demonstrations, guides, manuals, training for use, and other materials that encourage the 

infringing use of the accused ALE systems (CBr- at 116); and that respondent has been aware of 

the '439, '2x9 and '357 patents since December 2004 arid the '064 patent since October 2005 and 

has known since that time that the components of the accused ALE systems were especially 

acfdpted for use in an infringing manner (CBr at 116). Thus, ~omp~ainant argued that in view of 

ALES knowledge of the patents, its specific actions to encourage use of the accused ALE 

systems in an infringing manner, and the direct inf~ingement of the patents by ALE'S customers 

and reseilers. ALE has induced lnf~nge~ent uf the patents-in-snit, (CBr at 116.) 

Respondent argued that there is 110 direct infringement, and thus there can be no indirect 

~Iif~n~e~~nt. (RBr at 54-55, 87-88, 113-1 14.) Further, respondent argued that both the accused 

OXO and OXE system products have substant~al non-in~~*in~iiig use. (RBr at 55-89. 114-1 15.) 

The staff argued that respondent possessed the requisite specific intent for induced 

infringement. as respondent knew of the patents for several years, has d~~t~~u~ed user guides and 

other public materials to its resellers and customers explaining how to use the accused systems. 

and did nor present any affirmative evidence to attempt to show that it did not believe that is 

prodiicts infringed when used as directed, (SBr :it 63.) Thus, the staff argued that respondent has 
induced infxlngernent, should ~o~iI~Ia~n~nt prove direct infringement. (SBr at 63.) 

The a~iiiinfstrat~~e law judge has found, supra. that the accused OXE system products 

infnnge claims 1 and 28 of the ‘439 patent, and none of Lhe other asserted claims. The 

administrative law judge has found that the accused OXO system products do not infnnge any of 

the asserted claims. As direct infringement is a requirement of induced in~~inge~~en~. the 

administrative law judge only need analyze whether or not respotident induced others to infringe 

claims 1 and 28 of the ‘439 patent by using the accused OXE system products. 

Respoiide~i~ has stipulated that it imports 01‘ has imported, sells or has sold for 

i~po~~tion, or sells or has sold within the United States after importation the accused UXE 

system products. (CPFF 2103 (~indisput~d in relevant part]; see also 3X-9 at I.) Resp#n~e~t has 

also stipulated that there has beexi at least one use ir, the ‘IJnited States, by at Least one of 

respondent‘s customers as identified in ABS 14633-34, of the accused OXE system products. 

(SPW 250 ~un~~spu~e~ in Feelevant part); CPFF 3107 (~nd~sputed in relevant part); see also JX-9 

at I.) ALE has been aware of the ‘439, “289 and ‘357 patents sincc Dccembcr 2004 and the ‘06.1. 

patent since October 2005. fCPW 2161. ~undi~put~~?.) Respondent does not raise any opinions 

of counsel as a dcfense, (CPW 2162 ~~ndis~~~ite~~,~ Furthcr, rcspondcnt does not dispute that it 

has “distributed user guides and other public materials to its resellers and customers explaining 

how to use thc accuscd systems,” (SPFF 252 ~undisputed~.~ Also. there is evidence that 

r*espondent has distributed public materials to its resellers and customers showing that the 

accuscd UXE system products have ~~nc~~o~ality that has been shown to infi-ingc. { 

195 
) Based on the foregoing, the ~~dministr~iti~e law judge finds that 

responcient has induced others to infringe ctarrns t and 28 of the ‘439 patent through use of the 

accused OXE system products. 

IX. Enforceaki lity { ‘289 And ‘439 Patents) 

Respondent argued that each of the ‘289 patent and ‘439 patent are unenforceable due to 

ine~uitable 

‘289 patent, h/ricrosoft never informed the Examiner abour. thc co-pending ~~~~licatfo~ for the 

‘4439 patent, despite the “substantial similarities”’ between the specifications and clainx of the 

‘289 patent and the ‘439 patent, which failure means that Microsoft did not submit material 

infomation of which it was aware to the Examiner regarding the ‘289 patent. (RBr at 33.) 

Respondent also argued that a Brennan reference cited in the prosecution of the ‘439 application 

It 1s argued that, dunng the prosecution of the applicatiori that led to the 

’’ Respondent. in its preheairng brief, had a1Ieged that the ’357 patent was unenforceable 

due to inequitable conduct. Respondent has. however., waived said argument, because It 

presented no argument in its post hearing submissions, including its proposed finding of fnct, 

regarding said issue. hiloreover, respondent has offered no relevant objections to ~~~Fl~~r~~n

proposed findings of fact regarding said issue, (& generally CFW 364 I - tPFF 3666.) 

199 
(JX-5)”’ discloscd the elcrncrit upon which the appljcant dis~ii~~~iished the prior art In thc ‘289 

application. (RBr at 101.) Similar arguments by respondent were made 3s ta the ‘439 patent. 

Thus it was argued that the ‘289 app~~c~~tion was never disclosed to the Examiner rekiewing the 

’439 application and that a UeSirnone reference cited in tile prosecution of the ‘289 application 

(JX-6) discloscd the elcmcnt upon which thc applicant distin~~iish~d the prior art in the ‘439 

application. (RBr at 128-30.) 

~omplain~~n~ arguedthat because respondent has failed to provide evidence of either 

materiality or intent to deceive, respondent’s allegation of inequitable conduct rclating to the 

prosecutions of the ‘339 and ‘2851 patents should be rejected, Tt was also argued that the Brennan 

reference was not material to the ‘289 ap~l~cation ad that the DeSimonc reference was not 

material to the ‘439 app~~~~tion. (GBr at 173-9.) 

The staff argued that the evidence of record does not establish an intent to deceive the 

Patent Office and hence the ‘439 and ‘289 pajents have not been shown, by clear and convincing 

evidence, to be unenforceable based on inequitable conduct. (SBr at 92-3.) 

To prove ~nequ~t~~le conduct in the prosecution of a patent, the challenging party must 

provide clear and convincing evidence of ‘“affirmative ~ls~epres~n~~ti~ns of a materia1 fact, 

failure to disclose material ~nf~~[~a~~on. or sub~~s~~o~ of false material information, coupled 

with an jntcnt to dcccive.” 

19%). To determine this issue, a court must foIlow a two-step analysis: “first, a d~~~€~inat~on of 

whether the withheld reference nicets a threshold level of materiality and intent to mislead, and 

second, a weighing of the ~ate~alit~ and inlent in light of all the cir~u~stances to determine 

, 149 F.3d 1321. 1327 (Fed. Gir. 

- See Section VI.A.3 -+ 

200 
whethcr the applicant’s conduct is so culpable that the patent stiould be u~~nfor~eab~e~~~ 

v. Franklin Cotv., 265 F.3d 1268, 1273 (Fed. Cir- 2001). Both materYa1ity of the reference and 

intent to decerve must be ind~~~~~e~tly es~abl~s~e~~* Key Pharrns. Y* Hereon I,aBs. Cmx, 161 

F.3d 709,7 19 (Fed. Cir. 1998) (requiring independent threshold findings of materiality and 

intent). Morcovcr materiality does nut presume intent, which is a separate and essential 

cornponetit of inequitable conduct. San~~fi-S~~n~liel~~o v. Apotex, Inc., 470 F.38 1368, 1331 (Fed. 

Cir. 2006). Also, “[ilntent tu deceive ‘cannot be inferred solely from the kt that infor~~tion 

was not disclosed; there must be a factual basis for a Ending of deceptive intent.”” Kao Coq. vUnilever US, hc,, 441 F.3d 963,972 (Fed. Crr. 2006). 

In the first step, the court must determine whether thc withheld reference meets a 

threshold level of materiality and whether the evidence shows a threshold level nf intent to 

mislead the Patent Office. Baxter, 149 F3d at 1327. ‘The more material thc omission, the less 

culpable the intent required, and vice versa.” ~-rallib~t~on Co, v. Schlumherger l‘ech. Corl).. 925 

F.2d 1435. 1439 (Fed. Cir. 1991). As to materiality. il reference, even if it is not prior art. is 

deemed material if there “is a ‘subs~ant~al likelihood that a reasonable examiner would consider 

it important in deciding whether to allow the application to issue as a patent.’” Id. at 144.0 

(quoting 37 C.F.R. 5 156 (1939)). Ha7niever, “a patentee need not cite an orherwise material 

reference to the €‘TO if that reference is merely cumulative or is less material than other 

references already before the examiner.” Baxter, 149 F.3d at 1323. 

When weighing “whether uncited prior a13 is more material than that before the 

Examiner, a trial court considers similarities and d 

the patent [and] must consider portions of pnor afi refcremes which teach away from the claimed 

renees hctwcen pnor art and the claims of 
in~~~t~on.’~ ~~iliibu~#n, 925 F.2d at 1440. Ine~ult~~~Ie conduct also requires an intent to act 

inequitably. GFT, 265 F.3d at 1274, The intent element of the offense is therefore proven by 

inferences drawn from facts, with the collectiori of inferences permitting B confident judgment 

that deceit has occu~l-ed. Zd. 

Once the ttireshold levels of materiality and intent liave been established, the trial court 

must weigh materiality and intent. Molins PLC v. Textron. Inc., 48 F.3d 1172, 1178 (Fed. Cir, 

199S), The more material the otnission, the less evidence of intent will be rquired in order to 

find that jneq~ijtabIe conduct has occurred. N.V. Akzo Y. E.€. du Pont de Nernours & Ca., 810 

F2d 1145, 1153 (Fed. Cir. 1987). 1r1 light of all the ~~~Gui~starIc~s~ the court must then determine 

whether the applicant’s conduct is so culpable that the patent should be held unenforceable. 

,958 F.2d 1066, 1070 (Fed. Gir. 1992). 

Respondent, relying on its assertion that Nydegger and fsraelsexi were the prosecuting 

attorneys of the application for the ‘289 patent (RBr at 971, argued that in the prosecution of the 

a~p~i~~t~on that led to the ‘439 patent, Microsoft never informed the Examiner about the 

co-gcnding application for the ‘289 Paten{, (RE V.C.5.2.) { 

202 
1 The administrative law judge finds said testimony of 

Nydeggar and IsraeIsen unrefuted by my hearing testimony. 

Respondent furthcr argued that Israelsen and Reed wese responsible for the prosecution of 

the ‘439 patent. RRCPFF 35 16 A. { 

203 
With respect to the imteriality of the Brennan patent as it affects the ‘289 patent, the 

Examiner for the ‘439 patent application described the Brennan ret‘erence as folisws: 

Regarding claims I, 2 t ,283, :i~id 38, Brennan teaches iz system, 

method, and a cornpurer readable medium for user specifications of 
call processing in a telephone network having a user telephone 

(Fig. I. 15-17) coilpled to the telephone network {Fig 1, 12>, the 

system comprising: a data structurc contaiacd within a computer 

network (Fig. lb, 10) to store user selectable criteria for call 

processing (Fig. 1 b, 24); a compirter network access port used by 

the telephone network to access the data structurc (Fig. IC); and a 

controller (Fig. lc, 48) to receive an incoming call designated for 

the user telephone 15-37 and tu proccss thc incoming call in 

accordance with the user-selectable criteria (column 3, line 54 

through column 4. line 1 &), the controller accessing the data 

s~ruct~irc via the computer iietwork access port atid thereby 

applying the user-selectable criteria to the incoming call (column 4, 

lines 19-35) 

Regarding claim 6, 33,33, and 45, Brennan further teaches the 

system wherein the user-selectable criteria indicates no permission 

to process the incoming call, thc controller blocking the incoming 

call and not generating 3 ring signal at the user telephone (when the 

caller- is directed to voice mail, the user telephone wilt not be rung). 

Regarding claims 9,311.36, and 48, Brennan further teaches the 

system wherein the user-selectable criteria indicates permission to 

process thc incoming call during a user-selected time period, the 

controller processing the incoming call during the user-selected 

time period in accordance with the permission tu generate a ring 

signal at the user telephone, the controller blocking the illcorning 

call and not generating a ring signal at the user telephone during a 

time period other than the user-selected time period (column 6, 

lines 46-48.) 

(JX-5 at MSAL ~0~8S-~~~~U.) Based on this description, the ad~i~i~t~~~ti~/e law judge Ends that 

the Brennan patent, does not conternplate the limitations in the asserted claim for the ‘289 patent 

calling for “monitored activity” and “processing thc call according to said monitored activity.” 

The a~m~nist~~tive law judge further finds that the ~re-d~t~~~ned rules claimed in the ‘289 

patent are essential to the fiincrioning of the invention claimed as they are used to process 
~~~o~ati~~ regarding the monitored activity of the user computer to determine where the 

As for any materiality of the DeSimone patent as it affects the ‘4439 patent the Examiner 

for the ‘289 patent described the eSimone patent as follows: 

DeSimone discloses an interactive chat rotm whereby one 

participatlt to ara on-line chat may give iri~orm~~tion, e.g..credit 

card ~nfo~atio~~. hidher phone number, to a 3rd party in order to 

obtain another chat room ~~~~lci~~~t’s phone number so that both 

chat room participant‘s may engage in a private telephone 

conversation, DeSimone shows a telephone network (PS’TN-130) 

and an independent computer network (Intetnct- 100). An 

originating telephone (103) is associated with a calling party and is 

coupled to the PS’I’N (130), along with a destination telephone 

(1 14) associated with the callcd telephone (1 14). PC (102) is 

associated with calling party (102) who is engaged in an fnternet 

chat session and BC (1 13) is associated with the called party. A 

call processor will set up a telephone call from the calling party 

(lO2/1U3) to the called party (1 1311 14) based upon the status of the 

calling and called Darties’ computer status. Both the calling and 

the called parties’ computer status will be “busy” in order that a 

telephone call can be set: up between the parties. 

(JX-6 at MSAL 01497 (emphasis added).) Based on this description, thc administrative law 

judge finds, and the parties agree, that the DeSimorie parerit “uses an affirmative request from 

both participants to initiate the call in an anonymous manner through a broker.’“ (CPFF 3633 

(uridjs~u~ed).~ Hence, the ad~ii~ist~*ati~e law judge finds that the DeSinione patent does not 

disclose assessing both caller (G, subscriber) and caltee user) activity, as do the asserted 

claims of the ‘$39 patent, in order to determine the appropriate action to take with respect to an 

incoming telephone call. Furthermore, based on the description, supra, the a~mini~trat~ve law 

judge finds that the UeSirnorie paterit does not disclose any user-selected criteria for filtering or 

processing a telephone call as recited in asserted claims. 

206 
Bascd on the foregoing the ~d~i~~st~~tive law judge finds that rcspondent has not 

~srabl~~h~d~ by clear and coslviricing evidence, that the ‘430 and ‘269 patents are unenf~rceabfe. 

X. Domestic Industry 

To invoke thc protection afforded by Scction 337, a co~~Iain~~nt must show by a 

preponderance of the evidence that a domestic industry exists or is in the process of being 

establishcd within the United States. The domestic industry requircrnent has two prongs: an 

“econoniic” prong rtnd a “technical” prong. 

On September 5,2007, the adm~nis~~at~~e jaw judge issued Order Xu. 9, which granted 

complainant’s motion for summary dete~ination that it. satisfied the eeoiiomic prong of the 

domestic industry requirement, On September 20,2007, the ~o~~iss~on cletermiried not to 

review Order No. 9. 

The “technical” prong requires that the activities alleged to constrtiitc a domestic industry 

actually utilize the intellectual property at issue. In the eotitext of a patent-based invest~~~tion~ 

the technical prong is satisfied if the eo~~Iaj~ai~1 demonstrates that it is practicing at least one 

claim of each of the pat€nts-i~-l-~s~ue. Thetest for claim coverage for purposes of the domestic 

industry requirement is the same as that for in~~~i~~~ent. The technical prong of the domestic 

it-ldustry can be satisfied either literally or under the doctrine of equivalents. Certain Excimer 

Laser Systems for Vision Correction Suraerv and Components Thereof and Methods for 

, Inv. No. 337-TA-419, Order No. 43, 1499 ITC LEXIS 245, V (July 

30, 1999). The compl~inant, however. is not required to show that it practices any of the claims 

asserted to be infringed, as long as it can esfablish that it practices at Ieast one claim of the 

asserted patent. Certain Point of Sale ~e~ln~ls~oi~~~t~ Thereof. Xnv, No. 337-’X’A-S24, 

207 
Order No. 40, 2005 XTC LEXLS 374, 96 (Apr. I I, 2005). 

A. The Liffick Patents 

1. Prod11cts In Issue 

The bacrosoft systems in issue are: 

(i) Microsoft Office ~~~unlcator 1 .O (“OC 1 .O”) in association with Live 

C~~munic~t~ons Sewer 2005 (LCS) LCS System”); and 

(ii) Microsoft Officc Commu~~i~ator 2.0 (“OC.2.0”) rn association with Office 

C~~~uni~at~on~ Server 2007 (“OGS”) “OCS System”). 1‘’ 

(CBr at 118.) Both LCS and OCS Systems work iti combination with the Microsoft Exchangc 

Server 2007, which includes Outlook Web Access and Outlook Voice Access, to provide 

Microsoft eustomcrs with a broad range of options and features. (Chang, Tr. at 607: 14-608:2.) 

(CPFF 133 ~undis~~~ted).~ The tcS and UCS provide centralized call ~~ana~e~~nt conferencing, 

video coll~~o~~tio~, instant messaging, and other related capabilities. (Chang, Tr. at 464:20-23; 

CDX-20.) (CPFF 134 (un~is~uted).} 1,CS or OCS are connected to personal computers that are 

running either version 1.0 or 2.0 of UC software, respectively, over the amptter network. 

(Serafin. Tr. 234: 18-20, 235: 16-236:20: CDX-20.) (CFW 135 (und~spute~).~ The Office 

Co~~~iinjc~~~r software works in conjunction with thc LCS and OCS aiid collect~v~ly provides a 

very hroad range of ~o~~~ini~at~on services. (Chang, Tt.. 465:9- L2; CDX-20.) (CPFF I36 

~iindis~uted~.) OCS and LCS serve to support ~~rnrnu~ications on rhe Officc Comrniin~cator 

client. (Chang, Tr. 4@:23-25: CDX-20.) (CPFF 137 ~~nd~spute~),~ *‘Client’’ refers to a computer 

Cotnplain~n~ has used the generic tenxi ”Microsoft System” to refer to either the LCS 

System or the OCS System in cunj~nct~o~ with the other system components because the 

technical analysis for domestic itidustry is identical for thc LCS and OCS Systems. (CBr at 118- 

19; CPW 149.) 
progani thrrt executes on rhe computer, For instance, PC I and C 2. (Chang. Tr. 464:25-465;2; 

CDX-20.) (CPFF 1388 (undisputed).) 

Microsoft has two versions of the Office ~~~~un~~a~(“OC”), (Chang, TI-. 46514-5: 

CDX-20.) (CPW 239 (~~n~~sp~~te~~.) OC 1.0 is an older version of Office Co~~i~ic~to~~ and OC 

’7.0 is a newer version of the Office C~~~unicato~.. (Chang. Tr. 4656%; CDX-20.) (CPFF 140 

{iind~spi~te~~).) The I,CS/OCS server is necessary Cor the Microsoft System to connect people 

who are trying to send instmt messages to each other. (Serafit>, Tr. 253:13-254:21,) (CPFF’ 141 

(iind~sputed).~ The domestic industry systems with respect to the Lxffick patents further include a 

~icrosoft-supp~jed CSTA software module, called Remote Call Control (or “RCC”), and a 

1egac;y PBX. (Ctiang, ‘Fr. 608: 13-24.) (CPFF 142 ~undi~pu~e~~.~ The Microsoft System includes 

a module called Remote Gat1 Control (“RCC”) that connects the elements on the OCS and LCS 

and Exchange to the Legacy PBX. (Chang, Tr. 466:4-6; CDX-30.) (CPW 143 (utidjs~ute~).~ 

RCC is a module that uses the CSTA protocol. (Chang, Tr. 366:6-9: CDX-20.) (CPIFT; 144 

[~nd~sput~d).~ RCC: is a software using a gateway protocol called CSTA, and can enable 

communicrr~ion betwecn Microsoft Office Communicator via the LCSlOCS server and a PBX. 

(JX-29C (Tidwell Uepo.) at 27:6-10,31:2S-42: 1.) [CPFF 145 (uri~js~uted>.~ CSTA allows 

computers to c~rn~u~ic~te with a Legacy PBX, which connects in turn to the outside PSTN 

world. {Chang, Ti-. 4.669- id; CUX-ZO.> (GPFF 146 ~und~sp~~e~~.) ~icro~oft OC1.0. OC 2.0, 

LCS, OCS, atid Microsoft Exchange Server 2007, including Outlook Web Access and Outlook 

Voice Access are software products. {Serafin, Tr. 3-54: 16-3SS:g; JX- 142 (Bargman Ucpa.) at 

19: 13-20.] (CPFF 147 (undisputed~.? 

2. Technical Prong 

209 
a. ’289 Patcnt (Claim 1) 

Re~~~r~i~~ the prudircfs m issue and the Liffick ‘2&9 palent the private partics on Clctobe~ 

1 1 2007 submitted a joint stipulated order regarding domestic industry. In said order, thc 

parties stipiilatcd to the following: 

1. The parties hereby stipulate that in regard to tJS. Patent No. 6,430,289 (“the 

’289 Patent”) . . . the Microsoft Domestic Itidustry products ~ic~oso~~ Office 

~ommuni~~~t~r I .0 in association with Live ~~~mun~~~~tlons Sewer 2005, 

~lcros~~t Office eo~~u~~i~a~o~~ 3.0 in association with Office Communlcat~on~ 

Server 2007, and Microsoft Exchange Server 2007, which includes Outlook Web 

ACCCSS and Outlook Voice Access, mect the limitations of claim 1, except the 

foltllowing elements underlined beluw : 

I. In a system that includes a telephone network and a 

computer network with one or more users, wherein erlch user is 

connected through a user computer the computer network and is 

logically connected through the computer network to the telephone 

ncfwork, a method of dete~i~in~ when to establish telephone 

~ommunic~tion between two paties, at least one of whom is a user 

connected to said computer network, ~omp~s~n€: 

at the computer network, receiving infomation from the 

telephone network that a first party from whom a call is originating 

desires to establish telephone c~mm~ni~rl~ion with a secund party; 

at the computer network, monitoring activity of a user 

computer connected to the computer network and associated with 

~; 

at the computer network, storing a set of pre-d~termined 

rules for determining when the second pasty is available to take a 

call from the first party; 

at the computer nctwork, using the set of a pre-determined 

ruIes tu z)r-ocess i) the information received from the telephone 

32 The joint stipulated order is entitled “Stipulatcd Order Regarding Infringement, 

Domestic Industi-y And Valjdi ty Of US. Patent Nos. 6,421,439; 6,430,289; 6,~~3,0~~~ and 

6,738,357” (Joint ~tj~~~iJ~ti~n~ The Joint Stipulation is designated as JX-33, and a corrected copy 

was filed on October 15,2007. 

3 10 
network regarding thc call being originated by tire first paity, and 

ii) inf~~~~tjon regarding; the monitored actjvity of the user 

computer of thesecond^ 

is avai gable to take the call originated hY ttic first party; 

through the telephone et^. 

2. The parties hereby stipulate that in regard to US. Patent No. 6,430,285) ("the 

'259 Patent") . . . the Microsoft Domestic Industry Products Microsoft Office 

~omm~~nicat~r I .O in association with Live C~~~~i~n~cat~ons Server 3005, 

Microsoft Office ~~inmuni~ator 2.0 in association with Office ~~~~u~ica~ions 

Server 2007,and Microsoft Exchange Server 2007, which includcs Outlook Web 

Access and Outlook Voice Access, meet the foliowing limitations of claim 7, 

except the elements underlined below: 

7. In a system that includes a telephone network and a 

computer network with one or more users, and %herein each user is 

connected through a user computer to the computer network and is 

logically connected through the computer network to the telephone 

network, a computer prosam product comprising: 

a computer readable medium fur carrying computer 

executable instructions for implernentin~ at the cornptiter network 

a method of de~~r~~ning when to cstablish telephone 

com~u~ication between two parties, at least one of whom is a user 

connected to said computer network, and wherein said method 

comprises: 

at the cornpuler network, receiving ~nfo~~ti~~ from the 

teleplione network that a first party from whom a call is ori~inat~ng 

desires tu establish telephone corn~~~ini~~t~o~ with a sccond party; 

at the cotnputer nctwork, t~or~i~o~n~ activity of a user 

comwter connected to the computer network and associated with 

-; 

at the computer network, storing a set of predete~ined 

ides for determining when the second party is available to take a 

call from the first party; 

~uter network. usino the~r~~ncd 

21 1 
rules to grocess I j the information received froni the telephone 

network regarding the 6311 being originated by the first party. and 

iij information regardinp the monitored activity of the user 

computer of the second MY, to determiric when the second ozarty 

is asaiIable to take the call originated - by the first party. 

The Clairncd Ptirase %t the computcr network, rnotiitorii~~ activity of a user 

computer connected to the computer network and associated 1vith the second 

11a1ty’’ (Limitation A) 

Complainant argued that being on a VoF call constitutes ’“activitf under either party‘s 

construction of this term. (CBr at 129.) Under Microsoft’s construction of “activity’.’; as “status,” 

PC 1 p~~~~o~~~l~ would be in a “busy’? state when engaged in a VolP call via the Office 

C~~u~icat~~. application, and free otherwise. fCBr at 129-30, citing CPFF 262 I -22,2629-35.) 

Under ALES c~nstruc~io~ of “activity” as “active or idle,” PC I would put~or~edl~ be “active” 

when engaged in a VoIP call, because the cornpiirer is executing the Office Co~~unic~t#~ 

software ~~ppl~c~tio~. (CBr at 130, citing CPlT 2633-24.) ~o~p~ai~ant further argoucd that while 

executing the softphone application, the computer PC 1 is also running other software programs 

involved in capturing the user‘s voice, compressing the voice information, digitizing the voice, 

packetizing the digitized and compressed voice information into digital packets for transmission 

over the network. and tr~~s~jtt~ng various control information, (CBr at 130, citiiig CPFF 2625, 

2635) At the same time, the computer also pu~ort~d~~~ receives incoming voice data packets. 

and must reverse the digitizing and compression process lo render the analog voice over its 

speakers. (CBr at 130, citing CPFF 2626,) ~omp~~~naiit further argued that while perfoming 

these tasks. the computer actively monitors and responds to various inputs from the user’s 

keyboard and mouse. allowing the user to petform other tasks while engaged in a Vow call. (CBr 

at 130, citing CPFF 2627-38. j 
Resp~n~~~t argued that c0n~p~a~nant.s expcnz Chnng relied upon thc same example of 

activity for both the ‘439 and the ‘289 patents, A. the called party being engaged in ii VoIP 

softphone caIl (RSr at L36, citing RE%’ Vl.B.3.1 a RFF Vl.B.3.2.) Kespondent argued that 

Chang’s only examplc involves the Microsoft ~~)rnniun~cator application: not the OWA and 

OVA applications (RBr at 136); arid that when incoming calIs xe processed based on a called 

party being busy on a VoIP softphone telcphone call, thosc calls are not being routed based on 

ttic called party’s activity or status on a camputer network or a computer. (RBr at 136.) Rather, ir 

is argued that the incoming calls are being processed in the same way they would be processed if 

the called party was busy on a telephone handset. (RBr at 136, citing RFF VX.B,2.3.j Thus, 

respondent argued that this example of call processing in the Microsoft domestic industry 

products does not demonstrate that the products route calls based on either the current activity oF 

the user on the computer network, or the acf~vity of the user computer. (RBr at 136,) 

The staff argued that the evidence shows that co~ip1a~nan~’s domestic industry products 

are covered by claim 1 ofthe ‘359 patent under the correct claim c~~structi~n. {SBrat 68.) It is 

argued that respt>ndent’s expert did not offer any testiinony concetning the technical prong of the 

domestic industry requirement. (SBr at 68. citing Tr. at 1455.) The staff also argued that 

although coniplajnant’s expert applied an incorrect construction of the “activity” limitation, the 

evidence rtevertheless shows that thc Microsoft System can route calls based on whether the user 

is “active or idle” on his or her computer. (SBr at 68.) 

The paiTies agree that the Live ~~~~~~un~cations Server (TXS) is a server software that 

provides real-time ~ommffnica~iun services such as telephony, presence, instant messaging, and 

audio and video. (CPFF 150 (un~~Ispute~),j They also agree that the LCS System ~ncludes atnong 

2 13 
other components: (i) LCS server software that prclvidcs rcal-time Comn~Linlca~ion scrviccs: (ii) 

the 01: 1 .O softwarc ~pplicatio~~ which runs on a computer connected to the LCS and which 

provides a number of unified coniinunications options, including softphone features; and (iii) a 

Legacy PBX connected to the LCS via the RCC module. (CPFF 15 1 (~ndisp~it~d).) The parties 

further agree that the LCS is connected through network to the Legacy PBX and to oiie or more 

client computers, and that it ~o~~unlcates with a PBX via Microsoft Office ~~~~unic~~tor and 

the CSTA gateway: the CS’I’A gateway is a bridge between Microsoft Office ~o~in~un~~a~or and 

the PBX, (CPFF 153, 152 ~u~dis~ute~)~~ 

The administrative law judge has found in Section V1.A. 1, supra, that the phrase “activity 

of a user computer” means dete~ini~~ whether the user computer is “active or idle,” 

~~~he~~ore~ the ‘283 patent specification descnhes the activity of il user comptiter as follows: 

“[a] user’s computer activity may also be ~o~itor~~ and the computer status ;ts idle or active may 

be reported to the computer network as part of the call processing criteria.” (JX-2 at Abstract,); 

“[iJn addition, the potential cake’s computer activity may be monitored and the status of the 

computer as rdle or active may be reported to the computer network.” (JX-2 at 2: 15-18); ‘“[t]he 

system 100 can monitor computer activity and generate signals to both the originating telephone 

I02 and thc destination tclephonc 104 when the callee computer 354 and the caller computer 184 

are not in the idle state” (JX-2 at 14:50-53); and -‘[i]n this manner, the system 100 can monitor 

computer activity and determine when the callel- and cajlee may both be available for a tclephone 

call and further applies call processing criteria for both the caller and callee.” (JX-2 at lS~4-7.) 

~dditiunally? compIa~na~t’s expm Chang testifled to the following regarding the activity 

of a computer for this claim limitation and domestic industry: 

2 13 
Q. 

atte~iti~rr to CDX-211. ABS has stipulated with respect to the '289 

patent certain Limitations, so we will ium to the disputed 

limitations, but just for the record, is ir your opinion that thc 

domestic industry system rncets thc limitations set forth in 

CDX-2 I 1 through 2 I 3? 

So now if we can turn to the '289 patent, if 1 can direct your 

A. Yes, it does. 

Q. 

the documents cited on those slides? 

And is the bssis for your opinion set forth in those slides and 

A. That's coir-ect. 

Q. So if I: can direct your attention then tu CDX-214, the disputed 

claim limitation is "at the computer nctwork, monitoring xtivity of 

a user computer connected bo the computer network and associated 

with the second party." 

Is it your opinion that the domcstic industry system rriects 

this ~j~it~~~o~~? 

A. Yes, it does. 

Q. And can you explain the basis for your opinion? 

Qdoes the domestic industry systcm meet rhc limitations that are set 

foi-th in GDX-215? 

Iff can direct your attention to CDX-215, in your opinioii, 

A. Yes, it does. 
Q. And can you explain the basis for your opinion? 

because user 1 is ennaged in a telcphone caX1. therefore, user 1's 

miter is rn a busy state. And that condition is detected bv the 

LCS and OGS and the L~gacy PBX as shown in this diagram is 

directed to redirect the call to the call r~rw~~~~i~~ target. which in 

this case is user E. 

So at the end, user A becomes connected to user B because 

the original called ~artv. user 1's computer was in a husv state. 

Q. 

constitutes computer am 

And so, again. is it on a VoIP call 

A. That's correct. 

Q, 

claim 1 of the '289 patent? 

So in your opinion, does the domestic industry system meet 

A. Yes. it does. 

(Tr, at 613:2-6261:20 (emphasis added).) Also Zig f. SerrafinX3 testified to the following 

regarding the capability of the Microsoft System: 

A. 

users to change in order to be able to customize their 

c~)m~unica~ion experience. 

There are certain set of rules that Office ~o~n~~nic~tor allows 

Q. 

customize his or her experience using Office ~om~un~c~~tor~ 

Can you give the Court some examples of how a user might 

A. Yes. An example would be if I'm busy in a meeting, 1 can let 

my calendar system inside the Exchange know that during the 

tirncs \$hen r am busy, my phones should aut~ma~~cally be put on 

'j Serrafin is a general manager in k1ierosoft.s Unified ~o~i~~inica~~ons Group. (Tr. at 

233.1 

2 16 
"do not disturb" so I am not interrupted in the middle or a meeting. 

Another example would be that if 1 am making a 

presentation and I am usin9 ~~ower€'~~int, the moment tny computer 

launches the PowerPoint in order to make mv prcsenttition, the 

computer network can let all of my voice conimuni~~~tlo~ device% 

~hone~kno~/ that f should not be disturbed and so 

the rule can be set to allow people not to intemipt me when X am 

actually busy, as an examde. 

So those are just a coiiple OF examples. 

Q. What would happen if someone tried to call you while you 

were using your computer to speak with Ms. Green? 

A, 

automaticallv have the calko to voicc mailrerouted to anot~er~. 

The call could be intercepted and rerouted. I could actually 

Q. And what is that feature called? 

do not -- do not disturb if I am husv, those are some examples of 

- that. 

(Tr. at 265:25-267: 10 (emphasis added).).) in addition the adm~nist~~t~ve law judge finds that the 

deposition testimony in CPX-10 discloses the ability of the Microsoft System to route caHs 

according to user-selected criteiia when the user is performing certain activity. (GPX-10 at 3-5 

minutes, 7-3 minutes.) For example, the Microsoft System user can set the system to route calls 

to a particular destination when the user is using the PctwerFoint software. (CPX-IO at 3-5,7-8 

minutes.) 

Based on the foregoing, the ~d~i~istrative law judge finds that the user computer is 

"active" when the Microsoft System is engaged in a VolP cal1 or when the user is using 

PowerPoint and as such, the user computer is necessarily active when the user is engaged in these 

2 17 
activities. Thus, the ~i~rninls~rative law judge finds that a user computer is ~~d~~~~

activity 

when the Microsoft System is engaged in a VolV call as the computer is necessarily performing 

ccrtlzin tasks and is interacting with thc Legacy PBX in order to successfully transmit and receive 

data between the computer and telephone networks. (CRW VI.B.3.I-F.) The administrative 

law judge also finds that the user computer is undertaking activity when the Microsoft System 

user IS using the PowerPoint software. The adn~inis~r~tive law judge accordingly finds that the 

Microsoft System monitors such activity of a user computer when it checks for the “active” or 

*‘idle’- nature of the user’s computer to determine if it needs to reroute a phone call when the 

computer is already engaged in a VolP call or using PowerPoint. (CPFF 2631,2632,2634; CPFF 

633 (ui~d~sputed); SRCFF 2641.) Thus, the administrative law judge finds that the complainant 

has established that the MicrosQft System satisfies Limitation A. 

The Claimed Phase “at the computer network, using the set of pre-determined 

rules to process . . . ii) information regarding the monitored activity of the user 

. . . ” (Limitation €3) 

Complainant argued that the Microsoft System uses the pre-determined rules to process 

(i) information received from the telephone network regarding the call onginated by the caller 

and (ii) ~nfo~at~o~ regarding the monitored activity of the user computer of the callec, to 

determine when the cake is available to take the call from the caller. (GBr at 130-31.) By 

selecting one or more of the pre-determined rules allowed by the Office Communicator software, 

co~plainant argued that the user can instruct the Microsoft System, for example, to block or 

allow certain callers to reach the user based on certain times when the user would be available or 

otheiwise engaged in a VoXP call. (CBr at 131, citing CPW 2638-89.1 Co~pla~~~~t further 

218 
argued that the Microsoft System uses those sets of ~~re-dete~t~~ned rriles and then processes two 

sets of infor-mation, one from the te~cph~n~ network and the orher from the cornptrter. 

~o~pla~nant in addition argued that the in~oi~~at~on regarding the monitored activity of the 

cailee’s computer is the status of the computer, for example, PC 1 in CDX-I lS, tunning the 

softphone software ~ppIi~~~t~~~. (CBr at 13 1. cittng CPFF 2641.) 

~esp~Ii~erit argued that at the hearing, complainant’s expert Chang relied upon the same 

example of activity for both the ‘439 Patent and the ‘289 Patent, namely. the calIed party being 

cngaged in a VoIP softphone call. (RBr at 136, citing RFF VI.B.2.1, RFE; VX.B.2.2,) It is argtied 

that Chang’s orrly exatnple involves the Microsoft ~o~~unicator application. not the OWA and 

OVA applications. (RBr at 136.) It was again argued that when incoming calls processed 

based on a called party king busy on a VoIP softphone telephone call, those cal ts are not beitig 

routed based on the cslllcd party’s activity or status on a computer network or a computer. (RBr at 

136,) Rather, r~spond~nt argued that the i~icornl~~ calls are being processed in the same way 

they would bc processed if rhc called party was busy on a telephone handset, (RBr at 136, citing 

RFF VI.B.2.3.) 

The staff argued that the evidence shows that ~~n9pI~~nant‘~ domestic industry products 

are covered by claim Z of the ’289 patent under the correct cIaim coristniction (SBr at 68.) It Is 

argued that although complainant’s expert applied an incotrcct. co~structio~ of the “activity” 

limitation, the evidence nevertheless shoviis that the Microsoft System can route calls based on 

whethcr the user is “active or idle” 6x1 his or her computer. (SBr at 68-69,) 

TXic ‘289 patent specification defines certain rules with respect to affiliation lists as 

follows: 

219 
~~teriia~~~/ely, thc user niay still maintain the block hst 164 such 

that calls will not be p~ocessecf from certain specified parties even 

if the user is willing to accept calls from any other source. Utider 

other circumstances, the user tnay riot wish to c~)m~un~ca~e with 

any iiid~~~duals. Iti this instance. the user niay indicate that all 

calling parties arc on the block list 164. Thus, the central office 

switch 116 will a~cess the Internet 134 in real-time and review data 

in the affil~ation list 150 to thereby process ir~co~ni~~ calls for the 

user in accordance with the rules present in the affiliation list. 

(JX-2 at 921-3 1 -) The specification further defines user-selectable criteria being a~~Il~d in 

conjunction with the status of both the caller arid the callee: 

These rules may be applied di~ferentjally to different ones of the 

list in the affiliation list 150. For example, the user- may accept 

calfs from any calling party on the forward list 1 SO (see FIG. 3) or 

the aldotv list 166 during the evening hours. However. alter a 

certain time at night, the caller may accept caIls only from calling 

parties on the forward list 160. Thus, the system 100 allows great 

~l~~ibllit~ in the user selection of calling rules and lists. The system 

1100 allows the user to filter incoming calls in accordance with 

generalized niles or in accordance with highly specific rules. 

In addition to filrei-ing incoming calls to the destinat~oi~ telephone 

104, the system 100 can monitor the status or activity of both the 

caller and the cake and establish a communi~ation link between 

the originating telephone 102 and the destination teleptione 104 

when the status data indicates that both the caller and cake are 

available for a telephone conversation. The system 100 has beeti 

p~eyi~~~ly described with respect to callee status ~onito~n~ and 

~ro~essiii~ of incoming calls in a~cordance with the user-selected 

(i.e., the callec-selected) call processing criteria. Similar status 

r~o~ito~ng ca be performed for the caller- 

(JX-2 at 13:55-14: 11.) The specification also describes the system's consideration of both user 

selected criteria and the status of a user on the computer nerwork: 

The system 100 can monitor computer activity and generate signals 

to both the o~~~inatin~ telephone 102 and the destination telephone 

104 when the callec coniputer 154 and the caller computcr 184 are 

not in the idle state. The fact that 50th computers' are not in the idle 

220 
state indicates that the users of each respective computer inay be 

availablc for a telephone ~o?i~cTsatio~. In addieion, rhe system 1013 

can apply call processing rules that may also govern operation of 

the telephone portidprs of the system 100. For example, the cake 

computer 154 may be in an ’“active’’ state (as opposed to the idie 

state) but the user has indicated that he should not be disturbed at 

thc present time. Thus, the central offke switch 116 or the call 

processor 176 accesses the affiliation list 150 for the desti~at~on 

telephone 104 to determine thc cake-selected cd1 processing 

criteria. In addition, the central office switch 1 I6 OT the call 

processor 176 can acccss thc affiliation list E50 for the caller and 

apply any caller-selected call processing rules. For example, the 

caller computer 184 may be in the active state, but the caller status 

in the affiliation list 150 may indicate that the caller is in a meeting 

and is, therefore. unavailable for a telephone call wirh the callee. In 

this manner, the system 100 can monitor computer activity and 

determine when the caller and callee may both be available for a 

telephone call and further applics call processing criteria for both 

the caller and callee. The call processing criteria for the caller and 

callee as well as the current status of the callee computer 154 and 

the caller cornpiiter 184 we stored within the respective a€filiation 

lists 150 on the lnternet 133. This data may be accessed by the 

central office switch 116 or the call processor 17G via the network 

connection 132 in the manrier previously described, 

The administrative law judge has found, supra, ils to 1,i mitation A of claim 1, that the user 

computer is “active” when it is engaged in a VoIP call or when the user is running Powerpoint. 

The adn~~i~i~t~~t~~~~ law judge has also found, as to Limitation A, that the Microsoft System 

monitors activity of a. user computer such as running of VolP software or Powerpoint, when it 

checks if a user computer is in “active” or “idle” status in order to determine if it needs to reroute 

a phone call based on any user-selected preference. Hence, the administrative law judge further 

finds that the ~o~plainant hasestabk,hed that the Microsoft System satisfies ~it~~~~tio~ B 

because it either connects rhe telephone call or reroutes it when the calk is engaged in a VolP 

22 1 
call or PowerPoi tit. 

The Claimed Phrase “and using the information processcd at the computer 

network to facilitate connecting the call . . . ?’ ~~iI~i~at~on C) 

Complainant argued that based on the information processed at the coniputer network. the 

call handling module inside the Legacy PBX facilitatcs, b, helps bring about, the connection of 

the incoming call with the user-callee if the System determines that fie is availabie, the re-routing 

of thc incoming call to a pre-set destination if the user-callee is otherwise unavailable, or even 

the fonvarditig of the incoming call to the user-callee’s own cellular telephone if he is engaged on 

a VoIP caII. (CBr at 132, citing CFFF 2649; CDX-215 and clocurnents cited thereon,) 

Respondent argued that in the Microsoft System when incoming calls arc processed based 

on n died party being busy 011 a call using a soft phone, such calls are not being routed based on 

the called party’s activity or status on a computer network or a computer. fRRBr at 69.) Rather, 

respondent argued that the incoming calls are being processed in the same way they would be 

processed if the called party was busy on a standard telephone handset, (RRBr at 69, citing RFF 

VI.B.2.3.) 

The staff argued that with respect to the “to facilitate connecting the call . . . to dcterrnine 

when the second party is available to take the call’” lj~itations, it is clear from Mr, CRang’s 

testimony that the Microsoft system at least allows the uscr to dcterrninc which calls are routed to 

him and which calls are blocked, thus satisfying the li~itati~~ns calling for facilitating or 

determining when to connect rhe calls, fSBr at 68, citing Tr. at 61 1-12.) 

In Iight of the findings su~ra, as to Limitations A and B of claim 1 the ~d~~inist~~tiv~ law 

judge further finds that the capability of the Microsoft System to route calls according to 
infomation, such as Computer status or specific user-selected criteria, determines the ultimate 

destination that will receive the call. For example, by either connccting a call to the initial 

~es~~nation or by rerouting the call to an alternate one, thc nixicrosoft System uses said 

info~atloii to establish a connection between the caller and calk. Thus, the ~~dmj~istrati~e larv 

judge finds that the c~~~Iai~a~t has ~sta~l~she~~ that the Microsof1 System satisfies Li tnitation C. 

Based on the foregoing, including the a~~~nist~~t~~~ law judge’s findings as to 

Limitations A, B and C of claim 1 of the ‘283 patent, the administrative law judge finds that 

corn~~~inant has established thc technical prong of the domestic industry requirement with 

respect to the ‘289 patent. 

b.. ‘439 Patent (Claim I) 

Co~plainant argued that: although Commission precedent only requires a domestic 

industry for one valid claim of the ‘439 patent, the evidence prescnted at the hearing 

demonst~-at~s that the “‘Microsoft System” practices at least claims 1, 28 and 38 of the ‘439 

patent. 

Respondent argued that Microsoft cannot satisfy the technical prong of the domestic 

industry rcquircment for the ‘439 patent. (RBr at 135.) It qycd that all oF complainant’s expert 

Chang’s exiltnples of activity for the ’439 patetit with respect to the domestic itidustry products 

arc of the called party being busy on a VoIP softphone call (WF VE.A.;Z.), which is the same 

example of actisity Chang relies upon for his examples of in~~iii~ei~~~t in the accused ALE 

systems, (RFF VI.A.3; RBr at 135.) 

The staff argued that the cvidence shows that ~o~~pIainant’s domestic industry products 

are covered by clLtims 1.28, md 38 of rhc ‘439 patent. under the correct claim construction. (SBr 

223 
at 66.) ’X’tie staff argued that the testimony of co~~ia~i~ant’~ expert generally satisfies 

c~inplaina~it’~ burden of showing that its products practice claim I of the ‘439 patent. (SBr at 67. 

cifing Ti-. at 611-15.) 

The Claimed Phrase ‘.€n an environInent where subscribers call a user over a 

telephone network, wherein a wer telephone is coupled with the telephone 

network, a system for processing an inccmiing call . ~ ” (t,imitation Dj 

Cornplainant argued that the ~icrosof~ System allows subscribers &, callcrs) to call a 

user &, cnllee) over a telephone network, with the user’s telephone being coupled to the 

telephone network (CBr at 119, citing CDX-199 & CDX-191; see alsy CPFF 2510-2514): that as 

complainant’s expert Chang explained at the hearing, the caller, who is called a “subscriber” in 

the claims of the ‘439 patent and represented on CDX-190 by his ~~ue-~ii~hli~~~e~ telephone. is 

connected to the PSTN (CBr at 1 19, citing CPET 2515 (Tr- at 609: lG-613:3; CDX-190)); and 

that the cake, called a “user” by the claims, appears on CDX-191 as sonieone using hrs Office 

~oI~~~~n~cator 1.0 or 2.0 software program’s softphone feature on his computer BC 1, which is 

coupled to the local area network and ultimately to the PSTN. fCBr at 119. citing CPE‘ 

25 IG-19,) Complainant further argued that the Microsoft System processes an incoming call 

according to the user’s specifications. (CBr at 120, citing CPFF 2524-251; and zhnt the user of the 

Microsoft System can ~u~p~~~~ly use his Office Coininuiiicatvr inlet-€ace to set various call 

processing features, such as selective forwzard-on-busy where the system deflects his iricoming 

calls to a pre-defined destinatioti when lie is engaged un a softphone call while still allowing 

important callers to interrupt him. (CBr at 120.) 

Respondent did riot offer any ~r~~~ents for the preamble of claim I with respect to 

domestic. industiy. (& RBr at 134-136: see also RRBr at 68-69.] 

224 
not offer any ar~u~~ents for the preamble of claim I with respect lo domestic 

industry. (a SRr at 66-68; SRBr at 32-34.) 

It is u~~~lspute~ tha the FtilJcrosoft System allows subscribers {&, callers) to call a user 

(i.c., callee) over a teIephonc network, with the user’s tekphonc being coupled to the telephone 

network. (CPFF 25 13 (Lindisputed~, j It is also undisputed that because a user of the Microsoft 

System can use his computer to execute OC 1.0 or 2.0 as a PiolP so~t~~une that is connected to 

the caller on the PSTN, the Microsoft System meets the limitation “wherein a user telephone is 

coupled with the telephone network,” (CPFF 2519 (und~sp~~e~~,~ It is further undisputed that the 

Microsoft System meets the limitation “a system for pracessing an incoming call from a 

subscriber to a user in the telephone network according to user ~pecifi~~tions.~’ (CPFF 2525 

~undls~ute~).~ In light of the foregoing, the a~min~s~ra~~~e law judge finds that the ~~~~~I~~na

has established that the ~icrosoft System satisfies Limitation r) of claim 1. 

The Claimed Phrase “’a data structure contained within a computer network to 

store uscr-selectable cnteria for call processing . . . wherein some of the one or 

more lists are used to filter the incoming call according tu current activity of 

subscribers on the computer network or according to current activity of the user 

on the computer network *’ ~Li~~ita~~on E) 

~ompiainant argued that the Microsoft System includes a data structure contained within 

a computer network to store user-selectable criteria in one or more lists that are used to filter an 

ancoming call. <Car at $21, citing CPEF 3526, 2527,2536-40); arid that as shown in 

~o~~pl~in~nt’s cxpcrt: Chang’s demonstratives. the list on CDX-193 is a “buddy list” or more 

generally a kist of contacts for a particular user, (CBr at 121. citing CPFF 2528-30.> Complainant 

also argued that Ehrough his Office Con~n~~~nicator softivare interface- the user can cdit 

permissions related to each of the cuntacts on the list, ~esi~natin~ a given contact as someone 
who the system should block or allow to reach the user under certain situations (C3Br at 12 I, 

citing CCPFP 2S3 1-34)): arid that the pennissjons constitute user-selectable criteiia for call 

processing that are stored on the LCS/OCS server computer. (CBr at 121, citing CPEF; 2535.) 

C~)~plainant furthcr argued that Ctiang showed how the system handled an incoming call from 

User A to User 1 wherc User t is currently engaged in Voice over IF call with User 2. (CBr at 

122, citing CDX104, CPFF 2541-44.) ~omplalnan~ in addition argued that when the kgacy 

PBX informs the LCSlOCS server that there is an incoming call from User A for User I, the 

LCSIOCS server- knows that User 1's status is "busy" because there is activity on his computer. 

(CBr at 132, citing CPFF 2545,2553-55,) According Zo complainant. such activity includes User 

1's computer's execution of the Office Communicator software appl~cation as well as running 

other so€tware programs involved in capturing the user's voice, compressing the voice 

information using various standard CODECs, digitizing the voice, and then packetizing the 

digitized and compressed voice infomation into digital packets fur transmission over the 

network (GBr at 122, citing CPIY 2546-50) and that at the same time, the computer pvrportcdly 

afso receives incoming voice data packets, and must reverse the digittzing and compression 

process to render the analog voice over its speakers. (CBr at 122-23, citing CPFF 25s 1 ,) 

Complainant argued that while performing these tasks, the computer actively monitors and 

responds to vaiious inputs from the user's keyboard and mouse, allowing the user to perform 

other tasks, such ac sending instant messages, while engaged in a VoXP call. (CBr at 123, citing 

CPFF 2552.) 

Respondent xgwd that Chang relied upon the same example ol' activity for both the '439 

and the '2289 patents, VJZ,. the called party being engaged in a VoIP softphorie call. (KBr at 136, 

226 
citing RFF VI.B.2.1, W‘F VI.B.2.2.) It is argued that Chang’s only example involves the 

Microsoft ~~omrnun~~ato~ ~~~~icatioi~, not the OWA and OVA ~p~lj~at~ons, {RBr at 136): that 

when incoming calls are processed based on a called party being busy on a VoP softphone 

telephone cail, those calls are not being routed based on the called party’s activity or status on a 

computer network or i\ computer (KBr at 13G), but rather, the incoming calls are being processed 

in the same way they would be processed if the called party was busy on a telephone handset, 

(RBr at 136, citing RFF Vl.B.2.3.) Thus, respondent argued that this example of call processing 

in the Microsaft domestic industry products does not demonstrate that the products route calls 

based on either thc current activity of the user on the computer network, or the activity of the user 

computer. (RBr at 136.) 

The staff‘ argued that unlike the accused ALE products. the Microsoft products can mate 

calls based on whether the user is using a full screen computer appl~cation, such as Power Point. 

(SBr at 67, citing Tr. at 266; CPX-10, at approx. 5 minutes.) It is argued that the it1rcrosoi-i 

system can actually route calls based or) whether or not the user is active or idle. such as when 

the user is typing or using his or her mouse. (SBr at 67, citing CPX-IO, at approx. 3-4 minutes, 

7-8 minutes.) Thus, the staff argued that it is not necessary to reach the issue of whether making 

a VoIP phone cali satisfies the lirniration requiring the system tu “filter the incoming call . . . 

according to current activity of the user on the computer network.” (SBr at 67, citing CDX-194.) 

The parties agree that the -Mia-usoft System mccts the limitation 

a data structure contained within a computer network to store 

user-selectable criteria for call processing, wherein the data 

structure stores the user-selectable cnteria in one or more lists that 

are used in filtering :UI incoming call. 

227 
(CPFF 2527 ~~iTi~isput~~).) However, the paflies disptt= whether the Microsoft Sysrern fiJters 

the incoming call “according to cuxent activity of subscribers on the computer network or 

according to current activity of the user on the computer network.” Nonetheless, the parties 

agree that the phrase, ”current activity of thc user on thc computer network” means the “current 

status of the user on the computer network.” f 1015107 Joint Stipulation Letter (Motion Docket 

No. 595-25) Attached to Order No. 18.) The ad~inistr~~ti~e law judge in the claim construction 

section has found that the ”status” of a user cat1 consist of both user-selected indicators based on 

user actrvity (e,a,. “conditional processing” as per the ‘439 spe~i~ca~~o~~ and the transfer of data 

between the computer and telephone networks while the user< is engaged in a VoIP phone call. 

Fut~he~o~e, cor~pla~t~~t~s expert Chang testified regarding this particular claim ~i~i~~tio~~ as it 

relates to domestic industry: 

Qdata structure contained within a computer network to store 

user-sclcctable criteria for all processing, wherein the data structure 

stores the user-selectable critei-ia in one or more lists that are used 

in filtenng an incoming call,” 

Now, if we can turn to CDX-193, which has the lamilattion “a 

In your opinion, does the domestic industry system meet 

this limi~dt~on? 

228 
1 

(Tr. at 61 13-6142.1 Addtionally, complainant’s Serifin testified ta the following regarding the 

229 
~apa~~lity of the Microsoft System as it relates to domestic: industry: 

A 

uscrs lo change in order to be ablc to customizc their 

~~mmuni~~tion expctrence. 

There are certain set of rules that Office ~o~~~iuni~a~o~ allows 

Q. 

customize his or her expcrience using Office ~oi~~n~n~cat~r’? 

Can you give the Caur-l: same examples of how a user might 

A. 

tny calendar system inside the Exchange know that during the 

times when I am busy, my phones should automa~~cal~~~ be put on 

“do not disturb” so 1 am not interrupted in the middle of a meeting, 

Yes. An example would be if E’m busy in a meeting, I can let 

Another example would be that if 1 am makina 

presentation an~rPoint~ the moment my computer 

launches the Po~~e~~o~at~on. the 

comtmter network can let all of my voice c~~~~un~cat~~)~ devices, 

in this case my phones, know that I should not be disturbed and SQ 

the rule can be set to allow oeoote not to interrupt me when I am 

actuallv busy, as an exam& 

So those are just a couple of examples. 

Q. 

were using your computer to speak with Ms. Green’! 

What would happen if someone tried to call you while you 

A. 

 ha^^^ -the call 90 to voice rxrail. I could have it 

rerouted to another phone, as an exat. 

The call could be intcrcepted and rerouted. I could actually 

Q. And what is that feature called? 

A, That feature would be called fonvard on busy or forward on 

do not -- do not disturb if I am busy, thosc are surne examules of 

~ that. 

(Tr. at 265:25-267: 10 {emphasis added).) On this same point, the deposition ~~st~n~ony in CPX10 discloses the ability oF the Microsoft System to route cillls according to user-selected criteria 

when the user is pexfoming certain activity (CIBX-IO at 3-5 minutes, 7-8 minutes.) For exarnpk, 

230 
thc ~icr~sofx System user can set thc system to route calls to a particular destinaxion when the 

user is using the PowerPoint software. (CPX-10 at 3-5.7-5 minutes,) 

~ui~he~or~, respondent recognized that “the ‘439 Patent discusses monitoring whether a 

particular party is ‘“on” the Internet.” (RFF I.C.3.14; RFF I.C.3.15. JX-l at col, S:6-18.) The 

adt~~nlst~ativ~ law judge Einds that the Microsoft System user is “on” the Tnternet when he IS 

engagcd in a VoIP phone call, as his talking activity is closely related to the accompanying VoLF 

software activity on his computer. ~~~d~t~onall~, the ad~~nist~ati~~e law judge finds that the 

user’s status is active when he is engaged in Powerpoint. The ability of a user to forward calls to 

another Location when he is at that time using Powerpoint enables the Microsoft Systeni to 

monitor and process the phone call based on the user’s status. In order for the user’s conditional 

preferences to operate, the Microsoft System must recognize that the user is presently using the 

BowerPuint software so that the call can be ~ippro~riat~iy routed when the “Do Not Disturb’’ 

preference is set with such Po~er€3~int use.‘Ttius, the adrn~ri~s~~~t~~/e law judge finds that the 

iiser of the Microsoft System is engaged in “activity on the computer network‘ after he selects 

his “status”as “’Do Not Disturb’- when using a computer program such as Powerpoint, or when he 

Initiates a caI1 over the Internet via VoP+ Hence, the ad~in~st~ative law judge finds that 

~omplai~ant has established that the Microsoft System satisfies Limttatition E. 

The Claimed Phrase “a computer network access port used by the telephone 

network to access the data structure. . . ” (Limitation F) 

23 1 
The Claimed Phrase “a contr*oller to receive the ~n~omi~~ call des~~na~ed for the 

user telephone and to process the incoming call in accordance with the userselectable criteria ~ , . .’ (Limitation &;) 

It is undisputed that the Microsoft System meets the controller limitation of claim 1 as the 

parties agree that the controiler inside the Lcgacy PBX of the Microsoft System fulfills the 

controller function as required by the claim language of the controller limitation. (CPFF 2563, 

2565, CPFF 2567 ~undi~p~~te~~.) The administrative law judge therefore finds that c~rnp~~i~ant 

has established that the Microsof3 System meets Limitation G. 

Based on the foregoing, the administrative law judge finds that complainant has 

established the technical prong of the domestic industry requirement with respect to the ‘339 

patent. 

B. The O’Neal Patents 

1. Products In Issue 

Microsoft has put in issue the same systems as were put in issue with respect to the 

Liffick patents. CBR at 

31 It is ~~i~disputed that Microsoft does not sell PBX switches (RW L.D.3.1 (~~ndis~~uted~;) 

and that ~ic~osoft3s domestic industry products are only software. (RF’F 1 .D,3,2 (~ind~sputed).~ 

However while respondent argued that Mtcrosoft’s domestic industry software products rely on 

E’BXs to function, Microsoft argued that its domestic industry software products can function 

without a PBX. See REsF I.D.3.3. and QIRRFF1.12.3.3A. To dcterrninc whether Microsoft has 

established a domestic industry with respect to each of the O’Neal patents, the ad~~nistrative law 

judge finds that it is unnecessary to detet-mirre whether Microsoft’s domestic industry software 
As to the O’Neal parents in the Joint ~tipulation~ supra the private parties stipulated as 

follows: 

3. The parties hereby stipulate that in regard to U.S. Patent No. 6,263,064 (“the 

’064 Patent”) . . . the Microsoft Domestic hdustry Products Microsoft Office 

~~mmunic~~t~r 1.0 in associaftion with Live ~ommuni~~~tions Sewer2005, 

~icroso~t Office ~om~u~~~a~or 2.0 in association with Of€icecommunication^ 

Server 20B7, and Microsoft Exchange Server 2007. which Includes Uutlook Web 

Access and Outlook Voice Access, meet the following limitations of claim I, 

except the elements underlined below: 

I. A computer-implemenred control center for permitting a 

subscriber of a plurality of communication services of a unified 

messaging system to customize com~u~ication options pertaining 

to said plurality of co~~uiiication services through either a 

tel~p~oi~~-cent~c network using a telephone or a clava-centric 

network using a display terminal, said computer-implemented 

control center comprising: 

a subscriber commu~~catlo~ pro€ile database, said 

subscr-iber corn~~~~nicatioii profle database having therein an 

account pertaining to said subscriber, said account including said 

Co~~mun~c~tIon options for said subscriber, said con~~i~nic~tion 

options including parameters associated with in~~vidua~ ones of 

said plrirality of said communicatio~ services and routings among 

said plurality of co~muni~at~on services; 

a computer scrvcr coupled to exchange data with said 

subscriber com~~Iii€atioIi profile database, said computer server 

beina configured to generate a single sanhical menu for displaying 

said conimun~ca~ion options for each of said co~imu~~~€arion 

ervices at thc same rime, and to visually display said single 

graphical menu on said display terminal when said subscriber 

employs said display terminal to access said computerimplemented control center through said data-centric network, said 

computer scrver also being configured to receive from said 

subscriber via said display terminal and said data-centric network a 

first change to said co~~u~ic~tio~ aptptxons and to update said first 

pt-oducts can function without a PBX. 

233 
change to said account in said subscriber co~i~~~in~ca~~on profile 

database. wherem said sinrZle --I gragtical menu comprises at Least a 

first display area for showing a first co~~~~ui~lcat~on service and a 

fim co~m~ni~~tl~n option associated with said first 

Coin~n~i~~icati~~~ service, and a second display area for showing a 

second co~~uni~at~~~n service and a second c~~~rn~in~~at~on optioii 

associated witfi said second Com~L~n~cation service, the first 

display area and the second display area being displayed at the 

same time in . and whercin thc first 

coin~~~~iicat~on opion includes a first enable uption For enabling or 

disabling the first co~tnur~icatiori service, and wherein the second 

co~mun~cation option includes a second enable option for 

enabling or disabling the second communication service; and 

a teledionv server cowled to exchange data with said 

~om~~nic~t~oTi profile database: said telepm 

a resent sai~ said 

teleutione when said subscriber employs said telephone to access 

said computer-im-pIementd control center, said teleDhonti servcr 

also being configured to receive from sad subscriber via said 

telephone a second change to said c~mm~nication options and to 

update said sccotid change to said account iii said subscriber 

co~uni~at~on prfile database. 

4, The parties hereby stipulate that in regard to US. Patent Eo. 6,263,064 (“‘the 

’064 Patent’-). . . the Microsoft Domestic hdustry Products Microsoft Office 

Com~i~i~icator 1 .(I in association with Live ~omm~ini~ations Server 2005. 

Microsoft Office ~~~mn~~nicator 2.0 in a~so~~~tion with Ut’fice Com~uni~atio~s 

Sewer 3007, and Microsoft Exchange Server 2007, which includes Outlook Web 

Access and Outlook Voice Access, meet the following limitations of claim 3: 

wherein said ~lur~lit~ of cornmu~icati~1~ services include a call 

forwarding service configured to permit said subscriber to specify 

whether a call received at tt tclephonc number associated with said 

account be forwarded to a forwarding telephone number, said 

~o~~~nj~atio~~ options including a call forwarding enzible option 

arid said forwarding telephone number. 

5. The parties hereby stipulate that in regard to US. Patent. No. 6,263,064 (“the 

’064 Patent”) . - . the Microsoti Domestic Industry Products Miemsoft O€€m 

~oi~~~uni~atur 1 .O in association with Live ~~~t~muni~~~tioi~s Server 2005, 

Microsoft Office Communicator 2.0 in association with Office ~o~nin~ii~~a~io~~s 

234 
Sesvcs 2007, and Microsoft Exchange Server 2007, which includes Outlook Web 

Access and Outlook Voice Access, meet the following limitations of! clam 8: 

wherein the first ~ornm~~~ic~ti(~n option includes a first routing 

option, and wherein the second coi~~~~~nicalioIi option includes a 

second routing option 

6. The parties hercby stipulate that in regard to U.S. Patent No. 6,263,064 (-‘the 

’064 Patent-’) . . . the Microsoft Domestic Industry Products Microsoft Office 

~o~~mun~ca~(~r 1.0 in ~ss(~ciat~(~~ with Live ~o~~mu~~ca~ions Serser ZOOS, 

~~crosoft Office ~o~m~nicat~r 2.0 in association with Office ~ommun~cations 

Server 2007, and Microsoft Exchange Server 2007, which includes Outlook Web 

Access and Outlook Voice Access, meet the following limitations of claim I I : 

wherein said plurality of cominu~~~catio~ services comprise on 

ermi1 service configured to pcrmit said subscriber to receive and 

transmt e-mails through said data centhc network, and a voice 

telephone service configured to permit said subscriber to receive 

and trmsrnit soicecalls through said t~~~phon~-cent~c network 

7. The parties hereby stipulate that in regard to U,S, Patent No. 6,263,064 (“the 

’064 Patent”) . . . ttte Microsoft Domestic Industry Products Microsoft Office 

~on~rn~it~cat~r 1 .0 in association with Live ~omrn~n~ca~ions Server2005, 

Microsoft Office Co~im~nicator 2.0 in association with Office ~omi~~I~i~atio~~ 

Server 2007. and Microsoft Exchange Server 2007, which includes Outlook Web 

Access and Outlook Voice Access, meet the following limitations of claim 12: 

whcrein said plurality uf co~unlca~ion services include a 

facsimile service configured to permit said subscriber to receive at 

said unified messaging system a facsimile through said telephonycentric network and said tele~hony server, said co~~~nication 

options i~~clu~ing a facsimile receiving enable option associated 

with said facsimile scrviee. 

8, The parties hereby stipulatc that in scgard to US. Patent No. 6,263,064 (“the 

’064 Patent”) . . . the Microso€t Domestic Industry Prctducts Microsoft Office 

~om~u~i~ato~ 1 A> in association with Live ~o~m~inic~t~ons Server 2oc)S, 

Microsoft Office C~i~inunIcator 2.0in association with Office Com~uni~ati~ns 

Server 2007, and Microsoft Exchange Server 200’7, which includes Outlook Web 

Access snd Outlook Voice Access. meet the following li~~itat~o~s or claim 20. 

except the elements ~nderline~ below: 

20. A coinputer-implemented control center for permitting 

235 
a subscriber of a plurality of co~i~u~~icati~~1~ services of a unified 

messagi ne sys tem to customize ~o~i~~iiica~ ion options pertaining 

to said ~~~i~a~it~ of com~~inicatio~i scrvices through either a 

t~le~h~r~~-~~nt~c network using ;1 teIephon~ or 3 data-centric 

network using a display terminal, said computer-amplemenled 

control center comprising: 

a subscriber co~~~~inica~~on profile database, said 

subscriber com~un~cation profile database having therein an 

account pertaining to said subscriber, said account including said 

coni~~~Ii~ca~ion options for said subscriber, said c~?~munic~ti~n 

options including parameters associated with individlaal ones of 

said plurality of said com~unica~ioii services and routings among 

said plurality of com~iunication services; 

a computer server coupled to exchange data with said 

subscriber c~~~u~ication profile database, said computer server 

being configured to generate a single graphical menu for disnlaying 

services at the same time, and to visually display 

Whical nietiu on said display ternii rial when said subscriber 

employs said display terminal to access said computerimp~e~ented control centcr through said data-ccntric network, said 

computer server also being configured to receive from said 

subscriber via said display terminal and said data-centric network a 

first change to said co~muni~at~on options and to update said first 

change to said account in said subscriber com~~ni~at~on profile 

database, wherein said single graphical '1~lenu comprises at least a 

first display area for showing a first co~tnu~iication service, and a 

first c~~~inui~lcat~o~i option associated with said first 

co~~~ni~a~i~n service, and a second display area for showing a 

second co~~uni~~t~~~n service, and a second com~unicat~on 

option associated with said second comm~inlcatio~ service, the first 

display area and the second display area being displaycd at the 

same time in said single granhical mew, and wherein the first 

co~~~unic~t~on service and the second ~o~r~u~iica~i~n service are 

selected from a call forwarding service. a follow me service, ai 

alternate number service, a message alert service, a fax receiving 

sewice or a paging servicc. 

a teleptionv scrvcr coupled to exchanne data with said 

coninitin ication profi 1 e database, said t e Ienh oiiy server hi ng 

236 
telerthone when said subscriber employs said teleDhone to access 

said comauter-iniRlemente~ control center, said telephonv server 

also being configured to receive from sard siibscriber via said 

telephone a second change to said corn~~n~c~t~~n optjons and to 

update said second change to said account in said subscribet- 

~~~~~rnuTii~a~~on profile ifatabase. 

9. Thc partics hereby stipulate that in regard to US. Pattent No. 6,738,357 (“the 

’357 Patent”) . . . the Microsoft Domestic Industry Products Microsoft Office 

~oi~municatoi. 1 .0 in association with Live ~~~~rnu~icat~ons Server 2005, 

Microsoft Office ~ommunicator 2.0 in association with Officc ~ammunic~~t~on~ 

Server 2007, and ~~rosoft Exchange Server 2007, which includes Outlook Web 

Access and Outlook Voice Access, meet the following Ximi&tians of claim 1 , 

except t tie elements underlined beiow : 

1. A cornp~ter-implemented method for permitting a 

subscriber of a plurality of cu~~nuriication services of a unified 

rnessagjng system to customize co€n~unication options peadining 

to said plurality of ~o~~~i~iica~ioIi services, said €~~mun~cati~n 

options include parameters associated with individual ones of said 

plurality of said com~unica~ion services and routings among said 

plurality of communication services, said plurality of 

c~mmunlcatlon services comprising a voice telephone service 

through a t~~ephony-centri€ network and an c-mail service through 

a data-centric network, said co~~inui~i~atioii aptions being 

accessible via display terminals coupled to said data-centric 

network and via telephones coupled to said t~~ephon~-c~nt~~ 

network, said method comprising: 

providing a subscriber ~omni~inic~tion profile database. 

said subscriber co~~nic~i~i~n profile database having therein an 

account pertaining to said subscriber, said account including said 

~on~I~uIiica~~on options for said subscriber; 

gmeratinrr a single graphical menu fctr disnlayinn said 

~~ni~~~nication options for each of said co~ini~in~ca~~on services at 

the same time, wherein said single graphical menu cornpt-ises at 

least a first display area far showing a first corn~u~~c~~i~n service 

and a first ~~~mun~~a~i~n option associated with said first 

co~m~~n~cat~on service, and a second display area for showing a 

second ~oni~Linication service and a second ~ominuni€atloi~ option 

associated with said second ~~~nrnu~icati~~ service, thc first 

display area and thc second display area being displayed at the 

237 
same time. in said sin~le~ra~h~ca~ menu, and wherein the first 

cornmunic~~~~oi~ option ~nc~ude~ a first enable option for enabling 

01- disabling the first com~unica~~on service, and wherein the 

second ~omn~u~jcation option includes a secssld enable option for 

enabling or disabling the second co~rnuntcatio~~ service; 

visually displaying said sin-hical menu on one of 

said display terminals, using a computer server coupled to 

exchange data with said subscriber comm~njcation profile 

database, when said subscriber ernploys said one of said display 

terminals to access said computer-implemented control center; 

providing a telephony server. coupled to exchange &ta with 

said co~~municatio~ profile database; 

receiving from said subscriber via said one of said display 

terminals at said computer server a first change to at least om of 

said ~om~unicati~n options, said first change to said 

comrnun~cation options pertains to either said voice telephone 

service or said e-mail sewice; 

and updating said first change to said account in said 

subscnber co~nmunic~tio~ profile database, thereby resulting in a 

first updated subscriber com~uni~ati~ii prof le database, wherein 

subsequcnt messages to said subscriber at said unified messaging 

system, including said voice telephone service, are handled in 

accordance with said first updated subscriber co~~~~ication 

profile database, 

10. The parties hereby stipulate that in regard to US. Patent No, 6.728357 (“the 

’357 Patent”) . . . the Microsoft Domestic Industry Products Microsoft Office 

~~~~n~~iicator 1.0 in associattjon with Live Coni~~inica~ions Server 2005, 

Microsoft Office ~um~unicator 2.0in association with Office ~~~~rn~~ni~ati~ns 

Server 2007. and Microsoft Exchange Server 2007, which inciudes Outlook Web 

Access and Chitlook Voice Access meets the following ~im~tat~on~ of claim 6: 

wherein said plurality of co~~i~inica~ion services include a caIl 

forwarding service configured to permit said subscriber to specify 

238 
whether a call received at a t~l~ph~n~ number associated with sad 

account be fonvarded to a fo~a~~i~~ ~el~p~~on~ number, said 

~~~~~un~c~t~on options including LI call ~o~~~/ard~n~ enable option 

and said ~or~~a~d~ng telephone numbera. ‘063 Patent 

~ndepe~~~ent clams1 and 20 of the ‘064 parent contain the same claim ~j~itatio~is 

regardtng the Guf and TU1 limitations, (See JX-3 at 18217-42; 18:66-19:4; 2258-63; 24.14-9.) 

Said GUT limitation reads: 

a computer server coupled to exchange data with said subsciiber 

co~~~inication profile database, said computer server being 

configured to Eenerate a sin& nrwhical menu for dxsplayine said 

co~munication options for each of said communication services at 

the same time . . . ~Lii~itat~on H) 

Complainant argued that under Microsoft’s proposed construction of this claim language 

(“a single graphical mcnii for displaying at Ieast a first com~unjc~tion service and option and a 

second ~om~unicat~on service and option at the same time”), the Microsoft System pmctices 

Limitati~n H. (CBr at 135-36, citing CPFF 2678-2684.) It is argued xhat the Microsoft System 

generates a variety of single graphical menus that include two or more co~~uni~at~o~ services 

and co~m~inication options. (CBr at 136, citing CPFF 2679-2654.) ~~rnplaj~a~t also argued 

that the OWA GUI of CDX-231 is a single graphical menu s~~u~tarieo~isl~/ displaying at least a 

first ~om~~ini~atio1~ service (“Telephone ~~ccess”) and an associatcd first co~~~i~~cation option 

(“Phone number to use to tisreti to voicernail using Play on Phone”) in a first display area, and a 

second com~unj~~~tion service (“Missed Call ~~t~fi~ati~ns”~ and an associatcd sccond 

com~unjca~~on option (”Send e-mail to my inbox when f miss a phone catl”’) in a second display 

area. (CBr at k37, citing CPEF 2680.) Complairian~ further argued that the ~oi~i~~i~~cat~r GUl 
of CDX-232 is a single graphfca~ menu siniult~~eous~~ diplaying at least a first c~i~~unication 

service (“Status”) and an associated first com~~ni~ati~n opton (“Change my status to Do Not 

Disturb when I am ruiining a full-screen progxam”) in 3 first display area, and a second 

co~i~~in~cation service (“Phone“) and an associated second cornrnuni~ati~~ option (“Enable Do 

Not Disturh on my phone ~~to~atic~l~~ when my sta~us is Do Not Disturb”) in a second display 

area. (CBr at 138, citing CPFF 2683.1 

Respondent argued that at the hearing, complainant’s expert CIiarig provided two 

examples of the claimed single graphical menu in the Microsoft domestic industry products, one 

fur UWA and one for ~on~munica~or~ (RBr at 135, citing RFF V1.B. 1.1.) It is argued that neither 

of these examples displayed all the co~unlcatIon options for all the co~im~nicat~on services 

provided by either the OWA or Communicatcx products. (KBr at 135, citing REF VIJ3.1.2, RF’F 

VI.B.l.3.) ’Therefore, respondent argued that under its and the staffs constructions of the single 

graphical menu limitation, Microsoft’s domestic industry products do not satisfy this lirn~tat~on. 

(RBr at 135.) 

The staff did not provide arguments regarding domestic industry and the “single graphical 

menu’’ limitation found in claim 1 of the ‘064 patent. (a SBr at 69-70, SRBr at 34-35.) 

The parties agree that at the hearing Chang provided two exarnpIes of the claimed single 

c graphical menu in the Microsoft- domestic industry products, one for OWA and one for 

C~~n~nuI~ic~t~~. (RFF VI.B.l.1 ~~nd~sputed~.~ The parties also agree to the following findings of 

In the screenshot example from Outlook Web Access shown in 

CDX-23 1, ~ommun~cation services generally include “Telephone 

Access,” “Missed Call Noti~catioi~s,.’ “Reset Voice Mail PXN,” 
and “Tele~~one Access Fdder.” ‘‘ issed Call No~~f~~ati~i~’~ gives 

the subscriber the option to enable the service by clicking “Send 

e-mail to my lnbox when I miss a phone call.” ‘Tclcphone 

Access” includes two $Efferent services--“‘Plq on Phone” for 

remotely retriwing voxce mails [enabled by entcring a phone 

number]. and voice mail greeting selection. Similarly, ‘“Reset 

Voice Mail PM” gives the subscriber the option to reset his votcc 

maiil PHN and “Tclephone Acccss Folder” allows a subscriber lo 

select an e-mail folder to be read over the phone via Outlook Voice 

Access. (CPFF 268 1); 

In the screenshot exarnpk from ~o~~u~ica~~r shown in 

GDX-232, coi~~u~i~ation services generally include e-mail 

notification services that aIlows the subscriber to eiiahle the 

delivery of an e-mail whcn he misses a call or a call is forwarded. 

There are also a vaiejy of c~~~un~cati~n services associated with 

tile user’s “Status”-the “Phme” service a1 laws the subscriber to 

enable “do not disturb’’ if that is his Co~~~unicato~ staus. Othcr 

services allow the subscriber options to enable automatic 

dete~i~ation of status based on the subscriber‘s Outlook calendar 

or computer activity [e.g.. “when my computer has been idle” or 

“when I running a full-screen program”]. (CPFF 2684.) 

However, the pat-tres dispute whether a single graphical menu displays all the ~#m~~nication 

options for all the co~in~unication services provided by either Outlook Web Access or Office 

~ommu~i~~t~~r. (RFF VI.B.1.2,33.1.3.) With respect to &is dispute, Chang testified to the 

following regarding the graphical menus of Outlook Web Access and Officer Communicator: 

Q. So let’s turn to the claims of the ’064 patent. It is my 

~n~erst~ndin~ that ABS has sti~ula~e~ to certain limitat~on~ of 

claim 1 of the ‘064 patent, so we will try to skip those and just go 

to the disputed limitations. 

But just for the record, if I can direct your attention to CDX-22’7 

xhrough CDX-230, is it your opinion that thc domestic industry 

system meets those limitations? 

A. Yes, it is, 

Q. And is your opinion, the basis for your opinion, set forth in 

24 1 
A. That’s correct. 

Q. So now, if I can direct your attention to CUX-23 1. isgain. the 

disputed liniitat~oiis referred to as the Guf limitation. It is up top. 

“Said computer server bcmg configured to generatc a single 

~r~ph~ca~ menu fop. d~spI~yiii~ satd commun~c~~t~o~s options for 

each of said cum~i~inicat~on services at the samc ti me.” 

In your opinion, dues the domestic industry system meer 

this limitation? 

A. Yes, it does. And on CDX-23 1 ~ f have reproduced a particular 

screen capture of the ,Microsoft Outlook Web Access or OWA, and 

sometimes referred to as oWA, Arid this is a web intefiace arid 

allows the user to be able tu use the web browser and to configure 

various c~rnrnunica~i~n sewices and options as available on $he 

Microsoft system. 

So on this pmicular dtagram, I have shown twu 

co~I~iinicat~~~ services, and also the options we need in each of 

Ihe services. 

Specifically, I have shown a service that alIows a voice 

mail to he played via remote telephone as if fjrst service and option 

that‘s available to set that pa~icular phone number. 

And the second service relates to a rxlssed calI indication 

regarding how -- what happens when an incoming call is not 

answered by the user. And here the option associated with that 

service would be to send an e-mail to the user if the user missed 

the call. 

So this xs an examde of the Microsoft domestic industry 

system with a esaphical user interface wliere it displays at least two 

4). 

describe to the Court what is shown on CDX-232? 

And then if X can direct your attention to CDX-232, cars. you 

A. 

~raph~c~~ user inlet-face as far as how it meets the Ijmit~tiun of 

Sure. On CDX-232, this is a second cxarnplc of ,34icrosofr 

243 
'064, clain-n I. What 1 have sho~n here is a sci-een cwtuse of the 

~~i~~(~so~t Office ~~~rnrnun~ca~~~r graphical user i ntelrf'i-lcc and this 

will be the orstion, the screen. a ~o~~iunicat(~r user will be able to 

And so f have shown as a first service about -- regarding 

haw the user is able to manage his do not drsturb status and how 

calls should be answered when the user is in do not disturb status. 

The second service relates to telephone scrvice and. again, 

relating to the do not disturb status and options available under the 

-- this particular service. So in the Coininuiiicator example, Z have 

shown, ag'i-lin, two co~~m~in~~atio~ services and options displaycd 

under each of the services. 

Q. 

~o~~~~~nicator in on GDX-23 1, that was an example using UWA? 

Thank you. This is the second example you used 

A. Yes, using OWA web access, yes. The ~o~~inunicato~ access 

is not UWA. That is the interkc presented by the co~mun~cato~ 

client software. 

Q. And that's for CDX-232? 

A. That's correct. 

(Tr+ at 624:7-627: 13 (emphasis added).) Respondent's expert ~y~e-Tha~ps~n also testified to 

the following regarding claim construction of the "single graphical menu'" limitation: 

Q. 

addressed two limitations, correct? 

So in terns of the ~nf~~~~e~en~ for the O'Keal patents, you've 

A. Yes. 

Q. The Gtrr limitation and the TU1 limitation; is that right? 

A. Correct. 

Q All right. If I could have page 2 of RDX-I. 

So here, sir., you siimmclrized ABS' co~is~r~ctio~~ Should 

rhis say Alcatel-Lucent Enterprrse's, X suppose'? 

243 
A. I suppose it should. 

Q. 

So lek's call it ABS just because that's what the graphic says. 

We'll learn. It's just harder to say. That's part 01' the problem. 

On thc right-hand side, you have ABS' constructions. And 

when you red the sinzle graphical menu construction into the -- 

into the record, you stressed the -- all of the ~~}~~uni~~~t~~~n 

options. Do you recall doing that? 

A. Yes. 

Q. And you, in fact. mean that all com~unic~tionptions 

presented in the system have to be presentcd on a single gmphical 

menu? 1s that right? 

A. 

subscriber, yes. 

All of the options of that subscriber's -- you know, for that 

Q. Well, that's the problem, sir. 

A. A11 of the services that suhser-iber is subscr-ibing to. 

Q. How do you hiow what all the services =e'! 

A. Well - 

Q. Is it all of them in the system'? 

A. 

know, he's talking about various different embodiments. But what 

he is talking about is, rn a particular setup where there are a 

particular set of services. all of those services should be shown on 

a single graphical menu -- 

f think this -- this concept that O'NeLil is describing was, you 

Q. Does that mean -- 

A. -- and the options associated with it. 

* * .i: 

Q+ 

com~~ni~ation options in a single Ftrclphical mcnu, correct'? 

So thcre can be no drop down menus in your version of all the 
A. I don't think I mentioned drop dowa menus. 

Q. But that's my qucsrion, sir. Isn't that a fact. under your 

c~e~~njti#Ii, under ABS' ~~f~n~tion of single graphical menu, there 

can be no drop down menus, correct? 

A. I think a drop down selection box is pr~~ba~~y~ust a way of 

choosing thc options, f niean. optrons can have binary values 

eitherlor, 2nd they can be done with tick boxes or radio controls. 

But a more ~ophisti~ated option might be done with a drop down. I 

would regard that as all part of the single graphical user interface. I 

mean, it's a conimon practicc, you know, f niean, goodness. we've 

all got them on our Windows computers. 

Q. 

it can put some of them into drop down menus under your version 

of the construction, correct? 

So the single graphical meiiu has to display all the options, but 

A. It's not a point. I must admit, 1 thought very long about, In 

fact, f thought about 30 seconds about it so far. So perhaps I 

should pricier- it a little bit more in the context of the patent and 

think about the Ianguage that might be indicative of whether or not 

drop down menus arc anticipated. Maybe some of his pictures 

have drop downs. I can't remember. 

Q. 

you can't find a single ~mbodjnieiit that shows all of the 

communic2tion options associated with all of the subscriber's 

com~unieation services on a single menu, can you? 

Well, in fxt, sir, as you're looking through the figures there, 

A. I have found a drop down. So here within figure 4, for 

instance, there are a couple of drop downs which are indicated on 

tlie figure 4. 

Q. 

within ABS' construction of single graphical menu, correcz? 

So in your opinion, then, drop down menus arc permitted 

A. 

figure 3, yes. 

1 think it's reasonable. Xn fact, there's more drop downs in 

Q. 

subscriber has available on his system on a srnglc menu. But some 

of rhcm can be hidden in drop down menus, correct? 

So we know we have to have all the services that the 

245 
A. Not the services. ‘The options associated with the services. 

Q. Oh, Z see. So the drop dawn riienu can onlv contain thc 

mtions hut cannot coIit~~~n the ser-vices themselves, correct? 

A. Agai ti, I say I haven’t pondered this very hard. You’re 

criticizing me already for not taking long enough to look at lhese 

things. Now you’re trying to make rnc make an opinion on the spot 

here. 

But 1 think, given the Dictures that are illustrating the 

patent, it‘s clear his concept is to tmt all of the co~ni~inication 

services on a screen and have odoff b~~

options that can be accessed, witti, auote, a few key strokes such as 

thcsc drop down boxcs it’s got on figure 3 for selecting telephone 

numbers, for instance. 

Q. So it‘s okay to have things that rewire the user to manipulate 

with a fcw kcy strokes, correct’? 

A. That was absolutely the laneuage of the patent application 

history, yes. The claim is that you can change all vour oDtiotis with 

just a few kcy strokes. 

(33. at 1484: 19-I.Ct90: 1 (emphasis added),) 

The a~ministrat~~~e law judge has found, m, that the patentees’ argument in the 

prosecution history of thc’06.t patent is a clear and Lin~~b~~Lious discIaimer of claim scape, with 

the nmowing of the claims to a single graphical menu that displays all of %he services and 

options on one screen. (& Section VI.B.1 supra.> ‘The admin~s~~tive law judge dso found that 

said disclaimer extends tu the ‘357 patent. m} In light of these findings, the ~~dminlstrat~v~ law 

judge construed the “single graphical menu’’ limitation as requiring ‘“one graphical menu fur 

displaying all of the c~mm~nicatio~ options for all of the plurality of com~~nicatiun services.” 

(See Id.) More specifically, the ad~~nistrative law judge found that In order to overmmc the 
ExaiGner’s objection, the patentee added the ~im~tat~on for ’*a single qaphicat menu for 

d~s~l~~~n~ said co~unic~itIonptions for each of said co~iniu~~~~ition services at the same 

time.” (JX-7 at MSAL 01000,) The patentee argued that: 

In contrast to Pepe, indepeiide~it claims 1 and 20 of the present 

application require a -e ~ra~hi€~~ menu that is arranged to 

display the cor~~un~cat~o~ options for each of the co~~iunic~tion 

services at the same time. That is, the ~ommunlc~ttl~n options for 

each of the co~s~Ia~ed 

on a comnuter terminal when the subscriber emuloys the display 

nu 

serves as a centralized visual intcfiicc or control panel for 

reviewing andlor customizing the co~i~~unic~~i~n ootions 

associated with various ~o~~~ini~a~io~i services. As should be 

guicklv arid conveniently review the cot~rnur~icati~~ options and 

make changes thereto. Claims 1 and 20 have been amended to 

better clarify this aspect of the invention. 

While Pepe may disclose the use of control options and 

subscriber profiles, Pe~e does nor conteniDIate a single rra~hical 

of views i~~de~enden~l~, where the options are displaved at 

different times. . . . In order to access a11 of the screens in Pegcd 

E;irures. In contrast, the present i~ve~~io~ does not have to 

access multiple screens to modify options. In fact, the 

mav be modified as needed with a few kevstrokes. Accordingly, it 

is re~peGt~u~~~~~mi~e~ that a single graphical tnenu containing 

the conii~u~~i~~~ion options is neither disclosed nor reasonably 

suggested by Pcpe et al. . . . 

(JX-7 at MSAL 01001-1)2 (bold face emphasis in original, emphasis added).) 

Hence the ad~inistrativ~ law judge tlnds &at the patentees, in describing a single 

graphical menu, limited said menu to one that utilizes “a few keystt-okes” in order to modlfy the 
c#~un~~ation options, and one that s~n~ul~~~eousl~ displays al I of the con~~~inication options. 

for all the services on a single screen. However, niultiple screens appear in both the Office 

(~omm~inlcator and the Outlook Web Access programs of the Microsoft System. ~~~mp~ainan~’s 

de~non~trativ~ exhibits. CDX-23 1 and CRX-232, show the user having to makc multiple key 

strokes in order to modify all of the comn~~~njcatio~ optio~~s. For the Office Co~m~nicator the

GUI shows an option menu with eight tabs, (See CDX-232.) In order to display all the options 

associated with the Office ~om~~~in~cator, the user tnust make at least scvcn clicks with each 

click allawing the subsequent display of the various options associated with each of the 

“Options” tabs. & CDX-232.) The same requirement of multiple clicks and screens to display 

and modify all the communjc~ti~~n options is also apparent in the Outlook Web Access program. 

(& CDX-23 1 .) 

In Iight of the language employed by the patentees and the disavowal of claim scope, the 

administrative law judge finds that c~~mpla~n~~t has not established that the Microsoft System 

meets Limitation H because it does not ~ii~~~~lt~n~ously display all the options, and the user is 

ttierefore unable to modify all the options without making at least seven clicks and displaying 

multiple screens containing all the options. 

Based 011 the foregoing, the adn~i~ist~*at~~e law judge finds that c~mpl~inan~ has not 

established the technical prong for i~de~ndent claims 1 or 30 of the ‘064 patent. Accordingly, 

the adn~~i~~st~~tivc law judgc finds that complai~~~~~t has not estab~~sh~~ the technicaI prong with 

respect to dependent clarms 3,8, XI, or 12. because those claims depend on claim 1 and 

consequently include the sanie 11inIt~tI~~ns as claim 1. Therefore, the ad~ini~trat~ve law judge 

finds that complainant has not established the technical prong of the domestic incfirstry 

248 
re~ui~ement with respect to the ‘064 patelit. 

b . ‘3S7 patent 

~omp~a~nant argued, as to the “357 patent, that it has e~ta~~~~hed that the Microsoft 

system practices tndependent claim I and claim G which is dependent on claim I, Each of thc 

respondent and the staff argued that complainant has not so established. 

Claim 1 of the ‘357 patent has the phrase: 

&, generating a single graphical menu for displaying said 

com~u~ica~io~ optins for each of said c@mmuni~~~t~on services at 

the same time, whcrein said single graphical menu . . . (Limitation 

1) 

This claim ll~~tat~~n is substant~al~y simitar to the (;UI Limitation €3 of claim 1 of the 

“064 patent as anaIyzed supra. For the reasons set forth suura with respect tu said claim elerncnt 

of the ‘064 patent, the a~~~~n~st~~ti~e law judge finds that complainant has not established that 

the Microsoft system satisfies Limitation I for the ’3357 patent. 

Claim 1 of the ‘357 patent also has the phrase ‘‘virtually displaying said single nrau 

menu on one of said display terminals . . . ” (Limitation J> 

The only disputed portion of this claim limitattion is the phrase “single graphical menu.” 

(.lX-33 at 8.) In light of the analysis, suora, which analyzed the phrase “single graphical menu.” 

the administrati~~e Xaw judge finds that com~Iaiii~t hasnot estabIi shed that the Microsoft System 

satisfxs Limitation J. 

Based on the foregoing. the admi~~st~~ti~e law judge finds that complainant has not 

established the technical prong fur claim 1 of the ‘357 patent. As claim 6 depends on 

inde~en~e~t claim1, the ~~mi~i~str~jti~e law judge finds that ~@~~p~ain~~nt also hai not established 

249 
rhe tcchi-rical prong with respect to claim 6. Therefore, the admin~strati~e law judgc finds that 

~~~~~ain~~n~ has not established the technical prong or the domestic industry ~e~~~Iire~en~ ibith 

respect to the '357 patent. 

XI. Remedy 

Upon issuing an initial dcter~j~ation on whether there is or there is not a violation of 

Section 337, the administrative law judge, pursuant to Corn~jssio1-r rule 210.42(~)( l)(iv), should 

issue a recomrnended dete~in~tion concerning his views on remedy as well as bonding. ln this 

investigation c~mp~ain~rit Microsoft requests (i) entry of a permanent, limited exclusion order 

~r~hjbit~n~ the importation into the United States of ALE'S infringing products and (ii) a ceasc 

and desist order. (CBr at 180-8 1 .) It is argued that because ALE is repeatedly changing the 

names of its products without any substantive changes tu the product's architecture or operation, 

the Commission should exclude all infringing products regardless of the marketing name used; 

I 

1. and that despite this re-branding, there is no runcti~n~l change to the product, 

citing (Leroy, Tr, at 1 Z 11: J 9-1 I13:4); and that to avoid ~i~~~mve~ti~~ of the exclusion ordcr. the 

~o~~i~sl~~ should preclude entry of all infrxnging ALE products, regardless of the brand name, 

for any purpose, including for testing, scampling, sale, proniotion andlor d~~~~~st~ation purpcises, 

citing Certain Automated Me&. Transmission SYS. For Me~ium-~ut~ And Weavuty Trucks, 

fnv. No. 337-TA-SO?, Init. Detennin., 2005 ITC &EXIS 241 at "303 (Jan. 7, ZOOS) 

(Transmissions a). 
~o~~p~ain~~t further argued that any exclusion order should cover componcots of the 

infringing systems because if components are not cavered, ALE could easily disregard the 

exclusion order by irnpor-ting the individual components sepwdtcly, and then reass~rn~l~~~~ them 

in this country; that another resp~~~dent in a recent i~~~e~~i~at~on argued that the exclusion order 

"should not cover components or parts," citing Transmission SVS.~ at "299; and that thc argument 

was rejected becair se 

[tJhc centra1 purpose of reniedial orders is to ensure completc relief 

to the domestic industry. An exclusion order covering only specific 

models of an accused device could easily be circumvented, thereby 

denying complete relief to thc domestic industry 

- Id. at "303-05. 

and that given the ~oll~b~~dtio~ of A3;E's reIaled companies (such as Alcatel USA, Jnc.) and a 

host of resellers and distributors, the exclusion order should extend beyond ALE and cover 

principals, ~t~ckho~der~- officers. directors, employees. agents, liccyIsees, parent companies, 

subsidiaries. related companies within the Alcatel-~~~Ice~~t corporate structure, ~~st~but~rs, 
1-esellers, controll~d andlor iarajonty owned business entities and fheis employees and agents. 

successo~ and assigns, in order to prevent ALE from cj~c~I~~~ntin~ the order by acting through 

others. (CBr at 182-8s.) 

~u~~lain~~t further argued that an exclusion order should not be limited tu specific 

models because an exclusion order covering only specific models of an accused device could 

easily be ci~cu~~~ente~, thereby denying complete relief to the domestic industry whicti approach 

is consistent with the Commission's "'long-standing practice" in Certain Hardware Lou,ic 

Emulators Systems and ~o~~~on~nts Thereof, Inv. No. 337-TA-383, U.S.Lrl.C. Pub. 208'1, 

Gomm'n Op. st 26 (Mar. 1998) -> wherein the Commission: 

adopted the AW's recommendation and issued a permaimit limited 

exclusion order directed to 

components thereof manuf 

Meta. The lxmited exclusion order is not limited to the specific 

models of emulation system found by the Commission to inft-inFel 

as urged bv resoondents. As the AL3 noted, the Commission's 

long-standinrr practice is to direct its remedial orders to alljrodticts 

found, rather than litnitinn its orders to only those specific models 

selected for the infringement analvsis.. . . We also agree with the 

AU that the 

~t(~ -the do~estj~~. An exclusion order 

covering only specific models of an accused device could easily be 

industry. 

I thereby denying complcte rclief to the domestic 

~~i~~~sion Opinion on Remedy, the Public Interest, and Bonding, 15-20 (Mar, 31, 3938) 

(emphasis added by c~~plain~~~t, citations omitted). (CBr at 160-) 

It is argued by ~on~~~la~n~nt that a certification provision is unnecessary atid inappropriate: 

that in Certain Ink Jct Print Carzridncs and Components Thereof, the ~~mmi~sion explsined that 

it has: 

252 
included ce~~€i~ation prvisions in exclusion orders where, inter 

alia, [11 the patent(s) that for-tn tfic basis for- the order cover 

p~-ucesses for manu~a~tu~n~ and Customs is unable tu 

readily determine how imported goods possibly covered by thc 

order are made.. .[and] [2j in exclusion orders involving 

semicondu~~or chips, where complicated and costly reverse 

engineering procedures would have to be used by ciistoxns tu 

determine whether ttic imported mercfiaridise was cosered by the 

claims at issue. 

Inv. No. 337-TA-436, ~~~n~ission Opnio~, 10-1 I. (May S.2002). USXTC: Pub, 3549 (Oct. 

2002): Ink Jet Print Cartridges; that thc Commission went on tu deny respondent’s request for a 

certification provision because the infringing ink jet print cartridges were easily identified by the 

labeling on the cartridge and packaging; thst ;1 certification provision may unduly complicate 

enforcenient of the order, Id, at 11 and citing Certain Cellular Radiotelephones, Inv, No. 

337-TA-297, Notice of Commission Decision (F&. 1995) (denying respondent’s proposed 

certification provision because Customs had adequate means to determine infringement and 

fu~~lier noting a ~e~~if~~~~t~on provision might unnecessarily invite abuse of the provision and 

circ~~i~~eTiti~~i~ of the exclusion order); that the alieged infringing unified ~o~~~~nic~tj~~

products here are “easiiy identified by package labeling and shipment nianifesh and hence there 

is no need for ascertaining manufact~rin~ processes or reverse engineering; and that customs 

need only look for the OmniPCX Enterpnse, ~mni~ouc~ Unified C~~~~~~~ati~)~s

4980 My 

Softphone, OrtlniPCX Office, and P~P~ony product names and variations thereof. (CRBr at 

162-3.) 

liegarding any cease and desist order, complainant argued that such an order is an entirely 

appropriate remedy; that the evidence of rccord establishes that respondent maintains a 

~ot~i~ercjal~~~ significant inventory of accused products in the United States of over $2m; and 

253 
that because ALE may import: warehouse, and sell thc accused componcnts of its OXE and OXO 

systems ~ndi~i~u~~~~ any cease and desist order arid excltision order must cover those 

components iiidi~id~al~y and collectively in order to ensure effective relief to Microsoft, citing 

Transmission Sys. *299,303-305 (granting exclusion order covcring components and pwts lo 

*‘ensure complete relief to the domestic industry”). (CRBr at 163-4.) 

Respondent argued that, in the event a violation is found, a limited cxciusion order 

directed at products that ,Microsoft has proven, by a preponderaIice of evidence, infringe the 

asserted patents and that are ~ai~u~actu~ed by or for ALE would be the only ap~~o~ri~~~ remedy. 

{ 

1 

Respondent further argued that in situations where respondent imports both jnf~~g~n~ 

and ~~on-jn~~~~jn~ products, the ~o~~~i~sion frequently includes a ce~~~ica~jon provision in the 

exclusion order, citing 

and Products Containinp Same, Inv. No. 337-TA-SS1, 2007 ITC LEXIS 623, Corxm’n Op. (June 

14,2007) (issuing exclusion order with certification provision to ensure order does nut block 

non-infringing products from entering the United States), Cet%nin Laminated Floor Panels, Inv. 

No. 337-TA-545,2007 ITC LEXIS 175, Comm’n Op. (Jan. 24,2007) (“Given the number . ,, not 

subject to the order, it is reasonable to provide CBP with maximum flexibility to administer the 

order. Non-infringing products, such as Yekalon’s Engagement Products. can be certified as 

non-in~~in~~~, ad be allowed entry.”f, Certain Condensers, Parts Ttiereof, and Products 

Containing Same, ITC Inv, No. 337-TA-334 (Remand Proceeding), Cornrn‘n Op. at 39, 1997 WL 

599891 (Sept. 10, 1997), Certain ~in~xidll I’owders, Salts, arid Conimsitions €or Use in Hair 

Treatment, RC Inv. No. 337-TA-267 (1988); Certain Curable FILio~~~l~s~om~r Compositions 

and Precursors Thereof, ITC. Inv, No. 337-TA-3G4 (May 8,1995);( 
1 

As for any cease and desist order,( 

} citing Certain Strip Li&ts, 337-TA-287, Comn'n Up. on 

the Issue tJnder- Review, Remedy, The Public Interest, and Bonding at G (Oct. 3, 1989): 

We believe that a cease and desist order is not appropriate in this 

investigation. In prior investigations, the Commission has looked 

for the existence of ~ub~tant~al inventories of the infringing product 

before issuing a cease and desist order.. In this investigation, there 

is no evidence of any inventories of infringing strip Ii@ts now in 

the possession of Golden Apple. 

Certain Non\~oven Gas FiIter Elements, ITG Xnv. No. 337-TA-275,1TStTC Pub. 2129 (Sept. 

198S), at 10: 

We determine that a cease and desist order should not be issued. 

Our decision is based on the facts that there is no evidence of 

stockpiling or subst~n~i~~l invcntokcs of infringing articlcs in the 

United Stales . . . ," 

Certaiti Cloisonne Jewelry, ITC Xnv. 337-TA-195, USTTC Pub. 1822 (March 19861, at 6: 

r~]o~~~la~nant has not cited any record evidence which would 

indicate that there are large inventories of infrin~tn~ jewelry 

remaining in thc United States. In the abscnce of such evidence, 

we conclude that cease and desist orders are not warranted . . . .. 

Certain f-lcavy-Dutv Stai~Ie Gun Tackers, 337-TA-137, tJSfrC? Pub. 1506 (March [%it), at 5: 

[Tlhere is no evidence to indicate that rcspondents . , fiavc 

stockpiled inventories lor later sale. We therefore conclude that 

257 
cease and desist orders are unwarranted. . . . 

Coin-Operated Audio-visual Garncs and Components Thereof, 337-TA-37, USITC Pub. 11 SO 

There are inany rcspondents in the Uctited States ~d~st~-i~~t~~s~ 

which can only hc reached by a cease and dcsist. order. However. 

because the record did not contain sufficient evidence regarding 

instances of stockpiling by rcspondents. we decline to issue cease 

and desist orders. 

(RBr- at 139 argued at 139-40.) 
}and that any cease and desist order: should not be directed to ALE’S d~~t~b~tors and/or 

customers. because the ~o~nmiss~o~~ does not have personal jurisdiction over third party 

d~strib~itot-s and/or customers. {RBr at 140.) 

The staff argued that if a violation uf Section 337 is found in this investl~ation, the 

~pprop~~~te remedy should include a limited exclusion order; that while the private parties do not 

appear to dispute this fact they appear to contest how such an order should be drafted, including 

what brand names should be included, whether components should be included, and whether 

related companies should be included: and that assuming that: these we issues for the 

adrn~n~st~~tiy~ law judge (as opposed to the Co~mi~sion), neither party has presented an 

adequate basis for dcpcarting from the Co~mission’~ usual practice in drafting exclusion orders. 

(SBr at 48-9.) 

The st&f also argued that certification provisions are normatIy used when it will be 

difficult for Customs “to determine whether the imported merchandise [is] covered by the patent 

claims at issue,” citiiig Ink Jet Print Cartridges which was cited by co~plai~ant; that here, the 

claims at issue do not involve methods of ~anufacture, nor will the products require subslantiai 

reverse e~i~~ne~~n~ in order to detem-iitie whether the products infringe; that respondent has not 

explaincd why Customs will allegedly encounter any difficulties xn ident~~y~n~ infringing goods; 

and that hence the adrninistrativc law judge should not recommend a Customs cer-tification 

provision. (SBr at 49.) 

I 

259 
that such ~om~one~~~ can be used in lnfr~n~ln~ systems, and sales of c~~~~o~ents that are used in 

this maimer should also be pr~~h~~~te~~ and that this is consistent with the purpose of a cease and 

desist order, which is to prevent 3 respondcnt from ~inderc~ittin~ an exclusion order through the 

sale of its inventory, citing Certain Aht.asivc Products Made Usin9 a Process For Powder 

, Inv. No. 337-TA-449, ~o~~ls~ion Opinion on 

Remedy, the Public Interest, and Bonding, at 7, USITC Pub. 3530 (Aug. 2020), rev'd on other 

grounds sub. nom &nik Co. v. I~~~~ational Trade Comm'n, 362 F.3d 1359 Fed. Cir. 23oW). 

{SBr at 95-97, SRBr at 49-50,) 

The Co~mi~s~o~ "has" broad discretion in selecting the form, scope, and extent of the 

remedy in Section 337 proceedings" hv, 

No. 337-TA-337, (Cornrn'n Op.) at 21 (August 3, 1993). Pursuant to its statutory authority found 

at 19 U.S.C. 4 1337 (d), the ~~rn~~ssion may exclude from importation goods and products that 

fom the basis for a fillding ol' a violation of Section 337 which includes products that have been 

found to infringe the patents-in-suit directly, contribut~€-iiy orby inducement after i~po~~3tion 

has occurred. ~, Inv. No. 337-TA-382, (Comm'n Opn.) ut 26 {June 

2Gt 1997) C'The Commiss~on has the authu~ty to enter an exclusion order, a CC~SC and desist 

order, or both."'j, Indecd, absent special c~rcum~ta~Ges, the statute requires such exclusion: 

If the ~~~~~~sslon detennines . . . that therc is a violation of this 

section. it direct that the articles concerned - . . be excluded 

frm entry into the Untted States, unless, after considering the 

public health and welkre, competitive c~n~~~t~~)ns in the United 

States economy, the production of like or directly competitive 

articles in thc United States, avld United States consumers, it finds 

that such articles should not be excluded from entry. 
19 C.S.C. 8 t337(d) ~em~li~sjs ~~~~~d~. Hence, a remedy excluding ALE‘S infringing products 

from entry is maridatory if a violation of Section 337 is found, utiless the (~ommissio1~ finds that 

public interest factors militate against such remedy. 

The ~ommissi#n also has the authority to issue cease and desist orders where a 

respondent has a sufficient iiiventory of infringing goods it1 the United States,” Certain NA&D 

Flash Memory Circuits, Inv+ No, 337-TA-526,2005 ITG Lexis 859, Init. Detem. at *255 (Oct. 

19. ZOOS) (citing I 11-1~. NO. 337-TA-315, 

U.S.I.T.C. Pub, No. 2574, Cornrn’n Up. at 37 (November 1992); and that one infringing product 

is suffkicnt to constitute a “sufficient invcntory” for purposes of a cezie and desist order, 

Hardware h&. U.S.I.T.C. Pub. 2089, Cotnm’n OF. at 26 (Mar. 1998). 

In the event a violation is found, the administrative law judge rwommends the issuance 

of a limited exclusion order prohibiting the ~~po~ation into the linited States of infringing 

articles regardless of brand name “that arc manufactured abroad or imported by or on behalf of 

[the respondentsl, or any of their affiliated companies, parents, subsidiaries, or other related. 

business entities, or their sLiccessors or assigns.” 

Engines, Comuonents Thereof- and Products Containing Same, Inv. No. 337-TA-55 1, Limited 

Exclusion Order, 9[ 1 (May 30,2007). Moreover, he recommends that said order should not be 

limited to speciFically-identified products, but rattier extend to all infringing products. See a, 

Certain Integrated Reoeaters, Switches, Transceivers and Products Containing Same, Inv, No. 

337-TA-33S, Commission Opinion at 22, USXTC Pub, 3547 (act. 2002). In acidition, the 

ad~ninistra~i~e law judge t-ccommends that components of said articles should bc barred from 

Certain Laser Bar Cadc Scanners and Scan 

irn~r(~~j~ii if they will be assernbled in thc United States into infringing products. See Certain 

26 1 
Condensers, Paris Thereof and Products Contnininr Same, Xncludiw Air Conditioners for 

A~ito~i~o~~l~s~ Inv. No. 337-TA-334 (Remand), Commission Opinion at 38, USI'I'C Pub. 3063 

(Sept. 1994). The ~~dminis~r~tive law judge docs not recomnicnd a certification provision 

because if a violation is found, thc infringing unified co~~Lini~~~~~~ products in issue stiould be 

identified by package Iabeling and shipment manifests. 

I 

262 
263 
1 

Regarding respondent’s argument that many of ttie articles in inventory liave nom 

infringing uses, II cease and desist oI-der only directs persons to “cease and desist from engaging 

in the unfair methods or acts involved.” 19 U.S.C. 8 t337(f)( 1). Hence with entry of a cease and 

desist ordcr respondent would not be required to cease and desist from acts that do not result in 

in~~n~~~ent. &, w, Lzser Bar Code Scanners, Order to Cease and Desist, 5 111 (May 30, 

2007). Thus thc ~d~~nistra~i~e law judge recommends, if a violation of Section 337 is found, 

recommends that a cease atid desist order against respondent ALE should XSSU~ directed to 

infnnging unified ~~rn~~ni~ati~n systems, p~ducts used with such systems and components 

thereof. 

XII. Bond 

If the Commission enters an exclusion order, ALE may continue to import and sell Its 

prcxiucts during the 60-day Presidential Review period under a bond in an amount determined by 

the ~o~i~~ss~on to be “sufficient to protect the complainant fi*orn any injury.” 1‘3 U.S.C. 3 
1337ij)t3); Commission rule 210.50. 

Thereof and Products Containing Same. Inv. No. 337- TA-242, Comm’n Up. (Sept. 21. 1987). 

Microsoft argued that the ainount of bond in this in~e~ti~ation should be set at 100% of 

thc “entered valuc.” It is argued that thc m om mission has frequcn-tly used this bond amount 

where direct price comparisons between the parties’ respective pi-oducts are not possible, citing, 

--c c.e., Certain NAND Flash Memory, 2005 WL 3701389, at “86-87 (setting hand at 200% 

of entered value); Certain Microsphere Adhesives, Inv. No. 337-TA-366, 1996 WL 1056095. 

Comm‘n Op. {U.S.1,T.Cs Jan. 16, 1996) (citing cases).” (CBr at 187-8.) 

Respondent argued that given Microsoft’s absolute failure to present any evidence 

relating to the ap~ro~~~~e bond rate and the lack of competition between the buXk of ALE’S 

imports and Microsoft‘s products, the Conmission should not impose il bond during the 

Presidential review period, citing Certain Rubber A~ti~e~~~~~~n~s, Inv. No. 337-TA-533,2006 

EC Lexis 212 (February 17,2006); affirmed Final Commission Determination Regarding 

Violation; Issuance of Limited Exclusion Order; Termination of Investigation (July 13,2006); 

c 

35 Mierosoft noted that for “the same reasons,” my ccase and desist order that is issued 

should also include a provision for a bond in the amount of 100% of the enlitred value with 

respect to any products that are sold during the Fr~sid~~tia~ review period but that were imporfed 

prior to the imposition of an exclusion order- bond. 

265 
i 

The staff argued that a bond can he calculated based on the pricing diffcrcrrtials between 

the p'arties' competitive product, citing Certain Power Supply Controllers and Products 

Cmtdining Same, Inv. No. 337-TA-541, Commission Opinion at 10- 12 (Aug. 29,2006) 

(setting bond based on price d~ff~rent~~~s?; { 

1 

Thus should a violation be foutid, in view of ttic wide rangcs of prices fur infringing proclucrs, the 

266 
a~m~nis~ra~~ve law judge recommends a bond in the amount of 100 percent of entered value. & 

Certain h’eod.\.mium-I-ron-1Soron Mamets, Inv. No. 337-TA-372, Cot~rnis~~on Op., 1996 &VI, 

1056324 {April 30. 1996) C‘In cases such as this one, in which it is impossible for the 

Co~~is~~on to calculate what level of bond based on prjce cliflerentials will protect a 

complainant from any injury, it is appropriate to issue a bond of 100% of entered value,”) 

XIII. Additional Findings 

A. Parties 

1. C~~~pl~~Iiant Microsoft Corporation ~~i~~oso€t) is a Washi tigton ccqmratron, 

having its principal place of business in Redmond, Washington. (Sec RX-61, (E 2.1 j 

2. Microsoft is a global tectinology company that designs, develops, manufactures 

and supports a wide range of software and hardware products. (Id.). 

3. t 

4. 

€3. Experts 

5. Jack Chang was qualified as co~~~l~~nant’s expert in the fields of unrfied 

messaging and computer telephony. (Tr. at 405.) 

6. Hcnq Wy&-Thomson was qualified as respondent‘s expert witness in the fields of 

mi f‘ied niessagi tig and computer telephony. (Tr. at 1217.) 

267 
CO~~L~~~~~S OF LAW 

I. 

2. 

The Commission has ~I-J pcrsonrm jut-isdiction and subject matter jurisdiction. 

There has been an i~po~ationf accused products which are the subject of the unfair 

trade allegation. 

3. 

anticipation Eone of the other asserted claim have been proven to be invalid based on 

ant 1 ci pat ion 

4- 

patent. 

5. 

the accused OXE system products, which include the OTUG software. 

6. 

through use of the accused OXE system products which include the OTUC software. 

7. 

and the ‘357 patent. 

8. 

WIzite asserted claim 38 of the ‘439 putent has been proven to be invalid based on 

The accused OXE system products directly infringe asserted claims I and 25 of the ’439 

Respondcnt ~#nt~ibLIt~~ily infringes asserted claims 1 and 28 of the ‘433 patent by selling 

Respandcnt ha5 induced others to infringe asserted claims 1 and 28 of the ‘439 patent 

None of the accused products infringe the asserted claims of the ‘2259 patent, ‘064 pafent 

The accused OXU system products do not infringe asserted claims 1 and 28 of the ‘439 

patent. 

9. The asserted claims of the ‘289 patent and asserted claims 1 and 28 of the ‘439 patent are 

enforceable. 

10. 

11, 

A domcstic industry exists as to the ‘439 and ‘289 patents. 

A domestic industry does not exist as to the ‘043 and ‘357 patents, 

12. There has been a violation of Section 337. 

268 
13. 

bond set in thc amount of 1Ml percent of entered value during the sixty day Presidential review 

The record supports issuance of il limited exc%usion order, a cease arid desist order and a 

period. 

ORDER 

Based on the foregoing, arid the record as a whole, it is the adn~iIii~trat~~e law judge’s 

Final Initial ~c~er~~natio~i that there is a violation of section 337 in the iniportation into the 

United States, sale for importation, and the sale within the United States after importation of 

certain unified com~unicatiun systems, products used with such systems and components 

thereof. It is also the adm~t~istrati~~e law judge’s recom~endation that a limited exclusion order 

should issue baring entiy into the United States of infringing unified com~n~inicatio~i systems, 

products used with such systems and comporients thereof as we11 as a cease and desist order; and 

that a bond be set at 100 percent of entered value during the Presidential revicw period. 

The admi~ist~at~~~e law judge hereby CERTIFIES to the (~~~m~s~ion his Final lnitral and 

Recu~~~n~~d Decerminaeions together with the record consisting of the exhibits admitted into 

evidence. The pleadings of the parties filed with the Secrelary and the transcript of the prehearing conference, and the hearing, arc not cer-tificd, since they are alrcady in the Commission’s 

possession in accordance with Commission rules. 

Further it- is ORDERED that: 

I. In accordance with Commission rule 210.39, all material heretofore marked b 

camera bccausc of business, financial and marketing data found by the admijiistr~~tl~e law judge 

to be cognizable as con~~dential business information under Commission rule 20 1 .t;(a>, is to be 

given 111 camera treatment continuing after thc date this ~n~est~~ati~n is terminated. 

269 
rule 210.5U(a). 

Issuehf: January 28, 2008 
For Complainant. Microsoft Corporation: 

Jeffrey R. Wfiieldon, Esq. 

Fish & Richardson PC 

1425 K Street, KW, Suite 1100 

Wa~hingt~n~ DC 20005 

John E, ~a~~~n, Esy. 

Fish & Michardson PC 

12390 E1 Camino Real 

San Diego, CA 92130 
CERTIFICATE OF SER'L'ICIE pg. 2 

Steven C. Cherny, Esq, 

Latham, & ~~t~~~s LLP 

885 Third Avenue, Ste. 1000 

Kcw York, IVY 10022-4834 

David A. Nelson, Esq. 

Stisha D. Mti~~~goy~, Esg. 

Latham, & Wiatkins LLP 

233 South Wacker Drive, Stc. 5800 

Chicago, It 6~60~-~~06 

Re~ny X-€W~FI~, Esq. 

Latham, Csi Watkins ILP 

633 West Fifth Street, Suite 4000 

Los Angclcs, CA 90071-2007 

F. David Foster, Esq. 

James €3. Altfnan, Esq, 

Miller & Chevalier Chartered 

6% Fifteenth Street, NW. Suite 900 

~~~shingto~i, DC 20005 
Sbeny Robinson 

889 t Gander Creek Drive 

~~~~~~is~~~r~, 023 45342 

LEXIS-NEXIS 

Ronnrta Green 

Thumson West 

1100 - 13'h Street NW 

Suite 200 

Washington, DC 20005 

(PARTIES NEED NOT SERVE COPIES ON LEXXS OR WEST P~LIS~~~G~