NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2009-1121 

CATCH CURVE, INC., 

Plaintiff-Appellant, 

v. 

VENALI, INC., 

Defendant/Third Party PlaintiffAppellee, 

v. 

J2 GLOBAL COMMUNICATIONS, INC., 

Third Party Defendant. 

Robert A. Sacks, Sullivan & Cromwell LLP, of Los Angeles, California, argued for 

plaintiff-appellant. With him on the brief were Brian R. England, and Edward E. 

Johnson. Of counsel on the brief was Frank L. Bernstein, Kenyon & Kenyon LLP, of 

San Jose, California. 

John C. Carey, Carey Rodriguez Greenberg & Paul, LLP, of Miami, Florida, 

argued for defendant/third party plaintiff-appellee. With him on the brief was Douglas L. 

O’Keefe. 

Appealed from: United States District Court for the Central District of California 

Judge Dean D. Pregerson
NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit

2009-1121 

CATCH CURVE, INC., 

Plaintiff-Appellant, 

v. 

VENALI, INC., 

 Defendant/Third Party Plaintiff- 

 Appellee, 

v. 

J2 GLOBAL COMMUNICATIONS, INC., 

 Third Party Defendant. 

Appeal from the United States District Court for the Central District of California 

in case no. 05-CV-04820, Judge Dean D. Pregerson. 

___________________________ 

DECIDED: January 22, 2010 

___________________________ 

Before NEWMAN, BRYSON, and DYK, Circuit Judges. 

BRYSON, Circuit Judge. 

I 

 Catch Curve, Inc., owns a group of patents that are directed to the transmission 

and storage of facsimile (“fax”) messages over switched telephone networks. Four of 

the patents share a common specification and are continuations-in-part of the fifth 
2009-1121 2 

 

patent, U.S. Patent No. 4,994,926 (the ’926 patent), the application for which was filed 

in 1988.1 The inventions described in the patents focus on the use of a computerbased device known as a “store and forward facility,” or SAFF. The patents describe 

the inventive subject matter as entailing the transmission of a fax message from an 

originating traditional fax machine to an “originator SAFF,” which either forwards the 

incoming fax message or stores it for later transmission. The originator SAFF may 

forward the fax message over a switched telephone network to a destination fax 

machine or to a second SAFF, after which the second SAFF forwards the message to 

the destination fax machine. By employing a SAFF or a pair of SAFFs, the patented 

method enables users to alter the timing or delivery location of their fax messages to 

achieve greater efficiency in the use of their fax machines and the available telephone 

lines. 

A 

 In 2005, Catch Curve brought this patent infringement action against Venali, Inc., 

in the United States District Court for the Central District of California. In the complaint, 

Catch Curve asserted claims from all five patents. Following a claim construction 

proceeding, the district court construed the term “facsimile,” as used in the patents, to 

mean “image data transmitted using facsimile protocol on the switched telephone 

network”; the term “facsimile message,” as used in the patents, to mean “[a] message 

1

 The four patents that share a common specification are U.S. Patent No. 

5,291,302; U.S. Patent No. 5,459,584; U.S. Patent No. 6,643,034; and U.S. Patent No. 

6,785,021 (“the ’021 patent”). The common specification differs from the original 

specification of the ’926 patent only insofar as it discloses two additional features of the 

invention, the ability to send a reply to a received fax message and the ability to provide 

a fax-to-voice message conversion service. Neither feature is pertinent to this appeal. 
2009-1121 3 

transmitted and received by facsimile protocol”; and the term “facsimile protocol,” as 

used in the patents, to mean “the standardized procedure that governs the transmitting 

and receiving of facsimile messages over the switched telephone network.” The court 

further explained that facsimile protocol excludes “other protocols whereby the 

substance of a facsimile message is converted into a different format and then 

retransmitted using some other protocol.” The effect of the court’s claim construction 

was to require that all of the claimed systems and methods use facsimile protocol as the 

basis for the claimed communications and that the transmissions all be routed over a 

switched telephone network. 

 Following the district court’s construction of the critical claim terms, Catch Curve 

limited its case to assert only claims 33, 44, 64, 69, and 78 of the ’021 patent. Those 

five claims, which Catch Curve refers to as the “storage” claims, recite methods for 

transmitting a fax message (or “facsimile information”) over a switched telephone 

network from an originating fax machine to a SAFF, which then stores the message. 

The five asserted claims do not require the further transmission of the message from 

the SAFF to another SAFF or to a destination fax machine, but instead require only that 

the message be forwarded to a mailbox associated with a particular recipient (or, in the 

case of claim 69, either to a mailbox or to a fax-receiving device). For example, claim 

69 provides: 

 69. A method of delivering a facsimile image, said method 

comprising the steps of: 

 associating each telephone number of a first plurality of telephone 

numbers on a switched telephone network with an intended recipient of a 

first plurality of intended facsimile recipients; 

 receiving at a first call handling facility a telephone call directed to 

one of the telephone numbers of the first plurality of telephone numbers 
2009-1121 4 

and switched to the call handling facility by the switched telephone 

network as a result of the dialing of the one of the telephone numbers; 

 answering at the call handling facility the received telephone call 

and interacting using facsimile protocol with an originating fax machine on 

the other end of the call; 

 during the call, receiving at the call handling facility from the 

originating fax device a fax message, using facsimile protocol; and 

 directing the fax message to one of the destinations selected from 

the group consisting of (i) a mailbox defined in a computer storage and 

associated prior to the receipt of the call with a particular recipient and 

with the particular one of the plurality of telephone numbers and (ii) a fax 

receiving device. 

Although Catch Curve conceded that under the court’s claim construction Venali’s 

system does not infringe most of the asserted claims, it contended that even under the 

court’s construction, Venali infringes the five “storage” claims in the ’021 patent. 

B 

 The manner in which Venali’s accused system operates is not in dispute. In 

Venali’s system, an originating fax machine sends a fax message to a point of presence 

(“POP”) over ordinary telephone lines. When the message is received at the POP, it is 

converted into a different format, the Tagged Image File Format (“TIFF”), and it is stored 

in a general queue along with a separate file containing metadata about the message. 

The files are then encoded in Extensible Markup Language (“XML”) and sent via 

Hypertext Transfer Protocol (“HTTP”) over the Internet to Venali’s data center. The data 

center then converts the message into a Portable Document Format (“PDF”) file or into 

a different TIFF file and stores the file in a user-specific mailbox. The file is later sent by 

Simple Mail Transfer Protocol (“SMTP”) email, HTTP, or HTTPS (secure HTTP) to the 

intended recipient. 

Based on its construction of the claims, and in particular on its construction of the 

term “facsimile” to mean image data transmitted using fax protocol over a switched 
2009-1121 5 

telephone network, the district court concluded that Venali’s accused system does not 

infringe the asserted claims. The court therefore entered summary judgment in Venali’s 

favor on Catch Curve’s infringement claims. With respect to Venali’s cross-claims 

against third-party defendant j2 Global Communications, Inc., Catch Curve’s parent 

corporation, the court granted summary judgment against Venali. Catch Curve appeals 

the grant of summary judgment against it. Venali has not taken a cross-appeal from the 

summary judgment as to the cross-claims against j2. 

II 

A 

Catch Curve argues that the district court erred by limiting the claims to a specific 

protocol. It asserts that a “facsimile message” or “facsimile communication” should be 

construed to refer to the image data that is initially transmitted by a facsimile machine, 

and that the communication remains a “facsimile message” or “facsimile 

communication” regardless of any subsequent changes in the format used to convey 

that data after it is sent. Venali, on the other hand, contends that the district court 

properly limited the claims because the patents use the terms “fax message” and “fax 

communication” to mean messages that are communicated in fax protocol over a 

switched telephone network, and because those terms do not include messages that 

are converted into different formats for transmission over the Internet. 

The district court correctly noted that “[f]or a machine to be a ‘fax’ machine that 

sends ‘fax’ messages, it must use a certain protocol . . . to communicate. Otherwise, 

nothing distinguishes these machines from any other machine used for communication.” 

In the common specification of the five patents, the inventors made clear that they used 
2009-1121 6 

the term “facsimile communications” to refer to communications between conventional 

fax machines or their proxies over a switched telephone network. The specification 

describes the subject matter of the patents as “[t]he electronic transmission of 

documents by way of facsimile (fax) systems, employing public and private switched 

telephone networks,” ’021 patent, col. 1, ll. 29-31, and it describes the inventions 

generally as consisting of “a system and method for providing a comprehensive 

interactive facsimile message management system embedded in a switched telephone 

network,” id., col. 21, ll. 27-29. The disclosed method, according to the specification, is 

designed “to achieve this in a way which is fundamentally compatible with existing fax 

terminal machines.” Id., col. 3, ll. 2-3. The “basic approach,” the specification adds, “is 

to provide special computer-based fax Store And Forward Facilities (SAFFs) as an 

integral part of a switched telephone network system.” Id., col. 3, ll. 3-6. Because the 

specification was first filed in 1988, the reference to “existing fax terminal machines,” 

like the references to other features of fax technology, pertains to the technology as it 

existed at that time. 

Nothing in the specification suggests that the fax messages of the invention are 

converted to a different format and transmitted to the recipient over a medium other 

than a switched telephone network. If the destination fax machine is within the service 

region of the SAFF that first receives the fax message from the sending fax machine, 

the system temporarily stores the fax message and attempts to call the destination fax 

machine. If contact is established, the SAFF delivers the fax message immediately. 

’021 patent, col. 3, ll. 13-16. If the destination fax machine is within the service area of 

a different SAFF, “the system forwards the fax document data to that facility by long-
2009-1121 7 

distance lines, in which case the second facility attempts to call the destination 

machine” so as to deliver the fax message. Id., col. 3, ll. 16-24. If the attempt to deliver 

the fax message to the destination machine fails on the first try, the message is stored 

at the second SAFF and subsequent attempts are made to deliver the message from 

that SAFF. Id., col. 3, ll. 25-56. 

Although Catch Curve contends that the term “fax message” refers to any image 

data that replicates the original fax communication, regardless of what format is used to 

communicate or store that data and regardless of what medium is used to transmit the 

data, that is not the way the patents use the terms “fax messages” or “fax 

transmissions.” Rather, the common specification makes clear that the fax messages 

that are the subject of the patent are sent and received by conventional fax machines or 

their proxies over a switched telephone network using fax protocol. When the 

specification refers to devices other than traditional fax machines that can be adapted to 

receive fax communications, such as computers or ordinary television sets, it explains 

that those devices can be made to function as “paperless fax terminals.” In describing 

the computer that can serve as a “paperless fax terminal” to receive fax messages from 

the SAFF mailbox, the specification makes clear that the computer uses a computer 

communications code to initiate telephonic contact with the Mail Box Service Control 

and that the Mail Box Service Control switches the computer from computer terminal 

mode to fax terminal mode for delivery of the requested fax messages over a telephone 

network, after which the fax message is delivered just as it would be to a traditional fax 

machine. ’021 patent, col. 15, ll. 57-65. There is nothing in the specification to suggest 

that the fax message is converted to a different protocol for purposes of transmission, 
2009-1121 8 

nor is there anything to suggest that the fax message is transmitted to its destination 

over a system quite different from a switched telephone network, such as the Internet. 

Catch Curve argues that fax protocol must be used for the communication of 

image data between a fax machine and a SAFF, but need not be used for the 

communication of image data between two SAFFs. Because the SAFFs are computers, 

not fax machines, Catch Curve contends that the communication between the two 

SAFFs must be in a digital language. While that may be, the common specification 

makes it clear that the SAFFs are required to communicate with one another over a 

switched telephone network. For example, the patent teaches that the two SAFF 

machines communicate “through a long-distance interface over long-distance circuits.” 

’021 patent, col. 8, ll. 24-25; see also id., col. 12, ll. 33-36 (noting that the invention “can 

significantly enhance the efficiency of the . . . long-distance and local telephone 

circuits”). Therefore, even if the district court’s claim construction was unduly restrictive 

with respect to the use of fax protocol in every phase of the communication process, it 

was not in error with respect to the requirements that the communications take place 

over a switched telephone network and that the fax messages be delivered to a 

traditional fax machine or a proxy for such a machine by fax protocol over a switched 

telephone network. 

Venali’s accused system operates in a fundamentally different manner. Venali’s 

system converts messages into formats other than fax protocol before storing or 

forwarding the messages and then transmits the messages to their intended 

destinations via SMTP, HTTP, or HTTPS protocol over the Internet. The messages are 

not sent to, and are not retrievable by, a conventional fax machine or a “paperless fax 
2009-1121 9 

terminal” operating in fax protocol. Thus, all the data storage and transfer functions in 

Venali’s system, after the initial receipt and conversion of the fax message, are 

inconsistent with fax protocol. In particular, Venali’s Internet transmissions are quite 

different from the claimed transmissions of fax message signals over a switched 

telephone network. The district court therefore correctly concluded that Venali does not 

practice the methods or systems that are disclosed in the asserted patents and claimed 

in the numerous claims originally asserted by Catch Curve. 

B 

Catch Curve argues that even if Venali’s system does not infringe the other 

asserted claims, it at least infringes the five so-called “storage” claims of the ’021 

patent. Those claims relate only to the transmission of fax messages from the 

originating fax machine to the SAFF and do not require the further step of transmitting 

the messages to another SAFF or to the ultimate recipients. 

The five “storage” claims, like the other asserted claims, focus on the functions of 

the SAFF described in the specification. Claims 33, 44, and 64 require “at least one 

store and forward facility,” thus explicitly requiring the use of a SAFF. Claim 69 and its 

dependent claim 78 require the step of receiving a fax message “at a first call handling 

facility.” Claim 69 expressly requires that facility to have the capacity to store or forward 

fax messages, thus making it clear that the recited “call handling facility” is a “store and 

forward facility” as described in the specification. As noted above, the specification 

states that the SAFF contemplated by the invention is “an integral part of a switched 

telephone network system,” ’021 patent, col. 3, ll. 5-6, and that the SAFF must be 

capable of receiving fax messages from, and sending fax messages to, conventional fax 
2009-1121 10 

machines over a switched telephone network. By reciting the use of a SAFF, the 

storage claims, like the other asserted claims of the patents in suit, are necessarily 

limited to systems that are capable of sending fax messages through fax protocol over a 

switched telephone network. See Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 

1139-40 (Fed. Cir. 2003) (limiting both method and apparatus claims “to conform with 

the basis on which the invention was presented in the specification”). 

In addition, the five “storage” claims each require the step of storing incoming fax 

messages in user-specific mailboxes for later retrieval or alternatively (in the case of 

claim 69) sending the messages directly to a fax-receiving device. The mailbox referred 

to in those claims is described throughout the patent as a component of the SAFF, not 

simply as a generic storage device. E.g., ’021 patent, col. 13, ll. 59-62 (describing the 

mailbox as an “auxiliary storage file in the Answer Function of the destination SAFF”). 

The specification explains that the contents of the SAFF’s user-specific mailbox are 

associated with the telephone number of a particular user’s destination fax machine. 

The messages received in each of the mailboxes are retained in a mailbox-specific 

queue for future retrieval by the intended recipients, who can “at their convenience, dial 

into the system and pick up any waiting documents.” ’021 patent, col. 4, ll. 1-26. The 

specification further states that addressees may have the messages either sent to the 

designated fax machine or “redirected” to a different fax machine, so that messages 

sent to a fax mailbox “can be accessed . . . from any telephone with a fax machine.” Id., 

col. 14, line 66, through col. 15, line 25. The specification thus makes it clear that the 

SAFF is designed to deliver messages from the mailbox in fax protocol and over a 

switched telephone network, regardless of whether the SAFF delivers the messages to 
2009-1121 11 

a designated destination fax machine or to a different fax machine as directed. E.g., id.

at col. 15, ll. 30-33. By claiming the step of forwarding a fax message to a “mailbox,” 

the storage claims are therefore necessarily limited to systems that are configured to 

forward a fax message from storage in fax protocol over a switched telephone network. 

 Catch Curve responds by arguing that inventors are allowed to claim less than 

their full invention, and that the storage claims should not be construed to require a 

system capable of delivery of fax messages over the switched telephone network 

because the storage claims do not include the delivery step. However, merely omitting 

a step in a described process does not perforce expand the scope of the claim to 

encompass the use of devices that are nothing like those described in the specification 

as integral to the invention. See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 

(Fed. Cir. 2009) (“[C]laims cannot enlarge what is patented beyond what the inventor 

has described as the invention.”), quoting Networld, LLC v. Centraal Corp., 242 F.3d 

1347, 1352 (Fed. Cir. 2001); see also Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 

1377, 1382 (Fed. Cir. 1999) (limiting the claim term “frame” to character-based protocol, 

even though “frame,” used generally, could also refer to bit-mapped displays, because 

the specification described and enabled only systems using character-based protocol). 

As noted above, the specification describes the invention as operating in a single 

medium, and it contains no suggestion that the “SAFF” or the “mailbox” referred to in 

the storage claims could encompass any type of storage system with any type of 

downstream transmission capacity. Instead, based on the detailed description of the 

SAFFs and the mailboxes in the specification, the storage claims must be understood to 
2009-1121 12 

be limited to an apparatus that contains a storage medium and has the capacity to 

receive and transmit fax messages in fax protocol over a switched telephone network. 

In Venali’s system, an incoming fax message is converted into TIFF format and 

stored in a general queue, rather than in a user-specific mailbox. The message is then 

transmitted over the Internet, using a non-facsimile format, to Venali’s data center 

where it is stored either in a general queue or in a user-specific mailbox, for further 

transmission to the user over the Internet. The undisputed facts show that the Venali 

system does not transmit, or have the capacity to transmit, a fax message over a 

switched telephone network to a fax-receiving device. Instead, after the Venali system 

receives a fax message from a conventional fax machine, it converts the message into 

a different format and transmits it over the Internet either to a designated user-specific 

mailbox or directly to the intended recipient. Venali’s system thus is not designed to 

forward messages, or to store messages for forwarding, to a fax-receiving device over a 

switched telephone network. For that reason, Venali’s system cannot be said to contain 

a “SAFF” or “mailboxes,” as those terms are used in the storage claims of the ’021 

patent. Venali’s system therefore does not infringe the five storage claims. 

We affirm the district court’s order granting summary judgment of noninfringement.