United States Court of Appeals for the Federal Circuit 

2009-1086, -1098 

VERIZON SERVICES CORP., VERIZON COMMUNICATIONS, INC., 

MCI COMMUNICATIONS CORP., and VERIZON BUSINESS GLOBAL LLC, 

 Plaintiffs-Appellants, 

v. 

COX FIBERNET VIRGINIA, INC., COX VIRGINIA TELECOM, INC., 

COX COMMUNICATIONS HAMPTON ROADS, LLC, 

COXCOM, INC., and COX COMMUNICATIONS, INC., 

 Defendants-Cross Appellants. 

Richard G. Taranto, Farr & Taranto, of Washington, DC, argued for plaintiffsappellants. Of counsel on the brief were Michael K. Kellogg, John C. Rozendaal and 

Michael E. Joffre, Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, of Washington, 

DC; John Thorne and Robert H. Griffen, Verizon Communication Inc., of Arlington, 

Virginia, and Leonard C. Suchyta, of Basking Ridge, New Jersey. 

Mitchell G. Stockwell, Kilpatrick Stockton LLP, of Atlanta, Georgia, argued for 

defendants-cross appellants. With him on the brief were William H. Boice and Audra A. 

Dial. 

Appealed from: United States District Court for the Eastern District of Virginia 

Senior Judge Claude M. Hilton
United States Court of Appeals for the Federal Circuit 

2009-1086, -1098 

VERIZON SERVICES CORP., VERIZON COMMUNICATIONS, INC., MCI 

COMMUNICATIONS CORP., and VERIZON BUSINESS GLOBAL LLC, 

Plaintiffs-Appellants, 

v. 

COX FIBERNET VIRGINIA, INC., COX VIRGINIA TELECOM, INC., COX 

COMMUNICATIONS HAMPTON ROADS, LLC, COXCOM, INC., and COX 

COMMUNICATIONS, INC., 

Defendants-Cross Appellants. 

 

Appeals from the United States District Court for the Eastern District of Virginia in case 

no. 1:08-CV-157, Senior Judge Claude M. Hilton. 

__________________________ 

DECIDED: April 16, 2010 

__________________________ 

Before MAYER, LINN, and PROST, Circuit Judges. 

LINN, Circuit Judge. 

Verizon Services Corp., Verizon Communications, Inc., MCI Communications, 

Inc., and Verizon Business Global LLC (collectively “Verizon”) appeal from a final 

judgment of the United States District Court for the Eastern District of Virginia entered 

after a jury found: (1) claims 5 and 6 of U.S. Patent No. 6,282,574 (“the ’574 patent”) 

and claims 1, 3, and 11 of U.S. Patent No. 6,104,711 (“the ’711 patent”) invalid; and (2) 

claim 1 of U.S. Patent No. 6,430,275 (“the ’275 patent”); claims 1, 19, 27, and 35 of U.S. 

Patent No. 6,292,481 (“the ’481 patent”); claim 1 of U.S. Patent No. 6,137,869 (“the ’869 
patent”); and claims 12, 13, and 20 of U.S. Patent No. 6,636,597 (“the ’597 patent”) not 

infringed by Cox Fibernet Virginia, Inc., Cox Virginia Telecom, Inc., Cox 

Communications Hampton Roads, LLC, Coxcom, Inc., and Cox Communications, Inc. 

(collectively “Cox”). See Verizon Servs. Corp. v. Cox Fibernet Va., Inc., No. 08-CV0157 (E.D. Va. Oct. 6, 2008) (judgment); Verizon Servs. v. Cox Fibernet Va., Inc., 08-

CV-0157 (E.D. Va. Nov. 7, 2008) (order denying cross-motions for judgment as a matter 

of law and new trial); Verizon Servs. Corp. v. Cox Fibernet Va., Inc., No. 08-CV-0157 

(E.D. Va. Nov. 11, 2008) (agreed order amending and clarifying the judgment). On 

appeal, both parties challenge the district court’s denial of their respective motions for 

judgment as a matter of law and motions for new trial. Because the evidence 

introduced at trial supports the jury’s verdict, and because the district court did not err in 

instructing the jury on the scope of the claims, we affirm. 

I. BACKGROUND 

A. The Patents at Issue 

The six patents at issue in this appeal are owned by Verizon and relate generally 

to packet-switched telephony─technology for providing telephone calls by breaking up 

voice signals and sending the resulting data in packets, not all of which need traverse 

the same path, through a network. Packet-switched telephony increases the efficiency 

of the underlying network over traditional circuit switching, which relies on a dedicated 

path between endpoints of a call. 

To explain the technology involved in the six asserted patents, the parties divide 

them into three groups: the ’711 and ’574 patents (the “Feature Patents”), the ’275, 

’869, and ’481 patents (the “Network Patents”), and the ’597 patent (the “Quality of 

2009-1086, -1098 2 
Service Patent”). None of the claims in any of the patents at issue in this appeal refer 

explicitly to the Internet or to a “public packet data network,” which this court has 

previously equated to the Internet. Verizon Servs. Corp. v. Vonage Holdings Corp., 503 

F.3d 1295, 1305 (Fed. Cir. 2007). Instead, the asserted claims refer to “packet 

switched networks,” “circuit switched networks,” and a “system of interlinked packet 

data networks.” 

1. The Feature Patents (’711 and ’574) 

The Feature Patents share a specification and involve methods for providing 

features such as call-forwarding over packet-switched networks. These features are 

made possible by an enhanced name translation server. The specification describes 

the existing Domain Name System (“DNS”), which uses computers associated with the 

Internet, known as domain name servers, to convert textual domain names into numeric 

Internet Protocol (“IP”) addresses. The specification also describes software developed 

for use on personal computers to permit the two-way transfer of real-time voice 

information via an Internet data link between two personal computers (“VOIP”). The 

inventions relate to a server with an expanded variety of translation services over a 

traditional domain name server, allowing for a wider range of routing options over 

packet-switched networks. This additional functionality allows providers of VOIP to offer 

enhanced features, such as call-forwarding and voicemail, to which users of traditional 

telephone service have become accustomed. Although the inventions are “particularly 

advantageous for processing of voice telephone communications through the packet 

data network,” they are not limited to voice services or the Internet. ’711 patent col.6 

ll.48-50. 

2009-1086, -1098 3 
2. The Network Patents (’275, ’869, and ’481) 

The Network Patents relate to an architecture for providing per-call support 

functionality for voice service over a packet-switched network. The inventions in this 

group provide for bundling the traditionally separate databases of usage recording, 

pricing, and authorization into a single logical database in order to ensure scalability of 

the system, reduce the potential for fraud, and allow mechanisms for network support 

infrastructure, pricing, call flow, and billing. The patents do not require this single logical 

database, referred to as a “unitary logical object” or “ULO,” to be implemented as a 

single physical system. 

3. The Quality of Service Patent (’597) 

The Quality of Service Patent covers a method for providing services over a 

packet-switched network by dynamically allocating resources to vary the quality of 

service on a call-by-call basis. The invention includes an enhanced routing technique, 

which is more flexible than the traditional routing tables used by the public switched 

telephone network and allows the invention to quickly respond to changes in network 

configuration and network traffic. 

B. The Parties and the Litigation 

In 1996, Cox began to offer telephone service. This service initially was based 

on traditional, circuit-switched telephony, operated over Cox’s private cable network. In 

2003, Cox began to provide telephone service over its private cable network using a 

packet-switched technology called PacketCable. 

In January 2008, Verizon sued Cox for willfully infringing its patents by deploying 

Cox’s packet-switched telephone service. Four of the six patents at issue, the Feature 

2009-1086, -1098 4 
Patents (the ’711 and ’574 patents) and two of the three Network Patents (the ’275 and 

’869 patents), had been previously litigated in Verizon Servs. Corp. v. Vonage Holdings 

Corp., No. 06-CV-1782 (E.D. Va. 2007) (“Vonage”). Although different claims were 

asserted in Vonage, the claims at issue in that case were closely related to the asserted 

claims in this case and used many of the same terms. The issues relating to the 

Feature Patents were reviewed by this court on appeal, and the claim constructions 

made in connection therewith were affirmed. Verizon Servs. Corp. v. Vonage Holdings 

Corp., 503 F.3d 1295 (Fed. Cir. 2007). The district court adopted the relevant claim 

constructions from the Vonage litigation and, in addition, construed several terms that 

had not been at issue in the Vonage case. Verizon Servs. v. Cox Fibernet Va., Inc., No. 

08-CV-0157 (E.D. Va. Sept. 3, 2008) (“Claim Construction Order”). A jury found that 

Cox did not infringe any of the asserted claims of the six patents and that the asserted 

claims of the Feature Patents were invalid. Verizon Servs. v. Cox Fibernet Va., Inc., 

No. 08-CV-0157 (E.D. Va. Oct. 6, 2008) (jury verdict). 

After the jury verdict, Verizon renewed its Rule 50(a) motion for judgment as a 

matter of law (“JMOL”) under Rule 50(b) of the Federal Rules of Civil Procedure and, 

alternatively, moved for a new trial under Rule 59(a). Cox filed its own motions for 

JMOL under Rules 50(a) and (b) arguing that the asserted claims of the Network 

Patents and the Quality of Service Patent are invalid. In the alternative, Cox requested 

a new trial on invalidity in the event the district court were to grant Verizon a new trial on 

infringement. The district court denied all of these motions and both parties appeal. 

We discuss the parties’ arguments in the following order. First, we discuss 

Verizon’s argument that a new trial is necessary for both validity and infringement of all 

2009-1086, -1098 5 
the asserted claims in all six patents because Cox improperly made arguments to the 

jury about claim scope. Second, we discuss the challenges to the jury’s verdicts on 

validity of the asserted claims of the Feature Patents. This includes Verizon’s request 

for JMOL that the Feature Patents are not invalid and, in the alternative, its request for a 

new trial on validity of the Feature Patents because of an allegedly improper argument 

by Cox. This section also includes Cox’s cross-appeal of the denial of its motion for 

JMOL that the Network Patents and the Quality of Service Patent are invalid and its 

alternative motion for new trial. Third, we discuss the challenges to the jury’s verdicts 

finding no infringement, including Verizon’s request for JMOL of infringement of claim 1 

of the ’481 patent and its request for a new trial on infringement of the asserted claims 

of the Quality of Service Patent based on its allegation that the district court 

misconstrued a claim term. 

We have jurisdiction under 28 U.S.C. § 1295(a)(1) (2006). 

DISCUSSION 

I. Standard of Review 

JMOL is appropriate when “there is no legally sufficient evidentiary basis for a 

reasonable jury to find for that party on that issue.” Fed. R. Civ. P. 50(a)(1). We review 

the denial of a motion for judgment as a matter of law or for a new trial under the law of 

the regional circuit. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1352 

(Fed. Cir. 2003). The Fourth Circuit reviews rulings on motions for judgment as a 

matter of law de novo. Johnson v. MBNA Am. Bank, NA, 357 F.3d 426, 431 (4th Cir. 

2004). “The question is whether a jury, viewing the evidence in the light most favorable 

to [the nonmovant], could have properly reached the conclusion reached by this jury. 

2009-1086, -1098 6 
We must reverse [the denial of a motion for JMOL] if a reasonable jury could only rule in 

favor of [the movant]; if reasonable minds could differ, we must affirm.” Id. (internal 

quotations and citation omitted). The Fourth Circuit reviews rulings on motions for a 

new trial for abuse of discretion. United States v. Perry, 335 F.3d 316, 320 (4th Cir. 

2003). “In reviewing a grant or denial of a new trial, the crucial inquiry is whether an 

error occurred in the conduct of the trial that was so grievous as to have rendered the 

trial unfair.” Bristol Steel & Iron Works, Inc. v. Bethlehem Steel Corp., 41 F.3d 182, 186 

(4th Cir. 1994) (internal quotations omitted). 

We also review a district court’s evidentiary rulings under the law of the regional 

circuit. MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1349 (Fed. Cir. 2005). 

Under the law of the Fourth Circuit, this court reviews the district court’s exclusion of 

evidence for abuse of discretion. United States v. Wilkerson, 84 F.3d 692, 696 (4th Cir. 

1996). 

II. Jury Arguments About Claim Scope 

Verizon argues that we should vacate the district court’s judgment that the 

asserted claims of the Feature Patents are invalid and that Cox did not infringe any of 

the asserted claims of all six patents because Cox improperly made arguments to the 

jury about claim scope that subverted the jury’s ability to fairly decide the issues before 

it. 

The scope of the claims was considered at several times leading up to trial. At 

the claim construction phase of the proceedings, both parties agreed that the term 

“packet data network” in the asserted claims included both public networks, like the 

2009-1086, -1098 7 
Internet, and private networks, like that used by Cox. The construction adopted by the 

district court was that the term “packet data network” means: 

a packet-switched data network, where the network transports packets of 

data over a non-dedicated circuit to a destination, and each packet 

includes source and destination addresses. 

Claim Construction Order 4-5. Neither party asserts on appeal that this construction is 

incorrect. 

Prior to the jury charging conference, Verizon submitted a proposed jury 

instruction stating “[t]he subjective intent of the inventor when he used a particular term 

is of little or no probative weight in determining the scope of a claim. It is not unusual 

for there to be a significant difference between what an inventor thinks his patented 

invention is and what the ultimate scope of the claims is after allowance by the Patent 

and Trademark Office.” Verizon Servs. v. Cox Fibernet Va., Inc., No. 08-CV-0157 (E.D. 

Va. Sept. 24, 2008) (Verizon’s proposed jury instruction No. 31). The district court did 

not give this proposed instruction and rejected Verizon’s renewed request made prior to 

the initiation of jury deliberations. 

At the trial, the district court gave comprehensive instructions to the jury defining 

its role in claim construction. The instructions included the following: “the scope of the 

patent claims is a question of law for me to decide”; “you must give the claims the scope 

my interpretations give them”; “all of the terms which I have not given you in an express 

interpretation are to be given by you their ordinary and customary meaning to a person 

of ordinary skill in the art to which the patent pertains”; and “[t]he scope of the patent is 

not limited to particular embodiments . . . but is limited only by what is fairly within the 

scope of the claims.” Trial Tr. vol. 8, 1694, 1704, Sept. 29, 2008. The district court also 

2009-1086, -1098 8 
instructed the jury that “[f]rom time to time in their arguments, the lawyers may have 

stated what law was applicable to this case. And if they made a reference . . . that is 

contrary to what I state the law to be, you must disregard what the lawyers said and 

abide by what the Court states the law to be.” Trial Tr. vol. 8, 1717, Sept. 29, 2008. 

Neither party argues that any of the jury instructions were incorrect. 

The dispute in this case is not over the district court’s claim construction or jury 

instructions, but instead about arguments that Cox made to the jury about claim scope. 

More specifically, Verizon alleges that Cox and its experts repeatedly argued that the 

scope of the asserted claims was limited by the intent of the inventors. In support of this 

allegation, Verizon cites to several places where Cox’s counsel and its experts referred 

to statements of the inventors and then distinguished Cox’s system from the asserted 

claims based on those statements. Verizon also points to the following statement made 

by Cox’s counsel while he questioned an expert, “[Verizon] accuse[s] a small part of the 

Cox system which has nothing to do with the purpose of the patent.” Verizon’s Principal 

Br. 13. In addition, Verizon asserts that although witness testimony about the Internet’s 

role in the patents was “unobjectionable as background,” during closing arguments Cox 

improperly made statements inviting the jury to use this testimony to interpret the 

claims. Verizon’s Reply Br. at 6-7. The particular portion of Cox’s closing argument 

that Verizon finds objectionable is the following:

You will notice that the Court has construed some terms, but not all the 

terms. And at the bottom of each page there is a footnote that I want you 

to look at and read. And what it says is, “all of the terms that the Court did 

not give an express interpretation, are to be given their customary and 

ordinary meaning to a person of ordinary skill in the art to which the 

patents pertain.” 

2009-1086, -1098 9 
In other words, all this language that is not construed, you have got to 

apply as it would be understood by a person of ordinary skill in the art. 

Well, I certainly am not, and I assume that at least some of you are not 

persons of ordinary skill in this art. So, how are you to do that? To apply 

these patent terms or these claims, you have got to understand what they 

cover, what the context is. And that’s why we put on the evidence that we 

have. 

Trial Tr. vol. 8, 1650, Sept. 29, 2008. According to Verizon, this “unmistakably created 

a dispute over claim scope by inviting the jury to limit the claims to the Internet.” To 

remedy this perceived problem, Verizon requested an instruction after the district court 

charged the jury that “none of the claims in this case is limited to the Internet.” Trial Tr. 

vol. 8, 1722, Sept. 29, 2008. The district court denied this request. 

Verizon frames its challenge on appeal as a claim construction issue governed 

by O2 Micro International Ltd. v. Beyond Innovation Technology Co., Ltd., 521 F.3d 

1351 (Fed. Cir. 2007). In O2 Micro, the parties disputed the specific meaning of the 

claim term “only if” at the Markman hearing. Id. at 1357. In its Markman order, while 

acknowledging the parties’ dispute, the court ruled that the term had a well-understood 

definition and therefore needed no construction. Id. At trial, the “only if” limitation “was 

a key issue disputed by the parties” and both parties presented explicit arguments to the 

jury regarding the term’s meaning. Id. at 1358. In O2 Micro, we held that the district 

court’s conclusion that the term “only if” need not be construed was wrong because it 

left the parties’ dispute over the scope of the claim term unresolved and was a question 

of law that should have been determined by the court and not left to the jury. Id. at 

1361. Thus, we remanded the case to the district court for proper construction of the 

claim term “only if.” Id. at 1362-63. 

2009-1086, -1098 10 
Several subsequent cases have clarified when a remand for additional claim 

construction is appropriate. For example, in Kinetic Concepts, Inc. v. Blue Sky Medical 

Group, Inc., we noted that “[w]hile [O2 Micro] permits a remand for further claim 

construction, it does not require one,” particularly when the parties do not use the 

allegedly disputed construction in front of the jury. 554 F.3d 1010, 1019 n.4 (Fed. Cir. 

2009). Further, in Broadcom Corp. v. Qualcomm Inc., we refused to remand a case for 

further construction of a claim term when the purported dispute over claim construction 

was raised for the first time after the jury verdict. 543 F.3d 683, 694 (Fed. Cir. 2008) 

(“Unlike in O2 Micro, where the parties disputed the proper construction of a term at a 

pre-trial Markman hearing, 521 F.3d at 1362, Qualcomm here has failed to offer its 

proposed construction of ‘networks’ at or prior to trial, and we reject such arguments 

raised for the first time after the jury verdict.”) 

Verizon characterizes Cox’s closing argument as creating “an actual dispute 

regarding whether the patent claims were limited to communications over the Internet 

and/or the particular problems the inventors were trying to solve” and requires reversal 

under O2 Micro. Verizon’s Principal Br. 23. Verizon’s reliance on O2 Micro is 

misplaced. Unlike O2 Micro, where the scope of a specific claim term was in dispute 

beginning at the Markman hearing and continuing throughout the trial, Verizon never 

identified at any time during the proceedings before the district court any specific claim 

term that was misconstrued or that needed further construction. Moreover, the 

allegedly improper arguments it complains that Cox made do not relate to any particular 

misconstrued term. Cox did not invite the jury to choose between alternative meanings 

of technical terms or words of art or to decide the meaning of a particular claim term, as 

2009-1086, -1098 11 
was the case in O2 Micro. To the contrary, Cox asserts that not only did it not argue 

that the claim generally should be limited to the Internet, it acknowledged through its 

expert that the asserted claims are not limited to the Internet. Specifically, Cox’s expert, 

Dr. Evans, testified at the trial that:

Q. In your conclusion that the Cox system does not have a system of 

interlinked packet data networks but instead is one network, are you 

relying in any way on a distinction between the public or private 

interlink packet data networks? 

A. No, sir, I’m not. 

Trial Tr. vol. 4, 839, Sept. 23, 2008. 

Cox contends that the arguments now objected to by Verizon were not intended 

to limit claim scope but more broadly to distinguish its accused system, which it 

contended lacked any sort of “system of interlinked packet data networks,” from the 

claimed system of the Feature Patents. Cox also argues that because it believed at the 

time it implemented its PacketCable system that Verizon’s patents solved problems 

related to the Internet, it was proper to contend at the trial─as a matter unrelated to 

claim scope─that its actions should not be found to have been willful. 

While Verizon attempts to characterize the issue as one of claim construction, its 

argument is more accurately about whether Cox’s arguments to the jury about the 

distinction between how its system works and the Internet were improper in offering the 

jury “appealingly simplifying ways to determine invalidity and infringement” thus 

“invit[ing] the jury to shirk its key factfinding function.” Verizon’s Principal Br. 28-29. 

On that issue, we turn, once again, to the law of the Fourth Circuit. See Juicy 

Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367, 1370-71 (Fed. Cir. 2004). The Fourth 

Circuit reviews the refusal to set aside a verdict based on improper arguments by 

2009-1086, -1098 12 
considering the totality of the circumstances, including “the nature of the comments, 

their frequency, their possible relevancy to the real issues before the jury, the manner in 

which the parties and the court treated the comments, the strength of the case (e.g., 

whether it is a close case), and the verdict itself.” Arnold v. E. Air Lines, Inc., 681 F.2d 

186, 197 (4th Cir. 1982) (quoting City of Cleveland v. Peter Kiewit Sons’ Co., 624 F.2d 

749 (6th Cir. 1980)). Only when there is a “reasonable probability,” that improper 

arguments effectively subverted “the jury’s reason or [] its commitment to decide the 

issues on the evidence received and the law as given it by the trial court” can an abuse 

of discretion in declining to set aside that verdict be found. Id. 

On this record, we are not persuaded that the district court abused its discretion 

by refusing to order a new trial on the basis of Cox’s arguments to the jury. Validity and 

infringement were vigorously litigated, with extensive testimony, physical exhibits, and 

argument from both sides. Each side presented multiple expert witnesses. From 

thousands of pages of trial testimony, Verizon singles out snippets of testimony by 

Cox’s witnesses and of argument by counsel as improper. And Verizon admits that 

each of the cited statements “were not necessarily objectionable on their own,” but that 

somehow taken together, these statements made “prejudice to the jury deliberations 

inescapable.” Verizon’s Principal Br. 28; Verizon’s Reply Br. 6-7. We disagree. We 

cannot say that the singular or cumulative effect of these statements effectively 

subverted the jury’s reason or commitment to decide the issues on the evidence 

received and the law as given by the court. 

The district court specifically instructed the jury that counsel’s arguments and 

statements were not evidence. During closing, along with the allegedly improper 

2009-1086, -1098 13 
arguments, Cox properly described the specific claim limitations that were missing from 

the accused system. In addition, Verizon did not, during the trial, request a limiting 

instruction based on Cox’s allegedly improper claim scope arguments. Nor did Verizon 

object to any arguments made during Cox’s closing. Finally, Verizon had the 

opportunity, in its own closing, to rebut any improper or misleading statements it 

perceived in Cox’s closing arguments but instead said nothing. Looking at the entire 

record, including the extensive evidence and testimony along with the district court’s 

comprehensive jury instructions, we see no reason to conclude that the district court 

abused its discretion in finding that the jury had not been deprived of its ability to decide 

this case. We thus conclude that the district court properly denied Verizon’s request for 

a new trial. 

III. Validity 

A. JMOL 

Both parties argue that the jury verdicts on validity should be overturned because 

the jury could not reasonably have made its decision based on the evidence advanced 

at trial. Verizon argues that Cox presented insufficient evidence to support the jury’s 

finding that the asserted claims of the Feature Patents were invalid. Cox, on the other 

hand, argues that the Network Patents and the Quality of Service Patent are invalid as a 

matter of law. At trial, Cox argued that all the asserted claims of Verizon’s six patents 

were invalid because of anticipation and obviousness. 

1. Anticipation 

To show invalidity of the asserted claims of the Feature Patents, Cox presented 

an expert at trial, Dr. Mark J. Handley. Dr. Handley testified that two papers he had co2009-1086, -1098 14 
authored on protocols for using the Internet for telephony, a February 1996 draft of the 

Session Initiation Protocol (“SIP Article”) and a November 1995 paper on Session 

Description Protocol (“SDP Article”), along with another document entitled RFC 1183, 

were relevant prior art. Dr. Handley testified that the Feature Patents were anticipated, 

as the SIP Article disclosed all the elements of the claims in the ’711 patent and RFC 

1183 disclosed all elements of the ’574 patent. For example, after extensive 

explanation of how the SIP Article disclosed each element of asserted claims 1, 3, and 

11 of the ’711 patent, Dr. Handley testified: 

Q. Dr. Handley, I believe we were getting ready to get to a dependent 

Claim 3 of the ’711 patent. Did you reach an opinion as to whether 

that claim is embodied in your 1996 SIP article? 

A. Yes, I believe it is. 

. . . 

Q. Do you have anything else to add to your conclusion that Claims 1 and 

11 are invalid in view of the SIP article? 

A. No, I believe that that’s the key points, that all of these elements are 

present in the February 1996 document. 

Trial Tr. vol. 4, 909, 914, Sept. 23, 2008. Dr. Handley also provided testimony that RFC 

1183 disclosed each element of the asserted claims of the ’574 patent─independent 

claim 5 and dependent claim 6, which adds to claim 5 the limitation “wherein the reply 

also contains an address conforming to the first protocol”: 

Q. Okay. So, let’s look at your slides here. If you could look at Exhibit 

25, Defendant’s Exhibit 4225 [“Claim 5 of the ’574 Patent v. 1990 RFC 

1183” J.A. 15721]. Does that help illustrate your point that Claim 5 of 

the ’574 patent is embodied in this 1990 RFC? 

A. Yes. This is basically what you have already seen several times. 

. . . 

2009-1086, -1098 15 
Q. What about, we don’t have a slide for this, but what about Claim 6’s 

point about adding another IP address. Was that disclosed in the 

RFC? 

A. It is disclosed in the RFC sort of implicitly. 

Trial Tr. vol. 4, 927, 930, Sept. 23, 2008. In addition, Dr. Handley testified that the SIP 

Article and SDP Article, read together, anticipated the asserted claims of both of the 

Feature Patents. 

Cox also called Dr. Williams and Dr. Helgert as expert witnesses to testify that 

the asserted claims of the Network Patents and the Quality of Service Patent were 

anticipated. Dr. Williams testified that U.S. Patent 5,233,604 (“the ’604 patent”) 

disclosed every element of the asserted claims of the Quality of Service Patent. Dr. 

Helgert testified that U.S. Patent 6,310,873 (“the ’873 patent”) disclosed each element 

of the asserted claims of the Network Patents. Verizon, in turn, presented an expert 

witness at trial, Pieter Zatko, who testified that the ’604 patent did not disclose several 

limitations of the asserted claims of the Quality of Service Patent and therefore did not 

anticipate those claims. Verizon also called an expert, Dr. Houh, who testified that the 

’873 patent did not disclose several elements of the asserted claims of the Network 

Patents. 

 For a prior art reference to anticipate a patent, it must disclose each and every 

limitation of the claimed invention. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 

1373, 1377 (Fed. Cir. 2003). “[A] prior art reference may anticipate without disclosing a 

feature of the claimed invention if that missing characteristic is necessarily present, or 

inherent, in the single anticipating reference.” Id. However, a patent claim “cannot be 

anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior 

2009-1086, -1098 16 
art are not enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 

1354 (Fed. Cir. 2003). “The standard for what constitutes proper enablement of a prior 

art reference for purposes of anticipation under section 102, however, differs from the 

enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 

413 F.3d 1318, 1325 (Fed. Cir. 2005). It is well-settled that utility or efficacy need not 

be demonstrated for a reference to serve as anticipatory prior art under section 102. 

See Bristol-Myers Squibb Co. v. Ben Venue Labs., Ind., 246 F.3d 1368 (Fed. Cir. 2001); 

In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992). 

Verizon argues that since the SIP paper refers to the SDP paper only as a 

“companion draft,” it does not properly identify the specific material it incorporates as 

required to treat two documents as one for anticipation purposes. Kyocera Wireless 

Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1352 (Fed. Cir. 2008). Verizon also argues 

that since incorporation by reference is a matter of law, it was improperly left for the jury 

to decide without any instruction. Verizon is correct that if incorporation by reference 

comes into play in an anticipation determination, it is the court’s role to determine what 

material in addition to the host document constitutes the single reference. Advanced 

Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000). However, 

we find that Dr. Handley’s testimony, noted above, provided substantial evidence for the 

jury to determine that the SIP paper, by itself, anticipated the claims of the ’711 patent, 

and the RFC 1183 paper anticipated the claims of the ’574 patent. Therefore, the lack 

of instruction on incorporation by reference was harmless. See Z4 Techs., Inc. v. 

Microsoft Corp., 507 F.3d 1340, 1354 (Fed. Cir. 2007) (holding that district court’s 

2009-1086, -1098 17 
erroneous jury instruction was harmless because the instruction would not have 

affected the outcome of the case).

Verizon also argues that the SIP and SDP articles are not enabling because they 

do not disclose or enable the “basic claim requirement” of being able to make ordinary 

two-way telephone calls. However, none of the claims in the Feature Patents actually 

recite performing two-way telephone calls. The patents relate to telephony, but do not 

specifically recite the steps of making an actual call. Furthermore, Cox’s expert, Dr. 

Handley, provided testimony that a person of ordinary skill in the art would have had no 

problems implementing the functionality disclosed in the SIP Article. The record thus 

reveals that the jury had substantial evidence to find that the SIP Article was enabling in 

the sense of 35 U.S.C. § 102 and that the Feature Patents were invalid based on 

anticipation. 

2. Obviousness 

Dr. Handley testified that, in addition to being anticipated, the asserted claims of 

the Feature Patents would have been obvious to one of skill in the art based on both the 

SIP Article and the SDP Article. “In reviewing the jury verdict of obviousness, we review 

whether the jury was correctly instructed on the law, and whether there was substantial 

evidence whereby a reasonable jury could have reached its verdict upon application of 

the correct law to the facts, recognizing that invalidity must be proved by clear and 

convincing evidence.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed. 

Cir. 1997) (internal citations omitted). A determination of obviousness in this case 

requires an inquiry into the scope and content of the prior art, the level of ordinary skill 

2009-1086, -1098 18 
in the art, and the differences between the claimed inventions and the prior art. Graham 

v. John Deere Co., 383 U.S. 1, 17 (1966). 

Verizon argues that the jury could not have found that the Feature Patents would 

have been obvious because “Cox offered no evidence of what an ordinary skilled 

artisan in the relevant art would be taught by the prior art or find obvious in light of the 

proper art.” Verizon’s Principal Br. 42. Verizon asserts that Cox’s expert, Dr. Handley, 

testified regarding obviousness using the wrong field of art─“Internet and network 

protocols”─instead of the art correctly defined by the district court in the jury instructions 

“telephony and wireless communications.” 

While it is true that the Feature Patents pertain to telephony and wireless 

communications, the language of the patents themselves, which make frequent 

reference to the Internet, makes clear that the patents also relate to the field of Internet 

and network protocols. In fact, Dr. Handley explained that he was describing the 

background of a person of ordinary skill working in the area of the “Internet telephony 

industry,” which is clearly a subset of telephone and wireless communications. “In 

determining the relevant art for purposes of addressing issues of patent validity, the 

court must look to the nature of the problem confronting the inventor.” Bancorp Servs., 

L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1375 (Fed. Cir. 2004). The problem 

facing the inventors of the Network Patents was related to providing communication 

services, including voice telephone service, over packet-based networks, including the 

Internet. Therefore, the relevant art in this case plainly includes the use of network 

protocols and the Internet. Thus, it was not improper for the jury to rely on Dr. 

Handley’s testimony to find that the Feature Patents were obvious. 

2009-1086, -1098 19 
 * * * 

Both parties assert numerous additional arguments about the reliability of the 

other party’s experts and the sufficiency of the other party’s evidence relating to 

invalidity. We do not find these arguments persuasive. The jury was presented with 

opposing experts expressing conflicting views about the validity of the six patents-insuit. The jury was entitled to resolve the conflicting evidence in favor of Cox for the 

Feature patents and for Verizon on the Network and Quality of Service patents. BioTech. Gen. Corp. v. Genentech, Inc., 267 F.3d 1325, 1330-31 (Fed. Cir. 2001); see also

U.S. Surgical, 103 F.3d at 1559 (affirming a jury verdict of invalidity because 

“[c]onflicting evidence and argument must be viewed as resolved favorably to the party 

in whose favor the jury found. The reviewing court must give appropriate deference to 

the jury’s choices in weighing the evidence, in deciding between opposing positions, 

and in drawing factual inferences.”). Looking at the record as a whole, we find that the 

jury had substantial evidence upon which to conclude that Cox met its burden of 

showing invalidity by clear and convincing evidence for the Feature patents, but that it 

did not meet its burden of showing invalidity of the Network and Quality of Service 

patents. Therefore, we find the district court correctly determined that a reasonable jury 

could find that the Feature Patents were invalid for anticipation or obviousness and that 

the Network Patents and Quality of Service Patent were not. We affirm the district 

court’s denial of Verizon’s motion for JMOL on validity and Cox’s motion for JMOL on 

invalidity. 

2009-1086, -1098 20 
B. New Trial 

Verizon argues that a new trial is required on validity of the Feature Patents 

because the district court failed to correct another improper argument by Cox relating 

solely to validity. Verizon alleges that Cox improperly argued that the jury could find the 

Feature Patents invalid simply because they were identical, in all material respects, to 

what was taught in the prior art SIP and SDP articles. Verizon points to testimony by 

Dr. Handley explaining the evolution of the 1996 SIP and SDP articles to the current SIP 

protocol used by the accused system as improper. In addition, Verizon again points to 

statements in Cox’s closing argument: 

Now, what is the mistake they made? They made a mistake of accusing 

that protocol [SIP] of infringing their patent. So, what they are doing is 

they are saying, by using this protocol, you infringe. But the protocol 

predates the patent. 

So, they have accused the prior art. That invalidates their patent. 

Trial Tr. vol. 8, 1673, Sept. 29, 2008. 

It is true that in Zenith Electronics Corp. v. PDI Communication Systems, Inc., 

522 F.3d 1348, 1363 (Fed. Cir. 2008), this court held that “anticipation cannot be proved 

by merely establishing that one ‘practices the prior art.’” Instead, “[a]nticipation requires 

a showing that each element of the claim at issue, properly construed, is found in a 

single prior art reference. ‘It is the presence of the prior art and its relationship to the 

claim language that matters for invalidity.’” Id. (quoting Tate Access Floors, Inc. v. 

Interface Architectural Res., Inc., 279 F.3d 1357 (Fed. Cir. 2002)). In Zenith, we 

remanded a finding of anticipation because the accused infringer provided no evidence 

whatsoever that the accused product satisfied two limitations of the asserted claim. Id. 

This is not the case here. As described above, Cox’s expert, Dr. Handley, detailed how 

2009-1086, -1098 21 
the prior art disclosed each of the claim elements. Thus, a reasonable jury could 

conclude, based on evidence in the record and separate and apart from any alleged 

“practicing the prior art” argument, that the Feature Patents were invalid. 

On cross-appeal Cox asserts that it is entitled to a new trial on validity of the 

Network and Quality of Service patents because the district court abused its discretion 

in excluding the factual testimony of Eric Voit and Kelvin Porter, named inventors of 

Verizon’s patents. Cox argues that the district court erred in adopting Verizon’s 

argument that assignor estoppel precluded inventor testimony about prior art. We need 

not and do not address the issue of assignor estoppel because the district court 

properly allowed testimony from the witnesses about the patents they invented based 

on their personal knowledge, and properly excluded these same witnesses from 

providing expert testimony on invalidity for which they had not previously provided 

expert reports or been qualified as an expert. The district court did not abuse its 

discretion in limiting inventor testimony to factual testimony that did not require expert 

opinion. See Kumho Tire, Ltd. v. Carmichael, 526 U.S. 137, 152 (1999) (“[W]e conclude 

that the trial judge must have considerable leeway in deciding in a particular case how 

to go about determining whether particular expert testimony is reliable.”); Voice Techs. 

Group, Inc. v. VMC Sys., Inc., 164 F.3d 605, 615-16 (Fed. Cir. 1999) (stating that the 

inventor may provide testimony explaining the claimed invention and its development, 

but that “the inventor can not by later testimony change the invention and the claims 

from their meaning at the time the patent was drafted and granted”). 

2009-1086, -1098 22 
IV. Infringement 

A. JMOL 

Verizon asserts that it is entitled to JMOL of infringement of claim 1 of the ’481 

Network Patent because it “demonstrated that Cox’s system practices every step of that 

claim and Cox never disputed Verizon’s expert testimony regarding how calls were 

actually made on Cox’s system.” Verizon’s Principal Br. 33-34. A determination of 

infringement is a question of fact, reviewed for substantial evidence when tried to a jury. 

Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). 

Claim 1 of the ’481 patent recites: 

1. A method of establishing a communication path between terminals 

through a packet switched network, a circuit switched network, and at 

least one interface that interconnects the packet switched network and the 

circuit switched network, comprising the steps of: 

a) requesting from one of said terminals the establishment of said 

communication path through said interface; 

b) searching a first database for the address of a second database 

containing a table of terminal data which includes identification of said 

requesting terminal; 

c) searching said second database to obtain data regarding said 

requesting terminal; 

d) responsive to data regarding said requesting terminal obtained from 

said search authorizing the establishment of said communication path; 

and 

e) responsive to said authorization establishing said communication path 

between terminals through said interface. 

’481 patent col.34 l.52-col.35 l.3. 

Both parties provided expert testimony on infringement. Cox provided expert 

testimony that its accused system does not practice several of claim 1’s limitations. 

First, Cox’s expert, Dr. Evans explained that Cox’s system does not practice the 

requirement of “searching a first database” because it simply uses the domain name 

server to translate the textual domain name of a known Call Management Server 

2009-1086, -1098 23 
(“CMS”) into its numeric IP Address and this translation is a lookup, not a search. Trial 

Tr. vol. 4, 783, Sept. 23, 2008. Verizon countered with expert testimony that this 

translation amounts to “searching” as required by claim 1. Trial Tr. vol. 1, 197-99, Sept. 

17, 2008. Therefore, there was a factual dispute between the experts over whether a 

simple database lookup for translation is equivalent to “searching a first database.” 

Second, Dr. Evans testified that a CMS is not a database and therefore does not 

qualify as the “second database” in the limitation “searching a first database for the 

address of a second database.” Trial Tr. vol. 4, 783, Sept. 23, 2008. In addition, 

another Cox witness explained that any database residing internally on a CMS was not 

addressable by IP address and therefore could not be returned by the domain name 

server lookup. Trial Tr. vol. 3, 609-10, Sept. 22, 2008. Verizon’s expert, Dr. Houh, 

testified that the CMS is equivalent to “the second database” because the CMS is a 

server that includes a database containing a table of terminal data. Trial Tr. vol. 1, 197-

99, Sept. 17, 2008. Again, this amounted to a factual dispute between the experts over 

whether Cox’s system was fairly within the scope of the claims. 

Both of these factual disputes were properly for the jury to decide. The jury was 

entitled to credit Cox’s experts over Verizon’s experts and thus it was not unreasonable 

for the jury to find that claim 1 of the ’481 patent was not infringed. See Kinetic 

Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1024 (Fed. Cir. 2009) 

(finding that a jury is at liberty to accept or reject expert testimony); accord Aldridge v. 

Balt. & Ohio R.R. Co., 789 F.2d 1061, 1065 (4th Cir. 1986), aff’d en banc, 814 F.2d 157 

(4th Cir. 1987). There is no basis on which to overturn the district court’s denial of 

Verizon’s request for JMOL on this ground. 

2009-1086, -1098 24 
Verizon also argues that Cox improperly argued that steps (a) and (b) in claim 1 

had to be performed in sequence. Verizon points to the following testimony from Cox’s 

expert, Dr. Evans: 

Q. You say [step] (b) occurs before (a) you mean in Verizon’s 

contentions? 

A. Yes. In the patent, (a) comes before (b), but in time, if you look at what 

happens on the way Cox’s system works, (b) would have to occur 

before (a). 

Trial Tr. vol. 4, 781, Sept. 23, 2008. The district court found that Dr. Evans’s testimony 

on sequence was simply an explanation, not a part of his opinion as to why there was 

no infringement. Trial Tr. vol. 4, 837-38, Sept. 23, 2008. In fact, Verizon itself later 

clarified this with Dr. Evans: 

Q. Just to clarify the last point, Dr. Evans, you were not claiming, I 

understand, that the various steps of the patent, and in particular, step 

(b), has to be done in a particular order in order for the patent claim to 

be satisfied; is that correct? 

A. That would be a legal conclusion, so that is correct. 

The district court subsequently instructed the jury “[t]here is no requirement that steps 

(a), (b) or (c) occur in any order.” Trial Tr. vol. 8, 1702-03, Sept. 29, 2008. Because the 

jury had substantial evidence to find that claim 1 of the ’481 patent was not infringed 

based on the district court’s undisputed construction of that claim, we find the district 

court did not err in denying Verizon’s motion for JMOL on this issue. 

B. New Trial 

Verizon contends that a new trial on infringement of the ’597 Quality of Service 

Patent is required because the district court misconstrued the term “evaluating said set 

of candidate resources to find a best candidate resource.” Verizon asserted that Cox 

2009-1086, -1098 25 
infringed claims 12, 13, and 20 of the Quality of Service Patent. Independent claim 12 

represents the asserted claims: 

12. A method of providing services in a communications network, which 

comprises the steps of: 

receiving a request for service; 

determining criteria for a resource necessary to provide the requested 

service; 

searching a resource data structure for a set of candidate resources 

meeting said criteria wherein each resource of said resource data 

structure comprises a resource identifier, a set of static attributes, and a 

set of dynamic attributes; 

evaluating said set of candidate resources to find a best candidate 

resource; and 

allocating said best candidate resource to meet said request for service. 

’597 patent col.9 ll.1-15 (emphasis added). Claims 13 and 20 are dependent from claim 

12. 

We need not resolve this issue because the jury had substantial evidence to find 

that the ’597 patent was not infringed regardless of whether the district court was 

correct in its construction of “evaluating said set of candidate resources to find a best 

candidate resource.” We may affirm the jury’s findings on infringement “if substantial 

evidence appears in the record supporting the jury’s verdict and if correction of the 

errors in a jury instruction on claim construction would not have changed the result, 

given the evidence presented.” Teleflex Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 

1328 (Fed. Cir. 2002). The record shows that Cox’s expert testified that many of the 

limitations of the ’597 patent were not performed by Cox’s system, including the 

“determining a criteria,” “searching a resource data structure,” and “evaluating said set 

of candidate resources” limitations. For example, one of Cox’s experts testified as 

follows: 

2009-1086, -1098 26 
Q. [C]an you just summarize what you found was missing in terms of how 

Cox’s, how Cox operates? 

A. Well, in the Cox system, the very first element, which is a network 

based selection of a service, is not present. Cox does not do its 

network path selection on a network basis. 

Element (b), there is no determination of a criteria. All of Cox’s 

systems have the same criteria for a voice call. So, there is no 

differentiation between the types of calls. 

Element (c), there is no resource data structure within the Cox system. 

There is no resource data structure that contains the type of 

information we are talking about here. 

Q. Then what about the last step, this evaluation step in finding the best 

candidate resource? 

A. So, the evaluation step, there is no evaluation of candidate resources 

because there are no candidate resources created. And also there is 

no allocation of a best resource because all of the resources that are 

being accused by Verizon are equivalent resources. 

Trial Tr. vol. 5, 1115, Sept. 24, 2008. Because the evidence that Cox’s system does not 

practice several of these limitations does not depend on the disputed claim construction, 

the jury had substantial evidence to find that the ’597 patent was not infringed 

independently of the disputed limitation. Moreover, because we hold that Verizon is not 

entitled to a new trial on infringement, we need not and do not reach Cox’s arguments 

that a remand on infringement would entitle it to a new trial on validity based on an 

allegedly erroneous construction of the claim term “authenticating . . . from a unitary 

logical object.” 

CONCLUSION 

For the foregoing reasons, we affirm the district court’s denial of Verizon’s motion 

for a new trial on all issues based on Cox’s allegedly improper arguments regarding 

claim scope. We also affirm the district court’s denial of both parties’ motions for JMOL 

2009-1086, -1098 27 
2009-1086, -1098 28 

of validity or invalidity and Verizon’s alternative request for a new trial on validity of the 

Feature Patents. Finally, we affirm the district court’s denial of Verizon’s request for 

JMOL on infringement of claim 1 of the ’481 patent and its request for a new trial on 

infringement of the asserted claims of the Quality of Service Patent. 

AFFIRMED