# United States **Court of Appeals**  **for the Federal Circuit**

______________________
STARHOME GMBH,

Plaintiff

- Appellant,

v.

AT&T MOBILITY LLC, R OAMWARE, INC.
, AND T- MOBILE USA, INC.,

Defendants

- Appellees.

______________________

2012

- 1694

______________________
Appeal from the United States District Court for the District of Delaware in No. 10

- CV

- 0434, Chief Judge Gregory M. Sleet.

______________________

Decided: February 24, 2014

______________________

J OHN M. D I M ATTEO , Willkie Farr & Gallagher, LLP, of New York, New York, argued for plaintiff

- appellant. With him on the brief was R OBERT G. K OFSKY . Of counsel

was J ESENIA M. R UIZ DE LA T ORRE

.

M ARK A. P ERRY , Gibson Dunn & Crutcher, LLP, of Washington, DC , argued for defendants

- appellees. O n the brief were J OSH K REVITT , B ENJAMIN H ERSHKOWITZ
, and R. S COTT R OE
, of New York, N e w York ; and F REDERICK C HUNG , of Palo Alto, California.

______________________STARHOME GMBH v. AT & T MOBILITY LLC 2

Before M OORE
, S CHALL
, and R EYNA
, Circuit Judges.

S CHALL
, Circuit Judge.
This is a patent infringement case. Starhome GmbH (“Starhome”) sued AT&T Mobility LLC, Roamware, Inc., and T

- Mobile USA, Inc. (“Defendants”) , in the United States District Court for the Dist rict of Delaware for infringement of U.S. Patent No. 6,920,487 (the “’487 patent”). The ’487 patent is titled “System and Methods for Global Access to Services for Mobile Telephone Su bscribers.” It relates generally to a way of improving the functionality of phone services for users in a roaming telephone network. To allow users in a roaming network to make calls as if in their home network, the ’487 patent discloses the use of an “intelligent gateway.”
Following a Markman h earing, the district court co nstrued various terms of the ’487 patent. Among them was the term “intelligent gateway,” which the court construed to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network.” Relying upon that construction, Defendants moved for summary judgment of noni nfringement. Starhome did not contest the motion, but instead stipulated to a judgment of noninfringement based upon the court’s construction of “intell igent gat eway.” Following the district court’s entry of the stipulated judgment on September 12, 2012, Starhome GmbH v. AT&T Mobility LLC , No. 1:10

- cv

- 00434

- GMS (D. Del. Sept. 12 , 2012), Starhome appealed. We affirm.

B ACKGROUND

I. S TARHOME AND T HE ’487 P ATENT
Starhome owns the ’487 patent. The problem the p atent aims to solve arises when mobile phone users are in a network other than their home network (e.g., roaming). In a home network, a mobile phone user might dial aSTARHOME GMBH v. AT & T MOBILITY LLC 3

short code

, such as “121

, ” to ac cess voice mail. But while roaming, the visiting network may not recognize the code, resulting in an error message. As another example, a user from Germany visiting the United States may want to call home to Germany, but if the user does not enter the correct internatio nal direct

- dialing prefix and country code, the call will not connect.
The ’487 patent’s solution to this problem is the “inte lligent gateway.” Figure 1 of the ’487 patent , shown below, demonstrates a system (10) providing roaming servic es and employing the intelligent gateway

.

As shown in Figure 1, the intelligent gateway (V

- I/G 32) has a database (DB 31) that contains information about multiple home networks, including short

- code translation tables, subscriber profile data, and roaming patterns. ’487 patent col. 2 ll. 33

– 41. The information in the database may be updated via a global packet

- switch network (22)

. Id. col. 2 ll. 33

– 36, col. 4 ll. 33

– 36. Figure 2 of the ’487 patent, shown below, demonstrates a call flowSTARHOME GMBH v. AT & T MOBILITY LLC 4

of a short

- coded call or erroneous full

- number call in accordance with the system of Figure 1. Id. col. 1 ll. 43

– 44, col. 3 ll. 24

– 27. The specification explains that, “[i]n order to simplify the pictur e, the mobility probe and its Interfaces are not shown.” Id. col. 3 ll. 27

– 29.

In Figure 2, the visited mobile network (VPLMN 30) has a switch ing center (V

- MSC 34) supporting a roaming cell phone (39). If the roaming subscriber (39) d ials a phone number that the switch ing center (34) cannot place ( e.g., a v oice mail short code like “121”) (step 1), the call is routed to the intelligent gateway (V

- I/G 32) (step 2). The intelligent gateway, which has knowledge of the home

network dialing for mat and short codes, translates the sequence into one the switch (34) will recognize and sends the corrected dialing sequence back to the switch (step 3). The call is then routed by the switch to the international telephone network (step 4), and the netwo rk sends the call to its intended destination (step 5). Id. col. 3 l. 30
–

c ol. 4 l. 5.STARHOME GMBH v. AT & T MOBILITY LLC 5

Starhome sells its intelligent gateway solution as the Intelli G ate TM and has installed it in over 130 mobile networks throughout the world.

II. D EFENDANTS AND THE A CCUSED P RODUCT Defendant Roamware sells a network platform that runs Smart Call Assistant and Short Code applications

. Those applications allow mobile

- network operators to translate numbers dialed by roaming cell

- phone users visiting their networks. De fendants AT&T and T

- Mobile use the Roamware platforms in their networks. Notably

, the Roamware platform does not connect to an external packet

- switch network or other external network.

III. T HE D ISTRICT C OURT P ROCEEDINGS Starhome filed its complaint ag ainst Defendants on May 25, 201 0 , asserting infringement of the ’487 patent and U.S. Patent No. 7,231,431 (the “’431 patent”) , which is a continuation of the ’487 patent

. The parties disputed multiple terms in th e patents, one being the term “intell igent gateway.” Starhome proposed that the term mean t “a network element that uses knowledge implemented in databases or the like and application logic to perform its operations.” Defendants argued that the term meant “a network element that transfers informat ion to and from a mobile network and another network external to the mobile network.”
After briefing and a Markman hearing, the district court issued its claim construction order. In that order, the court f ound that the word “gateway” had a well

known technical meaning in the telecommunications industry when the application for the asserted patent s was filed. In support of its finding

, the court relied on the Institute of Electrical and Electronics Engineers (“IEEE”) dictionary, which describes a “gateway” a s a device that connects two or more networks. Concluding that theSTARHOME GMBH v. AT & T MOBILITY LLC 6

inventors did not clearly redefine the term, the court accepted Defendants’ proposed construction.
Based on the claim construction order, the part ies filed letter briefs requesting permission to move for su mmary judgment. Finding that Defendants set for th a compelling argument for non

- infringement based on the construction of “intelligent gateway,” the court granted Defendants ’ request. Rather tha n formally brief the issue, Starhome stipulated to the entry of judgment of noninfringement.
Starhome timely appealed as to the ’487 patent

. Starhome no longer asserts the ’431 patent. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

D ISCUSS ION

I. S TANDARD OF R EVIEW
Where, as here, a plaintiff concedes noninfringement by stipulation, we need only address the district court’s construction of the pertinent claims. Altiris, Inc. v. Symantec Corp. , 318 F.3d 1363, 1368 (Fed. Cir. 2003). Claim construction is a question of law that we review de

novo. Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc).

II. T HE P ARTIES ’ C ONTENTIONS

Starhome asserts independent claims 10 and 40 of the ’487 patent. Claim 10 recites the following:
10. A system comprising:
an intelligent gateway associated with a first mobile telephone network,
said first mobile telephone network having connections to other mobile telephone networks,
said intelligent gateway adapted to translat e a dialing sequence when dialed by a roaming cell u-STARHOME GMBH v. AT & T MOBILITY LLC 7

lar telephony device roaming in said first mobile network into a destination number,
said roaming cellular telephony device having

a home network which is other than said first m obile network;

and a routin g center in said first mobile tel ephone network,
said routing center adapted to route said dia ling sequence within said first mobile telephone network to said intelligent gateway for said tran slating.
Claim 40 recites the following:
40. An intelligent gate way associated with a first cellular telephony network,
adapted to provide assistance to a cellular telephony device roaming in said first cellular t elephony network to complete calls when a destination number dialed by said roaming cell ular telephony devi ce is erroneous, said roaming cellular telephony device being registered as a home device in a second cellular
te lephony network being distinct from said first cellular telephony network, and
said intelligent gateway being adapted to o btain information f or said call completion using knowledge of said second cellular telephony ne twork.
On appeal, Starhome asserts the same construction of “intelligent gateway” that it urged in the district court (“a network element that uses knowledge implemented in databas es or the like and application logic to perform its operations”). In support of that construction, Starhome argues that the specification does not require the gatewaySTARHOME GMBH v. AT & T MOBILITY LLC 8

to be connected to an external network. Rather, Sta rhome contends

, the specification explains that the intell igent gateway has a local database of information it

accesses to perform its functions. Some embodiments employ a single intelligent gateway associated with a single mobile network, Starhome argues, while others disclose multiple i ntelligent gateways associated with an external packet

- switch network. The critical part of the specification, Starhome continues , is Figure 2, which shows the intelligent gateway connected solely to the internal network. Construing “intelligent gateway” to require the transfer of information to and from an exte rnal network, Starhome concludes, expressly excludes the embodiment of Figure 2.
Further, Starhome argues, claim differentiation su pports its proposed construction. According to Starhome,

c laims 10 and 40 do not expressly or impliedly require the intelligent gateway to transfer information to and from an external network. By contrast, unasserted claims 1 and
47 recite a connection to an external packet

- switch ne twork. This substantive differenc e between the claims

, Starhome concludes, demonstrates that a connection to an external network is not a required feature of an intell igent gateway.

Defendants argue that the patentee used the specific term “gateway” rather than a generic network element

, and that the common usage of that term should control

. Defendant s thus argue that the district court correctly construed “intelligent gateway” as “a network element that transfers information to and from a mobile network and another network external to the mobile network.” In support of that construction

, D efendants point to th ree dictionaries showing that “gateway” refers to a point of interconnection between networks at which information transfer occurs.STARHOME GMBH v. AT & T MOBILITY LLC 9

Further, Defendants argue , the specification describes the “present invention” as intelligent gateways connecting different networks. Likewise , Defendants continue , t he ’487 patent incorporates by reference a P atent Cooper ation Treaty (“P CT ”) application, which describes the “present invention” as a system that “transfer[s] certain signals over a packet

- switch network through service nodes connected to the telephone networks.” Joint A ppendix (“J.A.”) 4803. The ser vice nodes are intelligent gate ways, Defendants contend , a nd are associated with a first mobile network directly con nected to an external network.
Moreover, Defendants argue, every embodiment in the ’487 patent requires the intelligent gateway to direc tly connect different networks. In the first embodiment (Fi gures 1 and 2), the visited mobile network may be coupled to a global packet

- switch network via a visited intelligent gateway. In the second embodiment (Figures
3– 5), in addition to the visited intelligent gateway, a home networ k is coupled to a global pa cket

- switch ne twork via a home intelligent gateway. Notably, Defen dants argue, the specification describes no system where the intelligent gateway is not conn ecting two different networks.
Regarding Starhome ’s argument that Figure 2 i s a separate embodim ent , Defendants respond that the figure merely illustrates a call flow occurring within the larger system of Figure 1 . The f igure omits components not essential to explaining the call flow , Defendants continue, and is not a separate embodiment

. Turning to Starhome’s argument based upon claim differentiation, Defendants respond that the doctrine does not apply because each dependent claim in the ’487 patent adds a feature not otherwise required by the independent claims. Specifically, Defendants argue, the district court’s construction requires access to a generic external ne t-STARHOME GMBH v. AT & T MOBILITY LLC 10

work, but the dependent claims recite access to a specific type of network.
In further support of their position, Defendants point to statements that Starhome made in a related foreign application. To overcome prior art during prosecution of a European application that claims priority to the same provisional application as the ’487 patent, Starhome argued that “a gateway provides access to an external environment beyond the immediate network

, ” and is defined “in terms of an access means from one network to another.” Those statements, Defendants urge , should preclude Starhome from now advocating a broader co nstruction.
In response, Starhome argues that its statements i n connection with the PCT application are consistent with its proposed construction. The prior art at issue in the European application did not involve roaming, Starhome continues, so when the prosecuting attorney said the gateway accessed an external net work, he was referring to another telephone network . Accessing a separate telephone network, Starhome concludes, is exactly what the intelligent gateway accomplishes.

III. A NALYSIS

“ The words of a claim are generally given their ord inary and customary mean ing as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Computer Entm’t Am. LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp. , 415 F.3d 13 03, 131 3 (Fed. Cir. 2005) (en banc) ). “There are only two exce ptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id

. (citing Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1580 (Fed. Cir. 1996)).STARHOME GMBH v. AT & T MOBILITY LLC 11

We have made clear that d ictionaries and treatises can often be useful in claim construction , particularly insofar as they help the court “‘ to better understand the underlying technology ’ and the way in which one of skill in the art might use the claim terms.” Phillips , 415 F.3d at 1318 (quoting V itronics Corp.

, 90 F.3d at 1584 n.6)

. Moreover, judges are free to rely on dictionaries at any time during the process of construing claims “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent doc uments.” Id. at 1322

– 23 (quoting Vitronics Corp. , 90 F.3d at 1584 n.6).

Both as serted claims recite an “intelligent gateway .” T he term “gateway” had a well

- understood meaning in the art at the time the patentees filed the application that led to the ’487 patent

. As evidenced by technical dictio naries, one of ordinary skill in the a rt would have unde rstood a “gateway” to be a connection between different networks. See Andrew S. Tanenbaum

, Computer Ne tworks 16 (3d ed. 1996) (describing a gateway as a means to connect networks and provide necessary translation) ; Harry Newton, Newton’s Telecom Dictionary 362

– 63 (15th ed. 1999) (“A gateway is what it sounds like. It’s an entrance and exit into a communications network.”) ; The IEEE Standard Dictionary of Electrical and Electronic Terms 449 (6th ed. 1996) (defining a “gateway” as a device that connects two systems or networks)

. Considering “gateway” i n the cont ext of the claims and specification of the ’487 patent , one of ordinary skill would have understood that th e inventors did not depart from the ordi nary meaning of “gateway” with their use of the term “intelligent gateway .” The gateway is intelligent because it includes a database of information and is adapted to do things such as translate dialing sequences, deliver short messages, provide assistanc e, and obtain information for call completion. ’487 patent col. 2 ll. 33

– 38, claims 10, 35, and 40

. But, consistent with its ord i-STARHOME GMBH v. AT & T MOBILITY LLC 12

nary meaning, the specification also explains that it connects different networks. For example, w hen descri bing the services performed by the invention, the specific ation explains that “[t]he system providing these services is based upon a configuration comprising a global packet switch network connecting mobile networks via intelligent gateways.” Id. col. 2 ll. 19

– 21

. Further, in describing the invention, t he specification d iscloses two main embod iments . T he first

— shown in Figure 1

— contains a visited mobile network coupled to a packet

- switch network via a single intelligent gateway . The second

— shown in Figures 3, 4, a nd 5

— contains two mobile networks coupled to a packet

- switch network via two intelligent gateways

. After reading t he claims and specification, one of ordinary skill in the art would therefore have understood that “intelligent gateway” carries its ordinary meaning as a device that connects different networks.

Starhome relies on Figure 2 to support its proposed construction , a rguing that the figure shows an intelligent gateway oper ating within a single network, thus const ituting a preferred embodiment excluded by the district court’s construction

. I f true, Starhome’s argument would carry force because a construction that excludes a pr eferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.” Vitronics Corp. , 90 F.3d at 1583. However, a lt hough Starhome correctly points out that Figure 2 does not show a conne ction to a packet

- switch network, we disagree that it constitutes a separate embodiment . T he specification explains that Figur e 2 is a simpli fied drawing of a call flow in accordance with the system of Figure 1. ’487

p atent col. 1 ll. 43

– 44, col. 3 ll. 23

– 29. T he packet

- switch network of Figure 1 is not needed to explain the call flow, and one of ordinary skill in the art would understand that the drawing omits it for that reason. At best, Figure 2 inserts ambiguity as to whether the patentees intended t o depart from the ordinary meaning of “intelligent gat e-STARHOME GMBH v. AT & T MOBILITY LLC 13

way .” But s uch ambiguity does not rise to the level of the clear intent our case law requires. Se e, e.g. , Teleflex, Inc. v. Ficosa N. Am. Corp. , 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“In the absence of an express intent to impart a novel meaning to claim terms, an inventor’s claim terms take on their ordinary meaning. We indulge a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.” (internal citations omitted)). A ccordingly, we find nothing in the specification that ind icates a clear intent to depart from the ordinary meaning of “intelligent gateway .”
Starhome further argues that the doctrine of claim differentiation supports its proposed construction. As Starhome’s argument goes, unasserted claims 1 and 47 require the intelligent gateway to c onnect to an external packet

- switch network

, whereas asserted claims 10 and 40 do not. The district court’s construction, Starhome continues , ignores this distinction and improperly import s the limitation of an external packet

- switch network into every claim. We disagree.

The doctrine of claim di fferentiation is “ based on the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope.” K arlin Tech. Inc. v. Surgical Dynamics, Inc. , 177 F.3d 968, 971

– 72 (Fed . Cir. 1999). The doctrine is not a hard and fast rule, but instead “a rule of thumb that does not trump the clear import of the specification.” Edwards Lifesciences LLC v. Cook Inc. , 582 F.3d 1322, 1332 (Fed. Cir. 2009); see also Netcraft Corp. v. eBay

, Inc., 549 F.3d 1394, 1400 n.1 (Fed. Cir. 2008) (“While claim differentiation may be helpful in some cases, it is just one of many tools used by courts in the analysis of claim terms.”)

. The doctrine does not control the outcome here . The district court’s construction of “intelligent gateway” requires that it transfer info rmation to and from a “network external to the mobile network.” Claims 1 and 47, however, claim a specific typeSTARHOME GMBH v. AT & T MOBILITY LLC 14

of external network; namely, a packet

- switch network

. The claims differ in scope, therefore, and t he di strict court’s construction neithe r imports limitations from one claim to anoth er nor render s any claims redundant.

To bolster their case, Defendants point to the prosec ution history of a related European application . We have previously held that s tatements made before foreign patent offices are sometimes relevant to interpreting the claims. See Gillette Co. v. Energizer Holdings, Inc. , 405 F.3d 1367, 1374 (Fed. Cir. 2005) (relying on party admi ssions before the E uropean Patent Office to construe the claims). But we have also cautioned against indiscrim inate reliance on foreign file histories. See AIA Eng’g Ltd. v. Magotteaux Int’l S/A , 657 F.3d 1264, 1279 (Fed. Cir. 2011) (“[T]he varying legal and procedural requirement s for obtaining patent protection in foreign countries might render consideration of certain types of representations inappropriate for consideration in a claim construction analysis of a United States counterpart.” (internal quot ation marks omitted) ). In this case, Starhome argued in a related foreign application that “a gateway provides access to an external environment beyond the immediate network,” and that “the term ‘intelligent gateway’ is defined in this way, that is in terms of an access means from one network to another.” J.A. 181. Although we view Starhome’s statements with the requisite caution, they do provide yet another indication that the patentees did not intend to depart from the ordinary meaning of “intelligent gateway.”
As noted, the district court accepted Defendants’ pr oposed claim construction and construed “intelligent gat eway” to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network.” Because, as discuss ed above, that construction is not inconsistent with the ordinary meaning of “gateway,” we will not disturb it. We have considered Starhome’s proposed construction ofSTARHOME GMBH v. AT & T MOBILITY LLC 15

“intelligent gateway,” but because it does not reflect the ordinary meaning of “gateway,” we conclude that it is not
correct.
Turning to infringement, the parties stipulated that “the accused systems do not directly transfer information to and from a network external to the mobile network.” J.A. 7. In addition, t he parties agree that the accused system s are not connected to an external packet

- switch network or other external network. Appellant’s Br. 16; Appellee’s Br. 57. Because the term “intelligent gateway” requires connection to an external packet

- switch netwo rk or other external network, there can be no infringement

. See Dynacore Holdings Corp. v. U.S. Philips Corp. , 363 F.3d 1263, 1273 (Fed. Cir. 2004) (“To prove infringement, the patentee must show that the accused device meets each claim limitation, either literally or under the do ctrine of equivalents.”)

. Accordingly, we affirm the district court’s judgment of noninfringement.

C ONCLUSION
As set forth above, we see no error in the district court’s construction of “intelligent gateway.” We therefore affir m the judgment of noninfringement.

AFFIRMED

C OSTS
Each party shall bear its own costs.