IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC, d/b/a

BRAZOS LICENSING AND 

DEVELOPMENT

Plaintiff,

v.

MICROSOFT CORPORATION, 

Defendant.

 Civil Action No. 6:20-cv-00456

 Civil Action No. 6:20-cv-00458

DEFENDANT’S SUR-REPLY MARKMAN BRIEF

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 1 of 33
i

TABLE OF CONTENTS

I. WSOU MISSTATES CLAIM CONSTRUCTION PRINCIPLES................................. 1

II. THE ’868 CLAIM TERMS ............................................................................................ 1

A. Agreed Terms..................................................................................................................1

B. “access gateway” (Claims 1 and 18)...............................................................................1

C. “emergency call router” (Claim 1 and 18)......................................................................4

D. “target gateway” (Claims 1 and 18)................................................................................7

E. “selectably operable” (Claims 1 and 13) and “selectably routing” (Claim

18) .........................................................................................................................................8

F. “the apparatus of claim 1 wherein the communication system further 

comprises a local-network alternate station, wherein said emergency call 

muter is further for determining whether the call of the selected call-type shall 

be completable by way of the normal-operation communication link and for 

rerouting a call request to the local-network alternate station upon 

determination that the call completion by way of the normal-operation 

communication link” (Claim 12) ............................................................................................9

III. THE ’550 CLAIM TERMS .......................................................................................... 11

A. Means Terms.................................................................................................................11

1. means for defining access rules for each of said presence 

contributors, said access rules associated with each of said 

presence contributors defining respective rights and privileges of 

said presence contributors to access said presence information of 

said presentity after said presence contributors have provided 

said presence information to said presence server (Claim 1) ....................................... 16

2. means for authenticating one of said presence contributors to 

determine said access rules associated with said one of said 

presence contributors (Claim 1).................................................................................... 17

3. means for enabling access to said presence information of said 

presentity by said one of said presence contributors based on said 

access rules associated with said one of said presence 

contributors (Claim 1)................................................................................................... 19

4. means for enabling access further includes means for filtering 

said presence information of said presentity based on said access 

rules of said one of said presence contributors to produce filtered 

presence information and means for providing said filtered 

presence information to said one of said presence contributors 

(Claim 1)....................................................................................................................... 20

5. means for enabling access further includes means for enabling 

said one of said presence contributors to update said presence 

information of said presentity based on said access rules of said 

one of said presence contributors (Claim 1) ................................................................. 21

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 2 of 33
ii

6. means for enabling access further includes means for enabling 

said one of said presence contributors to define preference 

information associated with said presence information of said 

presentity based on said access rules of said one of said presence 

contributors (Claim 1)................................................................................................... 22

7. means for authenticating further includes means for assigning 

authentication credentials to each of said presence contributors 

and means for receiving said authentication credentials of said 

one of said presence contributors to authenticate said one of said 

presence contributors (Claim 4).................................................................................... 23

8. means for enabling further includes means for enabling access to 

said presence information of said presentity by multiple ones of 

said presence contributors simultaneously based on said 

respective access rules associated with said multiple ones of said 

presence contributors (Claim 6).................................................................................... 24

B. “presentity” / “presentities” (Claims 1, 8 and 11) and “presence 

contributor” (Claims 1, 8, and 11) ........................................................................................25

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 3 of 33
iii

TABLE OF AUTHORITIES

Page(s)

Cases

Abbott Labs. v. Sandoz, Inc.,

544 F.3d 1341 (Fed. Cir. 2008)............................................................................................. 3

Advanced Ground Info. Sys., Inc. v. Life360, Inc.,

830 F.3d 1341 (Fed. Cir. 2016)........................................................................................... 17

In re Aoyama,

656 F.3d 1293 (Fed. Cir. 2011)..................................................................................... 17, 23

Apex Inc. v. Raritan Comp., Inc.,

325 F.3d 1364 (Fed. Cir. 2003)........................................................................................... 12

Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,

521 F.3d 1328 (Fed. Cir. 2008)........................................................................................... 13

ATD Corp. v. Lydall, Inc.,

159 F.3d 534 (Fed. Cir. 1998)............................................................................................... 5

Augme Techs., Inc. v. Yahoo! Inc.,

755 F.3d 1326 (Fed. Cir. 2014)....................................................................................passim

Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,

616 F.3d 1249 (Fed. Cir. 2010)............................................................................................. 8

Blackboard, Inc. v. Desire2Learn, Inc.,

574 F.3d 1371 (Fed. Cir. 2009)..................................................................................... 15, 21

Engel Indus., Inc. v. Lockformer Co.,

96 F.3d 1398 (Fed. Cir. 1996)............................................................................................... 8

Enzo Biochem, Inc. v. Applera Corp.,

599 F.3d 1325 (Fed. Cir. 2010)........................................................................................... 10

Ergo Licensing, LLC v. CareFusion 303, Inc.,

673 F.3d 1361 (Fed. Cir. 2012)......................................................................... 15, 16, 24, 25

Finisar Corp. v. DirecTV Grp., Inc.,

523 F.3d 1323 (Fed. Cir. 2008)........................................................................................... 17

Function Media, L.L.C. v. Google, Inc.,

708 F.3d 1310 (Fed. Cir. 2013)........................................................................................... 16

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 4 of 33
iv

Intellectual Ventures I LLC v. T-Mobile USA, Inc.,

902 F.3d 1372 (Fed. Cir. 2018)............................................................................................. 5

Media Rights Techs., Inc. v. Capital One Fin. Corp.,

800 F.3d 1366 (Fed. Cir. 2015)........................................................................................... 11

Net MoneyIN, Inc. v. VeriSign, Inc.,

545 F.3d 1359 (Fed. Cir. 2008)........................................................................................... 11

Nevro Corp. v. Boston Scientific Corp.

955 F.3d 35, 43 (Fed. Cir. 2020)......................................................................................... 13

Noah Sys., Inc. v. Intuit Inc.,

675 F.3d 1302 (Fed. Cir. 2012)......................................................................... 17, 19, 21, 22

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)............................................................................................. 1

Sonix Tech. Co. v. Publications Int’l, Ltd.,

844 F.3d 1370 (Fed. Cir. 2017)........................................................................................... 10

Sony Corp. v. Iancu,

924 F.3d 1235 (Fed. Cir. 2019)........................................................................................... 12

TecSec, Inc. v. Int’l Bus. Machs. Corp.,

731 F.3d 1336 (Fed. Cir. 2013)........................................................................................... 12

TriMed, Inc. v. Stryker Corp.,

514 F.3d 1256 (Fed. Cir. 2008)........................................................................................... 12

Triton Tech of Texas, LLC v. Nintendo of Am., Inc.,

753 F.3d 1375 (Fed. Cir. 2014)........................................................................................... 17

Trs. of Columbia Univ. v. Symantec Corp.,

811 F.3d 1359 (Fed. Cir. 2016)..................................................................................... 1, 2, 7

Trusted Knight Corp. v. Int’l Bus. Machs. Corp.,

681 F. App’x 898 (Fed. Cir. 2017) ............................................................................... 10, 11

Typhoon Touch Techs., Inc. v. Dell, Inc.,

659 F.3d 1376 (Fed. Cir. 2011)....................................................................................passim

Uniloc USA, Inc. v. Samsung Elecs. Am., Inc.,

809 F. App’x 863 (Fed. Cir. 2020) ......................................................................... 15, 18, 21

In re Varma,

816 F.3d 1352 (Fed. Cir. 2016)............................................................................................. 8

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 5 of 33
v

Verizon Servs. Corp. v. Vonage Holdings Corp.,

503 F.3d 1295 (Fed. Cir. 2007)........................................................................................... 13

Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015)..................................................................................... 12, 16

WMS Gaming, Inc. v. Int’l Game Tech.,

184 F.3d 1339 (Fed. Cir. 1999)............................................................................... 12, 13, 15

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 6 of 33
1

Microsoft submits this sur-reply in support of its proposed claim constructions addressing 

terms of U.S. Patent No. 7,388,868 (“the ’868 patent”) and 7,676,550 (“the ’550 patent”).1

I. WSOU MISSTATES CLAIM CONSTRUCTION PRINCIPLES

Explicit redefinition or disavowal is not required for claim construction. See Trs. of 

Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). A claim term must be 

understood “not only in the context of the particular claim in which the disputed term appears, 

but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 

F.3d 1303, 1313 (Fed. Cir. 2005). Claims do not stand alone, but are part of a fully integrated 

written instrument. Id. at 1315. Hence, “the specification is always highly relevant” and “is often 

the best guide to the meaning of a disputed term.” Trs. of Columbia Univ., 811 F.3d at 1365.

“Even when guidance is not provided in explicit definitional format, the specification may define 

claim terms by implication such that the meaning may be found in or ascertained by a reading of 

the patent documents.” Id. at 1364 (citing Phillips, 415 F.3d at 1320-21). 

II. THE ’868 CLAIM TERMS

A. Agreed Terms

The parties agree as to the terms “emergency call muter” (claim 12) and “origination 

station”/“originating station” (claims 1, 18). As to “terminating station” (claim 18), although 

unaddressed in WSOU’s reply, it appears the parties agree the term does not need construction.

B. “access gateway” (Claims 1 and 18)

Microsoft’s Proposed Construction

gateway coupled to the packet data network for communication with a softswitch 

In reply, WSOU recognizes that the term “access” as it modifies “gateway” in the claim 

is critical to understanding the meaning of “access gateway.” It cannot seriously dispute that a 

 1 Emphases are added throughout, unless otherwise indicated.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 7 of 33
2

“gateway” is “coupled to the packet data network.” See 2:26-27. Nor does WSOU actually 

dispute that “access” modifies “gateway.” The dispute is whether “access” modifies “gateway” 

in a manner other than the plain and ordinary meaning of “access” standing alone. It does.

“Access” is used in the claim to modify a “gateway” to provide necessary structural and 

functional orientation. In the context of the claimed invention and the problem to be solved, 

“access” differentiates the location and function of the claimed “access gateway” from others

such as the “target gateway.” Microsoft’s proposal provides that meaning. See Resp. Br. at 3-7.

Relying on the claim language alone does not suffice. The remaining claim elements that 

WSOU points to mention the “access gateway” in relation to the emergency call router, target 

gateway, and other gateways, but do not explain what the access gateway is. Access gateways as 

described in the patent are not limited to being coupled to emergency call routers, or having a 

target gateway on the other side of the emergency call router, or being part of a functional 

aggregation point. Rather, they are repeatedly described as being coupled to the packet data 

network. Resp. Br. at 5-6.

2

As to the term “gateway” itself, it is unclear what the issue is. A term that is discussed in 

the background portion of a patent specification explains it as generally understood in the prior 

art and certainly does not become value-less, as WSOU argues. On the contrary, claims are 

understood in light of the entire specification, and it would be error to construe a claim in a 

manner that is inconsistent with or that contradicts the background section of the specification. 

See Trs. of Columbia Univ., 811 F.3d at 1362 (citing Phillips, 415 F.3d 1303, 1313 (Fed. Cir.

2005) (en banc)).3 There is nothing controversial about the statement that “[d]evices referred to 

 2 WSOU posits that unless the term “access” is used in the construction itself, the construction is 

improper. It points to no case law for its assertion, and there is no such rule. Reply Br. at 4.

3 Fisher-Rosemount is inapposite. There, the terms “information clients” and “information 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 8 of 33
3

as gateways are coupled to the packet data network. Devices referred to as gateways form 

gateways to the packet data network.” ’868 at 2:26-29. Indeed, WSOU previously argued that 

“gateways” are a readily understood term of art (Op. Br. at 5), but now distances itself from the 

description in the patent. It does not argue that a “gateway” should be understood to mean 

anything different than what the patent states, or explain why it disagrees with the patent’s 

description. WSOU’s complaints that the “packet data network” is described in the background 

portion and thus cannot inform claim construction fail for the same reasons.

WSOU’s attack on Microsoft’s proposed construction, based on the ’868 patent 

describing what happens when the communication link between an access gateway and the 

packet data network fails, only reinforces Microsoft’s construction. The point of the ’868 patent 

is to compensate for a failure of a communication link between an access gateway and the packet 

data network. However, Microsoft does not object to adding “in normal operation” to its 

construction (though it does not believe it to be necessary). The key concept is that the “access 

gateway” during normal operation connects the local network via a communication link to the 

packet data network. And, as discussed with respect to “target gateway” below, the access 

gateway as used in the claims is separate from the claimed target gateway. 

Finally, there is no principle that a term must be recited as an element in the claim or else 

it cannot be part of the construction of another term, as WSOU contends. The Federal Circuit has 

held the opposite. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008) 

(determining no error in use of a word that does not appear in the claims or specification; “claim 

construction often calls upon words other than those of the patent, lest the claim simply define 

 

servers” lacked clear, deliberate, and precise definition and thus the terms were not limited to 

capabilities disclosed in select specification passages when the remainder consistently described 

the terms more broadly.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 9 of 33
4

itself. ‘Claim construction’ is for the purpose of explaining and defining terms in the claims, and 

usually requires use of words other than the words that are being defined.”)

C. “emergency call router” (Claim 1 and 18)

Microsoft’s Proposed Construction

back-up call router that is operable only when the communication link fails 

WSOU no longer disputes that the claimed emergency call router is intended to be a 

backup in case normal call routing is disrupted due to communication link failure. Instead, it 

attacks the “operable only” portion of Microsoft’s proposed construction. Here, WSOU insists 

that dependent claim 7 precludes Microsoft’s proposed construction because the emergency call 

router is “operable at least responsive to failure of the normal-operation communication link.” 

Reply Br. at 1. The language of claim 7 exposes the fundamental problem. 

Claim 7 does not say the emergency call router is “operable at least responsive to 

failure”; rather, the call priority determiner is. On its face, it simply adds a component to the 

emergency call router. There is nothing logically inconsistent with that added component having 

functions outside of the emergency call router, as long as it is operable when the emergency call 

router is operating. The patent describes no other conditions where this component operates, nor 

does it provide any reason that the call priority determiner operates at times other than 

responsive to failure of the normal communication link. Indeed, claim 7 does not require the call 

priority determiner be operable other than upon failure, as long as it is operable then. 

Regardless, this dependent claim does not require the emergency call router to be operable other 

than when the communication link fails.4 WSOU points to no such disclosure in the intrinsic 

 4 WSOU’s reliance on Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372 (Fed. 

Cir. 2018) is inapposite. There, the question was whether the term “Application-Aware Resource 

Allocator” was required to take into account only information obtained from the application 

layer 7. Many dependent claims required that network layer 3 or transport layer 4 be taken into 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 10 of 33
5

evidence. See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 541 (Fed. Cir. 1998) (claim 

differentiation cannot make independent claim broader than dependent claim where specification 

did not support broader interpretation).

The portions of the specification that WSOU cites in reply either support Microsoft’s 

proposal when read in context, or are wholly irrelevant. First, 7:41-43 states “[t]he emergency 

call router 48 is operable to provide selected, rudimentary local call control functionality to the 

access gateway and the local network associated with the gateway.” Reply Br. at 2. This does not 

contradict Microsoft’s construction, and it is part of a discussion that “[u]pon detection of the 

communication link failure, the detector generates an indication, here represented on the line 46, 

that is provided to an emergency call router.” ’868 at 7:34. WSOU’s citation to 7:44-55 is in the 

same post-link failure context and describes what the emergency call router enables once it 

becomes operable. WSOU’s argument that higher priority calls are an example of calls that can 

be completed once the emergency call router becomes operable does not discuss making the 

priority determiner, much less the emergency call router, operable “not only” responsive to 

failure of the communication link. 

WSOU next points to 7:55-56, but that does not stand for WSOU’s desired proposition 

that “the emergency call router may operate to provide certain call functionality even before 

failure of the communication link.” Id. This passage says no such thing:

Upon detection of the communication link failure, the detector generates an 

 

account, so a construction that required the resource allocator to allocate resources using only 

information obtained from application layer 7 would render meaningless the dependent claims. 

Id. at 1378. Here, that is fundamentally not the case. Dependent claim 7 of the ’868 patent 

describes circumstances in which the call priority determiner may be active in relation to 

network conditions, not the emergency call router described in claim 1. It does not describe 

additional circumstances in which the emergency call router or priority determiner may be 

operable. And, unlike in Intellectual Ventures, the ’868 specification never describes the 

emergency call router as operable other than responsive to failure of the communication link. 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 11 of 33
6

indication, here represented on the line 46, that is provided to an emergency call 

router 48. ... The emergency call router 48 is operable to provide selected, 

rudimentary local call control functionality to the access gateway and the local

network associated with the gateway. By providing the local call handling 

functionality to the local network, calls placed between telephonic stations of the 

local network are at least selectably completable. Selection of which calls are 

completed as well as routing of certain priority calls to designated, local-network 

telephonic stations is dependent, e.g., upon the call-type of the call being placed. 

Higher-priority calls are permitted to be completed prior to lower-priority calls. 

Call-types include, for instance, local calls, long distance calls, e.g., local toll 

calls, intra-state calls, inter-state calls, international calls, toll-free calls, operator 

calls, collect calls, and emergency calls. Upon failure of the communication link, 

many of such calls are no longer able to be completed.

’868 at 7:34-56. This paragraph comes in the context of the emergency call router becoming 

operable “[u]pon detection of the communication link failure” and explains that selecting which 

calls will be completed in this emergency situation depends in part on the type of call being 

placed. While in normal operation many different call types would be completed, such as the call 

types listed at 7:52-55, where the communication link has failed, “many of such calls are no

longer able to be completed.” This, too, is consistent with Microsoft’s proposed construction and 

does not say that the emergency call router provides services during normal communication link 

operation. The alternative stand-alone unit embodiment likewise supports that the emergency call 

router functions only in the case of normal communication link failure. See 9:41-53.

Finally, WSOU cites to 7:57-8:12 to try to argue, again, that the emergency call router is 

not limited to use when the communication link has failed. Reply Br. at 3. Once again, WSOU is 

wrong. This paragraph follows on from the previous paragraph’s discussion of the emergency 

call router becoming operable upon detection of communication link failure and discusses details 

of the prioritization of calls undertaken by the priority detector/priority determiner 56, referred to 

at 7:50-51 (“Higher-priority calls are permitted to be completed prior to lower-priority calls.”). 

WSOU’s argument does not bear scrutiny.

In its responsive brief, Microsoft pointed to the numerous and consistent descriptions in 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 12 of 33
7

the specification making clear that the emergency call router of the ’868 patent claims is a “backup call router that is operable only when the communication link fails.” Where, as here, every 

description of the emergency call router is a router that becomes operable only in response to 

failure of the normal communication link, it is proper to construe the term as Microsoft has 

proposed. See Trs. of Columbia Univ., 811 F.3d at 1364 (citing Phillips, 415 F.3d at 1320-21). 

D. “target gateway” (Claims 1 and 18)

Microsoft’s Proposed Construction

gateway coupled to the emergency call router and separate from the access gateway 

There appears to be no dispute that the “target gateway” is a gateway coupled to the 

emergency call router. And though WSOU’s disagreement with Microsoft’s proposed 

construction focuses on whether the access and target gateways much be “physically” separate, 

the word “physical” does not appear in Microsoft’s construction. The point is that the access and 

target gateways are separate gateways.

WSOU’s allegation that Microsoft has somehow not explained why its proposed 

construction is correct because it has not pointed to unambiguous intrinsic evidence is misplaced. 

Reply Br. at 7. It is no surprise that Microsoft did not cite to any portion of the specification 

discussing the target gateway. The term is never used in the specification. WSOU also overlooks 

the prosecution history. As Microsoft has explained, the only mentions of the target gateway in 

the prosecution history support its proposed construction. Resp. Br. at 11. 

The “counterexamples” that WSOU cites simply discuss access gateways or gateways 

generally. None mentions or describes a target gateway, and none suggests that a target gateway 

and access gateway are not separate or that they should otherwise be combined or equated. Some 

of WSOU’s citations simply describe exemplary access gateways. See, e.g., 5:55-57; 5:51-55. 

Others explicitly describe access gateways, and to the extent other gateways are discussed, there 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 13 of 33
8

is no indication that those “other gateways” are target gateways. See, e.g., 6:3-8. If anything, the 

passage at 6:3-8 supports Microsoft’s construction because the “other” target gateway would be 

separate from the access gateway 16-4. And, just because the access gateway is described as 

sometimes embodying the emergency call router (and not all “other claimed components” as 

WSOU claims), that does not mean that the (unmentioned) target gateway and the access 

gateway are the same gateway. See id. at 7:37-39.

Finally, the claims themselves require the target gateway to be separate from the access 

gateway. Claim 18 requires the emergency call router to be connected between an access 

gateway and a target gateway, and allowing the two gateways to be the same would render the 

claim nonsensical. ’868 at 12:31-33. Similarly, claim 1 recites the separate and distinctly named

“access gateway” and “target gateway,” creating an implication that they are separate and 

distinct. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. 

Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)) (“Where a claim 

lists elements separately, ‘the clear implication of the claim language’ is that those elements are 

‘distinct component[s]’ of the patented invention.”); see also, Engel Indus., Inc. v. Lockformer 

Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996). Further, absent clear intent otherwise, where the 

claims of a patent use the same terminology across multiple claims, the terms should be given 

the same meaning across claims. In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016). There is no 

such clear intent, and no reason that the target gateway in claim 1 would not mean the exact 

same thing as the target gateway in claim 18. 

E. “selectably operable” (Claims 1 and 13) and “selectably routing” (Claim 18)

Microsoft’s Proposed Construction

selectably operable: deciding whether to permit a call to be routed based on call-type or call 

priority 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 14 of 33
9

selectably routing: deciding whether to permit a call to be routed based on call-type or call 

priority

In reply, WSOU states, for the first time, that the term “selectably” as used in “selectably 

operable” and “selectably routing” “simply reflects that the routing operation is not performed 

unless at least ‘the emergency call router determines [that] the call request is for a call of the first 

selected call-type.’” Reply Br. at 8; see id. at 9 (“it simply reflects that the routing operating is 

not performed unless it is at least determined that ‘the call request is for a call of the selected 

call-type.’”). Microsoft agrees. The proper construction of these terms should reflect that a 

determination must be made by the emergency call router that a call request is for a call of a 

selected call-type before the call can be routed.

To be complete, however, the construction also ought to include that call priority is taken 

into consideration in the determination of whether to permit a call to be routed, as that goes to 

the object of the ’868. The specification says so, everywhere it describes the decision of whether 

to route a call. See, e.g., ’868 at 4:31-52; 7:47-51; 7:61-8:12; 8:23-27; 8:46-52; 9:26-33.

F. “the apparatus of claim 1 wherein the communication system further 

comprises a local-network alternate station, wherein said emergency call 

muter is further for determining whether the call of the selected call-type 

shall be completable by way of the normal-operation communication link 

and for rerouting a call request to the local-network alternate station upon 

determination that the call completion by way of the normal-operation 

communication link” (Claim 12)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning; not indefinite.

There is no rule that expert testimony is required to find, as a matter of law, that a claim 

is indefinite, especially if the claim is nonsensical on its face. See Sonix Tech. Co. v. Publications 

Int'l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 

789 F.3d 1335, 1342 (Fed. Cir. 2015) (“Moreover, ‘[a] party cannot transform into a factual 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 15 of 33
10

matter the internal coherence and context assessment of the patent simply by having an expert 

offer an opinion on it. The internal coherence and context assessment of the patent, and whether 

it conveys claim meaning with reasonable certainty, are questions of law.’”); see also Enzo 

Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). 

Here, claim 12 is clearly missing words. The patent was not corrected after issuance. The 

end result is that the claim is indefinite. See Trusted Knight Corp. v. Int'l Bus. Machs. Corp., 681 

F. App'x 898, 904 (Fed. Cir. 2017) (holding that claim limitation missing words was indefinite 

where the claim was subject to reasonable debate regarding which of the more than one possible 

corrections provided the proper scope.). Parsing the claim exposes the problem:

• The apparatus of claim 1 wherein the communication system further comprises a 

local-network alternate station,

• Wherein said emergency call [router] is further 

o For determining whether the call of the selected call-type shall be completable 

by way of the normal-operation communication link

o And for rerouting a call request to the local-network alternate station 

 Upon determination that the call completion by way of the normaloperation communication link ...

The claim simply trails off, and there is no way to know definitively how the claim was intended 

to end. Microsoft, and the jury, should not be made to guess at what that intent was or what the 

scope of the claim is. The claim should be found to be indefinite based on this alone.

WSOU’s speculative rewriting of the claim reinforces the indefiniteness issue. In 

presenting a so-called alternative construction, WSOU rewrites the claim entirely without 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 16 of 33
11

pointing to any support for why that interpretation of the claim is the only reasonable one.

WSOU has tacitly admitted that the claim as drafted is not understandable.

Finally, even assuming for the sake of argument that the claim can or should be rewritten, 

WSOU’s interpretation of the claim differs from Microsoft’s best guess as to what the claim was 

intended to mean. Microsoft’s best guess is that it was meant to say “the apparatus of claim 1 

wherein the communication system further comprises a local-network alternate station, wherein 

said emergency call muter is further for determining whether the call of the selected call-type 

shall be completable by way of the normal-operation communication link and for rerouting a call 

request to the local-network alternate station upon determination that the call completion by way 

of the normal-operation communication link has failed.” This is different from WSOU’s 

proposed rewrite. Reply Br. at 10. Where conflicting but potentially equally valid interpretations

of a claim are possible, it is indefinite. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 

800 F.3d 1366, 1371 (Fed. Cir. 2015) (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 

2120, 2130 (2014)) (“Notably, a claim is indefinite if its language ‘might mean several different 

things and no informed and confident choice is available among the contending definitions.’”); 

see also, Trusted Knight, 681 F. App'x at 904.

III. THE ’550 CLAIM TERMS

A. Means Terms

WSOU’s efforts to overcome the strong presumption that 112(6) applies to the “means 

for” elements fail as a matter of law and on the facts across all the disputed claim elements. Net 

MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366 (Fed. Cir. 2008). Overcoming that 

presumption requires a preponderance of the evidence. Apex Inc. v. Raritan Comp., Inc., 325 

F.3d 1364, 1372 (Fed. Cir. 2003). WSOU first relies on cases with very different claims. Unlike 

in TecSec, Inc. v. Int'l Bus. Machs. Corp., 731 F.3d 1336 (Fed. Cir. 2013) or TriMed, Inc. v. 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 17 of 33
12

Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008), these claims recite a multiple access presence 

agent with ten different means for performing ten different, specific functions. WSOU makes no 

attempt to show that a “multiple access presence agent for use in a presence server” is a device 

known to perform a single function, let alone all the claimed functions; even WSOU’s citations 

to the specification show that it is not. For example, referring to an “agent”—a programmed 

black box—provides no indication of structure. Adding “multiple access presence” does no 

more. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350-51 (Fed. Cir. 2015). 

WSOU’s efforts to avoid the need for a disclosed algorithm as part of the corresponding 

structure also fail. Where, as here, a programmed computer (rather than a circuit or other 

hardware) implements the function, the disclosed structure, which must be linked to the function 

at issue, must include an algorithm describing how the function is accomplished. WMS Gaming, 

Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The phrase “multiple access 

presence agent for use in a presence server” in the preamble provides no algorithm, much less 

one that accomplishes all of the recited functions.

WSOU’s reliance on the preamble (Reply Br. at 12) both to avoid application of 112(6) 

and the need to identify a disclosed and linked algorithm borders on the frivolous. Its cited 

specification support identifying the presence server and agent as “physical” distinguishes 

neither from any other programmed device or computer.5 See Sony Corp. v. Iancu, 924 F.3d 

1235, 1240 (Fed. Cir. 2019) (construing “reproducing means” as computer-implemented despite

hardware also being disclosed, where no circuitry for performing the claimed function was 

disclosed). WSOU supplies no proof that a presence server with a presence agent is known 

 5 “[T]he presence server is a special purpose “physical entity” that, along with the multiple 

access present agent, operates to specifically perform the recited functions.” Id.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 18 of 33
13

hardware for performing any function. The ’550 patent discloses no specialized circuitry, and 

certainly not all that would be required for performing all of the different claimed functions. 

WSOU’s broad reliance on Nevro Corp. v. Boston Scientific Corp. is similarly misplaced. 

There, “means for generating” needed no algorithm because the corresponding, linked structure 

in the specification was “a signal or pulse generator, not a general-purpose computer or 

processor.” 955 F.3d 35, 43 (Fed. Cir. 2020). Further, the specification taught “how to configure 

the signal generators to generate and deliver the claimed signals.” Id. Nevro does not overrule 

WMS Gaming’s holding that the disclosed structure for computer-implemented functions is “the 

special purpose computer programmed to perform the disclosed algorithm.” 184 F.3d at 1349. At 

best, the ’550 patent describes generic servers that are somehow programmed to perform the 

specific claimed functions. See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 

1303 (Fed. Cir. 2007) (endorsing “server” as “a computer system, such as one or more computers 

and/or devices, that provides services to other computer systems over a network.”). At bottom, 

“the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the 

algorithm disclosed in the specification.” WMS Gaming, 184 F.3d at 1348 (“[t]he instructions of 

the software program that carry out the algorithm electrically change the general purpose 

computer by creating electrical paths within the device. These electrical paths create a special 

purpose machine for carrying out the particular algorithm.”); Aristocrat Techs. Austl. Pty Ltd. v. 

Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).

WSOU’s inability to identify specialized devices or circuitry is hardly surprising. The 

specification describes the claimed presence server and presence agent as computers, which must 

be programmed to perform any function, and that each of the recited functions of the “means” 

claim terms is computer-implemented. For example, it describes the presence server:

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 19 of 33
14

The presence server 160 is a physical entity that can operate as either the PA 150 

or as a proxy server for routing requests from watchers 170 to the PA 150. The 

presence server 160 stores the presence information 180 for a plurality of 

presentities 110. Thus, the PA 150, in combination with the presence server 160, is 

operable to receive presence information of the presentity 110 from the PU As 140, 

receive requests 40 from watchers 170 for the presence information and provide the 

presence information to the watcher(s) 170.

’550 at 4:33-41. Each of the Presence Agent’s described functions—aggregating, maintaining, 

storing, receiving, and providing information via a communication network (id. at 4:12-25)— is 

a generic computer activity, but how each is performed depends on how the computer has been 

programmed. The specification further confirms that, like the software-based presence user 

agents (PUAs)6 that WSOU tries to distinguish (Reply Br. at 12), the presence server with 

presence agent is computer-implemented software when it states that “[w]hen acting as a PA 

150, the presence server 160 can also be co-located with a PUA 140.” ’550 at 4:41-43. 

WSOU elevates literal form over substance, contrary to the ’550 patent specification, in 

its universal effort to avoid identifying a disclosed and linked algorithm because, allegedly, 

“neither the claims or Defendant’s own (improper) proposed structure recite a general-purpose 

computer or processor.” Reply Br. at 13-14, 16-24. As discussed above, the presence server and 

multiple access presence agent are described as computers that must be programmed to perform 

the claimed computer-implemented functions, and the claims require each means element to be 

part of them. Thus, disclosure of an algorithm is required.

WSOU’s efforts to point to restatements of the claimed functions as the needed algorithm 

also fail in each instance. The corresponding structure must include an algorithm that is more 

than a restatement of the claimed function. See WMS Gaming, 184 F.3d at 1349; Augme Techs., 

 6 Presence user agents (PUAs) are “applications (e.g., software programs) running on one or 

more physical communication devices, such as a user-operated terminal 120c, a computer 

network server, a telephony server (e.g., a circuit switch, IP router, gateway, etc.), a web server 

or any other networked device (e.g., printer, fax machine, etc.).” 3:41-46.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 20 of 33
15

Inc. v. Yahoo! Inc., 755 F.3d 1326, 1337 (Fed. Cir. 2014). The disclosed and linked algorithm 

must show how (i.e., step-by-step) the claimed function is performed. See Ergo Licensing, LLC 

v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (however an algorithm is 

expressed, it must be a “step-by-step procedure for accomplishing a given result”) (citation 

omitted); see also, Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382-85 (Fed. Cir. 

2009) (a description that merely recites the function without describing how it is achieved, does 

not provide sufficient “structure”). The ’550 patent offers merely a black box said to perform the 

recited function or some equivalently rephrased statement of that function. This is insufficient to 

disclose the algorithm and thus renders indefinite each claim with a means-plus-function term 

discussed below. See Augme Techs, 755 F.3d at 1338 (disclosing inputs to and outputs from 

“code assembler instructions” does not disclose an algorithm for how the claimed assembly 

function is performed); see also Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 809 F. App'x 863, 

865 (Fed. Cir. 2020) (restating the claimed function or “describing the results of an unspecified 

algorithm in this manner, however, is not sufficient to satisfy the requirements of § 112 ¶ 6.”). 

Further, WSOU misreads its own cited cases and ignores relevant Federal Circuit law in 

arguing, based on Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011), that 

the terms should not be found indefinite because a person of skill in the field could create an 

operative software program for the specified function. Reply Br. at 14-18, 20-22, 24. PostTyphoon Touch, the Federal Circuit reaffirmed the long-standing principle that “[a] patentee 

cannot avoid providing specificity as to structure simply because someone of ordinary skill in the 

art would be able to devise a means to perform the claimed function. To allow that form of 

claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of 

achieving a function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 21 of 33
16

2013); see also, Williamson v. Citrix Online, 792 F.3d 1339, 1351 (Fed. Cir. 2015) (en banc) 

(“the fact that one of skill in the art could program a computer to perform the recited functions 

cannot create structure where none otherwise is disclosed”). 

Indeed, in Typhoon Touch, the Federal Circuit addressed sufficient disclosure of an 

algorithm for a “means for cross-referencing.” Typhoon Touch, 659 F.3d at 1383-86. The court 

found sufficient disclosure of the requisite algorithm for the cross-referencing function in the 

prose description as to how the function was to be implemented. Id. at 1386 (noting that “[t]he 

patent recites that ‘[c]ross-referencing entails the matching of entered responses with a library of 

possible responses, and, if a match is encountered, displaying the fact of the match, otherwise 

alerting the user, or displaying information stored in memory fields associated with that library 

entry.’ It is not disputed that the steps are carried out by known computer-implement operations, 

and are readily implemented by persons of skill in computer programming....”) (citations 

omitted). WSOU identifies no such step-by-step prose recital, or anything equivalent, in the ’550 

patent. Indeed, none exists. By failing to disclose the corresponding algorithm for the computerimplemented means-plus-function terms, each of the means terms renders the associated claim 

indefinite. Ergo Licensing, 673 F.3d at 1363.

Rather than repeating the global issues addressed above, which apply equally to each 

disputed term, the following sections address only issues unique to specific claim elements.

1. means for defining access rules for each of said presence contributors, said 

access rules associated with each of said presence contributors defining 

respective rights and privileges of said presence contributors to access said 

presence information of said presentity after said presence contributors 

have provided said presence information to said presence server (Claim 1)

WSOU’s efforts to identify an algorithm by restating the recited function of “defining 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 22 of 33
17

access rules for each of said presence contributors”7 fails initially as a matter of law. Replacing 

the claim phrase “access rules for each of said presence contributors” with a description of what 

an access rule is only demonstrates the absence of any steps for performing the claimed function. 

See Augme Techs, 755 F.3d at 1337; see also, Triton Tech of Texas, LLC v. Nintendo of Am., 

Inc., 753 F.3d 1375, 1379 (Fed. Cir. 2014); Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1317 

(Fed. Cir. 2012); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). 

Moreover, WSOU’s specification string cites all fail to disclose any algorithm, as each of 

those cites describe only what an access rule may be, without any sort of step-by-step process for 

“defining access rules for each of said presence contributors.” See, e.g., 1:60-64; 5:62-6:1; 6:65-

7:3; 7:38-41; 7:65-8:5; 8:36-39; see Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d

1341, 1349 (Fed. Cir. 2016) (disclosure of information about a “symbol” did not disclose “an 

algorithm or description as to how those symbols are actually generated.”) (internal quotations 

omitted). Figures 3 and 4 similarly provide no details regarding how access rules are “defined” 

beyond the bare statements “establish access rules for presence contributor.” See In re Aoyama, 

656 F.3d 1293, 1298 (Fed. Cir. 2011) (rejecting reliance on a flow chart when the figure “fails to 

describe, even at a high level, how a computer could be programmed to produce the structure 

that provides the results described in the boxes.”). Unlike the disclosure in Typhoon Touch, as 

discussed above, the specification of the ’550 patent does not provide any disclosure describing 

how to perform the function of “defining access rules for each of said presence contributors.”

2. means for authenticating one of said presence contributors to determine 

said access rules associated with said one of said presence contributors 

(Claim 1)

 7 Microsoft disagrees with the completeness of the structure and function proposed by WSOU 

because it fails to include presentity 110 or identify the required software algorithm. See Resp. 

Br. at 20. The claim is indefinite because the ’550 patent fails to disclose the necessary algorithm 

for performing the recited function under either party’s rendition of the function.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 23 of 33
18

WSOU’s attempt to identify and articulate an algorithm for this element as a restatement 

of the claimed function fails for the same reasons described above. Further, WSOU’s identified 

support for its stated algorithm provides no more than the legally insufficient description of the 

inputs or the results of the claimed function. See Augme Techs, 755 F.3d at 1338 (disclosing 

inputs to and outputs from “code assembler instructions” does not disclose an algorithm for how 

the claimed assembly function is performed); see also, Uniloc USA, 809 F. App'x at 865

(restating the claimed function or “describing the results of an unspecified algorithm in this 

manner, however, is not sufficient to satisfy the requirements of § 112 ¶ 6.”). WSOU’s

specification string cites just describe authentication credentials as a “user name and password” 

and the resulting impacts of success or failure to authenticate, as “[u]pon valid authentication, 

users have full access rights to the presence information of the presentity.” Reply Br. at 15; 1:33-

34. These are only generic statements that the presence agent uses authentication credentials to 

authenticate the presence contributor. See, e.g., 1:32-34, 2:21-26, 6:44-53, 7:4-12, 7:42-47, 8:5-

22, Fig. 5. WSOU points to nothing that explains how to carry out “authenticating one of said 

presence contributors to determine said access rules associated with said one of said presence 

contributors” as required by the function. 

Unlike in Typhoon Touch, the specification provides no disclosure of the steps required to 

perform the recited function. At most, as shown by WSOU’s citations, the specification describes 

authentication credentials and the results of success or failure to authenticate. These important 

details are absent from the specification, which uses phrases like “[u]pon valid authentication” 

(1:33), “[t]he access rules 210 further include authentication credentials associated with each 

presence contributor 120 that are used by the multiple access presence agents 150a and 150b to 

authenticate the presence contributors 120” (6:44-47), “[f]rom the authentication credentials, at 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 24 of 33
19

350, the presence agent 150 authenticates” (7:9-10), and “the multiple access presence agent uses 

the received authentication credentials to authenticate the presence contributor” (8:10-12). None 

of this rises to the level of detail provided in Typhoon Touch. 

3. means for enabling access to said presence information of said presentity 

by said one of said presence contributors based on said access rules 

associated with said one of said presence contributors (Claim 1)

WSOU’s effort to identify any disclosed algorithm and link it to the claimed function of 

this element again amounts to nothing more than providing a legally insufficient restatement of 

the claimed function.8 The ensuing specification citations merely describe what an access rule 

may be, and that presence contributors are authenticated before the presence contributor may 

access the presence information of the presentity. Reply Br. at 16. This discloses nothing about 

how the system is programmed to enable access to presence information of a presentity by one of 

the presence contributors based on the access rules and thus does not provide the step-by-step 

disclosure required for an algorithm. See Noah Sys., 675 F.3d at 1314 (holding that disclosures 

relating to how passcodes are issued to authorized agents, how the system prevents entries to the 

master ledger from being processed unless the passcode is verified, and that a valid passcode is 

required before the agent's order to enter, delete, review, adjust, or process the data inputs in the 

master ledger will be recognized by the system, did not provide sufficient disclosure of the 

algorithm for an “access means.”). 

Critically, the claimed function in this element is central to the concept of the patent. The 

’550 patent urged that because the prior art lacked the ability to enable others to access only 

certain portions of the presence information, “what is needed is a multiple access presence agent 

 8 Microsoft disagrees with the completeness of the structure proposed by WSOU because it fails 

to include presence user agent 140, communications network 130 and the necessary 

programming. See Resp. Br. at 23. Regardless, the claim is indefinite because the patent fails to 

disclose an algorithm that must be part of the structure for performing the recited function.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 25 of 33
20

capable of providing different access privileges to different users.” 1:32-51. When determining if 

an algorithm has been sufficiently disclosed, “the amount of detail that must be included in the 

specification depends on the subject matter that is described and its role in the invention as a 

whole, in view of the existing knowledge in the field of the invention.” Typhoon Touch, 659 F.3d 

1376 at 1385. Thus, the function of “enabling access ...” requires a significant corresponding

disclosure of the algorithm. WSOU’s cited portions provide at most generic statements as to the 

result to be achieved. See, e.g., 1:63-2:2, 7:9-30, 7:61-8:7, 8:8-22, Figs. 3, 5. None of these cited 

disclosures rises even to the level of detail provided in Typhoon Touch. 659 F.3d at 1386. 

4. means for enabling access further includes means for filtering said 

presence information of said presentity based on said access rules of said 

one of said presence contributors to produce filtered presence information 

and means for providing said filtered presence information to said one of 

said presence contributors (Claim 1)

In addition to the global errors in its arguments described above, WSOU’s efforts to 

identify any relevant disclosure as to how the claimed functions for this element are 

accomplished are not supported by its subsequent citations to the specification.9 The cited 

portions of the specification for both functions, and WSOU’s argument that “[a]s the 

specification teaches in an exemplary embodiment, the access rules may include filters that 

operate to only allow a portion of the presence information to be provided to a presence 

contributor, such as in the case where access rule A may allow an assistant to have access/view 

to professional contacts of a manager but not the personal contacts on the manager’s buddy list”

(Reply Br. at 17), disclose nothing about how the system is programmed to accomplish either 

function. At best, the disclosure pointed to by WSOU “describes an outcome, not a means for 

 9 Microsoft disagrees with the completeness of the structure proposed by WSOU because it fails 

to include presence user agent 140, communications network 130 or 135 and the necessary 

programming. See Resp. Br. at 27. Regardless, the claim is indefinite as the ’550 patent fails to 

disclose algorithms that must be part of the structure for performing the two recited functions.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 26 of 33
21

achieving that outcome.” See Blackboard, 574 F.3d at 1384 (citing Aristocrat, 521 F.3d at 1334) 

(holding that description of an outcome is not a sufficient disclosure of an algorithm); Augme 

Techs, 755 F.3d at 1338; see also, Uniloc USA, 809 F. App'x at 865.

5. means for enabling access further includes means for enabling said one of 

said presence contributors to update said presence information of said 

presentity based on said access rules of said one of said presence 

contributors (Claim 1)

In addition to the global errors described above, WSOU’s efforts to identify any relevant 

disclosure as to how the claimed functions for this element are accomplished are not supported 

by its own citations.10 At best, it describes what an access rule may be and argues that those rules 

can be used by the presence agent as required in this claim element. Reply Br. at 19. This offers 

only a legally insufficient restatement of the claimed function as the required algorithm. But 

even WSOU’s argument discloses nothing about how the system is programmed to enable one of 

presence contributors to update presence information of a presentity based on the access rules, as 

required by the claim term. The portions of the specification that WSOU cites do no more than 

identify the black box in which the function of updating presence information is performed. 

“This type of purely functional language, which simply restates the function associated with the 

means-plus-function limitation, is insufficient to provide the required corresponding structure.” 

See Noah Sys., 675 F.3d at 1314-17. 

Indeed, those portions reveal that the specification merely discloses the general idea that 

access rules may “define the scope and/or ability of the presence contributor 120 to set/change 

the presence information 180 of the presentity.” 6:12-14; see also, 5:48-6:1; 7:65-8:4. The 

 10 Microsoft disagrees with the completeness of the structure proposed by WSOU, which fails to 

include presence contributors 120, access rules 210, presence user agent 140, communications 

network 130 and the necessary programming. See Resp. Br. at 29-30. Regardless, the claim is 

indefinite because the patent fails to disclose an algorithm that must be part of the structure for 

performing the recited function.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 27 of 33
22

specification does not describe how this is done. See 7:54-60; see also, 7:13-30. But generic 

restatements of the claimed function are not sufficient to disclose an algorithm. See Augme 

Techs, 755 F.3d at 1337. None of the disclosures cited by WSOU provides any details regarding 

the steps performed to “enable said presence contributors to update said presence information.” 

6. means for enabling access further includes means for enabling said one of 

said presence contributors to define preference information associated 

with said presence information of said presentity based on said access 

rules of said one of said presence contributors (Claim 1)

In addition to the global errors in its arguments described above, the generic statements 

WSOU cites as identifying a linked algorithm for this claim element simply describe the claimed 

function, disclosing nothing about how the system is programmed to enable one of the presence 

contributors to define preference information of a presentity based on the access rules. 11 As 

before, at best this identifies the black box in which the claimed function is performed. WSOU’s 

proposed algorithm, “which simply restates the function associated with the means-plus-function 

limitation, is insufficient to provide the required corresponding structure.” See Noah Sys., 675 

F.3d at 1314-17. 

Furthermore, WSOU’s cites confirm that the specification only discloses the general idea 

that access rules may “restrict access” (5:48-52) or “define the scope and/or ability of the 

presence contributor 120 to set/change preference information for the presentity” (6:23-25), and 

that the “multiple access presence agent grants the presence contributor the rights and privileges 

associated with the access rules for that presence contributor” (8:20-22). The specification 

provides no description of how this is done. Generic restatements of the claimed function are not 

 11 Microsoft disagrees with the completeness of the structure proposed by WSOU in its opening 

brief because it fails to include access rules 210, presence user agent 140, communications 

network 130 and the necessary programming. See Resp. Br. at 31-33. Regardless of the necessity 

for additional components, the claim is indefinite because the ’550 patent fails to disclose an 

algorithm that must be part of the structure for performing the recited function.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 28 of 33
23

sufficient. See Augme Techs, 755 F.3d at 1337. None of the disclosures cited by WSOU provides 

any details regarding the steps performed to “enabl[e] said one of said presence contributors to 

define preference information associated with said presence information of said presentity based 

on said access rules of said one of said presence contributors.” 

7. means for authenticating further includes means for assigning 

authentication credentials to each of said presence contributors and means 

for receiving said authentication credentials of said one of said presence 

contributors to authenticate said one of said presence contributors (Claim 

4)

In addition to the global errors in its arguments described above,12 further fails to identify 

any algorithm specific to the functions recited in this claim element. At best, WSOU cites to 

portions of the specification that describe what may constitute authentication credentials, such as 

a “user name and password,” when authentication credentials are used (see 7:42-47; 6:44-57; 

7:4-12), and the resulting impacts of success or failure to authenticate. 8:5-22. These cites say 

nothing about the “assigning” function. As to the operation of the required function, WSOU cites 

only to a near-verbatim recitation of the claimed function. See 2:21-23 (“the multiple access 

presence agent assigns authentication credentials to each of the presence contributors”). But 

generic restatements of the claimed function are not sufficient to disclose an algorithm. See

Augme Techs, 755 F.3d at 1337. Finally, the flow chart cited by WSOU at best provides a box 

520 which merely restates the claimed function, and at worst, fails to even identify the function 

of “assigning authentication credentials to each of said presence contributors.” See In re Aoyama, 

656 F.3d 1293, 1298 (Fed. Cir. 2011) (rejection reliance on a flow chart, when the figure “fails to 

describe, even at a high level, how a computer could be programmed to produce the structure 

 12 Microsoft disagrees with the completeness of the structures proposed by WSOU because it 

fails to include presence contributors 120, presence user agent 140, and communications network 

130 or 135. See Response Br. at 36-37. Regardless, the claim is indefinite because the patent fails 

to disclose algorithms that must be part of the structures for performing the recited functions.

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 29 of 33
24

that provides the results described in the boxes”). None of the cited disclosures provides any 

details regarding the steps performed to accomplish the required function. 

As to the second stated function, WSOU seeks to invoke the so-called Katz exception 

based on use of the term “receiving,” seeking to obviate any need for an algorithm. Reply Br. at 

23. As Microsoft has explained, the Katz exception is inapplicable here. Resp. Br. at 37-38. “It is 

only in the rare circumstances where any general-purpose computer without any special 

programming can perform the function that an algorithm need not be disclosed.” Ergo Licensing, 

673 F.3d at 1365. The exception only applies where the function requires no more than 

“processing,” “receiving,” or “storing” such that any general-purpose computer may perform the 

function without any special programming. Id. Where, as here, the function requires more than 

merely receiving, the Katz exception does not apply. Id. WSOU makes no other effort to identify 

the required algorithm for this second function. The claim is indefinite.

8. means for enabling further includes means for enabling access to said 

presence information of said presentity by multiple ones of said presence 

contributors simultaneously based on said respective access rules 

associated with said multiple ones of said presence contributors (Claim 6)

In addition to the global errors in its arguments,

13 WSOU identifies no more than 

portions of the specification disclosing the general idea of this claimed function. For example, it 

observes that access rules may “restrict access” (5:48-52) or “define the scope and/or ability of 

the presence contributor 120 to set/change preference information for the presentity” (6:23-25), 

and that the “multiple access presence agent grants the presence contributor the rights and 

privileges associated with the access rules for that presence contributor” (8:20-22). But restating 

 13 Microsoft disagrees with the completeness of the structure proposed by WSOU because it fails 

to include presence user agents 140, and communications network 130. See Resp. Br. at 39. 

Regardless, the claim is indefinite because the patent fails to disclose an algorithm that must be 

part of the structure for performing the recited function. 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 30 of 33
25

the claimed function discloses nothing about how the system is programmed to enable multiple 

presence contributors to simultaneously access the presence information and does not provide the 

required algorithm. See Augme Techs, 755 F.3d at 1337; see also, Ergo Licensing, 673 F.3d at 

1365 (holding that however an algorithm is expressed, it must be a “step-by-step procedure for 

accomplishing a given result” (citation omitted)). 

B. “presentity” / “presentities” (Claims 1, 8 and 11) and “presence contributor” 

(Claims 1, 8, and 11)

Microsoft’s Proposed Constructions

Presentity: the entity whose presence is being represented 

Presence contributor: an entity that provides presence information about a presentity to a 

presence server or presence agent 

Microsoft explained the distinct roles that the ’550 ascribes to “presentities” and 

“presence contributors,” after WSOU originally argued that both have the same role. Resp. Br. at 

40-42; see Op. Br. at 33-34. The patent specification is clear, and it supports Microsoft’s 

proposed constructions. However, WSOU seeks to create ambiguity while doing nothing to 

explain what it, or a person of ordinary skill in the art, understands these terms to mean.

“Presentity” and “presence contributor” are key terms in the asserted claims and the 

patent but are coined terms that are not commonly understood. Just because there are 

circumstances in which a presentity might also be able to provide presence information does not 

make the terms synonymous. Microsoft’s proposed constructions do not require a presentity and 

a presence contributor to always be separate entities, but they do recognize that the two terms, 

which are critical to understanding the solution of the ’550 patent, have separate roles. 

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 31 of 33
26

DATED: February 24, 2021 By: /s/ Irene Yang

Barry K. Shelton 

Texas State Bar No. 24055029

SHELTON COBURN LLP

311 RR 620 S, Suite 205

Austin, TX 78734

Telephone: (512) 263-2165

Fax: (512) 263-2166

bshelton@sheltoncoburn.com

Of Counsel

Michael J. Bettinger

Irene Yang

SIDLEY AUSTIN LLP

555 California St., Suite 2000

San Francisco, CA 94104

Telephone: (415) 772-1200

Fax: (415) 772-7400

mbettinger@sidley.com 

irene.yang@sidley.com 

Richard A. Cederoth

John W. McBride

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Telephone: (312) 853-7000

Fax: (312) 853-7036

rcederoth@sidley.com 

jwmcbride@sidley.com 

Attorneys for Defendant Microsoft Corporation

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 32 of 33
CERTIFICATE OF SERVICE

I certify that on February 24, 2021, I electronically filed the foregoing with the Clerk of 

Court using the CM/ECF system, which will send notification of such filing to all counsel of 

record as identified below.

/s/ Irene Yang

Irene Yang

Case 6:20-cv-00456-ADA Document 51 Filed 02/24/21 Page 33 of 33