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-00460

 Civil Action No. 6:20-cv-00462

 Civil Action No. 6:20-cv-00464

DEFENDANT’S RESPONSIVE MARKMAN BRIEF

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 1 of 24
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TABLE OF CONTENTS

I. THE ’727 CLAIM TERMS ..................................................................................................1

A. The Problem To Be Solved By The ’727 Patent...............................................................1

B. Disputed Terms.................................................................................................................2

1. “determine / determining ...” (Claims 1 and 11).........................................................2

2. “set of resources” (Claims 1, 6, 7, 11, and 16) .............................................................4

II. THE ’519 CLAIM TERMS ..................................................................................................7

A. The Problem To Be Solved By The ’519 Patent...............................................................7

B. Disputed Terms.................................................................................................................8

1. “automatically” / “automatic” (Claims 1 and 12).........................................................8

III. THE ’758 CLAIM TERMS ................................................................................................10

A. The Problem To Be Solved By The ’758 Patent.............................................................10

B. Disputed Terms...............................................................................................................11

1. “a plurality of parameter values ... for communication services ...” (Claims 

1 and 8) ...............................................................................................................................11

2. “a plurality of parameter values ... for the communication service ...” 

(Claims 18 and 19 ...............................................................................................................14

3. “accessing, dynamically, ...” (Claim 1) .....................................................................14

4. “dynamically determining a rule for charging a sponsor of said 

communication service” (Claims 8 and 10)........................................................................17

5. “a first cost ...” (Claim 2)...........................................................................................18

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 2 of 24
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TABLE OF AUTHORITIES

Page(s)

Cases

Nautilus, Inc. v. Biosig Instruments, Inc.,

572 U.S. 898 (2014)..................................................................................................... 8, 10, 19

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc)............................................................................ 4, 9

In re Varma,

816 F.3d 1352 (Fed. Cir. 2016)................................................................................................ 9

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 3 of 24
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Microsoft submits this brief in response to WSOU’s Opening Claim Construction Brief 

(Dkt. 47) addressing terms of U.S. Patent No. 7,106,727 (“the ’727 patent”), which is asserted 

against Microsoft Skype for Business, and U.S. Patent Nos. 7,706,519 (the ’519 patent”) and 

8,625,758 (“the ’758 patent”), which are asserted against Microsoft Skype. 

This brief addresses the eight claim terms or phrases that the parties dispute across these 

three patents. As to each term, WSOU contends only that “plain and ordinary” meaning applies, 

and as to each term WSOU does not say what the plain and ordinary meaning is. Microsoft’s 

proposed constructions are set out as to each term below.1

I. THE ’727 CLAIM TERMS

A. The Problem To Be Solved By The ’727 Patent

The ’727 patent (EX. 1) is directed to communication networks capable of handling calls 

that rely on two different technologies. EX. 1 at 1:8-10. The first type—circuit-switched calls—

sends signals over a connection from a starting point to an ending point that is dedicated to that 

call. Id. at 1:25-33. Circuit-switching was used for traditional voice communications. Id. at 1:21-

22. The second type—packet-switched calls—packages the data into discrete blocks (called

packets) and sends them to the desired destination, where they are reassembled. Id. at 1:35-37.

Packet-switched calls are thus able to share a single network connection because the packets for 

different calls may be interspersed. Id. at 1:55-57. Packet-switching has become more widely 

used with the need for data transmissions. Id. at 1:22-24. The ’727 patent describes that prior art 

networks were “designed either exclusively for circuit switching or exclusively for packet 

switching,” requiring network service providers to build “two separate networks, a circuitswitched network for voice calls and a packet-switched network for data calls.” Id. at 1:58-2:2. 

This approach resulted in increased cost and complexity. Id.

 1 Emphases are added throughout, unless otherwise indicated.

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Against this backdrop, the ’727 patent aims to address how to allocate resources for 

handling both circuit-switched and packet-switched calls in a single communication network. Its 

solution is to measure the plurality of calls on the network and then provide one set of resources 

for the use of circuit-switched calls and another set of resources for the use of packet-switched 

calls. Id. at 2:26-36. Network switches in the communication network are responsible for 

allocating and reallocating the resources between them. Id. at 3:9-11. 

The allocation of resources occurs dynamically to accommodate changing resource needs 

for circuit-switched versus packet-switched calls and may be driven by the demands of either or 

both the circuit-switched and packet-switched calls. Id. at 2:62-3:1; 4:4-6. Traffic may be 

measured periodically or on demand to determine the bits per second of traffic, distribution by 

percentage of traffic or percentage of total bandwidth between circuit- and packet-switched calls, 

or count of current circuit- and packet-switched calls. Id. at 4:31-52.

B. Disputed Terms

1. “determine / determining ...” (Claims 1 and 11)

Claim Language Microsoft’s Proposed Construction

determine/determining a measure of the 

plurality of calls

measuring the number and type of calls on the 

network 

Microsoft’s proposed construction of this term is rooted in the objective of the 

’727 patent, which aims to improve handling circuit-switched and packet-switched on a single 

network, and its proposed solution, i.e., repeatedly measuring the current amount and blend of 

traffic on the network and reallocates network resources based on that measurement. The 

claimed system maintains a pool of resources to be allocated as between the two types of calls 

based on the results of the measurements.

The asserted independent claims include mirrored limitations directed to the described 

measuring operation. Claim 1 recites “determining a measure of the plurality of calls,” while 

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claim 11 recites “determine a measure of the plurality of calls.” Both claims direct the 

“determine/determining the measure” operation to the circuit-switched and packet-switched calls 

received at a local switch. See Id. at Claims 1 and 11. Neither claim further describes this step. 

At the outset, “determine/determining a measure” is not conventional English phrasing. 

However, the specification, which includes at times the same awkward phrasing, explains what is 

intended: the act of “measuring.” Measuring the current traffic/calls on the network is the

fundamental operation of the described invention. “[P]acket-switched call(s) and circuitswitched call(s) are received at the access network 105, for example, by a packet switch 109, a 

circuit switch 113, and/or edge switch 107.” Id. at 4:26-28. Subsequently, “[t]raffic is measured

periodically or on demand, for example, at the edge switch 107. When traffic is to be measured

at step 303, the process continues with step 305, where a measure of calls received at step 301 is 

determined.” Id. at 4:31-34. Indeed, step 303 asks whether to “measure traffic?” Id. at Fig. 3. If 

the answer is “yes,” the patented process advances to step 305 to do so. As labeled, Step 305 ties 

the “determine a measure” language directly to the act of “measuring.” Although awkwardly 

phrased, measuring is a determination of a measure of the calls received. Indeed, the 

specification follows step 305 immediately by describing how the results of the measuring 

operation are used for dynamic allocation of resources: “[a]t step 307, it is determined whether a 

resource allocation threshold is met, i.e., whether a difference in traffic between a previous 

measure of traffic and the current measure of traffic is sufficient to reallocate resources 

between circuit-switched and packet-switched resources.” Id. at 4:53-57. And “[i]f the threshold 

is met, the process continues with step 309, where resources are allocated, or reallocated, based 

on the current measure of traffic, i.e., packet-switched call(s) and circuit-switched call(s).” Id. 

at 4:63-66. Thus, it would be understood that “determining a measure” comprises measuring the 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 6 of 24
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current traffic/calls, and the resulting measurement is then compared to a threshold for allocation 

or reallocation. 

Beyond wrongly suggesting that the claims employ everyday English phrasing, WSOU 

appears to take issue only with clarifying that what is being measured is the “number and type of 

calls.” Dkt. 47 at 3. But WSOU does not contend that measuring would make any sense if the 

number of calls was not measured. And, measuring the “types” of calls is central to the claimed

purpose of reallocating resources as between the call types, circuit-switched and packetswitched. The patent leaves open-ended how the measuring is performed,. See e.g., EX. 1 at 

4:31-52, as does Microsoft’s proposed construction. Contrary to WSOU’s argument, Microsoft’s 

definition neither specifies nor excludes any specific method for measuring. 

2. “set of resources” (Claims 1, 6, 7, 11, and 16)

Claim Language Microsoft’s Proposed Construction

set of resources a part of a pool of physical network resources, each capable 

of handling circuit-switched and packet-switched formats 

The invention described in the ’727 patent seeks to dynamically allocate finite network 

resources among different types of calls, circuit-switched and packet-switched. For that dynamic 

allocation to work, the resources that are to be allocated to either circuit-switched calls or to 

packet-switched calls based on measuring the current traffic logically must be capable of 

handling both circuit-switched and packet-switched calls. This is how “resources” are described 

in the patent specification. And this is how the term “resources” is used in the claims in referring 

to a pool of network infrastructure allocated as needed to handle either circuit-switched or 

packet-switched calls. 

The term “resources” is not a term of art, and in everyday vernacular may refer to a broad 

range of things. But this term was used in the claims to refer to specific items that are central to 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 7 of 24
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the improvement that the claims are said to provide, and its scope must be consistent with those 

claims and the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) 

(en banc) (internal citations and quotations omitted) ("[T]he claims are directed to the invention 

that is described in the specification; they do not have meaning removed from the context from 

which they arose."). The phrase “set of resources” also does nothing to inform the meaning of 

“resources.” WSOU’s suggestion that resources should be given its plain and ordinary meaning, 

without articulating that meaning or where it can be found, leaves the jury to speculate as to the 

meaning of the term. 

In the claims, a “plurality of resources between the local switch and the network switch” 

is available to be allocated for handling circuit-switched calls or for handling packet-switched 

calls. From that pool of “resources,” a “first set” is allocated to at least one circuit-switched call, 

and a “second set” is allocated to at least one packet-switched call. Both the first and second 

“sets” are allocated from the same “plurality of resources.” The claims do not differentiate 

among the resources contained in the “plurality of resources,” but merely recite that they are 

allocated in sets to either circuit-switched or packet-switched calls – again without any 

differentiation among the resources. 

The specification further, specifically, describes the resources that are located, as the 

claim requires, “between the local switch and the network switch.” See EX. 1 at 3:39-45. The

patent expressly states that “both circuit-switched and packet-switched resources are provided 

between each pair of switches, and each physical resource is capable of handling circuitswitched and packet-switched formats” Id. at 3:26-30. These are the resources to be allocated 

between different call types, specifically circuit-switched and packet-switched calls, as the 

claims require. The only way that is possible is if each resource in the pool of physical network 

resources is capable of handling circuit-switched and packet-switched formats, as the specification 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 8 of 24
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expressly states. In that way, pursuant to the described invention, at any given time, part of the pool 

is allocated to circuit-switched calls and part of the pool is allocated to packet-switched calls, and 

that allocation can be changed. Whether any given resource in the claimed “plurality” is allocated to 

circuit-switched calls or to packet-switched calls at any given moment depends on the result of the 

measuring step described above. But each resource must be able to handle both so that it can be 

allocated to either. 

WSOU argues that the inclusion of “capable of handling circuit-switched and packetswitched formats” in Microsoft’s proposed definition improperly imports limitations from the 

specification. WSOU specifically notes that the specification states that “[t]he present invention 

may also be applied to additional types of resources, i.e., to allocate and reallocate resources 

between two or more types of resources.” Id. at 7:65-67. But the claims at issue here 

specifically draw from the same, undifferentiated pool or “plurality of resources” to allocate 

individual resources as sets for either packet-switched or circuit-switched calls. And, when the 

patent describes its own “teachings,” it explains that “[w]hen traffic patterns change, the network 

is able to dynamically reallocate resources between circuit and packet to better serve current 

demands.” Id. at 8:1, 8:4-6. The patented system could not “reallocate resources between circuit 

and packet” if the resources being reallocated, as in claim 1, were not capable of handling both 

circuit-switched calls and packet-switched calls. 

WSOU also wrongly objects to the use of “physical network resources” in Microsoft’s 

proposed construction. Yet Microsoft seeks only to be consistent with the specification that 

specifically describes the resources being allocated as “physical resources,” Id. at 3:26-30. 

Likewise, the prosecution history supports Microsoft’s proposed construction. For example, 

during prosecution, in discussing the meaning of “resources” as used in the claims, the applicant 

stated resources refers to “the infrastructure used to provide services” rather than “specific 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 9 of 24
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types of traffic.” EX. 2 at 2. Infrastructure necessarily constitutes physical resources, as 

Microsoft proposes. Moreover, WSOU never explains what network resources would be 

anything other than physical. 

Microsoft’s construction is consistent with the specific meaning of the term as described 

in the specification, claims, and prosecution history, and should be adopted. 

II. THE ’519 CLAIM TERMS

A. The Problem To Be Solved By The ’519 Patent

The ’519 patent (EX. 3) is directed to the concept of allowing a telephonic station (i.e., a 

telephonic endpoint) to appear as if it is physically resident in a particular location regardless of 

its actual location. EX. 3 at 1:6-9. The patent calls this being “virtually resident.” Id.

Conventional telephonic networks employed circuit-switching, where a dedicated 

connection was allocated to a telephonic station. Id. at 1:50-60. This type of system was highly 

inflexible, and moving the telephonic station to another point in the network would require call 

forwarding, purchase of a toll-free number, or other inconvenient and potentially expensive 

options. See Id. at 2:54-65. But with the advent of packet data networks (i.e., the Internet) and 

packet-switched calls, telephonic stations could be moved easily to other points of the network. 

Id. at 2:52-54. The ’519 patent attempts to make it easier to change the location of a telephonic 

station in a packet data network that co-exists with conventional, legacy networks.

The ’519 patent, then, describes routing a call to a telephonic station using a packet data 

network, where an index is used to determine the address of the virtually resident telephonic 

station on the network. Id. at 2:66-3:9. If the virtually resident endpoint is moved from a first 

telephonic network to another location in the packet data network, the index is updated with the 

new address, so that the endpoint continues to appear as if it is in its original location. Id. at 4:21-

31.

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 10 of 24
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B. Disputed Terms

1. “automatically” / “automatic” (Claims 1 and 12)

Claim Language Microsoft’s Proposed Construction

“automatically” / “automatic” Indefinite 

The Court should determine whether the “automatic” terms in certain ‘519 patent claims 

have an understood meaning and, if so, identify that meaning. Microsoft contends that this term, 

pulled from outside the patent document and inserted without explanation into these claims to 

secure their allowance, renders the scope of those claims indefinite. WSOU merely states that

the term is “widely used and understood,” Dkt. 47 at 5, but offers no clue as to what it believes

the “automatic” terms mean. At bottom, though, the meaning of this term as used in the claims 

will determine whether the claims sufficiently “inform those skilled in the art about the scope of 

the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 

910 (2014). 

The meaning of the “automatic” term is the lynchpin to USPTO’s issuance of the asserted

claims. “Automatically” does not appear in the 519 Patent specification or drawings. It did not 

appear in the claims either, until the final amendment during prosecution. When it was added

throughout the claims in the final amendment, neither the examiner nor the applicant discussed 

its meaning. See EX. 4 at 15. But, following the addition of the “automatic” terms, the examiner 

withdrew the rejections and issued the asserted claims. EX. 7 at 2.

Resolving the parties’ dispute requires understanding the use of the “automatic” terms in

the claims, not in a vacuum. For example, in Claim 1, “automatically” was inserted four times, as

highlighted below. 

1. In a communication network having at least a first calling station connected to a first

telephonic network and a service-user calling station automatically connected to a packetCase 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 11 of 24
9

based network, an improvement of an assembly for facilitating call connection between the 

first calling station and the service-user calling station, the service-user calling station 

having at least a first virtual calling-station identity in the first telephonic network such that 

the service-user calling station appears virtually resident in the first telephonic network, 

said assembly comprising: 

a virtual-location indexer embodied at the packet-based network, said indexer for 

automatically indexing together the at least the first virtual calling-station identity of the 

service-user calling station with a selected packet-based-network identity of the serviceuser calling station, 

the packet-based-network identity automatically associated with logical connection of the 

service-user calling station to the packet data network and the virtual calling-station 

identity associated with a virtual residency location of the service-user calling station in 

the first telephonic network, 

said indexer automatically accessed pursuant to call routing of a call between the first 

calling station and the service-user calling station to permit effectuation of the call 

connection therebetween, wherein the call connection is local to the first telephonic 

network, while permitting the service-user calling station to be physically located at 

another location.

As shown, “automatically” is used as an adverb to modify four different actions recited in 

the claim: “connected,” “indexing,” “associated,” and “accessed.” By law, using the same term 

repeatedly within a claim presumes the same meaning in each instance. See In re Varma, 816 

F.3d 1352, 1363 (Fed. Cir. 2016); see also, Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. 

Cir. 2005). And, because this amendment secured allowance, adding “automatically” means that 

simply performing the steps in any possible manner cannot be sufficient to infringe this claim; all 

of these four steps must be performed “automatically.” Moreover, whatever meaning is attached 

now to “automatically,” that meaning must distinguish the asserted claims from the prior art over 

which the examiner was rejecting the claims at the PTO. None of the relevant cited art, however, 

offers a definition of “automatic,” so its meaning must be found in how corresponding operations 

were performed in that art. 

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One principal prior art reference, the Cho published application, offers insight for this 

analysis. Cho also described a system for completing voice calls on a packet switched network, 

but in Cho users were required to provide information upon logging onto the packet-switched 

network so that the system could authenticate that user and connect calls directed to that user. 

EX. 4 at 12-15 . Presumably, requiring that the analogous operation in the 519 claims occur 

“automatically” would be understood to mean that they occur without the user being involved. 

The ’519 patent, however, never explains how any of these steps are performed “automatically,”

instead only stating in general terms the result that somehow entails. EX. 3 at 7:57-60. 

Going beyond the prior art of record and considering the everyday English lexicon, 

“automatic” may have multiple possible meanings as an adverb as shown by the Webster’s Desk 

Dictionary that WSOU cited as extrinsic evidence for the ‘519 patent.

2

 For example, 

“automatic” could mean without human intervention, involuntary, reflexive, or done 

mechanically or by habit But neither the ‘519 patent specification, the asserted claims, nor the 

prosecution record makes it clear. Nor does WSOU explain which of the four definitions it 

believes applies.

The claims containing the “automatic” / “automatically” clauses are therefore indefinite 

because they do not, when “viewed in light of the specification and prosecution history, inform 

those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. 

v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014).

III. THE ’758 CLAIM TERMS

A. The Problem To Be Solved By The ’758 Patent

 2 Automatic. - adj. 1. capable of operating independently of human intervention. 2. involuntary; 

reflex. 3. done unconsciously or form force of habit; mechanical. 4. (of a firearm) capable of 

continuous operation. – n. 5. an automatic machine or device, esp. a pistol. Webster’s Desk 

Dictionary, 1993, p. 141. 

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The ‘758 patent (EX. 5) describes a system that allows sponsoring a communication 

service within a larger telecommunications network, where the cost, in whole or in part, is 

charged to a sponsor based on a dynamically determined rule. See EX. 5 at 1: 44-62. Prior 

systems of this kind came in various permutations, including those that required a caller to listen 

to an ad before the call would be place through to the intended recipient. See e.g., Id. at 1:14-26

(describing a previously published Alcatel-Lucent India patent application). The ’758 patent 

seeks to expand the options for rules for charging the service sponsor. See e.g., Id. at 1:66-2:6; 

2:13-16; 2:28-33. The asserted claims, for example, require that the rule be based on at least two 

parameters, one of which must be something other than the identity of the originator of the 

request for communication services (e.g., the caller), the intended recipient of the requested 

communication services (e.g., the called party), or the identity of the sponsor. Id. at Claim 1 and 

Claim 18. 

B. Disputed Terms

1. “a plurality of parameter values ... for communication services ...”

(Claims 1 and 8)

Claim Language Microsoft’s Proposed Construction

a plurality of parameter values including at 

least one respective value of at least one 

respective parameter other than an identity of 

an originator of the request for 

communication services, an intended 

recipient of a communication of the 

requested communication services and an 

identity of the sponsor

a plurality of parameter values, one of which 

must be something other than the location/ 

country code of the phone number of an 

originator of the request for communication 

services, the location/ country code of the 

phone number of the intended recipient of a 

communication of the requested 

communication services, or the identity of 

the sponsor

Although the claim language is confusing and WSOU fixates on Microsoft’s obvious 

typo3 in the exchanged construction drafts, the term presents only a minor issue for resolution –

 3 WSOU dwells on an obvious typo in Microsoft’s proposed construction as exchanged, where 

the phrase “of the recipient of an originator” was inadvertently included. Microsoft’s 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 14 of 24
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namely, whether the disputed claim language includes phones numbers. WSOU dodges 

addressing that issue directly, and simply urges that plain and ordinary meaning applies. It does 

not explain what that meaning is, or whether it would include phone numbers. The most that 

WSOU explains is that “there is nothing in Defendant’s proposed construction that indicates any 

confusion as to the plain meaning of the term itself.” Presumably, by that statement, WSOU 

agrees that Microsoft’s construction falls within the disputed language, even if it also contends 

that this language encompasses additional possibilities. Assuming that Microsoft is reading 

WSOU’s statement correctly, Microsoft agrees. Indeed, as the intrinsic evidence unambiguously 

demonstrates, a phone number, in whole or in part, is an identifier for a caller or the called party.

The bulk of WSOU’s arguments misapprehend Microsoft’s proposed construction, which 

does not seek to narrow this claim to restrict the ‘identity’ of an originator of the request and an 

intended recipient of a communication to ‘the location / country code of the phone number of’ 

each respective entity.” Rather, Microsoft’s proposed construction is open-ended language 

relating to the location / country code of the phone number of the originator and intended 

recipient. It clarifies, consistent with the specification, that the identity of the originator or 

intended recipient includes at least that entity’s local, national, or international phone number. 

Thus, the key dispute is whether “an originator” and “an intended recipient of a communication 

of the requested communication services” can be identified within the meaning of this claim 

using the local, national, or international phone number thereof. 

 

construction was intended to read “a plurality of parameter values, one of which must be 

something other than the location/ country code of the phone number of the recipient of an 

originator of the request for communication services, the location/ country code of the phone 

number of the intended recipient of a communication of the requested communication services, 

or the identity of the sponsor.” This mistake was obvious and any actual confusion could have 

been resolved with a phone call in lieu of briefing.

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 15 of 24
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The intrinsic record unequivocally demonstrates that an identity of the originator or the 

intended recipient may be the “local, national, or international phone number” of the caller or 

called party or their device. See Ex. 5 at 3:14-34; see also, Id. at 4:4-25. As has been understood 

by phone users throughout recent memory, whether a phone number is local, national, or 

international is based upon location codes such as area codes or country codes. Microsoft does 

not contend that the location or country code of the originator’s or recipient’s phone number is 

the only criteria that can be an identity of an originator or intended recipient, as WSOU seems to 

imply. Certainly other information also can serve as an identifier of the originator or intended 

recipient.

The prosecution history further confirms that “an identity” of “an originator” or “an 

intended recipient of a communication of the requested communication services” includes the 

local, national, or international phone number thereof. To overcome a rejection, the applicant 

relied upon paragraphs 41-51 of the published application (which became Col. 4, ll. 4-37 of the 

issued patent):

[0041] Said sponsorship database 205 contains at least one sponsorship rule SR that 

defines the terms of sponsorship between a sponsor and said first user for example 

depending on:

[0042] A fourth identifier of an originator of said communication service, e.g. the 

local, national or international phone number of said first user device 101,

[0043] A fifth identifier of a recipient of said communication service, e.g. the local, 

national or international phone number of said second user device 102,

. . . 

EX. 6 at 8-10. The applicant then argued that “[i]n the given example described beginning with 

paragraph 41 above, the output of the rule can be a function of the identity of the 

communication originator, identity of the communication recipient, the type of service, the 

user location, the direction of the communication (e.g., incoming or outgoing) and so on.” Id. at 

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14

10. Thus, the applicant confirmed that an identity of the originator corresponds at least to 

paragraph 42 and the identity of the recipient corresponds at least to paragraph 43 – both of 

which includes that party’s “local, national, or international phone number.”

Hence, the meaning of the terms “an identity of an originator” and “an intended recipient 

of a communication of the requested communication services” in the context of these claims 

must encompass the local, national, or international phone number thereof These terms are not 

limited to the phone number, but they are necessarily anchored by them. To ignore the 

importance of the phone number is to ignore the the context of the claims, the specification, and 

the express statements made in the prosecution history.

2. “a plurality of parameter values ... for the communication service ...”

(Claims 18 and 19

Claim Language Microsoft’s Proposed Construction

a plurality of parameter values including at 

least one respective value of at least one 

respective parameter other than an identity 

of an originator of a request for the 

communication service, an intended 

recipient of a communication of the 

requested communication service and an 

identity of the sponsor

a plurality of parameter values, one of which must 

be something other than the location/ country code 

of the phone number of an originator of the request 

for communication services, the location/ country 

code of the phone number of the intended recipient 

of a communication of the requested 

communication services, or the identity of the 

sponsor 

Microsoft agrees with WSOU that this term presents the same issues as the prior term, 

should be resolved in the same manner, and does not require separate consideration. 

3. “accessing, dynamically, ...” (Claim 1)

Claim Language Microsoft’s Proposed Construction

accessing, dynamically, a rule for charging 

a sponsor of said communication services

selecting in real-time which rule from a set of rules 

is applicable for charging a sponsor of said 

communication service 

The fundamental disputes in relation to this disputed phrase centers on the combined 

words “accessing, dynamically.” Although WSOU urges no construction, it disputes whether 1) 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 17 of 24
15

“accessing” must refer to a rule that already exists and 2) whether “dynamically” means as each 

event occurs. The language of the claim and the corresponding description in the patent, 

however, reveal that Microsoft’s construction is correct, and WSOU’s proposed lack of any 

construction would leave the jury free to construe this phrase contrary to the patent’s teachings. 

In the context of the suggested 758 patent improvement, the term “accessing, 

dynamically, a rule” plainly relates to the disclosed idea that different rules might be used at 

different times in assessing charges for the sponsor. That term, “accessing, dynamically,” does 

not appear precisely within the specification, and is used for the first time in Claim 1. 

“Accessing” on its own commonly refers to everyday activities, such as accessing a web page or 

a book from a library. The specification, however, does use the term “dynamically” in 

describing how rules are swapped in and out. See EX. 5 at Abstract (“wherein a rule, in 

particular applicable for charging a sponsor of said communication service, is determined 

dynamically.”); Id. at 1:44-49 (as part of “[t]he main idea of the invention”); Id. at 5:39-41 

(“Said balance management server 201 determines said rule R dynamically depending on said at 

least one sponsorship rule SR”); Id. at 6:14 (“In step 303 said rule R is determined 

dynamically”). The patent then goes on to describe the referenced “dynamic” operation, in 

which the system searches for and “finds” the applicable rule for charging the sponsor, and by 

which the charging rule can be changed from one charging event to the next. See Id. at 6:14-22. 

Particularly as to this unique phrasing, WSOU’s contention that a plain and ordinary 

meaning without any direction as to what that meaning might be invites juror confusion and 

error. Moreover, each of its objections to Microsoft’s effort to clarify either leaves the jury to 

find its own way with ambiguous phrasing or seeks to avoid resolving the core confusion or 

dispute. For example, although WSOU objects to the use of “in real-time” in Microsoft’s 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 18 of 24
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proposed construction, it does nothing to explain the meaning of “dynamically” within the 

context of the claim. Dkt. 47 at 5. WSOU further seeks to override the specification’s 

description of the rule selection process in arguing that the claims do not require that the rule be

accessed or selected from a set of existing rules and that instead a rule “may be determined,” 

apparently referring to how rules are constructed in the first place. Id. at 6. But WSOU makes 

no attempt to explain how a system could “access” (as the claim expressly requires) or “find” (as 

the specification describes) a rule that did not already exist in order to charge a sponsor for an 

event that is occurring. It would be error to follow WSOU’s proposed path. 

The asserted claims, in fact, track the suggested invention that the specification describes. 

The system that the patent describes provides for “dynamically determining” a rule for charging 

a sponsor based on a sponsorship rule and one or more additional criteria. See EX. 5 at 5:39-50. 

The patent explains that a “sponsorship database 205 contains at least one sponsorship rule SR 

that defines the terms of sponsorship between a sponsor and said first user.” Id. at 4:4-6. And 

“said sponsorship rule SR contains a rule R for determining the amount that is sponsored by said 

sponsor.” Id. at 4:38-39. Microsoft’s proposed construction correspondingly tracks this same 

substance. Indeed, it would make no sense for the patent to describe the patented system 

“accessing” a rule contained in the sponsorship database if that rule did not already exist. 

The specification further describes the process for retrieving and applying a rule for 

changing a sponsor consistent with Microsoft’s proposed construction in two places:

“The method starts as soon as an charging event CE for example from a phone call 

made by said first user operating said first user device 101, is received by said 

billing center 104. ... In step 303 said rule R is determined dynamically. Said rule 

R is determined for example by firstly extracting said first identifier from said 

charging event CE and secondly by searching said at least one sponsorship rule 

SR that maps said first identifier to said rule R. For example by finding said at 

least one sponsorship rule SR in which said fourth identifier is included and 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 19 of 24
17

matches said first identifier. If no sponsorship rule SR is found, said rule R is set 

to be invalid, for example by setting said first values to Zero.”

Id. at 5:62-6:22.

“According to said second embodiment step 303 of said first embodiment is 

modified to determine said rule R depending on said advertisement data record 

ADR. Said rule R is for example determined from said at least one sponsorship 

rule SR contained in said advertisement data record ADR. If no advertisement 

data record ADR is available, said rule R is determined according to the method 

of said first embodiment.”

Id. at 9:12-18. As described, the patented system reacts to a charging event, and extracts an 

applicable rule for charging the sponsor for that event from its database of rules. The patent 

expressly refers to the rule applied through this process as being “determined dynamically.” 

Moreover, the patent further states that if no valid sponsorship rule is found in the database, the 

charging effort fails. Id. at 6:20-22.

Thus, in light of the specification and the plain language of the claim, a person of 

ordinary skill would understand “accessing, dynamically, a rule for charging a sponsor of said 

communication services” to mean a method whereby upon the occurrence of a charging event 

(i.e. in real-time or when it happens), a search is conducted to find the corresponding rule (i.e.

selected) from a database of sponsorship rules or an advertisement data record (i.e. from a set of 

rules) the rule that maps to an identifier from the instant charging event (i.e. applicable for 

charging a sponsor). 

4. “dynamically determining a rule for charging a sponsor of said 

communication service” (Claims 8 and 10)

Claim Language Microsoft’s Proposed Construction

dynamically determining a rule for charging 

a sponsor of said communication service

selecting in real-time which rule from a set of 

rules is applicable for charging a sponsor of said 

communication service 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 20 of 24
18

Microsoft understands that WSOU contends that “accessing, dynamically ...” and 

“dynamically determining” have the same meaning. Microsoft agrees. As described in the prior 

section, Microsoft submits that the disputed claim phrase “accessing, dynamically, ...” and the 

claim phrase “dynamically determining a rule for charging a sponsor ...” are used synonymously 

and should be construed the same; Microsoft accordingly incorporates by reference the 

arguments made in the prior section. 

5. “a first cost ...” (Claim 2)

Claim Language Microsoft’s Proposed Construction

a first cost for the usage of said communication 

service is charged at least partially to said sponsor, 

by determining a second cost, the second cost 

depending on said rule and said first cost

Indefinite

WSOU’s argument that this term should be given its plain and ordinary meaning actually

demonstrates the term lacks a definite meaning. WSOU’s explanation rests upon accepting, 

contrary to the express language of the claim, that the “first cost” is not charged to the sponsor as 

the claim says, but instead the “second cost” is charged to the sponsor. WSOU offers a series of 

postulated formulas, which it suggests represent this claim language, to support its reading. But 

Claim 2 specifically states “[t]he method of claim 1, wherein a first cost for the usage of said 

communication service is charged at least partially to said sponsor.” The claim provides no 

indication of how a first cost is determined, and only provides a general formula for determining

a second cost (i.e. depending on said rule and said first cost). Nowhere in the claim is it 

suggested, as WSOU urges, that the second cost is what is charged to the sponsor. A person of 

ordinary skill reading the claim would be left to wonder how determining a second cost is related 

to the charging of a first cost to said sponsor. This language simply cannot be untangled 

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 21 of 24
19

sufficiently that the metes of bounds of this claim can be understood with any conceivable 

clarity. 

The ‘758 patent specification provides no assistance in unraveling this language. The 

reference to charging a “second cost” to the sponsor rests on some “telecommunications billing 

method well known to the person skilled in the art, but otherwise completely unexplained in the 

patent. 

Said sponsor's cost C2 is for example send to said billing pool 204 for example to 

be billed to said sponsor according to a telecommunications billing method well 

known to the person skilled in the art, e.g. according to 3GPP standard.

Id. at 5:28-31; see also, Id. at 6:50-53. 

The claim is therefore indefinite because this language, when “viewed in light of the 

specification and prosecution history, inform those skilled in the art about the scope of the 

invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 

910 (2014).

Case 6:20-cv-00462-ADA Document 48 Filed 01/29/21 Page 22 of 24
20

DATED: January 29, 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-00462-ADA Document 48 Filed 01/29/21 Page 23 of 24
CERTIFICATE OF SERVICE

I certify that on January 29, 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-00462-ADA Document 48 Filed 01/29/21 Page 24 of 24