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 RESPONSIVE MARKMAN BRIEF

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 1 of 49
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TABLE OF CONTENTS

I. THE ’868 CLAIM TERMS ............................................................................................ 1

A. The Problem To Be Solved By The ’868 Patent............................................................. 1

B. Agreed Terms.................................................................................................................. 2

1. “emergency call muter” (Claim 12)................................................................................ 2

2. “[origination / originating] station” (Claims 1 and 18)................................................... 3

3. “terminating station” (Claim 18) .................................................................................... 3

C. Disputed Terms............................................................................................................... 3

1. “access gateway” (Claims 1 and 18)............................................................................... 3

2. “emergency call router” (Claim 1 and 18)...................................................................... 7

3. “target gateway” (Claims 1 and 18).............................................................................. 10

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

(Claim 18)..................................................................................................................... 11

5. “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) .................................................................................. 14

II. THE ’550 CLAIM TERMS .......................................................................................... 15

A. The Problem To Be Solved By The ’550 Patent........................................................... 15

B. The Means Terms Are Subject to § 112, ¶ 6................................................................. 16

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 

sad presentity after said presence contributors have provided said 

presence information to said presence server (Claim 1)............................................... 19

2. means for authenticating one of said presence contributors to 

determine said access rules associated with said one of said 

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

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)................................................................................................... 23

4. means for enabling access further includes means for filtering 

said presence information of said presentity based on said access 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 2 of 49
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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)....................................................................................................................... 25

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) ................................................................. 29

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)................................................................................................... 31

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).................................................................................... 34

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).................................................................................... 38

C. Other Disputed Terms................................................................................................... 40

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

contributor” (Claims 1, 8, and 11) ................................................................................ 40

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 3 of 49
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TABLE OF AUTHORITIES

Page(s)

Cases

Akzo Nobel Coatings, Inc. v. Dow Chemical Co.,

811 F. 3d 1334 (Fed. Cir. 2016).................................................................. 12

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

521 F.3d 1328 (Fed. Cir. 2008)................................................................... 18

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

755 F.3d 1326 (Fed. Cir. 2014)................................................................... 18

B. Braun Med., Inc. v. Abbott Labs.,

124 F.3d 1419 (Fed. Cir. 1997)................................................................... 17

Blackboard, Inc v. Desire2Learn, Inc.,

574 F.3d 1371 (Fed. Cir. 2009)................................................. 22, 27, 28, 30

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

673 F.3d 1361 (Fed. Cir. 2012)................................................. 21, 23, 25, 27

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

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

Interval Licensing LLC v. AOL, Inc.,

766 F.3d 1364 (Fed. Cir. 2014)................................................................... 15

In re Katz Interactive Call Processing Patent Litig.,

639 F.3d 1303 (Fed. Cir. 2011)....................................................... 35, 37, 38

Markman v. Westview Instruments, Inc.,

517 U.S. 370 (1996).................................................................................... 42

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

134 S. Ct. 2120, 2129 (2014)................................................................ 14, 15

Personalized Media v. ITC,

161 F.3d 696 (Fed. Cir. 1998)..................................................................... 16

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005) (en banc)............................................... 9, 42

Teva Pharm. USA, Inc. v. Sandoz, Inc.,

574 U.S. 318 (2015)...................................................................................... 3

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 4 of 49
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Triton Tech of Texas, LLC v. Nintendo of America, Inc.,

753 F.3d 1375 (Fed. Cir. 2014)................................................................... 18

Williamson v. Citrix Online,

792 F.3d 1339 (Fed. Cir. 2015)....................................................... 16, 17, 18

WMS Gaming, Inc. v. Int’l Game Tech.,

184 F.3d 1339 (Fed. Cir. 1999)................................................................... 17

Statutes

35 U.S.C. § 112 ¶ 6....................................................................................passim

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 5 of 49
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Microsoft submits this brief in response to WSOU’s Opening Claim Construction Brief

(Dkt. 46), addressing terms of U.S. Patent No. 7,388,868 (“the ’868 patent”) and 7,676,550 (“the 

’550 patent”), which are asserted against Microsoft Skype for Business.

1

I. THE ’868 CLAIM TERMS

A. The Problem To Be Solved By The ’868 Patent

The ’868 Patent (EX. 1) seeks to solve the problem of how to handle call routing in a 

communications network when that the normal communication link fails. EX. 1 at 3:13-20. The 

’868 Patent describes a communications system that includes an access gateway connected via a 

communication link to a central controller, also known as a “soft switch,” in a packet data 

network. See id. at Abstract; see also, Id. at 5:51-55 and Fig. 1. That softswitch controls the 

system as a whole. Id. at 2:41-47; see also, id. at 6:44-48. During normal operation, the 

softswitch handles routing of calls to their targets via the communication link. Id. at 6:52-54. 

Sometimes, however, that communication link fails. Id. at 2:57-3:4. That emergency situation

requires a back-up mechanism for calls to continue to be routed. Id. at Abstract; see also, Id. at 

3:41-44

The ’868 patent’s solution employs an emergency call router that becomes operable, 

replacing the softswitch to provide call routing for the devices at the affected site. See Id. at 

Abstract; 1:14-19; 3:41-44; 7:10-17; 9:15-20. Figure 1 of the patent illustrates such a system:

 1 Emphases are added throughout, unless otherwise indicated.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 6 of 49
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In this annotated figure, the softswitch is highlighted in pink, the packet data network is 

highlighted in green, and various access gateways are highlighted in purple. The communication 

link failure is shown highlighted in blue, and the emergency call router is highlighted in yellow.

However, limitations in this system force the emergency call router to prioritize and 

select which calls should be completed. It prioritizes based on call type and priority information, 

then routes the calls accordingly. Id. at 7:41-56; see also, id. at 8:23-62. For example, the ’868 

patent teaches that calls to emergency services (such as a 9-1-1) call may be considered to be of 

the highest priority, meriting preemption of other calls. Id. at 8:29-31.

B. Agreed Terms

1. “emergency call muter” (Claim 12)

The parties agree that the term should be construed as “emergency call router” to correct 

an error made by the Patent Office. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 7 of 49
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2. “[origination / originating] station” (Claims 1 and 18)

The parties agree that these terms do not require construction and should be understood to 

have their plain and ordinary meaning. 

3. “terminating station” (Claim 18)

Microsoft does not believe that this term, which WSOU proposed to construe, requires 

construction. WSOU has not included this term in its opening claim construction brief. Thus, the 

parties appear to agree that this term does not require construction.

C. Disputed Terms

1. “access gateway” (Claims 1 and 18)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

gateway coupled to the packet data network for 

communication with a softswitch 

Plain and ordinary meaning 

The communication system of the ‘868 patent invokes various gateways as part of its 

fundamental infrastructure. The “access gateway” is one. Though WSOU argues that the term 

requires no construction and should be given its plain and ordinary meaning, that simply begs the 

question of what that plain and ordinary meaning is. It is not sufficient to claim, as WSOU does, 

that “gateway” is a term of art and that “access” is a qualifier that is readily understood in light 

of the surrounding claim language and the corresponding written description.

2 See Teva Pharm. 

USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 332 (2015). The jury will be left to guess what an 

“access gateway” (as opposed to some other gateway) is. More than a generic qualifier, “access” 

here defines a particular gateway that defines the network device on which the claimed invention 

can preserve call routing— the local network left isolated by the communication link failure.

 2 WSOU cannot fairly dispute that the specification defines “gateways” as “[d]evices [that] form 

gateways to the packet data network.” Id. at 2:26-29.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 8 of 49
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By contrast, Microsoft’s proposed construction explains exactly what an “access 

gateway” is and how it fits into the claimed communication system, as the specification 

describes. Microsoft’s construction comports with the purpose of the invention, which is to 

enable local calls to continue to be made within a part of a local network defined by that access 

gateway (as shown above) when link failure isolates the access gateway from the softswitch (i.e., 

the communication system controller), which is the device that normally provides call control for 

the communication network. 

The term “access gateway” first appears in claim 1 as “the access gateway.” The 

emergency call router is connected to it. The claim provides no explanation as to what the access 

gateway is or its function. Dependent claims 2, 3, 4, 6, 7, 11, and 13, all of which ultimately 

depend from claim 1, all recite “an access gateway” or “a first access gateway” to which the 

communication network, a “local-network alternate station,” or a “local network,” is connected. 

These recitations raise more questions. The claim language does not make clear whether these 

are the same “access gateway” recited in claim 1, or different access gateways. Independent 

claim 18 introduces yet another “a first access gateway,” described simply as connected to the 

emergency call router. None of the claims tell or show the jury what, exactly, the “access 

gateway” is or what it does. At most, some identify where it must be – connected to a network. 

The specification, however, defines gateways as Microsoft does: By their nature. They 

are coupled, and provide access from local networks, to the packet data network:

Such a new-generation telephonic network generally includes a packet data 

network, or fabric, through which packet-switched channels are formed. Devices 

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

to as gateways form gateways to the packet data network. Gateways are operable, 

amongst other things, to form gateways to the packet data network from local 

networks.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 9 of 49
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EX. 1 at 2:24-31. . See also, e.g., id. at 6:9-15 (“The gateways are associated with local 

networks 22 at which individual telephonic stations 24 are positioned. The gateways to which 

the local networks are connected from the access mechanism through which the telephonic 

stations are connected to the packet data network and through which all calls originated at, or to 

be terminated at, the telephonic stations of a particular local network are routed.”) Further, 

access gateways are coupled to the packet data network via communication links:

A plurality of gateways, here access gateways (AGWs) 16 are coupled to the 

packet data network. Here, four exemplary gateways, gateways 16-1, 16-2, 16-3, 

and 16-4, are shown to be directly connected to the packet data network, here 

represented by way of communication links 18.

Id. at 5:51-55. 

Those communication links extend from the access gateway to the softswitch that 

controls the operations of the system. See e.g., id. at 1:11-19 (“The call handling is provided at a 

local network associated with an access gateway upon total failure of a communication link 

between the access gateway and a softswitch which controls operations of the system.”); Id. at 

3:52-55; 4:53-57 (“in spite of the total failure of the communication link between the access 

gateway and the softswitch, local call control functionality is provided to permit at least limited 

communication in the local network associated with the access gateway.”); Id. at Fig. 1; and Fig. 

3; see also, Id. at Abstract (“Emergency call-routing apparatus, and an associated method, for 

use in a packet-based, telephonic network. An emergency call router is positioned selectably to 

provide local call handling functionality to a local network that is normally connected by way of 

an access gateway to the telephonic network whose operation is normally controlled by a 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 10 of 49
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softswitch. The apparatus is used when, e.g., a total communication link failure condition 

occurs between the access gateway and the softswitch.”).3

Figure 1 repeatedly and consistently illustrates this relationship: Numerous access 

gateways (16-x) are associated with respective local networks (22-x), access gateways are 

connected to the packet data network 14 via respective communication links (18-x), and a 

softswitch 34 ordinarily provides call control for the entire system 10. If a communication link 

is disrupted 44, the emergency call router 48 kicks in to allow rudimentary calling functions on 

the associated local network 22.

Thus, Microsoft’s proposed construction defines the “access gateway” precisely as set 

forth in the patent as a gateway coupled to the packet data network for communication with a 

softswitch. 

WSOU objects to the inclusion of “packet data network” in Microsoft’s proposed 

construction as overly narrow, but the specification is unambiguous—the only relevant 

communication network is a packet based network, as opposed to any possible legacy telephonic 

communication network. Indeed, the specification specifically notes that it describes an 

apparatus, and an associated method, for use in a packet-based, telephonic network” (Id. at 

Abstract), and that“[i]t is in light of this background information related to packet-based, 

telephonic communication systems that the significant improvements of the present invention 

have evolved.” Id. at 3:21-24. Further, the specification repeatedly refers to the communication 

network as a packet data network, packet based network, or similar terminology. See id. at 

 3 Though the word “softswitch” does not appear in the claims, the term “communication system 

controller” does, and the language of claim 1 reinforces that the communication system 

controller controls the communication system in normal operation. The softswitch, as described 

in the cited portions of the specification herein, likewise controls the communication system in 

normal operation. Microsoft’s construction could be readily amended to swap “communication 

system controller” for “softswitch.”

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 11 of 49
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Abstract; 5:18-20; 5:42- 61; 6:4-8; 6:9-15; 6:30. Moreover, the patent aims to address an issue 

particular to “next-generation telephonic communication systems” that, unlike legacy circuitswitched networks, use packet-based communications and utilize softswitches for their 

operation. See id. at 2:18-23; 2:57-3:12. There is no basis for WSOU’s objection in view of the 

intrinsic evidence.

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

back-up call router that is operable only when 

the communication link fails 

Plain and ordinary meaning 

As described above, the “emergency call router” is the core of the alleged invention. 

Indeed, in describing its invention, the ‘868 patent includes an “emergency call router ... that is 

operable upon detection of occurrence of the failure of the communication link” “between the 

access gateway and a softswitch which controls operations of the system.” Id. at 1:8-17. The 

term “emergency call router” thus refers to a particular router in the system of the ‘868 patent 

that performs a very specific function within the larger communication system: operating as a 

back-up router to provide local call handling when total failure of the normal communication 

link occurs.

Claim 1, which is in Jepson format, tracks this description of the invention: the 

improvement is “facilitating call completion...subsequent to failure of the normal-operation 

communication link.” Id. at 10:14-17; see 37 C.F.R. 1.75(e) (describing the Jepson claim 

format). That improvement, as the claim details, is carried out by an emergency call router 

“selectably operable responsive to failure of the normal-operation communication link.” Id. at 

10:19-21.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 12 of 49
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The specification consistently and clearly explains that the emergency call router is 

exactly as Microsoft has proposed.

An emergency call router is positioned selectably to provide local call handling 

functionality to a local network that is normally connected by way of an access 

gateway to the telephonic network whose operation is normally controlled by a 

softswitch. The apparatus is used when, e.g., a total communication link failure 

condition occurs between the access gateway and the softswitch.

Id. at Abstract; see also, Id. 3:41-44 (“Through operation of an embodiment of the present 

invention, local call handling at a portion of the communication system associated with an access 

gateway is provided subsequent to total failure of a communication link ... Local calling

between telephonic station associated with the access gateway is provided by way of an 

emergency call router in substitution for the softswitch that normally would otherwise control 

calling functions”). 

The specification also repeatedly states that the “emergency call router” is called into 

service only when the normal communication link has failed. Otherwise, the emergency call 

router remains dormant. 

An emergency call router is provided that is operable upon detection of occurrence 

of the failure of the communication link. The call router provides at least selected, 

rudimentary local handling functions that otherwise would not be permitted due to 

the failure of the communication link.

Id. at 1:14-19; see id. at 1:60-63 (“When the detector detects the failure of the communication 

link, the emergency call router becomes operational...”); id. at 5:5-9 (“The emergency call 

router selectably operates responsive to failure of the normal-operation communication 

link...”); Id. at 9:15-20 (“When a communication link extending beyond the access gateway 

fails, detection is made of the failure by the detector 42 of the access gateway and an indication 

is provided, indicated by the segment 74, to the emergency call router. The emergency call 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 13 of 49
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router becomes operable responsive thereto.”). There is no description of the emergency call 

router becoming operable unless the communication link fails. 

WSOU’s argument misses the point of the patent. “Router” may be a term of art, but 

“emergency call” as used in the patent is not confined to emergency calls in the common sense.

Claim terms must be understood in the context of the invention, but WSOU’s breaking up this 

claim term to imply that the “emergency call router” is whatever connects “emergency calls” 

(e.g., a 9-1-1 call in the U.S) conflicts with the scope described in the ‘868 patent. See Phillips v. 

AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal citations and quotations 

omitted). The specification describes a broader functionality. See Id. at 4:31-39 (explaining that 

the emergency call router may be operable to route different call types including “emergency 

calls, such as calls that are placed to the public service access point, calls placed to published 

lower-digit, such as three digit, service centers, calls placed to from priority parties, and finally, 

low-priority, local calls.”).

Similarly, the relevant claim language undermines WSOU’s argument that Microsoft’s 

proposed construction conflicts with dependent claim 7, which recites “said emergency call 

router further comprises a call priority determiner operable at least responsive to failure of the 

normal-operation communication link.” This limitation relates to the operation of a “call priority 

determiner” not to the “emergency call router. The plain wording of these claims, thus, provides 

for the “emergency call router” to be operable only when the communication link fails, while the

call priority determiner component is operable at least when the communication link fails.

Microsoft’s proposed definition, which is consistent with the patent’s overall context and 

aligns with its disclosure provides clear and accurate guidance as to the proper scope of this 

term.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 14 of 49
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3. “target gateway” (Claims 1 and 18)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

gateway coupled to the emergency call router 

and separate from the access gateway 

Plain and ordinary meaning 

The core dispute here is whether “target gateway” and “access gateway” can properly be 

construed to mean the same gateway. Microsoft’s proposal enforces this common sense 

distinction. The term “target gateway” does not appear in the ‘868 patent specification, just in 

the claims. WSOU’s argument that a “gateway” is a term of art and that “target” is a qualifier 

that is readily understood in light of the surrounding claim language and the corresponding 

written description thus immediately falls flat. 

Both claim 1 and claim 18 recite an “access gateway” and a “target gateway,” These 

distinct gateways provide necessary orientation to the operation of the “emergency call router” 

recited in the claims, which has the purpose of allowing a call to be routed from one point to 

another. Claim 1 specifies that each is coupled to the emergency call router. Similarly, Claim 18 

recites “a first access gateway” and “a target gateway” with an emergency call router connected 

therebetween. The claim language alone requires the term “target gateway” must refer to a 

gateway separate from the “access gateway,” while still being coupled or connected to the 

emergency call router. Indeed, it would be nonsensical for the access gateway and the target 

gateway to refer to the same gateway, when the emergency call router must be connected 

between the access gateway and the target gateway. See Claim 18 (“connecting the emergency 

call router, as a preliminary operation, between at least a first access gateway and a target 

gateway of the communication system”). 

This illogical result, however, is exactly what WSOU suggests, arguing that the target 

gateway need not be separate from the access gateway. In support, WSOU points to two 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 15 of 49
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dependent claims that specifically state that the emergency call router may be embodied at the 

access gateway. This is simply irrelevant to the issue at hand. No claims say that the target 

gateway and access gateway are combined. At most, claims 2 and 3 place other devices with the 

emergency call router or access gateway. 

In the only discussion of the “target gateway” during prosecution, the applicant argued 

that the inclusion of “a target gateway coupled to the emergency call router” in claim 1 and 

“connecting the emergency call router, as a preliminary operation, between at least a first access 

gateway and a target gateway of the communication system;” in claim 18 made the claims 

allowable because these limitations were originally presented in claim 19 and were found to be 

allowable. EX. 4. Original claim 19 states, in relevant part, that “the communication system 

further comprises at least a first access gateway and a target gateway and wherein said method 

further comprises the preliminary operation of connecting the emergency call router between 

the access gateway and the target gateway.” EX. 5. Neither of these passages state or suggest 

that the access gateway and the target gateway are or could be the same gateway. Rather, this is 

consistent with the claim language and Microsoft’s proposed construction that the target gateway 

of claim 1 and claim 18 is different and separate from the access gateway. 

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

(Claim 18)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

selectably operable : deciding whether to 

permit a call to be routed based on call-type or 

call priority 

selectably routing : deciding whether to permit 

a call to be routed based on call-type or call 

priority

Plain and ordinary meaning 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 16 of 49
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The dispute here is whether claim terms using the contrived term “selectably” require 

construction. Because these phrases go to a critical part of the claimed invention, namely the 

routing of some calls but not others, Microsoft’s proposal should be adopted.

WSOU makes no effort to show that “selectably” comes from the normal English 

lexicon, although, at the very least, it is a conspicuous adverbial construct of “selectable.” In the 

claims, it modifies operations of the emergency call router that go to the core of the purported 

invention for providing “selected, rudimentary local handling functions,” such as the routing of 

priority calls or selected lower-priority calls, in the event of a communication link failure. EX. 1

at 1:17-25. Claims 1 and 13 recite an emergency call router “selectably operable. . . for routing,” 

and claim 18 recites the step of “selectably routing a call request . . . by way of an emergency 

call router.” The same construction, thus, applies for all these claims.

At the outset, Microsoft’s proposal, by referencing routing based on “call-type or call 

priority” does not seek to constrict the claim scope, but simply aligns with the breadth of the 

specification. The patent generally describes call priority as a call-type, but suggests priority 

may be its own call routing criteria. See, e.g., Id. at 4:35-39 (listing “calls placed to from priority 

parties” and “low-priority, local calls” as examples of “call-types”); Id. at 4:39-41 (describing 

“[a]dditional listings prioritizing calls placed upon the identifies of the calling parties”). 

Although the claims use the contrived word “selectably” in defining operation of the 

emergency call router that is the core of the patented invention, WSOU insists that these terms 

require no construction. WSOU appears to argue that, because the claims elsewhere recite 

“determines” or “determining,” no further construction is needed. But WSOU’s position 

impermissibly renders the word “selectably” superfluous, and its interpretation should be 

rejected. See Akzo Nobel Coatings, Inc. v. Dow Chemical Co., 811 F. 3d 1334, 1340 (Fed. Cir. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 17 of 49
13

2016) (citing Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A 

claim construction that gives meaning to all the terms of the claim is preferred over one that does 

not do so). As described, a fundamental concept of the ‘868 patent is that an emergency call 

router begins to operate upon failure of the normal-operation communication link, stepping in to 

select which call types should be completed and route calls of the select type based on priority. 

EX. 1 at 7:61-64. But, the emergency call router, as claimed, does not simply route all the calls that 

come its way without other considerations. In the claims, as set forth in the preamble, the system is 

only designed to pass certain types of call. Recognition of such calls therefor is necessary for the 

intended operation and comes from the “determining” step (on which WSOU focues). Determining 

whether the call is of the “selected call-type” and may be routed is fundamental, but the “selctably” 

claim language reflects the specification’s description that whether any given call that may be routed 

is actually routed rests ultimately with the emergency call router. 

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 calltype 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”

EX. 1 at 7:44-56; see also, id. at 8:46-52 (describing that the emergency call router includes a 

priority detector that “selectably routes the call or prevents routing of the call, depending upon 

the calling capacity within the local network and the priority level of the call. If a high-priority 

call is placed and capacity is not otherwise available, a lower-priority call is terminated by the 

emergency call router to permit the higher-priority call to be completed.”). 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 18 of 49
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Microsoft’s construction is consistent with the claims and the specification, and, unlike 

WSOU’s “plain and ordinary” meaning, the proposed construction gives meaning to all terms of 

the claim. Microsoft’s construction should be adopted. 

5. “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 localnetwork 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.

Claim 12 is missing words. Without those words at the end of the claim, the reader must 

speculate as to what determination must be made before a call is rerouted to the local network 

alternate station. There is no possible “plain and ordinary meaning” in these circumstances. See

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).

Specifically, the claim first recites that “said emergency call muter is further for 

determining whether the call of the selected call-type shall be completable by way of the normaloperation communication link.” Then it goes on to recite that said emergency call router is also 

for “rerouting a call request to the local-network alternate station upon” a particular 

determination, specifically, “determination that the call completion by way of the normaloperation communication link.”. This language does not provide a criteria for any 

determination. Instead, because the claim is missing words to complete the sentence, the claim 

requires speculation as to what is missing. 

Does the claim intend to state that the emergency call router is for rerouting a call request 

to the local network alternate station when call completion by way of the normal-operation 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 19 of 49
15

communication link has succeeded? Or perhaps when it has failed? Or under some other set of 

circumstances? Because the claim requires speculation at least as to the conditions on which the 

required determination is made, the claim phrase is indefinite as it fails to inform those skilled in 

the art, with reasonable certainty, about the scope of the invention. The public is entitled to 

know what behavior is infringing and what behavior is not, and there is simply no way to know 

based on the words of this claim. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 

(Fed. Cir. 2014).

WSOU’s suggestion that the term “call completion” itself would be understood to be an 

event condition does not clarify the criteria upon which the determination that must be made. At 

most, a person of ordinary skill might understand that before rerouting the call to the alternate 

station a determination is being made as to the nature of call completion via the normal 

communication link, but without more, he or she would be left to speculate as to what condition 

triggers rerouting. Without such information, the scope of the claim 12 is indecipherable. Thus, 

the claim does not provide clear notice to one of ordinary skill in the art of what is claimed and 

should be held to be indefinite. See Nautilus, 134 S. Ct. at 2129. 

II. THE ’550 CLAIM TERMS

A. The Problem To Be Solved By The ’550 Patent

The ‘550 patent (EX. 2) relates to presence-based interactive communication systems. It 

arises in the context of systems for providing information about the presence (i.e., availability 

and current status) of various entities, such as users, services, devices, and/or facilities, on a 

network. That presence information can then be used to inform real-time communication 

sessions with the entities. See id. at 1:10-18. These conventional systems also allowed for an 

assistant or similar entity to access or change the presence information of another entity. 

According to the patent, however, there were situations where it was desirable to limit the access 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 20 of 49
16

privileges of such “presence contributors,” such that they might be able to access and/or update 

only one part of the presence information but not another. See id. at 1:38-51.

The ‘550 patent claims to have solved this need through a system with a “multiple access 

presence agent for use in a presence server” that is used to ascertain and distribute the presence 

status of a user. It describes that the user may be accessing the system through more than one 

endpoint. The system also includes “presence contributors,” who can provide updates regarding a 

user’s current presence and also access their presence status. The presence agent authenticates 

presence contributors using login credentials and allows users to define access rules for each 

presence contributor, such that certain privileges or information about presence are available 

only if the presence contributor has been permitted access. See id. at 1:55-2:2. The presence 

contributor might be a user, a group of users, an application, a device, or a facility. The presence 

information that is provided may be for a user, group of users, application, device, or facility, as 

the system desires. Id. at 2:2-6.

B. The Means Terms Are Subject to § 112, ¶ 6

Claim 1, 4, and 6 recite eight different limitations that use “means for” language. In fact, 

every claim limitation, outside of the preamble, is a “means for” limitation that requires software 

to be performed. The presence of the word ‘means’ has long been recognized by the Federal 

Circuit as important “[t]o determine whether § 112, para. 6 applies to a claim limitation.” 

Williamson v. Citrix Online, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Because each term uses the 

word “means,” there is a rebuttable presumption that § 112, ¶ 6 applies. Personalized Media v. 

ITC, 161 F.3d 696, 703-4 (Fed. Cir. 1998). Under § 112, ¶ 6, the “scope of coverage” of the term 

is restricted “to only the structure, materials, or acts described in the specification as 

corresponding to the claimed function and equivalents thereof.” Williamson v. Citrix Online, 

LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). Moreover, only those disclosed structures clearly 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 21 of 49
17

linked to the claimed function qualify as corresponding structure under the statute. B. Braun 

Med., Inc. v. Abbott Labs., 124 F.3d 1419 (Fed. Cir. 1997).

WSOU nonetheless argues that the claim recites sufficient structure to overcome the 

strong presumption that § 112, ¶ 6 applies. Specifically, WSOU argues that the recital of “[a] 

multiple access presence agent for use in a presence server” in the preamble of the independent 

claim is sufficient to overcome this presumption, based on TecSec, Inc. v. Int'l Bus. Machs. Corp. 

in which the Court determined that for the specific claims at issue in that case, “[a] ‘system 

memory’ is sufficient structure to perform the ‘storing data’ function.” 731 F.3d 1336, 1347 

(Fed. Cir. 2013). But WSOU’s reliance on TecSec is not reasonable in view of the law and the 

language of WSOU’s claims. Even under TecSec the inquiry remains sharply focused on 

“whether the claim recites sufficient structure to perform ‘the functions in question.’” Id. at 1348 

(citing TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, (Fed. Cir. 2008)). Unlike the claim at issue 

in TecSec, the claims at issue recite a multiple access agent further comprising eleven different 

means, each with specific and detailed functions. A person of ordinary skill in the art would not 

understand a “multiple access presence agent for use in a presence server” alone to be sufficient 

structure to perform all of the claimed functions. Unlike in TecSec, where the system memory 

was closely and clearly tied to the function of storing data, in the ’550 patent claims there is no 

readily ascertainable connection between what a “multiple access presence agent” does and the 

required functions of all the different means terms. Nor does WSOU provide any explanation.

Relying on claim 1 preamble language alone also ignores the well-established law that 

the corresponding structure for a function performed by software is an algorithm. See WMS 

Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir. 1999). Not even WSOU 

contends that the “multiple access presence agent” preamble language provides any algorithm. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 22 of 49
18

Here, each and every means term includes computer-implemented functions that must be 

performed in software. The claims (1, 4, and 6) in which these terms are found are all directed to 

a multiple access presence agent for use in a presence server, i.e., a computer. 

In a means-plus-function claim like these in which the disclosed structure is a computer, 

or microprocessor, programmed to carry out an algorithm, “the disclosed structure is not the 

general purpose computer, but rather the special purpose computer programmed to perform the 

disclosed algorithm.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 

(Fed. Cir. 2008). The specification must express the algorithm in “understandable terms 

including as a mathematical formula, in prose, or as a flow chart, or in any other manner that 

provides sufficient structure.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.

Cir. 2008) (internal citation omitted). Simply disclosing software, however, “without providing 

some detail about the means to accomplish the function[,] is not enough.” Id. at 1340–41 

(citation omitted). That is no different from disclosing “a black box that performs the recited 

function,” which “is not a sufficient explanation of the algorithm required to render the meansplus-function term definite.” Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1338 (Fed. Cir. 

2014). It is also insufficient to merely restate the claimed function without identifying how 

values are calculated, combined, or weighted. Triton Tech of Texas, LLC v. Nintendo of America, 

Inc., 753 F.3d 1375, 1379 (Fed. Cir. 2014). The algorithm for performing the claimed function 

must be identified, not just the functions themselves. Williamson v. Citrix Online, LLC, 792 F.3d 

1339, 1352-53 (Fed. Cir. 2015) (en banc). Thus, these terms are all subject to the requirements of 

§ 112, ¶ 6, and their function and corresponding algorithm must be identified. Otherwise, they 

are indefinite. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 23 of 49
19

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: 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. 

Structure: presentity 110 along with presence 

server 160 and presence agent 150 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: defining access rules for each of said 

presence contributors 

Structure: multiple access presence agent with 

presence server, and equivalents thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: define respective rights and 

privileges of presence contributors to access the 

presence information of a presentity 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. 

The parties initially dispute the function of this means term. WSOU’s proposal

improperly reduces the function in a way that would remove limitations critical to the allowance 

of the claims. See EX. 3 at 6 (“Claims 1-3, 7-13, 16 and 20-22 are allowed because the prior art

did not teach or reasonably suggest defining access rules that define rights and privileges of the 

presence contributor to access the presence information after said presence contributors have 

provided said presence information to said presence server”). To gain allowance, the nature of 

the access rules that this means term must define was critical, yet WSOU would omits that from 

the function, and thereby write it out of the claim for purposes of assessing infringement or 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 24 of 49
20

comparing this claim element to the prior art. By contrast, the function identified by Microsoft is 

a verbatim recitation of the function explicitly recited in the claim, and does not seek to omit 

critical portions of the claim element, as is proper.

The parties do agree that both the presence agent and presence server are part of the 

required structure. Thus, the central disagreement between the parties relates to the need for 

presentity 110 to be included to perform the recited function and the lack of algorithm disclosing 

how the structural elements perform the recited function.

The specification describes that the presentity works in conjunction with the presence 

agent and presence server to perform this function. In every embodiment, the presentity 110, or 

an equivalent, establishes access rules working with the presence agent. See, e.g., 6:62-65 (“the 

presentity 110 establishes access rules and authentication credentials for both presence 

contributor A and presence contributor B with the presence agent 150 associated with the 

presentity 110”); 7:35-44 (“the presentity 110 establishes access rules and authentication 

credentials for a presence contributor 120 with the presence agent 150 associated with the 

presentity 110”). Further, in the only discussion of the multiple access presence agent defining 

access rules, the specification states that the access rules are originally defined by the presentity 

and then stored in the presence agent. 5:48-61 (“Each access rule 210 may be originally defined 

by the presentity, an administrator of the presence system or other user, and stored in the 

multiple access presence agents 150a and 150b.”). The specification thus requires a presentity 

to establish the access rules and a presence agent and presence server to store the defined rules. 

WSOU nonetheless argues that the only structure necessary for the recited function is the 

multiple presence access agent and the presence server. It points to no relevant specification 

content in support, instead citing a generic recitation in the summary of the invention that the 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 25 of 49
21

multiple access presence agent is configured to define access rules for each of the presence 

contributors (1:60-63), and several instances in which the specification describes what an access 

rule is (5:62-6:1, 6:65-7:3, 7:38-41, 8:36-39). But none of these citations refutes the need for 

“presentity 110” to be part of the structure performing the function.

The specification must also disclose an algorithm performed by that structure that 

explains how to carry out the computer-implemented operations that provide the claimed 

function. Here, there is none, and WSOU cannot identify any such algorithm. The best that 

WSOU can do is point to language that does no more than explain what “access rules” are, and 

craft that into an alleged algorithm. Dkt. 46 at 15. WSOU also points to the same disparate 

portions of the specification it attempted to rely on to support its structure, but functional 

statements (such as stating that the multiple access presence agent is configured to define access 

rules for each of the presence contributors, 1:60-63) and definitions (such as descriptions of what 

an access rule may be, 5:62-6:1, 6:65-7:3, 7:38-41, 8:36-39, and Figs. 3 and 4), are not 

algorithms. None provides any textual, flow chart, mathematical formula, or other description of 

an algorithm for how to “define 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.” Finisar, 523 F.3d at 

1340-41. Without such an algorithm, the means term is indefinite. Ergo Licensing, 673 F.3d at 

1363.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 26 of 49
22

2. means for authenticating one of said presence contributors to 

determine said access rules associated with said one of said presence 

contributors (Claim 1)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: authenticating one of said presence 

contributors to determine said access rules 

associated with said one of said presence 

contributors 

Structure: presence server 160 and presence 

agent 150 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: authenticating one of said presence 

contributors to determine said access rules 

associated with said one of said presence 

contributors 

Structure: multiple access presence agent with 

presence server, and equivalents thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: determine if said presence 

contributor is authenticated based on provided 

authentication credentials 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. The parties appear to agree on the function and structure, 

reducing the dispute to whether the required algorithm is disclosed. It is not. 

It is not sufficient to point to a recitation of the function to be performed without 

explaining how the function is to be performed, but that is exactly what WSOU seeks to do here. 

Blackboard, Inc v. Desire2Learn, Inc., 574 F.3d 1371, at 1384 (Fed. Cir. 2009). Here, there is no 

information about how to actually accomplish the function of this means term—there is no 

textual, flow chart, mathematical formula, or other description of steps to be used for 

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

said one of said presence contributors.” Finisar, 523 F.3d at 1340-41. WSOU simply identifies 

seven entirely separate portions of the specification describing authentication credentials or their 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 27 of 49
23

significance and tries to turn them into an alleged algorithm. Specifically, it points to portions of 

the specification that describe: (1) that authentication credentials may be assigned to a user or 

presence contributor (2:21-26, 8:5-22, Fig. 5), (2) what an authentication credential may be

(6:44-53), (3) that the presence contributor must provide its authentication credentials to the 

presence agent for authentication (7:4-12, 7:42-47), and (4) that authentication is required for 

access to the presence information (1:32-34). Each of these is definitional or functional. None 

comes close to describing how to carry out the function of “authenticating” one of said presence 

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

because no such disclosure is present in the specification, as required. Certainly, none of these 

disclosures identified by WSOU is a “step-by-step procedure for accomplishing” the required 

function. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). 

Such an utter lack of algorithm disclosed anywhere in the specification renders this term 

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

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: 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 

Structure: presence server 160, presence agent 

150, presence user agent 140, and 

communications network 130 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: 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 

Structure: multiple access presence agent with 

presence server, and equivalents thereof 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 28 of 49
24

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: determine access rules for said one 

of said presence contributors and granting said 

one of said presence contributors the rights and 

privileges associated with said access rules 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. As the parties agree on the function, the dispute reduces

to identifying the required structure and algorithm, if disclosed.

WSOU argues that the corresponding structure is simply a multiple access presence agent 

with presence server, and equivalents thereof. Dkt. 46 at 17. This is insufficient structure for the 

recited function of enabling access to presence information of the presentity by said one of said 

presence contributors based on said access rules associated with said one of said presence 

contributors, which logically requires some mechanism by which a presence contributor may 

communicate with the presence agent to access the presence information. The only structure 

disclosed in the specification for communications between presence contributors and the 

presence agent is the communications network 130. See EX. 2 Fig. 1. Further, a person of 

ordinary skill would understand that viewing, setting, or changing (i.e., accessing) presence 

information of the presentity by a presence contributor requires a presence user agent such as 

presence user agent 140 that interfaces with the presence contributor and provides updated 

information to the presence agent. See id. at 3:7-8; 3:41-57; 4:37-39. Microsoft’s proposal 

properly captured the necessary structural requirements to carry out the recited function.

However, the claim is indefinite because the patent once again fails to disclose any

algorithm for how to actually perform the function. Once again, there is no detail provided in the 

specification about how to accomplish the function of this means term, whether in the form of 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 29 of 49
25

textual, flow charts, mathematical formulae, or other descriptions of an algorithm. Finisar, 523 

F.3d at 1340-41. WSOU unsurprisingly fails to identify any such algorithm. Instead, it points to 

disparate and unconnected portions of the specification that describe only general capabilities of

the multiple access presence agent (EX. 2 at 1:63-2:2), or repeat some or all of the overall set of 

means terms included in claim 1 (Id. at 7:9-30; 7:61-8:22; Figs. 3 and 5), and attempt to turn that 

into an alleged algorithm. But none explains how the function is to be carried out, and hence 

none discloses any algorithm 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. At most, the disclosures identified by WSOU amount to nothing 

more than a restatement of the function itself. Because there is no algorithm disclosed anywhere 

in the specification, this term is indefinite. Ergo Licensing, 673 F.3d at 1363.

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

“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” 

Function: filtering said presence information of 

said presentity based on said access rules of said 

one of said presence contributors to produce 

filtered presence information 

Structure: presence server 160 and presence 

agent 150 with access rules 210 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6, and to the extent Defendant’s 

proposal is understandable: 

Function 1 of 2: filtering said presence 

information of said presentity based on said 

access rules of said one of said presence 

contributors to produce filtered presence 

information 

Structure 1 of 2: multiple access presence 

agent with presence server, and equivalents 

thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 30 of 49
26

“means for providing said filtered presence 

information to said one of said presence 

contributors” 

Function: providing said filtered presence 

information to said one of said presence 

contributors 

Structure: presence server 160, presence agent 

150, presence user agent 140, and 

communications network 130 or 135 

Algorithm: Not Disclosed 

Term is Indefinite 

Algorithm 1 of 2: select some or all of said 

presentity’s presence information to allow said 

one of said presence contributor to access or 

view 

Function 2 of 2: providing said filtered 

presence information to said one of said 

presence contributors 

Structure 2 of 2: multiple access presence

agent with presence server, and equivalents 

thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm 2 of 2: allow said one of said 

presence contributor to access or view the 

selected some or all of said 

As discussed above, this double-means term is subject to 35 U.S.C. § 112 ¶ 6 and is 

directed to computer-implemented functions to be performed in software, requiring disclosure of 

an algorithm for performing each function. As the parties agree on the functions, the dispute 

reduces to identifying the required structure and algorithm, if any is disclosed for each of the two 

recited functions.

As to the first function, “filtering said presence information of said presentity based on 

said access rules of said one of said presence contributors to produce filtered presence 

information,” WSOU argues that the corresponding structure is simply a multiple access 

presence agent with presence server, and equivalents thereof. Dkt. 46 at 19. Yet, the 

specification describes presence server 160 and presence agent 150 with access rules 210 for 

performing this function. 

But regardless of the parties’ disagreement regarding the corresponding structure, the 

claim is indefinite because the patent fails to disclose an algorithm for performing the function. 

WSOU fails to identify any algorithm disclosed in the specification for “filtering said 

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

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 31 of 49
27

contributors to produce filtered presence information.” Instead, WSOU crafts its own algorithm, 

which is found nowhere in the specification or the claims. Its proposed algorithm, “select some 

or all of said presentity’s presence information to allow said one of said presence contributor to 

access or view,” is allegedly supported by four disparate and unconnected portions of the

specification, but a review of those citations reveals that none discloses how to perform the 

claimed function. The first citation that WSOU points to merely states that the presence agent 

filters the presence information in accordance with the access rules. EX. 2 at 7:48-54. The 

remainder state that access rules or preference information may contain filters for controlling 

access. Id. at 4:44-55, 5:48-6:11, 8:1-4. None of these citations discloses how to filter said 

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

contributors to produce filtered presence information, much less provides any sort of step-by-step 

procedure, in the form of text, flow charts, or other descriptions, for accomplishing the function. 

Finisar, 523 F.3d at 1340-41; Ergo Licensing, 673 F.3d at 1365. At most, the disclosures 

identified by WSOU restate the function itself, which the law does not consider to meet the 

algorithm requirement. Blackboard, 574 F.3d at 1384. 

As to the second function, “providing said filtered presence information to said one of said 

presence contributors,” WSOU argues again that the corresponding structure is simply a multiple 

access presence agent with presence server, and equivalents thereof. Dkt. 46 at 20. But the 

specification describes that in addition to presence server 160 and presence agent 150, presence 

user agent 140, and communications network 130 or 135 are required for performing the recited 

function. The function of providing said filtered presence information to said one of said presence 

contributors which would be understood to require a mechanism by which a presence agent may 

communicate with the presence contributor to provide the filtered presence information. The only 

structure disclosed in the specification for communications between presence contributors and 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 32 of 49
28

the presence agent is the communications network 130. See EX. 2 Fig. 1. Further, a person of 

ordinary skill would understand that viewing, setting, or changing (i.e., accessing) presence 

information of the presentity by a presence contributor requires a presence user agent such as 

PUA 140 that interfaces with the presence contributor and provides updated information to the 

presence agent. See EX. 2 at 3:7-8; 3:41-57; 4:37-39. Regardless, though, of the parties’

disagreement regarding the corresponding structure, the claim is indefinite for failure to disclose 

an algorithm for performing the function.

In lieu of identifying any disclosed algorithm for “providing said filtered presence 

information to said one of said presence contributors,” WSOU offers a paraphrasing of a portion of 

the specification: “allow said one of said presence contributor to access or view the selected 

some or all of said presentity’s presence information.” See EX. 2 at 6:6-11 (“access rule A may 

allow presence contributor A to access/view some or all of the presentity's presence information 

180a and/or some or all of the presentity's buddies' presence information (e.g., an assistant 10 has 

access to professional contacts, but not to personal contacts on the manager's buddy list)). 

However, access rules allowing access to some portion of the presence information would not be 

understood to be the same as “providing said filtered presence information to said one of said 

presence contributors,” and the specification excerpt WSOU paraphrases does not provide stepby-step information for performing the function. See id. at 5:62-65. WSOU further points to 

four disparate and unconnected portions of the specification, the most relevant of which merely 

restates the function itself with no description of the steps required to perform the function. See

id. at 7:48-54. That is not allowed. Blackboard, 574 F.3d at 1384. None of the portions of the 

specification cited by WSOU discloses how to provide said filtered presence information to said 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 33 of 49
29

one of said presence contributors. Because there is no algorithm disclosed anywhere in the

specification for either of the functions encompassed by this term, this claim term is indefinite. 

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: 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 

Structure: presence contributors 120, presence 

server 160, presence agent 150 with access rules 

210, presence user agent 140, and 

communications network 130 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: 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 

Structure: multiple access presence agent with 

presence server, and equivalents thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: providing one of said presence 

contributors the ability to set/change the 

presence information of said presentity subject 

to any limits on the ability according to said 

access rules 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. As the parties agree on the function, the dispute reduces 

to identifying the required structure and algorithm, if any, disclosed for the recited function.

WSOU argues that the corresponding structure is limited to a multiple access presence 

agent with presence server, and equivalents thereof. Dkt. 46 at 22. The patent, however, 

identifies presence contributors 120, presence server 160, presence agent 150 with access rules 210, 

presence user agent 140, and communications network 130 for performing the recited function of 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 34 of 49
30

enabling access to presence information of the presentity by said one of said presence contributors

based on said access rules associated with said one of said presence contributors, which would be 

understood to require a mechanism by which a presence contributor may communicate with the 

presence agent to access the presence information. Indeed, the only structure disclosed in the 

specification for communications between the presence contributors and the presence agent is the 

communications network 130. See EX. 2 at Fig. 1. Further, a person of ordinary skill would 

understand that viewing, setting, or changing (i.e., accessing) presence information of the 

presentity by a presence contributor requires a presence user agent such as PUA 140 that 

interfaces with the presence contributor and provides updated information to the presence agent. 

See Id. at 3:7-8; 3:41-57; 4:37-39.

However, the claim is indefinite because the patent fails to disclose an algorithm for 

performing the function. WSOU identifies no algorithm disclosed in the specification 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.” Instead, WSOU 

points to five separate portions of the specification to try to craft an alleged algorithm, but its 

attempt fails. Its specification cites, instead, include a disclosure that access rules define rights 

and privileges of presence contributors which may include the right to set/change presence 

information (EX. 2 at 5:48-6:1, 6:12-22), the capability for the presence contributor to update 

presence information (id. at 7:44-60), and several instances in which the specification merely 

repeats some or all of the overall set of means terms included in claim 1 (id. at 7:13-30; 7:65-

8:4). None of these describes how the system goes about “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.” At most, the disclosures identified by WSOU amount to 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 35 of 49
31

nothing more than a restatement of the function. Blackboard, 574 F.3d at 1384. Because there is 

no algorithm disclosed anywhere in the specification, this term is indefinite. 

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: 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

Structure: presence server 160, presence agent 

150 with access rule 210, presence user agent 

140, and communications network 130 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: 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 

Structure: multiple access presence agent with 

presence server, and equivalents thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: providing one of said presence 

contributors the ability to set/change the 

preference information of said presentity 

subject to any limits on the ability according to 

said access rules 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. The parties agree on the function. Thus, the dispute 

reduces to identifying the required structure and algorithm, if any is disclosed for the recited 

function. 

Fig. 1 illustrates the overall system of the ’550 patent that contains the structures 

necessary to perform the claimed function. Each of the embodiments described in the 

specification is implemented in a presence system of the type disclosed in Fig. 1. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 36 of 49
32

The concept of preference information, required by the function of this means-plusfunction claim term to be “associated with said presence information of said presentity based on 

said access rules of said one of said presence contributors,” is only mentioned in four places in 

the specification, including preference information 190 shown in Fig. 1. Id. at Fig. 1. The 

specification describes “preference information 190” as being stored by presence server 160: 

The presence server 160 further stores preference information 190 for the 

presentities 110 and watchers 170 of the presence system 100. For example, the 

preference information 190 can include both presentity preference information 

(e.g., privacy filters) set by the presentity 110 for each watcher 170 and watcher 

preference information (e.g., watcher filters) set by each watcher 170 for 

presentities 110. The preference information 190 operates to filter the presence 

information 180 of a presentity 110 provided to a watcher 170 to accommodate 

privacy concerns, prioritization requirements, viewing requirements, administrator 

policies and security considerations.

Id. at 4:44-55. Thus, the structure here associated with the function of “enabling said one of said 

presence contributors to define preference information...” must include presence server 160 for 

storing the preference information associated with presence information of the presentity.

The specification goes on to describe that presence agent 150 with access rules 210 are 

also required to carry out the claimed function. Id. at 6:23-31 (“access rules 210 may define the 

scope and/or ability of the presence contributor 120 to set/change preference information for the 

presentity...”); id. at 7:21-30 (“At 380, the presence agent 150 grants presence contributor B the 

rights and privileges associated with the access rules for presence contributor B, and at 390, 

engages in a communication session with presence contributor B with the granted rights and 

privileges. During the communication session with presence contributor B, presence contributor 

B may view, set and/or change presence information of the presentity and set or change 

preference information of the presentity based on the access rules associated with presence 

contributor B.”).

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 37 of 49
33

Communications network 130 is the only structure disclosed in the specification for 

communications between the presence contributors and the presence agent. See Id. at Fig. 1 

(illustrating a communications network 130 for communications between the presence agent and 

other components such as the PUA 140, presence contributors 120, and the presentity 110). A 

person of ordinary skill would understand that the “communication session” during which a 

presence contributor may “set or change preference information of the presentity based on the

access rules” must occur by way of the communications network 130. Further, a person of 

ordinary skill would understand that setting or changing information of the presentity by a

presence contributor requires a presence user agent such as PUA 140 that interfaces with the 

presence contributor and provides updated information to the presence agent. See Id. at 3:7-8; 

3:41-57; 4:37-39.

The patent specification of the ’550 patent thus requires that the means to “enable 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” 

must include presence server 160 for storing the preference information associated with presence 

information of the presentity, a presence agent 150 with access rule 210 for managing rights based on 

said access rules, a presence user agent 140 for interfacing with the presence contributor, and a 

communications network 130 for establishing a communication session in which the presence 

contributor may view or set the preference information. 

WSOU seeks to exclude elements of the required structure identified by Microsoft, 

stating that “[f]or example, the specification describes that in order to restrict access to the 

presence information managed by multiple presence agents, access rules may be created to 

define the scope and/or ability of a presence contributor to set/change the preference 

information of a presentity.” This argument misses the entire point of the claimed function, 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 38 of 49
34

which requires a means to enable “presence contributors to define preference information ... 

based on said access rules.” 

WSOU also fails to identify any algorithm disclosed in the specification 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.” This is not surprising, as there is none, and its alleged algorithm certainly is not 

found anywhere in the specification. WSOU points to three entirely separate portions of the 

specification stating that the multiple access presence agents are “capable of defining access 

rules 210 for each of the presence contributors 120,” (id. at 5:48-52), that access rules may 

define the scope and/or ability of the presence contributor 120 to set/change preference 

information for the presentity,” (id. at 6:23-31), and that the multiple access presence agent grant 

can grant access to the presence information of a presentity based on the access rules. Id. at 8:18-

22. None of these describes how the system goes about enabling a presence contributor to define 

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

access rules of said one of said presence contributors. 

Microsoft’s proposed structure is consistent with the specification and complete. But, 

because there is no algorithm disclosed anywhere in the specification, this term is indefinite. 

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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

“means for assigning authentication credentials 

to each of said presence contributors” 

Function: assigning authentication credentials 

to each of said presence contributors 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 39 of 49
35

Structure: presentity 110 and presence server 

160 with presence agent 150 

Algorithm: Not Disclosed 

Term is Indefinite 

“means for receiving said authentication 

credentials of said one of said presence 

contributors to authenticate said one of said 

presence contributors” 

Function: receiving said authentication 

credentials of said one of said presence 

contributors to authenticate said one of said 

presence contributors 

Structure: 

presence contributors 120, presence server 160, 

presence agent 150, presence user agent 140, 

and communications network 130 or 135 

Algorithm: Not Disclosed 

Term is Indefinite 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6, and to the extent Defendant’s 

proposal is understandable: 

Function 1 of 2: assigning authentication 

credentials to each of said presence contributors 

Structure 1 of 2: multiple access presence 

agent with presence server, and equivalents 

thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm 1 of 2: associating authentication 

credentials with each of said presence 

contributors 

Function 2 of 2: receiving said authentication 

credentials of said one of said presence 

contributors to authenticate said one of said 

presence contributors 

Structure 2 of 2: multiple access presence 

agent with presence server, and equivalents 

thereof 

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm 2 of 2: not required under In re Katz 

Interactive Call Processing Patent Litig., 639 

F.3d 1303 (Fed. Cir. 2011) 

As discussed above, this double means term is subject to 35 U.S.C. § 112 ¶ 6 and is 

directed to a computer-implemented function to be performed in software, requiring disclosure 

of an algorithm for performing the function. As the parties agree on the function, the dispute 

reduces to identifying the required structure and algorithm, if any is disclosed for the recited 

function.

As to the first function: “assigning authentication credentials to each of said presence 

contributors,” WSOU argues that the corresponding structure is limited to a multiple access 

presence agent with presence server, and equivalents thereof. Dkt. 46 at 19. The patent, 

however, describes presentity 110 and presence server 160 with presence agent 150 as providing this 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 40 of 49
36

function. Nonetheless, regardless of the parties disagreement regarding the corresponding 

structure, the claim is indefinite because the patent fails to disclose an algorithm for performing 

the function. 

WSOU fails to identify any algorithm disclosed in the specification for “assigning 

authentication credentials to each of said presence contributors.” Instead, WSOU crafts its own 

algorithm, “associating authentication credentials with each of said presence contributors,” 

which appears at no point in the specification or claims. As support, WSOU points to four 

disparate and unconnected portions of the specification, including a statement in the summary of 

the invention that in some embodiments the multiple access presence agent assigns 

authentication credentials to presence contributors (EX. 2 at 2:21-26), that a presence contributor 

may provide its authentication credentials to the presence agent (id. at 7:4-12 and 7:42-47), and 

the mere statement that authentication credentials are defined for each potential presence 

contributor (id. at 8:5-22 and Fig. 5). None of these portions of the specification discloses how

the system goes about assigning authentication credentials to each of said presence contributors. At 

best, the disclosures identified by WSOU amount to nothing more than a restatement of the 

function itself. 

As to the second function, “receiving said authentication credentials of said one of said 

presence contributors to authenticate said one of said presence contributors,” WSOU argues that the 

corresponding structure is limited to a multiple access presence agent with presence server, and 

equivalents thereof. Dkt. 46 at 20. This is insufficient structure for the recited function, which 

would be understood to require a mechanism by which a presence agent may communicate with the 

presence contributor to provide the filtered presence information. The patent describes presence 

contributors 120, presence server 160, presence agent 150, presence user agent 140, and 

communications network 130 or 135 as providing this function. The only structure disclosed in 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 41 of 49
37

the specification for communications between the presence contributors and the presence agent is 

the communications network 130. See EX. 2 Fig. 1. Further, a person of ordinary skill would 

understand that viewing, setting, or changing (i.e., accessing) presence information of the 

presentity by a presence contributor requires a presence user agent such as PUA 140 that 

interfaces with the presence contributor and provides updated information to the presence agent. 

See EX. 2 at 3:7-8; 3:41-57; 4:37-39. But, regardless of the parties’ disagreement as to the 

corresponding structure, the claim is indefinite because the patent fails to disclose an algorithm 

for performing the function.

WSOU fails to identify any algorithm disclosed in the specification for “receiving said 

authentication credentials of said one of said presence contributors to authenticate said one of said 

presence contributors,” arguing instead that no algorithm is necessary for the function 

“receiving.” In support, WSOU relies on a decision by the Federal Circuit in In re Katz 

Interactive Call Processing Patent Litig., in which the Court determined that in certain contexts, 

some functions such as “receiving” may not require disclosure of more structure than the general 

purpose processor that performs those functions. 639 F.3d at 1303 (Fed. Cir. 2011). However, 

the Federal Circuit did not stand for the broad proposition that “receiving” as a general principle 

does not ever require disclosure of an algorithm. See Id. In fact, the Court found that several of 

Katz's claims that included a means-plus function limitation that recited “processing means ... for 

receiving customer number data entered by a caller and for storing the customer number data ... 

and based on a condition coupling an incoming call to the operator terminal, the processing 

means visually displaying the customer number data” were “clearly indefinite under the 

principles of WMS Gaming, Aristocrat, and Harris,” because the claims did not disclose an 

algorithm corresponding to the do not disclose an algorithm that corresponds to the “based on a 

condition coupling an incoming call to the operator terminal” function. Id. at 1315. The court 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 42 of 49
38

noted that “Computers can be programmed to conditionally couple calls in many ways. Without 

any disclosure as to the way Katz's invention conditionally couples calls, the public is left to 

guess whether the claims cover only coupling based on particular system conditions, such as the 

availability of an operator, or are broad enough to cover any coupling in conjunction with an ifthen statement in source code.” Id. 

The claim limitation “receiving said authentication credentials of said one of said presence 

contributors to authenticate said one of said presence contributors,” requires not simply receiving, 

but additionally requires the means to authenticate said one of said presence contributors. A 

computer can implement any number of methods to authenticate a user or other device (i.e., a 

presence contributor). Thus, the claim includes the type of “narrower construction” requiring the 

processor to be a processor programmed to perform the specialized function, and disclosure of an 

algorithm is necessary to in from the public to what the claim covers. Id. Because no such algorithm 

exists in the specification, 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)

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Function: 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 

Structure: presence server 160, presence agent 

150, presence user agents 140, and 

communications network 130 

Algorithm: Not Disclosed 

Term is Indefinite 

Plain and ordinary meaning, not subject to 35 

U.S.C. § 112 ¶ 6. 

But if the Court deems this term is subject to 35 

U.S.C. § 112 ¶ 6: 

Function: 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 

Structure: multiple access presence agent with 

presence server, and equivalents thereof

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 43 of 49
39

Furthermore, if the Court deems disclosure of 

an algorithm is required: 

Algorithm: provide access by multiple ones of 

said presence contributors simultaneously to 

said presence information of said presentity, 

each of said presence contributors possibly 

having different rights and privileges to said 

presence information based on said respective 

access rules 

As discussed above, this term is subject to 35 U.S.C. § 112 ¶ 6 and is directed to a 

computer-implemented function to be performed in software, requiring disclosure of an 

algorithm for performing the function. As the parties agree on the function, the dispute reduces 

to identifying the required structure and algorithm, if any is disclosed for the recited function.

WSOU argues that the corresponding structure is limited to a multiple access presence 

agent with presence server, and equivalents thereof. Dkt. 46 at 17. This is insufficient structure 

for the recited function of 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, which would be understood to 

require a mechanism by which the presence contributors may communicate with the presence agent 

to simultaneously access the presence information. The patent describes presence server 160, 

presence agent 150, presence user agents 140, and communications network 130 as providing this 

function. The only structure disclosed in the specification for communications between the 

presence contributors and the presence agent is the communications network 130. See EX. 2 at

Fig. 1. Further, a person of ordinary skill would understand that viewing, setting, or changing 

(i.e., accessing) presence information of the presentity by a presence contributor requires a 

presence user agent such as PUA 140 that interfaces with the presence contributor and provides 

updated information to the presence agent. See EX. 2 at 3:7-8; 3:41-57; 4:37-39.

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 44 of 49
40

The claim is indefinite because the patent fails to disclose an algorithm for performing 

the function. WSOU attempts to craft its own algorithm, but it fails to identify any algorithm 

disclosed in the specification 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.” Instead, WSOU point to 

disparate and unconnected portions of the specification, including a recitation in the summary of 

the invention describing general capabilities of the multiple access presence agent (EX. 2 at 

1:63-2:2), and cites several instances in which the specification repeats some or all of the overall 

set of means terms included in claim 1 (Id. at 7:9-30; 7:61-8:22; Figs. 3 and 5). None of these 

portions of the specification discloses how the system enables 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. At most, the disclosures identified 

by WSOU restate the function. Because there is no algorithm disclosed anywhere in the 

specification, this term is indefinite. 

C. Other Disputed Terms

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

contributor” (Claims 1, 8, and 11)

Microsoft’s Proposed Constructions WSOU’s Proposed Constructions

Presentity: the entity whose presence is being 

represented 

Presentity: Plain and ordinary meaning 

Presence contributor: an entity that provides 

presence information about a presentity to a 

presence server or presence agent 

Presence contributor: Plain and ordinary 

meaning 

Here, the parties dispute what the term “presentity” means, and whether it is synonymous 

with the different term “presence contributor.” Both “presentity” and “presence contributors” 

are coined terms for concepts central to the claimed invention. The intrinsic evidence 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 45 of 49
41

demonstrates that they are not synonymous, but instead have different meanings captured by 

Microsoft’s proposed constructions. WSOU’s view, though, is evidently that the terms have the 

same scope.4

Microsoft’s proposed construction illuminates the different roles of a “presentity” / 

“presentities” and “presence contributors” in the system described by the ’550 patent, as well as 

the relationship between these distinct claim elements. A “presentity” is a person, group, thing, 

etc. (i.e. an entity) that is being represented by a presence state, while a “presence contributor” is 

a person, group, thing, etc. (i.e. an entity) that provides presence information about the 

presentity’s presence state to a presence server or presence agent. 

As an initial matter, the term “entity” in Microsoft’s proposal is not intended to narrow 

the scope of either term, but rather to capture accurately, using understandable language, just 

who or what a presentity is, as that is not a term that any juror would otherwise understand. 

“Presentity” is not a term in the ordinary lexicon – it is a coined term specifically applicable to 

the field of interactive communications relevant to the patent. On the other hand, the term 

“entity” is within the common lexicon and explains what a presence contributor actually is, as 

opposed to just what it does. 

The specification distinguishes between these two claim terms, talking about them 

separately and in their relationship to one another. For example, the ’550 Patent states that “a 

multiple access presence agent collects and stores presence information on a presentity from 

 4 WSOU states that “In other words, presentities can be anything and are without limit, so long 

as it can provide presence information indicating the presentity’s presence state.” (Dkt. 46 at 

33). WSOU then goes on to make the exact same statement regarding what a “presence 

contributor” may be: “In other words, presence contributors can be anything and are without 

limit, so long as it can provide presence information indicating the presentity’s presence 

state.” (Dkt. 46 at 34). 

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 46 of 49
42

presence contributors...” EX. 2 at 1:56-58. The specification goes on to provide examples of 

presentities, such as a room within a hotel or a user/subscriber, whose status may be represented. 

Id. at 5:31-47. By contrast, presence contributors are described as providing presence 

information indicating the presentity’s presence state to the multiple access presence agent. See

Id. The ’550 Patent further describes that “presence contributors 120c is a user-operated 

physical communications” such as a desktop phone, and notes that “when a presentity initiates or 

answers a phone call on a terminal 120c, the PUA 140c associated with the terminal 120c 

updates the presentity's presence state to ‘On the Phone.’” Id. at 3:18-4:3. According to the 

specification, then, the presentity is the who or what (i.e., the entity) that is being represented 

with a presence state in the presence server or agent, while the presence contributor is the who or 

what (i.e., entity) that provides information about the presentity’s current presence state to the 

presence server or presence agent. 

WSOU’s apparent argument that both “presentity” and “presence contributor” perform 

the same function within the claimed system is directly contrary to the intrinsic evidence. Dkt. 

46 at 33-34. Microsoft’s proposed constructions for the terms “presentity” / “presentities” and 

“presence contributors” are thus necessary to ensure the terms are understood in a manner 

consistent with the ’550 patent. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 

(1996); see also Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).

Case 6:20-cv-00458-ADA Document 48 Filed 01/29/21 Page 47 of 49
43

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-00458-ADA Document 48 Filed 01/29/21 Page 48 of 49
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-00458-ADA Document 48 Filed 01/29/21 Page 49 of 49