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KATZ v. AT & T CORP.

August 26, 1999

RONALD A. KATZ, TECHNOLOGY LICENSING, L.P., AND MCI TELECOMMUNICATIONS CORPORATION, PLAINTIFFS,
v.
AT & T CORPORATION, ET AL., DEFENDANTS.



The opinion of the court was delivered by: Lowell A. Reed, Jr., Senior District Judge.

       
                        CONCLUSIONS OF LAW REGARDING
                         PATENT CLAIM CONSTRUCTION

Ronald A. Katz ("Katz") is the inventor in a large body of patents dealing with telephonic interactive voice applications. The plaintiffs, Ronald A. Katz Technology Licencing, L.P. and MCI Telecommunications Corporation, filed this patent infringement suit against AT & T Corporation, AT & T Universal Card Services Corporation, and AT & T American Transtech, Inc., alleging that the defendants are infringing a number of Katz's patents. In total, over 400 patent claims are at issue in this lawsuit. Because of the complexity and size of the case, the Court ordered that the parties designate a set of approximately seventeen claims to be construed at a Markman hearing. The plaintiffs designated twenty claims, including Claims 33, 44, 93, 104, 117, and 192 of the 5,561,707 patent (the `707 patent), Claims 49, 50, 65, 79, 171, and 190 of the 5,684,863 patent (the `863 patent), Claim 51 of the 5,255,309 patent (the `309 patent), Claim 15 of the 4,930,150 patent (the `150 patent), Claims 17, 20, 24, and 77 of the 5,351,285 patent (the `285 patent), and Claims 4 and 15 of the 5,128,984 patent (the `984 patent).

A Markman hearing was held from through June 4, 1999, in which the parties presented expert testimony and oral argument as to the proper construction of the disputed claim language in the twenty claims at issue. The parties also submitted a series of briefs and proposed claim constructions to the Court, all of which were considered by this Court in making the claim constructions that follow. On each claim term to be construed, the parties have submitted many arguments and have pointed to many portions of the intrinsic and extrinsic record in their briefs, in their proposed claim constructions, and in their oral presentations. While the Court has considered all of the arguments and citations of the parties, I may not reiterate all of them in full for each claim term.

I. THE LAW OF PATENT CLAIM CONSTRUCTION

In general, a patent must describe the scope of the patentee's invention so as to "secure to [the patentee] all to which he is entitled, [and] to apprise the public of what is still open to them." Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (internal quotation omitted). This is accomplished through the specification of the patent, which should describe the invention in clear terms so that a person in the art of the patent may make and use the invention, and the claims of the patent, which should "particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112.

In Markman v. Westview Instruments, Inc., the Supreme Court, affirming the Court of Appeals for the Federal Circuit, held that construction of patent claims is exclusively within the province of the court to determine as a matter of law. 517 U.S. at 372, 116 S.Ct. 1384. To complete the task of claim construction, a court may draw on the canons of construction that can be sifted from the decisions of the Court of Appeals for the Federal Circuit spanning before Markman and beyond. In construing the claims of a patent, a court should consider the claim language, the specification, and, if offered, the prosecution history, which are collectively considered intrinsic evidence of the meaning of the claim terms. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir. 1995). As the public record before the Patent and Trademark Office ("PTO") upon which the public is entitled to rely, the intrinsic evidence is the most important source for determining the meaning of claim terms. See Vitronics Corporation v. Conceptronic, Inc., 90 F.3d 1576, 1582, 1583 (Fed.Cir. 1996). Under some circumstances, a court may also consult evidence extrinsic to the patent, such as technical dictionaries or expert testimony as to how those skilled in the relevant art under consideration would interpret the claims. Id.

A. CLAIM LANGUAGE

Because the scope of the rights conveyed to the patentee is defined by the claims, claim construction "begins and ends in all cases with the actual words of the claim." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.Cir. 1998). In construing the terms of a claim, "the focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean." Markman, 52 F.3d at 987. "Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning." Renishaw, 158 F.3d at 1249.

Unless otherwise compelled, a court should give full effect to the ordinary meaning of claim terms, even if the terms are broad. See Johnson Worldwide Associates, Inc. v. Zebco Corporation, 175 F.3d 985, 989 (Fed.Cir. 1999). "General descriptive terms will ordinarily by given their full meaning; modifiers will not be added to broad terms standing alone." Id.

The specification, the prosecution history, and in some situations the extrinsic evidence may confirm the ordinary meaning of the claim terms or may provide a special meaning for the claim terms. See Renishaw, 158 F.3d at 1248. Thus, once a court has determined the ordinary meaning of the claim terms, it must also consider the specification and prosecution history to determine if the patentee used any terms in a manner inconsistent with their ordinary meaning. See Vitronics, 90 F.3d at 1582.

B. SPECIFICATION

While terms are generally given their ordinary meaning, "[c]laims must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979; see also Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1466 (Fed.Cir. 1998) ("Although claims are not necessarily restricted in scope to what is shown in a preferred embodiment, neither are the specifics of the preferred embodiment irrelevant to the correct meaning of claim limitations."). The relationship between the claims and the specification is illustrated by the following pair of claim construction canons: "(a) one may not read a limitation into a claim from the written description, but (b) one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.Cir. 1998). While additional limitations may not be imported into a claim from the specification, a court may construe a limitation specifically recited in a claim in light of the specification. See Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1466 (Fed.Cir. 1998). Thus, in order to inject a definition into a claim from the written description, the claim must explicitly contain a term in need of definition. See Renishaw, 158 F.3d at 1248, 1252 (noting that passages referring to the preferred embodiment cannot be read into the claim without some "hook"). Further, claim terms should not be narrowed by the content of the specification "unless the language of the claims invites reference to those sources." Johnson Worldwide, 175 F.3d 985, 990 (noting that there "must be a textual reference in the actual language of the claim with which to associate a proffered claim construction").

The Johnson Worldwide court noted two specific situations in which a claim term may be given a definition other than its ordinary meaning: (1) if a patentee chooses to be his or her own lexicographer by explicitly setting forth the definition for a claim term, or (2) if "the terms chosen by the patentee so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used." 175 F.3d at 990. In these situations, reference should be made to the specifications to determine the meaning of the claims.

Because a patentee is free to be his own lexicographer, the specifications may serve as dictionary for certain terms in the claims. Markman, 52 F.3d at 979-80. However, in order for a patentee to assign a special definition to a claim term, he or she must do so clearly in the specification. Markman, 52 F.3d at 980; see also Renishaw, 158 F.3d at 1249 (noting that a "patentee's lexicography must, of course, appear `with reasonable clarity, deliberateness, and precision' before it can affect the claim") (quoting In re Paulsen, 30 F.3d 1475, 1480 (Fed.Cir. 1994)). "Without an express intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary meaning." York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572 (Fed. Cir. 1996); see also Vitronics, 90 F.3d at 1582 ("Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history."). Thus, if a term is used in a variety of ways by the patentee in the specification, this may be indicative of the breadth of the term, rather than a limited definition. See Johnson Worldwide, 175 F.3d 985, 990-91 (distinguishing Laitram Corp. v. Morehouse Industries, Inc., 143 F.3d 1456, 1463 (Fed.Cir. 1998) on the ground that in that case a narrow interpretation was compelled because of unambiguous language in the specification made clear that the claim language had only one interpretation).

As for the second situation discussed in Johnson Worldwide, while a court generally construes claim terms consistent with their common meaning, a "common meaning, such as one expressed in a relevant dictionary, that flies in the face of the patent disclosure is undeserving of fealty." Renishaw, 158 F.3d at 1250. Also, a court may also resort to the specifications if a claim term lends itself to several common meanings; in such a situation "the patent disclosure serves to point away from the improper meanings and toward the proper meaning." Renishaw, 158 F.3d at 1250.

C. PROSECUTION HISTORY

The third source of intrinsic evidence that a court may consider in understanding the meaning of the claims is the prosecution history. However, "[a]lthough the prosecution history can and should be used to understand the language used in the claims, it too cannot `enlarge, diminish, or vary' the limitations in the claims." Markman, 52 F.3d at 980 (quoting Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 227, 12 Otto 222, 26 L.Ed. 149 (1880)). A court also may consider the prior art cited in the prosecution history, which may contain clues as to what the claims do not cover. See Vitronics, 90 F.3d at 1583.

If a patentee takes a position before the PTO, such that a "competitor would reasonably believe that the applicant had surrendered the relevant subject matter," the patentee may be barred from asserting an inconsistent position on claim construction. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1457 (Fed. Cir. 1998); see also Cole v. Kimberly-Clark Corporation, 102 F.3d 524, 531 (Fed.Cir. 1996) (holding that the patentee was estopped from arguing that her "perforation means" encompassed "ultrasonic bonded seams" after she distinguished references that contained such seams). If a patentee distinguishes a reference on multiple grounds to the PTO, any one of these may indicate the correct construction of a term. See Gentry Gallery, Inc. v. Berkline Corporation, 134 F.3d 1473, 1477 n. * (Fed. Cir. 1998). However, "[u]nless altering claim language to escape an examiner rejection, a patent applicant only limits claims during prosecution by clearly disavowing claim coverage," that is, by making a statement that concedes or disclaims coverage of the claims at issue based on a piece of prior art. York Products, 99 F.3d at 1575.

D. EXTRINSIC EVIDENCE

A court may, in its discretion, consider extrinsic evidence in order to correctly understand and define the language of the claims. See Markman, 52 F.3d at 980. However, "[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims." Markman, 52 F.3d at 981; see also Vitronics, 90 F.3d at 1584. Extrinsic evidence may be consulted if the court is not familiar with the terminology of art in which the patent is written, but it should not be consulted to clarify ambiguity in claim terms. See Markman, 52 F.3d at 986. "Indeed where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight." Vitronics, 90 F.3d at 1584.

E. MEANS PLUS FUNCTION LIMITATIONS

Paragraph 6 of section 112 of 35 U.S.C. provides that:

  An element in a claim for a combination may be
  expressed as a means or step for performing a
  specified function without the recital of structure,
  material, or acts in support thereof, and such claim
  shall be construed to cover the corresponding
  structure, material, or acts described in the
  specification and equivalents thereof.

This provision of the patent statute permits a patentee to write a limitation in a combination claim as a means for performing a function without reciting structure, material, or acts in the limitation. See Valmont Industries, Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042 (Fed.Cir. 1993). A patentee who invokes this drafting tool is required, however, to describe in the patent specification some structure which performs the specified function. See Valmont, 983 F.2d at 1042.

If a patentee uses the word "means" in a claim, a presumption arises that he or she used the word to invoke § 112, ¶ 6. See Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed.Cir. 1999). There are two ways this presumption may be rebutted: (1) if a claim term uses the word "means" but recites no function which corresponds, or (2) if the claim recites a function but also recites sufficient structure or material for performing the claimed function. See Rodime, 174 F.3d 1294, 1302. It is also possible that a claim limitation that does not recite the word "means" may be construed under § 112, ¶ 6, despite a presumption to the contrary. See Cole v. Kimberly-Clark Corporation, 102 F.3d 524, 531 (Fed.Cir. 1996) (citing Raytheon Co. v. Roper Corporation, 724 F.2d 951, 957 (Fed.Cir. 1983)).

Even if a mechanism is defined in functional terms, such as a "filter," "brake", "clamp," or "detent mechanism," or if it does not call to mind a single well-defined structure, it may not be subject to means-plus-function analysis. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed.Cir. 1996) (noting that "[d]ictionary definitions make clear that the noun `detent' denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms" and that "[i]t is true that the term `detent' does not call to mind a single well-defined structure, but the same could be said of other commonplace structural terms such as "clamp" or "container""). In addition, a structural term need not connote a precise physical structure to those of ordinary skill in the art to avoid a means-plus-function analysis, as long as it conveys a variety of structures that are referred to by that term. See Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d 696, 704-705 (Fed.Cir. 1998) (noting that "detector" was not a generic structural term such as "means," "element," or "device" nor a coined term such as "widget" or "ram-a-fram" in deciding that use of the term "digital detector" did not subject the limitation to § 112, ¶ 6 analysis). The critical inquiry is "not simply that a [mechanism] is defined in terms of what it does, but that the term, is the name for structure, has a reasonably well understood meaning in the art." Greenberg v. Ethicon Endo- Surgery, Inc., 91 F.3d 1580, 1583 (Fed.Cir. 1996).

In determining the structure disclosed in the specification that corresponds to the means, the court should be wary of importing excess limitations from the specification. For example, if a structure is defined in the specification in a way unrelated to the recited function in the means-plus-function clause, those additional aspects of the structure should not be read as limiting the scope of the means clause. See Chiuminatta, 145 F.3d at 1308-1309 (construing a patent for an apparatus and method for cutting concrete, the court held that because the function that corresponded to the means in the limitation was supporting the surface of the concrete, structural aspects of the skid plate in the preferred embodiment that did not perform this particular function were not to be read as limiting the scope of the means clause). In addition, in construing means plus function claims, generally a court should not import a function of a working device or a preferred embodiment into the claims as part of the "means" if such a function is not part of the function recited in the claims. See Rodime, 174 F.3d 1294, 1305; see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir. 1988) ("Although the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims.").

II. CONSTRUCTION OF THE TWENTY CLAIMS PRESENTED AT THE MARKMAN HEARING

The twenty patent claims presented to the Court for construction at the Markman hearing may be categorized into the following groups: (1) Analysis Control System Claims, including Claim 51 of the `309 patent, Claims 33, 104, 117 and 192 of the `707 patent, and Claims 49, 50, 65, and 171 of the `863 patent, (2) Claims Involving Products Carrying Participation Numbers, including Claims 44 and 93 of the `707 patent and Claims 79 and 190 of the `863 patent, (3) Conditional Format Claims, including Claim 15 of the `150 patent and Claims 17, 20, 24, 77 of the `285 patent, and (4) Claims from the `984 patent, including Claims 4 and 15.

A. ANALYSIS CONTROL SYSTEM CLAIMS

The first set of claims, the Analysis Control System Claims, come from the `707, `863, and `309 patents. The text and figures of the specifications to these three patents are identical, so references to the specification in one patent are equally applicable to analysis of a term appearing in a claim in another of the three patents. The text of the analysis control system claims at issue is provided in the Appendix to this Memorandum.

In general, the `707, `863, and `309 patents describe a system which interfaces callers at remote terminals through a telephone network to provide voice prompts to the callers so that they can provide information to the system. The information from the callers may be stored in the system for processing. The content of the prompts provided by the system to the callers and the type of processing performed on the information provided by the callers is determined by a format, designed to implement, for example, an auction sale or a contest.

1. "Communication Facility"

The parties have asked the Court to construe the term "communication facility."*fn1 The plaintiffs argue that although the term does not have a common meaning to one of ordinary skill in the art,*fn2 the meaning is clear from the claim language. The plaintiffs contend that because the purpose of the communication facility in the claims is to connect callers to the interactive voice application ("the Katz system"), the kind of communication facility is inconsequential and the Court should construe the term to mean "any telephone network that enables callers to make calls." (Pls.' Brief at 44-45).

The defendants attack this proposed construction of communication facility and argue that the Court should construe the term as requiring that (1) the communication facility comprise the entire Public Switched Telephone Network ("PSTN")*fn3 and (2) the Katz system must be operated only outside the PSTN or communication facility. To support their argument that the communication facility comprises the entire PSTN, the defendants point to particular language in the specifications that they contend supports such a construction. First, the defendants point to Column 3 of the `707 patent at line 13, which provides that "[i]n the disclosed embodiment, the remote terminals T1 through Tn represent the multitude of conventional telephone terminals that are coupled to a communication facility C which may take the form of a comprehensive public telephone system for interconnecting any associated terminals T1-Tn." Because the specification indicates that the communication facility has the ability to connect any associated terminals (such as telephones), the defendants argue that the communication facility must include the entire PSTN. Similarly, the defendants argue that Katz defined communication facility as the entire PSTN in line 63 of Column 4 of the `707 patent, which provides that "DNIS capability is a function of the communication facility C (composite telephone system)." The defendants maintain that these passages of the specification indicate that the communication facility should be construed to mean the entire PSTN.

This Court concludes that the claim language does not shed much light on the scope of the communication facility; however, there is no indication from claim language itself that the communication facility must include the entire PSTN. The specification is more helpful in determining the scope of the term at issue. In Column 3, lines 55-59 of the `707 patent, Katz states that "[i]n the illustrative embodiment of the system, the communication facility C comprises a public telephone network." This indicates that the communication facility may, but is not required to involve the entire PSTN. In addition, the prosecution history of `299 patent cited by the plaintiffs, in which Katz removed the word "public" from modifying "communication facility," is consistent with this indication. The references to the specification made by the defendants do not undermine this reading of the claim language and specification and do not lend support to the defendants' proposed construction of this term. Thus, I conclude that in light of the claim language, specifications, and prosecution history presented by the plaintiffs, the term "communication facility" does not require the involvement of the entire PSTN or thus, all of its elements and processes.

To support their argument that "communication facility" is defined in the patents such that the Katz system must be operated only outside the PSTN or communication facility, the defendants point to the language of the preamble and claim limitations. The parties agree that because the terms "communication facility" and "analysis control system," which initially appear in the preamble, are referred to in the claim limitations, these terms should be considered as limitations in the claims. See Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 689 (Fed.Cir. 1990). The preamble provides for "[a]n analysis control system for use with a communication facility;" the defendants contend that this language, particularly the word "with," indicates that the Katz system, the analysis control system, is necessarily outside of the network. Further, the defendants argue that because the preamble indicates that the communication facility provides call data signals to the Katz system, this indicates that Katz was not referring to the internal routing signals that occur inside the telephone network.

Turning to the language of the claim limitations, the defendants point out that Katz used the phrase "coupled to said communication facility," which they argue indicates that the Katz system is something distinct from the communication facility because it is "coupled to" it. The defendants also contend that the limitation "interface structure coupled to said communication facility . . . including means to provide signals representative of data developed by said remote terminals and for receiving said calling number identification data and said called number identification data (DNIS) to identify one from a plurality of called numbers" indicates that the interface structure cannot be a switch inside the PSTN, because switches send DNIS, not receive it.*fn4 This, the defendants argue, is further proof that the Katz system cannot include any elements or processes which are inside the PSTN.

In addition, the defendants refer the Court to Figure 1 in the specification. First, the defendants argue that the Katz system is represented as a "dead-end" or the place at which a call terminates, not as a mechanism by which calls are connected from one person to another, as is the function of the PSTN. Second, the defendants argue that pursuant to the Code of Federal Regulations, if an aspect of the invention is represented in the figure as a rectangular box, it indicates that that aspect is not essential to the understanding of the invention, citing 37 C.F.R. § 1.83 (a). Thus, the defendants argue, the fact that the communication facility is represented in the figure as an empty box lends support to their position that the Katz system must be operated only outside the network.

Finally, the defendants point to the specification of the `707 patent at Column 6 at line 14, which provides that "individual callers would use the remote terminals T1- Tn to contact the central station D through the communication facility," as indicating that by using the word "through," Katz indicated that the Katz system must be operated only outside the PSTN.

The plaintiffs argue that the claim language is silent as to whether the Katz system must function only "inside" or "outside" the network. Further, the plaintiffs argue that there is nothing in the specification that requires that the Katz system function only outside the network. The plaintiffs maintain that although the communication facility is represented in Figure 1 as an empty box, certain parts that the defendants would consider to be "inside" the PSTN, such as the remote terminals and customer billing, are split out and shown as separate boxes in Figure 1. Thus, the plaintiffs contend that if customer billing and the remote terminals can be shown as separate empty boxes and still be "inside" the PSTN, there is no basis in Figure 1 for construing the Katz system, which is also represented by separate boxes, as "outside" the PSTN.

The Court concludes that there is no basis in the claim language, the specifications, or in Figure 1 to construe the term "communication facility" to mean that the Katz system must be operated only outside the communication facility. It appears that the essence of the defendants' argument here is that the Katz system cannot run on any of the equipment that is part of the communication facility, and thus, is "outside" of the communication facility. The Court is not persuaded that the words "for use with," "through" or "coupled to" indicates that the Katz system must be operated only outside the communication facility. The words "with," "through," and "coupled to" connote some type of relationship between two things; however, none of these terms means that the two things in the relationship cannot be considered part of the same system or entity.

Finally, the defendants argue that, claim language and specification aside, Katz clearly limited his invention to a system only existing outside the communication facility in his representations to the PTO during the prosecution of his patents. The defendants point to comments by Katz during the prosecution of the `707 patent regarding patents to DeBruyn, Riskin, Comella, and Daudelin. Specifically, the defendants point out that in an Amendment dated August 31, 1995, Katz stated that he amended his claim to recite "that processing of at least certain of the data developed by the terminals and the calling number identification data occurs in the Applicant's system" and that "[n]either DeBruyn nor Riskin teach this aspect of the Applicant's system, also neither patent teaches calling number identification data provided automatically by a communication system (for example, ANI or like signals)." (Ex. 51).

In addition, the defendants point out that in the same Amendment, Katz noted in part that Comella's system "replaces the function of an operator for certain types of calls, for example, collect calls, person-to-person calls, charge-to-third number calls and so on" and that the patent to Comella "is somewhat of background interest for its interface aspects." (Ex. 51). As for the patent to Daudelin, the defendants point out that Katz described it as "generally directed to an interface arrangement for reducing the load on telephone operators." (Ex. 51). Apparently, the defendants contend that if Katz had contemplated that his system could have operated inside the PSTN, he should have said a lot more than he did to adequately distinguish his invention from the Daudelin and Comella patents, which were inventions that were operated by the PSTN.

Whether Katz complied with his obligations before the PTO, however, is a question for another day; the question before the Court is whether Katz made any statements to the PTO that limited the scope of his claims. Considering the passages of prosecution history flagged by the defendants, the answer to that question is no: The Court concludes that the statements by Katz regarding these patents do not constitute a representation from him to the PTO that his invention could be operated only "outside" the communication facility.

Further, the defendants point to statements made by Katz to the PTO in the September 19, 1994 Supplemental Information Disclosure Statement ("IDS") during the prosecution of the `575 patent, which occurred while the application of the `707 patent was still being prosecuted. Specifically, the defendants point to a passage in which Katz referred to a patent by DeBruyn and stated in part that the patent to DeBruyn "discloses a lottery system that is integral with the `Telephone Company,'" and that in Katz' system, "the `Telephone Company' (`a communication facility') simply provides an interface, the lottery system being a separate and distinct capability." (Ex. 41). However, taking the statements highlighted by the defendants in context, Katz points out differences between his system and the DeBruyn system including that in Katz system the caller must enter "lottery and identification data," while in the DeBruyn system, the caller need not enter such information because the system is run inside the "Telephone Company" where the callers' telephone number is already known. These statements highlight that the Katz system requires that a caller enter certain data, which is not required by the DeBruyn system; the statements do not limit the physical or geographic location where the Katz system can or cannot operate.

Similarly, the defendants refer to another piece of prosecution history in which Katz discussed a patent to DeBruyn for a telephonic lottery system. (Ex. 46). In the September 30, 1994 IDS in the prosecution of the `120 patent,*fn5 Katz stated that DeBruyn was distinct from his system which received identification from a caller because the it was "integrated with the composite telephone system which could identify the subscriber's telephone number." The Court concludes that the statements of Katz in the September 19, 1994 Supplemental IDS and the September 30, 1994 IDS do not restrict or limit the term "communication facility" to mean that the Katz system must be operated only outside of it.

The defendants argue that Katz also distinguishes his system from the routing and connection of telephone calls, which are integral functions of a telephone company, thereby establishing that his system was to operate only outside the network. The defendants point to a statement made by Katz regarding a patent to Riskin in the prosecution of the `075 patent. (Ex. 40). In the Preliminary Amendment dated July 17, 1990, Katz stated that "[r]ecognizing that the Riskin patent discloses the utilization of ANI and DNIS signals to accomplish telephone routing, it is respectfully submitted that applicant's system involves entirely different philosophical considerations and structure." The defendants contend that because the Riskin patent was a system that was inside the telephone network, this statement by Katz indicates that his system was to be operated outside the PSTN. Similarly, the defendants argue that, Katz distinguished his invention during the prosecution of the `929 patent*fn6 from a patent to Riskin by stating that his invention was outside the PSTN. (Ex. 37). In the Amendment dated August 1, 1990, Katz noted that in the Riskin patent, "functions are involved that are completely distinct from applicant's system . . . . Specifically, Riskin does not disclose an interface telephone system but rather discloses a connection system." The Court concludes that in these statements, however, Katz is discussing functional differences between the Riskin system and his system, not differences in the physical or geographic location of the elements of the systems.

Essentially, the defendants are attempting in their arguments regarding "communication facility" to put a non-infringement rabbit in their hat at the claim construction stage of the case; in their arguments, they expressly seek to include any and all of their equipment, wires, switches, computers, trunks, lines, databases, and so on in the definition of "communication facility" and then establish that the Katz system cannot by definition include any of those things or run on any of that equipment because his system must be "outside" the communication facility. The result of adopting such, reasoning would be to restrict the definition of "communication facility" on the basis of who owned the computer or switch on which the Katz system was running or on the basis of the physical or geographic location of the particular computer or switch. The plain words of the patents will not support such a restricted definition.

Based on the foregoing inspection of the claim language, specification, and prosecution history, the Court construes the term "communication facility" in the Katz patents to mean: that part of a telephone network that enables a caller to connect to the Katz system. The Court concludes that there is no support for a construction of "communication facility" to require that the Katz system be operated only outside the entire PSTN nor that the "communication facility" encompass the elements or processes of the entire PSTN.

2. Application of Means-Plus-Function Analysis

The analysis control system claims contain several limitations that contain a "structure" or "means" term, such as "interface structure," "voice generator structure," and "means to provide call data signals representative of data developed by said remote terminals." While the parties agree that some of these terms are subject to means-plus-function analysis under 35 U.S.C. § 112, ¶ 6, the plaintiffs dispute the application of such analysis to other terms.

a. "Interface Structure"

The first of these terms the parties wish the Court to construe is "interface structure."*fn7 The claim limitations in which this term appears read "an interface structure coupled to said communication facility to interface said remote terminals for voice and digital communication." In some of the claims, the limitation goes on to provide that the interface structure includes "means to provide caller data signals representative of data relating to said individual callers developed by said remote terminals."*fn8 Other claims contain limitations which further provide that the interface structure includes means "for receiving said calling number identification data."*fn9

The dispute between the plaintiffs and the defendants centers around whether "interface structure" is subject to means- plus-function analysis under 35 U.S.C. § 112, ¶ 6. The plaintiffs maintain that the term does not implicate § 112, ¶ 6 and should be construed to mean "a hardware device with associated software that establishes an interactive connection between a caller's telephone and a computer system." (Pls.' Brief at 50). The plaintiffs argue that under Personalized Media Communications, LLC v. International Trade Commission, 161 F.3d 696, 704-705 (Fed.Cir. 1998), a term that is defined in terms of its function or that does not bring to mind one well-defined structure is not necessarily subject to means-plus-function analysis. In Personalized Media, the Court of Appeals for the Federal Circuit held that the term "digital detector" was not subject to means-plus-function analysis because it conveyed to one of ordinary skill in the art "a variety of structures known as detectors." Id. at 705. The plaintiffs argue that the term "interface structure" is akin to "digital detector" in that it is a sufficient recitation of structure so as to avoid the application of means-plus-function analysis. The plaintiffs argue that a specific set of structures corresponding to "interface structure" was known to those of ordinary skill in the art at the time of the prosecution of the Katz patents.

The defendants argue that the term "interface structure" is written in functional language, fails to sufficiently connote structure to those of ordinary skill in the art, and as such, it subject to analysis under § 112, ¶ 6. The defendants contend that Katz simply used the term "structure" instead of "means" to attempt to avoid the application of § 112 ¶ 6. The defendants maintain that "interface structure" is a generic term which does not inform a person of ordinary skill in the art what structure is being conveyed by the term.

Because the term "interface structure" is not drafted in "means for" form, the Court presumes that it is not subject to the requirements of § 112 ¶ 6. See Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1213 (Fed.Cir. 1998). The critical factor in determining whether a term in a limitation which does not invoke "means for" language is subject to means- plus-function analysis despite the presumption to the contrary is whether the term brings to mind a set of structures to those of ordinary skill in the art, and not whether the term is written in functional language. See Personalized Media, 161 F.3d at 704-705. To determine whether this term would connote sufficient structure to those of ordinary skill in the art, this Court must refer to references in the computer telephone field contemporary with the prosecution of the Katz patents. See Greenberg, 91 F.3d at 1583 (consulting dictionaries to determine that the term "detent" denoted a device generally understood to those in the mechanical arts).

In an article in the AT & T Technical Journal regarding the Conversant 1 Voice System,*fn10 "trunk interface units" are described as connecting incoming trunks from a central office in the telephone network, and "line interface units" are described as initiating or receiving calls over ordinary telephone lines. (Ex. 366). In an 1985 article entitled "The AT & T Multi-Mode Voice SystemsFull Spectrum Solutions for Speech Processing Applications," the authors refer to "telephone interface units (either line or trunk circuits)" as being a component of a basic system for speech processing applications using the telephone network and centralized databases. (Ex. 358). Other references in the record indicate that "interface structure" connoted structure to those of ordinary skill in the art: Exhibit 355, an article regarding Periphonics Voicepac, describes a particular brand of device used as an interface; Exhibit 405, a 1986 article on the Conversant 1 Voice System, discusses the function of line and trunk interfaces; Exhibit 250, the 4,866,- `756 patent to Crane et al., incorporates a "telephone interface component" to transmit audio response signals; and Exhibit 235, the 4,797,911 patent to Szlam et al., incorporates "trunk interface units" into its customer account online servicing system.

One technical dictionary cited by the plaintiffs was helpful in assisting the Court determine what "interface structure" meant to those in the art. In the Dictionary of Computing and New Information Technology by A.J. Meadows, et al. (1982), the term "interface" as defined as being "[u]sed as a general term to describe the connecting link between the two systems. Most frequently refers to the hardware and software required to couple together two processing elements in a computer system." (Ex. 481).

While the testimony of the experts at the Markman hearing is not as weighty as prior art and technical references in determining the state of the art at the time of the prosecution of the Katz patents, it is consistent with the above references in indicating that "interface structure" had meaning and brought to mind a set of structures to those in the field. See Morganstein Testimony, Transcript Volume 1 at 173, line 24 to 176, line 2 (testifying that the term "interface structure" would have had meaning to a person of ordinary skill in the art who had read the Katz patents and would have brought to mind a range of structures such a person could have used to build the Katz inventions); Larky Testimony, Transcript Volume 3 at 64 lines 12- 15 (testifying that he recognized that the term "interface structure" referred to "some physical structure" but not a specific structure).

Based on the above references and expert testimony, the Court concludes that although the term "interface structure" is written in functional language, the limitation sufficiently connotes structure such that § 112, ¶ 6 does not apply. That is, I conclude that, based on the cited prior art, references, and testimony of the experts at the Markman hearing, the term "interface structure" would have called to mind a specific set of structures to a person of ordinary skill in the art such that such a person would be able to build the Katz inventions.

Having concluded that the term "interface structure" is not subject to § 112, ¶ 6, the Court must construe the meaning of the term according to the regular rules for claim construction. The meaning of "interface structure" to those of ordinary skill in the art at the time has been discussed above. In addition, in Column 4, line 52 to Column 5 line 15 of the `707 patent, Katz discusses the function and components of the interface structure and states that "the interface 20 incorporates modems, tone decoders, switching mechanisms, DNIS and ANI capability (call data analyzer 20a) along with voice interface capability" and that the "interface 20 provides the connection of the first lines to a switch 21 which are in turn coupled to first function units, or processors PR1 to PRn." This description of the interface in the specification is consistent with the ordinary meaning of the term "interface structure" to those of skill in the art. Based on the foregoing, I construe the term "interface structure" in the Katz patents to mean "the hardware and software required to connect the processors upon which the Katz system is running to the communication facility such that information from the communication facility and the remote terminals may be provided to and received by the Katz system." For the claims listed in footnote 8, supra, the Court construes the term "interface structure" to also include the means to perform the specific function of providing caller data signals representative of data developed at the remote terminals. For the claims listed in footnote 9, supra, the Court construes the term "interface structure" to also include the means to perform the specific function of receiving calling number identification data.

b. "Means to Provide Caller Data Signals" and "Means to Receive Calling
   Number Identification Data"

Some of the limitations beginning with the term "interface structure" contain terms drafted in "means for" language, including "means to provide caller data signals" in Claims 51 of the `309 patent, Claims 104 and 117 of the `707 patent, and Claims 49, 65, and 171 of the `863 patent, and means "to receive calling number identification data" in Claims 104, 117, and 192 of the `707 patent and Claims 49, 65, and 171 of the `863 patent.*fn11 Both sides agree that these terms are subject to means-plus-function analysis. The plaintiffs argue that the structure that corresponds to the "means" in "means to provide caller data signals" is the Interface 20 in Figure 1 or Interface 1A1 through 1AN and 1B1 through 1BN in Figure 9 of the `309, `707, and `863 patents. The plaintiffs argue that the structures in Figure 1 that correspond to the "means" in "means to receive calling number identification data" are the Interface (20) and the Call Data Analyzer (20a). The defendants argue that the "means" in both of these means-plus-function limitations corresponds to the structures referenced by the plaintiffs but also corresponds to the Automatic Call Distributor ("ACD").

The Court concludes that the phrases "means to provide caller data signals" and "means for receiving said caller number identification data" are written in "means for" form, do not recite sufficient structure in the claim language, and are subject to analysis under § 112, ¶ 6. According to the specification of the `707 patent at Column 4, lines 28-31, the ACD functions to "queue incoming calls for connection to a lesser number of lines." The ACD does not fulfill and is not necessary to the function of providing call data signals or receiving calling number identification data and thus does not correspond to the "means" in those limitations. The Court concludes that the structure disclosed in the patents that corresponds to the "means" in the "means to provide caller data signals" is the Interface 20. The Court concludes that the structures disclosed in the patents that correspond to the "means" in "means for receiving calling number identification data" are the Interface 20 and the Call Data Analyzer 20a.

c. "Voice Generator Structure"

The term "voice generator" appears in several of the analysis control system claims at issue, and the limitations containing this term read "voice generator structure coupled through said interface structure for actuating said remote terminals as to provide vocal operating instructions to said individual callers."*fn12 The parties agree that the term "voice generator structure" is not subject to means-plus-function analysis because the term connotes a specific range of structures that correspond to the term to those of ordinary skill in the art. The Court concludes that the plain meaning of the term "voice generator" indicates a structure that can produce vocal sounds. The specification of the patents in which this term is found describes the voice generator structure as "a voice origination apparatus may prompt individual callers who (after qualification) provide select digital data to develop a record for further processing." Column 2 lines 4 to 8 of the `707 patent. The specification also provides that the voice generator is incorporated in the interface, Column 4, lines 55 to 58 of. the `707 patent, and that "recorded voice messages prompt callers to provide data by actuating the alphanumeric buttons" on their telephones, Column 1, lines 45 to 47 of the `707 patent. Based on the term's ordinary meaning, the claim language, and the specification, the Court concludes that "voice generator" means: a device for generating vocal instructions or prompts to individual callers at the remote terminals.

d. "Record Structure"

The term "record structure" begins limitations in many of the Analysis Control System Claims at issue; the limited in Claim 51 of the `309 patent reads "record structure, including memory and control means, connected to receive said caller data signals from said interface structure for updating a file and storing digital caller data relating to said individual callers provided from said digital input means through said interface structure."*fn13

The plaintiffs argue that "record structure" is not subject to means-plus-function analysis because the term connotes structure to those of ordinary skill in the art. Morganstein testified at the Markman hearing that a person of ordinary skill in the art who had read the Katz patents would have understood "record structure" to refer to a set of structures; Morganstein testified that the record structure would correspond to one of the building blocks of interactive voice applications, including processors, memory, and software. (Transcript volume 1 at 181-182). Larky did not disagree with Morganstein and testified that "record structure" would have connoted structure to those in the field. (Transcript volume 3 at 67-68). The plaintiffs also argue that the phrases "including memory"*fn14 and "connected to receive said caller data signals from said interface structure" are additional structural descriptions of record structure in the claims which support their position that the term does not implicate § 112, ¶ 6. The plaintiffs' proposed construction of this term is "a hardware device with associated software, including memory and control means, used to store information." (Pls.' Appendix at 132).

The defendants argue that "record structure" is subject to § 112, ¶ 6 because the term is defined by the function it performs — accessing a file and storing data- and because it lacks a sufficiently definite structure to those of ordinary skill in the art. The structures that correspond to this term, the defendants argue, are the Processing Unit 92, Memory 98 with storage cells C1 through Cn in Figure 4, and the required wiring to connect these structures together. The defendants argue that "record structure" also corresponds to the required software for performing the disclosed functions. The defendants contend that the only software programs disclosed in the specifications are in the context of the specific "formats" described by Katz, such as game shows, lotteries, and auctions.*fn15

Based on contemporary technical dictionaries and the testimony of the experts, the Court concludes that the term "record structure" is not subject to § 112, ¶ 6 because the term would have connoted sufficient structure to those of ordinary skill in the art. The Court construes the term "record structure" to mean: computer hardware and software required to receive data signals, update files, and store information.

The limitations containing the term "record structure" provide that the record structure includes memory and "control means . . . for accessing a file." The parties agree that "control means" is subject to § 112 ¶ 6. The plaintiffs point to the Processing Unit 92 and Memory 98, including cells C1 through Cn in Figure 4 or Processors PR1 through PRn in Figure 1 as the structures that correspond to "control means." The plaintiffs contend that an alternative structure for control means disclosed in the patents is a microcomputer or microprocessor, such as the Central Processing Unit 251 in Figure 9, programmed to perform the disclosed functions.

The defendants agree that the term "control means" corresponds with the structures the plaintiffs have identified, but the defendants contend that the term also must include the associated wiring and software.

The first step in means-plus-function analysis is to identify the function performed by the means; here, the function of the "control means" is to receive calling number identification data, to access a file, and to store data relating to certain of said individuals callers. The Court concludes that the patent discloses that the control means correspond to the Processing Unit 92 and Memory 98, including the cells, C1 through Cn in Figure 4 and the Processors PR1 through PRn in Figure 1. See Column 16, lines 24-28, and 44-46 of the `707 patent and Column 18, lines 21-25 of the `707 patent. In addition, "control means" corresponds to the software that enables these structures to perform the functions of receiving and storing data and accessing files. The Court concludes that the control means also correspond to a microprocessor, such as the Central Processing Unit 251 in Figure 9, programmed to perform the disclosed functions, as such a structure can also perform the disclosed functions of the control means. See Column 5, lines 12-33, Column 9, lines 59 to 67, and Column 21, lines 9-20 of the `707 patent.

The core dispute between the parties in relation to the record structure limitations is over the meaning of the term "accessing." The plaintiffs argue that the term "accessing" includes anything a computer can do to a file, such as creating or opening records or storing additional information entered by callers. The defendants argue that the term "accessing" does not encompass deleting a file or creating or initiating a file because a file must exist before it can be "accessed." The defendants point to passages of the specification in which the ideas of updating a file are distinct from creating a cell in memory in the first instance. See Column 12, line 63- 65, Column 16, lines 29-32, and Column 17, lines 29-30 of the `707 patent. Thus, they contend that the term "accessing" must mean retrieving a file that already exists.

In Claim 51 of the `309 patent, Katz recites a "record structure, including memory and control means, . . . for updating a file." This indicates to the Court that the use of the word "accessing" in a similar limitation in another claim connotes a different meaning. Further, although Katz describes updating files and assigning cells in memory as different functions in the specification, there is nothing in the specification that indicates that the term "accessing" could not encompass both of those functions.

Webster's Dictionary defines the verb "access" as "to get at, gain access to." Addenda to Webster's 3rd New International Dictionary at 55a (1986). As a noun, the term is defined as "permission, liberty, or ability to enter, approach, communicate with, or pass to and from" or "freedom or ability to obtain or make use of." The Court concludes that the term "accessing" means in the context of the Katz patents: gaining or obtaining the ability to enter or make use of files. The Court further concludes that the term "accessing" in the context of the Katz patents does not delineate or restrict the types of functions that may be performed on the files once they are accessed, such as updating files, creating new files, or deleting files.

e. "Qualification Structure"

"Qualification structure" appears in many of the Analysis Control, System Claims, and the limitations in which this term appears vary from claim to claim.*fn16 Claims 104 and 117 of the `707 patent and Claim 171 of the `863 patent include the broadest limitation including the term, providing for a "qualification structure controlled by said record structure for controlling access to said system by said individual callers." The other limitations containing this term vary on how and on what basis access to the system is controlled.

The plaintiffs argue that this term is not subject to means-plus-function analysis because the term "qualification structure" was well known to those of ordinary skill in the art of building interactive voice applications. The plaintiffs contend that "qualification structure" would have brought to mind a computer processor and its software programs to those of skill in the art.

The defendants argue that this term is subject to means-plus-function analysis because it is written in functional terms and has no meaning to those of ordinary skill in the art without more information than is provided in the claim language. The defendants argue that the term does not escape application of § 112, ¶ 6 because it calls to mind a computer processor and its programs, as plaintiffs contend. The defendants argue that the structure in Figure 4 that corresponds to this term is the Qualification Unit 93, the Processing Unit 92, the Memory 98, and the software required to qualify callers. See Column 6, line 56 to Column 7, lines 36 and Column 16, lines 19-31 of the `707 patent. The defendants contend that the only software that is disclosed in the patents is in the context of the specific formats discussed by Katz, such as game shows, lotteries, and auctions.

The Court concludes that although the term "qualification structure" does not include the term "means," it is subject to § 112, ¶ 6. "Qualification structure" is written in functional terms and the Court is not convinced that it would not have brought to mind sufficient structure to a person of ordinary skill in the art without further reference to the specification. The function performed by the "qualification structure" is controlling access to the Katz system by individual callers. The structures disclosed in the specification that perform this function are the Qualification Unit 93 and the Processor 92 in Figure 4.*fn17

The qualification structure limitations raise additional construction issues. In Claims 49 and 50 of the `863, the qualification structure controls access to the Katz system "based on at least two forms of distinct identification including caller customer number data and at least one other distinct identification data element consisting of personal identification data." The parties agree that a "caller customer number" is a number that is assigned to a merchant's own customer; however, the defendants contend that the caller customer number cannot be a credit card number because it is not assigned from a vendor to a customer. The defendants point to Column 11, lines 6-7 of the `863 patent, which describes the customer number in a mail order format as the number found on the customer's catalog. Thus, the defendants argue the customer number cannot be a credit card or charge number because such a number does not identify the caller as a customer of the merchant. In Column 11, lines 19-22 of the `863 patent, Katz states that a caller's customer number may be stored along with his credit card number and expiration date; the defendants argue that this indicates that a customer number and a credit card number are two separate items.

The defendants also argue that the second piece of identification data cannot be a personal identification number (PIN) or an expiration date from a credit card because such numbers are not unique to the individual, or "personal," without the corresponding credit card number or calling card number. The defendants point out that in Column 11, lines 1-5 and 19-22 of the `863 patent, Katz describes "other distinct identification data" in the mail order format as both a credit card number and its expiration date.

Along with the specification, the defendants point to the prosecution history of the `707 patent as support for their construction of "caller customer number data" and "other distinct identification data." In the May 8, 1995 Office Action during the prosecution of the `707 patent, the examiner rejected pending Claim 33, which provided for a "record structure with means for recording an identification card number and at least one other distinct identification data element," as unpatentable over the `554 patent to Asmuth. The examiner noted that Asmuth contained the "record structure" of Katz's claim and taught "that input `caller data signals' may include a telephone credit card number (in the claim `identification card number') . . . and a `distinct identification data element' consisting of `personal identification data' (in the patent a `PIN')." Katz subsequently amended what was then Claim 33 to recite a qualification structure in a form similar to the claims at issue. See August 31, 1995 Amendment. In his comments to that amendment, Katz stated that he added a "qualification structure" requiring two forms of distinct identification including a caller's customer number to qualify a caller, and that the addition of the qualification structure and the fact that Asmuth stored data to define the virtual private network while his invention stored data developed by the callers rendered the Katz invention distinct.

As for the term "caller customer number data," the claim language does not support the narrow construction proposed by the defendants. That is, there is no support in the claims for the notion that this form of identification could not be a credit card or other charge number if such a number identified the caller as a customer of a particular merchant or vendor. The mention in the specification of storing the customer number as distinct from the credit card number was given as an example; similarly, the example of the customer number located on a customer's catalog was not provided as a requirement for a customer number.

The second term, "distinct identification data element consisting of personal identification data," is not subject to the narrow construction proposed by defendants either. The word "distinct" indicates that this second form of identification must be different than the first form of identification for each caller. The claim language also requires that this second piece of information contain something "personal" by way of identification, that is, data that is assigned to a person or identifies a person as an individual as opposed to a customer of a merchant or vendor. Nothing in the claim language instructs that this second piece of identification cannot be a personal identification number (PIN) or an expiration data from a credit card as long as the data identifies the individual. The prosecution history cited by the defendants does not require that the Court adopt the defendants' construction either; Katz did not state in the Amendment that his system would not accept a PIN as a form of personal identification.

Thus, based on the claim language, the Court construes "caller customer number data" to mean: a number assigned to a customer by a vendor or merchant or recognized by a vendor or merchant for the purpose of identification of the customer. The Court construes "other distinct identification data element consisting of personal identification data" to mean: data that identifies a caller as an individual which is distinct from customer number data.

f. "Means for Selecting"

The parties agree that the term "means for selecting" is subject to means- plus-function analysis. This term appears in Claim 104 of the `707 patent, in dependant Claim 103. The function, which is set out in the claim language itself and described in Column 10, lines 34 through 43 of the `707 patent, that is performed by the "means" is selecting a specific one of a plurality of formats based on the called number. In Column 4, lines 52 through 59, the specification of the `707 patent discloses that the "interface 20 incorporates. . . DNIS . . . capability (call data analyzer 20a)." As explained in line 62 of the same column through line 2 of Column 5, "DNIS" is a function of the communication facility which provides data indicating the called number and may be used with the interface 20 and call data analyzer 20a.

The defendants contend that the Automatic Call Distributor AC1, the Interface 20, and the Switch 21 correspond to the "means" in "means for selecting." However, the specification at Column 6, lines 37 through 48 indicates that the ACD merely receives the call signal from the caller and "associates" the called number through the interface and the switch to the specific processor that contains the particular format associated with called number. Similarly, in Column 10, lines 31-43, the specification discloses that the communication facility couples the caller at the remote terminal to the correct processor to run the format selected by the called number through the ACD, the interface, and the switch. These passages do not specify which of these structures is performing the specific function of selecting the format based on the called number, as opposed to connecting the caller to the correct processor once the format has been selected.

The portion of the specification cited above from Columns 4 and 5 more clearly identifies that the interface and the CDA are the structures which perform the disclosed function. Thus, the Court concludes that the disclosed structure that corresponds to the "means" in "means for selection" is the Interface 20 and the Call Data Analyzer 20a in Figure 1. The ACD and the switch do not correspond to the means.

g. "Switching Structure"

The term "switching structure" appears in Claims 49 and 50 of the `863 patent, and in context reads "switching structure coupled to said interface structure for switching certain select ones of said individual callers at said remote terminals to any one of a plurality of live operators wherein said live operators can enter at least a portion of said caller data relating to said select ones of said individual callers through interface terminals, which is stored in said record structure."

The plaintiffs contend that this term is not subject to means-plus-function analysis because the term "switch" is well known to those experienced in computer telephony and it brings to mind structure to those of skill in the art. The plaintiffs argue that switching structure should be defined as "hardware with associated software used to route calls." (Pls.' Appendix at 164).

The defendants contend that the term "switching structure" is subject to analysis under § 112, ¶ 6 because the term lacks a sufficiently definite structure such that one of skill in the art would not know what structure to build without more information than is provided in the claim. The defendants argue that in the passages that discuss the switching structure, including Column 5, lines 51-55; Column 7, lines 13- 17; Column 10, lines 45-52; and Column 11, lines 8-12 of the `863 patent, Katz did not disclose structure to perform the entire function performed by the means, which is switching callers to a live operator, where the live operator enters caller data for storage in the record structure.

During the Markman hearing, all of the experts referred to "switches" in their discussion of computer telephony at the time of the Katz patents. Similarly, the term "switch" was often used in contemporary references and prior art referred to by the parties at the hearing. The Court concludes that, based on these examples of the state of the art and the testimony of the experts, the term "switching structure" does not implicate § 112, ¶ 6. The Court concludes that the term would have connoted a specific set of structures to those of ordinary skill in the art. Thus, based on the claim language and the specification, the Court construes the term "switching structure" to mean: a device including hardware and associated software that can switch or route telephone calls or signals from one location or connection to another.

h. "Record Testing Structure"

The term "record testing structure" appears in Claim 192 of the `707 patent. The limitation in full provides for a "record testing structure connected to receive and test said caller data signals including said calling number identification data and said caller personal identification data against previously stored calling number identification and caller personal identification data."

The plaintiffs argue that this term is not subject to means-plus-function analysis because it would have called to mind sufficient structure to those of ordinary skill in the art. The plaintiffs propose that the Court construe "record testing structure" to mean "a hardware device, with associated software, used to store information and implement tests based on that information." (Pls.' App. at 155).

The defendants argue that "record testing structure" is subject to § 112, ¶ 6. The structures the defendants contend corresponds to the function performed by the record testing structure are the Processing Unit 96, the Qualification Unit 93, the Buffer Storage 97, either the Look-up Table 99 or the Use Rate Calculator 100, and the logic within the qualification unit to receive information regarding the calling number from the interface. Further, the defendants argue that the structure corresponding to "record testing structure" cannot be any computer with any type of memory; if this were the case, the defendants argue, § 112, ¶ 6 would have no meaning. The defendants contend that the processing unit must be programmed to receive decoded personal identification data from the callers and to test it against stored data for the callers.

The Court concludes that "record testing structure" implicates § 112, ¶ 6 because "record testing" is clearly a functional term and it does not connote any structure for performing the function of receiving and testing said caller data signals including said calling number identification data and said caller personal identification data against previously stored calling number identification and caller personal identification data. The Court concludes that the structures disclosed in the specification that correspond to "record testing structure" are the Processing Unit 96, the Qualification Unit 93, and the Look-Up Table 99 in Figure 4. See Column 10, lines 1 through 25 of the `707 patent. Contrary to the defendants' contentions, the described functions of the Use Rate Calculator 100 and the Buffer Storage 97 in Column 10, lines 1 through 25 of the `707 patent are not required to perform the function of receiving and testing signals against stored data called out in the claim. Thus, these structures do not correspond to record testing structure.

3. "Processing"

The next term the parties presented to the Court for construction from the Analysis Control System patents is "processing." In Claims 104 and 117 of the `707 patent, the term appears in context as "means for processing at least certain of said data developed by said terminals and said calling number identification data relating to certain select ones of said individual callers." In Claim 192 of the `707 patent, the terms appears in context as "analysis structure for receiving and processing said caller data signals under control of said record testing structure." The final analysis control system claim at issue in which "processing" appears reads "means for processing at least certain of said data developed by said remote terminals relating to certain select ones of said individual callers." Claim 171 of the `863 patent.

The parties agree and the Court concludes that the phrase "means for processing" is a means-plus-function limitation subject to § 112, ¶ 6. The structures corresponding to the "means" in "means for processing" include the Processing Unit 92 in Figure 4, the Central Processing Unit 251 in Figure 9, or the Processors PR1 through PRn in Figure 1.

The defendants argue that the term "analysis structure" in "analysis structure for . . . processing" is also subject to means-plus-function analysis. To support their position, the defendants contend that in the `739 patent, which shares the same specification as the `707, `863, and the `309 patents, Katz used the term "analysis means" in limitations similar to the limitations which contain "analysis structure." The plaintiffs contend that "analysis structure" had meaning to those in the art and connoted computer hardware and software used to analyze data, such as a processor. (Pls' App at 160-61). The Court concludes that the term analysis structure is written in functional language and does not connote sufficient structure to avoid the application of § 112, ¶ 6, despite the presumption to the contrary. The function of the analysis structure in the terms of the claim language is "receiving and processing said caller data signals under control of said record testing structure." The structures that correspond to "analysis structure" are the same as those that correspond to the "means" in "means for processing," i.e., the Processing Unit 92 in Figure 4, the Central Processing Unit 251 in Figure 9, or the Processors PR1 through PRn in Figure 1.

The core dispute between the plaintiffs and defendants is whether "processing," as used in "means for processing" or otherwise in the patents, requires a specific type of processing. The defendants contend, in the context of their means-plus-function arguments, that the structures that correspond to the "means" in "means for processing" also include the software that performs the function of processing, and because the only type of processing disclosed in the specification is statistical analysis to isolate a subset of callers in the context of the specific formats disclosed, the computer must be programmed with software that performs this particular kind of processing. Specifically, the defendants argue that all of the disclosed formats in the specification, including a health poll format, mail order format, instant lottery format, auction sale format, television game show formats, and television poll format, require the use of statistical analysis to isolate a subset; thus, they argue, "processing" and "statistical analysis" are synonymous. The defendants also argue that if the term "processing" is given a broad, unlimited meaning, it would render other limitations that call out specific functions of a computer surplusage, such as "accessing" a file, "storing" data, and "testing" data.

The plaintiffs argue that the defendants' proposed construction of "processing" has no support in the claim language, and that the defendants are attempting to define the function of "processing" by importing structural limitations from the specifications. The plaintiffs argue that the term should be given its ordinary meaning, which is "performing some operation or sequence of operations on data and/or telephone calls." (Pls.' Appendix at 7).

The term "processing," even as part of the phrase "means for processing," is not subject to means-plus-function analysis, so an immediate resort to the specification for meaning is not appropriate unless there is some "hook" in the claim language on which limitations from the specification may be hung. See Renishaw, 158 F.3d at 1252. Thus, if the term "processing" in the context of the claim language had a common, ordinary meaning to those of ordinary skill in the art, that meaning is the proper construction of the term, even if it is broad. See Johnson, 175 F.3d 985, 989.

Contemporary technical dictionaries indicate to the Court that "processing" had a broad meaning to those of skill in the art for some time. In the context of these claims it is clearly implied that the processing is being performed on data. The Standard Dictionary of Computers and Information Processing by Martin H. Weik (1969) defines the verb "process" as follows: "In data processing, to handle, manipulate, or perform some operation or sequence of operations on data in accordance with a specified or implied algorithm, usually as a series of discrete steps, including operations such as compute, assemble, compile, interpret, generate, translate, store, retrieve, transfer, select, extract, shift, search, sort, merge, transliterate, read, write, print, erase, and punch. The processing usually results in a solution to a problem." (Ex. 458). In the Computer Dictionary, by Charles J. Sippl (1966), the term "process" is defined as a "generic term that may include compute, assemble, compile, interpret, generate, etc." (Ex. 498). In the Dictionary of Computing and New Information Technology, by A.J. Meadows et al. (1984), the term "data processing" is defined as including "all clerical, arithmetical and logical operations on data. Data processing in the context of information technology always implies the use of a computer for these operations." (Ex. 483).

The claim language also shows that the term "processing" does not by itself indicate statistical analysis to isolate a subset of callers. Many claims, dependent and independent, in the `707, `863, and `309 patents specifically call out processing to isolate a subset of callers. For example, Claim 169 of the `707 patent specifically calls out processing to isolate a subset of callers. Claim 174 of the `863 provides for "subsequent" processing that isolates a subset of callers; however, Claim 171, upon which Claim 174 depends, does not require such a parameter on the initial processing. Similarly, Claim 181 of the `863 provides for "processing . . . responsive to said approval signals." Claim 185 of the `863 patent, which is dependant on Clam 181, specifically provides for processing to isolate a subset callers. The fact that "processing" is called out in some claims, and then specifically "processing to isolate a subset of callers" is called out in other claims, some of which are dependant on the claims that call out "processing" generally, indicates that the independent claims which contain the term "processing" do not necessarily require that the processing perform statistical analysis to isolate a subset of callers or data. See Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1306 (Fed.Cir. 1999). If the term "processing" were given the limited scope explicitly called out in the dependent claims, those claims would be rendered superfluous, a result that should be avoided if the claim language will allow under the doctrine of claim differentiation. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.Cir. 1991).*fn18

There is nothing in the specifications that requires the Court to alter the broad meaning of "processing" conveyed in the claims, even though the subject of statistical analysis to isolate a subset of callers is repeatedly discussed. The name of the patents under consideration is "Telephonic -Interface Statistical Analysis System." At several points in the specification, Katz describes his invention generally or one of the formats generally as performing statistical analysis to isolate a subset of callers. See Column 1, line 58-67 of the `707 patent (providing that "[i]n general, the present invention comprises a telephonic-interface system and related process . . . in a variety of different interface formats or programs, as to . . . statistically analyze acquired data, as in combination and is association with external data (time independent), and accordingly to isolate a subset of the callers with variable identification"); Column 2, line 22-26 of the `707 patent (providing that "in accordance with various formats, acquired data is processed in statistical relationship, or in relation to applied external data"); Column 5, lines 53- 55 of the `707 patent (providing that "[i]n general, the processing evolves a subset (at least one caller) the members of which may be verified or confirmed"); Column 21, lines 33-38 (providing that "[i]n view of the above explanation of exemplary systems, it will be appreciated that other embodiments of the present invention may be employed in many applications, to accumulate statistical data, process such data, and define subsets of callers of concern").

It is no surprise that Katz discussed statistical analysis to isolate a subset of callers in the specifications to the `707, `863, and `309 patents because he specifically called out this function in some, but not all, of the claims in those patents. Conversely, there is no mention in the specifications to the `285 and `150 patents of "statistical analysis" or "isolating a subset of callers" because none of the claims in those patents specifically call out such processing, even though the term "processing" appears in the claims of those patents. While the specifications of the `707, `863, and `309 patents call out several embodiments of the Katz invention in which processing is performed to isolate a subset of callers through statistical analysis, not all of the claims that contain the broad term "processing" require this limitation. Whether, as defendants argue, Katz's claims are broader than his disclosure in the specifications of his patents, is a question for another day and does not alter the construction of "processing," a term that clearly had a broad and common meaning to those of ordinary skill in the art.

The portions of the prosecution history highlighted by the defendants do not conflict with the common understanding of "processing." During the prosecution of the `968 patent, from which the patents-in-suit descended, Katz distinguished his invention from a collection of prior art in part on the basis that his invention variously incorporated "(1) personal participant selectivity, (2) participant record development and (3) analytical inter-related data processing with respect to developed records." (Ex. 33, March 2, 1988 Amendment at 14). The defendants argue that this statement by Katz indicates that all of his claims, including pending Claim 37 which did not explicitly call out "statistical analysis to isolate a subset," incorporate statistical analysis or "inter-related processing." However, pending Claim 38, which was dependent on Claim 37, added the specific limitation of "processing said statistical data as to isolate a subset of said individual callers." Katz's assertions during the prosecution of the `968 patent that his invention variously incorporated three elements does not require, and this Court will not, import the limitation of "analytical inter-related data processing" or "statistical analysis to isolate a subset" into the definition of "processing" in claims of the `968 patent, or of any of the patents at issue in the Markman hearing.

During the prosecution of the `923 patent, which has the same specification as the `707, `863, and `309 patents, Katz attempted to distinguish his invention from a patent to Riskin by stating that the Riskin patent did not "suggest any interrelated processing between callers, nor are processing files formed other than merely to accommodate billing." (Ex. 38). In an Appeal Brief dated September 11, 1992 during the same prosecution, Katz described his invention as systems that "statistically acquire data, as in combination with and in association with external data (time independent), and accordingly isolate a subset of the callers with verifiable identification." (Ex. 38). Similarly, in the Information Disclosure Statement dated January 31, 1996 at 13 during the prosecution of the `185 patent, Katz informed the PTO that "[i]n various applications, Applicant's inventive systems have utilized an operation of processing data to isolate a subset of callers. In a refined form, the operation involves processing data from callers in combination to isolate a select subset of the callers by `interrelated' processing." (Ex. 56). These statements by Katz indicated that his patents suggest or include interrelated processing or statistical analysis to isolate a subset of callers, which is clear by the claims which explicitly call out this function. However, none of these statements by Katz indicates that any particular claim includes this type of processing or that all processing suggested in his patent is of this type.

Based on the foregoing, the Court construes the term "processing" to mean: manipulation of data which performs some operation or sequence of operations on the data.

4. "Format"

The next term presented to the Court for construction is "format." This term appears in many of the claims at issue in the Markman hearing. For example, Claim 104 of the `707 patent provides for "[a] system according to claim 103, wherein said called number identifies a specific one of a plurality of operating formats for interface." Claim 192 of the `707 patent provides for "[a]n analysis control system according to claim 191, wherein said select called number (DNIS) identifies a select format from a plurality of distinct operating formats."

The plaintiffs contend that the term "format" as used in the patents had a common meaning to those of ordinary skill in the art, and they ask the Court to define "format" as "a computer program, including instructions and/or pre-recorded messages, for providing a service to callers." (Pls.' Appendix at 7).

The defendants argue that although the term "format" only explicitly appears in some of the claims, the concept of "format" is implicit in all of the claims and corresponds to the "analysis control system" that is called out in the claims under consideration. Arguing that the term is imprecise and ambiguous without reference to the specifications, the defendants contend that "format" is defined by Katz in the specification as analysis that isolates a subset of callers and should be limited to include only the seven formats disclosed in the specifications, including mail order, auction, health poll, television game show, television game show requiring participation numbers, lottery, and television poll formats. Alternatively, the defendants argue that if the Court does not limit "format" to the seven disclosed embodiments, it should define "format" by common threads present in all the formats disclosed; for example, the defendants contend that a format must include a data acquisition phase in which callers enter or are assigned data for processing, and a processing phase in which that data for multiple callers is statistically analyzed with like data for other callers or with common external data to isolate a subset of callers participating in the format.

Construction begins with the claim language, and the language here is instructive. Considering Claim 192 of the `707 patent, which is quoted above, it is clear that "analysis control system" and "format" are not the same concept, as the claim includes both terms and indicates that the format is only a part of the analysis control system.

The language of other claims which were not designated for the Markman hearing supports a construction of format that does not require statistical analysis and is not limited to the seven disclosed embodiments of the specifications. In some claims, Katz specifically limited the format in a claim to a particular type of format For example, Claim 42 of the `707 provides for a "promotional format," Claim 45 of the `863 patent provides for an "order format," Claim 46 of the `863 provides for a "television initiated mail order operation," and Claim 56 of the `863 provides for a "merchandising format." The fact that these particular formats are called out in some of the claims indicates that the term "format" alone is not limited to any particular format or set of formats.

The specifications of the patents do not indicate that "format" must include statistical analysis or be limited to the disclosed embodiments. Although. the Background and Summary of the Invention in the specifications to the `707, `863, and `309 patents describes the invention as generally performing certain functions, including statistically analyzing data, it does not explicitly require that the "format" include statistical analysis or that the "format" is performing the statistical analysis. See Column 1, lines 43-47, 57-67 of the `707 patent; Column 2, lines 4-14, 22- 26 of the `707 patent. In addition, the language of the Background and Summary of the Invention is exemplary; it provides what the invention is generally or what it may include or perform. See Column 1, lines 43 through 67 of the `707 patent. Similarly, in describing the seven disclosed embodiments of his invention, Katz repeatedly stated that the examples were illustrative or exemplary. See, e.g., Column 9, lines 48 through 51; Column 11, lines 66 through 67; Column 12, lines 1 through 19 of the `707 patent.

Figure 3 of the `707, `863, and `309 patents is a flow diagram for one operating of the Katz system. See Column 2, lines 44-45 of the `707 patent. The diagram illustrates a series of commands or instructions for the computer and the sequencing of those commands, including the content and sequence of voice prompts and the operations on data to be stored in or retrieved from memory. There is no indication in the figure of statistical analysis or that the format is limited to the disclosed embodiments. To limit the term "format" in these patents to the disclosed embodiment would violate the ruling of Comark Communications, Inc. v. Harris Corporation, 156 F.3d 1182, 1187 (Fed.Cir. 1998) and similar cases.

The prosecution history cited by the defendants does not support their proposed construction of "format." During the prosecution of the `023 patent, the examiner rejected certain of Katz's claims as anticipated by a patent to Riskin because the Riskin patent described various "formats," including stock quotation, movie directory, and product information services. (Ex. 48). Similarly, during the prosecution of the `120 patent, the examiner rejected certain of Katz's claims as being unpatentable over a group of references because the claims contained "game" or "operating process" formats that were selected through the use of the dialed number. These statements indicate that the examiner did not consider the Katz formats to be limited to the seven embodiments disclosed in the specifications because the examiner rejected some of Katz's claims as unpatentable over patents which contained "formats" other than the seven described by Katz. The defendants pointed to no statements by Katz during the prosecution of the patents in which he disclaimed coverage of any formats other than the formats discussed in the specifications.

Based on the foregoing, the Court construes the term "format" to mean: a computer program that sets forth the content and sequence of steps to gather information from and convey information to callers through pre-recorded voice prompts and messages.

5. "Multiple Formats" or "Plurality of Formats"

The parties also disagree over the proper construction of the terms "plurality of formats" and "multiple format."*fn19 The plaintiffs argue that the terms "plurality" and "multiple" clearly had the common and plain meaning of "more than one" to one of ordinary skill in the art. The defendants do not contest that these terms mean "more than one," but rather they argue that because it is impossible to know whether a system is running on one format or more than one format, "multiple" or a "plurality of" formats must have three characteristics. First, each format must be a separate computer program and not just different questions or branching in the same format. Second, each format must have distinctly different subject matter and functionality. Third, each format must be reached by a different and unique called number.

The plaintiffs agree that subroutines or branching within a format do not constitute multiple formats. The specification of the `707 patent confirms this. See Column 18, line 37 (noting in the context of the television game show format that "the basic format can remain the same, only the questions change by time zone"). The plaintiffs also agree that one phone number cannot be used to reach different formats. The specifications support this understanding of "multiple formats" or "plurality of formats." See Column 12, lines 5-6 (noting that one of the common structural elements of the Katz invention is "utilizing the called number to select a specific operating format"). However, the patents do not support the defendants' contention that each format of a plurality of formats or multiple formats must be assigned a unique called number.

The patents also do not support the defendants' contention that each format in a plurality of formats or in multiple formats must be different in the function it performs or in subject matter. In the `150 patent specification, Katz states that "[e]xemplary selected formats of the processor might include: public polls, lotteries, auctions, promotions, sales operations and games;" the use of plural to describe the formats indicates that the processor could run more than one of any type of format. Column 2, line 65 to Column 3, line 1 of the `150. Thus, if a processor is running a series of formats, even if all are lotteries or all are mail order formats, this would constitute a "plurality of formats" or "multiple formats."

The prosecution history cited by the defendants does not dictate that the Court should alter the construction of "multiple formats" or "plurality of formats" that is clear from the claim language and specifications. In an Amendment dated January 11, 1990 during the prosecution of the `506 application, Katz amended one of his claims to recite "a plurality of distinctly different operating process formats." (Ex. 36). However, the examiner subsequently rejected this claim as amended, and this particular language does not appear in any of the claims at issue. During the prosecution of the `150 patent, Katz noted in an Amendment dated October 5, 1989 that the patent to Riskin "contains no suggestion of a multiple format processor nor structure for conditioning accepted calls."*fn20 (Ex. 35). The Court concludes that Katz was not limiting the term "multiple format" to require formats with different subject matter or functionality in this statement to the PTO.

Based on the foregoing, the Court construes the terms "plurality of formats" and "multiple formats" to mean: more than one format. The terms do not include the subroutines or branching within a single format.

6. "Remote Terminals"

The parties dispute the meaning of the term "remote terminals," which appears in claims throughout the body of patents to Katz. The parties agree that the term refers to traditional telephones, but the plaintiffs contend that the term may comprise other devices as well, such as wireless phones or a computer that can access the telephone network.

The plaintiffs contend that a person of ordinary skill in the art reading the Katz patents would understand that "remote terminals" could refer to devices other than traditional telephones. The defendants argue that there is no support in the specifications for any device other than traditional telephones.

The claim language in the patents does not support the defendants limited definition. Claim 96 of the `707 patent is exemplary of many of the claims that contain the term "remote terminals." Claim 96 provides for "[a]n analysis control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals may comprise a conventional telephone instrument including voice communication means and digital input means in the form of an array of alphanumeric buttons for providing data." The use of the words "may comprise" indicates that remote terminals includes, but is not limited to, traditional telephones.

The prosecution history cited by the defendants does not restrict the definition of "remote terminals." In the prosecution history of the `968 patent, in an Amendment dated March 2, 1988, Katz attempted to distinguish his patent from other patents containing, among other devices, "a special form of terminal apparatus at a data source" by noting that "[c]ontrary to the operations of the systems described in the above references, applicant's system interfaces with a conventional telephone instrument." (Ex. 33). Katz went on further to explain regarding "special-purpose telephone instruments" that "[c]learly, such telephones could be employed in cooperation with applicant's system; however, a very significant feature of applicant's system is its ability to function cooperatively with a conventional telephone instrument. Accordingly, specific forms of transaction telephone instruments or data phones are not deemed to be particularly applicable to the claims as set forth herein . . . ." Contrary to the defendants' contention, the Court concludes that this statement by Katz indicates that his system could accommodate conventional telephones, as well as other devices, not that it was limited to use with conventional telephones.

Thus, the Court concludes that there is nothing in the claim language, specifications, or prosecution history that indicates that "remote terminals" can only include conventional or traditional telephones and not wireless phones or computers connected to the telephone network. Based on the foregoing, the Court construes "remote terminals" to mean: a device or instrument for connecting callers to the telephone network for voice and digital communication, including, but not limited to, conventional telephones.

7. "DNIS" and "called number identification data"

The next terms the Court must construe are "DNIS" and "called number identification data." These terms appear in many of the Analysis Control System claims, including Claim 104 of the `707 patent which reads "a system according to claim 96 for use with a communication facility having a capability (DNIS) to provide called number identification data to identify a called number from a plurality of different numbers for calling,"*fn21 Claim 192 of the `707 patent which reads "an analysis control system according to claim 183, wherein said communication facility automatically provides called number identification data (DNIS) to identify a select called number from a plurality of called numbers," and Claim 65 of the `863 ...


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