Starhome GMBH v. AT&T Mobility: Well-Understood (Dictionary) Meaning of Term Supported by the Specification, Adopted in Claim Construction
Category: Claim Construction
By: Jesus Hernandez, Blog Editor/Contributor
|Title||Starhome GMBH v. AT&T Mobility LLC, No. 2012-1694 (Fed. Cir. Feb. 24, 2014).|
|Issue||On appeal, Starhome asserts the same construction of “intelligent gateway” that it urged in the district court (“a network element that uses knowledge implemented in databases or the like and application logic to perform its operations”). In support of that construction, Starhome argues that the specification does not require the gateway to be connected to an external network.|
Starhome GMBH at *7-8.
|Holding||Considering “gateway” in the context of the claims and specification of the ’487 patent, one of ordinary skill would have understood that the inventors did not depart from the ordinary meaning of “gateway” with their use of the term “intelligent gateway[,” because the specific embodiments discussed in the written description describe structures (e.g., database, data packet switch network), that conform with a consistent definition throughout various technical dictionaries.] |
Id. at *11-12.
|Procedural History||Starhome GmbH (“Starhome”) sued AT&T Mobility LLC, Roamware, Inc., and T-Mobile USA, Inc. (“Defendants”), in the United States District Court for the District of Delaware for infringement of U.S. Patent No. 6,920,487 (the “’487 patent”). […] Following a Markman hearing, the district court construed various terms of the ’487 patent. Among them was the term “intelligent gateway,” which the court construed to mean “a network element that transfers information to and from a mobile network and another network external to the mobile network.” Relying upon that construction, Defendants moved for summary judgment of nonin-fringement. Starhome did not contest the motion, but instead stipulated to a judgment of noninfringement based upon the court’s construction of “intelligent gateway.” Following the district court’s entry of the stipulated judgment on September 12, 2012, Starhome GmbH v. AT&T Mobility LLC, No. 1:10-cv-00434-GMS (D. Del. Sept. 12, 2012), Starhome appealed.|
Starhome GMBH at *2.
|Legal Reasoning (Reyna, Schall, Moore)|
|Claim Term at issue: “intelligent gateway”||Starhome owns the ’487 patent. The problem the patent aims to solve arises when mobile phone users are in a network other than their home network (e.g., roaming). In a home network, a mobile phone user might dial a short code, such as “121,” to access voice mail. But while roaming, the visiting network may not recognize the code, resulting in an error message. […] The ’487 patent’s solution to this problem is the “intelligent gateway.” […] As shown in Figure 1, the intelligent gateway (V-I/G 32) has a database (DB 31) that contains information about multiple home networks, including short-code translation tables, subscriber profile data, and roaming patterns. ’487 patent col. 2 ll. 33–41. The information in the database may be updated via a global packet-switch network (22).|
Starhome GMBH at *2-3.
|Legal Standard: Plain and Ordinary Meaning||“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). |
Id. at *10.
|Legal Standard: Extrinsic Evidence (dictionaries, treatises)||We have made clear that dictionaries and treatises can often be useful in claim construction, particularly insofar as they help the court “‘to better understand the underlying technology’ and the way in which one of skill in the art might use the claim terms.” Phillips, 415 F.3d at 1318 (quoting Vitronics Corp., 90 F.3d at 1584 n.6). Moreover, judges are free to rely on dictionaries at any time during the process of construing claims “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” Id. at 1322–23 (quoting Vitronics Corp., 90 F.3d at 1584 n.6).|
Id. at *11.
|Specification Definition Comports with Well-Understood Meaning of Term|
|Well-Understood Meaning of “intelligent gateway”||Both asserted claims recite an “intelligent gateway.” The term “gateway” had a well-understood meaning in the art at the time the patentees filed the application that led to the ’487 patent. As evidenced by technical diction- aries, one of ordinary skill in the art would have understood a “gateway” to be a connection between different networks.See Andrew S. Tanenbaum, Computer Networks 16 (3d ed. 1996) (describing a gateway as a means to connect networks and provide necessary translation); Harry Newton, Newton’s Telecom Dictionary 362–63 (15th ed. 1999) (“A gateway is what it sounds like. It’s an entrance and exit into a communications network.”); The IEEE Standard Dictionary of Electrical and Electronic Terms 449 (6th ed. 1996) (defining a “gateway” as a device that connects two systems or networks). |
Starhome GMBH at *11.
|Specification Consistent with Well-Understood Meaning||Considering “gateway” in the context of the claims and specification of the ’487 patent, one of ordinary skill would have understood that the inventors did not depart from the ordinary meaning of “gateway” with their use of the term “intelligent gateway.” The gateway is intelligent because it includes a database of information and is adapted to do things such as translate dialing sequences, deliver short messages, provide assistance, and obtain information for call completion. ’487 patent col. 2 ll. 33– 38, claims 10, 35, and 40. But, consistent with its ordinary meaning, the specification also explains that it connects different networks. For example, when describing the services performed by the invention, the specification explains that “[t]he system providing these services is based upon a configuration comprising a global packet switch network connecting mobile networks via intelligent gateways.” Id. col. 2 ll. 19–21. Further, in describing the invention, the specification discloses two main embodiments. The first—shown in Figure 1—contains a visited mobile network coupled to a packet-switch network via a single intelligent gateway. The second—shown in Figures 3, 4, and 5—contains two mobile networks coupled to a packet-switch network via two intelligent gateways. After reading the claims and specification, one of ordinary skill in the art would therefore have understood that “intelligent gateway” carries its ordinary meaning as a device that connects different networks.|
Id. at *11-12.
|Simplified Drawing not Tantamount to an alternative Embodiment||Starhome relies on Figure 2 to support its proposed construction, arguing that the figure shows an intelligent gateway operating within a single network, thus constituting a preferred embodiment excluded by the district court’s construction. […] However, although Starhome correctly points out that Figure 2 does not show a connection to a packet-switch network, we disagree that it constitutes a separate embodiment. The specification explains that Figure 2 is a simplified drawing of a call flow in accordance with the system of Figure 1. ’487 patent col. 1 ll. 43–44, col. 3 ll. 23–29. The packet-switch network of Figure 1 is not needed to explain the call flow, and one of ordinary skill in the art would understand that the drawing omits it for that reason.|
Id. at *12.
|Claim Differentiation does not Alter Meaning of “intelligent gateway”|
|Legal Standard: Claim Differentiation||The doctrine of claim differentiation is “based on the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope.” Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999). The doctrine is not a hard and fast rule, but instead “a rule of thumb that does not trump the clear import of the specification.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009); see also Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1400 n.1 (Fed. Cir. 2008) (“While claim differentiation may be helpful in some cases, it is just one of many tools used by courts in the analysis of claim terms.”).|
Id. at *13.
|Claim differentiation Does not Control||The doctrine does not control the outcome here. The district court’s construction of “intelligent gateway” requires that it transfer information to and from a “network external to the mobile network.” Claims 1 and 47, however, claim a specific type of external network; namely, a packet-switch network. The claims differ in scope, therefore, and the district court’s construction neither imports limitations from one claim to another nor renders any claims redundant.|
Id. at *13-14.
|As set forth above, we see no error in the district court’s construction of “intelligent gateway.” We therefore affirm the judgment of noninfringement.|
Starhome GMBH at *15.
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