06/23/2014

Howlink Global LLC v. Network Comm.: Claims Require a Voice Transmission to be a Live Voice


Category: Claim Construction  
 
 
 
By: John Kirkpatrick, Contributor  
 
TitleHowlink Global LLC v. Network Comm., No. 2013-1181 (Fed. Cir. April 2, 2014)(non-precedential).
IssueHowLink challenges the construction of two terms: (1) “temporarily transmitting voice of a caller to the called terminal to identify the caller when the second communication link is established,” and (2) “prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission.” The dispute over these claims is about whether the claims of the [U.S. Patent No. 7,876,744 B2] patent require that a caller be able to talk to the called party temporarily before a decision to accept the collect call is made.
Howlink Global LLC at *2 (text added).
HoldingConsistent with the claim language, the description of the embodiments points to a construction where “transmitting the voice of a caller” requires a “live” voice.
Id. at *15.
 
 
 
Procedural HistoryHowLink [asserted] patent infringement of the ’744 patent against [Network Comm] in the U.S. District Court for the Eastern District of Texas. Howlink Global LLC at *7 (text added, footnote and internal citation removed). [...] [T]he district court [after referring the case to a magistrate judge for claim construction] entered judgment in favor of Defendants on HowLink’s claim for infringement [...]. HowLink [appeals].
Howlink Global LLC at *10-11 (text added).
 
 
Legal Reasoning (Lourie, Bryson, O'Malley)
Background of the ’744 Patent "Method for Collect Call Service Based on VoIP Technology and System Thereof"
Representative Claim LanguageThe relevant language from representative claim 1 states, “[(1)]temporarily transmitting voice of a caller to the called terminal to identify the caller when the second communication link is established, and then [(2)]prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission.”
Howlink Global LLC at *12 (internal citation removed).
Prosecution History[T]he examiner rejected [the original claims] as obvious [...] over [Karamchedu, which] discloses a collect call system where a caller sends a request to a “Bridgeport” that then calls the called party, plays a message to announce the call, and connects the caller to the called party if the called party accepts the call. [...] The examiner stated that Karamchedu teaches [...] “temporarily permitting voice transmission which allows a called party to identify a caller when the second link is established, and then prohibiting voice transmission until the collect call acceptance arrives after the temporary voice transmission.” [...] When, in response, HowLink offered amended claims [...] reciting “temporarily transmitting voice of a caller,” the examiner indicated that those claims would be allowed if rewritten in independent form to include the express limitations of “temporarily transmit[ting] voice of a caller to the called terminal to identify the caller when the second link is established, and then prohibiting the voice transmission until the collect call acceptance arrives after the temporary voice transmission.”
Id. at *6-7 (text added, internal citations removed).
District Court Claim Construction [T]he district court found that “a person of ordinary skill in the art would read the claims to mean that ‘voice transmission’ refers to the same thing throughout the claims and that what is ‘prohibit[ed]’ is what was ‘temporarily transmit[ed],’ particularly in light of the use of the word ‘then’ to introduce the ‘prohibiting’ step.” [...] Accordingly, [the district court] concluded that “what is ‘temporarily transmit[ed]’ is the ‘live’ voice of a caller because there would be no need to ‘prohibit’ a pre-recorded voice.”
Id. at *11-12 (text added, internal citation removed).
Analysis
Legal StandardGenerally, a claim term is given its ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of invention. [...] In addition, we must read claims in view of the written description, which “is the single best guide to the meaning of a disputed term.” [...] The written description “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” [...] “It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.”
Howlink Global LLC at *12 (text added, internal citations removed).
The Claim Language Requires a Live VoiceIt is clear from the claim language that the “after the temporary voice transmission” limitation refers back to the earlier “temporary transmitting voice of a caller” limitation. [...] Appellant’s counsel conceded that “temporary voice transmission” has the same meaning as “temporarily transmitting the voice of a caller.” [...] The claim language further states “then prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission.” [...] Again, Appellant’s counsel acknowledged that the “prohibited voice transmission” is a “live” voice[, and] then admitted that the term “voice transmission” as found in “prohibited voice transmission” has the same meaning as “voice transmission” in “temporary voice transmission.”
Id. at *13 (text added, internal citations removed).
The Structure of the Claim Language Implies Live Voice TransmissionThe phrase, “then prohibiting voice transmission,” requires that the temporary voice transmission in the claims refer to a “live” voice. the claims refer to a “live” voice. As the district court concluded, “if the step of ‘temporarily transmitting voice of a caller’ did not involve the live voice of the caller, the step of ‘then prohibiting voice transmission’ would be superfluous. Such a reading would be disfavored [because a claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.]” [...] To clarify, if the temporary voice transmission was a recording, there would be no need to “then prohibit[]” voice transmission because the recording would end on its own.
Id. at *13-14 (text added, internal citations removed).
Voice of a Caller and Voice Transmission Refer to Same Type of TransmissionsAppellant further asserts that the term “voice of the caller” is different than “voice transmission” since different terms are used [thereby connoting different meanings]. [...] We agree that the two terms “voice of a caller” and “voice transmission” do not have the same exact scope, but conclude that they still refer to the same type of transmissions. The “temporarily transmitting voice of a caller” refers to the one way transmission of the voice from the caller to the callee, whereas “voice transmission” can broadly refer to voice transmissions from the caller or callee. Accordingly, “voice transmission” encompasses a broader subset of transmissions. Therefore, while the scope of the term “voice transmission” is different than the “voice of a caller,” both of these “voice transmissions” still refer to a “live” voice or voices.
Id. at *14 (text added, internal citations removed).
The Written Description Supports the Inclusion of a "Live Voice"[The written description] specifically describes temporarily transmitting the voice of a caller to the called terminal to identify the caller [by stating,] “At step 325, after finishing voice announcement, the collect call switch connects temporarily the voice call link between the caller terminal and the called terminal so that the called party can recognize the caller.” [...] This “voice call link” describes a connection to allow the temporary transmission of the “live” voice of the caller to the called terminal to identify the caller to the callee.
Id. at *15 (text added, internal citations and footnote removed).
The Patent is Defined by the ClaimsAlthough HowLink argues that the written description explicitly states that the invention can omit step 325, all of the independent claims of the ’744 patent include this limitation. While a written description may describe multiple embodiments, the patent is still defined by the claims. [...] Notably, every independent claim requires “temporarily transmit[ting] voice of a caller to the called terminal to identify the caller.” And no disclosure is provided for pre-recording a message from a caller for this temporary voice transmission.
Id. at *15-16 (text added, internal citation removed).
Not the Recorded Voice of the CallerHowLink asserts that the written description does disclose a “voice announcement” that can include the recorded voice of a caller. [...] The written description, however, does not support Howlink’s assertions. For example, as described, step 320 “outputs voice announcement telling it is a collect call,” and step 330 is “a voice announcement for request to accept the collect call is outputted to the called terminal.” [...] The written description provides no further description of any voice announcements, nor even mentions pre-recording the voice of a caller.
Id. at *16 (text added, internal citations removed).
Conclusion
Because we find that the district court correctly construed the terms to require the transmission of a “live” voice, for this purpose, we affirm the district court’s claim construction, and, hence, judgment of non-infringement.
Howlink Global LLC at *2-3.
 
 
Contributor's Note
Question of Prosecution History Disclaimer Not ReachedThe [district] court also found that the patentee made a “clear and unmistakable” disavowal by amending the claim language from “temporarily transmitting voice transmission” to “temporarily transmitting voice of a caller” to overcome the examiner’s rejection. Howlink Global LLC at *11 (text added, internal citation removed). [...] We need not reach the question of prosecution history disclaimer in this case, however. This is so because, the claims and written description so clearly point to the correct construction in this case.
Howlink Global LLC at *16. 
 
 
 
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