Ultratec, Inc. v. Sorenson Communications, Inc. (45 F. Supp. 3d 881, 2014)

United States District Court for the Western District of Wisconsin 2014-08-28

Patents

Citations

Full opinion text

OPINION AND ORDER

BARBARA B. CRABB, District Judge.

In this civil action, plaintiffs Ultratec, Inc. and CapTel, Inc., contend that defendants Sorenson Communications, Inc. and CaptionCall, LLC have infringed the following eight patents related to a telephone relay system between deaf and hearing users: United States Patents Nos. 5,909,-482, 6,233,314, 6,594,346, 6,603,835, 7,319,-740 and 7,555,104, all entitled “Relay for Personal Interpreter;” and United States Patents Nos. 7,003,082 and 8,213,578 entitled “System for Text Assisted Telephony.” In addition to challenging plaintiffs’ contentions and raising several affirmative defenses, defendants have filed counterclaims contending that plaintiffs’ patents are invalid as anticipated and as obvious, that plaintiffs have infringed defendants’ United States Patent No. 8,379,801 related to text caption error correction and that plaintiffs breached a contract between plaintiff Ultratec and the Federal Communications Commission governing the licensing of plaintiffs’ technologies.

Several motions are before the court, including various motions to strike and the parties’ cross motions for partial summary judgment on issues of direct and indirect infringement, invalidity, willfulness, breach of contract, marking and various other affirmative defenses raised by defendants. This opinion will address the following motions:

• Plaintiffs’ motion for partial summary judgment, dkt. # 87, with respect to 1) plaintiffs’ claims that defendants directly infringe claims 1 and 6 of the '482 patent, claim 2 of the '314 patent, claim 2 of the '104 patent, claims 7-8 of the '578 patent and claim 1 of the '082 patent; and 2) defendants’ counterclaims that the '482, '314, '835, '082, '740, '104 and '578 patents are invalid as anticipated by prior art. (In the same motion, plaintiffs seek summary judgment with respect to defendants’ breach of contract claim, affirmative defenses and alleged infringement of the '801 patent, but those issues will be or have been addressed in separate opinions.)

• Defendants’ motion for partial summary judgment, dkt. # 79, with respect to plaintiffs’ claims of 1) willful infringement; 2) induced infringement; 3) contributory infringement; and 4) entitlement to pre-suit damages for the '082, '104 and '314 patents (marking). (Defendants also seek summary judgment with respect to plaintiffs’ request for injunc-tive relief, but that issue will be addressed in a separate opinion.)

• Plaintiffs’ motion to strike as untimely defendants’ cross motions for summary judgment with respect to non-infringement and anticipation. Dkt. #165.

• Plaintiffs’ motion to strike undisclosed opinions of defendants’ invalidity expert, Benedict Occhiogrosso. Dkt. # 178.

• Defendants’ motion to strike the declaration of Ultratec’s vice president, Kevin Colwell. Dkt. # 241.

Plaintiffs moved initially for summary judgment on their allegations that defendants infringe the '835 and '740 patents by inducing third parties to perform at least one of the steps in the recited method. They have withdrawn those parts of their motion in light of the Supreme Court’s recent decision in Limelight Networks, Inc. v. Akamai Technologies, Inc., — U.S.-, 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014). Dkt. #237. Defendants contend that the Supreme Court’s decision completely forecloses all of plaintiffs’ claims of induced infringement of the '835 and '740 patents. Dkt. #240. However, as plaintiffs point out, even though they are barred by Limelight from arguing that defendants induced infringement regardless who committed what steps of the disclosed method, they may still attempt to prove at trial that 1) defendants directly infringe the '835 and '704 patents by performing all of the steps of the claimed methods themselves; or 2) defendants induced infringement by controlling and directing another entity (such as their licensees) to perform all of the method steps. The parties have not had an opportunity to brief either of these issues because defendants did not move for summary judgment on direct infringement and limited their motion for summary judgment on indirect infringement to whether they had the intent to induce. Allowing further briefing, as defendants request, would be equivalent to granting defendants leave to file a second (and late) motion for summary judgment, which I decline to do.

For the reasons explained below, I am granting plaintiffs’ motion for partial summary judgment and entering judgment in favor of plaintiffs with respect to the following issues:

• Direct infringement of claim 1 of the '482 patent, claim 2 of the '104 patent, claims 7 and 8 of the '578 patent and claim 1 of the '082 patent.

• Nonanticipation of the '082, '740 and '578 patents by the '885 patent (En-gelke '685).

• Nonanticipation of the '314, '835, '740, '104 and '578 patents by the McLaughlin and Liebermann references.

• Nonanticipation of plaintiffs’ patents-in-suit by the Engelke '482 (the '482 patent), Wycherly, Vasile, Gopalak-rishnan, Bowater, Sharman and En-gelke '405 references.

Plaintiffs’ motion for partial summary judgment will be denied and the parties will proceed to trial with respect to the following claims because genuine issues of material fact remain in dispute:

• Direct infringement of claim 6 of the '482 patent and claim 2 of the '314 patent.

• Anticipation of the '082 patent by McLaughlin and Liebermann.

• Anticipation of claim 1 of the '482 patent, the '314 patent and claim 7 of the '578 patent by Ryan.

Defendants’ motion for partial summary judgment will be granted and judgment entered in favor of defendants on plaintiffs’ claims for contributory infringement and claims for pre-suit damages for the '082, '104 and '314 patents. Defendants’ motion will be denied and the parties will proceed to trial on plaintiffs’ claims of willful infringement and claims of induced infringement.

Because I agree that defendants’ cross motions for summary judgment with respect to direct infringement and anticipation are untimely, I will grant plaintiffs’ motion to strike those motions. Plaintiffs’ motion to strike the undisclosed opinions of Occhiogrosso and defendants’ motion to strike the declaration of Colwell will be denied as moot because it was not necessary to consider this disputed evidence in ruling on the motions for summary judgment.

From the parties’ proposed findings of fact, I find the following facts to be undisputed.

UNDISPUTED FACTS

A. Background

Plaintiffs Ultratec, Inc. and CapTel, Inc. are Wisconsin corporations with their principal places of business in Madison, Wisconsin. Defendant Sorenson Communications, Inc. is a Utah corporation with its principal place of business in Salt Lake City, Utah. Defendant CaptionCall, LLC is a Delaware limited liability company with its principal place of business in Salt Lake City, Utah.

Telecommunications relay service (also referred to as “TRS” or “relay service”) is a group of call center based services that make it possible for those who are deaf, hard-of-hearing or speech impaired to communicate with others via telecommunications. Title IV of the Americans with Disabilities Act of 1990 mandated relay service for all of the United States and its territories.

Traditional relay service began as, and remains, a fairly simple telephone service that allows persons with hearing or speech disabilities to place and receive telephone calls. The call may be originated by an assisted user or an unassisted user, such as one who is hearing. In traditional relay service, the call originator dials a toll-free telephone number and is connected to the relay. The call originator then provides the phone number of the other user to the call assistant, who places the call from the relay to the call recipient. The call assistant and hearing user communicate through voiced communication using a headset that contains one or more speakers and a microphone. The call assistant listens to the voice of the hearing user and types verbatim the words of the hearing user to the assisted user. The assisted user responds to what she or he has read by typing a response and transmitting the typed response to the call assistant, who reads the text displayed on the call assistant workstation display screen and, in turn, voices the information verbatim to the hearing user.

However, many hard-of-hearing users and some deaf users have the ability to speak their end of the conversation, and prefer to do so. This is especially true of those who have lost hearing later in life after they had developed the ability to speak clearly (such as the elderly) and those who have developed clear speech through education and training. Voice carry-over technology permits the assisted user to speak to the hearing user with a call assistant interjected into the call to type words to the hard-of-hearing user. Around 2001, plaintiffs demonstrated and implemented a service called captioned telephone or “CapTel,” which allows a hard-of-hearing user and a hearing user to communicate with each other using their speaking voices. CapTel is directed to hard-of-hearing users who can speak but may not have enough residual hearing to clearly understand all of the words in a conversation. In CapTel service, the call assistant is involved in the call solely for the purpose of providing a text message stream, which the parties refer to as “captions,” of the words spoken by the hearing user for the assisted user to receive with the audio from the hearing user. The call assistant repeats verbatim the words spoken by the hearing user into a microphone that is connected to the computer workstation executing speech recognition software that the call assistant has trained to his or her voice. (The parties refer to this as “revoicing” the words.) In traditional relays, call assistants were typing approximately 60 to 80 words per minute. Transcription by revoicing occurs at rates of 125 to 200 words per minute.

Every state in the United States contracts with a vendor to provide relay services to the deaf and hard-of-hearing community. Contracts requiring captioned telephone service have been awarded to vendors using the CapTel technology from Ultratec. CapTel technology uses telephones made and sold by Ultratec.

B. Patents Asserted by Plaintiffs

1. The '482, '314 and '346 patents

Ultratec owns United States Patents Nos. 5,909,482 (“the '482 Patent”), 6,233,-314 (the '314 patent) and 6,594,346 (the '346 patent), all of which are entitled “Relay for Personal Interpreter” and list Robert M. Engelke as the named inventor. The '482 patent was filed on September-8, 1997 and issued on June 1, 1999; the '314 patent was filed on April 8, 1999 and issued on May 15, 2001; and the '346 patent was filed on February 14, 2001 and issued on July 15, 2003. The '346 patent is a continuation-in-part of the '314 patent, which is a continuation of the '482 patent. Both the '314 and '346 patents are entitled to the same 1997 priority date as the '482 patent.

The specification of the '482 patent states that it relates to a “relay system, and a method for operating a relay system, so as to provide more conversation-like performance of voice to text interpreting for translating between deaf and hearing users.” '482 patent, col. 3, Ins. 13-16. Asserted claim 1 of the '482 patent reads as follows:

1. A method of operating a relay system using a call assistant to facilitate communication between a deaf person and a hearing person by telephone comprising the steps of:

transmitting the voice of the hearing person when speaking to the ear of the call assistant;

the call assistant speaking in voice the same words that the call assistant hears spoken by the hearing person into a microphone connected to a digital computer;

the digital computer using voice recognition computer software trained to the voice of the call assistant to translate the words of the voice spoken by the call assistant into a digital text message stream containing the words spoken by the call assistant;

transmitting the digital text message stream created by the computer by telephone connection to a telecommunication device within sight of the deaf person; and the telecommunication device displaying in visually readable text the words in the digital text message stream.

6. A method as claimed in claim 1 wherein there is a single telephone line of the telephone system used to communication [sic] between the call assistant and the hearing person and the call assistant and the deaf person, the digital text message stream and the voice of the hearing person both being transmitted over that single telephone line.

The '314 patent contains two claims:

1. A relay to facilitate communication between a deaf person using a telecommunication device for the deaf and a hearing person through a telephone system and using a call assistant, the relay comprising:

a speaker connected to receive voice communications from the telephone system and transmit those voice communications to the ear of the call assistant;

a microphone connected to pickup voice spoken by the call assistant;

a digital computer connected to the microphone, the computer programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream; and

a modem connected to the digital computer to transit [sic] the digital text stream created by the computer over the telephone system to the telecommunication device for the deaf of the deaf person [sic].

2. A relay to facilitate communication between a digital telecommunication device and a hearing person through a telephone system and using a call assistant, the relay comprising

a speaker connected to receive voice communications from the telephone system and transmit those voice communications to the ear of the call assistant;

a microphone connected to pick up voice spoken by the call assistant;

a digital computer connected to the microphone, the computer programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream; and

a modem connected to the digital computer to transit [sic] the digital text stream created by the computer over the telephone system to the telecommunication device.

Asserted claim 1 of the '346 patent reads:

1. A method of operating a relay system using a call assistant to facilitate communication between a hearing user and an assisted user by telephone, the hearing user speaking words in voice, the method comprising the steps of

transmitting the voice of the hearing user when speaking to the ear of the call assistant;

the call assistant speaking in voice the same words that the call assistant hears spoken by the .hearing user into a microphone connected to a digital computer;

the digital computer using voice recognition computer software trained to the voice of the call assistant to translate the words of the voice spoken by the call assistant into a digital text message stream containing the words spoken by the call assistant; transmitting both the digital text message stream and the voice of the hearing user by telephone connection to the assisted user;

displaying the digital text message stream to a captioned telephone display device within sight of the assisted person; and

transmitting the voice of the hearing user to the assisted user.

2.. The '835 and '082 patents

Plaintiff Ultratec owns United States Patent Nos. 6,603,835 (the '835 patent) and 7,003,082 (the '082 patent), which are both entitled “System for Text Assisted Telephony” and list Robert M. Engelke and Kevin Colwell as the named inventors. The '835 patent was filed on August 23, 2001, published on July 4, 2002 and issued on August 5, 2003. It is a continuation-in-part of the '346 patent, which is a eontinu-ation-in-part of the '314 patent, which is a continuation of the '482 patent. The '082 patent was filed on August 5, 2003 and was issued on February 21, 2006. (The parties dispute whether the '082 patent is a continuation of the '835 patent because it was filed on the same day that the '835 patent was issued).

The '082 patent contains one apparatus claim directed to a “captioned telephone device” and reads as follows:

1. A captioned telephone device for providing captioned telephone service to an assisted user communicating with a hearing user through a telephone connection using a relay having speech to text translation capability, the hearing user speaking words in voice, the device comprising:

a microphone;

a speaker;

a visually readable display; circuitry to support connection to two telephone lines; and

a microprocessor programmed to operate the device to:

receive a telephone call over a first telephone line directly between the assisted user and the hearing user; initiate a telephone connection over a second telephone line to the relay; transmit the voice of the hearing user over the second telephone line to the relay so that the relay can converting [sic] the words spoken by the hearing user into text and transmit the text created by the relay back to the device over a second telephone line; and display the text on the display within sight of the assisted user such that captioning of the communication session is provided to the assisted user.

3. The '10k patent

Ultratec owns United States Patent No. 7,555,104 (the '104 patent), which is entitled “Relay for Personal Interpreter” and lists Robert M. Engelke as the named inventor. It was filed on February 24, 2006 and issued on June 30, 2009. The '104 patent is a continuation of United States Patent No. 7,006,604, which is a continuation of the '346 patent, which is a continuation-in-part of the '314 patent, which is a continuation of the '482 patent. Asserted claim 2 of the '104 patent reads:

2. A relay system using a call assistant for facilitating communication between a hearing user and an assisted user, the system comprising

a relay at the location of the call assistant, the relay including a personal computer with voice recognition software trained to the voice of the call assistant to translate the words spoken by the call assistant into a digital text stream containing the words spoken by the call assistant;

a captioned telephone device at the location of the assisted user and including a display visible to the assisted user; and

internet protocol connections between the hearing user and the relay and between the assisted user and the relay;

the system connected such that if the call assistant repeats the words spoken by the hearing user, the digital text stream created by the relay results in the words spoken by the hearing user appearing as text on the display of the captioned telephone device in the presence of the assisted user.

4. The '7k0 and '578 patents

Ultratec owns United States Patents Nos. 7,319,740 (the '740 patent) and 8,213,-578 (the '578 patent), which are both entitled “System for Text Assisted Telephony” and list Robert M. Engelke and Kevin Colwell as the named inventors. The '740 patent was filed on October 25, 2005 and issued on January 15, 2008, and the '578 patent was filed on December 13, 2007 and issued on July 3, 2012. (Plaintiffs claim that the '578 patent is a continuation of the '740 patent, which is a continuation of the '082 patent, which is a continuation of the '835 patent, which is a continuation-in-part of the '346 patent, which is a continuation-in-part of the '314 patent, which is a continuation of the '482. Defendants contend that the '740 patent and the '578 patent are entitled to claim priority to the filing date of the '835 patent because the application for the '082 patent was not filed before the issuance of the '835 patent.)

Asserted claims 7 and 8 of the '578 patent read as follows:

7. A method of operating a captioned telephone service, the method comprising the steps of:

providing words spoken by a remote user to a relay;

at the relay, a call assistant listening to the words spoken by the remote user and re-voicing the words into a computer with voice recognition software trained to the voice of the call assistant to create a text stream of the words spoken by the remote user; and

presenting the text stream to an assisted user via a display.

8. The method of claim 7 wherein the step of providing words spoken by a remote user to a relay includes the steps of receiving the words spoken at a captioned telephone device and transmitting the words spoken from the captioned telephone device to the relay via one of a cellular connection and a wireless data connection.

C. The Accused Products

Plaintiffs have accused CaptionCall’s captioned telephone service and the products and systems used as part of that service of infringing the patents-in-suit. CaptionCall is “a mechanism of offering a telephone captioning service to people with hearing loss” and uses a CaptionCall phone. There are two models of the Cap-tionCall phone—the CaptionCall Model 57T and the CaptionCall Model 57Tx—that operate in the same manner and run on the same software. With the exception of differences “related to the TouchScreen and LCD,” both models have largely the same hardware design.

CaptionCall service allows the call assistant to create captionings of a hearing user’s voice and send those captions to an assisted user’s device. The deaf or hard-of-hearing user places or receives calls over a standard telephone line, giving him or her the opportunity to hear the voice of the hearing person on the other end. The CaptionCall phone is connected to a Cap-tionCall call center through an internet protocol connection. During a call, the CaptionCalh phone sends the hearing person’s voice to the CaptionCall call center and ultimately to a call assistant, who re-voices verbatim the words of the hearing user. The CaptionCall call assistant’s re-voiced words pass through a voice recognition application on the call assistant’s computer. The voice recognition application on the call assistant’s computer interprets the call assistant’s re-voiced words and outputs that interpretation as a text stream to the call assistant’s display screen and back to the deaf or hard-of-hearing user’s CaptionCall phone. In other words, in the accused service, the hearing user and assisted user are connected directly over the first or primary telephone line and the assisted user’s phone is connected to the call assistant over a secondary internet protocol connection.

D. Defendants’ Knowledge of Ultratec Patents

Defendants’ key managerial employees knew of Ultratee’s patents relevant to captioned telephone service at least as early as 2006. Robert Puzey, the product manager for CaptionCall service at the time, learned in January 2006 that the telecommunications company MCI was opposed to any Federal Communications Commission rule mandating internet protocol captioned telephone service (IP CTS) on the ground that Ultratec held “the exclusive rights to the technology necessary to provide this service.” Puzey, in turn, forwarded this information to Sorenson’s chief executive officer, Pat Ñola, and other higher executives in January 2006. Puzey’s email included a list, by number and title, of 86 Ultratec patents and 22 patent applications. In his email, Puzey wrote:

[D]oes MCI know something that we don’t? Does Ultratec have patents in place that would cause CapIP [the name given to CaptionCall at the time] grief? If we call it IP Relay with YCO [voice carry over] and use re-voicing with speech to text in our call center, I imagine that prior art would invalidate any process patents—but is our patent attorney familiar with potential conflicts? Perhaps MCI is referring to the CapTel phone itself which we don’t intend to use. Do we have a friendly contact at MCI that I can call regarding their concerns?

A few months later, in June 2006, Puzey prepared a “Product Requirements Document” that addressed the use of automatic speech recognition technology in speech to text transcription. Puzey' stated that, at that time, “the sole means of speech to text transcription for [Sorenson’s communication assistants] CAs was typing,” and went on to explain the advantages of automatic speech recognition technology over typing. Puzey explained how the process would work, and suggested that it “was similar to the current CA [communication assistant] process used by CapTel.” Puz-ey attached to his document a 2002 National Association of State Chief Information Officers award nomination for the State of Wisconsin’s technology trial of two products, Fastran and CapTel, which were noted to have been “developed by Ultratec, Inc.” The award nomination described Ul-tratec’s voice recognition system in detail, including that “the voice recognition computer is trained to just one voice, the communication assistant’s (CA) and not for all the different voices involved in relay calls.” Dkt. 150, exh. 5.

Puzey testified that as product manager, it was his job to assess the competitive landscape and to disseminate that information internally at Sorenson. According to Puzey, he devoted significant effort to that task, looking “under every stone to understand the competitive situation.” On August 18, 2006, Puzey forwarded to Nola and other Sorenson executives an email from Ed Bosson, a member of a “RelayA-lert” Yahoo group, in which Bosson noted that “Ultratec has a vertical monopoly on this [captioned telephone] product and service thus as of now has absolute control of the product and service—protected by quite a few patents for the product and service.” Puzey wrote:

Ed Bosson sees the volume potential of captioned telephone. I ask the question again (see attached e-mail from Jan 12) about Ultratec’s patent portfolio related to captioned telephone services. Are there landmines here?

Dkt. # 92, exh. 100.

Nola testified that although he did not recall having received Puzey’s emails, he was aware before this lawsuit was filed that plaintiffs had patents in the captioned telephone service arena. He denied having read them or investigated them or instructing anyone else to do so. Nola also testified that he was not concerned about the patents. Puzey offered similar testimony, stating that “[i]t was a policy at Sorenson to spend [their] time innovating on the best solution to customer products, not to spend [their] time endlessly studying patents.” Joseph Romriell, Sorenson’s director of engineering, also testified that Sorenson’s employees were not concerned about Ultratec’s patents because Sorenson was focused on innovation.

In 2009, defendants retained Sprout Marketing to conduct market research related to CaptionCall, which was still in development. In June 2009, Sprout presented its analysis. It identified two competitors in the captioned telephone space: plaintiffs Ultratec and CapTel. Sprout noted that these companies had “numerous patents,” in addition to the “latest in Computerized Voice Recognition Innovation.” Dkt. # 150, exh. 29, at 18. In May 2010, Sprout provided another set of market findings, in which it identified the following problems for CaptionCall’s entry into the market:

• CapTel’s Partners—Distinctive Competence: CapTel Inc, the relay provider, Weitbreeht Inc. the CapTel equipment provider, Ultratec, the CapTel manufacturer hold all patents on this service ...

• CapTel Caption Service/Technology Patents—Distinctive Competence: Ultratec has protected its work and investment that went into the invention of its “Captel” version of captioned telephone technology

Dkt. # 150, exh. 4, at 4.

Sprout determined that the next step for Sorenson was to “understand CaptionCall technology and possible patents and how CapTel patents impact, relate and differentiate to CaptionCall product and captioning service.”

In 2005, Sorenson purchased a CapTel phone as part of a research effort focused on a “CapTel type of service.” Sorenson has since acquired several other CapTel phones.

E. Inter Partes Review Proceedings

Plaintiffs filed the instant lawsuit on May 17, 2013. On the same day, they filed a petition with the Patent Trial and Appeal Board for inter partes review- of every claim of defendants’ '801 patent related to text caption error correction. On November 13, 2013, the board granted plaintiffs’ petition and instituted inter partes review of all claims of the '801 patent.

In August 2013, defendants filed a petition for inter partes review of all of the patent claims asserted by plaintiffs. On March 5, 2014, the board granted the petition and instituted review proceedings on all but claims 6 and 8 of the '835 patent. The board has not yet issued a final decision on any of the petitions.

OPINION

I. MOTIONS TO STRIKE

A. Plaintiffs’ Motion to Strike Defendants’ Cross Motion for Summary Judgment

Although defendants did not file a summary judgment motion with respect to direct infringement or invalidity of the Ul-tratec patents, they state in their response to plaintiffs’ motion that they are “cross-mov[ing] for summary judgment” on the issues of non-infringement and anticipation. Dkt. # 148 at 49, 110. Plaintiffs point our correctly that defendants’ cross motions are untimely because they were filed after the deadline for filing dispositive motions in this ease. Dkt. # 165. Defendants explain that Fed.R.Civ.P. Rule 56(f)(1) gives the court discretion to grant summary judgment in favor of a nonmov-ant and that their response brief “simply asks the Court to take that action, which is not inconsistent with the dispositive motion deadline in the Court’s scheduling order.” Although the court does have this discretion, I am not going to exercise it in this case. Accordingly, I am granting plaintiffs’ motion to strike.

B. Plaintiffs’ Motion to Strike Undisclosed Opinions of Benedict Occhiogrosso

Plaintiffs have filed a motion to strike the May 12, 2014 declaration of defendants’ invalidity expert, Benedict Occhiog-rosso, dkt. # 149, and portions of Occhiog-rosso’s May 9, 2014 deposition testimony, dkt. # 173 at 347-60, as untimely and improper supplements to his February 12, 2014 expert report. Dkt. # 178. It is unnecessary to resolve this motion for the purposes of summary judgment because I have not considered any of the proposed findings of fact or responses to proposed findings of fact that rely on the disputed evidence. Although plaintiffs may renew their motion if defendants seek to rely on such testimony at trial, they should be prepared to discuss why Occhiogrosso’s deposition testimony regarding enablement should not be admitted after they opened the door by asking Oechiogrosso about this topic at his deposition.

C. Defendants’ Motion to Strike Declaration of Kevin Colwell

Along with their reply brief on summary judgment, plaintiffs submitted the May 22, 2014 declaration of Kevin Colwell, the vice president of engineering at Ultratec, who discusses how the inventor of the '482 patent, Rob Engelke, got the idea for “fast transcription” (also known as Fastran) and how CapTel call centers receive and process incoming calls. Dkt. # 184. Defendants have moved to strike the declaration because plaintiffs submitted it in support of additional facts included in reply to defendants’ response to plaintiffs’ proposed findings of fact. Defendants have not had an opportunity to respond to these new facts. Although defendants raise a good point, it is unnecessary to resolve this motion because plaintiffs’ additional proposed findings of fact that rely on the declaration are not relevant to my rulings on the motions for summary judgment.

D. Defendants’ Opposition to Ludwick’s Opinion on Voice Recognition Software

Defendants object to several of plaintiffs’ proposed findings of fact based on Ludwick’s deposition testimony, saying that Ludwick is not qualified to provide expert opinion evidence on speech recognition under Fed.R.Evid. 702. E.g., Dfts.’ Resp. to Pits.’ PFOF Nos. 478-531, dkt. # 209. Defendants point out that Ludwick admitted in his deposition testimony that he would not consider himself an expert in speech recognition software. They also argue that his opinion about whether computer hardware could support continuous speech recognition in 1994, dkt. # 92, exh. 32 at 8-11, is based on internet research for which he has no citation or evidentiary support.

Defendants have included a challenge to the qualifications of plaintiffs’ expert in their response brief and in various responses to plaintiffs’ proposed findings of fact. The proper way to raise such a challenge is by filing a separately briefed motion pursuant to Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). Defendants’ “mini Daubert motion” is insufficient to raise this issue before the court. Not only is it unclear exactly what aspects of Ludwick’s opinion defendants are trying to exclude, but the parties have not had sufficient opportunity to brief the relevant issues for the court. As a result, I have not considered this argument and will not strike Ludwick’s opinion evidence concerning the state of the art of speech recognition software in 1994. (In any event, as explained in the subsequent discussion of invalidity, Ludwick’s opinion is not dispositive of any issue on summary judgment and is of questionable relevance to plaintiffs’ nonanticipation arguments.)

II. PLAINTIFFS’ MOTION FOR PARTIAL SUMMARY JUDGMENT

A. Claims Construction

Construing the meaning of disputed patent claims is the first step in determining whether defendants have infringed the patents-in-suit and whether the patents-in-suit are invalid because they are anticipated by prior art. The construction of claims is considered a matter of law and entrusted to the court. Markman v. Westview Instruments, Inc., 517 U.S. 370, 387, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). In this case, the parties dispute the meaning of several terms that appear in the patents asserted by plaintiffs. However, only the following terms are relevant to the parties’ disputes with respect to infringement or invalidity.

1. The “telephone” terms

The parties dispute the following three terms related to the mode of transmission of the hearing user’s voice and the text transcription of the hearing user’s voice: “telephone line” (disclosed in the '482 and '082 patents), “telephone connection” (disclosed in the '482, '082 and '346 patents) and “telephone system” (disclosed in the '314 patent). The crux of the parties’ dispute is whether the term “telephone” encompasses an internet protocol (IP) digital connection as well as what is known as “plain old telephone service” (POTS) in the earlier-filed '482 patent and '314 patents.

Defendants rely on Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005), for the proposition that the literal scope of a claim term is limited to what one of ordinary skill in the art would have understood the term to mean at the time of the patent’s effective filing date. Citing changes in telephone and communication technology between 1997 and 2001, defendants argue that the terms in the '482 patent (filed in 1997) and '314 patent (filed in 1999) should have a different meaning from that of the same terms in the '346, '835 and '082 patents (filed between 2001 and 2003). They contend that telephones have moved from circuit-based, switched networks in 1997 to packet-based, internet protocol networks in the early 2000s. According to defendants’ expert, Occhiogros-so, voice over internet protocol (VoIP) grew dramatically from 1998, when only 1% of the calls were VoIP, to 2003 where VoIP calls constituted nearly 25% of all domestic calls. Dkt. # 135 at ¶ 58. From this, defendants argue that the court must find that the earlier '482 and '314 patents are directed specifically to telephone communication technology and not to communication technology in general.

Relying on language describing an embodiment in the shared specification of the '482 and '314 patents, defendants propose that the telephone terms mean “an actual physical telephone land line, or two pair [sic] between the telephones, or can be a cellular or other type of over-the-air telephone linkage.” Col. 5, Ins. 15-18. Because the specifications of the more recently filed '346, '835 and '082 patents added “internet protocol digital connection” to the list of possible telephone modalities, e.g., '346 patent, col. 5, Ins. 60-63, defendants argue that the term acquired a broader meaning that cannot be imported into the earlier patents. Go Medical Industries Party, Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed.Cir.2006) (new subject matter in continuation-in-part application does not receive benefit of earlier priority date of previously-filed application); Kopykake Enterprises, Inc. v. Lucks Co., 264 F.3d 1377, 1383 (Fed.Cir.2001) (when claim term understood to retain narrow meaning when application filed later acquires broader definition, scope of term is limited to what was understood at time of filing).

Plaintiffs argue that it is not the type of connection, but the connection’s capability, that is important. To that end, plaintiffs propose that for all the patents-in-suit, “telephone line” means “a communications line capable of carrying voice and/or data,” “telephone connection” means “a communications connection capable of transmitting and receiving voice and/or data” and “telephone system” means “a communications system capable of transmitting and receiving voice and/or data.”

The inclusion of the term “internet protocol connection” in the specifications of the '346, '835 and '082 patents reflects the fact that internet protocol connections had become a more common form of telephone communication by the early 2000s. However, the patentee’s failure to mention this technology in the specification of the '482 and '314 patents does not necessarily mean that the term “telephone” in those patents cannot include internet protocol technology.

As plaintiffs argue, the Court of Appeals for the Federal Circuit has held that “[t]he law ‘does not require that an applicant describe in his specification every conceivable and possible future embodiment of his invention.’ ” SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 879-80 (Fed.Cir.2004) (quoting SRI International v. Matsushita Electric Corp. of America, 775 F.2d 1107, 1121 (Fed.Cir.1985) and distinguishing Kopykake on the ground that specification in that case explicitly defined term “screen printing” as limited to “conventional” or then-existing technologies). See also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir.2001) (quoting same). In SuperGuide, 358 F.3d at 879-80, the court of appeals found that the term “regularly received television signal” did not exclude digital signals even though televisions received only analog signals at the time the patent was filed. The court pointed out that those skilled in the art knew that both formats could be used for video. It reasoned that the claim encompassed the newer technology because nothing in the intrinsic evidence limited the scope of the claim to analog signals. Id. See also Inno-genetics, N.V. v. Abbott Laboratories, 512 F.3d 1363, 1371-72 (Fed.Cir.2008) (“Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough.”).

Defendants admit that internet protocol digital connections existed at the time of the filing of the '482 and '314 patents, even though they were not yet commonly used for telephone communications. Although defendants point out that the claims and the specification of the '482 and '314 patents talk repeatedly about “telephone” and not “communication” technology, nothing in the specification explicitly limits telephone communication to conventional technologies. In fact, the specification language that defendants rely on states explicitly that there are different modes of telephone communication, including land line, cellular and “other” over-the-air linkages. Notably, this list of possible technologies is open-ended, indicating that the patentee did not intend to limit the telephone terms to any particular mode. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed.Cir.2012) (“The disclosure of multiple examples does not necessarily mean that such list is exhaustive or that non-enumerated examples should be excluded.”); Prima Tek II, LLC v. Polypap, S.A.R.L., 318 F.3d 1143, 1151 (Fed.Cir.2003) (“Varied use of a disputed term in the written description demonstrates the breadth of the term rather than providing a limited definition.”).

Further, it is clear from the patents and their specifications that the actual mode of telephone communication is not crucial to the invention. In fact, the later-filed '346 patent specification makes this point explicit:

It is to be understood, however, that a conventional telephone single line connection is only one example of a telephonic connection that can be used in this arrangement. Digital wireless connection, or PCS connection, or even internet protocol wired or wireless connection can be used to connect the relay to the assisted user. The digital or analog nature of the telephonic connection is not critical, the only criticality being that the connection is capable of transmitting voice and text simultaneously from the call assistant to that user.

Col. 9, Ins. 30-36. I conclude that the use of the word “telephone” in the '482 and '314 patents does not exclude internet protocol connections.

2. The “telecommunication device” terms

The parties dispute the constructions of the term “telecommunication device,” which is disclosed in claim 1 of the '482 patent and claim 2 of the '314 patent, and the term “telecommunication device within sight of the deaf person,” which is disclosed in claim 1 of the '482 patent. Specifically, claim 1 of the '482 patent discloses the steps of “transmitting the digital text message stream ... to a telecommunication device within sight of the deaf person” and “the telecommunication device displaying in visually readable text the words in the digital text message stream.” Claim 2 of the '314 patent discloses “a relay to facilitate communication between a digital telecommunication device and a hearing person” and the transmission of a digital text stream to the “telecommunication device.”

Defendants propose that both terms be defined as:

An electronic device consisting of a keyboard and a display as well as a specific type of modem to acoustically or directly couple to a telephone line so that character strings typed into the keyboard can be encoded and transmitted over the telephone line to be displayed on a remote telecommunication device.

They base their proposed construction on language from the Background of the Invention section in the shared specification of the '482 and '314 patents:

[T]here has been developed a system of telephone communication which has been principally used by the deaf community. That system makes use of a category of device known variously as a telecommunication device for the deaf (TDD), text telephone (TT) or teletype (TTY). Current TDDs are electronic devices consisting of a key board and a display as well as a specific type of modem, to acoustically or directly couple to the telephone line.

Col. 1, Ins. 27-32. However, this language refers only to a “telecommunication device for the deaf,” which appears to be a specialized device commonly known as a “TDD.” (I note that the parties also appear to dispute the term “telecommunication device for the deaf,” but I will not construe the term at this point because it is disclosed only in claim 1 of the '314 patent, which is not at issue on summary judgment.)

Both parties acknowledge that the specification does not provide a separate definition for the terms “telecommunication device” or “telecommunication device within sight of the deaf person.” Plaintiffs argue that these two terms be given their plain and ordinary meaning, or in the alternative, be defined as “a device for communication over a distance.” Defendants contend that these terms must refer either to a TDD or a personal interpreter (which they argue has the same features as a TDD) because those are the only devices discussed in the specification. For example, the specification discusses an embodiment that can operate with normal TDDs or with a personal interpreter. Col. 6, Ins. 44-45. I note, however, that the specification states that the invention “can” operate with a TDD or a personal interpreter, not that it must operate with one of those types of devices. Further, the specification states that “current” or then existing TDDs have a keyboard and a modem, not that all telecommunication devices must have such features.

As plaintiffs point out, a claim is not limited to the embodiments disclosed in the specification. Thorner v. Sony Computer Entertainment Amercia LLC, 669 F.3d 1362, 1366 (Fed.Cir.2012) (“It is ... not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims.”). Further, different claims within the '482 and '314 patents use different terms. Independent claim 7 of the '482 patent specifically discloses a TDD, whereas claim 1 discloses only a telecommunication device. Similarly, claim 1 of the '314 patent uses the term TDD, but claim 2 uses the term telecommunication device. The fact that the patentees chose to use different terms in different claims of the same patent suggests that the terms have different meanings and that “telecommunication device” is a more general device that does not necessarily have the special features of a TDD or personal interpreter. Clearstream Wastewater Systems, Inc. v. Hydro-Action, Inc., 206 F.3d 1440, 1446 (Fed.Cir.2000) (“Under the doctrine of claim differentiation, it is presumed that different words used in different claims result in a difference in meaning and scope for each of the claims.”). If the patentee had intended claim 1 of the '482 patent and claim 2 of the '314 patent to recite a TDD or a personal interpreter, then it would have said so, as it did in claim 7 of the '482 patent and claim 1 of the '314 patent.

Defendants note that in prosecuting the '314 patent, the patentee added claim 2 as an amendment, noting that it was “identical in its technical limitations to the previously submitted” claim 1, “but merely is intended to be unambiguous that the claim encompasses the possibility that the remote person using the relay is not deaf.” Dkt. # 159, exh. # 18 at 70. Defendants argue that the passage about identical technical limitations evidences the paten-tee’s intent that a “telecommunication device” recited in the newly added claim 2 has the same structural limitations as the “telecommunication device for the deaf’ in claim 1, but their argument is unconvincing. Although the claims recite technical limitations for the relay (including a speaker, microphone, digital computer and modem), they do not include any technical limitations with respect to the telecommunications device itself. The claims use the term “telecommunication device” only to identify where the modem transmits the digital text stream created by the call assistant’s computer. Further, the paten-tee’s decision to have claim 2 encompass users who are not deaf suggests that the patentee did not intend the newly added term “telecommunication device” to mean the same thing as “telecommunication device for the deaf.”

Defendants also contend that the term “telecommunication device within sight of the deaf person” should be defined as a TDD. Although this term uses the word “deaf,” I agree with plaintiffs that the phrase “within sight of the deaf person” refers to the location of the telecommunication device and does not dictate a certain type of device.

In sum, I conclude that neither “telecommunication device” nor “telecommunication device within sight of the deaf person” should be defined as a TDD or personal interpreter and that neither device necessarily requires a keyboard, display and a specific type of modem. Because no party has argued that these terms require any further definition apart from being devices for telecommunication, they will retain their plain and ordinary meanings.

3. “Communication between ”

The parties dispute the meaning of the term “communication between” in claim 6 of the '482 patent, which recites a “single telephone line of the telephone system used to communication [sic] between the call assistant and the hearing person and the call assistant and the deaf person, the digital text message stream and the voice of the hearing person both being transmitted over that single telephone line.” The term also appears in claim 1 of the '482 patent, which recites a method “to facilitate communication between a deaf person and a hearing person.” Plaintiffs do not propose a construction of the term, but defendants contend that it means “a bidirectional exchange” or two-way communication.

In support of their argument, defendants cite language from the '482 patent specification that they say shows a requirement for bi-directional communication:

The present invention is directed toward a relay system ... so as to provide more conversation-like performance ... between deaf and hearing users.

Col. 3, Ins. 13-16. I agree that the patent envisions two-way communication between the hearing and deaf user. However, nothing in the language cited by defendants states that “communication between” refers to bi-directional exchanges in all circumstances. Contrary to defendants’ assertion, claim 6 appears to envision one-way communication between the call assistant and the hearing person and between the call assistant and the deaf person because it expressly discloses that what is being communicated is the “voice of the hearing user” (a one-way communication between the hearing user and the call assistant) and the “digital text message stream” (a one-way communication between the call assistant and the deaf user).

In a peculiar argument, defendants attempt to explain that the '482 patent discloses a traditional relay in which there are two bi-directional exchanges: 1) the deaf user types to the call assistant and the call assistant transmits text back to the deaf user; and 2) the hearing user talks to the call assistant and the call assistant speaks the words typed by the deaf user back to the hearing person. Dkt. # 148 at 37 (citing col. 5, Ins. 58-64 and col. 6, In. 44 to col. 7, In. 2). Although I agree that the cited specification language describes an embodiment involving a traditional relay set up, nothing in claims 1 and 6 of the '482 patent requires a traditional relay method and neither claim discloses a step in which the deaf user types words to the call assistant for revoic-ing to the hearing user.

Defendants also argue that the patentee knew how to draft claim language that required unidirectional exchange, using terms like “transmitting to” in claim 1 of the '482 patent. Although I agree that transmitting something to a person implies only a unidirectional exchange, this does not negate the fact that “communication between” could mean either one-way or two-way communication. In fact, as plaintiffs point out, the '482 patent specification makes clear that the invention “enables a degree of two-way communication between a deaf person and a hearing person.” Col. 2, Ins. 34-36 (emphasis added). The inclusion of the adjective “two-way” suggests that the patentee envisioned the possibility that “communication between” also could be “one-way.”

In sum, although I agree that “communication between” may refer to a two-way or bi-directional exchange, such as between a hearing and deaf user, nothing in the claim language or specification requires that this always must be the case.

4. “Modem ”

Plaintiffs propose that the term “modem” be defined as “a combination modulator and demodulator for converting information between a digital form and signals suitable for transmission oyer a line.” Defendants propose the following definition: “a combination modulator and demodulator at each end of a telephone fine to convert binary digital information into audio tone signals suitable for transmission over the line and vice versa.” The parties appear to agree that the term “modem” in claim 2 of the '314 patent refers to a combination modulator and demodulator for converting digital information to certain types of signals suitable for transmission over a telephone line. However, defendants contend that the modem must convert digital information to analog audio tone signals, whereas plaintiffs contend that there is no such limitation. (Although defendants’ proposed construction appears to include two modems, they have not argued this point and therefore have waived the issue.)

In support of their proposed definition, defendants cite dictionary definitions from 1994 and 1997 that define a modem as a combination modulator-demodulator that converts digital signals into analog signals. However, in reply, plaintiffs cite other dictionary references from 1996 and 1997 that suggest that modems more generally convert one type of signal or data into another type of signal or data. Pltfs’. Reply to Dfts’. Resp. to Pltfs.’ PFOF, dkt. # 209 at ¶¶ 954-58. (The '314 patent was filed in 1999 and claims priority to the '482 patent that was filed in 1997.)

Defendants argue that the signals must be audio tone signals in the context of the '314 patent because both claims of the patent state that the modem transmits “the digital text stream created by the computer over the telephone system to the telecommunication device.” Relying on their previous claim construction argument that the “telephone” terms include only traditional telephone technologies and not internet protocol connections, defendants argue that the text stream cannot be transmitted over a telephone line unless the modem uses audio signals. This argument is unpersuasive because I have construed the “telephone” terms as not being limited to traditional technologies. Therefore, the modem in a relay system using internet protocol connections would not have to convert the digital text stream into an audio signal. Further, as plaintiffs point out, the specification of the '314 patent makes clear that the signal output from the modem is not limited to either analog or audio tones. In discussing one embodiment, the specification teaches that “[t]he digital text stream would be turned into a digital communication stream by the modem and 46 and passed on to the telephone line 48 to a display ...” Col. 6, Ins. 57-60. Accordingly, I decline to construe the term “modem” to limit it to converting digital information into “audio tone signals.”

5. “Internet protocol connections between the hearing user and the relay and between the assisted user and the relay ”

This claim term appears in claim 2 of the '104 patent. Defendants contend that the term requires at least two separate and distinct internet protocol connections—one between the hearing user and the relay and another between the assisted user and the relay. Plaintiffs argue that the term should be given its plain and ordinary meaning, or in the alternative, the definition of “an internet protocol connection existing as at least part of the signal path between the hearing user and the relay and the signal path between the assisted user and the relay.”

I agree with plaintiffs to the extent that nothing in the claim language requires at least two separate and distinct internet protocol connections. As plaintiffs point out, the specification contains an embodiment for a personal interpreter that has only one connection between it and the call assistant, and both the hearing user and assisted user are connected to the relay through this same connection. Although the claim uses the plural term “internet connections,” implying more than one, the term refers to the existence of a connection between both 1) the hearing user and the relay and 2) the assisted user and the relay. If those “connections” occur through only one fine, the claim term is still met.

However, plaintiffs have failed to develop a convincing argument that the internet protocol connection can be merely a part of the signal path between the hearing user and the relay or the assisted user and the relay. The claim clearly states that there must be an internet connection—in other words a full connection—between the hearing user and the relay and between the assisted user and the relay. Because neither side’s proposed construction is correct or adds anything to the plain and ordinary meaning of the term, I will not adopt either proposed construction and rely on its plain meaning.

B. Direct Infringement

1. The 'Jp82 patent

In response to plaintiffs’ arguments that defendants infringe claim Í of the '482 patent, defendants contend that their accused products and services do not meet the following elements: 1) a relay system; 2) telephone connection; 3) telecommunication device; 4) telecommunication device within sight of a deaf person; and 5) the voice of the hearing person when speaking. With respect to dependent claim 6, defendants contend that their products and services do not meet the additional disclosed elements of 1) a single telephone line and 2) communication between the call assistant and the hearing person and the call assistant and the deaf person.

a. claim 1

1) “Relay system” element

Defendants contend that their accused products and services do not include a “relay system” as that term is used in the '482 patent. Relying on language appearing in the specification, they propose the following definition of “relay system”: “a system of voice to telecommunication device for the deaf communication in which a call assistant serves as a human intermediary between a hearing user and a deaf person.” Plaintiffs point out that defendants’ cited language appears in the Background of the Invention section of the patent specification in the midst of a discussion of traditional relay systems:

In the United States, telephone companies have set up a service referred to as a “relay.” A relay, as the term is used herein, refers to a system of voice to TDD communication in which an operator, referred to as a “call assistant,” serves as a human intermediary between a hearing user and a deaf person. Normally the call assistant wears a headset that communicates by voice with the hearing user and also has access to a TDD device which can communicate to the deaf user using a TDD appropriate protocol. In normal relay operations in the prior art, the call assistant types at a TDD keyboard with words which are voiced to her by the hearing user and then voices to the hearing user the words that the call assistant sees upon the display of his or her TDD. The call assistant serves, in essence, as an interpreting intermediary between the deaf person and the hearing person to translate from voice to digital electronic forms of communication.

Col. 1, In. 59 to col. 2, In. 8. Plaintiffs argue that the “definition” in the background section does not apply to all relays, particularly that disclosed in the '482 patent, and propose that, the term be given its plain and ordinary meaning. In the alternative, they contend that the term be defined broadly to encompass the invention disclosed in the patent: “a system for voice to assisted user device communication in which a call assistant serves as a human intermediary between a hearing user and an assisted user.”

After reviewing the parties’ arguments regarding infringement, I conclude that it is not necessary to define the term “relay system.” Under either proposed construction, the parties’ dispute relates only to what it means for the call assistant to be a human intermediary between a