Verizon California Inc. v. Ronald A. Katz Technology Licensing, L.P.

Full title: VERIZON CALIFORNIA INC., a California corporation, Plaintiff, v. RONALD A…

Court: United States District Court, C.D. California

Date published: Dec 2, 2003

NO. 01-CV-09871 RGK(RCx) (C.D. Cal. Dec. 2, 2003)

Opinion

NO. 01-CV-09871 RGK(RCx)

December 2, 2003

ORDER RE VERIZON's MOTION FOR SUMMARY JUDGMENT AND KATZ's MOTION FOR SUMMARY JUDGMENT

R. GARY KLAUSNER, District Judge

The motion of Verizon California Inc. ("Verizon") for summary judgment, and the motion of Ronald A. Katz Technology Licensing, L.P. ("Katz") for summary judgment that Verizon infringes `223 patent claim 107 and `120 patent claim 58, were submitted on the papers. The Court has read the moving and responding papers. For the reasons set forth below, the Court grants-in-part, and denies-in-part, Verizon's motion. Additionally, the Court grants-in-part and denies-in-part Katz's motion.

I. BACKGROUND

Verizon initiated the instant litigation seeking a declaratory judgment of patent non-infringement and invalidity as to certain patents owned by Katz. Katz answered Verizon's complaint and asserted counterclaims for patent infringement against Verizon. The sixteen patents at issue in this litigation are: U.S. Patent Nos. 5,128,984 ("the `984 patent"); 5,351,285 ("the `285 patent"); 5,561,707 ("the `707 patent"); 5,684,863 ("the `863 patent"); 5,787,156 ("the `156 patent"); 5,815,551 ("the `551 patent"); 5,828,734 ("the `734 patent"); 5,898,762 ("the `762 patent"); 5,917,893 ("the `893 patent"); 5,974,120 ("the `120 patent"); 6,044,135 ("the `135 patent"); 6,148,065 ("the `065 patent"); 6,292,547 ("the `547 patent"); 6,335,965 ("the `965 patent"); 6,349,134 ("the `134 patent"); and 6,434,223 ("the `223 patent").

Due to the large number of patents and claims at issue, on September 25, 2002, the Court ordered Katz to identify no more than three representative claims per patent for its infringement case and no more than twenty claims for a claim construction hearing. Katz identified twenty representative claims from eleven of the sixteen patents at issue. Pursuant to the Court's order of February 14, 2003, the number of representative claims for consideration by this Court at the Markman hearing, however, had been reduced to sixteen claims from ten of the patents at issue. The remaining representative claims are: claims 81 and 94 of the `734 patent; claim 107 of the `223 patent; claims 58, 66 and 67 of the `120 patent; claims 3 and 68 of the `285 patent; claim 66 of the `893 patent; claims 31 and 44 of the `863 patent; claim 21 of the `551 patent; claim 69 of the `762 patent; claims 1 and 13 of the `065 patent; and claim 5 of the `134 patent (collectively, the "Asserted Claims"). A claims construction hearing was conducted on May 19, 2003. The Court entered its Claim Construction Order, incorporated by reference herein, on June 23, 2003.

A. NATURE OF MOTIONS

In addition to the parties' motions for summary judgment, this Order also disposes of Verizon's motion to strike Katz's supplemental expert reports, and Katz's motion to amend its answer and counterclaims to withdraw claim 5 of the `134 patent in light of its covenant not to sue.

A.1. Verizon's Motion for Summary Judgment

As to the Asserted Claims, Verizon moves for summary judgment on the following grounds: (1) prosecution laches; (2) non-infringement; (3) invalidity based on lack of written description and (4) invalidity based on allegedly anticipating prior art.

A.1.a. Prosecution Laches

Verizon alleges that claims 58, 66 and 67 of the `120 patent, claim 107 of the `223 patent, claim 69 of the `762 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, claims 31 and 44 of the'`863 patent, claim 5 of the `134 patent, and claim 66 of the `893 patent (collectively, "the Allegedly Delayed Claims") are unenforceable for prosecution laches. Verizon's Motion at 2. Verizon relies on Katz's allegedly unreasonable delay in presenting the Allegedly Delayed Claims in the face of so-called public intervening rights and private intervening rights as the basis for its prosecution laches defense.

Katz concedes, Verizon alleges, that the subject matter of the Allegedly Delayed Claims was disclosed in certain Katz patents published between 8 to 12 years before the Allegedly Delayed Claims were first presented during prosecution of the Katz patents at issue in this litigation. Verizon alleges that the publication of these earlier Katz patents established a public intervening right based on the dedication rule. See Johnson Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1052-53 (Fed. Cir. 2002) (disclosed, but unclaimed subject matter in patent is dedicated to the public). Verizon further alleges that Katz's delay of more than two years after a public intervening right arises establishes a prima facie case of prosecution laches. Verizon Motion at 4.

Verizon also relies on harm unique to it in asserting that private intervening rights bar enforcement of the Allegedly Delayed Claims Specifically, Katz's delay, Verizon contends, has caused it economic prejudice since it has invested substantial amounts in the development and implementation of its current call center systems. Verizon also alleges that it has also lost the opportunity to design around the Allegedly Delayed Claims at an earlier time, Verizon Motion at 9. Verizon further alleges that the delay has prejudiced Verizon's ability to defend against Katz's charges of infringement due to the loss of evidence and potential witness testimony. Verizon Motion at 10.

A.1.b. Non-Infringement

Verizon moves for summary judgment of non-infringement based on a variety of contentions. For example, Katz has, not provided, according to Verizon, any infringement contentions or expert testimony that Verizon's Calling Card Services or Business Repair Services satisfy any of the Asserted Claims. Similarly, Katz has failed, says Verizon, to present any contentions or expert testimony that Verizon's Business Sales Service satisfies all the elements of claims 58, 66 and 67 of the `120 patent, claim 107 of the `223 patent, claims 81 and 94 of the `734 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, claim 69 of the `762 patent, and claim 5 of the `134 patent. Verizon also alleges that Katz has not provided any infringement contentions or expert testimony that its Repair Service satisfies every element of claim 67 of the `120 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 69 of the `762 patent, and claim 5 of the `134 patent.

Beyond Katz's alleged evidentiary failures, Verizon also alleges that claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, claim 107 of the `223 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 1 and 13 of the `065 patent, claim 21 of the `551 patent, claims 31 and of the `863 patent, and claim 5 of the `134 patent are not infringed because Verizon's Accused Services do not perform "DNIS format selection" within the meaning of the Asserted Claims, Verizon Motion at 14. Verizon raises other non-infringement contentions as discussed in more detail below.

A.1.b.1. Allegedly New Non-Infringement Contentions Raised by Verizon

At various points in its Opposition, Katz complains that Verizon has raised new non-infringement contentions and essentially attempts to introduce revised or additional expert testimony in violation of Rule 26 of the Federal Rules of Civil Procedure. See, e.g., Katz Opposition¹ at 24; 26 n. 18; 28 ns. 20, 21; 29 ns. 22, 23; 31 n. 24. For example, Verizon alleges for the first time on summary judgment, contends Katz, that its Consumer service VRUs do not include test or administrative formats. Katz also contends that Verizon has never revealed its "dedicated ports" argument until its motion for summary judgment. Although not cast in a formal motion, Katz moves to strike Verizon's contentions and corresponding expert or other witness testimony. Katz alleges that Verizon's apparent failure to meet and confer with Katz as to these non-infringement contentions, or to move to supplement its expert reports, justifies striking Verizon's contentions and evidence.

1 By "Katz Opposition," the Court means the pleading entitled "Errata Katz's Opposition to Verizon California Inc.'s Motion for Summary Judgment," filed August 6, 2003.

The Court denies Katz's motion to strike Verizon's non-infringement contentions and evidence. Katz does not complain that the declarants and expert witnesses upon whose testimony Verizon relies were unknown to Katz. Katz essentially objects to being surprised by Verizon's new non-infringement contentions. The record reveals that both parties' contentions as to the alleged infringement of Verizon's call center systems have been quite fluid over the course of the litigation. Given the state of discovery, the parties' changing infringement contentions, that the trial date has been vacated, and Katz's demonstrated ability to amply respond to Verizon's new contentions, Katz has failed to demonstrate that it is prejudiced. See Paulissen v. United States Life Ins. Co., 205 F. Supp.2d 1120, 1126 (C.D, Cal. 2002) ("In order to exclude expert testimony, the opposing party must be prejudiced.") (citations and internal quotations omitted).

A.1.c. Invalidity for Lack of Written Description

Verizon also contends that five of the Asserted Claims are invalid for failing to satisfy the written description requirement imposed by 35 U.S.C. § 112, ¶ 1. For example, claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent are invalid, asserts Verizon, as they all require selecting or identifying a format from a plurality of formats, while the specifications of these patents only describe a single format. Verizon also asserts that these same claims require that a format be selected or identified from a plurality of formats using DNIS signals. The relevant patent specifications, alleges Verizon, do not describe using DNIS signals for format selection.

Similarly, claims 81 and 94 of the `734 patent and claim 107 of the `223 patent recite that some calls in the toll free calling mode are qualified or verified while others are not. These claims, contends Verizon, are invalid because the relevant patent specifications only describe a system where all calls m the toll free calling mode are qualified or verified. Lastly, Verizon contends that claim 5 of the `134 patent requires a central processor that uses identification data related to the caller to control access to certain operations of the selected format and to avoid prompting callers with certain cues previously provided to them. The `134 patent specification, Verizon submits, describes using identification data only to control access, and not to avoid prompting callers with certain cues previously provided to them.

A.1.d. Invalidity by Anticipation

Verizon also moves for summary judgment that claim 69 of the `762 patent, claims 31 and 44 of the `863 patent, claim 66 of the `893 patent, claim 58 of the `120 patent, and claims 81 and 94 of the `734 patent are invalid under 35 U.S.C. § 102 as being anticipated by the respective prior art references set forth below.

As to claim 69 of the `762 patent, Verizon relies on an apparent offer for sale by Periphonics, Inc. of a certain Versatel telephone banking system on October 10, 1980, which is more than one year before that claim's alleged priority date, The Versatel telephone banking system is described in a document entitled "Functional Specifications for Bank of America — Versatel Home Banking System" (the "Versatel reference" or "Versatel system"). See Patel Decl. Ex. 33; see also Booth Decl. ¶¶ 11-13; Emerson Decl. ¶¶ 9-12.

The Versatel reference appears to be a functional specification that describes an automated banking system allowing callers to specify various banking transactions. The banking system uses two geographically remote "T-COMM" structures with telephone interfaces (one in San Francisco, the other in Los Angeles). See Patel Decl. Ex. 33 (Fig. 1; VI37098). The T-COMM structures are connected to a host computer in San Francisco that centrally processes accumulated data. A call to either the Sari Francisco or Los Angeles T-COMM structure results in a dialogue with the caller where caller information is collected to effect a banking request, such as an account transfer or payment. The caller responds to voice prompts provided by the banking system using a touch-tone telephone. For example, upon connection to the banking system, a caller is greeted and prompted to enter two forms of identification ( i.e., Versatel account number and password). According to Verizon, if there are any problems during the transaction, the caller can be transferred to an operator. The host system has the capability to control the system components to deliver all relevant caller information (including any information previously entered by the caller) on an operator's display screen. The operator would then be able to speak with the caller without having the caller repeat information previously provided during the automated interaction.

Claims 31 and 44 of the `863 patent and claim 66 of the `893 patent are anticipated, Verizon contends, by Moosemiller, J.P., "AT T's CONVERSANT(tm) I Voice System" Speech Technology, Mar/Apr. 1986, pp. 88-93 (the "Conversant reference" or "Moosemiller reference"). The Conversant reference describes a voice response system introduced by AT T. The Conversant reference discloses that calls can be routed from the telephone communication facility to an automatic call distributor (ACD). The ACD, in turn, routes calls to the Conversant voice response system passing along called number identification signals (DNIS) provided by the communication facility. According to the Conversant reference, the use of DNIS signals allows for "advance classification of incoming calls for different applications which are greeted by appropriate transaction prompts." See Moosemiller Reference at 88 (V133916). The Conversant reference also teaches that the voice response system can be used in a variety of applications, such as financial services, credit authorization, and college registration, etc. Depending on the application, the Conversant system uses different prompts to ask callers to enter information. For example, callers can be prompted to enter an identification number that is verified against a host database to determine access to the system. According to Verizon, one of ordinary skill in the art would understand that the Conversant reference inherently discloses prompting callers to provide two separate forms of identification (e.g., account number and password) due to its disclosure of applications, such as financial services, credit authorization, and college registration, where security is a great concern. See Patel Decl. ¶ 118.

Verizon also alleges that claim 58 of the 420 patent is invalid as being anticipated in light of a January 29, 1988 offer for sale by Periphonics, Inc. of its VoiceStar system to General Trading Co., Inc. The offered system allegedly offered by Periphonics, Inc. is described in a functional specification accompanying a proposal submitted to General Trading Co. Inc. (the "General Trading reference"). See Patel. Decl Ex. 34; see also Booth Decl. ¶¶ 15, 21. The General Trading reference appears to describe a call processing system that interfaces with other computerized systems, such as databases, to handle customer orders. According to Verizon, the General Trading reference is relevant to claim 58 of the `120 patent since it describes a system that provides English or Spanish voice prompts based on DNIS signals associated with different calls.

Lastly, Verizon asserts that a document entitled "Advanced Function VRU Applications" from the AVIOS `89 Conference of September 12-14, 1989 (the "AVIOS reference") anticipates claims 81 and 94 of the `734 patent. The AVIOS reference appears to have been submitted in connection with a presentation at the AVIOS `89 Conference. It describes the integration and use of various technologies with voice response unit (VRU) applications, including automatic screen transfer, dialed number identification service (DNIS), and automatic number identification (ANI). According to Verizon, the AVIOS reference describes a general purpose VRU that runs multiple applications (e.g., Annuities Inquiry, Health Claim Status, Flexible Benefits Enrollment, etc.). The VRU, according to Verizon, selects the application that handles the call based on DNIS signals. Patel Decl. ¶ 238. In addition, the caller's telephone number is automatically captured using ANI and is cross-referenced with a customer information database to determine the caller's identity and related information. Id. ¶ 239. This allows the system to avoid prompting the caller for account information.Id. If the calling number is not on file, the caller may be transferred to an operator after alternative processing. Id. Furthermore, certain applications can transfer the caller to an operator. Id. According to Verizon, an automatic screen transfer would deliver any information entered by the caller, as well as related customer information from a database to the operator's screen for completing the call.

A.2. Katz's Motion for Summary Judgment

Katz moves for summary judgment that Verizon's call center systems infringe claim 107 of the `223 patent and claim 58 of the `120 patent. As to claim 107 of the `223 patent, Katz's infringement contentions rely on a combination of Verizon's individual call center services that are dedicated to different business units or objectives. Katz's infringement contentions relating to claim 58 of the `120 patent, however, accuse Verizon's Services individually.

The `223 and `120 patents generally involve automated call processing systems that allow for interaction between callers using telephones and computer systems including audio response units.

The computer systems described in the `223 and `120 patents interact with users by providing automated prompts and cues to callers, receiving and processing input from callers, and providing information in response. The `223 and `120 patents describe interactive call processing systems including, what the parties have termed as, Dual Call Mode and Cue Suppression technologies. The `223 patent issued from a continuation application of the application that resulted in the `120 patent. The `120 and `223 patents, therefore, share the same written description.

The embodiment disclosed in the `223 and `120 patents supports an interactive game or lottery that accepts calls in three different Call Modes, and handles the calls in different manners depending on the corresponding call mode, See, e.g., `120 patent, Col. 3:44-59. The term "Call Mode" refers to the ability of the interactive call processing system disclosed in these patents to handle a variety of call modes, such as toll-free calls, charge calls, and area code calls. As the "Background" section of the patents describe, it is often desirable to treat callers differently depending on the call mode they use. For example, it may be desirable to limit "800" callers to a given number of accesses, while at the same time permitting an unlimited number of accesses to "900" ( i.e., charged) callers. The patents refer to this initial screening process as an example of "qualification" or "verification." In the disclosed embodiment, calls are initially handled by audio response units corresponding to the different call modes. See, e.g., `120 patent, Col. 5:6-11 Figure 1. The audio response units, under control of a control unit, provide initial prompts or greetings to callers, and qualify calls depending on the call mode. See, e.g., `120 patent, Col. 5:12-20. After initial processing or qualification, a coupler, under control of the control unit, couples the calls to an interface processor that executes steps of a format common to all call modes. See `120 patent, Col. 7:22-26; Col. 7:32-65; Col. 8:47-53.

The term "Cue Suppression" refers to the ability of the Katz system to handle repeat callers and avoid asking questions that were previously provided to them. In general terms, the Katz system stores the telephone numbers associated with the callers and identifiers for questions previously posed to them. If a caller returns, the Katz system selects a question and then accesses the stored data to determine whether the question was previously provided to the caller. If the question was not previously posed to the caller, the Katz system releases the question and stores the question identifier in association with the caller's telephone number.

Claim 107 of the `223 patent and claim 58 of the `120 patent are both method claims directed to different aspects of the interactive call processing system disclosed in these patents. Claim 107 of the `223 patent is directed to a method of operating an automated call processing system involving receiving calls in the "800" call mode and associated DNIS signals that identify different interface formats. Claim 107 further specifies various preliminary operations according to which the calls are processed. Lastly, claim 107 further requires the use of caller identification data in connection with cue suppression. Claim 107 of the `223 patent depends from claims 80 and 106, Accordingly, claims 80, 106 and 107 of the `223 patent are set forth below.

80. A process for receiving calls through a communication facility from a multitude of terminals in an 800 call mode for processing data in accordance with an identified one of a plurality of interface formats and involving digital signals including digital signals provided by the multitude of terminals for identification or data, the process comprising the steps of:

receiving calls in the 800 call mode wherein digital signals indicative of at least a first called number (DNIS) identify a first interface format;

receiving calls in the 800 call mode wherein digital signals indicative of a second distinct called number (DNIS) identify a second interface format;

processing calls received in the 800 call mode for the two distinct called numbers in accordance with preliminary operations of the first and second interface formats, wherein the preliminary operations comprise at least the step of:

providing a distinct automated greeting voice prompt to callers calling at least one of the two distinct called numbers associated with the first and second formats in the 800 call mode;

receiving caller provided data entered by the callers and testing the caller entered data to verify on-line the calls received for at least one of the two distinct called numbers to provide verified calls; and

coupling the calls received in the 800 call mode for the two distinct called numbers wherein at least certain calls are verified calls for concurrent processing in accordance with at least certain common operations of the first and second interface formats.

106. A process according to claim 80, further comprising the step of utilizing caller entered identification data or calling number identifications signals to determine an appropriate cue for a caller.

107. A process according to claim 106, wherein the appropriate cue for a caller is determined by avoiding a cue previously provided to a caller.

Claim 58 of the `120 patent is also a method claim directed to a method of operating a call processing system. However, unlike claim 107 of the `223 patent, claim 58 of the `120 patent is primarily directed to cue suppression involving tests relating to caller identity and time, but does not appear to require specific call modes or format selection under control of DNIS signals. Claim 58 depends from claim 56 of the `120 patent; accordingly, both claims are provided below.

56. A process for interfacing, through a telephone-communication facility, (1) callers who are at a multitude of remote terminals for voice-digital communication with (2) a system for prompting the callers with caller cues, said process comprising the steps of:

establishing telephone communications between the callers and the system, the system having a receiving unit for receiving digital signals including dialed-number identification signals provided automatically from the telephone-communication facility;

utilizing the dialed-number identification signals to identify one from a plurality of numbers dialed by the callers;

also receiving at the receiving unit identification signals relating to the callers;

testing said identification signals relating to the callers to determine whether to qualify the callers for access to at least a portion of operations of the system;

utilizing, for qualified callers, the identification signals relating to the callers, to avoid prompting certain callers with a certain previously provided cue or cues; and providing to the qualified callers at least one other caller cue.,

58. A process according to claim 56, wherein the process further implements a test with respect to a limit on a period of time.

A.2.a. Verizon's Preliminary Contentions

In opposition to Katz's motion for summary judgment, Verizon raises a number of preliminary contentions.

A.2.a.1. Identification of Services

Katz, contends Verizon, fails to properly identify the Verizon services which allegedly infringe claim 107 of the `223 patent and claim 58 of the `120 patent. Specifically, Verizon alleges that Katz does not make clear whether it accuses Verizon's services of infringement on a collective or individual basis. Verizon Opposition at 2. Verizon also alleges that Verizon's services are separate and distinct, Baumann Suppl. Decl. ¶¶ 9-16, which prevents infringement of claim 107 of the `223 patent and claim 58 of the `120 patent in the manner alleged by Katz, or at least raises triable issues of fact as to their infringement.

Despite Verizon's complaints, Katz sufficiently identifies the conduct or process steps performed by Verizon that Katz alleges infringe claim 107 of the `223 patent and claim 58 of the `120 patent. Verizon appears to assume, without citation to claim language, that the conceptual or physical separation of its various customer services in separate, dedicated equipment is relevant to the infringement determination of the claim 107 of the `223 patent and claim 58 of the `120 patent. As to infringement of method claims, so long as an accused infringer practices every step as defined in a patent claim, it infringes that claim. See Smith Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 1311 (Fed. Cir. 2001).

A.2.a.2. Competency of Dr. Lucantoni

Verizon alleges that Dr. Lucantoni is not competent to testify to matters concerning the operation of automated call processing systems because he does not have personal experience with components of the accused systems (e.g., ACDs, VRUs, CTI servers, etc.).

Despite pointing to a variety of alleged shortcomings of Dr. Lucantoni, Verizon fails to demonstrate that he is incompetent to testify as to Verizon's accused call center systems and their alleged infringement of the Asserted Claims. Verizon fails to demonstrate how Dr. Lucantoni 5s alleged lack of personal, direct experience with ACDs and VRUs, or his reliance on Dr. Goldberg for translating certain source code, renders him unqualified or suggests that his testimony is incapable of assisting the trier of fact. See Smith v. Ingersoll-Rand Co., 214 F.3d 1235, 1244 (10th Cir. 2000) (first-hand experience with "particular machine at issue" is not a prerequisite to admissibility of expert opinion): see also Coleman v. Parkline Corp., 844 F.2d 863 (D.C. Cir. 1988). Rather, Dr. Lucantoni's curriculum vitae reveals that he possesses extensive experience in call center operations and appears to be capable of assisting the trier of fact in determining the operation of Verizon's call center systems. As Coleman recognizes, Dr. Lucantoni's alleged lack of direct personal experience with ACDs and VRUs is not a sufficient basis to reject him as an expert in the present case, "but may affect the weight that testimony is given, a decision properly made by the jury."). Coleman, 844 F.2d at 866 (citing Martin v. Fleissner GMBH, 741 F.2d 61, 64 (4th Cir. 1984)).

A.3. Verizon's Motion to Strike Katz's Expert Reports

Verizon moves to strike the supplemental expert reports of David Lucantoni, Christopher Vellturo, Brian Dragun and Mary Ann Tucker, because they allegedly exceed the scope of supplementation permitted by the Court's June 16, 2003 order.

A.3. a Lucantoni Report

Verizon moves to strike Dr. Lucantoni's Supplemental Expert Report permitted by this Court's June 16, 2003 Order, granting-in-part and denying-in-part Katz's Motion for Leave to File Supplemental Expert Reports. Verizon bases its motion on Katz's alleged failures to comply with the June 16, 2003 Order, the Joint Discovery Plan and the Protective Order. In addition, Dr. Goldberg's review of Verizon's confidential source code, and the introduction of his testimony, according to Verizon, violate a variety of court orders, including the Protective Order, Joint Discovery Plan, June 16, 2003 Order, and the Federal Rules of Civil Procedure.

The Court denies Verizon's motion to strike the supplemental report of Dr. Lucantoni. Considering the state of discovery, Dr. Lucantoni's latest report appears to be an appropriate supplementation of his original report, In any event, Dr. Lucantoni's supplemental report is highly probative to the ultimate issue of Verizon's alleged infringement. Furthermore, especially in light of its belated production of relevant documents, introduction of Dr. Lucantoni's supplemental report does not appear to even remotely prejudice Verizon.

Katz's reliance on Dr. Goldberg to review and translate Verizon's allegedly confidential source code, even assuming it violated the Protective Order in the present case, does not appear to be sufficiently egregious or prejudicial to warrant exclusion of Dr. Lucantoni's expert report. However, although Dr. Goldberg's task largely appears to have been a mechanical exercise in locating relevant portions of, and translating, Verizon's belatedly-produced source code, the Court shall permit Verizon to depose Dr. Goldberg a single time at a time mutually agreed on by the parties. As to any such deposition of Dr. Goldberg and any preparatory activities related to the deposition, each party is to bear its own costs. Any such deposition shall not exceed six (6) hours.

A.3.b. Vellturo Report

Verizon also moves to strike the Supplemental Expert Report of Christopher Vellturo for exceeding the limits on supplementation permitted by the Court. See Nagel Decl. Ex. 11. That motion is denied

A.3.c. Dragun Report

Verizon objects to the supplementation of the Dragun Expert Report as it appears to add subject matter directed to licenses in the industry between non-parties to the present action. Verizon appears to assert that, since the original Dragun report focused solely on the license agreements between Katz and its licensees, it is unfair to permit Katz to supplement its expert report to address license agreements that did not involve Katz. However, since Verizon did not produce these license agreements until after the initial expert report deadline, Katz's experts were not afforded the opportunity to decide whether to address them in their initial reports. Accordingly, in light of its belated production of documents, Verizon can not forcefully complain that it now faces what amounts to a rebuttal report.

A.3.d. Tucker Report

Verizon moves to strike the Tucker report as it improperly relies, says Verizon, on information beyond what the June 16th Order allowed. Namely, it appears that the supplementation to the Tucker report is based largely on depositions that occurred after the initial expert reports were due. Given the parties' discovery dispute over the sensitive, potentially-privileged information sought by Katz, it is understandable full discovery on the issue of wilfulness extended beyond the expert report deadline. Arguably, the Tucker report exceeds the scope of the Court's order; however, the Court hesitates to strike it since the supplementation appears to be based on highly relevant witness testimony. Given the circumstances surrounding this aspect of the litigation, Verizon should be given an opportunity to file a rebuttal report to the Tucker report. In light of the foregoing, any rebuttal report to the Supplemental Tucker report shall be prepared and filed within fourteen days of the date of this order.

A.4. Katz's Covenant Not to Sue under Claim 5 of the `134 Patent

Katz has filed a Notice of Covenant Not to Sue on Claim 5 of U.S. Patent No. 6,349,134, by which, through counsel's letter dated August 28, 2003, Katz "unconditionally covenants not to sue Verizon California, Inc. ("Verizon") for infringement of claim 5 of the `134 patent as it now reads by any system or service currently made, used, sold or offered for sale by Verizon from the beginning of time to the present date." See Notice of Covenant, Ex. A at 1. Katz has also filed a motion to amend its answer to withdraw claim 5 of the `134 patent from its infringement counterclaim. Katz excludes from the scope of this covenant "new systems or services that Verizon may develop in the future or that are or were "in the pipeline" but have not been made, used, sold or offered for sale on or before April 18, 2002,² the date on which discovery closed."Id. Katz's covenant not to sue, it alleges, dissolves any justiciable controversy as to claim 5 of the `134 patent and divests this court of jurisdiction over Katz's counterclaim, and Verizon's declaratory judgment action, to the extent either party seeks relief involving that claim.<sup>3</sup> Verizon opposes Katz's attempt to remove claim 5 of the `134 patent from the instant case.

2 Katz's reference to "April 18, 2002" appears to be a typographical error, as fact discovery closed on April 18, 2003. See September 25, 2002 Scheduling Order at 1. This is confirmed by Katz's motion to amend its answer. See Katz Motion to Amend Answer at 5.

3 There appears to be some confusion as to whether Verizon's claim for declaratory relief extends to claim 5 of the `134 patent. A review of Verizon's first amended complaint reveals that its claim for declaratory relief does not extend to the `134 patent. See First Amended Complaint ¶ 7.

"Article III of the Constitution requires that there be a live case or controversy at the time that a federal court decides the case." Amstar Corp.v. Envirotech Corp., 823 F.2d 1538, 1549 (Fed. Cir. 1987). An appropriate covenant not to sue may deprive a Federal Court of subject matter jurisdiction over a patent infringement action where it eliminates an actual controversy between the parties. Amana Refrigeration, Inc. v. Ouadlux, Inc., 172 F.3d 852, 855 (Fed. Cir. 1999). The burden is on the party asserting a claim for relief to establish that jurisdiction exists. See Int'l Medical Prosthetics Res. Assocs. Inc. v. Gore Enter. Holdings. Inc., 787 F.2d 572, 575-576 (Fed. Cir. 1986) (declaratory relief claim).

Verizon contends that Katz's covenant not to sue does not eliminate a case or controversy as to the other claims of the `134 patent, and further points out that claim 5 was brought in a "representative" capacity. Verizon also concludes that "[b]ecause claim 5 is `representative's of at least all the other `134 patent claims, summary judgment for Verizon California on Katz's allegations as to claim 5 will bar Katz from asserting infringement of any of the `134 patent claims in a future case." Verizon Opposition to Notice at 2 (emphasis in original).

Verizon's contention, while having some initial appeal, is unavailing. Claim 5 of the `134 patent, pursuant to the Court's September 25, 2002 Order, is asserted in a representative capacity.<sup>4</sup> Additionally, Katz's covenant not to sue, while removing a controversy as to claim 5 of the `134 patent, does not eliminate a reasonable apprehension that Verizon does not face an infringement suit directed to other claims of the `134 patent. It also appears that Katz's covenant not to sue is an attempt, enabled by the September 25, 2002 Scheduling Order, to insulate the remaining claims of the `134 patent from the issue preclusive effect of a finding that the `134 patent does not adequately describe cue suppression in the manner required by the patent claims. However, Verizon's motion for summary judgment requests, among other things, a judicial determination that claim 5 of the `134 patent is invalid for failing to satisfy the written description requirement of 35 U.S.C. § 112, ¶ Verizon's Notice of Motion at 5:15-18, Verizon's motion for summary judgment does not seek a judicial determination as to any other claim in the `134 patent.<sup>5</sup> By seeking a judicial determination as to the validity of a patent claim potentially no longer associated with an actual controversy, Verizon appears, in effect, to ask this Court for an impermissible advisory opinion that any claim of the `134 patent that requires utilization of caller identification information to suppress cues is invalid for failing to satisfy the written description requirement. See Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1368 (Fed. Cir. 2003) (a Federal court may not "render an advisory opinion regarding matters not properly before [it].").

4 However, this appears to merely mean that claim 5 of the' 134 patent has been selected by Katz for presentation to the Court, and does not prevent Katz from asserting other claims at a subsequent stage of the litigation. Accordingly, no other claim of the' 134 patent is properly before the Court at this time.

5 Verizon's invalidity contention, however, is based on a limitation found in independent claim 1 of the `134 patent, from which claim 5 depends. See Verizon Motion at 34:13-24. Indeed, all claims of the `134 patent appear to contain the same or similar limitation.

Verizon contends that Katz's covenant not to sue is also insufficient as its scope is limited to "any system or service currently made, used, sold or offered for sale . . ." and only applies to systems at issue in this suit. However, Katz's clarification of the covenant not to sue in its motion to amend the answer appears to bar Katz from asserting infringement of claim 5 of the `134 patent as to all Verizon call center systems and activities. See Katz Motion to Amend Answer at 5 ("Katz's covenant not to sue insulates Verizon California from present and future claims or lawsuits on Verizon California's activities up through April 18, 2003 under claim 5 of the `134 patent."): see also Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1059 (Fed. Cir. 1995) (covenant not to sue, presented in motion papers and briefs, rather than in document executed by party, is sufficient to erect an estoppel and thus eliminate case or controversy).

Verizon also alleges that Katz's covenant not to sue does not eliminate the controversy between the parties because Katz improperly excludes from the scope of its covenant Verizon's call center systems and services that were "in the pipeline" but not made, used, sold, or offered for sale on or before April 18, 2002. Regardless of the exact date of April 18, 2002 or April 12, 2003 (the "gut-off date"), Katz's limitation of its covenant appears to have created the possibility that Verizon's "present activity" may place it at risk of infringement liability. See Super Sack Mfg., 57 F.3d at 1059. However, as discussed above, the only claim for relief as to claim 5 of the `134 patent is Katz's counterclaim for patent infringement; Verizon's claim for declaratory relief does not extend to this claim. Furthermore, Katz's counterclaim for patent infringement does not appear to apply to any Verizon system first implemented after the discovery cut-off date. Verizon raises its invalidity and non-infringement contentions as to claim 5 solely as affirmative defenses to Katz's counterclaim. Accordingly, the scope of Katz's covenant not to sue, if otherwise effective, appears to extend to all Verizon systems that Katz has accused, or could accuse, of infringement in this litigation.⁶

6 Moreover, even if Verizon's claim for declaratory relief were to extend to claim 5 of the `134 patent, there is no evidence before the Court as to whether Verizon has implemented any material changes to its call center systems or services since the cut-off date. Furthermore, Verizon, which would bear the burden of establishing that an actual controversy exists, does not allege that, despite Katz's covenant not to sue, its present activity places it at risk effacing an infringement suit.

In light of the foregoing, Katz's covenant not to sue and the procedural posture of the litigation suggest that the appropriate course is to dismiss Katz's patent infringement counterclaim to the extent it relates to claim 5 of the `134 patent from the litigation, and to address Verizon's invalidity and non-infringement contentions relating to the `134 patent at a later time should it be required. Furthermore, the Court grants Katz's motion to amend its answer only to the extent it seeks to withdraw claim 5 of the `134 patent from its infringement counterclaims.

B. Verizon's Accused Call Center Systems

As to the Asserted Claims, Katz accuses four of Verizon's services of infringement: (1) Residential Repair Customer Service ("Repair Service"), accessible by dialing 1-800-483-1000(2) Business Repair Customer Service ("Business Repair Service"), accessible by dialing 1-800-483-2000; (3) Consumer Service ("Consumer Service"), accessible by dialing 1-800-483-3000 or 1-800-483-4000; and (4) Business Sales Customer Service ("Business Sales Service"), accessible by dialing (collectively "Verizon Services"). See, e.g., Lucantoni Decl. Ex. 2 (Suppl. Lucantoni Report) ¶ 45. Verizon's call center services generally provide automated touch-tone menus to allow callers, for example, to obtain account information, make payment arrangements, identify in-person payment locations, report problems with telephone service, and speak to service representatives. According to Verizon, each of the individual Verizon Services is provided using separate, dedicated equipment, such as separate Voice-Response Units (VRUs), or central office 5ESS switches. Baumann Supp. Decl. ¶¶ 9-16.

Certain of Verizon's accused call center systems generally include Automatic Call Distributors ("ACDs"), Voice Response Units ("VRUs"), and Computer Telephony Integration (CTI) Servers. An ACD is a telephonic device that, among other things, manages incoming calls (e.g., call queuing, etc.) and routes or otherwise handles them based on the number called and a set of instructions, such as a telescript and a routing table. An ACD can be configured to capture and use Dialed Number Identification Service (DNIS) signals, or Automatic Number Identification (ANI) signals. VRUs are computerized systems that essentially provide a telephonic interface to a variety of business or other applications, such as home banking, and handling sales orders. For example, VRUs perform such functions as answering incoming calls, providing automated voice greetings, providing menu prompts to callers, and receiving touch-tone inputs. At least as to Verizon's Consumer Service, the VRUs may also interact with CTI servers to access other resources, such as a database, for example, to determine the status of a caller's account or to implement a payment request. The CTI servers can also be connected to operator terminals to provide data relating to callers, when calls are transferred from VRUs.

Verizon's call processing infrastructure is slightly different for business customer calls. See Baumann Suppl. Decl. ¶¶ 13, 14. For example, Verizon's Business Repair Service does not use VRUs, but instead uses an auto-attendant feature implemented on an ACD. Id. In addition, calls to Verizon's — 5000 number (Business Sales Service) are handled by a 5ESS(r) switch, "which interacts with the Integrated Services Control Point (ISCP) that has an IVRU component within it." Lucantoni Suppl. Report ¶ 51 Scenario 7; see also Baumann Suppl. Decl. ¶ 14.

According to Katz's expert, Dr. Lucantoni, a VRU includes three major components: 1) a Voice Processing System (VPS); 2) a VPS application server (VAS); and 3) VPS Ethernet LAN. Lucantoni Suppl. Report ¶ 47. The VPS handles telephony and speech management functions and includes a voice generator that provides prompts to callers. Id. ¶ 48. Each VPS may handle multiple calls simultaneously, and stores the custom voice scripts provided by the VPS on VPS hard disks. Sumner Decl. Ex. 31 (V36087). The VPS also includes a "T1" interface card that receives call data signals, such as DNIS and ANI. Lucantoni Suppl. Report ¶ 48. The VPS application server (VAS) supports multiple VPS units, and runs "application software, which contains the call-flow logic and Computer Telephony Interface ("CTI") server interface." Id. ¶ 49; see also Sumner Decl. ¶ 205. Lastly, the VPS Ethernet LAN interconnects the VPS application server and the individual VPS units. See Sumner Decl. Ex. 31 (V36088 — Figure 2-1),

Verizon explains further that Verizon's Consumer and Repair Service VRUs employ a "process-per-port" architecture. Sumner Suppl. Decl. ¶ 29. That is, each VPS in a particular VRU deployment has 48 ports, with each VPS port corresponding to the "capability to handle calls on a single phone line." Id. ¶ 30. According to Verizon, the memory space dedicated to each port is "preloaded with the particular application associated with that port." Id. For example, each port that implements Verizon's Consumer service is preloaded with its own copy of the Phase I and Phase III applications. Id. According to Verizon, each VPS port may only handle one call at a time. Id. ¶ 31.

According to Katz, a residential customer call to a Verizon service, such as Verizon's Consumer or Repair Service, ultimately gets routed to a selected Automatic Call Distributor (ACD), which "plays an automated greeting to the caller and then transfers the call to an Interactive Voice Response Unit (IVRU)." Lucantoni Suppl. Report ¶ 46. The ACD selects the appropriate VRU port based on DNIS signals. See Lucantoni Suppl. Report, Scenario 1 ¶ 1.8. The VRU, says Katz, uses the DNIS signals provided by the ACD to select an appropriate format for the caller, such as a Repair, test DNIS, and administrative formats. See id., Scenario 1 ¶ 1.10. The VRU presents the caller with an interactive menu. Id If the user does not respond to the interactive menu, the ACD, under control of the VRU, transfers the call to a live agent. Id. Otherwise, the VRU processes the call. Id.

Verizon's call center systems, alleges Katz, use Dialed-Number Identification Service (DNIS) signals to determine which format to provide to a caller. For example, an ACD receives an incoming call and, based on DNIS signals, connects the call to an available port of a VRU. Bergan Decl. Ex. L (V36089); see also V112664 ("GTE Rockwell ACD's . . . routes the call [to repair] to the appropriate Vas Cluster."); see also Bergan Decl. Ex G (Baumann Tr. 422:4-423:1). When the VRU answers the call, the ACD sends the DNIS to the VRU as Dual-Tone Modulated Frequency (DTMF) signals. At least as to the Customer Contact call processing software, a "Phase I" application is the "primary call manager" that "answers all incoming calls, classifies the calls based on the received DNIS, links to one of three applications (PhaseIIICCIII, PhaseIIICCIIIEnhanced, or Express Dial Tone) as required, and performs all call transfers. Id. (V36092), As to classification of calls, it appears that the DNIS signals received with a call are used to determine the value of the "Call.Type" and "Caller.Type" fields associated with a call state. Id. (V36101). However, the values of these fields may change depending on the options selected by the caller. Id. Furthermore, the VAS, a component of the VRU, consults DNIS signals against a DNIS table to determine, among other things, what "functional process (Care, Billing, Test-DNIS, Administrative, etc.) is to Handle the Call" V 112664; see also Id. VI12665.

Verizon's description of the operation of its Repair and Consumer Services is largely consistent with Katz's description. For example, a caller to Verizon's Repair or Consumer Service is initially routed to an ACD, which greets the caller with "Thank you for calling Verizon. . . ."See Stunner Suppl. Decl. ¶ 8. Specifically, the ACD receives the DNIS associated with a given call and consults a DNIS table to determine to which "application vector" the call should be routed. Id. ¶¶ 9, 10. In the case of Verizon's Repair Service, the ACD routes the call to an application vector that presents an automated greeting to the caller and then runs another process that "queues the call to the Care VRU." Id. ¶ 11. Calls to Verizon's Consumer service appear to be initially handled in a similar manner. See id. ¶¶ 12, 13.

As discussed more fully below, the operation of Verizon's Consumer and Repair Service VRUs are somewhat similar. In both, a first software module or application initially handles the call. However, in Verizon's Consumer Service, the Phase I application that initially handles the call appears to use DNIS signals to select between two subroutines that provide slightly different menu prompts to callers. The Phase I application then selects from a variety of operations or applications based on the user's touch tone input. In Verizon's Repair service, the GTE-Init application receives the DNIS signals associated with a call and consults a table to decide between the GTE-CARE application; an administrative application, and a TestDNIS option.

Another distinguishing feature between Verizon's Consumer and Repair Services is that certain applications associated with Verizon's Consumer Service run on dedicated ports of the VRUs. Calls to the EDT application, for example, are therefore routed to these dedicated ports by the ACDs. The evidence submitted by the parties does not appear to suggest that different applications associated with the Repair Service run on dedicated VRU ports.

B.1. Verizon's Consumer Service

According to Verizon, its Consumer Service format is implemented by multiple computer programs executed by its consumer VRUs, including the Phase I application, the Phase III Billing applications, and the EDT application, Sumner Decl. ¶ 56. The Phase I application answers all incoming calls to the consumer ports of the VRU. Id. ¶ 63. Among other things, the Phase I application executes certain preliminary operations, such as determining whether a call center is open, whether a DNIS signal has been provided with a call, and the hotly-disputed steps D6 and D7 which use DNIS associated with a given call to determine which of the "billing" and "orders" menus to provide to a caller. Id. ¶¶ 61, 63, 64. Different subroutines of the Phase I application present the billing and orders menu to callers and initially process the user's selection by setting the variable "Exchange.Call.Path." Id. ¶¶ 67, 68, 76-86, 87-97. After the appropriate subroutine operates, the Phase I application essentially responds to the value of Exchange.Call.Path set by either of the two subroutines. Id. ¶ 98. For example, depending on the value of Exchange.Call.Path, the Phase I application links to an orders application or a billing application, transfers the call to an appropriate "gate," or transfers the call to a repair application. Id. ¶¶ 99-102.

Verizon's EDT application is accessed in a slightly different manner. According to Verizon, the EDT application runs on separate dedicated ports of its VRUs. Id. ¶ 111. Accordingly, when the ACD receives a call including a DNIS identifying the EDT application, it prompts the caller to press "1" and, if the caller complies, transfers the call to one of the ports of a VRU dedicated to the EDT application, essentially bypassing the Phase I application. Id. ¶ 116, 117. Pursuant to the EDT application, the VRU plays an announcement and automatically transfers the call to an agent. Id. ¶ 111.

Verizon's Consumer VRUs can also provide prompts in either Spanish or English depending on the DNIS received with a given call. Id. ¶ 130. That is, when the VRU receives a call and detects a "Spanish" DNIS type, it sets a flag or environment variable that determines in part which voice prompt to select within the prompt library that contains prompts in both Spanish and English. Id.

B.1.a. Contentions re Verizon's Consumer Service

Katz asserts, according to Verizon, that the "DNIS format selection" required by the Asserted Claims are satisfied by eight different operations in Verizon's Consumer Service: (1) steps D6 and D7 in the Phase I application; (2) test DNIS formats; (3) administrative formats; (4) the Express Dial Tone ("EDT") application; (5) AUTO BILL; (6)default DNIS operations; (7) English/Spanish voice prompts; and (8) selection of an operator gate.⁷ Steps D6 and D7:

7 Katz, however, clarifies that it does not assert that default DNIS and the AUTOBILL features of Verizon's Consumer application are by themselves separate formats.

Katz and Verizon dispute whether using DNIS signals to select between two subroutines that provide different voice prompt menus is "DNIS format selection" within the meaning of the Asserted Claims. That is, Verizon and Katz do not appear to raise factual issues as to the operation of the Verizon's Phase I application; rather, the parties dispute whether using DNIS signals to branch to different menus or subroutines within the Phase I application is "DNIS format selection" within the meaning of the claims.

When a caller dialed a consumer service number, the call was routed⁸ to the Phase I application on the consumer VRUs. Baumann Decl. ¶ 11; see also Sumner Decl. ¶ 55. The Phase I application performs a number of operations, such as checking whether the call center is open or whether it is a holiday. Sumner Decl. ¶¶ 64, 69-72; Lee Decl. Ex. 2 (V8321 1). As the flow chart diagram illustrates, the Phase I application used DNIS signals to determine which set of prompts to provide to a caller. See Lee Decl. Ex. 2 (V83211). Specifically, after the Phase I application checked whether the call center is open and whether the caller called on a holiday, the Phase I application checked whether the caller's DNIS was an orders DNIS type or a billing DNIS type. Sumner Decl. ¶¶ 64, 73-74; Lee Decl. Ex. 2 (V83211). If it was an orders DNIS type, the application provided the orders main menu. Sumner Decl. ¶¶ 64-65, 74; V8321 1-2. If it was a billing DNIS type, the application provided the billing main menu to the caller, Sumner Decl. ¶¶ 64, 66, 74; V83211, V83213.

8 Verizon has apparently eliminated the distinction between billing and orders calls; accordingly all callers to the billing and orders numbers are provided the same menu prompts. See Baumann Decl. ¶ 13.

As Mr. Sumner indicates, the orders and billing main menus provided the caller with the same options. The only difference between these menu prompts was that the orders main menu prompted the caller to enter (1) for orders and (2) for billing, while the billing main menu prompted the caller to enter (1) for billing and (2) for orders. Sumner Decl. ¶¶ 65-66, 78-85, 89-96; Baumann Decl. Ex. 3 (Consumer Call Flow — Phase I at 2-4); see also Baumann Decl. Ex. 5 (Baumann Dep. (10/17) at 73:4-74:15). When the caller made the same selection at either billing or orders main menu, the consumer call flow branched to the same subroutine, and executed the same code within the Phase I application. Sumner Decl. ¶¶ 65-66, 78-85, 89-96; Baumann Decl. Ex. 3 (Consumer Call Flow — Phase I at 1-3); see also Baumann Decl. Ex. 5 (Baumann Dep. (10/17) at 73:4-74:15).

Test DNIS and Administrative Formats

Verizon's consumer VRUs, according to Katz, further support Test DNIS and administrative formats. Verizon alleges, however, that its consumer VRUs do not support a Test DNIS option; rather, to test the Consumer Service, Verizon employees call an unpublished telephone number corresponding to a particular VRU,⁹ which handles the call like any other Consumer call. Sumner Decl. ¶ 136; Baumann Decl. ¶ 18.

9 From this, the Court assumes that the test number allows Verizon employees to reach a desired VRU, as opposed to having the ACD select one VRU from a plurality of VRUs. That is, the ACD only routes calls including DNIS signals identifying this test number to one particular VRU.

The Test DNIS option, according to Verizon, is an option that allows a Verizon employee to dial a special phone number assigned to a given VRU that allows for tests of the Repair Service application by using a "test DNIS." Baumann Decl ¶ 16. That is, when an employee dials the special test number, the VRU prompts the user to enter a test DNIS, which the VRU uses as if it were an actual DNIS supplied by the telephone network. Id. This allows a Verizon employee calling from Texas, for example, to test a Repair Service VRU as if the call came from California. Id. ¶ 17. Verizon's Consumer VRUs, says Verizon, do not include this test DNIS capability; rather, while each VRU does have a special, unpublished telephone number, the actual DNIS provided by the telephone network is used when an employee calls to test the system. See Baumann Decl. ¶¶ 18, 21. Katz, on the other hand, appears to allege that Verizon's consumer VRUs include a test format, since "Verizon's consumer DNIS tables clearly identify the test format." Katz Opposition at 25.

By administrative format, the parties appear to refer to the interface application by which the VRU operational parameters and voice scripts may be configured. As Verizon indicates, each VRU hosts an administrative application that allows Verizon employees to "modify the various parameters and vocabulary items that the Consumer Service uses." Baumann Decl. ¶ 26. This application has a visual console interface, which is not accessible using a phone. Id. The VRU, however, also supports a Remote Recording Facility (RRF) application that allows certain vocabulary items to be modified, enabled, or disabled. Id. ¶ 27. The RRF application is a voice-based application that runs on a dedicated port of the VRU. When an ACD receives a DNIS signal identifying the RRF application, it automatically routes the call to the dedicated RRF port of the designated VRU. Id. ¶ 27. The rest of the ports of the VRU are dedicated to Consumer, functions. Id. Thus, according to Verizon, it is the ACD which determines whether calls should be routed to the dedicated RRF port or a consumer port of the VRU. Id. Verizon alleges that this routing function does not constitute DNIS format selection.

Express Dial Tone Feature

The Express Dial Tone (EDT) feature of the Consumer Service is used to offer phone service to potential customers who have moved into a new home whose phone has been disconnected. Specifically, Verizon marks telephone lines where callers have discontinued service. If a phone is plugged into one of these lines, Verizon provides the line with a dial tone and automatically connects the caller to the EDT service. Any call to the EDT service is assigned an EDT DNIS type. Baumann Decl. ¶ 33, When the ACD receives a call with an EDT DNIS, the ACD prompts the caller to press 1.Id. ¶ 34. If the caller presses 1, the ACD transfers the call to a dedicated port of a VRU. Id. The VRU then plays an announcement and automatically initiates transfer of the call to a live agent. Id. The VRU, says Verizon, never prompts the caller to provide any touch tone responses. Id. Autobill DNIS Types

According to Verizon, the DNIS tables associated with a Consumer VRU do not recognize an Autobill DNIS type. The Phase I application, therefore, never branches to an AUTO BILL application based on DNIS because it never recognizes any DNIS as an AUTO BILL DNIS. See Baumann Decl. ¶¶ 38-41. Katz states, however, that it does not contend that Verizon's AUTOBILL feature is by itself a separate format. See Katz Opposition at 27 n. 19. Default DNIS

Verizon, contends Katz, misses the point of its contention that the Default DNIS operations demonstrate that "a call flow cannot be initiated unless DNIS is received." Katz Opposition at 28. That Verizon's Consumer Service performs "DNIS format selection," alleges Katz, is demonstrated by the fact that the VRU selects a default DNIS if a DNIS type is not received or defined. Specifically, the Phase I application checks whether it received a defined DNIS with the call. See Sumner Decl. ¶¶ 143-147. If the Phase I application receives a defined DNIS, the Phase I application continues to the next step. Id. If the Phase I application does not receive a defined DNIS, it retrieves a default DNIS and continues with the same step it would have if it had received a defined DNIS. Id. English/Spanish Prompting Capability

The ability of Verizon's Consumer Service VRUs to provide prompts in both English and Spanish, contends Verizon, does not mean that two separate formats are selected. Rather, as discussed above, the detection of a Spanish DNIS type results in a language flag being set such that Spanish voice prompts are retrieved instead of corresponding English voice prompts. That Verizon's Consumer service call center systems provide prompts in English or Spanish based on DNIS signals associated with calls demonstrates, according to Katz, that the Verizon's call center systems are separate formats, since a format is, in part, "the ` content and sequence of steps to gather information from and convey information to callers.'" Katz Opposition at 28 (quoting Claims Construction Order at 8) (emphasis in original).

Selection of Operator Gate

Verizon contends that the selection of an operator gate is not DNIS format selection, since an operator is not a format. Katz, on the other hand, alleges that the different operations prior to and implementing the transfer of calls to different operator gates constitute separate formats.

B.2. Verizon's Repair Service

Similar to Verizon's Consumer Service, its Repair VRUs host a "GTE-Init" application which initially fields all calls to the Repair Service. Sumner Decl, ¶ 159. As Verizon describes, the GTE-Init application receives the DNIS signal associated with a given call and determines the logical component or process that should handle the call.Id. 159, 163. Verizon's Repair VRUs also appear to support a "repair application," an "administrative application", and a "test DNIS" option.See id. ¶ 164. According to Verizon, the GTE-Init application receives the DNIS associated with a call and determines to which of the applications to branch based on DNIS. Id. Specifically, the GTE-Init application consults a table that identifies the program to be used. See id. ¶ 164, Ex. 22.

If the DNIS indicates that the user intends to invoke the test DNIS option, the GTE-Init application prompts the caller to enter a test DNIS.Id. ¶ 166. If the test DNIS provided by the user is valid and confirmed, the GTE-Init application sets the DNIS to be used throughout the program to the DNIS number entered by the caller. Id. ¶¶ 166, 167. The GTE-Init application then branches back to an earlier part of the program as if it had just received the call. Id. ¶¶ 167, 168.

Verizon's administrative functionality is executed by an application called the GTE Administrative On-Line (GTE-AOL) application. Id. ¶ 171. When the GTE-Init application detects an Administrative DNIS type, according to Verizon, it branches to this application. Id. ¶¶ 171, 173. Similarly, when the GTE-Init application detects a regular Repair Service call, it selects or branches to the GTE-CARE application. Id. ¶ 164.

B.3. Verizon's Business Sales Service

Katz asserts that the Business Sales Service in combination with Residential Billing (i.e., Consumer) infringes claims 81 and 94 of the `734 patent and claim 107 of the `223 patent. As Katz's expert Dr. Lucantoni describes, the telephone network routes calls to Verizon's Business Sales Service to a 5ESS switch. Lucantoni Suppl. Report ¶ 7.2. Upon receipt of the call, the 5ESS switch queries the Integrated Service Control Point (ISCP), which processes calling number information and data obtained during interaction with the caller to determine how to route the call. See id. ¶¶ 7.6-7.18. For example, the ISCP uses the telephone number provided by the caller, or automatically provided by the telephone network (i.e., ANI), to determine the caller's customer type and account status. See id. Based on this initial processing the ISCP can return a DNIS and trunk group ID to an ACD which routes the call accordingly. See id. ¶¶ 7.19-7.21. According to Katz, if the customer type associated with the caller is a residential customer type, the 5ESS switch re-routes the call based an 800 or local number provided by the ISCP. Id. ¶ 7.23. The caller is ultimately provided the residential billing format. Id. ¶ 7.24. Katz appears to allege that, while the Business Sales Service does not use DNIS to identify a format, DNIS signals are used upon transfer of the call to identify the Consumer format. Katz Opposition at 30.

II. LEGAL STANDARD

Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.Proc. 56(c). Initially, the moving party bears the burden to demonstrate that there is no genuine issue of material fact and that it is entitled to summary judgment as a matter of law. British Airways Board v. Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978). When the movant bears the burden of proof at trial on the issues raised in the summary judgment motion, its showing must be sufficient for the court to find that no reasonable trier of fact could find other than for the moving party. See Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986) (quoting W. Schwarzer, Summary Judgment Under the Federal Rules: Defining Genuine Issues of Material Fact, 99 F.R.D, 465, 487-88 (1984)). Additionally, "[t]he inquiry involved in a ruling on a motion for summary judgment . . . necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits." Anderson v. Liberty Lobby. Inc., 106 S.Ct. 2505, 2510-11 (1986). In addition, "[s]ummary judgment must be granted against a party who has failed to introduce evidence sufficient to establish the existence of an essential element of that party's case, on which the party will bear the burden of proof at trial."Novartis Corp. v. Ben Venue Laboratories, Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001) (citing Celotex Corp. v. Catrett. 106 S.Ct. 2548 (1986)).

Once the moving party satisfies this initial burden, the nonmoving party "may not rest upon the mere allegations or denials of the adverse party's pleadings . . . [T]he adverse party's response . . . must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.Proc. 56(e), The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts."Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 106 S.Ct. 1348, 1356 (1986). "Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.'" Li; Anderson, 106 S.Ct. at 2512 ("The mere existence of a scintilla of evidence . . . will be insufficient"). However, on summary judgment, the court must draw all justifiable inferences in favor of the nonmoving party. Masson v. New Yorker Magazine, Inc., 111 S.Ct. 2419, 2434-35 (1991).

III. ANALYSIS

A. Prosecution Laches

Verizon alleges that claims 58, 66 and 67 of the `120 patent, claim 107 of the `223 patent, claim 69 of the `762 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, claims 31 and 44 of the `863 patent, claim 5 of the `134 patent, and claim 66 of the `893 patent are unenforceable for prosecution laches.

The equitable doctrine of prosecution laches may bar enforcement of patent claims issuing after an unreasonable and unexplained delay in prosecution, even though the applicant complied with pertinent statutes and rules. See Symbol Techs., Inc. v. Lemelson Med., Educ. Res. Found., 277 F.3d 1361, 1363 (Fed. Cir. 2002); see also In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002). The Federal Circuit's relatively recent revival of prosecution laches as an affirmative, equitable defense to patent infringement has left many unanswered questions regarding application of the defense, such as the elements of the defense, the applicable burden of proof, and the definition and significance of adverse intervening rights. See, e.g., Stambler v. RSA Security, Inc., 243 F. Supp.2d 74, 76 (D. Del 2003) ("Unfortunately, neither Congress nor the Federal Circuit has provided any further guidance on the legal standards applicable to the prosecution laches defense."); Digital Control Incorporated v. McLaughlin Mfg Co., Inc., 225 F. Supp.2d 1224, 1226 (W.D. Wash. 2002) ("The Supreme Court cases of the 1920's and 1930's provide little guidance in how to determine in the instant case if there has been an unreasonable and unexplained delay."); see also Reiffin v. Microsoft Corp., 270 F. Supp.2d 1132 (N.D. Cal. 2003); Chiron Corp. v. Genentech, Inc., 268 F. Supp.2d 1169 (E.D. Cal. 2002).

As to the applicable burden of proof, the Court adopts the reasoning set forth in Intuitive Surgical. Inc. v. Computer Motion, 2002 WL 31833867 at 3 n. 4 (D.Del. Dec. 10, 2002) (NO. CIV A. 01-203-SLR), and holds that the preponderance of the evidence standard applies to the prosecution laches defense, as it raises considerations analogous to estoppel arising out of delay in enforcing a patent. See A.C. Auckerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1044-45 (Fed. Cir. 1992) ("The issue of laches concerns delay by one party and harm to another. Neither of these factors implicates the type of special considerations which typically trigger imposition of the clear and convincing standard.")

Symbol's citation to Supreme Court precedent provides some guidance as to the elements of the prosecution laches defense and a prima facie case in the context of patent claims issuing from continuation or divisional applications. Specifically, from Crown Cork Seal Co. v. Ferdinand Gutman Co., 58 S.Ct. 842 (1938), it appears that proof of "intervening adverse public rights" is a requisite element of a successful prosecution laches defense. 58 S.Ct. at 846: see also Symbol, 277 F.3d at 1364. That is, in the absence of intervening adverse rights for more than two years prior to the presentation of patent claims in a continuation or divisional application, the claims were filed "in time'* rendering prosecution laches inapplicable. See 58 S.Ct. at 846; General Talking Pictures Corp. v. Western Elec. Co., 58 S.Ct. 849, 853 (1938). However, where the claims at issue were presented more than two years after the existence of an intervening right, the patentee must demonstrate sufficient excuse for the delay. See Crown Cork, 58 S.Ct. at 846.

A.1. Public Intervening Rights

Verizon alleges that the publication of earlier Katz patents disclosing, but not claiming the subject matter of the delayed claims erects a public adverse intervening right.

Although the controlling authorities are somewhat ambiguous and do not squarely address the precise issue, General Talking Pictures Corp. v. Western Elec. Co., 58 S.Ct. 849 (1938), suggests that the publication of a parent application upon issuance as a patent does not create an intervening right as to claims presented in a continuation or divisional application. Rather, General Talking Pictures appears to hold that intervening rights arise from the actions of others adverse to the patentee. For example, in General Talking Pictures, the Supreme Court considered whether a patentee may validly obtain claims to an invention presented in a divisional application filed more than two years after public use of the invention by the patentee, a licensee or an assignee. See 58 S.Ct. at 851. Four patents resulting from divisional and continuation applications were at issue. As to two patents, the Supreme Court held that prosecution laches did not bar enforcement of the patents because there had been no public use prior to the filing of the divisional applications from which the patents issued. 58 S.Ct. at 853. More importantly, as to the remaining two patents, the Supreme Court noted that the patentee's use was the only alleged public use, which did not precede by two years the filing of the original applications from which the continuation applications claimed priority.Id, The Supreme Court held that "[i]n the absence of intervening adverse rights for more than two years prior to the continuation applications, they were in time," id, suggesting that the patentee's own public use was insufficient to erect an adverse intervening right. By extension and despite the dedication rule, the publication of a parent patent does not create an adverse intervening right as against a continuation or divisional application including claims to disclosed, but unclaimed subject matter, in the parent patent.

Verizon's contention does have some initial appeal in that a published patent injects the disclosed subject matter into the public domain, and dedicates unclaimed subject matter to the public. See, e.g., Johnson Johnston Assocs., supra, 285 F.3d at 1054 ("[w]hen a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public."). However, Crown Cork. General Talking Pictures and their progeny appear to reconcile the right of patent applicants to avail themselves of divisional and continuation applications with the public domain, by requiring proof of prejudice to an intervening right arising out of conduct of a party adverse to the patentee, as evidenced by a public use, sale, intervening publication or intervening patent. See General Talking Pictures, 58 S.Ct. at 856 (Black, J., dissenting) (describing effects of majority's holding). Except for one vacated opinion issued by the Court of Claims, the authorities Verizon cites do not suggest otherwise. See Webster Elec. Co. v. Splitdorf Elec. Co., 44 S.Ct. 342, III 344-45 (1924) (citing 5-year delay between presentation of claims and issuance of patent to third party);Crown Cork, supra, (intervening patent issued to third party);Westinghouse Elec. Mfg. Co. v. Jeffrey-DeWitt Insulator Co., 22 F.2d 277, 279 (2d Cir. 1927) (sale by accused infringer more than two years prior to divisional application). In addition, the rule stated inEsnault-Pelterie v. U.S., 81 Ct. Cl. 785 (1935), appears to be based on that court's misreading of the Webster case. See Esnault-Pelterie, 81 Ct. Cl. at 852 ("the rule [announced in Webster] is applied to claims inserted in divisional cases, where there has been a disclosure to the public by the issuance of the parent application.").

A.2. Private Intervening Rights

Verizon also sets forth certain private intervening rights that, according to it, are sufficient to bar enforcement of the Allegedly Delayed Claims. Relying on Auckerman, supra, Verizon alleges that the delay in issuance of the Allegedly Delayed Claims caused it economic prejudice in light of its substantial economic investment in various call systems since the early 1990s. Verizon Motion at 9.

Verizon's reliance on Auckerman for the proposition that economic prejudice is suffices to establish an adverse intervening right in the context of prosecution laches is insufficient. Auckerman deals with economic prejudice caused by delay in filing a patent infringement suit and does not hold that delay in presenting claims during prosecution of a patent application is sufficient to establish an adverse intervening right within the context of prosecution laches. Moreover, Verizon fails to demonstrate triable issues of fact remain as to how its use of its call processing systems established a public use or disclosure sufficient to establish adverse intervening public rights.

Verizon also alleges evidentiary prejudice due to lost or destroyed evidence during Katz's allegedly unreasonable delay. Similarly, however, Verizon points to no authority that suggests evidentiary prejudice establishes an adverse intervening right. The Court declines Verizon's invitation to hold otherwise in the absence of controlling authority.

A.3. Conclusion

In light of the foregoing, Verizon fails to demonstrate that it is entitled to summary judgment as to the defense of prosecution laches. Moreover, even if Verizon's showing were sufficient to establish a prima facie case, triable issues of fact remain as to whether the alleged delays were unreasonable. Although the delays, as set forth in Verizon's motion, are quite long, the prosecution history of the Katz patents at issue is quite complex involving multiple continuations, divisionals and continuations-in-part. Furthermore, Katz raises a triable issue of fact in this regard as the interferences and appeals and other prosecution events in prior applications may have affected prosecution of the Allegedly Delayed Claims. Still further, many of the Katz patents at issue involve terminal disclaimers that limit the terms of such patents to the terms of prior Katz patents.

Still further, Verizon presents no evidence demonstrating any attempt by Katz at outright delay or any improper purpose. See Bogese, 303 F.3d at 1369 (string of continuation applications without any attempt to advance prosecution on the merits); Woodbridge v. U.S., 44 S.Ct. 45, 47 (1923) (applicant let allowed application languish in Patent Office for 9 years before requesting issuance). In the present case, the prosecution of the Katz patents at issue reveals a complex history of patent applications resulting in an array of patents, many of which involve terminal disclaimers, with varied claims directed to different subject matter. Triable issues of fact remain as to whether Katz's prosecution history reflects a legitimate attempt to extract from the original patent applications all claimable subject matter disclosed in these applications, or an impermissible, calculated attempt to extend its exclusionary right by presenting application claims having no meaningful difference in scope from previously issued claims.

B. Infringement

As discussed above, according to Verizon, Katz accuses four of Verizon's services of infringing the Asserted Claims, namely: 1) Residential Repair Customer Service ("Repair Service"), 2) Business Repair Customer Service ("Business Repair Service"), 3) Consumer Service ("Consumer Service"), and 4) Business Sales Customer Service ("Business Sales Service"), all of which are accessible by dialing different "800" numbers. See Verizon Motion at 12.

An infringement analysis is a two-step process in which the court first determines, as a matter of law, the correct claim scope, and then compares the properly-construed claim to the accused device to determine, as a matter of fact, whether all of the claim limitations are present, either literally or by a substantial equivalent, in the accused device.

Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 988 (Fed. Cir. 1999). To determine literal infringement, the inquiry focuses on whether all of the elements contained in the claim appear in the product or process under consideration.¹⁰ See Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989): see also Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388-89 (Fed. Cir. 1992); Key Mfg. Group, Inc. v. Microdot Inc., 925 F.2d 1444, 1449 (Fed. Cir. 1991): see Envirotech Corp. v. Al George. Inc., 730 F.2d 753, 758 (Fed. Cir. 1984) (demonstrating that every limitation of the claim is literally met by the accused device must be shown by a preponderance of the evidence). For open-ended claims, using the word "comprising" after the preamble, it typically does not matter that the accused product or process includes additional elements. Stiftung v. Renishaw PLC 945 F.2d 1173, 1178 (Fed. Cir. 1991). However, a product or process that does not have each and every element recited, and as arranged, in the claim is not a literal infringement. Mas-Hamilton Group v. LaGard Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998).

10 For purposes of Katz's motion for summary judgment, Katz does not appear to allege infringement under the doctrine of equivalents.

Dependent claims contain every limitation of the claims from which they depend. Therefore, if an accused product or process does not literally infringe an independent claim, then it does not infringe any claim that depends from that claim. Wolverine World Wide, Inc. v. Nike. Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994).

B.1. Evidentiary Support for Katz's Infringement Contentions

As an initial matter, Verizon identifies certain of its services for which Katz has allegedly failed to provide any infringement contentions or expert testimony. Specifically, Verizon alleges that Katz provides no infringement contentions as to its Calling Card Services and Business Repair Service. Verizon Motion at 13. Katz has not provided, Verizon contends, any infringement contention that its Business Sales Service infringes claims 58, 66 and 67 of the `120 patent, claim 107 of the `223 patent, claims 81 and 94 of the `734 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, and claim 69 of the `762 patent. Similarly, Verizon alleges that Katz has provided no infringement contentions that Verizon's Repair Service infringes claim 67 of the `120 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 69 of the `762 patent, and claim 5 of the `134 patent. Verizon further contends that Katz has provided no contention that "any Verizon service satisfies the elements, such as the intent element, necessary to contribute to or induce infringement under 35 U.S.C, § 271(b) or (c)." Verizon motion at 13-14. Lastly, Verizon alleges that Katz does not assert that any of Verizon's Services infringe the Asserted Claims under the doctrine of equivalents. Verizon Motion at 14.

Katz agrees that it has advanced no contention that Verizon's Calling Card Services and Business Repair Service infringe the Asserted Claims, but expects to assert other claims against-these services after an opportunity for complete discovery. As Katz points out, the Court has limited its consideration only to certain representative claims, while the parties' dispute encompasses a much broader array of patent claims. In light of the foregoing, Verizon appears to be entitled to summary judgment that Verizon's Calling Card Services and Business Repair Service do not infringe the Asserted Claims, as Katz has advanced no infringement contentions with respect to these services.

As to Verizon's Business Sales Services, Katz appears to allege that at least some of the Asserted Claims are infringed based on Verizon's Intelligent Call Routing (ICR) service which routes residential customers that called the Business Sales Service to an appropriate residential service. As to Verizon's Repair Service, Katz contends that Verizon confuses its Repair Service with the accused systems that implement that service. Katz Opposition at 19. As to certain Asserted Claims, Katz appears to rely on the combination of the Repair Service with other Verizon services based on the ability of Verizon's systems to transfer callers from one service to another, Accordingly, granting summary judgment would be improper to the extent Katz advances infringement contentions for Verizon's Business Sales and Repair Services in combination with other Verizon services. However, Verizon does appear to be entitled to summary judgment that its Business Sales Service, standing alone, does not infringe claims 58, 66 and 67 of the `120 patent, claim 107 of the `223 patent, claims 81 and 94 of the `734 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, and claim 69 of the `762 patent. Similarly, Verizon also appears to be entitled to summary judgment that its Repair Service, by itself, does not infringe claim 67 of the `120 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, and claim 69 of the `762 patent.

B.1.a. Evidence of Induced and Contributory Infringement

As to induced and contributory infringement, Katz alleges that its proffered evidence directed to Verizon's alleged wilful infringement supports its allegation that Verizon has induced infringement under 35 U.S.C. § 271(b).

"[P]roof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement."Hewlett-Packard Co. v. Bausch Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). The requisite intent may be shown by circumstantial evidence. Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988).

Here, Katz submits evidence, viewed in a light most favorable to it, sufficient to raise a triable issue of fact as to active inducement of infringement, since Verizon appears to have had knowledge of the Katz patents, and that the accused systems were operated on behalf of Verizon.See Baumann Decl. ¶¶ 1, 8. From this evidence, an inference can be drawn that Verizon intended to cause the acts alleged by Katz as an infringement.

Katz, on the other hand, points to no evidence and fails to raise a triable issue of fact as to contributory infringement under 35 U.S.C. § 271(c). For example, Katz fails to provide evidence demonstrating that Verizon "offers to sell or sells" a "component of a patented machine" or "material or apparatus for use in practicing a patented process." Katz also fails to demonstrate how any component sold or offered by Verizon is "not a staple article."

B.1.b. Evidence of Infringement under the Doctrine of Equivalents

Based on Katz's failure to advance evidence or infringement contentions, it appears that Verizon is entitled to summary judgment that its Accused Services do not infringe the Asserted Claims under the doctrine of equivalents. Although Katz alleges that it submits evidence of functional equivalents, the cited portions of Katz's expert report appear only to address structural equivalents under 35 U.S.C. § 112, ¶ 6.

B.2. DNIS Format Selection

Verizon alleges that the Accused Services do not infringe claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, claim 107 of the `223 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 1 and 13 of the `065 patent, claim 21 of the `551 patent, claims 31 and 44 of the `863 patent, and claim 5 of the `134 patent, because the Accused Services do not perform format selection under control of Dialed Number Identification Signals (DNIS). Instead, Verizon's systems, according to it, use DNIS to branch to various subroutines or applications within a format, rather than to select a format.

As to formats and the use of DNIS signals associated with a given call, the claims identified above appear to fall into four main categories: 1) claims that explicitly require the selection of a format from a plurality of formats based on DNIS; 2) claims where the DNIS signals are received to "identify" a format from a plurality of formats; 3) claims where DNIS is received to identify a called number that is associated with a format; 4) claims where DNIS signals merely identify different formats.

Category 1 (Format Selection Based on DNIS)

Claim 66 of the `120 patent, claims 3 and 68 of the `285 patent, and claim 66 of the `893 patent fall into the first category of claims that require selection of a format based on DNIS signals. Specifically, claim 66, which depends from claim 56, of the `120 patent requires "selecting from a plurality of operating process formats, utilizing the dialed-number identification signals received from the telephone-communication facility, a select format." `120 patent, Col. 17:11-15. Claims 3 and 68, which depend from claim 1, of the `285 patent require "selection means . . . for selecting one of said formats under control of said call data including DNIS." `285 patent, Col. 1:67 — Col. 2:1. Lastly, claim 66, which depends from claim 59, of the `893 patent calls for "selection means . . . for selecting a select data format from said plurality of formats under control, of said signal-represented call data indicative of called DNIS." `893 patent, Col. 19:34-37.

Category 2 (Formal Identification Based on DNIS)

Claims 1 and 13 of the `065 patent and claim 21 of the `551 patent are in the second category of claims requiring identification of a format based on DNIS signals. For example, claim 1 of the `065 patent requires "means for receiving called terminal digital data (DNIS) . . . to identify said select operating format from a plurality of distinct operating formats." `065 patent, Col. 21:62-65. Claim 13 of the `065 patent includes a similar limitation. See `065 patent, Col. 22:66 — Col. 23:2. Claim 21 of the `551 patent requires "a plurality of interface switching structures . . . for receiving incoming calls . . . and for receiving called terminal digital date [sic] (DNIS) signals . . . to identify the select operating format from a plurality of operating formats." `551 patent, Col. 23:43-51.

Category 3 (Called Number Identification based on DNIS)

Claims 31 and 44, which both depend from claim 27, of the `863 patent belong to the third category as they require "interface structure . . . including means to receive called number identification signals (DNIS) . . . to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats." `863 patent, Col. 25:12-21.

Category 4 (DNIS Signals Identify Formats)

Lastly, claims 81 and 94 of the `734 patent, and claim 107 of the `223 patent fall into the fourth category of claims where the DNIS signals merely identify formats. Specifically, claims 81 and 94 of the `734 patent require a "first response unit means for receiving calls . . . wherein digital signals indicative of.at least one of a plurality of distinct called numbers (DNIS) identify one of said plurality of interactive operating process formats." `734 patent, Col. 18:7-11. Claims 81 and 94 further require a "second response unit means" that receives calls and associated DNIS signals that identify another of the interactive operating process formats. `734 patent, Col. 18:20-24. These claims, however, are silent as to how a selection is made between the first and second response unit means. Lastly, claim 107, which depends from claim 80 of the `223 patent, requires "receiving calls in the 800 call mode wherein digital signals indicative of at least a first called number (DNIS) identify a first interface format;" and "receiving calls in the 800 call mode wherein digital signals indicative of a second distinct called number (DNIS) identify a second interface format." `223 patent, Col. 17:49-54.

Based on the foregoing categories, the Court finds that Verizon's initial showing is sufficient to address Verizon's "DNIS format selection" non-infringement contentions as to the first, second and third categories identified above, since the relevant claim language reasonably tracks Verizon's contention that "DNIS format selection" requires selection or identification of one format from a plurality of formats based on DNIS signals. However, as to the fourth category, Verizon's non-infringement contentions do not address the actual claim language in a manner sufficient to meet its initial burden of demonstrating that it is entitled to summary judgment as a matter of law.

The Court first revisits, however, the interpretation of "format" and then addresses those aspects of Verizon's systems that Katz alleges demonstrate that Verizon's call center systems include or select from more than one format.

B.2.a. Clarification of "Format".

Application of the terms "format" and "plurality of formats" to Verizon's allegedly infringing call center systems, as well as the prior art asserted by Verizon, suggests that clarification of the Court's interpretation of "format," is required. The Court interpreted the term "format" to mean, "a call process flow implemented by at least one computer program that sets forth the content and sequence of steps to gather information from and convey information to callers through pre-recorded prompts and messages." In addition, the parties agreed, and the Court accepted, that the term "plurality of formats" does not cover branches or subroutines within a format. See, e.g., Rooklidge Decl. Ex. 12 (Joint Claim Construction and Prehearing Statement) at 363. At the time of issuing the Claim Construction Order, the Court's primary concern was that Verizon's asserted interpretation appeared to unduly constrain how a format in the Asserted Claims could be implemented. Namely, the Court was primarily concerned that Verizon's asserted interpretation appeared to suggest that a format could not be implemented by multiple computer programs. Assessing the meaning of "format" in the context provided by the parties infringement and invalidity contentions, as well as the treatment "format" received during prosecution, has enlightened the Court's understanding of the ramifications of the Court's interpretation and suggests that certain clarifications are necessary.¹¹ The Court also notes that much of the dispute between the parties, as well as the difficulty in analyzing the instant situation, appears to arise from the crowded nature of the prior art and Katz's statements to distinguish its claims from the prior art, and the failure of at least some of the Katz patents to 1) clearly describe the implementation of multiple formats in the described call processing systems, and 2) to describe call processing systems including components that reasonably correspond to standard call processing systems and components known in the art at the time the applications were filed.

11 Indeed, Katz appears to argue that a single computer program, or two linked programs, can implement multiple formats, as long as a different call processing operations are applied to different calls.

In any event, "format" means "at least one computer program, implementing a call process flow application, that sets forth the content and sequence of steps to gather information from and convey information to callers through pre-recorded prompts and messages." A computer program as it defines "format," includes modules and subroutines. Therefore, selection of, or branching to, a module or subroutine within a computer program does not constitute selection of a separate format.¹² In addition, since a format also contemplates more than one computer program, selection of (or branching to), a second computer program by a first computer program, that together implement a call process flow application does not constitute selection of a format. Furthermore, the operations associated with one format may include selection of another format. The court's clarified interpretation is consistent with the prosecution history of certain Katz patents, which appears to treat "format" in a manner synonymously with a call processing application.

12 Katz argues that the Court' rejection of Verizon's asserted interpretation of format necessarily means that branching to subroutines may constitute separate formats. Katz Opposition at 22. However, that a format may include more than one computer program does not mean that branching to subroutines within a computer program creates separate formats.

The Court's interpretation partly addresses, and certain aspects of the parties' dispute also appear to hinge on, the boundary between formats and when format selection occurs. Generally speaking, Verizon alleges that, between its Consumer and Repair Services, there are only two formats, a Consumer format, including the Phase I and III applications, and a Repair format, including the GTE-Init and GTE-CARE applications. For example, Verizon appears to argue that a format begins when the Phase I or GTE-Init applications, for example, first operate on calls. Verizon alleges that the same format continues after selection of other applications, such as the Phase III or GTE-CARE applications. Katz, on the other hand, asserts that the Phase I and GTE-Init applications are programs that select formats for the calls.

As discussed below, Verizon alleges that Katz disclaimed, during prosecution of certain relevant patents, that DNIS format selection covers branching to another application. However, accepting Verizon's contention would appear to mean that anytime a VRU answers a call and begins processing according to an initially-selected VRU application, any application or program selected by the initial VRU application becomes part of the same format. Indeed, Verizon contends that DNIS format selection within the meaning of the Asserted Claims does not cover: 1) use of DNIS by an ACD to route calls to a VRU port dedicated to a given format; and 2) use of DNIS by a VRU application to branch to another application. If both of Verizon's contentions were accepted, however, it is unclear to the Court how a format could otherwise be selected within the meaning of the Asserted Claims. In addition, as discussed below, Katz statements concerning the Moosemiller reference during prosecution cannot be squared with the claim language.

Based on the Court's interpretation, the selection of a format is essentially the selection of a computer program or application. That is, since a call process flow is implemented by at least one computer program, format selection necessarily entails selection of a computer program or identifier that is associated with a computer program. As discussed above, while a format contemplates "at least one computer program" a format can be selected by selecting a single computer program, since that program would link to subsequent programs, that together implement a given format. In addition, that an application is initiated in response to a call does not mean that a format cannot be selected. In light of the foregoing, in the context of Verizon's call center systems, Verizon's Phase I application and GTE-Init applications appear to be separate applications that include format selection logic that identify applications that implement various formats, such as the Phase III application (Consumer Service), the GTE-CARE (Repair) application, and the GTE-AOL (Repair/Administrative). As to Verizon's Repair Service, for example, all calls are routed to the GTE-Init application, which selects an application based on DNIS signals. That the GTE-Init application selects a format appears to coincide with Peripheries Inc.'s description of Verizon's Repair Service operations. See, e.g., Miller Decl. Ex. 5 (V112664) ("In the VAS, the DNIS is located in the DNIS table. . . . This entry tells-the Vas: . . . 3. What "functional process (Care, Billing, Test-DNIS, Administrative, etc.) is to Handle the Call."). Verizon's Consumer Service operates in a different manner, since various applications appear to operate on dedicated VRU ports, which as discussed below presents another opportunity for format selection. The Phase I application, however, appears to be dedicated to identifying an appropriate format to handle the call, such as Billing, Orders, and even Repair via a transfer operation.

Relevant prosecution history supports the Court's interpretation. Specifically, that a "plurality of formats" is not met by, and that a "format" contemplates, branching to different modules or subroutines within a given application program appears to be clear from the prosecution history relevant to the Katz patents. Indeed, Katz appears to have limited the scope of "format" in a manner consistent with the Court's interpretation when it distinguished various claims from U.S. Patent No. 4,785,408 issued to Britton et al. (the "Britton reference" or "the `408 patent").

The Britton reference discloses a graphical development tool that allows users to create an interactive voice response application by selecting and combining predefined modules and subroutines and specifying the methods by which these modules interact. The Britton reference states that a typical voice response application includes modules that "control the voiceware equipment to answer an incoming call, retrieve the appropriate speech response, . . . and play it (e.g., and initial announcement) to the caller." `408 patent, Col. 3:51-55. The Britton reference further teaches that the application program uses caller touch-tone inputs to "branch or select the next part of the application program to be performed." `408 patent, Col. 3:62-64.

Using the graphical development environment, the program creator first configures an overall structure for the program by arranging a plurality of "interaction modules," and then specifies the parameters for each of the interaction modules. See `408 patent, Col. 4:56-68. According to the Britton reference, an interaction module "can be thought of as a set of software routines which define all aspects of the necessary interactions between the relevant physical system and the end user for a particular transaction." `408 patent, Col. 5:58-62. The Britton reference further describes control interaction modules that control the procedural flow within the application program. See `408 patent, Col. 6:15-17. Certain control modules branch to selected operations of the application program based on external factors (e.g., time of day, etc.), while other control modules branch to selected operations based on touch-tone inputs. See `408 patent, Col. 6:32-59. Eventually, the application program, once specified and tested, is created by linking a library that includes the specified sequence of operations and other parameters to various run-modules.

The relevant prosecution history contains numerous statements concerning the Britton reference that clearly suggest that format selection does not cover branching or selection of subroutines or modules within an application program. For example, during prosecution of U.S. Application No. 08/306,751, from which the `893 patent is a continuation, Katz argued:

The present claims are distinct from Britton, when considered alone or in combination with Hester, for the reasons detailed below. Britton does not teach the use of call data including DNIS signals in format selection nor does Britton suggest the advantages of such a capability. Format selection is clearly not an issue because Britton does not appear to disclose a plurality of distinct operating formats, which may be accessed by callers. Furthermore, Britton does not teach screening tests to impose conditions or establish a test criteria for the interconnect switch to determine the acceptability of a call for interfacing it with a specific operating format.

At column 3, line 30, through column 4, line 22, Britton teaches an application program 108, which uses user provided information to branch or select the next part of the application program to be performed. The application program comprises a plurality of predefined modules or subroutines, which are selected and interconnected by a system designer. At column 6, lines 34-44, Britton discloses a switch module, which switches between branches of the program, depending on which of a number of program branches is specified by the program producer.

Sumner Ex. 9 (Appl. No. 08/306, 751, February 21, 1995 Amendment at 11-12). In addition, during prosecution of U.S. Application No. 08/047, 241, which matured into the `285 patent, Katz stated that "not only does Britton not teach the use of call data including DNIS signals in format selection but, more importantly, Britton does not even suggest the advantages of such a capability. Also, Britton does not appear to disclose a plurality of distinct operating formats, which may be accessed by a caller." Sumner Decl. Ex. 11 (Appl. No. 08/047, 241, January 13, 1994 Amendment at 14). Katz also asserted, in a later-filed amendment during prosecution of U.S. Application No. 08/306, 751, that

At column 3, line 30, through column 4, line 22, Britton teaches an application program 108, which uses user provided information to branch or select the next part of the application program to be performed. The application program comprises a plurality of predefined modules or subroutines, which are selected and interconnected by a system designer. At column 6, lines 34-44, Britton discloses a switch module, which switches between branches of the program, depending on which of a number of program branches is specified by the program producer.

Clearly, the branch alternatives are subroutines of a single program, which can hardly be considered as concurrently operating formats for access by different users.

Sumner Decl. Ex. 12 (Appl, No. 08/306, 751, September 1, 1995 Amendment at 42-43). Furthermore, the parties do not appear to dispute that a call processing program that branches, under control of user touch-tone inputs, to a particular subroutine or other module does not implement different call process flows or formats. Accordingly, it follows that, a call processing application that branches, under control of DNIS signals, to a given subroutine or other module does not implement different call process flows or formats. Put another way, a call processing program, once selected or initiated, does not execute multiple call process flows simply because it branches to another module or subroutine under control of DNIS signals.

As discussed above, the prosecution history, alleges Verizon, indicates that branching to another application does not constitute format selection. Verizon relies-on Katz's statements during prosecution of certain patents at issue related to the Moosemiller or Conversant reference to assert that branching to another application based on DNIS signals does not involve DNIS format selection. As discussed above, the Moosemiller reference describes a VRU that has the capability of hosting multiple applications and using DNIS signals to classify incoming calls for the applications. See Moosemiller Reference at 88 (V133916). In addition, the Moosemiller reference teaches that callers can be prompted to enter identification information that is verified against a host database to determine access to the system.

In response to the Moosemiller reference, Katz made a variety of statements related to formats and the use of DNIS in the claimed inventions. For example, during prosecution of U.S. Application No. 08/480,185, which matured into the `120 patent, Katz argued: `The reference by Moosemiller involves the use of DNIS. Specifically, DNIS is proposed for the classification of incoming calls for different applications. . . . The use of DNIS does not involve multiple format operation and caller qualification.1* Sumner Decl. Ex. 23 (IDS dated Jan. 31, 1996, Paper No. 5 at 11); see also Sumner Decl. Ex. 10 (Amendment dated July 19, 1995, Paper No. 14 at 69). In addition, during prosecution of U.S. Application No. 08/047,241, which matured into the `285 patent, Katz stated: "The references to Moosemiller . . . and Perdue [citations omitted], involve the use of DNIS. Specifically, DNIS is proposed for the classification of incoming calls for different applications. . . . The use of DNIS is distinct from the multiple format operation set forth in the claims and does not involve caller qualification." Sumner Decl. Ex. 26 (IDS dated Sept. 20, 1994, Paper No. 21 at 7).

The statements cited by Verizon, however, do not evince a clear and unmistakable disclaimer of the scope of format. See Omega Eng'r. Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003) ("To balance the importance of public notice and the right of patentees to seek broad patent coverage, we have thus consistently rejected prosecution statements too vague or ambiguous to qualify as a disavowal of claim scope."). Rather, based on the teachings of the Moosemiller reference, it is unclear exactly what Katz meant by the statements that attempt to distinguish its claims from the Moosemiller reference. According to Katz, it distinguished the Moosemiller reference based on the combination of multiple format operation and caller qualification. This explanation appears to be somewhat plausible. However, as discussed above, the Moosemiller reference clearly taught multiple formats and caller qualification. In any event, the limiting effects of the prosecution history, as alleged by Verizon, cannot be squared with the claim language or the cited reference.¹³

13 Verizon's contention also appears to contradict its contention that the Moosemiller reference anticipates some of the Asserted Claims.See Section III.D., infra.

B.2.b. DNIS Format Selection Infringement Contentions

B.2.b.1. Use of DNIS by ACDs

Verizon alleges that the use of DNIS signals by the ACDs in the Consumer and Repair Services is not DNIS format selection within the meaning of the Asserted Claims. See, e.g., Verizon Reply at 9. Katz assails Verizon's contentions, alleging that the use of DNIS signals by.the ACD to select ports of a VRU dedicated to a particular application is "DNIS format selection."

In the context of at least the method claims of the Asserted Claims, triable issues of fact exist as to whether the use of DNIS signals by the ACDs to select a VRU port dedicated to a given format constitutes selecting or identifying formats based on DNIS. The evidence of record appears to demonstrate that a Verizon's Consumer VRUs support a consumer application, an EDT application, and a RRF administrative application, each of which run on dedicated ports of a VRU. The evidence demonstrates that Verizon's ACDs route calls to particular VRU ports based on DNIS signals. Depending on the particular port, the VRU application will execute a EDT application, a RRF application, of the Phase I application, which allows the caller to select a format, such as billing/orders, or repair. That each of these applications runs on dedicated ports of the Consumer VRUs suggests that the ACD, albeit perform a routing function, also essentially selects a format. In light of the foregoing, a triable issue of fact exists as to whether Verizon's Consumer Service call center systems select formats based on DNIS within the meaning of claim 66 of the `120 patent. As to claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 1 and 13 of the `065 patent, and claim 21 of the `551 patent, Verizon's non-infringement contention only appears to rely on the requirements of the functional language of the means-plus-function limitations addressing "DNIS format selection," and does not address whether the ACDs are the same as or equivalent to the structure disclosed in the specification for performing the recited function. Accordingly, triable issues of fact remain as to whether Verizon's Consumer service performs DNIS format selection within the meaning of these claims as well.

In Verizon's Repair Service, however, the ACDs appear to use DNIS signals solely to route calls to VRUs, as the GTE-Init application appears to. handle all calls to the Repair VRUs. This, by itself, does not appear to be DNIS format selection. However, the evidence of record does not make clear as to whether Verizon's ACDs are dedicated to specific services, or whether Verizon's ACDs are operably connected to both Consumer and Repair Service VRUs. Rather, Mr. Baumann states only that Verizon's Consumer and Repair Services are implemented on separate VRUs. Accordingly, a triable issue of fact exists as to whether Verizon's ACDs make a selection between different VRUs or ports of a VRU and, thus, whether the ACDs select between the Consumer and Repair formats based on DNIS.

B.2.b.2. Steps D6/D7 in the Phase I Application

As to "DNIS format selection," a primary issue between the parties is whether the branching by the Phase I application under control of DNIS constitutes DNIS format selection within the meaning of the Asserted Claims.

As discussed above, the meaning of "format" contemplates branches to subroutines within a call process flow. In contrast to Katz's contention, a format does not correspond to a different user experience, as a user's experience would depend on a variety of factors, such as the user's input, and the questions provided by the system. Here, steps D6 and D7 in the Phase I application use DNIS signals to select between one of two menu subroutines to execute and provide prompts to callers. As discussed above, branches to subroutines or modules within a format do not constitute separate formats. Based upon a selection or other action by the caller, the Phase I application then branches to another application, such as the Phase III application or the Repair format.

B.2.b.3. English/Spanish in Verizon's Consumer Service

For similar reasons, the ability of Verizon's consumer VRUs to provide prompts in Spanish or English depending on the DNIS signals associated with a call does not automatically mean that two different formats exist. Rather, it appears that both the English and Spanish DNIS types correspond to a single format implemented by the Phase I application, the Phase III application, etc. As discussed above, the Phase I application, depending on the DNIS type, sets a language flag which controls what prompts the VRU retrieves and provides to callers during execution of a given format.

B.2.b.4. Selection of an Operator Gate

While Verizon's Consumer Service VRUs appear to select from different operator gates based on DNIS signals associated with a given call, the selection of an operator gate, including the modules or subroutines that execute before the call is actually transferred, by the Phase I or Phase III applications also appears to be a branch within a format as opposed to a separate format. See Sumner Decl. ¶¶ 149, 150. Katz alleges that "to the extent the operations prior to transfer to the operator gather information from callers, the operations constitute a format." Katz Opposition at 28. However, the operations cited by Katz do not appear to gather information from callers, but rather proceed through a series of voice prompts depending on a variety of criteria before transferring the call to an operator. See Lee Decl. Ex. 2 (V83219, V83223, V83227).

B.2.b.5. Test DNIS in the Consumer VRUs

The existence of special test numbers for Verizon's consumer VRUs likewise does not demonstrate that a separate test format exists. The evidence of record reveals that Verizon's consumer VRUs each have a special test number that allows a Verizon employee to directly reach a given VRU. However, Verizon's consumer VRUs, says Verizon, do not appear to have a testDNIS format; rather, the consumer VRUs treat the call like any other call.

Katz alleges, however, that triable issues of fact exist as to whether Verizon's Consumer VRUs include a test format, since the "consumer DNIS tables clearly identify the test format." Opposition at 25; see also Lee Decl. Ex. 2 (V57416-19, V57610-13). In addition, Mr. Baumann, during his 30(b)(6) deposition, appears to have stated that the consumer VRUs include a test process. See Miller Decl. Ex. 4 (Baumann Tr. 421:12-21). In light of the foregoing, triable issues of fact exist as to whether Verizon's Consumer Service VRUs implement a separate test format.

B.2.b.6. RRF and EDT Applications

Triable issues of fact exist as to exactly how the RRF and EDT formats are selected or identified. From Verizon's proffered evidence, the RRF and EDT applications, each of which runs on a dedicated VRU port, are formats separate from the consumer format implemented by the Phase III application. Katz alleges, however, that a triable issue of fact exists as to how the RRF and EDT applications are actually implemented. Verizon's declarations are inconsistent with its earlier admissions during Mr. Baumann's 30(b)(6) deposition and, according to Katz, should be disregarded. Verizon, relying on Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262 (9th Cir. 1991), alleges that the 30(b)(6) deposition testimony cited by Katz was incorrect and that its declarations to the extent they correct these apparent errors are appropriate. Verizon Reply at 10 n. 2.

Generally, a party may not create a genuine issue of fact by submitting a declaration that contradicts the declarant's prior deposition testimony. Kennedy, 952 F.2d at 266.

The instant situation, however, is unlike that in Kennedy, In Kennedy, the declaration contradicting the declarant's prior deposition testimony was submitted in an attempt to create a triable issue of fact and avoid summary judgment. Id. Here, Verizon submits the declaration of Terry Baumann, which contradicts his prior deposition testimony as to the EOT application, in an apparent attempt to correct his prior deposition testimony and demonstrate that Verizon is entitled to judgment as a matter of law. See Miller Decl. Ex. 4 (Baumann Tr. 388:14-20). In any event, the declarations submitted by Verizon do not appear to be "sham" declarations submitted merely to avoid, or in this case, obtain summary judgment. Kennedy, 952 F.2d at 266. Despite the declarations submitted by Verizon in connection with its motion for summary judgment, however, Mr. Baumann's inconsistent deposition testimony raises genuine issues of fact as to how the EDT application is initiated and whether it runs on dedicated ports of the Verizon's Consumer VRUs. Furthermore, although the operation of the Phase I application to the extent it relates to detecting a EDT DNIS type appears to be bypassed by routing of EDT calls to dedicated ports, the presence of the VRU source code relating to detection of EDT DNIS types in connection with Mr. Baumann's 30(b)(6) testimony suggests that granting Verizon's motion for summary judgment, to the extent it relies on "DNIS format selection" in connection with the EDT and RRF applications, would be inappropriate on this record. See Lucantoni Decl. ¶¶ 21-23.

Moreover, triable issues of fact exist as to whether Verizon's Phase I application performs DNIS format selection. Even though the EDT DNIS type operations in the Phase I application may be bypassed, that the Phase I application appears to nevertheless access a DNIS table including at least consumer and EOT DNIS types, albeit on somewhat of a vestigial basis, raises triable issues of fact as to whether the Phase 1 application identifies formats based on DNIS. See Lucantoni Suppl. Report ¶ 2.10 Appendix XI — PeriProducer Source Code, Chart 1, Steps 7-27.

B.2.b.7. Verizon's Repair, Test and Administrative Formats

In light of the foregoing, the GTE-Init application appears to perform DNIS format selection as it uses DNIS signals to select between the Repair (GTE-CARE) and Administrative (GTE-AOL) formats implemented by Verizon's Repair Service VRUs.

Verizon's test feature, however, does not appear to be a separate format. Verizon's test feature appears to be implemented by a subroutine within the GTE-Init application that is selected based on receiving a call associated with a Test DNIS type. The selected subroutine prompts the caller for a DNIS value to be tested and loops back to an earlier part of the GTE-Init application, which then processes the call as any other call. Among other things, the GTE-Init application appears to identify the Repair or Administrative formats based on DNIS type.

B.2.c. Verizon's Business Sales Service and Claims 81 and 94 of the `734 Patent, and Claim 107 of the `223 Patent

Verizon contends that it is entitled to summary judgment of non-infringement as to Katz's assertion that the Business Sales Service in combination with the Consumer (Billing) Service infringes claims 81 and 94 of the `734 patent and claim 107 of the `223 patent.

Verizon has satisfied its initial burden of demonstrating that it is entitled to judgment as a matter of law that its Business Sales Service in combination with the Consumer Billing Service does not infringe claims 81 and 94 of the `734 patent and claim 107 of the 223 patent. Katz fails to raise a material issue of fact, Primarily, Katz appears to allege that the Business Sales service uses DNIS to identify formats because calls may be ultimately transferred to the Consumer Service. However, Katz fails to demonstrate how Verizon's call center systems infringe claims 81 and 94 of the `734 patent or claim 107 of the 223 patent.

Claims 81 and 94 of the `734 patent are directed to a "telephone call processing system . . . for processing data in accordance with any of a plurality of interactive operating process formats." `734 patent, Col. 18:1-5. A review of claims 81 and 94 suggest that claims 81 and 94 require first and second response unit means that are dedicated to particular interactive operating process formats. Specifically, claims 81 and 94 require a "first response unit means for receiving calls . . . wherein digital signals indicative of at least one of a plurality of distinct called numbers (DNIS) identify one of said plurality of interactive operating process formats." Claims 81 and 94 further require a "second response unit means" that receives calls and associated DNIS signals that identify another of the interactive operating process formats. `734 patent, Col. 18:20-24. The claims are silent as to how a selection is made between the first and second response unit means. Here, while Katz appears to demonstrate that a "first response unit" is present within Verizon's Consumer call center systems, Katz fails to provide any evidence of a "second response unit means" that receives calls and associated `DNIS signals that identify another of the interactive operating process formats. Moreover, claim 107 of the `223 patent requires "receiving calls in the 800 call mode wherein digital signals indicative of at least a first called number (DNIS) identify a first interface format;" and "receiving calls in the 800 call mode wherein digital signals indicative of a second distinct called number (DNIS) identify a second interface format." As discussed above, however, calls to the Business Sales Service do not appear to be associated with a DNIS that identifies a particular format. Rather it appears that DNIS values are identified by the ISCP during operation of the format and returned to the 5ESS switch for proper routing of the call. See Lucantoni Suppl. Report, Scenario 7 ¶ 7.18.

B.2.d. Summary — DNIS Format Selection

In light of the foregoing, genuine triable issues of fact exist as to whether certain aspects of Verizon's Accused Services perform DNIS format selection within the meaning of the Asserted Claims. For example, triable issues of fact exist as to whether Verizon's ACDs perform format selection in connection with its call routing functions. Triable issues of fact exist as to whether the Phase I application actually performs format selection or identification under control of DNIS signals. Triable issues of fact also exist as to whether Verizon's Repair VRUs perform DNIS format selection. Furthermore, as discussed herein, Verizon fails to demonstrate that it is entitled to summary judgment on claims 81 and 94 of the `734 patent, and claim 107 of the `223 patent except as to its Business Sales Service.

B.3. Claims 1 and 13 of the `065 Patent and Claim 21 of the `551 Patent

Verizon's accused call center systems do not infringe claims 1 and 13 of the 4065 patent and claim 21 of the `551 Patent, Verizon alleges, because its CTI servers do not "visually display" data or "connect" telephone calls to the operator terminal.

Katz does appear to allege that the CTI server is the structure in Verizon's accused call center systems corresponding to the "computer means" and "processing means" limitations of the claims. Accordingly, the Court must determine whether the "accused structure" performs the claimed function of "connecting" calls. See Pennwalt Corp. v. Durand Wayland, Inc., 833 F.2d 931, 934 (Fed. (Sir. 1987) ("To determine whether a claim limitation is met literally, where expressed as a means for performing a stated function, the court must compare the accused structure with the disclosed structure, and must find equivalent structure as well as identity of claimed function for that structure.");Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993) ("In the context of section 112, however, an equivalent results from an insubstantial change which adds nothing of significance to the structure, material, or acts disclosed in the patent specification.").

B.3.a. "Visually Displaying"

According to Katz's infringement contentions, it is the CTI Server in conjunction with the display at the operator terminal, as well as the lines connecting them, that perform the function of visually displaying as required by the claims identified above. Katz Opposition at 31; Lucantoni Decl. 14, 15.

Triable issues of fact remain as to whether the structure in Verizon's accused call center systems Katz identifies meets the computer and processing means limitations of claims 1 and 13 of the `065 patent and claim 21 of the `551 patent, Katz appears to identify structure that literally performs the function of visually displaying data as required by the "computer" and "processing" means limitations. Verizon cites no authority suggesting that Katz may not rely on the display of the operator terminal as part of the structure that meets the "computer" and "processing" means limitations. Accordingly, a triable issue of fact exists as to whether the accused structure is the same as or equivalent to the structure disclosed in the Katz patents for performing the recited function.

B.3.b. "Connecting Calls"

Verizon has met its initial burden of demonstrating that it is entitled to summary judgment that its accused call center systems do not literally infringe claims 1 and 13 of the `065 patent and claim 21 of the `551 patent. As discussed above, Katz identifies the CTI server as the structure that performs the recited function of connecting calls to the operator terminal. Katz identifies no other structure as operating in connection with the CTI server as the accused structure for connecting calls to the operator terminal. In addition, Katz identifies the ACDs as the accused structure corresponding to the interface switching means in claim 1 of the `065 patent. See Lucantoni Suppl. Report ¶ 337. In Verizon's accused call center systems, the CTI server does not appear to literally perform the step of connecting incoming calls. Rather, when a VRU determines that a call should be transferred to an operator, it notifies the ACD that it is disconnecting and notifies the CTI server that the call should be transferred. The CTI server then transmits a message to the ACD instructing it to transfer the call to an operator terminal. See Sumner Decl. ¶¶ 188, 189. Issuing an instruction to another device (in Verizon's systems, an ACD) to transfer a call to an operator terminal does not literally meet the functional limitations of actually connecting the call to an operator terminal. As discussed in various sections of the Court's Claim Construction Order, "connecting" and "coupling" mean joining or linking calls, and do not cover issuing instructions to another device to join or link calls. The specification of the `065 patent supports the Court's determination as the processors PRl-PRn are connected to the interface terminals, while the automatic call distributors are not. See `065 patent, Figure 1; see also `065 patent, Col, 4:39-42 ("Collectively, the processing systems P1-Pn are interconnected with a command computer terminal CT, at least one interface terminal IT, at least one printer PR and an audio unit AD."); Col. 5:20-24 ("In the disclosed embodiment, the processors PR1-PRn are connected collectively to the command computer terminal CT (incorporating a CRT display), the interface terminal IT, and the printer PR."); Col. 7:17-20 ("the processor PR1 may abort the interface and couple the interface terminal IT for direct personal communication with the caller Col. 10:55-59 ("pushing the asterisk button (*) . . . forms an abort signal that is detected by the processing unit 92 to transfer the communication to the interface terminal IT (FIG. 1).").

Katz's contention does have some initial appeal; however, relevant patent specifications ultimately do not support Katz's asserted interpretation. Claim 1 of the `065 patent, for example, calls for an interface switching means that receives incoming calls and a computer means coupled to the interface switching means for connecting an incoming call to the operator terminal.<sup>14</sup> Claim 1 of the `065 patent is somewhat ambiguous as to whether the computer means is "coupled to" the interface switching means for the purpose of controlling the interface switching means and thus connection of calls to the operator terminal, or whether the computer means is "coupled to!' the interface switching means for receiving calls and coupling them itself to the operator terminal The former claim construction obviously supports Katz's contention that "connecting incoming calls" should be construed to cover issuing instructions to the interface switching means to connect the incoming calls to an operator terminal.¹⁵ However, to construe "connecting incoming calls" in the manner suggested by Katz would appear to stretch the cited language beyond acceptable bounds. Following Katz's contention would mean that any device associated with a chain of events that ultimately results in connection of a call would meet this limitation. For example, either the VRU, which issues an instruction to the CTI Server, or the CTI Server, which issues an instruction to the ACD, essentially connects incoming calls according to Katz's asserted interpretation. See Ethicon Endo-Surgery. Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1578 (Fed. Cir. 1996) ("connected to" interpreted narrowly to Furthermore, Katz's proposed construction also appears to extend the scope of claim 1 of the `065 patent beyond the written description support provided by this patent. See, e.g., Modine Mfg. Co. v. U.S. Intern. Trade Com'n, 75 F.3d 1545, 1557 (Fed. Cir 1996) ("When claims are amenable to more than one construction, they should when reasonably possible be interpreted so as to preserve their validity."). Specifically, while the disclosure in this area is quite sparse, the `065 patent appears to only describe a system where the calls are connected by the processors PRl-PRn. See citations above. The `065 patent, for example, does not disclose that the processors PRl-PRn issue instructions to the ACDs. In fact, the `065 patent does not explain how calls are transferred by the processors to the interface terminal. Furthermore, there is no expert testimony in the record that indicates what one of ordinary skill in the art would understand from the relevant passages of the `065 patent specification. However, the `065 patent does not appear to describe a call processing system where the operator terminals are connected to the automatic call distributors or other switching structures.

14 Claim 13 of the `065 patent, and claim 21 of the `551 patent, contain similar limitations.

15 The court also notes that adopting Katz's proposed interpretation would also require modification of the Court's Claim Construction Order, as the term "computer" would connote sufficient structure for performing the recited function of "connecting incoming calls" and "visually displaying" data.

B.4. Whether Verizon's Consumer and Repair Services Infringe Claim 1 of the `065 Patent

Verizon alleges that its Consumer and Repair Services do not infringe claim 1 of the `065 patent, since the accused CTI server, while capable of receiving and storing caller number data signals (ANI), does not use the telephone number indicated by ANI signals to access customer data at the BVT. See Pauley Decl. ¶ 20. Rather, the CTI server uses the telephone number provided by the caller, Id. ¶ 21.

The instant issue is amenable to summary judgment as the issue appears to distill down to the meaning of the claim language. The parties appear to agree that claim 1 of the `065 patent merely requires that a memory device store caller telephone number and customer number data such that the computer means has the capability of accessing customer data with caller telephone numbers expressed in ANI signals. Katz Opposition at 32; Verizon Reply at 11. Indeed, the preamble of claim 1 .of the `065 patent sets forth a "system . . . for on-line handling of customer data contained in a memory." Claim 1 of the `065 patent requires that "caller telephone number data [be] stored in [the] memory such that [the] computer means in accordance with said select operating format is capable of accessing . . . customer data on a selected customer which has a telephone number corresponding to said caller telephone number data automatically provided from said telephone facility." However, the parties disagree as to what renders the CTI Server "capable" of accessing customer data.

Here, Verizon has demonstrated that it is entitled to summary judgment. There is no evidence of record demonstrating that the CTI Server accesses customer data using a telephone number expressed in ANI signals. Katz reliance on ACD telescripts and flow charts demonstrating operation of VRUs, see Lee Decl. Ex. 2, does not address the operation of the CTI Server and, therefore, fails to raise a triable issue of fact. Furthermore, the "CTI Code Analysis" in Dr. Lucantoni's Supplemental Report does not appear to contradict Verizon's expert that the CTI Server does not use ANI to access customer data from a database. Rather, Katz appears to assert that the CTI Server is capable of accessing customer data with ANI data since it is theoretically possible that the configuration of the CTI Server (i.e., the code executed by the CTI Server) may be changed to do so. Katz's contention, however, appears to overlook the claim language that the computer means must be capable of accessing customer data using ANI "in accordance with said select operating format." In Verizon's Consumer and Repair call center systems, there is no select operating format according to which ANI is used to retrieve customer data from a memory.

B.5. Whether Verizon's Consumer And Repair Services Infringe Claims 3 and 68 of the `285 Patent

Verizon alleges that Katz has provided no evidence that Verizon's Consumer and Repair Services infringe claims 3 and 68 of the `285 patent, since the only proffered evidence demonstrates that conditions are imposed after connection of calls to the multiple format processor.

Verizon has demonstrated that it is entitled to summary judgment that its Consumer and Repair Services do not infringe claims 3 and 68 of the `285 patent. Claims 3 and 68 of the `285 patent both require "selection means coupled to said call data means for selecting one of said formats under control of said call data including DNIS to thereby further specify imposed conditions that must exist for a connection of a call either to said multiple port, multiple format processor or one of said live operator stations in accordance with said select one of said formats." As the Claims Construction Order indicates, the imposed condition must be specified before the call is connected. Furthermore, the selection of a format precedes specification of imposed conditions, since the format determines what imposed conditions are specified. Claims Construction Order at 34-35. In an attempt to avoid summary judgment., Katz alleges that a condition (i.e., requiring the caller to press "1") imposed before selection or commencement of a given format satisfies the limitation of claims 3 and 68. See Lucantoni Report ¶ 174. Katz, however, fails to raise a genuine issue of fact for trial since it fails to present evidence suggesting that, as required by the claims, the imposed condition is specified after selection of a format and met before or when the call is connected to the multiple format processor or operator station.

B.6. Claim 67 of the 420 Patent

Verizon alleges that there is no evidence that its Consumer call center systems "test" or "utilize" identification signals indicating the calling number (ANI signals) in a manner required by claim 67 of the" 120 patent. In its opposition, Katz appears to address only the issue of whether its call center systems utilize ANI to avoid cues previously provided to callers, but does not provide evidence suggesting that Verizon's systems test ANI signals to qualify calls for "voice-digital communication with the system." Furthermore, Katz's reliance on the Intelligent Call Routing Service Description only shows one use of ANI signals and, further relates to Verizon's Business Sales Service. See Miller Decl. Ex. 7. Accordingly, Verizon appears to be entitled to summary judgment that its Consumer caller center systems do not infringe claim 67 of the `120 patent.

B.7. Whether the Repair Service Infringes Claims 58, 66 and 67 of the 420 Patent or Claim 107 Of The `223 Patent

Upon review of the parties briefs, it is apparent that the Court's construction of the language relating to previously provided cues in claims 58, 66 and 67 of the `120 Patent and claim 107 Of The `223 Patent requires some revision. For example, Claims 58 and 66 of the `120 patent recite "utilizing, for qualified callers, the identification signals relating to the callers, to avoid prompting certain callers with a certain previously provided cue or cues." In the Claim Construction Order, the Court interpreted this functional limitation to mean "using the identification signals relating to the callers to prevent the callers from receiving one or more specific prompts that the callers received during previous calls." Upon further review, it appears that the Court's interpretation impermissibly imports a limitation from the specification into the claim language. The embodiment disclosed in the `120 patent stores caller number data to limit repeat call advantages by checking against this stored caller number data to avoid providing cues that were provided to callers in previous calls. That being said, nothing in the language of the claims requires that the "previously provided cue or cues" to have been provided during a previous call. Rather, it appears to be enough that the identification signals are used to avoid prompting callers with previously provided cues without regard to whether the cues were provided in the same call or previous calls. Accordingly, the Court hereby revises the construction of this limitation in claim 56 of the `120 patent to mean "using the identification signals relating to the callers to prevent the callers from receiving one or more specific prompts that the callers previously received."

In light of the foregoing, Verizon understandably fails to establish that it is entitled to summary judgment as the Court's revised claim construction negates the basis for its non-infringement contention as to claims 58, 66 and 67 of the `120 Patent or Claim 107 Of The `223 Patent.

B.8. Alleged Infringement of Claim 107 of the `223 Patent

In its motion for summary judgment, Katz alleges that the combined operation of Verizon's Consumer and Repair Services, as detailed below, infringes claim 107 of the `223 patent. Below, the Court addresses Katz's contentions and evidence in relation to the individual elements of the claim. Generally speaking, however, claim 107 of the `223 patent appears to claim a process where calls to two different formats undergo certain preliminary operations, and are then coupled for concurrent processing in accordance with operations that are common to both formats. However, as discussed more fully below, the combination of Verizon's Consumer and Repair Services, as set forth by Katz, does not appear to operate in the manner required by claim 107 of the `223 patent.

B.8.a. receiving calls in the 800 call mode wherein digital signals indicative of at least a first called number (DNIS) identify a first interface format; (Claim 80)

Katz appears to satisfy its initial burden that the first "receiving" step is met. To demonstrate satisfaction of the first "receiving" element, Katz submits evidence demonstrating that: 1) Verizon's automated customer service systems receive calls in the "800" call mode, such as 800-4830-1000'; 2) the VRU that processes calls to that number receives DNIS signals indicative of the dialed number; land 3) Verizon's customer service systems provide callers to the 1000 number with an interface format directed to handling calls concerning its repair services. See Bergan Decl. Ex. J (Sumner Tr. 191:7-192:5); Ex. G (Baumann Tr. 394:20 — 396:10, 318:8-12); Ex. F (Baumann Tr. 89:5-10, 91:7-11). It also appears that DNIS identifies specific processes associated with Verizon's Repair Service. See, e.g., Bergan Decl. Ex. L (VI12664) ("DNIS is located in the DNIS Table . . . This entry tells the Vas: . . . 3. What functional process (Care, Billing, Test-DNIS, Administrative, etc.) is to Handle the Call.")

Verizon fails to demonstrate or raise genuine issues for trial as to the first "receiving" element. In opposing Katz's motion for summary judgment, Verizon alleges that the "receiving" limitation requires using DNIS for "DNIS format selection," and primarily raises the same arguments set forth in its own motion for summary judgment that using DNIS within a format is not DNIS format selection. Specifically, Verizon's contentions appear to focus on how the GTE-Init application's use of DNIS to branch to a subroutine, or select an application, does not constitute "DNIS format selection" or otherwise satisfy the "receiving" limitation, Verizon also appears to direct the Court's attention to the process carried out by an ACD using DNIS to select an VRU, or a given port of an VRU dedicated to execution of a given format, and demonstrate how this allegedly does not satisfy the "receiving" limitation. Verizon, however, appears to miss or dodge Katz's main contention that DNIS signals (resulting from calls to either the "1000" or "3000" number) identify calls to Verizon's Repair or Consumer services and, thus, identify a format. The language defining the "receiving" step merely requires receiving a toll-free call wherein DNIS signals identify a first interface format, and do not appear to require explicit format selection. Moreover, Verizon's reliance on Dr. Lucantoni's deposition testimony is insufficient to raise a genuine issue of fact as his deposition testimony appears to be directed to whether Verizon's Consumer or Repair Service ACDs use DNIS within the meaning of claim 107, as opposed to whether DNIS signals identify formats within Verizon's call systems.

B.8.b. receiving calls in the 800 call mode wherein digital signals indicative of a second distinct called number (DNIS) identify a second interface format;

Similarly to the first receiving step, Katz relies on Verizon's "billing and orders" (Consumer) customer service functionality accessible via a toll-free number, 1-800-483-3000. See Bergan Decl. Ex. F G (Baumann Tr. 22:11-17, 85:5-21, 340:19-341:15).

For the reasons discussed above, Verizon fails to demonstrate that a genuine issue of fact exists as to the second "receiving" element. Moreover, the default DNIS operations appear to suggest that the DNIS values associated with a call are at least verified against a table of valid DNIS types or values.

B.8.c. processing calls received in the 800 call mode for the two distinct called numbers in accordance with preliminary operations of the first and second interface formats, wherein the preliminary operations comprise at least the step of:

providing a distinct automated greeting voice prompt to callers calling at least one of the two distinct called numbers associated with the first and second formats in the 800 call mode;

According to Katz, Verizon's call systems meet this limitation since callers calling either the 1000 or 3000 number receive a distinct automated greeting voice prompt, "Thank you for calling Verizon. . . ."¹⁶ Bergan Decl. Ex. F (Baumann Tr. 65:20-66:6, 68:10-20, 26:13-28:9, 70:15-717). Although it appears that callers to both numbers receive an automated greeting provided by the ACD, see Sumner Suppl. Decl. ¶¶ 8-13, the GTE-CARE application provides an automated greeting voice prompt to callers. See Baumann Decl Ex. 2 (V83280). ("To better direct your call, press 1 now.").

16 That is, Katz clarifies that the "automated greeting voice prompt," is provided by the combination of the ACD's greeting and the prompted provided by the VRU following this greeting. See Katz Reply at 15.

B.8.d. receiving caller provided data entered by the callers and testing the caller entered data to verify on-line the calls received for at least one of the two distinct called numbers to provide verified calls; and

Katz alleges that Verizon's call center systems meet this element since 1) callers to the 1000 number (Repair), for example, are asked to provide the telephone number experiencing trouble, and 2) Verizon's systems verify that the provided number is a Verizon telephone number. See Bergan Decl. Ex. F (Baumann Tr. 263:6-264:20); Ex. K (Verizon 83286, 83287, 83319, 83288, 83289). Verizon does not appear to dispute that its Repair Service operates in this manner.

B.8.e. coupling the calls received in the 800 call mode for the two distinct called numbers wherein at least certain calls are verified calls for concurrent processing in accordance with at least certain common operations of the first and second interface formats.

Katz appears to allege that the "coupling" limitation is met, since the Verizon call center systems allow for transfer of calls from the billing and orders (Consumer) service to the Repair service. Katz Motion at 20. Katz further clarifies, in its Reply Memorandum, that "the coupling step is the software step that allows calls to proceed with the `certain common processing' operations following the testing step." Katz Reply at 19 (emphasis added). That is, Katz appears to argue that the coupling step is performed by allowing the calls to proceed to common processing after the testing/verifying step. Verizon alleges that its Consumer and Repair Services do not perform the "testing" step before the "coupling step" and, therefore, do not infringe Claim 107 of the `223 patent. Specifically, Verizon alleges that the Consumer Service does not verify or validate callers before transferring calls to the Repair Service. See Sumner Suppl. Decl, ¶¶ 21-24.

Katz fails to demonstrate that it is entitled to summary judgment as a matter of law, as its infringement contention appears to contravene the language of the claims and does not accord the term "preliminary operations" any effect. See Exxon Chemical Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995) (all words in a claim must be given meaning). Claim 80 of the `223 patent recites certain "preliminary operations" and "common operations" of the first and second interface formats. More specifically, according to the call processing scheme set out in claim 80, calls for the two distinct called numbers received in the 800 call mode are coupled for concurrent processing of the "certain common operations" as a result of the "preliminary operations." That is, claim 80 requires processing calls in accordance with "preliminary operations of the first and second interface formats," which involves providing an automated greeting for at least one called number, receiving caller provided data to verify calls for at least one called number, and coupling received calls for both called numbers "for concurrent processing in accordance with at least certain common processing operations of the first and. second interface formats." According to the language of claim 80 of the `223 patent, therefore, 1) "coupling" is a preliminary operation, 2) calls are coupled "for concurrent processing", and 3) some of the "coupled" calls must be "verified."

Katz's flow chart appears to demonstrate that, under Katz's general theory of infringement, testing, verifying and coupling of calls are common processing operations in Verizon's call center systems, as opposed to preliminary operations, because they are common to both the first and second interface formats. See Jantzi Decl. Ex, 9. That is, it is only until after calls are coupled "for concurrent processing" that they are verified. Accordingly, Verizon's system does not couple any verified calls for "concurrent processing in accordance with at least certain common processing operations of the first and second interface formats."

Furthermore, Katz's theory of infringement is inconsistent with the meaning of format and how formats are implemented in Verizon's call center systems. To prove satisfaction of the receiving steps, Katz argues that Repair is one format, while Consumer/Billing is a second format. To prove satisfaction of the coupling limitation, Katz asserts that certain operations of the Repair call flow are also common to the Consumer/Billing call flow, However, as discussed above, Verizon's call center systems implement the Consumer and Repair formats as separately implemented formats on dedicated equipment and are not configured such that operations common to the formats are concurrently processed. For example, the transfer of a call from one service to another requires re-routing through an ACD. Furthermore, the operations associated with one format may transfer calls to another format. Accordingly, the transfer of calls from the Consumer/Billing service to the Repair service does not result in the coupling of calls for "concurrent processing in accordance with at least certain common processing operations of the first and second interface formats." Rather, the coupling that takes place results in coupling calls for processing in accordance with the Repair format. For example, as discussed above, the Phase I application includes format selection logic and transfer calls to the Repair Service upon receipt of the user's selection. Compare Jantzi Decl. Ex. 9 and Baumann Decl. Ex. 3 (V83210, V83213). In any event, triable issues of fact also exist as to how calls are transferred For example, Katz does not explain how calls transferred from the Consumer service to Repair come directly to the decisional step "Was the number to be reported previously entered?" See Jantzi Decl. Ex, 9. Rather, the evidence suggests that calls transferred to Verizon's Repair VRUs are processed like any other call to the Repair service.

In light of the foregoing disposition, the Court does not address the remainder of Verizon's contentions as to claim 107 of the `223 patent.

B.9. Alleged Infringement of Claim 58 of the `120 Patent

Katz also moves for summary judgment that Verizon infringes claim 58 of the `120 patent. In opposing Katz's motion for summary judgment concerning claim 58 of the `120 patent, Verizon raises two contentions. First, Verizon alleges that its accused call center systems do not suppress cues as required by claim 58 of the `120 patent. Second, Verizon alleges that Katz has failed to prove that Verizon's call center systems have actually been used to suppress cues previously provided to callers. As to the other uncontested elements of claim 58, Katz appears to satisfy its initial burden on a motion for summary judgment of infringement.

B.9.a. utilizing, for qualified callers, the identification signals relating to the callers, to avoid prompting certain callers with a certain previously provided cue or cues; (claim 56)

Katz appears to satisfy its initial burden of demonstrating that, absent genuine issues of material fact, it is entitled to judgment as a matter of law that Verizon's Consumer and Repair call center systems are configured to implement the process claimed in claim 58 of the `120 patent.<sup>17</sup> See Katz Motion at 22-24. Indeed, as to its accused Consumer and Repair services, Verizon appears to admit that its call process systems are configured to perform all the limitations of claim 58 of the `120 patent, except for the step of using "identification signals relating to the callers, to avoid prompting certain callers with a certain previously provided cue or cues."

17 Despite the configuration or capability of Verizon's call center systems, however, triable issues of fact exist as to whether Verizon's call center systems have actually performed the method of claim 58.

Except as discussed below, Verizon fails to demonstrate that a genuine issue of fact exists as to its alleged infringement of claim 58 of the `120 patent by its Consumer and Repair Services. Katz alleges that Verizon's Repair Service performs the utilizing step as the Repair Service uses the callers telephone number to determine whether the caller has previously created a trouble report and, if so, avoids prompting the caller with a cue asking whether the caller wishes to make a trouble report. Bergan Decl. Ex. K (V83286, V83295, V83298), Verizon does not address this issue and simply asks for more time to respond to Katz's contention. Verizon's request, however, is not well taken as it does not appear to move under FRCP 56(f) or demonstrate why it should be entitled to additional time.

As to Verizon's Consumer Services, Katz alleges that this limitation is met since "once a consumer makes a payment arrangement, the cue presenting the option of making a payment arrangement is suppressed." Katz Motion at 15, 22; see also Bergan Decl. Exs. F, G (Baumann Tr. 207:14-208:23, 426:18-427:2). Verizon alleges, however, that once a caller makes a payment arrangement, that same caller may receive the same prompts in a subsequent call, if the caller elects to modify the payment arrangement. See Sumner Suppl. Decl. ¶¶ 41-45. Verizon admits, however, that the cues related to making payment arrangements are initially suppressed. Verizon's proffered evidence fails to raise a genuine issue of fact as to whether it's Consumer Services systems perform cue suppression within the manner required by claim 58 of the `120 patent. Verizon essentially admits that cues are at least initially suppressed based on caller identification signals. That the same cue may be subsequently provided to the caller at a later point in the call flow appears to be irrelevant to the infringement determination. See Ethicon, 276 F.3d at 1311 (as long as all steps are performed, additional or excluded steps are irrelevant).

B.9.b. Proof of Actual Use of the Method Claims

Verizon alleges that Katz has failed to introduce evidence sufficiently demonstrating that Verizon's call center systems have actually performed the methods defined in the Asserted Claims and that this lack of proof is fatal to Katz's motion for summary judgment. Specifically, Verizon asserts that there is no evidence that Verizon's call center systems have actually suppressed cues previously provided to callers. Verizon Opp. at 18.¹⁸

18 The Court grants Verizon's application to withdraw the Supplemental Declaration of Ronald Pauley, which purported to affirmatively demonstrate that, at least within a certain period of time, its Consumer service systems did not suppress cues related to payment arrangements.

A finding of patent infringement of a method claim requires proof that the accused infringer performed the claimed method. See Joy Technologies. Inc. v. Flakt, Inc., 6 F.3d 770, 773-74 (Fed. Cir. 1993).

Katz submits evidence demonstrating that Verizon's Consumer and Repair Service call systems-have the capability of suppressing cues as set forth above; however, it fails to provide evidence that Verizon's systems have actually suppressed previously-provided cues. While the capability of Verizon's systems to suppress-previously provided cues (as shown in the flow charts and other evidence) is circumstantial evidence that the claimed method was actually used, that a caller must call back for a previously-provided cue to be suppressed permits a justifiable inference that it's call processing systems have not used the claimed method. See Masson, 111 S.Ct. at 2434-35 (all justifiable inferences resolved in favor of non-moving party). Citing Glover v. Bic, 6 F.3d 1318, 1329 (9th Cir. 1993), Katz asserts that Verizon's destruction of its log files during the pendency of allegedly pertinent discovery requests entitles it to a conclusive presumption that Verizon's accused call center systems have actually suppressed previously-provided cues. However, Glover appears merely to hold that the Court may permit a jury to draw an adverse inference from Verizon's alleged destruction of its log files. Id. Accordingly, Katz has failed to demonstrate that no triable issues of fact exist as to whether Verizon has actually used the method of claim 58 of the `120 patent.

C. Written Description Requirement

According to Verizon, claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, claim 107 of the `223 patent, and Claim 5<sup>19</sup> of the `134 patent are invalid as failing to comply with the written description requirement imposed by 35 U.S.C. § 112, ¶ 1,

19 As discussed above, Katz's and Verizon's claims to the extent they relate to claim 5 of the `134 patent have been dismissed from the present litigation.

[A patent] specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

35 U.S.C. § 112, ¶ 1. To meet the requirements under § 112, ¶ 1, a patent specification must reasonably convey to one of skill in the art that the inventor possessed the claimed subject matter at the time the application or an earlier application was filed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). That is, the disclosure of the filed application must adequately describe the invention which is the subject of the claims at issue, See In re Gosteli, 872 F.2d 1008, 1010-11 (Fed. Cir. 1989) (For purposes of claiming priority to an earlier-filed application, the "invention" refers to what is now claimed). The claims as originally filed in a patent application are part of the specification and may provide, or contribute to, written description support of a later-filed claim. See Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (citing Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 938 (Fed. Cir. 1990) (the original claims are part of the patent specification)).

Although the meaning of terms, phrases, or diagrams in a specification is to be explained from the vantage point of one skilled in the art, all the claim limitations must appear in the specification. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). A patent specification that does not unambiguously describe all limitations of a claim does not meet the written description requirement. The written description must include all of the limitations in the claim, or it must be shown that "a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation." See Boone, 146 F.3d at 1353; Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) ("Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.").

Furthermore, simply because the a patent specification may render the claimed invention obvious is not sufficient to satisfy the written description requirement. See Lockwood, 107 F.3d at 1572 ("It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose."); see also Martin v. Mayer, 823 F.2d 500, 504 (Fed. Cir. 1987) (stating that it is "not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure. . . . Rather, it is a question whether the application necessarily discloses that particular device."), superseded by statute on other grounds as stated in, Kubota v. Shibuya, 999 F.2d 517 (Fed. Cir. 1993). Compliance with the written description requirement under 35 U.S.C. § 112, ¶ 1 is a question of fact Boone, 146 F.3d at 1352.

C.1. Identifying or Selecting Formats Based on DNIS Signals

Verizon alleges that claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent lack written description support since they all require selecting or identifying a format from a plurality of formats, while the specifications of these patents only describe a single format. These same claims do not enjoy written description support, contends Verizon, because they recite that a format is selected or identified from a plurality of formats using DNIS signals, which the patent specifications do not describe. The parties do not appear to dispute that claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent all require implementation of multiple formats, as well as the identification of formats using DNIS signals. The parties' dispute, therefore, distills down to the meaning of the term "format," and whether the relevant patent specifications²⁰ provide written description support for a call processing system that implements multiple formats.

20 The `734 patent, the `120 patent and the `223 patent all share the same patent specification. This section of the order refers solely to the `734 patent for citations to relevant passages of the specification.

The term "format" as originally construed by the Court, and as clarified herein, corresponds to a call process flow that handles different call modes. As discussed above, "format" means "at least one computer program, implementing a call process flow application, that sets forth the content and sequence of steps to gather information from and convey information to callers through pre-recorded prompts and messages." Claim Construction Order at 8. This definition does not exclude the possibility that a single format can operate on calls in different call modes. Moreover, as discussed below, the relevant patent specifications clearly indicate that the preliminary operations associated with the different calls modes are part of a single format, and do not represent separate formats. In addition, that the audio response units dedicated to the different call modes all operate under the supervision of a single control unit further supports the proposition that a format contemplates more than one call mode. See `734 patent, Col. 4:22-25,

As discussed below, Verizon has met its initial burden of demonstrating that it is entitled to judgment as a matter of law as to its contention that claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent are invalid for failing the written description requirement of 35 U.S.C. § 112, ¶ 1. Despite Katz's contentions, the `734 patent discloses a call processing system that implements a single format and does not provide written description support for claims directed to a call processing system that implements multiple formats. The court's review of the `734 patent specification reveals that (1) the different preliminary operations associated with the various call modes are part of a single format; and 2) while the `734 patent discloses that the Katz system has the ability to implement one of a variety of formats, it does not disclose a call processing system that simultaneously implements multiple formats.

The `734 patent disclosure begins with a discussion of various background computer and telephony technologies, such as `Voice-digital interfaces," "digital interface systems," "AMI," and "Dialed Number Identification Service" (DNIS). See `734 patent, Col. 1:45-51 ("telecommunications applications have expanded to accommodate voice-digital interfaces between computer apparatus and callers at remote telephone terminals. For example, by actuating the push buttons at a remote telephone terminal, a caller controls a computer apparatus to provide various entertainment or information."); Col. 1:55-62 ("Digital interface systems also have been implemented to utilize digital signals provided independently of the caller's actions. For example, the so-called "AM" telephone equipment provides digital signals indicating a caller's telephone number. Equipment designated "DNIS" is similarly available to indicate the called number. Thus, digital signals may be provided telephonically to a system associated with individual calling terminals as for identification or other use."). The `734 patent then discusses the accommodation of different call modes, such as the "900" and "800" call modes. See `734 patent, Col. 2:1-16. The `734 patent also mentions the need for controlling or regulating use of "800" or "area-code" calling modes to, for example, limit repeat call advantages.See `734 patent, Col. 2:17-34.

The `734 patent specification then begins its description of the invention stating that "the system of the present invention involves a telephone call processing system for receiving calls from a multitude of terminals in different call modes and for processing calls, as to a game or contest format, with means to limit repeat-call advantages." See `734 patent, Col. 2:43-47. The `734 patent also states that "[i]n a disclosed form, the system implements three calling modes to facilitate various formats while accomplishing certain protection both with regard to the calling mode and contest formats." `734 patent, Col. 2:47-50.

More relevant to the instant issue, the `734 patent specification clearly indicates that the different preliminary operations associated with the various call modes are part of a single format. See, e.g., `734 patent, Col. 3:25-32 ("Generally, calls from the individual terminals T1-TN might be in any of three modes, i. e. the "800" mode, the "900" mode or the area-code mode (traditional area code plus number or local number dialing). In the disclosed illustrative system, depending on individual calling modes, calls are selectively accepted for interface processing. Generally, the interface format accommodates "900" calls with supplemental "800" calls to accommodate both "free" access and all types of telephone terminals."); see also Col 5:34-42 ("assume that the system CS is programmed to accommodate a relatively simple game format, that is, a sponsored contest for the promotion of a product, e.g. the XYZ Widget. Further assume the contest is of limited participation based either upon: the payment of a token fee ("900" calling mode), prearranged participation ("800" calling mode), lottery selection (area-code calling mode) or lottery selection in combination with either 800 or 900 calling modes."); Col. 6:14-17 ("the system accommodates participants using various telephone call modes with select qualification to participate in an interface format utilizing voice prompt and push-button digital communication."). Moreover, Figure 2 of the `734 patent is a flow chart illustrating the different preliminary operations associated with three different call modes and the operations of the format common to all call modes. Notably, the `734 patent states that "FIG. 2 is a flow diagram of an operating format. . . ." `734 patent, Col. 2:59-60 (emphasis added); see also Col. 8:3-7 ("The initial step of the format common to all call modes is represented by the block 52 in FIG. 2. However, as calls in all modes are processed similarly from that point, before proceeding with the explanation, the preliminary operations attendant other calling modes first will be explained.") (emphasis added)

While Katz's expert, Dr. Lucantoni, submits conclusions contrary to the Court's determination, the Court finds that Dr. Lucantoni's opinions are not sufficiently grounded in the `734 patent specification, taken as a whole, and therefore fail to raise a genuine issue of fact for trial. See Arthur A. Collins. Inc. v. Northern Telecom Ltd., 216 F.3d 1042, 1046 (Fed. Cir. 2000) (expert conclusions unsupported by facts are insufficient to raise a genuine issue of material fact); see also Novartis Corp., 271 F.3d at 1051 ("If all expert opinions . . . were accepted without inquiry into their factual basis, summary judgment would disappear from patent litigation."). The court's disposition as to a selected subset of Dr. Lucantoni's reasoning follows. Generally speaking, however, Dr. Lucantoni's opinions are based on selected passages of the `734 patent specification and, even when making all justifiable inferences in Katz's favor, do not take account for the context that gives essential meaning to the cited passages. Other conclusions reached by Dr. Lucantoni are based on an incorrect understanding what a "format" encompasses.

Katz's expert alleges that Figure 2 of the `734 patent discloses three different formats, one for each call mode. Expert Report of David Lucantoni, Ph.D., in Response to the Expert Report of Roger A. Sumner Regarding the Issues of Written Description and Enablement (Lucantoni Responsive Report) ¶¶ 18, 19. However, Dr. Lucantoni appears to ignore that the `734 patent describes, as discussed above, that the different preliminary operations associated with each of the call modes are different aspects of a single format.

Dr. Lucantoni also states that "[w]hile Figure 2 shows three different formats entered via three different calling modes, a person of ordinary skill in the art would understand that multiple formats could be used in any one mode." Id. ¶ 19. Despite what one of ordinary skill in the art would or could understand, however, the `734 patent specification fails to disclose such an embodiment. Lockwood, 107 F.3d at 1572.

Dr. Lucantoni also asserts that multiple formats are inherent in the use of multiple response units. Id. ¶ 20. However, this conclusion is based on the erroneous premise that the different preliminary operations associated with the various call modes define separate formats. Moreover, Dr. Lucantoni does not account for the fact that, in the Katz system, the control unit 28 supervises caller qualification at the various response units. See `734 patent, Col. 4:22-25.

Dr. Lucantoni cites various statements in the `734 patent specification that supports his conclusions. For example, he cites the passage:

In a disclosed form, the system implements three calling modes to facilitate various formats while accomplishing certain protection both with regard to the calling mode and contest formats.

`734 patent, Col. 2:47-50; see also Lucantoni Responsive Report ¶ 21. In the context of the remainder of the `734 patent specification, however, the ability of the disclosed Katz system to accommodate different call modes renders it suitable for use in connection with one of "various formats," but does not appear to disclose that the Katz system simultaneously implements multiple formats. Furthermore, while the `734 patent specification states "[w]ith the receipt of a call at the interface processor 26, a voice generator may be actuated to specifically inform a caller, depending upon the specific format employed," Col. 8:52-54, the passage, taken in context, merely suggests that the format implemented by the disclosed Katz system may include the use of a voice generator to provide a voice message to a caller, but does not disclose or suggest that the Katz system disclosed in the `734 patent simultaneously implements multiple formats.

Katz also relies on the statement that "[w]hile numerous format possibilities exist, as suggested above, access for callers in the area-code mode might be limited to a relatively short period of time," Col. 7:52-55, as describing multiple formats. Lucantoni Responsive Report ¶ 23. The cited passage, however, merely indicates that the Katz system has the ability to implement one from a number of different "format possibilities."

Dr. Lucantoni also alleges that the `734 patent specification's disclosure that "[t]he interface processor 26 may comprise a relatively substantial computing capability for processing many individual calls with programmed variations," Col. 8:40-42 (emphasis added), further suggests that the Katz system supports multiple formats. Lucantoni Responsive Report ¶ 24. Again, in the context provided by the remainder of the paragraph encompassing the passage cited by Dr. Lucantoni, the `734 patent specification does not unambiguously describe multiple formats. Rather, the cited passage refers to program variations within a given format, such as variations that are responsive to ANI signals and data relating to callers in a data bank. See `734 patent, Col. 8:42-51.

Lastly, Dr. Lucantoni appears to allege that the claims filed, or at least issued, in connection with parent application Serial No. 07/194,258, now U.S. Patent No. 4,845,739 provide support for claims directed to a plurality of formats. The `739 patent and the `734 patent, however, include substantially different specifications. Katz cites no authority indicating that claims In a previous application that include a substantially different specification, can provide written description support for claims in an application or patent whose specification does not provide adequate written description support. Indeed, Dr Lucantoni's testimony suggests that Katz may have been better off filing the claims in a continuation of the `739 patent.

In light of the foregoing, since the `734 patent specification discloses a call processing system that only supports a single format, it necessarily follows that the disclosed Katz system does not use DNIS to select or identify one format from a plurality of formats. Indeed, the `734 patent does not appear to disclose the use of DNIS in format selection, or even the identification by the Katz system of the call mode. Rather, it appears that calls in the different call modes are routed by the communication facility to the appropriate audio response units. See `734 patent, Figure 2. Moreover, the passages of the `734 patent specification cited by Dr. Lucantoni fail to raise genuine issues of fact in this regard.

For example, Dr. Lucantoni's conclusions are premised on his contention, rejected by this Court, that Figure 2 of the `734 patent discloses three separate operating formats. See Lucantoni Responsive Report ¶¶ 36, 37. Dr. Lucantoni also states that

[a] person of ordinary skill in the art would understand that the existence of multiple formats on a single system that is capable of receiving DNIS signals discloses the use of DNIS format selection. DNIS is what determines which call flows and sequences of steps the user will experience.

Lucantoni Responsive Report ¶ 38. However, the `734 patent does not disclose the use of DNIS in selecting a call process flow application. Furthermore, that DNIS signals may control the sequence of steps a user may experience within a given format has no bearing on whether DNIS is used to select a format from a plurality of formats. Rather, as discussed above, the `734 patent discloses a call processing system including multiple audio response units to which calls in different call modes are routed by the communication facility. As part of single format, one or more of the audio response units is configured to perform certain preliminary operations. The `734 patent does disclose that the communication facility is capable of providing DNIS signals to the Katz system, but does not clearly teach how such DNIS signals are used within the Katz system.

C.2. Qualification or Verification of Calls in the Toll-Free Call Mode

Claims 81 and 94 of the `734 patent and claim 107 of the `223 patent, according to Verizon, are invalid, because 1) they recite that some calls in the toll free calling mode (i.e., "800" calls) are qualified or verified while others are not, while 2) the relevant patent specifications describe a system in which all calls in the toll free calling mode are qualified or verified.

As to this issue, the parties appear to agree as to the meaning and scope of the claims, but disagree as to whether the relevant patent specifications provide adequate written description support for the claims.

Verizon appears to have met its initial burden of demonstrating that it is entitled to summary judgment, as the relevant patent specifications do not appear to unambiguously describe a call processing system in which some toll-free calls are qualified while others are not. See, e.g., `734 patent, Col. 3:33-35 ("In the disclosed embodiment, calls in the "800" mode are restricted in accordance with prearranged limitations.")

The opinion of Katz's expert, Dr. Lucantoni, fails to raise a genuine issue for trial, as his opinions largely rely on selected excerpts of the relevant patent specifications without consideration of relevant context. For example, Dr. Lucantoni speculates that one of ordinary skill in the art would understand that the top-level boxes in Figure 2 could be modified such that they correspond to different "800" numbers, which would convey that some "800" calls can be qualified while others are not. Lucantoni Responsive Report ¶ 44. While Dr. Lucantoni's suggested modification may be obvious in light of the relevant patent specifications, they do not disclose or necessarily suggest such a modification. Lockwood, 107 F.3d at 1572.

Dr. Lucantoni also suggests that the specification clearly implies that some "800" calls may be limited while others are not. See Lucantoni Responsive Report ¶¶ 45, 46 and passages cited therein. However, the passages cited by Dr. Lucantoni, taken in context, do not support his conclusions. See `734.patent, Col. 3:24-40 ("Generally, the interface format accommodates "900" calls with supplemental "800" calls to accommodate both "free" access and all types of telephone terminals. In the disclosed embodiment, calls in the "800" mode are restricted in accordance with prearranged limitations. Furthermore, calls in the area-code mode (from all areas), the 800 mode and 900 mode may be limited to callers having a station number containing a predetermined digit sequence. For example, calls might be restricted to those from terminals having a telephone number ending in the digits "234". "). As the cited passage indicates, "in the disclosed embodiment," "800" calls are qualified (such as by using ANI to check for repeat callers) and may be further qualified or restricted based on a predetermined digit sequence.

C.3. Summary

In light of the foregoing, Verizon has met its initial burden of demonstrating that claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent are invalid for failing to comply with the written description requirement imposed by 35 U.S.C. § 112, ¶ 1. Katz fails to raise a genuine issue of material fact as to Verizon's contentions. Accordingly, summary judgment as to Verizon's contentions is proper.

D. Invalidity by Anticipation

According to Verizon, the prior art identified below anticipates and, therefore renders invalid, claim 69 of the `762 patent, claims 31 and 44 of the `863 patent, claim 66 of the `893 patent, claim 58 of the `120 patent, and claims 81 and 94 of the `734 patent.

A patent is presumed valid. 35 U.S.C. § 282. A challenger bears the burden of demonstrating patent invalidity by clear and convincing evidence. See Scripps Clinic Res. Found, v. Genentech, Inc., 927 F.2d 1565, 1571 (Fed. Cir. 1991). Furthermore, when a challenger relies on prior art which has already been considered by the U.S. Patent Office Examiner, it "has the added burden of overcoming the deference that is due to a qualified government agency." American Hoist Derrick Co. v. Sowa Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984).

To qualify for patent protection, an invention must be both novel and nonobvious. 35 U.S.C. § 102, 103. An invention fails the novelty requirement when it is "anticipated" — that is, a patent claim is invalid under 35 U.S.C. § 102, if a single prior art reference discloses every element and limitation of the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). In assessing whether a patent claim is anticipated or obvious, the Federal Circuit has instructed the lower District Courts to identify the elements of the claims at issue, construe the claims to determine their meaning, and analyze the asserted prior art references against the construed claims. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001).

Anticipation requires the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim. Verdegaal Brothers, 814 F.2d at 631. Even where it is silent as to a particular characteristic, a single prior art reference may anticipate a claim where one of ordinary skill in the art would have understood every claim element to have been disclosed or inherent in the reference. Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).

Under 35 U.S.C. § 102(a), a patent claim is invalid for anticipation when the claimed subject matter, before it was invented by the applicant, was "known or used by others in this country, or patented or described in a printed publication." Furthermore, under 35 U.S.C. § 102(b), a patent claim is invalid for anticipation when the claimed invention was sold or offered for sale at least one year before the patent application was filed. See Pfaff v. Wells Elecs., Inc., 119 S.Ct. 304, 311 (1998).

D.1. Versatel and Claim 69 of the `762 patent

D.1.a. Versatel as Prior Art under § 102(b)

Katz alleges that the Versatel system was not "on sale" and thus does not qualify as prior art under 35 U.S.C. § 102(b), because there is no evidence that callers using the Versatel system knew how it worked.

The sale of a device embodying a claimed invention by a third party more than one year prior to the critical date may bar the patentee from obtaining a valid patent on the claimed invention. J.A. LaPorte Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1581 (Fed. Cir. 1986). That actual users of the device purchased by another may not learn the details of its operation is immaterial. See J.A. LaPorte, 787 F.2d at 1582-83 (distinguishing W.L. Gore Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)); see also In re Caveney, 761 F.2d 671, 675-76 (Fed. Cir. 1985) (claimed invention disclosed to purchaser).

Here, Periphonic's sale of the Versatel system to Bank of America appears to qualify as a sale under 35 U.S.C. § 102(b). Specifically, it appears that, on October 10, 1980, Periphonics and Bank of America contracted for the purchase and installation of call processing systems intended for Bank of America's "Versatel Home Banking System." See Emerson Decl. Ex. 2. Verizon relies on the specification of the Versatel system attached to the purchase and installation agreement. See Emerson Decl. Ex. 1.

D.1.b. Whether the Versatel System Includes All Claim Limitations

The Versatel system, contends Katz, lacks the credit verification and acknowledgment generator structures required by claim 69 of the `762 patent.

The evidentiary record reveals certain triable issues of fact material to Verizon's contention that the Versatel system anticipates claim 69 of the `762 patent. Among other elements, claim 69 (depending from claim 41 of the `762 patent) requires a "credit verification structure to verify on-line said individual caller's customer number to determine said individual caller's credit." `762 patent, Col. 24:62-64. To demonstrate satisfaction of the "credit verification structure" limitation, Verizon relies on the alleged ability of the Versatel system to allow callers to transfer funds from a credit card account. See Patel Decl. ¶ 75 Ex. 2 at 76. Pointing to a "Vocabulary" and "Dialogue Parameter Control Table," Verizon alleges that callers are first authenticated based on an account number and password. Patel Decl. ¶ 75 (V137093, V137104, V137110). A triable issue of fact exists, however, as to whether the Versatel system actually makes a credit determination in association with a requested transfer from a credit card account to a savings account. The excerpt from the Vocabulary on which Verizon relies indicates that "Transfers from credit card accounts (to savings not accepted). See Patel Decl. Ex. 33 (V137107). As Katz alleges, the court may reasonably infer from this excerpt that transfers from credit card accounts to other accounts are not allowed at all, obviating the need for a determination of credit. See Brody Decl. ¶ 8.

In its Reply, Verizon appears to allege that authentication without more or in connection with denying transfers from credit card accounts to savings accounts is sufficient to satisfy the "credit verification structure" limitation. However, the authentication of a user by verifying account and password information allows a user to access various operations of an account and does not appear, standing alone, to require a determination of credit.

D.2. AT T's Conversant I Voice System Claims 31 And 44 Of The `863 Patent And Claim 66 Of The`893 Patent

Verizon contends that the Moosemiller reference describing AT T's Conversant I voice system anticipates claims 31 and 44 of the `863 patent, and claim 66 of the `893 patent under 35 U.S.C. § 102(b).²¹

21 Katz objects to Verizon's reliance on the General Trading Reference and Conversant references, because, according to Katz, Verizon never disclosed the bases for its contentions that these references anticipated certain Asserted Claims. Katz further asserts that Verizon's transgression as to the General Trading Reference is particularly egregious since Verizon attempted to introduce its invalidity contentions as to this reference in a rebuttal report struck from the record by this Court as an improper. Katz Opposition at 45, Verizon's expert, Dr. Patel, did, however, list these references in his March 7, 2003 Report. Furthermore, Katz fails to demonstrate that it is now prejudiced or otherwise unable to respond to Verizon's contentions relating to the General Trading and Conversant references. Katz's request under FRCP 56(f) in connection with the Conversant and General Trading references is also denied.

As to claims 31 and 44 of the `863 patent, the Moosemiller reference, according to Katz, does not disclose a number of claim limitations including a qualification structure for qualifying access by callers to a select format based on at least two forms of distinct identification. Verizon appears to allege that the "qualification structure" limitation would be met by a system that requires a user identification number and a personal identification number (PIN), two distinct forms of identification. Verizon further alleges that one of ordinary skill in the art would have understood that the applications supported by the Conversant system (e.g., financial services, credit authorization, etc.) would have necessarily used two distinct forms of identification. Patel Decl. ¶ 137 Ex. 3 at 81.

A single prior art reference anticipates a patent claim if it expressly or inherently describes each and every limitation set forth in the patent claim. Verdegaal Bros., 814 F.2d at 631. Inherent anticipation requires that the missing descriptive material is "necessarily present," not merely probably or possibly present, in the prior art. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing Con'l Can, supra, 948 F.2d at 1268). The Federal Circuit warns, however, that

[t]his modest flexibility in the rule that `anticipation' requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103.

Cont'l. Can, 948 F.2d at 1269.

Triable issues of fact exist as to whether the Moosemiller reference inherently teaches qualification using two distinct forms of identification. While Verizon's argument does have some initial appeal, the Court is mindful that (1) invalidity must be shown by clear and convincing evidence, (2) all justifiable inferences must be resolved in Katz's favor, and (3) in the present context, the second form of identification missing from the express teachings of the Moosemiller reference must be "necessarily present." In Reply, Verizon alleges that using two distinct forms of identification in secure applications is "notoriously well known," Verizon Reply at 18. The court does not disagree. However, Katz alleges that certain secure applications require only one form of identification, such as the Nextel computer support service. Sec Brody Decl. ¶ 26; see also Continental Can, supra, 948 F.2d at 1269 (law as to what a reference inherently teaches should not be used as substitute for question of obviousness under 35 U.S.C, § 103). Moreover, the reference in Moosemiller to certain "broad areas of information dissemination" including "financial services, credit authorization, college registration, etc. does not mention specific applications necessarily requiring heightened authentication, such as the Versatel system that allows callers to access financial accounts, transfer funds, and make payments.

As to Claim 66 of the `893 patent, triable issues of fact remain as to whether the Moosemiller reference provides clear and convincing evidence of invalidity. Relying on Dr. Brody's opinions, Katz alleges that the Moosemiller reference does not disclose (1) a multiple port, multiple format processor, (2) selection means that imposes time-based conditions on access to formats, and (3) test means that provides approval signals.

However, as to Katz's first two contentions, Dr. Brody's testimony fails to raise a genuine issue as it is based on an incorrect understanding of the scope of claim 66 of the `893 patent. For example, Dr. Brody alleges that testing whether a request to a database times-out before allowing access to a format is not "an imposed condition with respect to time" within the meaning of claim 66. See Brody Decl. ¶ 34. However, testing whether a host database responds within a threshold period of time certainly appears to be an imposed condition with respect to (i.e., relative to) time. See also Miller Decl. Ex. 11 ( The Teleconnect Dictionary, Newton (1987) at 440) ("timeout" means "an event which occurs at the end of a predetermined interval of time".). However, approval signals would appear to result when the database returns a response within the threshold period of time. See Patel Decl. ¶ 187. Dr. Brody further alleges that Dr. Patel, Verizon's expert, relies on the "`Service subroutine* and the `stock quote service' as providing the required approval signals." Brody Decl. ¶ 38. Dr. Patel, however, clearly states that the SERVICE subroutine executes under approval signals from the LOGON subroutine. Patel Decl. ¶ 191.

As to whether the Moosemiller reference discloses a multiple port, multiple format processor as required by claim 66 of the `893 patent, Verizon fails to demonstrate that no genuine issues of fact remain. Verizon responds that the Moosemiller reference clearly shows "a processor implementing multiple formats." Reply at 20. Notably absent from Verizon's proffered showing of invalidity; however, is evidence that the Conversant system includes a multiple port processor. Rather, Mr. Patel, citing the Moosemiller reference, merely states the functional limitation associated with the processing means limitation is met, see Patel Decl. ¶ 191, but does not demonstrate how the "Transaction State Machine running within the Conversant system controller" is structurally the same as, or equivalent to, the multiple port, multiple format processor disclosed in the `893 patent for performing the recited function. For example, Mr. Patel does not allege that the voice response units, which appear to have multiple ports (see Figure 1) connected via a general purpose bus to the system controller (which implements the Transaction State Machine) constitutes the multiple port, multiple format processor. Furthermore, Mr. Patel does not allege that the Moosemiller reference inherently discloses a multiple port, multiple format processor. In light of the foregoing and that the Moosemiller reference appears on the list of "Cited References" in the `893 patent, the Court is unwilling to conclude on summary judgment that the Moosemiller reference teaches a multiple port, multiple format processor, in the absence of more explicit direction by an expert as to what the Moosemiller reference discloses to one of ordinary skill in the art.

D.3. General Trading and Claim 58 Of The `120 Patent

Verizon alleges that Periphonics, Inc.'s offer to sell the VoiceStar system disclosed in the General Trading functional specification, above, ("the General Trading Reference") anticipates claim 58 of the `120 patent under 35 U.S.C. § 102(b).

D.3.a. Whether General Trading is Prior Art

Katz alleges that its strong disagreement with Verizon's contention that the effective filing date of claim 58 of the `120 patent raises a triable issue of fact as to whether the General Trading Reference qualifies as prior art under 35 U.S.C. § 102(b).

Katz however fails to raise a triable issue of fact as to the effective filing date of claim 58 of the `120 patent. Katz alleges that the effective filing date of the `120 patent is May 16, 1988, while Verizon alleges that the effective filing date is October 23, 1989. See Lee Dec. Ex. 6, That is, Katz appears to rely on the application resulting in the `739 patent (U.S. Application Ser. No. 07/194,258). Verizon, however, submits evidence demonstrating that claim 58 of the `120 patent finds no support in the `258 application. See Patel Decl. ¶¶ 57-59; see also Sumner Decl. ¶¶ 45-52 (analyzing `134 patent having same specification as `258 application). Katz merely states that it is entitled to the filing date of the `258 application without supporting argument or evidence.

D.3.b. Whether General Trading Anticipates Claim 58 of the `120 Patent

The General Trading reference does not, according to Katz, disclose (1) dialed number identification signals provided by the telephone network, and (2) that the dialed number identification signals are utilized to identify one from a plurality of dialed numbers. Katz Opposition at 40.

Triable issues of fact exist as to whether the General Trading reference anticipates claim 58 of the `120 patent. Verizon points to insufficient evidence conclusively demonstrating that DNIS is necessarily used in selecting between English and Spanish applications. Based on Mr. Patel's testimony, it appears that Verizon argues that the PBX or other telephone interface routes a call using DNIS to a line of the "VoiceStar" processor; where one or more lines is dedicated to English, another in Spanish. See Patel Decl. ¶ 213 ("When two different numbers are used (one for Spanish and one for English), the dialed number information is used to select the appropriate telephone line on the Voice Star computer."). According to Katz, however, triable issues of fact remain as to whether General Trading discloses the use of DNIS, since the telephone network, rather than the interface associated with the Periphonics system, can connect calls to the line associated with English service, or the line associated with Spanish service. Brody Decl. ¶ 44. The Court hesitates to conclude from Figure 1, without more, that the "telephone interface" box is necessarily a PBX or other device that uses DNIS signals to select a telephone line. Rather, the telephone interface box depicted in Figure 1 of the General Trading reference may represent multiple telephone interfaces. For example, from Figure 3 of the General Trading reference, it is not readily apparent what is meant by the box "telephone interface," as it could represent a PBX (or other switching device), or merely an interface or bank of interfaces. Furthermore, the General Trading specification states that the "communications processor" "interfaces to Telco facilities." Patel Decl. Ex. 34 (V136460). In addition, the "Add-On Equipment" further specifies a "telephone interface" with the addition of six MDV lines. See id. (V136450). While Verizon criticizes Dr. Brody for failing to explain why different lines must be utilized for English and Spanish versions of the voice-based application, its own expert states that the telephone interface connects the call to different lines of the VoiceStar computer depending on the dialed number. See Patel Decl. ¶ 209.

D.4. AVIOS and Claims 81 and 94 of the `734 Patent

Verizon alleges that a paper entitled "Advanced Function VRU Applications" from the AVIOS `89 Conference dated September 12-14, 1989 (the "AVIOS Reference") provides clear and convincing evidence that claims 81 and 94 of the `734 patent are invalid under 35 U.S.C. § 102(a).See Patel Decl. Ex. 35.

D.4.a. Whether AVIOS is Prior Art to Claim 81

Katz alleges that its "corroborated conception of the invention of claim 81 dated August 1, 1988" predates the publication of the AVIOS reference, rendering it insufficient to establish invalidity under 35 U.S.C. § 102(a). Katz relies on a letter to the Federal Communications Commission to corroborate its alleged conception of the invention of claim 81, See Lee Decl. Ex, 6. However, beyond alleging that the letter exists by pointing to an answer to an interrogatory, it fails to actually provide the substance of the letter or any other evidence demonstrating conception on August 1, 1988. Accordingly, Katz has failed to raise a genuine issue for trial as to the applicability of the AVIOS reference to the claims.

D.4.b. Whether AVIOS Anticipates Claim 81 and 94

The AVIOS reference does not teach, contends Katz, the concurrent processing of data in according with at least certain common processing operations. Katz Opposition at 44.

While Verizon demonstrates that the transfer operations occur within at least two formats, it does not demonstrate common processing in that it fails to demonstrate how the logic underlying the operations are the same or shared. See Patel Decl, ¶¶ 264, 265. Claims 81 and 94 require that the "means for processing" element receives calls for "concurrent processing of data in accordance with at least certain common processing operations." of the formats. As the Claim Construction Order states, "common processing" means "processing in which the logic underlying certain of the content and/or sequence of steps of the formats are the same or shared." Claim Construction Order at 15. The AVIOS reference states that it is preferable to have a VRU "deliver to the live operator the same Host Screen of data that the VRU had when it was processing the call." Patel Decl. Ex. 35 (V141925). The AVIOS reference further states that the VRU may transfer "additional data," such as the data gathered from the caller during the call. Id. Mr. Patel does not demonstrate how the VRUs transfer data to the live operator stations, such as what functions or subroutines are called. For example, Mr. Patel does not demonstrate that the same function is called to process the Host Screen (and potentially additional data) and transfer the data to a live operator, or that a common function or subroutine somehow transfers the connection between the VRU and the host to the liver operator station. Accordingly, as Katz reasonably infers, the formats may involve different host screens or additional data, and, therefore, different VRU data preparation schemes executed by different subroutines having differing content and/or sequences of steps. Brody Decl. ¶ 51.

IV. ORDER

In light of the foregoing, the Court grants in part Verizon's motion for summary judgment, as follows, that:

1) Verizon's Calling Card Services and Business Repair Service do not infringe the Asserted Claims, as Katz has advanced no infringement contentions with respect to these services;

2) Verizon's Business Sales Service, standing alone, does not infringe claims 58, 66 and 67 of the `120 patent, claim' 107 of the `223 patent, claims 81 and 94 of the `734 patent, claims 3 and 68 of the `285 patent, claim 66 of the `893 patent, claims 31 and 44 of the `863 patent, claim 21 of the `551 patent, claims 1 and 13 of the `065 patent, and claim 69 of the `762 patent;

3) Verizon's Repair Service, by itself, does not infringe claim 67 of the `120 patent, claim 66 of the `893 patent claims 31 and 44 of the `863 patent, and claim 69 of the `762 patent.

4) Verizon does not infringe the Asserted Claims as a contributory infringer under 35 U.S.C. § 271(c);

5) Verizon's accused call center systems do not infringe claims 1 and 13 of the `065 patent and claim 21 of the `551 Patent;

6) Verizon's Consumer and Repair Services do not infringe claim 1 of the `065 patent, as there is no evidence of record demonstrating that the CTI Server accesses customer data using a telephone number expressed in ANI signals;

7) Verizon's Consumer and Repair Services do not infringe claims 3 and 68 of the `285 patent;

8) Verizon's Consumer caller center systems do not infringe claim 67 of the `120 patent; and

9) claims 81 and 94 of the `734 patent, claim 66 of the `120 patent, and claim 107 of the `223 patent are invalid for failing to comply with the written description requirement imposed by 35 U.S.C § 112, ¶ 1.

Verizon's motion for summary judgment is otherwise denied.

In addition, the Court grants-in-part Katz's motion for summary judgment only to the extent that Verizon's Repair and Consumer call center systems would infringe claim 58 of the * 120 patent, if proof of actual performance of the claimed method were provided. Katz's motion is otherwise denied.

The Court grants Katz's motion to amend its answer and counterclaim to withdraw claim 5 of the `134 patent. The Court dismisses from the present case Katz's and Verizon's claims for relief to the extent they relate to claim 5 of the `134 patent. Katz shall file an amended answer and counterclaim consistent with this Order within fourteen days of the date of this order.

The Court shall permit Verizon to depose Dr. Goldberg a single time at a time mutually agreed on by the parties. As to any such deposition of Dr. Goldberg and any preparatory activities related to the deposition, each party is to bear its own costs. Any such deposition shall not exceed six (6) hours. The Court also permits Verizon to submit a rebuttal report to the Supplemental Tucker report. The rebuttal report, if any, shall be prepared and filed within fourteen days of the date of this order. Verizon's motion to strike is otherwise denied.

Lastly, the Court hereby schedules a case management conference for December 22, 2003 at 9:00 a.m. A Pretrial Conference Date and Trial Date will be set at that time. The parties are to file pre-trial documents pursuant to the Trial Order. The Court expects the parties' pre-trial memoranda of contentions of fact and law to include a clear and concise discussion of the claims remaining for trial and the factual and legal contentions as to each remaining claim, including an identification of the Verizon Services that Katz accuses of patent infringement.