United States District Court, E.D. Virginia, Alexandria Division
Ellis, III United States District Judge.
issue in this patent infringement action are the parties'
proposals regarding the appropriate construction of certain
claim terms recited by plaintiffs patent, U.S. Patent No. 7,
933, 951 ("the '951 Patent"). Among these
proposals is defendant's argument that certain claims of
the '951 Patent, including the Patent's sole
independent claim, are fatally indefinite. The parties
appeared for a claim construction hearing on May 23, 2019,
and this matter, including the issue whether the '951
Patent is indefinite, has been fully briefed and argued.
Accordingly, the parties' claim construction disputes are
now ripe for disposition.
'951 Patent is entitled "Systems and Methods for
Discerning and Controlling Communication Traffic." The
Patent purports to disclose "systems and methods ...
that allow for redirection of communication traffic over the
Internet based, at least in part, on the type of higher-level
communication protocol intended to be used."
See '951 Patent, Abstract.
is the sole independent claim of the '951 Patent. The
claim reads as follows:
1. A computer system for redirecting Internet communications,
said system comprising:
a first processor that receives information from a computer
at a point of origin;
a second processor that analyzes the information for one or
more pre-defined bit strings or character sets;
a third processor that receives return information from a
computer that communicates with other computers on the
a fourth processor that analyzes the return information for
said one or more predefined bit strings or character sets;
a fifth processor that
a) supplies one or more IP Addresses for the information
requested if one or more of the pre-defined bit strings or
character sets are not encountered,
b) supplies one or more second IP Addresses for the
information requested if one or more different bit strings or
character sets are encountered,
c) supplies one or more third IP addresses if one or more of
the pre-defined bit strings or character sets are encountered
and a higher level protocol can be inferred, and/or d) allows
the traffic to flow thru unmodified; and a sixth processor
that analyzes a request submitted to said different IP
Address for one or more alternative bit strings or character
sets, wherein the alternative bit strings or character sets
are indicative of a particular higher level Internet
communication protocol, and wherein the system further
comprises maintaining a list of bit strings or character sets
for which a different IP Address should not be supplied,
wherein the list is updated one or more times after creation
of the list, and wherein the list is updated based on
monitoring of requests for: originating IP address, requested
host-name, size of a DNS query, frequency of a single
host-name or domain name, port number, date, and/or time.
'951 Patent at 21; SM5.
claims 8, 13, and 15 introduce additional limitations
relevant here. Claim 8 recites "a seventh processor that
receives a request to connect to a computer at said IP
Address." Id. at 22:6-7. Claim 13 recites
"a tenth processor at the different IP address."
Id. at 22:23-24. And claim 15, in pertinent part,
recites the sixth processor introduced by claim 1, namely
"the sixth processor that analyzes a request submitted
to said different IP address." Id. at 22:29-30.
parties agree that the following four constructions of terms
in claim 1 and various dependent claims reflect the manner in
which a person of ordinary skill in the art would construe
the claim terms in the context of the '951 Patent.
Accordingly, these four agreed constructions of the '951
Patent's claim terms are adopted for purposes of this
"processor" (claim 1 and dependent
"any hardware, software, or combination of two
or more of either or both that can process
information within the framework of a computer
"bit strings" or "character
sets" (claim 1 and dependent claims)
"a sequence of bits or characters that
"higher level protocol" (claim 1 and
"a protocol for transmission of information
over the Internet which is above the IP protocol
"transparently" (claim 16)
"in a way that is not perceived by other users
contrast to those terms, the parties sharply dispute the
proper construction of five other claim terms in claims 1, 8,
13, and 15, namely (i) "said different IP Address,"
(ii) "a different IP Address," (iii) "said IP
Address," (iv) "the different IP Address," and
(v) "wherein the system further comprises maintaining a
list of bit strings or character sets." The claim
constructions proposed by the parties are separately
Plaintiffs proposed construction
"said different IP Address" (claims 1 and
"an IP address supplied by the fifth processor
that is different from the IP address for the
information requested by the user or computer at
the point of origin"
claim 1 and dependent claim 15 each reference a "sixth
processor that analyzes a request submitted to said different
IP Address." '951 Patent at 21:32-33. Defendant
argues that these claims are indefinite because there is no
reasonably certain antecedent for the claim term "said
different IP address." In response, plaintiff contends
that despite the absence of an explicit antecedent basis, it
is nonetheless reasonably ascertainable to one skilled in the
that the claim term means "an IP address supplied by the
fifth processor that is different from the IP address for the
information requested by the user or computer at the point of
origin." For the reasons that follow, defendant is
correct that claims 1 and 15, and any dependent claims
thereto, are invalid for indefiniteness.
well-established that "a patent must be precise enough
to afford clear notice of what is claimed, thereby
'apprising] the public of what is still open to
them.'" Nautilus, Inc. v. Biosig Instruments,
Inc.,572 U.S. 898, 909 (2014) (quoting Markman v.
Westview Instruments, Inc.,517 U.S. 370, 373 (1996)).
Accordingly, the Supreme Court has held that "a patent
is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution
history, fail to inform, with ...