brief of plaintiff-appellant 01 communique … of plaintiff-appellant 01... · for the eastern...

Appeal Nos. 2013-1479, -1525

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

01 COMMUNIQUE LABORATORY, INC.

Plaintiff-Appellant,

v.

LOGMEIN, INC.

Defendant-Cross Appellant.

Appeals from the United States District Court for the Eastern District of Virginia in Case No. 1:10-cv-01007,

Judge Claude M. Hilton

BRIEF OF PLAINTIFF-APPELLANT 01 COMMUNIQUE LABORATORY, INC.

Thomas H. Shunk BAKER & HOSTETLER LLP PNC Building, Suite 3200 1900 E. 9th Street Cleveland, OH 44114

John P. Corrado Kenneth J. Sheehan A. Neal Seth Charles C. Carson BAKER & HOSTETLER LLP Washington Square, Suite 1100 1050 Connecticut Avenue, NW Washington, DC 20036

CERTIFICATE OF INTEREST

Counsel for appellant 01 Communique Laboratory, Inc., certifies the

following: 1. The full name of every party or amicus represented by me is: 01 Communique Laboratory, Inc. 2. The name of the real party in interest (if the party named in the caption is

not the real party in interest) represented by me is: 01 Communique Laboratory, Inc. 3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented by me are: None. 4. The names of all law firms and the partners or associates that appeared for

the party or amicus now represented by me in the district court or agency or are expected to appear in this court are:

Bukola T. Aina, Loura Alaverdi, Marc A. Antonetti, William C. Bergmann,

Charles C. Carson, John P. Corrado, William T. DeVinney, Annette K. Kwok, Jae Bok Lee, Katherine L. McKnight, Christina J. Moser, Elizabeth A. Scully, A. Neal Seth, Kenneth J. Sheehan, Thomas H. Shunk, Adam J. Smith, and Thomas D. Warren, all at the relevant time of Baker & Hostetler LLP

August 26, 2013

/s/ Thomas H. Shunk Thomas H. Shunk

ii

TABLE OF CONTENTS

CERTIFICATE OF INTEREST ................................................................................ i

TABLE OF AUTHORITIES ................................................................................... iv

STATEMENT OF RELATED CASES ..................................................................... 1

JURISDICTIONAL STATEMENT .......................................................................... 2

PRELIMINARY STATEMENT ............................................................................... 2

STATEMENT OF THE ISSUES............................................................................... 4

STATEMENT OF THE CASE .................................................................................. 5

STATEMENT OF THE FACTS ............................................................................... 6

I. Claim 24 of the `479 Patent ............................................................................. 6

II. LogMeIn’s Previous, Unsuccessful Summary Judgment Theory ................... 8

III. LogMeIn Presented No Viable Theory Of Non-Infringement On Remand .... 9

A. Dr. Grimshaw Testified That The LogMeIn System Infringed Claim 24, Refuting LogMeIn’s Three Non-Infringement Theories ................... 10

B. LogMeIn’s Witnesses Agreed With Dr. Grimshaw Regarding The Details Of The LogMeIn System ............................................................. 12

1. LogMeIn’s Witnesses Agreed With Dr. Grimshaw On The Technical Details ...................................................................................................... 12

2. LogMeIn’s Witnesses Found Non-Infringement By Using Improper Claim Term Definitions ........................................................................... 14

SUMMARY OF ARGUMENT ............................................................................... 18

ARGUMENT ........................................................................................................... 20

I. Standards Of Review ..................................................................................... 20

II. JMOL Of Infringement Should Have Been Granted Because All Of LogMeIn’s Evidence Was Directed To A Claim Construction Rejected By This Court ................................................................................................. 21

iii

A. In Communique I, This Court Construed The Term “Location Facility” And Rejected LogMeIn's Theory Of Non-Infringement .......... 22

B. On Remand, LogMeIn Argued A Theory Of Non-Infringement In Direct Conflict With Communique I ....................................................... 25

1. Ignoring This Court’s Ruling That The Location Facility Could Be Distributed, LogMeIn Argued That Its System Does Not Have “One Program” That “Itself” Performs All Four Functions ............................. 26

2. Ignoring This Court’s Ruling That “A” Means “One Or More,” LogMeIn Argued That Its System Does Not Have A Single Fixed “Static IP Address”................................................................................................... 32

3. Ignoring This Court’s Ruling Regarding The Ganger Declaration And Refusing To Apply The Ordinary Meaning, LogMeIn Argued That Its Servers Do Not “Create” A Communication Channel Or Session .......... 34

III. In The Alternative, The Court Should Grant A New Trial On Infringement ................................................................................................... 38

A. LogMeIn Knowingly Subverted This Court’s Opinion In Communique I ......................................................................................... 39

B. The District Court Erred In Refusing To Charge The Jury That “A” Means “One Or More”............................................................................. 41

C. LogMeIn Improperly Suggested To The Jury That Its Own Patents Supported A Finding Of Non-Infringement ............................................ 43

CONCLUSION ........................................................................................................ 46

CERTIFICATE OF SERVICE

CERTIFICATE OF COMPLIANCE

ADDENDUM

iv

TABLE OF AUTHORITIES

Cases

01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012) ..........................................................................1, 5 Amazon.com v. Barnesandnoble.com, 239 F.3d 1343, 1351 (Fed. Cir. 2001) .................................................................. 30 Blanchard v. Putnam,

75 U.S. 420 (1869) ............................................................................................... 45 Bristol Steel & Iron Works, Inc. v. Bethlehem Steel Corp.,

41 F.3d 182 (4th Cir. 1994).................................................................................. 38 Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,

576 F.3d 1348 (Fed. Cir. 2009) ............................................................................ 21 Catalina Mktg. Int'l v. Coolsavings.com, Inc.,

289 F.3d 801 (Fed. Cir. 2002) .............................................................................. 33 Cline v. Wal-Mart Stores, Inc.,

144 F.3d 294 (4th Cir. 1998)................................................................................ 39 Cordis Corp. v. Boston Scientific Corp.,

561 F.3d 1319 (Fed. Cir. 2009) ...................................................................... 40-41 Cytologix Corp. v. Ventana Med. Sys., Inc.,

424 F.3d 1168 (Fed. Cir. 2005) ...................................................................... 39-41 Ecolab Inc. v. Paraclipse, Inc.,

285 F.3d 1362 (Fed. Cir. 2002) ............................................................................ 42 E-Pass Techs., Inc. v. 3Com Corp.,

473 F.3d 1213 (Fed. Cir. 2007) ............................................................................ 40 Frank’s Casting Crew v. PMR Techs., Ltd.,

292 F.3d 1363 (Fed. Cir. 2002) ............................................................................ 21 Glaros v. H.H. Robertson Co.,

797 F.2d 1564 (Fed. Cir. 1986) ...................................................................... 45-46 Johnson v. MBNA Am. Bank, NA,

357 F.3d 426 (4th Cir. 2004)................................................................................ 20 Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc.,

554 F.3d 1010 (Fed. Cir. 2009) ............................................................................ 41

v

Laitram Corp. v. NEC Corp., 115 F.3d 947 (Fed. Cir. 1997) ........................................................................ 20-21

Sibbald v. United States, 37 U.S. 488 (1838) ............................................................................................... 21

Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008) ............................................................................ 39

United States v. Perry, 335 F.3d 316 (4th Cir. 2003)................................................................................ 20

Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870 (Fed. Cir. 1991) .............................................................................. 46

Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325 (Fed. Cir. 2010) ............................................................................ 20

Statutes

28 U.S.C. § 1295(a) ................................................................................................... 2 28 U.S.C. § 1338(a) ................................................................................................... 2 Rules

Fed. R. Evid. 403 ............................................................................................... 45-46 Fed. R. Civ. P. 50(a)(1) ............................................................................................ 21

1

STATEMENT OF RELATED CASES

A previous appeal in this action resulted in the July 31, 2012, Opinion of this

Court, 01 Communique Lab., Inc. v. LogMeIn, Inc., case no. 2011-1402, 687 F.3d

1292 (Fed. Cir. 2012) (Joint Appendix pages A5101-15, bound with this Brief)

(hereinafter “Communique I”). In Communique I, this Court construed the claim

term “location facility,” vacated the district court’s grant of summary judgment of

no infringement, and remanded the matter.

01 Communique Laboratory, Inc., v. Citrix Systems, Inc., and Citrix Online,

LLC, Case No. 1:06-CV-0253 (Lioi, J.), is pending in the U.S. District Court for

the Northern District of Ohio. In that action, Plaintiff-Appellant herein, 01

Communique Laboratory, Inc. (“01 Communique”), asserts infringement of the

same patent that is at issue in this action, U.S. Patent No. 6,928,479 (“the `479

Patent”), against an unrelated defendant. The Ohio case is stayed pending an inter-

partes re-examination of the `479 Patent before the U.S. PTO (Serial No.

95/001,018) filed by the defendants in that litigation. That reexamination

proceeding is awaiting a final decision by the Patent Trial and Appeal Board of an

appeal by Citrix of the examiner’s confirmation of the claims of the `479 patent.

01 Communique expresses no view as to whether the Ohio case will be affected by

this Court’s decision in this appeal.

2

JURISDICTIONAL STATEMENT

The district court had subject matter jurisdiction. 28 U.S.C. § 1338(a).

After a jury trial on the issues of infringement and validity, the district court

entered judgment on April 2, 2013. (A1301). 01 Communique filed a motion for

judgment as a matter of law (“JMOL”), for new trial, and for entry of judgment

pursuant to Fed. R. Civ. P. 52 on April 23, 2013 (A25201-41), which the district

court denied in a Memorandum Opinion of June 25, 2013 (A1201-06), and

accompanying Order (A1101-2). 01 Communique timely filed a notice of appeal

on June 26, 2013. (A1065, entry 524). This Court has jurisdiction. 28 U.S.C.

§ 1295(a). Defendant-Cross Appellant LogMeIn, Inc. (“LogMeIn”) filed a cross-

appeal, Case No. 2013-1525, which has been consolidated with this appeal.

PRELIMINARY STATEMENT

The `479 Patent claims a system, method, and computer program that

enables one computer to access another computer remotely via the Internet.

Plaintiff-Appellant 01 Communique and Defendant-Cross Appellant LogMeIn

operate competing systems that permit their users to safely, economically, and

easily access a home personal computer from a remote computer. Claim 24 of the

`479 Patent is at issue in this case.

In a previous proceeding, the district court had granted summary judgment

of no infringement to LogMeIn. When that summary judgment was appealed in

3

Communique I, this Court vacated and remanded, providing an explicit definition

for the claim term “location facility.” This Court’s mandated definition of

“location facility” permits the location facility software to be subdivided into

several programs, and to be distributed over several computers. This Court also

held that the Declaration of Dr. Gregory Ganger (submitted during reexamination

of the patent; the “Ganger Declaration”) did not limit the scope of the `479 Patent’s

claims.

On remand, the technical details of the LogMeIn servers were not in dispute,

and LogMeIn had no viable, non-infringement theory given this Court’s

Communique I Opinion. Accordingly, LogMeIn ignored this Court’s mandated

definitions, and argued the same theory that this Court had repudiated in

Communique I.

LogMeIn’s technical expert testified that the LogMeIn servers were not a

“location facility” because the accused software consisted of “different programs”

rather than a single program that performed the requisite functions. (A13796 ln 23

– A13797 ln 3). He testified that the LogMeIn Servers did not have a “static IP

address” because “the patent requires a [meaning “only one”] fixed static IP

address. It says so.” (A13807 lns 15-16). And he testified that the LogMeIn

Servers could not be said to “create” the required communication channels and

sessions because of his own personal interpretation of “a representation made by

4

Dr. Ganger to the Patent Office in order to get the patent through and issued” – the

exact same representation this Court had said did not limit the claims. (A13803 ln

22 – A13804 ln 3).

All of the evidence introduced by LogMeIn to support its claim of no

infringement was directed to the old, discredited theory. No testimony or other

evidence consistent with this Court’s mandated claim construction supported a

finding of no infringement. It was error, therefore, to give this case to the jury

rather than grant JMOL.

STATEMENT OF THE ISSUES

1. Should the district court have granted JMOL of infringement, given that

there was no factual dispute over the functioning of the accused system and all the

evidence consistent with this Court’s previously-mandated claim construction of

“location facility” supported a finding of infringement?

2. Alternatively, should the district court have granted a new trial on the

issue of infringement, given that (1) LogMeIn presented fact and expert witness

testimony on claim term meaning contrary to the construction of those terms

mandated by this Court; (2) the district court refused to charge the jury with a

construction of a material claim term in dispute; and (3) LogMeIn improperly

asserted that it could not infringe because it had its own patents covering the

accused system?

5

STATEMENT OF THE CASE

On September 8, 2010, 01 Communique filed the present case in the Eastern

District of Virginia against LogMeIn and Dell. 01 Communique and Dell settled,

but litigation with LogMeIn continued.

On January 31, 2011, LogMeIn filed a motion for claim construction and

summary judgment. The district court granted LogMeIn’s motion from the bench

and, on May 4, 2011, issued its written Order and Memorandum Opinion. 01

Communique appealed that Judgment, resulting in the appeal referred to herein as

Communique I. This Court vacated and remanded the summary judgment. 01

Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012).

On remand, the district court did not conduct a Markman hearing to establish

the meaning of any claim terms prior to trial. The matter went to jury trial from

March 18 to 26, 2013.

01 Communique requested JMOL at the close of LogMeIn’s case, but the

district court denied that request. (A11901). The district court read this Court’s

definition of “location facility” from Communique I to the jury (A14372 lns 6-15),

and instructed the jury to give all other words their ordinary meaning (Id. lns 16-

17). 01 Communique asked for a charge to the jury that “a” means “one or more,”

but the district court refused to give that charge. (A14206 lns 4-20).

6

The jury returned a verdict of no infringement, patent validity, and no

inequitable conduct. (A1701-2). The district court entered judgment in

accordance with the jury verdict. (A1301). 01 Communique filed a motion for

JMOL and new trial on April 23, 2013, which the district court denied on June 26,

2013. (A1101).

STATEMENT OF THE FACTS

I. Claim 24 of the `479 Patent

In 1997 as the Internet was expanding, users began to install firewalls to

limit outside access to their computers, users increasingly were supplied dynamic

(changing) IP addresses by their service providers, and users increasingly utilized

private routers to permit more than one computer to share one Internet address.

(A12465 ln 2 – A12471 ln 4). These three “roadblocks” to remote access made it

difficult for a non-technical, average user to access his or her own computer while

physically distant from the computer. (A12731 lns 3 – 20).

The `479 Patent’s invention overcame all three roadblocks, allowing one

computer to access another over the Internet in a safe and cost-effective way even

when the computer to be accessed was protected by a firewall, and had a publicly

un-addressable, dynamic IP address. (A12473 ln 20 – A12475 ln 18). The

invention utilizes a “locator server” on which software (called a “location facility”)

7

runs to keep track of the host, and, when requested by the remote, to allow the

remote to access the host. (A12473 ln 20 – A12474 ln 18).

Claim 1 was the representative claim when the district court granted

summary judgment, resulting in the first appeal to this Court in Communique I. At

trial on remand, 01 Communique limited its presentation of evidence to Claim 24,

which contains the same “location facility” limitation as Claim 1. The claim is set

out below, with the relevant claim language underlined:

24. A computer program product for use on a server computer linked to the Internet and having a static IP address, for providing access to a personal computer from a remote computer, the personal computer being linked to the Internet, its location on the Internet being defined by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the computer program product comprising: (a) a computer usable medium; (b) computer readable program code recorded or storable in the computer useable medium, the computer readable program code defining a server computer program on the server computer wherein: (i) the server computer program is operable to enable a connection between the remote computer and the server computer; and (ii) the server computer program includes a location facility and is responsive to a request from the remote computer to communicate with the personal computer to act as an intermediary between the personal computer and the remote computer by creating one or more communication sessions there between, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication with the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel between the remote computer and the personal computer, the location facility being operable to create such communication channel whether the personal computer is linked to the Internet directly (with a

8

publicly addressable) dynamic IP address or indirectly via an Internet gateway/proxy (with a publicly un-addressable dynamic LAN IP address).

(A1820). Removing all but the key claim language, the disputed phrasing

becomes:

24. A computer program product …comprising…a server computer program…wherein…the server computer program includes a location facility and is responsive to a request from the remote computer to communicate with the personal computer to act as an intermediary between the personal computer and the remote computer by creating one or more communication sessions there between, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication with the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel between the remote computer and the personal computer….

II. LogMeIn’s Previous, Unsuccessful Summary Judgment Theory

When LogMeIn sought summary judgment prior to the first appeal of this

case, its non-infringement theory had been that “the location facility must be

contained on a single physical computer, relying primarily upon a perceived

disclaimer in the prosecution history of a construction that would encompass

distribution of the location facility among multiple computers.” Communique I at

A5105.

In Communique I, this Court rejected that alleged disclaimer based on the

Ganger Declaration and the resulting limited construction of “location facility.”

This Court held that, “[r]ead together, the disclosures that facilities may be

subdivided and that the locator server computer may comprise multiple computers

9

support a construction that the location facility may be distributed among multiple

physical computers.” Communique I at A5109. The claim construction of

“location facility” mandated by this Court, is set out in full below:

Software on a locator server computer that: (1) receives a request for communication with the personal computer from the remote computer; (2) determines the then current location of the personal computer; (3) creates a communication channel between the remote computer and the personal computer; and (4) creates one or more communication sessions between the remote computer and the personal computer. The locator server computer may comprise one or more computers, and the location facility may be distributed among one or more locator server computers.

Communique I at A5113-14.

As can be seen, the construction requires that the location facility software

performs four functions, but also that the software may be subdivided into

programs distributed among several hardware computers. This Court also found

that LogMeIn’s reliance on a reference in the Ganger Declaration to the location

facility “itself” creating communication channels and sessions did not limit the

claim. Id. at A5113, n.4.

III. LogMeIn Presented No Viable Theory Of Non-Infringement On Remand On remand, ignoring this Court’s mandate, LogMeIn argued that it did not

infringe because its servers:

1. Do not each contain “a” single software program that performs all

functions required of the “location facility,”

10

2. Do not have “a” single static IP address used by all of the servers, and

3. Do not “create” the communication channels or sessions by

themselves.

(A13784 ln 25 to A13785 ln 9). LogMeIn did not contest any other elements of

Claim 24 at trial.

There was no dispute on remand about the functioning of the accused

LogMeIn system. All three of LogMeIn’s arguments were infected with its refusal

to implement this Court’s mandate that the location facility can be more than one

program running on more than one computer, and that the Ganger Declaration did

not narrow ordinary claim term meaning. When the testimony based on a claim

construction contrary to this Court’s Communique I Opinion is disregarded, there

is no evidence to support a finding of non-infringement.

A. Dr. Grimshaw Testified That The LogMeIn System Infringed Claim 24, Refuting LogMeIn’s Three Non-Infringement Theories

01 Communique’s technical expert regarding infringement, Dr. Grimshaw

analyzed the LogMeIn accused system by reviewing technical documentation, the

LogMeIn source code, and his own testing of the system. (A12774 ln 21 – A12777

ln 9). He testified that the “first step” in the LogMeIn system is “where the host

computer is establishing a connection to a [LogMeIn] gateway server.” (A12806

lines 18-21). After connecting to the gateway, the host:

11

maintains this connection and sends a series of pings. When the connection is made, the servers store information into the database that says which gateway server has it, the ports, and information like that.

(A12806 ln 23 – A12807 ln 1).

Thereafter, a “request to communicate with a particular PC is initiated from

the remote computer” (A12807 lns 7-8) (first required function), and the LogMeIn

servers locate the personal computer by determining the particular gateway server

that it is in communication with and validating certain “ticket” information (Id. lns

14-24) (second required function). As part of this process, the remote computer is

redirected to the particular LogMeIn gateway server that has a standing connection

with the desired host personal computer. (Id. lns 19-24).

Finally, after locating the host personal computer, validating the request

from the remote computer, and redirecting the remote computer to the appropriate

gateway server, the LogMeIn servers:

create a set of data structures on the – in the gateway server that creates this communication channel between – well, creates a communication channel that allows information to flow from the host computer to the remote computer and back.

(A12808 lns 5-9) (third and fourth required functions). Thus, there is no

communication channel or communication sessions between the host personal

computer and remote computer until the gateway creates the data structures that

12

connect the endpoint of the host-to-gateway connection with the endpoint of the

separate remote-to-gateway connection.

Dr. Grimshaw’s testimony confirmed that (1) each of the four functions of

the location facility are performed by the LogMeIn system, using a combination of

the several types of server computers, (2) the LogMeIn system relies on a static IP

address to perform these functions, and (3) the LogMeIn servers “create” the

communication channel and session that connects the remote computer to the host

computer. Applying this Court’s claim construction to Claim 24, he found all

elements of the claim present in the LogMeIn system. (A12769 ln 22 – A12770 ln

2; A12799 ln 3 – A12813 ln 9; A12904 ln 9 – A12908 ln 21).

B. LogMeIn’s Witnesses Agreed With Dr. Grimshaw Regarding The Details Of The LogMeIn System

LogMeIn’s witnesses did not contradict any of Dr. Grimshaw’s testimony

regarding the operation of the LogMeIn system. They did not contradict any of his

testimony about the technical details pertaining to the three identified LogMeIn

non-infringement theories. Instead, they supported their conclusions of non-

infringement by using claim term meanings at odds with this Court’s mandate.

1. LogMeIn’s Witnesses Agreed With Dr. Grimshaw On The Technical Details

Marton Anka, LogMeIn’s Chief Technology Officer agreed that the host

computer first “seeks out the nearest datacenter that we operate and connects to

13

one of the gateway servers” thereby establishing a “standing connection” with the

LogMeIn servers and “[a]t this point the computer is ready for access.” (A13596

ln 25 – A13597 ln 24). He agreed that after the LogMeIn servers “receive a

request from the remote computer to communicate with the host computer”

(A13600 lns 16-19) (first required function of the “location facility”), the LogMeIn

servers determine the “name of the gateway server that the host computer is

connected to” (A13598 ln 21 – A13599 ln 1), obtain the validating “ticket”

(A13599 lns 1-3), and redirect the remote to “connect[] directly to the [appropriate]

gateway server” (Id. lines 8-14) (second required function).

Mr. Anka confirmed that the LogMeIn servers “create” the communication

channel and session, testifying that the connection from the host computer to the

LogMeIn datacenter is “used by a component in the datacenter” to exchange data

with that computer. (A12739 ln 7 – A12740 ln 11) (third and fourth required

functions). Mr. Anka also conceded that the LogMeIn servers utilized a static IP

address on the Internet. (A12766 lns 8-20) (also required by the claim).

Dr. Bhattacharjee, the only other LogMeIn witness to address the technical

details of the LogMeIn system, testified that he was present for all of Mr. Anka’s

testimony and that, based on his review of the source code and other LogMeIn

technical documents, he agreed with Mr. Anka’s “description of the system and its

architecture.” (A13783 lns 7-10).

14

Dr. Bhattacharjee confirmed that communication channels and sessions were

created when the LogMeIn system was used, admitting that the LogMeIn gateway

server “facilitate[s] creating some of these channels or sessions.” (A13796 lns 15-

17). LogMeIn did not contest that communication channels and sessions were

“created;” it simply argued that the LogMeIn server computers did not do the

“creating” by themselves.

2. LogMeIn’s Witnesses Found Non-Infringement By Using Improper Claim Term Definitions

LogMeIn’s witnesses argued for non-infringement not by presenting

alternative facts, but rather by utilizing definitions of words that were either

expressly contrary to this Court’s Communique I Opinion, or were contrary to the

ordinary meaning of the term.

“All Four Functions” Defense. Dr. Bhattacharjee denied that the LogMeIn

system had a “location facility” because its four functions were performed by

different programs on different computers. He changed the focus from the location

facility as “software” to the location facility as one “software program,” testifying

as follows:

Q. And then the claim talks about a location facility. What is that?

A. Well, the location facility is a software program that is running on the server computer.

(A13780 ln 24 – A13781 ln 2). Then he used the new term in his analysis:

15

Q. And based on your examination of the LogMeIn system, does it have a location facility that meets this definition?

A. No, it does not.

Q. Why not?

A. Because it does not have a software program that does all of these things.

(A13786 lns 6-11).

Q. In your view is it appropriate to look at these three [LogMeIn] software programs together and say that they are the location facility?

A. No, it is not.

Q. Why not?

A. Well, because they’re three different programs.…

(A13796 ln 23 – A13797 ln 3). Then he relied on the Ganger Declaration for his

analysis:

Q. Now, in forming your opinion regarding the lack of a location facility, did you consider any statements made by 01’s experts concerning the `479 Patent? …

A. I considered statements by Dr. Ganger made to the Patent Office which said that the location facility had to itself do certain functions.…

(A13798 lns 3-10).

LogMeIn’s counsel then had Dr. Bhattacharjee read the Ganger Declaration

statement to the jury, including the “itself” phrase that had been at the heart of the

Communique I appeal. (A13798 ln 3 – A13799 ln 14). But this Court had said that

the location facility could be more than one program on more than one computer,

16

found no claim limitation from the Ganger Declaration, and found the trial court’s

prior use of the word “itself” in connection with “location facility” to be

“potentially misleading.” Communique I at A5113, n. 4.

“One Static IP Address” Defense. Although Dr. Bhattacharjee (and Mr.

Anka) admitted that the LogMeIn system was connected to the Internet through the

use of static IP addresses, Dr. Bhattacharjee claimed that the use of more than one

static IP address defeated infringement because “the patent requires a fixed static

IP address. It says so.” (A13807 lns 15-16) (emphasis supplied). This Court had

held in Communique I, however, that, consistent with well-established precedent,

“a” meant “one or more” in the `479 Patent. Communique I at A5108.

“Create” Defense. Dr. Bhattacharjee denied that the LogMeIn servers did

the “creating” by improperly referring again to the Ganger Declaration:

Q. And when the host computer or the remote computer is creating the channels, is it appropriate to say that the communication channel or the communication session was created by the LogMeIn servers?

A. Absolutely not. This is, again, a representation made by Dr. Ganger to the Patent Office in order to get the patent through and issued.

(A13803 ln 22 – A13804 ln 3). Dr. Bhattacharjee admitted that it was Dr.

Ganger’s statement that the location facility “itself” must do the creating that led

him to this analysis. (A13799 lines 7-14). That was the very same language that

this Court removed from the district court’s previous construction of the phrase

“location facility” in Communique I. (A5113, n. 4).

17

LogMeIn’s use of improper claim term definitions led Dr. Bhattacharjee and

Mr. Anka to conclusions that were on their face absurd. For example, Mr. Anka

was led to testify that under Dr. Bhattacharjee’s theory of what it means to “create”

a communication channel and session, LogMeIn’s own system did not operate:

Q. Do the LogMeIn servers together create a connection between the host computer and the client computer?

A. It’s impossible to create a connection to a computer that’s behind a firewall or – or, you know, has a dynamic IP address or is otherwise, you know, not itself visible on the Internet.

(A13601 lns 6-11). It is, however, clearly possible for LogMeIn servers to create a

connection with such a computer, as Mr. Anka himself admitted elsewhere.

(A12732 ln 5 – A12733 ln 7) (“Q. And did your LogMeIn Pro product in 2004

permit access of a host computer having a dynamic IP address? A. Yeah.

Absolutely, absolutely.”); (see also A19206-07) (“The benefit of using the

gateway, instead of establishing a direct link between the client and the host, is that

either the client or host (or both) can be firewalled. The LogMeIn gateway ensures

that users do not need to configure firewalls.”).

Applying his definition of “create,” Dr. Bhattacharjee reached the same

absurd conclusion that LogMeIn’s own system does not “create” a communication

channel:

Q. And even if you look at these servers or the software together as a location facility, as Dr. Grimshaw does, in that case did the LogMeIn servers create a communication channel or a communication session?

18

A. No, it’s -- no, they don’t. It’s physically impossible for it to do so.

(A13804 lns 4-9). Yet, creating that communication channel and session, which

connects the remote computer to the host computer, thereby allowing remote

access, is the entire point of the product. (A16106) (“We believe our solutions are

used to connect more Internet-enabled devices worldwide than any other

connectivity service.”)

LogMeIn’s non-infringement theories were not based on a dispute over fact

or technical detail. They arose from a claim interpretation issue: LogMeIn’s

witnesses insisted that one, single program perform all four functions, that every

LogMeIn server have one static IP address, and that the location facility must

create the communication channels by itself. These, however, were issues that this

Court had resolved against LogMeIn in Communique I.

SUMMARY OF ARGUMENT

In 01 Communique’s first appeal from a grant of summary judgment of no

infringement, Communique I, this Court provided an explicit definition for the

claim term “location facility” that permits the location facility software to be

subdivided into several programs, and to be distributed over several computers. In

that Opinion, this Court also held that the Ganger Declaration (submitted during

reexamination of the patent) did not limit the scope of the `479 Patent’s claims by

using the phrase “the location facility itself.”

19

On remand, the district court adopted this Court’s definition of “location

facility” and ruled at the jury charging conference that “the rest of the words in

claim 24 [should have] their ordinary meaning to a person skilled in the art.”

(A14372 lns 16-17). Given these rulings, 01 Communique’s motion for JMOL

regarding infringement at the close of the evidence should have been granted

because the rulings left LogMeIn with no viable non-infringement theory

supported by evidence.

There was no disagreement among the trial witnesses regarding the details of

the functioning of the accused LogMeIn system. LogMeIn presented no evidence

of non-infringement at trial that was consistent with this Court’s mandated claim

construction. Instead, LogMeIn repeated the same non-infringement argument this

Court had rejected in Communique I. Despite this Court’s ruling that the “location

facility” could be “distributed” among many computers, LogMeIn argued on

remand that it could be only one program. Despite this Court’s ruling that there

was no prosecution history estoppel resulting from the Ganger Declaration – and

specifically from his use of the phrase “itself” – LogMeIn argued on remand that

the Declaration did limit the claim, referring explicitly to that phrase. Despite the

district court’s ruling that all words of the claim other than “location facility” were

to have their ordinary meaning, LogMeIn’s expert Dr. Bhattacharjee defined

20

“software” while testifying in a way that he admitted was more narrow than the

ordinary meaning.

The district court should have granted judgment as a matter of law on the

issue of infringement. Alternatively, 01 Communique should have been given a

new trial on infringement.

ARGUMENT

I. Standards Of Review

As to the import and effect of this Court’s decision in Communique I, “[t]he

interpretation by an appellate court of its own mandate is properly considered a

question of law, reviewable de novo.” Laitram Corp. v. NEC Corp., 115 F.3d 947,

950 (Fed. Cir. 1997).

This Court reviews the denial of a motion for JMOL and for new trial under

the law of the regional circuit. Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602

F.3d 1325, 1331 (Fed. Cir. 2010). The Fourth Circuit reviews rulings on motions

for JMOL de novo. Johnson v. MBNA Am. Bank, NA, 357 F.3d 426, 431 (4th Cir.

2004). The Fourth Circuit reviews rulings on motions for a new trial for abuse of

discretion. United States v. Perry, 335 F.3d 316, 320 (4th Cir. 2003).

21

II. JMOL Of Infringement Should Have Been Granted Because All Of LogMeIn’s Evidence Was Directed To A Claim Construction Rejected By This Court

JMOL is appropriate when “there is no legally sufficient evidentiary basis

for a reasonable jury to find for that party on that issue.” Fed. R. Civ. P. 50(a)(1).

In this case, there was no factual dispute regarding the functioning of the accused

system, and there was no evidence presented to support a finding of non-

infringement that was consistent with the claim construction mandated by this

Court in Communique I.

Once this Court has spoken on claim construction, it is error for a district

court to permit testimony and argument inconsistent with that construction, and

error to refuse to grant JMOL when all the evidence supports infringement under

that construction. “The ‘mandate rule’ requires a district court to ‘follow an

appellate decree as the law of the case.’” Cardiac Pacemakers, Inc. v. St. Jude

Med., Inc., 576 F.3d 1348, 1356 (Fed. Cir. 2009), citing Sibbald v. United States,

37 U.S. 488, 492 (1838); accord Laitram, 115 F.3d at 951 (mandate rule applies to

issues expressly decided by the reviewing court and those decided by necessary

implication); see Frank’s Casting Crew v. PMR Techs., Ltd., 292 F.3d 1363, 1375

(Fed. Cir. 2002) (rejecting an expert’s conclusion that a claim limitation was not

satisfied because it was based on an incorrect claim construction).

22

Consequently, this Court should reverse the judgment of the district court

and enter judgment of infringement.

A. In Communique I, This Court Construed The Term “Location Facility” And Rejected LogMeIn's Theory Of Non-Infringement

01 Communique’s `479 Patent technology enables one computer to access

another computer remotely via the Internet. This Court described that technology

in its Communique I Opinion as “use of a ‘locator server computer’ as an

intermediary between a ‘remote computer’ (the computer seeking access) and a

‘personal computer’ (the computer to be accessed).…The locator server computer

‘includes’ software, referred to in the patent as a ‘location facility,’ that inter alia

locates the personal computer.” Communique I at A5102-03.

01 Communique asserts that LogMeIn infringes Claim 24 of the `479 Patent

by operating a remote computer-access service known as “www.logmein.com,”

and other related services. 01 Communique operates competing services. Prior to

Communique I, the district court granted summary judgment. This Court described

the basis of the district court’s decision in this way:

The district court concluded that the location facility must be contained on a single physical computer, relying primarily upon a perceived disclaimer in the prosecution history of a construction that would encompass distribution of the location facility among multiple computers. Because it determined that “[t]he LogMeIn system does not contain any component that itself performs all the four functions required of the location facility under the Court’s construction of the

23

term,” the district court held as a matter of law that LogMeIn does not infringe the `479 Patent.

Communique I at A5105. 01 Communique appealed, and this Court redefined

“location facility,” concluding that prosecution history estoppel did not apply,

vacated the summary judgment, and remanded for further proceedings.

In its Communique I Opinion this Court defined “the issue upon which this

appeal turns” as “whether the location facility must be contained entirely on a

single locator server computer as held by the district court and asserted by

LogMeIn, or whether it may be distributed among multiple locator server

computers as asserted by 01 Communique.” Communique I at A5107. This

Court’s answer was that

[r]ead together, the disclosures that facilities [software] may be subdivided and that the locator server computer may comprise multiple computers support a construction that the location facility may be distributed among multiple physical computers.

Communique I at 5109.

In Communique I, this Court rejected LogMeIn’s argument that the words

“a,” “its,” “the,” “said,” and others in the claims of the `479 Patent limited the

scope of “location facility”:

LogMeIn asserts that “because ‘its’ and ‘the’ are singular terms, the claimed ‘location facility’ must be a software component that is included within a single locator server computer.” LogMeIn’s argument is at odds with our well established precedent.

24

Id. at A5107-08. Chief Judge Rader emphasized the inappropriateness of

LogMeIn’s argument during the oral argument in Communique I:

Mr. Stoner: [. . .] The claim language itself requires a singular component. That was disclaimed. . . .

Judge Rader: Where?

Mr. Stoner: It requires that the location facility – wherever it is – performs four functions. And in prosecution in the reexamination they gave meat to that language by saying. . . .

Judge Rader: Where does the claim language say “singular?”

Mr. Stoner: It says “a location facility.”

Judge Rader: Which means “one or more.” Period. That is the rule. “A” means “one or more.” So read that, “in one or more location facilities” – now continue.

Oral Argument Audio Transcript, http://oralarguments.cafc.uscourts.gov/

default.aspx?fl=2011-1403.mp3, beginning at 22:05. Accordingly, this Court held

that “the location facility may be distributed among one or more locator server

computers.” Communique I at A5114.

This Court made three substantive changes to the district court’s initial

construction of “location facility:” First, this Court made explicit that the

“location facility” is “software” in its broadest and ordinary sense. Id. at A5106.

Second, this Court deleted the term “itself” from the district court’s

definition of “location facility,” warning that “[w]e believe that the word [‘itself’]

is unnecessary to construction of the term ‘location facility’ and that use of a

25

singular pronoun might suggest misleadingly that all the functions of the location

facility must be performed on a single computer, despite our explicit construction

to the contrary.” Id. at A5113, n.4.

Third, this Court added a clarifying sentence that established two points—

that the locator server computer could comprise multiple computers and that the

location facility could be distributed among those multiple computers:

The locator server computer may comprise one or more computers, and the location facility may be distributed among one or more locator server computers.

Id. at A5114.

This Court expressly rejected LogMeIn’s assertion that “the claimed

‘location facility’ must be a software component that is included within a single

locator server computer.” Id. at A5107-08. Communique I also laid to rest

LogMeIn’s argument that statements made during reexamination by 01

Communique’s expert, Dr. Gregory Ganger, limited the scope of the patent’s

claims: “Nothing in the record suggests a disclaimer based upon Dr. Ganger’s

statements.” Id. at A5111.

B. On Remand, LogMeIn Argued A Theory Of Non-Infringement In Direct Conflict With Communique I

On remand, LogMeIn had three non-infringement arguments. LogMeIn

argued that it did not infringe because its servers:

26

1. Do not each contain “a” single software program that performs all

functions required of the “location facility,”

2. Do not have “a” single static IP address used by all of the servers, and

3. Do not “create” the communication channels or sessions by

themselves.

(A13784 ln 25 – A13785 ln 9). LogMeIn did not contest any other elements of

Claim 24 at trial.

Based on the undisputed technical facts at trial, 01 Communique’s technical

expert, Dr. Grimshaw, testified in detail that all the elements of Claim 24 were

present in the accused services. (A12799 ln 3 – A12813 ln 9; A12904 ln 9 –

A12908 ln 21). The facts and technical aspects of Dr. Grimshaw’s testimony were

not rebutted by LogMeIn. (See the Statement Of The Facts section, supra.).

1. Ignoring This Court’s Ruling That The Location Facility Could Be Distributed, LogMeIn Argued That Its System Does Not Have “One Program” That “Itself” Performs All Four Functions

Claim 24 requires that “the server computer program includes a location

facility,” and this Court’s Communique I Opinion required that the location facility

perform four functions – viz., receive a request, locate the server, create the

channel, and create the session. Communique I at A5113-14. LogMeIn’s first

argument for non-infringement was that the various programs on the LogMeIn

27

servers that Dr. Grimshaw identified as performing those four functions were

“different programs” and thus could not be a single “location facility.” (A13796

ln 23 – A13797 ln 23).

This Court, however, had already ruled that the “location facility” could

consist of different programs. In Communique I, this Court held that, as to

“location facility,” “[t]he locator server computer may comprise one or more

computers, and the location facility [i.e., software] may be distributed among one

or more locator server computers.” Communique I at A5114 (emphasis added).

Dr. Grimshaw proved that the various LogMeIn servers work together to

perform each of the required functions. He and Dr. Gregory Ganger, 01

Communique’s validity technical expert, explained that a person of ordinary skill

in the art would understand that a complex program like a location facility would

be subdivided into various programs and distributed among several computers, in

keeping with this Court’s explicit construction of the phrase. (A12769 ln 22 –

A12770 ln 2; A12796 ln 23 – A12797 ln 3; A14009 lns 15-24). Adopting the

ordinary meanings of the words “software” and “program,” the only evidence

before the jury is that the accused LogMeIn programs met this Court’s definition of

a “location facility.”

LogMeIn’s technical expert, Dr. Bhattacharjee, however, used a restricted,

non-ordinary meaning of the term “software” to argue that LogMeIn’s servers were

28

not a “location facility.” He argued that no single program on the servers

performed all four functions required by this Court’s definition of a “location

facility.” (A13796 ln 23 – A13797 ln 3). His argument violated both this Court’s

instruction that “[r]ead together, the disclosures that facilities may be subdivided

and that the locator server computer may comprise multiple computers support a

construction that the location facility may be distributed among multiple physical

computers,” Communique I, at A5109, and further that “[n]othing in the record

suggests a disclaimer based upon Dr. Ganger’s statements.” Id. at A5111.

Dr. Bhattacharjee began by changing the focus from the location facility as

“software” to the location facility as one “software program”:

Q. And then the claim talks about a location facility. What is that?

A. Well, the location facility is a software program that is running on the server computer.

(A13780 ln 24 – A13781 ln 2).

Q. And based on your examination of the LogMeIn system, does it have a location facility that meets this definition?

A. No, it does not.

Q. Why not?

A. Because it does not have a software program that does all of these things.

(A13786 lns 6-11).

Q. In your view is it appropriate to look at these three [LogMeIn] software programs together and say that they are the location facility?

29

A. No, it is not.

Q. Why not?

A. Well, because they’re three different programs.…

(A13796 ln 23 – A13797 ln 3).

Q. Now, in forming your opinion regarding the lack of a location facility, did you consider any statements made by 01’s experts concerning the `479 Patent? …

A. I considered statements by Dr. Ganger made to the Patent Office which said that the location facility had to itself do certain functions.…

(A13798 lns 3-10). LogMeIn’s counsel then had Dr. Bhattacharjee read the

Ganger Declaration statement to the jury, including the “itself” phrase that had

been at the heart of the Communique I appeal. (A13798 ln 3 – A13799 ln 14).

The violation of this Court’s Order was blatant: Dr. Bhattacharjee read to

the jury the very sentences upon which LogMeIn’s prior discredited prosecution

history estoppel theory was based, including the use of the phrase “the location

facility itself.” Dr. Bhattacharjee then used those sentences to justify a definition

of the word “software” that he admitted was contrary to its ordinary meaning and

that—when substituted back into this Court’s claim construction of “location

facility”—turned the meaning of that term on its head, reaching a result completely

opposite to this Court’s construction in Communique I. Employing this tactic,

LogMeIn argued to the jury the very same non-infringement position that had

30

previously been rejected by this Court—namely, that its remote access services do

not infringe because they are distributed over multiple servers.

Dr. Bhattacharjee ultimately acknowledged on cross-examination that he had

substituted the word “program” for “software” in this Court’s definition. (A13959

ln 25 – A13960 ln 2). And he further admitted that this resulted in an unjustifiably

narrow definition of “software” that was not consistent with its ordinary meaning.

(A13960 lns 3-8). Indeed, when later analyzing validity, Dr. Bhattacharjee

switched to the broader ordinary meaning of “program” and “software” consistent

with the definition used by Drs. Ganger and Grimshaw. (A14009 ln 21 – A14010

ln 5). Dr. Bhattacharjee simply re-wrote this Court’s definition to suit the purposes

of his client, LogMeIn, improperly treating this Court’s claim construction as a

“nose of wax” to be twisted one way to avoid infringement and another to read on

the prior art. Amazon.com v. Barnesandnoble.com, 239 F.3d 1343, 1351 (Fed. Cir.

2001).

When the district court refused to grant JMOL to 01 Communique

(A11901), 01 Communique asked the court to charge the jury that “a” means “one

or more” so that it could argue to the jury that these words from Claim 24 did not

restrict the claim in the way argued by LogMeIn. The district court refused, even

though this Court had expressly sanctioned that claim interpretation in

31

Communique I, apparently believing that this Court had directed the comments

about the meaning of “a” to the District Judge. The District Judge commented:

THE COURT: Well, I want you to tell me if you think I’m wrong, but I believe that – that putting a definition of “a” in there is simply telling me to be more articulate – MS. ALAVERDI: But it’s our position – THE COURT: – learning the English language or something. I mean, it’s not for the jury to consider here because it isn’t a definition of the claim.

(A14207 lns 7-13). In fact, however, “a” was an important claim term.

Dr. Bhattacharjee’s twisted reading of Claim 24 underscores the concern this

Court expressed in Communique I that any reference to the “locator server itself”

phrase in the Ganger Declaration “might suggest misleadingly that all the functions

of the location facility must be performed on a single computer, despite our

explicit construction to the contrary.” Communique I at A5113, n.4. LogMeIn

apparently took this Court’s advice to heart and emphasized the Ganger

Declaration language in just that misleading way.

LogMeIn’s improper argument that its accused services are distributed over

separate software programs is inconsistent with Communique I and cannot support

a verdict of non-infringement.

32

2. Ignoring This Court’s Ruling That “A” Means “One Or More,” LogMeIn Argued That Its System Does Not Have A Single Fixed “Static IP Address”

Claim 24’s preamble describes the invention as containing “a server

computer linked to the Internet and having a static IP address.” LogMeIn’s second

argument for non-infringement was that the LogMeIn system does not have “a”

(meaning “one”) static IP address.

Dr. Grimshaw testified that the LogMeIn system was “linked to the Internet”

with “static IP addresses,” identifying “logmein.com” and “secure.logmein.com”

as both having IP addresses that “haven’t changed for some time.” (A12904 ln 17

– A12905 ln 10). Dr. Bhattacharjee admitted that the LogMeIn web servers and

that the LogMeIn gateway servers (at least prior to April of 2012)—two of the

three types of servers in the LogMeIn facility—were linked to the Internet with a

static IP address. (A13806 lns 7-18). His testimony was confirmed by LogMeIn’s

chief technology officer, Marton Anka. (A13602 lns 1-15).

Dr. Bhattacharjee argued, however, that the various static IP addresses were

different from each other and that the database servers lacked a static IP address.

(A13806 ln 18 – A13807 ln 12). Dr. Bhattacharjee claimed that this demonstrated

non-infringement because “the patent requires a fixed static IP address. It says so.”

(A13807 lns 15-16) (emphasis supplied).

Dr. Bhattacharjee’s position was contrary to this Court’s instruction that “as

33

a general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or

more’” Communique I at A5108. LogMeIn contended that there was no

infringement because “01 was required to prove that all of the different LogMeIn

computers that allegedly comprise the server computer…[are] linked to the

Internet and having a static IP address.” (A25914) (emphasis added) (citation

omitted). This Court ruled, however, that “the location facility may be distributed

among one or more locator server computers.” Communique I at 5114. If the

location facility “may be distributed” among the various computers, then clearly

they need not all be connected to the Internet by a static IP address. To require

each of the servers individually to meet all of the limitations of Claim 24 would

frustrate this Court’s ruling that the location facility can be distributed.

Additionally, the “static IP address” phrase of claim 24 is a statement of the

use of the claimed “computer program product” that is contained in the claim’s

preamble. For that reason, proof of infringement does not require proof that the

LogMeIn servers have a static IP address. Catalina Mktg. Int’l v.

Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (“[P]reambles

describing the use of an invention generally do not limit the claims because the

patentability of apparatus or composition claims depends on the claimed structure,

not on the use or purpose of that structure.”). Thus, LogMeIn’s argument that its

34

accused services do not practice this claim element was not a legitimate non-

infringement argument in any event.

As a matter of law, LogMeIn’s arguments are contrary to this Court’s

Opinion in Communique I. LogMeIn’s argument as to the “static IP address”

limitation failed to provide substantial evidence to support the jury’s verdict of

non-infringement.

3. Ignoring This Court’s Ruling Regarding The Ganger Declaration And Refusing To Apply The Ordinary Meaning, LogMeIn Argued That Its Servers Do Not “Create” A Communication Channel Or Session

Claim 24 requires that the “location facility” must “creat[e] a

communication channel” and “creat[e] one or more communication sessions”

between the remote computer and the host personal computer.

01 Communique’s expert, Dr. Grimshaw, testified that the LogMeIn

servers—and no other components of the system—“create” the communication

channel and session:

[The LogMeIn system] will create a set of data structures on the – in the gateway server that creates this communications channel…that allows information to flow from the host computer to the remote computer and back….It creates the communication session in the channel. So what’s happening is exactly the same steps that we saw in the patent.…The communications channel is the high-level abstraction that moves the bytes back and forth. The reality is it’s just some data structures in a C++ program somewhere that hooks all these things together.

(A12808 ln 5 – A12809 ln 12).

35

Dr. Grimshaw testified that the “communication channel” and

“communication session” are, in the end, just “data structures [] in the gateway

server.” (Id.). Dr. Grimshaw’s testimony makes clear that these data structures

reside on the LogMeIn gateway server and nowhere else, and they are written there

by the gateway server software. They are thus “created” by the LogMeIn gateway

server.

Dr. Bhattacharjee (and every other LogMeIn witness) failed to respond to

Dr. Grimshaw’s detailed testimony about data structures being created by the

gateway. (A13801 ln 20 – A13804 ln 9). Dr. Bhattacharjee however confirmed

that communication channels and sessions were created when the LogMeIn system

was used, admitting that the LogMeIn gateway server “facilitate[s] creating some

of these channels or sessions.” (A13803 lns 11-21). LogMeIn did not contest that

communication channels and sessions were “created;” it simply argued that the

LogMeIn server computers did not do the “creating” by themselves.

Dr. Bhattacharjee denied that LogMeIn servers did the “creating” not by

disputing technical facts, but by improper reference to the Ganger Declaration. He

used Dr. Ganger’s reference to “the location facility itself” to explain why having

the host and remote computers “provide” data to the LogMeIn server to construct

the channel and session would mean that the host or the remote computer “create”

the channel and session, not the locator server:

36

Q. And when the host computer or the remote computer is creating the channels, is it appropriate to say that the communication channel or the communication session was created by the LogMeIn servers?

A. Absolutely not. This is, again, a representation made by Dr. Ganger to the Patent Office in order to get the patent through and issued.

(A13803 ln 22 – A13804 ln 3).

This Court previously ruled that the Ganger Declaration does not restrict the

scope of the claims. Communique I at A5111 (“Nothing in the record suggests a

disclaimer based upon Dr. Ganger’s statements.”). This Court also expressly

removed the word “itself” from the district court’s earlier claim term definition

because use of the word would be “misleading.” Id. at A5113, n.4. Dr.

Bhattacharjee’s testimony was contrary to this Court’s holding that there was no

prosecution history estoppel from the Ganger Declaration and was contrary to the

district court’s instruction to the jury that words other than “location facility” were

to be given their ordinary meaning.

Further, Dr. Bhattacharjee’s argument simply does not comport with the

ordinary meaning of “create.” Dr. Bhattacharjee argued that either the “host

computer” or the “remote computer,” or both, create the communication channel

and session because they provide information about their individual addresses to

the locator server. (A13803 lns 11-21). However, in this scenario, the address of

each of the personal or remote computers is only a portion of the data contained in

and required by that data structure, and, as Dr. Grimshaw testified, the locator

37

server uses that address information to create the data structure that is the actual

channel and session. (A12808 ln 5 – A12809 ln 12). Simply “providing” some of

the information used to create the channel or session does not “create” the

session—that would be like saying that the grocery store that “provides” sugar to

the chef “creates” the cookies that the chef bakes.

Dr. Bhattacharjee’s argument confused the host or remote “providing” a then

current location to the locator server with the locator server subsequently

“creating” the communication channel and session based on that location

information—i.e., confused the grocery store with the chef. As Dr. Grimshaw

explained, “[the host computer] connects to the datacenter, and it maintains this

connection and sends a series of pings.” (A12806 lns 22-23). Thus, the host

connects to the locator server, and later the remote computer connects to the server,

each providing information to the server, but it is the LogMeIn server that uses the

information from those earlier connections to create the channel between the

remote and the host. (A12808 ln 5 – A12809 ln 14). This critical step, at which

the server creates the data structures that constitute the communication channel and

session, was not challenged by LogMeIn. As Dr. Grimshaw demonstrated, the

LogMeIn system performs exactly the steps taught by the `479 Patent. (A12808

lns 11-12).

38

LogMeIn’s improper analysis of the “create” limitation cannot support a

judgment of non-infringement.

III. In The Alternative, The Court Should Grant A New Trial On Infringement

01 Communique asks alternatively that the Court vacate and remand for new

trial on the issue of infringement because (1) Dr. Bhattacharjee and LogMeIn

argued a claim construction that was contrary to this Court’s mandate and contrary

to the district court’s jury charge, resulting in a jury verdict that was against the

clear weight of the evidence; (2) the district court refused to charge the jury that

“a” means “one or more,” which was erroneous and prejudicial; and (3) the district

court erroneously allowed LogMeIn to argue repeatedly that LogMeIn’s patents

proved that it could not infringe 01 Communique’s `479 patent. These errors

reflect a pervasive course of conduct on the part of LogMeIn to suggest

inappropriate legal theories in order to confuse the jury.

“In reviewing a grant or denial of a new trial, the crucial inquiry is whether

an error occurred in the conduct of the trial that was so grievous as to have

rendered the trial unfair.” Bristol Steel & Iron Works, Inc. v. Bethlehem Steel

Corp., 41 F.3d 182, 186 (4th Cir. 1994) (internal quotations omitted). In addition,

a new trial should be granted even when there is substantial evidence preventing

grant of judgment as a matter of law if the verdict is against the clear weight of the

39

evidence, was based upon false evidence, or will result in a miscarriage of justice.

Cline v. Wal-Mart Stores, Inc., 144 F.3d 294, 301 (4th Cir. 1998).

A. LogMeIn Knowingly Subverted This Court’s Opinion In Communique I

In Communique I, this Court warned that “[w]e believe that the word

[‘itself’] is unnecessary to construction of the term ‘location facility’ and that use

of a singular pronoun might suggest misleadingly that all the functions of the

location facility must be performed on a single computer, despite our explicit

construction to the contrary.” Communique I at A5113, n. 4 (emphasis added).

Despite this warning, LogMeIn’s expert repeatedly referred to the Ganger

Declaration’s use of the word “itself” to justify his positions. (A13796 lns 15-17)

(“[T]he gateway may facilitate creating some of these channels or sessions, but it

by itself does not create a channel or a session.”); (A13798 lns 6-10) (“I considered

statements by Dr. Ganger made to the Patent Office which said that the location

facility had to itself do certain functions.”); (A13798 ln 25 – A13799 ln 14)

(reading the Ganger statement and then paraphrasing it).

Claim construction is a matter of law for the Court to decide, not the jury,

and so it was improper for Dr. Bhattacharjee to “testify before the jury on claim

construction.” Sundance, Inc. v. Demonte Fabricating Ltd., 550 F.3d 1356, 1364

n.6 (Fed. Cir. 2008); see also Cytologix Corp. v. Ventana Med. Sys., Inc., 424 F.3d

40

1168, 1172 (Fed. Cir. 2005) (finding it improper that the district court allowed

expert witnesses to argue about the meaning of claim terms to the jury).

Moreover, this Court’s Opinion in Communique I, which found no

prosecution history estoppel—contrary to Dr. Bhattacharjee’s view—remains the

law of the case, so LogMeIn should not have been permitted to argue for a contrary

construction. E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1219 (Fed. Cir.

2007). Once claim interpretation is set, a party may not argue to the fact finder for

narrower construction of the term. Cordis Corp. v. Boston Scientific Corp., 561

F.3d 1319, 1337 (Fed. Cir. 2009) (prohibiting party from arguing to the jury to

limit the claim term “thin-walled”).

Dr. Bhattacharjee’s improper testimony about the narrowed definition of

“location facility” was highlighted and emphasized to the jury during closing

argument by LogMeIn’s counsel. (A14346 lns 4-17) (“[T]here is no location

facility. This is according to the Court’s claim construction. It’s according to what

01 told the Patent Office. And I’m going to put on the screen Defendant’s Exhibit

126 [the Ganger Declaration], which you’ve heard about over and over again in

this trial….”).

01 Communique was substantially prejudiced by LogMeIn’s presentation of

its previously repudiated defense. In Cytologix, this Court held that:

The risk of confusing the jury is high when experts opine on claim construction before the jury even when, as here, the district court

41

makes it clear to the jury that the district court’s claim constructions control.

Cytologix, 424 F.3d at 1172 (holding that error would have supported reversal but

affirming judgment because evidence ultimately was judged to support

infringement under the correct claim construction); see also Cordis, 561 F.3d at

1337 (holding that court properly excluded claim construction argument from the

jury based on alleged prosecution history estoppel); Kinetic Concepts, Inc. v. Blue

Sky Med. Group, Inc., 554 F.3d 1010, 1027 (Fed. Cir. 2009) (finding error when

district court permitted claim construction argument to the jury).

01 Communique is entitled to a new trial because LogMeIn’s reliance upon

Dr. Bhattacharjee’s improper claim construction testimony and argument regarding

the estoppel effect of Dr. Ganger’s reexamination comments led to a jury verdict

that was against the clear weight of the evidence.

B. The District Court Erred In Refusing To Charge The Jury That “A” Means “One Or More”

The district court should have instructed the jury that “a” means “one or

more,” thereby allowing 01 Communique to argue to the jury that Claim 24’s

reference to “…a server computer program…includ[ing] a location facility…” did

not require proof that one single program performed all four functions, as LogMeIn

and its expert claimed. This Court expressly held that “the location facility may be

distributed among one or more locator server computers” and further held that

42

“LogMeIn’s argument is at odds with our well-established precedent. As a general

rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of ‘one or more’.”

Communique I at A5108 (internal quotations omitted).

01 Communique believes the issue of infringement should not have been

given to the jury as explained above. At a minimum, however, 01 Communique

should be granted a new trial at which it can make plain to the jury that LogMeIn’s

“one single program” argument is not the correct interpretation of Claim 24.

To warrant a new trial, the omission of the requested jury instruction must

have been prejudicial. Ecolab Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed.

Cir. 2002). In the present case, the question of whether “a server program”

allowed for the functions of the location facility to be contained in more than one

program was squarely disputed by the parties, and the charge that “a” means “one

or more” would have resolved that issue in 01 Communique’s favor. The district

court’s failure to provide this requested charge to the jury—especially in light of

this Court’s previous indication in Communique I that the definition was

appropriate and indeed central to this Court’s reasoning—was prejudicial,

requiring grant of a new trial. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,

521 F.3d 1351, 1362 (Fed. Cir. 2008).

43

C. LogMeIn Improperly Suggested To The Jury That Its Own Patents Supported A Finding Of Non-Infringement

Notwithstanding a motion in limine, objections during trial, and request for a

curative instruction, LogMeIn’s counsel repeatedly argued that the existence of

LogMeIn’s own patents precluded a finding of infringement. 01 Communique’s

motion in limine with respect to the LogMeIn patents (A8012-14), was denied by

the Court on March 8, 2013 (A1048-49, entry 407). 01 Communique objected to

LogMeIn’s testimony and arguments regarding its own patents repeatedly during

trial. (A12409 ln 3 - A12411 ln 5; A13609 ln 17 - A13611 ln 22; A13709 ln 24 -

A13710 ln 2; A13710 ln 24 - A13711 ln 1; A13711 lns 17-18; A13713 lns 5-6;

A14221 ln 25 - A14222 ln 18; and A14337 lns 20-21). 01 Communique requested

a curative instruction on the issue, but the request was denied. (A12301-A12307;

A14208 ln 20 - A14209 ln 8; A14309 ln 4 - A14311 ln 16).

For example, during the cross-examination of 01 Communique’s expert, Dr.

Grimshaw, LogMeIn’s counsel asked:

Q. Now, Dr. Grimshaw, you’ve got done telling the jury here that LogMeIn’s technology in [sic, “and”] the `479 Patent are similar in some way, correct?

A. No, I believe I said that I believe that the LogMeIn technology infringed on the `479 Patent.

Q. Well the United States Patent Office doesn’t agree they’re similar, does it?

* * *

44

Q. You understand that this is a list of prior art that the Patent Office looked at before it issued the LogMeIn patent, right?

A. I’m not an expert on how the Patent Office works internally, but I would assume that’s true.

Q. One of the things listed here is the 01 `479 Patent, correct?

A. Yes, that’s true.

Q. So, the Patent Office determined that LogMeIn’s patented technology in Defendant’s Exhibit 274 was different from and not even obvious from the `479 Patent, correct?

A. I am not an expert on patent law. I don’t know what that means the Patent Office decided. I really have no idea.

(A12911 ln 15 – A12913 ln 15); (see also A13609 lns 14-19; A13711 ln 21 –

A13712 ln 17) (direct testimony of LogMeIn CTO Marton Anka).

When counsel for 01 Communique raised the prejudicial impact of evidence

of LogMeIn’s own patents just prior to closing arguments (A14222 lns 1-6),

LogMeIn’s counsel promised the Court:

MR. STONER: Your Honor, we’ve not made that argument at any time in this trial. We don’t plan to do so. Of course, our patents are highly relevant for other reasons, and we intend to discuss them, but we’ll certainly never say just because we have a patent we don’t infringe theirs.

(A14222 lns 13-17). Despite this explicit promise to the Court, LogMeIn’s

counsel said to the jury:

LogMeIn’s technology was itself granted patents by the United States Patent Office. When 01 sued LogMeIn, LogMeIn gave 01’s patent to the Patent Office so the Patent Office could evaluate whether the technology we were trying to patent was the same or different from 01’s patent. When the Patent Office determined it was, as you heard

45

in this trial, granting LogMeIn’s patents that issued over 01’s `479 Patent; therefore, were determined to be new, different, not obvious.

(A14337 lns 10-22) (immediately followed by an objection, overruled by the

district court). As presented to the jury, LogMeIn counsel’s argument improperly

suggested that the Patent Office reviewed LogMeIn’s “technology” and concluded

that it did not infringe the `479 Patent.

LogMeIn’s repeated suggestion throughout the trial that its own patents

provided a defense to infringement was legally improper and prejudicial, and

warrants a new trial on infringement. The argument that possession of a patent is

proof that no other patent is infringed is strongly misleading and prejudicial.

Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1572-73 (Fed. Cir. 1986) (affirming

the exclusion of the infringer’s patent under Rule 403 as being prejudicial and

confusing).

In Blanchard v. Putnam, the Supreme Court found that evidence that the

accused product was made under a patent should not have been admitted because it

would “mislead the jury by withdrawing their attention from the real subject-matter

in controversy.” 75 U.S. 420, 425 (1869). This Court has numerous times echoed

that sentiment, stating that “it is well established that [t]he existence of one’s own

patent does not constitute a defense to infringement of someone else’s patent.”

Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870, 879 n.4

(Fed. Cir. 1991). The prejudice of LogMeIn’s introduction of evidence relating to

46

its own patents greatly outweighed any probative value and confused the jury in

violation of Fed. R. Evid. 403. Glaros, 797 F.2d at 1572-73 (affirming the

exclusion of the infringer’s patent under Rule 403 as being prejudicial and

confusing).

01 Communique is entitled to a new trial in which this blatantly improper

argument is neither implicitly nor explicitly made.

CONCLUSION

For the foregoing reasons, this Court should either grant judgment as a

matter of law in 01 Communique’s favor finding that LogMeIn infringes claim 24

of the `479 Patent, or alternatively this case should be remanded for a new trial on

the issue of infringement.

Date: August 26, 2013 Respectfully submitted, /s/ Thomas H. Shunk Thomas H. Shunk BAKER HOSTETLER LLP 1900 E. 9th Street, Suite 3200 Cleveland, Ohio 44114 (216) 861-7592 John P. Corrado Kenneth J. Sheehan A. Neal Seth Charles C. Carson BAKER HOSTETLER LLP Washington Square, Suite 1100 1050 Connecticut Avenue, N.W. Washington, D.C. 20036-5304

47

(202) 861-1500

CERTIFICATE OF SERVICE

I hereby certify that on August 26, 2013, a copy of the foregoing Brief of

Plaintiff-Appellant 01 Communique Laboratory, Inc. was served electronically

through this Court’s CM/ECF electronic filing system on the following counsel of

record:

Wayne L. Stoner Vinita Ferrera Mark C. Fleming Dana O. Burwell WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 [email protected] [email protected] [email protected] [email protected] Arthur W. Coviello WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, CA 94304 [email protected] Counsel for LogMeIn, Inc.

/s/ Thomas H. Shunk Thomas H. Shunk BAKER HOSTETLER LLP Counsel for Plaintiff-Appellant

CERTIFICATE OF COMPLIANCE

This brief complies with the type-volume limitation of Federal Rule of

Appellate Procedure 32(a)(7)(B). This brief contains 10,357 words, excluding the

parts of the brief exempted by Federal Rule of Appellate Procedure

32(a)(7)(B)(iii). This brief complies with the typeface requirements of the Federal

Rule of Appellate Procedure 32(a)(5) and the type style requirements of Federal

Rule of appellate Procedure 32(a)(6). This brief has been prepared in a

proportionally spaced typeface using Microsoft Office Word in 14-point Times

New Roman font.

August 26, 2013 /s/ Thomas H. Shunk Thomas H. Shunk BAKER & HOSTETLER LLP Counsel for Plaintiff-Appellant

ADDENDUM

ORDER of June 25, 2013 on post-trial motions……………………………..A1101

MEMORANDUM OPINION of June 25, 2013 on post-trial motions………A1201

U.S. PATENT 6,928,479 B1…………………………………………………A1801

OPINION of this Court in the prior appeal (“Communique I”)…………..….A5101

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA"R

Alexandria Division

01 COMMUNIQUE LABORATORY,

INC.,

Plaintiff,

JUN 2 5 2013 ilH/

CtT:"-: L'.T PiS f-CT COURT" ;,> cv,-, V"R;A. V.RG-iNIA

Civil Action No. l:10-cv-1007

LOGMEIN, INC.,

Defendant

ORDER

In accordance with the accompanying Memorandum Opinion, it

is hereby

ORDERED that

1. Plaintiff's Combined Motion for Judgment as a Matter of

Law as to infringement under Fed. R. Civ. P. 50, or in the

alternative New Trial as to infringement under Fed. R. Civ.

P. 59, and for Correction of Judgment under Fed. R. Civ. P.

52 and 58 is DENIED;

2. Defendant's Renewed Motion for Judgment as a Matter of

Law as to invalidity under Fed. R. Civ. P. 50 is DENIED;

3. Defendant's Motion for Judgment of Unenforceability

under Fed. R. Civ. P. 52 and 58 based on inequitable

conduct is DENIED due to this Court's finding of no

Case 1:10-cv-01007-CMH-TRJ Document 523 Filed 06/25/13 Page 1 of 2 PageID# 11721

A1101


A1102

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Divisionib

y

JUN 2 5 2013

in

01 COMMUNIQUE LABORATORY,INC.,

Plaintiff,

CLEHK. U.S. DISTRICT COURTALEXANDRIA. V!RO;.\"A

v.

LOGMEIN, INC.,

Defendant,

Civil Action No. l:10-cv-1007

MEMORANDUM OPINION

This matter comes before the Court on Plaintiff 01

Communique Laboratory, Inc.'s Combined Motion for Judgment as a

Matter of Law, New Trial, and for Correction of Judgment and

Defendant LogMeln, Inc.'s Renewed Motion for Judgment as a

Matter of Law, Motion for Judgment of Unenforceability and

Conditional Motion for New Trial.

Plaintiff 01 Communique Laboratory, Inc. ("01") is the

holder of U.S. Patent No. 6,928,479 ("theM79 Patent").

LogMeln, Inc. ("LogMeln") is a supplier of computer remote

access products. 01 brought suit against LogMeln alleging

infringement of the M79 patent which involves technology

enabling one computer to access another computer remotely via

the Internet. This Court granted summary judgment of

noninfringement in favor of Defendant LogMeln in May 2011. The


A1201


A1202


A1203


A1204


A1205


A1206

United States Patent

US006928479B1

(12) (10) Patent N0.: US 6,928,479 B1 Meyer et al. (45) Date of Patent: Aug. 9, 2005

(54) SYSTEM COMPUTER PRODUCT AND 6,396,849 B1 * 5/2002 Sarkissian et al. ........ .. 370/490 METHOD FOR PROVIDING A PRIVATE 6,397,254 B1 * 5/2002 Northrup ........ .. 709/227 COMMUNICATION PORTAL 6,466,981 B1 * 10/2002 Levy ........................ .. 709/227

6,469,998 B1 * 10/2002 Burgaleta Salinas 75 . - . et al. ........................ .. 370/338

( ) Inventors‘ 18,2190“; ‘133:3’; ’e ITEOmMhlH .(CA)’ 6,538,996 B1 * 3/2003 West et al 370/238 _ ' ’ lss_lss_auga 6,614,774 B1 * 9/2003 Wang ............. .. 370/338

(CA)> Andrew Cheung, Mlsslssauga 6,654,891 B1* 11/2003 Borsato et al. 713/201 (CA) 6,665,715 B1 * 12/2003 Houri ....................... .. 709/223

(73) Assignee: 01 Communique Laboratory Inc., FOREIGN PATENT DOCUMENTS Oman‘) (CA) EP 0 836 301 A1 9/1997

( * ) Notice: Subject to any disclaimer, the term of this OTHER PUBLICATIONS

gusenct 1; SZSHS Q1625 gjllisted under 35 George Lawton, “Dawn of the Internet Appliance”, pp. 16 & ' ' ' y y ' 18, L05 Alamitos, CA, U.S.A.

_ Mary Jander “One-for-All Mail Call” pp. 78-88. 21 A l. N .. 09 595 533 ’ ’

( ) pp 0 / ’ Klaus Haberstroh, “Kleingerate im Internet”, pp. 38-40.

(22) Filed: Jun. 16, 2000 * Cited by examiner

(51) Int. Cl.7 ............................................. .. G06F 15/16 Primary Examiner—Majid Banankhah (52) US. Cl. .................... .. 709/227; 709/217; 709/218; (74) Attorney, Agent, or Firm—Eugene J. A. Gierczak;

709/219 Miller Thomson LLP

(58) Field of Search ...................... .. 769/100; 309/223, 309/224, 226, 227, 370/232, 490, 323, 242, (57) ABSTRACT 370/352, 102, 103, 104, 338, 342; 709/220, A system, computer product and method for providing a 709/221, 223, 224, 226, 230, 238, 217, 218, private communication portal at a ?rst computer connected

709/227; 718/100; 713001, 200 to a network of computers includes a communication facility _ resident at the ?rst computer, and a second computer includ

(56) References Clted ing a locating facility for locating the current location of the

Us PATENT DOCUMENTS ?rst computer on the network, where the second computer facilitates communication between the ?rst computer and a

57087655 A * 1/1998 Tfnh 6} a1~ ~~~~~~~~~~~~~~~~ ~~ 370/313 third computer by authenticating the third computer for

2,790,548 A * 8/1998 slszlanlzadehlet a1‘ communication with the ?rst computer and providing the 6%??? 2 * 42/1998 R0 Wm et a‘ """"""" " 703/23 location of the ?rst computer for communication with the

, , /2000 McCann et al. h. d t 6,128,129 A * 10/2000 Yoneyama .... .. t H Compu “

6,349,289 B1 * 2/2002 Peterson et al. 6,381,650 B1 * 4/2002 Peacock ................... .. 709/245 46 Claims, 12 Drawing Sheets

10

Means for communication of location

A1801

U.S. Patent Aug. 9,2005 Sheet 1 0f 12 US 6,928,479 B1

Figure 1

Communication Facility

Means for 17 communication of

location /

17 x 5

17

A1802

U.S. Patent Aug. 9, 2005 Sheet 2 0f 12 US 6,928,479 B1

mm

\0

' 30

[/16 W 14 L 12 @

::____:__-_-._.:-._.—_._.____’-_:

15

Communication Faciiity

l/ 3 Location Facility \\ 6 \Vireiess

Network

Means for communication of location

A1803

U.S. Patent Aug. 9,2005 Sheet 3 of 12 US 6,928,479 B1

Figure 3

Static HTML \\ 12 content \

Communication Facility

Static W content

Location Facility Registration Facility

6 /T \\ 19

I Directory Sewer Program I

\28

Dynamic Directory

A1804

U.S. Patent Aug. 9, 2005

Figure 4

Personal Server

Sheet 4 0f 12 US 6,928,479 B1

Microprocessor

Communication Facility l

Private Messaging and Contact Facility Registration Routine

Uni?ed Messaging Facility

21 x,

20/1 Contact Information Management Facility

\22 Remote Message Read/Reply

Management Facility

A1805


Contact Database

Communication Interface @

Message Logs

[ ] Uni?ed Messaging Facility liggggnllg?rgziilgg

Message Files @- /j k 22 2O

,_______

E-Mail Voice Fax Noti?cation & Remote Message Retrieval Messaging Messaging Paging Management Facility Facility Facility Facility Facility

23/‘ 25/ 27/ M’ 29/‘

A1806


F ig ure 6

‘ Telephone line is idle and ready to l V receive calls. ‘*

A call comes in‘ The call detection mechanism detects ifthis is a voice call, a fax call, or a data call.

- No Assume this is a fax machine?

Switch to data communication mode‘ [This is an optional feature].

Enter Fax mode and Receive Fax

No Auto-forwar v

to another fax’?

Forward the fax to the designated fax number.

—> voice call, Run voice scripts

Enter the management

options‘?

Go to: Remote messages No readinyreplying and —"_-"‘ management (Figure 12).

+ Yes

‘ Forward the voice message as audio mail attachment to the designated e-mail address‘

I‘; V

7

Voice message recorded

successfully"

Sender in noti?cation

list?

Forward the fax message as a graphics attachment to the designated e-mail address‘

Call the designated phone number and follow Voice messages management (‘Figure 9) for 4 voice and Fax messages management(Figurc IQ) for fax.

Yes Telephone

Page r/SMS noti?cation?

Re-direct the message to a pager or SMS device.

A1807

U.S. Patent

Call the designated phone number and E-mail messages management(Figure 8).

Aug. 9, 2005

Teiephone noti?cation?

Sheet 7 0f 12

Figure 7

The system periodically checks the user’s e-mail account(s). it is up to the user to preset which aceoun?s) to check and the interval between checking.

US 6,928,479 B1

New messages?

No

Convert to fax format and send to the designated fax number.

Forward the message to the designated e-maii address,

Sender in notification

list?

Re-direct the message to a pager or SMS device.

A1808

U.S. Patent Sheet 8 0f 12 Aug. 9, 2005

Figure 8

Access and play the ?rst message in the list. Use text-to- ‘ speech technology to convert the sender’s name, subject, ‘ and the message body into a voice message.

The caller now has an option to: listen again, reply to the sender, redirect the message to a fax machine, redirect the

US 6,928,479 B1

message to another e-mail address. mark as read or read the next one,

Record a voice message and package the message as a self-playing executable file. Send the tile as an e-mail attachment back to the sender.

Yes Reply to the sender?

Convert the message to fax image(s) and send to the speci?ed fax machine number.

Re-direct to Yes other e-mail address?

Forward the message to the speci?ed e-mail address.

Forward the message as a voice message to the speci?ed telephone number.

Mark the a as

an old message.

A V

Read next Prepare to read the next message? message in the list of

available new messages.

Yes

A1809


Figure 9

Access and play the ?rst message in the list. Use text

US 6,928,479 B1

to-speech technology to convert the sender’s name and 4 message subject into a voice prompt,

The caller has an option to: listen again, reply to the sender, redirect the message to a fax machine, redirect ‘ the message to an e-mail address, mark as read, or read the next one.

Record a voice message and package the message as a self-playing executable ?le and

' send the ?le as an e-mail attachment hack to

the sender.

Reply to the Yes sender‘?

Using speech recognition technology to convert the message to image(s) and send to the speci?ed fax machine,

Forward the message to the speci?ed e-mail “ address.

Redirect to Yes other e-mail address?

Forward the voice message to the speci?ed telephone number.

6 Mark the u as

Mark the message as

old? an old message.

A Prepare 0 tea e next message in the list of available new messages,

Read it Yes again?

A1810

U.S. Patent Aug. 9, 2005 Sheet 10 0f 12

Liam

message.

Access and play the first message in the list. Use Optical Character Recognition (OCR) and text-to-speech technology to convert the fax message into a voice

US 6,928,479 B1

the next one.

The caller has an option to: listen again, reply to the sender, redirect the message to a fax machine, redirect the message to an e-mail address, mark as read, or read

Redirect to .

fax machine?

Mark the message as

old?

No

Read next message?

NO

Read it again‘?

Yes

Yes

Yes

Yes

Yes

Yes

Record a voice message, convert it to text and then to a fax image and

> send it back to the caller’s fax number.

Send the fax images to the speci?ed > fax machine.

Send the fax images as e-mail ’ attachments to the speci?ed e-mail

address.

> Mark the message as an old message.

' repare to read the ne

> mes -;' ' I ' 0

available new messages. V

A1811


Figure l 1

Search for a contact by using the telephone keypad DTMF tones or I Speech Recognition to enter the first few characters of the name.

Found in the database?

Caller can send a message to the found contact, or by means of Text-to-speech, 4 listen to more contact information.

Record a voice message and convert it to text or package the voice message as a self-running executable ?le and send the ?le as —’ e-mail attachment to the e-mail address recorded in the contact database.

Listen to other ' Read the detail contact information infonnation? using Text-to-Speech. —"—’

Record a voice message and send it Send a voice messag‘ir) to the selected contact phone __’

number.

A1812


Figure 12

Authentication successful?

US 6,928,479 B1

session’?

A?er verifying the user I D and password, the caller has an option to read/reply to e-mail, fax, and voice ‘ messages, access the contact database and/or to send messages.

’ ead e-mal . Yes Go to the Message Management voice, or fax —> Facility (Figures 8.9,10). ——M messages”

Go Remote contact database accessing (Figure 5). ——>

Yes , ‘3222*’ ‘° "ix-21:52:52"; now? r ve any. g ——>

from the mail server.

other Yes Elffect'congguratiton changes. E.g. Services? —_> c angmg e not: icanon or '

forwarding parameters.

Caller terminated the No >

A1813

US 6,928,479 B1 1

SYSTEM COMPUTER PRODUCT AND METHOD FOR PROVIDING A PRIVATE

COMMUNICATION PORTAL

FIELD OF THE INVENTION

This invention relates in general to a system, computer product and method for remotely accessing data at a private server using a remote Wired or Wireless Web broWser. This invention also relates to a system, computer product and method for remotely accessing and managing different types of messages at a private server using a remote Wired or Wireless Web broWser.

BACKGROUND OF THE INVENTION

Individuals and businesses today communicate through a variety of messages including electronic mail (including e-mails With video or voice attachments or AOLTM “instant messages”), pager messages, facsimile (fax) and electronic voice mail.

In many cases these messages are managed by more than one computer program. Such multi-program solutions are cumbersome as they generally require signi?cant familiarity With more than one program and further require accessing each program to manage the receipt and dispatch of different types of messages. This results in loss of time and overly complex means for achieving user objectives.

Single programs for managing such variety of messages are knoWn, but such knoWn programs do not provide full remote access via the Internet to management of messages and contact information. The use of the Internet is desirable for numerous reasons, including the common use of the Internet Protocol as a communication standard, the general availability of electronic devices that are Web-enabled and the cost savings of using the Internet. Full Internet access is desirable because message and contact management users may Want to access their message and contact management system from a plurality of locations and/or plurality of communication devices (eg lap top, cellular phone or WAP-enabled hand held computer etc.). Full remote access permits the receipt of messages at any location on any type of communication device, With remote access to functions of the message management system such as address books, security settings, rules (e.g. automated response), text-to speech functionality etc.

Prior art messaging systems and programs such as SYMANTEC’sTM TALK WORKS PROTM, SIEMENS’TM XPRESSIONS470 TM NOKIA/TELEKOL’sTM INTE

GRAXTM, INTERSIS’TM VOIXXTM, KONTACT’sTM VEMA2.0TM and BLUEJADECOM’sTM TECSTM do not provide full Internet access as described above, and further particulariZed beloW.

Another disadvantage of such prior art systems (With the exception of TALKWORKSTM) is that such systems and computer products require the use of a multi-user server. In other Words, the “uni?ed” capability of managing the variety of messages described is oWned and managed by a 3rd party service provider Who acts as an intermediary betWeen the user and entities With Whom the user communicates.

It should be understood that by a “multi-user server”, a server is meant that is con?gured for use by more than one “user”.

There are numerous disadvantages to such prior art sys tems requiring such 3’“ party intermediaries. First, such prior art systems generally require payment of signi?cant user fees, payable so long as the system is used. Second, such 3’“

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2 party intermediary systems do not generally provide the full ?exibility, customiZation, security and access to personal data, that can be provided by a private user system and computer product. Third, engaging the ?exibility, customi Zation, security and access features of such 3’“ party inter mediary system is cumbersome. Fourth, data associated With such 3’“ party intermediary systems such as contact data needs be replicated from the user’s personal server to the 3rd party systems. In most prior art systems there are security risks to such replication, as the necessary data transfers generally do not occur on a secure basis, or if security provisions are made, such security provisions may be dif ?cult to guarantee. Fifth, use of such 3’“ party intermediary systems implies providing access codes to such 3’“ party. Using such access codes, a rogue Would have access to the personal data of the user and could, for example, send a damaging e-mail to the contacts of the user. While such 3’“ party intermediaries Will generally have procedures in place to reduce the likelihood of such an occurrence, such occur rences are possible nonetheless.

Therefore, a system for providing a private communica tion portal is required that is easy to use and relatively inexpensive. By “private” What is meant is that the commu nication portal is dedicated to a user rather than multiple users as is the case With 3’“ part intermediary systems described above.

It should also be understood from the outset that in referring to “private communication portal”, the Word “com munication” is used in accordance With its broad technical de?nition. In particular, “communication” for the purpose of this document means exchange or accessing of any infor mation, including information formats, using prede?ned protocols understood by communicating entities. It should be understood that for “communication” to occur, there is no requirement for a human user. “Communication” can in this Way be contrasted from “messaging” Which is generally understood to relate to communication betWeen more than one human user.

Also, by “portal” What is generally understood is a means for facilitating communication from point Ato B. More than one interconnected computer or process may co-operate to provide a single “portal”. For example, a ?rst computer or process comprising the “portal” may provide means for locating B at least once. Thereafter, communication betWeen A and B may be facilitated through a second computer or process independent of the ?rst computer or process.

In operation, the present invention provides a private communication portal for remotely managing and accessing messages, as described herein. HoWever, it should be under stood that messages are only one form of data that can be communicated in co-operation of the present invention. The invention provided herein provides means for operating private server as a communication server for a variety of purposes, including security monitoring. For example, the communication portal provided for herein could be associ ated With knoWn security systems that generate data in the form of images of a physical location associated With such security system. The private communication portal described herein provides means for accessing and manag ing such data remotely, for example, by forWarding images detecting an intruder to an alarm response force.

Providing such a private communication portal system and computer product presents a number of problems. First, the computer on Which the private communication portal resides is required to be located on the Internet using a Web broWser or WAP device. Second, a system is required that provides a secure Internet connection to said computer of the

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user. Third, but on a related point, the system needs to authenticate the user and reject unauthorized access. Fourth, messages need be transferred securely betWeen the remote user and said computer.

Thus a system, computer product and method for provid ing full Internet access to message and contact management functions is desirable, by means of a private communication portal. It is further desirable to provide a system and computer product for providing message and contact man agement Without a 3rd party intermediary, by means of a private communication portal.

It should also be noted that 3rd party service providers such as Internet Service Providers do not generally alloW their users to establish their oWn dedicated Internet servers, or if they do so it is at a cost that is generally signi?cant. This is because the user’s Internet Protocol address generally changes from time to time for system resource management reasons. A dedicated Internet Protocol address can be obtained, but generally only at a premium.

Thus, there is also need for a system, computer product and method for accessing and managing data remotely, even When the Internet Protocol address of a user’s computer changes from time to time.

SUMMARY OF THE INVENTION

In accordance With one aspect of the present invention, a system, computer product and method for a private com munication portal is provided.

In accordance With another aspect of the present inven tion, a system, computer product and method for providing full Internet access to and management of data resident on a computer is provided.

In accordance With yet another aspect of the present invention, a system, computer product and method for providing remote access and management of messages and contact information is provided.

In accordance With yet another aspect of the present invention, a system, computer product and method for providing a user With a private server for remote access to data resident on user’s computer is provided despite 3rd party service provider restrictions that prevent a user from establishing their oWn Internet server.

The present invention has numerous advantages such as convenient remote access to data such as messages and contact information via any number of electronic devices such as a lap top, cellular phone or WAP-enabled hand held computer etc. In particular, the present invention not only alloWs messages of all types to be read, but also replied to remotely. The present invention has the added bene?t of reducing toll charges generally associated With remote mes sage access.

Another signi?cant bene?t of the present invention is the ability to use current e-mail addresses, fax numbers or phone numbers rather than obtain a neW one as is generally required by 3rd party service providers described above. Transition to a neW e-mail address, for example, generally requires the various ordinary recipients of e-mail from a user to update their contact information. This generally results in loss of time in managing the transition (changing contact information, creating pointer from old e-mail addresses) and can potentially result in loss or delay of communications.

In the present invention, the user determines security and access. This provides greater ?exibility and greater control of data by alloWing, for example, remote forWarding of messages.

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4 Also, in a multi-user system, depending on the number of

users accessing the 3rd party system at any given time, the performance of the multi-user messaging system can be negatively affected. The invention described herein provides means for ensuring optimal performance of the user’s mes saging system.

It should also be understood that said 3rd party systems generally, for system resource management reasons, set limits to the amount of disk space allocated to each indi vidual user for the purpose of storing data such as messages and contact information. This poses a problem in providing adequate means for archiving such data. Data archiving is either not provided by such 3rd party system, in Which case such data needs be exported (if permitted by the 3rd party system) to the user’s system or some other system. This may result in inconvenience and/or time loss. Alternatively, data archiving may be offered by such 3rd party system interme diary, but generally at a premium. More generally, as is readily understood to those skilled

in the art, the present invention permits a user’s computer to act as a “private server” Which can be con?gured in accor dance With the user’s requirements.

BRIEF DESCRIPTION OF THE DRAWINGS

A detailed description of the preferred embodiment(s) is(are) provided herein beloW by Way of example only and With reference to the folloWing draWings, in Which:

FIG. 1 is a system resource ?oWchart, in accordance With a preferred embodiment of the present invention;

FIG. 2 is a system resource ?oW chart of the preferred embodiment of the present invention, but illustrating the connection of the system to a Wireless netWork.

FIG. 3 is a system resource ?oW chart illustrating the resources of the Server Computer of the present invention.

FIG. 4 is a system resource ?oW chart illustrating the resources of the Private Server of the present invention.

FIG. 5 is a program resource ?oW chart illustrating the resources of the computer product of the present invention resident on the Private Server.

FIG. 6 is a program function chart illustrating the opera tion of the Fax/Voice/Data Communication Interface of the present invention.

FIG. 7 is a program function chart illustrating the opera tion of the E-Mail Communication Interface of the present invention.

FIG. 8 is a program function chart illustrating the opera tion of the E-Mail Message Facility of the present invention, in association With the Remote Message Management Facil ity.

FIG. 9 is a program function chart illustrating the opera tion of Voice Message Facility of the present invention, in association With the Remote Message Management Facility.

FIG. 10 is a program function chart illustrating the operation of Fax Message Facility of the present invention, in association With the Remote Message Management Facil ity.

FIG. 11 is a program function chart illustrating the opera tion of the Contact Information Facility of the present invention.

FIG. 12 is a program function chart illustrating the operation of the Remote Message Management Facility of the present invention.

In the draWings, preferred embodiments of the invention are illustrated by Way of example. It is to be expressly understood that the description and draWings are only for the

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purpose of illustration and as an aid to understanding, and are not intended as a de?nition of the limits of the invention.

DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENT

Referring to FIG. 1, there is illustrated in a system resource ?owchart the preferred embodiment of the present invention illustrated herein. In particular, FIG. 1 illustrates the resources that comprise the private communication por tal or “PCP” 10 of the present invention. PCP 10 comprises a dual computer architecture further comprising a ?rst computer or Private Server 14 and server computer or second locator Server Computer 12 It should be understood that Private Server 14 may comprise a netWork station, personal computer terminal or server, provided that such Private Server 14 is devoted to a private user Who may be a business or individual. Said Private Server 14 also com prises a message server 15, as best illustrated in FIG. 1 and a name that identi?es the particular private server, as is Well knoWn.

Server Computer 12 is connected With unrestricted access to an interconnected netWork of computers such as the Internet 16. Server Computer 12 may comprise one or more computers, as is Well knoWn.

It is desirable to also provide Private Server 14 With a permanent Internet connection 13 provided, for example, by a coaxial cable connection or high speed xDSL telephone connections or the like, also as shoWn in FIG. 1.

Private Server 14 is provided With a computer program product of the present invention dedicated to Private Server 14 In a ?rst preferred embodiment of the present invention, best illustrated in FIG. 1, this computer product provides a data communication facility 3 and means for communication 5 of the location of Private Server 14 on a computer netWork such as the Internet to Server Computer 12, as further described beloW. Said data communication facility 3 can be provided With interfaces With a number of facilities 17 that generate data, in a manner Well knoWn to those skilled in the art, such as voice message reception, fax reception, e-mail retrieval, alarm monitoring facilities, child monitoring facilities and the like. As is explained beloW, te computer program product of the present invention presents means for remotely accessing said data.

In another aspect of the computer program product of the present invention, said Server Computer 12 is provided With a server computer program that communicates With said computer program dedicated to Private Server 14. Said server computer program, illustrated in FIG. 1, provides a Location Facility 6 or means responsive to said means for communication 5 of the location of Private Server 14 for providing remote access to said Private Server 14, as explained beloW.

Private Messaging and Contact Facility In a second preferred embodiment of the present inven

tion illustrated in FIG. 4, said data communication facility 3 further comprises a communication interface 7 and commu nication softWare program 9 or Private Messaging and Contact Facility Which are operably associated. Said Private Messaging and Contact Facility 9 comprises tWo principal elements, namely a Uni?ed Messaging Facility 20 and Contact Information Facility 22. As best illustrated in FIG. 5, the principal functions of

Uni?ed Messaging Facility 20 are to receive and process messages of all types and content, including e-mail, fac similes, electronic voice mail, images, video data, execut able program code, audio data, formatted data or raW binary

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6 data. Uni?ed Messaging Facility 20 is operably associated With communication interface 7. The functions of commu nication interface 7 are illustrated in FIG. 6 for Fax/Voice/ Data messages, and in FIG. 7 for e-mail. Uni?ed Messaging Facility 20 further comprises E-Mail

Message Facility 23, Voice Message Facility 25 and Fax Message Facility 27, illustrated in FIGS. 8, 9 and 10 respectively in operation in conjunction With Remote Mes sage Management Facility 28, the functions of Which are explained beloW.

In the present invention, Uni?ed Messaging Facility 20 further comprises Noti?cation Facility 33. This facility is only initiated When a message is received at Private Server 14, in the manner described beloW in greater detail, from a valid message originator. The hard disk of Private Server 14 Will store a copy of a “Noti?cation List” in co-operation With Noti?cation Facility 33. The “Noti?cation List” contains the e-mail addresses, fax identi?ers and/or caller identi?ers of valid message originators.

The principal functions of Contact Information Facility 22 are entering and retrieving contact information such as names, telephone numbers, e-mail addresses, company information, personal information (such as addresses, birth days and the like), contact history and the like. The principal functions of the Contact Information Facility 22 are illus trated in FIG. 11. These functions, in co-operation With the system of the present invention, are accessible remotely as illustrated in FIG. 11.

In addition, the Uni?ed Messaging Facility 20 and Con tact Information Facility 22, in co-operation With the system of the present invention, also provide the Remote Message Management Facility 29, as best illustrated in FIG. 5. The particular functions of the Remote Message Management Facility 29 are best illustrated in FIG. 12.

Internet Registration and Location Said Server Computer 12 is con?gured, in a manner that

is Well-knoWn, to be connected to the a netWork of inter connected computers such as the Internet, and particularly in a manner that accepts Internet requests and translates these requests into a connection betWeen said Server Computer 12 and Private Server 14. As best shoWn in FIG. 3, the system described herein

further comprises a directory service program 28. In the particular embodiment illustrated herein, said directory ser vice program 28 is operably associated With Server Com puter 12. For the sake of clarity, said directory service program 28 can be either resident on said Server Computer 12 or remote from said Server Computer 12 but accessible therefrom. Directory service program 28 comprises a dynamic directory provided using a protocol such as LDAP (LightWeight Directory Access Protocol) Version 3, With capability for dynamically modifying the directory content of the directory service program 28. It is desirable that only users of the present invention be given access to directory service program 28 by means that are knoWn, such as an authentication routine provided in association With registra tion facility 19, for example.

Private Messaging and Contact Facility 8 comprises a “REGISTRATION ROUTINE” 21 for indicating that Pri vate Server 14 is available to accept communications such as messages from Server Computer 12. It is desirable for such “REGISTRATION ROUTINE” 21 to be engaged periodi cally to update the directory service program 28, to address possible changes to the private server’s 14 internet protocol address or its communication session With the second com puter (the location facility) for a number of reasons. First, it is desirable to verity that the Internet or server connection of

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Private Server 14 is active Second, When the Private Server 14 is con?gured to provide the functions of this invention, registration With the Server Computer 12 is obviously required. Third, the “REGISTRATION ROUTINE” 21 is required to be engaged periodically to update the directory service program 28 to address possible changes to Private Server’s Internet Protocol address. Fourth, from a system resource management point of vieW it may be desirable to restrict access to the Server Computer 12 to only active users, in Which case users Who according to pre-set param eters are determined to be inactive Would be automatically de-registered after a period of time. Fifth, some users may Wish to change their access codes from time to time. Sixth, some users may Want to de-register temporarily With Server Computer 12 in order to interrupt receipt of communications from Server Computer 12, for example, during operation of a back-up routine at Private Computer 14. Seventh, “REG ISTRATION ROUTINE” may be required to change secu rity settings provided at Server Computer 12, in a manner that is Well-knoWn.

It should be understood that the present invention alloWs the parameters of the operation of the “REGISTRATION ROUTINE” to be set, in a manner Well-knoWn to those skilled in the art, by either the user or the system operator of Server Computer 12, as may be required.

The availability to accept communications such as mes sages of Private Server 14 is communicated by “REGIS TRATION ROUTINE” by registering a name string or digit string With the directory service program 28 that must not con?ict With any other similar name in the dynamic direc tory associated With directory service program 28. This communication includes the current Internet Protocol address of Private Server 14 that as indicated above may change from time to time. The Internet Protocol address of Server Computer 12, hoWever, is ?xed and knoWn to the system described herein.

In the manner described above, the current Internet Pro tocol address of Private Server 14 is provided from time to time and dynamically stored in directory service program 28. When a remote computer or Requesting Device 30 includ

ing a remote computer data communication program or facility, such as the Web broWser illustrated in FIG. 1, or the Mobile broWser illustrated in FIG. 2, requests a connection to Private Server 14, Requesting Device 30 ?rst connects to Server Computer 12 in a manner that is Well-knoWn and indicates the name of the Private Server 14 to Which Requesting Device 30 Wishes to connect.

In particular, in the preferred embodiment of the invention illustrated herein, a request is made by Requesting Device 30 to Server Computer 12 to locate Private Server 12 by means of an entry in a Web Page ?eld or by an HTTP request that already contains the name of Private Server 14.

Server Computer 12 Will validate the request to connect to Private Server 14 and initiate a search in the directory associated With the directory service program 28 to obtain the current Internet Protocol address of Private Server 14 and port number of message server 15 of Private Server 14 or the current communication session. Server Computer 12 is thereby engaged to alloW a connection to be set up betWeen Requesting Device 30 and Private Server 14.

In the embodiment of the present invention illustrated herein, three connection methods are speci?cally provided for sake of illustration, as betWeen the Requesting Device 30 and Private Server 14. First a Direct Connection can be provided using a secure Web protocol such as “https”, in a manner that is Well knoWn. In this method, once Server

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8 Computer 12 has validated the connection request provided by Requesting Device 30, the Requesting Device 30 is simply forWarded to the Private Server 14, in a manner that is Well-knoWn. Thereafter, all interactions Will take place directly betWeen the Requesting Device 30 and the Private Server 14 during the communication session.

Second, Where the Server Computer 12 has netWork access to Private Server 14 but Private Server 14 is not accessible from the Internet 16, and may have a netWork address that is only valid Within the netWork, a Proxy Server (not shoWn) is used to provide the connection betWeen the Requesting Device 30 and Private Server 14, in a manner that is also Well knoWn.

Third, Where the Private Server is not accessible from the Internet 16 using the Web protocol but from some different protocol such as “H323”, the Video Conferencing protocol, protocol conversion is utiliZed, in a manner that is Well knoWn.

The above-described connections provide the means for transferring three kinds of data. First, static page data, namely menus for navigation, Which are provided in a manner that is Well knoWn to those skilled in the art. Second, lists of information such as message lists Which are also provided in a manner that is Well knoWn. Third, streamed data, namely message content data such as voice, fax, text and video data Which can be displayed in “Real Time” While it is being received. As is Well knoWn to those skilled in the art, providing the functions of the Private Messaging and Contact Facility 18 illustrated in FIGS. 5—12 in particular requires access to both kinds of data.

Security The connection provided by Server Computer 12 between

Requesting Device 30 and Private Server 14 can be described as “secure” in accordance With the folloWing security features. First the name of the Private Server 14 is used as the key for locating Private Server on Internet 16. In order to minimiZe the likelihood of the security of the system of the present invention being compromised, this name should not be derivable from a user of Private Server 14. Second, it is desirable to use a secure communication protocol as betWeen the Requesting Device 30 and Private Server 14, such as the secure “https” Web protocol. Third, once a secure connection is established betWeen Requesting Device 30 and Private Server 14, it is desirable to require a further authentication routine Without intermediaries. It should be understood that the use of other means of pro viding secured communication betWeen electronic devices in association With the system described herein are speci? cally contemplated by the present invention. Where Requesting Device 30 is a WAP device, it should

be understood that authentication and connection to Private Server 14 can happen “automatically”. This is because a unique identi?er is generally allocated to each WAP device by the manufacturer. As part of the “REGISTRATION ROUTINE” 21 described above, this unique identi?er can be associated With the current location of Private Server 14 thus forWarding the WAP device to Private Server 14 automatically.

Full Internet Access The system provided in this invention alloWs “full” Inter

net access to the functions of the Private Messaging and Contact Facility 9 in particular, by operation of the Contact Information Facility 22 and Remote Message Management Facility 29 of the present invention, described above.

This “full” Internet access to data associated With Private Server 14, such as message and contact related data is best understood by illustration of examples in operation.

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The user is able to access the list of messages stored on Private Server 14 in association With the computer product of the present invention, and to command Private Server 14 to initiate a connection to receive messages from external message stores (eg an Internet Service Provider managing a speci?c e-mail account). More importantly, the invention provided herein alloWs

such user to access said list of messages (of any type) stored on Private Server 14 via a Web broWser program running on another computer attached to the Internet and command Private Server 14 to initiate a connection to receive mes sages from external message stores.

The present invention also alloWs a user to access said list of messages via a telephone call to Server Computer 12 by means of suitable telephony hardWare and to command Private Server 14 to initiate a connection to receive mes sages from said external message stores.

Similarly, the present invention Will alloW the user to access said list of messages and to command Private Server 14 to initiate a connection for user to receive messages from

external message stores via a Mobile Wireless device.

On command from the user, the present invention alloWs individual voice messages to be played; individual e-mail messages, facsimile messages, video and other images to be displayed on a computer, cellular phone (depending on hardWare resources) or WAP-enabled hand-held computer; and individual executable message content to be executed on Private Server 14 (for example execution of a sound ?le and transmission of audio stream to the user).

The present invention also alloWs the user to reply to a message by means of voice message that is sent as an e-mail attachment When the connection to Private Server 14 is a voice connection. The present invention further alloWs the user to reply to a message by means of a text message. By means of Noti?cation Facility 33 in particular, the

present invention is able to notify the user of neW received messages by means of a telephone call to a Wireless paging service speci?ed by the user. Private Server 14 is also able to notify the user of neW received messages by means of a telephone call to a telephone number speci?ed by the user and the subsequent playing of a voice message as a voice data stream. Private Server 14 is further able to notify the user of neW received messages by means of a message sent over the Internet to a Wireless paging service speci?ed by the user. Private Server 14 is still further able to provide means for remotely adding, modifying and deleting entries to the Noti?cation List provided by Noti?cation Facility 33 via a Web broWser program running on another computer attached to the Internet, voice telephone call to the telephone line attached to Private Server 14 by means of a modem, or Mobile Wireless device. As is illustrated in the Figures, and in particular FIGS. 8,

9 and 10, the computer product of the present invention incorporates text-to-speech technology to provide the full Internet access described herein to a user having a telephone line. This text-to-speech can comprise a variety of commer cially available technologies, implemented in a manner that is Well knoWn.

The Contact Information Facility 22 of the present inven tion contributes to providing full Internet access to message and contact management. By means of such facility, the present invention alloWs the user to access data contained in the contact database on the local computer associated With the Contact Information Facility 22, as illustrated in FIG. 11). More importantly, the present invention also alloWs the user to access said data on a local computer via a Web

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10 broWser program running on another computer attached to the Internet and to command Private Server 14 in association With the computer product of the present invention to initiate a connection to receive messages from an external message address. In addition, the present invention alloWs a user to access said data on a local computer via a telephone call to the telephone line attached to Server Computer 12 by means of a suitable telephony hardWare device, or via a Mobile Wireless device.

Other variations and modi?cations of the invention are possible. In particular a number of computer program facili ties are described in this invention as separate facilities for the sake of describing the invention. HoWever, it should be understood that such facilities can be combined With other facilities comprising the present invention, or such facilities can be sub-divided into separate facilities. It should also be understood that various other features or functions can be added to the present invention Without departing from the scope of the present invention such as additional means accessing and managing messages and contact information remotely. In addition, it should be understood that the private communication portal can be associated With any means for generating useful data and managing such data Where it is desirable to provide remote access to such data. In addition, it is contemplated that various means for restricting access to the private communication portal of the present invention other than to authoriZed users be utiliZed. It should also be understood that the Private Server of the present invention may comprise more than one copy of the computer product of the present invention. Various means for creating netWork connections are illustrated herein, hoW ever, other means for creating such connections used in conjunction With the invention described are also Within the scope of the present invention. All such modi?cations or variations are believed to be Within the sphere and scope of the invention as de?ned by the claims appended hereto. We claim: 1. A system for providing access to a personal computer

having a location on the Internet de?ned by a dynamic IP address from a remote computer, the system comprising:

(a) a personal computer linked to the Internet, its location on the Internet being de?ned by either a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the personal computer being further linked to a data com munication facility, the data communication facility being adapted to create and send a communication that includes a then current dynamic public IP address (publicly addressable) or dynamic LAN IP address (publicly un-addressable) of the personal computer;

(b) a locator server computer linked to the Internet, its location on the Internet being de?ned by a static IP address, and including a location facility for locating the personal computer; and

(c) a remote computer linked to the Internet, the remote computer including a communication facility, the com munication facility being operable to create a request for communication With the personal computer, and send the request for communication to the locator server computer;

Wherein the data communication facility includes data cor responding to the static IP address of the locator server computer, thereby enabling the data communication facility to create and send on an intermittent basis one or more

communications to the locator server computer that include the then current dynamic public IP address or dynamic LAN IP address of the personal computer; and

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wherein the locator server computer is operable to act as an intermediary betWeen the personal computer and the remote computer by creating one or more communication sessions there betWeen, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication With the personal com puter from the remote computer, by determining the then current location of the personal computer and creating a communication channel betWeen the remote computer and the personal computer, the location facility being operable to create such communication channel Whether the personal computer is linked to the Internet directly (With a publicly addressable) dynamic IP address or indirectly via an Internet gateWay/proXy (With a publicly un-addressable dynamic LAN IP address).

2. The system as claimed in claim 1, Wherein the ?rst computer is linked to the Internet directly or via an Internet gateWay/proXy.

3. A system as claimed in claim 1, Wherein the personal computer is linked to a database, and said system provides means for remotely accessing said database from the remote computer.

4. A system as claimed in claim 3, Wherein said system enables communication settings associated With the data communication facility to be set remotely for the personal computer from the remote computer.

5. A system as claimed in claim 1, Wherein said location facility enables the current location of the personal computer to be knoWn to the locator server computer.

6. A system as claimed in claim 5, Wherein the location facility includes a dynamic location directory, Wherein said dynamic location directory is responsive to the communi cation from the personal computer, including data for locat ing and/or communicating With the personal computer, to dynamically store such data to a server database linked to the locator server computer.

7. A system as claimed in claim 6, Wherein the location facility is responsive to the request from the remote com puter for communication With the personal computer to retrieve the current location and port number or the current communication session associated With the personal com puter from the dynamic location directory, and provide said current location and port number, or the current communi cation session, to the personal computer.

8. A system as claimed in claim 6, Wherein said data communication facility creates and sends the communica tion including the current location or the current communi cation session of the personal computer to the locator server computer periodically.

9. A system as claimed in claim 8, Wherein said system further includes a security facility for restricting access to the locator server computer to one or more authoriZed users

only. 10. A system as claimed claim 9, Wherein said data

communication facility further includes a communication interface for sending and receiving data communications.

11. A system as claimed in claim 1, Wherein said data communication facility interfaces With data generating facilities linked to the database and the personal computer, so as to provide remote access to data created by the data generating facilities from the remote computer.

12. A system as claimed in claim 1, Wherein said data communication facility further includes a private messaging and contact facility linked to the database for processing and managing messages and contact data in co-operation With said communication interface.

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12 13. A system as claimed in claim 12, Wherein said private

messaging and contact facility includes a uni?ed messaging facility and a contact information facility, each being linked to the database.

14. A system as claimed in claim 13, Wherein said uni?ed messaging facility enables the remote management of mes sages linked to the database and the personal computer from the remote computer.

15. A system as claimed in claim 14, Wherein said uni?ed messaging facility enables reading, replying and managing said messages linked to the personal computer remotely from the remote computer.

16. A system as claimed in claim 15, Wherein said messages include e-mails, facsimiles and/or voice mails.

17. A system as claimed in claim 16, Wherein said uni?ed messaging facility includes an e-mail message facility.

18. A system as claimed in claim 17, Wherein said uni?ed messaging facility further includes a faX message manage ment facility.

19. A system as claimed in claim 18, Wherein said uni?ed messaging facility further includes a voice message facility.

20. A system for providing access to a personal computer from a remote computer, the personal computer being linked to the Internet, the location of the personal computer on the Internet being de?ned by either a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the personal computer being further linked to a data communication facility, the data communication facility being adapted to create and send a communication that includes a then current dynamic public IP address (publicly addressable) or dynamic LAN IP address (publicly un-addressable) of the personal computer, the system comprising:

(a) a locator server computer linked to the Internet, its location on the Internet being de?ned by a static IP address, and including a location facility for locating the personal computer;

Wherein the remote computer is also linked to the Internet, the remote computer including a communication facility, the communication facility being adapted to create a request for communication With the personal computer, and send the request for communication to the locator server computer; Wherein, the data communication facility is operable to access data corresponding to the static IP address of the locator server computer, thereby enabling the data commu nication facility to create and send on an intermittent basis one or more communications to the locator server computer

that include the then current dynamic public IP address or dynamic LAN IP address of the personal computer; and

Wherein the locator server computer is operable to act as an intermediary betWeen the personal computer and the remote computer by creating one or more communica tion sessions there betWeen, said one or more commu nication sessions being created by the location facility, in response to receipt of the request for communication With the personal computer from the remote computer, by determining the then current location of the personal computer and creating a communication channel betWeen the remote computer and the personal com puter, the location facility being operable to create such communication channel Whether the personal computer is linked to the Internet directly With a (publicly addres sable) dynamic IP address or indirectly via an Internet gateWay/proXy (With a publicly un-addressable dynamic LAN IP address).

21. A method of providing access to a personal from a remote computer, the personal computer being linked to the

A1819

US 6,928,479 B1 13

Internet, its location on the Internet being de?ned by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the method comprising the steps of:

(a) providing a data communication facility on the per sonal computer, the data communication facility being adapted to create and send a communication that includes a then current dynamic public IP address (publicly addressable) or dynamic LAN IP address (publicly un-addressable) of the personal computer;

(b) by operation of the data communication facility: (i) obtaining the static IP address for a locator server

computer, that includes a location facility for locat ing the personal computer;

(ii) sending the communication that includes the then current dynamic public IP address (publicly addres sable) or dynamic LAN IP address (publicly un addressable) of the personal computer to the locator server computer;

(c) receiving a request from the remote computer at the locator server computer to communicate With the per sonal computer;

(d) in response to the request, the locator server computer acting as an intermediary betWeen the personal com puter and the remote computer by creating one or more communication sessions there betWeen, said one or more communication sessions being created by the location facility, in response to receipt of the request for communication With the personal computer from the remote computer, by determining the then current loca tion of the personal computer and creating a commu nication channel between the remote computer and the personal computer, the location facility being operable to create such communication channel Whether the personal computer is linked to the Internet directly With a (publicly addressable) dynamic IP address or indi rectly via an Internet gateWay/proXy (With a publicly un-addressable dynamic LAN IP address).

22. The method claimed in claim 21, further comprising the step of the locator server computer storing the current location of the personal computer into a directory linked to the location facility, the current location being obtained from a communication sent by the personal computer to the locator server computer.

23. Acomputer readable memory having recorded thereon statements and instructions for execution by a computer to carry out the method of claim 21.

24. A computer program product for use on a server computer linked to the Internet and having a static IP address, for providing access to a personal computer from a remote computer, the personal computer being linked to the Internet, its location on the Internet being de?ned by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the computer program product comprising:

(a) a computer usable medium; (b) computer readable program code recorded or storable

in the computer useable medium, the computer read able program code de?ning a server computer program on the server computer Wherein: (i) the server computer program is operable to enable a

connection betWeen the remote computer and the server computer; and

(ii) the server computer program includes a location facility and is responsive to a request from the remote computer to communicate With the personal computer to act as an intermediary betWeen the

10

15

25

35

40

45

55

65

14 personal computer and the remote computer by cre ating one or more communication sessions there

betWeen, said one or more communication sessions

being created by the location facility, in response to receipt of the request for communication With the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel betWeen the remote computer and the personal com puter, the location facility being operable to create such communication channel Whether the personal computer is linked to the Internet directly (With a publicly addressable) dynamic IP address or indi rectly via an Internet gateWay/proXy (With % pub licly un-addressable dynamic LAN IP address).

25. The computer program product claimed in claim 24, Wherein the location facility is responsive to a communica tion from the personal computer including its current loca tion to store the current location to a storage medium linked to the server computer.

26. A computer program product for use on a personal computer for providing access to the personal computer from a remote computer, the personal computer being linked to the Internet, its location on the Internet being de?ned by either a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly un-addressable), the computer program product comprising:

(a) a computer usable medium; (b) computer readable program code recorded or storable

in the computer useable medium, the computer read able program code de?ning a data communication program on the personal computer Wherein:

(i) the data communication program is operable to send a communication to a locator server computer, Wherein the locator server computer is linked to a location facility and includes data for locating the personal computer; and

(ii) the data communication program is operable to communicate With the remote computer, the locator server computer acting as an intermediary betWeen the personal computer and the remote computer by creating one or more communication sessions there betWeen, said one or more communication sessions being created by the location facility, in response to receipt of a request for communication With the personal computer from the remote computer, by determining a then current location of the personal computer and creating a communication channel betWeen the remote computer and the personal com puter, the location facility being operable to create such communication channel Whether the personal computer is linked to the Internet directly (With a publicly addressable) dynamic IP address or indi rectly via an Internet gateWay/proXy (With a publicly un-addressable dynamic LAN IP address).

27. The computer program product as claimed in claim 26, Wherein the personal computer is linked to the Internet directly or indirectly via an Internet gateWay/proXy.

28. A computer program product as claimed in claim 27, Wherein the personal computer is linked to a database linked to the data communication program, and said system pro vides means for remotely accessing said database linked to the personal computer from the remote computer.

29. A computer program product as claimed in claim 28, Wherein said data communication program enables commu

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Case 1:10-cv-01007-CMH -TRJ Document 153 Filed 08/02/12 Page 1 of 14 PageID# 3867

A5101

~--------~--~--re ~ L re ~~

Wntteb ~tates QC:ourt of ~peal for tbe jf eberal QC:trcutt

01 COMMUNIQUE LABORATORY, INC., Plaintiff-Appellant,

v.

LOGMEIN, INC., Defendant-Appellee.

2011-1403

lr \ AUG - 2_1011 \ lW CLERK. US iJ:s-;i'rCT COURT

ALEXAN:-lr'\IA V: RGI~.

Appeal from the United St ates District Court for the Eastern District of Virginia in Case No. 10-CV-1007, Senior Judge Cla ude M. Hilton

Decided: July 31, 2012

THOMAS H. SHUNK, Baker H ostetler LLP, of Cleveland, Ohio, argued for pla intiff-appellan t . With him on the brief were THOMAS D. WARREN, CHRISTINA J. MOSER; and KENNETH J . SHEEHAN, WILLIAM C. BERGMANN and A. NEAL SETH, ofWashington , DC.

WAYNE L. STONER, Wilmer Cutle r Pickering H ale and Dorr, LLP, of Boston , Massachusetts, argued for defendantappellee. With him on the brief were VINITA FERRERA, ARTHUR W. COVIELLO an d ALEXANDRA W. AMRHEIN.


A5102

01 COMMUNIQUE LAB v. LOGMEIN 2

Before RADER, Chief Judge, WALLACH, Circuit Judge, and FOGEL, District Judge.*

FOGEL, District Judge.

Plaintiff-Appellant 01 Communique Laboratory, Inc. ("01 Communique") appeals a decision of the United States District Court for the Eastern District of Virginia granting summary judgment of noninfringement in favor of Defendant LogMeln, Inc. ("LogMein"). The district court's decision was based on the construction of a single claim term -"location facility" - contained in the patent-in-suit. Because we conClude that the district court's construction of this term was erroneous, we vacate the judgment and remand for further proceedings.

I.

01 Communique is the owner of U.S. Patent No. 6,928,479 ("the '479 Patent" or "the patent"), which relates to technology that enables one computer to access another computer remotely via the Internet. The patent contains five independent claims describing systems, methods, and products for enabling such remote access, as well as numerous claims dependent therefrom. In broad outline, the patent discloses use of a "locator server computer" as an intermediary between a "remote computer" (the computer seeking access) and a "personal computer" (the computer to be accessed). See, e.g., '479 Patent col. 1111. 1-3, col. 12 11. 50-52, col. 13 11. 23-25, col. 131. 64-col. 141. 1, col. 1411. 41-43. The locator server computer "includes" software, re-

Honorable Jeremy Fogel, District Judge, United States District Court for the Northern District of California, sitting by designation.


A5103

3 01 COMMUNIQUE LAB v. LOGMEIN

ferred to in the patent as a "location facility," that inter alia locates the personal computer. See, e.g., id. col. 10 11. 51-53, col. 12 II. 36-37, col. 13 11. 13-14. Representative claim 1 recites:

1. A system for providing access to a personal computer having a location on the Internet defined by a dynamic IP addres~ from a remote computer, the system comprising:

(a) a personal computer linked to the Internet, its location on the Internet being defined by either (i) a dynamic public IP address (publicly addressable), or (ii) a dynamic LAN IP address (publicly unaddressable), the personal computer being further linked to a data communication facility, the data communication facility being adapted to create and send a communication that includes a then current dynamic public IP address (publicly addressable) or dynamic LAN IP address (publicly un-addressable) of the personal computer;

(b) a locator server computer linked to the Internet, its location on the Internet being defined by a static IP address, and including a location facility for locating the personal computer; and

(c) a remote computer linked to the Internet, the remote computer including a communication facility, the communication facility being operable to create a request for communication with the personal computer, and send the request for communication to the locator server computer;

wherein the data communication facility includes data corresponding to the static IP address of the lo-


A5104

01 COMMUNIQUE LAB v. LOGMEIN

cator server computer, thereby enabling the data communication facility to create and send on an intermittent basis one or more communications to the locator server computer that include the then current dynamic public IP address or dynamic LAN IP address of the personal computer; and

wherein the locator server computer is operable to act as an intermediary between the personal computer and the remote computer by creating one or more communication sessions there between, said one or more communication sessions being created by the location facility, in response to receipt of the request .f0r communication with the personal computer from the remote computer, by determining the then current location of the personal computer and creating a communication channel between theremote computer and the personal computer, the location facility being operable to create such communication channel whether the personal computer is linked to the Internet directly (with a publicly addressable) dynamic IP address or indirectly via an Internet gateway/proxy (with a publicly unaddressable dynamic LAN IP address).

4

'479 Patent col. 10 1. 38-col. 111. 15 (emphasis added to the disputed claim term).

01 Communique asserts infringement of the patent by LogMeln, a company that develops and markets remote access products. In its order dated May 4, 2011, the district court determined that all of the allegedly infringed claims of the '4 79 Patent require "a 'locator server computer' that 'includes a location facility."' See 01 Communique Lab., Inc. v. LogMeln, Inc., No. 1:10cv1007, 2011 WL 1740144, at *1


A5105


(E.D. Va. May 4, 2011) ("Order"). It then construed "location facility" as:

a component of a locator server computer that itself: 1) creates communication sessions between a re

mote computer and personal computer; 2) receives a request for communication with the personal computer from the remote computer; 3) locates the personal computer (and "determines the then location of the personal computer"); and 4) creates a communication channel between a remote computer and the personal computer.

Id. at *4.

The district court concluded that the location facility must be contained on a single physical computer, relying primarily upon a perceived disclaimer in the prosecution history of a construction that would encompass distribution of the location facility among multiple computers. Because it determined that "[t]he LogMein system does not contain any component that itself performs all the four functions required of the location facility under the Court's construction of the term," the district court held as a matter of law that LogMein does not infringe the '479 Patent. Id. at *6-7. 01 Communique appeals the district court's construction of

the term "location facility'' and the resulting grant of summary judgment of noninfringement. We have jurisdiction under 28 U.S. C. § 1295(a)(l).

II.

"[W]e review a district court's claim construction de novo." Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011). "To ascertain the scope and meaning of the asserted claims, we look to the words of


A5106


the claims themselves, the specification, the prosecution history, and, if necessary, any relevant extrinsic evidence." Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1366 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir. 2005) (en bane)).

Infringement is a question of fact. Absolute Software, 659 F. 3d at 1129-30. "On appeal from a grant of summary judgment of non-infringement, we determine whether, after resolving reasonable factual inferences in favor of the patentee, the district court correctly concluded that no reasonable jury could find infringement." Id. at 1130.

III.

Although the district court's order refers to the location facility as a "device," 1 the parties agree that the location facility is software that runs on the locator server computer. There is no indication in the specification that the location facility is a physical device rather than software. The terms "facility" and "program" are used interchangeably in the specification, suggesting that the "facilities" referenced throughout the patent are software, rather than hardware, components. See '479 Patent col. 7 11. 42-43 (discussing a "data communication program or facility"); id. col. 1011. 11-12 (referring to "computer program facilities"). As will become apparent, the district court's understanding of the location facility as a "device" may explain its ultimately erroneous construction of the term.

I See Order at *6 (stating that "nothing in LogMeln's accused products is a location facility as required by all of Ol's asserted claims: a device that itself receives a request for communication with a personal computer, locates the personal computer, and creates a communication channel between a remote computer and a personal computer") (emphasis added).


A5107


The parties also agree that the location facility performs the four functions enumerated in the district court's claim construction. See '479 Patent col. 1111. 3-10. 01 Communique argues that because those functions are set forth expressly in the claim, it would be "redundant and unnecessary" to incorporate them into the construction of "location facility." However, 01 Communique has not cited, and we have not discovered, any authority for the proposition that construction of a particular claim term may not incorporate claim language circumscribing the meaning of the term. The claim language makes clear that the location facility in fact does perform the functions in question. The district court correctly incorporated those functions into its claim construction:

Having addressed these preliminary matters, we now take up the issue upon which this appeal turns - whether the location facility must be contained entirely on a single locator server computer as held by the district court and asserted by LogMein, or whether it may be distributed among multiple locator server computers as asserted by 01 Communique. LogMeln argues that the district court's construction is supported by the fact that the claims refer to the locator server computer in the singular. It points to language such as the following: "a locator server computer linked to the Internet, its location on the Internet being defined by a static IP address." '479 Patent col. 10 11. 51-53 (emphasis added); see also id. col. 10 11. 61-62 ("the data communication facility includes data corresponding to the static IP address of the locator server computer") (emphasis added). LogMeln asserts that "because 'its' and 'the' are singular terms, the claimed 'location facility' must be a software component that is included within a single locator server computer."


A5108


LogMeln's argument is at odds with our wellestablished precedent. "As a general rule, the words 'a' or 'an' in a patent claim carry the meaning of 'one or more."' TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F. 3d 1290, 1303 (Fed. Cir. 2008). "The exceptions to this rule are extremely limited: a patentee must evince a clear intent to limit 'a' or 'an' to 'one."' Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F. 3d 1338, 1342 (Fed. Qir. 2008) (internal quotation marks and citation omitted): "The subsequent use of definite articles 'the' or 'said' in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning." Id. An exception to the general rule arises only "where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule." Id. at 1342-43.

Here, nothing in the claim language or the specification compels a departure from the general rule. The patent's use of words such as "a," "its," and "the" in the claims is insufficient to limit the meaning of "locator server computer" to a single physical computer. LogMeln claims that such a limitation is supported by the specification, noting that some figures show the location facility 6 as part of a single locator server computer 12. See '479 Patent Figs. 1-2. However, the fact that a locator server computer is represented by a single box in some of the figures does not "necessitate" a departure from the general rule that "a" locator server computer may mean "one or more" locator server computers. More to the point, the specification also discloses expressly that "Server Computer 12 may comprise one or more computers, as is well known." Id. col. 5 ll. 24-25.

LogMeln contends that this language is not sufficiently particular to show how the location facility would operate on


A5109


more than one computer. The specification discloses that "a number of computer program facilities are described in this invention as separate facilities for the sake of describing the invention. However, it should be understood that ... such facilities can be sub-divided into separate facilities." '4 79 Patent col. 10 II. 11-16. Read together, the disclosures that facilities may be subdivided and that the locator server computer may comprise multiple computers support a construction that the "iocation facility may be distributed among multiple physical computers. Even if we were to conclude that the specification is ambiguous on this point, such ambiguity hardly is evidence of the clear intent necessary to overcome the effect of the general rule of claim construction applicable here.

IV.

"When the patentee makes clear and unmistakable prosecution arguments limiting the meaning of a claim term in order to overcome a rejection, the courts limit the relevant claim term to exclude the disclaimed matter." SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005). "A patentee's statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer." Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012). "An ambiguous disclaimer, however, does not advance the patent's notice function or justify public reliance, and the court will not use it to limit a claim term's ordinary meaning." Sandisk, 415 F.3d at 1287. "There is no 'clear and unmistakable' disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of which is consistent with a proffered meaning of the disputed term." Id.


A5110


In 2007, third party Citrix Systems ("Citrix") requested inter partes reexamination of the '479 Patent. On reexamination, the U.S. Patent and Trademark Office initially rejected all of the patent's claims as unpatentable over prior art, but on July 6, 2010, it issued a Right of Appeal Notice withdrawing the rejections as to the particular claims at issue here. The district court concluded that "[d]uring the re-examination of the ~479 Patent, 01 clearly and ambiguously [sic] disclaimed having more than one device perform the functions of the location facility." Order at *4 (emphasis in original). It appears that the district court understood this to mean that 01 Communique disclaimed a system, method, or product in which the location facility is distributed among·multiple locator server computers. This conclusion is not supported by the record.

The district court relied upon statements made by 01 Communique's expert, Dr. Gregory Ganger, during the reexamination process. Dr. Ganger opined that in the patented invention the location facility creates a communication channel between the remote computer and the personal computer, and that this "create" limitation would not be satisfied by a location facility "that is simply used by some other component that creates the communication channel." Joint Appendix ("JA") 18002. Dr. Ganger emphasized that "the location facility, itself, [must] create the communication channel." Id. The district court apparently read these statements to disclaim distribution of the location facility among multiple computers. See Order at *4. However, Dr. Ganger's statements addressed another point entirely - he was differentiating between technology in which the location facility itself creates the communication channel and technology in which some component other than the location facility creates the communication channel. JA 18002-03. Dr. Ganger then distinguished the patented invention - in which the location facility creates


A5111


the communication channel- from prior art in which another component, such as the remote computer or personal computer, uses the location facility to create the communication channel. JA 18008-09, 18015. Dr. Ganger did not address whether the location facility must be contained on a single locator server computer or may be distributed among multiple locator server computers.

LogMein asserts tliat 01 Communique disclaimed distribution of the location facility among multiple computers in order to avoid rejection based upon two prior art references, referred to herein collectively as "Crichton."2 Dr. Ganger described Crichton as disclosing technology in which three separate components - a "middle proxy" sandwiched between two "end proxies" - establish the connection between the remote computer and the personal computer. JA 18006-07. Dr. Ganger opined that the middle proxy of Crichton corresponds to the location facility of the '479 Patent. Id. However, he also concluded that the middle proxy does not determine the location of the personal computer, as is taught by the '479 Patent, but instead determines the location of an end proxy, which then determines the location of the personal computer. JA 18007. The examiner agreed, JA 27677-78,27692, and found the subject claims patentable over Crichton and other prior art of record on the basis that, "the prior art fails to teach or suggest that the location facility determines the then current location of the personal computer and creates a communication channel between the remote computer and the personal computer," JA 27696. Nothing in the record suggests a disclaimer based upon Dr. Ganger's statements. As

2 The patents comprising the Crichton reference are U.S. Patent No. 6,104,716 A and U.K. Patent No. GB2323757. JA 27671. They are not included in the record.


A5112


noted earlier, the district court's understanding of the location facility as a "device" may have led to its erroneous conclusion to the contrary.

Finally, LogMein contends that 01 Communique's cancellation of claim 49 following its rejection by the examiner effectively disclaimed a subdivided location facility that is distributed among multiple computers. During reexamination, 01 Communique j)roposed several new claims (including claim 49) that defined "locator server computer" to encompass multiple computers. JA 6102-06. The record does not include all pages of the August 19, 2009 Action Closing Prosecution in which those claims were rejected. However, it ·appears that all of the claims that disclosed multiple locator server computers depended from claims 473, 52, 58, 63, and 69, which recited a limitation that the locator server computer verifies the personal computer's Internet connection. JA 28151. Because the specification disclosed that the personal computer verifies its own Internet connection, the examiner concluded that claims 47, 52, 58, 63, and 69, and claims dependent therefrom, failed to comply with the written description requirement of 35 U.S.C. § 112. Id.

The examiner found that there was an additional basis to conclude that claims 49, 54, 60, 65, 71, and 75- comprising some, but not all, of the claims disclosing multiple locator server computers -failed to comply with the written description requirement. JA 28151. Those claims recited a limitation that the second locator server computer facilitates one or more communication sessions between the

3 The examiner indicated that claims 49-51 depended from claim 48. JA 28151. Claim 48 depended from claim 47. JA 6104.


A5113


remote computer and the personal computer but does not locate the personal computer. I d. The examiner found that the specification failed to suggest that the second locator server computer does not perform the locate function. Id. However, the examiner stated expressly that other claims disclosing multiple locator server computers- in particular, claims 48, 53, 59, 64, 70, and 7 4 - "are fully supported by the specification of the '479 Patent." JA 28161. Specifically, the examiner conclude.d that, "the disclosure of the '479 Patent has never defined that the locator server computer or server computer comprises a singular component," and that to the contrary, "the specification of the '479 Patent clearly defines that the server computer comprises one or more computers at col. 5, lines 24-25." JA 28159. This record does not support LogMeln's position as to the effect of 01 Communique's cancellation of claim 49.

Accordingly, we construe the term "location facility" as4 :

Software on a locator server computer that: (1) receives a request for communication with the personal computer from the remote computer; (2) determines the then current location of the personal computer; (3) creates a communication channel between the remote computer and the personal com-

4 This construction includes the same four functions enumerated by the district court, although the functions have been rephrased to track the claim language more closely, and have been listed in a different order. However, the construction omits the word "itself," which the district court imported from Dr. Ganger's discussion of the location facility's "create" function. We believe that the word is unnecessary to construction of the term "location facility," and that use of a singular pronoun might suggest misleadingly that all of the functions of the location facility must be performed on a single computer, despite our explicit construction to the contrary.


A5114

01 COMMUNIQUE LAB v. LOGMEIN

puter; and (4) creates one or more communication sessions between the remote computer and the personal computer. The locator server computer may comprise one or more computers, and the location facility may be distributed among one or more locator server computers.

v.

14

The district court found that LogMeln's accused products use multiple server computers, and that no single one of those computers performs all of the functions of the location facility. Order at *6-7. It therefore concluded that LogMeln' s p.roducts could not infringe the '4 79 patent under its claim construction, which required that the location facility be contained on a single computer. Because the district court's ruling was based upon an erroneous claim construction, we vacate the summary judgment of noninfringement.

VACATED and REMANDED.

Each party shall bear its own costs.

Case 1:10-cv-01007-CMH -TRJ Document 153-1 Filed 08/02/12 Page 1 of 1 PageID# 3881

A5115

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

OPJNlON ANNOUNCING .JUDGMENT OF Tl-ill COURT

OPINION FILED AND JUDGMENT ENTERED: 07/31/ 12

RE~III"'O MJ\ILROOM

~- 2 2012

CLERK, U.S. DISTRICT COUR'r A~AN lA VIRGINIA

The attached opinion announcing the judgment of the court in your case was fi led today. The judgment was entered pursuant to Rule 36. The mandate wi ll be issued in due course.

Information is also provided about petitions for rehearing and suggestions for rehearing en bane. The questions and answers are those frequently asked and answered by the Clerk's Office.

Each s ide shall bear its o\vn costs.

Regarding exl1ibits and visual aids: Your attention is directed to FRAP 34(g) which states that the clerk may destroy or dispose of the exhibits if counsel does not reclaim them w ithin a reasonable time after the clerk g ives notice to remove them. (The Clerk deems a reasonable time to be I 5 days from the date the

final mandate is issued.)

cc: Thomas H. Shuuk Wayne L. Stoner

01 COMMUNIQUE LAB V LOGMEIN, 2011- 1403 DCT- EDNA, I 0-CV - I 007

JAN HORBALY Clerk

brief of plaintiff-appellant 01 communique … of plaintiff-appellant 01... · for the eastern...

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