Microsoft Corp. v. Multi-Tech Systems, Inc.
| Citation | 357 F.3d 1340 |
| Decision Date | 03 February 2004 |
| Docket Number | No. 03-1139.,No. 03-1138.,03-1138.,03-1139. |
| Parties | MICROSOFT CORPORATION, Plaintiff-Appellee, v. MULTI-TECH SYSTEMS, INC., Defendant-Appellant. Multi-Tech Systems, Inc., Plaintiff-Appellant, v. Net2Phone, Inc., Defendant-Appellee. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Constantine L. Trela, Jr., Sidley Austin Brown & Wood, of Chicago, IL, argued for plaintiff-appellee 03-1138, Microsoft Corporation. With him on the brief were David T. Pritikin, Richard A. Cederoth, Douglas I. Lewis, and Russell E. Cass.
Ronald J. Schutz, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, MN, argued for plaintiff-appellant in 03-1139, Multi-Tech Systems, Inc., and defendant-appellant in 03-1138, Multi-Tech Systems, Inc. With him on the brief were Emmett J. McMahon, Ken R. Hall, and Misti Nelc.
Michael R. Casey, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, VA, argued for defendant-appellee in 03-1139, Net2Phone, Inc. With him on the brief were Richard D. Kelly and Derek Richmond. Of counsel was Kenneth T. Cuccinelli, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Arlington, VA.
Before LOURIE, RADER, and BRYSON, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE. Dissenting opinion filed by Circuit Judge RADER.
Multi-Tech Systems, Inc. appeals from the order of the United States District Court for the District of Minnesota entering final judgment of noninfringement of U.S. Patents 5,600,649; 5,764,627; and 5,790,532 in favor of Microsoft Corporation. Microsoft Corp. v. Multi-Tech Sys., Inc., No. 00-CV-1412 ADM/RLE (D.Minn. Oct. 23, 2002) ("Microsoft Final Judgment"). Multi-Tech also appeals from that same court's order entering final judgment of noninfringement of the '649 and '627 patents in favor of Net2Phone, Inc. Multi-Tech Sys., Inc. v. Net2Phone, Inc., No. 00-CV-1627 ADM/RLE (D.Minn. Oct. 31, 2002) ("Net2Phone Final Judgment"). Since these appeals involve the same patents, we will consider both appeals together. Because we conclude that the district court did not err in its controlling claim construction, we affirm.
Multi-Tech owns five patents directed to personal computer-based systems and methods for simultaneously transmitting voice and/or computer data to a remote site over a telephone line. All five patents derive from the same parent application, which issued as U.S. Patent 5,452,289, and share a common specification. Only three patents are at issue in this appeal: the '649 patent, the '627 patent, and the '532 patent.
The '649 patent, which is entitled "Digital Simultaneous Voice and Data Modem," is directed to methods and modules for the simultaneous transmission of voice and computer data. Claim 1 recites a method for communication of voice and data information in which outgoing computer digital data are packetized into computer data packets having headers and outgoing voice signals are received from a local user, converted into digital voice data, compressed, and packetized into voice data packets having headers. The voice and computer data packets are then multiplexed together and transmitted as an outgoing packet stream. Conversely, incoming voice and computer data packets are received, demultiplexed, and depacketized, with the incoming voice data further being decompressed and converted into remote voice signals that are conveyed to the local user. '649 patent, col. 46, l. 56 to col. 47, l. 25. The following steps recited in claim 1 are at issue in this appeal:
placing headers on each of the compressed outgoing digital voice packets;
placing headers on each of the computer digital data packets;
multiplexing the compressed outgoing digital voice data packets with outgoing computer digital data packets to produce an outgoing packet stream;
transmitting the outgoing packet stream;
receiving multiplexed incoming data which contains incoming computer digital data packets multiplexed with the compressed incoming digital voice data packets; and
demultiplexing the incoming computer digital data packets and the compressed incoming digital voice data packets.
Id. at col. 47, ll. 5-25 (emphases added).
The '627 patent, which is entitled "Method and Apparatus for a Hands-Free Speaker Phone," is directed to systems and methods for transmitting packetized voice data between a local site and a remote site. Claim 1 recites:
A communication system, comprising:
a hands-free speaker phone operable for receiving local analog voice signals with a microphone and for playing remote analog voice signals through a speaker;
codec means connected to the hands free speaker phone for digitizing the local analog voice signals to produce local digital voice signals and for decoding remote digital voice signals to produce remote analog voice signals;
means for placing the local digital voice signals into outgoing packets having headers and for removing the remote digital voice signals from incoming packets having headers; and
a modem connected to a telephone line for receiving the incoming packets from a remote site and for sending the outgoing packets to the remote site in full duplex communication mode.
'627 patent, col. 46, ll. 37-53 (emphases added). Claims 2 and 5 depend from claim 1, adding the further limitation that the "hands-free speaker phone" include a "deskset" or "headset" microphone and speaker. Id. at col. 46, l. 55 to col. 47, l. 2. Claim 7 recites a method for operating a "full-duplex speaker phone" in which analog voice signals from a local site are received, digitized, placed into outgoing packets having headers, and then sent "to a remote site over a telephone line using a modem." At the same time, incoming voice data packets are "received through the modem from the remote site." Digital voice signals are then removed from the incoming packets and decoded to produce analog voice signals, which are played at the local site. Id. at col. 47, ll. 7-23. Similarly, claim 13 recites a method for performing "full-duplex hands-free speaker phone operation" in which outgoing voice signals are received from a local user, converted into digital voice data, compressed, packetized into voice data packets having headers, and transmitted "on a communication line using a modem." Incoming voice data packets are received "from the communication line," depacketized, decompressed, converted into analog voice signals, and conveyed to the local user. Id. at col. 48, ll. 23-47.
The '532 patent, which is entitled "Voice Over Video Communication System," is directed to a system and method for the simultaneous transmission of voice and video data. Claim 11 recites a method for "full duplex transmission of voice and video data information" in which voice signals are received from a local user, converted into digital voice data, compressed, and packetized into voice data packets. The voice data packets are then multiplexed with video data packets and transmitted as an outgoing packet stream. At the same time, incoming voice and video data packets are received and demultiplexed, with the incoming voice data packets further being depacketized, decompressed, converted into remote voice signals, and then conveyed to the local user. '532 patent, col. 48, l. 52 to col. 49, l. 13. The following steps recited in claim 11 are at issue in this appeal:
multiplexing the compressed outgoing digital voice data packets with outgoing video data packets to produce an outgoing packet stream;
transmitting the outgoing packet stream;
receiving multiplexed incoming data which contains incoming video data packets multiplexed with the compressed incoming digital voice data packets; and
demultiplexing the incoming video data packets and the compressed incoming digital voice data packets.
Id. at col. 49, ll. 4-13 (emphases added).
During prosecution of the '627 patent, the examiner rejected all of the pending claims under 35 U.S.C. § 103(a) as obvious over U.S. Patent 5,341,374 ("Lewen") in view of U.S. Patent 4,912,758 ("Arbel"). On May 9, 1997, Multi-Tech filed a response to that office action in which it distinguished Lewen, which discloses a local area network that integrates voice, data, and image information over a single transmission link, by arguing that the claimed voice packets "proceed directly from the communications system through the [telephone] line to a receiving communications system at the other end of the line." Multi-Tech also described its specification as disclosing "a communications system which operates over a standard telephone line[, which] establishes a point-to-point connection between telephone equipment on each end of the line." Notwithstanding Multi-Tech's arguments, the examiner again rejected the claims as obvious over Lewen in view of Arbel. On November 4, 1997, Multi-Tech amended the claims that issued as claims 1 and 13 of the '627 patent to require a modem, explaining that the claimed "voice packets are sent through a point-to-point modem connection between sites." Both of Multi-Tech's responses to the examiner's office actions were filed in the United States Patent and Trademark Office ("PTO") after the '649 patent had issued but before the '532 patent issued.1
On February 15, 2000, Multi-Tech filed suit against Net2Phone in the United States District Court for the District of Minnesota for infringement of the '289, '649, and '627 patents as well as U.S. Patent 5,471,470. On June 9, 2000, Microsoft filed suit against Multi-Tech in that same court, seeking a declaratory judgment of noninfringement, invalidity, and unenforceability of seven Multi-Tech patents. Multi-Tech filed a counterclaim alleging that Microsoft infringed the '289, '470, '649, '627, and '532 patents.
In August 2002, the district court construed the disputed claim terms for the two cases in a single Markman order. Microsoft Corp. v. Multi-Tech Sys. Inc., Civil Nos. 00-1412 ADM/RLE, 00-1627 ADM/R...
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