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In Re Katz Interactive Call Processing Patent Litigation
Citation: 712 F. Supp. 2d 1080Docket: Case No. 07-CV-2134-RGK (FFMx). Case No. CV 2:07-ML-01816-B-RGK (FFMx)
Court: District Court, C.D. California; May 5, 2010; Federal District Court
Ronald A. Katz Technology Licensing, L.P. (Katz) has initiated multiple lawsuits claiming infringement of its interactive call processing patents, with this specific case being part of a consolidated group designated as B cases in the United States District Court for the Central District of California. The court previously limited Katz to asserting sixteen claims against each defendant group and has ruled several claims invalid due to obviousness or lack of written description under 35 U.S.C. § 103 and § 112, respectively. Currently, Katz has nine claims remaining against Charter Communications and its affiliates, specifically targeting various claims from five patents. Following Charter's bankruptcy filing on March 27, 2009, the proceedings against it were stayed, and no motions were ruled upon regarding Charter during that period. After Charter's emergence from bankruptcy, the court reopened the case on February 4, 2010. Charter now seeks summary judgment on seven claims, arguing their invalidity under 35 U.S.C. § 112. Charter's motion for summary judgment asserts it does not infringe any of the nine remaining claims and contends that the doctrine of laches bars the plaintiff's entire claim. Conversely, Katz seeks summary judgment on issues of infringement and challenges Charter's affirmative defenses of estoppel, laches, and prosecution laches. The judicial standard for granting summary judgment requires that there be no genuine issue of material fact and that the movant is entitled to judgment as a matter of law, as outlined in Federal Rule of Civil Procedure 56. A genuine dispute exists only if reasonable evidence could lead a jury to favor the nonmoving party. The opposing party must present specific facts instead of mere allegations to demonstrate a genuine issue for trial. Charter's defenses include a claim of indefiniteness based on 35 U.S.C. § 112, asserting that certain claims lack clarity and cannot be understood by a skilled person in the field. Charter argues that several claims are indefinite for three reasons: (1) the specifications do not provide an algorithm as required by relevant case law, (2) some claims improperly mix apparatus and method limitations, and (3) a term in one claim is argued to be insolubly ambiguous. The court previously granted a motion to strike parts of Charter's arguments for lack of disclosure during discovery but later partially reconsidered this decision, leaving the issue of the indefiniteness of claim 5 of the '223 patent based on the algorithm requirement as the only remaining point for determination. The Court addressed the issue of indefiniteness in relation to AOL's motion for summary judgment, specifically citing the legal standard under 35 U.S.C. § 112.2, which requires that claims distinctly point out the invention. For a claim to be considered indefinite, it must be "insolubly ambiguous," and a person skilled in the art should understand it within the context of the specification. The presumption of validity means that a claim is valid unless proven otherwise. The Court emphasized that indefiniteness is a legal matter for judicial determination. The "means for individually cueing" limitation is classified as a means-plus-function limitation under 35 U.S.C. § 112.6, which involves interpreting the function recited and the corresponding structures disclosed in the specification. If a structure is only described as a general-purpose computer, it does not satisfy the requirements of § 112.6, leading to potential indefiniteness. A specific algorithm must be disclosed for the corresponding structure to validate a means-plus-function claim. The contested limitation involves the function of "individually cueing said callers of said select subset to prompt digital signals." Two main disputes arose: whether the interface processor 26 is a general-purpose or special-purpose processor, and whether the patent specification provides sufficient algorithms to perform the claimed function. Charter argues that the processor is general-purpose, citing a previous ruling from February 21, 2008, which established that the structure performing functions in related patents was the same interface processor. Katz did not assert that the processor was special-purpose during earlier proceedings but claimed that for an algorithm to be essential in claim construction, it must be disclosed and novel. The prior ruling rejected Katz's stance, thereby leading Charter to conclude that the Court had determined the interface processor was indeed a general-purpose computer. Charter contends that WMS Gaming applies, necessitating the '223 patent to disclose an algorithm that facilitates "individually cueing said callers of said select subset to prompt digital signals." Katz counters by asserting that the interface processor 26 is a special purpose processor, as characterized by Dr. Brody, who describes it as dedicated to interfacing with the telephone facility. Dr. Brody supports his view with a passage from the '223 patent detailing how the interface processor activates a voice generator upon receiving a call, thereby delivering an audio message to the caller. He argues that a skilled individual would recognize the interface processor as integral to a Voice Response Unit (VRU), a known special purpose device. The Court, however, determines that the interface processor 26 is a general purpose processor and notes that both parties previously assumed this characterization. Katz's attempt to redefine the processor as special purpose follows the Court's rejection of its novelty argument and is deemed untimely. Even if reconsidered, the evidence does not support Katz’s position, as the cited patent passage merely explains the processor's function, not its classification. Dr. Brody's assertion regarding the VRU's nature is seen as irrelevant since the issue at hand is the classification of the interface processor. As a result, the Court concludes that the WMS Gaming rule is applicable, requiring the '223 patent to disclose algorithms for the cueing function. Katz's references to step 72 of Figure 2 and other patent passages fail to qualify as algorithms, merely indicating that questions are posed to callers. Consequently, the Court grants Charter's motion for summary judgment, declaring claim 5 of the '223 patent invalid due to indefiniteness. Additionally, regarding the '415 patent, Charter's argument for invalidity based on lack of written description is dismissed due to prior procedural rulings, preventing the Court from addressing its merits. On the infringement front, Charter asserts that its Customer Service System does not infringe various claims of the '150, '762, and '707 patents. Katz's motion for summary judgment seeks a ruling on infringement concerning claims 10 and 11 of the '150 patent. Under 35 U.S.C. § 271, patent infringement liability applies to anyone who makes, uses, offers, sells, or imports a patented invention without the patentee's permission. The scope of a patentee's rights is defined by the patent's claims, requiring a two-step process for infringement determination: first, the court must legally define the claims' meanings, then assess whether the accused product infringes these claims. The determination of infringement is a factual question, but summary judgment can be granted if no genuine material fact disputes exist. The patentee must prove infringement by a preponderance of evidence, which can be established through literal infringement or under the doctrine of equivalents. Literal infringement necessitates that every limitation of the claim appears in the accused product exactly. Charter presents four arguments against infringement for claims 10 and 11, which describe a process for interfacing a telephonic communication system with a data processing system that processes data from remote terminals in multiple formats. Claim 10 outlines a process that includes receiving call data signals, selecting a processing format based on these signals, testing the selected format, and conditionally interfacing it to a calling terminal. Claim 11 expands on claim 10 by including a step of fetching control data related to the call data for testing purposes. Both parties agree that claim 10 requires multiple formats, which the Court previously defined as a call processing flow defined by a computer program that dictates the content and sequence of steps for handling information from callers. Selection or branching to a module or subroutine within a computer program does not equate to selecting a separate format, nor does a first program selecting a second program in a call process flow application. Katz contends that Charter's call centers support multiple call processing flows linked to distinct formats, specifically citing the "Tier 2 Support Main" and "Customer Care" formats, each associated with unique telephone numbers (1-888-550-9400 for Tier 2 Support and 1-866-472-7100 for Customer Care). Charter, however, argues that these flows are part of one overarching format, facilitated by its Core Routing Application and vector software modules that direct calls based on the called number. Katz asserts that the unique numbers indicate separate formats, while Charter maintains that these flows are merely branches of a single core routing system. The Court finds that while branching does not necessarily signify multiple formats, it does not rule out their existence. Katz has provided evidence that the distinct telephone numbers may suggest multiple formats, and Charter’s evidence fails to demonstrate a singular format. As a result, the Court denies Charter's motion for summary judgment on this matter. Regarding Claim 10, which involves selecting, testing, and interfacing a processing format based on call data signals, Charter argues its CSS system does not fulfill these requirements because it only utilizes DNIS for format selection and ANI solely for testing. Katz challenges this interpretation, citing prior orders that allow "call data signals" to encompass various call signals. The Court defined "call data signals" as signals that identify the called number, calling number, and/or equipment type designation. It clarified that testing call data signals, as outlined in claim 10 of the '150 patent, requires either the called or calling number. Despite Charter's argument that this term was only discussed concerning the testing step, the Court found that "call data signals" has the same meaning in both the testing and selecting steps. Charter's interpretation of "for the calling remote terminal" as necessitating equipment signals was deemed excessive; the term "for" simply means "on behalf of," aligning with the claim's language and specification. Regarding the sequence of steps, Katz contended that ANI blocking occurs before the format step, fulfilling the testing requirement. Charter argued that testing must precede formatting and, therefore, claimed no infringement. Katz's expert, Dr. Kelly, supported Katz's view by explaining the operation of "vector 10" and asserting that the format begins after testing. Charter disagreed, claiming that the ANI block affects the caller's experience and must be included in the format. The Court rejected this argument, stating that a busy signal does not convey information to the caller and that no choices are available until after the ANI blocking step. Consequently, the Court denied Charter's summary judgment on these limitations. Additionally, claim 10 requires interfacing callers with a "multiple port, multiple format data processing system." Dr. Kelly indicated that components of the Avaya Definity G3s and Dialogic Communications Corp. IVRs meet this requirement, possessing processors that support multiple ports and formats. Charter contends that Dr. Kelly's allegations regarding the connection of calls to specific processors in Charter's CSS are inadequate, as he has not pinpointed a specific processor. However, Katz's expert has identified the relevant systems that contain the accused processors, and Charter does not dispute this identification or the accuracy of Dr. Kelly's testimony regarding the processors' limitations. Charter's argument centers on the need for more detailed identification of the processors, which the Court finds insufficient to warrant summary judgment. Consequently, the Court denies Charter's summary judgment motion concerning the multiple port, multiple format limitation. Regarding the fetching control data with "Call Data" in Claim 11, Katz asserts that the ANI blocking table fulfills this requirement by utilizing data from the vector routing table on Charter's Avaya Definity G3 systems to determine call termination. Charter counters that "control data" encompasses both the called number and equipment data signals, claiming that the ANI blocking table does not satisfy this since it only uses one type of call data. The Court has previously rejected Charter’s interpretation of "call data," ruling that it can include multiple types of identifiers. Thus, the motion for summary judgment is also denied on this point. In Katz's motion for infringement concerning Claims 10 and 11 of the '150 Patent, both parties largely reiterate their positions from Charter's summary judgment motion. Katz has presented evidence indicating that CSS supports multiple formats; however, several factual questions remain unanswered, such as the relationship between Tier 2 Support and Customer Call flows. These questions, while not decisive, prevent a ruling on this aspect due to insufficient evidence. Charter challenges the reliability of the documents Katz cites, highlighting credibility issues that must be resolved. On the multiple port, multiple format limitation, Katz's expert claims that certain components meet this requirement, which raises a triable issue of fact despite Charter's challenges to the credibility of Dr. Kelly's conclusions and his specific detailing of processors. Similarly, Charter's interpretation of "call data signals" is rejected, and it raises additional non-infringement arguments regarding format selection being controlled by the VDN instead of the DNIS. Overall, the Court identifies factual issues that remain to be resolved by a jury. Multiple DNIS entries can direct to a single VDN, affirming that DNIS (the called number) is utilized for selection. The Court dismisses Charter's argument distinguishing "data" from "data signals," finding no support for this distinction in the specification or claims. Consequently, the use of DNIS complies with the claim's requirement regarding "call data signals." Charter's interpretation of "fetching control data addressable with said call data" as requiring a specific memory retrieval process is rejected, as it improperly narrows the claim based on disclosed embodiments, lacking textual justification. The Court confirms that using the ANI blocking table meets the relevant claim limitation. Regarding evidence of call processing, Charter contends that Katz has not demonstrated actual operation conforming to expert testimony and documents, only system design. The Court disagrees, asserting that design evidence is indicative of operational capability. Katz's evidence sufficiently satisfies several disputed limitations, but the Court identifies factual issues with others, denying Katz's motion for summary judgment on infringement. In discussing claim 5 of the '223 patent, which is deemed invalid due to indefiniteness, the Court still addresses Charter's five non-infringement arguments. Claim 5 outlines a telephone call processing system that includes various means for receiving calls, providing identification signals, cuing callers, and storing signals, specifically designed for multiple call modes, including toll-free and caller charge modes. Claim 5 specifies a "means for providing identification signals" entered by callers. Katz identifies the "means" as a processor with DTMF detection capability located in each Avaya Definity G3 system, while Charter contends that DTMF detection is provided through separate cards or circuit packs. Katz argues that these cards contain the necessary processors, while Charter challenges the evidence supporting this conclusion without disputing it directly. The court finds a factual issue regarding whether the processors in the Avaya Definity G3s meet the claim's requirements. Furthermore, the claim requires a "means for providing identification signals," which Charter argues should be interpreted as "signals" rather than "data." The court rejects this argument, stating that the specifications do not support the distinction. Lastly, the claim's preamble mentions that callers are to be cued by "synthesized voice signals." Katz interprets this to include concatenated pre-recorded voice signals, asserting that Charter's system meets this requirement. Charter disagrees, arguing that "synthesized voice signals" do not include pre-recorded voices and cites Dr. Brody's earlier statements to support its interpretation. Dr. Brody previously distinguished between synthesized signals generated by a voice generator and pre-recorded human voice, but Katz and Dr. Brody now assert that synthesized voice signals can include concatenated pre-recorded speech. Dr. Brody highlights that some references in the '223 patent's prosecution history discuss speech synthesis through concatenation of different phrases. Although Dr. Brody previously indicated that "synthesized voice signals" should not include pre-recorded human voices, there is no clear address of whether this term encompasses concatenated synthesis in the relevant motions and declarations. The Court examines intrinsic evidence from the '223 patent, noting that the specification refers to an inventory of questions answerable by number, leading to a "simulated voice question." This suggests that "simulated voice" qualifies as a type of "synthesized voice signal." However, this example alone does not resolve the dispute. The cited prior art indicates that concatenating different pre-recorded human voices is a form of voice synthesis. Consequently, the Court rules in favor of Katz, determining that "synthesized voice signals" includes concatenated pre-recorded signals. The Court does not consider new arguments from Charter due to Katz's lack of opportunity to address them. Regarding Claim 5, which includes a "means for selectively receiving calls from said multitude of terminals," Katz asserts that Charter's ANI blocking function meets this requirement. Charter contends that ANI blocking is part of the call flow and thus does not qualify as "selectively receiving calls." The Court finds a factual dispute regarding this limitation. For the "common processing operations" requirement in Claim 5, Charter claims Katz's expert, Dr. Kelly, did not adequately address this aspect, seeking a ruling of non-infringement. Dr. Kelly counters that Charter's processes fulfill the common processing operations criteria. The Court notes that both parties' arguments are insufficient, with Katz's being conclusory and Charter's lacking explanation. Ultimately, the Court finds that Charter has not met its burden of proof concerning the "common processing operations" limitation. The Court denies Charter's motion for summary judgment regarding non-infringement claims against claim 5 of the '223 patent. In relation to claim 1 of the '285 patent, Charter presents four non-infringement arguments. Claim 1 describes an interface control system that includes a communication facility with remote terminals, a multiple port processor, and live operator stations. Charter's first argument asserts that no specific processor with multiple port, multiple format capabilities has been identified in its system, which the Court rejects, aligning with previous analysis in Section III(B)(2)(c). Regarding the "interconnect switch means," Charter contends that the switch must control data formatting and connections for both the processor and operator stations. The Court notes that Charter fails to provide adequate justification for this interpretation and does not substantiate its claim construction. Consequently, the Court declines to adopt Charter's interpretation and denies the motion for summary judgment due to insufficient evidence. Finally, with respect to the "selection means," Katz claims that the profile table and processor of the Avaya Definity G3s fulfill this requirement. Charter asserts that the "selection means" requires a "control register" that holds "equipment signals" bits, claiming Katz has not demonstrated that the accused CSS includes such a control register. Consequently, Charter seeks a ruling of non-infringement. Katz contends that Charter is improperly importing limitations from the specification and emphasizes that both parties recognize the "selection means" as a means-plus-function limitation under 35 U.S.C. 112.6. The court outlines a two-step approach for constructing this limitation: identifying the claimed function as stated in the claim language and determining the structures in the written description that perform these functions. The claim language specifies the function as selecting one of said formats. While Katz argues that the specification describes multiple embodiments, the court concludes that it actually delineates a single set of structures for format selection, identified as control unit 66, control register 70, and look-up table 84. The control unit 66 manages the specific formats and provides timing signals to coordinate operations. The control register 70 receives format control words derived from the called number, and the court finds that "equipment signal" bits are not included in its construction due to a lack of clear linkage to the recited function. Although Katz has not specifically identified a control register in the Avaya Definity G3 processors, the court recognizes that (1) a control register is integral to the interpretation of the selection means, (2) control registers are commonly found in processors, and (3) Charter has not disproven the existence of a control register in the accused devices. Therefore, Katz may identify a control register if it exists, and a jury could reasonably find the Avaya Definity G3's processor equivalent to the control unit 66 and control register 70 of the '285 patent. The court denies Charter's motion for summary judgment regarding the "selection means" limitation. Additionally, concerning Claim 1 of the '285 patent, which requires "multiple formats," the court again denies Charter's motion for summary judgment based on previous discussions. Charter also presents two non-infringement arguments related to Claim 2 of the '415 patent, which is dependent on independent Claim 1. A process for evaluating the acceptability of calls through a communication facility involves remote terminal apparatus that includes a telephonic instrument with voice and digital input capabilities. Key steps include receiving telephone number signals from callers, testing these signals against stored negative data to determine acceptability, accepting calls based on the acceptability signal, and interfacing to provide voice cues and receive digital data in a specified format. The process also requires testing responsive digital data against stored positive data to decide if further voice cues are necessary. Claim 1 specifies the need to test "associated telephone number signals," while dependent claim 2 clarifies that this includes receiving automatically provided number identification signals for called or calling numbers. Charter argues that both calling and called number signals must be tested, while Katz asserts that only Automatic Number Identification (ANI) or Dialed Number Identification Service (DNIS) testing is required. The court finds Charter's argument flawed, stating that the claims should not be interpreted in isolation, and that the inclusion of "called or calling numbers" does not narrow the scope as Charter suggests. Instead, it indicates that at least one type of number signal must be tested. Additionally, the court rejects Charter's claim that it does not meet the requirement of testing for acceptability since it allegedly accepted all calls before testing calling numbers. The court concludes that there is substantial evidence that Charter's system tested callers' ANIs and denies Charter's motion for summary judgment concerning the "associated telephone number signals" limitation. Katz has presented adequate evidence for a reasonable juror to find that the relevant format initiates only after ANI blocking. Consequently, the Court denies Charter's summary judgment motion regarding these arguments. In relation to Claim 129 of the '707 patent, Charter has put forth four noninfringement arguments, which are tied to Claim 128 and independent Claim 96. These claims outline a control system for communication facilities that includes specific components for interfacing with remote terminals and processing call data. Claim 129 specifically requires a "voice generator structure" to provide vocal instructions to callers. Charter claims that this necessitates a simulated voice, asserting that its system utilizes a human voice, thereby claiming noninfringement. The Court rejects this interpretation, noting that the claim language does not limit it to simulated voices. Furthermore, Katz has shown evidence that Charter's system concatenates human voices, suggesting potential infringement. Additionally, Claim 129 mandates a database for "negative file data," which the Court has defined as a list of invalid numbers for comparison against caller numbers. Katz asserts that the Operational Data Store (ODS) in Charter's system meets this requirement; however, Charter disputes this by arguing that "negative file data" must exclusively contain negative entries. The Court's analysis and conclusions will be informed by these arguments as the case progresses. Charter's argument that ODS qualifies as negative file data is rejected by the Court, which emphasizes that the presence of additional information in the data is irrelevant to its classification. Charter contends that a list of telephone numbers cannot serve both "positive data" and "negative file data" due to differing definitions; however, Dr. Kelly's testimony indicates that both types of data can exist within the same table. The Court dismisses Charter's assertion that numbers tested cannot be "unacceptable," stating that such a view would undermine the claim's validity. It also finds that calls handled by an agent, but not granted access to the main menu, could reasonably be deemed "unacceptable." Consequently, the Court denies Charter's motion for summary judgment regarding the "negative file data" limitation. Regarding Claim 129, which requires a processing means for certain data, the Court previously identified three alternative structures fulfilling this function. Charter argues that Katz's claims rely on a general purpose processor, lacking sufficient specificity and an algorithm disclosure, and requests summary judgment for non-infringement. Katz counters by asserting that its expert, Dr. Kelly, identified specific processors that are either identical or equivalent to the structures previously recognized by the Court. Dr. Kelly concludes that these processors are capable of performing the requisite functions. The Court finds a factual dispute regarding the equivalency of the accused structures to certain identified processors, determining that if they are indeed general purpose processors, Katz can still allege infringement. The absence of an algorithm in the '707 patent does not affect the interpretation of the means-plus-function limitation. The minicomputer unit 92, described as a general-purpose processor, lacks a corresponding algorithm as required under WMS Gaming, rendering it indefinite and insufficient for proving infringement. In contrast, the other two structures, the interface 20 and Centrum 9000, are not general-purpose processors and therefore do not necessitate an algorithm for definiteness. The jury can evaluate whether the processors accused in the DCC IVRs and Avaya IC meet the "means for processing" limitation. Consequently, the Court denies Charter's motion for summary judgment regarding this limitation. Regarding Claim 129, it requires a "means to provide signals representative of data" from remote terminals and to receive calling number identification data. Charter's argument that its CSS does not fulfill this requirement mirrors its reasons concerning a similar limitation in Claim 5 of the '223 patent. The Court denies Charter's motion for summary judgment on this basis as well. In addressing claims 30, 45, and 67 of the '762 patent, Charter presents five arguments against infringement. Claim 30 is dependent on independent claim 17, while claims 45 and 67 depend on independent claim 41. Claim 30 describes an analysis control system for a mail order facility, detailing specific components such as an interface for communication, credit verification structure, memory storage, an acknowledgment generator, switching structure, and a central processing station to handle caller data. The claims collectively emphasize the system's functionality for processing data from remote terminals. An analysis control system is designed for mail order facilities, integrating remote terminals equipped with voice communication and digital input for data entry. Key components include an interface structure for communication, a credit verification system for validating customer numbers and credit card details, a record structure for data storage, an acknowledgment generator for issuing computer-generated acknowledgment numbers, a switching structure for connecting callers to live operators, and a central processing station for data accumulation. Claims 30, 45, and 67 emphasize the necessity of a computer-generated acknowledgment number. Charter argues against infringement of these claims, citing three main points: first, that their confirmation numbers do not meet the definition of acknowledgment numbers as callers cannot input them; second, a lack of evidence showing callers utilized these numbers for transaction verification; and third, that the acknowledgment number generation is managed by third parties outside Charter’s control. Charter's interpretation suggests acknowledgment numbers must be directly inputted by callers, a point not addressed during claim construction. The court's previous definition of "acknowledgment number" entails its use for transaction verification, which is supported by the patent's specification describing acknowledgment numbers as identifiers for orders, not necessarily requiring input into the system. The court must interpret the claims without imposing limitations from the specification, confirming that the term does not necessitate direct input by the caller. Charter's first argument is rejected by the Court. Charter contends that Katz lacks sufficient evidence regarding the use of acknowledgment numbers, but Katz has demonstrated that Charter's system generates a "confirmation number" during credit card transactions, which could imply acknowledgment of the transaction. Both parties failed to provide a detailed explanation of this number's use. The Court notes that if Charter did not use this number for acknowledgment, it should have been able to prove that. A jury could reasonably conclude from the circumstantial evidence that these confirmation numbers serve to verify transactions, indicating a substantial factual issue for consideration. Charter also argues it does not direct or control the entities providing the acknowledgment number, relying solely on its undisputed facts statement. Katz counters with a Statement of Genuine Issues suggesting Charter’s control over these third parties. Consequently, the Court denies Charter's motion for summary judgment regarding direction and control. Regarding claims 30, 45, and 67, which require a "credit verification structure," Charter presents three non-infringement arguments: (1) its CSS lacks such a structure, (2) using the caller’s customer number for account information does not equate to credit verification, and (3) it does not control the vendors performing these functions. The Court rejects all these arguments, noting Katz has identified several potential credit verification structures. Whether these meet the claim's requirements is a factual question for the jury. Additionally, the Court finds Charter’s claim construction inconsistent with the patent specification and reiterates the factual issue regarding direction and control. Lastly, Charter's motion concerning the "synthesized voice" is denied as it fails to clearly articulate its basis for the argument, referencing unrelated sections that have already been dismissed. Claims 30, 45, and 67 require a "central processing station," with Charter arguing that Katz's expert, Dr. Brody, confirmed this limitation must be centrally located. Charter contends that the accused DCC IVRs do not meet this requirement but fails to provide intrinsic evidence to substantiate its claim or demonstrate the location of the DCC IVRs. Consequently, the Court denies Charter's motion for summary judgment regarding this limitation. Similarly, claims 30, 45, and 67 also necessitate a "means to provide answer data signals." Charter asserts that CSS does not fulfill this requirement, but the Court denies Charter's motion for summary judgment on this basis as well. Regarding evidence of method claims (claim 2 of the '415 patent and claims 10 and 11 of the '150 patent), Charter claims that Dr. Kelly did not provide evidence that Charter performed the claimed methods. However, the Court notes that direct evidence isn't necessary for proving method claim infringement, referencing the Moleculon Research case where circumstantial evidence sufficed. Dr. Kelly provided circumstantial evidence, including call flows and usage reports, indicating that Charter may have performed the claimed methods. Therefore, the Court denies Charter's motion for summary judgment on this issue. Charter also highlights that several claims include means plus function limitations subject to WMS Gaming, alleging Katz failed to identify corresponding algorithms in the specifications. Since these arguments were previously struck from Charter's motion, the Court will not address them again. Finally, the Court notes that Charter's motion for summary judgment on the issue of laches will be considered alongside Katz's motion on the same matter. Nine claims against Charter expired by December 20, 2005. Katz's damages expert calculated damages extending to 2009, which Katz argues is permissible due to unselected claims potentially generating damages during that period. Katz presents two arguments: first, that limiting claims violates its due process rights, asserting that it should collect damages for its entire patent portfolio. The court counters that the limits were designed to avoid duplicative claims, not to restrict Katz’s rights, and invited Katz to justify additional claims, which it failed to do. Consequently, the court rejects Katz's due process claim. Second, Katz posits that a hypothetical negotiation would have included all patents in a portfolio license. However, the court limits this negotiation to the patents in issue; thus, Katz's argument fails. The court grants Charter's motion, ruling Katz cannot recover damages for any activity post-December 20, 2005. Regarding non-accused systems, Charter claims Katz provided infringement contentions solely for its Customer Services System (CSS) and seeks to limit damages recovery to this service. Katz confirms it only seeks damages related to CSS but contends the court should not grant summary judgment due to potential infringement by unselected claims. The court notes Katz has not established grounds for damages, as it cannot raise unselected claims. Thus, the court grants Charter's motion for summary judgment, prohibiting damage recovery for non-CSS services. Katz also filed a summary judgment motion against all defendants, addressing infringement, estoppel, laches, and prosecution laches. The court previously addressed Katz's infringement request, while sections on the other three defenses will be addressed in subsequent decisions. The defendants have invoked equitable estoppel, which applies when a patent owner implies to an infringer that it will not enforce its patent, leading the infringer to rely on that representation. Three elements define equitable estoppel: a) the patentee misleads the alleged infringer into believing it will not enforce its patent, b) the alleged infringer relies on this misleading conduct, and c) the alleged infringer suffers material prejudice from the patentee's later enforcement. The standard for proving equitable estoppel is a preponderance of the evidence. Katz asserts that the defendants cannot demonstrate any misleading conduct, arguing that its communications were clear and truthful. Katz maintained consistent dialogue with the defendants, offering to license its patent portfolio and notifying them of ongoing litigation that might affect communication frequency. Katz contends that these interactions demonstrate no misleading intent and that the defendants could not have been misled by its delay in filing suit. The evidence indicates Katz was actively pursuing licensing with multiple parties, undermining any claim of misleading silence. The Court agrees, granting Katz's motion for summary judgment on equitable estoppel without needing to address reliance. Regarding laches, it occurs when a plaintiff unreasonably delays filing suit, barring recovery for damages prior to the filing. The elements are: 1) an unreasonable delay in filing after the plaintiff knew or should have known of the claim, and 2) that delay causes prejudice to the defendant. Laches must also be proven by a preponderance of the evidence, with a presumption of applicability if the delay exceeds six years. Katz argues any delay was not unreasonable or inexcusable, citing discussions with the defendants and other entities, along with multiple lawsuits against others. The Court will consider whether Katz can rebut the presumption of laches by presenting evidence that creates a genuine dispute regarding the delay or its prejudicial effects. In Hemstreet v. Computer Entry Sys. Corp., the court addressed the application of the laches defense, noting that both litigation and negotiations can justify delays in asserting claims. When the presumption of laches is rebutted, the defendant must prove both elements of the defense. The presumption applies to certain claims related to specific patents, while others are exempt due to the lawsuit being filed within six years of the patents' issuance. The court examined whether Katz's negotiations with Charter constituted a valid excuse for delay. Charter contended that these negotiations were sporadic and lacked a fair chance of success, citing early legal standards that require continuous and progressing negotiations to justify delays. Katz initiated contact with Charter in November 1996, with subsequent communications and a meeting in 2001 indicating serious consideration of licensing. However, Charter claimed that after June 13, 2002, when it indicated no interest in a license, further delays could not be excused. Katz also referenced involvement in significant patent litigations between 1995 and 2006 as an additional excuse for delay. Charter countered that Katz had the capacity to pursue multiple actions simultaneously and highlighted periods when Katz was not engaged in litigation. The court rejected Charter's arguments, affirming that negotiations could excuse delays up until June 13, 2002, and that Katz could reasonably choose to focus on one lawsuit despite having the resources for more. Thus, the court determined there are genuine factual issues regarding the excuses Katz presented for the delays. The Court has determined that the presumption of laches is rebutted, placing the burden of proof on the defendants. Charter's inability to demonstrate that Katz's delay in filing suit was unreasonable leads the Court to deny Charter's motion for summary judgment concerning laches. Additionally, Katz has not established that its delay was reasonable, preventing dismissal of the defendants' laches defense on that basis. Regarding prejudice, Katz argues that the defendants have not provided evidence of either evidentiary or economic prejudice. Charter claims evidentiary prejudice due to Mr. Katz's inability to recall certain events and the loss of witness testimony over time. However, the Court finds that Charter has not adequately explained the significance of the lost evidence to its case, concluding that substantial evidence of evidentiary prejudice has not been presented. On economic prejudice, Charter contends that it made significant operational changes that may not have occurred had Katz sued earlier. Katz counters that there is no causal link between its delay and Charter's investment decisions. Citing *Meyers v. Brooks Shoe, Inc.*, the Court emphasizes that defendants must demonstrate that their prejudices stemmed from the delay. Charter has similarly failed to show that its operational choices would have differed if Katz had filed suit sooner. As a result, the Court grants Katz's motion for summary judgment concerning Charter's affirmative defense of laches and also addresses the defendants' affirmative defense of prosecution laches in Katz's motion. Prosecution laches can bar patent claims due to unreasonable and unexplained delays in prosecution, even if the applicant adhered to relevant statutes. The Federal Circuit has not established definitive criteria for determining laches, with parties differing on whether intervening adverse rights are necessary for a defense of prosecution laches. Katz argues that such rights are essential, citing Supreme Court cases that suggest prosecution laches cannot be applied without them. This is supported by earlier court decisions, including one involving Verizon California, which concluded that proof of intervening rights is necessary for a successful prosecution laches defense. Conversely, Charter contends that while intervening rights may be a consideration, they are not a strict requirement, referencing a Federal Circuit case that affirmed forfeiture based solely on unreasonable delay. After reviewing case law, the court agrees with Katz, asserting that both Crown Cork and General Talking Pictures indicate that prosecution laches cannot be enforced without intervening adverse rights. Therefore, delays exceeding two years without intervening rights do not invalidate continuation applications, affirming that this longstanding precedent remains authoritative. To succeed in a claim of prosecution laches, the defendant must demonstrate two elements: 1) unreasonable and unexplained delay, and 2) intervening adverse rights. In evaluating unreasonable delay, Katz's summary judgment motion contends that the defendants lack evidence of such delay. However, Charter's expert report from Professor Wagner indicates that most of Katz's asserted patents—specifically the '707, '285, '762, '223, and '415 patents—exhibited priority pendencies longer than 97% of other patents during the same period, suggesting significant delays that could support a finding of prosecution laches. Katz argues it acted diligently, citing the issuance of at least one patent from 1988 to 2004 and the filing of terminal disclaimers for nearly all its patents, which may indicate reasonable delay according to precedent (Chiron Corp. v. Genentech, Inc.). Charter disputes the reasonableness of Katz's explanations. The Court concludes there is a genuine issue of material fact regarding unreasonable delay. Regarding intervening adverse rights, while defendants claimed both private and public rights existed, they failed to identify any during discovery. Consequently, on October 8, 2008, the Court partially granted Katz's motion to strike these arguments, concluding that Charter did not provide substantial evidence of intervening rights. Thus, Katz's motion for summary judgment concerning Charter's prosecution laches defense was granted. In summary rulings: The Court granted Charter's motion concerning the invalidity of claim 5 of the '223 patent, citing indefiniteness due to a lack of algorithm disclosure. Charter's other indefiniteness arguments were previously struck. For non-infringement of the '150 patent claims 10 and 11, Charter's four arguments were rejected, and its motion was denied. Claim 5 of the '223 patent was deemed invalid, but the Court also addressed Charter's five non-infringement arguments regarding that claim, which pertained to various technical issues. Charter's motions for summary judgment of non-infringement regarding various claims of multiple patents were denied by the Court. Specifically, the Court addressed claims from the following patents: 1. **Claim 5 of the '285 Patent**: Charter presented four non-infringement arguments concerning multiple port formats and selection means, all of which were dismissed. 2. **Claim 1 of the '285 Patent**: Similar non-infringement arguments were raised regarding interconnect switch means and multiple formats, which were also rejected. 3. **Claim 2 of the '415 Patent**: The Court denied Charter's motion related to arguments on associated telephone number signals and call testing. 4. **Claim 129 of the '707 Patent**: Four arguments regarding a voice generator and processing means were rejected. 5. **Claims 30, 45, and 67 of the '762 Patent**: Five arguments concerning acknowledgment numbers and credit verification structures were similarly dismissed. The Court found that Katz provided sufficient circumstantial evidence to counter Charter's claims of non-infringement for the method claims, leading to a denial of Charter's motion on that ground. Additionally, Charter's requests regarding means plus function limitations were not addressed as they were repetitive of previously struck arguments. In terms of laches, the Court's ruling is referenced but not elaborated upon in this section. Regarding damages, the Court granted Charter's motion, establishing that Katz could not recover damages for any actions post-December 20, 2005, and for any non-CSS service infringement. On Katz's motion for summary judgment of infringement concerning claims 10 and 11 of the '150 patent, the Court found that certain requirements were satisfied but denied the motion due to factual disputes regarding multiple formats. Katz's motion for summary judgment is granted regarding the defendants' affirmative defense of equitable estoppel due to Charter's failure to provide substantial evidence of misleading conduct. Conversely, the Court finds that Katz has presented a triable issue of fact concerning whether it unreasonably delayed in filing suit, leading to the denial of Charter's motion for summary judgment on the laches defense. However, Katz's motion for summary judgment is granted concerning Charter's laches defense because Charter did not demonstrate sufficient evidentiary or economic prejudice. In relation to the prosecution laches defense, the Court rules that intervening rights must be shown, and since Charter failed to provide substantial admissible evidence for this, Katz's motion for summary judgment is granted. The document includes notes highlighting that additional aspects of Katz's summary judgment motion related to various defendants' affirmative defenses will be addressed later. It also mentions that certain arguments made by Katz during briefing were struck due to their omission in earlier discovery. The Court urges Charter to refine its arguments, criticizing its "shotgun approach" as detrimental to its credibility. Lastly, Charter's claims regarding certain documents and the applicability of laches to specific patents are discussed, with the Court finding no supporting authority for Charter's position.