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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND HENRY S. KERNIUS, et al., Plaintiffs, v. INTERNATIONAL ELECTRONICS, INC., et al., Defendants. * * * * * * * * * * * * * * * * * * * Civil Action No.: RDB 05-1927

MEMORANDUM OPINION Plaintiffs Henry S. Kernius and Ray J. Frise ("Plaintiffs") filed this patent infringement action against Defendants International Electronics, Inc. ("IEI"), Radio Shack Corporation ("RadioShack"), Best Buy Company, Inc. ("Best Buy"), Target Corporation ("Target"), and Wal-Mart Stores, Inc. ("Wal-Mart") (collectively, "Defendants"). Plaintiffs allege that Defendants have infringed U.S. Patent No. 6,628,771 (the "`771 Patent"). Currently pending is Defendants' request that this Court construe certain claim language from the `771 Patent pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The issues have been fully briefed and this Court held a Markman hearing on March 23, 2007. This Memorandum Opinion sets forth this Court's construction of the claim language discussed during that hearing.

BACKGROUND The `771 Patent relates to a "a device which allows a person to use his or her call waiting feature when he or she is using the same telephone line to connect to the internet." (Pl.'s Cl. Constr. Br. p. 1.) As the `771 Patent explains: The device . . . will alert by audible and visual means. When a subscriber answers the third party's call a switching circuit is activated that disconnects any local modem or FAX interfaced to the device and signals a switch-hook flash. This allows a call waiting party to commence in conversation or a data-signal to be received. The device also incorporates a switch to select automatic answer mode to allow a subscriber to share an engaged telephone line with in-coming calls to a FAX machine. Upon completion of these in-coming calls the device will automatically switch back to the previously engaged telephonic device. `771 Patent, Abstract; see also id. at Col. 1-2 (describing background art and objects of invention). Eleven disputed claim phrases were identified by the parties' Joint Claim Construction Statement. Only six of those phrases, however, were still in dispute when the Markman hearing commenced. Those phrases are addressed in this Memorandum Opinion. They include: (1) "call progress detector circuitry for detecting a call waiting signal," (2) "microcontroller set of instructions signals received from the call progress detector circuitry," (3) "circuitry to recognize a first signal with a duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal or a distinctive call waiting SAS signal," (4) "configured to operate in either the presence or absence of a bandwidth encompassing modem signal," (5) "circuitry for performing a mute . . . and transferring," and (6) "alerting the subscriber for a set period visually or until an acknowledge button is depressed before the set period expires." STANDARD OF REVIEW -2-

Claim construction is a question of law. Markman, 52 F.3d at 977-78. In interpreting a claim, a court should look first to the intrinsic evidence, i.e., the patent itself, including the claims and the rest of the specification, and, if in evidence, the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citation omitted). Although it is within the sound discretion of a court to use extrinsic evidence as an aid in construing a claim, extrinsic evidence is "unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc).1 A claim term should be construed to mean "what one of ordinary skill in the art at the time of the invention would have understood the term to mean." Markman, 52 F.3d at 986. However, "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. Thus, the specification is usually "`dispositive; it is the single best guide to the meaning of a disputed term.'" Id. at 1315 (quoting Vitronics, 90 F.3d at 1582). In other words, a claim term can be given its correct construction only within the context of "what the inventors actually invented and intended to envelop with the claim." Phillips, 415 F.3d at 1316. DISCUSSION

Although Plaintiff discussed the accused devices at various points during the Markman hearing, this Court did not rely on any such information in construing the claims of the `771 Patent. This Court notes, moreover, that it is "appropriate for a court to consider the accused device when determining what aspect of the claim should be construed." Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1310 n.10 (Fed. Cir. 2006) (citations omitted). By focusing on those aspects of the claim whose relation to the accused device is in dispute, courts avoid wasting time on claim construction matters that are irrelevant to the litigation. -3-

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I.

Representative Claim Language The language of independent claims 1, 9, and 14 is representative of the disputed

phrases. Claim 1 provides: 1. An apparatus for alerting a subscriber of a call waiting or a distinctive call waiting condition without the subscriber having to aurally monitor the subscriber's telephone receiver for call waiting SAS tones or distinctive call waiting SAS tones comprising; call progress detector circuitry for detecting either a call waiting SAS signal or a distinctive call waiting SAS signal; microcontroller set of instructions signals received from the call progress detector circuitry; circuitry to recognize a first signal with a duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal or a distinctive call waiting SAS signal; wherein the apparatus is configured to operate in either the presence or absence of a bandwidth encompassing modem signal; alert circuitry to alert the subscriber visually when the microcontroller set of instructions, stored in program memory, executing logic determines either a call waiting or a distinctive call waiting condition. `771 Patent, Col. 14, ll. 13-32 (emphasis added). Claim 9 provides: 9. An apparatus for altering a subscriber and manually managing a call waiting or distinctive call waiting condition comprising; call progress detector circuitry for detecting either a call waiting SAS signal or a distinctive call waiting SAS signal; circuitry to recognize a first signal with a duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal or a distinctive call waiting SAS signal; wherein the apparatus is configured to operate in either the presence or absence of a bandwidth encompassing modem signal; first microcontroller set of instructions, stored in program memory, executing logic for processing a call progress signals received from the call progress detector circuitry; alert circuitry to alert the subscriber visually when the first microcontroller set of instructions, stored in program memory, executing logic determines either a call waiting or a distinctive call waiting condition; second microcontroller set of instructions, stored in program memory, executing logic for determining whether the subscriber's telephone line is in an off-hook condition; third microcontroller set of instructions, stored in program memory, executing logic to control the line seizure circuitry; -4-

first line seizure circuitry for performing the flash operation, muting the telephonic device connected to the data port and transferring from the data port to the voice/Fax port; fourth microcontroller set of instructions, stored in program memory, executing logic for determining whether the telephonic device connected to the voice/FAX port goes from an off-hook to an on-hook condition; second line seizure circuitry for performing a un-mute and transfer of the data port. Id. at Col. 15, ll. 29-67 (emphasis added). Claim 14 provides: 14. A method to alert a subscriber of a call waiting or a distinctive call waiting condition without the subscriber having to aurally monitor the subscriber's telephone receiver for call waiting SAS tones or distinctive call waiting SAS tones comprising the steps of; detecting either a call waiting SAS signal or a distinctive call waiting SAS signal; wherein said detecting is carried out on a first signal of a call waiting SAS signal or a distinctive call waiting SAS signal by detecting duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal or a distinctive call waiting SAS signal; if SAS detected, altering the subscriber for a set period visually or until an acknowledge button is depressed before the set period expires; if SAS is not detected continue to monitor for that condition. Id. at Col. 16, ll. 23-40 (emphasis added). II. Construction of Disputed Claim Phrases 1. Construction of "Call Progress Detector Circuitry for Detecting a Call Waiting Signal"

Plaintiffs contend that the claim language "call progress detector circuitry for detecting a call waiting signal" needs no construction. Defendants contend that this limitation should be construed as "[a] collection of electrical hardware components configured to detect a conventional call waiting system." (Def.'s Handout p. 17.2)

At the hearing, Defendants submitted copies of a summary of its proposed claim constructions to this Court. (See Defendant IEI's Proposed Claim Construction, Claim Construction Hearing, Friday, March 23, 2007 ("Def.'s Handout").) Although the constructions proposed in this handout differ from the constructions proposed in its claim construction brief, -5-

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The parties' dispute hinges on whether the claim term "circuitry" excludes "software based implementations, such as firmware or a microcontroller that may be programmed with software for accomplishing a particular task." (Def.'s Cl. Constr. Br. p. 7.) Plaintiffs contend that "circuitry" does not exclude so-called "software based implementations" whereas Defendants maintain that such implementations are excluded. In constructing their argument, Defendants rely on Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004) and Massachusetts Instit. of Tech. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006).3 In the Linear Tech. decision, the United States Court of Appeals for the Federal Circuit considered whether certain claim limitations involving the term "circuit" or "circuitry" are means-plus-functions limitations subject to 35 U.S.C.

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