Filed: Mar. 31, 2020
Latest Update: Mar. 31, 2020
Summary: Case: 19-1570 Document: 46 Page: 1 Filed: 03/31/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ DEEP GREEN WIRELESS LLC, Appellant v. OOMA, INC., Appellee _ 2019-1570 _ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017- 01541. _ Decided: March 31, 2020 _ MICHAEL DEVINCENZO, King & Wood Mallesons LLP, New York, NY, argued for appellant. Also represented by ANDREA PACELLI, ROBERT WHITMAN,
Summary: Case: 19-1570 Document: 46 Page: 1 Filed: 03/31/2020 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit _ DEEP GREEN WIRELESS LLC, Appellant v. OOMA, INC., Appellee _ 2019-1570 _ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017- 01541. _ Decided: March 31, 2020 _ MICHAEL DEVINCENZO, King & Wood Mallesons LLP, New York, NY, argued for appellant. Also represented by ANDREA PACELLI, ROBERT WHITMAN, ..
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Case: 19-1570 Document: 46 Page: 1 Filed: 03/31/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
DEEP GREEN WIRELESS LLC,
Appellant
v.
OOMA, INC.,
Appellee
______________________
2019-1570
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01541.
______________________
Decided: March 31, 2020
______________________
MICHAEL DEVINCENZO, King & Wood Mallesons LLP,
New York, NY, argued for appellant. Also represented by
ANDREA PACELLI, ROBERT WHITMAN, CHARLES WIZENFELD.
JEFFREY C. MORGAN, Barnes & Thornburg LLP, At-
lanta, GA, argued for appellee. Also represented by
MICHAEL ANTHONY CARRILLO, JONATHAN FROEMEL, JOSEPH
H. PAQUIN, JR., Chicago, IL; L. RACHEL LERMAN, Los Ange-
les, CA.
______________________
Case: 19-1570 Document: 46 Page: 2 Filed: 03/31/2020
2 DEEP GREEN WIRELESS LLC v. OOMA, INC.
Before LOURIE, MOORE, and CHEN, Circuit Judges.
Opinion for the court filed by Circuit Judge CHEN.
Dissenting opinion filed by Circuit Judge MOORE.
CHEN, Circuit Judge.
Deep Green appeals from the final written decision of
the United States Patent and Trademark Office Patent
Trial and Appeal Board (the Board) in the above-captioned
inter partes review (IPR) proceeding holding claims 35, 37–
39, 43, 44, 46–48, 52, 53, and 55–57 of U.S. Patent No.
RE42,714 (the ’714 patent) as obvious over U.S. Patent No.
6,600,734 (Gernert) and U.S. Patent No. 6,452,923 (AT&T)
based on the Board’s claim construction of “incoming voice
signals.” Because we agree with the Board’s construction
of “incoming voice signals” under the broadest reasonable
interpretation (BRI) standard, we affirm.
BACKGROUND
The ’714 patent describes a device for sharing tele-
phone lines among connected telecommunications equip-
ment such as modems, telephones, and fax machines. ’714
patent at col. 2, ll. 24–35. The equipment can be connected
to the line-sharing device via wire or wirelessly. Id. at col.
6, ll. 8–20. The specification contemplates that the line-
sharing device sends and receives voice and data signals
between the telecommunications equipment and the
shared telephone lines, for example employing telephony
circuitry for voice calls,
id. at col. 3, l. 62–col. 4, l. 23, or a
modem to access the Internet.
Id. at col. 5, ll. 63–65. Claim
35 is representative for the purposes of this appeal:
35. An apparatus for routing digital data signals
among a plurality of telecommunications devices
over a network, the apparatus comprising:
a network interface for connection to at least one
network communication line, wherein the network
interface receives digital data signals over the at
Case: 19-1570 Document: 46 Page: 3 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 3
least one network communication line, the digital
data signals comprising at least one voice signal;
a discrimination circuit connected to the network
interface for detecting incoming voice signals from
among other digital data signals;
a wireless interface, wherein the wireless interface
communicates the digital data signals between a
plurality of wireless telecommunications devices;
and
a processor for executing instructions to route the
digital data signals between the network interface,
the wireless interface, and the plurality of wireless
telecommunications devices for communication
over the network; and
a circuit for routing voice communication sessions
to specific telecommunications devices.
Id. at claim 35 (emphasis added).
The parties’ dispute focuses on the functionality of the
claimed “discrimination circuit”—specifically, whether “de-
tecting incoming voice signals” requires that the voice sig-
nals are incoming from the claimed “network interface” to
the “plurality of wireless telecommunications devices,” as
Deep Green urges. Under its proposed construction, Deep
Green alleges that Gernert fails to disclose the claimed “in-
coming voice signals” because, in Deep Green’s view,
Gernert’s corresponding “discrimination circuit” only dis-
closes detection of outgoing voice signals traveling from
Gernert’s telecommunications devices to the network line.
The Board rejected Deep Green’s proposed construction
of “incoming voice signals.” J.A. 23. The Board explained
that the claim only requires the discrimination circuit to be
connected to the network interface, which does not impose
the additional requirement that these voice signals are in-
coming from the network interface. Id. Rather, the Board
Case: 19-1570 Document: 46 Page: 4 Filed: 03/31/2020
4 DEEP GREEN WIRELESS LLC v. OOMA, INC.
determined that this limitation encompasses voice signals
“incoming” to the discrimination circuit from the other di-
rection as well—that is, from the recited telecommunica-
tion devices. Based on this understanding of “incoming
voice signals,” the Board concluded that the claims at issue
would have been obvious over Gernert and AT&T. J.A. 34.
Deep Green appeals, and we have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s claim construction 1 here de
novo because it relied only on evidence intrinsic to the ’714
patent. Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895
F.3d 1347, 1360 (Fed. Cir. 2018).
When an IPR is instituted from a petition filed before
November 13, 2018, as here, the claims are given the
“broadest reasonable interpretation” consistent with the
specification. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2142 (2016); Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Be-
fore the Patent Trial and Appeal Board, 83 Fed. Reg. 51340
(Oct. 11, 2018). Thus, the Board’s construction must be
reasonable in light of the record evidence and the under-
standing of one skilled in the art. See Knowles Elecs. LLC
v. Iancu,
886 F.3d 1369, 1374 (Fed. Cir. 2018).
Our analysis begins with the language of the claim it-
self. Homeland Housewares, LLC v. Whirlpool Corp., 865
F.3d 1372, 1375 (Fed. Cir. 2017). Claim 35 recites “a dis-
crimination circuit connected to the network interface for
detecting incoming voice signals from among other digital
data signals.” ’714 patent at claim 35. As the Board noted,
1 Although the Board did not purport to conduct any
claim construction, it effectively did so when it interpreted
“incoming voice signals” as not limited to voice signals from
the network interface.
Case: 19-1570 Document: 46 Page: 5 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 5
the “discrimination circuit” is “connected to the network in-
terface” and its purpose is “for detecting incoming voice sig-
nals from among other digital data signals,” but the claim
does not specify that the incoming voice signals detected by
the discrimination circuit must be conveyed from the net-
work interface to the wireless telecommunications devices.
J.A. 23. The claim only requires that the “incoming voice
signals” are “detect[ed] . . . from among other digital data
signals.” ’714 patent at claim 35. And it is not clear that,
in the context of the claim, these “other digital data sig-
nals” must be conveyed only in the particular direction that
Deep Green urges.
The term “digital data signals” first appears in the pre-
amble of claim 35, which introduces “[a]n apparatus for
routing digital data signals among a plurality of telecom-
munications devices over a network.” Id. But the function
of routing digital data signals over a network is agnostic as
to the direction in which they are routed. Thus, the pream-
ble imposes no constraints on the directionality of the digi-
tal data signals routed by the claimed apparatus. Stated
differently, the preamble does not exclude the apparatus
from routing digital data signals from the network line to
the telecommunications devices or from the telecommuni-
cations devices to the network line.
Next, the claim requires “a network interface” that “re-
ceives digital data signals over . . . [a] network communica-
tion line.” Id. The claim does not specify whether these
digital data signals are the same as those introduced in the
preamble. For example, the network interface limitation
could have but did not recite “said digital data signals.”
That these digital data signals mentioned in this network
interface limitation are received in a particular direction—
i.e., by the network interface from a network communica-
tion line—still leaves open a permissible reading of the pre-
amble as contemplating a claimed apparatus that may also
route digital data signals in the opposite direction—from
Case: 19-1570 Document: 46 Page: 6 Filed: 03/31/2020
6 DEEP GREEN WIRELESS LLC v. OOMA, INC.
the telecommunications devices to the network communi-
cation line.
Claim 35 then recites the discrimination circuit limita-
tion at issue: “a discrimination circuit connected to the net-
work interface for detecting incoming voice signals from
among other digital data signals.” Id. While the claim lim-
itation requires the discrimination circuit to detect voice
signals from among other digital data signals “incoming” to
the discrimination circuit, the limitation does not limit
these signals as coming from any particular direction, e.g.,
the digital data signals received at the network interface
from the network communication line. Again, where the
claim could have referred to “said” or “the” digital data sig-
nals received at the network interface—thereby indicating
that these digital data signals are the same as the digital
data signals referenced in the network interface limita-
tion—the claim limitation instead simply detects incoming
voice signals from among “other” digital data signals. The
claim, as written, lacks any requirement that the incoming
voice signals detected by the discrimination circuit must be
coextensive with voice signals received at the network in-
terface. Rather, the breadth of the claim reasonably sup-
ports the conclusion that, like the preamble, the
discrimination circuit is agnostic as to whether these voice
signals are received from the network communication line
or from the telecommunications devices.
Deep Green argues that the Board erroneously inter-
preted “incoming” to encompass both “incoming” and “out-
going” signals. But signals are only understood as
“incoming” or “outgoing” when viewed against a particular
reference point. Although it might be reasonable to inter-
pret “incoming” signals from the perspective of the telecom-
munications devices, such that signals are incoming to
those devices after having been initially received from the
network communication line by the network interface, the
broadly written claim language also supports the interpre-
tation of “incoming” as incoming from the view of the
Case: 19-1570 Document: 46 Page: 7 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 7
discrimination circuit, without regard from where the sig-
nals come. And Deep Green does not allege that the “other”
digital data signals of the discrimination circuit must refer
to the “digital data signals” received at the network inter-
face. Thus, as the Board concluded, the claim “only re-
quires that the discrimination circuit be connected to the
network interface, not that the signals being detected are
incoming from that interface.” J.A. 23.
The Board’s interpretation does not, as Deep Green
contends, render “incoming” superfluous. Instead, it iden-
tifies voice signals that are incoming to the discrimination
circuit from external sources, as opposed to voice signals
produced by or outgoing from the discrimination circuit.
Deep Green also argues that a skilled artisan would
read “incoming” with a particular conception in mind in
light of the specification. It is true that the specification
uses “incoming” when describing calls received from a tel-
ephone line, and “outgoing” when connecting a telephone
device to a telephone line. But the directionality of these
calls is described in the particular context of the telephone
devices making and receiving the calls. ’714 patent at col.
2, ll. 38–42 (describing “incoming calls to the equipment,”
defined as “modems, telephones, fax machines, answering
machines, or any other device that needs access to a tele-
phone line”); id. at col. 4, ll. 24–28 (processing “outgoing
calls” according to the “priority in which communication
lines are accessed by a device”);
id. at col. 4, ll. 57–60. In
contrast, claim 35 is silent as to the source or destination
of the “incoming voice signals.” With the claim lacking that
concomitant context laid out in the specification, the
Board’s interpretation of “voice signals” as incoming to the
discrimination circuit is not inconsistent with the specifi-
cation’s disclosure, but instead reflects the broad scope of
the claim.
Deep Green next argues that the specification’s de-
scription of the discrimination circuit in the context of
Case: 19-1570 Document: 46 Page: 8 Filed: 03/31/2020
8 DEEP GREEN WIRELESS LLC v. OOMA, INC.
processing incoming calls from the network interface man-
dates that “incoming” be read as incoming from the net-
work interface. The specification describes the
discrimination circuit in a single sentence: “[o]ptionally,
the invention can be fitted with a discrimination circuit
that can detect the type of call and automatically route the
communication line to the corresponding DO.” 2 ’714 patent
at col. 5, ll. 8–10. But disclosure of one embodiment does
not mean that broadly written claim language must be lim-
ited to that embodiment. Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir.
2004). The specification never defines the word “incom-
ing,” nor does it explicitly require that incoming be meas-
ured against any particular perspective. And, as explained
above, nothing in the claim preamble restricts the data sig-
nals to being conveyed in any particular direction, nor does
Deep Green argue to the contrary.
In light of the broad language of the claim, which does
not demand identity between the digital data signals re-
ceived at the network interface and the “other” digital data
signals from which the “incoming voice signals” are de-
tected, it was reasonable for the Board to decline to read in
to the claim a particular network direction to the “incoming
voice signals.” Although Deep Green’s interpretation of
“incoming” with respect to the flow of network traffic to the
telephone equipment might also be reasonable, 3 the Board
2 “DO,” or device order setting, refers to the order in
which downstream equipment is polled to connect incom-
ing calls from the communications line. For example, the
line-sharing device begins by ringing the first device listed
in the device order setting, then the second device, and so
on. Id. at col. 4, l. 57–col. 5, l. 4.
3 It may very well be that Deep Green’s construction
better reflects the meaning of “incoming” as understood in
view of the networking technology disclosed in the
Case: 19-1570 Document: 46 Page: 9 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 9
did not err in adopting the broadest of the two reasonable
constructions.
CONCLUSION
We have considered Deep Green’s remaining argu-
ments and find them unpersuasive. Deep Green relies
solely on its claim construction argument in appealing the
Board’s conclusion that the challenged claims would have
been obvious over Gernert and AT&T. Significantly, Deep
Green does not dispute that Gernert and AT&T teach “in-
coming voice signals” under the Board’s construction.
Thus, for the reasons stated above, we affirm the Board’s
construction of “incoming voice signals” and the Board’s
conclusion that the claims at issue are unpatentable.
AFFIRMED
specification. But claim construction in this IPR is not gov-
erned by the framework laid out in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc), and the Board’s
construction here is not unreasonable, nor is it inconsistent
with the specification.
Case: 19-1570 Document: 46 Page: 10 Filed: 03/31/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
DEEP GREEN WIRELESS LLC,
Appellant
v.
OOMA, INC.,
Appellee
______________________
2019-1570
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01541.
______________________
MOORE, Circuit Judge, dissenting.
The majority does not contend that the Board’s con-
struction of “incoming voice signals” is correct, and it is not.
Instead, the majority holds that the Board’s construction is
not wrong enough to be unreasonable. I respectfully dis-
sent.
The broadest reasonable interpretation standard,
while certainly broad, does not give the Board an unfet-
tered license to interpret claim terms without regard for
the full claim language and the specification. Trivascular,
Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). Even
under the broadest reasonable construction, “claim
Case: 19-1570 Document: 46 Page: 11 Filed: 03/31/2020
2 DEEP GREEN WIRELESS LLC v. OOMA, INC.
language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In
re Suitco Surface, Inc.,
603 F.3d 1255, 1260 (Fed. Cir.
2010). Indeed, the Board must give claims their broadest
reasonable construction in view of the specification, not
their broadest possible construction. The Board therefore
erred in construing the claim term “incoming voice signals”
as not requiring that the claimed voice signals be the voice
signals incoming from the claimed network interface.
The ’714 patent is directed to a telephony device with a
telephone line distribution system enabling connected de-
vices to share telephone lines. ’714 patent at Abstract. The
claimed device assigns outgoing usage of the telephone line
according to a priority system. Id. at 4:24–26. Incoming
calls, on the other hand, are processed in accordance with
a Device Order (DO) establishing the order in which the
devices are signaled by a communications line.
Id. at 4:57–
60. The claimed device utilizes a “discrimination circuit”
that can detect the type of call and automatically route the
communication line to the corresponding telecommunica-
tions device.
Id. at 5:8–10. Claim 35 is representative and
recites:
35. An apparatus for routing digital data signals
among a plurality of telecommunications devices
over a network, the apparatus comprising:
a network interface for connection to at
least one network communication line,
wherein the network interface receives dig-
ital data signals over the at least one net-
work communication line, the digital data
signals comprising at least one voice signal;
a discrimination circuit connected to the
network interface for detecting incoming
voice signals from among other digital data
signals;
Case: 19-1570 Document: 46 Page: 12 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 3
a wireless interface, wherein the wireless
interface communicates the digital data
signals between a plurality of wireless tel-
ecommunications devices; and
a processor for executing instructions to
route the digital data signals between the
network interface, the wireless interface,
and the plurality of wireless telecommuni-
cations devices for communication over the
network; and
a circuit for routing voice communication
sessions to specific telecommunications de-
vices.
Claim 35 recites routing digital data signals among a
plurality of telecommunications devices over a network.
The claim refers to the digital data signals 6 times as it
routes them through the system. I believe that these digi-
tal data signals are the same digital data signals being
routed through the system. The Board’s construction is ba-
sically that 5 of the mentioned digital data signals are the
same because most of them are preceded by the word “the”
and thus are the same digital data signals mentioned in
the preamble. However, because the word “the” does not
appear before the use of “digital data signals” routed
through the discrimination circuit (one component within
the system), the Board concludes these can be any digital
data signals and therefore do not have to be the same digi-
tal data signals being passed through the rest of the sys-
tem.
The claimed discrimination circuit is connected to the
network interface and detects “incoming voice signals from
among other digital data signals.” In light of the claim as
a whole, the only reasonable reading of this limitation is
that the digital data signals received by the discrimination
circuit are the same data signals (comprising at least one
Case: 19-1570 Document: 46 Page: 13 Filed: 03/31/2020
4 DEEP GREEN WIRELESS LLC v. OOMA, INC.
voice signal) received by the network interface. That the
claimed incoming voice and data signals are not modified
by the words “said” or “the” does not mean that we can ig-
nore the plain language of the claims. The remaining lim-
itations further reveal the error in the Board’s
construction. The third limitation recites a “wireless inter-
face” that “communicates the digital data signals between
a plurality of wireless telecommunications devices.” Id.
Likewise, the fourth limitation recites “a processor for exe-
cuting instructions to route the digital data signals be-
tween the network interface, the wireless interface, and
the plurality of wireless telecommunications devices . . . .”
Id. Lastly, the claim recites a circuit for “routing voice com-
munication sessions to specific telecommunications de-
vices.”
Id. When read as a whole, the functional
relationship between the claim elements is clear: the sys-
tem elements are recited in the order in which the data sig-
nals flow. Data signals, including at least one voice signal,
are received by the network interface. The discrimination
circuit is used to detect voice signals from among the other
digital data signals incoming from the network interface.
The wireless interface then communicates the data signals
between a plurality of connected telecommunication de-
vices according to the instructions executed by the proces-
sor. Voice signals, in particular, are routed to specific
telecommunications devices. Based on the plain language
of the claim, the Board’s construction that the digital data
signals routed through the discrimination circuit need not
be the same digital data signals routed through the rest of
the system is unreasonable.
The specification strongly reinforces Deep Green’s pro-
posed construction that the digital data signals processed
by the discrimination circuit are the same digital data sig-
nals flowing through the rest of the system. The claimed
“incoming voice signals” are incoming from the network in-
terface. The specification describes the signals as traveling
Case: 19-1570 Document: 46 Page: 14 Filed: 03/31/2020
DEEP GREEN WIRELESS LLC v. OOMA, INC. 5
in two directions: “incoming” and “outgoing.” Every use in
the specification of “incoming” (and this term is used 21
times in the patent) is compatible with only one view – that
the incoming signals are from a network communication
line toward the telecommunications devices. See, e.g., ’714
patent at Abstract, Fig. 4, 1:48–50, 2:30–32, 2:43–45, 2:62–
63, 4:57–62, 5:14–17; see also id. at Claims 26, 35, 44, 53,
62, 67, 72, 77, 82, 87, 121, 126. Every use of the term “out-
going” (and this term is used 5 times) likewise reflects the
direction from a telecommunications device to a network
communication line. See, e.g., ’714 patent at Fig. 3, 2:38–
42, 2:60–61, 4:24–29. “Outgoing” signals are processed in
accordance with a Communications Line Use Priority
(CLUP) setting.
Id. at 4:24–26.
When transmitting out-
going signals, a device accesses the communication lines
according to the priority established by the CLUP and in-
dependently of the type of signal being sent.
Id. at 4:26–
27. In contrast, the specification states that the invention
“may process incoming calls” according to a DO, which “es-
tablishes the order in which the devices are signaled by a
communication line.”
Id. at 4:60–5:19. In the sole embod-
iment in which a discrimination circuit is used, it is con-
templated that the discrimination circuit “can detect the
type of call and automatically route the communication
line to the corresponding DO.”
Id. at 5:8–17.
The specification and the claims only discuss a discrim-
ination circuit in connection with calls that are incoming
over the network communication line. And the claims
make clear that the incoming voice signals are transmitted
“over the at least one network communication line” and are
“rout[ed] . . . to specific telecommunications devices.” See,
e.g.,
Id. at Claim 35. Deep Green’s construction is the only
construction that accurately reflects the meaning of “in-
coming” in view of the networking technology disclosed in
the specification and claimed in the asserted claims.
I am not certain exactly where the line is. How wrong
must a construction be before it becomes unreasonable?
Case: 19-1570 Document: 46 Page: 15 Filed: 03/31/2020
6 DEEP GREEN WIRELESS LLC v. OOMA, INC.
For me, this one crosses that line. I would hold that the
claimed “digital data signals” are the same throughout the
claim and thus the “incoming voice signals” are among the
digital data signals which as claimed are incoming from the
network interface. I respectfully dissent.
