NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
AEROTEL, LTD., AEROTEL U.S.A., INC.,
AND AEROTEL U.S.A., LLC,
Plaintiffs-Appellants,
v.
T-MOBILE USA, INC.,
Defendant-Appellee.
__________________________
2010-1179
__________________________
Appeal from the United States District Court for the
Western District of Washington in case no. 07-CV-1957,
Judge James L. Robart.
___________________________
Decided: December 20, 2010
___________________________
DENNIS M. FLAHERTY, Ostrager Chrong Flaherty &
Broitman, P.C., of New York New York, argued for plain-
tiffs-appellants. With him on the brief was GLENN F.
OSTRAGER. Of counsel was JEANNE C. CURTIS, Ropes &
Gray LLP, of New York, New York
AEROTEL LTD v. TMOBILE USA 2
SHANNON M. JOST, Stokes Lawrence, P.S., of Seattle,
Washington, argued for defendant-appellee. With her on
the brief was SCOTT A.W. JOHNSON.
__________________________
Before BRYSON, SCHALL, and PROST, Circuit Judges.
PER CURIAM.
Aerotel, Ltd., and its corporate affiliates (“Aerotel”)
appeal a consent judgment of noninfringement entered
following a district court’s claim construction order. We
affirm.
I
Aerotel is the assignee of
U.S. Patent No. 4,706,275
(“the ’275 patent”). In 2007, Aerotel filed suit against
appellee T-Mobile USA, Inc., alleging infringement of
claim 23 of the ’275 patent. Claim 23 recites a method of
making prepaid telephone calls. It comprises the follow-
ing steps:
(a) issuing a valid special code to a calling
party when a prepayment amount is
deposited to the credit of said calling
party;
(b) storing the prepayment amount in a
memory in a special exchange;
(c) dialing said special exchange when the
calling party wishes to make a tele-
phone call to a called party;
(d) inputting a special code and the num-
ber of the called party;
(e) connecting the calling party to the
called party only if the special code
inputted by the calling party is a valid
3 AEROTEL LTD v. TMOBILE USA
special code, and in addition, only if
the current initial prepayment
amount in the memory exceeds the
minimum cost of a call to the inputted
number;
(f) monitoring the running cost of the call
in accordance with its duration;
(g) disconnecting the calling party from
the called party when the calling
party hangs up, or when the running
cost of the call exceeds the current ini-
tial prepayment amount, whichever
occurs first; and
(h) deducting from the initial prepayment
amount the running cost of the call.
Following a hearing, the district court construed ten
claim terms or phrases, six of which are appealed: (1)
“dialing said special exchange”; (2) “inputting a special
code and the number of the called party”; (3) “connecting
the calling party to the called party only if the special
code inputted by the calling party is a valid special code”;
(4) “monitoring the running cost of the call”; (5) “current
initial prepayment amount”; and (6) “deducting from the
initial prepayment amount the running cost of the call.”
As part of its claim construction, the court interpreted
step (d), “inputting a special code and the number of the
called party,” as necessarily following step (c), “dialing
said special exchange when the calling party wishes to
make a telephone call to a called party.” The court also
interpreted the claim language as requiring that the
“calling party” enter the special code.
After the court issued its claim construction order, the
parties stipulated to summary judgment of noninfringe-
ment, and judgment was entered. The parties agree that
AEROTEL LTD v. TMOBILE USA 4
in light of the stipulation, each of the district court’s claim
constructions, with the exception of “current initial pre-
payment amount,” must be overturned in order to reverse
the grant of summary judgment.
II
We begin and end with step (d) of claim 23: “inputting
a special code and the number of the called party.” The
district court’s construction requires that the entirety of
step (d) be performed by the calling party. The district
court also concluded that claim 23 must be read sequen-
tially so that the special code must be input after the
special exchange is dialed. Thus, the court construed the
claim to require that step (d) be performed each time a
connection is initiated between the calling party and the
special exchange.
Aerotel challenges two aspects of the district court’s
construction of step (d). First, Aerotel disagrees with the
district court that the step of inputting the special code
can take place only after the special exchange is dialed.
Second, Aerotel argues that “inputting a special code”
need not be done by a person, but can be done automati-
cally, without human intervention.
1. On the first issue, Aerotel contends that the first
action recited in step (d), inputting a special code, may
precede the action recited in step (c), dialing the special
exchange. In Interactive Gift Express, Inc. v. Compu-
Serve, Inc.,
256 F.3d 1323, 1343 (Fed. Cir. 2001), we held
that a method claim is properly construed to require that
the steps be performed in sequential order when the
claims or the specification “directly or implicitly require[]”
such ordering. See also Baldwin Graphic Sys., Inc. v.
Siebert, Inc.,
512 F.3d 1338, 1345 (Fed. Cir. 2008) (noting
5 AEROTEL LTD v. TMOBILE USA
that prosecution history may similarly require that the
steps be performed in the recited order). In this case,
Aerotel agrees with the trial court that the second half of
step (d), “inputting . . . the number of the called party,”
must follow step (c). There is no way the number of the
called party could be known by, much less transmitted to,
the special exchange before the calling party is connected
with the special exchange. However, Aerotel argues that
the two actions recited in step (d) constitute two separate
steps and that the first of those—“inputting a special
code”—need not occur after step (c).
Aerotel’s argument that step (d) can be divided into
two steps is unsupported by the claim language, the
specification, or the prosecution history of the ’275 patent.
As T-Mobile points out, “inputting such special code for
verification” and “inputting the number of the called
party” are separated as distinct steps in claim 1 of the
’275 patent. ’275 patent, col. 6, ll. 55-56. The contrast
between the two claims strongly suggests that the two
portions of step (d) of claim 23 were intended to be per-
formed together. Moreover, the specification repeatedly
refers to the two actions recited in step (d) as occurring
after the connection is established with the special ex-
change and before the calling party is connected with the
called party. E.g., ’275 patent, col. 3, ll. 26-30;
id. col. 4,
ll. 19-22. Figure 1 of the patent depicts “Dial code &
called number” as a single block on a flow chart repre-
senting the operation of the system. Figure 2 separates
the inputting of the special code and the number of the
called party, but each of those steps occurs after the
special exchange is reached and before the calling party is
connected to the called party. Likewise, during prosecu-
tion Aerotel confirmed that in the method taught by the
patent, the calling party inputs his or her special code
AEROTEL LTD v. TMOBILE USA 6
“[a]fter the calling party is connected with the special
exchange.”
To support its argument, Aerotel directs the court to
the account replenishment process discussed in the speci-
fication. The specification provides that once the calling
party is connected to the special exchange, a “special code
say 888 can be used to input more credit with another
code number.” ’275 patent, col. 6, ll. 24-26. Pointing to
the storage process in step (b), Aerotel reasons that the
credit influx must be stored in the memory of the special
exchange. Leaving aside the question whether the added
funds would be considered a “prepayment amount” under
step (b), Aerotel’s suggestion that the replenishment
“special code” can substitute for the “valid special code”
referenced in steps (a) and (e) is clearly incorrect. A
calling party plainly cannot connect to the special ex-
change simply by dialing a generic special code used for
adding credit, such as 888. Moreover, during prosecution
the applicant stated that the “customer pays a predeter-
mined amount and receives a ticket having an associated
authorization code or PIN number (referred to as a ‘spe-
cial code’).” Although Aerotel argues that the reference to
the PIN number was limited to particular embodiments of
claim 23, the context makes it clear that the quoted
language referred to the invention as a whole and was not
restricted to a particular embodiment.
Aerotel suggests that the reference to “more credit” in
the description of the replenishment process harkens back
to steps (a) and (b). The replenishment process, however,
does not “restart” the sequence of steps recited in claim
23, as Aerotel argues. Before replenishing, the calling
party must already be connected to the special exchange;
thus, step (c) must already have been completed at that
point. Until the connection with the special exchange is
7 AEROTEL LTD v. TMOBILE USA
lost, the special code does not need to be re-input to
enable the calling party to conduct transactions with the
special exchange.
Finally, Aerotel points to language in the specification
contemplating that the method can be used to make
multiple calls once the calling party has established a
connection with the special exchange. ’275 patent, col. 6,
ll. 22-24. In that setting, the calling party can input the
number of the called party without inputting the special
code before each subsequent call. However, all of the
previous steps of claim 23 would have already taken
place, so it is not relevant that a new number of a called
party would be input without the special code.
In sum, the most logical reading of claim 23 orders
steps (c) and (d) sequentially. While not explicit in the
claim language, that reading is compelled by the natural
sequence of steps in a telephone call and the lack of
support in the specification or prosecution history for
splitting step (d) into two parts.
2. On the second issue, Aerotel’s argument that “in-
putting a special code” can be done automatically, and
need not be done by a person each time step (d) is exe-
cuted, is premised on the fact that step (d) is silent about
who or what inputs the special code. Aerotel conceded in
its reply brief that the calling party must input the spe-
cial code at some point in the process recited in claim 23.
That conclusion follows directly from the reference in step
(e) to “the special code inputted by the calling party.”
Aerotel contends, however, that claim 23 reads on an
embodiment in which the public telephone system inputs
the special code to reach the special exchange. Aerotel
posits that because the calling party can never reach the
special exchange without going through the public tele-
AEROTEL LTD v. TMOBILE USA 8
phone system, nothing in claim 23 requires that only the
calling party can input the special code. Aerotel’s position
is not at odds with the district court’s construction, how-
ever, because the district court did not construe the claim
language to require that inputting the special code be
performed only by the calling party. Regardless of
whether the special code is considered to be “inputted”
once (by the calling party) or twice (by the calling party
and the public telephone system), under each of the
embodiments of the invention the calling party still must
input the special code after the special exchange is dialed.
Aerotel also points to language in the specification in-
dicating that “a register in the exchange can . . . input the
dialed information to cause the exchange to complete the
call between the calling party and the called party.” ’275
patent, col. 3, line 67, to col. 4, line 2. The specification
discloses an embodiment in which the register “stores the
called number received from the calling party and directs
the redialer . . . to dial the number after verification.”
Id.
col. 5, ll. 46-48. That embodiment of the ’275 patent does
not refer to storage of the special code in the register or
its receipt by the redialer. But even if it had, that de-
scription of the embodiment does not affect the require-
ment of claim 23 that the calling party enter the special
code. The register, like the public telephone system,
might be deemed an intermediary between the caller and
the special exchange, but that characterization does not
obviate the need for the calling party to input the special
code after the special exchange is dialed.
We conclude that the district court correctly construed
step (d) to require the calling party to input the special
code each time the calling party connects to the special
exchange. Because that construction is fatal to Aerotel’s
9 AEROTEL LTD v. TMOBILE USA
infringement argument, we need not address the district
court’s construction of the remaining claim terms.
AFFIRMED
