Addressing issues of infringement of a method claim patent, the U.S. Court of Appeals for the Federal Circuit reversed a finding of infringement of a method for routing "1-800" telephone calls to an appropriate service location because the accused infringer did not assign 800 calls to any service location prior to the call. 800 Adept, Inc. v. Murex Securities, Ltd. et al., 2008 U.S. App. LEXIS 18521, Case No. 07-1272 -1356 (Fed. Cir., Aug. 29, 2008) (Plager, J.).
Plaintiff 800 Adept (Adept) and defendant Murex Securities, Murex Licensing and Targus Information (Targus) sell competing services that are used to route calls made to 800 numbers. Each company owns patents covering systems and methods for call routing. Some businesses advertise a single 800 number but have multiple service locations. When a caller dials the 800 number of one of these businesses, the system determines which location is called. Customers include owners of 800 numbers, as well as providers of telecommunications platforms that route 800 calls for such businesses.
A jury essentially found for plaintiff Adept on all issues, and the trial court entered judgment, issued a permanent injunction and awarded enhanced damages of $24 million on the patent infringement claim, bringing the total damages award to $49 million. Adept appealed.
On appeal, the Federal Circuit reversed. The dispute was whether the claims of the patents-at-issue required assignment of a service location telephone number to the telephone number of each potential service location called before any call is placed. The plaintiff did not dispute that the assignment must occur before a call is placed, but argued that the "assigning limitation" can be satisfied by placing an algorithm "in or with" a database, even though the algorithm is implemented during the call. The Federal Circuit held that nothing in the claims, specification or prosecution history suggests that storing an algorithm that will be used to determine the telephone number of the correct service location during a telephone call constitutes an assignment of a service location telephone number to a potential caller before a telephone call is placed. The Court went on to note that all of the intrinsic claim construction evidence (claims, specification and prosecution history) characterized the invention as one in which all calculations necessary for assigning service location telephone numbers to callers are performed before any telephone calls are made. Thus, the Court reasoned that the algorithm could not be used during the call, as per the accused infringers' method.
The Federal Circuit went on to state that the district court improperly construed the "assigning" step to not exclude calculations made during the telephone call. This allowed the jury to improperly find that the accused infringer, which made calculations during the call, infringed the patents. Because all calculations necessary to complete the assignment are performed in real-time while the caller is on the line, the Court reasoned Targus service did not satisfy the "assigning" limitation.
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