In VONAGE v. SPRINT Duane Morris as legal team on behalf of VONAGE
referenced same citation Phillips v. AWH corp in relating to construing a claim.
First, prosecution history estoppel is a rule of claim construction that arises out of
representations made by the patentee during the prosecution history. “The prosecution history
can often inform the meaning of the claim language by demonstrating how the inventor
understood the invention and whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would otherwise be. The purpose of
consulting the prosecution history in construing a claim is to exclude any interpretation that was
disclaimed during prosecution.” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
(citations, punctuation omitted). The rule of prosecution history estoppel is part of claim
construction, to which the Court must consider as it defines the scope of the claims, the first
prong of the infringement analysis.
Sprint’s Motion is only its latest attempt to free itself from the representations it made to
the United States Patent & Trademark Office in order to obtain the Asserted Patents. Sprint’s
Motion to Strike is contrary to the principles of claim construction and the doctrine of
equivalents, the rulings of this Court, and the public notice function of patents upon which the
public, and Vonage, is entitled to rely, and must be denied accordingly.
September 14, 2007
s/ Bary Golob _______________
Patrick D. McPherson
Barry Golob
Donald R. McPhail
Duane Morris LLP
1667 K Street N.W.
Washington, DC 20006-1608
202-776-7800
pdmcpherson@duanemorris.combgolob@duanemorris.comdrmcphail@duanemorris.comL. Norwood Jameson
1180 West Peachtree Street
Atlanta, GA 30309
404-253-6900
Attorneys for Defendants/Counterclaim
Plaintiffs Vonage America, Inc. and Vonage
Holdings Corp.
