The opinion of the court was delivered by: Hon. Rudi M. Brewster United States Senior District Judge
ORDER GRANTING MOTION FOR ATTORNEY FEES ON DOUGHTY PATENT [Docket No. 2161]
Defendant Dell Inc. seeks attorney's fees on the ground that it was the prevailing party in this "exceptional case" regarding Plaintiff Lucent Technologies Inc.'s Doughty Patent, which claims a method and apparatus for receiving and displaying the identity of the telephone caller from a telephone switching system (U.S. Patent No. 4,582,956).*fn1 35 U.S.C. § 285. For the reasons stated below, the Court grants the motion.
Lucent Obtains Doughty Patent In 1983, Plaintiff Lucent applied for the Doughty patent (U.S. Patent No. 4,582,956), which issued in 1986. Def.'s Ex. B. The asserted claims are directed to methods and an apparatus for receiving and displaying Caller Identification information sent from a telephone switching system. The pertinent claims require the detection of an "unmodulated signal" in the context of receiving and displaying Caller ID information. E.g., id. (claims 1 & 9 "detecting said unmodulated signal during said silent interval between said ringing signals").
Lucent's Arguments During Reexamination Proceedings
On an application filed by a competitor in 1992, the PTO reexamined the Doughty Patent. Def.'s Ex. E at 108. In order to overcome prior art (such as the Baker patent issued in 1981), Lucent argued that signals that conveyed digital zeros or ones were signals that conveyed information and thus were not "unmodulated." E.g., Def.'s Ex. E at 188-92. Nonetheless, the PTO invalidated those claims of the Doughty Patent. Id. at 195-97.
In response, Lucent filed its own request for reexamination in 1993 and proposed the addition of new claims. Id. at 207; see also id. at 227 & 237. Lucent defended its patent by focusing on its "unmodulated" signal to trigger a unit to receive the modulated signal. Id. at 209. The PTO again rejected these arguments. Id. at 255-70. Next Lucent proposed new claims and distinguished Baker's first signal ("segment 83" of Figure 2) as containing a countable number of zeros and ones, which meant it was a modulated signal carrying coded information. Id. at 278, 282-87.*fn2 By contrast, Lucent argued that its Doughty Patent used "unmodulated signals" which were "segments in which it is impossible to identify individual ones and zeros or any other intelligence" because "[a] signal which can be decoded, to recognize exactly N zeros, is not an unmodulated signal, i.e., a signal from which no bits can be derived." Id. at 287. Lucent argued that "N zeros represent information, i.e., the digital trigger for reliably identifying subsequent conventional data signals." Id. at 286 (some emphasis omitted). Lucent's expert stated that the transmission of N zeros to assist in the detection of conventional data conveyed information, therefore, did not qualify as an "unmodulated signal." Id. at 294 (Davis Decl. ¶ 14). In 1994, the PTO issued a Reexamination Certificate with additional claims 15-19. Id. at 302 & Def.'s Ex. B at 26.
Industry Standards for Caller Identification
In the 1990's, the telephone company standard, which was publicly and widely available, implemented a Caller ID system that used two signals of countable zeros and ones that were used to convey specific information to alert the customer's equipment to prepare to receive Caller ID data. Micallef Decl., Ex. D at § 2.4.2 (generic requirements on voiceband data transmission interface). First published in December 1994, Issue 2 of the GR-30-CORE standard was published in December 1998. Id. at Copyright Page & Preface-2. The GR-30-CORE standard for on-hook data transmission consists "of a block of 300 continuous bits of alternating "0"s and "1"s. The first bit to be transmitted shall be a "0". The last bit to be transmitted shall be a "1". . . . [T]he Mark Signal shall consist of 180 mark bits." Id. at § 2.4.2 (RS-69 & RS-70). A "Mark Signal" is "[a] string of mark bits sent immediately before data transmission starts to alert the [Customer Premises Equipment] to this downloading of data." Id. at Glossary-1. A mark is "[a] single bit set to the logical value of '1'." Id.
In 2002, Lucent alleged infringement of the Doughty '956 Patent (Claims 1, 9, and 15-19) by the sale of computers with telephone modems that allowed users to connect to a telephone line because the software displayed Caller ID information for incoming calls.*fn3
Dell defended itself by claiming its own products used "modulated" signals for receiving Caller ID information. Dell argued that its products operate with signals that do contain information in the form of intelligence expressed digitally as countable zeros and ones, or "modulated" signals. Specifically, Dell's products detect a "Channel Seizure Signal" (with 300 continuous bits of alternating zeros and ones) and a "Mark Signal" (with 180 mark bits -- which is ...