NCIC Prevails At Fed. Circ. In Collect-Call Patent Case

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NCIC Inmate Phone Services has won its patent defense in both the Eastern District Court and in the Federal Circuit of Appeals.

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The Federal Circuit affirmed a lower court's finding of noninfringement in a suit against NCIC Inmate Phone Services over a collect-calling technology patent, ruling that the disputed terms of the patent require the transmission of a “live” voice.

Affirming a Texas federal judge's claim construction, the appeals court decided that the claims of U.S. Patent No. 7,876,744 B2 patent, which is owned by HowLink Global LLC and covers voice over Internet protocol technology, require that a caller be able to talk to the called party temporarily before a decision to accept the collect call is made.

HowLink argued that the judge incorrectly construed two terms — “temporarily transmitting voice of a caller to the called terminal to identify the caller when the second communication link is established” and “prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission” — to require the transmission of a “live” voice.

But the three-judge panel ruled that the language of the first claim requires a “live” voice and that appellant's counsel conceded as much during oral arguments.

“Simply, the district court correctly concluded that, to practice the elements of the claims at issue, a caller must be able to talk to the called party temporarily before a decision to accept the call is made,” Wednesday's decision said.

The ’744 patent, which was issued in January 2011 and is titled “Method for Collect Call Service Based on VoIP Technology and System Thereof,” describes a method and system for making collect calls over a VoIP network using a collect call switch, according to court documents.

HowLink asserted infringement of the patent in a February 2011 suit against NCIC and Consolidated Telecom Inc., which provide VoIP-based inmate phone systems and services to various correctional facilities, court papers said.

A magistrate judge construed the “temporarily [transmitting] voice of a caller” term as “for a limited time, transmitting the live voice of a caller so that the caller can speak to the called party and the called party can hear what the caller is saying when the second communication link is established,” according to court papers.

The judge constructed the “prohibiting voice transmission” term to mean “preventing the called party from continuing to hear what the caller is saying until after the collect call acceptance,” court filings said.

HowLink claimed that the magistrate judge improperly limited the phrase “voice of a caller” to mean only the caller’s “live” voice, and excluded the caller’s “recorded” voice from the scope of the claims, but a Texas federal judge adopted the magistrate judge's report and recommendation in August 2012.

The Federal Circuit said Wednesday that the “after the temporary voice transmission” limitation clearly referred back to the earlier “temporary transmitting voice of a caller” limitation.

The appeals court agreed with the plaintiff that “voice of a caller” and “voice transmission” don't have the same exact scope but nonetheless decided that they still refer to the same type of transmissions.

The patent-in-suit is U.S. Patent No. 7,876,744 B2.

Adrian M. Pruetz of Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP, which is representing HowLink, told Law360 on Wednesday that the firm and the inventor are "very disappointed in the decision."

Attorneys for NCIC didn't immediately respond to requests for comment Wednesday.

U.S. Circuit Judges Alan Lourie, William Bryson and Kathleen O'Malley sat on the panel for the Federal Circuit.

HowLink is represented by Adrian M. Pruetz, Erica J. Van Loon and Andrew Y. Choung of Glaser Weil Fink Jacobs Howard Avchen & Shapiro LLP.

NCIC is represented by Darrell G. Dotson, Gregory P. Love and Scott E. Stevens of Stevens Love, with Todd Y. Brandt of Stephens Love serving of counsel.

The case is HowLink Global LLC v. Network Communications International Corp. et al., case number 13-1181, in the U.S. Court of Appeals for the Federal Circuit.

By Kurt Orzeck - Law360

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