                       NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                        2009-1121

                                 CATCH CURVE, INC.,

                                                        Plaintiff-Appellant,

                                            v.

                                      VENALI, INC.,

                                                        Defendant/Third Party Plaintiff-
                                                        Appellee,

                                            v.

                        J2 GLOBAL COMMUNICATIONS, INC.,

                                                        Third Party Defendant.


        Robert A. Sacks, Sullivan & Cromwell LLP, of Los Angeles, California, argued for
plaintiff-appellant. With him on the brief were Brian R. England, and Edward E.
Johnson. Of counsel on the brief was Frank L. Bernstein, Kenyon & Kenyon LLP, of
San Jose, California.

      John C. Carey, Carey Rodriguez Greenberg & Paul, LLP, of Miami, Florida,
argued for defendant/third party plaintiff-appellee. With him on the brief was Douglas L.
O’Keefe.

Appealed from: United States District Court for the Central District of California

Judge Dean D. Pregerson
                      NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit


                                       2009-1121

                                 CATCH CURVE, INC.,

                                                 Plaintiff-Appellant,

                                            v.

                                     VENALI, INC.,

                                                 Defendant/Third Party Plaintiff-
                                                 Appellee,

                                            v.

                        J2 GLOBAL COMMUNICATIONS, INC.,

                                                 Third Party Defendant.


    Appeal from the United States District Court for the Central District of California
                in case no. 05-CV-04820, Judge Dean D. Pregerson.

                           ___________________________

                           DECIDED: January 22, 2010
                           ___________________________


Before NEWMAN, BRYSON, and DYK, Circuit Judges.

BRYSON, Circuit Judge.

                                             I

      Catch Curve, Inc., owns a group of patents that are directed to the transmission

and storage of facsimile (“fax”) messages over switched telephone networks. Four of

the patents share a common specification and are continuations-in-part of the fifth
patent, U.S. Patent No. 4,994,926 (the ’926 patent), the application for which was filed

in 1988. 1 The inventions described in the patents focus on the use of a computer-

based device known as a “store and forward facility,” or SAFF. The patents describe

the inventive subject matter as entailing the transmission of a fax message from an

originating traditional fax machine to an “originator SAFF,” which either forwards the

incoming fax message or stores it for later transmission. The originator SAFF may

forward the fax message over a switched telephone network to a destination fax

machine or to a second SAFF, after which the second SAFF forwards the message to

the destination fax machine. By employing a SAFF or a pair of SAFFs, the patented

method enables users to alter the timing or delivery location of their fax messages to

achieve greater efficiency in the use of their fax machines and the available telephone

lines.

                                             A

         In 2005, Catch Curve brought this patent infringement action against Venali, Inc.,

in the United States District Court for the Central District of California. In the complaint,

Catch Curve asserted claims from all five patents.         Following a claim construction

proceeding, the district court construed the term “facsimile,” as used in the patents, to

mean “image data transmitted using facsimile protocol on the switched telephone

network”; the term “facsimile message,” as used in the patents, to mean “[a] message




         1
             The four patents that share a common specification are U.S. Patent No.
5,291,302; U.S. Patent No. 5,459,584; U.S. Patent No. 6,643,034; and U.S. Patent No.
6,785,021 (“the ’021 patent”). The common specification differs from the original
specification of the ’926 patent only insofar as it discloses two additional features of the
invention, the ability to send a reply to a received fax message and the ability to provide
a fax-to-voice message conversion service. Neither feature is pertinent to this appeal.


2009-1121                                    2
transmitted and received by facsimile protocol”; and the term “facsimile protocol,” as

used in the patents, to mean “the standardized procedure that governs the transmitting

and receiving of facsimile messages over the switched telephone network.” The court

further explained that facsimile protocol excludes “other protocols whereby the

substance of a facsimile message is converted into a different format and then

retransmitted using some other protocol.” The effect of the court’s claim construction

was to require that all of the claimed systems and methods use facsimile protocol as the

basis for the claimed communications and that the transmissions all be routed over a

switched telephone network.

      Following the district court’s construction of the critical claim terms, Catch Curve

limited its case to assert only claims 33, 44, 64, 69, and 78 of the ’021 patent. Those

five claims, which Catch Curve refers to as the “storage” claims, recite methods for

transmitting a fax message (or “facsimile information”) over a switched telephone

network from an originating fax machine to a SAFF, which then stores the message.

The five asserted claims do not require the further transmission of the message from

the SAFF to another SAFF or to a destination fax machine, but instead require only that

the message be forwarded to a mailbox associated with a particular recipient (or, in the

case of claim 69, either to a mailbox or to a fax-receiving device). For example, claim

69 provides:

               69. A method of delivering a facsimile image, said method
      comprising the steps of:
               associating each telephone number of a first plurality of telephone
      numbers on a switched telephone network with an intended recipient of a
      first plurality of intended facsimile recipients;
               receiving at a first call handling facility a telephone call directed to
      one of the telephone numbers of the first plurality of telephone numbers




2009-1121                                    3
       and switched to the call handling facility by the switched telephone
       network as a result of the dialing of the one of the telephone numbers;
              answering at the call handling facility the received telephone call
       and interacting using facsimile protocol with an originating fax machine on
       the other end of the call;
              during the call, receiving at the call handling facility from the
       originating fax device a fax message, using facsimile protocol; and
              directing the fax message to one of the destinations selected from
       the group consisting of (i) a mailbox defined in a computer storage and
       associated prior to the receipt of the call with a particular recipient and
       with the particular one of the plurality of telephone numbers and (ii) a fax
       receiving device.

Although Catch Curve conceded that under the court’s claim construction Venali’s

system does not infringe most of the asserted claims, it contended that even under the

court’s construction, Venali infringes the five “storage” claims in the ’021 patent.

                                           B

       The manner in which Venali’s accused system operates is not in dispute. In

Venali’s system, an originating fax machine sends a fax message to a point of presence

(“POP”) over ordinary telephone lines. When the message is received at the POP, it is

converted into a different format, the Tagged Image File Format (“TIFF”), and it is stored

in a general queue along with a separate file containing metadata about the message.

The files are then encoded in Extensible Markup Language (“XML”) and sent via

Hypertext Transfer Protocol (“HTTP”) over the Internet to Venali’s data center. The data

center then converts the message into a Portable Document Format (“PDF”) file or into

a different TIFF file and stores the file in a user-specific mailbox. The file is later sent by

Simple Mail Transfer Protocol (“SMTP”) email, HTTP, or HTTPS (secure HTTP) to the

intended recipient.

       Based on its construction of the claims, and in particular on its construction of the

term “facsimile” to mean image data transmitted using fax protocol over a switched



2009-1121                                      4
telephone network, the district court concluded that Venali’s accused system does not

infringe the asserted claims. The court therefore entered summary judgment in Venali’s

favor on Catch Curve’s infringement claims.           With respect to Venali’s cross-claims

against third-party defendant j2 Global Communications, Inc., Catch Curve’s parent

corporation, the court granted summary judgment against Venali. Catch Curve appeals

the grant of summary judgment against it. Venali has not taken a cross-appeal from the

summary judgment as to the cross-claims against j2.

                                             II

                                             A

       Catch Curve argues that the district court erred by limiting the claims to a specific

protocol. It asserts that a “facsimile message” or “facsimile communication” should be

construed to refer to the image data that is initially transmitted by a facsimile machine,

and   that   the   communication     remains      a   “facsimile   message”   or   “facsimile

communication” regardless of any subsequent changes in the format used to convey

that data after it is sent. Venali, on the other hand, contends that the district court

properly limited the claims because the patents use the terms “fax message” and “fax

communication” to mean messages that are communicated in fax protocol over a

switched telephone network, and because those terms do not include messages that

are converted into different formats for transmission over the Internet.

       The district court correctly noted that “[f]or a machine to be a ‘fax’ machine that

sends ‘fax’ messages, it must use a certain protocol . . . to communicate. Otherwise,

nothing distinguishes these machines from any other machine used for communication.”

In the common specification of the five patents, the inventors made clear that they used




2009-1121                                    5
the term “facsimile communications” to refer to communications between conventional

fax machines or their proxies over a switched telephone network. The specification

describes the subject matter of the patents as “[t]he electronic transmission of

documents by way of facsimile (fax) systems, employing public and private switched

telephone networks,” ’021 patent, col. 1, ll. 29-31, and it describes the inventions

generally as consisting of “a system and method for providing a comprehensive

interactive facsimile message management system embedded in a switched telephone

network,” id., col. 21, ll. 27-29. The disclosed method, according to the specification, is

designed “to achieve this in a way which is fundamentally compatible with existing fax

terminal machines.” Id., col. 3, ll. 2-3. The “basic approach,” the specification adds, “is

to provide special computer-based fax Store And Forward Facilities (SAFFs) as an

integral part of a switched telephone network system.” Id., col. 3, ll. 3-6. Because the

specification was first filed in 1988, the reference to “existing fax terminal machines,”

like the references to other features of fax technology, pertains to the technology as it

existed at that time.

       Nothing in the specification suggests that the fax messages of the invention are

converted to a different format and transmitted to the recipient over a medium other

than a switched telephone network. If the destination fax machine is within the service

region of the SAFF that first receives the fax message from the sending fax machine,

the system temporarily stores the fax message and attempts to call the destination fax

machine. If contact is established, the SAFF delivers the fax message immediately.

’021 patent, col. 3, ll. 13-16. If the destination fax machine is within the service area of

a different SAFF, “the system forwards the fax document data to that facility by long-




2009-1121                                    6
distance lines, in which case the second facility attempts to call the destination

machine” so as to deliver the fax message. Id., col. 3, ll. 16-24. If the attempt to deliver

the fax message to the destination machine fails on the first try, the message is stored

at the second SAFF and subsequent attempts are made to deliver the message from

that SAFF. Id., col. 3, ll. 25-56.

       Although Catch Curve contends that the term “fax message” refers to any image

data that replicates the original fax communication, regardless of what format is used to

communicate or store that data and regardless of what medium is used to transmit the

data, that is not the way the patents use the terms “fax messages” or “fax

transmissions.” Rather, the common specification makes clear that the fax messages

that are the subject of the patent are sent and received by conventional fax machines or

their proxies over a switched telephone network using fax protocol.             When the

specification refers to devices other than traditional fax machines that can be adapted to

receive fax communications, such as computers or ordinary television sets, it explains

that those devices can be made to function as “paperless fax terminals.” In describing

the computer that can serve as a “paperless fax terminal” to receive fax messages from

the SAFF mailbox, the specification makes clear that the computer uses a computer

communications code to initiate telephonic contact with the Mail Box Service Control

and that the Mail Box Service Control switches the computer from computer terminal

mode to fax terminal mode for delivery of the requested fax messages over a telephone

network, after which the fax message is delivered just as it would be to a traditional fax

machine. ’021 patent, col. 15, ll. 57-65. There is nothing in the specification to suggest

that the fax message is converted to a different protocol for purposes of transmission,




2009-1121                                    7
nor is there anything to suggest that the fax message is transmitted to its destination

over a system quite different from a switched telephone network, such as the Internet.

       Catch Curve argues that fax protocol must be used for the communication of

image data between a fax machine and a SAFF, but need not be used for the

communication of image data between two SAFFs. Because the SAFFs are computers,

not fax machines, Catch Curve contends that the communication between the two

SAFFs must be in a digital language. While that may be, the common specification

makes it clear that the SAFFs are required to communicate with one another over a

switched telephone network.        For example, the patent teaches that the two SAFF

machines communicate “through a long-distance interface over long-distance circuits.”

’021 patent, col. 8, ll. 24-25; see also id., col. 12, ll. 33-36 (noting that the invention “can

significantly enhance the efficiency of the . . . long-distance and local telephone

circuits”). Therefore, even if the district court’s claim construction was unduly restrictive

with respect to the use of fax protocol in every phase of the communication process, it

was not in error with respect to the requirements that the communications take place

over a switched telephone network and that the fax messages be delivered to a

traditional fax machine or a proxy for such a machine by fax protocol over a switched

telephone network.

       Venali’s accused system operates in a fundamentally different manner. Venali’s

system converts messages into formats other than fax protocol before storing or

forwarding the messages and then transmits the messages to their intended

destinations via SMTP, HTTP, or HTTPS protocol over the Internet. The messages are

not sent to, and are not retrievable by, a conventional fax machine or a “paperless fax




2009-1121                                      8
terminal” operating in fax protocol. Thus, all the data storage and transfer functions in

Venali’s system, after the initial receipt and conversion of the fax message, are

inconsistent with fax protocol. In particular, Venali’s Internet transmissions are quite

different from the claimed transmissions of fax message signals over a switched

telephone network. The district court therefore correctly concluded that Venali does not

practice the methods or systems that are disclosed in the asserted patents and claimed

in the numerous claims originally asserted by Catch Curve.

                                             B

       Catch Curve argues that even if Venali’s system does not infringe the other

asserted claims, it at least infringes the five so-called “storage” claims of the ’021

patent.   Those claims relate only to the transmission of fax messages from the

originating fax machine to the SAFF and do not require the further step of transmitting

the messages to another SAFF or to the ultimate recipients.

       The five “storage” claims, like the other asserted claims, focus on the functions of

the SAFF described in the specification. Claims 33, 44, and 64 require “at least one

store and forward facility,” thus explicitly requiring the use of a SAFF. Claim 69 and its

dependent claim 78 require the step of receiving a fax message “at a first call handling

facility.” Claim 69 expressly requires that facility to have the capacity to store or forward

fax messages, thus making it clear that the recited “call handling facility” is a “store and

forward facility” as described in the specification. As noted above, the specification

states that the SAFF contemplated by the invention is “an integral part of a switched

telephone network system,” ’021 patent, col. 3, ll. 5-6, and that the SAFF must be

capable of receiving fax messages from, and sending fax messages to, conventional fax




2009-1121                                    9
machines over a switched telephone network.        By reciting the use of a SAFF, the

storage claims, like the other asserted claims of the patents in suit, are necessarily

limited to systems that are capable of sending fax messages through fax protocol over a

switched telephone network. See Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132,

1139-40 (Fed. Cir. 2003) (limiting both method and apparatus claims “to conform with

the basis on which the invention was presented in the specification”).

      In addition, the five “storage” claims each require the step of storing incoming fax

messages in user-specific mailboxes for later retrieval or alternatively (in the case of

claim 69) sending the messages directly to a fax-receiving device. The mailbox referred

to in those claims is described throughout the patent as a component of the SAFF, not

simply as a generic storage device. E.g., ’021 patent, col. 13, ll. 59-62 (describing the

mailbox as an “auxiliary storage file in the Answer Function of the destination SAFF”).

The specification explains that the contents of the SAFF’s user-specific mailbox are

associated with the telephone number of a particular user’s destination fax machine.

The messages received in each of the mailboxes are retained in a mailbox-specific

queue for future retrieval by the intended recipients, who can “at their convenience, dial

into the system and pick up any waiting documents.” ’021 patent, col. 4, ll. 1-26. The

specification further states that addressees may have the messages either sent to the

designated fax machine or “redirected” to a different fax machine, so that messages

sent to a fax mailbox “can be accessed . . . from any telephone with a fax machine.” Id.,

col. 14, line 66, through col. 15, line 25. The specification thus makes it clear that the

SAFF is designed to deliver messages from the mailbox in fax protocol and over a

switched telephone network, regardless of whether the SAFF delivers the messages to




2009-1121                                  10
a designated destination fax machine or to a different fax machine as directed. E.g., id.

at col. 15, ll. 30-33. By claiming the step of forwarding a fax message to a “mailbox,”

the storage claims are therefore necessarily limited to systems that are configured to

forward a fax message from storage in fax protocol over a switched telephone network.

      Catch Curve responds by arguing that inventors are allowed to claim less than

their full invention, and that the storage claims should not be construed to require a

system capable of delivery of fax messages over the switched telephone network

because the storage claims do not include the delivery step. However, merely omitting

a step in a described process does not perforce expand the scope of the claim to

encompass the use of devices that are nothing like those described in the specification

as integral to the invention. See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288

(Fed. Cir. 2009) (“[C]laims cannot enlarge what is patented beyond what the inventor

has described as the invention.”), quoting Networld, LLC v. Centraal Corp., 242 F.3d

1347, 1352 (Fed. Cir. 2001); see also Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d

1377, 1382 (Fed. Cir. 1999) (limiting the claim term “frame” to character-based protocol,

even though “frame,” used generally, could also refer to bit-mapped displays, because

the specification described and enabled only systems using character-based protocol).

As noted above, the specification describes the invention as operating in a single

medium, and it contains no suggestion that the “SAFF” or the “mailbox” referred to in

the storage claims could encompass any type of storage system with any type of

downstream transmission capacity. Instead, based on the detailed description of the

SAFFs and the mailboxes in the specification, the storage claims must be understood to




2009-1121                                  11
be limited to an apparatus that contains a storage medium and has the capacity to

receive and transmit fax messages in fax protocol over a switched telephone network.

      In Venali’s system, an incoming fax message is converted into TIFF format and

stored in a general queue, rather than in a user-specific mailbox. The message is then

transmitted over the Internet, using a non-facsimile format, to Venali’s data center

where it is stored either in a general queue or in a user-specific mailbox, for further

transmission to the user over the Internet. The undisputed facts show that the Venali

system does not transmit, or have the capacity to transmit, a fax message over a

switched telephone network to a fax-receiving device. Instead, after the Venali system

receives a fax message from a conventional fax machine, it converts the message into

a different format and transmits it over the Internet either to a designated user-specific

mailbox or directly to the intended recipient. Venali’s system thus is not designed to

forward messages, or to store messages for forwarding, to a fax-receiving device over a

switched telephone network. For that reason, Venali’s system cannot be said to contain

a “SAFF” or “mailboxes,” as those terms are used in the storage claims of the ’021

patent. Venali’s system therefore does not infringe the five storage claims.

      We affirm the district court’s order granting summary judgment of non-

infringement.




2009-1121                                  12
