Ring Plus, Inc. v. Cingular Wireless Corp., Cingular Wireless Ii LLC, Cingular Wireless LLC

United States Court of Appeals
for the Federal Circuit
__________________________
RING PLUS, INC.,
Plaintiff-Appellant,
v.
CINGULAR WIRELESS CORP., CINGULAR
WIRELESS II LLC,
CINGULAR WIRELESS LLC, AND AT&T WIRELESS
SERVICES, INC.,
Defendants-Appellants.
__________________________
2009-1537
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case No. 5:08-CV-0042, Judge
David J. Folsom.
___________________________
Decided: August 6, 2010
___________________________
JERRY L. M OWERY, JR., Law Offices of Jerry L.
Mowery, Jr., of Beverly Hills, California, argued for
plaintiff-appellant.
LARRY D. CARLSON , Baker Botts LLP, of Dallas, Texas,
argued for defendants-appellees. With him on the brief
were SAMARA L. K LINE, D OUGLAS M. K UBEHL and D AVID O.
TAYLOR.

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RING PLUS v. CINGULAR WIRELESS 2
__________________________
Before LOURIE, G AJARSA, and MOORE, Circuit Judges.
M OORE, Circuit Judge.
Ring Plus, Inc. (Ring Plus) appeals the final judgment
of the United States District Court for the Eastern Dis-
trict of Texas that U.S. Patent No. 7,006,608 (the ’608
patent) is unenforceable for inequitable conduct. Ring
Plus also appeals the court’s grant of summary judgment
that defendants-appellants Cingular Wireless Corp.,
Cingular Wireless II LLC, Cingular Wireless LLC, and
AT&T Wireless Services, Inc. (collectively, Cingular) do
not infringe any claim of the ’608 patent. Finally, Ring
Plus appeals the court’s denial of its motion to disqualify
Cingular’s counsel for allegedly improper ex parte party
communications. For the following reasons, we reverse
the judgment of unenforceability, affirm the grant of
summary judgment of noninfringement, and affirm the
denial of Ring Plus’s motion to disqualify counsel.
I. BACKGROUND
Ring Plus is the assignee of the ’608 patent, which is
titled “Software Algorithm and Method Enabling Message
Presentation During a Telephone Ringing Signal Period.”
The ’608 patent discloses a software based algorithm and
method for generating and delivering messages over a
phone line during a “ringing signal” period. ’608 patent
col.3 ll.61-64, col.4 ll.43-52. Claim 1 of the ’608 patent
claims a software based algorithm for operation of a
telephone system in which a generated sound presenta-
tion can replace or overlay a ring-back signal. Claim 9,
the only other independent claim at issue, is a method
claim that recites limitations generally analogous to those
of claim 1. Id. col.19 ll.10-32.

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RING PLUS v. CINGULAR WIRELESS 3
Ring Plus sued Cingular, alleging that Cingular’s An-
swer Tones service infringed claims 1-3, 5, and 9-10 of the
’608 patent. Answer Tones is a paid service that allows
Cingular subscribers to select songs and other entertain-
ment that callers will hear after dialing the subscriber’s
telephone number. Cingular raised various defenses,
including noninfringement and unenforceability of the
’608 patent.
The district court issued a claim construction order, in
which it determined that the steps of the asserted claims
must be performed in a specific order. In particular, the
court held that step 1c) (determining whether the recipi-
ent line is busy) must be performed before step 1d) (“al-
lowing for a sound presentation” if the recipient line is not
busy, and terminating the call without a sound presenta-
tion if the line is busy). Under the court’s construction,
the claims at issue determine whether the recipient line is
busy before allowing a sound presentation or terminating
the call.
Cingular filed a motion for summary judgment of non-
infringement after the close of discovery, arguing that
Answer Tones plays a sound presentation before it deter-
mines whether the recipient’s phone line is busy. Because
Answer Tones does not satisfy the required order of the
steps, Cingular argued, it does not infringe. Ring Plus
filed a motion for further claim construction, asserting
that the court should construe the limitations of claim 1
such that step 1b) (introducing a sound presentation)
could occur before either step 1c) or 1d). The court denied
Ring Plus’s motion. In view of the required order of the
steps, the court explained, the claimed algorithm neces-
sarily performs the “introducing a sound presentation”
step after it determines the status of the recipient’s
telephone line.

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RING PLUS v. CINGULAR WIRELESS 4
With respect to Cingular’s motion for summary judg-
ment of noninfringement, the court observed that Ring
Plus’s expert acknowledged that Answer Tones plays a
presentation before it determines whether the recipient’s
telephone line is busy. Because the asserted claims, as
construed, each require determining the status of the
recipient line before allowing a sound presentation, the
court found that there was no literal infringement. The
court also found that there was no infringement under the
doctrine of equivalents due to prosecution history estop-
pel. Therefore, the court granted Cingular’s motion for
summary judgment of noninfringement.
The court denied Ring Plus’s motion to disqualify
Cingular’s counsel for allegedly improper ex parte com-
munications with a Ring Plus director. The court then
held a bench trial on the issue of inequitable conduct and
found the ’608 patent to be unenforceable due to material
misrepresentations made during prosecution regarding
two prior art references. Ring Plus appeals, and we have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II. D ISCUSSION
On appeal, Ring Plus argues that the district court
abused its discretion in holding the ’608 patent unen-
forceable for inequitable conduct. Ring Plus also argues
that the court erred in construing the claims and that the
entry of summary judgment of noninfringement must be
reversed under the correct construction. Finally, Ring
Plus argues that the court abused its discretion in refus-
ing to disqualify Cingular’s counsel. We address each of
these issues in turn.
A. Inequitable Conduct
We have established a two-part test for determining
whether a patent is rendered unenforceable for inequita-

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RING PLUS v. CINGULAR WIRELESS 5
ble conduct. To successfully prove inequitable conduct,
the accused infringer “must present evidence that the
applicant (1) made an affirmative misrepresentation of
material fact, failed to disclose material information, or
submitted false material information, and (2) intended to
deceive the [PTO].” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008) (citation
omitted). The accused infringer must prove “at least a
threshold level of each element--i.e., both materiality and
intent to deceive . . . by clear and convincing evidence.”
Id. If the accused infringer meets this evidentiary burden
with respect to both materiality and intent, “the district
court must still balance the equities to determine whether
the applicant's conduct before the PTO was egregious
enough to warrant holding the entire patent unenforce-
able.” Id.
Where a district court has made fact findings as to
materiality and deceptive intent after a bench trial, we
review those findings for clear error and the ultimate
decision on inequitable conduct for abuse of discretion.
Larson Mfg. Co. of S.D. v. Aluminart Prods., 559 F.3d
1317, 1327 (Fed. Cir. 2009).
1. Misrepresentation of Material Fact
At trial, Cingular claimed that applicants misrepre-
sented the substance of two references, U.S. Pub. No.
2001/0051517 (Strietzel) and U.S. Patent No. 4,811,382
(Sleevi).1 Cingular alleged that applicants misrepre-
sented these references at two points: first, in the Back-
1 Strietzel relates to a telecommunications advertis-
ing system that includes a “processing means” that selec-
tively associates advertisements with communications.
Strietzel para.[0007]. Sleevi relates to a system for apply-
ing messages to the line of a caller during a “ringback”
period of a telephone call. Sleevi col.1 ll.17-10.

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RING PLUS v. CINGULAR WIRELESS 6
ground of the Invention of the ’608 patent; and second, in
an amendment submitted during prosecution (Amend-
ment B). In the Background, applicants identified Striet-
zel and Sleevi as related art and stated that “[i]n each of
the aforesaid [Strietzel and Sleevi references], there is no
algorithm or software proposed for operating the tele-
phone system. Thus, Streitzel [sic] and Sleevi both pro-
pose hardware based systems, but no software to operate
those systems.” ’608 patent col.3 ll.25-29 (emphasis
added). In Amendment B, applicants asserted that they
had “very carefully examined” Strietzel and Sleevi and
noted that “one of the distinctions between the applicant’s
system and . . . any other reference known to the appli-
cant is the fact that the applicant’s system only generates
[a] message when the phone line between the caller and
the recipient is not busy.” J.A. 10363. The court found
that Strietzel and Sleevi disclose software-based algo-
rithms and playing a sound presentation only when the
recipient line is not busy. Therefore, the court found that
applicants’ statements in the Background and Amend-
ment B were material misrepresentations.
Ring Plus argues that the statements in the Back-
ground and Amendment B are not misrepresentations
because they are not false. With respect to the Back-
ground statement, the district court observed that Figure
1 of Strietzel depicts a telecommunications advertising
system that includes various “computer-related compo-
nents,” such as a message database, a processing means,
a router, and the Internet. Ring Plus, Inc. v. Cingular
Wireless LLC, 637 F. Supp. 2d 423, 436 (E.D. Tex. 2009).
The court noted that Strietzel also discloses that its
system can be “integrated into a wireless system or the
Internet.” Strietzel para.[0028]. Further, the court found
that Figures 7-9 of Strietzel, which depict process flow
diagrams used in conjunction with Strietzel’s telecommu-

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RING PLUS v. CINGULAR WIRELESS 7
nications advertising means, illustrate algorithms. The
court acknowledged that Sleevi’s “implicit disclosure” of
software was less clear than Strietzel’s. Ring Plus, 637 F.
Supp. 2d at 436. However, the court noted that Sleevi
discloses that “stored program controlled digital switching
is more often used in modern switching systems.” Sleevi
col.5 ll.51-54. The court also observed that Sleevi dis-
closes a switching network and a control complex that can
be “programmed” to perform certain functions. Id. col.6
ll.23-40, 50-59. Additionally, the court relied on testi-
mony from Cingular’s invalidity expert, who testified at
trial that the references disclose software-based algo-
rithms, and Robert Schaap (the attorney who prosecuted
the ’608 patent), who testified at deposition that the
Strietzel and Sleevi systems would be operated at least in
part by software. Ring Plus, 637 F. Supp. 2d at 437.
From this evidence, the court found that a person of skill
in the art would have understood both Strietzel and
Sleevi to disclose software-based algorithms and that
applicants’ statement to the contrary in the Background
was a misrepresentation. Id. at 436, 437.
Neither Strietzel nor Sleevi explicitly discloses soft-
ware for operating a telephone system. However, as the
district court observed, both references describe compo-
nents that are generally understood by persons of skill in
the art to be associated with computers and software.
The references also disclose methods for operating a
telephone system. Although the disclosure of software is
certainly not express in either Strietzel or Sleevi, we
cannot say that the court clearly erred in finding that a
person of skill in the art would have understood the
references to disclose software-based algorithms. There-
fore, the court did not clearly err in finding that appli-
cants’ Background statement was a misrepresentation.

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RING PLUS v. CINGULAR WIRELESS 8
However, we agree with Ring Plus that the district
court clearly erred in finding that applicants’ statement in
Amendment B was a misrepresentation. The court found
that both Striezel and Sleevi disclose playing a sound
presentation only when a called line is not busy. Con-
trary to the court’s finding, however, Strietzel states
unambiguously that “the busy tone can be replaced by one
or more advertisements.” Para.[0064]. Sleevi is alto-
gether silent as to whether the status of the recipient’s
line affects system operation. The court did not cite to
any portion of Sleevi to support its finding, relying in-
stead on conclusory testimony from witnesses who also
failed to identify any support for their positions in Sleevi.
Ring Plus, 637 F. Supp. 2d at 438. Cingular points to
Sleevi’s disclosure that “[i]f the called address is busy, the
calling customer line is connected to a busy tone genera-
tor” as supporting the court’s finding. Sleevi col.5 ll.7-9.
However, this portion of Sleevi describes the general
operation of a prior art telephone system; it does not
disclose generating a message only if the line is not busy.
See id. fig.1, col.10 ll.38-41, col.12 ll.42-44. Sleevi does not
disclose a telephone system that only presents messages
when the line is not busy. The court clearly erred in
finding that Striezel and Sleevi disclose playing a sound
presentation only when a called line is not busy and,
therefore, clearly erred in finding that applicants’ state-
ment in Amendment B was a misrepresentation.
Ring Plus also argues that the district court clearly
erred in finding that applicants’ statements were mate-
rial. Because we find that applicants’ statement in
Amendment B was not a misrepresentation, we need only
address the materiality of the Background statement.
Information is material when “a reasonable examiner
would consider it important in deciding whether to allow
the application to issue as a patent.” Symantec Corp. v.

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RING PLUS v. CINGULAR WIRELESS 9
Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1297 (Fed.
Cir. 2008). The district court found that the misrepresen-
tation in the Background was not only material, but
highly so. The court credited deposition testimony from
Mr. Schaap that Strietzel and Sleevi were among the
most relevant prior art references. The court also pointed
to a patentability opinion in which Mr. Schaap informed
applicants that he had found no prior art references “more
pertinent” than Strietzel and Sleevi and that Sleevi, in
particular, “fairly well precludes broad patent protection.”
J.A. 10423. In view of the evidence showing the particu-
lar relevance of Strietzel and Sleevi to the ’608 patent, the
court did not clearly err in finding that applicants’ Back-
ground statement regarding the substance of those refer-
ences was highly material.
Ring Plus argues that because Strietzel and Sleevi
were before the examiner during prosecution, the Back-
ground statement was merely attorney argument and
cannot be a material misrepresentation. Although an
attorney is free to argue vigorously in favor of patentabil-
ity without being subject to allegations of inequitable
conduct, “the law prohibits genuine misrepresentations of
material fact.” Rothman v. Target Corp., 556 F.3d 1310,
1328 (Fed. Cir. 2009). Because we uphold the district
court’s finding that applicants’ Background statement
was a misrepresentation, this statement was outside the
bounds of permissible attorney argument. Ring Plus also
argues that the examiner did not consider Strietzel and
Sleevi to be important because he did not cite them dur-
ing prosecution. However, the materiality standard is an
objective one: the issue is what a reasonable examiner
would have found important, not whether the reference in
question was specifically considered during prosecution.
Therefore, we conclude that the court did not clearly err
in determining that applicants’ statement in the Back-

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RING PLUS v. CINGULAR WIRELESS 10
ground that Sleevi and Strietzel propose “no algorithm or
software . . . for operating the telephone system” was a
material misrepresentation.
2. Intent
Cingular, as the party seeking to establish inequitable
conduct, bore the burden of establishing by clear and
convincing evidence that applicants specifically intended
to deceive the PTO in making the misrepresentation in
the Background. Star Scientific, 537 F.3d at 1365; Larson
Mfg., 559 F.3d at 1340. Although intent to deceive can be
inferred from circumstantial evidence, the evidence must
still be clear and convincing; “a showing of materiality
alone does not give rise to a presumption of intent to
deceive.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1313
(Fed. Cir. 2008); see also Kingsdown Med. Consultants v.
Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc
in relevant part) (holding that even “‘gross negligence’
does not of itself justify an inference of intent to deceive”).
Any inference of deceptive intent must be “the single most
reasonable inference able to be drawn from the evidence
to meet the clear and convincing standard.” Star Scien-
tific, 537 F.3d at 1366.
The district court found that Cingular made a suffi-
cient showing of deceptive intent. The court acknowl-
edged that applicants’ disclosure of Sleevi and Striezel “is
inconsistent with an intent to hide those references.”
Ring Plus, 637 F. Supp. 2d at 439. The court went on to
find, however, that the statement in the Background that
“Streitzel and Sleevi both propose hardware based sys-
tems, but no software to operate those systems” was made
with an intent to deceive. Mr. Schaap, the prosecuting
attorney, testified that he believed the Background
statement to be accurate because he viewed Strietzel and
Sleevi as ambiguous and insufficiently detailed as to

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RING PLUS v. CINGULAR WIRELESS 11
software. Id. at 439-40. The court found Mr. Schaap’s
belief “not credible” because he was a highly experienced
patent prosecutor and because “even a cursory review” of
Strietzel shows that the reference discloses software
based algorithms. Id. at 440. Based on its view that the
references clearly disclose software, the court found that
applicants’ purported belief in the truth of their represen-
tation was not plausible. From this evidence, the court
concluded that “[t]he single most reasonable inference . . .
is that the applicants intended to deceive.” Id. at 440.
Ring Plus argues that the court clearly erred in find-
ing that Cingular presented clear and convincing evidence
of applicants’ specific intent to deceive the PTO. We
agree. The court premised its finding of intent almost
entirely on its view that the references unambiguously
disclose software. We disagree that the disclosure of
software is so plain. Neither Strietzel nor Sleevi men-
tions software, and neither identifies any code or software
mechanism for operating the disclosed systems. More-
over, there is no record evidence that one of skill in the
art would consider the references to unambiguously
disclose software. Although the references disclose iso-
lated components that tend to be associated with com-
puter operation, the references do not unambiguously
disclose software for operating a telephone system.
Mr. Schaap testified that during prosecution he be-
lieved Strietzel and Sleevi related to hardware-based
systems. In his view, Strietzel’s “program processing
means” could refer to hardware, and switching networks
such as Sleevi’s could be “programmed” mechanically or
manually. Ring Plus, 637 F. Supp. 2d at 431. Though
Mr. Schaap conceded at deposition that software-operated
switches would, in practice, be used to implement the
Strietzel and Sleevi inventions—primarily because me-
chanical switches “went out in the 1940s”—he nonethe-

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RING PLUS v. CINGULAR WIRELESS 12
less testified that neither reference discloses what the
operating software is or how it might work. Id. at 437.
For this reason, Mr. Schaap viewed his statement that
“both [Strietzel and Sleevi] proposed hardware based
systems, but no software to operate those systems” as
accurate. Id. at 437 n.4. Cingular failed to present any
evidence to rebut this testimony. “When examining
intent to deceive, a court must weigh all the evidence,
including evidence of good faith.” Akron Polymer Con-
tainer Corp. v. Exxel Container, 148 F.3d 1380, 1384 (Fed.
Cir. 1998). “Whenever evidence proffered to show either
materiality or intent is susceptible of multiple reasonable
inferences, a district court clearly errs in overlooking one
inference in favor of another equally reasonable infer-
ence.” Scanner Techs. Corp. v. Icos Vision Sys. Corp. N.V.,
528 F.3d 1365, 1376 (Fed. Cir. 2008).
Mr. Schaap’s testimony gives rise to the inference that
applicants believed that Strietzel and Sleevi did not
disclose software for operating a telephone system. Based
on the evidence of record, this inference is as reasonable
as the court’s inference of deceptive intent, particularly in
view of the references’ ambiguity as to operating software.
Thus, the district court clearly erred in finding clear and
convincing evidence of deceptive intent.
Cingular points to other evidence in the record, not
cited by the district court, to establish intent. Cingular
relies on applicants’ statement in Amendment B that they
examined Strietzel and Sleevi “very carefully.” This
statement is not indicative of intent. Reasonable minds
could examine Strietzel and Sleevi and conclude, as
applicants purportedly did, that the references do not
disclose software for operating a telephone system.
Cingular also relies on the prior art search report letter in
which Mr. Schaap opined that Sleevi “fairly well pre-
cludes broad patent protection in the [relevant] field.”

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RING PLUS v. CINGULAR WIRELESS 13
J.A. 10423. Although this statement supports the finding
that the references are material, it does not establish
intent to deceive with regard to the statement in the
Background of the Invention. The prior art search letter
does not reflect that Mr. Schaap understood these refer-
ences to disclose software, only that he thought they
precluded broad patent protection. Cingular notes that
the applicants prepared, but decided not to file, an IDS
that listed both Strietzel and Sleevi. Again, this evidence
relates to materiality, but not intent. While it may have
been relevant if this was a non-disclosure case, it is not;
Sleevi and Striezel were disclosed in the application itself.
Failure to file an IDS says nothing about whether Mr.
Schaap believed that the references disclose software.
Finally, Cingular asserts that Ring Plus’s failure to call
Mr. Schaap or the inventor of the ’608 patent at trial
supports an inference of intent. Although it is true that
“if [a] party chooses to not call [witnesses within his
control to produce], the fact finder may draw the inference
that the testimony would be unfavorable,” see Brasseler,
U.S.A. I., L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1385
n.7 (Fed. Cir. 2001), the district court drew no such infer-
ence here. We decline to do so in the first instance on
appeal.
Because the district court clearly erred in finding that
Cingular introduced clear and convincing evidence of
deceptive intent, we reverse the court’s judgment of
unenforceability for inequitable conduct. See Star Scien-
tific, 537 F.3d at 1367 (“If a threshold level of intent to
deceive . . . is not established by clear and convincing
evidence, the district court does not have any discretion to
exercise and cannot hold the patent unenforceable regard-
less of the relative equities or how it might balance
them.”).

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RING PLUS v. CINGULAR WIRELESS 14
B. Claim Construction
The district court determined that the plain language
of claims 1 and 9 shows that the claimed steps must be
performed in a certain order. The court held that the step
of “determining whether the telephone line of the recipi-
ent telephone is busy” must be performed before the step
of “terminating the telephone call and generating no
sound presentation if the telephone line is busy and
allowing for a sound presentation if the telephone line is
not busy.” Further, the court held that the step of “allow-
ing for a sound presentation” must be performed before
the step of “play[ing] the introduced message to the caller
or the recipient or both.” Because Cingular’s Answer
Tones service plays a sound presentation before it deter-
mines whether the recipient’s line is busy, the court
concluded that Answer Tones does not satisfy the re-
quired order of the steps. The court therefore granted
Cingular’s motion for summary judgment of noninfringe-
ment.
On appeal, Ring Plus challenges the court’s claim con-
structions. Claim construction is a matter of law, and we
review the court’s claim construction without deference.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed.
Cir. 1998) (en banc). We read the claims “in view of the
specification,” which is “the single best guide to the mean-
ing of a disputed term.” Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc).
Ring Plus does not contest the court’s conclusion that
the claim steps must be performed in order, that step 1c
must be performed prior to step 1d. Ring Plus Reply Br.
at 26 (“Cingular unnecessarily presented argument about
the order of the claim steps. Ring Plus did not appeal the
order of the claim steps.”). Claim 1 of the ’608 patent
reads as follows:

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RING PLUS v. CINGULAR WIRELESS 15
1. A software based algorithm for operation of a
telephone system in which a generated sound
presentation can replace or overlay a ring-back
signal normally heard in a caller's telephone until
such time as a recipient of a telephone call an-
swers the telephone call, said algorithm compris-
ing the steps of:
a) initiating those actions to identify the class of
persons represented by the caller;
b) introducing a sound presentation to be gener-
ated over the telephone which replaces a portion
of or all of the ring-back signal;
c) determining whether the telephone line of the re-
cipient telephone is busy;
d) terminating the telephone call and generating
no sound presentation if the telephone line is busy
and allowing for a sound presentation if the tele-
phone line is not busy;
e) initiating those actions to play the introduced
message to the caller or the recipient or both; and
f) terminating the playing of the sound presenta-
tion upon answering of the phone call by the re-
cipient.
’608 patent col.18 ll.22-42 (emphasis added).
Ring Plus argues that the claimed algorithm and
method only apply during the ring-back signal period and
the ringing signal period. Ring Plus argues that if the
claim is limited to that time period, then “it simply does
not matter what Defendants do or do not do before that
period of time.” Ring Plus argues that Cingular’s Answer
Tones service can infringe even if it plays a sound presen-
tation prior to determining whether the line is busy

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RING PLUS v. CINGULAR WIRELESS 16
because, according to Ring Plus, that time period is not
covered by the claims. To this end, Ring Plus argues that
the district court erred in its construction of “allowing”
and “sound presentation.”
We conclude that the district court correctly construed
these claim terms. The court construed “allowing” as
“allow to begin.” Ring Plus argues that the term should
be construed as “allow to continue or to begin.” Ring
Plus’s proposed construction conflicts with the required
order of the claimed steps, which it does not appeal. The
claimed algorithm (1c)) determines whether the line is
busy, (1d)) allows a sound presentation if the line is not
busy, and then (1e)) initiates the actions to play the
message. The court held that the step of “allowing for” a
sound presentation must be performed before the step of
playing that presentation. Because a sound presentation
cannot be “allowed to continue” before the presentation is
first played, the required order of the steps necessarily
indicates that “allowing” a sound presentation means
allowing the presentation to begin. Indeed, if we con-
strued “allowing” as Ring Plus proposes, the claims would
recite the illogical sequence of allowing a sound presenta-
tion to continue before initiating the playing of that
presentation. Step 1e) states “initiating those actions to
play.” If the sound presentation was playing in advance
of or during the determination regarding whether the line
is busy (step 1c)), then the “initiating those actions to
play” required by 1e) would have already occurred. You
cannot initiate the playing of the message as required by
step 1e), if it has been playing all along. The court’s
construction is further supported by the specification,
which consistently teaches that a sound presentation is
not generated at all until after the algorithm determines
that the recipient line is not busy. Id. col.6 l.62-col.7 l.2.

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RING PLUS v. CINGULAR WIRELESS 17
Thus, the court did not err in construing “allowing” as
“allowing to begin.”
Ring Plus also asserts that the court erred in constru-
ing “sound presentation.” The court construed “sound
presentation” as “an audible communication.” Ring Plus
argues that the term should be construed as “an audible
communication during the usual ring-back period.” Ring
Plus defines this “ring-back period” as the time period
during which a “‘ringing signal’ is sent to the called party
to let them know they are being called, and the ‘ring-back
signal’ is sent to the caller to let him know the called
party’s phone is ringing.” Ring Plus Br. at 37. As Cingu-
lar points out, the effect of Ring Plus’s construction would
be to exclude from the definition of “sound presentation”
any audible communication that is played before the
“ring-back period.” Under this construction, Answer
Tones’ failure to satisfy the required order of the steps
would not be a defense to infringement because any tones
played prior to the ring-back period (as defined by Ring
Plus) would not qualify as “sound presentations.” How-
ever, “sound presentation” is an ordinary term with a
plain meaning. That meaning does not include any time
period limitation. Ring Plus fails to identify any portion
of the specification that limits the claimed sound presen-
tation to an audible communication played during a
specific time period. The court did not err in construing
“sound presentation” consistent with its plain meaning,
“an audible communication.”
Ring Plus’s arguments for reversing the court’s entry
of summary judgment of noninfringement turn on our
acceptance of its claim construction arguments. Because
we hold that the court did not err in construing the dis-
puted claim terms, no basis exists for disturbing the
court’s judgment of noninfringement.

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RING PLUS v. CINGULAR WIRELESS 18
C. Disqualification of Counsel
Ring Plus also argues that Cingular’s counsel should
have been disqualified for allegedly improper ex parte
party communications. We review the district court’s
decision regarding attorney disqualification under the law
of the regional circuit, here the Fifth Circuit. See Ultimax
Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d
1339, 1357 (Fed. Cir. 2009). In considering a disqualifica-
tion motion, the Fifth Circuit “view[s] the [applicable
rules of professional conduct] in light of the litigant’s
rights and the public interest, considering whether a
conflict has (1) the appearance of impropriety in general,
or (2) a possibility that a specific impropriety will occur,
and (3) the likelihood of public suspicion from the impro-
priety outweighs any social interests which will be served
by the lawyer's continued participation in the case.”
Horaist v. Doctor’s Hosp. of Opelousas, 255 F.3d 261, 266
(5th Cir. 2001) (quotation omitted). We review the court’s
grant or denial of a motion to disqualify counsel for abuse
of discretion. Kennedy v. MindPrint (In re ProEducation
Int’l, Inc.), 587 F.3d 296, 299 (5th Cir. 2009). In applying
this standard, “we will review fact-findings for clear error,
and we will perform a . . . de novo review, of the [district]
court’s application of the relevant rules of attorney con-
duct.” Id. (internal quotation omitted).
On April 12, 2007, a man named Tom Garretson sent
identical emails to a number of Cingular’s attorneys.
Ring Plus asserts that Mr. Garretson was employed as a
Ring Plus director and officer at the time he sent the
emails. The emails, which were sent from Mr. Garret-
son’s personal address, informed Cingular that Mr. Gar-
retson had “been involved with the Ring Plus/[’608] patent
since the beginning” and that he “possess[ed] a great deal
of information that I would like to share…patent
strengths, weaknesses, Ring Plus legal strategy, claim

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RING PLUS v. CINGULAR WIRELESS 19
defense strategy, etc.” J.A. 5591. The next day, Cingu-
lar’s counsel Doug Kubehl called lead counsel for Ring
Plus, Frederic Douglas, and asked whether Mr. Garretson
was affiliated with Ring Plus. Mr. Kubehl claims he was
told that Mr. Garretson had never been affiliated with
Ring Plus; Mr. Douglas denies saying this. It is undis-
puted, however, that Mr. Kubehl sent Mr. Douglas a
letter on April 13, 2007, to memorialize his understanding
that “[b]ased on your representations today, I understand
that . . . Tom Garretson is [not] now or ever has been
affiliated with [Ring Plus].” J.A. 10804. Ring Plus never
responded to this letter.
A few days later, Mr. Kubehl responded to Mr. Gar-
retson’s email. Mr. Kubehl confirmed his representation
of Cingular and proposed scheduling a deposition to
obtain any factual information Mr. Garretson might have
regarding the case. In a follow-up email, Mr. Kubehl
instructed Mr. Garretson not to disclose any Ring Plus
privileged information, including any knowledge of Ring
Plus’s legal strategy. Cingular’s counsel contacted Mr.
Douglas again in June of 2007 to ask whether counsel for
Ring Plus would accept service of Mr. Garretson’s sub-
poena for deposition; a different Ring Plus attorney de-
clined, asserting that they did not represent Mr.
Garretson. Cingular did not communicate with Mr.
Garretson again until his deposition.
Ring Plus moved to disqualify Cingular’s counsel, al-
leging that Cingular violated Texas Disciplinary Rule of
Professional Conduct 4.02 (Rule 4.02) and the American
Bar Association Model Rule of Professional Conduct 4.2
(Rule 4.2) by communicating with a Ring Plus director
without the knowledge or consent of Ring Plus’s counsel.
Rule 4.02 prohibits communication with any person “the
lawyer knows to be represented by another lawyer regard-
ing that subject”; Rule 4.2 contains a similar prohibition.

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RING PLUS v. CINGULAR WIRELESS 20
The district court found that Cingular’s counsel had no
actual knowledge that Mr. Garretson was affiliated with
Ring Plus. After applying the Horaist factors, the court
concluded that Cingular’s conduct did not violate the
applicable rules of professional conduct and denied Ring
Plus’s motion.
The court did not clearly err in finding that Cingular’s
counsel had no knowledge of Mr. Garretson’s affiliation
with Ring Plus. Ring Plus argues that Mr. Garretson’s
initial emails showed that he was affiliated with Ring
Plus. However, nothing in the email indicates a current
affiliation with Ring Plus—indeed, the fact that Mr.
Garretson was offering information adverse to Ring Plus
would suggest the contrary. Further, Cingular’s counsel
sought to confirm the lack of affiliation before it re-
sponded to Mr. Garretson and put Ring Plus on notice, in
writing, of his belief that Mr. Garretson was “[not] now or
ever has been affiliated” with Ring Plus. Ring Plus failed
to respond to this letter.
Ring Plus next argues that Cingular had notice of Mr.
Garretson’s affiliation based on a privilege log produced in
March 2007, which lists a communication between Mr.
Garretson and a Ring Plus attorney. As the court pointed
out, however, the communication occurred in April 2006,
nearly one year before Ring Plus produced the log. Al-
though the communication could tend to show a prior
affiliation between Mr. Garretson and Ring Plus, it does
not indicate any current relationship, particularly given
Ring Plus’s failure to acknowledge any such relationship
in response to Cingular’s inquiries.
Ring Plus also argues that the court misapplied the
applicable rules of professional conduct by failing to
properly evaluate the Horaist factors. The court found
that the actions of Cingular’s counsel did not raise any

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RING PLUS v. CINGULAR WIRELESS 21
appearance of impropriety because Cingular’s counsel
proceeded with caution in communicating with Mr. Gar-
retson by instructing him not to disclose any privileged
information. It also found that there was no danger of a
“specific impropriety” because, as became apparent at
deposition, Mr. Garretson did not possess any relevant
information. Further, the court found a low risk of public
suspicion because the communications between Cingular’s
counsel and Mr. Garretson consisted almost solely of
attempts to schedule his deposition. None of these fact
findings are clearly erroneous. Therefore, the court
correctly applied the Horaist factors in determining
whether Cingular’s actions violated the applicable rules of
professional conduct and did not abuse its discretion in
denying Ring Plus’s motion to disqualify counsel.
III. CONCLUSION
Because the district court clearly erred in finding that
applicants acted with specific intent to deceive the PTO,
we reverse the court’s judgment of unenforceability for
inequitable conduct. Because the court did not err in
construing the disputed claim terms, we affirm the court’s
entry of summary judgment of noninfringement. We also
affirm the court’s denial of Ring Plus’s motion to disqual-
ify counsel.
REVERSED-IN-PART and AFFIRMED-IN-PART

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