Dali Wireless, Inc. v. Corning Optical Communications LLC

Filing 85

ORDER - Claim Construction Order. Signed by Judge Edward M. Chen on 7/19/2021. (emcsec, COURT STAFF) (Filed on 7/19/2021)

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 1 of 41

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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DALI WIRELESS, INC.,
Plaintiff,

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Case No. 20-cv-06469-EMC
CLAIM CONSTRUCTION ORDER

v.

Docket No. 76
CORNING OPTICAL
COMMUNICATIONS LLC,

United States District Court
Northern District of California

Defendant.
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Plaintiff Dali Wireless, Inc. has sued Defendant Corning Optical Communications, LLC
for patent infringement. There are three patents at issue:

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‘454 patent, titled “Optimization of traffic load in a distributed antenna system.”

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‘261 patent, titled “Self-optimizing distributed antenna system using soft frequency
reuse.”

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‘358 patent, titled “Method and system for soft frequency reuse in a distributed
antenna system.”

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As the titles above indicate, the three patents are all related to a distributed antenna system (DAS).

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As explained in one of the patents, “[d]istributed antenna systems (DAS) have been widely

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implemented in state-of-the art cellular communication systems to cover dead spots in wireless

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communications systems.” ‘261 patent, col. 3, ll. 49-52.

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A DAS breaks the traditional radio base station architecture into two
pieces: a central processing facility and a set of distributed antenna
(DA), connected to the central facility by a high-bandwidth network.
The DAS network transports radio signals, in either analog or digital
form, to/from the central facility where all the base station’s
processing is performed. By replacing a single high-power antenna
with several low-power antennas, distributed to give the same

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 2 of 41

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coverage as the single antenna, a DAS is able to provide more
reliable wireless services within a geographic area or structure while
reducing its power consumption.
‘261 patent, col. 3, ll. 53-63.
The parties have asked the Court to construe ten terms used in the three patents. Below are
the Court’s constructions.
I.

LEGAL STANDARD

Claim construction is a question of law, although it may have factual underpinnings. See
Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 Fed. App’x 1008, 1013 (Fed. Cir. 2016); see

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also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357

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(Fed. Cir. 2016). It “serves to define the scope of the patented invention and the patentee’s right

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United States District Court
Northern District of California

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to exclude.” HTC Corp. v. Cellular Communs. Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir.

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2017); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.

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Cir. 2008) (stating that “the purpose of claim construction is ‘to determin[e] the meaning and

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scope of the patent claims asserted to be infringed’”).

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Words of a claim are generally given their ordinary and customary
meaning, which is the meaning a term would have to a person of
ordinary skill in the art after reviewing the intrinsic record at the
time of the invention. “In some cases, the ordinary meaning of
claim language . . . may be readily apparent even to lay judges, and
claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly
understood words.” However, in many cases, the meaning of a
claim term as understood by persons of skill in the art is not readily
apparent.
Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)).

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Because the meaning of a claim term as understood by persons of
skill in the art is often not immediately apparent, and because
patentees frequently use terms idiosyncratically, the court looks to
“those sources available to the public that show what a person of
skill in the art would have understood disputed claim language to
mean.” Those sources include “the words of the claims themselves,
the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the
meaning of technical terms, and the state of the art.”

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Phillips, 415 F.3d at 1314. Although extrinsic evidence “can shed useful light on the relevant art,

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. . . it is less significant than the intrinsic record in determining the legally operative meaning of

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claim language.” Id. at 1317 (internal quotation marks omitted).
II.

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A.

DISCUSSION

“Digital Access Unit” / “DAU” (‘454 patent, claims 1, 2, 5)

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Dali’s Proposed

Corning’s Proposed

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Construction

Construction

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“Digital Access Unit” / “DAU”

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Court’s Construction

(‘454 Patent, claims 1, 2, 5)

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a unit of a DAS that supports

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communications between a

the transport of radio resource the transport/routing and gain

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United States District Court
Northern District of California

a unit that manages

mobile network operator and

signals between at least one

of radio resource signals

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one or more radio remote

signal source and the one or

between (1) a signal source(s)

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units[1]

more DAUs and/or plurality

(such as a base transceiver

of DRUs

station or picocell) and (2)

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a unit in a DAS that controls

DRUs

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The term “digital access unit” or “DAU” appears in the ‘454 patent. Claim 1 is a

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representative claim using the term, providing in relevant part as follows:

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A system for dynamically routing signals in a Distributed Antenna
System (DAS) operable to communicate with a plurality of signal
sources, the system comprising:

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one or more Digital Access Units (DAUs) operable to receive at
least one signal from at least one of a first signal source and a
second signal source from the plurality of signal sources, each
DAU of the one or more DAUs including an input port
configured as an uplink/downlink port and an output port
configured as an uplink/downlink port;

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Dali proposed a slightly different construction in its opening brief but modified its construction
in its reply brief to address a concern raised by Corning. See Reply at 1.
In its papers, Dali underscores that its construction is consistent with the construction
given to the term “DAU” by a federal court in Delaware in Dali Wireless, Inc. v. Commscope
Techs. LLC, No. 19-952 (MN) (D. Del.). See Schumann Decl., Ex. 8 (Order at 6-7). But there the
court was not construing the ‘454 patent.
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a plurality of Digital Remote Units (DRUs) coupled to the one or
more DAUs and operable to transport signals between the
plurality of DRUs and the one or more DAUs;

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a plurality of sectors formed from the plurality of DRUs
comprising a first sector and a second sector different from the
first sector, each sector comprising a subset of the plurality of
DRUs; and

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a traffic monitoring unit coupled to at least one of the DAUs
comprising the input port and output port each configured as an
uplink/downlink port . . . .

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‘454 patent, claim 1 (emphasis added).
There are several disputes related to the DAU: (1) is a DAU a unit of DAS?; (2) what are
the structures for which a DAU serves as an intermediary?; and (3) what function does a DAU

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United States District Court
Northern District of California

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perform? In general, Corning’s construction is more on point.

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1.

Is a DAU a Unit of a DAS?

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Corning argues that a DAU is a unit of a DAS and thus the construction should reflect

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such. In response, Dali argues that the Court should not, in effect, import the term “DAS” from

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the preamble. Dali is correct in its assessment that deeming a DAU a unit of a DAS would

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essentially import the term “DAS” from the preamble into the claim. However, Corning has the

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better argument that a DAU is a unit of a DAS – i.e., the term “DAS” from the preamble should be

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imported.

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“Whether a preamble stating the purpose and context of the invention constitutes a

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limitation of the claimed process is determined on the facts of each case in light of the overall

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form of the claim, and the invention as described in the specification and illuminated in the

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prosecution history.” Applied Mats., Inc. v. Adv. Semiconductor Mats. Am., Inc., 98 F.3d 1563,

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1572-73 (Fed. Cir. 1996); see also Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801,

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808 (Fed. Cir. 2002) (stating that, when a court decides whether a preamble is a limitation, it must

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consider “‘the entire[] . . . patent to gain an understanding of what the inventors actually invented

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and intended to encompass by the claim’”).

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In general, a preamble limits the invention if it recites essential structure or steps, or if it is

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“necessary to give life, meaning, and vitality” to the claim; conversely, a preamble is not limiting
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“where a patentee defines a structurally complete invention in the claim body and uses the

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preamble only to state a purpose or intended use for the invention.” Id. The Federal Circuit has

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stated that “[n]o litmus test defines when a preamble limits claim scope,” but “[s]ome guideposts

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. . . have emerged from various cases discussing the preamble’s effect on claim scope.” Id.
For example:

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claimed invention, thereby limiting claim scope.”

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“[W]hen the preamble is essential to understand limitations or terms in the claim
body, the preamble limits claim scope.”

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“[W]hen reciting additional structure or steps underscored as important by the
specification, the preamble may operate as a claim limitation.”

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United States District Court
Northern District of California

“Jepson claiming[2] generally indicates intent to use the preamble to define the

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“[A] preamble generally is not limiting when the claim body describes a

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structurally complete invention such that deletion of the preamble phrase does not

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affect the structure or steps of the claimed invention.”

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Intri-Plex Techs., Inc. v. NHK Int’l Corp., No. 17-cv-01097-EMC, 2018 U.S. Dist. LEXIS 16877,

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at *7-8 (N.D. Cal. Feb. 1, 2018) (internal quotation marks omitted).
The factors above weigh in favor of deeming the term “DAS” as used in the preamble a

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claim limitation. For instance, claim 1 of the ‘454 patent has some similarity to a Jepson claim in

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that a DAS is a known system and the ‘454 patent is claiming an improvement in that system.

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Also, a DAS is essential to understand the terms used in the claim body (including but not limited

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to DRU). Furthermore, the specification of the ‘454 patent makes clear the importance of a DAS

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A “Jepson” claim is one that contains (1) a preamble that recites an
old device, process, or combination, (2) a transition phrase such as
“wherein the improvement comprises,” and (3) a body which states
the new elements or improvements upon the old device, process, or
combination. The preamble in a Jepson claim constitutes “a
limitation for purposes of determining patentability and
infringement.”
Xilinx, Inc. v. Altera Corp., No. 93-20409 SW, CIVIL NO. 96-20922 SW, 1998 U.S. Dist. LEXIS
14774, at *6-7 (N.D. Cal. July 30, 1998).
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to the invention – from the title of the patent to the abstract and the summary of the invention.

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Finally, the claim body does not describe a structurally complete invention in that deletion of the

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term “DAS” from the preamble would detract from understanding the claim. See generally Deere

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& Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (finding the preamble term “rotary cutter

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deck” limiting in nature – e.g., because it was necessary to understand the subject matter

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encompassed by the claim and because it described a fundamental characteristic of the claimed

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invention that informed one of skill in the art as to the structure required by the claim; adding that

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the title of the patent, the summary of the invention, and every drawing described the invention as

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a deck for a rotary cutter).
Accordingly, Corning is correct that a DAU is a unit of a DAS.

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United States District Court
Northern District of California

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2.

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The parties do not dispute that a DAU essentially serves as an intermediary between two

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structures. See, e.g., ‘454 patent, FIG. 1 (indicating that a DAU(s) is positioned between a base

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transceiver station (BTS) and DRUs). However, they disagree as to what structures should be

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identified as the structures for which a DAU is an intermediary. According to Dali, a DAU

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connects (1) a mobile network operator and (2) radio remote units (“RRUs”); according to

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Corning, a DAU connects (1) a signal source and (2) DRUs (i.e., digital remote units).

What Are the Structures for Which a DAU Serves as an Intermediary?

a.

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Mobile Network Operator v. Signal Source

As indicated above, the parties’ first dispute is whether the structure at one end should be
deemed a mobile network operator (Dali) or a signal source (Corning).
The Court rejects Dali’s position. The specification for the ‘454 patent – though it

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mentions operators in passing – never discusses a DAU acting as a direct intermediary for an

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operator. Rather, it typically refers to a DAU acting as a direct intermediary for a base transceiver

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station (BTS). For example:

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on the other end to DRUs.

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FIG. 1 of the patent indicates that a DAU(s) is connected on one end to a BTS and

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The patent refers to a “DAS network compris[ing] one or more digital access units
(DAUs) that function as the interface between the base stations and the digital
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remote units (DRUs).” ‘454 patent, col. 4, ll. 60-63.

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Admittedly, Dali’s position is not entirely without merit. It appears that a BTS is

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connected to a mobile network operator and, in in this respect, a DAU does have a connection to

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an operator – i.e., through the BTS. However, for purposes of construction, and in light of the

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specification, a DAU is better defined in conjunction with its direct connections, and not with its

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connections further down the line.
Corning suggests that the direct connection be defined as simply a “signal source” (the

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term that is used in claim 1). It does so in recognition of the fact that a BTS is not the only kind of

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signal source identified by the ‘454 patent. FIG. 6, for example, identifies the signal source as a

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BTS Hotel with picocells inside. See also ‘454 patent, col. 9, ll. 58-59 (“As shown in FIG. 6, the

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United States District Court
Northern District of California

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base station hotel (610) is comprised of multiple Picocells.”). However, simply repeating “signal

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source” in the construction would likely be unhelpful to the jury. It is likely that the jury would

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benefit from having at least examples of what a signal source can be – for instance, a BTS or a

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picocell. The Court therefore shall incorporate examples in its construction.
b.

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The parties’ second dispute is whether the structure at the other end should be identified as

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Radio Remote Unit (“RRU”) v. Digital Remote Unit (“DRU”)

RRUs (Dali) or DRUs (Corning).
Using the term “RRU” – as Dali suggests – does not make much sense, particularly since

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the patent does not use that terminology.3 In contrast, the term “DRU” is used in the patent.

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Moreover, the jury will not be confused by reference to a DRU because the parties have asked the

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Court to construe that term as well. See infra.

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3.

What Function Does a DAU Perform?

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Finally, the parties disagree as to what function a DAU performs. In particular, the parties

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Dali argues that a RRU is the same thing as a DRU but it has suggested the use of “RRU”
because it is “more descriptive and helpful to the jury.” Op. Br. at 6 n.1. Corning disagrees that a
RRU is the same thing as a DRU. See Resp. Br. at 8 (arguing that “RRU” “does not appear
anywhere in the ‘454 patent, and no POSA [person of skill in the art] would have thought to
replace the DRUs in the claims with RRUs”; adding that, in another Dali patent (the ‘300 patent),
RRUs and DRUs are differentiated – a DRU communicates with a DAU while an RRU
communicates with a base station).
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disagree as to (1) whether a DAU does more than just transport/route signals and (2) what kind of

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signals a DAU deals with.

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a.

Transporting/Routing Signals

The parties agree that a DAU transports/routes signals. This is borne out by the patent

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specification. See, e.g., ‘454 patent, col. 1, ll. 45-48 (“The system includes a plurality of Digital

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Access Units (DAUs). The plurality of DAUs are coupled and operable to route signals between

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the plurality of DAUs.”); ‘454 patent, col. 6, ll. 23-26 (“The DAUs are networked together to

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facilitate the routing of DRU signals among multiple DAUs. The DAUs support the transport of

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the RF downlink and RF uplink signals between the Base Station and the DRUs.”); ‘454 patent,
col. 6, ll. 62-66 (“Referring to FIG. 1 . . . , DAU 1 (102) receives downlink signals from BTS

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United States District Court
Northern District of California

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Sector 1 (101). DAU 1 translates the RF signals to optical signals and the optical fiber cable 103

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transports the desired signals to DRU 2 (104).”).

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The parties’ dispute arises from whether a DAU does more. In its papers, Dali suggests
that a DAU can also manage signals and create signals.
On managing signals, there is some language in the specification suggesting that a DAU

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has an active role with respect to routing. See, e.g., ‘454 patent, col. 6, ll. 30-37 (“The DAUs have

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the capability to control the gain (in small increments over a wide range) of the downlink and

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uplink signals that are transported between the DAU and the base station (or base stations)

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connected to that DAU. This capability provides flexibility to simultaneously control the uplink

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and downlink connectivity of the path between a particular DRU . . . and a particular base station

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sector.”); ‘454 patent, col. 7, ll. 61-62 (“The DAUs control the routing of data between the base

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station and the DRUs.”); ‘454 patent, col. 8, ll. 51-53 (“Because the DRUs data traffic has unique

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streams, the DAU Router has the mechanism to route the signal to different sectors.”). But the

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Court finds the term “manage” inappropriate as it is somewhat nebulous and further could be

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construed to overstate what role a DAU plays (particularly, compared to the traffic monitoring

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unit). Thus, the Court shall not use the term “manage” but instead will draw on language used in

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the patent specification instead – i.e., that a DAU controls the routing and gain of signals.

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As for the assertion that a DAU creates signals, here, Dali’s position is problematic.
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According to Dali, the specification

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expressly describe[s] the DAU as creating and assigning radio
resources to DRUs without having to obtain them from a BTS or
other entity. For example, the embodiments described in reference
to Figs. 6-8 show inputs from picocells that do not provide multiple
radio resources to the DAU, but rather provide user data
communications limited to a single frequency band. The DAU
creates its own “radio resources” by combining the communications
from multiple picocells and distributes those radio resources to
DRUs as needed to optimize traffic load in the system. These
embodiments do not require the DAU to receive “radio resource
signals” from another entity such as a BTS, but rather, the DAU
provides its own resource assignments.

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Op. Br. at 9. But the part of the specification that Dali cites does not lend support to its position.
For example, the specification provides in relevant part as follows:

United States District Court
Northern District of California

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As shown in FIG. 6, the base station hotel (610) is comprised of
multiple Picocells. The Picocells are typically wireless operator
dependent and frequency band dependent. Picocells that operate in
the same frequency band are combined at RF and input to the
respective DAUs. The DAU radio resources from the combined
Picocells are transported to a daisy-chained network of DRUs. Each
individual DAUs radio resources provide coverage to an
independent geographical area via the networked DRUs. . . .

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As shown in FIG. 7, the base station hotel (710) is comprised of
multiple Picocells. The Picocells are typically wireless operator
dependent and frequency band dependent. Picocells that operate in
the same frequency band are combined at RF and input to the
respective DAUs. The DAU radio resources from the combined
Picocells are transported to a daisy-chained network of DRUs. Each
individual DAUs [sic] radio resources provide coverage to an
independent geographical area via the networked DRUs.

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‘454 patent, col. 10, ll. 5-13 (emphasis added). The italicized language above makes clear that

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DAUs do not combine communications from picocells, as Dali suggests; rather the combined

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communications from the picocells are input into the DAUs. There is no indication in the

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specification that DAUs create signals. Therefore, Dali’s claim that DAUs create signals lacks

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merit.

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b.

Type of Signals

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The parties’ final dispute is what type of signals are transported/routed by a DAU. Dali

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contends that the signals can be just the user data (e.g., voice/data communications) without the

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radio resources that carry the data; Corning asserts that the radio resource signals must be
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transported/routed.4
Corning’s position is amply supported by the specification.

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“One feature of embodiments of the present invention is the ability to route Base

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Station radio resources among the DRUs or group(s) of DRUs.”5 ‘454 patent, col.

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6, ll. 16-18.
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“The DAUs support the transport of the RF downlink and RF uplink signals
between the Base Station and the DRUs.” ‘454 patent, col. 6, ll. 24-26.

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“As shown in FIG. 1, the individual base station sector’s radio resources are
transported to a daisy-chained network of DRUs. Each individual sector’s radio

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resources provided coverage to an independent geographical area via the networked

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United States District Court
Northern District of California

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DRUs.” ‘454 patent, col. 6, ll. 54-56; see also ‘454 patent, FIGs. 1, 3, 6-7

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(reflecting that RF cables connect the DAUs to the BTSs).
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“Referring to FIG. 3 and by way of example, DAU 1 (302) receives downlink

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signals from BTS Sector 1 (301). DAU 1 translates the RF signals to optical

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signals and the optical fiber cable 303 transports the desired signals to DRU 2

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(304).” ‘454 patent, col. 8, ll. 31-35.
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“As shown in FIG. 6, the base station hotel (610) is comprised of multiple

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The parties do not dispute what radio resources are, particularly as that term is used in the
specification. See, e.g., ‘454 patent, col. 4, ll. 30-35 (“With Flexible Simulcast, the amount of
radio resources (such as RF carriers, LTE Resource Blocks, CDMA codes or TDMA time slots)
assigned to a particular DRU or group of DRUs can be set via software control to meet desired
capacity and throughput objects or wireless subscriber needs.”); see also Op. Br. at 8, 10
(describing radio resources as “radio system parameters that allow a system to provide more or
less throughput or bandwidth to users”; also stating that radio resources are “parameters that
instruct DRUs how to communicate underlying user data to phone users”).
Nor do the parties seem to have any real dispute about what radio resource signals are,
notwithstanding the fact that the term “radio resource signals” is not used in the ‘454 patent. See,
e.g., Proctor Decl. ¶ 49 (Corning’s expert stating that the signals at issue in the patent “are defined
by what they transport, which are radio resources in the form of radio resource signals”) (emphasis
added and omitted).
Rather, the parties’ dispute is – as noted above – whether signals can be user data without
any radio resources.
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Notably, this sentence from the specification does not limit itself to one embodiment of the
present invention. Rather, the sentence simply refers to one feature of embodiments.
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Picocells. . . . The DAU radio resources from the combined Picocells are

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transported to a daisy-chained network of DRUs. Each individual DAUs [sic] radio

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resources provide coverage to an independent geographical area via the networked

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DRUs.” ‘454 patent, col. 9, l. 58-66.
In contrast, Dali has not cited to any part of the specification that indicates signals can be

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just user data without the radio resources that carry the data. At the hearing, Dali pointed out that

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it owns a different patent (the ‘499 patent), which has some of the same inventors as the ‘454

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patent, and, in that patent, the claims use the term “radio resources” instead of “signals.” Thus,

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Dali contends, “radio resources” and “signals” must mean different things.6 The problem for Dali
is that the ‘499 patent cannot supplant what is stated in the specification of the ‘454 patent. See

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United States District Court
Northern District of California

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Young Dental Mfg. Co. v. Q3 Special Prods., 112 F.3d 1137, 1143 (Fed. Cir. 1997) (stating that

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“[t]he specification that is relevant to claim construction is the specification of the patent in which

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the claims reside”); cf. Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1318 (Fed. Cir. 2005)

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(noting that “the manner in which [a] term is used in [a] patent may dictate a definition that differs

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from the definition that would be given to the same term in a different patent with a different

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specification or prosecution history”).

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To the extent Dali asserts that “importing limitations from the specification is

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inappropriate,” this is true; however, “it is appropriate to consider the specification for proper

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context about the meaning of a contested term.” Asetek Danmark A/S v. CoolIT Sys., No. 19-cv-

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00410-EMC, 2020 U.S. Dist. LEXIS 129728, at *40 (N.D. Cal. July 22, 2020) (emphasis added).

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The Federal Circuit has “acknowledged the difficult distinction between ‘using the specification to

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In a decision related to the ‘499 patent – involving Dali and a different party – see John
Mezzalingua Assocs., LLC v. Dali Wireless Inc., No. IPR202-01430 (PTAB) – the PTAB
concluded that “radio resources” do not include the underlying data (i.e., the voice/data
communications themselves). See Resp. Br., Ex. K (PTAB Decision at 10) (“To the extent that
Petitioner intends its construction of ‘radio resources’ to encompass the data being transmitted via
RF, we disagree that is a proper construction of the term. The ‘499 patent gives as examples of
‘radio resources’ RF carriers, CDMA codes, and TDMA time slots. No indication is given that the
data carried wirelessly using these over the interface to the DAU is, itself, a radio resource.
Rather, the ‘499 patent describes deploying ‘radio resources’ ‘for use by a particular DRU which
need[s] those radio resources within its coverage area,’ or modifying system configuration to
‘remove’ ‘radio resources’ ‘for use by a particular DRU.’”).
11
6

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 12 of 41

1

interpret the meaning of a claim and importing limitations from the specification into the claim’”

2

but explained that “the distinction is manageable ‘if the . . . focus remains on understanding how a

3

person of ordinary skill in the art would understand the claim terms.’” Baldwin Graphic Sys., Inc.

4

v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (quoting Phillips, 415 F.3d at 1323).

5

Notably, “the court should focus on how such a person would understand the claim term ‘after

6

reading the entire patent.’” ICU Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1375 (Fed. Cir.

7

2009); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.

8

Cir. 2008) (stating that “[w]ords of a claim are generally given their ordinary and customary

9

meaning, which is the meaning a term would have to a person of ordinary skill in the art after

10

reviewing the intrinsic record at the time of the invention”) (emphasis added).

United States District Court
Northern District of California

11

For example, in ICU, the district court construed the term “spike” as “an elongated

12

structure having a pointed tip for piercing the seal, which tip may be sharp or slightly rounded.” It

13

rejected the patent holder’s proposed construction was which broader in nature (“an upward

14

projection”). See ICU, 558 F.3d at 1374. On appeal, the Federal Circuit affirmed. After noting

15

that a “court should focus on how such a person would understand the claim term ‘after reading

16

the entire patent,’” the Federal Circuit explained that, in the case under consideration,

17

[t]he specification never suggests that the spike can be anything
other than pointed. As the district court noted, (1) each figure
depicts the spike as elongated and pointed; (2) in each figure
depicting an activated valve, the spike pierces the seal; and (3) the
patents neither describe piercing as optional nor describe any nonpiercing item as a spike. Moreover, ICU offers no support from any
intrinsic or extrinsic source in support of its claim that the ordinary
meaning of spike would include a non-pointed structure such as a
tube or a straw.

18
19
20
21
22
23

ICU, 558 F.3d at 1375 (emphasis added).
The situation in the instant case is similar to that in ICU – e.g., although the term “signal”

24

is arguably broad in nature, the specification for the ‘454 patent does not indicate that the DAU

25

ever transports user data without radio resources. As Corning aptly argues, the patent does not

26

require that user data be transported along with radio resources; the “signals transport radio

27

resources and may – but are not required to – transport data.” Resp. Br. at 9-10 (emphasis in

28

original).
12

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 13 of 41

1

4.

Summary

2

Accordingly, the Court adopts the following construction for the term “DAU”: “a unit in a

3

DAS that controls the transport/routing and gain of radio resource signals between (1) a signal

4

source(s) (such as a base transceiver station or picocell) and (2) DRUs.”

5

B.

“digital remote unit” / “DRU” (‘454 patent, claims 1, 6; ‘261 patent, claims 1, 4-6, 8)

6
7

Dali’s Proposed

Corning’s Proposed

8

Construction

Construction

Court’s Construction

9

“digital remote unit” / “DRU”

10

(‘454 patent, claims 1, 6; ‘261 patent, claims 1, 4-6, 8)

United States District Court
Northern District of California

11

a unit in communication with

a unit of a DAS that supports

a unit in a DAS that

12

a digital access unit for

the transport of the radio

transports radio resource

13

providing communications to

resource signals between

signals to and from user

14

and from user devices

users and a central facility

devices

15

and/or one or more DAUs

16
17

The term “digital remote unit” or “DRU” is used in both the ‘454 and ‘261 patents. The

18

parties agree that the term should be defined the same for both patents. For purposes of this order,

19

the Court focuses on the ‘454 patent. Claim 1 of the ‘454 patent provides in relevant part as

20

follows:

21
22
23
24
25
26
27
28

A system for dynamically routing signals in a Distributed Antenna
System (DAS) operable to communicate with a plurality of signal
sources, the system comprising:
one or more Digital Access Units (DAUs) operable to receive at
least one signal from at least one of a first signal source and a
second signal source from the plurality of signal sources, each
DAU of the one or more DAUs including an input port
configured as an uplink/downlink port and an output port
configured as an uplink/downlink port;
a plurality of Digital Remote Units (DRUs) coupled to the one
or more DAUs and operable to transport signals between the
plurality of DRUs and the one or more DAUs;
13

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 14 of 41

a plurality of sectors formed from the plurality of DRUs
comprising a first sector and a second sector different from the
first sector, each sector comprising a subset of the plurality of
DRUs; and

1
2
3

a traffic monitoring unit coupled to at least one of the DAUs
comprising the input port and output port each configured as an
uplink/downlink port . . . .

4
5

‘454 patent, claim 1 (emphasis added).
The parties’ dispute regarding the term “DRU” largely replicates their dispute above

6
7

regarding the term “DAU” – e.g., the parties disagree about whether a DRU is part of a DAS and

8

what type of signals are transported. As discussed above, these issues are resolved in favor of

9

Corning. However, there is one part of Dali’s proposed construction that the Court adopts, largely
because it is a simpler and more direct construction. That is, the Court shall refer to DRUs

11

United States District Court
Northern District of California

10

transporting signals to and from user devices, rather than stating that DRUs connect to (1) user

12

devices on one end and (2) a central facility and/or DAUs on the other end. (The Court

13

recognizes, however, that DRUs are, in essence, positioned between user devices and the DAUs.)
The Court adopts the following construction for DRU: “a unit in a DAS that transports

14
15

radio resource signals to and from user devices.”

16

C.

“sector” terms (‘454 patent, claim 1)

17
18

Dali’s Proposed

Corning’s Proposed

19

Construction

Construction

Court’s Construction

20

“a plurality of sectors” / “a first sector” / “a second sector different from the first sector”

21

(‘454 patent, claim 1)

22

“sector” is “a grouping of

“a plurality of independent

“sectors” are “independent

23

DRUs in a particular area or

radio resources” / “first

radio resources”

24

region

independent radio resources”

25

/ “second independent radio

26

resources different from the

27

first independent radio

28

resources”
14

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 15 of 41

1

“a plurality of sectors formed from the plurality of DRUs comprising a first sector and a

2

second sector different from the first sector, each sector comprising a subset of DRUs”

3

(‘454 patent, claim 1)

4

assigning DRUs into two

a plurality of independent

plain and ordinary meaning

5

groupings in a particular area,

radio resources, comprising

[i.e., unnecessary to construe

6

a first grouping in a first area

first independent radio

given construction above]

7

or region and a second

resources and second

8

grouping in a second area or

independent radio resources,

9

region

to which the plurality of

10

DRUs are allocated

United States District Court
Northern District of California

11

“reconfiguring the plurality of sectors based on the one or more KPIs and QoS by allocating at

12

least one DRU from the first sector to the second sector”

13

(‘454 patent, claim 1)

14

reallocating at least one DRU

allocate at least one DRU

plain and ordinary meaning

15

from one sector to another

from the first independent

[i.e., unnecessary to construe

16

sector based on the one or

radio resources to the second

given construction above]

17

more KPIs and QoS

independent radio resources

18

based on the one or more

19

KPIs and QoS

20
21
22
23
24
25
26
27
28

The term “sector” or “sectors” is used in the ‘454 patent. Claim 1 is a representative claim,
providing as follows:
A system for dynamically routing signals in a Distributed Antenna
System (DAS) operable to communicate with a plurality of signal
sources, the system comprising:
one or more Digital Access Units (DAUs) operable to receive at
least one signal from at least one of a first signal source and a
second signal source from the plurality of signal sources, each
DAU of the one or more DAUs including an input port
configured as an uplink/downlink port and an output port
configured as an uplink/downlink port;
15

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 16 of 41

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13

a plurality of Digital Remote Units (DRUs) coupled to the one or
more DAUs and operable to transport signals between the
plurality of DRUs and the one or more DAUs;
a plurality of sectors formed from the plurality of DRUs
comprising a first sector and a second sector different from the
first sector, each sector comprising a subset of the plurality of
DRUs; and
a traffic monitoring unit coupled to at least one of the DAUs
comprising the input port and output port each configured as an
uplink/downlink port, wherein the traffic monitoring unit is
configured to:
determine one or more key performance indicators (KPIs)
and a quality of service (QoS) of a network traffic for the
one or more DAUs, wherein the QoS is a function of the one
or more KPIs; and
reconfigure the plurality of sectors based on the one or more
KPIs and QoS by allocating at least one DRU from the first
sector to the second sector.
‘454 patent, claim 1 (emphasis added).
Although the parties have identified three sector-related terms for construction, the basic

14

dispute for all three terms is whether a “sector” means “a grouping of DRUs in a particular region

15

or area” (Dali) or “independent radio resources” (Corning). The Court rejects Dali’s construction

16

and largely adopts Corning’s.

17

In essence, Dali’s construction equates a sector with a group of DRUs – i.e., a sector is

18

made up of DRUs. See Resp. Br. at 14. If one were to look at claim 1 in a vacuum, then that

19

construction might be plausible. For example, claim 1 on its face refers to “a plurality of sectors

20

formed from the plurality of DRUs” and “each sector comprising a subset of the plurality of

21

DRUs.” ‘454 patent, claim 1 (emphasis added). However, the specification for the ‘454 patent

22

shows that that construction is off the mark.

23

First, the specification expressly defines what sectors are. The specification states at one

24

point: “A typical base station comprises 3 independent radio resources, commonly known as

25

sectors. These 3 sectors are typically used to cover 3 separate geographical areas without creating

26

co-channel interference between users in the 3 distinct sectors.” ‘454 patent, col. 5, ll. 2-4

27

(emphasis added). This express definition cannot be disregarded: sectors are radio resources; it is

28

not defined by DRUs. Cf. Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373,
16

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 17 of 41

1

1377-78 (Fed. Cir. 2019) (stating that a court “will deviate from a claim term’s ordinary meaning

2

‘when a patentee sets out a definition and acts as its own lexicographer’”); Laryngeal Mask Co. v.

3

Ambu A/S, 618 F.3d 1367, 1372 (Fed. Cir. 2010) (stating that, “[t]o be his own lexicographer, a

4

patentee must use a ‘special definition of the term [that] is clearly stated in the patent specification

5

or file history’”).

6

Second, the specification also makes clear that a sector is not a group of DRUs. Most

7

notably, in the figures of the ‘454 patent, it is clear that a grouping of DRUs (e.g., in a hexagon) is

8

called a cell, not a sector. For example, below is FIG. 1:

9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

’454 patent, FIG. 1. This is reinforced by text from the specification: “FIG. 1 demonstrates how
17

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 18 of 41

1

three cells, each cell comprising an independent network of 7 DRUs, provide coverage to a given

2

geographical area.” ‘454 patent, col. 6, ll. 58-60 (emphasis added); see also ‘454 patent, col. 5, l.

3

60-col. 6, l. 1. (“An embodiment shown in FIG. 1 illustrates a basic DAS network architecture

4

according to an embodiment of the present invention and provides an example of a data transport

5

network, traffic monitoring and network optimization scenario between a 3 sector Base Station

6

and multiple DRUs. In this embodiment, the DRUs are daisy chained together to achieve

7

coverage in a specific geographical area. Each individual sector covers an independent

8

geographical area, which is identified as a Cell.”).7 FIG. 1 above also shows pictorially that

9

sectors are separate from the DRUs (the sectors are “housed” within the Base Transceiver Station

10

(“BTS”) but that the sectors are still related to the coverage area of the DRUs.
In its reply brief, Dali argues that “the term ‘sectors’ has traditionally meant a particular

United States District Court
Northern District of California

11
12

coverage area.” Reply at 4 (emphasis added). In support, Dali cites to two prior art references

13

that are expressly identified in the ‘454 patent (i.e., the ‘530 patent application and the ‘207

14

patent). For example, in ¶ 0003 of the ‘530 patent application, the inventors noted that cells may

15

be divided into sectors. But Dali’s position here is not particularly convincing because the

16

inventors of the ‘454 patent acted as their own lexicographers. So even if different inventors used

17

the term “sector” in their intellectual property, that is not dispositive here. Notably, Dali’s own

18

expert did not provide an opinion on the term “sector” in spite of Dali’s argument that it has a

19

traditional meaning. See note 7, supra.
Dali protests still that the prosecution history for the ‘454 patent shows its construction of

20
21

“sector” is correct. Specifically, Dali points to its response to the PTO’s Final Office Action

22

where it stated as follows:

23

The Examiner . . . cites Sombrutzki as disclosing this limitation [i.e.,
a traffic monitoring unit external to and coupled to at least one of the
DAUs, wherein the traffic monitoring unit is configured to:
determine one or more key performance indicators (KPIs) and a

24
25
26
27
28

Corning’s expert points out this distinction between cells and sectors, see Proctor Decl. ¶ 67
(stating that “[a] POSA would have . . . understood Dali’s proposed construction to refer to ‘cells,’
not ‘sectors’[;] [c]ells refer to geographic areas or regions, which is very different than
independent radio resources”), whereas Dali’s expert appears to have provided no opinion on
sectors at all. See generally Bims Decl.
18
7

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 19 of 41

1
2
3

quality of service (QoS) of a network traffic for the one or more
DAUs, wherein the QoS is a function of the one or more KPIs; and
reconfigure the plurality of sectors based on the one or more KPIs
and QoS by allocating at least one DRU from the first sector to the
second sector].

11

Applicant respectfully submits that Sombrutzki fails to remedy the
deficiencies of Grenier [another prior art reference]. Sombrutzki
discusses “a method for organizing an architecture of access points
in a distributed wireless network,” such as “a GPRS network a
WiMax type network or an IEEE 9-2.11 type or Wi-Fi network.”
(Sombrutzki at paragraph [0019]). “The efficiency of an IEEE
802.11 infrastructure network is determined by the achieved level of
Quality of Service (QOs). With the proposed method QoS can be
improved in terms of an increased data throughput and a decreased
latency and jitter.” (Id. at paragraph [0026]). Thus, Sombrutzki
relates to Wi-Fi networks and access points, which is not analogous
to a DAU network. Furthermore, Sombrutzki does not disclose
reconfiguring a DAU network based on KPI and QoS. Nor does
Sombrutzki disclose splitting access points into first and second
sectors and reconfiguring the wireless network and by allocating at
least one access point from the first sector to the second sector.

12

Bean Decl., Ex. G (Response at 8) (emphasis added). But the statement above sheds little light on

13

whether, at that time, Dali considered sectors to be, in essence, made up of DRUs. Allocating a

14

DRU from one sector to another does not necessarily mean that a sector is made up of DRUs.

15

Rather a DRU may still be allocated to, or associated with, one sector over another. Hence,

16

although the configuration of a sector (based, e.g., on level of QoS) may affect the allocation of

17

DRUs, the sector is not comprised by the grouping of DRUs.

4
5
6
7
8
9

United States District Court
Northern District of California

10

18

Third, a consideration of other claims in the ‘454 patent also indicates that a sector is not a

19

group of DRUs. For example, claim 2 of the ‘454 patent provides: “The system of claim 1 further

20

comprising a plurality of BTSs coupled to the one or more DAUs, wherein each BTS comprises

21

the plurality of sectors.” ‘454 patent, claim 2 (emphasis added). As Corning’s expert explains

22

with respect to claim 2,

23
24
25
26
27
28

[a] POSA would have understood that, by having each BTS
comprise the plurality of sectors, the sectors are not “groups” of
DRUs in a particular area or region. The sectors are included within
each BTS, which contain the independent radio resources to which
the DRUs are allocated. Under Dali’s proposed construction, the
group of DRUs would be contained within each BTS, which is not
supported by the claims or specification of the ‘454 patent.
Proctor Decl. ¶ 73.
Finally, contrary to what Dali argues, construing sectors to be radio resources – as Corning
19

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 20 of 41

1

advocates – does not go against the teachings of the patent, in particular, that the invention allows

2

for the pooling of resources. Dali is correct that the ‘454 patent does talk about the pooling of

3

resources. For example:

4

•

“Once traffic resources are aggregated into eNodeB hotels, the discrete resources of

5

a single eNodeB are still allocated to a specific set of antennas associated with that

6

eNodeB and providing coverage to a specific geographic area. The traffic

7

resources are fixed, i.e., only the resources associated with a specific eNodeB can

8

be allocated to the antennas associated with that eNodeB. However, because the

9

eNodeBs are collocated in an eNodeB hotel, the system can use the aggregated
traffic resources of the discrete eNodeBs as a single, pooled traffic resource that

11

United States District Court
Northern District of California

10

can be allocated according to various algorithms.” ‘454 patent, col. 5, ll. 8-20

12

(emphasis added).

13

•

“The traffic information derived from an extensive sensor network will be used to

14

dynamically allocate the traffic resources to the required geographical areas only

15

for the time period the service is needed. Once the service is supplied and the

16

traffic sensor network determines that the traffic resources are no longer required,

17

they are returned to the resource pool for reallocation.” ‘454 patent, col. 5, ll. 36-

18

42 (emphasis added).

19

But a pooling of resources is permitted under Corning’s construction of the term “sector.” As

20

Corning explain in its briefs,

21
22
23
24
25
26
27
28

[s]ectors are independent radio resources that provide capacity and
broadband data throughput to accommodate users. Each individual
sector of independent radio resources can be used to provide cellular
coverage to an independent geographic area, which is referred to as
a “cell.” The DRUs are fixed in location within each of the cells of
Figure 3 . . . and are not reassigned or allocated to different
geographic areas or cells. The cells can share the independent radio
resources of the sectors through interconnected DAUs, and the
radio resources can be allocated to different DRUs, or conversely,
the DRUs can be allocated to different radio resources. Thus, if one
cell has a high volume of traffic at a particular time of day, more
sectors (i.e., radio resources) can be allocated to the DRUs in that
cell. Therefore, it is the radio resources (i.e., sectors) that are
reconfigured within an area or cell to optimize the network, not a
reconfiguration of the number of DRUs providing service within a
20

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 21 of 41

geographic area, i.e., a cell.

1
2

Resp. Br. at 11-12 (emphasis added).
For the reasons stated above, the Court rejects Dali’s construction and instead adopts

3
4

Corning’s construction for “sectors” – i.e., “independent radio resources.”

5

D.

6

“a key performance indicator related to a number of satisfied users” (‘261 patent, claims 1,
8, 9)

7
8

Dali’s Proposed

Corning’s Proposed

9

Construction

Construction

Court’s Construction

“a key performance indicator related to a number of satisfied users”

11

United States District Court
Northern District of California

10

(‘261 patent, claims 1, 8, 9)

12

“satisfied user” means “users

a key performance indicator

a key performance indicator

13

that can achieve a targeted

defining the percent of users

related to a number of users

14

service bitrate”

that can achieve the targeted

that can achieve a targeted

service bit rate

service bitrate

15
16

“key performance indicator”

17

means “a measurement of

18

performance of a particular

19

system”

20
21

other terms provided their

22

plain and ordinary meaning

23
24
25
26
27
28

The “key performance indicator” or “KPI” term above is used in the ‘261 patent. Claim 1
is a representative claim, providing as follows:
A method of determining a transmission power of a digital remote
unit (DRU) in a distributed antenna system (DAS), the method
comprising:
a) Setting a transmission power level for the DRU;
21

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 22 of 41

1

b) Determining a key performance indicator related to a
number of satisfied users at the transmission power;

2

c) Iteratively adjusting a transmission power level for the DRU
to increase the key performance indicator related to the
number of satisfied users; and

3
4

d) Setting the transmission power level for the DRU at an
iterated power level.

5
6

‘261 patent, claim 1 (emphasis added).
Here, the parties agree that “satisfied users” means users that can achieve a targeted service

7
8

bitrate. See also ‘261 patent, col. 5, ll. 5-9 (“[T]o improve the throughput for the cell edge users

9

and further increase the number of satisfied users (the users that can achieve a targeted service
bitrate), a downlink Power Self-Optimization (PSO) algorithm for three different resource

11

United States District Court
Northern District of California

10

allocation scenarios is proposed for the DAS -SFR [soft frequency reuse].”). Thus, the dispute

12

between the parties has two components: (1) whether the phrase “key performance indicator,” as a

13

general matter, needs to be explained and (2) whether “key performance indicator” for purposes of

14

the specific claim means only the percent of users that can achieve the targeted service bit rate.

15

1.

General Definition

16

Regarding the first dispute, Dali believes that a general definition for “key performance

17

indicator” should be provided and notes that its definition (“a measurement of performance of a

18

particular system”) is consistent with a scientific dictionary. See Schumann Decl., Ex. 13 (IEEE

19

100: The Authoritative Dictionary of IEEE Standards Terms (7th ed. 2000)8 (defining “key

20

performance indicator” as “[a] measurement of performance of a particular business system in

21

terms of the aims and goals of an enterprise”). But Dali’s definition is lacking in that it does not

22

give any real weight to the term “key” and further leaves out the reference point provided in the

23

scientific dictionary (“in terms of the aims and goals of an enterprise”). In addition, as a practical

24

matter, the scientific dictionary provides a definition for “key performance indicator” that is

25

largely consistent with a layperson’s understanding of the term (i.e., “key performance indicator”

26

is just a general business term and not a special scientific term). See, e.g., Google Dictionary

27
28

8

The ‘261 patent has a filing date of August 14, 2017.
22

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 23 of 41

1

(defining “key performance indicator” as “a quantifiable measure used to evaluate the success of

2

an organization, employee, etc. in meeting objectives for performance”);

3

https://en.wikipedia.org/wiki/Performance_indicator (stating that “[a] performance indicator or

4

key performance indicator (KPI) is a type of performance measurement[;] KPIs evaluate the

5

success of an organization or of a particular activity (such as projects, programs, products and

6

other initiatives) in which it engages”). The Court therefore finds that it is not necessary to define

7

“key performance indicator” and that the jury may simply rely on the plain and ordinary meaning

8

of the term. See Phillips, 415 F.3d at 1314 (pointing out that, “[i]n some cases, the ordinary

9

meaning of claim language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than the application of

11

United States District Court
Northern District of California

10

the widely accepted meaning of commonly understood words”).

12

2.

Specific Application

13

The parties’ second dispute is more substantive. Corning asserts that “a key performance

14

indicator related to a number of satisfied users” can mean only “a key performance indicator

15

defining the percent of [satisfied] users.” Dali disagrees. According to Dali, “‘key performance

16

indicator’ is not limited to any specific metric such as ‘percent’ only that it is ‘related to a number

17

of satisfied users.” Op. Br. at 15.

18

Corning bases its argument on that part of the specification which discusses the

19

“formulat[ion] [of] the power allocation problem to maximize the number of satisfied users and

20

also maximize the total satisfied users[‘] capacity.” ‘261 patent, col. 9, ll. 51-53. With respect to

21

the number of satisfied users, the key performance indicator is expressed as KPISU. The

22

specification notes in relevant part as follows:

23

///

24

///

25

///

26

///

27

///

28

///
23

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 24 of 41

1
2
3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18

‘261 patent, col. 10, ll. 4-29 (Formula No. 16).
The excerpt above does reflect that KPISU can be expressed as a percentage. Moreover, it

19

makes practical sense that a percentage would be used – i.e., without knowing the total number of

20

users in the cell, the absolute number would appear to provide little useful information. In

21

contrast, if information about the total number of users is also known, that would appear to be a

22

better gauge of the “success” of the system – identifying what percentage of users in a given cell

23

are satisfied users.

24

That being said, the Court is not persuaded that a key performance indicator related to a

25

number of satisfied users must be expressed as a percentage. There are several reasons why. First,

26

the excerpt above says that “[w]e can derive a metric . . . .” This language is inherently non-

27

limiting in nature. At the hearing, Corning argued that this phrase should not be given any real

28

weight because it is simply a convention used by mathematicians without an intent to convey a
24

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 25 of 41

1

non-limiting nature. However, Corning did not provide any evidence to support this specific

2

argument, and the Court is not able to take judicial notice of this asserted linguistic usage.

3

Second, Corning’s construction is problematic because claim 1 refers to “a key performance

4

indicator related to a number of satisfied users.” ‘261 patent, claim 1 (emphasis added). “Related

5

to” is a broad term which does not dictate Corning’s proposed construction of “a key indicator

6

defining the percent of [satisfied] users” (emphasis added). Finally, the Federal Circuit has

7

“expressly rejected the contention that if a patent describes only a single embodiment, the claims

8

of the patent must be construed as being limited to that patent” – not only because “the claims

9

themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the
art rarely would confine their definitions of terms to the exact representations depicted in the

11

United States District Court
Northern District of California

10

embodiments.” Phillips, 415 F.3d at 1323. In fact, the Federal Circuit has stated that “the scope

12

of the invention is properly limited to the preferred embodiment [only] if the patentee uses words

13

that manifest a clear intention to restrict the scope of the claims to that embodiment.” Info-Hold,

14

Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015); see also Liebel-

15

Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-07 (Fed. Cir. 2004) (indicating that, usually,

16

there are “specific reasons dictating a narrow claim construction beyond the mere fact that the

17

specification disclosed only a single embodiment or a particular structure” – e.g., there is explicit

18

disclaimer in the patent specification or the prosecution history reflects express distinguishing of

19

prior art). In the instant case, based on the record presented to the Court, there is no manifestation

20

of a clear intent to restrict the scope of the term to a single embodiment.
Accordingly, the Court adopts the following construction for “a key performance indicator

21
22

related to a number of satisfied users”: “a key performance indicator related to a number of users

23

that can achieve a targeted service bitrate.”

24

///

25

///

26

///

27

///

28

///
25

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 26 of 41

1

“a second key performance indicator related to a capacity for the number of satisfied users

E.

(‘261 patent, claim 8)

2
3
4

Dali’s Proposed

Corning’s Proposed

5

Construction

Construction

Court’s Construction

6

“a second key performance indicator related to a capacity for the number of satisfied users”

7

(‘261 patent, claim 8)
“key performance indicator”

a second key performance

9

means “a measurement of

indicator reflecting the total

10

performance of a particular

bandwidth utilization of all

11

United States District Court
Northern District of California

8

system”

users that can achieve the

12

plain and ordinary meaning

targeted service bit rate at the

13

“satisfied user” means “users

14

that can achieve a targeted bit

15

rate”

transmission power

16
17

other terms provided their

18

plain and ordinary meaning

19
20
21
22
23
24
25
26
27
28

This KPI term is used in claim 8 of the ‘261 patent. Claim 8 provides as follows:
The method of claim 1 further comprising:
a) Determining a second key performance indicator related
to a capacity for the number of satisfied users;
b) Iteratively adjusting the transmission power level for the
DRU to increase the second key performance indicator
related to the capacity for the number of satisfied users; and
c) Setting the transmission power level for the DRU at the
iterated power level.
‘261 patent, claim 8.
The parties’ main disputes with respect to the KPI term are (1) whether a general definition
26

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 27 of 41

1

for “key performance indicator” should be provided and (2) whether a “key performance indicator

2

related to a capacity for the number of satisfied users” should be limited to the equation provided

3

in the specification (Formula No. 17 for KPICSU).
The analysis above for “key performance indicator related to a number of satisfied users”

4
5

is essentially applicable here. That is, there is no need to provide a general definition of “key

6

performance indicator,” and there is no basis in the record before the Court to restrict KPICSU to

7

the single embodiment expressed in the specification (even though the embodiment makes

8

practical sense). The Court notes that there is no need to provide any further construction because

9

the parties have no real disagreement as to what is meant by the term “capacity.” See Bims Decl.
¶ 24 (Dali’s expert stating that “[t]he ‘261 patent uses ‘capacity’ as throughput or a bit rate

11

United States District Court
Northern District of California

10

achieved by a particular user”); Proctor Decl. ¶ 42 (in discussing “Capacity of Satisfied Users,”

12

Corning’s expert referring to “the actual throughput of all satisfied users (i.e., the users with a

13

service bit rate above the defined threshold) measured in bits per second (bps)”).

14

F.

“the second key performance indicator related to the capacity for the number of satisfied

15

users is a number of users having a capacity above a predetermined threshold capacity”

16

(‘261 patent, claim 9)

17
18

Dali’s Proposed

Corning’s Proposed

19

Construction

Construction

Court’s Construction

20

“the second key performance indicator related to the capacity for the number of satisfied users

21

is a number of users having a capacity above a predetermined threshold capacity”

22

(‘261 patent, claim 9)

23

“key performance indicator”

indefinite; lacks written

not indefinite; the issue of

24

means “a measurement of

description

written description is deferred

25

performance of a particular

26

system”

27
28

“satisfied user” means “users
27

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 28 of 41

1

that can achieve a targeted bit

2

rate”

3
4

other terms provided their

5

plain and ordinary meaning

6
7

The above KPI term is found in claim 9 of the ‘261 patent. Claim 9 provides as follows:

8

“The method of claim 8 wherein the second key performance indicator related to the capacity for

9

the number of satisfied users is a number of users having a capacity above a predetermined
threshold capacity.” ‘261 patent, claim 9 (emphasis added). (“[P]redetermined threshold

11

United States District Court
Northern District of California

10

capacity” means the “targeted service bit rate.” ‘261 patent, col. 10, ll. 25-26 (noting that “Cth is a

12

threshold capacity (targeted service bit rate)”).

13

In its papers, Corning argues that claim 9 (1) is indefinite and (2) lacks written description.

14

A claim is indefinite when, “read in light of the patent’s specification and prosecution history, [it]

15

fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the

16

invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 898-99 (2014); see also 35

17

U.S.C. § 112(b) (providing that “[t]he specification shall conclude with one or more claims

18

particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards

19

as the invention”). “Adequate written description means that the applicant, in the specification,

20

must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he

21

or she was in possession of the [claimed] invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567

22

F.3d 1366, 1379 (Fed. Cir. 2009); see also 35 U.S.C. § 112(a) (providing that “[t]he specification

23

shall contain a written description of the invention . . . in such full, clear, concise, and exact terms

24

as to enable any person skilled in the art to which it pertains . . . to make and use the same”).

25

As an initial matter, the Court must consider whether it should address Corning’s

26

arguments at this juncture in the proceedings. The Court declines to address the argument related

27

to written description. Written description is an issue of fact, see Agilent, 567 F.3d at 1379

28

(stating that “[s]atisfaction of the written description requirement is a question of fact”); see also
28

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 29 of 41

1

Novozymes A/S v. Dupont Nutrition Biosciences APS, 723 F.3d 1336, 1344 (Fed. Cir. 2013), and

2

therefore the Court deems it inappropriate to deal with the issue at claim construction, at least

3

absent a compelling reason to the contrary in this instance.

4

Indefiniteness is different. “Indefiniteness is . . . a legal determination arising out of the

5

court’s performance of its duty construing the claims,” although it “is amenable to resolution by

6

the jury where the issues are factual in nature.” BJ Servs. Co. v. Halliburton Energy Servs., 338

7

F.3d 1368, 1372 (Fed. Cir. 2003); see also Dow Chem. Co. v. NOVA Chems. Corp. (Can.), 809

8

F.3d 1223, 1226 (Fed. Cir. 2015) (stating that “[w]e have consistently permitted courts to submit

9

legal questions which contain underlying factual issues, like obviousness, enablement, or
indefiniteness, to the jury”). Given these parameters, a court has some discretion in deciding

11

United States District Court
Northern District of California

10

whether to address indefiniteness at the claim construction phase. As noted by one district court,

12

“[w]hether to decide the issue of invalidity based on indefiniteness at the claim construction stage

13

depends on the particular circumstances and claims at issue in a given case, and is a matter within

14

a court’s discretion.” Junker v. Med. Components, Inc., No. 13-4606, 2017 U.S. Dist. LEXIS

15

179955, at *5 (E.D. Pa. Oct. 30, 2017); see also Cipher Pharms. Inc. v. Actavis Labs. FL, Inc., 99

16

F. Supp. 3d 508, 514 (D.N.J. 2015) (stating that, “to decide indefiniteness during claim

17

construction depends on why the alleged infringer asserts that the claim is indefinite”); cf.

18

Diamond Coating Techs., LLC v. Hyundai Motor Am., No. 8:13-cv-01480-MRP(DFMx), 2014

19

U.S. Dist. LEXIS 156864, at *11 n.2 (C.D. Cal. Aug. 25, 2014) (noting that, before the Supreme

20

Court’s decision in Nautilus, “it seemed appropriate to resolve indefiniteness at claim construction

21

because the standard [set by the Federal Circuit] was whether a claim term was amenable to

22

construction and whether this construction was insolubly ambiguous”; nevertheless, still

23

concluding that indefiniteness could be addressed at claim construction post-Nautilus because a

24

term that is not amenable to construction “will not meet the ‘reasonable certainty’ standard [laid

25

out in Nautilus]” and because “the factual underpinnings involved in claim construction are

26

similar to the factual underpinnings involved in indefiniteness inquiries”).

27
28

In the instant case, the Court finds that, given the specific nature of Corning’s
indefiniteness argument (see below), the issue may be decided at claim construction. As noted
29

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 30 of 41

1

above, claim 9 provides as follows: “The method of claim 8 wherein the second key performance

2

indicator related to the capacity for the number of satisfied users is a number of users having a

3

capacity above a predetermined threshold capacity [i.e., targeted service bit rate].” ‘261 patent,

4

claim 9. According to Corning, claim 9 fails to inform, with reasonable certainty, those skilled in

5

the art about the scope of the invention because it is, in essence, a nonsensical claim. The gist of

6

Corning’s argument is as follows:

7

•

The second KPI is KPICSU (capacity for the number of satisfied users).

8

•

Under claim 9, KPICSU is equated with KPISU (the number of satisfied users), i.e.,
the first KPI.

9
10

•

In other words, a literal reading of claim 9 is that the “second key performance

United States District Court
Northern District of California

11

indicator . . . is a number of users having a capacity above [a targeted service bit

12

rate].” ‘264 patent, claim 9 (emphasis added).

13

In response, Dali argues that claim 9 does not equate the second KPI with the first KPI.

14

Rather, under claim 9, “a number of users having a capacity above a [targeted service bit rate”

15

simply modifies, or limits, the preceding phrase “the number of satisfied users.” See Op. Br. at 19.

16

Dali adds that this is exactly what the specification teaches. Below is an excerpt from the

17

specification that discusses the second KPI.

18
19
20
21
22
23
24
25
26
27

’261 patent, col. 10, ll. 30-43 (Formula No. 17). As indicated by the KPICSU equation above,

28
30

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 31 of 41

1

satisfied users are a part of that equation. And satisfied users are those who exceed the targeted

2

service bit rate:

3
4
5
6
7
8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19

‘261 patent, col. 10, ll. 4-29 (Formula No. 16).
Dali’s position is stronger than Corning’s. That is, although Corning’s position might be

20
21

plausible if one were to consider claim 9 in a vacuum, the specification itself makes clear that

22

there is no equating of the first and second KPIs. Claim 9 is not indefinite.

23

///

24

///

25

///

26

///

27

///

28

///
31

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 32 of 41

1

G.

“the predetermined threshold capacity is defined by a predetermined threshold bit rate”
(‘261 patent, claim 10)

2
3
4

Dali’s Proposed

Corning’s Proposed

5

Construction

Construction

Court’s Construction

6

the predetermined threshold capacity is defined by a predetermined threshold bit rate”

7

(‘261 patent, claim 10)

8

plain and ordinary meaning

not indefinite; the issue of

description

9

indefinite; lacks written

written description is deferred

10
The above KPI term is found in claim 10 of the ‘261 patent. Claim 10 provides as follows:

United States District Court
Northern District of California

11
12

“The method of claim 9 wherein the predetermined threshold capacity is defined by a

13

predetermined threshold bit rate.” ‘261 patent, claim 10 (emphasis added).

14

Both parties agree that their dispute here mirrors that above for claim 9. Accordingly, the

15

Court’s analysis above is equally applicable here.

16

H.

“a differential between a reference carrier and one or more carriers (‘261 patent, claim 2)

17
18

Dali’s Proposed

Corning’s Proposed

19

Construction

Construction

Court’s Construction

20

“a differential between a reference carrier and one or more carriers

21

(‘261 patent, claim 2)

22

the difference between one

indefinite; lacks written

both the issue of

23

carrier and another carrier

description

indefiniteness and the issue of

24

written description are

25

deferred

26
27
28

Claim 2 of the ‘261 patent is a dependent claim, specifically, a claim dependent on claim 1.
Claim 1 provides as follows:
32

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 33 of 41

1

A method of determining a transmission power of a digital remote
unit (DRU) in a distributed antenna system (DAS), the method
comprising:

2
3

a) Setting a transmission power level for the DRU;

4

b) Determining a key performance indicator related to a number
of satisfied users at the transmission power;

5

c) Iteratively adjusting a transmission power level for the DRU
to increase the key performance indicator related to the
number of satisfied users; and

6
7

d) Setting the transmission power level for the DRU at an
iterated power level.

9

‘261 patent, claim 1. Claim 2 in turn provides: “The method of claim 1 wherein the transmission

10

power comprises a differential between a reference carrier and one or more carriers.” ‘261

11

United States District Court
Northern District of California

8

patent, claim 2 (emphasis added). According to Corning, claim 2 is indefinite and lacks written

12

description.

13

As above, the Court focuses on the issue of indefiniteness and declines to address written

14

description. In its papers, Corning contends that claim 2 is indefinite because a person of skill in

15

art would not understand, e.g.,

16

•

“what the power differential is”;

17

•

“how [the power differential] is measured”;

18

•

“what constitutes the reference carrier and the ‘one or more carriers’”;

19

•

“which of the two transmission powers referenced in claim 1 – the initial

20

transmission power in step (a) or the final transmission power in step (d) –

21

comprises ‘a differential between a reference carrier and one or more carriers’”;

22
23
24
25
26
27
28

•

“how a ‘transmission power’ can ‘comprise[] a differential between a reference
carrier and one or more carriers.’”

Resp. Br. at 21-22; see also Proctor Decl. ¶ 49.
In response, Dali argues that a person of skill in the art could determine with reasonable
certainty the scope of claim 2 based on the following part of the ‘261 specification:
Referring to FIG. 4, KPISU is the Key Performance Indicator for
Satisfied Users and KPICSU is the key performance indicator for the
Capacity of Satisfied Users.
is the change in power of the
33

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 34 of 41

carriers. By adjusting the power of the carriers, the number of
satisfied users and the capacity of the satisfied users can be
increased or optimized. . . .

1
2

....

3

Referring to FIG. 1, the method will be applied in relation to the
carriers used in the central antenna (eNB0) of the cell (i.e.,
hexagon). For each cell, the carrier used in the peripheral portions
of the cell will be used as a reference and the other carriers will
have their power set by optimizing the number and capacity of
satisfied users using the algorithm described herein. In some
embodiments, the carriers used in the central antenna that are not
used in the peripheral portions of the cell will have the same power,
providing a single
for the central antenna with the carrier used
in the peripheral portions of the cell providing the reference. In
some implementations, the carriers used only in the central antenna
can have differing powers with the algorithm applied to the carriers
individually (e.g., F1 compared to F3 and F2 compared to F3 for the
rightmost cell in FIG. 1A).

4
5
6
7
8
9
10

United States District Court
Northern District of California

11

‘261 patent, col. 13, ll. 19-24; ‘261 patent, col. 14, ll. 19-25 (emphasis added).
The Court finds that there are questions of fact here – i.e., what a person of skill in the art

12
13

would understand – that make resolution of indefiniteness at claim construction improper. See

14

Nautilus, 572 U.S. at 898-99 (noting that a claim is indefinite when, “read in light of the patent’s

15

specification and prosecution history, [it] fail[s] to inform, with reasonable certainty, those skilled

16

in the art about the scope of the invention”). Based on the excerpt of the specification above, Dali

17

has a basis for contending that (1) the “differential” refers to a difference in power between

18

carriers and that (2) the carriers being compared can include, e.g., the one in the peripheral

19

portions of the cell and the carrier with the central antenna. On the other hand, Corning has raised

20

serious questions about whether the definiteness requirement has been met because claim 2 is not

21

limited to a differential between a reference carrier and one other carrier (i.e., two carriers total)

22

but also covers a differential among three or more carriers. It is not clear how a comparison is

23

made when there are three or more carriers total, as opposed to simply two.9

24

///

25

///

26
27
28

9

Although the Court does not address written description, Corning raised a serious question on
this issue as well. The claim does not explain how transmission power level is to be set when
there are multiple differentials.
34

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 35 of 41

1

I.

“distributing communication frequencies (‘358 patent, claim 7)

2
3

Dali’s Proposed

Corning’s Proposed

4

Construction

Construction

Court’s Construction

5

“distributing communication frequencies”

6

(‘358 patent, claim 7)

7

plain and ordinary meaning

9

if construction is required,

limitation; plain and ordinary

meaning

meaning

“assigning or allocating

11

United States District Court
Northern District of California

10

language in the preamble is a

limitation; plain and ordinary

8

language in the preamble is a

frequencies”

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

The term “distributing communication frequencies” appears in the ‘358 patent. Claim 7 is
a representative claim. It provides as follows:
A method of distributing communication frequencies, the method
providing:
providing a set of communications units;
transmitting and receiving, from a first communications unit of
the set of communications units:
a first set of frequencies characterized by a first frequency
band and a first geographic footprint; and
a second set of frequencies characterized by a second
frequency band different from the first frequency band a
second geographic footprint larger than and at least partially
surrounding the first geographic footprint; and
transmitting, and receiving, from a second communications unit
of the set of communications units:
a third set of frequencies including one or more frequencies
in the first frequency band and a third geographical footprint;
and
a fourth set of frequencies including one or more frequencies
in a third frequency band and a fourth geographical footprint
larger than and at least partially surrounding the third
geographical footprint.
35

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 36 of 41

1

‘358 patent, claim 7 (emphasis added).
The parties have two disputes regarding the above term: (1) whether the term is a claim

2
3

limitation even though in the preamble and (2) if the term is a claim limitation, whether it needs to

4

be construed.

5

On the first issue, Corning argues that the term is a claim limitation even though it is found

6

in the preamble. Corning further argues that Dali is barred from arguing otherwise because, in the

7

parties’ joint claim construction statement (filed back in February 2021), Dali did not dispute

8

Corning’s assertion that the term was a claim limitation even if in the preamble. See Docket No.

9

72-1 (Joint Claim Construction Chart at 5).
The Court agrees with Corning that Dali has waived its argument. Under the Patent Local

10

United States District Court
Northern District of California

11

Rules, the joint claim construction statement is submitted by the parties after the parties have

12

served on each other the infringement and invalidity contentions. See Pat. L.R. 4-1 to -3

13

(discussing exchange of proposed terms for construction, exchange of preliminary claim

14

constructions, and the joint claim constructions statement – all of which comes after service of the

15

invalidity contentions). Allowing Dali to change course now violates the spirit of the Patent Local

16

Rules, which were “designed to require parties to crystallize their theories of the case early in the

17

litigation and to adhere to those theories once they have been disclosed.” Kilopass Tech., Inc. v.

18

Sidense Corp., No. C 10-02066 SI, 2011 U.S. Dist. LEXIS 126837, at *3-4 (N.D. Cal. Nov. 2,

19

2011).

20

But even if the Court were to consider the merits, Corning would still prevail – i.e., its

21

position that “distributing communication frequencies” is a claim limitation is stronger. As noted

22

above, in general, a preamble limits the invention if it recites essential structure or steps, or if it is

23

“necessary to give life, meaning, and vitality” to the claim. Conversely, a preamble is not limiting

24

“where a patentee defines a structurally complete invention in the claim body and uses the

25

preamble only to state a purpose or intended use for the invention.” Catalina Mktg., 289 F.3d at

26

808. In assessing whether a preamble limits claim scope, a court may consider, e.g., the

27

following:

28

•

“[W]hen the preamble is essential to understand limitations or terms in the claim
36

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 37 of 41

body, the preamble limits claim scope.”

1
•

2

“[W]hen reciting additional structure or steps underscored as important by the
specification, the preamble may operate as a claim limitation.”

3
•

4

“[A] preamble generally is not limiting when the claim body describes a

5

structurally complete invention such that deletion of the preamble phrase does not

6

affect the structure or steps of the claimed invention.”
•

7

“[P]reamble language merely extolling benefits or features of the claimed invention

8

does not limit the claim scope without clear reliance on those benefits or features as

9

patentably significant.”
•

10

“[P]reambles describing the use of an invention generally do not limit the claims

United States District Court
Northern District of California

11

because the patentability of apparatus or composition claims depends on the

12

claimed structure, not on the use or purpose of that structure.” “[S]tatements of

13

intended use or asserted benefits in the preamble may, in rare instances, limit

14

apparatus claims, but only if the applicant clearly and unmistakably relied on those

15

uses or benefits to distinguish prior art.”

16

Intri-Plex, 2018 U.S. Dist. 16877, at *7-8 (internal quotation marks omitted).

17

In its papers, Corning argues that the term “distributing communication frequencies” must

18

be deemed a claim limitation because, without that additional limitation, “claim 7 [simply] repeats

19

the well-known, prior art frequency refuse scheme proposed for use in the LTE cellular standard

20

by Ericsson in 2005, which is the same as the reuse scheme shown in FIG. 1C of the ‘358 patent.”

21

Resp. Br. at 24; see also ‘358 patent, FIG. 1C (showing soft frequency reuse, as opposed to hard

22

frequency reuse or fractional frequency reuse). According to Corning, the alleged novelty of the

23

‘358 patent is that it combined soft frequency reuse with a distributed antenna system (DAS) –

24

hence, the phrase “distributing communication frequencies.” See generally ‘358 patent (titled

25

“Method and System for Soft Frequency Reuse in a Distributed Antenna System”) (emphasis

26

added).

27

In response, Dali contends that the term “distributing communication frequencies” is

28

simply “a descriptive name for the steps that the body of claim 7 completely describes.” Op. Br. at
37

Case 3:20-cv-06469-EMC Document 85 Filed 07/19/21 Page 38 of 41

1
2

23 (emphasis added).
The problem with Dali’s position is that nothing in the body of claim 7 ties the invention to

3

a DAS, and a DAS is necessary to give life, meaning, and vitality to the claim. As Corning

4

argues, “[t]he preamble of claim 7 adds the concept of ‘distributing communication frequencies,’

5

which is a function performed in a DAS when radio resource signals are distributed from a DAU

6

to a plurality of DRUs, and it must be construed as a limitation for claim 7 to cover the concept of

7

combining DAS and SFR.” Resp. Br. at 24. That the invention inherently requires a DAS is plain

8

– throughout the specification, a DAS is mentioned, either explicitly (e.g., in the title, in multiple

9

FIGs., in the “Background of the Invention” and “Summary of the Invention”) or implicitly (e.g.,
through reference to DRUs). For example, the following discussion from the specification is

11

United States District Court
Northern District of California

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similar to claim 7.

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FIG. 8 is a simplified flowchart illustrating a method of
implementing soft frequency reuse according to an embodiment of
the present invention. The method 800 includes transmitting and
receiving data in a first geographical area and a first frequency band
(810). The method also includes transmitting and receiving data in a
second geographical area and a second frequency band (812). In an
embodiment, the first geographical area is a central area of a cell
including multiple DRUs and the second geographical area is a
peripheral area of the cell. In another embodiment, the second
geographical area includes and extends to an area larger than the
first geographical area (e.g., an area surrounding the first
geographical area). The method further includes transmitting and
receiving data in a third geographical area and at least a portion of
the first frequency band (814). At least a portion of the frequency
band used for the third geographical area is thus reused in relation to
the first geographical area. The method also includes transmitting
and receiving data in a fourth geographical area and a third
frequency band (816). In an embodiment, the third geographical
area is a central area of a cell including multiple DRUs and the
fourth geographical area is a peripheral area of the cell. In another
embodiment, the fourth geographical area includes and surrounds
the third geographical area.
‘358 patent, col. 18, l. 48-col. 19, l. 4.

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Accordingly, the Court finds the preamble is limiting, whether based on procedural

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grounds (i.e., Dali’s waiver) or because the preamble term is needed in order to give the claim life

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and meaning. The Court need not construe “distributing communication frequencies,” with the

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understanding that “distributing” essentially implicates a DAS.
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J.

“a geographic footprint” (‘358 patent, claims 7, 9-10, 12, 15, 19)

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Dali’s Proposed

Corning’s Proposed

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Construction

Construction

Court’s Construction

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“a geographic footprint”

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(‘358 patent, claims 7, 9-10, 12, 15, 19)

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an area or region near one or

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more DRUs

radio coverage area

radio coverage area

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Finally, the term “a geographic footprint” appears in multiple claims in the ‘358 patent,
including but not limited to claim 7. Claim 7 is a representative claim:
A method of distributing communication frequencies, the method
providing:
providing a set of communications units;
transmitting and receiving, from a first communications unit of the
set of communications units:
a first set of frequencies characterized by a first frequency band
and a first geographic footprint; and
a second set of frequencies characterized by a second frequency
band different from the first frequency band a second geographic
footprint larger than and at least partially surrounding the first
geographic footprint; and
transmitting, and receiving, from a second communications unit of
the set of communications units:
a third set of frequencies including one or more frequencies in
the first frequency band and a third geographical footprint; and
a fourth set of frequencies including one or more frequencies in
a third frequency band and a fourth geographical footprint larger
than and at least partially surrounding the third geographical
footprint.
‘358 patent, claim 7 (emphasis added).
As an initial matter, the Court finds Dali’s proposed construction of “geographic footprint”
flawed because it does not mention the “property associated with the . . . footprints” – i.e., radio
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coverage. Resp. Br. at 24. Given that the parties are asking for a construction that will ultimately

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to be given to the jury, the concept of coverage should be included. (Dali does not fundamentally

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disagree that the property at issue is radio coverage, as opposed to some other property. See, e.g.,

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Op. Br. at 23 (asserting that the footprint “should be defined by the area or region in space . . . that

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DAS operators intend to cover with radio coverage”) (emphasis added).)

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As for Corning’s proposed construction, Dali contends that it is problematic because,
“under [the] proposed construction[,] each ‘geographic footprint’ would always be filled to the

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center, inconsistent with the specification’s descriptions of ‘peripheral’ and ‘surrounding’

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geographic footprints.” Op. Br. at 23. Although it is not clear how simply referring to “radio

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coverage” would convey such to the jury, Corning does assume that a footprint is filled to the

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United States District Court
Northern District of California

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center. See Resp. Br. at 25 (asserting that the specification shows “how a communications unit,

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such as a DRU, generates the claimed geographic footprints shown in FIGS. 1A-1C[;] [a]t bottom,

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the different footprints are created by transmitting different frequencies in different cells at varying

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power levels, as shown in FIGS. 1C-1F”) (emphasis added). That assumption is substantiated by

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the specification:

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Referring to FIGS. 1C-1F, frequencies in the grey frequency band
(~upper 2/3 of the available frequencies) are transmitted/received by
a DRU at a first power level in Cell 1, providing coverage for the
central portion of Cell 1. Frequencies in the horizontal stripes band
are transmitted/received by the DRU at a second power level higher
than the first power level, providing coverage over both the central
portion of Cell 1 as well as the peripheral portions of Cell 1 since
the higher power level results in a larger coverage area.

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‘358 patent, col. 8, ll. 1-9 (emphasis added). Dali has not shown how Corning’s assumption is

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incorrect in light of the above.

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Perhaps recognizing this dilemma , Dali seems to have changed its argument in its reply
brief. In the reply, Dali contends:
Dali’s proposed construction captures that “geographic footprints”
are defined by the system operator as the area or region [intended] to
be covered by a DRU with radio signals. Corning argues
“geographic footprints” should be defined by the area over which
that radio coverage [actually] extends – such that footprints would
change in size and dimension as the power of the radio signals
increases or decreases. Corning’s responsive brief therefore has it
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exactly backwards. Dali does not contest that the coverage area of
radio frequency signs can be adjusted by modifying the power level
used by the DRU. The point of distinction between the parties’
constructions is that under Dali’s proposal the operator would adjust
those power levels to cover the intended “geographic footprint” with
those signals, rather than defining the “geographic footprint” by the
scope of the signals.

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Reply at 14-15 (emphasis added). The difficulty with Dali’s argument is that it is not clear that

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Corning is advocating for what Dali says it is. In any event, Dali’s argument was not brought up

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until reply, which is, as a general matter, improper.

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Accordingly, the Court adopts Corning’s proposed construction for the term “geographic

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footprint” – i.e., “radio coverage area.”

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III.

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Northern District of California

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CONCLUSION

For the foregoing reasons, the Court adopts the constructions specified above.

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IT IS SO ORDERED.

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Dated: July 19, 2021

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______________________________________
EDWARD M. CHEN
United States District Judge

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