Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al

Filing 294

CLAIM CONSTRUCTION ORDER re 176 Signed by Judge Paul S. Grewal on August 19, 2015 (psglc2, COURT STAFF) (Filed on 8/19/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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CORNING OPTICAL COMMUNICATIONS
WIRELESS, LTD.,
Plaintiff,

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v.
SOLID INC., et. al.,

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Defendants.

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER
(Re: Docket No. 176)

In this patent infringement suit, Plaintiff Corning Optical Communications Wireless, Ltd.

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alleges that Defendants SOLiD Inc. and Reach Holdings, LLC (collectively, “SOLiD”) infringe

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U.S. Patent Nos. 5,969,837 and 7,483,504. The parties submitted 14 claim construction disputes

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for resolution by the court. 1 On April 22, 2015, the court held a claim construction hearing and the

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same day issued a summary construction order. 2 At that time, the court explained that a more

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complete order would follow providing the court’s reasoning. 3 The court now does just that.

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I.

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This case is about distributed antenna system networks that improve wireless coverage in

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The parties also stipulated to the construction of three terms. See Docket No. 146 at 1–2.

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See Docket Nos. 198, 199.

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See Docket No. 198 at 3.

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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buildings and other large structures.
The ’837 patent was filed on July 1, 1997 and issued on October 19, 1999. 4 The ’837

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patent describes a DAS system which uses a single optical fiber “simultaneously for a number of

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wireless communications systems.” 5 Figure 1 of the ’837 patent depicts a “typical system [in

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which] a plurality of wireless network services, such as PCS, GSM and other wireless telephone

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and radio services as well as paging services, each communicate via an appropriate antenna (not

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shown) with one or more multi-system stations:” 6

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United States District Court
For the Northern District of California

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Figure 1 shows a base unit (10) “which communicates with each of the required wireless

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network services” via “fiberoptic cables 16 to a plurality of remote units 20.” 7 The base station

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combines the wireless signals into a multiplexed RF, converts the RF signal to an optical signal,

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and sends to optical signal to the remote unit. 8 Each remote unit receives the optical signal

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See Docket No. 177-1 at 1.

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Id. at col.1 ll.43-46.

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Id. at col.3 ll.36-41.

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Id. at col.3 ll.52-58.

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See Id.
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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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transmitted via the fiberoptic cable, converts the optical signal to RF, splits the RF signal, and then

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transmits the signal through “individual antennas, such as antennas 30, 28 and 26 for PCS, GSM

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and paging networks respectively.” 9

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Claim 1 of the ’837 patent requires:

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1. A communications station comprising:
a base unit comprising:
a communications interface for communicating with plural wireless
communications networks;

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wherein the plural wireless communications networks comprise at least
two communications networks selected from the group consisting of
cellular telephone networks cordless telephones, wide area data networks
wireless local area networks, personal communications systems, personal
communications networks, paging/messaging networks and satellite
mobile systems;

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United States District Court
For the Northern District of California

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a received communications combiner for combining received analog
communications signals received from said plural wireless
communications networks into a single radio frequency analog output;

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a transmit communications splitter for splitting previously combined
transmit analog communications signals to be transmitted to said plural
wireless communications networks into plural radio frequency analog
outputs;

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at least one fiberoptic transmitter receiving said single radio frequency
analog output and providing a corresponding optical output; and

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at least one fiberoptic receiver receiving an optical input and providing an
RF analog output containing previously combined transmit analog
communications signals;

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a plurality of remote units, each comprising:
plural antennas for communicating with communicators along plural
wireless communications networks;

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a received communications splitter for splitting previously combined
received analog communications signals from said base unit and supplying
them to said plural antennas;

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a transmit communications combiner for combining transmit analog
communications signals from said plural antennas into a combined radio

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Id. at col.3 ll.62-67.
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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

frequency analog output;

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a fiberoptic transmitter receiving said combined radio frequency analog
output and providing a corresponding optical output; and

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a fiberoptic receiver receiving an optical input and providing an RF analog
output to said received communications splitter containing previously
received transmit analog communications signals;

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a first optical fiber connecting each fiberoptic transmitter of said base unit
with a corresponding fiberoptic receiver in a corresponding remote unit; and

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a second optical fiber connecting each fiberoptic transmitter of a remote unit
with a corresponding fiberoptic receiver in said base unit; and

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wherein a low frequency control signal is multiplexed by said
communications interface onto said optical fiber for providing loop back
alarm status of each remote unit and for providing control signals thereto,
which control amplifier gain and balance thereof. 10

United States District Court
For the Northern District of California

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The ’504 patent was filed on February 6, 2008 and issued on January 27, 2009. 11 The ’504

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patent discloses “methods and systems for carrying different signals required for MIMO [multiple

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input multiple output] communication using a single coaxial cable between two endpoints of a

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DAS, e.g. between a distribution point and each of the antenna locations.” 12 Figure 2 of the ’504

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patent is a schematic representation of a DAS system using a single coaxial cable:

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Id. at col.6 l.17-col.7 l.5.

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See Docket No. 177-2 at 1.

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Id. at col.1 ll.62-66.

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CLAIM CONSTRUCTION ORDER

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Figure 2 shows three services (Service A, Service B, and Service C) distributed from

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service combiner (210) to antenna arrays (208) in N remote locations. 13 A remote unit (206) with

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antenna array (208) serves each remote location. 14 “All signals of the three antennas, of all

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services, in both directions (Forward and Reverse) between a Master unit 202 and Remote unit

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206, are transferred (‘propagated’) via a single coaxial cable 204.” 15

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Claim 1 of the ’504 patent requires:

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1. A method for propagating multiple input multiple output (MIMO) over a
distributed antenna system (DAS) network, comprising the steps of:
a) providing a plurality n of original MIMO signals;

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b) at a first endpoint of the DAS network, frequency shifting n−1 of the MIMO
signals into signals with n−1 separate frequencies, with one MIMO signal left
un-shifted in frequency;

United States District Court
For the Northern District of California

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c) propagating the n−1 frequency shifted signals and the un-shifted frequency
signal together over a single coaxial cable extending for at least part of a path
from the first endpoint to a second endpoint of the DAS network; and

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d) at the second endpoint, reconstructing the original MIMO signals. 16

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Following the Markman hearing held in this case, the court construed the disputed claim

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terms as follows: 17
CLAIM TERM/PHRASE

CONSTRUCTION

’837

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PATENT
NO.

“[remote unit comprising] plural
antennas for communicating with
communicators along plural wireless
communications networks”

“two or more antennas for sending and/or
receiving wireless signals to/from
communications devices over the plural
wireless communications networks”

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Id. at col.4 ll.22-35.

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Id.

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Id. col.4 ll.29-32.

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Id. col.10 ll.8-22.

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See Docket No. 198.

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

’837

“wherein a low frequency control signal
is multiplexed by said communications
interface onto said optical fiber”

’837

“wherein a low frequency data signal is
multiplexed by said communications
interface to a microprocessor”

’837

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“fiberoptic transmitter receiving said
[single/combined] radio frequency
analog output and providing a
corresponding optical output”

’837

Plain and ordinary meaning
“fiberoptic receiver receiving an optical
input and providing an RF analog output”

’837

“soft limiter for substantially preventing
distortion due to an inadvertent increase
in communication power”

“device(s) and/or circuitry for reducing a
signal’s power without substantially
distorting the information conveyed by
the signal”

’837

“wherein a single duplex cable
interconnects each of said antennas with
said communications interface”

“wherein a single cable that allows
transmission in both directions
interconnects each of said antennas with
said communications interface”

’504

“multiple input multiple output (MIMO)
signals”

“multiple signals that have overlapping
frequency spectrums and that are
transmitted and/or received by separate
antennas with overlapping coverage areas
and that carry a different data stream”

’504

“endpoint [of a DAS network]”

“(1) antenna location [of a DAS network]
communicating with end users (“antenna
endpoint”), or (2) distribution location
[of a DAS network] where signals are
received from a radio service(s) source
and processed signals are distributed to at
least one antenna location (“distribution
endpoint”)”

’504

“frequency shifting n-1 of the MIMO
signals into signals with n-1 separate
frequencies”

“changing the frequency of n-1 of the
MIMO signals, each to a different
frequency, to create n-1 frequency shifted
signals”

’504

“a single coaxial cable extending for at
least part of a path from the first endpoint
to a second endpoint of the DAS
network”

“a single coaxial cable connected to an
antenna endpoint and extending for at
least part of a path to a distribution
endpoint of the DAS network, for
carrying both uplink and downlink
signals”

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United States District Court
For the Northern District of California

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

“a low frequency control signal is a
signal used to convey control information
and having a lower frequency than the
analog communications signals; the
communications interface includes the
device(s) and/or circuitry that
multiplex(es) the low frequency control
signal with another signal to be
transmitted on the optical fiber”
“a low frequency data signal is a signal
used to convey data and having a lower
frequency than the analog
communications signals; the
communications interface includes the
device(s) and/or circuitry that
multiplex(es) the low frequency data
signal with another signal to be
transmitted to a microprocessor”
Plain and ordinary meaning

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’504

“at the second endpoint, reconstructing
the original MIMO signals”

“at the second endpoint, constructing a
replica of the original MIMO signals”

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’504

“providing a plurality n of original
MIMO signals”

“providing a number (n) of MIMO
signals, where n is two or more”

’504

“providing a plurality of MIMO signals
belonging to a plurality of services”

“providing two or more MIMO signals
from each of two or more services”

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II.

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This court has jurisdiction under 28 U.S.C. §§ 1331 and 1338. The parties further

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consented to the jurisdiction of the undersigned magistrate judge under 28 U.S.C. § 636(c) and

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Fed. R. Civ. P. 72(a).
Ten years after the Federal Circuit’s seminal Phillips decision, 18 the canons of claim

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United States District Court
For the Northern District of California

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construction are now well-known—if not perfectly understood—by both parties and courts. “To

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construe a claim term, the trial court must determine the meaning of any disputed words from the

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perspective of one of ordinary skill in the pertinent art at the time of filing.” 19 This requires a

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careful review of the intrinsic record comprised of the claim terms, written description and

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prosecution history of the patent. 20 While claim terms “are generally given their ordinary and

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customary meaning,” the claims themselves and the context in which the terms appear “provide

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substantial guidance as to the meaning of particular claim terms.” Indeed, a patent’s specification

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“is always highly relevant to the claim construction analysis.” 21 Claims “must be read in view of

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the specification, of which they are part.” 22 Although the patent’s prosecution history “lacks the

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clarity of the specification and thus is less useful for claim construction purposes,” it “can often

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inform the meaning of the claim language by demonstrating how the inventor understood the

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See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).

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Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008).

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See id. (“To construe a claim term, the trial court must determine the meaning of any disputed
words from the perspective of one of ordinary skill in the pertinent art at the time of filing.
Intrinsic evidence, that is the claims, written description, and the prosecution history of the patent,
is a more reliable guide to the meaning of a claim term than are extrinsic sources like technical
dictionaries, treatises, and expert testimony.”) (citing Phillips, 415 F.3d at 1312).

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Phillips, 415 F.3d at 1312–15.

Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995); see also Ultimax
Cement Mfg. Corp v. CTS Cement Mfg. Corp., 587 F. 3d 1339, 1347 (Fed. Cir. 2009).
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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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invention and whether the inventor limited the invention in the course of prosecution, making the

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claim scope narrower than it would otherwise be.” 23 The court also has the discretion to consider

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extrinsic evidence, including dictionaries, learned treatises and testimony from experts and

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inventors. 24 Such evidence, however, is “less significant than the intrinsic record in determining

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the legally operative meaning of claim language.” 25

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A patent applicant must “particularly point[ ] out and distinctly claim[ ] the subject matter

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which the applicant regards as his invention.” 26 “[A] patent is invalid for indefiniteness if its

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claims, read in light of the specification delineating the patent, and the prosecution history, fail to

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inform, with reasonable certainty, those skilled in the art about the scope of the invention.” 27 The

United States District Court
For the Northern District of California

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definiteness standard requires “clear notice of what is claimed, thereby appris[ing] the public of

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what is still open to them.” 28 Therefore, “a patent does not satisfy the definiteness requirement of §

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112 merely because ‘a court can ascribe some meaning to a patent’s claims.’” 29 “The claims, when

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read in light of the specification and the prosecution history, must provide objective boundaries for

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those of skill in the art.” 30

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Phillips, 415 F.3d at 1317 (internal quotations omitted).

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See id. (“Although we have emphasized the importance of intrinsic evidence in claim
construction, we have also authorized district courts to rely on extrinsic evidence, which ‘consists
of all evidence external to the patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises.’”) (quoting Markman, 52 F.3d at 980).
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Id. (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004))
(internal quotations and additional citations omitted).
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35 U.S.C. § 112(b). The asserted patents were filed before the effective date of the Leahy Smith
America Invents Act (“AIA”), which applies to patent applications filed on or after September 16,
2012. Therefore, all citations to § 112 refer to the pre-AIA statute, which contains paragraph
numbers rather than lettered subsections.

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Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).

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Id. at 2129.

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29

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Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (quoting Nautilus,
134 S. Ct. at 2130).
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Interval Licensing, 766 F.3d at 1371.
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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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III.

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The parties request construction of a total of seven claim terms as to the ’837 patent. The
court construes the terms as follows.

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A. Issue #1: “plural antennas for communicating with communicators along plural
wireless communications networks”

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CLAIM TERM #1

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“plural antennas for communicating with communicators along plural wireless communications
networks”

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United States District Court
For the Northern District of California

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Corning’s Preferred Construction

SOLiD’s Preferred Construction

“two or more antennas for sending and/or
receiving wireless signals to/from
communications devices over the plural wireless
communications networks”

Indefinite as to “communicators.”
Alternatively, “two or more antennas for
communicating with communicators, wherein
one antenna corresponds to each selected
wireless communications network”

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CONSTRUCTION

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“two or more antennas for sending and/or receiving wireless signals to/from communications
devices over the plural wireless communications networks”

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The term “plural antennas for communicating with communicators along plural wireless

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communications networks” appears in each independent claim of the ’837 patent (claims 1, 3, 5,

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and 7). The claims recite a “plurality of remote units” each comprising “plural antennas for

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communicating with communicators along plural wireless communications networks.” 31
The parties raise two disputes as to the plural antennas. First, SOLiD contends that the term

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“communicators” is indefinite. Second, SOLiD seeks to limit the term to provide that one antenna

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must correspond with each wireless network.
The term “communicators” is not indefinite. SOLiD contends that the term

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“communicators” is indefinite because “it may refer either to humans or to devices.” 32 SOLiD

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cites to a dictionary definition of “communicators” which suggests that, in Great Britain, a

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Docket No. 177-1 at col.6 ll.44-47.

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Docket No. 188 at 5.

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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“communicator” is a “name for a telebusiness agent. A communicator is called a telemarketer in

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North America.” 33 SOLiD also argues that Figure 1 of the ’837 patent shows that both people and

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devices can be “communicators.”

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SOLiD’s argument is not persuasive. The term “communicators” clearly refers to devices,

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not humans. First, the specification of the ’837 patent discusses sending and receiving wireless

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signals to “subscriber units such as cellular telephones 32 and pagers 34.” 34 The ’837 patent never

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suggests that humans could send and receive wireless signals. Second, while SOLiD’s dictionary

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suggests that a communicator is a British term for telemarketer, the ’837 patent obviously is not

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claiming telemarketers communicating with antennas. 35 One of ordinary skill in the art would

United States District Court
For the Northern District of California

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understand with reasonable certainty that “communicators” are devices.

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As such, Corning’s substitution of “communications devices” is appropriate to capture the

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scope of “communicators.” The ’837 patent discloses pagers and cellphones as exemplary devices

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but is not limited to those devices. 36 Accordingly, the phrase “communications devices” would

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cover devices that wirelessly communicate with antennas.

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As to the second dispute, the claims are not limited to a one-antenna-per-network

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embodiment. SOLiD proposes a construction that “require[s] this 1 to 1 correspondence that in the

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remote unit there be effectively a dedicated antenna for each network.” 37 Corning responds that

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the meaning of the term is not so limited and could encompass remote units that contain antennas

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that service more than one network, or multiple antennas per network.

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Turning first to the claim language, nothing in the claims explicitly requires a one-to-one

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correspondence between networks and antennas. SOLiD argues that such a correspondence is

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required by implication because the base unit and remote unit “mirror” each other. 38 SOLiD points

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Docket No. 177-3 at 4.

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Docket No. 177-1 at col.4 ll.7-9.

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See Docket No. 177-3.

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See Docket No. 177-1 at col.4 ll.7-8.

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Docket. No. 201 at 58:18-21.

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See Docket. No. 188 at 6.
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Case No. 5:14-cv-03750-PSG
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out that the “base unit” comprises “a communications interface for communicating with plural

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wireless communications networks,” and the “remote units” comprise “plural antennas for

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communicating . . . along plural wireless communications networks.” 39 The claims also require a

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“splitter” and a “combiner” for splitting/combining “communications signals received from said

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plural wireless communications networks.” 40 SOLiD concludes that “unless separate network

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signals are supplied to separate antennas (not corresponding to other networks), a person of

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ordinary skill in the art would conclude that the recited ‘splitter’ ‘combiner’ [sic] make no

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technical sense.” 41
Although the claims certainly could work in a one-network-per-antenna configuration, there

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United States District Court
For the Northern District of California

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is no one-to-one requirement in the ’837 Patent. The inventions might also work in a two-network-

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per-antenna, or one-network-per-two-antenna, configuration. For example, each remote unit could

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have two GSM antennas, or each remote unit could have a combination pager/satellite antenna.

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Nothing in the claims requires that each wireless communications network signal be sent to one,

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and only one, antenna. Indeed, the “splitter” in the remote unit simply “suppl[ies]” the

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communications signals to the antennas. The claims say nothing about directing each signal to

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only one antenna.

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Finding that the claims do not limit the invention to a one-antenna-per-network

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embodiment, the court next looks to the specification of the ’837 patent. The specification

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discloses a preferred embodiment of “a typical system” with “PCS, GSM and other wireless

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telephone and radio services as well as paging services, each communicat[ing] via an appropriate

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antenna.” 42 Figure 2 shows a remote unit with three antennas “for PCS, GSM and paging networks

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respectively.” 43 The preferred embodiment thus supports SOLiD’s construction. But the

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See e.g., Docket No. 177-1 at col.6 ll.18-20; col.6 ll.44-47.

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Id. at col.6 ll.17-50.

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Docket No. 188 at 6.

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Docket No. 177-1 at col.3 ll.36-40.

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Id. at col. 3 l.66.

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specification does not indicate that its embodiments are limiting and instead concludes with the

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typical boilerplate language to the effect that “[i]t will be appreciated by persons skilled in the art

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that the present invention is not limited by what has been particularly shown and described

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hereinabove.” 44 Indeed, “it is improper to read limitations from a preferred embodiment described

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in the specification—even if it is the only embodiment—into the claims absent a clear indication in

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the intrinsic record that the patentee intended the claims to be so limited.” 45
Finally, SOLiD makes a passing reference to the ’837 patent’s prosecution history. 46 In

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discussing a prior art reference, the patent examiner stated that “[i]t is inherent that the [wireless

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communications] signals are combined and split in order to be transmitted and received by

United States District Court
For the Northern District of California

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different antennas . . . In that [the prior art reference] uses different antennas for the different types

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of signals, it would have been obvious to use different frequencies for the different signals in order

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to provide plural signals without interference.” 47 It is not clear how this conclusory analysis could

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limit the claims. “Unless altering claim language to escape an examiner rejection, a patent

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applicant only limits claims during prosecution by clearly disavowing claim coverage.” 48 Here, the

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examiner’s characterization of the prior art does not constitute an explicit disavowal of claim scope

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as required to limit claim terms beyond their plain and ordinary meaning.

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Having considered the claim language, specification and prosecution history relating to the

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term “plural antennas for communicating with communicators along plural wireless

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communications networks,” the court adopts the construction supplied by Corning: “two or more

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Id. at col.6 ll.11-13.

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Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004); Prima Tek II, L.L.C.
v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003) (“the mere fact that the patent drawings
depict a particular embodiment of the patent does not operate to limit the claims to that specific
configuration.”).

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46

See Docket No. 188 at 7 n.9.

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Docket No. 189-4 at 2.

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48

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York Products, Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1575
(Fed.Cir.1996).
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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

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antennas for sending and/or receiving wireless signals to/from communications devices over the

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plural wireless communications networks.”

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B. Issue #2: The “Low Frequency” Terms

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CLAIM TERM #2

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“wherein a low frequency control signal is multiplexed by said communications interface onto said
optical fiber”

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United States District Court
For the Northern District of California

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Corning’s Preferred Construction
“a low frequency control signal is a signal used
to convey control information and having a
lower frequency than the analog
communications signals; the communications
interface includes the device(s) and/or circuitry
that multiplex(es) the low frequency control
signal with another signal to be transmitted on
the optical fiber”

SOLiD’s Preferred Construction
Indefinite as to “low frequency control signal”
Alternatively, “wherein the communications
interface actually multiplexes onto the optical
fiber a control signal having frequency on the
order of 10KHz”

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CONSTRUCTION

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“a low frequency control signal is a signal used to convey control information and having a lower
frequency than the analog communications signals; the communications interface includes the
device(s) and/or circuitry that multiplex(es) the low frequency control signal with another signal to
be transmitted on the optical fiber”

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CLAIM TERM #3
“wherein a low frequency data signal is multiplexed by said communications interface to a
microprocessor”

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Corning’s Preferred Construction
“a low frequency data signal is a signal used to
convey data and having a lower frequency than
the analog communications signals; the
communications interface includes the device(s)
and/or circuitry that multiplex(es) the low
frequency data signal with another signal to be
transmitted to a microprocessor.”

SOLiD’s Preferred Construction
Indefinite as to “low frequency data signal”
Alternatively, “wherein the communications
interface actually multiplexes to a
microprocessor a data signal having a rate on
the order of 10Kbit/sec.”

23

CONSTRUCTION

24

“a low frequency data signal is a signal used to convey data and having a lower frequency than the
analog communications signals; the communications interface includes the device(s) and/or
circuitry that multiplex(es) the low frequency data signal with another signal to be transmitted to a
microprocessor.”

25
26
27
28

The term “wherein a low frequency control signal is multiplexed by said communications
interface onto said optical fiber” appears in claim 1 of the ’837 patent. Claim 1 recites a
13
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

“communications station” comprising a base unit and a plurality of remote units connected by an

2

optical fiber, “wherein a low frequency control signal is multiplexed by said communications

3

interface onto said optical fiber for providing loop back alarm status of each remote unit and for

4

providing control signals thereto, which control amplifier gain and balance thereof.” 49

5

The term “wherein a low frequency data signal is multiplexed by said communications

6

interface to a microprocessor” appears in claim 3 of the ’837 patent. Claim 3 recites a

7

“communications station” comprising a base unit and a plurality of remote units connected by an

8

optical fiber, “wherein a low frequency data signal is multiplexed by said communications

9

interface to a microprocessor for providing loop back alarm status of each remote unit and for

United States District Court
For the Northern District of California

10

providing control signals thereto, which control amplifier gain and balance thereof.” 50

11

The parties raise two disputes. First, SOLiD contends that “low frequency control signal”

12

is an indefinite term of degree. Second, the parties disputes whether “low frequency” means “on

13

the order of [10KHz or 10Kbit/sec]” (SOLiD’s proposal) or “having a lower frequency than the

14

analog communications signals” (Corning’s proposal). The parties do not present any argument

15

specific to the “low frequency data signal” versus the “low frequency control signal.” 51
As to the first dispute, “low frequency control signal” is not indefinite. 52 SOLiD’s expert

16
17

Dr. Acampora may believe that “a person of ordinary skill in the art reviewing the ’837 patent

18

would not have been able to give this term a practical meaning.” 53 But to accept this would be to

19

accept that all terms of degree, here “low”, are indefinite under Nautilus. 54 That is not the case. As

20

the Federal Circuit has explained:

21
22
49

Docket No. 177-1 at col. 7 ll.1-5.

50

Docket No. 177-1 at col. 7 ll.60-64.

51

See Docket No. 176 at 11; Docket No. 188 at 8-10.

52

See Docket No. 188 at 9.

53

Docket No. 189-3 at ¶ 72.

54

See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).

23
24
25
26
27
28

14
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

We do not understand the Supreme Court to have implied in Nautilus, and we do
not hold today, that terms of degree are inherently indefinite. Claim language
employing terms of degree has long been found definite where it provided enough
certainty to one of skill in the art when read in the context of the invention. 55

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10

Here, when read in the context of the invention, one of ordinary skill in the art could ascertain, with
reasonable certainty, the meaning of “low frequency control signal.”
First, claim 1 provides that “a single radio frequency analog output” is converted to a
“corresponding optical output” that is then transmitted to the remote units. 56 As the “single radio
frequency analog output” and the “low frequency control signal” are the only two claimed signals
being sent to the remote units in the optical output, the control signal is clearly of a lower
frequency than the RF analog output.
Claim 1 of the ’837 patent also ascribes particular functions to the low frequency control

11
12
13
14
15
16
17
18
19

signal, giving further context to the term. Specifically, the “low frequency control signal” must
perform two functions: (1) provide “loop back alarm status” to the remote units and (2) provide
“control signals” to the remote units. 57 The combined communications and control signal is sent to
the remote unit via the optical fiber, and then the remote unit must split the communications signals
from the control signal and transmit the communications signals via the remote units’ antennae. 58
One of ordinary skill in the art therefore would recognize that the control signal is defined with
reference to the RF analog output and that the control signal must be sufficiently distinct from the
RF analog output to perform the claimed functions.
Second, the ’837 patent’s specification provides an example of how the low frequency

20
21

control signal is used in an exemplary embodiment:

22
55

Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).

56

Docket No. 177-1 at col.6. ll.32.

57

Id. at col.7 ll.1-4.

23
24
25
58

26
27
28

See id. at col.6 ll. 17-61 (claiming a remote unit with a “fiberoptic receiver receiving an optical
input and providing an RF analog output to said received communications splitter containing
previously received transmit analog communications signals” and a splitter “for splitting
previously combined received analog communications signals from said base unit and supplying
them to said plural antennas”).
15
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

Microprocessor 200 provides gain control signals to the remote units via a D/A
converter 208 and a loop back signal generator 210. Loop back signal generator
210 preferably operates at approximately 10 KHz. 59

1
2

Figure 3 shows a low frequency control signal, or “pilot tone” of 10KHz, being combined

3
4
5
6
7
8
9

with three network communications signals (Paging, GSM and PCS), for conversion to an optical
output and then transmission to the remote units. 60 Figure 3 also shows exemplary frequencies
ascribed to each communications network: 275-285 MHz for paging; 935-960 MHz for GSM and
1930-1990 MHz for PCS. 61 The parties do not dispute that various wireless networks have wellknown frequency ranges. 62 A 10KHz (or 0.01 MHz) “pilot tone” has a lower frequency than each
of the exemplary wireless communications networks.
Third, SOLiD’s expert recognizes that “low frequency” can be defined by reference to

United States District Court
For the Northern District of California

10
11
12
13
14
15
16

another signal. Acampora opined that a low frequency control signal would be definite if the ’837
patent provided “either a signal frequency or a reference with respect to which a control signal has
‘low frequency.’” 63 As explained above, the ’837 patent does describe the control signal with
reference to the communications network signal, as shown in the language of claim and in Figure
3. Accordingly, the court finds that one of ordinary skill in the art could reasonably ascertain the
meaning of a “low frequency control signal.”
As to the second dispute, “low frequency” is not limited to 10KHz or 10Kbit/sec, as SOLiD

17
18
19
20
21

suggests. As explained above, the court agrees with Corning that a low frequency control signal is
defined with respect to the analog communications signals. The claim language supports this
construction, as the low frequency control signal and the “single radio frequency analog output”
are the only claimed signals that are sent to the remote units. In other words, the only other signal

22
23
59

Id. at col.5 ll.62-65.

60

See Id. at col.4 ll.25-28.

61

See Id. at Fig. 3.

62

See Docket No. 176 at 9.

63

Docket No. 189-3 at ¶ 68.

24
25
26
27
28

16
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

that could possibly serve as a reference to the low frequency control signal is the analog

2

communications signals.

3

In contrast, nothing in the claim language suggests that the control signal is limited to a

4

signal “on the order of 10KHz.” Although the ’837 patent’s specification discloses a 10KHz

5

control signal, 64 that embodiment is only exemplary. “[I]t is improper to read limitations from a

6

preferred embodiment described in the specification—even if it is the only embodiment—into the

7

claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so

8

limited.” 65 SOLiD does not point to any support in the intrinsic record suggesting that the patentee

9

limited the low frequency control signal to a signal on the order of 10KHz. Accordingly, the court

United States District Court
For the Northern District of California

10
11

adopts Corning’s construction.
C.

Issue #3: The “Fiberoptic” Transmitter/Receiver Terms

12
13
14

CLAIM TERM #4
“fiberoptic transmitter receiving said [single/combined] radio frequency analog output and
providing a corresponding optical output”
Corning’s Preferred Construction

15
16

Plain and ordinary meaning

SOLiD’s Preferred Construction
Fiberoptic transmitted actually receiving said
[single/combined] radio frequency analog
output and actually providing a corresponding
optical output

17
18

CONSTRUCTION
19
Plain and ordinary meaning
20
21
22
23
24
25
64

26

See, e.g., Docket No. 177-1 at Figure 3.

65

27
28

Liebel-Flarsheim, 358 F.3d at 913; Prima Tek II, 318 F.3d at 1148 (“the mere fact that the patent
drawings depict a particular embodiment of the patent does not operate to limit the claims to that
specific configuration.”).
17

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

CLAIM TERM #5

1
2

“fiberoptic receiver receiving an optical input and providing an RF analog output”
Corning’s Preferred Construction

3
4

SOLiD’s Preferred Construction

Plain and ordinary meaning

Fiberoptic receiver actually receiving an optical
input and actually providing an RF analog
output

5

CONSTRUCTION

6
7

Plain and ordinary meaning

8
The terms “fiberoptic transmitter receiving said [single/combined] radio frequency analog

9

United States District Court
For the Northern District of California

10
11
12
13
14
15
16
17
18
19

output and providing a corresponding optical output” and “fiberoptic receiver receiving an optical
input and providing an RF analog output” appear in each independent claim of the ’837 patent
(claims 1, 3, 5 and 7). Each claim is a system claim, comprising a base unit and a plurality of
remote units. The claims require a base unit comprising “fiberoptic transmitter receiving said
single radio frequency analog output and providing a corresponding optical output,” and
“fiberoptic receiver receiving said single radio frequency analog output and providing a
corresponding optical output.” The claims also recite a plurality of remote units, each comprising
“a fiberoptic transmitter receiving said combined radio frequency analog output and providing a
corresponding optical output,” as well as “a fiberoptic receiver receiving an optical input and
providing an RF analog output.” 66
SOLiD contends that the terms at issue require performance of a method step, thus

20
21
22

rendering the claims invalid as indefinite under 35 U.S.C. § 112 ¶ 2. 67 The parties do not make any
arguments specific to “fiberoptic transmitter” versus the “fiberoptic receiver.” 68
A single claim that covers both an apparatus and a method of use is indefinite and therefore

23
24
25
26
27
28

invalid under 35 U.S.C. § 112 ¶ 2. 69 In IPXL, the Federal Circuit found that “such a claim is not
66

See, e.g., Docket No. 177-1 at col.6 ll.17-68.

67

See Docket No. 188 at 11.

68

See Docket No. 176 at 8; Docket No. 188 at 10.

69

See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed.Cir.2005).
18

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

sufficiently precise to provide competitors with an accurate determination of the ‘metes and

2

bounds’ of protection involved and is ambiguous and properly rejected under section 112,

3

paragraph 2.” 70

4

The claim invalidated in IPXL read:

5

25. The system of claim 2 [including an input means] wherein the predicted
transaction information comprises both a transaction type and transaction
parameters associated with that transaction type, and the user uses the input
means to either change the predicted transaction information or accept the
displayed transaction type and transaction parameters. 71

6
7
8
9

United States District Court
For the Northern District of California

10
11
12

The Federal Circuit held the claim invalid because “it is unclear whether infringement of
claim 25 occurs when one creates a system that allows the user to change the predicted transaction
information or accept the displayed transaction, or whether infringement occurs when the user
actually uses the input means to change transaction information or uses the input means to accept a
displayed transaction.” 72

13
14
15
16

Here, SOLiD contends that the use of the terms “receiving” and “transmitting” render the
system claims invalid. SOLiD points to Rembrandt Data Technologies, LP v. AOL, LLC, in
arguing that the terms should be interpreted as requiring an affirmative method step. 73 In
Rembrandt, the claim recited:

17
3. A data transmitting device for transmitting signals corresponding to an
incoming stream of bits, comprising:

18
19

first buffer means for partitioning said stream into frames of unequal
number of bits and for separating the bits of each frame into a first group and
a second group of bits;

20
21

fractional encoding means for receiving the first group of bits of each
frame and performing fractional encoding to generate a group of fractionally
encoded bits;

22
23

second buffer means for combining said second group of bits with said
group of fractionally encoded bits to form frames of equal number of bits;

24
70

Id. at 1384 (citation and quotation omitted).

71

Id. (emphasis and brackets in opinion).

72

Id.

73

See Docket No. 188 at 12, citing 641 F.3d 1331 (Fed. Cir. 2011).

25
26
27
28

19
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

trellis encoding means for trellis encoding the frames from said second buffer
means; and

1

transmitting the trellis encoded frames. 74

2
3

The Federal Circuit held that the final limitation, “transmitting the trellis encoded frames,” was a

4

method step and invalidated the claim under IPXL’s reasoning. 75
Rembrandt is distinguishable because the “transmitting” limitation was claimed as an

5
6

affirmative step, rather than as a function that the system or a component thereof could perform.

7

The claims at issue here do not call out affirmative steps that must be taken to infringe, as in

8

IPXL. 76 The transmitting and receiving functions are tied to a specific component of the system,

9

namely either the base unit or the remote unit. Each unit contains a fiberoptic transmitter and a

United States District Court
For the Northern District of California

10

fiberoptic receiver, which perform the specified transmitting and receiving functions. Infringement

11

of the claims occurs when “one creates a system that allows the user [to perform the claimed

12

functions].” 77

13

SOLiD points out that the patentee used phrases like “for combining” and “for splitting” in

14

other parts of the claims, suggesting that the patentee distinguished between functional limitations

15

and method steps. 78 As SOLiD acknowledges, the use of functional language does not

16

automatically convert the claims into method claims. 79 Furthermore, there is no requirement that

17

the patentee use the phrase “for doing something” to properly recite a functional limitation. The

18

Federal Circuit has not adopted a strict test for separating functional language from improper

19
20
21
74

Id. at 1339 (emphasis added).

75

See id.

22
23
76

24

See IPXL, 430 F.3d at 1384 (system claim included limitation that “the user uses the input
means”).

25

77

Id.

26

78

See Docket No. 188 at 11.

27

79

28

See, e.g., Apple, Inc. v. Samsung Elecs. Co., Ltd., 876 F. Supp. 2d 1141, 1150–1151 (N.D. Cal.
2012).
20

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

method-step language. Instead, the Federal Circuit has held that claims reciting a function without

2

any modifiers (like “for”) are valid and merely recite functional limitations. 80

3
4

For example, in Microprocessor Enhancement, the Federal Circuit held that the following
claim was not invalid:

5

7. A pipelined processor for executing instructions comprising:
a conditional execution decision logic pipeline stage, a[t] least one
instruction execution pipeline stage prior to said conditional execution
decision logic pipeline stage;

6
7

at least one condition code;

8

said instructions including branch instructions and non-branch
instructions and including opcodes specifying operations, operand
specifiers specifying operands, and conditional execution specifiers;

9

United States District Court
For the Northern District of California

10

...

11

the conditional execution decision logic pipeline stage, when specified
by the conditional execution specifier, determining the enable-write using
the boolean algebraic evaluation;

12
13

writing means for writing said non-branch instruction results to a
destination specified by the operand specifiers and writing to the condition
code when specified, if enable-write is true; and

14
15

said writing means further for discarding or not writing the non-branch
instruction results and discarding or not writing the condition code, if
enable-write is false. 81

16
17
18
19
20
21

The italicized portion of the apparatus claim includes functional limitations and uses the term
“determining” in contrast to “for determining,” “capable of determining,” or “configured to
determine,” etc. Nonetheless, the Federal Circuit again applied the IPXL and Rembrandt
methodology, emphasizing that the claims place the public on notice of when infringement occurs:
[C]laim 7 does not cover both an apparatus and a method of use of that apparatus.
As this court recently stated, apparatus claims are not necessarily indefinite for
using functional language. Indeed, functional language in a means-plus-function
format is explicitly authorized by statute. Functional language may also be
employed to limit the claims without using the means-plus-function format.

22
23
24
25
26
27

80

See Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir.
2008); see also CSB–Sys. Int'l Inc. v. SAP Am., Inc., 864 F. Supp. 2d 335, 351 (E.D. Pa. 2012)
(“The mere fact that the claims failed to use the terminology ‘capable of’ or ‘intended to’ prior to
the active terms does not amount to a fatal flaw comparable to that in Rembrandt.”).
81

28

Id. at 1371-72 (emphasis added).
21

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

Moreover, where the claim uses functional language but recites insufficient
structure, § 112, ¶ 6 may apply despite the lack of “means for” language.
Notwithstanding these permissible instances, the use of functional language in a
claim may “fail ‘to provide a clear-cut indication of the scope of subject matter
embraced by the claim’ and thus can be indefinite.” Claim 7 of the ’593 patent,
however, is clearly limited to a pipelined processor possessing the recited
structure and capable of performing the recited functions, and is thus not
indefinite under IPXL Holdings. 82

1
2
3
4
5

The same analysis applies here. The independent claims of the ’837 patent require

6
7
8
9

United States District Court
For the Northern District of California

10
11

fiberoptic transmitters and receivers capable of performing certain functions, and do not require the
carrying out of any affirmative method steps. Therefore, the claims are not invalid under § 112.
As neither party proposes a construction beyond the terms’ plain and ordinary meaning, the court
does not further construe them.
D.

Issue #4: “soft limiter”

12

CLAIM TERM #6

13

“soft limiter for substantially preventing distortion due to an inadvertent increase in communication
power”

14
Corning’s Preferred Construction

SOLiD’s Preferred Construction

15
16

“device(s) and/or circuitry for reducing a
signal’s power without substantially distorting
the information conveyed by the signal”

17
18
19

Indefinite, as this claim element is not
connected to any other component of the
claimed communications station
Indefinite as to what type of distortion is
“substantially prevented” and what measure is
applied to determine if such distortion was
“substantially prevented”
Indefinite as to “soft limiter”

20
CONSTRUCTION

21
22

“device(s) and/or circuitry for reducing a signal’s power without substantially distorting the
information conveyed by the signal”

23

The term “soft limiter for substantially preventing distortion due to an inadvertent increase

24

in communication power” appears in claim 7 of the ’837 patent. As with the other independent

25

claims of the ’837 patent, claim 7 recites a base unit and a plurality of remote units connected via

26
27
82

28

Id. 1375 (citations omitted).
22

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

fiberoptic cables. 83 Claim 7 then concludes with the limitation “a soft limiter for substantially

2

preventing distortion due to an inadvertent increase in communication power.”

3

SOLiD argues that the “soft limiter” term is indefinite in three respects: (1) it is not clear

4

whether the soft limiter is part of the base unit or the remote unit; (2) one of ordinary skill would

5

not be able to tell whether distortion was “substantially prevented” and (3) one of ordinary skill

6

would not know how distortion is limited.84 Each of SOLiD’s arguments is essentially an attack on

7

the breadth of the claim, not on the ability of one of ordinary skill to determine the scope of the

8

claim. “[B]readth is not indefiniteness.” 85

9

First, there is no requirement that a claim describe the exact relationship between each

United States District Court
For the Northern District of California

10

component of a device. 86 Here, the soft limiter could indeed be part of the remote unit or the base

11

unit, or simply a part of the claimed “communications station.” The ’837 patent’s specification

12

further supports the interpretation that a soft limiter could be associated with either the base station

13

or the remote unit:

14

Reference is now made to FIG. 4 which illustrates a soft limiter 100,
constructed and operative in accordance with a preferred embodiment of the
present invention. At the uplink, one or more mobile telephones situated very
close to the remote antenna may overdrive laser diode 60. Soft limiter 100 may be
used at the uplink to prevent laser diode 60 from being overdriven, and thereby
prevent non-linear distortion in all of the services distributed. At the downlink,
soft limiter 100 protects any of the wireless services from inadvertently increasing
input power to base unit 10.

15
16
17
18
19

Soft limiter 100 preferably includes a switched attenuator 102, a
comparator 104 and an RF power level detector 106, as shown in FIG. 4. 87

20
21
83

See Docket No. 177-1 at col.8 l.60-col.10 l.23.

84

See Docket No. 188 at 12.

22
23
85

24

SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (quotation
and citation omitted).

25

86

26
27

See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir.
2009) (“Merely claiming broadly” does not “prevent the public from understanding the scope of
the patent.”); SmithKline Beecham, 403 F.3d at 1341 (“[B]readth is not indefiniteness.” (quotation
and citation omitted)).
87

28

Docket No. 177-1 at col.4 ll.42-54.
23

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

The possibility that the soft limiter could be part of the base unit or the remote unit does not render

2

the claim invalid; the claim simply covers both possibilities. 88

3

Second, claim 7 of the ’837 patent and the description of the soft limiter in the specification

4

allow one of ordinary skill in the art to determine, with reasonable certainty, the scope of the

5

claims. 89 The claim itself defines what type of distortion is substantially prevented: “distortion due

6

to an inadvertent increase in communication power.” 90

7

Acampora acknowledges that the ’837 patent explains that the soft limiter “prevent[s] non-

8

linear distortion,” but opines that this description “is not very helpful.” 91 Acampora does,

9

however, accept that “[i]n the context of the ’837 patent, nonlinear distortion relates to an

United States District Court
For the Northern District of California

10

unacceptably large input causing distortion to an output arising from the nonlinear relationship

11

between the input and an output.” 92 He then provides several examples of soft limiters that could

12

substantially prevent non-linear distortion. 93 Although Acampora points to several ways to

13

measure distortion due to an increase in power, the specific method of measuring distortion is not

14

relevant to understanding the scope of the claims. 94

15

Acampora also concludes that “the patent provides no guidance as to the metric of how one

16

may ensure that distortion is ‘substantially prevented.’” 95 But there is no requirement that the term

17

“substantially prevented” be defined with mathematical precision. 96 Because SOLiD and

18

88

19

Ultimax Cement, 587 F.3d at 1352 (“Merely claiming broadly” does not “prevent the public
from understanding the scope of the patent.”); SmithKline Beecham, 403 F.3d at 1341 (“[B]readth
is not indefiniteness.” (quotation and citation omitted)).

20

89

See Nautilus, 134 S. Ct. at 2124.

21

90

Docket No. 177-1 at col.10 ll.21-22.

22

91

Docket No. 189-3 ¶ 96.

23

92

Id. at ¶ 97.

24

93

See id. at ¶¶ 99-102.

25

94

See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575–76 (Fed. Cir. 1986).

26

95

Docket No. 189-3 ¶ 103.

27

96

28

See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010); Nautilus, 134
S.Ct. at 2124.
24
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

Acampora have merely identified issues of claim breadth, the court finds that the term “soft limiter

2

for substantially preventing distortion due to an inadvertent increase in communication power” is

3

not indefinite. The court adopts Corning’s proposed construction.

4

E.

Issue #5: “single duplex cable”

5
6
7

CLAIM TERM #7
“wherein a single duplex cable interconnects each of said antennas with said communications
interface”
Corning’s Preferred Construction

8
9

United States District Court
For the Northern District of California

10

“part of the signal path between the
communications interface and each antenna
includes at least one duplex cable”

11
12
13

SOLiD’s Preferred Construction
Indefinite as to “duplex cable”.
Alternatively, “wherein a single cable that is
operated in bidirectional mode interconnects
each of said antennas with said communications
interface”

CONSTRUCTION

14

“wherein a single cable that allows transmission in both directions interconnects each of said
antennas with said communications interface”

15

The term “wherein a single duplex cable interconnects each of said antennas with said

16

communications interface” appears in claims 2, 4, 6, and 8 of the ’837 patent. Whereas the

17

independent claims recite “first” and “second” optical fibers connecting the base unit and the

18

remote unit, dependent claims 2, 4, 6, and 8 require that “a single duplex cable interconnects each

19

of said antennas with said communications interface.” 97 The “communications interface” is part of

20

the base unit. 98

21

The parties raise two disputes with respect to the term single duplex cable. First, SOLiD

22

contends that the term is indefinite, “because until the cable is operated one cannot tell if a cable—

23

basically a piece of wire or a strand of fiber—is a ‘duplex’ cable.” 99 Second, the parties dispute

24
25

97

26

98

27

See id. col.6 ll.18-20 (claim 1: “a base unit comprising: a communications interface for
communicating with plural wireless communications networks . . .”).
99

28

See, e.g., Docket No. 177-1 at col.7 ll.6-8 (claim 2).

Docket No. 188 at 14.
25

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

whether the cable extends from each antenna to the communications interface, or simply makes up

2

“part of the signal path” between each antenna and the communications interface.

3

As to the first issue, the term “duplex cable” is not indefinite. There is no dispute as to the

4

scope of the term “duplex cable.” Acampora recognizes that a duplex cable must send and receive

5

information. 100 SOLiD nonetheless argues that one cannot determine infringement until the device

6

is operated. This is essentially the same IPXL argument the court rejected above.

7

As to the second issue, the duplex cable indeed extends from each antenna to the

8

communications interface. The claim language resolves this dispute in SOLiD’s favor. Again, the

9

term to be construed is “wherein a single duplex cable interconnects each of said antennas with

United States District Court
For the Northern District of California

10

said communications interface.” There is no suggestion in the claim language or the specification

11

that “interconnects” means something less than the path between two elements. 101 Accordingly,

12

the court gives the term “wherein a single duplex cable interconnects each of said antennas with

13

said communications interface” its plain and ordinary meaning.

14
IV.
15
The parties request construction of a total of seven claim terms as to the ’504 patent. The
16
court construes the terms as follows.
17
A. Issue #1: “MIMO” signals
18
CLAIM TERM #1

19
20

“multiple input multiple output (MIMO) signals”

21

Corning’s Preferred Construction

22
23

“multiple signals that have overlapping
frequency spectrums and that are transmitted
and/or received by separate antennas with
overlapping coverage areas”

SOLiD’s Preferred Construction
“multiple signals having the same or
overlapping spectrum, each signal carrying a
different data stream”

24
25
100

26

See Docket No. 189-3 ¶ 108 (citing Docket No. 177-1 at col.4 ll.9-13).

101

27
28

The court notes that the antenna is disclosed as connected to various circuitry (splitter,
combiner, fiberoptic transmitter, fiberoptic receiver) within the remote unit. See, e.g., Docket No.
177-1 at Fig. 2.
26

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

CONSTRUCTION

1
2
3

“multiple signals that have overlapping frequency spectrums and that are transmitted and/or
received by separate antennas with overlapping coverage areas and that carry a different data
stream”

4
5

The term “multiple input multiple output (MIMO) signals” appears in the sole independent
claim of the ’504 patent. Claim 1 requires:

6

1. A method for propagating multiple input multiple output (MIMO) over a
distributed antenna system (DAS) network, comprising the steps of:

7
8

a) providing a plurality n of original MIMO signals;

9

b) at a first endpoint of the DAS network, frequency shifting n−1 of the MIMO
signals into signals with n−1 separate frequencies, with one MIMO signal left
un-shifted in frequency;

United States District Court
For the Northern District of California

10
11

13

c) propagating the n−1 frequency shifted signals and the un-shifted frequency
signal together over a single coaxial cable extending for at least part of a path
from the first endpoint to a second endpoint of the DAS network; and

14

d) at the second endpoint, reconstructing the original MIMO signals. 102

12

15
16

The parties agree that “MIMO signals” are multiple signals with the same or overlapping
frequency spectrum. 103

17

The parties also agree that MIMO signals are transmitted and/or received by separate

18

antennas with overlapping coverage areas. Acampora explains that “‘MIMO’ is a communication

19

technology that uses multiple antennas at both the transmitter and the receiver ends of a radio link

20

to communicate, in parallel, multiple signals, all of them in the same frequency band, but each

21

carrying a different data stream.” 104 The ’504 patent also explains that “MIMO technology is

22

based on reception and transmission of signals that share the same spectrum, through two or more

23

co-located antennas.” 105

24

102

25

103

26

Docket No. 177-2 at col.10 ll.8-22.

The court notes that an “overlapping” spectrum encompasses signals that have the “same”
spectrum.

104

Docket No. 189-3 ¶ 45.

105

Docket No. 177-2 at col.1 ll.43-45.

27
28

27
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

The parties dispute whether each signal must carry a different data stream. The court

2

agrees with SOLiD that MIMO signals must carry different data streams. The ’504 patent explains

3

that the invention is directed to “[m]ethods and systems for carrying different signals required for

4

MIMO communication.” 106 The ’504 patent further describes MIMO technology as “a technology

5

in which each antenna location includes multiple antennas that process different data streams at the

6

same frequency.” 107 Corning argues that these statements are “true, but not limiting.” 108 But if, as

7

Corning apparently concedes, MIMO technology processes different data streams at the same

8

frequency, then MIMO signals necessarily “have overlapping frequency spectrums and . . . carry a

9

different data stream” as per SOLiD’s proposed construction.

United States District Court
For the Northern District of California

10

Accordingly, because both parties’ proposals include necessary limitations to defining

11

MIMO signals, the court construes the term as “multiple signals that have overlapping frequency

12

spectrums and that are transmitted and/or received by separate antennas with overlapping coverage

13

areas and that carry a different data stream.”

14
B. Issue #2: “endpoint” of a DAS network
15
CLAIM TERM #2

16
17

“endpoint [of a DAS network]”
Corning’s Preferred Construction

18
19

“an end of the DAS network that is associated
with either a master unit or a remote unit”

20
21
22

SOLiD’s Preferred Construction
“(1) antenna location [of a DAS network]
communicating with end users (“antenna
endpoint”), or (2) distribution location [of a
DAS network] where signals are received from
a radio service(s) source and processed signals
are distributed to at least one antenna location
(“distribution endpoint”)”

23
24
25
106

Id. at Abstract (emphasis added).

107

Id. at col.1 ll.42-47 (emphasis added).

108

Docket No. 176 at 16.

26
27
28

28
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

CONSTRUCTION

1
2
3

“(1) antenna location [of a DAS network] communicating with end users (“antenna endpoint”), or
(2) distribution location [of a DAS network] where signals are received from a radio service(s)
source and processed signals are distributed to at least one antenna location (“distribution
endpoint”)”

4
The term “endpoint” of the DAS network appears in claim 1 of the ’504 patent, which

5
6
7
8
9

United States District Court
For the Northern District of California

10

claims a method of propagating MIMO signals between a “first endpoint” and a “second
endpoint.” 109 Dependent claim 3 covers signal propagation in the downlink direction, specifying
that “the first endpoint includes a master unit, wherein the second endpoint includes a remote
unit.” 110 Dependent claim 6 covers an uplink, specifying that “the first endpoint is a remote unit
and wherein the second endpoint is a master unit.” 111
The parties dispute whether the claimed endpoints are limited to an “antenna endpoint” and

11
12
13
14
15
16
17
18
19

a “distribution endpoint,” as SOLiD proposes, or are simply “associated with either a master unit or
a remote unit,” as Corning proposes. SOLiD’s proposal reflects the meaning of the term
“endpoint” as it is used in the ’504 patent.
The court begins by noting that there is actually significant overlap between the two
proposed constructions. 112 Corning’s construction uses the terms “remote unit” and “master unit,”
while SOLiD uses “antenna endpoint” and “distribution endpoint.” Those terms describe the same
components, respectively. Corning’s criticism that SOLiD’s construction improperly imports
structure from the specification therefore is not well-taken; Corning’s construction essentially

20
21
22

109

Docket No. 177-2 at col.10 ll.8-22.

23

110

Id. at col.10 ll.26-28.

24

111

Id. at col.10 ll.43-44.

25

112

26
27
28

See Docket No. 201 at 143:15-21 (The court, addressing Corning’s counsel: “Looking at your
construction and comparing it to the defendant’s[,] your construction makes clear that the end of
the network can be either the end associated with master or the end associated with remote. As I
look at SOLiD’s proposal, it seems they are saying essentially the same thing using different
words.”); id. at 145:3-4 (“So am I really getting much by picking one [construction] over the other
is what I’m trying to figure out here.”).
29

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

describes the same thing as SOLiD’s. 113 Corning admitted as much at the Markman hearing,

2

stating the two constructions “would be fairly close[, but] I’m not sure it’s exactly the same.” 114

3

The specification describes the invention as “methods and systems for carrying different

4

signals required for MIMO communication using a single coaxial cable between two endpoints of a

5

DAS, e.g. between a distribution point and each of the antenna locations.” 115 The “master unit” “is

6

the unit to which the signals of the services are interfaced” and is “connected (directly or

7

indirectly) to the radio equipment which generates the original signals and demodulates the

8

received signals.” 116 The master unit thus is the “distribution point.” Second, the “remote unit” “is

9

the unit to which the antennas are connected.” 117 The “remote unit” therefore is the “antenna

United States District Court
For the Northern District of California

10

locations.” And, “[i]n the terminology used herein, the Master unit is associated with one endpoint

11

while the Remote unit is associated with another endpoint of the DAS network.” 118

12

SOLiD’s construction properly captures how the ’504 patent itselfs describes the two

13

endpoints. Using terms like “master unit” will not assist the jury in applying the claims to the

14

accused products, because a “master unit” is actually less likely to be understood by a lay jury than

15

“endpoint.” Furthermore, it is clear from the specification that a master unit is a distribution

16

endpoint where “where signals are received from a radio service(s) source and processed signals

17

are distributed to at least one antenna location.” 119 Similarly, the specification equates the remote

18

unit and antenna locations. 120 Accordingly, the court adopts SOLiD’s construction.

19
20
113

See Docket No. 176 at 18.

114

Docket No. 201 at 145:12-13.

115

Docket No. 177-2 at col.1 ll.62-67.

116

Id. at col.3 ll.61-62; col.4 ll.10-13.

117

Id. at col.3 ll.62-63.

118

Id. at col.4 ll.5-7.

119

Docket No. 188 at 17.

120

Docket No. 177-2 at col.3 ll.62-63.

21
22
23
24
25
26
27
28

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Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

C. Issue #3: The “plurality n” and “n-1” terms
CLAIM TERM #3

2
3
4
5
6

“frequency shifting n-1 of the MIMO signals into signals with n-1 separate frequencies”
Corning’s Preferred Construction
“changing the frequency of n-1 of the MIMO
signals, each to a different frequency, to create
n-1 frequency shifted signals”

“frequency shifting n-1 (n ≥ 3) of the MIMO
signals into signals with n-1 (n ≥ 3) separate
frequencies”

CONSTRUCTION

7
8

SOLiD’s Preferred Construction

“changing the frequency of n-1 of the MIMO signals, each to a different frequency, to create
n-1 frequency shifted signals”

9
CLAIM TERM #4

United States District Court
For the Northern District of California

10
11

“providing a plurality n of original MIMO signals”

12

Corning’s Preferred Construction

13

“providing a number (n) o MIMO signals,
where n is two or more”

14

SOLiD’s Preferred Construction
“providing a number (n) of MIMO signals,
where n is three or more”

15
CONSTRUCTION
16
“providing a number (n) of MIMO signals, where n is two or more”
17
18
CLAIM TERM #5
19
20
21
22

“providing a plurality of MIMO signals belonging to a plurality of services”
Corning’s Preferred Construction
“providing two or more MIMO signals from
each of two or more services”

23
24
25
26

SOLiD’s Preferred Construction
“providing a plurality of MIMO signals for each
of two or more wireless services”

CONSTRUCTION
“providing two or more MIMO signals from each of two or more services”
The parties dispute whether “plurality n” or “n-1” requires that n be at least two or at least
three. The dispute is relevant to three claim terms found in claims 1 and 2 of the ’504 patent:

27
28

1. A method for propagating multiple input multiple output (MIMO) over a
distributed antenna system (DAS) network, comprising the steps of:
31
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

a) providing a plurality n of original MIMO signals;

1

b) at a first endpoint of the DAS network, frequency shifting n−1 of the
MIMO signals into signals with n−1 separate frequencies, with one MIMO signal
left un-shifted in frequency;

2
3

c) propagating the n−1 frequency shifted signals and the un-shifted
frequency signal together over a single coaxial cable extending for at least part of
a path from the first endpoint to a second endpoint of the DAS network; and

4
5

d) at the second endpoint, reconstructing the original MIMO signals.

6

2. The method of claim 1, wherein the step of providing a plurality of n MIMO
signals includes providing a plurality of MIMO signals belonging to a plurality of
services. 121

7
8

SOLiD argues that n must be three or more; Corning takes the position that n may be two or

9

United States District Court
For the Northern District of California

10
11
12
13
14

more. SOLiD agrees that a “plurality” normally means two or more, but argues that in the context
of the ’504 patent n must be three or more. 122 SOLiD’s argument is apparently grounded in both
the grammar of the claim language and in the ’504 patent’s specification. Ultimately, the court
agrees with Corning that the term “plurality n” should be given its plain and ordinary meaning of
two or more.
SOLiD first argues that “plurality n” is different from “plurality.” 123 The argument does

15
16
17
18
19
20
21
22
23
24

not go far. As SOLiD admits, plurality “ordinarily means two or more.” “n” is well understood to
mean an integer. Accordingly, “plurality n” simply means “an integer of two or more.”
SOLiD next argues that n must be three or more because claim 1 of the ’504 patent recites
“frequency shifting n−1 of the MIMO signals into signals with n−1 separate frequencies, with one
MIMO signal left un-shifted in frequency.” 124 If n=2, then the claim would read “frequency
shifting [1] of the MIMO signals into signals with [1] separate frequencies, with one MIMO signal
left un-shifted in frequency.” SOLiD argues that “1 separate frequencies” is impossible. This is
not persuasive because the n-1 shifted frequencies are separate from the 1 un-shifted frequency,
even if n is only 2.
121

Id. at col.10 ll.8-25.

122

See Docket No. 188 at 23 (“Ordinarily, the term ‘plurality’ means two or more.”).

123

Id.

124

Id. (citing Docket No. 177-2 at col.10 ll.12-15).

25
26
27
28

32
Case No. 5:14-cv-03750-PSG
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1

Finally, SOLiD points out that each embodiment disclosed in the specification includes

2

three input signals. 125 However, the specification does not indicate that its embodiments are

3

limiting. Indeed, “it is improper to read limitations from a preferred embodiment described in the

4

specification—even if it is the only embodiment—into the claims absent a clear indication in the

5

intrinsic record that the patentee intended the claims to be so limited.” 126 Accordingly, the court

6

adopts Corning’s proposed constructions.

7

D. Issue #4: the “single coaxial cable”

8
9

United States District Court
For the Northern District of California

10
11
12
13
14

CLAIM TERM #6
“a single coaxial cable extending for at least part of a path from the first endpoint to a second
endpoint of the DAS network”
Corning’s Preferred Construction
“a coaxial cable used to convey signals over at
least part of a signal path from one endpoint of
the DAS network to another endpoint of the
DAS network”

SOLiD’s Preferred Construction
“a single coaxial cable connected to an antenna
endpoint and extending for at least part of a path
to a distribution endpoint of the DAS network,
for carrying both uplink and downlink signals”

CONSTRUCTION

15

“a single coaxial cable connected to an antenna endpoint and extending for at least part of a path to
a distribution endpoint of the DAS network, for carrying both uplink and downlink signals”

16

The term “a single coaxial cable extending for at least part of a path from the first endpoint

17

to a second endpoint of the DAS network” appears in claim 1 of the ’504 patent. The parties

18

dispute (1) whether the cable must be connected to the antenna endpoint of the DAS network and

19

(2) whether the cable must be used in both the uplink and downlink directions.

20

The ’504 patent readily resolves the first dispute in SOLiD’s favor:

21

A single coaxial cable connected to each Remote unit is used to transfer the
MIMO signal to and from the Remote unit. The coaxial cable is always
connected to each Remote unit. However, in some embodiments, the coaxial
cable does not necessarily extend all the way to the Master unit, but may go first
to a distribution point which is connected through a coaxial or fiber cable to the
Master unit. 127

22
23
24
25

125

26

126

27
28

See Id. (citing Docket No. 177-2 at Figs. 2-6 and 9; col.3 ll.4-12; col.4 ll.44-50).

Liebel-Flarsheim, 358 F.3d at 913; Prima Tek II, 318 F.3d at 1148 (“the mere fact that the
patent drawings depict a particular embodiment of the patent does not operate to limit the claims to
that specific configuration.”).

127

Docket No. 177-2 at col.4 ll.14-21 (emphasis added).
33
Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

Thus, the specification expressly requires that the coaxial cable be connected to the antenna

2

endpoint. 128 The statement above is “not limited to describing a preferred embodiment, but more

3

broadly describes the overall invention,” and disclaims other alternatives. 129 Corning provides no

4

persuasive counterargument.

5
6

As to the second dispute, Corning argues that “nothing in the claim language itself suggests
that the same coaxial cable must be used for both” uplink and downlink. 130

7

Claim 1 recites a method of sending signals from one endpoint of a DAS to another, via “a

8

single coaxial cable.” 131 The phrasing “a single coaxial cable” requires that there be only one cable

9

connecting the two endpoints. The DAS of the ’504 patent necessarily sends signals in both uplink

United States District Court
For the Northern District of California

10

and downlink directions, as the DAS is used to provide wireless communications. 132

11

Finally, the ’504 patent distinguishes the prior art by reference to the single coaxial cable:

12

One problem with trying to implement DAS architectures with MIMO technology
is the requirement to route each of the MIMO signals in a separate coaxial cable
to avoid mutual interference between the signals. This may result in significant
increase in the amount of coaxial cables required and may significantly increase
the cost and complexity of the installation.

13
14
15

Therefore, there is a need for and it would be advantageous to have systems and
methods that supporting implementation of MIMO technology with a
“conventional” DAS architecture, i.e. the use of a single coaxial cable. 133

16
17

It is clear from the claim language and the specification of the ’504 patent that there is only

18
19

one coaxial cable connecting the endpoints of the DAS, and the cable extends from the antenna

20
21

128

22

129

23

As explained above, the “remote unit” is the same as the “antenna endpoint.”

Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1348 (Fed. Cir. 2004); GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014).

130

Docket No. 176 at 22.

131

Docket No. 177-2 at col.10 ll.8-22.

24
25
132

26
27

See id. at col.1 ll.14-17 (“The invention relates generally to wireless communication systems
and services and more particularly to Multiple Input Multiple Output (MIMO) technology applied
to Distributed Antenna Systems (DAS).”).
133

28

Id. at col.1 ll.48-58.
34

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER

1

endpoint at least partway to the master unit. 134 The court therefore adopts SOLiD’s construction of

2

“a single coaxial cable connected to an antenna endpoint and extending for at least part of a path to

3

a distribution endpoint of the DAS network, for carrying both uplink and downlink signals.”

4

E. Issue #5: “reconstructing the original MIMO signals”

5
6

CLAIM TERM #7
“at the second endpoint, reconstructing the original MIMO signals”
Corning’s Preferred Construction

7
8
9

SOLiD’s Preferred Construction

“changing the frequencies of the n-1 frequency
the second
shifted signals back to their original frequencies, “atthe original endpoint, reconstructing a replica
of
MIMO signals”
at an endpoint opposite the first endpoint”
CONSTRUCTION

United States District Court
For the Northern District of California

10

“at the second endpoint, constructing a replica of the original MIMO signals”

11
12
13
14

The term “at the second endpoint, reconstructing the original MIMO signals” appears in
claim 1 of the ’504 patent. Claim 1 discusses “frequency shifting n-1 of the MIMO signals” at a
first endpoint, propagating the signals to a second endpoint, and then “reconstructing the original
MIMO signals.” 135

15
16

The parties dispute whether “reconstruction” is limited to returning to frequency-shifted
signals back to their original frequencies.

17
18
19
20
21
22
23
24

SOLiD’s construction most accurately describes “reconstructing the original MIMO
signals.” Corning argues that the ’504 patent’s specification “describes” reconstruction “as
changing the frequencies of the frequency shifted signals back to their original frequencies.”

136

However, the ’504 patent never limits reconstructing to shifting frequencies. As such, it is
inappropriate to limit the claims to a specific embodiment. 137 SOLiD’s proposed construction, in
contrast, allows for construction of a “potentially time delayed and amplitude scaled” replica of the
134

The court agrees with Corning that SOLiD’s arguments relating to the prosecution history of a
continuation patent are not persuasive. See Docket No. 193 at 13.

25

135

Id. at col.10 ll.8-22.

26

136

Docket No. 176 at 24 (citing Docket No. 177-2 at col. 2 ll. 29-32; col. 5 ll. 28-29; col. 6 ll. 7-8)

27

137

28

See Liebel-Flarsheim, 358 F.3d at 913; Prima Tek II, 318 F.3d at 1148 (“the mere fact that the
patent drawings depict a particular embodiment of the patent does not operate to limit the claims to
that specific configuration.”).
35

Case No. 5:14-cv-03750-PSG
CLAIM CONSTRUCTION ORDER