Apple Inc. v. Qualcomm Incorporated
Filing
501
ORDER Construing Disputed Claim Terms of U.S. Patent Nos. 7,096,021; 7,289,630; 6,556,549; 9,137,822; 6,694,469; 7,095,725 (ECF Nos. 299 , 300 ); and Denying 331 Qualcomm's Motion to Strike Apple's First and Second Amended Invalidity Contentions. Signed by Judge Gonzalo P. Curiel on 5/16/18. (dlg)
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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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IN RE: QUALCOMM LITIGATION,
Case No.: 17-cv-00108-GPC-MDD
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ORDER:
(1) CONSTRUING DISPUTED
CLAIM TERMS OF U.S. PATENT
NOS. 7,096,021; 7,289,630; 6,556,549;
9,137,822; 6,694,469; 7,095,725
[DKT. NOS. 299, 300]
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(2) DENYING QUALCOMM’S
MOTION TO STRIKE APPLE’S
FIRST AND SECOND AMENDED
INVALIDITY CONTENTIONS
[DKT. NO. 331]
Apple, Inc. and the Contract Manufacturers1 seek declarations of non-infringement
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and invalidity as to nine of Qualcomm’s patents (“patents-in-suit”).2 The parties now
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Defendants and Counterclaimants in the pre-consolidation ‘1010 action are Compal Electronics, Inc.
(“Compal”), FIH Mobile Ltd. and Hon Hai Precision Industry Co. (together “Foxconn”), Pegatron
Corporation (“Pegatron”), and Wistron Corporation (“Wistron”) and will be collectively referred to as
the “Contract Manufacturers” or “CM’s.” As Apple and the CMs have brought the same arguments, the
Court will refer to Apple and the CMs claims in shorthand as “Apple’s” Claims.
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This Court previously dismissed nine “Additional Patents-in-Suit” added by Apple and the CMs in the
First Amended Complaint and the Contract Manufacturers’ Counterclaims for a lack of declaratory
judgment jurisdiction. Dkt. No. 167. The Court granted leave to amend, but the parties did not file any
amended pleadings as to the Additional Patents-in-Suit. See id.
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17-cv-00108-GPC-MDD
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seek construction of ten terms used in the claims of the following patents-in-suit: U.S.
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Patent Nos. 7,096,021 (‘021 Patent); 7,289,630 (‘630 Patent); 6,556,549 (‘549 Patent);
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9,137,822 (‘822 Patent); 6,694,469 (‘469 Patent); 7,095,725 (‘725 Patent). On January
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25, 2018, the parties filed their opening claim construction briefs and included a joint
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appendix of common exhibits. Dkt. Nos. 299-300.3 The parties filed responsive claim
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construction briefs on February 8, 2018. Dkt. Nos. 312, 341.4
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The Court held a technology tutorial on March 8, 2018. Dkt. No. 361. The Court
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held a claim construction hearing on March 22, 2018. Dkt. No. 388. The Court ordered
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supplemental briefing regarding the ‘469 and ‘725 patents on March 23, 2018. Dkt. No.
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391. The parties filed their supplemental claim construction briefs on March 29, 2018.
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Dkt. Nos. 400-01. The Court has reviewed the claims, specifications, and other relevant
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evidence, has considered the briefing and arguments of the parties, and provides this
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decision: (1) construing disputed terms of six of the nine patents-in-suit and (2) denying
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Qualcomm’s Motion to Strike Apple’s First and Second Amended Invalidity
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Contentions.
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I.
A.
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Legal Standard
Claim construction is a matter of law to be determined by the court. Teva Pharm.
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CLAIM CONSTRUCTION
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838 (2015); Markman v. Westview Instr., Inc.,
517 U.S. 370, 372 (1996). The purpose of claim construction is for the court to
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The Court refers to Apple’s Opening Construction Brief (Dkt. No. 300) in shortform as “AOCB” and
Qualcomm’s Opening Construction Brief (Dkt. No. 299) as “QOCB.” Responding briefs are referred to
as QRCB (Dkt. No. 312) and ARCB (Dkt. No. 341).
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Apple originally filed its responsive claim construction brief under seal. Dkt. No. 315. The Court
ordered Qualcomm to respond to the motion to seal and directed the parties to meet and confer prior to
the filing of documents designated confidential by the opposing party. Dkt. No. 336. Following this
order, Apple filed a notice to withdraw its motion to seal. Dkt. No. 338. The Court denied as moot
Apple’s motion to seal and ordered Apple to file its brief publically. Dkt. No. 340. Apple filed this nonredacted responsive brief on February 23, 2018. Dkt. No. 341.
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“determin[e] the meaning and scope of the patent claims asserted to be infringed.” O2
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Micro Intern. Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir.
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2008). “It is a bedrock principle of patent law that the claims of a patent define the
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invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp.,
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415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal marks omitted). As such,
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claims are to be construed in a manner that “stays true to the claim language and most
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naturally aligns with the patent’s description of the invention.” Id. at 1316.
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To construe disputed terms, the court first looks to the claims themselves. See
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
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Cir. 2004). Generally, claim language is given its “ordinary and customary meaning,”
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which is “the meaning that the term would have to a person of ordinary skill in the art in
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question at the time of the invention.” Phillips, 415 F.3d at 1312-13. In cases where the
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“ordinary and customary meaning” is clear, claim construction involves “little more than
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the application of the widely accepted meaning of commonly understood words.” Id. at
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1314. In cases where it is not immediately apparent what a person of ordinary skill in the
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art would understand a claim to mean, the court looks to other sources to decipher the
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correct meaning. Id. at 1314. Those sources include intrinsic and extrinsic evidence
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“available to the public that show what a person of skill in the art would have understood
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disputed claim language to mean.” Id. “Importantly, the person of ordinary skill in the
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art is deemed to read the claim term not only in the context of the particular claim in
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which the disputed term appears, but in the context of the entire patent, including the
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specification.” Id. at 1313.
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When such clarity is required, a court begins by examining the intrinsic record,
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consisting of the language of the claims, the patent specification and, if in evidence, the
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prosecution history of the challenged patent. Id. at 1314; see also Vederi, LLC v. Google,
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Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). “The appropriate starting point . . . is always
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with the language of the asserted claim itself.” Comark Comms., Inc. v. Harris Corp.,
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156 F.3d 1182, 1186 (Fed. Cir. 1998). The context in which a disputed term appears
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often provides substantial guidance as to the meaning of the term. See Philips, 415 F.3d
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at 1313-14. A disputed term should be construed “consistently with its appearance in
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other places in the same claim or in other claims of the same patent.” Rexnord Corp. v.
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Latiram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). “A claim construction that gives
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meaning to all the terms of the claim is preferred over one that does not do so.” Vederi,
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744 F.3d at 1383.
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As for other intrinsic evidence, the specification “is always highly relevant to the
claim construction analysis” and “usually dispositive.” Philips, 415 F.3d at 1315. In
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fact, it has been observed that “[a]part from the claim language itself, the specification is
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the single best guide to the meaning of a claim term.” Vederi, 744 F.3d at 1382; see also
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Philips, 415 F.3d at 1315. “[A] claim construction that excludes [a] preferred
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embodiment [described in the specification] is rarely, if ever, correct and would require
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highly persuasive evidentiary support.” Adams Respiratory Therapeutics, Inc. v. Perrigo
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Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (internal marks omitted). Furthermore, the
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“written description part of the specification” should not be read to “delimit the right to
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exclude [as] [t]hat is the function and purpose of claims.” Markman, 52 F.3d at 980.
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Stated differently, a “claim construction must not import limitations from the
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specification into the claims.” Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d
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1336, 1342 (Fed. Cir. 2013). It is, therefore, “improper to read limitations from a
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preferred embodiment described in the specification—even if it is the only
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embodiment—into the claims absent a clear indication in the intrinsic record that the
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patentee intended the claims to be so limited.” Dealertrack, Inc. v. Huber, 674 F.3d
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1315, 1327 (Fed. Cir. 2012) (citations omitted).
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“A patentee is,” however, “free to be his own lexicographer.” Markman, 52 F.3d
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at 980. Where the inventor gives a term a special meaning, “the inventor’s lexicography
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governs.” Philips, 415 F.3d at 1316. Similarly, where the inventor specifically disclaims
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a certain scope in the specification, that disclaimer is dispositive. Id.
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In most situations, “an analysis of the intrinsic evidence alone will resolve any
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ambiguity in a disputed claim term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d
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1576, 1583 (Fed. Cir. 1996). Where that is the case, “it is improper to rely on the
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extrinsic evidence” because “[t]he claims, specification, and file history, rather than
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extrinsic evidence, constitute the public record of the patentee’s claim, a record on which
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the public is entitled to rely.” Id. However, to the extent “the intrinsic record is
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ambiguous, and when necessary,” a court “may rely on extrinsic evidence, which consists
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of all evidence external to the patent and prosecution history, including expert and
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inventor testimony, dictionaries and learned treatises.” Power Integrations, Inc. v.
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Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1360 (Fed. Cir. 2013). Extrinsic
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evidence, however, is “less significant than the intrinsic record” and “less reliable than
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the patent and its prosecution history in determining how to read claim terms.” Phillips,
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415 F.3d at 1317-18 (internal quotations and citation omitted).
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Finally, “terms do not need to be construed [where] they are neither unfamiliar to
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the jury, confusing to the jury, nor affected by the specification or prosecution history.”
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See Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 528 F.
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Supp. 2d 967, 976 (N.D. Cal. 2007) (citing United States Surgical Corp. v. Ethicon, Inc.,
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103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of
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disputed meanings and technical scope, to clarify and when necessary to explain what the
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patentee covered by the claims, for use in the determination of infringement. It is not an
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obligatory exercise in redundancy.”)). A determination that a claim term “needs no
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construction” or has the “plain and ordinary meaning” may be inadequate when a term
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has more than one “ordinary” meaning or when reliance on a term’s ordinary meaning
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does not resolve the parties’ dispute. EON Corp. v. Silver Spring Networks, 815 F.3d
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1314, 1318 (Fed. Cir. 2016). Where the parties dispute the scope of a claim term, it is the
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court’s duty to resolve the dispute. O2 Micro Int’l Ltd. V. Beyond Innovation Tech. Co.,
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521 F.3d 1351, 1361-2 (Fed. Cir. 2008).
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B.
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35 U.S.C. § 112(f) provides a set of special rules for construing means-plus-
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Means-Plus-Function Claims
function claims.5 The statute states:
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An element in a claim for a combination may be expressed as a means or step
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for performing a specified function without the recital of structure, material,
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or acts in support thereof, and such claim shall be construed to cover the
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corresponding structure, material, or acts described in the specification and
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equivalents thereof.
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35 U.S.C. § 112(f). Accordingly, Section 112(f) allows a patentee to express an element
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of a claim as a means for performing a specified function. In exchange for the convenience
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of making a functional claim, the patent seeker must pay a price in that the “patent
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specification must disclose with sufficient particularity the corresponding structure for
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performing the claimed function and clearly link that structure to the function.” Triton
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Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014).
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Construing a means-plus-function claim term is a two-step process. The court must
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first identify the claimed function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311
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(Fed. Cir. 2012). Then, the court must determine what structure, if any, disclosed in the
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specification corresponds to the claimed function. Where there are multiple claimed
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functions, the patentee must disclose adequate corresponding structure to perform all of
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the claimed functions. Id. at 1318–19. If the patentee fails to disclose adequate
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corresponding structure, the claim is indefinite. Id. at 1311–12.
Structure disclosed in the specification qualifies as “corresponding structure” if the
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intrinsic evidence clearly links or associates that structure to the function recited in the
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The statute was previously referred to as 35 U.S.C. § 112 ¶ 6, but was codified as 112(f) in the
America Invents Act of 2012.
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claim. Id. (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
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1997)). Even if the specification discloses corresponding structure, the disclosure must be
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of “adequate” corresponding structure to achieve the claimed function. Id. at 1311–12
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(citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)). Therefore, if
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a person of ordinary skill in the art would be unable to recognize the structure in the
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specification and associate it with the corresponding function in the claim, a means-plus-
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function clause is indefinite. Id. at 1312 (citing AllVoice Computing PLC v. Nuance
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Commc'ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007)).
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If the function is performed by a general purpose computer or microprocessor, then
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the specification must also disclose the algorithm that the computer performs to
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accomplish that function. Nintendo, 753 F.3d at 1378 (citing Aristocrat Technologies v.
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International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008)). Failure to
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disclose the corresponding algorithm for a computer-implemented means-plus-function
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term renders the claim indefinite. Id. (citing Ergo Licensing LLC v. Carefusion 303, Inc.,
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673 F.3d 1361, 1363 (Fed. Cir. 2012)).
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It is well settled that “[s]imply disclosing software, however, ‘without providing
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some detail about the means to accomplish the function[,] is not enough.’” Function
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Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (citing Noah Sys.,
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Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)). When dealing with a “special
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purpose computer-implemented means-plus-function limitation,” the Federal Circuit
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requires the disclosure of the algorithm for performing a function. Noah Sys., 675 F.3d at
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1312. The Federal Circuit requires that the structure disclosed in the specification, in this
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scenario, to be “more than simply a general purpose computer or microprocessor.” Id.
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The “specification can express the algorithm in any understandable terms including as a
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mathematical formula, in prose, or as a flow chart, or in any other manner that provides
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sufficient structure.” Finisar Corp. v. DIRECTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
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Cir. 2008) (internal citation omitted). While a patentee need not disclose details of
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structures well known in the art, the “specification must nonetheless disclose some
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structure.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d
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1291, 1302 (Fed. Cir. 2005). Consequently, the “testimony of one of ordinary skill in the
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art cannot supplant the total absence of structure from the specification.” Id. Finally, the
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“party alleging that the specification fails to disclose sufficient corresponding structure
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must make that showing by clear and convincing evidence.” TecSec, Inc. v. IBM Corp.,
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731 F.3d 1336, 1349 (Fed. Cir. 2013).
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II.
A.
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‘021 Patent
The ‘021 Patent relates to the handover from a mobile station from a first cellular
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CLAIM CONSTRUCTION DISCUSSION6
system, i.e., GSM to a second cellular system, i.e., CDMA. JA7 at 1:15-28; 2:40-45. The
‘021 patent provides a method by which a mobile station performs power measurements
of the second cellular system when the power level of the first cellular system drops below
a certain threshold level. JA7 at 2:52-60. To determine whether it should handover to the
second cellular system, the mobile station requests a “free” time period during which the
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For ease of reference, the Court provides basic definitions of key terms and acronyms in the field of
cellular radio systems. Qualcomm Opening Brief (“QOCB”) at 1-2, Apple’s Glossary of Terms,
provided at Technology Tutorial Hearing, Dkt. No. 361.
Mobile stations, remote stations, access terminals, or user equipment: Cell phones such as the
iPhone
Base stations or access points: Cellular towers
Core Network: The backbone of the network that connects to different parts of the access
network
Forward Links: Cell phone downloads which occur when base stations send information to
mobile stations
Reverse Links: Cell phone uploads which occur when mobile stations send information to base
stations
Cell: Base stations provide wireless service within a geographic area known as a cell, which
contain one or more sectors
CDMA: Code-Division Multiple Access
GSM: Global System for Mobile Communications
UMTS: Universal Mobile Telecommunications System
TDMA: Time Division Multiple Access
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mobile station is “free” from the first cellular system’s transmissions. JA8 at 3:5-10.
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During the “free” period, the mobile station is able to more accurately measure power from
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the second cellular system. JA8 at 3:10-13; JA7 at 2:5-9. Doing so reduces interference
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and allows the mobile station to remain connected to the first cellular system if the
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handover does not occur. JA11 at 10:53-55. The parties dispute three terms at issue in this
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patent.
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1. “means for comparing the measured power level with said
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at least one threshold value”
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Apple
and
CM
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
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“means for comparing . . .” term
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This is a 112 ¶ 6 claim element
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Function: comparing the measured power level with said at least one threshold value.
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Structure: This term is indefinite because
Structure: control unit/control block 605
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there is insufficient structure disclosed in
and its comparison means 616, and
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the patent for performing the claimed
equivalents.
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function.
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The parties do not dispute that this term should be construed as a means-plus-
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function claim pursuant to 35 U.S.C. § 112(f). Further, they do not dispute that the function
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is “comparing the measured power level with said at least one threshold value.”
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Apple argues that Qualcomm has not identified adequate structure in the
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specification corresponding to the function. Apple asserts that Qualcomm has identified
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only a “black box” as the specification identifies only a generic control unit or control block
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for performing this “comparing function.” Qualcomm argues that the ‘021 Patent discloses
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sufficient structure, arguing that it is a “typical” component in a mobile station.
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For ease of reference, Figure 6 to the ‘021 patent is reproduced below. Figure 6
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presents the block diagram for a terminal or a mobile station. The mobile station comprises
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parts that are typical of the device such as the microphone (601), keyboard (617), antenna
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(609), and control unit (605), transmission block (604), reception block (611). The control
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block 605 comprises “means 616 with the aid of which it can compare the threshold values
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with the received signal power levels” and also comprises “advantageously means 617,
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with the aid of which it can request, depending on the result of the comparison, a permission
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from the cellular radio system to shift into the compressed transmission mode, in which
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the mobile station can measure also the transmission powers of a second system.” JA10 at
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8:10-34.
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The written description notes that control unit/block 605 comprises “means 616 and
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617.” JA10 at 8:23-42.7 The specification states that the presented means 616 can be
“realized for instance with the aid of a microprocessor and software.” JA10 at 8:23-42.
The Court concludes that the “means for comparing the measured power level with
said at least one threshold value” term is indefinite as Qualcomm has failed to disclose
Apple’s expert, Dr. Wicker, opines that microprocessors and software cannot accomplish the
“comparing” function without specialized algorithms accomplished through specialized programming or
additional structures. JA314 at ¶ 48.
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sufficient structure and has disclosed merely a “black box.” See Augme Techs., Inc. v.
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Yahoo! Inc., 755 F.3d 1326, 1338 (Fed. Cir. 2014) (“Simply disclosing a black box that
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performs the recited function is not a sufficient explanation of the algorithm required to
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render the means-plus-function term definite.”). Under Federal Circuit law, when an
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inventor invokes means-plus-function claiming in a computer-implemented invention, the
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disclosed structure must be more than simply a general purpose computer or
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microprocessor. See Aristocrat Techs, 521 F.3d at 1333. The control block 605 and its
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comparison means 616 do not constitute sufficient structure because Qualcomm has failed
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to include a reference to an algorithm. See Noah Sys., 675 F.3d at 1312 (it is well settled
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that “[s]imply disclosing software, however, without providing some detail about the
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means to accomplish the function is not enough”) (internal marks omitted). The patent
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does not contain any understandable terms that could conceivably be construed as an
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algorithm, including inter alia as a mathematical formula, flow chart, in prose or any other
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manner that provides sufficient structure. Finesar, 523 F.3d at 1340. An inventor who
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chooses to utilize a means-plus-function formulation must necessarily disclose adequate
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structure so that the bounds of the invention can be perceived. Id. (“Without any
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corresponding structure, one of skill simply cannot perceive the bounds of the invention.”).
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Notably, neither Qualcomm, nor its expert Dr. Min attempts to identify how the ‘021 Patent
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discloses any algorithm to perform the “comparing” function.
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Qualcomm attempts to sidestep the Federal Circuit’s requirement for disclosure by
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pointing to Telcordia Techs. Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010).
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In Telcordia, the Federal Circuit rejected an indefiniteness challenge where a controller’s
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circuit was a “black box” that did not describe the “details of its inner circuitry.” 612 F.3d
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at 1377. There, the term “monitoring means” was a 112(f) means-plus-function claim
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where the function was “evaluating the integrity of the multiplexed subrate
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communications on the first ring and the second ring,” and the corresponding structure for
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the function was the “circuitry at a controller that determines if a defect exists with the
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multiplexed subrate communications.”
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specification need “only disclose adequate defining structure to render the bounds of the
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claim understandable to an ordinary artisan.” Id. Because an ordinary artisan would have
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recognized the controller as an electronic device with a known structure, there was
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sufficient structure to render the claim definite. Id.
Id. at 1376.
The Court concluded that the
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Telcordia is inapposite. The function addressed in Telcordia did not require the use
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of specific programming through a microprocessor or software sufficient to trigger the
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Federal Circuit’s requirement to disclose an algorithm. Moreover, the specification of the
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patent in Telcordia disclosed significant structure:
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Each node continuously monitors and evaluates the integrity of the
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multiplexed subrate signals arriving at the node. Illustratively, this could be
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accomplished by detecting the absence of a carrier signal in an analog signal
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environment, or the lack of any incoming signal in a digital environment.
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When node 1 recognizes major line fault 122 in ring 100, controller 118 inserts
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an error signal onto the six subrate channels. This could illustratively be
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accomplished by inserting a string of 1's on each channel in a digital
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environment. Node 4 performs the identical activity by similarly placing an
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error signal on the six subrate channels of ring 101.
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Telcordia, 612 F.3d at 1376. The Court credits Apple’s argument at the claim construction
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hearing that the detailed process discussed above could have been construed as an
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algorithm, and explains why the WMS Gaming algorithm requirement was a non-issue in
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Telcordia. See DIRECTV, 523 F.3d at 1340 (specification can express the algorithm in any
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understandable terms including as a “mathematical formula, in prose, or as a flow chart, or
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in any other manner that provides sufficient structure.”) (internal citation omitted).
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Significantly, another district court has distinguished Telcordia by pointing to the
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substantial disclosure in that case, while finding that the lack of such a substantial
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disclosure related to a decoding function supported a finding of indefiniteness. See
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Microsoft Corp. v. Motorola Inc., No. C10-1823JLR, 2013 WL 454268, at *11-12 (W.D.
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Wash. Feb. 7, 2013) (“The specification of the Patents-in-Suit lack [the level of detail of
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Telcordia’s] disclosure (and in fact provide no disclosure at all) providing structure to the
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claimed decoding function.”); id. at *13 (“The specification needs to provide a decoding
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algorithm from which to base the understanding of one skilled in the art, and the court can
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find no such algorithm within the specification.”).
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Qualcomm argues that the ‘021 patent does not require the controller to be a
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“microprocessor or software.” Qualcomm is correct that the specification’s description of
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comparison means 616 arises in the context of a “preferred embodiment” where it can be
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realized “for instance with the aid of a microprocessor or software.” Pointing to a series
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of non-binding district court cases, Qualcomm asserts that in certain situations disclosure
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of controllers alone have been found by district courts to be sufficiently definite structure.
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The Court finds these cases distinguishable. For example, Maury Microwave, Inc. v. Focus
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Microwaves, Inc., 2012 WL 9161988, at *20 (C.D. Cal. July 30, 2012) is inapposite
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because there the specification did not clearly mandate a computer algorithm to perform
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the function. Here, the extrinsic evidence, discussed below, shows that an algorithm or
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additional structure is necessary for control block 605 and comparison means 616 to
18
perform the comparing function. Moreover, unlike in Goss Intern. Americas, Inc. v.
19
Graphic Management Associates, Inc., 739 F. Supp. 2d 1089, 1100 (N.D. Ill. 2010), there
20
is no indication that the 605 control block “consist[s] of only circuitry” that does not “even
21
require any algorithms at all” to perform the requisite function.8 Consequently, these cases
22
are inapposite because the structure disclosed here requires both a control block 605 and a
23
24
25
26
27
28
8
Similarly, the Court does not find Technologies Properties, Ltd. v. Canon, Inc., 2015 WL 5535830, at
*4-6 (N.D. Cal. Sep. 18, 2015) persuasive. There, the Court distinguished Aristocrat because there was
no argument that a microprocessor was not necessary to “accomplish the recited functions,” leading the
Court to find that “[t]he holding from Aristocrat requiring disclosure of an algorithm does not extend to
a function that can be performed by an integrated circuit or chip.” Here, the extrinsic evidence,
uncontested by Qualcomm’s expert Dr. Min, shows that an algorithm would be required to perform the
comparing function.
13
17-cv-00108-GPC-MDD
1
comparison means 616. According to the extrinsic evidence and a reading of a “preferred
2
embodiment,” comparison means 616 would likely require either a microprocessor or
3
software to perform the function.
4
The Court’s conclusion is informed by the extrinsic evidence and particularly credits
5
the Declaration of Apple’s expert Dr. Wicker. Dr. Wicker contends that microprocessors
6
and software are incapable of accomplishing the “comparing” function without specific
7
algorithms. JA314 ¶ 48 (concluding that “control block 605” as described in the ‘021
8
Patent is a “Black Box” that is not a “sufficient explanation of any algorithm.”).9 Wicker
9
states that “no generic hardware or software by itself can accomplish the different functions
10
of the control unit or control block recited in the patent. In fact, specialized programming
11
and/or additional structural features are required to perform the identified functions.
12
JA314. In its Responsive Claim Construction Brief, Qualcomm contends for the first time
13
that the recited function involves merely comparing two values, which “can be achieved
14
by any general purpose computer without special programming.” QRCB at 3 (citing In re
15
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)).
16
Pertinently, Qualcomm does not present any extrinsic evidence to rebut Dr. Wicker’s
17
claims that a POSITA would understand that the recited function cannot be accomplished
18
by the 605 controller block and comparison means 616 without specific algorithms.
19
Notably, Dr. Min never states that the comparing function can be accomplished without a
20
specific algorithm. The Court will accordingly conclude that Katz is inapposite10 and will
21
accept Dr. Wicker’s contention that the “comparing” function requires the use of
22
23
24
25
26
27
28
Qualcomm challenges Dr. Wicker’s lack of “supporting citations.” QOCB at 9. In his deposition, Dr.
Wicker explained that this was because he was citing to an absence in a written description and that
these assertions are based on his “experience as a telecom engineer for 30-something years.” QEX17 at
75:1-25; 78:1-7
10
In Katz, the patentee did not claim a specific function performed by a special purpose computer, but
merely recited claimed functions of “processing,” “receiving,” and “storing” that could have been
achieved by any general purpose computer without special programming. See Katz, 639 F.3d at 1313.
Here, Apple’s unrebutted expert testimony is that the comparing function requires specialized
programming. See JA 314.
9
14
17-cv-00108-GPC-MDD
1
specialized programming, i.e. algorithms.
2
Dr. Min asserts only that control unit/control block 605 is sufficient to perform the
3
claimed function because the structure of mobile station controllers was well known to
4
persons of ordinary skill in the art. JA397 ¶¶ 89-92. Dr. Min cites common block 605-
5
type processors such as GSM & W-CDMA baseband processors and GSM digital base-
6
band chip.11 Whether the 605 block was a “typical” structure in a mobile device does not
7
automatically lead to the legal determination of adequate structure to support a means-plus-
8
function claim, particularly in light of the Federal Circuit’s case law requiring the
9
disclosure of algorithms for computer-implemented functions. Given the total absence of
10
structure, the Court need not and will not consider Dr. Min’s conclusory statements. See
11
Citrix, 792 F.3d at 1354 (“The testimony of one of ordinary skill in the art cannot supplant
12
the total absence of structure from the specification.”). This is consistent with the rationale
13
of 112(f) claims. Williamson, 792 F.3d at 1354 (“The prohibition against using expert
14
testimony to create structure where none otherwise exists is a direct consequence of the
15
requirement that the specification adequately disclose corresponding structure.”)
Accordingly, the Court concludes that this term is indefinite because the ‘021 patent
16
17
fails to disclose adequate structure corresponding to the “comparing” function. See id.
18
19
20
21
22
23
24
25
26
27
28
The Court agrees with Apple that Dr. Min’s assertions appear to argue enablement. The Court
emphasizes that the indefiniteness inquiry is “concerned with whether the bounds of the invention are
sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the
invention.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 519 (Fed. Cir. 2012).
11
15
17-cv-00108-GPC-MDD
1
2. “means for transmitting to the first cellular radio system a
2
request for a free time period in which to perform the
3
measurement, said means being arranged to transmit the
4
request for the free time period in which to perform the
5
measurement only after said measured power level remains
6
below said at least one threshold value”
7
8
Apple
and
13
14
15
16
17
Proposed Qualcomm’s Proposed Construction
“means for transmitting . . . “ term
10
12
Parties’
Construction
9
11
CM
This is a 112 ¶ 6 claim element
Function: transmitting to the first cellular
Function: transmitting to the first cellular
radio system a request for a free
radio system a request for a free
time period in which to perform the
time period in which to perform the
measurement only after said
measurement.
measured power level remains
below said at least one threshold
value.
18
19
20
21
22
Structure: This term is indefinite because
Structure: transmitter block 604 and
there is insufficient structure
equivalents.
disclosed in the patent for
performing the claimed function.
23
24
The parties agree that this “transmitting” term is a 112 ¶ 6 claim element.
25
26
27
28
16
17-cv-00108-GPC-MDD
1
Function
2
The parties disagree as to whether the function requires that the transmitting be
3
performed “only after said measured power level remains below said at least one
4
threshold value.” AOCB at 6.
5
Apple contends that the plain language of the term requires that the function
6
include the “only after said measured power level remains below said at least one
7
threshold value” limitation. Qualcomm argues that Apple has incorporated a different
8
claim term into their proposed construction––“said means being arranged to transmit the
9
request for the free time period in which to perform the measurement only after said
10
measured power level remains below said at least one threshold value.” JA11 at 10:41-
11
46.
12
When construing functional claims under § 112(f), “[t]he statute does not permit
13
limitation of a means-plus-function claim by adopting a function different from that
14
explicitly recited in the claim.” In re Teles AG Informationstechnologien, 747 F.3d 1357,
15
1367-68 (Fed. Cir. 2014) (citing Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d
16
1250, 1258 (Fed. Cir. 1999) (“[T]he district court erred . . . by incorporating unrecited
17
functional limitations into the claims.”)). An “error in identification of the function can
18
improperly alter the identification of structure in the specification corresponding to that
19
function.” Micro Chem., 194 F.3d at 1258. Notably, “[t]hat part of a claim contains
20
means-plus-function language does not make section 112 ¶ 6 applicable to the entirety of
21
the claim.” Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989).
22
The Court concludes that “said means being arranged to transmit the request for
23
the free time period in which to perform the measurement only after said measured power
24
level remains below said at least one threshold value” is a separate claim term that is not
25
a part of the instant means-plus-function term. See Bausch & Lomb Inc. v. Moria S.A.,
26
222 F. Supp. 2d 616, 655-56 (E.D. Pa. 2002) (construing function to be merely “retains
27
and positions the eye on which cutting of the cornea is to be performed” where claim
28
17
17-cv-00108-GPC-MDD
1
language stated “means for retaining and positioning the eye on which cutting of the
2
cornea is to be performed, said means being capable of temporary attachment to a portion
3
of the eye surrounding the cornea being capable of exposing and presenting the cornea to
4
be cut.”) (emphasis added). The Court agrees with Qualcomm that Apple is attempting to
5
import a separate limitation in an attempt to shoehorn controller block 605 as required
6
structure. In particular, the Court credits Qualcomm’s argument that the “said means
7
being arranged” term is a separate limitation describing when the function occurs, and
8
does not constitute a description of the function itself.
The Court is not persuaded by Apple’s citation to the prosecution history. As
9
10
originally drafted, the patentee stated “means (617) for requesting a free measurement
11
period from the first cellular radio system, which means are arranged to request the free
12
measurement period when said measured signal strength is lower than said threshold
13
value.” AEX30 at 101. After a rejection from the PTO, the patentee amended as follows
14
(additions in underline, deletions in strikethrough):
15
means (617) for transmitting to the first cellular radio system a requesting request
16
for a free time period in which to perform the measurement period from the first
17
cellular radio system, which said means are being arranged to transmit the request
18
for the free time period in which to perform the measurement period when said
19
measured signal strength power level remains lower than below said at least one
20
threshold value [[,]] . . .
21
AEX30 at 109. It is not clear to the Court how the prosecution history “disclaim[s] or
22
“disavow[s]” Qualcomm’s assertion that the transmitting function should not include the
23
second post-comma clause. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
24
1326 (Fed. Cir. 2002). Even as originally drafted, the original phrasing contained an
25
explicit second clause––“radio system, which means are arranged” that would not have
26
served as a limitation on the means-plus-function claim asserted in the first clause of the
27
claim.
28
18
17-cv-00108-GPC-MDD
1
Accordingly, the Court concludes that the function for this term is “transmitting to
2
the first cellular radio system a request for a free time period in which to perform the
3
measurement.”
4
5
Structure
Apple argues that “transmitter block 604” cannot send the recited transmissions
6
without “control block 605” which determines when to transmit the request by checking
7
whether the power level remains below a threshold value. Accordingly, Apple contends
8
that the corresponding structure for “means for transmitting” necessarily includes
9
“control block 605,” which Apple argues is a black box indefinite term.
10
Qualcomm responds that transmitter block 604 is adequate structure as it follows
11
directly from the Patent’s description as performing the recited function. Transmission
12
block 604 “process[es], modulate[s], and amplifie[s]” transmission signals JA10 at 8:2-5.
13
Qualcomm asserts Apple’s construction of function, which includes the limitation “only
14
after said measured power level remains below said at least one threshold value,” leads to
15
the erroneous inference that Control Block 605—not merely transmission block 604––is
16
a necessary part of this term’s structure.
17
Because the Court has construed the function of this term to not require the
18
separate claim limitation “said means being arranged to transmit the request for the free
19
time period in which to perform the measurement only after said measured power level
20
remains below said at least one threshold value,” the Court cannot conclude that control
21
block 605 is a requisite structure for the identified function. Here, control block 605 is
22
not necessary for the function of “transmitting to the first cellular radio system a request
23
for a free time period in which to perform the measurement.” Accordingly, the Court
24
concludes that Qualcomm’s disclosure of transmitter block 604 and equivalents is
25
sufficiently definite structure. See JA397-398 (Declaration of Dr. Min asserting that a
26
POSITA would understand transmitter block 604 to be adequate corresponding structure
27
for the transmitting function).
28
19
17-cv-00108-GPC-MDD
“means for measuring a power level of a signal transmitted
1
3.
2
by at least one base station of the first cellular radio system”
3
and “means for receiving at least one threshold value
4
transmitted to the terminal by the first cellular radio system”
5
6
Apple
and
7
CM
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
8
“means for measuring . . .” term
9
This is a 112 ¶ 6 claim element
10
Function: measuring a power level of a signal transmitted by at least one base station of
11
the first cellular radio system
12
Structure: the CDMA or TDMA cellular
Structure: power level determination
13
radio system receiver block 611 described
means 615 of receiver block 611, and
14
in 7:57–8:45.12
equivalents.
15
“means for receiving . . .” term
16
This is a 112 ¶ 6 claim element
17
Function: receiving at least one threshold value transmitted to the terminal by the first
18
cellular radio system.
19
Structure: the CDMA or TDMA cellular
Structure: receiver block 611 and
20
radio system receiver block 611 described
equivalents.
21
in 7:57–8:45.
22
23
24
25
26
27
28
12
At oral argument, Apple appeared to shift to a theory of indefiniteness regarding these terms,
attacking both the adequacy of the structures receiver block 611 and power level determination means
615. Apple has never sought a construction of indefiniteness related to these terms in its briefing. See,
e.g., AOCB at 8-9, ARCB at 3-4. The Court will decline to entertain Apple’s eleventh hour arguments
that these structures are indefinite. See, e.g., Fujitsu Ltd. v. Belkin Int'l, Inc., No. 10-CV-03972-LHK,
2012 WL 368574, at *6 (N.D. Cal. Feb. 3, 2012) (“Ordinarily, the Court would find that any arguments
20
17-cv-00108-GPC-MDD
1
The parties do not dispute that these terms should be construed as means-plus-
2
function claims. They agree on the respective functions for each term. Instead, the parties
3
dispute whether the structure for each term—which the parties agree involve receiver block
4
611—is limited to the CDMA or TDMA cellular radio systems disclosed in the ‘021 patent
5
at lines 7:57 to 8:45.
6
Apple argues that the ‘021 patent discloses both the measuring and receiving
7
functions, but does not provide any detail regarding the structure of receiver block 611 or
8
its implementation. AOCB at 8. According to Apple, the only networks described in the
9
‘021 patent are CDMA or TDMA type systems, and thus the structure must be limited to
10
these networks. Importantly, Apple’s theory would exclude OFDMA systems such as
11
LTE. Id. Apple’s expert Dr. Wicker asserts that specialized programming and additional
12
features would be required to perform LTE functions, which are distinct from those for a
13
UMTS receiver. JA311 ¶ 41.
14
Qualcomm responds that nothing in the plain language of the ‘021 patent limits the
15
611 receiver block to only CDMA or TDMA radio systems. QOCB at 4. Qualcomm
16
asserts that any references to particular cellular systems are qualified by “exemplary
17
description” language. QOCB at 4-6.
18
The Court agrees with Qualcomm. Nothing in the specification indicates that the
19
structure should be restricted to only CDMA or TDMA systems. The ‘021 Patent describes
20
the 611 receiver block without any reference to particular cell systems. See JA10 at 7:63-
21
67. Indeed, the “Background of the Invention” accounts for the development of a new type
22
of cellular system, such as the OFDMA based systems that underlie modern-day LTE
23
networks. See JA7 at 1:25-40 (“New network topologies will rise in parallel with [the
24
GSM] network, and typically the utilization of these new topologies require new terminals.
25
In the future it must be possible to use the terminals in a number of networks. Then a
26
27
28
not made in the claim construction briefing have been waived and may not be raised for the first time at
the Markman hearing.”) (Koh, J.).
21
17-cv-00108-GPC-MDD
1
change over from the use of a first network to the use of a second network must be effected
2
without problems.”).
3
systems are qualified by exemplary description language. See, e.g., JA9 at 5:40-46 (“[F]or
4
instance, in a situation where said first network is a WCDMA network and said second
5
network is a GSM 900 network . . . .”). Finally, claims 8-11 indicate specific cellular
6
systems, while claim 12 does not, indicating that the patentee did not intend to so restrict
7
claim 12 to CDMA or TDMA systems. JA11 at 10:8-11; see Unwired Planet, LLC v. Apple
8
Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“If the patentee intended to restrict the claims-
9
at-issue to require a [specific cellular system], it could have included that same
10
Descriptions of the ‘021 patent referencing particular cellular
limitation.”).
11
Moreover, as Qualcomm asserted in a slide nearly left on the “cutting-room floor,”
12
Federal Circuit case law supports the notion that after-arising technology can be captured
13
by broadly drafted patent claims. See, e.g., Innogenetics, N.V. v. Abbott Laboratories, 512
14
F.3d 1363, 1371 (Fed. Cir. 2008) (“Our case law allows for after-arising technology to be
15
captured within the literal scope of valid claims that are drafted broadly enough.”); id. at
16
1370 (“[A]s is well established, an applicant is not required to describe in the specification
17
every conceivable and possible future embodiment of his invention.”); SuperGuide Corp.
18
v. DIRECTV Enters., Inc., 358 F.3d 870, 878-880 (Fed. Cir. 2004) (“regularly received
19
television signal” broad enough to encompass digital signals even though no television
20
signals could receive digital signals as of the filing date).
21
Accordingly, the Court will decline to impose a “CDMA or TDMA” limitation into
22
the structure of these terms and will construe the structures as “power level determination
23
means 615 of receiver block 611, and equivalents” and “receiver block 611 and
24
equivalents” respectively. The disclosed structure is receiver block 611, not a CDMA
25
receiver block or a TDMA receiver block. To construe the term otherwise would be against
26
the larger purpose of the patent––to ensure interoperability between different types of
27
cellular networks.
28
22
17-cv-00108-GPC-MDD
1
B.
‘630 Patent
2
1. means for performing: a core network-specific
3
authentication protocol; a radio bearer-specific ciphering
4
process; generation, for each ciphering process, a count
5
parameter comprising a cyclical sequence number and a
6
hyperframe number which is incremented each time the
7
cyclical sequence number completes one cycle; and for each
8
core network or authentication protocol: initialization of a first
9
radio bearer of a session with a hyperframe number exceeding
10
the highest hyperframe number used during the previous
11
session, and to send a radio network controller a value for
12
enabling the radio network controller to determine the same
13
hyperframe number; and at the end of a session, storing at least
14
part of the highest hyperframe number used during the session.
15
The ‘630 patent describes methods and devices for protecting and maintaining the
16
integrity of the traffic in a cell network connected to two core networks—i.e., one core
17
network for data and another for voice calls. JA13 at Abstract. In particular, this patent
18
addresses a security problem associated with using a single “count parameter” and
19
problems with reusing a hyperframe number (“HFN”), an input to a ciphering algorithm.
20
Id. While prior art used only a single HFN Count-C number that increased no matter
21
whether the input key was for voice or data, the ‘630 Patent discloses a new system utilizing
22
a separate HFN for voice and core networks. JA16-17 at 1:48-4:6. By doing so, this
23
method avoids the possibility of HFN repetition. Ultimately, the ‘630 patent discloses a
24
method to increment the counter across all radio bearers such that each new radio bearer
25
starts with an HFN higher than any HFN used by any radio bearer in a previous session.
26
JA13 at Abstract.
27
28
23
17-cv-00108-GPC-MDD
1
Apple
and
2
CM
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
3
“means for performing . . .”
4
This is a 112 ¶ 6 claim element
5
Function: “performing (1) a core network-specific authentication protocol; (2) a radio
6
bearer-specific ciphering process; (3) generation, for each ciphering process, a count
7
parameter comprising a cyclical sequence number and a hyperframe number which is
8
incremented each time the cyclical sequence number completes one cycle; (4) for each
9
core network or authentication protocol: (4a) initialization of a first radio bearer of a
10
session with a hyperframe number exceeding the highest hyperframe number used
11
during the previous session, (4b) sending a radio network controller a value for
12
enabling the radio network controller to determine the same hyperframe number; and
13
(4c) at the end of a session, storing at least part of the highest hyperframe number used
14
during the session.”
15
Structure: This term is indefinite because
Structure: mobile station having a
16
there is no single structure that performs
memory, and equivalents
17
the claimed function.
18
19
The parties agree that the function for this claim is: “performing (1) a core
20
network-specific authentication protocol; (2) a radio bearer-specific ciphering process;
21
(3) generation, for each ciphering process, a count parameter comprising a cyclical
22
sequence number and a hyperframe number which is incremented each time the cyclical
23
sequence number completes one cycle; (4) for each core network or authentication
24
protocol: (4a) initialization of a first radio bearer of a session with a hyperframe number
25
exceeding the highest hyperframe number used during the previous session, (4b) sending
26
a radio network controller a value for enabling the radio network controller to determine
27
28
24
17-cv-00108-GPC-MDD
1
the same hyperframe number; and (4c) at the end of a session, storing at least part of the
2
highest hyperframe number used during the session.”
3
The parties sole dispute is whether the ‘630 patent recites sufficient structure to
4
perform the recited functions. Apple argues that: (a) Qualcomm has not disclosed adequate
5
corresponding structure to perform all of the claimed functions rendering the claim
6
indefinite, (b) the mobile station itself cannot be the structure and, (c) the specification of
7
the ‘630 patent is devoid of any algorithm that could perform the functions. AOCB 9-13.
8
Qualcomm responds that its recitation of structure—a “mobile station having memory and
9
equivalents”––is sufficient.13
10
The Court agrees with Apple that a “mobile station having memory” is too indefinite
11
a structure and that adequate structure should have defined the structure and algorithms
12
within the mobile station required to perform the six-part function of this claim. In Net
13
MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366 (Fed. Cir. 2008), the Federal Circuit—
14
in determining whether a claim recited sufficient structure to rebut the presumption of a
15
means-plus-function claim—held that the claim language “first bank computer containing
16
financial data therein, said financial data including customer account numbers and
17
available credit data, said first bank computer . . . generating an authorization indicia in
18
response to queries containing a customer account number and amount,” was not sufficient
19
to rebut the means-plus-function presumption. The Federal Circuit reasoned that:
20
The bank computer is not linked in the claim as the ‘means’ for generating an
21
authorization indicia. Rather, the bank computer is recited as ‘including’ those
22
23
24
25
26
27
28
At oral argument, Qualcomm’s counsel attempted to tie each of the six functions to a component
within the mobile phone––i.e., a processor, transceiver, or memory chip––for the first time. Qualcomm
raised in the first instance a purported algorithm that provides sufficient structure. Dkt. No. 396 at 6063. Apple asserted that these arguments were made in the first instance at oral argument, and no experts
had testified to any of these new assertions. Accordingly, the Court will decline to exercise its
discretion to consider these new arguments that could have been raised in the claim construction
briefing. See Fujitsu, 2012 WL 368574, at *6 (“Ordinarily, the Court would find that any arguments not
made in the claim construction briefing have been waived and may not be raised for the first time at the
Markman hearing.”).
13
25
17-cv-00108-GPC-MDD
1
means. NMI’s argument that the first bank computer constitutes sufficient
2
structure would require the first bank computer to include a first bank
3
computer, which is both redundant and illogical.
4
generating means is a subset of the bank computer, there must be a recitation
5
of structure that is a component of the bank computer . . . to rebut the
6
presumption.
Because the claimed
7
Id. at 1366. Accordingly, under the teachings of Net MoneyIn, a construction such as that
8
in this case––“wherein the mobile station comprises means for performing [the six-part
9
function]”—would similarly require the mobile station to include a mobile station, which
10
the Federal Circuit has suggested is “redundant and illogical.” See id.
11
Qualcomm’s citation to HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270 (Fed.
12
Cir. 2012) to argue that a “mobile station with memory” is sufficient structure is not only
13
inapposite, but arguably is supportive of Apple’s position that this claim lacks sufficient
14
structure. In HTC, the Federal Circuit found that “[a]lthough the specification here does
15
not literally disclose a processor and receiver, a person skilled in the art would understand
16
that the mobile device would have to contain a processor and a transceiver.” Id. at 1279.
17
Pertinently, the HTC Court did not find that a “mobile station” was sufficient structure for
18
the claimed function of “arrangement for reactivating,” but rather found that a processor
19
and transceiver within the mobile device could set forth sufficient structure for the claimed
20
function. Unlike in HTC where a person of ordinary skill in the art was able to identify
21
that a mobile station usually included a processor and transceiver, here Qualcomm’s expert
22
Dr. Min has not identified the analogous equivalent of components, such as the processor
23
and transceiver, required to perform the six-part function in the ‘630 patent. Dr. Min
24
concedes that the ‘630 patent describes a “mobile station itself, not any particular
25
component within it.” AEX16 at 91:13-24. Moreover, Dr. Min stated that the USIM
26
memory chip could not perform the six-part ciphering process by itself. Id. at 93:19-21.
27
Accordingly, Qualcomm has not disclosed any structure can perform each of the functions
28
26
17-cv-00108-GPC-MDD
1
described above. See Williamson, 792 F.3d at 1352 (“Where there are multiple claimed
2
functions, as we have here, the patentee must disclose adequate corresponding structure to
3
perform all of the claimed functions. If the patentee fails to disclose adequate
4
corresponding structure, the claim is indefinite.”) (internal citations omitted). Moreover,
5
the Court affords minimal weight to Dr. Min’s reference to the 3GPP standard14 dated after
6
the ‘630 patent as extrinsic evidence “cannot supplant the total absence of structure from
7
the specification.” See Williamson, 792 F.3d at 1354.
8
Finally, Qualcomm’s cited structure is indefinite for a further reason cited in HTC.
9
To the extent that the mobile station performs the six-part function by means of a processor,
10
HTC teaches that general purpose processors would not be sufficient structure. See id. at
11
1280.
12
executed by the processor and transceiver.15 Here, Qualcomm has not timely identified
13
any algorithm disclosed in the specification of the ‘630 patent.
Rather, Federal Circuit precedent requires the identification of an algorithm
14
Accordingly, the Court concludes that this claim is indefinite for failing to
15
adequately disclose components of the mobile station and algorithms executed by those
16
components that could perform the six-part function recited in the claim.
‘549 Patent
17
C.
18
The ‘549 patent describes a mobile station that adjusts its transmission rate based
19
on information it obtains from multiple base stations indicating whether they have
20
available capacity to receive data on reverse links. JA21 at Abstract. The base stations
21
send “reverse link busy bits,” a term construed below, to the mobile station to indicate
22
whether or not the base station has reached its capacity limit. Id. Reverse link busy bits
23
24
25
26
27
28
14
The Court agrees with Apple that this evidence is irrelevant insofar as a court construing patent claims
must accord a claim the meaning it would have to a POSITA “at the time of the invention.”
Innova/Pure Water, Inc., 381 F.3d at 1116.
15
In HTC, the Federal Circuit did not weigh in on whether or not an algorithm was sufficiently disclosed
as the Federal Circuit found that HTC had waived the argument by failing to ask the district court to
address this issue. See HTC, 667 F.3d at 1280-83.
27
17-cv-00108-GPC-MDD
1
are independently generated by each base station and indicate whether the transmitting
2
base station has reached a reverse link capacity limit. Id.
3
4
The parties dispute two issues with the ‘549 patent: (1) whether the entirety of the
claim 1 preamble is a limitation and (2) the meaning of “reverse link busy bit.”
5
1. Preamble
6
Apple
and
7
CM
Construction
8
9
Parties’
Proposed Qualcomm’s Proposed Construction
Preamble of Claim 1
Preamble is limiting
The Court does not need to construe the
10
entire preamble.
11
In a communication system in which
12
each base station in communication with
13
a remote station transmits a reverse link
14
busy bit indicating whether its reverse
15
link capacity has been exhausted, a
16
method of determining the reverse link
17
transmission rate of said remote station
18
comprising:
19
20
Underline: Qualcomm concedes these
21
terms provide antecedent basis for terms
22
in the body of claim 1
23
Bold: Qualcomm contends these aspects
24
of the preamble need not be a limitation
25
26
27
28
A preamble can limit the scope of a claim where it “recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
28
17-cv-00108-GPC-MDD
1
Mktg. In’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble
2
is not limiting “where a patentee defines a structurally complete invention in the claim
3
body and uses the preamble only to state a purpose or intended use for the invention.” Id.
4
Whether to treat a preamble as a claim limitation is “determined on the facts of each case
5
in light of the claim as a whole and the invention described in the patent.” Bicon, Inc. v.
6
Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006).
7
The preamble of claim 1 states:
8
In a communication system in which each base station in communication
9
with a remote station transmits a reverse link busy bit indicating whether its
10
reverse link capacity has been exhausted, a method of determining the
11
reverse link transmission rate of said remote station comprising:
12
13
JA37 at 11:63-67.
Apple argues that the entire preamble should be construed as a limitation. AOCB
14
14. According to Apple, phrases in the preamble such as “indicating whether its reverse
15
link capacity has been exhausted,” and “each base station in communication with a
16
remote station” exceeds more than a mere description of the intended use of the
17
invention. The preamble defines a limitation by stating that each base station in
18
communication with the remote station sends a reverse link busy bit to the remote station.
19
Moreover, Apple contends that later limitations lack antecedent basis, including that
20
“base stations” appears in the body of claim 1, and the use of “said” in the body relies on
21
the “base stations” defined in the preamble.
22
In its opening brief, Qualcomm concedes two phrases in the preamble are
23
limitations: (1) “each base station in communication with a remote station transmitting a
24
reverse link busy bit” and (2) “the reverse link transmission rate.” QOCB at 19
25
(conceding these aspects of the preamble provide antecedent basis for certain limitations
26
recited in the body of the claim). Nonetheless, Qualcomm contends that even when a
27
preamble provides antecedent basis that “does not necessarily convert the entire preamble
28
29
17-cv-00108-GPC-MDD
1
into a limitation.” Id. (citing TomTom Inc. v. Adolph, 790 F.3d 1315, 1322-24 (Fed. Cir.
2
2015). As such, Qualcomm contends that the remaining terms in the preamble provide a
3
“statement of purpose” for the claim, and are not limitations. These terms would
4
necessarily include:
5
“In a communication system in which”
6
“indicating whether its reverse link capacity has been exhausted,”
7
“a method of determining”
8
“of said remote station”
9
Both parties cite the “indicating whether its reverse link capacity has been
10
exhausted” language in their interpretation of “reverse link busy bit” below. Given the
11
importance of the “indicating whether its reverse link capacity has been exhausted”
12
language in the construction of “reverse link busy bit,” the Court concludes that this
13
preamble language is necessary to give “life, meaning, and vitality” to the claim by
14
providing a critical definitional limitation of what constitutes a reverse link busy bit. See
15
Catalina Mktg. In’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
16
At oral argument, the parties informed the Court that they had stipulated that they
17
now agreed that the entire preamble constitutes a limitation. Dkt. No. 396 at 68.
18
Accordingly, the Court concludes that the entire preamble is a limitation as the preamble
19
cannot be parsed into limiting and non-limiting portions. See Blue Calypso, Inc. v.
20
Groupon, Inc., 93 F. Supp. 3d 575, 594 (E.D. Tex. 2015).
21
22
23
24
25
26
27
28
30
17-cv-00108-GPC-MDD
1
2.
2
Apple
and
3
CM
“reverse link busy bit”
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
“reverse link busy bit”
4
5
information sent by a base station
6
indicating whether its reverse link capacity indicating whether the transmitting base
7
has been exhausted, i.e., has no remaining
station has reached a reverse link capacity
8
capacity
limit
information sent by the base station
9
10
Next, the parties ask the Court to construe the term “reverse link busy bit.” The
11
parties agree that this term is “information sent by a base station indicating whether” a
12
certain condition exists, and disagree on the construction of this condition. Apple
13
contends that the condition is “whether its reverse link capacity has been exhausted, i.e.,
14
has no remaining capacity.” AOCB at 15. Qualcomm contends that this condition is
15
“whether the base station has reached a reverse link capacity limit.” QOCB at 20.
16
Claim Language
17
The Court begins with an analysis of the claim language. Both Qualcomm and Apple
18
cite to the Preamble of Claim 1 of the ‘549 patent to support their positions. AOCB at 16;
19
QOCB at 20. The preamble states: “In a communication system in which each base station
20
in communication with a remote station transmits a reverse link busy bit indicating whether
21
its reverse link capacity has been exhausted . . .” JA37 at 11:63-67. Apple does not cite
22
additional claim language to support its construction. In its responsive brief, Qualcomm
23
cites claim 9, which states: “the reverse link busy bit indicating when a base station has
24
reached its reverse link capacity limit.” The claim language teaches that the critical term
25
to define here is “exhausted.” The Court turns to the specification to do so.
26
27
28
Specification
Both parties point to a particular aspect of the specification to support their
31
17-cv-00108-GPC-MDD
1
respective constructions. In describing a mobile station communicating with multiple base
2
stations, the specification states:
3
It should be noted that the power control commands from different base
4
stations may have different values and so cannot be combined meaningfully.
5
That is base station 102 may have exhausted its reverse link capacity while
6
base station 104 may still have remaining reverse link capacity, and as such
7
would transmit reverse link busy bits having different values.
8
JA33 at 4:50-56. Qualcomm argues that this embodiment makes clear that exhausted
9
means reaching a capacity limit. QOCB at 21. Apple, on the contrary, asserts that this
10
statement contrasts an “exhausted” reverse link capacity with one that has remaining
11
capacity. AOCB at 16. Apple contends that the patent teaches that the busy “bit” may
12
only have one of two values, either “0” or “1”, such that there is one value indicating the
13
base station has “exhausted” its reverse link capacity and “another value indicating the base
14
station ha[s] remaining reverse link capacity.” Id. (citing JA35 at 7:16-17).
15
Apple’s construction fails to take into account that Qualcomm’s construction is not
16
antithetical to the premise that the “bit” value would be zero so long as the base station had
17
“exhausted” its reverse link capacity.
18
“exhausted” as a condition when the base station reaches its “reverse link capacity limit.”
19
Under Qualcomm’s construction, the bit value would be “0” when the base station reaches
20
a reverse link capacity limit, and would be “1” when it has not. Pertinently, the difference
21
is that a reverse capacity limit could be reached while the base station still has some reverse
22
link capacity. As such, a reverse link capacity limit need not have “no remaining capacity.”
23
Accordingly, Apple’s citation to this part of the specification does not support the “has no
24
remaining capacity” definition of “exhausted.” Moreover, the Court agrees that
25
Qualcomm’s construction is more accurately derived from the specification and stays “true
26
to the claim language.” See In re Papst Licensing Digital Camera Patent Litigation, 778
27
F.3d 1255, 1261 (Fed. Cir. 2015).
28
Qualcomm’s construction effectively defines
32
17-cv-00108-GPC-MDD
1
Qualcomm supports its construction by reference to the specification’s repeated
2
statements that a reverse link busy bit indicates when a base station has reached a “reverse
3
link capacity limit.” The Court agrees that this weighs greatly in favor of Qualcomm’s
4
construction. Statements throughout the specification compel the conclusion that a reverse
5
link busy bit indicates whether a link has reached its “capacity limit.” See, e.g., JA32 at
6
2:40-44 (stating that for an exemplary embodiment reverse link busy bits are . . . “indicative
7
of whether the transmitting base station has reached a reverse link capacity limit.”); id. at
8
2:24-27 (“The reverse link busy bit indicates when the base station has reached its reverse
9
link capacity limit.”); JA21 at Abstract (“Reverse link busy bits are independently
10
generated by each base station and indicative of whether the transmitting base station has
11
reached a reverse link capacity limit.”); id. (remote station, in a first exemplary
12
embodiment, transmits a reverse link signal only when all of the reverse link busy bits
13
indicate that the base stations in the remote stations Active Set have reverse link capacity);
14
4:19-21 (“The reverse link busy bits indicate that the reverse link capacity limit of the base
15
station has been reached”); JA34 at 6:43-47 (rate determination element 510 inhibits
16
transmission of the reverse link signal when any of the busy bits from a base station in the
17
Active Set indicate that the reverse link capacity limit for that base station has been
18
reached).
19
Accordingly, Qualcomm’s intrinsic evidence strongly supports a construction that a
20
reverse link busy bit indicates whether the transmitting base station has reached a “reverse
21
link capacity limit.” Further, it supports a construction that “exhausted” in the context of
22
claim 1 of the ‘541 patent means reaching a “reverse link capacity limit.”
23
Extrinsic Evidence
24
Apple contends that the ordinary meaning of exhausted means that capacity is
25
“exhausted” when there is no remaining capacity. See AEX19 at 29 (Webster’s II New
26
College Dictionary defining “exhaust” as “to use up” or wear out completely.”); AEX21 at
27
36 (defining “exhaust” as “consume or use up the whole of”).
28
Qualcomm, relying
33
17-cv-00108-GPC-MDD
1
exclusively on intrinsic evidence, contends that Apple’s extrinsic evidence is not relevant
2
in comparison to the definitions provided in the specification and claim language.
3
The Court agrees with Qualcomm. In light of the strength of the intrinsic evidence,
4
Apple’s citations to extrinsic evidence should be afforded minimal weight. See Novartis
5
Pharm. Corp. v. Abbott Labs., 375 F.3d 1328, 1335 (Fed. Cir. 2004) (extrinsic evidence
6
may not “be used to vary, contradict, expand, or limit the claim language from how it is
7
defined, even by implication, in the specification.”). The Court makes a further
8
observation––not all dictionary definitions conclusively support Apple’s “consume
9
entirely” or “use up entirely” construction. For example, Merriam Webster’s Collegiate
10
Dictionary Eleventh Edition (2003) provides alternative definitions of “exhaust,” including
11
“to tire extremely or completely” and “to deprive of a valuable quality or constituent.”16
12
Such a definition would necessarily indicate that “exhausted” could mean to use up almost
13
entirely.
14
Apple’s expert Jonathan Wells, PhD submitted a declaration that is largely
15
duplicative of the arguments made in Apple’s opening and responsive claim construction
16
briefing. The Court accordingly affords little weight to the Wells Declaration regarding
17
this patent. See JA260-264. However, the Court does find salient the fact that Dr. Wells
18
conceded in his deposition that the ‘549 patent did not expressly define “exhausted” as “no
19
remaining capacity.” See QEX20 at 77:4-78:16.
20
Court’s Construction
21
Based on the above reasoning, the patent’s claim language, the specification, and the
22
extrinsic evidence, the Court will construe the term “reverse link busy bit” to mean
23
“information sent by a base station indicating whether its reverse link capacity has been
24
exhausted, i.e., whether it has reached a reverse link capacity limit.” By doing so, the Court
25
26
27
28
The Court observes that the modern Merriam-Webster online dictionary defines “exhausted,” to mean
“completely or almost completely depleted of resources or contents.” See Merriam-Webster, available
at https://www.merriam-webster.com/dictionary/exhausted.
16
34
17-cv-00108-GPC-MDD
1
makes clear that the primary basis of the construction derives from claim 1’s “exhausted”
2
language, while recognizing that the entirety of the patent, particularly language in the
3
specification and in another claim, suggests that “exhausted” means reaching a “reverse
4
link capacity limit.” See Philips, 415 F.3d at 1314 (“Because claim terms are normally
5
used consistently throughout the patent, the usage of a term in one claim can often
6
illuminate the meaning of the same term in other claims.”); id. at 1315 (stating that usually
7
the specification is “dispositive; it is the single best guide to the meaning of a disputed
8
term.”).
9
D.
‘822 Patent
10
The ‘822 patent is an improvement in the acknowledgment process for a base station
11
to grant access to a mobile station, by using location information to reduce the required
12
power to send acknowledgment messages. JA50 at Abstract. Prior to this invention, a
13
mobile station would send a preamble sequence to a base station, which would respond by
14
sending an acknowledgment message—at full power because the base station is unaware
15
of the mobile station’s location—back to the mobile station. JA70 at 2:4-14. The ‘822
16
patent overcomes the issue by dividing the preamble sequences into multiple sets based on
17
different channel qualities. JA70 at 2:18-23. The channel quality is estimated based on a
18
“metric of forward link geometry.” Id. at 2:36-30. The parties dispute the construction of
19
this term.
20
1. “metric of forward link geometry”
21
Apple
22
Construction
and
CM
Parties’
23
Proposed Qualcomm’s Proposed Construction
“metric of forward link geometry”
24
Measure that utilizes observed power and
A measurement of one or more
25
noise on a forward link
characteristics of a signal indicating the
26
quality of the forward link channel
27
28
35
17-cv-00108-GPC-MDD
1
Claim Language
2
Claim 12 recites an apparatus comprising: “a processor configured to determine a
3
metric of forward link geometry as a function of an observed transmission, wherein said
4
observed transmission is selected from a group consisting of pilot signals, noise, and traffic
5
on data channels, or any combination thereof, and to determine an estimate of channel
6
quality as a function of at least the metric of the observed transmission.” JA75 at 12:8-17.
7
The parties agree that a “metric of forward link geometry” is a measurement of the
8
forward link channel, but dispute whether the measurement is “based on one or more
9
characteristics of the signal” (Qualcomm) or whether the measurement must always use
10
“power and noise.” (Apple).
11
Qualcomm emphasizes the claim language, defining an “observed transmission” as
12
“selected from a group consisting of pilot signals, noise, and traffic on data channels, or
13
any combination thereof.” JA75 at 12:13-15. To Qualcomm, the use of the disjunctive
14
“or” demonstrates that the metric of forward link geometry may, but does not always
15
require both power and noise. Apple, in contrast, cites the “observed transmission” claim
16
language to argue that nothing in this claim states that “forward link geometry” can be
17
calculated without noise.
18
Apple’s argument is a distortion of the plain language of the claim, which clearly
19
indicates that pilot signals [power], noise, and traffic on data channels, “or any combination
20
thereof” could be considered in the metric of forward link geometry. Accordingly, the
21
plain meaning of the claim language does not support Apple’s construction limiting the
22
construction to require both “power and noise.” Nonetheless, the plain meaning of the
23
claim also does not support Qualcomm’s overly broad construction requiring only a
24
“measurement of one or more characteristics of a signal.”
25
specification.
26
27
28
The Court turns to the
Specification
In support of its argument that “forward link geometry” is unambiguously defined
36
17-cv-00108-GPC-MDD
1
to require both power and noise, Apple points to an embodiment in the specification, which
2
states:
3
In an embodiment, observations of forward link geometry are used. For
4
example, metrics such as C/I, where C is the received pilot power and I is the
5
observed noise, may be used. Also C/(C+I) may be used. In other words,
6
some measure that utilizes observed signal power and noise is used.
7
JA 72 at 6:54-59 (emphasis added). According to Apple, this specification language
8
teaches that only power and noise may be used as the requisite metrics of forward
9
link geometry. The Court disagrees. That a single embodiment requires both power
10
and noise as the requisite metric does not mean that that all embodiments of this
11
patent must necessarily also require power and noise. See Williamson, 792 F.3d at
12
1346-47 (cautioning against “limiting the claimed invention to preferred
13
embodiments or specific examples in the specification.”).
14
Qualcomm, meanwhile, references several points in the specification where the ‘822
15
Patent teaches that the metric of forward link geometry may be determined “as a function
16
of observed pilot signals, noise, and/or traffic on data channels.” JA70 at 2:35-37. See
17
also JA72 at 6:61-7:3 (“For example, Region R1 defines a Region having CQI values
18
corresponding to power and/or noise levels greater than P1.”). Qualcomm argues that this
19
language can, but does not require the use of power and noise, as “and/or” indicates two
20
or more alternatives. The Court agrees with Qualcomm’s construction insofar as the case
21
law clearly indicates that the use of “and/or” indicates two or more alternatives that may
22
be taken together or individually. See Cipher Pharms. Inc. v. Actavis Labs. FL, Inc., 99 F.
23
Supp. 3d 508, 518 (D.N.J. 2015) (“and/or” is a function word to indicate that “two words
24
or expressions are to be taken together or individually.”).
25
The specification, accordingly, makes clear that signal power and noise are
26
unquestionably aspects of the signal that the patent holder intended to be considered as a
27
“metric of forward link geometry.” The pertinent questions, then, are whether (1) power
28
37
17-cv-00108-GPC-MDD
1
and noise are the only characteristics to be considered and (2) whether both power and
2
noise are required in this construction.
3
Prosecution History
4
During prosecution, the applicant amended his original claim—“determining a
5
metric of observed transmission”––to the revised language “determining a metric of
6
forward link geometry as a function of an observed transmission.” See AEX36 at 206.
7
Apple asserts that Qualcomm cannot ignore this explicit limitation. Nonetheless, Apple
8
fails to note that the amended claims in the prosecution history also set forth the limiting
9
definition of “observed transmission” to be “pilot signals, noise, and traffic on data
10
channels, or any combination thereof.” AEX36 at 204, 206. Accordingly, the Court
11
concludes that the prosecution history is of limited value, except to the extent that it
12
reinforces that a metric of forward link geometry was explicitly limited to a specific
13
definition of “observed transmission” such that an observed transmission could constitute
14
“any combination thereof” of “pilot signals, noise, and traffic on data channels.” See
15
AEX36 at 206.
16
Extrinsic Evidence
17
Apple asserts that one of ordinary skill in the art would understand “forward link
18
geometry” to include both power and noise values. See AOCB at 19 (citing AEX22-26––
19
contemporaneous documents from cellular standards organizations). Furthermore, Apple,
20
citing its expert Dr. Bims, asserts that noise is inherently included in the process of
21
determining both a pilot signal or traffic. AEX27 (Bims. Tr.) at 167:25-168:4 (“[o]bserved
22
signal power is what is selected from the group of what is received.”). In contrast,
23
Qualcomm’s expert Dr. Villasenor asserts that “geometry” can be used in the wireless
24
communications context to constitute more than signal power and noise. JA449 ¶¶ 49-50.
25
In light of the clarity of the intrinsic evidence, the Court affords minimal weight to
26
the extrinsic evidence and is not persuaded that it lends significant support for Apple’s
27
construction.
28
38
17-cv-00108-GPC-MDD
1
Construction
2
Based on the plain language of the claim, the Court concludes that power and noise
3
are not the only aspects that may be included in determining the “metric of forward link
4
geometry.” See JA75 at 12:13-15 (“observed transmission is selected from a group
5
consisting of pilot signals, noise, and traffic on data channels, or any combination
6
thereof.”). The plain language, in particular the “any combination thereof” language,
7
indicates that power and noise are not the exclusive parameters of this term. Nonetheless,
8
neither party seeks to offer constructions of other specific elements that can comprise a
9
metric of forward link geometry.17
10
Next, the claim language and specification teach that power or noise is a
11
reasonable reading of “observed transmission” as defined in this claim. See JA75 at
12
12:13-15 (“or any combination thereof.”); JA70 at 2:35-37 (defining metric of forward
13
link geometry as a “function of observed pilot signals, noise, and/or traffic on data
14
channels.”). Moreover, based on Qualcomm’s oral argument at the claim construction
15
hearing, the Court will add language to clarify that “power and noise” can also be a
16
metric of forward link geometry. Dkt. No. 396 at 90.
17
Given the clarity in the intrinsic evidence, the Court affords minimal weight to
18
Apple’s extrinsic evidence. Accordingly, the Court agrees with Qualcomm to the extent
19
that (1) power and noise are not the exclusive metrics relied upon in this term and (2) that
20
power or noise is an acceptable construction.
Nonetheless, Apple is correct that “Qualcomm’s construction, which requires no
21
22
specific parameters and encompasses any indication of channel quality” is overbroad and
23
frustrates the purpose of the alleged invention. AOCB at 20. Under Qualcomm’s broad
24
25
26
27
28
At oral argument, Qualcomm asserted that they could “live with” the Court’s construction of power or
noise, and were not concerned about other aspects of the metric. Apple did not contest this assertion.
Dkt. No. 396 at 90.
17
39
17-cv-00108-GPC-MDD
1
construction––“A measurement of one or more characteristics of a signal”18—irrelevant
2
characteristics like modulation and frequency that do not provide sufficient information
3
for the base station to capture spatial distance (aka, geometry)––could be considered as
4
part of the metric of forward geometry. This would frustrate the very purpose of the
5
invention to transmit information indicating spatial distance and allow for a lower power
6
acknowledgment to a mobile station. See AK Steel Corp. v. Sollac, 344 F.3d 1234, 1239-
7
40 (Fed. Cir. 2003) (claims should be interpreted consistent with stated purposes and
8
goals of the invention). The Court also finds the Declaration of Harry Bims persuasive
9
on this issue where he notes that “Qualcomm’s construction would allow the term
10
‘geometry’ to capture characteristics of the signal that have no relationship to the spatial
11
distance, such as the frequency or modulation of the signal, which is improper.” JA171.
12
Accordingly, based on the claim language, the specification, and the extrinsic
13
evidence, the Court concludes that a “metric of forward link geometry” is a measurement
14
that utilizes “observed (1) power and noise or (2) power or (3) noise on a forward link
15
channel.”
‘469 Patent
16
E.
17
The ‘469 patent is a method and apparatus for quick retransmission of signals in a
18
communication system. JA85 at 1:8-28. Upon detection of missing or erroneously
19
received packets at a receiving terminal, the receiving terminal uses a quality metric to
20
determine if the packet is correctly received, and then sends a feedback signal to indicate
21
whether retransmission has been requested. JA78 at Abstract.
22
23
24
25
26
27
28
18
After the tentative order was issued, Qualcomm no longer sought this construction at the Markman
hearing. Dkt. No. 396 at 90.
40
17-cv-00108-GPC-MDD
1. “unit(s) of signal”/ “unit of received signal”19
1
2
Apple
and
3
CM
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
“unit(s) of signal” / “unit of received signal”
4
5
A preamble, a payload, and a quality
[Original Construction]
6
metric
This term should be given its plain and
7
ordinary meaning.
8
9
[Revised Construction]
10
A portion of a signal including at least a
11
payload and a quality metric20
12
13
Claim Language
14
Independent Claim 1 of the ‘469 patent recites “an apparatus configured to
15
retransmit signals in a communication system comprising: a decoder configured to
16
decode contents of a unit of a received signal . . .” JA89 at 10:33-37. Claim 2, a
17
dependent claim, recites “[t]he apparatus of claim 1 wherein the unit of signal is a
18
packet.” JA89 at 10:35-37.
19
20
Independent Claim 11 recites “An apparatus configured to retransmit signals in a
communication system, comprising: a decoder configured to decode contents of a unit of
21
22
23
24
25
26
27
28
19
At the Claim Construction hearing, Qualcomm abandoned its request for a plain and ordinary meaning
construction, conceding that no jury could ascribe a plain and ordinary meaning to this term. Dkt. No.
396 at 94. On March 23, 2018, the Court ordered supplemental briefing regarding this term. Dkt. No.
391. As the Court is not wholly satisfied with Apple’s construction which it recognizes is using the
definition of “packet” in the specification to define “unit of signal,” the Court will allow new argument
regarding Qualcomm’s revised construction.
20
In its initial email to Apple, Qualcomm appears to have proposed a substantially similar construction
that included a reference to a “payload unit.” AEX37. Qualcomm’s supplemental brief no longer seeks
this construction. Dkt. No. 401. See also Dkt. No. 400 at 5 (Apple’s argument that “payload unit” is an
improper construction).
41
17-cv-00108-GPC-MDD
1
received signal.” JA90 at 11:7-9. Claim 2, dependent on this claim, states “[t]he
2
apparatus of claim 11 wherein the unit of signal is a packet.” JA90 at 11:20-21.
Apple contends that other elements of claims 1, 11, and 21 require “a quality
3
4
metric of said unit of signal” and “a preamble of said unit of signal.” JA89 at 10:39-41;
5
JA90 at 11:15-16.
Because the pertinent definition of “packet” is defined in the specification, the
6
7
Court concludes that the claim language standing alone does not provide any particular
8
insight into the proper construction of “unit of signal” and “unit of received signal.”
9
Specification
10
Apple’s primary argument is that the specification provides a definitive definition of
11
“unit of signal.” Specifically, Apple points to a statement in the “BACKGROUND OF
12
THE INVENTION” subtitled “Description of the Related Art” defining a “packet”:21
13
Unless defined differently, a packet is a unit of a signal comprising a
14
preamble, a payload, and a quality metric.
15
JA85 at 1:22-24. Apple relies upon this definition of a “packet” to apply to “unit of signal”
16
so that a unit of a signal (and received signal) must always comprise a preamble, payload,
17
and quality metric in the context of this patent.
18
Qualcomm disagrees and further asserts that claims 2 and 12 recite that the “unit of
19
signal is a packet,” and that under the doctrine of claim differentiation these dependent
20
claims cannot limit the independent claims in claims 1 and 11. QOCB at 16-17 (citing
21
Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir. 2016)
22
(“Thus, in a situation where dependent claims have no meaningful difference other than an
23
added limitation, the independent claim is not restricted by the added limitation in the
24
dependent claim.”)).
25
26
27
28
The Court notes that Apple’s constrained definition of “unit of a signal” arises in the context of a
definition of the term packet, not a definition of the term unit of signal.
21
42
17-cv-00108-GPC-MDD
1
Extrinsic Evidence
2
Apple’s expert Dr. Wicker asserts that the claimed invention cannot even work if
3
“unit of signal” does not mean “a preamble, payload, and a quality metric.” Wicker points
4
to Figure 4 of the patent indicating the necessity of the preamble, quality metric, and
5
payload in performing the method outlined in this patent. See JA319 at ¶65; JA87-88 at
6
6:63-7:25. Dr. Wicker also asserts that a POSITA would not have found an ordinary
7
meaning to the contested terms at the time the patent was filed. Apple has not provided a
8
supplemental declaration by Dr. Wicker to challenge Qualcomm’s revised construction.
Court’s Revised Construction
9
10
At the Markman hearing, Qualcomm abandoned its request for a plain and ordinary
11
meaning construction and proposed a new construction such that unit of signal be
12
construed as “preamble, payload unit, quality metric, individually and collectively.”
13
AEX38 at 100:22-23. In its supplemental brief Qualcomm has, once again, pivoted its
14
requested construction to now be a “portion of a signal that includes at least a payload
15
and a quality metric.” Dkt. No. 401 at 1.22 While the Court admonishes Qualcomm for
16
its repeatedly tardy constructions, the Court observes that Qualcomm’s revised offering is
17
a more accurate assertion of what can constitute a “unit of signal” in the ‘469 patent.
The parties’ revised dispute now revolves around whether a “preamble” is always
18
19
required to be part of a “unit of signal.” The Court concludes that Apple’s construction is
20
not entirely accurate as it uses the definition of “packet” to define “unit of signal.”
21
Qualcomm’s primary argument is that a preamble is not a required component, but can
22
be a component of a unit of signal as used in the ‘469 patent. See Dkt. No. 401 at 1-4.
23
Qualcomm concedes that in at least some cases, such as in Claim 11, a preamble
24
constitutes a part of a unit of signal. Dkt. No. 401 at 4.
25
26
27
28
Qualcomm asserts that in response to the Court’s question regarding whether a quality metric could be
an individual unit, “upon further consideration of the Court’s question” Qualcomm now believes the
answer is “no” such that a unit of signal now must constitute the “portion of a signal that includes at
least a payload and a quality metric.” Dkt. No. 401 at 2 n.1.
22
43
17-cv-00108-GPC-MDD
1
To illustrate that the ‘469 Patent teaches that a preamble is not required to be part
2
of a unit of signal, Qualcomm points to an embodiment:
3
In an exemplary embodiment, a preamble is transmitted within a new packet.
The preamble enables identification of the intended destination MS [mobile
station] during decoding. In an exemplary embodiment, only the first time
slot of the multiple-slot packet is transmitted with the preamble. The
preamble could alternatively be transmitted in every forward link time slot.
JA87 at 6:21-34. Qualcomm asserts that in this case the preamble could be sent with
4
5
6
7
8
9
only the (1) first payload unit in the series or (2) with every time slot, i.e., with each
payload unit in the series. Claim 1 recites that decoding of a unit of signal is prevented
“if an indication received on a control channel indicates that said unit of signal is not to
10
be decoded.” The above embodiment indicates that a unit of signal can be sent without a
11
preamble because the “indication received on a control channel” can be sent before a
12
“series of associated payload units of signal, or alternatively, by information on a control
13
14
15
16
17
18
19
20
21
22
23
channel sent before each associated payload unit of signal.” Dkt. No. 401 at 4. Thus, the
unit of signal described in Claim 1 need not always require a preamble and could be
satisfied solely by a payload and quality metric. See JA89 at 10:39-45 (“and to prevent
decoding of said unit of signal if an indication received on a control channel indicates
that said unit of signal is not to be decoded.”). Apple’s assertion that claim 11 requires a
unit of signal to always include a preamble is not persuasive; the Court reads claim 11 to
only indicate that a preamble may be part of a unit of signal. See JA90 at 5-20 (“a
preamble detector configured to decode a preamble of said unit of signal; and wherein
said first processor is further configured to prevent decoding of said unit of signal if said
preamble indicates that said unit of signal is not to be decoded.”). Moreover, the Court
observes that not always requiring a preamble honors the doctrine of claim differentiation
24
by not reading into the independent claims 1 and 11 the definition of “packet” appearing
25
in dependent claims 2 and 12. See InterDigital Commc’ns, LLC v. ITC, 690 F.3d 1318,
26
1324 (Fed. Cir. 2012).
27
28
44
17-cv-00108-GPC-MDD
1
Nevertheless, the Court will not accept Qualcomm’s construction in full. As Apple
2
points out, Qualcomm has presented no evidence to indicate that the language “portion of
3
a signal” should be included in the construction. The Court concludes that such language
4
would be untethered to the specification and the claim language.
Accordingly, the Court will construe unit(s) of signal” / “unit of received signal as
5
6
“a preamble, a payload, and a quality metric” OR “a payload and a quality metric.” By
7
doing so, the Court makes clear that a preamble can be but is not a required component of
8
a “unit of signal.”
9
F.
‘725 Patent
U.S. Patent No. 7,095,725 (“the ’725 Patent”) aims to decrease delays and improve
10
11
data transmission between cell phones and cell towers. JA142 at Abstract. Specifically,
12
the ’725 Patent deals with situations where a cell phone does not have data to transmit,
13
and the data-justified rate subsequently drops to zero. QOCB at 28. A sudden drop in
14
data-justified rate23 causes cell phone delay as the data-justified rate needs time to “ramp
15
back up.” Id. at 29 (citing JA142 at Abstract). The ’725 Patent addresses this issue by
16
the utilization of a “dummy rate” that constrains the data-justified rate “to decrease in a
17
controlled manner” and prevents the rate from suddenly dropping to zero. JA142 at
18
Abstract. The “data-justified rate is compared to the dummy rate and is not allowed to
19
fall below the dummy rate.” JA152 at 3:28-33. Preventing a sudden drop in data-
20
justified rate ensures that a cell phone will not experience delays when the phone
21
increases transmission rate for functions like real-time video.
The Parties disagree over “dummy rate” as it appears in Claim 10 of the claim
22
23
24
25
26
27
28
The ‘725 patent teaches that “data-justified rate is essentially the maximum rate that can be justified
by the amount of data that is queued for transmission by the access terminal.” JA151 at 2:5-8. If there
is no data in the access terminal’s transmission queue, then no transmission rate at all is justified. JA151
at 10-12. As such, a data-justified rate is the rate warranted in view of how much data the mobile station
needs to send at a given time. A “ramp-up-limited rate is the maximum rate that is allowed, considering
the fact that a rapid ramp-up will suddenly increase the interference perceived by other access terminals
and will degrade their performance.” JA151 at 13-16.
23
45
17-cv-00108-GPC-MDD
1
language.24 JA158 at 16:31-34. This analysis proceeds in two parts. First the Court
2
analyzes whether dummy rate should be construed to “decay” or “decrease.” Apple
3
describes “dummy rate” as a rate which can “decay in a predetermined manner.”
4
Qualcomm describes “dummy rate” as being able to “decrease in predetermined manner
5
over time without reaching zero.” Id. (emphasis added). Second, the Court analyzes
6
whether the term “dummy rate” should include a negative limitation indicating that a
7
dummy rate cannot reach zero.
8
Apple
and
9
CM
Parties’
Proposed Qualcomm’s Proposed Construction
Construction
“dummy rate”
10
11
a rate which is allowed to decay in a
a rate that may decrease in predetermined
12
predetermined manner
manner over time without reaching zero
13
14
1. “dummy rate” –– decrease v. decay
15
Claim Language
16
While Claim 10 addresses “dummy rate,” Claim 10 does not mention “decay” or
17
“decrease.” JA158 at 16:31-34. “Decay” does not appear in the claim language, and
18
“decrease” appears four times, in Claims 2, 3, 11 and 12, when describing “dummy rate.”
19
JA158-59. The ’725 Patent’s claim language states:
20
2. The method of claim 1, wherein the dummy rate decreases by
a fraction per one or more transmission frames.
3. The method of claim 1, wherein the dummy rate decreases by
a predetermined number of rate index levels per one or more
transmission frames.
11. The apparatus of claim 10, wherein the dummy rate
decreases by a fraction per one or more transmission frames.
12. The apparatus of claim 10, wherein the dummy rate
decreases by a predetermined number of rate index levels per
one or more transmission frames.
21
22
23
24
25
26
27
24
28
See Exhibit A of the Joint Claim Construction Chart. Dkt. No. 217-1 at 68.
46
17-cv-00108-GPC-MDD
1
2
JA158 at 15:45-50, 16:34-39 (emphasis added).
Specification
3
Apple argues dummy rate “is not a common, well-understood term” in the wireless
4
5
telecommunications community, and the best source of interpretation is the patent
6
specification. AOCB at 29. Apple refers to language from the patent specification that
7
states:
8
“[T]he decrease in the second data transmission rate is constrained by
9
controlling decreases in the data-justified rate. This is accomplished in one
10
embodiment by maintaining a dummy rate which is allowed to decay in a
11
predetermined manner. The conventionally calculated data-justified rate is
12
compared to the dummy rate and is not allowed to fall below the dummy rate.”
13
Id. at 29-30 (quoting JA152 at 3:27-31) (emphasis added). Apple describes this process
14
as “a controlled decay” that satisfies the ’725 Patent’s stated goal. AOCB at 30. The
15
patent specification mentions “decay” when describing “dummy rate” in two other
16
instances: (1) in a description of how the processor controls the data-justified rate through
17
“maintaining a “dummy rate” which is caused to decay in a predetermined manner.”
18
JA152 at 3:49-53 and (2) in a description stating that the “dummy rate” can “prematurely
19
decay” in response to changes in data-justified rate. JA156 at 11:55-61.
20
Qualcomm references the Abstract to argue that “dummy rate” constrains the data-
21
justified rate “to decrease in a controlled manner.” QOCB at 29 (quoting JA142 at
22
Abstract). The patent specification introduces the term “decay factor.” JA 142-59. A
23
“decay factor” can be used “to decrease the value of a dummy rate.” JA156 at 11:26-28.
24
Extrinsic Evidence
25
Apple’s expert witness, Dr. Jonathan Wells, gives a declaration in support of
26
Apple’s claim construction brief. Joint Ex. 11. In his declaration, Dr. Wells suggests that
27
a personal of ordinary skill in the art (“POSITA”) for the ’725 Patent has a bachelor’s
28
47
17-cv-00108-GPC-MDD
1
degree in engineering and two-plus years of experience with telecommunications
2
networks. Dkt. No. 301-1 at 245. Dr. Wells considers himself a POSITA. Id. He
3
believes the patent specification supports use of “decay” and specifically allows the
4
“dummy rate” to “prematurely decay.” Id. at JA248-50. Dr. Wells argues that
5
Qualcomm fails to cite any extrinsic evidence in support of its construction, and given
6
Apple’s intrinsic evidence, a POSITA would understand “dummy rate” as “a rate which
7
is allowed to decay in a predetermined manner.” Id. at JA255-57. Dr. Wells contends
8
Qualcomm’s use of “may decrease” instead of “decay” does not carry the same
9
connotation to a POSITA. Id. at 293.
10
Qualcomm chooses not to provide any extrinsic evidence. Apple argues that
11
Qualcomm is unable to provide any extrinsic evidence that supports Qualcomm’s
12
construction. AOCB at 30.
13
Court’s Construction
14
Courts consider intrinsic evidence to be “the most significant source of the legally
15
operative meaning of disputed claim language.” Vitronics Corp., 90 F.3d at 1582. Most
16
of the time, analyzing “the intrinsic evidence alone will resolve any ambiguity in a
17
disputed claim term. Id. at 1583. Here, because “decay” and “decrease” appear multiple
18
times in the intrinsic evidence and both parties cite to the intrinsic evidence, the Court
19
determines that intrinsic evidence alone is sufficient to resolve this dispute. See Pall
20
Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995) (suggesting that
21
in situations where intrinsic evidence is sufficient to determine the meaning of a disputed
22
term, a court should not rely on extrinsic evidence). Accordingly, the Court will not rely
23
on the Wells Declaration for purposes of this analysis. See Markman, 52 F.3d at 979.
24
The Court finds that although “decrease” is not used to describe “dummy rate” in
25
Claim 10, the fact that dummy rate is described with “decrease” in other parts of the
26
surrounding claim language weighs significantly in favor of Qualcomm’s construction.
27
See Conoco, Inc. v. Energy & Environmental Intern., L.C., 460 F.3d 1349, 1362 (Fed.
28
48
17-cv-00108-GPC-MDD
1
Cir. 2006) (“search for the ordinary and customary meaning of a claim term” can “be
2
informed by the surrounding claim language”). Further, the Court determines that
3
because “decrease” is found in surrounding claim language and because the patent
4
specification does not offer an explanation for using “decay” instead of “decrease” in
5
several instances, “decay” is essentially a synonym for “decrease” and not a replacement.
6
See Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1368 (Fed. Cir. 2007)
7
(determining that “composite material” was just a synonym for “composite composition”
8
and not an entirely different expression.). The claim language favors the use of
9
“decrease” over “decay,” and the Court will construe the term accordingly.25
10
2.
“dummy rate” –– reaching zero
11
Qualcomm seeks to impose a “negative limitation” in the definition of dummy rate
12
such that a dummy rate may decrease in a predetermined manner over time “without
13
reaching zero.”
14
specification describes a reason to exclude the relevant limitation. Santarus, Inc. v. Par
15
Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); Omega Eng'g, Inc. v. Raytek Corp.,
16
334 F.3d 1314, 1322-23 (Fed. Cir. 2003) (declining to add a negative limitation when there
17
was no “express disclaimer or independent lexicography in the written description that
18
would justify adding that negative limitation”). See also Parthenon Unified Memory
19
Architecture LLC v. ZTE Corp., No. 215CV00225JRGRSP, 2016 WL 310174, at *8 (E.D.
20
Tex. Jan. 25, 2016) (“The inclusion of a negative limitation within a claim construction
21
generally requires support from the intrinsic evidence.”).
Negative claim limitations are adequately supported when the
22
In its tentative order, the Court tentatively agreed with Qualcomm that the purpose
23
of the invention would be frustrated without the imposition of the negative limitation
24
“without reaching zero.”
Upon reconsideration of the briefing, oral argument, the
25
26
27
28
At the Markman hearing, Apple conceded that it was prepared to “essentially give up on” the “decay”
construction as it did not believe there was a significant difference between decay and decrease. Dkt.
No. 396 at 116-117.
25
49
17-cv-00108-GPC-MDD
1
supplemental briefing, and particularly the Declaration of Dr. Wells, the Court will decline
2
to impose the negative limitation based on the reasoning provided below.
3
4
5
6
7
a) Claim Language
There is no claim language that explicitly addresses whether “dummy rate” can reach
zero. The Court turns to the specification to address this issue.
b) Specification
Apple contends that nothing in the intrinsic evidence suggests that the “dummy
8
rate” cannot reach zero, and indeed that the patent specification provides specific
9
examples where the “dummy rate” does drop to zero. AOCB at 30 (citing JA156 at
10
11:64-12:05). In its responsive brief, Apple argues that because Qualcomm stresses the
11
importance of preventing “sudden” drops of data-justified rate so frequently, preventing
12
“sudden” drops is the true purpose of the ’725 Patent, and Apple’s construction
13
accomplishes this purpose. ARCB at 13-14. Apple contends that Qualcomm fails to
14
provide any specific examples as to why the “dummy rate” cannot reach zero. Id. Apple
15
argues “Qualcomm’s construction improperly grafts on the negative limitation that the
16
rate cannot equal zero.” AOCB at 30 (citing Omega Eng’g, Inc. v. Raytek Corp., 334
17
F.3d 1314, 1323 (Fed. Cir. 2003)).
18
Qualcomm argues that both the intrinsic evidence and purpose of a “dummy rate”
19
support construing “dummy rate” to be a rate that cannot reach zero. QOCB at 29.
20
According to Qualcomm, allowing the data-justified rate to drop to zero creates delays in
21
transmitting time-sensitive data, and that this is precisely what the ’725 Patent aims to
22
prevent. Id. Qualcomm explains the “dummy rate,” as described in the ’725 Patent,
23
prevents such sudden drops by not allowing the data-justified rate to fall below the
24
“dummy rate.” Id. Qualcomm posits that because the data-justified rate can never be a
25
negative number and the “dummy rate” need always be below the data-justified rate, the
26
“dummy rate” can never reach zero. Id. at 30. Qualcomm supports this notion by citing
27
the Abstract’s statement that “the data-justified rate is constrained to decrease in a
28
50
17-cv-00108-GPC-MDD
1
controlled manner and cannot suddenly drop to 0.” JA 142 at Abstract. Qualcomm
2
argues that, because one of the purposes of the ’725 Patent is to prevent the data-justified
3
rate from reaching zero, allowing the “dummy rate” to reach zero would frustrate the
4
purpose of the invention. Id. at 30. Qualcomm contends that Apple’s construction would
5
allow the data-justified rate to reach zero and thus require the cell phone to ramp up the
6
data-justified rate from zero, thus causing sporadic data transmission, something the ’725
7
Patent is designed to prevent. Id. Qualcomm claims it is allowed to impose a “negative
8
claim limitation” on the rate because the contention is “adequately supported” and “the
9
specification describes a reason to exclude the relevant limitation.” QRCB at 15 (citing
10
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)).
11
12
c) Extrinsic Evidence
Apple’s expert Dr. Wells contends the patent specification gives specific examples
13
where the “dummy rate” reaches zero. JA255 at 255. Dr. Wells posits that the “dummy
14
rate’s” purpose is to prevent sudden drops in data-justified rate and not to prevent the
15
data-justified rate from reaching zero. JA256 at 1. Dr. Wells argues that Qualcomm’s
16
construction, by stating the “dummy rate” “may decrease,” allows the “dummy rate” to
17
“decrease” from a high numeric value to zero, thus defeating the purpose of “dummy
18
rate” as found in the ’725 Patent. JA293 at 2. Qualcomm claims it does not provide any
19
extrinsic evidence because its construction comes directly from the intrinsic evidence.
20
QRCB at 15.
21
On March 29, 2018, Apple submitted the Declaration of Jonathan Wells in Support
22
of their Supplemental Claim Construction Brief. AEX39. In that Declaration, Dr. Wells
23
laid out in great detail the step-by-step process described in Figure 5 of the embodiment.
24
JA156 at 11:23-35. Dr. Wells’ revised declaration specifically addressed the Court’s
25
concerns in its Dkt. No. 391 order requesting supplemental briefing as to:
26
Whether the specification supports that a dummy rate establishes a “threshold”––
27
represented by a dotted blue line––that a data-justified rate cannot drop below as
28
51
17-cv-00108-GPC-MDD
1
asserted by Qualcomm in Slides 86 and 87 of their technology tutorial. The parties
2
should include specific citations to the specification in their response.
3
The impact of the embodiment set forth in Figure 5 of the patent and described at
4
JA156 at 11:23-12:8, with particular emphasis on steps (1)-(3) set forth at 11:35-
5
38. The Court is particularly interested regarding (a) the calculation of the dummy
6
rate in comparison to a tentative data-justified rate; (b) what the value R3
7
represents in this embodiment; and (c) the impact of a dummy rate of zero on the
8
process described in this embodiment.
9
In its revised construction discussed below, the Court gives considerable weight to the
10
findings and explanations provided by Dr. Wells.
11
Court’s Construction
12
A party arguing that a particular interpretation would “frustrate the purpose of the
13
invention” must adequately explain their reasoning. See Atlantic Construction Fabrics,
14
Inc. v. Dandy Products, Inc. 64 F. App’x 757 (Fed. Cir. 2003) (determining that plaintiff
15
failed to explain why a certain interpretation would “completely frustrate the purpose of
16
the invention.”). Upon reconsideration, the Court finds that Qualcomm has not
17
adequately shown that a dummy rate of zero would frustrate the purpose of the patent.
18
The core of the parties’ dispute revolves around different conceptions of the
19
purpose of the patent. To Apple, the ‘725 patent prevents the data-justified rate and the
20
access terminal’s rate from dropping “suddenly” or “precipitously.” See JA151 at 2:46-
21
50; JA155 at 10:22-27, 10:36-39; JA156 at 12:14-18. Under Apple’s view, the patent is
22
concerned with a sudden drop from, for example, a rate index of four to a rate index of
23
zero. The dummy rate controls the rate of this drop, by decreasing the data-justified rate
24
by a predetermined amount in each frame. Importantly, Apple’s construction would
25
allow the access terminal’s rate to eventually reach zero.
26
27
28
Qualcomm has consistently asserted that the patent’s goal is to allow the patent to
start off at a higher rate index by never reaching the zero rate index, i.e. to prevent the
52
17-cv-00108-GPC-MDD
1
dummy rate from reaching zero. QEX24 at 4. Under that theory, an access terminal
2
starting from a zero rate index ramping up to four would require four frames to ramp up,
3
while a dummy-rate controlled terminal would require only three frames since a dummy
4
rate would keep an access station at a rate index of 1. See id. As such, Qualcomm argues
5
that the “dummy rate establishes a permanent threshold below which the transmission
6
rate cannot drop.” Dkt. No. 401 at 8.
7
Upon further review, the Court agrees with Apple that the purpose of the ‘725
8
patent is to prevent “sudden” drops in data-justified rate to zero. The specification
9
contains repeated references to preventing sudden drops, but does not indicate that a
10
dummy rate establishes a threshold below which the transmission rate cannot drop. See,
11
e.g., JA142 at Abstract (“In one embodiment, the data-justified rate is constrained to
12
decrease in a controlled manner and cannot suddenly drop to 0.”) (emphasis added);
13
JA151 at 2:30-32 (“If the access terminal runs out of data, the data-justified rate will
14
suddenly drop to zero.”).
15
The Court agrees with Apple that a negative limitation is not warranted here,
16
particularly in light of the embodiment disclosed at Figure 5 and described at JA156-11:23-
17
12:8. The pertinent algorithm for this embodiment is set forth below:
18
19
20
21
22
23
24
25
26
27
28
53
17-cv-00108-GPC-MDD
1
JA156 at 11:34-49. This embodiment describes one possible method of controlling the
2
drop in R3, the data justified rate, through the use of a decay factor. JA156 at 11:23-25.
3
In this embodiment, Rt represents a tentative data-justified rate that is conventionally
4
computed, whereas Rd represents a dummy rate that either has a default value or is
5
previously computed. In step 2, a dummy rate is calculated by taking log2 of a decay
6
factor. Using a decay factor of .5, as suggested in the embodiment, leads to the dummy
7
rate decreasing by -1 in each frame. Accordingly, the specification indicates that:
8
In one embodiment, the decay factor is set to 0.5. In other words, the rate is
9
only allowed to decrease by half each time it is calculated. This is equivalent
10
to dropping by one rate index level . . . An access terminal transmitting at a
11
rate index of 5 would therefore take five frames to drop all the way down to
12
the 0 rate index.
13
JA156 at 11:64-12:2. Qualcomm asserts that this embodiment does not “explicitly or
14
implicitly” state that the “dummy rate goes to zero,” and that this embodiment “does not
15
involve a dummy rate.” Dkt. No. 401 at 7. This assertion is incorrect––this embodiment
16
unquestionably addresses the impact of a dummy rate as it involves and addresses the
17
impact of a decay factor of 0.5, which is part of the dummy rate calculation in Step 2 of
18
the embodiment. See JA156 at 11:37. Moreover, Apple’s expert Dr. Wells’ latest
19
declaration lays out the step-by-step reasoning for why the access terminal’s rate is
20
directly tied to the dummy rate and requires the dummy rate to fall to zero:
21
Because R1, R2, and R4 are always positive numbers, the access terminal’s
22
transmission rate Rnew cannot drop to zero unless the data-justified rate R3 also
23
drops to zero. Moreover, because the data-justified rate R3 cannot fall below
24
the dummy rate Rd (see step (3) above), the access terminal’s transmission
25
rate Rnew cannot drop to zero unless the dummy rate Rd also drops to zero.
26
AEX39 at 13 (emphasis in original). Stated another way, the embodiment utilizing a
27
decay factor of 0.5 described in the patent cannot reach the zero rate index, as explicitly
28
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17-cv-00108-GPC-MDD
1
stated in the patent, without the dummy rate reaching zero. See also AEX39 at 18-19
2
(describing the decrease in Rd from 1 to 0 where R3 would be set to 0, because Rd=0 and
3
Rt=0, thus requiring the access terminal’s transmission rate to decrease to rate index 0 for
4
the next frame). Because the Court is now convinced that the patent explicitly discloses
5
an embodiment where the dummy rate is necessarily required to reach zero, the Court
6
will not impose a negative limitation that the dummy rate cannot reach zero as this would
7
be entirely unsupported by the specification.
Moreover, the Court is not convinced that Qualcomm’s assertion of a “threshold”
8
9
below which the dummy rate does not fall is sufficiently supported by the specification to
10
warrant a negative limitation. In a step-by-step review of Qualcomm’s theory of the ‘725
11
patent as presented at the technology tutorial hearing, Dr. Wells asserts that the
12
technology was inaccurately presented to the Court, as the specification does not provide
13
support that the dummy rate forever remains at a rate index of 1.26 AEX39 at 48
14
(“Nothing in the specification suggests that the dummy rate reaches some kind of
15
artificial limit that it does not fall below (other than reaching the ultimate limit of
16
zero).”). Dr. Wells asserts, and the Court now agrees, that Qualcomm’s theory “directly
17
contradicts the dummy rate algorithm” described in Figure 5. Instead, Dr. Wells’
18
presents a “corrected” version wherein the dummy rate is allowed to eventually drop to
19
zero after five frames. Doing so promotes the purpose of gradually decreasing the data
20
rate down to zero over five frames, rather than suddenly dropping to zero in the first
21
frame. See JA156 at 11:23-12:13. Nothing in the specification cited by Qualcomm
22
unequivocally shows that the patent cannot drop to zero. See, e.g., JA155 at 10:64-67 (“If
23
the queue length drops to zero, R3 will also drop to zero, and the ramp-up process will
24
have to start over, once more causing the delays in transmission.”); JA151 at 2:28-30 (“If
25
26
27
28
Despite the Court’s directive to address the specification’s basis for establishing a “threshold” rate
index, Qualcomm states only that its technology tutorial depicted a controlled ramp-down based on the
“independently maintained” dummy rate, rather than the “decay” dummy rate described throughout the
technology tutorial. QEX24 at 86-87; Dkt. No. 401 at 9.
26
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17-cv-00108-GPC-MDD
1
the access terminal suddenly has enough data to justify a very high rate, the data-justified
2
rate will suddenly increase.”).
Accordingly, the Court will decline to construe a negative limitation such that the
3
4
dummy rate is not allowed to fall to zero. For the foregoing reasons, the Court
5
determines the construction of “dummy rate” is the following: “a rate that may decrease
6
in a predetermined manner over time.”27
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
The Court adds an “a” to correct a typo in Qualcomm’s construction. The Court also maintains the
“may decrease” language as Qualcomm has sufficiently indicated that there are situations contemplated
by the patent where the dummy rate may be independently maintained or even increase. See Dkt. No.
396 at 131-132 (“[t]here are times when you want to reset the dummy rate. It may actually increase back
up before it declines. So it’s not always decreasing, Your Honor.”).
27
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1
2
CONCLUSION AND ORDER
The Court construes the terms at issue as follows:
3
Patent
4
‘021
Court’s Construction
“means for comparing the measured
indefinite
Number
5
Term
6
power level with said at least one
7
threshold value”
8
“means for transmitting to the first
Function: transmitting to the
9
cellular radio system a request for a free
first cellular radio system a
10
time period in which to perform the
request for a free time period
11
measurement, said means being arranged
in which to perform the
12
to transmit the request for the free time
measurement.
13
period in which to perform the
14
measurement only after said measured
Structure: transmitter block
15
power level remains below said at least
604 and equivalents
16
one threshold value”
17
“means for measuring . . .”
Structure: power level
18
determination means 615 of
19
receiver block 611, and
20
equivalents.
21
“means for receiving . . .”
Structure: receiver block 611
22
and equivalents.
23
24
25
26
27
28
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17-cv-00108-GPC-MDD
Term
Court’s Construction
‘630
“means for performing . . .”
indefinite
‘549
Preamble
Entire Preamble is a
1
Patent
2
Number
3
4
5
Limitation
“reverse link busy bit”
6
information sent by a base
7
station indicating whether its
8
reverse link capacity has been
9
exhausted, i.e., whether it has
10
reached a reverse link
11
capacity limit
12
‘822
“metric of forward link geometry”
observed (1) power and noise
13
or (2) power or (3) noise on a
14
forward link channel.
15
‘469
“a preamble, a payload, and a
signal”
16
“unit(s) of signal” / “unit of received
quality metric” or “a payload
17
18
and a quality metric.”
‘725
“dummy rate”
A rate that may decrease in a
19
predetermined manner over
20
time
21
22
23
24
25
26
27
28
58
17-cv-00108-GPC-MDD
1
III.
MOTION TO STRIKE
2
On February 14, 2018, Qualcomm filed a Motion to Strike Apple’s First and Second
3
Amended Invalidity Contentions. Dkt. No. 331. Apple and the Contract Manufacturers
4
filed a response on March 1, 2018. Dkt. No. 345.
5
Pursuant to the Court’s Case Management Order Regulating Discovery and Other
6
Pretrial Proceedings for Patent Claims, Apple and the CMs filed Joint Invalidity
7
Contentions on October 30, 2017. Dkt. No. 117 ¶ 2; Ex. A. Claim construction discovery
8
concluded on January 11, 2018. Dkt. No. 117 ¶ 6. On January 3, 2018, Apple served
9
Qualcomm with a set of first Amended Joint Invalidity Contentions. Ex. B. On January
10
11, 2018, Apple served Qualcomm with a second set of Amended Invalidity Contentions
11
(“Second Amended Invalidity Contentions.”). Ex. C.
12
Qualcomm argues that the plain language of Patent Local Rule 3.6(b) states that only
13
a “party opposing a claim of patent infringement” may serve “as a matter of right” amended
14
invalidity contentions. Patent L.R. 3.6(b). According to Qualcomm, Apple and the CMs
15
are not parties “opposing a claim of patent infringement” as Qualcomm has never
16
counterclaimed that Apple infringes the nine patents-in-suit. See, e.g., Dkt. No. 72.
17
The plain language of the Magistrate Judge’s scheduling order makes clear that he
18
considered Apple a party “opposing a claim of patent infringement” and made a specific
19
scheduling determination to allow Apple to amend its Invalidity Contentions as of right up
20
and until January 11, 2018, the date of completion of claim construction discovery.
21
Notably, the Magistrate Judge’s Order recognized that Qualcomm was not claiming
22
infringement, and yet the Scheduling Order still included a date for a party––which can
23
only be Apple under any plain reading––to file as of right Amended Invalidity Contentions.
24
Under any common sense interpretation of the scheduling order, it is apparent that the
25
Magistrate Judge was allowing for a slight alteration in the Patent Local Rules to take into
26
27
28
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17-cv-00108-GPC-MDD
1
account the procedural posture of the case.28 This interpretation is confirmed by a review
2
of the Patent Local Rules template wherein the Magistrate Judge removed the deadline for
3
filing as of right Amended Infringement Contentions under Local Rule 3.6(a), but retained
4
the deadline for filing as of right Amended Invalidity contentions. See Dkt. No. 117 ¶¶ 5-
5
7.
6
This Court’s prior ruling in Zest IP Holdings, LLC v. Implant Direct Mfg., LLC, No.
7
10CV0541-GPC-WVG, 2013 WL 5674834, at *7 (S.D. Cal. Oct. 16, 2013) is inapposite.
8
In Zest, the Court considered a motion to file amended infringement contentions after the
9
deadline for “matter of right” amendment deadline had already passed. There, the Court
10
held that the addition of thirty prior art references would have resulted in undue prejudice
11
to Zest, though the Court granted the motion to amend invalidity contentions as to a single
12
prior art reference. Local Rule 3.6(b) states: “As a matter of right, a party opposing a claim
13
of infringement may serve ‘Amended Invalidity Contentions’ no later than the completion
14
of claim construction discovery. Thereafter, absent undue prejudice to the opposing party,
15
a party opposing infringement may only amend its invalidity contentions . . .” Here, Apple
16
served their amended contentions by the date of completion of claim construction
17
discovery. Accordingly, Zest is irrelevant to the instant question because Apple––under a
18
plain reading of the scheduling order––was still within its period to file “matter of right”
19
Amended Invalidity Contentions.
20
Qualcomm has also waited too long to challenge the scheduling order’s ambiguous
21
provision. Qualcomm was on full notice of the scheduling order as of August 18, 2017
22
and never challenged the scheduling order or sought clarification of the ambiguous
23
paragraph. For example, Qualcomm could have submitted an inquiry to Magistrate Judge
24
Dembin to clarify the scope of the scheduling order. Pertinently, Qualcomm had more than
25
26
27
28
28
Nothing in this Order should be read to hold that a party seeking a declaratory judgment in the Southern
District of California will always be considered a party “opposing a claim of patent infringement” entitled
to an amendment as of right. This Order is limited to a specific ambiguity in the Scheduling Order issued
in this case.
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1
five months to submit a request for clarification or a challenge to the Scheduling Order.
2
Even if Qualcomm had not carefully parsed through the nuances of the scheduling order,
3
it certainly was on notice as of January 3, 2018 (the date Apple served their first Amended
4
Invalidity Contentions), that Apple believed it had an “as of right” amendment right based
5
on the scheduling order. Yet, no motion for clarification or motion to strike was filed at
6
that time.
7
Further, Qualcomm has not shown diligence in challenging any transgression by
8
Apple. It was served with the Second Amended Invalidity Contentions on January 11,
9
2018, and yet did not file a Motion to Strike these Contentions until February 14, 2018,
10
more than a month after Apple’s document was served. See Dkt. No. 331.
11
Next, Qualcomm further contends that the Amended Invalidity Contentions are
12
deficient under the Patent Local Rules by failing to sufficiently explain their asserted
13
grounds of indefiniteness and lack of written description under Patent Local Rule 3.3(d).
14
Courts have held that the level of detail required for invalidity contentions is lower than
15
that required for a claim of obviousness but still must “give the other party enough notice
16
that it can engage in full, timely discovery and litigate its case.” Medimmune LLC v. PDL
17
Biopharma, Inc., No. C-08-5590, 2010 WL 760443, at *3 (N.D. Cal. Mar. 4, 2010).
18
Apple’s First Amended Invalidity Contentions presented sufficiently adequate contentions
19
to provide Qualcomm with notice of its theories of invalidity. See, e.g., Ex. B at 143-44
20
(describing indefiniteness theory based on failure to disclose corresponding structures as
21
to ‘630 patent). Moreover, the Court finds that Apple’s Invalidity Contentions provide
22
adequate detail, including through claim charts, concerning the background knowledge of
23
skilled artisans and sufficiently specific reasons as to why skilled artisans would have
24
combined/modified references. These references include nearly 5,000 pages in detailed
25
analysis. See, e.g., Dkt. No. 331-2, Kazi Decl., Ex. C. Apple has provided far more detail
26
in its invalidity contentions than the contentions rejected in MediaTek Inc. v. Freescale
27
Semiconductor, Inc., 2014 WL 690161, at *6 (N.D. Cal. Feb. 21, 2014) (invalidity
28
61
17-cv-00108-GPC-MDD
1
contentions
2
Description/Enablement”).
3
4
listed
only
barebones
description
of
“Indefiniteness,
Written
Accordingly, the Court will DENY Qualcomm’s motion to strike Apple’s First and
Second Amended Invalidity Contentions in its entirety.
5
6
IT IS SO ORDERED.
7
8
Dated: May 16, 2018
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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17-cv-00108-GPC-MDD
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