tier_i = CNcier_i*S tier)/(~= I 10 L: Ntier_k*Stier_k)) to implement the
stated function. Defendants argue that the algorithm identified by Plaintiffs is not sufficiently
linked to the stated function and that no other algorithm is disclosed. The Court agrees with
The specification teaches that "weights" are used to control or determine the "relative
proportions of system bandwidth allocated to each tier." (' 994 patent at 6:59-63) The
specification further explains that "weight" can be denoted with a "
lain and ordinarv meanin12:.
The claim language in dispute here uses terms of degree : "large" two times and "small"
two times. Defendants argue that each of these terms is indefinite because, in the context of the
claims here, a POSA would not understand the terms "large" and "small" with "reasonable
certainty." See Nautilus, Inc., 134 S. Ct. at 2124.
The Court agrees with Defendants. The claim limitation "a large number of primary
preamble sequences exhibit the properties" is illustrative. Nothing in the claim language,
specification, or prosecution history provides any guidance as to the meaning of the phrase "a
large number." (See '431 patent at 5:35-36, 49-50 (indicating only that number of primary
preamble sequences must be "relatively large")) Turning to the extrinsic evidence, see Teva , 135
S. Ct. at 841, Defendants' expert, Jeffrey Fischer, opined that a POSA would not understand
what constitutes a "large number." (D.I. 210-4 Ex. A4 iii! 65-69) Fischer explained that "the
patent does not provide any guidance that would allow one of ordinary skill in the art to
determine with reasonable certainty when a count of sequences becomes 'large.'" (Id.
Fischer also opined that the specification' s use of the phrase "relatively large" increases
uncertainty by "impl[ying] that the number of sequences should be compared to something else,
without explaining what that is." (Id.
if 68) The Court finds Fischer' s analysis persuasive.
By contrast, Plaintiffs' expert' s declaration is conclusory and fails to explain how a POSA
would be able to distinguish between large numbers and almost-large numbers. (See PMX 12
if 18) The PTO Examiner statements on which Plaintiffs rely are also generally unpersuasive,
both because the Examiner did not expressly address the terms and because the patent was
prosecuted under the less exacting, pre-Nautilus standard for indefiniteness. 12
Overall, the totality of evidence, intrinsic and extrinsic, clearly and convincingly
demonstrates that the claim terms listed here, all of which include "large" or "small," are invalid
"wherein the core-band is substantially centered at an operating
('431 patent, claims 8, 18)
lain and ordina
lain and ordina
Defendants have failed to present clear and convincing evidence that the term
"substantially centered" is indefinite. Defendants argue there is a lack of guidance in the claim
language and in the patent specification. (JCCB at 230-31) However, the prosecution history
supports Plaintiffs, as it shows the Examiner viewed this claim language as "balanc[ing] clarity
with the fact that real-world systems have process and operational tolerances whereby a coreband may not be exactly centered .. . despite efforts to center the core band." (D.I. 207-46 Ex.
RR at IV-DEL 6279) Based on this reasoning, the Examiner expressly concluded that "one of
ordinary skill in the relevant art would understand [the patent' s] use of 'substantially."' (Id. )
In any case, the question of indefiniteness needs to be decided by the Court, even though
any issued patent will, by definition, not have been found indefinite by the PTO.
Defendants have not persuaded the Court to reach a different conclusion. 13
An appropriate Order follows.
Defendants correctly note that the patent was prosecuted prior to the Nautilus decision.
Still, with respect to this term, the Court agrees with the Examiner's express conclusion that a
POSA "would understand" the term.