TQ Delta LLC v. ADTRAN Inc.
Filing
375
MEMORANDUM OPINION regarding the issue of claim construction of multiple terms in U.S. Patent No. 8,625,660. Within five days the parties shall submit a proposed order consistent with this Memorandum Opinion suitable for submission to the jury. Signed by Judge Richard G. Andrews on 4/27/2018. Associated Cases: 1:14-cv-00954-RGA, 1:15-cv-00121-RGA(nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TQ DEL TA, LLC,
Plaintiff,
Civil Action No. 14-cv-00954-RGA
v.
ADTRAN, INC.,
Defendant.
ADTRAN, INC.,
Plaintiff,
Civil Action No. 15-cv-00121-RGA
v.
TQ DEL TA, LLC,
Defendant.
MEMORANDUM OPINION
Rosemary J. Piergiovanni, FARNAN LLP, Wilmington, DE; Peter J. McAndrews (argued) and
Michael Tomsa (argued), MCANDREWS, HELD & MALLOY, Chicago, IL.
Attorneys for Plaintiff.
Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, DE; Jeffrey D. Dyess and Benn C.
Wilson (argued), BRADLEY ARANT BOULT CUMMINGS, Birmingham, AL.
Attorneys for Defendant Adtran Inc.
AprilJJ_, 2018
Presently before the Court is the issue of claim construction of multiple terms in U.S. Patent
No. 8,625,660 ("the '660 patent"). The Court has considered the Parties' Joint Claim Construction
Brief. (Civ. Act. No. 14-00954-RGA, D.I. 318; Civ. Act. No. 15-00121-RGA; D.I. 321). 1 The
Court heard oral argument on February 27, 2018. (D.I. 370). Prior to oral argument, the parties
agreed on a construction for the term "carriers." (D.I. 348).
I.
BACKGROUND
The patent-in-suit represents "Family 1O" of the patents that Plaintiff has asserted against
Defendant Adtran. (D.I. 318, p. 1). The '660 patent relates to increasing the data rate and
impairment immunity of multicarrier communications systems by assigning different margins to
individual carriers. The '660 patent claims both methods and systems for modulating bits onto
sets of carriers using different signal to noise ratio margins.
II.
LEGALSTANDARD
"It is a bedrock principle of patent law that the claims of a patent define the invention to
which the patentee is entitled the right to exclude." Phillips v. AWHCorp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en bane) (citation omitted). '" [T]here is no magic formula or catechism for
conducting claim construction.' Instead, the court is free to attach the appropriate weight to
appropriate sources 'in light of the statutes and policies that inform patent law.'" SoftView LLC v.
Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324)
(alteration in original). When construing patent claims, a court considers the literal language of
the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). Of these sources,
1
Unless otherwise specifically noted, all references to the docket refer to Civil Action No. 14-954-RGA.
"the specification is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at
1315.
"[T]he words of a claim are generally given their ordinary and customary meaning ....
[This is] the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention, i.e., as of the effective filing date of the patent application." Id at
1312-13. "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id at 1321. "In some cases, the ordinary meaning of claim language
as understood by a person of skill in the art may be readily apparent even to lay judges, and claim
construction in such cases involves little more than the application of the widely accepted meaning
of commonly understood words." Id at 1314.
When a court relies solely upon the intrinsic evidence-the patent claims, the specification,
and the prosecution history-the court's construction is a determination oflaw. See Teva Pharm.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also make factual findings
based upon consideration of extrinsic evidence, which "consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
treatises." Phillips, 415 F .3d at 1317-19. Extrinsic evidence may assist the court in understanding
the underlying technology, the meaning of terms to one skilled in the art, and how the invention
works. Id Extrinsic evidence, however, is less reliable and less useful in claim construction than
the patent and its prosecution history. Id.
"A claim construction is persuasive, not because it follows a certain rule, but because it
defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa 'per Azioni,
158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude
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the inventor's device is rarely the correct interpretation." Osram GMBH v. Int'! Trade Comm 'n,
505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).
III.
CONSTRUCTION OF DISPUTED TERMS
Plaintiff asserts claims 5 and 14 of the '660 patent. (D.I. 318, pp. 11-12).
Claim 5 of the '660 patent reads as follows:
5. An apparatus comprising:
a multicarrier communications transceiver operable to modulate a first plurality of
bits onto a first plurality of carriers using a first Signal to Noise Ratio (SNR) margin
and to modulate a second plurality of bits onto a second plurality of carriers using
a second SNR margin, wherein the first plurality of carriers is different than the
second plurality of carriers, wherein the first SNR margin specifies a first value for
an increase in noise associated with the first plurality of subcarriers, wherein the
second SNR margin specifies a second value for an increase in noise associated
with the second plurality ofsubcarriers, and wherein the first value for the increase
in noise is different than the second value for the increase in noise.
('660 patent, claim 5) (disputed terms italicized).
Claim 14 of the '660 patent reads as follows:
14. A multicarrier communications transceiver operable to demodulate a first
plurality of bits from a first plurality of carriers using a first Signal to Noise Ratio
(SNR) margin and to demodulate a second plurality of bits from a second plurality
of carriers using a second SNR margin, wherein the first plurality of carriers is
different than the second plurality of carriers, wherein the first SNR margin
specifies a first value for an increase in noise associated with the first plurality of
subcarriers, wherein the second SNR margin specifies a second value for an
increase in noise associated with the second plurality of subcarriers, and wherein
the first value for the increase in noise is different than the second value for the
increase in noise.
('660 patent, claim 14) (disputed terms italicized).
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1.
"transceiver" (all asserted claims)
a.
Plaintiff's proposed construction: "communications device capable of
transmitting and receiving data wherein the transmitter portion and receiver
portion share at least some common circuitry"
b.
Defendant's proposed construction: "communications device capable of
transmitting and receiving data"
c.
Court's construction: "communications device capable of transmitting and
receiving data wherein the transmitter portion and receiver portion share at least
some common circuitry"
During oral argument, Adtran expressed its concern with Plaintiffs proposed construction
as being the possibility that for "any given reference [where] a transceiver is a black box," Plaintiff
might "try to be very, say, restrictive about this sharing circuitry," for example, saying, "that's not
a transceiver because you can't point to anything about the guts of the transceiver." (D.I. 370 at
11:21-12:11 ). So long as Plaintiff does not intend to raise such arguments, Adtran indicated that
it does not "have any particular concern with shared circuitry" in the construction for "transceiver."
(Id at 12: 5-11). Adtran subsequently agreed that given the Court's logic in arriving at its
construction for "transceiver" for the remaining patent families (see D.I. 325, pp. 4-5), the Court's
construction is "going to work just as well [as Adtran's proposed construction] when you have a
black box transceiver in a prior art reference." (D.I. 370 at 12:5-23).
Therefore, I construe "transceiver" to mean "communications device capable of
transmitting and receiving data wherein the transmitter portion and receiver portion share at least
some common circuitry."
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2.
"Signal to Noise Ratio (SNR) margin" (all asserted claims)
a.
Plaintiff's proposed construction: "a parameter used to determine the number of
bits allocated to each of a plurality of carriers, where the value of the parameter
specifies an extra SNR requirement per carrier in addition to that required to
maintain a specified bit error rate (BER) for the communication link, to allow for
an increase in noise associated with the plurality of carriers"
b.
Defendant's proposed construction: "extra SNR assigned to a carrier in addition
to the SNR required to maintain the specified bit error rate requirement of the
communications link at a specified bit allocation"
c.
Court's construction: "a parameter used in determining the number of bits
allocated to each of a plurality of carriers, where the value of the parameter
specifies an extra SNR requirement assigned per carrier in addition to the SNR
required to maintain a specified bit error rate (BER) for the communication link at
a specified bit allocation"
The parties have agreed on the following construction for this term: "a parameter used in
determining the number of bits allocated to each of a plurality of carriers, where the value of the
parameter specifies an extra SNR requirement assigned per carrier in addition to the SNR required
to maintain a specified bit error rate (BER) for the communication link at a specified bit
allocation." (D.1. 352). I will adopt the parties' agreed-upon construction.
3.
"wherein the [first/second] SNR margin specifies a [first/second] value for an
increase in noise associated with the [first/second] plurality of carriers"
(all asserted claims)
a.
Plaintiff's proposed construction: "wherein the [first/second] SNR margin
specifies a value that allows for an increase in noise associated with the
[first/second] plurality of carriers"
b.
Defendant's proposed construction: "wherein the [first/second] SNR margin is
assigned based on the [first/second] value of the expected increase in noise based
on an impairment associated with the [first/second] plurality of carriers"
c.
Court's construction: plain and ordinary meaning
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The parties dispute whether the construction of this term should include the basis on which
the SNR margin is specified, and whether the SNR margin must be assigned to a carrier. Plaintiff
asserts that Adtran's proposed construction improperly seeks to import limitations from a preferred
embodiment. (D.I. 318, pp. 40-41). Adtran contends that Plaintiffs proposed construction is nonlimiting and fails to clarify the meaning of the disputed term. (Id. p. 42).
According to Adtran, a proper construction for this term includes an "assignment"
limitation because the specification mentions "assigning" margin to carriers, and does so at times
in the context of discussing "the present invention." (Id. pp. 42-43 (citing '660 patent at 5:17-21
("In general, the systems and methods of this invention can be adapted to set a margin for any
impairment that varies over time ...."), 9: 19-21 ("It is, therefore, apparent that there has been
provided in accordance with the present invention, systems and methods for assigning margins to
carriers."))). The language of the asserted claims, however, does not require assignment. (See
'660 patent at claims 5, 14). Although Adtran acknowledges that "[t]he specification is replete
with references to assigning, setting, or allocating margins," Adtran does not offer a compelling
reason to choose "assigning" over "setting" or "allocating." (See D.I. 318, p. 43). Against this
backdrop, the permissive language used in Adtran's citations to the specification suggest that the
claims are not limited to assignment. I thus decline to import an "assignment" limitation into the
claim language.
Adtran also argues that this term should be limited to expected noise increases based on
impairments on the carriers. (Id.). As support, Adtran offers the specification's recitation that,
"The systems and methods of this invention allow the margin in a discrete multi toned modulation
system to vary depending on a type of impairment." ('660 patent at 3:21-23). That the invention
"allow[s]" variation in the margin based on different impairments does not necessarily limit the
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invention to that single basis for margin variation. See Phillips, 415 F.3d at 1323. As additional
evidence for incorporating these limitations, Adtran offers examples discussed in the specification.
(D.I. 318, pp. 45-46). I conclude that Adtran's reliance on these preferred embodiments does not
provide adequate basis to limit the broad scope of the claims asserted here.
Adtran further submits that limiting the claim scope to expected noise increases based on
impairments is consistent with the purpose of the invention "to protect against expected changes
in signal to noise ratios caused by an impairment associated with a carrier or plurality of carriers
when assigning an appropriate margin to that carrier or carriers." (Id p. 44). Even assuming
Adtran has properly articulated the purpose of the invention, the purpose of the invention does not
justify importing these limitations, because the asserted claims are apparatus claims. See Roberts
v. Ryer, 91U.S.150, 157 (1875) ("The inventor of a machine is entitled to the benefit of all the
uses to which it can be put, no matter whether he had conceived the idea of the use or not.");
Paragon Solutions, LLCv. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009) ("Absent an express
limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim
written in structural terms infringes that apparatus claim.") (emphasis in original); Catalina
Marketing Int'!, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) ("[A] patent
grants the right to exclude others from making, using, selling, offering [for] sale, or importing the
claimed apparatus or composition for any use of that apparatus or composition, whether or not the
patentee envisioned such use.").
Finally, Adtran contends that Plaintiffs proposed construction strips this term of any
meaning and encompasses a claim scope that was rejected during prosecution. (D.I. 318, pp. 5960). During prosecution, the examiner rejected a claim reciting "a multicarrier modulation system
comprising: a plurality of subchannels; and a plurality of margins." (D.I. 319-1at337). According
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to Adtran, Plaintiffs proposed construction for this term sweeps as broadly as the claim language
the Examiner rejected during prosecution of the '660 patent. I disagree. Though broad, Plaintiffs
proposed construction is narrower than the language the Examiner rejected. Whereas the claim
language rejected by the examiner recites no relationship between the claimed subchannels and
margins, the language in Plaintiffs proposed construction recites a relationship between the
margins and the carriers. Additionally, Adtran's argument ignores that in the context of the
asserted claims, this term is further limited by language that requires the first and second values
for an increase in noise specified by the first and second SNR margins to be different from one
another. ('660 patent at claims 5, 14). When read in the context of the asserted claims, therefore,
Plaintiffs proposed construction does not recapture the scope that the Examiner rejected during
prosecution of the '660 patent. I am thus not convinced that the broad scope of Plaintiffs proposed
construction provides a basis to import additional limitations into the claim language.
Therefore, I decline to import any limitations of "assignment," "impairment," or
"expected" noise into this term, and decline to adopt Adtran's proposed construction.
Aside from the addition of "that allows," Plaintiffs proposed construction amounts to a
plain meaning construction for this term. In light of the parties' agreed-upon construction for
"SNR margin," I conclude that "wherein the [first/second] SNR margin specifies a [first/second]
value for an increase in noise associated with the [first/second] plurality of carriers" requires no
construction. See Phillips, 415 F.3d at 1314 ("In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent even to lay judges,
and claim construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words."); US. Surgical Corp. v. Ethicon, Inc., 103
F.3d 1554, 1568 (Fed. Cir. 1997) ("[Claim construction] is not an obligatory exercise in
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redundancy."). Additionally, though Plaintiffs addition of "that allows" may be technically
correct, it may also broaden the claim scope.
I thus decline to adopt Plaintiffs proposed
construction. Accordingly, I will construe "wherein the [first/second] SNR margin specifies a
[first/second] value for an increase in noise associated with the [first/second] plurality of carriers"
to have its plain and ordinary meaning.
4.
"value for an increase in noise" (all asserted claims)
a.
Plaintiff's proposed construction: This term should not be construed separately
from its context in the fourth disputed term.
If a separate construction is needed: "value that allows for an increase in noise
associated with the [first/second] plurality of carriers"
b.
Defendant's proposed construction: "value of the expected increase in noise
based on an impairment in the [first/second] plurality of carriers"
c.
Court's construction: no separate construction required
Plaintiff argues that this term requires no construction separate from its construction in the
context of the third disputed claim term. (D.I. 318, pp. 60-61). Adtran counters that since this
term appears outside of the larger phrase of the third disputed term, separate construction is
necessary. (Id. pp. 61-62 (citing asserted claims' recitation that "the first value for the increase in
noise is different than the second value for the increase in noise")). Plaintiff responds that the
additional phrase Adtran cites "merely refers back to the first instance" of the larger phrase in the
third disputed term. (Id. p. 62). According to Plaintiff, the smaller phrase's use of the word "the"
to modify "value for an increase in noise" is a reference to the broader phrase, which recites "a
first value for an increase in noise" and "a second value for an increase in noise." (Id.). In other
words, Plaintiff maintains that since this term finds its antecedent basis in the broader phrase of
the third disputed term, this shorter term does not require separate construction.
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I agree with Plaintiff and conclude that the first use of this term within a larger phrase in
the claims provides adequate context for the subsequent uses of this term. Therefore, this term
does not require separate construction.
IV.
CONCLUSION
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Within five days the parties shall submit a proposed order consistent with this
Memorandum Opinion suitable for submission to the jury.
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