Evolved Wireless, LLC v. Apple, Inc.

Filing 110

MEMORANDUM ORDER regarding claim construction. Signed by Judge Sue L. Robinson on 11/14/2016. Associated Cases: 1:15-cv-00542-SLR-SRF et al.(fms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

EVOLVED WIRELESS, LLC,
Plaintiff,

v.
APPLE, INC.,
Defendant.
EVOLVED WIRELESS, LLC,
Plaintiff,

v.
HTC CORPORATION and
HTC AMERICA, INC.,
Defendants.
EVOLVED WIRELESS, LLC,
Plaintiff,

v.
LENOVO GROUP LTD.
LENOVO (UNITED STATES) INC., and
MOTOROLA MOBILITY

)
)
)
)
) Civ. No. 15-542-SLR
)
)
)
)

)
)
)
)
) Civ. No. 15-543-SLR
)
)
)
)
)
)
)
)

)
) Civ. No. 15-544-SLR
)
)
)
)
)

Defendants.

)

EVOLVED WIRELESS, LLC,

)
)
)
)
) Civ. No. 15-545-SLR
)
)
)
)
)
)

Plaintiff,

v.
SAMSUNG ELECTRONICS CO., LTD.
and SAMSUNG ELECTRONICS
AMERICA, INC.,
Defendants.
EVOLVED WIRELESS, LLC,

)
)
)
)
) Civ. No. 15-546-SLR
)
)
)
)
)

Plaintiff,

v.
ZTE CORPORATION, ZTE (USA) INC.,
and ZTE SOLUTIONS INC.
Defendants.
EVOLVED WIRELESS, LLC,

)
)
)
)
) Civ. No. 15-547-SLR
)
)
)
)
)
)

Plaintiff,

v.
MICROSOFT CORPORATION,
MICROSOFT MOBILE OY and
NOKIA INC.,
Defendants.

MEMORANDUM ORDER
At Wilmington this \i.\-\t"day of November, 2016, having heard argument on, and
having reviewed the papers submitted in connection with, the parties' proposed claim
construction;

2

IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 7,746,916
("the '916 patent"); 7,768,965 ("the '965 patent"); 7,809,373 ("the '373 patent");
7,881,236 ("the '236 patent"); and 8,218,481 ("the '481 patent") shall be construed
consistent with the tenets of claim construction set forth by the United States Court of
Appeals forthe Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005),
as follows:
The '916 Patent
1. A code sequence generator for generating a code sequence having a
second length by cyclic extension of a code sequence having a first length, and
performing a circular shift to the code sequence having the second length: 1
"Hardware and/or software in the apparatus that is capable of generating a code
sequence having a second length by cyclic extension of a code sequence having a first
length, and performing a circular shift to the code sequence having the second length."
Structure is identified in the specification as a "basic code sequence generation unit ·

1

Found in claim 6 of the '916 patent.

3

1701."2 ('916 patent, 15:36-16:7) Defendants failed to shift the§ 112, 1J 6 burden to
plaintiff. 3 (See D.I. 73 at 4) Section 112, 1J 6 does not apply. 4 Not indefinite. 5

2

In addition to the structure identified in the specification, plaintiff's expert, Dr. Cooklev,
demonstrated that a person having ordinary skill in the art would identify structure in the
specification. (D.I. 66at1J 72-74)
When a claim uses the word "means," the presumption is that§ 112, 1J 6 applies.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Generic terms
may be used "in a manner that is tantamount to using the word 'means' because they
'typically do not connote sufficiently definite structure."' Id. at 1350 (citations omitted).
Defendants argued that the present term is one of "[e]leven claim limitations [that]
require construction as means-plus-function terms under§ 112, 1J 6 because each
recites one of five nonce words-·module, generator, unit, entity, and protocol." (D.I. 73
at 1) (citing Williamson) ·The cited text in Williamson does not support this proposition
with respect to the terms "generator,". "entity," "unit," and "protocol." Moreover,
Williamson articulated a two-part test, applying § 112, 1J 6 to the term "distributed
learning control module," because the court determined that: "module" was a "wellknown nonce word that can operate as a substituted for 'means,"' and the "distributed
learning control" prefix did not "provide any indication of structure." Williamson, 792
F.3d at 1350-51. An outcome of this two-part test is that the alleged "nonce word" is
interpreted to be equivalent to the term "means," which "creates a presumption that§
112, 1J 6 applies," thereby shifting the burden to the patentee. Id. at 1349. Defendants
did not address the second part of the Williamson test; therefore, the burden has not
shifted, and the presumption is that§ 112, 1J 6 does not apply. (See D.I. 73 at 4-9)
3

In order to rebut the presumption that § 112, 1J 6 does not apply, defendants carry the
burden to demonstrate "that the claim term fails to 'recite sufficiently definite structure'
or else recites 'function without reciting sufficient structure for performing that function."'
Williamson, 792 F.3d at 1349. Defendants failed to rebut the presumption.

4

5

Defendants argued that the specification does not disclose how to generate a code
sequence. (D.I. 73 at 10) A person with "a bachelor's degree in electrical engineering
[and] 2-3 years of experience in cellular communication systems and [who] would have
been aware of the Third Generation Partnership Project ("3GPP") and its work o'n the
LTE standard" would know how to generate a code sequence. (See D.I. 66at1J 23)
Defendants also argued that "the claimed functions of generating a code sequence and
performing a circular shift are not clearly linked to any sort of code sequence generator."
(D.I. 73 at 11) The Patent Act,§ 112, 1J 2 requires "that a patent's claims, viewed in
light of the specification and prosecution history, inform those skilled in the art about the
scope of the invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
Inc.,_ U.S._, 134 S.Ct. 2120, 2129 (2014). Here, claim 6 includes several
limitations that, with reasonable certainty, inform those skilled in the art about the scope
of the invention. (See D.I. 85 at 11-12)

4

2. A transmitting unit for transmitting the circular shifted code sequence
having the second length: 6 "Hardware and/or software in the apparatus that is
capable of transmitting the circular shifted code sequence having the second length."
Defendants failed to shift the§ 112,

1J 6 burden to plaintiff. 7

Section 112,

1J 6 does not

apply. 8 Not indefinite. 9 Structure is identified in the specification with reference to figure
16. ('916 patent, 15:6-21; fig. 6, item 1603)

The '965 Patent
3. A sequence selecting module acquiring information about
predetermined two or more random access preamble sequence sets, selecting
one random access preamble sequence set from among the predetermined
random access preamble sequence sets considering at least one of a size of
information to be transmitted by the apparatus and a degree of a path loss, and
randomly selecting a specific sequence within the selected random access
sequence set: 10 "Hardware and/or software in the user equipment that is capable of
performing the following algorithm: acquire information about predetermined two or
more random access preamble sequence sets, select one random access preamble
sequence set from among the predetermined random access preamble sequence sets
considering at least one of a size of information to be transmitted by the apparatus and
a degree of a path loss, and randomly select a specific sequence within the selected

6

Found in claim 6 of the '916 patent.

7

See supra note 3.

a See supra note 4.
9

Defendants presented no evidence as to how or why the claims of the '916 patent,
"viewed in light of the specification and prosecution history, [would fail to] inform those
skilled in the art about the scope of the invention with reasonable certainty." Nautilus,
134 S.Ct. at 2129.

°Found in claim 8 of the '965 patent.

1

5

random access sequence set." Structure is identified in the specification with reference
to figure 16. ('965 patent, 19:6-30, fig. 16, item 1101) Defendants failed to shift the
§ 112, ~ 6 burden to plaintiff. 11 Section 112, ~ 6 does not apply. 12 Not indefinite. 13 ·14

.

4. An access module accessing a random access channel using the
specific sequence selected by the sequence selecting module: 15 "Hardware and/or

software in the user equipment that is capable of transmitting the specific selected
sequence on the random access channel to the base station." Structure is identified in

11

See supra note 3.

12

See supra note 4.

13

Defendants argued that the specification does not disclose sufficient structure or
algorithm under§ 112, ~ 6, but defendants did not address the criteria identified in
Nautilus; therefore, the court adopts plaintiff's construction. (D.I. 73 at 12)
14

Defendants argued that numerous claims are indefinite for improperly mixing system
claims and method steps. (D. I. 73 at 19) The accused claims are claim 8 of the '965 .
patent; claims 7-10 and 12-13 of the '236 patent; and claim 24 of the '373 patent. (D.I.
73 at 19-20) These claims are not indefinite, because IPXL and Rembrandt do not
apply. For example, defendants argued that "a sequence selecting module" and "an
access module" in claim 8 of the '965 patent mix method steps in a system claim. (D.I.
73 at 19) A claim is indefinite under§ 112, ~ 2 if it "recites a system and the method for
using that system." IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005); see also Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331,
1339 (Fed. Cir. 2011). In IPXL, the claim recited both "[t]he system" and "the user uses
the input means." IPXL, 430 F.3d at 1384. In Rembrandt, the claim claimed "a data
transmitting device ... comprising: first buffer means ... fractional encoding means ...
second buffer means· ... and transmitting the trellis encoded frames." Rembrandt,
641 F.3d at 1339 (emphasis added). Here, claim 8 of the '965 patent recites the
"sequence selecting module acquiring information ... [and] selecting one random
access preamble sequence." ('965 patent, claim 8) (emphasis added) Claim 8 also
recites "an access module accessing a random access channel." (Id.) (emphasis
added) This is functional language, but it is not an improper combination of system and
method claims as in either IPXL or Rembrandt.
15

Found in claim 8 of the '965 patent.

6

the specification. ('965 patent, 19:6-37, fig. 16, item 1102) Defendants failed to shift .
the § 112, 116 burden to plaintiff. 16 Section 112, 116 does not apply. 17 Not indefinite. 18 •19
The '373 Patent
5. Handover: 20 "Transfer of a terminal's connection with a source base station
to a target base station." The court adopts defendants' proposal. The specification
discusses "handover" extensively but does not define the term; therefore, the plain and
ordinary meaning applies. 21 Plaintiff argued that a handover in the patent is a "hard
handover" and that the term should be construed as
a process to transfer a telecommunication link by establishing radio
connection with the target base station after radio connection with the
source base station has ceased.
(D.I. 60 at 14-18) (emphasis added) In support of this construction, plaintiff cited to the
prosecution history and to figure 9, which "shows an exemplary diagram for transmitting
and receiving radio connection information according to an exemplary embodiment of
the present invention." ('373 patent, 6:6-8) The language in the specification with
reference to figure 9 does not limit the scope of the patent to so-called "hard
handovers."22 The prosecution history shows that the applicant amended claim 1 to

16

See supra note 3.

17

See supra note 4.

18

Defendants argued that the disclosed structure in the specification is insufficient to
perform the function ascribed to it. (D. I. 73 at 13) In support, defendants presented
attorney argument couched in conclusory expert statements. (D.I. 74at111187-101) For
these reasons, the court adopts plaintiff's construction.
19
2

See supra note 14.

° Found in claims 1, 4, 7, 8, 13, 15, 17, and 23-24 of the '373 patent.

21

See, e.g., D.I. 75, ex. 3 at 3.

22

The specification does not employ any terms such as: "hard" handovers, "soft"
handovers, "make-before-break," or "break-before-make." The claims are not limited to
hard handovers.

7

overcome the Samuel reference and argued that "Samuel relates to a method for soft
vertical handovers," 23 but the prosecution history does not contain a statement about
the application that could, today, be interpreted as limiting with respect to hard
hand overs. (See JA-1325) Moreover, in making their arguments, both parties
employed adjectives (e.g., "soft," "hard," "make-before-break," and "break-before-make") to describe the term "handover." This alone supports a plain and ordinary
meaning that is broader than the construction proposed by plaintiff. For these reasons,
the court adopts defendants' construction.
6. Target base station: 24 "The source base station determines that the mobile
terminal will be transferred to the target base station." The court adopts plaintiff's
proposal. 25 This construction is supported by the specification and the claims. ('373
patent, 5:15-17; 6:58-63; 6:19-23) The parties disagreed on whether the mobile

23

See U.S. Patent No 7,843,882 (filed Aug. 23, 2004) (entitled "Soft Vertical Handovers
in Wireless Networks.").

24

Found in claims 1, 3, 8, 15, 18, 20, and 23-25 of the '373 patent.

25

Defendants proposed that, "target base station means base station to which a
terminal's connection may be transferred." (D.I. 54, ex. A at 7) (emphasis added)
(internal quotation marks omitted) In support, defendants asserted that the IEEE
802.16e "Wireless MAN" draft specification provided the plain and ordinary meaning of
"target base station" at the time of filing. (D.I. 73 at 29; D.I. 75, ex. 2 at 7) Defendants
predicated their argument on a statement in the specification that
the present invention is also applicable to other wireless communication
systems using different air interfaces and/or physical layers, for example,
TOMA, CDMA, FDMA, WCDMA, OFDM, EV-DO, Mobile Wi-Max, Wi-Bro, etc.
('373 patent, 9:20-24) (emphasis added) The court disagrees. The majority of these
terms refer specifically to air interfaces and physical layers (e.g., TOMA, CDMA, FDMA,
WCDMA, and OFDM), and the remaining terms refer to systems (EV-DO, Mobile WiMax, and Wi-Bro) that define physical layer and air interface standards. The
specification does not incorporate these standards by reference; therefore, there is no
reason to read limitations from these standards into the claim language. Moreover, the
Mobile Wi-Max definition discusses the mobile terminal intending to transfer the
connection to a target base station, which is a wholly different architecture than that
discussed in either the specification or defendants' proposed construction.

8

terminal "may" be transferred to the target base station or the mobile terminal "will" be
transferred to the target base station. (D.I. 54, ex. A at 7) The source base station uses
the measurement report to identify the target base station from among various
neighboring cells. 26 ('373 patent, 6: 19-23) Next, the source base station "transmit[s] a
handover request to the target" base station. ('373 patent, 6:26) "If the target [base
station] allows the handover to be performed ... the target [base station] may transmit a
handover confirm message to the source [base station]." ('373 patent, 6:30-33) The
target base station passes access information to the source base station, which
includes a dedicated preamble for a specific terminal to use in a random access
procedure. ('373 patent, 10:5-18) The specification does not discuss what happens if
the handover does not occur, nor does the specification discuss alternative types of
handovers. 27 Once the source base station identifies the target base station, and the
target base station sends the handover confirm message, the last communication
between the source base station and the mobile terminal is the sending of the handover
command. ('373 patent, 6:66-7:11; fig. 9, step S14) From that point forward, the mobile
terminal communicates directly with the target base station to establish a connection.
('373 patent, 7:8-54) For these reasons, the source base station determines that the
mobile terminal will be transferred to the target base station.

26

"[T]he UE (or terminal) (10) may transmit a measurement report to the source [base
station] (12) by measuring a condition of a downlink physical channel for other cells."
('373 patent, 6:9-12)

27

Defendants' proposed language would apply to any nearby cells, because the mobile
terminal may be transferred to any of these neighboring cells. The specification
distinguishes the target base station from this larger group: "the measurement report
includes a downlink physical channel condition for multiple cells including the cell of the
target base station." ('373 patent, 8:2-4)
9

7. The measurement report is used to determine: 28 "The measurement
report is used by the source base station to determine." The court adopts plaintiff's
proposal. Defendants proposed that no construction is necessary, and argued that
plaintiff "improperly inserts the words 'by the source base station' into this claim
limitation." (D.I. 54, ex. A at 7) Claim 17 depends on claim 16, which recites:
The method of claim 15, further comprising:

transmitting a measurement report to the source base station by
measuring a condition of a downlink physical channel for other cells,
the measuring performed periodically or upon an occurrence of an
event.
('373 patent, 11 :16-20) (emphasis added) The measurement report is transmitted to the
source base station. Claim 17 recites:
The method of claim 16, wherein the measurement report is used to
determine whether to perform a handover from a current cell to one of the
other cells.
('373 patent, 11 :21-23) Claim 17 incorporates the language of claim 16, which provides
antecedent basis for the "measurement report" employed in the limitation of claim 17.
Defendants argued that it is improper for plaintiff to introduce this language into the
construction, because it involves reading a limitation from the specification. Here, the
limitation that plaintiff seeks to introduce into the construction comes from the language
of the claim itself.

8. A radio protocol adapted to receive access information from a source
base station after a handover request is accepted by the target base station and
to perform a random access procedure with the target base station using the
received access information, such that the access information is configured to
permit the terminal to access the target base station: 29 "Hardware and/or software

28

Found in claim 17 of the '373 patent.

29

Found in claim 24 of the '373 patent.
10

in the mobile terminal adapted to receive access information from a source base station
after a handover request is accepted by the target base station and to perform a
random access procedure with the target base station using the received access
information, such that the access information is configured to permit the terminal to
access the target base station, wherein the access information includes preamble
information for the random access procedure, wherein the preamble information is a
dedicated preamble used only for a specific terminal, and wherein the dedicated
preamble is determined by the target base station." The structure is found in the
specification with reference to "radio protocol" and "radio interface protocol" and in
'

figure 7. ('373 patent, 1:46-2:24; 3:54-4:65; figs. 2-5, 7-9) Defendants failed to shift the

§ 112, ,-i 6 burden to plaintiff. 30 Section 112, ,-i 6 does not apply. 31 Not indefinite. 32
9. Wherein the dedicated preamble is determined by the target base
station: 33 Not indefinite. 34 This conclusion is supported by the specification. ('373
patent, 12: 10-25) The claim provides antecedent basis for "dedicated preamble" and
"target base station." (Id.) Elsewhere in the specification, the target base station
passes information including a preamble to the mobile terminal:
[T]he target eNB (14) may transmit a handover confirm message to the
source eNB (12) (S13). The handover confirm message may include
information that may be necessary in the course of connecting the UE (10)
to the target cell. Namely, the necessary information may include
information used in the RACH which is used for performing a radio access
procedure from the UE to the target eNB. For example, when the RACH
is being used while the UE accesses to the target eNB, the UE may utilize
a preamble which is selected from signatures contained in the UE.

30

See supra note 3.

31

See supra note 4.

32

See supra notes 13-14.

33

Found in claim 24 of the '373 patent.

34

See supra note 14.

11

('373 patent, 6:32-41) Also, the preamble may be unique to a given mobile terminal,
because the "target eNB (14) may receive the preamble of the UE. Since the target
eNB (14) already allocates a signature used in the preamble to the UE in the use of
handover, the UE can be identified by the preamble." ('373 patent, 7:30-33)
10. An Evolved Universal Mobile Telecommunication System (E-UMTS): 35
Not indefinite. 36
The '236 Patent
11. A reception module adapted to receive an uplink grant (UL Grant)
signal from a base station on a specific message: 37 "Hardware and/or software in
the user equipment that is capable of receiving an uplink grant signal from a base
station on a specific message." The structure is found in the specification with
reference to figure 11. ('236patent,15:44-16:36; fig.11, item 1101) Defendants failed

35

Found in claim 25 of the '373 patent.

36

A person having ordinary skill in the art would have been aware of 3GPP activities,
the UMTS specification, and work on the LTE standard. (D.I. 66 at 8) Defendants'
exhibit shows that as early as 2005, the 3GPP System Architecture Evolution: Report
o.n Technical Options and Conclusions ("Evolution Report") document was littered with a
discussion of network evolution. For example, "[t]he objective of this feasibility study is
to develop a framework for an evolution or migration of the 3GPP system." (D.I. 75,
ex. 1 at 9) (emphasis added) The Evolution Report employed terms such as "E-UTRA,"
which stands for "evolved universal terrestrial radio access." Other terms in the
Evolution Report include "Evolved RAN," "Evolved Packet Core," "evolutions of Gr and
Gp," "Evolved VPLMN," "evolved HPLMN," "evolved Policy," "evolved/extended Gx,"
. "evolved access system," "evolved core network," "evolved PDG," "Evolved
Architecture," and so forth. (See generally, D.I. 75, ex. 1) A person having ordinary skill
in the art would understand the scope of "[a]n Evolved Universal Mobile
Telecommunication System (E-UMTS)" in claim 25 to mean a network system
employing an evolution of the UMTS standard.
37

Found in claim 7 of the '236 patent.
12

to shift the § 112,

1f 6 burden to plaintiff. 38

Section 112, 1f 6 does not apply. 39 Not

indefinite. 40
12. A transmission module adapted to transmit data to the base station

using the UL Grant signal received on the specific message: 41 "Hardware and/or
software in the user equipment that is capable of transmitting data to the base station
using the UL Grant signal received on the specific message." The structure is found in
the specification with reference to figure 11. ('236 patent, 15:44-16:36; fig. 11, item
1102) Defendants failed to shift the § 112,

1f 6 burden to plaintiff. 42

Section 112,

1f 6

does not apply. 43 Not indefinite. 44
13. A Hybrid Automatic Repeat Request (HARQ) entity adapted to

determine Whether there is data stored in the Msg3 buffer when the reception
module receives the UL Grant signal and the specific message is a random
access response message, acquiring the data stored in the Msg3 buffer if there is
data stored in the Msg3 buffer when the reception module receives the UL Grant
signal and the specific message is the random access response message, and
controlling the transmission module to transmit the data stored in the Msg3
buffer to the base station using the UL Grant signal received by the reception
module on the specific message: 45 "Hardware and/or software in the user equipment

38

See supra note 3.

39

See supra note 4.

40

See supra note 13.

41

Found in claim 7 of the '236 patent.

42

See supra note 3.

43

See supra note 4.

44

As above with "reception module," the court adopts plaintiff's construction.

45

Found in claim 7 of the '236 patent.
13

that is capable of determining whether there is data stored in the Msg3 buffer when the
reception module receives the UL Grant signal and the specific message is a random
access response message, acquiring the data stored in the Msg3 buffer if there is data
stored in the Msg3 buffer when the reception module receives the UL Grant signal and
the specific message is the random access response message, and controlling the
transmission module to transmit the data stored in the Msg3 buffer to the base station
using the UL Grant signal received by the reception module on the specific message."
This construction is supported by the specification and the claims. ('236 patent, 13:3514: 17; 15:50-16:36; fig. 9; fig. 11, item 1104) Defendants failed to shift the§ 112,

~

6

burden to plaintiff. 46 Section 112, ~ 6 does not apply. 47 Not indefinite. 48
14. A multiplexing and assembly entity used for transmission of new

data: 49 "Hardware and/or software in the user equipment that is capable of transmitting
new data." This construction is supported by the specification and the claims. ('236
patent, 14: 12-17; 15:52-16:36; fig. 10, block 7; fig. 11, item 1105) Defendants failed to
shift the§ 112, ~ 6 burden to plaintiff. 50 Section 112, ~ 6 does not apply. 51 Not
indefinite. 52
15. Wherein the HARQ entity acquires the new data to be transmitted from

the multiplexing and assembly entity if there is no data stored in the Msg3 buffer
when the reception module receives the UL Grant signal on the specific message

46

See supra note 3.

47

See supra note 4.

48

See supra notes 13-14.

49

Found in claim 7 of the '236 patent.

50

See supra note 3.

51

See supra note 4.

52

See supra notes 13-14.
14

or the received message is not the random access response message, and
controls the transmission module to transmit the new data acquired from the
multiplexing and assembly entity using the UL Grant signal received by the
reception module on the specific message. 53 Wherein the HARQ entity transfers
the data acquired from the multiplexing and assembly entity or the Msg3 buffer to
a specific HARQ process of the one or more HARQ processes and controls the
specific HARQ process to transmit the data acquired from the multiplexing and
assembly entity or the Msg3 buffer through the transmission module. 54 Wherein,
when the specific HARQ process transmits the data stored in the Msg3 buffer
through the transmission module, the data stored in the Msg3 buffer is controlled
to be copied into a specific HARQ buffer corresponding to the specific HARQ
process, and the data copied into the specific HARQ buffer is controlled to be
transmitted through the transmission module. 55 Wherein the UL Grant signal
received by the reception module on the specific message is a UL Grant signal
received on a Physical Downlink Control Channel (PDCCH). 56 Wherein the HARQ
entity controls new data to be transmitted in correspondence with the received
UL Grant signal received on the PDCCH. 57 Wherein the data stored in the Msg3
buffer is a Medium Access Control Protocol Data Unit(MAC POU) including a
user equipment identifier. 58 Wherein the UL Grant signal received on the specific
message is either a UL Grant signal received on a Physical Downlink Control

53

Found in claim 7 of the '236 patent.

54

Found in claim 8 of the '236 patent.

55

Found in claim 9 of the '236 patent.

56

Found in claim 10 of the '236 patent.

57

Found in claim 10 of the '236 patent.

58

Found in claim 12 of the '236 patent.

15

Channel (PDCCH) or a UL Grant signal received on the random access response
message. 59 Not indefinite. 60
The '481 Patent
16. A preamble generation unit configured to generate said preamble
sequence by repeating a specific sequence, having a length (L), N times to
generate a consecutive sequence having a length (N*L) and concatenating a
single cyclic prefix (CP) to a front end of said consecutive sequence: 61 "Hardware
and/or software in the transmitter that is capable of performing the following algorithm:
repeat a specific sequence, having a length (L), N times to generate a consecutive
sequence having a length (N*L) and concatenate a single cyclic prefix (CP) to a front

59

Found in claim 13 of the '236 patent.

60

See supra note 14.

61

Found in claim 8 of the '481 patent.

16

end of said consecutive sequence." Defendants failed to shift the§ 112, ~ 6 burden to
plaintiff. 62 Section 112, ~ 6 does not apply. 63 Not indefinite. 64
17. A transmission unit configured to transmit, on a random access
channel, said preamble sequence to a receiving side: 65 "Hardware and/or software
in the transmitter capable of transmitting the preamble sequence on the random access
channel to a receiving side." The structure is found in the specification. ('481 patent,
7:57-8:4; 11 :46-54; 17:41-18:17 figs. 1, 22) Defendants failed to shift the§ 112, ~ 6
burden to plaintiff. 66 Section 112, ~ 6 does not apply. 67 Not indefinite. 68

62

See supra note 3.

63

The term "preamble generation unit" does not employ means-plus-function language.
The structure described in the '481 patent is a computer-implemented algorithm. "To
one of skill in the art, the 'structure' of computer software is understood through, for
. example, an outline of an algorithm, a flowchart, or a specific set of instructions or
rules." Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled by
Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). In the briefs and at
oral argument, defendants argued that Williamson overturned Apple, but defendants
never addressed the substantive question raised by plaintiffs in their citation to Applewhether an algorithm disclosed in the specification is sufficiently definite structure.
(See, e.g., D.I. 73 at 8) Williamson overruled the strength of the presumption applied in
Apple, but Apple remains on point for computer-implemented inventions that do not
employ means-plus-function language. Plaintiff argued that figure 11 and the
specification at column 11, lines 55-67, disclose an algorithm and that a person of
ordinary skill in the art would recognize this algorithm as the structure corresponding to
the functions described in relation to "preamble generation unit." (See D.I. 65 at 15; D.I.
66 at ~~ 106-09) Defendants failed to demonstrate that a person of ordinary skill in the
art would not recognize the algorithm as sufficiently definite structure. For this reason,
the disclosed algorithm is sufficiently definite structure, and § 112, ~ 6 does not apply.
See Williamson, 792 F.3d at 1349.
64

See supra note 13.

65

Found in claim 8 of the '481 patent.

66

See supra note 3.

67

See supra note 4.

68

See supra note 13. ·
17

18. The court has provided a construction in quotes for the claim limitations at
issue. The parties are expected to present the claim construction consistently with any
explanation or clarification herein provided by the court, even if such language is not
included within the quotes.

18