Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Limited et al

Filing 234

MEMORANDUM ORDER re: claim construction. Signed by Judge Sue L. Robinson on 4/19/2017. (nmfn)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

GODO KAISHA IP BRIDGE 1,

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) Civ. No. 15-634-SLR
)

Plaintiff,
V.

TCL COMMUNICATION
TECHNOLOGY HOLDINGS LIMITED,
a Chinese Corporation, TCT MOBILE
LIMITED, a Hong Kong Corporation,
TCT MOBILE (US), INC., a Delaware
Corporation and TCT MOBILE, INC., a
Delaware Corporation,
Defendants.

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MEMORANDUM ORDER
At Wilmington this /~day of April, 2017, having heard argument on, and having
reviewed the papers submitted in connection with, the parties' proposed claim
construction;
IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 7,373,295
("the '295 patent"), 8,351,538 ("the '538 patent"), and 8,385,239 ("the '239 patent") shall
be construed consistent with the tenets of claim construction set forth by the United
States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005), as follows:

1. "Pulse vector:" 1 "A sequence of electrical pulses." The specification
explains that the pulse vector generator generates "[pulse] vectors ... each having a
signed unit pulse 2 []provided to one element on a vector axis." ('295 patent, 6:28-30)
With reference to table 1, the specification describes a rule for generating pulse vectors
with pulses located according to a position vector. 3 (Id., 6:46-49, table 1)
2. "Pulse vector generator:" 4 § 112, ~ 6 applies. Indefinite. When claim
language does not employ the word "means," the presumption is that§ 112,

~

6 does

not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
However, "the presumption can be overcome and § 112, ~ 6 will apply if the challenger
demonstrates that the claim term fails to recite sufficiently definite structure or else

1

Found in '295 patent, claims 1-4.

2

The specification recites a "unit pulse," but does not explain what it is, or what units of
measure are used to define it. The specification does not clarify whether the "unit
pulse" refers to the magnitude of the vector or to the magnitude of an individual number
in the n-tuple of the vector. Plaintiff argued that the equation (col 7: 15-38) defines "a
pulse vector as having a single pulse." (D.I. 109 at 5) The declaration of plaintiff's
expert, Paul Min, PhD ("Dr. Min"), at~ 50 as cited does not support this assertion. (D.I.
111, ~ 50) The parties agreed that the pulse vector represents a sequence of electrical
pulses.
3

Plaintiff proposed "a vector with at least one pulse" and argued that there only needs
to be a single pulse in a pulse vector. However, Dr. Min explained that the pulse vector
generator "outputs pulse vectors in accordance with a rule for specifying the pulse
positions and whether those pulses are positive or negative." (D.I. 111, ~ 53) Figure 3
shows the pulse vectors as having either positive or negative values at each "pulse
position candidate," so according to the specification and Dr. Min's explanation, the
pulse vector cannot have zero values at any of the specified pulse positions. Plaintiff
did not explain how Dr. Min's opinion reconciles with plaintiff's proposed construction.
4

Found in '295 patent, claims 1-4.

2

recites function without reciting sufficient structure for performing that function." Id.
(citations omitted) (internal quotation marks omitted). Claim 1 recites:
A dispersed pulse vector generator used for a speech coder/decoder,
comprising:
a pulse vector generator configured to generate a pulse vector
having a signed unit pulse;
a dispersion pattern storage configured to store a plurality of fixed
dispersion patterns;
a dispersion pattern selector configured to determine a selected
dispersion pattern of the plurality of fixed dispersion patterns with
reference to an adaptive codebook gain; and
a dispersed pulse vector generator configured to generate a
dispersed pulse vector by convoluting the pulse vector and
the selected dispersion pattern;
the dispersion pattern selector comprising;
a first selector that pre-selects dispersion patterns of the plurality
of fixed dispersion patterns; and
a second selector that determines the selected dispersion
pattern, of the pre-selected dispersion patterns, to be
convoluted with the pulse vector.
('295 patent, 28:16-34) The "dispersed pulse vector generator" comprises (among other
things) "a pulse vector generator" and "a dispersed pulse vector generator;" therefore,
the "pulse vector generator" term is central to the construction of claim 1. Plaintiff
argued that no construction is necessary for "pulse vector generator," because "the
prefix 'pulse vector' imparts [sufficiently definite] structure to the term 'generator"' and
that§ 112,

~

6 does not apply. (D.I. 109 at 5) Plaintiff contended that "the specification

describes a pulse vector generator's structure by 'describing the claim limitation's
operation, such as its input, output, or connections."' (Id., citing Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014)) Defendants' expert, Nikil Jayant, PhD ("Dr.

Jayant"), opined that§ 112,

~

6 applies, because the specification "does not disclose

any type of structure, neither physical component nor a software algorithm, for
generating a pulse vector." (D.I. 131,

~

52)

3

3. The specification discloses that the "pulse vector generator" generates pulse
vectors. (See, e.g., '295 patent, 6:26-30; 6:46-49; 7:6-9; figure 3, box 101; figure 4, box
216; figure 5, box 312; figure 6, box 416; and figure 7, box 516) Tables 1 and 2 identify
the "pulse position candidates" for various channels. For example, table 1 shows
channel 1 as having pulse position candidates in the form of an eight-tuple; however,
the pulse position candidates for channels 2 and 3 are shown as a matrix having two
rows and eight columns. ('295 patent, 6:51-62) The court notes that, aside from
general boxes in "functional block diagram[s]," the specification does not identify any
physical structure associated with the "pulse vector generator," nor does the
specification discuss software, processors, or computers of any kind. 5 Plaintiff
contended that Apple v. Motorola applies, but Dr. Min did not express an opinion
whether the '295 patent discloses a computer implemented invention or whether a
"pulse vector generator" would be implemented in software in the first place. The
Federal Circuit has explained that:
"Structure" to a person of ordinary skill in the art of computer-implemented
inventions may differ from more traditional, mechanical structure .... 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. . . . Structure may also be provided by describing the claim
limitation's operation, such as its input, output, or connections. The
limitation's operation is more than just its function; it is how the function is
achieved in the context of the invention.

5

Plaintiff did not argue that a physical structure was identified. The specification does
mention "memory" and "switches" with reference to the "dispersion pattern storage and
selection" functional box. ('295 patent, figure 3, item 102) While plaintiff's expert
explained that these are computer memory and (ostensibly) electrical switches, nothing
in the specification says one way or another.

4

Apple, 757 F.3d at 1298-99. 6 Plaintiff argued the latter, relying on Dr. Min's opinion that
the structure of the "pulse vector generator" is found in its "input, output, or
connections." (D.I. 111

at~

53) In response, Dr. Jayant pointed out that:

For example, tables 1 and 2 show that the positions of pulses within the
pulse vectors may be reflective of an algebraic codebook table. ('295
Patent, 6:50-63, 27:38-47) However, the specification does not disclose
how those pulse vectors are generated, nor does it disclose what, other
than the amorphous "pulse vector generator," generates those pulse
vectors. For example, the specification does not disclose whether a pulse
vector generator outputs stored pulse vectors in response to various
inputs, or whether a pulse vector generator synthesizes and outputs pulse
vectors in real-time.
(D.I. 131

at~

53 (emphasis in original)) The specification explains "operation of the ...

excitation vector generator," but the explanation of the operation of the "pulse vector
generator" is conclusory: "the pulse vector generator 101 algebraically generates the
signed pulse vectors corresponding to the number of channels (three in this
embodiment) in accordance with the rule described in table 1." ('295 patent, 7:6-9; see
also id., 6:46-49; 9:3-8)
4. Table 1, as discussed above, shows where the pulses may be placed in a
given vector or matrix, but the specification does not explain the "algebraic" process by
which the pulse vector is generated. 7 Column 7 of the specification discusses various

6

The applicability of many of the cases cited by plaintiff depends on this critical (but
unestablished) fact. If this invention is implemented on a computer, and the "pulse
vector generator" is a function defined primarily in software, then the case law provides
an avenue for establishing the applicability of§ 112, ~ 6, determining whether sufficient
corresponding structure has been identified, and for evaluating definiteness under
§ 112, ~ 2. It is worth noting, however, that if a person having ordinary skill in the art
would expect the pulse vector generator to be implemented in hardware (e.g. electronic
circuitry), then such structures would need to be identified.
7

At oral argument, plaintiff's counsel displayed a slide and explained that:
The next portion of the table [1] says, you need to indicate where the pulse
position is, and it indicates here, for example, Channel 1, the pulse position
candidates are 0, 10, 20, 30, and up to 70. One of ordinary skill in the art can

5

relationships involved in generating the excitation vector in the first embodiment,
including a vector di, which is the "signed pulse vector for channel i." (Id., 7:32) In the
first embodiment, the vector di may be a potential output from the pulse vector
generator as identified by a mathematical relationship: "di

= ±o(n -

pi), n

= O-

L - 1"

where an input, "pi[, is the] signed pulse vector candidate for channel i." (Id. at 7:3234) The specification does not explain whether this is an algebraic relationship
employed by the pulse vector generator. (Id. at 7: 10-57) Plaintiff's expert, Dr. Min,
explained that

±8 "is the pulse polarity" and that "pi is the pulse position candidate for

channel i ... as shown in table 1."8 (D.I. 138 at~ 8) Drawing upon the second
embodiment, which discloses "a CELP speech coder," 9 Dr. Min opined that the
"combination index for pulse vectors" 10 is the input for the pulse vector generator. (D.I.
138

at~

5 (citing '295 patent, 10:1-5; 8:58-59)) The second embodiment builds on the

first, "this embodiment applies the excitation vector generator explained in the first
embodiment to the random codebook of the CELP speech encoder of [figure] 1." ('295

understand that you can convert that position and interpret it in bit format. You
see on the right-hand side her[e], it's very simple. Position 0 could be converted
into 000. Position 10 could be converted into 0001. And so this, your Honor, is
the algorithm.
(D.I. 233 at 31 (citing plaintiff's demonstrative slide 13)) These materials do not reflect
the intrinsic record or Dr. Min's opinion. The court declines to consider them.
8

The specification does not draw this connection between pi and table 1. The court
notes that table 1 uses a different notation: "P 1 ," "P 2 ," and "P 3 ," and that P2 and P3 refer
to matrices and not vectors. Dr. Min does not discuss these differences in either of his
reports.

9

The first embodiment discloses an "excitation vector generator." ('295 patent, 6:16-18)
The second embodiment discloses "a CELP speech coder." (Id., 8:37-39) Dr. Min does
not explain why these two disclosures should be read together to explain the algebraic
function that defines how the pulse vector generator operates in the first embodiment.
10

This "input" is also described as the "combination index for pulse positions and pulse
polarities." ('295 patent, 8:58-59) By definition, the combination index may be related
to pi as articulated in the first embodiment.

6

patent, 8:40-43) However, nothing in the specification suggests that the applicant
intended the second embodiment to be read into the first to explain the operation of the
example in the first embodiment so as to impart structure to the "pulse vector generator"
in the first embodiment. The parties agreed that the specification discloses a pulse
vector, but the inputs, outputs, and connections associated with the pulse vector
generator are described at a high level without sufficient detail to explain how the pulse
vector generator "interacts with other components ... in a way that might inform the
structural character of the limitation-in-question or otherwise impart structure" to the
pulse vector generator. 11 Williamson, 792 F.3d at 1351. For these reasons, the court
concludes that defendants have rebutted the presumption against means-plus-function
claiming. Therefore, "pulse vector generator" is governed by§ 112,
5. When § 112,

~

~

6.

6 applies, a "claim shall be construed to cover the

corresponding structure, material, or acts described in the specification and equivalents
thereof." 35 U.S.C. § 112,

~

6. "A patent is invalid for indefiniteness if its claims, read in

light of the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of the
invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
Construing a claim under§ 112,

~

6 "is a two-step process. The court must first identify

the claimed function. Then, the court must determine what structure, if any, disclosed in
the specification corresponds to the claimed function." Williamson, 792 F.3d at 1351.
Means-plus-function claim language is indefinite "if a person of ordinary skill in the art

11

At best, the specification and Dr. Min provide insight into the mathematical
relationships between some of the (possible) inputs into the "pulse vector generator"
and some of the (possible) outputs, but none of this information relates to the structure
of the "pulse vector generator" itself.

7

would be unable to recognize the structure in the specification and associate it with the
corresponding function in the claim." Id. at 1352 (citation omitted).
6. The parties agree that the pulse vector generator performs the function of
"generat[ing] a pulse vector having a signed unit pulse." ('295 patent, 28:18-19; D.I. 130
at 7; see a/so D.I. 109 at 6) Dr. Min explained that "a person skilled in the art would
associate the[] pulse generation rules [as in tables 1 and 2 and elsewhere in the
specification] as the structures corresponding to the recited function." (D.I. 111,

~

56)

Dr. Jayant opined that "the specification does not disclose corresponding structure for
performing ... [the] function," and that tables 1 and 2 merely "show that the positions of
pulses within the pulse vectors may be reflective of an algebraic codebook table"
without disclosing how to generate pulse vectors. (D.I. 131, ~~ 52-53) In the first
embodiment, "the pulse vector generator 101 algebraically generates [three] pulse
vectors in accordance with the rule described in table 1." ('295 patent, 6:46-48; see
also id., 7:6-9) The specification refers to table 1 as "a pulse generation rule." (Id.,

8:22-28; 9:3-8; 9:25; 9:39) The seventh embodiment discloses another set of candidate
positions for the pulses: "[t]he five signed unit pulses constituting the random vector
have pulses each selected from the candidate positions defined for each of zero to
fourth groups shown in table 2." ('295 patent, 27:28-30) Taken together, tables 1 and 2
are rules for where, in vector space, individual pulses may be located; however, neither
table 1 nor table 2 describes an algorithm 12 governing the operation of the pulse vector
generator.

12

The specification discloses algorithms. (See, e.g., '295 patent, 16:46-48, figure 9
("vector quantization algorithm")) Table 1 is identified as a "rule" and nothing in the
record suggests that the applicant intended for the "rule" of table 1 or the "pulse position
candidates" of table 2 to disclose an algorithm.

8

7. Plaintiff argued that "the prefix 'pulse vector' imparts structure to the term
'generator."' (D.I. 109 at 5) Defendants responded that "[t]he prefix 'pulse vector' does
nothing more than restate the specified function of the 'generator."' (D.I. 143 at 1)
"Pulse vector" cannot impart corresponding structure to "generator," because "purely
functional language, which simply restates the function associated with the means-plusfunction limitation, is insufficient to provide the required corresponding structure." Noah
Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012) (citations omitted). Plaintiff
responded that "the term is not indefinite because the specification discloses 'a specific
set of instructions or rules' for generating pulse vectors." 13 (D.I. 137 at 3, quoting Apple,
757 F.3d at 129S) Plaintiff contended that "the specification 'disclose[s] adequate
defining structure to render the bounds of the claim understandable to one of ordinary
skill in the art."' (D.I. 137 at 4, quoting Al/Voice Computing PLC v. Nuance Commc'ns,

Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007)) Al/Voice Computing is inapposite, because
the specification in Al/Voice included an algorithm described in a flow chart in figure SA,
and the patentee's expert "set forth several straightforward ways that the algorithm
represented in figure SA could be implemented by one skilled in the art using wellknown features of the Windows operating system." 14 Al/Voice Computing, 504 F.3d at
1345. Plaintiff argued that "a person of ordinary skill in the art 15 would have been

This citation to Apple relates to the question of whether§ 112, ~ 6 applies and not to
whether "a specific set of instructions or rules" can provide sufficient corresponding
structure to avoid indefiniteness.
13

14

It is not clear that the invention of the '295 patent is implemented in software. In its
reply brief, plaintiff argued (by analogy to Apple, 757 F.3d 12S6) that "a 'pulse vector
generator' is a [computer software] algorithm." (D.I. 137 at 2) However, the
specification does not mention computers, processors, or software. Dr. Min opined that
"memory" is computer memory and that "switch" is either an electrical component or
something implemented in software. (D.I. 111, ~~ 64-74) Dr. Jayant disagreed. (D.I.
131,~66)
15

The parties agreed that a person having ordinary skill in the art "would have had at
least the equivalent of a master's degree in electrical engineering or related discipline,
9

familiar with algebraic codebook tables, such as the ones in tables 1 and 2, and
understood how a pulse vector generator inserts a non-zero number representing a
pulse into at least one of the pulse position candidates shown in the tables." (D.I. 137 at
3 (citing D.I. 138, 11116-9)) Defendants argued that plaintiff cannot "rely on the
knowledge of one of skill in the art to compensate for the lack of disclosure in the '295
patent itself." (D.I. 143 at 3 & n.2, citing Function Media, LLC v. Google, Inc., 708 F.3d
1310, 1319 (Fed. Cir. 2013); Aristocrat Techs. Australia Pty Ltd. v. Int'/ Game Tech.,
521 F.3d 1328, 1336-37 (Fed. Cir. 2008)) The Court in Aristocrat distinguished Al/Voice

Computing and explained that "[t]he question [] is not whether the algorithm that was
disclosed was described with sufficient specificity, but whether an algorithm was
disclosed at all." Aristocrat, 521 F.3d at 1337. The Aristocrat court explained that
the proper inquiry for purposes of§ 112, 116 analysis is to look at the
disclosure of the patent and determine if one of skill in the art would have
understood that disclosure to encompass software to perform the function
and been able to implement such a program, not simply whether one of
skill in the art would have been able to write such a software program.

Id. (citations and quotations omitted). Dr. Min did not explain that the '295 patent
discloses software, nor did he express the opinion that a person having ordinary skill in
the art would recognize tables 1 and 2 as disclosing computer-implemented algorithms.
Instead, Dr. Min opined that "the term 'pulse vector generator' connotes an algorithm,"
and that "a person of ordinary skill would understand [mathematically] how a pulse
vector generator generates pulse vectors." 16 (D.I. 111, 1154; D.I. 138, 115) In light of

or at least [three] years of practical or research experience in the field of digital signal
processing for speech or audio applications." (D.I. 131, 1136; D.I. 111, 1146)
16

See Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) ("A
patentee cannot avoid providing specificity as to structure simply because someone of
ordinary skill in the art would be able to devise a means to perform the claimed function.
To allow that form of claiming under§ 112, 116, would allow the patentee to claim all
possible means of achieving a function.").
10

Aristocrat, the distinction here is between understanding the mathematical operation
involved in calculating a pulse vector and understanding the patent specification as
describing software to perform the function (and being able to program a computer to
perform the function) associated with the pulse vector generator. Based upon the
extrinsic record at hand, Dr. Min has established the former and not the latter.17 Under
§ 112, 116, the term "pulse vector generator" lacks sufficient disclosure of structure and,
therefore, is indefinite under§ 112, 112, because it "fail[s] to inform, with reasonable
certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S. Ct.
at 2124.

8. "Dispersion pattern storage:" 18 "Memory for storing dispersion patterns."
Section 112, 116 does not apply. 19 Not indefinite. The specification discloses that "[a]
memory stores at least one type of dispersion pattern for each of the channels." 20 ('295
patent, abstract; figure 3, items 102, M1, M2, and M3)
9. "Dispersion pattern selector:" 21 "Switch for selecting a dispersion pattern."
Section 112, 116 does not apply. 22 Not indefinite. The specification recites sufficiently
definite structure. For example, figure 3 discloses "a dispersion pattern storing and

17

There is no evidence in the record that a person having ordinary skill in the art would
also be able to program the software necessary to create a computer-implemented
"pulse vector generator," if such a structure were implemented on computer.
18

Found in '295 patent, claims 1 and 3.

19

In order to rebut the presumption that§ 112, 116 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 (citations omitted). Defendants failed to rebut the
presumption.
20

Dr. Min explained that a person having ordinary skill in the art would recognize
"dispersion pattern storage" as "memory." (D.I. 111, 111160-63)
21

Found in '295 patent, claim 1.

22

See supra note 19.
11

selecting section 102 having dispersion pattern storing sections and switches." ('295
patent, 6:20-22; see also figure 3, items 102, SW1, SW2, and SW3; 6:31-37; 6:66-7:5;
8:66-9:3; 11 :31-41; 11 :50-57; and 12:44-13:2) Extrinsic evidence: Dr. Min explained
that figure 3 "graphically represents a switch that selects a dispersion pattern from
multiple dispersion patterns" and that a person of ordinary skill in the art would
recognize that the selector is a switch. (D.I. 111,

~

64-66)

10. "A first selector:" 23 Section 112, ~ 6 does not apply. 24 Not indefinite.
Claim 1 recites "a first selector that pre-selects dispersion patterns of the plurality of
fixed dispersion patterns." ('295 patent, 28:30-31) Figure 3 discloses "a dispersion
pattern storing and selecting section 102 having dispersion pattern storing sections and
switches." ('295 patent, 6:20-22; see also figure 3, items 102, SW1, SW2, and SW3)
The "switches SW1 to SW2 [are] for selecting one kind of dispersion pattern from M
kinds of dispersion patterns stored in the respective storing sections M1 to M3." ('295
patent, 6:34-37) Moreover, "in the CELP speech coder using the excitation vector
generator of the first embodiment in the random codebook, a pre-selection for
dispersion patterns stored in the dispersion pattern storing and selecting section is
carried out ... before searching the index of random codebook." ('295 patent, 11 :52-57
(emphasis added)) While the specification does not identify which specific switch is the
first selector, the specification discloses an algorithm for the operation of the first
selector:
[W]hen the adaptive codebook gain is larger than the threshold value as a
result of the comparison, the control signal provides an instruction to

23

Found in '295 patent, claim 1.

24

Dr. Min opined that "a first selector" would be understood by a person having ordinary
skill in the art as "a first switch." (D.I. 111, ~ 64) Dr. Jayant explained "that the terms
"dispersion pattern selector," "a first selector," and "a second selector" (i.e., "the
'selector' elements") are not understood by persons of ordinary skill in the art to have
sufficiently definite meanings as the names for structure." (D.I. 131, ~ 63)
12

select the dispersion pattern obtained by the pre-training to reduce the
quantization distortion in vector quantization processing for random
excitations. Also, when the adaptive code gain is not larger than the
threshold value as a result of the comparison, the control signal provides
an instruction to carry out the pre-selection for the dispersion pattern
different from the dispersion pattern obtained from the result of the
pretraining.
('295 patent, 12:49-59) For these reasons, § 112,

~

6 does not apply. See Williamson,

792 F.3d at 1349.
11. "A second selector:" 25 Section 112, ~ 6 applies. Indefinite. Claim 1
recites "a second selector that determines the selected dispersion pattern, of the preselected dispersion patterns, to be convoluted with the pulse vector." ('295 patent,
28:32-34) The specification explains that "[t]he pulse vector dispersion section 103
performs convolution of the pulse vectors output from the pulse vector generator and
the dispersion patterns output from the dispersion pattern storing and selecting section
102 in every channel so as to generate N dispersed vectors." ('295 patent, 6:38-43)
The specification does not mention "a second selector," and the specification contains
no algorithms describing the operation of "a second selector." 26 Therefore,§ 112, ~ 6
applies. See Williamson, 792 F.3d at 1349.
12. Construing a claim under § 112,

~

6 "is a two-step process. The court must

first identify the claimed function. Then, the court must determine what structure, if any,
disclosed in the specification corresponds to the claimed function." Williamson, 792
F.3d at 1351. Means-plus-function claim language is indefinite "if a person of ordinary

25

Found in '295 patent, claim 1.

26

Plaintiff argued that the specification "describes that each switch in figure 3 can be
replaced with two switches-a first switch for pre-selecting one group of dispersion
patterns, and a second switch for selecting from the pre-selected group a dispersion
pattern with a certain index." (D.I. 109 at 11-12 (citing '295 patent, 11 :50-57)) The cited
passage does not identify any structures, nor does it discuss the function associated
with "a second selector" as described in the claims.
13

skill in the art would be unable to recognize the structure in the specification and
associate it with the corresponding function in the claim." Id. at 1352 (citation omitted).
The function of "a second selector," under§ 112, 116, is "determin[ing] the selected
dispersion pattern, of the pre-selected dispersion patterns, to be convoluted with the
pulse vector." The structural relationships are described as follows:
The pulse vector dispersion section 103 performs convolution of the pulse
vectors output from the pulse vector generator 101 and the dispersion
patterns output from the dispersion pattern storing and selecting section
102 in every channel so as to generate N dispersed vectors.
('295 patent, 6:38-42) A "second selector" is located somewhere within the "dispersion
pattern storing and selecting section 102" in the functional block diagram, figure 3.
However, the specification does not identify a structure corresponding to "a second
selector" within the dispersion pattern storing and selecting section. Plaintiff did not
identify how "a second selector" "determines the selected dispersion pattern," and Dr.
Min's declarations provided no additional insight. (D.I. 111, 111164-74; D.I. 138, 11111415) For these reasons, "a second selector" as construed under § 112, 116 is indefinite
under§ 112, 112.
13. "An arranging unit:" 27 "Circuitry or a combination of circuitry and software
that operates to insert signals into symbols of a CQI transmission slot." Section 112, 116
does not apply. 28 Not indefinite. Claim 9 recites:
A radio communication apparatus comprising:
an arranging unit configured to arrange two reference signals (RS),
which are produced by multiplying two reference signal
sequences with values having opposite phases from each other,
in the Nth symbol and the Mth symbol of a CQI signals
transmission slot, and to arrange channel quality indicator (CQI)

27

Found in '538 patent, claims 9 and 14.

2a See supra note 19.

14

signals in symbols of the CQI signals transmission slot other
than the Nth symbol and the Mth symbol, ...
('538 patent, 18:60-19: 17) The claim language itself provides sufficiently definite
structure for "an arranging unit" "by describing the claim limitation's operation, such as
its input, output, or connections." Apple, 757 F.3d at 1299. The specification, with
reference to figures 5 and 8-11, also demonstrates the input, output, or connections
associated with the "arranging unit." Defendants have failed to rebut the presumption
that§ 112, ~ 6 does not apply. 29
14. "Format for transmitting an ACK/NACK signal:" 30 "A first slot structure
for transmitting an ACK/NACK signal." Claim 10 depends on claim 9, which recites:
A radio communication apparatus comprising:

a transmitting unit configured to transmit the spread ACK/NACK
signal in the ACK/NACK signal transmission slot;
an arranging unit configured to arrange two reference signals (RS),
which are produced by multiplying two reference signal
sequences with values having opposite phases from each other,
in the Nth symbol and the Mth symbol of a CQI signals
transmission slot, and to arrange channel quality indicator (CQI)
signals in symbols of the CQI signals transmission slot other
than the Nth symbol and the Mth symbol, ...
('538 patent, 18:60-19: 15) The slot structure associated with the ACK/NACK signal is
disclosed in claim 9 and in the specification. ('538 patent, 19:5-6; figures 1, 8, 9, 10,
and 11) Claims 9 and 10 are not limited to the transmission of a reference signal in the
ACK/NACK signal transmission slot. 31 For example, claim 10 distinguishes between

Defendants relied solely on the application of§ 112, ~ 6 as their basis for
indefiniteness. (See D.I. 130 at 21-23; D.I. 143 at 11)

29

° Found in '538 patent, claim 10.

3

31

The parties argued the construction of claims 10 and 15 together. Plaintiff had
proposed "a slot structure for transmitting an ACK/NACK signal and a reference signal."
(D. I. 102 at 7) Neither party addressed the differences between these two claims as it
relates to the inclusion of a reference signal in the ACK/NACK signal. Plaintiff
15

"the spread ACK/NACK signal in the ACK/NACK signal transmission slot" and "the
reference signals (RS) and the CQI signals arranged in the CQI signals transmission
slot." ('538 patent, 19:21-24)
15. "Format for transmitting an ACK/NACK signa1:" 32 "A first slot structure
for transmitting an ACK/NACK signal and a reference signal." Claim 15 depends on
claim 14, which recites:
A radio communication apparatus comprising:
an arranging unit configured to arrange the spread ACK/NACK
signal in the 1st, 2nd, 6th and 7th symbols of the ACK/NACK
signal transmission slot and to arrange first reference signals
(1st RS) in 3rd, 4th and 5th symbols of the ACK/NACK signal
transmission slot; and
a transmitting unit configured to transmit the ACK/NACK signal and
the first reference signals (1st RS) arranged in the ACK/NACK
signal transmission slot, ...
('538 patent, 20: 1-21) This specific slot structure associated with the ACK/NACK signal
is disclosed in claim 14 and in the specification. ('538 patent, 20:14-18; figures 1, 8, 9,
10, and 11) Claim 14 includes the limitation that the ACK/NACK signal transmission
slot includes symbol positions for a reference signal. Claim 15 recites:
The radio communication apparatus according to claim 14, wherein
the transmitting unit transmits the ACK/NACK signal and the first
reference signals (1st RS) arranged in the ACK/NACK signal

contended that the specification explicitly includes '"reference signal[s]' in the
ACK/NACK and CQI formats." (D.I. 109 at 24) Plaintiff clarified that "all of the
embodiments of the '538 patent discuss the reference signals, as their positions are
critical to the claimed invention." (D.I. 137 at 12 (emphasis in original)) Defendants
responded that the intrinsic record provides "no evidence of a 'clear intention' to include
... [the reference signal] limitations in the meaning of 'format"' and that it is improper to
import the "slot structure" limitation into the claims. (D.I. 130 at 24-25) As discussed
herein, the differing limitations of claims 10 and 15 support different constructions of the
relevant terms.
32

Found in '538 patent, claim 15.
16

transmission slot or the second reference signals (2nd RS) and
the CQI signals arranged in the CQI signals transmission slot
using a physical resource that supports a mixture of a format for
transmitting an ACK/NACK signal and a format for transmitting
CQI signals.
('538 patent, 20:32-41) Claim 15 includes the limitation that the ACK/NACK signal is
transmitted with the first reference signals.
16. "Format for transmitting CQI signals:" 33 "A second slot structure for
transmitting the CQI signals and the reference signals." "Format for transmitting CQI
signals:" 34 "A second slot structure for transmitting the CQI signal and the second

reference signals." A slot structure is described in the claims and the specification.
('538 patent, 19:10-14; 19:23-24; 20:22-32; 20:37-38; figures 5, 8, 9, 10, 11, and 16) In
claim 10, reference signals and CQI signals are arranged and transmitted in the "CQI
signals transmission slot." ('538 patent, 19: 15-17; 19:23-24) Claim 15 (including the
second reference signals) is similarly limited. ('538 patent, 20:22-29; 20:36-38)
17. "A physical resource that supports a mixture of a format for
transmitting an ACK/NACK signal and a format for transmitting CQI signals:" 35 "A

physical resource that supports transmitting, at the same time, a first slot structure for
transmitting the spread ACK/NACK signal, and a second slot structure for transmitting
the CQI signals and the reference signals." "A physical resource that supports a
mixture of a format for transmitting an ACK/NACK signal and a format for
transmitting CQI signals:" 36 "A physical resource that supports transmitting, at the

same time, a first slot structure for transmitting an ACK/NACK signal and the first

33

Found in '538 patent, claim 10.

34

Found in '538 patent, claim 15.

35

Found in '538 patent, claim 10.

36

Found in '538 patent, claim 15.
17

reference signals, and a second slot structure for transmitting the CQI signals and the
second reference signals." The ACK/NACK signal transmission slot and the CQI
signals transmission slot are transmitted at the same time. Plaintiff argued that the
construction of "mixture" "incorporates the limitation that the formats must be sent 'at the
same time."' (D.I. 109 at 24) Defendants' expert, Dr. Stephen B. Wicker ("Dr. Wicker"),
opined that "[r]esource blocks are made up of multiple resource elements, not all of
which are transmitted simultaneously. Each symbol within a single slot is transmitted
consecutively. Two signals can be transmitted in those symbols within the same
resource block, but sent consecutively, rather than simultaneously." (D.1.133,

~

65)

Based upon this explanation, defendants contended that the ACK/NACK signal and the
CQI signals can be sent "at different times." (D.I. 130 at 25)
18. The specification discusses the background art in which the "ACK/NACK
signal is transmitted to the base station using an uplink control channel such as a
PUCCH ('Physical Uplink Control Channel')." ('538 patent, 1:22-24) It is possible "to
"code-multiplex ACK/NACK signals from a plurality of mobile stations by spreading
using ZC (Zadoff-Chu) sequences and Walsh sequences. "37 ('538 patent, 1:46-49) The
specification identifies the problem to be solved as: "in a PUCCH of [the] 3GPP LTE
[specification], not only the above-described ACK/NACK signals but also CQI (Channel
Quality Indicator) signals are multiplexed." ('538 patent, 3:24-26) However, "Walsh
sequences are not applicable to CQI signals and therefore the Walsh sequences cannot
be used to separate an ACK/NACK signal and CQI signal," but it is possible to separate
these signals with "little inter-code interference" by using ZC sequences to despread an
ACK/NACK signal and CQI signal spread using ZC sequences associated with different
cyclic shifts." ('538 patent, 3:32-40) The specification explains that, "when despreading

37

The court notes that code-division multiplexing is a method of multiplexing signals
that are sent at the same time.
18

is performed using ZC sequences to separate a CQI signal from an ACK/NACK signal,
a little inter-code interference from the ACK/NACK signal remains." ('538 patent, 3:4750) Specifically, with respect to reference signals ("RS"):
As shown from FIG. 1 and FIG. 5, an ACK/NACK signal and CQI signal
employ different signal formats and their RSs are defined in different
positions (that is, the positions of these RS are optimized independently in
case where only an ACK/NACK signal is received and in case where only
a CQI signal is received). Therefore, there is a problem that the amount of
interference from an ACK/NACK signal to RSs of a CQI signal varies
depending on the content of data of the ACK/NACK signal or the phases
of W 1 and W 2 used for the ACK/NACK signal. That is to say, even
though RSs are important portions for receiving a CQI signal, there is a
possibility that the amount of interference in these RSs cannot be
predicted, thereby deteriorating CQI receiving performance.
('538 patent, 3:50-63) This interference is the result of transmitting the two signals
(ACK/NACK and CQI) at the same time. According to the specification, the solution to
this interference involves "add[ing] a phase according to part of the orthogonal
sequence [used to spread the ACK/NACK signal], to a reference signal of a channel
quality indicator signal including the reference signal to which the phase is added."
('538 patent, 4:11-17) In claims 9 and 14, the "arranging unit" adds this phase to the
reference signals transmitted in the CQI signals transmission slot. ('538 patent, 19:714; 20: 14-18; 20:22-29) Nothing in the specification or the claims suggests that, within
the scope of claims 10 and 15, the ACK/NACK signal transmission slot and the CQI
signals transmission slot are transmitted sequentially or at different times. 38
19. "Multiplexing the aperiodic channel quality indicator report, with
data:" 39 "Multiplexing the aperiodic channel quality indicator report with user data."

38

The specification mentions that there are situations where the ACK/NACK signal and
the CQI signals are transmitted at different times, but the problem the '538 patent seeks
to solve is what happens when these two signals are transmitted at the same time.
39

Found in '239 patent, claim 8.
19

"Without multiplexing the aperiodic channel quality indicator report with data:" 40

"Without multiplexing the aperiodic channel quality indicator report with user data." The
mobile station ("MS") or user equipment ("UE") transmits a "channel quality indicator"
("CQI") report to the base station. ('239 patent, 1:20-21; 9:30-32) Based upon the
quality of channel, the aperiodic CQI may be transmitted from the UE to the base station
with or "without multiplexing with user data."41 ('239 patent, 10:56-61)
20. 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.

4

°Found in '239 patent, claim 8.

41

The specification states that "in case a data buffer at the UE is non-empty, user data
and CQI are multiplexed with each other." ('239 patent, 8:43-44 (emphasis added)) "It
is desirable to define a control signaling scheme ... , wherein the [aperiodic CQI] report
only contains CQI information, i.e. without multiplexing the CQI information with Uplink
Shared Channel data." ('239 patent, 9:30-34) "One main aspect of the invention is to
use a selected transport format for CQI report in a predetermined reporting mode just in
selected conditions. More generally, a control channel signal from a base station to a
terminal is defined, which comprises a selected transport format, which is to be used by
the terminal for user data transmission to the base station." ('239 patent, 9:49-54
(emphasis added))
20