High Point Sarl v. Sprint Nextel Corporation et al
Filing
843
MEMORANDUM AND ORDER granting in part 742 plaintiff's Motion to Adopt in Part, and Clarify and Modify In Part, the Special Master's Report and Recommendation on Claim Construction; granting in part 744 Sprint's Motion for Review of Special Master Bayer's Report and Recommendation on Claim Construction; adopting in part 722 the Special Master's Report and Recommendation on Claim Construction. Signed by District Judge Carlos Murguia on 8/3/2012. (jw)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
HIGH POINT SARL,
)
)
Plaintiff and Counterclaim-Defendant, )
)
v.
)
)
SPRINT NEXTEL CORPORATION, et al.,
)
)
Defendants and Counterclaimants.
)
)
__________________________________________)
Case No. 09-02269-CM
MEMORANDUM AND ORDER
Plaintiff asserts that defendants infringe four United States patents1 directed to a cellular code
division multiple access (“CDMA”) telephone network and other wireless networks. After extensive
briefing and argument on claim construction, Special Master Karl Bayer submitted a report and
recommendation regarding his proposed constructions for the disputed claim terms (Doc. 722)
(“R&R”).2
Each side submitted objections to the R&R. The court analyzed the patents, the technology
tutorial transcript and slides, the numerous briefs, the claim construction transcript, the R&R, and each
party’s objections to the R&R. Based on a de novo review, the court provides its claim construction
ruling.
I. Technology Overview3
1
The asserted patents include: (1) U.S. Patent No. 5,195,090 (“the ‘090 Patent”); (2) U.S. Patent No. 5,305,308 (“the
‘308 Patent”); (3) U.S. Patent No. 5,184,347 (“the ‘347 Patent”); and (4) U.S. Patent No. 5,195,091 (“the ‘091
Patent”).
2
The court genuinely appreciates Special Master Bayer’s assistance with claim construction. His R&R was thoughtful
and very well written. He did a nice job identifying the relevant issues, researching the applicable law, and providing
a succinct analysis and recommendation.
3
The technology overview is not binding but is provided for context.
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Cellular mobi telephone networks allow mobile telephone u
C
ile
e
a
e
users to conn to the tr
nect
raditional
land-base public tel
ed
lephone netw
work, called the Public S
Switched Tel
lephone Netw
work (“PSTN
N”). Once
connected to the PST the call can be routed to any land
TN,
c
d
d-line teleph
hone in the w
world or to a other
any
mobile user connecte to the PST
ed
TN.
The compone of a typi mobile phone netwo include t mobile un a base st
T
ents
ical
p
ork
the
nit,
tation (or
cell), a sw
witching sys
stem, and the PSTN.
e
The mobile un sends cal traffic ove the air to a base
unit
ll
er
station by means of radio waves. This is the “air interfac
y
r
ce.” The rem
mainder of th system is the
he
“terrestri infrastruc
ial
cture.” The patents discu a way to design and implement t terrestria
p
uss
the
al
infrastruc
cture.
II Legal Sta
I.
andards
This court’s claim constru
T
c
uction analy is guided by the Fede Circuit’s en banc op
ysis
d
eral
pinion in
Phillips v. AWH Corp 415 F.3d 1303 (2005 In that op
v
p.,
d
5).
pinion, the F
Federal Circu reiterated that claim
uit
d
terms are given their plain and or
e
rdinary mean
ning, which is “the mean
ning that the term would have to a
e
d
person of ordinary sk in the art in question at the time o the invent
f
kill
t
of
tion, i.e., as of the effect filing
tive
date of th patent app
he
plication.” Id. at 1313. To determin how a per
I
ne
rson of ordin
nary skill in t art
the
would un
nderstand a claim term, courts look to several sources includ
c
c
t
ding “the wo of the cl
ords
laims
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themselves, the remainder of the specification, the prosecution history, and extrinsic evidence
concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.
at 1314.
In discussing these sources, the Federal Circuit explained that the claims themselves provide
“substantial guidance as to the meaning of particular claim terms.” Id. Moreover, the other claims in
the patent—both asserted and unasserted—can be valuable sources regarding the meaning of a claim
term. Id. Despite the primacy of the claim language, the specification “is always highly relevant to
the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Id.
But the Federal Circuit has “expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to that embodiment.” Id. at
1323. The prosecution history also helps demonstrate how the inventor understood the patent and
whether the inventor limited the scope of the claims to obtain his patent. Id. at 1317.
Some claim terms are written in means-plus-function (“MPF”) format. This claiming format is
allowed and defined by 35 U.S.C. § 112, ¶ 6, which allows an inventor to draft a claim in functional
terms rather than defining the structural elements or components that accomplish the function. Claim
elements that employ the word “means” are presumed to be in MPF format, and claim terms that do
not include the word “means” are presumed to not be in MPF format. Construction of a MPF claim
term involves two steps. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.
Cir. 2006). First, the function must be identified. Id. Second, the structure in the specification that
accomplishes the claimed function must be identified. Id.
III. Terms In Standard Format
The parties dispute multiple claim terms that are in standard claim format. The court addresses
each term and the corresponding objections.
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A. “TDM Communications Link Interface” and “Packet Communications Link
Interface”
Neither party objects to the recommended constructions for these terms. And, after an
independent review, the court agrees with the analysis in the R&R. Accordingly, the court determines
that “time-division-multiplexed (TDM) communications link interface” means “an interface
which sends and/or receives time-division multiplexed traffic” and that “packet communications
link interface” means “an interface which sends and/or receives packets.”
B. “Switching System”
Sprint objects to the recommended construction for this term on the grounds of legal error.
Specifically, Sprint argues that the R&R adopts the construction “closest” to the correct construction
instead of declaring the correct construction. Doc. 747 at 31. Sprint proposes that the correct
construction is “elements that are needed to switch digital traffic originating from or destined for a
cell.” Id.
Sprint is correct that the court is obligated to declare the meaning of claim terms. See Exxon
Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556 (Fed. Cir. 1995) (explaining that the judge
must “declare the meaning of the claims” and not simply decide “which of the adversaries is correct”).
Although the R&R might have inartfully used the word “closest,” it is clear to this court that the
Special Master carefully reviewed the law and evidence, concluded that Sprint’s proposed construction
was incorrect, and determined that High Point’s construction was correct.
In addition, the court’s independent review of the evidence further confirms that the proposed
construction is correct. The claim language indicates that this term is a broad term and that there may
be more than one switching system. See, e.g., ‘090 Patent at 48:44 (“at least one switching system”).
The claim context also indicates that the switching system includes the components that switch digital
traffic. This understanding of the claim context is reinforced by the technical definition of “switching
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system.” And both experts agree that this technical definition embodies the ordinary meaning of the
word. Accordingly, the court overrules Sprint’s objection and determines that “switching system”
means “components of a mobile telecommunications network that switch digital traffic
originating from or destined for a cell.”
C. “Fluctuating Transmission Delay” and/or “Phase . . . Fluctuating”
Sprint objects to the proposed constructions for these terms and argues that the negative
limitations proposed by Sprint are required by prosecution history estoppel. These terms appear in
two related applications, and the same examiner reviewed both applications. The patent examiner
rejected both applications under 35 U.S.C. § 101 for claiming the same invention. In responding to
these objections, the patentee made the following statements:
Consequently, a system may have only one of the two sources of asynchrony enumerated
in the two applications: either a transmission medium having a fluctuating transmission
delay (the subject of the other application), or fluctuations between clock signals (the
subject of this application).
Further, applicants’ attorney pointed out that the claims of the two applications explicitly
distinguish in their recitations between these two sources of asynchrony. Each
independent one of the claims 3-23 and 26-46 of this application recites that the first unit
is timed by clock signals that have a phase different from and fluctuating with respect to
clock signals that time the second unit, and do not have any recitations directed to the
transmission medium. In contrast, each independent one of the claims of the other
application recites a communications medium that has a fluctuating transmission delay,
and recite the first and second units to be clocked by same-frequency clock signals.
Consequently, the claims of the two applications clearly distinguish between which one
of the two sources of asynchrony must be present for the claims to apply. Clearly, then,
the claims of the two applications are direct to two independent and distinct inventions.
Doc. 627-12 at 3 (emphasis in original).
Sprint’s prosecution history estoppel argument focuses on the last sentence, where the
patentee described the claims of the two applications as directed to “independent” inventions.
Specifically, Sprint argues—based on an opinion of the Court of Customs and Patent Appeals—
that “independent and distinct inventions” means that there is “no overlap in claim scope”
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between the claims of the two applications. Doc. 747 at 33 (relying on Application of Schneller,
397 F.2d 350, 354–55 (C.C.P.A. 1968)). Therefore, to honor this disclaimer, Sprint argues that
the construction for these claim terms must include the following negative limitations: “not due
to clock drift” for the former and “not due to transmission delay” for the latter.
The court disagrees with Sprint’s argument because it focuses on a single word and not
the overall context of the office action. The body of the argument explains that the claims of the
two different inventions are designed to correct the operations of two devices that could become
asynchronous due to different causes. The claims in each application then distinguish between
which one of the two sources of asynchrony must be present for the claims to apply. Requiring a
source of asynchrony to be present, however, does not mean that other sources of asynchrony
cannot be present—particularly because the relevant claims are open ended.
The court agrees that the public has the right to rely on statements made during
prosecution. But a member of the public reading this office action would not emphasize a single
phrase to the exclusion of the rest of the office action—especially when emphasizing the single
phrase and ignoring the context results in the claims not covering any disclosed embodiment.
See On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir.
2004) (“[A] claim interpretation that excludes a preferred embodiment from the scope of the
claim is rarely, if ever, correct.”). The court also rejects Sprint’s argument regarding the
inclusion of “data” in the construction. Neither of the prosecution history statements represents
the clear and unmistakable disavowal of claim scope required by the Federal Circuit. Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“[F]or prosecution
disclaimer to attach, our precedent requires that the alleged disavowing actions or statements
made during prosecution be both clear and unmistakable.”).
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The court overrules Sprint’s objections and construes “fluctuating transmission delay”
to mean “a delay in transmission of data that varies over time due at least in part to the
path on which the data is sent” and “phase . . . fluctuating” to mean “a phase that varies
over time due at least in part to clock drift.”
D. “Call-Handling Module” and “Interface Arrangement”
Sprint objects to both recommended constructions and argues that these terms are in MPF
format. Specifically, Sprint argues that “call-handling module” is a functional limitation that
accomplishes 8 functions and lacks corresponding structure (rendering the claim invalid).4 Similarly,
Sprint argues that “interface arrangement” is a functional limitation that accomplishes 14 functions
and lacks corresponding structure (likewise rendering the claim invalid).5
These terms do not include the word “means” and, therefore, are presumed to not be in MPF
format. Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir.
1998). Sprint can rebut this heavy presumption if the intrinsic and extrinsic evidence so warrant. Id.
at 704. In determining whether Sprint rebuts this presumption, “the focus remains on whether the
claim as properly construed recites sufficiently definite structure to avoid the ambit of [35 U.S.C.]
§ 112, ¶ 6.” Id.
The court agrees with the R&R that Sprint has not rebutted the presumption. As an initial
point, there are several aspects of Sprint’s proffered constructions that are concerning to the court. As
one example, Sprint’s proposed function for “interface arrangement” constitutes the entire claim minus
4
Sprint argues that claim 54 of the ‘090 Patent assigns eight functions to the call-handling module. Sprint
acknowledges that the call-handling module is the structure that performs these functions but argues that call-handling
module is a “nonce” term that does not identify any specific structure for performing the recited functions.
5
Sprint argues that claim 40 of the ‘347 Patent recites a cellular-radio telephone system that includes three components:
(1) the arrangement, (2) at least one cell, and (3) a mobile-telephone switching system. Based on Sprint’s reading of
the claim, the entire method occurs in the arrangement. Sprint further argues that the specification fails to disclose any
corresponding structure because the patent only discloses that the interface arrangement is inside (versus distinct from)
the switching system.
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the preamble. As another example, both of Sprint’s proposed functions repeatedly include the term to
be construed (e.g., “receiving from a link at a call-handling module first packets . . . .”). Such
constructions seem redundant and would be difficult for a jury to apply.
Regardless, the court determines that “module” and “interface” are a sufficient recitation of
structure to avoid 35 U.S.C. § 112, ¶ 6. Contrary to Sprint’s argument, neither term is a nonce term or
a coined term that lacks a clear meaning. Rather, both terms have a well-known meaning to those of
skill in the art. See Stanacard, LLC v. Rebtel Networks, AB, 680 F. Supp. 2d 483, 498 (S.D.N.Y.
2010) (“Numerous cases demonstrate that the term ‘module,’ in the context of the telecommunications
field, denotes sufficient structure such that § 112, ¶ 6 does not apply.”); see also IEEE Dictionary
(“interface”) (5th ed. 1993) (defining “interface” as “a hardware or software component that connects
two or more other components for the purpose of passing information from one to the other”).
Moreover, the fact that these terms do not connote a specific physical structure does not detract from
the definiteness of the term. Instead, it is sufficient that these terms convey to one of skill in the art a
variety of structures known as “modules” and “interfaces.” See Semitool, Inc. v. Novellus Sys., 44 F.
App’x 949, 956 (Fed. Cir. 2002) (determining that “wafer support” conveys sufficient structure to
preclude the application of 35 U.S.C. § 112, ¶ 6 and explaining that “[t]he fact that the term ‘support’
does not specifically evoke a particular structure does not change that fact that it does connote
structure”).
Because Sprint fails to rebut the presumption against MPF treatment, the court applies the
traditional claim construction analysis to both terms. After an independent review of the intrinsic and
extrinsic evidence, the court agrees with the proposed construction for both terms. Accordingly, the
court determines that “call-handling module” means “an assembly of interconnected components
which processes incoming and outgoing call traffic” and “interface arrangement” means “an
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arrangement of interconnections between components of a wireless telecommunications network
that synchronize the routing of call traffic between a cell and the source or destination of the
call.”
E. “In Response To . . . Incoming” and “In Response To . . . Outgoing . . .”
Sprint objects to the recommended construction on grounds of legal error. Specifically, Sprint
argues that this term is in step-plus-function (“SPF”) format. According to Sprint, the claim limitation
is not merely transmitting packets. Rather, the claim requires transmitting packets in statistically
multiplexed form. And statistical multiplexing is a function that is the result of several acts that are
not recited in the claim. See 8-18-2011 Tr. at 491–96 (outlining Sprint’s position).
The court understands Sprint’s argument as well as Sprint’s concern that High Point is
attempting to read “statistical multiplexing” out of every claim element. Id. at 554. But the court does
not agree that statistical multiplexing is a function of this claim element. Simply because the packets
are transmitted in “statistically-multiplexed form” does not mean that statistical multiplexing is a
function of this claim term. Rather, the inclusion of statistically-multiplexed form is describing what
is being transmitted.
In addition, the Federal Circuit has instructed that 35 U.S.C. § 112, ¶ 6 does not apply “without
a showing that the limitation contains nothing that can be construed as an act.” Masco Corp. v. United
States, 303 F.3d 1316, 1327 (Fed. Cir. 2002). Here, the claim element includes an act—namely
transmitting packets. See id. (explaining that “transmitting a force” is not in SPF format).
Accordingly, the court determines that this claim element is not in SPF format. The court also agrees
for the reasons in the R&R that these terms do not require additional construction. The court overrules
Sprint’s objection and determines that these claim terms should be given their plain and ordinary
meaning.
F. Third Unit / Third Operating Unit
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The R&R determines that this term is in MPF format and recommends a function and
corresponding structure. High Point objects to the Special Master’s conclusion that this term is in
MPF format. Like the terms previously considered, this claim element does not use the word “means.”
Therefore, Sprint has to overcome the presumption against MPF claiming.
The relevant claim language is: “a third unit for interfacing communications between the first
and the second units” and “a third operating unit for interfacing the operations of the first unit with the
operations of the second unit.” Based on this language, the function for each term is easily
discernible: “interfacing communications between the first and second units” and “interfacing the
operations of the first unit with the operations of the second unit,” respectively.
The issue becomes whether “third unit” and “third operating unit” connote sufficiently definite
structure. The court determines that they do not. The term “unit” is a generic term, and the adjective
“third” does not provide any generally understood structural meaning. See Welker Bearing Co. v.
PHD Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (determining that “mechanism for moving said
finger” was a MPF limitation); see also LG Elecs., Inc. v. Quanta Computer Inc., No. 07-cv-361-bbc,
2008 U.S. Dist. LEXIS 16669 at *4–5 (W.D. Wis. Mar. 4, 2008) (explaining that a “unit” could be
“almost anything” and determining that “input unit,” “recording unit,” and “reproducing unit” were
subject to construction under 35 U.S.C. § 112, ¶ 6). Accordingly, the court overrules High Point’s
objection and determines that “third unit” is in MPF format.
Although not the subject of a specific objection, the court also agrees with the recommended
function and corresponding structure. Accordingly, these terms have the following function and
corresponding structure:
Third Unit
Function:
Interfacing communications between the first and second units
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Structure:
Clock circuit 600 for establishing a nominal frequency, adaptive
synchronization circuit 611 and processor 602 programmed to control
circuit 611 to change, as required, the timing of transmission or receipt
signals at the first or second units so as to maintain the asynchrony
between the first and second units within the prescribed window
Third Operating Unit
Function:
Interfacing the operations of the first unit with the operations of the second
unit
Structure:
Clock circuit 600 for establishing a nominal frequency, adaptive
synchronization circuit 611 and processor 602 programmed to control
circuit 611 to change, as required, the timing of transmission signals at the
first unit so as to maintain the asynchrony between the first and second
units within the prescribed window
IV. Terms In MPF Format
The parties agree that the remaining terms are in MPF format and are governed by 35 U.S.C.
§ 112, ¶ 6. The court addresses each term below.
A. Claim 28 (‘090 Patent)
There are two MPF terms in claim 28.
1. First Means
The relevant language is:
first means responsive to said radio reception of incoming voice call traffic from a
plurality of the radio telephones, for statistically-multiplexing packets carrying the
incoming call traffic of individual calls from the plurality of radio telephones, and
responsive to receipt from a source of statistically-multiplexed packets carrying
outgoing voice call traffic of the individual calls, for demultiplexing the received
multiplexed packets for radio transmission of the outgoing traffic to the plurality of
radio telephones[.]
‘090 Patent at claim 28. Sprint objects to the recommended function and structure.
a) Function
Sprint argues that the recommended function should include the “responsive to” language.
After reviewing the claim language and relevant evidence, the court overrules Sprint’s objection on
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this issue. The claim language indicates that the “responsive to” language is not describing the
performed function. Rather, this language is describing the relationship between the first means and
other claim elements. This understanding of the claim language is consistent with Federal Circuit case
law explaining that the claimed function typically follows the word “for.” See Micro Chem., Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (explaining that the function is
“signaled by the preposition ‘for’”); Rodime PLC v. Seagate Techs., Inc., 174 F.3d 1294, 1303 (Fed.
Cir. 1999) (“The prepositional link ‘for’ ties the ‘means’ to its function.”). Also relevant to the court’s
construction is the claim context. Specifically, the commas after “telephones” and “calls” indicate that
the claim is beginning to recite the claimed functions.
Sprint also argues that the recommended construction essentially removes the “responsive to”
limitation because High Point will argue that everything is responsive to said radio reception of
incoming voice call traffic from a plurality of the radio telephones. That specific issue is not currently
before the court, and the court does not express an opinion on it. Rather, the issue before the court is
the proper construction for the “first means” limitation. And, for the reasons stated herein, the court
determines that the “responsive to” language is not part of the function for that term. Sprint can
address its concerns that High Point is improperly construing or applying the “responsive to” phrase
either by seeking construction of the “responsive to” language or raising an invalidity argument.
The case law and office action amendment cited by Sprint do not alter the court’s conclusion.
In the case cited by Sprint—Mettler-Toledo, Inc. v. Fairbanks Scales Inc., 551 F. Supp. 2d 576, 596
(E.D. Tex. 2008)—the court did not engage in an analysis of the relevant issue because the parties
agreed that the “responsive to” language was part of the function. Conversely, several cases identified
by High Point analyze this issue and conclude that the “responsive to” language is not part of the
function. See, e.g., Alt v. Medtronic, Inc. No. 2:04-cv-370, 2005 U.S. Dist. LEXIS 44928, at *13–14
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(E.D. Tex. Nov. 30, 2005) (concluding that “responsive to” language “does not describe what function
is performed, but rather how the function is performed”).6 The prosecution history statement
identified by Sprint is also unpersuasive. In that office action response, the patentee is describing the
role of the specification and the claims. It is not—contrary to Sprint’s argument—expressly stating
that the function includes the “responsive to” language. Accordingly, the court overrules Sprint’s
objection on this issue.
b) Structure
Based on this function, the R&R recommends that the corresponding structure is “cluster
controller 244, including controller 393.” Sprint argues that the R&R “makes a fundamental legal
error in omitting the algorithm” from the corresponding structure and a “fundamental factual error in
assuming that ‘cluster controller 244 is a specialized device known to a person of ordinary skill in the
art (“POSITA”) at the time of the invention.’” Doc. 747 at 17.
The initial issue before the court is whether a POSITA at the time of the invention would
recognize cluster controller 244 as identifying a specialized device. This was a difficult issue, but the
court answers this question in the negative. The court recognizes that there were devices at the time of
the invention that were known as cluster controllers and did multiplexing. An example identified by
High Point’s expert—but not identified in the specification—is IBM 3274. The IBM 3274 was
available at the time of invention and connected terminals to a mainframe. But High Point did not
identify a single available device that performed the claimed function. Indeed, High Point’s expert
6
Sprint argues that the district court in Alt construed the language between “means” and “for” as part of the function for
another term in the patent. Doc. 627 at 28. The term Sprint is referring to is “[a]ctivity sensor means arranged and
adapted to be implanted in the patient to respond to movements of the patient for conversion thereof into a rate
determining signal to be applied to said rate selecting means.” In construing this term, the district court included the
“to respond to” language in the function because (1) the specification indicated that the activity sensor must respond to
movements of the patient first, before it can convert the movements into a rate determining signal, and (2) the claim
does not use traditional MPF language because the “thereof” language refers back to the movement of the patient that
the activity sensor responded to. Alt, 2005 U.S. Dist. LEXIS 44928, at *20–21. Similar circumstances are not present
in this case.
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concedes that “the particulars of cluster controller 244 and the manner in which it is used in the
claimed inventions was not previously known[.]” 5-13-2011 Chandler Decl. at ¶ 20; see also 8-182011 Tr. at 667 (High Point’s expert agreeing that “the ones of ordinary skill in the art would not
expect [the claimed functions] to be performed by existing cluster controllers”); id. at 733–34 (Sprint’s
expert explaining that the known cluster controllers “were designed for completely different systems”
and had “nothing to do with deterministic traffic, voice traffic, or anything else”).
The fact that the available cluster controllers did not perform the claimed functions indicates
that a POSITA would not recognize cluster controller 244 as identifying a specialized device. See 818-2011 Tr. at 741 (Sprint’s expert concluding that “I don’t think anyone in the skill of the art would
think they were the . . . same thing”). This conclusion is further supported by the specification
because the specification does not treat cluster controller 244 as a reference to an available device.
For example, unlike other components, the specification does not identify any specific examples of
known cluster controllers nor does it indicate that cluster controllers were well known in the prior art.
See ‘090 Patent at 18:5–6 (explaining that vocoders “are well known in the art”). In addition, the
specification describes the components of cluster controller 244 and even includes figures showing the
internal components of the cluster controller. ‘090 Patent at 11:54-12:19; id. at Fig. 2. One of these
components is controller 393, which is described as a “general purpose microprocessor.” Id. at 11:60.
And the parties agree that part of the claimed function occurs in this processor. See, e.g., 8-18-2011
Tr. at 654 (explaining that statistical multiplexing is “software based”). The inclusion of these
additional details—particularly the general-purpose microprocessor—indicates that the specification is
not identifying a known specialized device. Rather, the specification is identifying a computer.
High Point argues that it is “irrelevant” that the available devices could not perform the
claimed functions. To support this argument, High Point relies on the Federal Circuit’s opinion in In
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re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In that opinion,
the Federal Circuit explained that “functions of ‘processing,’ ‘receiving,’ and ‘storing’ are coextensive
with the structure disclosed, i.e., a general purpose processor.” Id. at 1316. By analogy, High Point
argues that the function of “multiplexing” is coextensive with cluster controller and, therefore, an
algorithm is not required.
The court does not find this argument persuasive. Since Katz, the Federal Circuit has
explained that Katz represents a “narrow exception” and that “[i]t is only in the rare circumstances
where any general-purpose computer without any special programming can perform the function that
an algorithm need not be disclosed.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361,
1364–65 (Fed. Cir. 2012) (emphasis added). Here, the cluster controller identified by High Point did
not perform the claimed function and the manner in which it is used in the claimed invention was not
previously known. In addition, the function of statistical multiplexing packets is a principal feature of
the invention. 8-17-2011 Tr. at 28. Therefore, the court determines that special programming would
still be required.
Because cluster controller 244 is not identifying a specialized device, the court must determine
the corresponding algorithm. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348–49 (Fed.
Cir. 1999). The court determines that the algorithm proffered by High Point is correct. An algorithm
may be expressed “in any understandable terms including as a mathematical formula, in prose . . . or in
any other manner that provides sufficient structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008). The algorithm identified by High Point is described in the specification
and satisfies the quid pro quo for MPF claiming. ‘090 Patent at 13:30-55. Accordingly, the court
sustains Sprint’s objection in part and determines that this term has the following function and
corresponding structure:
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Function:
Statistically-multiplexing packets carrying the incoming call traffic of
individual calls from the plurality of radio telephones, and demultiplexing
the received multiplexed packets for radio transmission of the outgoing
traffic to the plurality of radio telephones
Structure:
Cluster controller 244, including controller 393, programmed to queue
incoming traffic segments, format them into packets for transmission and
transmit them one after the other into an allocated output pipe, and to
deformat the outgoing packets and distribute the contents of the packets to
the channel elements
2. Second Means
The relevant language is:
second means for informing the source how to adjust time instants of transmission from
the source of the packets carrying the outgoing traffic to ensure receipt of the
transmitted packets at the cell within predetermined windows of time[.]
‘090 Patent at claim 28. The parties agree on the claimed function—namely everything following the
word “for.” But Sprint makes two objections.
First, Sprint argues that recommended construction reads “ensure” out of the claim. The basis
for this argument is that “ensure” means “guarantee” and the corresponding structure does not
guarantee particular timing. The court agrees that one meaning of “ensure” is “guarantee.” But the
word “ensure” is susceptible to several other meanings. See, e.g., Doc. 755 at 15 (outlining other uses
of the word “ensure”). And the context of the claim and the specification indicate that the meaning
advanced by Sprint is not correct. For example, the specification teaches that the packets may be
received outside of the predetermined window and provides a mechanism for adjusting future
transmission times. ‘090 Patent at Fig. 16; id. at column 18. The specification also instructs that the
timing of receipt and transmission will be monitored throughout the call because additional corrections
may need to be made. Id. Based on this intrinsic support, the court agrees with the R&R that the
asserted claim does not create the “without fail” result urged by Sprint and overrules Sprint’s
objection.
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Second, Sprint argues that the recommended structure fails to include an algorithm. This
objection is based on the argument that cluster controller 244 is not a specialized device. For the
reasons articulated above (see supra IV(A)(1)(b)), the court agrees that cluster controller 244 is not a
specialized device and that an algorithm is required. The court, however, disagrees with Sprint’s
proposed algorithm. Instead, the court adopts the algorithm proposed by High Point because it
discloses the necessary structure and allows a POSITA to understand the bounds of the invention. See,
e.g., AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007)
(explaining that “algorithms in the specification need only disclose adequate defining structure to
render the bounds of the claim understandable to one of ordinary skill in the art”). Accordingly, the
court sustains Sprint’s objection in part construes the claimed function and corresponding structure as
follows:
Function:
Informing the source how to adjust time instants of transmission from the
source of the packets carrying the outgoing traffic to ensure receipt of the
transmitted packets at the cell within predetermined windows of time
Structure:
Cluster controller 244, including controller 393, programmed to upon
receipt of outgoing call traffic that arrives earlier or later than desired, the
creation of a packet containing timing adjustment information for use by
the source to bring receipt of future voice packets within predetermined
time windows, and the transmission of the packet containing the timing
adjustment information to the switching system
B. Claims 8, 10, 15, and 22 (‘090 Patent)
There are two MPF terms common to these four claims: “first means” and “second means.”
Each is addressed below.
1. First Means
The relevant claim language for all four claims is:
each cell including first means responsive to radio reception of incoming voice call
traffic from radio telephones, for transmitting packets carrying the incoming traffic of
individual calls on the connected at least one link in statistically-multiplexed form, and
further for receiving packets carrying outgoing voice call traffic of the individual calls
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on the connected at least one link in statistically-multiplexed form for radio
transmission of the outgoing traffic to the radio telephones[.]
‘090 Patent at claim 10. Sprint objects to the recommended function and structure.
a) Function
Similar to the above (see supra IV(A)(1)(a)), Sprint argues that the “responsive to” language
should be part of the function. For substantially the same reasons, the court overrules this objection.
Sprint also objects that the function should include the transformation of deterministic traffic to nondeterministic traffic (i.e., statistical multiplexing). Specifically, Sprint argues that the general
construct of these claim terms is “means, responsive to the receipt of X, for transmitting Y” and
requires the transformation of X to Y. Doc. 627 at 26. This argument rests on a similar premise as
Sprint’s argument for “in response to . . . incoming” and “in response to . . . outgoing . . .” (see supra
III(E)). And, for the same general reasons, the court finds it unconvincing. The “in statistically
multiplexed form” is describing the type of packets that are transmitted but is not reciting an additional
function. Indeed, as shown in claim 28, the patentee knew how to claim the function of statistical
multiplexing but chose not to claim that function in these claims. Therefore, the court overrules these
objections.
b) Structure
Sprint also objects to the recommended structure. Sprint argues that the corresponding
structure should be the same for all four terms because the claimed function is the same. The R&R
recommends that the corresponding structure for claims 8, 15, and 22 is DS1 interface 242 and the
corresponding structure for claim 10 is DS1 interface 242, channel elements 245, and cluster controller
244, including controller 393. The R&R recommends a different structure for claim 10 because claim
10 expressly requires that “each first means include a plurality of channel elements . . . and third
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means[.]” Sprint argues that the corresponding structure for all four claims should be the structure
required for claim 10.
MPF claiming is authorized by 35 U.S.C. § 112, ¶ 6. This statute provides that “[a]n element
in a claim for a combination may be expressed as a means or step for performing a specified function .
. . and such claim shall be construed to cover the corresponding structure, material, or acts described in
the specification and equivalents thereof.” Based on this statute, courts apply a two-step approach to
construing MPF terms: (1) the court identifies the claimed function, and (2) the court identifies the
structure in the specification that performs the claimed function. Minks v. Polaris Indus., 546 F.3d
1364, 1377 (Fed. Cir. 2008). Here, the court determined the claimed function. And the evidence
indicates that DS1 interface 242 is the structure that performs the claimed function. Accordingly, the
court determines that the corresponding structure for all four claims is DS1 interface 242.
The court recognizes that claim 10 includes additional language that narrows the first means by
requiring that the first means includes a plurality of channel elements and third means.7 This language
has meaning because it constitutes narrowing limitations on the first means. But the briefing before
the court does not provide a legal basis for adding corresponding structure that is unrelated to the
claimed function. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)
(explaining that judicially created doctrines cannot override the statutory requirements of 35 U.S.C.
§ 112, ¶ 6). Based on the law before it, the court disagrees with the recommended construction for
several reasons.
First, the statute states that the claim shall be construed to cover “corresponding structure . . .
described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6. The R&R includes the
additional structure for claim 10 because of the claim language and not because it is corresponding
7
The court has not been asked to construe “plurality of channel elements” and “third means.”
-19-
structure described in the specification.8 Second, the analysis for construing a MPF term requires the
corresponding structure to be structure that performs the claimed function. Minks, 546 F.3d at 1377;
Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (excluding structure that
enables but does not perform the claimed function); Gemstar-TV Guide Int’l, Inc. v. Int’l Trade
Comm’n, 383 F.3d 1352, 1360–63 (Fed. Cir. 2004) (including structure because it performs claimed
function). Here, neither party argues that the channel elements and third means perform the claimed
function. Instead, both parties tacitly concede that the additional structure does not perform the
claimed function. Third, the claimed function is the same for all four claims. Neither party argues that
the additional language in claim 10 modifies the claimed function or incorporates additional functions.
The court is unaware of case law that adopts different corresponding structure for identical functions
in the same patent.
The court recognizes that this construction is not anticipated by either party and, therefore, it is
unclear what overarching impact this construction has on the claims (e.g., it is unclear whether this
construction excludes disclosed embodiments from the scope of claim 10).9 Despite the
straightforward analysis articulated above, this issue was not directly addressed by either party.
Therefore, the court may reconsider this construction if either party provides case law or analysis
addressing the court’s concerns.10 But, based on the law and evidence before it, the court sustains in
part Sprint’s objection and construes “first means” for all four claims as:
8
Neither party argues that the structure in claim 10 rebuts the MPF presumption.
9
This result could impact the interpretation of the claimed function.
10
The Supreme Court has explained that claim construction is not a purely legal matter but is rather a “mongrel practice”
with “evidentiary underpinnings.” Markman v. Westview Instruments, 517 U.S. 370, 378, 390 (1996). Accordingly,
this court may reconsider or modify any of these constructions if subsequent evidence compels an alternative
construction. See Pressure Prods. Med. Supplies v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2009)
(concluding that it was proper for the trial court to supplement the definition of a claim term during trial); Jack
Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (“District courts may engage in a
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Function:
Transmitting packets carrying the incoming traffic of individual calls on
the connected at least one link in statistically-multiplexed form, and
receiving packets carrying outgoing voice call traffic of the individual calls
on the connected at least one link in statistically-multiplexed form for radio
transmission of the outgoing traffic to the radio telephones
Structure:
DS1 interface 242
2. Second Means
The relevant language for all four claims is:
each switching system including second means responsive to receipt of outgoing voice
call traffic destined for radio telephones served by a cell, for transmitting packets
carrying the outgoing traffic of the individual calls in statistically-multiplexed form on
the at least one link connected to the cell, and further for receiving packets carrying
incoming voice call traffic of the individual calls in statistically-multiplexed form on
the at least one line connected to the cell for transmission of the incoming traffic to
destinations of the incoming traffic[.]
‘090 Patent at claim 10. Sprint objects to the recommended function and structure for substantially the
same reasons it objected to “first means.” For the reasons explained above, the court overrules
Sprint’s objections to the claimed function. Sprint also objects to the recommended structure and
argues that the structure for all four claims should be the same. The court agrees with Sprint’s
overarching argument for the reason stated above. But the court disagrees with Sprint’s proposed
structure. Instead, the evidence indicates that the structure that performs the claimed function is,
alternatively, fiber interface 454 within expansion interface 263, or DS1 trunk interface 442.
The court recognizes that this result—like first means—is not anticipated by either party. And
the impact of this construction is equally unclear. Therefore, the court may reconsider this
construction if either party can address the court’s concerns (see supra IV(B)(1)). But, based on the
law and evidence currently before it, the court sustains in part Sprint’s objection and construes the
second means in all four claims as:
rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its
understanding of the technology evolves.”).
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Function:
Transmitting packets carrying the outgoing traffic of the individual calls in
statistically-multiplexed form on the at least one link connected to the cell,
and receiving packets carrying incoming voice call traffic of the individual
calls in statistically-multiplexed form on the at least one link connected to
the cell for transmission of the incoming traffic to destinations of the
incoming traffic
Structure:
Fiber interface 454 within expansion interface 263, and DS1 trunk interface
442
C. Claim 8 (‘090 Patent)
Claim 8 includes two more MPF terms that require construction.
1. Means for Controlling [Incoming]
The relevant language is:
means for controlling time instants of switching system transmission from the
switching system of the incoming traffic to ensure that the packets carrying the
incoming traffic will have been received at the switching system within
predetermined windows of time prior to the time instants of their transmission from
the switching system[.]
‘090 Patent at claim 8. Sprint objects to the recommended function and structure.
a) Function
Sprint objects that the word “ensure” means “guarantee.” For the reasons listed above (see
supra IV(A)(2)), the court overrules Sprint’s objection. Sprint next objects that “their” refers to
“packets carrying the incoming traffic.” The court agrees with Sprint. The court recognizes that this
construction excludes every disclosed embodiment. The court strives to interpret claims to avoid this
result. But this is a situation where there is only one reasonable interpretation of the claim language.
Specifically, “their” is a plural pronoun. And the only plural noun (or antecedent) in the claim that
“their” could be referring to is “packets carrying the incoming traffic.”
The court does not lightly reach this construction. But case law requires this result. For
example, in Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2007), the court
adopted a construction that excluded every disclosed embodiment. The court reached that conclusion
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even though the specification indicated that the oven—not the dough—was to be heated to 400 to 850
degrees Fahrenheit. Id. at 1373–74. Here, the situation is the same. The court recognizes that the
specification teaches that packets are received by the switching system and that segments are
transmitted from the switching system. But the claim language never mentions “segments.” Rather, it
only mentions packets.
High Point does not argue that “their” was a drafting mistake even though “their” was added
by amendment one day after an examiner interview. See Novo Indus., L.P. v. Micro Molds Corp., 350
F.3d 1348, 1354 (Fed. Cir. 2003) (outlining the standard for a district court to apply to “correct an
error in a patent by interpretation of the patent where no certificate of correction has been issued”).
That is its prerogative. Rather, High Point argues that a POSITA would understand that “their” had to
be referring to call traffic segments. That might be true.11 But that is not enough for the court to alter
the claim language in this case particularly when High Point’s position requires the court to conclude
that “their” is referring to a plural noun that does not expressly appear in the claim. See, e.g., Allen
Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002) (determining that Allen
“stretches the law too far” when it argues that “one of skill in the art would understand that the term
‘perpendicular’ in the claim should be read to mean ‘parallel’”).
For these reasons, the court agrees with Sprint that “their” is referring to “packets carrying the
incoming traffic.” It is undisputed that this result excludes all disclosed embodiments. As such, this
claim element lacks corresponding structure. Accordingly, the court sustains Sprint’s objection in part
and construes this term as:
Function:
11
Controlling time instants of switching system transmission from the
switching system of the incoming traffic to ensure that the packets carrying
the incoming traffic will have been received at the switching system within
The court notes that Sprint’s expert does not reach this conclusion. See 8-18-2011 at 905:9–15 (testifying that “their”
referred to packets). And High Point’s expert did not originally reach this conclusion. See id. at 900:22–901:3
(testifying in his deposition that “their” referred to time instants).
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predetermined windows of time prior to the time instants of the
transmission of the packets from the switching system
Structure:
Not disclosed
2. Means for Controlling [Outgoing]
The relevant language is:
means for controlling time instants of switching system transmission from the
switching system of the packets carrying the outgoing traffic to ensure receipt of the
transmitted packets, at a cell serving a user terminal for which the transmitted
packets are destined, within predetermined windows of time[.]
‘090 Patent at claim 8. Sprint objects to the claimed function and structure. For the reasons stated
above (see supra IV(A)(2)) the court overrules Sprint’s objection with respect to “ensure.” The court
also overrules Sprint’s objection to the corresponding structure. Processor 602 accomplishes the
claimed function, and the recommended algorithm is the corresponding structure. Accordingly, the
court overrules Sprint’s objections and construes this term as:
Function:
Controlling time instants of switching system transmission from the
switching system of the packets carrying the outgoing traffic to ensure
receipt of the transmitted packets, at a cell serving a user terminal for
which the transmitted packets are destined, within predetermined windows
of time
Structure:
Processor 602, programmed to respond to timing information contained in
packets received from a cell by adjusting the timing of transmission from
the switching system of future outgoing packets to bring receipt of those
packets at the cell within predetermined time windows
D. ‘308 Patent
The court reviewed each party’s objections to the recommended function and structure of these
claim terms. For substantially the same reasons as those identified in the R&R, the court overrules all
of Sprint’s objections to these terms. With respect to the first means, the court determines that
additional structure is not required for claims 13 and 17 to account for the “at regular interval”
language. The claimed functions are “transmitting” and “receiving” packets. The evidence at the
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Markman hearing indicates that these functions are performed by LAN bus interface 601. With
respect to the third means, the court determines that a vocoder is a known structure that is capable of
performing the claimed function. For example, the patent expressly states that vocoders “are well
known in the art.” ‘090 Patent at 18:5-6. It is not a general purpose computer and, therefore, an
algorithm is not required. Finally, with respect to fourth means, the court determines that “assigning”
is not a claimed function.
High Point asks this court to clarify the recommended structure for the first means. As noted
above, the corresponding structure is LAN bus interface 601. Accordingly, the court sustains High
Point’s objection on this issue. The court makes the following constructions:
First Means
Function (claim 13): Receiving at regular intervals from a packet transmission medium
first packets each carrying a block of coded voice traffic for an
individual call incoming from a radio telephone and transmitting at
regular intervals on the packet transmission medium second
packets each carrying a block of coded voice traffic for the
individual call outgoing to a radio telephone
Function (claim 17): Receiving from a packet transmission medium first packets for a
plurality of calls, the first packets for each individual call being
received at regular intervals and each carrying a block of coded
voice traffic incoming from a radio telephone for the individual
call, and transmitting on the packet transmission medium second
packets for the plurality of calls, the second packets for each
individual call being transmitted at regular intervals and each
carrying a block of coded voice traffic outgoing to the radio
telephone for the individual call
Function (claim 28): Receiving from a packet transmission medium first packets each
carrying a block of coded voice traffic for a call incoming from a
radio telephone and transmitting on the packet transmission
medium second packets each carrying a block of coded voice traffic
for the call outgoing to a radio telephone
Structure (all):
LAN bus interface 601
Third Means
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Function (claim 13, 28):Decoding the blocks of coded incoming call traffic output by the
second means to generate an output stream of incoming call traffic,
and coding a received input stream of outgoing call traffic into
blocks of coded outgoing call traffic for receipt by the second
means
Function (claim 17): Decoding the blocks of coded incoming call traffic output by the
second means for a different individual one of the calls to generate
an output stream of incoming call traffic for the individual one call,
and coding a received input stream of outgoing call traffic for the
individual one call to generate blocks of coded outgoing call traffic
for the individual one call for receipt by the second means
Structure (all):
Vocoder 604
Fourth Means
Function (claim 13, 28):Transmitting the output stream of incoming call traffic generated
by the third means in first time slots that are assigned to the
individual call on a time-division-multiplexed medium, and
receiving the input stream of outgoing call traffic in second time
slots that are assigned to the individual call on the time-division
multiplexed medium and supplying the received stream to the third
means
Function (claim 17): Transmitting the output streams of incoming traffic for the
individual calls generated by the plurality of third means in first
time slots of a time-division-multiplexed medium, the output
stream of incoming traffic for each individual one of the calls being
transmitted in ones of the first time slots which are assigned to the
individual one of the calls, and receiving input streams of outgoing
call traffic for the individual calls in second time slots of the timedivision-multiplexed medium, the input stream of outgoing traffic
for each individual one of the call being received in ones of the
second time slots which are assigned to the individual one of the
calls, and supplying the received streams to the plurality of the
third means
Structure (all):
TDM bus interface 608
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IT IS THEREFORE ORDERED that plaintiff’s Motion to Adopt in Part, and Clarify and
Modify In Part, the Special Master’s Report and Recommendation on Claim Construction (Doc. 742)
is granted in part.
IT IS FURTHER ORDERED that Sprint’s Motion for Review of Special Master Bayer’s
Report and Recommendation on Claim Construction (Doc. 744) is granted in part.
IT IS FURTHER ORDERED that the Special Master’s Report and Recommendation on
Claim Construction (Doc. 722) is adopted in part.
Dated this 3rd day of August, 2012, at Kansas City, Kansas.
s/ Carlos Murguia
CARLOS MURGUIA
United States District Judge
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