EON Corp, IP Holdings, LLC v. AT&T Mobility LLC
Filing
465
CLAIM CONSTRUCTION ORDER. Signed by US Magistrate Judge Silvia Carreno-Coll on 4/25/2014. (NBB)
IN THE UNITED STATES COURT
FOR THE DISTRICT OF PUERTO RICO
EON CORP. IP HOLDINGS,
Plaintiff,
v.
CIV. NO.: 11-1555(SCC)
AT&T MOBILITY LLC, ET AL.,
Defendants.
CLAIM CONSTRUCTION ORDER
Plaintiff EON Corp. IP Holdings asserts three patents
against the AT&T Defendants: United States Patent No.
5,388,101 (“the ‘101 patent”), United States Patent No. 5,481,546
(“the ‘546 patent”), and United States Patent No. 5,592,491
(“the ‘491 patent”). After a technology tutorial and a Markman
hearing, see Docket No. 436, we now construe the thirteen
terms currently disputed by the parties.
I. Background
Our purpose here is to “determin[e] the meaning and scope
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of the patent claims asserted to be infringed.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996). Disputes over the meaning of
claim terms present pure questions of law. O2 Micro Int’l Ltd.
v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed.
Cir. 2008). Where possible, a court gives the words in a claim
“their ordinary and customary meaning, which is the meaning
a term would have to a person of ordinary skill in the art after
reviewing the intrinsic record at the time of invention.” Id.
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc)); see also Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996) (“First, we look to the words of
the claims themselves . . . .”). However, in some cases a
patentee “may choose to be his own lexicographer,” in which
case we use the patentee’s “special definition” so long as it “is
clearly stated in the patent specification or file history.”
Vitronics, 90 F.3d at 1582.
Next, we consider other intrinsic evidence, including the
patent specification and the prosecution history. Id. at 1582–83.
The specification, especially, “is the single best guide to the
meaning of a disputed term.” Id. at 1582. The prosecution
history, meanwhile, may contain “express representations
EON CORP. v. AT&T MOBILITY
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made by the applicant regarding the scope of the claims”; as
such, it “is often of critical significance in determining the
meaning of the claims.” Id. Where the intrinsic record does not
alone resolve the ambiguity in a claim term, we may consider
extrinsic evidence, including expert and inventor testimony,
dictionaries, and technical treatises and articles. Id. at 1584.
Finally, we note that a patentee “need not ‘describe in the
specification every conceivable and possible future embodiment of his invention.’” CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366 (Fed. Cir. 2002) (quoting Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1344 (Fed. Cir. 2001)). Thus, we
may not read limitations from the patent specification, such as
from a preferred embodiment, into the claims. Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) (“[T]he
claims must be read in view of the specification . . . , but
limitations from the specification are not to be read into the
claims . . . .”). “Whether an invention is fairly claimed more
broadly than the ‘preferred embodiment’ in the specification is
a question specific to the content of the specification, the
context in which the embodiment is described, the prosecution
history, and if appropriate the prior art . . . .” Wang Labs. v. Am.
Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999).
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II. Analysis
As we’ve said, three patents are at issue here. The ‘101 and
‘546 patents share substantially similar specifications. Each is
principally concerned with addressing problems of network
capacity and congestion. The ‘491 patent, which is a
continuation-in-part of the ‘101 patent, is principally concerned
with providing multiple paths from a subscriber unit to a base
station in a communications network.1
1. “network hub switching center”
1.
We are benefitted in our analysis by the prior opinions of other courts
construing the patents-in-suit. Below, we refer regularly to some of
these. See EON Corp. IP Holdings LLC v. Aruba Networks Inc. (“Aruba
Claim Construction Order”), Civ. No. 12-1011, 2013 WL 3455631 (N.D.
Cal. July 8, 2013); EON Corp. IP Holdings LLC v. Aruba Networks Inc.
(“Aruba Reconsideration Order”), Civ. No. 12-1011, 2014 WL 793323 (N.D.
Cal. Feb. 25, 2014); EON Corp. IP Holdings LLC v. Aruba Networks Inc.
(“Revised Aruba Claim Construction Order”), Civ. No. 12-1011, 2014 WL
938511(N.D. Cal. March 5, 2014); EON Corp. IP Holdings LLC v. Sensus
USA Inv., 734 F. Supp. 2d 783 (E.D. Tex. 2010); EON Corp. IP Holdings
LLC v. Landis+Gyr Inc. (“Landis+Gyr Claim Construction Order”), Civ. No.
11-317, 2012 WL 5874625 (E.D. Tex. Nov. 20, 2012); EON Corp. IP
Holdings, LLC v. Landis+Gyr Inc. (“Second Landis+Gyr Claim Construction
Order”), Civ. No. 11-317, 2013 WL 1866913 (E.D. Tex. May 2, 2013);
EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc. (“T-Mobile Claim
Construction Order”), Civ. No. 10-379, 2012 WL 405492 (E.D. Tex. Feb.
8, 2012); EON Corp. IP Holdings, LLC v. T-Mobile USA, Inc. (“T-Mobile
Order on Motions to Strike”), Civ. No. 10-379, ECF No. 1001 (E.D. Tex.
Sept. 7, 2013).
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This term appears in claim 1 of the ‘101 patent and claims
1, 13, and 17 of the ‘491 patent. AT&T proposes that it be
defined as “a centralized switching center that performs all of
the functions needed for operation of the subscriber units in
the group of cells that it serves.” The Eastern District of Texas
has held that this term requires no construction. See, e.g., EON
Corp. IP Holdings, LLC v. Sensus USA Inc., 741 F. Supp. 2d 783,
812 (E.D. Tex. 2010). In Sensus, the court held that network hub
switching centers “were well-known networking components
that one of ordinary skill in the art would have recognized
were capable of performing the routing functions” mentioned
in claim 1 of the ‘546 patent. Id. EON argues that we should
follow the Eastern District’s lead and not construe this term.
AT&T, by contrast, proposes a more limited definition: “a
centralized switching center that performs all of the switching
functions needed for operation of the subscriber units in the
group of cells that it serves.” The Northern District of California has largely adopted this construction. See Revised Aruba
Claim Construction Order, 2014 WL 938511, at *10. The Aruba
court noted that the defendants there argued that there was a
dispute between the parties regarding whether the claim term
“encompasses a switching center that is not part of the net-
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work.” Revised Aruba Claim Construction Order, 2014 WL
938511, at *8. This dispute, the court found, had not been
before the Sensus court, and it warranted resolution. Id. We
agree.
Three limitations are at issue in AT&T’s definition. The first
is whether the switching center must be “centralized.” The
Aruba court reasoned that if it included the “centralized”
limitation, “a jury would be likely to look for a specific type of
geographic or spatial arrangement.” Id. a *9. But, as the court
noted, the patent itself at one point describes a “hub switching
center” as being “located remotely” from the base station. Id.
(citing ‘101 Patent, at 11:56–58). We agree with the Aruba court
that even if the network hub switching center “controls”
communications, it does not need to be centralized. See id.
The second point of dispute concerns whether the network
hub switching center performs “all” of the switching functions.
In Aruba, the court rejected the “all” limitation because the
defendant there had abandoned it at the Markman hearing. See
id. Nonetheless, AT&T presses it here, and EON relies on the
same fact as it did in Aruba: that claims 1 and 13 of the ‘491
patent recite switching means in subscriber units. See id. (citing
‘491 Patent, at 6:21–22, 8:39–40). Further, EON points to various
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other places in which the ‘101 patents seems to suggest that
other structures perform switching functions. See, e.g., ‘101
Patent, at 3:48–4:21 (base station), 4:16–21 (central processing
or data station), 5:14–20 (switch control center), 8:3–7 (regional
or local service participants), 9:20–23 (data processing center),
9:20–24 (base station). AT&T argues that in pointing to these
structures, EON is missing the point, as AT&T’s proposed
definition makes clear that the switching center performs all of
the switching functions needed for operation of the subscriber units
in the group of cells that it services. In this sense, says AT&T, “all”
is limited to referring to cellular switching services within the
switching center’s network. But this suggests that what AT&T
is really after is a limitation regarding the cellular nature of the
switching center. And as to this, EON conceded at the Markman
hearing that the claim term relates to a cellular network. See
Docket No. 441, at 29–30. Indeed, the ‘101 and ‘491 patents are
concerned primarily with cellular switching. Accordingly, we
agree with the Aruba court that switching center serves a
particular network of cells.2 We therefore adopt Aruba’s
2.
In an order granting a motion for summary judgment of
noninfringement against EON on the ‘491 patent, the court clarified that
it “used the word ‘network’ to mean a cellular core network, not
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construction of “network hub switching center”: “a switching
center that performs the switching functions needed for
operation of the subscriber units in a group of cells that the
switching center services.” See Revised Aruba Claim Construction
Order, 2014 WL 938511, at *10.
2. The Cellular Topography Terms
The parties collectively argued over a group of claim terms
concerning the topographical arrangement of certain structures, as they present several related and common disputes.
But first, we note two arguments that AT&T initially made but
has now disclaimed. First, AT&T says that it is not arguing that
a remote receiver cannot be collocated with a transmitter, base
station, and/or repeater. Indeed, figure 1 of the ‘101 patent
discloses a configuration where the remote receiver is at the
base station. Second, AT&T does not seem to dispute the
Sensus court’s holding that the communications with “receive
only receivers” are not limited to one-way communications.
The claims’ language makes clear that the “receive only”
limitation refers to communications from the subscriber units;
something as expansive as the Internet.” See EON Corp. IP Holdings v.
Cisco Sys. Inc., — F. Supp. 2d —, 2014 WL 1308743, at *10 (N.D. Cal.
April 1, 2014).
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these communications are then passed along to the base station
cell. See Sensus, 741 F. Supp. 2d at 806–07; see also, e.g., ‘101
Patent, at 13:13–19. Moreover, as the Sensus court found,
nothing in the claims’ language “forbid[s] routine handshaking, error checking, and other control signals from being
communicated between the reception units and the subscriber
units.” Sensus, 741 F. Supp. 2d at 807.
With these points out of the way, we move on to the
dispute that most occupied the parties during the Markman
hearing: what is a “base station geographic area”? The ‘101
patent was concerned with solving the problem presented by
a high-powered base station attempting to engage in two-way
communication with subscriber units in the base station’s
geographic area. In such a case, the high-powered base station
can send signals to the subscriber units, but the low-powered
subscriber units cannot send signals back to the base station.
The ‘101 patent’s solution to this problem was to further
subdivide the base station’s geographic area by placing within
it remote receivers connected to the base station. These local
receivers would be geographically close enough to the subscriber units to receive their transmissions, and the local
receivers would transmit their signals back to the base station.
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This is shown in the preferred embodiment in figure 2. In that
figure, a base station repeater cell 3 communicates with a
satellite via a directed dish antenna 3A; the base station then
transmits digital communications to subscriber units X by way
of an antenna 8. The local area cell site served by this antenna
is the outer dotted ring 19. Within this local area cell site are
some number of remote, receive-only, fixed-location relay
stations 20A–20N, which are positioned at strategic locations
and connected by cable, microwave or telephone line 21 to the
base station repeater cell 3. Each of these relay stations serve a
subdivided response zone 22, and subscriber units located
within these subdivided response zones communicate with the
local remote receivers over a significantly reduced transmission path distance.
With that embodiment in mind, the parties’ dispute is over
what constitutes the base station geographic area. AT&T
essentially asks that we construe it to include only the geographic area served by a single base station transmitter/antenna. EON asks us not to construe this term, but it
nonetheless argues for an interpretation that would permit a
base station geographic area to include the entire area served
by several collocated transmitters/antennas at a single cell
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tower.3 We agree with AT&T.
Claim 1 of the ‘546 patent refers to a “base station data
processing and receiving means for transmitting to” subscriber
units within the base station’s geographic area. ‘546 Patent, at
10:65–11:1. This language alone is broad enough to encompass
multiple transmitters at the base station. However, the claim
also makes clear that the base station configuration it teaches
includes “a set of local subscriber transceiver units” which are
“within the local base station geographic area” and are said to
be able to communicate with the base station via digital data
signals “synchronously related to a base station broadcast
signal.” ‘546 Patent, at 11:19–26. We read this as linking the
“base station geographic area” to the area served by a particular “base station broadcast signal.” This interpretation is
3.
This dispute is important to the parties because at the time of the
invention, a cellular network’s base station typically consisted of a
single omnidirectional antenna. These omnidirectional antennas had a
limited ability to receive signals from subscriber units. According to
AT&T, at least, the ‘101 patent’s goal was to provide a fix for that
problem. Today, however, omnidirectional base station antennas are
largely obsolete, having been replaced by sectorized cell towers. On
these towers, three collocated transmitters, for example, each broadcast
to and receive signals from subscriber units within a 120-degree arc.
With such a setup, subscriber units are able to communicate directly
with the base station.
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confirmed by claim 1 of the ‘101 patent. That claim teaches a
base station configuration consisting in part of “base station
data transmission facilities” that transmit to local subscriber
units. ‘101 Patent, at 11:33–34. Further, the claim provides for
“a set of local subscriber transceiver units” in the “base station
geographic area” that are “adapted to communicate with said
base station by way of digital data signals” that are “synchronously related to said base station broadcast signal.” ‘101 Patent,
at 11:49–55. Again, the geographic area is defined by reference
to the base station signal transmitting to that area.4 For these
reasons, we conclude that a person reasonably skilled in the art
at the time of the invention would understand the term base
station geographic area to include only the area served by a
single base station transmitter/antenna, not the area served by
a cell tower having multiple collocated transmitters.
Finally, AT&T’s proposed construction of the topographical
terms in claim 1 of the ‘491 patent includes a limitation that
4.
This is true, too, in claim 14 of the ‘546 patent. There, the geographical
area, called the cell site, is explicitly defined as the area served by “a
digital transmitter” included within a “cell site communication
system.” ‘546 Patent, at 13:12–14:2 (referring to “a digital transmitter for
communicating with individual identified subscriber units
geographically located within the cell site”).
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contradicts the claim’s express language. Contrary to AT&T’s
proposed construction, the claim language only requires a local
remote receiver in “one of a plurality of cell subdivision sites.”
‘491 Patent, at 6:38–42 (emphasis added). We thus reject
AT&T’s proposed construction to the extent that it would
require “each response area” to have a local remote receiver.
We also reject AT&T’s proposed language that the base station
geographic area “is covered by” a plurality of smaller response
areas. That language could be read to imply that the entirety of
the base station geographic area had to be included in one of
the plurality of smaller response areas, something that the
specification does not require. See ‘101 patent, fig. 2. We
therefore substitute “includes” for “is covered by.”
3. “synchronously related”
In several places, the patents-in-suit speak of transmissions
that are “synchronously related” to the base station broadcast
signal. See, e.g., ‘101 Patent, at 11:52–55. EON asks us to follow
the Sensus court and construe the term to mean “related in time
and/or frequency.” See Sensus, 741 F. Supp. 2d at 802. AT&T
argues that this phrase should be construed, at least in certain
claims, to be limited to a specific timing protocol, specifically
the one found in figure 3 of the ‘101 patent.
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To begin with, claim 1 of the ‘101 patent refers to subscriber
units that communicate with the base station “by way of digital
data signals of variable lengths synchronously related to [the]
base station broadcast signal and timed for . . . multiplexed
message transmission.” ‘101 Patent, at 11:52–55. It is indisputable that the digital data signals sent by the subscriber units are
“synchronously related” to the base station broadcast signal.
The question is whether this synchronous relation must be in
terms of time, or whether it may also be in terms of frequency.
In support of its more expansive definition, EON’s strongest
argument is a reference to the specification explaining that
“[s]ynchronization is controlled by the carrier frequency Txa of
the cell transmitter upon which the subscriber unit 4 locks.” Id.
at 8:21–23. But reading this phrase in its larger context, it is
clear that it does not teach that the subscriber unit’s transmissions are synchronously related to the base station broadcast
signal in terms of frequency.
By reference to the preferred embodiments shown in
several of the ‘101 patent’s figures, the specification explains
the typical operation of the communications network the
patent describes. After describing the “[t]ypical message
protocol,” id. at 7:28, the specification notes that “it is pertinent
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to synchronize timed data within the nationwide system, even
taking into account differences in travel time of radio waves,”
id. at 7:44–46. It then describes a useful technique to solve that
problem: “synchroniz[ing] transmissions with the TV carrier
signal from the cell site transmitter and [organizing] all the
multiplexed timing slots for avoiding idle on-air time.” Id. at
7:50–53. By its terms, this describes synchronization in terms of
time.
The portion of the specification to which EON cites comes
several paragraphs later, in a description of a figure that
“relates to a ‘set-up’ and response sequence of intercommunications between” the subscriber units, the local remote receivers, and the base station. Id. at 8:16–20. As EON notes, “[s]ynchronization is controlled by the carrier frequency” on which
the subscriber unit “locks.” Id. at 8:21–23. But the specification
further explains that the remote receiver receives the subscriber
unit’s transmission “on its frequency Rxsu,” and it then acknowledges this reception to the base station. Id. at 8:27–29.
The base station then selects which of the remote receivers
receives the best signal from the subscriber unit. Id. at 8:31–33.
Importantly, the subscriber units transmit simultaneously
on two different frequencies; one of these is chosen by the base
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station and corresponds to a particular remote receiver chosen
by the base station. Id. at 8:34–42. If the subscriber unit moves
to the subdivision zone of another remote receiver, the system
reacts and hands the subscriber unit off to another remote
receiver, to which the subscriber unit will communicate in a
different frequency. Id. at 8:53–62. Once this “set up” period
finishes, the message is transmitted. Id. at 8:42–44.
All of this shows that the specifications reference to
synchronization being “controlled” by the carrier frequency
does not teach synchronization in terms of frequency. Indeed,
it teaches exactly the opposite: one of the primary innovations
in the ‘101 patent is a subscriber unit that transmits digital data
messages via multiple simultaneous and changing frequencies.
In no sense, then, are the subscriber unit’s transmissions
“synchronously related” in terms of frequency to the base
station broadcast signal; to the contrary, the patent teaches that
the sense in which the carrier frequency “controls” synchronization is by giving the subscriber unit a signal with respect to
which it may time its broadcasts. See id. at 8:16–53 (describing
a “set-up” function, controlled by the carrier frequency, that
precedes message transmission); id. at 8:48–53 (describing a
timing relationship between the base station broadcast signal
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and the subscriber unit “response interval”); see also id. at
9:44–66 (discussing specific applications of timing synchronization of messages within the system). For example, figure 9A
shows a simplified subscriber unit with a frequency control
section 57 that is used “monitor and set the transmission carrier
frequency during set up procedures for transmission to a most
favorable fixed local remote receiver (20) station.” Id. at
10:28–31. But this structure also “serves as the system clock to
synchronize the transmission frequency of digital data pulses
with the system by means of locking to a TV station carrier
signal, for example.” Id. at 10:31–34. All of this together teaches
that the subscriber unit locks on to the base station broadcast
signal, or other carrier signal, and uses that signal to time its
messages. This is synchronization in time, not frequency.
All that EON is left with in opposition to this reading is the
general warning not to read the limitations of a preferred
embodiment into the patent’s claims. Heeding this warning, we
do not accept AT&T’s proposal to limit the synchronization to
the specific timing algorithm disclosed in the ‘101 patent. But
on the topic of time-versus-frequency synchronization, the
preferred embodiments and their descriptions only help us to
understand the claims’ language, and they confirm the
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simplest reading of the term “synchronously,” which, in plain
language, refers to timing. See MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY 1196 (10th ed. 1993) (defining “synchronous,” in
the context of digital communications, as communications “in
which a common timing signal is established that dictates
when individual bits can be transmitted”); see also ROGER L.
FREEMAN, FUNDAMENTALS OF TELECOMMUNICATIONS 272–73
(1999) (describing synchronous transmissions as a process that
“[i]n normal practice” uses a transmitter as the “master clock”
to determine the timing of messages within the system).5
4. “unable to communicate”
Claim 1 of the ‘491 patent describes a communication
network consisting of, in part, a base station and subscriber
units adapted to communicate with that base station while
within its geographical area. The network further consists of a
5.
Furthermore, we agree with AT&T to the extent that it argues that the
Eastern District of Texas was incorrect when it suggested that the
phrase “and timed” modifies “synchronously related” in claim 1 of the
‘101 and ‘546 patents. See Landis+Gyr Claim Construction Order, 2012 WL
5874625, at *6, cited by Docket No. 244, at 59 n.44. The claims’ plain
language shows that “and timed” is parallel to “synchronously
related,” and both phrases modify “digital data signals.” See, e.g., ‘546
Patent, at 11:23–26 (“digital data signals of variable lengths
synchronously related to a base station broadcast signal and timed for
multiplexed message transmission” (emphasis added)).
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modem communicatively coupled to both the subscriber units
and local base station. The purpose of this modem is “transferring” the signal from the subscriber units to the base station “if
said local subscriber units are unable to directly communicate
with” the base station. See also ‘491 Patent, claims 13, 14.
EON requests that we not construe the term, while AT&T
proposes three limitations. First, AT&T’s proposes a “binary”
limitation, which would clarify that the subscriber unit can
communicate either directly with the base station or through the
modem. Cf. ‘491 Patent, fig. 2. Second, it proposes a “conditional” limitation, i.e., AT&T’s proposed language to the effect
that the transferring function is “conditioned on whether the
subscriber unit is unable to directly communicate with the”
base station. And third, there is the “user intervention”
limitation, which provides that a “user rendering the subscriber unit unable to communicate” does not fall within the
scope of the claim. At the Markman hearing, EON conceded the
correctness of the “conditional” and “binary” limitations. See
Docket No. 441, at 111–13. Thus we discuss only the “user
intervention” limitation.
The gravamen of this dispute is whether a user’s choice to
turn off the subscriber unit’s cellular radio renders the unit
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“unable to communicate” with the base station for the purpose
of the claim language. The Eastern District of Texas has held
that “the mere choice of the user to turn off the cellular radio”
does not satisfy the “unable to communicate” term. T-Mobile
Order on Motion to Strike, Civ. No. 10-379, ECF No. 1001, slip
op. at 5 (E.D. Tex. Sept. 7, 2012). However, the court suggested
that user intervention might be sufficient where, for example,
the reason for the switch was that the direct communication
between the subscriber unit and the base station was impaired.
See id. 4–5 (construing EON’s expert’s report as “not
attempt[ing] to opine that the user choosing to turn off the
cellular data alone is enough to satisfy” the condition); see also
id. at 5 (“[A] user solely choosing to turn off cellular radio,
without more, cannot be the reason the subscriber unit is ‘unable
to communicate’ . . . .” (emphasis added)).6
6.
EON argues that the T-Mobile order we cite was “not related to claim
construction,” Docket No. 269, at 38, but this is plainly incorrect, as the
court was considering whether EON’s expert’s report complied with its
claim construction order. See T-Mobile Order on Motion to Strike, Civ. No.
10-379, ECF No. 1001, slip op. at 5 (E.D. Tex. Sept. 7, 2012). We thus
read the order as a clarification of the T-Mobile court’s previous claim
construction order. Moreover, we reject EON’s argument that the TMobile court “found” that “a user turning off the cellular data satisfies
the ‘unable to communicate’ condition if [that] communication ‘had been
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The Aruba court largely agreed. It read the claim language
as “recit[ing] a simple ‘if, then’ automatic switching.” Revised
Aruba Claim Construction Order, 2014 WL 938511, at *13. On its
reading, the claim language did “not suggest an apparatus
generally designed to switch at the user’s whim.” Id. Nonetheless, it recognized that T-Mobile had “implied” that user
intervention in response to impaired communications might be
sufficient in certain circumstances. See id. Further, it identified
an ambiguity in the defendant’s proposed language (which
AT&T repeats here): it is not obvious what it means to “render” the subscriber unit unavailable. Id. Taking the unit to a
place where signal strength is weak could be said to be
“rendering” it unavailable, but “this situation is disclosed in
the specification.” Id. (citing ‘491 Patent, at 3:26–32, 4:32–37).
Accordingly, the court accepted a modified version of the user
intervention limitation, modifying “unable” with “for some
reason other than the user intentionally disabling said unit.” Id.
at *14.
and may be expected to still be impaired,’” Docket No. 269, at 38 (citing TMobile Order on Motion to Strike, Civ. No. 10-379, ECF No. 1001, slip op.
at 5); the T-Mobile court made no such holding and was instead
“characterizing the opinion of” EON’s expert, Revised Aruba Claim
Construction Order, 2014 WL 938511, at *13 n.8.
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EON’s arguments to the contrary are unpersuasive. Beyond
its incorrect characterization of T-Mobile and a exhortation not
to read a preferred embodiment out of the claim, it relies
principally on precedent cautioning courts against reading
negative limitations, unmoored in the text, into patent claims.
See Docket No. 269, at 37–38 (citing Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1322 (Fed. Cir. 2003) (rejecting a court’s
“additional negative limitation” because it “f[ound] no anchor
in the explicit claim language”)). But we read the claim
language as requiring the transfer to happen as a result of an
inability to communicate—not as a response to an intervening
act by the user. Cf. Am. Calcar, Inc. v. Am. Honda Motor Co., Inc.,
651 F.3d 1318, 1339–40 (Fed. Cir. 2011) (“‘In response to’
connotes that the second event occur in reaction to the first
event.”), cited by Revised Aruba Claim Construction Order, 2014
WL 938511, at *12. This is further confirmed by the preferred
embodiment in figure 2, which provides that the switching
means within the subscriber unit assumes its default direct
path to the base station when the subscriber unit “is able to
detect rf signals from” the base station. ‘491 Patent, at 3:40–43.
And the problems that the ‘491 patent describes itself as
addressing do not provide for user intervention directly with
EON CORP. v. AT&T MOBILITY
Page 23
the device. See ‘491 Patent, at 3:24–32 (describing the situation
where the subscriber unit is located out of range of a base
station or is within range of a base station but in a physical
location, like a basement, that prevents it from receiving the
base station’s signals); cf. Am. Calcar, 651 F.3d at 1340 (“[T]he
specification fails to disclose any embodiment that requires any
type of user interaction . . . .”).
For these reasons, we agree with the Aruba court that the
user intervention limitation is required by the specification’s
text. Accordingly, we also adopt its construction of the term.
5. “communicatively coupled” / “communicatively
coupled for transferring”
The dispute here is whether the term “coupled” requires a
connection or the mere capability of connection. EON relies on
two cases from the Federal Circuit to argue that a mere
capability is sufficient. First, it notes that according to the claim
language, the modem is communicatively coupled to the local
subscriber units and the base station repeater cell “for transferring” certain messages. Citing Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204–05 (Fed. Cir. 2010), EON argues that
the claim’s prepositional phrase (“for transferring”) requires
only a capability, not active use. Finjan concerned a software
EON CORP. v. AT&T MOBILITY
Page 24
patent that included claim language describing software
components “for,” e.g., “preventing execution” or “obtaining
a Downloadable.” See id. The court held that even this language “describe[d] capabilities without requiring that any
software components be ‘active’ or ‘enabled.’” Id. Nonetheless,
the court held that these software components, even when
inactive, existed in the product at all times. Id. at 1205. EON is
certainly right that the prepositional phrase “for transferring”
requires only a capability of communicating, not actual
communication. But Finjan can take EON no further, as its
interpretation effectively asks us to ignore the word “coupled,”
which comes before the prepositional phrase.
EON also relies on In re Translogic Tech., Inc., 504 F.3d 1249
(Fed. Cir. 2007). There, the court construed the phrase “coupled to receive” to mean “capable of receiving.” Id. at 1258. The
court did so, however, after finding that the claim terms “d[id]
not require any specific input or connection.” Id. By contrast,
the court construed the phrase “coupled to” in a claim term
that identified the two coupled structures as “defin[ing] a
connection between” those structures. Id. This makes sense, as
where the input was not identified, the term coupled, despite
its plain meaning, could not describe an actual connection. But
EON CORP. v. AT&T MOBILITY
Page 25
where the claim made clear that two structures were in fact
“coupled,” the court made plain that a connection existed. The
situation here, as AT&T points out, mirrors the latter. The
claim term specifies that the modem is coupled to the local
subscriber units and the base station repeater cell. We do not
understand how this can mean anything other than a connection. The adverb “communicatively” suggests that the purpose
of this connection is communication, and the claim term
further specifies that the purpose of that communication is
transferring certain data messages.
We conclude, therefore, that coupled “defines a connection.” Translogic, 504 F.3d at 1258. That said, we agree with the
Aruba court that the defendants’ proposed “between” language
“impl[ies] a spatially or geographically specific type of
connection”—and may even imply a physical, hard-wired
connection. See Revised Aruba Claim Construction Order, 2014
WL 938511, at *7. As AT&T recognizes, these limitations are
not compelled by the claim language. As such, we adopt
Aruba’s construction of the term, which avoids such an
implication. We also agree with the Aruba court that AT&T’s
modem limitations are unwarranted, especially given that the
parties here have agreed on the definition of the term “mo-
EON CORP. v. AT&T MOBILITY
Page 26
dem.”7
“Communicatively coupled,” as it appears in claim 1 of the
‘491 patent, is construed as follows: “a modem is connected to
the local subscriber units and the local base station repeater cell
for the purpose of communications between the two.”
6. “base station broadcast signal”
The parties agree that a “base station broadcast signal” is a
wireless signal transmitted to all the subscriber units and/or
receivers. The fundamental dispute is over whether the signal
must be transmitted by the base station. EON relies principally
on opinions from the Eastern District of Texas. At least twice
that court has considered proposed constructions of this term
that include the “base station” limitation, and both times it has
7.
At the Markman hearing, EON said that it agreed with the Aruba court’s
reasoning insofar as it held that “communicatively coupled” required
more than the mere capability of connection, but it argued that the
word “connected” in that court’s construction was loaded, as it could
imply that the network is circuit- rather than packet-switched. See
Docket No. 441, at 136–38. But the Aruba court subsequently clarified
that its construction required no such limitations, see Aruba
Reconsideration Order, 2014 WL 793323, at *3–4, and at the Markman
hearing, AT&T explicitly disclaimed any attempt to read a circuitswitched limitation into the patent, see Docket No. 441, at 141–43. We
therefore use the word “connected” in our construction, but we, like the
Aruba court, do not understand that term to require a circuit-switched
rather than packet-switched network.
EON CORP. v. AT&T MOBILITY
Page 27
construed the term as EON now asks us to do: as “a wireless
signal transmitted to all subscriber units and/or receivers.” See
Landis+Gyr Claim Construction Order, 2012 WL 5874625, at *6;
Sensus, 741 F. Supp. 2d at 801. AT&T, by contrast, relies
principally on the term’s plain meaning.
We agree with AT&T. By its plain language, the term “base
station broadcast signal” implies that it is a signal sent by a
base station. EON’s specification-based arguments, moreover,
give us no reason to depart from this understanding. For
example, EON points to language in the ‘101 patent that
provides for synchronization with either “a base station carrier
signal” or “the television frames of a master TV channel.” ‘101
Patent, at 3:48–55. From this, EON concludes that a “person of
ordinary skill in the art would understand that television
signals do not only come from a base station, but can come
from a television tower unrelated to the communication
network.” Docket No. 269, at 24. This is surely correct, but it
provides no basis for interpreting “base station broadcast
signal” so broadly; to the contrary, the language cited by EON
makes clear that a signal from the master TV channel is different
than the “base station carrier signal.” And as AT&T points out,
during reexamination of the ‘101 patent, EON described the
EON CORP. v. AT&T MOBILITY
Page 28
digital signals by which subscriber units communicate with a
base station as “synchronously related to a broadcast signal
and, more specifically, a broadcast signal of a base station.”
Docket No. 245-2, at 20 (patent owner’s statement) (emphasis
added); see also id. at 21 (referring to a “broadcast signal sent
from a base station”). All of this supports the reading proposed
by AT&T.
Moreover, the Eastern District of Texas orders are of limited
persuasive authority on this point. Though that court has
rejected the language that AT&T proposes here, it has done so
implicitly. EON points to—and we can find—nothing in any of
those opinions specifically addressing the “base station”
limitation. To the contrary, the Sensus court seems to have
assumed the applicability of the limitation even as it did not
include it in its construction. See Sensus, 741 F. Supp. 2d at 801
(“Any given message transmitted by the base station to a
subscriber unit is sent to all units.” (emphasis added)). It
seems, then, that the Eastern District of Texas may not have
been presented with the arguments that we have been presented with now; certainly, its statement of the disputes
regarding the claim term does not include whether it must be
sent by the base station. See id. at 800 (addressing proposed
EON CORP. v. AT&T MOBILITY
Page 29
limitations concerning whether the signal must be a television/video signal and whether it must be sent to “all” subscriber units); see also Landis+Gyr Claim Construction Order, 2012
WL 5874625, at *5–6 (discussing proposed limitations concerning whether the signal must be sent to “all subscriber units and
whether it must be sent to them “directly”).
The limitation proposed by AT&T is compelled by the claim
language. We construe “base station broadcast signal” to mean
“a wireless signal transmitted by the base station to all subscriber units and/or receivers.”
7. “adapted for communicating”
In some ways, this dispute presents a mirror image of the
dispute over “communicatively coupled.” EON once again
argues that the term means “capable of communicating.” This
time, however, AT&T suggests that the term needs no construction. Beyond requesting no construction, AT&T’s position
is unclear. In its responsive brief, it made the point that
“capable of” is not more clear than “adapted for,” but it did not
argue that the two terms were not synonymous. See Docket
No. 244, at 83–84. However, in its sur-reply brief, AT&T
implies—without seriously arguing the point—that the present
dispute is unlike the related dispute that the Eastern District of
EON CORP. v. AT&T MOBILITY
Page 30
Texas previously resolved in a manner favorable to EON’s
position here. See Docket No. 332, at 40 (citing T-Mobile Claim
Construction Order, 2012 WL 405492, at *11 (construing “adapted for communicating” to require only “the capability to
communicate”)). In any case, we agree with EON’s position.
The term’s plain language as well as the case law strongly
supports the position that “adapted for” is jargon for “capable
of.” See, e.g., Docket No. 269, at 34 (citing treatises and cases).
8. “if receiving a signal” / “not receiving a signal”
AT&T proposes two limitations here, which the Aruba court
called the binary and the conditional limitation. The first is
“essentially a restatement of the claim” meant to confirm “the
binary nature of the system.” Revised Aruba Claim Construction
Order, 2014 WL 938511, at *14. It essentially provides that there
is a “determining” step where the subscriber unit determines
whether it is receiving a signal from the base station repeater
cell; if it is not, it then performs certain steps. The binary
limitation makes clear that these steps are performed only if, at
the determining step, the subscriber unit determines it is not
receiving the base station repeater cell’s signal. The conditional
limitation provides that communication via the subscriber
unit’s modem is outside of the claim’s scope if it is the result of
EON CORP. v. AT&T MOBILITY
Page 31
“[u]ser choice alone.”
For the reasons laid out in our discussion of the “unable to
communicate” term, we agree, for the most part, with AT&T
that the user choice limitation is compelled by the claim
language, and EON does not even dispute the substance of the
binary limitation. We thus adopt the Aruba construction, which
was itself premised on the previous interpretations of the term
by the Eastern District of Texas. We construe the term as
follows: “The method steps listed after ‘if said subscriber unit
is not receiving a signal from said local base station repeater
cell, performing the steps of’ are not performed if the subscriber unit is receiving a signal from said local base station
repeater cell. Using the modem to communicate regardless of
whether there is signal reception does not fall within the scope
of the claim.”
9. “data processing means at the base station”
The parties agree that the function of this means-plusfunction term is “assembling and re-transmitting digital
subscriber messages from the subscriber units via the satellite
to the central station.” The parties also agree about the components that make up the corresponding structure. The scope of
their limited disagreement goes to AT&T’s proposed inclusion
EON CORP. v. AT&T MOBILITY
Page 32
of the lines in the specification that describe the components.
EON argues that the reference to the specification language is
unnecessarily restrictive; AT&T argues that it is necessary to
fully understand what is shown in the referenced figures,
especially figure 5 of the ‘101 patent. AT&T also emphasizes
that references to the specification are common in constructions
of means-plus-function elements. Finally, AT&T argues that
EON’s point about the language being unnecessarily limiting
conflicts with the Patent Act, which limits means-plus-function
elements to the structure actually disclosed in the patent and
its statutory equivalents. See 35 U.S.C. § 112, ¶ 6.
We agree with AT&T. Figure 5 is somewhat skeletal, and its
meaning is made much clearer by reference to the specification.
Rather than confuse a jury, we think referring to the specification will help it. Further, we reject EON’s argument, in its reply
brief, that the structures described by AT&T’s proposed
language are also described elsewhere in the patent. As AT&T
clarifies—and the proposed language bears out—the citation
to the specification describes only the elements after the first
semicolon; thus, EON’s citation to points where the elements
in figures 1 and 2 are described are inapposite. And its citation
to another mention of VSAT 44 is in a brief description of
EON CORP. v. AT&T MOBILITY
Page 33
figure 5 that does not explain its function in any way. See
Patent ‘101, at 4:41–45.
Accordingly, we adopt AT&T’s proposed construction with
one change: to make clearer that the citation to the specification
refers only to the elements of figure 5, we will replace the
comma after the citation with another semicolon. We thus
identify the structure corresponding to this means-plusfunction element as: “transmitters 1A, 3A, 2F (fig. 1), 40 (fig. 2);
Packet Builders 41–41A, Price Packets 42, Assemble 43, Time
45, and VSAT 44 (fig. 5), as described at 7:56–8:7; and statutory
equivalents.”
10. “means in said base station for compensating . . . .”
The parties agree that the Eastern District of Texas properly
identified the function of this means-plus-function element,
which is “compensating for the time of propagation of messages between the different individual subscriber units and the
base station data processing facilities.” They disagree about the
corresponding structure. According to EON, the Eastern
District of Texas has properly identified the structure as “guard
bands as depicted in figure 7B and described at ‘101 Patent, at
9:44–46, and statutory equivalents.” AT&T argues that the
function lacks a corresponding structure and the claim is
EON CORP. v. AT&T MOBILITY
Page 34
therefore indefinite.
Claim 9 of the ‘101 patent describes a means for compensating for the time it takes communications to travel between the
subscriber units and the base station. Figure 7A describes these
delays. Figure 7B demonstrates a solution to this problem. As
the Sensus court described, the figure and its accompanying
description describe a buffering of message transmission
frames by 120-microsecond “guard bands.” Sensus, 741 F.
Supp. 2d at 820 (citing ‘101 Patent, at 9:51–56). According to the
specification, these guard bands “solve the transmission delay
problem and negate[] the need for other corrective measures.”
Id. The Sensus court thus identified the guard bands and their
accompanying description as the structure for this means-plusfunction element.
AT&T seems to agree with Sensus’s analysis, but it suggests
that a “guard band”—a delay—cannot be a structure. It also
argues that the guard bands, even if they are a structure, are
not “in the base station” as required by the claim language. As
to these arguments, however, AT&T points to nothing in
support of its assertion that a buffer period cannot be a
structure. We can find nothing to support such an argument
either—indeed, as EON points out, Sensus explicitly held to the
EON CORP. v. AT&T MOBILITY
Page 35
contrary. We conclude, therefore, that the guard band may be
a structure. As for whether it is in the base station, the specification provides that the function illustrated in figure 7B occurs
“in the base station.” See ‘101 Patent, at 9:44–46 (“Critical
timings in the messages processed within the base station
repeater cell site (19, FIG. 2) are discussed in relationship to
FIGS. 7A and 7B.”); see also id. at 9:61–66 (explaining that as a
result of the function described by figure 7B, the “base station
repeater cell 3 thus adjusts its synchronization” after accounting for the message propagation delays). We therefore have no
problem concluding that the guard band is in the base station.
We construe the structure corresponding to this meansplus-function element as: “guard bands as depicted in figure
7B and described at ‘101 Patent, at 9:44–46, and statutory
equivalents.”
11. “means for operating the base station and subscriber
units to hand off . . . .”
Despite its classic means-plus-function language, EON
maintains that this term does not describe a means-plusfunction element. The entirety of EON’s argument on this
point, however, is an assertion that the ‘101 patent’s drafter
favored the word “means.” See Docket No. 228, at 72 (citing
EON CORP. v. AT&T MOBILITY
Page 36
Sensus, 741 F. Supp. 2d at 813). But in contrast to the situation
in Sensus to which EON analogizes, EON has not even attempted to argue that the term recites the structure that performs
the described function. Cf. Sensus, 741 F. Supp. 2d at 812
(construing “network hub switching center means” and
concluding that “[n]etwork hub switching centers” were “wellknown networking components that one of ordinary skill in
the art would have recognized were capable of performing the
routing functions”). We therefore conclude that this is a meansplus-function element. See Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1366 (Fed. Cir. 2008) (providing that the presumption created by the presence of the word “means” is only
overcome “if the claim itself recites sufficient structure to
perform the claimed function” (internal quotations omitted)).
In the event that we determine—as we have—that this is a
means-plus-function element, EON offers an alternative
construction that matches AT&T’s construction of the function.
As to the corresponding structure, EON only objects to AT&T’s
use of the term “discrete” in the phrase “discrete subscriber
unit transmission frequencies assigned to different remote
receivers.” And with regard to that limitation, AT&T does not
support it by reference to the specification; instead, it simply
EON CORP. v. AT&T MOBILITY
Page 37
argues that EON has agreed to the limitation with regard to a
different term before the Eastern District of Texas court. As
EON notes, a claim dependent on claim 13 actually requires the
subscriber units and receive-only receivers to communicate at
multiple frequencies. See ‘101 Patent, at 12:58–62 (“subscriber
units operable to transmit on a plurality of frequency bands,
and receive-only receivers at different subdivision sites
operable in different ones of said frequency bands”). We
therefore reject the “discrete” limitation but otherwise adopt
AT&T’s proposed construction.
12. “reception for receiving and processing data messages”
The parties dispute whether this is a means-plus-function
term. According to AT&T, while the claim does not use the
word means, it also fails to specify what the structure is that is
capable of performing the claimed function. EON relies
principally on the presumption that a term lacking the word
“means” is not a means-plus-function element—and presumption that it says is strengthened by the fact that the patentee
explicitly removed the word “means” during prosecution.
See Docket No. 269, at 47 (citing Crane Co. v. Sandenvendo Am.,
EON CORP. v. AT&T MOBILITY
Page 38
Inc., Civ. No. 07-42, 2009 WL 1586707 (E.D. Tex. June 5, 2009)).8
The presumption on which EON relies “is a strong one that
is not readily overcome.” Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004). Nonetheless,
it may be defeated “by showing that the claim element recite[s]
a function without reciting sufficient structure for performing
that function.” Watts v. XL Sys., 232 F.3d 877, 880 (Fed. Cir.
2000). The parties thus argue over whether the claim term
recites sufficient structure to perform the function of “processing data messages from said set of local subscriber units.” On
this point, we agree with AT&T’s suggestion that “reception,”
when used to denote a structure, is meaningless. EON says this
fact is irrelevant because the subsequent claim language
specifies the structure: “comprising a local remote receiver
8.
EON describes Crane Co. as holding that the fact that the term “means”
was removed during prosecution “gives rise to a presumption that the
limitations are not drafted in means-plus function form.” Docket No.
269, at 47. This misreads Crane Co. In that case, the defendants cited
inconsistent amendments as evidence in favor of their position that the
terms described means-plus-function elements; the court rejected this
argument, finding that the claims recited sufficient structure to perform
the claimed function. See Crane Co. v. Sandenvendo Am., Inc., Civ. No. 0742, 2009 WL 1586707, at *16–17 (E.D. Tex. June 5, 2009). The court did
not find that any presumption applied beyond that typically applicable
where a claim term lacks the word “means.”
EON CORP. v. AT&T MOBILITY
Page 39
disposed within one of a plurality of cell subdivision sites.”
According to AT&T, however, this local remote receiver is
insufficient to perform the claimed function. AT&T correctly
points out that the “set of local subscriber units” whose
messages must be received and processed refers to the entire
group of subscriber units in the base station geographic area,
but the local remote receiver is associated only with a subdivision of that geographic area, see ‘491 Patent, at 6:40–41 (“local
remote receiver disposed within one of a plurality of cell
subdivision sites partitioned from said local base station
geographic area”); it could not, therefore, receive and process
messages from the entire set of local subscriber units. This
argument has some appeal, but it ultimately fails. Reading
further in the claim language, it specifies that the local remote
receiver is “adapted to receive low power digital messages
transmitted from said local subscriber units within range of said
local remote receiver.” ‘491 Patent, at 6:45–48 (emphasis added).
We conclude, therefore, that to perform the stated function, the
local remote receiver need not be able to receive, at all times,
messages from every subscriber unit in the base station
geographic area; rather, it need only be able to receive messages from those subscriber units actually within its range.
EON CORP. v. AT&T MOBILITY
Page 40
Under this reading, the local remote receiver would be able to
receive and process data messages from any subscriber unit,
whenever that subscriber unit was within its range. The claim
language requires no more than this. We conclude therefore
that the claim recites sufficient structure to perform the stated
function, and AT&T has therefore failed to overcome its
burden. The term is not governed by § 112, ¶ 6, and it requires
no further construction. See also Second Landis+Gyr Claim
Construction Order, 2013 WL 1866913, at *6–7 (holding that the
same term was not governed by § 112, ¶ 6, as the claim recited
sufficient structure to accomplish the function, and that it
needed no further construction).
13. “switching means”
As an initial matter, EON has argued that AT&T, by
previously agreeing to a joint construction of this term, has
waived the invalidity argument it is now making. See, e.g.,
Docket No. 423. We disagree for several reasons. First, EON
was apprised early on of AT&T’s belief that this term was
invalid for indefiniteness. See, e.g., Docket No. 418-3, at 46
(AT&T’s invalidity contentions). Second, the Northern District
of California’s opinion holding that the term was indefinite
wrought a sufficiently significant change in circumstances that
EON CORP. v. AT&T MOBILITY
Page 41
it justified releasing AT&T from any joint construction to
which it had previously agreed. And third, the Court gave
EON a sufficient opportunity to brief this matter,9 and it cannot
be said to have suffered any prejudice. We need go no further,
especially considering that we ultimately decide this matter in
favor of EON.
Claim 1 of the ‘491 patent describes subscriber units that
have “switching means for selecting a communication path
within said network.” ‘491 Patent, at 6:21–22; see also id. at
8:39–41. The parties agree that this is a means-plus-function
element, but they disagree strongly about what “switching”
means and, consequently, about whether the claim states
sufficient structure.
According to EON, the function is switching in its most
simple form: “selecting a communications path, not deciding
which path to use,” in the words of the Eastern District of
Texas. T-Mobile Claim Construction Order, WL 3073432, at *3. As
9.
See, e.g., Docket No. 423 (opposition brief on “switching means”),
Docket No. 430-1 (sur-reply brief on “switching means”), Docket No.
443 (informative motion on “switching means”), Docket No. 450 (reply
to AT&T’s opposition to EON’s informative motion on “switching
means”), Docket No. 452 (informative motion regarding supplemental
claim construction authority on “switching means”).
EON CORP. v. AT&T MOBILITY
Page 42
the Texas court noted, the specification regularly uses “selecting,” rather than “deciding” or “determining,” when describing the function of electronic switch 13, the structure that EON
associates with this term. See id. And, the court found, “the
logic for determining which path the electronic switching
means selects is identified in the claims and elsewhere throughout the specification.” Id. (citing ‘491 Patent, at 5:3–7 (“Because
there is no local base station repeater cell, subscriber unit 12 is
unable to receive rf signals from a local base station repeater
cell. Thus, switching means 13 selects Path B, such that
communication to and from subscriber unit 12 occurs through
modem 22.”)).
AT&T’s position is premised primarily on an opinion from
the Northern District of California. In that opinion, the court
disagreed with the Texas court and concluded that “‘selecting’
[was] comparable to the concept of ‘deciding.’” Aruba Claim
Construction Order, 2013 WL 3455631, at *4. Further, it read the
same specification language cited by the Texas court as
“indicat[ing] that the switching means gathers information
about how much rf signal the subscriber unit is receiving” and
then “determines whether” it is appropriate to switch. Id.
Finally, the court pointed out that it could not find any
EON CORP. v. AT&T MOBILITY
Page 43
structure that did perform the determining function, and
concluded that it must therefore be the “switching means.” Id.
The problem with AT&T’s reliance on this opinion is that
the California court itself recently rejected its reasoning. See
Aruba Reconsideration Order, 2014 WL 793323. In its reconsideration order, the court looked at the ‘101 patent, of which the ‘491
patent is a continuation-in-part, and noted that it disclosed
structures that monitor frequency and make signal-strength
assessments. Id. at 1; see also ‘101 Patent, at 9:14–19 (describing
subscriber unit software that can make signal strength measurements and cause the subscriber unit to take certain actions
based on those measurements); id. at 10:15–31; id. at 10:39–43.
As the California court noted, these elements are “incorporated
within the ‘subscriber unit’ claimed in the ‘491 Patent.”Aruba
Reconsideration Order, 2014 WL 793323, at *1 (citing ‘491 Patent,
at 1:43–52, 2:3–11). The court further clarified that it was
referring to the ‘101 Patent’s specification only to determine the
meaning of the claimed function—“switching”—not to
determine the corresponding structure.10 Id. at *2. And the ‘101
10. The defendant in Aruba had argued that it was improper to find
structure in incorporated materials. See Aruba Reconsideration Order,
2014 WL 794423, at *2 (citing Default Proof Credit Card Sys., Inc. v. Home
EON CORP. v. AT&T MOBILITY
Page 44
patent, it held, made clear that “switching” meant toggling, not
determining. Thus, it held that “electronic switch 13" was
sufficient structure to perform the claimed function, and it
reversed its previous holding that the claim was indefinite. Id.
at *3.
AT&T argues that even if the California court were right in
its conclusion that the “switching means” did not need to make
a signal-strength assessment, it does not follow that there is no
more determining to be done. See Docket No. 453, at 5. On the
contrary, says AT&T, the switching means must still choose
which path to pick before it can toggle between them. See id.
But the specification need not be read this way. If the signalstrength assessment is made elsewhere—and we agree with the
California court’s conclusion that it is—that assessment could
Depot U.S.A., Inc. (d/b/a The Home Depot), 412 F.3d 1291, 1301 (Fed. Cir.
2005) (“[M]aterial incorporated by reference cannot provide the
corresponding structure necessary to satisfy the definiteness
requirement for a means-plus-function clause.”)). The court rejected
this objection, explaining that in interpreting a means-plus-function
element, it must first determine the element’s function, and in this
inquiry, it was permitted to consider all “the relevant sources of claim
construction, especially the specification of a prior patent of with the
Patent-in-Suit is a continuation-in-part.” Id. And once it determined
what the function was, it was able to find the corresponding structure
within the ‘491 patent’s specification. Id. at *3.
EON CORP. v. AT&T MOBILITY
Page 45
certainly be sufficient to induce, on its own, the electronic
switch 13 to toggle between the binary communication paths.
See Aruba Reconsideration Order, 2014 WL 793323, at *2 (“[O]nce
the invention has monitored transmission frequency, made an
rf signal strength assessment, and assessed whether signal
strengthen has fallen below a threshold value, there is no more
determining left to be performed . . . . At that point, it is
plausible to conclude that the selection is merely to automatically assume[] a position dictated by the determinations made
by [other components].”); cf. DESA IP, LLC v. EML Techs., LLC,
211 F. App’x 932, 938 (Fed. Cir. 2007) (construing “switching
means” as an “electronic switch,” and finding that other
structures “actuated” the switching means).
We therefore agree with all of the courts that have previously construed this term that it is definite and that its corresponding structure is “switching means 13.”
III.
Conclusion
Based on the foregoing reasoning, we construe the disputed
claim terms as follows:
1. “network hub switching center”
Term:
“network hub switching center” (‘101 Patent,
claim 1; ‘491 Patent, claims 1,13, 17)
EON CORP. v. AT&T MOBILITY
Construction:
Page 46
“a switching center that performs the switching functions needed for operation of the
subscriber units in a group of cells that the
switching center services”
2. Cellular Topography Terms
Term:
“a set of cell subdivision sites partitioned
from said base station geographic area and
dispersed over the base station geographic
area, each cell subdivision site being adapted
for receiving-only low power digital messages transmitted from local subscriber units
within range of the partitioned cell site areas”
(‘101 Patent, claim 1)
Construction:
The transmission area of each radio transmitter of the base station includes a plurality of
smaller response areas dispersed throughout,
and each response area has a local remote
receiver for receiving low power digital
messages transmitted from local subscriber
units within range of the local remote receiver.
Term:
“a local remote receiver disposed within one
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Page 47
of a plurality of cell subdivision sites partitioned from said base station geographic area
associated with said local base station repeater cell, said plurality of cell subdivision
sites dispersed over said local base station
geographic area, said local remote receiver
being adapted to receive low power digital
messages transmitted from said local subscriber units within range of said local receiver” (‘491 Patent, claim 1)
Construction:
The transmission area of each radio transmitter of the base station repeater cell includes a
plurality of smaller response areas dispersed
throughout, and at least one response area
has a local remote receiver for receiving low
power digital messages transmitted from
local subscriber units within range of the
local remote receiver.
Term:
“a set of stationary receive only terminals
remote from the base station coupled by a
communication link with the base station for
conveying transmitted messages from subscr-
EON CORP. v. AT&T MOBILITY
Page 48
iber units in a subdivided portion of said
geographic area in the vicinity of the receive
only terminals to the base station” (‘101
Patent, claims 16, 17, 18)
Construction:
The transmission area of each radio transmitter of the base station includes a plurality of
smaller response areas dispersed throughout,
and each response area has a stationary
receiver located remote from the base station
and coupled by a communication link to the
base station for conveying transmitted messages from subscriber units in its respective
response area to the base station.
Term:
“a base station of defined geographic area for
serving a set of said subscriber units, said
area is subdivided into a plurality of zones,
and receive only stations located in said
zones for reception of transmissions from
subscriber units located in the respective
zones” (‘101 Patent, claim 20)
Construction:
The transmission area of each radio transmitter of the base station includes a plurality of
EON CORP. v. AT&T MOBILITY
Page 49
smaller response areas, and each response
area has a station for reception of transmissions from subscriber units located in its
respective response area.
Term:
“a cell site divided into a plurality of subdivided zones, . . . a cell site communication
system including a digital transmitter for
communication with individual identified
subscriber units geographically located within the/said cell site, a set of receive only
digital receivers positioned in said subdivided zones, each said digital receiver being
coupled by a transmission link with the/said
cell site communication system to relay
received digital communications” (‘546 Patent, claim 14; ‘491 Patent, claim 12)
Construction:
The radio transmission area of the digital
transmitter of a cell site communication
system includes a plurality of smaller response areas, and each response area has a
digital receiver separate from the cell site
communication system coupled by a transmi-
EON CORP. v. AT&T MOBILITY
Page 50
ssion link to the cell site communication
system to relay digital communications
received from subscriber units.
3. “synchronously related”
Term:
“synchronously related” (‘101 Patent, claim 1;
‘546 Patent, claim 14; and ‘491 Patent, claims
1, 13)
Construction:
Related in time.
4. “unable to communicate”
Term:
“transferring . . . if said [at least one] local
subscriber units are unable to directly communicate
[/communicate
directly] with
said[/a] local base station repeater cell[/digital
transmitter]” (‘491 Patent, claims 1, 12, 13)
Construction:
“transferring . . . if said [at least one] local
subscriber units are unable, for some reason
other than the user intentionally disabling
said
unit,
to
directly
communicate
[/communicate directly] with said[/a] local
base station repeater cell[/digital transmitter].” The system is binary, meaning the
subscriber unit either directly communicates
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with the base station repeater cell/digital
transmitter or the modem. The “transferring
function” of the modem is conditioned on
whether the subscriber unit is unable to
directly communicate with the local base
station repeater cell.
5. “communicatively coupled”
Term:
“a modem communicatively coupled to said
local subscriber units and said local base
station
repeater
cell[/digital
transmit-
ter/network hub switching center]” (‘491
Patent, claims 1, 12, 13)
Construction:
“a modem is connected to the local subscriber
units and the local base station repeater
cell[/digital transmitter/network hub switching center] for the purpose of communications between the two”
6. “base station broadcast signal”
Term:
“base station broadcast signal” (‘101 Patent,
claim 1; ‘491 Patent, claim 1)
Construction:
“a wireless signal transmitted by the base
station to all subscriber units and/or receiv-
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Page 52
ers”
7. “adapted for communicating”
Term:
“said modem also adapted for communicating with said local base station repeater cell if
communication there between is not otherwise prevented” (‘491 Patent, claim 13)
Construction:
“capable of communicating”
8. “if receiving a signal” / “not receiving a signal”
Term:
“if said subscriber unit is receiving a signal
from said local base station repeater cell,
performing the steps of . . . .” / “if said subscriber unit is not receiving a signal from said
local base station repeater cell, performing
the steps of . . . .” (‘491 Patent, claims 5, 17)
Construction:
The method steps listed after ‘if said subscriber unit is not receiving a signal from said
local base station repeater cell, performing
the steps of’ are not performed if the subscriber unit is receiving a signal from said local
base station repeater cell. Using the modem
to communicate regardless of whether there
is signal reception does not fall within the
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Page 53
scope of the claim.
9. “data processing means at the base station”
Term:
“data processing means at the base station for
assembling and retransmitting digital subscriber messages from the subscriber units via
the satellite to the central station” (‘101 Patent, claims 16–18)\
Construction:
Governed by § 112, ¶ 6. The function is:
“assembling and re-transmitting digital
subscriber messages from the subscriber units
via the satellite to the central station.” The
corresponding structure is: “Transmitters 1A,
3A, 2F (fig. 1), 40 (fig. 2); Packet Builders
41–41A, Price Packets 42, Assemble 43, Time
45, and VSAT 44 (fig. 5), as described at
7:56–8:7; and statutory equivalents.”
10. “means in said base station for compensating”
Term:
“means in said base unit for compensating
for the time of propagation of messages
between the different individual subscriber
units and the base station data processing
facilities” (‘101 Patent, claim 9)
EON CORP. v. AT&T MOBILITY
Construction:
Page 54
Governed by § 112, ¶ 6. The function is:
“compensating for the time of propagation of
messages between the different individual
subscriber units and the base station data
processing facilities.” The corresponding
structure is: “guard bands as depicted in
figure 7B and described at ‘101 Patent, at
9:44–46, and statutory equivalents.”
11. “means for operating the base station and subscriber
units to hand off . . . .”
Term:
“means for operating the base station and
subscriber units to hand-off a communication
message for transmission over a path through a single one of said cell subdivision
receive-only stations” (‘101 Patent, claim 13)
Construction:
Governed by § 112, ¶ 6. The function is:
“operating the base station and subscriber
units to hand-off a communication message
for transmission over a path through a single
one of said cell subdivision receive only
stations.” The corresponding structure is:
“local area repeater station, cell base station,
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Page 55
cell (item 3 in figs. 1, 2, 6A, 7A); subscriber
unit (item 4, 4', 4'’, or 4'’‘ in figs. 1, 2, 6A, 7A,
9A), including software control facilities or
software (item 17 in fig. 1) and software
control data processor 54 (fig. 9A); subscriber
unit transceiver 50 and frequency control 57
(fig. 9A); the corresponding set-up algorithm
to the extent disclosed in fig. 6B and the
description at ‘101 Patent, at 8:8–9:19 corresponding thereto; subscriber unit transmission
frequencies assigned to different remote
receivers; and statutory equivalents.”
12. “reception for receiving and processing data messages”
Term:
“reception for receiving and processing data
messages from said set of local subscriber
units” (‘491 Patent, claim 1)
Construction:
Not governed by § 112, ¶ 6. No further construction necessary.
13. “switching means”
Term:
“switching means for selecting a communication path” (‘491 Patent, claims 1, 13)
Construction:
Governed by § 112, ¶ 6. The function is “selec-
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Page 56
ting a communications path.” The corresponding structure is: “electronic switch 13
and statutory equivalents.”
IT IS SO ORDERED.
In San Juan, Puerto Rico, this 25th day of April, 2014.
S/ SILVIA CARREÑO-COLL
UNITED STATES MAGISTRATE JUDGE
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