Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. LTD., et al

Filing 114

CLAIM CONSTRUCTION MEMORANDUM AND ORDER - Signed by Magistrate Judge Roy S. Payne on 7/10/2014. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
REMBRANDT WIRELESS
TECHNOLOGIES, LP,
v.
SAMSUNG ELECTRONICS CO., LTD.,
et al.

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§
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§

CASE NO. 2:13-CV-213-JRG-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On May 30, 2014, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patents No. 8,023,580 and 8,457,228. After considering
the arguments made by the parties at the hearing and in the parties’ claim construction briefing
(Dkt. Nos. 97, 102, and 103),1 the Court issues this Claim Construction Memorandum and Order.

1

Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
Memorandum and Order refer to the page numbers of the original documents rather than the
page numbers assigned by the Court’s electronic docket unless otherwise indicated. Defendants
are Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
Telecommunications America, LLC, Samsung Austin Semiconductor, LLC (collectively referred
to as “Samsung”), Blackberry Corp., and Blackberry Ltd. (collectively referred to as
“Blackberry”; formerly known as Research In Motion Corp. and Research In Motion Ltd.,
respectively) (all collectively referred to as “Defendants”).
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Table of Contents
BACKGROUND ........................................................................................................................... 3 
LEGAL PRINCIPLES ................................................................................................................. 3 
CONSTRUCTION OF DISPUTED TERMS ............................................................................. 6 
A. “first modulation method” and “second modulation [method]” ........................................... 6 
B. “modulation method [] of a different type” and “different types of modulation
methods” ............................................................................................................................. 22 
C. “communication[s] device,” “device that transmits,” and “logic configured to transmit” . 29 
D. “training signal” and “trailing signal”................................................................................. 38 
E. “signal level compensation” ................................................................................................ 49 
F. “a first portion of the first communication indicating that the second modulation
method will be used for modulating the payload data in the payload portion of the first
communication” .................................................................................................................. 52 
CONCLUSION ........................................................................................................................... 56 

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BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 8,023,580 (“the
‘580 Patent”) and 8,457,228 (“the ‘228 Patent”) (collectively, the “patents-in-suit”).
The patents-in-suit are both titled “System and Method of Communication Using At
Least Two Modulation Methods.” The ‘580 Patent issued on September 20, 2011, and bears a
filing date of August 19, 2009. The ‘228 Patent issued on June 4, 2013, and bears a filing date of
August 4, 2011. The ‘228 Patent is a continuation of the ‘580 Patent. Both patents-in-suit bear
an earliest priority date of December 5, 1997.
In general, the patents-in-suit relate to modulation methods for communications. Plaintiff
argues that the patents-in-suit relate to the well-known “Bluetooth” wireless communication
standards. See Dkt. No. 97 at 1. The Abstract of the ‘580 Patent is representative and states:
A device may be capable of communicating using at least two type types [sic] of
modulation methods. The device may include a transceiver capable of acting as a
master according to a master/slave relationship in which communication from a
slave to a master occurs in response to communication from the master to the
slave. The master transceiver may send transmissions discrete transmissions [sic]
structured with a first portion and a payload portion. Information in the first
portion may be modulated according to a first modulation method and indicate an
impending change to a second modulation method, which is used for transmitting
the payload portion. The discrete transmissions may be addressed for an intended
destination of the payload portion.
LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns
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Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314-15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
at 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
(en banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips,
415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This
is true because a patentee may define his own terms, give a claim term a different meaning than
the term would otherwise possess, or disclaim or disavow claim scope. Phillips, 415 F.3d
at 1316. In these situations, the inventor’s lexicography governs. Id. The specification may also
resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of

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the words used in the claims lack sufficient clarity to permit the scope of the claim to be
ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the
specification may aid the court in interpreting the meaning of disputed claim language, particular
embodiments and examples appearing in the specification will not generally be read into the
claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patent applicant may also define a term in prosecuting the patent. Home
Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic

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evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
CONSTRUCTION OF DISPUTED TERMS
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
preliminary constructions of the disputed terms with the aim of focusing the parties’ arguments
and facilitating discussion. Those preliminary constructions are set forth within the discussion of
each term, below.
A. “first modulation method” and “second modulation [method]”
“first modulation method”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a first method for varying one or more
characteristics of a carrier in accordance with
information to be communicated”2

“a method of encoding data that is understood
by a first type of receiver, but not by a second
type of receiver”

“second modulation [method]”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a second method for varying one or more
characteristics of a carrier in accordance with
information to be communicated”3

“a method of encoding data that is understood
by the second type of receiver, but not by the
first type of receiver”

Dkt. No. 97 at 6; Dkt. No. 102 at 2-3. The parties submit that the first of these terms appears in
Claims 1, 2, 13, 19, 21, 22, 23, 32, 40, 41, 49, 54, 58, 59, 70, 76, 78, and 79 of the ‘580 Patent
and Claims 1, 5, 15, 17, 18, 22, 25, 26, 37, 38, 39, 41, 47, 48, 49, and 52 of the ‘228 Patent. Dkt.
2

Plaintiff previously proposed: “No construction necessary; plain and ordinary meaning applies.
Alternatively, ‘a first method for encoding data onto a carrier.’” Dkt. No. 81, Ex. A at 7.
3

Plaintiff previously proposed: “No construction necessary; plain and ordinary meaning applies.
Alternatively, ‘a second method for encoding data onto a carrier.’” Dkt. No. 81, Ex. A at 9.
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No. 82, Ex. A at 7. The parties submit that the second of these terms appears in Claims 1, 13, 20,
22, 23, 32, 40, 49, 54, 58, 70, 77, and 79 of the ‘580 Patent and Claims 1, 10, 17, 18, 22, 23, 26,
37, 38, 41, 43, 47, and 49 of the ‘228 Patent. Id. at 9.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary constructions for these disputed terms: “first modulation method”
means “a first method for varying one or more characteristics of a carrier signal in accordance
with information to be communicated”; and “second modulation [method]” means “a second
method for varying one or more characteristics of a carrier signal in accordance with information
to be communicated.” Plaintiff had no opposition to these preliminary constructions.
Defendants were opposed.
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ constructions . . . confuse ‘modulation’ with
‘encoding’” and import limitations from a preferred embodiment. Dkt. No. 97 at 6. Plaintiff
also submits that examples of the characteristics of a carrier than can be modulated are
amplitude, frequency, and phase. Id. In this regard, Plaintiff cites extrinsic dictionary
definitions (quoted below) as well as statements by Defendant Samsung in an inter partes review
(“IPR”) filing. Id. at 7; see id., Ex. 7, 3/20/2014 Petition for Inter Partes Review of U.S. Patent
No. 8,023,580 at 9 (citing The IEEE Standard Dictionary of Electrical and Electronics Terms
662 (6th ed. 1996)). Plaintiff also argues that the constituent terms “first” and “second” refer to
repeated instances rather than to any distinction or incompatibility. Id. at 8. Plaintiff explains
that this is a patent law convention and that this interpretation is consistent with usage of “first”
and “second” in various claims as well as in the Summary section of the ‘580 Patent. Id. at 8-10.

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As to Defendants’ proposed constructions, Plaintiff argues that the patents-in-suit “never
use the term ‘encode’ at all,” and Plaintiff cites the provisional patent application to which the
patents-in-suit claim priority as distinguishing between “modulation” and “encoding.” Id.
at 11-12. Plaintiff also argues that Defendants’ proposal of incompatibility between the first and
second modulation methods is found in a preferred embodiment but not in the claims. Id. at 12.
Plaintiff submits that such a limitation appears only in dependent claims, namely Claims 18
and 75 of the ‘580 Patent. Id. at 13. Further, Plaintiff argues, Defendants’ proposals would
improperly exclude embodiments in which “modems may be capable of using several different
modulation methods.” Id. (quoting ‘580 Patent at 1:36-37; citing id. at 5:51-54). Plaintiff
likewise argues that “the USPTO examiner recognized that the claimed ‘first’ and ‘second’
modulation methods could be understood by a common receiver—contrary to Defendants’
constructions.” Dkt. No. 97 at 14. Finally, Plaintiff urges that Defendants’ proposals “would
render claim limitations that explicitly require ‘the first modulation method is different than the
second modulation method’ superfluous.” Id. at 16 (citing ‘580 Patent at Claims 23, 32 & 40).
Defendants respond that “the sole disclosed embodiment of the invention has a ‘Trib 1’4
modem that understands ‘type A’ modulation but not ‘[t]ype B,’ and a ‘Trib 2’ modem that
understands ‘type B’ modulation but not ‘type A.’” Dkt. No. 102 at 3; see id. at 6-9. Defendants
note that the specification asserts (in Defendants’ words) that “in the prior art, because all
modems connected to a common circuit needed to use compatible modulation methods, tribs that
supported only a low-performance modulation method (e.g. type B) would not work in systems
4

The patents-in-suit disclose that in a “multipoint architecture,” the term “trib” is a shortened
form of the word “tributary” and refers to one of several modems that communicates with a
single “master” modem. See ‘580 Patent at 1:56-58 & 3:40-44. The term “trib” appears to be
synonymous with the term “slave” as used in the patents-in-suit. See Dkt. No. 97, Ex. 7,
3/20/2014 Petition for Inter Partes Review of U.S. Patent No. 8,023,580 at 11.
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that require a high-performance modulation (e.g. type A) for any tasks.” Id. at 4. Defendants
explain that “[i]f the tribs speak each other’s language, the alleged invention would be
unnecessary.” Id. at 3; see id. at 5 (“If the type B trib could understand type A modulation,
type A modulation would simply be used by both devices, as in the prior art.”).
As to the prosecution history, Defendants highlight that the patentee deleted from the
specification all disclosures of what Defendants refer to as a “bilingual” trib, i.e., a trib with the
ability to use two types of modulation. Id. at 9-10. Defendants also submit that the examiner
statement cited by Plaintiff in its opening brief was made before the patentee deleted the
disclosures of a bilingual trib. Id. at 10. Further, Defendants cite the prosecution history of
ancestor United States Patent No. 6,616,838, during which the patentee stated: “The present
invention is directed to the use of differing transceivers responsive to different modulation
methods to the exclusion of other modulation methods . . . .” Id. at 11 (quoting Ex. 8, 9/27/2001
First Amendment and Response at p. 6 of 10).
As to their proposed constructions, Defendants note that “encoding” appeared in the
constructions that Plaintiff had proposed prior to filing its opening claim construction brief. Dkt.
No. 102 at 3 & 14. Defendants also argue: “First, contrary to [Plaintiff’s] arguments,
‘modulation’ is ‘encoding,’ as [Plaintiff’s] own dictionary confirms. Second, [Plaintiff’s]
construction injects the complex concept of carrier waves into the definition. That concept
would not assist a jury.” Id. at 14 (citations omitted). Finally, Defendants argue that the claim
limitations requiring “different” modulation methods are “already superfluous.” Id. at 15.
Plaintiff replies to Defendants’ arguments as follows: (1) whether the claims adequately
distinguish prior art is a matter of validity, not claim construction, and the patentee did not
anywhere state that the point of novelty was that receivers understand only one modulation

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method; (2) the claims should not be limited to a particular embodiment and, moreover, the
patents-in-suit incorporate related patent applications that disclose bilingual tribs (see Dkt.
No. 103, Ex. 30 at RIP9770); (3) the patentee removed, from the specification, references to
measuring transmission line characteristics, but the patentee did not disclaim all embodiments in
which multiple modulation methods could be understood by a single trib; (4) Defendants’
technology tutorial submitted to this Court (Dkt. No. 103, Ex. 28) confirms that “modulation” is
different than “encoding”; (5) the doctrine of claim differentiation is not overcome by any
disclosures in the specification; and (6) Defendants’ proposals would render superfluous the
claim limitations requiring that the “first” and “second” modulation methods be “different.” Dkt.
No. 103 at 2-5.
At the May 30, 2014 hearing, Defendants emphasized that the only disclosed
embodiment uses monolingual tribs and that during prosecution the patentee deleted disclosure
of bilingual tribs. The Court inquired where, if anywhere, the patentee stated that a trib can
understand only one modulation method. Defendants responded that the patentee made that
statement “by implication” by removing the disclosure of bilingual tribs. In this regard,
Defendants cited the case of Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir.
2009). As to Plaintiff’s claim differentiation arguments, Defendants urged that the dependent
claim “tail” cannot wag the specification “dog.” See N. Am. Vaccine, Inc. v. Am. Cyanamid Co.,
7 F.3d 1571, 1577 (Fed. Cir. 1993) (“The dependent claim tail cannot wag the independent claim
dog.”).
Plaintiff responded that the deletions were merely “housekeeping” and related primarily
to test signals and to measuring transmission line characteristic rather than to the use of
multilingual tribs. Plaintiff also reiterated that the patents-in-suit incorporate-by-reference

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related applications that disclose multilingual tribs. Finally, Plaintiff cited 01 Communique
Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012), for the proposition that if the
prosecution history is subject to a reasonable, non-limiting interpretation, then there is no
disclaimer.
(2) Analysis
Claim 1 of the ‘580 Patent is representative and recites (emphasis added):
1. A communication device capable of communicating according to a
master/slave relationship in which a slave communication from a slave to a master
occurs in response to a master communication from the master to the slave, the
device comprising:
a transceiver, in the role of the master according to the master/slave
relationship, for sending at least transmissions modulated using at least two types
of modulation methods, wherein the at least two types of modulation methods
comprise a first modulation method and a second modulation method, wherein the
second modulation method is of a different type than the first modulation method,
wherein each transmission comprises a group of transmission sequences, wherein
each group of transmission sequences is structured with at least a first portion and
a payload portion wherein first information in the first portion indicates at least
which of the first modulation method and the second modulation method is used
for modulating second information in the payload portion, wherein at least one
group of transmission sequences is addressed for an intended destination of the
payload portion, and wherein for the at least one group of transmission sequences:
the first information for said at least one group of transmission sequences
comprises a first sequence, in the first portion and modulated according to the first
modulation method, wherein the first sequence indicates an impending change
from the first modulation method to the second modulation method, and
the second information for said at least one group of transmission
sequences comprises a second sequence that is modulated according to the second
modulation method, wherein the second sequence is transmitted after the first
sequence.
As an initial matter, Defendants’ proposed constructions appear to render redundant the
recital of “wherein the second modulation method is of a different type than the first modulation
method.” Defendants have countered that “[t]he limitations of these claims requiring ‘different’
modulation methods are . . . already superfluous” because “[Plaintiff] admits that the terms ‘first’
and ‘second’ . . . are used to distinguish two items that (while similarly named) are, in fact,
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different.” Dkt. No. 102 at 15. Nonetheless, such redundancy is disfavored when construing
claims. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
claim construction that gives meaning to all the terms of the claim is preferred over one that does
not do so.”); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991)
(noting that “[a]ll the limitations of a claim must be considered meaningful”).
As for the specification, the Background section of the ‘580 Patent states that prior art
systems required all modems to use a single, common modulation method:
In existing data communications systems, a transmitter and receiver modem pair
can successfully communicate only when the modems are compatible at the
physical layer. That is, the modems must use compatible modulation methods.
This requirement is generally true regardless of the network topology. For
example, point-to-point, dial-up modems operate in either the industry standard
V.34 mode or the industry standard V.22 mode. Similarly, in a multipoint
architecture, all modems operate, for example, in the industry standard V.27bis
mode. While the modems may be capable of using several different modulation
methods, a single common modulation is negotiated at the beginning of a data
session to be used throughout the duration of the session.
‘580 Patent at 1:26-39 (emphasis added). The specification then discloses using different
modulation methods:
For example, some applications (e.g., internet access) require high performance
modulation, such as quadrature amplitude modulation (QAM), carrier amplitude
and phase (CAP) modulation, or discrete multitone (DMT) modulation, while
other applications (e.g., power monitoring and control) require only modest data
rates and therefore a low performance modulation method.
***
While it is possible to use high performance tribs running state of the art
modulation methods such as QAM, CAP, or DMT to implement both the high and
low data rate applications, significant cost savings can be achieved if lower cost
tribs using low performance modulation methods are used to implement the lower
data rate applications.
Id. at 2:1-8 & 5:17-22 (emphasis added).

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A block diagram of a master transceiver 64 in communication with a trib 66 in
accordance with the principles of the present invention is shown in FIG. 3. * * *
Trib 66 comprises CPU 82 in communication with modulator 84, demodulator 86,
and memory 88. Memory 88, likewise holds software control program 92 and
any data necessary for the operation of trib 66. Control programs 78 and 92, are
executed by CPUs 68 and 82 and provide the control logic for the processes to be
discussed herein. Control program 92 includes logic for implementing a
particular modulation method, which, for purposes of illustration, is called
type X[.] Inasmuch as master transceiver 64 is capable of running either a type A
or a type B modulation method, type X refers to one of those two modulation
methods.
Id. at 5:23-25 & 5:42-44 (emphasis added).
[A]s shown in FIG. 5, master transceiver 64 establishes type A as the primary
modulation in sequence 104. Note that because trib 66b responds only to type B
modulation transmissions, only the type A tribs 66a-66a are receptive to
transmission sequence 104.
***
Note that the trailing sequence 114 is ineffective in establishing the termination of
a communication session between master transceiver 64 and a type B trib 66b
because the trailing sequence is transmitted using type A modulation.
Id. at 5:65-6:2 & 6:25-29.
The specification does not, however, warrant Defendants’ proposed finding that the
invention is framed exclusively in the realm of monolingual tribs. Instead, the specification
discloses that the advantage of using multiple modulation methods is applicable to multi-lingual
tribs:
The present invention has many advantages, a few of which are delineated
hereafter as merely examples.
One advantage of the present invention is that it provides to the use of a plurality
of modem modulation methods on the same communication medium.
Another advantage of the present invention is that a master transceiver can
communicate seamlessly with tributary transceivers or modems using
incompatible modulation methods.

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‘580 Patent at 2:50-57 (emphasis added).
As to the prosecution history, Defendants have focused on: (1) a statement regarding the
“present invention” during prosecution of an ancestor patent; and (2) the patentee’s deletion of
certain paragraphs from the specification of the patents-in-suit.
First, Defendants have cited the prosecution history of ancestor United States Patent No.
6,616,838, during which the patentee stated: “The present invention is directed to the use of
differing transceivers responsive to different modulation methods to the exclusion of other
modulation methods . . . .” Dkt. No. 97, Ex. 17, 9/27/2001 First Amendment and Response at 6.
Yet, the ‘580 Patent is a continuation of a continuation of a continuation-in-part of the ‘838
Patent. The multiple intervening applications render the cited prosecution statement too
attenuated to be deemed definitive as to the patents-in-suit, particularly given that the patentee
was adding the “exclusion” language to a claim and was referring to “[t]he present invention” in
the context of that claim. See id. at 6 & A-1; see also Invitrogen Corp. v. Clontech Labs., Inc.,
429 F.3d 1052, 1078 (Fed. Cir. 2005) (“[T]he prosecution of one claim term in a parent
application will generally not limit different claim language in a continuation application.”); cf.
Regents of the Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013) (“When
the purported disclaimers made during prosecution are directed to specific claim terms that have
been omitted or materially altered in subsequent applications (rather than to the invention itself),
those disclaimers do not apply.”) (quoting Saunders Grp., Inc. v. Comfortrac, Inc., 492 F.3d
1326, 1333 (Fed. Cir. 2007)).
Second, Defendants have cited the patentee’s deletion of matter from the specification of
the patents-in-suit. In the case of Abbott Laboratories v. Sandoz, Inc., cited by Defendants

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during the May 30, 2014 hearing, the court relied at least in part upon the patentee’s omission of
matter contained in a parent application:
[T]he specification refers several times to “Crystal A of the compound (I) of the
present invention” and offers no suggestion that the recited processes could
produce non-Crystal A compounds, even though other types of cefdinir crystals,
namely Crystal B, were known in the art. As noted earlier, the Crystal B
formulation actually appears in the parent JP ‘199 application. Thus, Abbott
knew exactly how to describe and claim Crystal B compounds. Knowing of
Crystal B, however, Abbott chose to claim only the A form in the ‘507 patent.
Thus, the trial court properly limited the term “crystalline” to “Crystal A.”
***
In limiting “crystalline” to “Crystal A” in claims 1-5, the Eastern District of
Virginia did not improperly import the preferred embodiment into the claims.
Initially, Crystal A is the only embodiment described in the specification. As
discussed above, the specification’s recitation of Crystal A as its sole embodiment
does not alone justify the trial court’s limitation of claim scope to that single
disclosed embodiment. See Liebel-Flarsheim [Co. v. Medrad, Inc.], 358 F.3d
[898,] 906 [(Fed. Cir. 2004)] (“[T]his court 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.”). In this case, however, the
rest of the intrinsic evidence, including the prosecution history and the priority JP
‘199 application, evince a clear intention to limit the ‘507 patent to Crystal A . . . .
***
The JP ‘199 application strongly suggests that the ‘507 patent intentionally
excluded Crystal B compounds. As discussed above, the JP ‘199 application
establishes unequivocally that Abbott knew and could describe both Crystal A
and Crystal B. Abbott could have retained the disclosure of Crystal B to support
the broader claims of the ‘507 patent, but instead disclosed and claimed A alone.
***
Given the exclusive focus on Crystal A in the specification as well as the
prosecution history of the ‘507 patent, the Eastern District of Virginia properly
limited “crystalline” in claims 1-5 to “Crystal A.”
***
The Eastern District of Virginia correctly construed the ‘507 patent’s recitation of
“crystalline” in each of the asserted claims as limited to Crystal A, as outlined in
the specification. Because Abbott scrubbed all references to Crystal B in the ‘507
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patent’s specification, which were present in the ‘507 patent’s parent foreign
application, Abbott clearly demonstrated its intent to limit the ‘507 patent to
Crystal A. This intent was further underscored by comments made during
prosecution. As such, Abbott is unable to recapture Crystal B through broad
claim language or under the doctrine of equivalents.
566 F.3d at 1289-90, 1299 (citation omitted).
Here, by contrast, the patentee’s deletion of matter relates less directly to the limitation
that Defendants seek to impose. The patentee deleted the following paragraphs during
prosecution of the ‘580 Patent:
[0042] In an alternative embodiment of the present invention, embedded
modulations can be used as a way to measure transmission line characteristics
between a master transceiver and tributary transceiver as shown in FIG 8. In this
embodiment, both a master transceiver 64 and a tributary transceiver 66a would
have the ability to transmit using at least two modulation methods, type A and
type B. In the present example, the primary transmission type is type A. Thus, as
shown in FIG. 8, the master transceiver 64 establishes type A as the primary
modulation in sequence 150.
[0043] To switch from type A to type B modulation, master transceiver 64
transmits a notification sequence 152 to the tributary 66a. Thus, the tributary 66a
is notified of an impending change to modulation type B. The switch to type B
modulation could be limited according to a specific time interval or for the
communication of a particular quantity of data, such as a test signal. After
notifying the tributary 66a of the change to type B modulation, the
master transceiver 64[] transmits test signal sequence 151 using type B
modulation.
[0044] In this embodiment, the tributary transceiver can contain logic which
enables the tributary 66a to calculate at least one channel parameter from the test
signal sequence 154. Channel parameters typically include transmission line
characteristics, such as, for example, loss versus frequency, non-linear distortion,
listener echoes, talker echoes, bridge tap locations, impedance mismatches, noise
profile, signal-to-noise ratio, group delay versus frequency, cross-talk presence,
cross-talk type, etc. Moreover, the tributary transceiver 66a could be configured
to communicate a channel parameter back to the master transceiver 64.
[0045] After transmitting the test signal sequence 154 to the tributary transceiver
66a, the master transceiver 64 can transmit trailing sequence 156 to the tributary
transceiver 66a using type A modulation to indicate the end of the transmission
using type B modulation. The master transceiver 64 can then send information to
the tributary transceiver 66a using primary modulation type A, as shown by
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training, data and trailing sequences 158, 160 and 162. Likewise, the tributary
transceiver 66a can send information to the master transceiver 64 using primary
modulation type A, as shown by training, data and trailing sequences 164, 166
and 168.
[0046] In a further alternative embodiment, the master transceiver 64 or tributary
transceiver 66a may identify a time period within which test signal sequences
may be transmitted. This would eliminate the training and trailing sequences
which alert the tributary transceiver 66a to the beginning of a new modulation
method. The identification of the time period could be initiated by the master
transceiver 64 or tributary transceiver 66a and could include a time period noted
in the header of a transmission between the tributary transceiver 66a and master
transceiver 64.
Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22) (emphasis
added); see id. at 22 (“The MPEP suggests that the applicant modify the brief summary of the
invention and restrict the descriptive subject matter ‘so as to be in harmony with the claims.’
MPEP 1302.01, General Review of Disclosure. Accordingly, Applicant has deleted paragraphs
[0042] – [0046].”) (square brackets in original); see also Dkt. No. 102, Ex. 4 at p. 20 of 44
(RIP19) (Figure 8, illustrating “Trib Type A + B”); Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant
to 37 CFR § 1.111 at 4 (RIP3520), 22 (RIP3538) & p. 34 of 34 (RIP3549) (replacing Figure 8).
This deletion of disclosure of “a tributary transceiver 66a [that has] the ability to transmit
using at least two modulation methods” is notable, and Defendants argued at the May 30, 2014
hearing that a “test signal” is merely an example of a communication with a bilingual trib. Dkt.
No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22). Nonetheless,
Plaintiff has persuasively argued that these paragraphs relate primarily to test signals and to
measuring transmission line characteristics rather than to the use of bilingual tribs. The abovequoted Sandoz case cited by Defendants is therefore distinguishable, and the patentee’s deletion
of matter from the specification is of no limiting effect here. See SanDisk Corp. v. Memorex
Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005) (“There is no clear and unmistakable

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disclaimer if a prosecution argument is subject to more than one reasonable interpretation, one of
which is consistent with a proffered meaning of the disputed term.”) (internal quotation marks
omitted); see also 01 Communique, 687 F.3d at 1297 (quoting SanDisk).
Defendants also argued at the May 30, 2014 hearing that the patentee removed this matter
because it was introduced in a parent continuation-in-part application. Defendants explained that
if the claims of the patents-in-suit were found to rely upon this new matter, the claims would not
receive benefit of the earliest priority date. Defendants concluded that the patentee deleted these
paragraphs from the specification in order to eliminate this risk. Defendants’ argument in this
regard appears better suited to a written description challenge because validity analysis is not a
regular part of claim construction. See Phillips, 415 F.3d at 1327 (“[W]e have certainly not
endorsed a regime in which validity analysis is a regular component of claim construction.”).
Defendants’ arguments regarding deletion of matter from the specification are therefore of
minimal relevance during the present claim construction proceedings.
In sum, none of the prosecution history cited by Defendants contains any definitive
statements that would warrant finding a disclaimer. See Omega Eng’g v. Raytek Corp., 334 F.3d
1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation, prosecution disclaimer
promotes the public notice function of the intrinsic evidence and protects the public’s reliance on
definitive statements made during prosecution.”) (emphasis added). Further, as explained above,
the prosecution history is not otherwise sufficiently clear to justify Defendants’ narrow
interpretation of the present patents-in-suit.
As to the parties’ proposed constructions, “[t]he use of the terms ‘first’ and ‘second’ is a
common patent-law convention to distinguish between repeated instances of an element or
limitation.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir.

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2003). Nothing in the nature of “repeated instances” demands the incompatibility that
Defendants have proposed. Cf. id. (“In the context of claim 1, the use of the terms ‘first . . .
pattern’ and ‘second . . . pattern’ is equivalent to a reference to ‘pattern A’ and ‘pattern B,’ and
should not in and of itself impose a serial or temporal limitation onto claim 1.”). Although the
above-quoted disclosures in the specification contemplate a trib that can use only one modulation
method, nothing in the claim language warrants limiting the disputed terms to such a narrow
construction.
The doctrine of claim differentiation also weighs against requiring incompatibility
because such a limitation appears in dependent Claims 18 and 75 of the ‘580 Patent, which
recite:
18. The device of claim 15, wherein the intended destination is the first type of
receiver and unable to demodulate the second modulation method.
***
75. The device of claim 72, wherein the intended destination is the first type of
receiver and unable to demodulate the second modulation method.
The doctrine of claim differentiation weighs against any construction of the disputed terms that
would render these dependent claims superfluous. See Phillips, 415 F.3d at 1315 (“[T]he
presence of a dependent claim that adds a particular limitation gives rise to a presumption that
the limitation in question is not present in the independent claim.”); see also Liebel-Flarsheim,
358 F.3d at 910 (“[W]here the limitation that is sought to be ‘read into’ an independent claim
already appears in a dependent claim, the doctrine of claim differentiation is at its strongest.”);
Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001) (“Claim
differentiation, while often argued to be controlling when it does not apply, is clearly applicable
when there is a dispute over whether a limitation found in a dependent claim should be read into

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an independent claim, and that limitation is the only meaningful difference between the two
claims.”).
Defendants have countered that “any presumption created by the doctrine of claim
differentiation will be overcome by a contrary construction dictated by the written description or
prosecution history.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305
(Fed. Cir. 2011) (citations and internal quotation marks omitted); accord Curtiss-Wright Flow
Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) (“[C]laim differentiation can
not broaden claims beyond their correct scope.”) (citation and internal quotation marks omitted).
On balance, Retractable is distinguishable because the above-discussed specification disclosures
and prosecution history are not so clear as Defendants have urged. See Retractable, 653 F.3d at
1305 (noting that disclosures “recite that ‘the invention’ has a body constructed as a single
structure, expressly distinguish the invention from the prior art based on this feature, and only
disclose embodiments that are expressly limited to having a body that is a single piece”).
As to the proper construction, Defendants’ proposal of “type of receiver” is vague and
confusing because it is unclear whether “type” refers to the modulation method or to some other,
unspecified characteristic of the receivers.
Also, Plaintiff properly argues that “encoding” is different than “modulation.” For
example, Plaintiff submits that the word “encode” can be defined as “to encrypt” or as “to use a
code, frequently one composed of binary numbers, to represent individual characters or groups
of characters in a message.” Id., Ex. 4, Modern Dictionary of Electronics 341 (6th ed. 1997); id.,
Ex. 5, Microsoft Press Computer Dictionary 175 (3d ed. 1997); see id., Ex. 11, John G. Proakis
& Masoud Salehi, Communication Systems Engineering 8-11 (1994); see also id., Ex. 12,
Bernard Sklar, Digital Communications: Fundamentals and Applications 6-7 (1988).

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“Modulation,” by contrast, is defined as a process of varying some characteristic of a
carrier signal. See Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of Electrical and
Electronics Terms 662 (6th ed. 1996) (“The process by which some characteristic of a carrier is
varied in accordance with a modulating wave”); see also id., Ex. 4, Modern Dictionary of
Electronics 633 (6th ed. 1997) (“The process, or results of the process, whereby some
characteristic of one signal is varied in accordance with another signal. The modulated signal is
called the carrier and may be modulated in three fundamental ways: by varying the amplitude
(amplitude modulation) by varying the frequency (frequency modulation) or by varying the
phase (phase modulation).”); id., Ex. 5, Microsoft Press Computer Dictionary 313 (3d ed. 1997)
(“The process of changing or regulating the characteristics of a carrier wave vibrating at a certain
amplitude (height) and frequency (timing) so that the variations represent meaningful
information.”); id., Ex. 6, D.K. Sharma, et al., Analog & Digital Modulation Techniques: An
Overview 551 (2010) (“Modulation is the process of varying some parameter of a periodic
waveform in order to use that signal to convey a message.”); Dkt. No. 102, Ex. 9 at RIP13523
(“Modulation is the process of encoding source data onto a continuous constant frequency signal
i.e. carrier signal with frequency fc.”). The specification, too, refers to a carrier in relevant
contexts. See ‘580 Patent at 1:57 & 2:4. Finally, during oral argument as to the “different type”
terms, Defendants themselves referred to modulating data onto a carrier.
Thus, even though Plaintiff itself included the word “encoding” in previously proposed
constructions, Defendants’ proposals of “encoding” are rejected as tending to confuse rather than
clarify the scope of the claims. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and

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technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement.”).
The Court, having rejected Defendants’ proposed constructions for the reasons set forth
above, hereby construes the disputed terms as set forth in the following chart:
Term

Construction

“first modulation method”

“a first method for varying one or more
characteristics of a carrier signal in
accordance with information to be
communicated”

“second modulation method”

“a second method for varying one or more
characteristics of a carrier signal in
accordance with information to be
communicated”

B. “modulation method [] of a different type” and “different types of modulation methods”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“different families of modulation techniques”

“modulation methods that are incompatible
with one another”

Dkt. No. 97 at 17; Dkt. No. 102 at 16. The parties submit that these terms appear in Claims 1
and 58 of the ‘580 Patent and Claims 1, 22, and 26 of the ‘228 Patent. Dkt. No. 81, Ex. A at 5.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary construction for these disputed terms: “different families of
modulation techniques, such as the FSK family of modulation methods and the QAM family of
modulation methods.” Plaintiff had no opposition to the preliminary construction. Defendants
were opposed.

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(1) The Parties’ Positions
Plaintiff argues that during prosecution, the patentee defined these disputed terms by
referring to “two types of modulation methods, i.e., different families of modulation techniques.”
Dkt. No. 97 at 18. Plaintiff further argues that “Defendants’ construction, which only requires
‘incompatibility,’ has no concept of a group of things having common characteristics. Such a
construction effectively reads the word ‘type’ right out of the claims, rendering it superfluous.”
Id. at 19-20.
Defendants respond:
As noted above [as to the “first” and “second” modulation methods], the whole
purpose of the purported invention is to enable two (or more) trib modems to use
different modulation methods on the same circuit. The crucial characteristic of
the different modulation methods vis-à-vis one another is that they are
incompatible. If they were compatible, there would be no problem for the patents
to solve.
Dkt. No. 102 at 16. Defendants also note that the word “family” does not appear in the
specification. Id. at 17. Defendants suggest that the patentee used the phrase “families of
modulation techniques” only in prosecution history remarks—and not in the claims—because
“[i]njecting that phrase into [a] claim would have rendered it plainly unsupported by the
specification and opened this portion of the claim to a written description challenge.” Id. at 18.
Defendants argue that Plaintiff’s authorities regarding the use of “i.e.” are applicable only to use
of “i.e” in the specification, not the prosecution history. Id. at 19. Defendants further argue that
“Defendants’ construction[] gives full meaning to the word ‘type,’ by requiring incompatibility.”
Id. Finally, Defendants submit that Plaintiff’s proposal of “families” “only raises the further
question of what constitutes a family of modulation methods.” Id. at 20.
Plaintiff replies that the patentee’s definition in the prosecution history is supported by
disclosures of FSK (frequency-shift keying) and QAM (quadrature amplitude modulation) in the
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specification and in related applications cited by the specification. Dkt. No. 103 at 6. Plaintiff
also argues that “nothing in the specification—certainly not the passages Defendants cite—
reflects the kind of ‘clear and unmistakable’ intent necessary to depart from the ordinary
meaning and define ‘type’ as ‘incompatibility.’” Id. at 6-7 (citing Thorner v. Sony Computer
Entm’t Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012)).
At the May 30, 2014 hearing, Defendants argued that “family” is a much broader term
than “type” because modulation methods could be grouped together in any number of ways, such
as analog as opposed to digital or phase modulation as opposed to frequency modulation.
Defendants also argued that Plaintiff’s interpretation is inconsistent with dependent Claim 43 of
the ‘228 Patent, which recites that “at least one” of the first and second modulation methods uses
phase modulation.
Plaintiff responded by reiterating that Defendants’ proposed construction fails to give
meaning to the constituent term “type.” Plaintiff also argued that Defendants’ proposal is overly
restrictive because it could be read to mean that different FM radio stations use “incompatible”
methods merely because they transmit at different frequencies. Plaintiff urged that the claims
contemplate the use of non-incompatible modulation methods so long as they are different.
(2) Analysis
The Summary section of the specification states: “Another advantage of the present
invention is that a master transceiver can communicate seamlessly with tributary transceivers or
modems using incompatible modulation methods.” Id. at 2:55-57 (emphasis added).
Nonetheless, “[t]he court’s task is not to limit claim language to exclude particular devices
because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may possess a
number of advantages or purposes, and there is no requirement that every claim directed to that

- 24 -

invention be limited to encompass all of them.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1370 (Fed. Cir. 2003); accord Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
F.3d 1337, 1345 (Fed. Cir. 2008) (discussing E-Pass). Defendants’ proposal that different
“types” of modulation methods must be “incompatible” would improperly limit the claims to a
preferred embodiment. See Comark, 156 F.3d at 1187.
Moreover, although it appears in the Summary of the specification as quoted above, the
word “incompatible” is unclear and, as Plaintiff has argued, would tend to raise issues
concerning the manner or degree of compatibility. Along those lines, uncertainty might arise as
to whether modulation methods must be completely incompatible in all respects or could instead
be partially compatible. At the May 30, 2014 hearing, the Court expressed concern as to the
clarity of “incompatible.” Defendants responded that the disputed terms require that the
modulation methods be different “waveforms,” different “ways to modulate” data onto a carrier,
or simply “not the same.” These suggestions, however, merely restate that the methods are
“different.” This adds little, if anything, to the disputed terms themselves, which recite
“modulation method [] of a different type” and “different types of modulation methods.”
Defendants’ proposal of “incompatible” is therefore rejected.
The Court turns to whether Plaintiff is correct that the patentee gave the disputed terms
an “express definition.” Dkt. No. 97 at 19.
“The specification acts as a dictionary ‘when it expressly defines terms used in the claims
or when it defines terms by implication.’” Bell Atl. Network Servs., 262 F.3d at 1268 (quoting
Vitronics Corp., 90 F.3d at 1582). “When a patentee acts as his own lexicographer in redefining
the meaning of particular claim terms away from their ordinary meaning, he must clearly express
that intent in the written description. We have repeatedly emphasized that the statement in the

- 25 -

specification must have sufficient clarity to put one reasonably skilled in the art on notice that the
inventor intended to redefine the claim term.” Merck, 395 F.3d at 1370 (citations omitted). “[A]
patentee may choose to be his own lexicographer and use terms in a manner other than their
ordinary meaning, as long as the special definition of the term is clearly stated in the patent
specification or file history.” Vitronics, 90 F.3d at 1582.
During prosecution, the patentee amended claims so as to add the word “type,” and the
patentee stated:
Applicant thanks Examiner Ha for the indication that claims 1-18 and 37-57 are
allowed (office action, p. 7). Applicant has further amended claims 1-2, 9-15, 18,
37-38, and 45-46 with additional recitations to more precisely claim the subjectmatter. For example, the language of independent claim 1 has been clarified to
refer to two types of modulation methods, i.e., different families of modulation
techniques, such as the FSK [(frequency shift keying)] family of modulation
methods and the QAM [(quadrature amplitude modulation)] family of modulation
methods.
Dkt. No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20 (RIP3536); see id. at 7
(RIP3523) (amending claims). Generally, “i.e.” signals an explicit definition. See, e.g., Abbott
Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327, 1330 (Fed. Cir. 2003) (finding that the patentee
used “i.e.” to define a term not known in the art at the relevant time); but see Pfizer, Inc. v. Teva
Pharm., USA, Inc., 429 F.3d 1364, 1373 (Fed. Cir. 2005) (specification referred to “saccharides
(i.e. sugars)” but also contained further discussion under a section titled “Saccharides,” and the
court concluded that “the patentee clearly intended for this section to address the meaning of the
same term”).
The significance of the patentee’s use of “i.e.” in the prosecution history—as opposed to
in the specification—is perhaps less clear. On one hand, some authorities caution against relying
upon potentially “self-serving” statements in the prosecution history. See Biogen, Inc. v. Berlex
Labs., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (“Representations during prosecution cannot enlarge
- 26 -

the content of the specification, and the district court was correct in relying on the specification
in analyzing the claims.”); see also Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270
(Fed. Cir. 1986) (“For example, a Citation [of Prior Art] filed [with the PTO] during litigation
might very well contain merely self-serving statements which likely would be accorded no more
weight than testimony of an interested witness or argument of counsel. Issues of evidentiary
weight are resolved on the circumstances of each case.”). Also, as Defendants have pointed out,
dependent Claim 43 of the ‘228 Patent is at least somewhat at odds with Plaintiff’s interpretation
to the extent that it would require that only one, instead of “at least one,” of the first and second
modulation methods can be phase modulation.
On the other hand, a “claim term will not receive its ordinary meaning if the patentee
acted as his own lexicographer and clearly set forth a definition of the disputed claim term in
either the specification or prosecution history.” CCS Fitness v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002) (emphasis added); accord Home Diagnostics, 381 F.3d at 1356; Advanced
Fiber Techs. (AFT) Trust v. J&L Fiber Servs., Inc., 674 F.3d 1365, 1374 (Fed. Cir. 2012); see
Vitronics, 90 F.3d at 1582 (quoted above). Such authorities weigh in favor of construing the
disputed term in accordance with the patentee’s express definition in the prosecution history.
At the May 30, 2014 hearing, Defendants urged that because the patentee’s definition
was set forth after the examiner had indicated that the claims were allowable, the definition was
self-serving and was not part of the usual back-and-forth negotiation that informs the meaning of
claim terms. Plaintiff properly countered, however, that the patentee provided the definition in
connection with amending some of the claims so as to introduce the word “types.” See Dkt.
No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20 (RIP3536) (quoted above); see
also id. at 7 (RIP3523) (amending claims). Thus, to whatever extent Defendants are correct that

- 27 -

the prosecution history can only define a term in the context of developing allowable claims, the
patentee’s definition in this case can properly be considered.
The patentee’s express definition is also consistent with disclosure in the specification of
various categories of modulation methods. See ‘580 Patent at 2:1-8 (“some applications (e.g.,
internet access) require high performance modulation, such as quadrature amplitude modulation
(QAM), carrier amplitude and phase (CAP) modulation, or discrete multitone (DMT)
modulation”); see also id. at 5:17-20 (similar).
Such a definition is also consistent with the extrinsic dictionary definitions submitted by
Plaintiff, which define “type” as “a class, kind, or group set apart by common characteristics”
and “family” as “a group of things having common characteristics.” Dkt. No. 97, Ex. 22,
Merriam-Webster’s Dictionary and Thesaurus 291, 858 (2007); see id., Ex. 23, The American
Century Thesaurus 129 (1995) (listing “type” as a synonym for “family”).
On balance, the patentee’s lexicography should be given effect in the Court’s
construction. See Vitronics, 90 F.3d at 1582; see also Abbott Labs., 323 F.3d at 1327, 1330; CCS
Fitness, 288 F.3d at 1366; Advanced Fiber Techs., 674 F.3d at 1374. As to Defendants’
concerns, any dispute regarding whether accused modulation techniques are from different
“families” is a factual dispute regarding infringement rather than a legal dispute for claim
construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
(noting that “the task of determining whether the construed claim reads on the accused product is
for the finder of fact”).
Nonetheless, although Plaintiff proposes merely “different families of modulation
techniques,” the patentee’s definition in the prosecution history includes examples, namely “the

- 28 -

FSK family of modulation methods and the QAM family of modulation methods.”5 Dkt. No. 97,
Ex. 9, 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20 (RIP3536). These examples provide
useful context for understanding the phrase “different families” and, having been provided as
part of the patentee’s definition, should be included in the Court’s construction.
The Court accordingly hereby construes “modulation method [] of a different type”
and “different types of modulation methods” to mean “different families of modulation
techniques, such as the FSK family of modulation methods and the QAM family of
modulation methods.”
C. “communication[s] device,” “device that transmits,” and “logic configured to transmit”
“communication[s] device”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; plain and ordinary
meaning applies.

Samsung:
“a device that sends or receives information
over wires”

Alternatively:
“a device that sends or receives
information”

BlackBerry:
“a device that sends or receives information
over wires in a circuit-switched network”

“device that transmits”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; plain and ordinary
meaning applies.

Samsung:
“a device that sends information over
wires”

Alternatively:
“a device that sends information”

5

BlackBerry:
“a device that sends information over wires
in a circuit-switched network”

The meanings of “FSK” and “QAM” do not appear to be in dispute.
- 29 -

“logic configured to transmit”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; plain and ordinary
meaning applies.

Samsung:
“logic configured to send information over
wires”

Alternatively:
“logic configured to send information”

BlackBerry:
“logic configured to send information over
wires in a circuit-switched network”

Dkt. No. 97 at 20; Dkt. No. 102 at 23. The parties submit that the first of these terms appears in
Claims 1, 23, 32, and 58 of the ‘580 Patent and all asserted claims of the ‘228 Patent. Dkt.
No. 81, Ex. A at 11. The parties further submit that the second of these terms appears in
Claim 40 of the ‘580 Patent and that the third appears in Claims 49 and 54 of the ‘580 Patent. Id.
at 14 & 16.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary constructions for these disputed terms: “communication[s] device”
means “a device that sends or receives information”; “device that transmits” means “a device
that sends information”; and “logic configured to transmit” means “logic configured to send
information.” Plaintiff had no objection to these preliminary constructions. Defendants were
opposed.
(1) The Parties’ Positions
Plaintiff argues that “[t]he words in these terms do not have specialized meanings, have
not been otherwise defined by the patentee, and are easily understood based on their ordinary
meaning.” Dkt. No. 97 at 21. As to Defendants’ proposals of “wires” and a “circuit-switched
network,” Plaintiff responds that such constructions are contrary to the recital in the claims of a

- 30 -

generic “communication medium.” Id. at 22. Plaintiff urges that the brief mention of wires in
the specification is insufficient to redefine the disputed terms. Id. at 22-23. To the contrary,
Plaintiff argues, during prosecution the patentee deleted text from the specification that referred
to “lines.” Id. at 23. Finally, Plaintiff notes that the words “circuit” and “switched” do not
appear in the claims or the written description. Id. at 24.
Defendants respond that “[w]ireless networks are never mentioned in the patents-in-suit,”
despite wireless networks being well-known at the time the patent applications were filed, and
“[t]he only example of a network mentioned in the text of the patents is a two-wired system of
the prior art, upon which the alleged invention of the patents is an improvement.” Dkt. No. 102
at 23; see id. at 24. Defendants also express concern that Plaintiff’s proposed constructions
“provide no boundaries, and as read could encompass a tin can connected to a string.” Id. at 24.
Finally, Defendant Blackberry proposes that the claimed invention is limited to circuit-switched
networks because, “by design,” “[d]evices on a packet-switched network can use different
communication languages or modulation methods.” Id. at 25. Blackberry cites several extrinsic
treatises in support of this proposition and concludes that “[p]ut simply, in a packet-switched
network there is no compatibility problem for the patents to solve, and the purported invention is
unnecessary.” Id. at 25-26.
Plaintiff replies that the patents-in-suit “do not limit the invention to wired or wireless
‘modems’/’communication media’ because both were well-known at the time.” Dkt. No. 103
at 8 (citations and footnote omitted). Plaintiff also argues: “Defendants read too much into the
Figures. Communications medium 94 is depicted as a line in Figs. 3-4, but that does not imply a
wire any more than the absence of a line implies wireless.” Id. at 8 n.7. As to Blackberry’s
proposal, Plaintiff replies that the patents-in-suit do not refer to “circuit-switched” or “packet-

- 31 -

switched” networks because “the patents-in-suit are not concerned with low-level network
switching protocols, but rather with ‘sending transmissions modulated using at least two types of
modulation methods.’” Id. (quoting ‘580 Patent at 2:30-31). Plaintiff also submits that
“Blackberry has zero evidence to support its claim that devices on a packet-switched network
can use different [] modulation methods by design.” Id. (quoting Dkt. No. 102 at 25).
At the May 30, 2014 hearing, Defendants again highlighted the use of a solid line in the
Figures to illustrate the communication medium. Defendants argued that the appropriate way to
illustrate wireless communication would have been with an antenna or with a series of three
closely-spaced curved lines. Defendants also noted that the provisional patent application refers
to a “two-wire” modem. See Dkt. No. 97, Ex. 13 at 5. Finally, Defendant Blackberry presented
no oral argument on its proposals of “circuit-switched” and instead submitted its proposed
constructions on the briefing.
(2) Analysis
Although Plaintiff has proposed that no constructions are required, the parties have
presented a “fundamental dispute regarding the scope of . . . claim term[s],” and the Court has a
duty to resolve that dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362-63 (Fed. Cir. 2008).
As a threshold matter, Defendants have not argued that their proposals of a wired
network or a circuit-switched network are supported by anything within the claims at issue. The
issue, then, is whether Defendants’ proposed limitations are adequately supported by anything in
the specification or the extrinsic evidence cited by the parties.
As to Defendants’ proposals of requiring a wired network, the specification only once
refers to wires:

- 32 -

The foregoing discussion is based on a two-wire, half-duplex multipoint system.
Nevertheless, it should be understood that the concept is equally applicable to
four-wire systems.
‘580 Patent at 4:51-54. This passage is insufficient to limit the claims to wired networks,
particularly given that it refers to a discussion of only one or two of the Figures. See id. at 3:404:50; see also Comark, 156 F.3d at 1187. Moreover, Defendants have acknowledged that the
“foregoing discussion” referred to in this passage is a discussion of “a two-wired system of the
prior art.” Dkt. No. 102 at 23.
In several other instances, the specification refers to a “communication medium,” but
those disclosures do not address whether the medium is wired or wireless. See ‘580 Patent
at 2:52-54 (“One advantage of the present invention is that it provides to [sic, for] the use of a
plurality of modem modulation methods on the same communication medium.”), 3:40-44 (“With
reference to FIG. 1, a prior art multipoint communication system 22 is shown to comprise a
master modem or transceiver 24, which communicates with a plurality of tributary modems
(tribs) or transceivers 26-26 over communication medium 28.”) & 5:44-46 (“The master
transceiver 64 communicates with trib 66 over communication medium 94.”).
Defendants also argue that Figures 3 and 4 depict a wired network because the
“communication medium 94” is illustrated by either solid line connectors (Figure 3) or a solid
line (Figure 4). See Dkt. No. 102 at 24. First, as Plaintiff has urged, any argument that solid
lines cannot represent a wireless network is conclusory speculation. Second, even if Figures 3
and 4 were interpreted as depicting a wired network, “patent coverage is not necessarily limited
to inventions that look like the ones in the figures. To hold otherwise would be to import
limitations [i]nto the claim[s] from the specification, which is fraught with danger.” MBO Labs.
Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007).

- 33 -

Thus, the specification does not support limiting the claims to wired networks. This
conclusion is reinforced by prosecution history in which the examiner rejected claims that recited
a “communications device” and “logic configured to transmit” based on the “Siwiak” reference,
which discloses a wireless communications system. Dkt. No. 97, Ex. 14, 9/1/2010 Office Action
at 2-4 (RIP72-74); id., Ex. 20 at 13 & 20 (RIP23 & RIP30) (application claims); see id., Ex. 15,
U.S. Pat. No. 5,537,398 (Siwiak) at 2:24-41 (“The messaging system includes a plurality of
geographically distributed messaging transmitters, each comprising means for generating a radio
frequency signal.”); see also Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir.
2005) (“Statements about a claim term made by an Examiner during prosecution of an
application may be evidence of how one of skill in the art understood the term at the time the
application was filed.”). Finally, although the weight that the specification amendments should
be given here is unclear, it is worth noting that the patentee deleted paragraphs from the
specification that referred to “transmission line characteristics.” Id., Ex. 9, 3/1/2011 Reply
Pursuant to 37 CFR § 1.111 at 5-6 (RIP3521-22) (emphasis added).
As to extrinsic evidence, Plaintiff has submitted two news articles from the relevant time
period that use the phrase “wireless modem.” Dkt. No. 103, Ex. 33, Ericsson announces its
M2190 OEM Wireless Modem, first PCMCIA modem for mobile data connectivity, Business
Wire, Nov. 2, 1994; id., Ex. 34, A Wireless Modem that Could Leave ‘Em in the Dust,
BusinessWeek, Feb. 24, 1997. Use of the word “modem” in the patents-in-suit is therefore
insufficient to require a wired network. Finally, Plaintiff has submitted a dictionary definition of
“medium,” in the context of “information transfer,” as not being limited to wires but rather being
any “vehicle capable of transferring data.” Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of
Electrical and Electronics Terms 643 (6th ed. 1996).

- 34 -

In sum, Defendants have failed to justify limiting the claims to wired networks. The
Court therefore turns to the additional proposals by Defendant Blackberry.
Blackberry has submitted extrinsic evidence in support its argument that the claimed
invention only has relevance in circuit-switched networks, not packet-switched networks. Dkt.
No. 102, Ex. 11, Gurdeep S. Hura & Mukesh Singhal, Data and Computer Communications:
Networking and Internetworking 130-31 (2001) (“In the case of packet-switched networks,
stations with different data rates can communicate with each other, and the necessary conversion
between different data rates is done by the network, while in the case of circuit-switched
networks, both stations must have the same data rate.”); id., Ex. 12, William Stallings, Data and
Computer Communications 254-55 (5th ed. 1997) (“In [a] circuit-switching network, the
connection provides for transmission at a constant data rate. Thus, each of the two devices that
are connected must transmit and receive at the same data rate as the other . . . .”; “A packetswitching network can perform data-rate conversions. Two stations of different data rates can
exchange packets because each connects to its node at its proper data rate.”); id., Ex. 13, Youlu
Zheng & Shakil Akhtar, Networks for Computer Scientists and Engineers 125 (2002) (“Whereas
. . . two networks connected by a circuit switch must operate at the same speed, packet switching
can connect networks operating at different speeds.”).
A circuit-switched network, at least in the context of Blackberry’s proposals, appears to
be a species of wired network. The Court therefore rejects Blackberry’s proposals based on the
Court’s rejection of Defendants’ proposals of “over wires,” above.
Alternatively, even if Blackberry is proposing a circuit-switched network limitation that
can be either wired or wireless, Blackberry’s above-cited reliance on extrinsic evidence is
disfavored. See Phillips, 415 F.3d at 1322 (“There is no guarantee that a term is used in the same

- 35 -

way in a treatise as it would be by the patentee. In fact, discrepancies between the patent and
treatises are apt to be common because the patent by its nature describes something novel.”).
As to Blackberry’s reliance on the purpose of the invention (avoiding the inefficiencies of
requiring all devices to use the same modulation method), Blackberry is correct as a general
matter that “the problem the inventor was attempting to solve, as discerned from the
specification and the prosecution history, is a relevant consideration.” CVI/Beta Ventures, Inc. v.
Tura LP, 112 F.3d 1146, 1160 (Fed. Cir. 1997).
Nonetheless, “[t]he court’s task is not to limit claim language to exclude particular
devices because they do not serve a perceived ‘purpose’ of the invention. . . . An invention may
possess a number of advantages or purposes, and there is no requirement that every claim
directed to that invention be limited to encompass all of them.” E-Pass, 343 F.3d at 1370;
accord Howmedica, 540 F.3d at 1345 (discussing E-Pass).
Blackberry has also cited Applied Materials, Inc. v. Advanced Semiconductor Materials
America, Inc., 98 F.3d 1563, 1573 (Fed. Cir. 1996). In Applied Materials, the patent
specification disclosed a problem of electrostatic contamination in the context of a “cold purge”
from a chamber:
As explained in the . . . specification, static charges are not a problem during
subsequent purges of the chamber because after the initial steps the temperature of
the chamber remains above about 180° C, the temperature above which static
charges do not exist.
In the invention of the . . . patent, static charges during the initial “cold” purges
are eliminated by operating the lamps at a low level during the initial gas flow
steps.
***
The district court found that “cold purge process” means temperatures below
180° C, and that the . . . invention was directed to the use of heat sufficiently high
to remove electrostatic contamination in the initial purge steps, that is, heat above
- 36 -

about 180° C, in a reactor whose operating conditions include temperatures below
180° C. “Cold purge” is interpreted in light of the problem the . . . patent solved:
the elimination of electrostatic contamination during the initial purge step.
Id. at 1571, 1573. The limitation imposed in Applied Materials was thus founded on intrinsic
disclosures regarding circumstances in which the stated problem presented itself. Here, by
contrast, Blackberry relies upon extrinsic evidence in support of the proposed “circuit-switched”
limitation. The patents-in-suit contain no reference to circuit-switched networks. Applied
Materials is therefore distinguishable.
The Court accordingly rejects Defendants’ proposed “over wires” and “circuit-switched”
limitations. The parties are otherwise in agreement as to the proper meaning of the disputed
terms, as set forth by Plaintiff’s alternative proposed constructions. Although the plain and
ordinary meaning of the disputed terms may well be readily understandable once Defendants’
proposed limitations have been rejected, the existence of common ground in the parties’
proposals is notable and should be given effect.
As to Defendants’ statement that Plaintiff’s proposals would “encompass a tin can
connected to a string” (Dkt. No. 102 at 24), Defendants’ concern is unwarranted because other
claim language appropriately limits the scope of the claims. Further, to whatever extent
Defendants’ concern relates to validity, such arguments are of limited relevance during claim
construction proceedings. See Phillips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a
regime in which validity analysis is a regular component of claim construction.”).
For all of these reasons, the Court hereby construes the disputed terms as set forth in the
following chart:

- 37 -

Term

Construction

“communication[s] device”

“a device that sends or receives
information”

“device that transmits”

“a device that sends information”

“logic configured to transmit”

“logic configured to send information”

D. “training signal” and “trailing signal”
“training signal”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a transmission that signifies the beginning of
a communication session”

“a distinct transmission that establishes
properties of a subsequent data transmission
and that can have a different intended
destination from the subsequent data
transmission”

“trailing signal”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a transmission that signifies the end of a
communication session”

“a distinct transmission that follows a data
transmission and that can have a different
intended destination from the data
transmission”

Dkt. No. 97 at 24; Dkt. No. 102 at 20. The parties submit that the first of these disputed terms
appears in dependent Claims 29, 31, and 36 of the ‘228 Patent. Dkt. No. 81, Ex. A at 20. The
parties submit that the second of these disputed terms appears in dependent Claim 51 of the ‘228
Patent. Id. at 21.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary constructions for these disputed terms: “training signal” means “a
- 38 -

transmission that signifies the beginning of a transmission sequence and determines one or more
properties of the transmission sequence”; and “trailing signal” means “a transmission that
signifies the end of a transmission sequence.” Plaintiff had no opposition to these preliminary
constructions. Defendants were opposed.
(1) The Parties’ Positions
Plaintiff argues that Defendants’ proposals “improperly limit the claims to part of a
preferred embodiment, in which some training and trailing signals ‘can have a different intended
destination from the subsequent data transmission.’” Dkt. No. 97 at 25. Plaintiff explains that
“[w]hile in a preferred embodiment some of the training and trailing signals have a different
intended destination than the data transmission, others do not.” Id. at 26 (discussing ‘580 Patent
at Figure 8). Plaintiff also argues that Defendants’ proposal of “distinct” is vague and “has zero
support in the record.” Dkt. No. 97 at 25 & 27. Plaintiff submits that “[t]he specification
focuses on the order and function of the components—not their ‘distinctness.’” Id. at 27.
As to “training signal,” Defendants respond that the “capab[ility] of having a different
intended destination from the subsequent data transmission” is “central to the alleged invention.”
Dkt. No. 102 at 20. Defendants explain:
[T]he purpose of the purported invention is to enable two (or more) tribs to use
different modulation methods on the same circuit. The alleged invention
accomplishes this via a training signal. When the master intends to send data to a
type B trib, it first sends a training signal to the type A trib. []’580 patent[]
at 6:3-6. The training signal notifies the type A trib that the master will switch to
type B modulation. Id. In response to the training signal, the type A trib
temporarily stops listening to signals on the line. Id. at 6:41-46. The master then
transmits data to the type B trib using type B modulation. Id. at 6:8-12.
Since the type A trib is not listening during the type B transmission, the type A
trib — which does not understand type B modulation — does not attempt to
decode the type B transmission. This avoids errors and delays caused by tribs
trying to decode signals they do not understand. Moreover, the type B trib never

- 39 -

receives the training signal, because it is only sent using type A modulation,
which the type B trib does not understand. See id. at 5:67-6:2.
Dkt. No. 102 at 21. As to their proposal of a “distinct” transmission, Defendants argue that the
specification “uniformly depicts the training signal as a discrete communication.” Id. at 22
(citing ‘580 Patent at Fig. 5).
As to “trailing signal,” Defendants respond that “the specification teaches that, just as the
training signal notifies a type A trib of an impending change to type B modulation, the trailing
signal notifies the type A trib that the type B data transmission is over. The trailing signal must
be capable of having a different intended destination from the corresponding data transmission
for the same reasons as the training signal.” Dkt. No. 102 at 22 (citing ‘580 Patent at 6:16-19).
Finally, Defendants emphasize that their proposals “state that the training and trailing signals
‘can have’ different intended destinations from the intervening data transmissions, not that they
must.” Id. at 23.
Plaintiff replies that although one of the disclosed embodiments is consistent with
Defendants’ proposed constructions, Figure 8 illustrates a “communication session 170” in
which “the training signal, communication signal, and trailing signal all have the same intended
destination—the Type A transceiver.” Dkt. No. 103 at 9. Finally, Plaintiff argues that “the
specification focuses on the order and function of the transmitted components, not whether they
are ‘distinct.’” Id.
At the May 30, 2014 hearing, Defendants reiterated that the destinations need not
necessarily be different. Nonetheless, Defendants explained, that capability is a limitation
because the central purpose of a training signal is to instruct a trib to ignore a subsequent
transmission. Defendants also submitted that they would be amenable to substituting the word
“discrete” for the word “distinct” in Defendants’ proposed constructions.
- 40 -

Plaintiff responded that a “training signal” can also be useful for enabling a master to
change modulation methods when communicating with a bilingual trib, perhaps to overcome
interference by using a more robust modulation method.
(2) Analysis
The disputed terms appear in Claims 29, 31, 36, and 51 of the ‘228 Patent, which recite
(emphasis added):
29. The master communication device as in claim 26, wherein the first
transmission sequence includes a training signal.
***
31. The master communication device as in claim 29, wherein the training signal
establishes signal level compensation.
***
36. The master communication device as in claim 29, wherein the training signal
includes parameters for the selection of optional features.
***
51. The master communication device as in claim 26, wherein the master
communication device is configured to transmit a trailing signal to complete the
master communication transmission.
Nothing in these dependent claims requires that the recited “training signal” or “trailing
signal” must be capable of having a different intended destination than the data transmission.
Claims 31 and 36 depend from Claim 29, which in turn depends from independent Claim 26.
Claim 26 recites the antecedent basis for “the first transmission sequence” recited in Claim 29
(emphasis added; formatting modified):
26. A master communication device configured to communicate according to a
master/slave relationship in which a slave communication from a slave device to
the master communication device occurs in response to a master communication
from the master communication device to the slave device, the master
communication device comprising:
- 41 -

a transceiver configured to transmit signals over a communications
medium to a slave device using at least two different types of modulation methods
and to receive one or more responses over the communication medium that
comprise at least respective response data that is modulated according to one of
the at least two different types of modulation methods, the at least two different
types of modulation methods comprising a first modulation method and a second
modulation method,
wherein the transmitted signals comprise first transmitted signals and
second transmitted signals,
the first transmitted signals comprise at least two transmission sequences,
the at least two transmission sequences include a first transmission
sequence and a second transmission sequence,
the transceiver is configured to transmit the first transmission sequence
using the first modulation method, and
the transceiver is configured to transmit the second transmission sequence
using the second modulation method wherein:
the first transmission sequence includes information that is indicative of
an impending change in modulation method from the first modulation method to
the second modulation method,
the second transmission sequence includes a payload portion that is
transmitted after the first transmission sequence,
the first transmitted signals include first address information that is
indicative of the slave device being an intended destination of the payload
portion,
the second transmitted signals comprise at least a third transmission
sequence and a fourth transmission sequence,
the transceiver is configured to transmit the third transmission sequence
using the first modulation method,
the transceiver is configured to transmit the fourth transmission sequence
using the first modulation method,
the third transmission sequence includes information indicative that the
fourth transmission sequence will be transmitted using the first modulation
method,
the fourth transmission sequence includes a second payload portion that is
transmitted after the third transmission sequence, and
the second transmitted signals include second address information that is
indicative of a specified slave device being an intended destination of the second
payload portion.
Claim 26 thus recites “first transmitted signals” that include a “first transmission
sequence” using a first modulation method and a “second transmission sequence” using a second
modulation method. The “first transmission sequence” indicates a change from the first
modulation method to the second modulation method, and “the second transmission sequence
- 42 -

includes a payload portion that is transmitted after the first transmission sequence.” The “first
transmitted signals” also “include first address information that is indicative of the slave device
being an intended destination of the payload portion.” Claim 26 further recites “second
transmitted signals” with limitations comparable to those of the “first transmitted signals,”
except that both transmission sequences are transmitted using the first modulation method.
Nowhere does Claim 26 recite that the first transmission sequence must be able to have
an intended destination different from that of the subsequent payload. Claim 26 thus contains no
support for imposing any such limitation on the “training signal” that is recited in dependent
Claims 29, 31, and 36. Similarly, nothing in the claims suggests any such limitation as to the
“trailing signal” recited in Claim 51.
Defendants have submitted that, in some cases, disclosure of a critical feature for
achieving a central objective can warrant limiting the claims accordingly. See Alloc, 342 F.3d at
1369-70 (noting that the “specification . . . criticizes prior art floor systems without play” and
finding that the “specification read as a whole leads to the inescapable conclusion that the
claimed invention must include play in every embodiment”); see also Honeywell Int’l, Inc. v. ITT
Indus., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (“The written description’s detailed discussion of
the prior art problem addressed by the patented invention, viz., leakage of non-metal fuel filters
in EFI [(electronic fuel injection)] systems, further supports the conclusion that the fuel filter is
not a preferred embodiment, but an only embodiment.”).
This is not such a case. The specification uses the terms “training signal,” “training
sequence,” “trailing signal,” and “trailing sequence” several times but does not mandate that
such signals or sequences be capable of having a different intended destination than a data
transmission. For example, the specification discloses:

- 43 -

[B]efore any communication can begin in [prior art] multipoint system 22, the
master transceiver and the tribs 26-26 must agree on a common modulation
method. If a common modulation method is found, the master transceiver 24 and
a single trib 26 will then exchange sequences of signals that are particular subsets
of all signals that can be communicated via the agreed upon common modulation
method. These sequences are commonly referred to as training signals and can
be used for the following purposes: 1) to confirm that the common modulation
method is available, 2) to establish received signal level compensation, 3) to
establish time recovery and/or carrier recovery, 4) to permit channel equalization
and/or echo cancellation, 5) to exchange parameters for optimizing performance
and/or to select optional features, and 6) to confirm agreement with regard to the
foregoing purposes prior to entering into data communication mode between the
users. In a multipoint system, the address of the trib with which the master is
establishing communication is also transmitted during the training interval. At the
end of a data session a communicating pair of modems will typically exchange a
sequence of signals known as trailing signals for the purpose of reliably stopping
the session and confirming that the session has been stopped. In a multipoint
system, failure to detect the end of a session will delay or disrupt a subsequent
session.
Referring now to FIG. 2, an exemplary multipoint communication session is
illustrated through use of a ladder diagram. This system uses polled multipoint
communication protocol. That is, a master controls the initiation of its own
transmission to the tribs and permits transmission from a trib only when that trib
has been selected. At the beginning of the session, the master transceiver 24
establishes a common modulation as indicated by sequence 32 that is used by
both the master 24 and the tribs 26a, 26b for communication. Once the
modulation scheme is established among the modems in the multipoint system,
[t]he master transceiver 24 transmits a training sequence 34 that includes the
address of the trib that the master seeks to communicate with. In this case, the
training sequence 34 includes the address of trib 26a. As a result, trib 26b ignores
training sequence 34. After completion of the training sequence 34, master
transceiver 24 transmits data 36 to trib 26a followed by trailing sequence 38,
which signifies the end of the communication session. Similarly, with reference to
FIG. 8, the sequence 170 illustrates a Type A modulation training signal,
followed by a Type A modulation data signal. Note that trib 26b ignores data 36
and trailing sequence 38 as it was not requested for communication during
training sequence 34.
At the end of trailing sequence 38, trib 26a transmits training sequence 42 to
initiate a communication session with master transceiver 24. Because master
transceiver 24 selected trib 26a for communication as part of training sequence
34, trib 26a is the only modem that will return a transmission. Thus, trib 26a
transmits data 44 destined for master transceiver 24 followed by trailing sequence
46 to terminate the communication session.

- 44 -

The foregoing procedure is repeated except master transceiver identifies trib 26b
in training sequence 48. In this case, trib 26a ignores the training sequence 48
and the subsequent transmission of data 52 and trailing sequence 54 because it
does not recognize its address in training sequence 48. Master transceiver 24
transmits data 52 to trib 26b followed by trailing sequence 54 to terminate the
communication session. Similarly, with reference to FIG. 8, sequence 172
illustrates a Type A modulation signal, with notification of a change[] to
Type[] B, followed by a Type[] B modulation data signal. To send information
back to master transceiver 24, trib 26b transmits training sequence 56 to establish
a communication session. Master transceiver 24 is conditioned to expect data
only from trib 26b because trib 26b was selected as part of training sequence 48.
Trib 26b transmits data 58 to master transceiver 24 terminated by trailing
sequence 62.
‘228 Patent at 4:3-5:7 (emphasis added).
Referring now to FIG. 4, a multipoint communication system 100 is shown
comprising a master transceiver 64 along with a plurality of tribs 66-66. In this
example, two tribs 66a-66a run a type A modulation method while one trib 66b
runs a type B modulation method. The present invention permits a secondary or
embedded modulation method (e.g., type B) to replace the standard modulation
method (e.g., type A) after an initial training sequence. This allows the master
transceiver 64 to communicate seamlessly with tribs of varying types.
***
To switch from type A modulation to type B modulation, master transceiver 64
transmits a training sequence 106 to type A tribs 66a in which these tribs are
notified of an impending change to type B modulation. The switch to type B
modulation could be limited according to a specific time interval or for the
communication of a particular quantity of data. After notifying the type A tribs
66a of the change to type B modulation, master transceiver 64, using type B
modulation, transmits data along with an address in sequence 108, which is
destined for a particular type B trib 66b. In an example, embedded modulation
permits a secondary modulation to replace the usual primary modulation for a
user data segment located after a primary training sequence. For example, master
transceiver 64 may change to modulation Type B and may convey user
information to type B trib 66b.
Id. at 6:4-13 & 6:27-44 (emphasis added).
To initiate a communication session with a type A trib 66a, master transceiver 64
transmits a training sequence 126 in which an address of a particular type A trib
66a is identified. The identified type A trib 66a recognizes its own address and
transitions to state 128 to receive data from master transceiver 64 as part of
sequence 132.
- 45 -

After completing transmission sequence 132, which may include a user data
segment transmitted using the usual primary (e.g., type A) modulation, master
transceiver 64 transmits a trailing sequence 134 using type A modulation
signifying the end of the current communication session.
Id. at 7:11-21 (emphasis added). Contrary to Defendants’ arguments, the specification does not
establish that the sole purpose of a training signal, for example, must be to notify a trib that the
trib will not understand the subsequent data transmission because that data is intended for a
different trib. See Dkt. No. 102 at 21-22.
As to extrinsic evidence, Plaintiff has cited a dictionary definition of “header” as:
“Identification or control information placed at the beginning of a file or message. Contrast:
trailer.” Dkt. No. 97, Ex. 3, The IEEE Standard Dictionary of Electrical and Electronics Terms
479 (1996). Plaintiff has also cited definitions of “trailer” as: “Identification or control
information placed at the end of a file or message. Contrast: header”; and “The contiguous
control bits following a transmission that contain information used for such purposes as bit error
detection and end-of-transmission indication. Contrast: header.” Id. at 1126.
The claims, specification, and extrinsic evidence are therefore all consistent with
Plaintiff’s proposal that a “training signal” marks the beginning of a communication session and
a “trailing signal” marks the end of a communication session.
As to Defendants’ proposals, Defendants have not argued that “training signal” and
“trailing signal” are coined terms that the patentee defined in relation to what Defendants have
argued is the sole purpose of the invention. To the extent that the specification discloses training
and trailing signals that have destinations different from those of associated data transmissions,
that capability is a feature of preferred embodiments and should not be imported into the claims.
See Comark, 156 F.3d at 1187 (“[The specification] simply details how the video delay circuit is

- 46 -

to be used in a single embodimen of the inve
e
nt
ention.”). T Court the
The
erefore rejec Defendan
cts
nts’
argument that the “tr
t
raining signa and “trail
al”
ling signal” m be capa of havin a differen
must
able
ng
nt
intended destination than an asso
ociated data transmission
t
n.
Similarly, as noted above Defendants have relied upon items 106, 126, a 138 in
e,
d
s
and
Figure 5 to support th argumen that the “t
heir
nt
training sign and “trai
nal”
iling signal” must be
”
“distinct” or “discrete” transmiss
”
sions. Figure 5 is reprod
e
duced here:

- 47 -

Defendants have failed to demonstrate that this illustration of a preferred embodiment is limiting.
See MBO Labs., 474 F.3d at 1333 (“patent coverage is not necessarily limited to inventions that
look like the ones in the figures”). Defendants’ proposals in this regard are therefore rejected.
As to the proper constructions, Plaintiff’s use of the word “signifies” is supported by the
specification, particularly as to the term “trailing signal.” See ‘228 Patent at 4:43-45 (“master
transceiver 24 transmits data 36 to trib 26a followed by trailing sequence 38, which signifies the
end of the communication session”) & 7:19-21 (“master transceiver 64 transmits a trailing
sequence 134 using type A modulation signifying the end of the current communication
session”). The above-quoted disclosures demonstrate that a “training signal” should be
construed in a similar manner.
Finally, at the May 30, 2014 hearing, Plaintiff had no objection to Defendants’ proposal
that a “training signal” must “establish[] properties of a subsequent data transmission.”
The Court accordingly hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“training signal”

“a transmission that signifies the beginning
of a transmission sequence and determines
one or more properties of the transmission
sequence”

“trailing signal”

“a transmission that signifies the end of a
transmission sequence”

- 48 -

E. “signal level compensation”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“adjusting signal parameters in the receiver”6

“adjusting the amplitude characteristics of a
receiver”

Dkt. No. 97 at 27; Dkt. No. 102 at 26. The parties submit that this term appears in Claim 31 of
the ‘228 Patent. Dkt. No. 81, Ex. A at 19.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary construction for this disputed term: “adjusting signal parameters in the
receiver.” Plaintiff had no opposition to the Court’s preliminary construction. Defendants were
opposed.
(1) The Parties’ Positions
Plaintiff argues that “just as there are many different ‘signal levels’—Defendants’
dictionary acknowledges ‘voltage, current, power, phase shift, or frequency,’ to name a few—
there are many different ways to compensate those signal levels. For example, the frequency or
phase shift of a signal may be compensated independent of the signal’s amplitude.” Dkt. No. 97
at 28.
Defendants respond that “[t]echnical dictionaries [(quoted below)] define ‘signal level’ as
the strength or power of a signal.” Dkt. No. 102 at 26. Defendants argue that Plaintiff’s
proposed construction “fails to give meaning to the word ‘level.’” Id. at 27. Defendants explain
that “frequency represents the number of signal cycles in a given time period, and phase reflects
the signal’s position on the x-axis (time). These are not measures of the signal’s ‘level,’ i.e., its

6

Plaintiff previously proposed: “adjusting signal parameters in the receiver to minimize
receiving errors.” Dkt. No. 81, Ex. A at 19.
- 49 -

strength or power.” Id. Defendants argue that their multiple, unambiguous dictionary definitions
outweigh Plaintiff’s “lone and secondary definition.” Id. at 28.
Plaintiff replies that the extrinsic dictionary definitions cited by the parties do not limit
“signal level” to “amplitude.” Dkt. No. 103 at 10.
At the May 30, 2014 hearing, Defendants acknowledged that frequency and phase are
characteristics that may be said to have a “level,” but Defendants maintained that a person of
ordinary skill in the art at the relevant time would have understood “signal level” as referring to
amplitude. Plaintiff responded that none of the evidence cited by Defendants refers to
“amplitude.” Defendants replied that they would have no objection to a construction that
referred to “strength” instead of “amplitude.” Defendants nonetheless reiterated that in no event
should the disputed term encompass frequency or phase.
(2) Analysis
Claim 31 of the ‘228 Patent recites:
31. The master communication device as in claim 29, wherein the training signal
establishes signal level compensation.
Claim 31 depends from Claim 29 and, in turn, Claim 26, but nothing in these claims informs the
meaning of “signal level compensation.” Likewise, the specification identifies “signal level
compensation” as one of the uses of training signals (see ‘580 Patent at 3:53-56), but the
specification does not otherwise discuss the term.
Plaintiff submits a technical dictionary definition of “compensation” as: “The controlling
elements which compensate for, or offset, the undesirable characteristics of the process to be
controlled in the system.” Id., Ex. 4, Modern Dictionary of Electronics 184 (6th ed. 1997). This
aspect of the disputed term does not appear to be in dispute. Instead, the parties disagree on the
scope of the term “signal level.”
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Plaintiff has cited a technical dictionary definition of “signal level” as: “The magnitude
of a signal parameter or element, such as the magnitude of the electric field strength, voltage,
current, power, phase shift, or frequency.” Dkt. No. 97, Ex. 27, Communications Standard
Dictionary 906 (3d ed. 1996). As Defendants have noted, however, that same dictionary
alternatively defines “signal level” as: “A measure of the power of a signal at a specified point in
a communications system.” Id.
Defendants have also submitted additional dictionaries that define “signal level” in terms
of power. Dkt. No. 102, Ex. 14, Dictionary of Communications Technology 401 (2d ed. 1995)
(“The strength of a signal, generally expressed in either units of voltage or power.”); id., Ex. 15,
Newton’s Telecom Dictionary 544 (11th ed. 1996) (“The strength of a signal, generally
expressed in either absolute units of voltage or power, or in units relative to the strength of the
signal at its source.”); id., Ex. 16, Dictionary of Telecommunications 250 (1981) (“The
magnitude of a signal at a point in a telecommunication circuit. This can be expressed as an
absolute power level in decibels relative to one milliwatt (dBm).”) (italics omitted).
In reply, Plaintiff has cited extrinsic articles that refer to signal “frequency level” and
signal “phase level.” Dkt. No. 103, Ex. 38, Hamid Nawab, et al., Diagnosis Using the Formal
Theory of a Signal-Processing System 373 (1987); id., Ex. 39, Marco Antonio Chamon & Gerard
Salut, Particle Filtering of Radar Signals for Non-Cooperating Target Imaging 1041 (1998); see
id., Ex. 40, U.S. Pat. No. 3,953,798 at 3:56-63. Plaintiff argues these articles establish that
frequency and phase can each have a “level.”
These competing definitions and usages demonstrate why extrinsic sources must be
considered with caution. See Phillips, 415 F.3d at 1321 (“[H]eavy reliance on the dictionary
divorced from the intrinsic evidence risks transforming the meaning of the claim term to the

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artisan into the meaning of the term in the abstract, out of its particular context, which is the
specification. * * * [T]here may be a disconnect between the patentee’s responsibility to describe
and claim his invention, and the dictionary editors’ objective of aggregating all possible
definitions for particular words.”); see also id. at 1322 (“There is no guarantee that a term is used
in the same way in a treatise as it would be by the patentee. In fact, discrepancies between the
patent and treatises are apt to be common because the patent by its nature describes something
novel.”).
On balance, because the specification refers to “phase . . . modulation” as well as
“amplitude modulation” (see id. at 2:5-6), the Court rejects Defendants’ reliance on extrinsic
evidence and accordingly rejects Defendants’ proposal to limit the disputed term to amplitude.
See Phillips, 415 F.3d at 1321.
The Court therefore hereby construes “signal level compensation” to mean “adjusting
signal parameters in the receiver.”
F. “a first portion of the first communication indicating that the second modulation
method will be used for modulating the payload data in the payload portion of the first
communication”
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

No construction necessary; plain and ordinary
meaning applies.

“a first portion of the first communication
indicating that the second modulation method
will be used instead of the first modulation
method for modulating the payload data in the
payload portion of the first communication”

Dkt. No. 97 at 29; Dkt. No. 102 at 28. The parties submit that this term appears in Claim 22 of
the ‘228 Patent. Dkt. No. 81, Ex. A at 21.
Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
the following preliminary construction for this disputed term: “Plain meaning.”

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(1) The Parties’ Positions
Plaintiff argues that “[t]he plain and ordinary meaning of the instant term is apparent on
its face and from the context of the surrounding claim language.” Dkt. No. 97 at 29. Plaintiff
further argues that Defendants’ proposed construction “inject[s] an ‘instead of the first
modulation method’ limitation” that “is unnecessary, because it does not help to clarify or
explain the meaning of the instant term.” Id. at 30.
Defendants respond that “[t]he specification discloses a training signal that indicates a
change to a different modulation method.” Dkt. No. 102 at 28. Defendants argue: “Claim 22
therefore must be construed to require an indication of an impending change to a second
modulation method (i.e., that “the second modulation method will be used instead of the first
modulation method”), not simply that a second modulation method will be used.” Id. at 29.
Defendants conclude that “[p]ermitting the claim to encompass a mere indication of the
forthcoming modulation method, rather than a change to that method, would result in a failure of
both the written description and enablement requirements under [35 U.S.C.] Section 112(a).” Id.
at 30.
Plaintiff replies that “Defendants’ construction adds unnecessary verbiage to an
unambiguous claim.” Dkt. No. 103 at 10.
At the May 30, 2014 hearing, Plaintiff acknowledged that the disputed term and the
surrounding claim language require a change from one modulation method to another
modulation method. Plaintiff maintained that because this is clear on the face of the claim, no
construction is necessary. Plaintiff concluded that Defendants’ proposed construction should be
rejected as tending to introduce a new limitation or as otherwise confusing the meaning of the

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claim. Defendants responded that clarification is warranted because the entire purpose of the
purported invention is to notify and then to change modulation methods.
(2) Analysis
The Summary of the Invention refers to a “change in modulation”:
The present invention disclosed herein includes methods and systems for
communication of data according to a communications method in which a master
transceiver communicates with one or more slave transceivers according to a
master/slave relationship.
***
The second message may comprise third information (e.g., first information of the
second message/high data rate message), and the third information may be
modulated according to the first modulation method. The third information may
be indicative of an impending change in modulation to a second modulation
method for transmission of fourth information (e.g., second information of the
second message/high data rate message).
‘228 Patent at 2:27-31 & 2:51-56 (emphasis added). The specification similarly discloses:
To switch from type A modulation to type B modulation, master transceiver 64
transmits a training sequence 106 to type A tribs 66a in which these tribs are
notified of an impending change to type B modulation. The switch to type B
modulation could be limited according to a specific time interval or for the
communication of a particular quantity of data. After notifying the type A tribs
66a of the change to type B modulation, master transceiver 64, using type B
modulation, transmits data along with an address in sequence 108, which is
destined for a particular type B trib 66b. In an example, embedded modulation
permits a secondary modulation to replace the usual primary modulation for a
user data segment located after a primary training sequence. For example, master
transceiver 64 may change to modulation Type B and may convey user
information to type B trib 66b. The type B trib 66b targeted by the master
transceiver 64 will transition to state 112 as shown in FIG. 6 upon detecting its
own address where it processes the data transmitted in sequence 108.
Id. at 6:27-44 (emphasis added); see id. at Figs. 5, 7 & 8 (illustrating “Change to Type B”).
Claim 22 of the ‘228 Patent, which is the only claim that contains the disputed term,
recites (emphasis added):

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22. A communication device configured to communicate according to a
master/slave relationship in which a slave communication from a slave to a master
occurs in response to a master communication from the master to the slave, the
device comprising:
a transceiver in the role of the master according to the master/slave
relationship that is configured to send at least a plurality of communications,
wherein each communication from among said plurality of communications
comprises at least a respective first portion and a respective payload portion,
wherein each communication from among said plurality of communications is
addressed for an intended destination of the respective payload portion of that
communication, and wherein for each communication from among said plurality
of communications:
said respective first portion is modulated according to a first
modulation method from among at least two types of modulation
methods, wherein the at least two types of modulation methods
comprise the first modulation method and a second modulation
method, wherein the second modulation method is of a different
type than the first modulation method,
said respective first portion comprises an indication of which of the
first modulation method and the second modulation method is used
for modulating respective payload data in the respective payload
portion, and
the payload data is modulated according to at least one of the first
modulation method or the second modulation method in
accordance with what is indicated by the respective first portion;
the transceiver further configured to send at least a first communication of
the plurality of communications such that payload data included in a payload
portion of the first communication is modulated according to the second
modulation method based on a first portion of the first communication indicating
that the second modulation method will be used for modulating the payload data
in the payload portion of the first communication, wherein the payload data is
included in the first communication after the first portion of the first
communication;
the transceiver further configured to send at least a second communication
of the plurality of communications such that payload data included in a payload
portion of the second communication is modulated according to the first
modulation method based on a first portion of the second communication
indicating that the first modulation method will be used for modulating the
payload data in the payload portion of the second communication.
On balance, the recital that the “first portion is modulated according to a first modulation
method”—coupled with the recital in the disputed term that “the second modulation method will

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be used for modulating the payload data in the payload portion of the first communication”—is
clear on its face.
Further, as noted above, Plaintiff has agreed that the disputed term and the surrounding
claim language require a change from one modulation method to another modulation method.
Defendants’ proposed clarification is therefore unnecessary and would tend to confuse
rather than clarify the scope of the claim. See U.S. Surgical, 103 F.3d at 1568 (“Claim
construction is a matter of resolution of disputed meanings and technical scope, to clarify and
when necessary to explain what the patentee covered by the claims, for use in the determination
of infringement. It is not an obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d
at 1362 (“[D]istrict courts are not (and should not be) required to construe every limitation
present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197,
1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the parties’ quarrel,
the district court rejected Defendants’ construction.”).
The Court accordingly hereby expressly rejects Defendants’ proposed construction and
hereby construes “a first portion of the first communication indicating that the second
modulation method will be used for modulating the payload data in the payload portion of
the first communication” to have its plain meaning.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit.
The parties are ordered that they may not refer, directly or indirectly, to each other’s
claim construction positions in the presence of the jury. Likewise, the parties are ordered to
refrain from mentioning any portion of this opinion, other than the actual definitions adopted by

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the Court, in the presence of the jury. Any reference to claim construction proceedings is limited
to informing the jury of the definitions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 10th day of July, 2014.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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