Elbit Systems Land and C4I Ltd. et al v. Hughes Network Systems, LLC et al

Filing 208

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 10/17/2016. (ch, )

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ELBIT SYSTEMS LAND AND C4I LTD.
and ELBIT SYSTEMS OF AMERICA,
LLC,
v.
HUGHES NETWORK SYSTEMS, LLC,
BLACK ELK ENERGY OFFSHORE
OPERATIONS, LLC, BLUETIDE
COMMUNICATIONS, and COUNTRY
HOME INVESTMENTS, INC.

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CASE NO. 2:15-CV-37-RWS-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On September 28, 2016, the Court held a hearing to determine the proper construction of
disputed claim terms in United States Patents No. 6,240,073 and 7,245,874. Having reviewed
the arguments made by the parties at the hearing and in their claim construction briefing (Dkt.
Nos. 181, 187 & 190),1 having considered the intrinsic evidence, and having made subsidiary
factual findings about the extrinsic evidence, the Court hereby issues this Claim Construction
Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005);
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

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.
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Table of Contents
I. BACKGROUND ....................................................................................................................... 3 
II. LEGAL PRINCIPLES ........................................................................................................... 3 
III. THE PARTIES’ STIPULATED TERMS ........................................................................... 6 
IV. CONSTRUCTION OF DISPUTED TERMS IN U.S. PATENT NO. 6,240,073.............. 7 
A. Preambles: “A [multiple] access communications system for use in a satellite
communication network” ...................................................................................................... 7 
B. “first communication means for transmitting short bursty data” / “second
communication means for continuous transmission of data” ............................................... 9 
C. “receiver means within said at least one hub adapted to receive data transmitted by said
plurality of terminals utilizing either said first communication means or said second
communication means”....................................................................................................... 16 
D. “transmitter means within each user terminal for receiving data to be transmitted from
said user terminal to said hub” ............................................................................................ 17 
E. “switching means” / “means for switching”........................................................................ 20 
F. “continuation flag” .............................................................................................................. 32 
G. “means for generating a request to be sent over said return link in order to utilize said
second communication means” .......................................................................................... 33 
V. CONSTRUCTION OF DISPUTED TERMS IN U.S. PATENT NO. 7,245,874 ............. 35 
A. “[wherein said synchronous protocol allows] non-data carrying time slots” ..................... 35 
B. “[a central] high-capacity data trunking region” ................................................................. 38 
C. “converters for converting data of a datastream between said first data communication
protocol and said second data communication protocol” / “E1-TCP/IP converters for
converting data between said E1 protocol and said TCP/IP protocol” ............................... 40 
D. “non-data carrying time slot remover for removing said non-data carrying time slots
during conversion into said asynchronous protocol” / “time slot regenerator for
regenerating non-data carrying time slots during reconstruction of said datastream” ....... 45 
E. “an extractor for extracting said SS7 signaling” / “a TCP/IP packet former for
arranging said extracted signaling into TCP/IP packets” ................................................... 47 
F. “a multiplexer for converting between the E1 signal and the TCP/IP signal” .................... 50 
G. “decoders operable to decode synchronization control information from data arriving
from said link, to reconstruct a synchronized telephony protocol data stream” ................. 51 
VI. CONCLUSION .................................................................................................................... 53 
APPENDIX A .............................................................................................................................. 54 

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I. BACKGROUND
Plaintiffs have alleged infringement of United States Patents No. 6,240,073 (“the ’073
Patent”) and 7,245,874 (“the ’874 Patent”) (collectively, the “patents-in-suit”). Plaintiffs submit
that the ’073 Patent relates to two-way satellite communications and the ’874 Patent relates to
providing backup connections for cellular telephone networks via satellite. See Dkt. No. 181
at 1-4. Plaintiffs have asserted Claims 2-7 and 28 of the ’074 Patent and Claims 1-5, 7-9,
and 11-12 of the ’874 Patent. Id. at 4.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with preliminary constructions with the aim of focusing the parties’ arguments and facilitating
discussion. Those preliminary constructions are set forth below within the discussion for each
term.
II. 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)). Claim construction is clearly an issue of law for the
court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995)
(en banc), aff’d, 517 U.S. 370 (1996). “In some cases, however, the district court will need to
look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to
understand, for example, the background science or the meaning of a term in the relevant art
during the relevant time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
(2015) (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need
to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary

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underpinnings’ of claim construction that we discussed in Markman, and this subsidiary
factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).
To determine the meaning of the claims, courts start by considering the intrinsic
evidence. See Phillips, 415 F.3d 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 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, 52 F.3d at 979 (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.

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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 the 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 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

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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
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.
III. THE PARTIES’ STIPULATED TERMS
The parties reached agreement on constructions as stated in their July 6, 2016 Joint Claim
Construction and Prehearing Statement (Dkt. No. 161) and their September 14, 2016 Joint Claim
Construction Chart (Dkt. No. 196). Those agreements are set forth in Appendix A to the present
Claim Construction Memorandum and Order.

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IV. CONSTRUCTION OF DISPUTED TERMS IN U.S. PATENT NO. 6,240,073
A. Preambles: “A [multiple] access communications system for use in a satellite
communication network”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Preamble is limiting, and should be understood
per its plain and ordinary meaning.

Plain and ordinary meaning

Dkt. No. 161, Ex. A at 1. The parties submit that these terms appear in Claims 2-7 and 28 of the
’073 Patent. Dkt. No. 161, Ex. A at 1.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “The preambles are limiting.”
(1) The Parties’ Positions
Plaintiffs argue that “[b]ecause the preambles serve as the antecedent for the structural
limitations of the claim and give ‘life, meaning, and vitality’ into the claims, the Court should
construe the preambles as limiting.” Dkt. No. 181 at 4.
Defendants respond that “only a portion of the preamble serves as an antecedent basis for
a later referenced term,” and “[i]ntentional omission of ‘satellite communication system’ in the
claim body reflects the drafter’s intent of a non-limiting statement of purpose.” Dkt. No. 187
at 2-3.
Plaintiffs reply that “[t]he phrase which Defendants omit (‘for use in a satellite
communication network’) is necessary because the claims recite components (‘a plurality of user
terminals’ and ‘at least one hub’) that constitute the well-known components of a satellite
communications return link.” Dkt. No. 190 at 1.
At the September 28, 2016 hearing, the parties presented no oral argument as to these
disputed preamble terms.

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(2) Analysis
Claim 2 of the ’073 Patent is representative and recites:
2. A multiple access communications system for use in a satellite communication
network, comprising:
a plurality of user terminals for generating data to be transmitted over said
multiple access communication system;
at least one hub for receiving data over said multiple access
communication system from said plurality of user terminals;
transmitter means within each user terminal for receiving data to be
transmitted from said user terminal to said hub, said transmitter means including
first communication means for transmitting short bursty data in combination with
second communication means for continuous transmission of data;
switching means coupled to said transmitter means for switching
transmission between said first communication means and said second
communication means in accordance with predefined criteria, and
receiver means within said at least one hub adapted to receive data
transmitted by said plurality of terminals utilizing either said first communication
means or said second communication means;
wherein said switching means comprises means for switching from said
first communication means to said second communication means when the length
of a message received by said transmitter means exceeds a predetermined
threshold.
On one hand, even where a preamble provides antecedent basis for a limitation recited in
the body of the claim, an accompanying statement of purpose or use is not necessarily limiting.
See TomTom Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015) (“That [a] phrase in the
preamble . . . provides a necessary structure for [the] claim . . . does not necessarily convert the
entire preamble into a limitation, particularly one that only states the intended use of the
invention.”); see also Marrin v. Griffin, 599 F.3d 1290, 1294-95 (Fed. Cir. 2010) (“the mere fact
that a structural term in the preamble is part of the claim does not mean that the preamble’s
statement of purpose or other description is also part of the claim”).
On the other hand, the phrase “for use in a satellite communication network” provides
additional detail regarding the “multiple access communications system.” See Bell Commc’ns
Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the
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claim drafter chooses to use both the preamble and the body to define the subject matter of the
claimed invention, the invention so defined, and not some other, is the one the patent protects.”);
see also Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014)
(“The phrase ‘the image data’ clearly derives antecedent basis from the ‘image data’ that is
defined in greater detail in the preamble as being ‘representative of at least one sequential set of
images of a spray plume.’”) (emphasis added).
On balance, the phrase “for use in a satellite communication network” is limiting because
it provides further detail regarding the “multiple access communications system” that has its
antecedent basis in the preamble. See id. This also comports with the specification consistently
presenting itself in the context of a satellite communication network, including in the Title,
Abstract, Field of the Invention, Background of the Invention, Summary of the Invention, and
Detailed Description of the Invention. See, e.g., ’073 Patent at 4:45-47 & 8:37-38.
The Court therefore hereby finds that the preambles are limiting.
B. “first communication means for transmitting short bursty data” / “second
communication means for continuous transmission of data”
“first communication means for transmitting short bursty data”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “transmitting short bursty data”

Function: “transmitting short bursty data”

Structure: “Random Access Transmitter 70 in
Fig. 5, and equivalents”

Structure: “Random Access Transmitter 70
performing a non synchronous frequency
hopping code division multiple access
technique”

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“second communication means for continuous transmission of data”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “continuous transmission of data”

Function: “continuous transmission of data”

Structure: “Channel Assignment Transmitter,
110 in Fig. 6, and equivalents”

Structure: “channel access transmitter 110
performing a channel assignment method
based on a frequency division multiple access”

Dkt. No. 161, Ex. A at 2. The parties submit that these terms appear in Claims 2-7 and 28 of the
’073 Patent. Dkt. No. 161, Ex. A at 2.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary constructions:
Term

Preliminary Construction

“first communication means for transmitting
short bursty data”

§ 112, ¶ 6 applies
Function:
transmitting short bursty data
Structure:
Random Access Transmitter 70 in Fig. 5,
and equivalents thereof”

“second communication means for continuous
transmission of data”

§ 112, ¶ 6 applies
Function:
continuous transmission of data
Structure:
Channel Assignment Transmitter 110 in
Fig. 6, and equivalents thereof

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(1) The Parties’ Positions
The parties agree that these disputed terms are means-plus-function terms governed by
35 U.S.C. § 112, ¶ 6, and the parties agree upon the claimed functions. The parties dispute the
corresponding structure.
Plaintiffs argue that the additional functional language proposed by Defendants is
inappropriate because those functions are not recited in the asserted claims. Dkt. No. 181 at 6.
Plaintiffs urge that “where the patentee intended to limit the claims to particular transmission
techniques, they explicitly did so.” Id. at 7.
As to the “first communication means,” Defendants respond that the corresponding
structure should not encompass all possible types of transmitters but rather should be limited to
the specific transmitter actually disclosed and tied to the claimed function. Dkt. No. 187 at 4.
Defendants also submit that the specification disparages other techniques. See id. at 4-6.
Likewise, as to the “second communication means,” Defendants respond that the
corresponding structure should be limited to “the specific type of CA [(channel assignment)]
transmitter that is clearly linked to the claimed function.” Dkt. No. 187 at 7. Defendants also
submit that the specification “disparage[s] TDMA [(time division multiple access)] as ill-suited
for the type of traffic handled by modern communications systems.” Id. at 7-8 (citing ’073
Patent at 2:61-67). Defendants conclude that “[b]ecause the specification only discusses the CA
transmitter 110 as performing a frequency division multiple access technique for continuous
transmission of data and disparages the use of TDMA for such transmission, the structure for this
term should reflect that the CA transmitter is performing an FDMA technique.” Dkt. No. 187
at 8.

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Plaintiffs reply that “Defendants’ argument that their constructions reflect the
‘configuration’ of the structures is just a euphemism for importing functional limitations.” Dkt.
No. 190 at 2 (citation omitted).
At the September 28, 2016 hearing, Plaintiffs urged that the structures shown in Figure 5,
for example, are merely implementation details of a specific embodiment. Defendants responded
that the transmitter structure that is linked to the claimed function includes all of the components
in Figure 5, and Defendants explained that the specification contains no suggestion that any of
those components could be excluded.
(2) Analysis
As to the “first communication means . . .,” Defendants have cited disclosures in which
the specification refers to using non-synchronous frequency hopping code division multiple
access (“NS/FH/CDMA”). See, e.g., ’073 Patent at 10:8-16 & 10:22-26. The specification also
discloses:
The frequency hopping of the random access transmitter 70 is controlled via
control signals output by the pseudo random sequence generator 106 and input to
the local oscillator 95.
Id. at 16:13-16. Defendants argue that this disclosure of using a pseudo random sequence
generator demonstrates that the random access transmitter 70 is configured solely to perform
NS/FH/CDMA. Dkt. No. 187 at 5. No such limitation is apparent in the disclosures cited by
Defendants. Although the above-quoted disclosure refers to “frequency hopping,” it is unclear
whether this necessarily requires NS/FH/CDMA. Moreover, this particular protocol appears in
the specification to be merely a technique that can be used with the corresponding structure
rather than part of the corresponding structure itself.

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Also, independent Claim 9 expressly recites a “first transmitter means for transmitting
data utilizing a non synchronous frequency hopping code division multiple access
communication scheme.” Although Plaintiffs have not demonstrated that the doctrine of claim
differentiation is directly applicable as between the independent claims at issue, particularly
when applied to means-plus-function limitations, this distinct recital of Defendants’ proposed
limitation is noteworthy and weighs at least somewhat against Defendants’ proposal. Likewise,
the specification characterizes NS/FH/CDMA as merely one example. See ’073 Patent at 5:1821 (“[t]he first communication means can comprise nonsynchronous multiple access
communication means or non synchronous frequency hopping code division multiple access
communication means”).
Further, although Defendants argue that the specification disparages other techniques,
“[a] patentee’s discussion of the shortcomings of certain techniques is not a disavowal of the use
of those techniques in a manner consistent with the claimed invention.” Epistar Corp. v. Int’l.
Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009).
Finally, Plaintiffs have failed to identify any evidence suggesting that the “random access
transmitter 70” illustrated in Figure 5 can be dissected. See, e.g., ’073 Patent at 7:37-39. Indeed,
at the September 28, 2016 hearing, Plaintiffs’ argument amounted to a proposal that the
corresponding structure was simply the dashed line box indicated by numeral 70 (or perhaps also
the dashed line boxes indicated by numerals 72, 74, and 76) without necessarily including any of
the particular components contained therein. Plaintiffs’ argument is seemingly directly at odds
with the purpose of 35 U.S.C. § 112, ¶ 6 to permit functional claiming but to limit the claim
scope to the specific corresponding structure disclosed in the specification.

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At the September 28, 2016 hearing, Plaintiffs relied extensively upon Wenger Mfg., Inc.
v. Coating Machinery Sys., Inc., 239 F.3d 1225 (Fed. Cir. 2001). Plaintiffs emphasized that, in
Wenger, the district court found as to an “air circulation means” limitation having the function of
“circulating air” that “[t]he structure corresponding to the function of circulating air through the
apparatus requires the ability to recirculate air.” Id. at 1233. “By doing so,” the Federal Circuit
found on appeal, “the court improperly restricted the ‘air circulation means’ limitation to
structure that was disclosed in the preferred embodiment, but was not necessary to perform the
recited function of circulating air.” Id.
On balance, Wenger is distinguishable because Plaintiffs have not identified any
indication in the specification that particular components in Figure 5 can be omitted. Instead,
Plaintiffs essentially argued at the September 28, 2016 hearing that the corresponding structure
should not include any of the particular structures in Figure 5 as components of the “random
access transmitter 70.” This argument, and Plaintiffs’ reliance upon Wenger, are thus unavailing.
Based on all of the foregoing, the Court construes the corresponding structure to be the
random access transmitter as depicted in Figure 5 in its entirety, but the Court rejects
Defendants’ proposal to include a specific technique as part of the corresponding structure.
Substantially the same analysis applies to the “second communication means . . . .” See
’073 Patent at 5:21-23 (“The second communication means can comprise frequency division
multiple access communication means.”) & Cl. 9. The corresponding structure is thus the
channel assignment transmitter 110 as depicted in Figure 6 in its entirety.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:

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Construction

Term
“first communication means for
transmitting short bursty data”

35 U.S.C. § 112, ¶ 6 applies
Function:
“transmitting short bursty data”
Structure:
“Random Access Transmitter 70 in
Fig. 5, and equivalents thereof”2

“second communication means for
continuous transmission of data”

35 U.S.C. § 112, ¶ 6 applies
Function:
“continuous transmission of data”
Structure:
“Channel Assignment Transmitter 110
in Fig. 6, and equivalents thereof”

2

Defendants have argued that discussion of “equivalents” under 35 U.S.C. § 112, ¶ 6 should be
addressed in jury instructions rather than in the constructions of disputed terms. See Dkt.
No. 187 at 3 n.3. In accordance with this Court’s usual practice, the Court includes
“equivalents” in the construction as specified by the language of 35 U.S.C. § 112, ¶ 6 itself.
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C. “receiver means within said at least one hub adapted to receive data transmitted by said
plurality of terminals utilizing either said first communication means or said second
communication means”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “receive data transmitted by said
plurality of terminals utilizing either said first
communication means or said second
communication means”

Function: “receive data transmitted by said
plurality of terminals utilizing either said first
communication means or said second
communication means”

Structure: “hub receiver 240 depicted in
Fig. 10, and equivalents”

Structure: “hub receiver 240 including random
access (RA) receiver 248 performing a non
synchronous frequency hopping code division
multiple access technique and channel
assignment (CA) receiver 252 performing a
channel assignment method based on a
frequency division multiple access”

Dkt. No. 161, Ex. A at 3-4. The parties submit that this term appears in Claims 2-7 and 28 of the
’073 Patent. Dkt. No. 161, Ex. A at 3-4.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 applies. / Function: receive data
transmitted by said plurality of terminals utilizing either said first communication means or said
second communication means[] / Structure: hub receiver 240 depicted in Fig. 10, and
equivalents.”
The parties agree that this disputed term is a means-plus-function term governed by
35 U.S.C. § 112, ¶ 6, and the parties agree upon the claimed function. The parties have disputed
the corresponding structure.
Plaintiffs argue that the Court should reject Defendants’ attempt to “include additional
functional limitations not recited in the claims” and “selectively include certain components of

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hub receiver 240.” Dkt. No. 181 at 8. Defendants’ response brief does not address this term.
See Dkt. No. 187. Plaintiffs reply that “[b]ecause Defendants offer no argument disputing
Plaintiffs’ construction[] of ‘receiver means’ . . ., the Court should adopt those constructions.”
Dkt. No. 190 at 6.
At the September 28, 2016 hearing, Defendants submitted that this term is disputed as set
forth in the parties’ joint claim charts (see Dkt. Nos. 161 & 196), but Defendants presented no
substantive argument.
Because Defendants have presented no substantive argument as to this term, the Court
hereby finds that “receiver means within said at least one hub adapted to receive data
transmitted by said plurality of terminals utilizing either said first communication means
or said second communication means” is a means-plus-function term, the claimed function is
“receive data transmitted by said plurality of terminals utilizing either said first
communication means or said second communication means,” and the corresponding
structure is “hub receiver 240 depicted in Fig. 10, and equivalents thereof.”
D. “transmitter means within each user terminal for receiving data to be transmitted from
said user terminal to said hub”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “receiving data to be transmitted
from said user terminal to said hub”

Function: “receiving data to be transmitted
from said user terminal to said hub”

Structure: “modem 160 and equivalents”

Structure: “modem 160 including random
access transmitter 70 and channel assignment
transmitter 110”

Dkt. No. 161, Ex. A at 1. The parties submit that this term appears in Claims 2-7 and 28 of the
’073 Patent. Dkt. No. 161, Ex. A at 1.

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Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 applies. / Function: receiving data to be
transmitted from said user terminal to said hub / Structure: modem 160 and equivalents thereof /
NOTE: reject Plaintiff[s’] argument that structure does not include random access transmitter 70
and channel assignment transmitter 110.”
(1) The Parties’ Positions
The parties agree that this disputed term is a means-plus-function term governed by
35 U.S.C. § 112, ¶ 6, and the parties agree upon the claimed function. The parties dispute the
corresponding structure.
Plaintiffs argue that “Defendants . . . propose including unnecessary structures which are
not necessary to receive data from said user terminal.” Dkt. No. 181 at 9.
Defendants respond that “[a]s the plain meaning suggests, transmitter means must have
structure to transmit.” Dkt. No. 187 at 8.
Plaintiffs reply that “the function of this limitation is not transmission itself, but
‘receiving data to be transmitted from said user terminal to said hub.’” Dkt. No. 190 at 3.
(2) Analysis
The specification discloses:
The transmitter portion of the reverse link of the present invention will now be
described in more detail. The transmitter for the reverse link actually comprises
two portions: a random access portion and a channel assignment portion.
Although the two portions are shown separately, overlapping functions can be
combined. In general, the transmitter comprises a user interface and a message
classifier. The data received from the user is divided or classified into three
different types of messages, as described previously.
The first message type requires transmission rates lower than a certain number of
bytes/sec, i.e., short messages. The second message type requires transmission
rates higher than a certain number of bytes/sec. The third message type include[s]
messages that are known to require a continuous type communications channel.
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This third message type comprises messages generated from two way bandwidth
intensive applications such as video conferencing, Internet phone, etc.
Each type is processed in the transmitter in a different way. The random access
(RA) transmitter is utilized for short messages wherein each message is
transmitted as a packet, a packet being the information transmitted in a single hop.
The channel assignment (CA) transmitter is utilized for long streams of
information, i.e., message types two and three. A specific frequency and a
particular bandwidth are assigned and the data is transmitted for a specific period
of time or until the data ends.
’073 Patent at 15:5-31 (emphasis added).
The PC 150 transmits data to be sent via satellite to the hub to the modem 160
which comprises the random access transmitter 70 (FIG. 5) and the channel
assignment transmitter 110 (FIG. 6).
Id. at 17:25-28.
Plaintiffs urge: “While Defendants are correct that the disclosed modem 160 comprises
the random access transmitter 70 and channel assignment transmitter 110, those structures are
not linked to the claimed function of ‘receiving data to be transmitted.’” Dkt. No. 190 at 3. This
seemingly internally inconsistent argument cannot be squared with the principles of 35 U.S.C.
§ 112, ¶ 6. That is, if the corresponding structure is modem 160, and if modem 160 includes
random access transmitter 70 and channel assignment transmitter 110, then it necessarily follows
that the corresponding structure includes random access transmitter 70 and channel assignment
transmitter 110.
The Court therefore hereby expressly rejects Plaintiffs’ argument that the modem 160
does not necessarily include the random access transmitter 70 and channel assignment
transmitter 110. Indeed, because this is self-evident, the construction of the corresponding
structure need not specify structures that are included within the disclosed modem 160. Further,
Defendants’ proposed construction would tend to create confusion by potentially giving rise to

- 19 -

an implication that the modem 160 includes only the components that are expressly set forth and
no others.
The Court therefore hereby finds that “transmitter means within each user terminal
for receiving data to be transmitted from said user terminal to said hub” is a means-plusfunction term, the function is “receiving data to be transmitted from said user terminal to
said hub,” and the corresponding structure is “modem 160 and equivalents thereof.”
E. “switching means” / “means for switching”
“switching means [coupled to said transmitter means / within said plurality of user
terminals] for switching transmission between said first communication means and said
second communication means in accordance with predefined criteria”
(’073 Patent, Claims 2-7, 28)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission between
said first communication means and said
second communication means in accordance
with predefined criteria”

Function: “switching transmission between
said first communication means and said
second communication means in accordance
with predefined criteria”

Structure: “driver layer 158, as described in
10:30-11:40, or driver layer 158 as executing
the ‘Switch to RA 170’ and/or ‘Switch to CA
196’ steps as depicted in Fig. 8[], and
equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm of
Figure 8”

- 20 -

“means for switching from said first communication means to said second communication
means when the length of a message received by said transmitter means exceeds a
predetermined threshold” (’073 Patent, Claim 2)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching from said first
communication means to said second
communication means when the length of a
message received by said transmitter means
exceeds a predetermined threshold”

Function: “switching from said first
communication means to said second
communication means when the length of a
message received by said transmitter means
exceeds a predetermined threshold”

Structure: “Driver layer 158 of Figure 7 as
described in 10:63-67, Driver layer 158 of
Figure 7, executing the ‘Switch to RA 170’
and/or ‘Switch to CA 196’ steps as described
at 17:37-45, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
10:63-67”3

“means for switching transmission from said first communication means when a
continuation flag in a message received by said transmitter means is turned on”
(’073 Patent, Claim 3)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission from said
first communication means when a
continuation flag in a message received by said
transmitter means is turned on”

Function: “switching transmission from said
first communication means when a
continuation flag in a message received by said
transmitter means is turned on”

Structure: “Driver layer 158 of Figure 7
executing the ‘Switch to CA 196’ step as
described at 11:1-8, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
11:1-8”4

3

Defendants previously proposed: “10:47-11:20.” Dkt. No. 161, Ex. A at 3-8.

4

Defendants previously proposed: “10:47-11:20.” Dkt. No. 161, Ex. A at 3-8.
- 21 -

“means for switching transmission from said first communication means to said second
communication means when a user buffer containing a plurality of messages to be sent via
said transmitter means fills beyond a predetermined level” (’073 Patent, Claim 4)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission from said
first communication means to said second
communication means when a user buffer
containing a plurality of messages to be sent
via said transmitter means fills beyond a
predetermined level”

Function: “switching transmission from said
first communication means to said second
communication means when a user buffer
containing a plurality of messages to be sent
via said transmitter means fills beyond a
predetermined level”

Structure: “Driver layer 158 of Figure 7
executing the ‘Switch to CA 196’ step as
described at 11:9-11, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
11:9-11”5

“means for switching transmission from said second communication means to said first
communication means when the length of a message received by said transmitter means
fails to exceed a predetermined threshold” (’073 Patent, Claim 5)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission from said
second communication means to said first
communication means when the length of a
message received by said transmitter means
fails to exceed a predetermined threshold”

Function: “switching transmission from said
second communication means to said first
communication means when the length of a
message received by said transmitter means
fails to exceed a predetermined threshold”

Structure: “Driver layer 158 of Figure 7
executing the ‘Switch to RA 170’ step, as
described at 11:30-31, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
11:30-31”6

5

Defendants previously proposed: “10:47-11:20.” Dkt. No. 161, Ex. A at 3-8.

6

Defendants previously proposed: “11:20-40.” Dkt. No. 161, Ex. A at 3-8.
- 22 -

“means for switching transmission from said second communication means to said first
communication means when a continuation flag in a message received by said transmitter
means is turned off” (’073 Patent, Claim 6)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission from said
second communication means to said first
communication means when a continuation
flag in a message received by said transmitter
means is turned off”

Function: “switching transmission from said
second communication means to said first
communication means when a continuation
flag in a message received by said transmitter
means is turned off”

Structure: “Driver layer 158 of Figure 7
executing the ‘Switch to RA 170’ step, as
described at 11:22-40, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
11:22-40”7

“means for switching transmission from said second communication means to said first
communication means when the software application meeting a predetermined criteria that
initiated a message to be transmitted via said transmitter means ceases to generate message
data” (’073 Patent, Claim 7)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Subject to § 112, ¶ 6

Function: “switching transmission from said
second communication means to said first
communication means when the software
application meeting a predetermined criteria
that initiated a message to be transmitted via
said transmitter means ceases to generate
message data”

Function: “switching transmission from said
second communication means to said first
communication means when the software
application meeting a predetermined criteria
that initiated a message to be transmitted via
said transmitter means ceases to generate
message data”

Structure: “Driver layer 158 of Figure 7 as
described in 11:34-36, Driver layer 158 of
Figure 7, executing the ‘Switch to RA 170’
step as described at 18:10-15, and equivalents”

Structure: “modem 160 and PC 150 including
driver layer 158 performing the algorithm at
11:34-36”8

7

Defendants previously proposed: “11:20-40.” Dkt. No. 161, Ex. A at 3-8.

8

Defendants previously proposed: “11:20-40.” Dkt. No. 161, Ex. A at 3-8.
- 23 -

Dkt. No. 161, Ex. A at 3-8; Dkt. No. 187 at 15.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary constructions:
Term

Preliminary Construction

“switching means [coupled to said transmitter
means / within said plurality of user terminals]
for switching transmission between said first
communication means and said second
communication means in accordance with
predefined criteria” (’073 Patent, Claims 2-7,
28)

§ 112, ¶ 6 applies.
Function:
switching transmission between said first
communication means and said second
communication means in accordance with
predefined criteria
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithms disclosed
in the ’073 Patent at 10:30-11:40 or Figure 8,
and equivalents thereof

“means for switching from said first
communication means to said second
communication means when the length of a
message received by said transmitter means
exceeds a predetermined threshold” (’073
Patent, Claim 2)

§ 112, ¶ 6 applies.
Function:
switching from said first communication
means to said second communication means
when the length of a message received by said
transmitter means exceeds a predetermined
threshold
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 10:63-67 or 17:37-45, and
equivalents thereof

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“means for switching transmission from said
first communication means when a
continuation flag in a message received by said
transmitter means is turned on” (’073 Patent,
Claim 3)

§ 112, ¶ 6 applies.
Function:
switching transmission from said first
communication means when a continuation
flag in a message received by said transmitter
means is turned on
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 11:1-8, and equivalents
thereof

“means for switching transmission from said
first communication means to said second
communication means when a user buffer
containing a plurality of messages to be sent
via said transmitter means fills beyond a
predetermined level” (’073 Patent, Claim 4)

§ 112, ¶ 6 applies.
Function:
switching transmission from said first
communication means to said second
communication means when a user buffer
containing a plurality of messages to be sent
via said transmitter means fills beyond a
predetermined level
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 11:9-11, and equivalents
thereof

“means for switching transmission from said
second communication means to said first
communication means when the length of a
message received by said transmitter means
fails to exceed a predetermined threshold”
(’073 Patent, Claim 5)

§ 112, ¶ 6 applies.
Function:
switching transmission from said second
communication means to said first
communication means when the length of a
message received by said transmitter means
fails to exceed a predetermined threshold
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 11:30-31, and equivalents
thereof

- 25 -

“means for switching transmission from said
second communication means to said first
communication means when a continuation
flag in a message received by said transmitter
means is turned off” (’073 Patent, Claim 6)

§ 112, ¶ 6 applies.
Function:
switching transmission from said second
communication means to said first
communication means when a continuation
flag in a message received by said transmitter
means is turned off
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 11:22-40, and equivalents
thereof

“means for switching transmission from said
second communication means to said first
communication means when the software
application meeting a predetermined criteria
that initiated a message to be transmitted via
said transmitter means ceases to generate
message data” (’073 Patent, Claim 7)

§ 112, ¶ 6 applies.
Function:
switching transmission from said second
communication means to said first
communication means when the software
application meeting a predetermined criteria
that initiated a message to be transmitted via
said transmitter means ceases to generate
message data
Structure:
modem 160 and PC 150 including driver
layer 158 performing the algorithm disclosed
in the ’073 Patent at 11:34-36, and equivalents
thereof

(1) The Parties’ Positions
The parties agree that these disputed terms are means-plus-function terms governed by
35 U.S.C. § 112, ¶ 6, and the parties agree upon the claimed functions. The parties dispute the
corresponding structure.
Plaintiffs argue that the Court should reject Defendants’ proposals to: (1) include the
entire PC 150 and modem 160 instead of just the necessary driver layer 158; (2) include only
some of the disclosed embodiments; and (3) include the entire algorithms, including many steps
- 26 -

unrelated to switching transmission modes, instead of just the steps of the algorithms linked to
the claimed function. Dkt. No. 181 at 12.
Defendants respond that “Plaintiffs told the PTAB in the IPR proceedings on the ’073
Patent that the location of these switching means is solely within the VSAT terminal.” Dkt.
No. 187 at 10. Defendants argue that: (1) “Plaintiffs conflate two distinct and separately claimed
means-plus-function terms: (i) ‘switching means’ and (ii) the ‘means for switching’”;
(2) Plaintiffs propose only a portion of the necessary structure, thus “essentially amounting to a
mere black box”; and (3) Plaintiffs’ proposal reads out the limitation that the switching function
must be performed “in accordance with predefined criteria.” Id. at 11.
Plaintiffs reply that because “[t]he claims explicitly state that ‘said switching means
comprises means for switching . . .,” “[t]he ‘means for switching’ is therefore a part of the
‘switching means,’ not an entirely separate element.” Dkt. No. 190 at 3-4 (citing ’073 Patent
at 23:45-49). Plaintiffs also argue that Defendants improperly limit the term “predefined
criteria” to a single criterion. Dkt. No. 190 at 4. Finally, Plaintiffs argue that additional
“enabling” steps are not part of the corresponding structure. Id. at 5 (citing Asyst Techs. Inc. v.
Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (“The corresponding structure . . . must
actually perform the recited function, not merely enable the pertinent structure to operate as
intended.”)).
(2) Analysis
The specification discusses circumstances in which “driver layer 158” switches from
random access to requesting channel assignment. For example, the specification discloses:
The transmitter method portion of the present invention is situated within the
driver layer 158. The transmitter method operates as a driver under the IP layer
receiving IP packets output therefrom. Each protocol utilized by the application
is identified by its own so called well known port number. The well known port
- 27 -

number is part of the TCP/UDP header embedded within the IP packet. Each
packet is identified by its connection including its source and destination
addresses and source and destination ports. In the random access mode, the
transmitter method monitors the port number and the rate of the packets being
received as measured in bits per second (bps). The bps rate is monitored by
counting the number of bytes transmitted within a specific time window. If one
of the applications transmits packets whose source port within the protocol header
corresponds to a predetermined list or the length of the messages is larger than a
specified length, the driver requests a channel assignment. In addition, if the rate
of the transmission is higher than the maximal rate permitted in the random access
mode the driver also requests a channel assignment. Note that the application
layer 152 can be implemented using, for example, any browser or web browser,
e-mail application or other communication type application.
’073 Patent at 17:29-51 (emphasis added). Also, the specification provides additional detail
regarding the “driver layer 158” in the form of a flow chart in Figure 8. See ’073 Patent at
17:52-18:31 (“A high level flow diagram illustrating the driver method of the present invention
is shown in FIG. 8.”).
During Inter Partes Review proceedings, the patentee stated that “the ‘driver’ and
‘modem[]’ . . . are contained within the VSAT terminal and are described as performing the
function of monitoring traffic over the random-access channel and requesting and switching to
the channel-assignment mode if necessary.” Dkt. No. 187, Ex. 19, Feb. 18, 2016 Patent Owner
Preliminary Response Pursuant To 37 C.F.R. § 42.107 at 18. The proper corresponding structure
thus includes both “driver layer 158” and “modem 160.”
As to whether the “PC 150” should be included, Figure 7 of the ’073 Patent illustrates
“Driver 158” as part of “PC 150,” which is illustrated as distinct from modem 160. In the
description of Figure 8 of the ’073 Patent, however, the specification refers to steps being
performed by “modem 160.” See ’073 Patent at 17:55-56, 17:66-67, 18:2-4 & 18:8-15.
Although Defendants have emphasized disclosure that the “transmitter method of the present
invention” is “PC based” (’073 Patent at 17:20), this general disclosure does not override the

- 28 -

above-cited more specific explanation that switching functions can be performed by the
modem 160.
The Court therefore finds that the specification contains alternative disclosures that the
driver layer 158 may be implemented in either PC 150 or modem 160. See Ishida Co., Ltd. v.
Taylor, 221 F.3d 1310, 1316 (Fed. Cir. 2000) (noting that a patent may disclose multiple
“alternative structures for performing the claimed function”).
As to the appropriate algorithms, at the September 28, 2016 hearing neither side objected
to any of the Court’s preliminary identifications of algorithms for the “means for switching . . .”
terms. As to the “switching means . . .” term, Defendants maintained that the only criteria
associated with the driver layer is checking the source port. Defendants thus urged that
Plaintiffs’ proposal of referring to 10:30-11:40 is unsupported.
On balance, Defendants have failed to demonstrate that the switching criteria disclosed at
10:30-11:40 are not linked to the claimed function for the “switching means . . . .” Instead, the
disclosure at issue refers to a transmitter method in which “[c]ommunication begins in the
random access mode” and “[t]he decision to switch to the channel assignment mode is made in
accordance with one of the following criteria: . . . .” ’073 Patent at 10:53-57. Defendants’
argument that this disclosure is linked only to the “means for switching . . .” terms is unavailing.
As to Plaintiffs’ proposal, however, Plaintiffs have not demonstrated that the flow chart
of Figure 8 can be viewed selectively. Instead, the specification simply discloses that “[a] high
level flow diagram illustrating the driver method of the present invention is shown in FIG. 8.”
See id. at 17:52-53.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:

- 29 -

Construction

Term
“switching means [coupled to said
transmitter means / within said plurality of
user terminals] for switching transmission
between said first communication means
and said second communication means in
accordance with predefined criteria”
(’073 Patent, Claims 2-7, 28)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching transmission between said
first communication means and said second
communication means in accordance with
predefined criteria”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithms
disclosed in the ’073 Patent at 10:30-11:40
or Figure 8, and equivalents thereof”

“means for switching from said first
communication means to said second
communication means when the length of a
message received by said transmitter means
exceeds a predetermined threshold” (’073
Patent, Claim 2)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching from said first
communication means to said second
communication means when the length of a
message received by said transmitter means
exceeds a predetermined threshold”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 10:63-67 and
17:37-45, and equivalents thereof”

“means for switching transmission from
said first communication means when a
continuation flag in a message received by
said transmitter means is turned on” (’073
Patent, Claim 3)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching transmission from said first
communication means when a continuation
flag in a message received by said
transmitter means is turned on”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 11:1-8, and
equivalents thereof”

- 30 -

“means for switching transmission from
said first communication means to said
second communication means when a user
buffer containing a plurality of messages to
be sent via said transmitter means fills
beyond a predetermined level” (’073 Patent,
Claim 4)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching transmission from said first
communication means to said second
communication means when a user buffer
containing a plurality of messages to be sent
via said transmitter means fills beyond a
predetermined level”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 11:9-11, and
equivalents thereof”

“means for switching transmission from
said second communication means to said
first communication means when the length
of a message received by said transmitter
means fails to exceed a predetermined
threshold” (’073 Patent, Claim 5)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching transmission from said
second communication means to said first
communication means when the length of a
message received by said transmitter means
fails to exceed a predetermined threshold”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 11:30-31, and
equivalents thereof”

“means for switching transmission from
said second communication means to said
first communication means when a
continuation flag in a message received by
said transmitter means is turned off” (’073
Patent, Claim 6)

35 U.S.C. § 112, ¶ 6 applies.
Function:
“switching transmission from said
second communication means to said first
communication means when a continuation
flag in a message received by said
transmitter means is turned off”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 11:22-40, and
equivalents thereof”

- 31 -

35 U.S.C. § 112, ¶ 6 applies.

“means for switching transmission from
said second communication means to said
first communication means when the
software application meeting a
predetermined criteria that initiated a
message to be transmitted via said
transmitter means ceases to generate
message data” (’073 Patent, Claim 7)

Function:
“switching transmission from said
second communication means to said first
communication means when the software
application meeting a predetermined
criteria that initiated a message to be
transmitted via said transmitter means
ceases to generate message data”
Structure:
“modem 160 or PC 150 including driver
layer 158 performing the algorithm
disclosed in the ’073 Patent at 11:34-36 and
18:10-15, and equivalents thereof”

F. “continuation flag”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

“a data field that indicates additional messages
follow the current message”

“a data field that, when set, indicates that the
reserved channel is still needed and when not
set indicates that the reserved channel is no
longer needed”

Dkt. No. 161, Ex. A at 5. The parties submit that this term appears in Claims 3 and 6 of the ’073
Patent. Dkt. No. 161, Ex. A at 5.
In their September 14, 2016 Joint Claim Construction Chart, the parties have submitted
an agreed-upon construction for this term (Dkt. No. 196, Ex. A at 7), which the Court sets forth
in Appendix A to this Claim Construction Memorandum and Order.

- 32 -

G. “means for generating a request to be sent over said return link in order to utilize said
second communication means”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

Subject to § 112, ¶ 6

Indefinite

Function: “generating a request to be sent over
said return link in order to utilize said second
communication means”

Subject to § 112, ¶ 6

Structure: “Driver layer 158 of Figure 7
sending a Request for Allocation message as
described at 11:12-15, Driver layer 158 of
Figure 7 executing the Transmit CAR step 190
as described at 17:58-182 [sic], and
equivalents”

Function: “generating a request to be sent over
said return link in order to utilize said second
communication means”
Structure: “modem 160 and PC 150 including
driver layer 158 performing an undisclosed
algorithm”

Dkt. No. 161, Ex. A at 8-9. The parties submit that this term appears in Claim 28 of the ’073
Patent. Dkt. No. 161, Ex. A at 8-9.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 applies. / Function: generating a request
to be sent over said return link in order to utilize said second communication means / Structure:
modem 160 and PC 150 including driver layer 158 configured for sending a Request for
Allocation message as described at 11:12-15 or executing the Transmit CAR step 190 as
described at 17:58-60.”
(1) The Parties’ Positions
The parties agree that this disputed term is a means-plus-function term governed by
35 U.S.C. § 112, ¶ 6, and the parties agree upon the claimed function. The parties dispute the
corresponding structure.

- 33 -

Plaintiffs argue that the Court should reject Defendants’ argument that this disputed term
lacks a corresponding algorithm because “the specification describes two algorithms that
determine when the driver generates the request for a channel assignment.” Dkt. No. 181 at 18.
Defendants respond that “Plaintiffs rely on portions of the specification merely restating
the claimed function, rather than providing an algorithm showing how the claimed function is
performed.” Dkt. No. 187 at 17.
Plaintiffs reply that “the specification describes two separate embodiments which
generate a request to utilize the second communication means.” Dkt. No. 190 at 5.
(2) Analysis
The specification discloses, for example:
If one of the applications transmits packets whose source port within the protocol
header corresponds to a predetermined list or the length of the messages is larger
than a specified length, the driver requests a channel assignment.
’073 Patent at 17:42-45; see id. at 10:56-11:20 & 17:55-18:27.
Defendants have cited deposition testimony of Plaintiffs’ expert opining that the
specification does not limit how a software programmer would implement the software that
would generate the channel assignment request and that “there’s almost an infinite number of
ways to write a piece of software code to do something.” Dkt. No. 187, Ex. 14, Aug. 9, 2016
Elbert dep. at 152:7-22. This testimony does not demonstrate indefiniteness, however,
particularly in light of the general principle that “the amount of detail that must be included in
the specification depends on the subject matter that is described and its role in the invention as a
whole, in view of the existing knowledge in the field of the invention.” Typhoon Touch Techs.,
Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011); see id. at 1386 (“A description of the
function in words may disclose, at least to the satisfaction of one of ordinary skill in the art,

- 34 -

enough of an algorithm to provide the necessary structure under § 112, ¶ 6.”) (citation and
internal quotation marks omitted).
Finally, for substantially the same reasons set forth above as to the “switching means . . .”
and “means for switching . . .” terms, the Court therefore finds that the specification contains
alternative disclosures that the driver layer 158 may be implemented in either PC 150 or
modem 160. See Ishida, 221 F.3d at 1316 (noting that patent may disclose multiple “alternative
structures for performing the claimed function”).
The Court therefore hereby finds that “means for generating a request to be sent over
said return link in order to utilize said second communication means” is a means-plusfunction term, the function is “generating a request to be sent over said return link in order
to utilize said second communication means,” and the corresponding structure is “modem 160
or PC 150 including driver layer 158 configured for sending a Request for Allocation
message as described at 11:12-15 or executing the Transmit CAR step 190 as described at
17:58-60 and 17:66-18:2, and equivalents thereof.”
V. CONSTRUCTION OF DISPUTED TERMS IN U.S. PATENT NO. 7,245,874
A. “[wherein said synchronous protocol allows] non-data carrying time slots”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

“[wherein said synchronous protocol allows]
time slots that do not contain data”

Indefinite

Dkt. No. 161, Ex. A at 10. The parties submit that this term appears in Claim 1 of the ’874
Patent. Dkt. No. 161, Ex. A at 10.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “[wherein said synchronous protocol allows] time
slots that do not contain data (Not indefinite).”
- 35 -

(1) The Parties’ Positions
Plaintiffs argue that “[t]he plain language of the claim and the specification provide clear
guidance for the term ‘non-data carrying time slots.’” Dkt. No. 181 at 20.
Defendants respond that “[t]he specification provides no guidance on either the content or
the form of the claim term.” Dkt. No. 187 at 18.
Plaintiffs reply that “[t]he specification describes time slots that ‘do not contain data’ and
‘blank time slots,’ among other examples.” Dkt. No. 190 at 6 (citing ’874 Patent at 7:6-8 &
7:49-56).
(2) Analysis
The Background of the Invention refers to “blank slots”:
The telephony system including cellular networks and the PSTN, is generally
based on the E1, or possibly T1, protocol for multiplexing transmissions into time
slots. The protocol is strongly synchronous in that the individual transmission to
which a time slot is assumed to belong to is determined from its temporal position
amongst the other time slots. Thus an individual transmission which does not
have current data creates blank slots to reserve its current position.
’874 Patent at 1:26-33 (emphasis added). The specification further discloses that there can be
“time slots that do not carry data”:
The IPMux 50, using data encoded into the packet headers, is also able to recreate
blank slots, which have no meaning within a TCP/IP environment but are
necessary in the E1 environment for maintaining correct sequence between time
slots. Suitable buffering and reconstruction thus allows an E1 stream at the output
which is a reconstruction of the E1 stream at the input despite having used an
asynchronous protocol in between. Thus the IPMux 50 provides transparent
bridging between E1//T1 based systems and switch based packet networks
including but not restricted to TCP/IP based networks.
The IPMux 50 is preferably configurable to set desired packet sizes, and the
filter 51 is preferably configurable to filter out E1 time slots that do not carry
data. A definition for a non-data carrying time slot is preferably provided to filter
51 by an operator prior to use. Preferably, TS0 slots of the E1 protocol are also
filtered out since these have no meaning in the TCP/IP protocol and may in any
case be regenerated at the receiving end.
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Id. at 7:38-56 (emphasis added).
These disclosures are consistent with Plaintiffs’ proposed construction, and Defendants
have not demonstrated that the ability of an operator to configure the system (see ’874 Patent at
7:51-53) necessarily gives rise to indefiniteness.
Defendants’ arguments regarding Plaintiffs’ statements in Inter Partes Review
proceedings are unavailing, in particular because the patentee distinguished the “Arimilli”
reference’s “silent frame” by arguing that the reference lacked any disclosure at all regarding
time slots in a synchronous data protocol. Dkt. No. 187, Ex. 15, Feb. 19, 2016 Patent Owner
Preliminary Response Pursuant To 37 C.F.R. § 42.107 at 27.
Finally, Defendants urged at the September 28, 2016 hearing that the specification
provides no guidance for determining whether a particular time slot is not carrying “data.” For
example, Defendants submitted that signaling time slots as well as “silent” time slots do indeed
contain data. The above-quoted disclosures in the specification, however, demonstrate that
“non-data” in the ’874 Patent refers to time slots that contain information that may be useful or
necessary in one communication protocol but that is not needed in another communication
protocol. The identification of particular time slots as not containing “data” is thus
implementation-specific and will depend on the particular communication protocols being used.
The Court therefore hereby expressly rejects Defendants’ indefiniteness arguments and
hereby construes “[wherein said synchronous protocol allows] non-data carrying time slots”
to mean “[wherein said synchronous protocol allows] time slots that do not contain data.”

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B. “[a central] high-capacity data trunking region”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

“a high speed data link coupled to one or more
branches of a cellular telephone network”

Indefinite

Dkt. No. 161, Ex. A at 13. The parties submit that this term appears in Claims 2 and 3 of the
’874 Patent. Dkt. No. 161, Ex. A at 13.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “network backbone (Not indefinite).”
(1) The Parties’ Positions
Plaintiffs argue that “‘trunk’ is a well-known term in the telecommunications industry,”
and “the specification defines a ‘trunking region’ as a synonym for a network ‘backbone.’” Dkt.
No. 181 at 23.
Defendants respond that although the term “trunk” is known in the art, “[t]he base term
‘trunking region’ is simply not known to those of ordinary skill in the art . . . .” Dkt. No. 187
at 20-21. Defendants also argue that “the specification provides no objective guidance for
determining whether” the requirements of “central” and “high-capacity” are met. Id. at 21.
Plaintiffs reply that Defendants’ current arguments are inconsistent with their position in
Inter Partes Review proceedings. Dkt. No. 190 at 7.
At the September 28, 2016 hearing, the parties presented no oral argument as to this term.
(2) Analysis
At first blush, the term “high-capacity” appears to be subjective, and the term “trunking
region” appears to contrast with the well-known term “trunk.” The specification, however, is
consistent with Plaintiffs’ proposal that the disputed term refers to connections between
switching systems (as opposed to connections to subscribers):
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The embodiments concern cellular and other wireless networks comprising
branches and a heavy data trunking region which is required to carry large
amounts of data rapidly and thus to serve as the backbone of the network.
***
High capacity connections that link different MSCs or groupings of MSCs are
referred to as the cellular backbone. High capacity connections that form part of
the PSTN 18 are referred to as the PSTN backbone.
’874 Patent at 5:29-32 & 6:49-52.
Plaintiffs have also submitted an extrinsic technical dictionary definition of “trunk” that
is likewise consistent with such a reading. Dkt. No. 181, Ex. 9, The New IEEE Standard
Dictionary of Electrical and Electronics Terms 1418 (5th ed. 1993) (“A telephone line or
channel between two central offices or switching devices, which is used in providing telephone
connections between subscribers.”). Finally, in Inter Partes Review proceedings, Defendants
themselves noted: “The Abstract of the ’874 patent discusses the ‘high-capacity trunking region,’
as either equivalent to or interchangeable with a ‘network backbone.’” See Dkt. No. 181, Ex. 6,
Hughes Network Systems, LLC’s Petition For Inter Partes Review of Claims 2-7 of U.S. Patent
No. 7,245,874 Under 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 et seq. at 12.
The Court therefore hereby expressly rejects Defendants’ indefiniteness arguments. The
proper construction is further informed by the context of the claims in which the disputed term
appears, such as in the recital of “one of peripheral branches of a telephone network, the
peripheral branches being connected to a central high-capacity data trunking region.” ’874
Patent at Cl. 2. On balance, the claims, the specification, and the extrinsic evidence, as discussed
above, demonstrate that the disputed term refers to a network backbone.
The Court nonetheless rejects Plaintiffs’ proposal of “a high speed data link coupled to
one or more branches of a cellular telephone network” as potentially overbroad and unclear

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because it includes the term “high speed” and because it could be interpreted as encompassing
subscriber connections.
The Court therefore hereby construes “[a central] high-capacity data trunking region”
to mean “network backbone.”
C. “converters for converting data of a datastream between said first data communication
protocol and said second data communication protocol” / “E1-TCP/IP converters for
converting data between said E1 protocol and said TCP/IP protocol”
“converters for converting data of a datastream between said first data communication
protocol and said second data communication protocol” (’874 Patent, Claim 1)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6
Function: “converting data of a datastream
between said first data communication protocol
and said second data communication protocol”

Function: “converting data of a datastream
between said first data communication protocol
and said second data communication protocol” Structure: None
Structure: “internet protocol multiplexor
(IPMux) 50 as depicted in Figure 2 and
described at 6:60-7:56, SS7 Gateway 150 as
depicted in Figure 10 and described at
10:51-11:44, and equivalents”

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“E1-TCP/IP converters for converting data between said E1 protocol and said TCP/IP
protocol” (’874 Patent, Claim 8)
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “for converting data between said E1
protocol and said TCP/IP protocol”

Function: “converting data between said E1
protocol and said TCP/IP protocol”
Structure: None

Structure: “internet protocol multiplexor
(IPMux) 50 as depicted in Figure 2 and
described at 6:60-7:56, SS7 Gateway 150 as
depicted in Figure 10 and described at
10:51-11:44, and equivalents”

Dkt. No. 161, Ex. A at 10-11 & 15.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 does not apply. Plain and ordinary
meaning.”
(1) The Parties’ Positions
Plaintiffs argue that these are not means-plus-function terms because “‘[c]onverters’ are a
well-known class of structures in the telecommunications space, used to adapt one
telecommunications protocol to another so that two devices may communicate.” Dkt. No. 181
at 25 (citation omitted). Alternatively, Plaintiffs argue that ample corresponding structure is
disclosed with reference to Figure 2 of the ’874 Patent. Id. at 26.
Defendants respond that “converters” is a nonce term that does not indicate any structure
for performing the claimed function. Dkt. No. 187 at 22. Further, Defendants argue that “[t]he

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structures identified by Plaintiffs are not any more structural than the terms of the claims.” Id.
at 23.
Plaintiffs reply that “Defendants do not dispute that ‘converters’ are a well-known class
of structures.” Dkt. No. 190 at 8.
(2) Analysis
Title 35 U.S.C. § 112, ¶ 6 provides: “An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.”
“[T]he failure to use the word ‘means’ . . . creates a rebuttable presumption . . . that
§ 112, para. 6 does not apply.” Williamson v. Citrix Online LLC, 792 F.3d 1339, 1348 (Fed. Cir.
2015) (citations and internal quotation marks omitted). “When a claim term lacks the word
‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger
demonstrates that the claim term fails to recite sufficiently definite structure or else recites
function without reciting sufficient structure for performing that function.” Id. at 1349 (citations
and internal quotation marks omitted).
Williamson, in an en banc portion of the decision, abrogated prior statements that the
absence of the word “means” gives rise to a “strong” presumption against means-plus-function
treatment. Id. (citation omitted). Williamson also abrogated prior statements that this
presumption “is not readily overcome” and that this presumption cannot be overcome “without a
showing that the limitation essentially is devoid of anything that can be construed as structure.”
Id. (citations omitted). Instead, Williamson found, “[h]enceforth, we will apply the presumption
as we have done prior to Lighting World . . . .” Id. (citing Lighting World, Inc. v. Birchwood

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Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)). In a subsequent part of the decision not
considered en banc, Williamson affirmed the district court’s finding that the term “distributed
learning control module” was a means-plus-function term that was indefinite because of lack of
corresponding structure, and in doing so Williamson stated that “‘module’ is a well-known nonce
word.” 792 F.3d at 1350.
Here, the disputed terms each recite “converters,” which connote structure. See ’874
Patent at 4:47-50, 6:60-7:56 & Fig. 2 (illustrating a “converter”); see also Dkt. No. 181, Ex. 9,
The New IEEE Standard Dictionary of Electrical and Electronics Terms 267 (5th ed. 1993)
(defining “converter” in the context of data transmission as meaning “[a] device for changing
one form of information language to another, so as to render the language acceptable to a
different machine”).
In so finding, the Court applies long-standing principles articulated prior to the abrogated
Lighting World decision. See, e.g., Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311,
1320 (Fed. Cir. 2004) (“when the structure-connoting term ‘circuit’ is coupled with a description
of the circuit’s operation, sufficient structural meaning generally will be conveyed to persons of
ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply”; noting “language reciting
[the circuits’] respective objectives or operations”); Apex Inc. v. Raritan Computer, Inc., 325
F.3d 1364, 1372 (Fed. Cir. 2003) (“While we do not find it necessary to hold that the term
‘circuit’ by itself always connotes sufficient structure, the term ‘circuit’ with an appropriate
identifier such as ‘interface,’ ‘programming’ and ‘logic,’ certainly identifies some structural
meaning to one of ordinary skill in the art.”); Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even though the term ‘detector’ does not
specifically evoke a particular structure, it does convey to one knowledgeable in the art a variety

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of structures known as ‘detectors.’ We therefore conclude that the term ‘detector’ is a
sufficiently definite structural term to preclude the application of § 112, ¶ 6.”); Greenberg, 91
F.3d at 1583 (finding that “detent mechanism” was not a means-plus-function term because it
denotes a type of device with a generally understood meaning in the mechanical arts);
Affymetrix, Inc. v. Hyseq, Inc., 132 F. Supp. 2d 1212, 1232 (N.D. Cal. 2001) (finding that
“‘computer code’ is not a generic term, but rather recites structure that is understood by those of
skill in the art to be a type of device for accomplishing the stated functions”).
Finally, “[t]he amount of detail required to be included in claims depends on the
particular invention and the prior art.” Typhoon Touch, 659 F.3d at 1385 (citation and internal
quotation marks omitted). Here, the relatively simple converting functions do not demand any
greater detail than is recited. Although Defendants have argued that no “off-the-shelf” hardware
existed at the time of the invention that could have performed the claimed functions, Defendants
have not demonstrated that this necessarily leads to a finding that the term “converters” fails to
connote a class of structures. In sum, Defendants have failed to rebut the presumption against
means-plus-function treatment for these non-means terms.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:
Construction

Term
“converters for converting data of a
datastream between said first data
communication protocol and said second
data communication protocol”

35 U.S.C. § 112, ¶ 6 does not apply.

“E1-TCP/IP converters for converting data
between said E1 protocol and said TCP/IP
protocol”

35 U.S.C. § 112, ¶ 6 does not apply.

Plain meaning.

Plain meaning.

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D. “non-data carrying time slot remover for removing said non-data carrying time slots
during conversion into said asynchronous protocol” / “time slot regenerator for
regenerating non-data carrying time slots during reconstruction of said datastream”
“non-data carrying time slot remover for removing said non-data carrying time slots
during conversion into said asynchronous protocol”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No additional construction necessary

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “removing said non-data carrying
time slots during conversion into said
asynchronous protocol”

Function: “removing said non-data carrying
time slots during conversion into said
asynchronous protocol”
Structure: None

Structure: “Filter 51 as depicted in Figure 2
and equivalents”

“time slot regenerator for regenerating non-data carrying time slots during reconstruction
of said datastream”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No additional construction necessary

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “regenerating non-data carrying time
slots during reconstruction of said datastream”

Function: “regenerating non-data carrying time
slots during reconstruction of said datastream”
Structure: None

Structure: “E1 Reconstructor 61 as depicted in
Figure 2, and equivalents”

Dkt. No. 161, Ex. A at 11-13. The parties submit that these terms appear in Claim 1 of the ’874
Patent. Dkt. No. 161, Ex. A at 11-13.

- 45 -

Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 does not apply. Plain and ordinary
meaning.”
(1) The Parties’ Positions
Plaintiffs argue that “remover” and “regenerator” are not nonce words but rather recite
structure, and Plaintiffs further urge that “the prefixes ‘non-data carrying time slot’ for the term
‘remover’ and ‘time slot’ for the term ‘regenerator’ impart additional structural meaning.” Dkt.
No. 181 at 26-27. Alternatively, Plaintiffs argue that ample corresponding structure is disclosed
with reference to Figure 2 of the ’874 Patent. Id. at 27-28.
Defendants respond that “non-data carrying time slot remover” and “time slot
regenerator” are nonce terms that do not indicate any structure for performing the claimed
function. Dkt. No. 187 at 24 & 26. Defendants also urge that “non-data carrying time slot” and
“time slot” are “non-structural” modifiers. Id. at 25 & 26. Further, Defendants argue that “[t]he
structures identified by Plaintiffs are no more than functionally-described black boxes, rather
than structures or algorithms for performing the claimed functions.” Id. at 25 & 27.
Plaintiffs reply by reiterating their opening arguments. See Dkt. No. 190 at 8-9.
(2) Analysis
For substantially the same reasons discussed above as to the “converters” terms,
Defendants have failed to rebut the presumption against means-plus-function treatment as to
these “remover” and “regenerator” terms. See, e.g., ’874 Patent at 4:21-24 & 7:6-8.
The Court therefore hereby construes the disputed terms as set forth in the following
chart:

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Term

Construction

“non-data carrying time slot remover for
removing said non-data carrying time slots
during conversion into said asynchronous
protocol”

35 U.S.C. § 112, ¶ 6 does not apply.

“time slot regenerator for regenerating nondata carrying time slots during
reconstruction of said datastream”

35 U.S.C. § 112, ¶ 6 does not apply.

Plain meaning.

Plain meaning.

E. “an extractor for extracting said SS7 signaling” / “a TCP/IP packet former for
arranging said extracted signaling into TCP/IP packets”
“an extractor for extracting said SS7 signaling”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “extracting said SS7 signaling”

Structure: None

Function: “extracting said SS7 signaling”

Structure: “Filter 51 as depicted in Figure 2,
SS7 Gateway 150 as depicted in Figure 10 and
described at 10:51-11:44, and equivalents”

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“a TCP/IP packet former for arranging said extracted signaling into TCP/IP packets”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “arranging said extracted signaling
into TCP/IP packets”

Function: “arranging said extracted signaling
into TCP/IP packets”
Structure: None

Structure: “Packager 53 as depicted in
Figure 2, SS7 Gateway 150 as depicted in
Figure 10 and described at 10:54-11:9, and
equivalents”

Dkt. No. 161, Ex. A at 13-15. The parties submit that these terms appear in Claim 5 of the ’874
Patent. Dkt. No. 161, Ex. A at 13-15.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 does not apply. Plain and ordinary
meaning.”
(1) The Parties’ Positions
Plaintiffs argue that “extractor” and “packet former” are not nonce words but rather recite
structure, and furthermore the prefix “TCP/IP” imparts additional structural meaning to the
“packet former.” Dkt. No. 181 at 28. Alternatively, Plaintiffs argue that “the specification links
Filter 51, Packager 53 and SS7 Gateway 150 to the recited functions.” Id.
Defendants respond that “the terms ‘extractor’ and ‘TCP/IP packet former’ are instances
of . . . purely functional ‘nonce’ claiming,” and “[t]he structures identified by Plaintiffs are no

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more than functionally-described black boxes, rather than structures or algorithms for performing
the claimed functions.” Dkt. No. 187 at 27-28.
Plaintiffs reply that the disputed terms denote specific structure, “especially in view of
the surrounding claim language and the specification, which make clear that the Filter 51,
Packager 53, and SS7 Gateway 150 perform the recited functions.” Dkt. No. 190 at 9 (citing
’874 Patent at 7:6-10 & 10:45-11:44).
(2) Analysis
For substantially the same reasons discussed above as to the “converters” terms,
Defendants have failed to rebut the presumption against means-plus-function treatment as to
these “extractor” and “TCP/IP packet former” terms. See, e.g., ’874 Patent at 10:45-11:44. Also
of note, the modifier “TCP/IP” provides additional structural significance to the “packet former”
term. See Williamson, 792 F.3d at 1351 (noting “the presence of modifiers”).
The Court therefore hereby construes the disputed terms as set forth in the following
chart:
Term

Construction

“an extractor for extracting said SS7
signaling”

35 U.S.C. § 112, ¶ 6 does not apply.
Plain meaning.

“a TCP/IP packet former for arranging said
extracted signaling into TCP/IP packets”

35 U.S.C. § 112, ¶ 6 does not apply.
Plain meaning.

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F. “a multiplexer for converting between the E1 signal and the TCP/IP signal”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “converting between the E1 signal
and the TCP/IP signal”

Function: “converting between the E1 signal
and the TCP/IP signal”
Structure: None

Structure: “internet protocol multiplexor
(IPMux) 50 as depicted in Figure 2 and
described at 6:60-7:56 and equivalents”
Dkt. No. 161, Ex. A at 16. The parties submit that this term appears in Claims 2 and 8 of the
’874 Patent. Dkt. No. 161, Ex. A at 16.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 does not apply. Plain and ordinary
meaning.”
(1) The Parties’ Positions
Plaintiffs argue that “‘[m]ultiplexers’ are a well-known class of structures and are used to
interleave or funnel multiple streams of data over a common communications line.” Dkt.
No. 181 at 29 (citation omitted). Alternatively, Plaintiffs argue that ample corresponding
structure is disclosed with reference to Figure 2 of the ’874 Patent. Id. at 29.
Defendants respond that “multiplexer” is a purely functional nonce term that “merely sets
forth the same ‘black box’ recitation of structure for providing the specified function as if the
term ‘means’ had been used.” Dkt. No. 187 at 29. Defendants also argue that “[t]he structure
identified by Plaintiffs is a functionally-described black box, rather than adequate structure for
performing the claimed function.” Id.
- 50 -

Plaintiffs reply that “multiplexer” is “indisputably a well-known class of structures,” and
Plaintiffs argue that “[b]y Defendants’ logic, §112(6) could apply to any well-known structure so
long as a dictionary definition for it happens to recite the word ‘device.’” Dkt. No. 190 at 10.
(2) Analysis
For substantially the same reasons discussed above as to the “converters” terms,
Defendants have failed to rebut the presumption against means-plus-function treatment as to this
“multiplexer” term. See, e.g., ’874 Patent at 4:47-51 & 6:60-7:32. Also of note, Plaintiffs have
submitted an extrinsic technical dictionary that defines “multiplexer” as meaning “a device that
allows the interleaving of two or more signals to a single line or terminal.” Dkt. No. 181, Ex. 9,
The New IEEE Standard Dictionary of Electrical and Electronics Terms 829 (5th ed. 1993).
The Court therefore hereby finds that 35 U.S.C. § 112, ¶ 6 does not apply, and the Court
hereby construes “a multiplexer for converting between the E1 signal and the TCP/IP
signal” to have its plain meaning.
G. “decoders operable to decode synchronization control information from data arriving
from said link, to reconstruct a synchronized telephony protocol data stream”
Plaintiffs’ Proposed Construction

Defendants’ Proposed Construction

No construction needed

Indefinite

In the alternative, if the Court decides that this
term is subject to § 112, ¶ 6, Plaintiffs propose
the following construction:

Subject to § 112, ¶ 6

Function: “to decode synchronization control
information from data arriving from said link
and to reconstruct a synchronized telephony
protocol data stream”

Function: “regenerating non-data carrying time
slots during reconstruction of said datastream”
Structure: None

Structure: “Header Reader 59 and E1
Reconstructor 61 as depicted in Figure 2, and
equivalents”

- 51 -

Dkt. No. 161, Ex. A at 16-17. The parties submit that this term appears in Claim 11 of the ’874
Patent. Dkt. No. 161, Ex. A at 16-17.
Shortly before the start of the September 28, 2016 hearing, the Court provided the parties
with the following preliminary construction: “§ 112, ¶ 6 does not apply. Plain and ordinary
meaning.”
(1) The Parties’ Positions
Plaintiffs argue that “‘decoders’ are a well-known class of structures that convert coded
data to its original form.” Dkt. No. 181 at 30 (citation omitted). Alternatively, Plaintiffs argue
that ample corresponding structure is disclosed with reference to Figure 2 of the ’874 Patent. Id.
Defendants respond that “decoders” is a purely functional nonce term, and “[t]he
structures identified by Plaintiffs are a functionally-described black box, rather than any
structure.” Id.
Plaintiffs reply that “Defendants do not dispute Plaintiffs’ dictionary definition or that
decoders are a well-known class of structures.” Dkt. No. 190 at 10.
(2) Analysis
For substantially the same reasons discussed above as to the “converters” terms,
Defendants have failed to rebut the presumption against means-plus-function treatment as to this
“decoders” term. See, e.g., ’874 Patent at 7:20-31. Also of note, Plaintiffs have submitted an
extrinsic technical dictionary that defines “decoder” as meaning “[a] device or a program routine
that converts coded data back into its original form.” Dkt. No. 181, Ex. 12, Microsoft Press
Computer Dictionary 114 (2d ed. 1994).
The Court therefore hereby finds that 35 U.S.C. § 112, ¶ 6 does not apply, and the Court
hereby construes “decoders operable to decode synchronization control information from
- 52 -

data arriving from said link, to reconstruct a synchronized telephony protocol data
stream” to have its plain meaning.
VI. CONCLUSION

.
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit.
The parties are ordered to not refer to each other’s claim construction positions in the
presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain from
mentioning any portion of this opinion, other than the actual definitions adopted by the Court.
The Court’s reasoning in this order binds the testimony of any witnesses, and any reference to
the 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 17th day of October, 2016.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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APPENDIX A
Parties’ Agreement

Term
“first synchronous data communication protocol”
(’874 Patent, Claim 1)
“second asynchronous data communication protocol”
(’874 Patent, Claim 1)
“continuation flag”

“a data communication protocol that
relies on the temporal relationship
between time slots”
“a data communication protocol that
does not rely on the temporal
relationship between time slots”
“a data field that indicates additional
messages follow the current message”

(’073 Patent, Claims 3 and 6)

Dkt. No. 161 at 2; Dkt. No. 196, Ex. A at 7.

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