Optis Wireless Technology, LLC et al v. ZTE Corporation et al
Filing
116
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 04/19/2016. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
OPTIS WIRELESS TECHNOLOGY LLC &
PANOPTIS PATENT MANAGEMENT,
LLC,
Plaintiffs,
v.
Case No. 2:15-cv-300-JRG-RSP
ZTE CORPORATION & ZTE (USA) INC.,
Defendants.
MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Plaintiffs Optis Wireless
Technology, LLC and PanOptis Patent Management, LLC (“Plaintiffs”) (Dkt. No. 66, filed on
December 22, 2015),1 the response of ZTE Corporation and ZTE (USA) Inc. (“Defendants”)
(Dkt. No. 78, filed on January 19, 2016), the reply of Plaintiffs (Dkt. No. 83, filed on January 27,
2016), and the sur-reply of Defendants (Dkt. No. 92, filed on February 9, 2016). The Court held
a hearing on claim construction and definiteness on February 17, 2016. Having considered the
arguments and evidence presented by the parties at the hearing and in their briefing, the Court
issues this Order.
1
Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
1
Table of Contents
I.
BACKGROUND ............................................................................................................... 4
II.
LEGAL PRINCIPLES ..................................................................................................... 5
A.
Claim Construction .......................................................................................................... 5
B.
Departing from the Ordinary Meaning of a Claim Term ................................................. 8
C.
Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) .................... 9
D.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)........................... 11
III.
CONSTRUCTION OF AGREED TERMS .................................................................. 12
IV.
CONSTRUCTION OF DISPUTED TERMS ............................................................... 13
A.
The ’631 Patent .............................................................................................................. 13
A-1. “model specific information” .............................................................................. 15
A-2. “object-oriented interface layer” ......................................................................... 18
A-3. The First Party and Third Party Terms................................................................ 21
A-4. “performing an executable operation, configured using said model
specific information, by a telephony software interface”.................................. 27
B.
The ’191 Patent .............................................................................................................. 30
B-1. “text message” ..................................................................................................... 31
B-2. “attachment” ........................................................................................................ 33
B-3. The Server Terms: “adding information to the text message that identifies
a server,” “sending the attachment to a server,” and “transmitting the
text message to the receiving terminal’s phone number based address” .......... 36
B-4. “means for querying a user of the mobile station regarding whether the
attachment is to be transmitted with the text message” .................................... 44
C.
The ’919 Patent .............................................................................................................. 48
C-1. “determination unit” ............................................................................................ 51
C-2. “[to determine / determining] a resource of downlink, to which a
response signal transmitted from the base station is mapped, from an
index of the allocated resource block” .............................................................. 56
2
C-3. “response signal” ................................................................................................. 58
C-4. “and the response signal is mapped to the subcarrier group” ............................. 60
D.
The ’792 Patent: “with [an/the] orthogonal sequence” and “which is associated with
[the/an] orthogonal sequence” ............................................................................. 65
E.
The ’557 Patent .............................................................................................................. 73
E-1. “receiving unit” and “control information” ......................................................... 76
E-2. “selecting unit” .................................................................................................... 82
E-3. “which are respectively associated with different amounts of data or
reception qualities” ............................................................................................ 87
E-4. “different amounts of data or reception qualities” .............................................. 91
V.
CONCLUSION ............................................................................................................... 93
3
I.
BACKGROUND
Plaintiffs allege infringement of U.S. Patents No. 6,356,631 (the “’631 Patent”), No.
6,865,191 (the “’191 Patent”), No. 8,064,919 (the “’919 Patent”), No. 8,199,792 (the “’792
Patent”), and No. 8,411,557 (the “’557 Patent”) (collectively, the “Asserted Patents”). Generally,
the Asserted Patents are directed to computer- and radio-implemented telecommunications.
The ’631 Patent is entitled “Multi-Client Object-Oriented Interface Layer.” The
application leading to the ’631 Patent was filed on September 24, 1998 and the patent issued on
March 12, 2002.
The ’191 Patent is entitled “System and Method for Sending Multimedia Attachments to
Text Messages in Radiocommunication Systems.” The application leading to the ’191 Patent
claims priority to a provisional application filed on August 12, 1999 and the patent issued on
March 8, 2005.
The ’919 Patent is entitled “Radio Communication Base Station Device and Control
Channel Arrangement Method.” The application leading to the ’919 Patent claims priority to a
number of Japanese patent applications through a series of continuation applications. The earliest
Japanese application was filed on March 23, 2007 and the ’919 Patent issued on November 22,
2011.
The ’792 Patent is entitled “Radio Communication Apparatus and Response Signal
Spreading Method.” The application leading to the ’792 Patent claims priority to a number of
Japanese patent applications through a series of continuation applications. The earliest Japanese
application was filed on June 15, 2007 and the ’792 Patent issued on June 12, 2012.
The ’557 Patent is entitled “Mobile Station Apparatus and Random Access Method.” The
application leading to the ’557 Patent claims priority to a Japanese patent application through a
4
series of continuation applications. The Japanese application was filed on March 20, 2006 and
the ’557 Patent issued on April 2, 2013.
II.
LEGAL PRINCIPLES
A.
Claim Construction
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. Id. at 1313; 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. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its 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 patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy
presumption that claim terms carry their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of
the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
5
415 F.3d at 1314. Other asserted or unasserted claims can also 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.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). 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)); see also Phillips, 415
F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the
specification—even if it is the only embodiment—into the claims absent a clear indication in the
intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim
construction because, like the specification, the prosecution history provides evidence of how the
U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415
F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation
6
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction purposes.” Id. at
1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
(ambiguous prosecution history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also 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 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). 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 underpinnings” of claim construction that we discussed in
Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
7
B.
Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term
either in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758
F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure
from the plain meaning in two instances: lexicography and disavowal.”). The standards for
finding lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner,
669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must
appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed
meaning of a claim term by including in the specification expressions of manifest exclusion or
restriction, representing a clear disavowal of claim scope.”) “Where an applicant’s statements are
amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.”
2
Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
8
3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013); see also
Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (“When the prosecution
history is used solely to support a conclusion of patentee disclaimer, the standard for justifying
the conclusion is a high one.”).
C.
Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) 3
A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
. . . for performing a specified function” and that an act may be claimed as a “step for performing
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for”
terms, and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context
of the entire specification, to denote sufficiently definite structure or acts for performing the
function. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
Cir. 2015) (§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification,
recites sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at
1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson,
792 F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by
persons of ordinary skill in the art to have sufficiently definite meaning as the name for
3
Because the applications resulting in the Asserted Patents were filed before September 16,
2012, the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA
version of § 112.
9
structure”); Masco Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes
an “act” corresponding to “how the function is performed”); Personalized Media Commc’ns,
L.L.C. v. Int’l Trade Comm’n, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply
when the claim includes “sufficient structure, material, or acts within the claim itself to perform
entirely the recited function . . . even if the claim uses the term ‘means.’” (quotation marks and
citation omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.” Id. A “structure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history clearly links or
associates that structure to the function recited in the claim.” Id. The focus of the “corresponding
structure” inquiry is not merely whether a structure is capable of performing the recited function,
but rather whether the corresponding structure is “clearly linked or associated with the [recited]
function.” Id. The corresponding structure “must include all structure that actually performs the
recited function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005). However, § 112 does not permit “incorporation of structure from the
written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
10
For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
D.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 4
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “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). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of
any claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at
2130 n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus,
Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc.,
783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective
term is used in a claim, “the court must determine whether the patent’s specification supplies
some standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc.,
4
Because the applications resulting in the Asserted Patents were filed before September 16,
2012, the effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA
version of § 112.
11
417 F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as
indefinite if the claim fails to disclose adequate corresponding structure to perform the claimed
functions. Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary
skill in the art “would be unable to recognize the structure in the specification and associate it
with the corresponding function in the claim.” Id. at 1352.
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the following constructions set forth in their Amended Joint
Claim Construction Chart Pursuant to P.R. 4-5(d) (Dkt. No. 104):
Term5
“line device”
’631 Patent Claim 10
“allocation information indicating one or a
plurality of allocated resource block(s) of
uplink”
downlink channel
’919 Patent Claims 1, 10
“resources”
“allocation information indicating one or a
plurality of resource block(s) of uplink
allocated to a mobile station”
’919 Patent Claims 1, 10
“resource of downlink”
Agreed Construction
“a hardware device that provides access to a
communications service”
downlink channels
’919 Patent Claims 1, 10
5
For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest level claim in each dependency chain is listed, and (2) only asserted
claims identified in the parties’ Amended Joint Claim Construction Chart Pursuant to P.R. 4-5(d)
(Dkt. No. 104) are listed.
12
Term5
“wherein: the indices of a plurality of the
consecutive resource blocks are respectively
associated with a plurality of the resources
which are different in a frequency domain”
Agreed Construction
wherein: the indices of a plurality of the
consecutive resource blocks are associated
one-to-one with a plurality of the resources
which are different in a frequency domain
’919 Patent Claims 1, 10
The Court adopts the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ positions and the Court’s analysis as to the disputed terms are presented
below.
A.
The ’631 Patent
In general, the ’631 Patent is directed to technology for facilitating software applications’
communications over telephonic systems by improving the telephony software interface through
object-oriented programming. ’631 Patent col.1 ll.5–10, col.2 ll.46–59. The telephony software
interface is the interface between the applications and a telephony system’s line devices. Id. at
col.1 ll.41–54, col.1 l.65–col.2 l.11. Line devices are used to access the telephony system’s
communication channels and it includes things such as a public switched telephone network
(PSTN), integrated services digital network (ISDN), and T1/E1 lines. Id. at col.1 ll.41–54.
Object-oriented programming utilizes software “objects” that include data as well as instructions
for manipulating the data. Objects include the program components’ attributes, relationships, and
methods. Id. at col.2 ll.28–34.
With reference to Figure 3, reproduced
and annotated by the Court, the patent describes
an exemplary object-oriented interface layer
(310, in blue) that acts an intermediary between
13
’631 Patent, Figure 3
application programs (105, in yellow) and the telephony software interface (305, in green) to the
line devices (110, in red). Id. at col.4 ll.42–65. This interface layer performs a number of
functions meant to improve the system by removing the need to conform applications to the
specification of the telephony software interface and by creating a single point of contact for the
telephony software interface so as to reduce the message traffic between the interface and the
applications. Id. at col.2 ll.25–28, col.2 ll.43–49, col.4 ll.31–41, col.4 l.56 – col.5 l.35.
The abstract of the ’631 Patent provides:
The present invention is directed to a system, method, and apparatus for adding
the benefit of object-oriented programming to conforming application programs
to the specifications of telephony software interfaces and reducing the traffic load
from messages generated and sent by line devices to application programs. An
object-oriented interface layer is inserted between the application program which
accepts objects from the application programs and causes the telephony software
interface to perform a standard set of operations. From the standpoint of the
telephony software interface, the object-oriented interface layer is the application
program utilizing the line devices, thus causing the line devices to generate a
single message to the object-oriented interface layer which distributes the
message to the appropriate application programs. Accordingly, the traffic load
caused by the generation of messages is reduced.
Claims 1 and 10 are reproduced here as representative claims.
14
A-1.
“model specific information”
Disputed Term
Plaintiffs’ Proposed
Construction
“information about the
particular line device”
“model specific
information”
Defendants’ Proposed
Construction
“specifications for the model
of the line device”
’631 Patent Claim 10
The Parties’ Positions
Plaintiffs submit that “model specific information” is described and claimed as going
from the line device to the application. Dkt. No. 66 at 14–15. This, according to Plaintiffs, is in
contrast to the “model specific details” which are described and separately claimed as going from
the application to the line device. Id. at 15–16 (citing Claim 1). Plaintiffs argue that while the
“model specific details” may include specifications of the line-device model, the “model specific
information” does not necessarily include such specifications. Id. Instead, Plaintiffs contend, the
“model specific information” is information about the particular line device, such as whether it is
connected to a network. Id. at 15.
In addition to the claims, Plaintiffs cite the following intrinsic evidence to support their
position: ’631 Patent, at [57] Abstract, col.1 l.55 – col.2 l.16, col.2 ll.24–27, col.3 l.34 – col.4
l.32, col.4 ll.34–35, col.4 ll.50–53, col.5 ll.32–34.
Defendants respond that their proposed construction gives effect to the word “model” in
the “model specific information” and that Plaintiffs’ proposed construction would improperly
flip the plain meaning of “model” to instead mean a “particular” device. Dkt. No. 78 at 29.
Defendants argue that contrary to Plaintiffs’ representation, the ’631 Patent neither teaches nor
claims sending model specific details from the application program. Id. at 29–30. Instead,
Defendants contend, the patent teaches that the details are abstracted, not sent. Id. at 30.
15
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: ’631 Patent col.1 ll.55–64, col.3 ll.45–46.
Plaintiffs reply that the intrinsic record does not support a limitation requiring the model
specific information to include the specifications for the model. Dkt. No. 83 at 7–8. Rather,
Plaintiffs contend, the patent describes that the line device sends “useful” information. Id.
(quoting ’631 Patent col.5 ll.32–34). Plaintiffs reiterate that Defendants’ proposed construction
improperly ignores the difference between the “model specific details” of Claim 1, which the
patent describes as the “specific technical details of the particular line device,” and the “model
specific information” of Claim 10. Id. at 8 (quoting ’631 Patent col.3 ll.34–38, ll.45–46).
Analysis
The dispute turns on two main issues. First, the whether the model specific information is
necessarily about the model or whether it includes information about the particular line device
without reference to the model of that device. Second, whether the model specific information is
necessarily the specifications for the model of the line device. The Court understands this term to
mean information about the model of the line device, but the term is not coextensive with the
specifications of the model.
To give effect to “model specific,” “model specific information” must be construed as
information about the model of the line device. See Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006) (“claims are interpreted with an eye toward giving effect to all terms in the
claim”). Construing “model specific information” as information about the particular line device
fails to give effect to the “model specific” language.
Plaintiffs are correct that the patent describes messages flowing from the line device to an
application through the objected-oriented interface layer as “contain[ing] useful information for
16
the application programs 105 utilizing the sending line device 110.” This, however, does not
specially define “model specific information” as “information about the particular line device.”
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012) (requiring
that the patentee “clearly express an intent to redefine the term” or to “deviate from the ordinary
and accustomed meaning of a claim term”). Rather, “model specific information” plainly means
information about the specific model.
But “model specific information” should not be conflated with the model specifications.
To begin, the term “model specific information” is found in Claim 10 of the ’631 Patent, a
“method for transmitting messages from at least one line device to a plurality of applications.”
’631 Patent col.8 ll.8–9. The claim includes a line device generating a message that includes
model specific information. Id. at col.8 ll.12–14. The message is received at an object-oriented
interface layer. Id. at col.8 ll.15–16. And the message is forwarded to the appropriate application
programs. Id. at col.8 ll.17–25. Thus, the “model specific information” flows from the line
device to the application program.
The application program does not use the model specifications. The patent describes that
model specifications (or “model-specific technical details”) are abstracted in the telephony
software interface. ’631 Patent col.1 l.65 – col.2 l.11, col.3 ll.45–67. This abstraction “is
advantageous because the application program 105 need not be aware of any of the specific
details of the line device 110.” Id. at col.4 ll.1–3; see also, id. at col.1 ll.55–64 (noting the
failings of requiring the application program to know technical details of the line device), id. at
col.3 ll.34–44 (same). So requiring the “model specific information” sent to the application
programs to necessarily include model specifications improperly threatens to exclude an
exemplary embodiment in which the application program specifically does not know the details
17
of the line device. C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 865 (Fed. Cir. 2004)
(“[a] construction that excludes a preferred embodiment is rarely, if ever, correct”). And Claim 1
refers to abstracting such details (at a dynamic link library in the object-oriented interface layer)
as “abstracting model specific details.” Id. at col.6 ll.43–46; see also, id. at col.7 ll.20–23 (Claim
4, using “model specific details” in a manner similar to Claim 1’s use). So equating “model
specific information” with model specifications (“model specific details”) would equate two
different terms without justification. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH &
Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“we must presume that the use of . . . different
terms in the claims connotes different meanings”).
Accordingly, the Court construes “model specific information” as follows:
“model specific information” means “information about the specific model of the
line device.”
A-2.
“object-oriented interface layer”
Disputed Term
“object-oriented interface
layer”
Plaintiffs’ Proposed
Construction
No construction necessary. Plain
and ordinary meaning.
Alternative:
’631 Patent Claim 10
Defendants’ Proposed
Construction
“an interface that
establishes a session with a
telephony software
interface”
“object-oriented software
that sits between user
applications and a telephony
software interface”
The Parties’ Positions
Plaintiffs submit that under its plain meaning, an “object-oriented interface layer” is
readily understood to have two characteristics, namely, it uses object-oriented programming and
it forms an interface layer. Dkt. No. 66 at 17–18. Plaintiffs argue that Defendants’ proposed
18
construction improperly limits the term to a single function (establishing a session with a
telephony software interface) and fails to account for the interface layer’s object-oriented nature.
Id.
In addition to the claims, Plaintiffs cite the following intrinsic evidence to support their
position: ’631 Patent, at [57] Abstract, col.1 ll.7–10, col.2 ll.46–50, col.4 ll.56–59, col.4 ll.61–65,
col.5 l.22, col.5 ll.34–36.
Defendants respond that the ’631 Patent expressly states that the “object-oriented
interface layer is an interface which establishes a session with the telephony software interface.”
Dkt. No. 78 at 31 (quoting ’631 Patent col. 4 ll.56–61). And Defendants further respond that they
do not dispute that the “object-oriented interface layer” is object-oriented, but they contend that
the Court should adopt the definition provided in the patent. Id. & n.17.
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: ’631 Patent col.4 ll.56–64.
Plaintiffs reply that Defendants’ proposed construction improperly focuses on one of
several functions of the “object-oriented interface layer” that are described in the ’631 Patent.
Dkt. No. 83 at 8.
Analysis
The parties appear to dispute whether an “object-oriented interface layer” necessarily
establishes a session with a telephony software interface and whether it is limited to that
function. The Court does not understand that an “object-oriented interface layer” must establish a
session with a telephony software interface or that it is limited to such a function.
The “object-oriented interface layer” is not specially defined in the patent as Defendants
propose. The ’631 Patent describes that—in “an exemplary software architecture embodying the
19
present invention”—“[t]he object-oriented interface layer 310 is an interface which establishes a
session with the telephony software interface 305.” ’631 Patent col.4 ll.46–61. That is, in the
exemplary embodiment, the object-oriented interface layer establishes a session with the
telephony software interface and performs a number of other listed functions in the embodiment.
Id. at col.4 ll.61–65. But this does not define the term “object-oriented interface layer” generally,
only what it does in the particular embodiment. See Thorner, 669 F.3d at 1366 (“It is likewise
not enough that the only embodiments, or all of the embodiments, contain a particular limitation.
We do not read limitations from the specification into claims; we do not redefine words. Only
the patentee can do that.”). Therefore, the intrinsic record does not show that an “object-oriented
interface layer” must establish a session with a telephony software interface.
Furthermore, the intrinsic evidence does not show that an “object-oriented interface
layer” is limited to the function of establishing a session with an interface. The purported
advantage of the object-oriented interface layer is not that it establishes a session, or that it
performs any of the specific functions listed in the description of the exemplary embodiment.
Rather, the advantage is that it incorporates object-oriented programming methodologies to
facilitate communication between an application and a line device. ’631 Patent col.1 ll.7–10,
col.2 ll.52–59. Defendants do not dispute that the “object-oriented interface layer” is objectoriented and an interface, as those terms are ordinarily used. Dkt. No. 78 at 31 & n.17.
Accordingly, the Court determines that “object-oriented interface layer” is not specially defined
as, or limited to, an interface that establishes a session with a telephony software interface as
Defendants propose. The Court determines that the term has the plain and ordinary meaning of
its constituent words and needs no further construction.
20
A-3.
The First Party and Third Party Terms
Disputed Term
“first party connection point”
’631 Patent Claim 10
Plaintiffs’ Proposed
Construction
“an interface that receives
messages for first party
applications”
Defendants’ Proposed
Construction
This term renders the claims
indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2.
“first party application program”
’631 Patent Claim 10
“appropriate first party
application programs”
’631 Patent Claim 10
“an application that
This term renders the claims
receives messages
indefinite under pre-AIA 35
pertaining to an individual
U.S.C. § 112, ¶ 2.
line device”
“first . . . party application
program”
’631 Patent Claim 11
“third party connection point”
’631 Patent Claim 10
“an interface that receives
messages for third party
applications”
This term renders the claims
indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2.
“an application that
receives messages
pertaining to multiple line
devices”
This term renders the claims
indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2.
“third party application
program”
’631 Patent Claims 10, 11
“appropriate third party
application programs”
’631 Patent Claim 10
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiffs submit “first party connection point,” “first party application,” and “appropriate
first party application” are defined in the ’631 Patent. Dkt. No. 66 at 18–20 (citing ’631 Patent
col.5 ll.40–44). According to Plaintiffs, “first party application” is used in the patent to denote an
application that receives messages generated by and pertaining to individual line devices. Id. at
21
19–20 (citing ’631 Patent col.5 ll.42–44). Plaintiffs contend that “first party connection point” is
used in the patent to denote an interface that receives messages for first party applications. Id. at
18–19 (citing ’631 Patent col.5 ll.40–44). Plaintiffs finally assert that an “appropriate” first party
application is something that is reasonably ascertainable to one of ordinary skill in the art. Id. at
20.
Plaintiffs similarly submit that “third party connection point,” “third party application,”
and “appropriate third party application” are defined in the ’631 Patent. Id. at 19–21 (citing ’631
Patent col.5 ll.47–55). According to Plaintiffs, “third party application” is used in the patent to
denote “application programs [] which generally have global, system level perspective and
involve most, if not all of the line devices.” Id. at 20–21 (quoting ’631 Patent col.5 ll.48–51).
“Third party connection point” is used in the patent to denote an interface that receives messages
for third party applications. Id. at 19 (citing ’631 Patent col.5 ll.47–55).
In addition to the claims, Plaintiffs cite the following intrinsic evidence to support their
position: ’631 Patent col.5 ll.40–44, col.5 ll.47–55, fig.3.
Defendants respond that “first party application,” and therefore “first party connection
point,” renders the claims indefinite because it is defined in the ’631 Patent as an application that
“generally involve[s] individual line devices.” Dkt. No. 78 at 31–32 (quoting ’631 Patent col.5
ll.42–44, emphasis added by Defendants). Defendants further respond that “third party
application,” and therefore “third party connection point,” renders the claims indefinite because
it is defined in the ’631 Patent as an application that “generally [has] global, system level
perspective and involve[s] most, if not all of the line devices.” Id. (quoting ’631 Patent col.5
ll.49–51, emphases added by Defendants). Defendants argue that “generally” and “most, if not
all” are terms of degree, that the patent does not provide any standard for measuring that degree,
22
and therefore the terms render the claims indefinite. Id. And Defendants also argue the Plaintiffs’
proposed constructions are wrong because they do not comport with the definitions of the terms
provided in the patent. Id. at 32. Specifically, Defendants argue that Plaintiffs misinterpret “most,
if not all of the line devices” as “multiple line devices.” Id. With respect to “appropriate” first
party and third party applications, Defendants submit that there is no guidance in the patent that
would inform whether a particular application is “appropriate” and therefore the “appropriate”
terms render the claims indefinite. Id. at 32–33.
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: 631 Patent col.5 ll.37–40, col.5 ll.42–44, col.5 ll.49–51.
With respect to the “application” and “connection point” terms, Plaintiffs reply that the
’631 Patent’s express definitions of the terms provide sufficient certainty to one of skill in the art
as to the scope of the claims. Dkt. No. 83 at 8 (citing Declaration of Robert Akl, D.Sc., in
Support of Plaintiffs’ Opening Claim Construction Brief 8 (Dkt. No. 83-1 at 9) (“Akl Decl.”)).
With respect to “appropriate . . . application programs,” Plaintiffs reply that in the context of the
claim language and description, the “appropriate” application programs are the applications to
which the line-device message should be forwarded. Id. at 9 (citing Akl. Decl. 9 (Dkt. No. 83-1
at 10)).
Plaintiffs cite further extrinsic evidence to support their position: Akl. Decl. (Plaintiffs’
Ex. J, Dkt. No. 83-1). In response to Dr. Akl’s declaration, Defendants cite further extrinsic
evidence to support their position: Declaration of Tipton Cole (Dkt. No. 105-1).
Analysis
The issues here are twofold. First, whether describing first party applications as
applications that “generally” involve individual line devices and third party applications as
23
applications that “generally” involve “most, if not all” line devices renders the claims indefinite.
Second, whether it is reasonably certain what constitutes an “appropriate” first party or third
party application. The Court finds that Defendants have not shown either issue renders any claim
indefinite.
The issue turns on the ’631 Patent’s approach to message-distribution. This approach can
be understood in the context of the prior-art, in which a line device sends separate messages to
each application program that is using the line device. The patent explains the prior-art approach:
As each application program conducts operations on the various line devices, the
line devices send messages to the application programs. In many cases, several
application programs simultaneously perform operation on a single line device.
Where the line device requires communication to the application programs, a
separate message is sent to each application program. Sending a separate message
to each application program results in excess traffic within the telephony software
interface.
’631 Patent col.2 ll.36–46. The patent further explains the prior-art approach:
Additionally, where the DLL 120 and TAPISRV 125 serve a number of
application programs 105, more than one application program 105 may conduct
operations on a line device 110. Responsive to certain events, the line device 110
send messages to the application programs 105. Where the line device 110
requires communication to the application programs 105, a separate message is
generated and sent to each application program performing operations on the line
device 110. Generating and sending a separate message to each application
program 105 results in excess traffic within the telephony software interface.
Id. at col.4 ll.31–41.
The patent’s approach to message-distribution, on the other hand, is meant to reduce the
traffic in the telephony software interface by routing all line-device messages through the objectoriented interface layer rather than sending the messages to the application programs directly.
From the standpoint of the Telephony Software Interface 305, the object-oriented
interface layer 310 is the program utilizing line devices 110, even though
application programs 105 are the programs which provide the information and
data transmitted on the line devices. Accordingly, when a line device 110 needs to
communicate information to the application program utilizing the line device, a
single message is generated and directed towards the object-oriented interface
24
layer 310. Because the messages contain useful information for the application
programs 105 utilizing the sending line device 110, the object-oriented interface
layer 310 must distribute the message to the appropriate application programs.
Id. at col.5 ll.24–36. The line-device messages are distributed to the “appropriate application
programs” using a “First Party Connection Point” or a “Third Party Connection Point,”
depending on the application program. Id. at col.5 ll.37–59. In this context, the “appropriate
application programs” are the applications to which the message is directed by the line device.
The patent states that the First Party Connection Point handles messages directed to “first
party applications” which are characterized by their association with individual line devices:
The First Party Connection Point 320 is an interface for receiving messages for
application programs 105 which generally involve individual line devices 110,
known as first party applications. A message from a line device 110 that needs to
be distributed to a first party application is routed to the First Party Connection
Point 320 which forwards the message to the appropriate application program
105.
Id. at col.5 ll.40–47.
The patent states that the Third Party Connection Point handles messages directed to
“third party applications” which are characterized by their association with most or all of the line
devices:
The Third Party Connection Point 325 is an interface for receiving messages for
application programs 105 which generally have global, system level perspective
and involve most, if not all of the line devices 110, known as third party
applications. Because third party applications have a global, system level
perspective, messages from most, if not all of the line device[s] 110 are relevant
to the proper operation of the third party application. Accordingly, any message
received by the object-oriented interface layer 310 from a line device 110 is
routed to the Third Party Connection Point 325. The Third Party Connection Point
325 then broadcasts the message to every third party application.
Id. at col.5 ll.47–59.
The Court understands the distinction between first party applications and third party
applications to be their perspective with respect to the system. Their association with the line
25
devices stems from this perspective. Third party applications have a global perspective; first
party applications do not. This can be understood with reference to Figure 3, which depicts a
system that includes a server 210 and multiple clients 205. A third party application program’s
perspective includes the entire system, and thus the third party application would be concerned
“with most, if not all” of the line-device messages. A first party application program’s
perspective is limited to the client, and thus the first party application would be concerned with a
limited subset of the line-device messages that generally come from an individual line-device
associated with the application program.
The Court understands “generally” in the context of the ’631 Patent’s explanation of first
party and third party applications to mean that the applicant recognized there are exceptions to
the stated rules but that the rules apply notwithstanding the exceptions; namely, a first party
application is associated with a single line device and a third party application is associated with
most if not all of the line devices. The Court does not perceive any uncertainty in the meaning of
“most, if not all” line devices. The plain meaning of this phrase is “most or all” line devices.
Accordingly, the Court construes the First Party and Third Party terms as follows:
“first party connection point” means “an interface for receiving messages for first
party application programs”;
“first party application program” means “application program that is associated
with a single line device”;
“appropriate first party application programs” means “first party application
programs to which the message is directed”;
“third party connection point” means “an interface for receiving messages for
third party application programs”;
26
“third party application program” means “application program that is associated
with most or all of the line devices”; and
“appropriate third party application programs” means “third party application
programs to which the message is directed.”
A-4.
“performing an executable operation, configured using said
model specific information, by a telephony software interface”
Disputed Term
“performing an executable
operation, configured using
said model specific
information, by a telephony
software interface”
Plaintiffs’ Proposed
Construction
“performing an executable
operation, using particular
information about the line
device received in the message
from the line device through a
telephony software interface”
Defendants’ Proposed
Construction
“the telephony software
interface uses the model
specific information when
performing an executable
operation”
’631 Patent Claim 10
The Parties’ Positions
Plaintiffs submit that the order of operation of the method of Claim 10 of the ’631 Patent,
the description of the invention, logic, and the context of the other claims dictates that the
executable operation is performed in an application program and not in the telephony software
interface. Dkt. No. 66 at 21–22. Plaintiffs argue that each step of Claim 10 is performed only
after the previous step is completed, and therefore they are performed in the order they are
written. Id. at 21. Plaintiffs further argue that the model specific information is passed from the
telephony software interface to an application program before the executable operation is
performed using the model specific information. According to Plaintiffs it is the application
program that has and uses the model specific information to perform the operation. Id. at 22.
Plaintiffs asserts that, in the context of the description of the invention, the only logical reason to
pass the model specific information to an application program is so the application program can
use the information in performing an operation. Id. Plaintiffs note that the ’631 Patent uses
27
language distinct from the Claim 10 term at issue to separately claim the telephony software
interface performing an executable operation. Therefore, the different language indicates that the
executable operation of Claim 10 is not performed by the telephony software interface. Id. (citing
Claim 1).
In addition to the claims, Plaintiffs cite the following intrinsic evidence to support their
position: ’631 Patent col.4 ll.59–61, col.5 ll.24–48, col.6 ll.56–57, col.8 ll.12–29.
Defendants respond that under the plain meaning of the claim language, the executable
operation is performed by a telephony software interface. Dkt. No. 78 at 33. Defendants further
respond that the ’631 Patent teaches that the telephony software interface performs the
executable operations in that it teaches that the “the object-oriented interface layer . . . causes the
telephony software interface [] to perform a number of operations.” Id. (quoting ’631 Patent
col.4 ll.61–65). Defendants submit that, in the course of prosecuting the application the led to the
’631 Patent, the patentee explained that it is the telephony software interface that performs the
executable operation, “Application objects are also received at the object-oriented interface, and
based on the application object and the details of the specific line device, an executable
operation is forwarded to the telephony software interface.” Id. at 33–34 (quoting ’631 Patent
File Wrapper May 29, 2001 Amendment 6 (Dkt. No. 79-7 at 7), emphasis added by Defendants).
Defendants argue the Plaintiffs’ proposed construction of this term is inconsistent with Plaintiffs’
proposed construction of “model specific information” in that Plaintiff proposes that “model
specific information” in the “performing” term means “particular information about the line
device” and otherwise proposes that “model specific information” means “information about the
particular line device.” Id. at 34.
28
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: ’631 Patent, at [57] Abstract, col.2 ll.51–59, col.4 ll.61–65; ’631 Patent File
Wrapper May 29, 2001 Amendment (Defendants’ Ex. 4-B, Dkt. No. 79-7).
Plaintiffs reply that while there is no dispute that the executable operation of Claim 1
occurs in the telephony interface as the messages are passed to the line devices, Claim 10 is
different because the messages are passed to the application programs. Dkt. No. 83 at 9.
Plaintiffs further reply that Defendants cite intrinsic evidence pertaining to the Claim 1
embodiment in an attempt to improperly limit Claim 10. Id. Thus, Plaintiffs contend, the
operation of Claim 10, in which the message is sent from the line device to the application, is
performed in the application.
Analysis
The issue here distills to whether the telephony software interface or the application
program performs the executable operation. The Court agrees with Defendants that the plain
meaning of the claim language dictates that the telephony software interface performs the
executable operation.
Commas have consequences. A plain reading of the limitation indicates that the
telephony software interface performs the executable operation. The phrases “performing an
executable operation” and “by a telephony software interface” are separated by the comma
clause “configured using said model specific information.” Reading this plainly, the Court
understands that the “configured” comma clause simply modifies the “executable operation” that
is performed “by a telephony software interface.” That is, the executable operation performed is
configured using the model specific information. Thus, under this plain reading, the Court
29
understands the limitation to mean “performing an executable operation by a telephony software
interface using the model specific information.”
The Court does not understand the surrounding claim language or the description of the
invention to preclude, or even counsel against, such a plain reading. For example, one of the
exemplary functions of the object-oriented interface is to cause the telephony software interface
to perform a “Drop Call” operation. ’631 Patent col.4 ll.59–65. So, even accepting Plaintiffs’
contention that the steps of Claim 10 must be performed in order, the last step in the method may
be to invoke an operation to end the call.6 Indeed, Plaintiffs have not identified any exemplary
embodiment in which the application executes an operation using the model specific
information.
Accordingly, the Court construes “performing an executable operation, configured using
said model specific information, by a telephony software interface” as follows:
“performing an executable operation, configured using said model specific
information, by a telephony software interface” means “performing an executable
operation by a telephony software interface using the model specific
information.”
B.
The ’191 Patent
In general, the ’191 Patent is directed to technology for sending attachments with text
messages. ’191 Patent col.1 ll.12–16, col.3 ll.33–
46. With reference to Figure 3, reproduced here
6
’191 Patent, Figure 3
The Court is not holding that the steps of Claim 10 must be performed in the order recited.
While some of the steps may logically proceed in the order recited, it is not clear that all do so. It
is clear that Claim 11, which depends from Claim 10, includes steps (registering and
unregistering the application programs with the object-oriented interface) that would not
logically follow the steps of Claim 10 in the order recited.
30
and annotated by the Court, the patent describes an exemplary system in which a text message
and attachment are sent to a recipient (34, in yellow), with the text message going to the recipient
through a text-message server (36, in green) and the attachment going to the recipient through an
attachment server (32, in blue). Id. at col.5 ll.20–36. The sender (30, in purple) adds information
to the message regarding the address of the attachment server. Id. at col.5 ll.9–19, col.5 ll.33–48.
The recipient may use this address information (e.g., a link) to download the attachment. Id. at
col.5 ll.48–55.
The abstract of the ’191 Patent provides:
Methods and systems for transmitting attachments to text messages without
turning terminals into e-mail clients are described. When an attachment is to be
transmitted, an address of an attachment server is appended to the text message.
The text message is then forwarded to the intended recipient, e.g., via an SMS
server, while the attachment is sent to the attachment server. Upon receipt of the
text message, the recipient can then download the attachment from the attachment
server using the address included in the text message.
Claims 17 through 20 are reproduced here as representative claims.
B-1.
Disputed Term
“text message”
Plaintiffs’ Proposed
Construction
31
Defendants’ Proposed
Construction
Disputed Term
“text message”
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
’191 Patent Claim 17
Defendants’ Proposed
Construction
“an electronic message
carrying user-readable
content that is limited to text”
The Parties’ Positions
Plaintiffs submit that the meaning of “text message” is readily apparent to both lay
persons and those of ordinary skill in the art, and therefore does not require construction. Dkt.
No. 66 at 9. Defendants respond that “text message” should be construed as it would be
understood in the context of the ’191 Patent and as of 1999, the time of the invention. Dkt. No.
78 at 34–35. Defendants argue that a lay juror in 2016 could misunderstand “text message” to
include information not found in a text message, as that term was understood in 1999. Id. at 35.
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’191 Patent col.1 ll.24–26, col.3 ll.4–11, col.4 ll.63–
67. Extrinsic evidence: Text Messaging, Wikipedia, https://en.wikipedia.org/wiki/Text_
messaging (Defendants Ex. 5-C, Dkt. No. 80-1).
Plaintiffs reply that the issue is whether the meaning of “text message” is limited to userreadable content. Dkt. No. 83 at 5. Plaintiffs contend that at the time of the invention, text
messages contained fields that were not part of the user-readable content. Id. Plaintiffs cite
further intrinsic evidence to support their position: ’191 Patent col.5 ll.20–23.
Analysis
The issue here is whether a text message may carry information other than user-readable
text. The Court understands that the plain and ordinary meaning of “text message,” as reflected
in the ’191 Patent, is not limited to user-readable text.
32
The Court agrees with Defendants that “text message” must be understood as of the time
the application for the ’191 Patent. But based on the record, the Court does not understand the
term “text message” to contain Defendants proposed limitations. For example, the Court
understands that the “text message” of the patent includes, but is not limited to, the SMS
messages described in the patent. ’191 Patent col.1 ll.12–27, col.7 ll.11–20. These messages
include information that is not found in the user-readable portion of the message. For instance,
an SMS message originating from a mobile device includes, as part of its overhead, the address
of the service center assigned to the mobile and an identification of the intended recipient of the
message. ’191 Patent col.1 ll.46–50, col.2 ll.23–26. Further, the patent explains that the SMS
message has a text “portion” indicating that the message is not coextensive with the text of the
message. Id. at col.5 ll.29–33. The patent explains that the text message may include a “link” to
the attachment server, indicating that that message may contain more than just “text.” Id. at col.5
ll.48–52.
Accordingly, the Court finds that “text message” is not limited to user-readable text, as
Defendants’ propose, that it has its plain and ordinary meaning, and that it does not need further
construction.
B-2.
“attachment”
Disputed Term
“attachment”
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
Defendants’ Proposed
Construction
“a file that is separate from
the text message”
’191 Patent Claim 17
The Parties’ Positions
Plaintiffs submit that “attachment” has a widely accepted plain and ordinary meaning and
does not require construction. Dkt. No. 66 at 9–10. Plaintiffs also submit that the ’631 Patent
33
discloses this concept, which was well known at the time of the invention, in the context of email. Id. (citing ’631 Patent col.3 ll.4–5). Plaintiffs argue that Defendants’ proposed construction
improperly injects ambiguity and complexity into the term in that it is unclear what it means for
a file to be “separate” from the text message. Id. at 10. Plaintiffs further argue that there is
nothing in the intrinsic evidence that justifies straying from the plain and ordinary meaning of
“attachment” and defining it as a file separate from the text message. Id. In addition to the
claims, Plaintiffs cite the following intrinsic evidence to support their position: ’191 Patent col.3
ll.4–5.
Defendants respond that construing “attachment” as that term is used in the context of email would improperly exclude the exemplary embodiment in which a link to the “attachment” is
part of the text message but the linked-to file is not itself part of the message. Dkt. No. 78 at 35–
36 (quoting ’191 Patent col.3 ll.34–46). In addition to the claims, Defendants cite the following
intrinsic and extrinsic evidence to support their position. Intrinsic evidence: ’191 Patent col.3
ll.34–46. Extrinsic evidence: Julie K. Peterson, The Telecommunications Illustrated Dictionary
(2d ed. 2002) (“attachment”) (Defendants’ Ex. 5-D, Dkt. No. 80-2).
Plaintiffs reply that Defendants’ proposed construction would improperly include files
that are not associated with the text message, so long as they are separate from the text message.
Dkt. No. 83 at 5. Plaintiffs contend that the patent does not require that the text and attachment
be transmitted independently of one another, regardless of where each is received. Id.
Analysis
The issue is whether an “attachment” is necessarily separate from the text message at all
points along the transmission path. The Court does not find the intrinsic evidence to require such
a limitation.
34
The Court understands that “attachment” is used in the ’191 Patent according to its
ordinary and customary meaning. For instance, the term is used in the context of contrasting email and text messages with respect to their ability to communicate attachments as part of the
message:
With the advent of the Internet, e-mail having multimedia attachments is a service
that is growing in popularity with consumers. Today, although the SMS
techniques described above provide functionality which is comparable to the text
messaging attribute of e-mail, there exists no mechanism which would permit
transmission or reception of an attached file, e.g., image files or audio files, by a
remote, wireless terminal.
’191 Patent col.3 ll.4–11. Thus, while the patentee noted the deficiencies of then-existing SMS
technology with respect to communicating attachments, it did not redefine “attachment” as
anything other than its plain and ordinary meaning. See Thorner v. Sony Comput. Entm't Am.,
LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) (“The patentee is free to choose a broad term and
expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly
redefines the term or disavows its full scope.”).
Further, the Court understands that an attachment may be an integral part of the message
to which it is attached. See, e.g., Julie K. Peterson, The Telecommunications Illustrated
Dictionary 71 (2d ed. 2002) (“attachment”) (Dkt. No. 80-2 at 5.) But the Court understands that
an “attachment” does not have to be embedded in the message to which it is attached. See id.
(noting that “the message text part of many email systems cannot transcribe or transmit 8-bit
binary code” so that binary files have to be sent as attachments). Thus, the Court does not
understand any exemplary embodiment of the ’191 Patent to be excluded under the plain and
ordinary meaning of “attachment.”
35
Accordingly, the Court determines that “attachment” is not limited such that it is separate
from the text message, as Defendants’ propose. The Court finds that “attachment” has its plain
and ordinary meaning and that it does not need further construction.
B-3.
The Server Terms: “adding information to the text message that
identifies a server,” “sending the attachment to a server,” and
“transmitting the text message to the receiving terminal’s phone
number based address”
Disputed Term
“adding information to the
text message that identifies
a server”
’191 Patent Claim 17
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
PanOptis agrees that the two
claim references to “a server”
can be the same server.
Defendants’ Proposed
Construction
Indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2 unless
PanOptis agrees that the two
claim references to “a server”
are the same server.
Provisional construction:
“sending the attachment to a No construction necessary.
server”
Plain and ordinary meaning.
’191 Patent Claim 17
PanOptis agrees that the two
claim references to “a server”
can be the same server.
“inserting a server
identity in the userreadable content of the
text message”
Indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2 unless
PanOptis agrees that the two
claim references to “a server”
are the same server.
Provisional construction:
“transmitting the text
message to the receiving
terminal’s phone number
based address”
No construction necessary.
Plain and ordinary meaning.
’191 Patent Claim 17
36
“sending the attachment
to the server separately
from transmitting the text
message”
“transmitting the text
message so that the text
message, including the
information identifying the
server, is configured to arrive
at the receiving terminal’s
phone number based address”
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
As to the term “adding information to the text message that identifies a server,” Plaintiffs
submit its meaning is readily apparent to a lay person and does not need to be construed. Dkt.
No. 66 at 10. Plaintiffs further submit that the “server” in this term does not need to be the same
server as the one separately recited in Claim 17. Id. Plaintiffs argue that Defendants’ proposed
construction improperly conflicts with the claim language and strays from the plain meaning of
the term because it requires the server-identifying information be in the “user-readable content of
the text message.” Id.
With respect to the term “sending the attachment to a server,” Plaintiffs submit that the
term does not need to be construed, and that Defendants’ provisional construction improperly
requires that the attachment be sent “separately from transmitting the text” without any support
in the intrinsic record for such a limitation. Id. at 11. Plaintiffs reiterate that Defendants’ serverbased indefiniteness position is unsupported by the patent. Id.
With respect to the term “transmitting the text message to the receiving terminal’s phone
number based address,” Plaintiffs submit that the term consists of words with plain and ordinary
meanings. Plaintiff asserts that the meaning of the combination of words is also readily apparent.
Id. at 11–12. Plaintiffs argue that Defendants’ proposed construction changes the meaning of the
term rather than clarifies its meaning. Id. at 12. Plaintiffs contend that Defendants’ proposed
construction improperly imports limitations from the exemplary embodiments into the claims
because it requires the text message be configured to include information identifying the server
and be configured to arrive at the receiving terminal’s phone number based address. Id. In
37
addition to the claims, Plaintiffs cite the following intrinsic evidence to support their position:
’191 Patent col.3 ll.39–40, col.4 l.27–col.5 l.36.
Defendants respond that the two recited servers in Claim 17 must be the same server or
the claim is inoperable. Dkt. No. 78 at 36. Defendants argue that the ’191 Patent states that the
“attachment” is sent to a server and that the server’s address is separately sent to the user in a
text message so that the user can retrieve the attachment. Id. (citing ’191 Patent col.5 ll.48–55,
fig.3). According to Defendants, if the server identified in the text message is not the same server
as that storing the attachment, the user will not be able to retrieve the attachment. Id. at 36–37.
Defendants contend that this identity of servers was recognized by the examiner and the patentee
in the prosecution history. Id. & n.28.
With respect to “adding information to the text message that identifies a server” and
“transmitting the text message to the receiving terminal’s phone number based address,”
Defendants respond that taken together, these terms allow the user to retrieve the attachment
from the server. Id. at 37. Defendants contend that in prosecuting the application that led to the
’191 Patent, the patentee explained that the text message identified the server where the
attachment was sent. Id. at 37–38 (quoting ’191 Patent File Wrapper June 30, 2004 Amendment
14 (Dkt. No. 79-9 at 12)). Defendants contend that one of the reasons the examiner allowed the
patent was that the claimed invention retrieves the attachment from the server using the server
identification in the text message. Id. at 38 (quoting ’191 Patent File Wrapper Notice of
Allowability 2–3 (Dkt. No. 79-9 at 3–4)). Defendants argue that the construction of the
“transmitting” term must make clear that the server-identifying information reaches the recipient
phone or the claim is inoperable. Id. Defendants also argue the “adding information” term must
38
be construed to clarify that the server-identifying information be part of the text message’s
readable content, else the claim is inoperable. Id. at 38–39.
With respect to “sending the attachment to a server,” Defendants respond that the essence
of the ’191 Patent’s invention is that it sends the attachment separate from the text message—and
that the problem the invention solved was the inability to send a text message and attachment
together. Id. at 39–40. Defendants argue the separation of the attachment from the text message
is reflected in the claims, which separately recite “sending the attachment” and “transmitting the
text message.” Id. at 39. Defendants further argue certain limitations are rendered nonsensical if
the attachment and text message are sent together, namely, the steps of “associating a text
message with an attachment,” and “adding information to the text message that identifies a
server” that holds the attachment would not be necessary if the attachment is part of the same
transmitted data unit as the text message. Id. at 40.
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: ’191 Patent at [57] Abstract, col.1 ll.43–54, col.3 ll.41–46, col.5 ll.22–25, col.5
ll.30–34, col.5 ll.48–55, fig.3; ’191 Patent File Wrapper Notice of Allowability (Defendants’ Ex.
5-B, Dkt. No. 79-9 at 2–5), June 30, 2004 Amendment (Defendants’ Ex. 5-B, Dkt. No. 79-9 at 6–
14.
Plaintiffs reply that Defendants’ proposed constructions requiring a single server
excludes the exemplary embodiment depicted in Figure 3 of the ’191 Patent. That embodiment
shows one server for the text and a second server for the attachment. Dkt. No. 83 at 5–6.
Plaintiffs assert that the claim allows the attachment server and text server to be the same server
or be separate servers. Plaintiffs assert that this is not indefinite. Id.
39
With respect to “adding information to the text message that identifies a server,”
Plaintiffs reply that nothing in the intrinsic record justifies construing the claim to require the
information be in the user-readable portion of the text message. Id. at 7. Plaintiffs contend that at
the time of the information, text messages included information that was not part of the userreadable content. Id. (citing ’191 Patent col.5 ll.20–33.)
With respect to “sending the attachment to a server,” Plaintiffs reply that Claim 17
expressly recites associating the attachment and the text message and that “transmitting” and
“sending” are not used in the claim to indicate that text message and attachment are separately
sent, but rather to indicate the text message and attachment take different paths to the receiving
phone. Id.
With respect to “transmitting the text message to the receiving terminal’s phone number
based address,” Plaintiffs reply the term is unambiguous and Defendants’ proposed construction
improperly attempts to define the claimed invention by the specification rather than by the
claims. Id. at 6. Plaintiffs contend that what happens at the receiving phone is irrelevant to Claim
17, which is directed to a sending phone, and that Defendants’ proposed construction would limit
that claim based on what happens at the receiving phone without justification for such a
limitation in the intrinsic record. Id.
Analysis
There are four main issues in dispute with respect to these terms. First, whether the two
instances of “a server” recited in Claim 17 necessarily refer to the same server. Second, whether
the server-identifying information is necessarily in the user-readable content of the text message.
Third, whether the attachment is necessarily sent separately from transmitting the text message.
40
Fourth, whether the claim requires that the server-identifying information reaches the recipient
phone.
To begin, the Court does not understand that the two instances of “a server” must refer to
the same server. The plain meaning of the claim language does not support such a construction.
Defendants’ reliance on the examiner’s Reasons for Allowance to support such a limitation is
unavailing because an examiner’s unilateral statement cannot alone work a disclaimer to limit
the claims. Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345–47 (Fed. Cir. 2005). The
patentee only described the prior art in broad terms, therefore, nothing the patentee said in the
prosecution history was used to distinguish the invention from that prior art. The patentee did not
make a disavowal of scope to justify the same-server limitation. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“for prosecution disclaimer to attach, our
precedent requires that the alleged disavowing actions or statements made during prosecution be
both clear and unmistakable”); 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315,
1326 (Fed. Cir. 2013) (“Where an applicant’s statements are amenable to multiple reasonable
interpretations, they cannot be deemed clear and unmistakable.”). Finally, there is no compelling
reason to believe the claim is inoperable if the two instances of “a server” do not refer to the
same server. For example, the Court understands that the invention can operate by sending the
attachment to one server and that server forwarding the attachment to a second server identified
in the text message. Even if the exemplary embodiments can be interpreted such that the two
servers would be the same, it is the claims, and not the preferred embodiments, that define the
scope of the invention. See Thorner, 669 F.3d at 1366 (“It is likewise not enough that the only
embodiments, or all of the embodiments, contain a particular limitation. We do not read
41
limitations from the specification into claims; we do not redefine words. Only the patentee can
do that.”).
Similarly, the Court rejects Defendants’ proposal to require the server-identifying
information be inserted into the user-readable content of the text message. As set forth above, the
Court does not understand a “text message” to be only user-readable text. And the Court does not
understand the plain meaning of “adding information to the text message” to necessarily require
that the information be inserted into the user-readable content of the message. Neither the
prosecution history statements cited by Defendants nor the descriptions of the exemplary
embodiments justify importing such a limitation into the claims. See Salazar, 414 F.3d at 1345–
47; Omega Eng’g, 334 F.3d at 1325–26; Thorner, 669 F.3d at 1366. Indeed, the patent explains
that the server-identifying information may be “appended” to the text message. ’191 Patent col.3
ll.39–41. While “inserting” and “appending” both constitute “adding,” the Court does not
understand “inserting” and “appending” to be synonymous. The patent describes that in an
exemplary embodiment, the recipient may receive “a message containing the text message, the
link to the server 32 where the [attachment] is stored and, optionally, a file type associated with
the attachment.” Id. at col.5 ll.48–52. This indicates that the “link”—the server-identifying
information—is not necessarily inserted into the user-readable content of text message. Thus,
Defendants’ proposed construction threatens to exclude the embodiment, and a “construction that
excludes a preferred embodiment is rarely, if ever, correct.” C.R. Bard, Inc. v. United States
Surgical Corp., 388 F.3d 858, 865 (Fed. Cir. 2004).
With respect to “sending the attachment to a server” and “transmitting the text message to
the receiving terminal’s phone number based address,” the Court finds that these limitations do
not require the attachment and text message be sent from the mobile separately or that the text
42
message actually reach the receiving terminal. Even if the exemplary embodiments show the
attachment and text message separately issuing from the mobile, that alone is not sufficient to
read the limitation into the claims. Thorner, 669 F.3d at 1366 (“It is likewise not enough that the
only embodiments, or all of the embodiments, contain a particular limitation. We do not read
limitations from the specification into claims; we do not redefine words. Only the patentee can
do that.”).
Further, the Court does not understand separately reciting sending and transmitting means
that they must be distinct. See, e.g., In re Kelley, 305 F.2d 909, 915–16 (C.C.P.A. 1962) (“The
fact that one or more structural elements performing more than one function are common to the
mechanisms which are recited separately in the claims does not prevent the claims from being
sufficiently supported by the disclosure.”); Intellectual Prop. Dev., Inc. v. UA-Columbia
Cablevision of Westchester, Inc., 336 F.3d 1308,1320 n.9 (Fed. Cir. 2003) (“we see no reason
why, as a matter of law, one claim limitation may not be responsive to another merely because
they are located in the same physical structure”); Powell v. Home Depot, 663 F.3d 1221, 1231–
32 (Fed. Cir. 2011) (rejecting the argument that a claim “can only be infringed by a device that
has separate structures corresponding to the distinct claim elements”). Indeed, Claim 20, which
depends from Claim 17, indicates the attachment may be “transmitted with the text message.”
’191 Patent col.8 ll.62–65 (emphasis added). Critically, the Court does not find the invention
addresses the failings of the prior art by sending the message and the attachment independently
from the mobile. Rather, the invention teaches that the text message and attachment reaching the
recipient via different paths.
Finally, Claim 17 is directed to a component of the described embodiments: the sending
mobile station. The claim is directed to a processor for associating an attachment with and
43
adding server-identifying information to a text message. The claim is further directed to a
transceiver that is configured to transmit the text message to a particular address. The claim is
not directed to receipt of the text message or the associated attachment. The Court declines
Defendants’ invitation to inject any receipt limitations into the Claim.
Accordingly, the Court rejects Defendants’ proposed limitations of (1) requiring the two
instances of “a server” to refer to the same server, (2) “inserting a server identity in the userreadable content of the text message,” (3) “separately from transmitting the text message,” and
(4) “configured to arrive at the receiving terminal’s phone number based address.” Each of the
terms “adding information to the text message that identifies a server,” “sending the attachment
to a server,” and “transmitting the text message to the receiving terminal’s phone number based
address” has its plain and ordinary meaning, and does not need further construction.
B-4.
“means for querying a user of the mobile station regarding
whether the attachment is to be transmitted with the text
message”
Disputed Term
“means for querying a user
of the mobile station
regarding whether the
attachment is to be
transmitted with the text
message”
Plaintiffs’ Proposed
Construction
35 U.S.C. § 112, ¶ 6.
Structure: Querying
algorithm and/or equivalents
thereof, as shown in Fig. 2
and described in col./line
5:4-15
’191 Patent Claim 20
Function: querying a user
regarding whether to
transmit the attachment with
the text message
Defendants’ Proposed
Construction
35 U.S.C. § 112, ¶ 6.
Indefinite.
Structure: Indefinite due to
lack of sufficient structure
disclosed.
Function: “querying a user of
the mobile station regarding
whether the attachment is to be
transmitted with the text
message”
The Parties’ Positions
Plaintiffs submit that at Figure 2 and the accompanying text in the ’191 Patent provides
structure for querying the user regarding whether the attachment is to be transmitted with the text
44
message. Dkt. No. 66 at 12–13. Specifically, Plaintiffs submit that the patent states that “the
terminal can ask the user whether an attachment file should be included” or that “a menu
selection item or keypad stroke combination may be invoked by the user (without prompting) to
add the attachment.” Id. (quoting ’191 Patent col.5 ll.9–13). In addition to the claims, Plaintiffs
cite the following intrinsic evidence to support their position: ’191 Patent col.3 ll.55–58, col.5
ll.9–13, fig.2.
Defendants respond that the ’191 Patent does not meet § 112, ¶ 6’s standard for
disclosure of a structure for a computer-implemented function and is therefore indefinite. Dkt.
No. 78 at 40–41. In addition to the claims, Defendants cite the following intrinsic evidence to
support their position: ’191 Patent col.5 ll.4–19.
Plaintiffs reply that the ’191 Patent’s algorithm connotes sufficient structure. Dkt. No. 83
at 7 (citing Akl Decl. 7–8 (Dkt. No. 83-1 at 8–9)). Plaintiffs cite further extrinsic evidence to
support their position: Akl. Decl. (Plaintiffs’ Ex. J, Dkt. No. 83-1).
In response to Dr. Akl’s declaration, Defendants cite further extrinsic evidence to
support their position: Declaration of Tipton Cole (Dkt. No. 105-1).
Analysis
The issue is whether the ’191 Patent adequately discloses an algorithm for querying the
user regarding whether the attachment is to be transmitted with the text message. The Court
determines that it does. Defendants have failed to prove that Claim 20 is indefinite.
Figure 2 of the ’191 Patent, reproduced here and annotated by the Court, is a flowchart
depicting a method for transmitting messages with attachments. ’191 Patent col.3 ll.56–58, col.5
ll.4–19. The flow is described as follows:
According to exemplary embodiments of the present invention, an advanced
messaging application provides the capability to attach such files to an SMS
45
message for routing within the radiocommunication
’191 Patent, Figure 2
system. For example, with reference to the
exemplary method of FIG. 2, consider that a user
first creates a conventional SMS message in his or
her terminal at step 20. Then, before the user sends
the SMS message, the terminal can ask the user
whether an attachment file should be included at
step 22. Alternatively, a menu selection item or
keypad stroke combination may be invoked by the
user (without prompting) to add the attachment. If
the user opts not to attach a file to the SMS message,
then the SMS message is transmitted conventionally
at step 24, i.e., in the manner described above with
respect to FIG. 1. Otherwise, as indicated generally
at step 26, certain information is added to the SMS
message, which is forwarded to the intended
recipient, and the attachment is sent to a special
server for retrieval by the recipient of the SMS
message.
Id. at col.5 ll.4–19 (emphasis added). Thus, the query is depicted as a decision point (22, in
yellow) in the flow chart. The input of the decision point is connected to the output of the
“CREATE SMS MESSAGE” process (20) and the output of the decision point directs to the
“SEND SMS MESSAGE” process (24) in the event of a “no” and to the “SEND SMS
MESSAGE TO RECIPIENT AND ATTACHMENT TO SERVER” process (26) in the event of
a “yes.” The decision-point query may be resolved in three different ways. First, the terminal can
prompt the user, by which the user can respond to add an attachment (or not). Second, the
terminal can provide a menu by which the user may select an item to add the attachment (or not).
Third, the terminal can provide a keypad stroke combination by which the user can add the
attachment (or not).
This disclosure satisfies the structure-disclosure requirement of 35 U.S.C. § 112, ¶ 6. To
satisfy § 112, ¶ 6 for a computer-implemented means-plus-function limitation the patentee may
express an algorithm “in any understandable terms including as a mathematical formula, in
prose, or as a flow chart, or in any other manner that provides sufficient structure.” Typhoon
46
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011). The required level of
detail of the disclosure “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.” Id. “A
description of the function in words may disclose, at least to the satisfaction of one of ordinary
skill in the art, enough of an algorithm to provide the necessary structure under §112, ¶ 6.” Id. at
1386 (quotation marks omitted).
Here, the function is a simple query to a user. It is described to one of skill in the art of
computer-implemented radio communications involving message processing at client and server
levels according to different messaging protocols. See, e.g., col.1 l.17 – col.3 l.30 (GSM SMS
messaging, IMAP4 and POP3 email), col.5 l.20 – col.6 l.4 (WAP and HTTP).7 As such, the
disclosed algorithms are sufficient “for a person of skill in the field to provide an operative
software program for the specified function”—and are therefore adequate under § 112, ¶ 6. Id. at
1385; Akl. Decl. ¶ 28 (Dkt. No. 83-1 at 8–9).
The Court does not find the statements of Defendants’ expert, Mr. Cole, to show that the
claim is indefinite. Mr. Cole does not opine that the query steps are not carried out by known
computer-implemented operations or that they are not readily implemented by persons of skill in
computer programming. See Cole Decl. ¶¶ 11–16 (Dkt. No. 105-1 at 3–5). Rather, Mr. Cole
states that the patent does not provide an algorithm for posing a question to a user and receiving
the response and relies on one of ordinary skill in the art to create such an algorithm. Id. at ¶ 15
(Dkt. No. 105-1 at 5). Mr. Cole states that the claim requires that the computer pose a question to
7
Both Plaintiffs’ and Defendants’ experts agree that “a person of ordinary skill in the art would
have an undergraduate degree in Electrical Engineering, Computer Science, or Computer
Engineering, or a related field, and around two years of experience in the design, development,
and/or testing of cellular networks” or equivalent combination of education and experience. Akl.
Decl. ¶ 18 (Dkt. No. 83-1 at 6); Cole Decl. ¶ 8 (Dkt. No. 105-1 at 2).
47
a user and that the user answer it and that “keypad stroke combination” and “menu selection
items” discussed in the patent are not questions. Id. First, the Court rejects Mr. Cole’s limited
understanding of “query.” The context of the patent shows that “query” is best understood as an
invitation to provide particular information. The patent explains that the system can directly ask
for the information, provide for entry of the information through a keypad stroke combination,
and provide for entry of the information through a menu. Second, given the level of skill in the
art, the Court determines that, similar to the disclosure in Typhoon Touch, the disclosure of the
’191 patent is an in-prose algorithm sufficient for one of skill in the art. See Typhoon Touch, 659
F.3d at 1386.
Accordingly, the Court construes “means for querying a user of the mobile station
regarding whether the attachment is to be transmitted with the text message” as follows:
function: “querying a user of the mobile station regarding whether the attachment
is to be transmitted with the text message”
C.
structure: Item 22 in Figure 2, as described at col.5 ll.4–19.
The ’919 Patent
In general, the ’919 Patent is directed to technology for improving how a base station in a
mobile communication system acknowledges messages sent to the base station from mobile
devices. ’919 Patent col.1 ll.21–32, col.2 ll.46–67. In the prior art, a base station processes data
sent from a mobile (in uplink) to identify errors in the transmission and then sends a response (in
downlink) to the mobile to acknowledge an error-free receipt (the response is an “ACK”) or to
indicate that there was an error in the transmission (the response is a “NACK”). Id. at col.1 ll.21–
32. The response signal is sent via a downlink communication resource (a downlink control
channel) that can be determined based on the uplink communication resource (resource blocks,
48
or “RBs”) used by the mobile to send the uplink data. It can be determined without the need to
separately report the downlink control channel allocated to the mobile. Id. at col.1 ll.33–42.
Uplink resource blocks are frequency bands. Id. at col.1 ll.61–65, fig.1. Downlink control
channels are also frequency bands. Downlink control channels may comprise more than one
band and may be spread and code-multiplexed so that more than one downlink control channel
uses a particular frequency band. Id. at col.1 l.65 – col.2 l.10 & fig. 2 (spread/code-multiplexed),
col.21 ll.27–35 & fig.22 (not spread/code-multiplexed). The invention of the ’919 Patent
purports to improve the frequency diversity of the mapping of response signals to downlink
communication resources. Id. at col.2 ll.53–67.
With reference to Figures 1, 3 and 6, reproduced below and annotated by the Court, the
patent describes a particular frequency-distributed mapping of response signals to codemultiplexed downlink control channels with a repetition factor of 2. Id. at col.7 ll.35–65, col.21
ll.27–39. Figure 1 depicts a mapping of uplink resource blocks to frequency bands. Id. at col.1
ll.61–65, col.3 l.4. Figure 3 is a table showing an association between the uplink resource blocks
(e.g., RB#1, RB#2) and downlink control channels (e.g., CH#1, CH#2). Id. at col.2 ll.11–3
(stating they are “associated one by one”). Figure 6 depicts a mapping of downlink control
channels to frequency subcarriers (e.g., f1, f2) grouped in four frequency bands (1: f1–f4, 2: f9–f12,
3: f17–f20, 4: f25–f28). Id. at col.7 ll.35–65. The control channels “are mapped to different
frequency bands in a distributed manner.” Id. at col.7 ll.35–39. One of the advantages of this
distributed mapping is that it prevents the response signals to uplink data transmitted using
consecutive resource blocks from being “concentrated in identical bands.” Id. at col.7 ll.49–53;
see also, id. at col.1 l.65 – col.2 l.34 & fig.2 (describing a mapping that results in identical-band
concentration). The patent depicts various other distributed mapping patterns that have various
49
advantages. See, e.g., id. at col.8 ll.36 – col.9 l.25 & fig.7 (different mapping patterns for
different control channels), col.9 ll.29 – col.10 l.11 & fig.8 (different mapping patterns for
different cells in a cellular network an different mapping patterns for different sectors in a cell).
Figure 3
’919 Patent
Figure 6
1
2
3
4
Figure 1
The abstract of the ’919 Patent provides:
Provided is a radio communication base station device which can obtain a
maximum frequency diversity effect of a downstream line control channel. The
device includes: an RB allocation unit (101) which allocates upstream line
resource blocks continuous on the frequency axis for respective radio
communication mobile stations by the frequency scheduling and generates
allocation information indicating which upstream line resource block has been
allocated to which radio communication mobile station device; and an
arrangement unit (109) which arranges a response signal to the radio
communication mobile station device in the downstream line control channels
distributed/arranged on the frequency axis while being correlated to the
continuous upstream line resource blocks according to the allocation information.
Claims 1 and 10, reproduced here, are representative apparatus and method claims,
50
respectively.
C-1.
“determination unit”
Disputed Term
“determination unit”
’919 Patent Claim 1
Plaintiffs’ Proposed
Construction
No construction necessary.
Not governed by 35 U.S.C. §
112, ¶ 6.
Alternative:
Structure: Mapping
specifying section 209
and/or equivalents thereof,
as shown in Figure 5, as
further shown and
described at: Figs. 2–3, 5–
8, col./line 6:8–20, 6:64 –
8:32.
Defendants’ Proposed
Construction
Governed by 35 U.S.C. §
112, ¶ 6. Indefinite.
Structure: Insufficient
because only software and a
general purpose processor are
disclosed.
Function: “determine a
resource of downlink, to
which a response signal
transmitted from the base
station is mapped, from an
index of the allocated
resource block based on the
allocation information”
The Parties’ Positions
Plaintiffs submit that “determination unit” in the context of the surrounding claim
language connotes definite structure. According to Plaintiffs, § 112, ¶ 6 does not apply. Dkt. No.
66 at 37–38 (citing Declaration of Richard Gitlin, Sc.D., in Support of Plaintiffs’ Opening Claim
Construction Brief ¶¶ 49–51 (Dkt. No. 66-2 at 15–16) (“Gitlin Decl.”)). Plaintiffs further submit
that the ’919 Patent’s description of the exemplary mapping section 209 and its correlation of
resource blocks to downlink resources also evinces the structural nature of “determination unit.”
Id. Finally, Plaintiffs contend that even if § 112, ¶ 6 applies, the description of mapping
specifying section 209 satisfies the structural disclosure required by the statute. Id. at 38–39.
In addition to the claims, Plaintiffs cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’919 Patent col.4 ll.21–24, col.6 ll.8–20, col.8 ll.8–14,
51
col.22 ll.27–28, col.22 ll.30–48. Extrinsic evidence: Gitlin Decl. (Plaintiffs’ Ex. B, Dkt. No. 662).
Defendants respond that “unit” of “determination unit” is a nonce word and therefore the
term does not connote sufficiently definite structure which overcomes the presumption against
applying § 112, ¶ 6. Dkt. No. 78 at 41–42. Defendants argue there is no extrinsic evidence
showing that “determination unit” is a term of art that refers to structure and that Plaintiffs’
expert’s opinion is based solely on the disclosure in the ’919 Patent. Therefore, Defendants
contend the term invokes § 112, ¶ 6. Id. Defendants submit that the purported structure identified
by Plaintiffs expert is either function (not structure) or is unconstrained structure (i.e., any and all
structure). Id. at 42. Thus, Defendants argue, the patent does not sufficiently disclose structure
for performing the claimed function and “determination unit” renders the claims invalid as
indefinite. Id. at 42–44. In addition to the claims, Defendants cite the following intrinsic and
extrinsic evidence to support their position. Intrinsic evidence: ’919 Patent col.22 ll.27–49.
Extrinsic evidence: Kotzin Decl. (Defendants’ Ex. 7, Dkt. No. 79-11); Gitlin Decl. (Plaintiffs’
Ex. B, Dkt. No. 66-2); Gitlin Dep. (Defendants’ Ex. 8, Dkt. No. 79-14).
Plaintiffs reply that Defendants’ indefiniteness argument improperly focuses on the term
“determination unit” in a vacuum and fails to consider the structural effect of the surrounding
claim language. Dkt. No. 83 at 15–16. Plaintiffs reiterate their contention that “determination
unit,” in the context of the claims, is structural. Id. at 16 (citing Declaration of Richard Gitlin,
Sc.D, in Support of Plaintiffs’ Reply Claim Construction Brief ¶¶ 33–38 (Plaintiffs’ Ex. K, Dkt.
No. 83-3 at 12–14) (“Gitlin Reply Decl.”)). Plaintiffs further reply that even if § 112, ¶ 6 applies,
the statute allows structure to be disclosed through an algorithm and the ’919 Patent discloses a
52
detailed algorithm that meets the statutory requirement. Id. (citing ’919 Patent cols.6–8, fig.3,
fig.6; Gitlin Reply Decl. ¶¶ 33–38 (Dkt. No. 83-3 at 12–14)).
Plaintiffs cite further intrinsic and extrinsic evidence to support their position: Intrinsic
evidence: ’919 Patent cols.6–8, fig.3, fig.6. Extrinsic evidence: Gitlin Reply Decl. (Plaintiffs’
Ex. K, Dkt. No. 83-3).
Analysis
The issues are twofold: whether 35 U.S.C. § 112, ¶ 6 governs the construction of the
limitation and if § 112, ¶ 6 governs, whether the
’919 Patent discloses adequate structure. Because
the Court determines that the term is not governed
by 35 U.S.C. § 112, ¶ 6, it does not reach the
second issue.
The “reception unit” term does not include
the “means” language. Therefore, the Court
presumes that § 112, ¶ 6 does not apply.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
relevant portion). “[T]he 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
(quotation marks omitted). Here, Defendants have not overcome the presumption.
In the claims of the ’919 Patent “unit” is used in combination with a recitation of
capability to denote structure. For instance, although the parties originally disputed whether
“reception unit” and “transmission unit” are structural, Dkt. 66 at 36–37, the parties ultimately
53
agreed that these terms did not need to be presented to the Court for construction, Dkt. No. 1041. From this, the Court understands that there is no dispute that “reception unit” and
“transmission unit” are structural.
“Determination unit,” like “reception unit” and “transmission unit,” connotes structure.
Even if the term “determination unit” does not in isolation connote sufficiently definite structure,
the claim connotes structure to one of skill in the art by reciting details of how the unit functions
as part of the claim. The claim states the objective of the “determination unit” is “to determine a
resource of downlink.” It further states the “determination unit” achieves this objective using “an
index of the allocated resource block based on the allocation information” received by the
“reception unit.” That is, the claim requires the “reception unit” be “configured to receive” the
allocation information and requires the “determination unit” be “configured to determine” a
resource of downlink from an index from the allocation information. So, together, the claims
require the “determination unit” to be connected to the “reception unit” in such a way as to have
access to the allocation information the “determination unit” uses to determine the resource of
downlink. The claim also provides structure through the details of indices of the allocation
information—“the indices of a plurality of the consecutive resource blocks are respectively
associated with a plurality of the resources which are different in a frequency domain.”
In the context of a mobile-communication-system patent and a claim to a “mobile station
apparatus,” the “determination unit” is a specially configured electronic circuit. For example, the
patentee noted that although the exemplary embodiments are “configured by hardware,” the unit
may be an integrated circuit (e.g., LSI, IC), a programmed processor circuit, or a programmed
logic circuit (e.g., FPGA). See ’919 Patent col.22 ll.26–48. The Court recognizes the patentee
noted that the particular circuit implementation is not limited to the then-known circuit-building
54
technology—advancements in semiconductor technology or biotechnology may allow the circuit
to be otherwise constructed—according to the objectives and operations of the “determination
unit.” See col.22 ll.44–48. But technology does not change the fundamental structure of the unit
as a circuit.
Such a disclosure of the objectives of the “determination unit” and how the unit operates
within the context of the claimed invention connotes sufficiently definite structure to one of skill
in the art.8 See Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319–21 (Fed. Cir.
2004) (“circuit [for performing a function]” found to be sufficiently definite structure because
the claim recited the “objectives and operations” of the circuit); Apple Inc. v. Motorola, Inc., 757
F.3d 1286, 1295, 1301 (Fed. Cir. 2014) (“heuristic [for performing a function]” found to be
sufficiently definite structure in part because the claim described the operation and objectives of
the heuristic); Finjan, Inc. v. Proofpoint, Inc., No. Case No. 13-cv-05808-HSG, 2015 WL
7770208, at *11 (N.D. Cal. Dec. 3, 2015) (“processor [for performing a function]” found to be
sufficiently definite structure because the claim described how the processor functions with the
other claim components); SuperSpeed, LLC v. Google, Inc., Civil Action No. H-12-1688, 2014
WL 129225, at *22 (S.D. Tex. Jan. 14, 2014) (code for performing a function connotes
sufficiently definite structure).
Accordingly, the Court finds that this term is not governed by 35 U.S.C. § 112, ¶ 6 and
needs no further construction.
8
According to Dr. Gitlin, “a person of ordinary skill in the art would have a bachelor’s degree in
Electrical Engineering, Computer Engineering, or a related field, and at least two years of
experience in the design, development, and/or testing of cellular base stations or mobile
devices.” Gitlin Decl. ¶ 28 (Dkt. No. 66-2 at 7). According to Dr. Kotzin, “a person of ordinary
skill in the art has at least a bachelor’s degree in electrical engineering, computer engineering,
physics, or the like and at least 1–3 years of experience working with the design, development,
and/or testing of cellular base stations or mobile devices.” Kotzin Decl. ¶ 35 (Dkt. No. 79-11 at
12–13).
55
C-2.
“[to determine / determining] a resource of downlink, to which a
response signal transmitted from the base station is mapped,
from an index of the allocated resource block”
Disputed Term
“to determine a resource of
downlink, to which a
response signal transmitted
from the base station is
mapped, from an index of
the allocated resource
block”
’919 Patent Claim 1
determining a resource of
downlink, to which a
response signal transmitted
from the base station is
mapped, from an index of
the allocated resource block
Plaintiffs’ Proposed
Construction
Defendants’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
Alternative:
“[to determine /
determining] a downlink
resource to which a
response signal transmitted
from the base station is
mapped based on an index
of the resource block(s)
allocated to the mobile
station”
“[to determine / determining]
a resource of downlink, to
which a response signal
transmitted from the base
station is mapped, based
solely on an index of the
allocated resource block”
’919 Patent Claim 10
The Parties’ Positions
Plaintiffs submit that the plain meaning of “mapped, from an index” is not that the
mapping is “based solely on an index,” as Defendants propose, but that the mapping is just
“based on the index.” Dkt. No. 66 at 33. Plaintiffs submit that nothing in the ’919 Patent justifies
construing this term other than according to its plain meaning. Id. In addition to the claims,
Plaintiffs cite the following intrinsic evidence to support their position: ’919 Patent col.8 ll.8–
24.
Defendants respond that the way the determination occurs in the ’919 Patent is using only
an index of allocated resource blocks. Dkt. No. 78 at 16. Defendants further respond because the
claims recite that the determination is “from an index of allocated resource blocks” the
determination is necessarily based solely on the index. Id. (emphasis added by Defendants).
56
Defendants contend that “based on” is separately recited in the claims and therefore “determined
. . . from” presumptively carries a different meaning than “based on.” Id. In addition to the
claims, Defendants cite the following intrinsic evidence to support their position: ’919 Patent
col.1 ll.33–42, col.6 ll.8–20, col.8 ll.8–24, fig.3.
Plaintiffs reply to reiterate that there is no basis to rewrite “from” as “based solely on.”
Dkt. No. 83 at 13.
Analysis
The issue here is whether information other than the index of allocated resource blocks
may be used to determine the resource of downlink. The Court finds that other information may
also be used to determine the resource of downlink.
The ’919 Patent allows information other than RB allocation information to be used to
determine the resource of downlink. The patent explains that the mobile “is able” to determine
downlink control channels “according to RB allocation information . . . even when allocation
information about the control channel is not reported separately.” ’919 Patent col.1 ll.37–42. The
patent does not restrict the determination to only RB allocation information. Defendants have not
identified anything in the patent that requires this restriction. Defendants say every embodiment
restricts the determination to RB allocation information. But “[i]t is likewise not enough that the
only embodiments, or all of the embodiments, contain a particular limitation. We do not read
limitations from the specification into claims; we do not redefine words. Only the patentee can
do that.” Thorner, 669 F.3d at1366.
Indeed, Defendants’ proposed construction threatens to exclude embodiments in which
cell or sector information is used with the allocation information to determine the resource of
downlink. The patent describes an exemplary embodiment in which downlink control channels
57
are determined differently depending on which cell in the network, or sector in a cell, the mobile
is in. ’919 Patent col.9 l.26 – col.10 l. 11. This implies that information about cell or sector, in
addition to the index of allocated resource blocks, may be used to determine the resource of
downlink.
Finally, the patent states that the response signal is mapped to the frequency bands
comprising a downlink control channel “based on the associations shown in FIG. 3.” Id. at col.8
ll.14–24 (emphasis added); see also id. at col. 2, ll.11–21. Defendants’ proposed construction
threatens to exclude this embodiment. A “construction that excludes a preferred embodiment is
rarely, if ever, correct.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 865 (Fed. Cir.
2004)
Accordingly, the Court rejects Defendants’ proposed construction and determines that the
terms have their plain and ordinary meaning and do not need to be further construed.
C-3.
“response signal”
Disputed Term
“response signal”
Plaintiffs’ Proposed
Construction
PanOptis objects to this term as
belatedly proposed by ZTE.
Defendants’ Proposed
Construction
“ACK/NACK”
’919 Patent Claims 1, 10
Alternative:
Plain and ordinary meaning.
The Parties’ Positions
Plaintiffs submit that the ’919 Patent expressly describes the ACK/NACK signals as
exemplary response signals and, therefore, “response signal” should not be limited to
ACK/NACK signals. Dkt. No. 66 at 30–31 (quoting ’919 Patent col.17 ll.20–21). In addition to
the claims, Plaintiffs cite the following intrinsic evidence to support their position: ’919 Patent
col.1 ll.25–27, col.17 ll.20–21.
58
Defendants respond that “response signal” is expressly defined as an ACK/NACK signal
and must therefore be construed as an ACK/NACK signal. Dkt. No. 78 at 12 (quoting ’919
Patent col.21 l.63 – col.22 l.3). Defendants argue that the language Plaintiffs identify as evidence
that the ACK/NACK signal is an exemplary response signal is rather a characterization of
downlink control channels. Id. at 12–13. In addition to the claims, Defendants cite the following
intrinsic evidence to support their position: ’919 Patent col.1 ll.25–32, col.1 ll.62–67, col.5
ll.37–43, col.7 ll.3–4, col.12 l.64 – col.13 l.1, col.17 ll.20–21, col.21 l.63 – col.22 l.3.
Analysis
The issue is whether “response signal” has been specially defined as the ACK/NACK
signals. The Court determines that is has not been defined. The ’919 Patent repeatedly refers to
the response signal as the ACK/NACK signals, but it does not clearly define “response signal” as
“ACK/NACK.” For instance, the patent states an ACK signal or a NACK signal is “fed back as a
response signal to the mobile station.” ’919 Patent col.1 ll.21–32. But this establishes that ACK
and NACK signals are response signals, it does not establish that all response signals are ACK or
NACK signals. The passage Defendants cite as an express definition of “response signal” is not
an express definition. That passage states:
Further, the downlink control channels for transmitting response signals used in
the explanation of the above embodiments are channels for feeding back ACK
signals or NACK signals for mobile stations. For this reason, the downlink control
channels for transmitting response signals may be referred to as “DCCHs
(Dedicated Control Channels),” “ACK/NACK channels,” “response channels”
and “HICH (Hybrid ARQ Indicator Channel).”
Id. at col.21 l.63 – col.22 l.3. Rather than defining “response signal,” the passage states that the
response signals of the exemplary embodiments are ACK and NACK signals, and that downlink
control channels for these response signals may be referred to as ACK/NACK channels. Further,
the patent expressly recites ACK/NACK channels as exemplary downlink control channels for
59
the response signals. Id. at col.17 ll.20–21 (“[d]ownlink control channels for transmitting
response signals (e.g. ACK/NACK channels), PCFICHs and CCEs are multiplexed on physical
resources”). So, while every exemplary embodiment of response signal described in the patent
may be an ACK or NACK signal, it does not define response signal. Thorner v. Sony Computer
Entm’t Am., LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only
embodiments, or all of the embodiments, contain a particular limitation. We do not read
limitations from the specification into claims; we do not redefine words. Only the patentee can
do that.”)
Accordingly, the Court rejects Defendants’ proposed construction and determines that
“response signal” has its plain and ordinary meaning and does not need to be further construed.
C-4.
“and the response signal is mapped to the subcarrier group”
Disputed Term
“and the response signal is
mapped to the subcarrier
group”
Plaintiffs’ Proposed
Construction
“and the response signal is
mapped to the subcarrier
groups”
Defendants’ Proposed
Construction
The term “the subcarrier
group” renders the claims
indefinite under pre-AIA 35
U.S.C. § 112, ¶ 2.
’919 Patent Claims 1, 10
The Parties’ Positions
Plaintiffs submit there is an obvious typographical error in the term and that “subcarrier
group” should be construed as “subcarrier groups.” Dkt. No. 66 at 31–33. Plaintiffs contend that
a plain reading of the claim language establishes that the response signal is mapped to subcarrier
groups, and therefore establishes that “subcarrier group” is a typographical error. Id. at 31. And
Plaintiffs further contend that preferred embodiments are described as mapping the response
signal to “frequency bands of subcarriers” and that a “band of subcarriers” is a “subcarrier
group.” Id. at 31–32 (citing ’919 Patent col.16 ll.1–3, col.18 ll.19–22; Gitlin Decl. ¶ 40 (Dkt. No.
60
66-2 at 10)). Thus, Plaintiffs argue the response signals are clearly mapped to multiple subcarrier
groups and the typographical error is one that the Court may correct by construing “subcarrier
group” as “subcarrier groups.” Id. at 32–33.
In addition to the claims, Plaintiffs cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’919 Patent col.2 l.5, col.7 ll.10–11, col.8 ll.19–21,
col.16 ll.1–3, col.18 ll.19–22, figs.4, 12, 17. Extrinsic evidence: Gitlin Decl. (Plaintiffs’ Ex. B,
Dkt. No. 66-2).
Defendants respond that “subcarrier group” may not be rewritten as “subcarrier groups”
because it would require the response signal to be mapped to all the subcarrier groups. That
would render the claim inoperable and improperly exclude all the exemplary embodiments. Dkt.
No. 78 at 13–14. Defendants further argue that the error in the claim language is not the kind of
error that may be corrected by the Court as the correction is subject to debate. Id. at 15–16
(listing three potential corrections).
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’919 Patent figs.6, 7, 8. Extrinsic evidence: Gitlin
Decl. (Plaintiffs’ Ex. B, Dkt. No. 66-2); Gitlin Dep. (Defendants’ Ex. 8, Dkt. No. 79-14); Kotzin
Decl. (Defendants’ Ex. 7, Dkt. No. 79-11).
Plaintiffs reply that Defendants’ list of potential corrections fails to read the term in the
context of the claim and therefore the alternative corrections posed by Defendants are
unreasonable. Dkt. No. 83 at 12–13. Plaintiffs contend the claim recites that the response signal
is mapped to a resource of downlink and that the resource of downlink is comprised of a plurality
of subcarrier groups. Id. (citing Gitlin Reply Decl. ¶¶ 29–32 (Dkt. No. 83-3 at 10–11)). Thus,
61
Plaintiffs conclude, a correction that allows for mapping a response signal to a single subcarrier
group is not reasonable. Id.
Plaintiffs cite further intrinsic and extrinsic evidence to support their position: Intrinsic
evidence: ’919 Patent col.4 ll.55–56. Extrinsic evidence: Gitlin Reply Decl. (Plaintiffs’ Ex. K,
Dkt. No. 83-3); Kotzin Decl. (Defendants’ Ex. 7, Dkt. No. 79-11).
Defendants, in a sur-reply, respond that rewriting “the subcarrier group” as “the
subcarrier groups” means the antecedent basis for “the subcarrier groups” would be the
immediately preceding recital of “subcarrier groups” in the phrase “a plurality of subcarrier
groups.” Dkt. No. 92 at 3. But, according to Defendants, this correction is improper because it
would result in the response signal being mapped to more than one downlink control channel,
which both parties’ experts have said is impossible. Id. at 3–4. Defendants cite further extrinsic
evidence to support their position: Gitlin Reply Decl. (Plaintiffs’ Ex. K, Dkt. No. 83-3).
Analysis
The issue here is whether the Court has the authority to correct the error in Claims 1 and
10, or whether all the claims of the ’919 Patent fail. Because the Court finds there is no error, it
does not reach the issue of whether a correction is needed. Specifically, the Court finds that the
antecedent basis for “the response signal is mapped to the subcarrier group” to be the “resource
of downlink, to which a response signal transmitted from the base station is mapped.” Under the
plain reading of Claim 1, in the context of its dependent claims, this “resource of downlink” is a
resource comprising a subcarrier group. Thus, the subcarrier group to which the response signal
is mapped is the subcarrier group that comprises the resource of downlink. Defendants have not
proven that this term renders any claim indefinite.
62
To begin, the Court does not understand—and rejects—that each response signal is
necessarily mapped to more than one subcarrier group. The patent explains as much when it
notes “although cases have been explained with the above embodiments as examples where
spreading factor SF is 4 in spreading section 106
and repetition factor RF is 2 in repetition section
107, SF and RF are not limited to these values.”
’919 Patent col.21 ll.36–9. Requiring that the
resource of downlink to which a response signal
is mapped to comprise at least two subcarrier
groups threatens to exclude the exemplary
embodiment in which the repetition factor (“RF”)
is 1. Further, Claim 3 expressly states that the
response signal is mapped to a plurality of the
resources of downlink. Reading Claim 1 to
require such multi-resource mapping would
violate claim differentiation. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc) (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent claim.”). And—
importantly—interpreting Claim 1 to require this multi-resource mapping would render Claim 3
inoperable, according to the parties’ experts. See Gitlin Dep. 128:4–14 (Dkt. No. 79-14 at 33);
Kotzin Decl. ¶ 69 (Dkt. No. 79-11 at 30–31).
The Court understands that under the plain meaning of the claim language, each resource
of downlink comprises at least one subcarrier group. The claim states “the plurality of the
63
resources are respectively comprised of a plurality of subcarrier groups.” This phrase parallels
the phrase “a plurality of the consecutive resource blocks are respectively associated with a
plurality of the resources.” The Court understands this second phrase to mean that each resource
block is associated with a different resource. Specifically, it does not mean that each resource
block is necessarily associated with a plurality of the resources because such an interpretation
would exclude the embodiment of Figure 3. C.R. Bard, 388 F.3d at 865 (“[a] construction that
excludes a preferred embodiment is rarely, if ever, correct”). The Court similarly understands
that “the plurality of the resources are respectively comprised of a plurality of subcarrier groups”
does not require that the each resource necessarily be comprised of a plurality of subcarrier
groups—a resource may be comprised of a single subcarrier group. This comports with both the
patent’s disclosure of using a repetition rate other than 2 and Claim 3’s separate recitation of
multi-resource mapping. This is the best understanding of Claim 1. Phillips, 415 F.3d at 1316
(“The construction that stays true to the claim language and most naturally aligns with the
patent's description of the invention will be, in the end, the correct construction.”).
The Court finds that the parties’ expert’s opinions that Claim 1 requires multi-resource
mapping accurately describe the claim language. The experts’ understanding of Claim 1 appears
to be based on the exemplary embodiments in which the response signal is repeated with a
repetition factor of 2 and is spread/code-multiplexed with a spreading factor of 4. Claim 1 and
the patent do not require such repetition or spreading. Indeed, both spreading and repetition are
separately recited in Claim 1’s dependent claims—raising the presumption that such limitations
are not present in independent Claim 1. See, e.g., Claim 3 (repetition), Claim 4 (spreading),
Claim 5 (repetition), Claim 7 (code multiplexing), Claim 8 (code multiplexing). Further, under
the experts’ stated understanding of Claim 1, Claim 3 is not only redundant—it does not work.
64
Accordingly, the Court gives only some weight to the experts’ testimonies on this subject. Id. at
1318 (“a court should discount any expert testimony that is clearly at odds with the claim
construction mandated by the claims themselves” (quotation marks omitted)).
With this understanding of Claim 1, the Court does not understand “downlink channel”—
the parties’ agreed construction for “resource of downlink”—to comprise at least two subcarrier
groups. The “downlink channel,” as expressed in Claim 1, comprises at least one subcarrier
group.
Accordingly, the Court does not perceive an error in the issued claim language. The
Court finds Defendants have not proven that this term renders any claim indefinite and construes
“and the response signal is mapped to the subcarrier group” as follows:
“and the response signal is mapped to the subcarrier group” means “and the
response signal is mapped to the subcarrier group that comprises the determined
resource of downlink.”
D.
The ’792 Patent: “with [an/the] orthogonal sequence” and “which is
associated with [the/an] orthogonal sequence”
In general, the ’792 Patent is directed to technology to improve the separation of codemultiplexed response signals sent from the mobile to the base station in a mobile communication
system. Id. at col.1 ll.9–25, col.2 l.58 – col.3 l.41. The response signals are sent to the base
station “using uplink control channels such as a PUCCH (Physical Uplink Control CHannel).”
Id. at col.1 l.23–25. A response signal may be spread for code-multiplexing purposes using two
different code sequences (two-dimensional spreading). Id. at col.1 l.47 – col.2 l.10, fig.1. A first
spreading is done with cyclic-shift sequences (e.g., Zadoff-Chu (“ZC”) sequences) and a second
spreading is done with orthogonal sequences (e.g., Walsh sequences). See id. Different cyclicshift sequences are generated with different cyclic-shift values. Id. at col.2 ll.3–5. The invention
65
of the ’792 Patent purports to improve the separation of response signals by establishing certain
relationships between the first spreading sequence and the second spreading sequence. Id. at
col.2 l.58 – col.3 l.41.
With reference to Figure 7, reproduced here and annotated by the Court, the patent
describes an exemplary association between ZC sequences and Walsh sequences for different
PUCCHs. Id. at col.8 l.6 – col.9 l.57. In this association, adjacent Walsh sequences are
associated with different ZC sequences—no two adjacent Walsh sequences are associated with
the same ZC sequence. Id. at col.9 ll.1–21. For example, in Figure 7, Walsh sequence 1 (W#1) is
associated with ZC sequence 1 (ZC#1) (as shown with the green line) and adjacent Walsh
sequence 2 (W#2) is associated with ZC sequence 2 (ZC#2) (as shown with the yellow line). Id.
Such an association has the advantage of the ZC-sequence spreading suppressing the inter-code
interference that would otherwise occur in the event the orthogonality of the Walsh sequences
collapses (e.g., when the mobile station is moving quickly). Id. at col.3 ll.3–10, col.9 ll.8–21. In
the Figure 7 association, adjacent ZC sequences are associated with different Walsh sequences
which works to protect the separation of response signals in the event the ZC-sequence
orthogonality collapses. Id. at col.9 ll.22–42. The patent depicts various other associations
’792 Patent, Figure 7
1
2
1
2
66
between Walsh and ZC sequences. See, e.g., id. at col.10 ll.2–23 & figs. 9–10, col.10 ll.24 –
coll.11 l.25 & fig.12.
The abstract of the ’792 Patent provides:
A wireless communication apparatus capable of minimizing the degradation in
separation characteristic of a code multiplexed response signal. In this apparatus,
a control part (209) controls both a AC sequence to be used in a primary
spreading in a spreading part (214) and a Walsh sequence to be used in a
secondary spreading in a spreading part (217) so as to allow a very small circular
shift interval of the ZC sequence to absorb the interference components remaining
in the response signal; the spreading part (214) uses the ZC sequence set by the
control part (209) to primary spread the response signal; and the spreading part
(217) uses the Walsh sequence set by the control part (209) to secondary spread
the response signal to which PC has been added.
Claims 1 and 24, reproduced here, are representative apparatus and method claims,
respectively.
The Dispute
Disputed Term
Plaintiffs’ Proposed
Construction
67
Defendants’ Proposed
Construction
Disputed Term
Plaintiffs’ Proposed
Construction
Defendants’ Proposed
Construction
“with an orthogonal
sequence”
’792 Patent Claims 1, 3,
4, 6, 12, 14, 22, 23, 24
“with the orthogonal
sequence”
’792 Patent Claims 1, 3,
4, 6, 12, 14
No construction necessary.
Plain and ordinary meaning.
Alternative:
“which is associated with an
orthogonal sequence”
“with [the/an] entire
orthogonal sequence”
’792 Patent Claims 1, 3,
4, 6, 12, 14
“which is associated with
the orthogonal sequence”
No construction necessary.
Plain and ordinary meaning.
’792 Patent Claims 22,
23, 24
“which is related to
[the/an] orthogonal
sequence”
“which has a set mapping
with [the/an] orthogonal
sequence for the spreading of
the ACK or NACK”
The Parties’ Positions
Plaintiffs submit that ’792 Patent describes spreading an ACK/NACK signal with an
orthogonal sequence and an associated cyclic-shift-value-based sequence—without reference to
a “set mapping” between the two sequences. Dkt. No. 66 at 23. Plaintiffs further submit that
“associated” is used in the ’792 Patent per its ordinary meaning, to connote a relationship. Id. at
23. According to Plaintiffs, “mapping” and variants in the patent refers to mapping information
to time and frequency resources—“mapping” is used to express a concept distinct from
“associated.” Id. at 23–24. This is apparent, Plaintiffs argue, in that a grandparent application
was edited to correct errors in the translation from the priority Japanese application; specifically,
correcting some instances of “mapping” to “association.” Id. Plaintiffs further submit that there
is nothing in the claims or intrinsic evidence that requires the association between the cyclic shift
68
value and the orthogonal sequence to be “set” for any period of time. Id. at 24 & n.4. Thus,
Plaintiffs contend, it would be improper to construe “associated” as “set mapping,” as
Defendants propose. Id.
Plaintiffs further submit that the patent’s orthogonal sequences include subsequences that
are also orthogonal. Dkt. No. 66 at 24–25 (citing ’792 Patent col.10 ll.24–41). Plaintiffs submit
that the patent describes that only one member of the orthogonal sequence is used at any given
time. Id. (citing ’792 Patent col.1 l.55 – col.2 l.10, col.2 l.61 – col.3 l.10). Thus, Plaintiffs
contend, since the patent contemplates using portions of the orthogonal sequence at any given
time, it would be improper to construe the terms to restrict a single cyclic shift value to an entire
orthogonal sequence. Id.
In addition to the claims, Plaintiffs cite the following intrinsic evidence to support their
position: ’792 Patent col.1 l.37, col.1 l.46, col.1 l.55 – col.2 l.10, col.2 l.61 – col.3 l.10, col.5 l.6,
col.5 l.19, col.5 l.24, col.5 l.28, col.5 l.33, col.5 l.50, col.8 ll.7–67, col.10 ll.24–41, figs.1, 7, 9,
11–14; ’721 File Wrapper April 25, 2011 Amendment (Plaintiffs’ Ex. B-14, Dkt. No. 66-16)9.
Defendants respond the claims, and the entire intrinsic record, dictate that the claimed
spreading of the ACK/NACK signal is accomplished using all the codes of the claimed
orthogonal sequence, i.e., using the entirety of the orthogonal sequence. Dkt. No. 78 at 17.
Defendants contend that using a single code of an orthogonal sequence to spread the signal
would not be spreading with an orthogonal sequence because a single code is not a sequence and
cannot be orthogonal to anything. Id. at 17–18 & n.6 (citing Gitlin Decl. ¶ 72 (Dkt. No. 66-2 at
24); Gitlin Dep. 72:23 – 73:2, Certificate of Correction (Dkt. No. 79-14 at 19–20, 37)).
9
The ’792 Patent issued from a continuation of a continuation of application number 12/593,904,
which issued as U.S. Patent No. 8,009,721 (the “’721 Patent”). ’792 Patent, at [63] Related U.S.
Application Data.
69
Defendants contend that spreading the signal requires more than one symbol and therefore
requires more than one code. Id. at 18 (citing Gitlin Dep. 77:3–10 (Dkt. No. 79-14 at 21)).
Finally, Defendants argue that the two-code orthogonal subsequences of Figure 11 are used in
the base station to receive the ACK/NACK signal under adverse conditions. They are not used
alone to spread the signal in the phone and allowing this would contradict the claims’ express
requirement that four codes be used to spread the signal. Id. & n.7.
Defendants also respond that the claims require, and the ’792 Patent describes, that for a
given phone, the cyclic shift value used in the spreading is associated only with the orthogonal
sequence used in the spreading. Defendants assert that the orthogonal sequence used in the
spreading is associated only with the cyclic shift value used in the spreading—that they are
mapped to each other. Id. at 18–19. Defendants respond that this combination of cyclic shift
value and orthogonal sequence is set for the phone. Id. at 19–21 (citing ’792 Patent figs.7, 9, 10,
12, 13, 14). Finally, Defendants argue that if “associated” is broader than “mapped,” then new
matter was added by changing “mapping” to “association” in the priority application, and the
’792 Patent would be barred as a late-filed application. Id. at 20.
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’792 Patent col.3 ll.24–31, col.7 ll.30–60, col.10 l.24
– col.11 l.24, figs.6, 7, 9, 10–14; ’721 File Wrapper April 25, 2011 Amendment (Plaintiffs’ Ex.
B-14, Dkt. No. 66-16); EP Application No. 08764121.3 (Defendants Ex. 2-B, Dkt. No.79-4).
Extrinsic evidence: Gitlin Decl. (Plaintiffs’ Ex. B, Dkt. No. 66-2); Gitlin Dep. (Defendants’ Ex.
8, Dkt. No. 79-14).
Plaintiffs reply that the claims are open ended (i.e., they use the “comprising” transitional
phrase) and thus as long as the recited association exists, nothing bars the orthogonal sequence
70
from being associated with more than one cyclic shift value. Dkt. No. 83 at 9–10. Plaintiffs
further reply that the orthogonal-sequence spreading spreads a signal over time. Therefore, the
four codes of the spreading sequence are not simultaneously applied. Id. at 10. Thus, Plaintiffs
contend, the association between the cyclic shift value and the orthogonal sequence need not be
the same for each code in the orthogonal sequence as the codes are applied over time. Id. at 10–
11.
Plaintiffs cite further intrinsic evidence to support their position: ’792 Patent col.1 l.47 –
col.2 l.10, col.8 ll.17–45.
Analysis
There are three issues in dispute. First, whether a signal is spread by a code sequence if
only a portion of the code sequence is applied to the signal. Second, whether the association
between the cyclic-shift sequence and the orthogonal sequence is necessarily a one-to-one
mapping. Third, whether this association is set for a given phone.
The Court does not understand that a signal is spread by a sequence if only a portion of
the sequence is applied to the signal. The ’792 Patent explains that when spreading a signal with
a Walsh sequence (an exemplary orthogonal sequence) of length four, the signal is allocated to
each of four symbols, that is, the signal is spread over four symbols according to the application
of the entirety of length-four sequence. ’792 Patent col.1 ll.61–64. The Court understands this
application of each code in the sequence to be inherent in spreading. Spreading with a subset of
the sequence would be spreading with a different sequence and would result in a different spread
signal. Spreading with a single code would not be spreading.
Further, the Court does not understand that the association between the spreading codes is
either necessarily one-to-one or necessarily set for a particular phone. Claim 1 separately recites
71
an exclusive association. It states “a cyclic shift value associated with the first orthogonal
sequence is different from a cyclic shift value associated with the second orthogonal sequence.”
’792 Patent col.14 ll.61–63. This strongly implies that the first and second orthogonal sequences
may otherwise be associated with the same cyclic shift value, that is, it states that the association
is not necessarily “mapped” as Defendants propose. See Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005) (en banc) (noting that the use of the term “steel baffles” “strongly implies
that the term ‘baffles’ does not inherently mean objects made of steel”). While the patent
provides exemplary associations in which each PUCCH corresponds to a particular association,
the Court does not understand this to mean the association is “set” for a particular phone. The
phone may change PUCCH. ’792 Patent col.1 ll.42–44 (“each mobile station can decide the
PUCCH to use to transmit response signals from the mobile station”), col.7 ll.14–16 (“deciding
section 208 decides a PUCCH to use to transmit a response 15 signal from the mobile station”).
So even if the association was set for a given PUCCH, it is not set for the phone. There is
nothing expressed in the claims stating that the association is set for a given PUCCH, or for the
phone. Thorner, 669 F.3d at 1366 (“It is likewise not enough that the only embodiments, or all
of the embodiments, contain a particular limitation. We do not read limitations from the
specification into claims; we do not redefine words. Only the patentee can do that.”).
Accordingly, the Court rejects Defendants’ “set mapping” limitation, determines that
“which is associated with [the/an] orthogonal sequence” has its plain and ordinary meaning, and
the term needs no further construction. The Court construes “with [the/an] orthogonal sequence”
as follows:
“with [the/an] orthogonal sequence” means “with [the/an] entire orthogonal
sequence.”
72
E.
The ’557 Patent
In general, the ’557 Patent is directed to mobile-communication technology for allowing
a mobile to report control information to the base station using the Random Access Channel
(“RACH”). ’557 Patent col.1 ll.11–15, col.1 l.54 – col.2 l.22. The RACH is used, for example,
for a mobile to request access to communication resources from the base station. Id. at col.1
ll.17–18. The RACH signal sent to the base station is a “signature” that distinguishes the sending
mobile from other mobiles also sending RACH signals. Id. at col.1 ll.19–22. This signature may
be one a series of code sequences that have low cross-correlation and high auto-correlation (e.g.,
Constant Amplitude Zero Auto-Correlation (“CAZAC”) sequences). Id. at col.1 ll.23–32.
There are advantages to be gained if the mobile may use the RACH signal to report
control information to the base station. Id. at col.1 ll.33–39. Such control information includes
information such as “mobile station ID, the reason for RACH transmission, bandwidth allocation
request information (QoS information, the amount of data, and so on), and downlink received
quality information.” Id. The invention of the ’557 Patent is meant to allow the mobile to
efficiently report such control information in the RACH by establishing certain associations
between code sequences and the control information that is to be reported to the base station. Id.
at col.1 l.54 – col.2 l.22.
With reference to Figures 3 and 4, reproduced below and annotated by the Court, the
patent describes an exemplary association between control information and CAZAC-sequence
signatures. Id. at col.4 l.54 – col.5 l.24. In the example, the potential values of the downlink
“received quality” control information are separately associated with multiple CAZAC
sequences. Id. In the example of Figure 4, the sequences associated with a particular received
quality are derived from a common base CAZAC sequence (sequence number k) through
application of shift values (shift m). Id. The mobile selects as its RACH signature one of the
73
sequences associated with the control information it wishes to report. Id. at col.5 ll.25–44. Thus,
the base station can identify the mobile and the control information from a single RACH signal
sent from the mobile. Id. To alleviate the interference of multiple mobiles sending the same
signature (collisions), the mobile preferably randomly selects the signature sequence from the
series of appropriate sequences. Id. at col.5 ll.45–61.
’557 Patent
Figure 4
Figure 3
With reference to Figure 11, reproduced below and annotated by the Court, the patent
also describes a dynamically generated association between the control information and code
sequences. Id. at col.8 l.27 – col.9 l.3. To account for variances in the number of mobiles
reporting the same control information, the mobile may use information about the rates of
occurrence of the particular pieces of control information to alter the association between the
control information and the sequences. Id. This allows for more sequences to be associated with
high-occurrence control information (those that are reported from many mobiles) and for fewer
to be associated with low-occurrence control information. Id. This reduces the rate of collisions
(multiple mobiles sending the same signature sequence). Id. at col.7 ll.50–67. The information
74
regarding the rate of occurrence of the various pieces of control information is provided by the
base station via a “control signal.” Id. at col.8 ll.42–51.
Figure 11
’557 Patent
Figure 3
The abstract of the ’557 Patent provides:
A mobile station apparatus includes a receiving unit configured to receive control
information; a selecting unit configured to randomly select a sequence from a
plurality of sequences contained in one group of a plurality of groups, into which
a predetermined number of sequences generated from a plurality of base
sequences are grouped and which are respectively associated with different
amounts of data or reception qualities; and a transmitting unit for transmitting the
selected sequence. The predetermined number of sequences are grouped by
partitioning the predetermined number of sequences, in which sequences
generated from the same base sequence and having different cyclic shifts are
arranged in an increasing order of the cyclic shifts. A position at which the
predetermined number of sequences are partitioned is determined based on the
control information, and a number of sequences contained in each of the plurality
of groups varies in accordance with the control information.
Claims 1 and 10, reproduced here, are representative apparatus and method claims,
respectively.
75
E-1.
“receiving unit” and “control information”
Disputed Term
“receiving unit”
’557 Patent Claim 1
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
Not governed by 35 U.S.C. §
112, ¶ 6.
Alternative:
“control information”
Structure: Antenna 16,
radio and receiving section
31, as shown in Fig. 10,
and the table of Figure 3
and/or equivalents thereof,
as further shown and
described at: Fig. 1, Fig. 3,
Fig. 10 (16, 31, 33),
col./line 4:57–63, 8:37–
9:3, 9:27–48.
No construction necessary.
Plain and ordinary meaning.
Defendants’ Proposed
Construction
Governed by 35 U.S.C. §
112, ¶ 6. Indefinite
Structure: signature
selecting section 111, which
ZTE asserts under the
discussion of “selecting unit”
below has insufficient and
indefinite structure
Function: “receive control
information”
“information to be reported to
a base station”
’557 Patent Claims 1, 10
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
76
The Parties’ Positions
With respect to “control information,” Plaintiffs submit that the term is well understood
to refer to information used for control. Id. at 39. Plaintiffs further submit that the ’557 Patent
provides examples of control information that is not reported to the base station and therefore,
that Defendants’ proposed construction should be rejected. Id. at 39–40 (citing ’557 Patent col.2
ll.30–31, col.4 ll.59–60, col.7 l.50 – col.9 l.3, col.9 ll.15–23). Plaintiffs argue that the claims are
directed to a mobile station that has components configured to receive and utilize the control
information, but the claims do not recite that the control information is reported to a base station.
Id.
With respect to “receiving unit,” Plaintiffs submit the term sufficiently connotes structure
such that § 112 ¶ 6 does not apply. Dkt. No. 66 at 44–45 (citing Gitlin Decl. ¶¶ 88–90 (Dkt. No.
66-2 at 30–31)). Plaintiffs further submit that the ’557 Patent describes an exemplary “receiving
unit configured to receive control information” as having structure comprising the antenna and
receiving section of Figure 10 and the control information correlation table of Figure 3. Id.
(citing Gitlin Decl. ¶¶ 88–90 (Dkt. No. 66-2 at 30–31)). Plaintiffs contend that the structure of
the “receiving unit” is not the “signature selecting section,” as Defendants propose. Rather,
Plaintiffs contend, the patent describes that after the receiving section has received the control
information, pieces of control information are sent to the “signature selecting section,” and the
“signature selecting section” corresponds to the claims’ “selecting unit.” Id. (citing ’557 Patent
col.4 l.57 – col.5 l.8; Gitlin Decl. ¶¶ 88–90 (Dkt. No. 66-2 at 30–31)).
In addition to the claims, Plaintiffs cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent col.2 ll.30–31, col.4 l.57 – col.5 l.8, col.7
77
l.50 – col.9 l.3, col.9 ll.15–23, figs.1, 3, 10. Extrinsic evidence: Gitlin Decl. (Plaintiffs’ Ex. B,
Dkt. No. 66-2).
With respect to “control information,” Defendants respond that the term is not well
understood in the art. Dkt. No. 78 at 21–22 & n.11 (quoting Deposition of Daichi Imamura
69:12–20 (Dkt. No. 78-1 at 6) (“Imamura Dep.”)). Defendants further respond that “control
information” is used repeatedly and consistently in the ’557 Patent to refer to information that is
reported or to be reported to the base station. Id. at 22. (citing the ’557 Patent as annotated by
Defendants to highlight “control information” (Dkt. No. 79-5)). And, Defendants respond,
“control information” and “control signal” are distinguished in the patent. The first refers to
information to be sent to the base station. The second refers to signals coming from the base
station. Id. at 22–23 (citing ’557 Patent col.6 ll.43–64). Thus, Defendants contend, the ’557
Patent defines “control information” as “information to be reported to a base station.” Id. And
Defendants contend that Plaintiffs’ expert agrees that “control information” is sent to the base
station from the phone and is distinct from the “control signal” that is sent from the base station
to the phone. Id. at 22–23 (citing Gitlin Dep. 28:6–13, 43:18–21, 45:13–21, 46:5–15 (Dkt. No.
79-14 at 8, 12–13)).
With respect to “receiving unit,” Defendants respond that Plaintiffs’ argument improperly
conflates “control information” and “control signal.” According to Defendants, the “receiving
unit” is configured to receive “control information” and not “control signals,” and therefore, the
control-signal-receiving structure identified by Plaintiffs does not serve the claimed function of
receiving “control information.” Dkt. No. 78 at 24–25 (citing Gitlin Dep. at 28:6–13, 42:6 –
43:6, 43:18–21, 45:13–21, 46:5–15 (Dkt. No. 79-14 at 8, 12–13); Kotzin Decl. ¶¶ 54–55 (Dkt.
No. 79-11 at 23)). Rather, Defendants contend, the only thing disclosed in the ’557 Patent that
78
receives “control information” is the signature selection section. Defendants note that is
described as a functional block and not as structure. Id. (citing Kotzin Decl. ¶¶ 54–56 (Dkt. No.
79-11 at 23–24)).
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent col.2 ll.30–31, col.4 ll.57–63, col.6 ll.43–
64, col.7 l.50 – col.9 l.3, col.9 ll.15–23, references to “control information.” Extrinsic evidence:
Gitlin Decl. (Plaintiffs’ Ex. B, Dkt. No. 66-2); Gitlin Dep. (Defendants’ Ex. 8, Dkt. No. 79-14);
Imamura Dep. (Defendants’ Ex. 3-B, Dkt. No. 78-1); Kotzin Decl. (Defendants’ Ex. 7, Dkt. No.
79-11).
Plaintiffs reply that Defendants fail to establish that § 112, ¶ 6 applies to “receiving unit”
and that Defendants’ expert offered no opinion on whether § 112, ¶ 6 applies. Dkt. No. 83 at 14.
With respect to “control information,” Plaintiffs reply “control information” was not specially
defined as Defendants suggest, but rather the patent itself contemplates that control information
is not necessarily sent to the base station. Dkt. No. 83 at 13–14 (citing ’557 Patent col.4 ll.56–63;
Gitlin Reply Decl. ¶¶ 23–24 (Dkt. No. 83-3 at 8–9)).
Plaintiffs cite further intrinsic and extrinsic evidence to support their position: Intrinsic
evidence: ’557 Patent col.4 ll.56–63. Extrinsic evidence: Gitlin Reply Decl. (Plaintiffs’ Ex. K,
Dkt. No. 83-3).
Analysis
There three main issues in dispute. First, whether “control information” is specially
defined as “information to be reported to a base station.” Second, whether 35 U.S.C. § 112, ¶ 6
governs the construction of the “receiving unit” limitation. And, third, whether, if § 112, ¶ 6
governs “receiving unit,” the patent discloses adequate structure under the statute. The Court
79
does not find the “control information” is specially defined in the ’557 Patent. Further, because
Defendants’ understanding of “control information” is the sole basis for its § 112, ¶6 argument,
the Court determines that “receiving unit” is not governed by the statute.
“Control information” is used in the ’557 Patent to designate a broad category of
information related to control of the mobile communication system. See, e.g., ’557 Patent col.1
ll.33–39 (listing exemplary types of control information), col.9 ll.16–23 (same). Indeed, the
patent explains not all control information is reported to the base station and only select
information is reported. ’557 Patent col.4 ll.57–63. The Court finds no special definition of
“control information” that would limit “control information” to information flowing from the
mobile to the base station. See Thorner, LLC, 669 F.3d at 1367 (“The patentee is free to choose a
broad term and expect to obtain the full scope of its plain and ordinary meaning unless the
patentee explicitly redefines the term or disavows its full scope.”).
In fact, Claim 1 of the patent uses the term “control information” to refer to information
used to reallocate code sequences and vary the size of the groups of sequences. It uses “different
amounts of data or reception qualities” to refer to the information reported to the base station.
This reallocation information is described with reference to the exemplary embodiment of
Figures 10 and 11 as coming from the base station. ’557 Patent col.8 l.27 – col.9 l.2 (a “control
signal” from the base station “designates to change the associations between [mobile] control
information and the code sequences in the table”). Thus, the “control signal” of the exemplary
embodiment belongs to the class of “control information” that is not reported to the base station.
This comports with Mr. Imamura’s deposition testimony that “control information” is
“information other than user information.” Imamura Dep. 69:1–11 (Dkt. No. 78-1 at 6).
80
Based on the patents presently before the Court, the extrinsic evidence further establishes
that “control information” is not limited to “information to be reported to a base station.” The
term “control information” is used in other Asserted Patents to denote information related to
control of the communication system that flows from the base station to the mobile. For
example, the ’919 Patent states: “Control information that is required to transmit uplink data 20
from a mobile station to a base station . . . is transmitted from the base station to the mobile
station.” ’919 Patent col.10 ll.19–25. The ’792 Patent further states “the base station transmits
control information for reporting resource allocation results of downlink data, to mobile
stations.” ’792 Patent col.1 ll.26–28. Notably, the ’919 Patent, the ’792 Patent, and the ’557
Patent share a common original assignee, Panasonic Corporation. Further, the ’792 Patent and
the ’557 Patent share an inventor, Daichi Imamura. ’792 Patent, at [75] Inventors, [73] Assignee;
’557 Patent, at [75] Inventors, [73] Assignee; ’919 Patent, [73] Assignee. Again, this comports
with Mr. Imamura’s deposition testimony that “control information” is “information other than
user information.” Imamura Dep. 69:1–11 (Dkt. No. 78-1 at 6).
Because the Court rejects Defendants’ proposed construction of “control information,”
the Court determines that there is no remaining dispute with respect to whether “receiving unit”
is governed by § 112, ¶ 6—or whether “receiving unit” renders any claim indefinite. At the
hearing, Defendants confirmed what is apparent from the briefing—Defendants’ challenge to
“receiving unit” as an indefinite means-plus-function limitation rests on its contention that the
unit is configured to receive information to be reported to the base station. Having rejected that
contention, Defendants necessarily fail to prove that “receiving unit” is governed by § 112, ¶ 6 or
that it renders any claim indefinite.
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Accordingly, the Court rejects Defendants’ proposed construction of “control
information,” determines that “control information” carries its plain and ordinary meaning and
needs no further construction, finds that Defendants have failed overcome the presumption
“receiving unit” is not governed by § 112 ¶ 6, and holds that Defendants have failed to prove that
“receiving unit” renders any claim indefinite.
E-2.
“selecting unit”
Disputed Term
Plaintiffs’ Proposed
Construction
“selecting unit”
No construction necessary.
Plain and ordinary meaning.
’557 Patent Claim 1 Not governed by 35 U.S.C. §
112, ¶ 6.
Alternative:
Structure: Signature
selecting section 111, as
shown in Figures 1 and
10 and/or equivalents
thereof; as further shown
and described at: Fig. 1,
Fig. 3, Fig. 10, col./line
4:57–63, 8:37 – 9:3, 9:27
– 48.
Defendants’ Proposed
Construction
Governed by 35 U.S.C. § 112, ¶ 6.
Indefinite
Structure: Insufficient because
only software and a general purpose
processors are disclosed.
Function: “randomly select a
sequence from a plurality of
sequences contained in one group
of a plurality of groups, into which
a predetermined number of
sequences that are generated from a
plurality of base sequences are
grouped and which are respectively
associated with different amounts of
data or reception qualities, wherein
the predetermined number of
sequences are grouped by
partitioning the predetermined
number of sequences, in which
sequences generated from the same
base sequence and having different
cyclic shifts are arranged in an
increasing order of the cyclic shifts”
The Parties’ Positions
Plaintiffs submit that “selecting unit” connotes sufficient structure so that § 112, ¶ 6 does
not apply. Dkt. No. 66 at 41–44. Plaintiffs contend the claim language itself recites the function
82
and environment of the selecting unit in such detail which connotes sufficiently definite structure
to one of skill in the art—“a random access sequence selection structure.” Id. at 41–43 (citing
Gitlin Decl. ¶¶ 76–85 (Dkt. No. 66-2 at 25–29)). Plaintiffs further contend that the structural
nature of “selecting unit” is also apparent from prior-art references cited on the face of the
patent. Id. (citing Patent Application Publ’n No. 2010/0278114 ¶ 236 (“sequence selecting unit”)
(Dkt. No. 66-14 at 32); U.S. Patent Application Publ’n No. 2008/0192678 ¶ 42 (“sequence . . .
selected by a preamble generator”) ( (Dkt. No. 66-15 at 20)). Plaintiffs note that the ’557 Patent
describes the “selecting unit” as structure—the signature selecting section. Id. at 42 (citing ’557
Patent col.2 ll.59–61). And, Plaintiffs argue, even if § 112, ¶ 6 were to apply, the signature
selecting section, and how it fits and operates in the context of the exemplary embodiments, is
described in detail in the patent. Id. at 43–44.
In addition to the claims, Plaintiffs cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent, at [54] Title, col.1 l.65 – col.2 l.7, col.2
ll.57–67, col.3 l.18 – col.7 l.49, col.8 l.55 – col.9 l.3, col.9 ll.6–12, col.9 ll.30–32, figs.1, 4, 5, 9,
10, 11; U.S. Patent Application Publ’n No. 2010/0278114 (Plaintiffs’ Ex. B-12, Dkt. No. 66-14);
U.S. Patent Application Publ’n No. 2008/0192678 (Plaintiffs’ Ex. B-13, Dkt. No. 66-15).
Extrinsic evidence: Gitlin Decl. (Plaintiffs’ Ex. B, Dkt. No. 66-2).
Defendants respond that “unit” of “selection unit” is a nonce word and the presumption
against applying § 112, ¶ 6 is overcome. Dkt. No. 78 at 41–42. Defendants argue that there is no
extrinsic evidence that “selection unit” is a term of art that refers to structure, that the Plaintiffs’
expert’s opinion is based solely on the disclosure in the ’557 Patent, and that, therefore, the term
invokes § 112, ¶ 6. Id. Defendants submit that the structure identified by Plaintiffs expert is
either function (not structure) or is unconstrained structure (i.e., any and all structure). Id. at 42.
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Thus, Defendants argue, the patent does not sufficiently disclose structure for performing the
claimed function and “selection unit” renders the claims invalid as indefinite. Id. at 42–44.
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent col.4 ll.57–67, col.5 ll.25–36, col.5 ll.45–
57, col.5 l.62 – col.6 l.6, col.9 ll27–29, col.9 ll37–49. Extrinsic evidence: Kotzin Decl.
(Defendants’ Ex. 7, Dkt. No. 79-11); Gitlin Decl. (Plaintiffs’ Ex. B, Dkt. No. 66-2); Gitlin Dep.
(Defendants’ Ex. 8, Dkt. No. 79-14).
Plaintiffs reply that Defendants’ indefiniteness argument improperly focuses on the term
“selecting unit” in a vacuum, and fails to consider the structure-connoting effect of the
surrounding claim language. Dkt. No. 83 at 15–16. Plaintiffs reiterate their contention that
“selecting unit,” in the context of the claims, is structural. Id. at 16 (citing Gitlin Decl. ¶¶ 76–85
(Dkt. No. 66-2 at 25–29); Gitlin Reply Decl. ¶¶ 13–22 (Plaintiffs’ Ex. K, Dkt. No. 83-3 at 5–8)).
Plaintiffs further reply that even if § 112, ¶ 6 applies, the statue allows that structure may be
disclosed through an algorithm and the ’919 Patent discloses a detailed algorithm that meets the
statutory requirement. Id. (citing ’557 Patent cols.1–6; Gitlin Reply Decl. ¶¶ 13–22 (Dkt. No. 833 at 5–8)).
Plaintiffs cite further intrinsic and extrinsic evidence to support their position: Intrinsic
evidence: ’557 Patent cols. 1–6. Extrinsic evidence: Gitlin Reply Decl. (Plaintiffs’ Ex. K, Dkt.
No. 83-3).
Analysis
The issues are whether 35 U.S.C. § 112, ¶ 6 applies and whether the ’557 Patent discloses
adequate structure if § 112, ¶ 6 applies. Because the Court finds that 35 U.S.C. § 112, ¶ 6 does
not apply, it does not reach the second issue.
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The “selecting unit” term does not include the “means” language. Therefore, the Court
presumes that § 112, ¶ 6 does not apply. Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 &
n.3 (Fed. Cir. 2015) (en banc in relevant portion).
“[T]he 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 (quotation marks omitted). Here, Defendants
have not overcome the presumption.
In claims of the ’557 Patent, “unit” in combination with a recitation of capability, denotes
structure. For instance, although the parties originally disputed whether “transmitting unit” is
structural, see Dkt. 66 at 44, the parties ultimately agreed the term did not need to be presented to
the Court for construction, Dkt. No. 104-1. From this, the Court understands that there is no
dispute that “transmitting unit” is structural.
The term “selecting unit,” like the term “transmitting unit,” connotes structure. Even if
the term “selecting unit” does not in isolation connote sufficiently definite structure, the claim
itself recites details of how the unit functions within the claim. The claim states that the objective
of the selecting unit is “to . . . select a sequence.” The claim further states the “selecting unit”
operates to achieve this objective by “randomly” selecting from a “plurality of sequences” that
are “contained in one group of a plurality of groups” of a specific structure. The selected
sequence is transmitted via the “transmitting unit.” That is, the “selecting unit” is configured to
85
randomly select a sequence from a plurality of sequences contained in a specifically structured
group of groups of sequences and the “transmitting unit” is configured to transmit the selected
sequence. So, the “selecting unit” is connected to the “transmitting unit” in such a way so as to
enable the transmitting unit to transmit the sequence selected by the “selecting unit.”
In the context of a mobile-communication-system patent and a claim to a “mobile station
apparatus,” the “selecting unit” is a specially configured electronic circuit. For example, the
patentee noted that although the exemplary embodiments are “configured by hardware,” the unit
may be an integrated circuit (e.g., LSI, IC), a programmed processor circuit, or a programmed
logic circuit (e.g., FPGA). See ’557 Patent col.9 ll.26–48. The Court recognizes the patentee
noted that the particular circuit implementation is not limited to the then-known circuit-building
technology—advancements in semiconductor technology or biotechnology may allow the circuit
to be otherwise constructed—according to the objectives and operations of the “selecting unit.”
See col.9 ll.44–48. But this does not changes the fundamental structure of the unit as a circuit.
Such a disclosure of the objectives of the “selecting unit,” and how it operates within the
context of the claimed invention, connotes sufficiently definite structure to one of skill in the
art.10 See, Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1319–21 (Fed. Cir. 2004)
(“circuit [for performing a function]” found to be sufficiently definite structure because the claim
recited the “objectives and operations” of the circuit); Apple Inc. v. Motorola, Inc., 757 F.3d
1286, 1295, 1301 (Fed. Cir. 2014) (“heuristic [for performing a function]” found to be
10
According to Dr. Gitlin, “a person of ordinary skill in the art would have a bachelor’s degree
in Electrical Engineering, Computer Engineering, or a related field, and at least two years of
experience in the design, development, and/or testing of cellular base stations or mobile
devices.” Gitlin Decl. ¶ 28 (Dkt. No. 66-2 at 7). According to Dr. Kotzin, “a person of ordinary
skill in the art has at least a bachelor’s degree in electrical engineering, computer engineering,
physics, or the like and at least 1–3 years of experience working with the design, development,
and/or testing of cellular base stations or mobile devices.” Kotzin Decl. ¶ 35 (Dkt. No. 79-11 at
12–13).
86
sufficiently definite structure in part because the claim described the operation and objectives of
the heuristic); Finjan, Inc. v. Proofpoint, Inc., No. Case No. 13-cv-05808-HSG, 2015 WL
7770208, at *11 (N.D. Cal. Dec. 3, 2015) (“processor [for performing a function]” found to be
sufficiently definite structure because the claim described how the processor functions with the
other claim components); SuperSpeed, LLC v. Google, Inc., Civil Action No. H-12-1688, 2014
WL 129225, at *22 (S.D. Tex. Jan. 14, 2014) (code for performing a function connotes
sufficiently definite structure).
Accordingly, the Court determines that this term is not governed by 35 U.S.C. § 112, ¶ 6
and needs no further construction.
E-3.
“which are respectively associated with different amounts of data
or reception qualities”
Disputed Term
“which are respectively
associated with different
amounts of data or reception
qualities”
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
Defendants’ Proposed
Construction
“where each of the plurality
of groups is associated with
only one of different amounts
of data or reception qualities”
’557 Patent Claims 1, 10
The Parties’ Positions
Plaintiffs submit the claim allows association with both the different amounts of data and
with reception quality—that the “or” in “associated with different amounts of data or reception
quality” is an inclusive “or.” Dkt. No. 66 at 40. Plaintiffs contend this is the plain meaning of
“or.” Id. Plaintiffs submit that the ’557 Patent describes exemplary embodiments that use both
the amounts of data and the reception qualities. Id. (citing ’557 Patent col.9 ll.17–21).
87
In addition to the claims, Plaintiffs cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent col.9 ll.17–21. Extrinsic evidence:
Merriam Webster’s Collegiate Dictionary (“or”) (Plaintiffs Ex. H, Dkt. No. 66-22).
Defendants respond that to give “respectively” meaning, each group of sequences that is
respectively associated with “different amounts of data or reception qualities” is associated with
either “different amounts of data” or with “reception qualities,” but not both. Dkt. No. 78 at 25–
28. Defendants further respond that the ordinary meaning of “or” is disjunctive—that “or” in a
list means the items in the list are mutually exclusive and “or” should not be interpreted as
“and/or.” Id. (citing Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1331 (Fed.
Cir. 2001)). Defendants respond that the ’557 Patent describes sending only a single type of
control information—it does not describe simultaneously sending multiple types of control
information. Id. at 27. Defendants contend that simultaneously sending multiple types of control
information requires complexity beyond the patent. Id. at 27–28.
In addition to the claims, Defendants cite the following intrinsic evidence to support
their position: ’557 Patent col.9 ll.17–21, fig.4.
Plaintiffs reply that “respectively” in the term does not mean what Defendants advocate;
rather, “respectively” means that each group is associated with different information—that the
groups are not collectively associated with the same information. Dkt. No. 83 at 14. Plaintiffs
contend that ’557 Patent does not dictate that each group is restricted to only “amounts of data”
or “reception quality,” and not both. According to Plaintiffs, the patentee established in the
prosecution of a parent application that in some instances, “each group provides an indication of
an amount of data and a reception quality.” Id. (quoting ’473 Patent File Wrapper December 22,
2011 Amendment 2 (Dkt. No. 83-4 at 3)) (emphasis added by Defendants). Plaintiffs contend
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that the ’557 Patent expressly states that a single “type” of control information can indicate both
“amounts of data” and “reception quality.” Id. at 10–11 (citing ’557 Patent col.9 ll.17–21).
Plaintiffs cite further intrinsic evidence to support their position: ’473 Patent File
Wrapper December 22, 2011 Amendment (Plaintiffs’ Ex. L, Dkt. No. 83-4).11
Analysis
The issue here is whether a group of sequences may be associated with both “different
amounts of data” and “reception qualities.” The Court determines that under the plain meaning
of the claim language, it can be associated with both.
To begin, the Court agrees with Plaintiffs that the term “respectively” is used in the claim
language at issue to denote that each group of sequences is associated with different information.
That is, the groups in the “plurality of groups” are respectively associated with different
information. No two groups are associated with the same information and that different
information is the “different amounts of data or reception qualities.”
The Court also agrees with Plaintiffs that each group may be associated with both
“different amounts of data” and different “reception qualities,” so long as no two groups are
associated with the same information. The term “or” in a list does not necessarily mean that the
items in the list are mutually exclusive alternatives. It is not clear that the case that Defendants
cite dictates this result. In Kustom Signals, Inc. v. Applied Concepts, Inc., the Federal Circuit
construed “or” in a process list to denote a mutually exclusive list based on the presence of the
words “either” and “or.” 264 F.3d 1326, 1329 (Fed. Cir. 2001). In contrast, numerous Courts
have noted that “or” may be used to denote an inclusive list. See, e.g., Allstate Ins. Co. v.
11
U.S. Patent No. 8,139,473 (the “’473 Patent”) issued from application number 12/293,530.
The ’557 Patent issued from a continuation of application number 12/293,530. ’557 Patent, at
[63] Related U.S. Application Data.
89
Plambeck, 66 F. Supp. 3d 782, 788 (N.D. Tex. 2014) (“The ordinary meaning of ‘or,’ as used
disjunctively, is not to indicate an exclusive alternative—that is, one or the other but not both. At
least, that is not the only ordinary usage of the word ‘or.’ Rather, the word ‘or’ can be used in
both an ‘inclusive’ sense (‘A or B [or both]’) and an ‘exclusive’ sense (‘A or B [but not both]’).”
(quoting Shaw v. Nat’l Union Fire Ins. Co. of Pittsburgh, Pa., 605 F.3d 1250, 1254 n.8 (11th Cir.
2010))); B-50.com, LLC v. InfoSync Servs., LLC, Civil Action No. 3:10-cv-1994-D, 2014 WL
285096, at *6 (N.D. Tex. Jan. 27, 2014) (“Authorities agree that or has an inclusive sense as well
as an exclusive sense. . . . Although ‘or’ is used in both senses in common usage, the meaning of
or is usually inclusive.” (quoting Bryan A. Garner, Garner’s Dictionary of Legal Usage 639 (3d
ed. 2011) (emphasis in original, quotation and modification marks omitted)); DietGoal
Innovations LLC v. Chipotle Mexican Grill, Inc., Civil Action No. 2:12-cv-764-WCB, 2015 WL
164072, at *3 (E.D. Tex. Jan. 13, 2015) (Bryson, J.) (“It is well recognized that the word ‘or’ can
be used in either an inclusive or an exclusive sense, depending on context.”). Indeed, the Federal
Circuit has held that, depending on the context, the word “or” can be either conjunctive or
disjunctive. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 680 (Fed.
Cir. 2015) (“The conjunctive interpretation is also consistent with proper grammar, where the
phrase ‘not A, B, or C’ means ‘not A, not B, and not C.’”). Lower courts have also construed
“or” in a list of items in a patent claim to be inclusive. See, e.g., B-50.com, LLC, 2014 WL
285096, at *6 (construing “enables the restaurant-industry user to view or obtain the generated
custom report using the Internet” to encompass, but not require, both viewing and obtaining
(modification marks omitted)).
In the context of the patent, “or” in the phrase is conjunctive. For example, the purpose of
the invention is to provide technology for “efficiently reporting control information in the
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RACH.” ’557 Patent col.1 ll.60–63. That control information is diverse, including both amounts
of data and reception qualities. Id. at col.1 ll.33–39, col.9 ll.16–23. And the technology is
efficient because the mobile “does not need to transmit control information in addition to
signatures” and the base station “can detect control information by detecting the signature at the
same time.” Id. at col.5 ll.36–44. The only complexity that the Court perceives with respect to
associating more than one type of control information with a group of sequences is that there will
be more categories of different information. This will require more groups of sequences, and
therefore more sequences. But the Court does not understand that the invention is limited in the
number of sequences it may generate in any way that would dictate Defendants’ proposed
construction.
Accordingly, the Court rejects Defendants’ proposed “associated with only one of
different amounts of data or reception qualities” and determines that “which are respectively
associated with different amounts of data or reception qualities” has its plain and ordinary
meaning and needs no further construction.
E-4.
“different amounts of data or reception qualities”
Disputed Term
“different amounts of data
or reception qualities”
Plaintiffs’ Proposed
Construction
No construction necessary.
Plain and ordinary meaning.
’557 Patent Claims 1, 10
Defendants’ Proposed
Construction
“(1) amounts of data that are
different than amounts of
data associated with all of the
other groups; or (2) reception
qualities that are different
than reception qualities
associated with all of the
other groups”
The Parties’ Positions
Plaintiffs submit that meaning of the term in the context of the claim is plain: “one group
of sequences is associated with amounts of data or reception qualities, another group is
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associated with different amounts of data or reception qualities, and so on.” Dkt. No. 66 at 40.
Plaintiffs contend that the claim allows for overlap in the amounts of data or reception qualities
associated with two different groups of sequences. Id.
Defendants respond that “different” in “different amounts of data or reception qualities”
means that the amounts of data or reception qualities associated with one group of sequences
cannot overlap with the amounts of data or reception qualities associated with a different group
of sequences. Dkt. No. 78 at 28–29. Defendants contend the invention is described such that
there is no overlap and that the lack of overlap is essential to the operation of the described
invention. Id. Specifically, Defendants contend, if the information associated with one group
overlaps with the information associated with a different group, then the phone would not be able
to determine which code to send to the base station and the base station would not be able to
definitively determine what information is represented by the code—and the invention would not
work. Id. (citing Gitlin Dep. 28:19–24 (Dkt. No. 79-14 at 8)).
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’557 Patent figs.3, 4. Extrinsic evidence: Gitlin Dep.
(Defendants’ Ex. 8, Dkt. No. 79-14).
Plaintiffs reply that the ’557 Patent allows overlap among the different amounts of data
and among the different reception qualities, and that the invention works with such overlap. Dkt.
No. 83 at 15 (citing Imamura Dep. 89:4–15, 97:11–12, 98:1–5, 100:18–23 (Dkt. No. 83-5 at 3–
4)).
Plaintiffs cite further extrinsic evidence to support their position: Imamura Dep.
(Plaintiffs’ Ex. M, Dkt. No. 83-5).
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Analysis
The issue is whether “different” in the claim term means “without any overlap.” The
Court understands that the “different amounts of data or reception qualities” allows for overlap.
The Court does not understand the invention—or the claims—to fail if there is an overlap
of information between or among groups of sequences. First, in the exemplary embodiments, the
sequences are associated with ranges of a particular piece of control information. See, e.g., ’557
Patent figs.3–4 (ranges of SINR). So even in the exemplary embodiments, the base station knows
only the range of the particular piece of control information that is associated with the sequence.
If there the ranges overlap, the base station will still know the range associated with the
transmitted sequence, even if the particular piece of control information may fall into another
range associated with a different sequence group. Second, it is not clear that the mobile station
would be unable to choose a sequence if the control information fell into more than one range.
The only evidence on that issue is the deposition testimony of one of the inventors named on the
’557 Patent, presumably one of at least ordinary skill in the art. Imamura Dep. 89:4–15, 97:11–
12, 98:1–5, 100:18–23 (Dkt. No. 83-5 at 3–4). Mr. Imamura testified that the invention will work
with overlap among the “different amounts of data or reception qualities” and the Court has no
reason to believe otherwise.
Accordingly, the Court rejects Defendants’ proposed construction, and determines that
“different amounts of data or reception qualities” has its plain and ordinary meaning and needs
no further construction.
V.
CONCLUSION
The Court adopts the above constructions set forth in this opinion for the disputed and
agreed terms of the Asserted Patents. The parties are ordered that they may not refer, directly or
93
indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the
parties are ordered to refrain from mentioning any portion of this opinion other than the actual
definitions adopted by the Court in the presence of the jury. Although any reference to claim
construction proceedings is limited to informing the jury of the actual definitions adopted by the
Court the testimony of all witnesses are bound by the Court’s reasoning in this Order.
SIGNED this 3rd day of January, 2012.
SIGNED this 19th day of April, 2016.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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