Huawei Technologies Co. Ltd v. T-Mobile US, Inc. et al

Filing 210

MEMORANDUM OPINION AND ORDER -. Signed by Magistrate Judge Roy S. Payne on 5/17/2017. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

HUAWEI TECHNOLOGIES CO. LTD,
Plaintiff,
v.
T-MOBILE US, INC., ET AL.,
Defendants,
NOKIA SOLUTIONS AND NETWORKS
US LLC, NOKIA SOLUTIONS AND
NETWORKS OY,
TELEFONAKTIEBOLAGET LM
ERICSSON, and ERICSSON INC.
Intervenors.

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Case No. 2:16-CV-00055-JRG-RSP

MEMORANDUM OPINION AND ORDER
On March 3, 2017, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent Nos. 8,325,675 (“the ’675 Patent”), 8,798,575 (“the
’575 Patent”), and 8,908,627 (“the ’627 Patent”) (collectively “the Asserted Patents”). The Court
has considered the arguments made by the parties at the hearing and in their claim construction
briefs. Dkt. Nos. 119, 126, 137 & 138. 1 The Court has also considered the intrinsic evidence and
made subsidiary factual findings about the extrinsic evidence. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
(2015). The Court issues this Claim Construction Memorandum and Order in light of these
considerations.

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.
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TABLE OF CONTENTS
I.

BACKGROUND ................................................................................................................ 3

II.

APPLICABLE LAW ........................................................................................................ 10

III.

CONSTRUCTION OF AGREED TERMS ...................................................................... 15

IV.

CONSTRUCTION OF DISPUTED TERMS ................................................................... 17
1. “In a Mobility Management Entity (MME), a data processing method
comprising” ......................................................................................................... 18
2. The “unit” terms (“receiving unit . . .” / “sending unit . . .” / “storage unit . .
.”) 20
3. Claims 4 and 7 of the ’627 Patent................................................................. 35
4. The Method Steps of Claim 1 of the ’675 Patent ......................................... 40
5. The “Informing” Step of Claim 1 and the “Inform” Phrase in Claim 6 of the
’675 Patent........................................................................................................... 46
6. “target side processing network element” .................................................... 50
7. The “Empty” Address Terms........................................................................ 55
8. “Determining a Charging Method” .............................................................. 59

V.

CONCLUSION ................................................................................................................. 62

Page 2 of 63

I.

BACKGROUND
A.

The ’675 and ’627 Patents

The ’675 Patent was filed on February 13, 2009 and issued on December 4, 2012. The ’627
Patent is a continuation of the ’675 Patent, and was filed on November 8, 2012 and issued on
December 9, 2014. The ’675 and ’627 Patents share a common specification, and both are titled
“Data Processing Method and System.” The ’675 and ’627 Patents generally relate to using
network elements to perform a handover between 2G, 3G, and 4G systems. ’627 Patent at
Abstract. 2
The specification states that “[i]n existing 3GPP protocols, user plane processing of UMTS
is based on a two-tunnel mechanism [green] illustrated as in FIG. 2.” ’627 Patent at 1:58–60.

Id. at Figure 2. The specification adds that “[i]n UMTS, the user plane processing is between a
Radio Network Controller (RNC, a network element of a UTRAN, used to control wireless

2

The Abstract of the ’627 Patent follows:
A data processing method when the handover or change appears between systems
includes: a Mobility Management network element sends a data forwarding tunnel
identifier of a target side processing network element to a user plane anchor
network element, obtains a data forwarding tunnel identifier of the user plane
anchor network element, and sends the data forwarding tunnel identifier of the user
plane anchor network element to a source data forwarding network element.
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resources of the UTRAN) and an SGSN, and between an SGSN and a GGSN, over an Iu interface
and a Gn interface respectively.” Id. at 1:60–64. The specification further states that “[f]or the
two-tunnel mechanism, an SGSN handles both the user plane and the control plane; therefore
control plane processing and user plane processing are not separate.” Id. at 1:64–67.
The specification adds that “[w]ith the introduction of High Speed Packet Access (HSPA)
and IP Multimedia Subsystem (IMS), there will be a significant data flow growth in future 3GPP
network.” Id. at 2:1–3. The specification states that “in order to improve data processing capability
of UMTS, a new UMTS user plane processing mechanism, i.e. direct-tunnel mechanism, has been
proposed.” Id. at 2:4–6. The direct-tunnel mechanism is illustrated in yellow in Figure 2. The
specification states that “the user plane processing of UMTS is between an RNC and a GGSN,
without an SGSN.” Id. at 2:6–8. The specification further states that “[f]or the direct-tunnel
mechanism, an SGSN handles functions of the control plane only; therefore control plane
processing and user plane processing are separate.” Id. at 2:8–11. The specification notes that “[i]n
a direct-tunnel mechanism where a 3G SGSN no longer performs user plane data processing, data
forwarding can not be done via a 3G SGSN. Therefore, the existing data processing method when
a handover or change between a GERAN and a UTRAN takes place does not fit the direct-tunnel
mechanism.” Id. at 4:8–14.
Figure 7 illustrates a disclosed embodiment of the invention for a data processing method
when a handover from a GERAN (“2G”) to a UTRAN (“3G”) occurs. Id. at 6:9–10.

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Id. at Figure 7. Specifically, the specification describes the steps as follows:
As illustrated in FIG. 7, a data processing method when a handover from a GERAN
to a UTRAN takes place includes:
step S701: a source BSS decides to initiate a handover;
step S702: the source BSS sends a handover request message to an old SGSN, i.e.
2G SGSN;
step S703: the 2G SGSN sends a forward relocation request message to a new
SGSN, i.e. 3G SGSN;
step S704: the 3G SGSN builds a relocation request message, and sends the
message to a target RNC;
step S705: the target RNC sends a relocation request acknowledged message to the
3G SGSN;
step S706: the 3G SGSN sends an update PDP context request message to a GGSN,
to request to change user plane routing from the GGSN to the 3G SGSN;
step S707: the GGSN returns an update PDP context response to the 3G SGSN;
step S708: the 3G SGSN sends a forward data request to the GGSN, to request the
GGSN to assign a data forwarding tunnel for data forwarding;
step S709: the GGSN returns a forward data response message to the 3G SGSN,

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assigns a data forwarding tunnel identifier to the data forwarding tunnel and carries
the data forwarding tunnel identifier in the response message to the 3G SGSN, the
data forwarding tunnel identifier includes IP address and TEID (Tunnel End Point
Identifier);
step S710: the 3G SGSN sends a forward relocation response message to the 2G
SGSN, a data forwarding tunnel identifier carried in the message is the data
forwarding tunnel identifier of the GGSN;
step S711: the 2G SGSN receives a data packet from the GGSN, and sends the data
packet to an MS via the source BSS;
step S712: for data of a lossless service, the 2G SGSN forwards the data packet to
the GGSN according to the data forwarding tunnel identifier carried in the forward
relocation response message sent by the 3G SGSN, the GGSN buffers the data
packet after receiving the data packet forwarded by the 2G SGSN;
step S713: the 2G SGSN sends a handover request acknowledge message to the
source BSS;
step S714: the MS sends a handover to UTRAN complete message to the target
RNC;
step S715: the target RNC sends a relocation complete message to the 3G SGSN;
step S716: the 3G SGSN sends an update context request message to the GGSN;
step S717: the GGSN returns an update context response message to the 3G SGSN;
step S718: the GGSN forwards the buffered forwarded data packet to the target
RNC.
Id. at 6:9–59. The specification states that “[w]ith the data processing methods in the direct-tunnel
mechanism when a handover or change between a GERAN and a UTRAN takes place, a GGSN
can buffer data forwarded by a source data forwarding network element and then send the data to
a target side processing network element.” Id. at 4:55–59. The specification further states that this
solves the problem with the direct-tunnel mechanism in the prior art, and allows “normal
forwarding of service data in the direct-tunnel mechanism when a handover or change between a
GERAN and a UTRAN takes place.” Id. at 4:62–67. The specification discloses or discusses a
number of other embodiments using similar network elements to perform handovers between 2G,
3G, and 4G systems.
Claim 1 of the ’675 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A data processing method in a handover procedure,
comprising:

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exchanging messages, between a Mobility Management network
element and a user plane anchor network element, to obtain
a data forwarding tunnel identifier of the user plane anchor
network element;
informing, by the Mobility Management network element, the
user plane anchor network element of a data forwarding
tunnel identifier of a target side processing network
element;
informing, by the Mobility Management network element, a
source data forwarding network element of the data
forwarding tunnel identifier of the user plane anchor
network element;
receiving, by the user plane anchor network element, data
forwarded by the source data forwarding network element
using the data forwarding tunnel identifier of the user plane
anchor network; and
forwarding, by the user plane anchor network element, the data
to the target side processing network element.
B.

The ’575 Patent

The ’575 Patent was filed on November 10, 2006 and issued on August 5, 2014. The ’575
Patent generally relates to a “method for improving service data flow based charging [FBC],” and
is titled the same. ’575 Patent at Abstract. 3 Figure 2A illustrates a configuration of FBC for an
online charging system.

3

The Abstract of the ’575 Patent follows:
A method for improving service data flow based charging and a system thereof are
disclosed. A CRF may determine, according to input information provided by an
AF or TPF, that the charging method for the current data flow service is an online
or offline charging method, and provide the TPF with the charging rules with the
corresponding mechanism. Moreover, the CRF may provide the TPF with the
address information of an OCS or OFCS corresponding to the UE, to enable the
TPF to address the corresponding OCS according to the address information of the
OCS and trigger the following credit request procedure for the UE, or enable the
TPF to address the corresponding OFCS according to address information of the
OFCS and send collected charging data information of the UE to the OFCS.
Therefore the charging procedure based on the FBC mechanism is more complete
and more reasonable.
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Id. at Figure 2A. The specification states that “the systematic configuration of FBC for the online
charging includes an Online Charging System (OCS) 206, a Service Data Flow Based Charging
Rule Function (CRF) 203, an Application Function (AF) 204, and a Traffic Plane Function (TPF)
205.” Id. at 3:29–33. The specification adds that “[t]he OCS 206 includes a Customized
Application for Mobile Network Enhanced Logic (CAMEL) based Service Control Point (SCP)
201 and a Service Data Flow Based Credit Control Function (CCF) 202.” Id. at 3:34–37. The
specification further states that “[t]he CCF 202 is connected through an Ry interface to the CRF
203, the CRF 203 is connected through an Rx interface to the AF 204 and through a Gx interface
to the TPF 205; the CCF 202 is connected through a Gy interface to the TPF 205.” Id. at 3:37–41.
Figure 2B illustrates a configuration of FBC for the offline charging system.

Id. at Figure 2B. The specification states that “the systematic configuration of FBC for the offline
charging includes a CRF 203, an AF 204, a TPF 205, a Charging Gateway Function (CGF) 207

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and a Charging Collection Function (CCF) 208.” Id. at 3:42–45. The specification adds that “[t]he
CRF 203 is connected through an Rx interface to the AF 204 and through a Gx interface to the
TPF 205, the TPF 205 is connected through a Gz interface to the CGF 207 and to the CCF 208,
respectively.” Id. at 3:45-49. The specification further states that “the functions of the CGF 207
and the CCF 208 are implemented by one network entity, which therefore provides the charging
gateway functions and the charging collection functions for offline charging and is referred to as
an Offline Charging System (OFCS) hereinafter.” Id. at 3:49-53
Having described the OCS and OFCS, the specification states that “the TPF 205 bears IP
flow, and sends a Charging Rules Request to the CRF 203 through the Gx interface when an IP
flow bearer is established.” Id. at 3:56–58. The specification further states that “[t]he Charging
Rules Request carries the UE-related information, the bearer characteristics and the networkrelated information, wherein the UE-related information may be the Mobile Station International
Integrated Services Digital Network (ISDN) Number (MSISDN), the International Mobile
Subscriber Identifier (IMSI) and etc; and the network-related information may be the Mobile
Network Code (MNC), the Mobile Country Code (MCC) and etc.” Id. at 3:58–66.
The specification also states that “[t]he bearer may be modified during the transmission of
the IP flow, for example, the QoS parameter may be renegotiated, which may lead to different
charging rules for the same UE service according to different QoS parameters, such as lower
charging rate corresponding to lower QoS parameter.” Id. at 3:66-4:4. In this scenario, “the TPF
205 may resend a Charging Rules Request to the CRF 203 for new charging rules; the CRF 203
selects appropriate charging rules according to the input information provided by the TPF 205
described above, and returns to the TPF 205 the selected charging rules including the charging
mechanism, charging type, charging keys, IP flow filter, charging rule priority and etc.” Id. at 4:4–
12.

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The specification further indicates that “[t]he charging mechanism may be online charging
or offline charging; the charging type may be duration based charging or flow based charging, the
charging key is a parameter related to the charging rate, whereby the CRF 203 may provide the
TPF 205 with the charging rate related parameter instead of the charging rate directly; the IP flow
filter is used for indicating the IP flows that need to be filtered for the TPF 205, and the TPF 205
charges for the filtered IP flows according to the charging rules.” Id. at 4:12–20.
Claim 1 of the ’575 Patent is an exemplary claim and recites the following elements
(disputed term in italics):
1. A method for improving service data flow based charging in a
communications network, comprising:
a Charging Rules Function (CRF) determining a charging
method and charging rules in response to a service request
or other trigger event, and
the CRF providing a Traffic Plane Function (TPF) with the
charging rules and address information of a charging
system.
II.

APPLICABLE LAW
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

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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, 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

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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 MicroDevices, 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 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

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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).
B.

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f)
(AIA) 4

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

4

Because two of 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.
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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 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 Communications, L.L.C. v. International
Trade Commission, 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

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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).
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).
III.

CONSTRUCTION OF AGREED TERMS

The parties agreed to the construction of the following phrases:
Claim Term/Phrase
the first instance of the term “the credit
information”

Agreed Construction
“credit information”

(’575 Patent, claims 3, 17)
“the collected charging data information
of the UE”

“collected charging data information of the UE”

(’575 Patent, claims 11, 19)
Docket No. 108 at 1-2. In view of the parties’ agreement on the proper construction of the
identified terms, the Court hereby ADOPTS the parties’ agreed constructions.
During the claim construction hearing, the parties agreed to the construction of the

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following phrases:
Claim Term/Phrase
“A Serving GPRS Support Node (SGSN),
comprising:”

Agreed Construction
The preamble is limiting.

(’627 Patent, claim 4)
“A Mobility Management Entity (MME),
comprising:”

The preamble is limiting.

(’627 Patent, claim 7)
The Court agrees that the preambles are limiting because they recite essential structure,
and are “necessary to give life, meaning and vitality” to the claim. Poly-Am., L.P. v. GSE Lining
Tech., Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004). Moreover, the patentee clearly relied on the
preamble during prosecution. Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002) (“[C]lear reliance on the preamble during prosecution to distinguish the
claimed invention from the prior art transforms the preamble into a claim limitation because such
reliance indicates use of the preamble to define, in part, the claimed invention.”) (citations
omitted).
Referring to the prosecution history, independent claim 4 of the ’627 Patent was originally
dependent claim 11. The preamble of original claim 7 recited “[a] Mobility Management network
element, comprising a receiver and a sender” (Dkt. No. 126-4 at 3). Original dependent claim 11
further narrowed original claim 7 by reciting that the “Mobility Management network element is
a 3G Serving GPRS Support Node (SGSN).” (Id. at 4). The examiner rejected claim 7, objected to
claim 11, and stated that claim 11 would be allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening claims. (Dkt. No. 126-12 at 7-8). In
response, the patentees canceled pending claim 7, and amended the preamble of claim 11 by

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deleting “Mobility Management network element” and replacing it with “[a] Server GPRS Support
Node (SGSN).” (Dkt. No. 126-13 at 4-5). The “SGSN” limitation only appears in the preamble of
the claim. Accordingly, the amendment to the preamble defines the claimed invention, because it
was relied upon to distinguish the prior art and is necessary to give life, meaning and vitality to
the claim.
Similar to independent claim 4, independent claim 7 was originally dependent claim 12.
As indicated above, the preamble of original claim 7 recited “[a] Mobility Management network
element, comprising a receiver and a sender” (Dkt. No. 126-4 at 3). Original dependent claim 12
further narrowed original claim 7 by reciting that the “Mobility Management network element is
a Mobility Management Entity (MME).” (Id. at 4). The examiner rejected claim 7, objected to
claim 12, and stated that claim 12 would be allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening claims. (Dkt. No. 126-12 at 7-8). In
response, the patentees canceled pending claim 7, and amended the preamble of claim 12 by
deleting “Mobility Management network element” and replacing it with “[a] Mobility
Management Entity (MME).” (Dkt. No. 126-13 at 4-5). The “Mobility Management Entity
(MME)” limitation only appears in the preamble of the claim. Accordingly, the amendment to the
preamble defines the claimed invention, because it was relied upon to distinguish the prior art and
is necessary to give life, meaning and vitality to the claim.
To the extent that a party argues that the preambles are not limiting, the Court rejects this
argument. Accordingly, in view of the intrinsic evidence and the parties’ agreement that the
preambles of claims 4 and 7 of the ’627 Patent are limiting, the Court hereby ADOPTS the parties’
agreed constructions.
IV.

CONSTRUCTION OF DISPUTED TERMS

Page 17 of 63

The parties’ dispute focuses on the meaning and scope of nineteen terms/phrases in the
Asserted Patents.
1. “In a Mobility Management Entity (MME), a data processing method
comprising”
Disputed Term
“In a Mobility
Management Entity
(MME), a data processing
method comprising”

Plaintiff’s Proposal
The preamble is non-limiting.

Defendants’ Proposal
The preamble is limiting.

a) The Parties’ Positions
The parties dispute whether the preambles of claim 1, 10, and 11 of the ’627 Patent are
limiting. Plaintiff contends that the preambles are not claim limitations because they merely
provide a name for the otherwise complete invention set out in the body of the claims. (Dkt. No.
119 at 18). According to Plaintiff, the claims at issue use the preambles as a reference point for
the overall structure of the claim. Id. Plaintiff argues that the body of the claim is a complete
description of the invention and does not rely in any way on the structure or functionality of the
“MME” referred to by the preamble. Id. Plaintiff further argues that it is inappropriate to allow the
name in the preamble to define the scope of the invention. Id.
Defendants respond that the applicant amended the preamble to claims 1, 10, and 11 during
prosecution to specifically recite that the data processing method occurs “[i]n a Mobility
Management Entity (MME).” (Dkt. No. 126 at 14). Defendants argue that this added language
provides antecedent basis for the three subsequent recitations of “the MME” in the claim body. Id.
Defendants further argue that the preambles do not merely provide a “reference point” or a “name”
for the invention, as Plaintiff contends. (Id. at 17). Plaintiff did not provide arguments for this term
in its Reply brief.
For the following reasons, the Court finds that the preamble “In a Mobility Management

Page 18 of 63

Entity (MME), a data processing method comprising:” in claims 1, 10, and 11 of the ’627
Patent is limiting.
b) Analysis
The phrase “In a Mobility Management Entity (MME), a data processing method
comprising:” appears in claims 1, 10, and 11 of the ’627 Patent. The Court finds that the phrase is
used consistently in the claims and is intended to have the same general meaning in each claim.
The Court further finds that the preambles are limiting because they recite essential structure, and
are “necessary to give life, meaning and vitality” to the claim. Poly-Am., L.P. v. GSE Lining Tech.,
Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004). Moreover, the patentee clearly relied on the preamble
during prosecution. Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002) (“[C]lear reliance on the preamble during prosecution to distinguish the claimed
invention from the prior art transforms the preamble into a claim limitation because such reliance
indicates use of the preamble to define, in part, the claimed invention.”) (citations omitted).
Referring to the prosecution history of claims 1, 10, and 11, the preamble originally recited
“a data processing method,” and was later amended to include “a Mobility Management Entity
(MME).” For example, when the application was filed, the preamble of pending independent claim
1 recited “A data processing method, comprising . . .,” and pending dependent claim 6 recited that
“[t]he data processing method according to claim 1, wherein . . . the Mobility Management
network element is a Mobility Management Entity (MME).” 5 (Dkt. No. 126-4 at 2-3). The
examiner rejected claim 1 and objected to claim 6. (Dkt. No. 126-12 at 4-8). In response, the
patentees canceled pending claim 1, and amended the preamble of pending claim 6 as follows: “In
a Mobility Management Entity (MME), a data processing method comprising: . . . The data

5

Pending claim 6 would ultimately issue as claim 1 of the ’627 Patent.
Page 19 of 63

processing method according to claim 1, wherein . . . .” (Dkt. No. 126-13 at 2-4).
At that time, the patentees also added new pending claims 13 and 14 with the preamble
reciting: “The data processing method according to claim 3, wherein . . . .” 6 (Id. at 6). Pending
claim 3 was later canceled, and the patentees amended each of pending claims 13 and 14 as
follows: “The data processing method according to claim 3In a Mobility Management Entity
(MME), a data processing method comprising: . . . .” (Dkt. No. 126-14 at 2-5). These amendments
indicate the use of the preambles to define the claimed invention.
Moreover, the language in each preamble provides the antecedent basis for “the MME”
recited in the body of the claims. Claims 1, 10, and 11 each recite “In a Mobility Management
Entity (MME), a data processing method comprising: informing, by the MME, . . . obtaining, by
the MME, . . . informing, by the MME, . . . .” ’627 Patent, at 17:39-48, 18:52-62, 19:8-17 (emphasis
added). It is the Mobility Management Entity (MME)” in the preamble that is necessary to give
meaning to “the MME” recited in the body of the claims. Accordingly, the preamble is limiting,
because it was relied upon in the prosecution history and is necessary to give life, meaning and
vitality to the claim.
c) Court’s Construction
The preamble “In a Mobility Management Entity (MME), a data processing method
comprising:” in claims 1, 10, and 11 of the ’627 Patent is limiting.
2. The “unit” terms (“receiving unit . . .” / “sending unit . . .” / “storage
unit . . .”)

6

Pending claims 13 and 14 would ultimately issue as claims 10 and 11 of the ’627 Patent.
Page 20 of 63

Disputed Term
“a receiver
configured to
receive a data
forwarding tunnel
identifier of a User
Plane Entity (UPE)
from the UPE”

“a sender configured
to: send the data
forwarding tunnel
identifier of the UPE
to a source Radio
Network Controller
(RNC), and send a
data forwarding
tunnel identifier of a
Long Term
Evolution (LTE)
access network to
the UPE”
“the receiver is
configured to
receive a forward
data response
carrying the data
forwarding tunnel
identifier of the
UPE, from the UPE”

“the sender is
configured to send a
forward data request
to the UPE”

Plaintiff’s Proposal
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6. If the Court
determines this term is subject to 35
U.S.C. § 112 ¶ 6:
Function: receive a data forwarding
tunnel identifier of a User Plane Entity
(UPE) from the UPE
Structure: SGSN receiver and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: send the data forwarding
tunnel identifier of the UPE to a source
Radio Network Controller (RNC), and
send a data fo1warding tunnel identifier
of a Long Term Evolution (LTE)
access network to the UPE
Structure: SGSN transmitter and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court dete1mines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: receive a forward data
response carrying the data forwarding
tunnel identifier of the UPE, from the
UPE
Structure: SGSN receiver and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: send a forward data request
to the UPE
Structure: SGSN transmitter and
equivalents thereof

Page 21 of 63

Defendants’ Proposal
Function: receive a data
forwarding tunnel identifier of a
User Plane Entity (UPE) from
the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: send the data
forwarding tunnel identifier of
the UPE to a source Radio
Network Controller (RNC), and
send a data forwarding tunnel
identifier of a Long
Term Evolution (LTE) access
network to the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: receive a forward
data response carrying the data
fo1warding tunnel identifier of
the UPE, from the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: send a forward data
request to the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.

“a receiver
configured to
receive a data
forwarding tunnel
identifier of a User
Plane Entity (UPE)
from the UPE”

“a sender configured
to: send the data
forwarding tunnel
identifier of the UPE
to a Long Term
Evolution (LTE)
access network, and
send a data
forwarding tunnel
identifier of a target
Radio Network
Controller (RNC) to
the UPE”
“the receiver is
configured to
receive a forward
data response
carrying the data
forwarding tunnel
identifier of the
UPE, from the UPE”

“the sender is
configured to send a
forward data request
to the UPE”

Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: receive a data forwarding
tunnel identifier of a User Plane Entity
(UPE) from the UPE
Structure: MME receiver and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: send the data forwarding
tunnel identifier of the UPE to a Long
Term Evolution (LTE) access network,
and send a data forwarding tunnel
identifier of a target Radio Network
Controller (RNC) to the UPE
Structure: MME transmitter and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: receive a forward data
response carrying the data forwarding
tunnel identifier of the UPE, from the
UPE
Structure: MME receiver and
equivalents thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: send a forward data request
to the UPE
Structure: MME transmitter and
equivalents thereof

Page 22 of 63

Function: receive a data
forwarding tunnel identifier of a
User Plane Entity (UPE) from
the UPE
Structure: The specification
fails to set fo1th any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: send the data
forwarding tunnel identifier of
the UPE to a Long Term
Evolution (LTE) access
network, and send a data
forwarding tunnel identifier of a
target Radio Network
Controller (RNC) to the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: receive a forward
data response carrying the data
forwarding tunnel identifier of
the UPE, from the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: send a forward data
request to the UPE
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.

“receipt unit
configured to
receive data
forwarded by the
source data
forwarding network
element”

“sending unit
configured to
forward the received
data to the target
side processing
network element”

Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: receive data forwarded by
the source data forwarding network
element
Structure: receipt unit and equivalents
thereof
Plain meaning. Not subject to 35
U.S.C. § 112 ¶ 6.
If the Court determines this term is
subject to 35 U.S.C. § 112 ¶ 6:
Function: forward received data to the
target side processing network element
Structure: sending unit and
equivalents thereof

Function : receive data
forwarded by the source data
forwarding network element
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.
Function: forward the received
data to the target side
processing network element
Structure: The specification
fails to set forth any algorithm
or corresponding structure for
the claimed function. Claim is
indefinite.

a) The Parties’ Positions
The parties dispute whether the “unit” terms are subject to § 112 ¶ 6. Defendants contend
that the terms are governed by § 112 ¶ 6 because they do not recite or connote sufficiently definite
structure for the terms “receipt unit,” “sending unit,” “receiver,” and “sender.” (Dkt. No. 126 at
9). According to Defendants, the most that is disclosed is the generic “receipt unit,” “sending unit,”
“tunnel identifier acquisition unit,” and “tunnel identifier sending unit” of Figure 20. Id.
Defendants argue that each of the disputed terms of the ’675 Patent replace the word
“means” with the nonce word “unit,” and then recite function performed by the “unit.” (Id. at 10).
Defendants contends that “unit” is a nonce word that may “operate as a substitute for ‘means’ in
the context of § 112, ¶ 6,” and that the terms “receiver” and “sender” operate in similar fashion.
Id. (citing St. Lawrence Comm’cns. LLC v. ZTE Corp., No. 2:15-CV-349-JRG, 2016 WL 6275390,
at *18-*19 (E.D. Tex. Oct. 24, 2016)). Defendants further argue that the prefixes “receipt” and
“sending” do not impart any structure into the term “unit.” (Id. at 11). Defendants contend that
they merely reiterate the function that the “unit” is configured to perform. Id.
Defendants further argue that nothing in the claims or specification suggest that the term

Page 23 of 63

“unit” has sufficiently definite structure. Id. Defendants also argue that none of these four terms is
a well-known structure in the relevant art. Id. (citing Dkt. No. 126-1 at ¶ 25). Defendants further
contend that the standard referenced by Plaintiff makes no mention of a “receipt unit,” “sending
unit,” “receiver,” or “sender,” much less a reference to any structure within a network element.
(Dkt. No. 126 at 11). Defendants argue that the reference simply recites the same function of
“receiving” or “sending” without structural content. Id.
Defendants also argue that the meaning of “receipt unit,” “sending unit,” “receiver,” or
“sender” depends on the context in which the term is being used. Id. (citing Dkt. No. 126-1 at ¶
25). According to Defendants, in the context of communications between a cellular device and a
base station, receivers, senders, and transmitters are known structures for the transmission of radio
waves modulated in accordance with published specifications. (Dkt. No. 126 at 12) (citing Dkt.
No. 126-1 at ¶ 26). Defendants contend that these structures are available as components for
cellular radio communication, but cellular radio communications play no part in the ’675 or ’627
Patents’ asserted claims. Id. Defendants argue that the accused network elements within a packet
core network communicate over a wired connection typically using Internet Protocol, not
wirelessly via modulated radio communication. Id.
Defendants also argue that a switch or a router are separate components within a network
and would not be considered well-known structures within a network element connoted by a
“receipt unit” or a “sending unit.” (Dkt. No. 126 at 12) (citing Dkt. No. 126-1 at ¶ 31). Defendants
further contend that a network card would not be configured to do any of the claimed functions of
the construed terms. (Dkt. No. 126 at 12) (citing Dkt. No. 126-1 at ¶ 32). Defendants also argue
that a person of ordinary skill in the art (“POSITA”) would not understand whether a structure
“configured to” perform any of those functions is hardware or software. (Dkt. No. 126 at 13).

Page 24 of 63

According to Defendants, the functional disclosure contained in the specification merely discloses
an MME or SGSN sending and receiving data, and describes the “receipt unit” and “sending unit”
by their functions. (Dkt. No. 126 at 13) (citing Dkt. No. 126-1 at ¶¶ 26-27). Defendants contend
that this description discloses no structure to a POSITA. (Dkt. No. 126 at 13) (citing Dkt. No. 1261 at ¶ 29). Finally, Defendants also argue that neither the specification of the ’675 and ’627 Patents
nor TS 23.401 V0.2.0 discloses any receiver or sender structure, and therefore the disputed terms
are indefinite. (Dkt. No. 126 at 13-14) (citing Dkt. No. 126-1 at ¶¶ 32-33).
Plaintiff responds that none of these terms use the “means for” language. (Dkt. No. 119 at
13-14). Plaintiff argues that both the intrinsic and extrinsic evidence shows that the terms recite
well understood structures “configured to” send or receive well understood data types in the
claimed handover process. (Id. at 14). Plaintiff contends that each of these terms are used within a
larger network component, such as an MME or SGSN, that must include those structures to
achieve their purpose (e.g., sending and receiving appropriate data). Id. Plaintiff argues that the
common specification of the ’675 and ’627 Patents include numerous examples of a data “sender”
and a data “receiver” sending and receiving data, using structures well understood by practitioners
in the art. (Id. at 14-15). According to Plaintiff, each of the examples describes receiving and
sending data using similar functional language as in the claims. (Id. at 15).
Plaintiff further argues that the extrinsic evidence, such as the actual 3GPP standards,
provide useful and objective resources for determining the meaning of terms as understood by
persons of ordinary skill in the relevant art. Id. According to Plaintiff, the ’627 and ’675 Patents
are standard essential patents for the 3GPP TS 23.401 standard, and in particular relate to the
handover methods described in Section 5.5.2.1 of that standard. (Dkt. No. 119 at 15) (citing Dkt.
No. 119-1). Plaintiff contends that Section 5.5.2.1 includes nearly identical process flow charts as

Page 25 of 63

shown in the patent, and includes descriptions of the standard using similar terminology of that in
the claims. Id. Plaintiff argues that the standard simply states which element is being used to “send”
a particular type of data to another element to accomplish that step of the handover. (Dkt. No. 119
at 16).
In the alternative, Plaintiff argues that even if these terms are construed under § 112, ¶ 6,
the specification sets forth sufficient structure corresponding to the claims. Id. Plaintiff contends
that the specification repeatedly describes MMEs and SGSNs sending and receiving data that
would be readily appreciated by a person of ordinary skill in the art. Id. Plaintiff argues that there
should be no doubt that a person of ordinary skill in the art would recognize that the structures of
a “sender” and a “receiver” are necessarily part of the devices recited in the patent claims. (Id. at
17). Plaintiff contends that these are well known devices with well known structures for sending
and receiving data. Id.
In its reply, Plaintiff argues that the claim elements at issue are drawn to the most
fundamental functionality in the telecommunications arts (i.e., sending and receiving data). (Dkt.
No. 137 at 2). Plaintiff contends that the issue is not whether the word “unit” standing alone is
sufficient, but whether when taken as a whole the words of the claim element are “understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” (Dkt. No. 137 at 3) (citing Williamson, 792 F.3d at 1349). Plaintiff further argues that
the structural meaning is conveyed by the modifiers “sending” and “receipt” and by the remainder
of the claim elements, which describe the coupling of the structures sending and receiving the data.
(Dkt. No. 137 at 3). According to Plaintiff, these terms readily convey structure and are not
meaningless modifiers, because sending and receiving data is fundamental in the
telecommunications arts. (Dkt. No. 137 at 4) (citing Dkt. No. 138 at ¶¶ 25-26).

Page 26 of 63

Plaintiff further contends that the 3GPP standards themselves use the same terms (e.g.,
“sending” and “receiving” of data) to convey structure, and have been readily understood by
practitioners for years as a blueprint to build telecommunications networks. (Dkt. No. 137 at 4)
(citing Dkt. No. 138 at ¶ 27). Plaintiff also argues that the claims at issue here are not subject to
means-plus-function construction because the inputs and outputs are specified in the claim as well
as how the claim elements interact with each other via structural configurations. (Dkt. No. 137 at
4). Plaintiff further contends that the notion that those skilled in the art would not be familiar with
the structure of “receivers” for a wired system cannot be adopted, particularly because wired
network connections predated wireless network connections. (Id. at 5) (citing Dkt. No. 138 at ¶¶
28-32). Finally, Plaintiff argues that it has never taken the position or stated that a switch or a
router was in fact the receiver or sender. (Dkt. No. 137 at 5).
For the following reasons, the Court finds that the term “receiver” is not subject to § 112,
¶ 6, and should be construed to mean “receiver of a Serving GPRS Support Node (SGSN)” in
claims 4 and 5 of the ’627 Patent, and should be construed to mean “receiver of a Mobility
Management Entity (MME)” in claims 7 and 8 of the ’627 Patent. The Court further finds that
the term “sender” is not subject to § 112, ¶ 6, and should be construed to mean “transmitter of
a Serving GPRS Support Node (SGSN)” in claims 4 and 5 of the ’627 Patent, and should be
construed to mean “transmitter of a Mobility Management Entity (MME)” in claims 7 and 8
of the ’627 Patent. The Court also finds that the term “receipt unit” is not subject to § 112, ¶ 6,
and should be construed to mean “receiver of a user plane anchor network element” in claim
6 of the ’675 Patent. The Court further finds that the term “sending unit” is not subject to § 112,
¶ 6, and should be construed to mean “transmitter of a user plane anchor network element” in
claim 6 of the ’675 Patent.

Page 27 of 63

b) Analysis
The phrase “a receiver configured to receive a data forwarding tunnel identifier of a User
Plane Entity (UPE) from the UPE” appears in claim 4 of the ’627 Patent. The phrase “a sender
configured to: send the data forwarding tunnel identifier of the UPE to a source Radio Network
Controller (RNC), and send a data forwarding tunnel identifier of a Long Term Evolution (LTE)
access network to the UPE” appears in claim 4 of the ’627 Patent. The phrase “the receiver is
configured to receive a forward data response carrying the data forwarding tunnel identifier of the
UPE, from the UPE” appears in claim 5 of the ’627 Patent. The phrase “the sender is configured
to send a forward data request to the UPE” appears in claim 5 of the ’627 Patent. The phrase “a
receiver configured to receive a data forwarding tunnel identifier of a User Plane Entity (UPE)
from the UPE” appears in claim 7 of the ’627 Patent. The phrase “a sender configured to: send the
data forwarding tunnel identifier of the UPE to a Long Term Evolution (LTE) access network, and
send a data forwarding tunnel identifier of a target Radio Network Controller (RNC) to the UPE”
appears in claim 7 of the ’627 Patent. The phrase “the receiver is configured to receive a forward
data response carrying the data forwarding tunnel identifier of the UPE, from the UPE” appears in
claim 8 of the ’627 Patent. The phrase “the sender is configured to send a forward data request to
the UPE” appears in claim 8 of the ’627 Patent. The phrase “receipt unit configured to receive data
forwarded by the source data forwarding network element” appears in claim 6 of the ’675 Patent.
The phrase “sending unit configured to forward the received data to the target side processing
network element” appears in claim 6 of the ’675 Patent. As indicated, none of the claims recite the
word “means.”
“It is well settled that ‘[a] claim limitation that actually uses the word ‘means’ invokes a
rebuttable presumption that § 112, [¶] 6 applies.’” Apex Inc. v. Raritan Comput., Inc., 325 F.3d

Page 28 of 63

1364, 1371 (Fed. Cir. 2003) (quotation omitted). It is also equally understood that “a claim term
that does not use ‘means’ will trigger the rebuttable presumption that § 112, [¶] 6 does not apply.”
Id. (quotation omitted). The presumption against the application of § 112, ¶ 6 may be overcome if
a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else
recites ‘function without reciting sufficient structure for performing that function.’” Williamson,
792 F.3d at 1339 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). “In
undertaking this analysis, we ask if the claim language, read in light of the specification, recites
sufficiently definite structure to avoid § 112, ¶ 6.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d
1094, 1099 (Fed. Cir. 2014) (citing Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d
1350, 1357 (Fed. Cir. 2011)).
None of the claims recite the word “means.” Therefore, there is a rebuttable presumption
that § 112, ¶ 6 does not apply. Defendants have failed to rebut the presumption because “the words
of the claim are understood by persons of ordinary skill in the art to have sufficiently definite
meaning as the name for structure.” Williamson, 792 F.3d at 1348. Specifically, the intrinsic
evidence demonstrates that a person of ordinary skill in the art would understand the necessary
structure of the “receiver” and “sender” in claims 4, 5, 7, and 8 of the ’627 Patent, as well as the
necessary structure of the “receipt unit” and “sending unit” in claim 6 of the 675 Patent.
As discussed above, the preambles of claims 4, 5, 7, and 8 of the ’627 Patent are limiting.
The preamble of claim 4 recites “[a] Serving GPRS Support Node (SGSN), comprising.” The
preamble of claim 7 recites “A Mobility Management Entity (MME), comprising.” The claims
then recite “a receiver configured to” and “a sender configured to.” Thus, a person of ordinary
skill in the art would understand that the sender of claims 4 and 5 is the transmitter of a Serving
GPRS Support Node (SGSN), and that the receiver of claim 4 and 5 is the receiver of a Serving

Page 29 of 63

GPRS Support Node (SGSN). Likewise, a person of ordinary skill in the art would understand that
the sender of claims 7 and 8 is a transmitter of a Mobility Management Entity (MME), and that
the receiver of claims 7 and 8 is a receiver of a Mobility Management Entity (MME).
Similarly, claim 6 of the 675 Patent recites “a user plane anchor network element . . .
wherein the user plane anchor network element is provided with a receipt unit configured to . . .,
and a sending unit configured to . . .” A person of ordinary skill in the art would understand that
the receipt unit is a receiver of a user plane anchor network element, and that the sending unit is a
transmitter of a user plane anchor network element. The specification also states that the user plane
anchor network element may be a Gateway GPRS Support Node (GGSN) in certain embodiments.
’627 Patent at 16:32–41.
The claim language further describes the inputs and outputs of these components, and what
it is that they “receive” or “send.” For example, the “receipt unit” is “configured to receive data
forwarded by the source data forwarding network element” while the “sending unit” is “configured
to forward the received data to the target side processing network element.” See, e.g., ’675 Patent
at claim 6. As explained in E2E, § 112, ¶ 6 does not apply when the written description provides
context as to the “inputs and outputs” and how the claimed components “interact[] with other
components . . . in a way that . . . inform[s] the structural character of the limitation-in-question or
otherwise impart[s] structure.” E2E Processing, Inc. v. Cabela’s Inc., 2015 U.S. Dist. LEXIS
86060, *20 (E.D. Tex. July 2, 2015) (quoting Williamson, 792 F. 3d at 1351). Each of the disputed
terms is used within a larger network component, such as an MME or SGSN, which must include
those structures to achieve their stated objective (e.g., sending and receiving appropriate data).
Moreover, the specification includes examples of a data “sender” sending, and a data
“receiver” receiving with each using structures well understood by a person of ordinary skill in

Page 30 of 63

the art. For example, the specification states the following:
When a handover or change from a UTRAN system to an SAE system takes
place, the 3G SGSN and the UPE exchange messages including a forward data
request message and a forward data response message, to obtain a data forwarding
tunnel identifier of the UPE, and inform the source RNC of the data forwarding
tunnel identifier of the UPE. The source RNC forwards a data packet to the UPE;
the UPE buffers the forwarded data packet and forwards the buffered forwarded
data packet to the evolved access network on completion of update of user plane
routing.
When a handover or change from an SAE system to a UTRAN system takes
place, the MME and the UPE exchange messages including a forward data request
message and a forward data response message, to obtain a data forwarding tunnel
identifier of the UPE, and inform the evolved access network of the data forwarding
tunnel identifier of the UPE. The evolved access network forwards a data packet to
the UPE; the UPE buffers the forwarded data packet and forwards the buffered
forwarded data packet to the target RNC on completion of update of user plane
routing.
’627 Patent at 9:48–66. The specification provides numerous other examples of a “sender” sending
data, and a “receiver” receiving data. See, e.g., ’627 Patent at 6:35–38 (“[S]tep 710, the 3G SGSN
sends a forward relocation response message to the 2G SGSN, a data forwarding tunnel identifier
carried in the message is the data forwarding tunnel identifier of the GGSN.”); 6:39-41 (“[S]tep
S711; the 2G SGSN receives a data packet from the GGSN, and sends the data packet to an MS
via the source BSS.”); 7:16-18 (“[S]tep S809: the 3G SGSN receives a data packet from the GGSN,
and sends the data packet to an MS via the source RNC.”); 10:30-32 (“[S]tep 1209: the 2G SGSN
receives a data packet from the GGSN, and sends the data packet to an MS via the source BSS.”);
13:25-31 (“[T]he MME and the UPE exchange messages including a forward data request message
and a forward data response message, to obtain a data forwarding tunnel identifier of the UPE.
Meanwhile the MME informs the UPE of a tunnel identifier of the targete[d] RNC and then
informs the evolved access network of the data forwarding tunnel identifier of the UPE.”); 9:2731 (“When a handover or change from a GERAN system to an SAE system takes place, the MME
and the UPE (user plane anchor of the GERAN/UTRAN and the SAE) exchange messages

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including a forward data request message and a forward data response message.”). Each of these
examples describes receiving and sending data using similar words as in the claims, and indicate
that these terms have an “understood meaning in the art” and thus are not subject to § 112 ¶ 6
construction. See Chrimar Sys. v. ADTRAN, Inc., 2016 U.S. Dist. LEXIS 79555, *38 (E.D. Tex.
June 17, 2016) (“Where a claim term has an understood meaning in the art, it recites sufficient
structure.”).
Defendants argue that the only disclosure is the generic “receipt unit,” “sending unit,”
“tunnel identifier acquisition unit,” and “tunnel identifier sending unit” of Figure 20. (Dkt. No.
126 at 9). The Court disagrees. As discussed above, the claim language indicates that the recited
“sender,” “receiver,” “receipt unit,” and “sending unit” are used within a larger network
component, such as an MME or SGSN. The intrinsic evidence further indicates that an MME or
SGSN must include those structures to achieve the recited objectives (e.g., sending and receiving
appropriate data). See, e.g., 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).
Defendants also argue that “unit” is a nonce word that may “operate as a substitute for
‘means’ in the context of § 112, ¶ 6,” and that the terms “receiver” and “sender” operate in similar
fashion. (Dkt. No. 126 at 10). Defendants err by focusing on the word “unit” in isolation from the
broader language and requirements of the claim. By focusing only on the word “unit,” Defendants
ignore the structural requirements elsewhere in the claim that provide necessary structure. In other
words, the issue is not whether the word “unit” standing alone is sufficient, because here a person
of ordinary skill in the art would understand that the disputed term “have a sufficiently definite
meaning as the name for structure.” Williamson, 792 F.3d at 1348.

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Defendants further argue that the meaning of “receipt unit,” “sending unit,” “receiver,” or
“sender” depends on the context in which the term is used. (Dkt. No. 126 at 11). Defendants
contend that “[i]n the context of communications between a cellular device and a base station,
receivers, senders, and transmitters are known structures for the transmission of radio waves
modulated in accordance with published specifications,” but are not known structures for a packet
core network. (Dkt. No. 126 at 12). The Court is not persuaded by Defendants’ argument. The
Court agrees that context matters, and here the context is provided by the surrounding claim
language and the intrinsic evidence.
The sending and receiving of data are fundamental functions for the recited terms, and a
person of ordinary skill in the art would understand the structures used to send and receive data.
The receiving unit and sending unit would be understood to be the structure for receiving and
sending data, respectively. Likewise, the sender and receiver would be understood to be the
structure for sending and receiving data, respectively. Indeed, the specification contains multiple
figures illustrating flow charts for data processing. Figures 7, 8, 9, 10, 12, 13, 14, 15, 16, 17, 18
and 19 show information flowing among the MS, RNC, BSS, SGSN, GGSN. Each arrow in these
flow charts indicates the direction of information flow. Therefore, the intrinsic evidence provides
the proper context for the disputed terms, and indicates that “the words of the claim are understood
by persons of ordinary skill in the art to have sufficiently definite meaning as the name for
structure.” Williamson, 792 F.3d at 1348.
Although the terms are not subject to § 112 ¶ 6, the Court finds that a person of ordinary
skill in the art would understand that the receiver, sender, receipt unit, and sending unit would be
contained within the appropriate network element. Specifically, the preamble of claim 4 of the
’627 Patent recites “[a] Serving GPRS Support Node (SGSN), comprising.” The preamble of claim

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7 of the ’627 Patent recites “A Mobility Management Entity (MME), comprising.” The claims
then recite “a receiver configured to” and “a sender configured to.” Thus, a person of ordinary
skill in the art would understand that the sender of claims 4 and 5 is a transmitter of a Serving
GPRS Support Node (SGSN), and that the receiver of claim 4 and 5 is a receiver of a Serving
GPRS Support Node (SGSN). Likewise, a person of ordinary skill in the art would understand that
the sender of claims 7 and 8 is a transmitter of a Mobility Management Entity (MME), and that
the receiver of claims 7 and 8 is a receiver of a Mobility Management Entity (MME).
Similarly, claim 6 of the 675 Patent recites “a user plane anchor network element . . .
wherein the user plane anchor network element is provided with a receipt unit configured to . . .,
and a sending unit configured to . . . .” A person of ordinary skill in the art would understand that
the receipt unit is a receiver of a user plane anchor network element, and that the sending unit is a
transmitter of a user plane anchor network element. Finally, in reaching its conclusion, the Court
has considered the extrinsic evidence submitted by the parties, and given it its proper weight in
light of the intrinsic evidence.
c) Court’s Construction
The Court finds that the term “receiver” is not subject to § 112, ¶ 6, and construes the term
to mean “receiver of a Serving GPRS Support Node (SGSN)” in claims 4 and 5 of the ’627
Patent, and construes the term to mean “receiver of a Mobility Management Entity (MME)” in
claims 7 and 8 of the ’627 Patent. The Court further finds that the term “sender” is not subject to
§ 112, ¶ 6, and construes the term to mean “transmitter of a Serving GPRS Support Node
(SGSN)” in claims 4 and 5 of the ’627 Patent, and construes the term to mean “transmitter of a
Mobility Management Entity (MME)” in claims 7 and 8 of the ’627 Patent. The Court also finds
that the term “receipt unit” is not subject to § 112, ¶ 6, and construes the term to mean “receiver

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of a user plane anchor network element” in claim 6 of the ’675 Patent. The Court further finds
that the term “sending unit” is not subject to § 112, ¶ 6, and construes the term to mean
“transmitter of a user plane anchor network element” in claim 6 of the ’675 Patent.
3. Claims 4 and 7 of the ’627 Patent
Disputed Term
Plaintiff’s Proposal
“A Serving GPRS Support Plain meaning
Node (SGSN),
comprising: …wherein the
data forwarding tunnel
identifier of the UPE is
used by the source RNC
to forward data to the
UPE, and the data
forwarding tunnel
identifier of the LTE
access network is used by
the UPE to forward the
data received from the
source RNC to the LTE
access network.”
“A Mobility Management Plain meaning
Entity (MME), …
comprising: … wherein
the data forwarding tunnel
identifier of the UPE is
used by the LTE access
network to fo1wai·d data
to the UPE, and the data
fo1wai·ding tunnel
identifier of the target
RNC is used by the UPE
to fo1wai·d the data
received from the LTE
access network to the
target RNC.”

Defendants’ Proposal
Indefinite / incapable of
construction.

Indefinite / incapable of
construction.

a) The Parties’ Positions
The parties dispute whether claims 4 and 7 of the ’627 Patent are indefinite under IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), for reciting both an

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apparatus and a method of using the apparatus. Plaintiff contends that the claims specifically recite
an apparatus, such as an MME or SGSN, which configures a tunnel within a network environment.
(Dkt. No. 119 at 20). According to Plaintiff, the “wherein” clause at issue describes the
configuration of the tunnel in greater detail by specifying what the end points are and what kind
of traffic the tunnel carries. Id. Plaintiff contends that infringement of these claims occurs as soon
as an apparatus is made or sold (or offered for sale) with the ability to configure the claimed tunnel.
(Id. at 21).
Plaintiff further argues that the Federal Circuit cases make clear that even the use of an
active verb does not turn the claim into an improper mixed method and apparatus claim. Id. (citing
UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 819 (Fed. Cir. 2016); Microprocessor
Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008); HTC Corp.
v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1273 (Fed. Cir. 2012)). Plaintiff contends that the
disputed claim language is similar to the active verbs used in these cases, and describes the larger
network environment in which the claimed apparatus resides. (Dkt. No. 119 at 22).
Defendants argue that apparatus claims 4 and 7 of the ’627 Patent recite the required
structure and functionality for a SGSN or MME, but also require that two other entities to actually
receive messages from the SGSN or MME, and then forward data based upon those messages.
(Dkt. No. 126 at 18). According to Defendants, claims 4 and 7 recite functionality divorced from
any cited structure and should be found invalid. (Id. at 19). Defendants argue that this is not a case
where the clause describes the configuration of the tunnel in greater detail. (Id. at 20). Defendants
contend that the clause requires that the tunnel identifier “is used” by a totally different entity “to
forward data,” and requires an additional tunnel identifier “is used” by another entity “to forward
the data.” Id. Defendants argue that the claims recite structure, but then require an action by a

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totally separate entity and thus are invalid. Id.
Defendants also argue that the cases cited by Plaintiff do not save these claims. (Dkt. No.
126 at 21). According to Defendants, in each of those cases, the alleged action in question was
required to be performed by the claimed structure itself. Id. Defendants argue that claims 4 and 7
plainly fall within the camp of indefinite claims like those at issue in IPXL, Katz, and E-Watch.
(Dkt. No. 126 at 21) (citing IPXL, 430 F.3d at 1384; In re Katz, 639 F.3d 1303, 1318 (Fed. Cir.
2015); E-Watch Inc. v. Apple, Inc., No. 2:13-CV-1061-JRG-RSP, 2015 WL 1387947 at *6-*7
(E.D. Tex. Mar. 25, 2015)).
Plaintiff replies that Defendants’ argument that claims 4 and 7 are invalid under IPXL is
legally flawed because the HTC case is squarely contradictory. (Dkt. No. 137 at 6-7) (citing HTC
Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270 (Fed. Cir. 2012)). Plaintiff argues that the claims
are directed to novel MME or SGSN structures that must be used in a particular network
environment. (Dkt. No. 137 at 7). Plaintiff contends that the “wherein” clause is not requiring an
action be performed by the claimed MME structure, but instead is defining the network
environment in which the MME is configured to operate, and in particular, the functional
capability of the tunnel identifier being used. Id. According to Plaintiff, infringement of claim 7
can be readily determined by looking at the MME and the actions it must be capable of performing
in the specified network environment. Id.
For the following reasons, the Court finds that claims 4 and 7 of the ’627 Patent are not
indefinite under IPXL, and that the disputed clause should be given their plain and ordinary
meaning.
b) Analysis
“A single patent may include claims directed to one or more of the classes of patentable

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subject matter, but no single claim may cover more than one subject matter class.” IPXL, 430 F.3d
at 1384 (holding indefinite a claim covering both an apparatus and a method of using that
apparatus). Claim 4 recites a Serving GPRS Support Node (SGSN), comprising “a receiver
configured to receive” a tunnel identifier, and “a sender configured to: send” the tunnel identifiers
to other network elements. Similarly, claim 7 recites a Mobility Management Entity or MME,
comprising “a receiver configured to receive” a tunnel identifier, and “a sender configured to:
send” the tunnel identifiers to other network elements. Defendants agree that there are no IPXL
issues for these elements of claims 4 and 7.
Instead, Defendants argue that the “wherein” clause requires other network entities to
actually receive and “use[]” the tunnel identifiers to forward data. (Dkt. No. 126 at 19).
Specifically, Defendants argue that the wherein clause requires that the tunnel identifier “is used”
by a different entity (a source RNC in claim 4 and a LTE access network in claim 7) “to forward
data,” and that an additional tunnel identifier “is used” by another entity (the User Plan Entity
(UPE)) “to forward the data.” Defendants contend that this action by a separate entity makes the
apparatus claim invalid.
The Court disagrees with Defendants’ analysis. First, in all of the cases cited by
Defendants, the courts found that the respective claims were invalid because they claimed both an
apparatus and use of the apparatus by a user. See IPXL, 430 F.3d at 1384 (finding invalid a claim
that recited structure, but then required a user using one of the structures); In re Katz, 639 F.3d
1303, 1318 (Fed. Cir. 2015) (finding invalid a claim reciting an “interface means” but then
requiring a “caller[] digitally enter[ing] data”); E-Watch Inc. v. Apple, Inc., 2015 U.S. Dist. LEXIS
37216, *26-27 (E.D. Tex. Mar. 25, 2015) (finding invalid an apparatus claim that also required
“movement by the user”). Unlike the cases cited by the Defendants, the claims do not recite both

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structure and use of the structure by a user.
Contrary to Defendants’ representation, the claims of HTC Corp. v. IPCom GmbH & Co.,
KG, 667 F.3d 1270 (Fed. Cir. 2012), are very similar to the disputed claims. 7 In HTC, the claim
recited “[a] mobile station for use with a network including a first base station and a second base
station that achieves a handover from the first base station to the second base station by: storing
link data for a link in a first base station, holding . . . , initially maintaining a storage of the link
data in the first base station . . . .” HTC, 667 F.3d at 1273 (emphasis added). The Federal Circuit
found that “[t]he plain language of claims 1 and 18 indicates that the network, not the mobile
station, performs the enumerated functions,” and that “the six functions define the network
environment; they are not functions performed by the mobile station.” Id. at 1274 (emphasis
added). The Court held that the claims were valid under IPXL, stating that “Claims 1 and 18,
likewise, make clear that infringement occurs when one makes, uses, offers to sell, or sells the
claimed apparatus: the mobile station—which must be used in a particular network environment.”
Id. at 1277.
Here, the claims are directed to a MME or SGSN structure that is used in a particular
network environment. For example, claim 7 is directed to a MME structure and its associated
components creating a tunnel identifier. The claim further includes a wherein clause that defines
the network environment in which the tunnel identifier is used: “wherein the data forwarding
tunnel identifier of the UPE is used by the LTE access network to forward data to the UPE.” Like

Defendants represented to the Court that “in HTC¸ the claimed ‘mobile station’ was ‘storing’ and
‘maintaining’ link data.” (Dkt. No. 126 at 21) (citing HTC Corp. v. IPCom GmbH & Co., KG, 667
F.3d 1270, 1273 (Fed. Cir. 2012)). This is not an accurate statement of the conclusions of the court
in HTC. Instead, the Federal Circuit concluded that “[t]he plain language of claims 1 and 18
indicates that the network, not the mobile station, performs the enumerated functions,” and “the
six functions define the network environment; they are not functions performed by the mobile
station.” Id at 1274 (emphasis added)
7

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the claims in HTC, the “wherein” clause does not require an action to be performed by the claimed
MME structure, but instead defines the network environment in which the MME is configured to
operate, and in particular, the functional capability of the tunnel identifier being used. Accordingly,
“Claims [4] and [7], likewise, make clear that infringement occurs when one makes, uses, offers
to sell, or sells the claimed apparatus: the [Serving GPRS Support Node (SGSN) or the Mobility
Management Entity (MME)]—which must be used in a particular network environment.” HTC at
1277.
c) Court’s Construction
The Court finds that claims 4 and 7 of the ’627 Patent are not indefinite under IPXL, and
the disputed clauses will be given their plain and ordinary meaning.
4. The Method Steps of Claim 1 of the ’675 Patent
Disputed Term
Steps of the “data
processing method in a
handover procedure”

Plaintiff’s Proposal
Plain meaning; the steps need
not be performed in the order
recited.

Defendants’ Proposal
Steps must be performed in the
order recited.

a) The Parties’ Positions
The parties dispute whether the steps of claim 1 of the ’675 Patent must be performed in
the order recited. Plaintiff argues that nothing in the grammar of the claim explicitly or implicitly
requires a particular order of the steps. (Dkt. No. 119 at 23). Plaintiff contends that it makes no
difference which of the “informing” step occurs first, or whether they occur simultaneously. Id.
Plaintiff argues that the specification provides specific examples of the first informing step being
performed meanwhile or at the same time as the exchanging step is being performed. Id. (citing
’675 Patent at 12:61–13:33). According to Plaintiff, Defendants cannot overcome the wellestablished presumption that method claim steps need not be performed in order. Id.
Defendants respond that the plain language of claim 1 makes clear that the steps must be

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performed in order. (Dkt. No. 126 at 22). Defendants argue that the Mobility Management network
element cannot “inform[] . . . a source data forwarding network element of the [user plane anchor
network element’s] data forwarding tunnel identifier” until the Mobility Management network
element “exchang[es] messages . . . [with] a user plane anchor network element, to obtain” it. (Id.
at 23). Defendants contend that it is only after this step can “the source data forwarding network
element [forward data to the user plane anchor network element] using [that] data forwarding
tunnel identifier,” and only then can that data be forwarded to the target. Id.
Defendants further contend that every procedure disclosed in the specification are
presented as ordered steps. Id. (citing ’675 Patent at 2:9–3:65, 6:5–8:60, 9:65–12:56, 13:47–15:53,
Figs. 3-10, 12-19). Defendant also argue that the procedures have numbered steps where nodes
request and receive information and then later relay that information to other nodes. (Dkt. No. 126
at 23) (citing ’675 Patent at 2:9–3:65, 6:5–8:60, 9:65–12:56, 13:47–15:53, 6:25130, Figs. 3-10,
12-19).
Defendants further argue that the prosecution history confirms that the steps of claim 1
must be performed in order. (Dkt. No. 126 at 23). Defendants contend that claim 1 as originally
filed contained only the “receiving” and “forwarding” limitations, and thus necessarily must have
been in order. Id. Defendants argue that the first amendment added the “exchanging” step and the
(now) second “informing” step to be performed in necessary order. Id. Defendants further argue
that by the final amendment, claim 1 was amended to add the limitation of claim 3 to a specific
location within the ordered steps of claim 1. (Dkt. No. 126 at 24). Defendants contend that the
applicant argued that the prior art does not show the added “informing” step. Id. Defendants further
contend that the examiner indicated that the first “informing” step was not found in the art in the
reasons for allowance. Id. According to Defendants, the decision to place the added “informing”

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step after the “exchanging” step was meaningful and the only limitation giving rise to any alleged
novelty. Id.
Defendants also contend that ignoring the appropriate order for information transfer in a
network procedure would result in failures and errors. (Dkt. No. 126 at 25). According to
Defendants, standardization bodies employ a standardized tool known as Message Sequence
Charts (“MSC”) for describing communication in a network and the appropriate order for each
message. Id. (citing Dkt. No. 126-5). Defendants contend that this style of describing a method
procedure is the very same manner in which the procedures of the ’675 Patent are described in
Figures 3-10 and 12-19. (Dkt. No. 126 at 25).
For the following reasons, the Court finds that Steps [1], [3], [4], and [5] must occur in the
order recited, but the claim does not exclude intervening steps. The Court further finds that Step
[2] must occur before Step [5], but otherwise is not required to occur before or after any other
recited step.
b) Analysis
“[A]lthough a method claim necessarily recites the steps of the method in a particular
order, as a general rule the claim is not limited to performance of the steps in the order recited,
unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v.
Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v.
Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). A two-part test is used to determine
whether the claims require a specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,
1369 (Fed. Cir. 2003). First, the Court looks to the claim language to determine if logic or grammar
requires performance of the steps in the order written and, if not, the Court examines the rest of
the specification to decide whether it “directly or implicitly requires such a narrow construction.”

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Id. at 1370.
Here, the claim language explicitly requires a number of the steps to occur before others.
Claim 1 recites the following steps:
1. A data processing method in a handover procedure, comprising:
[STEP 1] exchanging messages, between a Mobility Management
network element and a user plane anchor network element, to
obtain a data forwarding tunnel identifier of the user plane anchor
network element;
[STEP 2] informing, by the Mobility Management network element,
the user plane anchor network element of a data forwarding tunnel
identifier of a target side processing network element;
[STEP 3] informing, by the Mobility Management network element, a
source data forwarding network element of the data forwarding
tunnel identifier of the user plane anchor network element;
[STEP 4] receiving, by the user plane anchor network element, data
forwarded by the source data forwarding network element using
the data forwarding tunnel identifier of the user plane anchor
network; and
[STEP 5] forwarding, by the user plane anchor network element, the
data to the target side processing network element.
’675 Patent at Claim 1 (annotated and highlighted). Starting with Step 5, the recited “data” (red)
cannot be forwarded by the user plane anchor network element (turquoise) to the to the target side
processing network element (yellow) until “the data” is received by the user plane anchor network
element (turquoise) in Step 4. Therefore, Step 4 must occur before Step 5. Similarly, the source
data forwarding network element (dark green) can only send the data to the user plane anchor
network element (turquoise) after it has been informed of the of the “data forwarding tunnel
identifier of the user plane anchor network element” (purple) in Step 3. Therefore, Step 3 must
occur before Step 4. Likewise, the Mobility Management network element (light green) can only
inform the source data forwarding network element (dark green) of the data forwarding tunnel
identifier of the user plane anchor network element (purple) after the Mobility Management
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network element (light green) obtains a data forwarding tunnel identifier of the user plane anchor
network element (purple) in Step 1. Therefore, Step 1 must occur before Step 3.
Regarding Step 2, the claim language only requires that it occur before Step 5, because the
user plane anchor network element (turquoise) can only forward the data (red) to the target side
processing network element (yellow) after it has been informed of the “data forwarding tunnel
identifier” (grey) of the target side processing network element (yellow) in Step 2. Therefore, Step
2 must occur before Step 5. Likewise, the user plane anchor network element (turquoise) in Step
2 must be the same the user plane anchor network element (turquoise) in each Step 5. However,
neither logic not grammar require the steps to occur in any other order.
Defendants argue that the “Mobility Management network element cannot ‘inform[] . . . a
source data forwarding network element of the [user plane anchor network element’s] data
forwarding tunnel identifier’ until the Mobility Management network element ‘exchang[es]
messages . . . [with] a user plane anchor network element, to obtain’ it.” (Dkt. No. 126 at 22). As
indicated above, the Court agrees that Step 1 must occur before Step 3, and that Step 4 and Step 5
must follow sequentially. See Mantech Envtl. Corp. v. Hudson Envtl. Servs., 152 F.3d 1368, 137576 (Fed. Cir. 1998) (“[T]he sequential nature of the claim steps is apparent from the plain meaning
of the claim language and nothing in the written description suggest otherwise.”).
Defendants also argue that the prior art and embodiments of the invention, are presented
as ordered steps. (Dkt. No. 126 at 23). The Court agrees with Defendants to the extent that
Defendants’ argument does not contradict the ordering required by the claim language itself.
Defendants further argue that the prosecution history also confirms that the steps of claim 1 must
be performed in order. (Dkt. No. 126 at 23). Claim 1 as originally filed contained only the
“receiving” step (Step 4) and “forwarding” step (Step 5). The first amendment to the claim added

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the “exchanging” step (Step 1) and the second “informing” step (Step 3). (Dkt. No. 126-3 at 3).
Claim 1 was then amended to add the limitation of dependent claim 3 within the ordered steps of
independent claim 1. (126-15 at 9). However, the patentee did not clearly and unmistakably argue
that the recited order distinguished the claim from the prior art. Instead, the patentee argued that
the prior art does not teach or suggest each and every element of claim 1. (Dkt. No. 126-15 at 6)
(“[I]t is respectfully submitted that Shaheen does not teach or suggest each and every element of
independent claim 1”). Contrary to Defendants’ suggestion, arguing that the prior art does not
include an element does not “implicitly affirm” that the steps must be performed in the recited
order.
Defendants also contend that the standardization bodies employ a standardized tool known
as Message Sequence Charts (“MSC”) for describing communication in a network and the
appropriate order for each message. (Dkt. No. 126 at 25). Defendants argue that this style of
describing a method procedure is the same one used to describe the procedures in Figures 3-10
and 12-19. Id. The Court agrees with Defendants to the extent that Defendants’ argument does not
contradict the ordering required by the claim language itself. Moreover, the Court notes that the
specification discloses at least one alternative data processing method. ’627 Patent at 4:55–67
(“With the data processing methods in the direct-tunnel mechanism when a handover or change
between a GERAN and a UTRAN takes place, a GGSN can buffer data forwarded by a source
data forwarding network element and then send the data to a target side processing network
element; alternatively, the GGSN can send the data forwarded by the source data forwarding
network element directly to the target side processing network element.”) (emphasis added). Thus,
the intrinsic evidence explicitly indicates that a strict ordering of steps to one disclosed
embodiment would be improper. Finally, in reaching its conclusion, the Court has considered the

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extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic
evidence.
c) Court’s Construction
Steps [1], [3], [4], and [5] of claim 1 of the ’675 Patent must occur in the order recited,
but the claim does not exclude intervening steps. Step [2] must occur before Step [5], but
otherwise is not required to occur before or after any other recited step.
5. The “Informing” Step of Claim 1 and the “Inform” Phrase in Claim 6
of the ’675 Patent
Disputed Term
“informing, by the
Mobility Management
network element, the user
plane anchor network
element of a data
forwarding tunnel
identifier of a target side
processing network
element” / “inform the
user plane anchor network
element of a data
forwarding tunnel
identifier of the target side
processing network
element”

Plaintiff’s Proposal
Plain meaning.

Defendants’ Proposal
“independently of the
exchanging messages step,
informing, by the Mobility
Management network element,
the user plane anchor network
element of a data forwarding
tunnel identifier of a target side
processing network element” /
“independently of the
exchange messages step,
inform the user plane anchor
network element of a data
forwarding tunnel identifier of
the target side processing
network element”

a) The Parties’ Positions
The parties dispute whether claims 1 and 6 of the ’675 Patent require the additional
language of “independently of the exchanging messages step,” as Defendants propose. Plaintiff
argues that the specification provides specific examples of the informing step being performed
meanwhile, or at the same time as, the exchanging step is being performed. (Dkt. No. 119 at 24)
(citing ’675 Patent at 12:61–13:33, 10:13–22). Plaintiff contends that there is no requirement that
method steps be performed in any particular order, or that they cannot be performed together. (Dkt.

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No. 119 at 25). Plaintiff further argues that claim 6 does not have an “exchange messages step”
anywhere within its body, or does not have any steps within its body at all. Id. According to
Plaintiff, there is no order to performing because performance is not required for infringement of
an apparatus claim. Id.
Defendants respond that their construction clarifies that the “informing” step may not be
subsumed within the “exchanging” step. (Dkt. No. 126 at 26). Defendants contend that in addition
to the required order, claims 1 and 6 also recite separate and independent steps of “exchanging
messages” and “informing.” Id. Defendants argue that the “exchanging messages” step is
separated and distinguished from the “informing” step by a line indentation. Id. Defendants further
argue that every instance in the specification that Plaintiff points to identifies these steps
separately. (Id. at 27) (citing ’675 Patent at 12:61–13:1). According to Defendants, this
demonstrates that the step of “the MME and the UPE exchange messages” is separate and distinct
from the step of “[m]eanwhile the MME informs the UPE of a tunnel identifier of the [target]
access network side.” (Dkt. No. 126 at 27).
Finally, Defendants argue that their construction is appropriate given the claim
amendments made during prosecution. Id. Defendants contend that the “informing” step was
added to distinguish the claim from the cited art. Id. Defendants further contend that this step was
the only limitation cited by the examiner in the reasons for allowance. Id.
Plaintiff replies that there is nothing “improper” as a matter of claim construction about
allowing two method steps to be performed at the same time. (Dkt. No. 137 at 8). Plaintiff argues
that the portion of the specification highlighted by Defendants refute its argument. Id. According
to Plaintiff, the word “meanwhile” means “at the same time” and directly contradicts Defendants’
construction. Id. (citing http://www.dictionary.com/browse/meanwhile). Plaintiff further argues

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that adopting Defendants’ construction would read out embodiments where the two claimed steps
occur at the same time. (Dkt. No. 137 at 8) (citing ’675 Patent at 10:12–26, Figures 12, 13, 14, and
15). Finally, Plaintiff argues that Defendants wrongly suggest that the informing steps must be
independent because they were added during prosecution. (Dkt. No. 137 at 9). According to
Plaintiff, both “exchanging messages” and “informing ... of a data forwarding tunnel identifier”
must be performed by the infringing system, but can occur at the same or different time. Id.
For the following reasons, the Court finds that the phrase “informing, by the Mobility
Management network element, the user plane anchor network element of a data forwarding
tunnel identifier of a target side processing network element” in claim 1 of the ’675 Patent,
and the phrase “inform the user plane anchor network element of a data forwarding tunnel
identifier of the target side processing network element” in claim 6 of the ’675 Patent should
be given their plain and ordinary meaning.
b) Analysis
The phrase “informing, by the Mobility Management network element, the user plane
anchor network element of a data forwarding tunnel identifier of a target side processing network
element” appears in claim 1 of the ’675 Patent. The phrase “inform the user plane anchor network
element of a data forwarding tunnel identifier of the target side processing network element”
appears in claim 6 of the ’675 Patent. The Court finds that Defendants’ construction should be
rejected because it is inconsistent with the intrinsic evidence. The exchanging step of claim 1
recites that the Mobility Management network element and the user plane anchor network element
exchange messages to obtain a data forwarding tunnel identifier of the user plane anchor network
element. The informing step of claim 1 further requires the Mobility Management network element
to inform the user plane anchor network element of a data forwarding tunnel identifier of a target

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side processing network element. Thus, the exchanging step and informing step explicitly recite
the scope of the claims without requiring the step to be performed “independently,” as Defendants
propose. As discussed above, the only requirement is that STEPS 1, 3, 4, and 5 are performed in
the recited order, and that STEP 2 is performed before STEP 5. Defendants’ construction would
improperly add an unwarranted limitation to the ordering of the claims by requiring STEP 1 and
STEP 2 to be performed “independently.”
Moreover, the specification provides examples that are inconsistent with Defendants’
construction. For example, the specification states that that “the MME and the UPE exchange
messages” and “[m]eanwhile the MME informs the UPE of a tunnel identifier of the access
network side.” ’675 Patent at 12:61–66. Similar to the claim language, this indicates that the
informing step may be performed at the same time (i.e., meanwhile) as the exchanging step.
Defendants argue that “meanwhile” should be interpreted to mean “separate and distinct.” The
Court disagrees.
Defendants also argue that the informing step was added during prosecution, and thus is
required to occur independently (i.e., separately and distinctly from) the “exchanging messages”
step. (Dkt. No. 126 at 27). As discussed above, the patentee did not clearly and unmistakably argue
that the amendments require the steps to be performed independently. Instead, the patentee argued
that the prior art does not teach or suggest each and every element of claim 1. (Dkt. No. 126-15 at
6) (“[I]t is respectfully submitted that Shaheen does not teach or suggest each and every element
of independent claim 1”). Contrary to Defendants’ suggestion, arguing that the prior art does not
include an element does not mean that an “independent” or “separate and distinct” requirement
should be read into the claims. As indicated above, the claim language explicitly recites the
requirements of each step. Moreover, there is nothing improper with allowing two method steps

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to be performed at the same time. Finally, in reaching its conclusion, the Court has considered the
extrinsic evidence submitted by the parties, and given it its proper weight in light of the intrinsic
evidence.
c) Court’s Construction
The phrase “informing, by the Mobility Management network element, the user plane
anchor network element of a data forwarding tunnel identifier of a target side processing
network element” in claim 1 of the ’675 Patent, and the phrase “inform the user plane anchor
network element of a data forwarding tunnel identifier of the target side processing network
element” in claim 6 of the ’675 Patent will be given their plain and ordinary meaning.
6. “target side processing network element”
Disputed Term
“target side processing
network element”

Plaintiff’s Proposal
Plain meaning.

Defendants’ Proposal
“a processing network element
of a different Radio Access
Network than the source data
forwarding network element”

a) The Parties’ Positions
The parties dispute whether the source and targeting networking element are from “a
different Radio Access Network,” as Defendants propose. Plaintiff argues that nothing in the
specification or claim language rises to level of a disavowal sufficient to support Defendants’
construction. (Dkt. No. 119 at 26). Plaintiff contends that the system and method of the ’675 Patent
are directed to the operations needed to accomplish handovers as a mobile phone moves between
the coverage areas of cell towers. Id. Plaintiff argues that by limiting the claim to handovers where
two “different Radio Access Networks” are required, Defendants are trying to improperly limit
the claim to particular embodiments. (Id. at 27). Plaintiff further contends that there is no issue of
lexicography. Id. According to Plaintiff, without any basis to allege the “exacting” standard needed

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to show a disavowal under GE Lighting, the claims should simply be given their plain meaning.
Id. (citing GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)).
Plaintiff contends that this claim element is easily understood by a person of ordinary skill in the
art, and should not be unduly restricted. Id.
Defendants respond that a handover can occur intra-RAN within a specific Radio Access
Network (or RAN), for example moving from one 4G cell to another 4G cell, or can occur interRAN between different RANs, for example moving from a 4G cell to a 3G cell. (Dkt. No. 126 at
27). Defendants argue that the claims and specification leave no doubt that the purported invention
relates to inter-RAN handover or changes. (Id. at 28). Defendants contend that the “target side”
node always refers to an element of a different RAN than the source element. (Id.) (citing ’675
Patent at 2:9–3:65, 6:5–8:60, 9:65–12:56, 13:47–15:53). Defendants further argue that the claims
and specification are directed to purportedly solving a problem unique to inter-RAN handovers,
such that “target side” must connote a different RAN. (Dkt. No. 126 at 28).
Defendants also contend that the specification explicitly explains that the purported
problem was handover from one RAN to a different RAN, where one of those networks
implemented direct tunnel (e.g., 3G) and one did not (e.g., 2G). (Id. at 29). Defendants argue that
the specification describes the purported solution to this inter-RAN problem in the context of “a
handover or change between a 2G system and a 3G system takes place.” Id. (citing ’675 Patent at
4:15–19, 4:56–61). Defendants contend that the Detailed Description section goes on to explain
three overarching embodiments for these inter-RAN handovers or changes, and for each provides
four examples with figures. (Dkt. No. 126 at 30) (citing ’675 Patent at 5:61–8:60 and Figs. 7-10
(first embodiment); 9:65–12:56 and Figs. 12-15 (second embodiment); 13:34–15:53 and Figs. 1619 (third embodiment)). Defendants further argue that Plaintiff does not cite to anything in the

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specification that provides even a hint that the invention relates to intra-RAN (e.g., 4G to 4G)
handovers. (Dkt. No. 126 at 30). According to Defendants, the entirety of the specification is
directed toward a specific problem involving inter-RAN handover and a solution unique to that
problem. (Id. at 31).
Plaintiff replies that Defendants argue without support that the word “side” in “target side”
must refer to a different RAN. (Dkt. No. 137 at 9). Plaintiff argues that there is no reason why a
handover from a 4G network region served by one MME to a second 4G network region would
not consider each region a “side” of the handover. (Id. at 10). Plaintiff contends that Defendants
provide no evidence supporting that each “side” of a handover is synonymous with a different
RAN. Id. According to Plaintiff, Defendants primarily argue that the claims should be limited to
embodiments disclosed in the specification. Id.
Plaintiff also argues that Defendants’ construction is wrong because it would preclude the
embodiments and dependent claims where a 2G SGSN is the “target side processing network
element” since it is actually an element of the core network, not a radio access network. (Dkt. No.
137 at 10). Plaintiff also contends that Defendants’ construction is internally inconsistent because
it limits handovers from a 2G network to either a 3G or a 4G network. (Id. at 11). Plaintiff argues
that Defendants concede inter-RAN includes 3G to 4G. Id.
For the following reasons, the Court finds that the term “target side processing network
element” should be given its plain and ordinary meaning.
b) Analysis
The term “target side processing network element” appears in claims 1 and 6 of the ’675
Patent. The Court finds that the term is used consistently in the claims and is intended to have the
same general meaning in each claim. The Court further finds that the claims are not limited to the

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inter-RAN handovers disclosed in the specification. Defendants argue that Plaintiff omits the word
“side” from the term “target side processing network element.” According to Defendants, if both
cells are of the same RAN, there cannot be a target “side.” (Dkt. No. 126 at 28). Defendants only
support for this argument is that the specification always refers to the “target side” node as an
element of a different RAN than the source element. Id. Although Defendants accurately describe
the embodiments in the specification, the Court finds that Defendants’ construction improperly
limits the claims to the disclosed embodiments. Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1359 (Fed. Cir. 2016) (“[W]e have repeatedly held that it is ‘not enough that the only
embodiments, or all of the embodiments, contain a particular limitation’ to limit claims beyond
their plain meaning.”) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366–
67 (Fed. Cir. 2012)).
The system and method of the ’675 Patent are directed to the operations needed to
accomplish handovers as a mobile phone moves between the coverage areas of cell towers (i.e.,
handovers from 4G to 3G networks, 4G to 2G networks, 3G to 4G networks, 2G to 4G networks,
and intra-4G). These network types are referred to as “radio access networks.” For example, a 3G
network is referred to as a “UMTS Territorial Radio Access Network (UTRAN),” a 2G network
is referred to as a “GSM/EDGE Radio Access Network (GERAN),” and a 4G network is referred
to as an “Evolved UMTS Terrestrial Radio Access Networks (E-UTRAN).” ’675 Patent at 1:2025, 8:61-65. Defendants are correct that the only handovers disclosed in the specification are interRAN handovers.
However, in Unwired Planet, the Federal Circuit stated that “[c]laim terms are generally
given their ordinary and customary meaning as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecution history. We have recognized ‘only

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two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
specification or during prosecution.’” Unwired Planet, 829 F.3d 1358 (citations omitted).
Defendants have not argued disavowal or provided persuasive evidence that each “side” of a
handover is synonymous with a different RAN. Moreover, the dependent claims further limit the
scope of the claims to specific 2G, 3G, and 4G network elements. See ’675 Patent at Claims 2-6
and 7-10. Accordingly, the Court is not persuaded by Defendants’ argument.
Defendants also contend that the background of the invention describes a problem that
arose when 3GPP implemented a “direct tunnel” solution within 3G, but not within 2G.
Specifically, Defendants argue that “the Summary of the Invention states that ‘[a] data processing
method and system are provided by the present invention, in order to implement data forwarding
in a direct-tunnel mechanism when a handover or change between a 2G system and a 3G system
takes place.’” (Dkt. No. 126 at 29) (citing ’675 Patent at 4:15–19). The problem with Defendants’
“present invention” argument is that it would limit the claims to handovers from a 2G to a 3G
system. Defendants concede that inter-RAN includes 3G to 4G by stating that a handover “can
occur inter-RAN between different RANs, for example moving from a 4G cell to a 3G cell.” (Dkt.
No. 126 at 27). Moreover, Defendants cite portions of the specification discussing 3G to 4G
handovers. (Id. at 30) (citing ’675 Patent at 9:20–23). Therefore, Defendants’ “present invention”
argument is inconsistent with the intrinsic evidence. Finally, in reaching its conclusion, the Court
has considered the extrinsic evidence submitted by the parties, and given it its proper weight in
light of the intrinsic evidence.
c) Court’s Construction
The term “target side processing network element” will be given its plain and ordinary

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meaning.
7. The “Empty” Address Terms
Disputed Term
“The method according to
claim 3, wherein the
address information is
empty”
“The method according to
claim 8, wherein the
address information of the
OFCS is empty”

Plaintiff’s Proposal
Defendants’ Proposal
“The method according to claim Indefinite / incapable of
3, wherein the OCS address is
construction.
not provided by the CRF”
“The method according to claim Indefinite / incapable of
8, wherein the OFCS address is construction.
not provided by the CRF”

a) The Parties’ Positions
The parties dispute whether dependent claims 5 and 11 contradict independent claim 1 by
requiring that the address information “is not provided.” Plaintiff argues that independent claim 1
recites an address for one of the charging systems to be communicated from the “CRF” to the
“TPF,” and dependent claims 5 and 11 refer to “empty” OCS and OFCS addresses. (Dkt. No. 119
at 28). According to Plaintiff, when a dependent claim refers to “empty” address information for
a particular charging system, it means the CRF does not provide the address for that system, and
can send the TPF the “address information” for another charging system. (Id. at 29). Plaintiff
contends that this is when the TPF is able to use a pre-configured address for that particular system.
Id. (citing ’575 Patent at 9:41–46). Plaintiff also contends that when the CRF provides “empty”
address information that means that the address information is not provided, and thus the TPF
sends the charging data information of the UE to the pre-configured OCS or OFCS. (Dkt. No. 119
at 29). Plaintiff further argues that construction is necessary to clarify the terms for the jury in
order to explain what “empty” address information means. Id. Plaintiff contends that it has shown
that the claims are amenable to construction and are not indefinite. Id. (citing Aero Prod. Int’l, Inc.
v. Intex Recreation Corp., 466 F.3d 1000, 1016 (Fed. Cir. 2006)).

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Defendants respond that independent claim 1 requires that a “CRF provid[es] a [TPF] with
. . . address information.” (Dkt. No. 126 at 32). Defendants argue that if the “address information
is empty,” as in dependent claims 5 and 11, then there is nothing for the CRF to provide. Id.
According to Defendants, it is impossible to read claim 5 or 11 as narrower than claim 1, because
a CRF cannot simultaneously “provide” and “not provide” an address. Id. Defendants further argue
that the contradiction between claims 5 and 11, and independent claim 1 is particularly significant
because it pierces the heart of the claim. (Id. at 33). Defendants argue that the alleged novelty over
prior art was the provisioning of address information. Id. (citing Fig. 3A and 5). Defendants
contend that Figures 3A and 5 disclose a procedure in which a TPF requests charging rules from
a CRF (Step 302A/502); a CRF determines the appropriate charging rules (Step 303A/503); and
the CRF provides charging rules to the TPF (Step 304A/504). Id. According to Defendants, the
figures are essentially identical but for the asserted novelty in Step 504 of Figure 5 (i.e., the
provisioning of address information). Id.
Plaintiff replies that there are two broad types of charging systems, online (OCS) and
offline (OFCS), and within a single type there may be primary and secondary instances with
different addresses. (Dkt. No. 137 at 11) (citing ’575 Patent at 9:29–34). According to Plaintiff,
providing either type of addresses is plainly considered by the independent claim’s language. (Dkt.
No. 137 at 11). Plaintiff argues that the two dependent claims each covers a scenario where the
address of one type of charging system is not sent. Id. Plaintiff contends that in certain situations,
the address of a particular charging system may be empty (i.e., not provided), and thus a preconfigured address may be used in its place. Id. (citing ’575 Patent at 9:41–46). Plaintiff argues
that in these dependent claims, one of the addresses (either OFCS or OCS) is provided, and another
address is not in lieu of a pre-configured address. (Dkt. No. 137 at 11).

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For the following reasons, the Court finds that claims 5 and 11 of the ’575 Patent are
indefinite for failing to comply with 35 U.S.C. § 112, ¶ 4. 8
b) Analysis
The Court finds that dependent claims 5 and 11 contradict independent claim 1, and thus
are indefinite for failing to comply with 35 U.S.C. § 112, ¶ 4. Multilayer Stretch Cling Film
Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing, inter alia, 35
U.S.C. § 112(d)) (“A dependent claim that contradicts, rather than narrows, the claim from which
it depends is invalid.”); see also Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-92 (Fed.
Cir. 2006) (holding a claim invalid under pre-AIA 35 U.S.C. § 112 ¶ 4 for claiming subject matter
that was “non-overlapping” with the claim from which it depended).
The Court agrees that dependent claims 5 and 11 are directed to the scenario where the
address information is empty. The Court also agrees that “empty” means that the address is not
provided. However, the “empty” address scenario of dependent claims 5 and 11 directly
contradicts independent claim 1. Claim 1 recites “CRF providing a [TPF] with . . . address
information of a charging system.” (’575 Patent at Claim 1) (emphasis added). Dependent claims
5 and 11 further require “the address information” to be “empty” or “not provided.” If the “address
information is empty,” then the CRF has not provided the address information to the TPF as
required by claim 1. Indeed, the specification states that “when the CRF does not provide the TPF
with an OCS address, in other words, when the OS address provided by the CRF for the TPF is
empty, the TPF sends a Credit Request to the pre-configured OCS to establish a credit request
session with the set OCS.” ’575 Patent at 9:42–46 (emphasis added). Therefore, the dependent

8

Because the application resulting in the ’575 Patent was filed before September 16, 2012, the
effective date of the America Invents Act (“AIA”), the Court refers to the pre-AIA version of §
112.
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claims are nonsensical by requiring the provided address information to not be provided.
Plaintiff’s contention is also inconsistent with arguments made during prosecution. In
distinguishing the 3GPP reference, the patentees argued as follows:
However, section 5.2 nowhere speaks to online charging systems (OCSs) or offline
charging systems (OFCSs), and in particular, does not speak to how TPFs are
provided with the address information of associated charging svstems. More
particularly, and in sharp contrast to Applicants’ method as claimed in amended
independent claim 1, section 5.2 of 3GPP does not teach or suggest that a Charging
Rules Function (CRF) determines a charging method and charging rules in response
to a service request or other trigger event, and then providing a Traffic Plane
Function (TPF) with the charging rules together with address information of a
charging system.”
(Dkt. No. 126-7 at 8-9) (emphasis in original). The patentees argued that the amended claims
“more clearly highlight that the Charging Rules Function (CRF) provides the Traffic Plane
Function (TPF) both with charging rules according to an identified charging method and address
information of a charging system for applying the charging rules occurs dynamically (i.e., in
response to a service request or other trigger event).” (Id. at 7) (emphasis added). As argued by
the patentees, these amendments were “to further clarify the nature of their invention.” (126-7 at
8). Accordingly, dependent claims 5 and 11 not only make the claims nonsensical, but would also
remove the limitation of the CRF providing address information for at least one charging system
to the TPF.
Plaintiff contends that the two dependent claims each cover a scenario where the address
of one type of charging system is not sent. (Dkt. No. 137 at 11). Plaintiff argues that one address
(either OFCS or OCS) could be provided, and a second address would not be provided in lieu of
a pre-configured address. Id. Although Plaintiff’s argument is plausible for independent claim 1,
it ignores the antecedent basis provided for the term “address information” in the dependent
claims. Claim 1 recites that a “CRF provid[es] a [TPF] with . . . address information of a charging
system.” Dependent claim 3 further recites that “after the CRF provid[es] the TPF with the address

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information, . . . the TPF request[s] the credit information from the OCS according to the address
information.” Thus, “the address information” in dependent claim 5 is the address provided by the
CRF in independent claim 1, and used by the TPR in dependent claim 3. Claim 5 contradicts the
claim language of claims 1 and 3 by reciting that the “address information” provided by the CRF
was in fact not provided by the CRF. Accordingly, the Court rejects Plaintiff’s argument and finds
that dependent claims 5 and 11 are indefinite for failing to comply with 35 U.S.C. § 112, ¶ 4.
c) Court’s Construction
Dependent claims 5 and 11 of ’575 Patent are indefinite for failing to comply with 35
U.S.C. § 112, ¶ 4.
8. “Determining a Charging Method”
Disputed Term
“determining a charging
method”/ “determine a
charging method”

Plaintiff’s Proposal
Plain meaning.

Defendants’ Proposal
“determining whether the
charging method is online
charging or offline charging”

a) The Parties’ Positions
The parties dispute whether “determining” requires the CRF to decide from among
multiple charging methods, as Defendants propose. Plaintiff contends that Defendants’ proposal
mirrors the claim language and would not be helpful to the factfinder. (Dkt. No. 119 at 30).
Plaintiff argues that there is no basis to require additional words to be added to these
understandable elements. Id.
Defendants respond that the intrinsic record strongly supports the conclusion that
“determining a charging method” refers to a decision between the two charging systems. (Dkt. No.
126 at 35). Defendants ague that during prosecution of the ’575 Patent, the patentees amended
independent claims 1 and 16 to add the “determining a charging method” and “determine a
charging method” steps. Id. (citing Dkt. No. 126-7 at 2). Defendants further argue that the patentee

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cited portions of the specification that disclosed determining a charging method. (Dkt. No. 126 at
35) (citing Dkt. No. 126-7 at 7). Defendants contend that a “determination result” must mean that
the CRF has made a choice. (Dkt. No. 126 at 35) (citing ’575 Patent, at 10:54–64). According to
Defendants, “determining a charging method” refers to a decision between two possible charging
methods. (Dkt. No. 126 at 35).
Defendants also contend that a construction is required because that parties have raised a
dispute regarding the proper scope of the claims. (Id. at 36) (citing O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)). Defendants argue that “plain
meaning” is not enough, and without guidance from the Court, a jury could not determine what
the term “charging method” means. (Dkt. No. 126 at 36). Defendants contend that it is necessary
to construe the limitation to resolve whether the patent covers a situation where a CRF can only
ever charge data to an online charging system. (Id. at 37).
For the following reasons, the Court finds that the phrase “determining a charging
method” and the phrase “determine a charging method” should be construed to mean
“determining whether the charging method is online charging or offline charging.”
b) Analysis
The phrase “determining a charging method” appears in claim 1 of the ’575 Patent. The
phrase “determine a charging method” appears in claim 16 of the ’575 Patent. The Court finds that
the phrases are used consistently in the claims and is intended to have the same general meaning
in each claim. The Court further finds that the phrase “determining a charging method” means
“determining whether the charging method is online charging or offline charging.” The intrinsic
evidence indicates that the existing 3GPP standard at the time of the invention disclosed that
subscribers could be charged and billed to an online or offline charging system. ’575 Patent at

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3:27–54, Figures 2A and 2B.
The intrinsic evidence further indicates that it was these two systems that determine
whether the charging method is online charging or offline charging. For example, the specification
states that “[a]fter determining that the charging method for a certain data flow service is online
charging . . .” ’575 Patent at 8:43–44, see also 8:52–53 (“Likewise, after determining that the
charging method for a certain data flow service is offline charging”). Similarly, the specification
states “upon receiving the Charging Rules Request, the CRF firstly determines that the charging
method of the current packet data service is online charging” ’575 Patent at 10:11–14, see also
11:8–9 (“[T]he CRF determines the charging method of the current packet data service as the
online charging method”). These examples indicate that “determining” means “determining
whether the charging method is online charging or offline charging.” This is further confirmed by
the prosecution history.
During prosecution of the ’575 Patent, the patentees amended independent claim 1 to add
the “determining a charging method” step, and amended independent claim 16 to add the
“determine a charging method” step. In support of the amendments, the patentees cited to the
portions of the specification discussed above and distinguished the 3GPP reference as follows:
However, section 5.2 nowhere speaks to online charging systems (OCSs) or offline
charging systems (OFCSs), and in particular, does not speak to how TPFs are
provided with the address information of associated charging svstems. More
particularly, and in sharp contrast to Applicants’ method as claimed in amended
independent claim 1, section 5.2 of 3GPP does not teach or suggest that a Charging
Rules Function (CRF) determines a charging method and charging rules in response
to a service request or other trigger event, and then providing a Traffic Plane
Function (TPF) with the charging rules together with address information of a
charging system.”
(Dkt. No. 126-7 at 8-9) (emphasis in original). The patentees further argued that the amended
claims “more clearly highlight that the Charging Rules Function (CRF) provides the Traffic Plane
Function (TPF) both with charging rules according to an identified charging method and address
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information of a charging system for applying the charging rules occurs dynamically (i.e., in
response to a service request or other trigger event).” (Id. at 7) (emphasis added). As argued by
the patentees, the prior art did not teach determining a charging method, and did not “speak to
online charging systems (OCSs) or offline charging systems (OFCSs).” (Dkt. No. 126-7 at 9).
Accordingly, a person of ordinary skill in the art would understand that “determining” means
“determining whether the charging method is online charging or offline charging.” Indeed, the
specification states that “the offline charging implementation procedure . . . is quite similar to the
corresponding online charging implementation procedure, with such differences as the
determination result by the CRF on the charging method of the current packet data service being
the offline charging method, . . . .” ’575 Patent at 10:54–64 (emphasis added).
Plaintiff argues that “[t]here is no real debate as to what this claim element refers to, nor
is it unclear what the simple words of the claim mean.” (Dkt. No. 119 at 30). However, “[w]hen
the parties raise an actual dispute regarding the proper scope of [the] claims, the court, not the
jury, must resolve that dispute.” O2 Micro, 521 F.3d at 1360. Accordingly, the Court provides a
construction regarding the proper scope of these claims. Finally, in reaching its conclusion, the
Court has considered the extrinsic evidence submitted by the parties, and given it its proper weight
in light of the intrinsic evidence.
c) Court’s Construction
The Court construes the phrase “determining a charging method” and the phrase
“determine a charging method” to mean “determining whether the charging method is
online charging or offline charging.”
V.

CONCLUSION

The Court adopts the constructions above for the disputed and agreed terms of the Asserted

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.

Patents. Furthermore, the parties should ensure that all testimony that relates to the terms addressed
in this Order is constrained by the Court’s reasoning. However, in the presence of the jury the
parties should not expressly or implicitly refer to each other’s claim construction positions and
should not expressly refer to any portion of this Order that is not an actual construction adopted
by the Court. The references to the claim construction process should be limited to informing the
jury of the constructions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 17th day of May, 2017.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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