PanOptis Patent Management, LLC et al v. Kyocera Communications Inc. et al

Filing 108

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 2/8/2017. (ch, )

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

OPTIS CELLULAR TECHNOLOGY,
LLC and PANOPTIS PATENT
MANAGEMENT, LLC,
Plaintiffs,
vs.

KYOCERA CORPORATION, et al.,

BLACKBERRY CORPORATION, et al.,

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2:16-cv-0059-JRG-RSP
Lead Case

2:16-cv-0060-JRG-RSP
Consolidated

Defendants.

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On January 10, 2017, the Court held an oral hearing to determine the proper construction
of the disputed claim terms in U.S. Patent Nos. 8,019,332 (the “’332 Patent”), 8,102,833 (the “’833
Patent”) 8,174,506 (the “’506 Patent”), and 8,437,293 (the “’293 Patent”) (collectively the
“Asserted Patents”). The Court has considered the parties’ claim construction briefing (Dkt. Nos.
99, 100, and 101) and arguments. Based on the intrinsic and extrinsic evidence, the Court construes
the disputed terms in this Memorandum Opinion and Order. See Phillips v. AWH Corp., 415 F.3d
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1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).

BACKGROUND
Plaintiffs Optis Cellular Technology, LLC and PanOptis Patent Management, LLC
(“Plaintiffs”) assert the Asserted Patents against Defendants Blackberry Limited and Blackberry
Corporation, (“Defendants”). Plaintiffs contend that three of the Asserted Patents, the ’332 Patent,
the ’833 Patent and the ’293 Patent, are essential to the LTE standard for wireless communications.
The ’506 Patent relates to the use of touch screens.
The ’332 Patent relates to use of the Physical Downlink Control Channel (PDCCH) for
communications between user equipment (UE) such as a mobile station and a base station in a
cellular communication network. The Abstract of the ’332 Patent recites:
A method for efficiently transmitting and receiving control information through a
Physical Downlink Control Channel (PDCCH) is provided. When a User
Equipment (UE) receives control information through a PDCCH, the received
control information is set to be decoded in units of search spaces, each having a
specific start position in the specific subframe. Here, a modulo operation according
to a predetermined first constant value (D) is performed on an input value to
calculate a first result value, and a modulo operation according to a predetermined
first variable value (C) corresponding to the number of candidate start positions that
can be used as the specific start position is performed on the calculated first result
value to calculate a second result value and an index position corresponding to the
second result value is used as the specific start position. Transmitting control
information in this manner enables a plurality of UEs to efficiently receive
PDCCHs without collisions.
’332 Patent Abstract. More particularly, the ’332 Patent describes UE receiving control
information through the PDCCH. Multiple UEs may utilize the PDCCH of a base station. A
particular UE is provided with a search space of the PDCCH. A particular UE need not decode all
possible PDCCH positions to receive its PDCCH information, but rather just the UE’s particular
positions of the PDCCH provided in the UE’s search space. ’332 Patent Abstract, 2:18-31.
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The ’833 Patent relates to a method of transmitting uplink control signals, in particular
transmission acknowledgement (ACK) and not acknowledged (NACK) signals which indicate the
receipt status of transmissions. The Abstract of the ’833 Patent recites:
A method for transmitting uplink signals, which include ACK/NACK signals,
control signals other than the ACK/NACK signals, and data signals, is disclosed.
The method comprises serially multiplexing the control signals and the data signals;
sequentially mapping the multiplexed signals within a specific resource region in
accordance with a time-first mapping method, the specific resource region
including a plurality of symbols and a plurality of virtual subcarriers; and arranging
the ACK/NACK signals at both symbols near symbols to which a reference signal
of the plurality of symbols is transmitted. Thus, the uplink signals can be
transmitted to improve receiving reliability of signals having high priority.
’833 Patent Abstract. More particularly, the ’833 Patent relates to multiplexing control signals
(including ACK/NACK control signals and control signals other than ACK/NACK) and data
signals. The multiplexed signals are mapped to a resource region. The ACK/NACK signals are
mapped in a particular manner. ’833 Patent Abstract, 2:14-27.
The ’293 Patent relates to scheduling uplink requests between a mobile terminal and a base
station. The Abstract of the ’293 Patent recites:
Aspects of the present invention relate to the scheduling of resources in a
telecommunication system that includes a mobile terminal and base station. In one
embodiment, the mobile terminal sends an initial scheduling request to a base
station. Subsequently, the mobile terminal does not transmit a scheduling request
to the base station unless and until a scheduling request triggering event is detected.
’293 Patent Abstract. More particularly, the ’293 Patent relates to a method for transmitting
scheduling requests from the mobile terminal to the base station to allocate resources of the base
station. A mobile terminal may transmit a first scheduling request to the base station. The mobile
terminal may then receive a scheduling grant from the base station and data may correspondingly
be transmitted to the base station. A scheduling request triggering event may subsequently occur,

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in which case the mobile station may transmit a second scheduling request to the base station. ’293
Patent Abstract, 3:1-22.
The ’506 Patent relates to touch screens and the movement of objects, such as icons, on
touch screens. The Abstract of the ’293 Patent recites:
A method of displaying an object and a terminal capable of implementing the same.
The method includes displaying an object movable on a touchscreen of a terminal
at a first position on the touchscreen; and if a first touch action is carried out on the
object, fixing the object to the first position.
’506 Patent Abstract. More particularly, a user may move an icon to a particular positon of the
screen in response to a first touch action, such as a drag and drop action. ’506 Patent 4:41-54,
Figure 4. A second touch action releases the icon allowing the icon to be moved to another position
on the screen. Id. at 5:57-61.

LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
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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)). 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
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
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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
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
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evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. 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 fact finding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
A. Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed
according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
in the specification or during prosecution.” 1 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
plain meaning in two instances: lexicography and disavowal.”). The standards for finding
lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.

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Some cases have characterized other principles of claim construction as “exceptions” to the general rule,
such as the statutory requirement that a means-plus-function term is construed to cover the corresponding
structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1367 (Fed. Cir. 2002).

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To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
B. Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) 2
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;

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Because the applications resulting in the Asserted Patents were filed before September 16, 2012,
the effective date of the AIA, the Court refers to the pre-AIA version of § 112.
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Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context of
the entire specification, to denote sufficiently definite structure or acts for performing the function.
See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§
112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792
F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons
of ordinary skill in the art to have sufficiently definite meaning as the name for 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”
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inquiry is not merely whether a structure is capable of performing the recited function, but rather
whether the corresponding structure is “clearly linked or associated with the [recited] function.”
Id. The corresponding structure “must include all structure that actually performs the recited
function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
Cir. 2005). However, § 112 does not permit “incorporation of structure from the written description
beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem.
Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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).

AGREED TERMS
In the Joint Claim Construction Chart, the parties agreed to the following terms:
Term
“search space of the PDCCH” / “search
space” (’332 Patent Claims 1, 5, 6, and 10)
“means for transmitting…to [a/the] base
station” (’293 Patent Claim 20)

Agreed Construction
a region that the UE needs to attempt to
decode to receive a PDCCH
This claim term should be governed by 35
U.S.C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: FIG. 7 (700 incl. “Transceiver”
and antenna), col. 9:53-55, and/or equivalents
thereof.
Function: “transmitting to a/the base station”
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“means for receiving…from the base station”
(’293 Patent Claim 20)

This claim term should be governed by 35
U.S.C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: FIG. 7 (700 incl. “Transceiver”
and antenna), col. 8:23-24, 9:53-55, and/or
equivalents thereof.

“triggering event detection means for
determining whether a scheduling request
triggering event has occurred” (’293 Patent
Claim 20)

Function: “receiving from the base station”
This claim term should be governed by 35
U.S. C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: a data processor executing
software, as described in connection with data
processor 706 and software 708 of FIG. 7 and
at col. 9:48-53, implementing the algorithm
described in FIG. 6b, in FIG. 5 and step 616
of FIG. 6a, and at cols. 6:16-32, 6:36-45,
6:57-7:3, 7:5-14, 7:42-8:2, 8:29-33, 8:41-9:10

“means for comparing the transmit buffer
status information transmitted to the base
station with new information concerning the
status of the transmit buffer” (’293 Patent
Claim 21)

Function: “determining whether a scheduling
request triggering event has occurred”
This claim term should be governed by 35
U.S.C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: a data processor executing
software, as described in connection with data
processor 706 and software 708 of FIG. 7 and
at col. 9:48-53, implementing the algorithm
described in FIG. 5, at cols. 6:16-26, 6:62-66,
7:64-8:2, and the comparison described at
8:57-60 (“comparing information in the
buffer status report stored in step 612 to
newly generated information reflecting the
status of the current state of the transmit
buffer”)
Function: “comparing the transmit buffer
status information transmitted to the base
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“means for determining whether second data
that is available for transmission from the
mobile terminal to the base station has a
higher priority than the first data” (’293
Patent Claim 22)

station with new information concerning the
status of the transmit buffer”
This claim term should be governed by 35
U.S.C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: a data processor executing
software, as described in connection with data
processor 706 and software 708 of FIG. 7 and
at col. 9:48-53, implementing the algorithm
described in FIG. 5 and step 658 of FIG. 6b,
and at cols. 6:36-45, 6:62-66, 7:61-8:2, 8:5563

“means for determining whether the amount
of time that has elapsed since the
first SR was transmitted exceeds a threshold”
(’293 Patent Claim 23)

Function: “determining whether second data
that is available for transmission from the
mobile terminal to the base station has a
higher priority than the first data”
This claim term should be governed by 35
U.S.C. § 112(6) and the parties identify one
or more of the following structure(s), act(s),
or materials correspond to this claim term:
Structure: a data processor executing
software, as described in connection with data
processor 706 and software 708 of FIG. 7 and
at col. 9:48-53, implementing the algorithm
described in FIG. 5 and step 662 of FIG. 6b,
and at cols. 6:36-45, 6:62-66, 7:2-3, 9:7-10
Function: “determining whether the amount
of time that has elapsed since the first SR was
transmitted exceeds a threshold”

(Dkt. No. 102-1 at 1, 23-31.) Though not identified in the final joint claim chart, the parties
identified the following term in the briefing as agreed:
Term
“a processor serially multiplexing first control
signals and data signals…” (’833 Patent
Claim 8)

Agreed Construction
No construction necessary.

(Dkt. No. 99 at 15; Dkt. No. 100 at 18.)
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DISPUTED TERMS
1. “set of PDCCH candidates within a search space” / “set of PDCCH candidates of the
search space” [’332 Patent Claims 1, 5, 6, 10]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes one or more UE-specific PDCCH positions
that the term be construed in accordance with within a region that the UE needs to attempt
its plain and ordinary meaning.
to decode to receive a PDCCH
The parties dispute whether the “set” has to be “UE-specific.” In other words, does the
search space for one UE have to be specific to that UE and without overlap with another UE?
Positions of the Parties
Plaintiffs contend that a set of PDCCH (Physical Download Control Channel) candidates
are simply candidates for PDCCH. Plaintiffs contend that the asserted claims provide details for
determining which set of PDCCH candidates to decode based on Control Channel Elements
(CCE), the total number of CCEs, and the claimed calculations / constants. (Dkt. No. 99 at 5.)
Plaintiffs contend that nothing in the claim requires the PDCCH candidates to be UE specific.
Plaintiffs contend that though the patent is designed to minimize collisions between the search
space of one UE and another, the patent explicitly contemplates that there is a non-zero probability
that two different UEs may use the same PDCCH. Specifically, for support, Plaintiffs point to the
statement that there is a “probability that UEs having two different UE IDs use the same PDCCH
decoding region” and the accompanying tables that list such probabilities. (Id. (quoting ’332 Patent
13:20-22 and citing 13:14-19:65 and accompanying tables).)
Defendants contend that the ’332 Patent makes clear that the allocating of different PDCCH
candidates to different UEs is the purpose of the invention. Specifically, Defendants contend that
the patent describes the “present invention” as relating to “efficiently” transmitting and receiving
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information through the PDCCH. ’332 Patent 1:23-26. Defendants contend that the patent then
explains that information is “more efficiently” transmitted “if different PDCCH decoding regions
(or spaces) are allocated to different UEs” and the UEs “do not have an overlapping PDCCH
decoding region.” Id. at 5:43-47. Defendants also point to a portion of the passage:
These two methods are similar in that the overlapping PDCCH decoding region can
be reduced if the search space of each UE has a different start position. Accordingly,
an embodiment of the present invention suggests that different UE search spaces
be set to have different start positions as described above to minimize overlapping
of search spaces that UEs need to attempt to decode in order to receive a PDCCH.
Reducing overlapping of PDCCH decoding regions in this manner increases the
number of UEs to which the base station can simultaneously transmit control
information through scheduling.
Id. at 6:1-11.
Defendants contend that the specification disparages prior art solutions in which UEs must
decode common (“overlapping”) PDCCH regions:
However, the number of combinations of PDCCH regions for transmission of
control information may be great. Excessive UE processing performance may be
required for the UE to decode all PDCCH regions.
Id. at 2:4-7; see also id. 5:27-40 (“The number of all possible regions … may be too great….”).
Defendants also point to the statements that “the number of UEs that are simultaneously
controllable is restricted” “if all different UEs decode the same limited PDCCH decoding region.”
Id. at 5:35-42. Defendants also point to the statement that “overlapping of PDCCH decoding
regions can be minimized.” Id. at 12:56-59. Defendants state that the Federal Circuit has found
that disparagement of alternatives excludes such alternatives from the scope of the claim. See
UltimatePointer, LLC v. Nintendo Co., Ltd., 816 F.3d 816, 822 (Fed. Cir. 2016).
As to Plaintiffs’ contention that there is a probability that overlap may occur, Defendants
contend that such inadvertent collisions do not negate the clear disclaimer of methods that decode
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a common search space. (Dkt. No. 100 at 8.) Defendants contend that their construction does not
exclude the possibility of inadvertent overlap, it merely requires that each UE decode PDCCH
positions designed to be specific. (Id. (citing Negus Decl. as explaining how UE specific PDCCH
positions differ from a common search space even in light of possible collisions).) Defendants
contend that the specification teaches that notwithstanding the minimized possibility of inadvertent
overlap, the patent requires the use of UE-specific PDCCH candidates, rather than a search space
common across UEs. (Id. at 8-9.)
In reply, Plaintiffs contend that Defendants’ expert (Negus) states that for a search space
to be UE-specific, “the ‘region’ and the ‘PDCCH positions’ therein must be ‘UE-specific.’” (Dkt.
No. 101 at 1 (quoting Negus Decl.).) Plaintiffs contend that this restrictive reading directly
conflicts with the patent specification which is concerned with reducing overlap, not eliminating
it:
These two methods are similar in that the overlapping PDCCH decoding region can
be reduced if the search space of each UE has a different start position.
Accordingly, an embodiment of the present invention suggests that different UE
search spaces be set to have different start positions as described above to minimize
overlapping of search spaces that UEs need to attempt to decode in order to receive
a PDCCH. Reducing overlapping of PDCCH decoding regions in this manner
increases the number of UEs to which the base station can simultaneously transmit
control information through scheduling.
’332 Patent 6:1-11 (emphasis added). Plaintiffs state that nowhere does the specification
contemplate complete elimination of overlap. Plaintiffs contend that Defendants have not pointed
to clear disavowal mandating complete elimination of overlap. (Dkt. No. 101 at 1-2.)
Plaintiffs contend that Defendants have created the term “common” search spaces, arguing
that the patent requires UE-specific PDCCH candidates, rather than a search space “common”
across UEs. Plaintiffs state that Defendants have defined “common” search space as one that has
15

“overlap” without a distinction as to the degree of overlap. (Id. at 2.) Plaintiffs contend that this
conflicts with the specification which describes using different start positions to reduce the
overlap. Id. Plaintiffs contend that Defendants argue “inadvertent overlap” may occur but that
Defendants do not state how this is somehow different from what Defendants call a “common”
search space. Plaintiffs contend that under Defendants’ construction, there can be no overlap,
inadvertent or otherwise. (Dkt. No. 101 at 2.)
Plaintiffs also object to Defendants’ statements that having UE-specific candidates
“requires that each UE decode PDCCH positions designed to be specific to that UE (e.g., by
calculating the positions using the UE’s unique ID.” (Id. (quoting Dkt. No. 100 at 8).) Plaintiffs
contend, however, that such a limitation is unnecessary as the claims provide detailed limitations
of which candidates the UE is required to decode:
decoding a set of PDCCH candidates within a search space of the PDCCH at the
subframe k, wherein each of the set of PDCCH candidates comprises `L` control
channel elements (CCEs), wherein the `L` CCEs corresponding to a specific
PDCCH candidate among the set of PDCCH candidates of the search space at the
subframe k are contiguously located from a position given by using a variable of
Yk for the subframe k and a modulo `C` operation, wherein `C` is determined as
`floor(N/L)`, wherein `N` represents a total number of CCEs in the subframe k, and
wherein Yk is defined by:
Yk=(A*Yk-1)mod D,
wherein A, and D are predetermined constant values.
Id. at 20:40-49 (claim 1).
Analysis
The specification does not teach that the search space for each UE is non-overlapping with
the search space for another UE. Rather, the specification clearly teaches that overlap is desired to
be minimized. Thus, the overlap “can be reduced if the search space of each UE has a different
start position.” ’332 Patent 6:2-3 (emphasis added). Similarly, the disclosed embodiment states
16

that such starting positions “minimize overlapping of search spaces that UEs need to attempt to
decode.” Id. at 6:6-7 (emphasis added). Likewise, “[r]educing overlapping PDCCH decoding
regions” improves the efficiency. See Id. at 6:8-11. Thus, the specification is clear that the search
spaces do not have to be completely non-overlapping, rather the specification merely teaches
reducing such overlap. The specification further provides a number of mathematical expressions
and variables that can be selected, again so that “overlapping of PDCCH decoding regions can be
minimized.” Id. at 12:49-65. The performance of the various variables is described as “the number
of hits” and “the determined number of hits [is] used as a probability that UEs having two different
UE IDs use the same PDCCH decoding region (i.e., as a criterion for determining performance).”
Id. at 12:66-13:1, 13:20-22. The specification then provides a number of variable parameters and
values and associated probabilities in Tables 2-4. In this context, it is clear that overlapping regions
are not eliminated but rather explicitly designed to only be reduced. The specification therefore
does not support Defendants’ construction. Furthermore, as pointed out by Plaintiffs, the claim
itself provides explicit details regarding the candidates within a search space by the claimed
variables and formula presented. This also counsels against Defendants’ construction. The Court
rejects Defendants’ contention that the search space must be UE specific such that there can be no
overlap of search spaces.
The Court finds that “set of PDCCH candidates within a search space” / “set of
PDCCH candidates of the search space” have their plain and ordinary meanings and no
further construction is required.

2. Mapping Terms
“mapping” / “mapped” [’833 Patent Claims 1, 8]
17

Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes placing / placed
that the term be construed in accordance with
its plain and ordinary meaning.
“mapping the multiplexed signals to” [’833 Patent Claims 1, 8]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes placing the multiplexed signals, after placing
that the term be construed in accordance with the first control signals and the data signals,
its plain and ordinary meaning.
in
“mapping ACK/NACK control signals to” [’833 Patent Claims 1, 8]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes placing ACK/NACK control signals, after
that the term be construed in accordance with placing the multiplexed signals, in
its plain and ordinary meaning.
The primary dispute between the parties relates to whether “mapping” is limited to
“placing.”
Positions of the Parties
Plaintiffs contend that the one of skill in the art would understand these terms because
mapping is discussed at length in the ’833 specification. (Dkt. No. 99 at 7-8.) Plaintiffs state that
the patent discusses the “mapping” of information sequences to a two-dimensional matrix with
reference to Figures 3 through 5. (Id. at 8 (citing ’833 Patent 5:53-6:8, 6:37-41, 6:66-7:10, 7:3337, 7:44-51, and Figs. 6-9).) Plaintiffs contend that the mapping can be seen in the figures where
information sequences are mapped to different positions of the matrix. Plaintiffs also contend that
the ’833 Patent discusses “mapping” ACK/NACK signals when the ACK or NACK overwrite
other control and data signals. (Id. (citing ’833 Patent 6:12-18).) Plaintiffs contend that the
“mapping” of the ACK/NACK signals is also shown in Figures 6 through 9 where differentlyshaded ACK/NACK signals overwrite the data signals which were “mapped in the time-frequency
18

region in accordance with the time-first mapping method.” (Id. (citing ’833 Patent 7:8-12).)
Plaintiffs contend that claims 1 and 8 use the word “mapping” in this same sense when describing
mapping signals to the two-dimensional resource matrix of the claims.
Plaintiffs object to Defendants’ replacement of “mapping” with “placing.” Plaintiffs
contend that since the words “placing” and “mapping” both appear in the claims, the patentee has
indicated an intention for the words to have separate meanings. (Id. at 8-9.) Specifically, Plaintiffs
state that the claims distinguish the “placing” of control and data signals when “serially
multiplexing” from the “mapping” to a two-dimension matrix. Plaintiffs state that “mapping” is
used throughout the specification to refer to mapping to a two-dimension matrix, as well as “time
first” or “time-frequency mapper/mapping” (Id. at 9 (citing ’833 Patent 5:53-62).)
As to “mapping” / “mapped,” Defendants contend that the terms have multiple possible
meanings that are mutually exclusive, thus requiring construction. Defendants contend that the
specification teaches that “mapping” means “placing.” (Dkt. No. 100 at 10.) Defendants contend
that the term could mean a variety of things such as “representing,” “used in conjunction with,” or
“placing.” (Id. (citing Negus Decl.).) Defendants also contend that “mapping” could mean making
a map or planning in detail. (Id. (citing dictionary evidence).) Defendants contend only “placing”
is consistent with the specification. (Id. (citing Negus Decl.).)
Defendants contend that “placing” and “mapping” are used interchangeably in the patent.
Defendants contend, for example, that some limitations that use “placing” in the recited claim steps
are described in the specification as “mapping.” Defendants point to ’833 patent, claim 1 (“serially
multiplexing first control signals and data signals in a mobile station, wherein the first control
signals are placed at a front part of the multiplexed signals and the data signals are placed at a rear
part of the multiplexed signals”) as compared to ’833 Patent 8:38-40 (“Serial multiplexing means
19

that the control signals are mapped with sequential indexes directly after the data signals are
mapped with them, or vice versa.”). (Id. at 11 (emphasis added).)
Defendants contend that the intrinsic evidence describes the “mapping,” “placing,” and
“inserting” of signals as performing the same operations—specifically, movement of data in
memory. (Id.) At the oral hearing, Defendants again clarified that “placing” means moving of data
in memory. (Dkt. No. 107 at 24-25.) Defendants contend that the ’833 Patent describes a step that
involves “mapping” information as “inserting” the information. (Dkt. No. 100 at 11 (citing ’833
patent, col. 4:31-37 as using phrase “in other words” to describe “mapping” as “inserting”).)
Defendants also contend that the step of “mapping ACK/NACK control signals” is repeatedly
described in the specification as involving “insert[ing]” the ACK/NACK signals. (Id. (citing ’833
Patent 3:40-43, 6:22-27, 6:56-60, 7:31-32, 7:41-44).) Defendants further contend that Figure 3 of
the ’833 Patent, “illustrat[es] an example of mapping information sequences” (’833 Patent 3:2528), and uses an arrow to visually illustrate that “mapping” information to a resource matrix
involves “placing” that information:

’833 Patent Figure 3.
20

Defendants contend that the presumption that different words have different meanings “is
overcome where…the evidence indicates that the patentee used the two terms interchangeably.”
(Dkt. No. 100 at 12 (quoting Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir.
2010)).) Defendants contend that Plaintiffs have not pointed to any evidence indicating that the
terms carry differing meanings. As to Plaintiffs’ contention that “placing,” not “mapping” is used
when “serially multiplexing,” Defendants contend that the specification explicitly defines “serially
multiplexing” as performing mapping. (Id. at 12 (citing ’833 Patent 8:38-40).)
In reply, Plaintiffs contend that Defendants’ change of “mapping” to “placing” is not
innocuous because page 11 of Defendants’ brief makes clear that Defendants intend to argue that
“placing” requires “movement of data in memory.” (Dkt. No. 101 at 3 (citing Dkt. 100 at 11 and
Negus Decl. at ¶ 77).) Plaintiffs contend that neither the claims nor the specification ever mention
moving data in memory in the context of mapping. (Id.).
Plaintiffs contend that the specification discusses mapping signals in a resource region that
includes a plurality of symbols and subcarriers, sometimes called the time-frequency region. (Id.
(citing numerous passages of the ’833 Patent).) Plaintiffs contend that the ’833 Patent explains that
information symbols can be transmitted through SC-FDMA symbols and subcarriers that “can be
represented by a matrix structure . . . called a time-frequency mapper.” ’833 Patent 5:46-51.
Plaintiffs point to Figure 6, as an example of the mapper assigning each signal in data stream 602
to a particular time-frequency slot for transmission (see ’833 Patent Figure 4 and col. 5:66-6:2),
based on time-frequency matrix 603. (Id. at (citing ’833 Patent 6:63-7:1 and Akl Decl. at ¶ 12).)
Plaintiffs contend that “mapping” in the context of the ’833 Patent, thus, entails
establishing a relationship between signals to be transmitted and the particular time-frequency slots
on which those signals are to be transmitted. (Id. at 3-4 (citing Akl Decl. at ¶¶ 11-15).) Plaintiffs
21

state that had the patentee intended mapping to mean moving data in memory, e.g., “storing,” he
could have described the time-frequency mapper as containing or storing the symbols to be
transmitted, rather than as representing the relationship between the symbols and the subcarriers
and SC-FDMA symbols used for their transmission. (Id. at 4 (citing Akl Decl. ¶¶ 12-13).) Plaintiffs
contend that this is consistent with Defendants’ own expert’s descriptions of how “mapping”
would typically be understood in the context of wireless communications. (Id. (citing Negus Decl.
at ¶¶ 73-74 (“mapped to” may mean “represented by” such as in LTE where bits are “mapped to”
“modulation symbols”), ¶ 76 (providing another example from LTE where “‘the mapping between
uplink logical channels and uplink transport channels’ . . . indicates that ‘the following connections
between logical channels and transport channels exist.’”)).)
At the oral hearing, Plaintiffs further contended that the figures and specification make
clear that any insertion of the data in the actual data stream is done before the “mapping” to a twodimensional matrix. In particular, Plaintiffs noted that in Figure 6, the insertion of ACK/NACK is
done in the data stream 602. Plaintiffs contend that this serial data stream 602 is then merely
“represented” by a two-dimensional matrix, as indicated by the arrow of the Figure, not that the
data must be moved to two-dimensional locations in a matrix in memory. (Dkt. No. 107 at 33-34
(citing ’833 Patent 6:63-66, Figure 6).)
As to the longer second and third terms, Plaintiffs contend that Defendants’ claim
construction additions to the second and third terms unnecessarily repeat language from other parts
of the claim. (Dkt. No. 99 at 9.) Thus, Plaintiffs contend that the primary dispute for the second
and third terms devolves into the “mapping” dispute of the first term and that Defendants cannot
replace “mapping” with “placing.” (Dkt. No. 101 at 5.) Defendants note that as a “general rule”
steps are not ordinarily construed to be in order unless the claim recites an order. Defendants
22

contend, however, that their constructions clarify that the claimed steps must be performed
sequentially, in the order set forth in the claims. Defendants contend their constructions are
consistent with the claims and specification. (Dkt. No. 100 at 16 (citing Negus Decl.)) Defendants
contend that their constructions are provided to clarify that an order exists. (Id.) The parties did
not provide oral argument on the second and third terms.
Analysis
The primary issue raised by the parties is directed toward whether “mapping” is limited to
“placing” and whether “placing” in turn requires some concept of “movement of data in memory.”
Note, Defendants’ expert declaration states:
Here, in the context of the subject matter of the claims and in light of the ’833
patent’s intrinsic evidence, it is my opinion that one of ordinary skill would
understand that “mapping” information or for information to be “mapped” involves
actually moving data in memory. The claims already use the term “plac[ing]” to
capture this concept, but I believe that one of ordinary skill would understand that
“inserting” would also have a similar meaning.
(Dkt. No. 100-2 (Negus Decl.) at ¶ 77.) Moreover, Defendants’ briefing and oral argument further
make clear that Defendants construe “placing” to require actual movement of data in memory.
(Dkt. No. 100 at 11; Dkt. No. 107 at 24-25.)
The claims, however, explicitly use both “mapping” and “placing.” As noted by Plaintiffs,
generally the use of two differing words in the same claim would imply the words have different
meanings. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996);
CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir.
2000). Though such an interpretation may be overcome by the intrinsic evidence, that is not the
case here. The parties do not dispute that “placing” is merely a type of mapping, and that, as
understood by those in skilled in the art, “mapping” may carry a broader meaning not limited to
23

movement of data in memory. As acknowledged by Defendants at the oral hearing, in the relevant
art, “mapping” carries a broader meaning of “establishing a relationship.” (Dkt. No. 107 at 28-29.)
This also conforms to the extrinsic evidence provided by Defendants’ own expert. (Dkt. No. 1002 at ¶73-76 (Negus Decl.).)
The Court finds that the intrinsic record also establishes that “mapping” is used in the
context of the broader meaning that includes the concepts of establishing a relationship or
correlation. Defendants argue that the “mapping” and “placing” are used interchangeably with
regard to “serially multiplexing” (the claims reference “placing” and the specification references
“mapped”) and thus, “mapping” is limited to “placing.” However, that the specification uses the
broader “mapped” (’833 Patent 6:41-44, 8:38-40) in some places with regard to serial multiplexing
and claims 1 and 8 utilize the more narrow “placed” with reference to serial multiplexing does not
mean that all uses of “mapped” are meant to only carry the narrower meaning. And, this does not
mean that the uses of “mapped,” outside of the serial multiplexing concept, are limited to
“placing.” The more natural reading of the claims and specification is that when the more narrow
meaning is intended, “place” is used. Thus, moving data into a stream via multiplexing may be a
type of mapping, but not all mapping is limited to such moving or “placing.” In fact, Defendants
have pointed to no clear language in the intrinsic record of lexicography, disavowal, or disclaimer
mandating that “mapping” be limited to “placing.” See GE Lighting Solutions, 750 F.3d at 1309;
Cordis Corp., 561 F.3d at 1329. Thus, Defendants have not shown why the “mapping” must be
physical movement in memory as opposed to some other means of correlating the data to a matrix
arrangement. As to the use of “inserting,” Defendants again have only pointed to examples of
insertion being a type of mapping, not that mapping is limited to insertion.

24

As to Defendants’ identification of the figures, though Figures 3, 6 and 9 show arrows, it
does not mean the data is necessarily moved into such specified row and column formations as
opposed to merely being correlated to such a configuration. Again, Defendants have not identified
passages that indicate that the figure requires physical placement in memory in such an
arrangement as opposed to merely mapping to the particular matrix arrangement. In contrast, the
specification describes the mapping of information sequences into a matrix structure as being
“represented by a matrix structure.” ’833 Patent 5:45-53. That the data is “represented” by a matrix
structure does not mandate physical movement. As noted by Defendants’ own expert, mapping in
the ordinary course carries a broader meaning in which data may be “represented” by or correlated
in certain fashions. (Dkt. No. 100-2 ¶ 73.) The actual movement of data in memory has neither
been identified by Defendants nor is it discussed within the specification with respect to the matrix
mapping. As noted by Plaintiffs, to the extent data is “placed” in a data stream, such placement is
shown by the information stream 602 of Figure 6 in which the ACK/NACK signals are stated to
be inserted through multiplexing. It is after this placing that a mapping to a matrix is performed.
In context of the specification as a whole, the arrow of Figure 6 does not indicate that the data is
then physically moved into a two-dimensional matrix in memory, but rather as the patent states,
the serial data stream is merely “represented by a matrix structure.” ’833 Patent 5:48, 6:49-7:5,
Figure 6.
As to the order of the method steps of the claims, it does not appear that there is an actual
conflict between the parties with regard to claimed steps. Plaintiffs agree that, for example in claim
1, the “mapping the multiplexed signals to” of step (b) is performed after step (a) and that the
“mapping ACK/NACK control signals to” of step (c) is performed after step (b). (See Dkt. No. 99
at 9.) Defendants’ inclusion of the order of operation will help provide clarity to the claims.
25

The Court construes “mapping” / “mapped” to have their plain and ordinary
meanings, no further construction required.
The Court construes “mapping the multiplexed signals to” to mean “after placing the
first control signals and the data signals [in step (a)], mapping the multiplexed signals to.” 3
The Court construes “mapping ACK/NACK control signals to” to mean “after
mapping the multiplexed signals [in step (b)], mapping ACK/NACK control signals to.” 4

3. “serially multiplexing first control signals and data signals, wherein the first control
signals are placed at a front part of the multiplexed signals and the data signals are
placed at a rear part of the multiplexed signals” [’833 Patent Claims 1, 8]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes placing data signals with sequential indexes
that the term be construed in accordance with directly after first control signals in a
its plain and ordinary meaning.
multiplexed signal
The parties dispute whether the term should be derived from passages in the specification
(’833 Patent 6:41-44 and 8:38-40) which use “directly after” and “sequential.”
Positions of the Parties
Plaintiffs contend that the term itself sets forth what is required and that one of ordinary
skill in the art would understand the term in context of the ’833 Patent specification. Plaintiffs
contend that “multiplexing” generally means combining a signal from several sources into a single
one, and “serially” generally means occurring sequentially or one after the other. (Dkt. No. 99 at
10 (citing extrinsic dictionary evidence).) Plaintiffs contend the meaning of this term is further
evident from the “wherein” portion of the term: “wherein the first control signals are placed in a

3
4

The language “step (a)” is relevant to claim 1.
The language “step (b)” is relevant to claim 1.

26

front part of the multiplexed signals and the data signals are placed at a rear part of the multiplexed
signals.” Plaintiffs contend that the specification passages cited to by Defendants relate to how
serially multiplexing affects the “mapping” of the control and data signals. Plaintiffs contend that,
in contrast, the claims explicitly relate to how serially multiplexed signals are “placed.” (Dkt. No.
101 at 6.)
Plaintiffs contend that the specification describes the signals: “when the control
information and the data information are multiplexed, they are serially connected with each other”
and that ACK/NACK information may be inserted “among the serially multiplexed data.” (Dkt.
No. 99 at 11 (citing ’833 6:49-60).) Plaintiffs further point to Figure 6 as demonstrating what it
means for control signals and data signals to be multiplexed serially with control symbols, 1
through NC, in front of data signals, 1 through ND:

’833 Patent 6:60-63, Figure 6.
Plaintiffs object to Defendants’ construction as importing two limitations from the specific
embodiments of the specification: (1) the placement of data and control signals “directly after”
one another, and (2) the use of “sequential indexes.” (Dkt. No. 99 at 11-12.) As to “directly after,”
Plaintiffs contend that the claim itself describes the arrangement as control signals are “at a front
part” and data signals are “at a rear part,” but there is no requirement that they be “directly after”
one another. As to “sequential indexes,” Plaintiffs contend that not only are limitations being
incorporated from the specification, but further, Defendants misinterpret the relevant specification
passage. Plaintiffs point to the passage:
27

Serial multiplexing means that the control signals are mapped with sequential
indexes directly after the data signals are mapped with them, or vice versa.
’833 Patent 8:38-40. Plaintiffs state that this passage describes serial multiplexing as mapping
“with sequential indexes.” Plaintiffs contend that Defendants’ construction, rather than modifying
the mapping to be “with sequential indexes,” describes the “data signals” as having sequential
indexes.
Defendants contend that the specification explicitly defines “serially multiplexing” to
include the “directly after” and “sequential indexes” concepts:
Serial multiplexing means that the control signals are mapped with sequential
indexes directly after the data signals are mapped with them, or vice versa.
Id. at 8:38-40. Defendants also contend an analogous term is similarly defined:
In this case, "multiplexed serially" means that the data information is mapped with
a sequence corresponding to the multiplexed result directly after the control
information is mapped with the sequence, or vice versa.
Id. at 6:41-44. Defendants contend that these are express definitional statements to which the
patentee is bound. (Dkt. No. 100 at 13.) Defendants contend that these two definitions are
equivalent and emphasize that “serially multiplexing” should be construed in this manner.
Defendants contend that their constructions are directly from these statements (with the
replacement of “placing” for “mapping” as discussed in the prior terms). Defendants contend that
these passages are not “specific embodiments” but rather express definitions:
The one embodiment of the present invention suggests that the channel coded data
and control signals are multiplexed serially. Serial multiplexing means that the
control signals are mapped with sequential indexes directly after the data signals
are mapped with them, or vice versa.
’833 Patent 8:36-40. Defendants contend that Plaintiffs have not shown any embodiment that does
not incorporate the “directly after” and “with sequential indexes” limitations.
28

Neither party provided argument on this term at the oral hearing. (Dkt. No. 107 at 39.)
Analysis
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” GE Lighting Solutions,
750 F.3d at 1309 (quoting Thorner, 669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The
full passages in question make clear that, here, the patentee acted as a lexicographer with regard
to “serially multiplexing.” First the specification states:
According to one embodiment of the present invention, the control information is
multiplexed serially with the data information, and is mapped with a multiplexing
region in accordance with the aforementioned time-first mapping method. In this
case, "multiplexed serially" means that the data information is mapped with a
sequence corresponding to the multiplexed result directly after the control
information is mapped with the sequence, or vice versa.
’833 Patent 6:37-44. Then, at the end of the specification, in a somewhat conclusion-like paragraph
it is stated:
The one embodiment of the present invention suggests that the channel coded data
and control signals are multiplexed serially. Serial multiplexing means that the
control signals are mapped with sequential indexes directly after the data signals
are mapped with them, or vice versa. Meanwhile, the multiplexed signals can
sequentially be mapped within a specific resource region in accordance with the
time-first mapping method, wherein the specific resource region includes a
plurality of symbols (for example, 12 SC-FDMA symbols) and a plurality of virtual
subcarriers.
’833 Patent 8:37-44. Plaintiff contends that the “wherein…” language of the claim provides the
meaning of serially multiplexing. However, as provided in the passages above, “serially
multiplexing” as used in the ’833 Patent relates to control signals and data signals being mapped
in sequence directly after one another or vice-versa. The wherein clause, still carries relevance as
the clause defines which information is placed in the front part of the multiplexed signals: “wherein

29

the first control signals are placed at a front part of the multiplexed signals and the data signals are
placed at a rear part of the multiplexed signals.”
Having found the specification definitional, the Court finds the language of the
specification more proper than Defendants’ construction. As noted by Plaintiffs, Defendants’
construction could be read to mean the “data signals” have “sequential indexes.” The sequential
concept of the quoted passages describes how the mapping is done, not what the data and control
signals have. Further, it is noted that one passage states that the mapping is done with “sequential
indexes” whereas the other passage just states “a sequence corresponding to….” In both cases, the
concept described is that the mapping has a sequence in which the data signals/information and
control signals/information are “directly after” each other or vice versa. The passages indicate that
the multiplexing is done in sequence with data or control signals “directly after” the other, but no
specific order (note the “vice-versa”). The “wherein” clause of the claim then provides which one
is first as claimed: the control signals are placed in front of the data signals. Finally, it is noted that
as defined in the specification, serial multiplexing relates to a mapping process, and it is the
wherein clause that constrains the mapping to placing the signals in a particular location of the
multiplexed signals.
The Court finds that “serially multiplexing first control signals and data signals
wherein the first control signals are placed at a front part of the multiplexed signals and the
data signals are placed at a rear part of the multiplexed signals” means that “first control
signals and data signals are mapped with a sequence in which one is directly after the other,
wherein the first control signals are placed at a front part of the multiplexed signals and the
data signals are placed at a rear part of the multiplexed signals.”

30

4. “the ACK/NACK control signals overwrite some of the multiplexed signals . . . from
the last row of the specific columns” [’833 Patent Claims 1, 8]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes the multiplexed signals placed at step (b) in
that the term be construed in accordance with the last row of the specific columns of the 2its plain and ordinary meaning.
dimensional resource matrix are skipped and
the ACK/NACK control signals are placed in
the last row of the specific column of the 2dimensional resource matrix
The parties dispute (1) whether the use of the word “from” has meaning different from
Defendants’ use of “in” and (2) whether “overwrite” is given a specific meaning in the patent.
Positions of the Parties
Plaintiffs contend that other than “ACK/NACK,” this term includes common words that
would be understandable to a jury. Plaintiffs object to Defendants’ construction on multiple
grounds.
First, Plaintiffs contend that the claim requires that ACK/NACK control signals are
mapped “from the last row of the specific columns” but Defendants change the claim to require
mapping “in the last row.” (Dkt. No. 99 at 13.) Plaintiffs contend the 2D matrix of its tutorial
illustrates the distinction:

31

(Dkt. No. 99 at 13.) Plaintiffs contend that when a mobile station has four ACK/NACK signals to
transmit, it can do so according to the claim requirements by overwriting the columns adjacent to
the reference symbols (“RS” in the figure) from the last row as shown in blue (cells at row 12,
columns 3, 4, 9 and 10). Plaintiffs contend that, in this example, mapping “from” the last row is
the same as mapping “in” the last row (row 12 in the example above). If, however, the mobile
station has more than four ACK/NACK signals, Plaintiffs contend that the claim language requires
mapping “from” the last row of those columns, so that after mapping the four blue squares shown
above, additional ACK/NACK could be mapped to rows above (e.g., rows 11, 10, and so on, as
needed). Plaintiffs contend the use of the word “from” has significance and is consistent with the
earlier description in the claims where the multiplexed signals are mapped to the 2-dimensional
resource matrix “from the first column of the first row to the last column of the first row, the first
column of the second row to the last column of the second row, and so on.” Plaintiffs contend that,
thus, Defendants’ revision of the claim term “from the last row” to “in the last row” is incorrect.
Second, Plaintiffs object to Defendants’ construction on the grounds that Defendants
unnecessarily state that “the multiplexed signals” are “the multiplexed signals placed at step (b).”
Third, Plaintiffs contend that Defendants replace the term “overwritten” with an
unnecessary and confusing description and that the term “overwritten” is readily understandable
to a lay jury and would be to one of ordinary skill in the art as well. (Dkt. No. 99 at 14 (citing Akl.
Decl. ¶44).) Plaintiffs note that the specification states:
In this case, “overwritten” means that specific information mapped in the resource
region is skipped and the corresponding region is mapped. Also, “overwritten”
means that the length of the entire information is maintained equally even after
specific information is inserted. This overwriting procedure may be represented by
puncturing.

32

’833 Patent 6:15-21. Plaintiffs contend that Defendants improperly import one example of
“overwrite” where information is “skipped and the corresponding region is mapped” (which
Defendants change to “placed”), and ignores the additional description of this overwriting as being
represented by “puncturing.” Plaintiffs contend that one of ordinary skill would be familiar with
the term “overwrite” and its description as “puncturing” in this context. (Dkt. No. 99 at 14 (citing
Akl. Decl. ¶44).)
Defendants, citing to the same passage, contend the ’833 Patent provides an explicit
definition to which the patentee is bound:
In this case, "overwritten" means that specific information mapped in the resource
region is skipped and the corresponding region is mapped. Also, "overwritten"
means that the length of the entire information is maintained equally even after
specific information is inserted. This overwriting procedure may be represented by
puncturing.
’833 Patent 6:15-21. Defendants contend that Plaintiffs object that Defendants do not include the
second and third sentences. Defendants contend, however, that neither the second nor third
sentence affect the scope of “overwriting.” Specifically, Defendants state that the second sentence
is included within Defendants’ construction and the third sentence is merely a non-limiting
example. (Dkt. No. 100 at 17.)
As to replacing “from” with “in,” Defendants contend that the express definition refers to
mapping information “in” a resource region. ’833 Patent 6:12-21. Defendants note that Plaintiffs’
expert (Akl) states that: “The ’833 claim consistently uses the term ‘from’ to denote a mapping
that begins ‘from’ a position and continues to other rows etc.” (Dkt. No. 100 at 17 (quoting Akl
Decl. ¶ 45).) Defendants contend, however, that the ’833 Patent does not limit the claimed phrase
to such mapping, and the express definition uses “in.” Defendants further contend that a plain
reading of the term is equally consistent with “multiplexed signals … from the last row” meaning
33

that the multiplexed signals are located “in” the last row, as compared to Plaintiffs’ interpretation
that “from” means “beginning from.” (Id. at 18, n. 5.) Defendants contend that their construction
encompasses the narrower case proposed by Plaintiffs. At the oral hearing, Defendants made clear
that their use of “in” does not limit the term to only overwriting in the last row. Rather, Defendants
acknowledged that the overwriting may also include other rows, as the claim just requires some
overwriting in the last row. (Dkt. No. 107 at 45.)
In reply, Plaintiffs state that both parties’ arguments reference the same paragraph in the
specification (’833 Patent 6:12-21) but Defendants exclude the description of overwriting as
“puncturing.” Plaintiffs state that the specification repeatedly refers to “puncturing” in connection
with overwriting ACK/NACK. (Dkt. No. 101 at 5 (citing ’833 Patent 1:35-40, 1:57-63, 3:40-43,
4:67-5:2, 6:20-21, 6:63-66, 7:31-32, 7:40-43, 7:66-8:2; Figs. 2, 6-9).) Plaintiffs state that should
the Court decide to construe this term, the construction should reflect the full breadth of the
patent’s description (which expressly includes puncturing), not just the first sentence. At the oral
hearing, Plaintiffs were agreeable to a construction posed by the Court of:
(1) some of the multiplexed signals are skipped and the corresponding ACK/NACK
signals are mapped, and (2) the length of the entire information is maintained
equally even after the ACK/NACK control signals are inserted, starting from the
last row of the specific columns of the 2-dimensional resource matrix,
except Plaintiffs sought to add “or punctured” to the language of “skipped.” (Dkt. No. 107 at 4041.)
Plaintiffs also state that Defendants contend that the allegedly “express definition of
‘overwritten’ refers to mapping information ‘in’ a resource region.” (Id. (quoting Dkt. No. 100 at
18).) Plaintiffs contend, however, that the claim requires mapping ACK/NACK signals to “the 2dimensional resource matrix” which includes rows/columns that correspond to SC-FDMA
34

subcarriers/symbols, and the specification’s reference to mapping “in a resource region” says
nothing about mapping “from” specific rows in a resource region. Plaintiffs contend that the full
language of the claims demonstrates that the patentee chose to use the word “from” to describe a
specific mapping sequence “from” a particular column or row.
Analysis
The primary dispute between the parties focuses on the meaning of “overwrite.” Plaintiffs
contend that the passage in question refers to not just “skipping” data but also “puncturing.”
However, the passage in question more directly characterizes the overwriting more generally as a
skipping and insertion by mapping process (for example inserting ACK/NACK). Puncturing is
described as a type of this skipping/mapping process:
In this case, "overwritten" means that specific information mapped in the resource
region is skipped and the corresponding region is mapped. Also, "overwritten"
means that the length of the entire information is maintained equally even after
specific information is inserted. This overwriting procedure may be represented by
puncturing.
’833 Patent 6:15-21. In this passage, overwriting is described as having two components: first,
skipping certain information and mapping other information, and second, maintaining the length
of the information as equal even after new information is inserted. This entire overwriting
procedure is described as being represented by “puncturing.” Plaintiffs have not shown that as
used in the intrinsic record, “puncturing” carries a differing meaning that does not include insertion
of new data while the length of the data is maintained.
As to the parties’ dispute over “from” and “in,” the claim language itself references “from.”
Defendants have acknowledged that the claim language does not limit the overwriting to only the
last row, rather the claim language only requires overwriting of some of the multiplexed signals
“from the last row.” (Dkt. No. 107 at 45.) The claim language itself merely requires that the
35

“ACK/NACK” signals overwrite “some” of the signals “from the last row of the specific columns.”
The claim language does not mandate that the ACK/NACK signals can only overwrite the last row
of the column. Similarly, the claim language itself does not mandate that the overwriting must start
in the last row. Plaintiffs contend that the earlier use of “from” in the claim is in the format of
“from the first column of the first row to the last column of the first row, the first column of the
second row to the last column of the second row, and so on.” However, such passage merely shows
that it is clear that when the claim was limited to a “from X to Y” format such language was used.
Here, the claim language is broader, only stating that the ACK/NACK control signals overwrite
some of the multiplex signals “from” the last row of the specific column of the matrix. The claim
language recited does not mandate the starting location sought by Plaintiffs. Further, Plaintiffs
have not demonstrated that the intrinsic evidence provides clear statements of lexicography or
disclaimer requiring a starting location. See GE Lighting Solutions, 750 F.3d at 1309; Cordis
Corp., 561 F.3d at 1329.
The Court’s construction utilizes the explicit definitional language of the specification
(’833 Patent 6:15-21) in context of the actual claim language.
The Court finds that “the ACK/NACK control signals overwrite some of the
multiplexed signals, mapped to the 2-dimensional resource matrix [at step (b)] from the last
row of the specific columns” means that “(1) some of the multiplexed signals, from the last
row of the specific columns of the 2-dimensional resource matrix, are skipped and the
corresponding ACK/NACK signals are mapped, and (2) the length of the entire information
is maintained equally even after the ACK/NACK control signals are inserted.”

36

5.

“scheduling request triggering event” [’293 Patent Claims 1, 2, 20]

Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes a change to the buffer status information
that the term be construed in accordance with compared to what has been transmitted
its plain and ordinary meaning.
previously
The parties dispute whether the triggering event is limited to detecting a change to the
buffer status information.
Positions of the Parties
Plaintiffs state that in context of the specification, one of ordinary skill in the art would
understand the term. (Dkt. No. 99 at 18-19 (citing Akl Decl. at ¶ 49).) Plaintiffs contend that the
’293 Patent recognizes that a scheduling request is a “basic uplink scheduling concept.” ’293
Patent 2:4-8. Plaintiffs also point to a passage, in the Summary, that describes an object of the
patent “to provide improved systems and methods for triggering uplink scheduling requests.” ’293
Patent 2:65-67. Plaintiffs contend that a “scheduling request triggering event” is simply an event
that triggers a scheduling event such as the exemplary events described in the specification. (Dkt.
No. 99 at 19.)
Plaintiffs object to Defendants’ construction as reading in one of several exemplary
embodiments, specifically the comparison of the buffer status information of ’293 Patent 3:33-37.
Plaintiffs contend this paragraph begins with “[i]n some embodiments” and the paragraph also
references “in this or other embodiments.” Id. at 3:23, 3:33. Plaintiffs further point to other
embodiments such as triggering a scheduling request based on arrival of data to an empty buffer:
“when data arrives to an empty buffer in the UE, the UE should always transmit an SR at its next
SR opportunity.” Id. at 6:67-7:2. Plaintiffs also point to triggering events that occur when “the
amount of time that has elapsed since the last SR was transmitted exceeds a threshold.” Id. at 9:737

10. Plaintiffs contend that neither of these events relate to a comparison of the buffer status
information. Plaintiffs contend that the passage at 3:33-36 does not disavow other triggering
events, including those mentioned in the specification. Plaintiffs state there is no clear statement
of disavowal.
Plaintiffs further contend that Defendants’ construction is contradicted by claim
differentiation as dependent claims 2, 13, and 21 recite the very limitation Defendants seek to add:
“The method according to claim 1, wherein … determining whether a scheduling request
triggering event has occurred comprises comparing the transmit buffer status information
transmitted to the base station with new information concerning the status of the transmit buffer”
(claim 2).
Defendants contend that the term is not a term of art and has no plain meaning. (Dkt. No.
100 at 19 (citing Negus Decl. at ¶ 117).) Defendants contend that the intrinsic evidence teaches
that all embodiments relate to a change in the buffer status information. At the oral hearing,
Defendants proposed broadening their construction to “a change to buffer status information.”
(Dkt. No. 107 at 60.)
Defendants contend that the ’293 patent purports to disclose “improved systems and
methods for triggering uplink scheduling requests” (’293 patent 2:65-67) and the alleged
“improvement” of the patent is realized by causing a scheduling request to be transmitted “only
when certain predefined conditions are met” (id. 6:16-21). Defendants contend that the patent is
clear that these predefined conditions reflect changes to the buffer status information. Defendants
point to the statement that “[e]mbodiments of the present invention define an alternative SR
triggering mechanism that is based on changes in transmit buffer status” (id at. 6:10-12) and point
to Figure 6b as depicting changes in buffer status that may trigger a scheduling request.
38

Defendants state that the specification makes clear that the claimed invention does not
encompass any event that triggers a scheduling request because such a broad construction would
capture the prior art. Rather, Defendants contend the patent discloses using a narrower set of
“predefined conditions.” Defendants contend that those predefined conditions reflect changes in
the buffer status. (Dkt. No. 100 at 20.)
Defendants point to: “[e]mbodiments of the present invention define an alternative SR
triggering mechanism that is based on changes in transmit buffer status.” ’293 patent 6:10-12.
Defendants contend that the specification describes different examples of how to determine
changes in buffer status such as describing change in priority, buffering size, or elapsed time. (Dkt.
No. 100 at 20 (citing ’293 patent 6:36-43).) Defendants contend that the exemplary language cited
by Plaintiffs does not indicate that a change in buffer status is one example of a scheduling request
triggering event; rather, it describes one exemplary method for determining that the buffer status
has changed. (Id. at 20-21 (citing ’293 Patent 3:33-37 (“[T]he step of determining whether a
scheduling request triggering event has occurred includes: comparing the transmit buffer status
information … with new information ….”)).) Similarly, Defendants contend that the dependent
claims recite different methods for determining change in buffer status, but do not provide
narrower definitions of what a scheduling request triggering event is. Defendants contend that the
patent makes clear that although different criteria may indicate a change in buffer status, the
scheduling request triggering event is always a change in buffer status, regardless of the means
used to detect that change or the criteria that caused it. (Dkt. No. 100 at 21.)
As to excluding embodiments, Defendants contend that the “triggering a scheduling
request based on arrival of data to an empty buffer” scenario (’293 patent col. 6:67-7:2) is
described as an “exception” to the rule that scheduling requests are transmitted in response to a
39

change in buffer status, and is in fact distinguished from the use of a scheduling request triggering
event. (Dkt. No. 100 at 21 (citing ’293 patent 6:67-7:2 (“[O]ne exception to the rule is that when
data arrives to an empty buffer in the UE, the UE should always transmit an SR ….”) and Figure
6a (showing separate steps for checking “Buffer empty?” and “Triggering Event?”)).)
Analysis
Defendants seek to limit the triggering event to “a change to the buffer status information
compared to what has been transmitted previously,” or alternatively, “a change to the buffer status
information.” However, the specification does not teach clear language of lexicography, a
disavowal, or a disclaimer mandating such requirements. See GE Lighting Solutions, 750 F.3d at
1309; Cordis Corp., 561 F.3d at 1329. The language that Defendants seek is presented as merely
an “example:”
[a]ccording to embodiments of the present invention, the UEs are configured to
transmit an SR only when certain predefined conditions are met, such as, for
example, changes in the UE's transmit buffer content compared to what has been
reported previously or what has been transmitted previously.
’293 Patent 6:16-21 (emphasis added). This passage describes the trigger events as “certain
predefined conditions” and prefaces the language Defendants would mandate with “such as, for
example.” The explicit use of “such as, for example” to describe what Defendants’ seek to include
counters Defendants’ contention that a clear disclaimer exists.
Moreover, the language sought by Defendants more properly reads to conflict with other
examples in the specification. For example, the specification states:
In some embodiments, the step of determining whether a scheduling request
triggering event has occurred includes: (a) determining whether additional data that
became available for transmission to the base station after the first SR was
transmitted has a higher priority than the initial data; (b) determining whether the
amount of time that has elapsed since the first SR was transmitted exceeds a
threshold; and/or (c) determining whether the difference between the current
40

amount of data in the transmit buffer and a previous, non-zero amount of data that
was in the transmit buffer exceeds a threshold. In this or other embodiments, the
step of determining whether a scheduling request triggering event has occurred
includes: comparing the transmit buffer status information transmitted to the base
station with new information concerning the status of the transmit buffer.
’293 Patent 3:23-37 (emphasis added). One of the potential trigger events, event (b) (“determining
whether the amount of time that has elapsed since the first SR was transmitted exceeds a
threshold”), is clearly excluded by Defendants’ construction as the amount of time since the
transmission of the first SR may be independent of the buffer status. Figure 6b also illustrates such
a time based embodiment. As shown in Figure 6b, the time based threshold trigger event may be
a separate trigger, not dependent upon a change in buffer status. ’293 Patent Figure 6b, 9:7-10. A
construction that excludes embodiments is rarely correct. See Accent Packaging, Inc. v. Leggett &
Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (holding that a construction that excludes the
preferred embodiment “is rarely, if ever, correct.”). The specification also describes an example
triggering event being the arrival of data to an empty buffer: “when data arrives to an empty buffer
in the UE, the UE should always transmit an SR at its next SR opportunity.” ’293 Patent 6:67-7:2.
Such a triggering event does not require a comparison of what has been transmitted previously,
and would be excluded by at least Defendants’ “compared to…” construction. That such an event
is described as “an exception” does not change that a scheduling request is triggered by that event.
Further, it is noted that elsewhere the method of the “invention” is described “in one aspect”
in a passage that references just a scheduling triggering event, without reference to the event being
based on a buffer status change. ’293 Patent 3:1-22. The patent also provides a more general
discussion of the trigger event that again does not conform to Defendants’ construction:
Several alternatives and combinations of the examples above can be constructed.
The present invention provides an improvement in that, instead of configuring the
UE to transmit an SR whenever the UE has data to transmit, the UE is configured
41

to transmit an SR only when it has data to transmit AND some other event has
occurred (e.g., a certain amount of time has elapsed since the last SR was
transmitted, the amount of data in the buffer grew by at least a certain amount since
the most recent transmission of data or a status report, or the transmit buffer was
empty just prior to it receiving the data).
Id. at 7:4-14. Finally, though not a binding rule, claim differentiation further supports the
Plaintiffs’ position. In context of the intrinsic record as a whole, the intrinsic record does not
support Defendants’ contention that the claim language is limited to a trigger event based on a
change in the buffer status. Rather, the specification more broadly teaches that the trigger event is
merely a predefined condition that triggers the scheduling request. ’293 Patent 6:16-21, 2:65-67,
3:22-37, 6:67-7:2, 7:4-14, 9:7-10, Figure 6b. At the oral hearing the Court proposed the
construction adopted below and Plaintiffs agreed to such construction. (Dkt. No. 107 at 50.)
The Court construes “scheduling request trigger event” to mean “a predefined
condition that triggers a scheduling request.”

6. “data processor” [’293 Patent Claims 12-15]
Plaintiffs’ Proposed Construction
This claim term should not be governed by 35
U.S.C. § 112(6). No construction necessary.
PanOptis proposes that the term be construed
in accordance with its plain and ordinary
meaning.

Defendants’ Proposed Construction
This term is subject to 35 U.S.C. § 112(6).
Function:
“cause the mobile terminal to transmit a first
scheduling request (SR) to a base station in
response to data arriving at an empty transmit
buffer in the mobile terminal,” “cause the
mobile terminal to transmit to the base station
transmit buffer status information in response
to receiving a scheduling grant (SG) from the
base station,” “determine whether a
scheduling request triggering event has
occurred,” and “cause the mobile terminal
transmit a second SR to the base station at a
next opportunity in response to determining
that a triggering event has occurred”
42

Structure:
a data processor executing software, as
described in connection with data processor
706 and software 708 of FIG. 7 and at col.
9:48-53, implementing the algorithm
described in FIG. 6b, in FIG. 5 and steps 604,
606, 608, 616, and 618 of FIG. 6a, and at
cols. 6:16-32, 6:36-7:3, 7:5-14, 7:24-8:2,
8:15-21, 8:32-8:39, 8:46-9:10
The parties dispute whether the term is a means-plus-function term subject to 35 U.S.C.
§112, ¶ 6. If a means-plus-function term, the parties agree to the function and structure.
Positions of the Parties
Plaintiffs contend that the term does not utilize “means” and does not utilize any other
“nonce” word and therefore triggers a rebuttable presumption that 35 U.S.C. §112. ¶ 6 does not
apply. (Dkt. No. 99 at 21 (citing Williamson, 792 F.3d at 1349).) Plaintiffs further contend that
one skilled in the art would understand that the term recites sufficiently definite meaning as the
name for structure. (Dkt. No. 99 at 22 (citing Akl Decl. at ¶ 52).) Plaintiffs further cite to a variety
of cases from this District that have found “processor” terms to be structure connoting terms. (Id.
(citing Syncpoint Imaging, LLC v. Nintendo of Am. Inc., No. 2-15-cv-00247-JRG-RSP, 2016 WL
55118 at *18 Case 2:16-cv-00059-JRG-RSP (E.D. Tex. Jan. 5, 2016)(“processor…for”);
Smartflash LLC v. Apple Inc., 6:13-CV-447-JRG-KNM, 2015 WL 4208754 at *3 (E.D. Tex. July
7, 2015)(“processor”); E-Watch Inc. v. Apple, Inc., 2:13-CV-1061-JRG-RSP, 2015 WL 1387947
at *12 (E.D. Tex. Mar. 25, 2015)(“processor”)).)
Plaintiffs contend that the specification uses the term consistent with the understanding of
one in the art. (Dkt. No. 99 at 22 (citing ’293 Patent 3:47-63, Figure 3).) Plaintiffs further contend
that even Defendants’ corresponding structure begins with “a data processor executing
43

software….” Plaintiffs further contend that unlike the “black box” of Williamson, the claims
themselves describe how the structure is configured, specifically “is configured to:”
(a) cause the mobile terminal to transmit a first scheduling request (SR) to a base
station in response to data arriving at an empty transmit buffer in the mobile
terminal;
(b) cause the mobile terminal to transmit to the base station transmit buffer status
information in response to receiving a scheduling grant (SG) from the base station;
and
(c) perform steps (c1)-(c2) while at least some of the first data is waiting to be
transmitted to the base station and after transmitting the buffer status information,
but prior to transmitting any subsequent SRs to the base station: (c1) determine
whether a scheduling request triggering event has occurred; and (c2) cause the
mobile terminal transmit a second SR to the base station at a next opportunity in
response to determining that a triggering event has occurred.
’293 Patent claim 12.
Plaintiffs further point to multiple extrinsic evidence dictionaries as indicating that the term
was known to connote structure. (Dkt. No. 99 at 23.)
Defendants contend that this Court has recently held that a claim reciting a processor
“defined only by the function that it performs” does not recite sufficient structure, and must be
construed as a means-plus-function limitation. (Dkt. No. 100 at 22 (citing St. Isidore Research,
LLC v. Comerica Inc., No. 2:15-cv-1390-JRG-RSP, 2016 WL 4988246 *14 (E.D. Tex. Sept. 19,
2016)).)
Defendants contend that like St. Isidore, the “data processor” term of the ’293 Patent is
defined only according to the function it performs (functions which the parties agree to), it does
not describe how the processor performs the functions. Defendants further contend that the claims
do not describe how the processor interacts with other components to perform any of the claim
functions. (Dkt. No. 100 at 22.)

44

Defendants state that Plaintiffs miss the relevant point by contending that “data processor”
refers to a “specific structure or class of structure.” Defendants contend that the claims do not call
out a generic “data processor,” but rather, a data processor configured to perform certain special
functions. (Id. at 23.) Defendants contend that the claims, on their face, provide absolutely no
detail as to how the claimed data processor performs any functions. (Id. at 23-24.) Defendants
assert that in claim 12, the claim merely states a processor is configured to perform the two “cause”
functions, function (a) and function (b) of the claim. Defendants contend that the claims do not
identify how the processor “causes” the mobile terminal to do anything. (Id. at 24.) Defendants
further state that there are no specifics about how the processor interacts with other components
of the system. (Id.)
In reply, Plaintiffs note that St. Isidore acknowledges that this “Court notes that in many
instances, the term ‘processor’ itself connotes sufficient structure and is not a ‘nonce’ or
‘functional’ word.” St. Isidore, 2016 WL 4988246, at *14. Plaintiffs further cite to yet another
ruling from this Court (in addition to those mentioned above) which held that “processor” terms
were not governed by 35 U.S.C. §112, ¶ 6. Adv. Mktg. Sys., LLC, v. CVS Pharmacy, Inc., 6:15-cv137-JRG-KNM, 2016 WL 1741396 at *19-20 (E.D. Tex. May 3, 2016).
Plaintiffs further contend that even if “data processor,” in isolation, did not connote
structure, the claim here recites the precise details of how the unit functions, similar to language
found in St. Isidore to connote structure. Specifically, Plaintiffs note that in St. Isidore, this Court
found that one of the disputed terms (“transaction processing module”) was not subject to 35
U.S.C. §112, ¶ 6 because the “claim as a whole discloses a series of steps the module performs
when it is in operation. That is, Claim 1 discloses an algorithm.” St. Isidore, 2016 WL 4988246,
at *13 (identifying a five-part “step-wise description of the operation of the ‘module’” which
45

“forms an algorithm” that “connotes structure.”). Plaintiffs contend that the same reasoning applies
to the “data processor” here as the claim recites step-wise functions of “causing the mobile
terminal” to perform the functions of parts (a) and (b) of the claim and performing subparts (c1)
and (c2) under certain conditions. (Dkt. No. 101 at 8.) Plaintiffs further note that the claim
describes how the “data processor” interacts with other components within the claimed mobile
terminal. (Dkt. No. 101 at 8.) Plaintiffs point to a figure provided as part of their expert’s
supplemental declaration in which the interaction is drawn graphically:

(Dkt. No. 101-1 (Akl Supp. Decl. Appendix B) at 15.) 5 Plaintiffs contend that this demonstrates
how the claim language itself provides the interaction of the components. (Dkt. No. 101 at 8.)

5

Defendants have moved to strike the supplemental declaration of Plaintiffs’ expert as being untimely since
it was filed accompanying Plaintiffs’ reply claim construction brief. (Dkt. No. 104.) In particular,
Defendants contend the supplemental declaration (1) unfairly delays disclosure of Plaintiffs’ expert’s
opinions until after responsive declarations are served by the Defendants and (2) contains subject matter
that could have fairly been anticipated by Plaintiffs and provided in Plaintiffs’ opening materials. (Dkt. No.

46

Analysis
There is a rebuttable presumption that 35 U.S.C. § 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.
Williamson, 792 F.3d at 1347–49 & n.3. The presumption stands or falls according to whether one
of ordinary skill in the art would understand the claim with the functional language, in the context
of the entire specification, to denote sufficiently definite structure or acts for performing the
function. See Media Rights Techs., 800 F.3d at 1372 (§ 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); 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”). This Court has generally found that
“processor” connotes structure to those in the electronic arts as opposed to being a nonce word.
See Syncpoint Imaging, 2016 WL 55118 at *18; Smartflash 2015 WL 4208754 at *3; E-Watch
Inc. 2015 WL 1387947 at *12; Adv. Mktg. Sys.. 2016 WL 1741396 at *19-20. Even St. Isidore,

104 at 1-3.) In response, Plaintiffs contend that Defendants refused to provide expert declarations before
the briefs were due. Plaintiffs contend the parties then agreed to a process in which Defendants provided
expert declarations after the opening brief, but with the explicit disclaimer that an expert declaration may
be served with the reply brief:
…but only for the purpose of rebutting any new expert opinions submitted with
BlackBerry’s responsive brief that could not be fairly anticipated by PanOptis’ expert in
support of the opening brief. To be clear, a reply expert declaration should not be used to
simply raise new evidence not cited in the opening declaration.
(Dkt. No. 94 at 2.) Defendants’ responsive brief and expert declaration raised the concept that “place” as
used in Defendants’ construction of “mapping” requires moving data in memory. Such a position appears
to squarely fall within the parties’ agreement as to the purposes of a supplemental declaration. Similarly,
the assertions Defendants present regarding the processor term, at a minimum, raise questions regarding
the applicability of the agreement. (See Dkt. No. 105 at 3.) Defendants were offered the opportunity for a
sur-reply and a deposition after the supplemental declaration to address any prejudice but declined the
opportunity. (Id. at 4). The parties elected to follow a process regarding claim construction extrinsic
evidence not necessarily encouraged by this Court’s local patent rules. However, the parties agreed to
proceed in that manner, and thus, the Court DENIES Defendants’ motion to strike.

47

cited by Defendants, states “the Court notes that in many instances, the term ‘processor’ itself
connotes sufficient structure and is not a ‘nonce’ or ‘functional’ word” and “the Court has typically
found ‘processor’ to connote sufficient structure to avoid the application of 35 U.S.C. § 112, ¶ 6
in different circumstances.” St. Isidore, 2016 WL 4988246, at *14-15.
Defendants’ reliance on St. Isidore is misguided, because the rationale for the St. Isidore
holding is not present in the current record for multiple reasons. First, Defendants have not pointed
to an intrinsic record that establishes that “processors” is meant here to generically be anything
that manipulates data as opposed to connoting structure representing what is generally known as a
processor. Thus, for example, Figures 7 and 8 describe the data processor as part of structural
elements such as a transmit buffer, storage unit and transceiver in user equipment. Second, the
claims and specification provide specific connection and interaction with other structural
components. Claim 12 states that a processor causes transmissions from the mobile terminal to a
base station in response to activity at the transmit buffer and receiving a grant at the transceiver
from the base station. In this regard, the extrinsic evidence offered by Plaintiffs, including
Plaintiffs’ expert (Akl), better supports how one of skill in the art would understand the term as
opposed to Defendants’ arguments and evidence. Similarly, as shown in Figure 7, the processor is
connected to a storage unit, a transmit buffer, and a transceiver, clearly indicating usage in a
manner connoting structure. Third, the term in question is more like the term that St. Isidore held
to connote structure (the “transaction processing module”) as the claim provides explicit further
detail as to how functional claimed elements are carried out. For example, (1) the step (a) “cause
the mobile terminal to transmit a first scheduling request” element occurs “in response to data
arriving at an empty transmit buffer,” (2) the step (b) “cause the mobile terminal to transmit to the
base station transmit buffer status information” element occurs “in response to receiving a
48

scheduling grant (SG) from the base station, (3) the step (c2) element “cause the mobile terminal
transmit a second SR to the base station at a next opportunity” element occurs “in response to
determining that a triggering event has occurred, and (4) steps (c1) and (c2) are performed “while
at least some of the first data is waiting to be transmitted to the base station and after transmitting
the buffer status information, but prior to transmitting any subsequent SRs to the base station.”
Based on the intrinsic and extrinsic evidence, the Court finds that the term is not a nonce word, the
term would be understood by one skilled in the art to connote structure, and the claim provides
more than merely a functional limitation.
The Court finds that “data processor” is not governed by 35 U.S.C. § 112, ¶ 6 and has
its plain and ordinary meaning with no further construction required.

7. “a position fixing button that is separate from the first and second touching actions”
[’506 Patent Claims 1, 8, 10]
Plaintiffs’ Proposed Construction
a virtual or physical button for fixing the
position of an object that is separate from the
first and second touching actions

Defendants’ Proposed Construction
software object for position fixing displayed
on the touch screen that is not touched in the
first and second touching actions

The parties dispute whether “a position fixing button” is limited to software objects or may
include physical buttons. The parties also dispute whether the button “is separate” from the
touching actions versus “not touched” in the touching actions.
Positions of the Parties
Plaintiffs object to Defendants’ attempt to limit the term to a “software object” (i.e., a
virtual button). Plaintiffs contend that the plain meaning of “button” is agnostic to software versus
physical buttons. Plaintiffs contend there is no unmistakable and clear disavowal or disclaimer that
mandates limiting the term. (Dkt. No. 101 at 9 (citing Unwired Planet, LLC v. Apple Inc., 829 F.3d
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1353, 1538 (Fed. Cir. 2016)).) Plaintiffs contend that Defendants’ argument boils down to a
contention that the claims should be limited because all the disclosed embodiments utilize a
software button. Plaintiffs contend that the Federal Circuit has repeatedly held just the opposite.
(Id.)
Further, Plaintiffs assert that the specification teaches a user interaction with the touch
screen via virtual buttons, physical buttons or a keypad: “Besides the touchscreen 140, the input
unit 150 (e.g., key pads, buttons, etc.) enables the terminal user to input various commands and
information.” ’506 Patent 4:4-9, Figure 1. Plaintiffs contend that the patent further teaches that the
input unit 150 may be omitted “to simplify the mobile terminal.” Id. Plaintiffs contend that the
specification teaches that virtual buttons, via a touch screen, may be used instead of the input unit
150 for simplification, as shown in exemplary embodiments. Plaintiffs contend, however, that the
specification does not provide lexicography or disavowal of claim scope excluding physical
buttons, particularly in light of the explicit identification of physical buttons. (Dkt. No. 99 at 25.)
Plaintiffs also object to Defendants’ use of “is not touched in the first and second touching
actions.” Plaintiffs contend that the claim language in question requires a button “that is separate
from the first and separate touching actions.” Plaintiffs contend this claim language does not
suggest the “is not touched” limitation proposed by Defendants. Rather, Plaintiffs contend, the
claim language merely requires that the manipulating the “position fixing button” is not the same
action or combination of actions that are claimed as the first and second touching actions. (Dkt.
No. 99 at 25.)
Defendants contend that the intrinsic evidence repeatedly and consistently describes the
position fixing button as a software button on the touch screen. Defendants contend that the claim
language “manipulation of position fixing button…is separate from the first and second touching
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actions” would be superfluous if the position fixing button is a physical button, because a physical
button would necessarily always be separate from touching actions which exclusively occur on the
touch screen. (Dkt. No. 100 at 25.) Defendants also point to the specification “objects and other
advantages” of the alleged invention which are described as implemented by fixing the position of
an object “if a first touch action is carried out on the object.” ’506 Patent 2:10-18; see also id. 2:2224, 2:28-30, 2:34-35. Defendants also point to the statement “one of touch actions of the terminal
user … is carried out … to perform the position fixation of the object.” Id. 5:3-7. Defendants
contend that the specification never suggests anything other than a touch action may be used to
effect position fixing.
In response to Plaintiffs’ reference to the physical buttons of input unit 150, Defendants
contend that the specification does not suggest using such buttons to perform position fixing.
Defendants further contend that the patent does not teach that the physical buttons or key pads are
used to perform any of the disclosed methods. (Dkt. 100 at 26.) Defendants contend that the mere
fact that the patent teaches physical buttons may also exist does not negate the fact that the patent
only teaches software buttons are used for the position fixing.
As to the “is not touched” dispute, Defendants contend that the first and second touching
actions are a “dragging and dropping touching action” and “touching the at least one object for a
predetermined time period,” respectively. Defendants contend that neither of these actions includes
activation of a virtual position fixing button. Defendants contend it is unclear how touching the
position fixing button could be part of the claimed first and second actions. (Dkt. No. 100 at 26.)
Analysis
Defendants have pointed to no clear language in the intrinsic record of lexicography,
disavowal, or disclaimer mandating that “button” being limited to software buttons. See GE
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Lighting Solutions, 750 F.3d at 1309; Cordis Corp., 561 F.3d at 1329. Rather, Defendants merely
point to an embodiment of the specification. However, even a single embodiment is not necessarily
enough to read a limitation into the claim from the specification. Arlington Indus., Inc. v.
Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“[E]ven where a patent describes
only a single embodiment, claims will not be read restrictively unless the patentee has
demonstrated a clear intention to limit the claim scope using words of expressions of manifest
exclusion or restriction.”) (citation omitted).
Moreover, here the patent explicitly references “button” in the context of a hardware
button: “[b]esides the touchscreen 140, the input unit 150 (e.g., key pads, buttons, etc.) enables the
terminal user to input various commands and information.” ’506 Patent 4:4-6, Figure 1. In fact, at
the oral hearing, Defendants acknowledged that the only reference to “button” in the specification
is a hardware button, and the specification does not ever reference something on the screen as a
“button.” (Dkt. No. 107 at 78-80, 87.) Defendants contend that the patent teaches that the input
unit 150 is not used. However, the patent is clear that such non-use is optional: “[i]f the touchscreen
140 alone is sufficient to receive user commands and information, the input unit 150 or a part
thereof may be omitted from the mobile terminal 100 to simplify the mobile terminal 100.” ’506
Patent 4:6-9. In context of the specification as a whole, the claimed “position fixing button” is not
limited to only a software button.
As to the second issue (“separate” versus “not touched”), Defendants have not identified
anything in the intrinsic record that mandates “separate” includes “not touched.” Defendants
merely state that it is “unclear how touching the position fixing button could be part of the claimed
first and second actions.” The more proper question, though, is what is required by the claim
language and the intrinsic record? Defendants have not provided rationale for changing the explicit
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claim language which merely requires a position fixing button separate from the first and second
touching actions. As to Defendants’ contention at the hearing that the “separate” language would
be meaningless if Plaintiffs’ construction is adopted, the Court disagrees. As construed herein, the
button may be either software or physical. The “separate” claim language thus still has importance.
The Court construes “a position fixing button that is separate from the first and
second touching actions” to mean “a software object or physical button for fixing the position
of an object, the software object or physical button being separate from the first and second
touching actions.”

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8. “fixed and not moveable” [’506 Patent Claims 1, 8, 10]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes appears stationary on screen and cannot be
that the term be construed in accordance with moved relative to other objects on screen with
its plain and ordinary meaning.
just one touching action
Alternatively:
“stationary on screen and cannot be moved
with just one touching action” 6
The parties dispute whether the term requires that the object cannot be moved with just one
touching action.
Positions of the Parties
Plaintiffs contend the claim language is clear and understandable to both one skilled in the
art and a jury. Plaintiffs object to Defendants’ construction as adding three limitations: (1) the
object “appears” stationary, which adds confusion as to whether the object is actually fixed and
not moveable or merely appears that way, (2) requiring “relative to other objects on screen,” which
is in conflict with exemplary embodiments in which “it is assumed that only one object is displayed
at a time on the touchscreen” (’506 Patent 4:31-32), and (3) that the object is fixed and not
moveable by “just one touching action,” whereas Plaintiffs contend the term merely describes the
position of an object on the touchscreen where it is “fixed” and “not moveable” until it is released
and moved, as described in the remaining portions of the claim. (Dkt. No. 99 at 26.)
Plaintiffs contend that the term describes the state of the object on the screen and not
“touching actions” which are separately and specifically described in the claim. (Dk.t No. 101 at
10.)

6

Defendants agreed to an alternative construction in the briefing to narrow the disputed issues. (Dkt. No.
100 at 28.)

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Defendants contend its construction is consistent with the specification. Defendants
contend that the interface permits a user to “fix” an object at a position, “such that after this fixation
of the object … the user may not move the object [] by touching and dragging the object[] away
from the fixed position.” ’506 Patent 4:57-61. Defendants also state that after position fixation, a
user may “release” the fixed object so that the object “is no longer fixed to [the] position and once
again can be movable on the touchscreen” (id. at 5:57-61) and when the object is released, “[t]he
step of moving the object … can be performed any number of times as desired by the user, before
the object is fixed to a particular position” (id. col. 4:64-5:2). Defendants contend that an object
that is fixed to a position on the display appears stationary on the screen, and it is not movable so
long as it remains fixed, however, the object may be moved if it is first released using a touching
action different from the touching action used to move the object. (Dkt. No. 100 at 27 (citing ’506
Patent 5:57-6:12, 6:29-32).) Defendants contend, therefore, that when the object is fixed and not
movable, it cannot be moved with just one touching action: at least a releasing touching action and
a moving touching action must be performed. Defendants contend that even Plaintiffs
acknowledge that a fixed object is not moveable “until it is released and moved,” in other words,
at least two touching actions must occur. (Id. (citing Dkt. 99 at 26).)
Defendants contend that Plaintiffs have not stated what the ordinary meaning is. Further,
Defendants contend that the meaning of the term, in the context of the patent, is more nuanced
than any common language definition of “fixed” or “not moveable.” Defendants contend that
although many display elements on a touch screen may be static and incapable of being moved by
a user, the patent’s use of the terms “fixed” and “not moveable” refers specifically to objects whose
position is controllable, but are optionally fixed until they are released for movement. (Dkt. No.
100 at 28 (citing ’506 Patent 4:41-5:7, 5:31-61).)
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As to issues (1) and (2) above, Defendants agree to a construction that omits those phrases,
i.e., “stationary on screen and cannot be moved with just one touching action.” (Id.)
Analysis
Plaintiffs have raised valid concerns regarding Defendants’ use of “appears” and “relative
to other objects on the screen.” The addition of “appears” does nothing to clarify the meaning of
the term and merely raises ambiguity regarding whether something is meant to be different from
“appears” fixed versus being fixed. As to “other objects,” as noted by Plaintiff, the ’506 Patent
contemplates embodiments which include merely a single object on the screen. ’506 Patent 4:3132. Defendants’ original construction conflicts with this disclosure. Defendants have agreed to an
alternative construction which removes both the “appears” and “relative to other objects on the
screen” limitations (Dkt. No. 100 at 28.) The Court finds that such limitations should not be
contained in the claim construction.
The remaining issue is Defendants’ inclusion of “just one touching action.” Defendants
acknowledge that the concept of “fixed” and “not moveable” relates “specifically to objects whose
position is controllable, but are optionally fixed until they are released for movement.” (Id.)
Defendants have not shown, though, why such a concept requires that objects cannot be moved
with “just one touching action.” Defendants state that the specification describes a first action to
release and a second action to move. However, Defendants have not pointed to clear language of
lexicography, disavowal, or disclaimer mandating such requirements. See GE Lighting Solutions,
750 F.3d at 1309; Cordis Corp., 561 F.3d at 1329. Moreover, as to the touching actions, the claim
itself describes the requirements of the first and second touching actions. It is these limitations that
describe the bounds and exclusions, if any, of the two actions, not the object that is “fixed and not
moveable.” Defendants have not shown why the definition of the “fixed and not moveable” objects
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should be further limited in a manner that defines the scope of the touching actions. At the oral
hearing, Defendants did not articulate a problem that would result in understanding the plain and
ordinary meaning if the term were not construed, other than Defendants’ contention that the
disclosed embodiment requires two touch actions to move an object. (See Dkt. No. 107 at 93-96.)
The disclosure of an embodiment in the specification does not mandate Defendants’ limitation of
the clear claim language. See Arlington Indus., 632 F.3d at 1254. By rejecting Defendants’
additional limitations, the Court has resolved the claim construction dispute. See O2 Micro Int’l
Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“district courts are not
(and should not be) required to construe every limitation present in a patent’s asserted claims.”);
Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro,
where the court failed to resolve the parties’ quarrel, the district court rejected Defendants’
construction.”).
The Court finds that “fixed and not moveable” has its plain and ordinary meaning
and no further construction is necessary.

9. “release” / “releasing” [’506 Patent Claims 1,8, 10]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes enable / enabling the first touching action for
that the term be construed in accordance with
its plain and ordinary meaning.
The parties dispute whether the “releasing” enables the first touching action.
Positions of the Parties
Plaintiffs contend the claim language is clear and understandable to both one skilled in the
art and a jury. Plaintiffs contend that Defendants’ construction ignores the context of the claim.
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Plaintiffs note that claim 1 states “to release the at least one object according to the second touching
action such that the at least one object can be moved.” Plaintiffs contend that Defendants’
construction incorrectly suggests that the “first touching action” is being enabled by the “release”
element. Plaintiffs contend this is incorrect, as it is the “object” that is being released such that it
can be moved by the first touching action. Plaintiffs state that the claim does not teach or suggest
that the “touching action” itself is “enabled” by this claim element. (Dkt. No. 99 at 27.)
Plaintiffs contend that “releasing” focuses on the action being taken on the object and that
the claim language describes the “objects,” not the “touching actions” which are separately and
specifically described in the claim. (Dkt. No. 101 at 10.)
Defendants contend their construction is consistent with the specification. Defendants
contend that when the user fixes an object to the screen, the user may no longer perform a touching
action on that object in order to change its position; in other words, the first touching action is
disabled at that object’s position. (Dkt. No. 100 at 29 (citing ‘506 Patent 4:55-61, 5:49-53).)
Defendants state that when the user releases the object, the first touching action is again enabled
for that object, so that the user may move its position as many times as desired, unless its position
is fixed again. (Id. (citing ’506 Patent 4:41-54, 5:57-6:12, 6:29-32).) Defendants contend that the
argument that the “object,” and not the “first touching action,” is released is thus consistent with
Defendants’ construction as the significance of “releasing” an object is that the “first touching
action” is enabled for use with that object.
Defendants contend that Plaintiffs have not identified what the ordinary meaning is and, in
any event, while “fixing” and “releasing” a physical object may have a well understood meaning,
the significance of those terms, when used to describe virtual objects, is less clear. Defendants
contend that the specification uses the word “release” to describe at least two different
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functionalities: a user may “drag and drop” an object by touching it at an initial position, moving
it to a new position, and “releasing” the object at the new position. (Id. (citing ’506 Patent 4:4854).) Defendants further contend that a user may also “release” an object by performing a touch
action that cancels the position fixation of that object.

(Id. (citing ’506 Patent 5:55-61).)

Defendants contend construction of the term is thus necessary to clarify the meaning of the term
within the context of the claims.
Analysis
Defendants seek to require that the releasing activity (the second touching action)
“enables” the claimed first touching action (a moving action). Though as described in the
specification, the second touching action may enable the first touching action, the claim language
does not require this limitation. Again, Defendants have not pointed to clear language of
lexicography, disavowal, or disclaimer mandating such requirements. See GE Lighting Solutions,
750 F.3d at 1309; Cordis Corp., 561 F.3d at 1329. Further, as to the functionality of the second
action and its releasing, the claims provide the required limitations. For example, in claim 1, it is
stated that the control unit is configured: “to release the at least one object according to the second
touching action such that the at least one object can be moved.” ’506 Patent claim 1. Thus, the
claim itself defines the functionality of the second touching action, further counseling against
Defendants’ attempt to include different additional functionality. As claimed, the second touching
action allows the object to be moved. The claim does not mandate the second touching action
enabling the first touching action.
Defendants contend that while “fixing” and “releasing” an object might be well understood,
the significance of the terms with relation to a screen is less clear. In context of the full intrinsic
record, the Court disagrees with Defendants. Other than contending that a limitation should be
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imported from the specification, Defendants have not demonstrated any lack of clarity of the actual
claim language in light of the specification. At the oral hearing, Defendants further contended that
“release” can have two meanings as demonstrated in the specification. First, releasing an object as
it is being “dragged and dropped” (specifically the “drop” step), and second, “releasing an object
so it can be moved.” (Dkt. No. 107 at 100-101.) However, such differing meanings do not raise a
need to construe the term because the surrounding claim language makes clear that it is the
“releasing an object so it can be moved” usage that is claimed, for example: “to release the at least
one object according to the second touching action such that the at least one object can be moved”
and “wherein the control unit is further configured to display differently a shape of the object when
the position fixation of the object is released.” 506 Patent claim 1.
By rejecting Defendants’ additional limitations, the Court has resolved the claim
construction dispute. See O2 Micro., 521 F.3d at 1362; Finjan, Inc., 626 F.3d at 1207.
The Court finds that “release” / “releasing” have their plain and ordinary meaning
and no further construction is necessary.

10. “fix[ing] the moved object to the second position on the touch screen” [’506 Patent
Claims 1, 8, 10]
Plaintiffs’ Proposed Construction
Defendants’ Proposed Construction
No construction necessary. PanOptis proposes disabl[ing] the first touching action at the
that the term be construed in accordance with second position on the touch screen
its plain and ordinary meaning.
The parties dispute whether the “fixing” means that the “position fixing button” disables
the first touching action.

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Plaintiffs
Plaintiffs contend the claim language is clear and understandable to both one skilled in the
art and a jury. Plaintiffs object to Defendants’ construction for adding “disabl[ing] the first
touching action.” Plaintiffs contend that similar to the “release” terms above, it is incorrect to state
that “fix[ing] the moved object to the second position on the touch screen” disables the “first
touching action.” Plaintiffs contend, rather, that the term itself states what “fix[ing] the moved
object . . .” achieves, namely “to fix the moved object to the second position on the touch screen.”
Plaintiffs contend that the object is fixed to the second position, and it cannot be moved by a first
touching action or otherwise, but the first touching action itself is not “disabled.” (Dkt. No. 99 at
28-29.)
Plaintiffs contend that “fixing” focuses on the action being taken on the object and that the
claim language describes the “objects,” not the “touching actions” which are separately and
specifically described in the claim. (Dkt. No. 101 at 10.)
Defendants contend that “fixing” an object disables a touching action for changing the
position of that object, (’506 patent 4:55-61, 5:49-53), and “releasing” the object again enables the
position changing touching action for that object (id. at 4:41-54, 5:57-6:12, 6:29-32). (Dkt. No.
100 at 30.) Defendants contend that Plaintiffs’ argument that the fixation does not disable the first
touch action misunderstands Defendants’ construction: the first touching action is not universally
disabled as a result of fixation; it is only disabled for the fixed object. (Id.)
Defendants object to Plaintiffs’ failure to identify what that ordinary meaning is.
Defendants state that, in any event, while “fixing” and “releasing” a physical object may have a
well understood meaning, the significance of those terms, when used to describe virtual objects, is
less clear. (Id.) Defendants state that the position fixation of the ’506 patent is purportedly the
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improvement the patent claims over the prior art, and allegedly is not performed in the prior art.
(Id.) Defendants contend that Plaintiffs do not explain how the term could have a “plain and
ordinary meaning” within the context of user interfaces in light of this fact.
Analysis
Defendants again seek to limit the claim to the particular embodiment described within the
specification without proper guidance from the intrinsic record. See GE Lighting Solutions, 750
F.3d at 1309; Cordis Corp., 561 F.3d at 1329. In addition, as claimed, the object is explicitly fixed
“based on a manipulation of a position fixing button.” In contrast, Defendants would seek to have
the fixing process also based on “disabling the first touching action.” The explicit guidance in the
claim as to what the fixing of the object is based on further counsels against Defendants’
construction. By rejecting Defendants’ additional limitations, the Court has resolved the claim
construction dispute. See O2 Micro., 521 F.3d at 1362; Finjan, Inc., 626 F.3d at 1207.
The Court finds that “fix[ing] the moved object to the second position on the touch
screen” has its plain and ordinary meaning and no further construction is necessary.

CONCLUSION

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

62

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 8th day of February, 2017.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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