Nokia Solutions and Network US LLC et al v. Huawei Technologies Co. Ltd

Filing 90

CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by Magistrate Judge Roy S. Payne on 5/24/2017. (nkl, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

NOKIA SOLUTIONS AND NETWORKS
US LLC and NOKIA SOLUTIONS AND
NETWORKS OY,
Plaintiffs,
v.
HUAWEI TECHNOLOGIES CO. LTD. and
HUAWEI DEVICE USA, INC.
Defendants.

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Case No. 2:16-cv-0756-JRG-RSP

CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On May 3, 2017, the Court held an oral hearing to determine the proper construction of the
disputed claim terms in U.S. Patent Nos. 8,121,082 (the “’082 Patent”) and 8,165,035 (the “’035
Patent”) (collectively the “Asserted Patents”). The Court has considered the parties’ claim
construction briefing (Dkt. Nos. 68, 71, and 72) 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 1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831 (2015).

BACKGROUND
Plaintiffs Nokia Solutions and Networks US LLC and Nokia Solutions and Networks OY
(collectively “Nokia”) assert the Asserted Patents against Defendants Huawei Technologies Co.
LTD. and Huawei Device USA, Inc., (collectively “Huawei”).
1

The ’082 Patent relates to communications in a cellular network. The Abstract of the ’082
Patent recites:
A method for signaling between a mobile apparatus (10) and a network node (12)
is described. The method includes generating a message that includes a scheduling
request. Determining whether a second indication (e.g., an acknowledgment) is to
be transmitted in a sub-frame with the first indication is also included. The method
includes, in response to a determination that the second indication is not to be
included, the message is configured in a first configuration and, in response to a
determination that the second indication is to be included, the message also includes
the second indication and the message is configured in a second configuration. The
first configuration is distinct from the second configuration. The method also
includes sending the message, via a wireless transmitter, in the sub-frame.
Apparatus and computer-readable media are also described.
’082 Patent Abstract. Scheduling requests are provided so that user equipment may request
resources from a base station. More particularly, the ’082 Patent describes a process for
transmitting

scheduling

requests

(SR),

acknowledgements

(ACK),

and

negative

acknowledgements (NACK). Specifically, the ’082 Patent references a desire in the 3GPP cellular
standard to provide the simultaneous transmission of SR, ACK and NACK signals. Id. at 2:55-57.
The technique disclosed relates to techniques for including in a message just SR information,
combining SR and ACK information in sub-frame or combining SR and NACK information in
sub-frame. Id. at 4:10-42. Constellation point techniques may be used to map the information that
is sent. Id. at 7:22-35, Figures 2-6, 8.
The ’035 Patent relates to communications in a cellular network. The Abstract of the ’035
Patent recites:
In a first aspect of the invention there is a method, apparatus, and executable
software product for receiving scheduling information, determining that at least one
downlink allocation of the scheduling information was not received, sending a reply
to the received scheduling that comprises an indication of discontinuous
transmission in response to the determining. In another aspect of the invention there
is a method an apparatus to send scheduling information, and receive a reply to the
scheduling information comprising an indication of discontinuous transmission that
2

at least one downlink allocation of the scheduling information was not received.
’035 Patent Abstract. The ’035 Patent relates to transmissions of ACK, NACK and discontinuous
transmission (DTX) signals. More particularly, the ’035 Patent describes using DTX detection. A
node in the system may receive scheduling information and determine that at least one downlink
allocation of the scheduling information was not received. A reply is sent to the received
scheduling information indicating a discontinuous transmission situation. Id. at 3:60-4:8.

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
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).
3

“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.
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

4

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
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:

5

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.
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.
1

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).

6

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;
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) (§

2

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.

7

112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792
F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons
of ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
function . . . even if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.” Id. A “structure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history clearly links or associates
that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
inquiry is not merely whether a structure is capable of performing the recited function, but rather
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.
8

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).
C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) 3
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in the art as of the time the application for
the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any
claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130
n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v.
Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).

3

Because the application resulting in the patent was filed before September 16, 2012, the effective date of
the AIA, the Court refers to the pre-AIA version of § 112.

9

When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
used in a claim, “the court must determine whether the patent’s specification supplies some
standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1371 (Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351).
In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite
if the claim fails to disclose adequate corresponding structure to perform the claimed functions.
Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary skill in the
art “would be unable to recognize the structure in the specification and associate it with the
corresponding function in the claim.” Id. at 1352.

AGREED TERMS
The parties agreed to the following terms:
Term
“An indication of discontinuous
transmission”
(’035 Patent Claims 1, 12, 22, and 23)
“means for receiving scheduling
information”
(’035 Patent Claim 23)

Agreed Construction
“an explicit or implicit indication of
discontinuous transmission”
Function: receiving scheduling information
Structure: receiver, transceiver, or other
equivalents thereof

(Dkt. No. 76-1 at 17, 26)

10

DISPUTED TERMS
1. “message generation means for generating a message comprising a scheduling
request,”
“message generation means is further for: configuring the message in a first
configuration in response to a determination that the acknowledgement is not to be
included, and configuring the message in a second configuration comprising the
acknowledgement in response to a determination that the acknowledgement is to be
included, where the first configuration is distinct from the second configuration,”
“the message generation means is further for configuring the message in a third
configuration comprising the negative-acknowledgement in response to a
determination that the negative-acknowledgement is to be included”
(‘082 Patent Claim 10)
Nokia’s Proposed Construction
Huawei’s Proposed Construction
Function: (Agreed)
Function: (Agreed)
generating a message comprising a scheduling generating a message comprising a scheduling
request
request
and

and

configuring the message in a first
configuration in response to a determination
that the acknowledgement is not to be
included

configuring the message in a first
configuration in response to a determination
that the acknowledgement is not to be
included

and

and

configuring the message in a second
configuration comprising the
acknowledgement in response to a
determination that the acknowledgement is to
be included, where the first configuration is
distinct from the second configuration

configuring the message in a second
configuration comprising the
acknowledgement in response to a
determination that the acknowledgement is to
be included, where the first configuration is
distinct from the second configuration

and

and

configuring the message in a third
configuration comprising the negativeacknowledgement in response to a
determination that the negativeacknowledgement is to be included

configuring the message in a third
configuration comprising the negativeacknowledgement in response to a
determination that the negativeacknowledgement is to be included
11

Structure:
message generation means (10F) such as
processor, memory, and/or associated
software for mapping the constellation points
shown in Figs. 3, 4, 5, 6, or 12, or the
constellation points described in the
corresponding text, e.g., 7:39- 8:59, 9:52-61,
and equivalents thereof

Structure:
The specification fails to set forth any
algorithm for the function claimed in this
software limitation. Claim is indefinite.

Huawei contends that, at most, the patent discloses an algorithm for only a portion of the
function, not the full function.
Positions of the Parties
Nokia contends that the “message generation means” generates a message comprising a
scheduling request (SR) and then configures the message in (i) a first configuration (when there is
only SR) (ii) a second configuration (when there is SR with ACK), and (iii) a third configuration
(when there is SR with NACK). Nokia points to Figures 3, 4, 5, 6, and 12 as providing a mapping
of constellations to configure the message in one of these three configurations. (Dkt. No. 68 at 56.) Nokia contends that as for the first function, for which Huawei alleges an algorithm is absent,
each of the three configurations discussed above and their disclosed constellation points are
messages comprising an SR. (Dkt. No. 72 at 2.) Nokia contends that the constellation figures and
the flow chart of Figure 8 provide an algorithm.
Nokia contends that the specification shows how these constellation points are used.
Specifically, Nokia states that in order to generate and configure a message with SR, the
specification provides that “the UE transmits the ACK/NACK information using a SR resource
with the modulation constellation shown in either Figure 3 or 5 for mapping a 1-bit ACK/NACK
indication, or the modulation shown in either Figure 4 or Figure 6 or Figure 12 for mapping a 2bit ACK/NACK indication.” ’082 Patent Figure 8, Block 8B. Nokia contends that Figure 8 and the
12

constellation mappings shown in Figures 3-6, along with the corresponding text, provide the
algorithm for generating and configuring the message. Nokia points to Figure 3 which shows a
“constellation mapping of 1-bit ACK/NACK.” (Dkt. No. 68 at 6 (citing ’082 Patent 5:19-20,
Figure 3.)

Nokia contends that in this one-bit mapping, several of the claimed functions are disclosed. First,
with regard to “generating a message comprising a scheduling request and configuring the message
in a first configuration in response to a determination that the acknowledgement is not to be
included,” Nokia contends the circle in Figure 3 represents SR without ACK/NACK (Dkt. No. 68
at 7 (citing ’082 Patent 7:54-56).) Second, with regard to “configuring the message in a second
configuration comprising the acknowledgement in response to a determination that the
acknowledgement is to be included, where the first configuration is distinct from the second
configuration,” Nokia contends that the triangle in Figure 3 shows the configuration for sending
SR and ACK (Id. (citing ’082 Patent 9:54-61).) Third, with regard to “a third configuration
comprising the negative-acknowledgement in response to a determination that the negativeacknowledgement is to be included,” Nokia contends the filled-in circle shows transmitting SR
13

and NACK. (Id. (citing ’082 Patent 9:54-61).) Nokia contends Figures 4, 5, 6, and 12 similarly
provide alternative constellation mappings.
Nokia also contends that the flowchart in Figure 8 describes transmitting information
“using the SR resource” when SR=1 ’082 Patent Figure 8, Block 8B. Nokia contends that a person
of skill in the art would know that (1) SR=1 refers to a “positive SR” transmission where the UE
desires to generate and transmit an SR (id. at 7:41-42) and (2) SR=0 refers to a “negative SR”
which indicates that the UE does not desire to transmit a SR (id.). (Dkt. No. 72 at 2.) Nokia
contends that when SR=1, e.g., in case of positive SR transmission, SR may be transmitted through
on/off keying on the SR resource (Id. (citing ’082 Patent 2:62-64 and Dkt. No. 72-1 (Thompson
Decl.) at ¶ 22).) Nokia contends that by choosing positive SR transmission on the SR channel, the
UE is “generating a message comprising a scheduling request.” (Id. at 2.)
Huawei contends that Nokia ties disclosure in the patent to some of the recited functions
but not all of the functions. (Dkt. No. 71 at 5-6.) First, Huawei objects that Nokia fuses the first
two functions together “generating a message comprising a scheduling request” and “configuring
the message in a first configuration in response to a determination that the acknowledgement is
not to be included”—into a new single function. Huawei contends that Nokia merely points to the
constellation point, but that patent does not disclose an algorithm for “generating a message
comprising a scheduling request.” (Id. at 6.) Huawei contends that “a point on a constellation chart”
says nothing about a “message,” much less how to “generate” or “configure” that message. (Id.)
Second, Huawei contends that Nokia does not disclose an algorithm for the function
“configuring the message in a second configuration comprising the acknowledgement in response
to a determination that the acknowledgement is to be included, where the first configuration is
distinct from the second configuration.” Specifically, Huawei contends that Nokia points to
14

nothing that would correspond to “a determination that the acknowledgement is to be included,”
and Huawei states that the patent discloses no such determination. (Dkt. No. 71 at 7 (citing Dkt.
No. 71-1 (Laneman Dec.) at ¶ 26).) Huawei contends that the same is true for “a determination
that the acknowledgement is not to be included” and “a determination that the negative
acknowledgement is to be included” in the next two functions. (Id.)
Third, Huawei contends that the chart of constellation points is merely an outcome, not an
algorithm. (Id. (citing Cloud Farm Assocs. LP v. Volkswagen Grp. of Am., Inc., No. 2016-1448,
2017 WL 74768, at *7 (Fed. Cir. Jan. 9, 2017) (“Instead of offering the algorithm itself, this table
merely offers the output of the algorithm. Nowhere in the patent offers a step-by-step procedure
of how to arrive at the outputs disclosed in the table. In other words, the patent offers the ends but
not the means, which is not sufficient for structure.”)).)
As to the flowchart of Figure 8, Huawei contends that flowchart is backwards from the
claimed function and thus does not provide an algorithm for the claimed function. Specifically,
Huawei contends that the flowchart presumes “ACK/NACK information” is being sent, and
performs different steps depending on whether a scheduling request is to be sent. (Id. at 8.) Huawei
contends that, in the claims, the scheduling request is presumed, and different steps are performed
depending on whether ACK/NACK information is to be sent at all, and if so what kind. (Id.)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 25.)

15

Analysis
Huawei raises two primary arguments as to why differing portions of the function are not
supported with corresponding algorithms. The Court finds that Nokia presents the more persuasive
arguments as to the presence of algorithms for the functions as claimed.
First, Huawei contends that no algorithm exists for “generating a message comprising a
scheduling request.” However, the patent is replete with discussion of creating a message by using
data from a constellation mapping scheme in which SR information is represented as part of the
constellation map. This is clearly an algorithm for generating the claimed message. The claimed
message is created by embedding SR information in the constellation mapping in the message.
’082 Patent Figs. 3, 4, 5, 6, 8 and 12, 7:39- 8:59, 9:52-61. This provides an algorithm for the
contested portion of the function. See Finisar Corp. v. DirecTV GroupInc., 523 F.3d 1323, 1340
(Fed. Circ. 2008) (“This court permits a patentee to express that algorithm in any understandable
terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that
provides sufficient structure.”) (internal citation omitted); Chicago Board Options Exchange, Inc.
v. International Securities Exchange, LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014) (“We must also
remember that ‘a challenge to a claim containing a means-plus-function limitation as lacking
structural support requires a finding, by clear and convincing evidence, that the specification lacks
disclosure of structure sufficient to be understood by one skilled in the art as being adequate to
perform the recited function.’") (citation omitted)).
Second, Huawei contends that no algorithm is provided regarding how to make a
determination that an ACK or NACK state exists. Huawei is seeking, however, specific algorithms
that go beyond the claimed function of this term. The function in question is “configuring…in
response to a determination that the [ACK/NACK] is [not] to be included.” The required algorithm
16

relates to how to configure the message in response to a determination. 4 Again, the specification
clearly indicates an algorithm for how to configure the message in response to a determination.
Specifically, as shown in the specification, there are various techniques to use various constellation
mapping techniques to further include with the SR information additional ACK / NACK
information in the constellation map, be it a one bit map or a two bit map. ’082 Patent Figs. 3, 4,
5, 6, 8 and 12, 7:39- 8:59, 9:52-61.
The Court construes “message generation means for generating a message
comprising a scheduling request,” “message generation means is further for: configuring the
message in a first configuration in response to a determination that the acknowledgement is
not to be included, and configuring the message in a second configuration comprising the
acknowledgement in response to a determination that the acknowledgement is to be included,
where the first configuration is distinct from the second configuration,” and “the message
generation means is further for configuring the message in a third configuration comprising
the negative-acknowledgement in response to a determination that the negativeacknowledgement is to be included” to mean:
Function:
generating a message comprising a scheduling request
and
configuring the message in a first configuration in response to a determination that the
acknowledgement is not to be included
and

4

The parties provide separate arguments in the next term with regard to the “determining means.”

17

configuring the message in a second configuration comprising the acknowledgement in
response to a determination that the acknowledgement is to be included, where the first
configuration is distinct from the second configuration
and
configuring the message in a third configuration comprising the negative-acknowledgement
in response to a determination that the negative-acknowledgement is to be included
Structure:
message generation means (10F) such as processor, memory, and/or associated software for
mapping the constellation points shown in Figs. 3, 4, 5, 6, or 12, or the constellation points
described in the corresponding text, e.g., 7:39- 8:59, 9:52-61, and equivalents thereof.

2. “first determining means for determining whether an acknowledgement is to be
transmitted in a same sub-frame as the message”
“second determining means for determining whether a negative-acknowledgement
is to be transmitted in the same sub-frame as the message” (’082 Patent Claim 10)
Nokia’s Proposed Construction
Function: (Agreed)
determining whether an acknowledgement
[negative-acknowledgement] is to be
transmitted in a same sub-frame as the
message

Huawei’s Proposed Construction
Function: (Agreed)
determining whether an acknowledgement
[negative-acknowledgement] is to be
transmitted in a same sub-frame as the
message

Structure:
first [second] determining means (10E) such
as processor, memory, and/or associated
software for performing the algorithm shown
in Fig. 8 and corresponding text, e.g., 9:5261, and equivalents thereof

Structure:
The specification fails to set forth any
algorithm for the function claimed in this
software limitation. Claim is indefinite.

Huawei contends that the claim is indefinite for not disclosing an algorithm for the
structure.
18

Positions of the Parties
Nokia contends that the function of the “first/second determining means” is to determine
whether the ACK or NACK is to be transmitted with SR. Nokia contends that the algorithm is
disclosed in the passage:
With SR=0 (e.g., in the case of negative SR transmission), the UE 10 transmits the
ACK/NACK information using the ACK/NACK resources, with SR=1 (e.g., in the
case of positive SR transmission), the UE 10 transmits the ACK/NACK
information using the SR resources.
’082 Patent 7:39-43. Nokia contends that this describes that when SR and ACK need to be
transmitted simultaneously, ACK is transmitted using SR resources. Similarly, when SR and
NACK need to be transmitted simultaneously, NACK is transmitted using SR resources. (Dkt. No.
68 at 9.) Nokia contends that this corresponds to Blocks 8A and 8B of the flowchart of Figure 8.
(Id.)

Nokia contends that this teaches an algorithm in which the (1) “first determining means”
determines whether an ACK is to be transmitted in the same sub-frame as the message by
determining whether there is also a SR to be sent and (2) the “second determining means”
determines whether a NACK is to be transmitted in the same sub-frame as the message by
determining whether there is also a SR to be sent. (Dkt. No. 68 at 9-10.)
19

Finally, Nokia contends that “determining whether an ACK or NACK is to be transmitted
in the same sub-frame as the message” is described in the patent in the passages: “the
acknowledgement indicates that a downlink resource allocation grant has succeeded and that each
of at least one corresponding codeword has been detected correctly” (’082 Patent 12:25-29) and
“the negative-acknowledgement indicates that a downlink resource allocation grant has succeeded
and that each of at least one corresponding codeword has not been detected correctly” (id. at 12:2024). (Dkt. No. 68 at 10.)
Huawei contends that Nokia rewrites the claimed functions to be “determining whether the
ACK or NACK is to be transmitted with SR.” (Id.) Huawei contends that the actual claim
language does not speak of the transmission of ACK and NACK in the disjunctive. Instead,
Huawei contends that two separate determining steps are presented. Huawei contends that the
claim language requires determining whether an ACK is to be transmitted in the same sub-frame
as the message and then further determining whether a NACK is to be transmitted in the same subframe as the message. (Dkt. No. 71 at 9-10.) Huawei contends that Nokia’s modified function
reads out the language “in the same sub-frame as the message” that is part of the agreed functions
and adds the language “to be transmitted with SR.” (Id. at 10.)
As to the specification passage cited by Nokia (7:39-42), Huawei contends that the passage
does not even reference “determining” and provides no guidance as to determining whether an
ACK or NACK is transmitted. (Id.) Rather, Huawei contends that the passage merely treats, as a
given fact, that an ACK or NACK is to be transmitted. Huawei contends that no teaching is
provided regarding “determining whether” an ACK or NACK is to be transmitted. Huawei
contends that same argument applies to the Figure 8 flow chart as the figure presupposes that it
has been determined whether ACK/NACK should be transmitted. (Id. at 11.)
20

Huawei contends that Nokia characterizes the function as “determining whether an ACK
or NACK is to be transmitted in the same sub-frame as the message.” Huawei contends, however,
that this is not the function recited in the claim. (Id.) Huawei also contends that Nokia does not
refer to any algorithms that perform that function. Huawei contends that, in any event, Nokia still
does not disclose an algorithm for determining whether acknowledgements or negative
acknowledgements are transmitted in the same sub-frame.
In reply, Nokia contends that the ACK and NACK are mutually exclusive. Nokia contends
that this is confirmed by the algorithm disclosed in the patent specification for the function of
“determining whether [an ACK or NACK] is to be transmitted:” “the acknowledgement indicates
that a downlink resource allocation grant has succeeded and that each of at least one corresponding
codeword has been detected correctly” (’082 Patent12:25-29), while “the negativeacknowledgement indicates that a downlink resource allocation grant has succeeded and that each
of at least one corresponding codeword has not been detected correctly” (’082 Patent 12:20-24).
Nokia contends that using this description of the algorithm, a person of ordinary skill in the art
would be able to implement the means for determining whether an ACK or NACK is to be
transmitted. (Dkt. No. 72 at 3 (citing Dkt. No. 72-1 (Thompson Decl.) at ¶ 30 (noting that the
mechanism for transmitting ACK and NACK was well known)).)
As to Huawei’s assertion that Nokia has read out “is to be transmitted in the same subframe as the message” (Dkt. No. 71 at 10), Nokia contends that as Nokia made clear, Figure 8 and
the accompanying text discloses the algorithm for determining whether (i) an ACK is to be
transmitted in the same sub-frame as the message, i.e., SR + ACK and (ii) a NACK is to be
transmitted in the same sub-frame as the message, i.e., SR + NACK. (Dkt. No. 72 at 4.) Nokia
further states that Figure 8 and the passage clearly show that the ACK/NACK is to be transmitted
21

with the SR when SR=1. (Id. (citing ’082 Patent 7:39-43 and Dkt. No. 72-1 (Thompson Decl.) at
¶ 32).)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 25-26.)
Analysis
The specification provides algorithm support for the claimed function. With regard to
determining whether to transmit ACKs and NACKs, the specification provides a discussion as to
how to determine an ACK or NACK condition:
In a further exemplary embodiment of any one of the apparatus (10) above, the
acknowledgement indicates that a downlink resource allocation grant has
succeeded and that each of at least one corresponding codeword has been detected
correctly
In an additional exemplary embodiment of any one of the apparatus (10) above,
where there are at least two corresponding codewords, the message generating
module is also configured to configure the message in a fourth configuration and/or
a fifth configuration in response to at least one corresponding codeword having
been detected correctly and at least one corresponding codeword having not been
detected correctly.
’082 Patent 12:25-37. Further, the specification provides an algorithm as to determining whether
to provide the ACK and NACK in the same sub-frame as the message. Specifically, the
specification teaches that when SR=1 the ACK/NACK information is included in the SR resource.
’082 Patent 7:41-43, 9:54-55, Figure 8.
At the oral hearing, Nokia agreed to the Court’s proposed construction which is adopted
below. (Dkt. No. 84 at 25.)
The Court construes “first determining means for determining whether an
acknowledgement is to be transmitted in a same sub-frame as the message” to mean:

22

Function:
determining whether an acknowledgement is to be transmitted in a same sub-frame as the
message
Structure:
first determining means (10E) such as processor, memory, and/or associated software for
performing the algorithm shown in 7:39-43, 9:52-55, 12:20-29 and Fig. 8, and equivalents
thereof

The Court construes “second determining means for determining whether a negativeacknowledgement is to be transmitted in the same sub-frame as the message” to mean:
Function:
determining whether a negative-acknowledgement is to be transmitted in a same sub-frame
as the message
Structure:
second determining means (10E) such as processor, memory, and/or associated software for
performing the algorithm shown in 7:39-43, 9:52-55, 12:20-29 and Fig. 8, and equivalents
thereof

3. “configuration” (’082 Patent Claims 1-10, 12-14, 17)
Nokia’s Proposed Construction
Plain and ordinary meaning, such as
“constellation point.”

Huawei’s Proposed Construction
Plain meaning

The parties dispute whether “configuration” should be construed as “constellation point.”
At the oral hearing, the Court proposed a construction of “plain and ordinary meaning.” The Court
23

further noted that this construction may include constellation points but is not limited to
constellation points. The parties agreed to the Court’s proposal. (Dkt. No. 84 at 26.)
The Court construes the term “configuration” to have its plain and ordinary meaning.

4. “a downlink resource allocation grant has succeeded” (’082 Patent Claims 1, 2, 11,
15, 16, 18)
Nokia’s Proposed Construction
Plain and ordinary meaning

Huawei’s Proposed Construction
“a message granting a downlink resource
allocation was successfully received”

Nokia contends that Huawei’s construction excludes the situation in which a NACK signal
is sent in response to a resource grant allocation.
Positions of the Parties
Nokia expresses a concern that Huawei’s construction will confuse the jury with regard to
what “successfully received” means. (Dkt. No. 72 at 4.) Nokia contends that, as provided in the
specification, either ACK or NACK indicates that a resource allocation grant has succeeded, and
that it is the DTX signal that indicates a grant has not succeeded. (See Dkt. No. 68 at 12.)
Specifically, Nokia points to:
[T]he negative-acknowledgement indicates that a downlink resource allocation
grant has succeeded and that each of at least one corresponding codeword has not
been detected correctly. [T]he acknowledgement indicates that a downlink resource
allocation grant has succeeded and that each of at least one corresponding codeword
has been detected correctly.
’082 Patent 12:20-30. Nokia contends that, thus, the term “downlink resource allocation grant has
succeeded” describes any situation in which the UE would send an ACK or NACK: ACK being
sent when the downlink resource allocation grant has succeeded, and the corresponding codewords
have been detected correctly and NACK being sent when the downlink resource allocation grant
24

has succeeded, and the corresponding codewords have not been detected correctly. (Dkt. No. 68
at 12-13.)
Nokia objects to Huawei’s construction as excluding NACKs. Nokia contends that in a
NACK, while the codewords are not detected correctly, the downlink resource allocation still
succeeds, but the reception of the downlink resource allocation was not entirely successful. Nokia
contends that because Huawei’s construction excludes the preferred NACK embodiment, it must
be rejected. (Id. at 13.)
Huawei contends that its construction clarifies for a jury that (1) the technical term
“downlink allocation grant” is a type of message—one granting a downlink resource allocation—
and (2) for such a grant to “succeed” means that the message containing the grant was successfully
received. Huawei contends that the parties do not appear to materially disagree on either point.
(Dkt. No. 71 at 13.)
Huawei points the following passage:
The DTX situation relates to a failure of a DL resource allocation grant transmitted
to a particular UE. When the DL resource allocation fails the ACK/NACK(s)
associated with the PDCCH/PDSCH are missing from the given UL sub-frame (this
is DTX from the ACK/NACK point of view), since the UE has for whatever reason
missed the DL allocation and therefore has no reason to transmit or include an
ACK/NACK in the UL sub-frame.
’082 patent 3:19-26. Huawei contends that the concepts which would be evident to a person of
ordinary skill in the art (but not to a lay jury) from this brief passage are:
1. A downlink resource allocation grant (which the patent also refers to as a
“downlink allocation grant”) is something that is “transmitted” to a UE—in other
words, it is a message.
2. A downlink resource allocation grant does exactly what it says: grants a downlink
resource allocation. Such a grant informs the UE of an upcoming portion of the
shared downlink channel that will contain data directed to the UE. If the UE
successfully receives the grant, the UE can then attempt to receive the downlink
25

channel on the resources specified in the grant, try to decode the signals it receives,
and send an ACK or NACK as appropriate.
3. A downlink resource allocation grant message can “fail”—i.e., not be fully
received by the UE. In that event, the UE cannot listen to the shared downlink
channel and try to decode the data directed to the UE because it does not know
when to do so. Conversely, for the grant message to “succeed” means that the grant
message was fully received and thus the UE can follow the instructions in the grant
message.
(Dkt. No. 71 at 14 (citing Dkt. No. 71-1 (Laneman Decl.) (citations omitted)).)
Huawei contends that its construction simplifies the concepts above to more readily show
a jury that a downlink allocation grant is a message, as can be seen: a message granting a downlink
resource allocation (i.e., “a downlink resource allocation grant”) was successfully received (i.e.,
“has succeeded”). (Dkt. No. 71 at 14.) Huawei contends that Nokia “ultimately appears to agree
with the above analysis, using slightly different language” and thus, the basis for a true dispute is
unclear. (Id. at 15.)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 26.)
Analysis
The specification makes clear that as utilized in the ’082 Patent, a resource allocation grant
has succeeded if either an ACK can be sent or sufficient information has been received to send a
NACK:
[T]he negative-acknowledgement indicates that a downlink resource allocation
grant has succeeded and that each of at least one corresponding codeword has not
been detected correctly. [T]he acknowledgement indicates that a downlink resource
allocation grant has succeeded and that each of at least one corresponding codeword
has been detected correctly.
’082 Patent 12:20-30. A resource allocation grant “fails” in the DTX circumstance:

26

The DTX situation relates to a failure of a DL resource allocation grant transmitted
to a particular UE. When the DL resource allocation fails the ACK/NACK(s)
associated with the PDCCH/PDSCH are missing from the given UL sub-frame (this
is DTX from the ACK/NACK point of view), since the UE has for whatever reason
missed the DL allocation and therefore has no reason to transmit or include an
ACK/NACK in the UL subframe.
’082 patent 3:19-26. This concept (that a resource allocation grant has succeeded if either an ACK
can be sent or sufficient information has been received to send a NACK) is clear in the intrinsic
record of the patent. Huawei’s construction runs the risk of creating jury confusion by implying
that a message must be entirely detected correctly (i.e., only the ACK state) to have “succeeded.”
In fact, Huawei implies as much in its brief by stating that “resource allocation grant message can
‘fail’—i.e., not be fully received by the UE.” (Dkt. No. 71 at 14 (emphasis added).) Such a
statement contradicts the specification though, as a message not fully received may trigger a
NACK, which, in the patent, is still deemed as “succeeded.” The risk of jury confusion is further
illustrated by Huawei’s internal contradiction when Huawei clearly states that “[i]n both the ACK
and NACK cases, the downlink resource allocation grant has succeeded….” (Dkt. No. 71 at 15.)
The specification is clear that either ACK or NACK indicates that a resource allocation
grant has succeeded. Further, the claims themselves make this clear. For example, in one use of
the term, the full context is “where the third indication indicates that a downlink resource allocation
grant has succeeded and that each of the at least one corresponding codeword has not been detected
correctly.” ’082 Patent 16:12-16 (claim 1). Such language conforms to the NACK condition
described at ’082 Patent 12:20-24. Thus, a grant has succeeded even in NACK situations. The
meaning of the term is clear from the specification and claims, and Huawei’s construction runs the
risk of clouding that clear meaning.

27

The Court construes the term “a downlink resource allocation grant has succeeded”
to have its plain and ordinary meaning.

5. “determining whether a third indication is to be transmitted in a sub-frame with an
indication of a scheduling request, where the third indication indicates that a
downlink resource allocation grant has succeeded and that each of the at least one
corresponding codeword has not been detected correctly” (’082 Patent Claim 1)
Nokia’s Proposed Construction
Plain and ordinary meaning

Huawei’s Proposed Construction
Indefinite

Huawei contends that the claim is indefinite due to multiple recitations of “a [first]
indication of a scheduling request,” “a sub-frame,” and “a downlink resource allocation grant.”
Positions of the Parties
Nokia contends that the fact that the claim uses the indefinite article “a” twice when
introducing “a scheduling request,” “a sub-frame,” and “a downlink resource allocation grant,” in
different contexts, does not make the claim indefinite. Nokia contends that the terms are used in
different, distinct circumstances, particularly in light of the preferred embodiments. (Dkt. No. 68
at 14.) Nokia contends that in one circumstance, where a downlink resource allocation grant has
succeeded and the codewords have been detected correctly, an ACK should be sent. In the other
circumstance, where a downlink resource allocation grant has succeeded and the codewords have
not been detected correctly, a NACK should be sent. Nokia contends that there is nothing wrong
with the patentee introducing “a downlink resource allocation” and “a sub-frame” in the portions
of the claim corresponding to each circumstance. (Id.)
Nokia contends that it is understood that the UE will send an ACK or NACK in a subframe in response to each downlink resource allocation grant (along with its corresponding
codeword(s)). Nokia contends that as disclosed, the second indication may be mapped to an ACK
28

and the third indication may be mapped to a NACK (Id. (citing ’082 Patent 13:50-62, Abstract).)
Nokia contends a person of ordinary skill in the art would understand that “determining whether a
third indication [e.g., a NACK] is to be transmitted” is in response to the same downlink resource
allocation grant for which it was “determine[d] whether a second indication [e.g., an ACK] is to
be transmitted.” Nokia contends that a person of ordinary skill would understand that an ACK or
NACK is sent in a sub-frame in response to a downlink allocation grant and corresponding
codewords as claim 1 states, “sending the message, via a wireless transmitter, in the sub-frame.”
(Id.)
Nokia contends that it is clear in the specification that an ACK or a NACK is sent in
response to a downlink resource allocation grant in the sub-frame reserved for ACK/NACK:
“acknowledgment indicates that a downlink resource allocation grant has succeeded and that each
of at least one corresponding codeword has been detected correctly,” while a “negativeacknowledgement indicates that a downlink resource allocation grant has succeeded and that each
of at least one corresponding codeword has not been detected properly” ’082 Patent 12:20-30.
Huawei contends that the claim is indefinite, because a person of ordinary skill cannot
determine “with reasonable certainty,” whether “a downlink resource allocation grant,” “a subframe,” and “an indication of a scheduling request,” as they appear in this term, refers to a new
downlink resource allocation, a new sub-frame, or a new indication of a new scheduling request,
or ones that are recited earlier in the claim. (Dkt. No. 71 at 15-16.) Huawei points to the claim:
1. A method comprising:
generating a message comprising a first indication of a scheduling request,
determining whether a second indication is to be transmitted in a sub-frame with
the first indication, where the second indication indicates that a downlink
resource allocation grant has succeeded and that each of at least one
corresponding codeword has been detected correctly;
29

in response to a determination that the second indication is not to be included, the
message is configured in a first configuration, and
in response to a determination that the second indication is to be included, the
message further comprises the second indication and the message is
configured in a second configuration,
where the first configuration is distinct from the second configuration; and
sending the message, via a wireless transmitter, in the sub-frame,
the method further comprising:
determining whether a third indication is to be transmitted in a sub-frame with an
indication of a scheduling request, where the third indication indicates that
a downlink resource allocation grant has succeeded and that each of the at
least one corresponding codeword has not been detected correctly; and
in response to a determination that the third indication is to be included, the message
further comprises the third indication and the message is configured in a
third configuration.
’082 patent at claim 1 (emphasis added).
Huawei contends that each term may be construed in multiple manners. For example,
Huawei states that the two recitations of “a downlink resource allocation grant” may be considered,
on one hand, to be two different grants (i.e., “second” should have been used before the second
grant), or alternatively considered to be the same grant (i.e., “the” should have been used before
the second grant.). Huawei contends the scope of the claim is different under each interpretation.
Huawei contends the same holds true for “a sub-frame” and “a scheduling request.” Huawei notes
that for “sub-frame” the claim actually recites, in order, “a sub-frame,” “the sub-frame,” and “a
sub-frame.” (Dkt. No. 71 at 16-17.)
Huawei contends that Nokia states that there are “different, clearly distinct circumstances”
leading to the sending of an ACK or the sending of a NACK, and therefore there is “nothing wrong
with the patentee introducing ‘a downlink resource allocation’ and ‘a sub-frame’ in the portions of
the claim corresponding to each circumstance.” (Dkt. No. 71 at 18 (quoting Dkt. No. 68 at 14).)
Huawei contends that the claim could have been clear if the term had been drafted as “determining
whether a third indication is to be transmitted in the sub-frame with the indication of a scheduling
30

request, where the third indication indicates that the downlink resource allocation grant has
succeeded and that each of the at least one corresponding codeword has not been detected
correctly.” In such case, Huawei contends it would be clear (1) that the downlink resource
allocation grant and corresponding codeword(s) were the same as previously recited and (2) that
the third indication would be transmitted in the same sub-frame with the same scheduling request,
making the third indication and second indication mutually exclusive as Nokia appears to argue.
(Dkt. No. 71 at 18 (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 47-48).) Huawei contends, however,
that as drafted, the third indication either may or may not be mutually exclusive with the second—
there is no way to tell. (Id. (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 48).)
In reply, Nokia contents that the ’082 Patent is directed to implementing “simultaneous
transmission of SR and ACK/NACK.” ’082 Patent 2:55-56. In the context of the claim, Nokia
asserts that these terms are used in clearly distinct circumstances and for determining which
circumstance applies. Specifically, the claims are directed to “determining” whether to send: (i)
SR (first indication), (ii) SR and ACK (second indication), or (iii) SR and NACK (third indication)
(Dkt. No. 72 at 5 (citing ’082 Patent 13:50-62).) Nokia asserts that claim 1 makes clear that the
message is configured according to one of these circumstances and sent “in the sub-frame.” Nokia
contends that a person of ordinary skill in the art would readily understand that the determining
step: (i) is in response to the same downlink resource allocation grant and its corresponding
codeword(s); (ii) relates to the same sub-frame; and (iii) determines whether to send the “indication
of a scheduling request.” (Id. (citing Dkt. No. 72-1 (Thompson Decl.) at ¶¶ 40, 43).) Nokia
contends that Huawei’s expert, Dr. Laneman, readily understood the claim to be written that way.
(Id. (citing Dkt. No. 71-1 (Laneman Decl.) at ¶ 46).)

31

Nokia contends that Huawei’s alternative interpretation—determining that the NACK is in
response to a different downlink resource allocation grant and sent with a different SR indication
in a different sub-frame—is unreasonable when the claim is read in light of the specification and
basic principles of signaling. (Id.) Nokia states that the parties agree that one of the purposes of
the invention is to be able to send SR and NACK together. (Id. at 5-6 (citing Defendant’s
Technology Tutorial at 38-41).) Nokia contends that Huawei’s alternative interpretation would not
allow that purpose to be achieved. (Id. at 6 (citing Dkt. No. 72-1 (Thompson Decl.) at ¶ 45).) Nokia
also cites to Advanced Aerospace Techs., Inc. v. United States, 124 Fed. Cl. 282, 297 (2015)
(finding a claim term definite where a person of ordinary skill in the art could be reasonably certain
about the meaning of a claim term “[i]n light of the purpose of the invention” even if there are
multiple interpretations). Nokia contends that a person of skill in the art reading the claim language
would understand with reasonable certainty that “determining whether a third indication is to be
transmitted” refers to “downlink resource allocation grant,” the “sub-frame,” and the “indication
of scheduling request” that was previously referenced.
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 26.)
Analysis
Claims must be read in context of the specification. Thus, each claim term is construed
according to its ordinary and accustomed meaning as understood by one of ordinary skill in the art
at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312–13. The
specification clearly describes a situation of (i) SR (first indication), (ii) SR and ACK (second
indication), or (iii) SR and NACK (third indication). See ’082 Patent 7:21-64, 9:52-61, 11:15-20,
12:20-30, 13:40-62, Figures 3, 4, 8. Further, ACK occurs when “at least one corresponding
32

codeword has been detected correctly” and conversely NACK occurs when “at least one
corresponding codeword has not been detected correctly.” ’082 Patent 12:20-29 (emphasis added).
These are the two choices when the “a downlink resource allocation grant has succeeded.” Id. The
claim has two determining steps. Both determining steps relate to when “a downlink resource
allocation grant has succeeded.” However, the first step relates to when each codeword “has been
detected correctly” and the second step relates to when each codeword “has not been detected
correctly.” It is clear from the context of the specification and the claim language that the first
determining step and the second determining step relate to the same resource allocation grant and
sub-frames, but the first step relates to when the condition of the codeword detection is such that
each “has been” detected correctly and the second step relates to when each “has not been” detected
correctly. Thus, the steps each relate to one of the alternative conditions of the codeword detection
that may exist. In context of the specification, Nokia presents the better argument, and the claims
are reasonably certain under the Nautilus test.
In addition to the intrinsic record, the extrinsic evidence of the expert declarations also
supports Nokia’s position. Though the experts disagree, the Court finds Nokia’s extrinsic evidence
more persuasive. Huawei’s expert reads the claims in a vacuum without tying his positions to the
intrinsic record. (Dkt. No. 71-1 (Laneman Decl.) at ¶¶ 42-48.) Nokia’s expert ties the interpretation
of the claims to the specification. (Dkt. No. 72-1 (Thompson Decl.) at ¶¶ 40-45.) The Court finds
Nokia’s expert evidence to be more persuasive as to the understanding that one skilled in the art
would have of the claims in light of the specification and finds that this evidence provides further
support for the Court’s construction. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831
(2015).

33

The Court construes the term “determining whether a third indication is to be
transmitted in a sub-frame with an indication of a scheduling request, where the third
indication indicates that a downlink resource allocation grant has succeeded and that each
of the at least one corresponding codeword has not been detected correctly” to have its plain
and ordinary meaning.

6. “means for determining that at least one downlink allocation grant for the
apparatus of the scheduling information was not received” (’035 Patent Claim 23)
Nokia’s Proposed Construction
Function: determining that at least one
downlink allocation grant for the apparatus of
the scheduling information was not received

Huawei’s Proposed Construction
Function: determining that at least one
downlink allocation grant for the apparatus of
the scheduling information was not received

Structure: processor, memory, and/or
associated software for performing the
algorithm shown in Figs. 3 (specifically 3C)
and 6 (specifically 6B and 6C) and discussed
in the specification, e.g., 9:53-10:21, and
equivalents thereof

Structure: The specification fails to set forth
any algorithm for the function claimed in this
software limitation. Claim is indefinite

The parties dispute whether an algorithm for the means structure is disclosed.
Positions of the Parties
Nokia contends that Figure 3 discloses a three step algorithm for the term:

34

’035 Patent Figure 3. Nokia further points to the description of Figure 3:
…as illustrated in FIG. 3, there is provided a method, apparatus, and computer
program embodied on a computer readable memory and executable by a digital
processor, of the user equipment for example, comprising receiving a signal from
a network device (3A), in response to receiving the signal, decoding the signal to
obtain a downlink allocation grant (3B), and responding to the signal, where the
response may comprise a DTX symbol in a location reserved for ACK/NACK to
communicate to the network device that the downlink allocation grant was not
received (3C).
’035 Patent 8:50-60. Nokia also points to the passage:
…the UE may only encode the HARQ 2-states (ACK or NACK) feedback from
those scheduled DL subframes. This is achieved by comparing the downlink
assignment index (DAI) in the UL grant to the DAI (as a pure counter) in DL grant,
by which the UE can identify any missed DL assignment and its position among all
transmitted DL assignments. If the UE finds some of the DL assignments are
missed, the UE will select a "NACK" state to report for it, and the DTX-bit will
overall look after the explicit DTX detection for all scheduled DL subframes.
’035 Patent 10:7-16. Nokia contends that Huawei ignores the explicit teaching of how to
determine, e.g., comparing downlink assignment indexes (DAIs). (Dkt. No. 72 at 6.)
Huawei contends that none of the three steps of Figure 3 disclose the “determining”
function. Huawei contends that in the figure the first step receives a signal, the second step decodes
35

the signal to obtain a downlink allocation grant, and the third step responds to the signal “to
communicate to the network device that the downlink allocation grant was not received.” Huawei
contends that absent is how the UE determined that the downlink allocation grant was not received.
(Dkt. No. 71 at 19-20. (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 51).)
As to the passage at 10:7-16, Huawei contends this is at most a technique, not an algorithm.
Huawei contends that the patent does not disclose details that would be required for an actual
algorithm such as: (1) the relationship between the two downlink assignment indexes (DAIs); (2)
how differences between the two might be interpreted; and (3) how simply comparing two
numbers could indicate both the number and position of any missed downlink assignment. (Dkt.
No. 71 at 20 (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 52).) Huawei also contends that the passage
is unclear because (1) it refers to “the DAI in the UL grant” and “the DAI in the DL grant,” but
there is no temporal ordering of these grants, i.e., which one comes first, or how the alleged
algorithm behaves differently in the two cases and (2) the phrase “(as a pure counter)” tied to “the
DAI in the DL grant” suggests that “the DAI in the UL grant” is not a pure counter, but the text
does not provide specification of what it is. (Id. (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 53).)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 26-27.)
Analysis
Huawei is correct that Figure 3 (and 6) merely assumes DTX has been determined. These
figures do not provide any indication as to how to determine scheduling information was not
received (DTX), but rather just assume such determination is made. See ’035 Patent Figure 3, 6
8:49-60, 10:36-55. However, Nokia also points to the specification at 9:53-10:21. Specifically, the
specification describes comparing a downlink assignment index (DAI) in the uplink grant to the
36

DAI (as a pure counter) in the downlink grant, and then the UE identifying any missed DL
assignment. Id. at 10:6-16. Huawei contends that this is merely a “technique.” The Court finds
otherwise. The use of a DAI to determine if a downlink allocation grant was not received by
comparing the number of downlink allocation grants sent with the number received is an algorithm
provided in the specification for making the determination.
At the oral hearing, Nokia agreed to the Court’s proposed construction which is adopted
below. (Dkt. No. 84 at 26-27.)
The Court construes “means for determining that at least one downlink allocation
grant for the apparatus of the scheduling information was not received” to mean:
Function: determining that at least one downlink allocation grant for the apparatus of the
scheduling information was not received
Structure: processor, memory, and/or associated software for performing an algorithm
using a downlink assignment index (DAI) as discussed in the specification at 9:53-10:21, and
equivalents thereof.

7. “means for sending a reply to the received scheduling information that comprises an
indication of discontinuous transmission in response to the determining” (’035
Patent Claim 23)
Nokia’s Proposed Construction
Function: sending a reply to the received
scheduling information that comprises an
indication of discontinuous transmission in
response to the determining

Huawei’s Proposed Construction
Function: sending a reply to the received
scheduling information that comprises an
indication of discontinuous transmission in
response to the determining

Structure: a transmitter, transceiver,
processor, memory, and/or associated
software for performing the algorithm shown
in Figs. 3 (specifically 3C) and 6 (specifically
6D), and discussed in the specification, e.g.,

Structure: The specification fails to set forth
any algorithm for the function claimed in this
software limitation. Claim is indefinite.

37

6:57-7:57, 9:43-10:55, and equivalents
thereof
The parties dispute whether an algorithm for the means structure is disclosed.
Positions of the Parties
Nokia contends that Figure 3 (specifically 3C), Figure 6 (specifically 6D), and the
corresponding text in the specification disclose an algorithm. Nokia points to Figure 3 step 3C:

’035 Patent Figure 3. Nokia contends that the specification at 6:57-7:57 and Figure 2 provides
algorithms for how to implement the DTX symbol in a location reserved for an ACK/NACK. (Dkt.
No. 68 at 18.) Nokia also states that the specification discloses, “when the DTX is transmitted,
every other symbol would use the constellation points reserved for ACK, while the rest of the
symbols would use constellation points reserved for NACK,” which can be referred to as a
“Hadamard-spreading code selection.” ’035 Patent 6:65-7:1, 7:5-7. Nokia notes that the
specification further gives an example of the implementation of the Hadamard-spreading code
selection. (Id. at 7:9-15).
38

Nokia also contends that the patent discloses an embodiment with reference to Figure 6 in
which the UE transmits a single DTX bit. Nokia contends that Figure 6 is described as showing
that “the UE transmits a discontinuous transmission DTX indication with the UE’s reply to the
scheduling information” (’035 Patent 10:40-42) and Block 6C of Figure 6 states “DTX
INDICATION = 1BIT.” Nokia contends that additional details of this algorithm are disclosed at
9:43-10:55. (Dkt. No. 68 at 19.) Nokia further points to the disclosure that “Hadamard-spreading
code selection is used to send the reply” ’035 Patent 6:65-7:1; (Dkt. No. 72-2 (Camp Decl.) at ¶
25.) Nokia also points to an embodiment where the UE transmits a single DTX bit and states Block
6C shows that “the UE transmits a discontinuous transmission DTX indication with the UE’s reply
to the scheduling information.” (Dkt. No. 72 at 7 (citing ’035 Patent 9:43-10:55, Fig. 6).)
Huawei contends that the function does not simply require sending something—it requires
sending something in response to the determining (i.e., the previously-recited “means for
determining that at least one downlink allocation grant for the apparatus of the scheduling
information was not received”). (Dkt. No. 71 at 22.) Huawei contends that Nokia’s alleged
“algorithms” do not disclose sending in response to the previously-recited determining. Huawei
contends that to the extent any of Nokia’s “algorithms” in the specification simply say or imply
that something is sent in response to a determining step, that cannot be an algorithm because it
would simply be restating the function. (Id. (citing various Federal Circuit cases).)
Huawei contends that Figure 3 does not disclose an alleged algorithm for the claimed
function: “sending a reply to the received scheduling information that comprises an indication of
discontinuous transmission in response to the determining.” Specifically, Huawei contends that
the figure does not describe how sending a reply in response to a determination is accomplished.
Huawei contends that the figure at most implies a reply will be sent, where Block 3C states
39

“responding to the signal….” and “the response may comprise a DTX symbol in a location
reserved for ACK/NACK…” ’035 Patent Figure 3.
As to Figure 2 and the corresponding text at cols. 6:57-7:57, Huawei contends this
disclosure provides structure for transmitting a DTX symbol in a location reserved for an
ACK/NACK, as the specification expressly states:
Fig. 2 illustrates an exemplary structure for transmitting an explicit DTX with the
1 or 2 bit ACK/NACK structure.
’035 patent at 7:34-35. Huawei contends that while a DTX symbol (an indication of discontinuous
transmission) may be a component of the agreed function, that does not encompass the complete
function, which is: “sending a reply to the received scheduling information that comprises an
indication of discontinuous transmission in response to the determining.” Huawei contends that
Fig. 2 and the corresponding text do not disclose anything about the steps for sending a reply to
the received scheduling information, nor how that is done in response to the determining. (Dkt.
No. 71 at 23.)
Huawei contends that like Figure 3, Figure 6 merely discloses that the function occurs at
Block 6D, and not how it is accomplished:

Huawei contends that the specification simply says “at block 6D the reply is a multi-ACK/NACK
message for grants in the PDDCH….” ’035 patent at 10:48-49. Huawei contends that does not
disclose an algorithm. Huawei contends that though Nokia states that “additional details of this
algorithm” are shown at 9:43-10:55, Nokia does not explain how this detail relates to the function

40

as the referenced passage says nothing about algorithms for performing a sending of a reply, let
alone sending a reply that is sent “in response to the determining.” (Dkt. No. 71 at 24.)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 27.)
Analysis
Huawei primarily contends that an algorithm for how the “means for sending” operates “in
response” to the determining step is not disclosed. The Court finds otherwise.
The claimed function, in its entirety, is “sending a reply to the received scheduling
information that comprises an indication of discontinuous transmission in response to the
determining.” The parties do not dispute that the specification discloses providing a DTX symbol
based on the detection of a discontinuous transmission. This functionality is described in detail
throughout the specification, such as for example, Figures 2, 3, 6, and associated text. In a first
“aspect” (5:1-3, 5:34-37, 6:49-8:60) corresponding to Figure 3, to communicate that a downlink
grant was not received, a DTX symbol may be placed in a location reserved for ACK/NACK. ’035
Patent Figure 3, 8:49-60. As to a particular way to implement this, the specification discloses the
use of constellation points and a “Hadamard-spreading code selection” technique. Id. at 6:57-7:57.
A second “aspect” (5:11-14, 5:37-40, 9:5-10:55) for sending the reply is disclosed with reference
to an embodiment in the flow chart of Figure 6. Id. at 9:43-10:55, Figures 5A-5C, 6. In this
technique, the UE transmits “a single DTX bit in the multi-bits ACK/NACK message.” Id. at 9:4345. Figures 5A-5C show embodiments of how such a DTX bit might be implemented. Id. at 10:2223, Figures 5A-5C.
Huawei contends that the specification does not disclose how the sending means
“responds” to the determination step. The Court disagrees. Each of the first and second “aspects”
41

discussed above provides a variety of alternative responses depending upon whether the
scheduling information was received or not. See id. at Figures 2A-2B, 3, 5A-5C, 6, 6:45-7:57,
8:49-60, 9:5-10:55. Thus, there is ample disclosure as to how the means for sending responds to
the determination.
At the oral hearing, Nokia agreed to the Court’s proposed construction which is adopted
below. (Dkt. No. 84 at 27.)
The Court construes “means for sending a reply to the received scheduling
information that comprises an indication of discontinuous transmission in response to the
determining” to mean:
Function: sending a reply to the received scheduling information that comprises an
indication of discontinuous transmission in response to the determining
Structure: a transmitter, transceiver, processor, memory, and/or associated software for
performing one of the algorithms shown in (1) Figure 3 block 3C as discussed and shown in
Figures 2A-2B, 6:45-7:57, and 8:49-60, or (2) Figure 6 block 6D as discussed and shown in
Figures 5A-5C and 9:5-10:55, and equivalents thereof

8. “scheduling information” (’035 Patent Claims 1, 3-4, 9, 12, 14, 19, 22-24, 26, 28-31,
33-35)
Nokia’s Proposed Construction
Plain and ordinary meaning

Huawei’s Proposed Construction
“a single signal containing one or more
downlink allocation grants”

The parties dispute whether “scheduling information” has to be “a single signal.” At the
oral hearing, Huawei changed its arguments and indicated that rather than a “single” signal,

42

Huawei sought a construction of “a message, signal or unit of information.” (Dkt. No. 84 at 2728.)
Positions of the Parties
Nokia contends that nothing in the specification of the ’035 Patent requires that the
scheduling information be a “single signal.” Nokia contends that the portions of the specification
to which Huawei points describe “a signal,” and never use the term “single.” (Dkt. No. 68 at 20.)
Nokia contends that the indefinite article “a” does not have the same meaning as “single.” (Id.
(citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has
repeatedly emphasized that an indefinite article “a” or “an” in patent parlance carries the meaning
of “one or more” in open-ended claims”)).) Nokia contends that even if the specification disclosed
an embodiment with a “single” signal, it is improper to read limitations from a preferred
embodiment into the claims. Nokia contends that the specification places no limitations on the
number of signals that comprises the “scheduling information,” and has no lexicography or has no
disclaimer. (Id. at 21.)
Huawei contends that the unified disclosure of the patent shows that the “scheduling
information” is only a single signal. Huawei summarizes the patent as:
To begin with, the problem the patent states it was setting out to solve was the
inability to send an ACK or NACK if a downlink allocation grant was missed, and
the resultant potential for misinterpretation of silence as an ACK or NACK. ’035
patent at 5:42-49; see also NSN Br. at 4 (“providing DTX detection in situations
where it is insufficient to signal DTX by transmitting nothing (i.e., not transmitting
an ACK or NACK)”) (emphasis in original). The patent therefore presents signaling
DTX as an alternative to signaling ACK or NACK for a given downlink allocation
grant. The patent then proceeds to teach that the claimed steps (receiving scheduling
information; determining at least one downlink allocation grant of the scheduling
information was not received; and sending an indication of discontinuous
transmission in response to the determination) would occur in the same timeframe
as the sending of an ACK or NACK were the downlink allocation grants
successfully received.
43

(Dkt. No. 71 at 25.) Huawei contends that the repeated references to “a signal” and “the signal”
(again, in the plain-English context of the specification) make clear that the process refers only to
a single signal. Huawei points to Figure 3 which includes “receiving a signal” and “in response to
receiving the signal” which Huawei contends corresponds to the “scheduling information.”
Huawei also contends that Figure 6 is the same except uses the actual claim language of
“scheduling information.” Huawei asserts that in Figure 6, it is taught that “[a]t block 6A the UE
receives scheduling information (e.g., receives the PDCCH), and at block 6B, responsive to
receiving the scheduling information at block 6A, the UE transmits a discontinuous transmission
DTX indication with the UE's reply to the scheduling information.” ’035 patent at 10:38-42.
Huawei contends that this passage, thus, directly equates “receiv[ing] scheduling information” to
“receiv[ing] the PDCCH” (Physical Downlink Control Channel), which a person of skill in the art
would understand to mean receiving a single message on that channel, even though that single
message could contain more than one grant. (Dkt. No. 71 at 26 (citing Dkt. No. 71-1 (Laneman
Dec.) at ¶ 62).) Huawei contends that block 6B reinforces the singular nature of the “scheduling
information” by referring to “a reply to the scheduling information.” Huawei contrasts this with
the actual plural disclosure in block 6D of a “multi-ACK/NACK message for grants in the PDCHH
[sic, PDCCH].” Huawei states that even for such a “multi-ACK/NACK message,” the patent says
that the multiple ACK/NACKs are in response to multiple grants in a single PDCCH. ’035 patent
at 10:58-61 (“If the DTX bit is set to 1 (or alternatively 0), this indicates that at least one grant that
was sent to the UE in the single PDCCH/AT being ACK’d/NACK’d has been missed by the UE.”).
Huawei contends that this is all consistent with an understanding that the patent pertains to a single
message on the PDCCH channel. (Id. at 26-27 (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 63).)
44

As to Huawei’s reliance on Figure 3 referencing “a signal,” and assertion that scheduling
information is limited to a single signal, Nokia notes that Figure 3 also recites “a downlink
allocation grant.” Nokia notes, however, that Huawei agrees that scheduling information includes
“one or more downlink allocation grants.” Nokia contends that this demonstrates that Huawei
knows that the article “a” does not imply “only one” and that Huawei’s “single signal” argument
is unsupported by the reference to “a signal.” (Dkt. No. 72 at 8.) Nokia states that similarly, Figure
6 does not limit “scheduling information” to a “single signal” or a “single message.”
Nokia also contends that the ’035 Patent discloses that the scheduling information is
transmitted on the Physical Downlink Control Channel (PDCCH). Nokia states that because it is
a channel, the PDCCH may carry one or more signals. (Id. (citing Dkt. No. 72-2 (Camp Decl.) at
¶ 31).) Nokia asserts that Huawei’s Brief confirms that channels may contain multiple signals,
when it states that “the UE can then attempt to receive the downlink channel on the resources
specified in the grant, [and] try to decode the signals it receives.” (Id. (citing Dkt. No. 71 at 14.)
Nokia contends that, thus, the specification’s reference to a “single PDCCH” describes a single
channel that may include multiple signals. (Id.) Nokia further contends that even if the disclosure
of a “single PDCCH” somehow meant a “single signal,” it is improper to read limitations from a
preferred embodiment into the claims.
At the oral hearing, Huawei acknowledged that the “single” limitation Huawei sought did
not appropriately present the issue needing construction. (Dkt. No. 84 at 31-32.) Huawei stated
that its concern regarding this term is that Nokia would include in “scheduling information”
information that was not related to scheduling information. (Id.) Specifically, Huawei expressed
concern that Nokia would interpret scheduling information as a collection of information that
includes scheduling information and other information. Thus, Huawei expressed concern that
45

when the claim references determining that scheduling information was not received or sending a
reply to the scheduling information, the determination and reply may be with regard to the nonscheduling information under Nokia’s infringement contentions. Huawei, therefore, proposed that
the “scheduling information” be construed as a “message, signal or unit of information.” (Id. at
27-28.) Huawei contended that “scheduling information” is a “bucket” of scheduling information
and that the reply must be to that bucket, not other unrelated information. (Id. at 28-30.)
Analysis
The term in question uses “information,” which does not inherently mandate a “single”
piece of information in an ordinary meaning. Further, Huawei has not pointed to clear language in
the intrinsic record of lexicography, disavowal, or disclaimer mandating that the “scheduling
information” is limited to “a single signal.” See GE Lighting Solutions, 750 F.3d at 1309; Cordis
Corp., 561 F.3d at 1329. Huawei merely alleges that the only embodiment of the specification is
a single signal. Even if Huawei is correct, an 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.”). Moreover, the
intrinsic record that Huawei points to is thin at best. Figure 3 does reference “a signal,” but
nowhere is the singular concept described, let alone emphasized to the point of limiting the broader
term “scheduling information” to just one signal. Further, Figure 6 itself explicitly recites
“scheduling information” as opposed to “a signal” which may thus imply more than a single signal.

46

Even Huawei acknowledges a message could contain more than one grant. (Dkt. No. 71 at 26.)
Multiple grants would imply more than a single signal.
As raised at the oral hearing, the real dispute between the parties appears not to be a
construction issue. Rather the dispute relates to Huawei’s non-infringement factual position in
which Huawei contends that what Nokia will point to for what was not received and to which a
discontinuous transmission reply will be sent, is not information related to scheduling. Nokia does
not dispute that the plain meaning of “scheduling information” is “information about scheduling.”
(Dkt. No. 72-2 (Camp Decl.) at ¶28.) The parties do not appear to be in disagreement as to this
plain meaning. By rejecting Huawei’s “single signal” limitation, 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 construes the term “scheduling information” to have its plain and ordinary
meaning.

9. “persistent allocation” / “semi-persistent allocation” (’035 Patent Claims 5, 15)
Nokia’s Proposed Construction
Plain and ordinary meaning

Huawei’s Proposed Construction
Indefinite

The parties dispute whether guidance must be given as to the degree of “persistent” and
“semi-persistent.”
Positions of the Parties
47

Nokia contends that the specification provides guidance as to “persistent allocation:”
VoIP is an example of an application which can use persistent allocation. In
persistent allocation the UL resources are allocated persistently to the UE and
thereby UL allocation grants are not sent.
’035 Patent 5:28-31. Nokia contends that persistent allocation refers to resources that are allocated
continuously and therefore do not need to be allocated using uplink allocation grants. Nokia
contends that because the term is explained in the specification, it is not indefinite. (Dkt. No. 68 at
22.) Nokia contends that similarly, the term “semi-persistent allocation” would be well understood
from the description of the term “persistent allocation,” as the allocation is not always persistent,
but is only partially so. Nokia contends that this flows from the understanding of the ordinary
meaning of the prefix “semi-.” (Id. at 23.)
Nokia also points to the file history as indicating that the Examiner understood the term by
stating:
Hakkinen does not disclose wherein the at least one downlink allocation comprises
a persistent allocation or a semi-persistent allocation, but does disclose that the
scheme of Hakkinen is implemented or intended to be implemented at least for
HSDPA, a key feature of the 3GPP specifications for UTRAN. The examiner takes
official notice that downlink resource allocations for HSDPA can be semi-static
and therefore an allocation may be persistent or semi-persistent at least to the same
level as disclosed in applicant’s specification.
(Dkt. No. 68-5 (’035 Patent File History) at NSNH00016290).) Nokia further contends that these
terms were used by members of 3GPP in cited references in the ’035 Patent file history, providing
additional intrinsic evidence that a person of skill in the art would understand these terms. Nokia
contends that both terms were used in submissions to 3GPP and in Section 36.213 of the 3GPP
standard. (Dkt. No. 68 at 23 (citing Dkt. No. 68-5 (’035 Patent File History) at NSNH00015848
(referring

to

“persistent

allocation”

and

“semi-persistent

PUSCH

transmission”),

NSNH00015893-94 (referring to “semi-persistently scheduled PDSCH transmission”)).) Nokia
48

contends that members of 3GPP use these terms because “persistent allocation” and “semipersistent allocation” have a well-understood meaning to those skilled in the art.
As to the degree of persistency, Nokia contends that numerical precision in the claims,
however, is not required if the language is as precise as the subject matter permits. (Dkt. No. 68 at
24 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) (“Claim
language employing terms of degree has long been found definite where it provided enough
certainty to one of skill in the art when read in the context of the invention”)).)
Nokia also contends that a person of ordinary skill in the art would understand the terms
“persistent allocation” and “semi-persistent allocation” to be synonymous with persistent
scheduling and semi-persistent scheduling. (Dkt. No. 72 at 9 (citing Dkt. No. 72-2 (Camp Decl.)
at ¶¶ 33-34).) Nokia also contends that Huawei’s expert, Dr. Laneman, readily admits that
“persistent scheduling” and “semi-persistent scheduling” are known and understood. (Id. (citing
Dkt. No. 71-1 at ¶ 67).)
Nokia contends that the patent specification states that “[i]n persistent allocation the UL
resources are allocated persistently to the UE and thereby UL allocation grants are not sent.” ’035
Patent 5:28-31. Nokia contends that this is consistent with persistent scheduling, a concept known
to one of ordinary skill in the art. (Dkt. No. 72 at 9 (citing Dkt. No. 72-2 (Camp Decl.) at ¶ 33).)
Nokia contends that even Huawei’s expert explains persistent scheduling as being similar to the
’035 Patent’s description of “persistent allocation.” (Id. (citing Dkt. No. 71-1 at ¶ 67 (“In persistent
scheduling, the eNodeB grants persistent allocations….”)).) Nokia, thus, states that a person skilled
in the art would understand that persistent allocation refers to resources that are allocated
continuously and therefore do not need to be allocated using allocation grants. (Id. (citing Dkt. No.
72-2 (Camp Decl.) at ¶ 33).) As to Huawei’s argument that this description of persistent allocation
49

refers to the uplink, Nokia states that Huawei does not explain why the description of persistent
allocation would change when applied to the downlink. Nokia asserts that a person of ordinary
skill would understand the description as applying equally to the both (Id. (citing Dkt. No. 72-2
(Camp Decl.) at ¶ 33).)
Nokia contends that similarly, “semi-persistent allocation” is definite because it refers to
resources that are sometimes allocated continuously. (Id. (citing Dkt. No. 72-2 (Camp Decl.) at ¶
35).) Nokia contends that this is consistent with the term “semi-persistent scheduling.” (Id. (citing
Dkt. No. 72-2 (Camp Decl.) at ¶ 34).) Nokia states that semi-persistent scheduling is different from
persistent scheduling, because semi-persistent refers to an allocation that is not always persistent.
Huawei first notes that though Nokia seeks a “plain and ordinary meaning” construction,
Huawei provides a definition for the “persistent” that is derived from the specification. (Dkt. No.
71 at 28.) Further, Huawei notes that Nokia acknowledges that “semi-persistent” is not explicitly
defined. Huawei contends that the specification does not give context as to how “semi-persistent,”
as used in the claims, fits into the specification’s description of the alleged invention, because the
specification states

“[b]oth persistent and non-persistent cases are considered in various

exemplary aspects of the invention….” ’035 patent at 5:31-32. Huawei contends that the only
meaning that can be discerned from the claims is that “persistent allocation” is not the same as
“semi-persistent allocation.” (Dkt. No. 71 at 28.)
Huawei also states that the specification references “persistent allocation” in the context of
uplink, but the claims are drafted in reference to a downlink allocation. (Id. (citing ’035 Patent
5:28-31).) Huawei further states that the file history excerpt highlights the problem as the Examiner
specifically noted the lack of clarity in the patent, taking official notice that in the prior art, “an

50

allocation may be persistent or non-persistent at least to the same level as disclosed in applicant’s
specification.” (Dkt. No. 68-5 (’035 Patent File History) at NSNH00016290.)
As to the file history documents, Huawei contends that the documents in question are all
dated after the priority date of the ’035 Patent, thus discounting their relevance. Further, Huawei
states that none of the documents use the term “semi-persistent allocation” but rather “semipersistent PUSCH transmission” and “semi-persistently scheduled PDSCH transmission.” (Dkt.
No. 71 at 29.) Huawei cites to its expert declaration as indicating that “semi-persistent allocation”
is not a term of art. (Id. (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 67).)
At the oral hearing, Huawei stated that the primary issue is with reference to “semipersistent.” Huawei stated that the patent also references “non-persistent” and it is not clear what
is the difference between “non-persistent” and “semi-persistent.” (Dkt. No. 84 at 38-39.)
Analysis
The parties are in agreement as to several points. First, the patent provides disclosure as to
a “persistent allocation” of uplink resources:
VoIP is an example of an application which can use persistent allocation. In
persistent allocation the UL resources are allocated persistently to the UE and
thereby UL allocation grants are not sent.
’035 Patent 5:28-31. Second, both parties agree that “persistent scheduling” and “semi-persistent
scheduling” are terms known in the art. Specifically, Huawei’s expert testifies:
To my understanding, there is no such thing as semi-persistent allocation. There is
dynamic, persistent, and semi-persistent scheduling. In dynamic scheduling, each
allocation is explicitly granted by the eNodeB as requested by the UE. In a
persistent allocation, the eNodeB grants to a UE an initial allocation explicitly as
well as periodic followup allocations implicitly. In persistent scheduling, the
eNodeB grants persistent allocations to a UE for both initial transmissions as well
as HARQ retransmissions. In semi-persistent scheduling, the eNodeB grants a
persistent allocation to a UE for the initial transmissions only, and the HARQ
retransmissions are requested and granted dynamically.
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(Dkt. No. 71-1 (Laneman Dec.) at ¶ 67.)
As to “persistent allocation,” (1) Huawei’s expert states “the eNodeB grants to a UE an
initial allocation explicitly as well as periodic follow up allocations implicitly” and (2) Nokia’s
expert states that “as understood by those skilled in the art, persistent allocation refers to resources
that are allocated continuously and therefore do not need to be allocated using allocation grants.”
(Dkt. No. 71-1 (Laneman Dec.) at ¶ 67; Dkt. No. 72-2 (Camp Dec.) at ¶ 33.) Though the
specification references a “persistent allocation” in context of an uplink transmission, the
understanding of both experts are generally consistent with each other and consistent with the
specification. Based on the intrinsic evidence and the extrinsic evidence, the Court finds “persistent
allocation” to mean “resources are allocated persistently and thereby allocation grants are not
sent.”
As to “semi-persistent allocation,” it is first noted that Huawei acknowledges that “semipersistent scheduling” is known, but argues that “semi-persistent allocation” is not. In context of
the specification and the extrinsic evidence provided to the Court as to the understanding of those
skilled in the art, the Court rejects such distinction.
First, generally with regard to the use of “scheduling” and “allocation,” both experts
contend that “persistent scheduling” is known in the art. Huawei’s expert defines the term in
context of granting a “persistent allocation:” “In persistent scheduling, the eNodeB grants
persistent allocations to a UE for both initial transmissions as well as HARQ retransmissions.”
(Dkt. No. 71-1 (Laneman Dec.) at ¶ 67.) Nokia’s expert contends “‘persistent allocation’ is
synonymous with persistent scheduling.” (Dkt. No. 72-2 (Camp Dec.) at ¶ 33.) Whether one term
defines the other or the two terms are synonymous, again the experts do not substantively disagree.
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Further, the Court notes that for the “scheduling information” term discussed above, Huawei
contended the term should be construed as including “allocation grants,” again indicating the
commonality of the allocation and scheduling concepts. It is further noted that the intrinsic record
utilizes “scheduling information” in the context of information that includes allocations. See ’035
Patent 14:1-56, 10:36-55. In context of the intrinsic evidence and the extrinsic evidence, the Court
rejects Huawei’s distinction.
Huawei acknowledges that “semi-persistent scheduling” is a term that is known to carry
meaning in the art: “In semi-persistent scheduling, the eNodeB grants a persistent allocation to a
UE for the initial transmissions only, and the HARQ retransmissions are requested and granted
dynamically. (Dkt. No. 71-1 (Laneman Dec.) at ¶ 67.) Nokia agrees that the term is known in the
art and states that “semi-persistent allocation” “refers to allocating a network resource but needing
additional control information for that resource to remain allocated.” (Dkt. No. 72-2 (Camp Dec.)
at ¶ 34.) Again, conceptually the parties do not differ greatly. At the oral hearing, the Court
inquired as to Huawei’s expert’s correlation of “scheduling” and “allocation,” and Huawei’s
expert’s acknowledgement that “semi-persistent scheduling” is known in the art. Huawei did not
rebut its expert’s statements and merely argued that the differences between non-persistent (not a
claim term) and semi-persistent need to be identified. (Dkt. No. 84 at 39.) Based upon the extrinsic
evidence presented to the Court as to the knowledge of those in the art, the Court finds that the
term “semi-persistent allocation” carries meaning to one of skill in the art. See Teva Pharm. USA,
Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015). Further, based on such meaning, the Court construes
“semi-persistent allocation” to mean “resources are initially allocated but additional allocation
grants are needed to remain allocated.”
At the oral hearing the Court proposed constructions similar to those that the Court adopts
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below, except “additional” was not included in the Court’s proposal for “persistent allocation” but
only included in the Court’s proposal for “semi-persistent allocation.” Nokia contended that the
“additional” would further clarify that the “thereby allocation grants are not sent” does not refer to
the initial allocation grant. (Dkt No. 84 at 36-37.) As discussed above, such a meaning conforms
to the specification and the statements of both experts. The Court has included “additional” within
both constructions. With the inclusion of “additional,” Nokia agreed to the Court’s construction.
(Id.)
The Court construes “persistent allocation” to mean “resources are allocated
persistently and thereby additional allocation grants are not sent.”
The Court construes “semi-persistent allocation” to mean “resources are initially
allocated but additional allocation grants are needed to remain allocated.”

10. “a downlink assignment index that indicates a number of downlink allocations grant
for the [communication node/apparatus] in the scheduling information” (’035
Patent Claims 9, 19)
Nokia’s Proposed Construction
“a downlink assignment index that indicates a
number of downlink allocations granted for
the [communication node/apparatus] in the
scheduling information”

Huawei’s Proposed Construction
Indefinite

The parties dispute whether “grant” can be interpreted as “granted” and whether the claim
grammar as originally presented renders the claim indefinite.
Positions of the Parties
Nokia contends that a typographical error exists: “grant” is supposed to be granted.” (Dkt.
No. 68 at 24.) Nokia contends that a person of skill in the art would easily recognize this,
understand the claim as written, and readily understand how to correct the typographical error.
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Nokia contends that there is no reasonable expert that could testify that the claim is confusing and
that a person of ordinary skill could not resolve the typographical error. Nokia notes that in
Huawei’s cases against T-Mobile and Nokia, Huawei itself corrected several typographical errors
in its patents. Huawei Tech. Co. LTD., v. T-Mobile US, Inc., 2:16-cv-00052-JRG-RSP, Dkt. 110
at 1-2 (E.D. Tex. Dec. 9, 2016) (Huawei and Nokia agreeing that the claim term “b” should be
construed as “by” and that the term “S-CSCF currently providing a service for the user fails”
should be construed as “S-CSCF currently assigned to provide a service for the user has failed”);
Huawei Tech. Co. LTD. v. T-Mobile US, Inc., 2:16-cv-00055-JRG-RSP, Dkt. 108 at 1-2 (E.D. Tex.
Dec. 7, 2016) (Huawei and Nokia agreeing that the claim term “the credit information” should be
construed as “credit information” and the term “the collected charging data information of the UE”
should be construed as “collected charging data information of the UE.”). Nokia contends that a
claim term, “read in light of the specification delineating the patent, and the prosecution history,”
need only to inform, “with reasonable certainty, those skilled in the art about the scope of the
invention.” Nautilus, 134 S. Ct. at 2124.
Nokia contends that the specification states that “the reply can comprise a downlink
assignment index that indicates a number of downlink allocations in the scheduling information”
’035 Patent 14:29-32. Nokia contends that reading this disclosure in the specification, a person of
ordinary skill would readily understand the phrase to mean “a downlink assignment index that
indicates a number of downlink allocations granted for the [communication node/apparatus] in the
scheduling information.” (Dkt. No. 68 at 25.)
Huawei contends that Nokia acknowledges that there is an error, but there are multiple
ways to fix the error. (Dkt. No. 71 at 29.) Huawei contends that it is clear that some form of
subject/verb error exists:
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a downlink assignment index that indicates a number of downlink allocations grant
for the [communication node/apparatus] in the scheduling information
’035 Patent Claims 9, 19 (emphasis added). Huawei contends that during the claim construction
proceedings, Nokia itself has proposed two interpretations. First, in the P.R. 4-3 Joint Claim
Construction Statement, Nokia proposed that the term should be corrected to read as follows:
a downlink assignment index that indicates a number of downlink allocations for
the [communication node/apparatus] in the scheduling information.
(Dkt. No. 57-1 at 19 (emphasis added).) Later, Nokia proposed its current construction, changing
“grant” to “granted:” “a number of downlink allocations granted.” (Dkt. No. 71 at 30 (emphasis
added).)
Huawei contends that the two different potential corrections result in different inventions.
Huawei contends that Nokia’s current correction is about a number of downlink allocations
“granted,” while Nokia’s earlier correction is about a number of downlink allocations generally,
granted or not. Huawei contends that Nokia argued both corrections and provided alleged
supporting evidence for both. (Dkt. No. 71 at 30-31.) Huawei notes that Nokia’s current cited
supporting evidence (’035 Patent 14:29-32) uses the language of Nokia’s original correction: “the
reply can comprise a downlink assignment index that indicates a number of downlink allocations
in the scheduling information.”
Huawei contends that other ways exist to correct the error. Huawei contends that “s” could
be removed from “allocations” with “grant” then made plural (“grants”): “a downlink assignment
index that indicates a number of downlink allocation grants for the communication node in the
scheduling information.” (Dkt. No. 71 at 30, n. 3.) Huawei contends that like Nokia’s current
correction proposal, this alternative involves changing just two characters. Huawei contends that

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this correction would produce yet another different meaning for the claim than the meanings
resulting from NSN’s proposed corrections. (Id.)
In reply, Nokia contends that the fact that the typographical error might be corrected in two
ways, both of which achieve the same result, does not mean that the claim is indefinite. Nokia
contends that a person of ordinary skill in the art would readily understand that the “number of
downlink allocations grant” refers to the number of downlink allocations granted. With regard to
Huawei’s expert (Dr. Laneman) stating that a person of ordinary skill in the art could understand
the claim phrase to mean “a number of downlink allocation grants” (Dkt. No. 71-1 (Laneman
Decl.) at ¶ 72), Nokia contends this is a distinction without a difference. Nokia contends that a
person of ordinary skill in the art would understand this phrase as having the same scope, whether
construed using “allocation grants” or “allocations granted.” (Dkt. No. 72 at 10 (citing Dkt. No.
72-2 (Camp Decl.) at ¶¶ 36-38).) Nokia contends that a person of ordinary skill in the art would
understand “a number of downlink allocation grants” to indicate the number that had been granted.
(Id. (citing Dkt. No. 72-2 (Camp Decl.) at ¶¶ 36-38).) Nokia notes that Huawei states in its own
brief, a “downlink resource allocation grant” is a message “granting a downlink resource
allocation.” (Id. (citing Dkt. No. 71 at 14).) Nokia contends that its proposal of “downlink
allocations granted” can be used interchangeably with “downlink allocation grants” or even with
“downlink allocations” (as previously proposed by Nokia). (Dkt. No. 72 at 10.)
The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No.
84 at 39-40.)
Analysis

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The parties agree that the claim, as drafted, has a grammatical drafting error. Nokia has, at
times, proposed two grammatically plausible ways to correct the claim language. Huawei has
proposed a third grammatically plausible way to correct the claim language.
The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
[A] patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with reasonable
certainty. The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable.
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30 (2014). The Federal Circuit
has made clear the requirements needed for a district court to correct an error:
This case presents the question whether a district court can act to correct an error
in a patent by interpretation of the patent where no certificate of correction has been
issued. We hold that a district court can do so only if (1) the correction is not subject
to reasonable debate based on consideration of the claim language and the
specification and (2) the prosecution history does not suggest a different
interpretation of the claims.
Novo Industries, LP v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). As drafted, the
literal claim language does not make grammatical sense. Further, the claim language may be
corrected in a variety of manners. Thus, (1) “grants” could be removed as originally proposed by
Nokia, (2) “grants” could be changed to “granted” as currently proposed by Nokia, or (3)
“allocations grant” could be changed to “allocation grants” as proposed by Huawei.
If the claim language might mean several different things and no informed and confident
choice is available among the contending definitions, the claim is indefinite. See Interval Licensing
LLC v. AOL Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing Nautilus, Inc., 134 S.Ct. at 2130,
n.8 (2014)). The question before the Court is whether the different proposed interpretations might
mean substantively different things. As an initial matter, the Court finds that changes (2) and (3)
described above carry the same substantive meaning. In light of the specification and the overall
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claim context, there is no substantive difference between “…a number of downlink allocations
granted…” and “a number of downlink allocation grants….”
As to the differences between changes (1) and (2), the Court finds that a substantive
difference in claim scope does not exist between the two proposals. First, Nokia’s original
construction (“a number of downlink allocations”) and current construction (“a number of
downlink allocations granted”) carry the same meaning in context of the surrounding claim
language and the specification. The parent claims, claims 1 and 12 for dependent claims 9 and 19
respectively, reference “downlink allocation grant for the communication node [for the apparatus]”
The reply sent by the communication node indicates a number of such allocations. Whether the
claim references “allocations” or “allocation granted” is no difference as in context of the claims
1/9 and 12/19 the allocations reference the “at least one allocation grant” of the parent claims.
Such would be an understanding of both Nokia’s original proposal (construction (1)) and current
proposed construction (construction (2)) in light of the claims and specification.
Huawei contends that the original proposed construction could be viewed as meaning that
“allocations” references all potential allocations generally, whether sent or not to the
communication node. It is telling that Huawei merely provides attorney argument as to this
interpretation and that Huawei’s expert does not opine that such a meaning would be taken by one
of ordinary skill in the art. (Dkt. No. 71-1 (Laneman Dec.) at ¶¶ 69-73.) Though Huawei’s expert
notes the grammar could be fixed multiple ways, there is no indication from the expert that the
ultimate meaning of “allocations” or “allocation grants” to one skilled in the art would be different
upon having the benefit of the specification. (Id. at ¶ 72.) Further, Huawei’s reading of Nokia’s
original proposal is not plausible in light of the specification. Huawei has provided no citation to
indicate that the specification provides any suggestion that the number of allocations in a reply
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could reference all potential allocations as opposed to the allocations made. Though there may be
different grammatical changes that could be made to the claim, in context of the surrounding claim
language and the specification, the meaning of such changes remains the same. Thus, the claim
provides reasonable certainty and is sufficiently definite. See Interval Licensing, 766 F.3d at 1371.
The Court finds that “a downlink assignment index that indicates a number of
downlink allocations grant for the [communication node/apparatus] in the scheduling
information” means “a downlink assignment index that indicates a number of downlink
allocations granted for the [communication node/apparatus] in the scheduling information.”
.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered to not refer to each other’s claim construction positions in
the presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain
from mentioning any portion of this opinion, other than the actual definitions adopted by the
Court. The Court’s reasoning in this order binds the testimony of any witnesses, and any
reference to the claim construction proceedings is limited to informing the jury of the definitions
adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 24th day of May, 2017.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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