Traxcell Technologies, LLC v. Huawei Technologies USA Inc.
Filing
261
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 1/4/2019. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TRAXCELL TECHNOLOGIES, LLC,
Plaintiff,
v.
HUAWEI TECHNOLOGIES USA INC,
ET AL.,
Defendants.
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Case No. 2:17-cv-00042-RWS-RSP
(Lead Case)
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Traxcell Technologies, LLC
(“Plaintiff”) (Dkt. No. 241, filed on November 6, 2018), 1 the response of Huawei Technologies
USA, Inc., Nokia of America Corporation, and Nokia Solutions and Networks Oy (collectively
“Defendants”) (Dkt. No. 244, filed on November 13, 2018), and Plaintiff’s reply (Dkt. No. 249,
filed on November 27, 2018). The Court held a hearing on the issues of claim construction and
claim definiteness on December 12, 2018. Having considered the arguments and evidence
presented by the parties at the hearing and in their briefing, the Court issues this Order.
1
Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF.
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Table of Contents
I.
BACKGROUND ............................................................................................................... 3
II.
LEGAL PRINCIPLES ..................................................................................................... 5
A.
Claim Construction ................................................................................................. 5
B.
Departing from the Ordinary Meaning of a Claim Term ........................................ 8
C.
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................... 9
III.
AGREED CONSTRUCTIONS...................................................................................... 10
IV.
CONSTRUCTION OF DISPUTED TERMS ............................................................... 11
A.
B.
“performance data” ............................................................................................... 18
C.
“location” .............................................................................................................. 21
D.
“one of the radio-frequency transceivers” ............................................................ 23
E.
“referencing performance”.................................................................................... 26
F.
“in order to restrict processing of radio frequency signals from at least one
of said at least two wireless devices . . . in order to improve
communication with at least one said wireless device” ........................................ 28
G.
V.
“first computer” and “computer” .......................................................................... 14
’284 Patent Claim 12 ............................................................................................ 30
CONCLUSION ............................................................................................................... 34
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I.
BACKGROUND
Plaintiff alleges infringement of three U.S. Patents: No. 8,977,284 (the “’284 Patent”), No.
9,510,320 (the “’320 Patent”), and No. 9,642,024 (the “’024 Patent”) (collectively, the “Asserted
Patents”). The ’284 and ’320 Patents are each entitled Machine for Providing a Dynamic Data
Base of Geographic Location Information for a Plurality of Wireless Devices and Process for
Making Same. The ’024 Patent is entitled Mobile Wireless Communications System and Method
with Corrective Action Responsive to Communications Fault Detection. The patents are related.
They share a common priority claim to an application filed Oct. 4, 2001. And they are related
through a chain of continuation applications, and thus share a substantially common specification
(otuside of the claim sets).
In general, the Asserted Patents are directed to technology for locating a wireless
communications device and then using that location for other applications, such as for improving
communications with the wireless device.
The abstracts of the ’284 and ’320 Patents are identical and provide:
For a wireless network, a tuning system in which mobile phones using the network
are routinely located. With the location of the mobile phones identified, load
adjustments for the system are easily accomplished so that the wireless network is
not subject to an overload situation. Ideally the location of the mobile phones is
accomplished whether the mobile phones are transmitting voice data or not.
The abstract of the ’024 Patent provides:
A mobile device, wireless network and their method of operation provide fault
handling in response to detection of a communications fault between a connected
mobile device and the communications network. The communications network
tracks location of mobile devices and stores performance data of connections
between the mobile devices and the network. The performance data is referenced
to expected performance data to determine whether a fault exists and a corrective
action is suggested when the fault exists.
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Claim 1 of the ’284 Patent and Claim 6 of the ’024 Patent, exemplary apparatus and method
claims respectively, recite as follows:
1. A wireless network comprising:
a) at least two wireless devices, each said wireless device communicating via
radio frequency signals;
b) a first computer programmed to perform the steps of:
1) locating at least one said wireless device on said wireless network and
referencing performance of said at least one wireless device with
wireless network known parameters,
2) routinely storing performance data and a corresponding location for
said at least one wireless device in a memory;
c) a radio tower adapted to receive radio frequency signals from, and transmit
radio frequency signals to said at least one wireless device; wherein said first
computer further includes means for receiving said performance data and
suggest corrective actions obtained from a list of possible causes for said
radio tower based upon the performance data and the corresponding location
associated with said at least one wireless device;
d) wherein said radio tower generates an error code based upon operation of
said at least one wireless device; and
e) wherein said first computer is further programmed to,
1) receive said error code from said radio tower, and,
2) selectively suggest a corrective action of said radio frequency signals
of said radio tower in order to restrict processing of radio frequency
signals from at least one of said at least two wireless devices based upon
said error code, and, whereby said first computer suggests said
corrective action in order to improve communication with at least one
said wireless device.
6. A method of managing a wireless radio-frequency (RF) network, the method
comprising:
coupling in communication, one or more radio-frequency transceivers and an
associated one or more antennas to which the radio-frequency transceiver is
coupled to one or more mobile wireless communications devices;
locating the one or more mobile wireless communications devices according
to the radio-frequency communications and generating an indication of a
location of the one or more mobile wireless communications devices;
receiving and storing performance data of connections between the one or
more mobile wireless communications devices and the radio-frequency
transceiver along with the indication of location;
referencing the performance data to expected performance data;
determining at least one suggested corrective action in conformity with
differences between the performance data and expected performance data in
conjunction with the indication of location;
receiving an error code from the radio-frequency transceiver;
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determining whether the error code indicates a performance issue with respect
to the connection between the one or more mobile wireless communications
devices and the radio-frequency transceiver; and
determining the at least one suggested corrective action in response to the error
code.
II.
LEGAL PRINCIPLES
A.
Claim Construction
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of the
claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning because
claim terms are typically used consistently throughout the patent. Id. Differences among the claim
terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed that the independent claim does not
include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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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 not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
and its prosecution history in determining how to read claim terms.” Id. The Supreme Court
recently explained the role of extrinsic evidence in claim construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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B.
Departing from the Ordinary Meaning of a Claim Term
There are “only two exceptions to [the] general rule” that claim terms are construed according
to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
specification or during prosecution.” 2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
in two instances: lexicography and disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
2
Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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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).
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).
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). The standard “must provide objective boundaries for those of
skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
3
The Court refers to the pre-AIA version of § 112 but understands that there is no substantial
difference between definiteness under the pre-AIA version and under the AIA version of the
statute.
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III.
AGREED CONSTRUCTIONS
The parties have agreed to the following constructions set forth in their Joint Claim
Construction Chart (Dkt. No. 257).
Term 4
Agreed Construction
plain and ordinary meaning
“corrective action”
•
•
’284 Patent Claim 1
’320 Patent Claims 1 and 4
“correcting”
•
plain and ordinary meaning
’284 Patent Claim 12
“radio tower”
•
base station transceiver subsystem and
associated antenna(s)
’284 Patent Claims 1 and 12
“means for receiving said performance data
and suggest corrective actions obtained from
a list of possible causes for said radio tower
based upon the performance data and the
corresponding location associated with said at
least one wireless device”
•
’284 Patent Claim 1
35 USC § 112, ¶ 6
function: receiving said performance data and
suggest corrective actions obtained from a list
of possible causes for said radio tower based
upon the performance data and the
corresponding location associated with said at
least one wireless device
structure: the algorithm disclosed in Fig. 38A, Fig. 38-B, and Fig. 38-C and described at
col. 54, line 21 through col. 55, line 41
4
For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest-level claim in each dependency chain is listed, and (2) only asserted claims
identified in the parties’ Joint Claim Construction Chart (ECF No. 257) are listed.
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Term 4
“means for receiving said performance data
and corresponding locations from said radio
tower and correcting radio frequency signals
of said radio tower in order to improve
communication with said wireless devices”
•
’284 Patent Claim 12 5
Agreed Construction
35 USC § 112, ¶ 6
function: receiving said performance data and
corresponding locations from said radio tower
and correcting radio frequency signals of said
radio tower in order to improve
communication with said wireless devices
structure: the algorithm disclosed in Fig. 38A, Fig. 38-B, and Fig. 38-C and described at
col. 54, line 21 through col. 55, line 41
Having reviewed the intrinsic and extrinsic evidence of record, the Court notes one
discrepancy; namely, the “means for receiving said performance data and corresponding locations
from said radio tower and correcting radio frequency signals of said radio tower in order to improve
communication with said wireless devices” language is not found in any claim of the ’284 Patent.
Accordingly, the Court adopts the agreed constructions for: (1) “corrective action,” (2)
“correction,” (3) “radio tower,” and (4) “means for receiving said performance data and suggest
corrective actions obtained from a list of possible causes for said radio tower based upon the
performance data and the corresponding location associated with said at least one wireless device.”
The Court declines to adopt the agreed construction for “means for receiving said performance
data and corresponding locations from said radio tower and correcting radio frequency signals of
said radio tower in order to improve communication with said wireless devices.”
IV.
CONSTRUCTION OF DISPUTED TERMS
To begin, the Court is obliged to construe the terms in dispute. Plaintiff contends that
Defendants must show construction of a term “is necessary to decide [a] specific and concrete
5
The parties identify this as a Claim 1 limitation in their Amended Joint Claim Construction Chart,
Dkt. No. 255 at 2 and in their later Joint Claim Construction Chart, Dkt. No. 257 at 2. This was
identified as a Claim 12 limitation in their original Joint Claim Construction Chart, Exhibit A, Dkt.
No. 252-1 at 3–5. The language of the limitation most closely tracks that of Claim 12.
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infringement or invalidity dispute.” Dkt. No. 241 at 3. Plaintiff misstates the law. And Plaintiff’s
contention runs counter to the Court’s established practice. It is true that the Court need not rewrite
every claim term in construing a claim. The Federal Circuit has stated as much:
The Markman decisions do not hold that the trial judge must repeat or restate every
claim term in order to comply with the ruling that claim construction is for the court.
Claim construction is a matter of resolution of disputed meanings and technical
scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement. It is not an obligatory exercise
in redundancy.
United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Thus, the
Court’s claim construction obligations do not extend to claim terms that are not disputed. Vivid
Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
need be construed that are in controversy, and only to the extent necessary to resolve the
controversy”). And while the Court may require the parties to show an actual controversy, the
Court need not require the parties to muster their invalidity and infringement evidence and present
their case theories in order to establish that a dispute exists. Indeed, the Federal Circuit effectively
rejected making such an approach mandatory. Id. (rejecting a rule requiring the completion of
discovery before claim construction). The Court has not adopted such an approach here. Indeed,
the Court ordered the parties to comply with the Court’s Rule of Practice for Patent Cases in
bringing their claim-construction disputes to the Court. Docket Control Order, Dkt. No. 183. These
Patent Rules do not require the showing advocated by Plaintiff.
Ultimately, “[w]hen the parties present a fundamental dispute regarding the scope of a claim
term, it is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
F.3d 1351, 1362 (Fed. Cir. 2008). And this duty extends to determining whether the scope of the
claim is reasonably certain. Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014)
(“[W]e read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and
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prosecution history, inform those skilled in the art about the scope of the invention with reasonable
certainty” (emphasis added)); ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir.
2012) (“indefiniteness is a question of law and in effect part of claim construction”); Cox
Communs., Inc. v. Sprint Commun. Co. LP, 838 F.3d 1224, 1288–89 (Fed. Cir. 2016) (“an
indefiniteness analysis under 35 U.S.C. § 112, ¶ 2 is ‘inextricably intertwined with claim
construction’” (quoting Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir.
1999))).
While the Court appreciates Plaintiff’s concern for judicial resources, it rejects Plaintiff’s
position that “[p]atent law should not require courts to expend judicial resources in trying to
determine alleged claim-construction disputes under the guise of considering indefiniteness if the
claim-construction dispute does not impact whether infringement exists, the prior art invalidates
the claim, or the claim fails to comply with the written description, enablement, or best mode
requirements.” Dkt. No. 241 at 3. It is axiomatic that one cannot infringe an invalid claim. An
indefinite claim is invalid. Therefore, the issue of indefiniteness of an asserted claim is central to
the issue of infringement. Such an issue, when presented, must be resolved by the Court. Indeed,
the Court specifically ordered the parties to “include any arguments related to the issue of
indefiniteness in their Markman briefing.” This “[i]n lieu of early motions for summary judgment.”
Docket Control Order, Dkt. No. 183 at 5.
Accordingly—and with respect to every term in dispute—the Court rejects Plaintiff’s
argument that the Court should not construe the claims—or rule on their indefiniteness—because
Defendants have not proven there is “specific and concrete infringement or invalidity dispute” to
be resolved by the claim construction. The Court further denies Plaintiff’s request for “separate
briefing” on the issue of indefiniteness. Dkt. No. 241 at 12.
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A.
“first computer” and “computer”
Disputed Term
“first computer”
•
•
Defendants’ Proposed
Construction
same first computer
computer
same computer
’284 Patent Claims 1, 12
’320 Patent Claims 1, 4
“computer”
•
Plaintiff’s Proposed
Construction
first computer
’024 Patent Claims 1, 11,
17
Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: Defendants’ proposed construction is improper as it defines the term using
the term and suggests that “same” has no meaning else “same computer” and “computer” could
not mean the same thing. Dkt. No. 241 at 7.
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
its position: ’284 Patent figs.9, 29, col.16 ll.28–41.
Defendants respond: The claims at issue involve a computer programmed to take certain
action. For a given claim, for each programmed action, it is the same computer that is programmed
to take the action. That is, where “first computer” is recited in the claims, subsequent reference to
“the first computer” or “said first computer” refers to the same computer. Likewise, where
“computer” is recited in the claims, subsequent reference to “the computer” or “said computer”
refers to the same computer. This is the plain meaning of the claim terms. It is also the meaning
explained in prosecution of the ’284 Patent, where the applicant distinguished prior art that
disclosed use of multiple computers. Thus, the “computer” and “first computer” of the patent is
different from a “system” that may comprise multiple computers. Dkt. No. 244 at 12–15.
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In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’284 Patent fig.29; ’284 Patent File Wrapper September 28, 2012
Amendment and Response (Defendants’ Ex. 2, Dkt. No. 244-3).
Plaintiff replies: The Asserted Patents expressly contemplate multiple computers, given that
they describe “individual computers” and a “LAN.” During prosecution of the ’284 Patent, the
applicant simply stated that “first computer” and “computer” does not include a “second
computer,” which is a separate claim limitation. Dkt. No. 249 at 1–2.
Plaintiff cites further intrinsic evidence to support its position: ’284 Patent col.47 ll.50–55;
’284 Patent File Wrapper September 28, 2012 Amendment and Response (Defendants’ Ex. 2, Dkt.
No. 244-3).
Analysis
It appears that the underlying issue in dispute is whether the “first computer” and “computer”
of the claims may be a system of multiple computers. They may not. The terms refer to a single
computer.
To begin, references to a claim term following a first reference to the term refer to the same
term. That is, a subsequent reference to a term refers to its antecedent basis. Here, references to
“the” or “said” computer or first computer following a first reference to “a” computer or first
computer refer to the same computer or same first computer as Defendants contend. This is the
plain meaning of the claim language and is readily apparent without construction.
The “computer” or “first computer” in question here is a single computer. This was made clear
during prosecution of the ’284 Patent. The patent applicant clearly distinguished the
location/performance computer of the claims from location/performance systems of the prior art
in that the computer of the claims was a single computer whereas the prior art included a second
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computer. For instance, the applicant distinguished the claimed invention (“Reed”) from a priorart reference (“Andersson”):
While Andersson requires an operative connection with the wireless device (in
addition to a second computer requiring additional hardware and software) in order
to improve communication, Reed requires only a first computer to reference the
location and performance data for the wireless device, and then adjust radio tower
to improve communication.
’284 Patent File Wrapper September 28, 2012 Amendment and Response at 16–17 (emphasis
added), Dkt. No. 244-3 at 17–18. Applicant repeated this single-versus-multiple-computer
distinction:
Reed’s invention for it[s] functionality requires only “a first computer”.
Andersson, on the other side, cannot provide a location for the phone, without a
second computer in the phone. Andersson requires that the mobile device contain
special equipment (first computer and second computer, and communication with
a mobile device) in order to improve communication . . . .
Reed offers a single computer, containing location and performance information
about all wireless devices on the wireless communications network (without the
need for special hardware in the phone, second computers, or a two way tuning
communication with the wireless device).
Id. at 36–37 (emphasis added), Dkt. No. 244-3 at 37–38. The “computer” and “first computer” are
single computers. 6 This does not preclude a “second computer” in the accused instrumentality, so
long as a single computer performs the recited functions of the “computer” or “first computer.”
See, e.g., ’284 Patent Claims 9 and 12 (reciting a “second computer”).
The Court understands the patent-applicant’s prosecution-history statements, that the claimed
invention does not require a feature required by a prior-art reference, to mean that the prior-art
feature does not satisfy a particular limitation of a pending claim. During prosecution of the ’284
6
Claim 17 of the ’024 Patent recites both “the computer system” and “the computer.” See, e.g.,
’024 Patent col.131 at ll.16, 28. The Court understands that “computer” and “computer system”
are used synonymously in Claim 17 to refer to a single computer rather than a system of multiple
computers.
16 / 34
Patent, the patent applicant ostensibly distinguished the prior art on the grounds that the prior art
“requires” a limitation not “required” by the claimed invention. The context of these statements is
that of a patent applicant responding to a patent-examiner’s office action stating that the prior art
discloses the limitations of the pending claims. See, e.g., id. at 11 (noting the claims “were rejected
under 35 U.S.C. § 103(a) as being upatenable over … Andersson … in view of … Steer”). In this
context, the patent applicant was arguing that the particular claim limitation at issue is not satisfied
by that feature required by the prior art. For example, the applicant argued that Andersson does
not satisfy the “first computer” limitation because it does not disclose a single computer that
provides the location/performance functions. Rather, Andersson requires two computers (a first
and a second). Plaintiff suggested at oral argument that the patent-applicant’s prosecution-history
distinction was that the claimed invention was not as limited as Andersson. For example, under
Plaintiff’s suggestion, the “first computer” does not “require” two computers as in Andersson, but
it may encompass two computers as in Andersson. That is, the “first computer” is broader than the
location/performance computers in the prior art used by the examiner to reject the claims. But this
ignores the context of the prosecution history—that the applicant was arguing that the prior-art
references did not teach specific limitations of the claims. The patent applicant was arguing that
the prior art did not disclose the limitations of the pending claims, not that the limitations were
broader than that disclosed by the prior art. 7
The Court rejects Plaintiff’s argument that the ’284 Patent teaches a multi-computer
location/performance computer. At oral argument, Plaintiff argued that the location/performance
“first computer” or “computer” of the claims may be multiple computers, relying on the Patent’s
7
This understanding applies also to the prosecution-history statements regarding the “performance
data” and “location” terms in dispute.
17 / 34
disclosure: “the components contained within the current invention may reside within the same
physical hardware, or the components may reside outside the physical hardware.” ’284 Patent
col.38 ll.15–18. This disclosure does not suggest interpreting the patent-applicant’s prosecutionhistory statements that the location/performance computer is a “single” computer to mean that the
single computer may in fact be multiple computers. Rather, it simply suggests that the various
components of the invention may or may not be collected together within the same physical piece
of hardware.
Accordingly, the Court construes “first computer” in Claims 1 and 12 of the ’284 Patent and
Claims 1 and 4 of the ’320 Patent and “computer” in Claims 1, 11, and 17 of the ’024 Patent as
follows:
•
•
B.
“first computer” means “first single computer”;
“computer” means “single computer.”
“performance data”
Disputed Term
“performance data”
•
•
•
Plaintiff’s Proposed
Construction
no construction necessary
’284 Patent Claims 1, 12
’320 Patent Claims 1, 4
’024 Patent Claims 1, 6,
11, 17
Defendants’ Proposed
Construction
metric regarding performance
not generated by the wireless
communications device
The Parties’ Positions
Plaintiff submits: Both “performance” and “data” are readily understood without construction.
Dkt. No. 241 at 7–8.
Defendants respond: During prosecution of the ’284 Patent, the applicant disclaimed
“performance data” that was generated by the wireless communication device. The applicant did
18 / 34
this to overcome rejections based on prior-art references disclosing performance data generated by
wireless communication devices. Dkt. No. 244 at 15–17.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’284 Patent File Wrapper September 28, 2012 Amendment and Response
(Defendants’ Ex. 2, Dkt. No. 244-3).
Plaintiff replies: The applicant’s prosecution-history statements did not disclaim use of
performance data generated by a wireless communication device. Rather, the applicant noted a
distinction between the claims and the prior art in that the computer of the claims does not receive
the performance data directly from the wireless device as it does in the prior art. Dkt. No. 249 at
2–3.
Plaintiff cites further intrinsic evidence to support its position: ’284 Patent File Wrapper
September 28, 2012 Amendment and Response (Defendants’ Ex. 2, Dkt. No. 244-3).
Analysis
The issue in dispute is whether the “performance data” of the claims may be generated or
determined by the wireless communications device. It may not.
The “performance data” of the claims is not determined by the wireless communication
device. This was made clear during prosecution of the ’284 Patent. The applicant clearly
distinguished performance data of the claims from performance data of the prior art in that the
performance data of the claims did not originate with the wireless communication device as it did
in the prior art. For instance, the applicant distinguished the claimed invention (“Reed”) from a
prior-art reference (“Andersson”) that disclosed use of a specific performance datum (“carrier-tointerference ratio” or “CIR”):
Andersson shows a mobile station (a second computer) which contains a “carrierto-interference ratio[] detector” contained within the mobile station itself (Fig. 3,
19 / 34
#100). Andersson teaches away from the possibility of the CIR being determined
by the first computer. In Andersson’s world the CIR must be detected by
Andersson’s mobile station, and then transmitted via a special dedicated signal to
the Andersson’s specially equipped base station. . . .
In Andersson’s world, the CIR must be determined by his mobile station and then
transmitted to the base station. Andersson’s first computer cannot reference the
performance data of a wireless device, without receiving said performance date
from his mobile station MS1. Reed does not require the extra steps or equipment
required by Andersson, to send and receive performance data between the base
station and the wireless device.
’284 Patent File Wrapper September 28, 2012 Amendment and Response at 26–27 (emphasis
added), Dkt. No. 244-3 at 27–28. The applicant further explained: “Reed’s first computer can
improve the radio frequency communication without . . . receiving the CIR from the wireless
device by any means.” Id. at 23, Dkt. No. 244-3 at 24 (emphasis added). That is, the prior art,
unlike the claimed invention, included equipment and steps for determining the performance data
at the wireless device. The patent applicant distinguished the prior art by noting that the claimed
performance data is different—it does not come from the wireless device by any means.
The Court declines to rewrite “performance data” as “metric regarding performance” as
Defendants suggest. It is unclear whether Defendants intend a meaningful difference between these
terms and Defendants have not provided any reason why “metric regarding performance” is any
clearer than “performance data.”
Accordingly, the Court construes “performance data” as follows:
•
“performance data” means “performance data that is not determined by the
wireless communications device.”
20 / 34
C.
“location”
Disputed Term
“location”
•
•
•
Plaintiff’s Proposed
Construction
no construction necessary
Defendants’ Proposed
Construction
location, excluding grid
positioning
’284 Patent Claims 1, 12
’320 Patent Claims 1, 4
’024 Patent Claims 1, 6,
11, 17
The Parties’ Positions
Plaintiff submits: “Location” is readily understood without construction. Defendants’
proposed negative limitation is not justified by the intrinsic evidence. Dkt. No. 241 at 9–10.
In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
its position: ’284 Patent, at [54] Title, figs.11–22, 27–28, 33–35, 39–41, 53–56, col.6 ll.15–34,
col.7 ll.6–11, col.7 ll.46–61, col.7 l.62 – col.8 l.8, col.16 ll.28–41, col.19 ll.19–24, col.30 ll.49–54,
col.41 ll.14–22, col.55 ll.57–60.
Defendants respond: While “location” is readily understandable, the applicant disclaimed grid
positioning during prosecution of the ’284 Patent. Specifically, the applicant distinguished a priorart grid-pattern location system to overcome a prior-art rejection. The “location” of the claims is
not simply geographic data, which encompasses more than location. Dkt. No. 244 at 17–20.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’284 Patent col.5 l.5 – col.6 l.4, col.6 ll.15–
34, col.7 l.46 – col.8 l.8, col.16 ll.28–31, col.29 ll.33–34; ’284 Patent File Wrapper September 28,
2012 Amendment and Response (Defendants’ Ex. 2, Dkt. No. 244-3), December 12, 2012 Office
Action (Defendants’ Ex. 4, Dkt. No. 244-5); U.S. Patent No. 6,845,246 (“Steer”) (Defendants’ Ex.
21 / 34
3, Dkt. No. 244-4). Extrinsic evidence: Dictionary.com, “geography” 8 (Defendants’ Ex. 5, Dkt.
No. 244-6).
Plaintiff replies: Defendants’ proposed construction should be rejected because the applicant’s
prosecution-history statements were about “grid pattern” rather than “grid positioning.” And the
“grid pattern” in these statements referred to “mapping of power levels to a geographic grid.” Dkt.
No. 249 at 3–4.
Analysis
The issue in dispute is whether the “location” of the claims includes “grid positioning.” With
the understanding that the “grid positioning” term proposed by Defendants is the same as the gridpattern positioning explained by the patent applicant during prosecution of the ’284 Patent, the
claimed “location” excludes grid positioning. The parties, and the Court, agree that this does not
exclude location as a point comprising a latitude and longitude.
The “location” of the claims is something other than merely a position in a grid pattern. During
prosecution of the ’284 Patent, the patent applicant clearly distinguished the claimed invention
from prior art that used position in a grid pattern as the location. A prior-art reference (“Steer”)
discloses using a mobile’s location to set the transmit power level of mobile device. Steer discloses
using “locations in a roughly grid pattern throughout the coverage area.” ’284 Patent File Wrapper
September 28, 2012 Amendment and Response at 50, Dkt. No. 244-3 at 51. The patent applicant
distinguished the claimed invention (“Reed”) from the prior-art Steer in that “Reed teaches a first
computer that can ‘suggest corrective action for said radio tower’ without the limitation of a ‘grid
pattern.’” Id. (emphasis added). That is, the “location” of the claimed invention is not merely a
position in a grid pattern.
8
https://www.dictionary.com/browse/geography
22 / 34
Accordingly, the Court construes “location” as follows:
•
D.
“location” means “location that is not merely a position in a grid pattern.”
“one of the radio-frequency transceivers”
Disputed Term
“one of the radio-frequency
transceivers”
•
Plaintiff’s Proposed
Construction
no construction necessary
Defendants’ Proposed
Construction
indefinite
’024 Patent Claims 11, 17
The Parties’ Positions
Plaintiff submits: It is not appropriate to address indefiniteness in a claim-construction
proceeding. Indefiniteness is an issue for summary judgment. Defendants cannot prove by clear
and convincing evidence that any of the challenged claims “are insolubly ambiguous and no
narrowing construction can be properly adopted.” Dkt. No. 241 at 10–13.
Defendants respond: Plaintiff waived its argument on indefiniteness by not raising an
argument in its opening brief. The term “one of the radio-frequency transceivers” lacks antecedent
basis in the claims, and therefore renders the claims indefinite. Specifically, the claims recite
“multiple radio-frequency transceivers” but it is uncertain which of these multiple transceivers is
meant by later claim-recitations of “one of the radio-frequency transceivers.” Dkt. No. 244 at 20–
22.
Plaintiff replies: It is not required to address indefiniteness until the issue is raised. The claim
language at issue simply limits the multiple radio-frequency transceivers to one transceiver. Dkt.
No. 249 at 4.
23 / 34
Analysis
The issue in dispute is whether the meaning of “one of the radio-frequency transceivers” in
the claims is reasonably certain. In the context of the surrounding claim language, the meaning of
“one of the multiple radio-frequency transceivers” is reasonably certain.
Claim 11 of the ’024 Patent, reproduced here and annotated by the Court, recites multiple
radio-frequency transceivers for communication with one or more wireless devices. A computer
is configured to receive an indication that one of the transceivers (“a particular one of the radiofrequency
transceivers”)
communication.
The
has
faulty
computer
takes
corrective action on the transceiver (“the
particular radio-frequency transceiver’) to
remedy the fault. The one or more wireless
devices are configured to transmit an
indication
of
performance
of
the
communication with the transceiver (“the
particular one of the multiple radiofrequency
transmitters”)
indication
of
performance
and
of
this
the
transceiver is the indication that one of the
transceivers (“the particular one of the
radio-frequency transceivers”) has faulty
communication. While inartfully drafted,
the meaning is reasonably certain. The
11. A system including:
multiple radio-frequency transceivers and associated
multiple antennas to which the associated radiofrequency transceivers are coupled, wherein the
multiple radio-frequency transceivers are configured
for radio-frequency communication with one or
more mobile wireless communications devices; and
a computer coupled to the multiple radio-frequency
transceivers that receives and stores an indication of
a location of the one or more mobile wireless
communications devices, wherein the computer
receives an indication that indicates that
communication between a particular one of the
radio-frequency transceivers and the one or more
mobile wireless communications devices is faulty,
wherein the computer takes corrective action on the
particular radio-frequency transceiver to attempt to
remedy the fault, wherein the one or more mobile
wireless communications devices transmit an
indication of performance of communication with
the particular one of the multiple radio-frequency
transmitters, and wherein the computer is further
programmed to receive the indication of
performance from one of the multiple radiofrequency transceivers as the indication that the
communication between the particular one of the
radio-frequency transceivers and the one or more
mobile wireless communications devices is faulty,
wherein the computer further receives and stores
performance data of connections between the one or
more mobile wireless communications devices and
the multiple radio-frequency transceivers along with
the indication of location, wherein the computer
references the performance data to expected
performance data, and wherein the computer
determines at least one suggested corrective action in
conformity with differences between the
performance data and expected performance data in
conjunction with the indication of location.
24 / 34
system includes: (1) a computer to receive an indication of a faulty-communication transceiver (“a
particular one of the radio-frequency transceivers”), (2) a mobile device to send an indication of
performance of communiction of the transceiver (“the particular one of the multiple radiofrequency transmitters”) that serves as the indication of the faulty communicaton, and (3) the
computer to provide corrective action on the transceiver (“the particular radio-frequency
transceiver”).
Claim 17, reproduced here and annotated by the Court, recites multiple radio-frequency
transceivers. A computer system receives
an indication that one of the transceivers has
faulty communication. The indication is
from the transceiver (“a first one of the
multiple radio-frequency transceivers”) and
indicates that the transceiver (“the first one
of the radio-frequency transceivers”) has
faulty communication. In response to this
indication, the computer system takes
corrective action on “the particular radiofrequency transceiver.” While inartfully
drafted, the meaning is reasonably certain.
The method identifies a transceiver with
faulty communication (“a first one of the
multiple radio-frequency transceivers”) and
17. A method of managing a wireless radio-frequency
(RF) network, the method comprising:
coupling in communication, multiple radio-frequency
transceivers and associated multiple antennas to
which the radio-frequency transceivers are coupled,
wherein the multiple radio-frequency transceivers
are configured for radio-frequency communication
one or more mobile wireless communications
devices;
locating the one or more mobile wireless
communications devices according to the radiofrequency communication and generating an
indication of a location of the one or more mobile
wireless communications devices;
receiving and storing the indication of location by a
computer system;
the computer system receiving and storing
performance data of connections between the one or
more mobile wireless communications devices and
the multiple radio-frequency transceivers along with
the indication of location;
the computer system receiving an indication of
performance from a first one of the multiple radiofrequency transceivers that indicates that
communication between the first one of the radiofrequency transceivers and the one or more mobile
wireless communications devices is faulty;
responsive to receiving the indication that the
communication is faulty, the computer taking
corrective action on the particular radio-frequency
transceiver to attempt to remedy the fault;
the computer referencing the performance data to
expected performance data; and
the computer determining at least one suggested
corrective action in conformity with differences
between the performance data and expected
performance data in conjunction with the indication
of location.
25 / 34
attempts to remedy the fault on that transceiver (“the particular radio-frequency transceiver”).
Accordingly, the Court determines the Defendants have not proven that any claim is
indefinite for including “one of the radio-frequency transceivers.”
E.
“referencing performance”
Disputed Term
“referencing performance”
•
Plaintiff’s Proposed
Construction
no construction necessary
Defendants’ Proposed
Construction
indefinite
’284 Patent Claim 1
The Parties’ Positions
Plaintiff submits: It is not appropriate to address indefiniteness in a claim-construction
proceeding. Indefiniteness is an issue for summary judgment. Defendants cannot prove by clear
and convincing evidence that any of the challenged claims “are insolubly ambiguous and no
narrowing construction can be properly adopted.” Dkt. No. 241 at 10–13.
Defendants respond: Plaintiff waived its argument on indefiniteness by not raising an
argument in its opening brief. The term “referencing performance” is used in the claim in the
context of a computer programmed to perform the step of referencing performance. But it is not
reasonably certain what “referencing” performance means. It is not “storing” or “receiving”
performance data, since both are separately recited in the claim. And the term does not have
particular meaning in the art. Dkt. No. 244 at 22–23.
Plaintiff replies: It is not required to address indefiniteness until the issue is raised. The ’284
Patent includes a description of referencing performance at column 36, line 25. Dkt. No. 249 at 4.
Plaintiff cites further intrinsic evidence to support its position: ’284 Patent col.36 l.25.
26 / 34
Analysis
The issue in dispute is whether the meaning of “referencing performance” in the claims is
reasonably certain. It is.
“Referencing performance” plainly means “referring to performance.” Defendants’ argument
is not persuasive. While “referencing performance” may be broad, and Defendants may not be able
to now imagine everything that might conceivably fall within the scope of the limitation, the
meaning is not uncertain. The ’284 Patent repeatedly uses “reference” and “referencing” as “refer
to” and “referring to.” See, e.g., ’284 Patent col.30 ll.44–48 (noting various types of
sectors/antennas and stating that software “should first reference this ‘type’ and then choose which
type of [location determining] methods to use”), col.36 ll.25–27 (noting the invention is directed
to “calculating and displaying wireless device locations and wireless network service problems
with reference to related wireless devices on the said wireless network”), col.36 ll.29–32 (noting
the “invention uses a method(s) for locating wireless devices and referencing their location and
performance with wireless network known parameters”), col.36 ll.36–40 (“the present invention
is directed to a computational machine and process for … detecting and referencing wireless
network errors with specific geographical location information of the affected wireless devices”).
Simply, “referencing” is used in the Patent according to its plain and ordinary meaning, “referring
to.”
Accordingly, the Court determines the Defendants have not proven that Claim 1 of the ’284
Patent is indefinite for including “referencing performance.” The Court construes “referencing
performance” as follows:
•
“referencing performance” means “referring to performance.”
27 / 34
F.
“in order to restrict processing of radio frequency signals from at least one of
said at least two wireless devices . . . in order to improve communication with
at least one said wireless device”
Disputed Term
“in order to restrict processing
of radio frequency signals from
at least one of said at least two
wireless devices . . . in order to
improve communication with
at least one said wireless
device”
•
Plaintiff’s Proposed
Construction
not indefinite
Defendants’ Proposed
Construction
indefinite
’284 Patent Claim 1
The Parties’ Positions
Plaintiff submits: It is not appropriate to address indefiniteness in a claim-construction
proceeding. Indefiniteness is an issue for summary judgment. Defendants cannot prove by clear
and convincing evidence that any of the challenged claims “are insolubly ambiguous and no
narrowing construction can be properly adopted.” Dkt. No. 241 at 10–13.
Defendants respond: Plaintiff waived its argument on indefiniteness by not raising an
argument in its opening brief. It is not clear from the claim language which wireless device of the
“at least two wireless devices” is restricted. Further, it is not clear if the restricted device is the same
as the “at least one said wireless device” for which communications are improved. Dkt. No. 244
at 23–24.
Plaintiff replies: It is not required to address indefiniteness until the issue is raised. One skilled
in the art would understand this term. Dkt. No. 249 at 4–5.
28 / 34
Analysis
The issue in dispute is whether the meaning of “in order to restrict processing of radio
frequency signals from at least one of said at least two wireless devices . . . in order to improve
communication with at least one said wireless device” in the claims is reasonably certain. It is not.
The Court rejects Defendants’ argument that the claim is indefinite because it does not
specifically identify which of “at least one of said at least two wireless devices” is the one for
which processing of radio frequency signals is restricted. Such specificity is not required to
understand Claim 1 of the ’284 Patent. There are multiple wireless devices, and the radiofrequency processing for at least one of
them is restricted.
The Court agrees with Defendants,
however, that it is not reasonably certain
which wireless devices experience the
communication improvement stemming
from the restriction. Claim 1 of the ’284
Patent, reproduced here and annotated by
the Court, includes various references to
“said wireless device,” “at least one said
wireless device,” “said at least one wireless
device,” and “at least one of said at least
two wireless devices.” Is the target of the
communicaton improvement one of the
restricted devices? Is it any of the devices?
1. A wireless network comprising:
a) at least two wireless devices, each said wireless
device communicating via radio frequency signals;
b) a first computer programmed to perform the steps
of:
1) locating at least one said wireless device on said
wireless network and referencing performance of
said at least one wireless device with wireless
network known parameters,
2) routinely storing performance data and a
corresponding location for said at least one wireless
device in a memory;
c) a radio tower adapted to receive radio frequency
signals from, and transmit radio frequency signals to
said at least one wireless device; wherein said first
computer further includes means for receiving said
performance data and suggest corrective actions
obtained from a list of possible causes for said radio
tower based upon the performance data and the
corresponding location associated with said at least
one wireless device;
d) wherein said radio tower generates an error code
based upon operation of said at least one wireless
device; and
e) wherein said first computer is further programmed
to,
1) receive said error code from said radio tower, and,
2) selectively suggest a corrective action of said radio
frequency signals of said radio tower in order to
restrict processing of radio frequency signals from at
least one of said at least two wireless devices based
upon said error code, and, whereby said first
computer suggests said corrective action in order to
improve communication with at least one said
wireless device.
29 / 34
Is it one of the unrestricted devices? The answer is unclear because of variation in the bold terms
above. Of these myriad devices, Plaintiff has not offered any meaning for the “at least one said
wireless device” which is the target of the communicaton improvement. At oral argument, Plaintiff
was not able to identify any embodiment described in the ’284 Patent to inform understanding of
Claim 1. Thus, the Court agrees with Defendants that the meaning of the term, and Claim 1 of the
’284 Patent, is not reasonably certain.
Accordingly, the Court holds the Defendants have proven that Claim 1 of the ’284 Patent is
indefinite.
G.
’284 Patent Claim 12
Disputed Term
“A machine and process for
tuning a wireless network,
comprising: . . .”
• ’284 Patent Claim 12
Plaintiff’s Proposed
Construction
not indefinite
Defendants’ Proposed
Construction
Indefinite, as directed to both “[a]
machine and process for tuning a
wireless network,” including
method steps of using the claimed
“machine,” e.g., “wherein a user of
one of said at least two wireless
devices is able to set a no access
flag within the memory of said first
computer.”
The Parties’ Positions
Plaintiff submits: It is not appropriate to address indefiniteness in a claim-construction
proceeding. Indefiniteness is an issue for summary judgment. Defendants cannot prove by clear
and convincing evidence that any of the challenged claims “are insolubly ambiguous and no
narrowing construction can be properly adopted.” Dkt. No. 241 at 10–13.
Defendants respond: Plaintiff waived its argument on indefiniteness by not raising an
argument in its opening brief. Claim 12 is expressly directed to a “machine and process” and is
therefore indefinite as mixing process and apparatus claims. The claim includes both apparatus
limitations (e.g., wireless devices, first computer) and process limitations (communicating via
30 / 34
radio frequency signals, computer corrects the radio frequency signals of the radio tower). Dkt.
No. 244 at 24–25.
Plaintiff replies: Claim 12 is directed to a machine, not a process. The preamble is not limiting
and all the claim limitations are machine elements. Dkt. No. 249 at 5.
Analysis
The issue in dispute is whether Claim 12 of the ’284 Patent is indefinite as improperly directed
to both an apparatus and a process. It is not. In light of Federal Circuit precedent, Claim 12, though
inartfully drafted, is directed solely to a machine.
The preamble’s reference to a “machine and process” is concerning, but not limiting.
“Generally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., 299 F.3d
1336, 1346 (Fed. Cir. 2002). Under Federal Circuit precedent “a preamble is not limiting where a
patentee defines a structurally complete invention in the claim body and uses the preamble only to
state a purpose or intended use for the invention.” Acceleration Bay, LLC v. Activision Blizzard,
Inc., 908 F.3d 765, 770 (Fed. Cir. 2018) (quotiation marks and citations omitted). As set forth in
more detail below, the body of Claim 12 sets forth a structurally-complete invention that is a
machine. The preamble does not provide antecedent basis for any terms in the body of the claim.
The preamble is not essential to understanding the claim’s limitations—which are all directed to
machine structure. And there is no evidence of record that the preamble was used to distinguish
prior art during prosecution of the ’284 Patent. The preamble thus lacks the hallmarks of a limiting
preamble under Federal Circuit precedent. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289
F.3d 801, 808–09 (Fed. Cir. 2002). Ultimately, the preamble’s recitation of a “machine and
process” is not dispositive.
31 / 34
Claim 12, reproduced here and annotated by the Court, recites only machine limitations.
Specifically, the claim recites: (1) at least two wireless devices, (2) a first computer, (3) a radio
tower, and (4) a second computer. The claim also recites functional language referencing the
machine elements, such as “communicating,” “generating,” and “corrects.” The claim further
recites that a “a user . . . is able to set a no access flag.” Under Federal Circuit precedent, the claim
body recites machine elements using functional language to denote structure of the machine rather
than actual operation of the machine.
Active functional language is properly used in apparatus claims to denote capability of the
apparatus. As the Federal Circuit explained in Mastermine Software, Inc. v. Microsoft Corp.,
functional language may properly be used to denote structure of machine elements: “[active] verbs
represent permissible functional language
used to describe capabilities of the [machine
elements].” 874 F.3d 1307, 1315–16 (Fed.
Cir. 2017). The claim at issue in Mastermine
includes “a reporting module” that “presents
a set of user-selectable database fields,”
“receives from the user a selection of one or
more user-selectable database fields,” and
“generates a database query.” Id. at 1315
(emphasis in original). The Federal Circuit
explained that while the claim recited active
verbs—presents, receives, generates—these
“merely claim that the system possesses the
12. A machine and process for tuning a wireless
network, comprising:
a) at least two wireless devices, each said wireless
device communicating via radio frequency signals;
b) a first computer programmed to:
1) routinely identify performance data and a
corresponding location for each of said at least two
wireless devices;
2) routinely store said performance data and said
corresponding location for each of said at least two
wireless devices in a memory;
c) a radio tower adapted to receive said radio
frequency signals from and transmit radio
frequency signals to said at least two said wireless
devices;
d) further including a second computer generating a
status request;
e) wherein a user of one of said at least two wireless
devices is able to set a no access flag within the
memory of said first computer; and
f) wherein said first computer is programmed to
deny the status request from said second computer
if said no access flag is set;
wherein said first computer further includes means
for receiving said performance data and
corresponding locations from said radio tower and
correcting radio frequency signals of said radio
tower, and, whereby said first computer corrects
the radio frequency signals of the radio tower in
order to improve communication with said wireless
devices.
32 / 34
recited structure which is capable of performing the recited functions.” Id. at 1316 (quotation and
modificaton marks omitted). According to Mastermine, Federal Circuit precedent has consistently
approved using functional language to denote machine structure by denoting capability. As
examples of such approval, Mastermine cites Microprocessor Enhancement Corp. v. Tex.
Instruments Inc., 520 F.3d 1367 (Fed. Cir. 2008); HTC Corp. v. IPCom GmbH & Co., KG, 667
F.3d 1270 (Fed. Cir. 2012); and UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816 (Fed. Cir.
2016). Mastermine, 874 F.3d at 1313–16. In Microprocessor Enhancement, claim recitation of a
“logic pipeline stage . . . performing a boolean algebraic evaluation . . . and producing an enablewrite” was deemed “clearly limited to a pipeline processor possessing the recited structure and
capable of performing the recited functions, and is thus not indefinite under IPXL Holdings.”
Mastermine, 874 F.3d at 1315 (emphasis in original, quotation marks omitted). In HTC Corp.,
claim recitation of a “mobile station for use with a network . . . that achieves a handover by: storing
link data . . . holding in reserve for the link resources . . . maintaining a storage of the link data
. . . causing the resources . . . to remain held in reserve . . . deleting the link data . . . and freeing
up the resources” was deemed to “merely establish those functions as the underlying network
environment in which the mobile station operates.” Mastermine, 874 F.3d at 1314–15 (emphasis
in original, quotation marks and modificatons omitted). In Ultimate Pointer, claim recitation of
“an image sensor . . . generating data” was deemed to be “clear that the ‘generating data’ limitation
reflects the capability of that structure rather than the activities of the user, and do not reflect an
attempt to claim both an apparatus and a method, but instead claim an apparatus with particular
capabilities.” Mastermine, 874 F.3d at 1315 (emphasis in original, quotation marks omitted).
The Court understands the functional language in Claim 12 of the ’284 Patent, including
“communicating,” “generating,” and “corrects,” is used in the same manner as the functional
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language in Microprocessor Enhancement, HTC Corp., Ultimate Pointer, and Mastermine: the
language denotes the structure of the machine, not actual use of the machine. And recitation that
“a user . . . is able to set a no access flag” is facially directed to machine capability rather than to
a user actually setting a no access flag using the machine. Simply, the functional language in Claim
12 does not indicate that the claim is directed to both an apparatus and a method. Rather, Claim
12 is directed to an apparatus with particular capabilities. Those capabilities, defined by functional
language, denote structure.
Accordingly, the Court holds the Defendants have not proven that Claim 12 of the ’284 Patent
is indefinite.
V.
CONCLUSION
.
The Court adopts the constructions above for the disputed and agreed terms of the Asserted
Patents. The Court further finds that Claim 1 of the ’284 Patent is invalid as indefinite.
Furthermore, the parties should ensure that all testimony that relates to the terms addressed in this
Order is constrained by the Court’s reasoning. However, in the presence of the jury the parties
should not expressly or implicitly refer to each other’s claim construction positions and should not
expressly refer to any portion of this Order that is not an actual construction adopted by the Court.
The references to the claim construction process should be limited to informing the jury of the
constructions adopted by the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 4th day of January, 2019.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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