Mobility Workx, LLC v T-Mobile US, Inc., et al

Filing 48

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by District Judge Amos L. Mazzant, III on 7/31/2018. (daj, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
MOBILITY WORKX, LLC,
v.
T-MOBILE US, INC., et al.

§
§
§
§
§
§

CIVIL ACTION NO. 4:17-CV-567
Judge Mazzant

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiff Mobility Workx, LLC’s (“Mobility”) Opening Claim
Construction Brief (Dkt. #33), Defendants’ T-Mobile US, Inc., T-Mobile USA, Inc. f/k/a
MetroPCS Communications Inc. and f/k/a MetroPCS Wireless, Inc., and MetroPCS Texas LLC
(“T-Mobile”) Responsive Claim Construction Brief (Dkt. #35), and Plaintiff’s Reply Claim
Construction Brief (Dkt. #36). Also before the Court are the parties’ April 23, 2018 Joint Claim
Construction and Prehearing Statement (Dkt. #30) and the parties’ July 2, 2018 Joint Claim
Construction Chart (Dkt. #38 at Exhibit A). The Court held a claim construction hearing on July
10, 2018, to determine the proper construction of the disputed claim terms in United States Patents
No. 7,697,508 (“the ’508 Patent”) and 8,213,417 (“the ’417 Patent”) (collectively, “the patents-insuit”).
The Court issues this Claim Construction Memorandum Opinion and Order and hereby
incorporates-by-reference the claim construction hearing and transcript as well as the
demonstrative slides presented by the parties during the hearing. For the following reasons, the
Court provides the constructions set forth below.

BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 7,697,508 and
8,213,417. The ’508 Patent, titled “System, Apparatus, and Methods for Proactive Allocation of
Wireless Communication Resources,” issued on April 13, 2010, and bears an earliest priority date
of July 31, 2003. The ’417 Patent is a continuation of the ’508 Patent and issued on July 3, 2012.
Plaintiff submits that the patents-in-suit relate to “reducing registration overhead and setup times
associated with mobile node handoffs.” (Dkt. #33 at p. 2). The Abstracts of the ’508 Patent and
the ’417 Patent are the same and state:
A system for communication between a mobile node and a communications
network is provided for use with a communications network having one or more
communications network nodes that define a foreign agents [sic] and that
communicate with the mobile node in a predefined region. The system includes a
ghost-foreign agent that advertises a foreign agent so that the mobile node is aware
of the foreign agent when the mobile node is located outside the predefined region.
The system further includes a ghost-mobile node that signals the foreign agent in
response to the foreign agent advertising and based upon a predicted future state of
the mobile node.
LEGAL STANDARD
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and
technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
Cir. 1997). When the parties dispute 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).
“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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the
patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns
2

Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest
of the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl. Network
Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as
understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at
1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314.
“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other
claims, asserted and unasserted, can provide additional instruction because “terms are normally
used consistently throughout the patent.” Id. Differences among claims, such as additional
limitations in dependent claims, can provide further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. at 1315
(quoting Markman, 52 F.3d at 979). “[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). In the
specification, a patentee may define his own terms, give a claim term a different meaning than it
would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316.
Although the Court generally presumes terms possess their ordinary meaning, this presumption
can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). This presumption does not
arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite
Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).

3

The specification may also resolve ambiguous claim terms “where the ordinary and
accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. For example, “[a]
claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely,
if ever, correct.’” Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381
(Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, “[a]lthough the specification may aid
the court in interpreting the meaning of disputed language in the claims, particular embodiments
and examples appearing in the specification will not generally be read into the claims.” Constant
v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d
at 1323.
The prosecution history is another tool to supply the proper context for claim construction
because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v.
LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent”). The well-established doctrine of prosecution
disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
Cir. 2003). “Indeed, by distinguishing the claimed invention over the prior art, an applicant is
indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–
79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim interpretation, prosecution
disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s
reliance on definitive statements made during prosecution.” Omega Eng’g, 334 F.3d at 1324.
However, the prosecution history must show that the patentee clearly and unambiguously
disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance.

4

Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute
disclaimer of scope only if they are “clear and unmistakable statements of disavowal.” See Cordis
Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An “ambiguous disavowal”
will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir.
2010) (citation omitted).
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the
relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help the Court understand the underlying technology and the manner in which one skilled in
the art might use claim terms, but such sources may also provide overly broad definitions or may
not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may
aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful.” 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 of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require 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.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120.

5

ANALYSIS1
Agreed Claim Terms
The parties submitted the following agreements in their April 23, 2018 Joint Claim
Construction and Prehearing Statement (Dkt. #30) and their July 2, 2018 Joint Claim Construction
Chart (Dkt. #38 at Exhibit A), which the Court hereby adopts as agreed-upon:
Term

Agreed Construction

“mobile node”

Plain and ordinary meaning

(’508 Patent, Claims 1, 2;
’417 Patent, Claims 1, 4, 7)
“proxy element”

Plain and ordinary meaning

(’417 Patent, Claim 4)
“the ghost-foreign agent is responsive to . . . Plain and ordinary meaning
a predetermined threshold”
(’508 Patent, Claim 5)

Plaintiff states in its reply brief: “Plaintiff objects to Defendants’ use of Dr. Helal’s, Dr. Hernandez’s, and Mr.
Blackburn’s deposition transcripts as they are unauthenticated. Defendants’ citation to certain excerpts of deposition
testimony in their Responsive Claim Construction brief is improper, as the deposition transcripts have not been signed
as of this filing, and are still being reviewed by the aforementioned.” (Dkt. #36 at p. 2 n.1). Plaintiff has not filed a
motion to strike, so there is no pending motion upon which the Court could rule. To whatever extent Plaintiff’s
“object[ions]” are proper, Plaintiff’s requests are: (1) denied as moot as to Dr. Helal and Dr. Hernandez, because the
Court has not herein relied upon the deposition transcripts as to Dr. Helal or Dr. Hernandez; and (2) denied as to Mr.
Blackburn because, if for no other reason, Plaintiff has itself submitted and cited portions of Mr. Blackburn’s
deposition transcript (see Dkt. #33 at Exhibit 3C; see also Dkt. #33 at pp. 17, 21, 28 & 29). Plaintiff also states that
it “objects to Defendants’ reference to any Exhibits included in its Responsive Claim Construction Brief, as
unauthenticated to the extent possible.” (Dkt. #36 at p. 2 n.1). This purported objection is improper as it does not
identify any specific evidence or any particular basis for objection. Finally, Plaintiff argues that the declaration
submitted by Defendants’ counsel as to the exhibits attached to Defendants’ response brief “is not in compliance with
28 U.S.C. § 1746, because it is not signed under penalty of perjury.” (Dkt. #36 at p. 2 n.1). Even if the affidavit were
stricken, however, Plaintiff has not demonstrated that the exhibits attached to Defendants’ brief should necessarily be
stricken, including, perhaps most notably, the separately signed declaration of Defendants’ expert. (See Dkt. #35,
Exhibit C at p. 49). Also, Defendants have filed an amended declaration with no opposition by Plaintiff. (See Dkt.
#42; see also Dkt. #41.) Thus, to whatever extent Plaintiff is maintaining proper objections to Defendants’ exhibits,
any such objections are denied.
1

6

“the ghost-mobile node triggering signals Plain and ordinary meaning
based on a predicted physical location of such
mobile node or distance with relation to the at
least one foreign agent”
(’417 Patent, Claim 1)
“at least one advertisement message from a Plain and ordinary meaning
foreign agent in a vicinity of the ghost-mobile
node”
(’417 Patent, Claim 4)
“the at least one ghost-mobile node triggering Plain and ordinary meaning
registration based on a distance to a foreign
agent by relaying security and shared secrets
from a mobile node”
(’417 Patent, Claim 4)

(Dkt. #30 at p. 2).
Disputed Claim Terms
A. “ghost mobile node” (’508 Pat., Cls. 1, 2; ’417 Pat., Cls. 1, 4, 7)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“virtual node that can act on behalf of the “a node operating on behalf of the mobile node
mobile node including software instructions that is capable of registering with a foreign
running on a device”2
agent and allocating resources for the mobile
node before the mobile node arrives in the
coverage area of the foreign agent”3
(Dkt. #33 at p. 9; Dkt. #35 at p. 5; Dkt. #38, Exhibit A at p. 2).

Plaintiff previously proposed: “a virtual node including software instructions running on a device that contains a
transceiver for communicating with the mobile node.” (Dkt. #30 at p. 3).
3
Defendants previously proposed: “a virtual node operating on behalf of the mobile node that is capable of registering
with a foreign agent and allocating resources for the mobile node before the mobile node arrives in the coverage area
of the foreign agent.” (Dkt. #30 at p. 3 (emphasis added)).
2

7

1. The Parties’ Positions
Plaintiff argues that whereas Plaintiff’s proposal “reflects the clear teaching of the
specification,” “Defendants’ proposed construction improperly imports limitations from the file
history into the claims that would render other elements recited in the claims superfluous.” (Dkt.
#33 at p. 9).
Defendants respond that “Plaintiff’s proposal describes a generic node that could apply to
any and every node on a network” and “ignores what is described in the four corners of the patentsin-suit.” (Dkt. #35 at p. 5). Defendants also argue that their proposal “comes directly from
statements the applicants had to make during prosecution to gain allowance of the claimed subject
matter.” (Dkt. #35 at p. 5).
Plaintiff replies by reiterating that a ghost mobile node may be virtual, and “there is nothing
to preclude a virtual co-location with the mobile node.” (Dkt. #36 at p. 3). Plaintiff also argues
that the prosecution history cited by Defendants contains no clear and unmistakable disavowal of
claim scope. (Dkt. #35 at p. 4).
2. Analysis
Claim 1 of the ’508 Patent, for example, recites (emphasis added):
1. A system for handling mobile devices in a wireless communications network,
the system comprising:
a mobile node communicatively linked to the wireless communications
network, wherein the mobile node has a corresponding geographical current state
and one or more predicted geographical future states;
at least one foreign agent identified for each of the geographical future
states;
at least one ghost mobile node associated with the mobile node, wherein
said ghost mobile node can announce to said foreign agent the presence of said
ghost mobile node;
a ghost-foreign agent associated with said foreign agent, wherein said ghost
foreign agent can announce to said mobile node or said ghost mobile node
associated with the mobile node, the presence of said ghost foreign agent;

8

means for registering said ghost mobile node or mobile node with the
associated ghost foreign agent or foreign agent, while the mobile node remains in
the geographical current state; and
means for linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future
state associated with said foreign agent.
Plaintiff has pointed out that the claim separately recites a “means for registering said ghost
mobile node,” but Defendants’ proposal does not require that the ghost mobile node must register
itself. Instead, Defendants’ proposal merely requires that the ghost mobile node must be capable
of registering before the mobile node arrives in the coverage area of the foreign agent.
The issue, then, is whether the intrinsic record contains any definition or disclaimer that
warrants Defendants’ proposed capability, in particular as to “before the mobile node arrives in
the coverage area of the foreign agent.” As a general matter, the specification can be considered
“to understand what the patentee has claimed and disclaimed.” SafeTCare Mfg., Inc. v. Tele-Made,
Inc., 497 F.3d 1262, 1270 (Fed. Cir. 2007) (“The inventor makes clear that this attribute of the
invention is important in distinguishing the invention over the prior art.”); see, e.g., Regents of the
Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) (“When a patent . . .
describes the features of the ‘present invention’ as a whole, this description limits the scope of the
invention.”) (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed.
Cir. 2007)).
The Summary of the Invention states that:
The present invention provides a preemptive and predictive solution for
communications in wireless communications networks. More particularly, the
present invention provides two different types of ghost-entities that can be used
individually or jointly in setting up a wireless connection between a mobile node
and a foreign agent. The ghost entities can act on behalf of a wireless node and a
foreign agent. They can determine and use predicted information to improve the
performance of wireless communications, especially those involving a mobile node
moving at moderate or high speeds. As explained herein, the ghost entities cause

9

communication network resources to be allocated proactively rather than
reactively.
***
The ghost-mobile node can be configured to register the mobile node and allocate
resources for communicating with the mobile node according to a predicted future
state of the mobile node.
’508 Patent at 2:47–48 & 2:57–61 (emphasis added). The specification further discloses:
[T]he ghost-mobile node and the ghost-foreign agent, operating either individually
or jointly, can cause network communication resources to be allocated
preemptively rather than passively as in conventional communications networks in
which handoffs typically only follow an exchange of setup information following
a mobile node’s arrival in the physical region covered by the foreign agent.
Id. at 4:8–14; see id. at 6:19–26 (“the ghost-mobile node can be a virtual node and need not reside
at the same physical location as the mobile node 250”; “The ghost-mobile node 220, for example,
can be set [sic] of software instructions running on a device that is remote from the mobile node
250 and that contains a transceiver for communicating with the mobile node.”); see also id. at
3:60‒66.
The signal from the ghost-mobile node 220 results in a preemptive setup, one that
is effected before the mobile node 250 arrives in the predefined area of coverage
of the next foreign agent. The setup can entail all the aspects that occur in the
beginning phase of a standard network connection negotiation including the
negotiation of protocol details, communication rates, and error-handling
approaches. These are needed to allow the connection to proceed correctly and
reliably, but absent the participation of the ghost-mobile node 220 would have to
await the arrival of the mobile node 250 in the predefined region covered by the
foreign agent 215, 230.
Accordingly, the ghost-mobile node 220 can increase the speed with which handoff
occurs, thereby reducing setup delay and avoiding information loses [sic] due to the
dropping of datagram packets. The ghost-mobile node 220 can replicate the
registration request, handle the creation of tunnels, and replicate authentication and
authorization information from the mobile node 250, thus acting on behalf of the
mobile node 250 before the mobile node is in range of a next foreign agent 215,
230. . . . When the mobile node 250 leaves one foreign agent 215 and moves into
the vicinity of the next foreign agent 230, registration will have already taken place

10

and resources will already have been allocated for connecting the mobile node to
the communication network.
Id. at 9:57–10:16 (emphasis added).
Although disclosures in the specification are thus consistent with Defendants’ proposed
construction, Defendants have not shown how any disclosure in the specification rises to the level
of a definition or disclaimer. See Phillips, 415 F.3d at 1323 (“although the specification often
describes very specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments”). The Court therefore turns to the prosecution history
that has been discussed by the parties.
During prosecution of the ’508 Patent, the patentee argued as follows regarding United
States Patent Application Publication No. 2003/0016655 (“Gwon”):
Applicants emphasize the distinction between the ghost mobile nodes and mobile
nodes of the present invention. The Examiner rejected the ghost mobile node,
regardless of its physical embodiment, since it is “a virtual node or a set of software
instructions running on the mobile node itself.” The fact that the ghost mobile node
could be a virtual node is not relevant to the operative role of the ghost mobile node
as opposed to the mobile node. An estimated location of the mobile node based on
GPS data can be utilized along with trajectory and speed information of the mobile
node to predict the future geographical state. Based on a predicted future state,
one or more ghost mobile nodes can be created that are capable of representing the
mobile node, and fulfilling actions traditionally requiring the physical presence of
the mobile node, namely registering and allocating communication resources. The
ghost mobile node is capable of registering and allocating communication resources
before the mobile node physically arrives in a geographical state.
(Dkt. #35, Exhibit E, Apr. 6, 2009 Response to Office Action at p. 12 (emphasis in original)); see
id. at p. 11 (noting that, in Gwon, “[t]he new local router can respond ‘directly to the mobile node’
with a router advertisement message”).
Plaintiff has submitted that “[i]t is not necessary that each claim read on every
embodiment.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
(Fed. Cir. 2016) (quoting Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir.
11

2010)). Plaintiff has argued, in its reply brief, that there was no clear and unmistakable disavowal
of claim scope:
At a minimum, Applicant’s statement that “[t]he ghost mobile node is capable of
registering and allocating communication resources” is ambiguous in its relation to
other claims in the patent, because (1) those functions are attributed to other
elements in the claim and dependent claims; (2) multiple embodiments are
disclosed in the specification, supported by expert testimony; and (3) then-pending
Claim 17 is copied in its entirety in the OAR [(office action response)] to frame the
scope of the discussion.
(Dkt. #36 at p. 4; see id. at p. 6 (“the file history only states what one or more embodiments of a
ghost mobile node ‘are capable of,’ not required”). At the July 10, 2018 hearing, Plaintiff cited
authority that “where the alleged disavowal is ambiguous, or even amenable to multiple reasonable
interpretations,” there is no disclaimer. Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045
(Fed. Cir. 2016) (citation and internal quotation marks omitted).
But whereas Plaintiff has argued that these statements were not made with reference to the
claimed invention as a whole, this prosecution history refers to “[t]he present invention, as
amended in the independent claims.” (Dkt. #35, Exhibit E, Apr. 6, 2009 Response to Office Action
at p. 11). Further, whereas Plaintiff has stressed that parts of the prosecution statements cited by
Defendants refer to language from a different claim, these statements conclude by explicitly
referring to Claim 1 and the other claims:
Applicants therefore respectfully submit that amended Claim 1 defines over the
prior art. Furthermore, as each of the remaining claims depends from Claim 1 while
reciting additional features, Applicants further respectfully submit that the
remaining claims likewise define over the prior art.
(Dkt. #35 at p. 12).
Plaintiff has failed to persuasively show how this prosecution history could be read as
confining the patentee’s statements to only one particular claim.

12

Thus, on balance, the patentee definitively stated that “[t]he ghost mobile node is capable
of registering and allocating communication resources before the mobile node physically arrives
in a geographical state.” (Id. (emphasis omitted); see, e.g., Omega Eng’g, 334 F.3d at 1324 (“As
a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
function of the intrinsic evidence and protects the public’s reliance on definitive statements made
during prosecution.”); Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir.
2011) (“The patentee is bound by representations made and actions that were taken in order to
obtain the patent.”)). This understanding is consistent with the above-reproduced disclosures,
particularly in the Summary of the Invention.
This prosecution disclaimer applies not only to the ’508 Patent but also to the continuation
’417 Patent. See, e.g., Omega Eng’g, 334 F.3d at 1333 (“As long as the same claim limitation is
at issue, prosecution disclaimer made on the same limitation in an ancestor application will
attach.”); SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where
multiple patents derive from the same parent application and share many common terms, we must
interpret the claims consistently across all asserted patents.”) (citation and internal quotation marks
omitted).
Nonetheless, Plaintiff has demonstrated that a ghost mobile node can be a “virtual” node.
(See Dkt. #35, Exhibit E, April 6, 2009 Response to Office Action at p. 12 (“the ghost mobile node
could be a virtual node”)); see also ’508 Patent at 6:19–26 (“the ghost-mobile node can be a virtual
node and need not reside at the same physical location as the mobile node 250”) (emphasis added)
& 11:19‒23 (“a basis of the proactive allocation of communication resources for a stationary or
moving mobile node is the virtual instantiation of the ghost-mobile node in at least one additional
wireless network node proximate to the predicted future location of the mobile node”) (emphasis

13

added). At the July 10, 2018 hearing, Defendants were amenable to construing this disputed term
to be a node or a virtual node.
Plaintiff has also argued that Defendants’ proposed construction is incorrect because a
ghost mobile node cannot allocate resources by itself. See, e.g., ’508 Patent at Cl. 3 (“wireless
communications network can allocate communications network resources”). Defendants have
responded, however, that their proposed construction “does not impose that the ghost mobile node
by itself performs the registration and allocation of resource functions.” (Dkt. #35 at p. 10).
Finally, as to Defendants’ proposal of “coverage area,” Plaintiff’s expert has opined that
the phrase “coverage area” could create confusion because there may be “areas within the coverage
area that really aren’t covered.” (Dkt. #33, Exhibit 3C, May 18, 2018 Blackburn dep. at 95:22‒
98:21). The specification refers to a region “covered by” the particular foreign agent. ’508 Patent
at 9:19‒20. At the July 10, 2018 hearing, Defendants submitted that “coverage area” and “region
covered by” are synonymous for purposes of the patents-in-suit.
The Court therefore hereby construes “ghost mobile node” to mean “a node, or a virtual
node, that can operate on behalf of the mobile node and that is capable of registering with a
foreign agent and allocating resources for the mobile node before the mobile node arrives in
the physical area covered by the foreign agent.”
B. “foreign agent” (’508 Pat., Cls. 1, 5; ’417 Pat., Cls. 1, 4, 7)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a general purpose computer including “a network node on a visited network that
specialized routing software for relaying assists the mobile node in receiving
communication transmissions”
communications delivered to a care-of
address”
(Dkt. #30 at p. 3; Dkt. #33 at p. 14; Dkt. #35 at p. 12; Dkt. #38, Exhibit A at p. 2).

14

1. The Parties’ Positions
Plaintiff argues that its proposal “is taken directly from the specification of the
Patents-in-Suit.” (Dkt. #33 at p. 15 (citing ’508 Patent at 4:45‒49)). Plaintiff argues that
Defendants’ proposal, by contrast, “improperly imports limitations from the specification into the
claims.” (Dkt. #33 at p. 15).
Defendants respond that “Defendants’ construction is consistent with what the term means
to a person of ordinary skill in the art, whereas Plaintiff’s definition encompasses any general
computing device that performs a routing function.” (Dkt. #35 at p. 12).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
The Background section of the specification states:
Mobile IP allows a mobile node to use two IP addresses, one being a fixed home
address and the other being a care-of address. The care-of address changes as the
mobile node moves between networks thereby changing its point of attachment to
a network.
’508 Patent at 1:44‒48. Yet, no “care-of address” limitation appears in the claims here at issue.
See id. at Cls. 1, 5; see also ’417 Patent at Cls. 1, 4 & 7. Also, as Plaintiff has pointed out, Claims
6 and 8 of the ’417 Patent explicitly recite a “care-of-address” (emphasis added):
6. The system of claim 1, wherein the at least one ghost-foreign agent populates
mobile IP Advertisement messages with at least one care-of-address of neighboring
foreign agents in order to extend the range of neighboring foreign agents.
***
8. A method, comprising the steps of:
creating, in a network, a plurality of ghost foreign agents corresponding to
a foreign agent, the ghost foreign agents configured to replicate mobile
advertisements of the foreign agent, the mobile advertisements including at least
one of: an IP address of the foreign agent, a care-of-address of the foreign agent,
and at least one mobile IP registration, the ghost foreign agents created at a distance
surrounding the foreign agent;
15

detecting, in a mobile node, the foreign agent in the network;
receiving, in the mobile node, an advertisement message corresponding to
the foreign agent from one of the ghost foreign agents;
registering, in the mobile node, with the foreign agent through the ghost
foreign agent; and
broadcasting advertisement messages from the plurality of ghost foreign
agents to the mobile node to extend a reach of the foreign agent, wherein a distance
from the mobile node to one of the ghost foreign agents is less than the distance
from the mobile node to the foreign agent.
Defendants have argued that the specification demonstrates that the patentee used the term
“foreign agent” according to its meaning in the relevant art in the Mobile IPv4 protocol. The
Background section of the specification states:
What is generally needed for such architectures to function adequately is some way
for the mobile node to let other nodes know where the mobile node can be reached
while the host is moving or located away from home. In accordance with a typical
mobile networking protocol, a mobile node registers with a home agent so that the
home agent can remain a contact point for other nodes that wish to exchange
messages or otherwise communicate with the mobile node as it moves from one
location to another. An example of such a protocol is Mobile Internet Protocol
(Mobile IP). Mobile IP allows a mobile node to use two IP addresses, one being a
fixed home address and the other being a care-of address. The care-of address
changes as the mobile node moves between networks thereby changing its point of
attachment to a network. When the mobile node links to a network other than one
in which the home agent resides, the mobile node is said to have linked to a foreign
network. The home network provides the mobile node with an IP address and once
the node moves to a foreign network and establishes a point of attachment, the
mobile node receives a care-of address assigned by the foreign network.
Mobile IP v. 4 depends on the interaction between a home agent and foreign agents,
the foreign agents serving as wireless access points distributed throughout a
coverage area of a network or an interconnection of multiple networks.
’508 Patent at 1:35–59; see id. at 5:28–38 (“the foreign agents 210, 215, 230 assist the mobile node
250 in receiving datagrams delivered to the care-of address”).
No definition or disclaimer is apparent that would require a foreign agent to necessarily
use a “care-of address.” Instead, this is a specific feature of particular embodiments that should
not be imported into the claims. See Phillips, 415 F.3d at 1323.

16

Nonetheless, Defendants properly criticize Plaintiff’s proposed construction as
encompassing home agents as well as foreign agents. Plaintiff’s expert has acknowledged that
Plaintiff’s proposed construction might encompass any type of router. (See Dkt. #35, Exhibit J,
May 18, 2018 Blackburn dep. at 52:16–53:10). The patents-in-suit, by contrast, distinguish
between home agents and foreign agents. See, e.g., ’508 Patent at Cls. 6 & 8 (reciting a “home
agent”); ’417 Patent at Cl. 1 (reciting “at least one home agent” and “at least one foreign agent”);
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
(“[w]here a claim lists elements separately, the clear implication of the claim language is that those
elements are distinct component[s] of the patented invention”) (citations and internal quotation
marks omitted). The above-reproduced disclosure, for example, likewise reinforces that there is a
distinction between home agents and foreign agents. See ’508 Patent at 1:35–59. Additional
disclosure cited by Plaintiff, as to foreign agents being implemented by software or by specialpurpose hardware, does not compel otherwise. See id. at 4:45‒49.
The Court therefore hereby construes “foreign agent” to mean “a network node on a
visited network that assists the mobile node in receiving communications.”
C. “ghost-foreign agent” (’508 Pat., Cls. 1, 5; ’417 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a virtual computer including specialized
routing software for relaying communication
transmissions, acting on behalf of a foreign
agent”

“a virtual node corresponding to a foreign
agent that can make a mobile node aware of the
corresponding foreign agent’s presence in a
communication network before the mobile
node actually arrives in the physical region
covered by the foreign agent”

(Dkt. #30 at p. 3; Dkt. #33 at p. 15; Dkt. #35 at p. 15; Dkt. #38, Exhibit A at p. 2).

17

1. The Parties’ Positions
Plaintiff argues that its proposal “is taken directly from the specification, relying on the
specification’s discussion of a foreign agent combined with the disclosure from the specification
for ghost entities.” (Dkt. #33 at p. 16 (citing ’508 Patent at 2:42‒54 & 4:45‒49)).
Defendants respond that “Plaintiff’s construction fails to acknowledge that the purpose of
the ghost foreign agent in the alleged invention is to make a mobile node aware of a corresponding
foreign agent’s presence in a communication network before the mobile node actually arrives in
the physical region covered by the foreign agent.” (Dkt. #35 at pp. 15–16). Further, Defendants
argue: “Plaintiff’s construction also injects unnecessary ambiguity, since it is unclear what
constitutes ‘acting on behalf of a foreign agent.’ Arguably, any intermediate network node acts
on behalf of a foreign agent by, for example, relaying messages to and from the foreign agent.”
(Dkt. #35 at pp. 15–16).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
The specification discloses:
[E]ach of the network nodes defining the foreign agents 210, 215, 230 can be
general purpose computers on which is running specialized routing software, or
alternately, application-specific devices such as routers for relaying communication
transmissions.
Id. at 4:45–49. This disclosure, cited by Plaintiff, does not refer to “ghost” foreign agents, and
Plaintiff’s reliance on this disclosure is unpersuasive. Nonetheless, the parties agree that a “ghostforeign agent” can be “virtual.” See also id. at 11:9–31.
The Summary of the Invention states:
[T]he present invention provides two different types of ghost-entities that can be
used individually or jointly in setting up a wireless connection between a mobile

18

node and a foreign agent. The ghost entities can act on behalf of a wireless node
and a foreign agent.
***
Another aspect of the present invention includes a network node pair that includes
a foreign agent and a ghost-foreign agent. The ghost-foreign agent can be
configured to provide an advance notification to the mobile node of a presence of
a next wireless network node proximate to the predicted future location of the
mobile node. In particular, a ghost-foreign agent corresponding to a second foreign
agent can make the mobile node aware of the presence of the second foreign agent
by signaling an advertisement to the mobile node from a first foreign agent.
’508 Patent at 2:44–48 & 3:1–10 (emphasis added).
At first blush, this disclosure of how a ghost-foreign agent “can be configured” might be
read as referring to merely one possible implementation. In context, however, this statement
regarding the “present invention,” which appears in the Summary of the Invention, amounts to a
disclosure of what the ghost-foreign agent necessarily can do. In other words, in light of this
context, the patentee set forth this functionality as a required capability. See, e.g., VirnetX, Inc. v.
Cisco Sys., Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014); C.R. Bard, Inc. v. U.S. Surgical Corp., 388
F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole, rather than
statements that describe only preferred embodiments, are more likely to support a limiting
definition of a claim term. . . . Statements that describe the invention as a whole are more likely to
be found in certain sections of the specification, such as the Summary of the Invention.”).
Additional disclosure in the specification is consistent with this understanding:
Referring still to FIGS. 2A and 2B, each of the network node pairs 204a, 204b
further includes ghost-foreign agents 225, 240 in addition to network nodes
defining foreign agents 215, 230. A ghost-foreign agent 225, 240 transmits an
advertisement notifying the mobile node 250 of the existence of a next foreign agent
230, transmitting the advertisement from a foreign agent 215 currently connected
with the mobile node 250. That is, the ghost-foreign agent 225 advertises a first
foreign agent 230 but does so using a second foreign agent 215. Thus, the
advertisement of foreign agent 230 by its ghost-foreign agent 225 is able to reach
the mobile node 250 while the mobile node is in the predefined region covered by
19

foreign agent 215. Therefore, the ghost-foreign agent 225 makes the mobile node
aware of the foreign agent 230 before it arrives in the predefined region covered by
the foreign agent.
’508 Patent at 10:17–32; see id. at 3:66–4:18; see also id. at 11:1–31.
Finally, as to Defendants’ proposal of “before the mobile node actually arrives in the
physical region covered by the foreign agent,” Defendants have not presented any prosecution
history disclaimer argument for this term or any other persuasive justification for this limitation.
The construction of “ghost-foreign agent” therefore differs from the construction of “ghost mobile
node” in this regard. The proper construction is apparent from the above-discussed statements in
the Summary of the Invention.
The Court therefore hereby construes “ghost-foreign agent” to mean “a virtual node
corresponding to a foreign agent that can make a mobile node aware of the corresponding
foreign agent’s presence in a communication network proximate to the predicted future
location of the mobile node.”
D. “geographical current state” (’508 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“region served by a base station, in which the “coverage area of an agent through which the
mobile node is linked to the wireless network”4 mobile node linked to the network at its current
location”5
(Dkt. #33 at p. 16; Dkt. #35 at p. 16).
Plaintiff submitted that its proposal “uses the term ‘region’ to avoid ambiguous situations,
e.g., where ‘coverage areas’ overlap.” (Dkt. #33 at p. 16). Plaintiff also argued that “Defendants’

Plaintiff previously proposed: “region in which it is optimal, based upon predetermined thresholds, to communicate
with a particular base station.” (Dkt. #30 at p. 3).
5
Defendants previously proposed: “coverage area of an agent through which the mobile is linked to the network at its
current location.” (Dkt. #30 at p. 3).
4

20

proposed construction uses marketing jargon commonly used in advertisements that could confuse
the jury.” (Dkt. #33 at p. 17).
Defendants responded that “[u]nder Plaintiff’s revised construction, there does appear to
be a meaningful dispute as Defendants contend that the terms ‘regions served by’ and ‘coverage
area of’ (and similar coverage or covered-related terms) mean the same thing and refer to an area
where a mobile node can detect advertisement messages (or beacon signals) from the foreign
agent.” (Dkt. #35 at p. 17). Read in context, Defendants’ statement that “there does appear to be
a meaningful dispute” seems to have been intended to state that there does not appear to be a
meaningful dispute. (Dkt. #35 at p. 17).
Plaintiff has replied:
Upon further consideration of Defendants’ proposed construction, and in an effort
to reduce the issues before the Court, Mobility is willing to agree to Defendants’
proposed construction of this term, without agreeing with Defendants’
argument/evidence in support thereof. Mobility expressly reserves the right to
provide argument/evidence supporting this proposed construction, as necessary.
Accordingly, Mobility withdraws its construction and accepts Defendants’
construction for this term.
(Dkt. #36 at p. 6). In the parties’ July 2, 2018 Joint Claim Construction Chart, the parties
confirmed their agreement in this regard. (Dkt. #38, Exhibit A at p. 1).
In light of this agreement between the parties as to how this term should be construed, the
Court hereby construes “geographical current state” to mean “coverage area of an agent
through which the mobile node is linked to the network at its current location.”

21

E. “[predicted] geographical future state(s)” (’508 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“coverage area(s) in which it will be optimal, “coverage area of a foreign agent in which the
based upon predetermined thresholds, to mobile node is predicted to be located at a
communicate with a particular agent”6
time(s) in the future”
(Dkt. #30 at p. 3; Dkt. #33 at p. 17; Dkt. #35 at p. 18; Dkt. #38, Exhibit A at p. 1).
1. The Parties’ Positions
Plaintiff argues that whereas its proposal “reflects the clear teaching of the specification,”
Defendants’ proposal “fails to account for the manner in which the future geographical states are
predicted, instead choosing to simply restate the ‘prediction’ limitation.” (Dkt. #33 at p. 18).
Defendants respond that their proposal “is simply an extension of their proposal for
‘geographical current state’ with respect to a coverage area of (or region served by) a foreign agent
and accounts for the manner in which future states are predicted.” (Dkt. #35 at p. 18). Defendants
also argue that “Plaintiff’s construction is not tied to the specification, adds uncertainty to the scope
of the claim, and fails to account for the prediction of a future location.” (Dkt. #35 at p. 18).
Plaintiff replies that Defendants admit that parameters such as trajectory, speed, location,
and signal strength may be used, and “Defendants admit that the concept of optimality is firmly
embedded within the specification.” (Dkt. #36 at p. 7). Plaintiff also argues that “multiple
coverage areas must be contemplated, because, as the mobile node travels, these parameters
change,” and “signals from multiple foreign agents in multiple coverage areas may be received
and optimality determined.” (Dkt. #36 at p. 7).

Plaintiff previously proposed: “[predicted] region(s) in which it will be optimal, based upon predetermined
thresholds, to communicate with a particular base station.” (Dkt. #30 at p. 3; Dkt. #33 at p. 17).
6

22

2. Analysis
Claim 1 of the ’508 Patent recites (emphasis added):
1. A system for handling mobile devices in a wireless communications network,
the system comprising:
a mobile node communicatively linked to the wireless communications
network, wherein the mobile node has a corresponding geographical current state
and one or more predicted geographical future states;
at least one foreign agent identified for each of the geographical future
states;
at least one ghost mobile node associated with the mobile node, wherein
said ghost mobile node can announce to said foreign agent the presence of said
ghost mobile node;
a ghost-foreign agent associated with said foreign agent, wherein said ghost
foreign agent can announce to said mobile node or said ghost mobile node
associated with the mobile node, the presence of said ghost foreign agent;
means for registering said ghost mobile node or mobile node with the
associated ghost foreign agent or foreign agent, while the mobile node remains in
the geographical current state; and
means for linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future
state associated with said foreign agent.
As to whether the construction should include “predicted,” the recital of “one or more
predicted geographical future states” provides antecedent basis for “the geographical future states”
and “respective geographical future state.” The word “predicted” therefore applies to all of these
uses of the disputed term (even where the word “predicted” is not expressly recited). As to whether
the word “predicted” should itself be used in the construction, Plaintiff has not demonstrated that
the patentee gave any special meaning to this word. See ’508 Patent at 7:11‒12 (“Any of a variety
of different location prediction techniques can be used by the ghost-mobile node 220.”). The
Court’s construction can therefore include this word. See U.S. Surgical, 103 F.3d at 1568 (“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.”); see also O2 Micro, 521 F.3d at

23

1362 (“[D]istrict courts are not (and should not be) required to construe every limitation present
in a patent’s asserted claims.”).
The specification demonstrates that this disputed term refers to a location within a wireless
communications network:
The future state can be a physical state such as the location of the mobile node 250,
and the prediction can be the time that the mobile node will be in the predefined
region served by the foreign agent 215. Accordingly, the predicted future state of
the mobile node 250 can based, for example, upon the trajectory of the mobile node
or upon its speed. Alternately, the predicted future state of the mobile node 250
can be based upon an estimated location of the mobile node.
***
Based upon the predicted future state of the mobile node 250, the ghost-mobile
node 220 can determine which foreign agent 210, 215, 230 is likely to serve as the
mobile node’s next communicative link.
’508 Patent at 6:39–47 & 8:61–64; see id. at 2:64–65 (“the ghost-mobile node can be configured
to predict the future location of the mobile node”); see also id. at 1:44–48 (“point of attachment to
a network”). Similarly, the patentee stated during prosecution:
An estimated location of the mobile node based on GPS data can be utilized along
with trajectory and speed information of the mobile node to predict the future
geographical state. . . . The ghost mobile node is capable of registering and
allocating communication resources before the mobile node physically arrives in a
geographical state.
(Dkt. #35, Exhibit E, Apr. 6, 2009 Response to Office Action at p. 12 (emphasis in original)).
Plaintiff’s argument that “multiple coverage areas must be contemplated” (Dkt. #36 at p. 7)
is at odds with this above-discussed evidence, which refers to a particular location or a particular
foreign agent, and is also at odds with the disputed term itself, at least in the instance in which the
term refers to a “state,” singular, rather than plural states.
Finally, Plaintiff has failed to provide adequate support for its proposal of “optimal.” See
’508 Patent at 8:45–54 (disclosure regarding “find[ing] a closest foreign agent”). Likewise,
24

Plaintiff has failed to provide adequate support for its proposal of using “thresholds,” which at best
merely relates to specific features of particular embodiments that should not be imported into the
claims. See id. at 8:44–54; see also Phillips, 415 F.3d at 1323.
The Court therefore hereby construes “[predicted] geographical future state” to mean
“coverage area, within a wireless communications network, in which the mobile node is
predicted to be able to be linked to the wireless communications network at a time in the
future.”
F. “at least one foreign agent identified for each of the geographical future states” (’508
Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“at least one foreign agent whose coverage
area is determined to include the mobile node’s
(subject to disputed constructions of “foreign predicted future location(s)”
agent” and “geographical future states”)7
Plain and ordinary meaning

(Dkt. #30 at p. 3; Dkt. #33 at p. 20; Dkt. #35 at pp. 20–21; Dkt. #38, Exhibit A at p. 1).
1. The Parties’ Positions
Plaintiff argues that whereas its proposal “reflects the clear teaching of the specification,”
Defendants’ proposal “improperly includes an additional ‘determined to include’ step.” (Dkt. #33
at p. 20).
Defendants respond that “‘identified for’ is a dynamic verb phrase that describes an active
step of identification.” (Dkt. #35 at p. 21). Defendants also cite the specification as well as
inventor testimony. (Dkt. #35 at p. 21).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).

Plaintiff previously proposed: “general purpose computer including specialized routing software for relaying
communication transmissions identified for each of the [predicted] region(s) in which it will be optimal, based upon
predetermined thresholds, to communicate with a particular base station.” (Dkt. #30 at p. 3).
7

25

2. Analysis
As a threshold matter, Defendants have cited inventor testimony,8 but such testimony is of
little, if any, relevance in these claim construction proceedings. See Howmedica Osteonics Corp.
v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346–47 (Fed. Cir. 2008) (noting that inventor
testimony is “limited by the fact that an inventor understands the invention but may not understand
the claims, which are typically drafted by the attorney prosecuting the patent application”).
Claim 1 of the ’508 Patent recites (emphasis added):
1. A system for handling mobile devices in a wireless communications network,
the system comprising:
a mobile node communicatively linked to the wireless communications
network, wherein the mobile node has a corresponding geographical current state
and one or more predicted geographical future states;
at least one foreign agent identified for each of the geographical future
states;
at least one ghost mobile node associated with the mobile node, wherein
said ghost mobile node can announce to said foreign agent the presence of said
ghost mobile node;
a ghost-foreign agent associated with said foreign agent, wherein said ghost
foreign agent can announce to said mobile node or said ghost mobile node
associated with the mobile node, the presence of said ghost foreign agent;
means for registering said ghost mobile node or mobile node with the
associated ghost foreign agent or foreign agent, while the mobile node remains in
the geographical current state; and
means for linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future
state associated with said foreign agent.
Defendants have argued that “‘identified for’ is a dynamic verb phrase that describes an
active step of identification” (Dkt. #35 at p. 21), and Defendants have cited the following
disclosure in the specification:
Based upon the predicted future state of the mobile node 250, the ghost-mobile
node 220 can determine which foreign agent 210, 215, 230 is likely to serve as the
mobile node’s next communicative link.

8

(See Dkt. #35, Exhibit N, May 9, 2018 Helal dep. at 167:9–168:7).

26

’508 Patent at 8:61–64 (emphasis added); see id. at 8:44–54; see also id. at 8:64–9:5 (“the ghostmobile node 220 can calculate a distance to the closest foreign agent in the path of the mobile node
250 based upon an estimated speed or trajectory of the mobile node 250”). Defendants have cited
a decision that found “the phrase ‘are transmitted’ . . . can be fairly read as a dynamic verb phrase
that describes the act of transmission, not a stative phrase that is used adjectivally to describe the
data blocks as having been transmitted.” TQP Development, LLC v. Intuit Inc., No. 2:12-CV-180,
2014 WL 2810016, at *2 (E.D. Tex. Jun. 20, 2014) (Bryson, J., sitting by designation).
On balance, Defendants have not demonstrated that above-reproduced Claim 1 of the ’508
Patent, which is a system claim rather than a method claim, requires an active step of determining.
Instead, the disputed term is sufficiently clear on its face that the system is configured such that at
least one foreign agent is (or has been) identified for each of the geographical future states.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary in light of the context provided by express recitals in the claims.
See U.S. Surgical, 103 F.3d at 1568 (“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.”); see also O2 Micro, 521 F.3d at 1362 (“[D]istrict courts are not (and should not be)
required to construe every limitation present in a patent’s asserted claims.”); Summit 6, LLC v.
Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
The Court accordingly hereby construes “at least one foreign agent identified for each
of the geographical future states” to have its plain meaning.

27

G. “while the mobile node remains in the geographical current state” (’508 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Plain and ordinary meaning

“before the mobile node physically arrives in
the geographical future state”

(subject to the undisputed construction of
“mobile node” and the disputed construction of
“geographical current state”) 9
(Dkt. #30 at p. 4; Dkt. #33 at p. 20; Dkt. #35 at p. 21; Dkt. #38, Exhibit A at p. 3.).
1. The Parties’ Positions
Plaintiff argues that whereas its proposal “reflects the clear teaching of the specification,”
Defendants’ proposal “improperly includes an additional ‘physical arrival’ limitation.” (Dkt. #33
at p. 21).
Defendants respond that “[f]or reasons similar to those discussed above concerning the
term ‘ghost mobile node,’ based on the specification and statements during the prosecution, the
‘means for registering’ (discussed below) must allow a ghost mobile node to register the mobile
node to the next foreign agent before the mobile node physically arrives in the geographical future
state.” (Dkt. #35 at p. 21).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
Claim 1 of the ’508 Patent recites (emphasis added):
1. A system for handling mobile devices in a wireless communications network,
the system comprising:
a mobile node communicatively linked to the wireless communications
network, wherein the mobile node has a corresponding geographical current state
and one or more predicted geographical future states;
at least one foreign agent identified for each of the geographical future
states;
Plaintiff previously proposed: “while the mobile node remains in the region in which it is optimal, based upon
predetermined thresholds, to communicate with a particular base station.” (Dkt. #30 at p. 4).
9

28

at least one ghost mobile node associated with the mobile node, wherein
said ghost mobile node can announce to said foreign agent the presence of said
ghost mobile node;
a ghost-foreign agent associated with said foreign agent, wherein said ghost
foreign agent can announce to said mobile node or said ghost mobile node
associated with the mobile node, the presence of said ghost foreign agent;
means for registering said ghost mobile node or mobile node with the
associated ghost foreign agent or foreign agent, while the mobile node remains in
the geographical current state; and
means for linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future
state associated with said foreign agent.
Defendants have not adequately supported their proposal of “physically arrives in the
geographical future state” as to the present disputed term. That is, Defendants have not presented
any prosecution history disclaimer argument for this term or any other persuasive justification for
this limitation.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Summit 6, 802 F.3d at 1291.
The Court therefore hereby construes “while the mobile node remains in the
geographical current state” to have its plain meaning.
H. “when the mobile node is located in a geographical area where the foreign agent is
not physically present” (’417 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Plain and ordinary meaning

“when the mobile node is located outside of the
coverage area of the foreign agent”10

(subject to agreed construction of “mobile
node” and disputed construction of “foreign
agent”)

Defendants previously proposed: “when the mobile node is located outside the coverage area of the foreign agent.”
(Dkt. #30 at p. 4).
10

29

(Dkt. #30 at p. 4; Dkt. #33 at p. 21; Dkt. #35 at p. 22; Dkt. #38, Exhibit A at p. 5).
1. The Parties’ Positions
Plaintiff argues that “Defendants’ proposed term ‘coverage area’ has a particular meaning
in marketing and is technically imprecise from the perspective of one of ordinary skill in the art.”
(Dkt. #33 at p. 21).
Defendants respond that “[a]s discussed above with regard to the term ‘geographical
current state,’ being outside the geographical area of the foreign agent means the mobile node
cannot detect an advertisement signal (or beacon signal) from the foreign agent and therefore
cannot initiate direct communications with the foreign agent.” (Dkt. #35 at p. 22).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
Claim 1 of the ’417 Patent recites (emphasis added):
1. A system for communicating between a mobile node and a communication
network; the network having at least one communications network node that is
interconnected using a proxy mobile internet protocol (IP), comprising:
at least one mobile node;
at least one home agent;
at least one foreign agent;
a ghost-foreign agent that advertises messages to one of the mobile nodes
indicating presence of the ghost-foreign agent on behalf of one of the foreign agents
when the mobile node is located in a geographical area where the foreign agent is
not physically present; and
a ghost-mobile node that creates replica IP messages on behalf of a mobile
node, the ghost-mobile node handling signaling required to allocate resources and
initiate mobility on behalf of the mobile node, the ghost-mobile node triggering
signals based on a predicted physical location of such mobile node or distance with
relation to the at least one foreign agent.
Defendants have cited the following testimony by Plaintiff’s expert:
Q. So there is a term, I think it’s in the ’417 patent, when the mobile node is located
in a geographical area where the foreign agent is not physically present. What’s
the plain and ordinary meaning of that term?

30

A. I think the plain and ordinary meaning to that is that there’s this area,
geographical area where the mobile node is located and the -- the foreign agent is
not physically present, so it’s not that the -- there isn’t a beacon signal or something
that’s being -- being detected, but the -- basically it’s just that the foreign agent is
not present in that area, the geographical area.
(Dkt. #35, Exhibit J, May 18, 2018 Blackburn dep. at 210:9‒211:5). Defendants have not shown
that this testimony that “there isn’t a beacon signal or something” gives rise to a disclaimer or an
estoppel. Further, Plaintiff’s expert has explained that the phrase “coverage area” could create
confusion because there may be “areas within the coverage area that really aren’t covered.” (Dkt.
#33, Exhibit 3C, May 18, 2018 Blackburn dep. at 95:22‒98:21).
As to the proper construction, the specification provides context for usage of the phrase
“physically present” in terms of a region:
The signal from the ghost-mobile node 220 can cause an allocation of
communications network resources, the resources being those needed for relaying
communications between the communications network and the mobile node.
Indeed, the signal from the ghost-mobile node 220 can elicit the same response
from the network nodes defining the foreign agents 215, 230 as would be elicited
were the mobile node 250 physically present in the predefined region covered by
the particular foreign agent.
’417 Patent at 9:9‒17 (emphasis added).
Finally, at the July 10, 2018 hearing, both sides were amenable to construing this disputed
term to mean “when the mobile node is located outside of the region covered by the foreign agent.”
The Court therefore hereby construes “when the mobile node is located in a geographical
area where the foreign agent is not physically present” to mean “when the mobile node is
located outside of the region covered by the foreign agent.”

31

I. “a ghost-mobile node that creates replica IP messages on behalf of a mobile node”
(’417 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“a ghost mobile node that creates messages “a ghost mobile node that creates forged IP
encapsulated in IP packets, that contain the messages such that the transmission source
same information transmitted by and on behalf appears to be an associated mobile node”12
of a mobile node”11
(Dkt. #33 at p. 22; Dkt. #35 at p. 22; Dkt. #38, Exhibit A at p. 6).
1. The Parties’ Positions
Plaintiff argues that its proposal “reflects the clear teaching of the specification,” and
Plaintiff urges that “the IP messages contain the same information transmitted by, and on behalf,
of the mobile node, but not an identical IP message.” (Dkt. #33 at pp. 22‒23 (citing ’508 Patent
at 9:48‒53 & 9:65‒10:6)).
Defendants respond that “Plaintiff’s construction fails to incorporate the plain and ordinary
meaning of ‘replica,’ for which at least three dictionaries agree means ‘duplicate’ or ‘exact copy
or model.’” (Dkt. #35 at p. 23 (citing Exs. Q–S)). Defendants also argue that “Plaintiff’s
construction finds no support in the specification and serves only to add more ambiguity.” (Dkt.
#35 at p. 24).
Plaintiff replies: “Defendants’ Responsive Claim Construction Brief ignores the fact that
the disclosure in the specification is not ‘forges,’ but ‘essentially forges,’ meaning that the packets
are not identical.” (Dkt. #36 at p. 7 (citing ’417 Patent at 9:45‒53)). Plaintiff argues that “[t]he
content of a shared key, for example, must be identical in order for the mobile node to authenticate,

Plaintiff previously proposed: “a virtual node including software instructions running on a device, that contains a
transceiver for communicating with the mobile node that creates messages encapsulated in IP packets, that contain the
same information transmitted by and on behalf of a mobile node.” (Dkt. #30 at p. 5).
12
Defendants previously proposed: “Indefinite. Alternatively: ‘a ghost-mobile node that copies an IP registration
request, authentication, and authorization message that a mobile node sends to a foreign agent to register with the
foreign agent when it is physically present in the coverage area of the foreign agent.’” (Dkt. #30 at p. 5).
11

32

but the IP packet sending such message need not be identical.” (Dkt. #36 at p. 8). Further, Plaintiff
submits that “Defendants ignore the fact that there is no antecedent basis for ‘the transmission
source.’” (Dkt. #36 at p. 8).
2. Analysis
As a threshold matter, Defendants have cited inventor testimony,13 but such testimony is
of little, if any, relevance in these claim construction proceedings. See Howmedica, 540 F.3d at
1346–47 (noting that inventor testimony is “limited by the fact that an inventor understands the
invention but may not understand the claims, which are typically drafted by the attorney
prosecuting the patent application”).
Claim 1 of the ’417 Patent recites, in relevant part (emphasis added):
1. A system for communicating between a mobile node and a communication
network; the network having at least one communications network node that is
interconnected using a proxy mobile internet protocol (IP), comprising:
...
a ghost-mobile node that creates replica IP messages on behalf of a mobile
node, the ghost-mobile node handling signaling required to allocate resources and
initiate mobility on behalf of the mobile node, the ghost-mobile node triggering
signals based on a predicted physical location of such mobile node or distance with
relation to the at least one foreign agent.
The specification discloses:
In the context of an IP-based network, the ghost-mobile node 220 can create
“spoofed” Universal Datagram Packets (UDP) with the contents of a legitimate
mobile node packet. The procedure can utilize raw sockets to construct the
message, create all the registration and IP headers, and add the authentication
extensions using, for example, the MD5 checksum and a shared key.
***
In any case, as the ghost-mobile node 229 essentially forges registration packets on
behalf of the mobile node 250, no time-stamping or nonce numbers need be used.
As an alternative, a shared key authentication can be required between the home
13

(See Dkt. #35, Exhibit N, May 9, 2018 Helal dep. at 186:1‒17; see also id., Ex. P, May 10, 2018 HernandezMondragon dep. at 140:7‒11).

33

agent, foreign agents, and the mobile node. Asymmetric authentication as in a
protocol such as 802.1X can be used as an alternate to symmetric authentication for
delegating authority to the ghost-mobile node 220.
***
Accordingly, the ghost-mobile node 220 can increase the speed with which handoff
occurs, thereby reducing setup delay and avoiding information loses due to the
dropping of datagram packets. The ghost-mobile node 220 can replicate the
registration request, handle the creation of tunnels, and replicate authentication and
authorization information from the mobile node 250, thus acting on behalf of the
mobile node 250 before the mobile node is in range of a next foreign agent 215,
230.
’417 Patent at 9:18‒24, 9:45‒53 & 9:65‒10:6 (emphasis added).
Defendants have not shown that this disclosure regarding “essentially forges” gives rise to
a lexicography defining “replica” as “forged.” Particularly in light of the absence of any further
explanation in the specification regarding the meaning of “forges” or “essentially forges,”
Defendants’ proposal would tend to confuse rather than clarify the scope of the claims. Further,
the specification nowhere states that an exact copy of an entire IP packet must be made.
Defendants have also cited dependent Claim 2 of the ’417 Patent, which recites (emphasis
added):
2. The system of claim 1, wherein signaling further comprises registration with a
replica of the mobile node by the ghost-mobile node to communicate with the
foreign agents, triggering tunneling and communication with a mechanism
configured to maintain routing information to a mobile node.
But even though Claim 2 recites using a “replica,” the limitations added by Claim 2 do not inform
the meaning of “replica” as used in the disputed term.
Defendants have also argued that Figure 3 of the ’417 Patent illustrates a message from a
ghost mobile node that is identical to a message sent by a mobile node, as defined in the Mobile
IPv4 standard. (See Dkt. #35, Exhibit T, RFC 2002 at p. 27). But Figure 3 illustrates a format of
a type of message, not the content of a particular message. Alternatively and in addition, Figure 3
34

relates to specific features of a particular disclosed embodiment that should not be imported into
the claims. See Phillips, 415 F.3d at 1323.
Finally, Defendants have cited testimony by Plaintiff’s expert that a replica is a “copy”:
Q. Okay. And when we talk about a replica IP message, you say it has to be
encapsulated in -- in IP packet. So are you saying that the header’s got to take an
IPv, IPv6 IP header format, and then the message has to be an exact copy of a
message that would otherwise be sent by a mobile node?
A. Well, replicate, a replica would be a -- would be a copy, you know, whether it’s
an exact copy, but it’s a copy.
Q. Do you have to replicate all the information in the message or just one field?
A. Yeah, I’d like to look at the spec before I comment on that.
Q. Do you think you could figure it out, looking at the spec, in a couple of minutes
-A. No.
(Dkt. #35, Exhibit J, May 18, 2018 Blackburn dep. at 206:5‒20). Although Plaintiff’s expert
equivocated as to whether or not a replica is an “exact copy,” Plaintiff’s expert twice stated that a
replica is a “copy.” (Id.).
The opinions of Defendants’ expert regarding requiring an exact copy, however, are
unpersuasive. (Id., Exhibit O, May 17, 2018 Proctor dep. at 16:22‒17:18 & 22:9‒40:7). The
extrinsic dictionary definitions cited by Defendants regarding an “exact copy” (Dkt. #35 at
Exhibits Q–S) are likewise unpersuasive as to the specific context in which the word “replica” is
used in the patent. See Phillips, 415 F.3d at 1321 (“heavy reliance on the dictionary divorced from
the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the
meaning of the term in the abstract, out of its particular context, which is the specification”).
Instead, as in the above-reproduced portions of the specification, the specification uses the
word “replicate” in the contexts of “replicat[ing] the registration request” and “replicat[ing]
authentication and authorization information” so as to “act[] on behalf of the mobile node.” ’417
Patent at 9:65‒10:6. This disclosure is consistent with Plaintiff’s proposal of creating copies of

35

information to be used on behalf of a mobile node without necessarily creating an exact copy of
an entire IP message.
To whatever extent a dispute remains as to the degree of “sameness” required by a “copy,”
any such dispute presents questions of fact for the finder of fact rather than any question of law for
claim construction. See Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“[A]
sound claim construction need not always purge every shred of ambiguity. The resolution of some
line-drawing problems . . . is properly left to the trier of fact.”) (citing PPG Indus. v. Guardian
Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“after the court has defined the claim with
whatever specificity and precision is warranted by the language of the claim and the evidence
bearing on the proper construction, the task of determining whether the construed claim reads on
the accused product is for the finder of fact”)); see also Eon Corp. IP Holdings LLC v. Silver
Spring Networks, Inc., 815 F.3d 1314, 1318–19 (Fed. Cir. 2016) (citations omitted).
The Court therefore hereby construes “a ghost-mobile node that creates replica IP
messages on behalf of a mobile node” to mean “a ghost-mobile node that copies IP messages
on behalf of a mobile node.”
J. “updating, in a mobile node, a location in a ghost mobile node” (’417 Pat., Cl. 7)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Plain and ordinary meaning

Indefinite/incapable of construction

(subject to agreed construction of “mobile
node” and disputed construction of “ghost
mobile node”)
(Dkt. #30 at p. 5; Dkt. #33 at p. 23; Dkt. #35 at p. 25; Dkt. #38, Exhibit A at p. 7).

36

1. The Parties’ Positions
Plaintiff argues: “No extraordinary efforts are required to define these terms, as the plain
and ordinary meaning applies with support from references in the specification.

These

constructions are neither difficult nor ‘insolubly ambiguous.’” (Dkt. #33 at p. 23 (quoting
Datamize, 417 F.3d at 1347)).
Defendants respond that “this phrase does not make sense as written,” and “[t]he ‘insolubly
ambiguous’ indefiniteness standard stated in Plaintiff’s brief is obsolete.” (Dkt. #35 at p. 25).
Defendants argue that “although the error is obvious, there is a reasonable debate about the
appropriate correction because the claim is subject to multiple possible corrections.” (Dkt. #35 at
p. 25).
Plaintiff replies that “[o]pposing expert opinions, like the ones here create a fact question
that precludes any ‘clear-and-convincing’ finding.” (Dkt. #36 at p. 8).
2. Analysis
As a threshold matter, Defendants have cited inventor testimony,14 but such testimony is
of little, if any, relevance in these claim construction proceedings. See Howmedica, 540 F.3d at
1346–47 (noting that inventor testimony is “limited by the fact that an inventor understands the
invention but may not understand the claims, which are typically drafted by the attorney
prosecuting the patent application”).
The specification discloses:
By continuously and/or periodically determining its position via the GSP [sic, GPS]
unit or other technique, the ghost-mobile node 220 can extrapolate from the current
location and predict future locations of the mobile node 250.

14

(See Dkt. #35, Exhibit N, May 9, 2018 Helal dep. at 202:22‒203:5).

37

’417 Patent at 7:4‒7; see id. at 8:45‒9:5 (“Based upon the predicted future state of the mobile node
250, the ghost-mobile node 220 can determine which foreign agent 210, 215, 230 is likely to serve
as the mobile node’s next communicative link.”).
Claim 7 of the ’417 Patent recites (emphasis added):
7. A method, in a mobile node, for speeding handover, comprising the steps of:
updating, in a mobile node, a location in a ghost mobile node;
determining a distance, in the ghost mobile node in communication with the
mobile node, to a closest foreign agent with which the mobile node can complete a
handover;
submitting on behalf of the mobile node, from the ghost mobile node, a
registration to the foreign agent to which the mobile node is going to complete the
handover; and
upon completing the handover, updating a registration in the mobile node.
Defendants have cited authority regarding judicial correction. See Novo Indus., L.P. v.
Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003). Yet, Plaintiff is not requesting judicial
correction. Whereas Defendants argue that this disputed term is obviously an error, Plaintiff has
argued that this disputed term can be readily understood. (Dkt. #33 at pp. 23‒24). Defendants
have argued that “it is unclear whether ‘a location’ is a current or predicted location of a mobile
node” (Dkt. #35 at p. 25), but Defendants have not shown why any such limitation is required.
The opinions of Defendants’ expert to the contrary are unpersuasive. (See Dkt. #35, Exhibit C,
June 20, 2018 Proctor Decl. at ¶ 94). Instead, the disputed term recites merely “a location.” The
meaning of this language is readily understandable. See Nautilus, 134 S. Ct. at 2129 (to avoid
indefiniteness, a “patent’s claims, viewed in light of the specification and prosecution history”
must “inform those skilled in the art about the scope of the invention with reasonable certainty”).
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Summit 6, 802 F.3d at 1291.

38

The Court therefore hereby construes “updating, in a mobile node, a location in a ghost
mobile node” to have its plain meaning.
K. “submitting on behalf of the mobile node, from the ghost mobile node, a registration
to the foreign agent to which the mobile node is going to complete the handover” (’417
Pat., Cl. 7)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

“submitting on behalf of the mobile node, from
the ghost mobile node, a registration to the
(subject to agreed construction of “mobile foreign agent while the mobile node is located
node)
outside the coverage area of the foreign agent”
Plain and ordinary meaning

(Dkt. #30 at p. 5; Dkt. #33 at p. 24; Dkt. #35 at p. 26; Dkt. #38, Exhibit A at p. 7).
1. The Parties’ Positions
Plaintiff argues:
Defendants’ proposed construction improperly includes the limitation of “while the
mobile node is located outside the coverage area of the foreign agent,” which is
effectively Defendant’s construction for “when the mobile node is located in a
geographical area where the foreign agent is not physically present” in Claim 1 of
the ’417 Patent. This further confuses the issue, as Defendants presumably want
two terms to have effectively the same meaning. Defendants proposed construction
is improper.
(Dkt. #33 at p. 25).
Defendants respond by referring to their arguments as to “ghost mobile node,” “while the
mobile node remains in the geographical current state,” and “when the mobile node is located in a
geographical area where the foreign agent is not physically present.” (Dkt. #35 at pp. 26–27).
Defendants argue that “[t]he spirit and crux of the claimed invention is the ghost mobile node’s
ability to send a registration request on behalf of the mobile node while the mobile node is located
outside the coverage area of the foreign agent.” (Dkt. #35 at p. 27 (citing ’417 Patent at 4:9–18,
6:35–38, 9:6–20 & 9:57–10:16)). Defendants also cite their prosecution history arguments as to
similar limitations. (Dkt. #35 at p. 27).
39

Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
Claim 7 of the ’417 Patent recites (emphasis added):
7. A method, in a mobile node, for speeding handover, comprising the steps of:
updating, in a mobile node, a location in a ghost mobile node;
determining a distance, in the ghost mobile node in communication with the
mobile node, to a closest foreign agent with which the mobile node can complete a
handover;
submitting on behalf of the mobile node, from the ghost mobile node, a
registration to the foreign agent to which the mobile node is going to complete the
handover; and
upon completing the handover, updating a registration in the mobile node.
Defendants have failed to demonstrate why their prosecution history arguments as to the
term “ghost mobile node” should be applied to the present disputed term. (See Dkt. #35 at pp. 26‒
27). Indeed, this disputed term already includes “ghost mobile node” as a constituent term.
The Court therefore hereby expressly rejects Defendants’ proposed construction. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Summit 6, 802 F.3d at 1291.
The Court accordingly hereby construes “submitting on behalf of the mobile node, from
the ghost mobile node, a registration to the foreign agent to which the mobile node is going
to complete the handover” to have its plain meaning.
L. “upon completing the handover, updating a registration in the mobile node” (’417
Pat., Cl. 7)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Plain and ordinary meaning

Indefinite/incapable of construction

(subject to agreed construction of “mobile
node[”])
(Dkt. #30 at p. 5; Dkt. #33 at p. 25; Dkt. #35 at p. 27; Dkt. #38, Exhibit A at p. 8).

40

1. The Parties’ Positions
Plaintiff argues: “No extraordinary efforts are required to define this term, as the plain and
ordinary meaning applies with support from references in the specification. This construction is
neither difficult nor ‘insolubly ambiguous.’” (Dkt. #33 at p. 25 (quoting Datamize, 417 F.3d at
1347)).
Defendants respond that “updating a registration in a mobile node after completing the
handover makes no sense” because “[u]pdating a registration in the mobile node is a part of the
handover process, not something that occurs upon completing handover.” (Dkt. #35 at p. 27).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).
2. Analysis
As a threshold matter, Defendants have cited inventor testimony,15 but such testimony is
of little, if any, relevance in these claim construction proceedings. See Howmedica, 540 F.3d at
1346–47 (noting that inventor testimony is “limited by the fact that an inventor understands the
invention but may not understand the claims, which are typically drafted by the attorney
prosecuting the patent application”).
Plaintiff has cited the following disclosure in the specification:
The ghost-mobile node 220 signals the network communications node that defines
the mobile node’s 250 next foreign agent 215, 230. The ghost-mobile node 220
signals the foreign agent 215, 230 ahead of the mobile node’s 250 arriving
in the predefined region served by the foreign agent. The signal from the ghostmobile node 220 can be a registration request. The signal from the ghost-mobile
node 220 can cause an allocation of communications network resources, the
resources being those needed for relaying communications between the
communications network and the mobile node.

15

(See Dkt. #35, Exhibit N, May 9, 2018 Helal dep. at 207:5‒19.).

41

’417 Patent at 9:3‒12. This disclosure does not specifically discuss “updating a registration in the
mobile node,” so this disclosure does not appear to inform the meaning of the disputed term, at
least not directly.
Nonetheless, the claim language is sufficiently clear on its face. Claim 7 of the ’417 Patent
recites (emphasis added):
7. A method, in a mobile node, for speeding handover, comprising the steps of:
updating, in a mobile node, a location in a ghost mobile node;
determining a distance, in the ghost mobile node in communication with the
mobile node, to a closest foreign agent with which the mobile node can complete a
handover;
submitting on behalf of the mobile node, from the ghost mobile node, a
registration to the foreign agent to which the mobile node is going to complete the
handover; and
upon completing the handover, updating a registration in the mobile node.
In particular, Defendants have not demonstrated any internal inconsistency based on
“updating a registration” purportedly necessarily being part of “handover” because Defendants
have not shown any definition or disclaimer in this regard. The opinion of Defendants’ expert
lacks sufficient support in the intrinsic record and is unpersuasive. (Dkt. #35, Exhibit C, June 20,
2018 Proctor Decl. at ¶ 96).
The Court therefore hereby expressly rejects Defendants’ indefiniteness argument. No
further construction is necessary. See U.S. Surgical, 103 F.3d at 1568; see also O2 Micro, 521
F.3d at 1362; Summit 6, 802 F.3d at 1291.
The Court therefore hereby construes “upon completing the handover, updating a
registration in the mobile node” to have its plain meaning.

42

M. “means for registering said ghost mobile node or mobile node with the associated
ghost foreign agent or foreign agent, while the mobile node remains in the geographical
current state” (’508 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This claim element is governed by 35 U.S.C. This claim element is governed by 35 U.S.C.
§ 112, ¶ 6.
§ 112, ¶ 6.
Claimed Function:
Indefinite for lack of adequate disclosure of a
“registering said ghost mobile node or corresponding structure
mobile node with the associated ghost foreign
agent or foreign agent, while the mobile node
remains in the geographical current state”
Corresponding Structure:
“a signal received by a computing device
having operational software and a transceiver”
(Dkt. #30 at p. 4; Dkt. #33 at p. 26; Dkt. #35 at p. 27; Dkt #38, Exhibit A at p. 3).
1. The Parties’ Positions
Plaintiff argues that corresponding structure is apparent in the specification, and Plaintiff
also cites the opinion of its expert. (Dkt. #33 at pp. 27‒28).
Defendants respond that “there is no structure or disclosure in the specification of ghost
mobile node or mobile node registering to a ghost-foreign agent.” (Dkt. #35 at p. 29).
Plaintiff replies that “[t]he specification discloses that the registration request signal is the
structure that registers the ghost mobile node.” (Dkt. #36 at p. 9 (citing ’508 Patent at 10:55‒67)).
2. Analysis
Title 35 U.S.C. § 112, ¶ 6 provides: “An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.”

43

The parties agree that this disputed term is a means-plus-function term governed by
35 U.S.C. § 112, ¶ 6, and the parties have not presented any dispute as to the claimed function.
The parties dispute whether the specification discloses corresponding structure.
“The duty of a patentee to clearly link or associate structure with the claimed function is
the quid pro quo for allowing the patentee to express the claim in terms of function under [§ 112,
¶ 6].” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir.
2003); see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012)
(“a patentee is only entitled to ‘corresponding structure . . . described in the specification and
equivalents thereof,’ not any device capable of performing the function”) (quoting 35 U.S.C.
§ 112, ¶ 6).
Plaintiff has cited the following disclosures in the specification:
The handoff typically entails the mobile node 250 signaling the next foreign agent
230, requesting registration.
***
The ghost-mobile node 220 signals the network communications node that defines
the mobile node’s 250 next foreign agent 215, 230. The ghost-mobile node 220
signals the foreign agent 215, 230 ahead of the mobile node’s 250 arriving in the
predefined region served by the foreign agent. The signal from the ghost-mobile
node 220 can be a registration request. The signal from the ghost-mobile node 220
can cause an allocation of communications network resources, the resources being
those needed for relaying communications between the communications network
and the mobile node.
***
The signal from the ghost-mobile node 220 results in a preemptive setup, one that
is effected before the mobile node 250 arrives in the predefined area of coverage of
the next foreign agent. The setup can entail all the aspects that occur in the
beginning phase of a standard network connection negotiation, including the
negotiation of protocol details, communication rates, and error-handling
approaches. These are needed to allow the connection to proceed correctly and
reliably, but absent the participation of the ghost-mobile node 220 would have to

44

await the arrival of the mobile node 250 in the predefined region covered by the
foreign agent 215, 230.
***
Referring now particularly to FIG. 2B, as the mobile node 250 leaves the first
foreign agent 215 and moves toward the next foreign agent 230, the ghost-mobile
node 220 can send a registration request to the foreign agent 215. Accordingly,
the foreign agent 215 can open a tunnel to the next foreign agent 230 and send a
registration reply. As the mobile node 250 enters the communications range of the
next foreign agent 230, and as the mobile node 250 has already received the
advertisement from the ghost-foreign agent 225, the mobile node 250 can send a
registration request to the next foreign agent. The mobile node 250 can then
receive a registration reply as the ghost-mobile node 220 has already registered and
allocated resources for the mobile node 250.
’508 Patent at 5:47‒49, 9:6‒15, 9:57‒67 & 10:55‒67 (emphasis added).
Plaintiff has cited authority that the corresponding structure requirement “is not a high bar.”
Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
Yet, as Defendants have pointed out, the claimed function recites “registering said ghost
mobile node or mobile node with the associated ghost foreign agent or foreign agent.” The abovereproduced disclosures cited by Plaintiff relate to sending a registration request to a foreign agent,
but no comparable disclosure is apparent as to sending a registration request to a ghost foreign
agent. Indeed, during deposition, Plaintiff’s expert was unable to identify any disclosure in the
specification that corresponds to this aspect of the claimed function:
Q. Okay. So going back to the means for registering, is there any signal that you
are aware of that sends -- that begins a registration between a ghost mobile node
and a ghost foreign agent?
A. I’d have to read through that there again to see.
Q. Just do you mind looking at that?
A. Yeah, as we’re -- as we’re sitting here today, I’m not aware of a signal -Q. Okay.
A. -- without reading in detail.
Q. And are you aware of any signal that registers a mobile node to a ghost foreign
agent in the patents-in-suit?
A. Again, I’d have to read it for detail.
Q. But sitting here today, can you cite to any -45

A. Not without -Q. -- signal that -A. -- looking at it, no.
Q. Would it make any sense in the context of the invention for a ghost mobile node
or a mobile node to register to a ghost foreign agent?
A. Sometimes things don’t make sense, they -- they do happen, so I wouldn’t be
able to say that unless I . . .
Q. Is the purpose of the ghost foreign agent in the patent to simply announce the
presence of the foreign agent at a time when the mobile node couldn’t otherwise
receive a signal from the foreign agent?
A. I believe so, yeah.
Q. And so there’s no description, correct, in the patent of registering a mobile node
or a ghost mobile node to a foreign agent [sic, ghost foreign agent], correct, that
you are aware of sitting here?
A. Not -- there may be implied stuff, but I’d have to look at that.
Q. Do you understand that the claim, because it’s written as a means for registering
said mobile node -- well, strike that.
Do you understand, because the means for registering calls for registering said
ghost mobile node or mobile node with the associated ghost foreign agent or foreign
agent, that the claim requires that you be able to register the ghost mobile node to
a ghost foreign agent?
A. That’s one of the possibilities in the matrix, yes.
Q. Okay.
A. Mm-hmm.
Q. And it also requires that the mobile node be able to register with the ghost
foreign agent, correct?
A. That’s also -[Objection]
A. -- in there, yeah.
(Dkt. #35, Exhibit J, May 18, 2018 Blackburn dep. at 181:7‒183:12).16
At the July 10, 2018 hearing, Plaintiff pointed to the following disclosure in the
specification:
Accordingly, the ghost-mobile node and the ghost-foreign agent, operating either
individually or jointly, can cause network communication resources to be allocated
preemptively rather than passively as in conventional communications networks in
which handoffs typically only follow an exchange of setup information following
a mobile node’s arrival in the physical region covered by the foreign agent. The
ghost-mobile node and ghost-foreign agent can also serve to “hide” handoff
Also of note, Plaintiff’s reply brief addresses this disputed term but does not address this issue as to whether
corresponding structure is disclosed for the portion of the claimed function that relates to registering with a ghost
foreign agent. (See Dkt. #36 at p. 9).
16

46

operations from network layers, thereby hiding operations that would otherwise
tend to reduce system performance.
’508 Patent at 4:8‒18 (emphasis added). Here, too, however, Plaintiff has not persuasively shown
how anything in this disclosure is “clearly link[ed] or associate[d]” with the claimed function.
Med. Instrumentation, 344 F.3d at 1211. Also of note, to the extent that Plaintiff is pointing to the
ghost-foreign agent as corresponding structure, the claim recites “a ghost-foreign agent” separate
from the “means for registering . . .,” which suggests that the “means for registering . . .” is a
structure distinct from the “ghost-foreign agent.” See Becton, Dickinson, 616 F.3d at 1254
(“[w]here a claim lists elements separately, the clear implication of the claim language is that those
elements are distinct component[s] of the patented invention”) (citations and internal quotation
marks omitted).
Finally, Plaintiff argued at the July 10, 2018 hearing that the language of this disputed term
is self-supporting, that is, that the language of the term itself provides structure. Plaintiff seems to
be interpreting this language as meaning registering a ghost mobile node or mobile node “by” a
ghost foreign agent or foreign agent. The disputed term, however, recites that the “means” is for
registering a ghost mobile node or mobile with the ghost foreign agent or foreign agent. Plaintiff’s
suggestion of using the ghost foreign agent itself as structure for registering something with the
ghost foreign agent has not been supported by authority and has not been shown to be consistent
with the corresponding structure requirement of 35 U.S.C. § 112, ¶ 6 (which the parties have agreed
applies to this “means for registering . . .” term).
In sum, Plaintiff has failed to demonstrate that the specification sets forth corresponding
structure for performing the entirety of the claimed function, particularly as to registering with a
ghost foreign agent. This failure has not been caused by lack of opportunity, as this issue was
raised during the deposition of Plaintiff’s expert (reproduced above), in Defendants’ responsive
47

claim construction brief (cited above), and at the July 10, 2018 hearing. Plaintiff has simply been
unable to identify any “clearly link[ed] or associate[d] structure.” Med. Instrumentation, 344 F.3d
at 1211.
This lack of corresponding structure for the full claimed function results in indefiniteness.
See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (“a means-plus-function
clause is indefinite if a person 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”); see also Media
Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (“Where there
are multiple claimed functions, as there are in this case, the patentee must disclose adequate
corresponding structure to perform all of the claimed functions”) (citing Noah, 675 F.3d at 1318‒
19).
The Court therefore hereby finds that “means for registering said ghost mobile node or
mobile node with the associated ghost foreign agent or foreign agent, while the mobile node
remains in the geographical current state” is a means-plus-function term and the claimed
function is “registering said ghost mobile node or mobile node with the associated ghost
foreign agent or foreign agent, while the mobile node remains in the geographical current
state,” but lack of corresponding structure renders this term indefinite.

48

N. “means for linking the mobile node with a foreign agent associated with said ghost
foreign agent when the mobile node enters a respective geographical future state
associated with said foreign agent” (’508 Pat., Cl. 1)
Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

This claim element is governed by 35 U.S.C. This claim element is governed by 35 U.S.C.
§ 112, ¶ 6.
§ 112, ¶ 6.
Claimed Function:
“linking the mobile node with a foreign
agent associated with said ghost foreign agent
when the mobile node enters a respective
geographical future state associated with said
foreign agent”
Corresponding Structure:
“a transceiver”

Indefinite for failure to adequately disclose
and/or link a corresponding structure
Corresponding Structure (in the alternative):
“a mobile node, ghost mobile node, foreign
agent, and ghost foreign agent executing a
process routine and/or software disclosed at
6:28–10:67, Figs. 2A & 2B and equivalents
thereof”

(Dkt. #30 at p. 4; Dkt. #33 at p. 28; Dkt. #35 at p. 29; Dkt #38, Exhibit A at p. 4).
1. The Parties’ Positions
Plaintiff argues that corresponding structure is apparent in the specification. (Dkt. #33 at
p. 29).
Defendants respond that “Plaintiff’s position that a ‘transceiver’ alone can perform the
claimed function is clearly mistaken.” (Dkt. #35 at p. 29). Defendants also argue that “[t]he
portion of the specification upon which Plaintiff relies only describes the hardware used for linking
but in no way explains the process for linking, particularly ‘when the mobile node enters a
respective geographical future state associated with said foreign agent.’” (Dkt. #35 at p. 30 (citing
4:60–67 & 6:22–26)). Alternatively, Defendants argue that all of the processes disclosed in the
’508 Patent at 6:28–10:67 must work together. (Dkt. #35 at p. 30).
Plaintiff’s reply brief does not address this term. (See Dkt. #36).

49

2. Analysis
Legal principles regarding 35 U.S.C. § 112, ¶ 6 are set forth as to the “means for registering
. . .” term addressed above. The parties agree that the present disputed term is a means-plusfunction term governed by 35 U.S.C. § 112, ¶ 6, and the parties have not presented any dispute as
to the claimed function. The parties dispute whether the specification discloses corresponding
structure.
Claim 1 of the ’508 Patent, for example, recites (emphasis added):
1. A system for handling mobile devices in a wireless communications network,
the system comprising:
a mobile node communicatively linked to the wireless communications
network, wherein the mobile node has a corresponding geographical current state
and one or more predicted geographical future states;
at least one foreign agent identified for each of the geographical future
states;
at least one ghost mobile node associated with the mobile node, wherein
said ghost mobile node can announce to said foreign agent the presence of said
ghost mobile node;
a ghost-foreign agent associated with said foreign agent, wherein said ghost
foreign agent can announce to said mobile node or said ghost mobile node
associated with the mobile node, the presence of said ghost foreign agent;
means for registering said ghost mobile node or mobile node with the
associated ghost foreign agent or foreign agent, while the mobile node remains in
the geographical current state; and
means for linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future
state associated with said foreign agent.
Plaintiff has cited the following disclosures in the specification:
Indeed, as will be readily appreciated by those of ordinary skill in the art, the
network nodes can be implemented with any information processing systems
having the ability to communicate with one another via suitable wired and/or
wireless communications links. * * *
The mobile node 250, as part of normal use, changes its point of attachment to the
networks forming the interconnection of networks 200. The mobile node 250 can
be a computing device having suitable operational software and a wireless
transceiver. Accordingly, the mobile node 250 can engage in two-way wireless

50

communications with the communication network edge nodes, defining leaf foreign
agents or simply foreign agents 215, 230.
***
In order for the network nodes to relay datagrams to the mobile node 250 when the
mobile node is in a foreign network, the mobile node must be communicatively
linked to a foreign agent 215, 230 corresponding to that particular foreign network.
***
The ghost-mobile node 220, for example, can be set of software instructions
running on a device that is remote from the mobile node 250 and that contains a
transceiver for communicating with the mobile node.
’508 Patent at 4:49‒54, 4:60–67, 5:39‒43 & 6:22‒26 (emphasis added); see id. at 10:55‒67.
Plaintiff’s expert has opined that the corresponding structure for this “linking . . .” function
is simply “a transceiver” because “the elements already know that the registration has been
completed” when the mobile node arrives. (Dkt. #33, Exhibit 3C, May 18, 2018 Blackburn dep.
at 191:4‒14; see id. at 189:13‒191:14). This opinion is persuasive and aligns with the separate
recital of the above-discussed “means for registering . . .” See Typhoon Touch, 659 F.3d at 1385
(“the amount of detail that must be included in the specification depends on the subject matter that
is described and its role in the invention as a whole, in view of the existing knowledge in the field
of the invention”).
The Court therefore hereby finds that “means for linking the mobile node with a foreign
agent associated with said ghost foreign agent when the mobile node enters a respective
geographical future state associated with said foreign agent” is a means-plus-function term,
the claimed function is “linking the mobile node with a foreign agent associated with said
ghost foreign agent when the mobile node enters a respective geographical future state
associated with said foreign agent,” and the corresponding structure is “a transceiver, and
equivalents thereof.”
51

CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
.

other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by
the Court, in the presence of the jury. Any reference to claim construction proceedings is limited
to informing the jury of the definitions adopted by the Court.
SIGNED this 31st day of July, 2018.

___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE

52