WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 167

OPENING CLAIM CONSTRUCTION BRIEF filed by WI-LAN Inc.. (Attachments: # 1 Affidavit DECLARATION OF JEFFREY T. HAN IN SUPPORT OF WI-LANS OPENING CLAIM CONSTRUCTION BRIEF, # 2 Exhibit A-U.S. Patent No. 6,088,326, # 3 Exhibit B-U.S. Patent No. 6,195,327, # 4 Exhibit C-U.S. Patent No. 6,222,819, # 5 Exhibit D-U.S. Patent No. 6,381,211, # 6 Exhibit E-copy of The IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996), # 7 Exhibit F-copy of Alan Freedman, The ComputerGlossary (7th ed. 1995), # 8 Exhibit G-copy of Harry Newton, Newtons Telecom Dictionary (11th ed. 1996), # 9 Exhibit H-copy of Ramjee Prasad, CDMA for Wireless Personal Communications (1996), # 10 Exhibit I-copy of Theodore S. Rappaport,Wireless Communications (1996), # 11 Exhibit J-copy of Shing-Fong Su, The UMTS Air-Interface in RF Engineering (2007), # 12 Exhibit K-copy of 3GPP TS 25.211,v.6.10.0 (Release 6), # 13 Exhibit L-copy of Jean Conan & Rolando Oliver, Hardware and Software Implementation of the Viterbi Decoding Algorithm for Convolutional Codes, in MIMI 76: Proceedings of the International Symposium on Mini and Micro Computers (M.H. Hamza ed., 1977), # 14 Exhibit M-Definition of Overlay, OxfordDictionaries Online, http://oxforddictionaries.com/definition/overlay?q=overlay, # 15 Exhibit N-copy of the Manual of Patent Examining Procedure (6th ed. rev. 3, July 1997))(Weaver, David)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,
Plaintiff,
v.
ALCATEL-LUCENT USA INC.;
TELEFONAKTIEBOLAGET LM
ERICSSON; ERICSSON INC.; SONY
ERICSSON MOBILE COMMUNICATIONS
AB; SONY ERICSSON MOBILE
COMMUNICATIONS (USA) INC.; HTC
CORPORATION; HTC AMERICA, INC.;
EXEDEA INC.; LG ELECTRONICS, INC.;
LG ELECTRONICS MOBILECOMM U.S.A.,
INC.; LG ELECTRONICS U.S.A., INC.
Defendants.

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Civil Action No. 6:10-cv-521-LED
JURY TRIAL DEMANDED

PLAINTIFF WI-LAN INC.’S OPENING CLAIM CONSTRUCTION BRIEF

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ................................................................................................................... ii 
I. 

Introduction ..................................................................................................................................... 1 

II. 

Background ..................................................................................................................................... 1 

A. 

Wireless Communications Systems Generally ......................................................................... 2 

B. 

The Inventions of the Patents-in-Suit ........................................................................................ 3 

C. 

The Parties’ Claim Construction Positions ............................................................................... 4 

III.  Applicable Legal Standards for Claim Construction ..................................................................... 4 
IV.  Argument For Disputed Claim Terms............................................................................................ 5 
A. 

Subscriber terminal .................................................................................................................... 5 

B. 

Orthogonal channel/Orthogonal channels ................................................................................. 9 

C. 

Time division multiplexing (TDM) techniques ...................................................................... 12 

D. 

Time slot ................................................................................................................................... 16 

E. 

TDM encoder / TDM decoder ................................................................................................. 18 

F. 

Overlay code ............................................................................................................................ 19 

G. 

Parameters pertaining to a wireless link within the cell indicative of whether that wireless
link is subject to interference from signals generated by other cells ...................................... 22 

H. 

Channel pool ............................................................................................................................ 24 

V. 

Argument for Disputed Means-Plus-Function Claim Terms ...................................................... 24 

A. 

Legal Principles for Construing Means-Plus-Function Claim Terms .................................... 24 

B. 

Channelisation means for determining which of the orthogonal channels will be subject to
TDM techniques....................................................................................................................... 25 

C. 

Channelisation means for determining, for those orthogonal channels subject to TDM
techniques, how many time slots will be provided within each orthogonal channel ............. 27 

D. 

Channelisation means for determining which of the orthogonal channels will be subject to
overlay codes ............................................................................................................................ 29 

E. 

Channelisation means for transmitting information to a plurality of subscriber terminals.... 29 

CONCLUSION ...................................................................................................................................... 30 

-i-

TABLE OF AUTHORITIES
Page
Cases 
3M Innovative Props. Co. v. Avery Dennison Corp.,
350 F.3d 1365 (Fed. Cir. 2003) ................................................................................................... 20
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
--- F.3d ---, 2012 WL 833896 (Fed. Cir. Mar. 14, 2012) ............................................................. 8, 9
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
296 F.3d 1106 (Fed. Cir. 2002) ................................................................................................... 24
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801 (Fed. Cir. 2002) ....................................................................................................... 9
Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323 (Fed. Cir. 2008) ............................................................................................. 24, 25
Genentech, Inc. v. Chiron Corp.,
112 F.3d 495 (Fed. Cir. 1997) ..................................................................................................... 11
Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327 (Fed. Cir. 2004) ............................................................................................. 24, 30
In re Aoyama,
656 F.3d 1293 (Fed. Cir. 2011) ................................................................................................... 25
Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898 (Fed. Cir. 2004) ........................................................................................... 7, 21, 23
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) ......................................................................................................... 5
Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205 (Fed. Cir. 2003) ................................................................................................... 27
Motorola, Inc. v. VTech Commc’ns, Inc.,
No. 5:07CV171, 2009 WL 2026317 (E.D. Tex. July 6, 2009) ........................................................ 5
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351 (Fed. Cir. 2008) ............................................................................................... 5, 24
Oatey Co. v. IPS Corp.,
514 F.3d 1271 (Fed. Cir. 2008) ..................................................................................................... 5
Performance Pricing, Inc. v. Google Inc.,
No. 2:07cv432, 2009 WL 2497102 (E.D. Tex. Aug. 13, 2009) ..................................................... 20
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................................. passim
Retractable Techs., Inc. v. Becton, Dickinson & Co.,
659 F.3d 1369 (Fed. Cir. 2011) ................................................................................................... 21

-ii-

Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
655 F.3d 1364 (Fed. Cir. 2011) ................................................................................................... 25
Sulzer Textil A.G. v. Picanol N.V.,
358 F.3d 1356 (Fed. Cir. 2004) ................................................................................................... 11
Thorner v. Sony Computer Entm’t Am. LLC,
--- F.3d ---, 2012 WL 280657 (Fed. Cir. Feb. 1, 2012)................................................................ 4, 7
U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554 (Fed. Cir. 1997) .................................................................................................. 5
Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,
587 F.3d 1339 (Fed. Cir. 2009) ................................................................................................... 15
Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996) ........................................................................................... 5, 14, 18
Statutes
35 U.S.C. § 112 ...................................................................................................................... passim
Other Authorities 
3GPP TS 25.211, v.6.10.0 (Release 6) ........................................................................................... 16
Alan Freedman, The Computer Glossary (7th ed. 1995) .............................................................. 15
Defendants’ Technology Tutorial .................................................................................................... 13
Harry Newton, Newton’s Telecom Dictionary (11th ed. 1996) .................................................... 15
Jean Conan & Rolando Oliver, Hardware and Software Implementation of the Viterbi
Decoding Algorithm for Convolutional Codes, in MIMI 76: Proceedings of the
International Symposium on Mini and Micro Computers (M.H. Hamza ed., 1977) ................ 19
Manual of Patent Examining Procedure (6th ed. rev. 3, July 1997) ............................................ 27
Oxford Dictionaries Online, http://oxforddictionaries.com ............................................................... 21
Ramjee Prasad, CDMA for Wireless Personal Communications (1996) ...................................... 15
Shing-Fong Su, The UMTS Air-Interface in RF Engineering (2007) ................................................. 16
The IEEE Standard Dictionary of Electrical and Electronics Terms (6th ed. 1996) ........................... 15
Theodore S. Rappaport, Wireless Communications (1996) .......................................................... 15

-iii-

I. INTRODUCTION
Wi-LAN, Inc. (“Wi-LAN”) is the assignee of U.S. Patent Nos. 6,088,326 (“’326 Patent”)
(attached as Exh. A1); 6,195,327 (“’327 Patent”) (attached as Exh. B); 6,222,819 (“’819 Patent”)
(attached as Exh. C); and 6,381,211 (“’211 Patent”) (attached as Exh. D) (collectively, the “Patents-insuit”). The Patents-in-suit are directed toward techniques for transmitting data over wireless links in a
cellular communications network. The inventions disclosed in the Patents-in-suit were novel when
they were invented in the mid-1990s and have since been adopted for use in wireless communications
industry standards.
Defendants2 manufacture user equipment (e.g., mobile and smart phones) and/or base stations
that practice the inventions claimed in the Patents-in-suit.

Now that they have been sued for

infringement, Defendants seek to import limitations into the claims from the preferred embodiments
and extrinsic evidence to impermissibly narrow the Patents-in-suit. The proper constructions, however,
give the claims the full breadth of their plain and ordinary meaning to one of ordinary skill in the art in
the telecommunications field at the time the Patents-in-suit were filed.
II. BACKGROUND
Wi-LAN was founded in 1992 by Dr. Hatim Zaghloul and Dr. Michel Fattouche to
commercialize inventions in the field of wireless networking and telecommunications. Soon after its
formation, Wi-LAN established itself as a pioneer in the field of high-speed Wi-Fi networks. WiLAN’s innovations, such as those in the area of Wi-Fi networks and wireless communications, among
others, are widely recognized. Today, Wi-LAN holds approximately 3,000 patents and pending
applications. In 2007, Wi-LAN acquired the Patents-in-suit from Airspan Networks, Inc. (“Airspan”).
1

Unless otherwise indicated, “Exh. __” refers to the exhibits attached to the Declaration of Jeffrey T. Han in
Support of Wi-LAN’s Opening Claim Construction Brief, filed Mar. 16, 2012.
2
Alcatel-Lucent USA Inc., Telefonaktiebolaget LM Ericsson, and Ericsson Inc. manufacture and sell base stations
for cellular networks. Sony Ericsson Mobile Communications AB; Sony Ericsson Mobile Communications (USA)
Inc.; HTC Corp.; HTC America, Inc.; and Exedia Inc. manufacture and sell mobile cellular devices such as cell
phones. (Collectively, “Defendants”).

-1-

These patents claim priority to foreign applications filed in December 1996.
A.

Wireless Communications Systems Generally

In cellular communication, radio waves carry information between a user’s phone and a
cellular antenna tower, which is connected to a base station (also known as a “central terminal”) that
provides cell phone service in a given area. The central terminals are geographically situated so as to
eliminate areas with no cell phone coverage. Cell phones get their name from the configuration of the
antenna towers that wirelessly transmit/receive data to/from the phones. These areas of cell phone
coverage are known as “cells.”
In addition to their wireless links with cell phones, the central terminals are connected to a main
network that today connects nearly the entire world. The number of users that can be serviced
simultaneously in each cell is limited by inter alia the number of frequencies that are allocated to the
base station in that cell. Given the meteoric rise in cell phone use (and more recently smart phone use),
the growth of cellular communication has long depended on the development of techniques to more
efficiently share those limited frequency resources.
Prior to the Patents-in-suit, wireless communication systems were poorly equipped to provide
service to an ever-increasing number of users. Due to the limited frequencies available to each base
station, it was not desirable for each user device to have its own dedicated channel for communicating
with the base station. Time division multiplexing (“TDM”) techniques and code division multiple
access (“CDMA”) techniques were developed to allow multiple wireless signals to be transmitted from
a central terminal on a single frequency channel. TDM worked by dividing up the frequency channel
into time slots and assigning a time slot to a user so that multiple user devices could share a frequency
by taking turns. CDMA worked by encoding each wireless signal with a different code and creating
multiple code channels within a single frequency channel. A base station could use TDM or CDMA
techniques to transmit data to a larger number of users, but it was still not enough to meet demand.
-2-

B.

The Inventions of the Patents-in-Suit

The inventions claimed in the Patents-in-suit were developed by Martin Lysejko, an engineer at
Airspan, and his colleagues in 1995–96. Lysejko foresaw the need to develop techniques to enable an
increasingly large number of users to simultaneously transmit data of differing types on a cellular
network. One problem, however, was that increasing the number of users would result in increased
interference amongst all the different wireless links both within a given cell and from neighboring cells.
To address these challenges, the inventors developed new ways to expand cellular network capacity
and invented an interference controlling mechanism.
One aspect of their invention was to invent a way to effectively combine CDMA and TDM
techniques. This enabled the central terminal to divide each code channel into multiple time-slots,
which allowed a larger number of data signals of varying size to be efficiently transmitted in each
channel. To limit the effect of same-cell interference, the invention used a type of CDMA code known
as “orthogonal codes.” Lysejko and his colleagues also developed a technique to expand the number of
code channels by using what they called “overlay codes” to increase the total number of orthogonal
channels over which data could be transmitted. The inventors combined TDM techniques with
orthogonal and overlay codes to develop a completely new way to transmit data objects of varying
sizes between user devices and central terminals in a wireless network. The ’819, ’211, and ’326
Patents are generally directed to these inventions.
Furthermore, in order to reduce the effect of interference from other cells, Lysejko and two of
his colleagues, Joemanne Chi Cheung Yeung and Paul Struhsaker, developed an interference controller
that analyzed signal parameters to determine the effect of interference from other cells and reduced the
effect of that interference by reducing the number of CDMA code channels used in the cell. The ’327
Patent is generally directed to this invention.

-3-

C.

The Parties’ Claim Construction Positions

The parties have agreed upon the following claim constructions:
CLAIM TERM3
orthogonal codes
selectively designate one or more of said traffic
channels as locked channels
wireless link

AGREED CONSTRUCTION
“codes that cross-correlate to zero”
“make one or more data channels unavailable for transmission”
“a radio connection between a central terminal and a particular
subscriber terminal for communicating data items
therebetween”

The parties dispute the construction of ten other claim terms that appear in one or more of the
Patents-in-suit. While the parties agree those terms should be given the same construction for each of
the claims/patents in which they appear, they disagree about how to construe them. Wi-LAN proposes
constructions that give the disputed claim terms the full breadth of their plain and ordinary meaning to
one of skill in the art in light of the intrinsic record. Defendants, however, take the wrong approach,
relying on aspects of the preferred embodiments and extrinsic evidence to import limitations that would
narrow the broader ordinary meaning of the claim language.
III.

APPLICABLE LEGAL STANDARDS FOR CLAIM CONSTRUCTION

The general rule is that claim terms should be given their ordinary and customary meaning to
one of skill in the art in light of the intrinsic record. Thorner v. Sony Computer Entm’t Am. LLC, --F.3d ---, 2012 WL 280657, at *2 (Fed. Cir. Feb. 1, 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc)). “There are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the
full scope of a claim term either in the specification or during prosecution.” Id. Absent one of these
exceptions, it is impermissible to import a limitation to otherwise broad claim language. Id.

3

The term “orthogonal codes” appears in asserted claims 1 and 3–5 of the ’326 Patent; claims 1 and 3–5 of the ’211
Patent; claims 1, 3, 5, 7, 12, 14, 16, 21, and 22 of the ’819 Patent; and claims 10, 12, 13, and 15 of the ’327 Patent.
The term “selectively designate one or more of said traffic channels as locked channels” appears in asserted claim 5
of the ’327 Patent. The term “wireless link” appears in asserted claims 1, 2, 5, and 9 of the ’326 Patent; claims 1, 2,
and 5 of the ’211 Patent; claims 1, 7, 8, 11, 12, 21, and 22 of the ’819 Patent; and claims 1, 11–13, 15, 17, and 19 of
the ’327 Patent. Hereinafter, the list of claims in which each claim term appears will list only the asserted claims.

-4-

The specification “is always highly relevant to the claim construction analysis.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). One of the ways that the
specification is helpful is through the description of the preferred embodiments of the invention. While
it is improper to limit the claims to the preferred embodiments, claim constructions that exclude a
preferred embodiment from the scope of the claims are “rarely, if ever, correct” and can be established
only with “highly persuasive evidentiary support.” Id. at 1583; see also Oatey Co. v. IPS Corp., 514
F.3d 1271, 1276 (Fed. Cir. 2008).
Beyond the intrinsic evidence, the Court may also consider extrinsic evidence. Phillips, 415
F.3d at 1318. However, “[e]xtrinsic evidence is to be used for the court’s understanding of the patent,
not for the purposes of varying or contradicting the terms of the claims.” Markman v. Westview
Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995). Put plainly, the intrinsic record takes precedence
over any extrinsic evidence in the claim construction analysis. See Phillips, 415 F.3d at 1318–19.
Finally, if the meaning of particular claim language is already clear, there is no reason for the
Court to rearticulate that language—and potentially import erroneous limitations—through claim
construction. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008).4 Courts commonly decline to further construe claim language that is already clear on its face.
See, e.g., Motorola, Inc. v. VTech Commc’ns, Inc., No. 5:07CV171, 2009 WL 2026317, at *8 (E.D.
Tex. July 6, 2009) (“[W]here additional language may be unduly limiting, confusing, or redundant, it is
in a court’s power to determine that no construction is necessary.”).
IV.
A.

ARGUMENT FOR DISPUTED CLAIM TERMS
Subscriber terminal5

4

See also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“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.”).
5
See ’326 Patent cls. 1, 6, 8–10; ’211 Patent cls. 1, 5; ’819 Patent cls. 1, 8–12, 21, 22; ’327 Patent cls. 1, 11, 13, 15,

-5-

WI-LAN’S PROPOSED CONSTRUCTION
“User equipment”

DEFENDANTS’ PROPOSED CONSTRUCTION
“A fixed-location device”

There is no dispute that the term “subscriber terminal” refers to the user equipment or device
used to establish a wireless link with the network. But the parties disagree as to whether the term
“subscriber terminal” is broad enough to encompass both fixed-location and mobile devices, such as
smart phones. In addition, the Court should resolve whether the term “subscriber terminal” limits those
claims in which the term appears only in the preamble.
There is nothing in the ordinary meaning of the term “subscriber terminal” that limits the
mobility of the user’s equipment. The word “subscriber” refers to a user and the “terminal” is the
equipment they use to connect to the central terminal. See, e.g.,’326 Patent col. 1 ll. 15–45; id. col. 6
l. 32–col. 7 l. 4; id. col. 15 l. 67–col. 17 l. 7.6 The specification describes the invention, not as a
particular type of subscriber terminal, but rather the “techniques” used to send data to and from that
equipment: “The present invention relates in general to wireless telecommunications systems and more
particularly to techniques for processing data transmitted and received over a wireless link
connecting a central terminal and a subscriber terminal of a wireless telecommunications system.” Id.
col. 1 ll. 8–12 (emphasis added).7 Nothing about the techniques of the present invention restricts their
use to “fixed-location” subscriber terminals, as Defendants contend. Indeed, the specification never
once describes the invention as being limited to subscriber terminals that are fixed-location devices, nor
is there a clear and unmistakable disclaimer of mobile subscriber terminals in the prosecution history.
It is improper to narrow the broader ordinary meaning of a claim term absent a clear
lexicographer-type redefinition of the term in the specification, or a clear and unmistakable disclaimer
in the intrinsic record. The Federal Circuit recently reiterated that these are the “only two exceptions”
17, 19.
6
Most of the specification is the same for each of the four Patents-in-suit. The portions of the specifications cited
herein appear in all of the Patents-in-suit, unless otherwise indicated.
7
Quote appears only in the ’326, ’211, and ’819 Patents.

-6-

to the “rule” that claim terms are construed to have their ordinary and customary meaning. Thorner,
2012 WL 280657, at *2. Because there is nothing in the intrinsic record that qualifies for one of these
exceptions, Defendants’ “fixed-location” construction should be rejected.
The only reference to a “fixed” location subscriber terminal anywhere in the intrinsic record is
found in the description of the preferred embodiment—which is never a proper basis to import a
limitation like this into the claims. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the
patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the
claim scope using words or expressions of manifest exclusion or restriction.” (quotations omitted)).
The reason is simple. The claims define the metes and bounds of the invention, whereas the preferred
embodiment is just an example of things that fall therein. Phillips, 415 F.3d at 1313. The Patents-insuit make this clear. While the wireless telecommunications system of Figure 1 depicts subscriber
terminals “at fixed locations,” see ’326 Patent col. 6 l. 61–col. 7 l. 7, the same passage states that these
figures are just “an example” of such, id. col. 6 ll. 32–33 (emphasis added).8 Indeed, the specification
states that “the invention is not limited []to” this particular embodiment of the claimed inventions. Id.
col. 28 ll. 13–16.
Moreover, other portions of the specification expressly contemplate telecommunications
systems wherein “subscriber terminals” may be mobile devices. See id. col. 6 ll. 40–54. The
specification addresses the concept of “subscriber density,” i.e., the number of subscriber terminals
within the geographical area of a cell in the wireless network, and teaches that the area of a cell may be
chosen based upon the “expected or actual” subscriber density. See id. col. 6 ll. 46–50. That the
specification draws a distinction between expected and actual subscriber densities is meaningful

8

See also ’326 Patent col. 5 ll. 38–44 (explaining that FIG. 1 is “an example of a wireless telecommunications
system” and FIG. 2 is “an example of a subscriber terminal of the telecommunications system of FIG. 1”).

-7-

because one of skill in the art would understand that the number of subscriber terminals in a cell
employing the claimed inventions may change for a variety of reasons, including when mobile
subscriber terminals move into and out of that cell. Accordingly, this passage provides yet another
reason to reject Defendants’ attempt to import a “fixed-location” limitation into the claims.
Finally, the Court should resolve any dispute regarding the extent to which the term “subscriber
terminal” limits those claims where it appears only in the claim preamble. As a general rule, terms in
the preamble are not limiting. Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., --- F.3d ---, 2012 WL
833896, at *11 (Fed. Cir. Mar. 14, 2012). To the extent Defendants disagree, it is their burden to show
that the general rule does not apply. See id.
The references to “subscriber terminal” in asserted claim 1 of the ’326 Patent; claims 1 and 12
of the ’819 Patent; and claims 1, 11, 13, 15, 17, and 19 of the ’327 Patent (the “Central Terminal
claims”) fall within the general rule and thus are not limiting.9 Each of these claims is directed to an
invention other than a subscriber terminal, specifically the central terminal or components thereof, such
as a transmission controller. The bodies of these claims recite structurally complete inventions and do
not rely on the reference to “subscriber terminal” in the preamble for antecedent. See Aspex, 2012 WL
833896, at *11 (holding that preamble language is not limiting where the claims recite “structurally
complete inventions without the preamble”). The reference to “subscriber terminal” in the preamble of
these claims is, at most, only a description of the overall telecommunications system in which the
claimed invention may be used. See, e.g., ’819 Patent cl. 1 (“A transmission controller for processing
data items to be transmitted over a wireless link connecting a central terminal and a subscriber terminal
of a wireless telecommunications system . . . .”). Such description of the “purpose or intended use for
the invention” in the preamble does not constitute a claim limitation. Catalina Mktg. Int’l, Inc. v.
9

Wi-LAN does not dispute that “subscriber terminal” limits those claims where the term appears in the body of the
claim. Nor does Wi-LAN dispute that “subscriber terminal” limits claim 5 of the ’211 Patent and claims 21 and 22
of the ’819 Patent, each of which is specifically directed to a subscriber terminal.

-8-

Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
Moreover, as the Federal Circuit recently held in Aspex, the fact that other claims are directed
to a subscriber terminal further supports that “subscriber terminal” does not limit the Central Terminal
claims. Like the Patents-in-suit, the patent in Aspex was directed to multiple inventions, specifically a
“primary spectacle frame,” an “auxiliary spectacle frame,” and the combination of the two, which the
specification referred to as an “eyeglass device.” Aspex, 2012 WL 833896, at *11. The court rejected
the defendant’s argument that the reference to “eyeglass device” in the preamble limited those claims
drawn to the auxiliary or primary frame, explaining:
The fact that among numerous claims to the combination of primary and auxiliary
frames the patentee chose to include some claims limited to auxiliary frames and some
limited to primary frames supports the inference that the claims drawn to primary or
auxiliary frames alone are not intended, by operation of the preamble, to require the
presence of the other frame as well.
Id. This same rationale applies here. Some claims of the Patents-in-suit are drawn to the subscriber
terminal, see, e.g., ’211 Patent cl. 5; ’819 Patent cl. 21, and others are drawn to a “wireless
telecommunications system” with both central and subscriber terminals recited as limitations in the
claim body, see ’819 Patent cl. 23. The fact that the patentee deliberately chose to direct the Central
Terminal claims to different inventions further emphasizes that these claims should not be limited by
the reference to “subscriber terminal” in their preamble.
B.

Orthogonal channel/Orthogonal channels10

WI-LAN’S PROPOSED CONSTRUCTION
Wi-LAN proposes construing “orthogonal channels” (in
the plural) and “orthogonal channel” (in the singular)
separately, as follows:

DEFENDANTS’ PROPOSED CONSTRUCTION
Orthogonal channel: “A communication channel
defined by an orthogonal code.”

Orthogonal channels: “A set of channels that crosscorrelate to zero with respect to each other.”
Orthogonal channel: “One of the set of orthogonal
channels.”

10

See ’326 Patent cls. 1, 2, 5–10; ’211 Patent cls. 1, 2, 5; ’819 Patent cls. 1, 7–12, 21, 22; ’327 Patent cls. 10, 13, 15.

-9-

Wi-LAN’s proposed construction provides the plain and ordinary meaning of “orthogonal
channel” as described in the intrinsic record. Both the claims and specification teach that orthogonal
codes are used to create orthogonal channels. See, e.g., ’326 Patent cl. 1 (“orthogonal code from a set
of ‘m’ orthogonal codes used to create ‘m’ orthogonal channels within the single frequency channel”
(emphasis added)); id. col. 2 ll. 14–17 (“an orthogonal code generator for providing an orthogonal code
from a set of ‘m’ orthogonal codes used to create ‘m’ orthogonal channels within the single frequency
channel” (emphasis added)).

The specification expressly defines orthogonal codes as follows:

“Orthogonal codes have the property that, when perfectly aligned, all codes cross-correlate to zero
. . . .”11 Id. col. 1 ll. 40–42. Thus, the “orthogonal channels” created from these orthogonal codes are a
set of channels that cross-correlate to zero with respect to each other.
The fact that the orthogonal channels of the claimed inventions cross-correlate to zero is
important because it reduces signal interference. As the specification explains, the use of orthogonal
codes “mak[es] it possible to decode a signal [i.e., a channel] to which one orthogonal code has been
applied while cancelling interference from signals to which different orthogonal codes have been
applied.” Id. col. 1 ll. 42–45. The specification further discusses a particular type of orthogonal codes,
called “RW codes,” and reiterates the fact that, because such codes are “orthogonal,” they cross
correlate to zero, thereby canceling out interference:
Once the bit stream is orthogonally isolated using the RW codes, the signals for
respective subscriber links do not interfere with each other. Since RW codes are
orthogonal, when perfectly aligned all codes have zero cross-correlation, thus making it
possible to decode a signal while cancelling interference from users operating on other
RW codes.
Id. col. 11 ll. 13–19.
It is unclear whether Defendants actually dispute any of this, but their proposed construction is

11

This means that when any two codes that are orthogonal to each other are multiplied together the result is zero.
See ’326 Patent col. 10 ll. 50–55 & Table 1 (explaining the mathematical function of “orthonormality”).

-10-

lacking in several respects.

First, it is not helpful to simply parrot the term “orthogonal,” as

Defendants’ propose. That term, while readily understood by those of skill in the art, is not part of
everyday parlance. The explanation Wi-LAN seeks to provide will help the jury. See Sulzer Textil
A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) (explaining that the Court should construe
claim terms “so that the jury will be able to intelligently determine the questions presented”).
Second, Defendants’ construction is overbroad to the extent it encompasses orthogonal
channels that do not cross-correlate to zero with respect to each other. If two channels were created
from two entirely different sets of orthogonal codes, those channels would not necessarily crosscorrelate to zero with respect to each other, resulting in substantial interference.12 That result, while
encompassed by Defendants’ proposed construction, is directly contrary to the teaching of the
specification. See ’326 Patent col. 1 ll. 40–45 (“Orthogonal codes . . . cross-correlate to zero, thus
making it possible to decode a signal to which one orthogonal code has been applied while cancelling
interference from signals to which different orthogonal codes have been applied.”).
Finally, the phrase “defined by” in Defendants’ proposed construction is not supported in the
intrinsic record. Nowhere does the intrinsic record say that an orthogonal channel is “defined by” an
orthogonal code. Instead, it teaches that orthogonal codes are used to “create” orthogonal channels.
See, e.g., id. col. 2 ll. 14–17; id. cl. 1. To the extent Defendants’ “defined by” phrase is intended to
mean that only the orthogonal code defines the orthogonal channel, as opposed to that code being used
along with other elements to create the orthogonal channel, that construction is an improper attempt to
narrow the claims—all of which are “comprising” claims. Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997) (noting that claims with the “open-ended term ‘comprising’” encompass
embodiments with additional un-recited elements). In any event, “defined by” is unnecessarily

12

This is because, while the codes in each set will all cross-correlate to zero, multiplying codes from different sets
together might not result in a zero product.

-11-

confusing and should be rejected in favor of Wi-LAN’s proposed construction.
C.

Time division multiplexing (TDM) techniques13

WI-LAN’S PROPOSED CONSTRUCTION
“Techniques for allocating an interval of time within a
predetermined frame period to a data item, based on
one or more characteristics associated with the data
item”

DEFENDANTS’ PROPOSED CONSTRUCTION
“Methods in which a communication channel is shared
among multiple wireless links by allowing each to use the
channel for a given period of time in a defined, repeated
sequence”

Although the proposed language differs, the parties agree that time division multiplexing
(“TDM”) techniques are methods for allocating time slots within a frame period to data items from
multiple wireless links. See, e.g., ’326 Patent col. 2 ll. 25-30 (describing the “present invention” as
including a “TDM encoder arranged to apply time division multiplexing (TDM) techniques to the data
item in order to insert the data item within a time slot of the orthogonal channel, where by a plurality of
data items relating to different wireless links may be transmitted within the same orthogonal channel
during a predetermined frame period.”).14 Wi-LAN’s proposed construction closely follows the
language of the intrinsic record, which teaches that the time slots may be dynamically allocated
depending on the particular data being transmitted, e.g., if one device is retrieving a larger data item, it
may be allocated a larger time slot. Defendants, however, attempt to use a cherry-picked dictionary
definition to import a requirement that time slots must be allocated in a “defined, repeated sequence”
regardless of the size of the data item or whether a particular subscriber terminal is actively sending or
receiving data. That “defined, repeated sequence” limitation should be rejected because it is not in the
claims and is contrary to the intrinsic record.
The intrinsic record describes the dynamic allocation of time slots of varying length within
frame periods of varying length with no requirement that the allocation occurs in a “defined, repeated
sequence.” The specification teaches the use of TDM techniques to subdivide a single orthogonal
channel into time slots of varying length so that data items of varying sizes can be sent to different
13
14

See ’326 Patent cls. 1, 5–8; ’819 Patent cl. 11; ’327 Patent cl. 15.
Quote appears in the ’326, ’211, and ’327 Patents.

-12-

subscriber terminals over the same orthogonal channel. For example, one frame in an orthogonal
channel may be divided into four time slots or only two, in order to provide the necessary bandwidth
for each data item on a “per frame” basis:
This gives a great deal of flexibility in how channels are used, since some can be
subdivided in the time dimension whilst others are not, and those which are subdivided
can be subdivided differently to yield differing numbers of time slots per frame
period. . . . This flexibility is useful, since for some communications, eg. fax, a rate of
40 kb/s may not be acceptable, and hence the use of four time slots would not be
suitable.
’326 Patent col. 3 l. 59–col. 4 l. 12 (emphases added).15
Figure 15A of the Patents-in-suit gives an example of how the orthogonal channels may be
dynamically divided into time slots of varying length depending on the data items being transmitted.

Each column labeled with an “RW” number is a different orthogonal channel. Some orthogonal
channels, such as RW1 and RW2, are not divided at all. Some, such as RW10 and RW11, are divided
into two equal time slots, while others, such as RW5 and RW6, are divided into four equal time slots.16
This allows a data item to be assigned a smaller or larger time slot as needed based on its size or
importance. Moreover, the description of the preferred embodiment indicates that the invention may be
implemented with frame periods of varying length. For example, Figures 13A and 13B depict an
embodiment with a “125 µs subframe format” that is repeated through a longer frame “typically lasting
15

Quote appears in the ’326 and ’211 Patents.
Defendants’ Technology Tutorial incorrectly states that the last digit in the time slot designations, e.g., “F1-T4/1,
F1-T4/2,” etc., shown in Figure 15A indicates the user to which the time slot is assigned. See Defendants’
Technology Tutorial, ch. 13, 0:46–0:55. The specification, however, explains that this last digit is the number of the
“selected traffic timeslot.” ’326 Patent col. 18 ll. 33–38. The allocation of different timeslots to different users is
not depicted in the Figure itself.
16

-13-

for 4 milliseconds.” Id. col. 17 ll. 33–35. But for embodiments shown in other figures, the entire frame
is described as 125 µs in length with no repeated subframes. See id. col. 15 ll. 44–47 (describing the
use of TDM to allow “up to four signals” during a “125 µs frame” in Figure 9B); see also id. col. 2 ll.
53–60; id. col. 3 l. 63–col. 4 l. 3. Thus, the 125 µs period shown in Figure 15A can be implemented as
the entire frame or it can be repeated as a subframe—both embodiments are described.
Furthermore, even in the preferred embodiment, time slots need not be assigned in a “defined,
repeated sequence,” but rather may be reallocated to different subscriber terminals as needed. The
description of the preferred embodiment states that channels and time slots are assigned based on
demand. See id. col. 6 l. 65–col. 7 l. 2 (“[I]n preferred embodiments demand-based access is provided,
so that the number of subscribers which can be supported exceeds the number of available wireless
links.”); id. col. 21 l. 4–col. 22 l. 4. This demand-based access means that instead of maintaining an
open connection to a central terminal through the allocation of the same time slot in each successive
frame, a subscriber terminal will only be able to make incoming and outgoing calls if there are
available channel resources for it to secure a free “traffic channel.” See id. col. 21 ll. 13–16, 45–47 (“If
the Free list is empty the outgoing call is blocked.”). When the call is complete, the subscriber terminal
releases the traffic channel, which is then available for use in wireless links with other subscriber
terminals. Id. col. 23 ll. 5–6. Because the subscriber terminals of the preferred embodiment are
constantly reserving and releasing traffic channels, i.e., sending data in time slots and then releasing the
time slots for others’ use, those time slots are not allocated in a “defined, repeated sequence.”
Accordingly, Defendants’ proposed construction would actually read out at least some of the preferred
embodiments described in specification. A construction that excludes the preferred embodiment is
“rarely, if ever, correct.” See Vitronics, 90 F.3d at 1583.
Defendants’ “defined, repeated sequence” limitation is apparently drawn exclusively from

-14-

extrinsic evidence. Defendants cite to a dictionary, which uses the phrase “defined, repeated sequence”
in only one of the two definitions it provides for the term “time-division multiplexing (TDM).” See
The IEEE Standard Dictionary of Electrical and Electronics Terms 1115 (6th ed. 1996) (attached as
Exh. E). The other definition in the same dictionary does not support such a limitation. Rather, it
defines “TDM” as “[a] method by which two or more channels of information are transmitted over the
same link by allocating a different time interval for the transmission of each channel.” Id. This
definition is consistent with the teachings of the specification and supports the fact that one of skill in
the art would understand that TDM techniques do not require time slots to be allocated “in a defined,
repeated sequence.” Likewise, most of the other dictionaries Defendants cite do not limit “TDM” to
the creation and allocation of time slots “in a defined, repeated sequence.”17
An extrinsic dictionary definition, particularly one that Defendants have cherry-picked from
among other broader definitions, is not a proper basis to import a limitation that does not appear in the
claim language itself. See Phillips, 415 F.3d at 1321–22; see also Ultimax Cement Mfg. Corp. v. CTS
Cement Mfg. Corp., 587 F.3d 1339, 1347 (Fed. Cir. 2009) (“[T]he court erroneously relied on expert
testimony and a single dictionary definition to the exclusion of other dictionary definitions and, most
importantly, the context in which the term was used within the claim and the specification.”). More
importantly, regardless of the dictionary one chooses, extrinsic evidence cannot be used to contradict
the otherwise broader teachings in the intrinsic record. See Phillips, 415 F.3d at 1324 (explaining that
extrinsic evidence may not be “used to contradict claim meaning that is unambiguous in light of the
intrinsic evidence”).
17

See, e.g., Alan Freedman, The Computer Glossary 394 (7th ed. 1995) (attached as Exh. F) (defining TDM as “[a]
technique that interleaves several low-speed signals into one high-speed transmission”); Harry Newton, Newton’s
Telecom Dictionary 606 (11th ed. 1996) (attached as Exh. G) (defining TDM as “[a] technique for transmitting a
number of separate data, voice and/or video signals simultaneously over one communications medium by quickly
interleaving a piece of each signal one after another”); Ramjee Prasad, CDMA for Wireless Personal
Communications 20–21 (1996) (attached as Exh. H) (discussing Time Division Multiple Access (TDMA), not time
division multiplexing (TDM)); Theodore S. Rappaport, Wireless Communications 400–01 (1996) (attached as Exh. I)
(same).

-15-

Finally, Defendants’ construction is contradicted by other extrinsic evidence, including an
article authored by one of the Defendants’ own engineers (“the Su reference”). Shing-Fong Su, The
UMTS Air-Interface in RF Engineering 253 (2007) (attached as Exh. J) (authored by a “Distinguished
Member of Technical Staff” at Alcatel-Lucent). Figure 11.3(a) of the Su reference, reproduced below,
shows the use of TDM in seven code channels (depicted as the seven horizontal rows), in which all of
the channels are assigned to a single user (e.g., “User 1,” “User 2,” etc.) during each time slot (herein
referred to as a transmission time interval or “TTI”).

The nine columns in the figure are nine TTIs, which corresponds to 1.8 frames.18 In the first frame, the
time slots are allocated to different wireless links as follows: User 1, User 2, User 3, User 3, User 1.
That sequence is not repeated in the next frame, where the first four slots are assigned: User 2, User 2,
User 4, User 1. While the Su reference post-dates the filing of the Patents-in-suit, its teaching regarding
TDM is consistent with both the teaching in the specification that time may be dynamically allocated
amongst different wireless links as needed, as well as the broader dictionary definitions discussed
above. Thus, the Su reference further evidences the understanding in the art that time need not be
allocated in a defined, repeated sequence from frame to frame.
D.

Time slot19

WI-LAN’S PROPOSED CONSTRUCTION
“An interval of time”

DEFENDANTS’ PROPOSED CONSTRUCTION
ideo signals simultaneously over one communications
k is permitted to use a shared communication channel”

The parties agree that the term “time slot” refers to the intervals or periods of time within a

18

The figure depicts HSDPA code channels. HSDPA is a standardized cellular communication protocol in which
there are five TTIs per frame. Su, supra, at 259; 3GPP TS 25.211, v.6.10.0, § 5 (Release 6) (attached as Exh. K).
19
See ’326 Patent cls. 1, 5, 7; ’211 Patent cls. 1, 5; ’327 Patent cl. 15.

-16-

frame that are allocated using the TDM techniques discussed above.

The rest of Defendants’

construction, however, is wrong because it suggests that only a single wireless link can use the entire
frequency channel during this interval of time. Such a requirement ignores the surrounding claim
language, which states that data items are inserted “within a time slot of the orthogonal channel,” not
the shared communication or frequency channel, as Defendants urge.20
The claim language consistently states that the time slots are “of the orthogonal channel,” ’326
Patent cls. 1, 5; ’327 Patent cl. 15, or “within said orthogonal channel,” ’211 Patent cls. 1, 5. In other
words, the time slots are subdivisions within each orthogonal channel created using TDM techniques,
while the orthogonal channels are themselves created within the single frequency or communication
channel. This is illustrated in Figure 15A of the Patents-in-suit.

By creating these time slots, multiple wireless links can operate within a given orthogonal channel
(depicted as the columns labeled RW1 through RW15) in a given frame period.
Defendants’ construction incorrectly suggests that only one wireless link can use the frequency
or communication channel during a particular time slot. This ignores the Patents-in-suit’s teaching that
the time slots further subdivide orthogonal channels, which allows different wireless links to operate at
exactly the same time by using time slots in different orthogonal channels. This is again illustrated in
Figure 15A, which shows that three different wireless links, for example, could transmit at the same
time by using the first time slot in RW5, RW6, and RW7, respectively. If Defendants’ construction
20

At the very least, Defendants’ reference to a “shared communication channel” is confusing and unnecessary
because the claims already state that the time slots are created within the orthogonal channels.

-17-

were adopted, it would read out the divisions between orthogonal channels described in the
specification and depicted in Figure 15A. See Vitronics, 90 F.3d at 1583 (explaining that a construction
that results in the preferred embodiment not falling within the scope of the patent claim “is rarely, if
ever, correct”). It would also be contrary to the express language of the claims, which states that the
time slots are created within the orthogonal channels.
E.

TDM encoder21 / TDM decoder22

WI-LAN’S PROPOSED CONSTRUCTION
“Hardware or software for applying TDM
techniques”
“Hardware or software for extracting a data item
from a predetermined time slot within the
orthogonal channel”

DEFENDANTS’ PROPOSED CONSTRUCTION
“A device that applies time division multiplexing (TDM)
techniques to share a communication channel among
multiple wireless links”
“A device used to extract information from a
communication channel that is shared among multiple
wireless links by allocating a given period of time to each
such link in a defined, repeated sequence”

Wi-LAN’s constructions for the “TDM encoder” and “TDM decoder” terms are based on the
intrinsic record. Defendants’ proposed constructions are largely consistent with Wi-LAN’s, but differ
in two significant respects: (1) Defendants refer to the encoder and decoder as “a device,” which
incorrectly implies that they are limited to hardware as opposed to software; and (2) Defendants again
try to import a “defined, repeated sequence” limitation, this time into the “TDM decoder” term. WiLAN disputes these attempts to narrow the plain and ordinary meaning of these terms.23
The TDM encoder and TDM decoder serve complementary functions in the claimed
inventions. The central terminal uses a TDM encoder to place data intended for various subscriber
terminals in the appropriate time slots of an orthogonal channel, to allow data for multiple subscriber
terminals to be transmitted on any given orthogonal channel. See ’326 Patent col. 13 ll. 36–53 (“[T]he

21

See ’326 Patent cls. 1, 2, 5, 8–10; ’819 Patent cl. 11; ’327 Patent cl. 15.
See ’211 Patent cls. 1, 2, 5.
23
Further, the use of “communication channel” in Defendants’ constructions of both “TDM encoder” and “TDM
decoder” is confusing because it suggests that TDM techniques are applied to the overall frequency or
communication channel. See supra Part IV.D (discussion of “time slot”). It is more accurate to say that these
techniques may be applied to various orthogonal channels within the overall communication channel, as explicitly
stated in the claim language. See, e.g., ’326 Patent cl. 1; ’211 Patent cl. 1.
22

-18-

TDM encoder will apply appropriate TDM encoding to enable the data to be inserted in the appropriate
time slot.”). The TDM decoder retrieves the data intended for that subscriber terminal from the
appropriate time slots of the orthogonal channel. See id. col. 14 ll. 38–41 (“[T]he output . . . is then
passed through TDM decoder 183 to extract the call data from the particular time slot in which it was
inserted by the CT [central terminal] TDM encoder 105.”).
Defendants appear to contend that the TDM encoder and decoder must be a hardware device
and that the claims do not encompass software-based encoders and decoders.24 But nothing in the
intrinsic record limits encoders and decoders to hardware.

To the contrary, the specification

contemplates compatibility with both “hardware and software equipment.” Id. col. 2 l. 62. Moreover,
the specification gives an example of a decoder, called a “Viterbi decoder,” see id. col. 14 ll. 34–37,
which one of ordinary skill in the art would understand could be implemented by hardware or
software.25
Further, Defendants’ proposed construction for the “TDM decoder” term is wrong because it
contains the same “defined, repeated sequence” limitation that Defendants try to import into “TDM
techniques.” As discussed above, Defendants’ attempt to import that limitation should be rejected for a
variety of reasons that apply with equal force to the “TDM decoder” term. See supra Part IV.C.
Defendants’ attempt to restrict the claimed inventions to the allocation of time slots in a “defined,
repeated sequence” should be rejected.
F.

Overlay code26

WI-LAN’S PROPOSED CONSTRUCTION
“Orthogonal codes used to increase the number
orthogonal channels that would otherwise be available”

DEFENDANTS’ PROPOSED CONSTRUCTION
“A second code applied in series with the orthogonal
code”

24

To the extent Defendants contend that their construction does not so limit the claims, then the phrase “hardware or
software,” as set forth in Wi-LAN’s proposals, is clearer on this point and should be adopted instead.
25
See, e.g., Jean Conan & Rolando Oliver, Hardware and Software Implementation of the Viterbi Decoding
Algorithm for Convolutional Codes, in MIMI 76: Proceedings of the International Symposium on Mini and Micro
Computers 190 (M.H. Hamza ed., 1977) (attached as Exh. L).
26
See ’326 Patent cls. 2, 5, 9, 10; ’211 Patent cls. 2, 5; ’819 Patent cls. 1, 2, 4, 6–10, 12, 13, 15, 17, 21, 22; ’327
Patent cl. 13.

-19-

Overlay codes are additional orthogonal codes that can be used to subdivide an orthogonal
channel to create additional channels. ’819 Patent col. 2 ll. 54–57 (“By using overlay codes in addition
to the known set of orthogonal codes, it is possible for selected orthogonal channels to be subdivided to
form additional orthogonal channels.”); id. col. 3 ll. 31–36.27 There appears to be no dispute on this
point. Defendants, however, attempt to limit the order in which the overlay codes must be applied.
They contend the claimed overlay codes must be applied “in series” with the orthogonal code, that is,
either before or after, but not simultaneously.
Of course, nothing in the claim language itself so restricts the invention. All the claims require
is that both overlay and orthogonal codes are applied: “a first encoder for combining a data item to be
transmitted on the single frequency channel with said orthogonal code . . . a second encoder arranged to
apply the overlay code from the overlay code generator to said data item.” See, e.g., id. cl. 1. The fact
that some of the claims refer to a “first” and “second” encoder for applying these codes does not
impose a serial or temporal limitation on the order in which the codes are applied. Indeed, the Federal
Circuit has specifically rejected that claim construction argument:
The use of the terms “first” and “second” is a common patent-law convention to
distinguish between repeated instances of an element or limitation. In the context of
claim 1, the use of the terms “first . . . pattern” and “second . . . pattern” is equivalent to
a reference to “pattern A” and “pattern B,” and should not in and of itself impose a
serial or temporal limitation . . . .
3M Innovative Props. Co. v. Avery Dennison Corp, 350 F.3d 1365, 1371 (Fed. Cir. 2003) (citations
omitted) (emphasis added); see also Performance Pricing, Inc. v. Google Inc., No. 2:07cv432, 2009
WL 2497102, at *9 (E.D. Tex. Aug. 13, 2009).
The claims are silent as to the order in which the overlay and orthogonal codes are applied
because the order is not important to the invention. What matters is only that both types of codes are
used to make more channels: “By using overlay codes in addition to the known set of orthogonal
27

Quoted and cited text appears in only the ’819 Patent.

-20-

codes, it is possible for selected orthogonal channels to be subdivided to form additional orthogonal
channels.” ’819 Patent col. 2 ll. 54–57 (emphases added)28; see also ’326 Patent col. 15 ll. 42–44
(describing Figure 9A, stating, “When using overlay codes, an RW code is split in the RW space
domain to allow up to four sub channels to operate at the same time.”). Whether the overlay codes are
applied before, after, or simultaneously with the orthogonal codes, additional channels are created just
as the specification describes.
Defendants cannot point to a lexicographer redefinition of the term “overlay code,” nor an
affirmative disclaimer of simultaneous application of these codes, to support their proposed
construction because there is none. See, e.g., Retractable Techs., Inc. v. Becton, Dickinson & Co., 659
F.3d 1369, 1371 (Fed. Cir. 2011) (explaining that claims are given their ordinary meaning, unless the
applicant “acted as his own lexicographer or intentionally disclaimed or disavowed claim scope”).
While it is true that in the preferred embodiments, the overlay codes are applied before the orthogonal
codes,29 this is no reason to so limit the claims. See Liebel-Flarsheim Co., 358 F.3d at 906. Indeed,
even Defendants do not urge that overlay codes can be applied only before the orthogonal codes.
The extrinsic dictionary definitions that Defendants cite are not a proper basis for importing an
“in series” limitation into the claims. None of these definitions purports to define the term “overlay
code,” much less define the term as it is used in the intrinsic record of the Patents-in-suit. For example,
Defendants cite a general purpose dictionary, which defines the noun form of “overlay” as “something
laid as a covering over something else.” See Definition for Overlay, Oxford Dictionaries Online,
http://oxforddictionaries.com/definition/overlay?q=overlay (attached as Exh. M). But “overlay” is used
as an adjective in the claims. And even in the preferred embodiment, the overlay code is not “laid . . .
over” the orthogonal code; rather in that embodiment it is applied before the orthogonal code. See
28

Quote appears only in the ’819 Patent.
’326 Patent col. 12 l. 63–col. 13 l. 13, figs. 7A & 7B (showing that spreader 111 applies overlay codes from
overlay code generator 113 before spreader 116 applies orthogonal codes from RW code generator 112).

29

-21-

supra note 29. Such inconsistency highlights why these dictionaries are not pertinent to the proper
construction of “overlay code.” Defendants’ dictionaries define different terms in different contexts in
ways that differ from the use of the actual claim term in the intrinsic record. See Phillips, 415 F.3d at
1321 (“[H]eavy 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.”).
Because the claims do not limit the order in which the overlay and orthogonal codes are
applied, and there is nothing in the intrinsic record that affirmatively bars their simultaneous
application, Defendants’ attempt to import an “in series” limitation should be rejected.
G.

Parameters pertaining to a wireless link within the cell indicative of whether
that wireless link is subject to interference from signals generated by other
cells30

WI-LAN’S PROPOSED CONSTRUCTION
Plain and ordinary meaning

DEFENDANTS’ PROPOSED CONSTRUCTION
“Two or more indicators that an individual wireless link is
experiencing interference from other cells”

In order to reduce the effect of interference from other cells, the ’327 Patent claims an
interference controller that analyzes parameters or indicators of signal interference and, based on that
analysis, reduces the number of CDMA channels in use. Wi-LAN does not dispute that the claims
refer to “an analyzer for receiving parameters,” with “parameters” being a plural term. See ’327 Patent
cls. 1, 5, 11. That much is clear on its face, and no construction is necessary to make that point.
Instead, the parties dispute whether the term “parameters” means that the analyzer must be capable of
receiving “two or more” different types of indicators, or whether the claims also encompass
embodiments where the “parameters” are multiple values of the same indicator.
The plain and ordinary meaning of this term encompasses both of these possibilities. Whether
the values the “analyzer” is capable of receiving are measurements of the same indicator or
30

See ’327 Patent cls. 1, 5, 11.

-22-

measurements of two or more different indicators, those values are still “parameters.” This is
consistent with everyday parlance. For example, if one has received “awards” for his work, that could
mean he received two or more different awards, but it could just as readily mean that he received the
same award two or more years in a row.
Nothing in the specification disclaims the use of multiple values of the same indicator. In fact,
the intrinsic record teaches that the analyzer need not rely on two or more types of indicators to control
interference. At least some of the preferred embodiments make the decision to reduce the number of
CDMA channels based solely on the bit error rate (“BER”). See ’327 Patent col. 25 ll. 53–67 (“[I]f the
actual bit error rate exceeds the BER goal . . . then the dynamic pool sizing function 360 may be
arranged to send a pool sizing request to the demand assignment [“DA”] engine 380. . . . [T]hen the
DA engine 380 can disable one or more of the modems, this causing the interference, and hence the
actual BER, to be reduced.”). Moreover, the dependent claims of the ’327 Patent teach that the number
of CDMA channels may be adjusted based solely on a single type of parameter, such as the BER or the
grade of service (“GOS”), being above or below a threshold value. See, e.g., id. cls. 2 (“the channel
controller being responsive to the analyser indicating that the BER exceeds the predetermined
maximum acceptable BER to remove a code division multiplexed channel from the channel pool”), 3
(similar with GOS); see also id. cls. 6, 7, 23, 24.
Defendants’ construction is drawn from a single embodiment in the specification that discloses
the use of two different indicators (BER and GOS). See id. col. 25 ll. 11–31. But that is no reason to
exclude from the claims the other disclosed embodiments that use only one type of indicator to gauge
the level of interference. See Liebel-Flarsheim Co., 358 F.3d at 906 (holding that it is improper to limit
the scope of the claims based on a single disclosed embodiment).

The ordinary meaning of

“parameters” is consistent with the examples in the specification and includes embodiments where the

-23-

claimed “parameters” are multiple values of the same indicator.
H.

Channel pool31

WI-LAN’S PROPOSED CONSTRUCTION
Plain and ordinary meaning

DEFENDANTS’ PROPOSED CONSTRUCTION
“The set of orthogonal channels available to a central
terminal to use to establish wireless links”

The parties agree that a “channel pool” is simply a pool of channels available to establish
wireless links. This is exactly what the claims already say on their face: “a channel pool of code
division multiplexed channels available for the establishment of said wireless links.” ’327 Patent cls. 1,
11. Because the claim language is already clear, there is no need for additional construction of this
term. See O2 Micro, 521 F.3d at 1362.
V. ARGUMENT FOR DISPUTED MEANS-PLUS-FUNCTION CLAIM TERMS
A.

Legal Principles for Construing Means-Plus-Function Claim Terms

“The first step in construing a means-plus-function claim limitation is to define the particular
function of the claim limitation.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir.
2004). “The court must construe the function of a means-plus-function limitation to include the
limitations contained in the claim language, and only those limitations.” Cardiac Pacemakers, Inc. v.
St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). The next step “is to look to the specification
and identify the corresponding structure for that function.” Golight, 355 F.3d at 1334.
“For computer-implemented means-plus-function claims where the disclosed structure is a
computer programmed to implement an algorithm, the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”
Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (quotation omitted). This
requirement “does not impose a lofty standard.” Id. at 1341. A patentee may “express that algorithm
in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in
31

See ’327 Patent cls. 1, 2, 5, 6, 11.

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any other manner that provides sufficient structure.” Id. at 1340 (citation omitted) (emphasis added).
“Sufficient structure must simply ‘permit one of ordinary skill in the art to know and understand what
structure corresponds to the means limitation’ so that he may ‘perceive the bounds of the invention.’”
In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Finisar Corp., 523 F.3d at 1340–41).
Defendants contend that the means-plus-function terms in the Patents-in-suit are invalid
because no structure is disclosed. To prove this, they must overcome a high burden. A finding of
indefiniteness is proper only “if the construction remains insolubly ambiguous.” Star Scientific, Inc. v.
R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed. Cir. 2011). “Absolute clarity is not required to
find a claim term definite. [The Federal Circuit] has held that a claim term may be definite even when
discerning the meaning is a formidable [task] and the conclusion may be one over which reasonable
persons will disagree.” Id. (quotation omitted).
B.

Channelisation means for determining which of the orthogonal channels will
be subject to TDM techniques32
WI-LAN’S PROPOSED CONSTRUCTION

Function: determining which of the orthogonal channels will be subject to
TDM techniques
Corresponding Structure: A demand assignment engine connected to a network
and one or more modems. The demand assignment engine determines which
of the orthogonal channels will be subject to TDM techniques based on
information regarding the capability of subscriber terminals to support TDM
techniques and/or the type of data items to be transmitted.

DEFENDANTS’ PROPOSED
CONSTRUCTION
Indefinite under 35 U.S.C. § 112

Wi-LAN’s construction is directed to the function recited in the claim and the structure
disclosed in the specification. Defendants contend this term is indefinite because the specification
discloses no structure. They are wrong.
The Patents-in-suit disclose a structure called the demand assignment engine, or “DA engine,”
which performs the claimed function of “determining which of the orthogonal channels will be

32

See ’326 Patent cl. 6.

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subject to TDM techniques.” Figure 17, reproduced
here, shows the DA engine with its connections to the
network and modems highlighted.

The DA engine

receives all incoming call information that is destined for
subscriber terminals from a network over line 390. ’326
Patent col. 23 ll. 58–62. “The DA engine 380 includes a
call control function,” which determines how to set up
the channels for transmission. Id. col. 23 ll. 62–63. The
DA engine controls the number of channels by
“provid[ing] modem enable signals . . . to each of the modems on the [central terminal] modem shelf.”
Id. col. 24 ll. 20–22. Figure 17 shows the DA engine 380 connected to the encoder 325 in the modem
320. This configuration enables the DA engine to control the channels. The DA engine determines
which orthogonal channels will use TDM techniques and which ones will use overlay codes and
“provid[es] the encoders 325 with instructions on which set of overlay codes or how many TDM slots
to be used for signals to be transmitted to the [subscriber terminals] 20.” Id. col. 24 ll. 27–30.
The algorithm the DA engine uses to determine which of the orthogonal channels will be
subject to TDM techniques is based upon one or both of two inputs. First, the DA engine looks to
whether the subscriber terminal to which data will be transmitted “incorporate[s] the features necessary
to support TDM techniques.” Id. col. 3 ll. 44–53.33 Those that do not support TDM “require the full
orthogonal channel for the whole frame period,” which means that TDM techniques will not be used on
those orthogonal channels. Id. col. 3 ll. 53–5534; see also id. col. 18 ll. 50–54, 58–64. Second, the DA
engine might also consider the type of data that is to be transmitted in an orthogonal channel to

33
34

Quote appears only in the ’326 and ’211 Patents.
Quote appears only in the ’326 and ’211 Patents.

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determine whether to implement TDM techniques. For example, in the preferred embodiment an
orthogonal channel might be dedicated to transmitting a particular type of data called “call control
information,” in which case the preferred embodiment will not use TDM techniques for that channel
regardless of whether the subscriber terminals support TDM. Id. col. 12 ll. 12–14; id. col. 19 ll. 12–17.
Thus, the DA engine determines whether to use TDM techniques based on information regarding the
capability of subscriber terminals to support TDM techniques and/or the type of data items to be
transmitted.
In light of this disclosure, Defendants cannot prove by clear and convincing evidence that this
term is indefinite. This is particularly so given that the PTO considered this very issue and presumably
determined that the specification discloses sufficient structure.35 The disclosure of the algorithm the
DA engine uses to perform the claimed function is sufficient for “one of skill in the art [to understand
the] disclosure to encompass software [to perform the function] and be[] able to implement such a
program.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir.
2003) (emphasis omitted). Accordingly, the Court should adopt the structure and function as identified
in Wi-LAN’s proposed construction.
C.

Channelisation means for determining, for those orthogonal channels subject
to TDM techniques, how many time slots will be provided within each
orthogonal channel36
WI-LAN’S PROPOSED CONSTRUCTION

Function: determining, for those orthogonal channels subject to TDM
techniques, how many time slots will be provided within each orthogonal
channel
Corresponding Structure: A demand assignment engine connected to a network
and one or more modems. The demand assignment engine determines how
many time slots will be provided within each orthogonal channel based on
information regarding the type of data items to be transmitted.
35

DEFENDANTS’ PROPOSED
CONSTRUCTION
Indefinite under 35 U.S.C. § 112

See Manual of Patent Examining Procedure (6th ed. rev. 3, July 1997) §§ 2106(V)(A) (requiring an examiner to
“Determine Whether the Claimed Invention Complies with 35 U.S.C. 112, Second Paragraph Requirements” and
noting the scope of a “means” limitation), 2181 (setting forth “guidelines for the examination of 35 U.S.C. 112, sixth
paragraph, ‘means or step plus function’ limitations in a claim”) (attached as Exh. N).
36
See ’326 Patent cl. 7.

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This term is directed to an additional function of the channelisation means. As before, WiLAN’s construction is directed to the function recited in the claim and the structure disclosed in the
specification for performing that function.
The specification teaches that the demand assignment engine determines both whether TDM
techniques will be applied to an orthogonal channel and, if so, how many time slots will be provided:
“the DA engine is also responsible . . . for providing the encoders 325 with instructions on . . . how
many TDM slots to be used for signals to be transmitted to the [subscriber terminals] 20.” ’326 Patent
col. 24 ll. 27–30. The specification further teaches that the DA engine makes this determination based
on information regarding the type of data items to be transmitted:
For instance, if an orthogonal channel operates at 160 kb/s, and four time slots are
provided within that orthogonal channel in order to carry data items pertaining to four
different wireless links during one frame period, then each ST receiving data from said
orthogonal channel will receive data at a rate of 40 kb/s . . . . If, alternatively, two time
slots are provided within the orthogonal channel, then data items pertaining to only two
different wireless links will be transmitted per frame period, and the two STs receiving
data will do so at a rate of 80 kb/s . . . . This flexibility is useful, since for some
communications, eg. fax, a rate of 40 kb/s may not be acceptable, and hence the use
of four time slots would not be suitable.
Id. col. 3 l. 63–col. 4 l. 12 (emphasis added)37; see also id. col. 18 ll. 64–67, fig. 15A. In other words,
larger or more important data items need more bandwidth, which means that the DA engine will give
instructions to the encoders to provide fewer (but larger) time slots in those orthogonal channels. The
algorithm disclosed in the specification, wherein the DA engine determines the number of time slots to
provide based on the type of data to be transmitted, is fully captured in Wi-LAN’s proposed
construction. Defendants’ argument that this term is indefinite should be rejected.

37

Quote appears in the ’326 and ’211 Patents.

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D.

Channelisation means for determining which of the orthogonal channels will
be subject to overlay codes38
WI-LAN’S PROPOSED CONSTRUCTION

Function: determining which of the orthogonal channels will be subject to
overlay codes
Corresponding Structure: A demand assignment engine connected to a network
and one or more modems. The demand assignment engine determines which
of the orthogonal channels will be subject to overlay codes based on
information regarding the capability of subscriber terminals to support TDM
techniques and/or the type of data items to be transmitted.

DEFENDANTS’ PROPOSED
CONSTRUCTION
Indefinite under 35 U.S.C. § 112

This channelisation means term is similar to the others. The demand assignment engine is the
corresponding structure that performs the recited function, i.e., “determining which of the orthogonal
channels will be subject to overlay codes.” As explained above, the DA engine determines which
orthogonal channels will use TDM techniques and which ones will use overlay codes and “provid[es]
the encoders 325 with instructions on which set of overlay codes or how many TDM slots to be used
for signals to be transmitted to the [subscriber terminals] 20.” ’819 Patent col. 23 ll. 44–48. Because
the overlay codes are applied to channels where TDM techniques are not applied, the same algorithm
for determining whether to apply TDM techniques (i.e., basing the determination on information
regarding the capability of subscriber terminals to support TDM techniques and/or the type of data
items to be transmitted) also determines whether to apply overlay codes to an orthogonal channel.39
E.

Channelisation means for transmitting information to a plurality of
subscriber terminals40
WI-LAN’S PROPOSED CONSTRUCTION

Function: transmitting that information to a plurality of subscriber terminals
Corresponding Structure: The modem shelf 46, the power supply 44, and the
RF combiner 42.

DEFENDANTS’ PROPOSED
CONSTRUCTION
Indefinite under 35 U.S.C. § 112

After determining which of the orthogonal channels will be subject to TDM techniques, as

38

See ’819 Patent cl. 10.
For example, in the preferred embodiment, when a particular type of data referred to as call control information is
transmitted, the DA engine provides instructions for the encoders to use overlay codes. See ’819 Patent col. 13 ll.
38–44; id. col. 18 ll. 29–34.
40
See ’326 Patent cl. 6; ’819 Patent cl. 10.
39

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recited in claim 6 of the ’326 Patent, or which of the orthogonal channels will be subject to overlay
codes, as recited in claim 10 of the ’819 Patent, the channelisation means recited in those claims
performs the function of transmitting that information to a plurality of subscriber terminals.
The corresponding structure for the claimed “transmitting” function is the modem shelf 46, the
power supply 44, and the RF combiner 42. These components are each depicted in Figure 3 of the
Patents-in-suit. The specification discloses that the “transmitting” function begins at the modem card:
“The modem cards perform the baseband signal processing of the transmit and receive signals to/from
the subscriber terminals 20.” ’326 Patent col. 8 ll. 32–34. These modem cards are part of the modem
shelf. See id. col. 8 ll. 22–31, fig. 3A. The RF combiner then “combines and amplifies the power of
[the] transmit signals, each transmit signal being from a respective one of the . . . modem shelves.” Id.
col. 7 ll. 43–45. The RF combiner finally passes the signal to the central terminal’s antenna for
transmission to the subscriber terminal. See id. col. 7 ll. 50–53. In order that these electronic
components may function, “power supply shelf 44 provides a connection to the local power supply.”
Id. col. 7 ll. 48–49. Since these are the structures disclosed for performing the claimed function, the
Court should adopt Wi-LAN’s proposed construction for this term. See, e.g., Golight, 355 F.3d at
1334–35 (affirming district court construction of corresponding structure based on disclosure in
specification of an assembly that performed the claimed function).
CONCLUSION
For the reasons set forth above, Wi-LAN respectfully requests that each of its proposed
constructions of disputed claim terms be adopted by the Court.

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Dated: March 16, 2012

Respectfully submitted,
By:

/s/ David B. Weaver
Johnny Ward
Texas State Bar No. 00794818
Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
111 W. Tyler Street
Longview, TX 75601
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
David B. Weaver – LEAD ATTORNEY
Texas State Bar No. 00798576
Michael A. Valek
Texas State Bar No. 24044028
John A. Fedock
Texas State Bar No. 24059737
Syed K. Fareed
Texas State Bar No. 24065216
Jeffrey T. Han
Texas State Bar No. 24069870
Seth A. Lindner
Texas State Bar No. 24078862
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Charles P. Ebertin
VINSON & ELKINS LLP
525 University Avenue, Suite 410
Palo Alto, CA 94301-1918
Tel: [phone]
[e-mail]
Attorneys for Plaintiff, Wi-LAN Inc.

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