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

Filing 185

RESPONSE in Opposition re 174 MOTION for Partial Summary Judgment that Patent Claims Are Indefinite filed by WI-LAN Inc.. (Attachments: # 1 Exhibit A - Declaration of Jonathan Wells, # 2 Exhibit 1 - ISO Declaration of Jonathan Wells - Jonathan Wells CV, # 3 Exhibit B - Wi-Lan's proposed constructions for "means" terms, # 4 Text of Proposed Order)(Weaver, David)

EXHIBIT A

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
MOBILE COMMUNICA nONS AB; SONY
MOBILE COMMUNICA nONS (USA) INC.;
HTC CORPORATION; HTC AMERICA,
INC .; EXEDEA INC.; LG ELECTRONICS,
INC.; LG ELECTRONlCS MOBI LECOMM
U.S.A., INC.; LG ELECTRONICS U.S .A.,
INC.

Defendants.

§
§

§
§
§
§
§
§
§
§
§
§

Civil Action No.6: I O-cv-S21 -L ED
JURY TRJAL DEMANDED

§
§
§
§

------------------------§
DECLARATION OF JONATHAN WELLS, PH.D., CONCERNING STRUCTURE
SUPPORTING MEANS PLUS FUNCTION CLAUSES

I, Jonathan Wells, do hereby declare as follows:

Background and Qualifications

A.

I. My name is Jonathan Wells. I am the managmg partner of AJ1S LLC, an
independent consulting finn spec ializ ing in wireless technology and emerging wireless
fields.

I have advised clients extensively on wireless devices and networks, mobi le

backhaul, emerging mm-wave technologies, and wireless rules and regulations.

2. I hold a B.Sc. in Physics with Physical Electronics, a Ph.D. in Microwave Physics
and an M.B.A. degree. I am a Senior Member of the Institute of Electrical and Electronic
Engineers (I EEE) and a Member of the IE EE Microwave Theory and Techniques

Society. I have served as chair or co-chair to numerous symposiums and workshops on
mobile networks and wire less technology. I have spoken and published extensively on
wireless technology, and I am one of the named inventors on several patents. My current
CV is attached as exhibit 1 to this Declaration.
3. I also have extensive experience

In

the design and development of wireless

products for industry. I have served as Senior Design Engineer for Matra Marconi Space,
Senior Design Engineer and RF Group Manager for MAS Technology (now Stratex
Networks), Engineering Group Leader and Director of Wideband Products for Adaptive
Broadband (now GE Digital Energy), Director of Product Development for Stratex
Networks, and Director of Product Management and Global Regulatory Affairs for
GigaBeam Corporation.
4. I have been retained as a technical expert for Plaintiff Wi-LAN, Inc. by the law
firm Vinson & Elkins LLP in this action.

In connection with my analysis, I have

reviewed U.S. Patent Nos. 6,222,819 and 6,088,326 (respectively the "'819 Patent" and
the "'326 Patent" or collectively the "Patents").
5. My services are billed at the nonnal rate of $425 per hour.

No part of my

compensation depends on the outcome of this case.

B.

Scope of Analysis
6. I have been asked

(0

evaluate whether one skilled in the art would have understood

there to be structure supporting certain means-plus-function terms in claim 6 of the ' 326
Patent, claim 7 ofthe '326 Patent, and claim 10 of the '819 Patent.

2

7. I have been infonned that in developing an understanding of claim terms, one
skilled in the art should consider the claims themselves and the spec ification and
prosecution history of the patent, including arguments concern ing the meaning and scope
of the claims made by the applicants during prosecution.
8. I have also been informed that the first step in construing a means-plus-function
claim is to define the particular function of the claim limitation and that the next step is to
look to the specification and identify the corresponding structure for that function. Also, I
understand that when the disclosed structure is a specially-programmed computer or
microprocessor, the structure includes an algorithm for perfonning the recited function . It
is my understanding that a patentee may express that algorithm in any understandable
terms, including as a mathematical formula, in prose, as a fl ow chart, or in any other
manner that provides sufficient structure.

I further understand that a highly detailed

description of the algorithm is not required and that the knowledge of one of skill in the
art can be called upon to flesh out a particular structural reference in the specification for
the purpose of satisfying the statutory requirement of definiteness. Finally, I understand
that the structure is sufficient if it pennits one of sk ill in the art to know and understand
what structure corresponds to the means limitation so that he may perceive the bounds of
the invention.
9. The specifications of the Patents describe the invention as re lating " in general to
wireless telecommunications systems and more particularly to techniques for processing
data transmitted and received over a wireless link ... of a wireless telecommunications
system" ('8\9 Patent co l. I 11. 7-11, '326 Patent col I II. 7- 11). In my opinion, one skilled
in this field of art would have a four-year degree in Electrical Engineering, Physics, or
3

Computer Science with some experience in ce llular communicat ions and computer
programming.
C.
Claim 6 of tb e ' 326 Patent: C ha nnelisation mean s for determ inin g which of
the orth ogonal channels will be subject to T DM techniques, and for transmittin g
that inform ation to a plurality of s ubscriber terminals within the wireless
telecommunications system

10. I understand the parties agree that the functio ns disclosed for the "channelisation
means" are detennining which of the orthogonal channels wi ll be subject to TDM
techniques, and transmitting that informat ion to a plurality of subscriber tenninals withi n
the wireless telecommun icat ions system.

I understand the parties disagree as to the

structure disclosed within the patent specifications for perfonning each of these
functions .
11 . The Patents disclose a structure referred to as the demand assignment engine or
"DA engine," which is one part of the modem she lf. This is depicted in Fig. 17 of the
Patents, a portion of which is reproduced below:

'"

~2
~r"~-r~
,..-\._----------

""

r- - -

,
,

---- --- - --,

-

~- - -- --- - - -- -- -- - ---- - - - - ~

4

In this figure the OA Engine 380 is shown within the central tenninal ' s modem shelf302 .

12. The specificat ion links the OA engine within the modem shelf to the claimed
function of "determining which of the orthogonal channels will be subject to TOM
techniques." For examp le, the specification states: "the OA engine is also responsible, in
preferred embodiments, for providing the encoders 325 with instructions on ... how
many TOM slots to be used for signa ls to be transmitted to the STs 20." ' 326 Patent col.
24 11. 26-30; see also ' 326 Patent col. 3 11. 44-59 (linking the same function ascribed to
the OA engine in co l. 24 II. 26-30, as well as function of determining what orthogonal
channels will be subject to TOM techniques, to the "channelisation means").

13. Other parts within the modem shelf perform the function of ''transmitting that
information to a plurality of subscriber terminals within the wireless telecommunications
system ." The specification discloses that the transmitting function is performed by the
modem card ('326 Patent col. 8 II. 32-34) and the RF unit, which "generates the
modulated transmit RF signal s" using the signals encoded by the modem card ('326
Patent col. 8. 11. 23-25). The modem card and the RF unit are parts of the modem shelf
('326 Patent fig. 3A & co l. 8 II. 22). As shown in Figure 3A, the RF unit 66 is connected
to the RF Combiner (element 42), which is used to "combine[] and amplif[y] the power
of [the1 transmit signals" sent from the RF unit within the modem shelf ('326 Patent col.
7 II. 40-44). The modem shelf is powered by a power supply ('326 Patent col. 7 11. 4749).

14. One of skill in the art would understand from the spec ification that the OA
eng me is part of a programmable controller, signal processor, or sim ilar processing

5

component. Programmable controllers were electronic devices with known structures
that were well-known in the art in 1996. Furthermore, the process for implementing logic
using a programmable controller was well -known in the art. Given the skill in the art at
the time, one of skill could readily program a controller to implement the claimed
determining function based upon the algorithm disclosed in the Patents.
15. The specification describes the information to be considered in making this
determination: (I) whether the subscriber terminal to wh ich data will be transmitted
" incorporate[s] the features necessary to support TOM techniques" ('326 Patent col. 3 II.
52-53) and (2) the type of data that is to be transmitted, e.g., whether the data is for "ca ll
control" or " link acquisition" ('326 Patent col. 12 II. 12-14, col. 19 II. 12- 17, Figures 15A
and 158). For example. regarding support of TOM techniques by the subscriber terminal,
the specification states:
In preferred embodiments, the centra l terminal would further
comprise channelisation means for determining which of the
orthogonal channels will be subject to TOM techniques, and for
transmitting that information to a plurality of subscriber terminals .
. . This is useful since, for example, certain orthogonal channels
can hence be designated as being reserved for communications
with [subscriber terminals] that do not incorporate the features
neCe!isary to support TDM techniques, and which hence require
thefull orthogonal channelfor the wholeframe period.
('326 Patent col. 3 II. 44-55 (emphasis added». And in regards to the data type. the
specificat ion states:
[A] first of the orthogonal channels is preferably reserved for the
transmission of signals relating to the acquisition of wireless
links, and the second encoder is used instead of the TDM
encoder to enable overlay codes to be applied to data items to be
sent within said first orthogonal channel from the central terminal
to one of said subscriber terminals. Similarly, a second of the
orthogonal channels is preferably reserved for the transmission of
signals relating to the control of calls, and the second encoder is
6

Uj'ed imitead of the TDM encoder to enable overlay codes to be
applied to data item s to be sent within sa id second orthogona l
channel
('326 Patent col. 4 II. 1. 23-34 (emphasis added)). One of skill would understand that the
specific logic for "determin ing which of the orthogonal channels will be subject to TOM
techniques" could be tailored for the needs of their system,

Indeed, this is the

"flexibility" the specificati on repeatedly describes (see e.g., '326 Patent col. 3 II. 58-61
and col. 411. 8-11).
16, As such, the specification discloses an algorithm for performing the claimed
function. First, the OA engine looks to whether the subscriber terminal to which data will
be transmitted " incorporate[s] the features necessary to support TOM techniques" ('326
Patent col. 3 II. 52-53). Those that do not support TOM "req uire the fully orthogonal
channel for the whole frame period," so TOM techniques will not be used on those
orthogonal channels ('326 Patent col. 3 II. 53-54), The specification also discloses that
the channelisation mean s may " utilize an entire RW channel [i.e., an entire orthogonal
channel]" for signals sent "to products which do not support the COMA enhancements

[i.e., TOM techniques] provided by systems in accordance with preferred embodiments
of the present invention ." ('326 Patent col. 1811.50-54, 58-64).

17. Second, the OA engine considers the type of data that is to be transmitted in an
orthogonal channel to determine whether to implement TOM techniques. In the preferred
embodiment, for example, 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 TOM techniques for that channel regardless of whether the

7

subscriber terminal supports TOM ('326 Patent coL 12 II. 12-14, col. 1911. 12-17, and
col. 4 II. 23-35).

18. Thus, the structure for "determ ining which of the orthogonal channels will be
subject to TOM techniques" disclosed in the specificat ion is a controller programmed to
determine wh ich of the orthogonal channels will be subject to TOM techniques based on
the consideration of the capability of subscriber terminal s to support TOM techniques
and/or the type of data item s to be transmitted.

19. Alternatively, the same algorithm can be expressed as the foll ow ing steps: (I)
cons ider whether the subscriber terminal to which data will be transmitted incorporates
the features necessary to support TOM techniques; (2) consider the type of data that is to
be transmitted in an orthogonal channel; and (3) if the subscriber teoninal supports TOM
techniques and the data type is one for which TOM techniques shou ld be applied, then
apply TOM techniques (otherwise do not).

20. In my opinion, both of these articulations of this algorithm are suffic ient for one
of skill in the art to understand what thi s claim term means and to provide an operative
program for the specified function of "deteonining which of the orthogonal channel s will
be subject to TOM techniques, and for transmitting that infonnation to a plurality of
subscriber teoninals within the wireless telecommunications system" using that
algorithm.

D.
Claim 7 of the '326: Channelisation means for determining, for those
channels subject to TDM techniques, how many time slots will be provided within
each orthogonal channel

8

21. 1 understand the parties agree that the functi on disclosed for the "channelisation
means" is detennining, for those channels subject to TOM techniques, how many time
slots will be provided within each orthogonal channel. I understand the parties disagree
as to the structure disclosed within the patent specificat ions for perfonning this function.

22. The specification links the OA engine within the modem shelf to the claimed
function o f "delermining, for those channels subject to TOM techniques, how many time
slots will be provided within each orthogonal channel." For example, the speci fication
states that ''the OA engine is also responsible, in preferred embodiments, for prov iding
the encoders 325 with instructions on ... how many TOM slots to be used for signal s to

be transmitted to the [subscriber tenninals]." '326 Patent col. 24 II. 26·29; see also '326
Patent co l. 3 II. 44-59 (linking the same function ascribed to the OA engine in col. 24 II.
26·30 to the "channelisation means''). One of ski ll in the art would understand from the
disclosure that the OA engine is part of a programmable controller, signal processor, or
similar processing component. As explained above, given the sk ill in the art at the time,
one of sk ill could readily program a controller to impl ement the claimed determining
function based upon the algorithm disclosed in the Patents.

23. The specificat ion describes the information to be considered in making this
determination. For example, the OA engine considers the type of data items to be
transmitted, and instructs the encoder on how many time slots to be used according to the
characteristics of that data (such as its size):
In preferred embodiments, the channelisation means also
determines. for those orthogonal channels subject to TOM
techniques, how many time slots will be provided within each
orthogonal channel. This gives a great deal of nexibiliry in how
channels are used, since some can be subdivided in the time
9

dimension whilst others are not, and thm,'e which are subdivided
(:an be subdivided differently to yield differing numbers of time
slots per frame period. For instance, if an orthogonal chan nel
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
rece iving data from said orthogonal channel will receive data at a
rate of 40 kb/s (since each ST will only read a quarter of the data
transmitted on the orthogonal channel during each frame period).
If, a lternatively. two time slots are provided within the orthogonal
channel, then data item s pertaining to on ly two different wireless
links will be transmitted per frame period, and the two STs
rece iving data will do so at a rate of 80 kb/s (since each ST will
read half of the data transmitted on the orthogonal channel during
one frame period). This flexibility is use ful , since for some

communicatiom', eg.fax, a rate of 40 kbls may not be acceptable,
and hence the use offour time slots would not be suitable.
('326 Patent col. 3 I. Skot 4 I. 12 (emphasis added». This di sclosure teaches that an
orthogonal channel may contain different numbers of time slots during a frame period
and that for some communications, for example a fax, four time slots may not be suitable
and fewer time slots should be allocated ("326 Patent col. 3 I. Skol. 4 I. 12 and col. 18
11. 64-67). One of skill in the art would understand that reducing the number of time slots
(thereby increasing the dam rate) could be done to accommodate larger data items (such
as a fa.x) , and therefore that the type of data to be sent is a consideration in detennining
how many time s lots to use in an orthogonal channel.

24. The spec ification further discloses examples of different
IS,

"roM mappings," that

divisions of time slots within an orthogonal channel, that may be used and the

different data rates associated (e.g.. 160 kb/s, 40 kb/s, etc.) with each. See '326 Patent
col. 18 table 4; see a/so Fig. ISA (depicting channels divided into of time slots of
differing length). One of skill would understand that the specific logic for "detennining
how many time slots will be provided within each orthogonal channel" cou ld be tailored

10

for the needs of the ir system in light of the trade-off, described in the spec ifi cation,
between being ab le to support add itional wireless links by creating more time slots albeit
at lower data rates, which may not be suitabl e for particu lar data types. Indeed, this is the
"flex ibility" the specification repeatedly describes (see e.g. , '326 Pate nt col. 3 II. 58-61
and col. 4 II. 8- 11 ).

25. As such, the '32 6 Patent discloses a n a lgorithm for performi ng the claimed
funct ion. The DA eng ine considers the type of data that is to be transmitted

In

an

orthogona l c hannel to determine how many time slots will be prov ided.

26. Alternatively, the same algorithm can be expressed as the following steps: ( I)
consider the ty pe of data that is to be tran smitted in an orthogona l c hannel and (2) choose
a suitab le number of time slots to provide within the orthogona l channe l to achieve an
acceptable data rate.

27. In my opinion, both of these artic ulations of this a lgorithm are sufficient for one
of ski ll in the art to understand what this cla im term means and to provide an operative
program for the spec ified function of "determ ining, for those channe ls subject to TDM
techniques, how many time slots wi ll be provided within each orthogona l channe l" usin g
that a lgorithm .

E.
' 819 Claim 10: C ha nnelisation means for determining which of the
orthogo nal cha nnels will be subj ect to overlay codes, a nd for transmitting tbat
information to plurality of s ubscriber termina ls within t he wireless
telecommunications system
28. I undersrond the parties agree that the function disclosed for the "channelisation
mean s" are determin ing which of the orthogonal channels will be subject to overlay
11

codes, and for transmitting that information to plurality of subscriber terminals within the
I understand the parties disagree as to the

wireless telecommunications system.

structures disclosed within the patent specificat ions fo r performing these functions.

29. The spec ification links the DA engine within the modem shelf to the claimed
function of "determining which of the orthogonal channels will be subject to overlay
codes." For example, the specification states that:
[I]n preferred embodiments, overlay codes, rather than TDM, are used to
implement downlink control channels, and data relating to such channels
is passed from a demand assignment engine . . .. The overlay code
generator will be controlled so as to produce the desired overlay code, in
preferred embodiments, this control coming from the DA engine ... .
('8 19 Patent col. 13 I. 38-50; see also '8 19 patent at col. 23 11.45-48 (disclosing that ''the
DA engine is also responsible ... for providing encoders 325 with instructions on wh ich
set of overlay codes ... to be used")).
30. As discussed above, other parts within the modem shelf perform the function of
"transmitting that information to a plurality of subscriber terminals within the wireless
telecommunications system" (see

13 above).

31. One of skill in the art would understand from the disclosure that the DA engine is
part of a programmable controller, signal processor, or similar processing component. As
explained above, given the skill in the art at the time, one of skill could readily program a
contro ller to implement the claimed determining function based upon the algorithm
disclosed in the Patents.
32. The specification of the Patents describes the information to be considered in
making this determination: ( I) whether overlay codes are supported by the subscriber

12

terminal and (2) what type of data is being sent. For examp le, in regards to support for
overlay codes by the subscriber terminal , the spec ification states:
[T]he central terminal preferably incl udes channelisation means for
determining which of the orthogonal channels will be subject to overlay
codes, and fo r transmitting that information to a plurality of subscriber
termina ls within the telecommunications system. This is useful since, for
examp le. certain orthogonal channels can hence be designated as being
reserved for communications with STs that do not incorporate the
features neceSl'ary to !iUppOrl overlay codes, and which hence require a
fu ll 160 kb/s orthogonal channe l.
('8 19 Patent col. 411. 2-11 (emphasis added». And, in regards to the type of data being
sent, the spec ification states:
[T]he chan nels RWI4 and RW15 are reserved as a call control channel
and an [sic] link acquisition channel, respectively, and overlay codes are
employed on these channels, irrespective of whether the path is a
downlink or an uplink path
('819 Patent col. 18 11. 29-34; see also '8 19 Patent col. 1311. 38-44).
33.

Based on thi s disclosure, one of skill wou ld understand that the specific logic

for "determining which of the orthogonal channels will be subject to overlay codes"
cou ld be tailored for the needs of their system in light of the trade-off. described in the
speci fi cation, between being able to support additional wire less links by usi ng overlay
codes to provide additional channels albeit at lower data rates, which may not be suitable
for particular data types. indeed, thi s is the " flexibility" the specification repeated ly
describes (see e.g.. '326 Patent col. 3 11.58-61 and col. 411. 8-11).
34. As such, the ' 819 Patent discloses an algorithm for performing the claimed
function. First, the DA engine looks to whether the subscriber lerminallo which data will
be tran smitted supports overlay codes. After establishing that a subscriber terminal to

13

which data is to be sent suppons overlay codes, the DA engine considers the type of data
to be sent. (,819 Patent co l. 4 1 2-11; '819 Patent col. 18 II. 29-34).
1.

35. This algorithm is sufficient for one of sk il l to understand the bou nds of the claim,
that is, a controller programmed to determine which of the orthogonal channels will be
subject to overlay codes based on the consideration of the capabil ity of subscriber
tenninals to support overlay codes techniques and/or the type of data items to be
transmitted.

36. Alternatively, the same algorithm can be expressed as the fo llowing steps: (I)
consider whether the subscriber tenn inal to wh ich data will be transmitted incorporates
the features necessary to support overlay codes; (2) consider the type of data that is to be
transmitted in an orthogonal channel; and (3) if the subscriber tenninal supports overlay
codes and the data type is one for which overlay codes shou ld be app lied, then apply
overlay codes (otherwise do not).

37. In my opinion, both of these articulations of this algorithm are sufficient for one
of sk ill in the art to understand what this claim term means and to provide an operative
program fo r the specified function of"detennin ing which of the orthogonal channels will

be subject to overlay codes, and for transm itting that information to plurality of
subscriber tenn inals within the wireless te lecommunications system" using that
algorithm.

I declare under penalty of perjury that the fo regoing is
April,2012.

true torr ct xecuted on this
r
~
f\

JOnath/"'e11s
14

th

13 of