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

Filing 187

REPLY to Response to Motion re 174 MOTION for Partial Summary Judgment that Patent Claims Are Indefinite filed by Alcatel-Lucent USA Inc., Ericsson Inc., Telefonaktiebolaget LM Ericsson. (Attachments: # 1 Exhibit 1. Declaration of James Olivier, Ph.D.)(Wynne, Richard)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

WI-LAN INC.,
Plaintiff,
v.

CIVIL ACTION NO. 6:10–CV–521–LED

ALCATEL–LUCENT USA INC., et al.,
Defendants.

REPLY IN SUPPORT OF ALCATEL-LUCENT USA INC.
AND THE ERICSSON DEFENDANTS’ MOTION FOR PARTIAL
SUMMARY JUDGMENT THAT PATENT CLAIMS ARE INDEFINITE

Wi-LAN’s Response fails to identify any passages in the specification that disclose an
algorithm for the claimed channelization means, applies the wrong standard, and fails to
distinguish case law that expressly contradicts its arguments.
A.

The specification does not disclose an algorithm corresponding to the claimed
channelization means.
Wi-LAN originally proposed that the structures corresponding to the claimed

channelization means at issue were algorithms “based on one or two inputs” received by a DA
engine. Now, for the first time in its response brief, Wi-LAN proposes that those structures are
actually multi-step processes. Wi-LAN has also revised one of its constructions that it says
contained certain misstatements.1 These last-minute revisions to its claim constructions are
untimely. They are also futile because the newly proposed processes: (1) still fail to explain how
the channelization means performs its “determining” functions; and (2) are not disclosed in the
specification. Further, the declaration of Dr. Jonathan Wells, which Wi-LAN now — again for
the first time — offers to support its contentions is not helpful. As the Federal Circuit has
consistently held, “the testimony of one of ordinary skill in the art cannot supplant the total
absence of structure from the specification.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d
946, 953 (Fed. Cir. 2007).
1.

The specification does not disclose an algorithm that explains how the
channelization means performs the required functions.

The specification does not state that the channelization means determines anything “based
on one or both of two inputs,” as Wi-LAN first proposed. Nor does it describe any of the stepby-step processes Wi-LAN now contends are structures that correspond to the claimed
channelization means. If the specification contained an algorithm, Wi-LAN would certainly
point to it rather than submit an expert declaration trying to create something that isn’t there.
1

See Response Br. at 11 n.8.

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Indeed, at most, the specification states that the channelization means is able to determine
certain things. For instance, it says that “certain orthogonal channels can . . . be designated as
being reserved for communications with STs [subscriber terminals] that do not incorporate the
features necessary to support TDM techniques.”2 Likewise, it describes what can happen if an
orthogonal channel operates at 160 kb/s — four time slots can be provided at 40 kb/s or two time
slots can be provided at 80 kb/s.3 It does not, however, explain how it is determined whether to
provide four or two time slots. The other passages Wi-LAN cites are no different; the
specification never states how the required determining functions are carried out.4
Wi-LAN relies primarily on the Typhoon Touch case, where the Federal Circuit allowed an
algorithm to be disclosed “in prose.” But that court recently clarified its holding in Typhoon
Touch to explain that “[e]ven described ‘in prose,’ an algorithm is still ‘a step-by-step
procedure for accomplishing a given result.’” Ergo Licensing, LLC v. Carefusion 303, Inc., –
F.3d –, 2012 WL 987833, at *4 (Fed. Cir. Mar. 26, 2012) (emphasis added) (citations omitted)
(finding no disclosed algorithm). The specification here does not provide such a procedure —
saying that something can be done does not disclose how it is done (i.e., the procedure).
In Typhoon Touch, the patent claimed a “means for cross referencing said responses with
one of said libraries of said possible responses.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659
F.3d 1376, 1383 (Fed. Cir. 2011). The patent described in detail how the claimed cross
referencing was accomplished: “Cross-referencing entails the matching of entered responses with
a library of possible responses and, if a match is encountered, displaying the fact of the match,

2

’326 Patent at 3:50–53 (emphasis added).
’326 Patent at 3:63–4:12.
4
See id. at 12:12–14; 18:64–67; 19:12–17. See also Ex. 1: Declaration of James Olivier, Ph.D.
(April 19, 2012) ¶¶ 12–20 (explaining that Wi-LAN’s supposed algorithms: (1) are not disclosed in the
patents; and (2) do not explain how to perform the required determining functions).
3

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otherwise alerting the user, or displaying information stored in memory fields associated with
that library entry.” Id. at 1385 (quoting the patent). Thus, the specification in Typhoon Touch
explained how the claimed function was performed. In contrast, the patents here are like Ergo;
they disclose the functions but not how the channelization means performs those functions.
2.

It is irrelevant that a person skilled in the art may be able to program a DA
engine to perform the required functions.

Again, Wi-LAN has not cited — because it cannot — any language from the specification
that describes how the “determining” functions are performed. Rather, it contends its proposed
algorithms are disclosed because the specification purportedly describes information the DA
engine considers to make the claimed determinations. According to Wi-LAN, “[b]ased on this
disclosure and the knowledge existing in the field at the time, one of skill could readily program
a DA engine to perform the recited determining functions.”5 Wi-LAN’s argument fails for at
least the following two reasons.
First, Wi-LAN applies an incorrect standard. “The inquiry is whether one of skill in the art
would understand the specification itself to disclose a structure, not simply whether a person
would be capable of implementing a structure.” Biomedino, 490 F.3d at 953. And while the
question of “whether a claim is indefinite is based on how the claim limitation would be
understood by one of ordinary skill in the art, ‘the testimony of one of ordinary skill in the art
cannot supplant the total absence of structure from the specification.’” Id. at 950 (quoting
Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir.
2005)). It is therefore irrelevant that a person of ordinary skill may be able to program a DA
engine to perform the claimed function in this case. Biomedino, 490 F.3d at 953 (“[A] bare
statement that known techniques or methods can be used does not disclose structure.”). Since the
5

Response Br. at 8.

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specification does not describe how those functions are performed, the claims are indefinite.
Second, as Wi-LAN acknowledges, “[f]or all the determining functions, the specification
emphasizes that the exact thresholds and mathematical logic for making the determinations based
on the identified types of information is purposefully ‘flexible.’”6 Therefore, according to WiLAN, “[o]ne of skill in the art would understand that they could tailor the precise thresholds and
logic to meet their needs.”7 The undisputed “flexibility” of Wi-LAN’s proposed algorithm and
the fact that it allows the channelization means to be “tailored” to meet different needs belie any
argument that the patents disclose a structure with enough specificity to satisfy section 112,
paragraph 6. As the Federal Circuit held in Blackboard: “That ordinarily skilled artisans could
carry out the recited function in a variety of ways is precisely why claims written in ‘meansplus-function’ form must disclose the particular structure that is used to perform the recited
function.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009)
(emphasis added). By failing to describe how the channelization means perform their functions,
Wi-LAN is improperly attempting to capture any possible means for performing those functions.
“Section 112, paragraph 6, is intended to prevent such pure functional claiming.” Id.
B.

The channelization means must be a single structure.
Wi-LAN also contends the claimed channelization means does not have to be a single

structure. Judge Ward’s ruling in Arbitron contradicts Wi-LAN on this point. Arbitron, Inc. v.
Int’l Demographics Inc., No. 2:06-cv-434, 2009 WL 68875, at *15 (E.D. Tex. Jan. 8, 2009). That
case, like this one, involved a means-plus-function term where two “for” function phrases were
joined by the conjunction “and”; the claim there recited a means “for generating reward signals”
and “for transmitting the reward signals.” Id. In construing that term, Judge Ward held “there can
6
7

Response Br. at 12 (emphasis added).
Id.

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be only a single means that supports both these functions.” Id. (relying on Cardiac Pacemakers,
Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002). Wi-LAN does not argue Judge
Ward was wrong, but it attempts to distinguish the holding by stating that the “specification-atissue clearly linked both functions to a single structure.”8 This is a false distinction, however,
because in this case the claims, themselves, clearly link the functions to a single means.
Claim 6 of the ’326 Patent claims a “channelisation means for determining which of the
orthogonal channels will be subject to TDM techniques, and for transmitting that information to
a plurality of subscriber terminals within the wireless telecommunications system” (emphasis
added). Claim 7, which is dependent from claim 6, makes it clear that the means for determining
and the means for transmitting are the same. Claim 7 claims: “A central terminal as claimed in
claim 6, wherein the channelisation means also determines, for those orthogonal channels
subject to TDM techniques, how many time slots will be provided within each orthogonal
channel” (emphasis added). Claim 7 does not refer to “a” channelization means or “one of the”
channelization means of claim 6. It refers to “the” — singular — channelization means of claim
6. Construing claim 6 to require separate channelization means, as Wi-LAN proposes, would
improperly render claim 7 ambiguous. E.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006) (constructions that render claim terms ambiguous are improper).
Accordingly, the Court should reject Wi-LAN’s argument that the claimed means “for
determining” and “for transmitting” are two separate structures.
C.

Conclusion
For the reasons stated, Wi-LAN has failed to rebut the arguments in Defendants’ Motion.

Defendants therefore respectfully renew their request that the Court grant summary judgment
that claims 6, 7, and 8 of the ’326 Patent and claim 10 of the ’819 Patent are invalid as indefinite.
8

Response Br. at 4 n.3.

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Dated: April 19, 2012

Respectfully submitted,
/s/ Robert A. Appleby
Gregory S. Arovas (pro hac vice)
Robert A. Appleby (pro hac vice)
Jeanne M. Heffernan (pro hac vice)
Akshay S. Deoras (pro hac vice)
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
Tel: [phone]
Fax: [phone]
[e-mail]
Michael E. Jones
Allen F. Gardner
POTTER MINTON PC
110 N. College, Suite 500 (75702)
P.O. Box 359
Tyler, Texas 75710
[phone]
[phone] (Facsimile)
[e-mail]
[e-mail]
ATTORNEYS FOR DEFENDANT
ALCATEL-LUCENT USA INC.

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/s/ Richard L. Wynne, Jr.
Bruce S. Sostek (Lead Attorney)
State Bar No. 18855700
[e-mail]
Richard L. Wynne, Jr.
State Bar No. 24003214
[e-mail]
Matthew P. Harper
State Bar No. 24037777
[e-mail]
THOMPSON & KNIGHT LLP
1722 Routh Street, Suite 1500
Dallas, Texas 75201
214.969.1700
214.969.1751 (facsimile)
ATTORNEYS FOR DEFENDANTS
TELEFONAKTIEBOLAGET LM ERICSSON and
ERICSSON INC.

CERTIFICATE OF SERVICE
I certify that the foregoing document was served electronically on all counsel of record
on April 19, 2012.
/s/ Richard L. Wynne, Jr.
Richard L. Wynne, Jr.

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