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

Filing 200

MEMORANDUM OPINION AND ORDER denying 174 Motion for Partial Summary Judgment That Patent Claims Are Indefinite. The Court interprets the claim language in this case in the manner set forth in this Order. Signed by Judge Leonard Davis on 05/16/12. cc:attys 5-16-12 (mll, )

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

WI-LAN INC.,
Plaintiff,
vs.
ALCATEL-LUCENT USA INC.,
ET AL.,
Defendants.

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CASE NO. 6:10-CV-521

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes the disputed claim terms in U.S. Patent Nos.
6,088,326 (“the ‘326 Patent”); 6,381,211 (“the ‘211 Patent”); 6,222,819 (“the ‘819 Patent”); and
6,195,327 (“the ‘327 Patent”). Further, after reviewing the briefing and arguments relating to
Alcatel-Lucent USA Inc. and the Ericsson Defendants’ Motion for Partial Summary Judgment
That Patent Claims Are Indefinite (Docket No. 174), the Court ORDERS that the motion is
DENIED.
BACKGROUND
Wi-LAN Inc. (“Wi-LAN”) alleges that Alcatel-Lucent USA Inc.; Ericsson Inc.; Exedea
Inc.; HTC America, Inc.; HTC Corporation; LG Electronics Mobilecomm U.S.A., Inc.; LG
Electronics U.S.A., Inc.; LG Electronics, Inc.1; Sony Mobile Communications (USA) Inc.; Sony
Mobile Communications AB; and Telefonaktiebolaget LM Ericsson (collectively “Defendants”)
each infringe one or more of the patents-in-suit, which relate to wireless communication links
between a subscriber terminal and a central terminal. The patents address the need to, within a

1

The three LG defendants are no longer involved in the case.

given frequency range, increase the number of supported subscriber terminals while reducing the
interference between the wireless links. Three of the patents—the ‘326, ‘819, and ‘327 Patents—
were filed on the same day and claim priority to the same foreign-filed application. These three
patents are not formally related, though they share substantially similar specifications. The ‘211
Patent is a continuation of the ‘326 Patent.
The ‘326, ‘211, and ‘819 Patent claims relate to using combinations of time division
multiplexing (TDM) techniques, code division multiple access (CDMA) techniques, and overlay
codes to increase the number of wireless links that can operate in a given frequency band. The
‘327 Patent claims relate to detecting interference between cells of a CDMA system and
reducing the number of channels used in that cell to lessen the interference effects.
APPLICABLE LAW
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
intrinsic evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
meaning as understood by one of ordinary skill in the art at the time of the invention in the
context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
342 F.3d 1361, 1368 (Fed. Cir. 2003).

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The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may
define his own terms, give a claim term a different meaning than the term would otherwise
possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
the inventor’s lexicography governs. Id. Also, the specification may resolve ambiguous claim
terms “where the ordinary and accustomed meaning of the words used in the claims lack
sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
Teleflex, Inc., 299 F.3d at 1325. But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns,
Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323.

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The prosecution history is another tool to supply the proper context for claim construction
because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification,
a patent applicant may define a term in prosecuting a patent.”).
Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
The patents-in-suit also contain a means-plus-function limitation that requires
construction. Where a claim limitation is expressed in means-plus-function language and does
not recite definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112
¶ 6. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part,
35 U.S.C. § 112 ¶ 6 “mandates that such a claim limitation ‘be construed to cover the
corresponding structure . . . described in the specification and equivalents thereof.’” Id. (quoting
35 U.S.C. § 112 ¶ 6). Accordingly, when faced with means-plus-function limitations, courts

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“must turn to the written description of the patent to find the structure that corresponds to the
means recited in the [limitations].” Id.
Construing a means-plus-function limitation involves multiple inquiries. “The first step in
construing [a means-plus-function] limitation is a determination of the function of the meansplus-function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303,
1311 (Fed. Cir. 2001). Once a court has determined the limitation’s function, “[t]he next step is
to determine the corresponding structure described in the specification and equivalents thereof.”
Id. A “structure disclosed in the specification is ‘corresponding’ structure only if the
specification or prosecution history clearly links or associates that structure to the function
recited in the claim.” Braun, 124 F.3d at 1424.
Defendants also contend that some claims at issue are invalid for indefiniteness. A claim
is invalid under 35 U.S.C. § 112 ¶ 2 if it fails to particularly point out and distinctly claim the
subject matter that the applicant regards as the invention. The party seeking to invalidate a claim
under 35 U.S.C. § 112 ¶ 2 as indefinite must show by clear and convincing evidence that one
skilled in the art would not understand the scope of the claim when read in light of the
specification. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336
F.3d 1308, 1319 (Fed. Cir. 2003).
CLAIM TERMS
subscriber terminal
Wi-LAN proposes “user equipment.” Defendants propose “a fixed-location device.” The
primary dispute is whether a subscriber terminal is fixed or mobile. The parties also dispute
whether the term, when appearing only in the preamble of a claim, is a limitation of the claim.

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Fixed vs. Mobile
Defendants argue that the subscriber terminal of the patents-in-suit is a fixed location
device because that is how it is defined in the specification and the term had no customary or
ordinary meaning at the time of the invention. Figure 1 of the ‘326 Patent depicts “a schematic
overview of an example of a wireless telecommunications system.” ‘326 Patent col. 6:32–33.
The figure includes a public switched telephone network, three central terminals, and three to
four subscriber terminals per central terminal. The detailed description explains that the
“subscriber terminals 20 [are] at fixed locations.” Id. col. 6:62–63. Based on these disclosures
and the fact that the specification fails to mention mobile devices, Defendants argue that a
subscriber terminal is a fixed location device.
Wi-LAN argues that Defendants seek to import a limitation from a preferred embodiment
into the claims. Wi-LAN first notes that the discussion of Figure 1 clarifies that it is only
presented as an example. See id. col. 6:32. Wi-LAN contends that the focus of the invention was
on the “techniques for processing data transmitted and received over a wireless link,” not
whether the subscriber terminal was mobile or fixed. Id. col. 1:8–12. Wi-LAN further asserts that
one of skill in the art at the time of the invention would have understood subscriber terminal to
include both fixed-location and mobile devices. To support this contention, Wi-LAN cites to
three patents filed in the early 1990s that recognize subscriber terminal as including mobile
devices. See Docket No. 182, at 2.
While a preferred embodiment reveals a fixed-location device operating as a subscriber
terminal, nothing in the claims or specification suggests that subscriber terminal should be
limited to a fixed-location device. A person of skill in the art at the time of the invention would
have recognized that a subscriber terminal for wireless communications could be either a fixed-

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location device or a mobile device. Because the patentee did not act as his own lexicographer or
disavow claim scope, the term subscriber terminal shall include both fixed-location and mobile
devices.
Preamble Limitations
As a general rule, the preamble is not considered a limitation for a claim. Am. Med. Sys.
v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). “Nonetheless, the preamble may be
construed as limiting ‘if it recites essential structure or steps, or if it is necessary to give life,
meaning, and vitality to the claim.’” Id. (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). The preamble is not considered limiting if the claims
recite a structurally complete invention. Id. at 1358–59.
Several claims of the patents-in-suit contain the term “subscriber terminal” in the
preamble but not in the specific limitations of the claim.2 Defendants contend that the preamble
of these claims should be limiting because it gives life to the meaning of the claims and provides
antecedent basis for terms in the claim limitations. Wi-LAN argues that the preamble,
particularly the term “subscriber terminal,” should not be limiting because the claims are
structurally complete without the preamble. Further, Wi-LAN argues that the preamble merely
describes the purpose or intended use of the invention.
Claim 1 of the ‘326 Patent is representative and its preamble states: “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, a single frequency
channel being employed for transmitting data items pertaining to a plurality of wireless links, the
transmission controller comprising . . . .” ‘326 Patent col. 28:22–27 (emphasis added). At first

2

These claims include claim 1 of the ‘326 Patent; claim 1 of the ‘211 Patent; claims 1 and 12 of the ‘819 Patent; and
claims 1, 11, 13, 15, 17, and 19 of the ‘327 Patent.

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blush, it appears that the preamble is merely describing the purpose of the invention. However,
the second phrase, beginning with “a single frequency channel,” goes beyond merely describing
the invention. This phrase provides the antecedent basis for “the single frequency” used later in
the claim limitations. Because the preamble provides this clarification, it gives life to the claims
and should be considered limiting.
Even if the preamble were not considered limiting, the agreed construction for “wireless
link” introduces the subscriber terminal limitation into the disputed claims. The parties have
agreed that “wireless link” means “a radio connection between a central terminal and a particular
subscriber terminal for communicating data items therebetween.” See Docket No. 192 Attach. 1,
at 1. Each of the preamble claims at issue recites “wireless links” in its body. Therefore, the
subscriber terminal limitation is introduced as a limitation by the parties’ agreed construction for
wireless link.
The Court, having resolved the parties’ disputes, finds that the term “subscriber terminal”
does not require construction.
orthogonal channel/orthogonal channels
Wi-LAN proposes that “orthogonal channels” be construed as “a set of channels created
using orthogonal codes that cross-correlate to zero with respect to each other.” Wi-LAN
proposes that an “orthogonal channel” is “one of the set of orthogonal channels.” Defendants
propose that “orthogonal channel” be construed as “a communication channel defined by an
orthogonal code.”3 Prior to the Markman hearing, the parties agreed to the following
construction for “orthogonal channels”: “a set of channels created using orthogonal codes.” See

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The parties also agreed that orthogonal codes are “codes that cross-correlate to zero with respect to each other.”
See Docket No. 192 Attach. 2.

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Docket No. 192 Attach. 2. In light of this agreed construction, the parties no longer dispute the
interpretation of “orthogonal channel.”
time division multiplexing (TDM) techniques
Wi-LAN proposes “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 propose “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.” The crux of the dispute is whether TDM techniques require the allocation of
time slots in a “defined, repeated sequence.”
Wi-LAN argues that TDM techniques should not be limited to allocating a defined,
repeated sequence of time slots for transporting data items over a channel because neither the
specification nor the claims so limit the techniques. Wi-LAN first notes that the specification
teaches allocating time slots differently across different channels based on factors such as the
type of data being transmitted. See ‘326 Patent col. 3:59–63 (recognizing that channels “can be
subdivided differently to yield differing numbers of time slots per frame period”). Wi-LAN also
highlights that demand-based access is disclosed “so that the number of subscribers which can be
supported exceeds the number of available wireless links.” Id. col. 6:66–7:2. Wi-LAN argues
that the subscriber terminals are constantly reserving and releasing channels as needed. Thus,
Wi-LAN continues, as channels are reserved and released to meet subscriber terminal needs, so
too are time slots allocated and released on the respective channels. Wi-LAN contends that
requiring time slots to be allocated in a defined, repeated sequence would read out this preferred
embodiment.
Defendants respond that time division multiplexing techniques, at the time of the
invention, were understood to allocate time slots in a defined, repeated sequence. For support,
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Defendants cite various technical dictionaries and claim constructions issued by this Court in
unrelated cases. See Docket No. 175, at 13–15. Defendants also argue that the specification
supports their proposed construction because it discloses that channels may be divided to operate
at full rate (160 kb/s), half rate (80 kb/s), or quarter rate (40 kb/s). See ‘326 Patent Fig. 15A.
Defendants contend that the rate designations imply that time slots are allocated in a defined,
repeated sequence; otherwise, Defendants argue, the desired transfer rate would not be achieved.
The parties agree that TDM techniques are understood by one of skill in the art to
partition a channel into time slots so that multiple subscribers can utilize the channel during a
given frame period. Defendants seek to impose an additional limitation on this partitioning,
requiring it to only create “defined, repeated” time slots. Their primary support is extrinsic
evidence. However, Wi-LAN also presented extrinsic evidence showing that one of skill in the
art would have recognized that TDM techniques could allocate time slots dynamically. See
Docket No. 182, at 6 (quoting a 1989 Computer World article). Extrinsic evidence can be of use
for claim construction. See Phillips, 415 F.3d at 1317–18. Here, the extrinsic evidence reveals
that one of skill in the art would understand TDM techniques to encompass a broad array of
techniques for dividing a channel into time slots.
Further, the specification repeatedly teaches the flexibility of the invention, including the
allocation of channels and bandwidth within those channels. See, e.g., ‘326 Patent col. 3:56–63
(“[T]he channelisation means also determines . . . how many time slots will be provided within
each orthogonal channel. This gives a great deal of flexibility in how channels are used . . . , and
those which are subdivided can be subdivided differently to yield differing numbers of time slots
per frame period.”); id. col. 11:28–30 (“The manner in which the enhancements have been
implemented provides flexibility in the way the frequency channels are configured . . . .”); id.

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col. 18:44–45 (“[T]he channel structure is flexible . . . .”). The specification envisions demandbased access that allows the bandwidth provided to a subscriber terminal to meet the needs of
that terminal. See id. col. 18:65–67 (recognizing that a user may be authorized to use an entire
channel for data-intensive fax transmissions). The specification and claims themselves do not
limit TDM techniques to partitioning based on “defined, repeated” divisions. Instead, the
specification discusses that the invention can be used flexibly to address the individual needs of
subscriber terminals on demand. Based on the specification and supported by the extrinsic
evidence of how one of skill in the art would understand TDM techniques, the Court finds that
the allocation of time slots need not be in a “defined, repeated sequence.”
The Court construes “time division multiplexing (TDM) techniques” as “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.”
time slot
Wi-LAN proposes “an interval of time.” Defendants propose “a period of time during
which a single wireless link is permitted to use a shared communication channel.”
Wi-LAN opposes Defendants’ construction for two reasons. First, it suggests that only
one wireless link may communicate at any given time in a communication channel. Second, it
adds unnecessary context that is already provided by the claim language. As to the first point,
Wi-LAN notes that a shared communication channel may be divided using CDMA codes to
create a set of orthogonal channels. Then, within this set of channels, TDM techniques may be
applied to support additional wireless links. While communications within the set of orthogonal
channels may be simultaneous, communication within an orthogonal channel that has been
partitioned using TDM techniques is not simultaneous. A frame of communication within the
TDM-partitioned channel may contain multiple speakers (i.e., one per time slot), but only one
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speaker is speaking at a given time within that frame. At the Markman hearing, Defendants
clarified that they were interpreting “shared communication channel” in their proposed
construction to mean “orthogonal channel.”
As to their second objection, raised primarily at the Markman hearing, Wi-LAN argued
that the context for time slot was provided by the surrounding claim language; therefore, the
context provided by Defendants’ proposal is unnecessary. The relevant context from claim 1
states: “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.” ‘326
Patent col. 28:39–45. Wi-LAN argues that this context is sufficient.
Defendants’ proposal is more likely to confuse than to clarify. It mentions a “shared
communication channel,” while the patent envisions multiples types of channels. There is a
single frequency band that is shared. This band may be divided into orthogonal channels that
may be further shared. Finally, these orthogonal channels may be further divided using either
TDM techniques or additional overlay codes. Thus, a jury may be confused about which channel
the “shared communication channel” is referring to, while the claim language dictates that this is
“a time slot of the orthogonal channel.” The term does not require Defendants’ proposed
additional context; the claim language itself provides sufficient context.
The court construes “time slot” as “an interval of time.”
TDM encoder
Wi-LAN originally proposed “hardware or software for applying TDM techniques”;
however, in its reply brief it proposed “hardware and/or software for applying TDM techniques.”
Defendants propose “a device that applies time division multiplexing (TDM) techniques to share
a communication channel among multiple wireless links.” At the Markman hearing, Defendants

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agreed to Wi-LAN’s updated proposal. See Tr. of Markman Hr’g 49, Apr. 26, 2012. The Court
construes “TDM encoder” as “hardware and/or software for applying TDM techniques.”
TDM decoder
Wi-LAN proposes “hardware and/or software for extracting a data item from a
predetermined time slot within the orthogonal channel.” Defendants propose “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.” At the
Markman hearing, the parties agreed to the following construction: “hardware and/or software
for extracting a data item from a channel that has been encoded using TDM techniques.” See Tr.
of Markman Hr’g 50–51, 56, Apr. 26, 2012. The Court construes “TDM decoder” as “hardware
and/or software for extracting a data item from a channel that has been encoded using TDM
techniques.”
overlay code
Wi-LAN proposes “orthogonal codes used to increase the number of orthogonal channels
that would otherwise be available.” Defendants propose “a second code applied in series with the
orthogonal code.” Both parties cite the same section of the patent to support their constructions:
“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.” ‘819
Patent col. 2:54–57.
Wi-LAN argues that “[o]verlay codes are additional orthogonal codes that can be used to
subdivide an orthogonal channel to create additional channels.” Docket No. 167, at 20. Wi-LAN
objects to the “in series” aspect of Defendants’ proposal, explaining that neither the specification
nor the claims require serial (as opposed to simultaneous) application of the orthogonal codes
and overlay codes. Wi-LAN notes that the ‘819 Patent discloses a simultaneous application of
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codes to further refute Defendants’ proposal of an “in series” limitation. See ‘819 Patent Fig. 7A
(depicting simultaneous application of an RW code from 112 and PN Code from 114 via
Spreader 116).
Defendants contend that the ordinary meaning of “overlay” is to “lay over.” Thus, the
overlay code must be laid over the orthogonal code to further subdivide the channels. Defendants
argue that this implies the orthogonal code and overlay code must be applied in series.
Defendants also argue that Wi-LAN’s proposed construction is equivalent to an orthogonal code
and thus strips meaning from the term’s modifier, “overlay.” Finally, Defendants point out that
the preferred embodiments show the overlay code and orthogonal code being applied in series.
See ‘819 Patent Fig. 7A (depicting overlay code application at 111 and orthogonal code
application at 116).
Defendants’ serial requirement is not supported by the specification, which reveals
multiple codes being applied simultaneously. Further, one of skill in the art would recognize that
such codes can be applied simultaneously via simple mathematical operations. See Docket No.
175, at 24 n.12. At the Markman hearing, Wi-LAN agreed that an overlay code is an additional
code other than the orthogonal code. The parties also both agree that the overlay code further
subdivides an orthogonal channel, as described in the specification. Accordingly, the Court
construes “overlay code” as “an additional code that subdivides an orthogonal channel.”
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
Wi-LAN proposes that the term does not require construction. Defendants propose “two
or more indicators that an individual wireless link is experiencing interference from other cells.”
The parties agree that parameters is plural and relates to two or more parameters. The primary
dispute between the parties pertains to the scope of the term “parameters.” To use the language

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of the parties, the ‘327 Patent reveals indicators, such as Bit Error Rate (BER) and Grade of
Service (GOS). These indicators, which relate to the quality of a wireless link, have values at any
given point in time. The parties disagree over whether “parameters” relates to the indicators or
the values for the indicators.
Wi-LAN argues that parameters pertains to the values for indicators. For support, WiLAN notes that a preferred embodiment makes the decision to reduce the number of CDMA
channels based solely on the BER. See ‘327 Patent col. 25:53–60. Wi-LAN further argues that
dependent claims 2 and 3 cover the use of a single indicator for determining whether to reduce
the CDMA channel pool. See id. col. 30:21–41. Wi-LAN’s position is that parameters, which
necessarily means two or more, must refer to the values for indicators since certain embodiments
and dependent claims envision the use of only one indicator.
Defendants argue that parameters are the indicators rather than their values. Thus, under
Defendants’ proposal, at least two indicators are required to meet the claim limitation.
Defendants object to Wi-LAN’s proposal because the specification does not disclose the use of
multiple values of a single indicator for making interference determinations. Defendants
highlight that the specification reveals an embodiment where two indicators are used to make an
interference determination. See ‘327 Patent col. 25:45–53 (describing how BER, GOS, and pool
size metrics may be evaluated together by the management system). Thus, Defendants argue that
their proposed interpretation is supported by the specification while Wi-LAN’s is not.
The specification teaches that the parameters are the indicators rather than the values. The
specification describes two parameters: BER and GOS. See id. col. 2:29–30 (“[A] parameter
provided to the analyser is the bit error rate (BER) . . . .”); id. col. 2:45–46 (“[A]n additional
parameter preferably provided to the analyser is a grade of service (GOS) signal . . . .”). Thus,

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the patent distinguishes between the indicators as parameters as opposed to distinguishing
between the values for these indicators.
Though the parties agree that parameters means two or more, the Court finds that the
term parameters, as used in the claims, means “one or more.” See Versa Corp. v. Ag-Bag Int’l
Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (“[I]n context, the plural can describe a universe
ranging from one to some higher number, rather than requiring more than one item.”). Claim 1 of
the ‘327 Patent includes an analyzer element “for receiving parameters.” ‘327 Patent col. 30:9.
Dependent claims 2 and 3 cover scenarios where a parameter provided to the analyser is BER or
GOS respectively. Further, these dependent claims indicate that the channel controller responds
to the analyser’s evaluation of just that single parameter. See, e.g., id. col. 30:27–30 (“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”). Thus, the dependent claims support an interpretation of “parameters” to mean
one or more.
A lay jury will readily understand the meaning of this term within the context of the
claim language. Thus, the Court finds that no construction is necessary.
channel pool
Wi-LAN proposes that no construction is necessary. Defendants propose “the set of
orthogonal channels available to a central terminal to use to establish wireless links.” Defendants
argue that the term must be construed because Wi-LAN “inten[ds] to ignore the explicit claim
language requiring that the channel pool is used to establish wireless links.” Docket No. 175, at
28. Defendants’ argument strays from the domain of claim construction into the appropriateness
of Wi-LAN’s purported infringement argument. As Defendants recognize in their argument, the
claims require that channel pools include “code division multiplexed channels available for the
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establishment of said wireless links.” ‘327 Patent col. 30:7–8. The term “channel pool” is readily
understandable as used in the claims. Thus, the Court finds that this term does not require
construction.
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 telecommunication system
The parties agree that this term is a means-plus-function limitation governed by 35
U.S.C. § 112 ¶ 6. Wi-LAN proposes a function of “determining which of the orthogonal
channels will be subject to TDM techniques, and transmitting that information to a plurality of
subscriber terminals within the wireless telecommunications system.” Wi-LAN identifies the
following structure:
A modem shelf including a demand assignment engine connected to a network
and one or more modems, the demand assignment engine determining which of
the orthogonal channels will be subject to TDM techniques using the algorithm
(1) consider whether the subscriber terminal to which data will be transmitted
incorporates the features necessary to support TDM techniques; (2) consider the
type of data that is to be transmitted in an orthogonal channel; and (3) if the
subscriber terminal supports TDM techniques and the data type is one for which
TDM techniques should be applied, then apply TDM techniques (otherwise do
not), and equivalents thereof.4
Defendants contend that the term is indefinite under § 112 for lack of structure. The parties agree
that the channelisation means is implemented via software and requires disclosure of an
algorithm. See Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005) (explaining
that “computer-implemented means-plus-function terms [are restricted] to the algorithm
disclosed in the specification”).

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Wi-LAN submitted alternate constructions for each of the means-plus-function terms in the joint claim
construction chart filed two days before the Markman hearing. See Docket No. 192 Attach. 1. The Court employs
these constructions for each of the means-plus-function terms because they were the primary basis for argument in
Wi-LAN’s reply brief and at the Markman hearing.

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TDM Techniques
Wi-LAN contends that the specification reveals an algorithm for determining which
orthogonal channels are subject to TDM techniques. The specification notes that there are several
considerations in determining whether to apply TDM techniques to an orthogonal channel. First,
the algorithm must consider whether the subscriber terminal supports TDM techniques. See ‘326
Patent col. 3:50–55 (indicating that some channels must be reserved for communicating with
subscriber terminals to do not support TDM techniques). Second, the algorithm must consider
whether TDM techniques are appropriate for the type of data being transmitted. See id. cols.
3:56–4:12 (indicating that certain data types (e.g., fax) require more bandwidth and TDM
divisions may be inappropriate). Finally, the algorithm must reserve some channels for
accomplishing control tasks, and TDM techniques should not be used for those channels. See id.
col. 4:23–36 (indicating that TDM techniques are not applied to two channels typically reserved
for acquisition of wireless links and control of calls); id. col. 13:60–62 (indicating that overlay
codes are used rather than TDM techniques for downlink control channels). Based on this
specification support, Wi-LAN argues that one of skill in the art would understand the algorithm
to be: apply TDM techniques to the channel if it is (1) supported by the subscriber terminal and
(2) the data being transmitted is deemed appropriate for TDM division.
Defendants argue that the specification fails to disclose a “step-by-step” algorithm
revealing how the channelisation means determines which channels are subject to TDM
techniques. Defendants also find fault with the specification’s disclosure because it involves
flexible considerations as opposed to absolute directives.
The patent is directed toward supporting more subscriber terminals on a limited
frequency spectrum. See ‘326 Patent col. 1:25–31 (“Due to bandwidth constraints, it is not

18

practical for each individual subscriber terminal to have its own dedicated frequency
channel . . . . Hence, technologies need to be applied to enable data items relating to different
wireless links to be passed over the same frequency channel without interfering with each
other.”). This overarching concern drives the algorithm for determining whether to apply TDM
techniques: if TDM techniques can be applied, they should be. The specification identifies
several scenarios where TDM techniques should not be applied: (1) when a subscriber terminal
does not support TDM techniques; (2) when a channel is reserved for control of call
communications; and (3) when subdivision would render an unacceptable data transmission rate
for the type of data at issue (e.g., fax). Absent these constraints, TDM techniques should be
applied because they “make[] it possible to support more wireless links on one frequency
channel.” Id. col. 5:30–31. “[T]he patent need only disclose sufficient structure for a person of
skill in the field to provide an operative software program for the specified function.” Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (citing Finisar Corp. v.
DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Here, the patent has disclosed
sufficient structure for determining whether to apply TDM techniques to a channel.
Transmission
The second portion of the term requires the channelisation means to “transmit[] that
information to a plurality of subscriber terminals within the wireless telecommunication system.”
Defendants do not dispute that the modem shelf is the corresponding structure for transmitting.
Defendants dispute whether the channelisation means must be a single structure for both
determining whether to apply TDM techniques and transmitting that information to subscribers.
Defendant argue that Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., requires a single
structure for means-plus-function terms involving a conjunction of functions. 296 F.3d 1106,

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1115 (Fed. Cir. 2001). In Cardiac Pacemakers, the Federal Circuit determined that the limitation
“third monitoring means for monitoring . . .[and] for activating . . .” required the monitoring
means to perform the dual function of monitoring and activating. The dual requirement was
derived from the use of the term monitoring to describe both the means and one of the functions.
Here, the term is “channelisation means for determining . . . and for transmitting . . . .” Thus, this
presents a different situation. Further, the Cardiac Pacemakers court recognized that a limitation
of this form (a means for doing x and y) may “be ambiguous about whether the limitation
required one means for performing both functions x and y, or simply one means for performing x
and one (potentially different) means for performing function y.” Id. (citing Medtronic, Inc. v.
Advanced Cardiovascular Sys., 248 F.3d 1303, 1313 (Fed. Cir. 2001)). Accordingly, the Court
does not agree that a single structure must be disclosed to perform the determining and
transmitting functions. Even if such a structure were required, Figure 17 of the ‘326 Patent
reveals a modem shelf 302 that includes both the DA Engine 380 and a modem 320 within a
single structure.
The Court construes the means-plus-function term “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 telecommunication system”
as follows. The function identified by the term is “determining which of the orthogonal channels
will be subject to TDM techniques and transmitting that information to a plurality of subscriber
terminals within the wireless telecommunication system.” The corresponding structure is
revealed in Figure 17 as a modem shelf including the DA (demand assignment) Engine 380 and
modem 320. The structure is: “Figure 17. A modem shelf including a demand assignment engine
connected to a network and one or more modems, the demand assignment engine determining

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which of the orthogonal channels will be subject to TDM techniques using the algorithm (1)
consider whether the subscriber terminal to which data will be transmitted incorporates the
features necessary to support TDM techniques; (2) consider the type of data that is to be
transmitted in an orthogonal channel; and (3) if the subscriber terminal supports TDM techniques
and the data type is one for which TDM techniques should be applied, then apply TDM
techniques (otherwise do not).”
channelisation means for determining, for those orthogonal channels subject to TDM
techniques, how many time slots will be provided within each orthogonal channel
The parties agree that this term is a means-plus-function limitation governed by 35
U.S.C. § 112 ¶ 6. Wi-LAN proposes a function of “determining, for those orthogonal channels
subject to TDM techniques, how many time slots will be provided within each orthogonal
channel.” Wi-LAN identifies the following structure:
A demand assignment engine connected to a network and one or more modems,
the demand assignment engine determining how many time slots will be provided
within each orthogonal channel using the algorithm: (1) consider the type of data
that is to be transmitted in an orthogonal channel, and (2) choose a suitable
number of time slots to provide within the orthogonal channel to achieve an
acceptable data rate, and equivalents thereof.
Defendants contend that the term is indefinite under § 112 for lack of structure.
Wi-LAN contends that the algorithm determines how many time slots are within an
orthogonal channel based on the type of data being transmitted and the transmission rate
typically required for that type of data. The specification explains the implications of dividing a
160 kb/s frequency channel. See ‘326 Patent cols. 3:63–4:12 (explaining that two slots would
support 80 kb/s per slot and four slots would support 40 kb/s per slot). It further notes that 40
kb/s may not be acceptable for some data transmissions (e.g., fax); thus, a four-slot division
would be inappropriate for transmissions of that type.

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Defendants argue that these disclosures do not reveal an algorithm for determining the
number of slots to create in a divided orthogonal channel. As discussed earlier, the overarching
goal is to support more subscriber terminals; thus, more divisions permits more subscribers.
However, the specification recognizes that some types of data have bandwidth requirements that
place a ceiling on the number of divisions permitted. The specification discloses the importance
of determining an acceptable transmission rate for the type of data at issue. Thus, the revealed
algorithm is to partition the channel such that it contains the most subdivisions possible while
still meeting the minimum transmission requirements for the data type being transmitted.
The Court construes the means-plus-function term “channelisation means for
determining, for those orthogonal channels subject to TDM techniques, how many time slots will
be provided within each orthogonal channel” as follows. The function is “determining, for those
orthogonal channels subject to TDM techniques, how many time slots will be provided within
each orthogonal channel.” The structure is: “A demand assignment engine connected to a
network and one or more modems, the demand assignment engine determining how many time
slots will be provided within each orthogonal channel using the algorithm: (1) consider the type
of data that is to be transmitted in an orthogonal channel, and (2) choose a suitable number of
time slots to provide within the orthogonal channel to achieve an acceptable data rate.”
channelisation means for determining which of the orthogonal channels will be subject to
overlay codes, and for transmitting that information to a plurality of subscriber terminals
The parties agree that this term is a means-plus-function limitation governed by 35
U.S.C. § 112 ¶ 6. Wi-LAN proposes a function of “determining which of the orthogonal
channels will be subject to overlay codes, and transmitting that information to a plurality of
subscriber terminals within the wireless telecommunications system.” Wi-LAN identifies the
following structure:

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A modem shelf including a demand assignment engine connected to a network
and one or more modems, the demand assignment engine determining which of
the orthogonal channels will be subject to overlay codes using the algorithm: (1)
consider whether the subscriber terminal to which 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
terminal supports overlay codes and the data type is one for which overlay codes
should be applied, then apply overlay codes (otherwise do not), and equivalents
thereof.
Defendants contend that the term is indefinite under § 112 for lack of structure.
The arguments concerning this term largely mirror those posed for the first means-plusfunction term regarding when to apply TDM techniques to a channel. Again, the specification
recognizes that some subscriber terminals will not support the use of overlay codes. See ‘819
Patent col. 4:6–11. The specification also teaches that control of call channels typically employ
overlay codes as opposed to TDM techniques. See id. col. 3:45–50. Finally, the specification
teaches the tradeoff between the use of overlay codes to create more sub-channels and loss of
effective bandwidth. See id. col. 18:4–35 (discussing the use of TDM techniques as illustrated in
Figure 15A and overlay codes as illustrated in Figure 15B). Thus, the specification teaches a
basic algorithm for determining whether to use overlay codes: if they can be used (considering
the subscriber terminals and data being transmitted), then use them to the extent the resultant
data rate is acceptable for the type of data being transmitted.
The Court construes the means-plus-function term “channelisation means for determining
which of the orthogonal channels will be subject to overlay codes, and for transmitting that
information to a plurality of subscriber terminals” as follows. The function is “determining
which of the orthogonal channels will be subject to overlay codes and transmitting that
information to a plurality of subscriber terminals.” The structure is: “Figure 17. A modem shelf
including a demand assignment engine connected to a network and one or more modems, the
demand assignment engine determining which of the orthogonal channels will be subject to
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overlay codes using the algorithm: (1) consider whether the subscriber terminal to which 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 terminal
supports overlay codes and the data type is one for which overlay codes should be applied, then
apply overlay codes (otherwise do not).”
CONCLUSION
For the foregoing reasons, the Court interprets the claim language in this case in the
manner set forth above. Further, Alcatel-Lucent USA Inc. and the Ericsson Defendants’ Motion
for Partial Summary Judgment That Patent Claims Are Indefinite (Docket No. 174) is DENIED.
For ease of reference, the Court’s claim interpretations are set forth in a table in Appendix A.

So ORDERED and SIGNED this 16th day of May, 2012.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

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APPENDIX A
Court’s Construction
No construction necessary
a set of channels created using orthogonal codes
(TDM) 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
time slot
an interval of time
TDM encoder
hardware and/or software for applying TDM
techniques
TDM decoder
hardware and/or software for extracting a data item
from a channel that has been encoded using TDM
techniques
overlay code
an additional code that subdivides an orthogonal
channel
parameters pertaining to a wireless link No construction necessary
within the cell indicative of whether that
wireless link is subject to interference
from signals generated by other cells
channel pool
No construction necessary
channelisation means for determining Function: determining which of the orthogonal
which of the orthogonal channels will be channels will be subject to TDM techniques and
subject to TDM techniques and for transmitting that information to a plurality of
transmitting that information to a subscriber
terminals
within
the
wireless
plurality of subscriber terminals within telecommunication system.
the wireless telecommunication system
Structure: Figure 17. A modem shelf including a
demand assignment engine connected to a network
and one or more modems, the demand assignment
engine determining which of the orthogonal channels
will be subject to TDM techniques using the
algorithm (1) consider whether the subscriber
terminal to which data will be transmitted
incorporates the features necessary to support TDM
techniques; (2) consider the type of data that is to be
transmitted in an orthogonal channel; and (3) if the
subscriber terminal supports TDM techniques and the
data type is one for which TDM techniques should be
applied, then apply TDM techniques (otherwise do
not)
Claim Term
subscriber terminal
orthogonal channels
time division multiplexing
techniques

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Claim Term
channelisation means for determining,
for those orthogonal channels subject to
TDM techniques, how many time slots
will be provided within each orthogonal
channel

channelisation means for determining
which of the orthogonal channels will be
subject to overlay codes, and for
transmitting that information to a
plurality of subscriber terminals

Court’s Construction
Function: determining, for those orthogonal channels
subject to TDM techniques, how many time slots will
be provided within each orthogonal channel.
Structure: A demand assignment engine connected to
a network and one or more modems, the demand
assignment engine determining how many time slots
will be provided within each orthogonal channel
using the algorithm: (1) consider the type of data that
is to be transmitted in an orthogonal channel, and (2)
choose a suitable number of time slots to provide
within the orthogonal channel to achieve an
acceptable data rate.
Function: determining which of the orthogonal
channels will be subject to overlay codes and
transmitting that information to a plurality of
subscriber terminals.
Structure: Figure 17. A modem shelf including a
demand assignment engine connected to a network
and one or more modems, the demand assignment
engine determining which of the orthogonal channels
will be subject to overlay codes using the algorithm:
(1) consider whether the subscriber terminal to which
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 terminal supports
overlay codes and the data type is one for which
overlay codes should be applied, then apply overlay
codes (otherwise do not).

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