Adaptix, Inc. v. Huawei Technologies Co., Ltd. et al
ORDER ADOPTING REPORT AND RECOMMENDATIONS for #101 Report and Recommendations. ORDERED that Defendants Motion for Summary Judgment of Invalidity Based on Indefiniteness Under 35 U.S.C. 112(b) are GRANTED as to claim 8 of the 748 patent and claims 9, 11, and 26 of the 212 patent but are otherwise DENIED. Signed by Judge Michael H. Schneider on 11/20/2014. (gsg)
IN THE UNITED STATES DISTRICT COURT
OF THE EASTERN DISTRICT OF TEXAS
HUAWEI TECHNOLOGIES CO. LTD.,
HUAWEI TECHNOLOGIES CO. LTD.,
HUAWEI TECHNOLOGIES CO. LTD.,
HUAWEI TECHNOLOGIES CO. LTD.,
ZTE CORPORATION, et al.
ZTE CORPORATION, et al.
ZTE CORPORATION, et al.
ZTE CORPORATION, et al.
ADOPTING REPORT AND RECOMMENDATION
The above cases have been referred to United States Magistrate Judge Caroline M.
Craven pursuant to 28 U.S.C. § 636. The September 19, 2014 Report of the magistrate judge
which contains her proposed findings of fact and recommendations for the disposition of such
actions has been presented for consideration. Before the Court are the following:
(1) Defendants Huawei Technologies Co., Ltd., Huawei Technologies USA, Inc.,
Huawei Device USA Inc., Cricket Communications, Inc. d/b/a Cricket Wireless,
T-Mobile USA, Inc., MetroPCS Communications, Inc., and MetroPCS Wireless,
Inc.’s Objections to September 19, 2014 Report and Recommendation of the
Magistrate Judge, filed in 6:13cv438, -439, -440, and -441 (Dkt. Nos. 110, 105,
(2) Defendants ZTE (USA) Inc., Boost Mobile LLC, T-Mobile USA, Inc., Sprint
Spectrum L.P., and U.S. Cellular Corporation’s Objections to Report and
Recommendation of the United States Magistrate Judge, filed in 6:13cv443, -444,
-445, and -446 (Dkt. Nos. 99, 98, 103, 83);
(3) Plaintiff’s Objections to Report and Recommendation Regarding Summary
Judgment of Invalidity Under 35 U.S.C. § 112(b) (Dkt. Nos. 111, 104, 113, 94,
100, 99, 104, 84);
(4) Plaintiff’s Opposition to Defendants’ objections; and
(5) Defendants’ Response to Plaintiff’s objections.
The Court has conducted a de novo review of the magistrate judge’s findings and
Plaintiff Adaptix, Inc. (“Plaintiff”) brings suit alleging infringement of United States
Patents No. 6,947,748 (“‘748 patent”) and 7,454,212 (“‘212 patent”) (collectively, the “patentsin-suit”). On August 15, 2014, Defendants moved for summary judgment, asserting claims 8,
11, 19, and 21 of the ‘748 patent, and claims 9, 11, 18, and 26 of the ‘212 patent are indefinite
and therefore invalid under 35 U.S.C. § 112. Defendants presented three indefiniteness
arguments, two of which were presented in Adaptix, Inc. v. AT&T Mobility LLC, et al., and
related cases. Cause No. 6:12cv17; see also Cause Nos. 6:12cv20, -120 (“AT&T”). 1 In their
In those related cases, the magistrate judge entered a Report and Recommendation on March
24, 2014, recommending the defendants’ motion for summary judgment of invalidity based on
indefiniteness be granted as to claims 2-4 of the ‘212 patent but denied as to claims 8-9, and 11
of the ‘748 patent and claims 9-10 of the ‘212 patent. The undersigned overruled the objections
to the Report and Recommendation, adopting the Magistrate Judge’s Report as the findings and
conclusions of the Court. See Civil Action No. 6:12-CV-17, Dkt. No. 197, 5/29/2014 Order.
current motions, Defendants argue the Supreme Court’s recent decision in Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) “modified the analysis and increased the level of
specificity required to overcome a challenge for indefiniteness.” Cause No. 6:13cv438, Dkt. No.
81 at pg. 5.
In Nautilus, the Supreme Court held that the claims, read in light of the specification and
the prosecution history, must inform a person of skill in the art of the scope of the invention with
reasonable certainty. Id. at 2129. Nautilus rejected the Federal Circuit’s “amenable to
construction” and “insolubly ambiguous” tests, holding that a standard which “tolerates some
ambiguous claims but not others does not satisfy the statute’s definiteness requirement.” Id. at
2130. Nautilus makes clear that “[i]t cannot be sufficient” to “ascribe some meaning to a patent’s
claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the
patent application, not that of a court viewing matters post hoc.” Id.
REPORT AND RECOMMENDATION
Sections IV.A and IV.C
Pursuant to the definiteness requirements set forth in Nautilus, Defendants sought
summary judgment that the term “each cluster” in claim 8 of the ‘748 patent and claim 9 of the
‘212 patent lacks an antecedent basis and does not, when “viewed in light of the specification
and prosecution history, inform those skilled in the art about the scope of the invention with
reasonable certainty.” Cause No. 6:13cv438, Dkt. No. 81 at pgs. 4-5. Specifically, Defendants
argued that “the claims do not describe which ‘subcarriers’ belong to ‘each cluster.’”
In Section IV.A of the Report and Recommendation, the magistrate judge found
ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) weighed against finding that
Defendants have moved for reconsideration, asserting the “tide has changed significantly in the
wake of the Nautilus decision” and claims 8-9 and 11 of the ‘748 patent and claims 9-10 of the
‘212 patent are indefinite. Id., Dkt. No. 202 at pg. 1.
the term “each cluster” can stand on its own, without any antecedent basis, particularly in the
absence of any “narrowing construction” under Exxon Research & Eng’g Co. v. U.S., 265 F.3d
1371 (Fed. Cir. 2001).
In light of Nautilus having abrogated the “narrowing construction” portion of Exxon upon
which the Court relied in AT&T, the magistrate judge concluded that the disputed term “each
cluster” requires an antecedent basis but lacks any clear antecedent basis. According to the
magistrate judge, this lack of clear antecedent basis for “each cluster” renders the claims
indefinite as failing to “inform those skilled in the art about the scope of the invention with
reasonable certainty.” Nautilus, 134 S.Ct. at 2129.
Defendants also argued with respect to “the indication” limitation that claims 11 and 26
of the ’212 patent are indefinite for the same reason the Court rendered claim 2 of the ‘212 patent
insolubly ambiguous in the AT&T decision—the lack of clear antecedent basis. In Section IV.C,
the magistrate judge agreed with Defendants, finding claims 11 and 26 of the ‘212 patent suffer
from the same antecedent basis ambiguity as claims 2-4. For the same reasons the Court in
AT&T found claims 2-4 of the ‘212 patent invalid as indefinite, the magistrate judge
recommended the Court find claims 11 and 26 of the ‘212 patent invalid as indefinite.
Plaintiff’s objections to Section IV.A and IV.C
With regard to “each cluster,” discussed in Section IV.A of the Report and
Recommendation, Plaintiff relies on the Court’s earlier ruling in the AT&T cases, wherein it
adopted the magistrate judge’s contrary recommendation that the claim was not indefinite
because the term “each cluster” does not require any antecedent basis. Noting the magistrate
judge appears to base her change of opinion on the Supreme Court’s abrogation of a court’s
ability to make a narrowing construction, Plaintiff asserts Nautilus did not abrogate, or even
mention, narrowing constructions. According to Plaintiff, Nautilus does not prohibit the Court
from making a narrowing construction in these cases, even were such a construction required. In
any event, Plaintiff asserts the Court’s prior construction (“a logical unit that contains at least
two physical subcarriers”) satisfies the “reasonable certainty” requirement of Nautilus.
According to Plaintiff, each “cluster” of subcarriers sending feedback information to the
base station has an antecedent basis in the “candidate subcarriers.” Plaintiff argues ResQNet’s
construction of “each,” as used in that case to mean “every” (or “all”), does not alter the fact that
“each cluster” is still able to stand on its own and is understandable to one of ordinary skill with
“reasonable certainty” as required by Nautilus. Plaintiff also takes issue with the Report and
Recommendation’s failure to mention how one of ordinary skill in the art would interpret “each
Regarding the magistrate judge’s recommendation that the term “indication” in claims 11
and 26 of the ‘212 patent is indefinite for the reasons set forth in the AT&T decision with respect
to claims 2-4 of the ‘212 patent, Plaintiff argues the Court’s prior reasoning with respect to
claims 2-4 does not control with respect to claims 11 and 26. According to Plaintiff, the
references to “indication” in claims 11 and 26 are to indications that are sent in the “downlink”
direction, whereas the references in claims 2-4 are to indications being sent from the subscriber
unit to the base station. Plaintiff therefore urges that “the indication” has its antecedent in the
independent claims wherein “an indication” and “another indication” refer to the same iterative
step of notifying the subscriber unit of the designated set of subcarriers.
Finally, Defendants sought summary judgment that the terms “desired for use” in claims
11, 19, and 21 of the ‘748 patent 2 and claim 18 of the ’212 patent, and “desires to employ” in
claims 8 and 21 of the ‘748 patent are indefinite because they are “completely dependent on a
person’s subjective opinion.” Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350
(Fed. Cir. 2005). In Section IV.B of the Report and Recommendation, the magistrate judge
recommended denying Defendants’ motion as to these terms. The magistrate judge, in effect,
construed “desired” to mean “requested” and “desires” to mean “requests.” Report and
Recommendation at pgs. 12-13.
Defendants’ objections to Section IV.B
Defendants object to Section IV.B of the Report and Recommendation. According to
Defendants, although the Report and Recommendation nominally cites to the Nautilus standard,
it does not apply the new standard but uses the analysis from the pre-Nautilus AT&T decision.
Defendants assert as an initial matter that the Report and Recommendation’s interpretation of
“selecting a set of subcarriers/clusters” as “requesting/requesting use of those subcarriers or
clusters” improperly reads the term “desires/d” out of the claim.
Defendants further assert the magistrate judge, contrary to Nautilus, effectively rewrote
the claims to require “requested for use/requests to employ” rather than “desired for use/desires
to employ.” According to Defendants, if invalidity can be avoided only by redrafting an
otherwise indefinite claim, then the courts would “tolerate imprecision” and “diminish the
definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of
uncertainty,’ … against which [the] Court has warned.” Nautilus, 134 S. Ct. at 2123. Defendants
According to Defendants, Plaintiff has since dropped claims 11 and 19 of the ‘748 patent.
contend the specification does not disclose how the subscriber would go about determining a
desired coding/modulation rate, only that it does so.
Relying on Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014),
Defendants assert the specification does not provide “a reasonably clear and exclusive
definition” to provide an objective boundary. Defendants argue there is no “objective anchor” for
“desires to employ,” making this term indefinite.
To the extent the Court denies Defendants’ Motion for Summary Judgment of
Indefiniteness, Defendants request that the Court clarify whether the issue of indefiniteness of
the terms “desires to employ” and “desired for use” remains an issue for trial or whether the
Court will enter Judgment as a Matter of Law against Defendants on these issues.
DE NOVO REVIEW
In their objections to the Report and Recommendation, Defendants present the same
arguments regarding “desired for use” and “desires to employ” that were presented to the
magistrate judge. The Court finds that the Report and Recommendation did not improperly
rewrite the claims, read out the “desired” limitation, or engage in a “narrowing construction.”
The magistrate judge expressly applied the Nautilus standard and found these claim terms,
viewed in the light of the specification, inform those skilled in the art regarding the scope of the
‘748 patent and the ‘212 patent with “reasonable certainty.” Indeed, Nautilus itself
acknowledged that “absolute precision is unattainable.” 134 S. Ct. at 2129.
The Court also agrees with the magistrate judge that “[c]onstruing a term so as to steer
clear of subjectiveness or indefiniteness does not . . . amount to a finding that the word ‘desired’
necessarily renders a claim indefinite.” Report and Recommendation at pg. 12. The magistrate
judge properly found the claims and the specification provide context in which “desired” refers
to what is being requested.
Finally, Defendants request clarification as to whether the issue of indefiniteness of the
terms “desires to employ” and “desired for use” remains an issue for trial or whether the Court
will enter Judgment as a Matter of Law against Defendants on these issues. Because the
question of indefiniteness is a question of law for the Court as part of claim construction, the
present Memorandum Order Adopting Report and Recommendation resolves the parties’
disputes as to indefiniteness such that these issues are not reserved for trial. Datamize, 417 F.3d
at 1347 (“A determination of claim indefiniteness is a legal conclusion that is drawn from the
court’s performance of its duty as the construer of patent claims.”) (citations and internal
quotation marks omitted).
Turning to Plaintiff’s objections, regarding “each cluster,” Nautilus abrogated the use of a
“narrowing construction” to avoid a finding of indefiniteness.
Indeed, the Supreme Court
explicitly identified the “narrowing construction” standard in a footnote when finding that the
standards set forth by the Court of Appeals for the Federal Circuit were “falling short.” See 134
S. Ct. at 2130 n.9. Plaintiff’s arguments to the contrary are unavailing. Applying the new
standard under Nautilus, the recited “set of candidate subcarriers” is not an explicit antecedent
basis and is not a reasonably clear implicit antecedent basis. Thus, “each cluster” lacks any clear
antecedent basis. Finally, Plaintiff has failed to demonstrate any requirement for deference to
expert opinions as to whether a person of ordinary skill in the art would find a claim indefinite.
See Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (“[A] court should discount
any expert testimony that is clearly at odds with the claim construction mandated by the claims
themselves, the written description, and the prosecution history, in other words, with the written
record of the patent.”) (citation and internal quotation marks omitted).
As to Plaintiff’s objections regarding the term “the indication,” Plaintiff has failed to
demonstrate that claims 11 and 26 of the ‘212 patent are distinguishable from claim 2 of the ‘212
patent in any relevant manner. In particular, although Plaintiff argues that claim 2 refers to
uplink but claims 11 and 26 refer to downlink, any such distinction does not ameliorate the facial
ambiguity as to whether the antecedent basis for “the indication” in the dependent claims is “an
indication” or “another indication” in the independent claims. Plaintiff’s argument that “an
indication” and “another indication” refer to the same step in an iterative process is unavailing
because even under Plaintiff’s interpretation, different iterations may yield different indications.
The Court, having reviewed the relevant briefing, the Report and Recommendation, the
objections, and the responses to the objections, is of the opinion the findings and conclusions of
the magistrate judge are correct. Therefore, the Court hereby adopts the Report of the United
States Magistrate Judge as the findings and conclusions of this Court. Accordingly, it is hereby
ORDERED that Defendants’ Motion for Summary Judgment of Invalidity Based on
Indefiniteness Under 35 U.S.C. § 112(b) (Dkt. Nos. 81, 75, 85, 68, 76, 75, 78 & 60) are
GRANTED as to claim 8 of the ‘748 patent and claims 9, 11, and 26 of the ‘212 patent but are
It is SO ORDERED.
SIGNED this 20th day of November, 2014.
MICHAEL H. SCHNEIDER
UNITED STATES DISTRICT JUDGE
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