Cellular Communications Equipment LLC v. Samsung Electronics Co., Ltd. et al
Filing
206
MEMORANDUM OPINION AND ORDER. The Court hereby ADOPTS the above claim constructions for the patents-in-suit. For ease of reference, the Courts claim interpretations are set forth in a table in Appendix A.. Signed by Magistrate Judge K. Nicole Mitchell on 3/29/2016. (tlh, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
CELLULAR COMMUNICATIONS
EQUIPMENT LLC,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO.,
LTD., et al.,
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§
§
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§
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CASE NO. 6:14-CV-759
Defendants.
MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes the disputed claim terms in United States Patent
Nos. 7,218,923 (“the ’8923 Patent”), 8,055,820 (“the ’820 Patent”), 8,645,786 (“the ’786
Patent”), and 8,254,872 (“the ʼ872 patent”), asserted in this suit by Plaintiff Cellular
Communications Equipment LLC. The parties’ claim construction briefing also addresses
Defendants’ indefiniteness arguments.
On January 12, 2016, the parties presented oral arguments on the disputed claim terms
and on the indefiniteness arguments at a Markman hearing. Based on the analysis stated herein,
the court resolves the parties’ claim construction and indefiniteness disputes and ADOPTS the
constructions set forth below.
BACKGROUND
Plaintiff Cellular Communications LLC (“CCE”) alleges Defendants infringe the four
asserted patents. The patents-in-suit were acquired from Nokia Siemens Networks and generally
relate to mobile communications. Doc. No. 131 at 1.
The Court has already construed terms in some of the patents-in-suit in Cellular
1
Communications Equipment, LLC v. HTC Corp., et. al., No. 6:13-CV-507, Doc. No. 363 (E.D.
Tex. Mar. 9, 2015) (“HTC First Markman Order”), Doc. No. 413 (June 1, 2015) (“HTC Second
Markman Order”). The parties have agreed that the Court’s constructions in HTC will apply in
the present case. Doc. Nos. 107 at 2, 6 and 131 at 1.
On January 15, 2015, the Patent Trial and Appeal Board (“PTAB”) instituted inter partes
review as to claims 1, 2, 4, 5, 8, 24, 25, and 31 of the ʼ8923 patent. Decision at 2, NEC
Corporation of America, et.al. v. Cellular Communications Equipment LLC, No. IPR2014-01133
(P.T.A.B. Jan. 15, 2015). On January 4, 2016, the PTAB issued its Final Written Decision in
Case IPR2014-01133 regarding the ʼ8923 patent. See Final Written Decision, HTC Corporation,
et al. v. Cellular Communications Equipment, LLC, No. IPR2014-01133 (P.T.A.B. Jan. 4,
2016)1. The PTAB concluded that “Petitioner has not shown by a preponderance of the evidence
that claims 1, 2, 4, 5, 8, 24, 25, and 31 are unpatentable under 35 U.S.C. §§ 102(b), 103(a).” Id.
at 15.
APPLICABLE LAW
Claim Construction
“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)). The Court examines a patent’s intrinsic evidence to
define the patented invention’s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312–13;
1
On February 12, 2015, NEC Corporation of America and NEC Mobile Communications, Ltd. were dismissed from
the proceeding. Thus, the Final Written Decision issued under a different case name than the Decision Institution of
Inter Partes Review.
2
Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
customary meaning as understood by one of ordinary skill in the art at the time of the invention.
Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
2003).
Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at
1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
Other claims, asserted and un-asserted, can provide additional instruction because “terms are
normally used consistently throughout the patent.” Id. Differences among claims, such as
additional limitations in dependent claims, can provide further guidance. Id.
“[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), aff’d, 517
U.S. 370, 116 S.Ct. 1384, 134 Led.2d 577 (1996)). “[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). In the specification 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. Although the Court generally presumes terms possess their
ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See
SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir.
2001). This presumption does not arise when the patentee acts as his own lexicographer. See
Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
The specification may also resolve ambiguous claim terms “where the ordinary and
3
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. For example,
“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is
rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d
1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough the
specification may aid the court in interpreting the meaning of disputed language in the claims,
particular embodiments and examples appearing in the specification will not generally be read
into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patentee may define a term during prosecution of 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”). The wellestablished doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir.
2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
(citations omitted). “Indeed, by distinguishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
1372, 1378–79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim interpretation,
4
prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects
the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, Inc., 334
F.3d at 1324.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). 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 such sources may also provide overly broad
definitions or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid the Court in determining the particular meaning of a term in the
pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
prosecution history in determining how to read claim terms.” Id.
Means-Plus-Function Limitations
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.
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. (citing 35
U.S.C. § 112, ¶ 6). Accordingly, when faced with means-plus-function limitations, courts “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 two inquiries. The first step
5
requires “a determination of the function of the means-plus-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, “the next step is to determine the corresponding structure
disclosed in the specification and equivalents thereof.” Id. A structure is corresponding “only if
the specification or prosecution history clearly links or associates that structure to the function
recited in the claim.” Id. Moreover, the focus of the corresponding structure inquiry is not merely
whether a structure is capable of performing the recited function, but rather whether the
corresponding structure is “clearly linked or associated with the [recited] function.” Id.
There is a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply when the term
“means” is not utilized. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–1349 (Fed.
Cir. 2015) (holding that a presumption exists if the word “means” is not used but overturning the
prior standard that the presumption is “strong”). This presumption is rebuttable, however,
because “the essential inquiry is not merely the presence or absence of the word ‘means’ but
whether the words of the claim are understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure.” Id.at 1348 (citing Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996)). Thus, “[w]hen a claim term lacks the
word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger
demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites
‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citing
Watts v. XL Systems, Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Claim Indefiniteness
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112, ¶ 2. “[I]ndefiniteness is a question of law and in effect part of
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claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). A
party challenging the definiteness of a claim must show it is invalid by clear and convincing
evidence. Young v. Lumenis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007).
The definiteness standard of 35 U.S.C. § 112, ¶ 2 requires that:
[A] patent’s claims, viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with reasonable
certainty. The definiteness requirement, so understood, mandates clarity, while
recognizing that absolute precision is unattainable. The standard we adopt accords
with opinions of this Court stating that “the certainty which the law requires in
patents is not greater than is reasonable, having regard to their subject-matter.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129–30 (2014) (internal citations
omitted).
ANALYSIS
I.
Agreed Terms
The parties have submitted the following agreements (Doc. No. 107 at 4):
Term
Agreed Construction
“connection means for setting up the
emergency call connection” (’872 patent,
cl. 12)
The parties agree this is a means-plusfunction element to be construed in
accordance with 35 U.S.C. 112(6).
The parties further agree that the function
is “setting up the emergency call
connection.”
The parties do not agree on the
corresponding structure.
“receiving means for receiving a network
identifier of a visited network notified to
the terminal when the terminal is registered
in the visited network” (’872 patent, cl. 12)
The parties agree this is a means-plus-function
element to be construed in accordance with 35
U.S.C. 112(6).
The parties further agree that the function is
“receiving a network identifier of a visited
network notified to a terminal when the
terminal is registered in the visited network.”
7
The parties do not agree on the corresponding
structure.
“comparison means for comparing the
received network identifier of the visited
network with a network identifier of a
home network of the terminal” (’872
patent, cl. 12)
The parties agree this is a means-plus-function
element to be construed in accordance with 35
U.S.C. 112(6).
The parties further agree that the function is
“comparing the received network identifier of
the visited network with a network identifier of
a home network of the terminal.”
The parties do not agree on the corresponding
structure.
In light of the parties’ agreements on the proper function for these terms, the Court
ADOPTS these proposed functions.
II.
Disputed Terms in the ʼ8923 Patent
The ’8923 Patent, titled “Control of Terminal Applications in a Network Environment,”
issued on May 15, 2007, and bears an earliest priority date of December 18, 2003. The Abstract
states:
A mechanism and method for controlling the rights and/or behavior of
applications in a terminal, especially in a mobile terminal, are disclosed. At least
some of the messages generated by an application residing in the terminal and
destined for a communication network are diverted to an independent controlling
entity also residing in the terminal. In the controlling entity, the messages are
controlled before being transmitted to the network. Depending on the application
and its behavior in the terminal, the control entity may modify the messages or
even prevent their sending to the network. The modification may include
inserting control data, such as a digest, which can be used to authenticate the
application.
a.
“controlling entity” (Claims 1, 4, 24, and 26)
Plaintiff’s Proposed Construction
No construction necessary. Not subject to 35
U.S.C. 112(6).
Defendants’ Proposed Construction
Indefinite.
This is a means-plus-function element to be
construed in accordance with 35 U.S.C. § 112,
¶ 6.
Alternatively, should the Court determine this
term is subject to 35 U.S.C. 112(6):
8
Function:
“controlling, based on the message and
before the message is transmitted to the
communication network, whether the
application program behaves in a
predetermined manner in the communication
terminal”
Function:
“controlling . . . whether the application
program behaves in a predetermined manner”
Structure:
no corresponding structure disclosed
Alternatively, should the Court find the
limitations not indefinite, the following
additional constructions should apply:
“The controlling entity is a physically
separate component from the diverting
unit.”
“The controlling step must be
performed by a component physically
separate from the component that performs
the diverting step.”
Structure:
“trusted entity/agent 212 (and equivalents).
See, e.g., 1:59-2:67, 3:57-66, 4:46-54, 4:20-42,
6:27-48, 6:49-67, 7:13-8:19, 4:63-5:5 and in
Figs. 2-3 and 5-10”
Alternatively, should the Court determine an
algorithm is required, the structure is:
“trusted entity/agent 212 configured to
perform one or more of the algorithms
described in the ’8923 patent at Abstract,
1:63-2:11, 4:61-67, 6:27-48, Figs. 2-3 and
5-6 (and equivalents).”
The parties completed claim construction briefing before the issuance of the PTAB’s
Final Written Decision as to the ʼ8923 patent. The parties agreed to submit the term “controlling
entity” on the papers, and the term was not argued at the January 12, 2016 Markman hearing.
The Court did allow supplemental briefing on the narrow issue of what was represented to the
PTAB that might be inconsistent with what was represented to the Court in the claim
construction briefing.
Defendants argue that the “controlling entity” limitation is a means-plus-function
limitation. Doc. No. 138 at 32. Defendants liken the word “entity” to the words “unit” or
“device” and other “nonce” terms under Williamson. Id. Defendants argue that “[t]he prefix
‘controlling’ adds no more to the generic term ‘entity,’ because controlling simply refers to the
claimed functionality and not the structural detail.” Id. Defendants state that “the ’8923 patent
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specification only refers to the controlling entity as the ‘trusted agent 212’ and its claimed
functionality.” Id. Defendants note that “the specification never provides any structural detail on
the ‘trusted agent 212,’ and the figures illustrate that the entity is nothing more than a structurally
nondescript black box. . . .” Id.; see id. at 32-33. Further, Defendants argue, “[n]one of the ’8923
figures provide details of how the trusted agent is structured or any specific algorithm for
performing its claimed function.” Id. at 33.
Additionally,
Defendants
argue
that,
if
the
Court
does
not
find
the
“controlling”/“controlling entity” limitations indefinite, the Court should construe “controlling
entity” in accordance with the express findings of the PTAB, which were made in reliance on
CCE’s arguments regarding claim construction in IPR2014-01133. Doc. No. 173 at 1.
Defendants submit that two additional constructions should apply to claims 1, 4, 24, and 26: “(1)
The controlling entity of claims 24 and 26 is a physically separate component from the diverting
unit; and (2) The controlling step of claims 1 and 4 must be performed by a component
physically separate from the component that performs the diverting step.” Id.
CCE first argues that “controlling entity” is distinguishable from “nonce” words that have
been found to invoke 35 U.S.C § 112, ¶ 6. Doc. No. 142 at 19. CCE states that “controlling
entity” is “specific control software that takes action based on a data structure (a message) and
controls whether other software (the application program) behaves in a predetermined manner.”
Id.; Doc. No. 142, Ex. G (“Royer Decl.”) at ¶ 72. Thus, CCE’s expert concludes that one skilled
in the art “would recognize such a software component as physical structure comprised of
executable program code, in the same way the application program is structure.” Royer Decl. at
¶ 72.
Next, CCE argues that even if “controlling entity” is subject to § 112, ¶ 6, it is not
10
indefinite because “the specification discloses that the structure clearly linked to
‘controlling…whether the application program behaves in a predetermined manner’ is trusted
entity/agent 212.” Doc. No. 142 at 19. CCE concludes that “[b]ecause the ‘trusted entity/agent’
described in the specification is specific software structure rather than a general purpose
processor, no algorithm is necessary.” Id. at 19. Alternatively, CCE argues that even if an
algorithm is necessary, the ʼ8923 patent disclosure satisfies the algorithm requirement. Id. at 20.
Finally, CCE argues that Defendants’ additional proposed constructions mischaracterize
the IPR record. CCE argues that the claims do not require that the “intervening diverting step be
performed by a function or mechanism physically separate from the controlling entity.” Doc.
No. 179 at 1. CCE states that the specification “merely provides that distinct logical mechanisms
perform the diverting and controlling” and that “physical separateness” is not required. Id. CCE
argues that this is consistent with the PTAB’s interpretation of claims 1 and 24. Id. Furthermore,
CCE contends that it never argued that “the diverting and controlling must be performed by
physically separate components.” Id. at 2.
Because “controlling entity” does not use the word “means,” a rebuttable presumption
arises that this disputed term is not a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6. See Williamson, 792 F.3d at 1348.
Claim 1 of the ’8923 Patent, for example, recites (emphasis added):
1. A method for controlling application programs in a communication terminal,
the method comprising:
sending messages …;
diverting a message of the messages to a controlling entity residing in the
communication terminal; and
based on the message, controlling in the controlling entity whether the
application program behaves in a predetermined manner in the communication
terminal, the controlling being performed before the message is transmitted from
the communication terminal to the communication network.
11
The Summary of the Invention discusses the “controlling entity” and notes that it “is also termed
the trusted agent in this context”:
In the present invention, the control mechanisms rest on a separate controlling
entity residing in a terminal. At least some of the outbound messages generated
by an application in a terminal are diverted to the controlling entity on their way
from the application to the network. The controlling entity evaluates whether any
changes are needed in the message or in the behavior of the application. Based on
the evaluation, the control entity then returns the message intact or in a modified
form. The controlling entity may even prohibit the sending of the message, if it
detects that the application has no pertinent rights or that the application is not
behaving, as it should. The controlling entity resides in a tamper resistant area of
the terminal, so that its operation cannot be affected by the user or other parties
that are beyond the control of the network operator. The outbound messages of
an application are thus controlled by a controlling entity, which is totally
independent of the applications residing in the terminal. Due to its nature, the
controlling entity is also termed the trusted agent in this context.
’8923 Patent at 1:59-2:11 (emphasis added).
The specification also discloses a “trusted agent 212, which acts as a controlling entity
controlling the rights and behavior of the applications” and which “may be a dedicated software
agent or a Digital Rights Management (DRM) agent whose normal functionality has been
modified for the method of the invention.” Id. at 3:57-66 (emphasis added). Further, the
specification discloses that the trusted agent can “check[] whether [an] application behaves as it
should be behaving” and can take corrective action if appropriate:
[T]he application starts a session by sending an INVITE request according to the
SIP protocol to the opposite terminal (step 4). The INVITE request invites the
opposite terminal to participate in the session, which is here assumed to be a chess
session, and it includes a description of the session, for example. The INVITE
request further includes the identifier of the application, which is then utilized by
the SIP protocol stack. When the protocol stack receives the outbound INVITE
request generated by the application, it checks from the application repository
whether the application is such that it needs to be controlled (step 5). If the
application identifier is found in the repository, the repository returns a positive
12
response (step 6) indicating that the application needs to be controlled. When the
protocol stack receives the positive response, it sends the INVITE request to the
trusted agent (step 7). The trusted agent then examines the request and checks,
whether the application behaves as it should be behaving (step 8). The trusted
agent may modify the request, for example by adding control data, such as
control parameters, to the request. As discussed below, the trusted agent may
also prohibit the sending of the request. If the trusted agent allows the sending of
the request, it returns the request, either as such or in a modified form, to the SIP
protocol stack (step 9). The protocol stack then transmits the INVITE request to
the network (step 10).
Id. at 4:46-65 (emphasis added); see id. at 6:27-41 (similar).
On one hand, “[m]any devices take their names from the functions they perform. The
examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’”
Greenberg, 91 F.3d at 1583. Plaintiff’s expert, Mr. Claude Royer, opines:
In my opinion, a POSA [(person of ordinary skill in the art)] would understand
“controlling entity,” as that term is used in the claims, has definite meaning as the
name for structure, i.e., specific control software residing in the claimed terminal.
***
It is well known by those of skilled in the art that an “application program” is
software. A POSA would also know that any “message” sent from an application
to another entity within the terminal is an electronic data structure generated and
interpreted by software. Thus, the claim language states that the “controlling
entity” takes action based on a data structure (a message) and controls whether
software (the application program) behaves in a predetermined manner, making
clear that the “controlling entity” is specific control software that interacts with
other software components and data structures. A POSA would recognize such a
software component as physical structure comprised of executable program code,
in the same way the application program is structure.
Royer Decl. at ¶¶ 70, 72.
On the other hand, neither the above-quoted intrinsic evidence nor any other intrinsic
evidence cited by Plaintiff identifies any particular class of structures associated with the term
“controlling entity.” For example, disclosure that the controlling entity “may be” a dedicated
13
software agent or a Digital Rights Management (DRM) agent (see ’8923 Patent at 3:57-66) does
not demonstrate that the term “controlling entity” refers to any particular class of structures.
Williamson, 792 F.3d at 1350 (“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and
other nonce words that reflect nothing more than verbal constructs may be used in a claim in a
manner that is tantamount to using the word ‘means’ because they typically do not connote
sufficiently definite structure . . . .”) (citation and internal quotation marks omitted).
On balance, “controlling entity” does not connote any particular structure or class of
structures and is therefore a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. As to
the claimed function, the parties have not presented any arguments as to the function and have
essentially agreed upon “controlling . . . whether the application program behaves in a
predetermined manner in the communication terminal,” which is consistent with the claim
language. See Doc. No. 138 at 32; see also Doc. No. 142 at 19.
As to corresponding structure, the above-quoted passages link the “trusted agent 212” to
the claimed function.
Defendants’ expert, Dr. J. Stevenson Kenney, opines:
[A] black box recitation of structure (and undisclosed modifications of such
structure), however, does not imply any sufficiently definite structure for
performing the function of “controlling . . . whether the application program
behaves in a predetermined manner,” nor does it inform one of ordinary skill in
the art about the proper scope of the claims or serve any legitimate public notice
function.
Doc. No. 138, Ex. 1 (“Kenney Decl.”) at ¶ 92.
The above-quoted disclosures in the specification demonstrate that the word “agent”
refers to a particular type of software structure and is adequate corresponding structure for the
term “controlling entity.” See, e.g., ’8923 Patent at 3:57-66, 4:46-65 & 6:27-41; see also
Genband USA LLC v. Metaswitch Networks Ltd., No. 2:14-CV-33-JRG-RSP, 2015 WL
14
4722185, at *18 (E.D. Tex. Aug. 7, 2015) (noting dictionary definitions and other evidence
indicating that “‘agent’ has structural meaning”). Further, because the “trusted agent 212” is not
a general-purpose computer, the algorithm requirement does not apply. See, e.g., WMS Gaming,
Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (“In a means-plus-function claim
in which the disclosed structure is a computer, or microprocessor, programmed to carry out an
algorithm, the disclosed structure is not the general purpose computer, but rather the special
purpose computer programmed to perform the disclosed algorithm.”).
Additionally, CCE should be held to its position in the IPR, which the PTAB adopted,
that the controlling entity must be separate from the diverting unit. However, Defendants’
proposal that the controlling entity must be physically separate from the diverting unit is not
supported. Ultimately, the required degree of separation is a question of fact for determining
infringement rather than a question of claim construction. See Smartflash LLC v. Apple Inc.,
Case No. 6:13-cv-447-JRG-KNM, Doc. No. 432 at 10-11 (E.D. Tex. Jan. 26, 2015); see also
PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (“[A]fter the court
has defined the claim with whatever specificity and precision is warranted by the language of the
claim and the evidence bearing on the proper construction, the task of determining whether the
construed claim reads on the accused product is for the finder of fact.”); EON Corp. IP Holdings
LLC v. Silver Springs Networks, Inc., --- F.3d ----, 2016 WL 766661, at *3 (Fed. Cir. Feb. 29,
2016) (citing PPG).
Accordingly, “controlling entity” is a means-plus-function term governed by 35 U.S.C.
§ 112, ¶ 6, the claimed function is “controlling…whether the application program behaves in
a predetermined manner in the communication terminal,” and the corresponding structure is
15
“trusted agent 212, which must be separate from the diverting unit (in Claim 24) or the
component that performs the diverting step (in Claim 1).”
III.
Disputed Terms in the ʼ820 Patent2
The ’820 Patent, titled “Apparatus, System, and Method for Designating a Buffer Status
Reporting Format Based on Detected Pre-Selected Buffer Conditions,” issued on November 8,
2011, and bears an earliest priority date of November 5, 2007. The Abstract states:
An apparatus, system and method for increasing buffer status reporting efficiency
and adapting buffer status reporting according to uplink capacity. User equipment
is configured a [sic, to] monitor a usage of a plurality of buffers, detect one of a
plurality of pre-selected conditions corresponding to at least one of the plurality of
buffers, designate one of a plurality of buffer status reporting formats depending
on the pre-selected condition detected, communicate a buffer status report to a
network device in accordance with the buffer status reporting format designated.
The buffer status reporting format is configured to minimize buffer status
reporting overhead created by the communicating of the buffer status report.
a. “monitoring a usage of a plurality of buffers” (Claims 1, 12, and 24)
Plaintiff’s Proposed Construction
No construction necessary
Defendants’ Proposed Construction
“monitoring an act, way, or manner of
using a plurality of buffers”
CCE argues that the Court previously rejected Defendants’ similar proposed construction
of the term “usage” in a prior case. Doc. No. 131 at 5 (citing HTC Second Markman Order at 47). In HTC, the Court found that “[t]he specification does not limit the definition of ‘usage’ to a
particular meaning different from or narrower than the term’s plain meaning.” HTC Second
Markman Order at 5. The Court expressly rejected the defendants’ proposal that “usage” means
“an act, way, or manner of using.” Id. at 6; see id. at 4-7.
Defendants acknowledge that “usage” was previously construed by this Court in an
2
Defendants originally requested permission to argue that “the designating unit” in Claim 12 of the ’820 Patent
lacks corresponding structure and is therefore indefinite. This argument was rejected previously in HTC. See HTC
First Markman Order at 28-31. Thus, the Court denied Defendants’ request to present indefiniteness arguments
again as to the same term in this case. See Doc. No. 135.
16
earlier case. Doc. No. 138 at 25. However, they argue that the Court’s prior finding of “no
construction necessary” for “usage” does not resolve the current dispute as to the scope of the
claim limitation. Id. They argue that the term “‘monitor[ing] a usage of a plurality of buffers’
deserves a second look in light of clear language in the specification.” Id. at 25-26. However,
CCE argues that nothing in the specification supports Defendants’ restrictive construction. Doc.
No. 131 at 7. CCE contends that Defendants’ proposal does not reflect the broad ordinary
meaning of “usage,” but rather constricts the ordinary meaning by excluding definitions relating
to “fact of being used.” Doc. No. 131 at 6; Doc. No. 142 at 2.
Previously, in HTC, the Court expressly rejected Defendants’ proposal that “usage”
means “an act, way, or manner of using.” HTC Second Markman Order at 5. The Court found
that the specification “did not limit the definition of ‘usage’ to a particular meaning different
from or narrower than the term’s plain meaning.” Id. at 5. Here, Defendants have failed to
demonstrate why the Court should depart from its prior finding in HTC. Defendants argue that
the specification makes clear that “monitoring a usage of one or more communications buffers”
is narrower in scope than merely “monitoring buffers.” Doc. No. 138 at 27. However, the phrase
“monitoring buffers” does not appear in the claims. The specification refers to monitoring
buffers, but there is no evidence that this reference supports constricting the definition of “usage”
to “an act, way, or manner of using.” Thus, the Court rejects Defendants’ argument that
“monitoring a usage of a plurality of buffers” must be narrower than “monitoring buffers” or
must exclude buffer status. The Court therefore rejects Defendants’ proposed construction.
No further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings
and technical scope, to clarify and when necessary to explain what the patentee covered by the
17
claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo Networks,
Inc. v. Verizon Commcn’s, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012).
Therefore, the Court construes “monitoring a usage of a plurality of buffers” to have
its plain meaning.
b. “network device” (Claims 1, 12, and 24)
Plaintiff’s Proposed Construction
No construction necessary. Not subject to
35 U.S.C. 112(6).
Defendants’ Proposed Construction
Indefinite.
Alternatively, “base station.”
This is a means-plus-function element to
be construed in accordance with 35 U.S.C.
§ 112, ¶ 6.
Function:
“receiving the communicated buffer
status report”
Structure:
no corresponding structure disclosed
Defendants argue that “network device” is a means-plus-function limitation under the
Williamson standard and thus must be construed in accordance with § 112, ¶ 6. Doc. No. 138 at
29. They state that those of ordinary skill “would not understand the term ‘device’ to be
sufficiently definite structure, even when paired with the term ‘network.’” Id. Defendants
contend that the specification consistently describes “‘network device’ with respect to its
functional capabilities but never in terms of any particular structure for implementing those
18
functions.” Id. at 30. Thus, Defendants conclude that “network device” is a means-plus-function
term and indefinite. Id.
First, CCE argues that the term is not means-plus-function. Doc. No. 142 at 3. CCE
contends that the claims “do not even recite a function for the ‘network device’ to perform” and
Defendants’ proposed function cannot be found within the claims. Id. Second, CCE argues that
“in the context of the ʼ820 patent, ‘network device’ designates structure to skilled artisans—
namely, a base station.” Id.
The term “network device” does include the word “device,” which Williamson placed in
the category of “nonce” words. See Williamson, 792 F.3d at 1350. However, the disputed term
also includes a preceding modifier, “network,” which changes the meaning of the word “device.”
See id. at 1350-51 (“the presence of modifiers can change the meaning of ‘module’”). The
specification shows how “network device” designates structure:
FIG. 5 is a block diagram representing a short buffer status reporting format 500
in accordance with one embodiment of the present invention. The depicted short
buffer status reporting format 500 includes a radio bearer group identity 510, and
a buffer size 520. The radio bearer group identity 510 enables a network device,
such as a base station, to know the buffer status, i.e., to determine the data in a
buffer corresponding to a radio bearer group.
’820 Patent at 8:40-47 (emphasis added); see id. at 5:40-42 (“In certain embodiments, the
network device 120 is configured to receive buffer status reports from the user equipment
110.”).3 Thus, the word “network” gives rise to structural connotations when coupled with the
word “device,” as reinforced by the specification.
3
See also Doc. No. 142, Ex. E, Wiley Electrical & Electronics Engineering Dictionary (“Wiley Dictionary”) 62
(2004) (defining “base station” as “1. In a land-mobile system, a land station that maintains communications with
land-mobile stations. A base station may also communicate with other base stations. 2. In a land-mobile system, a
fixed-location station which communicates with mobile stations. 3. A site which has the necessary transmission and
reception equipment to provide cellular phone coverage in a given geographical area. All incoming and outgoing
calls within this zone are handled by this station. The area served by a given base station is called a cell. . . .”).
19
The disputed term “network device” also does not appear “in a format consistent with
traditional means-plus-function claim limitations.” Williamson, 792 F.3d at 1350. In Williamson,
the court noted that the relevant portion of the claims at issue “replaces the term ‘means’ with the
term ‘module’ and recites three functions performed by the ‘distributed learning control
module.’” Id. Here, by contrast, claim 1 recites:
1. A method, comprising:
monitoring a usage of a plurality of buffers;
detecting one of a plurality of pre-selected conditions corresponding to the
plurality of buffers;
designating one of a plurality of buffer status reporting formats comprising
a long buffer status reporting format and a short buffer status reporting format
depending on the pre-selected condition detected; and
communicating a buffer status report to a network device in accordance
with the buffer status reporting format designated, wherein the designating
designates the long buffer status reporting format when there is sufficient uplink
bandwidth to communicate using the long buffer status reporting format.
(emphasis added). The claim does not recite any functional limitation associated with the
“network device” other than perhaps merely being the recipient of a buffer status report. See id.;
see also TecSec, Inc. v. Int’l Business Machines Corp., 731 F.3d 1336, 1348 (Fed. Cir. 2013)
(“The term ‘digital logic means’ is also not subject to § 112, ¶ 6. As an initial matter, the claims
do not recite a function for the digital logic to perform.”). Thus, the disclosures in the
specification as well as the context in which the disputed term is used in the claims demonstrate
that “network device” is not a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6. As
such, Defendants’ proposed construction is rejected. No further construction is necessary.
Therefore, the Court construes “network device” to have its plain meaning.
IV.
Disputed Terms in the ʼ786 Patent
The ’786 Patent, titled “Decoding Method,” issued on February 4, 2014, and bears an
earliest priority date of September 15, 2004. The Abstract states:
20
A decoding method for decoding information content in at least one data packet,
which is transmitted from a sender to a receiver via a data link. The information
is represented by a bit sequence, which is transformed into a transmittable
redundancy version. The information is initially transmitted for a first time in a
first data packet from the sender to the receiver. The information is represented
by a first redundancy version, which is self-decodable. An incorrect receipt is
confirmed by sending a confirmation from the receiver to the sender. The
information is retransmitted at least a second time in a second data packet from
the sender to the receiver upon receipt of the confirmation, wherein, for
representation of the information, a second redundancy version is used, the
selection of which is performed in dependence on a coding parameter, describing
whether the redundancy version is self-decodable or not.
a. “self-decodable” (Claims 1 and 12)4
Plaintiff’s Proposed Construction
No construction necessary
Defendants’ Proposed Construction
“decodable only by itself without
considering other data”
CCE argues that self-decodability “is not an absolute quality of transmitted information,”
but rather, it is “a characteristic describing how information is represented prior to transmission.”
Doc. No. 131 at 9. CCE argues that Defendants’ proposed construction is overly narrow and
vague and that it is unclear what “other data” cannot be considered under Defendants’ proposal.
Id.
Defendants argue that the ʼ786 specification “expressly defines the term ‘self-decodable,’
and that express definition governs.” Doc. No. 138 at 18. Defendants point to the specification
which states, in the context of describing a redundancy version, “self-decodable, that means
decodable only by itself...” ʼ786 Patent at 2:59-60. CCE does not appear to dispute this, noting
that self-decodable “denotes…something can be decodable by itself.” Doc. No. 142 at 4.
Defendants then argue that “without considering other data” is a “necessary component of the
construction” because the specification shows that a redundancy version (“RV”) can only be
self-decodable if it is decodable without considering any other RVs. Doc. No. 138 at 19 (citing
4
This term appears in the ʼ786 patent both with and without a hyphen. The parties have not attributed any
significance to the presence or absence of a hyphen in “self-decodable” or “self decodable.”
21
ʼ786 Patent at 8:39-50). Defendants contend that Plaintiff offers no support to show that a lay
juror would understand this “highly-technical term used in the context of a wireless
communications scheme.” Doc. No. 138 at 19.
Both sides seem to agree that the specification provides that “self-decodable” means
decodable by itself. The term “only” that Defendants point to in the specification does not mean
without consideration of any other data, but rather it means without consideration of others of
that same type. ʼ786 Patent at 2:57-60. The disclosures in the specification show that “selfdecodable” refers to whether a data packet can be decoded without reference to any other data
packets, not “without considering other data” as the Defendants have proposed. See id. at 8:3950 (“The parameter s specifies whether the RV is self decodable, this means decodable if only
this RV is considered…Such a redundancy version is typically self decodable, that means, that it
can be decoded by itself…This is not the case when s=0 (parity bits are prioritized), where it can
happen that a RV cannot be decoded by itself, even in the absence of noise, but only together
with an other [sic, another] RV”).
Therefore, the Court construes “self-decodable” to mean “decodable by itself.”
b. “self decodable rate matching pattern” (Claim 1)
Plaintiff’s Proposed Construction
“rate matching patterns”: “patterns for
puncturing and/or repeating bits”
Defendants’ Proposed Construction
This term is indefinite under 35 U.S.C.
§ 112, ¶ 2.
“self decodable”: no construction
necessary
Defendants argue that “self decodable rate matching pattern” is indefinite because it is a
nonsensical term with an unclear scope. Doc. No. 138 at 22-23. First, Defendants argue that the
term is not explained in the ʼ786 patent and “not used outside of the ʼ786 patent and related
22
applications.” Id. at 22. They state that the ʼ786 patent defines the sub-phrases “self decodable”
and “rate matching pattern” separately, but that the combined term is nonsensical because “a rate
matching pattern cannot literally be self decodable.” Id.; Id. at 24. Second, Defendants argue that
the ʼ786 patent itself “teaches away from rate matching patterns being ‘self decodable.’” Id. at
23. They state that, in the ʼ786 patent, parameters “r” and “s” operate independently of each
other and thus “the selection of a rate matching pattern (parameter r) does not affect whether the
redundancy version is self decodable (parameter s).” Id.; See also Kenney Decl. at ¶73. Thus,
Defendants conclude that a “self decodable rate matching pattern” “is contradicted by the
disclosure of the ʼ786 patent.” Id. Defendants draw a distinction between the “rate matching
stage” and the “rate matching pattern,” concluding that “[t]he parameter s thus makes sense in
the context of the broader ‘stage,’ but there is no way to apply the parameter to the ‘pattern.’”
Doc. No. 148 at 3.
CCE responds that Defendants’ characterization of the term “self decodable rate
matching pattern” as a “rate matching pattern” that is itself “self decodable” is illogical when
read in context. Doc. No. 142 at 7-8. CCE argues that “the patent confirms that varying
parameter s for a given parameter r results in different rate matching patterns, some of which
yield a self-decodable data packet and others which do not.” Id. at 7 (citing Royer Decl. at ¶ 42).
Thus, CCE concludes that the “self-decodable property of a data packet therefore results directly
from the rate matching pattern that produced the packet” and one skilled in the art would
understand the term perfectly. Id. CCE draws an analogy by arguing that the ordinary phrase
“healthy recipe” is not read to refer to a “recipe that is, itself, healthy” but rather a “recipe used
to produce something healthy.” Id. at 8. Similarly, CCE concludes, a “self decodable rate
matching pattern” is not read to refer to a “rate matching pattern” that is, itself, “self decodable,”
23
but rather a “rate matching pattern used to produce self-decodable information (by prioritizing
systematic bits during rate matching).” Id.
The specification discloses that “[r]ate matching is the puncturing or repeating of bits in
order to achieve a desired final number of data in a certain time interval or correspondingly a
desired data rate.” ’786 Patent at 9:36-39. Although Defendants appear to argue that a rate
matching pattern must itself be “self-decodable,” the context of claim 1 demonstrates that the
disputed term refers to whether the resulting data packet is self-decodable.
Defendants’ expert concludes that “it is unclear what is meant by a ‘self decodable rate
matching pattern’ because the selection of a rate matching pattern (parameter r) does not affect
whether the redundancy version is self decodable (parameter s).” Kenney Decl. at ¶ 73.
However, the specification contains no clear disclosure in favor of such a reading. Furthermore,
to whatever extent such a feature is present, it is a particular feature of preferred embodiments
that should not be imported into the claim. See Constant v. Advanced Micro-Devices, Inc., 848
F.2d 1560, 1571 (Fed. Cir. 1988) (“Although the specification may aid the court in interpreting
the meaning of disputed language in the claims, particular embodiments and examples appearing
in the specification will not generally be read into the claims.”); see also Phillips, 415 F.3d at
1323; Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we
read claims in view of the specification, of which they are a part, we do not read limitations from
the embodiments in the specification into the claims.”). The specification also discloses: “If s=1,
then when puncturing during rate matching the so called systematic bits are prioritized over the
parity bits of the turbo code. Such a redundancy version is typically self decodable . . . .” ’768
Patent at 8:43-46 (emphasis added). This disclosure reinforces the conclusion that the rate
matching pattern can have an effect on whether a redundancy version is self-decodable. See
24
Royer Decl. at ¶42.
In Defendants’ Reply, they contend that CCE’s argument is also “contradicted by the
patentee’s express statement that the rate matching pattern is ‘based on’ the parameter r.” Doc.
No. 148 at 3 (citing Ex 1, Sept. 19, 2013 Amendment at 11 (“Amendment”)). Defendants argue
that the patentee expressly stated that r specifies the rate matching pattern, and that statement is
in direct contrast to CCE’s argument now that the rate matching pattern can be changed by
changing the parameter s. See Doc. No. 183, Markman Transcript at 31:21-32:1 (“They always
say [r] specifies the rate[ ]matching pattern…[n]ow, in contrast here in the district court case,
Plaintiff is arguing that the rate[ ]matching pattern can change by changing [s].”). However, the
prosecution history cited by Defendants does not contain any clear disclaimer in this regard. See
Omega Eng’g, 334 F.3d at 1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation,
prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects
the public’s reliance on definitive statements made during prosecution.”) (emphasis added); see
also id. at 1325-26 (“[F]or prosecution disclaimer to attach, our precedent requires that the
alleged disavowing actions or statements made during prosecution be both clear and
unmistakable.”) (emphasis added).
The Sept. 19, 2013 Amendment states that the “rate matching pattern…is based on the
rate matching parameter r.” Amendment at 11. The intrinsic record never states that parameter r
alone determines the rate matching pattern. CCE argues that during prosecution the applicants
merely explained that the rate matching pattern is “based on” rate matching parameter r, not that
the rate matching pattern is exclusively determined by rate matching parameter r. Doc. No. 142
at 7 n. 2. Furthermore, the specification states that “the parameters of the rate matching stage
depend on the value of the RV parameters s and r.” ʼ786 Patent at 7:61-62 (emphasis added).
25
While Defendants are correct that this portion of the specification refers to the rate matching
stage, not the rate matching pattern, the specification goes on to show “how the rate matching
pattern is derived.” Id. at 8:21. “‘Rate matching determination’ deals with the exact
determination of the rate matching pattern based on the parameters eplus, eminus and eini.” Id.at
8:23-25. CCE argued during the Markman Hearing that “eminus and einitial…depend directly on the
value of parameter s” and thus s “does influence the rate[ ]matching pattern.” Transcript at 40:410 (citing to R1-041354, §4.5.4.3). Thus, Defendants have failed to show any statements by the
patentee during prosecution that rise to the level of a clear disclaimer.
In sum, Defendants have failed to demonstrate that the selection of a rate matching
pattern is necessarily independent of self-decodability.
Defendants’ final argument is that CCE’s changes in its proposed construction show that
the disputed term lacks a clear scope. Defendants state that CCE has proposed: (1) “rate
matching patterns that prioritize systematic bits” (P.R. 4-2 Disclosure); (2) “‘self decodable’: no
construction necessary” and “‘rate matching patterns’: ‘patterns for puncturing and/or repeating
bits’” (P.R. 4-3 statement); and (3) “a rate matching pattern that produces self-decodable
information” (Plaintiff’s letter brief in response to Defendants’ letter brief regarding
indefiniteness). Doc. No. 138 at 24. These constructions are not inconsistent with one another.
The mere fact that CCE revised its proposed constructions does not demonstrate indefiniteness.
Therefore, the Court construes “self decodable rate matching pattern” to mean “a rate
matching pattern that produces self-decodable information.”
V.
Disputed Terms in the ʼ872 Patent
The ’872 Patent, titled “Simplified Method for IMS Registration in the Event of
Emergency Calls,” issued on August 28, 2012, and bears an earliest priority date of April 27,
26
2006. The Abstract states:
Simplification of IMS registration in the event of emergency calls is made
possible by apparatuses and a method for setting up an emergency-call connection
from a terminal to an IMS via a network visited by the terminal, where, if the
terminal is already registered in the IMS, setup of an emergency-call connection
dispenses with IMS registration of the terminal in the IMS for this emergency-call
connection if a comparison between a network identification for the visited
network, of which the terminal was notified when it registered in the visited
network, and a network identification for the terminal’s home network reveals a
match between these network identifications.
a. “receiving means for receiving a network identifier of a visited network
notified to the terminal when the terminal is registered in the visited
network”/ “comparison means for comparing the received network
identifier of the visited network with a network identifier of a home
network of the terminal” / “connection means for setting up the
emergency call connection” (Claim 12)
Term
receiving means for
receiving a network
identifier of a visited
network notified to
the terminal when
the terminal is
registered in the
visited network
Plaintiff’s Proposed
Construction
Function:
“receiving a network
identifier of a visited network
notified to the terminal when
the terminal is registered in the
visited network”
Defendants’ Proposed
Construction
Indefinite.
Structure:
“a mobile terminal (and
equivalents). See 1:18-26,
2:12-56, 3:19-42, Fig. 1.”
Function:
“receiving a network
identifier of a visited
network notified to the
terminal when the terminal
is registered in the visited
network”
Alternatively, should the
Court determine an algorithm
is required, the structure is:
“a mobile terminal (1:24,
2:15, 2:21, 2:42, 3:19, Fig. 1)
configured to perform one or
more of the algorithms set
forth in the ’872 Patent at
2:14-33, 2:40-44, 3:25-29, and
Fig. 1 (and equivalents).”
comparison means
for comparing the
Function:
“comparing the received
27
This is a means-plusfunction element to be
construed in accordance
with 35 U.S.C. § 112, ¶ 6.
Structure:
no corresponding
structure disclosed
Indefinite.
received network
identifier of the
visited network with
a network identifier
of a home network of
the terminal
network identifier of the
visited network with a
network identifier of a home
network of the terminal”
This is a means-plusfunction element to be
construed in accordance
with 35 U.S.C. § 112, ¶ 6.
Structure:
“a mobile terminal (and
equivalents). See 2:21-39,
2:40-56, 3:30-42, Fig. 1.”
Function:
“comparing the
received network identifier
of the visited network with
a network identifier of a
home network of the
terminal”
Alternatively, should the
Court determine an algorithm
is required, the structure is:
“a mobile terminal (1:24,
2:15, 2:21, 2:42, 3:19, Fig. 1)
configured to perform one or
more of the algorithms set
forth in the ’872 Patent at
2:15-33, 2:40-49, 3:30-38, and
Fig. 1 (and equivalents).”
connection means for
setting up the
emergency call
connection
Function:
“setting up the emergency
call connection”
Structure:
“a mobile terminal (and
equivalents). See 1:18-26,
2:12-56, 3:19-42, Fig. 1.”
Alternatively, should the
Court determine an algorithm
is required, the structure is:
“a mobile terminal (1:24,
2:15, 2:21, 2:42, 3:19, Fig. 1)
configured to perform one or
more of the algorithms set
forth in the ’872 Patent at
2:49-52, 3:39-41, and Fig. 1
(and equivalents).”
Structure:
no corresponding
structure disclosed
Indefinite.
This is a means-plusfunction element to be
construed in accordance
with 35 U.S.C. § 112, ¶ 6.
Function:
“setting up the
emergency call
connection”
Structure:
no corresponding
structure disclosed
All of the parties agree that these are means-plus-function terms governed by 35 U.S.C
§ 112, ¶ 6. The parties also agree upon the claimed function. The dispute centers on whether the
specification discloses corresponding structure.
28
CCE first argues that “[t]he ‘872 Patent clearly states that th[ese] function[s] [are]
performed by a terminal in a mobile radio network (i.e., a mobile terminal).” Doc. No. 131 at
12; see id. at 16, 19. CCE then concludes that “[b]ecause the claimed structure is a specialpurpose terminal in a mobile network rather than a ‘general purpose computer,’ no algorithm is
required.” Id. at 14; see id. at 17-19. Next, CCE argues that “even if the disclosed structure was
merely a general purpose computer, no algorithm is required because. . . ‘receiving’ a network
identifier — is so basic that it may be performed without special programming.” Id. As a further
alternative, CCE argues that even if the Court determined that an algorithm is required, “one
skilled in the art would understand that the mobile terminal performs the claimed ‘receiving’
function by obtaining a ‘Mobile Country Code/Mobile Network Code’ (‘MCC/MNC’) from the
mobile network as described” in the specification and as illustrated in Figure 1. Id. at 15.
Similarly, CCE argues that “if an algorithm was required, the ’872 Patent teaches that the
claimed ‘comparing’ function is performed by comparing an MCC/MNC of a visited network
with an MCC/MNC of a home network, as detailed in Figure 1 and described at 2:30-33 and
3:32-38.” Id. at 18. Finally, CCE argues that “if the Court determines an algorithm is necessary,
the ’872 Patent teaches that the claimed mobile terminal ‘set[s] up the emergency call
connection’ using a SIP INVITE message, as detailed in Figure 1 . . ., 2:49-52 . . ., and 3:39-42
. . . .” Id. at 20.
Defendants opine that Claim 12 of the ʼ872 patent is indefinite because the specification
fails to “‘link’ or ‘associate’ structure for performing any of the functions of claim 12’s meansplus-function elements: ‘receiving means,’ ‘comparison means,’ or ‘connection means.’” Doc.
No. 138 at 8. Defendants claim that “a terminal” is a “‘generic and nondescript’ term that
includes a variety of functions and must be specially programmed to perform certain functions.”
29
Id. They further argue that there is no disclosure of what structure “within the terminal performs
the functions of each means-plus-function term.” Id. Thus, Defendants conclude, the “terminal”
could be “so broad as to cover a computer workstation.” Id. In essence, Defendants argue that the
specification discloses the “terminal’s functions,” but not the actual structure of the terminal. Id.
at 11. They state that “the functionality of the terminal is not a description of structure” but rather
“an abstraction that describes the claimed functional elements, which are performed by some
undefined component of the system.” Id. Thus, Defendants conclude that because “there is
nothing in the ʼ872 specification that makes the disclosed ‘terminal’ anything but a general
purpose computer for performing the claimed functions, CCE must demonstrate that the ʼ872
patent discloses an algorithm for performing the claimed functions. Id. at 12.5
“Structure supporting a means-plus-function claim under § 112, ¶ 6 must appear in the
specification.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007).
However, “the amount of detail that must be included in the specification depends on the subject
matter that is described and its role in the invention as a whole, in view of the existing
knowledge in the field of the invention.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d
1376, 1384-85 (Fed. Cir. 2011); see Intel Corp. v. VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir.
2003) (“Whether the specification adequately sets forth structure corresponding to the claimed
functions must be considered from the perspective of one skilled in the art”). Here, the
specification sufficiently links the claimed “receiving,” “comparing,” and “setting up” functions
with a “mobile terminal” structure. See ’872 Patent at 3:19-21 (“A terminal (FIG. 1, ‘terminal’)
registers in a mobile radio network and obtains a network identifier (‘MCC1/MNC1’) of the
5
Defendants also submit that corresponding structure is lacking because “[i]n an effort to preserve its claim of
priority, the patentee submitted an English translation of the German application as the specification for the ’872
patent. (’872 Patent File History at 14-18, 24, 31-37.) However, this German priority application was directed to
method claims, not apparatus claims. (Id. at 38-40.)” Doc. No. 138 at 6.
30
mobile radio network visited by it.”); see also id. at 1:39-44, 2:21-39, 2:51-52 (“In the case of
emergency calls, the terminal can immediately set up the SIP session by means of an SIP
INVITE message.”) & 3:30-42; Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344
F.3d 1205, 1219 (Fed. Cir. 2003) (“The scope of a claim under section 112, paragraph 6 . . . must
be limited to structures clearly linked or associated with the claimed function in the specification
or prosecution history and equivalents of those structures.”). Here, CCE points to standards
which specifically relate to mobile service, i.e. 3GPP protocols. The ʼ872 patent is even titled
“Simplified Method for IMS Registration in the Event of Emergency Calls.” The specification
may not use the term “mobile terminal” specifically, but it does refer to “the terminal…in the
IMS,” which can be understood in context as pertaining to a mobile terminal. ʼ872 patent 2:29.
In re Katz and Aristocrat Technologies, both cited by Defendants, are distinguishable.
Here, CCE has adequately demonstrated that a “mobile terminal” is a special-purpose structure
that includes structures capable of “receiving . . .,” “comparing . . .,” and “setting up . . . .” See
Royer Decl. at ¶ 47 (“Those skilled in the art would know that the claimed terminal is configured
to support 3GPP protocols related to IMS, all of which are well‐known, and must include the
ordinary components (including a receiver, memory, IMS client, and logic) that reside in such
mobile terminals.”).
Defendants’ argument that the specification fails to adequately disclose what structure
“within the terminal” performs the function perhaps might pertain to enablement, but that
argument does not affect the claim construction analysis as to the corresponding structure for
each disputed term.
Therefore, the Court construes the disputed terms as follows:
“receiving means for receiving a network identifier of a visited network notified to
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the terminal when the terminal is registered in the visited network” is a means-plus-function
term governed by 35 U.S.C. § 112, ¶ 6, the claimed function is “receiving a network identifier
of a visited network notified to the terminal when the terminal is registered in the visited
network,” and the corresponding structure is “a mobile terminal, and equivalents thereof.”
“comparison means for comparing the received network identifier of the visited
network with a network identifier of a home network of the terminal” is a means-plusfunction term governed by 35 U.S.C. § 112, ¶ 6, the claimed function is “comparing the
received network identifier of the visited network with a network identifier of a home
network of the terminal,” and the corresponding structure is “a mobile terminal, and
equivalents thereof.”
“connection means for setting up the emergency call connection” is a means-plusfunction term governed by 35 U.S.C. § 112, ¶ 6, the claimed function is “setting up an
emergency call connection,” and the corresponding structure is “a mobile terminal, and
equivalents thereof.”
b. “receiver” (Claims 13, 17, and 18) / “comparator” (Claims 13 and 14) /
“connection unit” (Claims 13 and 14)
Term
receiver
Plaintiff’s Proposed
Construction
No construction
necessary. Not subject to
35 U.S.C. 112(6).
Defendants’ Proposed Construction
Indefinite.
This is a means-plus-function element
to be construed in accordance with 35
U.S.C. § 112, ¶ 6.
Function:
“receive a network identifier of a
visited network notified to a terminal
when the terminal is registered in the
visited network”
Structure:
32
no corresponding structure
disclosed
comparator
No construction
necessary. Not subject to
35 U.S.C. 112(6).
Indefinite.
This is a means-plus-function element
to be construed in accordance with 35
U.S.C. § 112, ¶ 6.
Function:
“compare the received network
identifier of the visited network with a
network identifier of a home network
of the terminal”
Structure:
no corresponding structure
disclosed
connection unit
No construction
necessary. Not subject to
35 U.S.C. 112(6).
Indefinite.
This is a means-plus-function element
to be construed in accordance with 35
U.S.C. § 112, ¶ 6.
Function:
“set up an emergency call
connection”
Structure:
no corresponding structure
disclosed
First, Defendants argue that the disputed terms are means-plus-function terms under
Williamson because they are “nonce” terms “coined to invoke the functions they are to perform
in the claim.” Doc. No. 138 at 15 (citing Williamson, 792 F.3d at 1350). They argue that these
terms “correspond exactly with the means-plus-function terms of claim 12,” providing “no
structure beyond the function.” Id. Defendants point to an earlier ruling of this Court, in CCE v.
HTC, where the Court found that the term “unit” did not “recite sufficiently definite structure”
33
and thus the term “designating unit” invoked § 112, ¶ 6. Id. at 16 (citing HTC First Markman
Order at 30-31). Thus, Defendants conclude that the disputed terms should be treated as meansplus-function terms. Next, Defendants argue that since these terms are means-plus-function
terms, they are indefinite for the same reasons that the means-plus-function terms of claim 13 are
indefinite, because the ʼ872 patent “fails to clearly link or associate any structure or class of
structures to these claim terms or their functions.” Doc. No. 138 at 17.
CCE argues that claims 13, 14, and 18 of the ʼ872 patent do not “recite ‘means for’
elements” and thus differ from claim 12. Doc. No. 142 at 12. First, CCE argues that a “receiver”
is “a well-known, discrete component of the IMS-capable mobile terminal described in the
specification” and that a person of ordinary skill in the art “would understand that the ʼ872 patent
uses the term ‘receiver’ to refer to a structural component of an IMS-capable mobile terminal.”
Id. Next, CCE argues that a “comparator” is also “a well-known component of the IMS-capable
mobile terminal described in the specification” and a person skilled in the art “would understand
that the term ‘comparator’ in the ʼ872 Patent to [sic] refers to discrete logic (e.g. an ‘if’
statement) that compares values stored in memory to determine whether they match.” Id. at 13.
Finally, CCE argues that a person of ordinary skill in the art “would understand that the term
‘connection unit’ refers to a structural component of an IMS-capable mobile terminal, namely a
SIP client.” Id. at 14. Thus, CCE concludes that the components recited in claims 13, 14, and 18
of the ʼ872 patent are “not mere ‘nonce words,’ but recite definite structure known to those
skilled in the art” and therefore are not subject to 35 U.S.C. §112(6). Id. at 15-16.
“receiver”
The term “receiver” connotes a particular class of structures and therefore is not a meansplus-function term governed by 35 U.S.C. § 112, ¶ 6. See Royer Decl. at ¶ 51 (“A ‘receiver’ is a
34
well‐known, discrete component of the IMS‐capable mobile terminal described in the
specification, and one of ordinary skill in the art would understand that the ’872 Patent uses the
term ‘receiver’ to refer to a structural component of an IMS‐capable mobile terminal.”); see also
Wiley Dictionary 641 (2004) (defining “receiver” as: “A component, device, piece of equipment,
or system which accepts information-bearing signals, and which can extract the meaningful
information contained.”); Greenberg, 91 F.3d at 1583 (“Many devices take their names from the
functions they perform.
The examples are innumerable, such as ‘filter,’ ‘brake,’ ‘clamp,’
‘screwdriver,’ or ‘lock’”); EnOcean GmbH v. Face Int’l Corp., 742 F.3d 955, 959-60 (Fed. Cir.
2014) (noting “extensive evidence demonstrating that the term ‘receiver’ conveys known
structure to the skilled person”). No further construction is required.
Therefore, the Court construes “receiver” to have its plain meaning.
“comparator”
CCE has brought forth evidence that “comparator” has known structural meaning in the
relevant art and is therefore not a means-plus-function term. The Wiley Electrical & Electronics
Engineering Dictionary defines “comparator” as “[a] circuit, device, or instrument which
compares quantities.” Wiley Dictionary 129 (2004). CCE’s expert has stated that:
[O]ne skilled in the art would understand that the term “comparator” in the ’872
Patent refers to basic logic circuitry that compares values stored in memory to
determine whether they match (e.g., an “if x = y” statement). Such a comparator
is a basic structural component of an IMS‐capable mobile terminal such as
described and claimed in the ’872 Patent, and is essential to determine whether
values, such as network identifiers, match.
Royer Decl. at ¶ 57
Thus, CCE has adequately demonstrated that “comparator” has known structural meaning
in the relevant art and, as such, is not a means-plus-function term. No further construction is
necessary.
35
The Court construes “comparator” to have its plain meaning.
“connection unit”
In CCE v. HTC, the Court found that the term “designating unit” is a means-plus-function
term. HTC First Markman Order at 30-31. Here, the term “connection unit” also uses the word
“unit” and is analogous to “designating unit” in the previous case. It is true that a preceding
modifier can impart structural meaning to what would otherwise be a non-structural word.
Williamson, 792 F.3d at 1350-51. However, in this case, the word “connection” does not impart
any structural meaning. Plaintiff’s expert opines that “one of ordinary skill in the art would
understand that the term ‘connection unit’ in the claims of the ’872 Patent refers to a structural
component of an IMS‐capable mobile terminal, namely, a SIP client.” Royer Decl. at ¶ 63. This
is not persuasive. The word “connection,” as used here, does not impart any structural meaning
and thus the term “connection unit” is a means-plus-function term governed by 35 U.S.C. § 112,
¶ 6.
For the same reasons set forth above as to the term “connection means for setting up the
emergency call connection,” the corresponding structure for “connection unit” is a mobile
terminal.
“connection unit” is a means-plus-function term governed by 35 U.S.C. § 112, ¶ 6, the
claimed function is “set up an emergency call connection,” and the corresponding structure is
“a mobile terminal, and equivalents thereof.”
CONCLUSION
For the foregoing reasons, the Court hereby ADOPTS the above claim constructions for
the patents-in-suit. For ease of reference, the Court’s claim interpretations are set forth in a table
in Appendix A.
36
So ORDERED and SIGNED this 29th day of March, 2016.
37
APPENDIX A
Terms, Phrases, or Clauses
ʼ8923 “controlling entity”
Court’s Construction
Construed under 35 U.S.C. § 112(f)
Function:
“controlling . . . whether the application
program behaves in a predetermined manner in
the communication terminal”
Structure:
“trusted entity 212, which must be separate
from the diverting unit (in Claim 24) or the
component that performs the diverting step (in
Claim 1)”
ʼ820 “monitoring a usage of a plurality of
buffers”
ʼ820 “network device”
Plain meaning
ʼ786 “self-decodable”
“decodable by itself”
ʼ786 “self decodable rate matching pattern”
“a rate matching pattern that produces selfdecodable information”
ʼ872 “receiving means for receiving a network
identifier of a visited network notified to the
terminal when the terminal is registered in the
visited network”
Construed under 35 U.S.C. § 112(f)
Plain meaning
Function (agreed):
“receiving a network identifier of a visited
network notified to the terminal when the
terminal is registered in the visited network”
Structure:
“a mobile terminal, and equivalents
thereof”
ʼ872 “comparison means for comparing the
received network identifier of the visited
network with a network identifier of a home
network of the terminal”
Construed under 35 U.S.C. § 112(f)
Function (agreed):
“comparing the received network identifier
of the visited network with a network identifier
of a home network of the terminal”
Structure:
“a mobile terminal, and equivalents
thereof”
38
ʼ872 “connection means for setting up the
emergency call connection”
Construed under 35 U.S.C. § 112(f)
Function (agreed):
“setting up an emergency call connection”
Structure:
“a mobile terminal, and equivalents
thereof”
ʼ872 “receiver”
Plain meaning
ʼ872 “comparator”
Plain meaning
ʼ872 “connection unit”
Construed under 35 U.S.C. § 112(f)
Function:
“set up an emergency call connection”
Structure:
“a mobile terminal, and equivalents
thereof”
39
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