Case 3:14-cv-02235-DMS-BLM Document 203 Filed 11/13/17 PageID.7489 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`CASE NO. 14cv2235 DMS (BLM)
`ORDER CONSTRUING CLAIMS
`
`Plaintiff,
`
`APPLE INC.,
`
`vs.
`WI-LAN, INC.,
`
`Defendant.
`_______________________________
`AND ALL RELATED
`COUNTERCLAIMS.
`
`This matter came before the Court for a claim construction hearing on October
`30, 2017. John Allcock and Sean Cunningham appeared and argued on behalf of Apple
`and Allison Goddard, Kevin Schubert, Robert Cote and Seth Hasenour appeared and
`argued on behalf of Wi-LAN. After the matter was submitted, Apple filed a Notice of
`Supplemental Evidence Regarding Claim Construction, to which Wi-LAN filed a
`response. After a thorough review of the parties’ claim construction briefs and all other
`material submitted in connection with the hearing, the Court issues the following order
`construing the disputed terms of the patents at issue in this case.
`I.
`BACKGROUND
`This case is related to another case, involving the same parties, which was
`previously adjudicated by this Court, Wi-LAN v. Apple, Case Number 13cv0798. That
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`case involved two Wi-LAN Patents, United States Patents Numbers 8,311,040 (“the
`‘040 Patent”) and 8,315,640 (“the ‘640 Patent”). The Court construed the claims of the
`‘040 Patent and the ‘640 Patent and then granted summary judgment of
`noninfringement to Apple. After that ruling, the parties stipulated to entry of final
`judgment so that Wi-LAN could appeal. On appeal, Wi-LAN challenged this Court’s
`claim construction ruling, specifically the Court’s constructions of the term “specified
`connection” in the ‘040 Patent and the term “UL connections” in the ‘640 Patent. The
`Federal Circuit affirmed the Court’s constructions and the grant of summary judgment
`of noninfringement to Apple.
`After the Court’s claim construction ruling but before Apple filed its motion for
`summary judgment in the prior case, Apple filed the present case against Wi-LAN in
`the United States District Court for the Northern District of California alleging
`declaratory judgment claims for noninfringement and invalidity of five other Wi-LAN
`Patents, United States Patents Numbers 8,462,723 (“the ‘723 Patent”), 8,615,020 (“the
`‘020 Patent”), 8,457,145 (“the ‘145 Patent”), 8,462,761 (“the ‘761 Patent”) and
`8,537,757 (“the ‘757 Patent”). Apple later filed an amended complaint adding the ‘040
`Patent to the case. Shortly before this Court issued its summary judgment ruling in the
`prior case, the Northern District of California transferred this case to this Court. After
`Wi-LAN filed its appeal, Apple moved to stay this case pending that appeal, which the
`Court granted. After the appeal was decided, the stay was lifted and this case was put
`back on the Court’s calendar.
`Pursuant to Patent Local Rule 4.2.a, the parties have identified eight terms or
`groups of terms for construction in this case:
`(1) “wireless subscriber unit”/ “subscriber unit”/ “subscriber station,” which
`terms appear in the ‘145 Patent, ‘723 Patent, ‘020 Patent, ‘761 Patent and ‘757
`Patent;
`(2) “connections”/ “uplink connections”/ “a plurality of connections served by
`the subscriber unit/connections established at a [or the] subscriber unit [or
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`subscriber station],” which terms appear in the ‘145 Patent, ‘723 Patent, ‘020
`Patent, ‘761 Patent and ‘757 Patent;
`(3) “queue,” which term appears in the ‘145 Patent, the ‘723 Patent, the ‘761
`Patent and the ‘020 Patent;
`(4) “packing sub-header,” which term appears in the ‘040 Patent;
`(5) “frame map”/ “sub-frame map,” which terms appears in the ‘723 Patent, ‘020
`Patent and the ‘757 Patent;
`(6) “poll-me bit”/ “poll-me message,” which terms appear in the ‘020 Patent;
`(7) “fairness algorithm,” which appears in the ‘145 Patent; and
`(8) whether the preamble in Claim 26 of the ‘145 Patent is limiting.1
`II.
`DISCUSSION
`The first four terms and groups of terms were at issue, or are similar to terms that
`were at issue, in the prior case. For that reason, Wi-LAN argues relitigation of these
`terms is barred by the doctrine of issue preclusion. The Court addresses that argument
`first, then turns to the construction of the claim terms and groups of terms.
`A.
`Issue Preclusion
`The term “issue preclusion” encompasses the doctrine once known as “collateral
`estoppel.” Taylor v. Sturgell, 553 U.S. 880, 892 n.5 (2008). “Issue preclusion ... bars
`successive litigation of an issue of fact or law actually litigated and resolved in a valid
`court determination essential to the prior judgment ... .” Id. at 893 (internal quotation
`marks and citations omitted).
`Issue preclusion, of course, is not unique to patent cases. Aspex Eyewear, Inc.
`v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013). Accordingly, the Federal
`Circuit is “guided by the precedent of the regional circuit. However, for any aspects
`/ / /
`
`1 The parties initially requested that the Court also construe the term “QoS,” but
`they have since agreed on the construction of that term.
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`that may have special or unique application to patent cases, Federal Circuit precedent
`is applicable.” Id.
`In the Ninth Circuit, issue preclusion applies when:
`(1) the issue necessarily decided at the previous proceeding is identical to
`the one which is sought to be relitigated; (2) the first proceeding ended
`with a final judgment on the merits; and (3) the party against whom issue
`preclusion is asserted was a party or in privity with a party at the first
`proceeding.
`Paulo v. Holder, 669 F.3d 911, 917 (9th Cir. 2011) (internal quotation marks, citation
`and brackets omitted). The party asserting issue preclusion bears the burden of showing
`these elements are met. Offshore Sportswear v. Vuarnet Int’l, B.V., 114 F.3d 848, 850
`(9th Cir. 1997).
`Wi-LAN has not met that burden here. First, for the first two terms, Wi-LAN has
`not shown the terms at issue here are identical to the terms at issue in the prior case. In
`the prior case, the Court construed the terms “wireless subscriber radio unit,” “wireless
`communication radio unit” and “UL connections.” The terms at issue here are similar,
`“subscriber unit,” “wireless subscriber unit,” “subscriber station,” “connections,”
`“uplink connections,” “a plurality of connections served by the subscriber unit” and
`“connections established at a subscriber unit,” but they are not identical to the terms
`construed in the prior case. Thus, issue preclusion does not apply to the first two
`groups of terms.
`The term “queue” is identical to a term that was at issue in the prior case, but Wi-
`LAN has not shown the parties actually litigated that term. Rather, the parties stipulated
`to the construction of that term in the prior case. Thus, Wi-LAN has not shown this
`term is subject to issue preclusion.
`The final term, “packing sub-header,” was at issue in the prior case and was
`actually litigated. However, Wi-LAN has not shown that term was “necessarily
`decided” in the prior case. Indeed, the term played no part in the Court’s summary
`judgment ruling, judgment thereon and subsequent appeal. Accordingly, “packing sub-
`header” is not subject to issue preclusion either.
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`For these reasons, the Court declines to apply issue preclusion to the above terms.
`
`B.
`
`Claim Construction
`Claim construction is an issue of law, Markman v. Westview Instruments, Inc.,
`517 U.S. 370, 372 (1996), and it begins “with the words of the claim.” Nystrom v.
`TREX Co., Inc., 424 F.3d 1136, 1142 (Fed. Cir. 2005) (citing Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Generally, those words are
`“given their ordinary and customary meaning.” Id. (citing Vitronics, 90 F.3d at 1582).
`This “‘is the meaning that the term would have to a person of ordinary skill in the art
`in question at the time of the invention.’” Id. (quoting Phillips v. AWH Corp., 415 F.3d
`1303, 1313 (Fed. Cir. 2005)). “The person of ordinary skill in the art views the claim
`term in the light of the entire intrinsic record.” Id. Accordingly, the Court must read
`the claims “‘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)). In
`addition, “‘the prosecution history can often inform the meaning of the claim language
`by demonstrating how the inventor understood the invention and whether the inventor
`limited the invention in the course of prosecution, making the claim scope narrower
`than it would otherwise be.’” Id. (quoting Phillips, 415 F.3d at 1318).
`1.
`“Subscriber” Terms
`The first group of terms at issue here are the “subscriber” terms, “wireless
`subscriber unit,” “subscriber unit” and “subscriber station,” which terms appear in the
`‘145 Patent, ‘723 Patent, ‘020 Patent, ‘761 Patent and ‘757 Patent. In each of the
`Patents, the “subscriber” terms are described as part of a method or system of
`allocating, requesting or obtaining bandwidth from a base station. The parties agree
`these terms should be construed consistently across the Patents. Apple proposes they
`be construed as “fixed or portable customer premises equipment that wirelessly receives
`UL bandwidth from a base station, and allocates the bandwidth across connected user
`devices.” Wi-LAN proposes that the terms be construed as a “module that receives UL
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`Case 3:14-cv-02235-DMS-BLM Document 203 Filed 11/13/17 PageID.7494 Page 6 of 14
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`bandwidth from a base station, and allocates the bandwidth across its user connections.”
`As is evident from the parties’ proposals, they agree the subscriber units receive UL
`bandwidth from a base station and allocate that bandwidth elsewhere. The disputes are
`two-fold: (1) Whether the subscriber unit/station should be construed as “fixed or
`portable customer premises equipment” or as a “module,” and (2) whether the
`bandwidth is allocated to “connected user devices” or “user connections.”
`a.
`CPE or Module
`In the prior case, there was a similar issue with respect to the terms “wireless
`subscriber radio unit” and “wireless communication radio unit,” with Apple arguing that
`these units were equivalent to customer premises equipment or CPEs and Wi-LAN
`arguing to the contrary. The Court agreed with Wi-LAN and refused to limit these units
`to CPEs. Wi-LAN argues the Court should adopt that approach here, and for the
`following reasons, the Court agrees.
`First, Wi-LAN did not use the term “CPE” in the patent claims at issue here.
`Rather, the claims recite “subscriber units” or “subscriber stations.” As Apple pointed
`out in its responsive brief, Wi-LAN used the term “CPE” in the claims of two of its
`prior patents. (See Decl. of Peter Maggiore in Supp. of Apple’s Responsive Br., Ex. 1
`at 21; Ex. 2 at 51.2) Its decision not to use that term here counsels against construing
`the “subscriber” terms as CPEs.
`Second, although the specifications are rife with the term “CPE,” the patent
`claims “will not be confined to that example ‘unless the patentee has demonstrated a
`clear intention to limit the claim scope using words or expression of manifest exclusion
`or restriction.’” Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1302 (Fed.
`Cir. 2013) (quoting Liebel Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
`2004)). There is no evidence of that intent here. To the contrary, and as stated above,
`/ / /
`/ / /
`
`2 The page numbers cited reflect the numbers assigned by the parties.
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`the claims recite “subscriber units” and “subscriber stations,” as does the specification.
`(See ‘723 Patent at 1:28-60.)3
`Third, the prosecution history of the ‘723 Patent reveals the Examiner treated the
`“subscriber” terms at issue here as interchangeable with the “subscriber” terms at issue
`in the prior case. (See Index of Exs. in Supp. of Wi-LAN’s Opening Br., Ex. G at 51.)
`There, the Court declined to limit the subscriber terms to CPEs, and for the reasons set
`out there and above, the Court declines to do so here.
`User Devices or User Connections
`b.
`Turning to the second issue, Apple also fails to cite any evidence to support its
`proposed construction of the terms to require the allocation of bandwidth across
`“connected user devices.” The claims themselves do not use this language, but instead
`use the term “connections,” (‘761 Patent at 38:35-37; ‘020 Patent at 38:40-44; ‘723
`Patent at 23:11-13; ‘145 Patent at 32:57-59; ‘757 Patent at 4:33-41), which is
`consistent with Wi-LAN’s proposal.
`For these reasons, the Court adopts Wi-LAN’s proposed construction for the
`“subscriber” terms.
`2.
`“Connections” Terms
`The next group of terms is the “connections” terms, which are “connections,”
`“uplink connections,” “a plurality of connections served by the subscriber unit” and
`“connections established at a [or the] subscriber unit [or subscriber station],” which
`terms appear in the ‘145 Patent, ‘723 Patent, ‘020 Patent, ‘761 Patent and ‘757 Patent.
`As with the “subscriber” terms, the parties agree the “connections” terms should be
`/ / /
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`3 Inherent in Apple’s understanding of a “CPE” is that it is fixed or portable, but
`not mobile. The specification does not limit “subscriber units” or “subscriber stations”
`in that way, however. (See id. at 1:28-38) (“Exemplary communication systems include
`mobile cellular telephone systems, personal communication systems (PCS), and
`cordless telephones.”) Furthermore, the Examiner of the ‘020 Patent read the invention
`claimed therein on prior art that included a “cellular telephone network.” (See Index
`of Exs. in Supp. of Wi-LAN’s Opening Br., Ex. I at 75, Ex. J at 92.) Thus, this
`evidence also refutes Apple’s proposal to construe the “subscriber terms” as CPEs.
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`construed consistently across the Patents. Apple proposes the terms be construed as
`“wired or wireless connections between the subscriber station and its connected user
`devices,” while Wi-LAN proposes the terms be construed as “connections between the
`subscriber unit and its users.”
`Although the common term here is “connections,” the real dispute centers on the
`meaning of “users.” Consistent with its argument on the “subscriber” terms, Apple
`argues “users” must be separate user devices, while Wi-LAN urges a broader meaning.
`This dispute is similar to one raised in the prior case, namely whether the “connections”
`identified in the Patents can be included in one device or must be in different devices.
`In the prior case, the Court found the “connections” did not have to be in different
`devices, i.e., that there could be multiple “connections” in one device. Apple attempts
`to move the Court away from its prior construction, but the intrinsic evidence it cites
`is not persuasive.4
`Based on the specification, the Court agrees with Wi-LAN’s proposed
`construction of the “connection” terms. Although the specification describes “users”
`to “include both residential and business customers,” (‘723 Patent at 2:10-12), it also
`recites “user applications.” (Id. at 6:63-67.) The specification also goes on to describe
`different types of “connections,” e.g., VBR connections and DAMA connections, (id.
`at 20:6-8), which suggests the “users” are not confined to “user devices.” For these
`reasons, the Court adopts Wi-LAN’s proposed construction of the “connections” terms.
`3.
`“Queue”
`The next term is “queue,” which appears in the ‘145 Patent, the ‘723 Patent, the
`‘761 Patent and the ‘020 Patent. Apple proposes the Court construe the term as
`/ / /
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`4 Apple’s reliance on the Federal Circuit’s opinion in the prior case as support
`for its proposed construction of the “connections” terms, which reliance was first
`disclosed at the Markman hearing, is also unpersuasive. The issue here, whether the
`“connections” are between the subscriber station and “users” or “user devices,” was not
`before the Federal Circuit. Thus, any reference to “user devices” in that opinion is
`neither helpful nor determinative of the issue here.
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`“buffer(s), each associated with a unique QoS, containing data to be transmitted.”5 Wi-
`LAN proposes the term be construed as “structure(s) containing data to be transmitted.”
`The term “queue” was at issue in the prior case, and the parties agreed it should
`be construed as “structure(s) containing data to be transmitted.” Apple argues for a
`different construction in this case, but the intrinsic evidence it relies on does not support
`its proposed construction. On the contrary, the intrinsic evidence supports Wi-LAN’s
`proposed construction. For instance, Claim 1 of the ‘723 Patent describes a “queue,”
`and then modifies it with the phrase “based on the quality of service (QoS) of the data.”
`(Id. at 23:11-13.) Apple’s proposed construction would make that modifier redundant.
`Thus, the Court adopts Wi-LAN’s proposed construction of “queue.”
`4.
`“Packing Sub-Header”
`The next term is “packing sub-header,” which appears in the ‘040 Patent. Apple
`proposes the Court construe this term as “a header located in a PDU payload.” Wi-
`LAN proposes the term be construed as it was in the prior case as “a header located in
`a PDU.”
`Although issue preclusion does not bar relitigation of the construction of this
`term, the Court is not persuaded that its prior construction is incorrect. The Court
`thoroughly considered this issue in the prior case, and stands on that construction for
`the reasons set out there and because Apple presents no new evidence to warrant a
`departure from the prior construction. Thus, the Court adopts Wi-LAN’s proposed
`construction of this term.
`5.
`“Frame Map/Sub-Frame Map”
`The next two terms are “frame map” and “sub-frame map,” which appear in the
`‘723 Patent, the ‘020 Patent and the ‘757 Patent. Apple proposes these terms be
`construed as “a single data structure that allocates physical slots for bandwidth grants
`
`5 On the Friday before the Markman hearing, the parties submitted an Amended
`Joint Claim Construction Statement, Chart and Worksheet. In that pleading, the parties
`informed the Court they had agreed on the construction of “QoS,” and Apple amended
`its proposed constructions of three terms: “queue,” frame/sub-frame map and poll-me
`bit/message. The proposals cited here are the amended proposals.
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`to individual subscriber stations, and that contain all UL or DL bandwidth grants for an
`entire [frame/sub-frame].” Wi-LAN proposes the terms be construed as “control
`information indicating the bandwidth allocated to a subscriber unit(s) in the uplink or
`downlink communications link within a frame.”
`The specification supports both sides’ proposals, namely that the frame/sub-
`frame maps may both allocate bandwidth (Apple) and indicate bandwidth allocations
`(Wi-LAN). (Compare ‘723 Patent at 4:12-23, 9:27-29, 10:4-6, 12:9-13, 21-24, 15:7-9,
`13-15, 30-41, 16:56-59, 17:14-15, 63-18:2, 19:23-29, 22:37-38 (stating frame/sub-
`frame maps allocate bandwidth) with 13:58-60, 14:25-27 (stating frame/sub-frame maps
`“communicate” and “indicate” bandwidth allocations.) However, neither side’s
`proposal allows for both of those possibilities. Because each side places a limitation
`on the terms that is not supported by the specification, the Court declines to adopt either
`proposal. Rather, the Court finds each proposal includes some concepts that should be
`included in the proper construction of the terms. Thus, the Court construes frame/sub-
`frame maps as “data structures that may allocate bandwidth to subscriber station(s) and
`indicate the bandwidth allocated to subscriber unit(s) within a particular frame/sub-
`frame.”
`6.
`“Poll-Me Bit/Poll-Me Message”
`The next two terms are “poll-me bit” and “poll-me message,” which terms are
`found in the ‘020 Patent. Apple proposes these terms be construed as “[a bit/bits] in a
`MAC packet utilized to indicate to the base station that the subscriber station requires
`a change in UL bandwidth allocation.” Wi-LAN proposes the terms be construed as “a
`bit sent by a currently active subscriber unit, that currently has bandwidth allocations,
`indicating a request to be provided an allocation of UL bandwidth in which to transmit
`a bandwidth request.”
`Of these two proposals, Wi-LAN’s is more consistent with the specification. The
`specification confirms that “poll-me bits” and “poll-me messages” must come from
`“currently active” users, and “currently active” users are users that already have
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`bandwidth allocations. (See ‘020 Patent at 11:15-26, 11:45-29, 13:7-14, 19:45-48,
`37:41-44.) The specification also makes clear that the purpose of the “poll-me bits” and
`“poll-me messages” is to request bandwidth from the base station.
`Apple’s proposed construction includes a limitation that is not supported by the
`specification, namely that the bit be utilized in a MAC packet. Apple’s proposed
`construction also states the purpose of the “poll-me bits” and “poll-me messages” is to
`“indicate to the base station that the subscriber station requires a change in bandwidth
`allocation,” which is not exactly accurate. The purpose of these bits and messages is
`to request bandwidth from the base station, not to indicate a change in bandwidth
`allocation. Wi-LAN’s terminology is more consistent with the specification, and thus
`the Court adopts Wi-LAN’s proposed construction of these terms.
`7.
`“Fairness Algorithm”
`The last true term at issue is “fairness algorithm,” which appears in the ‘145
`Patent. Apple proposes this term be construed as “a QoS algorithm to prioritize the
`transmission of user data of one connection over that of at least one other connection.”
`Wi-LAN proposes the term be construed as a “QoS algorithm to ensure fair handling
`of the queued data.”
`Between these two proposals, Wi-LAN’s is more consistent with the
`specification. As stated therein, the purpose of the “fairness algorithm” is “to ensure
`fair handling of the data queued at” a QoS when “there is insufficient bandwidth to
`transmit all queued data during the current TDD frame.” (‘145 Patent at 22:65-23:3,
`57-67.) Apple’s proposed construction reads the “fairness” requirement out of the
`algorithm and replaces it with prioritization, but simple prioritization does not ensure
`fairness. Indeed, the process of prioritization, untethered to the concept of fairness,
`could result in one connection always receiving bandwidth while others go without.
`This is precisely the situation sought to be avoided by the use of “fairness algorithms,”
`and thus, prioritization is not an accurate descriptor.
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`Furthermore, the specification provides an example of a fairness algorithm that
`does not involve any prioritization. (See id. at 23:3-12.) In that algorithm, Continuous
`Grant, “[a]ll data in the[ ] queues must be sent every TDD frame.” (Id. at 10-11.)
`The claims and the specification both read in terms of “fairness,” not
`prioritization. Because’s Wi-LAN’s proposal is the only one that reflects that concept,
`the Court adopts Wi-LAN’s proposed construction of this term.
`8.
`Preamble
`The final issue for the Court to decide is whether the preamble of Claim 26 of the
`‘145 Patent is limiting. Apple asserts it is while Wi-LAN states it is not.
`“‘Whether to treat a preamble as a limitation is a determination resolved only on
`review of the entire[ ] . . . patent to gain an understanding of what the inventors actually
`invented and intended to encompass by the claim.’” Poly-Am., L.P. v. GSE Lining
`Tech., Inc., 383 F.3d 1303, 1309 (Fed. Cir. 2004) (quoting Corning Glass Works v.
`Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). There is no litmus
`test for determining when a preamble limits the invention. Id.; Catalina Mktg. Int’l,
`Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). There are, however,
`some guidelines.
`“‘Generally, the preamble does not limit the claims.’” Georgetown Rail Equip.
`Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017) (quoting Allen Eng’g Corp.
`v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002)).
`However, a preamble may be limiting if: “it recites essential structure or
`steps”; claims “depend[] on a particular disputed preamble phrase for
`antecedent basis”; the preamble “is essential to understand limitations or
`terms in the claim body”; the preamble “recit[es] additional structure or
`steps underscored as important by the specification”; or there was “clear
`reliance on the preamble during prosecution to distinguish the claimed
`invention from the prior art.”
`Id. (quoting Catalina Mktg., 289 F.3d at 808). In contrast, the preamble does not limit
`the claims when the “‘patentee defines a structurally complete invention in the claim
`body and uses the preamble only to state a purpose or intended use for the invention.’”
`Poly-Am., 383 F.3d at 1310 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
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`Case 3:14-cv-02235-DMS-BLM Document 203 Filed 11/13/17 PageID.7501 Page 13 of 14
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`1997)). “‘[P]reamble language merely extolling benefits or features of the claimed
`invention does not limit the claim scope without clear reliance on those benefits or
`features as patentably significant.’” Georgetown Rail, 867 F.3d at 1236 (quoting
`Catalina Mktg., 289 F.3d at 809).
`Here, Claim 26 of the ‘145 Patent recites:
`A subscriber unit for a wireless communication system, comprising:
`a plurality of queues for buffering user traffic according to a traffic
`parameter, each queue having an associated logical state;
`a media access control (MAC) element capable of
`transmitting an uplink (UL) bandwidth request based on the
`logical state of the queues during a bandwidth request
`opportunity, and
`allocating between the queues a bandwidth allocation
`received in response to the UL bandwidth request, based on
`the current state of the queues.
`
`Apple asserts the preamble is limiting because the body of the claim does not recite a
`structurally complete invention. Wi-LAN relies on the general rule that preambles are
`not limiting, and argues the preamble “merely names” the limitations set out in the body
`of the claim and sets out the intended use of the invention.
`The Court agrees with Apple that the preamble is limiting for several reasons.
`First, the body of the claim does not recite a complete structure without the preamble.
`It is clear from the Patent as a whole that a subscriber unit is a critical part of the
`invention, and without that limitation, the body of the claim has no context. Second,
`the preamble does not “merely name” the limitations set out in the body of the claim.
`Rather, as stated above, it provides context for the limitations, or an “essential
`structure” for those elements. And finally, the preamble does not recite an intended use
`for the invention. It is a part of the invention, not just a use therefor. Thus, for these
`reasons, the Court finds the preamble of Claim 26 of the ‘145 Patent is limiting.
`/ / /
`/ / /
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`Case 3:14-cv-02235-DMS-BLM Document 203 Filed 11/13/17 PageID.7502 Page 14 of 14
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`III.
`CONCLUSION
`For the reasons stated above, the disputed terms are interpreted as set forth in this
`Order.
`IT IS SO ORDERED.
`DATED: November 13, 2017
`
`HON. DANA M. SABRAW
`United States District Judge
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