Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 1 of 18 PageID #: 6551
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`APPLE, INC.,
`
`Defendant.
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`HTC CORPORATION and
`HTC AMERICA, INC.,
`
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`LENOVO GROUP LTD.
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY
`
`Defendants.
`
`)
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`) Civ. No. 15-542-SLR
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`) Civ. No. 15-543-SLR
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`) Civ. No. 15-544-SLR
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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 2 of 18 PageID #: 6552
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`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.
`and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`ZTE CORPORATION, ZTE (USA) INC.,
`and ZTE SOLUTIONS INC.
`
`Defendants.
`
`EVOLVED WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY and
`NOKIA INC.,
`
`Defendants.
`
`)
`)
`)
`)
`) Civ. No. 15-545-SLR
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`)
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`) Civ. No. 15-546-SLR
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`) Civ. No. 15-547-SLR
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`MEMORANDUM ORDER
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`At Wilmington this \i.\-\t"day of November, 2016, having heard argument on, and
`
`having reviewed the papers submitted in connection with, the parties' proposed claim
`
`construction;
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`2
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 3 of 18 PageID #: 6553
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`IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 7,746,916
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`("the '916 patent"); 7,768,965 ("the '965 patent"); 7,809,373 ("the '373 patent");
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`7,881,236 ("the '236 patent"); and 8,218,481 ("the '481 patent") shall be construed
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`consistent with the tenets of claim construction set forth by the United States Court of
`
`Appeals forthe Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005),
`
`as follows:
`
`The '916 Patent
`
`1. A code sequence generator for generating a code sequence having a
`
`second length by cyclic extension of a code sequence having a first length, and
`
`performing a circular shift to the code sequence having the second length: 1
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`"Hardware and/or software in the apparatus that is capable of generating a code
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`sequence having a second length by cyclic extension of a code sequence having a first
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`length, and performing a circular shift to the code sequence having the second length."
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`Structure is identified in the specification as a "basic code sequence generation unit ·
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`1 Found in claim 6 of the '916 patent.
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`3
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 4 of 18 PageID #: 6554
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`1701."2 ('916 patent, 15:36-16:7) Defendants failed to shift the§ 112, 1J 6 burden to
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`plaintiff.3 (See D.I. 73 at 4) Section 112, 1J 6 does not apply. 4 Not indefinite. 5
`
`2 In addition to the structure identified in the specification, plaintiff's expert, Dr. Cooklev,
`demonstrated that a person having ordinary skill in the art would identify structure in the
`specification. (D.I. 66at1J 72-74)
`3 When a claim uses the word "means," the presumption is that§ 112, 1J 6 applies.
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Generic terms
`may be used "in a manner that is tantamount to using the word 'means' because they
`'typically do not connote sufficiently definite structure."' Id. at 1350 (citations omitted).
`Defendants argued that the present term is one of "[e]leven claim limitations [that]
`require construction as means-plus-function terms under§ 112, 1J 6 because each
`recites one of five nonce words-· module, generator, unit, entity, and protocol." (D.I. 73
`at 1) (citing Williamson) ·The cited text in Williamson does not support this proposition
`with respect to the terms "generator,". "entity," "unit," and "protocol." Moreover,
`Williamson articulated a two-part test, applying § 112, 1J 6 to the term "distributed
`learning control module," because the court determined that: "module" was a "well(cid:173)
`known nonce word that can operate as a substituted for 'means,"' and the "distributed
`learning control" prefix did not "provide any indication of structure." Williamson, 792
`F.3d at 1350-51. An outcome of this two-part test is that the alleged "nonce word" is
`interpreted to be equivalent to the term "means," which "creates a presumption that§
`112, 1J 6 applies," thereby shifting the burden to the patentee. Id. at 1349. Defendants
`did not address the second part of the Williamson test; therefore, the burden has not
`shifted, and the presumption is that§ 112, 1J 6 does not apply. (See D.I. 73 at 4-9)
`4 In order to rebut the presumption that § 112, 1J 6 does not apply, defendants carry the
`burden to demonstrate "that the claim term fails to 'recite sufficiently definite structure'
`or else recites 'function without reciting sufficient structure for performing that function."'
`Williamson, 792 F.3d at 1349. Defendants failed to rebut the presumption.
`5 Defendants argued that the specification does not disclose how to generate a code
`sequence. (D.I. 73 at 10) A person with "a bachelor's degree in electrical engineering
`[and] 2-3 years of experience in cellular communication systems and [who] would have
`been aware of the Third Generation Partnership Project ("3GPP") and its work o'n the
`L TE standard" would know how to generate a code sequence. (See D.I. 66at1J 23)
`Defendants also argued that "the claimed functions of generating a code sequence and
`performing a circular shift are not clearly linked to any sort of code sequence generator."
`(D.I. 73 at 11) The Patent Act,§ 112, 1J 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." Nautilus, Inc. v. Biosig Instruments,
`Inc.,_ U.S._, 134 S.Ct. 2120, 2129 (2014). Here, claim 6 includes several
`limitations that, with reasonable certainty, inform those skilled in the art about the scope
`of the invention. (See D.I. 85 at 11-12)
`
`4
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`

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`2. A transmitting unit for transmitting the circular shifted code sequence
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`having the second length:6 "Hardware and/or software in the apparatus that is
`
`capable of transmitting the circular shifted code sequence having the second length."
`Defendants failed to shift the§ 112, 1J 6 burden to plaintiff.7 Section 112, 1J 6 does not
`apply. 8 Not indefinite. 9 Structure is identified in the specification with reference to figure
`
`16. ('916 patent, 15:6-21; fig. 6, item 1603)
`
`The '965 Patent
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`3. A sequence selecting module acquiring information about
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`predetermined two or more random access preamble sequence sets, selecting
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`one random access preamble sequence set from among the predetermined
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`random access preamble sequence sets considering at least one of a size of
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`information to be transmitted by the apparatus and a degree of a path loss, and
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`randomly selecting a specific sequence within the selected random access
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`sequence set: 10 "Hardware and/or software in the user equipment that is capable of
`
`performing the following algorithm: acquire information about predetermined two or
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`more random access preamble sequence sets, select one random access preamble
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`sequence set from among the predetermined random access preamble sequence sets
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`considering at least one of a size of information to be transmitted by the apparatus and
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`a degree of a path loss, and randomly select a specific sequence within the selected
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`6 Found in claim 6 of the '916 patent.
`7 See supra note 3.
`a See supra note 4.
`9 Defendants presented no evidence as to how or why the claims of the '916 patent,
`"viewed in light of the specification and prosecution history, [would fail to] inform those
`skilled in the art about the scope of the invention with reasonable certainty." Nautilus,
`134 S.Ct. at 2129.
`1° Found in claim 8 of the '965 patent.
`
`5
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 6 of 18 PageID #: 6556
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`random access sequence set." Structure is identified in the specification with reference
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`to figure 16. ('965 patent, 19:6-30, fig. 16, item 1101) Defendants failed to shift the
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`§ 112, ~ 6 burden to plaintiff. 11 Section 112, ~ 6 does not apply. 12 Not indefinite. 13·14 .
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`4. An access module accessing a random access channel using the
`
`specific sequence selected by the sequence selecting module: 15 "Hardware and/or
`
`software in the user equipment that is capable of transmitting the specific selected
`
`sequence on the random access channel to the base station." Structure is identified in
`
`11 See supra note 3.
`12 See supra note 4.
`13 Defendants argued that the specification does not disclose sufficient structure or
`algorithm under§ 112, ~ 6, but defendants did not address the criteria identified in
`Nautilus; therefore, the court adopts plaintiff's construction. (D.I. 73 at 12)
`14 Defendants argued that numerous claims are indefinite for improperly mixing system
`claims and method steps. (D. I. 73 at 19) The accused claims are claim 8 of the '965 .
`patent; claims 7-10 and 12-13 of the '236 patent; and claim 24 of the '373 patent. (D.I.
`73 at 19-20) These claims are not indefinite, because IPXL and Rembrandt do not
`apply. For example, defendants argued that "a sequence selecting module" and "an
`access module" in claim 8 of the '965 patent mix method steps in a system claim. (D.I.
`73 at 19) A claim is indefinite under§ 112, ~ 2 if it "recites a system and the method for
`using that system." IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384
`(Fed. Cir. 2005); see also Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331,
`1339 (Fed. Cir. 2011). In IPXL, the claim recited both "[t]he system" and "the user uses
`the input means." IPXL, 430 F.3d at 1384. In Rembrandt, the claim claimed "a data
`transmitting device ... comprising: first buffer means ... fractional encoding means ...
`second buffer means· ... and transmitting the trellis encoded frames." Rembrandt,
`641 F.3d at 1339 (emphasis added). Here, claim 8 of the '965 patent recites the
`"sequence selecting module acquiring information ... [and] selecting one random
`access preamble sequence." ('965 patent, claim 8) (emphasis added) Claim 8 also
`recites "an access module accessing a random access channel." (Id.) (emphasis
`added) This is functional language, but it is not an improper combination of system and
`method claims as in either IPXL or Rembrandt.
`15 Found in claim 8 of the '965 patent.
`
`6
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 7 of 18 PageID #: 6557
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`the specification. ('965 patent, 19:6-37, fig. 16, item 1102) Defendants failed to shift .
`
`the § 112, 116 burden to plaintiff. 16 Section 112, 116 does not apply. 17 Not indefinite. 18•19
`
`The '373 Patent
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`5. Handover:20 "Transfer of a terminal's connection with a source base station
`
`to a target base station." The court adopts defendants' proposal. The specification
`
`discusses "handover" extensively but does not define the term; therefore, the plain and
`
`ordinary meaning applies.21 Plaintiff argued that a handover in the patent is a "hard
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`handover" and that the term should be construed as
`
`a process to transfer a telecommunication link by establishing radio
`connection with the target base station after radio connection with the
`source base station has ceased.
`
`(D.I. 60 at 14-18) (emphasis added) In support of this construction, plaintiff cited to the
`
`prosecution history and to figure 9, which "shows an exemplary diagram for transmitting
`
`and receiving radio connection information according to an exemplary embodiment of
`
`the present invention." ('373 patent, 6:6-8) The language in the specification with
`
`reference to figure 9 does not limit the scope of the patent to so-called "hard
`
`handovers."22 The prosecution history shows that the applicant amended claim 1 to
`
`16 See supra note 3.
`17 See supra note 4.
`18 Defendants argued that the disclosed structure in the specification is insufficient to
`perform the function ascribed to it. (D. I. 73 at 13) In support, defendants presented
`attorney argument couched in conclusory expert statements. (D.I. 74at111187-101) For
`these reasons, the court adopts plaintiff's construction.
`19 See supra note 14.
`2° Found in claims 1, 4, 7, 8, 13, 15, 17, and 23-24 of the '373 patent.
`21 See, e.g., D.I. 75, ex. 3 at 3.
`22 The specification does not employ any terms such as: "hard" handovers, "soft"
`handovers, "make-before-break," or "break-before-make." The claims are not limited to
`hard handovers.
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`7
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 8 of 18 PageID #: 6558
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`overcome the Samuel reference and argued that "Samuel relates to a method for soft
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`vertical handovers,"23 but the prosecution history does not contain a statement about
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`the application that could, today, be interpreted as limiting with respect to hard
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`hand overs. (See JA-1325) Moreover, in making their arguments, both parties
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`employed adjectives (e.g., "soft," "hard," "make-before-break," and "break-before-
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`-make") to describe the term "handover." This alone supports a plain and ordinary
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`meaning that is broader than the construction proposed by plaintiff. For these reasons,
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`the court adopts defendants' construction.
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`6. Target base station:24 "The source base station determines that the mobile
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`terminal will be transferred to the target base station." The court adopts plaintiff's
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`proposal. 25 This construction is supported by the specification and the claims. ('373
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`patent, 5:15-17; 6:58-63; 6:19-23) The parties disagreed on whether the mobile
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`23 See U.S. Patent No 7,843,882 (filed Aug. 23, 2004) (entitled "Soft Vertical Handovers
`in Wireless Networks.").
`24 Found in claims 1, 3, 8, 15, 18, 20, and 23-25 of the '373 patent.
`25 Defendants proposed that, "target base station means base station to which a
`terminal's connection may be transferred." (D.I. 54, ex. A at 7) (emphasis added)
`(internal quotation marks omitted) In support, defendants asserted that the IEEE
`802.16e "Wireless MAN" draft specification provided the plain and ordinary meaning of
`"target base station" at the time of filing. (D.I. 73 at 29; D.I. 75, ex. 2 at 7) Defendants
`predicated their argument on a statement in the specification that
`the present invention is also applicable to other wireless communication
`systems using different air interfaces and/or physical layers, for example,
`TOMA, CDMA, FDMA, WCDMA, OFDM, EV-DO, Mobile Wi-Max, Wi-Bro, etc.
`('373 patent, 9:20-24) (emphasis added) The court disagrees. The majority of these
`terms refer specifically to air interfaces and physical layers (e.g., TOMA, CDMA, FDMA,
`WCDMA, and OFDM), and the remaining terms refer to systems (EV-DO, Mobile Wi(cid:173)
`Max, and Wi-Bro) that define physical layer and air interface standards. The
`specification does not incorporate these standards by reference; therefore, there is no
`reason to read limitations from these standards into the claim language. Moreover, the
`Mobile Wi-Max definition discusses the mobile terminal intending to transfer the
`connection to a target base station, which is a wholly different architecture than that
`discussed in either the specification or defendants' proposed construction.
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`8
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`

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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 9 of 18 PageID #: 6559
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`terminal "may" be transferred to the target base station or the mobile terminal "will" be
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`transferred to the target base station. (D.I. 54, ex. A at 7) The source base station uses
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`the measurement report to identify the target base station from among various
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`neighboring cells.26 ('373 patent, 6: 19-23) Next, the source base station "transmit[s] a
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`handover request to the target" base station. ('373 patent, 6:26) "If the target [base
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`station] allows the handover to be performed ... the target [base station] may transmit a
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`handover confirm message to the source [base station]." ('373 patent, 6:30-33) The
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`target base station passes access information to the source base station, which
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`includes a dedicated preamble for a specific terminal to use in a random access
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`procedure. ('373 patent, 10:5-18) The specification does not discuss what happens if
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`the handover does not occur, nor does the specification discuss alternative types of
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`handovers.27 Once the source base station identifies the target base station, and the
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`target base station sends the handover confirm message, the last communication
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`between the source base station and the mobile terminal is the sending of the handover
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`command. ('373 patent, 6:66-7:11; fig. 9, step S14) From that point forward, the mobile
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`terminal communicates directly with the target base station to establish a connection.
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`('373 patent, 7:8-54) For these reasons, the source base station determines that the
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`mobile terminal will be transferred to the target base station.
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`26 "[T]he UE (or terminal) (10) may transmit a measurement report to the source [base
`station] (12) by measuring a condition of a downlink physical channel for other cells."
`('373 patent, 6:9-12)
`27 Defendants' proposed language would apply to any nearby cells, because the mobile
`terminal may be transferred to any of these neighboring cells. The specification
`distinguishes the target base station from this larger group: "the measurement report
`includes a downlink physical channel condition for multiple cells including the cell of the
`target base station." ('373 patent, 8:2-4)
`
`9
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`

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`7. The measurement report is used to determine:28 "The measurement
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`report is used by the source base station to determine." The court adopts plaintiff's
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`proposal. Defendants proposed that no construction is necessary, and argued that
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`plaintiff "improperly inserts the words 'by the source base station' into this claim
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`limitation." (D.I. 54, ex. A at 7) Claim 17 depends on claim 16, which recites:
`
`The method of claim 15, further comprising:
`transmitting a measurement report to the source base station by
`measuring a condition of a downlink physical channel for other cells,
`the measuring performed periodically or upon an occurrence of an
`event.
`
`('373 patent, 11 :16-20) (emphasis added) The measurement report is transmitted to the
`
`source base station. Claim 17 recites:
`
`The method of claim 16, wherein the measurement report is used to
`determine whether to perform a handover from a current cell to one of the
`other cells.
`
`('373 patent, 11 :21-23) Claim 17 incorporates the language of claim 16, which provides
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`antecedent basis for the "measurement report" employed in the limitation of claim 17.
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`Defendants argued that it is improper for plaintiff to introduce this language into the
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`construction, because it involves reading a limitation from the specification. Here, the
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`limitation that plaintiff seeks to introduce into the construction comes from the language
`
`of the claim itself.
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`8. A radio protocol adapted to receive access information from a source
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`base station after a handover request is accepted by the target base station and
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`to perform a random access procedure with the target base station using the
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`received access information, such that the access information is configured to
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`permit the terminal to access the target base station: 29 "Hardware and/or software
`
`28 Found in claim 17 of the '373 patent.
`29 Found in claim 24 of the '373 patent.
`
`10
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`in the mobile terminal adapted to receive access information from a source base station
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`after a handover request is accepted by the target base station and to perform a
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`random access procedure with the target base station using the received access
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`information, such that the access information is configured to permit the terminal to
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`access the target base station, wherein the access information includes preamble
`
`information for the random access procedure, wherein the preamble information is a
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`dedicated preamble used only for a specific terminal, and wherein the dedicated
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`preamble is determined by the target base station." The structure is found in the
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`specification with reference to "radio protocol" and "radio interface protocol" and in
`
`'
`figure 7. ('373 patent, 1 :46-2:24; 3:54-4:65; figs. 2-5, 7-9) Defendants failed to shift the
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`§ 112, ,-i 6 burden to plaintiff. 30 Section 112, ,-i 6 does not apply. 31 Not indefinite.32
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`9. Wherein the dedicated preamble is determined by the target base
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`station: 33 Not indefinite. 34 This conclusion is supported by the specification. ('373
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`patent, 12: 10-25) The claim provides antecedent basis for "dedicated preamble" and
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`"target base station." (Id.) Elsewhere in the specification, the target base station
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`passes information including a preamble to the mobile terminal:
`
`[T]he target eNB (14) may transmit a handover confirm message to the
`source eNB (12) (S13). The handover confirm message may include
`information that may be necessary in the course of connecting the UE (10)
`to the target cell. Namely, the necessary information may include
`information used in the RACH which is used for performing a radio access
`procedure from the UE to the target eNB. For example, when the RACH
`is being used while the UE accesses to the target eNB, the UE may utilize
`a preamble which is selected from signatures contained in the UE.
`
`30 See supra note 3.
`31 See supra note 4.
`32 See supra notes 13-14.
`33 Found in claim 24 of the '373 patent.
`34 See supra note 14.
`
`11
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`('373 patent, 6:32-41) Also, the preamble may be unique to a given mobile terminal,
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`because the "target eNB (14) may receive the preamble of the UE. Since the target
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`eNB (14) already allocates a signature used in the preamble to the UE in the use of
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`handover, the UE can be identified by the preamble." ('373 patent, 7:30-33)
`
`10. An Evolved Universal Mobile Telecommunication System (E-UMTS):35
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`Not indefinite. 36
`
`The '236 Patent
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`11. A reception module adapted to receive an uplink grant (UL Grant)
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`signal from a base station on a specific message:37 "Hardware and/or software in
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`the user equipment that is capable of receiving an uplink grant signal from a base
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`station on a specific message." The structure is found in the specification with
`
`reference to figure 11. ('236patent,15:44-16:36; fig.11, item 1101) Defendants failed
`
`35 Found in claim 25 of the '373 patent.
`36 A person having ordinary skill in the art would have been aware of 3GPP activities,
`the UMTS specification, and work on the L TE standard. (D.I. 66 at 8) Defendants'
`exhibit shows that as early as 2005, the 3GPP System Architecture Evolution: Report
`o.n Technical Options and Conclusions ("Evolution Report") document was littered with a
`discussion of network evolution. For example, "[t]he objective of this feasibility study is
`to develop a framework for an evolution or migration of the 3GPP system." (D.I. 75,
`ex. 1 at 9) (emphasis added) The Evolution Report employed terms such as "E-UTRA,"
`which stands for "evolved universal terrestrial radio access." Other terms in the
`Evolution Report include "Evolved RAN," "Evolved Packet Core," "evolutions of Gr and
`Gp," "Evolved VPLMN," "evolved HPLMN," "evolved Policy," "evolved/extended Gx,"
`. "evolved access system," "evolved core network," "evolved PDG," "Evolved
`Architecture," and so forth. (See generally, D.I. 75, ex. 1) A person having ordinary skill
`in the art would understand the scope of "[a]n Evolved Universal Mobile
`Telecommunication System (E-UMTS)" in claim 25 to mean a network system
`employing an evolution of the UMTS standard.
`37 Found in claim 7 of the '236 patent.
`
`12
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`to shift the § 112, 1f 6 burden to plaintiff. 38 Section 112, 1f 6 does not apply. 39 Not
`
`indefinite.40
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`12. A transmission module adapted to transmit data to the base station
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`using the UL Grant signal received on the specific message:41 "Hardware and/or
`
`software in the user equipment that is capable of transmitting data to the base station
`
`using the UL Grant signal received on the specific message." The structure is found in
`
`the specification with reference to figure 11. ('236 patent, 15:44-16:36; fig. 11, item
`1102) Defendants failed to shift the § 112, 1f 6 burden to plaintiff.42 Section 112, 1f 6
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`does not apply. 43 Not indefinite. 44
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`13. A Hybrid Automatic Repeat Request (HARQ) entity adapted to
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`determine Whether there is data stored in the Msg3 buffer when the reception
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`module receives the UL Grant signal and the specific message is a random
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`access response message, acquiring the data stored in the Msg3 buffer if there is
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`data stored in the Msg3 buffer when the reception module receives the UL Grant
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`signal and the specific message is the random access response message, and
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`controlling the transmission module to transmit the data stored in the Msg3
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`buffer to the base station using the UL Grant signal received by the reception
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`module on the specific message:45 "Hardware and/or software in the user equipment
`
`38 See supra note 3.
`39 See supra note 4.
`40 See supra note 13.
`41 Found in claim 7 of the '236 patent.
`42 See supra note 3.
`43 See supra note 4.
`44 As above with "reception module," the court adopts plaintiff's construction.
`45 Found in claim 7 of the '236 patent.
`
`13
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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 14 of 18 PageID #: 6564
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`that is capable of determining whether there is data stored in the Msg3 buffer when the
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`reception module receives the UL Grant signal and the specific message is a random
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`access response message, acquiring the data stored in the Msg3 buffer if there is data
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`stored in the Msg3 buffer when the reception module receives the UL Grant signal and
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`the specific message is the random access response message, and controlling the
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`transmission module to transmit the data stored in the Msg3 buffer to the base station
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`using the UL Grant signal received by the reception module on the specific message."
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`This construction is supported by the specification and the claims. ('236 patent, 13:35-
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`14: 17; 15:50-16:36; fig. 9; fig. 11, item 1104) Defendants failed to shift the§ 112, ~ 6
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`burden to plaintiff. 46 Section 112, ~ 6 does not apply. 47 Not indefinite.48
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`14. A multiplexing and assembly entity used for transmission of new
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`data:49 "Hardware and/or software in the user equipment that is capable of transmitting
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`new data." This construction is supported by the specification and the claims. ('236
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`patent, 14: 12-17; 15:52-16:36; fig. 10, block 7; fig. 11, item 1105) Defendants failed to
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`shift the§ 112, ~ 6 burden to plaintiff. 50 Section 112, ~ 6 does not apply. 51 Not
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`indefinite. 52
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`15. Wherein the HARQ entity acquires the new data to be transmitted from
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`the multiplexing and assembly entity if there is no data stored in the Msg3 buffer
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`when the reception module receives the UL Grant signal on the specific message
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`46 See supra note 3.
`47 See supra note 4.
`48 See supra notes 13-14.
`49 Found in claim 7 of the '236 patent.
`50 See supra note 3.
`51 See supra note 4.
`52 See supra notes 13-14.
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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 15 of 18 PageID #: 6565
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`or the received message is not the random access response message, and
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`controls the transmission module to transmit the new data acquired from the
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`multiplexing and assembly entity using the UL Grant signal received by the
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`reception module on the specific message.53 Wherein the HARQ entity transfers
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`the data acquired from the multiplexing and assembly entity or the Msg3 buffer to
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`a specific HARQ process of the one or more HARQ processes and controls the
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`specific HARQ process to transmit the data acquired from the multiplexing and
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`assembly entity or the Msg3 buffer through the transmission module.54 Wherein,
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`when the specific HARQ process transmits the data stored in the Msg3 buffer
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`through the transmission module, the data stored in the Msg3 buffer is controlled
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`to be copied into a specific HARQ buffer corresponding to the specific HARQ
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`process, and the data copied into the specific HARQ buffer is controlled to be
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`transmitted through the transmission module.55 Wherein the UL Grant signal
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`received by the reception module on the specific message is a UL Grant signal
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`received on a Physical Downlink Control Channel (PDCCH).56 Wherein the HARQ
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`entity controls new data to be transmitted in correspondence with the received
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`UL Grant signal received on the PDCCH. 57 Wherein the data stored in the Msg3
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`buffer is a Medium Access Control Protocol Data Unit(MAC POU) including a
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`user equipment identifier.58 Wherein the UL Grant signal received on the specific
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`message is either a UL Grant signal received on a Physical Downlink Control
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`53 Found in claim 7 of the '236 patent.
`54 Found in claim 8 of the '236 patent.
`55 Found in claim 9 of the '236 patent.
`56 Found in claim 10 of the '236 patent.
`57 Found in claim 10 of the '236 patent.
`58 Found in claim 12 of the '236 patent.
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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 16 of 18 PageID #: 6566
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`Channel (PDCCH) or a UL Grant signal received on the random access response
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`message.59 Not indefinite.60
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`The '481 Patent
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`16. A preamble generation unit configured to generate said preamble
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`sequence by repeating a specific sequence, having a length (L), N times to
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`generate a consecutive sequence having a length (N*L) and concatenating a
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`single cyclic prefix (CP) to a front end of said consecutive sequence:61 "Hardware
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`and/or software in the transmitter that is capable of performing the following algorithm:
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`repeat a specific sequence, having a length (L), N times to generate a consecutive
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`sequence having a length (N*L) and concatenate a single cyclic prefix (CP) to a front
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`59 Found in claim 13 of the '236 patent.
`60 See supra note 14.
`61 Found in claim 8 of the '481 patent.
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`Case 1:15-cv-00547-SLR-SRF Document 115 Filed 11/14/16 Page 17 of 18 PageID #: 6567
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`end of said consecutive sequence." Defendants failed to shift the§ 112, ~ 6 burden to
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`plaintiff.62 Section 112, ~ 6 does not apply. 63 Not indefinite.64
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`17. A transmission unit configured to transmit, on a random access
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`channel, said preamble sequence to a receiving side: 65 "Hardware and/or software
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`in the transmitter capable of transmitting the preamble sequence on the random access
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`channel to a receiving side." The structure is found in the specification. ('481 patent,
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`7:57-8:4; 11 :46-54; 17:41-18:17 figs. 1, 22) Defendants failed to shift the§ 112, ~ 6
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`burden to plaintiff.66 Section 112, ~ 6 does not apply.67 Not indefinite.68
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`62 See supra note 3.
`63 The term "preamble generation unit" does not employ means-plus-function language.
`The structure described in the '481 patent is a computer-implemented algorithm. "To
`one of skill in the art, the 'structure' of computer software is understood through, for
`. example, an outline of an algorithm, a flowchart, or a specific set of instructions or
`rules." Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014), overruled by
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). In the briefs and at
`oral argument, defendants argued that Williamson overturned Apple, but defendants
`never addressed the substantive question raised by plaintiffs in their citation to Apple(cid:173)
`whether an algorithm disclosed in the specification is sufficiently definite structure.
`(See, e.g., D.I. 73 at 8) Williamson overruled the strength of the presumption applied in
`Apple, but Apple remains on point for computer-implemented inventions that do not
`employ means-plus-function language. Plaintiff argued that figure 11 and the
`specification at column 11, lines 55-67, disclose an algorithm and that a person of
`ordinary skill in the art would recognize this algorithm as the structure corresponding to
`the functions described in relation to "preamble generation unit." (See D.I. 65 at 15; D.I.
`66 at ~~ 106-09) Defendants f