throbber
Case 2:22-md-03034-TGB ECF No. 198, PageID.11542 Filed 11/20/23 Page 1 of 111
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIGATION
`
`2:22-MD-03034-TGB
`
`HON. TERRENCE G. BERG
`
`
`
`OPINION AND ORDER
`CONSTRUING DISPUTED
`CLAIM TERMS (ECF NOS. 127,
`131, 133, 150, 151, 154, 155)
`
`THIS MEMORANDUM
`OPINION AND ORDER
`RELATES TO ALL CASES
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
`
`The individual cases involved in this MDL matter are for patent
`
`infringement brought by Plaintiff Neo Wireless, LLC (“Neo” or “Plaintiff”)
`
`against Defendants Ford Motor Company, American Honda Motor Co.,
`
`Inc., Honda Development & Manufacturing of America, LLC, Volkswagen
`
`Group of America, Inc., Volkswagen Group Of America Chattanooga
`
`Operations, LLC, Nissan North America, Inc., Nissan Motor Acceptance
`
`Corporation a/k/a Nissan Motor Acceptance Company, LLC, Toyota Motor
`
`Corporation, Toyota Motor North America, Inc., Toyota Motor Sales,
`
`U.S.A., Inc., Toyota Motor Engineering & Manufacturing North America,
`
` 
` 
`
`Page 1 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11543 Filed 11/20/23 Page 2 of 111
`
`Inc., Toyota Motor Credit Corporation, General Motors Company,
`
`General Motors, LLC, Tesla, Inc., Mercedes-Benz USA, LLC, and FCA
`
`US, LLC (collectively “Defendants”). In all nine cases, Neo alleges
`
`Defendants infringe six asserted patents related to LTE functionality.
`
`“LTE”, which stands for “Long Term Evolution” refers to a technical
`
`standard for wireless data transmission.
`
`On June 21, 2023, the Court held a hearing to determine the proper
`
`construction of the disputed claim terms in U.S. Pat. No. 8,467,366 (the
`
`“’366 Patent”); U.S. Pat. No. 10,833,908 (the “’908 Patent”); U.S. Pat. No.
`
`10,447,450 (the “’450 Patent”); U.S. Pat. No. 10,075,941 (the “’941 Patent”;
`
`U.S. Pat. No. 10,771,302 (the “’302 Patent”); and U.S. Pat. No. 10,965,512
`
`(the “’512 Patent”) (collectively “Asserted Patents”). The parties have
`
`submitted written briefs explaining their positions on how the disputed
`
`claim terms should be construed. ECF Nos. 127, 131, 133, 150, 151, 154,
`
`155.1
`
`Having reviewed the arguments made by the parties at the hearing
`
`and in their claim construction briefing, having considered the intrinsic
`
`evidence, and having made subsidiary factual findings about the extrinsic
`
` 
`1 Citations to the parties’ filings are to the filing’s number in the docket
`(ECF No.) and pin cites are to the PageID numbers assigned by the
`Court’s electronic filing system.
`Page 2 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11544 Filed 11/20/23 Page 3 of 111
`
`evidence, the Court construes the disputed claim terms identified by the
`
`parties, pursuant to the procedure set forth in Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370 (1996). See also Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Teva Pharm. USA,
`
`Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015).
`
`
`
` 
` 
`
`
`
`Page 3 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11545 Filed 11/20/23 Page 4 of 111
`
`TABLE OF CONTENTS
`
`BACKGROUND ................................................................................ 6
`I.
`II. APPLICABLE LAW ........................................................................ 15
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................... 23
`IV. THE PARTIES’ STIPULATED TERMS ........................................ 25
`V. CONSTRUCTION OF DISPUTED OR IDENTIFIED TERMS .... 29
`A. “the ranging signal exhibits a low peak-to-average power
`ratio in the time domain” ...................................................... 29
`B. “a ranging sequence selected from a set of ranging
`sequences” .............................................................................. 39
`C. “wherein the portion of the frequency band used for
`transmission of the random access signal does not include
`control channels” .................................................................... 43
`D. “associated with” .............................................................. 50
`E. “random access signal” .................................................... 54
`F. “time-frequency resource unit” ........................................ 62
`G. “the antenna transmission scheme comprising a
`transmission diversity scheme or a multiple-input multiple-
`output (MIMO) scheme” ........................................................ 71
`H. “the mobile station-specific transmission parameters
`indicate … a corresponding subchannel configuration … the
`corresponding subchannel configuration characterized by
`distributed subcarriers or localized subcarriers in the
`frequency domain” ................................................................. 75
`I. “probing signal” ................................................................. 81
`
` 
` 
`
`Page 4 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11546 Filed 11/20/23 Page 5 of 111
`
`J. “the probing signal is configured to occupy a portion of
`spectrum in the uplink frequency band not designated for
`transmission of uplink control signals in the system” / “a
`receiver configured to receive a request for a probing signal
`from a base station in the system” / “the probing signal is
`configured to overlap, in the time domain, with uplink
`signals transmitted over an uplink frequency band by other
`mobile devices in the system” ................................................ 89
`K. “wherein the first plurality of subcarriers and the second
`plurality of subcarriers are received in at least one of the
`time slots” ............................................................................... 94
`L. “second pilots of a second type” ....................................... 98
`VI. CONCLUSION .............................................................................. 103
`
`
`
`
`
` 
` 
`
`Page 5 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11547 Filed 11/20/23 Page 6 of 111
`
`BACKGROUND
`I.
`Plaintiff alleges that Defendants infringe the ’366 Patent, the ’908
`
`Patent, the ’450 Patent, the ’941 Patent, the ’302 Patent, and the ’512
`
`Patent. Shortly before the start of the June 21, 2023 Hearing, the Court
`
`provided the parties with preliminary constructions with the aim of
`
`focusing the parties’ arguments and facilitating discussion.
`
`The ’366 Patent is titled “Methods And Apparatus For Random
`
`Access In Multi-carrier Communication Systems,” was filed on August 8,
`
`2011, and issued on June 18, 2013. The ’366 Patent relates to “methods
`
`and apparatus for random access in a multi-carrier system.” ’366 Patent
`
`at 2:40–41. In particular, “ranging signals are designed to improve
`
`receiving reliability and to reduce interference with other uplink signals,”
`
`and “improve the detection performance at the base station receiver.” Id.
`
`at 2:41–46.
`
`The Abstract of the ’366 Patent states:
`Methods and apparatus in a multi-carrier cellular
`wireless network with random access improve
`receiving reliability and reduce interference of
`uplink signals of a random access, while improving
`the detection performance of a base station receiver
`by employing specifically configured ranging
`signals.
`Claim 1 of the ’366 Patent is an illustrative claim and recites the
`
` 
` 
`
`Page 6 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11548 Filed 11/20/23 Page 7 of 111
`
`following elements (disputed or identified terms in italics):
`
`1.In a multi-cell orthogonal frequency division
`multiple access (OFDMA) wireless communication
`system comprising a plurality of base stations and
`mobile stations, a mobile station configured to
`communicate with a serving base station in a cell
`via a communication channel, the mobile station
`comprising:
`an apparatus configured to transmit a data
`signal to the serving base station in the cell over a
`data subchannel, wherein the data subchannel
`comprises a plurality of adjacent or non-adjacent
`subcarriers within the communication channel;
`and
`
`an apparatus configured to transmit a
`ranging signal to the serving base station in the cell
`over a ranging subchannel for random access,
`wherein:
`the ranging signal is formed from a ranging
`sequence selected from a set of ranging sequences
`associated with the cell for identifying the mobile
`station;
`the ranging signal lasts over a period of one
`or multiple
`orthogonal
`frequency division
`multiplexing (OFDM) symbols and the ranging
`signal exhibits a low peak-to-average power ratio in
`the time domain; and the ranging subchannel
`comprises at least one block of subcarriers within
`the communication channel and power levels of
`subcarriers at both ends of a block are set to zero.
`
`The ’941 Patent is titled “Methods And Apparatus For Multi-carrier
`
`Communication Systems With Adaptive Transmission And Feedback,”
`
`was filed on March 28, 2016, and issued on September 11, 2018. The ’941
`
` 
` 
`
`Page 7 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11549 Filed 11/20/23 Page 8 of 111
`
`Patent relates to methods and apparatus for “adaptive transmission of
`
`wireless communication signals are described, where MCS (modulation
`
`and coding scheme), coding rates, training pilot patterns, TPC
`
`(transmission power control) levels, and subchannel configurations are
`
`jointly adjusted to adapt to the channel conditions.” ’941 Patent at 2:33–
`
`38. The specification states this “[t]his adaptation maximizes the overall
`
`system capacity and spectral efficiency without wasting radio resources
`
`or compromising error probability performance.” Id. at 2:38–41.
`
`The Abstract of the ’941 Patent states:
`An arrangement is disclosed where in a multi-
`carrier communication system, the modulation
`scheme, coding attributes, training pilots, and
`signal power may be adjusted to adapt to channel
`conditions in order to maximize the overall system
`capacity and spectral efficiency without wasting
`radio resources or compromising error probability
`performance, etc.
`Claim 8 of the ’941 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`8. A link adaptation method by a mobile station
`served by a serving base station
`in an
`Orthogonal Frequency Division Multiplexing
`(OFDM)
`communication
`system,
`the
`communication system utilizing a transmission
`structure with time slots in the time domain and
`frequency subchannels in the frequency domain,
`the method comprising:
`Page 8 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11550 Filed 11/20/23 Page 9 of 111
`
`receiving a control message from the serving base
`station
`over a control channel,
`wherein:
`transmission
`contains
`the
`control message
`parameters specific to the mobile station for a
`subsequent transmission by the serving base
`station over a frequency subchannel to the
`mobile station in a time slot; and
`the mobile station-specific transmission parameters
`indicate an antenna transmission scheme and a
`corresponding subchannel configuration, the
`antenna transmission scheme comprising a
`transmission diversity scheme or a multiple-
`input multiple-output (MIMO) scheme and the
`corresponding
`subchannel
`configuration
`characterized by distributed subcarriers or
`localized subcarriers in the frequency domain;
`and
`receiving a data packet transmitted by the serving
`base station using the mobile station-specific
`transmission parameters over the frequency
`subchannel.
`
`The ’908 Patent and ’302 Patent effectively share the same
`
`specification, and are titled “Channel Probing Signal for a Broadband
`
`Communication System.” The ’302 Patent was filed on April 16, 2018, and
`
`issued on September 8, 2020. The ’908 Patent was filed on June 16, 2020,
`
`and issued on November 10, 2020. The ’908 Patent and ’302 Patent relate
`
`to a “broadband wireless communication system where both the Multi-
`
`Carrier (MC) and direct Sequence Spread Spectrum (DSSS) signals are
`
` 
` 
`
`Page 9 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11551 Filed 11/20/23 Page 10 of 111
`
`intentionally overlaid together in both time and frequency domains.” ’908
`
`Patent at 2:42–45; ’302 Patent at 2:39–42. In particular, “[t]he system
`
`takes advantage of both MC and DSSS techniques to mitigate their
`
`weaknesses.” ’908 Patent at 2:45–47; ’302 Patent at 2:42–44.
`
`The Abstract of the ’908 Patent and the ’302 Patent state:
`In a broadband wireless communication system, a
`spread spectrum signal is intentionally overlapped
`with an OFDM signal, in a time domain, a
`frequency domain, or both. The OFDM signal,
`which inherently has a high spectral efficiency, is
`used for carrying broadband data or control
`information. The spread spectrum signal, which is
`designed to have a high spread gain for overcoming
`severe interference, is used for facilitating system
`functions such as initial random access, channel
`probing, or short messaging. Methods and
`techniques are devised to ensure that the mutual
`interference between the overlapped signals is
`minimized to have insignificant impact on either
`signal and that both signals are detectable with
`expected performance by a receiver.
`Claim 23 of the ’302 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`23. A mobile device in an Orthogonal Frequency
`Division Multiplexing (OFDM) communication
`system, the mobile device comprising:
`a receiver configured to receive a request for a
`probing signal from a base station in the system;
`a transmitter configured to form and transmit, in
`response to the received request, the probing
`
` 
` 
`
`Page 10 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11552 Filed 11/20/23 Page 11 of 111
`
`signal with a code sequence modulated in the
`frequency domain, wherein:
`the probing signal is configured to overlap, in the
`time domain, with uplink signals transmitted
`over an uplink frequency band by other mobile
`devices in the system; and
`the probing signal is configured to occupy a portion
`of spectrum in the uplink frequency band not
`designated for transmission of uplink control
`signals in the system.
`
`Claim 1 of the ’908 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`1.A mobile station comprising:
`a transmitter configured to:
`transmit, to a base station, a first uplink signal
`within a frequency band, wherein the first
`uplink signal is an orthogonal frequency division
`multiplexing (OFDM) signal and utilizes a
`frame format comprising a plurality of timeslots,
`each timeslot comprising a plurality of OFDM
`symbols;
`transmit, to the base station, a random access
`signal followed by a guard period in only a
`portion of the frequency band, wherein the
`random access signal includes a sequence
`associated with the base station, wherein a time
`duration of a combination of the random access
`signal and the guard period is greater than a
`time duration of at least one of the plurality of
`OFDM symbols; and
`a receiver configured to receive, from the base
`station, a response message.
`The ’450 Patent is titled “Method And System For Multi-carrier
`
` 
` 
`
`Page 11 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11553 Filed 11/20/23 Page 12 of 111
`
`Packet Communication With Reduced Overhead,” was filed on August 14,
`
`2017, and issued on October 15, 2019. The ’450 Patent generally relates
`
`“to wireless communication and, in particular, to multi-carrier packet
`
`communication networks.” ’450 Patent at 1:27–29. In particular, the
`
`specification discloses “[a] system and method for minimizing the control
`
`overhead in a multi-carrier wireless communication network that utilizes
`
`a time-frequency resource.” Id. at 2:45–47.
`
`The Abstract of the ’450 Patent states:
`A method and system for minimizing the control
`overhead
`in
`a multi-carrier
`wireless
`communication network that utilizes a time-
`frequency
`resource
`is disclosed.
`In
`some
`embodiments, one or more zones in the time-
`frequency resource are designated for particular
`applications, such as a zone dedicated for voice-
`over-IP
`(VoIP)
`applications. By
`grouping
`applications of a similar type together within a
`zone, a reduction in the number of bits necessary
`for mapping a packet stream to a portion of the
`time-frequency resource can be achieved. In some
`embodiments, modular coding schemes associated
`with the packet streams may be selected that
`further reduce the amount of necessary control
`information. In some embodiments, packets may be
`classified for transmission in accordance with
`application type, QoS parameters, and other
`properties. In some embodiments, improved control
`messages may be constructed to facilitate the
`control process and minimize associated overhead.
`Claim 7 of the ’450 Patent is an illustrative claim and recites the
`Page 12 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11554 Filed 11/20/23 Page 13 of 111
`
`following elements (disputed or identified terms in italics):
`
`7. A mobile device in a wireless packet system
`using a frame structure of multiple frames for
`transmission, each frame comprising a plurality
`of time intervals, each time interval comprising
`a plurality of orthogonal frequency division
`multiplexing (OFDM) symbols, and each OFDM
`symbol containing a plurality of frequency
`subcarriers, the mobile device configured to:
`receive an identifier from a base station in a cell in
`which the mobile device is operating; and
`receive a signal containing information from the
`base station over a segment of time-frequency
`resource, the segment having a starting time-
`coordinate
`and
`the
`segment
`frequency
`comprising N time-frequency resource units
`within a time interval, each unit containing a set
`of frequency subcarriers in a group of OFDM
`symbols, where N=2, 4, or 8; and
`recover the information from the received signal
`using the starting time-frequency coordinate and
`N in conjunction with the received identifier.
`
`The ’512 Patent is titled “Method And Apparatus Using Cell-specific
`
`And Common Pilot Subcarriers In Multi-carrier, Multi Cell Wireless
`
`Communication Networks,” was filed on September 4, 2020, and issued
`
`on March 30, 2021. The ’512 Patent relates to “pilot subcarriers [that] are
`
`divided into two different groups according to their functionalities, and
`
`hence their distinct requirements.” ’512 Patent at 3:10–12. In particular,
`
`“[t]he first group is called ‘cell-specific pilot subcarriers,’ and will be used
`
` 
` 
`
`Page 13 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11555 Filed 11/20/23 Page 14 of 111
`
`by the receiver 104 to extract information unique to each individual cell,”
`
`and “[t]he second group is termed ‘common pilot sub-carriers,’ and are
`
`designed to possess a set of characteristics common to all base stations of
`
`the system.” Id. at 3:17–27.
`
`The Abstract of the ’512 Patent states:
`A multi-carrier cellular wireless network (400)
`employs base stations (404) that transmit two
`different groups of pilot subcarriers: (1) cell-specific
`pilot subcarriers, which are used by a receiver to
`extract information unique to each individual cell
`(402), and (2) common pilots subcarriers, which are
`designed to possess a set of characteristics common
`to all the base stations (404) of the system. The
`design criteria and transmission formats of the cell-
`specific and common pilot subcarriers are specified
`to enable a receiver to perform different system
`functions. The methods and processes can be
`extended to other systems, such as those with
`multiple antennas in an individual sector and those
`where
`some
`subcarriers
`bear
`common
`network/system information.
`Claim 15 of the ’512 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`15. An orthogonal frequency division multiple
`access (OFDMA)-compatible mobile station that
`uses subcarriers in a frequency domain and time
`slots in a time domain, the OFDMA-compatible
`mobile station comprising:
`at least one antenna; and
`a receiver; and
`the at least one antenna and the receiver are
`Page 14 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11556 Filed 11/20/23 Page 15 of 111
`
`configured to:
`receive first pilots of a first type on a first
`plurality of subcarriers, wherein the first pilots are
`cell-specific pilots; and
`receive second pilots of a second type and data
`on a second plurality of subcarriers, wherein the
`first plurality of subcarriers and the second
`plurality of subcarriers are received in at least one
`of the time slots;
`wherein at least some subcarriers of the first
`plurality of subcarriers or the second plurality of
`subcarriers are beam-formed; and
`the receiver is further configured to:
`recover the data using channel estimates
`from at least the second pilots; and
`recover cell-specific information using the
`cell-specific pilots;
`wherein the second type is different than the
`first type and wherein the first pilots do not
`interfere with the second pilots.
`
`II. APPLICABLE LAW
`A. 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)). To determine the meaning of
`
`the claims, courts start by considering the intrinsic evidence. Id. at 1313;
`
`C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004);
`
` 
` 
`
`Page 15 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11557 Filed 11/20/23 Page 16 of 111
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258,
`
`1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
`
`themselves, the specification, and the prosecution history. Phillips, 415
`
`F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule—subject
`
`to certain specific exceptions discussed infra—is that each claim term is
`
`construed according to its ordinary and accustomed meaning as
`
`understood by one of ordinary skill in the art at the time of the invention
`
`in the context of the patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v.
`
`Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks,
`
`LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks
`
`omitted) (“There is a heavy presumption that claim terms carry their
`
`accustomed meaning in the relevant community at the relevant time.”)
`
`cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
`
`“The claim construction inquiry … begins and ends in all cases with
`
`the actual words of the claim.” Renishaw PLC v. Marposs Societa’ per
`
`Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim
`
`construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150
`
`F.3d 1362, 1369 (Fed. Cir. 1998)) overruled on other grounds by
`
` 
` 
`
`Page 16 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11558 Filed 11/20/23 Page 17 of 111
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). First, a
`
`term’s context in the asserted claim can be instructive. Phillips, 415 F.3d
`
`at 1314. Other asserted or unasserted claims can also aid in determining
`
`the claim’s meaning, because claim terms are typically used consistently
`
`throughout the patent. Id. Differences among the claim terms can also
`
`assist in understanding a term’s meaning. Id. For example, when a
`
`dependent claim adds a limitation to an independent claim, it is presumed
`
`that the independent claim does not include the limitation. Id. at 1314–
`
`15.
`
`“[C]laims ‘must be read in view of the specification, of which they
`
`are a part.’” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d
`
`967, 979 (Fed. Cir. 1995) (en banc)). “[T]he specification ‘is always highly
`
`relevant to the claim construction analysis. Usually, it is dispositive; it is
`
`the single best guide to the meaning of a disputed term.’” Id. (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996));
`
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
`
`This is true because a patentee may define his own terms, give a claim
`
`term a different meaning than the term would otherwise possess, or
`
` 
` 
`
`Page 17 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11559 Filed 11/20/23 Page 18 of 111
`
`disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these
`
`situations, the inventor’s lexicography governs. Id.
`
`The specification may also resolve ambiguous claim terms “where
`
`the ordinary and accustomed meaning of the words used in the claims lack
`
`sufficient clarity to permit the scope of the claim to be ascertained from
`
`the words alone.” Teleflex, Inc., 299 F.3d at 1325. But, “‘[a]lthough the
`
`specification may aid the court in interpreting the meaning of disputed
`
`claim language, particular embodiments and examples appearing in the
`
`specification will not generally be read into the claims.’” Comark
`
`Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
`
`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
`
`(Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to
`
`read limitations from a preferred embodiment described in the
`
`specification—even if it is the only embodiment—into the claims absent a
`
`clear indication in the intrinsic record that the patentee intended the
`
`claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`898, 913 (Fed. Cir. 2004).
`
`The prosecution history is another tool to supply the proper context
`
`for claim construction because, like the specification, the prosecution
`
` 
` 
`
`Page 18 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11560 Filed 11/20/23 Page 19 of 111
`
`history provides evidence of how the U.S. Patent and Trademark Office
`
`(“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at
`
`1317. However, “because the prosecution history represents an ongoing
`
`negotiation between the PTO and the applicant, rather than the final
`
`product of that negotiation, it often lacks the clarity of the specification
`
`and thus is less useful for claim construction purposes.” Id. at 1318; see
`
`also Athletic Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996)
`
`(ambiguous prosecution history may be “unhelpful as an interpretive
`
`resource”).
`
`Although extrinsic evidence can also be useful, it is “‘less significant
`
`than the intrinsic record in determining the legally operative meaning of
`
`claim language.’” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc., 388
`
`F.3d at 862). Technical dictionaries and treatises may help a court
`
`understand the underlying technology and the manner in which one
`
`skilled in the art might use claim terms, but technical dictionaries and
`
`treatises may provide definitions that are too broad or may not be
`
`indicative of how the term is used in the patent. Id. at 1318. Similarly,
`
`expert testimony may aid a court in understanding the underlying
`
`technology and determining the particular meaning of a term in the
`
` 
` 
`
`Page 19 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11561 Filed 11/20/23 Page 20 of 111
`
`pertinent field, but an expert’s conclusory, unsupported assertions as to a
`
`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less
`
`reliable than the patent and its prosecution history in determining how to
`
`read claim terms.” Id. The Supreme Court has explained the role of
`
`extrinsic evidence in claim construction:
`
`In some cases, however, the district court will need to look
`beyond the patent’s intrinsic evidence and to consult extrinsic
`evidence in order to understand, for example, the background
`science or the meaning of a term in the relevant art during the
`relevant time period. See, e.g., Seymour v. Osborne, 11 Wall.
`516, 546 (1871) (a patent may be “so interspersed with
`technical terms and terms of art that the testimony of scientific
`witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in
`dispute, courts will need to make subsidiary factual findings
`about that extrinsic evidence. These are the “evidentiary
`underpinnings” of claim construction that we discussed in
`Markman, and this subsidiary factfinding must be reviewed
`for clear error on appeal.
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
`
`B. Departing from the Ordinary Meaning of a Claim
`Term
`There are “only two exceptions to [the] general rule” that claim
`
`terms are construed according to their plain and ordinary meaning: “1)
`
`when a patentee sets out a definition and acts as his own lexicographer,
`
`or 2) when the patentee disavows the full scope of the claim term either
`
` 
` 
`
`Page 20 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11562 Filed 11/20/23 Page 21 of 111
`
`in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v.
`
`Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony
`
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
`
`2014) (“[T]he specification and prosecution history only compel departure
`
`from the plain meaning in two instances: lexicography and disavowal.”).
`
`The standards for finding lexicography or disavowal are “exacting.” GE
`
`Lighting Sols., 750 F.3d at 1309.
`
`To act as his own lexicographer, the patentee must “clearly set forth
`
`a definition of the disputed claim term,” and “clearly express an intent to
`
`define the term.” Id. (quoting Thorner, 669 F.3d at 1365); see also
`
`Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
`
`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158
`
`F.3d at 1249.
`
`To disavow or disclaim the full scope of a claim term, the patentee’s
`
`statements in the specification or prosecution history must amount to a
`
` 
`2 Some cases have characterized other principles of claim construction as
`“exceptions” to the general rule, such as the statutory requirement that a
`means-plus-function term is construed to cover the corresponding
`structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
`Page 21 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11563 Filed 11/20/23 Page 22 of 111
`
`“clear and unmistakable” surrender. Cordis Corp. v. Bos. Sci. Corp., 561
`
`F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The
`
`patentee may demonstrate intent to deviate from the ordinary and
`
`accustomed meaning of a claim term by including in the specification
`
`expressions of manifest exclusion or restriction, representing a clear
`
`disavowal of claim scope.”). “Where an applicant’s statements are
`
`amenable to multiple reasonable interpretations, they cannot be deemed
`
`clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725
`
`F.3d 1315, 1326 (Fed. Cir. 2013).
`
`C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / §
`112(b) (AIA)
`Patent claims must particularly point out and distinctly claim the
`
`subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim,
`
`when viewed in light of the intrinsic evidence, must “inform those skilled
`
`in the art about the scope of the invention with reasonable certainty.”
`
`Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it
`
`does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite.
`
`Id. at 901. Whether a claim is indefinite is determined from the
`
`perspective of one of ordinary skill in the art as of the time the application
`
`for the patent was filed. Id. at 911. As it is a challenge to the validity of a
`
` 
` 
`
`Page 22 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11564 Filed 11/20/23 Page 23 of 111
`
`patent, the failure of any claim in suit to comply with § 112 must be shown
`
`by clear and convincing evidence. BASF Corp. v. Johnson Matthey Inc.,
`
`875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of
`
`law an

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket