throbber
Case 2:22-md-03034-TGB ECF No. 201, PageID.11655 Filed 11/26/23 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`Case No. 2:22-md-03034-TGB
`HON. TERRENCE G. BERG
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF NEO WIRELESS, LLC’S MOTION
`FOR RECONSIDERATION OF THE COURT’S
`INDEFINITENESS DETERMINATION (DKT. 198)
`
`Plaintiff Neo Wireless, LLC (“Plaintiff” or “Neo Wireless”) respectfully
`
`
`
`
`requests this Court reconsider its ruling in the November 20, 2023 Claim
`
`Construction Order (Dkt. 198) and issue an order finding the term “low peak-to-
`
`average power ratio in the time domain” (and the claims of the ’366 Patent using
`
`the term) not indefinite. The complete bases for Plaintiff’s motion are set forth in
`
`Plaintiff Neo Wireless, LLC’s Brief in Support of Motion for Reconsideration of
`
`the Court’s Indefiniteness Determination (Dkt. 198), submitted herewith.
`
`A proposed order is being submitted herewith via email.
`
`
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11656 Filed 11/26/23 Page 2 of 15
`
`DATED: November 26, 2023
`
`Respectfully submitted,
`
`
`
`/s/ Jason D. Cassady
`Jason D. Cassady
`Texas State Bar No. 24045625
`Email: jcassady@caldwellcc.com
`Christopher S. Stewart
`Texas State Bar No. 24079399
`Email: cstewart@caldwellcc.com
`CALDWELL CASSADY CURRY P.C
`2121 N. Pearl St., Suite 1200
`Dallas, Texas 75201
`Telephone: (214) 888-4848
`Facsimile: (214) 888-4849
`
`Jaye Quadrozzi (P71646)
`Email: quadrozzi@youngpc.com
`YOUNG, GARCIA &
`QUADROZZI, PC
`2775 Stansbury Blvd., Suite 125
`Farmington Hills, Michigan 48334
`Telephone: (248) 353-8620
`
`ATTORNEYS FOR PLAINTIFF
`NEO WIRELESS LLC
`
`
`
`
`
`
`
`
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11657 Filed 11/26/23 Page 3 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`Case No. 2:22-md-03034-TGB
`HON. TERRENCE G. BERG
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF NEO WIRELESS, LLC’S BRIEF IN SUPPORT OF
`MOTION FOR RECONSIDERATION OF THE COURT’S
`INDEFINITENESS DETERMINATION (DKT. 198)
`
`
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11658 Filed 11/26/23 Page 4 of 15
`
` I. MOTION FOR RECONSIDERATION ............................................................... 1
`
`TABLE OF CONTENTS
`
`A. BACKGROUND. ............................................................................................ 1
`B. ARGUMENT ................................................................................................... 2
`1. The Law Merely Requires the Patent to Provide Context from Which
`a POSA Can Evaluate a Term of Degree—Not That the Patent Itself
`Provide a “Threshold” or “Value” for Comparison. .................................. 2
`2. A Term of Degree Need Not Have a Universally Applicable Threshold
`or Boundary, and May Be Implementation Dependent. ............................ 5
`3. The Court Disregarded Unrebutted Evidence About the Knowledge
`of a POSA. .................................................................................................. 6
`II. CONCLUSION ..................................................................................................... 9
`
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11659 Filed 11/26/23 Page 5 of 15
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Berkheimer v. HP Inc.
` 881 F.3d 1360 (Fed. Cir. 2018) .............................................................................. 3
`
`Braintree Labs., Inc. v. Novel Labs., Inc.
` 749 F.3d 1349 (Fed. Cir. 2014) ..........................................................................3, 4
`
`Eaton Corp. v. ZF Meritor LLC
` No. 03-74844, 2006 WL 3313190 (E.D. Mich. Nov. 14, 2006) ................... 3, 8, 9
`
`Eibel Process Co. v. Minnesota & Ontario Paper Co.
` 261 U.S. 45 (1923) ........................................................................................ 4, 5, 7
`
`Interval Licensing LLC v. AOL, Inc.
` 766 F.3d 1364 (Fed. Cir. 2014) ..........................................................................3, 4
`
`Nautilus, Inc. v. Biosig Instruments, Inc.
` 572 U.S. 898 (2014) ...........................................................................................2, 3
`
`Orthokinetics, Inc. v. Safety Travel Chairs, Inc.
` 806 F.2d 1565 (Fed. Cir. 1986) ..................................................................... 2, 5, 7
`
`St. Lawrence Comms., LLC v. ZTE Corp.
` No. 2:15-CV-00349, 2016 WL 6275390 (E.D. Tex. Oct. 25, 2016) ..................... 5
`
`Tecnomatic S.p.A. v. ATOP S.p.A.
` No. 2:18-cv-12869, 2011 WL 1410036 (E.D. Mich. Feb. 23, 2021) ........ 1, 3, 4, 5
`
`Rules
`
`L. R. 7.1(h)(2)(A) ....................................................................................................... 1
`
`
`
`ii
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11660 Filed 11/26/23 Page 6 of 15
`
`I. MOTION FOR RECONSIDERATION
`
`In the Court’s November 20, 2023 Claim Construction Order (Dkt. 198)
`
`(“Order”), the Court determined that the term “low peak-to-average power ratio in
`
`the time domain” in the ’366 Patent is indefinite, a ruling that would result in the
`
`invalidation of all asserted claims of that patent. Because Neo believes the Court
`
`misapprehended the controlling law regarding indefiniteness, or failed to consider
`
`unrebutted evidence about the knowledge of a person of skill in the art (POSA),
`
`Neo respectfully moves for reconsideration pursuant to EDMI Local Rule
`
`7.1(h)(2)(A).1
`
`A. BACKGROUND.
`In arguing that the disputed term was definite, Neo Wireless relied on the
`
`following premises:
`
`• The patent need not provide a specific mathematical threshold or
`metric for quantifying a term of degree, as long as it provides “some
`guidance” to a POSA. See Dkt. 127 (“Br.”) at 5–6 (citing Tecnomatic
`S.p.A. v. ATOP S.p.A., No. 2:18-cv-12869, 2011 WL 1410036, at *20
`(E.D. Mich. Feb. 23, 2021)).
`
`• In this field of art, the term “low” PAPR is commonly used, and
`expert testimony confirms that the specification provides sufficient
`guidance for a POSA to understand that it means, in short, “less than
`the system baseline PAPR.” See Dkt. 127-3 at 6–8 (Decl. of W.
`Alberth ¶¶ 24–27).
`
`
`
`
`
`
`1 See E.D. Mich. LR 7.1(h)(2)(A) (“The court made a mistake, correcting the mistake
`changes the outcome of the prior decision, and the mistake was based on the record
`and law before the court at the time of its prior decision.”).
`
`1
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11661 Filed 11/26/23 Page 7 of 15
`
`• A term of degree need not have a universally applicable “industry
`standard” definition, but can be implementation-dependent. See Br. at
`7 n.1 (citing, for example, Orthokinetics, Inc. v. Safety Travel Chairs,
`Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)).
`
`In its Order, the Court never expressly rejected any of these premises, but
`
`
`
`the Court’s conclusion suggests that it implicitly rejected one or more of them,
`
`each of which would represent an error of law. Had it not, Neo submits that the
`
`Court would have found the term definite, since unrebutted expert testimony and
`
`extrinsic evidence established that a POSA would know, from the context provided
`
`by the patent, what constitutes a “low” PAPR in a given OFDMA implementation.
`
`B. ARGUMENT
`The Law Merely Requires the Patent to Provide Context
`1.
`from Which a POSA Can Evaluate a Term of Degree—Not That
`the Patent Itself Provide a “Threshold” or “Value” for
`Comparison.
`As the Court observes in its opinion, Section 112 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.” Order
`
`at 30 (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014))
`
`(emphasis added). But the Court erred when it required the specification to
`
`expressly state a specific threshold or comparator for evaluating a term of degree
`
`for that term to be definite—even for a claim term well understood on its face by a
`
`POSA from the technical context (“some guidance”) set forth in the patent.
`
`2
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11662 Filed 11/26/23 Page 8 of 15
`
`The focus of the Nautilus standard is not on what standards or metrics are
`
`expressly stated in the specification, but rather on the knowledge of the POSA.2
`
`Thus, the law does not demand that the specification necessarily regurgitate an
`
`express threshold or metric if the claim itself “provided enough certainty to one of
`
`skill in the art when read in the context of the invention.” Interval Licensing LLC v.
`
`AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014); see also Berkheimer v. HP Inc.,
`
`881 F.3d 1360, 1364 (Fed. Cir. 2018) (cited by Defendants, Dkt. 131 at 4) (finding
`
`a term indefinite only after determining that neither the intrinsic record nor the
`
`extrinsic evidence (expert testimony) provided reasonable certainty). Consistent
`
`with this, courts have upheld terms of degree as definite where the patent
`
`specification provided no express standard or thresholds at all, so long as a POSA
`
`would understand the threshold implicitly. See Tecnomatic, 2011 WL 1410036, at
`
`*21 (“suitable for mass production” was definite even though the only guidance
`
`provided by the specification was that it must be “automatic” rather than “manual”
`
`or “labor intensive,” because the phrase was “a term that a person of ordinary skill
`
`in the art would know and use”);3 Braintree Labs., Inc. v. Novel Labs., Inc., 749
`
`
`2 This is why, as discussed further below, “evidence relating to those skilled in the
`art [is] appropriate, indeed necessary, to resolve the ‘indefiniteness’ issues.” Eaton
`Corp. v. ZF Meritor LLC, No. 03-74844, 2006 WL 3313190, at *8 (E.D. Mich. Nov.
`14, 2006).
`3 The Court distinguished Tecnomatic by contending that the patent at issue there
`“provided a specific comparison point.” Order at 38. But that comparison point—
`
`
`3
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11663 Filed 11/26/23 Page 9 of 15
`
`F.3d 1349, 1360 (Fed. Cir. 2014) (finding “copious” not indefinite, despite it not
`
`appearing in the patent at all, simply because an expert witness stated that a POSA
`
`would know what it means in the technical context.)4
`
`Yet in its opinion, the Court required such an express threshold or standard,
`
`despite expert testimony that a POSA would understand the term based only on the
`
`contextual guidance the patent did provide. The Court adopted the reasoning of a
`
`patent examiner who stated that, despite numerous industry publications by POSAs
`
`freely using the term “low” to describe PAPR, the definiteness of a term “cannot
`
`be interpreted in the context of the design without comparing the values with a
`
`threshold or a level, identified in the current application.” Order at 37 (emphasis
`
`added). The Court’s decision to require the patent specification itself to provide
`
`such a threshold or comparator (as opposed to merely providing sufficient
`
`technical context from which a POSA could then apply their own knowledge of the
`
`appropriate thresholds and comparators) was legal error. Under the correct
`
`
`“automatic” versus “manual,” or “less labor intensive”—is no more specific than the
`one in the ’366 Patent (“relatively low” and “improved power efficiency”), yet the
`Tecnomatic court still found the term definite because of the inherent knowledge of
`a POSA familiar with the claimed machines.
`4 See also Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65–
`66 (1923) (finding “substantial pitch” definite, despite only one example in the
`specification that was not universally applicable, because of evidence that a POSA,
`“had no difficulty, when his attention was called to their importance . . . in
`determining what was the substantial pitch needed” to achieve the claimed result.”)
`(cited by Interval Licensing, 766 F.3d 1364).
`
`4
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11664 Filed 11/26/23 Page 10 of 15
`
`standard, the ’366 Patent provided “some guidance” (see Tecnomatic)—the
`
`technical context of OFDMA systems and the requirement of improved power
`
`efficiency—and that guidance was sufficient for a POSA, with their inherent
`
`knowledge, to understand the term with reasonable certainty.
`
`A Term of Degree Need Not Have a Universally Applicable
`2.
`Threshold or Boundary, and May Be Implementation Dependent.
`The Court does not appear to disagree (and Defendants never contested in
`
`their briefing) that a patent term can still be definite yet have different meanings in
`
`different technical implementations. In fact, a term like “low” may be the most
`
`appropriate (and definite) term when the precise numerical boundary will depend
`
`on the particular implementation. See St. Lawrence Comms., LLC v. ZTE Corp.,
`
`No. 2:15-CV-00349, 2016 WL 6275390, at *57–59 (E.D. Tex. Oct. 25, 2016). The
`
`Federal Circuit opinion cited by the St. Lawrence court makes this even more
`
`clear: “The claims were intended to cover the use of the invention with various
`
`types of automobiles. That a particular chair on which the claims read may fit
`
`within some automobiles and not others is of no moment.” Orthokinetics, 806 F.2d
`
`at 1576.5 So too, the claims of the ’366 Patent were intended to cover the use of the
`
`
`5 See also Eibel Process Co., 261 U.S. at 65 (finding term of degree definite where
`“[i]t was difficult for [the patentee] to be more definite, due to the varying conditions
`of speed and stock existing in the operations of Fourdrinier machines and the
`necessary variation in the pitch to be used to accomplish the purpose of his
`invention”).
`
`5
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11665 Filed 11/26/23 Page 11 of 15
`
`invention in various OFDMA systems, and there need not be a precise definition of
`
`“low” that would be applicable to all such systems. Mr. Alberth testified, without
`
`direct rebuttal, that a POSA would know to evaluate the term “based on the
`
`transmitter and signaling system being considered.” Dkt. 127-3 ¶ 24.
`
`Yet in evaluating the expert testimony in this matter, the Court relied upon
`
`Defendants’ expert’s statement that “there is no industry standard for a ‘low’
`
`PAPR,” and faulted Neo’s expert testimony simply because Mr. Alberth
`
`acknowledged that “different specific implementations of OFDMA/OFDMA
`
`networks have different baseline PAPRs.” Order at 37. But there is no rule that, for
`
`a term to be definite, a patent must allow for a single, uniform industry standard
`
`that will apply to all implementations. The Court, in crediting Defendants’ expert’s
`
`statement, appears to have adopted such a rule. This was legal error.
`
`The Court Disregarded Unrebutted Evidence About the
`3.
`Knowledge of a POSA.
`Under the proper legal framework—(1) allowing the inherent knowledge of
`
`a POSA to supply the appropriate standards based on the guidance in the patent,
`
`and (2) allowing for implementation-dependent standards—Neo provided ample
`
`unrebutted evidence that a POSA in this field would well know what the ’366
`
`Patent intended by a “low” PAPR. Mr. Alberth, whose credentials as a POSA were
`
`never questioned, opined that a POSA would understand the ’366 Patent to require
`
`a PAPR lower than the baseline PAPR of the OFDMA system being implemented,
`
`6
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11666 Filed 11/26/23 Page 12 of 15
`
`and that this understanding would be consistent with the Patent’s disclosed aim of
`
`“improved power efficiency,” since the transmitter’s design is unaffected and its
`
`power efficiency is not hindered. Dkt. 127-3 (Alberth Decl.) ¶ 24; see also Dkt.
`
`133-1 (Supplemental Alberth Decl.) ¶¶ 4–11.
`
`Defendants’ expert, Dr. Akl, never directly rebutted Mr. Alberth’s general
`
`opinions that a POSA would understand “low PAPR” as relative to the baseline of
`
`a given system. In fact, he acknowledged at length that “reduced PAPR” in OFDM
`
`signals was a common problem in the art at the time of the invention, with well-
`
`known techniques for achieving it. Dkt. 131-2 (Akl. Decl.) ¶¶ 38–40. And given
`
`the ample evidence that those in the art regularly used “low PAPR,”6 it would have
`
`been difficult for Dr. Akl to dispute that the term was, on its face, reasonably
`
`certain to a POSA. See Orthokinetics, 806 F.2d at 1576 (“As long as those of
`
`ordinary skill in the art realized that the dimensions could be easily obtained, §
`
`112, 2d ¶ requires nothing more.”); Eibel Process Co., 261 U.S. at 66 (“The
`
`immediate and successful use of the pitch [the allegedly indefinite term] for this
`
`purpose by . . . the whole trade is convincing proof that one versed in paper making
`
`could find in Eibel’s specifications all he needed to know . . . .”).
`
`
`6 See Ex. A (Neo’s slides presented at the Markman hearing and emailed to the
`Court) at 3, 5 (collecting evidence of prior artists and Defendants’ own IPR expert
`using the term); Dkt. 134-2 at, e.g., ¶¶ 54, 63, 64, 147.
`
`7
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11667 Filed 11/26/23 Page 13 of 15
`
`Thus, instead of grappling with Mr. Alberth’s testimony directly, Dr. Akl
`
`avoided it. He first opined merely that “[t]he ’366 Patent Does Not Provide
`
`Examples of a ‘Low’ PAPR.” Dkt. 131-2 (Akl. Decl.) at 17–18 (section VI.A.b).
`
`But as discussed above, specific examples/thresholds/metrics in the patent itself are
`
`not necessary if a POSA would nevertheless understand the term. He next disputed
`
`Mr. Alberth’s analysis of the two articles used for Mr. Alberth’s low-PAPR
`
`example. Id. at 18–24 (section VI.A.c). But as discussed in Neo’s Reply (Dkt. 133
`
`at 2–3), that was merely an example, and it does not bear on a POSA’s general
`
`ability to understand the term on an implementation-specific basis. 3/30/23 Alberth
`
`Decl. at ¶¶ 9–11.
`
`On this record, where Mr. Alberth’s testimony went unrebutted (or at best,
`
`simply opposed in a conclusory fashion with evidence of, at most, equal weight), it
`
`is unclear how Defendants could have met their clear and convincing evidence
`
`burden to demonstrate indefiniteness. Yet while the Court cited certain of Dr.
`
`Akl’s conclusions, the Court only discussed and discounted the exemplary 9dB
`
`embodiment Mr. Alberth provided as part of Neo’s alternative argument. The
`
`Court never discussed or dismissed Mr. Alberth’s other testimony about the
`
`general understanding of POSA, or the common use of the term in the art. The
`
`Court’s failure to consider and give effect to this unrebutted (or at best
`
`unchallenged) evidence was a further legal error. See Eaton Corp., 2006 WL
`
`8
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11668 Filed 11/26/23 Page 14 of 15
`
`3313190, at *8 (E.D. Mich. Nov. 14, 2006) (summarizing Federal Circuit cases
`
`holding that it is legal error to disregard unrebutted expert testimony in evaluating
`
`indefiniteness).
`
`II. CONCLUSION
`
`In sum, Neo presented credible evidence, including expert testimony, that a
`
`POSA would understand, from the technical context and guidance in the’366
`
`Patent, how to identify a “low PAPR” by comparing the subject signal to the
`
`baseline of the particular system being implemented. Because this is sufficient to
`
`meet the standard for indefiniteness, and because Neo’s evidence was never
`
`directly rebutted or tested, Defendants could not meet their clear and convincing
`
`evidence burden to invalidate the claims using this term.
`
`Thus, only by imposing an incorrect legal standard (requiring the
`
`specification itself to set forth a threshold for a term of degree; or requiring a
`
`universally applicable, rather than implementation-specific, threshold), or by
`
`disregarding Neo’s extrinsic evidence, could the Court have reached its conclusion.
`
`Neo therefore respectfully requests the Court reconsider its ruling and issue an
`
`Order finding the term “low peak-to-average power ratio in the time domain” (and
`
`the claims of the ’366 Patent using the term) not indefinite.
`
`9
`
`

`

`Case 2:22-md-03034-TGB ECF No. 201, PageID.11669 Filed 11/26/23 Page 15 of 15
`
`DATED: November 26, 2023
`
`Respectfully submitted,
`
`
`
`/s/ Jason D. Cassady
`Jason D. Cassady
`Texas State Bar No. 24045625
`Email: jcassady@caldwellcc.com
`Christopher S. Stewart
`Texas State Bar No. 24079399
`Email: cstewart@caldwellcc.com
`CALDWELL CASSADY CURRY P.C
`2121 N. Pearl St., Suite 1200
`Dallas, Texas 75201
`Telephone: (214) 888-4848
`Facsimile: (214) 888-4849
`
`Jaye Quadrozzi (P71646)
`Email: quadrozzi@youngpc.com
`YOUNG, GARCIA &
`QUADROZZI, PC
`2775 Stansbury Blvd., Suite 125
`Farmington Hills, Michigan 48334
`Telephone: (248) 353-8620
`
`ATTORNEYS FOR PLAINTIFF
`NEO WIRELESS LLC
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on November 26, 2023, the foregoing document
`
`was filed electronically with the Clerk of Court using the CM/ECF system, which
`
`will send notification of such filing to all attorneys of record.
`
`
`
`/s/ Christopher S. Stewart
`Christopher S. Stewart
`
`
`
`
`
`

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