`
`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
`
`
`
`
`
`