Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 1 of 18 PageID #: 23101
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`INTERDIGITAL COMMUNICATIONS,
`INC., et aL,
`
`Plaintiffs and
`Counterclaim
`Defendants;
`
`v.
`
`Civil Action No. 1 :13-cv-00009-RGA
`
`ZTE CORP., et aL,
`
`Defendants and
`Counterclaim
`Plaintiffs.
`
`INTERDIGITAL COMMUNICATIONS,
`INC., et aL,
`
`v.
`
`NOKIA CORP., et aL
`
`Plaintiffs and
`Counterclaim
`Defendants;
`
`Defendants and
`Counterclaim
`Plaintiffs.
`
`Civil Action No. 1: 13-cv-000 1 0-RGA
`
`MEMORANDUM OPINION
`
`Neal C. Belgam, Esq., Smith, Katzenstein & Jenkins, Wilmington, DE; Maximilian A. Grant,
`Esq. (argued), Latham & Watkins LLP, Washington D.C.; Ron E. Schulman, Esq., Latham &
`Watkins LLP, Menlo Park, CA; Julie M. Holloway, Esq. (argued), Latham & Watkins LLP, San
`Francisco, CA; Thomas W. Yeh, Esq., Latham & Watkins LLP, Washington D.C.; attorneys for
`the Plaintiff.
`
` 2009
`
` Ex. 2009-0001
`
`IPR Licensing, Inc.
`Exhibit .
`ZTE Corp v. IPR Licensing, Inc.
`IPR2014-00525 
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 2 of 18 PageID #: 23102
`
`Kelly E. Farnan, Esq., Richards, Layton & Finger, Wilmington, DE; Charles M. McMahon, Esq.
`(argued), Brinks, Gilson, & Lione, Chicago, IL; Jay Reiziss, Esq., Brinks, Gilson, & Lione,
`Washington D.C.; Hersh H. Mehta, Esq., Brinks, Gilson, & Lione, Chicago, IL; Mircea A.
`Tipescu, Esq., Brinks, Gilson, & Lione, Chicago, IL, attorneys for the Defendant Nokia.
`
`Rodger D. Smith, II, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Jack B.
`Blumenfeld, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Patrick J. Flinn,
`Esq., (argued), Alston & Bird LLP, Atlanta, GA; John D. Haynes, Esq. (argued), Alston & Bird
`LLP, Atlanta, GA; DavidS. Frist, Esq., Alston & Bird LLP, Atlanta, GA, attorneys for the
`Defendant ZTE.
`
`April:11_, 2014
`
` Ex. 2009-0002
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 3 of 18 PageID #: 23103
`
`Pending before this Court is the issue of claim construction of various disputed terms
`
`found in U.S. Patent Nos. 7,190,966 ("'966 Patent), 7,286,847 ("'847 Patent"), 7,941,151 ("' 151
`
`Patent"), and 8,380,244 ("'244 Patent").
`
`BACKGROUND
`
`On January 2, 2013, InterDigital Communications Inc., InterDigital Technology
`
`Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. ("Plaintiffs") filed four patent
`
`infringement actions. (1:13-cv-00008 D.I. 1; 1:13-cv-00009 D.I. 1; 1:13-cv-00010 D.I. 1; 1:13-
`
`cv-00011 D.I. 1) 1
`
`• The remaining defendants are ZTE Corporation, ZTE (USA) Inc., Samsung
`
`Electronics Co. Ltd., Samsung Electronics America Inc., Samsung Telecommunications America
`
`LLC, Nokia Corporation, and Nokia Inc.2 ("Defendants") The Court has considered the
`
`Parties' Amended Joint Claim Construction Brief. (D.I. 140). The Court held oral argument on
`
`March 12, 2014. (D.I. 225).
`
`LEGAL STANDARD
`
`"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. A WH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). '"[T]here is no magic formula or
`
`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
`
`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
`
`1 Unless otherwise noted, all subsequent citations to the Docket will be for case 1: 13-cv-00009.
`2 Samsung Electronics Co. Ltd., Samsung Electronics America Inc., and Samsung Telecommunications America
`LLC were not parties to the present motion.
`
`1
`
` Ex. 2009-0003
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 4 of 18 PageID #: 23104
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`Soft View LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
`
`415 F.3d at 1324). When construing patent claims, a matter oflaw, a court considers the literal
`
`language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), a.ffd, 517 U.S. 370
`
`(1996). Ofthese sources, "the 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."
`
`Phillips, 415 F .3d at 1315 (internal quotations and citations omitted).
`
`Furthermore, "the words of a claim are generally given their ordinary and customary
`
`meaning ... [which is] the meaning that the term would have to a person of ordinary skill in the
`
`art in question at the time of the invention, i.e., as of the effective filing date of the patent
`
`application." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted).
`
`"[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the
`
`entire patent." Id. at 1321 (internal quotation marks omitted). "In some cases, the ordinary
`
`meaning of claim language as understood by a person of skill in the art may be readily apparent
`
`even to lay judges, and claim construction in such cases involves little more than the application
`
`ofthe widely accepted meaning of commonly understood words." Id. at 1314 (internal citations
`
`omitted).
`
`A court may consider extrinsic evidence, which "consists of all evidence external to the
`
`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
`
`treatises," in order to assist the court in understanding the underlying technology, the meaning of
`
`terms to one skilled in the art and how the invention works. I d. at 131 7-19 (internal quotation
`
`2
`
` Ex. 2009-0004
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 5 of 18 PageID #: 23105
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`marks and citations omitted). However, extrinsic evidence is less reliable and less useful in
`
`claim construction than the patent and its prosecution history. !d.
`
`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent." Renishaw P LC v. Marposs Societa 'per
`
`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would
`
`exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade
`
`Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).
`
`'966 AND '847 PATENTS
`
`The Court will first take up the claim construction issues that relate to the '966 and the
`
`'847 Patents. Claim 1 ofthe '966 Patent is representative and reads:
`
`A wireless code division multiple access (CDMA) subscriber unit comprising:
`
`a transmitter configured such that, when the subscriber unit is first accessing a
`CDMA network and wants to establish communications with a base station
`associated with the network over a communication channel to be indicated
`by the base station, the transmitter successively transmits signals until the
`subscriber unit receives from the base station an indication that a transmitted
`one of the signals has been detected by the base station, wherein each
`transmission of one of the signals by the transmitter is at an increased power
`level with respect to a prior transmission of one of the signals;
`
`the transmitter further configured such that the transmitter transmits to the base
`station a message indicating to the base station that the subscriber unit wants
`to establish
`the communications with
`the base station over
`the
`communication channel to be indicated by the base station, the message
`being transmitted only subsequent to the subscriber unit receiving the
`indication,
`
`wherein each of the successively transmitted signals and the message are
`generated using a same code; and
`
`wherein each of the successively transmitted signals is shorter than the message.
`
`3
`
` Ex. 2009-0005
`
`r
`l
`J
`
`t
`(
`
`I I
`I
`I
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 6 of 18 PageID #: 23106
`
`(emphasis added).
`
`The Court construed the three relevant terms for this patent during the Markman Hearing.
`
`(D.I. 225 at 61, 62). The Court's constructions are as follows.
`
`A.
`
`"code"
`
`Court's Construction: "sequence of chips or bits"
`
`B.
`
`"generated using [a same I a portion of a I a remainder of the] code"
`
`Court's Construction: "produced from [a same I a portion of a I a remainder of
`
`the] code"
`
`C.
`
`"successively transmits signals; successively transmitted signals"
`
`Court's Construction: "successively [transmits I transmitted] sequences of chips
`
`or bits"
`
`'151 PATENT
`
`Claim 1 of the '151 Patent is representative and reads:
`
`A method for utilizing channel assignment information for an uplink shared channel or a
`downlink shared channel, the method comprising:
`
`transmit/receive unit (WTRU) receiving downlink control
`a wireless
`information including downlink or uplink channel assignment information
`via a same physical downlink control channel, both downlink channel
`assignment information and uplink channel assignment information being
`received via the same physical downlink control channel;
`
`the WTRU determining whether the downlink control information is intended
`for the WTRU based on WTRU identity (!D)-masked cyclic redundancy
`check (CRC) parity bits, and if so determining whether the channel
`assignment information is for assigning radio resources for the uplink
`shared channel or the downlink shared channel; and
`
`the WTRU utilizing the radio resources for the uplink shared channel or the
`downlink shared channel.
`
`4
`
` Ex. 2009-0006
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 7 of 18 PageID #: 23107
`
`(emphasis added).
`
`A. "radio resources "
`
`1. Plaintiffs' construction: "resources for uplink or downlink transmissions from or
`
`to the WTRU"
`
`2. Defendants' construction: plain and ordinary meaning or "physical resources for
`
`uplink or downlink transmissions [from or to a WTRU]"
`
`3. Court's construction: "physical resources for uplink or downlink transmissions
`
`[from or to a WTRU]"
`
`The Defendants argue that the only dispute is whether the term "physical" should be
`
`incorporated into the claim construction. (D.I. 140 at 66). The Plaintiffs state that, "There
`
`appears to be no genuine dispute among the parties with regard to the construction of this term
`
`standing alone." !d. Furthermore, at oral argument both parties agreed that a "radio resource"
`
`must be "physical." (D.I. 225 at 75, 76). The Court agrees with the parties that a "radio
`
`resource" must be a "physical resource" and therefore adopts the Defendants' proposed claim
`
`construction as it properly captures the "physical" requirement of the disputed term.
`
`B. "[a/the] same physical downlink control channel"
`
`1. Plaintiffs' construction: "a radio resource used to transmit uplink and/or downlink
`
`channel assignment information"
`
`2. Defendants' construction: "[a/the] channel used for transfer of downlink control
`
`information only that occupies a same radio resource defined by a channelization
`
`code"
`
`5
`
` Ex. 2009-0007
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 8 of 18 PageID #: 23108
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`3. Court's construction: "[a/the] channel used only for transfer of downlink control
`
`information that occupies a same radio resource"
`
`The Defendants argue that their construction is necessary as it highlights the requirement
`
`"that the channel at issue be the 'same physical' channel in that it occupies the same radio
`
`resource." (D.I. 140 at 52). To support this argument, the Defendants cite to the'151 Patent's
`
`prosecution history and the Patent's specification. !d. at 52, 53. Furthermore, the Defendants
`
`argue that the construction should require that the channel be "defined by a channelization code."
`
`!d. at 53. The Defendants argue that the '191 Patent's specification requires this construction
`
`because it ties the "present invention ... to the WCDMA standard .... " !d.
`
`The Plaintiffs argue that it is not necessary to construe this claim to require a "physical"
`
`component, as this is encompassed within the construction of the term "radio resource." Further,
`
`the Plaintiffs argue that it is inappropriate to limit the claim to "channelization code[ s ]" as the
`
`'151 Patent states that '" [ t ]he present invention is applicable to any type of wireless
`
`communication system such as ... CDMA in general or any other type of wireless
`
`communication system."' !d. at 55 (quoting the '151 Patent at 3 :4-9) (emphasis omitted, ellipsis
`
`in original).
`
`The Court agrees with the Plaintiffs that including the phrase "channelization code" adds
`
`a limitation to the claim that is found in neither the claim nor the specification. Thus, its
`
`inclusion in the claim construction would be inappropriate. However, the Court does find that
`
`the Plaintiffs' proposed construction broadens the scope of the claim to include uplink channel
`
`assignment information, which is absent from the claim language. Therefore, the Court finds
`
`6
`
` Ex. 2009-0008
`
`l
`I
`
`I
`
`

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`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 9 of 18 PageID #: 23109
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`that the proper construction of the disputed phrase is the Defendants' construction, without the
`
`reference to channelization codes.
`
`C. "utilizing the radio resources for the uplink shared channel or the downlink shared
`
`channel"
`
`1. Plaintiffs' construction:
`
`As used in claim 1: "using the assigned radio resources for the uplink or downlink
`
`shared channel"
`
`As used in claim 16: "the controller is configured to use the assigned radio resources
`
`for the uplink or downlink shared channel"
`
`2. Defendants' construction: "either transmitting data on the uplink shared channel
`
`or receiving data on the downlink shared channel depending on whether the
`
`assigned radio resources are for the uplink shared channel or downlink shared
`
`channel"
`
`3. Court's construction:
`
`As used in claim 1: "either transmitting data on the uplink shared channel or receiving
`
`data on the downlink shared channel"
`
`As used in claim 16: invalid as indefinite
`
`The Court will first address the construction of the phrase as found in claim 1 of the '151
`
`Patent. The Plaintiffs argue that their proposed construction of the claim terms are consistent
`
`with the plain meaning. (D.I. 140 at 57). However, the Plaintiffs agreed during the Markman
`
`Hearing that the Defendants' proposed construction would be unobjectionable if the portion
`
`after, and including the word, "depending" was not adopted. (D.I. 225 at 103). Therefore, the
`7
`
` Ex. 2009-0009
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 10 of 18 PageID #: 23110
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`only remaining dispute for the Court is whether the phrase should be construed to contain the
`
`"depending" clause.
`
`The Defendants argue that the "depending" clause is necessary as it properly reflects the
`
`order in which the action must be accomplished. (D.I. 140 at 58). In support of this argument,
`
`the Defendants cite to both the Patent's abstract and to Fig. 3. (D.I. 140 at 58). The '151
`
`Patent's abstract states, "The WTRU takes an appropriate action based on whether the message
`
`is for assigning radio resources to the UL channel or the DL channel." The Plaintiffs argue that
`
`there is no timing requirement in the claims, and it would be inappropriate to read such a
`
`limitation into them. The Court agrees. There is no requirement in the claim that data may not
`
`be received until after a channel assignment has been made. Furthermore, it would be
`
`inappropriate to read such a requirement into the claim, as there was no clear disclaimer of this
`
`claim scope. Therefore the Court construes the phrase, in the context of claim 1 of the '151
`
`Patent, to be "either transmitting data on the uplink shared channel or receiving data on the
`
`downlink shared channel."
`
`Turning to claim 16 of the ' 151 Patent, the Defendants argue that the claim is indefinite
`
`"because a person of ordinary skill in the art at the time of the purported invention would not
`
`have understood whether claim 16, an apparatus claim, requires utilizing the radio resources (a
`
`method step) or having a controller configured to utilize the radio resources (a device
`
`capability)." (D.I. 140 at 58). The Plaintiffs argue that a person of ordinary skill in the art would
`
`understand that the term "utilizing" meant "to utilize" in the context of the claim. Jd. at 60. The
`
`Plaintiffs further argue that '" [ u ]tilizing' in claim 16 is essentially a typographical error which
`
`the Court may correct." Jd.
`
`8
`
` Ex. 2009-0010
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 11 of 18 PageID #: 23111
`
`A claim is "not sufficiently precise" under section 112 when the claim is drafted as both
`
`an apparatus and a method claim. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
`
`1384 (Fed. Cir. 2005). Furthermore, a Court "may not redraft claims, whether to make them
`
`operable or to sustain their validity." Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d
`
`1331, 1339 (Fed. Cir. 2011). The Federal Circuit has held that a district court may only correct a
`
`claim if"(l) the correction is not subject to reasonable debate based on consideration of the
`
`claim language and the specification and (2) the prosecution history does not suggest a different
`
`interpretation of the claims." Rembrandt Data Technologies, 641 F.3d at 1339. While the
`
`Federal Circuit has found it appropriate to correct a missing comma in a claimed chemical
`
`formula, because the party had proven that without the comma the formula did not represent any
`
`known mineral, Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353
`
`(Fed. Cir. 2009), the Federal Circuit has also indicated that correcting an apparatus claim that
`
`includes an improper method step is not permissible. Rembrandt Data Technologies, 641 F .3d at
`
`1339. Here, the Plaintiffs ask the Court to rewrite a method step in an apparatus claim to
`
`preserve its validity. The Court finds that this correction is subject to reasonable debate and
`
`therefore will not redraft the claim. Therefore, claim 16 of the '151 Patent is indefinite.
`
`D. "channel assignment information"
`
`1. Plaintiffs' construction: "information regarding radio resource assignment for the
`
`uplink or downlink channel"
`
`2. Defendants' construction: This term should be given its plain and ordinary
`
`meaning, but, to the extent a construction is necessary, Defendants propose
`
`"information identifying a channel assigned to the WTRU"
`9
`
` Ex. 2009-0011
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 12 of 18 PageID #: 23112
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`3. Court's construction: "information identifying a channel assigned to the WTRU"
`
`The Plaintiffs argue that their proposed construction is consistent with the claim language
`
`and the specification. (D.I. 140 at 61). The Plaintiffs cite to a portion of the specification that
`
`states, "[T]he present invention is related to a method and system for providing channel
`
`assignment information to support uplink and downlink transmissions." Id. The Plaintiffs argue
`
`that this passage "signals that this disclosure applies to the invention as a whole, and not merely
`
`to an embodiment." Jd. The Defendants respond that during the prosecution of the parent patent
`
`of the' 151 Patent, "the applicants argued that [the prior art reference] did not disclose channel
`
`assignment information because [the prior art reference] disclosed dedicated channels, which
`
`have static channel assignments. The applicants explained that the claims required shared data
`
`channels, which are 'dynamically adjusted."' Jd. at 62. Furthermore, the Defendants argue that
`
`the Plaintiffs' proposal improperly expands the scope of the claim as it allows for any
`
`information to be transmitted, not only information that identifies the assigned channel.
`
`The Court agrees with the Defendants. The Plaintiffs' proposed construction improperly
`
`expands the scope of the patent. Furthermore, the Defendants' proposed construction is
`
`consistent with the plain reading of the claim and the prosecution history of the '151 Patent.
`
`Therefore, the Court will adopt the Defendants' proposed construction.
`
`'244 PATENT
`
`Claim 1 of the '244 Patent is representative and reads:
`
`A subscriber unit comprising:
`
`a cellular transceiver configured to communicate with a cellular wireless network via
`a plurality of assigned physical channels;
`
`10
`
` Ex. 2009-0012
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 13 of 18 PageID #: 23113
`
`an IEEE 802.11 transceiver configured to communicate with an IEEE 802.11
`wireless local area network; and
`
`a processor configured to maintain a communication session with the cellular
`wireless network in an absence of the plurality of assigned physical channels
`while the IEEE 802.11 transceiver communicates packet data with the IEEE
`802.11 wireless local area network.
`
`(emphasis added).
`
`A. "configured to communicate with an IEEE 802.11 wireless local area network"
`
`1. Plaintiffs' construction: This phrase does not require construction, but if
`
`construed it should be construed to mean "[operable/arranged to] transmit data to
`
`and/or receive data from an IEEE 802.11 wireless local area network."
`
`2. Defendants' construction: "set up to always connect directly to an IEEE 802.11
`
`wireless local area network when such a connection is possible"
`
`3. Court's construction: "set up to always connect automatically to an IEEE 802.11
`
`wireless local area network when such a connection is possible"
`
`The Plaintiffs argue that their proposed construction comports with the plain reading of
`
`the claims. (D.I. 140 at 74). The Plaintiffs also cite to Hargrave's Communications Dictionary
`
`to support their proposed construction. !d. The Defendants argue that the intrinsic record
`
`requires that the communication with the IEEE 802.11 wireless local area network happen
`
`directly. Id at 75. As support for that construction, the Defendants cite the Summary of the
`
`Invention, which indicates that the invention solves the problem of manual selection. !d. The
`
`Defendants stated at the Markman Hearing that their proposed construction would have the same
`
`meaning ifthe term "directly" was substituted with the word "automatically." (D.I. 225 at 161).
`
`11
`
` Ex. 2009-0013
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 14 of 18 PageID #: 23114
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`The Court finds that the inventor's description of the '244 Patent, as solving the problem
`
`of manual selection, limits the scope of the patent. Further, the Court finds that the term
`
`"directly" may lead to further confusion, as the term may confusingly imply the proximity, in
`
`time or space, of the events. Instead, the Court finds that term "automatically" appropriately
`
`captures the claim scope by emphasizing only that the action does not require manual selection.
`
`Therefore, the Court adopts the Defendants' proposed construction, with the substitution of the
`
`word "automatically" for "directly."
`
`B. "maintain a communication session with the cellular wireless network in an absence of
`
`the plurality of assigned physical channels"
`
`1. Plaintiffs' construction: "maintain a logical connection with the cellular wireless
`
`network when none of the [two or more physical layer channels allocable by the
`
`subscriber unit as needed to transfer data] are in use by the subscriber unit"
`
`2. Defendants' construction: "spoof the subscriber unit to make it appear that a
`
`cellular wireless communication link continuously available in an absence of the
`
`plurality of assigned physical channels"
`
`3. Court's construction: "maintain a logical connection with the cellular wireless
`
`network when none of the plurality of assigned physical channels are in use by
`
`the subscriber unit"
`
`The Plaintiffs argue that the claim language "suggests that the 'communication session' is
`
`a 'logical connection' as opposed to a physical connection because, under the plain claim
`
`language, the communication session is maintained even when the physical channels have been
`
`released (or unassigned)." (D.I. 140 at 78 (footnote omitted)). The Plaintiffs maintain that their
`12
`
` Ex. 2009-0014
`
`

`

`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 15 of 18 PageID #: 23115
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`proposed construction is further supported by the specification and the prosecution history. !d.
`
`at 78, 79. The Defendants argue that the issue is whether any logical connection can satisfy the
`
`claim phrase, or just spoofing. !d. at 79. The Defendants point the court to the prosecution
`
`history of the patent as evidence that spoofing is a required limitation. !d.
`
`The '244 Patent prosecution history shows that initially the examiner rejected the relevant
`
`claim on the basis that the phrase "maintain a communication session ... in the absence of the
`
`plurality ofthe assigned physical layer channels" was not supported by the specification. (D.I.
`
`129-5 at 8). The inventor responded to this rejection by pointing the examiner to portions of the
`
`patent specification that discuss logical connections. !d. at 31. Specifically, the inventor stated,
`
`"[T]he communication session may be maintained via the logical connection (for example, a
`
`higher layer protocol) even as one or more physical wireless channels are released." !d. In
`
`support of this argument the inventor pointed to portions of the application that discuss the use of
`
`spoofing. !d. The examiner responded to this argument in the Final Office Action by stating:
`
`The examiner notes that Applicants have defined "a processor configured to
`maintain a communication session, with the first wireless network in the absence
`of the plurality of assigned physical layer channels while communicating packet
`data with the IEEE 802.11 wireless local area network via the second transceiver."
`For example, Applicants generally point to paragraphs 0023 and 0078 (see paper
`dated 1/28/2011 at page 9[),] which basically indicates some sort of spoofing (i.e.
`spoof the terminal into believing that a sufficient wide wireless communication link
`is continuously available).
`
`(D.I. 148-1 at 5).
`
`The Court finds that the prosecution history does not support the Defendants' argument
`
`to add a limitation to the construction of the claim. The examiner's statement provides only a
`
`possible example for the definition of the disputed phrase. This is not sufficient to put the
`
`13
`
` Ex. 2009-0015
`
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`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 16 of 18 PageID #: 23116
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`inventor on notice that the invention had been limited to only spoofing, nor is it specific enough
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`to restrict the claim. Therefore, the Court adopts the broader claim construction provided by the
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`Plaintiffs as it reflects the proper scope of the disputed claim term.
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`C. "assigned physical channels," "release, " "allocate," and "deallocate"
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`The parties' arguments regarding "assigned physical channels," "release," "allocate," and
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`"deallocate" are similar and therefore will be addressed together.
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`1. Plaintiffs' constructions:
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`Assigned physical channels: "physical layer channels allocable by the subscriber
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`unit as needed to transfer data"
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`Release: "stop the subscriber unit from using"
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`Allocate: "assign"
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`Deallocate: "stop the subscriber unit from using"
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`2. Defendants' constructions:
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`Assigned physical channels: "physical channels available for the subscriber unit
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`to select for use"
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`Release: "make no longer assigned"
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`Allocate: "select for use"
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`Deallocate: "select to stop using"
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`3. Court's constructions:
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`Assigned physical channels: "physical channels available for the subscriber unit
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`to select for use"
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`Release: "make no longer assigned"
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` Ex. 2009-0016
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`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 17 of 18 PageID #: 23117
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`Allocate: "select for use"
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`Deallocate: "select to stop using"
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`The dispute about these claim terms largely is based upon whether the '244 Patent uses
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`"allocate" and "assign" interchangeably, and "deallocate" and "release" interchangeably. The
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`Plaintiffs argue that the patent does use the terms interchangeably, and cites as evidence various
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`points in the patent's specification and claims. (D.I. 140 at 83). The Defendants argue that the
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`specification teaches that "a bandwidth management function that makes channels available for
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`use [assigns channels], and that a subset of those available channels are selected for use
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`[allocated] to send data." /d. at 84 (emphasis and brackets in original).
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`"In the absence of any evidence to the contrary, ... the use of ... different terms in the
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`claims connotes different meanings." CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co.
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`KG, 224 FJd 1308, 1317 (Fed. Cir. 2000). Here, the '244 Patent uses the terms at issue to
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`connote different meanings. For example, the '244 Patent's specification states, "[T]he network
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`layer need not allocate the assigned wireless bandwidth for the entirety of the communications
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`session." '244 Patent, col10: 36-38 (emphasis added). Furthermore, claims 5 and 15 both
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`depend on claim 1 and yet each adds a similar limitation, one based on the word "release" and
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`the other on the word "deallocate."
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`The Plaintiffs argue that this case is similar to A/A Eng'g Ltd v. Magotteaux Int'l S/A.
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`(D.I. 140 at 89, 90). In A/A Eng'g Ltd v. Magotteaux Int'l S/A the Federal Circuit found that
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`while the terms being construed in the case were not the same, they could be construed to have
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`the same definition. 657 F.3d 1264, 1276 (Fed. Cir. 2011). However, in A/A Eng'g Ltd v.
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`Magotteaux Int'l S/ A the Court determined that the claims were the same because "the intrinsic
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` Ex. 2009-0017
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`Case 1:13-cv-00009-RGA Document 253 Filed 04/22/14 Page 18 of 18 PageID #: 23118
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`evidence reveal[ ed] that the patentee acted as his own lexicographer and used 'homogeneous
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`solid solution' as a synonym for 'homogeneous ceramic composite."' Id. at 1276. Conversely,
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`here the claim terms were not defined within the specification to have synonymous definitions,
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`and do not appear to be used interchangeably. Therefore the Court finds that the Defendant