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`Exhibit 1011
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`Exhibit 1011
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`PUBLIC VERSION
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`In the Matter of
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`CERTAIN WIRELESS DEVICES WITH 3G
`CAPABILITIES AND COMPONENTS
`THEREOF
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`Investigation No. 337-TA-800
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`COMMISSION OPINION
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`I.
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`INTRODUCTION
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`On June 28, 2013, the presiding administrative law judge (“ALJ”) (Judge Shaw) issued
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`his final initial determination (“ID”) in this investigation] The ALJ found no violation of
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`section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, as amended, by respondents Huawei
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`Technologies Co., Ltd. of Shenzhen, China; Huawei Device USA of Plano, Texas (“Huawei
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`Device”); FutureWei Technologies, Inc. d/b/a Huawei, Technologies (USA) of Plano, Texas
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`(together “Huawei”); Nokia Corporation of Espoo, Finland; Nokia Inc. of White Plains, New
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`York (together “Nokia”); ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of
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`Richardson, Texas (together “ZTE”) (collectively, “Adjudicated Respondents”) in connection
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`with claims 1, 2, 3, and 5 of U.S. Patent No. 7,706,830 (“the ’830 patent”); claims 1, 2, 4, and 6
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`8 ofU.S. Patent No. 8,009,636 (“the ’636 patent”); claims 6, 13, 20, 26, and 29 ofU.S. Patent
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`No. 7,502,406 (“the ’406 patent”); claims 2-4, 7-11, 14, 22-24, and 27 of U.S. Patent No.
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`7,706,332 (“the ’332 patent”); claims 1-7 of U.S. Patent No. 7,970,127 (“the ’l27 patent”);
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`claims 16-19 of U.S. Patent No. 7,536,013 (“the ’013 patent”); or claims 1-18 of U.S. Patent No.
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`7,616,970 (“the ’970 patent”). On September 4, 2013, the Commission determined to review the
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`' The ID was served on July 1, 2013.
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`PUBLIC VERSION
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`final ID in its entirety and requested briefing on a single issue concerning domestic industry. 78
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`Fed. Reg. 55294 (Sept. 10, 2013).
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`Upon review of the ID, the Commission has determined to affinn the ALJ’s finding of no
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`violation of section 337 as to the Adjudicated Respondents, i.e., Huawei, Nokia, and ZTE.
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`Specifically, with respect to the Power Ramp-Up patents (the ’83Oand ’636 patents), the
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`Commission (1) affirms the ALJ’s findings that the accused products do not satisfy the
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`“successively sends transmissions” limitation as construed to mean “transmits to the base station,
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`one after the other, codes that are shorter than a regular length code” to the extent that the
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`“successively sends transmissions” refer to the short codes and (2) for the ’636 patent vacates the
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`ALJ’s findings regarding the “subsequent transmission" limitation. With respect to the Power
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`Control Patents (the ’406 and ’332 patents), the Commission modifies the ALJ’s construction of
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`the claim temi “power control bit” to mean “single-bit power control information transmitted at
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`an APC data rate equivalent to the APC update rate” and construes the limitation to encompass
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`only “single-bit power control infonnation.” The Commission adopts the ALJ’s findings that
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`the ’127, ’013, and ’970 patents are invalid in view of prior art. The Commission supplements
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`and modifies the ID as discussed below.
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`The Commission notes that this investigation is still pending with respect to certain
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`respondents. Thus, except for non-infringement of Adjudicated Respondents’ products, all
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`issues pertaining to the Power Ramp-Up patents (the ’406 and ’332 patents) and Power Control
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`patents (the ’83Oand ’636 patents) including domestic industry continue to remain under review.
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`2
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`PUBLIC VERSION
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`II.
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`BACKGROUND
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`A.
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`Procedural History
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`The Commission instituted this investigation on August 31, 2011, based on a complaint
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`filed by complainants lnterDigital Communications, LLC of King of Prussia, Permsylvania;2
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`lnterDigital Technology Corporation of Wilmington, Delaware; and IPR Licensing, Inc. of
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`Wilmington, Delaware (collectively, “InterDigital”). 76 Fed. Reg. 54252 (Aug. 31, 2011). The
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`complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in the
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`importation into the United States, the sale for importation, and the sale within the United States
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`after importation of certain wireless devices with 3G capabilities and components thereof that
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`infringe one or more of claims 1-15 of U.S. Patent No. 7,349,540 (“the ’540 patent”); claims 1, 2,
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`6-9, 13, 15-16, 20-22, 26, 28-30, 34-36, and 40 ofthe ’406 patent; claims 1-19 ofthe ’013 patent;
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`claims 1-18 ofthe ’970 patent; claims 1-27 ofthe ’332 patent; claims 1-3, 5-8, 10, 16-18, 20-23,
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`and 25 of the ’830 patent; and claims 1-14 of the ’127 patent. Id. The notice of investigation
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`named the following respondents: Huawei (except Huawei Device), Nokia, and ZTE. Id.
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`The Office of Unfair Import Investigations (“OUII”) was also named as a party to this
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`investigation. However, pursuant to the Supplement to the Strategic Human Capital Plan 2009
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`2013, issued by the Commission on January 18, 2012, OUII provided notice that its participation
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`2 lnterDigital Communications, LLC subsequently moved for leave to amend the
`Complaint and Notice of Investigation to reflect the fact that it converted from a Pennsylvania
`limited liability company to a Delaware corporation, and changed its name to lnterDigital
`Communications, Inc. The AL] issued an ID granting the motion and the Commission
`determined not to review. See Order No. 91 (Jan. 17, 2013); Notice of Commission
`Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave
`to Amend the Complaint and Notice of Investigation (Feb. 4, 2013).
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`3
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`PUBLIC VERSION
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`in this investigation “will be limited to issues relating to U.S. Patent Nos. 7,349,540, 7,536,013,
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`and 7,970,127, as well as issues relating to Respondents‘ patent misuse and/or FRAND defenses.”
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`See Commission Investigative Staff’s Notice of Partial Participation (Jan 18, 2012).
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`On December 5, 2011, the ALJ issued an ID, granting a motion by InterDigital to amend
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`the complaint and notice of investigation (1) to add allegations of infringement of claims 1-4, 6-9,
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`and 29-31 of the ’636 patent and (2) to name LG Electronics, Inc.; LG Electronics U.S.A., Inc.;
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`and LG Electronics Mobilecomm U.S.A., Inc. (collectively, “LG”) as respondents. See Order
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`No. 5 (Dec. 5, 2011). The Commission detennined not to review. See Notice of Commission
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`Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave
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`to Amend the Complaint and Notice of Investigation (Dec. 21, 2011); 76 Fed. Reg. 81527 (Dec.
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`28, 2011).
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`On April 11, 2012, the ALJ issued an ID, granting a motion by InterDigital to amend the
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`complaint and notice of investigation to add Huawei Device as a respondent. See Order No. 19
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`(Apr. 11, 2012). The Commission determined not to review. See Notice of Commission
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`Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave
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`to Amend the Complaint and Notice of Investigation (May 1, 2012); 77 Fed. Reg. 26788 (May 7,
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`2012).
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`On June 4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to
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`terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June
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`4, 2012). The Commission determined not to review. See Notice of Commission Determination
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`Not to Review an Initial Detennination Terminating Certain Respondents From the Investigation
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`4
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`PUBLIC VERSION
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`(July 6, 2012). InterDigita1 appealed LG’s termination from the investigation, and the Federal
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`Circuit reversed the Commission’s determination.
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`InterDigital Commc ’ns,LLC v Int ’l Trade
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`Comm ’n,718 F.3d 1336 (Fed. Cir. 2013). LG subsequently filed a combined petition for panel
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`rehearing and rehearing en bane. On October 3, 2013, the Court denied the petition. 1nterDigiIal
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`C0mmc’ns, LLC v. Int ’l Trade Comm ’n, No. 12-1628 (Fed. Cir. Oct. 3, 2013). The mandate
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`issued on October 10, 2013, returning jurisdiction to the Commission. This investigation is still
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`pending as to LG.
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`On July 24, 2012, the ALJ granted a motion by InterDigital to terminate the investigation
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`in part as to claims 1-15 ofthe ‘O13patent; claims 8-14 ofthe ’127 patent; all claims ofthe ’540
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`patent; claims 1, 2, 9, 16, 28, 30, 34-36, and 40 ofthe ’406 patent; claims 5, 6, 12, 13, 15-20, 25,
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`and 26 ofthe ’332 patent; and claims 16-18, 20-23, and 25 ofthe ’830 patent. See Order No. 38
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`(July 24, 2012). The Commission determined not to review. See Notice of Commission
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`Determination Not to Review an Initial Detennination Terminating Certain Claims From the
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`Investigation (Aug. 9, 2012).
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`On January 3, 2013, the ALJ granted a motion by InterDigital to terminate the
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`investigation in part as to claims 7, 8, 15, 21, and 22 of the ’406 patent; claims 1 and 21 of
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`the ’332 patent; and claims 6-8 and 10 ofthe ’83Opatent. See Order No. 87 (Jan. 3, 2013). The
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`Commission determined not to review. See Notice of Commission Determination Not to Review
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`an Initial Determination Terminating Certain Claims From the Investigation (Jan. 23, 2013).
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`The ALJ held an evidentiary hearing from February 12, 2013 through February 22, 2013,
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`and thereafter received post-hearing briefing from the parties.
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`5
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`PUBLIC VERSION
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`On June 28, 2013, the ALJ issued his final ID, finding no violation of section 337 by the
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`Adjudicated Respondents. Specifically, the ALJ found that the Commission has subject matter
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`jurisdiction, in rem jurisdiction over the accused products, and inpersonam jurisdiction over the
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`respondents. ID at 15. The ALJ also found that the importation requirement of section 337 (19
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`U.S.C. § 1337(a)(1)(B)) has been satisfied. Id. at 16. The ALJ, however, found that the
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`Adjudicated Respondents’ accused products do not infringe asserted claims 1-3 and 5 of the ’830
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`patent; asserted claims 1, 2, 4, 6, 7, and 8 of the ’636 patent; asserted claims 6, 13, 20, 26, and 29
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`of the ’406 patent; asserted claims 2-4, 7-11, 14, 22-24, and 27 of the ’332 patent; asserted
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`claims 1-7 of the ’127 patent; asserted claims 16-19 of the ’0l3 patent; or asserted claims 10-18
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`ofthe ’970 patent. See ID at 59-69, 141-168, and 240-257.
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`The ALJ concluded that the Adjudicated Respondents’ accused products satisfy each
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`limitation of claims 1-9 of the ’970 patent but found that all the asserted claims, claims 1-18, of
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`the ’97Opatent are invalid in view of the prior art. See id. at 315-339, 345-381. He also found
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`that asserted claims 1-7 of the ’127 patent and asserted claims 16-19 of the ’013 patent are
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`invalid in view of the prior art. See id. at 260-286. The ALJ found that the Adjudicated
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`Respondents failed to establish by clear and convincing evidence that the asserted claims of
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`the ’83O, ’636, ’406 or ’332 patents were invalid in light of the cited prior art references. See id.
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`at 74-94, 191-208. The ALJ also found that the Adjudicated Respondents failed to prove that
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`they hold licenses under the asserted patents and failed to prevail on their equitable/FRAND
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`defenses.
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`The ALJ further found that InterDigita1established the existence of a domestic industry
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`6
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`PUBLIC VERSION
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`that practices the asserted patents under 19 U.S.C. § 1337(a)(2). See ID at 20, 31, 45, and 58.
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`The ALJ issued his recommended determination on remedy and bonding on July 10, 2013.
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`On July 15, 2013, InterDigital filed a petition for review of the ID, challenging a number
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`of the ALJ’s findings. See Complainant InterDigital’s Petition for Review of the Final Initial
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`Determination (“InterDigital Pet.”). Specifically, InterDigital sought review of the ALJ’s finding
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`that the accused products do not infringe the asserted claims of the ’830, ’636, ’406, and ’332
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`patents. Id. InterDigital also challenged the ALJ’s finding that the ’97Opatent is invalid in view
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`of the cited prior art. Id. Also on July 15, 2013, the Commission investigative attorney and the
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`Adjudicated Respondents filed separate petitions for review challenging the ALJ’s finding that
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`InterDigital established the presence of a domestic industry that practices the asserted patents.
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`See Petition of the Office of Unfair Import Investigations for Review of the Initial Determination
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`on Violation of Section 337; See Respondents’ Petition for Review on Domestic Industry and
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`Contingent Petition for Review of Other Issues. Respondents also filed a contingent petition for
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`review. See id.
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`On July 23, 2013, the parties filed responses to the petitions for review. See Respondents
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`Response to InterDigital’s Petition for Review of the Initial Determination on Violation (“Resp.
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`Rep.”); Respondents’ Response to Office of Unfair Import Investigations’ Petition for Review of
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`the Initial Determination on Violation of Section 337; Complainant InterDigital’s Response to
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`the Respondents’ and the Staff s Petitions for Review of the Final Initial Determination;
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`Response of the Office of Unfair Import Investigations to the Private Parties’ Petition for Review
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`of the Initial Determination on Violation of Section 337.
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`7
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`PUBLIC VERSION
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`On September 4, 2013, the Commission determined to review the final ID in its entirety
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`and requested briefing on a single issue concerning domestic industry. 78 Fed. Reg. 55294 (Sept
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`10, 2013).
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`On September 27, 2013, the parties filed written submissions on the issue under review.
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`See Complainant InterDigital’s Response to Notice of Commission Determination to Review,
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`Dated September 4, 2013; Response of the Office of Unfair Import Investigations to the
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`Commission’s Question; Respondents’ Brief Addressing Domestic Industry Issues Raised in
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`Commission’s Decision of September 4, 2013. On October 21, 2013, the parties filed reply
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`submissions.3 See Complainant InterDigital’s Reply Regarding the Notice of Commission
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`Determination to Review, Dated September 4, 2013; Reply of the Office of Unfair Import
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`Investigations to the parties’ Responses to the Commission’s Question; Respondents’ Reply
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`Brief Addressing Domestic Industry Issues Raised in Commission’s Notice of September 4,
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`2013.
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`B.
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`Patents and Technology at Issue
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`The technology at issue in this investigation generally relates to wireless commtmications
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`devices with Third Generation (“3G”) cellular capabilities, and components thereof. ID at 7
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`(citing CX-1310C (Prucnal WS) at Q58). 3G describes a family of technologies that fulfills the
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`International Mobile Telecommunications-2000 specifications (“IMT-2000”) defined by the
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`International Telecommunication Union (“ITU”). Id. Two of the most widely adopted 3G
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`systems are based on code division multiple access (“CDMA”) technology, i.e., Wideband
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`3 The delay in filing responses was due to the govermnent shutdown.
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`8
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`PUBLIC VERSION
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`CDMA (“WCDMA”) developed by the Third Generation Partnership Project (“3GPP”) and
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`CDMA2000 developed by the Third Generation Partnership Project 2 (“3GPP2”). Id
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`The ’83Opatent entitled “Method and Subscriber Unit for Performing an Access
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`Procedure” issued on April 27, 2010. The patent names Fatih M. Ozluturk and Gary R. Lomp as
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`the inventors.
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`’830 patent (JX-6). The patent describes a way in which a subscriber unit gains
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`access to a cellular CDMA system. Id. at Abstract. InterDigital owns the patent and has asserted
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`independent claim 1 and dependent claims 2, 3, and 5 in this investigation.
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`The ’636 patent entitled “Method and Apparatus for Performing an Access Procedure”
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`issued on August 30, 2011. ’636 patent (JX-7). The patent names Fatih Ozluturk and Gary R.
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`Lomp as the inventors. The patent describes a way in which a subscriber unit gains access to a
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`cellular CDMA system. Id. at Abstract. InterDigita1 owns the ‘636 patent and has asserted.
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`independent claim 1 and dependent claims 2 and 4-8 in this investigation. The ’636 patent and
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`the ’830 patent are related to the same technology, and share a common specification. The
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`patents are collectively referred to as the “Power Ramp-Up” patents.
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`The ’406 patent, entitled “Automatic Power Control System for a Code Division Multiple
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`Access (CDMA) Communications System” issued on March 10, 2009.
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`’406 patent (JX—l). The
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`patent names Gary Lomp, Fatih Ozluturk, and John Kowalski as the inventors. The patent
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`describes automatic power control for a CDMA system. Id. at Abstract. InterDigital owns the
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`patent and has asserted independent claim 29 and dependent claims 6, 13, 20, and 26, which
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`depend respectively from independent claims 1, 7, 15, and 21, and dependent claim 22 in this
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`investigation.
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`9
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`PUBLIC VERSION
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`The ’332 patent entitled “Method and Subscriber Unit for Performing Power Control”
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`issued on April 27, 2010. ’332 patent (JX-2). The patent names Fatih Ozluturk and Gary Lomp
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`as the inventors. The patent describes a way in which subscriber units and base stations
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`communicate to control the power level of transmissions fiom the base station to a subscriber
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`unit within a cellular CDMA system. Id. at Abstract. InterDigital owns the ’332 patent and has
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`asserted independent claim 8 with its dependent claims 9, 10, 11, and 14, as well as dependent
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`claims 2, 3, 4, 7, 22-24, and 27 in this investigation. These claims depend from non-asserted
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`independent claims 1 and 21. The ’332 patent and the ’406 patent are related, and the two
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`patents are collectively referred to as the “Power Control” patents.
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`The ’127 patent, entitled “User Equipment Identification Specific Scrambling” issued on
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`June 28, 2011. ’127 patent (JX-4). The patent names Stephen G. Dick, Nader Bolourchi, and
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`Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink
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`Packet Access (HSDPA) used in 3G WCDMA systems. Id. at Abstract. 1nterDigital owns that
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`patent and has asserted independent claim 1 and dependent claims 2-7 in this investigation.
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`The ’013 patent entitled “User Equipment Identification Specific Scrambling” issued on
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`May 19, 2009. ’O13patent (JX-3). The patent names Stephen G. Dick, Nader Bolourchi, and
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`Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink
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`Packet Access (HSDPA) used in 3G WCDMA systems. Id. at Abstract. InterDigital owns
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`the ’013 patent and has asserted independent claim 16 and dependent claims 17-19 in this
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`investigation. The ’O13patent is related to the ’127 patent and the two patents are referred to as
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`the “UE ID” patents.
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`1 0
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`PUBLIC VERSION
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`The ’970 patent entitled “Dual Mode Unit for Short Range, High Rate and Long Range,
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`Lower Rate Data Communications” issued on November 10, 2009. ’970 patent (JX-5). The
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`patent names Thomas E. Gorsuch as the inventor. The patent describes short-range, higher speed
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`and long-range, lower speed wireless communications.
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`Id. at Abstract. The ’97Opatent is
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`referred to as the “Dual Mode Subscriber” patent. InterDigital owns the patent and has asserted
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`independent claims 1 and 10, and dependent claims 2-9 and 11-18 in this investigation. 4
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`C.
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`Products at Issue
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`lnterDigital has accused about 150 devices of infringement in this investigation. ID at 7.
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`Each of the accused products is designed to operate with either the WCDMA standard, the
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`CDMAZOOOstandard, or both standards. Id. The accused products can be grouped into three
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`categories according to the baseband processor used in the device: the “Qualcomm accused
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`products” use baseband processors developed by Qualcomm, the “Nokia/TI accused products”
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`use baseband processors developed by Nokia and manufactured by Texas Instruments, and the
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`[
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`] Id. For a
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`complete list of accused products, see ID at 7-15.
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`4 As noted above, the ALJ found that the ’970, ’0l3, and ’127 patents are invalid in view
`of the prior art. InterDigital petitioned for review of the ALJ’s findings with respect to the ’970
`patent but did not petition for review of the findings regarding the ’Ol3 patent or ’127 patent. By
`not petitioning for review of the findings pertaining to the ‘O13and ’127 patents, InterDigital has
`waived its right to challenge those findings. Allied Corp. v. U S. Int ’l Trade Comm ’n, 850 F.2d
`1573, 1580 (Fed. Cir. 1988). With respect to the ’970 patent, the Commission finds
`InterDigital’s petition unpersuasive and adopts the ALJ’s findings.
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`11
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`PUBLIC VERSION
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`III.
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`DISCUSSION OF ISSUES UNDER REVIEW
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`The Power Ramp-Up Patents (’830 & ’636 Patents)
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`InterD1g1talhas asserted independent claim 1 and dependent claims 2, 3, and 5 of
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`the ’830 patent 1Ilthis investigation. Claim 1 of the ’830 patent recites:
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`1 A wireless code division multiple access (CDMA) subscriber unit
`comprising:
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`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
`sends transmissions prior to the subscriber unit receiving from the
`base station an indication that at least one of the successively sent
`transmissions has been detected by the base station;
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`wherein each of the successively sent transmissions is produced using
`a sequence of chips, wherein the sequence of chips is not used to
`increase bandwidth;
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`the transmitter further configured such that the transmitter sends 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 sent only subsequent to the subscriber unit receiving
`the indication;
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`two of the successively sent
`least
`wherein at
`produced using different sequences of chips;
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`transmissions are
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`wherein each of the successively sent transmissions is shorter than the
`message; and
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`wherein each of the successively sent transmissions and the message
`are produced using portions of a same sequence of chips, wherein the
`same sequence of chips is not used to increase bandwidth.
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`830 patent, col 10, l. 54 —col. ll,
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`l. 16 (claim 1) (emphasis added).
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`InterD1g1talalso asserted independent claim 1 and dependent claims 2, 4, and 6-8 of
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`12
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`PUBLIC VERSION
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`the 636 patent in this investigation. Claim 1 of the ’636 patent recites:
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`1 A wireless code division multiple access (CDMA) subscriber unit
`comprising:
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`a transmitter configured such that, when the subscriber unit is first
`accessing a CDMA network,
`the transmitter successively sends
`transmissions wherein each of the transmissions are derived from a
`first length of a plurality of chips until the subscriber unit receives
`from a base station associated with the network an indication that at
`least one of the transmissions has been detected by the base station;
`and
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`to the
`subsequent
`further configured such that,
`the transmitter
`sends a
`receiving the indication,
`the transmitter
`subscriber unit
`subsequent transmission derived from a second length of the plurality
`of chips, wherein the first length is less than the second length.
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`636 patent, col 10, ll. 48 —64 (claim 1) (emphasis added).
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`1 Construction of Disputed Claim Terms
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`a Applicable Law on Claim Construction
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`Claim construction begins with the plain language of the claim. Claims should be given
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`their ordinary and customary meaning as understood by a person of ordinary skill in the art,
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`viewing the claim terms in the context of the entire patent. Phillips v. AWHCorp, 415 F.3d
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`1303 1312-13 (Fed. Cir. 2005) (en banc).
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`In some instances, claim terms do not have particular meaning in a field of art, and claim
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`construction involves little more than the application of the widely accepted meaning of
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`commonly understood words. Phillips, 415 F.3d at 1314. “ln such circinnstances, general
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`purpose dictionaries may be helpful.” Id. In many cases, however, claim terms have a
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`specialized meaning, and it is necessary to determine what a person of skill in the art would have
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`understood the disputed claim language to mean. Id. “Because the meaning of a claim term as
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`13
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`PUBLIC VERSION
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`understood by persons of skill in the art is often not immediately apparent, and because patentees
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`frequently use terms idiosyncratically, the coult looks to ‘those sources available to the public
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`that show what a person of skill in the art would have understood disputed claim language to
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`mean.’” Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111
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`1116 (Fed. Cir. 2004)). The public sources identified in Phillips include “the Words of the
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`claims themselves, the remainder of the specification, the prosecution history, and extrinsic
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`evidence concerning relevant scientific principles, the meaning of technical terms, and the state
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`of the art.” Id.
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`In cases in which the meaning of a claim term is uncertain, the specification usually is the
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`best guide to the meaning of the term. Id. at 1315. As a general rule, the particular examples or
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`embodiments discussed in the specification are not to be read into the claims as limitations.
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`Markrnan v. WestviewInstruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), afi”d, 517
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`U.S. 370 (1996). The specification is, however, always highly relevant to the claim construction
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`analysis, and is usually dispositive. Phillips, 415 F.3d at 1315 (quoting Viironics Corp. v.
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`Conceplronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Moreover, “[t]he construction that
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`stays true to the claim language and most naturally aligns with the patent’s description of the
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`invention will be, in the end, the correct construction.” Id. at 1316.
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`Claims are not necessarily, and are not usually, limited in scope to the preferred
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`embodiment. RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1263 (Fed. Cir.
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`2003); Decisioningcom,
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`Inc. v. Federated Dep ’tStores, Inc., 527 F.3d 1300, 1314 (Fed. Cir.
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`2008) (“[The] description of a preferred embodiment, in the absence of a clear intention to limit
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`14
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`PUBLIC VERSION
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`claim scope, is an insufficient basis on which to narrow the claims”). Nevertheless, claim
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`constructions that exclude the preferred embodiment are “rarely, if ever, correct and require
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`highly persuasive evidentiary support.” Vitronics, 90 F.3d at 1583. Such a conclusion can be
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`mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a
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`clear disclaimer by the patentees during patent prosecution. Elekta Instrument S.A. v. 0. U.R. Sci.
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`Int ’l,Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed.
`
`Cir. 2002).
`
`If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence
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`may be considered. Extrinsic evidence consists of all evidence external to the patent and the
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`prosecution history, and includes inventor testimony, expert testimony, and learned treatises.
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`Phillips, 415 F.3d at 1317. Inventor testimony can be useful to shed light on the relevant art. In
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`evaluating expert testimony, a court should discount any expert testimony that is clearly at odds
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`with the claim construction mandated by the claims themselves, the written description, and the
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`prosecution history. Id. at 1318. Extrinsic evidence may be considered if a court deems it
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`helpful in detennining the true meaning of language used in the patent claims. Id.
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`b. Construction of the Claim Term “SuccessivelySends Transmissions”
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`i. The ID
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`The claim term “successively sends transmissions” appears in the asserted claims of both
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`the ’83O and ’636 patents. See ’830 patent (JX-6) at col. 10,1. 54 —col. 11,1. 16; ’636 patent
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`(JX-7) at col. 10, ll. 49-63. The ALJ construed the claim term to mean “transmits to the base
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`station, one after the other, codes that are shorter than a regular length code,” adopting the
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`15
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`
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`PUBLIC VERSION
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`construction proposed by the Adjudicated Respondents. ID at 22-25. In construing the claim
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`term, the ALJ pointed to the specification and noted that it describes “transmissions” from the
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`subscriber unit to the base station as follows:
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`As the base station 14 transmits the pilot code 40 (step 100), the
`base station 14 searches (step 101) for an “access code” 42
`transmitted by a subscriber unit 16. The access code 42 is a known
`spreading code transmitted from a subscriber unit 16 to the base
`station 14 during initiation of communications and power ramp-up.
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`’830 patent, col. 6, ll. 14-20. The ALJ further referenced the specification’s description of a
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`preferred embodiment:
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`The preferred embodiment of the present invention utilizes ‘short
`codes’ and a two-stage communication link establishment
`procedure to achieve fast power ramp-up without large power
`overshoots. The spreading code transmitted by the subscriber unit
`16 is much shorter than the rest of the spreading codes (hence the
`term short code), so that the number of phases is limited and the
`base station 14 can quickly search through the code. The short
`code used for this purpose carries no data.
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`Id. at col. 7, lns. 36-44. The ALJ concluded that “[t]hese passages from the ’830 specification
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`make clear that the claimed ‘transmissions’ from the subscriber unit to the base station comprise
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`codes” and that at “no point does the specification indicate that the claimed transmissions are
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`generalized ‘RF emissions,’ as proposed by InterDigital.” ID at 24 (citing Compls. Br. at 38-39).
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`The ALJ further found that the patents “disclose that the codes successively transmitted
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`during the random access process (i.e., the short codes) are neither modulated with data, nor used
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`to modulate data.” ID at 24-25 (citing RX-3526C (Lanning WS) at Q69,Q92-95, Q130-132;
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`CX-1309C (Jackson WS) at Q625; Jackson Tr. 119, 177, 178; Haas Tr. 1822, 1823-1826; RX
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`3999C (Lanning RWS) at Ql32-134, Ql41-143; see also InterDz'gital C0mmc’ns, LLC v. Int ’l
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`16
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`
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`PUBLIC VERSION
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`Trade Comm ’n, 690 F.3d 1318, 1326 (Fed. Cir. 2012) (“As noted, the specification describes
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`various codes, such as pilot codes and short codes, as ‘spreading codes’ even though they carry
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`no data and are not intended to do so.”); id. at 1326 ‘(findingthat experts confirmed that the short
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`codes and the access codes described in the specification do not spread, or modulate, data)).
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`That is, the ALJ found that the “codes” themselves are what are successively transmitted, not
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`codes modulated with data.
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`The ALJ discounted lnterDigital’s argument that “Respondents’ expert Mr. Lanning
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`defines the term ‘code’ as used in Respondents’ construction as a specific type of code,
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`specifically one that is “not modulated by data,”’ stating that the phrase “not modulated by data”
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`does not appear in any of Adjudicated Respondents’ proposed constructions. ID at 25. The ALJ
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`observed that “Mr. Lamiing does not distinguish codes that can be modulated by data from those
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`that cannot be modulated by data.” Id. Rather, “Mr. Larming testified that a code modulated by
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`data is no longer a code, i.e., the transmission of a code modulated by data is not the transmission
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`of a code.” Id. (citing RX-3999C (Lamiing RWS) at Q152).
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`ii.
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`InterDigital’s Petition
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`InterDigital filed a petition for review, challenging the ALJ’s claim construction and
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`arguing that the ALJ improperly restricts the plain meaning of the word “transmission.”
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`InterDigital Pet. at 11. According to InterDigital, “transmission” means “RF emissions” or
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`“signals,” not “codes shorter than a regular length code,” as construed by the ALJ. Id.
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`Specifically, InterDigital contends that nothing in the intrinsic evidence suggests that the
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`patentees intended to limit the ordinary meaning of “transmission” and accuses the ALJ of
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`17
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`
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`PUBLIC VERSION
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`violating the basic rule of claim construction by permitting a preferred embodiment to restrict the
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`ordinary meaning of the claim term. Id. at 17-18 (citing ID at 23-24).
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`InterDigital further argues that the intrinsic evidence supports its construction and points
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`to the original application from which the patents derive. Id. at 19. That application included
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`claims reciting “transmitting a periodic signal” and according to InterDigital shows that the
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`specification contemplates “transmitting ‘signals,’ which requires a broader construction of the
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`claim term ‘transmissions’ than the ALJ’s construction of ‘codes that are shorter than a regular
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`length code.” Id. InterDigital also argues that the ALJ observed incorrectly that under its
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`proposed construction the claim “tenn ‘transmissions’ can be generalized ‘RF emissions?” Id.
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`at 21 (emphasis omitted). InterDigital asserts that the claim itself, particularly the surrounding
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`language, make clear that the RF emissions are specific and not general. Id. (citing ’830 patent,
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`claim 1).
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`iii. Adjudicated Respondents’ Response
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`In response, the Adjudicated Respondents argue that the ALJ’s construction finds support
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`in the intrinsic evidence, expert testimony, and the Federal Circuit’s opinion in a related
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`investigation, InterDigital Comma ‘ns, LLC v. Int ’l Trade Comm ’n, 690 F.3d 1318, 1326 (Fed.
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`Cir. 2012) (“InterDigital I”). Resp. Rep. at 5. Adjudicated Respondents point o
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