Exhibit 1010
`
`ZTE Corporation and ZTE (USA) Inc.
`
`
`
`ZTE Corporation and ZTE (USA) Inc.
`
`
`
`PUBLIC VERSION
`
`In the Matter of
`
`Investigation No. 337-TA-800
`
`
`
`
`CERTAIN WIRELESS DEVICES WITH 3G
`
`CAPABILITIES AND COMPONENTS
`
`THEREOF
`
`COMMISSION OPINION
`
`I.
`
`INTRODUCTION
`
`On June 28, 2013, the presiding administrative law judge (“ALJ”) (Judge Shaw) issued
`
`his final initial determination (“ID”) in this investigation} The ALJ found no violation of
`
`section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, as amended, by respondents Huawei
`
`Technologies Co., Ltd. of Shenzhen, China; Huawei Device USA of Plano, Texas (“Huawei
`
`Device”); FutureWei Technologies, Inc. d/b/a Huawei, Technologies (USA) of Plano, Texas
`
`(together “Huawei”); Nokia Corporation of Espoo, Finland; Nokia Inc. of White Plains, New
`
`York (together “Nokia”); ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of
`
`Richardson, Texas (together “ZTE”) (collectively, “Adjudicated Respondents”) in connection
`
`with claims 1, 2, 3, and 5 of U.S. Patent No. 7,706,830 (“the ’830 patent”); claims 1, 2, 4, and 6-
`
`8 of U.S. Patent No. 8,009,636 (“the ’636 patent”); claims 6, I3, 20, 26, and 29 of U.S. Patent
`
`No. 7,502,406 (“the ’406 patent”); claims 2-4, 7-11, 14, 22-24, and 27 ofU.S. Patent No.
`
`7,706,332 (“the ’332 patent”); claims 1-7 of U.S. Patent No. 7,970,127 (“the ’127 patent”);
`
`claims 16-19 ofU.S. Patent No. 7,536,013 (“the ’013 patent”); or claims 1-18 of U.S. Paten.t No.
`
`7,616,970 (“the ’970 patent”). On September 4, 2013, the Commission determined to review the
`
`1 The ID was served on July 1, 2013.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00001
`
`
`
`PUBLIC VERSION
`
`final ID in its entirety and requested briefing on a single issue concerning domestic industry. 78
`
`Fed. Reg. 55294 (Sept. 10, 2013).
`
`Upon review of the ID, the Commission has determined to affirrn the ALJ’s finding of no
`
`-vwlation ofsection 337 as to‘the Adjudicated Respondents, 1'.e., Huawei, Nokia, and ZTE.
`
`Specifically, with respect to the Power Ramp-Up patents (the ’83O and ’636 patents), the
`
`Commission (1) affirms the ALJ’s findings that the accused products do not satisfy the
`
`“successively sends transmissions” limitation as construed to mean “transmits to the base station,
`
`one after the other, codes that are shorter than a regular length code” to the extent that the
`
`- “successively sends transmissions” refer to the short codes and (2) for the ’636 patent vacates the
`
`ALJ’s findings regarding the “subsequenttransmission” limitation. With respect to the Power
`
`Control Eajgnts (the ’406 and ’332 patents), the Commission modifies the ALJ’s construction of
`
`the claim term “power control bit” to mean “single—bit power control information transmltted at
`
`an APC data rate equivalent to the APC update rate” and construes the limitation to encompass
`
`only “single-bit power control information.” The Commission adopts the ALJ’s findings that
`
`the ’ 127, ’0l3, and ’97O patents are irlalid in view of prior art. The Commission supplements
`
`and modifies the ID as discussed below.
`
`T The Commissionlnotes that this investigation is still pending with respect to certain
`
`respondents. Thus, except for non-infringement of Adjudicated Respondents’ products, all
`
`issues pertaining to the Power Ramp-Uppatents (the ’406 and ’332 patents) and Power Control
`
`patents (the ’830 and ’636 patents) including domestic industry continue to remain under review.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00002
`
`
`
`PUBLIC VERSION
`
`II.
`
`BACKGROUND
`
`A.
`
`Procedural History
`
`The Commission instituted this investigation on August 31, 2011, based on a complaint
`
`filed by g of Prussia, Pennsyiliuiiagz
`
`InterDigital Technology Corporation of Wilmington, Delaware; and IPR Licensing, Inc. of
`
`Wilmington, Delaware (collectively, “InterDigita1”). 76 Fed. Reg. 54252 (Aug. 31, 2011). The
`
`complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in the
`
`importation into the United States, the sale for importation, and the sale within the United States
`
`a er importation of certain wireless devices with 3G capabilities and components thereof that
`
`i
`
`6
`
`ringe one or more of claims 1-15 of U.S. Pate
`
`, 13, 15-16, 20-22, 26, 28-30, 34-36, and 40-die ’406 patent; claims 1-19 o_fthe ’013 patent;
`
`0. 7,349,540 (“the ’54O patent”); claims 1, 2,
`
`claims 1-18 of the ’970 patent; clafis 1-27 of the ’332 patent; claims 1-3, 5-8, 10, 16-18, 20-23,
`
`and 25 of the ’830 patent; and claims 1-14 of the ’l27 patent. Id. The notice of investigation
`
`named the following respondents: Huawei (except Huawei Device), Nokia, and ZTE. Id.
`
`The Office of Unfair Import Investigations (“OUII”) was also named as a party to this
`
`investigation. However, pursuant to the Supplement to the Strategic Human Capital Plan 2009-
`
`2013, issued by the Commission on January 18, 2012, OUII provided notice that its participation
`
`‘terDigital 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 InterDigital
`Communications, Inc. The ALJ 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 Compla ants’ Motion for Leave
`
`to Amend the Complaint and Notice ofInvestigation (Feb. 4, 2013).
`
`T
`
`3
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00003
`
`
`
`PIFBLIC VERSION
`
`in this investigation “will be limited to issues relating to U.S. Patent Nos. 7,349,540, 7,536,013,
`
`and 7,970,127, as well as issues relating to Respondents’ patent misuse and/or FRAND defenses.”
`
`See Commission Investigative Staffs Notice of Partial Participation (Jan 18, 2012).
`
`On December 5, 2011, the ALJ issue ita1 to amend
`
`the complaint and notice ofinvestigationI) to add allegations ofinfringement ofclaims 1-4, 6-9,
`
`and 29-31 of the ’636 patent and (2) to name LG Electronics, Inc. ; LG Electronics U.S.A., Inc.;
`
`and LG Electronics Mobilecomm U.S.A., Inc. (collectively, “LG”) as respondents. See Order
`
`No. 5 (Dec. 5, 2011). The Commission determined not to review. See Notice of Commission
`
`Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave
`
`to Amend the Complaint and Notice of Investigation (Dec. 21, 2011); 76 Fed. Reg. 81527 (Dec.
`
`28, 2011).
`
`On April 11, 2012, the ALJ issued an ID, granting a motion by LnterDigital to amend the
`
`comp uawei Device as a respondent. See Order No. 19
`
`(Apr. 11, 2012). The Commission determined not to review. See Notice of Commission
`
`Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave
`
`to Amend the Complaint and Notice of Investigation (May 1, 2012); 77 Fed. Reg. 26788 (May 7,
`
`2012).
`
`On June 4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to
`
`terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June
`
`4, 2012). The Commission determined not to review. See Notice of Commission Determination
`
`Not to Review an Initial Determination Terminating Certain Respondents From the Investigation
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00004
`
`
`
`PUBLIC VERSION
`
`(July 6, 2012). InterDigital appealed LG’s termination from the investigation, and the Federal
`
`Circuit reversed the Commission’s determination. Im‘erDigz'taZ Commc ’ns, LLC v Int’! Trade
`
`Comm ’n, 718 F.3d 1336 (Fed. Cir. 2013). LG subsequently filed a combined petition for panel
`
`rehearing and rehearing en banc. On October 3, 2013, the Court denied the petition.
`
`Im‘erDz'gz'tal
`
`Commc ’ns, LLC v. Int 7 Trade Comm 71, No. 12-1628 (Fed. Cir. Oct. 3, 2013). -The mandate
`
`issued on October 10, 2013, returning jurisdiction to the Commission. This investigation is still
`
`pending as to LG.
`
`On July 24, 2012, the ALJ granted a motion by InterDigital to terminate the investigation
`
`in part as to claims 1-15 of the ’0l3 patent; claims 8-14 of the ’ 127 patent; all claims of the ’540
`
`patent; claims 1, 2, 9, 16, 28, 30, 34-36, and 40 of the ’406 patent; claims 5, 6, 12, 13, 15-20, 25,
`
`afl the ’830 patent. See Order No. 38
`
`(July 24, 2012). The Commission determined not to review. See Notice of Commission
`
`Determination Not to Review an Initial Determination Terminating Certain Claims From the
`
`Investigation (Aug. 9, 2012).
`
`On January 3, 2013, the ALJ granted a motion by InterDigital to terminate the
`
`investigation in part as to claims 7, 8, 15, 21, and 22 of the ’406 patent; claims 1 and 21 of
`
`the ’332 patent; and claims 6-8 and 10 ofthe ’830 patent. See Order No. 87 (Jan. 3, 2013). The
`
`Commission determined not to review. See Notice of Commission Determination Not to Review
`
`an Initial Determination Terminating Certain Claims From the Investigation (Jan. 23, 2013).
`
`The ALJ held an evidentiary hearing from February 12, 2013 through February 22, 2013,
`
`and thereafter received post-hearing briefing from the parties.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00005
`
`
`
`PUBLIC VERSION
`
`On June 28, 2013, the ALJ issued his final ID, finding no violation of section 337 by the
`
`Adjudicated Respondents. Specifically, the ALJ found that the Commission has subject matter
`
`jurisdiction, in rem jurisdiction over the accused products, and in personam jurisdiction over the
`
`respondents. ID o found that the importation requirement of section 337 (19
`
`U.S.C. § 1337(a)(1)(B)) has been satisfied. Id at 16. The ALJ, however, found that the
`
`Adjucied Respondents’ accused products do not infringe asserted claims 1-3 and 5 of the ’830
`
`patent; asserted claims 1, 2, 4, 6, 7, and 8 of the ’636 patent; asserted claims 6, 13, 20, 26, and 29
`
`of the ’406 patent; asserted claims 2-4, 7-11, 14, 22-24, and 27 of the ’332 patent; asserted
`
`claims
`
`-7 of the ’l27 patent; asserted claims 16-19 of the ’0l3 patent; or asserted claims 10-18
`
`ofthe ’ 70 patent. See ID at 59-69, 141-168, and 240-257.
`
`he ALJ conclude oducts satisfy each
`
`limitation of claims 1-9 of the ’970 patent but found that all the asserted claims, claims 1-18, of
`
`the ’970 patent are invalid in View of the prior art. See id at 315-339, 345-381. Healso found
`
`that asserted claims 1-7 of the ’ 127 pater]; and asserted claims 16-19 of the ’013 patent are
`
`invalid in View of the prior art. See id. at 260-286. The ALJ found that the Adjudicated
`
`Respondents failed to establish by clear and convincing evidence that the asserted claims of
`
`the ’830, ’63 6, ’406 or ’332 patents were invalid in light of the cited prior art references. See id
`
`at 74-94, 191-208. The ALJ also found that the Adjudicated Respondents failed to prove that
`
`they hold licenses under the asserted patents and failed to prevail on their equitable/FRAND
`
`defenses.
`
`The ALJ further found that InterDigital established the existence of a domestic industry
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00006
`
`
`
`PUBLIC VERSION
`
`that practices the asserted patents under 19 U.S.C. § 1337(a)(2). See ID at 20, 31, 45, and 58.
`
`The ALJ issued his recommended determination on remedy and bonding on July 10, 2013.
`
`On July 15, 2013, InterDigital filed a petition for review of the ID, challenging a number
`
`o s. See Complainant InterDigital’s Petition for Review of the Final Initial
`
`Determination (“InterDigital Pet.”). Specifically, InterDigital sought review of the ALJ’s finding
`
`that the accused products do not infringe the asserted claims of the ’830, ’636, ’406, and ’332
`
`patents. Id.
`
`InterDigital also challenged the ALJ’s finding that the ’970 patent is invalid in view
`
`of the cited prior art. Id. Also on July 15, 2013, the Commission investigative attorney and the
`
`Adjudicated Respondents filed separate petitions for review challenging the ALJ’s finding that
`
`InterDigital established the presence of a domestic industry that practices the asserted patents.
`
` ination
`
`on Violation of Section 337; See Respondents’ Petition for Review on Domestic Industry and
`
`Contingent Petition for Review of Cther Issues. Respondents also filed a contingent petition for
`
`review. See id.
`
`On July 23, 2013, the parties filed responses to the petitions for review. See Respondents’
`
`Response to InterDigita1’s Petition for Review of the Initial Determination on Violation (“Resp.
`
`Rep.”); Respondents’ Response to Office of Unfair Import Investigations’ Petition for Review of
`
`' the Initial Determination on Violation of Section 337; Complainant InterDigital’s Response to
`
`the Respondents’ and the Staffs Petitions for Review of the Final Initial Determination;
`
`Response of the Office of Unfair Import Investigations to the Private Parties’ Petition for Review
`
`of the Initial Determination on Violation of Section 337.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00007
`
`
`
`PUBLIC VERSION
`
`On September 4, 2013, the Commission determined to review the final ID in its entirety
`
`and requested briefing on a single issue concerning domestic industry. 78 Fed. Reg. 55294 (Sept.
`
`10, 2013).
`
`On Septenb s§ons on the issue under review.
`
`See Complainant InterDigital’s Response to Notice of Commission Determination to Review,
`
`Dated September 4, 2013; Response of the Office of Unfair Import Investigations to the
`
`Commission’s Question; Respondents’ Brief Addressing Domestic Industry Issues Raised in
`Commission’s Decision of September 4, 2013. On October 21, 2013, the parties filed reply
`
`submissions.3 See Complainant InterDigita1’s Reply Regarding the Notice of Commission
`
`Determination to Review, Dated September 4, 2013; Reply of the Office of Ufi Import
`
`Investigatio_ns_t;Lthe parties’ dents’ Reply
`BriefAddressing Domestic Industry Issues Raised in Comission’s Notice of September 4,
`
`2013.
`
`B.
`
`Patents and Technology at Issue
`The technology at issue in this investrlation generally relates to wireless commufions
`
`devices with Third Generation (“3G”) cellular capabilities, and components thereof. ID at 7
`
`(citing CX-1310C (Prucnal WS) at Q58). 3G describes a family of technologies that fulfills the
`
`International Mobile Telecommunications-2000 specifications (“IMT—2000”) defined by the
`
`International Telecommunication Union (“ITU”). Id. Two of the most widely adopted 3G
`
`systems are based on code division multiple access (“CDMA”) technology, 1'. e., Wideband
`
`3 The delay in filing responses was due to the government shutdown.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00008
`
`
`
`PUBLIC VERSION
`
`CDMA (“WCDMA”) developed by the Third Generation Partnership Project (“BGPP”) and
`
`CDMA2000 developed by the Third Generation Partnership
`
`ject 2 (“3GPP2”). Id.
`
`The ’830 patent entitled “Method and Subscriber Uni
`
`r Performing an Access
`
`Procedure" issued on April 27', 2010. The patent names Fati
`
`. Ozluttlfli and Gary R. Lomp as
`
`the inventors.
`
`’830 patent (JX-6). The patent describes a way in which a subscriber unit gains
`
`access to a cellular CDMA system. Id. at Abstract.
`
`lnterDigital owns the patent and has asserted
`
`independent claim 1 and dependent claims 2, 3, and 5 in this investigaj
`
`The ’636 patent entitled “Method and Apparatus for Performing an Access Procedure”
`
`issued on August 30, 20
`
`.
`
`’636 patent (JX-7). The patent names Fatih Ozluturk and Gary R.
`
`Lomp as the inventors.
`
`e patent describes a way in which a subscriber unit gains access to a
`
`cellular CDMA sysjgmi.
`
`. at Abstract. InterDigital owns the ’636 patent and has asserted.
`
`independent claim 1 and dependent claims 2 and 4-8 in this investigation. The ’636 patent and
`
`the ’830 patent are related to the same technology, and share a common specification. The
`
`patents are collectively referred to as the “Power Ramp-Up” patents.
`
`The ’406 patent, entitled “Automatic Power Control System for a Code Division Multiple
`
`Access (CDMA) Communications System” issued on March 10, 2009.
`
`’406 patent (IX-1). The
`
`patent names Gary Lomp, Fatih Ozluturk, and John Kowalski as the inventors. The patent
`
`describes automatic power control for a CDMA system. Id. at Abstract. InterDigital owns the
`
`patent and has asserted independent claim 29 and dependent claims 6, 13, 20, and 26, which
`
`depend respectively from independent claims 1, 7, 15, and 21, and dependentclaim 22 in this
`
`investigation.
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00009
`
`
`
`PUBLIC VERSION
`
`The ’332 patent entitled “Method and Subscriber Unit for Performing Power Control”
`
`issued on April 27, 2010. ’332 patent (JX-2). The patent names Fatih Ozluturk and Gary Lomp
`
`as the inventors. The patent describes a way in which subscriber units and base stations
`
`comraun1'cate to control-tlheipalwer level of trans
`
`'ssions from the base station to a subscriber
`
`unit within a cellular CDMA system. Id. at Abs
`
`ct.’ InterDigital owns the ’332 patent and has
`
`asserted independent claim 8 with its dependent
`
`ims 9, 10, 11, and 14, as well as dependent
`
`claims 2, 3, 4, 7, 22-24, and 27 in this investigation. These claims depend from non-asserted
`
`independent claims 1 and 21. The ’332 patent and the ’406 patent are related, and the two
`
`patents are collectively referredto as the “Power Clrol” patents.
`
`The ’ 127 patent, entitled “User Equipment
`
`ntification Specific Scrambling” issued on
`
`June 28, 2011. ’ es Stephen G. Dick, , and
`
`Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink
`
`Packet Access (HSDPA) used in 3G WCDMA systems.
`
`Id. at Abstract. InterDigital owns that
`
`patent and has asserted independent claim 1 and dependent claims 2-7 in this investigation.
`
`Th.g’QJ§.p.a;ent entitled “User Equipment Identification Specific Scrambling” issued on
`
`May 19, 2009. ’013 patent (JX-3). The patent names Stephen G. Dick, Nader Bolourchi, and
`
`Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink
`
`Packet Access (HSDPA) used in 3G WCDMA systems. Id. at Abstract. InterDigital owns
`
`the ’013 patent and has asserted independent claim 16 and dependent claims 17-19 in this
`
`investigation. The ’013 patent is related to the ’ 127 patent and the two patents are referred to as
`
`‘e “UIE ID” patents.
`
`10
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00010
`
`
`
`PUBLIC VERSION
`
`The ’97O pate
`
`entitled “Dual Mode Unit for Short Range, High Rate and Long Range,
`
`Lower Rate Data Co
`
`unications” issued on November 10, 2009. ’970 patent (JX-5). The
`
`patent names Thoma
`
`. Gorsuch as the inventor. The patent describes short-range, higher speed
`
`
`
`and long-ran
`
`ess communications. Id. at Abstract. The ’970 patent is
`
`referred to as the “Dual Mode Subscriber” patent. InterDigital owns the patent and has asserted
`
`independent claims 1 and 10, and dependent claims 2-9 and 11-18 in this investigation. 4
`
`C.
`
`Products at Issue
`
`InterDigital has accused about 150 devices of infringement in this investigation. ID at 7.
`
`Each of the accused products is designed to operate with either the WCDMA standard, the
`
`CDMA2000 standard, or both standards. Id The accused products canbe grouped 10 three
`
`categories according to the baseband processor usedi used
`
`products” use baseband processors developed by Qualcomm, the “Nokia/TI accused products”
`
`use baseband processors developed by Nokia and manufactured by Texas Instruments, and the
`
`[
`
`] Id. Fora
`
`complete list of accused products, see ID at 7-15.
`
`
`
`4 As noted above, the ALJ found that the ’970, ’013, and ’ 127 patents are invalid in view
`of the prior art. InterDigital petitioned for review of the ALJ ’s findings with respect to the ’97O
`patent but did not petition for review of the findings regarding the ’013 patent or ’ 127 patent. By
`not petitioning for review of the findings pertaiigmg to the ’01 3 and ’ 127 patents, InterDigital has
`waived its right to challenge those findings. Allied Corp. v. U. S. Int’! Trade Comm ’n, 850 F.2d
`1573, 1580 (Fed. Cir. 1988). With respect to the ’970 patent, the Commission finds
`InterDigita1’s petition unpersuasive and adopts the ALJ’s findings.
`
`11
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00011
`
`
`
`PUBLIC VERSION
`
`III.
`
`DISCUSSION OF ISSUES UNDER REVIEW
`
`A.
`
`The Power Ramp-Up Patents (’830 & ’636 Patents)
`
`InterDigital has asserted independent claim 1 and dependent claims 2, 3, and 5 of
`
` 0 patent recites:
`
`1. A wireless code division multiple access (CDMA) subscriber unit
`comprising:
`
`a transmitter configured sjat, 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;
`
`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; !
`
`the transmitter fiirther con igure 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;
`
`two of the successively sent
`least
`wherein at
`produced using different sequences of chips;
`
`transmissions are
`
`wherein each of the successively sent transmissions is shorter than the
`message; and
`
`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.
`
`’830 patent, col. 10, 1. 54 — col. 1 1, 1 16 (claim 1) (emphasis added).
`
`InterDigital also asserted independent claim 1 and dependent claims 2, 4, and 6-8 of
`
`12
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00012
`
`
`
`PUBLIC VERSION
`
`the ’636 patent in this investigation. Claim 1 of the ’636 patent recites:
`
`1. A wireless code division multiple access (CDMA) subscriber unit
`comprising:
`
`a transmitter configured such that, when the subscriber unit is first
`accessing a CDMA networ ,
`'
`r successively sends
`
`transmissions wherein each of the transm'hs 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
`
`to the
`subsequent
`further configured such that,
`the transmitter
`receiving the indication,
`the transmitter sends a
`subscriber unit
`subsequent transmission derived from a second length of the plurality
`of chips, wherein the first length is less than the second length.
`
`’636 patent, col. 10, ll. 48 — 64 (claim 1) (emphasis added).
`
`1. Construction of Disputed Claim Terms
`
`a. Applicable Law on Claim Construction
`
`Claim construction begins with the plain language of the claim. Claims should be given
`
`their ordinary and customary meaning as understood by a person of ordinary skill in the art,
`
`viewing the claim terms in the context of the entire patent. Phillips v. A WH Corp. , 415 F.3d
`
`1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`In some instances, claim terms do not have particular meaning in a field of art, and claim
`
`construction involves little more than the application of the widely accepted meaning of
`
`commonly understood words. Phillips, 415 F.3d at 1314. “In such circumstances, general
`
`purpose dictionaries may be helpful.” Id.
`
`In many cases, however, claim terms have a
`
`specialized meaning, and it is necessary to determine what a person of skill in the art would have
`
`understood the disputed claim language to mean. Id. “Because the meaning of a claim term as
`
`13
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00013
`
`
`
`PUBLIC VERSION
`
`understood by persons of skill in the art is often not immediately apparent, and because patentees
`
`frequently use terms idiosyncratically, the court looks to ‘those sources available to the public
`
`that show what a person of skill in the art would have understood disputed claim language to
`
`mean.”’ Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
`
`1116 (Fed. Cir. 2004)). The public sources identified in Phillips include “the words of the
`
`claj,ms_themselves, the remainder of the specification, the prosecution history, and extrinsic
`
`evidence concerning relevant scientific principles, the me ical terms, and the state
`
`of the art.” Id.
`
`In cases in which the meaning of a claim term is uncertain, the specification usually is the
`
`best guide to the meaning of the term. Id. at 1315. As a general rule, the particular examples or
`
`embodimemsjisgussed in the specification are not to be
`
`Markman v. Wesrview Instruments, Inc, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), afi”a’, 517
`
`U.S. 370 (1996). The specification is, however, always highly relevant to the claim construction
`
`analysis, and is usually dispositive. Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Moreover, “[t]he construction that
`
`stays true to the claim language and most naturally aligns with the patent’s description of the
`
`invention will be, in the end, the correct construction.” Id. at 1316.
`
`Claims are not- necessarily, and are not usually, limited in scope to the preferred
`
`embodiment. RF Delaware, Inc. v. Pacific Keystone Techs, Inc., 326 F.3d 1255, 1263 (Fed. Cir.
`
`2003); Decisi0ning.c0m, Inc. v. Federated Dep’t Stores, Inc., 527 F.3d 1300, 1314 (Fed. Cir.
`
`2008) (“[The] description of a preferred embodiment, in the absence of a clear intention to limit
`
`14
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00014
`
`
`
`PUBLIC VERSION
`
`claim scope, is an insufficient basis on which to narrow the claims”). Nevertheless, claim
`
`constructions that exclude the preferred embodiment are “rarely, if ever, correct and require
`
`highly persuasive evidentiary support.” Vitronics, 90 F.3d at 1583. Such a conclusion can be
`
`mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a
`
`clear disclaimer by the patentees during patent prosecution. Elekta Instrument SA. v. 0. UR. Sci.
`
`Int ’I, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000); Rheax, 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
`
`may be considered. Extrinsic evidence consists of all evidence external to the patent and the
`
`prosecution history, and includes inventor testimony, expert testimony, and learned treatises.
`
` .3d at 1317. Inventor testimony can be useful to shed light on the relevant art. In
`
`evaluating expert testimony, a court should discount any expert testimony that is clearly at odds
`
`with the claim construction mandated by the claims themselves, the written description, and the
`
`prosecution history. Id. at 1318. Extrinsic evidence may be considered if a court deems it
`
`helpful_in determining the true meaning of language used in the patent claims. Id.
`
`b. Construction of the Claim Term “Successively Sends Transmissions”
`
`i. The ID
`
`The claim term “successively sends transmissions” appears in the asserted claims of both
`
`the ’830 and ’636 patents. See ’830 patent (JX-6) at col. 10, l. 54 — col. 11, I. 16; ’636 patent
`
`(JX-7) at col. 10, 11. 49-63. The ALJ construed the claim term to mean “transmits to the base
`
`station, one after the other, codes that are shorter than a regular length code,” adopting the
`
`15
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00015
`
`
`
`PUBLIC VERSION
`
`construction proposed by the Adjudicated Respondents. ID at 22-25. In construing the claim
`
`term, the ALJ pointed to the specification and noted that it describes “transmissions” from the
`
`subscriber unit to the base station as follows:
`
`As the base station 14 transmits the pilot code 40 (step 100), t e
`base station 14 searches (step 101) for an “access code” 42
`
`transmitted by a subscriber unit 16. The access code 42 is a
`
`’830 patent, col. 6, 11. 14-20. The ALJ further referenced the specif1cation’s escription
`
`a
`
`preferred embodiment:
`
`
`
`The preferred embodiment of the present invention utilizes ‘s ort
`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 nit
`16 is much shorter than the rest of the spreading codes (hence he
`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.
`
`Id. at col. 7, lns. 36-44. The ALJ concluded that “[t]hese passages from the ’830 specification
`
`make clear that the claimed ‘transmissions’ from the subscriber unit to the base station comprise
`
`codes” and that at “no point does the specification indicate that the claimed transmissions are
`
`generalized ‘RF emissions,’ as proposed by InterDigital.” ID at 24 (citing Compls. Br. at 38-39).
`
`The ALJ further found that the patents “disclose that the codes successively transmitted
`
`during the random access process (z'. e. , the short codes) are neither modulated with data, nor used
`
`to modulate data.” ID at 24-25 (citing RX-3526C (Lanning WS) at Q69,Q92-95, Ql30-132;
`
`CX-1309C (Jackson WS) at Q625; Jackson Tr. 119, 177, 178; Haas Tr. 1822, 1823-1826; RX-
`
`3999C (Lanning RWS) at Q132-134, Q14]-143; see also InterDigz'taZ Commc ’ns, LLC v. Int’!
`
`16
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00016
`
`
`
`PUBLIC VERSION
`
`Trade Comm ’n, 690 F.3d 1318, 1326 (Fed. Cir. 2012) (“As noted, the specfication describes
`
`various codes, such as pilot codes and short codes, as ‘spreading codes’ even though they carry
`
`no data an are not intended to do so.”); id. at 1326 ‘(finding that experts confirmed that the short
`
`Ac access codes described inthe specification do not spread, or modulate, data)).
`
`That is, the ALJ found that the “codes” themselves are what are successively transmitted, not
`
`codes modulated with data.
`
`The ALJ discounted InterDigital’s argument that “Respondents’ expert Mr. Lanning
`
`defines the term ‘code’ as used in Respondents’ construction as a specific type of code,
`393
`
`specifically one that is “not modulated by data,
`
`stating that the phrase “not modulated by data”
`
`does not appear in any of Adjudicated Respondents’ proposed constructions. ID at 25. The ALJ
`
`o “Mr. Lanning does not disti11guis be modulated by data from those
`
`that cannot be modulated by data.” Id. Rather, “Mr. Lanning testified that a code modulated by
`
`data is no longer a code, i. e. , the transmission of a code modulated by data is not the transmission
`
`of a code.” Id. (citing RX—3999C (Lanning RWS) at Q152).
`
`ii.
`
`InterDigital’s Petition
`
`lnterDigitaJ_filed a petition for review, challenging the ALJ’s claim construction and
`
`arguing that the ALJ improperly restricts the plain meaning of the word “transmission.”
`
`InterDigital Pet. at 11. According to InterDigital, “transmission” means “RF emissions” or
`
`“signals,” not “codes shorter than a regular length code,” as construed by the ALJ. Id.
`
`Specifically, InterDigital contends that nothing in the intrinsic evidence suggests that the
`
`patentees intended to it the ordinary meaning of “transmission” and accuses the ALJ of
`
`17
`
`ZTE Corporation and ZTE (USA) Inc.
`Exhibit 1010-00017
`
`
`
`PUBLIC VERSION
`
`violating the basic rule of claim construction by permitting a preferred embodiment to restrict the
`
`ordinary meaning of the claim term.
`
`Id. at 17-18 (citing ID at 23-24).
`
`InterDigital further argues that the intrinsic evidence supports its construction and points
`
`to the original application from which the patents derive. Id at 19. That application included
`
`claims reciting “transmitting a periodic signal” and according to InterDigital shows that the
`
`specification conte smitting ‘signals,’ which requires a broader construction of the
`
`claim term ‘transmissions’ than the ALJ’s construction of ‘codes that are shorter than a regular
`
`length code.” Id InterDigital also argues that the ALJ observed incorrectly that under its
`
`proposed construction the claim “term ‘transmissions’ can be gener ssions.”’ Id.
`
`at 21 (emphasis omitted). InterDigital asserts that the claim itself, particularly the surrounding
`
`laifuage,mak g ’830 patent,
`
`claim 1).
`
`iii. Adjudicated Respondents’ Response
`
`In response, the Adjudicated Respondents argue that the ALJ’s construction finds support
`
`in the intrinsic evidence, expert testimony, and the Federal Circuit’s opinion in a related
`
`investigation, InterDigital Commc ’ns, LLC v. Im"l Trade Comm ’n, 6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
