PUBLIC VERSION
`
`(Multiuser OFDM with Adaptive Subcarrier, Bit, and Power Allocation (10/1999); CX-1425
`
`(Adaptive Communications over Fading Satellite Channels (2001)); CX-1420 (TSGR1#12,
`
`Rl-556, Feasibility Study of Advanced Techniques for HSDPA). A person of ordinary skill in
`
`the art would certainly have understood how to use channelization code set and modulation
`
`information to recover payload data carried on a channel in a wireless system using adaptive
`
`modulation arid coding. ;.~X-1523C (Jackson RWS) at Q140. In particular, it would have been
`. <~·''
`well understood that the channelization code set would be used to identify from which
`
`HS-PDSCH channels to recover data, and that the modulation type would be used to determine
`
`the modulation type to use in demodulating those channels. Id. at Q142, Q154. A person of
`
`ordinary skill in the art would readily know what circuitry could be used to perform those
`
`operations, and would not have expected or needed the inventors of the' 127 patent to include
`
`such well-known information in the specification. Id. at Q139-142.
`
`The testimony of Respondents' expert Dr. Madisetti also supports the validity of the
`
`asserted claims. Dr. Madisetti testified that as of March 2002, the 3GPP Release 5 Specifications
`
`disclosed the element "wherein the control information is used for decoding a high speed
`
`physical downlink shared channel (HS-SCCH)" in connection with the '013 patent. RX-3520C
`
`(Madisetti WS) at Q781. He further testified that in the design of HSDP A, it was contemplated
`
`that a user equipment would use the channelization code set as well as the modulation type, i.e.,
`
`the control information, to recover the payload data from the HS-PDSCH. Madisetti Tr.
`
`985-986. Dr. Madisetti also testified that the intention was for a user equipment to use the
`
`channelization code set information to identify the HS-PDSCHs from which the user equipment
`
`would keep data to pass to the next layer. Madisetti Tr. 986. Inasmuch as there is no dispute
`
`that the details in the 3GPP ,Release 5 technical specification 'from March 2002 were already
`
`288
`
`Exhibit 1011-00300
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`well-known to persons of ordinary skill in the art as of March 2002, the claims of the' 127 patent
`
`are not invalid for lack of written description. See, e.g., Madisetti Tr. 989.
`
`. Second, with respect to recovering payload data "irrresponse to the HS-SCCH including
`
`-,
`
`""'>:'.:
`
`[certain] bits," the' 127 patent, as well as its ancestor the '579 patent, disclose as follows:
`
`To obtain its Part-1 information, each HSDPA UE monitors up to four
`. HS-SCC}Is'_ for its information. The information for a particular UE is
`distingui~~ed from other UEs by its UE identification (UE ID) specific
`scramblin~''sequence. The UE processes each monitored HS-SCCH with
`its UE ID specific scrambling sequence to detect the HS-SCCH intended
`for the UE. After processing, the UE determines on which HS-SCCH, if
`any, information was carried using its scrambling sequence. The UE
`descrambles the data carried on Part-I of its HS-SCCH using its
`scrambling sequence.
`
`JX-0004 (' 127 patent) at col. 1, lns. 40-49; JX-0034 ('579 patent) at col. 1, Ins. 31-41.
`
`This excerpt confirms that the UE uses its UE ID specific scrambling sequence to
`
`determine if control information is intended for it. As discussed above, that control information
`
`is then used to recover the payload data from the HS-PDSCH. InterDigital's expert Dr. Jackson
`
`explained that a person of ordinary skill in the art would understand that the purpose of this
`
`determination is to allow the UE to recover payload data designated by a particular HS-SCCH in
`
`response to detecting that the particular HS-SCCH carries control information combined with
`
`that UE's user-specific scrambling sequence. CX-1523C (Jackson RWS) at Q143-144.63
`
`Third, with respect to "circuitry in the WCDMA UE configured to process a high speed
`
`shared control channel (HS-SCCH)," Respondents' expert Dr. Madisetti testified that the' 127
`
`patent contains written description support for this limitation under '111 parties' pr_oposed
`
`63 For the same reasons discussed with respect to "circuitry configured to recover payload data
`from a HS-PD SCH," Respondents argue that similar language in claim 5 of the' 127 patent lacks
`written description support. See RX-3520C (Madisetti WS) at Q1046. As explained above with
`respect to claim 1 of the' 127 patent, it is determined that the relevant language in claim 5 does,
`indeed, have written description support.
`
`289
`
`Exhibit 1011-00301
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`constructions. See RX-3520C (Madisetti WS) at Q1048. The evidence demonstrates that Dr.
`
`Madisetti' s opinion that the claim lacks written description support is true only if portions of the
`
`specification supporting the limitation are disregarded. See id. at Q1048 ("The 121 Patent's
`
`specification describes the processing of the HS-SCCH in the user equipment. ... One of
`
`ordinary skill in the art at the time of the invention would not have understood the inventors to
`
`have had in their posses~}9n any invention comprising circuitry in the WCDMA UE to perform
`. ..._~.-
`
`'one or more operations on a received HS-SCCH to derive control information' other than the
`
`disclosed operation ... . ")(emphasis added). In addition, Dr. Madisetti does not offer any
`
`testimony explaining what additional disclosure he believes a person of ordinary skill in the art
`
`would expect to see under his interpretation of the written description requirement. See
`
`RX-3520C (Madisetti WS) at Ql047-1048.
`
`In light of the arguments and evidence set forth above, it is determined that the disputed
`
`limitations of the' 127 patent are supported by the written description of the specification and are
`
`therefore not invalid.
`
`4.
`
`Indefiniteness ('127 Patent)
`
`Respondents allege t~at dependent claim 3 of the '12 7 patent is invalid for indefiniteness.
`
`Resps. Br. at 161.
`
`Independent claim 1, from which claim 3 depends, reads as follows:
`
`1. A wideband code division multiple access (WCDMA) user equipment
`(UE) comprising:
`
`circuitry in the WCDMA· UE configured to process a high speetl
`shared control channel (HS-SCCH); and
`
`circuitry in the WCDMA UE configured to recover payload data from
`a ·high speed physical downlink shared channel (HS-PDSCH)
`associated with the HS-SCCH in response to the HS-SCCH including
`bits; wherein the bits are a result of a combining of a user specific
`
`290
`
`Exhibit 1011-00302
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`scrambling sequence associated with the UE with control information;
`and wherein the user specific scrambling sequence is a result of a Yz
`rate convolutional encoding of a UE identification (ID).
`
`JX~0004 at col. 3·, l~s. i'8-30.
`
`Claim 3 recites:
`
`3. The WCDMA UE of claim 1 wherein the user specific scrambling
`sequence is a result of rate matching the Yz rate convolutional encoded UE
`ID.
`'.'.~,,
`, ~~~ir
`JX-0004 at col. 3, Ins. 34-36.
`
`Respondents argue that the additional limitation of claim 3, "wherein the user specific
`
`scrambling sequence is a result ofrate matching the Yz rate convolutional encoded UE ID,"
`
`renders claim 3 indefinite. Resps. Br. at 161. Specifically, Respondents argue that the "rate
`
`matching" requirement of claim 3 renders the claim indefinite. Id.
`
`Respondents' argument is as follows:
`
`Rate matching refers to increasing or decreasing the number of bits' in a
`sequence (RX-3520C (Madisetti WS) at Q1052, 1139). The user specific
`scrambling sequence of claim 3 (which is a result of rate matching the Yz
`rate convolutionally encoded UE ID) thus must be larger or smaller than
`the user specific scrambling sequence of claim 1 (which is the result of Yz
`rate convolutionally encoding the UE ID) (id. at 1051-52). Because claim
`1 and claim 3 both refer to the same user specific scrambling sequence and
`a sequence cannot be larger or smaller than itself, the term "wherein the
`user specific scrambling sequence is a result of rate matching the Yz rate
`convolutionally encoded UE ID" is insolubly indefinite. See, e.g., Allen
`Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002)
`(claims indefinite where the claim covered subject matter that was
`contrary to a description in the specification).
`
`Resps. Br. at 161.
`
`Although claim 1 of the '127 patent requires that the "user specific scrambling sequence
`
`is a result of a Yz rate convolutional encoding of a UE identification,'' the claim is silent
`
`regarding whether the sequence also may be a result of rate matching. The rate matching
`
`291
`
`Exhibit 1011-00303
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`limitation is added by dependent claim 3. Inasmuch as claim 3 depends from claim 1, this
`
`necessanly means that claim 1 is broad enough to include, but not require, rate matching. Such
`-
`an interpretation is in accord with the principles of claim interpretation, and is consistent with the
`
`way in which a person of ordinary skill in the art would understand claims 1 and 3 in light of the
`
`specification. See SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348, 1361 (Fed. Cir. 2012)
`
`("Where ... the sole diff,~ence between the independent claim and the dependent claims is the
`\_ii/'
`
`limitation that one party is trying to read into the independent claim, the doctrine of claim
`
`differentiation is at its strongest."); CX-1523C (Jackson RWS) at Q156-157; Madisetti Tr.
`
`872-873.
`
`In particular, the specification for the '127 patent states, "[a]fter encoding, based on the
`
`length of the output string, a rate matching stage 12 may be added to puncture bits to obtain a
`
`desired string length." JX-0004 at col. 2, Ins. 56-58 (emphasis added). Similarly, in discussing
`
`an embodiment of the invention, the specification also states, "[t]o reduce the length of the code
`
`to a preferred length of 40 bits, eight bits are preferably punctured." Id. at col. 3, Ins. 1-2
`
`(emphasis added). Therefore, it would be clear to a person of ordinary skill in the art that claim
`
`1 refers to a category of user specific scrambling sequences, and that claim 3 describes a
`
`particular member of that category. See CX-1523C (Jackson RWS) at Q157.
`
`For these reasons, Re.spondents have not shown by clear and convincing evidence that
`
`claim 3 is "insolubly ambiguous." It is therefore determined that claim 3 of the '127 patent is
`
`not invalid for indefiniteness.
`
`292
`
`Exhibit 1011-00304
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`VII. The Dual Mode Subscriber Unit ('970) Patent
`
`A.
`
`Overview of the '970 Patent and Asserted Claims
`
`Asserted U.S. Patent No. 7,616,970 ("the '970 patent") is titled, "Dual Mode Unit for
`
`Short Range, High Rate and Long Range, Lower Rate Data Communications." JX-0005 ('970
`
`patent). The '970 patent issued on November 10, 2009, and the named inventor is Thomas E.
`
`Gorsuch. Id. The '970 pjitent relates generally to short-range, higher speed and long-range,
`.. . ~~~/
`lower speed wireless communications. Id. at Abstract. The '970 patent is also referred to as the
`
`"Dual Mode Subscriber" patent.
`
`InterDigital asserts independent claims 1 and 10, and dependent claims 2, 3, 4, 5, 6, 7, 8,
`
`9, 11, 12, 13, 14, 15, 16, 17, and 18 of the '970 patent. These claims read as follows:
`
`1. A subscriber unit comprising:
`
`a cellular transceiver configured to communicate with a cellular
`network via a cellular layered communication protocol;
`
`an IEEE 802 transceiver configured to communicate with a wireless
`local area network (WLAN) via an IEEE 802 layered communication
`protocol;
`
`a detector configured to detect a signal from the WLAN; and
`
`a circuit coupled to the cellular transceiver and the IEEE 802
`transceiver and configured to communicate usmg the IEEE 802
`transceiver in response to the signal;
`
`wherein the cellular layered communication protocol includes a
`plurality of layers above a physical layer, and a plurality of physical
`layer channels are available for assignment for communication with
`the cellular network and a communication session above the physical
`layer is maintained when all assigned physical layer channels have
`been released.
`
`2. The subscriber unit of claim 1, wherein the IEEE 802 transceiver is
`configured to transmit TCP /IP data when the communication session is
`maintained and all assigned physical layer channels have been released.
`
`293
`
`Exhibit 1011-00305
`
`Microsoft Corporation
`
`

`
`PUBLIC-VERSION
`
`3. The subscriber unit of claim 1, wherein at least one of the plurality of
`layers above the physical layer is any one of a TCP layer, a IP layer, or a
`network layer.
`
`4. The subscriber unit of claim 1, wherein the cellular transceiver and the
`IEEE 802 transceiver are provided in a single unit.
`
`5. The subscriber unit of claim 1, wherein the subscriber unit is configured
`in a mobile telephone or personal digital assistant.
`
`6. The sub,s:criber unit of claim 1, wherein the signal is a beacon frame or
`probe resp,~se frame.
`
`7. The subscriber unit of claim 1, wherein at least one of the plurality of
`physical layer channels is a data channel.
`
`8. The subscriber unit of claim 1, wherein the cellular network is a
`licensed code division multiple access network and the ·WLAN is an
`unlicensed 802.11 network.
`
`9. The subscriber unit of claim 1, wherein the cellular transceiver is a code
`division multiple access transceiver and the IEEE 802 transceiver is an
`802.11 transceiver.
`
`10. A subscriber unit comprising:
`
`a first transceiver configured to communicate with a first wireless
`network;
`
`a second transceiver configured to corninunicate with an IEEE 802
`compliant wireless network; and
`
`a processor coupled to the first transceiver and the second transceiver,
`and configured to operate a first protocol stack for the first wireless
`network and a second protocol stack for the IEEE 802 compliant
`wireless network, wherein a plurality of physical layer channels are
`available for assignment for communication with the first wireless
`network, and to maintain a communication session above a physical
`layer of the first protocol stack when none of the plurality of physical
`layer channels are assigned.
`
`11. The subscriber unit of claim 1 O, further comprising:
`
`a detector configured to detect the IEEE 802 compliant wireless
`network; and
`
`294
`
`Exhibit 1011-00306
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`a circuit configured to select the second transceiver in response to
`detection of the IEEE 802 compliant wireless network.
`
`12. The subscriber unit of claim 11, wherein detection of the IEEE 802
`compliant wireless network is bas.ed on receipt of a beacon frame or probe
`response frame.
`
`13. The subscriber unit of claim 10, wherein the second transceiver is
`configured to transmit TCP /IP data when the communication session -is
`maintained when none of the plurality of physical layer channels are
`assigned.~::il,::
`~'~i'
`14. The subscriber unit of claim 10, wherein at least one of the plurality of
`layers above the physical layer is any one of a TCP layer, a IP layer, or a
`network layer.
`
`15. The subscriber unit of claim 10, wherein at least one of the plurality of
`physical layer channels is a data channel.
`
`16. The subscriber unit of claim 10, wherein the first wireless network is a
`licensed code division multiple access network and the IEEE 802
`compliant wireless network is an unlicensed IEEE 802.11 network.
`
`17. The subscriber unit of claim 10, wherein the first transceiver is a code
`division multiple access transceiver and the second transceiver is an
`802.11 transceiver.
`
`18. The subscriber unit of claim 10, wherein the first transceiver is a
`cellular transceiver.
`
`JX-0005 at col. 11, In. 5 - col. 12, In. 43.
`
`B.
`
`The '970 Accused Products
`
`The Nokia products accused of infringing the '970 patent include: C3-0l, CS-03, C6-01,
`
`C7, ES, E6-00, E7-00, E72, E73, N500, N700, N701, N8-00, X3-02, X7-00, 808 Pureview,
`
`Vertu Constellation, Vertu Constellation Quest, Lumia 710, Lumia 719, Lumia 800, Lumia 810,
`
`295
`
`Exhibit 1011-00307
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Lumia 820, Lumia 822, Lumia 900, and Lumia 920. See Compls. Br. at 262 (citing CX-0381C
`
`(Stark Nokia Infringement Chart)). 64
`
`The Huawei products accused of infringing the '970 patent include: M650, M660, M835,
`
`M860, M865, M886 (C8860), M920, M931, MediaPad (S7-Pro, S7-303u), MediaPad 10 FHD
`
`(Sl0-102u), S7-104, S7-202u, U8665, U8680/U8730, U8800, U8800-51, U9000, U9000-81,
`
`Wl/U8835, Y210/C8689,~and Y300C. See Compls. Br. at 262-63 (citing CX-0380C (Stark
`.
`.
`d!.."
`
`Huawei Infringement Chart)).
`
`The ZTE products accused of infringing the '970 patent include: D930, N850, N859,
`
`N860, N861, N9500, P736T, V55, V66, V8000, X500, X501, and Z990. See Compls. Br. at 263
`
`(citing CX-0382C (Stark ZTE Infringement Chart)).
`
`With respect to the '970 accused products, InterDigital's expert Dr. Stark analyzed
`
`physical samples, design documents, user guides and manuals, deposition testimony from
`.
`
`'
`
`representatives of Nokia, Huawei, ZTE, Microsoft, HiSilicon, and Qualcomm, Respondents'
`
`discovery responses, and the source code analysis conducted by Drs. Walker and Goldberg.
`
`CX-1306C (Stark WS) at Q619-627; CX-0377 (Stark Materials Considered). Based on his
`
`analysis, Dr. Stark concluded that the Lumia 710 and 800, as well as the 808 Pureview, are
`
`representative of Nokia's accused products, that the N860 is representative of the ZTE accused
`
`products, and that the U8800-51, U8680/U8730 and M865 products are representative of the
`
`accused Huawei products. CX-1306C (Stark WS) at Q813-814, Q2265-2266, Q3121-3122.
`
`In general, Respondents' expert Dr. Bims admitted that he did not identify any relevant
`. .
`..
`.
`
`'
`
`differences between the '970 representative products analyzed by Dr. Stark analyzed and any
`
`64 InterDigital no longer asserts that the Nokia N900 or N9-00 products infringe any claim of the
`'970 patent. Compls. Br. at 262 n.35.
`
`296
`
`Exhibit 1011-00308
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`other '970 accused products. Bims Tr. at 1264-1265. Dr. Bims further admitted that for
`
`purposes of non-infringement, there are no differences between the Qualcomm chips in this
`
`Investigation. Bims Tr. at 1264. Dr. Bims therefore opines on infringement by Respondents'
`
`products collectively. See Resps. Br. at 398-420.
`
`C.
`
`Claim Construction
`
`1.
`
`L~~eI of Ordinary Skill
`. ~:~;:_ir
`A person of ordinary skill in the art of the '970 patent would have at least a bachelor's
`
`degree in electrical engineering, computer science, computer engineering or a related field, and
`
`two to three years' experience in the area of wireless communications. CX-1306 (Stark WS) at
`
`Ql 7. Alternatively, a person of ordinary skill would have a master's.degree in electrical
`
`engineering, computer science, computer engineering or a related field with an emphasis on
`
`communications. 65 Id.
`
`2.
`
`Construc.tion of Disputed Claims
`
`a.
`
`"IEEE 802 transceiver configured to communiCate with a
`wireless local area network" .
`
`Clalln. Term/Phrase-
`
`InterDjgital's. Constructi~n
`
`IEEE 802 transceiver
`
`configured to
`communicate with a
`wireless local area
`network
`
`hardware and/or software operable to
`transmit information to and receive
`information from an IEEE 802
`wireless local area network
`
`Re pondents 1"Construction
`n/a
`
`configured to automatically
`connect directly to a
`W-LAN66 when such a
`connection is possible
`
`65 Respondents propose that a person of ordinary skill in the art of the '970 patent would have a
`master's degree or the equivalent in electncal engineering, and three or more years of work
`·
`experience relating to data communications over wireless networks. RX-3519C (Bims WS) at
`Q73-Q75. The parties have not identified any way in which differences in their proposed
`definitions of the level of ordinary skill in the art affect issues in this investigation. See Compls.
`Reply at 98.
`
`66 "W-LAN" is an acronym for wireless local area network.
`
`297
`
`Exhibit 1011-00309
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`The claim term "IEEE 802 transceiver configured to communicate with a wireless local
`
`·area network" appears in asserted independent claim 1. JX-0005 at·col. +I-~ lns. 5-'23. ~
`
`InterDigital construes this term to mean "hardware and/or software operable to transmit
`
`information to and receive information from an IEEE 802 wireless local area network." Compls.
`
`Br. at 239-43. Respond~,J}tS contend that "IEEE 802 transceiver" needs no construction, and
`. .,:ojl.''
`
`construe "configured to communicate with a wireless local area network" to mean "configured to
`
`automatically connect directly to a W-LAN when such a connection is possible." Resps. Br. at
`
`396-97.
`
`As proposed by InterDigital, the claim term "IEEE 802 transceiver configured to
`
`communicate with a wireless local area network" is construed to mean "hardware and/or
`
`software configured to transmit information to and receive information from an IEEE 802
`
`wireless local area network." This construction represents the plain meaning of the term as
`
`understood by a person of ordinary skill in the art, and is supported by the intrinsic evidence.
`
`Persons having skill in the art recognize that a "transceiver" is a combination of a
`
`transmitter and a receiver. CX-1306C (Stark WS) at Q666. The '970 patent specification
`
`provides that functions of the claimed invention, including that of a transceiver, may be
`
`implemented in hardware and/or software:
`
`Note that the path switche's 21 lA, 21 lB may be implemented in software
`or hardware, or a combination of hardware and software. Other functions
`may also be implemented in hardware and/or software which may further
`be shared by the W-LAN and CDMA sections where· appropriate.
`
`JX-0005 at col. 10, Ins. 54-59.
`
`298
`
`Exhibit 1011-00310
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`The plain meaning of "IEEE 802 transceiver" is therefore a transceiver that can
`
`communicate with a wireless local area network operating according to any IEEE 802 standard.
`
`-
`....
`See CX-l306C (Stark WS) at Q669. Moreover, the plain language of the term "configured to
`
`~
`
`communicate with" means "operable to transmit information to and receive information from."
`
`See id. at Q670.
`
`In response to th~~arguments supporting InterDigital's proposed construction,
`. ~~,.;~
`
`Respondents argue that Inter Digital' s position is incorrect because, inter alia, the claimed
`
`"transceiver" cannot be implemented purely in software. Resps. Br. at 3 97 (citing RX-3 5 l 9C
`
`(Bims WS) at Q381). Respondents' argument is not persuasive, however, because it ignores the
`
`express teaching of the '970 specification, excerpted above, that functions of the claimed
`
`invention, including that of a transceiver, may be implemented in hardware and/or software.
`
`JX-0005 at col. 10, Ins. 54-59.
`
`Respondents also argue that "the 970 Patent is clear that the invention was designed to
`
`solve the problem of manual selection of networks in prior art dual-mode devices and the
`
`specification disclaims solutions that do not automatically connect to a WLAN when possible,"
`
`and that "[a]ccordingly, all the claims of the 970 Patent must be so limited." See Resps. Br. at
`
`397 (citing RX-3519C (Bims WS) at Q468-Q473); id. at 394-95. As support for this position,
`
`Respondents cite to the '970 specification, which recites, in part:
`
`It would therefore be desirable to have a device which can automatically
`select the cheaper and faster W-LAN when possible, e.g., when within its
`range, and to resort to the long range cellular network when access to the
`W-LAN is not possible or practical. Previously, two devices would have
`· been required, one for accessing the W -LAN and one for accessing the
`long range network. At best, these two devices could fit into two slots in,
`for example, a laptop computer, requiring the user to select, either through
`software or hardware, which device, and hence, which network to access.
`
`299
`
`Exhibit 1011-00311
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`.-., ....
`
`:,-·~
`
`The present invention, on the other hand, is a single device which connects
`directly to a W-LAN using a protocol such as IEEE 802.11 when such a
`connection is possible, and automatically reverts to connecting to the lorig
`range network only when out of range of the W-LAN_ base stations~
`
`Thus, the same equipment can be used without any reconfiguration and
`even without knowledge of the user.
`
`JX-0005 at col. 2, ln. 50 - col. 3, ln.2 (Summary of the Invention).
`
`The cited passage;~however, provides that the claimed invention "connects directly to a
`. ~~_ir
`W-LAN," and says nothing about that connection being automatic. Use of the permissive word
`
`"can" in the statement, "the same equipment can be used without any reconfiguration and even
`
`without knowledge of the user," demonstrates that such "automatic" behavior is merely desirable
`
`in the claimed invention, and not mandatory. Moreover, even though the '970 specification
`
`states that "[i]t would therefore be desirable to have a device which can automatically select the
`
`cheaper and faster W-LAN when possible," saying that a feature is "desirable" is not the explicit
`
`disavowal of the use of manual selection argued by Respondents. Cf Resps. Br. at 395.
`
`Respondents further argue that InterDigital's proposed construction is incorrect because it
`
`improperly equates the claim language "configured to" With "operable to." Resps. Br. at 395-96.
`
`It is argued that "InterDigital's proposed construction is inconsistent with the claim language,
`
`introduces ambiguity, and lacks support in the intrinsic evidence." Id at 395 (citing RX-3519C
`
`(Bims WS) at Q472). It is further argued that "the claims themselves require that the circuit be
`
`'configured' to perform functionality 'in response to' certain events," and that'" [i]n response to'
`
`connotes that the second event occur in reaction to the first event." Id. (citation omitted).
`
`In response to this argument, InterDigital states that it "believes that ['configured to' and
`
`'operable to'] are synonyms, and is agreeable to leaving the term 'configured to' unconstrued."
`
`See Compls. Reply at 109.
`
`300
`
`Exhibit 1011-00312
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Therefore, the claim term "IEEE 802 transceiver configured to communicate with a
`
`wireless local area network" is construed to mean "hardware and/or software configured to
`
`\:' r• •
`
`'
`
`•
`
`transmit information to and receive information from an IEEE 802 wireless local area network."
`
`b.
`
`"IEEE 802 layered communication protocol"
`
`..
`
`I
`
`:;:
`
`i.':::
`
`11'
`
`'I
`
`~
`
`~
`
`·CiaimTerm/Phrase
`InterDjgital's Cons-ttuction
`,..ResP,ond ents'
`,r
`I --'"f- -J
`.~-
`~
`__ 1= -~ i._
`- .
`"+'
`Constr,udiou
`-
`-.
`'
`· .'~! ' plain meaning, i.e., structured procedures for n/a
`IEEE 802 layered
`~-;:~;-
`communication protocol
`communicating with an IEEE 802 network
`
`-1 -
`--
`I
`
`I
`
`I
`
`;,
`
`The claim term "IEEE 802 layered communication protocol" appears in asserted
`
`independent claim 1. JX-0005 at col. 11, Ins. 5-23.
`
`InterDigital construes this tem1 to take its plain meaning to one of ordinary skill in the
`
`art, i.e., "structured procedures for communicating with an IEEE 802 network." Compls. Br. at
`
`243-44. Respondents do not contest InterDigital's proposed construction. See Resps. Br. at
`
`376~ 98; Compls. Br. at 240 n.32.
`
`As proposed by InterDigital, the claim term "IEEE sq2 layered communication protocol"
`
`is construed to mean "structured procedures for communicating with an IEEE 802 network."
`
`This construction represents the plain meaning of the term as understood by a person of ordinary
`
`skill in the art. See CX-1306C (Stark WS) at Q676, Q759.
`
`c.
`
`"a circuit coupled to the cellular transceiver and the IEEE 802
`transceiver and configured to communicate using the IEEE
`802 transceiver in response to the signal"
`
`. '
`
`-
`
`I
`
`'
`
`j
`
`;' Claim Term/Phrase -
`1 InterDig:ifal's Construction
`-
`-
`-
`--
`a circuit coupled to the
`hardware and/or software
`coupled to the cellular and IEEE
`cellular transceiver and the
`IEEE 802 transceiver and
`802 transceivers and operable to
`configured to communicate use the IEEE 802 transceiver to
`using the IEEE 802
`communicate with the wireless
`
`301
`
`Respond·en!s' Coristruction
`
`a circuit coupled to the cellular
`transceiver and the IEEE 802
`transceiver and configured to
`automatically connect directly
`to a W-LAN when such a
`
`Exhibit 1011-00313
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`transceiver in response to
`the signal
`
`local area network when such a
`connection is possible
`
`connection is possible in
`response to the signal
`
`The claim term "a circuit coupled to the cellular transceiver and the IEEE 802 transceiver
`
`and configured to communicate using the IEEE 802 transceiver in response to the signal"
`
`appears in asserted independent claim 1. JX-0005 at col. 11, Ins. 5-23.
`
`InterDigital const~es this term to me.an "hardware and/or software coupled to the cellular
`
`-:·,~:/.'
`
`and IEEE 802 transceivers and operable to use the IEEE 802 transceiver to communicate with
`
`the wireless local area network when such a connection is possible." Compls. Br. at 244-46.
`
`Respondents construe this term to mean "a circuit coupled to the cellular transceiver and the
`
`IEEE 802 transceiver and configured to automatically connect directly to a W-LAN when such a
`
`connection is possible in response to the signal." Resps. Br. at 393-96.
`
`As proposed by InterDigital, the claim term "a circuit coupled to the cellular transceiver
`
`and the IEEE 802 transceiver and configured to communicate using the IEEE 802 transceiver in
`
`response to the signal" is construed to mean "hardware and/or software coupled to the cellular
`
`and IEEE 802 transceivers and configured to use the IEEE 802 transceiver to communicate with
`
`the wireless local area network when such a connection is possible."
`
`As discussed above with respect to the claim term "IEEE 802 transceiver configured to
`
`communicate with a wireless local area network," the '970 specification teaches that the "circuit"
`
`coupled to the IEEE 802 transceivers consists of hardware and/or software:
`
`Note,that the path switches 211A, 211B may be implemented in software
`or hardware, or a combination of hardware and software. Other functions
`may also be implemented in hardware and/or software which may further
`be shared by the W-LAN and CDMA sections where appropriate.
`
`JX-0005 at col. 10, lns. 54-59.
`
`302
`
`Exhibit 1011-00314
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`As further discussed above with respect to the claim term "IEEE 802 transceiver
`
`configured to communicate with a wireless local area network," the claimed invention is not
`
`-
`
`•
`
`limited to a device that automatically connects to a W-LAN when one is available. See JX-0005
`
`I
`
`"'
`
`at col. 2, ln. 50 - col. 3, ln.2 (Summary of the Invention).
`
`d.
`
`"a plurality of physical layer channels are available for
`assignment for communication"
`
`Clarin Terrn/Phra~JI€" .
`
`:
`
`a plurality of physical layer
`channels are available for
`assignment for
`communication
`
`I
`
`InterDigit!!l's Constt:uction
`-
`two or more physical layer
`channels allocable by the
`subscriber unit for data
`communication
`
`/'
`
`·~
`
`Re$pondents' Construction
`-
`two or more physical layer
`channels are available for
`assignment for
`communication
`
`The claim term "a plurality of physical layer channels are available for assignment for
`
`communications" appears in asserted independent claims 1 and 10. JX-0005 at col. 11, lns. 5-23;
`
`col. 12, lns. 1-16.
`
`InterDigital construes this term to mean "two or more physical layer channels allocable
`
`by the subscriber unit for data communication." Compls. BL at 246-53. Respondents construe
`
`this term to mean "two or more physical layer channels are available for assignment for
`
`communication." Resps. Br. at 376-85.
`
`As proposed by Inter Digital, the claim term "a plurality of physical layer channels are
`
`available for assignment for communication" is construed to mean "two or more physical layer
`
`channels allocable by the subscriber unit for data communication," a construction that is
`
`supported by the intrinsic evidence.
`
`303
`
`Exhibit 1011-00315
`
`Microsoft Corporation
`
`

`
`PUBLIC VERSION
`
`Figure 6 of the '970 patent "shows a terminal 615 which includes a subscriber unit 101
`
`incorporatin