TRACBEAM L.L.C.,
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`Plaintiff,
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`vs.
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`AT&T INC. ET AL.,
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`Defendants.
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`CASE NO. 6:11-CV-96
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 1 of 18 PageID #: 18073
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`MEMORANDUM OPINION AND ORDER
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`Before the Court are the following motions:
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`• Defendants AT&T Inc. and AT&T Mobility L.L.C.’s (“AT&T”) Motion for
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`Summary Judgment of Invalidity1 (Docket No. 444);
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`• AT&T’s Motion for Partial Summary Judgment of Non-Infringement (Docket No.
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`445);
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`• AT&T’s Motion to Exclude the Expert Opinions of Robert Mills (Docket No. 446);
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`• AT&T’s Motion to Exclude Dr. Rose’s Opinions on Claim 25 (Docket No. 447);
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`• AT&T’s Motion for Summary Judgment of No Willful Infringement (Docket No.
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`448);
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`• Plaintiff TracBeam L.L.C.’s (“TracBeam”) Motion for Leave to Rely Upon
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`Supplemental Expert Reports (Docket No. 452); and
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`• AT&T’s Motion for Continuance (Docket No. 509).
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`
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`1 In its response brief, Plaintiff TracBeam L.L.C. requests the Court grant summary judgment in its favor and find
`the original application fully discloses and supports asserted claims 25 and 162 of U.S. Patent No. 7,764,231.
`Docket No. 461. Accordingly, the Court construes this as a cross-motion for summary judgment.
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`Apple, Inc. Exhibit 1028 Page 1
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 2 of 18 PageID #: 18074
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`BACKGROUND
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`The Court heard oral arguments for these motions on October 18, 2013 and October 24,
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`2013. Having considered the parties’ written submissions and oral argument, the Court DENIES
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`AT&T’s Motion for Summary Judgment of Invalidity (Docket No. 444); GRANTS IN PART
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`and DENIES IN PART AT&T’s Motion for Partial Summary Judgment of Non-Infringement
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`(Docket No. 445); GRANTS IN PART and DENIES IN PART AT&T’s Motion to Exclude
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`Dr. Rose’s Opinions on Claim 25 (Docket No. 447); GRANTS AT&T’s Motion for Summary
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`Judgment of No Willful Infringement (Docket No. 448); GRANTS TracBeam’s Motion for
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`Leave to Rely Upon Supplemental Expert Reports (Docket No. 452); and GRANTS IN PART
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`and DENIES IN PART AT&T’s Motion for Continuance (Docket No. 509).
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`AT&T’S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
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`TracBeam sued a number of cell-phone related defendants in February 2011, including
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`AT&T, for infringement of claims 25 and 162 (“asserted claims”) of U.S. Patent No. 7,764,231
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`(“the ‘231 Patent”). The technology is directed to using multiple location techniques to pinpoint
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`a geographic location. AT&T asserts claims 25 and 162 fail the written description requirement
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`of 35 U.S.C. § 112, ¶ 1, and moves for summary judgment of invalidity. In response, TracBeam
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`requests that the Court grant summary judgment in its favor and hold the claims do meet the
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`written description requirement.
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`APPLICABLE LAW
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`Federal Rule of Civil Procedure 56(a) provides for summary judgment when “there is no
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`genuine dispute as to any material fact.” A dispute about a material fact is genuine if “the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When the summary judgment
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`2
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`Apple, Inc. Exhibit 1028 Page 2
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 3 of 18 PageID #: 18075
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`movants demonstrate the absence of a genuine dispute over any material fact, the burden shifts to
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`the non-movant to show there is a genuine factual issue for trial. Celotex Corp. v. Catrett, 477
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`U.S. 317, 323–24 (1986). Mere conclusory allegations are not competent summary judgment
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`evidence, and thus are insufficient to defeat a motion for summary judgment. Eason v. Thaler,
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`73 F.3d 1322, 1325 (5th Cir. 1996). A court must draw all reasonable inferences in favor of the
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`non-moving party. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007).
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`The written description requirement found in 35 U.S.C. §112, ¶ 1 prevents an applicant
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`from later asserting that he invented that which he did not. Amgen Inc. v. Hoechst Marion
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`Roussel, 314 F.3d 1313, 1330 (Fed. Cir. 2003). To “guard[] against the inventor’s
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`overreaching,” the written description requirement “insist[s] that [the inventor] recount his
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`invention in such detail that his future claims can be determined to be encompassed within his
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`original creation.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991). This
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`means that all of the limitations must appear in the specification. Lockwood v. Am. Airlines, Inc.,
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`107 F.3d 1565, 1572 (Fed. Cir. 1997). The question is not whether a claimed invention is an
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`obvious variant of that which is disclosed in the specification. Id. Rather, the application itself
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`must describe an invention and do so in sufficient detail that one skilled in the art can clearly
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`conclude that the inventor invented the claimed invention as of the filing date sought. Id.
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`Compliance with the written description requirement is assessed with respect to the
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`application as filed, not the specification as issued. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
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`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). New claims or other added material must find
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`support in the original specification. TurboCare Div. of Demag Delaval Turbomachinery Corp.
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`v. GE, 264 F.3d 1111, 1118 (Fed. Cir. 2001). Thus, as a matter of law, the written description
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`requirement cannot be met by new matter added during prosecution. See Ariad, 598 F.3d at
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`3
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`Apple, Inc. Exhibit 1028 Page 3
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 4 of 18 PageID #: 18076
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`1336. Compliance with the written description requirement is amenable to summary judgment in
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`cases where no reasonable fact finder could return a verdict for the non-moving party.
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).
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`ANALYSIS
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`AT&T argues the asserted claims require a mobile station receiving satellite signals but
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`the original specification does not provide support for a mobile station (e.g., a cell phone)
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`receiving satellite signals. The parties agree the asserted claims require a mobile station that
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`receives satellite signals and that the original specification discloses a mobile base station that
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`receives satellite stations. However, AT&T’s argues the disclosure a mobile base station
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`receiving satellite signals is insufficient to meet the written description requirement.
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`TracBeam counters the written description requirement is met by one of two theories.
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`First, TracBeam argues the specification discloses a mobile station receiving satellite signals
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`because it discloses an embodiment of a mobile base station that contains both a mobile station
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`and a GPS receiver. The mobile base station receives satellite (GPS) signals via its GPS
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`receiver. TracBeam contends this embodiment therefore “discloses the receipt of satellite signals
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`at a mobile station.” Docket No. 490 at 2 (emphasis added).
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`However, the asserted claims are not satisfied by the receipt of satellite signals at the
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`mobile station. The claims require the mobile station itself to receive the satellite signals. The
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`specification describes a mobile base station containing a satellite (GPS) receiver and a mobile
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`station as separate and distinct components. Docket No. 444 at 12; U.S. Patent Application No.
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`09/194,367 at 17–18 (filed Nov. 24, 1998). While it may be an obvious variation to move the
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`GPS receiver from the mobile base station to the mobile station, obvious variations do not satisfy
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`the written description requirement. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
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`4
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`Apple, Inc. Exhibit 1028 Page 4
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`Circ. 1997) (“[I]t is not sufficient for purposes of the written description requirement of 112 that
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`the disclosure, when combined with the knowledge in the art, would lead one to speculate as to
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`modifications that the inventor might have envisioned, but failed to disclose.”).
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`TracBeam’s second theory, however, presents a genuine question of fact. TracBeam
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`asserts the written description requirement is satisfied because the originally-filed specification’s
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`disclosure of a mobile base station meets all the limitations of the Court’s construction of the
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`claim term “mobile station.”2 The Court construed mobile station as “a mobile wireless device
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`that is at least a transmitting device and may include a receiving device.” Docket No. 352 at 4.
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`Conversely, AT&T argues a mobile base station is not a “wireless device.” Docket No. 479 at 1.
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`AT&T argues the specification clearly delineates between a mobile base station and a
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`mobile station. According to AT&T, the specification generally describes a mobile station as a
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`mobile phone and a mobile base station as “a part of the
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`network infrastructure that receives and processes wireless
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`communications from the mobile station.” Docket No.
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`444 at 1. For example, Fig. 4, reproduced to the left,
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`illustrates how the patentee used the terms mobile station
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`(140) and mobile base station (148). ‘231 Patent, Fig. 4.
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`TracBeam contends that mobile base stations and mobile stations are not limited to the
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`Fig. 4 embodiment. Rather, the original specification discloses a mobile base station is a piece
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`of equipment for wireless communication that transmits and receives signals. TracBeam asserts
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`this meets the limitations of (1) a wireless device that (2) at least transmits, and (3) may include a
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`2 The Court did not construe the term “mobile base station.” Moreover, “mobile base station” does not appear in
`claim 25 or 162.
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`5
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`Apple, Inc. Exhibit 1028 Page 5
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 6 of 18 PageID #: 18078
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`receiving device. Therefore, according to TracBeam, the original specification discloses a
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`mobile station that receives satellite signals.
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`This dispute hinges on whether a mobile base station, as described by the original
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`specification, is a “wireless device.” A reasonable jury could find for either party on this issue.
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`Therefore, this is a genuine dispute of a material fact. See Liberty Lobby, Inc., 477 U.S. at 248.
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`Accordingly, AT&T’s Motion for Summary Judgment of Invalidity (Docket No. 444) and
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`TracBeam’s request for summary judgment in its favor (Docket No. 461) are DENIED.
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`AT&T’S MOTION FOR PARTIAL SUMARY JUDGMENT OF NON-INFRINGEMENT
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`AT&T requests the Court find non-infringement as to three of the four serving mobile
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`location centers (“SMLC”) used by AT&T’s E911 network. TracBeam’s original expert report
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`on infringement requires the SMLCs to perform a software function known as a “sanity check”
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`to infringe the asserted claims. In its rebuttal expert report, AT&T produced additional evidence
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`that shows three of the four SMLCs do not perform the sanity check function.
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`TracBeam does not dispute AT&T’s rebuttal evidence and admits that these three SMLCs
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`do not infringe under the theory described in its original expert report. Instead, TracBeam argues
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`the three SMLCs infringe under an alternative infringement theory that does not rely on the
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`sanity check function, as provided in its supplemental report. Because TracBeam’s supplemental
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`report was filed after the deadline in the Docket Control Order, AT&T’s motion does not address
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`its arguments. However, the Court grants TracBeam’s motion to rely upon this report.
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`Consequently, AT&T’s summary judgment motion is GRANTED only to the extent that the
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`three specified SMLCs do not infringe under any infringement theory which requires sanity
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`check and DENIED in all other respects. Accordingly, AT&T’s Motion for Partial Summary
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`Judgment is GRANTED IN PART and DENIED IN PART.
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`6
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`Apple, Inc. Exhibit 1028 Page 6
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 7 of 18 PageID #: 18079
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`AT&T’S MOTION TO EXCLUDE THE EXPERT OPINIONS OF ROBERT MILLS
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`Mr. Mills is TracBeam’s expert on damages. The parties agree an appropriate royalty
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`rate is based on AT&T’s cost savings from using the patented technology compared to the best
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`available non-infringing alternative. Mr. Mills opines that the cost savings to AT&T is the cost
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`of building a new location network infrastructure at the price of $742,056,000. Mr. Mills’ report
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`also references revenue-sharing agreements between AT&T and various providers of location-
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`based services and products. Though these are not patent licenses, Mr. Mills relies on these
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`agreements to determine if his proposed royalty rate of 50% was “inconsistent with AT&T’s real
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`world negotiations.” Docket No. 460 at 13. AT&T argues Mr. Mills uses bad methodology and
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`the revenue-sharing agreements should be excluded.
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`APPLICABLE LAW
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`Federal Rule of Evidence 702 governs the admissibility of expert testimony. Rule 702
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`provides that “scientific, technical, or other specialized knowledge” may be admissible where
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`such testimony “will help the trier of fact to understand the evidence or to determine a fact in
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`issue . . . .” FED. R. EVID. 702. Such testimony is only admissible “if [1] the testimony is based
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`upon sufficient facts or data, [2] the testimony is the product of reliable principles and methods,
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`and [3] the expert has reliably applied the principles and methods to the facts of the case.” Id.;
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`see also Daubert v. Merrell Dow Pharms., 509 U.S. 579, 592–93 (1993). In applying these
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`standards, district courts are charged to act as “gatekeepers” in order to ensure that “any and all
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`scientific evidence admitted is not only relevant, but reliable.” Daubert, 509 U.S. 579, 589
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`(1993). The primary concern of the “gatekeeper” function “is to make certain that an expert,
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`whether basing testimony on professional studies or personal experience, employs in the
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`courtroom the same level of intellectual rigor that characterizes the practice of an expert in the
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`7
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`Apple, Inc. Exhibit 1028 Page 7
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 8 of 18 PageID #: 18080
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`relevant field.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152 (1999). To that end, any step
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`an expert takes in formulating his opinion “that renders the analysis unreliable . . . renders the
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`expert’s testimony inadmissible.” Curtis v. M&S Petroleum, Inc., 174 F.3d 661, 670 (5th Cir.
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`1999).
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`A reasonable royalty is based on “what a willing licensor and licensee would bargain for
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`at a hypothetical negotiation on the date infringement started.” State Indus., Inc. v. Mor-Flo
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`Indus., Inc., 883 F.2d 1573, 1580 (Fed. Cir. 1989). One way to value a reasonable royalty is to
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`estimate the “cost savings from use of the infringing product.” Powell v. Home Depot U.S.A.,
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`Inc., 663 F.3d 1221, 1240 (Fed. Cir. 2011) (citing and quoting Hanson v. Alpine Valley Ski Area,
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`Inc., 718 F.2d 1075, 1080–81 (Fed. Cir. 1983). The hypothetical negotiation is limited by
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`acceptable non-infringing alternatives. Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302,
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`1312 (Fed. Cir. 2002). (“The economic relationship between the patented method and non-
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`infringing alternative methods, of necessity, would limit the hypothetical negotiation.”).
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`ANALYSIS
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`
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`AT&T claims Mr. Mills wrongly uses the cost of AT&T’s entire location network rather
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`than the costs savings from using the patented methods. AT&T argues TracBeam should have
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`determined the damages based on the value of the invention. At the hearing, AT&T stated “one
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`way that the damages expert could actually assess the value of the invention . . . would be take
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`the difference in cost between the redundant system and the existing system. And a cost savings
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`as between those two might—I haven't looked—they haven't done that analysis, but might
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`actually tend to show something about the actual invention itself.” Docket No. 522 at 96–97.
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`Though AT&T claims the cost of a new network is an inaccurate measure and inflates the
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`base for the royalty analysis, AT&T fails to offer evidence assessing the value of the patented
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`8
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`Apple, Inc. Exhibit 1028 Page 8
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 9 of 18 PageID #: 18081
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`method itself. TracBeam contends the cost of AT&T’s location network is an accurate measure
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`of the patent’s value because the other non-infringing alternatives are impractical or more
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`expensive than a new network. Docket No. 460 at 7–11 (TracBeam explaining why AT&T’s
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`non-infringing alternatives have been rejected by AT&T management). Therefore, according to
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`TracBeam, the cost of building a new, non-infringing location network is the value of the
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`patented method.
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`This dispute presents a factual question for the jury whether the cost of building a new
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`location network is equivalent to the value provided by the patented methods. A plaintiff must
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`tie damages for a patented invention to the value of the patented technology. See Riles, 298 F.3d
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`at 1312 (Fed. Cir. 2002). In Riles, the plaintiff attempted to tie the value of a method of
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`anchoring offshore oil platforms without mud mats to the cost of the offshore drilling platform
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`itself. Id. at 1311–12. The Federal Circuit held this was a legally incorrect way to value the
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`patent because the drilling platform performs operations that do not infringe the patented method
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`of the rig installation. Id. (“Shell may lawfully use its platform without infringing a patent on a
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`method of anchoring the jacket during erection.”). Here, TracBeam argues the value of its
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`patented method of using multiple location techniques to locate a cell phone is the cost of a new
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`location network. Though this appears to be a gross over-valuation as in Riles, AT&T never
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`introduces evidence to show a location network can perform non-infringing operations. AT&T
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`admitted it had not done so because it is “the plaintiff’s burden to do that.” Docket No. 522 at
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`97. At the hearing, TracBeam argued the location network would only be used to provide non-
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`infringing E911 service. Id. at 90. Consequently, the Court is unable to apportion anything less
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`than the full cost of a location network to the patented technology.
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`9
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`Apple, Inc. Exhibit 1028 Page 9
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 10 of 18 PageID #: 18082
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`AT&T correctly asserts non-infringing alternatives can serve as a cap on the damages and
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`provides several alternatives that are significantly cheaper than the cost of a new location
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`network. TracBeam, though, has produced admissible evidence AT&T’s non-infringing
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`alternatives are either impractical or more expensive than the cost of a location network. Docket
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`No. 460 at 7–11. The jury is the appropriate forum to determine if TracBeam is factually correct.
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`A reasonable jury, considering this record, could find that the value of the patented methods is
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`equivalent to the cost of a location network, and AT&T’s request to strike Mr. Mills report in its
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`entirety is DENIED.
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`However, Mr. Mills’ reliance on the revenue-sharing agreements is improper.
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`Agreements between AT&T and third-parties that provide services and products unrelated to the
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`patent are not part of the hypothetical negotiation. Uniloc USA, Inc. v. Microsoft Corp., 632
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`F.3d 1292, 1317 (Fed. Cir. 2011). These agreements are not patent licenses, but are revenue-
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`generating service and purchase contracts. TracBeam admits as much. Docket No. 446, Ex. 13,
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`Mills’ Report July 9, 201 at 85:20–23, 199:19–200:2, 85:17–19, 200:3–6. However, TracBeam
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`contends it did not use these agreements to arrive at its 50% royalty rate, but only as a check that
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`such a number is realistic. Docket No. 446 at 13. Nevertheless, irrelevant financial information
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`is still not admissible even when used as a “check” for an otherwise proper reasonable royalty
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`analysis. See Uniloc, 632 F.3d at 1321 (rejecting plaintiff’s use of the value of the entire market
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`as a “check” to its damages award). These agreements, which TracBeam asserts is not necessary
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`to determine its royalty rate, will only serve to create a prejudicial effect upon the jury.
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`Therefore, TracBeam may not rely upon them.
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`10
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`Apple, Inc. Exhibit 1028 Page 10
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 11 of 18 PageID #: 18083
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`CONCLUSION
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`For the forgoing reasons, the Court DENIES AT&T’s request to strike Mr. Mills’ report
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`in its entirety, and GRANTS AT&T’s request to exclude the revenue sharing agreements.
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`Accordingly, AT&T’s Motion to Exclude the Expert Opinions of Robert Mills is GRANTED IN
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`PART and DENIED IN PART.
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`AT&T’S MOTION TO EXCLUDE DR. ROSE’S OPINIONS ON CLAIM 25
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`Dr. Rose is TracBeam’s expert on infringement and validity. AT&T argues Dr. Rose’s
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`infringement opinion is inconsistent with both his validity opinion and the Court’s construction
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`of claim 25 and therefore must be excluded. The dispute between the parties is whether Step 1
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`and Step 2 of claim 25 are optional or whether all there steps must be performed. The source of
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`the dispute is the meaning of the un-construed term “when” in claim 25. AT&T argues “when”
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`denotes a sequential order to three mandatory steps. TracBeam contends “when” means “when
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`available” and hence Steps 1 and 2 need only be performed under certain conditions.
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`The relevant portions of claim 25, with the Court are labeling in brackets and terms of
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`emphasis underlined, is as follows:
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`“A method for providing a location estimate of a wireless mobile
`station dependent upon measurements of wireless signals . . .
`[Preamble 1] wherein when provided with the first collection, the
`predetermined corresponding location technique uses the first
`collection to determine a location for the mobile station . . .
`[Preamble 2] wherein for receiving a second collection of
`measurements obtained from wireless signals transmitted between
`said mobile station and one or more fixed location terrestrial
`stations, at least when said first collection is not available, there is
`a predetermined corresponding location technique for determining
`second location information of the mobile station . . .
`comprising performing the following steps by computational
`equipment:
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`11
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`Apple, Inc. Exhibit 1028 Page 11
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 12 of 18 PageID #: 18084
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`[Step 1] first obtaining the first location information of said mobile
`station, the first location information determined by computational
`machinery when said corresponding location technique for using
`the first collection [of measurements] is supplied with an instance
`of said first collection;
`[Step 2] second obtaining the second location information of said
`mobile station, the second location information determined by
`computational machinery when said corresponding
`location
`technique for receiving the second collection [of measurements] is
`supplied with an instance of said second collection . . . ”
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`‘231 Patent col.180:20–182:8.
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
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`intrinsic evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S.
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`Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. A term’s context in the asserted claim can be
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`12
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`Apple, Inc. Exhibit 1028 Page 12
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 13 of 18 PageID #: 18085
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`very instructive. Id. Other asserted or unasserted claims can also aid in determining the claim’s
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`meaning because claim terms are typically used consistently throughout the patent. Id.
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`ANALYSIS
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`
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`AT&T summarizes Steps 1 and 2 as obtain the first/second location information when the
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`first/second location technique is supplied. AT&T interprets “when” as indicating the
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`procedural order of a mandatory step. Therefore, the meaning becomes first obtains the
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`first/second location information at the time the first/second location technique is supplied.
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`According to AT&T, the term of art “comprising” in the claim requires this understanding. The
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`claim recites “comprising . . . the following steps,” and then lists Step 1, Step 2, and Step 3. ‘231
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`Patent col. 180:55–56. Therefore, according to AT&T, the steps cannot be optional and “when”
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`must indicate the timing for each step.
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`
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`TracBeam relies on Preamble 1 and Preamble 2 to argue “when” indicates a conditional
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`limitation. TracBeam claims Step 1 obtains the first location information only when the system
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`provides the first collection of measurements. As Preamble 1 recites, the “predetermined
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`corresponding location technique uses the first collection to determine a location for the mobile
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`station,” not every time, but only “when [the first collection is] provided” by the system. Id.
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`Preamble 2, according to TracBeam, further confirms that the first collection of satellite
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`measurements is not always going to be available by reciting “at least when the first collection is
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`not available.” Id.
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`Preamble 2 recites Step 2 must be performed “at least when said first collection is not
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`available.” Id. According to TracBeam, this means Step 2 must be performed when the first
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`collection of measurements is not available (when Step 1 is not performed), but Step 2 may or
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`may not be performed when the first collection is available (Step 1 is performed). The net effect
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 14 of 18 PageID #: 18086
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`of TracBeam’s conditional limitations is as follows: If the first collection is available, then the
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`invention may perform all three steps, or it may perform only Steps 1 and 3; if the first collection
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`is not available, then the invention performs Steps 2 and 3.
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`TracBeam’s construction is correct. Given the context of the term “when,” it indicates a
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`conditional requirement as the Preambles make clear. The Preambles clarify Steps 1 and 2 are
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`conditional depending on whether the system provides a first collection of measurements.
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`AT&T’s reading, on the other hand, contradicts the plain and ordinary meaning of the
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`Preambles. Moreover, AT&T’s provides no support for its argument that conditional steps are
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`inconsistent with the transitional word “comprising.” Therefore, the Court resolves the parties’
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`claim construction dispute concerning claim 25 as follows:
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`(1) “first obtaining” step: the step of “first obtaining the first location information of said
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`mobile station, the first location information determined by computational machinery when said
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`corresponding location technique for using the first collection is supplied with an instance of said
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`first collection” need not be performed in those circumstances in which the “first collection of
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`measurements” is not available;
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`(2) “second obtaining” step: the step of “second obtaining the second location
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`information of said mobile station, the second location information determined by computational
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`machinery when said corresponding location technique for receiving the second collection is
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`supplied with an instance of said second collection” may but need not be performed in those
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`circumstances in which the “first collection of measurements” is available.
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`AT&T argues that this construction contradicts Dr. Rose’s validity report, wherein Dr.
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`Rose distinguishes prior art by stating the invention requires all three steps to be performed. To
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`the extent that Dr. Rose uses the construction inconsistently between his validity and
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 15 of 18 PageID #: 18087
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`infringement reports, such a concern is better left for cross-examination. Likewise, whether this
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`otherwise proper construction raises validity concerns is not an appropriate reason for altering it.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005).
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`CONCLUSION
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`
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`For the foregoing reasons, TracBeam’s proposed construction is adopted and AT&T’s
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`Motion to Exclude Dr. Rose’s Opinions on Claim 25 is DENIED.
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`AT&T’S MOTION FOR SUMMARY JUDGMENT OF NO WILLFUL IFNRIGNEMENT
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`The Court denied AT&T’s motion to dismiss TracBeam’s claim of willful infringement
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`on March 27, 2012. AT&T moved to dismiss the claim because TracBeam failed to allege
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`AT&T possessed pretrial knowledge of the issued ‘231 Patent. The parties did admit, however,
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`that approximately ten years prior to the ‘231 Patent issuing, the inventor contacted AT&T
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`regarding the patent application. The Court noted TracBeam would likely need evidence of
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`AT&T’s knowledge of the issued ‘231 Patent and afforded TracBeam the opportunity for
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`discovery on the issue. Docket No. 196 at 5 (“[I]t is unlikely that [TracBeam] could proceed to
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`trial based solely on pre-issuance knowledge.”). TracBeam has been unable to produce such
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`evidence. Nevertheless, TracBeam still contends that AT&T willfully infringed the ‘231 Patent
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`by various legal theories that are unsupported in the law or require facts not present in the record.
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`Since TracBeam has no additional evidence to support its claims of willful infringement,
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`AT&T’s Motion for Summary Judgment of No Willful Infringement is GRANTED.
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`TRACBEAM’S MOTION FOR LEAVE TO RELY UPON SUPPLEMENTAL EXPERT
`REPORTS
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`TracBeam served its original reports on damages and infringement under the belief that
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`
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`AT&T’s accused E911 network used the sanity check feature for all calls. These reports were
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`timely filed on the June 10, 2013 deadline set in the Docket Control Order. AT&T’s rebuttal
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`Case 6:11-cv-00096-LED Document 551 Filed 11/25/13 Page 16 of 18 PageID #: 18088
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`non-infringement report attached evidence showing approximately 2% of E911 calls involved a
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`sanity check. TracBeam responded by serving Dr. Rose’s supplemental report on infringement
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`on August 28, 2013 and Mr. Mills’ supplemental report on damages on August 29, 2013
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`(“supplemental reports”). The supplemental reports argue calls made in the E911 network can
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`infringe regardless of whether sanity check is used. AT&T opposes TracBeam’s motion to rely
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`on these supplemental reports arguing the case is too close to trial to allow TracBeam’s new
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`infringement theories.
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`TracBeam argues the infringement theories in the supplemental reports are fully
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`consistent with its infringement contentions in the case. In addition, TracBeam contends these
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`reports are required under Rule 26(e) in response to the new evidence AT&T disclosed in its
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`rebuttal reports. AT&T counters the evidence in its rebuttal report is consistent with the
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`evidence it already produced. AT&T only included it because TracBeam’s original expert report
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`was the first time TracBeam highlighted the significance of the sanity check feature.
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`This dispute is magnified by the fact AT&T took Dr. Rose’s deposition before it served
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`its rebuttal repor