Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 1 of 29 PageID #: 10374
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`
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`TRACBEAM, L.L.C.,
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`Plaintiff,
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`vs.
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`T-MOBILE US, INC. AND
`T-MOBILE USA, INC.,
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`Defendants.
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`§
`§
`§
`§
`§
`§
`§
`§
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`§
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`CAUSE NO. 6:14-CV-678
`LEAD CASE
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`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion construes the disputed claim terms in United States Patent
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`Nos. 7,298,327 (“the ’327 Patent”); 7,525,484 (“the ’484 Patent”); 7,764,231 (“the ’231
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`Patent”); and 8,032,153 (“the ’153 Patent) asserted by Plaintiff TracBeam L.L.C. (“TracBeam”)
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`against Defendants T-Mobile US, Inc. and T-Mobile USA, Inc. (“T-Mobile”) and Apple, Inc.
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`(“Apple”). On December 18, 2015, the parties presented oral arguments on the disputed claim
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`terms at a Markman hearing. Apple has since settled and many of the disputes are now moot.
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`The Court construes what it understands to be the remaining live disputes between TracBeam
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`and T-Mobile based on the Joint Claim Construction Chart, T-Mobile’s arguments at the hearing,
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`and TracBeam’s Notice of Disputed Claim Constructions, see Docket No. 254. For the reasons
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`stated below, the Court ADOPTS the following constructions.
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`BACKGROUND
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`The specifications of the four patents are substantially similar. All patents claim priority
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`to three provisional applications filed in 1996 and 1997. Though not issued first, the ’231 Patent
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`was the immediate parent application for the other three patents. To be consistent with the
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`
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`TracBeam Exhibit 2004
`T-Mobile et al. v. TracBeam, LLC
`IPR2015-01708
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 2 of 29 PageID #: 10375
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`parties’ briefing, unless otherwise noted citations are made to the ’231 Patent specification (in
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`the col:line form xx:yy).
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`The ’484 Patent and ’231 Patent were the subject of a prior litigation: TracBeam, LLC v.
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`AT&T, Inc., No. 6:11-cv-96 (E.D. Tex.). A claim construction order issued in that case at
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`Docket No. 352, Jan. 23, 2013 (“TracBeam I Order”). A number of follow-on orders that
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`touched on claim construction in some manner were issued in the TracBeam v. AT&T case and in
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`the severed action, TracBeam, LLC v. Google, Inc., No. 6:13-cv-93 (E.D. Tex.). See Docket
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`Nos. 517, 551, and 583 (TracBeam v. AT&T) and 226 (TracBeam v. Google).
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`In general, the patents relate to methods and systems for determining the location of
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`mobile devices (or mobile stations), such as cell phones. In the Background of the Invention, the
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`patents identify a wide range of prior art techniques for locating mobile devices including, for
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`example, signal strength and triangulation, time of arrival and triangulation, GPS, differential
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`GPS, etc. 1:25–7:58.
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`The patents provide for the use of multiple location techniques for locating a mobile
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`device. The techniques may be activated in combination for outputting a mobile device estimate.
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`’231 Patent Abstract. Utilizing the plurality of techniques in combination alleviates some of the
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`drawbacks of the prior art systems. ‘484 Patent Abstract. The systems are useful for a variety of
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`applications such as 911 emergency locating, tracking, routing, and people and animal location.
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`Abstract.
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`The patents cite to various location techniques for using measurements of the wireless
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`signals communicated between mobile devices and a network of base stations. 8:1–4. The
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`techniques include, for example, time of arrival, triangulation, angle of arrival, pattern matching
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`and GPS techniques. 8:37–51. Figure 4 illustrates a high level system overview in which a
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 3 of 29 PageID #: 10376
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`plurality of mobile stations 140 and a plurality of base stations 122 and 152 are provided. 24:36-
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`65.
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`Fig. 4 (highlighting added). A location center 142 is used for determining the location of a
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`mobile station 140 using signal characteristics for the particular mobile station. 25:6–10.
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`Location applications may request mobile station locations through use of the location center.
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`26:59–60.
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`The disputed terms are referred to herein generally with regard to the Term Groups (A, B,
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`C…) provided in the parties’ Joint Claim Construction chart: Docket No. 162-1. Within each
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`group, the parties’ final claim chart refers to individual terms by number, for example, E1, E2,
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`E3, E4.
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 4 of 29 PageID #: 10377
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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) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
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`the patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
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`claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312–13;
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`Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
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`customary meaning as understood by one of ordinary skill in the art at the time of the invention.
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`Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
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`2003).
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`Claim language guides the Court’s construction of claim terms. Phillips , 415 F.3d at
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`1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
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`Other claims, asserted and unasserted, can provide additional instruction because “terms are
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`normally used consistently throughout the patent.” Id. Differences among claims, such as
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`additional limitations in dependent claims, can provide further guidance. Id.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’ ” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 5 of 29 PageID #: 10378
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`terms, give a claim term a different meaning that it would otherwise possess, or disclaim or
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`disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes
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`terms possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
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`1343–44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
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`Cir. 2004).
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
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`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
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`claim ‘is rarely, if ever, correct.’ ” Globetrotter Software, Inc. v. Elam Computer Group Inc.,
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`362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But,
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`“[a]lthough the specification may aid the court in interpreting the meaning of disputed language
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`in the claims, particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988); see also Phillips, 415 F.3d at 1323.
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`Although “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 6 of 29 PageID #: 10379
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`I.
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`Claim Construction of Disputed Terms
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`1. Group A: “mobile station” terms. “mobile station” (’231 Claims 1, 6, 7, 17, 18, 20,
`24, 25, 36, 82, 155, 162; ’484 Claims 1, 25, 45, 49, 51, 56, 57, 63; ’153 Claims 1, 3, 7,
`15, 17, 35) and “wireless mobile station” (’231 Claims 17, 18, 20, 25; ’484 Claims 1,
`45, 49, 51; ’153 Claims 1, 3, 15, 17, 35)
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`TracBeam’s Proposed Construction
`“mobile wireless device that is at least a
`transmitting device and may include a
`receiving device”
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`[same for both terms]
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`Defendants’ Proposed Construction
`“portable wireless device, such as a portable
`radio telephony handset”
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`[same for both terms]
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`The parties treat both the “mobile station” and “wireless mobile station” terms the same.
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`Docket No. 174 at 6:24–7:2.
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`
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`“Mobile station” is defined in the specification:
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`(3.2) As used herein, the term “mobile station” (equivalently, MS) refers to a
`wireless device that is at least a transmitting device, and in most cases is also a
`wireless receiving device, such as a portable radio telephony handset. Note that in
`some contexts herein instead or in addition to MS, the following terms are also
`used: “personal station” (PS), and “location unit” (LU). In general, these terms
`may be considered synonymous. However, the later two terms may be used when
`referring to reduced functionality communication devices in comparison to a
`typical digital wireless mobile telephone.
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`9:45–55. Both parties agree with the TracBeam I court that this definition is somewhat
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`cumbersome. Docket No. 174 at 8:8–10, 19:8–9. However, the parties present three disputes on
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`how to improve it. First, Defendants want to eliminate the phrase “at least a transmitting device,
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`and in most cases is also a wireless receiving device” while TracBeam wants to reword this
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`phrase to make it more readily understandable (i.e., “at least a transmitting device and may
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 7 of 29 PageID #: 10380
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`include a receiving device.”) Docket No. 148 at 2–3. Second, Defendants want to expressly
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`include the example “such as a portable radio telephony handset” where TracBeam wants to
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`either exclude that specific example or include all the examples from the definition. Id. at 4.
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`Finally, while both sides also agree the construction should indicate that a mobile station must be
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`non-stationary, Defendants want do so by using the word “portable” while TracBeam wants to
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`use the word “mobile.” See Docket No. 148 at 3; Docket No. 174 at 23:9–13. TracBeam
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`proposes “mobile” because “there is no ambiguity in the term ‘mobile’ .” Docket No. 156 at 3.
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`Defendants propose “portable” because “[c]onstruing a claim term using the words of the claim
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`term itself (i.e., construing ‘mobile station’ using the word ‘mobile’) defeats the purpose of claim
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`construction as it provides no further clarity on the meaning of the term.” Docket No. 148 at 3.
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`
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`Defendants have not provided a sufficient reason to exclude the phrase “at least a
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`transmitting device, and in most cases is also a wireless receiving device.” A jury can readily
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`understand that a mobile station must be a transmitting device and may also be a receiving
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`device—as TracBeam’s language makes clear. Likewise, including the single example of a
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`“portable radio telephony handset” at the exclusion of the other examples places undue emphasis
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`on that particular example. The Court is more inclined to present a clear, succinct construction
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`to the jury and the parties are of course free to focus on the relevant examples as they see fit
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`during trial. Finally, the Court understands the mobile vs. portable dispute has more to do with a
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`forthcoming written description argument than a genuine claim construction dispute. See e.g.,
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`Docket No. 174 at 11:16–14:19; TracBeam L.L.C., v. AT&T Inc., Cause. No. 6:11cv96, No. 551
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`at 4–6. Such validity concerns are generally not a proper basis for a claim construction. Phillips,
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`415 F.3d at 1327–28. The parties do not generally dispute the meaning of “mobile” and the jury
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`can readily understand its meaning, so there is no need to construe it.
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 8 of 29 PageID #: 10381
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`Accordingly, the Court adopts the prior construction and construes the “mobile station”
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`terms as “mobile wireless device that is at least a transmitting device and may include a
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`receiving device.”
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`2. Group D: “location information” terms. “location information” (’231 Claims 17, 18,
`20, 25, 36, 81, 82, 155, 162; ’484 Claims 1, 25, 45, 51, 57, 63; ’327 Claims 1, 2, 60).
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`TracBeam’s Proposed Construction
`No construction necessary
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`T-Mobile’s Proposed Construction
`information that itself can be used to identify a
`location of a mobile station
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`The primary dispute concerns T-Mobile’s use of the word “itself.” T-Mobile asserts that
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`
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`its construction is based on a statement made by the Court in the TracBeam I Order: “Location
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`information itself is something that can be used to identify a location.” TracBeam I Order at 14.
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`T-Mobile argues that the surrounding claim language clarifies that “the ‘location information’ is
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`‘for locating the mobile station’ (’231 at 179:55, 179:58) and is ‘us[ed]’ to determine the
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`‘resulting location estimate[]’ (id. at 179:53–58). Docket No. 148 at 14. T-Mobile also relies on
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`the specification, which states that “location information may be obtained from . . . location
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`techniques for locating a mobile station and it is ‘used for deriving therefrom an enhanced
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`location estimate.’ ” Docket No. 148 at 14–15 (quoting 12:7–16 and citing 13:28–36, 55:5–10,
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`60:45–51, and 110:35–41).
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`The analysis in the TracBeam I Order applies to this dispute. The context in that order
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`clarifies that the location information alone does not have to identify a particular location, but
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`rather is just information that is used in the process of determining a location.
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`This implies that “location information” is broader than merely identifying a
`location. Instead, obtaining location information is just part of the process of
`obtaining an actual location identification or estimate. Obtaining location
`information occurs before analyzing the information obtained from multiple
`sources. See ’231 Patent, Claim 1, at 171:29–35. The output of that analysis is the
`actual identification of a location. Location information itself is something that
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 9 of 29 PageID #: 10382
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`can be used to identify a location. ’231 Patent, at 27:46–53; id. at 110:35–41. The
`actual identification of a location occurs in later steps. Thus, location information
`does not have to identify a location.
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`TracBeam I Order at 14 (emphasis added). The use of “itself” was in reference to the prior
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`sentence which discussed that the “output of the analysis” is the actual identification of a
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`location. This was contrasted to the information “itself” which is an input to the analysis.
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`Further, the sentence that forms the basis for T-Mobile’s argument does not fully support T-
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`Mobile’s construction. The sentence does not state location information “itself can be used…”
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`Rather, the sentence states “location information itself” is something that is “used” to identify a
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`location. This understanding comports with T-Mobile’s cited intrinsic evidence. Finally, there is
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`no special meaning with the phrase “location information,” which can easily be understood by a
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`jury.
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`Accordingly, the Court finds that no construction is needed for the “location
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`information” terms.
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`3. Group E: “mobile station location estimator, . . . evaluator, . . . determiner, and . . .
`source terms” terms. “mobile station location estimator” (’153 Claims 1, 3); “mobile
`station location evaluator” (’484 Claim 25); “location determiner” (’327 Claims 1, 2,
`6, 44, 47, 60, 62, 67, 69); “location estimating source” (’484 Claim 1).
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`Disputed Terms
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`(E1) “mobile station location
`estimator”
`[’153 Claims 1, 3]
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`TracBeam’s Proposed
`Construction
`machine executed process for
`providing mobile station
`location estimates
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`(E2) “mobile station location
`evaluator”
`[’484 Claim 25]
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`machine executed process for
`evaluating mobile station
`location information
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`(E3) “location determiner”
`[’327 Claims 1, 2, 6, 44, 47,
`60, 62, 67, 69]
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`machine executed process for
`providing mobile station
`location estimates
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`Defendants’ Proposed
`Construction
`T-Mobile: subject to
`35 U.S.C. § 112(6)
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`Claimed Function(s):1
`(E1): estimating mobile
`station locations
`(E2): evaluating mobile
`station location
`(E3): determining mobile
`
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`1 T-Mobile proposed these functions at the hearing. Docket No. 174 at 110:18–22.
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 10 of 29 PageID #: 10383
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`(E4) “location estimating
`source”
`[’484 Claim 1]
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`source (such as a computer
`system, device, or component)
`for estimating mobile station
`locations
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`station location
`(E4): estimating mobile
`station locations
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`Specification Structure:2
`(E1), (E3), & (E4): a location
`center running location
`hypothesizing models (FOMs)
`(E2): a location center running
`a hypothesis evaluator
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`The parties dispute whether these terms must be construed as means-plus-function terms
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`according to 35 U.S.C. § 112 ¶ 6. T-Mobile asserts that the claim terms are all “self-descriptive
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`terms” that describe an associated function without reciting structure for performing the
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`structure. Docket No. 148 at 16–17. T-Mobile asserts that the claim terms use generic nonce
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`terms “source,” “evaluators,” “estimators,” and “determiners” and the prefixes used in the terms
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`before these nonce words merely identify function performed by the nonce word without
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`specifying structure. Id. at 17. T-Mobile argues that the terms do not have a sufficiently definite
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`structure, as evidenced by the fact that TracBeam’s expert, Dr. Christopher Rose, admits he does
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`not recognize the terms. Docket No. 164-2 at 1–2. T-Mobile argues that TracBeam
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`acknowledges these terms need structure by construing the terms to have “computational
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`machinery” or similar phrases, but T-Mobile contends that “ ‘computational machinery’ and
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`related variations are equivalent to other similar ‘nonce’ terms deemed to be subject to means-
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`plus-function interpretation.” Id. at 2.
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`T-Mobile argues that once the terms are established as means-plus-function terms, the
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`terms are then limited to the corresponding structure disclosed in the specification. Docket No.
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`2 T-Mobile modified their proposed structure for the “evaluator” term to harmonize with T-Mobile’s newly proposed
`functions, see Docket No. 174 at 112:10–14; see also n.2 supra.
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 11 of 29 PageID #: 10384
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`148 at 18. T-Mobile asserts that the corresponding structure for the Group E terms (“sources,”
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`“evaluators,” “estimators,” and “determiners”) are the location hypothesizing models of the
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`location center. T-Mobile quotes several passages which link these terms to the “location
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`hypothesizing models” (also called “first order models” or FOMs). Id. at 19 (citing 24:43–48,
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`37:15–33, 50:7, 50:37–45). T-Mobile cites to its expert to assert that the location center
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`implementing location hypothesizing models is the only structure disclosed for performing the
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`claimed functions. Id. (citing declaration of Scott Andrews).
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`
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`TracBeam asserts that merely because a term itself is self-descriptive or functional does
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`not mean the term is a means-plus-function term. Docket No. 156 at 12. TracBeam notes that
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`none of the words are “nonce” words, but rather each term itself has meaning. Id. (citing its
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`expert, Dr. Christopher Rose). TracBeam cites to Dr. Rose ’s declaration to assert that one
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`skilled in the art would understand the various terms describe structure corresponding with
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`TracBeam’s proposed constructions. Id. at 12–13. As to T-Mobile’s argument that all the claims
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`follow the means-plus-function format, TracBeam disagrees. TracBeam notes that merely
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`substituting “means” into the claims and striking the disputed terms shows the claims are not in
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`the traditional format: “initiating a plurality of requests for information related to the location of
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`said mobile station M, the requests provided to each of at least two [means] mobile station
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`location evaluators” (‘484 Patent Claim 25). Id . at 13. TracBeam asserts the claims are not
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`drafted in a manner in which the term is listed with associated function, as even T-Mobile admits
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`the terms are self-descriptive. Id.
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`
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`TracBeam argues that in the event the Court finds that § 112 ¶ 6 applies, T-Mobile’s
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`proposed function and corresponding structure are incorrect. Id. at 14. T-Mobile proposed new
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`functions at the hearing in response to this criticism. See Docket No. 174 at 110:18–22. As to
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 12 of 29 PageID #: 10385
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`the corresponding structure, TracBeam asserts that for each term, T-Mobile points to the same
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`structure: (1) location hypothesizing models (2) on a “location center.” Id. TracBeam asserts
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`that the terms are not limited to hypothesizing models but encompass models that evaluate and
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`adjust location hypotheses, and some terms encompass computer hardware and software that
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`implements or performs the models. Id. (citing Dr. Rose decl. ¶¶ 24–26). TracBeam further
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`asserts that the “location hypothesizing models” are not found only “on a location center.” Id.
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`(citing Rose decl. ¶ 30). TracBeam asserts that a mobile base station, Internet server sites, and
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`Internet user nodes are structures that can perform location hypothesizing models, Docket No.
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`174 at 103:12–16, and that even T-Mobile’s expert, Mr. Scott Andrews, acknowledges that they
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`are also found on a mobile base station, Docket No. 156 at 14 (citing Andrews decl. and
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`deposition).
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`
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`T-Mobile evidence and arguments show these terms invoke 35 U.S.C. § 112 ¶ 6.
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`TracBeam’s proposed construction implicitly admits these terms are purely functional. Though
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`TracBeam correctly states that purely functional terms do not necessarily invoke § 112 ¶ 6, such
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`terms generally avoid § 112 ¶ 6 by conveying a meaning to people skilled in the art, such as
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`“ ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’ ” See Greenberg v. Ethicon Endo-Surgery,
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`Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996). Here, though, TracBeam’s expert acknowledges that
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`the terms do not inherently provide meaning of a structure to one skilled in the art. Docket No.
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`164-2 at 1–2. TracBeam and its expert have not identified any particular meaning to one skilled
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`in the art to the term beyond a software process, collection of processes or a model that has the
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`function of the word. See, e.g., Docket No. 164-4, Dr. Rose dep. at 54:16–60:20. Thus,
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`TracBeam has not established that the terms carry meaning to one skilled in the art other than
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`just the purely functional description.
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 13 of 29 PageID #: 10386
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`The TracBeam I court has previously found similar terms not subject to § 112 ¶ 6.
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`TracBeam I Order at 11. However, TracBeam I was issued prior to Williamson which clarified
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`that that lack of traditional means-plus-function language only creates an ordinary presumption.
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`See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (quotations omitted). Additionally,
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`the fact that the disputed terms have not been previously identified as “nonce” words is not
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`controlling. The mere use of a previously-known nonce word is not the ultimate test.
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`Williamson 792 at F.3d at 1350. The question before the Court is whether the written description
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`would “impart any structural significance” “that might lead us to construe that expression as the
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`name of a sufficiently definite structure.” Id. at 1351. The parties agree that the terms relate to
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`some type of software related processes: TracBeam seeking “machine executed process” and T-
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`Mobile pointing the specifications reference to “models” and “first order models” which are
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`“computational models” “wireless location techniques.” See Abstract, 11:64.
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`In the context of the asserted claims, the disputed terms “estimator,” “evaluator,”
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`“determiner,” and “source” do not provide meaning to one skilled in the art being some specific
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`hardware or software structure beyond the mere recited function. Thus, T-Mobile has rebutted
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`the presumption against finding these as means-plus-function terms. The Court notes that the
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`experts (Dr. Rose and Andrews) provide some conflicting testimony. Even accepting Dr. Rose’s
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`testimony, TracBeam’s evidence is lacking. Despite being deposed on this very topic,
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`TracBeam’s expert never clearly states that these terms convey a well understood meaning to one
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`of ordinary skill in the art. Docket No. 164-2 (citing Dr. Rose dep.). On balance, T-Mobile’s
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`interpretation of the extrinsic evidence is persuasive. See Teva Pharm. USA, Inc. v. Sandoz, Inc.,
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`135 S. Ct. 831, 843 (2015) (reviewing District Court’s factual findings under the clearly
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`erroneous standard). In viewing the totality of the intrinsic evidence and weighing the extrinsic
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 14 of 29 PageID #: 10387
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`evidence, TracBeam has not established that the terms have some reasonably well understood
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`meaning in the art beyond the pure function.
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`Finally, TracBeam has not shown that this is a case in which the surrounding claim
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`language provides sufficient descriptions of the inputs, outputs, structural coupling details on the
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`results are achieved, etc. which would take the purely functional terms out of the realm of a
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`means-plus-function interpretation. Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1301 (Fed. Cir.
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`2014). TracBeam shows that the claims are not written in the standard means-plus-function
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`format—that is, replacing the disputed terms with the word “means” generally makes the claim
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`difficult to understand. See Docket No. 156 at 13. However, these claims were often drafted in
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`an atypical format and the fact remains that the disputed terms serve as a functional placeholder.
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`In viewing the totality of the intrinsic evidence and weighing the extrinsic evidence, TracBeam
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`has not established that the terms have some reasonably well understood meaning in the art other
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`than the purely functional meaning of the words themselves.
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`Having determine these terms fall within the purview of § 112 ¶ 6, the Court must
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`identify the claimed function and corresponding structure. As mentioned above, T-Mobile
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`proposed new functions at the hearing that closely match the functions in TracBeam’s proposed
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`constructions. The Court finds there is no genuine dispute remaining over the functions and
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`adopts the functions T-Mobile proposed at the hearing.
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`
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`T-Mobile’s proposed corresponding structure is improperly limited, however. T-Mobile
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`argues that the only structure clearly linked to the claimed functionality is the location center
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`running hypotheses models (or a location center running a hypothesis evaluator in the case of the
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`“location evaluator” term). Docket No. 148 at 18–20. TracBeam argues that the structure should
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`not be limited to a location center, but include a “ ‘mobile base station’ (which is also a type of
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`Page 14 of 29
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`

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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 15 of 29 PageID #: 10388
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`‘mobile station’) and the ‘Internet server sites’ and ‘Internet user nodes.’ ” Docket No. 156-7,
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`Rose decl. ¶ 30, see also id. at 15.
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`At the hearing, T-Mobile conceded that an Internet server site is not excluded from
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`structure that can perform the claimed functions. Docket No. 174 at 114:7–11. (“[T]he location
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`center can operate on -- can be a server or a gateway. So I don't think there's a lot of dispute that
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`the location center, part of that structure can be an Internet server.”). Regarding Internet user
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`nodes, an Internet user node does not determine a location estimate, rather an Internet user node
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`processes a location estimate after it is first determined by a first order model (hypotheses
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`model):
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`In an alternative embodiment of the present invention, the processing following
`the generation of location hypotheses (each having an initial location estimate) by
`the first order models may be such that this processing can be provided on
`Internet user nodes and the first order models may reside at 25 Internet server
`sites. In this configuration, an Internet user may request hypotheses from such
`remote first order models and perform the remaining processing at his/her node.
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`20:20–27 (emphasis added). TracBeam never offered an example of an Internet user node
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`performing the location estimate on its own. Therefore the Court’s construction should not be
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`read to exclude Internet server sites, but does exclude Internet user nodes to the extent they are
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`not combined with other structure.
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`
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`Regarding mobile base stations, the patents clearly describe mobile base stations as
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`performing the claimed functions. Column 26 describes mobile base stations for locating itself
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`and the target mobile stations. 26:55–61 (“[T]he MBS [mobile base station] 148 may further
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`contain a global positioning system (GPS), distance sensors, deadreckoning electronics, as well
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`as an on-board computing system and display devices for locating both the MBS 148 itself as
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`well as tracking and locating the target MS 140.”). T-Mobile’s expert also concedes that “the
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`location hypothesizing models described in the TracBeam patents can also be implemented on
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`Page 15 of 29
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`Case 6:14-cv-00678-RWS Document 256 Filed 07/14/16 Page 16 of 29 PageID #: 10389
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`what's called a mobile base station.” Docket No. 156, Ex. 12 at 55:5–10; see also id. at 59:24–
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`61:6. “ When multiple embodiments in the specification correspond to the claimed function,
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`proper application of § 112, ¶ 6 generally reads the claim element to embrace each of those
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`embodiments.” Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir.
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`1999). Accordingly, the construed structure must include a mobile base station.
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`
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`T-Mobile, however, has not conceded that its proposed structure of a location center
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`would include mobile base stations, despite the fact that its expert admits that mobile base
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`stations implement the first-order models. See Docket No. 175-1, Andrews dep. 58:14–59:20.
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`Therefore, to remove any doubt, the Court specifically identifies a mobile base station as a
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`structure that can perform the corresponding functions. This issue is closely related to whether a
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`mobile base station is a type of a mobile station. Nothing in this Order should be read to resol