IN UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC,
`
`
`Plaintiff,
`
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA,
`LLC,
`
`
`Defendants.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:15-cv-00183-JRG-RSP
`
`JURY TRIAL REQUESTED
`
`
`
`
`
`EXPERT DECLARATION OF PAUL S. MIN, PH.D.,
`REGARDING THE CONSTRUCTIONS OF CERTAIN CLAIM LIMITATIONS OF
`U.S. PATENT NOS. 5,659,891 AND 5,809,428
`
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 1, IPR2015-01727
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I submit this expert report on behalf of Samsung Electronics Co., Ltd.,
`
`Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC
`
`(“Samsung”) on claim construction issues relating to U.S. Patent Nos. 5,659,891 (the “’891
`
`patent”) and 5,809,428 (the “’428 patent”).
`
`2.
`
`This expert report discloses my opinions regarding the indefiniteness of claims
`
`1, 2, 3, 4, and 5 of the ’891 patent and claims 1, 2, 4, and 6 of the ’428 patent.
`
`3.
`
`I reserve the right to supplement or modify the opinions expressed herein, as
`
`well as the bases for my opinions, depending on any information subsequently provided by
`
`plaintiff Mobile Telecommunications Technologies, LLC (“MTel” or “Plaintiff”) or
`
`discovered by Samsung.
`
`A.
`
`4.
`
`Background and Qualifications
`
`My qualifications are stated more fully in my curriculum vitae, which is
`
`attached to this expert declaration as Exhibit 1.
`
`5.
`
`I received a B.S. degree in Electrical Engineering in 1982, an M.S. degree in
`
`Electrical Engineering in 1984, and a Ph.D. degree in Electrical Engineering in 1987 from the
`
`University of Michigan in Ann Arbor. While I was at the University of Michigan in Ann
`
`Arbor, I received several academic honors, including my B.S. degree with honors, a best
`
`graduate student award, and a best teaching assistant award during my graduate study.
`
`6.
`
`After receiving my Ph.D., I worked at Bellcore (now Telcordia Technologies,
`
`which is part of Ericsson) in New Jersey from August 1987 until August 1990. At Bellcore, I
`
`was a leading system engineer for architecting migration plans for voice-centric telephone
`
`networks to data-centric, multi-service networks for the Regional Bell Operating Companies.
`
`
`
`2
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 2, IPR2015-01727
`
`

`
`
`
`7.
`
`In September 1990, I joined the faculty at Washington University in St. Louis.
`
`I was an Assistant Professor of Electrical Engineering until June 1996. In July 1996, I was
`
`promoted to an Associate Professor of Electrical Engineering with tenure.
`
`8.
`
`In May 1997, I took a leave from my full-time duties at Washington University
`
`and founded MinMax Technologies, Inc., a fabless semiconductor company that developed
`
`switch fabric integrated circuit chips for the Internet. In March 1999, I founded Erlang
`
`Technology, Inc., a fabless semiconductor company that focused on the design and
`
`development of integrated circuit chips and software for the Internet.
`
`9.
`
`From May 1997 to August 2008, I served as the president for MinMax
`
`Technologies, Inc. and Erlang Technology. As the president of these companies, I managed
`
`the development of business plans, raised startup funding from private investors and
`
`corporations and follow-on investment from institutional investors, managed finances,
`
`recruited key technology and business employees, developed intellectual property, and led the
`
`marketing and sales of products. I managed MinMax and Erlang in various stages, starting
`
`from just a few employees to over 70, and raised over US $30 million in investment.
`
`10.
`
`The products and solutions that I worked on at MinMax and Erlang include
`
`integrated circuit chips, application and component software programs, compact consumer
`
`electronics with the highest level of pricing sensitivity, enterprise equipment with extensive
`
`feature requirements, and highly reliable network equipment for the carriers. One of Erlang's
`
`products received a best product of the year award in 2004 from a major trade journal for the
`
`electronics industry.
`
`11.
`
`In August 2008, I resumed my full-time duties at Washington University.
`
`Currently, I am a Senior Professor of Electrical and Systems Engineering. During 2011-2014,
`
`served as the Chair of the Undergraduate Curriculum for the Department of Electrical and
`
`
`
`3
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 3, IPR2015-01727
`
`

`
`
`
`Systems Engineering. During 2000-2002, I served as the Chair of the Graduate Curriculum
`
`for the Department of Electrical and Systems Engineering.
`
`12.
`
`Over my professional career, I have conducted extensive research in
`
`communication, computing, and related electronic hardware and software. My research group
`
`has pioneered a new paradigm for designing electronic circuits that can alleviate the speed
`
`and performance mismatch against optical technology. I received several grants from U.S.
`
`Federal Agencies, including the National Science Foundation and the Defense Advanced
`
`Research Project Agency, and numerous contracts from the companies and organizations
`
`around the world.
`
`13.
`
`As a faculty member at Washington University, I have taught a number of
`
`courses in electronics, communication, and computing at both the undergraduate and graduate
`
`levels. Relating to the technology at issue in this report, I have taught ESE 471
`
`Communication Theory, ESE 571 Transmission and Multiplexing, and ESE 572 Signaling
`
`and Control in Communication Networks for a number of years. These courses cover various
`
`topics related to communication and computing.
`
`14.
`
`At Washington University, I have supervised more than 50 graduate students,
`
`twelve of whom received a doctoral degree under my guidance. Many of my former students
`
`are now leading professionals in their respective fields.
`
`15.
`
`I have also served in various technology and business advisor roles for other
`
`companies and organizations around the world. I was the main technical author for one of two
`
`winning proposals to the Korean government for CDMA wireless service licenses (1996). I
`
`have also been involved in a semiconductor company that specializes in semiconductor
`
`memories such as flash memories as a board member and as a technical advisor (2007 –
`
`2011).
`
`
`
`4
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 4, IPR2015-01727
`
`

`
`
`
`16.
`
`I am a named inventor on nine U.S. patents. I have extensively published
`
`technical memoranda, reports, and technical papers in international conferences and journals,
`
`and have given a number of seminars and invited talks. I have organized several international
`
`conferences and served as an international journal editor.
`
`17.
`
`I have received several professional awards, such as the Best Paper Award at
`
`Mobility 2011 Conference in Barcelona, Spain (2011), the faculty advisor to the Most Active
`
`Student Branch in the Region 5 of the Institute of Electrical and Electronics Engineers (the
`
`“IEEE”) (2009), the Wall Street Journal Businessman of Year for Missouri (2003), the
`
`Outstanding Achievement Award by Bellcore (1990), the Best Paper Award at the 18th
`
`ISATA Conference in Florence Italy (1988), Rockwell Fellowship by Rockwell International
`
`(1985 and 1986), Outstanding Graduate Student Award by the University of Michigan (1985),
`
`and Outstanding Teaching Assistant Award by the University of Michigan (1984 and 1986).
`
`18.
`
`I am a member of and have been actively involved in a number of professional
`
`organizations. For example, I served as the Chair of the Saint Louis Section of the Institute of
`
`Electrical and Electronics Engineers (“IEEE”) in 2014. I am currently a member of the
`
`Executive Committee of the Saint Louis Section of the IEEE, and a member of the Eta Kappa
`
`Nu Honor Society for electrical engineers. I have also served as an Ambassador of the
`
`McDonnell International Scholars Academy (2007-2013).
`
`B.
`
`19.
`
`Testimony
`
`I have testified as an expert both at depositions and at trial. Details are listed in
`
`my curriculum vitae, which is attached to this expert report as Exhibit 1.
`
`C.
`
`Compensation
`
`20. My compensation for this case is $500 per hour, plus expenses. My
`
`compensation does not depend in any way on the outcome of this case.
`
`
`
`5
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 5, IPR2015-01727
`
`

`
`
`
`II. MATERIALS CONSIDERED
`
`21.
`
`In forming my opinions, I have relied upon my knowledge of the state of the
`
`art at the time of the alleged inventions of the ’891 patent (i.e., on or before June 1995) and
`
`the ’428 patent (i.e., on or before July, 1996). Additionally, I have reviewed and considered
`
`the following documents and materials in forming my opinions:
`
` U.S. Patent No. 5,659,891 and file history (including the cited prior art), which
`
`includes a hand-drawn sketch of an emission mask (attached as Exhibit 2);
`
` U.S. Patent No. 5,809,428 and file history (including the cited prior art);
`
` MTel v. Samsung, Case No. 2:15-cv-00183, Complaint (Dkt. No. 1);
`
` MTel v. Sprint, Case No. 2:12-cv-00832 (lead case), Claim Construction Order
`
`(Dkt. No. 162);
`
` MTel v. Leap, Case No. 2:13-CV-885, Claim Construction Order (Dkt. No.
`
`114);
`
` MTel v. Amazon, Case No. 2:13-cv-00883, Claim Construction Order (Dkt.
`
`No. 79);
`
` MTel’s Infringement Contentions and Associated Exhibits on the ’428 and
`
`’891 patents;
`
` 47 C.F.R. § 22.106 (10-1-94 Edition) (attached as Exhibit 3);
`
`III.
`
`STANDARDS IN PATENT LAW
`
`22.
`
`In this expert report, I do not offer opinions related to the law, as I am not an
`
`attorney. I have, however, been informed by counsel of several principles concerning patent
`
`validity and claim construction, which I used to arrive at my conclusions.
`
`A.
`
`23.
`
`Claim Construction
`
`I am informed that the words of a claim are generally given their ordinary and
`
`customary meaning that they would have to a person of ordinary skill in the art at the time of
`
`
`
`6
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 6, IPR2015-01727
`
`

`
`
`
`the invention. To determine the meaning of a claim term, I am informed that the Court will
`
`look first to the claims and specification, then to the file history, and only if necessary, to
`
`other extrinsic evidence. I am informed that extrinsic evidence is not relevant if it contradicts
`
`the specification and file history.
`
`B. Means-Plus-Function Claims
`
`24.
`
`It is my understanding that patent claims may recite limitations as means-plus-
`
`function terms, which describe an element of a claim by what that element functionally does
`
`rather than by what it is.
`
`25.
`
`I am informed that, in order to construe a means-plus-function term, first the
`
`claimed function must first be determined, and second the corresponding structure in the
`
`written description of the patent that performs that function must be identified.
`
`26.
`
`It is my understanding that the patent specification must contain sufficient
`
`descriptive text by which a person of ordinary skill in the art at the time of the invention
`
`would know and understand what structure is necessary to perform the function of the means-
`
`plus-function term.
`
`C.
`
`27.
`
`Legal Standard for Indefiniteness
`
`It is my understanding that a patent’s specification should conclude with one or
`
`more claims particularly pointing out and distinctly claiming the subject matter which the
`
`applicant regards as his invention. Thus, a patent is invalid for indefiniteness if its claims,
`
`read in light of the specification and the prosecution history, fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.
`
`28.
`
`For a means-plus-function term, it is my understanding that structures capable
`
`of performing the claimed function that are not expressly disclosed in the specification as
`
`performing that function are not corresponding structures and are thus not covered by the
`
`claims (unless equivalent to the disclosed structures). This is because the inquiry is not
`
`
`
`7
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 7, IPR2015-01727
`
`

`
`
`
`whether one skilled in the art would be able to implement the claimed function, but whether
`
`one skilled in the art would recognize the specification of the patent to disclose a structure for
`
`doing so. In other words, the knowledge of a person of ordinary skill in the art cannot be used
`
`to fill in the gaps of an insufficient specification.
`
`29.
`
`I also understand that it is insufficient for the disclosed structure to be a “black
`
`box” that performs the recited function. If the disclosed structure is software, logic, or a
`
`computer processor, the specification must also disclose an algorithm for performing the
`
`function. That algorithm may be disclosed in any understandable form, including as a
`
`mathematical formula, in prose, or in any other manner that provides sufficient structure.
`
`Merely restating the claimed function, but without explaining how the “structure” performs
`
`the function, only describes a functional result, not an algorithm. If the specification does not
`
`describe any algorithm for performing the recited function, or describes an insufficient
`
`algorithm as viewed by a person of ordinary skill in the art, the claim is invalid as indefinite.
`
`30.
`
`I also understand that the specification does not have to disclose an algorithm
`
`if the recited function can be performed by any general purpose computer. For example, I
`
`understand that the function of “processing” has been found by the courts to be performable
`
`by any general purpose computer such that an algorithm in the specification is not necessary
`
`to satisfy the indefiniteness requirement. On the other hand, I have been told that the function
`
`of “transmitting” has been found by the courts to need a corresponding algorithm in the
`
`specification. As discussed further below in this report, in my opinion, “transmitting” is a
`
`more rudimentary function than “generating,” so a means-plus-function limitation whose
`
`function is “generating” would require a corresponding algorithm in the specification just as
`
`“transmitting” does.
`
`
`
`8
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 8, IPR2015-01727
`
`

`
`
`
`D.
`
`31.
`
`Person of Ordinary Skill in the Art
`
`According to the “Field of the Invention” of the ’891 patent, the purported
`
`invention of the ’891 patent “relates generally to multicarrier modulation techniques, and
`
`more particularly, to a method for operating more than one carrier in a single mask-defined,
`
`bandlimited channel assigned to mobile paging use.” ’428 patent at 1:5-8. The ’891 patent
`
`discloses a specific way of spacing carrier signals within bandlimited frequency channels used
`
`to send messages to pagers in a paging network. It requires an amount of padding between
`
`the outermost paging carrier in a channel and the channel boundary. Specifically, the space
`
`between the center of the outermost paging carrier and the channel boundary must be greater
`
`than half of the spacing between the adjacent paging carriers within the channel.
`
`32.
`
`A person of ordinary skill in the art around the time the ’891 patent was filed
`
`(June 7, 1995) would likely have been a person familiar with wireless communications
`
`networks by way of experience and schooling. That person would have had a working
`
`knowledge of the protocols and architecture of a wireless communication network, and would
`
`have been aware that there are specifications and regulations governing transmission of
`
`communications on wireless communication networks. That person would likely have earned
`
`a Bachelor’s Degree in Electrical Engineering and had at least four years of profession
`
`experience in wireless communication networks or earned a Master’s Degree in Electrical
`
`Engineering and had at least two years of professional experience in wireless communication
`
`networks. I consider myself to be a person of at least ordinary skill in the art.
`
`33.
`
`According to the “Field of the Invention” of the ’428 patent, the purported
`
`invention of the ’428 patent “relates generally to methods and devices for two-way wireless
`
`communications. More particularly, the present invention relates to methods and devices for
`
`processing data messages between a network operations center and a mobile unit in a two-
`
`way wireless network.” ’428 patent at 1:9-14. The ’428 patent discloses a data
`
`
`
`9
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 9, IPR2015-01727
`
`

`
`
`
`communications network in which messages are exchanged. It requires a network operations
`
`center that coordinates communications and maintains one or more databases relating to the
`
`functioning of the communications system. The ’428 patent also deals with wireless mobile
`
`units as end-user communication devices.
`
`34.
`
`Therefore, a person of ordinary skill in the art around the time the ’428 patent
`
`was filed (July 25, 1996) would have knowledge and familiarity with data communications
`
`networks, wireless communications systems, and software programming and algorithms for
`
`telecommunications applications. Sufficient familiarity and experience with the subject
`
`matter of the ’428 patent could be obtained by: (i) successfully completing an undergraduate
`
`degree in electrical engineering, with particular emphasis on digital networks and packet
`
`switching or (ii) successfully completing an undergraduate degree in computer science, with
`
`particular emphasis on computer network technology; and (iii) one or two years in a job
`
`working with digital networks and packet switching or computer network technology
`
`generally. I consider myself to be a person of at least ordinary skill in the art.
`
`IV.
`
`INVALIDITY DUE TO INDEFINITENESS
`
`THE ’891 PATENT
`
`It is my opinion that claims 1, 2, 3, 4, and 5 of the ’891 patent are invalid as
`
`A.
`
`35.
`
`indefinite.
`
`36.
`
`The term “band edge of the mask” is not a term that has a particular meaning
`
`in the field of wireless communication networks.
`
`37.
`
`The ’891 patent uses the term “band edge of the mask” to describe a
`
`relationship between the center frequencies of two carriers within “a single mask-defined,
`
`bandlimited channel 31” and describes one possible aspect of the claimed “band edge of the
`
`mask” when it describes the “nearest band edge of the mask” shown in FIG. 3B. ’891 patent
`
`at 4:30-35. A person of ordinary skill in the art would have understood from the description in
`
`the ’891 patent that, depending on whether center frequency of carrier 32a or carrier 32b is
`10
`
`
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 10, IPR2015-01727
`
`

`
`
`
`referenced, the “nearest band edge of the mask” aspect of the claimed “band edge of the
`
`mask” is located at one of the points that are labeled “Fm1” and “Fm2” in the annotated
`
`version of FIG. 3B below:
`
`38.
`
`The ’891 patent also includes FIG. 4, which the ’891 patent describes as “an
`
`exemplary FCC emissions mask that requires the power spectral density to be attenuated at
`
`least 70 dB within 10 kHz from center frequency.” ’891 patent at 3:16-18. FIG. 4 is
`
`reproduced below:
`
`
`
`
`
`11
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 11, IPR2015-01727
`
`

`
`Band edge at 3 3 dB
`
`~ 0
`........_ , .. /
`7
`,
`
`20
`
`10
`
`m~O -
`s
`c
`~ ~o
`
`i so
`
`60
`
`70
`
`.....
`,
`
`edge at Band
`
`730 dB
`
`\
`
`'
`
`"
`
`60
`· IS
`
`-1 0
`
`5
`()
`·5
`traQuency (lrom canier frequency) (kHz)
`
`10
`
`5
`I
`
`F J:GURB 4
`
`39.
`
`A person of ordinaiy skill in the a.it would have understood from the
`
`description in the '891 patent that the exempla1y mask shown in FIG. 4, which is an appai·ent
`
`subset of the claimed mask, has band edges at 10 kHz from the center frequency of the
`
`authorized channel shown in FIG. 4. These band edges conespond to a 70 dB emission limit
`
`that the FCC has established for that paiticulai· channel. '891 patent at 3: 16-18. The mask
`
`also has a band edge of less than 10 kHz from the center frequency at emission limits of less
`
`than 33 dB.
`
`40.
`
`The FCC authoiizes many different types of channels for communications
`
`usage. An FCC license or authorization to use a paiticulai· channel requires compliance with
`
`emission limits that ai·e defined by the FCC. These emission limit requirements, which are
`
`refened to as "emission masks," are design limits that ai·e imposed to ensure that
`
`transmissions within a channel do not inte1fere with transmissions in an adjacent channel.
`
`41 .
`
`In general, the emission limits established by the FCC identify multiple
`
`frequency points relative to the center frequency of the channel that ai·e of significance.
`
`Typically, each of these significant frequency points represents a point at which the emission
`
`12
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 12, IPR2015-01727
`
`

`
`
`
`limit changes. The FCC authorizes channels for many different types of uses. Depending on
`
`how the channel is used, the emission limits that govern use of the channel, including the
`
`significant frequency points, can be very different.
`
`42.
`
`As an example, the ’891 patent describes one type of channel, which the
`
`specification refers to as “a standard bandlimited channel assigned for mobile paging use,
`
`such as in the Narrowband Personal Communications Service or the Part 22 Service.” ’891
`
`patent at 5:11-15.
`
`43.
`
`The emission limits for the Part 22 Service are set forth in Section 22.106 of
`
`the FCC regulations. The file history of the ’891 patent includes a copy of the October 1, 1994
`
`version of Section 22.106, which I have reviewed. Section 22.106 in the October 1, 1994
`
`version defines five different emission masks, each of which has multiple different attenuation
`
`requirements that are tied to different frequency displacements from the center frequency of
`
`the channel. See Exhibit 2.
`
`44.
`
`As an example, Section 22.106(b)(2) defines three different emission limits for
`
`transmitters that operate in the frequency bands 450.0 to 512.0 MHz, or 929.0 to 932.0 MHz.
`
`The first emission limit applies to 5-10 kHz frequency displacement from the center
`
`frequency. The second limit applies to frequencies from 10 kHz up to 250% of the authorized
`
`bandwidth and sets a 70 dB cutoff. The third limit applies to frequencies beyond 250% of the
`
`authorized bandwidth. This particular mask contains at least four significant frequency points
`
`of interest: 5 kHz, 10 kHz, the frequency at which the 70 dB cutoff is met, and the frequency
`
`at 250% of the authorized bandwidth. See Exhibit 2.
`
`45.
`
`These various “band edge of the mask” options can be seen in the hand-drawn
`
`sketch of an emission mask that is in the file history of the ’891 patent which is reproduced
`
`below.
`
`
`
`
`
`13
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 13, IPR2015-01727
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`

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`
`
`
`
`14
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 14, IPR2015-01727
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`

`
`
`
`See Exhibit 3. The sketch is annotated in a manner that suggests that it represents the
`
`emission limits defined in Section 22.106(b)(2) for an authorized bandwidth of 16 kHz. The
`
`mask has multiple significant frequency points, any one of which a person of ordinary skill in
`
`the art could consider to be a “band edge of the mask.”
`
`46.
`
`The specification of the ’891 patent identifies a band edge at the 70 dB
`
`attenuation point in describing the specific FCC mask depicted in FIG. 4. Not all FCC
`
`emission masks have 70 dB cutoff points. As an example, of the five different masks defined
`
`in Section 22.106 of the FCC regulations, two of the masks do not include a 70 dB cutoff
`
`point at all. See Exhibit 2, Sections 22.106(a) & (b)(1).
`
`47.
`
`Emission limits for communication channels can also be defined by entities
`
`other than the FCC. As an example, standards bodies, like the IEEE, define emission masks
`
`for channels in which communications comply with IEEE standards, such as 802.11. These
`
`emission masks also do not necessarily include a 70 dB attenuation requirement.
`
`Transmissions in such channels also can be subject to the emission requirements of the FCC,
`
`which may not be the same as the emission requirements set by the IEEE.
`
`48.
`
`It is my opinion, based on the above, that the ’891 patent fails to inform one of
`
`skill in the art, with reasonable certainty, which of the various “band edge[s] of the mask” is
`
`being claimed and that the claim is, therefore, indefinite.
`
`THE ’428 PATENT
`
`It is my opinion that claims 1, 2, 4, and 6 of the ’428 patent are invalid as
`
`B.
`
`49.
`
`indefinite.
`
`50.
`
`It is my opinion that a person of ordinary skill in the art would understand
`
`central computer 106 with processor 308 in the Network Operations Center (“NOC”) of the
`
`’428 patent to be a general purpose computer for at least two reasons: First, processor 308 is
`
`
`
`15
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 15, IPR2015-01727
`
`

`
`
`
`declared in the specification to be a processor that can execute a variety of different software
`
`modules, and is therefore general purpose:
`
`In a preferred embodiment, modules 302, 304, 306, 310, 312, and 314
`comprise software or microcode and any hardware necessary to effect the
`execution of that software or microcode in accordance with conventional
`techniques. In an alternative embodiment, modules 302, 304, 306, 310, 312,
`and 314 can be implemented in electronic logic circuitry. Processor 308 is
`preferably any processor capable of executing the software or microcode of
`the foregoing modules and performing the processing functions described
`herein. (’428 patent at 5:59-6:1) (emphasis added).
`
`And second, if the inventors had intended for processor 308 to be a specialized processor such
`
`as a Digital Signal Processor (DSP), it could have been so designated within the specification
`
`and a person of ordinary skill in the art would have understood it to be so. It was not so
`
`designated.
`
`51.
`
`For the same reasons, it is my opinion that a person of ordinary skill in the art
`
`would understand controller 208 with processor 406 in the mobile unit to be a general purpose
`
`computer. (See, e.g., ’428 patent at 6:49-57).
`
`1.
`
`“means for determining whether an acknowledgement message is
`an acknowledgement to a data message or an acknowledgement to
`a probe message” (claims 1 and 2)
`
`52.
`
`It is my understanding that the parties agree that this term is a means-plus-
`
`function term, and that the function is “determining whether an acknowledgement message is
`
`an acknowledgement to a data message or an acknowledgement to a probe message.”
`
`53.
`
`One skilled in the art would understand that this means-for-determining
`
`function cannot be performed by any general purpose computer, but instead must be
`
`performed by a general purpose computer specially programmed to perform this function.
`
`For example, this function is not analogous to the generic function of “processing” that may
`
`be performable by any general purpose computer. Rather, “determining whether an
`
`acknowledgement message is an acknowledgement to a data message or an acknowledgement
`
`to a probe message” is a specialized function particular to this purported invention. Based
`
`
`
`16
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 16, IPR2015-01727
`
`

`
`
`
`upon my knowledge and experience, a general purpose computer cannot make such a
`
`determination unless it is specially programmed to do so. As discussed above, it is my
`
`understanding that, in a situation like this, where the function is only performable by a general
`
`purpose computer that is specially programmed, as a matter of law, the specification must
`
`disclose an algorithm for performing the function. That algorithm may be in any
`
`understandable form, including as a mathematical formula, in prose, or in any other manner
`
`that provides sufficient structure. It is my opinion that a person of ordinary skill in the art
`
`would not understand the specification of the ’428 patent to disclose such an algorithm.
`
`54.
`
`The Network Operations Center (“NOC”) consists of a general purpose
`
`computer, i.e., the central computer 106 and processor 308 (’428 patent at Figs. 1, 3), which
`
`requires special programming to implement the claimed function as explained above.
`
`55.
`
`I understand that MTel has identified the acknowledgement message
`
`processing (AMP) module 310 as the structure for performing the determining function.
`
`56.
`
`The AMP module 310 is part of the NOC as illustrated in FIG. 3 of the ’428
`
`patent:
`
`(’428 patent at Fig. 3).
`
`
`
`17
`
`
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 17, IPR2015-01727
`
`

`
`
`
`57.
`
`However, while it is true that the specification of the ’428 patent states that the
`
`AMP module “determines whether the message is a data acknowledgment message or a probe
`
`acknowledgment message,” ’428 patent at 5:25-27, there is nothing in the written description
`
`that discloses how the AMP module makes that determination. In other words, the
`
`specification merely states that the AMP module performs the “determining” function without
`
`describing how. There is simply no algorithm disclosed explaining how the “determining’
`
`function is performed.
`
`58.
`
`I understand that MTel may take a position that the following material from the
`
`’428 patent specification provides sufficient disclosure of structure for performing this
`
`“determining” function:
`
`[M]odule[] … 310 … comprise[s] software or microcode and any hardware
`necessary to effect the execution of that software or microcode in accordance
`with conventional techniques. In an alternative embodiment, module[] … 310
`… can be implemented in electronic logic circuitry.”
`
`’428 patent at 5:59-65.
`
`59.
`
`However, this disclosure, while listing materials of which module 310 can be
`
`composed—software; code; hardware; logic circuitry—does not teach or describe how an
`
`AMP module made of any of these (or any other) components “determin[es] whether an
`
`acknowledgement message is an acknowledgement to a data message or an acknowledgement
`
`to a probe message.”
`
`60.
`
`Accordingly, because the function of “determining whether an
`
`acknowledgement message is an acknowledgement to a data message or an acknowledgement
`
`to a probe message” can only be performed by a specially programmed general purpose
`
`computer, and because a person of ordinary skill in the art would not understand the ’428
`
`patent specification to disclose an algorithm for performing that function, the ’428 patent fails
`
`to satisfy the definiteness requirement with respect to this means-plus-function claim term.
`
`
`
`18
`
`MTel., Exhibit 2001, Samsung v. MTel., Page 18, IPR2015-01727
`
`

`
`
`
`61.
`
`I have been told that MTel took the position in the prior case against Samsung1
`
`that U.S. Patent No. 5,754,946 (the “’946 patent”), which is incorporated by reference into the
`
`’428 patent, describes how the AMP module performs the “determining” function, i.e.,
`
`distinguishes data acknowledgement messages from probe acknowledgment messages.
`
`Specifically, MTel referred to the following portion of the ’946 patent:
`
`Each mobile unit with transmit capability that has received a message in the
`immediately previous systemwide forward interval 2704 or the zonal forward
`interval 2708 will have an appropriate time slot for transmission scheduled in
`the systemwide response interval 2706, or the zonal reverse interval 2710,
`respectively. The timing circuit in the mobile transceiver unit determines the
`assigned time slot for transmission. For example, if the mobile unit simply
`intends to transmit an acknowledgment signal, which indicates that the mobile
`unit has properly received the message from the network, an 8 bit preamble
`followed by the address of that mobile unit need only be transmitted and a 3 bit
`acknowledgment.
`
`’946 patent at 27:41-53.
`
`62.
`
`However, the above excerpt only discloses that an acknowledgement message
`
`from a mobile unit can have a specific content and format, and be transmitted during different
`
`time intervals – without explaining how these factors are relevant to data acknowledgements
`
`or probe acknowledgements. The excerpt also fails to describe sufficient structure because it
`
`does not disclose anything relating to the AMP module located within the NOC, or how the
`
`AMP module “determin[es] whether an acknowledgement message is an acknowledgement to
`
`a data message or an acknowledgement to a probe message.” In fact, there is no mention
`
`anywhere in the excerpt of any probe or data messages or methods of distinguishing
`
`acknowledgemen