THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`CELLULAR COMMUNICATIONS
`EQUIPMENT LLC,
`
`v.
`
`AT&T, INC., et al.
`
`
`§
`§
`§
`§
`§
`§
`§
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`
`
`
`
` CASE NO. 2:15-CV-576-RWS-RSP
`
`On November 29, 2016, the Court held a hearing to determine the proper construction of
`
`
`
`disputed claim terms in United States Patents No. 8,457,022, 8,457,676, 8,570,957, 8,867,472,
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`9,025,590, and 9,078,262. Having reviewed the arguments made by the parties at the hearing
`
`and in their claim construction briefing (Dkt. Nos. 253, 265, 269, 270-1, 278, 303, 306 & 307),1
`
`having considered the intrinsic evidence, and having made subsidiary factual findings about the
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`extrinsic evidence, the Court hereby issues this Claim Construction Memorandum and Order.
`
`See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v.
`
`Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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`
`
`
`
`
`1 Citations to documents (such as the parties’ briefs and exhibits) in this Claim Construction
`Memorandum and Order refer to the page numbers of the original documents rather than the
`page numbers assigned by the Court’s electronic docket unless otherwise indicated.
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 3
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`II. LEGAL PRINCIPLES ........................................................................................................... 3
`
`III. THE PARTIES’ STIPULATED TERMS ........................................................................... 6
`
`IV. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 6
`
`A. “radio network resources” (’957 Patent, Claims 4, 10) ........................................................ 7
`
`B. “subtracting the nominal maximum transmission power and the power that the
`apparatus would use if it did not apply maximum power limitations” (’957 Patent,
`Claims 1, 7) ........................................................................................................................... 9
`
`C. “when applicable” (’957 Patent, Claims 4, 10) ................................................................... 12
`
`D. ’957 Patent, Claims 7-9 ....................................................................................................... 14
`
`E. “one or more of the predetermined subframes” (’022 Patent, Claims 1, 6) ........................ 17
`
`F. “establish(ing) channel information with respect to the selected downlink component
`carrier” (’472 Patent, Claims 1, 28) .................................................................................... 21
`
`G. “the channel information” (’472 Patent, Claims 1, 10, 11, 26, 28, 55; ’262 Patent,
`Claims 14, 29) ..................................................................................................................... 23
`
`H. “on a component carrier for which the aperiodic channel information is provided”
`(’472 Patent, Claims 15, 44) ............................................................................................... 25
`
`I. “processor [is] configured to . . .” (’472 Patent) .................................................................. 27
`
`J. “processor [is further] configured to . . .” (’262 Patent) ...................................................... 35
`
`K. “memory including software . . .” (’676 Patent, Claim 19) ................................................ 38
`
`L. “redundancy version signaling module configured to detect start of a system
`information message transmission window and to assign a redundancy version
`sequence at the start of the transmission window” (’022 Patent, Claim 6) ........................ 41
`
`V. CONCLUSION...................................................................................................................... 43
`
`APPENDIX A .............................................................................................................................. 45
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`I. BACKGROUND
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`
`
`Plaintiff has alleged infringement of United States Patents No. 8,457,022 (“the ’022
`
`Patent”), 8,457,676 (“the ’676 Patent”), 8,570,957 (“the ’957 Patent”), 8,867,472 (“the ’472
`
`Patent”), 9,025,590 (“the ’590 Patent”), and 9,078,262 (“the ’262 Patent”) (collectively, the
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`“patents-in-suit”). Plaintiff submits that the patents-in-suit relate to wireless communications,
`
`such as LTE cellular wireless standards. Dkt. No. 253 at 1.
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`
`
`Shortly before the start of the November 29, 2016 hearing, the Court provided the parties
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`with preliminary constructions with the aim of focusing the parties’ arguments and facilitating
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`discussion. Those preliminary constructions are set forth below within the discussion for each
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`term.
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`II. LEGAL PRINCIPLES
`
`
`
`“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.,
`
`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim construction is clearly an issue of law for the
`
`court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995)
`
`(en banc), aff’d, 517 U.S. 370 (1996). “In some cases, however, the district court will need to
`
`look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to
`
`understand, for example, the background science or the meaning of a term in the relevant art
`
`during the relevant time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
`
`(2015) (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need
`
`to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary
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`underpinnings’ of claim construction that we discussed in Markman, and this subsidiary
`
`factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).
`
`
`
`To determine the meaning of the claims, courts start by considering the intrinsic
`
`evidence. See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388
`
`F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
`
`262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d
`
`at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips,
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`415 F.3d at 1312-13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
`
`2003).
`
`
`
`The claims themselves provide substantial guidance in determining the meaning of
`
`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
`
`can be very instructive. Id. Other asserted or unasserted claims can aid in determining the
`
`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
`
`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
`
`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
`
`the independent claim does not include the limitation. Id. at 1314-15.
`
`
`
`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
`
`at 1315 (quoting Markman, 52 F.3d at 979 (en banc)). “[T]he specification ‘is always highly
`
`relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
`
`the meaning of a disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
`
`terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
`
`or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
`
`lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim
`
`terms “where the ordinary and accustomed meaning of the words used in the claims lack
`
`sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
`
`Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification may aid the court in interpreting
`
`the meaning of disputed claim language, particular embodiments and examples appearing in the
`
`specification will not generally be read into the claims.” Comark Commc’ns, Inc. v. Harris
`
`Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc.,
`
`848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
`
`
`
`The prosecution history is another tool to supply the proper context for claim
`
`construction because a patent applicant may also define a term in prosecuting the patent. Home
`
`Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
`
`specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
`
`history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
`
`may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
`
`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
`
`
`
`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
`
`in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
`
`(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
`
`court understand the underlying technology and the manner in which one skilled in the art might
`
`use claim terms, but technical dictionaries and treatises may provide definitions that are too
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`broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
`
`expert testimony may aid a court in understanding the underlying technology and determining
`
`the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
`
`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
`
`evidence is “less reliable than the patent and its prosecution history in determining how to read
`
`claim terms.” Id.
`
`
`
`The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
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`patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
`
`in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
`
`legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
`
`claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
`
`(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
`
`S. Ct. 2120.
`
`III. THE PARTIES’ STIPULATED TERMS
`
`
`
`The parties reached agreement on constructions as stated in their August 8, 2016 Joint
`
`Claim Construction and Prehearing Statement (Dkt. No. 209). Those agreements are set forth in
`
`Appendix A to the present Claim Construction Memorandum and Order.
`
`IV. CONSTRUCTION OF DISPUTED TERMS
`
`
`
`The parties’ briefs present different orderings of the disputed terms. Rather than attempt
`
`to divine an ideal ordering for the disputed terms, the Court adopts the ordering presented by
`
`Plaintiff.
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`A. “radio network resources” (’957 Patent, Claims 4, 10)
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`“resource blocks”
`
`Plain and ordinary meaning.
`
`No construction necessary.
`
`Alternatively:
`“resources of a radio network that can be
`allocated, managed, scheduled, and/or
`assigned”
`
`Dkt. No. 209, Ex. A at 3; id., Ex. B at 2; Dkt. No. 275, Ex. A at 7 & 10.
`
`
`
`Shortly before the start of the November 29, 2016 hearing, the Court provided the parties
`
`with the following preliminary construction: “Plain meaning.”
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`
`
`
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`(1) The Parties’ Positions
`
`Plaintiff argues that “[t]he Court should reject [Defendants’] attempt to limit the claims to
`
`a singular embodiment of the invention.” Dkt. No. 253 at 6.
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`
`
`Defendants respond that “the specification repeatedly distinguishes between resource
`
`allocation (i.e., allocating resource blocks) and the management of other parameters/settings.”
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`Dkt. No. 265 at 6.
`
`
`
`Plaintiff replies that this term is easily understood by a person of ordinary skill in the art,
`
`and “[t]he patentee did not act as its own lexicographer for this term, nor did the patentee
`
`disavow the full scope of the claim term either in the specification or during prosecution.” Dkt.
`
`No. 269 at 1.
`
`The parties have submitted this disputed term on the briefing, without oral argument.
`
`(2) Analysis
`
`Claim 4 of the ’957 Patent, for example, recites (emphasis added):
`
`4. An apparatus, comprising:
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`a receiver configured to receive a power headroom report;
`
`a processor configured to allocate radio network resources based on the
`
`power headroom report,
`
`wherein the processor is configured to obtain both positive and negative
`values of power headroom from the power headroom report, as applicable, in
`which negative values indicate the missing power in dB to fulfill transmission
`requirements,
`wherein the processor is configured to allocate additional radio network
`
`resources to a user equipment when the power headroom indicates positive
`headroom, when applicable, and to allocate fewer radio network resources to the
`user equipment when the power headroom report indicates negative headroom.
`
`The claim thus does not specify any particular type of resources. Likewise, the
`
`
`
`specification does not limit the claim scope to “resource blocks” (RBs), which are only one
`
`disclosed example. See, e.g., ’957 Patent at 3:16-18, 3:36-46, 3:59-60 (“a resource block (RB) is
`
`the smallest time/frequency unit that can be assigned by the scheduler”); 4:1-15, 4:37-39,
`
`5:24-39, 6:4-12, 6:61-7:4, 7:29-32, 7:55-59, 8:31-35 & 8:51-54. For example, the specification
`
`discloses:
`
`In certain embodiments of the present invention, the power headroom reporting is
`extended to both directions, e.g. reporting (a) positive headroom if the current
`transmit power is lower than the nominal maximum transmission power and
`(b) negative headroom if the required transmit power according to the allocation
`scheme in terms of number of RBs as well as selected modulation and coding
`scheme requires higher power than the nominal maximum transmit power.
`
`Id. at 5:16-23; see id. at 6:37-39. Of note, this disclosure refers to “allocation” in the context of
`
`RBs as well as modulation and coding. See id. at 5:16-23; see also id. at 5:59-6:3. Further, even
`
`if this passage were interpreted as referring to allocation of only RBs, this is a specific feature of
`
`particular disclosed embodiments that should not be imported into the claims. See Phillips, 415
`
`F.3d at 1323.
`
`
`
`Therefore, the Court hereby expressly rejects Defendants’ proposed construction. No
`
`further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
`
`(Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
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`technical scope, to clarify and when necessary to explain what the patentee covered by the
`
`claims, for use in the determination of infringement. It is not an obligatory exercise in
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`redundancy.”); see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
`
`1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every
`
`limitation present in a patent’s asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626
`
`F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the
`
`parties’ quarrel, the district court rejected Defendants’ construction.”); ActiveVideo Networks,
`
`Inc. v. Verizon Commcn’s, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Summit 6, LLC v.
`
`Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015).
`
`
`
`Therefore, the Court hereby construes “radio network resources” to have its plain
`
`meaning.
`
`B. “subtracting the nominal maximum transmission power and the power that the
`apparatus would use if it did not apply maximum power limitations” (’957 Patent,
`Claims 1, 7)
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`“subtracting from the nominal maximum
`transmission power the power that the
`apparatus would use if it did not apply
`maximum power limitations”
`
`Dkt. No. 209, Ex. A at 4; id., Ex. B at 3; Dkt. No. 275, Ex. A at 6 & 8.
`
`Indefinite
`
`
`
`Shortly before the start of the November 29, 2016 hearing, the Court provided the parties
`
`with the following preliminary construction: “subtracting from the nominal maximum
`
`transmission power the power that the apparatus would use if it did not apply maximum power
`
`limitations.”
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`
`
`(1) The Parties’ Positions
`
`Plaintiff argues that “[i]n view of the indisputable clarity provided by the ’957 patent
`
`specification and prosecution history, [Plaintiff’s] proposed construction of the ‘subtracting’
`
`limitation is the only reasonable interpretation and should be adopted.” Dkt. No. 270-1 at 9.
`
`
`
`Defendants respond that “[f]rom the claim language and the specification, it is unclear
`
`which term must be subtracted from the other, if either, or whether the two terms are subtracted
`
`from some third term.” Dkt. No. 265 at 10-11; see Dkt. No. 303 at 3-4.
`
`
`
`Plaintiff replies that “Defendants ignore the explicit references in the specification and
`
`the prosecution history that both define the calculation of power headroom and tie that
`
`calculation directly to the recitation of the ‘subtracting’ limitation in the claims.” Dkt. No. 269
`
`at 2.
`
`
`
`In sur-reply, Defendants argue that “nowhere in the claims, specification, or prosecution
`
`history of the ’957 patent did the patentee define the ways to calculate headroom.” Dkt. No. 278
`
`at 2.
`
`
`
`At the November 29, 2016 hearing, Defendants argued that the prosecution history cited
`
`by Plaintiff does not rise to the level of a lexicography and does not override the language of the
`
`claims.
`
`(2) Analysis
`
`Claim 1 of the ’957 Patent, for example, recites (emphasis added):
`
`1. An apparatus, comprising:
`
`a processor configured to determine a power headroom report; and
`
`a transmitter configured to transmit the headroom report,
`
`wherein the processor is configured to determine the power headroom
`report with both positive and negative values of power headroom, as applicable,
`in which negative values indicate the missing power in dB to fulfill transmission
`requirements, and
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`wherein the processor is configured to determine the power headroom by
`
`subtracting the nominal maximum transmission power and the power that the
`apparatus would use if it did not apply maximum power limitations, wherein the
`result of said subtracting is not limited to zero and positive values.
`
`The disputed term thus requires subtraction but does not itself specify the subtraction
`
`
`
`relationship.
`
`
`
`At first blush, Plaintiff’s proposed construction appears to amount to a significant re-
`
`writing by specifying a relationship that does not appear in the claim language. See, e.g, Chef
`
`Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (stating that courts
`
`“construe the claim as written, not as the patentees wish they had written it”). Indeed, the claim
`
`itself specifies obtaining not merely a difference value but rather either a positive or negative
`
`value. Although the specification discloses examples, the specification sets forth no definition or
`
`clear explanation. See ’957 Patent at 3:32-35 & 4:16-19; see also Interval Licensing LLC v.
`
`AOL, Inc., 766 F.3d 1364, 1374 (Fed. Cir. 2014) (“a person of ordinary skill in the art would not
`
`understand the ‘e.g.’ phrase to constitute an exclusive definition”)
`
`
`
`During prosecution, however, the patentee associated the disputed term with a subtraction
`
`relationship in which one term (the power that the apparatus would use if it did not apply
`
`maximum power limitations) is subtracted from another term (the nominal maximum
`
`transmission power):
`
`[O]ne difference between certain embodiments of the claimed application and
`[the] 3GPP Meeting [reference] is in the way the PH [(power headroom)] is
`defined and calculated. In certain embodiments of the claimed invention, the PH
`is calculated as Pmax – “nominal allocated” power, calculated on a TTI
`[(transmission time interval)] basis. This can be seen, for example, in the
`recitations “wherein the processor is configured to determine the power headroom
`by subtracting the nominal maximum transmission power and the power that the
`apparatus would use if it did not apply maximum power limitations, wherein the
`result of said subtracting is not limited to zero and positive values” (claim 1).
`
`Dkt. No. 253-8, June 20, 2013 Response Under 37 CFR § 1.111 at 12-13 (CCE576-000854-55).
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`Although this prosecution history refers to “certain embodiments,” the patentee explicitly
`
`referred to the disputed term. Id. In other words, although the patentee implied that there may
`
`be other embodiments, the patentee used the claim language here at issue in a particular manner
`
`as set forth in the above-quoted prosecution history. This finding is also consistent with the
`
`above-quoted recital, in claim 1 of the ‘957 Patent, that “negative values indicate the missing
`
`power in dB to fulfill transmission requirements.”
`
`
`
`Therefore, the Court hereby construes “subtracting the nominal maximum
`
`transmission power and the power that the apparatus would use if it did not apply
`
`maximum power limitations” to mean “subtracting from the nominal maximum
`
`transmission power the power that the apparatus would use if it did not apply maximum
`
`power limitations.”
`
`C. “when applicable” (’957 Patent, Claims 4, 10)
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Plain and ordinary meaning.
`
`No construction necessary.
`
`Alternatively:
`“when available”
`
`Indefinite
`
`
`Dkt. No. 209, Ex. A at 4; id., Ex. B at 2; Dkt. No. 275, Ex. A at 7 & 10.
`
`
`
`Shortly before the start of the November 29, 2016 hearing, the Court provided the parties
`
`with the following preliminary construction: “Indefinite.”
`
`
`
`
`
`(1) The Parties’ Positions
`
`Plaintiff argues that “[b]ecause the claim limitation requires allocating additional radio
`
`network resources, one of ordinary skill in the art would understand that the qualification ‘when
`
`applicable’ is included because the recited allocation cannot occur unless ‘additional radio
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`network resources’ are available.” Dkt. No. 270-1 at 9; Dkt. No. 253 at 10; see Dkt. No. 307
`
`at 2.
`
`
`
`Defendants respond that “[n]o definition for ‘when applicable’ is provided in the claims
`
`or in the specification, nor is there any definitive indication of when this claim language would
`
`be met.” Dkt. No. 265 at 9.
`
`
`
`Plaintiff replies: “Defendants agree that ‘applicable’ has an ordinary meaning—i.e.,
`
`‘relevant’ or ‘appropriate’—and that ‘when applicable’ would be understood as ‘under certain
`
`circumstances.’ This meaning that Defendants apply is consistent with the claim limitation and
`
`with [Plaintiff’s] position that this limitation does not require construction.” Dkt. No. 269 at 3.
`
`
`
`In sur-reply, Defendants argue that whereas the parties agree that “additional radio
`
`network resources are allocated to a UE [(user equipment)] when the power headroom report
`
`indicates positive headroom under certain circumstances,” “there are no criteria disclosed for
`
`discerning ‘when’ those circumstances have occurred.” Dkt. No. 278 at 2.
`
`
`
`At the November 29, 2016 hearing, Plaintiff argued that its alternative proposed
`
`construction does not render the disputed term superfluous because without it, Plaintiff argued,
`
`the claim might be interpreted as nonsensically requiring allocation of additional resources even
`
`if none are available.
`
`(2) Analysis
`
`Claim 4 of the ’957 Patent, for example, recites (emphasis added):
`
`4. An apparatus, comprising:
`
`a receiver configured to receive a power headroom report;
`
`a processor configured to allocate radio network resources based on the
`power headroom report,
`
`wherein the processor is configured to obtain both positive and negative
`values of power headroom from the power headroom report, as applicable, in
`which negative values indicate the missing power in dB to fulfill transmission
`requirements,
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`wherein the processor is configured to allocate additional radio network
`
`resources to a user equipment when the power headroom indicates positive
`headroom, when applicable, and to allocate fewer radio network resources to the
`user equipment when the power headroom report indicates negative headroom.
`
`The specification discloses that radio network resources are limited. See, e.g., ’957
`
`
`
`Patent at 5:59-60 (“efficient utilization of the available resources”) & 6:4-12.
`
`
`
`Plaintiff’s proposal of interpreting “when applicable” as meaning “when available,”
`
`however, amounts to an improper re-writing of the claims. See Chef Am., 358 F.3d at 1374
`
`(stating that courts “construe the claim as written, not as the patentees wish they had written it”).
`
`Indeed, the specification does not use the terms “applicable” and “available” interchangeably.
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`Compare ’957 Patent at 3:43-46 & 5:35-39 with id. at 5:59-60. Likewise, Claim 4 of the ’957
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`Patent recites “wherein the processor is configured to determine the power headroom report with
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`both positive and negative values of power headroom, as applicable . . . .” Claim 10 of the ’957
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`Patent recites a similar limitation. These limitations, which appear in the same claims here at
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`issue as to the term “when applicable,” thus use “applicable” to refer to what is appropriate
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`rather than to what is available.
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`
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`On balance, the term “when applicable” lacks any reasonably certain meaning in the
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`context of the claims here at issue. Nautilus, 134 S. Ct. at 2129.
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`
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`Therefore, the Court hereby finds that “when applicable” is indefinite.
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`D. ’957 Patent, Claims 7-9
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
`
`Definite
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`Indefinite as improperly mixing method and
`apparatus elements in a single claim
`
`
`Dkt. No. 209, Ex. A at 4; id., Ex. B at 3; Dkt. No. 275, Ex. A at 8-9.
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`Shortly before the start of the November 29, 2016 hearing, the Court provided the parties
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`with the following preliminary construction: “Indefinite (because ‘the apparatus’ lacks
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`antecedent basis).”
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`
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`
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`(1) The Parties’ Positions
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`Defendants argue that “[t]he scope of ‘determining the power headroom by subtracting
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`the nominal maximum transmission power and the power that the apparatus would use if it did
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`not apply maximum power limitations’ is unclear because ‘the apparatus’ is unidentified.” Dkt.
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`No. 265 at 16. Further, Defendants argue, “given the undefined nature of ‘the apparatus,’
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`claims 7-9 are indefinite for improperly mixing apparatus and method claims.” Id. at 17.
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`
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`Plaintiff replies that the recital of an “‘apparatus’ does not result in improper mixing of
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`apparatus claim elements with the method claims” because it merely “specifies a measurement
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`performed at the apparatus that is utilized in the calculation—i.e. the measurement used is ‘the
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`power that the apparatus would use if it did not apply maximum power limitations.’” Dkt.
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`No. 269 at 3.
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`
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`At the November 29, 2016 hearing, Plaintiff argued that the method must be performed in
`
`user equipment because there is no other possibility. Plaintiff concluded that “the apparatus” is
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`therefore clear. Defendants responded that the specification discloses that a personal computer
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`could be used instead of user equipment. See ’957 Patent at 8:1-10.
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`
`
`
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`(2) Analysis
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`The specification discloses:
`
`The power control headroom is the difference between the nominal maximum
`transmission power and the power at the UE [(user equipment)], e.g. the power
`that the UE would use if it did not apply maximum power limitations.
`
`’957 Patent at 4:16-19. Claims 7-9 of the ’957 Patent recite (emphasis added):
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`
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`7. A method, comprising:
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`determining a power headroom report; and
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`transmitting the headroom report,
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`wherein the determining comprises determining the power headroom
`report with both positive and negative values of power headroom, as applicable,
`in which negative values indicate the missing power in dB to fulfill transmission
`requirements, and
`
`wherein the determining comprises determining the power headroom by
`subtracting the nominal maximum transmission power and the power that
`the apparatus would use if it did not apply maximum power limitations, wherein
`the result of said subtracting is not limited to zero and positive values.
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`8. The method of claim 7, wherein the method is performed by a user equipment.
`
`9. The method of claim 7, further comprising: configuring the power headroom
`report as a 6 bit report configured to identify a level selected from a range of +40
`to ‒23 dB, in 1 dB steps.
`
`The Court hereby expressly rejects Defendants’ argument that these are improper mixed
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`
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`method-apparatus claims. See, e.g., IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
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`1384 (Fed. Cir. 2005); Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d
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`1367, 1374-75 (Fed. Cir. 2008).
`
`
`
`Nonetheless, the term “the apparatus” in Claim 7 lacks antecedent basis. As a general
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`matter, antecedent basis can be implicit rather than explicit. See Energizer Holdings Inc. v. Int’l
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`Trade Comm’n, 435 F.3d 1366, 1371 (Fed. Cir. 2006) (holding that “an anode gel comprised of
`
`zinc as the active anode component” provided implicit antecedent basis for “said zinc anode”);
`
`see also Ex Parte Porter, 25 U.S.P.Q. 2d (BNA) 1144, 1145 (B.P.A.I. 1992) (“The term ‘the
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`controlled fluid’ . . . finds reasonable antecedent basis in the previously recited ‘controlled
`
`stream of fluid . . . .’”).
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`
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`Here, however, Plaintiff has not demonstrated any implicit antecedent basis, in particular
`
`because Claim 7 recites transmission, presumably from one apparatus to another. Also, the
`
`claims do not specify whether “the apparatus” is an apparatus that is performing the recited
`
`
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`method. Likewise, although Claim 8 (quoted above) refers to the method being performed by
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`user equipment, this does not necessarily limit “the apparatus” to being user equipment because
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`Claim 7 does not recite that the method is performed by “the apparatus.” See also ’957 Patent at
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`8:1-10 (“Other implementations could be made, such as by substituting personal computers
`
`(PCs) for both the UE and the eNodeB.”). Indeed, the doctrine of claim differentiation further
`
`supports Defendants’ argument that the method of Claim 7 is not necessarily performed by user
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`equipment. See Phillips, 415 F.3d at 1315 (“the presence of a dependent claim that adds a
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`particular limitation gives rise to a presumption that the limitation in question is not present in
`
`the independent claim”).
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`
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`The term “the apparatus” in Claim 7 (and therefore also in Claims 8 and 9, which each
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`depend from Claim 7) thus lacks necessary antecedent basis and also lacks reasonable clarity.
`
`See Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (“a claim
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`could be indefinite if a term does not have proper antecedent basis where such basis is not
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`otherwise present by implicat