`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable Clark S. Cheney
`Administrative Law Judge
`
`
`
`
`In the Matter of
`
`CERTAIN MULTI-DOMAIN TEST AND
`MEASUREMENT INSTRUMENTS
`
`Investigation No. 337-TA-1104
`
`RESPONDENTS’ INITIAL CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION .................................................................................................................. 1
`
`II. LEGAL AUTHORITY ........................................................................................................... 2
`
`III. OVERVIEW OF THE ASSERTED PATENTS.................................................................. 3
`
`A.
`
`B.
`
`C.
`
`U.S. Patent No. 8,675,719 (“the ’719 patent”) ................................................................. 3
`
`U.S. Patent No. 8,521,460 (“the ’460 patent”) ................................................................. 8
`
`Level of Ordinary Skill .................................................................................................... 9
`
`IV. AGREED CONSTRUCTIONS ......................................................................................... 10
`
`V. ARGUMENT ON DISPUTED CLAIM CONSTRUCTIONS ............................................. 10
`
`A.
`
`The Term “Controller” is Indefinite Due to a Lack of Disclosed Structure .................. 10
`
`1.
`
`2.
`
`“Controller” is a Means-Plus-Function Term ............................................................. 11
`
`The “Controller” Term Lacks Corresponding Structure ............................................ 12
`
`B.
`
`“Digital Downconverter” ............................................................................................... 16
`
`“A frequency domain channel configured to process a second input signal for analysis
`C.
`in a frequency domain” ............................................................................................................. 17
`
` The Proper Construction of .................................................................................................. 20
`
`“a time domain channel configured to process a first input signal for analysis in time
`D.
`domain” Is Likewise Structural, And Not Functional .............................................................. 20
`
`The Terms “configured to present … through a user interface” / “presenting … through
`E.
`a user interface” Are Not Limited to Specific Embodiments ................................................... 23
`
`F. The Preamble “Test and Measurement Instrument” Does Not Require a User ................. 25
`
`The Applicant’s Disclaimer in Prosecution Defines the Meaning of “not used to process
`G.
`the same signal sequentially” .................................................................................................... 27
`
`VI. CONCLUSION .................................................................................................................. 29
`
`
`
`i
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Advanced Ground Info. Sys. v. Life360, Inc.,
`830 F.3d 1341 (Fed. Cir. 2016)................................................................................................13
`
`Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)................................................................................................15
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..................................................................................................2
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)................................................................................................15
`
`Certain Access Control Systems and Components Thereof,
`337-TA-1016, Order No. 13 (Jan. 26, 2017) ...........................................................................12
`
`GE Lighting Solutions, LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)..................................................................................................2
`
`Gillette Co. v. Energizer Holdings, Inc.,
`405 F.3d 1367 (Fed. Cir. 2005)..................................................................................................2
`
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004)................................................................................................13
`
`Hill-Rom Services, Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)..............................................................................16, 17, 20, 25
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)............................................................................................16, 23
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015)................................................................................................13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................2
`
`Sorensen v. Int’l Trade Com’n,
`427 F.3d 1375 (Fed. Cir. 2005)..........................................................................................28, 29
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)................................................................................................16
`
`
`
`ii
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`Thorner v. Sony Computer Entm’t Am., LLC,
`669 F.3d 1362 (Fed. Cir. 2012)..................................................................................................2
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..........................................................................................11, 14
`
`
`
`
`
`iii
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`I.
`
`
`
`INTRODUCTION
`
`A consistent theme that has emerged from the claim construction process in this
`
`investigation is Complainant Tektronix, Inc.’s (“Complainant” or “Tektronix”) urging of
`
`litigation-driven constructions that are contrary to established canons of claim construction. Upon
`
`the cessation of Respondents’ importation and United States sales of the K18 products targeted in
`
`the complaint, Complainant has struggled to craft an infringement case against any other of
`
`Respondents’ products. This is evident from Complainant’s explicit statements to this effect, as
`
`well as its failure to provide infringement contentions on any other products. In an attempt to
`
`support its nascent infringement theories, Complainant has proposed constructions that lack
`
`support and, in some cases, directly contradict the intrinsic evidence. In other instances,
`
`Complainant seeks to avoid the prior art by limiting the claims to certain preferred embodiments
`
`in the specification, even though the specification is clear that such embodiments are mere
`
`examples of the claimed technology. Further, many of the constructions proposed by Complainant
`
`are ambiguous or confusing and will only sow confusion if adopted. Finally, Complainant’s
`
`proposed constructions consistently disregard the intrinsic evidence, including statements that
`
`Complainant made to the Patent Office during prosecution and in the co-pending inter partes
`
`review (“IPR”) proceedings.
`
`
`
`In contrast, Respondents propose constructions that give the full and proper scope to the
`
`asserted claim language, which find firm and consistent support in the intrinsic record.
`
`Respondents thus respectfully request that the ALJ adopt their proposals, which are supported by
`
`both the intrinsic evidence and established canons of claim construction.
`
`As indicated in the joint table of proposed constructions filed by the parties, the parties had
`
`originally identified seventeen claim terms for construction, but through conference have narrowed
`
`
`
`1
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`the number of disputed terms for briefing to the ALJ to seven terms. In addition, the parties agree
`
`on the construction of three claim terms.
`
`II.
`
`LEGAL AUTHORITY
`
`“In construing claims, the analytical focus must begin and remain centered on the language
`
`of the claims themselves, for it is that language that the patentee chose to use to particularly point
`
`out and distinctly claim the subject matter which the patentee regards as his invention.” Gillette
`
`Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1370 (Fed. Cir. 2005). “[T]he context in which a
`
`term is used in the asserted claim can be highly instructive, as can other claims of the patent in
`
`question.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1315 (Fed. Cir. 2014)
`
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc)).
`
`
`
`The words of a patent claim “are generally given their ordinary and customary meaning”
`
`as understood by the skilled artisan at the time of the invention in the context of the specification.
`
`Phillips, 415 F.3d at 1312. The Federal Circuit has emphasized that “[t]here are only two
`
`exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
`
`specification or during prosecution.” Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012). In addition to the claim language, additional intrinsic evidence includes
`
`the patent specification and the prosecution history, which are “always highly relevant,” Phillips,
`
`415 F.3d at 1315, and “may reveal a special definition given to a claim term by the patentee that
`
`differs from the meaning it would otherwise possess.” Id. at 1316. Statements made in an attempt
`
`to overcome prior art in an IPR proceeding are part of the intrinsic record and likewise can limit
`
`the scope of claim language. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed.
`
`Cir. 2017).
`
`
`
`2
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`III. OVERVIEW OF THE ASSERTED PATENTS
`
`
`
`Both of the asserted patents relate to specific circuit implementations that allow a test and
`
`measurement instrument to perform analysis of electronic signals in both the time domain and the
`
`frequency domain through distinct channels. In particular, the patents relate to instruments that
`
`simultaneously acquire data from both the time domain channel and frequency domain channel.
`
`(See, e.g., Ex. 1, ’719 patent at 2:5-7 (“The acquisition system is configured to acquire data from
`
`the time domain channel and the frequency domain channel substantially simultaneously”).) This
`
`is in contrast to test and measurement instruments of the prior art, which were limited to analyzing
`
`in only a single domain. (See id. at 1:28-29 (“However, test and measurement instruments [of the
`
`prior art] are typically designed for analysis in only one domain).) Further, to the extent prior
`
`devices could analyze in both the time domain and frequency domain, the patents explain that
`
`analysis in one domain would be limited by the analysis in the other domain: “with a given fixed
`
`memory size, the higher sample rate limits the time span and thus the size of a frequency step in
`
`the frequency domain. In other words, the frequency domain analysis precision is limited by the
`
`time domain analysis precision.” (Ex. 1, ’719 patent at 1:51-55; Ex. 2, ’460 patent at 1:51-55.) In
`
`addition, to achieve high sampling rates and time spans, prior art systems also allegedly suffered
`
`from a need for “large acquisition memory,” which at the time of the alleged inventions was
`
`described as “expensive or unavailable in an oscilloscope.” (Ex. 1, ’719 patent at 1:40-46; Ex.
`
`2, ’460 patent at 1:40-46.)
`
`A.
`
`U.S. Patent No. 8,675,719 (“the ’719 patent”)
`
` Generally, the ’719 patent discloses a test and measurement instrument having both a time
`
`domain channel and a separate frequency domain channel. (Ex. 1, ’719 pat. at Abstract and 2:63-
`
`64.) As illustrated in FIG. 1 (reproduced below), the instrument 10 includes a time domain channel
`
`
`
`3
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`12 configured to receive a first input signal 18, and a frequency domain channel 14 configured to
`
`receive a second input signal 20. (Id. 2:64-66.)
`
`
`
`
`
`The ’719 patent explains that “time domain channel 12 can be configured to sample the
`
`first input signal 18 for analysis in the time domain.” (Ex. 1 at 3:5-6.) The “frequency domain
`
`channel 14 can be configured to process the second input signal 20 for analysis in the frequency
`
`domain.” (Id., 3:27-29.) Moreover, “acquisition system 16 can be coupled to the time domain
`
`channel and the frequency domain channel and configured to acquire data from the time domain
`
`channel and the frequency domain channel.” (Id., 4:23-27.)
`
`
`
`4
`
`
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`As shown in FIG. 3, “the time domain channel 12 and the frequency domain channel 14 can each
`
`be configured to receive the same input signal 42.” (Id., 6:39-41.)
`
`
`
`In the Office Action dated May 2, 2013 in the prosecution history, the Examiner set forth
`
`anticipatory rejections based on the Kato prior art reference (Ex. 3, Kato Ref.; see Ex. 4,’719 File
`
`History at 129-133.) The Kato reference discloses a time domain channel for processing a signal
`
`in the time domain, and a frequency domain channel that received the signal after it was processed
`
`in the time domain, converted it to the frequency domain, and processed it in the frequency domain.
`
`(Ex. 3 at [0016].) In response, Tektronix amended claim 1 to recite “wherein the time domain
`
`channel and the frequency domain channel are not used to process the same signal sequentially.”
`
`(Emphasis added) (See Ex. 4 at 119 (Applicant Arguments/Remarks, p. 7, June 26, 2013) (citing
`
`to both FIGS. 1 and 3 as support).) Tektronix characterized the Kato prior art as processing a
`
`signal sequentially in the time and frequency domains: “Kato takes signals, processes them in the
`
`time domain, transforms the result into a frequency domain signal, and processes those signals in
`
`the frequency domain.” (Ex. 4 at 119.) Tektronix then distinguished its invention from the
`
`teachings of Kato as follows:
`
`To help clarify the difference between the claimed invention and Kato, claim 1 is
`
`amended to recite that the time domain channel and the frequency domain channel
`
`are not used to process the same signal sequentially. Support for this amendment
`
`can be found in the specification at, for example, FIGUREs 1 and 3 and the
`
`supporting description. Since Kato only describes applying the domains
`
`sequentially, the claimed invention is distinguishable over Kato.
`
`(Id. at 119.) Subsequently, the Examiner indicated the reasons for allowance as “none of the prior
`
`art discloses or suggests … wherein the time domain channel and the frequency domain channel
`
`are not used to process the same signal sequentially….” (Id. 158 (Notice of Allowance Aug. 21,
`
`2013), and 67 (Renewed Notice of Allowance, Oct. 22, 2013).)
`
`
`
`
`
`5
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`Respondents filed co-pending petitions for inter partes review of the ’719 patent. In
`
`describing the alleged invention in its Patent Owner’s Preliminary Responses, Complainant asserts
`
`that “[t]he ’719 patent greatly improves resolution by separately acquiring input signals from two
`
`distinct types of channels—a time domain channel and a frequency domain channel—in a single
`
`instrument.” (See Ex. 6 at 1 (emphasis added).) In this regard, Complainant alleges that the ’719
`
`patent is distinct from “[c]onventional ‘multi domain’ oscilloscopes [that] could display an input
`
`signal acquired from a single channel in both the time domain and the frequency domain[.]”
`
`(emphasis added) Id. For example, with respect to the Hansen prior art, Complainant distinguishes
`
`the ’719 patent on the basis that Hansen “does not disclose separately acquiring from a ‘time
`
`domain channel’ and ‘frequency domain channel,’ which process input signals differently from
`
`each other pre-acquisition.” (Id. at 2.) To illustrate, Complainant argues that “Hansen includes a
`
`single channel (i.e., a signal path from an input) that conditions a signal which is then acquired by
`
`acquisition memory (STORE) at step 58” (id. at 25) and therefore “only a single channel exists in
`
`Hansen’s oscilloscope.” (Id. at 33). Complainant made clear that no processing after acquisition
`
`memory could be part of one of the frequency domain or time domain channels. (Id. at 26-27.)
`
`
`
`6
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`(Id. at 26.) Complainant argued that, “[o]nce the signal is stored in the acquisition memory, it has
`
`been acquired” (id. at 31), and “the ’719 patent explains that circuit components that receive a
`
`signal after it has been acquired in acquisition memory are not part of the claimed channels.
`
`Complainant stated with respect to Hansen’s FIG. 2, “interpolation (steps 60 and 62),
`
`demodulation (step 64), and spectrum analysis (step 76) processes are performed based on data
`
`that was already acquired. Accordingly, they are post-acquisition functions and cannot be a part of
`
`any channel. … Regardless of whether Hansen’s channel is a time domain channel, frequency
`
`domain channel, or another type of channel, Hansen cannot disclose both a time domain channel
`
`and a frequency domain channel.” (Id. at 34-35.)
`
`
`
`7
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`In sum, Complainant has stated to the Patent Office that multi-domain functionality is not
`
`its alleged invention, but instead, its alleged invention is a specific arrangement of circuit
`
`components that perform signal processing before acquisition memory for multi-domain
`
`functionality. Based on Complainant’s representations to the Patent Office in order to distinguish
`
`prior art, the alleged invention of the ʼ719 patent requires the presence of one channel for the
`
`processing prior to the acquisition memory in the time domain and of a separate and distinct
`
`channel for the processing prior to the acquisition memory in the frequency domain. Both channels
`
`have to exist and be distinct from another to “substantially simultaneously” acquire from both the
`
`time domain and the frequency domain. (Ex. 1, ’719 patent at 2:5-7 (“The acquisition system is
`
`configured to acquire data from the time domain and the frequency domain channel substantially
`
`simultaneously”).) By contrast, prior art multi-domain devices can process signals in time or
`
`frequency domains, but according to Complainant, in a single channel. Processing time and/or
`
`frequency domains in a single channel has been squarely disclaimed by Complainant.
`
`B.
`
`U.S. Patent No. 8,521,460 (“the ’460 patent”)
`
`
`
`Like the ’719 patent, the ’460 patent is directed to a test and measurement instrument
`
`having a specific arrangement of components for analyzing signals in the time and frequency
`
`domains. (Ex. 2, ’460 patent at 2:55-64; see also Ex. 7, ’460 POPR at 1 (“The ’460 patent provides
`
`an improved “multi-domain” test and measurement instrument with a particular configuration of
`
`circuit components for processing an input signal to be displayed in the time domain and in the
`
`frequency domain”.) As illustrated in FIG. 11 (reproduced below), the instrument 220 includes an
`
`input port 172 “configured to receive an input signal.” (Ex. 2 at 10:48-50.) The input signal is
`
`processed by signal conditioning 174, which includes amplifiers, attenuators, limiters, or filters,
`
`and, in general, “[a]ny circuitry that can be used to prepare the input signal for digitization” by
`
`digitizer 176. (Id. at 10:48-55.)
`
`
`
`8
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`(Id. at Fig. 11.) Importantly, as shown in FIG. 11 and as required by the independent claims of
`
`the ’460 patent, the digitizer 176 digitizes the input signal to generate a digitized input signal 184.
`
`(Id. at 10:57-58.) Further, the digitized input signal 184 is provided to not only (i) a decimator
`
`178 that decimates the digitized input signal 184 to generate a decimated input signal 188, but also
`
`(ii) a digital downconverter 180 that frequency shifts the digitized input signal 184 to generate a
`
`frequency shifted input signal 186. (Id. at 11:2-28; see also claim 1.) Thus, the ’460 patent claims,
`
`and its specification distinguishes between and separately requires, operations on a “digitized”
`
`input signal, a “decimated” input signal, and a “frequency shifted input signal.”
`
`C.
`
`Level of Ordinary Skill
`
`
`
`Respondents contend that a skilled artisan at the time of the alleged invention of the
`
`asserted patents would have had at least an undergraduate degree in electrical engineering,
`
`computer science, physics, or a related field, and at least two years of experience with test and
`
`measurement equipment, including performing time and frequency analysis of signals, such that
`
`the person would have grasped sufficient details regarding the design and operation of test and
`
`measurement systems for time domain analysis and frequency domain analysis. Complainant’s
`
`proposal of five years of experience requires an unduly high familiarity with the technology that
`
`is above that of the ordinary artisan at the time of the invention.
`
`
`
`
`
`9
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`IV. AGREED CONSTRUCTIONS
`
`Term
`
`“acquisition system
`coupled to the time
`domain channel and the
`frequency domain
`channel and configured
`to acquire data from the
`time domain channel
`and the frequency
`domain channel”
`
`“an acquisition
`memory”
`
`“input signal”
`
`Patent, claim
`
`ʼ719 – claims
`1, 2, 3, 9, 14
`
`Agreed Construction
`
`circuitry, coupled to the time domain channel
`and the frequency domain channel, that obtains
`and retains processed input signal data output
`from the time domain channel and frequency
`domain channel
`
`
`
`ʼ719 – claim 8 memory of the acquisition system that obtains
`and retains processed input signal data output
`from the time domain channel and the frequency
`domain channel”
`
`“a signal that is input to a test and measurement
`instrument”
`
`ʼ719 – claims
`1, 12
`ʼ460 – claims
`1, 2, 3, 4, 5, 7,
`8, 9, 10, 11,
`12, 14
`
`
`V.
`
`ARGUMENT ON DISPUTED CLAIM CONSTRUCTIONS
`
`A.
`
`The Term “Controller” is Indefinite Due to a Lack of Disclosed Structure
`
`Term
`
`Claim(s) Complainant’s Construction
`
`Respondents’ Position
`
`“controller”
`
`circuitry that can act upon
`other circuitry, such as by
`programming an aspect of the
`operation of other circuitry
`
`’719
`claims 4, 5,
`12-15
`
`’460
`claims 1, 5,
`6
`
`Subject to § 112, ¶ 6
`
`Function: as stated in claims
`
`Structure: Indefinite for lack of
`disclosed structure (or
`algorithm).
`
`
`
`
`The parties dispute whether the “controller” configured to perform various claimed
`
`functions of the ’719 and ’460 patents should be construed as a means-plus-function term under
`
`35 U.S.C. § 112, ¶ 6, and if so, whether the specifications disclose corresponding structure
`
`sufficient to perform the claimed functions that satisfies the definiteness requirement of section
`
`
`
`10
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`112. Claims 4, 5, and 12-15 of the ’719 patent and 1, 5, and 6 of the ’460 patent recite a number
`
`of different functions performed by the controller, but the specifications of the two patents do not
`
`describe any structure or algorithm for performing those functions. Instead, the controller is
`
`described as a generic black box, which fails to meet the requirements of 35 U.S.C. § 112, ¶ 6.
`
`1.
`
`“Controller” is a Means-Plus-Function Term
`
`The term “controller” should be construed as a means-plus-function term governed by 35
`
`U.S.C. § 112, ¶ 6 because the claim language alone would not be understood by a person of
`
`ordinary skill to denote particular structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`1349 (Fed. Cir. 2015) (“[O]ur cases have emphasized that the essential inquiry is not merely the
`
`presence or absence of the word ‘means’ but whether the words of the claim are understood by
`
`persons of ordinary skill in the art to have a sufficiently definite meaning as the name for
`
`structure.”). Though the “controller” terms do not employ the word “means,” the presumption
`
`against the application of § 112, ¶ 6 is not strong, and it is overcome when a party demonstrates
`
`“that the claim term fails to recite sufficiently definite structure or else recites function without
`
`reciting sufficient structure for performing that function.” Id. (internal quotations omitted).
`
`As confirmed by the Federal Circuit, “[g]eneric terms such as ‘mechanism,’ ‘element,’
`
`‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a
`
`claim in a manner that is tantamount to using the word ‘means.’” Id. at 1350. Like the terms in
`
`Williamson, the term “controller” in the asserted patents does not provide any indication of
`
`structure to a person of ordinary skill in the art “because it sets forth the same black box recitation
`
`of structure for providing the same specified function as if the term ‘means’ had been used.” Id.
`
`Moreover, other ALJs have found “controller” to be subject to means-plus-function treatment even
`
`when the claim did not use the word “means.” See Certain Access Control Systems and
`
`Components Thereof, 337-TA-1016, Order No. 13 at 41-52 (Jan. 26, 2017) (“As to the first
`
`
`
`11
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`question, I find that “controller . . . for” properly invokes means-plus function treatment as
`
`“controller” is not a term that a person having ordinary skill in this art would associate particular
`
`structure to beyond a general processor.”) (attached as Ex. 8). The situation is the same here – the
`
`term “controller” is simply a generic description for software or hardware that performs the
`
`claimed function.
`
`
`
`The specifications provides no further guidance. The claimed “controller” is merely
`
`described in generic terms as “any variety of circuitry” that may include “general purpose
`
`processors, digital signal processors, application specific integrated circuits, programmable gate
`
`arrays, or the like.” (Ex. 2, ’460 patent at 7:51-56; Ex. 1, ’719 patent at 7:47-52 (same disclosure).)
`
`This is nothing more than a broad recitation of nonspecific hardware and software components
`
`present in any computing system; there is no identification of what particular structures are inside
`
`the controller, how it works, or how these elements are supposed to perform the claimed functions.
`
`The remainder of the specification refers to the “controller” purely in terms of the function
`
`performed and what other components to which it is connected. (E.g., Ex. 2, ’460 patent at 7:59-
`
`65.) A generic listing of “circuity” and “processors” along with accompanying function does not
`
`connote specific structure to a person of ordinary skill in the art. A person of ordinary skill in the
`
`art would not understand, nor have been able to identify based on the written descriptions in the
`
`patent specifications, any specific, well-understood structure within the “controller” box that
`
`performs these claimed functions. Therefore, the “controller” term is properly considered as a §
`
`112, ¶ 6 means-plus-function term.
`
`2.
`
`The “Controller” Term Lacks Corresponding Structure
`
`The “controller” term is a means-plus-function limitation, and it is indefinite because
`
`the ’460 and ’719 patent specifications fail to disclose corresponding structure to carry out the
`
`specifically-claimed functions.
`
`
`
`12
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`
`
`Construing means-plus-function claims is a two-step process. Golight, Inc. v. Wal-Mart
`
`Stores, Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). First, the court must define the particular
`
`function of the limitation in dispute. Id. at 1333. In so doing, “[t]he court must construe the
`
`function of a means-plus-function limitation to include the limitations contained in the claim
`
`language, and only those limitations.” Cardiac Pacemakers, 296 F.3d at 1113 (noting that it is
`
`improper to narrow or broaden the scope of the function beyond the claim language). Second,
`
`after identifying the claimed function, the court must determine what structure disclosed in the
`
`specification corresponds to the claimed function. Id.
`
`
`
`The corresponding structure or algorithm disclosed in the specification must (1) perform
`
`the claimed function, and (2) the specification must clearly associate the structure or algorithm
`
`with performance of the function. Id. If the specification does not recite specific structure or an
`
`algorithm for performing the recited function, the claim is indefinite. See Advanced Ground Info.
`
`Sys. v. Life360, Inc., 830 F.3d 1341, 1349 (Fed. Cir. 2016) (affirming finding of invalidity for
`
`indefiniteness because “[t]he specifications of the patents-in-suit do not disclose an operative
`
`algorithm for the claim elements reciting ‘symbol generator.’ The function of generating symbols
`
`must be performed by some component of the patents-in-suit; however, the patents-in-suit do not
`
`describe this component.”); Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366,
`
`1375 (Fed. Cir. 2015) (affirming finding of invalidity for indefiniteness because “the specification
`
`fails to disclose an operative algorithm for both the ‘controlling data output’ and ‘managing output
`
`path’ functions”).
`
`The ’specifications of the asserted patents fail to describe any specific structure, or any
`
`algorithm, for carrying out the myriad of functions associated with the claimed “controller.” The
`
`claims recite that the “controller” performs the following functions:
`
`
`
`13
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`•
`
`’460 patent
`
`o Claim 1: “present the decimated input signal and the frequency shifted
`input signal through the user interface”; “adjust parameters of the
`decimator in response to the time domain controls and configured to adjust
`parameters of the digital downconverter in response to the frequency
`domain controls”
`
`o Claim 5: “present the decimated input signal and the frequency shifted
`input signal through the user interface substantially simultaneously”
`
`o Claim 6: “adjust a sample rate of the decimator in response to the time
`domain controls; and configured to adjust a sample rate of the digital
`downconverter in response to the frequency domain controls”
`
`•
`
`’719 patent
`
`o Claim 4 and 12: “control acquisition parameters of the time domain
`channel and the frequency domain channel such that the acquisition
`parameters of the time domain channel and the frequency domain channel
`are different.”
`
`o Claim 5 and 13: “set the first sample rate and the second sample rate to be
`different”
`
`o Claim 14: “set the first time period and the second time period to be
`different”
`
`o Claim 15: “set the first bandwidth and the second bandwidth to be
`different”
`
`Whether the claimed “controller” is construed as hardware or software, the patents-in-suit
`
`fail to provide any structure (hardware) or algorithm (software) for performing these functions. In
`
`particular, if the “controller” terms are construed as including hardware, the specifications do not
`
`point to any particular hardware that could perform the stated function, instead generally
`
`referencing “circuitry” without further details. See Williamson, 792 F.3d at 1351. This failure is
`
`particularly notable given the lengthy list of functions the “controller” performs. Apart from these
`
`few generic statements, the specification describes the “controller” solely by its functions, but does
`
`not describe any particular structure that is designed to implement these functions. (See, e.g., Ex.
`
`2, ’460 patent at 7:59-61 (“The controller 69 can be configured to control the acquisition
`
`
`
`14
`
`Tektronix, Exhibit 2015
`Rohde v. Tektronix, IPR2018-00643
`
`

`

`param