UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`Before The Honorable Clark S. Cheney
`Administrative Law Judge
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`
`
`
`In the Matter of
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`CERTAIN MULTI-DOMAIN TEST AND
`MEASUREMENT INSTRUMENTS
`
`Investigation No. 337-TA-1104
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`RESPONDENTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Tektronix, Exhibit 2016
`Rohde v. Tektronix, IPR2018-00643
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ................................................................................................................. 1
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`II. ARGUMENT ON DISPUTED CLAIM CONSTRUCTIONS .............................................. 1
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`A. The Term “Controller” Is Subject to § 112, ¶ 6 and Is Indefinite Due to a
`Lack of Disclosed Structure .......................................................................................... 1
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`“Digital Downconverter” .............................................................................................. 5
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`“A frequency domain channel configured to process a second input signal for
`analysis in a frequency domain” ................................................................................... 7
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`“A time domain channel configured to process a first input signal for analysis
`in time domain”............................................................................................................. 9
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`“Configured to present … through a user interface” / “presenting … through a
`user interface” ............................................................................................................. 11
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`“Test and Measurement Instrument” .......................................................................... 12
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`“Not used to process the same signal sequentially”.................................................... 12
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`III. CONCLUSION .................................................................................................................... 14
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`Rohde v. Tektronix, IPR2018-00643
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
`
`3M Innovative Properties Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013)................................................................................................11
`
`Cellular Commc’n Equip. LLC v. Samsung Electrs., Co.,
`2016 WL 1237429 (E.D. Tex. Mar. 29, 2016) ..........................................................................3
`
`Cellular Commc’ns Equip. LLC v. HTC Corp.,
`No. 6:13-CV-507, 2015 WL 1048890 (E.D. Tex. Mar. 9, 2015) ..............................................3
`
`In the Matter of Certain Digital Satellite Sys. (DSS) Receivers & Components Thereof,
`USITC Inv. No. 337-TA-392, Notice of Commission Decision 68 (Apr. 2001) ......................3
`
`Crane Co. v. Sandenvendo Am., Inc.,
`No. 2:07-CV-42-CE, 2009 WL 1586704 (E.D. Tex. June 5, 2009) ..........................................4
`
`Cutsforth, Inc. v. Motivepower, Inc.,
`643 F. App’x 1008 (Fed. Cir. 2016) ..........................................................................................3
`
`Hill-Rom Services, Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)..................................................................................................6
`
`Joao Control & Monitoring Sys., LLC v. Protect Am., Inc.,
`No. 1–14–CV–134, 2015 WL 4937464 (W.D. Tex. Aug. 18, 2015) ........................................3
`
`Klaustech, Inc. v. Google, Inc.,
`No. 10-05899, 2016 WL 2957044 (N.D. Cal. May 23, 2016) ...................................................3
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)....................................................................................................6
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015)..................................................................................................3
`
`Telcordia Techs., Inc. v. Cisco Sys., Inc.,
`612 F.3d 1365 (Fed. Cir. 2010)..................................................................................................4
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)..................................................................................................6
`
`Tyco Healthcare Grp. LP v. Mut. Pharm. Co.,
`No. CIV.A 07-1299(SRC), 2009 WL 44745 (D.N.J. Jan. 5, 2009) .........................................11
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..............................................................................................2, 3
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`I.
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`
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`INTRODUCTION
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`Complainant’s opening brief only confirms that Respondents’ constructions are consistent
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`with the intrinsic evidence. Tektronix’s most pointed criticism of Respondents’ constructions is
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`that they “paraphrase the claim language,” a reflection of the fact that Respondents have honored
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`the claim language and the intrinsic record instead of rewriting the claims to suit their litigation
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`positions.
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`Complainant’s brief does acknowledge several important characteristics of the inventions
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`claimed in the asserted patents. First, Complainant admits that the asserted patents are directed to
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`a test and measurement instrument having both time and frequency domain channels that are
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`separate and distinct from one another, and that each channel is separately coupled to the
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`acquisition system. (Complainant’s Br. at 3-6.) Complainant further acknowledges that the
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`patents tout the advantages of the parallel nature of the time and frequency domain channel
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`processing as compared to other arrangements. (Id. at 6.)
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`Complainant’s constructions suffer from lack of intrinsic support. To remedy this,
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`Complaint relies heavily on a lengthy declaration of its technical expert Dr. Blalock. This extrinsic
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`evidence does nothing more than parrot Complainant’s attorney arguments and adds nothing of
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`value to this claim construction exercise. Consideration of the intrinsic evidence—the claim
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`language, the patent specifications, and the prosecution histories—compels adoption of
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`Respondents’ constructions.
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`II.
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`ARGUMENT ON DISPUTED CLAIM CONSTRUCTIONS
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`A.
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`The Term “Controller” Is Subject to § 112, ¶ 6 and Is Indefinite Due to a
`Lack of Disclosed Structure
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`
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`There can be no genuine dispute that the term “controller” fails to connote definite structure
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`and thus invokes 35 U.S.C. § 112, ¶ 6. The evidence cited by Complainant confirms that
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`“controller” is a generic nonce word that may refer to numerous different configurations.
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`Moreover, under the rubric of § 112, ¶ 6, Complainant cannot identify, and has not identified, any
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`specific structure in the ’719 or ’460 patents for performing the claimed functions, instead
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`contending that the “controller” is simply “circuitry.” (See Complainant Br. at 27.) Given the lack
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`of any definite structure, the “controller” term is subject to § 112, ¶ 6 and invalid as indefinite.
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`
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`While the “controller” term does not contain the word “means,” it nonetheless invokes
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`§ 112, ¶ 6. As the Federal Circuit made clear in Williamson, the presumption against § 112, ¶ 6 in
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`such situations is not strong; rather, the “essential inquiry is not merely the presence or absence of
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`the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill
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`in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). In this case, the ’460 and ’719 patents simply
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`replace the wording “controller means … for” with “controller configured to” or “controller
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`coupled to.” This minor grammatical shift is insignificant, and courts routinely recognize that
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`language such as “configured to” or “coupled to” may invoke means-plus-function treatment. E.g.,
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`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372-4 (Fed. Cir. 2015)
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`(construing term with “coupled to” as means-plus-function despite lack of word “means”);
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`Cellular Commc'ns Equip. LLC v. HTC Corp., No. 6:13-CV-507, 2015 WL 1048890, at *12 (E.D.
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`Tex. Mar. 9, 2015) (construing “designating unit is configured to” as a means-plus-function term).
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`Complainant’s citation to Cutsforth on this issue is inapposite. That case did not involve any
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`means-plus-function considerations at all, but rather dealt with the meaning of “coupled to” in a
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`mechanical invention claiming two structural components (a “beam” and a “brush catch”).
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`Cutsforth, Inc. v. Motivepower, Inc., 643 F. App’x 1008, 1012 (Fed. Cir. 2016).
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`Moreover, courts have consistently recognized that terms such as “controller” and
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`“control” fail to disclose sufficient structure and invoke § 112, ¶ 6. See Klaustech, Inc. v. Google,
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`Inc., No. 10-05899, 2016 WL 2957044, at *6 (N.D. Cal. May 23, 2016) (“central controller” is a
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`“generic term … essentially without meaning” invoking § 112(6)); Williamson, 792 F.3d at 1351
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`(“The prefix ‘distributed learning control’ does not impart structure into the term ‘module.’”);
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`Cellular Commc’n Equip. LLC v. Samsung Electrs., Co., 2016 WL 1237429, *8 (E.D. Tex. Mar.
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`29, 2016) (“controlling entity” does not refer to “any particular class of structures”); Joao Control
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`& Monitoring Sys., LLC v. Protect Am., Inc., No. 1–14–CV–134, 2015 WL 4937464, *9 (W.D.
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`Tex. Aug. 18, 2015) (“control device” is “purely functional” term). As in these cases, the
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`“controller” of the ’719 and ’460 patents is a generic placeholder that does not connote any specific
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`or definite structure to persons having ordinary skill in the art. (See Ex. 9 (Wells Decl.) at ¶ 25;
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`see also id. at ¶¶ 26-29.)
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`None of the cases identified in Complainant’s brief counsel otherwise. The Commission
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`opinion in In the Matter of Certain Digital Satellite Sys. (DSS) Receivers & Components Thereof
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`did not address the issue of whether the term “controller” was properly construed as a means-plus-
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`function term. USITC Inv. No. 337-TA-392, Notice of Commission Decision, at 68 (Apr. 2001).
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`The Telcordia opinion cited by Complainant dealt with the term “monitoring means”—not
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`“controller”—and the Court merely found that the specification described specific kinds of
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`controllers as structure corresponding to the “monitoring means.” Telcordia Techs., Inc. v. Cisco
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`Sys., Inc., 612 F.3d 1365, 1377 (Fed. Cir. 2010). Finally, in the Crane opinion, the Court found
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`that “controller” connoted specific structure because the claim contained additional limitations
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`“further defining the type of controller covered by the claim.” Crane Co. v. Sandenvendo Am.,
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`Inc., No. 2:07-CV-42-CE, 2009 WL 1586704, at *16 (E.D. Tex. June 5, 2009). The present case
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`is distinguishable because the claims of the ’719 and ’460 patents contain no such language
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`defining or explaining the structure of the claimed “controller.”
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`Complainant’s citation to extrinsic evidence is similarly unavailing, and indeed, supports
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`Respondents’ position. For example, one of the two dictionary definitions quoted by Complainant
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`defines “controller” as “[a] person or thing that directs or regulates something.” (See Complaint
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`Br. at 26 (citing CX-0011).) This definition does not provide any structural detail or meaning to
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`the word “controller.” Instead it confirms that a “controller” is a generic black box that performs
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`the functions of “direct[ing]” or “regulat[ing]” something else and may be any number of different
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`structures. (See Wells Decl. at ¶ 27.) Another of Complainant’s dictionaries broadly describes a
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`controller as a “key component of a device … that contains the circuitry necessary to interpret and
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`execute instructions.” (Id. at 25-26.) Again, this definition does not provide any structural details,
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`or show how a person of skill would understand a “controller” as inherently structural. Rather, it
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`confirms that a controller is generic box which may contain any type and kind of “circuitry” for
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`performing various functions. Complainant also contends that “the term ‘controller’ is frequently
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`used in literature to refer to a physical component within a test and measurement device,” but
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`Complainant does not cite to any such literature, instead relying on two paragraphs of Dr. Blalock’s
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`declaration. (See id. at 26 (citing CX-8 ¶¶106-107).) However, these paragraphs of Dr. Blalock’s
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`declaration make no mention of any such purported literature, nor does Dr. Blalock cite to any.
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`(See CX-8 ¶¶ 106-107).)
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`The remainder of Dr. Blalock’s declaration regarding “controller” consists of conclusory
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`and unsupported statements that fail to demonstrate how persons of skill in the art would associate
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`“controller” with definite structure. (See, e.g., CX-8 ¶ 106 (stating without supporting citation or
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`explanation that “[t]he term controller is well-understood in the context of a test and measurement
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`instrument as a particular, structural component, and it also is known in the context of other
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`electronic devices as well.”). Further illustrating the deficiencies in Complainant’s argument, Dr.
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`Blalock largely describes the claimed “controller” by its function, or by what it is connected to,
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`rather than by a structural characteristics: “a controller is used to set parameters” … “the controller
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`is connected to a user interfaces [sic] and receives input from various controls” … “the controller
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`sends parameters to the decimator” … “the controller sends parameters that control the operation
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`of these circuit components” … “a controller adjusts the decimation rate of the decimator” …
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`“[t]he controller provides digital signals to a set of input pins.” (Id. at ¶¶ 106-107 (emphasis
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`added); see also Wells Decl. ¶ 28.) Each of these statements describes the function of the
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`controller, but fails to provide any details of the structure for the controller. Even in Complainant’s
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`expert’s descriptions, the controller remains a “black box” of unknown structure or circuity,
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`described purely by what it does, not by what it is.
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`Once the requirements of § 112, ¶ 6 are applied to the controller terms, it is clear that they
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`are indefinite as the specification does not describe any structure for performing the controller’s
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`numerous claimed functions. Neither Complainant nor Dr. Blalock meaningfully address this
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`point, instead only briefly citing to the specifications’ reference to “circuitry.” (See Complainant
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`Br. at 27; CX-08 ¶ 107.) As explained in Respondents’ opening brief, the patents-in-suit fail to
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`provide any structure (hardware) or algorithm (software) for performing these functions, and thus
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`the controller terms are indefinite under § 112, ¶ 6.
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`B.
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`“Digital Downconverter”
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`Complainant’s construction seeks to read various limitations into the claims from the
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`specification, despite the fact the specification explicitly describes these features as optional. It is
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`an established canon of claim construction that example embodiments in a patent’s specification
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`are not to be read into the claims absent some words of manifest exclusion or restriction indicating
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`that the applicant intended to limit their invention to particular embodiments. See Hill-Rom
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`Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371-72 (Fed. Cir. 2014); see also Liebel-Flarsheim
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`Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299
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`F.3d 1313, 1327 (Fed. Cir. 2002). Not only are there no such statements in the ’460 patent with
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`regard to the digital downconverter, the patent notes that the “mixing, filtering, and decimating”
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`aspects are optional features, not requirements.
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`In particular, the following passage from the ’460 patent specification establishes that there
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`are multiple embodiments of the digital downconverter, only some of which mix, filter, and
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`decimate:
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`Accordingly, the instrument 170 can include a digital downconverter 180. The
`digital downconverter 180 coupled to the digitizer 176 and configured to frequency
`shift the digitized input single 184 to generate a frequency shifted input signal 186.
`FIG. 8 above is an example of a digital downconverter 180. However, in another
`embodiment, the digital downconverter 180 need not include multiple paths, 90
`degree phase shifts, or the like. That is, the digital downconverter 180 can include
`a digital mixing, filtering, or the like similar to a single path of the digital
`downconverter of FIG. 8.
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`(Respondents’ Br., Ex. 2, ’460 patent at 11:24-33 (emphasis added).) Thus, some embodiments
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`rely on “mixing, filtering, or the like,” and others rely on “multiple paths, 90 degree phase shifts,
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`[and] the like.” But critically, the requirements set forth in Complainant’s construction are not
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`requirements of the claims, they are options. The ’460 patent goes on to explain how in either
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`embodiment, the digital downconverter outputs a frequency shifted input signal, which is reflected
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`in Respondents’ construction. (See id. at 11:34-36 (“Regardless, a frequency range of interest of
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`the digitized input signal 184 can be frequency shifted into an IF frequency range.”).)
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`Complainant and Dr. Blalock fail to address the optional language used in the ’460
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`specification. Both Complainant’s brief and Dr. Blalock’s declaration go on at length about the
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`function of the digital downconverter, and how it is needed to output a frequency shifted input
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`signal. However, Complainant and Dr. Blalock appear to simply assume that mixing, filtering,
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`and decimating are necessary aspects of the claims. Notably, they do not address the optional
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`language of the specification or the other embodiments which employ different mechanisms
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`without mixing, filtering, or decimating. Therefore, Respondents’ construction of digital
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`downconverter, which properly encompasses the embodiments as disclosed in the specification,
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`should be adopted.
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`C.
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`“A frequency domain channel configured to process a second input signal for
`analysis in a frequency domain”
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`Complainant’s brief reveals that it does not dispute the structural aspects of Respondents’
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`construction. In particular, Complainant agrees that the frequency domain channel is a distinct
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`path from the time domain channel, stating that “[a] key aspect disclosed in the ’719 patent is the
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`addition of a distinct frequency domain channel, which is separately coupled to the acquisition
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`system.” (Complainant’s Br. at 4 (emphasis added).) Complainant explains that “[t]he ’719 patent
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`includes examples of how the distinct time domain channel and frequency domain channel can be
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`configured.” (Id. at 5 (emphasis added).) Indeed, “[a] person of ordinary skill in the art would
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`understand that a time domain channel is to be understood in contrast with a frequency domain
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`channel.” (Id. at 19.)
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`Along this same vein, and as discussed in Respondents’ initial brief (Respondents’ Br. at
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`3, 8), the ’719 patent teaches that the alleged invention acquires data from distinct channels and
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`acquires the data from the distinct channels substantially simultaneously. (See, e.g., Respondents’
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`Br., Ex. 1, ’719 patent at 2:5-7.) Complainant similarly asserts that “[i]n the configuration of
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`the ’719 patent, the acquisition system is coupled to both the time domain channel and the
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`frequency domain channel for separate acquisition of the conditioned signals.” (Complainant’s
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`Br. at 5-6.) Consistently, Complainant argued in the ’719 IPR (IRP2018-00643) that “[t]he claim
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`recites that the acquisition system is configured to acquire data from both channels, not selectively
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`from one or the other.” (Respondents’ Br., Ex. 5 (POPR), at 40 (emphasis added).)
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`The parties also agree on what a “channel” is, structurally. Namely, a “‘channel’ is a
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`‘signal path’ between the point at which the input signal is received (i.e., an input port) and the
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`point at which it is acquired (i.e., in memory). (Complainant’s Br. at 17). Extending “channel” to
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`a “frequency domain channel,” Complainant concedes that a “frequency domain channel” is
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`simply understood as a channel that “facilitates acquisition for analysis in the frequency domain.”
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`(Id. at 20.) As adopted in Respondents’ construction, the plain language of the claim term
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`requiring the “frequency domain channel” to be configured to process the (second) input signal for
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`analysis in frequency domain is sufficiently clear and understood. Thus, Complainant appears to
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`agree with each aspect of Respondents’ construction.
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`Yet Complainant seeks to further narrow the definition of “frequency domain channel”
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`based on what the channel can do in certain embodiments. Complainant’s definition goes beyond
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`the plain “analysis in a frequency domain” language of the claim term. Indeed, Complainant cites
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`repeatedly to statements in the ’719 patent specification about what certain embodiments of the
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`frequency domain channel can do, but not what the frequency domain channel must do:
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`• “An acquisition of the demodulated data in the receiver can be acquired
`for analysis in response to the appearance of the RF signal in the
`frequency range of interest.” (Complainants Br. at 19 (citing ’719 patent
`at 9:25-27).)
`
`• “[T]he input signal 20 has been processed according to frequency domain
`related acquisition parameters that can be not only appropriate to the
`frequency range, resolution bandwidth, or the like that is of interest, but
`may be also be different from the acquisition parameters of the time
`domain channel 12.” (Id. (citing ’719 patent at 4:6-12).)
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`• “[T]he second input signal 20 can be frequency shifted to a different
`frequency range.” (ʼ719 patent at 3:30-31; compare with Complainant’s
`Br. at 20 (asserting the teaching as a requirement: “the input signal 20 has
`been frequency shifted”).)
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`• “Accordingly, due to the frequency shifting described above, effects of the
`different components described above, or the like from the frequency
`domain channel 14, the output signal 28 can be a signal that is processed
`more appropriately for frequency domain analysis than if processed in a
`time domain channel 12.” (Complainant’s Br. at 20 (citing ’719 patent at
`4:1-6).)
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`(Emphasis added to all quotes in bulleted list above.) Therefore, despite Complainant and its
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`expert’s urging that the listed embodiments are required by the frequency domain channel, there
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`is no intrinsic support for this argument. Complainant’s overly narrow construction to import
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`functional and optional requirements from the specification should be rejected.
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`D.
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`“A time domain channel configured to process a first input signal for
`analysis in time domain”
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`As discussed, supra, in connection with “frequency domain channel,” the parties agree on
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`the meaning of a “channel” and that the time domain channel is distinct from the frequency domain
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`channel. (See, e.g., Complainant’s Br. at 4-5, 17.) Complainant further understands that the “time
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`domain channel” is a channel configured to process the (first input) signal for analysis in the time
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`domain, as simply recited by the claim term and adopted by Respondents. (Id. at 17 (“Time domain
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`analysis pertains to observing or measuring a signal’s time domain waveform1 as a function of
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`time. [’417 patent] at 3:16-24.”).)
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`The parties, however, disagree on the functional nature of Complainant’s proposed
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`construction. In fact, Complainant appears to be walking back its requirement that the “time
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`1 As discussed infra in II.E, Respondents disagree that observing or measuring a time domain
`signal is limited to a “waveform.” Indeed, even Complainant’s citation to the ’417 patent at
`3:16-24 does not limit the representation of the time domain signal to a waveform.
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`domain channel” be “capable of substantially preserving” the full frequency bandwidth, now
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`arguing in its brief that the channel should “preserve” the full frequency bandwidth “to the extent
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`possible.” (See, e.g, Complainant’s Br. at 18). This shift underscores the ambiguity in
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`Complainant’s proposed construction: neither Complainant nor its expert explain to what extent
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`is it necessary to “preserve” the full frequency bandwidth to meet the claim language. See Tyco
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`Healthcare Grp. LP v. Mut. Pharm. Co., No. CIV.A 07-1299(SRC), 2009 WL 44745, at *4 (D.N.J.
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`Jan. 5, 2009) (rejecting Plaintiffs’ proposed construction: “If this Court were to agree with
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`Plaintiffs’ position, it would replace clarity with ambiguity, defeating the purpose of claim
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`construction.”); see also 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1333
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`(Fed. Cir. 2013) (refusing to narrow a claim term to specific size requirements when the written
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`description and prosecution history do not provide additional information as to the parameters of
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`the claimed [term]”).
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`The ’719 patent specification does not explain how to satisfy Complainant’s construction
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`because, as explained in Respondents’ initial brief, there is no requirement of “preserving” the full
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`frequency bandwidth in the patent. (Respondents’ Br. at 21-23.) To the contrary, the ’719 patent
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`expressly teaches that the bandwidth of the time domain signal can be filtered. Indeed, the
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`specification expressly teaches that components in each of the “respective channels” can be
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`adjusted with filter bandwidths (Id., Ex. 1,’719 patent at 8:48-51) and that “filtering” can be
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`applied to the time domain signal. (Id. at 9:63-64.) Complainant’s construction is therefore wrong
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`on the law, wrong on the intrinsic record, and should be rejected.
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`RESPONDENTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`10
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`Tektronix, Exhibit 2016
`Rohde v. Tektronix, IPR2018-00643
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`E.
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`“Configured to present … through a user interface” / “presenting … through
`a user interface”
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`The parties’ opening briefs talk past one another and address disparate issues. Contrary to
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`Complainant’s allegations, Respondents’ construction does not seek to add a requirement that the
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`controller itself “display” information directly to a user. For this reason, Respondents’
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`construction states that the controller is “configured to display to a user,” and as described in detail
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`in the ’460 specification, it may be configured to do so through the use of a user interface. As
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`such, Respondents are not seeking to add a requirement to the controller.
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`Rather, the issue between the parties is that Complainant seeks to import into the term one
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`particular feature disclosed in an exemplary embodiment in the specification by requiring that the
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`presentation of information to a user be in the form of waveforms and spectrums, as opposed to
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`other representations. The specification of the ’460 patent contemplates waveforms and spectrums
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`as examples of the way information may be represented through a user interface, but nothing in
`
`the ’460 patent limits the claims to only these particular representations. The ’460 patent
`
`specification discloses that “the user interface 240 can include a display 242. The controller 222
`
`can be configured to present the decimated input signal 188 and the frequency shifted input signal
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`186 through the user interface.” (Respondents’ Br., Ex. 2, ’460 patent at 12:38-46.) The patent
`
`goes to explain how, “in this example, a time domain trace 248 corresponds to the decimated input
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`signal 188. A frequency domain trace 250 corresponds to the frequency shifted input signal 186.”
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`(Id. at 12:44-46.) But this is merely an example, and Complainant has not identified any words
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`of restriction that would limit the claims to only this example. Complainant’s overly narrow
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`construction should be rejected.
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`RESPONDENTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`11
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`Tektronix, Exhibit 2016
`Rohde v. Tektronix, IPR2018-00643
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`F.
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`“Test and Measurement Instrument”
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`
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`Complainant misapprehends the parties’ dispute concerning this term. The dispute is not
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`whether a “test and measurement instrument” is something intended to be operated by a user, but
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`whether the definition of “test and measurement instrument” requires a user perform an action
`
`(i.e., “selects to operate on electronic devices”).2 Complainant’s construction confuses the
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`definitional aspect of claim construction with the intended use of what is described. For example,
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`while a “car” is intended to be operated by a driver for transportation, the definition of a car does
`
`not require the existence of a driver nor does it require the driver to perform some action. A vehicle
`
`may be a car whether it is being driven or not. Similarly, a “test and measurement instrument” is
`
`a “test and measurement instrument” whether or not a user “selects to operate on electronic
`
`devices.” A given instrument could remain in a box never used, and it would still be a “test and
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`measurement instrument.” Complainant’s construction requiring a user should be rejected.
`
`G.
`
`“Not used to process the same signal sequentially”
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`The parties’ dispute here centers on the meaning imparted to this claim language by
`
`Complainant when it defined this language during prosecution to order to overcome a rejection in
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`view of prior art reference Kato. The Kato reference discloses a time domain channel for
`
`processing a signal in the time domain, and a frequency domain channel that receives the signal
`
`after it is processed in the time domain, converts it to the frequency domain, and processes it in
`
`the frequency domain. (Respondents’ Br., Ex. 3, Kato at [0016].) In response to the Examiner’s
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`rejection, Complainant amended claim 1 to recite “wherein the time domain channel and the
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`frequency domain channel are not used to process the same signal sequentially.” (See
`
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`2 Respondents offered a construction to counter Complainant’s desire to construe the preamble,
`but Respondents have not agreed that the preamble should be limiting on the scope of the claims.
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`RESPONDENTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`12
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`Tektronix, Exhibit 2016
`Rohde v. Tektronix, IPR2018-00643
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`Respondents’ Br., Ex. 4, ʼ719 File History at 119 (Applicant Arguments/Remarks, p. 7, June 26,
`
`2013).
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`Complainant’s proposed construction is narrower than the scope of what Tektronix
`
`surrendered to distinguish the prior art, both during original prosecution and more recently during
`
`inter partes review proceedings. The parties agree that this claim language is a negative limitation
`
`added to distinguish first processing a signal in one domain (e.g., time) and then converting it to
`
`the other domain (e.g., frequency) for subsequent processing. (See Complainant’s Br. at 22-23.)
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`Because the term is a negative limitation, the effect of Complainant’s attempt to narrow the
`
`disclaimer improperly broadens the claim. First, Complainant’s requirement “that same signal is
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`not output from one channel and then input to the other channel” was not present