IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Case No. 2:18-cv-0042-JRG-RSP
`
`Case No. 2:18-cv-0075-JRG-RSP
`
`UNILOC USA, INC.,
`UNILOC LUXEMBOURG, S.A., and
`UNILOC 2017 LLC
`
`Plaintiffs,
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA,
`INC. and SAMSUNG ELECTRONICS CO.
`LTD.,
`
`Defendants.
`
`UNILOC USA, INC.,
`UNILOC LUXEMBOURG, S.A., and
`UNILOC 2017 LLC
`
`Plaintiffs,
`
`v.
`
`HUAWEI DEVICE USA, INC. and
`HUAWEI DEVICE CO., LTD.,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`On March 20, 2019, the Court held an oral hearing to determine the proper construction of
`
`the disputed claim terms in the U.S. Patent No. 6,868,079 (the “’079 Patent”). The Court has
`
`considered the parties’ claim construction briefing (Dkt. Nos. 68, 74, and 76) and arguments. 1
`
`1 Claim construction was consolidated for the two cases and as used herein docket numbers reference the
`filings in 2:18-cv-00042.
`
`1
`
`Apple v. Uniloc,
`IPR2019-00510 EX2001
`
`

`

`Based on the intrinsic and extrinsic evidence, the Court construes the disputed terms in this
`
`Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Teva Pharm.
`
`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
`
`BACKGROUND
`
`Uniloc USA, Inc., Uniloc Luxembourg S.A., and Uniloc 2017 LLC (collectively “Uniloc”)
`
`have asserted the ’079 Patent in two actions against (1) Samsung Electronics America, Inc. and
`
`Samsung Electronics Co. Ltd. (collectively “Samsung”) and (2) Huawei Device USA, Inc. and
`
`Huawei Device Co., Ltd. (collectively “Huawei”) (all defendants collectively “Defendants”). The
`
`claims at issue include independent claims 17 and 18.
`
`The ’079 Patent relates generally to a radio communication system that provides
`
`communications between a primary station (base station) and a secondary (mobile) station. The
`
`Abstract of the ’106 Patent recites:
`
`A method of operating a radio communication system in which secondary stations
`use dedicated time slots to request services from a primary station. A secondary
`station wishing to request a service sends a request in every time slot allocated to it
`until it receives an acknowledgement from the primary station. The primary station
`can use combining techniques on multiple time slots to identify the presence or
`absence of a request from a secondary station with improved accuracy.
`
`’079 Patent, at [57]. The ‘079 Patent relates to the process through which a secondary station sets
`
`up communication with a primary station. A prior art process is described in which a secondary
`
`(mobile) station requests service from the primary (base) station and then waits for an
`
`acknowledgement (ACK) from the primary station setting up the required service. ’079 Patent
`
`1:43–54. The ’079 Patent describes a process in which a secondary station continues to make
`
`requests for service in successive allotted time slots without waiting for the ACK signal. Then,
`
`when an ACK signal is received (or a flag determines no further requests should be made), requests
`2
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 2
`
`

`

`are stopped. Id. at 3:55–4:7. This process is shown in Figure 3.
`
`’079 Patent Figure 3.
`
`
`
`The terms at issue are found in independent claims 17 and 18. Claim 17 recites:
`
`
`
`17. A method of operating a radio communication system, comprising:
`allocating respective time slots in an uplink channel to a plurality of respective
`secondary stations;
` and transmitting a respective request for services to establish required services
`from at least one of the plurality of respective secondary stations to a
`primary station in the respective time slots;
`wherein the at least one of the plurality of respective secondary stations re-transmits
`the same respective request in consecutive allocated time slots without
`waiting for an acknowledgement until said acknowledgement is received
`from the primary station,
`wherein the primary station determines whether a request for services has been
`transmitted by the at least one of the plurality of respective secondary
`stations by determining whether a signal strength of the respective
`transmitted request of the at least one of the plurality of respective
`secondary stations exceeds a threshold value.
`
`
`Claim 18 recites:
`
`18. A radio communication system, comprising:
`a primary station and a plurality of respective secondary stations; the primary
`3
`
` 
` 
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`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 3
`
`

`

`station having means for allocating respective time slots in an uplink
`channel to the plurality of respective secondary stations to transmit
`respective requests for services to the primary station to establish required
`services;
`wherein the respective secondary stations have means for re-transmitting the same
`respective requests in consecutive allocated time slots without waiting for
`an acknowledgement until said acknowledgement is received from the
`primary station,
`wherein said primary station determines whether a request for services has been
`transmitted by at least one of the respective is secondary stations by
`determining whether a signal strength of the respective transmitted request
`of the at least one of the respective secondary stations exceeds a threshold
`value.
`
`LEGAL PRINCIPLES
`
`
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 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)). To determine the meaning of the claims, courts start by
`
`considering the intrinsic evidence. Id. at 1313; 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. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
`
`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
`
`term is construed according to its 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 patent. Phillips, 415 F.3d
`
`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
`
`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
`
`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
`
`(vacated on other grounds).
`
` 
` 
`
`4
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 4
`
`

`

` “The claim construction inquiry . . . begins and ends in all cases with the actual words of
`
`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
`
`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`Cir. 1998)). A term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314.
`
`Other asserted or unasserted claims can also 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. (quoting
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (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.’” Id. (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
`
`299 F.3d 1313, 1325 (Fed. Cir. 2002). 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)); see also Phillips, 415 F.3d at 1323. “[I]t is
`
`improper to read limitations from a preferred embodiment described in the specification—even if
`
`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
`
` 
` 
`
`5
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 5
`
`

`

`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`898, 913 (Fed. Cir. 2004).
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
`
`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
`
`However, “because the prosecution history represents an ongoing negotiation between the PTO
`
`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`
`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
`
`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
`
`history may be “unhelpful as an interpretive resource”).
`
`Although extrinsic evidence can also 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 (quoting C.R. Bard, Inc., 388 F.3d at 862). 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 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 recently explained the role of extrinsic evidence in claim
`
`construction:
`
` 
` 
`
`6
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 6
`
`

`

`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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). 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 underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary fact finding must be reviewed for clear error on appeal.
`
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`A. Departing from the Ordinary Meaning of a Claim Term
`
`There are “only two exceptions to [the] general rule” that claim terms are construed
`
`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
`
`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
`
`in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
`
`1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`
`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
`
`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
`
`lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
`
`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
`
`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
`
`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
`
`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
`
`                                                            
`2 Some cases have characterized other principles of claim construction as “exceptions” to the general rule,
`such as the statutory requirement that a means-plus-function term is construed to cover the corresponding
`structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1367 (Fed. Cir. 2002). 
`
`7
`
` 
` 
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 7
`
`

`

`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
`
`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
`
`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
`
`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
`
`of a claim term by including in the specification expressions of manifest exclusion or restriction,
`
`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
`
`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
`
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
`
`B. Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA)/ §112(f) (AIA)3
`
`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
`
`relevant portion). Section 112, ¶ 6 provides that a structure may be claimed as a “means . . . for
`
`performing a specified function” and that an act may be claimed as a “step for performing a
`
`specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
`
`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
`
`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms
`
`and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
`
`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
`
`ordinary skill in the art would understand the claim with the functional language, in the context of
`
`the entire specification, to denote sufficiently definite structure or acts for performing the function.
`
`See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§
`
`                                                            
`3 Because the application resulting in the ’079 Patent was filed before September 16, 2012, the effective
`date of the AIA, the Court refers to the pre-AIA version of § 112. 
`8
`
` 
` 
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 8
`
`

`

`112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
`
`sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
`
`Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
`
`at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of
`
`ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
`
`Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
`
`to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
`
`Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
`
`includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
`
`function . . . even if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
`
`When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
`
`materials, or acts described in the specification as corresponding to the claimed function and
`
`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
`
`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
`
`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
`
`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
`
`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
`
`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
`
`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
`
`inquiry is not merely whether a structure is capable of performing the recited function, but rather
`
`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
`
`Id. The corresponding structure “must include all structure that actually performs the recited
`
`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
`
` 
` 
`
`9
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 9
`
`

`

`Cir. 2005). However, § 112 does not permit “incorporation of structure from the written description
`
`beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem.
`
`Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
`
`For § 112, ¶ 6 limitations implemented by a programmed general-purpose computer or
`
`microprocessor, the corresponding structure described in the patent specification must include an
`
`algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
`
`1349 (Fed. Cir. 1999). The corresponding structure is not a general-purpose computer but rather
`
`the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
`
`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`
`C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)4
`
`Patent claims must particularly point out and distinctly claim the subject matter regarded
`
`as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
`
`must “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). If it does not, the claim
`
`fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
`
`determined from the perspective of one of ordinary skill in the art as of the time the application for
`
`the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any
`
`claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130
`
`n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v.
`
`Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
`
`                                                            
`4 Because the application resulting in the ’079 Patent was filed before September 16, 2012, the effective
`date of the AIA, the Court refers to the pre-AIA version of § 112.  
`10
`
` 
` 
`
`Apple v. Uniloc, IPR2019-00519
`Ex. 2001, page 10
`
`

`

`In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite
`
`if the claim fails to disclose adequate corresponding structure to perform the claimed functions.
`
`Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary skill in the
`
`art “would be unable to recognize the structure in the specification and associate it with the
`
`corresponding function in the claim.” Id. at 1352.
`
`AGREED TERMS
`
`
`
`In the briefing, the parties agreed to the following constructions:
`
`Term
`“wherein said primary station determines
`whether a request for services has been
`transmitted . . . by determining whether a
`signal strength . . . exceeds a threshold value”
`(claim 18)
`“means for re-transmitting the same
`respective requests . . . to establish required
`services” (claim 18) 
`
`
`(Dkt. No. 68 at 3, 5; Dkt. No. 74 at 6, n.3, 19).
`
`Agreed Construction
`ordinary meaning
`
`Function: re-transmitting the same respective
`requests to establish required services
` 
`Structure: microcontroller 112, transceiver
`114, connected to radio transmission 116, and
`power control 118, and the algorithms
`contained in 3:62–4:4; 4:8–12, 4:29–39;
`5:34–45, 49–56
`
`At the oral hearing, the parties agreed to the following constructions proposed in the
`
`Court’s preliminary constructions:
`
`Term
`“exceeds a threshold value”
`(claims 17, 18)
`“re-transmits the same respective request in
`consecutive allocated time slots”
`(claim 17)
`“re-transmitting the same respective requests
`in consecutive allocated time slots”
`(claim 18)
`“uplink channel”
`
` 
` 
`
`Agreed Construction
`exceeds a predetermined signal strength
`
`repeats the transmission of the same
`respective request in consecutive allocated
`time slots
`repeating the transmission of the same
`respective request in consecutive allocated
`time slots
`a channel used by a secondary station to send
`11
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`Ex. 2001, page 11
`
`

`

`(claims 17, 18)
`
`communications to a primary station
`
`
`(Case No. 2:18-cv-0075, Dkt. No. 54 (hereinafter “Hearing Transcript”) at 75).5
`
`
`DISPUTED TERMS
`
`1. “acknowledgment” (claims 17, 18)
`
`
`Uniloc’s Proposal
`
`Defendants’ Proposal
`
`ordinary meaning
`or
`message signifying the request had been
`received by the primary station
`
`a message sent from the primary station to the
`secondary station stating the primary station’s
`receipt of the secondary station’s request
`
`
`The dispute resolves around Uniloc’s position that merely providing services acts as an
`
`
`
`
`acknowledgement message, as opposed to requiring an acknowledgment message.
`
`Position of the Parties
`
`In its opening brief, Uniloc provided no argument other than to state that Defendants’
`
`proposed construction is awkwardly phrased due to using “stating . . . receipt of the secondary
`
`station’s request.” (Dkt. No. 68 at 2).
`
`Defendants note that claims 17 and 18 require that a “request for services to establish
`
`required services” is transmitted from secondary stations to primary stations “until said
`
`acknowledgement is received from the primary station.” (Dkt. No. 74 at 6).
`
`Defendants contend that the sole dispute between the parties is whether the
`
`“acknowledgement” is a message that “stat[es]” that the primary station has received the secondary
`
`station’s request (as Defendants contend) or whether the “acknowledgement” is a message that
`
`merely “signif[ies]” that the primary station has received the secondary station’s request (as Uniloc
`
`contends). Defendants state that the issue is whether the “acknowledgement” limitation can be met
`
`                                                            
`5 This is also the relevant transcript for the 2:18-cv-0042 case.
`12
`
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`Ex. 2001, page 12
`
`

`

`by the sending the requested services by the base station, or whether the primary station must first
`
`send a separate acknowledgement before the services are provided. (Dkt. No. 74 at 6–7).
`
`Defendants state that the unasserted claims of the ’079 Patent confirm that Defendants’
`
`proposed construction is correct, specifically claims 10 and 15:
`
`when at least one of the respective secondary stations has received the
`acknowledgement from the primary station, the at least one respective secondary
`station stops any further requests for services from being transmitted, and begins
`negotiations with the primary station to define fully the requested services.
`
`(’079 Patent, Claim 10.)
`
`means for stopping any further requests for services from being transmitted when
`the acknowledgement is received from the primary station [and] means for
`beginning negotiations with the primary station to define fully the requested
`services when the acknowledgement is received from the primary station.
`
`(’079 Patent, Claim 15.) Defendants contend that because the services are set up only after the
`
`acknowledgement is received, the claimed “acknowledgement” must be construed as being
`
`separate and distinct from the provision of negotiated and fully-defined services. (Dkt. No. 74 at
`
`7 (citing Dkt. No. 74-1 (Wells Decl.) at ¶ 37).)
`
`
`
`Defendants contend that this conforms to Figure 3 and the associated specification text.
`
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`Ex. 2001, page 13
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`the MS 110 has received an
`test 308 determines whether
`A second
`acknowledgement from the BS 100. When the second test 308 determines that an
`acknowledgement has been received from the BS 100, the MS 110 at 310 stops any
`further requests from being sent, for example by setting to false a flag that is
`checked by the first test 306. The MS 110 then begins negotiations 312 with the BS
`100 to define fully the required services. Finally, at 314, the required services are
`set up by the BS 100.
`
`’079 Patent fig. 3 & 3:66–4:7. Defendants contend that, consistent with the language of the claims,
`
`the specification makes clear that the “acknowledgement” is a message received by the mobile
`
`station leading the mobile station to stop sending further requests. Defendants state that after the
`
`acknowledgement is received by the mobile station, the negotiation process between the mobile
`
`station 110 and the base station 100 begins in order to define and “set up” the required services.
`
`Defendants state that “acknowledgement” is separate and distinct from the eventual provision of
`
`those services. (Dkt. No. 74 at 9).
`
`Defendants contend that their interpretation of acknowledgement also conforms to the plain
`
`meaning of “acknowledgement” to a person of ordinary skill in the art. (Id. (citing Dkt. No. 74-1
`
`(Wells Decl.) at ¶¶ 34–38)). Defendants contend that such “acknowledgement” messages are so
`
`commonly used that they are usually referred to by the shorthand “ACK,” a naming convention
`
`that is also reflected in the ’079 Patent. (Id. at ¶ 38 (citing ’079 Patent at 3:66–4:7; Fig. 3)).
`
`Defendants and their expert also point to the IEEE Authoritative Dictionary:
`
`acknowledgement (1) (of a message) A reply transmitted by a receiving station to inform
`the sending station that a message has arrived and the message is error-free. Contrast:
`negative acknowledgement.
`(2) A signal that is used to reply to a message or signal originator that its message or signal
`was received.
`
` (Dkt. No. 74 at 10; Dkt. No. 74-3 Ex. 1 at 10; Dkt. No. 74-1 (Wells Decl.) at ¶ 39).
`
`In reply, Uniloc contends that in the patent, (1) the secondary station transmits a “request
`
`for services,” (2) if the primary station, for whatever reason, does not recognize the request has
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`Ex. 2001, page 14
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`been received, it will do nothing, and (3) if it does recognize the request has been received, it will
`
`do something: (a) it could send a message “stating the receipt,” and then “begin negotiations to
`
`define fully the requested services,” or (b) it could simply provide the services, which would
`
`signify the request had been received. (Dkt. No. 76 at 1 (providing no intrinsic evidence citation
`
`for such allegations)). Uniloc contends that, either way, the secondary station would know the
`
`request had been received and would therefore stop retransmitting the request. Uniloc contends
`
`that the claims, as written, cover both embodiments.
`
`Uniloc contends that Defendants want to exclude the latter embodiment (item (b) above),
`
`which Uniloc calls the “provide-services embodiment,” because the first embodiment (item (a)
`
`above), which Uniloc calls the “begin-negotiations embodiment,” is the one the specification
`
`discusses. (Dkt. No. 76 at 1). As to dependent claims 10 and 15, Uniloc contends that those claims
`
`actually hurt Defendants” arguments. Uniloc contends that because a limitation added by a
`
`dependent claim suggests that the independent claim from which it depends (in this case, claims 8
`
`and 12, respectively) is broader, the independent claim would embrace embodiments that do not
`
`meet the added limitation. Uniloc states that claims 8 and 12 are not restricted to the “begin-
`
`negotiations” embodiment and that what is added by claims 10 and 15 is the “provide-services”
`
`embodiment. (Dkt. No. 76 at 2).
`
`Uniloc contends that the specification contains no language suggesting or implying the
`
`broader claims should exclude that embodiment, particularly since that embodiment completely
`
`meets the purpose of the invention as the secondary station learns the primary station has
`
`recognized the request. (Id.)
`
`Analysis
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`15
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`Ex. 2001, page 15
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`Uniloc seeks to ignore the explicit requirements in the claim of the presence of an
`
`“acknowledgement.” Though Uniloc contends that a “provide-services” embodiment is taught in
`
`the patent, Uniloc provides no intrinsic support for such an embodiment. Further, the evidence
`
`presented to this Court provides no support for the position that merely providing services is an
`
`acknowledgement message. As noted by the citations of Defendants, the intrinsic record clearly
`
`teaches that the “acknowledgement” is separate from merely providing services. Further, it is noted
`
`that the claims explicitly recite the “services” and separately call for an “acknowledgement.” As
`
`interpreted by Uniloc, the claims would continue sending the “requests” until “services” are
`
`provided. However, the claims explicitly recite “until said acknowledgement is received by the
`
`primary station,” not the services. In light of the intrinsic record, it is clear that the services and an
`
`acknowledgement are separate.
`
`Moreover, such an interpretation conforms to the undisputed extrinsic evidence as to the
`
`known meaning of an “acknowledgment” in the art. First, it is noted in the background section of
`
`the ’079 Patent itself—“acknowledgement” is clearly referenced as being part of the UMTS
`
`standard and is a signal used to set up services. ’079 Patent 1:43–49. It is clear that this is not
`
`merely providing services. Further, the term has a well-known meaning to those skilled in the art,
`
`a meaning that Uniloc has not rebutted. (Dkt. No. 74-1 (Wells Decl.) at ¶¶ 34–38). Similarly, this
`
`conforms to the meaning the in IEEE Authoritative Dictionary:
`
`acknowledgement (1) (of a message) A reply transmitted by a receiving station to inform
`the sending station that a message has arrived and the message is error-free. Contrast:
`negative acknowledgement.
`(2) A signal that is used to reply to a message or signal originator that its message or signal
`was received.
`
`(Dkt. No. 74 at 10; Dkt. No. 74-3 Ex. 1 at 10; Dkt. No. 74-1 (Wells Decl.) at ¶ 39). The Court
`
`evaluates this unrebutted extrinsic evidence and finds the extrinsic evidence further supports
`
`16
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`Ex. 2001, page 16
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`

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`Defendants positions. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (allowing
`
`a Court to evaluate and consider extrinsic evidence).
`
`At the oral hearing, when presented by the Court’s preliminary construction (which is the
`
`same as the construction adopted below), Uniloc agreed to the construction. However, such an
`
`agreement without the Court stating more, poses a risk of not resolving the dispute and l