1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`UNILOC 2017 LLC,
`Plaintiff,
`
`
`
`v.
`
`HTC AMERICA, INC.,
`
`Defendant.
`
`CASE NO. C18-1732 RSM
`
`ORDER RE CLAIM CONSTRUCTION
`
`I.
`
`INTRODUCTION
`
`This matter is before the Court for construction of certain terms used in the Claims of
`
`Patent No. 6,836,654 (“the ‘654 Patent”). The ‘654 Patent relates to mobile radiotelephony
`
`devices (cell phones) and the manner in which cell phones, by locking at different states of
`
`operability (blocking states), are secured against unauthorized use to discourage theft. The
`
`parties have presented the Court with the terms that they recommend the Court interpret and have
`
`briefed their favored constructions of those terms. Dkts. #42 and ##46–51. The parties were
`
`also afforded an opportunity to argue and answer questions at a Markman hearing. Now, having
`
`fully considered the issue, the Court decides as follows.
`
`II.
`
`BACKGROUND
`
`The ‘654 Patent was filed in 2000, at a time when cell phones generally had to be
`
`deactivated at the network level if they were lost or stolen. This allowed charges to be incurred
`
`ORDER – 1
`
`Exhibit 2007
`IPR2019-01471
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`on a user’s account between the time the loss or theft occurred and the time the network operator
`
`was able to deactivate the cell phone. The ‘654 Patent, issued in 2004, addressed deactivation at
`
`the phone level by the use of three “blocking states.” A first blocking state required a linked user
`
`identification module (e.g. a SIM card) without which the phone would not operate on the
`
`network.1 If the linked user identification module was present, the phone would work in its
`
`normal operative state—allowing for both inbound and outbound calls. A device entered the
`
`second blocking state after a period of inactivity. In the second blocking state, the phone could
`
`receive calls, but could not make outgoing calls (possibly excepting calls to emergency numbers).
`
`After entering the second blocking state, the device required a passcode (e.g. PIN) to be entered
`
`to return to the normal operative state. If the correct passcode was not provided within a specified
`
`number of attempts, the phone would move to the third blocking state. In this third blocking
`
`state, the phone would lock such that it was inoperative (again possibly excepting calls to
`
`emergency numbers) until an unblocking code linked to the user identification module was
`
`provided at the network level.
`
`Uniloc initiated this action on the basis that HTC had infringed upon claims 1, 3–5, and
`
`7 of the ‘654 Patent. Dkt. #1 at ¶¶ 12, 15–18. Pursuant to this Court’s local patent rules, the
`
`parties submitted a Joint Claim Construction and Prehearing Statement setting forth the claim
`
`terms and phrases in need of construction. Dkt. #42. The Court’s local patent rules limit
`
`construction to “a maximum of ten claim terms at the initial Markman hearing, unless the Court
`
`determines otherwise.” LPR 132(c). Nevertheless, the parties set forth a list of seventeen terms
`
`and phrases needing construction. Dkt. #42 at 5–20. The parties agree that the first ten claim
`
`1 Patent No. 5,913,175 (“the ‘175 Patent”) constituted prior art and provided for linking a device
`to a specific user identification module such that a stolen device could not be used with a different
`user identification module. But deactivation still had to occur at the network level if the device
`was stolen with the linked user identification module.
`
`ORDER – 2
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`terms are the most important. Id. at 2. But HTC further requests that the Court construe at least
`
`the first thirteen, and preferably all seventeen, terms and phrases. Id. at 3. Uniloc maintains that
`
`construction of the first ten terms and phrases is sufficient. Id.
`
`Importantly, this Court’s construction of the ‘654 Patent does not proceed in isolation as
`
`litigation related to the ‘654 is proceeding in several other United States District Courts. Uniloc
`
`is concurrently pursuing actions against Motorola,2 Google,3 Samsung,4 Microsoft,5 and Apple.6
`
`The Motorola, Google, and Samsung courts have all issued orders on claim construction related
`
`to the ‘654 Patent. See Dkt. #42 at 21–33 (Motorola), 34–112 (Google), 113–165 (Samsung).
`
`Uniloc indicates that “[o]ther than one term, the constructions . . . were effectively the same” in
`
`the Motorola and Google/Samsung actions. Dkt. #46 at 8. The Court remains mindful of these
`
`prior orders as it proceeds to claim construction.
`
`III.
`
`DISCUSSION
`
`A. Legal Standard
`
`The scope of a patent is measured by its claims. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.,
`
`381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996) (“we look to the words of the claims themselves . . . to define the scope of the
`
`patented invention”); Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)
`
`2 Uniloc 2017 LLC v. Motorola Mobility, LLC, Case No. 1-18-cv-01844 (D. Del.).
`
`3 Uniloc 2017 LLC v. Google LLC, Case No. 2-18-cv-00493 (E.D. Tex.).
`
`4 Uniloc 2017 LLC v. Samsung Electronics America, Inc., Case No. 2-18-cv-00508 (E.D. Tex.).
`
`5 Uniloc 2017 LLC v. Microsoft Corporation, Case No. 8-19-cv-00781 (C.D. Cal.).
`
`6 Uniloc 2017 LLC v. Apple Inc., Case No. 3-19-cv-01697 (N.D. Cal.).
`
`ORDER – 3
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`(en banc), affirmed, 517 U.S. 370 (1996) (“The written description part of the specification itself
`
`does not delimit the right to exclude. That is the function and purpose of claims.”)). In short,
`
`the claims set forth what the inventor regarded as the invention. See 35 U.S.C. § 112(b). Not all
`
`claim terms require construction and where a lay person does not need assistance interpreting a
`
`claim term, the term is simply given its plain and ordinary meaning. See Brown v. 3M, 265 F.3d
`
`1349, 1352 (Fed Cir. 2001) (holding that the claims did “not require elaborate interpretation”).
`
`In claim construction, “the words of a claim ‘are generally given their ordinary and
`
`customary meaning.’” Phillips, 415 F.3d at 1312 (citing Vitronics, 90 F.3d at 1582) (additional
`
`citations omitted). What is ordinary and customary is measured at the time of the invention and
`
`is based off the understanding of a “person of ordinary skill in the art in question.” Id. at 1313
`
`(citing Innova, 381 F.3d at 1116) (additional citations omitted).
`
`In constructing claims, the Court relies on intrinsic evidence and extrinsic evidence.
`
`Intrinsic evidence is preferred and includes the context of the entire patent and its prosecution
`
`history. Id. at 1313–14. Extrinsic evidence, like expert testimony, dictionaries, and treatises, is
`
`generally of less significance than the intrinsic record. Id. at 1317 (citing C.R. Bard, Inc. v. U.S.
`
`Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). In approximate descending order of
`
`significance, the Court should consider “the words of the claims themselves, the remainder of
`
`the specification, the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Id. at 1314 (quoting Innova,
`
`381 F.3d at 1116). Often the claims themselves and the remainder of the specification is
`
`dispositive as it “is the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d
`
`at 1582. “Relying on extrinsic evidence to construe a claim is proper only when the claim
`
`language remains genuinely ambiguous after consideration of the intrinsic evidence.” Interactive
`
`Gift Exp. Inc. v. Compuserve, Inc., 256 F.3d 1323, 1332 (Fed. Cir. 2001).
`
`ORDER – 4
`
`

`

`
`
`
`
`
`
`
`B. Construction of Terms
`
`Term 1. “linked user identification module” – (Claims 1, 5, 7, 10, 11, 14, 17, 18)
`
`Uniloc’s Construction
`Plain and ordinary meaning.
`
`Alternatively, “an authorized user
`identification module that permits the
`normal operation of the device”
`
`HTC’s Construction
`“a user identification module that is the only
`one that permits normal operation of the
`device”
`
`Court’s
`Construction
`
`“a user identification module that is the only one that permits normal
`operation of the device”
`
`This is the most hotly contested of the terms. The parties provide reasonable and
`
`compelling arguments in support of their positions and each enjoys the benefit of a prior court
`
`order adopting its favored interpretation. While both constructions have support, the Court
`
`adopts HTC’s proposed construction and that of the Google/Samsung court.
`
`
`
`The parties’ dispute is whether the ‘654 Patent contemplates that multiple user
`
`identification modules can be linked to a device at any one time or whether it contemplates that
`
`a device is limited to use with a single user identification module after being linked. Uniloc relies
`
`on the fact that the first mentions of the “linked user identification module,” in both the patent as
`
`a whole and in Claim 1, are proceeded by an “a” term. ‘654 Patent at Abstract, ln. 2; 1:7. As
`
`such, Uniloc invokes the Federal Circuit’s rule of construction—not merely a presumption or a
`
`convention—
`
`[t]hat “a” or “an” can mean “one or more.” . . . The exceptions to this rule are
`extremely limited: a patentee must “evince[] a clear intent” to limit “a” or “an” to
`“one.” The subsequent use of definite articles “the” or “said” in a claim to refer
`back to the same claim term does not change the general plural rule, but simply
`reinvokes that non-singular meaning. An exception to the general rule that “a” or
`“an” means more than one only arises where the language of the claims
`themselves, the specification, or the prosecution history necessitate a departure
`from the rule.
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`ORDER – 5
`
`

`

`
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (citations
`
`and additional authority omitted). Uniloc further draws support from the Motorola court’s
`
`recognition that “[t]here is nothing in the patent that requires that only one linked user
`
`identification module will permit the normal operation of the device for all embodiments. Thus,
`
`the patent is not limited to only one linked user identification module for all embodiments.” Dkt.
`
`#42 at 25 (Motorola Order at 3).
`
`
`
`But HTC—and the Google/Samsung courts—sufficiently supports a departure from the
`
`Federal Circuit’s rule of construction by presenting evidence that the ‘654 Patent’s use of “a” is
`
`limited to “one.” First, the ‘654 Patent invokes the ‘175 Patent as Prior Art of the Invention and
`
`indicates that the ‘175 invention “comprises establishing a link between the device and a specific
`
`user identification module and blocking the normal operation of the device when the user
`
`identification module that is placed inside the device is not the one that is linked to the device.”
`
`‘654 Patent at 1:20–30 (emphasis added). The ‘175 Patent further claims
`
`a so-called locked mode in which the terminal can be used only with a user card
`with which it is “locked”, called the linked user card. In other words, a link is
`established between the terminal and a particular user card (the linked user card).
`
`Dkt. #46-6 at 8 (‘175 Patent at 2:14–21) (emphasis added). The ‘175 Patent claimed and was
`
`limited to a “locked mode” in which the phone and the user identification module were directly
`
`linked only to each other and the ‘175 Patent, so limited, was directly adopted by the ‘654 Patent.
`
`
`
`In addition, and as noted by the Google/Samsung courts, this interpretation is further
`
`supported by the specifications of the ‘654 Patent:
`
`Figure 3 and the description thereof reinforce this understanding. Referring to
`Figure 3, in box K1 the user has access to a “configuration menu” whereby the
`user “has the choice of either or not locking his device.” ’654 Patent at 2:63–66.
`“When the user locks his device,” the module that is in the device is
`“automatically linked to the device.” Id. at 2:67–3:2.
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`ORDER – 6
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Dkt. #42 at 46 (Google Order at 12). Thus, the ‘654 Patent specifically claims an initial step
`
`where the device is locked and thereby linked to the user identification module installed. This
`
`linking occurs when a single user identification module is inside the device and the device is
`
`thereafter linked to that single user identification module. Accordingly, the Court adopts HTC’s
`
`proposed construction of “linked user identification module” as “a user identification module
`
`that is the only one that permits normal operation of the device.”
`
`C. Means Plus Function Terms
`
`
`
`The parties initially agreed that five of the first ten disputed terms needed construction
`
`are means-plus-function claims. Means-plus-function claims are governed by 35 U.S.C. § 112(f)
`
`(previously § 112 ¶ 6) which provides that claims may be expressed “as a means or step for
`
`performing a specified function.” 35 U.S.C. § 112(f). In means-plus-function claims, the
`
`inventor may claim the invention in terms of the function performed, as long as the specification
`
`discloses the structure that performs the associated function. See Med. Instrumentation &
`
`Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003).
`
`
`
`Construction of means-plus-function claims starts with determining the claimed function.
`
`Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (citation
`
`omitted). Then a court “must identify the corresponding structure in the written description of
`
`the patent that performs that function.” Id. The ultimate guide is whether the claim would be
`
`“understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the
`
`name for structure.” Id. at 1348 (citing Greenberg v. Ethicon Endo–Surgery, Inc., 91 F.3d 1580,
`
`1583 (Fed.Cir.1996) (“What is important is . . . that the term, as the name for structure, has a
`
`reasonably well understood meaning in the art.”)). For computer implemented means-plus-
`
`function claims, the disclosure must be “‘more than simply a general purpose computer or
`
`microprocessor,’ . . . the specification [must] ‘disclose an algorithm for performing the claimed
`
`ORDER – 7
`
`

`

`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`function.’” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citations omitted).
`
`The algorithm may be expressed “in any understandable terms, including as a mathematical
`
`formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”
`
`Id. (quoting Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal
`
`citations omitted in original)).
`
`
`
`As noted, the parties disputed the construction of Terms 2, 3, 4, 5, and 10 and agreed that
`
`the Court’s construction was necessary. Dkt. #46 at 14–20. As to Terms 2, 3, and 5, the parties
`
`agreed on the stated function of the terms. For those terms, then, the dispute was whether the
`
`specifications disclosed sufficient structures, clearly linked to the agreed functions. As to Terms
`
`4 and 10, the parties asserted different functions and also disputed whether the specifications
`
`disclosed sufficient structures, clearly linked to those functions.
`
`
`
`However, on the morning of the Markman hearing, HTC informed the Court that the
`
`parties’ positions had changed. Uniloc no longer asserted infringement on the basis of Claim 4,
`
`eliminating the need for construction of Term 10. HTC no longer asserted that Term 2 was
`
`indefinite and requested only slight modifications to the structure proposed by Uniloc. HTC no
`
`longer asserted that Term 4 was indefinite and proposed a new corresponding structure for its
`
`proposed function. Further, HTC no longer contested Uniloc’s proposed construction of Term
`
`5. These changes are reflected below.
`
`Term 2. “blocking means for preventing a normal operation of the mobile radiotelephony
`device” – (Claim 1)
`
`Uniloc’s Construction
`Function: “preventing a normal operation of
`the mobile radiotelephony device”
`
`Structure: “the hardware programmed to (i)
`disconnect from the network if an
`identification module that is not linked to
`the device is placed inside the device (col.
`
`HTC’s Construction
`Function: “preventing a normal operation of
`the mobile radiotelephony device”
`
`Structure: “the microprocessor assembly
`programmed to (i) disconnect from the
`network if an identification module that is
`not linked to the device is placed inside the
`
`ORDER – 8
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`3:14–20); (ii) prevent all outgoing calls,
`except possibly emergency calls, if the
`device has remained in a state of availability
`longer than a predetermined threshold of
`time (col. 3:33–46); and (iii) prevent all
`calls if an incorrect deblocking code is
`entered above a threshold amount (col.
`3:52–60)”
`
`device (col. 3:14–20); (ii) prevent all
`outgoing calls, except possibly emergency
`calls, if the device has remained in a state of
`availability longer than a predetermined
`threshold of time (col. 3:33–46); and (iii)
`prevent all calls if an incorrect deblocking
`code is entered above a threshold amount
`(col. 3:52–60)”
`
`Court’s Construction
`Function: “preventing a normal operation of the mobile radiotelephony device”
`
`Structure: “the microprocessor assembly programmed to (i) disconnect from the network if
`an identification module that is not linked to the device is placed inside the device (3:14–20);
`(ii) prevent all outgoing calls, except possibly emergency calls, if the device has remained in
`a state of availability longer than a predetermined threshold of time (3:33–46); and (iii)
`prevent all calls if an incorrect deblocking code is entered above a threshold amount (3:52–
`60)”
`
`As noted above, HTC conceded its argument that this term failed because it was indefinite
`
`as to structure. The dispute between the parties then consisted of whether the structure should
`
`be generally referred to as “hardware” or a “microprocessor assembly.” While the dispute would
`
`appear to have little practical importance, the Court agrees with the Google/Samsung court and
`
`adopts the use of “microprocessor assembly.”
`
`Accordingly, the Court adopts HTC’s proposed construction of “blocking means for
`
`preventing a normal operation of the mobile radiotelephony device” as a means-plus-function
`
`claim setting forth a function of “preventing a normal operation of the mobile radiotelephony
`
`device” and a structure consisting of “the microprocessor assembly programmed to (i) disconnect
`
`from the network if an identification module that is not linked to the device is placed inside the
`
`device (3:14–20); (ii) prevent all outgoing calls, except possibly emergency calls, if the device
`
`has remained in a state of availability longer than a predetermined threshold of time (3:33–46);
`
`and (iii) prevent all calls if an incorrect deblocking code is entered above a threshold amount
`
`(3:52–60).”
`
`ORDER – 9
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`
`
`
`
`
`
`
`Term 3. “timing means for activating the blocking means in response to the mobile
`radiotelephony device being inactive during the normal operation of the mobile
`radiotelephony device for a defined period of time subsequent to a mounting of a
`linked user identification module inside the mobile radiotelephony device” –
`(Claim 1)
`
`Uniloc’s Construction
`Function: “activating the blocking means in
`response to the mobile radiotelephony
`device being inactive during the normal
`operation of the mobile radiotelephony
`device for a predefined period of time
`subsequent to the mounting of a linked user
`identification module inside the mobile
`radiotelephony device”
`
`Structure: “the hardware programmed to
`determine whether the device has remained
`in the state of availability for a designated
`period of time, and if so, to block the device
`and require a deblocking code to restore
`normal functioning (col. 3:31-43)”
`
`HTC’s Construction
`Function: “activating the blocking means in
`response to the mobile radiotelephony
`device being inactive during the normal
`operation of the mobile radiotelephony
`device for a defined period of time
`subsequent to a mounting of a linked user
`identification module inside the mobile
`radiotelephony device”
`
`Structure: No corresponding structure for
`performing the recited function is disclosed
`in the specification of the ’654 Patent. This
`term is therefore indefinite.
`
`Court’s Construction
`Function: “activating the blocking means in response to the mobile radiotelephony device
`being inactive during the normal operation of the mobile radiotelephony device for a
`predefined period of time subsequent to the mounting of a linked user identification module
`inside the mobile radiotelephony device”
`
`Structure: “the microprocessor assembly programmed to determine whether the device has
`remained in the state of availability for a designated period of time, and if so, to block the
`device and require a deblocking code to restore normal functioning (3:31–43)”
`
`
`Again, the parties agree as to the function set forth in this means-plus-function claim.
`
`The parties further agree on the relevant portion of the specifications:
`
`If the identification module that is placed inside the device is linked to the device
`(arrow Y4), one looks whether the device has remained in the state of availability
`for a certain period of time T of the order of several minutes, for example (box
`K10). If this is not the case (arrow N10), the device remains in the state of
`availability indicated in box K1. If this is the case (arrow Y10), the device passes
`on to a second blocking state indicated in box K11 by passing through an
`initialization step K12 which permits to initialize a variable A which represents
`the number of attempts made at supplying a deblocking code (for example, the
`Personal Identification Number) PIN.
`
`ORDER – 10
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`
`
`‘654 Patent at 3:32–43. However, HTC maintains that this fails to disclose sufficient structure,
`
`clearly linked to the function, and that the term is therefore indefinite. See Noah Sys., 675 F.3d
`
`at 1311 (“corresponding structure” must be clearly linked to, or associated with, the function)
`
`(citation omitted).
`
`
`
`HTC argues that the any structure provided in the specifications cannot be clearly linked
`
`to the agreed function because there is a clear disconnect between the two. See Dkt. #47 at 11.
`
`Specifically, HTC points out that the function relies on the device being “inactive” while the
`
`specification only references the device remaining in a “state of availability for a certain period
`
`of time.” HTC argues that no structure is identified for monitoring inactivity and that the term is
`
`therefore indefinite. Id.
`
`
`
`The argument has some appeal as cited specification leaves some uncertainty as to the
`
`algorithm’s specific operation and could be considered a “black box” that merely performs a
`
`recited function. See Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1338 (Fed. Cir. 2014)
`
`(“Simply disclosing a black box that performs the recited function is not a sufficient explanation
`
`of the algorithm required to render the means-plus-function term definite.”) (citations omitted).
`
`The structure is simplistic: “one looks whether the device has remained in the state of availability
`
`for a certain period of time T of the order of several minutes.”7 ‘654 Patent at 3:33–36. Uniloc
`
`maintains that the structure is a simple timer. See Dkt. #46 at 10 (“the structure is the hardware
`
`(or device itself) programmed to determine if a set amount of time has expired”). The
`
`specification, or the associated figures, certainly could provide additional detail for the
`
`structure—disclosing whether a specific event triggers the timer or whether the structure
`
`7 ‘654 Patent at 3:33–36.
`
`
`
`ORDER – 11
`
`

`

`periodically “checks” to determine whether the device is inactive. But this lack of specificity
`
`does not make the term indefinite.
`
`Structure may be expressed “in any understandable terms, including as a mathematical
`
`formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”
`
`Noah Sys., 675 F.3d at 1312 (quoting Finisar Corp., 523 F.3d at 1340). Further, the
`
`“[i]dentification of corresponding structure may embrace more than the preferred embodiment.”
`
`Micro Chemical, Inc. v. Great Plains Chemical Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
`
`What is important is that the claims set forth sufficient structure to “render the bounds of the claim
`
`understandable to one of ordinary skill in the art.” AllVoice Comp. PLC, v. Nuance Commc’ns, Inc.,
`
`504 F.3d 1236, 1245 (Fed. Cir. 2007)). Such is the case here as the Court concludes that one skilled
`
`in the art would have little trouble in understanding the structure set forth—a timer monitoring
`
`activity/inactivity—though several equivalents may be possible to accomplish that function.
`
`Accordingly, the Court constructs “timing means for activating the blocking means in
`
`response to the mobile radiotelephony device being inactive during the normal operation of the
`
`mobile radiotelephony device for a defined period of time subsequent to a mounting of a linked
`
`user identification module inside the mobile radiotelephony device” as a means-plus-function
`
`claim setting forth a function of “activating the blocking means in response to the mobile
`
`radiotelephony device being inactive during the normal operation of the mobile radiotelephony
`
`device for a predefined period of time subsequent to the mounting of a linked user identification
`
`module inside the mobile radiotelephony device” and a structure consisting of “the
`
`microprocessor assembly programmed to determine whether the device has remained in the state
`
`of availability for a designated period of time, and if so, to block the device and require a
`
`deblocking code to restore normal functioning (3:31-43).”
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`ORDER – 12
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`Term 4. “deblocking means for permitting the normal operation of the mobile
`radiotelephony device” – (Claim 1)
`
`Uniloc’s Construction
`Function: “permitting the normal operation
`of the mobile radiotelephony device”
`
`Structure: “the hardware programmed to
`invite the user to supply a deblocking code
`and allow the device to return to the first or
`second blocking states (col. 3:17-27, 3:48–
`52)”
`
`HTC’s Construction
`Function: “permitting the normal operation
`of the mobile radiotelephony device in
`response to a supply of a deblocking code to
`the mobile radiotelephony device
`subsequent to the mounting of the linked
`user identification module inside the mobile
`radiotelephony device and subsequent to the
`defined period of time”
`
`Structure: “a microprocessor assembly
`programmed to execute the algorithms set
`forth in the ’654 patent at col. 3:44–58, and
`equivalents thereof”
`
`Court’s Construction
`Function: “permitting the normal operation of the mobile radiotelephony device in response
`to a supply of a deblocking code to the mobile radiotelephony device”
`
`Structure: “the microprocessor assembly programmed to allow the user to supply a
`deblocking code and, upon entry of the correct deblocking code, to return the device to
`normal operation (3:48–61)”
`
`HTC has conceded that the structure is not indefinite. As a result, the Court constructs
`
`the term consistently with the parties’ proposals and in the language most understandable for the
`
`trier of fact. Accordingly, the Court constructs “deblocking means for permitting the normal
`
`operation of the mobile radiotelephony device” as a means-plus-function claim setting forth a
`
`function of “permitting the normal operation of the mobile radiotelephony device in response to
`
`a supply of a deblocking code to the mobile radiotelephony device” and a structure consisting of
`
`“the microprocessor assembly programmed to allow the user to supply a deblocking code and,
`
`upon entry of the correct deblocking code, to return the device to normal operation (3:48–61).”
`
`//
`
`//
`
`//
`
`ORDER – 13
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`
`
`
`
`
`
`
`Term 5. “connecting means for establishing a link between the mobile radiotelephony
`device and the linked user identification module” – (Claim 5)
`
`HTC’s Construction
`Agrees to Uniloc’s proposed construction.
`
`
`Uniloc’s Construction
`Function: “establishing a link between the
`mobile radiotelephony device and the linked
`user identification module”
`
`Structure: “the hardware involved in the
`reading of data from the identification
`module, and storage of such data in the
`memory of the radiotelephony device”
`
`Court’s Construction
`Function: “establishing a link between the mobile radiotelephony device and the linked user
`identification module”
`
`Structure: “the microprocessor assembly involved in reading of data from the identification
`module, and storage of such data in the memory of the radiotelephony device”
`
`HTC has agreed to Uniloc’s proposed construction of Term 5. Likewise, the Court finds
`
`Uniloc’s proposed construction appropriate with the exception that the Court alters “the hardware
`
`involved” to the “microprocessor assembly involved” so as to maintain consistency with the
`
`construction of the other terms before the Court. Accordingly, the Court constructs “connecting
`
`means for establishing a link between the mobile radiotelephony device and the linked user
`
`identification module” as a means-plus-function claim setting forth a function of “establishing a
`
`link between the mobile radiotelephony device and the linked user identification module” and a
`
`structure consisting of “the microprocessor assembly involved in reading of data from the
`
`identification module, and storage of such data in the memory of the radiotelephony device.”
`
`Term 10. “locking means for facilitating an activation of the block means by the timing
`means” – (Claim 4)
`
`Uniloc’s Construction
`Plain and ordinary meaning.
`
`ORDER – 14
`
`HTC’s Construction
`Function: “facilitating an activation of the
`block means by the timing means”
`
`Structure: No corresponding structure for
`performing the recited function is disclosed
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`
`
`
`
`
`in the specification of the ’654 Patent. This
`term is therefore indefinite.
`
`
`The parties agree that construction of Term 10 is no longer necessary. See Dkt. #46 at 19
`
`(Uniloc noting that if prior “constructions [of Term 10] remain, there is no claim to assert” and
`
`that “[i]f those constructions are overturned by the Federal Circuit, the appellate court’s
`
`construction will apply”). The Court agrees that no construction of Term 10 is necessary.
`
`D. Computer Readable Code Terms
`
`
`
`HTC originally maintained that the so called “computer readable code” terms (Terms 6–
`
`9) “should be interpreted as a computer-implemented means-plus-function term” and that each
`
`term is “indefinite because the specification fails to disclose and clearly link an algorithm to
`
`perform