Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 1 of 15 PageID #: 1895
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:19-cv-00025-JRG
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`Jury Trial Requested
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`PLAINTIFF REMBRANDT WIRELESS TECHNOLOGIES, LP’S
`OPENING CLAIM CONSTRUCTION BRIEF
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`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
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`Plaintiff,
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`APPLE INC.,
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`Defendant.
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`
`v.
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`
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 1 of 15
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`

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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 2 of 15 PageID #: 1896
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`TABLE OF CONTENTS
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`Introduction ............................................................................................................................. 1
`I.
`II. Legal Standards ....................................................................................................................... 1
`III.
`The Proper Construction of “Different Types” of Modulation Methods ............................. 4
`A. Overview of the Patented Technology ................................................................................. 4
`B. Different Types of Modulation Methods ............................................................................. 6
`1. Apple’s Construction Circumvents Prior District Court, Federal Circuit, and PTO
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`Decisions .......................................................................................................................... 7
`2. Prior Inter Partes Review Proceedings .......................................................................... 10
`IV. Conclusion ......................................................................................................................... 10
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`ii
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 2 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 3 of 15 PageID #: 1897
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`TABLE OF AUTHORITIES
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`Cases
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ................................................................................................... 2
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`
`Kara Tech., Inc. v. Stamps.com, Inc.,
`582 F.3d 1341 (Fed. Cir. 2009) ................................................................................................... 2
`
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ..................................................................................................... 3
`
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) ....................................................................................................... 3
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................................... 1, 2, 3
`
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co.,
`853 F.3d 1370 (Fed. Cir. 2017) .......................................................................................... passim
`
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) (citations omitted) .................................................................... 2
`
`
`Verizon Services Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ................................................................................................... 3
`
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................................. 2, 3, 6
`
`
`
`iii
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 3 of 15
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`

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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 4 of 15 PageID #: 1898
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`I.
`
`INTRODUCTION
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`The Rembrandt patents (U.S. Patent Nos. 8,023,580 (Ex. 1) and 8,457,228 (Ex. 2)) cover
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`a device that communicates using different types of modulation methods. Apple infringes the
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`patents because its products practice the Bluetooth “Enhanced Data Rate” (EDR) standard, which
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`requires multiple modulation methods. Rembrandt previously asserted the same patents against
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`Samsung and BlackBerry for infringing the same Bluetooth EDR standard before this same Court
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`(2:13-CV-213-JRG-RSP, the “Samsung litigation”). The jury in the Samsung litigation found
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`infringement and validity, and the Federal Circuit affirmed. See Rembrandt Wireless Techs., LP v.
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`Samsung Elecs. Co., 853 F.3d 1370 (Fed. Cir. 2017).
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`There is only one disputed term presented in this case—modulation methods “of a different
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`type.” Rembrandt proposes the same construction adopted by this Court in the Samsung litigation
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`that was affirmed by the Federal Circuit (i.e., “different families of modulation techniques, such
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`as the FSK family of modulation methods and the QAM family of modulation methods”). This
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`construction is a direct quote from the patentee during prosecution. Apple seeks to tack on
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`additional language to the end of Rembrandt’s construction—“wherein different families may
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`have overlapping characteristics.” Apple’s additional language is a significant departure from the
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`prior construction, and it is motivated by an invalidity argument this Court and the Federal Circuit
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`rejected in the Samsung litigation. It also seeks to resolve a fact question reserved for the jury.
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`II.
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`LEGAL STANDARDS
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`Patents are written for persons skilled in the field of the invention. Phillips v. AWH Corp.,
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`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). For that reason, disputed claim terms are
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`interpreted as understood by a skilled artisan at the time of the invention. Innova/Pure Water, Inc.
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`
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`1
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 4 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 5 of 15 PageID #: 1899
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`v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). In determining a term’s
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`proper meaning, “[a] court looks to ‘those sources available to the public that show what a person
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`of skill in the art would have understood disputed claim language to mean,’” including “‘the words
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`of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic
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`evidence concerning relevant scientific principles, the meaning of technical terms, and the state of
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`the art.’” Phillips, 415 F.3d at 1314 (quoting Innova, 381 F.3d at 1116).
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`Although the specification, prosecution history, and extrinsic evidence are available as
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`tools for construing disputed claim terms, “the claim construction inquiry . . . begins and ends in
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`all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158
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`F.3d 1243, 1248 (Fed. Cir. 1998) (citations omitted). The specification may inform the meaning
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`of claim terms, but it does not change those meanings unless the patentee has chosen to be his own
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`lexicographer by clearly setting out his intended meaning either expressly or by implication. See
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`Phillips, 415 F.3d at 1321; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
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`1996). Additionally, claims should not be interpreted by importing limitations from the
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`specification into the claims. See Kara Tech., Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed.
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`Cir. 2009).
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`Following from the above guidelines, several canons of construction emerge from the
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`Federal Circuit’s decisions. First, the “claims, not specification embodiments, define the scope of
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`patent protection.” Kara Tech, 582 F.3d at 1348. Similarly, claims are not limited to the preferred
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`embodiment. See id. (“The patentee is entitled to the full scope of his claims, and we will not limit
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`him to his preferred embodiment . . .”); Phillips, 415 F.3d at 1323 (“[A]lthough the specification
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`often describes very specific embodiments of the invention, we have repeatedly warned against
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`confining the claims to those embodiments.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`2
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 5 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 6 of 15 PageID #: 1900
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`898, 906 (Fed. Cir. 2004). Next, patent claims are rarely interpreted in a manner that would exclude
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`the examples disclosed in the specification. See Verizon Services Corp. v. Vonage Holdings Corp.,
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`503 F.3d 1295, 1305 (Fed. Cir. 2007) (“We normally do not interpret claim terms in a way that
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`excludes disclosed examples in the specification.”); Vitronics, 90 F.3d at 1583 (explaining that a
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`construction that excludes the preferred embodiment “is rarely, if ever, correct and would require
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`highly persuasive evidentiary support . . .”). Finally, a patentee’s use of “i.e.” during prosecution
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`is often definitional. Rembrandt, 853 F.3d at 1376.
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`In addition to “intrinsic” evidence, the Federal Circuit has permitted the use of “extrinsic
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`evidence” in certain contexts in the claim construction process to educate the court about the field
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`of the invention and the viewpoint of a person of ordinary skill in that field. Extrinsic evidence
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`“consists of all evidence external to the patent and prosecution history, including expert and
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`inventor testimony, dictionaries, and learned treatises.” Markman v. Westview Instruments, Inc.,
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`52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). While acknowledging the value of
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`extrinsic evidence in some cases, the Federal Circuit has also warned against giving it too much
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`weight. The use of extrinsic evidence must be tempered against the context provided by the
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`intrinsic record. See Phillips, 415 F.3d at 1318.
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`3
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 6 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 7 of 15 PageID #: 1901
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 7 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 8 of 15 PageID #: 1902
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`The Rembrandt Patents disclose a system in which devices can communicate over a
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`network using multiple modulation methods, permitting selection of the modulation method best
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`suited for a particular application. Ex. 1 (’580 Patent) at 1:66-2:33. Annotated Figure 4 shows an
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`embodiment of the patented technology where some network devices communicate using one
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`modulation method (e.g., amplitude modulation used by AM radio), while other network devices
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`communicate using a different type of modulation method (e.g., the frequency modulation used by
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`FM radio):
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`Id. at 5:47-56. This system provides for greater efficiency, seamless communication with all
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`devices, backward-compatibility, and decreased costs. Id. at 2:50-57; see also 1:66-2:15.
`5
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 8 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 9 of 15 PageID #: 1903
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`B.
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`Different Types of Modulation Methods
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`Rembrandt’s proposed construction originates from the prosecution history. During
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`prosecution of the ’580 Patent, the patentee amended the claims to add the “different types”
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`limitation to distinguish the Siwiak reference.
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`As originally filed, claim 1 required only that the modulation methods be “different”:
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`“wherein the second method is different than the first modulation method.” Ex. 6 (’580 FH) at -
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`0022. The examiner rejected several claims in view of the Siwiak reference, which disclosed two
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`“different” modulation methods of the same frequency “type”: (1) “FM” (or frequency
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`modulation); and (2) “OFDM” (or orthogonal frequency-division multiplexing). Id. at -0072; Ex.
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`7 (Siwiak) at 2:30-37. Thus, both of Siwiak’s modulation methods had overlapping frequency
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`characteristics. Id. To overcome the rejection, the patentee amended the limitation to require
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`“wherein the second modulation method is of a different type than the first modulation method.”
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`Ex. 6 (’580 FH) at -3523 (underlining indicates additions). In comments submitted with the
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`amendment, the patentee explained “[t]he language of independent claim 1 has been clarified to
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`refer to two types of modulation methods, i.e., different families of modulation techniques, such
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`as the FSK family of modulation methods and the QAM family of modulation methods.” Id. at -
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`3536 (emphasis in original). The Federal Circuit called this “the clearest statement in the intrinsic
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`record regarding the meaning of the ‘different types’ limitation.” Rembrandt, 853 F.3d at 1376
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`(emphasis added).
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`A patentee may choose to be his own lexicographer “as long as the special definition of the
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`term is clearly stated in the patent specification or file history.” Vitronics, 90 F.3d at 1582. The
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`patentee’s statement during prosecution meets this requirement. The patentee identified the
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`specific limitation (“the language of independent claim 1 has been clarified to refer to two types
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`6
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 9 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 10 of 15 PageID #: 1904
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`of modulation methods”) and then provided a specific definition of the term (“i.e., different
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`families of modulation techniques, such as the FSK family of modulation methods and the QAM
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`family of modulation methods”). The patentee made the statement in conjunction with a claim
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`amendment, which “strongly supports the conclusion that Rembrandt used ‘i.e.’ to define the
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`‘different types’ limitation . . . .” Rembrandt, 853 F.3d at 1376; see Ex. 5 (Samsung Claim
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`Construction Order) at 28 (“On balance, the patentee’s lexicography should be given effect in the
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`Court’s construction.”).
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`In the Samsung litigation, this Court treated the patentee’s statement as an explicit
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`definition, construing “different types” as “different families of modulation techniques, such as
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`the FSK family of modulation methods and the QAM family of modulation methods.” Ex. 5
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`(Samsung Claim Construction Order) at 29; Ex. 8 (Samsung JMOL Order) at 7-8. The Federal
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`Circuit explicitly affirmed that construction. Rembrandt, 853 F.3d at 1377. The Court should adopt
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`the same construction here.
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`1. Apple’s Construction Circumvents Prior District Court, Federal Circuit, and
`PTO Decisions
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`Rembrandt’s proposed construction refers to two specific families of modulation, the FSK
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`[frequency shift keying] family and the QAM [quadrature amplitude modulation] family. FSK
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`involves shifting the frequency of a transmitted signal. QAM involves shifting the amplitude and
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`phase of a transmitted signal. Because FSK involves frequency shifting and QAM involves
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`amplitude and phase shifting, there are no overlapping characteristics between FSK and QAM.
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`Compare Ex. 9 (2/10/15 A.M. TT) at 18:13-24 (“There are no overlapping characteristics between
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`these two modulation types. So they’re in different families and thus different types of
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`modulation.” (testimony of Dr. Morrow, Rembrandt’s expert)). Apple’s proposed construction
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`7
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 10 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 11 of 15 PageID #: 1905
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`adds a new limitation expressly permitting modulation families with overlapping characteristics to
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`be “different types.”
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`Apple seeks reframe a factual dispute Samsung previously lost as a claim construction
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`dispute to circumvent the jury’s role as factfinder. The Samsung court specifically rejected the
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`argument that “overlapping characteristics” was an issue of claim construction, holding instead
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`that the issue was properly resolved by the jury. Ex. 8 (Samsung JMOL Order) at 8. During the
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`Samsung litigation, the main prior art reference at trial was the Boer patent. See Ex. 10 (Boer).
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`Rembrandt argued Boer did not disclose “different types” of modulation methods because each
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`modulation method varied the phase of the signal. Ex. 8 (Samsung JMOL Order) at 6. This meant
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`there were overlapping characteristics (phase modulation) between each modulation method, so
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`they were not “different types.” See id. The jury sided with Rembrandt on this fact issue, and the
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`district court denied Samsung’s motion for JMOL. Id. at 7-8 (“The Magistrate Judge issued a
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`substantial and carefully reasoned Claim Construction Memorandum Order after carefully
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`considering the Parties’ arguments, the patent, and the proper intrinsic and extrinsic evidence.
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`Now, after trial has completed and a verdict had been returned, Samsung seeks to reopen the claim
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`construction issues previously addressed. These issues have already received full and fair
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`treatment.” (internal citations omitted)).
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`Samsung reargued its “overlapping characteristics” position at the Federal Circuit, arguing
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`different types of modulation methods can have overlapping characteristics. The Federal Circuit
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`rejected this argument and held that whether modulation methods can have overlapping
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`characteristics and be in different families was a fact question for the jury:
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`Samsung urges that modulation methods can have some overlapping characteristics
`and still be in different families, as required by the court’s construction. Samsung
`couches this argument as a claim construction issue. We disagree. As the district
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`8
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 11 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 12 of 15 PageID #: 1906
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`court correctly noted, any dispute regarding whether particular modulation
`techniques are in different families is a factual one.
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`Rembrandt, 853 F.3d at 1378-79. Samsung petitioned for en banc review, but the petition was
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`denied. Ex. 11.
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`Apple seeks its construction so it can argue Boer and other references disclose “different
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`types” of modulation methods as a matter of law. But both the District Court (Ex. 8 (Samsung
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`JMOL Order) at 7-8) and the Federal Circuit held that whether modulation methods with
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`overlapping characteristics are in different families is a fact question for the jury. See Rembrandt,
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`853 F.3d at 1379 (“Contrary to the way Samsung has cast the issue, whether Boer meets the
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`‘different types’ limitation under the court’s construction is a factual question.”); id. (“Taken with
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`Dr. Morrow’s testimony, the fact that Boer’s DBPSK and PPM/DQPSK modulation methods both
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`alter phase is substantial evidence to support the jury’s presumed fact finding that Boer did not
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`teach the ‘different types’ limitation.”). If Apple’s proposed construction is adopted, it will remove
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`a fact question from the jury—a fact question Samsung lost at the District Court and Federal
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`Circuit—and insert it into the claim construction as a matter of law. This would preclude the jury
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`here from making the same fact finding as the jury in the Samsung litigation.
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`Apple’s proposed construction is also inconsistent with the PTO’s decision in an ex parte
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`reexamination Samsung filed on the ’228 Patent. Rembrandt argued to the PTO that Boer did not
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`disclose “different types” of modulation methods because all of Boer’s modulation methods are in
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`the phase family (and therefore have overlapping characteristics). Ex. 12 (8/14/17 Office Action
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`Response) at 145-46. After applying the same construction as Rembrandt, the District Court, and
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`the Federal Circuit, the PTO accepted Rembrandt’s argument, finding that “the prior art on the
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`record does not teach the first and second modulation methods being of ‘different types of
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`9
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 12 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 13 of 15 PageID #: 1907
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`modulation methods.’” Ex. 13 (Notice of Intent to Issue Reexam Certificate) at 2. Apple’s
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`construction would undo the PTO’s determination with respect to Boer.
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`2. Prior Inter Partes Review Proceedings
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`Apple may cite IPR proceedings related to the Samsung litigation in support of its proposed
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`construction. Those proceedings were conducted under the broadest reasonable interpretation
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`standard, rather than the Phillips standard, and do not bind the Court. See Rembrandt, 853 F.3d at
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`1377 (“Samsung also mentions that in related IPR proceedings, the Patent Trial and Appeal Board
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`adopted the broader construction Samsung argues for here. As Samsung admits, however, this
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`construction does not bind our court. And the Board in IPR proceedings operates under a broader
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`claim construction standard that the federal courts.”).
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`IV. CONCLUSION
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`For the reasons set forth above, the Court should adopt Rembrandt’s proposed construction
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`of “different types of modulation methods.”
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`10
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 13 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 14 of 15 PageID #: 1908
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`Date: October 21, 2019
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`Respectfully submitted,
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`/s/ Blaine Larson
`Michael F. Heim (Texas Bar No. 09380923)
`mheim@hpcllp.com
`Eric Enger (Texas Bar No. 24045833)
`eenger@hpcllp.com
`Christopher First (Texas Bar No. 24095112)
`cfirst@hpcllp.com
`Blaine Larson (Texas Bar No. 24083360)
`blarson@hpcllp.com
`HEIM, PAYNE & CHORUSH, LLP
`1111 Bagby St., Suite 2100
`Houston, Texas 77002
`Telephone: (713) 221-2000
`Facsimile: (713) 221-2021
`
`Demetrios Anaipakos (Texas Bar No. 00793258)
`danaipakos@azalaw.com
`Amir Alavi (Texas Bar No. 00793239)
`aalavi@azalaw.com
`Alisa Lipski (Texas Bar No. 24041345)
`alipski@azalaw.com
`Kyril Talanov (Texas Bar No. 24075139)
`ktalanov@azalaw.com
`AHMAD, ZAVITSANOS, ANAIPAKOS,
`ALAVI & MENSING, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`Telephone: 713-655-1101
`Facsimile: 713-655-0062
`
`T. John Ward, Jr.
`Texas Bar No. 00794818
`jw@wsfirm.com
`WARD & SMITH LAW FIRM
`1127 Judson Road, Suite 220
`Longview, TX 75601
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`
`ATTORNEYS FOR REMBRANDT WIRELESS
`TECHNOLOGIES LP
`
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`11
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 14 of 15
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`Case 2:19-cv-00025-JRG Document 73 Filed 10/21/19 Page 15 of 15 PageID #: 1909
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record are being served with a copy
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`of this document by CM/ECF on October 21, 2019.
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`/s/ Blaine Larson
`Blaine Larson
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`12
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`Rembrandt Wireless
`Ex. 2027
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 15 of 15
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