Case 2:19-cv-00025-JRG Document 111 Filed 01/15/20 Page 1 of 19 PageID #: 4036
`
`
`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`v.
`
`APPLE INC.
`
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
` CASE NO. 2:19-CV-25-JRG
`
`
`
`§
`§
`§
`§
`§
`§
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`
`
`
`Before the Court is the Opening Claim Construction Brief (Dkt. No. 73) filed by Plaintiff
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`Rembrandt Wireless Technologies, LP (“Plaintiff” or “Rembrandt”). Also before the Court are
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`the Responsive Claim Construction Brief (Dkt. No. 79) filed by Defendant Apple Inc.
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`(“Defendant” or “Apple”) as well as Plaintiff’s reply (Dkt. No. 81).
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`
`
`The Court held a hearing on December 2, 2019.
`
`I. BACKGROUND
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`
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`Plaintiff alleges infringement of United States Patents No. (“the ’580 Patent”) and
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`8,457,228 (“the ’228 Patent”) (collectively, “the patents-in-suit”). (Dkt. No. 73, Exs. 1–2).
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`
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`The patents-in-suit are both titled “System and Method of Communication Using At
`
`Least Two Modulation Methods.” The ’580 Patent issued on September 20, 2011, and bears a
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`filing date of August 19, 2009. The ’228 Patent issued on June 4, 2013, and bears a filing date of
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`August 4, 2011. The ’228 Patent is a continuation of the ’580 Patent. Both patents-in-suit bear
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`an earliest priority date of December 5, 1997.
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`
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`Plaintiff submits that the patents-in-suit “cover a device that communicates using
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`different types of modulation methods” and relate to the well-known “Bluetooth” wireless
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`communication standards. See Dkt. No. 73 at 1. The Abstract of the ’580 Patent is
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`representative and states:
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`A device may be capable of communicating using at least two type types [sic] of
`modulation methods. The device may include a transceiver capable of acting as a
`master according to a master/slave relationship in which communication from a
`slave to a master occurs in response to communication from the master to the
`slave. The master transceiver may send transmissions discrete transmissions [sic]
`structured with a first portion and a payload portion. Information in the first
`portion may be modulated according to a first modulation method and indicate an
`impending change to a second modulation method, which is used for transmitting
`the payload portion. The discrete transmissions may be addressed for an intended
`destination of the payload portion.
`
`The Court previously construed terms in the patents-in-suit in Rembrandt Wireless
`
`
`
`Technologies, LP v. Samsung Electronics Co., Ltd., et al., No. 2:13-CV-213, Dkt. No. 114, 2014
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`WL 3385125 (E.D. Tex. July 10, 2014) (“Samsung”). A jury in Samsung found infringement
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`and no invalidity. The Court denied a motion for judgment as a matter of law as to obviousness.
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`No. 2:13-CV-213, Dkt. No. 352, at 5–7 (E.D. Tex. Feb. 17, 2016) (“Samsung JMOL”). The
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`Court “decline[d] to grant new trial on . . . re-urged issues of claim construction.” Id. at 8. The
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`Federal Circuit affirmed as to claim construction and obviousness and remanded as to issues
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`related to damages. See Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370
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`(Fed. Cir. 2017).
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`II. LEGAL PRINCIPLES
`
`
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right
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`which the patent confers on the patentee to exclude others from making, using or selling the
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`protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
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`Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
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`Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`
`(1996).
`
`
`
`“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
`
`
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`science or the meaning of a term in the relevant art during the relevant time period.” Teva
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`Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where
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`those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about
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`that extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
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`discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on
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`appeal.” Id. (citing 517 U.S. 370).
`
`
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of
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`dictionary, which explains the invention and may define terms used in the claims. Id. “One
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`purpose for examining the specification is to determine if the patentee has limited the scope of
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`the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
`
`lexicographer, but any special definition given to a word must be clearly set forth in the
`
`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
`
`Although the specification may indicate that certain embodiments are preferred, particular
`
`embodiments appearing in the specification will not be read into the claims when the claim
`
`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
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`3
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`
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari
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`Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used
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`in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
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`customary meaning of a claim term “is the meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
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`of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
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`recognition that inventors are usually persons who are skilled in the field of the invention and
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`that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
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`
`
`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
`
`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
`
`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
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`being the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated
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`long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
`
`portions of the specification to aid in solving the doubt or in ascertaining the true intent and
`
`meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
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`addressing the role of the specification, the Phillips court quoted with approval its earlier
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`observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
`
`1998):
`
`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
`
`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
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`specification plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the
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`applicant,” it may lack the clarity of the specification and thus be less useful in claim
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`construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
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`relevant to the determination of how the inventor understood the invention and whether the
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`inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
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`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
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`“a patentee’s statements during prosecution, whether relied on by the examiner or not, are
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`relevant to claim interpretation”).
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`
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`5
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The
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`court did not impose any particular sequence of steps for a court to follow when it considers
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`disputed claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the
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`appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
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`bearing in mind the general rule that the claims measure the scope of the patent grant.
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`
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`In general, prior claim construction proceedings involving the same patents-in-suit are
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`“entitled to reasoned deference under the broad principals of stare decisis and the goals
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`articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
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`per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
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`at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Intuit Inc., No. 2:12-
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`CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
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`constructions in cases involving the same patent are entitled to substantial weight, and the Court
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`has determined that it will not depart from those constructions absent a strong reason for doing
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`so.”); see also Teva, 135 S. Ct. at 839–40 (“prior cases will sometimes be binding because of
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`issue preclusion and sometimes will serve as persuasive authority”) (citation omitted); Finisar
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`Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the importance of
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`uniformity in the treatment of a given patent”) (quoting Markman v. Westview Instruments, Inc.,
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`517 U.S. 370, 390 (1996)).
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`III. AGREED TERMS
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`
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`In their September 9, 2019 P.R. 4-3 Joint Claim Construction Statement, the parties
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`submitted: “The Parties have not agreed on any constructions. However, the Parties agree that
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`the terms that are not proposed for construction . . . do not require construction.” (Dkt. No. 70,
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`at 2.)
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`IV. DISPUTED TERM
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`A. “modulation method [] of a different type” and “different types of modulation
`methods”
`
`
`“modulation method [] of a different type”
`(’580 Patent, Claims 1, 58)
`
`“different types of modulation methods”
`(’228 Patent, Claim 1)
`
`
`Plaintiff’s Proposed Construction
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`Defendant’s Proposed Construction
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`“different families of modulation techniques,
`such as the FSK family of modulation methods
`and the QAM family of modulation methods”
`
`“different families of modulation techniques,
`such as the FSK family of modulation methods
`and the QAM family of modulation methods,
`wherein
`different
`families may
`have
`overlapping characteristics”
`
`
`
`(Dkt. No. 70, Ex. A, at 5; Dkt. No. 88, Ex. A, at 4–9.)
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`
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`“The parties agree that the disputed claim term ‘different type’ should be interpreted the
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`same in both the ’580 patent and the ’228 patent.” (Dkt. No. 79, at 5 n.2.)
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`
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`
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`(1) The Parties’ Positions
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`Plaintiff argues that “Rembrandt proposes the same construction adopted by this Court in
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`the Samsung litigation that was affirmed by the Federal Circuit,” and “[t]his construction is a
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`direct quote from the patentee during prosecution.” (Dkt. No. 73, at 1.) Plaintiff also argues that
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`“Apple’s additional language is a significant departure from the prior construction, and it is
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`motivated by an invalidity argument this Court and the Federal Circuit rejected in the Samsung
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`litigation.” (Id.)
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`
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`Defendant responds that the prior construction “should be supplemented to address a
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`dispute between the parties here about claim scope that was neither raised nor resolved during
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`claim construction in the Samsung litigation.” (Dkt. No. 79, at 1.) Defendant argues:
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`“Rembrandt restricts the scope of this claim language to exclude modulation methods with any
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`overlapping characteristic, even if those methods also use non-overlapping characteristics.
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`Apple’s view, however, is that such modulation methods can still be of ‘different types.’” (Id.)
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`Defendant urges that “[t]he intrinsic evidence—including the claim language, the specifications,
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`the original prosecution, and the IPR [(inter partes review)] proceedings—all show that
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`‘different types’ of modulation may have overlapping characteristics.” (Id., at 5.)
`
`
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`Plaintiff replies that the Federal Circuit expressly agreed with the Court’s finding in
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`Samsung that “any dispute regarding whether particular modulation techniques are in different
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`families is a factual one.” (Dkt. No. 81, at 1 (quoting Rembrandt, 853 F.3d at 1378–79).)
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`Plaintiff also argues that Defendant’s claim differentiation argument “treads well-worn ground,”
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`and “Rembrandt has not excluded any specification embodiments.” (Dkt. No. 81, at 3, 6.)
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`Further, Plaintiff argues that the prosecution history does not support Defendant’s position
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`because Plaintiff relies on an express definition and does not assert any disclaimer. (Id., at 7–8.)
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`Finally, Plaintiff cites PTO reexamination proceedings and submits that “[t]he fact that the Patent
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`Office agrees with Rembrandt’s construction is highly persuasive.” (Id., at 9.)
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`
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`At the December 2, 2019 hearing, Plaintiff submitted that the Federal Circuit affirmed
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`that whether modulation types are “different” is a factual issue. Plaintiff emphasized that the
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`affirmed construction does not preclude Defendant from cross-examining Plaintiff’s expert at
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`trial and presenting contrary opinions and arguments. Defendant responded that the issue of
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`overlapping characteristics was not raised in the Samsung claim construction proceedings.
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`Defendant argued that Plaintiff improperly attempts to narrow the scope of the claims by carving
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`out overlapping characteristics. Defendant also argued that because obviousness involves factual
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`issues regardless of how the Court construes the claims, the Federal Circuit’s analysis regarding
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`obviousness does not preclude this Court from resolving the present claim construction dispute.
`
`(2) Analysis
`
`Claim 1 of the ’580 Patent is representative and recites (emphasis added):
`
`1. A communication device capable of communicating according to a
`master/slave relationship in which a slave communication from a slave to a master
`occurs in response to a master communication from the master to the slave, the
`device comprising:
`
`a transceiver, in the role of the master according to the master/slave
`relationship, for sending at least transmissions modulated using at least two types
`of modulation methods, wherein the at least two types of modulation methods
`comprise a first modulation method and a second modulation method, wherein the
`second modulation method is of a different type than the first modulation method,
`wherein each transmission comprises a group of transmission sequences, wherein
`each group of transmission sequences is structured with at least a first portion and
`a payload portion wherein first information in the first portion indicates at least
`which of the first modulation method and the second modulation method is used
`for modulating second information in the payload portion, wherein at least one
`group of transmission sequences is addressed for an intended destination of the
`payload portion, and wherein for the at least one group of transmission sequences:
`
`the first information for said at least one group of transmission sequences
`comprises a first sequence, in the first portion and modulated according to the first
`modulation method, wherein the first sequence indicates an impending change
`from the first modulation method to the second modulation method, and
`
`the second information for said at least one group of transmission
`sequences comprises a second sequence that is modulated according to the second
`modulation method, wherein the second sequence is transmitted after the first
`sequence.
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`9
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`“‘Modulation’ . . . is defined as a process of varying some characteristic of a carrier
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`
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`signal.” Samsung at 21 (citing evidence).
`
`
`
`In Samsung, the parties disputed whether the “different type” limitations should be
`
`interpreted in accordance with a particular statement by the patentee during prosecution. See
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`Samsung at 26. During prosecution, the patentee amended claims so as to add the word “type.”
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`(See Dkt. No. 79, Ex. H, Sept. 1, 2010 Office Action; id., Ex. I, Mar. 1, 2011 Reply Pursuant to
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`37 CFR § 1.111 at 7–11 (RIP19060–64).) The patentee stated:
`
`Applicant thanks Examiner Ha for the indication that claims 1–18 and 37–57 are
`allowed (office action, p. 7). Applicant has further amended claims 1–2, 9–15,
`18, 37–38, and 45–46 with additional recitations to more precisely claim the
`subject matter. For example, the language of independent claim 1 has been
`clarified to refer to two types of modulation methods, i.e., different families of
`modulation techniques, such as the FSK [(frequency shift keying)] family of
`modulation methods and the QAM [(quadrature amplitude modulation)] family of
`modulation methods.
`
`Id. at 20 (RIP19073).
`
`
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`“[A] patentee may choose to be his own lexicographer and use terms in a manner other
`
`than their ordinary meaning, as long as the special definition of the term is clearly stated in the
`
`patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996); see Phillips, 415 F.3d at 1316.
`
`
`
`In Samsung, this Court found:
`
`On balance, the patentee’s lexicography should be given effect in the Court’s
`construction. See Vitronics, 90 F.3d at 1582; see also Abbott Labs. [v. Novo
`Pharm Ltd.], 323 F.3d [1324,] 1327, 1330 [(Fed. Cir. 2003)]; CCS Fitness[, Inc.
`v. Brunswick Corp.], 288 F.3d [1359,] 1366 [(Fed. Cir. 2002)]; Advanced Fiber
`Techs. [(AFT) Trust v. J & L Fiber Servs., Inc.], 674 F.3d [1365,] 1374 [(Fed. Cir.
`2012)]. As to Defendants’ concerns, any dispute regarding whether accused
`modulation techniques are from different “families” is a factual dispute regarding
`infringement rather than a legal dispute for claim construction. See PPG Indus. v.
`Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998) (noting that “the
`
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`task of determining whether the construed claim reads on the accused product is
`for the finder of fact”).
`
`Nonetheless, although Plaintiff proposes merely “different families of modulation
`techniques,” the patentee’s definition in the prosecution history includes
`examples, namely “the FSK family of modulation methods and the QAM family
`of modulation methods.” . . . 3/1/2011 Reply Pursuant to 37 CFR § 1.111 at 20
`. . . . These examples provide useful context for understanding the phrase
`“different families” and, having been provided as part of the patentee’s definition,
`should be included in the Court’s construction.
`
`The Court accordingly hereby construes “modulation method [] of a different
`type” and “different types of modulation methods” to mean “different families of
`modulation techniques, such as the FSK family of modulation methods and the
`QAM family of modulation methods.”
`
`Samsung at 28–29 (emphasis omitted; footnote omitted).
`
`
`
`The Court denied Samsung’s motion for judgment as a matter of law as to obviousness
`
`and Samsung’s motion for a new trial. See Samsung JMOL at 5–8.
`
`
`
`The Federal Circuit “agree[d] with the district court’s challenged claim construction,”
`
`finding:
`
`We review claim constructions based solely on the intrinsic record, as here,
`de novo.
`
`The district court arrived at its construction relying on the applicant’s
`characterization of the “different types” term in the prosecution history.
`
` *
`
` * *
`
`
`Samsung contends that the plain claim language requires only that the different
`types of modulation methods be “incompatible” with one another. According to
`Samsung, the claims cover devices that modulate signals using the same family of
`modulation methods (for example, FSK modulation), but operating with different
`amplitudes between modems. Samsung asserts that, because modulating using
`different amplitudes makes the devices incompatible, this arrangement embodies
`“different types” of modulation.
`
`We disagree with Samsung and adopt the construction entered by the district
`court. While the specification is the principal source of the meaning of a disputed
`term, the prosecution history may also be relevant. Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the clearest
`
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`statement in the intrinsic record regarding the meaning of the “different types”
`limitation is the descriptive statement the applicant made to the examiner when he
`inserted the limitation into the claims. Samsung’s arguments to the contrary do
`not diminish this unambiguous statement in the prosecution history.
`
` *
`
` * * The context here strongly supports the conclusion that Rembrandt used
`“i.e.” to define the “different types” limitation because Rembrandt used it to
`describe to the examiner a new limitation it had inserted to further limit its claims.
`
` *
`
` * *
`
`
`We therefore agree with the construction entered by the district court that the term
`“modulation method [ ] of a different type” means “different families of
`modulation techniques, such as the FSK family of modulation methods and the
`QAM family of modulation methods.”
`
`Rembrandt, 853 F.3d at 1375–77 (citations omitted). The Federal Circuit also was “not
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`convinced that there would necessarily be a conflict with claim 43 under the adopted
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`construction,” “[n]or do we find that the specification is at odds with the prosecution history
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`definition.” Id. at 1377; see Baran v. Med. Dev. Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir.
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`2010) (“It is not necessary that each claim read on every embodiment.”).
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`
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`The Federal Circuit further addressed claim construction when affirming this Court’s
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`denial of Samsung’s motion for judgment as a matter of law as to obviousness:
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`To allege obviousness, Samsung presented at trial a prior art combination
`consisting of U.S. Patent No. 5,706,428 (“Boer”) as the primary reference and an
`article by Bhargav P. Upender and Philip J. Koopman, Jr. (“Upender”) as a
`secondary reference. According to Samsung, the DBPSK and PPM/DQPSK
`modulation methods discussed in Boer are in “different families,” and are
`therefore different types of modulation methods under the district court’s
`construction. Samsung’s expert, Dr. Goodman, testified that, much like the QAM
`and PSK modulation methods that the district court specifically noted were in
`different families, Boer’s cited modulation methods alter different sets of
`characteristics: PPM/DQPSK alters phase and position, but DBPSK alters only
`phase.
`
`On the other hand, Rembrandt’s infringement expert, Dr. Morrow, testified that,
`in his experience, modulation methods are in different families if they have “no
`overlapping characteristics.” J.A. 1083, 18:13–24. Rembrandt therefore argued
`
`
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`Rembrandt Wireless
`Ex. 2009
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 12 of 19
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`Case 2:19-cv-00025-JRG Document 111 Filed 01/15/20 Page 13 of 19 PageID #: 4048
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`that PPM/DQPSK and DBPSK were not in different families because they both
`altered phase.
`
`The jury was, of course, free to credit Dr. Morrow’s testimony and reject Dr.
`Goodman’s. Samsung argues, however, that Dr. Morrow’s testimony, and
`Rembrandt’s argument based on it, constitute an improper reinterpretation of the
`court’s “different types” construction. 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 court correctly noted, any
`dispute regarding whether particular modulation techniques are in different
`families is a factual one. “[A] sound claim construction need not always purge
`every shred of ambiguity,” including potential ambiguity arising from “the words
`a court uses to construe a claim term.” Eon Corp. IP Holdings v. Silver Spring
`Networks, 815 F.3d 1314, 1318 (Fed. Cir. 2016) (citation omitted). “Such an
`endeavor could proceed ad infinitum.” Id.
`
`Contrary to the way Samsung has cast the issue, whether Boer meets the
`“different types” limitation under the court’s construction is a factual question.
`Particularly with regard to obviousness, it is a factual question going to the scope
`and content of the prior art. We review such factual questions underlying
`obviousness for substantial evidence. Taken with Dr. Morrow’s testimony, the
`fact that Boer’s DBPSK and PPM/DQPSK modulation methods both alter phase
`is substantial evidence to support the jury’s presumed fact finding that Boer did
`not teach the “different types” limitation.
`
`Rembrandt, 853 F.3d at 1378–79 (emphasis added; citations omitted; footnote omitted).
`
`
`
`The Federal Circuit has “recognize[d] the national stare decisis effect that [its] decisions
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`on claim construction have.” Ottah v. Fiat Chrysler, 884 F.3d 1135, 1140 (Fed. Cir. 2018)
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`(quoting Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).
`
`
`
`The Court rejects Defendant’s proposal to modify the construction affirmed by the
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`Federal Circuit. Defendant argues that “the precise ‘factual’ question the Court addressed was
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`‘whether Boer [a prior art reference] meets the “different types” limitation under the court’s
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`construction.’” (Dkt. No. 79, at 3–4 (quoting Rembrandt, 853 F.3d at 1379).) Yet, Rembrandt
`
`affirmed the construction and stated, without limitation, that “[a]s the district court correctly
`
`
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`Case 2:19-cv-00025-JRG Document 111 Filed 01/15/20 Page 14 of 19 PageID #: 4049
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`noted, any dispute regarding whether particular modulation techniques are in different families is
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`a factual one.” Rembrandt, 853 F.3d at 1378–79 (emphasis added).
`
`
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`Moreover, even if the Court were to consider Defendant’s present arguments, Defendant
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`fails to justify modifying the affirmed construction.
`
`
`
`Defendant emphasizes dependent Claim 46 of the ’228 Patent, which recites that “at least
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`one of said first or second modulation methods implements discrete multitone [DMT]
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`modulation.” Defendant submits that because DMT modifies all three of phase, frequency, and
`
`amplitude, DMT could not be of a “different type” than any other modulation method unless
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`different families of modulation techniques can have overlapping characteristics. (Dkt. No. 79,
`
`at 6.) Defendant concludes that the “different types” limitation in Claim 26 of the ’228 Patent
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`(from which Claim 46 depends) “must allow for ‘different types’ of modulation methods to have
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`overlapping characteristics.” (Id. (citing Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1392 (Fed.
`
`Cir. 1995) (“dependent claims can aid in interpreting the scope of claims from which they
`
`depend”)).) Defendant also cites disclosure in the specification regarding DMT. See ’580 Patent
`
`at 2:1–5.
`
`
`
`Plaintiff counters that DMT does not necessarily modulate all of phase, amplitude, and
`
`frequency (Dkt. No. 81, at 4), and Defendant submits no persuasive evidence to the contrary.
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`Moreover, even assuming that DMT mo