CONSTRUCTION OF DISPUTED TERMS
`
`Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with
`preliminary constructions of the disputed terms with the aim of focusing the parties' arguments
`and facilitating discussion. Those preliminary constructions are set forth v,;ithin the discussion of
`each term, belov,i.
`
`A, "first modulation method" and "second modulation [method]"
`"first modulation method"
`Plaintiff's Proposed Construction
`Defendants' Proposed Construction
`"a first method for varying one or more
`"a method of encoding data that is
`characteristics of a carrier in accordance with
`understood by a first type of receiver, but
`information to be communicated"'
`not by a second type of receiver"
`"second modulation [method]"
`Plaintiff's Proposed Construction
`Defendants' Proposed Construction
`"a second rnethod for varying one or rnore
`"a method of encoding data that is
`characteristics of a carrier in accordance with
`understood by the second type of receiver,
`information to be communicated" 3
`but not by the first type of receiver"
`
`2 Plaintiff [*11] previously proposed: "No construction necessary; plain and ordinary
`meanin~1 applies, /\lternatively, 'a first method for encodinq r.Ji..-1ta onto a carrier.'" Dkt. ['Jo.
`81, Ex. A at 7.
`
`3 Plaintiff previously proposed: "No construction necessary; plain and ordinary meanin~1
`applies, Alternatively, 'a second method for encoding data onto a carrier,"' Dkt. No, 81, Ex,
`A at 9,
`
`Dkt. No, 97 at 6; Dkt. ~~o. 102 at 2-3, The parties submit that the first of these terms appears
`in Claims 1, 2, 13, 19, 21, 22, 23, 32, 40, 41, 49, 54, 58, 59, 70, 76, 78, and 79 of the '580
`Patent and Claims 1, 5, 1.5, 1.7, 1.8, 22, 25, 26, 37, 38, 39, 41., 47, 48, 49, and 52 of the '2.28
`Patent. Dkt. ~~o. 82, Ex. A at 7. The parties submit that the second of these terms appears in
`Claims 1, 13, 20, 22, 23, 32, 40, 49, 54, 58, 70, 77, and 79 of the '580 Patent and Claims 1,
`10, 17, 18, 22, 23, 26, 37, 38, 41, 43, 47, and 49 of the '228 Patent. Id. at 9.
`
`Shortly before the start of the May 30, 2014 hearing, the Court provided the parties with the
`followin9 preliminary constructions for these disputed terms: "first modulation method" means
`"a first method for varying one or more characteristics of a carrier signal in accordance with
`[*12] inforrnation to be cornrnunicated"; and "second modulation [method]" means "a second
`method for varvin9 one or more characteristics of a carrier siqnal in accordance with
`information to be communicated.'' Plaintiff had no opposition to these preliminary constructions,
`Defendants were opposed.
`
`(1) The Parties' Positions
`
`Plaintiff argues that "Defendants' constructions , . , confuse 'modulation' with 'encoding"' and
`import limitations from a preferred embodiment. Dkt. No. 97 at 6. Plaintiff also submits that
`exarnples of the characteristics of a carrier than can be modulated are amplitude, frequency,
`and phase. Id, In this re~1ard, Plaintiff cites extrinsic dictionary definitions (quoted below) as
`well as statements by Defendant Samsung in an inter partes review ("IPR") filing, Id. at 7; see
`id., Ex. 7, 3/20/2014 Petition for Inter Panes Revievv of U.S. Patent No. 8,023,580 at 9 (citing
`Apple Exhibit 1010
`
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`

`The IEEE Standard Dictionary of Electrical and Electronics Terms 662 (6th ecL 1996)). Plaintiff
`also argues that the constituent terms "first" and "second" refer to repeated instances rather
`than to any distinction or incompatibility. Td. at 8. Plaintiff explains that this is a patent law
`convention and that [*13] this interpretation is consistent with usage of "first" and "second" in
`various claims as well as in the Summary section of the '580 Patent. Id, at 8-10.
`
`As to Defendants' proposed constructions, Plaintiff argues that the patents-in-suit "never use
`the term 'encode' at all," and Plaintiff cites the provisional patent application to which the
`patents-in-suit claim priority as distinguishing between "modulation" and "encoding." Id. at 11-
`12, Plaintiff also argues that Defendants' proposal of incompatibility between the first and
`second modulation methods is found in a preferred embodiment but not in the claims. Id. at 12.
`Plaintiff submits that such a limitation appears only in dependent claims, namely Claims 18 and
`/5 of the '580 Patent. id. at 13, Further, Plaintiff argues, Defendants' proposals would
`improperly exclude ernbodiments in which "modems rnay be capable of using several different
`modulation methods}' Id. (quoting '580 Patent at 1:36-37; citing id. at 5:51-54). Plaintiff
`likewise argues that "the USPTO examiner recognized that the claimed 'first' and 'second'
`modulation methods could be understood by a common receiver----contrary to Defendants'
`constructions," Dkt. ~~o. 97 at 14. [*14] Finally, Plaintiff urges that Defendants' proposals
`"would render claim limitations that explicitly require 'the first modulation method is different
`than the second modulation method' superfluous." Id. at 16 (citin9 '580 Patent at Claims 23, 32
`& 40),
`
`Defendants respond that "the sole disclosed embodiment of the invention has a 'Trib 1'4 modem
`that understands 'type A' modulation but not '[t]ype B,' and a 'Trib 2' modem that understands
`'type B' modulation but not 'type A."' Dkt. No. 102 at 3; see id. at 6-9. Defendants note that
`the specification asserts (in Defendants' words) that "in the prior art, because all modems
`connected to a common circuit needed to use compatible modulation methods, tribs that
`supported only a low-performance modulation method (e,g. type 13) would not work in systems
`that require a hiqh-performance modulation (e.9. type A) for any tasks," IcJ, at 4. Defendants
`explain that "[i]f the tribs speak each other's language, the alleged invention 'Nould be
`unnecessary," Id, at 3; see id, at 5 ("If the type B trib could understand type A modulation,
`type A modulation would simply be used by both devices, as in the prior art.").
`
`4 The patents-in-suit disclose that in a [*15] "multipoint architecture," the term "trib" is a
`shortened form of the word "tributary" and refers to one of several modems that
`cornmunicates vvith a single "master" modem, See '580 Patent at 1: 56-58 8, 3 '.40-44. The
`term "trib" appears to be synonymous with the term "slave" as used in the patents~in~suit.
`See Dkt. No. 9/, Ex. 7, 3/20/2014 Petition for Inter Partes Review of U.S, Patent No.
`8,023,580 at 11.
`
`As to the prosecution history, Defendants highlight that the patentee deleted from the
`specification all disclosures of what Defendants refer to as a "bilingual" trib, i.e., a trib with the
`ability to use two types of modulation, Id. at 9-10. Defendants also submit that the examiner
`statement cited by Plaintiff in its opening brief was made before the patentee cleleted the
`disclosures of a bilingual trib, Id. at 10. Further, Defendants cite the prosecution history of
`ancestor United States Patent !\lo. 6,616,838, during which the patentee stated: "The present
`invention is directed to the use of differing transceivers responsive to different modulation
`methods to the exclusion of other modulation methods. , .. " Id. at 11 (quoting Ex. 8,
`9/27/2001 First Amendment and Response at p. 6 of [*16] 10).
`
`As to their proposed constructions, Defendants note that "encodin~j" appeared in the
`constructions that Plaintiff had proposed prior to filing its opening claim construction brief. Dkt,
`f\lo. 102 at 3 &. 14. Defendants also argue: "First, contrary to [Plaintiff's] arguments,
`
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`

`'modulation' is 'encoding,' as [Plaintiff's] own dictionary confirms, Second, [Plaintiff's]
`construction injects the complex concept of carrier waves into the definition, That concept
`would not assist a jury." Id. at 14 (citations omitted). Finally, Defendants argue that the claim
`limitations requiring "different" modulation methods are "already superfluous," Id, at 15.
`
`Plaintiff replies to Defendants' arguments as follov,s: (1) whether the claims adequately
`distinguish prior art is a matter of validity, not claim construction, and the patentee did not
`anywhere state that the point of novelty was that receivers understand only one modulation
`method; (2) the claims should not be limited to a particular embodiment and, moreover, the
`patents-in-suit incorporate related patent applications that disclose bilingual tribs (see Dkt. f\lo.
`103, Ex, 30 at RIP9770); (3) the patentee removed, from the specification, references
`[*17] to measuring transmission line characteristics, but the patentee did not disclaim all
`embodiments in which multiple modulation methods could be understood by a single trib; (4)
`Defendants' technology tutorial submitted to this Court (0kt. No. 103, Ex. 28) confirms that
`"modulation" is different than "encoding"; (5) the doctrine of claim differentiation is not
`overcome by any disclosures in the specification; and (6) Defendants' proposals would render
`superfluous the claim limitations requiring that the "first" and "second" modulation methods be
`"different}' Dkt. No. 103 at 2-5,
`
`At the May 30, 2014 hearing, Defendants emphasized that the only disclosed embodiment uses
`monolingual tribs and that during prosecution the patentee deleted disclosure of bilingual tribs.
`The Court inquired where, if anywhere, the patentee stated that a trib can understand only one
`modulation method, Defendants responded that the patentee made that statement "by
`implication" by removing the disclosure of bilingual tribs. In this regard, Defendants cited the
`case of Abbott Laboratories v. Sandoz, inc., 566 F.3cl 1282 (Feel. Cir. 2009). As to Plaintiff's
`claim differentiation arnuments, Defendants lirged that the [*18] dependent claim "tail"
`cannot wag the specification "dog." See N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F3d
`15/1, 15/7 (Fed. Cir, 1993) ("The dependent claim tail cannot wag the independent claim
`dO~J. ").
`
`Plaintiff responded that the deletions were merely "housekeeping" and related primarily to test
`signals and to measuring transmission line characteristic rather than to the use of multilinqual
`tribs. Plaintiff also reiterated that the patents-in-suit incorporate-by-reference related
`applications that disclose multilingual tribs, Finally, Plaintiff cited 01 Cornrnunique La!Joratory,
`Inc v. i.ogMeTn., Tnc, 687 F.3d 1292 (Fed, Cir. 2012), for the proposition that if the prosecution
`history is subject to a reasonable, non-limiting interpretation, then there is no disclaimer.
`
`(2) Analysis
`
`Claim 1 of the '580 Patent is representative and recites (emphasis added):
`
`L 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 [*19] 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, wt1erein the
`second modulation rnethod is of a different type than the first rnociuiation method,
`wherein each transmission comprises a group of transmission sequences, wherein
`each woup of transmission sequences is structured with at least a first portion and
`a payload portion VI/herein first information in the first portion indicates at least
`which of the first rnodu!aUon method and the second modu!aUon method is used for
`modulating second information in the payload portion, wherein at least one qroup
`of transmission sequences is addressed for an intended destination of the payload
`
`IPR2020-00036 Page 01011
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`

`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 rnethod, 1Nherein the first sequence indicates an impending change
`from the first modulation method to the second modulation method, and
`
`the second information [*20] 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,
`
`As an initial matter, Defendants' proposed constructions appear to render redundant the recital
`of "wherein the second modulation method is of a different type than the first modulation
`method," Defendants have countered that "[t]he limitations of these claims requiring 'different'
`modulation methods are .. , already superfluous" because "[PlaintitfJ admits that the terms
`'first' and 'second' , , . are used to distinguish two items that (v,;hile similarly named) are, in
`fact, different." DkL f\Jo, 102 at 15. f\Jonetheless, such redundancy is disfavored when
`construing claims. See Merck & Co. v, Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir,
`2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over
`one that does not do so,"); see also Unique Concepts, Inc v, Bmvvn, 939 F,2d 1558, 1562
`(Fed, Cir. 1.991) (noting that "[aJII the limitations of a claim must be considered meanin~1ful"),
`
`As for the specification, the Background section of the [*21] '580 Patent states that prior art
`systems required all modems to use a single, common modulation method:
`
`In existing data communications systems, a transmitter and receiver modem pair
`can successfully communicate only when the modems are compatible at the
`physical layer. That is, the modems must use compatible modulation methods. This
`requirement is generally true regardless of the network topology. For example,
`point-to~point, dial-up modems operate in either the industry standard V,34 mode
`or the industry standard V.22 mode, Similarly, in a multipoint architecture, all
`modems operate, for example, in the industry standard V.2"/bis mode, While the
`modems ma-y' be capable of usinQ several different modulation methods, a single
`common moduiation is negotiated at the beginning of a data session to tie used
`throughout the duration of the session,
`
`'580 Patent at 1 :26-39 (emphasis added), The specification then discloses using different
`modulation methods:
`
`For example, some applications (e,9,, internet access) require high performance
`modulation, such as quadrature amplitude modulation (QAM), carrier amplitude and
`phase (CAP) modulation, or discrete multitone (Df"'lT) modulation, while other
`applications [*22] (e.~1-, power monitorin9 and control) require only modest data
`rates and therefore a /ovv perforrnance modulation method.
`
`While it is possible to use high performance tribs running state of the art
`modulation methods such as QAM, CAP, or DMT to implement both the high and
`low data rate applications, significant cost savings can be achieved if lower cost
`tribs using !ow perf'orrnance modulation rnethods are used to irnp!ement the !01tver
`data rate applications,
`
`Id, at 2:1-8 & 5:17-22 (emphasis added),
`
`IPR2020-00036 Page 01012
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`Rembrandt Wireless
`Ex. 2012
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 1012
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`

`

`A block diagram of a master transceiver 64 in communication with a trib 66 in
`accordance with the principles of the present invention is shown in FIG. 3. * * *
`
`Trib 66 comprises CPU 82 in communication with modulator 84, demodulator 86,
`and memory 88. f"'lemory 88, likewise holds software control program 92 and any
`data necessary for the operation of trib 66. Control proqrams 78 and 92, are
`executed by CPUs 68 and 82 and provide the control logic for the processes to be
`discussed herein. Control program 92 includes lo9ic for fmp!emenUng a particular
`modulation method, which, for purposes of illustration, is called type X[,] Inasmuch
`as master transceiver 64 is capable of running either a type A or [*23] a type B
`modulation method, type X refers to one of those two modulation methods,
`
`Id, at 5:23-25 & 5:42-44 (emphasis added).
`
`[A]s shown in FIG. 5, master transceiver 64 establishes type A as the prirnary
`modulation in sequence 104, Note that because trib 66b responds only to type B
`modulation transmissions, only the type A tribs 66a-66a are receptive to
`transmission sequence 104.
`
`* * *
`
`Note that the trailing sequence 114 is ineffective in establishing the termination of
`a communication session between master transceiver 64 and a type B trib 66b
`because the trailing sequence is transmitted usin9 type A modulation.
`
`Id, at 5:65-6:2 & 6:25-29,
`
`The specification does not, however, warrant Defendants' proposed finding that the invention is
`framed exclusively in the realm of monolingual tribs, lnstead, the specification discloses that
`the advantage of using multiple modulation methods is applicable to multHin9ual tribs:
`
`The present invention has many advantages, a few of 'Nhich are delineated
`hereafter as merely examples,
`
`One advantage of the present invention is that it provides to the use of a piurafity
`of rnodem rnodu!atfon methods on the sarne communication mediurn.
`
`Another advantage of the present [*24] invention is that a master transceiver can
`communicate seamlessly with tributary transceivers or modems using incompatible
`modulation methods.
`
`'580 Patent at 2:50-5/ (emphasis added),
`
`As to the prosecution history, Defendants have focused on: (1) a statement regarding the
`"present invention" during prosecution of an ancestor patent; and (2) the patentee's deletion of
`certain para9raphs from the specification of the patents-in-suit.
`
`first, Defendants have cited the prosecution history of ancestor United States Patent No.
`6,616,838, durin9 which the patentee stated: "The present invention is directed to the use of
`differing transceivers responsive to different modulation methods to the exclusion of other
`modulation methods, , . ," Dkt, No. 9/, Ex. 17, 9/2//2001 First Amendment and Response at
`6, Yet, the '580 Patent is a continuation of a continuation of a continuation-in-part of the '838
`Patent. The multiple intervening applications render the cited prosecution statement too
`attenuated to be cleemed definitive as to the patents-in-suit, particularly given that the
`patentee was adding the "exclusion" lanquage to a claim and was referrin9 to "[t]he present
`invention" in the context of that [*25] claim, .See id, at 6 & A-1; see also Invitrogen Corp, v.
`C!ontech Labs., Inc., 429 F.3d 1052, 1078 (Fed. Cir. 2005) ("[T]he prosecution of one claim
`term in a parent application will 9enerally not limit different claim lanquane in a continuation
`
`IPR2020-00036 Page 01013
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`

`

`application."); cf. Regents of the Univ. offl,'1inn. v. AGA fl;Jed, Corp., 71/ F.3cl 929, 943 (FecL Cir.
`2013) ("When the purported disclairners made during prosecution are directed to specific claim
`terms that have been omitted or materiall·y' altered in subsequent applications (rather than to
`the invention itself), those disclaimers do not apply,") (quoting Saunders Grp., Inc v.
`Comfortrac, Inc., 492 F.3d 1326, 1333 (Fed, CiL 2007)),
`
`Second, Defendants have cited the patentee's deletion of matter from the specification of the
`patents-in-suit. In the case of Al,bott Laboratories v, Sandoz, Inc., cited by Defendants durin9
`the May 30, 2014 hearing, the court relied at least in part upon the patentee's omission of
`matter contained in a parent application:
`
`f_T]he specification refers several times to "Crystal/\ of the compound (I) of the
`present invention" and offers no suggestion that the recited processes could
`produce non-Crystal A compounds, even though [*26] other types of cefdinir
`crystals, namely Crystal B, were known in the art. As noted earlier, the Crystal B
`formulation actually appears in the parent JP '199 application, Thus, Abbott knew
`exactly how to describe and claim Crystal B compounds. Knowing of Crystal B,
`hov,ever, Abbott chose to claim only the /\ form in the '507 patent. Thus, the trial
`court properly limited the term "crystalline" to "Crystal A"
`
`* * *
`
`In limiting "crystalline" to "Crystal A" in clairns 1-5, the Eastern District of Virginia
`did not improperly import the preferred embodiment into the claims. Initially,
`Crystal A is the only embodiment described in the specification. As discussed
`above, the specification's recitation of Crystal A as its sole embodiment does not
`alone justify the trial court's limitation of claim scope to that single disclosed
`embodiment, See Liebel-Ffarshefm [Co. v, Medrad, Inc.], 358 F.3d [898,] 906
`[(Fed. Cir. 2004)] ("[T]his court has expressly rejected the contention that if a
`patent describes only a single embodiment, the claims of the patent must be
`construed as being limited to that embodiment."), In this case, however, the rest of
`the intrinsic evidence, including the prosecution history [*27] and the priority JP
`'199 application, evince a clear intention to limit the '507 patent to Crystal A , .
`
`lhe JP '199 application strongly suggests that the '507 patent intentionally
`excluded Crystal B cornpounds, As discussed above, the JP '199 application
`establishes unequivocally that Abbott knew and could describe both Crystal A and
`Crystal 13, Abbott could have retained the disclosure of Crystal B to support the
`broader claims of the '507 patent, but instead disclosed and claimed A alone,
`
`* * *
`
`Given the exclusive focus on Crystal A in the specification as vvell as the prosecution
`history of the '50/ patent, the Eastern District of Virginia properly limited
`"crystalline" in claims 1~5 to "Crystal /\,"
`
`* * *
`
`The Eastern District of Virginia correctly construed the '507 patent's recitation of
`"crystalline" in each of the asserted claims as limited to Crystal A, as outlined in the
`specification, Because /\bbott scrubbed all references to Crystal B in the '507
`patent's specification, which were present in the '507 patent's parent foreign
`application, Abbott clearly demonstrated its intent to limit the '507 patent to Crystal
`A, This intent was further underscored by comments made durinq
`
`IPR2020-00036 Page 01014
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`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 1014
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`

`

`[*28] prosecution. As such, Abbott is unable to recapture Crystal B through broacl
`claim language or under the doctrine of equivalents.
`
`566 F3d at 1289-90, 1299 (citation omitted).
`
`Here, by contrast, the patentee's deletion of matter relates less directly to the limitation that
`Defendants seek to impose. The patentee deleted the following paragraphs during prosecution
`of the '580 Patent:
`
`[0042] In an alternative embodiment of the present invention, embedded
`modulations can be usecl as a way to rneasure transrnission iine characteristics
`between a master transceiver and tributary transceiver as shown in FIG 8. In this
`embodiment, both a master transceiver 64 and a trilnttary transcdver 66a would
`have the ability to transmit using at feast two modulation methods, type A and type
`B. In the present example, the primary transmission type is type A, Thus, as shown
`in FIG. 8, the master transceiver 64 establishes type A as the primary modulation
`in sequence 150,
`
`[0043] To svvitch from type A to type B modulation, master transceiver 64
`transmits a notification sequence 152 to the tributary 66a. Thus, the tributary 66a
`is notified of an impencling change to modulation type S, The switch to type B
`modulation [*29] coulcl be limitecl according to a specific time interval or for the
`communication of a particular quantity of clata, such as a test signal. After notifying
`the tributary 66a of the change to type B modulation, the master transceiver 64[]
`transmits test signal sequence 151 using type B modulation,
`
`[0044] In this embodiment, the tributary transceiver can contain loqic which
`enables the tributary 66a to calculate at feast one channel parameter from the test
`signal sequence 154, Channel parameters typically include transmission line
`characteristics, such as, for example, loss versus frequency, non~linear distortion,
`listener echoes, talker echoes, bridge tap locations, impedance mismatches, noise
`profile, signal-to-noise ratio, group clelay versus frequency, cross-talk presence,
`cross~talk type, etc Moreover, the tributary transceiver 66a could be cont\wred to
`communicate a channel parameter back to the master transceiver 64.
`
`f.0045_1 After transmittin~1 the test siqna! sequence 1.54 to the tributary transceiver
`66a, the master transceiver 64 can transmit trailing sequence 156 to the tributary
`transceiver 66a using type A rnoclulation to indicate the encl of the transrnission
`using type B modulation. [*30] The master transceiver 64 can then send
`information to the tributary transceiver 66a using primary modulation type A, as
`shown by training, data ancl trailing sequences 158, 160 ancl 162. Likewise, the
`tributary transceiver 66a can send information to the master transceiver 64 using
`primary modulation type A, as shov,rn by training, data and trailing sequences 164,
`166 and 168,
`
`[0046] ln a further alternative embodiment, the master transceiver 64 or tributary
`transceiver 66a rnay iclentify a time period within which test signal sequences may
`be transmitted. This v,ould eliminate the training and trailin~1 sequences which alert
`the tributary transceiver 66a to the beginning of a new modulation methocl. The
`identification of the time periocl could be initiated by the master transceiver 64 or
`tributary transceiver 66a and could include a time period noted in the header of a
`transmission between the tributary transceiver 66a and master transceiver 64.
`
`DkL ['Jo, 97, f.x. 9, 3/1/2011 Reply Pursuant to 37 CFR § L1.1.1 at 5~6 (RIP3521-22) (emphasis
`added); see id. at 22 ("The MPEP suggests that the applicant modify the brief summary of the
`invention and restrict the descriptive subject matter 'so as to be [*31] in harmony with the
`claims.' MPEP .1302,0.1, General Review of Disclosure, Accordingly, Applicant has deleted
`paragraphs [0042] - [0046].") (square brackets in original); see also Dkt. No. 102, Ex. 4 at p.
`
`IPR2020-00036 Page 01015
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`

`20 of 44 (RIP19) (figure 8, illustrating "Trib Type .A+ B"); Dkt. No. 97, Ex. 9, 3/1/2011 Reply
`Pursuant to 37 (TR§ 1.111 at 4 (RIP3520), 22 (RIP3538) & p. 34 of 34 (RIP3549) (replacin9
`Figure 8).
`
`This deletion of disclosure of "a tributary transceiver 66a [that has] the ability to transmit using
`at least two modulation methods" is notable, and Defendants argued at the May 30, 2014
`hearing that a "test signal" is merely an example of a communication with a bilingual trib. Dkt.
`No. 97, Ex. 9, 3/1/2011 Reply Pursuant to 37 (TR§ 1.111 at 5-6 (RIP3521-22). Nonetheless,
`Plaintiff has persuasively argued that these paragraphs relate primarily to test signals and to
`measuring transmission line characteristics rather than to the use of bilingual tribs, The above(cid:173)
`quoted Sandoz case cited by Defendants is therefore distinguishable, and the patentee's
`deletion of matter from the specification is of no limiting effect here. See SanDisk Corp. v,
`i"'1emorex Prods., inc., 415 f.3cl 1278, 1286 (fed. Cir. 2005) [*32] ("There is no clear and
`unmistakable disclairner if a prosecution argument is subject to more than one reasonable
`interpretation, one of which is consistent with a proffered meaning of the disputed term.")
`(internal quotation marks omitted); see also 01 Communique, 687 F.3d at 129/ (quoting
`SanDisk).
`
`Defendants also argued at the May 30, 2014 hearing that the patentee removed this matter
`because it was introduced in a parent continuation-in-part application. Defendants explained
`that if the claims of the patents-in-suit were found to rely upon this new matter, the claims
`would not receive benefit of the earliest priority date. Defendants concluded that the patentee
`deleted these paraqraphs from the specification in order to eliminate this risk. Defendants'
`argument in this regard appears better suited to a written description challenge because
`validity analysis is not a regular part of claim construction. See Phillips, 415 F.3d at 132/ ("['NJ
`e have certainly not endorsed a reqime in which validity analysis is a regular component of
`claim construction,"). Defendants' arguments regarding deletion of matter from the
`specification are therefore of minimal relevance during the present claim [*33] construction
`proceedings,
`
`In sum, none of the prosecution history cited by Defendants contains any definitive statements
`that would warrant flndinq a disclaimer. See Omeqa Eng'g v. Raytek Corp., 334 F.3d 1314,
`1324 (Fed. Cir. 2003) ("As a basic principle of claim interpretation, prosecution disclaimer
`promotes the public notice function of the intrinsic evidence and protects the public's reliance
`on definitive statements made durin9 prosecution.") (emphasis added), Further, as explained
`above, the prosecution history is not othervifise sufficiently clear to justify Defendants' narrow
`interpretation of the present patents-in-suit.
`
`.As to the parties' proposed constructions, "[t] he use of the terms 'first' and 'second' is a
`common patent-lavv convention to distinguish between repeated instances of an element or
`limitation," 3M Innovative Props, Co. v. Avery Dennison Corp., 350 F.3d 1365, 1.371 (Fed. Cir.
`2003). Nothing in the nature of "repeated instances" clemands the incompatibility that
`Defendants have proposed. Cf id. ("In the context of claim 1, the use of the terms 'first. , .
`pattern' and 'second , . , pattern' is equivalent to a reference to 'pattern A' and 'pattern B,' and
`should [*34] not in ancl of itself impose a serial or temporal limitation onto claim 1."),
`.Although the above-quoted disclosures in the specification contemplate a trib that can use only
`one modulation method, nothin9 in the claim langua~1e warrants limitin~1 the disputed terms to
`such a narrow construction.
`
`The doctrine of claim differentiation also weighs against requiring incompatibility because such
`a limitation appears in dependent Claims 18 and /5 of the '580 Patent, which recite:
`
`18. The device of claim 15, wherein the intended destination is the first type of
`receiver and unable to demodulate the second modulation method,
`
`* * *
`
`IPR2020-00036 Page 01016
`
`Rembrandt Wireless
`Ex. 2012
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00034
`Page 1016
`
`

`

`/5, The device of claim /2, wherein the intencled destination is the first type of
`receiver and unable to demodulate the second modulation methocl,
`
`The doctrine of claim differentiation weighs against any construction of the disputed terms that
`would rencler these clependent claims superfluous. See Phifiips, 415 f.3d at 1315 C[TJhe
`presence of a dependent claim that adds a particular limitation qives rise to a presumption that
`the limitation in question is not present in the independent claim."); see also Liebef-F!arsheim,
`358 f.3d at 910 ("[W]here the limitation that is sought [*35] to be 'read into' an independent
`claim already appears in a dependent claim, the doctrine of claim differentiation is at its
`strongest."); ~Venger Mfg., Inc v. Coating Mach .. Sys., Inc, 239 F.3d 1225, 1233 (Fed. Cir.
`2001) ("Claim differentiation, while often argued to be controlling when it does not apply, is
`clearly applicable when there is a dispute over whether a limitation found in a dependent claim
`should be read into an independent claim, and that limitation is the only meaningful difference
`between the tvvo claims."),
`
`Defendants have countered that "any presumption created by the doctrine of claim
`differentiation will be overcome by a contrary construction dictated by the written description or
`prosecution history." Retractable Techs.,. Inc v, Becton, Dickinson & Co,, 653 F3d 1296, 1.305
`(Fed. Cir. 2011) (citations and internal quotation mar