Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1068 Page 1 of 14
`
`Mieke K. Malmberg (SBN 209992)
`SKIERMONT DERBY LLP
`800 Wilshire Blvd., Ste. 1450
`Los Angeles, CA 90017
`Phone: (213) 788-4500
`Fax: (213)788-4545
`mmalmberg@skiermontderby.com
`Paul J. Skiermont (pro hac vice)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, TX 75201
`Phone: (214) 978-6600
`Fax: (214) 978-6601
`pskiermont@skiermontderby.com
`(Additional counsel identified on
`signature page)
`Attorneys for Plaintiff
`BELL NORTHERN RESEARCH, LLC
`
`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`BELL NORTHERN RESEARCH,
`C.A. No. 3:18-cv-1783-CAB-BLM
`LLC,
`JOINT CLAIM CONSTRUCTION
`CHART, WORKSHEET, AND
`HEARING STATEMENT
`PURSUANT TO P.L.R. 4.2
`Judge: Hon. Cathy Ann Bencivengo
`Magistrate Judge: Barbara Lynn Major
`
`v.
`COOLPAD TECHNOLOGIES, INC.
`AND YULONG COMPUTER
`COMMUNICATIONS,
`Defendants.
`
`Plaintiff,
`
`BELL NORTHERN RESEARCH,
`LLC,
`
`C.A. No. 3:18-cv-1784-CAB-BLM
`
`Plaintiff,
`
`v.
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1068 Page 1 of 14
`
`Mieke K. Malmberg (SBN 209992)
`SKIERMONT DERBY EEP
`800 Wilshire Blvd., Ste. 1450
`Eos Angeles, CA 90017
`Phone: (213) 788-4500
`Fax: (213)788-4545
`ninialniberg@skierniontderby. com
`
`Paul J. Skiermont {pro hac vice)
`SKIERMONT DERBY EEP
`1601 Elm St., Ste. 4400
`Dallas, TX 75201
`Phone: (214) 978-6600
`Fax: (214) 978-6601
`pskiermont@skiermontderby.com
`(Additional counsel identified on
`signature page)
`Attorneys for Plaintiff
`BEEF NORTHERN RESEARCH, EEC
`
`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`C.A. No. 3:18-cv-1783-CAB-BLM
`JOINT CLAIM CONSTRUCTION
`CHART, WORKSHEET, AND
`HEARING STATEMENT
`PURSUANT TO P.L.R 4.2
`Judge: Hon. Cathy Ann Bencivengo
`Magistrate Judge: Barbara Lynn Major
`
`C.A. No. 3:18-cv-1784-CAB-BLM
`
`BELL NORTHERN RESEARCH,
`EEC,
`
`Plaintiff,
`
`V.
`
`COOLPAD TECHNOLOGIES, INC.
`AND YULONG COMPUTER
`COMMUNICATIONS,
`Defendants.
`
`BELL NORTHERN RESEARCH,
`EEC,
`
`Plaintiff,
`
`V.
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`1 2 3 4 5 6 7 8
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`1
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`LG 1008
`
`

`

`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1069 Page 2 of 14
`
`HUAWEI DEVICE (DONGGUAN)
`CO., LTD, HUAWEI DEVICE
`(SHENZHEN) CO., LTD., and
`HUAWEI DEVICE USA, INC.,
`Defendants.
`
`BELL NORTHERN RESEARCH,
`LLC,
`
`Plaintiff,
`
`v.
`KYOCERA CORPORATION and
`KYOCERA INTERNATIONAL INC.,
`Defendants.
`
`BELL NORTHERN RESEARCH,
`LLC,
`
`Plaintiff,
`
`v.
`ZTE CORPORATION,
`ZTE (USA) INC.,
`ZTE (TX) INC.,
`
`Defendants.
`
`C.A. No. 3:18-cv-1785-CAB-BLM
`
`C.A. No. 3:18-cv-1786-CAB-BLM
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1069 Page 2 of 14
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`HUAWEl DEVICE (DONGGUAN)
`CO., ETD, HUAWEl DEVICE
`(SHENZHEN) CO., ETD., and
`HUAWEl DEVICE USA, INC.,
`
`Defendants.
`
`BEEE NORTHERN RESEARCH,
`EEC,
`
`C.A. No. 3:18-cv-1785-CAB-BEM
`
`Plaintiff,
`
`V.
`
`KYOCERA CORPORATION and
`KYOCERA INTERNATIONAL INC.,
`
`Defendants.
`
`BEEE NORTHERN RESEARCH,
`EEC,
`
`C.A. No. 3:18-cv-1786-CAB-BEM
`
`Plaintiff,
`
`V.
`
`ZTE CORPORATION,
`ZTE (USA) INC.,
`ZTE (TX) INC.,
`
`Defendants.
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`1 2 3 4 5 6 7 8
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`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1070 Page 3 of 14
`
`Pursuant to this Court’s Case Management Order of October 23, 2018, and
`Patent Local Rule 4.2, counsel for Plaintiff Bell Northern Research, LLC (“BNR”) and
`Defendants Coolpad Technologies, Inc.; Yulong Computer Communications; Huawei
`Device (Dongguan) Co., Ltd.; Huawei Device (Shenzhen) Co., Ltd.; Huawei Device
`USA, Inc.; Kyocera Corporation; Kyocera International, Inc.; ZTE Corporation; ZTE
`(USA) Inc.; and ZTE (TX) Inc. (collectively, “Defendants”) submit this Joint Hearing
`Statement, the attached Appendix A, Joint Claim Construction Worksheet, and the
`attached Appendix B, Joint Claim Construction Chart. The patents-in-suit are:
`7,319,889; 8,204,554; 7,990,842; 8,416,862; 7957,450; 6,941,156; 8,792,432; and
`7,039,435.
`The parties exchanged their preliminary claim constructions on March 22, 2019
`and their responsive claim constructions on April 5, 2019. Pursuant to Patent L.R.
`4.1.e, conferences were held on April 15 and April 18, 2019, and all parties
`participated.
`
`JOINT HEARING STATEMENT
`A. MOST SIGNIFICANT TERMS
`In accordance with Patent L.R. 4.2(a), the parties hereby identify the terms
`whose construction will be most significant to the resolution of the case up to a
`maximum of ten (10) terms:
`No.
`Claim Nos.
`
`1
`
`2
`
`9
`
`9
`
`Claim Term
`(U.S. Patent No. 8,416,862)
`“decompose the estimated transmitter beamforming
`unitary matrix (V) to produce the transmitter
`beamforming information”
`“…a baseband processing module operable to:
`receive a preamble sequence carried by the
`baseband signal;
`estimate a channel response based upon the
`preamble sequence;
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`3
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`1 2 3 4 5 6 7 8 9
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1070 Page 3 of 14
`
`Pursuant to this Court’s Case Management Order of October 23, 2018, and
`Patent Local Rule 4.2, counsel for Plaintiff Bell Northern Research, LLC (“BNR”) and
`Defendants Coolpad Technologies, Inc.; Yulong Computer Communications; Huawei
`Device (Dongguan) Co., Ltd.; Huawei Device (Shenzhen) Co., Ltd.; Huawei Device
`USA, Inc.; Kyocera Corporation; Kyocera International, Inc.; ZTE Corporation; ZTE
`(USA) Inc.; and ZTE (TX) Inc. (collectively, “Defendants”) submit this Joint Hearing
`Statement, the attached Appendix A, Joint Claim Construction Worksheet, and the
`attached Appendix B, Joint Claim Construction Chart. The patents-in-suit are:
`7,319,889; 8,204,554; 7,990,842; 8,416,862; 7957,450; 6,941,156; 8,792,432; and
`7,039,435.
`The parties exchanged their preliminary claim constructions on March 22, 2019
`and their responsive claim constructions on April 5, 2019. Pursuant to Patent E.R.
`4.Le, conferences were held on April 15 and April 18, 2019, and all parties
`participated.
`
`JOINT HEARING STATEMENT
`A. MOST SIGNIFICANT TERMS
`In accordance with Patent E.R. 4.2(a), the parties hereby identify the terms
`whose construction will be most significant to the resolution of the case up to a
`maximum of ten (10) terms:
`Claim Nos.
`No.
`
`1
`
`2
`
`9
`
`9
`
`Claim Term
`(U.S. Patent No. 8,416,862)
`“decompose the estimated transmitter beamforming
`unitary matrix (V) to produce the transmitter
`beamforming information”
`“...a baseband processing module operable to:
`receive a preamble sequence carried by the
`baseband signal;
`estimate a channel response based upon the
`preamble sequence;
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`1 2 3 4 5 6 7 8
`
`
`9
`10
`11
`12
`13
`14
`15
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`28
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`3
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`

`

`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1071 Page 4 of 14
`
`determine an estimated transmitter beamforming
`unitary matrix (V) based upon the channel response and a
`receiver beamforming unitary matrix (U);
`decompose the estimated transmitter beamforming
`unitary matrix (V) to produce the transmitter
`beamforming information; and
`form a baseband signal employed by the plurality
`of RF components to wirelessly send the transmitter
`beamforming information to the transmitting wireless
`device.”
`
`No.
`
`Claim Nos.
`
`3
`
`4
`
`1, 2, 3, 11, 12, 13,
`21, 22
`1, 11, 21, 22
`
`Claim Term
`(U.S. Patent No. 7,957,450)
`“channel estimate matrices”
`“matrix based on the/said plurality of channel estimates”
`“coefficients derived from performing a singular value
`matrix decomposition (SVD)”
`“coefficients from performing a singular value matrix
`decomposition (SVD)”
`Claim Term
`(U.S. Patent No. 6,941,156)
`“cell phone functionality”
`“RF communication functionality”
`“a module to establish simultaneous communication
`paths from said multimode cell phone using both said cell
`phone functionality and said RF communication
`functionality”
`“an automatic switch over module, in communication
`with both said cell phone functionality and said RF
`communication functionality, operable to switch a
`communication path established on one of said cell phone
`functionality and said RF communication functionality,
`with another communication path later established on the
`other of said cell phone functionality and said RF
`communication functionality”
`1. Plaintiff’s Additional “Most Significant” Term:
`Plaintiff identifies the following additional claim term as being “most
`significant” under Patent L.R. 4.2(a):
`
`No.
`
`Claim Nos.
`
`5
`6
`7
`
`8
`
`1
`1
`1
`
`1
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`4
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`1 2 3 4 5 6 7 8 9
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1071 Page 4 of 14
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`determine an estimated transmitter beamforming
`unitary matrix (V) based upon the channel response and a
`receiver beamforming unitary matrix (U);
`decompose the estimated transmitter beamforming
`unitary matrix (V) to produce the transmitter
`beamforming information; and
`form a baseband signal employed by the plurality
`of RF components to wirelessly send the transmitter
`beamforming information to the transmitting wireless
`device.”
`
`No.
`
`Claim Nos.
`
`3
`
`4
`
`1,2,3,11,12,13,
`21,22
`1, 11,21,22
`
`Claim Term
`(U.S. Patent No. 7,957,450)
`“channel estimate matrices”
`“matrix based on the/said plurality of channel estimates”
`“coefficients derived from performing a singular value
`matrix decomposition (SVD)”
`“coefficients from performing a singular value matrix
`decomposition (SVD)”
`Claim Term
`(U.S. Patent No. 6,941,156)
`“cell phone functionality”
`“RF communication functionality”
`“a module to establish simultaneous communication
`paths from said multimode cell phone using both said cell
`phone functionality and said RF communication
`functionality”
`“an automatic switch over module, in communication
`with both said cell phone functionality and said RF
`communication functionality, operable to switch a
`communication path established on one of said cell phone
`functionality and said RF communication functionality,
`with another communication path later established on the
`other of said cell phone functionality and said RF
`communication functionality”
`1. Plaintiffs Additional “Most Significant” Term:
`Plaintiff identifies the following additional claim term as being “most
`significant” under Patent L.R. 4.2(a):
`
`No.
`
`Claim Nos.
`
`5
`6
`7
`
`8
`
`1
`1
`1
`
`1
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`1 2 3 4 5 6 7 8
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`

`

`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1072 Page 5 of 14
`
`Claim Nos.
`
`10
`
`1
`
`No.
`
`9
`
`No.
`
`10
`
`Claim Term
`(U.S. Patent No. 8,416,862)
`“produce the estimated transmitter beamforming unitary
`matrix (V) in Cartesian coordinates; and convert the
`estimated transmitter beamforming unitary matrix (V) to
`polar coordinates”
`2. Defendants’ Additional “Most Significant” Term:
`Claim Nos.
`Claim Term
`(U.S. Patent No. 6,941,156)
`“simultaneous communication paths from said multimode
`cell phone”
`3. Plaintiff’s Response to Defendants’ Statement:
`Plaintiff has proposed 4 terms for constructions. Defendants have proposed 14
`terms for construction or a determination that 112(6) applies. The Court allotted the
`parties 15 terms jointly for proposed terms. While the Court indicated it would
`entertain an enlargement of that limit, the Defendants have failed to articulate any
`valid reason for such an enlargement, and were unable to do so during the parties’
`meet and confer. During the parties’ meet and confer, Defendants’ counsel stated that
`they were “not concerned” with exceeding the Court’s limit. Plaintiffs object to this
`disregard of the Court’s order.
`Moreover, Defendants’ Statement mischaracterizes Plaintiff’s position on the
`allegedly “indefinite terms.” Defendants apparently intend to argue that 12 terms are
`indefinite. Of those terms, Defendants also argue that six of them are subject to 112(6)
`but indefinite for lack of structure. As is required by the local rules, Plaintiff has
`proposed constructions for any of those terms (3 total) for which it may request
`construction in response to the Defendants’ arguments, while reserving the right to
`argue that they are not indefinite. Of the 112(6) arguments, Plaintiff has proposed an
`alternative function and structure for 4 terms to rebut Defendants’ indefiniteness
`argument. For the 5 remaining terms that Defendants allege are indefinite, Plaintiff has
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`5
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`1 2 3 4 5 6 7 8 9
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1072 Page 5 of 14
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`Claim Nos.
`
`10
`
`1
`
`No.
`
`9
`
`No.
`
`10
`
`Claim Term
`(U.S. Patent No. 8,416,862)
`“produce the estimated transmitter beamforming unitary
`matrix (V) in Cartesian coordinates; and convert the
`estimated transmitter beamforming unitary matrix (V) to
`polar coordinates”
`2. Defendants’ Additional “Most Significant” Term:
`Claim Nos.
`Claim Term
`(U.S. Patent No. 6,941,156)
`“simultaneous communication paths from said multimode
`cell phone”
`3. Plaintiffs Response to Defendants’ Statement:
`Plaintiff has proposed 4 terms for constructions. Defendants have proposed 14
`terms for construction or a determination that 112(6) applies. The Court allotted the
`parties 15 terms jointly for proposed terms. While the Court indicated it would
`entertain an enlargement of that limit, the Defendants have failed to articulate any
`valid reason for such an enlargement, and were unable to do so during the parties’
`meet and confer. During the parties’ meet and confer. Defendants’ counsel stated that
`they were “not concerned” with exceeding the Court’s limit. Plaintiffs object to this
`disregard of the Court’s order.
`Moreover, Defendants’ Statement mischaracterizes Plaintiffs position on the
`allegedly “indefinite terms.” Defendants apparently intend to argue that 12 terms are
`indefinite. Of those terms. Defendants also argue that six of them are subject to 112(6)
`but indefinite for lack of structure. As is required by the local rules. Plaintiff has
`proposed constructions for any of those terms (3 total) for which it may request
`construction in response to the Defendants’ arguments, while reserving the right to
`argue that they are not indefinite. Of the 112(6) arguments. Plaintiff has proposed an
`alternative function and structure for 4 terms to rebut Defendants’ indefiniteness
`argument. For the 5 remaining terms that Defendants allege are indefinite. Plaintiff has
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`5
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`1 2 3 4 5 6 7 8
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`

`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1073 Page 6 of 14
`
`informed the Defendants that it intends to respond by arguing that the terms are not
`indefinite.
`
`As the Court ordered during the Scheduling Conference, “if there are any
`indefinite issues, they should be raised as a separate motion, but with the claim
`constructions. So if you think that a claim can’t be construed because it’s indefinite,
`then bring that as a motion in conjunction with the claim construction.” Oct. 22,
`2018 Hearing Tr. at 18:13-18. It is BNR’s understanding based on this order that, to
`the extent that Defendants intend to argue that any terms are indefinite, they must bring
`a motion subject to the applicable rules on motion practice at the same time that the
`parties file their opening briefs on claim construction.
`As a result, under the Court’s order, BNR is not required to respond to any of
`Defendants contentions regarding indefiniteness unless BNR’s response directly
`implicates claim construction or 112(6). This is particularly true because it is
`Defendants burden of production and persuasion for any invalidity argument,
`including indefiniteness. “[A]n alleged infringer who raises invalidity as an affirmative
`defense has the ultimate burden of persuasion to prove invalidity by clear and
`convincing evidence, as well as the initial burden of going forward with evidence to
`support its invalidity allegation.” Titan Tire Corp. v. Case New Holland, Inc., 566
`F.3d 1372, 1376 (Fed. Cir. 2009) (emphasis added).
`In addition, the Defendants have not disclosed any alternative constructions or
`meanings for the terms they argue are indefinite, except for Huawei and Coolpad’s
`arguments relating 112(6) for the “cell phone functionality” and “RF communication
`functionality.” Therefore, they are precluded from arguing any constructions in their
`motion for rulings of indefiniteness.
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
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`1 2 3 4 5 6 7 8 9
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`ise 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1073 Page 6 of 14
`
`informed the Defendants that it intends to respond by arguing that the terms are not
`indefinite.
`As the Court ordered during the Scheduling Conference, “if there are any
`indefinite issues, they should be raised as a separate motion, but with the claim
`constructions. So if you think that a claim can’t be construed because it’s indefinite,
`then bring that as a motion in conjunction with the claim construction.” Oct. 22,
`2018 Hearing Tr. at 18:13-18. It is BNR’s understanding based on this order that, to
`the extent that Defendants intend to argue that any terms are indefinite, they must bring
`a motion subject to the applicable rules on motion practice at the same time that the
`parties file their opening briefs on claim construction.
`As a result, under the Court’s order, BNR is not required to respond to any of
`Defendants contentions regarding indefiniteness unless BNR’s response directly
`implicates claim construction or 112(6). This is particularly true because it is
`Defendants burden of production and persuasion for any invalidity argument,
`including indefiniteness. “[A]n alleged infringer who raises invalidity as an affirmative
`defense has the ultimate burden of persuasion to prove invalidity by clear and
`convincing evidence, as well as the initial burden of going forward with evidence to
`support its invalidity allegation.” Titan Tire Corp. v. Case New Holland, Inc., 566
`F.3d 1372, 1376 (Fed. Cir. 2009) (emphasis added).
`In addition, the Defendants have not disclosed any alternative constructions or
`meanings for the terms they argue are indefinite, except for Huawei and Coolpad’s
`arguments relating 112(6) for the “cell phone functionality” and “RF communication
`functionality.” Therefore, they are precluded from arguing any constructions in their
`motion for rulings of indefiniteness.
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
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`
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`

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`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1074 Page 7 of 14
`
`4. Defendants’ Statement:
`Defendants also note that during the October 22, 2018 Case Management
`Conference, the Court requested the following explanation if the parties identify more
`than 15 claim terms for construction in the Joint Claim Construction Chart:
`Exchange of preliminary list of terms for construction. The Court is
`going to start you with a default of 15 claims total. Claimed words or
`terms. If you need to do additional claim terms beyond that 15, then when
`you file your joint claim construction chart, you can ask the Court for the
`additional claims, list them in any kind of priority order, and why you
`need to do those additional claim terms, and we’ll adjust accordingly.
`(October 22, 2018 Transcript, p. 8.)
`
`The Joint Claim Construction Chart currently identifies 19 disputed terms
`(although the parties will continue to meet and confer and hope to reduce this number).
`Of these, the Defendants contend that 12 are indefinite. Six of these 12 are means-
`plus-function terms which Defendants contend are indefinite because they lack
`corresponding structure, and six do not involve means-plus-function terms and are
`indefinite for other reasons. BNR has made specific counter-proposals for nine of the
`12 terms, and has contended that it does not need to propose “definite” constructions
`for the other three because their “plain and ordinary meaning is sufficient.” The
`parties thus have a dispute on all 12 “indefinite” terms.
`At the Case Management Conference, the Court also suggested that indefinite
`issues should be handled in a different manner than the other terms in dispute:
`If you have 112 issues or forum licensing issues or any of those other
`issues that could – well, if there are any indefinite issues, they should be
`raised as a separate motion, but with the claim constructions. So if you
`think that a claim can’t be construed because it’s indefinite, then bring
`that as a motion in conjunction with the claim construction.
`(October 22, 2018 Transcript, p 18).
`
`Based upon these statements, the parties are not sure whether any, some, or all
`of the terms that Defendants contend are indefinite should be included in the Court’s
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`7
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`1 2 3 4 5 6 7 8 9
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`10
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`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1074 Page 7 of 14
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`4. Defendants’ Statement:
`Defendants also note that during the October 22, 2018 Case Management
`Conference, the Court requested the following explanation if the parties identify more
`than 15 claim terms for construction in the Joint Claim Construction Chart:
`Exchange of preliminary list of terms for construction. The Court is
`going to start you with a default of 15 claims total. Claimed words or
`terms. If you need to do additional claim terms beyond that 15, then when
`you file your joint claim construction chart, you can ask the Court for the
`additional claims, list them in any kind of priority order, and why you
`need to do those additional claim terms, and weTl adjust accordingly.
`(October 22, 2018 Transcript, p. 8.)
`
`The Joint Claim Construction Chart currently identifies 19 disputed terms
`(although the parties will continue to meet and confer and hope to reduce this number).
`Of these, the Defendants contend that 12 are indefinite. Six of these 12 are means-
`plus-function terms which Defendants contend are indefinite because they lack
`corresponding structure, and six do not involve means-plus-function terms and are
`indefinite for other reasons. BNR has made specific counter-proposals for nine of the
`12 terms, and has contended that it does not need to propose “definite” constructions
`for the other three because their “plain and ordinary meaning is sufficient.” The
`parties thus have a dispute on all 12 “indefinite” terms.
`At the Case Management Conference, the Court also suggested that indefinite
`issues should be handled in a different manner than the other terms in dispute:
`If you have 112 issues or forum licensing issues or any of those other
`issues that could - well, if there are any indefinite issues, they should be
`raised as a separate motion, but with the claim constructions. So if you
`think that a claim can’t be construed because it’s indefinite, then bring
`that as a motion in conjunction with the claim construction.
`(October 22, 2018 Transcript, p 18).
`
`Based upon these statements, the parties are not sure whether any, some, or all
`of the terms that Defendants contend are indefinite should be included in the Court’s
`
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`1 2 3 4 5 6 7 8
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`

`

`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1075 Page 8 of 14
`
`initial default of 15 claim terms. Accordingly, and also to apprise the Court of all of
`the terms which currently are in dispute, the parties are including all of these
`contended indefinite terms in the Joint Claim Construction Chart. In the event these
`terms are intended to be included in as part of the Court’s default limit, the Defendants
`would like to increase the limit to 19 claim terms to include all of the indefinite terms
`in the Joint Claim Construction Chart including the “additional” indefinite terms in this
`priority:
`16. U.S. Patent No. 7,990,842 (Claim 1): “a standard wireless networking
`configuration for an Orthogonal Frequency Division Multiplexing
`scheme”
`17. U.S. Patent No. 7,990,842 (Claim 1): “extended long training sequence”
`18. U.S. Patent No. 7,990,842 (Claims 1, 4, 14): “optimal extended long
`training sequence”
`19. U.S. Patent No. 7,319,889 (Claims 1, 8) and U.S. Patent No. 8,204,554
`(Claim 7): “substantially concurrently”
`Each of these claims may have a claim-dispositive impact on validity. In
`addition, if any of these claim terms are found to be definite, their scope and meaning
`may have a claim-dispositive impact on infringement.
`Plaintiff argues Defendants are precluded from arguing any constructions in
`their motion for rulings of indefiniteness. Defendants note that during the meet and
`confer process Plaintiffs did not provide any proposed constructions for the terms
`Defendants have identified as indefinite. Defendants therefore reserve the right to
`address any constructions belatedly put forth by Plaintiff and/or propose constructions
`in response to any of BNR’s proposed constructions.
`
`B. HEARING DURATION
`The parties defer to the Court’s preference on the specific number of hours for
`the hearing, but anticipate that the Claim Construction Hearing and Tutorial will
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`8
`
`1 2 3 4 5 6 7 8 9
`
`10
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`ise 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1075 Page 8 of 14
`
`initial default of 15 claim terms. Accordingly, and also to apprise the Court of all of
`the terms which currently are in dispute, the parties are including all of these
`contended indefinite terms in the Joint Claim Construction Chart. In the event these
`terms are intended to be included in as part of the Court’s default limit, the Defendants
`would like to increase the limit to 19 claim terms to include all of the indefinite terms
`in the Joint Claim Construction Chart including the “additional” indefinite terms in this
`priority:
`16. U.S. Patent No. 7,990,842 (Claim 1): “a standard wireless networking
`configuration for an Orthogonal Frequency Division Multiplexing
`scheme”
`17. U.S. Patent No. 7,990,842 (Claim 1): “extended long training sequence”
`18. U.S. Patent No. 7,990,842 (Claims 1, 4, 14): “optimal extended long
`training sequence”
`19. U.S. Patent No. 7,319,889 (Claims 1, 8) and U.S. Patent No. 8,204,554
`(Claim 7): “substantially concurrently”
`Each of these claims may have a claim-dispositive impact on validity. In
`addition, if any of these claim terms are found to be definite, their scope and meaning
`may have a claim-dispositive impact on infringement.
`Plaintiff argues Defendants are precluded from arguing any constructions in
`their motion for rulings of indefiniteness. Defendants note that during the meet and
`confer process Plaintiffs did not provide any proposed constructions for the terms
`Defendants have identified as indefinite. Defendants therefore reserve the right to
`address any constructions belatedly put forth by Plaintiff and/or propose constructions
`in response to any of BNR’s proposed constructions.
`
`B. HEARING DURATION
`The parties defer to the Court’s preference on the specific number of hours for
`the hearing, but anticipate that the Claim Construction Hearing and Tutorial will
`Joint Claim Construction Chart,
`Worksheet, and Hearing Statement
`
`8
`
`1 2 3 4 5 6 7 8
`
`
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`10
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`12
`13
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`Case 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PageID.1076 Page 9 of 14
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`require a total of fourteen hours, with four hours being dedicated to the initial technical
`tutorials, and with the remaining ten hours being dedicated to the Claim Construction
`portion of the hearing.
`The parties are still conferring as to a proposal on which patents should be
`grouped together for the Hearing.
`
`C. WITNESSES
`The parties do not intend to call any witnesses live at the hearing. The parties
`intend to submit expert declarations along with their claim construction briefing, as
`indicated in Appendix B.1 The parties are still conferring as to the approach and
`timing of any exchange of expert declarations.
`
`D. ORDER OF PRESENTATION
`The parties propose that the time for the technical tutorial be divided evenly
`between Plaintiff and Defendants, wherein Plaintiff’s technical presentation will
`precede the Defendants’ presentation.
`The parties further propose that the time for the Claim Construction portion of
`the hearing also be divided evenly between Plaintiff and Defendants’ presentation,
`wherein Plaintiff’s Claim Construction presentation will precede the Defendants’
`
`1 ZTE objects to BNR’s identification of Dr. Madisetti in light of the Court’s Order
`Granting ZTE’s Protective Order Preventing BNR From Using Dr. Vijay Madisetti As
`An Expert Against ZTE (Case No. 18-cv-01786-CAB-BLM, D.I. 73). As set forth in
`ZTE’s Opposition to BNR’s Motion for Clarification (D.I. 76), the Order issued on
`April 12, 2019 and disqualifies Dr. Madisetti from being adverse to ZTE. ZTE has not
`waived any rights in the one week since the Order issued.
`
`BNR responds that ZTE has already waived any objection to BNR’s reliance on
`Dr. Madisetti for claim construction because (1) it never sought disqualification of Dr.
`Madisetti as an expert for issues relating to claim construction and invalidity and (2) it
`has known of BNR’s intent to rely on Dr. Madisetti since at least the initial exchange
`of preliminary constructions under Patent L.R. 4.1(b) and has never raised an objection
`until 7:00 PM on the day this filing is submitted (April 19, 2019).
`
`JOINT CLAIM CONSTRUCTION CHART,
`WORKSHEET, AND HEARING STATEMENT
`
`9
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`1 2 3 4 5 6 7 8 9
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`10
`11
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`25
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`
`se 3:18-cv-01784-CAB-BLM Document 58 Filed 04/19/19 PagelD.1076 Page 9 of 14
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`require a total of fourteen hours, with four hours being dedicated to the initial technical
`tutorials, and with the remaining ten hours being dedicated to the Claim Construction
`portion of the hearing.
`The parties are still conferring as to a proposal on which patents should be
`grouped together for the Hearing.
`
`C. WITNESSES
`The parties do not intend to call any witnesses live at the hearing. The parties
`intend to submit expert declarations along with their claim construction briefing, as
`indicated in Appendix B.^ The parties are still conferring as to the approach and
`timing of any exchange of expert declarations.
`
`D. ORDER OF PRESENTATION
`The parties propose that the time for the technical tutorial be divided evenly
`between Plaintiff and Defendants, wherein Plaintiffs technical presentation will
`precede the Defendants’ presentation.
`The parties further propose that the time for the Claim Construction portion of
`the hearing also be divided evenly between Plaintiff and Defendants’ presentation,
`wherein Plaintiffs Claim Construction presentation will precede the Defendants’
`
`^ ZTE objects to BNR’s identification of Dr. Madisetti in light of the Court’s Order
`Granting ZTE’s Protective Order Preventing BNR From Using Dr. Vijay Madisetti As
`An Expert Against ZTE (Case No. 18-cv-01786-CAB-BEM, D.l. 73). As set forth in
`ZTE’s Opposition to BNR’s Motion for Clarification (D.l. 76), the Order issued on
`April 12, 2019 and disqualifies Dr. Madisetti from being adverse to ZTE. ZTE has not
`waived any rights in the one week since the Order issued.
`BNR responds that ZTE has already waived any objection to BNR’s reliance on
`Dr. Madisetti for claim construction because (1) it never sought disqualification of Dr.
`Madisetti as an expert for issues relating to claim construction and invalidity and (2) it
`has known of BNR’s intent to