IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`OPTIS CELLULAR TECHNOLOGY,
`LLC and PANOPTIS PATENT
`MANAGEMENT, LLC,
`
`Plaintiffs,
`
`vs.
`
`§
`§
`§
`§
`§
`§
`§
`
`§
`§
`§
`
`2:16-cv-0059-JRG-RSP
`Lead Case
`
`2:16-cv-0060-JRG-RSP
`Consolidated
`
`
`
`
`
`§ §
`
`§
`§
`
`§§
`
`KYOCERA CORPORATION, et al.,
`
`BLACKBERRY CORPORATION, et al.,
`
`Defendants.
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`On January 10, 2017, the Court held an oral hearing to determine the proper construction
`
`of the disputed claim terms in U.S. Patent Nos. 8,019,332 (the “’332 Patent”), 8,102,833 (the “’833
`
`Patent”) 8,174,506 (the “’506 Patent”), and 8,437,293 (the “’293 Patent”) (collectively the
`
`“Asserted Patents”). The Court has considered the parties’ claim construction briefing (Dkt. Nos.
`
`99, 100, and 101) and arguments. Based on the intrinsic and extrinsic evidence, the Court construes
`
`the disputed terms in this Memorandum Opinion and Order. See Phillips v. AWH Corp., 415 F.3d
`1
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`1303 (Fed. Cir. 2005); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
`
`
`
`BACKGROUND
`
`Plaintiffs Optis Cellular Technology, LLC and PanOptis Patent Management, LLC
`
`(“Plaintiffs”) assert the Asserted Patents against Defendants Blackberry Limited and Blackberry
`
`Corporation, (“Defendants”). Plaintiffs contend that three of the Asserted Patents, the ’332 Patent,
`
`the ’833 Patent and the ’293 Patent, are essential to the LTE standard for wireless communications.
`
`The ’506 Patent relates to the use of touch screens.
`
`The ’332 Patent relates to use of the Physical Downlink Control Channel (PDCCH) for
`
`communications between user equipment (UE) such as a mobile station and a base station in a
`
`cellular communication network. The Abstract of the ’332 Patent recites:
`
`A method for efficiently transmitting and receiving control information through a
`Physical Downlink Control Channel (PDCCH) is provided. When a User
`Equipment (UE) receives control information through a PDCCH, the received
`control information is set to be decoded in units of search spaces, each having a
`specific start position in the specific subframe. Here, a modulo operation according
`to a predetermined first constant value (D) is performed on an input value to
`calculate a first result value, and a modulo operation according to a predetermined
`first variable value (C) corresponding to the number of candidate start positions that
`can be used as the specific start position is performed on the calculated first result
`value to calculate a second result value and an index position corresponding to the
`second result value is used as the specific start position. Transmitting control
`information in this manner enables a plurality of UEs to efficiently receive
`PDCCHs without collisions.
`
`’332 Patent Abstract. More particularly, the ’332 Patent describes UE receiving control
`
`information through the PDCCH. Multiple UEs may utilize the PDCCH of a base station. A
`
`particular UE is provided with a search space of the PDCCH. A particular UE need not decode all
`
`possible PDCCH positions to receive its PDCCH information, but rather just the UE’s particular
`
`positions of the PDCCH provided in the UE’s search space. ’332 Patent Abstract, 2:18-31.
`
`
`
`
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`The ’833 Patent relates to a method of transmitting uplink control signals, in particular
`
`transmission acknowledgement (ACK) and not acknowledged (NACK) signals which indicate the
`
`receipt status of transmissions. The Abstract of the ’833 Patent recites:
`
`A method for transmitting uplink signals, which include ACK/NACK signals,
`control signals other than the ACK/NACK signals, and data signals, is disclosed.
`The method comprises serially multiplexing the control signals and the data signals;
`sequentially mapping the multiplexed signals within a specific resource region in
`accordance with a time-first mapping method, the specific resource region
`including a plurality of symbols and a plurality of virtual subcarriers; and arranging
`the ACK/NACK signals at both symbols near symbols to which a reference signal
`of the plurality of symbols is transmitted. Thus, the uplink signals can be
`transmitted to improve receiving reliability of signals having high priority.
`
`’833 Patent Abstract. More particularly, the ’833 Patent relates to multiplexing control signals
`
`(including ACK/NACK control signals and control signals other than ACK/NACK) and data
`
`signals. The multiplexed signals are mapped to a resource region. The ACK/NACK signals are
`
`mapped in a particular manner. ’833 Patent Abstract, 2:14-27.
`
`The ’293 Patent relates to scheduling uplink requests between a mobile terminal and a base
`
`station. The Abstract of the ’293 Patent recites:
`
`Aspects of the present invention relate to the scheduling of resources in a
`telecommunication system that includes a mobile terminal and base station. In one
`embodiment, the mobile terminal sends an initial scheduling request to a base
`station. Subsequently, the mobile terminal does not transmit a scheduling request
`to the base station unless and until a scheduling request triggering event is detected.
`
`’293 Patent Abstract. More particularly, the ’293 Patent relates to a method for transmitting
`
`scheduling requests from the mobile terminal to the base station to allocate resources of the base
`
`station. A mobile terminal may transmit a first scheduling request to the base station. The mobile
`
`terminal may then receive a scheduling grant from the base station and data may correspondingly
`
`be transmitted to the base station. A scheduling request triggering event may subsequently occur,
`
`
`
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`in which case the mobile station may transmit a second scheduling request to the base station. ’293
`
`Patent Abstract, 3:1-22.
`
`The ’506 Patent relates to touch screens and the movement of objects, such as icons, on
`
`touch screens. The Abstract of the ’293 Patent recites:
`
`A method of displaying an object and a terminal capable of implementing the same.
`The method includes displaying an object movable on a touchscreen of a terminal
`at a first position on the touchscreen; and if a first touch action is carried out on the
`object, fixing the object to the first position.
`
`’506 Patent Abstract. More particularly, a user may move an icon to a particular positon of the
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`screen in response to a first touch action, such as a drag and drop action. ’506 Patent 4:41-54,
`
`Figure 4. A second touch action releases the icon allowing the icon to be moved to another position
`
`on the screen. Id. at 5:57-61.
`
`
`
`LEGAL PRINCIPLES
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
`
`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
`
`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
`
`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
`
`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
`
`term is construed according to its ordinary and accustomed meaning as understood by one of
`
`
`
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`4
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
`
`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
`
`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
`
`(vacated on other grounds).
`
` “The claim construction inquiry. . . begins and ends in all cases with the actual words of
`
`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
`
`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
`
`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
`
`Cir. 1998)). A term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314.
`
`Other asserted or unasserted claims can also aid in determining the claim’s meaning, because claim
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`terms are typically used consistently throughout the patent. Id. Differences among the claim terms
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`can also assist in understanding a term’s meaning. Id. For example, when a dependent claim adds
`
`a limitation to an independent claim, it is presumed that the independent claim does not include
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`the limitation. Id. at 1314–15.
`
`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
`
`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
`
`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
`
`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
`
`interpreting the meaning of disputed claim language, particular embodiments and examples
`
`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
`
`
`
`
`5
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`v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
`
`improper to read limitations from a preferred embodiment described in the specification—even if
`
`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
`
`However, “because the prosecution history represents an ongoing negotiation between the PTO
`
`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
`
`history may be “unhelpful as an interpretive resource”).
`
`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
`
`record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
`
`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
`
`court understand the underlying technology and the manner in which one skilled in the art might
`
`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
`
`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
`
`testimony may aid a court in understanding the underlying technology and determining the
`
`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
`
`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
`
`
`
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
`
`construction:
`
`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 science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary fact finding must be reviewed for clear error on appeal.
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`A. Departing from the Ordinary Meaning of a Claim Term
`
`There are “only two exceptions to [the] general rule” that claim terms are construed
`
`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
`
`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
`
`in the specification or during prosecution.”1 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
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`1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
`
`1365 (Fed. Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`
`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
`
`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
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`lexicography or disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
`
`
`1 Some cases have characterized other principles of claim construction as “exceptions” to the general rule,
`such as the statutory requirement that a means-plus-function term is construed to cover the corresponding
`structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
`1367 (Fed. Cir. 2002).
`
`7
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
`
`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
`
`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
`
`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
`
`1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
`
`of a claim term by including in the specification expressions of manifest exclusion or restriction,
`
`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
`
`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
`
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
`
`B. Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA)2
`
`A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in
`
`relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
`
`. . . for performing a specified function” and that an act may be claimed as a “step for performing
`
`a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
`
`But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
`
`presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms,
`
`and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
`
`
`2 Because the applications resulting in the Asserted Patents were filed before September 16, 2012,
`the effective date of the AIA, the Court refers to the pre-AIA version of § 112.
`8
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`Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
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`ordinary skill in the art would understand the claim with the functional language, in the context of
`
`the entire specification, to denote sufficiently definite structure or acts for performing the function.
`
`See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015) (§
`
`112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
`
`sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
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`Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792
`
`F.3d at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons
`
`of ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
`
`Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
`
`to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
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`Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
`
`includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
`
`function . . . even if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
`
`When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
`
`materials, or acts described in the specification as corresponding to the claimed function and
`
`equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation
`
`involves multiple steps. “The first step . . . is a determination of the function of the means-plus-
`
`function limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
`
`(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
`
`specification and equivalents thereof.” Id. A “structure disclosed in the specification is
`
`‘corresponding’ structure only if the specification or prosecution history clearly links or associates
`
`that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
`
`
`
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`inquiry is not merely whether a structure is capable of performing the recited function, but rather
`
`whether the corresponding structure is “clearly linked or associated with the [recited] function.”
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`Id. The corresponding structure “must include all structure that actually performs the recited
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`function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
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`Cir. 2005). However, § 112 does not permit “incorporation of structure from the written description
`
`beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem.
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`Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
`
`For § 112, ¶ 6 limitations implemented by a programmed general purpose computer or
`
`microprocessor, the corresponding structure described in the patent specification must include an
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`algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
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`1349 (Fed. Cir. 1999). The corresponding structure is not a general purpose computer but rather
`
`the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
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`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`
`
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`
`
`
`
`
`AGREED TERMS
`
`In the Joint Claim Construction Chart, the parties agreed to the following terms:
`
`Term
`“search space of the PDCCH” / “search
`space” (’332 Patent Claims 1, 5, 6, and 10)
`“means for transmitting…to [a/the] base
`station” (’293 Patent Claim 20)
`
`Agreed Construction
`a region that the UE needs to attempt to
`decode to receive a PDCCH
`This claim term should be governed by 35
`U.S.C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: FIG. 7 (700 incl. “Transceiver”
`and antenna), col. 9:53-55, and/or equivalents
`thereof.
`
`Function: “transmitting to a/the base station”
`
`10
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`“means for receiving…from the base station”
`(’293 Patent Claim 20)
`
`“triggering event detection means for
`determining whether a scheduling request
`triggering event has occurred” (’293 Patent
`Claim 20)
`
`“means for comparing the transmit buffer
`status information transmitted to the base
`station with new information concerning the
`status of the transmit buffer” (’293 Patent
`Claim 21)
`
`This claim term should be governed by 35
`U.S.C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: FIG. 7 (700 incl. “Transceiver”
`and antenna), col. 8:23-24, 9:53-55, and/or
`equivalents thereof.
`
`Function: “receiving from the base station”
`This claim term should be governed by 35
`U.S. C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: a data processor executing
`software, as described in connection with data
`processor 706 and software 708 of FIG. 7 and
`at col. 9:48-53, implementing the algorithm
`described in FIG. 6b, in FIG. 5 and step 616
`of FIG. 6a, and at cols. 6:16-32, 6:36-45,
`6:57-7:3, 7:5-14, 7:42-8:2, 8:29-33, 8:41-9:10
`
`Function: “determining whether a scheduling
`request triggering event has occurred”
`This claim term should be governed by 35
`U.S.C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: a data processor executing
`software, as described in connection with data
`processor 706 and software 708 of FIG. 7 and
`at col. 9:48-53, implementing the algorithm
`described in FIG. 5, at cols. 6:16-26, 6:62-66,
`7:64-8:2, and the comparison described at
`8:57-60 (“comparing information in the
`buffer status report stored in step 612 to
`newly generated information reflecting the
`status of the current state of the transmit
`buffer”)
`
`Function: “comparing the transmit buffer
`status information transmitted to the base
`
`
`
`
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`“means for determining whether second data
`that is available for transmission from the
`mobile terminal to the base station has a
`higher priority than the first data” (’293
`Patent Claim 22)
`
`“means for determining whether the amount
`of time that has elapsed since the
`first SR was transmitted exceeds a threshold”
`(’293 Patent Claim 23)
`
`station with new information concerning the
`status of the transmit buffer”
`This claim term should be governed by 35
`U.S.C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: a data processor executing
`software, as described in connection with data
`processor 706 and software 708 of FIG. 7 and
`at col. 9:48-53, implementing the algorithm
`described in FIG. 5 and step 658 of FIG. 6b,
`and at cols. 6:36-45, 6:62-66, 7:61-8:2, 8:55-
`63
`
`Function: “determining whether second data
`that is available for transmission from the
`mobile terminal to the base station has a
`higher priority than the first data”
`This claim term should be governed by 35
`U.S.C. § 112(6) and the parties identify one
`or more of the following structure(s), act(s),
`or materials correspond to this claim term:
`
`Structure: a data processor executing
`software, as described in connection with data
`processor 706 and software 708 of FIG. 7 and
`at col. 9:48-53, implementing the algorithm
`described in FIG. 5 and step 662 of FIG. 6b,
`and at cols. 6:36-45, 6:62-66, 7:2-3, 9:7-10
`
`Function: “determining whether the amount
`of time that has elapsed since the first SR was
`transmitted exceeds a threshold”
`
`
`(Dkt. No. 102-1 at 1, 23-31.) Though not identified in the final joint claim chart, the parties
`
`identified the following term in the briefing as agreed:
`
`Term
`“a processor serially multiplexing first control
`signals and data signals…” (’833 Patent
`Claim 8)
`
`
`(Dkt. No. 99 at 15; Dkt. No. 100 at 18.)
`
`Agreed Construction
`No construction necessary.
`
`
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`Optis Cellular Ex 2006-p. 12
`Apple v Optis Cellular
`IPR2020-00465
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`DISPUTED TERMS
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`1. “set of PDCCH candidates within a search space” / “set of PDCCH candidates of the
`search space” [’332 Patent Claims 1, 5, 6, 10]
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`Plaintiffs’ Proposed Construction
`No construction necessary. PanOptis proposes
`that the term be construed in accordance with
`its plain and ordinary meaning.
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`Defendants’ Proposed Construction
`one or more UE-specific PDCCH positions
`within a region that the UE needs to attempt
`to decode to receive a PDCCH
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`The parties dispute whether the “set” has to be “UE-specific.” In other words, does the
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`search space for one UE have to be specific to that UE and without overlap with another UE?
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`Positions of the Parties
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`Plaintiffs contend that a set of PDCCH (Physical Download Control Channel) candidates
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`are simply candidates for PDCCH. Plaintiffs contend that the asserted claims provide details for
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`determining which set of PDCCH candidates to decode based on Control Channel Elements
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`(CCE), the total number of CCEs, and the claimed calculations / constants. (Dkt. No. 99 at 5.)
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`Plaintiffs contend that nothing in the claim requires the PDCCH candidates to be UE specific.
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`Plaintiffs contend that though the patent is designed to minimize collisions between the search
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`space of one UE and another, the patent explicitly contemplates that there is a non-zero probability
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`that two different UEs may use the same PDCCH. Specifically, for support, Plaintiffs point to the
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`statement that there is a “probability that UEs having two different UE IDs use the same PDCCH
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`decoding region” and the accompanying tables that list such probabilities. (Id. (quoting ’332 Patent
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`13:20-22 and citing 13:14-19:65 and accompanying tables).)
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`Defendants contend that the ’332 Patent makes clear that the allocating of different PDCCH
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`candidates to different UEs is the purpose of the invention. Specifically, Defendants contend that
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`the patent describes the “present invention” as relating to “efficiently” transmitting and receiving
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`Optis Cellular Ex 2006-p. 13
`Apple v Optis Cellular
`IPR2020-00465
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`information through the PDCCH. ’332 Patent 1:23-26. Defendants contend that the patent then
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`explains that information is “more efficiently” transmitted “if different PDCCH decoding regions
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`(or spaces) are allocated to different UEs” and the UEs “do not have an overlapping PDCCH
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`decoding region.” Id. at 5:43-47. Defendants also point to a portion of the passage:
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`These two methods are similar in that the overlapping PDCCH decoding region can
`be reduced if the search space of each UE has a different start position. Accordingly,
`an embodiment of the present invention suggests that different UE search spaces
`be set to have different start positions as described above to minimize overlapping
`of search spaces that UEs need to attempt to decode in order to receive a PDCCH.
`Reducing overlapping of PDCCH decoding regions in this manner increases the
`number of UEs to which the base station can simultaneously transmit control
`information through scheduling.
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`Id. at 6:1-11.
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`Defendants contend that the specification disparages prior art solutions in which UEs must
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`decode common (“overlapping”) PDCCH regions:
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`However, the number of combinations of PDCCH regions for transmission of
`control information may be great. Excessive UE processing performance may be
`required for the UE to decode all PDCCH regions.
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`Id. at 2:4-7; see also id. 5:27-40 (“The number of all possible regions … may be too great….”).
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`Defendants also point to the statements that “the number of UEs that are simultaneously
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`controllable is restricted” “if all different UEs decode the same limited PDCCH decoding region.”
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`Id. at 5:35-42. Defendants also point to the statement that “overlapping of PDCCH decoding
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`regions can be minimized.” Id. at 12:56-59. Defendants state that the Federal Circuit has found
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`that disparagement of alternatives excludes such alternatives from the scope of the claim. See
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`UltimatePointer, LLC v. Nintendo Co., Ltd., 816 F.3d 816, 822 (Fed. Cir. 2016).
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`As to Plaintiffs’ contention that there is a probability that overlap may occur, Defendants
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`contend that such inadvertent collisions do not negate the clear disclaimer of methods that decode
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`Optis Cellular Ex 2006-p. 14
`Apple v Optis Cellular
`IPR2020-00465
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`a common search space. (Dkt. No. 100 at 8.) Defendants contend that their construction does not
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`exclude the possibility of inadvertent overlap, it merely requires that each UE decode PDCCH
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`positions designed to be specific. (Id. (citing Negus Decl. as explaining how UE specific PDCCH
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`positions differ from a common search space even in light of possible collisions).) Defendants
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`contend that the specification teaches that notwithstanding the minimized possibility of inadvertent
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`overlap, the patent requires the use of UE-specific PDCCH candidates, rather than a search space
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`common across UEs. (Id. at 8-9.)
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`In reply, Plaintiffs contend that Defendants’ expert (Negus) states that for a search space
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`to be UE-specific, “the ‘region’ and the ‘PDCCH positions’ therein must be ‘UE-specific.’” (Dkt.
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`No. 101 at 1 (quoting Negus Decl.).) Plaintiffs contend that this restrictive reading directly
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`conflicts with the patent specification which is concerned with reducing overlap, not eliminating
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`it:
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`These two methods are similar in that the overlapping PDCCH decoding region can
`be reduced if the search space of each UE has a different start position.
`Accordingly, an embodiment of the present invention suggests that different UE
`search spaces be set to have different start positions as described above to minimize
`overlapping of search spaces that UEs need to attempt to decode in order to receive
`a PDCCH. Reducing overlapping of PDCCH decoding regions in this manner
`increases the number of UEs to which the base station can simultaneously transmit
`control information through scheduling.
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`’332 Patent 6:1-11 (emphasis added). Plaintiffs state that nowhere does the specification
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`contemplate complete elimination of overlap. Plaintiffs contend that Defendants have not pointed
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`to clear disavowal mandating complete elimination of overlap. (Dkt. No. 101 at 1-2.)
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`Plaintiffs contend that Defendants have created the term “common” search spaces, arguing
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`that the patent requires UE-specific PDCCH candidates, rather than a search space “common”
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`across UEs. Plaintiffs state that Defendants have defined “common” search space as one that has
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`Optis Cellular Ex 2006-p. 15
`Apple v Optis Cellular
`IPR2020-00465
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`“overlap” without a distinction as to the degree of overlap. (Id. at 2.) Plaintiffs contend that this
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`conflicts with the specification which describes using different start positions to reduce the
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`overlap. Id. Plaintiffs contend that Defendants argue “inadvertent overlap” may occur but that
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`Defendants do not state how this is somehow different from what Defendants call a “common”
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`search space. Plaintiff