throbber
Case 2:22-md-03034-TGB ECF No. 198, PageID.11542 Filed 11/20/23 Page 1 of 111
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIGATION
`
`2:22-MD-03034-TGB
`
`HON. TERRENCE G. BERG
`
`OPINION AND ORDER
`CONSTRUING DISPUTED
`CLAIM TERMS (ECF NOS. 127,
`131, 133, 150, 151, 154, 155)
`
`THIS MEMORANDUM
`OPINION AND ORDER
`RELATES TO ALL CASES
`
`MEMORANDUM OPINION AND ORDER
`
`The individual cases involved in this MDL matter are for patent
`
`infringement brought by Plaintiff Neo Wireless, LLC (“Neo” or “Plaintiff”)
`
`against Defendants Ford Motor Company, American Honda Motor Co.,
`
`Inc., Honda Development & Manufacturing of America, LLC, Volkswagen
`
`Group of America, Inc., Volkswagen Group Of America Chattanooga
`
`Operations, LLC, Nissan North America, Inc., Nissan Motor Acceptance
`
`Corporation a/k/a Nissan Motor Acceptance Company, LLC, Toyota Motor
`
`Corporation, Toyota Motor North America, Inc., Toyota Motor Sales,
`
`U.S.A., Inc., Toyota Motor Engineering & Manufacturing North America,
`
`Page 1 of 111
`
`VWGoA EX1046
`VWGoA v. Neo Wireless
`IPR2022-01539
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11543 Filed 11/20/23 Page 2 of 111
`
`Inc., Toyota Motor Credit Corporation, General Motors Company,
`
`General Motors, LLC, Tesla, Inc., Mercedes-Benz USA, LLC, and FCA
`
`US, LLC (collectively “Defendants”). In all nine cases, Neo alleges
`
`Defendants infringe six asserted patents related to LTE functionality.
`
`“LTE”, which stands for “Long Term Evolution” refers to a technical
`
`standard for wireless data transmission.
`
`On June 21, 2023, the Court held a hearing to determine the proper
`
`construction of the disputed claim terms in U.S. Pat. No. 8,467,366 (the
`
`“’366 Patent”); U.S. Pat. No. 10,833,908 (the “’908 Patent”); U.S. Pat. No.
`
`10,447,450 (the “’450 Patent”); U.S. Pat. No. 10,075,941 (the “’941 Patent”;
`
`U.S. Pat. No. 10,771,302 (the “’302 Patent”); and U.S. Pat. No. 10,965,512
`
`(the “’512 Patent”) (collectively “Asserted Patents”). The parties have
`
`submitted written briefs explaining their positions on how the disputed
`
`claim terms should be construed. ECF Nos. 127, 131, 133, 150, 151, 154,
`
`155.1
`
`Having reviewed the arguments made by the parties at the hearing
`
`and in their claim construction briefing, having considered the intrinsic
`
`evidence, and having made subsidiary factual findings about the extrinsic
`
` 
`1 Citations to the parties’ filings are to the filing’s number in the docket
`(ECF No.) and pin cites are to the PageID numbers assigned by the
`Court’s electronic filing system.
`Page 2 of 111
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` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11544 Filed 11/20/23 Page 3 of 111
`
`evidence, the Court construes the disputed claim terms identified by the
`
`parties, pursuant to the procedure set forth in Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370 (1996). See also Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Teva Pharm. USA,
`
`Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015).
`
`
`
` 
` 
`
`
`
`Page 3 of 111
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11545 Filed 11/20/23 Page 4 of 111
`
`TABLE OF CONTENTS
`
`BACKGROUND ................................................................................ 6
`I.
`II. APPLICABLE LAW ........................................................................ 15
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................... 23
`IV. THE PARTIES’ STIPULATED TERMS ........................................ 25
`V. CONSTRUCTION OF DISPUTED OR IDENTIFIED TERMS .... 29
`A. “the ranging signal exhibits a low peak-to-average power
`ratio in the time domain” ...................................................... 29
`B. “a ranging sequence selected from a set of ranging
`sequences” .............................................................................. 39
`C. “wherein the portion of the frequency band used for
`transmission of the random access signal does not include
`control channels” .................................................................... 43
`D. “associated with” .............................................................. 50
`E. “random access signal” .................................................... 54
`F. “time-frequency resource unit” ........................................ 62
`G. “the antenna transmission scheme comprising a
`transmission diversity scheme or a multiple-input multiple-
`output (MIMO) scheme” ........................................................ 71
`H. “the mobile station-specific transmission parameters
`indicate … a corresponding subchannel configuration … the
`corresponding subchannel configuration characterized by
`distributed subcarriers or localized subcarriers in the
`frequency domain” ................................................................. 75
`I. “probing signal” ................................................................. 81
`
` 
` 
`
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11546 Filed 11/20/23 Page 5 of 111
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`J. “the probing signal is configured to occupy a portion of
`spectrum in the uplink frequency band not designated for
`transmission of uplink control signals in the system” / “a
`receiver configured to receive a request for a probing signal
`from a base station in the system” / “the probing signal is
`configured to overlap, in the time domain, with uplink
`signals transmitted over an uplink frequency band by other
`mobile devices in the system” ................................................ 89
`K. “wherein the first plurality of subcarriers and the second
`plurality of subcarriers are received in at least one of the
`time slots” ............................................................................... 94
`L. “second pilots of a second type” ....................................... 98
`VI. CONCLUSION .............................................................................. 103
`
`
`
`
`
` 
` 
`
`Page 5 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11547 Filed 11/20/23 Page 6 of 111
`
`BACKGROUND
`I.
`Plaintiff alleges that Defendants infringe the ’366 Patent, the ’908
`
`Patent, the ’450 Patent, the ’941 Patent, the ’302 Patent, and the ’512
`
`Patent. Shortly before the start of the June 21, 2023 Hearing, the Court
`
`provided the parties with preliminary constructions with the aim of
`
`focusing the parties’ arguments and facilitating discussion.
`
`The ’366 Patent is titled “Methods And Apparatus For Random
`
`Access In Multi-carrier Communication Systems,” was filed on August 8,
`
`2011, and issued on June 18, 2013. The ’366 Patent relates to “methods
`
`and apparatus for random access in a multi-carrier system.” ’366 Patent
`
`at 2:40–41. In particular, “ranging signals are designed to improve
`
`receiving reliability and to reduce interference with other uplink signals,”
`
`and “improve the detection performance at the base station receiver.” Id.
`
`at 2:41–46.
`
`The Abstract of the ’366 Patent states:
`Methods and apparatus in a multi-carrier cellular
`wireless network with random access improve
`receiving reliability and reduce interference of
`uplink signals of a random access, while improving
`the detection performance of a base station receiver
`by employing specifically configured ranging
`signals.
`Claim 1 of the ’366 Patent is an illustrative claim and recites the
`
` 
` 
`
`Page 6 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11548 Filed 11/20/23 Page 7 of 111
`
`following elements (disputed or identified terms in italics):
`
`1.In a multi-cell orthogonal frequency division
`multiple access (OFDMA) wireless communication
`system comprising a plurality of base stations and
`mobile stations, a mobile station configured to
`communicate with a serving base station in a cell
`via a communication channel, the mobile station
`comprising:
`an apparatus configured to transmit a data
`signal to the serving base station in the cell over a
`data subchannel, wherein the data subchannel
`comprises a plurality of adjacent or non-adjacent
`subcarriers within the communication channel;
`and
`
`an apparatus configured to transmit a
`ranging signal to the serving base station in the cell
`over a ranging subchannel for random access,
`wherein:
`the ranging signal is formed from a ranging
`sequence selected from a set of ranging sequences
`associated with the cell for identifying the mobile
`station;
`the ranging signal lasts over a period of one
`or multiple
`orthogonal
`frequency division
`multiplexing (OFDM) symbols and the ranging
`signal exhibits a low peak-to-average power ratio in
`the time domain; and the ranging subchannel
`comprises at least one block of subcarriers within
`the communication channel and power levels of
`subcarriers at both ends of a block are set to zero.
`
`The ’941 Patent is titled “Methods And Apparatus For Multi-carrier
`
`Communication Systems With Adaptive Transmission And Feedback,”
`
`was filed on March 28, 2016, and issued on September 11, 2018. The ’941
`
` 
` 
`
`Page 7 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11549 Filed 11/20/23 Page 8 of 111
`
`Patent relates to methods and apparatus for “adaptive transmission of
`
`wireless communication signals are described, where MCS (modulation
`
`and coding scheme), coding rates, training pilot patterns, TPC
`
`(transmission power control) levels, and subchannel configurations are
`
`jointly adjusted to adapt to the channel conditions.” ’941 Patent at 2:33–
`
`38. The specification states this “[t]his adaptation maximizes the overall
`
`system capacity and spectral efficiency without wasting radio resources
`
`or compromising error probability performance.” Id. at 2:38–41.
`
`The Abstract of the ’941 Patent states:
`An arrangement is disclosed where in a multi-
`carrier communication system, the modulation
`scheme, coding attributes, training pilots, and
`signal power may be adjusted to adapt to channel
`conditions in order to maximize the overall system
`capacity and spectral efficiency without wasting
`radio resources or compromising error probability
`performance, etc.
`Claim 8 of the ’941 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`8. A link adaptation method by a mobile station
`served by a serving base station
`in an
`Orthogonal Frequency Division Multiplexing
`(OFDM)
`communication
`system,
`the
`communication system utilizing a transmission
`structure with time slots in the time domain and
`frequency subchannels in the frequency domain,
`the method comprising:
`Page 8 of 111
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` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11550 Filed 11/20/23 Page 9 of 111
`
`receiving a control message from the serving base
`station
`over a control channel,
`wherein:
`transmission
`contains
`the
`control message
`parameters specific to the mobile station for a
`subsequent transmission by the serving base
`station over a frequency subchannel to the
`mobile station in a time slot; and
`the mobile station-specific transmission parameters
`indicate an antenna transmission scheme and a
`corresponding subchannel configuration, the
`antenna transmission scheme comprising a
`transmission diversity scheme or a multiple-
`input multiple-output (MIMO) scheme and the
`corresponding
`subchannel
`configuration
`characterized by distributed subcarriers or
`localized subcarriers in the frequency domain;
`and
`receiving a data packet transmitted by the serving
`base station using the mobile station-specific
`transmission parameters over the frequency
`subchannel.
`
`The ’908 Patent and ’302 Patent effectively share the same
`
`specification, and are titled “Channel Probing Signal for a Broadband
`
`Communication System.” The ’302 Patent was filed on April 16, 2018, and
`
`issued on September 8, 2020. The ’908 Patent was filed on June 16, 2020,
`
`and issued on November 10, 2020. The ’908 Patent and ’302 Patent relate
`
`to a “broadband wireless communication system where both the Multi-
`
`Carrier (MC) and direct Sequence Spread Spectrum (DSSS) signals are
`
` 
` 
`
`Page 9 of 111
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11551 Filed 11/20/23 Page 10 of 111
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`intentionally overlaid together in both time and frequency domains.” ’908
`
`Patent at 2:42–45; ’302 Patent at 2:39–42. In particular, “[t]he system
`
`takes advantage of both MC and DSSS techniques to mitigate their
`
`weaknesses.” ’908 Patent at 2:45–47; ’302 Patent at 2:42–44.
`
`The Abstract of the ’908 Patent and the ’302 Patent state:
`In a broadband wireless communication system, a
`spread spectrum signal is intentionally overlapped
`with an OFDM signal, in a time domain, a
`frequency domain, or both. The OFDM signal,
`which inherently has a high spectral efficiency, is
`used for carrying broadband data or control
`information. The spread spectrum signal, which is
`designed to have a high spread gain for overcoming
`severe interference, is used for facilitating system
`functions such as initial random access, channel
`probing, or short messaging. Methods and
`techniques are devised to ensure that the mutual
`interference between the overlapped signals is
`minimized to have insignificant impact on either
`signal and that both signals are detectable with
`expected performance by a receiver.
`Claim 23 of the ’302 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`23. A mobile device in an Orthogonal Frequency
`Division Multiplexing (OFDM) communication
`system, the mobile device comprising:
`a receiver configured to receive a request for a
`probing signal from a base station in the system;
`a transmitter configured to form and transmit, in
`response to the received request, the probing
`
` 
` 
`
`Page 10 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11552 Filed 11/20/23 Page 11 of 111
`
`signal with a code sequence modulated in the
`frequency domain, wherein:
`the probing signal is configured to overlap, in the
`time domain, with uplink signals transmitted
`over an uplink frequency band by other mobile
`devices in the system; and
`the probing signal is configured to occupy a portion
`of spectrum in the uplink frequency band not
`designated for transmission of uplink control
`signals in the system.
`
`Claim 1 of the ’908 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`1.A mobile station comprising:
`a transmitter configured to:
`transmit, to a base station, a first uplink signal
`within a frequency band, wherein the first
`uplink signal is an orthogonal frequency division
`multiplexing (OFDM) signal and utilizes a
`frame format comprising a plurality of timeslots,
`each timeslot comprising a plurality of OFDM
`symbols;
`transmit, to the base station, a random access
`signal followed by a guard period in only a
`portion of the frequency band, wherein the
`random access signal includes a sequence
`associated with the base station, wherein a time
`duration of a combination of the random access
`signal and the guard period is greater than a
`time duration of at least one of the plurality of
`OFDM symbols; and
`a receiver configured to receive, from the base
`station, a response message.
`The ’450 Patent is titled “Method And System For Multi-carrier
`
` 
` 
`
`Page 11 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11553 Filed 11/20/23 Page 12 of 111
`
`Packet Communication With Reduced Overhead,” was filed on August 14,
`
`2017, and issued on October 15, 2019. The ’450 Patent generally relates
`
`“to wireless communication and, in particular, to multi-carrier packet
`
`communication networks.” ’450 Patent at 1:27–29. In particular, the
`
`specification discloses “[a] system and method for minimizing the control
`
`overhead in a multi-carrier wireless communication network that utilizes
`
`a time-frequency resource.” Id. at 2:45–47.
`
`The Abstract of the ’450 Patent states:
`A method and system for minimizing the control
`overhead
`in
`a multi-carrier
`wireless
`communication network that utilizes a time-
`frequency
`resource
`is disclosed.
`In
`some
`embodiments, one or more zones in the time-
`frequency resource are designated for particular
`applications, such as a zone dedicated for voice-
`over-IP
`(VoIP)
`applications. By
`grouping
`applications of a similar type together within a
`zone, a reduction in the number of bits necessary
`for mapping a packet stream to a portion of the
`time-frequency resource can be achieved. In some
`embodiments, modular coding schemes associated
`with the packet streams may be selected that
`further reduce the amount of necessary control
`information. In some embodiments, packets may be
`classified for transmission in accordance with
`application type, QoS parameters, and other
`properties. In some embodiments, improved control
`messages may be constructed to facilitate the
`control process and minimize associated overhead.
`Claim 7 of the ’450 Patent is an illustrative claim and recites the
`Page 12 of 111
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` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11554 Filed 11/20/23 Page 13 of 111
`
`following elements (disputed or identified terms in italics):
`
`7. A mobile device in a wireless packet system
`using a frame structure of multiple frames for
`transmission, each frame comprising a plurality
`of time intervals, each time interval comprising
`a plurality of orthogonal frequency division
`multiplexing (OFDM) symbols, and each OFDM
`symbol containing a plurality of frequency
`subcarriers, the mobile device configured to:
`receive an identifier from a base station in a cell in
`which the mobile device is operating; and
`receive a signal containing information from the
`base station over a segment of time-frequency
`resource, the segment having a starting time-
`coordinate
`and
`the
`segment
`frequency
`comprising N time-frequency resource units
`within a time interval, each unit containing a set
`of frequency subcarriers in a group of OFDM
`symbols, where N=2, 4, or 8; and
`recover the information from the received signal
`using the starting time-frequency coordinate and
`N in conjunction with the received identifier.
`
`The ’512 Patent is titled “Method And Apparatus Using Cell-specific
`
`And Common Pilot Subcarriers In Multi-carrier, Multi Cell Wireless
`
`Communication Networks,” was filed on September 4, 2020, and issued
`
`on March 30, 2021. The ’512 Patent relates to “pilot subcarriers [that] are
`
`divided into two different groups according to their functionalities, and
`
`hence their distinct requirements.” ’512 Patent at 3:10–12. In particular,
`
`“[t]he first group is called ‘cell-specific pilot subcarriers,’ and will be used
`
` 
` 
`
`Page 13 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11555 Filed 11/20/23 Page 14 of 111
`
`by the receiver 104 to extract information unique to each individual cell,”
`
`and “[t]he second group is termed ‘common pilot sub-carriers,’ and are
`
`designed to possess a set of characteristics common to all base stations of
`
`the system.” Id. at 3:17–27.
`
`The Abstract of the ’512 Patent states:
`A multi-carrier cellular wireless network (400)
`employs base stations (404) that transmit two
`different groups of pilot subcarriers: (1) cell-specific
`pilot subcarriers, which are used by a receiver to
`extract information unique to each individual cell
`(402), and (2) common pilots subcarriers, which are
`designed to possess a set of characteristics common
`to all the base stations (404) of the system. The
`design criteria and transmission formats of the cell-
`specific and common pilot subcarriers are specified
`to enable a receiver to perform different system
`functions. The methods and processes can be
`extended to other systems, such as those with
`multiple antennas in an individual sector and those
`where
`some
`subcarriers
`bear
`common
`network/system information.
`Claim 15 of the ’512 Patent is an illustrative claim and recites the
`
`following elements (disputed or identified terms in italics):
`
`15. An orthogonal frequency division multiple
`access (OFDMA)-compatible mobile station that
`uses subcarriers in a frequency domain and time
`slots in a time domain, the OFDMA-compatible
`mobile station comprising:
`at least one antenna; and
`a receiver; and
`the at least one antenna and the receiver are
`Page 14 of 111
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` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11556 Filed 11/20/23 Page 15 of 111
`
`configured to:
`receive first pilots of a first type on a first
`plurality of subcarriers, wherein the first pilots are
`cell-specific pilots; and
`receive second pilots of a second type and data
`on a second plurality of subcarriers, wherein the
`first plurality of subcarriers and the second
`plurality of subcarriers are received in at least one
`of the time slots;
`wherein at least some subcarriers of the first
`plurality of subcarriers or the second plurality of
`subcarriers are beam-formed; and
`the receiver is further configured to:
`recover the data using channel estimates
`from at least the second pilots; and
`recover cell-specific information using the
`cell-specific pilots;
`wherein the second type is different than the
`first type and wherein the first pilots do not
`interfere with the second pilots.
`
`II. APPLICABLE LAW
`A. Claim Construction
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
`
`define the invention to 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);
`
` 
` 
`
`Page 15 of 111
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11557 Filed 11/20/23 Page 16 of 111
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 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 ordinary skill in the art at the time of the invention
`
`in the context of the patent. Phillips, 415 F.3d 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) (quotation marks
`
`omitted) (“There is a heavy presumption that claim terms carry their
`
`accustomed meaning in the relevant community at the relevant time.”)
`
`cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
`
`“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)) overruled on other grounds by
`
` 
` 
`
`Page 16 of 111
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11558 Filed 11/20/23 Page 17 of 111
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). First, 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 terms are typically used consistently
`
`throughout the patent. Id. Differences among the claim terms 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 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).
`
`This is true because a patentee may define his own terms, give a claim
`
`term a different meaning than the term would otherwise possess, or
`
` 
` 
`
`Page 17 of 111
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`

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`Case 2:22-md-03034-TGB ECF No. 198, PageID.11559 Filed 11/20/23 Page 18 of 111
`
`disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these
`
`situations, the inventor’s lexicography governs. Id.
`
`The specification may also resolve ambiguous claim terms “where
`
`the ordinary and accustomed meaning of the words used in the claims lack
`
`sufficient clarity to permit the scope of the claim to be ascertained from
`
`the words alone.” Teleflex, Inc., 299 F.3d at 1325. 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. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
`
`(quoting Constant v. Advanced Micro-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 patentee intended the
`
`claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
`
`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
`
` 
` 
`
`Page 18 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11560 Filed 11/20/23 Page 19 of 111
`
`history provides evidence of how the U.S. Patent 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 specification
`
`and thus is less useful for claim construction purposes.” Id. at 1318; see
`
`also Athletic Alts., 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
`
` 
` 
`
`Page 19 of 111
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`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11561 Filed 11/20/23 Page 20 of 111
`
`pertinent field, but an expert’s conclusory, unsupported assertions as to a
`
`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less
`
`reliable than the patent and its prosecution history in determining how to
`
`read claim terms.” Id. The Supreme Court has 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 factfinding must be reviewed
`for clear error on appeal.
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
`
`B. 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
`
` 
` 
`
`Page 20 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11562 Filed 11/20/23 Page 21 of 111
`
`in the specification or during prosecution.”2 Golden Bridge Tech., Inc. v.
`
`Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony
`
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also
`
`GE Lighting Sols., 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 lexicography or disavowal are “exacting.” GE
`
`Lighting Sols., 750 F.3d at 1309.
`
`To act as his own lexicographer, the patentee must “clearly set forth
`
`a definition of the 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.
`
`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
`
` 
`2 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).
`Page 21 of 111
`
` 
` 
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11563 Filed 11/20/23 Page 22 of 111
`
`“clear and unmistakable” surrender. Cordis Corp. v. Bos. 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).
`
`C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / §
`112(b) (AIA)
`Patent claims must particularly point out and distinctly claim the
`
`subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. A claim,
`
`when viewed in light of the intrinsic evidence, must “inform those skilled
`
`in the art about the scope of the invention with reasonable certainty.”
`
`Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it
`
`does not, the claim fails § 112, ¶ 2 and is therefore invalid as indefinite.
`
`Id. at 901. Whether a claim is indefinite is determined from the
`
`perspective of one of ordinary skill in the art as of the time the application
`
`for the patent was filed. Id. at 911. As it is a challenge to the validity of a
`
` 
` 
`
`Page 22 of 111
`
`

`

`Case 2:22-md-03034-TGB ECF No. 198, PageID.11564 Filed 11/20/23 Page 23 of 111
`
`patent, the failure of any claim in suit to comply with § 112 must be shown
`
`by clear and convincing evidence. BASF Corp. v. Johnson Matthey Inc.,
`
`875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefini

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