IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELA WARE
`
`TQ DELTA, LLC,
`
`Plaintiff,
`
`v.
`
`2WIRE, INC.,
`
`Defendant.
`
`TQ DELTA, LLC,
`
`Plaintiff,
`
`V.
`
`ZYXEL COMMUNICATIONS, INC
`and
`ZYXEL COMMUNICATIONS
`CORPORATION,
`
`Defendants.
`
`TQ DELTA, LLC,
`
`Plaintiff,
`
`V.
`
`ADTRAN, INC.,
`
`Defendant.
`
`Civil Action No. 1:13-cv-01835-RGA
`
`Civil Action No. 1:13-cv-02013-RGA
`
`Civil Action No. 1:14-cv-00954-RGA
`
`CommScope, Inc.
`IPR2023-00066, Ex. 1018
`Page 1 of 23
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`ADTRAN, INC.,
`
`Plaintiff,
`
`v.
`
`TQ DELTA, LLC,
`
`Defendant.
`
`Civil Action No. 1 :15-cv-00121-RGA
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`i
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`CommScope, Inc.
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`MEMORANDUM OPINION
`
`Brian E. Farnan, Esq., FARNAN LLP, Wilmington, DE; Michael J. Farnan, Esq., FARNAN
`LLP, Wilmington, DE; Peter J. McAndrews, Esq., MCANDREWS, HELD & MALLOY,
`Chicago, IL (argued); Rajendra A. Chiplunkar, Esq., MCANDREWS, HELD & MALLOY,
`Chicago, IL (argued).
`
`Attorneys for Plaintiff
`
`Colm F. Connolly, Esq., MORGAN LEWIS & BOCKIUS LLP, Wilmington, DE; Jody
`Barillare, Esq., MORGAN LEWIS & BOCKIUS LLP, Wilmington, DE; Brett M. Schuman, Esq.
`(argued), GOODWIN PROCTOR LLP, San Francisco, CA; Rachel M. Walsh, Esq., GOODWIN
`PROCTOR LLP, San Francisco, CA (argued); David L. Simson, Esq., GOODWIN PROCTOR
`LLP, San Francisco, CA.
`
`Attorneys for Defendant 2WIRE, Inc.
`
`James S. Green, Sr., Esq., SEITZ VAN OGTROP, & GREEN, P.A., Wilmington, DE; Jared T.
`Green, Esq., SEITZ VAN OGTROP, & GREEN, P.A., Wilmington, DE.
`
`Attorneys for Defendant Zhone Technologies, Inc.
`
`Kenneth L. Dorsney, Esq., MORRIS JAMES LLP, Wilmington, DE.
`
`Attorney for Defendants Adtran Inc. and Zyxel Communications Inc.
`
`I
`
`I
`
`December~, 2017
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`CommScope, Inc.
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`~~.~
`ANDREWS, U.S. dISTRICT JUDGE:
`
`Presently before the Court is the issue of claim construction of multiple terms in U.S.
`
`Patent Nos. 7,831,890 ("the '890 patent"), 7,836,381 ("the '381 patent"), 7,844,882 ("the '882
`
`patent"), 8,276,048 ("the'048 patent"), 8,495,473 ("the '473 patent"), and 8,607,126("the'126
`
`patent"). The Court has considered the Parties' Joint Claim Construction Brief. (Civ. Act. No.
`
`13-01835-RGA, D.I. 353; Civ. Act. No. 13-01836-RGA, D.I. 320; Civ. Act. No. 13-02013-RGA,
`
`D.I. 339; Civ. Act. No. 14-00954-RGA, D.I. 194; Civ. Act. No. 15-00121-RGA; D.I. 196). 1 The
`
`Court heard oral argument on November 13, 2017. (DJ. 430 ("Tr.")). After argument, the
`
`parties agreed to dismissal of the case against Zhone. (Civ. Act. No. 13-1836-RGA; DJ. 373).
`
`I.
`
`BACKGROUND
`
`The patents-in-suit represent "Family 3" of the patents that Plaintiff has asserted against
`
`Defendants, and they all share a common specification. (DJ. 353 at 1 n.1 ). The parties divide
`
`the contested patents into ten patent families. (e.g. D.I. 280). The Family 3 patents, at issue
`
`here, relate to allocating shared memory used by a digital subscriber line ("DSL") transceiver, or
`
`more specifically, allocating shared memory between an interleaver and deinterleaver of a DSL
`
`transceiver.
`
`II.
`
`LEGAL STANDARD
`
`"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. AWHCorp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en bane) (internal quotation marks omitted). '" [T]here is no magic formula or
`
`catechism for conducting claim construction.' Instead, the court is free to attach the appropriate
`
`weight to appropriate sources 'in light of the statutes and policies that inform patent law."'
`
`1 Unless otherwise specifically noted, all references to the docket refer to Civil Action No. 13-1835-RGA.
`
`I
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`I I
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`Soft View LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips,
`
`415 F.3d at 1324) (alteration in original). When construing patent claims, a court considers the
`
`literal language of the claim, the patent specification, and the prosecution history. Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
`
`(1996). Of these sources, "the 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."
`
`Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
`
`"[T]he words of a claim are generally given their ordinary and customary meaning ....
`
`[Which is] the meaning that the term would have to a person of ordinary skill in the art in
`
`question at the time of the invention, i.e., as of the effective filing date of the patent application."
`
`Id. at 1312-13 (citations and internal quotation marks omitted). "[T]he ordinary meaning of a
`
`claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321
`
`(internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
`
`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words." Id. at 1314.
`
`When a court relies solely upon the intrinsic evidence-the patent claims, the
`
`specification, and the prosecution history-the court's construction is a determination oflaw.
`
`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also
`
`make factual findings based upon consideration of extrinsic evidence, which "consists of all
`
`evidence external to the patent and prosecution history, including expert and inventor testimony,
`
`dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist
`
`the court in understanding the underlying technology, the meaning of terms to one skilled in the
`
`2
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`CommScope, Inc.
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`art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less
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`useful in claim construction than the patent and its prosecution history. Id.
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`"A claim construction is persuasive, not because it follows a certain rule, but because it
`
`defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa 'per
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`Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would
`
`exclude the inventor's device is rarely the correct interpretation." Osram GMBH v. Int 'l Trade
`
`Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).
`
`III.
`
`TERMS FOR CONSTRUCTION
`
`The asserted patents claim both an apparatus and a method for allocating shared memory
`
`used by a DSL transceiver. Claim 5 of the '890 patent is representative and reads as follows:
`
`1. A method of allocating shared memory in a transceiver comprising:
`
`transmitting or receiving, by the transceiver, a message during
`initialization specifying a maximum number of bytes of memory that are
`available to be allocated to a deinterleaver;
`
`determining, at the transceiver, an amount of memory required by the
`deinterleaver to deinterleave a first plurality of Reed Solomon (RS) coded
`data bytes within a shared memory;
`
`allocating, in the transceiver, a first number of bytes of the shared memory
`to the deinterleaver to deinterleave a first plurality of Reed Solomon (RS)
`coded data bytes for reception at a first data rate, wherein the allocated
`memory for the deinterleaver does not exceed the maximum number of
`bytes specified in the message;
`
`allocating, in the transceiver, a second number of bytes of the shared
`memory to an interleaver to interleave a second plurality of RS coded data
`bytes transmitted at a second data rate; and
`
`deinterleaving the first plurality of RS coded data bytes within the shared
`memory allocated to the deinterleaver and interleaving the second
`plurality of RS coded data bytes within the shared memory allocated to the
`interleaver,
`
`3
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`wherein the shared memory allocated to the deinterleaver is used at the
`same time as the shared memory allocated to the interleaver.
`
`(' 890 patent, claim 5) (disputed terms italicized). Claims I and I 0 of the '126 patent are further
`
`representative and read as follows:
`
`I. An apparatus comprising:
`
`a multicarrier communications transceiver that is configured to perform a first
`interleaving function associated with a first latency path and perform a second
`interleaving function associated with a second latency path, the multicarrier
`communications transceiver being associated with a memory,
`
`wherein the memory is allocated between the first interleaving function and the
`second interleaving function in accordance with a message received during an
`initialization of the transceiver and wherein at least a portion of the memory may
`be allocated to the.first interleaving function or the second interleaving function
`at any one particular time depending on the message.
`
`10. An apparatus comprising:
`
`a multicarrier communications transceiver that is configured to generate a
`message during an initialization of the transceiver, perform a first deinterleaving
`function associated with a first latency path, and perform a second deinterleaving
`function associated with a second latency path, the transceiver being associated
`with a memory,
`
`wherein at least a portion of the memory may be allocated to the first
`deinterleaving function or the second deinterleaving function at any one particular
`time and wherein the generated message indicates how the memory has been
`allocated between the first deinterleaving/unction and the second deinterleaving
`function.
`
`('126 patent, claims 1, 10) (disputed terms italicized).
`
`1. "transceiver"
`
`a. Plaintiff's proposed construction: "communications device capable of transmitting and
`receiving data wherein the transmitter portion and receiver portion share at least some
`common circuitry"
`
`b. Defendants' proposed construction: "communications device capable of transmitting and
`receiving data"
`
`c. Court's construction: to be announced
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`I
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`The parties agree that their Family 3 arguments for "transceiver" are the same as those
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`made for Families 1 and 2. (Tr. at 18:14-22). Therefore, I will construe transceiver as I do for
`
`Families 1 and 2.
`
`2. "shared memory"
`
`a. Plaintiff's proposed construction: "a common memory space used by at least two
`functions, where particular memory cells within the common memory space can be used
`by either one of the functions"
`
`b. Defendants' proposed construction: "single common memory in a transceiver used by at
`least two functions corresponding to at least two latency paths"
`
`c. Court's construction: "common memory used by at least two functions, where a portion
`of the memory can be used by either one of the functions"
`
`Plaintiff argues that "shared memory" should be construed as "a common memory space."
`
`(D.1. 353 at 42). The claims do not refer to "a common memory space," but the specification does
`
`at times refer to "common memory space." ('890 patent, 8:2-5). A patentee can be its own
`
`lexicographer, but to do so, the patentee "must clearly set forth a definition of the disputed claim
`
`term other than its plain and ordinary meaning." Thorner v. Sony Comput. Entm 't Am. LLC, 669
`
`F.3d 1362, 1365 (Fed. Cir. 2012). As Defendants note, the specification never actually defines
`
`"common memory space." (D.I. 353 at 46). I therefore do not adopt the term "common memory
`
`space." I instead use the agreed-upon "common" to modify "memory."
`
`Defendants argue that "common memory" is "single." (D.I. 353 at 46). As evidence,
`
`Defendants point to the specification, which refers to "a" and "the" shared memory. (D.1. 353 at
`
`38, 47). But the Federal Circuit has held that "a" or "an" is presumed to mean "one or more."
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). Thus, this
`
`language is not dispositive. As further evidence, Defendants point to Figure 1 of the '890 patent,
`
`which depicts just one "shared memory." (Tr. at 42:7-10). Indeed, the embodiment highlighted
`
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`by Defendants shows just one memory. However, "claims of the patent will not be read
`
`restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
`
`words or expressions of manifest exclusion or restriction." Liebel-Flarsheim Co. v. Medrad, Inc.,
`
`358 F.3d 898, 906 (Fed. Cir. 2004).
`
`Nothing in the patent demonstrates a clear intention to limit "common memory" to a
`
`"single" memory. Plaintiff raises the concern that including "single" in the construction might
`
`limit "shared memory" to a "single" memory "module," "block," or "chip." (D.I. 353 at 35). As
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`discussed at oral argument, memory need not necessarily be a "single" memory "module,"
`
`"block," or "chip" to be "shared." (Tr. at 44:1-50:13). For example, two people can share a
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`"single" large pizza or two small pizzas to the same effect. Defendants agree that "scientifically,"
`
`it does not matter if "common memory" comprises one physical memory structure or more than
`
`one physical memory structure. (Tr. 44:19-45:2). As a result, my construction does not use
`
`"single" to modify "common memory."
`
`Plaintiff urges that my construction must clarify that "common memory" "can be used by
`
`either one of the functions." (D.I. 353 at 35). To support its contention, Plaintiff points to two
`
`types of shared memory that are unlike the shared memory described in the patents. First, Plaintiff
`
`notes that one type of shared memory involves functions in a single transceiver that use the
`
`memory for "interprocess communication." (Tr. at 21 :5-22). Second, Plaintiff notes that yet
`
`another type of shared memory, known as "ping pang" memory, involves transmission in a single
`
`direction and uses a shared memory "exclusively for an interleaver" or "for a deinterleaver" at any
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`one time. (Tr. at 21:23-22:18). Neither of these memories is like the "shared memory" at hand.
`
`Defendants do not contest that for these patents, at any one time, a certain part of the memory can
`
`be used by one function or the other, but not both. (D.I. 353 at 44, 48). Accordingly, in order to
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`read out these other types of shared memory, I will include Plaintiffs language clarifying that
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`common memory "can be used by either one of the functions."
`
`Separately, Plaintiff argues that my construction should include a reference to "particular
`
`memory cells." (D.I. 353 at 35-36). But neither the specification nor the claims refers to "memory
`
`cells." Moreover, the jury will not have difficulty understanding "portion of the memory" to be
`
`physical memory. As a result, I will not include "memory cells" in my construction.
`
`Next, the parties dispute whether "common memory" must be "in a transceiver." (D.I. 353
`
`at 35). Some of the asserted claims, including claim 5 of the '890 patent, specifically dictate that
`
`"shared memory" is "in a transceiver." Others, including claim 13 of the '882 patent, do not. The
`
`doctrine of claim differentiation provides that "different words or phrases used in separate claims
`
`are presumed to indicate that the claims have different meanings and scopes." Andersen Corp. v.
`
`Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007).2 Moreover, for the latter set of
`
`claims, including "in a transceiver" in the construction would be redundant. Thus, my construction
`
`does not mandate that "common memory" be in a transceiver when being in a transceiver is not
`
`explicitly claimed.
`
`Finally, the parties dispute whether the functions "correspond[] to at least two latency
`
`paths." (D.I. 353 at 35). Like the prior dispute, some claims refer to functions associated with
`
`latency paths, and others do not. (' 126 patent, claim 1; '890 patent, claim 5). Thus, in accordance
`
`with the doctrine of claim differentiation, my construction does not mandate that the functions
`
`"correspond[] to at least two latency paths."
`
`2 The Federal Circuit has applied the doctrine of claim differentiation both within a single patent and within
`a family of patents. In Andersen Corp., the court analyzed claim differentiation within the "Group I patents," which
`all stemmed from continuations based on a single application. Andersen Corp., 474 F.3d at 1368-70. Likewise, the
`Family 3 patents share a specification.
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`7
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`3. "amount of memory"
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`a. Plaintiff's proposed construction: plain meaning or "number of units of memory"
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`b. Defendants' proposed construction: "number of bytes of memory"
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`c. Court's construction: plain meaning
`
`The parties agree that "amount of memory" indicates a quantity of memory. (D.I. 353 at
`
`50). They dispute whether this memory must be measured in "bytes." (Id. at 50-51).
`
`Defendants argue that the intrinsic record refers to memory only in "bytes," and does not
`
`refers to "units of memory" or other measurements of memory. (D.I. 353 at 51-53).
`
`Plaintiff, on the other hand, argues that "amount of memory" can be specified using any
`
`number of units, includes bits, kilobytes, or words. (D.I. 353 at 50-51; Tr. at 56:6-9).
`
`Furthermore, Plaintiff notes that the claims refer to both "amount of memory" and "bytes of
`
`memory." (Tr. at 56: 10-23 ). Because the claims use different terms internally, Plaintiff argues,
`
`one must infer that a patentee intended to "reflect a differentiation in the meaning of those
`
`terms." (D.I. 353 at 53); Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381
`
`F.3d 1111, 1119 (Fed. Cir. 2004). Thus, Plaintiff contends that "amount of memory" must not
`
`be limited to "bytes of memory."
`
`Ultimately, the parties agree that "amount of memory" will either be a "number of bytes"
`
`or a unit that is "probably convertible" to bytes. (Tr. at 61 :20-22). Nonetheless, the term is
`
`broader than "bytes," and the jury will not have trouble deciding what is or is not an "amount of
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`memory." Accordingly, I adopt a plain meaning construction. The plain meaning is not limited
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`to bytes, and Defendants cannot argue that it is.
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`4. "the shared memory allocated to the [deinterleaver I interleaver] is used at the same
`time as the shared memory allocated to the [interleaver I deinterleaver]"
`
`a. Plaintiff's proposed construction: "information is stored in, read from, or written to the
`shared memory allocated to the deinterleaver at the same time that information is stored
`in, read from, or written to the shared memory allocated to the interleaver"
`
`b. Defendants' proposed construction: "the deinterleaver reads from or writes to its
`respective allocation of the shared memory at the same time as the interleaver reads from
`or writes to its respective allocation of the shared memory"
`
`c. Court's construction: "the deinterleaver reads from, writes to, or holds information for
`deinterleaving in its respective allocation of the shared memory at the same time as the
`interleaver reads from, writes to, or holds information for interleaving in its respective
`allocation of the shared memory"
`
`The parties agreed upon a construction for this term. (D.I. 431at109:22-110:5; D.I. 426-
`
`1, Exh. A at 5). Accordingly, I adopt their agreed-upon construction.
`
`5. "latency path"
`
`a. Plaintiff's proposed construction: "a transmit or receive path, each path associated with a
`latency"
`
`b. Defendants' proposed construction: "distinct transmit or receive path"
`
`c. Court's construction: "transmit or receive path, wherein each path has a distinct, but not
`necessarily different, latency or delay"
`
`The parties agreed upon a construction for this term. (D.I. 431 at 109:22-110:5; D.I. 426-
`
`1, Exh. A at 5). Accordingly, I substantially adopt their agreed-upon construction.
`
`6. "wherein at least a portion of the memory may be allocated to the [first] interleaving
`function or the [second interleaving I deinterleaving] function at any one particular
`time depending on the message"
`
`a. Plaintiff's proposed construction: "at least some particular memory cells within the
`memory can be allocated for use either by the [first] interleaving function or [second
`interleaving I deinterleaving] function at any one particular time depending on the
`message"
`
`b. Defendants' proposed construction: "wherein at least a number of bytes within the
`memory may be allocated to the [first] interleaving function or the [second interleaving I
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`deinterleaving] function at any one particular time depending on the amounts of memory
`specified in the message"
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`c. Court's construction: plain meaning
`
`The parties first dispute whether a "portion of the memory" should be defined by "some
`
`particular memory cells within the memory" or "a number of bytes within the memory." This
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`has already been resolved. Given that I gave "portion of the memory" a plain meaning
`
`construction, I give it a plain meaning construction in this context, as well.
`
`The parties' next dispute is whether the claimed "message" must specify "amounts of
`
`memory." Defendants support their contention that this must be the case by pointing to the claim
`
`language, the specification, and the prosecution history. (D.I. 353 at 72-73, 76-77).
`
`The claim language does not require that the message specify amounts of memory. The
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`disputed term's language requires that the amount of memory depend on the message's contents,
`
`but it does not require that the message's contents themselves actually specify amounts of
`
`memory.
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`The specification likewise does not require that the message specify amounts of memory.
`
`Defendants correctly note that several embodiments in the specification provide that the message
`
`includes at least the amount of memory. (See, e.g., '126 patent at 8:62-9:6; D.I. 353 at 72, 76-
`
`77). But Plaintiff points out that at least one example refers to what a transceiver "must know"
`
`rather than specifying an amount of memory in the message. (' 126 patent at 7:62-8:22; D.I. 353
`
`at 75). Defendants, in turn, argue that this example later explains that "a first transceiver could
`
`send a message to a second transceiver ... containing the following information," which
`
`includes "Max Interleaver Memory for [each] latency path" and "Maximum total/shared memory
`
`for all latency paths." (' 126 patent at 8:12-22; D.I. 353 at 76-78). However, this example is
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`merely inclusive of a message specifying memory. It does not require a message specifying
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`memory.
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`The prosecution history can be broken down into the examiner's statement in the notice
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`of allowance for the '890 patent and the patentee's own amendments. The parties acknowledge
`
`that the '890 patent is the parent patent of the Family 3 patents. (Tr. at 89:4, 96:14-16).
`
`In his notice of allowance for the '890 patent, the examiner stated that the only "distinct
`
`features" in the allowable subject matter were "specifying a maximum number of bytes available
`
`to be allocated to [an interleaver I deinterleaver] in a transmitted or received message,
`
`determining the amount of memory required by the [interleaver I deinterleaver], and then
`
`allocating the bytes of a shared memory to the [interleaver I deinterleaver] wherein the bytes
`
`allocated do not exceed the maximum number of available bytes specific in the message." (D.I.
`
`312-8, Exh. H at Al 80). This statement counts for very little, because the patentee need not
`
`correct statements made in conjunction with an allowance. See Salazar v. Procter & Gamble
`
`Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005) ("unilateral statements by an examiner do not give
`
`rise to a clear disavowal of claim scope by an applicant").
`
`Defendants emphasize that the examiner's statement followed the applicant's own
`
`amendment. (D.I. 312-8, Exh. H atA168-71; D.I. 353 at 20-21, 86-87). In a final rejection, the
`
`examiner cancelled all 45 original claims. (D.I. 312-8, Exh. Hat A147-63). The cancelled
`
`claims included "[a] system for sharing resources in a transceiver ... further comprising means
`
`for receiving from another transceiver information that is used to determine a maximum amount
`
`of shared memory that can be allocated." (Id. at A142). Following an interview, the applicant
`
`added eight new claims, two of which were independent claims. (Id. at A647-50). These
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`independent claims covered "[a] method of allocating shared memory in a transceiver
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`comprising ... transmitting or receiving, by the transceiver, a message during initialization
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`indicating a maximum number of bytes of memory that can be allocated to an [interleaver I
`
`deinterleaver]" and allocating a number of bytes to a deinterleaver and a number of bytes to an
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`interleaver, "wherein the shared memory is used to simultaneously interleave" the two pluralities
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`of allocated bytes. (Id. at Al 69-70). The examiner then allowed the claims, explaining that
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`"[t]he closest prior art ... discloses sharing a memory between the interleavers and
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`deinterleavers ... [but] fails to suggest limiting the memory allocated to the interleaver to a
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`maximum number of bytes available that was specified in a transmitted or received message."
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`(Id. at Al 80).
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`To find a prosecution history disclaimer requires a "clear and unmistakable disavowal of
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`claim scope during prosecution." Purdue Pharma. L.P. v. Endo Pharm. Inc., 438 F.3d 1123,
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`1136 (Fed. Cir. 2006). The patentee's amendment does not constitute a "clear and unmistakable
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`disavowal of scope." The examiner cancelled 45 claims, and the patentee added eight new
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`claims, which included numerous limitations but little explanation. (D.I. 312-8, Exh. Hat Al48-
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`71). The Examiner Interview Summary Record does not provide any details about the interview
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`that occurred between final rejection and the patentee's amendment. (D.I. 312-8, Exh. Hat
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`Al65). The patentee's remarks accompanying the amendment state only that the new claims
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`"more particularly claim[] certain aspects of the invention" and that "it was agreed [in the
`
`interview] that the proposed amendments to the claims 'were a step in the right direction. "'3 The
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`examiner's Notice of Allowance might specify a point of novelty, but nothing leading up to that
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`unilateral statement gives a "clear and unmistakable" indication that the patentee meant to
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`disavow all "messages" other than those specifying amounts of memory.
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`3 Applicant Arguments/Remarks Made in an Amendment, U.S. Patent App. No. 11/246,163, at 1 (Dec. 17,
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`2009).
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`12
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`Even if the patentee's amendment does constitute a "clear and unmistakable disavowal of
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`scope," a disclaimer that limits the scope of the claims in the '890 parent patent does not
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`necessarily limit the scope of other claims in Family 3. The term at issue appears not in the '890
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`patent, but in its successors, including the' 126 patent.
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`A parent patent's prosecution history may be relevant if "it addresses a limitation in
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`common with the patent in suit." Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 265
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`F.3d 1294, 1305 (Fed. Cir. 2001). But when a purported disclaimer is "directed to specific claim
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`terms that have been omitted or materially altered in subsequent applications (rather than to the
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`invention itself), those disclaimers do not apply." Saunders Grp., Inc. v. Comfortrac, Inc., 492
`
`F.3d 1326, 1333 (Fed. Cir. 2007). "In general, a prosecution disclaimer will only apply to a
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`subsequent patent ifthat patent contains the same claim limitation as its predecessor." Regents
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`of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 943 (Fed. Cir. 2013).
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`In Sanofi v. Watson Laboratories Inc., all the patentee did to disclaim claim scope in the
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`parent application was write an express limitation in the claims. 875 F.3d 636, 650 (Fed. Cir.
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`2017). That limitation did not appear in the patent in suit. Id. The Federal Circuit characterized
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`the process as "fit[ ting] a familiar pattern" where "an applicant adopts an explicit claim(cid:173)
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`narrowing limitation to achieve immediate issuance of a patent containing the narrowed claims
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`and postpones to the prosecution of a continuation application further arguments about claims
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`that lack the narrow!ng limitation." Id. "Without more," the disclaimer process did not limit
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`claims that "lack the first patent's express narrowing limitation." Id. Similarly, the patentee here
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`adopted an explicit claim-narrowing limitation in the '890 patent: a "message during
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`initialization indicating a maximum number of bytes of memory." This limitation is not present
`
`in claim 1 of the '126 patent, which refers to a "message" only in the following context:
`
`13
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`wherein the memory is allocated between the first interleaving function and the
`second interleaving function in accordance with a message received during an
`initialization of the transceiver and wherein at least a portion of the memory may
`be allocated to the first interleaving function or the second interleaving function at
`any one particular time depending on the message.
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`('126 patent, claim 1). Nothing more exists to suggest that the '890 patent disclaimer should
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`carry over to claim 1 of the ' 126 patent. Thus, the prosecution history does not support a
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`construction specifying that the message include amounts of memory.
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`Because I do not adopt any of Plaintiffs "memory cells" language, Defendants' "bytes"
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`language, and Defendants' "depending on the amounts of memory specified in the message"
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`language, I adopt a plain meaning construction.
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`7. "portion of the memory"
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`a. Plaintiff's proposed construction: This term should not be construed out of context. See
`above for proposed construction in context.
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`b. Defendants' proposed construction: "number of bytes within the memory"
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`c. Court's construction: plain meaning
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`The parties agree that the issues for "portion of the memory" are the same as the issues
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`for "amount of memory." (Tr. at 107:22-108:2, 109:13-16). Thus, because I give "amount of
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`memory" a plain meaning construction, I give "portion of the memory" a plain meaning
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`construction, as well.
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`8. "memory is allocated between the [first] interleaving function and the [second
`interleaving I deinterleaving] function"
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`a. Plaintiff's proposed construction: "an amount of the memory is allocated to the [first]
`interleaving function and an amount of memory is allocated to the [second interleaving I
`deinterleaving] function"
`
`b. Defendants 'proposed construction: "a number of bytes of memory are allocated to the
`[first] interleaving function and a number of bytes of memory allocated to the [second
`interleaving I deinterleaving] function"
`
`14
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`I'
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`'
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`
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`c. Court's construction: "an amount of the memory is allocated to the [first] interleaving
`function and an amount of memory is allocated to the [second interleaving I
`deinterleaving] function"
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`The parties agree that the issues for this term are the same as the issues for "amount of
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`memory." (Tr. at 107:2-108:5, 109:13-16). Thus, because I give the term "amount of memory"
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`a plain meaning construction, as opposed to Defendants' proposed "number of bytes of memory"
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`construction, I adopt Plaintiff's proposed construction.
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`9. "wherein the generated message indicates how the memory has been allocated between
`the [first deinterleaving I interleaving] function and the [second] deinterleaving
`function"
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`a. Plaintiff's proposed construction: "wherein the generated message indicates the amount
`of memory that has been allocated to the [first deinterleaving I interleaving] function and
`the amount of memory allocated to the [second] deinterleaving function"
`
`b. Defendants' proposed construction: "wherein the generated message indicates a number
`of bytes of memory allocated to the [first deinterleaving I interleaving] function and a
`number of bytes of memory allocated to the [second] deinterleaving function"
`
`c. Court's const