Case 2:21-cv-00446-JRG Document 125 Filed 03/07/23 Page 1 of 36 PageID #: 4600
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`CALIFORNIA INSTITUTE OF
`TECHNOLOGY,
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`
`
`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`
`
`
`Plaintiff,
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`Defendants.
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`
`
`
`
`
`
`
`
`
`
`
`CIVIL ACTION NO. 2:21-CV-00446-JRG
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`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`CLAIM CONSTRUCTION MEMORANDUM AND ORDER
`Before the Court is the Opening Claim Construction Brief (Dkt. No. 101) filed by Plaintiff
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`California Institute of Technology (“Plaintiff” or “Caltech”). Also before the Court are the
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`Responsive Claim Construction Brief (Dkt. No. 109) filed by Defendants Samsung Electronics
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`Co. Ltd. and Samsung Electronics America, Inc. (collectively, “Defendants” or “Samsung”) and
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`Plaintiff’s Reply (Dkt. No. 112). The Court held a hearing on February 28, 2023. (Dkt. No. 118;
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`see also Dkt. No. 124.)
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`I.
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`BACKGROUND
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`Plaintiff alleges infringement of United States Patent Nos. 7,116,710 (the “’710 Patent”),
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`7,421,032 (the “’032 Patent”), 7,916,781 (the “’781 Patent”), and 8,284,833 (the “’833 Patent”)
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`(collectively, “the Patents-in-Suit”). (Dkt. No. 101.) Plaintiff refers to the Patents-in-Suit as the
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`“IRA Patents.”
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`Plaintiff submits that “the IRA Patents cover a revolutionary communications technology
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`known as ‘irregular repeat and accumulate codes’ or ‘IRA codes.’ IRA codes are used in a variety
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`of digital-communication applications. . . . The IRA Patents are directed to the field of
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`error-correction coding, which seeks to achieve error-free communication at the highest data rates
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`possible. This generally involves transmitting information in the form of encoded ‘codewords’ that
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`are resilient against noise in the communication channel.” (Dkt. No. 101 at 1–2.) Plaintiff also
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`submits that all of the Patents-in-Suit claim priority to the application that issued as the ’710 Patent
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`and that all four Patents-in-Suit share a common specification. (Id.)
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`The ’710 Patent, titled “Serial Concatenation of Interleaved Convolutional Codes Forming
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`Turbo-Like Codes,” issued on October 3, 2006, and bears an earliest priority date of May 18, 2000.
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`The ’710 Patent states:
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`A serial concatenated coder includes an outer coder and an inner coder. The outer
`coder irregularly repeats bits in a data block according to a degree profile and
`scrambles the repeated bits. The scrambled and repeated bits are input to an inner
`coder, which has a rate substantially close to one.
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`(’710 Patent at Abstract.) The Central District of California construed disputed terms of the
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`Patents-in-Suit
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`in California Institute of Technology v. Broadcom Ltd., et al., No.
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`2:16-CV-3714-GW-AGRx (“Broadcom”) and California Institute of Technology v. Hughes
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`Communications Inc., et al., No. 2:13-CV-7245-MRP-JEM (“Hughes”). Plaintiff submits several
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`claim construction documents from Broadcom and Hughes. (See Dkt. Nos. 101-8, 101-9, 101-10,
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`101-11, 101-12.)
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`Plaintiff also submits that in 2020, a jury found that certain Apple and Broadcom products
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`infringed the ’710, ’032, and ’781 Patents. See Broadcom, No. 2:16-CV-3714-GW, Dkt. No. 2114.
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`The Federal Circuit affirmed the finding of infringement as to the ’710 Patent and the ’032 Patent,
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`vacated as to the ’781 Patent, and remanded for a new trial on infringement as to the ’781 Patent
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`as well as for a new trial on damages. See Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976 (Fed.
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`Cir. 2022).
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`II.
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`LEGAL PRINCIPLES
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right which
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`the patent confers on the patentee to exclude others from making, using or selling the protected
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`invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
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`Claim construction is clearly an issue of law for the court to decide. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
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`“In some cases, however, the district court will need to look beyond the patent’s intrinsic
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`evidence and to consult extrinsic evidence in order to understand, for example, the background
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`science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm.
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`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
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`subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
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`extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction” discussed in
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`Markman. Id. (citing 517 U.S. 370).
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
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`which explains the invention and may define terms used in the claims. Id. “One purpose for
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`examining the specification is to determine if the patentee has limited the scope of the claims.”
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`Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
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`lexicographer, but any special definition given to a word must be clearly set forth in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`Although the specification may indicate that certain embodiments are preferred, particular
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`embodiments appearing in the specification will not be read into the claims when the claim
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`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the patentee
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`is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
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`are generally given their ordinary and customary meaning. Id. The ordinary and customary
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`meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
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`inventors are usually persons who are skilled in the field of the invention and that patents are
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`addressed to, and intended to be read by, others skilled in the particular art. Id.
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
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`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315 (quoting
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`Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the
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`primary basis for construing claims. Id. at 1314–17. As the Supreme Court stated long ago, “in
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`case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the
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`specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
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`language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
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`the specification, the Phillips court quoted with approval its earlier observations from Renishaw
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`PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
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`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
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`plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. However,
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`because the file history “represents an ongoing negotiation between the PTO and the applicant,” it
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`may lack the clarity of the specification and thus be less useful in claim construction proceedings.
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`Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
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`of how the inventor understood the invention and whether the inventor limited the invention during
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`prosecution by narrowing the scope of the claims. Id.; see also Microsoft Corp. v. Multi-Tech Sys.,
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`Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
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`prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The court
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`did not impose any particular sequence of steps for a court to follow when it considers disputed
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`claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
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`weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
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`the general rule that the claims measure the scope of the patent grant.
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`The Supreme Court has read 35 U.S.C. § 112, ¶ 2 to “require that a patent’s claims, viewed
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`in light of the specification and prosecution history, inform those skilled in the art about the scope
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`of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
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`898, 910 (2014). “A determination of claim indefiniteness is a legal conclusion that is drawn from
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`the court’s performance of its duty as the construer of patent claims.” Datamize, LLC v. Plumtree
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`Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and quotations omitted), abrogated
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`on other grounds by Nautilus, 572 U.S. 898. “Indefiniteness must be proven by clear and
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`convincing evidence.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
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`“[P]rior orders in related cases do not bar the Court from conducting additional construction in
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`order to refine earlier claim constructions.” TQP Dev., LLC v. Intuit Inc., WL 2810016, at *6 (E.D.
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`Tex. June 20, 2014).
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`In general, however, prior claim construction proceedings involving the same
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`patents-in-suit are “entitled to reasoned deference under the broad principals of stare decisis and
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`the goals articulated by the Supreme Court in Markman, even though stare decisis may not be
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`applicable per se.” Maurice Mitchell Innovations, LP v. Intel Corp., 2006 WL 1751779, at *4
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`(E.D. Tex. June 21, 2006); see TQP, 2014 WL 2810016, at *6 (“[P]revious claim constructions in
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`cases involving the same patent are entitled to substantial weight, and the Court has determined
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`that it will not depart from those constructions absent a strong reason for doing so.”); see also
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`Teva, 135 S. Ct. at 839–40 (“prior cases will sometimes be binding because of issue preclusion
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`and sometimes will serve as persuasive authority”) (citation omitted); Finisar Corp. v. DirecTV
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`Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the importance of uniformity in the
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`treatment of a given patent”) (quoting Markman, 517 U.S. at 390).
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`III. AGREED TERMS
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`In their P.R. 4-3 Joint Claim Construction and Prehearing Statement and in their P.R. 4-5(d)
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`Joint Claim Construction Chart, the parties submit the following agreed-upon constructions (Dkt.
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`No. 84 at 1; Dkt. No. 115-1 at 12):
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`Term
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`“combine” (and variants)
`(’833 Patent, Claims 1, 8)
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`Construction
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`“perform logical operations on”
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`“wherein two or more memory locations of the
`first set of memory locations are read by the
`permutation module different times from one
`another”
`(’833 Patent, Claims 1, 8)
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`
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`IV. DISPUTED TERMS
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`“wherein two or more memory locations of the
`first set of memory locations are read by the
`permutation module a different number of
`times from one another”
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`The parties present slightly different positions on the level of ordinary skill in the art,
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`namely as to the fields of study, but Defendants submit that such “”difference, however, is not
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`relevant to the resolution of any disputed construction and the Court need not resolve the parties’
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`dispute at this stage.” (Dkt. No. 109 at 1.) The Court agrees.
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`a. “scramble,” “randomly permuting,” “random permutation,” and
`“interleaver”
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`“scramble”
`(’710 Patent, Claims 15, 25)
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`“randomly permuting”
`(’032 Patent, Claim 7)
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`“random permutation”
`(’032 Patent, Claims 11, 18)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`“change
`the order of data elements”
`Plain and ordinary meaning
`“changing the order of data elements”
`
`/
`
`“interleaver”
`(’710 Patent, Claims 19, 27)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`“module that changes the order of data
`Plain and ordinary meaning.
`elements”
`
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`(Dkt. No. 84-1 at 1–2; Dkt. No. 101 at 4; Dkt. No. 105 at 2; Dkt. No. 115-1 at 2.)
`The Parties’ Positions
`i.
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`Plaintiff argues that “[t]he specification teaches that the disputed terms are interchangeable
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`and indicate the same concept in the inventions.” (Dkt. No. 101 at 4.) Plaintiff also argues that
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`“[e]ven if the specification does not explicitly say it is defining the terms as synonymous, it is
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`well-established that a patentee may ‘define claim terms by implication.’” (Id. at 5 (citations
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`omitted).)
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`Defendants respond that “a POSITA would have understood that ‘scrambl[ing],’
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`‘interleav[ing],[’] and ‘randomly permuting’ require more than any change in order; rather, under
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`their plain-and-ordinary meanings each of these terms involves ‘random,’ ‘quasi-random,’ or
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`‘arbitrary’ reordering or reshuffling.” (Dkt. No. 109 at 2.) Defendants argue that Plaintiff’s
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`proposal of merely “changes the order” “would be overbroad and lacks any support in the
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`specification.” (Id. at 4.)
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`Plaintiff replies that “the sole dispute for all these terms is Samsung’s insistence that they
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`require something more than reordering,” but “Samsung never articulates what that something
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`more might be, seeking instead to take to the jury an improper claim construction argument that is
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`inconsistent with the plain and ordinary meaning of these terms.” (Dkt. No. 112 at 1.) Plaintiff
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`cites disclosure regarding “arbitrary permutation,” arguing that “‘permutation’ calls for nothing
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`more than reordering” and that “‘arbitrary’ unequivocally establishes that the permutation is
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`unspecified.” (Id. at 1–2 (citing ’710 Patent at 3:45–50).) Further, Plaintiff argues that Defendants
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`rely on evidence outside of the relevant art.
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`At the hearing, Defendants argued that Plaintiff is attempting to remove the randomness
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`requirement from the claims. (See generally Dkt. No. 124 at 14:4–14.) Defendants also reaffirmed
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`that “random” is not limited to being non-deterministic. (Id.) Plaintiff responded that Defendants
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`argue these disputed terms require something “more” than changing order but do not explain what
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`“more” is required. (Id.; see also id. at 6:24–7:16.)
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`ii.
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`Analysis
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`Claim 15 of the ’710 Patent, for example, recites a “first coder operative to repeat said
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`stream of bits irregularly and scramble the repeated bits.” (’710 Patent at Claim 15.) The
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`specification discloses that “scrambling may be performed by the interleaver 204, which performs
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`a pseudo-random permutation of an input block . . . .” (’710 Patent at 3:19–21; see also id. at FIG.
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`2.) The specification also discloses, with reference to Figure 3, that “[t]hese connections
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`correspond to the scrambling performed by the interleaver 204.” (Id. at 3:48–50; see also id. at
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`1:59–65 (teaching an “outer coder, which repeats and scrambles bits in the data block” and “may
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`include a repeater with a variable rate and an interleaver”).)
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`The patentee thus referred to scrambling, permuting, and interleaving all in the sense of
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`creating an output that has a different ordering than the input. This is also consistent with other
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`patents cited by the Patents-in-Suit, which are intrinsic evidence. Powell v. Home Depot USA, Inc.,
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`663 F.3d 1221, 1231 (Fed. Cir. 2011). Those patents refer to an “interleaver (also known as a
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`permuter)” as producing “a reordered sequence of information bits.” (Dkt. No. 109-7, U.S. Patent
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`No. 6,023,783 at 5:48–50; see also Dkt. No. 109-8, U.S. Patent No. 6,859,906 at 5:37–39 (“The
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`channel interleaver may optionally be used to re-order bits so that consecutive bits in a data stream
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`are not lost in a noise burst.”).)
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`This is consistent with a technical dictionary cited by Defendants that refers to
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`“scrambling” as “randomization” that uses “reversible processes.” (Dkt. No. 109-6, Dictionary of
`
`Computer Science, Engineering, and Technology 437 (2001).) This is also consistent with
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`disclosure of “arbitrary permutation” of the connections that relate to the scrambling performed
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`by an interleaver. (’710 Patent at 3:45–50 (emphasis added) (“These connections can be made in
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`many ways, as indicated by the arbitrary permutation of the ra edges joining information nodes
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`302 and check nodes 304 in permutation block 310. These connections correspond to the
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`scrambling performed by the interleaver 204.”); see also ’032 Patent at 3:51–55 (same).) The
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`patentee thus used “scramble” and “randomly permuting” to refer to arbitrariness rather than to
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`non-deterministic randomness.
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`The extrinsic definitions cited by Defendants pertain to cryptography and are therefore
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`unpersuasive and, even if considered, are consistent with understanding that “scrambling” need
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`not be non-deterministic. (Dkt. No. 109-4, The McGraw Hill Dictionary of Scientific and Technical
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`Terms (5th ed. 1999) (defining “scramble” as “[t]o mix, in cryptography, in random or
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`quasi-random fashion”) (emphasis added).)
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`As to whether what is reordered are “data elements” or “bits,” the claims demonstrate that
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`“bits” are a species of, or contained within, “data elements.” (See ’710 Patent at Claim 5 (“5. The
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`method of claim 4, wherein the data elements comprises [sic] bits.”).) To the extent particular
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`claims refer specifically to “bits,” such language limits those particular claims, so the disputed
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`terms here at issue need not be limited to “bits.” Also of note, the district court in Broadcom
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`construed “random permutation” to mean “changing the order of data elements by a purely random
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`or pseudo random process.” (Dkt. No. 101-10, Broadcom Additional Claim Constructions, at 2.)
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`Finally, the parties present the word “random” as a distinct disputed term, which is addressed
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`separately herein, so the constructions for the terms “randomly permuting” and “random
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`permutation” can include the word “random.”
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`The Court therefore hereby construes these disputed terms as set forth in the following
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`chart:
`
`Term
`
`“scramble”
`
`(’710 Patent, Claims 15, 25)
`“randomly permuting”
`
`(’032 Patent, Claim 7)
`
`Construction
`“change the order of data elements”
`
`
`“randomly changing the order of data
`elements”
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`“random permutation”
`
`(’032 Patent, Claims 11, 18)
`“interleaver”
`
`(’710 Patent, Claims 19, 27)
`
`
`b. “random” and “randomly”
`
`“random change in the order of data
`elements”
`
`“module that changes the order of data
`elements”
`
`“random” / “randomly”
`(’032 Patent, Claims 1, 5, 7, 13)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`“repeated message bits are not used in the
`Plain and ordinary meaning
`order they originally appear”
`
`
`(Dkt. No. 84-1 at 4; Dkt. No. 101 at 6; Dkt. No. 109 at 5; Dkt. No. 115-1 at 4.)
`The Parties’ Positions
`i.
`
`Plaintiff submits that Defendants’ proposal “seeks to preserve a noninfringement argument
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`that ‘random’ means statistically random or non-deterministic reordering,” which Plaintiff argues
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`“would be inconsistent with the patent and how ‘random’ is used in the field of error-correction
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`coding . . . .” (Dkt. No. 101 at 6.) In particular, Plaintiff cites disclosure that a “random
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`permutation” can be “fixed,” thus using the term “random” in the sense of arbitrariness rather than
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`in a statistical sense. (Id. at 7.)
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`Defendants respond that Plaintiff’s proposed construction “fails to provide a definition for
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`the terms themselves but rather improperly redrafts the claim language to wholly excise the
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`concept of randomness from the claims.” (Dkt. No. 109 at 5.) Defendants also submit that
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`“Samsung has not alleged that ‘random’ or ‘randomly’ requires ‘statistically random or
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`non-deterministic reordering,’” but “[a] POSITA would understand that a scrambling algorithm
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`can be deterministic while also being ‘random’ in its plain and ordinary sense.” (Id. at 7.)
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`Plaintiff replies as to these terms together with the terms “scramble,” “randomly
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`permuting,” “random permutation,” and “interleaver,” which are addressed above. (See Dkt.
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`Case 2:21-cv-00446-JRG Document 125 Filed 03/07/23 Page 13 of 36 PageID #: 4612
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`No. 112 at 1–3.) The parties similarly argued these terms together at the hearing with the terms
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`“scramble,” “randomly permuting,” “random permutation,” and “interleaver.”(See, e.g., Dkt. No.
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`124 at 4:3–4.)
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`ii.
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`Analysis
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`Claim 1 of the ’032 Patent, for example, recites “generating a sequence of parity bits” in
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`accordance with a formula that uses “randomly chosen irregular repeats of the message bits.” (’032
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`Patent at Claim 1.) Defendants note that the Patents-in-Suit cite to other patents (which are thus
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`intrinsic evidence, see Powell, 663 F.3d at 1231) that refer to the output of an “interleaver” being
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`“random.” (Dkt. No. 109-7, U.S. Patent No. 6,023,783 at 5:57–61; Dkt. No. 109-8, U.S. Patent
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`No. 6,859,906 at 2:2–5; Dkt. No. 109-9, U.S. Patent No. 6,044,116 at 17:24–27.)
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`As discussed above with regard to “randomly permuting” and “random permutation,” the
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`patentee used the word “random” to refer to arbitrariness rather than to refer to truly
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`non-deterministic randomness. As an example, the specification discloses that a “random”
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`permutation can be “fixed,” rather than being non-deterministic, such that a “random permutation”
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`can be merely “arbitrary.” (See ’032 Patent at 3:51–55; see also Dkt. No. 101-14, Daniel Bengtsson
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`& Daniel Landström, Coding in a Discrete Multitone Modulation System 8 (1996) (“Interleaving
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`is a technique that rearrange [sic] the coded data such that the location of errors looks random[.]”)
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`(emphasis added).) Defendants argue that scrambling can be “fixed” in the sense of being
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`predictable (and therefore decodable) while still being “random” in the ordinary sense of that word.
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`(Dkt. No. 109 at 7.)
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`Given Defendants’ unequivocal statement that “Samsung has not alleged that ‘random’ or
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`‘randomly’ requires ‘statistically random or non-deterministic reordering” (Dkt. No. 109 at 6),
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`Plaintiff’s proposal to construe “random” as meaning “repeated message bits are not used in the
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`order they originally appear” would introduce unnecessary potential confusion.
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`Case 2:21-cv-00446-JRG Document 125 Filed 03/07/23 Page 14 of 36 PageID #: 4613
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`Also of note, the district court in Broadcom rejected the defendant’s proposal in that case
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`to construe “random” to mean “non-deterministic,” and the court there found:
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`[T]he named inventors did not attach any specialized meaning to “random” (or its
`variations), specifically not “non-deterministic” as Defendants improperly suggest,
`and intended only its plain and ordinary meaning. Substituting “random” with
`“non-deterministic” hinders, not helps, the factor [sic] finder, given the more
`intricate definition of the latter. . . . Moreover, there is no indication that a person
`having ordinary skill in the art would bring a distinctive perspective to the term
`“random” or “randomly” in the context in which the term is used in the claims. To
`the contrary, a person of ordinary skill would reasonably interpret the term
`according to its evident meaning.
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`Broadcom, No. 2:16-CV-3714-GW-AGRx, Dkt. No. 213.
`Having considered the parties proposals in the present case, the Court reaches essentially
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`the same conclusion here as did the district court in Broadcom, and the opinion of Plaintiff’s expert
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`does not persuasively support limiting the term “random,” by itself, to the context of rearranging
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`the order of bits. (See Dkt. No. 101-1, Shoemake Decl. at ¶¶ 185, 243–44.) Rather, as discussed
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`above, the disclosure regarding “arbitrary permutation” (’710 Patent at 3:45–50) demonstrates that
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`the patentee used the term “random” to refer to arbitrariness rather than to refer to non-
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`deterministic randomness. To address Plaintiff’s concern that this point might be misapplied by
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`Defendants’ expert or misunderstood by the jury without an express construction of the term
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`“random,” the Court expressly construes “random” to mean “arbitrary.” The parties can apply this
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`construction in the context of the relevant art with an understanding that proving an operation is
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`performed “arbitrarily” does not require proving that it is performed in a non-deterministic manner.
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`The Court therefore hereby construes these disputed terms as set forth in the following
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`chart:
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`Term
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`“random”
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`(’032 Patent, Claims 5, 7, 13)
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`Construction
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`“arbitrary”
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`Case 2:21-cv-00446-JRG Document 125 Filed 03/07/23 Page 15 of 36 PageID #: 4614
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`“randomly”
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`(’032 Patent, Claims 1, 7)
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`“arbitrarily”
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`c. “the permutation module”
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`
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`“the permutation module”
`(’833 Patent, Claim 8)
`Plaintiff’s Proposed Construction
`Defendants’ Proposed Construction
`The phrase “the permutation module” in
`Indefinite
`claim 8 of the ’833 Patent refers to a module
`performing the claimed step of performing an
`encoding operation.
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`(Dkt. No. 84-1 at 3; Dkt. No. 101 at 8; Dkt. No. 109 at 7; Dkt. No. 115-1 at 13.)
`The Parties’ Positions
`i.
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`Plaintiff argues that the absence of an explicit recital of “a permutation module” does not
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`render the claim indefinite. (Dkt. No. 101 at 8–9.) Plaintiff submits that Claim 1 is an apparatus
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`claim that corresponds to the claim here at issue (method Claim 8), and that Claim 1 expressly
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`recites “a permutation module.” (Id. at 9–10.)
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`Defendants respond that “‘[t]he permutation module’ as used in Claim 8 of the ’833 Patent
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`is indefinite for at least two reasons: (1) the term lacks necessary antecedent basis sufficient to
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`provide the clarity required by 35 U.S.C. § 112, and (2) if ‘the permutation module’ is understood
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`as Caltech urges, the claim is an invalid ‘hybrid’ or ‘mixed’ claim drawn both to an apparatus and
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`a method.” (Dkt. No. 109 at 8.)
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`Plaintiff replies
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`that “[t]he disputed
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`language
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`is not
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`indefinite because
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`the
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`claims—including Claims 1 and 8—and the prosecution history all point unambiguously to the
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`same conclusion: that ‘the permutation module’ refers to a module performing the claimed step of
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`performing an encoding operation, as Caltech proposes.” (Dkt. No. 112 at 4.) Plaintiff also argues
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`that “[m]ethod claims routinely recite steps involving some apparatus without presenting a validity
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`issue.” (Id. (citation omitted).)
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`Case 2:21-cv-00446-JRG Document 125 Filed 03/07/23 Page 16 of 36 PageID #: 4615
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`At the hearing, Defendants argued that the lack of antecedent basis is a drafting error that
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`arose during prosecution, that Plaintiff has not sought to correct, and that cannot be cured through
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`claim construction. (Dkt. No. 124 at 28:8–29:15.) Plaintiff responded that it is not seeking a
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`correction but rather contends that the antecedent basis is implicit. (Id. at 29:21–30:14.)
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`ii.
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`Analysis
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`Claim 8 of the ’833 Patent recites:
`8. A method of performing encoding operations, the method comprising:
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`receiving a sequence of information bits from a first set of memory
`locations;
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`performing an encoding operation using the received sequence of
`information bits as an input, said encoding operation comprising:
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`reading a bit from the received sequence of information bits, and
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`combining the read bit to a bit in a second set of memory locations
`based on a corresponding index of the first set of memory locations
`for the received sequence of information bits and a corresponding
`index of the second set of memory locations; and
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`
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`accumulating the bits in the second set of memory locations,
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`wherein two or more