Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`§§§§
`
`§§§§§
`
`§
`
`NEO WIRELESS, LLC,
`
`Plaintiff,
`
`v.
`
`DELL TECHNOLOGIES INC. and DELL
`INC.,
`
`Defendants.
`
`NO. 1:22-cv-00060-DAE
`
`
`
`DEFENDANTS’ SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
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`1
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`GM 1041
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`

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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 2 of 20
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`TABLE OF CONTENTS
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`Page
`I. Legal Background ..................................................................................................................... 2
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`II. Argument .................................................................................................................................. 3
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`A. The ’941 Patent Requires the Transmission Parameters to Indicate Whether the
`Subchannels Are Either Distributed or Localized .............................................................. 3
`B. Neo Has Narrowed the ’450 Patent to Require Combined One-Dimensional Time-
`Frequency Units .................................................................................................................. 7
`C. Neo’s IPR Arguments Confirm Dell’s Proposed Construction of “the segment having a
`starting time-frequency coordinate” in the ’450 Patent .................................................... 11
`
`III. Conclusion .............................................................................................................................. 14
`
`-i-
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`2
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 3 of 20
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`TABLE OF AUTHORITIES
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`Page(s)
`
`CASES
`
`Andersen Corp. v. Fiber Composites, LLC,
`474 F.3d 1361 (Fed. Cir. 2007)..................................................................................................3
`
`Aylus Networks, Inc. v. Apple Inc.,
`856 F.3d 1353 (Fed. Cir. 2017)..................................................................................................2
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008)................................................................................................11
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005)................................................................................................10
`
`Omega Eng’g, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..................................................................................2
`
`Seachange Int’l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005)..............................................................................................3, 7
`
`SpeedTrack, Inc. v. Amazon.com,
`998 F.3d 1373 (Fed. Cir. 2021)......................................................................................2, 3, 6, 7
`
`Tech. Properties Ltd. LLC v. Huawei Techs. Co.,
`849 F.3d 1349 (Fed. Cir. 2017)..................................................................................................3
`
`-i-
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`3
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 4 of 20
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`Defendants Dell Inc. and Dell Technologies Inc. (collectively, “Dell”) submit this
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`supplemental claim construction brief to address recent statements made by Plaintiff Neo Wireless,
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`LLC, (“Neo”) to the Patent Office about the scope of its patents.
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`In September 2021, Dell filed petitions for inter partes review (IPR) on three of the asserted
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`patents in this lawsuit. Dell’s petitions identified prior art and asked the Patent Office to institute
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`an IPR to review the patentability of the three patents in view of the prior art. In December 2021,
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`Neo submitted patent owner preliminary responses (POPRs) to the Patent Office to address the
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`arguments in Dell’s petitions.1 Neo’s POPRs included specific arguments about the meaning of
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`claim terms in Neo’s asserted patents. In March 2022, the Patent Office, relying on Neo’s
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`arguments, denied Dell’s requests. Thus, Neo was successful in persuading the Patent Office that
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`Neo’s claims were narrow and therefore not obvious in view of the prior art identified by Dell.
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`Neo should be bound by its successful arguments at the Patent Office about the scope and
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`meaning of the claims Neo asserts against Dell because those statements are intrinsic evidence
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`informing the meaning of the claim terms. It is well established that a patent claim has the same
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`scope in an IPR proceeding as it does in district court. Neo’s recent arguments to the Patent Office
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`clarify the meaning of the disputed claim language in three critical ways:
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`First, Neo distinguished U.S. Patent No. 10,075,941 (“the ’941 patent”) from prior art by
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`arguing that the claimed “mobile station-specific transmission parameters” must indicate whether
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`the claimed subchannels are localized or distributed. Neo’s arguments as to the meaning of the
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`1 Dell’s Reply Claim Construction Brief was filed on December 2 (ECF 48); Neo’s first
`POPR was filed on December 15 (see ECF 68-9 (Neo’s Preliminary Response to IPR2021-
`01468)). Thus, this brief is Dell’s first opportunity to address the significance of Neo’s statements
`for claim construction.
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`1
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`4
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`“mobile station-specific transmission parameters” claim term before the Patent Office confirms
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`that Dell’s proposed construction of this term is correct. See ECF 68-9 at 25.
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`Second, to distinguish U.S. Patent No. 10,447,450 (“the ’450 patent”) from prior art, Neo
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`introduced new constructions for the terms “time-frequency coordinate” and “time-frequency
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`resource unit.” Neo told the Patent Office that the terms “time-frequency coordinate” and “time-
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`frequency resource unit” require a single, combined measurement for time and frequency. See
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`ECF 68-11 (Neo’s Preliminary Response to IPR2021-01486) at 10. Neo should be held to this
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`position.
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`Third, and related to Neo’s new constructions for “time-frequency coordinate” and
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`“time-frequency resource unit,” Neo’s construction of “time-frequency coordinate” confirms
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`Dell’s position that the asserted claims of the ’450 patent require the communication of an
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`affirmative piece of information defining a starting point that is a “time-frequency coordinate.”
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`This is in contrast to Neo’s current position that the “time-frequency coordinate” can be a passive
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`property that is never actually communicated.
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`I.
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`LEGAL BACKGROUND
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`It is well established that a patentee’s statements to the Patent Office “can often inform the
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`meaning of the claim language by demonstrating how the inventor understood the invention and
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`whether the inventor limited the invention in the course of prosecution, making the claim scope
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`narrower than it would otherwise be.” SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1377
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`(Fed. Cir. 2021) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc)).
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`When there is “a clear and unmistakable disavowal in the prosecution history,” the patentee
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`surrenders claim scope that would otherwise be covered by the patent claims. Id. The Federal
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`Circuit has expressly recognized that this doctrine applies to statements made by a patent owner
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`in an IPR. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017) (“In
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`2
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`5
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`conclusion, we hold that statements made by a patent owner during an IPR proceeding, whether
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`before or after an institution decision, can be considered for claim construction and relied upon to
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`support a finding of prosecution disclaimer.”).
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`The scope of the disclaimer is determined by what the patentee says to the Patent Office,
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`regardless of whether the statements are technically necessary to distinguish prior art references.
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`Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1359 (Fed. Cir. 2017) (“The
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`question is what a person of ordinary skill would understand the patentee to have disclaimed during
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`prosecution, not what a person of ordinary skill would think the patentee needed to disclaim during
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`prosecution.”). “An applicant’s argument that a prior art reference is distinguishable on a
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`particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the
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`reference on other grounds as well.” SpeedTrack, 998 F.3d at 1380 (quoting Andersen Corp. v.
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`Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007)). Moreover, it is not necessary for
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`the Patent Office to specifically rely on the patent owner’s statements for disclaimer to apply.
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`Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005).
`
`II.
`
`ARGUMENT
`
`A.
`
`The ’941 Patent Requires the Transmission Parameters to Indicate Whether
`the Subchannels Are Either Distributed or Localized
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`As reflected in the parties’ original claim construction briefing, Dell and Neo dispute what
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`the asserted claims of the ’941 patent mean by the following phrase: “the mobile station-specific
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`transmission parameters indicate […] a corresponding subchannel configuration […] the
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`corresponding subchannel configuration characterized by distributed subcarriers or localized
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`subcarriers in the frequency domain.” See ECF 44 (Dell’s Opening Claim Construction Brief) at
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`16. The parties’ proposed constructions are set out in the table below:
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`3
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`Dell submits that the claims require an indication of whether the subchannels are
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`distributed or localized. The claim language itself states that the “parameters indicate” and the
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`English word “indicate” is associated with providing express notice of guidance of an event or a
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`condition. See Exhibit F (IPR2021-01468, Paper 12) at 15 n.11 (Patent Office noting that “a
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`meaning of the term ‘indicate’ is ‘to state or express briefly,’” and citing https://www.merriam-
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`webster.com/dictionary/indicate). The event or condition that is indicated is “a corresponding
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`subchannel configuration,” and the claim further clarifies that the “corresponding subchannel
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`configuration” is “characterized by distributed subcarriers or localized subcarriers.” Thus, the
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`plain language specifies that the indication is whether the subcarriers are distributed or localized.
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`During the original prosecution history, the applicants also represented to the Patent Office
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`that the claims require an indication of whether the subchannels are distributed or localized.
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`During the original prosecution, the applicants distinguished the Wilson prior art reference by
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`arguing — using the exact same language proposed by Dell — that the claimed system “transmits
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`subchannel configuration information, including whether the subchannels are ‘distributed
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`subcarriers or localized subcarriers in the frequency domain.’” ECF 44-4 (April 12, 2018,
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`Response to Office Action) at 9 (emphasis added). In this Court, Neo has insisted that the
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`4
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`7
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 8 of 20
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`applicants’2 use of “whether” during prosecution was merely exemplary and should not limit the
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`claims. ECF 54 (Neo’s Claim Construction Sur-Reply) at 12–13. Under Neo’s interpretation, it
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`is sufficient for the transmission parameters to simply have a subchannel configuration — with no
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`discussion of an indication of localized or distributed subcarriers — as long as the subchannel
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`configuration itself has either localized or distributed subcarrier. See ECF 45 (Neo’s Responsive
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`Claim Construction Brief) at 23.
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`Neo, however, contradicted itself in its POPR. Instead of maintaining the broad
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`construction that it advances in this Court, Neo aligned itself in its POPR with Dell’s proposed
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`construction, doubling-down on the “whether” requirement. The issue in the IPR was whether the
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`Airy prior art reference met this claim limitation and thus rendered the claims obvious. Neo argued
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`that Airy did not and that the Patent Office should therefore deny Dell’s IPR. To make this point,
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`Neo argued that the Airy prior art reference did not meet this limitation because “does not disclose
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`whether a mobile device’s subcarriers are localized […]; or distributed […]; or, for that matter,
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`neither of the above.” 68-9 at 25 (emphasis added). Neo’s argument uses the exact same language
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`as Dell’s proposed construction and uses the exact same language as Neo’s previous argument in
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`the original patent prosecution.
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`Making this point even more clear, Neo invoked the original prosecution in its POPR, and
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`reiterated that none of the prior art identified in Dell’s IPR included the “whether” requirement:
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`Why would the alleged control message indicate whether the subchannel
`configuration uses localized or distributed subcarriers, as claimed, if Airy
`merely uses “distributed” subcarriers generically, without regard for how
`they are configured? Ex. 2001 [Alberth Decl.] ¶ 38. This is essentially the
`same problem discussed above for Wilson, and Petitioner offers no answer.
`
`2 Neo Wireless LLC was not the applicant during the time that the application was pending
`at the Patent Office. Neo purchased these patents some years after issuance. Nevertheless, Neo is
`bound by the statements of the applicants during the original prosecution. Neo itself was
`responsible for statements made to the Patent Office during the recent IPR proceedings.
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`5
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`8
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`Id. at 27 (brackets original, emphasis added). Here, Neo represents to the Patent Office that the
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`“whether” language reflects the meaning “as claimed.” Thus, the Patent Office has been told twice
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`that the claims require an indication of whether the subchannels are distributed or localized: a first
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`time in convincing the Patent Office to grant the ‘941 patent, and a second time in convincing the
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`Patent Office to deny Dell’s request for inter partes review of the granted patent.
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`Neo’s criticism of the Airy reference for failing to “indicate whether the subchannel
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`configuration uses localized or distributed subcarriers” is a clear and unmistakable disclaimer. See
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`SpeedTrack, 998 F.3d at 1379 (finding disclaimer based on argument that the prior art did not have
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`an element). Because Neo distinguished the cited Airy reference in the IPR for failing to indicate
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`whether the subcarriers are distributed or localized, Neo has disclaimed any other meaning or
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`interpretation of the claims.
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`The Patent Office also issued an affirmative construction in the ’941 patent IPR,
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`confirming Neo’s disclaimer. In its decision declining to instituted Dell’s IPR on the ’941 patent,
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`the Patent Office interpreted the disputed limitation as follows:
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`Based on the language of claim 1 when viewed in the context of the ’941
`patent’s Specification, we understand the argued limitation to require that
`the mobile station-specific transmission parameters contained in the control
`message would indicate[] ‘a corresponding subchannel configuration,’ and
`as such, would indicate whether the subchannel configuration for a
`subsequent transmission is either ‘characterized by distributed subcarriers
`or localized subcarriers in the frequency domain.’
`
`Exhibit F at 15 (emphasis added). The Patent Office clarified that it was using “indicate” as “to
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`state or express briefly,” and the Patent Office recognized that this construction “is similar to the
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`construction that [Dell] advocates for in the parallel district court litigation.” Id. Applying this
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`construction, the Patent Office then determined that Airy did not disclose the limitation in question,
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`citing Neo’s argument that Airy did not disclose whether the subcarriers are localized or
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`distributed. Id. at 42 (“Patent Owner contends that Petitioner’s ground of unpatentability based on
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 10 of 20
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`PCT819 and Airy is deficient because ‘Airy does not disclose whether a mobile device’s
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`subcarriers are localized . . . or distributed.’”).
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`Dell expects that Neo will argue in its response that Neo’s statements and the Patent
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`Office’s construction are not dispositive of this dispute because Neo alternatively argued about
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`other ways to potentially distinguish the Airy reference. For example, Neo might try to distract
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`from its disclaimer by pointing out that Airy (in Neo’s view) did not disclose multiple different
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`subchannel configurations (e.g., both distributed and localized configurations). But it does not
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`matter that Neo made other arguments about Airy, nor does it matter whether the Patent Office’s
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`decision rested specifically on this disclaimer. See SpeedTrack, 998 F.3d at 1380; Seachange, 413
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`F.3d at 1374. The public is still entitled to rely on Neo’s representations to the Patent Office that
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`the claims require an indication of whether the subchannels are distributed or localized. See
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`Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a basic principle
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`of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
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`evidence and protects the public’s reliance on definitive statements made during prosecution.”).
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`B.
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`Neo Has Narrowed the ’450 Patent to Require Combined One-Dimensional
`Time-Frequency Units
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`Neo introduced a new claim construction issue in its response to Dell’s IPR on the ’450
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`patent. Because Neo introduced this new issue after the parties exchanged formal proposed
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`constructions in this case, the parties have not previously exchanged constructions for this issue.
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`So, in view of Neo’s IPR arguments, Dell proposes the following additional constructions:
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`“time-frequency coordinate” – claim 7
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`Dell
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`A coordinate having a combined one-dimensional measurement of time and
`frequency that transforms separate time and frequency measurements,
`instead of having separate time and frequency measurements.
`
`Neo Wireless
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`(unknown)
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`7
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`10
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 11 of 20
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`“time-frequency resource unit” – claim 7
`
`Dell
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`A resource unit having a combined one-dimensional measurement of time
`and frequency that transforms separate time and frequency measurements,
`instead of having separate time and frequency measurements.
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`Neo Wireless
`
`(unknown)
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`The only term that the parties addressed for the ’450 patent in the original claim
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`construction briefing was the phrase “the segment having a starting time-frequency coordinate.”
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`ECF 44 at 17. Dell’s construction for this phrase explained that the “starting time-frequency
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`coordinate” must be an affirmative piece of information; Neo asserted that no construction was
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`necessary and the plain and ordinary meaning of the term should apply. Id. But, again
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`contradicting its position in the district court litigation, Neo relied on narrow constructions for
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`“time-frequency coordinate” and a similar term “time-frequency resource unit” to distinguish the
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`prior art and avoid institution of Dell’s IPR. See ECF 68-11 at 10.
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`Neo told the Patent Office that the two prior art references at issue in the IPR did not
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`invalidate the claims of the ’450 patent because “these two references merely describe time units
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`(symbols) and frequency units (subchannels) and suggest no ‘time-frequency’ resource unit that
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`transforms the time and frequency units into one combined dimension as disclosed and claimed
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`by the ’450 patent.” Id. (emphasis added). Thus, Neo has made the affirmative representation to
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`the Patent Office that a “time-frequency resource unit” having one “combined dimension” is part
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`of the claims.
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`Neo explained its position to the Patent Office in detail. According to Neo’s IPR
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`arguments, the “time-frequency resource unit” and “time-frequency coordinate” each must be
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`represented by a singular measurement; Neo argued it was insufficient for the prior art to combine
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 12 of 20
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`a measurement of time with a separate measurement of frequency. See e.g., id. at 12–13 (“The
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`Petition incorrectly proposes that the word ‘coordinate’ allows for a combination of two
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`coordinates and, specifically, ‘a starting time-frequency coordinate’ be interpreted to encompass a
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`time coordinate plus a frequency coordinate.” (emphasis original)). Simplified, Neo’s argument is
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`that an “A-B unit” is not just units of A (measured in x) and units of B (measured in y), it is a
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`combination of A and B measured in z. As another example, a “heigh-weight resource unit” would
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`not be height expressed in inches and weight expressed in pounds, but would instead be a value
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`that “transforms [height] and [weight] units into one combined dimension.” Neo analogized this
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`combined time-frequency measurement to measurements of torque, which is the product of force
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`and distance:
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`Id. at 16.
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`Like the claimed time-frequency resource unit, torque transforms two
`independent dimensions (force and distance) into one dimension. One can
`change the granularity of torque’s force component and torque’s distance
`component, to express torque, for example, in terms of ounce-inches instead
`of foot-pounds. That does not mean, however, that one specifies a torque
`merely by specifying an independent force and an independent distance.
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`Neo’s argument to the Patent Office that the claims require a combined one-dimensional
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`measurement of time and frequency was a clear and unmistakable disavowal. Neo raised this
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`argument repeatedly to distinguish the prior art cited in Dell’s IPR. Id. at 2 (“The art references
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`raised by that Ground [in the IPR], however, do not even suggest the one-dimensional ‘time-
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`frequency’ approach to allocation that is at or near the heart of the claimed invention.”); id at 10,
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`12–13, 15 (“Indeed, that the inventors knew of the prior art that utilized a ‘start symbol offset’ and
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`an independent ‘start logical subchannel offset’ and intentionally chose to recite the inventive
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`‘starting time-frequency coordinate’ is evidence that [Dell’s] construction, merging the two
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`independent coordinates into one coordinate, is wrong.”); id. at 16, 20, 23 (“The POSITA at the
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 13 of 20
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`time of the claimed invention would have understood that [the cited prior art] does not teach time-
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`frequency resource units for transforming the two independent dimensions of time and frequency
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`into a single dimension of ‘time-frequency.’”); and id. at 29 (“In sum, [the cited prior art
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`references], and the combination thereof, simply teach the same two independent dimensions of
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`time and frequency and known configuration of frequency units and independently mapped time
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`units distinguished in the Background of the ʼ450 patent.”).
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`Neo also linked the use of a combined time-frequency measurement to the alleged benefit
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`of the invention, i.e., reducing the control overhead in these wireless communications. See id. at
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`4, 5, 8 (“By effectively transforming the two independent dimensions of time and frequency into
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`one time-frequency dimension measured by a basic resource unit having a fixed number of
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`symbols in a fixed number of subcarriers that fits the resource requirements of a given application,
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`the inventors achieved an advantageous reduction in the amount of data required to allocate
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`resources.”); id. at 16 (“As discussed above, the actual starting time-frequency coordinate is the
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`VZI and is represented by a single index, to accomplish the reduction in control overhead.”); and
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`id. at 19 (“By defining a resource using innovative ‘time-frequency resource units,’ the invention
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`alleviates the need to allocate resources by specifying four parameters, namely, (1) start time, (2)
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`end time, (3) start frequency, and (4) end frequency.”); see also Medrad, Inc. v. MRI Devices
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`Corp., 401 F.3d 1313, 1319–20 (Fed. Cir. 2005) (holding that “[i]t is therefore entirely proper to
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`consider the functions of an invention in seeking to determine the meaning of particular claim
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`language,” and affirming claim construction supported by identification of an “object of the
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`invention” in the patent specification). Any person reading these statements would have no doubt
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`that the ’450 patent should be limited to uses of a one-dimensional measurement of both time and
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`frequency.
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 14 of 20
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`Lastly, the Patent Office relied on Neo’s interpretation of “time-frequency resource unit”
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`and “time-frequency coordinate” in its decision denying Dell’s IPR. See Exhibit G, (IPR2021-
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`01486, Paper 10) at 27 (“[W]e find that such contentions are premised on [Dell] and its declarant’s
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`conclusory conflation of separate frequency subchannels and time slots as the recited singular
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`‘time-frequency resource’ and separate starting time and frequency coordinates as the recited
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`singular ‘starting time-frequency coordinate.’”). It makes no difference that Patent Office declined
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`to present this interpretation as a formal construction; the Patent Office unmistakably interpreted
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`the claims to require the combined one-dimensional measurement of time and frequency for which
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`Neo advocated. Accordingly, after Neo used this theory to successfully avoid Dell’s IPR, it would
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`be inequitable to allow Neo to allege that either “time-frequency coordinate” or “time-frequency
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`resource unit” can be satisfied without a combined one-dimensional measurement of time and
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`frequency. See Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir.
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`2008) (“Claims should not be construed one way in order to obtain their allowance and in a
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`different way against accused infringers.” (internal quotation marks omitted)).
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`C.
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`Neo’s IPR Arguments Confirm Dell’s Proposed Construction of “the
`segment having a starting time-frequency coordinate” in the ’450 Patent
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`A chart reflecting the parties’ original claim construction positions for the single disputed
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`term in the ’450 patent is below:
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`As background, the “segment” in this claim language is a grouping of physical airlink
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`resources used by a mobile device and base station to communicate. See ’450 patent at 4:16–27
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 15 of 20
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`and 5:17–22. The ’450 patent also refers to “physical airlink resources” as “time-frequency
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`resources.” The “time” component refers to when the signal in question will be communicated,
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`and the “frequency” component refers to the channel of the communication. An illustration of
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`how the resources of the patent are distributed over time and frequency is shown in Figure 6 of the
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`’450 patent, below:
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`As shown in Figure 6 of the ’450 patent, the measure of frequency extends to the right in the
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`horizontal direction, and the measure of time extends downward in the vertical direction.
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`Cross-referencing a measure of frequency and a measure of time will yield a “time-frequency
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`coordinate” that is measured in both time and frequency.
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`The claim term at issue requires a “segment having a starting time-frequency coordinate.”
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`The parties’ dispute centers on what it means for the segment to “have” the claimed starting
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`coordinate. Dell submits that the segment has a starting time-frequency coordinate when there is
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`an item of information identifying where the segment starts (i.e., the “starting . . . coordinate”).
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`See ECF 44 at 19. Like map coordinates, the “starting . . . coordinate” is a separate piece of
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`15
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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 16 of 20
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`information that describes the physical starting point for the segment, much like a hike in the
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`woods would have a starting point as measured in latitude and longitude. Under Dell’s proposed
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`a “segment having a starting time-frequency coordinate” exists if the segment has an affirmative
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`piece of information identifying the starting point.
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`Neo contends that the segment has a starting time-frequency coordinate just by virtue of
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`the segment existing and having any starting point, whether or not that starting coordinate is a
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`separately existing item of information or separately communicated. See ECF 54 at 14. Neo
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`asserts that “[t]he coordinate is sufficiently distinct from the resource by virtue of being a property
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`or characteristic of the resource segment, whether or not that property is separately
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`communicated.” ECF 54 at 14. Under Neo’s view, it is not necessary for the “starting time-
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`frequency coordinate” of the segment to be a separate item of information. According to Neo, the
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`starting coordinate or segment can be a physical property or characteristic of the segment and can
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`be actually derived from other information. See ECF 54 at 14 (“[T]he claim is agnostic to whether
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`the mobile station acquired the ‘starting time-frequency coordinate’ directly or derived it[.]”
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`(emphasis added)).
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` Neo’s successful arguments in the IPR for the ’450 patent foreclose Neo’s position that
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`the “starting time-frequency resource” can be a passive property or a derived property of a
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`segment. If the “starting time-frequency coordinate” is, according to Neo’s arguments at the Patent
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`Office, a combined measurement of time and frequency, then the “starting time-frequency
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`coordinate” cannot be merely a passive characteristic of a segment or a characteristic that can be
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`derived from a segment. Rather, the starting coordinate must necessarily be an actual existing
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`measurement — and a measurement that is recorded in the one-dimensional units that Neo
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`identified to the Patent Office. For example, Neo repeatedly emphasized to the Patent Office that
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`13
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`16
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`

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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 17 of 20
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`prior art references with separate measures of “time” and “frequency” lacked the claimed “starting
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`time-frequency coordinate” because the prior art did not show a single, combined measurement
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`for time and frequency. See e.g., ECF 68-11 at 15. But, the same prior art included both a starting
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`time and a starting frequency, making it possible to derive a combined starting coordinate for the
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`prior art. Neo’s interpretation, in this Court, of the “starting time-frequency coordinate” as a
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`passive or derived property thus conflicts with Neo’s position at the Patent Office in the IPR
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`proceedings, where Neo contended that a time-frequency coordinated as a single, combined
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`measure. In order to account for Neo’s IPR arguments, the “starting time-frequency coordinate”
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`must be an actual item of information — i.e., a single, combined measurement for time and
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`frequency — and not merely a passive or derivable characteristic.
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`III.
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`CONCLUSION
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`For the foregoing reasons, in addition to the arguments in Dell’s Opening and Reply Claim
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`Construction Briefs, Dell asks that the Court enter the following claim constructions:
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`
`
`“the mobile station-specific transmission parameters indicate […] a corresponding
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`subchannel configuration […] the corresponding subchannel configuration
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`characterized by distributed subcarriers or localized subcarriers in the frequency
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`domain” requires that the mobile station-specific transmission parameters indicate
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`whether the subchannels are either distributed subcarriers, or localized subcarriers
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`in the frequency domain.
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`
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`“time-frequency coordinate” requires having a combined one-dimensional
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`measurement of time and frequency that transforms separate time and frequency
`
`measurements, instead of having separate time and frequency measurements.
`
`14
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`17
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`

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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 18 of 20
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`
`
`“time-frequency resource unit” requires having a combined one-dimensional
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`measurement of time and frequency that transforms separate time and frequency
`
`measurements, instead of having separate time and frequency measurements.
`
`
`
` “the segment having a starting time-frequency coordinate” requires information
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`that identifies the starting time-frequency offset for the segment.
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`15
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`18
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`

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`Case 1:22-cv-00060-DAE Document 83 Filed 05/18/22 Page 19 of 20
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`Dated: May 18, 2022
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`Respectfully submitted,
`
`