Legaard, Brenna K. <Brenna.Legaard@klgates.com>
`Friday, August 18, 2023 6:00 PM
`DL BBMSISTA; EXT Smith, Melissa (T-Mobile)
`KLG-STA-Motorola; Wesley Hill; Andrea Fair; Garrett Parish
`PR 4-2 disclosure
`
`Liquori, Steve
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`[EXTERNAL EMAIL]
`
`Counsel:
`
`Pursuant to P. R. 4 2, STA states as follows:
`
`All claim terms in the asserted patents should have their plain and ordinary meanings.
`
`Brenna Legaard
`Partner
`K&L Gates LLP
`One SW Columbia St, Ste 1900
`Portland, OR
`Phone: 503.226.5736
`Fax: 503.296.2286
`brenna.legaard@klgates.com
`www.klgates.com
`
`This electronic message contains information from the law firm of K&L Gates LLP. The contents may be privileged and confidential and are intended for
`the use of the intended addressee(s) only. If you are not an intended addressee, note that any disclosure, copying, distribution, or use of the contents of
`this message is prohibited. If you have received this e-mail in error, please contact me at Brenna.Legaard@klgates.com.-5
`
`1
`
`Motorola Solutions, Inc., Ex1027, p. 1
`
`

`

`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`STA GROUP LLC,
`
`Plaintiff,
`
`v.
`
`MOTOROLA SOLUTIONS, INC.,
`
`Defendant.
`
`MOTOROLA SOLUTIONS, INC.
`Counterclaim Plaintiff,
`
`v.
`
`STA GROUP LLC, DILLON KANE
`GROUP LLC, and INSTANT CONNECT
`SOFTWARE LLC,
`
`Counterclaim Defendants.
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`Case No. 2:22-CV-00381-JRG-RSP
`
`JURY TRIAL DEMANDED
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`
`MOTOROLA SOLUTIONS, INC.’S P.R. 4-2 DISCLOSURE OF
`PRELIMINARY PROPOSED CONSTRUCTIONS OF CLAIM TERMS AND
`PRELIMINARY IDENTIFICATION OF EXTRINSIC EVIDENCE
`
`Pursuant to Patent Rule 4-2, Defendant and Counterclaim Plaintiff Motorola Solutions, Inc.
`
`(“MSI”) provides the following preliminary proposed claim constructions and identification of
`
`extrinsic evidence for the asserted claims of U.S. Patents Nos. 7,324,802 (the “’802 Patent”),
`
`8,489,134 (the “’134 Patent”), 8,994,830 (the “’830 Patent”) and 8,831,664 (the “’664 Patent”)
`
`(collectively the “Asserted Patents”).
`
`Pursuant to P.R. 4-2(a), MSI provides “a preliminary proposed construction of each claim
`
`term, phrase, or clause which the parties collectively have identified for claim construction
`
`1
`
`Motorola Solutions, Inc., Ex1027, p. 2
`
`

`

`purposes” in each party’s respective Patent Rule 4-1 Disclosures. See Exhibits A-D (attached).
`
`MSI includes proposed constructions only for claim terms, phrases, and/or clauses that appear in
`
`the asserted claims identified in Plaintiff’s operative Patent Rule 3-1(a) disclosures, served on
`
`January 5, 2023:
`
`Patent Asserted Claims
`’802
`1-5, 7, 9, 10
`’134
`8, 9
`’664
`1-3, 5
`’830
`1, 5, 8, 11
`
`MSI reserves the right to address any additional asserted claims and to revise the disclosures below
`
`if the STA Entities are allowed to amend their infringement contentions to add asserted claims,
`
`infringement theories, or accused products. In addition, these preliminary proposed constructions
`
`are based upon information presently available to and located by MSI. MSI reserves the right to
`
`revise its proposed claim constructions for any other terms or phrases (including within such terms
`
`and phrases) that Plaintiff and Counterclaim Defendants STA Group LLC, Dillon Kane Group
`
`LLC, and Instant Connect Software LLC (collectively, “STA Entities”) may identify as requiring
`
`construction, and to otherwise amend its proposed claim terms including in response to the
`
`proposed claim terms of the STA Entities, as a result of the meet and confer process with the STA
`
`Entities, and/or as discovery continues.
`
`Pursuant to P.R. 4-2(b), MSI also provides “a preliminary identification of extrinsic
`
`evidence, including without limitation, dictionary definitions, citations to learned treatises and
`
`prior art” that it contends supports its preliminary proposed claim constructions. MSI will produce
`
`copies of this evidence concurrently with this disclosure.
`
`2
`
`Motorola Solutions, Inc., Ex1027, p. 3
`
`

`

`MSI’s preliminary proposed claim constructions and identification of extrinsic evidence
`
`are based upon information currently available to MSI.1 MSI has not completed discovery;
`
`therefore, MSI reserves the right to amend or otherwise supplement its preliminary proposed claim
`
`constructions as appropriate in light of the plain and ordinary meaning of the identified terms, in
`
`light of the proposed constructions of the STA Entities, and in light of the negotiations between
`
`the parties regarding claim construction. Nothing in this submission should be construed to be an
`
`admission by MSI. MSI specifically reserves the right to argue, to the extent appropriate, that any
`
`of the claim terms identified herein need not be construed by the Court.
`
`In addition, MSI reserves the right to amend, use additional, not use, or otherwise
`
`supplement the identification of extrinsic evidence, including expert testimony, that may be used
`
`to support, describe, or explain MSI’s preliminary proposed claim constructions, including as
`
`appropriate in light of the plain and ordinary meaning of the identified terms, in light of the
`
`proposed constructions of the STA Entities, and in light of the negotiations between the parties
`
`regarding claim construction. MSI further reserves the right to amend, use additional, not use, or
`
`otherwise supplement the identification of extrinsic evidence, including expert testimony, to offer
`
`in rebuttal to the proposed constructions of the STA Entities. MSI further reserves the right to
`
`identify additional extrinsic evidence that is obtained through further discovery in this matter,
`
`including deposition testimony obtained from any third parties, such as named inventors and/or
`
`any expert witnesses.
`
`MSI will identify intrinsic support at the time identified by the Court’s scheduling order
`
`1 MSI’s inclusion of materials referenced in this disclosure is not an admission that any of these
`materials constitutes extrinsic evidence as opposed to intrinsic evidence. MSI reserves all rights
`to submit any of these materials or similar materials as intrinsic or extrinsic evidence in the event
`the applicable standard provides for categorization as one or the other.
`
`3
`
`Motorola Solutions, Inc., Ex1027, p. 4
`
`

`

`and patent local rules, including references of the claims of the Asserted Patents, specifications,
`
`prosecution histories, and prior art cited on the face of the Asserted Patents.
`
`The following preliminary proposed constructions do not waive any argument, such that a
`
`claim is indefinite or is otherwise invalid under one or more of 35 U.S.C. §§ 102, 103, and 112, as
`
`detailed by the invalidity contentions served by MSI in these cases. For example, MSI reserves
`
`the right to argue that a particular claim term is indefinite regardless of whether the term has been
`
`proposed for construction, has not be proposed for construction, and/or was proposed for
`
`construction but has since been dropped from the terms proposed for construction.
`
`Claim construction discovery is ongoing, and MSI reserves the right to supplement or
`
`amend its preliminary proposed claim constructions and evidence in light of further such
`
`discovery, and/or in response to MSI’s preliminary proposed claim constructions that are being
`
`concurrently provided. Further, if the STA Entities later amend or supplement their infringement
`
`contentions, or seek an improper interpretation of a term, phrase, or clause that has not been
`
`identified by the parties, MSI reserves the right to seek construction of that term, phrase, or clause.
`
`4
`
`Motorola Solutions, Inc., Ex1027, p. 5
`
`

`

`Dated: August 18, 2023
`
`Respectfully submitted,
`
`/s/ Robert L. Maier
`
`Melissa Richards Smith
`Texas Bar No. 24001351
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`(903) 934-8450
`
`Robert L. Maier
`New York Bar No. 4123246
`Robert.maier@bakerbotts.com
`Michael E. Knierim
`New York Bar No. 5034830
`Michael.knierim@bakerbotts.com
`Frank Zhu
`New York Bar No. 5557822
`Frank.zhu@bakerbotts.com
`BAKER BOTTS L.L.P.
`30 Rockefeller Plaza
`New York, NY 10112
`(212) 408-2500
`
`Katharine M. Burke
`DC Bar No. 985333
`Katharine.burke@bakerbotts.com
`Lauren Dreyer
`DC Bar No. 1007189
`Lauren.dreyer@bakerbotts.com
`Samuel Kassa
`DC Bar No. 187255
`Samuel.kassa@bakerbotts.com
`BAKER BOTTS L.L.P.
`700 K Street NW
`Washington, DC 20001
`(202) 639-7700
`
`M. Natalie Alfaro Gonzales
`Texas Bar No. 24069286
`Natalie.gonzales@bakerbotts.com
`BAKER BOTTS L.L.P.
`
`5
`
`Motorola Solutions, Inc., Ex1027, p. 6
`
`

`

`910 Louisiana Street
`Houston, TX 77002
`(713) 229-1318
`
`Attorneys for Defendant
`
`6
`
`Motorola Solutions, Inc., Ex1027, p. 7
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that all counsel of record who are deemed to have consented to electronic
`
`service are being served this 18th day of August, 2023.
`
`Dated: August 18, 2023
`
`/s/ Robert L. Maier
`Robert L. Maier
`
`7
`
`Motorola Solutions, Inc., Ex1027, p. 8
`
`

`

`EXHIBIT A – ’830 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`
`No.
`
`’830 Patent Claim Term
`Order of steps
`
`Proposed By
`MSI
`
`(Claim 1)
`
`1
`
`2
`
`independent of the selected
`communication channel (STA
`Entities)
`
`wherein the at least one video
`feed is associated with the
`selected communication channel
`… the one or more video feeds
`being independent of the
`selected communication channel
`(MSI)
`
`MSI Extrinsic Evidence
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`MSI Preliminary Proposed
`Construction
`The “monitoring a selection of a
`communication channel…” step
`must be performed before
`the
`“identifying…” step
`
`The “providing a plurality of radio
`frequencies…”
`step
`and
`the
`“monitoring a selection of a radio
`frequency” step must be performed
`before the “identifying …” step
`
`MSI/STA Entities
`
`Indefinite
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term and
`associated claims, as well as whether a
`POSITA would have understood the
`scope of this claim term with
`reasonable certainty.
`
`(Claim 1)
`monitoring a selection
`
`STA Entities
`
`3
`
`(Claim 1)
`
`construe
`to
`proposes
`MSI
`selection of a
`“monitoring a
`communication channel by a user of
`a mobile communication device” as
`“monitoring whether a user sets a
`
`Microsoft Computer Dictionary (1999)
`at 401
`
`Exhibit A - 1
`
`Motorola Solutions, Inc., Ex1027, p. 9
`
`

`

`MSI Extrinsic Evidence
`
`The Merriam-Webster Dictionary
`(2004) at 809; Microsoft Computer
`Dictionary Fourth Ed. (1999) at 470;
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`Newton’s Telecommunications
`Dictionary (March 2008) at 754;
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`No.
`
`’830 Patent Claim Term
`
`EXHIBIT A – ’830 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`mobile communication device to a
`communication channel”
`
`Proposed By
`
`Virtual Talk Group
`
`MSI
`
`(Claim 8)
`
`“a talk group that communicates
`using an IP address”
`
`4
`
`5
`
`6
`
`Push-To-Talk (PTT) channel in
`a PTT communication network
`
`MSI
`
`“a channel for transmitting half-
`duplex communications in a Push-
`to-Talk communication network”
`
`(Claim 5)
`
`each radio frequency being
`associated with a geographic
`zone
`
`(Claim 1)
`
`STA Entities
`
`Plain and ordinary meaning
`
`Exhibit A - 2
`
`Motorola Solutions, Inc., Ex1027, p. 10
`
`

`

`No.
`
`’802 Patent Claim Term
`Order of steps
`
`Proposed By
`MSI
`
`1
`
`2
`
`3
`
`4
`
`(Claim 1-5, 7, 9, and 10)
`
`the second message overlapping
`with the first message in time
`(MSI)
`
`overlapping in time (STA
`Entities)
`
`(Claim 1)
`playing the message/ playing the
`… message/ playing a received
`message/ played (MSI)
`
`played/ playing (STA Entities)
`
`(Claims 1, 7)
`“channels”
`
`(Claim 1)
`
`EXHIBIT B – ’802 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`
`MSI Preliminary Proposed
`Construction
`The steps must be performed in the
`recited order.
`
`MSI / STA Entities
`
`Plain and ordinary meaning
`
`MSI/STA Entities
`
`Plain and ordinary meaning
`
`STA Entities
`
`Plain and ordinary meaning
`
`Exhibit B - 1
`
`MSI Extrinsic Evidence
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`McGraw-Hill Dictionary of Scientific
`and Technical Terms (Fifth Edition) at
`1421; Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`The Merriam-Webster Dictionary
`(2004) at 551; Expert testimony from
`Dr. Kevin Almeroth or Dr. Stephen
`Wicker regarding the scope of this
`term.
`
`Microsoft Computer Dictionary
`(Fourth Edition) at 81; The Merriam-
`Webster Dictionary (2004) at 119;
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Motorola Solutions, Inc., Ex1027, p. 11
`
`

`

`Proposed By
`MSI/STA Entities
`
`EXHIBIT C – ’134 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`“software and/or hardware that
`controls a satellite link for
`multicasting and tracks presence
`data”
`The entire phrase as recited by MSI
`should be construed as “satellite
`link that simultaneously delivers
`information between a group of
`users in the first domain and a
`group of users in the second
`domain using the most efficient
`strategy”
`
`MSI/STA Entities
`
`’134 Patent Claim Term
`communication resource
`manager
`
`(Claim 8)
`link for multicasting (STA
`Entities)
`
`link for multicasting between
`users in the first domain and
`users in the second domain
`(MSI)
`
`(Claim 8)
`presence data of at least one user
`in the first domain and at least
`one user in the second domain
`
`No.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`MSI
`
`(Claim 8)
`presence data
`
`MSI/STA Entities
`
`(Claim 8)
`communication session
`
`MSI/STA Entities
`
`(Claim 8)
`
`“presence data of both of at least
`one user in the first domain and at
`least one user in the second
`domain”
`
`“a status indicator that conveys an
`ability and/or willingness of a
`potential communication partner to
`communicate”
`Plain and ordinary meaning
`
`Exhibit C - 1
`
`MSI Extrinsic Evidence
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Microsoft Computer Dictionary Fourth
`Ed. (1999) at 301; Microsoft Encarta
`College Dictionary (2001) at 948;
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Tech Terms (2006) at 201
`
`Microsoft Computer Dictionary Fourth
`Ed. (1999) at 405; SIP: Session
`Initiation Protocol, Network Working
`Group (2002) at 8; Expert testimony
`from Dr. Kevin Almeroth or Dr.
`Stephen Wicker regarding the scope of
`this term.
`
`Motorola Solutions, Inc., Ex1027, p. 12
`
`

`

`EXHIBIT C – ’134 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`“software and/or hardware in the
`communication resource manager
`that establishes, tears down, and
`controls the bandwidth of the
`satellite link”
`
`Proposed By
`MSI
`
`No.
`
`’134 Patent Claim Term
`trunking element
`
`(Claim 8)
`
`6
`
`virtual talk group (VTG)
`
`MSI
`
`“a talk group that communicates
`using an IP address”
`
`MSI Extrinsic Evidence
`Comparisons of Conventional and
`Trunked Systems, May 1999, at 9;
`U.S. Patent No. 7,836,183 at 1:57-2:23;
`We’ve Got To Talk: Emergency
`Communications and Engineering
`Ethics, IEEE Technology and Society
`Magazine (July 2006); Analysis of
`Public Safety Traffic on Trunked Land
`Mobile Radio Systems, IEEE Journal
`on Selected Areas in Communications,
`Vol. 22, No. 7 (Nov. 2004)
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`The Merriam-Webster Dictionary
`(2004) at 809; Microsoft Computer
`Dictionary Fourth Ed. (1999) at 470;
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`7
`
`(Claim 9)
`
`Order of steps
`
`MSI
`
`8
`
`9
`
`(Claims 8, 9)
`domain
`
`(Claim 8)
`
`The steps must be performed in the
`recited order.
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`STA Entities
`
`Plain and ordinary meaning
`
`Microsoft Computer Dictionary Fourth
`Ed. (1999) at 150; The Merriam-
`Webster Dictionary (2004) at 213
`
`Exhibit C - 2
`
`Motorola Solutions, Inc., Ex1027, p. 13
`
`

`

`EXHIBIT C – ’134 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`Plain and ordinary meaning
`
`Proposed By
`STA Entities
`
`MSI Extrinsic Evidence
`Microsoft Encarta College Dictionary
`(2001) at 5
`
`’134 Patent Claim Term
`absence
`
`No.
`
`10
`
`(Claim 8)
`
`Exhibit C - 3
`
`Motorola Solutions, Inc., Ex1027, p. 14
`
`

`

`No.
`
`’664 Patent Claim Term
`media stream[s]
`
`(Claims 1-3, 5)
`
`channels
`
`(Claim 1)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`EXHIBIT D – ’664 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`“a continuous sequence of audio or
`audio-and-video, which may
`include associated data, through a
`network”
`
`Proposed By
`MSI
`
`MSI/STA Entities
`
`“two or more paths of differing
`priority”
`
`Extrinsic Evidence
`Microsoft Computer Dictionary, Fourth
`Edition (1999) at 285; Expert testimony
`from Dr. Kevin Almeroth or Dr.
`Stephen Wicker regarding the scope of
`this term.
`Merriam-Webster Dictionary (2004) at
`119-120; Microsoft Computer
`Dictionary, Fourth Edition (1999) at
`81; Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`Expert testimony from Dr. Kevin
`Almeroth or Dr. Stephen Wicker
`regarding the scope of this term.
`
`media stream receiving the alert
`
`STA Entities
`
`Plain and ordinary meaning
`
`(Claim 1)
`an adjustment is made to how
`the media stream is provisioned
`to an endpoint
`
`(Claim 1)
`endpoint
`
`(Claim 1)
`Order of steps
`
`(Claim 1)
`
`MSI
`
`MSI
`
`MSI
`
`“an adjustment is made to how the
`media stream is propagated to an
`endpoint relative to the other media
`streams”
`
`“end-user device capable of
`exchanging audio or other data in
`the architecture”
`The steps must be performed in the
`recited order.
`
`Exhibit D - 1
`
`Motorola Solutions, Inc., Ex1027, p. 15
`
`

`

`EXHIBIT D – ’664 Patent
`DEFENDANT’S PRELIMINARY PROPOSED CONSTRUCTIONS
`AND IDENTIFICATION OF EXTRINSIC EVIDENCE
`MSI Preliminary Proposed
`Construction
`Plain and ordinary meaning
`
`Proposed By
`STA Entities
`
`Extrinsic Evidence
`Microsoft Computer Dictionary, Fourth
`Ed. (1999) at 169
`
`No.
`
`7
`
`’664 Patent Claim Term
`“communication environment”
`
`(Claim 1)
`
`Exhibit D - 2
`
`Motorola Solutions, Inc., Ex1027, p. 16
`
`