Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 1 of 7 PageID #: 864
`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page1of7PagelD#: 864
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`EXHIBIT A
`EXHIBIT A
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 2 of 7 PageID #: 865
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`September 25, 2015
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`VIA ECF FILING
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`Hon. Magistrate Judge K. Nicole Mitchell
`William M. Steger Federal Building and United States Courthouse
`211 W. Ferguson Street
`Tyler, Texas 75702
`
`
`Cellular Communications Equipment LLC v. LG Electronics, Inc. et al.
`Re:
`Civil Action No. 6:14-cv-00982-JRG-KNM (Lead Case)
`
`Dear Magistrate Judge Mitchell:
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`Defendants request permission to move for summary judgment that claim 15 in U.S.
`Patent No. 8,868,060; claims 15 and 23 in U.S. Patent No. 8,848,556; and claims 5-7 and 14-17
`in U.S. Patent No. 8,385,966 are invalid as indefinite under 35 U.S.C. § 112, ¶ 2. These claims
`fail to “inform, with reasonable certainty, persons of ordinary skill in the art about the scope of
`the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
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`I.
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`’060 Patent: Claim 15 Is Invalid Because “Accurate Receipt” Is a Term of Degree
`For Which There is No Objective Standard to Determine Its Scope.
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`The ’060 patent describes a system for sending emergency warnings to terminals of a
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`cellular mobile network. The system first sends a paging message with one or more “specific
`identifiers,” pertaining to different types of emergencies. When a terminal receives such a
`paging message, it recognizes the specific identifier and switches to a broadcast channel from
`which it receives the emergency information content.
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`Claim 15 requires a terminal with a processor that is configured to “switch to a broadcast
`mode for receiving broadcast content on a broadcast channel only if the paging message received
`from the base station includes the at least one specific identifier of the group of the specific
`identifiers, without waiting to confirm accurate receipt of an emergency warning message.”
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`Claim 15 is indefinite because there are no “objective boundaries” allowing a person
`skilled in the art to determine what constitutes “accurate receipt.” Interval Licensing v. AOL,
`766 F.3d 1364, 1371 (Fed. Cir. 2014) (affirming indefiniteness: “The claims, when read in light
`of the specification and the prosecution history, must provide objective boundaries for those of
`skill in the art.”); Adv. Display Techs. of Texas v. AU Optronics Corp., 2012 WL 2872121, *15
`(E.D. Tex. July 12, 2012) (granting summary judgment of indefiniteness because record “fail[ed]
`to provide an objective standard to determine whether a bump is ‘smooth’”).
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`The term “accurate receipt” never appears in the ’060 patent except in claim 15 itself.
`The file history does not address the meaning of the phrase. Accordingly, the intrinsic record
`offers no indication at all – much less “reasonable certainty” – what “accurate receipt of an
`emergency warning message” means.
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`Wolf, Greenfield & Sacks, P.C.  |  600 Atlantic Avenue  |  Boston, Massachusetts  02210‐2206 
`617.646.8000  |  fax 617.646.8646  |  www.wolfgreenfield.com 
`
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 3 of 7 PageID #: 866
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`The Honorable K. Nicole Mitchell
`September 25, 2015
`Page 2
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`In the absence of any intrinsic evidence, two separate fatal uncertainties render the term
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`“accurate receipt” indefinite.
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`First, as Defendants’ expert will explain, there are multiple frames of reference against
`which the accuracy of receipt could be measured in the context of claim 15, and no indication is
`provided as to which frame of reference is covered by the claim. For instance, “accurate receipt”
`could refer to whether the terminal received the message that was actually transmitted by the
`base station (i.e., there was no error in transmission). However, “accurate receipt” could instead
`refer to whether the message received by the terminal’s processor is the same as the message
`received at the terminal’s antenna (i.e., there was no error introduced by the terminal during
`processing the receipt of the message). Given the lack of intrinsic evidence, it would be
`impossible for a person of ordinary skill in the art to know which frame of reference claim 15
`contemplates.
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`Second, “accurate receipt” is a term of degree, particularly in the field of digital
`communications. As Defendants’ expert will explain, perfect fidelity (i.e., confirming that every
`bit transmitted is the same as every bit received, without any bits being lost or transmuted from a
`0 to 1 or vice versa) is rarely if ever required. Instead, those of skill in the art consider how
`accurate a transmission should be in a particular context. However, the ’060 patent never
`indicates the degree of accuracy required to qualify as “accurate receipt.” Cf. Halliburton
`Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1256 (Fed. Cir. 2008) (holding that “fragile
`gel” was indefinite because, without guidance from the specification, “it is ambiguous as to the
`requisite degree of the fragileness of the gel”); Adv. Display Techs., 2012 WL 2872121 at *14
`(granting summary judgment that “smooth bumps” was indefinite because the “specification fails
`to provide any objective anchor to determine how smooth the bumps must be to facilitate” the
`function they were supposed to serve) (emphasis original).
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`Without an “objective anchor” indicating the degree of accuracy required, claim 15 is
`indefinite. Nothing in the record indicates either the type or the degree of “accuracy” that is
`covered by the claim. It is not enough that a skilled artisan could arrive at a possible approach.
`Dow Chem. Co. v. Nova Chems. Corp., – F.3d – , 2015 WL 5060947, * 9 (Fed. Cir. 2015)
`(“Before Nautilus, a claim was not indefinite if someone skilled in the art could arrive at a
`method and practice that method . . . . Under Nautilus this is no longer sufficient.”).
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`Moreover, Plaintiff’s own cited extrinsic evidence confirms the ambiguity inherent in the
`word “accurate.” Plaintiff cites a dictionary that proffers two conflicting definitions. One is
`“able to give an accurate result [an ~ gauge],” which, while circular, seems to permit less than
`exact precision so long as the result is within an acceptable range. Merriam Webster’s
`Collegiate Dictionary, 10th Ed. (1999). Another is “conforming exactly to . . . a standard.” Id.
`(emphasis added). But the intrinsic record neither specifies which definition of “accurate”
`applies, nor specifies the objective standards to make the determination under either definition.
`Thus, one of ordinary skill in the art would be unable to discern the bounds of claim 15.
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 4 of 7 PageID #: 867
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`The Honorable K. Nicole Mitchell
`September 25, 2015
`Page 3
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`For these reasons, Defendants request permission to move for summary judgment that
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`’060 claim 15 is invalid as indefinite.
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`II.
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`’556 Patent: Claims 15 And 23 Are Invalid Given the Mismatch Between the
`Specification and Principles of Claim Differentiation, Making It Uncertain What the
`Claims Mean When By “Type 1” and “Type 2” Power Headroom Reports.
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`The ’556 patent concerns “power headroom” reporting. Claims 15 and 23 refer to a
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`power headroom report control element that includes at least one of a “type 1 power headroom
`report” and a “type 2 power headroom report.” Dependent claims 16 and 24 depend from claims
`15 and 23 and specify particular equations for computing “type 1” and “type 2” power headroom
`reports. Claims 15 and 23 are indefinite because a skilled artisan would not understand how
`these claims are broader than the dependent claims 16 and 24, as they are presumed to be under
`the doctrine of claim differentiation.
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`As of the ’556 patent’s filing date in 2011, a person of ordinary skill in the art would
`have had to rely solely on the intrinsic record to understand what the inventors meant by “Type
`1” and “Type 2” power headroom reports. As Defendant’s expert will testify, one of ordinary
`skill in the art would not have understood “Type 1” and “Type 2” power headroom reports as
`terms of art.1
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`The only relevant discussion concerning “Type 1” and “Type 2” reports in the ’556
`specification is a passage that recites the exact same equations later recited in dependent claims
`16 and 24:
`Type 1 and Type 2 power headroom reports may employ the following definition. . . .
`Type 1 power headroom report can be computed as: P_cmax,c minus PUSCH power.
`Type 2 power headroom report can be computed as: P_cmax,c minus PUCCH power
`minus PUSCH power
`(5:36-41).2
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`1 Aside from a placeholder for rebuttal testimony, Plaintiff’s only extrinsic evidence is a
`document (3GPP TS 36.321 v.11.0.0) created years after the ’556 patent was filed. Such
`evidence is immaterial as a matter of law. E.g., Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc.,
`334 F.3d 1294, 1299 (Fed. Cir. 2003).
`2 Plaintiff cites other portions of the specification, but none of those portions describe what
`“Type 1” and “Type 2” reports are – much less how they can be calculated. The portions cited
`by Plaintiff concern unrelated issues such as how the power headroom report might be packaged
`and sent to the base station (i.e., after being calculated).
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 5 of 7 PageID #: 868
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`The Honorable K. Nicole Mitchell
`September 25, 2015
`Page 4
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`For these reasons, Defendants have proposed an alternative to indefiniteness:
`construing “type 1 power headroom report” and “type 2 power headroom report” based
`on the equations that appear in column 5 and then again in dependent claims 16 and 24.
`D.I. 120, Ex. B at 4. These equations provide the only evidence that would inform one of
`ordinary skill in the art what these terms mean.
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`However, Defendants anticipate that Plaintiff will stress the doctrine of claim
`differentiation, under which claims 15 and 23 are presumed (though not required) to be
`broader in scope than claims 16 and 24. E.g., Hill-Rom Servs., Inc. v. Stryker Corp., 755
`F.3d 1367, 1374 (Fed. Cir. 2014).
`Claim differentiation begs a fundamental question here: If claim 15 is broader
`than claim 16 and claim 23 is broader than claim 24, then how much broader are they?
`More specifically, if the equations recited in the specification (and in claims 16 and 24)
`do not define the boundaries of a “type 1 power headroom report” and a “type 2 power
`headroom report,” then what other types of reports would qualify? The intrinsic record
`provides no evidence aside from the equations themselves. Nor, as noted above, were
`these terms of art at the time the application for the ’556 patent was filed.
`Thus, claim differentiation confirms the lack of “reasonable certainty” as to the
`scope of ’556 claims 15 and 23. Defendants therefore request permission to move for
`summary judgment that these claims are invalid as indefinite.
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`III.
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`’966 Patent: Claims 5-7 and 14-17 Are Invalid as Indefinite
`Because They Are Ambiguous and Internally Inconsistent.
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`Claims 5 and 14 of the ’966 patent and their asserted dependent claims are invalid for
`indefiniteness because they are internally inconsistent. As such, a person of ordinary skill in the
`art would not be able to determine their scope with reasonable certainty.
`Claims 5 and 14 (depending from claims 1 and 10, respectively) require that “the initial
`transmit power depends on … the second power control adjustment state f(0); ….” However, the
`initial transmit power equations in Claims 5 and 14 do not refer to the second power control
`adjustment state, f(0). This flaw is not resolved by reference to the specification, because the
`corresponding equation, Equation 5, in the specification also contains no reference to the second
`power control adjustment state. See ’966 Patent, 8:7-17; 8:19-21. Claims 5 and 14 are therefore
`indefinite and invalid. Indeed, the prosecution of a European counterpart application (discussed
`further below) confirms the same.
`Turning first to the claims, claims 5 and 14 (incorporating claims 1 and 10) require:
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 6 of 7 PageID #: 869
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`The Honorable K. Nicole Mitchell
`September 25, 2015
`Page 5
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`compute an initial transmit power for the uplink shared channel … wherein the initial
`transmit power depends on a preamble power of a first message sent on an access channel
`and the second power control adjustment state f(0); …
`wherein the second power control adjustment state f(i) for i=0 is initialized as:
`P 0 — UE — PUSCH +f(0)=ΔP PC +ΔP rampup …
`wherein the initial transmit power PMsg3 of the third message for i=0 is equal to:
`P Msg3=min{P max ,P preamble+Δ0,preamble — Msg3+ΔPC — Msg3+
`10log10(M PUSCH(i)) + ΔTF(TF(i))} …
`’966 Patent, Claim 1 (12:59-13:20), 5 (13:47-62), 10 (14:47-15:8), and 14 (15:37-16:10).
`As Defendants’ expert will testify, a person of ordinary skill in the art would not be able to
`determine the scope of claims 5 and 14 with reasonable certainty. Based on the claim language, a
`person of ordinary skill in the art would expect the second power control adjustment state, i.e.,
`f(0) (or f(i) for i = 0) to appear in the mathematical equation for the initial transmit power PMsg3 –
`as the initial transmit power “depends on … the second power control adjustment state f(0).”
`Given the absence of any reference to f(0) in that equation, a person of ordinary skill in the art
`would find claims 5 and 14 internally inconsistent and contradictory, and thus could not
`determine their scope.
`The inconsistency is not resolved by the written description. Equation 5 is identical in all
`respects to the PMsg3 equation found in claims 5 and 14. (’966 Patent, 8:15-17). However, no
`reference to the second power control adjustment state, f(0), is found either in Equation 5 or in the
`description of Equation 5. (’966 Patent, 7:46-62).
`When examining materially identical claims3 in a counterpart application, the European
`Patent Office objected to this ambiguity. International Preliminary Report on Patentability, dated
`November 9, 2010, states that:
`[t]here is a contradiction between the wording of claim 1 for describing the initial
`transmit power of the uplink shared channel and the mathematical formula disclosed in
`claim 6 regarding the initial transmit power of the third message for i=0, because in said
`formula there is no mention to the second power control adjustment state f(0).
`Following this report, the patent applicant cancelled the claims in question. Defendants
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`request permission to file a motion for summary judgment that the corresponding claims here (i.e.,
`5 and 14) and their dependent claims are invalid as indefinite.
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`3 Independent claim 1 of the European application recited in relevant part “wherein the initial
`transmit power…is initialized with the second power control adjustment state f(0)” and claim 6,
`which depended from claim 1, recited the identical equation to that in claim 5 of the ’966 patent.
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`Case 6:14-cv-00982-KNM Document 123-1 Filed 09/25/15 Page 7 of 7 PageID #: 870
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`The Honorable K. Nicole Mitchell
`September 25, 2015
`Page 6
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`Very truly yours,
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`WOLF, GREENFIELD & SACKS, P.C.
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`Michael N. Rader
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`Counsel for Sony Mobile Communications
`(USA) Inc.
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`ON BEHALF OF ALL DEFENDANTS
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