Case 6:14-cv-00982-KNM Document 135-1 Filed 10/22/15 Page 1 of 5 PageID #: 993
`Case 6:14-cv-00982-KNM Document135-1 Filed 10/22/15 Page 1of5 PagelD#: 993
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`EXHIBIT A
`EXHIBIT A
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`Case 6:14-cv-00982-KNM Document 135-1 Filed 10/22/15 Page 2 of 5 PageID #: 994
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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 St.
`Tyler, Texas 75702
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`October 22, 2015
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`Re:
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`Cellular Communications Equipment LLC v. LG Electronics, Inc. et al.
`Civil Action No. 6:14-cv-00982-JRG-KNM (Lead Case)
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`Dear Magistrate Judge Mitchell:
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`Plaintiff’s letter (D.I. 129) opposing Defendants’ request to seek summary judgment of
`indefiniteness (D.I. 123) identifies no facts in dispute that would preclude the Court from
`resolving the indefiniteness dispute now. While asserting (Opp. at 1) that Defendants “fail to
`consider the perspective of one skilled in the art,” Plaintiff does not address Defendants’
`detailed accounts of how Defendants’ expert will testify concerning a POSA’s perspective. Nor
`does Plaintiff suggest that it can present any expert testimony to the contrary. Thus, Plaintiff’s
`letter confirms that the time is ripe for Defendants to move for summary judgment that ’060
`claim 15, ’556 claims 15 and 23, and ’966 claims 5-7 and 14-17 are invalid as indefinite.
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`I.
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`’060 Claim 15: Plaintiff’s Response Confirms the Lack of an Objective Standard.
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`Defendants cited two separate reasons – both backed by specific references to what
`Defendants’ expert will explain – why there are no “objective boundaries” from which a POSA
`could determine what constitutes “accurate receipt” in the context of the ’060 patent. Interval
`Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). First, there are multiple
`frames of reference against which the accuracy of receipt could be measured. Second, “accurate
`receipt” itself is a term of degree in the field of digital communications. These uncertainties are
`fatal given the lack of any intrinsic evidence relevant to “accurate receipt.”
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`Plaintiff’s only response concerning the “multiple frames of reference” ambiguity is to
`assert that claim 15 “plainly contemplates” one of the two possibilities and not the other. Such
`“[a]ttorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe, Inc., 424
`F.3d 1276, 1284 (Fed. Cir. 2005) (affirming summary judgment of invalidity).
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`Plaintiff responds to the “term of degree” problem by selectively citing a dictionary.
`Notably, however, Plaintiff fails to address the two definitions of “accurate,” cited in
`Defendants’ letter, which confirm that “accurate receipt” is a term of degree. Instead, Plaintiff
`distorts the one definition that it does cite. Plaintiff quotes a truncated version of an inapposite
`third definition – “free from error esp. as the result of care [an ~ diagnosis]” (highlighted
`portion omitted in Plaintiff’s letter).1 An “accurate diagnosis” (e.g., determining that a patient
`has the flu and not the Ebola virus) is immaterial to “accurate receipt” of a digital message (i.e.,
`determining if the necessary percentage of bits have been correctly received).
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`1 Plaintiff also incorrectly includes “correct,” which the dictionary lists only as a synonym.
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`Wolf, Greenfield & Sacks, P.C. | www.wolfgreenfield.com
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`Case 6:14-cv-00982-KNM Document 135-1 Filed 10/22/15 Page 3 of 5 PageID #: 995
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`Plaintiff also makes the correct but irrelevant observation (Opp. at 1) that there are
`“accepted processes for … ensuring that messages are received correctly.” These techniques are
`immaterial given the undisputed fact – explained in Defendants’ letter but not addressed by
`Plaintiff – that POSAs consider how accurate a transmission needs to be in a given context.
`What is “accurate” enough for one application is different than what is “accurate” enough for
`another. Further, as Defendant’s expert will also explain, these “accepted processes” are not
`capable of perfect fidelity (i.e., confirming that all bits are received without the possibility of any
`being lost or transmuted, with perfect certainty). The degree of accuracy between these
`processes can differ by orders of magnitude.
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`Indeed, the existence of “accepted processes” for determining the accuracy of message
`receipt is irrelevant here for the same reason that Judge Davis granted summary judgment of
`indefiniteness in the ADT case (discussed in Defendants’ letter, but not addressed by Plaintiff )
`even though there were accepted processes for determining the smoothness of bumps. The
`patentee in ADT submitted an expert declaration discussing various “prior art” references for
`determining smoothness, but those methods were legally immaterial because the specification
`provided no “guidance” for which technique “should serve as a benchmark.” 2012 WL 2872121,
`at *15 (E.D. Tex. July 12, 2012). Here, likewise, there is no intrinsic evidence suggesting what
`constitutes “accurate receipt.” Without any such objective guidance, the term is indefinite and
`Defendants respectfully request permission to move for summary judgment to this effect.
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`II.
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`’556 Claims 15 and 23: CCE Concedes the Operative Facts and Construes the
`Claims Such That the Disputed Terms are Superfluous.
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`Defendants cited two indisputable facts confirming that the phrases “type 1 power
`headroom report” and “type 2 power headroom report” (appearing in ’556 claims 15 and 23) are
`indefinite. First, a POSA at the relevant time would have needed to rely solely on the ’556
`specification to understand the meaning of these terms. Second, the only relevant guidance is a
`passage (5:36-41) reciting the equations that also appear in dependent claims 16 and 24, which
`are presumptively narrower than claims 15 and 23 under the doctrine of claim differentiation.
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`Plaintiff concedes both of these facts, yet incorrectly asserts (Opp. at 2) that “the
`inventors [were] not required to specify how” type 1 and type 2 reports are calculated. Given
`that “type 1” and “type 2” reports were not terms of art at the time of the alleged invention, the
`inventors plainly did need to define them in the specification if they wanted to prosecute claims
`distinguishing between type 1 and type 2 reports. By contrast, Hill-Rom (Opp. at 2) concerned a
`term (“datalink”) that indisputably had an ordinary meaning to a POSA. That ordinary meaning
`controlled even though the specification only described wired datalinks. Here, “type 1” and
`“type 2” power headroom reports indisputably lacked plain and ordinary meanings, outside the
`context of the patent, at the relevant time. POSAs instead would have needed to rely solely on
`the specification, raising the “fundamental question” that Defendants’ opening letter emphasized
`given the mismatch between the specification and principles of claim differentiation.
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`Plaintiff attempts to recast “type 1” reports as a “first type” of report and “type 2” as a
`“second type” of report, thus concluding that the only limitation on “type 1” and “type 2” reports
`is that they be different. This expansive approach renders these proper nouns (i.e., “type 1” and
`“type 2”) superfluous. Claims 15 and 23 both require that the power head room report control
`element includes “at least one of: a type 1 power headroom report for a primary serving cell and
`a type 2 power headroom report for the primary serving cell.” Under Plaintiff’s theory that type
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`Case 6:14-cv-00982-KNM Document 135-1 Filed 10/22/15 Page 4 of 5 PageID #: 996
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`1 or type 2 reports merely need to be different, the inventors could just as easily have claimed “at
`least one power headroom report for the primary serving cell” without changing the scope of
`claims 15 and 23. Yet “claims are interpreted with an eye toward giving effect to all terms.”
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
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` In essence, Plaintiff argues that the term it made up to mean one thing – a report
`calculated a specific way – could mean anything. It does not. Defendants respectfully request
`permission to move for summary judgment that ’556 claims 15 and 23 are indefinite.
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`III.
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`’966 Claims 5-7 and 14-17: CCE Did Not Refute Defendants’ Factual Contentions.
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`Defendants cited indisputable facts identifying inconsistencies in claims 5 and 14
`rendering the claims indefinite: (1) the requirement that “the initial transmit power depends on
`… the second power control adjustment state f(0); and (2) that the initial transmit power equation
`in Claim 5 does not refer to the second power control adjustment state, f(0). (D.I. 123-1, pp. 5-6.)
`Defendants also identified expert testimony explaining that a POSA could not determine the
`scope of the claims with reasonable certainty, rendering them indefinite. (Id.) This same issue
`was identified in the European prosecution, prompting the patentee to cancel the claims. (Id.)
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`Plaintiff did not refute Defendants’ factual contentions, nor did it suggest that its own
`expert would offer contrary testimony. Instead, Plaintiff pointed to the substitution method and
`Kyocera’s Petition for Inter Partes Review (IPR) as evidence that the claims are not indefinite.
`This reliance is misplaced. Kyocera’s expert in the IPR does not testify that the claims are
`definite. Rather, as Plaintiff acknowledges, Kyocera’s expert stated only that “[T]he equation in
`claim 5 can be rewritten with the Ppreamble variable expanded per Equation 3 of the ‘966 patent.”
`Yet, whether the equation in claim 5 can be rewritten in a particular manner is not determinative
`of whether a POSA would understand that the claimed equation was meant to be rewritten in that
`manner, and therefore is not determinative of whether the claim is definite. The fact that Kyocera
`developed a construction does not mean that the term is definite. The claim construction inquiry
`is separate and apart from the indefiniteness doctrine under Nautilus. Halliburton Energy Servs.,
`Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Even if a claim term’s definition can be
`reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot
`translate the definition into meaningfully precise claim scope”). Moreover, an IPR reviews the
`patentability of one or more claims in a patent only on grounds that could be raised under §§ 102
`or 103. Defendants cannot raise indefiniteness issues in an IPR and must therefore apply some
`construction, even if it may not conform to the reasonable certainty requirement of § 112. See In
`re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1289 (2015) (dissent explaining that IPR
`“broadest reasonable construction” is inconsistent with § 112).
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`By its reply, Plaintiff contends that the equations for PMsg3 in claims 5 and 14 require a
`math substitution of Equation [3] into Ppreamble. (See D.I. 129-1, p. 3.) However, such a
`substitution is not called for in the claims at issue, and undisputed testimony from Defendants’
`expert establishes that a POSA would not have known that a substitution would be required or
`what the substitution should be. Plaintiff cites nothing to suggest that a POSA would understand
`that the substitution should be performed. Plaintiff is not entitled to rewrite the claims to avoid
`an indefiniteness finding. See Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349
`(Fed.Cir.2002) (a court does not “ rewrite [indefinite] claims to preserve their validity”).
`Accordingly, Defendants respectfully request permission to move for summary judgment that
`’966 claims 5 and 14, as well as their dependent claims, are indefinite.
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`Case 6:14-cv-00982-KNM Document 135-1 Filed 10/22/15 Page 5 of 5 PageID #: 997
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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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