Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 1 of 39
`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 1 of 39
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 2 of 39
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`CASE NO. 1:20-cv-00765-LY
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`BANDSPEED, LLC,
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`Plaintiff,
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`v.
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`REALTEK SEMICONDUCTOR
`CORPORATION,
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`Defendant.
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`EXPERT DECLARATION OF
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`Dr. José Luis Meléndez
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`REGARDING CLAIM CONSTRUCTION
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 3 of 39
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................................... 1
`I.
`II. LEGAL BASIS FOR OPINION ........................................................................................ 4
`III. CLAIM CONSTRUCTION ANALYSIS .......................................................................... 8
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 4 of 39
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`This declaration is submitted pursuant to Rule 26(a)(2) of the Federal Rules of Civil
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`Procedure.
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`I.
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`
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`INTRODUCTION
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`A.
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`Asserted Patents
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`I understand that Bandspeed, LLC (“Bandspeed” herein) has asserted that Realtek
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`Semiconductor Corporation (“Realtek” or “Defendant” herein) infringes the following U.S. Patent
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`Nos.: 7,027,418 (“‘418 Patent” or “’418”); 7,477,624 (“‘624 Patent” or “’624”); 7,570,614
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`(“‘614 Patent” or “’614”); 7,903,608 (“‘608 Patent” or “’608”); 8,542,643 (“‘643 Patent” or
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`“’643”); 8,873,500 (“‘500 Patent” or “’500”); 9,379,769 (“’769 Patent” or “’769”); and 9,883,520
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`(“’520 Patent” or “’520”) and collectively the “Asserted Bandspeed Patents” or “Asserted Patents”.
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`B.
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`Retention
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`
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`In connection with Bandspeed, LLC. v. Realtek Semiconductor Corporation, Civil Action
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`No. WDTX-1-20-cv-00765 (the “Case”), I have been retained by counsel for Bandspeed to provide
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`expert analysis and offer my opinions regarding the subject patents, aspects related to the Case,
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`and the meaning of claim terms as would be understood by a person of ordinary skill in the art
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`(POSITA). The purpose of this declaration is to set forth my opinions regarding these issues. I
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`submit this declaration as part of my preparation to provide testimony at the claim construction
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`hearing in the Case if called upon to do so.
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`My company is paid for my work in the Case in the amount of $450 per hour. The
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`compensation is not dependent upon the outcome of the Case. Bandspeed may also reimburse my
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`company for travel and other expenses incurred in the course of my work on this Case. Neither my
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`company nor myself have any personal interest in the outcome of the Case.
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`My qualifications for opining as documented in this Declaration are summarized in my
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`1
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 5 of 39
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`Curriculum Vitae (or “CV”), which is included with this declaration, and include my education,
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`training, and experience of over 35 years. Exhibit 2. My CV also includes a list of my patents and
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`publications. The opinions I express in this Declaration are based on my own personal knowledge
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`and professional judgment. If called as a witness in the Case, I am prepared to testify competently
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`about my opinions. If asked, I may also provide a brief tutorial on the relevant technologies
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`associated with the Bandspeed Patents including topics such as hardware and software, as well as
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`an explanation of the general nature of wireless communication.
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`C.
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`Qualifications
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`1.
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`Background and Experience
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`
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`I was born in and am a citizen of the United States. I reside in Mayaguez, Puerto Rico. I
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`have a Bachelor of Science in Electrical Engineering from the Massachusetts Institute of
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`Technology (awarded June 4, 1990) and graduated with a Grade Point Average of 5.0/5.0. I also
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`obtained a Master of Science in Electrical Engineering and Computer Science from the
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`Massachusetts Institute of Technology (awarded February 20, 1991) with a Grade Point Average
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`of 4.8/5.0. I also hold a Doctor of Philosophy in Electrical Engineering from Stanford University
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`(awarded January 6, 1994) with a Grade Point Average of 4.0/4.0.
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`Amongst other topics, my doctoral thesis involved the definition, solution and validation
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`of a stiffly coupled differential equation model for the formation of semiconductor devices useful
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`in high performance military systems. Amongst other accomplishments, for my doctoral thesis I
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`developed novel algorithms for the solution of the complex equations and implemented those
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`algorithms in computer code.
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`I am co-inventor of patented technology related to the formation and maintenance of high
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`data rate wireless data links. Devices exhibiting 100 Mb/sec data rates utilizing the high data rate
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 6 of 39
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`optical wireless technology were demonstrated publicly in 2001.
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`While at Texas Instruments I managed the wireless infrastructure business that designed,
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`tested, and marketed semiconductor components for use within the radio frequency signal chain
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`of high-performance radios used in infrastructure applications such as cellular base stations.
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`In 2002 I founded Commoca, Inc. (“Commoca”). Commoca developed hardware,
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`embedded software (or “firmware”), and network services for the deployment of converged voice
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`and data services over wired and wireless communications networks. Commoca devices utilized
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`IEEE 802.11 (“WiFi” or “Wi-Fi”) technology to connect touch screen telephones to access points
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`and were believed to have been amongst the first of such devices to do so. Converged
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`communications devices provided by Commoca were field tested by BellSouth Corporation (now
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`AT&T) at consumer locations in Florida and Georgia in 2006.
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`In 2009, while working as a research consultant for the University of Texas Southwestern
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`Medical in Dallas (UTSW), I founded Spectral MD together with UTSW as a university spinoff
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`company to develop specialized systems (US 8,838,211) for medical applications. The company
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`had its initial public offering and is presently listed in the AIM market of the London Stock
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`Exchange.
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`My professional experience and knowledge include, amongst other areas, semiconductor
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`devices, software, and wireless communications as are particularly relevant to the subject matter
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`of this Declaration. Other areas where I have expertise are noted in my CV.
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`
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`D.
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`Information Considered in Forming Opinion
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`In forming my opinions in this Case, I have reviewed the Asserted Patents, the prosecution
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`histories of the Asserted Patents (including any IPRs applicable to the Asserted Patents) before the
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`United States Patent & Trademark Office.
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`3
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`I have reviewed the Court’s Memorandum Opinion and Order Regarding Claim
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`Construction dated August 12, 2011 for Cause No. A-09-CA-593-LY (“the Order” herein). A true
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`and correct copy of the Order (Doc. No. 256) is attached hereto as Exhibit 11.
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`I currently hold the opinions set forth in this Declaration. As my study of the Case
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`continues, I may acquire additional information and/or attain supplemental insights that result in
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`added observations. I reserve the right to supplement this Declaration and to rely on additional
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`documents and testimony that come to my attention between now and the time of my testimony. I
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`also reserve the right to supplement my Declaration based on any additional supplemental
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`production of documents. I also reserve the right to rely on other declarations or expert
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`reports submitted in this litigation. Nevertheless, I believe the evidence cited to date provides
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`support for the opinions expressed in this Declaration.
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`II.
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`LEGAL BASIS FOR OPINION
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`A.
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`Principles of U.S. Patent Law
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`I understand that it is a basic principle of patent law that the determination of whether a
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`patent claim is infringed or invalid requires a two-step analysis. In the first step, the claim language
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`must be properly construed to determine its scope and meaning.
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`B.
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`Claim Construction
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`I note that the United States District Court for the Western District of Texas has previously
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`construed certain claims of the Asserted Patents (See the Order – Exhibit 11).
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`I am not a legal expert and I am not offering an opinion on the state of the law with respect
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`to claim construction. My understanding of the legal analysis of claim construction is based on
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`discussions with counsel for Plaintiff consistent with the below.
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`Claim construction is the first step in any infringement or validity analysis. See Markman
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`v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff ’d, 517 U.S. 370 (1996). A
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`district court should construe the claims in light of their explicit language as informed by their
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`preambles, as well as the patent’s specification, figures, and prosecution history. See id. at 980; see
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`also Graham v. John Deere Co., 383 U.S. 1, 33 (1966).
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`The specification is the “best source for understanding a technical term,” to be
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`supplemented, “as needed, by the prosecution history.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1315 (Fed. Cir. 2005) (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478
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`(Fed. Cir. 1998)). The prosecution history represents key evidence of how the examiner and the
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`inventor construed the patent. See Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir.
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`1992). Claims should generally be interpreted in a manner consistent with other claims, as well as
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`with the prosecution history. See, e.g., Bell Howell Document Mgmt. Prods. Co. v. Altek Sys., 132
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`F.3d 701 (Fed. Cir. 1998). Moreover, claim terms in patents sharing a common specification and
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`application should usually be given the same interpretation. See, e.g., NTP, Inc. v. Research in
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`Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005), rehearing en banc denied; Microsoft Corp. v.
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`Multi-Tech Sys. Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004), rehearing en banc denied. It is improper
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`to confine a claim to a particular embodiment; the claim language itself is paramount. See, e.g.,
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`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008).
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`Extrinsic evidence may also be relevant to claim construction. See Phillips, 415 F.3d at
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`1317. Such evidence consists of all evidence extrinsic to the patent and its prosecution history,
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`including “expert and inventor testimony, dictionaries, and learned treatises.” Id. (internal
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`quotation omitted). While authorizing examination of extrinsic evidence, the Federal Circuit has
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`warned that, while it “can shed useful light on the relevant art,” it is “less significant than the
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`intrinsic record in determining the legally operative meaning of claim language.” Id.
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`A claim is invalid for indefiniteness only when its language, read in light of the
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`specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled
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`in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
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`898, 910 (2014). “The definiteness requirement, so understood, mandates clarity, while
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`recognizing that absolute precision is unattainable.” Id. “The certainty which the law requires
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`in patents is not greater than is reasonable, having regard to their subject-matter.” Id. Reasonable
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`certainty” does not require “absolute or mathematical precision.” Id. “In the face of an allegation
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`of indefiniteness, general principles of claim construction apply.” Enzo Biochem, Inc. v. Applera
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`Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (internal quotation marks and citation omitted). “In
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`that regard, claim construction involves consideration of primarily the intrinsic evidence, viz., the
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`claim language, the specification, and the prosecution history.” Id. “The person of ordinary skill
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`in the art is deemed to read the claim term not only in the context of the particular claim in which
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`the disputed term appears, but in the context of the entire patent, including the specification.”
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`Phillips, 415 F.3d at 1312-13.
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`Construction of a means-plus-function limitation consists of two steps: (1) identifying the
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`claimed function, and (2) determining what, if any, structure in the specification corresponds with
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`that function. Maxus Strategic Sys., Inc. v. Aqumin LLC, No. 1:11-CV-073-LY, 2014 WL 3348607,
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`at *3 (W.D. Tex. July 8, 2014) accord Intelligent Automation Design, LLC v. Zimmer Biomet CMF
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`& Thoracic, LLC, 799 F. App'x 847, 850 (Fed. Cir. 2020) citing Williamson v. Citrix Online, LLC,
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`792 F.3d 1339, 1351 (Fed. Cir. 2015). The focus of the “corresponding structure” inquiry is not
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`merely whether a structure is capable of performing the recited function, but rather whether the
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`corresponding structure is “clearly linked or associated with the [recited] function.” Id.
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`Corresponding structure can be found in “the structure, materials, or acts described in the
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`specification as corresponding to the claimed function and equivalents thereof.” Williamson, 792
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`F.3d at 1347 (Fed. Cir. 2015). “In determining which structure corresponds to the construed
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`function, claims are limited to the structures, materials, or acts disclosed in the specification, and
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`their equivalents, that perform the said function(s).” Maxus Strategic Sys., Inc., 2014 WL 3348607,
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`at *3. “[F]or a claim element recited in means-plus-function format, ‘the specification must contain
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`sufficient descriptive text by which a person of skill in the field of the invention would know and
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`understand what structure corresponds to the means limitation.’” Intelligent Automation Design,
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`799 F. App'x at 851 (internal citations omitted).
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`“Under 35 U.S.C. § 112 ¶ 2 and ¶ 6 ... a means-plus-function clause is indefinite if a person
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`of ordinary skill in the art would be unable to recognize the structure in the specification and
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`associate it with the corresponding function in the claim.” Intelligent Automation Design, LLC,
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`799 F. App'x 847, 851 (Fed. Cir. 2020) citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312
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`(Fed. Cir. 2012). When describing microprocessor-implemented functions, the specification must
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`“disclose an algorithm for performing the claimed function” on the microprocessor “in any
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`understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure.” Id. “[A]lgorithm in computer systems has broad
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`meaning, for it encompasses in essence a series of instructions for the computer to follow, whether
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`in mathematical formula, or a word description of the procedure to be implemented by a suitably
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`programmed computer.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir.
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`2011) (internal citations omitted.). For definiteness, “the computer code is not required to be
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`included in the patent specification.” Id. at 1385. And listing specific algorithms known to one of
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`skill in the art may provide sufficient structure even if the specification does not provide details on
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`their operation. See e.g., Intelligent Water Sols., LLC v. Kohler Co., No. 2:16-CV-689, 2017 WL
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`2444723, at *7 (E.D. Tex. June 5, 2017). There is an exception for certain basic functions that can
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`be performed by any general purpose computer without special programming, such as processing
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`and receiving data, such that “it [is] not necessary to disclose more structure than the general
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`purpose processor that performs those functions.” In re Katz Interactive Call Processing Patent
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`Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011).
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`C.
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`Person of Ordinary Skill in the Art
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`The technical art associated with the Asserted Patents relates to the field of processing of
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`coded electronic instructions to establish radio frequency communication between one or more
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`electronic devices. It is my belief that a person of ordinary skill in the relevant art (POSITA) of
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`the Asserted Patents in 2000 would have had a Bachelor of Science degree in Electrical or
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`Computer Engineering or Computer Science or equivalent work experience. A person of ordinary
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`skill in the art would also have been aware of Bluetooth technology at the time and had access to
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`relevant technical publications, textbooks, and online references.
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`III. CLAIM CONSTRUCTION ANALYSIS
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`A.
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`Selection Kernel
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`Term
`selection kernel
`(‘643 patent)
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`Plaintiff’s Construction
`a device or mechanism of a
`participant that selects
`communications channels to
`form the hopping sequence.
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`Defendant’s Construction
`Indefinite, or in the alternative,
`“the configuration of hardware
`and software illustrated in
`Figures 11.3 and 11.4, which is
`described in Bluetooth
`Specification 11.12 v.1.0B”.
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`A POSITA would understand the meaning of “selection kernel” in the context of the
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 12 of 39
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`‘643 Patent and “selection kernel” is not indefinite as proposed by Defendant. A POSITA would
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`understand that a selection kernel in a frequency hopping system, for example, as in the early
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`“Bluetooth…communication system” cited by the ‘643 patent, is a logically separate part of a
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`routine that selects the channels to be used in forming a hopping sequence by addressing a register
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`or an array of memory of channels. In early Bluetooth systems all available channels were used
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`regardless of performance, and hence were selectable by a basic selection kernel. See Exhibit 13,
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`Bluetooth Specification Version 1.0B at 129-133.
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`The figure below is from the prior art Bluetooth Specification Version 1.0B cited in the
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`prosecution of the ‘643 patent (Exhibit 13, Bluetooth Specification Version 1.0B at 129; ‘643
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`Patent citation at pp. 8-10):
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`In this example from the cited prior art, a basic “selection kernel” is shown to take inputs
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`X, Y1-Y2, and A-F in applying logic and permutation functions that subsequently address a
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`register storing 79 numbered channels listed first as odd then even for selecting communications
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`channels to form the hopping sequence. This exemplary selection kernel utilizes addition
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`(“ADD”), exclusive OR (“XOR”), and permutation operations within a single stage in order to
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`address a register. The exemplary selection kernel utilizes modulo 79 (“mod 79” in the above
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`figure) in order to select from all 79 default communications channels to form the hopping
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`sequence. A POSITA would understand, such as in this example, that a selection kernel is
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`implemented as a combination of hardware and software programs comprising a module and that
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`such combinations are understood to comprise software modules including devices or
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`mechanisms.
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`Concerning implementation of “adaptive” frequency hopping the ‘643 patent specification
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`states:
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`According to another embodiment of the invention, after a participant has received
`the set of selected communications channels, the participant stores data that
`indicates the new set of selected channels. For example, in a Bluetooth or IEEE
`802.15.1 FH communications system, each participant has a selection kernel that
`addresses a register. The output of the kernel is a set of addresses for each slot in
`the register, while the content of the slot in the register is a channel number. Instead
`of modifying the selection kernel, which is usually complicated, the register is
`loaded using only the selected set of communications channels. As a result, when
`the kernel addresses the register, only the selected set of channels are used.
`‘643 Patent at 19:42-54.
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`For this example in the context of the ‘643 patent, a POSITA would understand that in
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`order to use the basic selection kernel shown in Figure 11.3 of the prior art Bluetooth standard as
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`described above, it would need to be supplemented to form a selection kernel that also includes an
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`index to the output of the basic selection kernel for addressing the good channel register since the
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`selected set of channels is less than the full set.
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`The specification goes on to discuss another adaptive frequency hopping embodiment
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`having a two-stage selection kernel that utilizes the basic selection kernel 510 as a first stage for
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`addressing, but not necessarily selecting, default channels that includes a second stage for
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`addressing the set of selected good channels for selection where, “[t]he major difference between
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`the example of FIG. 5A and FIG. 5B is that in FIG. 5B, whenever selection kernel 510 addresses
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`a channel classified as bad in register with default channels 520, the bad channel is replaced with
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`a good channel that is randomly selected from table of good channels 570. Thus, only good
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`channels are selected to form the hopping sequence.” See ‘643 Fig. 5B and 20:40-46, emphasis
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`added. Thus, the ‘643 patent discloses in this example a two-stage selection kernel for selecting
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`communication channels from the set of good communications channels in forming the hopping
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`sequence. This is as claimed where, for example, in ‘643 patent claims 1, 6, and 11, “if a selection
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`kernel addresses a bad channel stored in a particular location of the default channel register, then
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`replacing, by the selection kernel, the bad channel stored in the particular location of the default
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`channel register with a good channel selected from the set of good channels loaded in the good
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`channel register. See ‘643 patent claims 1, 6, 11, emphasis added.
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`In a prior IPR, the Petitioner’s Expert’s opinion concurred that “selection kernel” is not
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`indefinite by opining that, “[a]s would be understood by one of ordinary skill in the art, a selection
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`kernel selects channels to use for transmission of data.” See Exhibit 15, IPR2016-00623
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`Petitioner’s Exhibit 1002 “Ding Declaration” at ¶39. Indeed, in a Final Written Decision
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`concerning the ‘643 Patent in IPR2015-00531 the PTAB also determined that “selection kernel”
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`was not indefinite using a broadest reasonable interpretation in light of the specification of the
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`patent to determine “selection kernel” to mean “a software module that encapsulates a register
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`addressing function,” consistent with Bandspeed’s proposed construction that specifically requires
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`“a device or mechanism of a participant that selects communications channels to form the hopping
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`sequence.” See Exhibit 14, PTAB-IPR2015-00531-39 Final Written Decision.
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`As such, “selection kernel” is not indefinite and should be construed as “a device or
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`mechanism of a participant that selects communications channels to form the hopping sequence”
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`in remaining consistent with the disclosures of the ‘643 patent specification, cited Bluetooth
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`specification prior art, and the understanding of a POSITA.
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`B.
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`Hopping Sequence
`
`Term
`the hopping sequence
`(‘608 patent)
`
`Plaintiff’s Construction
`the order in which the
`communications network hops
`among the set of frequencies
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`Defendants’ Construction
`Indefinite (lack of antecedent
`basis) for ‘608
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`Defendant apparently contends that “the hopping sequence” is indefinite as first used
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`within asserted claims 2 and 4 of the ’608 Patent because it is not written as “a hopping
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`sequence” and there is no preceding “a hopping sequence,” within claims 2 and 4, or within
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`independent claim 1. However, a POSITA would understand the meaning of the first used “the
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`hopping sequence” of each of these asserted claims with no ambiguity. The ‘608 patent
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`specification states, “[t]he order in which the communications network hops among the set of
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`frequencies is known as the hopping sequence.” ‘608 at 2:19-21, emphasis added. Claims 2 and
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`4 are dependent claims that incorporate the language of claim 1. Claim 1 does not contain the
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`term “hopping sequence.” ‘608 at 26:58-27:21. Thus, “the hopping sequence” as initially used
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`in claim 2 and in claim 4 does not attempt to refer to more than one previous recitation of the
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`term “hopping sequence.” The preamble of claim 2 refers to “the hopping sequence to be
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`performed based on a frequency hopping protocol, wherein:” and thereafter lists additional
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`limitations that include the term “hopping sequence.” ‘608 at 27:22-24. A POSITA, therefore,
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`would understand that the term “hopping sequence” as used in the limitations following
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`“wherein” refers to the same hopping sequence introduced in the preamble of claim 2. This is
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`confirmed by the language of claim 2 in which every reference to “hopping sequence” states
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 17 of 39
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`that it is of the same frequency hopping protocol. ‘608 at 27: 27:23-26, 30-31, 39-40. Claim 4
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`contains only one reference to “hopping sequence,” which a POSITA would understand refers
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`to a single hopping sequence.” 608 at 28:17-31.
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`Furthermore, I understand the parties have agreed “hopping sequence” to mean the
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`“order in which the communications network hops among the set of frequencies,” where the set
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`of frequencies are understood to be a set of communications channels. To the extent Defendant
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`contends that the identity of the set of communications channels is unclear, the claim language
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`shows otherwise. The language of both claim 2 and claim 4 clearly identify the set of
`
`communications channels among which the communications network hops in the claimed order.
`
`There is no ambiguity in this regard with respect to the asserted claims of the ‘608 patent.
`
`Claim 2 of the ‘608 patent indicates clearly that the set of frequencies are the “[first/second] set
`
`of two or more communications channels from the plurality of communications channels” of
`
`claim 1 and 2. No other sets of frequencies are claimed. In accordance with claim 2, the hopping
`
`sequence is “to be performed based on a frequency hopping protocol,” that a POSITA would
`
`understand to determine the order in which the communications network hops amongst the used
`
`sets.
`
`Claim 4 of the ‘608 patent indicates clearly that it is a “default set of two or more
`
`communications channels [that] is associated with the hopping sequence” in the very claim
`
`language that Defendant takes issue with, which is the only use of “hopping sequence” within
`
`claim 4, including claim 1 on which it depends.
`
`There is no ambiguity because the claim language itself is clear and thus the meaning
`
`within the claims are at least reasonably ascertainable by a POSITA. Therefore, a POSITA
`
`would understand the meaning of the first “the hopping sequence” and the phrase is not
`
`
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 18 of 39
`
`indefinite as used in claims 2 and 4 of the ‘608 patent.
`
`C.
`
`Channel Index Terms
`
`Term
`channel index
`(‘520 patent)
`
`Plaintiff’s Construction
`No construction necessary
`
`Defendants’ Construction
`Indefinite
`
`apply[ing] an index to a
`channel index of the identified
`communications channel
`(‘520 patent)
`
`No construction necessary
`
`Indefinite
`
`
`
`
`
`A POSITA would readily understand the subject claim limitations in the context of the
`
`‘520 patent disclosures and that the subject claim limitation is not indefinite. For example, the
`
`patent describes the use of a channel index for each channel, which, based on the claim language
`
`and specification, a POSITA would understand is an indicator of a channel such as an address.
`
`(’520 patent at 20:4-7 & Fig. 5, 28:6-7, 29:7-8, 30:10-16, 31:54-61). The specification teaches that
`
`where a channel index of the identified communications channel corresponds to an indicated
`
`communications channel in a default register that is not in a set of good channels, that an index
`
`may be applied to the channel index in order to address a good channel register. (‘520 patent at
`
`20:47-59, Fig. 5A). Thus, for example, the channel index of the identified communications channel
`
`corresponds to a candidate communications channel that may not be in the subset to be used, and
`
`applying an index allows for the selection of a communications channel that is amongst the subset
`
`to be used.
`
`The ‘520 patent explains in relation to Figure 5A:
`
`Register with good channels 550 also includes addresses 554 a-554 n that are the
`addresses associated with each slot containing one of good channels 552 a-552 n,
`
`
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 19 of 39
`
`respectively. The addressing by selection kernel 510 of register with good channels
`550 is depicted by addressing arrow 514. As selection kernel 510 is not modified,
`an index is applied to the output of selection kernel 510 to address register with
`good channels 550. When the system switches back to register with default channels
`520, the index is removed, and vice versa. Because register with good channels 550
`is loaded using the good channels from table of good channels 570, only those good
`channels are addressed by selection kernel 510. (‘520 patent at 20:47-59, emphasis
`added).
`
`Indexing of the channel indicator allows that the basic hop kernel is not modified where
`
`instead an index is applied to the channel index output of the basic selection kernel thus together
`
`forming the adaptive selection kernel that then addresses the register with good channels. Thus
`
`neither “channel index“ nor “apply[ing] an index to a channel index of the identified
`
`communications channel” is indefinite and neither require construction. Alternatively, if construed
`
`a “channel index” may be construed to be “an indicator of a channel” and “apply[ing] an index to
`
`a channel index of the identified communications channel” may be construed to be “indexing the
`
`channel indicator of the candidate communications channel for use to determine a replacement
`
`channel for use” in light of the ‘520 patent specification referenced and discussed above.
`
`
`
`
`
`Plaintiff’s Construction
`No construction necessary, or
`in the alternative, “separately
`identifiable [channels]
`
`Defendants’ Construction
`Distinct - Indefinite
`
`No construction necessary
`
`Distinct - Indefinite
`
`D.
`
`Distinct Channels
`
`Term
` Distinct [channels]
`(‘608 patent)
`
`distinct
`of
`number
`the
`channels in the first set of two
`or more
`communications
`channels varies
`from
`the
`number of distinct channels in
`the second set of two or more
`communications channels
`
`A POSITA would understand the meaning of “distinct” and “distinct channels” in the
`
`context of the ‘608 patent and its asserted claims to have their plain and ordinary meaning thus not
`
`
`
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`Case 1:20-cv-00765-DAE Document 40-1 Filed 10/17/22 Page 20 of 39
`
`requiring construction. These terms are not indefinite as proposed by Defendant. Claim 1 of the
`
`‘608 patent utilizes the term “distinct” as part of the clause, “wherein the number of distinct
`
`channels in the first set of two or more communications channels varies from the number of distinct
`
`channels in the second set of two or more communications channels”. A POSITA would
`
`understand the plain and ordinary meaning of a distinct channel as claimed to be a channel that is
`
`separately identifiable or distinguishable from the others “in the [first/second] set of two or more
`
`communications channels” consistent with the dictionary definition of “distinct”, for example, as
`
`shown below:
`
`
`
`Consistent with the above, in an unrelated litigation of a patent related to RF
`
`communications (3:05-CV-1392-B-BLM Qualcomm Inc. v. Broadcom Corp) and specifically
`
`U.S. Patent No. 6,320,896 “RF receiver having frequency-hopping/direct-sequence spread
`
`spectrum signal discrimination” the United States District Court for the Southern Di