Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 1 of 27
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`BANDSPEED, LLC,
`
`
`
`Plaintiff,
`v.
`
`
`
`REALTEK SEMICONDUCTOR
`CORPORATION
`
`
`
`
`Defendant.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 1:20-cv-00765-LY
`
`DEFENDANT’S OPENING CLAIM CONSTRUCTION BRIEF
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 2 of 27
`
`
`I.
`
`BACKGROUND AND INTRODUCTION......................................................................1
`
`TABLE OF CONTENTS
`
`II.
`
`DISPUTED TERMS FOR CONSTRUCTION ...............................................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`“selection kernel” .....................................................................................................2
`
`“the hopping sequence” ...........................................................................................6
`
`“performance” ..........................................................................................................7
`
`“a [first]/[second] time” ...........................................................................................8
`
`“channel index” ........................................................................................................8
`
`“apply an index to a channel index of the identified communications channel” .....9
`
`“Distinct” Terms ....................................................................................................11
`
`“rescanning [the default channels]” .......................................................................12
`
`“good” / “bad”........................................................................................................13
`
`“Instruction” Terms ...............................................................................................14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Beauregard Claims ....................................................................................17
`
`MPF Terms ................................................................................................17
`
`Claims 1, 3, and 5 of the ’608 Patent and Claim 11 of the ’643
`Patent Improperly Combine Apparatus and Method Elements in a
`Single Claim Under Bandspeed’s Proposed Construction.........................18
`
`Claim 1 of the ’643 Patent Is Not a Beauregard Claim .............................19
`
`All of the Instruction Claims Are Means-Plus-Function Claims ...............19
`
`III. CONCLUSION ................................................................................................................20
`
`
`
`
`
`i
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 3 of 27
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`3M Innovative Props. Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013)........................................................................................... 2
`
`Allen Eng’g Corp. v. Bartell Indus., Inc.,
`299 F.3d 1336 (Fed. Cir. 2002)........................................................................................... 7
`
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)................................................................................... 18, 20
`
`Arthur A. Collins, Inc. v. N. Telecom Ltd.,
`216 F.3d 1042 (Fed. Cir. 2000)........................................................................................... 4
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)......................................................................................... 20
`
`Bushnell Hawthorne, LLC v. Cisco Sys., Inc.,
`813 F. App’x 522 (Fed. Cir. 2020) ..................................................................................... 6
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004)............................................................................................. 2
`
`Comark Commc’ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998)........................................................................................... 1
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988)........................................................................................... 1
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)................................................................................... 17, 19
`
`Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc.,
`672 F.3d 1270 (Fed. Cir. 2012)................................................................................... 17, 18
`
`Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323 (Fed. Cir. 2008)......................................................................................... 18
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Labs. Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) ..................................................................................... 7
`
`Immunex Corp. v. Sanofi-Aventis U.S. LLC,
`977 F.3d 1212 (Fed. Cir. 2020)........................................................................................... 4
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)................................................................................... 13, 14
`
`ii
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 4 of 27
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)......................................................................................... 18
`
`LG Elecs., Inc. v. Bizcom Elecs., Inc.,
`453 F.3d 1364 (Fed. Cir. 2006), rev’d on other grounds sub nom.
`Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617 (2008) ........................................ 4
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)............................................................................................. 1
`
`Merck & Co., Inc. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)......................................................................................... 11
`
`Morton Int’l, Inc. v. Cardinal Chem. Co.,
`5 F.3d 1464 (Fed. Cir. 1993)......................................................................................... 9, 13
`
`Nautilus, Inc., v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ............................................................................................ 2, 3, 10, 12
`
`Noah Sys., Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012)................................................................................... 18, 20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)....................................................................................... 1, 2
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)........................................................................................... 1
`
`Triton Tech of Tex., LLC v. Nintendo of Am., Inc.,
`753 F.3d 1375 (Fed. Cir. 2014)......................................................................................... 18
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)........................................................................................... 7
`
`V-Formation, Inc. v. Benetton Grp. SpA,
`401 F.3d 1307 (Fed. Cir. 2005)........................................................................................... 4
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)................................................................................... 17, 19
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................................................. 20
`
`35 U.S.C. § 112(f) ............................................................................................................. 14, 15, 16
`
`iii
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 5 of 27
`
`Other Authorities
`
`MICROSOFT COMPUTER DICTIONARY (5th ed. 2002) ..................................................................... 19
`
`WEBSTER’S II NEW COLLEGE DICTIONARY (2001 ed.) .............................................................. 7, 11
`
`
`
`iv
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`

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`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 6 of 27
`
`Defendant Realtek Semiconductor Corporation files its Opening Claim Construction Brief
`
`regarding U.S. Patent 7,027,418 (the “’418 Patent”), U.S. Patent 7,903,608 (the “’608 Patent”),
`
`U.S. Patent 8,542,643 (“’643 Patent”), and U.S. Patent 9,883,520 (the “’520 Patent”).
`
`I.
`
`BACKGROUND AND INTRODUCTION
`
`Claim terms are generally given their plain and ordinary meaning. See Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). The plain and ordinary meaning of a term is the
`
`“meaning that the term would have to a person of ordinary skill in the art in question at the time
`
`of the invention.” Id. at 1313.
`
`The specification can assist with interpretation, but examples from the specification should
`
`not be read as requirements of the claims absent a clear intent by the patentee to do so. “Although
`
`the specification may aid the court in interpreting the meaning of disputed claim language,
`
`particular embodiments and examples appearing in the specification will not generally be read into
`
`the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
`
`(quotations omitted). “[I]t is improper to read limitations from a preferred embodiment described
`
`in the specification—even if it is the only embodiment—into the claims absent a clear indication
`
`in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim
`
`Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
`
`There “only two exceptions to [the] general rule” that claim terms are construed according
`
`to their plain and ordinary meaning are when the patentee (1) acts as his or her own lexicographer
`
`or (2) disavows the full scope of the claim term either in the specification or during prosecution.
`
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). To act as his
`
`or her own lexicographer, the patentee must “clearly set forth a definition of the disputed claim
`
`term” and “clearly express an intent to define the term.” Id. at 1365. To disavow the full scope of
`
`a claim term, the patentee’s statements in the specification or prosecution history must represent
`
`“a clear disavowal of claim scope.” Id. at 1366. Accordingly, when “an applicant’s statements
`
`are amenable to multiple reasonable interpretations, they cannot be deemed clear and
`
`1
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 7 of 27
`
`unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir.
`
`2013).
`
`Although extrinsic evidence can also be useful, it is “less significant than the intrinsic
`
`record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
`
`(quotations omitted). Technical dictionaries may be helpful, but they may also provide definitions
`
`that are too broad or not indicative of how the term is used in the patent. See id. at 1318.
`
`II.
`
`DISPUTED TERMS FOR CONSTRUCTION
`
`A.
`
`“selection kernel”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’643 Patent A device or mechanism of a
`participant that selects
`communications channels to form
`the hopping sequence
`
`Indefinite
`
`Alternatively, the configuration of
`hardware and software illustrated
`in any of Figures 11.3 and 11.4,
`which is described in Bluetooth
`Specification 11.12 v.1.0B
`
`A “patent is invalid for indefiniteness if its claims, read in light of the specification
`
`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
`
`skill in the art about the scope of the invention.” Nautilus, Inc., v. Biosig Instruments, Inc., 572
`
`U.S. 898, 901 (2014). Claims 1, 6 and 11 of the ‘643 patent recite a selection kernel, a term that
`
`has no meaning in the art and does not connote structure by itself. The specification does not
`
`provide any additional insight into what a selection kernel is or how it operates. For example, the
`
`specification merely states that “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 ….” This, like all other
`
`descriptions of a selection kernel in the specification, are purely functional descriptions identified
`
`with an outcome. No information is provided in the specification as to how the selection kernel
`
`addresses a register or how it generates the output. There is also no description of the structure of
`
`a selection kernel, whether it is software or hardware or some combination of the two.
`
`2
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 8 of 27
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`Column 20 refers to Fig. 5A and 5B as depicting a selection kernel. However, in both
`
`instances the selection kernel is merely shown as a box with the label “selection kernel” written in
`
`it. Therefore, it also fails to identify any structure or teaching of how the selection kernel operates.
`
`Thus, the term is indefinite because it is not “precise enough to afford clear notice of what is
`
`claimed, thereby apprising the public of what is still open to them.” Nautilus, 572 U.S. at 909
`
`(cleaned up).
`
`Alternatively, although Bandspeed has not advanced this construction, the term “selection
`
`kernel” should be construed as “the configuration of hardware and software illustrated in any of
`
`Figures 11.3 and 11.4, which is described in Bluetooth Specification 11.12 v.1.0B.”1
`
`
`1 A copy of the relevant portions of the Bluetooth standard are attached hereto as Exhibit A.
`Version 1.0B was the version of the Bluetooth specification that was in effect at the priority date.
`Version 1.1 of the Bluetooth standard, attached hereto as Exhibit B, was adopted about a month
`after the priority date. The section discussing the selection kernel is the same in both versions of
`the standard, however. IEEE standard 802.15.1-2002 § 8.11.2, attached hereto as Exhibit E, which
`was adopted approximately a year later, is substantially identical to the Bluetooth standard on
`selection kernels. The IEEE working group on the 802.15 standard was established in 1999. See
`generally https://ieee802.org/15/pub/Minutes.html.
`
`3
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 9 of 27
`
`Where a patentee expressly refers to prior art in the specification of a patent, the referenced
`
`prior art “constitutes intrinsic evidence.” V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307,
`
`1311 (Fed. Cir. 2005) (collecting cases); accord Immunex Corp. v. Sanofi-Aventis U.S. LLC, 977
`
`F.3d 1212, 1222 n.9 (Fed. Cir. 2020). “When prior art that sheds light on the meaning of a term
`
`is cited by the patentee, it can have particular value as a guide to the proper construction of the
`
`term, because it may indicate not only the meaning of the term to persons skilled in the art, but
`
`also that the patentee intended to adopt that meaning.” Arthur A. Collins, Inc. v. N. Telecom Ltd.,
`
`216 F.3d 1042, 1045 (Fed. Cir. 2000)). Even where a patentee does not expressly adopt the
`
`definition of a term from a cited and referenced industry standard, “that standard remains relevant
`
`in determining the meaning of the claim term to one of ordinary skill in the art at the time the
`
`patent application was filed.” LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1375 (Fed.
`
`Cir. 2006), rev’d on other grounds sub nom. Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S.
`
`617 (2008). Such a cited and referenced standard is relevant intrinsic evidence even where the
`
`patent specification purports to claim embodiments outside the standard. See id. at 1374-75 & n.3
`
`4
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 10 of 27
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`(concluding that the “proffered definition based on the standard is correct” where the patent
`
`specification stated the invention was not restricted to systems implementing the standard).
`
`The ’643 Patent’s specification relies extensively on the Bluetooth standard. In fact,
`
`virtually every single embodiment disclosed in the specification is based on these standards. See,
`
`e.g., ’643 Pat. 8:31-37, 80:40-44, 9:11-16, 9:24-28, 11:53-55 (among many others). In addition,
`
`the provisional application that ultimately resulted in the ’643 Patent expressly referred to the
`
`“standard selection kernel as in Bluetooth/IEEE 802.15.1.” Provisional Application at 12 (Ex. F).
`
`Moreover, because “selection kernel” has no other accepted meaning in the art, and no definition
`
`in the patent, there is no indication that the inventor was in possession of a “selection kernel” other
`
`than the one described in the Bluetooth standard, and using the standards disclosed in the
`
`specification is the only way to give this term a definite meaning.
`
`Plaintiff’s proposed construction is self-fulfilling and does not provide sufficient notice for
`
`a competitor to avoid infringement. The terms “device” and “mechanism” are ambiguous terms
`
`that do not identify what the patentee possessed or intend as his invention. In fact, as noted above,
`
`the only selection kernel the patentee even arguably possessed were the one described in the
`
`Bluetooth standards. In addition, Plaintiff’s proposed construction would encompass all
`
`equivalents in the literal definition. That is, any device or mechanism that achieves the stated
`
`result in Bandspeed’s proposed construction would satisfy the limitation (i.e., “select[ing]
`
`communications channels to form the hopping sequence”). Different competitors could implement
`
`the selection of channels each in different ways, even ways not possible at the time of the invention
`
`and clearly not contemplated by the patentee, yet each would satisfy Plaintiff’s proposed
`
`construction as long as they achieve the stated result. In fact, Bandspeed’s proposed construction
`
`is essentially a means-plus-function definition without any corresponding structure. Finally,
`
`Plaintiff’s proposed construction introduces elements of a “participant” and “the hopping
`
`sequence,” which are not recited in the claims at issue, creating additional uncertainty regarding
`
`the scope of the claim.
`
`5
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 11 of 27
`
`B.
`
`“the hopping sequence”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’608 Patent No construction necessary
`
`indefinite
`
`The reference to “the hopping sequence” in dependent claim 2 of the ’608 Patent lacks any
`
`antecedent basis. The term “hopping sequence” is not mentioned anywhere in independent claim
`
`1. Absence of an antecedent basis is an indication of indefiniteness. See Bushnell Hawthorne,
`
`LLC v. Cisco Sys., Inc., 813 F. App’x 522, 526 (Fed. Cir. 2020).
`
`Moreover, the manner in which the term “hopping sequence” is used in claim 2 renders the
`
`entire claim incomprehensible. Claim 2 provides that “at each hop in the hopping sequence . . .
`
`only one communications channel of the first set of two or more communications channels is
`
`used,” but also that “at each hop in the hopping sequence . . . only one communications channel
`
`of the second set of two or more communications channels is used.” (emphasis added). Therefore,
`
`for each hop, a communication channel from both the first and the second set of communications
`
`channel is used. But this makes no sense: The parties have agreed that a “hop” means “the switch
`
`from one frequency to another frequency.” If the communications device is using a channel from
`
`the first set and a channel from the second set at each hop (i.e., every time it changes frequencies),
`
`then the communications device would need to communicate over multiple frequencies (i.e., the
`
`channel from the first set and the channel from the second set) at the same time. Put another way,
`
`the claim recites that “at each [switch from one frequency to another]” one channel from the first
`
`set and one channel from the second set “is used for communications.” ’608 Pat. 27:26-34. But
`
`simultaneous communications over multiple channels is never disclosed in the specification.
`
`Adding to the confusion is the specification’s ambiguous definition of “hopping sequence.”
`
`The specification states that: “The “order in which the communications network hops among the
`
`set of frequencies is known as the hopping sequence.” Id. at 2:19-21. It is unclear whether the
`
`patentee intended to say “[t]he order in which the communications network hops among the sets
`
`of frequencies” or “[t]he order in which the communications network hops among the set of
`
`frequencies in the set.”
`
`6
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 12 of 27
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`In any event, there is no way to determine what claim 2 actually purports to cover or
`
`require. Claims such as claim 2 that are fundamentally nonsensical are indefinite. See, e.g.,
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Labs. Inc., 839 F. App’x 500, 505 (Fed. Cir. 2021); Trs. of
`
`Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016); Allen Eng’g Corp.
`
`v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).
`
`C.
`
`“performance”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’418 Patent No construction necessary
`
`ability of the channel to
`communicate
`
`The term “performance,” as used in the ’418 patent specifically refers to the ability of a
`
`channel to communication, not performance along some other, unspecified metric. The entire sine
`
`qua non of the ’418 patent is communications, and the “performance” limitation can only be
`
`directed to the ability of a channel to communicate, as opposed to its ability to achieve some other
`
`function or purpose. The specification explains that “[i]nterference results in data transmission
`
`errors, such as an increase in the bit error rate (BER) or the loss of data packets, resulting in reduced
`
`transmission quality and performance and the need to retransmit the data.” ’418 Pat. 3:17-20
`
`(emphasis added). The specification then expressly provides that: “By using this novel approach
`
`to adaptively select sets of communications channels based on channel performance at various
`
`times, interference problems are reduced and transmission performance is improved . . . .” Id. at
`
`7:26-29 (emphasis added). The specification goes on to note that “interference in a
`
`communications system is reduced or eliminated by using channels that have been tested and
`
`determined to be ‘good’ because channel performance exceeds a specified threshold.” Id. at 7:36-
`
`39 (emphasis added). Moreover, every claim of the patent is directed to a “communications
`
`system,” “communications channels,” or the like.
`
`In ordinary parlance, however, the term “performance” has a much broader scope. For
`
`example, “performance” can simply mean “[m]anner of functioning” WEBSTER’S II NEW
`
`COLLEGE DICTIONARY at 817 (2001 ed.) (Ex. C) (“WEBSTER’S DICTIONARY”). Accordingly,
`
`7
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 13 of 27
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`simply allowing the jury to apply their ordinary understanding of this term could de facto broaden
`
`the scope of the claims to refer to the ability of the channel to accomplish any unspecified function
`
`or objective, in contravention of the ’418 Patent’s more specific usage of the term “performance,”
`
`which refers to a channels ability to communicate.
`
`D.
`
`“a [first]/[second] time”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’418 Patent No construction necessary
`
`instant of time
`
`The “[first]/[second]” time element in the ’418 Patent refers to a specific instant,
`
`specifically, the time required to test a communications channel. Although the term “time” is, of
`
`course, one used in ordinary parlance, the ’418 Patent uses the term in a way that jurors will likely
`
`not have encountered in their everyday lives because it takes only a fraction of a second to test the
`
`performance of a communications channel. Without clarification, jurors may incorrectly equate
`
`the “time” element with more mundane tasks, like searching for a station on a traditional radio.
`
`E.
`
`“channel index”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’520 Patent No construction necessary
`
`indefinite
`
`Claims 4, 12, 20, and 30 recite a “channel index,” a nonce term that has no meaning in the
`
`art. The term channel index does not appear in the specification. Therefore, the specification
`
`provides no information on what is meant by the term “channel index” or what it is meant to
`
`constitute.
`
`The term “index” only appears twice in the specification where it states that “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 . . . .” ’520
`
`Pat. 20:51-56. However, this is a different usage of the term “index” (i.e., not a “channel index”)
`
`as it is referring to something that is applied to the output of the selection kernel, which is not
`
`recited in the claims at issue. See ’520 Pat. 20:4-7 (“The output of the kernel is a set of addresses
`
`8
`
`

`

`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 14 of 27
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`for each slot in the register, while the content of the slot in the register is a channel number.”).
`
`Indeed, the term “index” and “channel index” refer to different things in the claim because the
`
`claim recites “apply[ing] an index to a channel index of the identified communications channel.”
`
`(emphasis added). Therefore, this portion of the specification does not provide any guidance
`
`concerning the term “channel index.”
`
`Thus, the term is indefinite because there is no teaching in the specification as to what the
`
`term “channel index” means and no objective boundaries for a competitor to understand the metes
`
`and bounds of the claim. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed.
`
`Cir. 1993) (“[C]laims . . . [must be] sufficiently precise to permit a potential competitor to
`
`determine whether or not he is infringing.”). Bandspeed’s proposal that no construction is
`
`necessary does not address the issue that the specification provides no guidance as to what the term
`
`means and so does not provide sufficient notice for a competitor to avoid infringement.
`
`F.
`
`“apply an index to a channel index of the identified communications
`channel”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’520 Patent No construction necessary
`
`indefinite
`
`Claims 4, 12, 20, and 30 recite “apply an index to a channel index of the identified
`
`communications channel.” It is entirely unclear, however, what this generic “index” is, what
`
`information it contains, how it is applied to the channel index, or how that application achieves the
`
`claimed result of applying the generic index to the channel index (e.g., the claimed result of claim
`
`4—“to identify, from the register, a channel index of a communications channel to use for the
`
`frequency hopping communications with the other wireless communications device at the time
`
`slot, if the identified communications channel is not used”). ’520 Pat. 28:9-14.
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`The specification sheds no light on this issue either. The term “index” only appears twice
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`in the specification, which references Figure 5A, and is not connected to the claimed channel
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`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 15 of 27
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`index:2 “As selection kernel 510 is not modified, an index is applied to the output of selection
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`kernel 510 to address register with good channels 550. When the system switches back to register
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`with default channels 520, the index is removed, and vice versa.” ’520 Pat. 20:51-56 (emphasis
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`added). Even assuming that the index discussed in this portion of the specification refers to the
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`generic “index” in claims 4, 12, 20, and 30, which is far from clear, the specification still fails to
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`explain what the generic “index” is, what data the generic index contains, or how that data is
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`applied to the channel index.
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`For example, Fig. 5A does not depict an index. Instead, an address is shown. It is also
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`unclear from the specification and the figures whether addresses 512 and 514 (which might
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`correspond to the index limitation) are the same. But if the purpose of the index is to select between
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`registers 520 and 550, then it makes no sense to apply the index to the channel index.
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`It also might make sense to apply (load) a channel index to a portion of the register, which
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`is shown as 572 in Figure 5A. But 572 is not an output of the selection kernel, and the specification
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`states that the “index is applied to the output of the selection kernel 510.” Id. at 20:52-53.
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`The specification also states that the index is something that can be removed. See id. at
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`20:54-56 (“When the system switches back to register with default channels 520, the index is
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`removed, and vice versa.”). This further confuses the operation of the index.
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`Without any disclosure of what the generic index is, how it works, how it is applied to the
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`channel index, or how applying it causes the identification of an alternate communications channel,
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`there is no way a skilled artisan could have any “reasonable certainty” about the scope of the
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`invention covered by claims 4, 12, 20, and 30. Nautilus, 572 U.S. at 901. Accordingly, these
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`claims are all indefinite.
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`2 Again, the term channel index is not mentioned in the specification. Thus, any discussion of or
`usage of the term index in the specification cannot shed light on this phrase because the claimed
`embodiment is not disclosed. Moreover, the term channel index is itself indefinite.
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`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 16 of 27
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`G.
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`“Distinct” Terms
`
`“distinct”
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`Patent
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`Plaintiff’s Proposal
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`Defendant’s Proposal
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`’608 Patent No construction necessary
`Alternatively, Plaintiff proposes
`separately identifiable [channels]
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`indefinite
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`“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”
`
`Patent
`
`Plaintiff’s Proposal
`
`Defendant’s Proposal
`
`’608 Patent No construction necessary
`
`indefinite
`
`In common parlance, “distinct” means “[d]istinguished from all others” or “individual.”
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`WEBSTER’S DICTIONARY at 331 (Ex. C). But this common definition of “distinct” does not work
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`as the term is used in the claim. Nothing in the specification suggests that the same channel would
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`ever be included more than once in the same set of channels. That is, the same set of channels
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`would not include channel 1 (for example) more than once. Therefore, if the common definition
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`of distinct is used in the claim, then the term becomes a nullity because every channel within any
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`set of communications channels is already different from every other channel within the same set.
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`See Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim
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`construction that gives meaning to all the terms of the claim is preferred over one that does not do
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`so.”).
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`But nothing in either the specification or prosecution history provide an alternate definition
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`that could give meaning to this term. In fact, the term “distinct” is not found anywhere in the ’608
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`Patent’s specification, and there is nothing in the intrinsic record to identify what the patentee
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`intended the term to mean. Therefore, the patent fails to inform with reasonable certainty what the
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`term “distinct,” as used in the claims, means.
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`Bandspeed’s alternate proposed construction—“separately identifiable [channels]”—
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`offers little clarity. It is unclear exactly what Bandspeed’s proposed construction is intended to
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`Case 1:20-cv-00765-DAE Document 41 Filed 10/17/22 Page 17 of 27
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`convey. “Separately identifiable” could simply mean that each channel within each set of
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`communications channels must be unique within that channel (i.e., each channel within each set is
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`different from every other channel in that set and is not repeated in that set). If so, Bandspeed’s
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`construction would accord with the ordinary meaning of the term “distinct,” but would not fix the
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`indefiniteness