Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`BANDSPEED, LLC,
`
`v.
`
`Plaintiff,
`
`REALTEK SEMICONDUCTOR
`CORPORATION,
`
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 1:20-cv-00765-LY
`
`DEFENDANT’S RESPONSE TO PLAINTIFF’S
`OPENING CLAIM CONSTRUCTION BRIEF (ECF NO. 40)
`
`

`

`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 2 of 23
`
`TABLE OF CONTENTS
`
`I.
`
`BANDSPEED WAS NOT PREJUDICED BY THE SLIGHT DELAY IN
`REALTEK’S DISCLOSURE OF ITS INDEFINITENESS POSITIONS FOR
`CERTAIN CLAIMS ......................................................................................................... 1
`
`II.
`
`CONTESTED CLAIM TERMS ...................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`“Selection Kernel” .................................................................................................. 3
`
`“Hopping Sequence” ............................................................................................... 5
`
`“[First/Second/Third] Performance [Criterion/Criteria]” ....................................... 7
`
`“A [first/second] time” ............................................................................................ 8
`
`“Channel Index” and “Apply[ing] an Index to a Channel Index of the
`Identified Communications Channel”..................................................................... 9
`
`“Distinct Channels” and “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” .............................................................................................................. 11
`
`“Rescanning [the Default Channels]” ................................................................... 12
`
`“Bad” and “Good” ................................................................................................ 13
`
`“Instruction” Terms .............................................................................................. 14
`
`1.
`
`2.
`
`3.
`
`Claims 1, 3, and 5, of the ’608 Patent and Claim 11 of the ’643
`Patent Are Not Written as Beauregard Claims......................................... 14
`
`The Element That Performs the Claimed Functions Is the
`“Instructions,” Not the “Processor” or the “Memory”.............................. 15
`
`The Patents’ Specifications Do Not Disclose a Sufficient Algorithm
`of the Scope of the Claims Should Be Limited to the Algorithm
`Disclosed in the Specification ................................................................... 16
`
`i
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`

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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 3 of 23
`
`TABLE OF AUTHORITIES
`
`Cases
`
`AFG Indus., Inc. v. Cardinal IG Co.,
`239 F.3d 1239 (Fed. Cir. 2001)........................................................................................... 5
`
`Allen Eng’g Corp. v. Bartell Indus., Inc.,
`299 F.3d 1336 (Fed. Cir. 2002)......................................................................................... 13
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)........................................................................................... 12
`
`Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342 (Fed. Cir. 2005)................................................................................... 13, 14
`
`Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc.,
`672 F.3d 1270 (Fed. Cir. 2012)......................................................................................... 14
`
`Eon Corp. IP Holdings v. Silver Springs Networks,
`815 F.3d 1314 (Fed. Cir. 2016)........................................................................................... 8
`
`Exxon Chem. Pats., Inc. v. Lubrizol Corp.,
`64 F.3d 1553 (Fed. Cir. 1995)............................................................................................. 3
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996)............................................................................................. 3
`
`Horizon Pharma, Inc. v. Dr. Reddy’s Labs. Inc.,
`839 F. App’x 500 (Fed. Cir. 2021) ................................................................................... 13
`
`Kinetic Concepts, Inc. v. BlueSky Med. Corp.,
`No. SA-08-CV-102-RF, 2009 WL 10664413 (W.D. Tex. Dec. 21, 2009)......................... 2
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)......................................................................................... 12
`
`Merck & Co., Inc. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)........................................................................................... 8
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................... 11, 12
`
`Noah Sys., Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012)..................................................................................... 3, 16
`
`O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)........................................................................................... 9
`
`ii
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 4 of 23
`
`PACid Grp. LLC v. Apple, Inc.,
`No. 6:09cv143-LED-JDL, 2010 WL 2813654 (E.D. Tex. July 15, 2010) ....................... 10
`
`Personal Audio, LLC v. Apple, Inc.,
`No. 9:09CV111, 2011 WL 11757163 (E.D. Tex. Jan. 31, 2011) ..................................... 15
`
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006)..................................................................................... 5, 11
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001)........................................................................................... 6
`
`Sensor Elec. Tech., Inc. v. Bolb, Inc.,
`No. 18-CV-5194-LHK, 2019 WL 4645338 (N.D. Cal. Sept. 24, 2019)............................. 5
`
`Smartflash LLC v. Apple, Inc.,
`77 F. Supp. 3d 535 (E.D. Tex. 2014) ................................................................................ 15
`
`St. Isidore Rsch., LLC v. Comerica Inc.,
`No. 2:15-cv-1390-JRG-RSP, 2016 WL 4988246 (E.D. Tex. Sept. 19, 2016) .................. 15
`
`Triton Tech of Tex., LLC v. Nintendo of Am., Inc.,
`753 F.3d 1375 (Fed. Cir. 2014)......................................................................................... 17
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)......................................................................................... 13
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..................................................................................... 4, 15
`
`Other Authorities
`
`MERRIAM-WEBSTER DICTIONARY (available online) ...................................................................... 7
`
`MERRIAM-WEBSTER DICTIONARY [2011 ed.] ........................................................................... 8, 12
`
`iii
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 5 of 23
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`Realtek respectfully requests that the Court adopt its proposed claim constructions or find
`the claims indefinite (as appropriate) and reject Bandspeed’s proposed constructions.
`I.
`Bandspeed Was Not Prejudiced by the Slight Delay in Realtek’s Disclosure of Its
`Indefiniteness Positions for Certain Claims
`Realtek served its Invalidity Contentions on Bandspeed on July 12, 2022. Although
`Realtek’s Invalidity Contentions did not contain its indefiniteness position for some terms, 1 all of
`Realtek’s positions were disclosed just days later in its mandatory Disclosure of Claim Terms (Ex.
`A) identifying claim terms to be construed or found indefinite. Over the next eight weeks leading
`up to the Joint Claim Construction Statement (“JCCS”), the parties had no less than ten email
`exchanges, meet-and-confers, and phone conversations related to claim construction issues,
`including efforts to narrow disputes. See Decl. of Jeffrey Johnson ¶¶ 4-8 (Ex. B). Counsel for
`Bandspeed never indicated that Realtek’s assertion of indefiniteness was untimely or that Realtek
`needed to amend its contentions. In addition, the parties filed their JCCS, on September 13, 2022,
`which contained all of Realtek’s invalidity contentions. Moreover, the parties’ Opening Claim
`Construction Briefs were filed a month later, on October 17, 2022, over which time the parties had
`another no less than six email or phone call exchanges—again, with no mention of untimeliness.
`See id. ¶¶ 6-9. Bandspeed never requested an extension of the deadline for filing its Opening
`Claim Construction Brief because some of Realtek’s indefiniteness positions were not disclosed
`in its Invalidity Contentions. The first time that Realtek was made aware Bandspeed had any issue
`with its disclosures was when Bandspeed filed its opening brief on October 17, 2022, over 12
`weeks after Realtek identified its indefiniteness terms on July 22, 2022.
`This Court has considered four factors in addressing untimely requests to amend a
`defendant’s invalidity contentions: “(1) the explanation for the failure to meet the deadline; (2) the
`importance of the thing that would be excluded; (3) potential prejudice in allowing the thing that
`would be excluded; and (4) the availability of a continuance to cure such prejudice.” Kinetic
`
`1 Realtek did not raise indefiniteness in its Invalidity Contentions for the following terms:
`“selection kernel,” “hopping sequence,” “channel index” and “apply[ing] an index to a channel
`index of the identified communications channel,” “bad” and “good,” and the “instructions” terms.
`
`1
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 6 of 23
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`Concepts, Inc. v. BlueSky Med. Corp., No. SA-08-CV-102-RF, 2009 WL 10664413, at *1 (W.D.
`Tex. Dec. 21, 2009) (quotations omitted). Lack of prejudice is the most important factor. See id.
`at *3 (permitting an untimely amendment to the defendant’s invalidity contentions because the
`plaintiff had not shown prejudice, even though other factors disfavored permitting the amendment).
`Bandspeed has not asserted that Realtek’s failure to identify all of its indefiniteness
`positions in its Invalidity Contentions prejudiced Realtek in any way. Nor could it. Realtek began
`disclosing its indefiniteness positions in communications leading up to the JCCS almost
`immediately after serving its Invalidity Contentions. In fact, Realtek identified the claims
`requiring construction on July 22, only ten days after serving its Invalidity Contentions on July 12.
`And Realtek disclosed all of its indefiniteness positions in the JCCS, which was filed only two
`months after the Invalidity Contentions. Bandspeed also responded substantively to all of
`Realtek’s indefiniteness arguments in its Opening Claim Construction Brief and never requested
`an extension of its deadline because of the late disclosure of some indefiniteness positions.
`Because Bandspeed has not been prejudiced, the Court should consider all of Realtek’s
`indefiniteness arguments on the merits. See Kinetic Concepts, 2009 WL 10664413, at *3.
`Bandspeed’s late disclosure of some of its indefiniteness positions was not the result of
`gamesmanship, at least on the part of Realtek. Bandspeed asserted eight patents and a whopping
`129 claims, knowing that it cannot possibly assert that many claims at trial or even at the Markman
`hearing.
`Indeed, when faced with the overwhelming number of claim construction disputes its
`assertion of 129 claims inevitable caused, Bandspeed selectively dropped claims. Even so, despite
`acting as diligently as possible, Realtek simply had not recognized all of the defects in the patent
`claims at the time it served its Invalidity Contentions.
`Refusing to consider Realtek’s indefiniteness arguments would also have a significant
`impact on this case. Bandspeed is seeking millions in damages based on invalid patent claims.
`Interpreting those claims correctly is important not just to Realtek, but could impact competition
`more broadly if Realtek is forced to pay royalties on invalid claims that its competitors do not. In
`addition, the Court has an independent duty to interpret the claim terms correctly, regardless of the
`
`2
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 7 of 23
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`arguments advanced by the parties. See Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553,
`1555 (Fed. Cir. 1995).
`Finally, Realtek does not believe a continuance is necessary (because Bandspeed has not
`been prejudiced and has fully responded to all of Realtek’s indefiniteness arguments without
`seeking an extension). Nevertheless, to the extent a continuance were necessary, this case is still
`in a relatively early stage, and a short continuance would not unduly delay resolution of this matter.
`Accordingly, the Court should consider all of Realtek’s indefiniteness arguments on the
`merits. In addition, if the Court believes it is necessary for Realtek for amend its invalidity
`contentions, Realtek respectfully requests permission to do so.
`II.
`Contested Claim Terms
`A.
`“Selection Kernel”
`Patent
`Plaintiff’s Proposal
`’643 Patent A device or mechanism of a
`participant that selects
`communications channels to form
`the hopping sequence
`
`Defendant’s Proposal
`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
`
`Realtek’s proposed construction of “selection kernel”—“a device or mechanism of a
`participant that selects communications channels to form a hopping sequence”—attempts to do
`through claim construction what is prohibited by statute: including a purely functional limitation
`in the claims without paying the quid pro quo of disclosing a corresponding structure in the
`specification. See Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318 (Fed. Cir. 2012) (“Means-
`plus-function claiming involves a quid pro quo. In exchange for being able to draft a claim in
`purely functional language, the applicant must describe in the patent specification some structure
`which performs the claimed function.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580,
`1582 (Fed. Cir. 1996) (“Congress permitted the use of purely functional language in claims, but it
`limited the breadth of such claim language by restricting its scope to the structure disclosed in the
`specification and equivalents thereof.”). It is well-settled that “mechanism” and “device” are
`
`3
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 8 of 23
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`nonce words that are tantamount to using the word “means.” See Williamson v. Citrix Online,
`LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015). Accordingly, by attempting to construe “selection
`kernel” as a generic “device or mechanism,” without identifying any corresponding structure in
`the specification, Bandspeed’s construction itself would render the term an indefinite means-plus-
`function claim. Bandspeed should not be allowed to evade the statutory requirements governing
`means-plus-function claims under the guise of claim construction.
`Bandspeed’s objections to Realtek’s alternate construction of “selection kernel” are equally
`misguided. Bandspeed argues that limiting the term “selection kernel” to the Bluetooth standard
`would be improper because the ’643 Patent’s specification discloses an embodiment that differs
`from the Bluetooth standard. See Pl.’s Br. at 6-7. But the language from the specification
`Bandspeed cites does not align with the claims.
`The claims require that the selection kernel replace channels and that the replacement
`occurs in the default channel register:
`
`[I]f a selection kernel addresses a bad channel stored in a particular location of the
`default channel register, then replacing, by the selection kernel, the bad channel
`stored in the particular location of the default channel register with a good channel
`selected from the set of good channels loaded in the good channel register; . . .
`’643 Pat. 27:23-25 (emphasis added)). But the portion of the specification on which Bandspeed
`relies does not disclose either that the selection kernel performs the replacement or that the
`replacement is made in the default channel register.
`First, the specification pointedly fails to associate the replacement function with the
`selection kernel: “[W]henever selection kernel 510 addresses a channel classified as bad in register
`with default channels 520, the bad channel is replaced.” Id. at 20:41-44 (emphasis added).
`Second, the specification does not disclose making the replacement in the default channel register.
`See id. Accordingly, the embodiment Bandspeed cites, which merely requires the replacement of
`a bad channel in some unspecified manner by some unspecified mechanism, simply does not
`correspond to the use of the term “selection kernel” in the claims. Therefore, Realtek’s proposed
`
`4
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 9 of 23
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`alternate construction of “selection kernel” is not inconsistent with the embodiments in the
`specification.
`B.
`
`“Hopping Sequence”
`Patent
`Plaintiff’s Proposal
`’608 Patent No construction necessary
`
`Defendant’s Proposal
`indefinite
`
`“For a claim term to have antecedent basis support, an indefinite article (for instance, ‘a’
`or ‘an’) must precede a claim term the first time the claim term is used in the claims.” Sensor Elec.
`Tech., Inc. v. Bolb, Inc., No. 18-CV-5194-LHK, 2019 WL 4645338, at *31 (N.D. Cal. Sept. 24,
`2019). Bandspeed admits that the term “the hopping sequence” in claims 2 and 4 of the ’608
`Patent lacks an antecedent basis. See Pl.’s Br. at 7, 9 (acknowledging the claims’ lack of
`“compliance with grammatical rules” and that “[c]laims 2 and 4 depend from claim 1, which does
`not include the term ‘hopping sequence’”). Instead, Bandspeed improperly invites the Court to
`rewrite the claims by changing the definite article to an indefinite article. See id. at 10 (“A POSITA
`would understand the term ‘the hopping sequence’ initially recited in claim 2 and recited in claim
`4 of the ’608 Patent refers to ‘a hopping sequence.’” (emphasis added)). It is well established,
`however, that courts “should not rewrite claims to preserve validity.” Pfizer, Inc. v. Ranbaxy Labs.
`Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (quotations omitted).
`Bandspeed also argues that there is no antecedent basis problem because there is only a
`single hopping sequence. But independent claim 1 and dependent claim 2 cover a communications
`device “comprising” various features, including the hopping sequence. “Comprising” is an open-
`ended transitional phrase, and “its scope may cover devices that employ additional, unrecited
`elements.” See AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1244 (Fed. Cir. 2001).
`Therefore, it is far from clear that these claims are limited to devices using only a single hopping
`sequence.
`Moreover, claim 4 strongly implies the use (or potential use) of multiple hopping
`sequences. Claim 4 covers a communications device that is able to communicate with two
`additional communications devices (for a total of three devices in the network). See ’608 Pat.
`
`5
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 10 of 23
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`28:24-25. The first communications device transmits to “a third communications device over the
`default set of two or more communications channels” while the second device communicates “over
`the first set of two or more communications channels.” See id. at 28:25-29. Therefore, claim 4
`involves different sets of communications channels (i.e., the default sets mentioned for the first
`time in claim 4 and the sets of communications channels in independent claim 1) that are used by
`different devices (i.e., the first and third devices use the default sets and the first and second devices
`use the previously claimed sets). The existence of different sets of communications channels used
`by different communications devices strongly suggests that the claims are not limited to a single
`hopping sequence as Bandspeed now contends.
`Claim 4 vaguely links the hopping sequence to the sets of communications channels (i.e.,
`a “default set of two or more communications channels is associated with the hopping sequence”),
`but this inconsistency only adds to the confusion. Id. at 28:20-21. Because a “claim term should
`be construed consistently with its appearance in other places in the same claim or in other claims
`of the same patent,” claim 4’s use of “hopping sequence” in connection with sets of
`communications channels, not individual communications channels as in claim 2, only makes the
`meaning of this term even murkier. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342
`(Fed. Cir. 2001).
`In addition, as set forth in Realtek’s Opening Claim Construction Brief, at 6, claim 2 is
`incomprehensible because the claim requires the device to use a communications channel from
`both the first and second sets of communications channels at each hop,” which would require
`simultaneous communications over multiple channels, something never disclosed in the
`specification. Accordingly, the term “hopping sequence” is indefinite.
`
`6
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`

`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 11 of 23
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`C.
`
`“[First/Second/Third] Performance [Criterion/Criteria]”
`
`Plaintiff’s Proposal
`Patent
`’418 Patent No construction necessary
`
`Defendant’s Proposal
`ability of the channel to
`communicate
`
`Most of Bandspeed’s arguments amount to little more than non-substantive semantic
`quibbles. Although Bandspeed may be technically correct that channels are used for
`communication, but do not themselves communicate, that does not make Realtek’s proposed
`construction ungrammatical. See Pl.’s Br. at 10-11. For example, boats do not sail themselves,
`but referring to the “ability of a boat to sail” would hardly raise eyebrows. In any event,
`Bandspeed’s complaint can be easily remedied simply by altering the proposed construction to
`“the ability of the communications device to use the channel to communicate,” without altering
`the substantive meaning.
`Bandspeed’s second argument—that “ability” simply means the capacity to do something
`as opposed to how well the task is performed—is simply incorrect as a matter of basic
`lexicography. See id. at 11. “Ability” means “competence in doing something : SKILL.”
`MERRIAM-WEBSTER DICTIONARY (available online) (Ex. C). For example, no one would say that
`a person has artistic ability simply because they have the physical capability to slap paint on a
`canvas or that they have athletic ability simply because they can run the length of football field
`without tripping over their own feet.
`Bandspeed’s overly punctilious debate over the subtlest points of grammar and meaning
`only highlight the fact that the term “performance” has a broad range of meanings in ordinary
`parlance. But “performance” is used in a much more limited fashion in the ’418 Patent—that is,
`enhancing the system’s ability to communicate by reducing or eliminating interference. See ’418
`Pat. 3:17-20 (“Interference results in data transmission errors . . . resulting in reduced transmission
`quality and performance . . . .”); id. at 7:26-29 (by using the invention “interference problems are
`reduced and transmission performance is improved”); id. at 7:36-39 (using channels whose
`“performance exceeds a specified threshold” “reduce[s] or eliminate[s]” “interference in a
`
`7
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`

`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 12 of 23
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`communications system”). Leaving the term “performance” unconstrued could result in the type
`of nuanced linguistic debates exemplified by Bandspeed’s claim construction brief taking place in
`the jury room. This is precisely what claim construction is intended to prevent. See Eon Corp. IP
`Holdings v. Silver Springs Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016) (holding that it is legal
`error to allow the jury to resolve issues of claim construction).
`Bandspeed’s discussion of whether performance criteria can be measured at different times
`does not alter this analysis and is completely irrelevant. See id. at 11-12. The disputed term is
`performance criterion. “Criterion” means “[a] standard on which a judgment is based.”
`WEBSTER’S NEW COLLEGE DICTIONARY 268 (2001 ed.) (Ex. D). It has absolutely nothing to do
`with when performance is measured. Moreover, if it did not matter whether the performance
`criterion used were the same or different, then there would be no need to specify a
`[first]/[second]/[third] performance criterion at all. Accordingly, Bandspeed’s suggestion that the
`[first]/[second]/[third] performance criterion could be the same improperly reads those limitations
`out of the claims. See Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed.
`Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over
`one that does not do so.”).
`D.
`“A [first/second] time”
`Patent
`Plaintiff’s Proposal
`’418 Patent No construction necessary
`
`Defendant’s Proposal
`instant of time
`
`The parties’ dispute is not over how the schedule for determining the performance of a
`communications channel is set. In fact, neither claim 15 nor 88 recites a schedule for determining
`performance or the interval at which such determinations must be made, only that the
`determination be made at different (i.e., a first/second) times.
`The real dispute between the parties is whether determining the performance of a channel
`must occur at a discrete time (i.e., instantaneously) or whether performance may be determined
`over a period of time. On its face, the phrase “at a [first/second] time” requires determining
`performance at a specific moment, not “over a [first/second] period of time.”
`
`8
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 13 of 23
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`None of the portions of the specification Bandspeed sites suggest that performance can be
`determined over a period of time. The first excerpt on which Bandspeed relies merely discloses
`testing performance “‘according to a specified schedule, such as the expiration of a specified time
`period.’” Pl.’s Br. at 12 (quoting ’418 Pat. 6:47-57) (emphasis added). That is, performance is
`tested after a set period of time has elapsed, but the testing itself occurs at a prescribed instant of
`time. The second excerpt Bandspeed cites merely provides that “‘new testing may be performed
`at periodic intervals.’” Id. (quoting ’418 Pat. 8:24-29) (emphasis added). As with the claim
`language itself, this passage merely recites testing at a particular time, not over a period of time.
`Bandspeed’s argument that Realtek is attempting to add limitations to the claims is a red
`herring. See id. at 13. The claim language does not explicitly address whether the performance
`determination must be made at a specific instant any more than it addresses whether the
`performance determination may be made over a period of time. Either interpretation could be
`viewed as adding limitations to the claim language (although only the former construction finds
`any support in both the plain language of the claim and the disclosures in the specification).
`Bandspeed’s argument that the “a [first/second] time” limitation should not be construed
`raises the same concerns as in O2 Micro International Ltd. v. Beyond Innovation Technology Co.,
`521 F.3d 1351 (Fed. Cir. 2008). The parties dispute whether the scope of the asserted claims cover
`a device in which channel performance is determined over a period of time or just at a particular
`instant. This dispute must be resolved by the Court. See id. at 1316 (“[T]he district court failed
`to resolve the parties’ dispute because the parties disputed not the meaning of the words
`themselves, but the scope that should be encompassed by the claim language.”).
`E.
`“Channel Index” and “Apply[ing] an Index to a Channel Index of the
`Identified Communications Channel”
`Patent
`Plaintiff’s Proposal
`’520 Patent No construction necessary
`
`Defendant’s Proposal
`indefinite
`
`As an initial matter, Bandspeed’s own highly-technical description of how it believes the
`channel index functions proves that no lay juror will be able to understand this term if it is not
`
`9
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 14 of 23
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`construed. See Pl.’s Br. at 14-15. When lay jurors will not understand a term, it should be
`construed. See PACid Grp. LLC v. Apple, Inc., No. 6:09cv143-LED-JDL, 2010 WL 2813654, at
`*4 (E.D. Tex. July 15, 2010). Bandspeed’s position that no construction is necessary is untenable.
`Bandspeed’s attempt to explain the meaning of these terms does nothing to clarify the
`scope of the claims or explain how to “apply an index to a channel index.” ’520 Pat. 28:8.
`Bandspeed argues that a “channel index . . . is an indicator of a channel such as an address.” Pl.’s
`Br. at 14. Even accepting this definition of “channel index,” however, claim 4 of the ’520 Patent
`remains nonsensical. Under Bandspeed’s understanding of this limitation, the claim requires
`“apply[ing] an address to a channel address of the identified communications channel to identify,
`from the register, a channel address for use for frequency hopping communications.” But nothing
`in the specification explains how an address is applied to an address to identify another address.
`In addition, there is no explanation anywhere in the specification as to what the generic non-
`channel index/address is, how it is generated, what it represents, how the generic index/address is
`applied to the channel index/address for the identified communications channel, or how doing so
`identifies a channel index/address for a (presumably different) communications channel.
`As set forth in Realtek’s Opening Claim Construction Brief, at 10, the only portion of the
`specification Bandspeed cites to explain this term simply does not track the claim language. In
`fact, the specification is contrary to Bandspeed’s argument that an “index” is an “address” because
`it uses both those terms separately with no indication that they are interchangeable or synonymous.
`For example, the specification states that “an index is applied to the output of the selection kernel
`510 to address register with good channels 550.” ’520 Pat. 20:52-54 (emphasis added); see also
`id. at 20:47-49 (referring to “addresses”). In addition, the specification states that the “index is
`applied to the output of selection kernel,” but nothing in the specification either connects the output
`of the selection kernel with the claimed channel index.
`Bandspeed’s own alternate construction of the applying limitation—“indexing the channel
`indicator of the candidate communications channel for use to determine a replacement channel for
`use”—is an effort to rewrite the claim language and only highlights the fact that the claim, as
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`Case 1:20-cv-00765-DAE Document 55 Filed 03/29/23 Page 15 of 23
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`written, is incomprehensible. First, “apply[ing] an index” is not the same as “indexing.” The
`former term indicates that the index already exists (otherwise it could not be applied), while the
`latter requires creating the index, a step never actually recited in the claim. Second, the terms
`“candidate communications channel” and “replacement channel” appear nowhere in the
`specification or the claims. Third, even assuming “candidate communications channel”
`corresponds to the “identified communications channel” and “replacement channel” corresponds
`to “a communications channel to use for frequency hopping,” the index does not determine the
`replacement channel, but instead identifies a “channel index” for the replacement channel.
`Rewriting claims to preserve their validity is, of course, improper. See Pfizer, 457 F.3d at 1292.
`And because it is impossible to discern with any reasonable certainty what the “channel index”
`and the “apply[ing] an index” limitations mean or how they function, the claim is indefinite. See
`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014) (holding that the claims, when
`read in light of the specification, must “inform thos