Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 1 of 38
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`No. 1:20-CV-765-DAE
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`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`BANDSPEED LLC,
`
` Plaintiff,
`
`vs.
`
`REALTEK SEMICONDUCTOR
`CORPORATION,
`
` Defendant.
`
`
`CLAIM CONSTRUCTION ORDER
`
`Before the Court is the claim construction of fifteen disputed terms
`
`across eight patents owned by Plaintiff Bandspeed LLC (“Bandspeed”) and
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`allegedly infringed by Realtek Semiconductor Corporation (“Realtek”). (Dkt.
`
`# 39-1.) The parties filed claim construction briefs on October 17, 2022, and each
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`filed a reply brief on March 29, 2023. (Dkts. ## 40, 41, 54, 55.)
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`The instant case was originally pending before Judge Lee Yeakel, and
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`was transferred to the undersigned on March 30, 2023. (Dkt. # 56.) This Court
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`held a Markman hearing on the claim construction briefs on August 9, 2023. After
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`reviewing the briefs filed by the parties in support of their constructions of the
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`disputed claims, as well as the arguments advanced at the hearing, the Court adopts
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`the claim constructions outlined below.
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`
`
`
`
`1
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`
`
`No. 1:20-CV-765-DAE
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`BANDSPEED LLC,
`
` Plaintiff,
`
`vs.
`
`REALTEK SEMICONDUCTOR
`CORPORATION,
`
` Defendant.
`
`
`CLAIM CONSTRUCTION ORDER
`
`Before the Court is the claim construction of fifteen disputed terms
`
`across eight patents owned by Plaintiff Bandspeed LLC (“Bandspeed”) and
`
`allegedly infringed by Realtek Semiconductor Corporation (“Realtek”). (Dkt.
`
`# 39-1.) The parties filed claim construction briefs on October 17, 2022, and each
`
`filed a reply brief on March 29, 2023. (Dkts. ## 40, 41, 54, 55.)
`
`The instant case was originally pending before Judge Lee Yeakel, and
`
`was transferred to the undersigned on March 30, 2023. (Dkt. # 56.) This Court
`
`held a Markman hearing on the claim construction briefs on August 9, 2023. After
`
`reviewing the briefs filed by the parties in support of their constructions of the
`
`disputed claims, as well as the arguments advanced at the hearing, the Court adopts
`
`the claim constructions outlined below.
`
`
`
`
`
`1
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 2 of 38
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`BACKGROUND
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`At issue in this case is the alleged infringement of eight patents: U.S.
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`Patent No. 7,027, 418 (“the ‘418 Patent”); U.S. Patent No. 7,477,624 (“the ‘624
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`Patent”); U.S. Patent No. 7,570,614 (“the ‘614 Patent”); U.S. Patent No. 7,903,608
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`(“the ‘608 Patent”); U.S. Patent No. 8,542,643 (“the ‘643 Patent”); U.S. Patent No.
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`8,873,500 (“the ‘500 Patent”); U.S. Patent No. 9,379,769 (“the ‘769 Patent”); and
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`U.S. Patent No. 9,883,520 (“the ‘520 Patent”) (collectively, the “Asserted
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`Patents”). (Dkt. # 22.)
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`Each of the Asserted Patents relate to “frequency-hopping”
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`communications systems, commonly used to transmit radio signals within various
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`technologies. (Id. at 13.) Products that use frequency-hopping systems,
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`predominantly Bluetooth technologies, operate using both a frequency-hopping
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`system and a non-frequency hopping system. (Id.) “[C]oexistence problems” tend
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`to arise as the frequency-hopping system “hops” over the entire frequency band
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`while the non-frequency-hopping system occupies separate parts of the frequency
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`band. (Id.) Bandspeed’s Asserted Patents purport to solve the coexistence problem
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`through an “adaptive frequency hopping” method, which creates a subset of
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`channels better suited for communications between frequency and non-frequency
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`hopping systems. (Id.)
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`2
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 3 of 38
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`Bandspeed alleges that on July 2, 2018, it sent a letter to Realtek
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`notifying it of the Asserted Patents and the nature of Realtek’s infringing activities.
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`(Id. at 12.) Bandspeed again sent a letter, this time by email, to Realtek on October
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`10, 2019. (Id.) According to Bandspeed, Realtek continued to infringe the
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`Asserted Patents, and Bandspeed thus filed the instant suit on July 20, 2020. (Dkt.
`
`# 1.)
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`LEGAL STANDARD
`
`
`
`
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`The meaning of terms used in a patent claim is a question of law. See
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`Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). “[T]he claims
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`of a patent define the invention to which the patentee is entitled to the right to
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`exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1115 (Fed. Cir. 2004). “[D]istrict courts are not (and should not be) required
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`to construe every limitation present in a patent’s asserted claims.” O2 Micro Int’l
`
`Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
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`Instead, the purpose of claim construction is to resolve the “disputed meanings and
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`technical scope [of the claims], to clarify and when necessary to explain what the
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`patentee covered by the claims, for use in the determination of infringement.” U.S.
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`Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Claim
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`construction is not an exercise in rewriting claims, but rather an opportunity to
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`3
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 4 of 38
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`“give effect to the terms chosen by the patentee.” K-2 Corp. v. Salomon S.A., 191
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`F.3d 1356, 1364 (Fed. Cir. 1999).
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`
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`
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`“Claim interpretation begins with an examination of the intrinsic
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`evidence, i.e., the claims, the rest of the specification and, if in evidence, the
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`prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002). Intrinsic evidence “is the most significant source of the legally
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`operative meaning of disputed claim language.” Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
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`
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`
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`The claim construction analysis “remain[s] centered on the claim
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`language itself, for that is the language the patentee has chosen to particularly point
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`out and distinctly claim the subject matter which the patentee regards as his
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`invention.” Innova/Pure Water, Inc., 381 F.3d at 1116 (internal quotation marks
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`omitted). “[T]he words of a claim are generally given their ordinary and
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`customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(en banc) (internal quotation marks omitted). “[T]he ordinary and customary
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`meaning of a claim 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.
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`This inquiry “provides an objective baseline from which to begin claim
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`interpretation.” Id. “[T]he person of ordinary skill in the art is deemed to read the
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`claim term not only in the context of the particular claim in which the disputed
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`4
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 5 of 38
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`term appears, but in the context of the entire patent, including the specification.”
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`Id.
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`
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`Because the claims “do not stand alone” and “are part of a fully
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`integrated written instrument consisting principally of a specification that
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`concludes with the claims[,]” the claims “must be read in view of the specification,
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`of which they are a part.” Id. at 1315 (internal quotation marks and citations
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`omitted). Accordingly, the specification “is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the
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`meaning of a disputed term.” Id. In interpreting the effect the specification has on
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`the claim limitations, however, courts must pay special attention to the admonition
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`that one looks “to the specification to ascertain the meaning of the claim term as it
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`is used by the inventor in the context of the entirety of his invention, and not
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`merely to limit a claim term.” Interactive Gift Express, Inc. v. Compuserve Inc.,
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`256 F.3d 1323, 1332 (Fed. Cir. 2001). “[R]eading a limitation from the written
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`description into the claims” is “one of the cardinal sins of patent law . . . .”
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`Phillips, 415 F.3d at 1320.
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`
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`
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`“Like the specification, the prosecution history provides evidence of
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`how the [patent office] and the inventor understood the patent.” Id. at 1317.
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`However, “because the prosecution history represents an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that
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`5
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 6 of 38
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`negotiation, it often lacks the clarity of the specification and thus is less useful for
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`claim construction purposes.” Id. “Nonetheless, the prosecution history can often
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`inform the meaning of the claim language by demonstrating how the inventor
`
`understood the invention and whether the inventor limited the invention in the
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`course of prosecution, making the claim scope narrower than it would otherwise
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`be.” Id. But the notion that the patentee intended to narrow the scope of the
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`claims must be “clear and unmistakable.” Omega Eng’g Inc. v. Raytek Corp., 334
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`F.3d 1214, 1325–26 (Fed. Cir. 2003). “Mere criticism of a particular embodiment
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`encompassed in the plain meaning of a claim term is not sufficient to rise to the
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`level of clear disavowal.” Thorner v. Sony Computer Entm’t Am., LLC, 669 F.3d
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`1362, 1366 (Fed. Cir. 2012).
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`
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`
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`Aside from the intrinsic evidence, the Court may also consult
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`“extrinsic evidence,” which is “all evidence external to the patent and prosecution
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`history, including expert and inventor testimony, dictionaries, and learned
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`treatises.” Phillips, 415 F.3d at 1317. While extrinsic evidence “can shed useful
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`light on the relevant art,” extrinsic evidence is “less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.” Id.
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`(internal quotation marks omitted). Further, “it is improper to rely on extrinsic
`
`evidence” when “an analysis of the intrinsic evidence alone will resolve any
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`ambiguity in a disputed claim term.” Vitronics Corp., 90 F.3d at 1583. And even
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`6
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 7 of 38
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`when consulting extrinsic evidence is warranted, such evidence “is to be used for
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`the court’s understanding of the patent, not for the purpose of varying or
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`contradicting the terms of the claims.” Markman v. Westview Instruments, Inc., 52
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`F.3d 967, 981 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996).
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`DISCUSSION
`
`The parties dispute the construction of fifteen claim terms across the
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`
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`
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`eight Asserted Patents. (Dkt. # 39-1.) Before reaching the construction of these
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`terms, the Court addresses an issue raised across several terms: whether Realtek’s
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`failure to disclose its belief that certain terms are “indefinite” in its invalidity
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`contentions requires the Court to deny its claims of indefiniteness on this ground
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`alone.1
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`Though some courts have denied claims of indefiniteness for this
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`reason, in general, courts focus on the potential prejudice if the claim were
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`permitted and the timing of the delay. See Science Applications Int’l Corp. v.
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`United States, 153 Fed. Cl. 485, 493 (Fed. Cl. 2021) (citing Federal Claims Rule
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`16(b)(4) for the proposition that the parties may modify the court-imposed
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`schedule for raising indefinite claims after invalidity contentions only if there is
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`
`1 Bandspeed raises this argument for the following terms: “selection kernel,”
`“hopping sequence,” “channel index,” “apply[ing] an index to a channel index of
`the identified communications channel,” “bad” and “good,” and the “instructions”
`terms. (See Dkt. # 40.)
`
`
`
`7
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 8 of 38
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`“good cause,” which is a two-fold inquiry asking whether the moving party was
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`diligent in amending its contentions and whether the non-moving party would
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`suffer prejudice); Allure Energy, Inc. v. Nest Labs, Inc., 84 F. Supp. 3d 538, 540-41
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`(finding the same based on the Federal Circuit’s holding in O2 Micro Int’l Ltd. v.
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`Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006), and describing
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`the factors to be considered in good cause as the length, reason, and impact of the
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`delay, whether the offending party was diligent in seeking an extension of time, the
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`importance of the matter, and the danger of unfair prejudice to the non-movant).
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`The Court finds that good cause exists to consider Realtek’s assertions
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`of indefiniteness even though not included in its invalidity contentions. Realtek
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`disclosed its claims to Bandspeed only a few days after the invalidity contentions,
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`and the parties subsequently had numerous conversations in the weeks between
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`July and October 2022 related to claim construction issues. (Dkt. # 55 at 5.)
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`Considering that Bandspeed responded substantively to all of Realtek’s
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`indefiniteness, and the gravity of ensuring that the claims are properly constructed,
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`the Court finds no prejudice in considering Realtek’s indefiniteness arguments.
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`Thus, for each term in which Bandspeed raises this argument, it is summarily
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`denied.
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`Having determined that there is good cause to permit Realtek’s claims
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`of indefiniteness, the Court proceeds to construct each disputed term in turn.
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`8
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 9 of 38
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`I.
`
`“Selection Kernel”
`
`Term and Asserted
`Claims
`“selection kernel”
`
`‘643 patent
`
`Bandspeed’s
`Proposal
`A device or
`mechanism of a
`participant that
`selects
`communications
`channels to form
`the hopping
`sequence
`
`Realtek’s Proposal Adopted
`construction
`A software
`module that
`encapsulates a
`register
`addressing
`function
`
`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
`
`
`
`
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`The parties first dispute the term “selection kernel” in the ‘643 patent.
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`(Dkt. # 39-1 at 6.) Bandspeed proposes that the term be defined as a “device or
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`mechanism of a participant that selects communications channels to form the
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`hopping sequence.” (Id.) Realtek insists that the term is indefinite, but
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`alternatively proposes a definition of “the configuration of hardware and software
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`illustrated in any of Figures 11.3 and 11.4, which is described in Bluetooth
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`Specification 11.12 v. 1.0B. (Id.)
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`“[A] patent is invalid for indefiniteness if its claims, read in light of
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`the specification delineating the patent, and the prosecution history, fail to inform,
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`with reasonable certainty, those skilled in the art about the scope of the invention.”
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`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014). “Put
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`9
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 10 of 38
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`another way, when ‘a skilled artisan2 would understand the inherent parameters of
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`the invention as provided in the intrinsic evidence,’ a claim is not indefinite.”
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`Silicon Labs., Inc. v. Cresta Tech. Corp., No. 14-CV-3227, 2016 WL 791792, at *1
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`(N.D. Cal. Mar. 1, 2016) (citing Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d
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`1374, 1384 (Fed. Cir. 2015)).
`
`
`
`
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`The Patent Trial and Appeal Board (“PTAB”) addressed the
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`construction of this term – in the same patent, no less – in another lawsuit
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`involving Bandspeed on August 5, 2016. (Dkt. # 40-14 at 3-4.) Though neither
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`party proposed a construction of “selection kernel,” the PTAB found that it was a
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`technical term requiring construction in order to apply the prior art to the claims.
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`Acknowledging that the specification does not define “selection kernel,” but
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`describes a selection kernel in Figures 5A and 5B, the PTAB turned to a technical
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`dictionary to aid in its construction. See IEEE 100, THE AUTHORITATIVE
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`DICTIONARY OF IEEE STANDARDS TERMS 599 (7th ed. 2000) (defining a “kernel” as
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`“[a] software module that encapsulates an elementary function or functions of a
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`system.”). Ultimately, the PTAB chose to construe “selection kernel” to mean “a
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`software module that encapsulates a register addressing function.” (Dkt. # 40-14 at
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`4.)
`
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`2 Also known as a person having ordinary skill in the art (“POSITA”).
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`10
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 11 of 38
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`Courts take varying positions on the relevance of PTAB decisions in
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`reaching claim construction decisions. See Ilife Techs., Inc. v. Nintendo of
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`America, Inc., No. 3:13-CV-4987, 2017 WL 525708, at *5 (N.D. Tex. Feb. 9,
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`2017) (“Some courts . . . give ‘reasoned deference’ to PTAB’s constructions . . . .
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`[o]ther courts look to a PTAB decision only for guidance or comfort in reaching
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`claim construction decisions . . . . [o]thers have suggested that the PTAB’s claim
`
`construction decisions are intrinsic evidence of the claim’s meaning as part of the
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`patent’s prosecution history . . . . some courts have treated PTAB claim
`
`construction decisions as extrinsic evidence[.]”) (collecting cases). The approach
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`of this district is to adopt a PTAB decision as part of the patent’s intrinsic record.
`
`See Advanced Electrolyte Techs., LLC v. Samsung SDI Co., Ltd., No. A:17-CV-
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`30-LY, 2018 WL 2770648, at *4 (W.D. Tex. June 8, 2018) (citing e-Watch, Inc. v.
`
`ACTi Corp., 2013 WL 6334372, at *7 (W.D. Tex. Aug. 9, 2013)).
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`The PTAB’s construction is consistent with the parties’ applications of
`
`the term. (See Dkts. ## 40 at 14 (“A selection kernel is implemented as a
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`combination of hardware and software programs comprising a module[.]”); 41 at 7,
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`10 (describing concerns that the words “device” and “mechanism” in Bandspeed’s
`
`proposal and the lack of information as to how the selection kernel addresses a
`
`register or generates output).) Though Realtek insists that the Bluetooth standard
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`should be specifically cited in the Court’s construction, Realtek has provided no
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`11
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 12 of 38
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`evidence that different competitors could implement the selection of channels in
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`different ways. (Dkt. # 41 at 10.) Therefore, the Court finds that construing the
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`term “selection kernel” to mean “a software module that encapsulates a register
`
`addressing function” in accordance with the PTAB decision is appropriate.
`
`II.
`
`“The Hopping Sequence”
`
`
`
`Term and Asserted
`Claims
`“the hopping
`sequence”
`
`‘608 patent
`
`Bandspeed’s
`Proposal
`No construction
`necessary
`
`Alternatively:
`Order of hops
`
`Realtek’s Proposal Adopted
`construction
`Plain and
`ordinary
`meaning
`
`Indefinite (lack of
`antecedent basis)
`for ‘608 patent
`only
`
`The parties dispute the term “hopping sequence” only in the ‘608
`
`
`
`patent. In the ‘418 and ‘614 patents, where the term also appears, the parties agree
`
`that it should be construed as “the order in which the network hops among the set
`
`of frequencies.” (Dkt. # 39-1 at 3.) But as used in the ‘608 patent, Realtek
`
`contends that the term is indefinite for lack of antecedent basis.
`
`The requirement of antecedent basis “is a rule of patent drafting,
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`administered during patent examination.” Energizer Holdings, Inc. v. Int’l Trade
`
`Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006).3 Failure to provide explicit
`
`
`3 According to a presentation on claim drafting by the USPTO, an antecedent basis
`means that the first time a limitation is mentioned, the drafter introduces it with an
`indefinite article such as “a” or “an.” Any subsequent references to the limitation
`should then be made with definite articles such as “the” or “said.” U.S. Patent and
`
`
`
`
`12
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 13 of 38
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`antecedent basis “does not always render a claim indefinite.” Id. (citing MPEP
`
`§ 2173.05(e) (8th ed. Rev.2, May 2004)). But in the absence of an antecedent, the
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`scope of a claim must “be reasonably ascertainable by those skilled in the art[.]”
`
`Id. (quoting Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001)).
`
`The parties appear to agree that in the context of the ‘608 patent’s
`
`asserted claims 2 and 4, “the hopping sequence” lacks an antecedent basis, but
`
`Bandspeed argues that the ‘608 patent provides sufficient detail for a POSITA to
`
`understand the scope of the claims, while Realtek maintains the contrary. (Dkts.
`
`## 40 at 16; 41 at 11.) Bandspeed points to the reference to a single hopping
`
`sequence in asserted claims 2 and 4 and notes that each depend from claim 1,
`
`which does not include the term “hopping sequence,” thus making the reference
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`unambiguous. (Dkt. # 40 at 16.) Realtek contends that the manner in which
`
`“hopping sequence” is used in claim 2 renders the entire claim incomprehensible,
`
`as it provides that “at each hop in the hopping sequence . . . only one
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`communications channel is used,” but also that “at each hop in the hopping
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`sequence . . . only one communications channel of the second set of two or more
`
`communications channels is used.” (Dkt. # 41 at 11.) Therefore, Realtek surmises,
`
`
`Trademark Office, Claim Drafting, Presentation at Invention Con (Sept. 12, 2019)
`(slides available on USPTO website).
`
`
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`13
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 14 of 38
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`for each hop, a communication channel from both the first and the second set of
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`communications channel is used, which makes no sense. (Id.)
`
`The Court acknowledges that the lack of antecedent basis makes “the
`
`hopping sequence” slightly confusing. Nonetheless, claim 2 inherits the
`
`limitations of independent claim 1, which makes clear that one set of channels is
`
`used for a first period and a second set for a second period. (Dkt. # 40-6.) On the
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`whole, the ‘608 patent contains no suggestion that simultaneous communication
`
`exists over multiple channels. (See id.) And as stated in Slimfold Mfg. Co. v.
`
`Kinkead Indus., Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987), an antecedent basis can
`
`be present by implication. See also Energizer Holdings, 435 F.3d at 1371.
`
`Accordingly, the Court finds that a POSITA could reasonably discern from the
`
`scope of the patent that “the hopping sequence” initially recited in claim 2 and
`
`reiterated in claim 4 refers to “a hopping sequence.”
`
`III.
`
`“[First/second/third] Performance [Criterion/Criteria]”
`
`Bandspeed’s
`Proposal
`No construction
`necessary
`
`Term and Asserted
`Claims
`“[first/second/third]
`performance
`[criterion/criteria]”
`
`‘418 patent
`
`Realtek’s Proposal Adopted
`construction
`Plain and
`ordinary
`meaning
`
`Performance – the
`ability of the
`channel to
`communicate
`
`First/second/third
`– p/o meaning,
`each is a different
`performance
`criterion
`14
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 15 of 38
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`Bandspeed insists that construction of “performance” is unnecessary
`
`because it is a commonly used word with no special meaning. (Dkt. # 40 at 17.)
`
`Realtek proposes that “performance” be construed as “the ability of the channel to
`
`communicate” considering that the term as used in the ‘418 patent specifically
`
`refers to that ability and in ordinary parlance, the word has a much broader scope.
`
`(Dkt. # 41 at 12-13.) Bandspeed responds that this construction is improper
`
`because channels do not communicate, but rather, are used to communicate, and
`
`that “ability” is not a synonym for performance. (Dkt. # 40 at 17-18.)
`
`The Court acknowledges Realtek’s concerns, but notes that “[t]he
`
`ordinary meaning of a claim term is not ‘the meaning of the term in the abstract.’”
`
`Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314, 1320 (Fed. Cir.
`
`2016). Instead, the ordinary meaning of a claim term “is its meaning to the
`
`ordinary artisan after reading the entire patent.” Id. (citing Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). The Court finds that, in the
`
`context of the ‘418 patent, the meaning of the term “performance” would
`
`reasonably be clear to a POSITA. For example, the specification reads “[b]y 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[.]” (Dkt. # 40-3 at 18.) As Bandspeed
`
`argues, even if the POSITA – or jury—understood “performance” in this context to
`15
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 16 of 38
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`mean “functioning,” the term would still aptly cover the scope of the claim.
`
`Considering that courts should “generally give[] [claim terms] their ordinary and
`
`customary meaning,” the undersigned declines to construe this term another way.
`
`Eon Corp., 815 F.3d at 1320. The same reasoning applies to the Court’s decision to
`
`construe “first/second/third” according to its plain and ordinary meaning.4
`
`IV.
`
`“A [First]/[Second] Time”
`
`Term and Asserted
`Claims
`“a [first]/[second]
`time”
`
`‘418 patent
`
`Bandspeed’s
`Proposal
`No construction
`necessary
`
`Realtek’s Proposal Adopted
`construction
`A [first]/[second]
`instant of time
`
`A [first]/[second]
`instant of time
`
`
`Bandspeed argues that “a [first]/[second] time” needs no construction
`
`
`
`because it is plain from a reading of the patent and that Realtek’s proposal
`
`improperly narrows the claim. (Dkt. # 40 at 19-20.) Realtek proposes “instant of
`
`time” out of a concern that without clarification, jurors may incorrectly equate the
`
`“time” element with “more mundane tasks, like searching for a station on a
`
`traditional radio.” (Dkt. # 41 at 13.)
`
`
`4 Realtek makes no express argument regarding the construction of
`“first/second/third” in its claim construction brief, (see Dkt. # 41 at 12-13) or its
`reply brief (see Dkt. # 55 at 11), but the Court still considers the discussion of the
`parties regarding these terms at the Markman hearing.
`
`
`
`16
`
`
`
`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 17 of 38
`
`The Court agrees with Realtek that the inclusion of “instant” will aid
`
`the jury in making a distinction between other assessments of channel performance
`
`identified in the specification, such as “the expiration of a specified time period” or
`
`“periodic intervals.” (Dkt. # 40-3.) As Realtek states, these descriptors “merely
`
`recite[] testing at a particular time, not over a period of time.” (Dkt. # 55 at 13.)
`
`Though the Federal Circuit generally constructs claims according to their plain and
`
`ordinary meaning, in O2 Micro Int’l, the court considered a similar dispute over
`
`the construction of the term “only if.” 521 F.3d at 1361. The ordinary meaning of
`
`the phrase was readily apparent, but the parties argued over the scope of what was
`
`encompassed by the claim language. Id. The Federal Circuit remarked that a
`
`determination that a claim needs no construction “may be inadequate when a term
`
`has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’
`
`meaning does not resolve the parties’ dispute.” Id. Because the parties disputed
`
`the circumstances when the requirement specified by the claim term must be
`
`satisfied, the court determined that the “ordinary” meaning of the term was
`
`insufficient for the jury. Id. at 1362.
`
`Because the scope of time is disputed between the parties, the Court
`
`finds that adding “instant” as clarification for the jury is appropriate.
`
`
`
`
`
`
`
`17
`
`
`
`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 18 of 38
`
`“Channel Index” and “Apply an Index to a Channel Index of the Identified
`Communications Channel”
`
`
`Term and Asserted
`Claims
`“channel index”
`
`‘520 patent
`“apply an index to
`a channel index of
`the identified
`communications
`channel”
`
`‘520 patent
`
`Realtek’s Proposal Adopted
`construction
`An indicator of a
`channel
`
`Indefinite
`
`
`Indefinite
`
`Plain and
`ordinary
`meaning
`
`Bandspeed’s
`Proposal
`No construction
`necessary
`
`No construction
`necessary
`
`V.
`
`
`
`The parties dispute the construction – and whether construction is
`
`even necessary – of the terms “channel index” and “apply an index to a channel
`
`index of the identified communications channel” in the ‘520 patent. (Dkt. # 39-1
`
`at 6.) Bandspeed asserts that a POSITA would readily understand the scope and
`
`meaning of the terms in the context of the ‘520 patent disclosures. (Dkt. # 40 at
`
`21.) Realtek responds that the terms do not appear in the specification and there
`
`are no objective boundaries that would aid a competitor in understanding the metes
`
`and bounds of the claim. (Dkt. # 41 at 14.)
`
`The Court finds that a POSITA could reasonably understand the term
`
`“channel index” given its plain and ordinary meaning, but that additional clarity
`
`may aid a jury in better comprehending the term. Thus, the Court adopts the
`
`construction “an indicator of a channel.” The term “index” appears twice in the
`
`
`
`18
`
`
`
`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 19 of 38
`
`specification, while “channel index” appears in claims 4, 12, 20, and 30. (See, e.g.,
`
`Dkt. # 40-10 at 39 (“[A]pply an index to a channel index of the identified
`
`communications channel to identify, from the table of good channels, a channel
`
`index of a communications channel to use for frequency hopping communications
`
`with the other wireless communications device…”).) The Court agrees with
`
`Realtek that the separate references to an “index” and a “channel index” is slightly
`
`confusing, but as expert Dr. Jose Luis Melendez states in his declaration, a POSITA
`
`could reasonably differentiate the two based on the claim language and
`
`specification. (Dkt. # 40-1 at 18.) To help clarify the distinction for the jury,
`
`however, the Court finds that constructing the term as “an indicator of a channel” –
`
`a construction upon which Bandspeed agrees and which addresses the concerns
`
`raised by Realtek – is appropriate.
`
`However, the Court finds no reason to disturb the current construction
`
`of “apply an index to a channel index of the identified communications channel.”
`
`The Court concurs in Realtek’s assessment of Bandspeed’s alternative construction
`
`as confusing, but the clarified construction of “channel index” to “an indicator of a
`
`channel” aids in the comprehension of this term, both for a POSITA and the jury.
`
`As the specification explains, applying an index allows for the selection of a
`
`“good” channel register. (Dkt. # 40-10.) Figure 5A elaborates upon the
`
`mechanism and how the index is applied to the channel index output of selection
`
`
`
`19
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`
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 20 of 38
`
`kernel 510. With these details, a POSITA “would understand the inherent
`
`parameters of the invention as provided in the intrinsic evidence,” and thus the
`
`claim is not indefinite. Silicon Labs, 2016 WL 791792, at *1 (citing Biosig
`
`Instruments, 783 F.3d at 1384).
`
`VI.
`
`“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”
`
`Term and Asserted
`Claims
`“distinct
`[channels]”
`
`‘608 patent
`
`“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”
`
`‘608 patent
`
`
`
`Bandspeed’s
`Proposal
`No construction
`necessary
`
`Alternatively:
`separately
`identifiable
`[channels]
`No construction
`necessary
`
`Realtek’s Proposal Adopted
`construction
`Plain and
`ordinary
`meaning
`
`Distinct -
`indefinite
`
`
`Indefinite
`
`Plain and
`ordinary
`meaning
`
`20
`
`
`
`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 21 of 38
`
`
`
`Bandspeed advocates for the plain and ordinary meaning of “distinct”
`
`and “distinct channels,” arguing that the term “distinct” is not indefinite as Realtek
`
`contends. (Dkt. # 40 at 23.) Bandspeed points to claim 1 of the ‘608 patent, which
`
`states “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,” and states that 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.’” (Dkt. # 40 at 23.) Bandspeed also asserts that
`
`distinct channels are disclosed within the specification of the ‘608 patent in the
`
`description of the frequency hopping approach; even though the word “distinct” is
`
`not used there, Bandspeed contends that a POSITA would understand what the
`
`channels identify. (Id.)
`
`Realtek responds with the dictionary definition of “distinct,” which is
`
`“distinguished from all others” or “individual.” (Dkt. # 41 at 16.) In so noting,
`
`Realtek explains that this common definition does not work as the term is used in
`
`the claim, and that nothing in the specification suggests that the same channel
`
`would ever be included more than once in the same set of channels. (Id.) Realtek
`
`argues that logically, under the common definition of “distinct,” every channel
`21
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`
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`Case 1:20-cv-00765-DAE Document 64 Filed 08/11/23 Page 22 of 38
`
`within any set of communications channels is already different from every other
`
`channel within the same set. (Id. (citing Merck & Co. v. Teva Pharms. USA, Inc.,
`
`395 F.3d
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