IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`2:17-cv-00577-JRG
`
`JURY TRIAL DEMANDED
`
`§§
`
`§§
`
`§
`§
`§
`§
`§
`
`§§
`
`§§
`
`INTELLECTUAL VENTURES I LLC,
`
`Plaintiff,
`
`v.
`
`T-MOBILE USA, INC., T-MOBILE US,
`INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM
`ERICSSON
`
`Defendants.
`
`_____________________________________________________________________________
`
`DEFENDANTS’ PATENT RULE 4-2 DISCLOSURE OF
`PRELIMINARY PROPOSED CONSTRUCTIONS OF CLAIM TERMS AND
`PRELIMINARY IDENTIFICATION OF EXTRINSIC EVIDENCE
`
`

`

`Pursuant to the Court’s scheduling and discovery order and Local Patent Rule 4-2,
`
`Defendants1 hereby provide the following preliminary proposed claim constructions and
`
`identification of extrinsic evidence for the claim terms and claim elements that should be
`
`construed by the Court. For purposes of this 4-2 Statement and reservation of Defendants’
`
`rights, Defendants include below claim terms and claim elements whose construction Defendants
`
`believe to be unwarranted in light of the dispositive nature of Defendants’ pending Motions to
`
`Dismiss on issue preclusion grounds. Dkt. Nos. 20, 23. A decision by the Court in Defendants’
`
`favor on those motions will render moot any need to construe any terms below that contain the
`
`“optimize” term (or any terms which solely appear with respect to claims containing the
`
`“optimize” term), because the presence of the “optimize” term in those claims renders those
`
`claims indefinite as a matter of law due to issue preclusion. See Dkt. Nos. 20, 23.
`
`In IV’s Disclosure of Asserted Claims and Infringement Contentions dated November 14,
`
`2017, IV asserts against at least one Defendant the following claims of the following patents:
`
` U.S. Patent No. 6,628,629: Claims 1-4;2
`
` U.S. Patent No. 7,359,971: Claims 12-15, 18, 21, 22, 25-27, 33, and 37;3
`
` U.S. Patent No. 7,412,517: Claims 1, 4, 12, and 15; and
`
` U.S. Patent No. RE46,206: Claims 1, 2, 6, 8, 9, 11, 15-20, 27, 29-33, 38, 41, 44-
`46, 48-52, 109, 111, 112, 114, 115, 118, 120-124, 126, 129, 132-135, 140, 144,
`and 146.4
`
`1 “Defendants” refers to the defendants in the above-captioned cases, including: T-Mobile USA,
`Inc., T-Mobile US, Inc., Ericsson Inc., and Telefonaktiebolaget LM Ericsson.
`
`2 IV has since dropped Claim 2 of the ‘629 Patent. To the extent IV is later permitted to re-assert
`this claim, Defendants reserve the right to modify the list herein.
`
`3 IV has since dropped Claims 13 and 26 of the ‘971 Patent. To the extent IV is later permitted
`to re-assert either of these claims, Defendants reserve the right to modify the list herein.
`
`2
`
`

`

`Defendants’ preliminary proposed claim constructions and identification of extrinsic
`
`evidence appear in Exhibit A, are based upon information currently available to Defendants.5
`
`Defendants have not completed discovery and have not received Plaintiff’s proposed
`
`constructions. Defendants, therefore, reserve the right to amend or otherwise supplement the
`
`preliminary proposed constructions as appropriate in light of their plain and ordinary meaning
`
`and Plaintiff’s proposed constructions, including but not limited to in the parties’ forthcoming
`
`Local Patent Rule 4-3 statement. Nothing in this submission should be construed to be an
`
`admission by Defendants. Defendants specifically reserve the right to argue that any of the claim
`
`terms identified herein need not be construed by the Court. Defendants reserve the right to offer
`
`evidence and argument regarding the construction of any terms or elements that are identified by
`
`IV, or to argue for a plain meaning where it is evident that IV’s apparent interpretation deviates
`
`from that plain meaning.
`
`Defendants will identify intrinsic support at the time identified by the Court’s scheduling
`
`order, including references to the claims of the asserted patents, specification, prosecution
`
`history, and prior art cited on the face of the asserted patents.
`
`4 IV has since dropped Claims 45, 46, and 48-52, 115, 124, and 135 of the ‘206 Patent. To the
`extent IV is later permitted to re-assert any of these claims, Defendants reserve the right to
`modify the list herein.
`
`5 Defendants note that under Plaintiff’s application of the claims, certain claims are invalid for
`failing to comply with 35 U.S.C. § 112 as described in Defendants’ invalidity contentions.
`Defendants’ proposed constructions for terms, phrases, or clauses with regard to claims and
`limitations that fail to satisfy 35 U.S.C. § 112 should in no way be read to imply that the claims
`satisfy 35 U.S.C. § 112. Moreover, Defendants’ inclusion of materials referenced in this
`disclosure is not an admission that any of these materials constitutes extrinsic evidence as
`opposed to intrinsic evidence. Defendants reserve all rights to submit any of these materials or
`similar materials as intrinsic or extrinsic evidence in the event the applicable standard provides
`for categorization as one or the other.
`
`3
`
`

`

`Defendants do not contend presently that live expert testimony is necessary to construe
`
`the patents’ claims, but Defendants reserve the right to present the testimony of Dr. Izhak Rubin
`
`via sworn declaration regarding the indefiniteness of the claims identified in the attached Exhibit
`
`A; and, if Plaintiff asserts such testimony or takes claim construction positions that otherwise
`
`necessitate such testimony, Defendants reserve the right to provide rebuttal testimony.
`
`Claim construction discovery is ongoing, and Defendants reserve the right to supplement
`
`or amend their preliminary constructions and evidence in light of further claim construction
`
`discovery. Also, if Plaintiff later amends or supplements its infringement contentions, or seeks
`
`an improper interpretation of a term, phrase, or clause that has not been identified by the parties,
`
`Defendants reserve the right to seek the construction of that term, phrase, or clause.
`
`4
`
`

`

`Dated: May 23, 2018
`
`Respectfully submitted,
`
`By: /s/ Jeffery S. Becker
`Douglas M. Kubehl
` Texas State Bar No. 00796909
` E-mail: doug.kubehl@bakerbotts.com
`Jeffery S. Becker
` Texas State Bar No. 24069354
`E-mail: jeff.becker@bakerbotts.com
`Harrison G. Rich
` Texas State Bar No. 24083730
`E-mail: harrison.rich@bakerbotts.com
`Steven T. Jugle
` Texas State Bar No. 24083280
` E-mail: steven.jugle@bakerbotts.com
`Megan V. LaDriere
` Texas State Bar No. 24083348
` E-mail: melissa.butler@bakerbotts.com
`Johnson K. Kuncheria
` Texas State Bar No. 24070092
` E-mail:johnson.kuncheria@bakerbotts.com
`Melissa L. Butler
` Texas State Bar No. 24097442
` E-mail: melissa.butler@bakerbotts.com
`BAKER BOTTS L.L.P.
`2001 Ross Avenue, Suite 700
`Dallas, Texas 75201
`Telephone: (214) 953-6500
`Facsimile: (214) 953-6503
`
`ATTORNEYS FOR ERICSSON INC.,
`TELEFONAKTIEBOLAGET LM
`ERICSSON, T-MOBILE USA, INC.,
`AND T-MOBILE US, INC.
`
`Melissa R. Smith
` Texas State Bar No. 24001351
` E-mail: melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`ATTORNEYS FOR ERICSSON INC.,
`TELEFONAKTIEBOLAGET LM
`ERICSSON, T-MOBILE USA, INC.,
`AND T-MOBILE US, INC.
`
`Asim M. Bhansali
` State Bar No. 90001290
`E-mail: abhansali@kblfirm.com
`KWUN BHANSALI LAZARUS LLP
`4 Embarcadero Center, Suite 1400
`San Francisco, CA 94111
`Telephone: (415) 391-5400
`
`ATTORNEYS FOR T-MOBILE USA,
`INC., AND T-MOBILE US, INC.
`
`Justin K. Sessions
` Email: jsessions@keker.com
`R. Adam Lauridsen
` Email: alauridsen@keker.com
`KEKER, VAN NEST & PETERS LLP
`633 Battery Street
`San Francisco, CA 94111
`Telephone: (415) 391-5400
`Facsimile: (415) 397-7188
`
`ATTORNEYS FOR T-MOBILE USA,
`INC., AND T-MOBILE US, INC.
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that counsel of record who are deemed to have consented to electronic
`
`service are being served this May 23, 2018, with a copy of this document via electronic mail.
`
`/s/ Jeffery S. Becker
`Jeffery S. Becker
`
`
`
`6
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`‘629 Patent,
`Claim 1
`
` None
`
`“reserving a second slot for a
`second data packet of said IP
`flow in a transmission frame,
`subsequent in time to said
`future
`transmission
`frame”
`(solely to remove the comma,
`which
`was
`introduced
`through a clear typographical
`printing error)
`
`reserving a second slot for a
`second data packet of said
`IP flow in a transmission
`frame [,] subsequent in time
`to said future transmission
`frame
`
`“in an isochronous manner”
`
`“according to a consistent
`time interval”
`
`‘629 Patent,
`Claim 1;
`‘971 Patent,
`Claim 12
`‘206 Patent,
`Claim 123
`
`“periodic variation”
`
`“changing of the placement
`between
`frames, while
`maintaining a consistent
`time interval”
`
`‘629 Patent,
`Claim 3;
` ‘971
`Patent,
`Claim 14
`
` Graham Langley, Telephony’s Dictionary,
`Second Edition, at 165 (1986) (“isochronous
`1. Of a periodic signal, the time interval
`separating any two corresponding transitions
`which is equal to the unit interval or to a
`multiple of the unit interval. 2. Pertaining to
`data transmission in which the corresponding
`significant instants of two or more sequential
`signals have a constant phase relationship.”).
` Sybil P. Parker, McGraw-Hill Dictionary of
`Scientific and Technical Terms, Fifth Edition,
`at 1057 (1994) (“isochronous [PHYS] Having
`a fixed frequency or period”).
`
` Graham Langley, Telephony’s Dictionary,
`Second Edition, at 165 (1986) (“isochronous
`1. Of a periodic signal, the time interval
`separating any two corresponding transitions
`which is equal to the unit interval or to a
`multiple of the unit interval. 2. Pertaining to
`data transmission in which the corresponding
`significant instants of two or more sequential
`signals have a constant phase relationship.”).
` Sybil P. Parker, McGraw-Hill Dictionary of
`Scientific and Technical Terms, Fifth Edition,
`at 1057 (1994) (“isochronous [PHYS] Having
`a fixed frequency or period”).
` Sybil P. Parker, McGraw-Hill Dictionary of
`
`1
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`Scientific and Technical Terms, Fifth Edition,
`at 1474 (1994) (“periodic [SCI TECH]
`Repeating itself identically at regular
`intervals”).
`
`“host workstation”
`
`‘971 Patent,
`Claim 12
`
` None
`
`“end-point running one or
`more applications and
`serving as the source or
`destination of an IP flow to
`or from a subscriber end-
`point”
`
`“to optimize end user quality
`of service (QoS) for an IP
`flow”
`
`‘971 Patent,
`Claim 12
`
`Indefinite.
`
` U.S. Pat. No. 6,640,248 as cited in the parties’
`prior Markman briefing regarding the
`“optimize” term of the ‘248 Patent’s Claim 20.
` Expert Testimony of Dr. Izhak Rubin, who will
`testify, if necessary, that these claims have the
`same indefiniteness issue as Claim 20 of the
`‘248 Patent—in particular, the specification
`“provides no objective boundaries” and leaves
`the standard for measuring optimization
`“completely unbounded.”
` Prior Declarations of Dr. Rubin regarding ‘248
`Patent indefiniteness (addressing the same
`indefiniteness issue with respect to the ‘248
`Patent), filed in Ca. No. 13:cv-1670 (Dkt. No.
`210-6 – 210-7 Ex. A5-A6) (D. Del.)
` Memorandum Opinion dated August 12, 2016,
`Ca. No. 13:cv-1670, at pp. 19-21 (Dkt. No.
`376) (D. Del.) (“Based on the intrinsic and
`extrinsic evidence, the Court is persuaded, by
`clear and convincing evidence, that the term
`‘optimize,’ as it is used in the ‘248 Patent is
`indefinite.”).
` Prosecution history of related U.S. Patent
`6,682,622, including but not limited to, Appeal
`Brief dated Jan. 6, 2003.
`
`for
`means
`“assigning
`assigning future slots of a
`transmission
`frame
`a
`to
`portion of said IP flow in said
`transmission
`frame
`for
`
`‘971 Patent,
`Claim 12
`
` None
`
`2
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`transmission over said shared
`wireless network”
`Means-plus-function
`limitation under § 112 ¶ 6.
`Function: “assigning future
`slots of a
`transmission
`frame to a portion of said
`IP flow in said transmission
`frame for transmission over
`said
`shared
`wireless
`network”
`downlink
`
`Structure:
`scheduler 1566 or uplink
`scheduler
`1666,
`implementing an algorithm
`that assigns future slots to a
`portion of an IP flow based
`on the priority of the IP
`flow.
`
`an
`applying
`reservation
`
`for
`“means
`advanced
`algorithm”
`Means-plus-function
`limitation under § 112 ¶ 6.
`Function:
` “applying an
`advanced
`reservation
`algorithm”
`downlink
`Structure:
`scheduler 1566 or uplink
`scheduler
`1666
`implementing an algorithm
`that determines the latency
`and
`jitter
`sensitivity of
`flows and then determines
`how to assign slots based on
`that determination
`(e.g.,
`periodically or not, with
`what period)
`
`“means for reserving a first
`slot for a first data packet of
`an Internet Protocol (IP) flow
`in a future transmission frame
`based on said algorithm”
`
` None
`
`‘971 Patent,
`Claim 12
`
`‘971 Patent,
`Claim 12
`
` None
`
`3
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`Means-plus-function
`limitation under § 112 ¶ 6.
`Function: reserving a first
`slot for a first data packet
`of an Internet Protocol (IP)
`flow
`in
`a
`future
`transmission frame based
`on said algorithm
`
`downlink
`Structure:
`scheduler 1566 or uplink
`scheduler
`1666
`implementing an algorithm
`for assigning a first future
`slot that is at least one
`frame in the future from the
`current frame based on the
`determination
`by
`the
`reservation algorithm of the
`latency-
`and
`jitter-
`sensitivity of the flows.
`
`a
`reserving
`for
`“means
`second slot for a second data
`packet of said IP flow in a
`transmission
`frame
`subsequent in time to said
`future
`transmission
`frame
`based on said algorithm”
`
`Means-plus-function
`limitation under § 112 ¶ 6.
`a
`Function:
`reserving
`second slot for a second
`data packet of said IP flow
`in a
`transmission
`frame
`subsequent in time to said
`future transmission frame
`based on said algorithm”
`Structure:
`downlink
`scheduler 1566 or uplink
`scheduler
`1666
`implementing an algorithm
`
`‘971 Patent,
`Claim 12
`
` None
`
`4
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`second
`for assigning a
`future slot in a frame that is
`at least two frames in the
`future
`from
`the current
`frame
`based
`on
`the
`determination
`by
`the
`reservation algorithm of the
`latency-
`and
`jitter-
`sensitivity of the flows.
`
`into
`taking
`for
`“means
`level
`service
`account
`based
`agreement
`(SLA)
`priorities for said IP flow”
`
`Means-plus-function
`limitation under § 112 ¶ 6.
`Function:
`taking
`into
`account
`service
`level
`agreement
`(SLA) based
`priorities for said IP flow
`Structure:
`
`downlink
`scheduler
`604/1566
`or
`uplink scheduler 634/1666
`implementing an algorithm
`that increases or decreases
`queuing priority of an IP
`flow based on the service
`level agreement of the user
`associated with the IP flow
`
`“unlink direction”
`
`“uplink direction”
`
`“the analyzed contents”
`
`“analyzed contents of the
`packets to be communicated
`over the shared wireless
`bandwidth in the downlink
`direction”
`
`Claim(s)
`
`Extrinsic Evidence
`
`‘971 Patent,
`Claim 18
`
` None
`
`’517 Patent,
`Claim 1
`
` None
`
`‘517 Patent,
`Claim 1
`
` None
`
`5
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`analyzed
`“the
`contents”
`
`packet
`
`‘517 Patent,
`Claim 12
`
` None
`
`“analyzed contents of the
`packets to be communicated
`over the shared wireless
`bandwidth in the downlink
`direction”
`
`premises
`“customer
`equipment (CPE) station(s)”
`
`the
`“station residing on
`premises of a customer and
`used
`to
`connect
`to a
`telephone network”
`
`shared
`the
`“allocating
`wireless bandwidth between
`the wireless base
`station
`transmitting in the downlink
`direction and the at least one
`CPE station transmitting in
`the uplink direction”
`
`shared
`the
` “allocating
`wireless bandwidth between
`(1) the wireless base station
`transmitting
`in
`the
`downlink direction and (2)
`the at least one CPE station
`transmitting in the uplink
`direction”
`
`“allocate wireless bandwidth
`between the uplink direction
`and the downlink direction
`responsive to the analyzed
`packet
`contents
`and
`the
`analyzed
`reservation
`requests”
`
`wireless
` “allocate
`bandwidth between (1) the
`
` U.S. Ser. No. 09/350159, Amendment dated
`Mar. 4, 2003, at 19.
`
`‘517 Patent,
`Claims
`1,
`12
`‘206 Patent,
`Claims
`1,
`112, 114
`
`‘517 Patent,
`Claim 1
`
` None
`
`‘517 Patent,
`Claim 12
`
` None
`
`6
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim(s)
`
`Extrinsic Evidence
`
`Claim Term / Proposed
`Construction
`uplink direction and (2) the
`downlink
`direction
`responsive to the analyzed
`packet contents and
`the
`analyzed
`reservation
`requests”
`
`“so as to optimize end-user
`quality of
`service
`(QoS)
`associated with said IP flow”
`
`‘206 Patent,
`Claim 1
`
`Indefinite.
`
`“so as to optimize end-user
`internet protocol (IP) quality
`of service (QoS)”
`
`‘206 Patent,
`Claim 19
`
`Indefinite.
`
` U.S. Pat. No. 6,640,248 as cited in the parties’
`prior Markman briefing regarding the
`“optimize” term of the ‘248 Patent’s Claim 20.
` Expert Testimony of Dr. Izhak Rubin, who will
`testify, if necessary, that these claims have the
`same indefiniteness issue as Claim 20 of the
`‘248 Patent—in particular, the specification
`“provides no objective boundaries” and leaves
`the standard for measuring optimization
`“completely unbounded.”
` Prior Declarations of Dr. Rubin regarding ‘248
`Patent indefiniteness (addressing the same
`indefiniteness issue with respect to the ‘248
`Patent), filed in Ca. No. 13:cv-1670 (Dkt. No.
`210-6 – 210-7 Ex. A5-A6) (D. Del.)
` Memorandum Opinion dated August 12, 2016,
`Ca. No. 13:cv-1670, at pp. 19-21 (Dkt. No.
`376) (D. Del.) (“Based on the intrinsic and
`extrinsic evidence, the Court is persuaded, by
`clear and convincing evidence, that the term
`‘optimize,’ as it is used in the ‘248 Patent is
`indefinite.”).
` Prosecution history of related U.S. Patent
`6,682,622, including but not limited to, Appeal
`Brief dated Jan. 6, 2003.
`
` U.S. Pat. No. 6,640,248 as cited in the parties’
`prior Markman briefing regarding the
`“optimize” term of the ‘248 Patent’s Claim 20.
` Expert Testimony of Dr. Izhak Rubin, who will
`testify, if necessary, that these claims have the
`same indefiniteness issue as Claim 20 of the
`‘248 Patent—in particular, the specification
`“provides no objective boundaries” and leaves
`the standard for measuring optimization
`“completely unbounded.”
` Prior Declarations of Dr. Rubin regarding ‘248
`
`7
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`Patent indefiniteness (addressing the same
`indefiniteness issue with respect to the ‘248
`Patent), filed in Ca. No. 13:cv-1670 (Dkt. No.
`210-6–210-7 Ex. A5-A6) (D. Del.)
` Memorandum Opinion dated August 12, 2016,
`Ca. No. 13:cv-1670, at pp. 19-21 (Dkt. No.
`376) (D. Del.) (“Based on the intrinsic and
`extrinsic evidence, the Court is persuaded, by
`clear and convincing evidence, that the term
`‘optimize,’ as it is used in the ‘248 Patent is
`indefinite.”).
` Prosecution history of related U.S. Patent
`6,682,622, including but not limited to, Appeal
`Brief dated Jan. 6, 2003.
`
`“said plurality of packets”
`
`‘206 Patent,
`Claim 109
`
` None
`
`“the plurality of packets”
`that are communicated over
`a
`shared
`wireless
`bandwidth are the same
`plurality of packets that are
`classified
`
`“to optimize end-user quality
`of service
`(QoS)
`for an
`Internet Protocol (IP) flow”
`
`‘206 Patent,
`Claim 121
`
`Indefinite.
`
` U.S. Pat. No. 6,640,248 as cited in the parties’
`prior Markman briefing regarding the
`“optimize” term of the ‘248 Patent’s Claim 20.
` Expert Testimony of Dr. Izhak Rubin, who will
`testify, if necessary, that these claims have the
`same indefiniteness issue as Claim 20 of the
`‘248 Patent—in particular, the specification
`“provides no objective boundaries” and leaves
`the standard for measuring optimization
`“completely unbounded.”
` Prior Declarations of Dr. Rubin regarding ‘248
`Patent indefiniteness (addressing the same
`indefiniteness issue with respect to the ‘248
`Patent), filed in Ca. No. 13:cv-1670 (Dkt. No.
`210-6 – 210-7 Ex. A5-A6) (D. Del.)
` Memorandum Opinion dated August 12, 2016,
`Ca. No. 13:cv-1670, at pp. 19-21 (Dkt. No.
`376) (D. Del.) (“Based on the intrinsic and
`extrinsic evidence, the Court is persuaded, by
`clear and convincing evidence, that the term
`‘optimize,’ as it is used in the ‘248 Patent is
`
`8
`
`

`

`EXHIBIT A
`DEFENDANTS’ PATENT RULE 4-2 LIST OF PROPOSED TERMS AND CLAIM
`ELEMENTS WITH PROPOSED CONSTRUCTIONS AND EXTRINSIC EVIDENCE
`
`Claim Term / Proposed
`Construction
`
`Claim(s)
`
`Extrinsic Evidence
`
`indefinite.”).
` Prosecution history of related U.S. Patent
`6,682,622, including but not limited to, Appeal
`Brief dated Jan. 6, 2003.
`
`9
`
`