United States District Court, E.D. Texas, Marshall Division
NOKIA SOLUTIONS AND NETWORKS U.S. LLC and NOKIA SOLUTIONS AND NETWORKS OY, Plaintiffs,
HUAWEI TECHNOLOGIES CO. LTD. and HUAWEI DEVICE USA, INC. Defendants.
CLAIM CONSTRUCTION MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE
3, 2017, the Court held an oral hearing to determine the
proper construction of the disputed claim terms in U.S.
Patent Nos. 8, 249, 022 (the “'022 Patent”)
and 8, 451, 787 (the “'787 Patent”)
(collectively the “Asserted Patents”). The Court
has considered the parties' claim construction briefing
(Dkt. Nos. 67, 70, and 71) and arguments. Based on the
intrinsic and extrinsic evidence, the Court construes the
disputed terms in this Memorandum Opinion and Order. See
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005);
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831
Nokia Solutions and Networks U.S. LLC and Nokia Solutions and
Networks OY (collectively “Nokia”) assert the
Asserted Patents against Defendants Huawei Technologies Co.
LTD. and Huawei Device USA, Inc., (collectively
'022 Patent relates to communications in a cellular
network. The Abstract of the '022 Patent recites:
A user equipment (UE) receives a first dynamic resource
allocation on a first channel (PDCCH), then sends data
according to the first resource allocation. During a time at
which an ACK/NACK for the sent data is scheduled to occur on
a second channel (PHICH), the UE is engaging in an activity
that takes priority over the ACK/NACK. The UE then receives a
second dynamic resource allocation on the first channel and
determines the ACK/NACK for the sent data from the second
dynamic resource allocation. The determining can be direct,
as in receiving a zero-valued resource allocation; or it may
be indirect as in mapping the second dynamic resource
allocation to the second channel and receiving the
acknowledgement on the second channel after that mapping.
Also detailed are similar mirror actions from the Node
B's perspective, as well as apparatus, methods, and
embodied computer programs.
'022 Patent Abstract. More particularly, the '022
Patent describes the use of hybrid automatic repeat requests
(H-ARQ) acknowledgements (ACK) and negative acknowledgements
(NACK). Id. at 1:5-52. A problem with the use of
H-ARQ ACK/NACK signaling is that the H-ARQ ACK/NACK signals
may occur in a time period when a UE is engaged in activity
that is a higher priority than the H-ARQ signals.
Id. at 2:5-45. The '022 Patent provides a
technique in which a UE receives first dynamic resource
allocation on a physical downlink control channel (PDCCH) and
sends data according to the first resource allocation.
Id. at 2:64-67, Figure 3 Blocks 302 and 304. During
a time at which a H-ARQ acknowledgement or negative
acknowledgement is scheduled to occur on a physical H-ARQ
indicator channel (PHICH), the UE engages in a priority
activity that takes priority over the H-ARQ acknowledgement
or negative acknowledgement. Id. at 2:67-3:4, Figure
3 Block 306. The UE receives a second dynamic resource
allocation on the PDCCH and determines the H-ARQ
acknowledgement or negative acknowledgement for the sent data
from the second dynamic resource allocation. Id. at
3:4-8, Figure 3 Blocks 310 and 314.
'787 Patent relates to communications in a cellular
network. The Abstract of the '787 Patent recites:
A set of specific sequences including a set of root sequences
and cyclic shifts thereof is searched, wherein it is started
from a root sequence index indicating a root sequence of
ordered root sequences, available cyclic shifts of the root
sequence are included, and it is continued with a next root
sequence if necessary for filling the set, interpreting the
ordered root sequences in a cyclic manner.
'787 Patent Abstract. More particularly, the '787
Patent describes the allocation of preamble sequences that
are used to identify a UE. The '787 Patent describes a
standard in which 64 preamble sequences are utilized in each
cell. The preamble sequences may be obtained by using 838
root sequences. A root sequence may be used to generate
multiple preamble sequences by using cyclic shift techniques
to generate multiple sequences by shifting data. Id.
at 1:14-47. A UE generates the 64 sequences from a known
sequence ordering scheme. See id. Root sequences are
ordered, and cyclic shifts for the root sequences are
provided. Id. “In order to minimize system
information, only a root sequence index u0 and a cyclic shift
increment Ncs and a mobility parameter are broadcasted for
UEs of a cell.” Id. at 1:26-29. “The UEs
form a complete set of 64 sequences by determining available
cyclic shifts of the sequence u0 and continuing from the
consecutive root sequences until the 64 sequences are
collected.” Id. at 1:29-32.
is a ‘bedrock principle' of patent law that
‘the claims of a patent define the invention to which
the patentee is entitled the right to exclude.'”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)). To determine the meaning of the claims,
courts start by considering the intrinsic evidence.
Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl.
Network Servs., Inc. v. Covad Commc'ns Group, Inc.,
262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence
includes the claims themselves, the specification, and the
prosecution history. Phillips, 415 F.3d at 1314;
C.R. Bard, Inc., 388 F.3d at 861. The general
rule-subject to certain specific exceptions discussed
infra-is that each claim term is construed according
to its ordinary and accustomed meaning as understood by one
of ordinary skill in the art at the time of the invention in
the context of the patent. Phillips, 415 F.3d at
1312-13; Alloc, Inc. v. Int'l Trade Comm'n,
342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC
v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014)
(“There is a heavy presumption that claim terms carry
their accustomed meaning in the relevant community at the
relevant time.”) (vacated on other grounds).
claim construction inquiry. . . begins and ends in all cases
with the actual words of the claim.” Renishaw PLC
v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998). “[I]n all aspects of claim
construction, ‘the name of the game is the
claim.'” Apple Inc. v. Motorola, Inc., 757
F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)). A term's
context in the asserted claim can be instructive.
Phillips, 415 F.3d at 1314. Other asserted or
unasserted claims can also aid in determining the claim's
meaning, because claim terms are typically used consistently
throughout the patent. Id. Differences among the
claim terms can also assist in understanding a term's
meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed
that the independent claim does not include the limitation.
Id. at 1314-15.
‘must be read in view of the specification, of which
they are a part.'” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967,
979 (Fed. Cir. 1995) (en banc)). “[T]he specification
‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.'”
Id. (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996));
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough
the specification may aid the court in interpreting the
meaning of disputed claim language, particular embodiments
and examples appearing in the specification will not
generally be read into the claims.'” Comark
Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988)); see also Phillips, 415 F.3d at 1323.
“[I]t is improper to read limitations from a preferred
embodiment described in the specification-even if it is the
only embodiment-into the claims absent a clear indication in
the intrinsic record that the patentee intended the claims to
be so limited.” Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
prosecution history is another tool to supply the proper
context for claim construction because, like the
specification, the prosecution history provides evidence of
how the U.S. Patent and Trademark Office (“PTO”)
and the inventor understood the patent. Phillips,
415 F.3d at 1317. However, “because the prosecution
history represents an ongoing negotiation between the PTO and
the applicant, rather than the final product of that
negotiation, it often lacks the clarity of the specification
and thus is less useful for claim construction
purposes.” Id. at 1318; see also Athletic
Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580
(Fed. Cir. 1996) (ambiguous prosecution history may be
“unhelpful as an interpretive resource”).
extrinsic evidence can also be useful, it is
“‘less significant than the intrinsic record in
determining the legally operative meaning of claim
language.'” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862).
Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which
one skilled in the art might use claim terms, but technical
dictionaries and treatises may provide definitions that are
too broad or may not be indicative of how the term is used in
the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology
and determining the particular meaning of a term in the
pertinent field, but an expert's conclusory, unsupported
assertions as to a term's definition are entirely
unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its
prosecution history in determining how to read claim
terms.” Id. The Supreme Court recently
explained the role of extrinsic evidence in claim
In some cases, however, the district court will need to look
beyond the patent's intrinsic evidence and to consult
extrinsic evidence in order to understand, for example, the
background science or the meaning of a term in the relevant
art during the relevant time period. See, e.g., Seymour
v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be
“so interspersed with technical terms and terms of art
that the testimony of scientific witnesses is indispensable
to a correct understanding of its meaning”). In cases
where those subsidiary facts are in dispute, courts will need
to make subsidiary factual findings about that extrinsic
evidence. These are the “evidentiary
underpinnings” of claim construction that we discussed
in Markman, and this subsidiary fact finding must be
reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct.
831, 841 (2015).
Departing from the Ordinary Meaning of a Claim Term
are “only two exceptions to [the] general rule”
that claim terms are construed according to their plain and
ordinary meaning: “1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of the claim term either in
the specification or during prosecution.” Golden Bridge Tech.,
Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014)
(quoting Thorner v. Sony Computer Entm't Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also
GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
1304, 1309 (Fed. Cir. 2014) (“[T]he specification and
prosecution history only compel departure from the plain
meaning in two instances: lexicography and
disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting
Solutions, 750 F.3d at 1309.
as his own lexicographer, the patentee must “clearly
set forth a definition of the disputed claim term, ”
and “clearly express an intent to define the
term.” Id. (quoting Thorner, 669 F.3d
at 1365); see also Renishaw, 158 F.3d at 1249. The
patentee's lexicography must appear “with
reasonable clarity, deliberateness, and precision.”
Renishaw, 158 F.3d at 1249.
disavow or disclaim the full scope of a claim term, the
patentee's statements in the specification or prosecution
history must amount to a “clear and unmistakable”
surrender. Cordis Corp. v. Boston Sci. Corp., 561
F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner,
669 F.3d at 1366 (“The patentee may demonstrate intent
to deviate from the ordinary and accustomed meaning of a
claim term by including in the specification expressions of
manifest exclusion or restriction, representing a clear
disavowal of claim scope.”). “Where an
applicant's statements are amenable to multiple
reasonable interpretations, they cannot be deemed clear and
unmistakable.” 3M Innovative Props. Co. v. Tredegar
Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
Functional Claiming and 35 U.S.C. § 112, ¶ 6
(pre-AIA) / § 112(f) (AIA)
patent claim may be expressed using functional language.
See 35 U.S.C. § 112, ¶ 6; Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1347-49 & n.3
(Fed. Cir. 2015) (en banc in relevant portion). Section 112,
Paragraph 6, provides that a structure may be claimed as a
“means . . . for performing a specified function”
and that an act may be claimed as a “step for
performing a specified function.” Masco Corp. v.
United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
§ 112, ¶ 6 does not apply to all functional claim
language. There is a rebuttable presumption that § 112,
¶ 6 applies when the claim language includes
“means” or “step for” terms, and that
it does not apply in the absence of those terms. Masco
Corp., 303 F.3d at 1326; Williamson, 792 F.3d
at 1348. The presumption stands or falls according to whether
one of ordinary skill in the art would understand the claim
with the functional language, in the context of the entire
specification, to denote sufficiently definite structure or
acts for performing the function. See Media Rights
Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366,
1372 (Fed. Cir. 2015) (§ 112, ¶ 6 does not apply
when “the claim language, read in light of the
specification, recites sufficiently definite structure”
(quotation marks omitted) (citing Williamson, 792
F.3d at 1349; Robert Bosch, LLC v. Snap-On Inc., 769 F.3d
1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
at 1349 (§ 112, ¶ 6 does not apply when “the
words of the claim are understood by persons of ordinary
skill in the art to have sufficiently definite meaning as the
name for structure”); Masco Corp., 303 F.3d at
1326 (§ 112, ¶ 6 does not apply when the claim
includes an “act” corresponding to “how the
function is performed”); Personalized Media
Communications, L.L.C. v. International Trade
Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§
112, ¶ 6 does not apply when the claim includes
“sufficient structure, material, or acts within the
claim itself to perform entirely the recited function . . .
even if the claim uses the term ‘means.'”
(quotation marks and citation omitted)).
applies, § 112, ¶ 6 limits the scope of the
functional term “to only the structure, materials, or
acts described in the specification as corresponding to the
claimed function and equivalents thereof.”
Williamson, 792 F.3d at 1347. Construing a
means-plus-function limitation involves multiple steps.
“The first step . . . is a determination of the
function of the means-plus-function limitation.”
Medtronic, Inc. v. Advanced Cardiovascular Sys.,
Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). “[T]he
next step is to determine the corresponding structure
disclosed in the specification and equivalents
thereof.” Id. A “structure disclosed in
the specification is ‘corresponding' structure only
if the specification or prosecution history clearly links or
associates that structure to the function recited in the
claim.” Id. The focus of the
“corresponding structure” inquiry is not merely
whether a structure is capable of performing the recited
function, but rather whether the corresponding structure is
“clearly linked or associated with the [recited]
function.” Id. The corresponding structure
“must include all structure that actually performs the
recited function.” Default Proof Credit Card Sys.
v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
Cir. 2005). However, § 112 does not permit
“incorporation of structure from the written
description beyond that necessary to perform the claimed
function.” Micro Chem., Inc. v. Great Plains Chem.
Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
§ 112, ¶ 6 limitations implemented by a programmed
general purpose computer or microprocessor, the corresponding
structure described in the patent specification must include
an algorithm for performing the function. WMS Gaming Inc.
v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999). The corresponding structure is not a general purpose
computer but rather the special purpose computer programmed
to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008).
Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) /
§ 112(b) (AIA)
claims must particularly point out and distinctly claim the
subject matter regarded as the invention. 35 U.S.C. §
112, ¶ 2. A claim, when viewed in light of the intrinsic
evidence, must “inform those skilled in the art about
the scope of the invention with reasonable certainty.”
Nautilus Inc. v. Biosig Instruments, Inc., 134 S.Ct.
2120, 2129 (2014). If it does not, the claim fails §
112, ¶ 2 and is therefore invalid as indefinite.
Id. at 2124. Whether a claim is indefinite is
determined from the perspective of one of ordinary skill in
the art as of the time the application for the patent was
filed. Id. at 2130. As it is a challenge to the
validity of a patent, the failure of any claim in suit to
comply with § 112 must be shown by clear and convincing
evidence. Id. at 2130 n.10. “[I]ndefiniteness
is a question of law and in effect part of claim
construction.” ePlus, Inc. v. Lawson Software,
Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
term of degree is used in a claim, “the court must
determine whether the patent provides some standard for
measuring that degree.” Biosig Instruments, Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015)
(quotation marks omitted). Likewise, when a subjective term
is used in a claim, “the court must determine whether
the patent's specification supplies some standard for
measuring the scope of the [term].” Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed.
Cir. 2005); accord Interval Licensing LLC v. AOL,
Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (citing
Datamize, 417 F.3d at 1351).
context of a claim governed by 35 U.S.C. § 112, ¶
6, the claim is invalid as indefinite if the claim fails to
disclose adequate corresponding structure to perform the
claimed functions. Williamson, 792 F.3d at 1351-52.
The disclosure is inadequate when one of ordinary skill in
the art “would be unable to recognize the structure in
the specification and associate it with the corresponding
function in the claim.” Id. at 1352.
parties agreed to the following terms prior to the oral
“transmit means configured to send to the
network node data according to the first resource
('022 Patent Claim 20)
sending to the network node data according to the
first resource allocation
transmitter, transceiver, or other equivalents
“receiver means configured to receive a first
dynamic resource allocation on a first channel from
a network node”
“receiver means further configured to receive
a second dynamic resource allocation on the first
('022 Patent Claim 20)
Function: receiving a first dynamic resource
allocation on a first channel from a network node
receiving a second dynamic resource allocation on
the first channel
Structure: receiver, transceiver, or other
“mapping the received second dynamic resource
allocation to the second channel using a received
offset of the second index sequence” /
“mapping the received second dynamic resource
allocation to the second channel using an offset of
the second index sequence”
('022 Patent Claims 6, 17)
Plain and ordinary meaning
“interpreting the ordered root sequences in a
('787 Patent Claim 1)
Plain and ordinary meaning
“[search/searching] a set of specific
('787 Patent Claim 1)
Plain and ordinary meaning
(Dkt. No. 72-1 at 1-2, 12-15.)
“computer readable memory” ('022 Patent
Claims 9, 10, 11)
Nokia's Proposed Construction
Huawei's Proposed Construction
“non-transitory computer readable