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Nokia Solutions and Networks U.S. LLC v. Huawei Technologies Co. Ltd.

United States District Court, E.D. Texas, Marshall Division

May 24, 2017

NOKIA SOLUTIONS AND NETWORKS U.S. LLC and NOKIA SOLUTIONS AND NETWORKS OY, Plaintiffs,
v.
HUAWEI TECHNOLOGIES CO. LTD. and HUAWEI DEVICE USA, INC. Defendants.

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER

          ROY S. PAYNE, UNITED STATES MAGISTRATE JUDGE

         On May 3, 2017, the Court held an oral hearing to determine the proper construction of the disputed claim terms in U.S. Patent Nos. 8, 121, 082 (the “'082 Patent”) and 8, 165, 035 (the “'035 Patent”) (collectively the “Asserted Patents”). The Court has considered the parties' claim construction briefing (Dkt. Nos. 68, 71, and 72) 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 (2015).

         BACKGROUND

         Plaintiffs 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 “Huawei”).

         The '082 Patent relates to communications in a cellular network. The Abstract of the '082 Patent recites:

A method for signaling between a mobile apparatus (10) and a network node (12) is described. The method includes generating a message that includes a scheduling request. Determining whether a second indication (e.g., an acknowledgment) is to be transmitted in a sub-frame with the first indication is also included. The method includes, in response to a determination that the second indication is not to be included, the message is configured in a first configuration and, in response to a determination that the second indication is to be included, the message also includes the second indication and the message is configured in a second configuration. The first configuration is distinct from the second configuration. The method also includes sending the message, via a wireless transmitter, in the sub-frame. Apparatus and computer-readable media are also described.

'082 Patent Abstract. Scheduling requests are provided so that user equipment may request resources from a base station. More particularly, the '082 Patent describes a process for transmitting scheduling requests (SR), acknowledgements (ACK), and negative acknowledgements (NACK). Specifically, the '082 Patent references a desire in the 3GPP cellular standard to provide the simultaneous transmission of SR, ACK and NACK signals. Id. at 2:55-57. The technique disclosed relates to techniques for including in a message just SR information, combining SR and ACK information in sub-frame or combining SR and NACK information in sub-frame. Id. at 4:10-42. Constellation point techniques may be used to map the information that is sent. Id. at 7:22-35, Figures 2-6, 8.

         The '035 Patent relates to communications in a cellular network. The Abstract of the '035 Patent recites:

In a first aspect of the invention there is a method, apparatus, and executable software product for receiving scheduling information, determining that at least one downlink allocation of the scheduling information was not received, sending a reply to the received scheduling that comprises an indication of discontinuous transmission in response to the determining. In another aspect of the invention there is a method an apparatus to send scheduling information, and receive a reply to the scheduling information comprising an indication of discontinuous transmission that at least one downlink allocation of the scheduling information was not received. '035 Patent Abstract. The '035 Patent relates to transmissions of ACK, NACK and discontinuous transmission (DTX) signals. More particularly, the '035 Patent describes using DTX detection. A node in the system may receive scheduling information and determine that at least one downlink allocation of the scheduling information was not received. A reply is sent to the received scheduling information indicating a discontinuous transmission situation. Id. at 3:60-4:8.

         LEGAL PRINCIPLES

         “It 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).

         “The 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.

         “[C]laims ‘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).

         The 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”).

         Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record in determining the legally operative meaning of claim language.'” Phillips, 415 F.3d at 1317 (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 construction:

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).

         A. Departing from the Ordinary Meaning of a Claim Term

         There 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.”[1] 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.

         To act 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.

         To 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).

         B. Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA)[2]

         A 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).

         But § 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)).

         When it 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).

         For § 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).

         C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)[3]

         Patent 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).

         When a 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).

         In the 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.

         AGREED TERMS

         The parties agreed to the following terms:

Term

Agreed Construction

“An indication of discontinuous transmission” ('035 Patent Claims 1, 12, 22, and 23)

“an explicit or implicit indication of discontinuous transmission”

“means for receiving scheduling information”

('035 Patent Claim 23)

Function: receiving scheduling information

Structure: receiver, transceiver, or other equivalents thereof

(Dkt. No. 76-1 at 17, 26)

         DISPUTED TERMS

         1. “message generation means for generating a message comprising a scheduling request, ” “message generation means is further for: configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included, and configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration, ” “the message generation means is further for configuring the message in a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included” (‘082 Patent Claim 10)

Nokia's Proposed Construction

Huawei's Proposed Construction

Function: (Agreed)

generating a message comprising a scheduling request

and

configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included

and

configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration

and

configuring the message in a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included

Function: (Agreed)

generating a message comprising a scheduling request

and

configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included

and

configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration

and

configuring the message in a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included

Structure:

message generation means (10F) such as processor, memory, and/or associated software for mapping the constellation points shown in Figs. 3, 4, 5, 6, or 12, or the constellation points described in the corresponding text, e.g., 7:39- 8:59, 9:52-61, and equivalents thereof

Structure:

The specification fails to set forth any algorithm for the function claimed in this software limitation. Claim is indefinite.

         Huawei contends that, at most, the patent discloses an algorithm for only a portion of the function, not the full function.

         Positions of the Parties

         Nokia contends that the “message generation means” generates a message comprising a scheduling request (SR) and then configures the message in (i) a first configuration (when there is only SR) (ii) a second configuration (when there is SR with ACK), and (iii) a third configuration (when there is SR with NACK). Nokia points to Figures 3, 4, 5, 6, and 12 as providing a mapping of constellations to configure the message in one of these three configurations. (Dkt. No. 68 at 5-6.) Nokia contends that as for the first function, for which Huawei alleges an algorithm is absent, each of the three configurations discussed above and their disclosed constellation points are messages comprising an SR. (Dkt. No. 72 at 2.) Nokia contends that the constellation figures and the flow chart of Figure 8 provide an algorithm.

         Nokia contends that the specification shows how these constellation points are used. Specifically, Nokia states that in order to generate and configure a message with SR, the specification provides that “the UE transmits the ACK/NACK information using a SR resource with the modulation constellation shown in either Figure 3 or 5 for mapping a 1-bit ACK/NACK indication, or the modulation shown in either Figure 4 or Figure 6 or Figure 12 for mapping a 2bit ACK/NACK indication.” '082 Patent Figure 8, Block 8B. Nokia contends that Figure 8 and the constellation mappings shown in Figures 3-6, along with the corresponding text, provide the algorithm for generating and configuring the message. Nokia points to Figure 3 which shows a “constellation mapping of 1-bit ACK/NACK.” (Dkt. No. 68 at 6 (citing '082 Patent 5:19-20, Figure 3.)

         (IMAGE OMITTED)

         Nokia contends that in this one-bit mapping, several of the claimed functions are disclosed. First, with regard to “generating a message comprising a scheduling request and configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included, ” Nokia contends the circle in Figure 3 represents SR without ACK/NACK (Dkt. No. 68 at 7 (citing '082 Patent 7:54-56).) Second, with regard to “configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration, ” Nokia contends that the triangle in Figure 3 shows the configuration for sending SR and ACK (Id. (citing '082 Patent 9:54-61).) Third, with regard to “a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included, ” Nokia contends the filled-in circle shows transmitting SR and NACK. (Id. (citing '082 Patent 9:54-61).) Nokia contends Figures 4, 5, 6, and 12 similarly provide alternative constellation mappings.

         Nokia also contends that the flowchart in Figure 8 describes transmitting information “using the SR resource” when SR=1 '082 Patent Figure 8, Block 8B. Nokia contends that a person of skill in the art would know that (1) SR=1 refers to a “positive SR” transmission where the UE desires to generate and transmit an SR (id. at 7:41-42) and (2) SR=0 refers to a “negative SR” which indicates that the UE does not desire to transmit a SR (id.). (Dkt. No. 72 at 2.) Nokia contends that when SR=1, e.g., in case of positive SR transmission, SR may be transmitted through on/off keying on the SR resource (Id. (citing '082 Patent 2:62-64 and Dkt. No. 72-1 (Thompson Decl.) at ¶ 22).) Nokia contends that by choosing positive SR transmission on the SR channel, the UE is “generating a message comprising a scheduling request.” (Id. at 2.)

         Huawei contends that Nokia ties disclosure in the patent to some of the recited functions but not all of the functions. (Dkt. No. 71 at 5-6.) First, Huawei objects that Nokia fuses the first two functions together “generating a message comprising a scheduling request” and “configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included”-into a new single function. Huawei contends that Nokia merely points to the constellation point, but that patent does not disclose an algorithm for “generating a message comprising a scheduling request.” (Id. at 6.) Huawei contends that “a point on a constellation chart” says nothing about a “message, ” much less how to “generate” or “configure” that message. (Id.)

         Second, Huawei contends that Nokia does not disclose an algorithm for the function “configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration.” Specifically, Huawei contends that Nokia points to nothing that would correspond to “a determination that the acknowledgement is to be included, ” and Huawei states that the patent discloses no such determination. (Dkt. No. 71 at 7 (citing Dkt. No. 71-1 (Laneman Dec.) at ¶ 26).) Huawei contends that the same is true for “a determination that the acknowledgement is not to be included” and “a determination that the negative acknowledgement is to be included” in the next two functions. (Id.)

         Third, Huawei contends that the chart of constellation points is merely an outcome, not an algorithm. (Id. (citing Cloud Farm Assocs. LP v. Volkswagen Grp. of Am., Inc., No. 2016-1448, 2017 WL 74768, at *7 (Fed. Cir. Jan. 9, 2017) (“Instead of offering the algorithm itself, this table merely offers the output of the algorithm. Nowhere in the patent offers a step-by-step procedure of how to arrive at the outputs disclosed in the table. In other words, the patent offers the ends but not the means, which is not sufficient for structure.”)).)

         As to the flowchart of Figure 8, Huawei contends that flowchart is backwards from the claimed function and thus does not provide an algorithm for the claimed function. Specifically, Huawei contends that the flowchart presumes “ACK/NACK information” is being sent, and performs different steps depending on whether a scheduling request is to be sent. (Id. at 8.) Huawei contends that, in the claims, the scheduling request is presumed, and different steps are performed depending on whether ACK/NACK information is to be sent at all, and if so what kind. (Id.)

         The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No. 84 at 25.)

         Analysis

         Huawei raises two primary arguments as to why differing portions of the function are not supported with corresponding algorithms. The Court finds that Nokia presents the more persuasive arguments as to the presence of algorithms for the functions as claimed.

         First, Huawei contends that no algorithm exists for “generating a message comprising a scheduling request.” However, the patent is replete with discussion of creating a message by using data from a constellation mapping scheme in which SR information is represented as part of the constellation map. This is clearly an algorithm for generating the claimed message. The claimed message is created by embedding SR information in the constellation mapping in the message. '082 Patent Figs. 3, 4, 5, 6, 8 and 12, 7:39- 8:59, 9:52-61. This provides an algorithm for the contested portion of the function. See Finisar Corp. v. DirecTV GroupInc., 523 F.3d 1323, 1340 (Fed. Circ. 2008) (“This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.”) (internal citation omitted); Chicago Board Options Exchange, Inc. v. International Securities Exchange, LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014) (“We must also remember that ‘a challenge to a claim containing a means-plus-function limitation as lacking structural support requires a finding, by clear and convincing evidence, that the specification lacks disclosure of structure sufficient to be understood by one skilled in the art as being adequate to perform the recited function.'") (citation omitted)).

         Second, Huawei contends that no algorithm is provided regarding how to make a determination that an ACK or NACK state exists. Huawei is seeking, however, specific algorithms that go beyond the claimed function of this term. The function in question is “configuring…in response to a determination that the [ACK/NACK] is [not] to be included.” The required algorithm relates to how to configure the message in response to a determination.[4] Again, the specification clearly indicates an algorithm for how to configure the message in response to a determination. Specifically, as shown in the specification, there are various techniques to use various constellation mapping techniques to further include with the SR information additional ACK / NACK information in the constellation map, be it a one bit map or a two bit map. '082 Patent Figs. 3, 4, 5, 6, 8 and 12, 7:39- 8:59, 9:52-61.

         The Court construes “message generation means for generating a message comprising a scheduling request, ” “message generation means is further for: configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included, and configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration, ” and “the message generation means is further for configuring the message in a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included” to mean:

Function:
generating a message comprising a scheduling request and configuring the message in a first configuration in response to a determination that the acknowledgement is not to be included and configuring the message in a second configuration comprising the acknowledgement in response to a determination that the acknowledgement is to be included, where the first configuration is distinct from the second configuration and configuring the message in a third configuration comprising the negative-acknowledgement in response to a determination that the negative-acknowledgement is to be included
Structure:
message generation means (10F) such as processor, memory, and/or associated software for mapping the constellation points shown in Figs. 3, 4, 5, 6, or 12, or the constellation points described in the corresponding text, e.g., 7:39- 8:59, 9:52-61, and equivalents thereof.

         2. “first determining means for determining whether an acknowledgement is to be transmitted in a same sub-frame as the message” “second determining means for determining whether a negative-acknowledgement is to be transmitted in the same sub-frame as the message” ('082 Patent Claim 10)

Nokia's Proposed Construction

Huawei's Proposed Construction

Function: (Agreed)

determining whether an acknowledgement [negative-acknowledgement] is to be transmitted in a same sub-frame as the message

Structure:

first [second] determining means (10E) such as processor, memory, and/or associated software for performing the algorithm shown in Fig. 8 and corresponding text, e.g., 9:52-61, and equivalents thereof

Function: (Agreed)

determining whether an acknowledgement [negative-acknowledgement] is to be transmitted in a same sub-frame as the message

Structure:

The specification fails to set forth any algorithm for the function claimed in this software limitation. Claim is indefinite.

         Huawei contends that the claim is indefinite for not disclosing an algorithm for the structure.

         Positions of the Parties

         Nokia contends that the function of the “first/second determining means” is to determine whether the ACK or NACK is to be transmitted with SR. Nokia contends that the algorithm is disclosed in the passage:

With SR=0 (e.g., in the case of negative SR transmission), the UE 10 transmits the ACK/NACK information using the ACK/NACK resources, with SR=1 (e.g., in the case of positive SR transmission), the UE 10 transmits the ACK/NACK information using the SR resources.

'082 Patent 7:39-43. Nokia contends that this describes that when SR and ACK need to be transmitted simultaneously, ACK is transmitted using SR resources. Similarly, when SR and NACK need to be transmitted simultaneously, NACK is transmitted using SR resources. (Dkt. No. 68 at 9.) Nokia contends that this corresponds to Blocks 8A and 8B of the flowchart of Figure 8. (Id.)

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         Nokia contends that this teaches an algorithm in which the (1) “first determining means” determines whether an ACK is to be transmitted in the same sub-frame as the message by determining whether there is also a SR to be sent and (2) the “second determining means” determines whether a NACK is to be transmitted in the same sub-frame as the message by determining whether there is also a SR to be sent. (Dkt. No. 68 at 9-10.)

         Finally, Nokia contends that “determining whether an ACK or NACK is to be transmitted in the same sub-frame as the message” is described in the patent in the passages: “the acknowledgement indicates that a downlink resource allocation grant has succeeded and that each of at least one corresponding codeword has been detected correctly” ('082 Patent 12:25-29) and “the negative-acknowledgement indicates that a downlink resource allocation grant has succeeded and that each of at least one corresponding codeword has not been detected correctly” (id. at 12:20-24). (Dkt. No. 68 at 10.)

         Huawei contends that Nokia rewrites the claimed functions to be “determining whether the ACK or NACK is to be transmitted with SR.” (Id.) Huawei contends that the actual claim language does not speak of the transmission of ACK and NACK in the disjunctive. Instead, Huawei contends that two separate determining steps are presented. Huawei contends that the claim language requires determining whether an ACK is to be transmitted in the same sub-frame as the message and then further determining whether a NACK is to be transmitted in the same sub-frame as the message. (Dkt. No. 71 at 9-10.) Huawei contends that Nokia's modified function reads out the language “in the same sub-frame as the message” that is part of the agreed functions and adds the language “to be transmitted with SR.” (Id. at 10.)

         As to the specification passage cited by Nokia (7:39-42), Huawei contends that the passage does not even reference “determining” and provides no guidance as to determining whether an ACK or NACK is transmitted. (Id.) Rather, Huawei contends that the passage merely treats, as a given fact, that an ACK or NACK is to be transmitted. Huawei contends that no teaching is provided regarding “determining whether” an ACK or NACK is to be transmitted. Huawei contends that same argument applies to the Figure 8 flow chart as the figure presupposes that it has been determined whether ACK/NACK should be transmitted. (Id. at 11.)

         Huawei contends that Nokia characterizes the function as “determining whether an ACK or NACK is to be transmitted in the same sub-frame as the message.” Huawei contends, however, that this is not the function recited in the claim. (Id.) Huawei also contends that Nokia does not refer to any algorithms that perform that function. Huawei contends that, in any event, Nokia still does not disclose an algorithm for determining whether acknowledgements or negative acknowledgements are transmitted in the same sub-frame.

         In reply, Nokia contends that the ACK and NACK are mutually exclusive. Nokia contends that this is confirmed by the algorithm disclosed in the patent specification for the function of “determining whether [an ACK or NACK] is to be transmitted:” “the acknowledgement indicates that a downlink resource allocation grant has succeeded and that each of at least one corresponding codeword has been detected correctly” ('082 Patent12:25-29), while “the negative-acknowledgement indicates that a downlink resource allocation grant has succeeded and that each of at least one corresponding codeword has not been detected correctly” ('082 Patent 12:20-24). Nokia contends that using this description of the algorithm, a person of ordinary skill in the art would be able to implement the means for determining whether an ACK or NACK is to be transmitted. (Dkt. No. 72 at 3 (citing Dkt. No. 72-1 (Thompson Decl.) at ¶ 30 (noting that the mechanism for transmitting ACK and NACK was well known)).)

         As to Huawei's assertion that Nokia has read out “is to be transmitted in the same sub-frame as the message” (Dkt. No. 71 at 10), Nokia contends that as Nokia made clear, Figure 8 and the accompanying text discloses the algorithm for determining whether (i) an ACK is to be transmitted in the same sub-frame as the message, i.e., SR ACK and (ii) a NACK is to be transmitted in the same sub-frame as the message, i.e., SR NACK. (Dkt. No. 72 at 4.) Nokia further states that Figure 8 and the passage clearly show that the ACK/NACK is to be transmitted with the SR when SR=1. (Id. (citing '082 Patent 7:39-43 and Dkt. No. 72-1 (Thompson Decl.) at ¶ 32).)

         The parties did not provide additional arguments for this term at the oral hearing. (Dkt. No. 84 at 25-26.)

         Analysis

         The specification provides algorithm support for the claimed function. With regard to determining whether to transmit ACKs and NACKs, the specification provides a discussion as to how to determine an ACK or NACK condition:

In a further exemplary embodiment of any one of the apparatus (10) above, the acknowledgement indicates that a downlink resource allocation grant has succeeded and that each of at least one ...

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