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Sol IP, LLC v. AT&T Mobility LLC

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

December 16, 2019

SOL IP, LLC, Plaintiff,
v.
AT&T MOBILITY LLC, Defendant, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors. SPRINT COMMUNICATIONS COMPANY L.P., SPRINT SOLUTIONS, INC., and SPRINT SPECTRUM L.P., Defendants, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors. VERIZON COMMUNICATIONS INC. and CELLCO PARTNERSHIP d/b/a VERIZON WIRELESS, Defendants, ERICSSON INC. and NOKIA OF AMERICA CORPORATION, Intervenors. CELL GROUP NUMBER HOPPING CODE WORD IDENTIFIERS CELL IDENTIFIER Term Preliminary Construction Term Construction Plaintiff's Proposed Construction Defendants' Proposed Construction Plaintiff's Proposed Construction Defendants' Proposed Construction Term Preliminary Construction Term Construction

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER REGARDING “LTE B” PATENTS

          ROY S. PAYNE, UNITED STATES MAGISTRATE JUDGE.

         On December 5, 2019, the Court held a hearing to determine the proper construction of disputed claim terms within the group of patents referred to by the parties as the “LTE B” Patents, namely United States Patents No. 8, 311, 031, 8, 320, 565, 8, 320, 571, 9, 144, 064, 9, 204, 438, 9, 496, 976, 9, 603, 174, 9, 888, 435, 10, 075, 946, and 10, 080, 204. Having reviewed the arguments made by the parties at the hearing and in their claim construction briefing (Dkt. Nos. 206, 225 & 234), [1] having considered the intrinsic evidence, and having made subsidiary factual findings about the extrinsic evidence, the Court hereby issues this Claim Construction Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         TABLE OF CONTENTS

         I. BACKGROUND ....................................................................................................................... 4

         II. LEGAL PRINCIPLES ........................................................................................................... 5

         III. THE PARTIES' STIPULATED TERMS ........................................................................... 8

         IV. CONSTRUCTION OF DISPUTED TERMS IN THE '031, '976, AND '204 PATENTS........................ 8

         (B) A. “cell search” Preambles ................................................................................................... 9

         (B) B. “cell group” and “group of cells” .................................................................................. 15

         (B) C. “synchronization sequence” Terms ............................................................................... 19

         V. CONSTRUCTION OF DISPUTED TERMS IN THE '565, '571, '064, '438, AND '435 PATENTS..... 28

         (B) D. “short sequence” ............................................................................................................ 28

         (B) E. “scrambled” and “scrambled with [a scrambling sequence]” ........................................ 33

         VI. CONCLUSION..................................................................................... 39

         I. BACKGROUND

         Plaintiff Sol IP, LLC (“Plaintiff” or “Sol”) has alleged patent infringement by Defendants AT&T Mobility LLC, Sprint Communications Co. LP, Sprint Solutions, Inc., Sprint Spectrum LP, and Cellco Partnership d/b/a Verizon Wireless (“Defendants”). At least for purposes of these claim construction proceedings, the parties use “Defendants” to also include Intervenor Ericsson Inc. (Dkt. No. 176 at 2; Dkt. No. 205 at 1 n.1) and Intervenor Nokia of America Corporation (see Dkt. No. 240; see also Dkt. No. 243, Nov. 18, 2019 Order).

         Pursuant to the Court's September 9, 2019 Order (Dkt. No. 173), Plaintiff grouped the asserted patents into three groups, designated “LTE A” (or “LTE I”), “LTE B” (or “LTE II”) and “WiFi.” Dkt. No. 202. The present Claim Construction Memorandum and Order addresses the “LTE B” patents. These are United States Patents No. 8, 311, 031 (“the '031 Patent”), 8, 320, 565 (“the '565 Patent”), 8, 320, 571 (“the '571 Patent”), 9, 144, 064 (“the '064 Patent”), 9, 204, 438 (“the '438 Patent”), 9, 496, 976 (“the '976 Patent”), 9, 603, 174 (“the '174 Patent”), 9, 888, 435 (“the '435 Patent”), 10, 075, 946 (“the '946 Patent”), and 10, 080, 204 (“the '204 Patent”) (Dkt. No. 206, Exs. B1-B10).

         Plaintiff submits that “[t]hese patents concern cellular communications, in particular communications between base stations and mobile devices.” Dkt. No. 206 at 2. In particular, Plaintiff submits that the LTE B patents relate to “cell search, ” which is “the process of searching a cell's transmissions for synchronization signals that allow the user equipment to synchronize its timing and get identifying information for the base station it is communicating with.” Id. Plaintiff asserts that “[t]he cellular communication patents in this case relate to technologies incorporated into 3GPP's Long Term Evolution or LTE standards, also known as 4G.” Id.

         Shortly before the start of the December 5, 2019 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are noted below within the discussion for each term.

         II. 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, 415 F.3d at 1312 (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). “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.” Teva, 135 S.Ct. at 841 (citation omitted). “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 factfinding must be reviewed for clear error on appeal.” Id. (citing Markman v. Westview Instruments, Inc, 517 U.S. 370 (1996)).

         To determine the meaning of the claims, courts start by considering the intrinsic evidence. See Phillips, 415 F.3d at 1313; see also 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. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts give claim terms their 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 entire patent. Phillips, 415 F.3d at 1312- 13; accord Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).

         The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term's context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can 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. at 1315 (quoting Markman, 52 F.3d at 979). “[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.'” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor's lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim terms “where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. 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)); accord Phillips, 415 F.3d at 1323.

         The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).

         Although extrinsic evidence can 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 (citations and internal quotation marks omitted). 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 of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, 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). “A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120.

         III. THE PARTIES' STIPULATED TERMS

         The parties submitted in their September 11, 2019 P.R. 4-3 Joint Claim Construction and Prehearing Statement that “[t]here are no currently agreed constructions.” Dkt. No. 176 at 2.

         IV. CONSTRUCTION OF DISPUTED TERMS IN THE '031, '976, AND '204 PATENTS

         The '031 Patent, titled “Cell Search Method, Forward Link Frame Transmission Method, Apparatus Using the Same and Forward Link Frame Structure, ” issued on November 13, 2012, and bears an earliest priority date of July 25, 2006. The Abstract of the '031 Patent states:

A method of and an apparatus therefor searching a cell in a mobile station of a communication system in which a plurality of cells are grouped into a plurality of cell groups, and each cell group includes at least two cells. The method includes detecting a primary synchronization signal and a secondary synchronization signal from a received signal, and identifying a cell based on a combination of the primary synchronization signal and the secondary synchronization signal. The secondary synchronization signal is related to the cell group to which the mobile station belongs and the primary synchronization signal is related to the cell to which the mobile station belongs within the cell group.

         The '976 Patent and the '204 Patent resulted from continuations based on the '031 Patent, and Plaintiff submits that these three patents “share a substantially similar specification.” Dkt. No. 206 at 4. Defendants submit that these patents “share an identical specification.” Dkt. No. 225 at

         (B)A. “cell search” Preambles

“method of performing cell search in a mobile station of a wireless communication

system”

(’031 Patent, Claim 1)

Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Preamble is not limiting; Plain and ordinary meaning Preamble is limiting;

“method in a mobile station of a wireless communication system for obtaining system timing of the base station having the largest reception signal and a cell identifier”

“apparatus for performing cell search in a wireless communication system”

(’031 Patent, Claim 8)

Plaintiff’s Proposed Construction

Defendants’ Proposed Construction

Preamble is not limiting; Plain and ordinary meaning Preamble is limiting;

“apparatus in a wireless communication system for obtaining system timing of the base station having the largest reception signal and a cell identifier”

Dkt. No. 176-1 at 29-30; Dkt. No. 206 at 5; Dkt. No. 225 at 3; Dkt. No. 253-2 at 1 & 4.

         Shortly before the start of the December 5, 2019 hearing, the Court provided the parties with the following preliminary construction for both of these disputed terms: “Not limiting.”

         (1) The Parties' Positions

         Plaintiff argues that “Defendants' position fails at the outset because the preambles are not limiting.” Dkt. No. 206 at 6. Plaintiff also argues that “nothing in the claims or specification states that using the base station with ‘the largest reception signal' is a required or even an intended goal of the invention.” Id.

         Defendants respond that “[t]he preambles provide antecedent basis and are necessary to understand limitations in the claim bodies, ” and “only Defendants' construction faithfully captures the specification's explicit definition of ‘cell search.'” Dkt. No. 225 at 3. Defendants argue that “Sol IP now seeks improperly to excise cell search-the heart of the patent's alleged ‘present invention'-from the claims.” Id. at 4.

         Plaintiff replies that “nothing suggests the patentee was seeking to redefine ‘cell search.'” Dkt. No. 234 at 2. Plaintiff also cites extrinsic evidence that Plaintiff argues “clearly distinguishes between cell search (synchronization with a cell) and cell selection (finding ‘a suitable cell').” Id. at 3 (citing Dkt. No. 206-12, Ericsson LTE L13 Radio Network Functionality Student Book at 100-02); see Id. at 2-3. Finally, Plaintiff reiterates that “cell search” is not limiting because “Defendants cannot show that limiting the claims to ‘cell search' is necessary to understand them.” Id. at 3.

         At the December 5, 2019 hearing, Defendants argued that finding the preamble limiting as to cell search is particularly appropriate because the patentee used the term “cell search” in a special way in these patents. See, e.g., '031 Patent at 1:39-44, 2:14-27 & 41:42-49.

         (2) Analysis

         “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality' to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)); see, e.g., Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”); C.W. Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (finding preambles limiting because “‘containers' as recited in the claim body depend on ‘a plurality of containers' in the preamble as an antecedent basis”). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.'” Catalina, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478, 42 U.S.P.Q.2d 1550, 1553 (Fed. Cir. 1997)).

         Also, “the purpose or intended use of the invention . . . is of no significance to claim construction . . . .” See Pitney Bowes, 182 F.3d at 1305. This principle has sometimes been characterized as “the presumption against reading a statement of purpose in the preamble as a claim limitation.” Marrin v. Griffin, 599 F.3d 1290, 1294-95 (Fed. Cir. 2010); see Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 769- 71 (Fed. Cir. 2018) (in preamble reciting “[a] computer network for providing an information delivery service for a plurality of participants, ” finding “information delivery service” to be non-limiting because it “merely describe[s] intended uses for what is otherwise a structurally complete invention”).

         Claims 1 and 8 of the '031 Patent recite (emphasis added):

1. A method of performing cell search in a mobile station of a wireless communication system, the method comprising:
searching a primary synchronization sequence (PSS) carrying partial information of a cell identification, wherein the PSS is one of a plurality of different PSSs that the wireless communication system employs,
searching at least one secondary synchronization sequence (SSS) carrying remaining information of the cell identification, and
identifying a cell ID using the PSS and the at least one SSS,
wherein the PSS is repeatedly disposed in at least two symbols in a frame, and different SSSs are disposed in at least two symbols in the frame.
* * *
8. An apparatus for performing cell search in a wireless communication system, the apparatus comprising:
a controller configured to identify a cell ID using a primary synchronization sequence (PSS) carrying partial information of a cell identification and at least one secondary synchronization sequence (SSS) carrying remaining information of the cell identification,
wherein the PSS is one of a plurality of different PSSs that the wireless communication system employs, and the PSS is repeatedly disposed in at least two symbols in a frame, and different SSSs are disposed in at least two symbols in the frame.

         The “wireless communication system” terms derive antecedent basis from the preambles. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (noting a “reference to ‘the processor,' referring back to the ‘a processor' recited in preamble”). In some cases, preambles can be limiting where such terms are “defined in greater detail in the preamble.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the image data' clearly derives antecedent basis from the ‘image data' that is defined in greater detail in the preamble as being ‘representative of at least one sequential set of images of a spray plume.'”). Further, preambles can be limiting where they “provide antecedent basis for and are necessary to understand positive limitations in the body of claims.” Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015).

         Nonetheless, “that [a] phrase in the preamble . . . provides a necessary structure for [the] claim . . . does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.” TomTom Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015); see also Id. (“It was therefore error for the district court to use an antecedent basis rationale to justify converting this independent part of the preamble into a new claim limitation.”); Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1234, 1236-38 (Fed. Cir. 2017) (preamble language “system for inspecting a railroad track bed, including the railroad track, to be mounted on a vehicle for movement along the railroad track” not limiting as to “to be mounted on a vehicle for movement along the railroad track, ” even though “railroad track bed” provided antecedent basis for limitations in body of claim); Marrin, 599 F.3d at 1294-95 (“[T]he mere fact that a structural term in the preamble is part of the claim does not mean that the preamble's statement of purpose or other description is also part of the claim.”).

         Here, the preambles do not further define the “wireless communication system, ” and the “performing cell search” language in the preambles is merely “descriptive” of the limitations set forth in the body of the claim. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus' in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”); see also Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“[I]f the body of the claim describes a structurally complete invention, a preamble is not limiting where it ‘merely gives a name' to the invention, extols its features or benefits, or describes a use for the invention.”) (quoting Catalina, 289 F.3d at 809).

         In some cases, disclosures in the specification can demonstrate that preamble language is limiting. See Proveris, 739 F.3d at 1372 (“[T]he preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.”) (citation omitted); see Id. at 1373. Defendants cite various disclosures in the specification regarding cell searching. See, e.g., '031 Patent at Abstract, 2:33-38 (“The present invention provides a synchronization channel structure and a forward link frame so that a search process for an initial cell by a mobile station and a search process for an adjacent cell for handover can be easily performed in an Orthogonal Frequency Division Multiplexing (OFDM) cellular system.”), 10:12- 17 (“A cell searching apparatus of a mobile station according to an embodiment of the present invention may be varied according to a method of allocating a synchronization channel code of the present invention which allows the mobile station to easily search for a cell in a cellular system.”) & 14:4-7 (“The present invention relates to a cell searching method . . . .”).

         These disclosures, however, do not warrant importing a “cell search” limitation into the bodies of the claims. Defendants urge that “[w]hen a patent thus describes the features of the ‘present invention' as a whole, this description limits the scope of the invention.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007); see Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1256-57 (Fed. Cir. 1989) (finding the preamble “[a]n optical waveguide comprising” to be limiting because the specification demonstrated “the inventors were working on the particular problem of an effective optical communication system not on general improvements in conventional optical fibers”). As discussed above, however, Claims 1 and 8 of the '031 Patent use the term “cell search” to describe the limitations set forth in the body of each claim. In other words, Defendants' arguments based on disclosures in the specification fair no better than Defendants' arguments based on the descriptive preamble language itself.

         Thus, on balance, Defendants fail to overcome “the presumption against reading a statement of purpose in the preamble as a claim limitation.” Marrin, 599 F.3d at 1294-95; see Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328-29 (Fed. Cir. 2019) (finding “personal recreational vehicle” non-limiting in preamble reciting “power distribution module for a personal recreational vehicle” because claim body “defines a ...


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