1

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

Case No.: 1-20-cv-22051-DPG

SISVEL INTERNATIONAL S.A.,

3G LICENSING S.A., and SISVEL S.p.A.

Plaintiffs,

v.

HMD AMERICA, INC. and HMD 

GLOBAL OY,

Defendants.

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 1 of 26
i

TABLE OF CONTENTS

I. INTRODUCTION ................................................................................................................. 1

II. OVERVIEW OF THE PATENTS IN SUIT.......................................................................... 1

A. Overview of the ’070 Patent.............................................................................................. 1

B. Overview of the ’611 Patent.............................................................................................. 2

C. Overview of the ’383 Patent.............................................................................................. 3

D. Overview of the ’396 Patent.............................................................................................. 3

E. Overview of the ’279 Patent.............................................................................................. 4

F. Overview of the ’653 Patent.............................................................................................. 4

III. LEGAL STANDARDS ......................................................................................................... 5

A. Claim Construction............................................................................................................ 5

B. Indefiniteness..................................................................................................................... 6

IV. Level of Ordinary Skill in the Art.......................................................................................... 7

V. DIsputed constructions........................................................................................................... 7

A. ’070 Patent: “a create communication connection default procedure” (claim 1).............. 7

B. ’611 patent: “prioritizing the existing wireless data connection” (claim 1)...................... 9

C. ’383 patent ....................................................................................................................... 10

1. “suitable for camping” / “not suitable for camping” (claims 1, 17, 49, 66, 82)........... 10

2. “considers . . . as barred as a candidate for reselection” (claim 49)............................. 11

3. “not considering” / “does not consider” . . . “as a candidate for reselection” (claims 1, 

17) ...................................................................................................................... 13

4. “excluding” / “excludes” . . . “as a candidate for reselection” (claims 66, 82)............ 13

D. ’653 Patent....................................................................................................................... 14

1. “control means connected with the receiving means adapted to control the data 

transmission rate based on the data rate control command” (claim 34) ............ 14

2. “at least one symbol of +1, -1, and 0” (claim 34) ........................................................ 18

E. ’396 patent: “detected as missed” (claims 1, 8)............................................................... 18

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 2 of 26
ii

F. ’279 patent: “at an interval of a subframe period” (claims 1, 11) ................................... 20

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 3 of 26
iii

TABLE OF AUTHORITIES

Page(s)

Cases

AllVoice Computing PLC v. Nuance Communs., Inc., 

504 F.3d 1236 (Fed. Cir. 2007) .................................................................................................. 9

Apple, Inc. v. Ameranth, Inc., 

842 F.3d 1229 (Fed. Cir. 2016) ................................................................................................ 18

Aventis Pharms., Inc. v. Amino Chems. Ltd., 

715 F.3d 1363 (Fed. Cir. 2013) .................................................................................................. 5

Baldwin Graphic Sys., Inc. v. Siebert, Inc., 

512 F.3d 1338 (Fed. Cir. 2008) ................................................................................................ 20

Berkheimer v. HP Inc., 

881 F.3d 1360 (Fed. Cir. 2018) .................................................................................................. 7

Chi. Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 

748 F.3d 1134 (Fed. Cir. 2014) .................................................................................................. 6

Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 

672 F.3d 1270 (Fed. Cir. 2012) .................................................................................................. 9

EMED Techs. Corp. v. Repro-Med Sys., 

2019 U.S. Dist. LEXIS 93737 (S.D. N.Y June 4, 2019) .......................................................... 18

Epos Techs. Ltd. v. Pegasus Techs. Ltd., 

766 F.3d 1338 (Fed. Cir. 2014) .................................................................................................. 9

Kara Tech. Inc. v. Stamps.com Inc., 

582 F.3d 1341 (Fed. Cir. 2009) .................................................................................................. 9

Markman v. Westview Instr., Inc., 

517 U.S. 370, 384 (1996)............................................................................................................ 5

Masco Corp. v. United States, 

303 F.3d 1316 (Fed. Cir. 2002) .................................................................................................. 6

Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 

248 F.3d 1303 (Fed. Cir. 2001) .................................................................................................. 6

Nautilus Inc. v. Biosig Instruments, Inc., 

572 U.S. 898 (2014).................................................................................................................... 6

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 4 of 26
iv

One-E-Way, Inc. v. ITC, 

859 F.3d 1059 (Fed. Cir. 2017) .............................................................................................. 6, 7

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 6

Power Mosfet Techs., L.L.C. v. Siemens AG., 

378 F.3d 1396 (Fed. Cir. 2004) ................................................................................................ 18

SynQor, Inc. v. Artesyn Techs., Inc., 

709 F.3d 1365 (Fed. Cir. 2013) ................................................................................................ 20

Unwired Planet, LLC v. Apple Inc., 

829 F.3d 1353 (Fed. Cir. 2016) .................................................................................................. 6

Vitronics Corp. Conceptronic, Inc., 

90 F.3d 1576 (Fed. Cir. 1996) .................................................................................................... 6

Statutes

35 U.S.C. § 112............................................................................................................................... 6

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 5 of 26
1

I. INTRODUCTION

Plaintiffs Sisvel International S.A., 3G Licensing S.A., and Sisvel S.p.A. hereby submit 

this Opening Claim Construction Brief pursuant to the Court’s Order dated February 25, 2021, 

(Dkt. 46), related to the disputed claim terms in six of the patents in suit: U.S. Patent Nos. 

7,979,070 (the “’070 patent”) 8,600,383 (the “’383 patent”), 8,189,611 (the “’611 patent”),

7,215,653 (the “’653 patent”), 7,869,396 (the “’396 patent”), and 8,971,279 (the “’279 patent”). 

(Exs. 1 to 6.) 

Each of Sisvel’s proposed constructions comports with the claims, specification, and 

prosecution history, along with the applicable technical standards incorporated by reference into 

a number of the patents. Each would have been understood by a person of ordinary skill in the 

art (“POSITA”) at the time of the relevant invention. HMD’s proposed constructions and ignore 

the intrinsic evidence and violate numerous basic tenets of claim construction. For those terms 

HMD asserts are indefinite, its arguments—which essentially seek summary judgment of 

indefiniteness—not only ignore the law and intrinsic record, they also fail to account for the 

substantial expert testimony in support of validity. As set forth below, Sisvel’s proposed 

constructions should be adopted, and HMD’s constructions and indefiniteness arguments should 

be rejected. 

II. OVERVIEW OF THE PATENTS IN SUIT

A. Overview of the ’070 Patent

The ’070 patent pertains to a procedure for use when attaching equipment such as a 

mobile station to a network. (’070 patent at Abstract; Bates Decl. at ¶ 36.) To accomplish this, 

the ’070 patent teaches combining an attach request and a default “packet data protocol context” 

(or “PDP context”) activation request from the mobile station. (’070 patent at 3:25-26; Bates 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 6 of 26
2

Dec. at ¶ 36.) The “PDP context” constitutes channel information needed to direct the mobile 

station to a data address (such as an IP address). (’070 patent at 2:59-67; Bates Decl. at ¶ 37.) 

Combining the attach procedure with the PDP context activation procedure is beneficial 

because it decreases the back-and-forth signaling required to establish a connection. (’070 patent 

at 3:26-29; Bates Decl. at ¶ 37.) If the combined request is not present, the normal attachment 

process is performed. (’070 patent at 4:30-33; Bates Decl. at ¶ 37.) 

A “default” PDP context directs the mobile station to a default data address, such as a 

particular website. (Bates Decl. at ¶ 38.) According to the patent, the default PDP context is 

activated according to stored subscription information received from the a “Home Location 

Register” (HLR) for a particular mobile station. (’070 patent at 5:29-38; Bates Decl. at ¶ 38.) 

B. Overview of the ’611 Patent

The ’611 patent relates to resolving contention among applications operating on a mobile 

communications device that require connections to a wireless network. (’611 patent at 1:17-23; 

Bates Decl. at ¶ 39.) The ’611 patent addresses the problem of a mobile communications device 

used to provide both high priority and low priority data services, when only a limited number of 

such applications can operate at the same time. (’611 patent at 1:28-38; Bates Decl. at ¶ 39.) 

The technique of the ’611 patent involves executing a contention manager routine on the 

mobile communications device to select which of the applications currently conducting data 

sessions should release its data session in favor of another application requesting a data session. 

(’611 patent at 2:11-16; Bates Decl. at ¶ 40.) The ’611 patent discloses a variety of contention 

parameters that may be used to determine which of the connected applications should release its 

data connection such as application priority, data traffic, and duration of current connection. 

(’611 patent at 2:54-58; Bates Decl. at ¶ 40.) 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 7 of 26
3

C. Overview of the ’383 Patent

The ’383 patent relates to the selection of cells by mobile telecommunications user 

equipment (“UE,” the patent’s term for the mobile phone), which supports at least two Radio 

Access Technologies (“RATs,” the parlance of different types of cellular networks). (’383 

patent at 1:25-29; Bates Decl. at ¶ 42.) In cellular networks, a UE regularly searches for a better 

cell, which may require a change of RAT. (’383 patent at 2:22-25; Bates Decl. at ¶ 42.) 

The ’383 patent addresses the problem of reducing unsuccessful attempts by a UE in 

selecting a cell. When a UE determines that a cell cannot be considered for reselection for a 

given time period, the cell is barred and is not considered until the expiration of a suitable time 

period. (’383 patent at 4:63-5:2; Bates Decl. at ¶ 43.) By excluding certain cells for reselection, 

the UE avoids potential loss of service from trying to connect to unsuitable cells, and also 

preserves battery by avoiding even the consideration of such cells.

D. Overview of the ’396 Patent

The ’396 patent teaches a data transmission method and retransmission method to reduce 

loss. (’396 patent at Abstract; 1:17-20; Bates Decl. at ¶ 44.) Specifically, the ’396 patent 

teaches the use of status report information regarding a data block that may have been received 

or not received by the Radio Link Control (“RLC”) entity of the receiver. (’396 patent at 9:22-

25; 9:34-36; Bates Decl. at ¶ 44.) 

The ’396 patent teaches the use of Automatic Repeat Request (“ARQ”), which is a 

known technique to reduce data loss that would be understood by a POSITA. (’396 patent at 

1:58-64; Bates Decl. at ¶ 45.) ARQ refers to a process for detecting that a specific RLC Protocol 

Data Unit (“PDU”) is not received. (’396 patent at 14:8-15; Bates Decl. at ¶ 45.) When a gap in 

the PDU sequence is detected, a timer is activated. (’396 patent at 14:28-30; Bates Decl. at ¶ 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 8 of 26
4

45.) When the missing PDU (data) is not received before the expiration of the timer, it is judged 

that there is a reception failure and status report information is transmitted. (’396 patent at 

14:30-34; Bates Decl. at ¶ 45.) Including the status report information in the ARQ process 

allows for more rapid and efficient transmission and retransmission of lost data. (’396 patent at 

1:65-2:5; 2:17-20; 2:43-52; Bates Decl. at ¶ 45.)

E. Overview of the ’279 Patent

The ’279 patent teaches an improved semi-persistent scheduling (“SPS”) deactivation in 

a wireless mobile communication system. (’279 patent at Abstract; Bates Decl. at ¶ 46.) SPS is 

a scheduling scheme for allocating resources to a specific user equipment (“UE”), such that the 

allocated resources can be persistently maintained during a specific timer interval. (’279 patent 

at 11:40-43; Bates Decl. at ¶ 46.) 

The invention of the ’279 patent permits resource allocation to a UE to be maintained for 

a predetermined period by only one signaling process. (’279 patent at 3:43-54; Bates Decl. at ¶ 

46.) The invention avoids the repeated allocation of resources, resulting in a reduction in 

signaling overhead. (’279 patent at 3:51-55; Bates Decl. at ¶ 46.) One example of a signaling 

process involving so-called SPS “deactivation” (i.e., releasing a given resource from its 

allocation) is sending a signal with a field filled entirely with ones (11111111). (’279 patent at 

21:60-66; Bates Decl. at ¶ 46.) 

F. Overview of the ’653 Patent

The ’653 patent teaches improvements related to “controlling the data transmission rates 

between mobiles and base stations” by sending information about transmission circumstances 

and channel conditions to each mobile station from the base station. (’653 patent at 4:36-43; 

Lipoff Decl. at ¶ 29.) 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 9 of 26
5

The ’653 patent explains how the transmission rate adjustment information sent from the 

base station to the mobile is to be determined by evaluating the level of interference between the 

two, and then a required transmission energy: “According to FIG. 3, a base station according to 

an embodiment of the present invention can comprise a determining means, which determines an 

interference level of signals received from the mobile stations, and determines a transmission 

energy level required for each mobile station.” (’653 patent at 7:22-26; Lipoff Decl. at ¶ 30). 

Once the base station determines an appropriate transmission rate, it sends rate 

adjustment information in the form of Rate Control Bits (“RCB”) to each mobile station; if the 

current transmission data rate is to be increased, the base Station sets the RCB to “INCREASE,” 

if the current transmission data rate is to be decreased, the base station sets the RCB to 

“DECREASE,” and if current transmission data rate is to be maintained, no RCB information is 

transmitted by the base station to the mobile. (’653 patent at 8:53-58; Lipoff Decl. at ¶ 31). The 

transmitted RCB is mapped by signal mappers that change all “0” bits to “+1,” all “1” bits to “-

1,” and no symbol bits to “0,” which indicate to the mobile whether the data rate is to be 

increased, decreased, or remain the same. (’653 patent Fig. 4 and at 8:44:46; Lipoff Decl. at ¶ 

31.)

III. LEGAL STANDARDS 

A. Claim Construction

Claim construction is a matter of law. Markman v. Westview Instr., Inc., 517 U.S. 370, 

384 (1996). There is a “heavy presumption that claim terms are to be given their ordinary and 

customary meaning” because “the words of the claims themselves . . . define the scope of the 

patented invention.” Aventis Pharms., Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.

2013). The “ordinary and customary meaning” refers to how a person of skill in the art at the 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 10 of 26
6

time of the invention would have understood the term as it is used in the claim. Phillips v. AWH 

Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The meaning of any claim term must 

understood in the context of the intrinsic evidence, the patent’s specification and prosecution 

history. Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016). When it is 

necessary to construe a claim, intrinsic evidence is typically “the single best guide to the 

meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics Corp. Conceptronic, 

Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 

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). Construing a meansplus-function claim is a two-step process. First, courts determine the function of the means-plusfunction limitation. Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 

(Fed. Cir. 2001). Second, courts determine “the corresponding structure disclosed in the 

specification and equivalents thereof.” Id. 

B. Indefiniteness

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., 572 U.S. 898, 910 (2014). 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 911. While requiring clarity, absolute precision is unattainable and not 

the standard. One-E-Way, Inc. v. ITC, 859 F.3d 1059, 1063 (Fed. Cir. 2017). 

The party challenging validity based on indefiniteness carries the burden of proof. Chi. 

Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014). This 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 11 of 26
7

requires the challenger to establish any fact that is critical to a holding of indefiniteness by clear 

and convincing evidence. One-E-Way, Inc., 859 F.3d at 1062; Berkheimer v. HP Inc., 881 F.3d 

1360, 1368 (Fed. Cir. 2018). 

In the means-plus-function context, the claim is invalid as indefinite if the claim fails to 

disclose adequate corresponding structure to perform the claimed function. Williamson v. Citrix 

Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015). 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.

IV. LEVEL OF ORDINARY SKILL IN THE ART

A POSITA as of October 13, 2000 for the ’070 patent, November 4, 2005 for the ’611 

patent, August 18, 2004 for the ’383 patent, January 5, 2006 for the ’396 patent, and November 

13, 2008 for the ’279 patent would hold a bachelor’s degree in electrical engineering, computer 

sciences, or telecommunications and wireless communications, along with three or more years of 

practical experience in the field. A combination of more experience in the field and less 

education or more education and less experience in the field would also suffice. (Bates Decl. at ¶ 

28.) A POSITA as of February 11, 2002 for the ’653 patent would hold a bachelor’s degree in 

electrical engineering, computer sciences, or telecommunications, along with three to five or 

more years of practical experience in the field. A combination of more experience in the field 

and less education or more education and less experience in the field would also suffice. (Lipoff 

Decl. at ¶ 21.) 

V. DISPUTED CONSTRUCTIONS

A. ’070 Patent: “a create communication connection default procedure” (claim 

1)

Plaintiff Sisvel’s Proposed 

Construction

Defendant HMD’s Proposed Construction

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 12 of 26
8

No construction needed. Indefinite.

Alternatively: “a procedure triggered between a support node 

and a gateway device for creating a default PDP context”

The claim term “a create communication connection default procedure” does not require 

construction. HMD cannot show that this term is indefinite, and certainly cannot provide any

such evidence sufficient to meet its burden by clear and convincing evidence. 

The ’070 patent discloses procedures for connecting a mobile station to a network. (’070 

patent at 3:25-26; 3:63-67; Bates Decl. at ¶ 47.) The patent teaches utilizing an “attach request”

to join the network, but this is insufficient to receive calls. To originate or receive a call or data, 

a “PDP context activation” is also necessary. (’070 patent at 1:26-42; Bates Decl. at ¶ 47.) 

According to the ’070 patent, in one embodiment the attach procedure may be employed without 

being joined with the PDP context activation. (’070 patent at Fig. 4; Bates Decl. at ¶ 48.) In 

another embodiment the attach request is combined with a PDP context activation request. (’070 

patent at Fig. 3, 3:26-29; Bates Decl. at ¶ 47.) 

A POSITA would understand that the term “a create communication connection default 

procedure” occurs in both embodiments, either connecting the mobile station to the network 

using only an attach request, or combining the attach request with the PDP context activation 

request. (Bates Decl. at ¶¶ 48-49.) Therefore, the specification provides reasonable certainty to 

those skilled in the art and the claim term is not indefinite. (Id. at ¶ 50.) A POSITA would 

understand the term refers to the process triggered by the sending of an attach request by a 

mobile station to the network, which may or may not include a combined PDP context activation 

request according to the invention of the ’070 patent. (Id. at ¶ 50.) 

HMD’s proposed alternative construction improperly limits the claim term to only one of 

the disclosed embodiments, the embodiment with a combined attach request and PDP context 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 13 of 26
9

activation request. This is improper. See, e.g., Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 

1338, 1341 (Fed. Cir. 2014); Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 

2009) (“a patentee is entitled to the full scope of his claims and [a court] will not limit him to his 

preferred embodiment or import a limitation from the specification into the claims.”). 

Claim differentiation also establishes that HMD is wrong. While claim 5 is directed to 

“activation of a packet data protocol context using the default data,” (i.e., the PDP context 

activation) claim 1 does not contain this limitation. (’070 patent at 6:54-56.) Importing this 

limitation directly into claim 1 would make claim 5 superfluous, an obviously improper reading 

of the claims as a whole. Digital-Vending Servs. Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 

1270, 1275 (Fed. Cir. 2012) (“claims are interpreted with an eye toward giving effect to all terms 

in the claim”); AllVoice Computing PLC v. Nuance Communs., Inc., 504 F.3d 1236, 1247-48 

(Fed. Cir. 2007) (noting that the doctrine of claim differentiation requires that constructions not 

render language in other independent claims superfluous).

B. ’611 patent: “prioritizing the existing wireless data connection” (claim 1)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. Indefinite.

The claim term “prioritizing the existing wireless data connection” does not require a 

construction. HMD cannot show that this term is indefinite, and certainly cannot provide such 

evidence sufficient to meet its burden by clear and convincing evidence. 

The ’611 patent discloses a system and method for resolving contention among different

applications running on a single phone. (’611 patent at 1:17-23; Bates Decl. at ¶ 51.) This 

invention allows higher priority data services such as corporate email or a personal information 

manager to take priority over lower priority data services such as messenger applications and 

web browsing. (’611 patent at 1:28-34; Bates Decl. at ¶ 51.) The ’611 patent provides numerous 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 14 of 26
10

examples of contention parameters for prioritizing which application should release its data 

connection including “application priority” and “duration of connection.” (’611 patent at 2:54-

57; Bates Decl. at ¶ 51.) 

This claim term is self-explanatory because prioritizing the existing wireless data 

connections according to the process described in the ’611 patent to determine which data 

connection should be released is consistent with the intrinsic evidence. Therefore, the 

specification provides reasonable certainty to those skilled in the art and the claim term is not 

indefinite. (Bates Decl. at ¶¶ 53-54.) 

C. ’383 patent

1. “suitable for camping” / “not suitable for camping” (claims 1, 17, 49, 66, 82)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. Indefinite.

Alternatively:

“able to be camped on by the UE for any service” / 

“unable to be camped on by the UE for all services”

The terms “suitable for camping” and “not suitable for camping” do not require 

construction. HMD cannot show that these terms are indefinite, and certainly cannot provide 

such evidence sufficient to meet its burden by clear and convincing evidence. 

The term “camping” is a well-known term of art that would have been understood by a 

POSITA referring to the UE choosing a cell with which to connect. (Bates Decl. at ¶ 53.) The 

3GPP specification, TS 25.304 v. 3.14.0, which is incorporated by reference into the patent,

demonstrates this understanding. (’383 patent at 3:17-1.) TS 25.304 v. 3.14.0 states:

The UE searches for a suitable cell of the chosen PLMN and chooses that 

cell to provide available services, and tunes to its control channel. This choosing

is known as “camping on the cell.” The UE will, if necessary, then register its 

presence, by means of a NAS registration procedure, in the registration area of the 

chosen cell.

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 15 of 26
11

(Bates Decl. Ex. B at Section 4.1.) The ’383 patent uses the term “camping” consistently with 

TS 25.304 v. 3.14.0. For example, the specification refers to “selecting cells that are potentially 

suitable for a user equipment to select/camp on in a telecommunications system.” (’383 patent at 

3:38-41; Bates Decl. at ¶ 53.) 

The term “suitable cell” is defined in TS 25.304 v. 3.14.0 as “a cell on which a UE may 

camp.” (Bates Decl. Ex. B at Section 3.1.) Therefore, a POSITA would understand that a cell 

which is not suitable is a cell on which a UE may not camp. (Id. at ¶ 56.) This usage is 

consistent with the use of the terms “suitable” and “unsuitable” in the ’383 patent. (’383 patent 

at 2:33-34; 5:60-62 (“if the system information from a cell which informs the UE how to connect 

to the cell has an error in it, then the cell is deemed to be unsuitable”); 6:65-66; 7:18 (“[i]f a 

suitable cell is found then it is selected”); see also 6:14-24; 6:31-37; 6:56-7:7; Bates Decl. at ¶ 

56). Therefore, the specification provides reasonable certainty to those skilled in the art and the 

claim term is not indefinite. (Bates Decl. at ¶ 57.) 

HMD’s alternative constructions do not follow the wording of the incorporated 

specification, TS 25.304 v. 3.14.0 as discussed above, and add the unwarranted limitations “for 

all services” and “for any service.” These phrases are not used in the ’383 patent specification 

and have no support in the intrinsic record. They also would obfuscate rather than clarify the 

claim, and only serve to confuse a jury. (Id. at ¶ 57.)

2. “considers . . . as barred as a candidate for reselection” (claim 49)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

not considered as a candidate for 

reselection for a time period

“removed from the cell reselection measurement 

procedure”

The claim term “considers . . . as barred as a candidate for reselection” should be 

construed as “not considered as a candidate for reselection for a time period.” 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 16 of 26
12

The intrinsic evidence is consistent with Sisvel’s proposed construction. The ’383 patent 

refers to cells that are “barred” as cells that are not considered as a candidate for reselection for a 

time period. (’383 patent at 5:1-2 (“During this time period, Tbarred, the ‘barred’ cell is not to 

be considered as a candidate for reselection by the UE.”); 7:14-16 (“As such, the barred cell is 

not considered as a candidate for reselection for this time interval.”); 7:26-31; Bates Decl. at ¶ 

58.)

1

 The term “barred” is consistently used with reference to a limited time period during 

which the call will not be considered, which is referred to as “Tbarred.” (’383 patent at 4:59-

5:14; 6:66-7:7; 7:26-31; Bates Decl. at ¶ 58.) 

HMD’s proposed construction is inconsistent with the intrinsic evidence and should be 

rejected. First, HMD’s construction would introduce additional ambiguity due to the use of the 

term “removed.” (Bates Decl. at ¶ 59). The ’383 patent teaches, in a preferred embodiment, the 

provision of a neighboring cell list stored on the UE, (referred to in the ’383 patent as the “GSM 

neighboring cell list”), which includes information relating to the transmission frequency of each 

neighboring GSM cell. (’383 patent at 4:41-43; Bates Decl. at ¶ 43.) The ’383 patent uses the 

term “remove” to refer to removing a barred cell from the GSM neighboring cell lists. (’383 

patent at 4:63-66; 5:3-5; 5:65-66; Bates Decl. at ¶ 589.) However, in some cases the barred cells 

are not removed and instead added to a different list. (’383 patent at 5:5-10; 6:33-38; Bates 

Decl. at ¶ 59.) Therefore, using the term “removed” would exclude one of the preferred 

embodiments, clearly a disfavored result. (Bates Decl. at ¶ 59.) Second, HMD’s construction 

does not include the limited time period limitation (Tbarred), which is required for a barred cell 

as described in the ’383 patent. (Id. at ¶ 59.) Rather, HMD’s use of “removed” creates a 

permanency to the barred cell that does not exist in the patent.

1 Unless otherwise indicated, emphasis in this brief has been added.

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 17 of 26
13

3. “not considering” / “does not consider” . . . “as a candidate for reselection” 

(claims 1, 17)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. “removing” / “removes” . . . “from the cell 

reselection measurement procedure”

The claim term “not considering” / “does not consider” . . . “as a candidate for 

reselection” does not require construction. A POSITA would understand this term as used in the 

’383 patent. (Bates Decl. at ¶ 60.) The ’383 patent refers to cells that are not considered as 

candidates for reselection by the UE, which may occur for different reasons. (’803 patent at 5:1-

2; 6:66-7:7; 7:14-17; 7:30-31; Bates Decl. at ¶ 60.) The patentee did not act as his own 

lexicographer by offering a specific meaning for this phrase, nor did the patentee disavow the 

full scope of the claim term. 

HMD’s proposed construction is inconsistent with the intrinsic evidence and should be 

rejected. HMD’s construction would introduce additional ambiguity due to the use of the term 

“removed” as discussed above. (Bates Decl. at ¶ 61). The cells that are not considered as a 

candidate for reselection (because they may be barred or unsuitable) are not always removed 

from the GSM neighboring cell lists. There is no reason why the patentee’s chosen phrasing 

should be ignored in favor of HMD’s ambiguous wording, and HMD has failed to provide one.

4. “excluding” / “excludes” . . . “as a candidate for reselection” (claims 66, 82)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. “removing” / “removes” . . . “from the cell 

reselection measurement procedure”

The claim term “excluding” / “excludes” . . . “as a candidate for reselection” does not 

require construction. A POSITA would understand this term as used in the ’383 patent. (Bates 

Decl. at ¶ 62.) The ’383 patent refers to cells that are excluded from the cell reselection process 

if they are unsuitable. (’383 patent at 6:19-22; Bates Decl. at ¶ 62.) Unlike the “barred” term 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 18 of 26
14

discussed above, there is no time period limitation for this term. A POSITA would understand 

that the cell is excluded from reselection as explained in the specification, and therefore no 

construction is necessary. (Bates Decl. at ¶ 62.) The patentee did not act as his own 

lexicographer by offering a specific meaning for this phrase, nor did the patentee disavow the 

full scope of the claim term. 

HMD’s proposed construction is inconsistent with the intrinsic evidence and should be 

rejected. As with the other terms discussed above, HMD’s construction would introduce 

additional ambiguity due to the use of the term “removed.” (Bates Decl. at ¶ 63). The cells that 

are excluded as a candidate for reselection (because they may be barred or unsuitable) are not 

always removed from the GSM neighboring cell lists. As with the terms discussed above, there

is no reason why the patentee’s chosen phrasing should be ignored in favor of HMD’s 

ambiguous wording. 

D. ’653 Patent

1. “control means connected with the receiving means adapted to control 

the data transmission rate based on the data rate control command” 

(claim 34)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed 

Construction

The term should be construed in accordance with pre-AIA 35 

U.S.C. § 112, ¶ 6. 

Function: controlling the transmission rate based on the data 

rate control command

Structure: a transmission data rate controller and 

transmission processor, in their entirety or portions thereof.

HMD contends that this term 

should be construed in 

accordance with pre-AIA 35 

U.S.C. § 112, ¶ 6. 

Indefinite. 

The claims and specification delineate a function and structure for this claim element. 

HMD cannot show that these terms are indefinite, and certainly cannot provide such evidence 

sufficient to meet its burden by clear and convincing evidence. 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 19 of 26
15

The invention of the ’653 patent is directed to “controlling data transmission (transfer) 

rates between a base station and mobile stations served by the base station so that data 

throughput is advantageously increased.” (’653 patent 1:8-12; see Lipoff Decl. at ¶ 29-30.) The 

parties agree that the term is a means-plus-function term pursuant to 35 U.S.C. § 112, ¶ 6. A 

POSITA would understand that the recited function is “controlling the transmission rate based on 

the data rate control command,” and that the corresponding structure is “a transmission data rate 

controller and transmission processor, in their entirety or portions thereof.” (Lipoff Decl. at ¶ 

33.)

According to the specification of the ’653 patent, the transmission data rate controller 23 

controls the transmission data rate based on the transmission data rate adjustment information in 

the signals as processed by the demodulator 22. (’653 patent at Fig. 2, 22, 23, 24, 5:57-60; 

Lipoff Decl. at ¶ 34.) Figure 2 demonstrates this process, as the information passes from 

receiver in the mobile 21, to demodulator 22, and then to the transmission data rate controller 23, 

which ultimately implements the command by issuing it to the transmission processor 24. (’653 

patent at Fig. 2.) The ’653 patent further discloses this structure within the specification itself:

Also, the mobile according to an embodiment of the present invention can 

comprise an adjusting means operatively connected with the determining means, 

which adjusts a data transmission rate based upon a comparison result received 

from the base station in a dedicated manner via a common channel, the 

comparison result being obtained by comparing the transmission energy level and 

the interference level of signals sent to the base station by the mobile stations. 

Here, the adjusting means can comprise the transmission data rate controller 

23, and the transmission processor 24, in their entirety or portions thereof.

(Id. at 6:4-14.) The ’653 patent teaches that a signal from the demodulator 22 containing a rate 

control bit (“RCB”) is communicated to the data rate controller 23, which then adjusts the data 

rate in accordance with the information received either with the transmission processor 24 or 

separate from it. (Id. at 5:57-60, 6:4-14; 14:41-43; Lipoff Decl. at ¶ 34.) A POSITA would 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 20 of 26
16

understand and be familiar with the fact that a data rate controller and a transmission processor 

would be hardwired logic and not a general purpose computer. (Lipoff Decl. at ¶ 34; see also, id. 

at ¶35)

Although not necessary, the ’653 patent discloses an algorithm for data rate control and 

transmission in multiple places within the specification. For example, Figure 4, a portion of the 

Figure 3 base station, demonstrates the steps by which a RCB is mapped to a symbol of either 

+1, -1, or 0. (’653 patent at Fig. 4, 41, 42, 43, 44; 8:44-46; Lipoff Decl. at ¶ 36.) The RCB 

mapped to a +1, -1 or 0, is then sent to the receiver 20 where the data transmission rate is 

increased, decreased, or left unchanged by the transmission data rate controller 23 and/or the 

transmission processor 24. (’653 patent at 6:4-14.)

The ’653 patent specification also lays out a more expansive step-by-step process by 

which data transmission rates a reverse link may be controlled that also encompasses the means 

by which the data rate transmission command is generated: 

. . . a method for controlling a data transmission rate on a reverse link according 

to the present invention can comprise the steps of determining an interference 

level at a base station due to signals from the mobile stations served by the base 

station; determining a transmission energy level required for each mobile station; 

comparing the interference level with the transmission energy level to obtain a 

comparison result for each mobile station; and adjusting a data transmission rate 

for each mobile station based upon the comparison result sent via a common 

channel on a forward link to each mobile station in a dedicated manner.

(’653 patent at 10:37-48.) This process is illustrated by Figure 4 at 42, where the requisite 

comparisons are made and the symbols mapped to the RCB, and then transferred ultimately to 

the mux 44, and then via the Figure 3 base station to be received at Figure 2 by the reception 

processor 21, demodulated by the demodulator 22, and then implemented by the data rate 

controller and/or the transmission processor. (Id. at Fig. 2, 21, 22, 23, 24; Fig. 4 at 42, 44.)

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 21 of 26
17

A POSITA would understand that if the RCB is mapped to a +1 symbol, this indicates to 

the receiving mobile that the data rate should increase, a -1 symbol indicates that the data rate 

should decrease and a 0 symbol indicates that the data rate should remain unchanged as that is a 

well understood construct. (Lipoff Decl. at ¶ 33.) However, the claim itself supports this 

understanding. Claim 34 recites “at least one rate control bit that is signal point mapped to at 

least +1, -1, and 0 to indicate whether the mobile station should increase, decrease or maintain its 

current data transmission rate.” (ʼ653 patent at claim 34.) As recited in the claim, a POSITA 

would understand that an RCB set to +1 means to increase the transmission rate, -1 means to 

decrease the transmission rate and 0 means to maintain the current transmission rate. (See,

Lipoff Decl. at ¶ 36.)

This symbol mapping algorithm adequately discloses to a POSITA the means by which 

the transmission data rate controller 23 and transmission processor 24, in their entirety or 

portions thereof, control the data transmission rate based on the data rate control command. (Id.

at ¶ 36.) Not only would this be understood naturally by a POSITA, it is reinforced by the 

language of the claims themselves. 

The prosecution history further establishes that the ’653 patent adequately discloses an 

algorithm that would be understood by a POSITA for use in transmission data rate control. In 

the Examiner’s Notice of Allowance, the Examiner recognizes that the algorithm used by the 

’653 patent would be known to other POSITAs in the field for use in controlling data 

transmission rates. (See, Ex. 7 at ¶ 2 (finding that the POSITAs in the field would be familiar 

with control bits being signal mapped to +1, -1, and 0 to indicate increasing data rates, 

decreasing data rates, and maintaining current data rates, respectively).)

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 22 of 26
18

2. “at least one symbol of +1, -1, and 0” (claim 34)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. “at least any one symbol of +1, -1, and 0”

It is unclear what HMD’s proposed construction is meant to clarify. HMD has expressed 

the notion that there is ambiguity whether the term “at least one symbol of +1, -1, and 0” may be 

read to necessitate two or more symbols rather than one or more symbols. In Sisvel’s view, this 

“ambiguity” does not exist. The claim language is clear: “at least one symbol” indicates that 

there may be one or more symbols. HMD’s addition of the word “any” will not change the 

meaning of this term. “[A]t least any one symbol” still indicates that the number of symbols 

may be one or more. 

HMD’s proposed construction appears to do nothing but add unnecessary verbiage to the 

claim. In such cases, the law is clear that courts should not adopt constructions of claim terms 

that render language of the claims redundant or superfluous. Apple, Inc. v. Ameranth, Inc., 842 

F.3d 1229, 1237 (Fed. Cir. 2016); Power Mosfet Techs., L.L.C. v. Siemens AG., 378 F.3d 1396, 

1410 (Fed. Cir. 2004); see also, EMED Techs. Corp. v. Repro-Med Sys., 2019 U.S. Dist. LEXIS 

93737 at *19-20 (S.D. N.Y June 4, 2019) (finding that “substantially perpendicular to some point 

along the flexible delivery tube” would render the language recited in the claim “substantially 

perpendicular to the delivery tube” redundant, and thus construing the term by its plain and 

ordinary meaning). Having never articulated a valid rationale for its construction, HMD’s 

addition of the word “any” should be precluded as superfluous to the meaning of the claim term. 

E. ’396 patent: “detected as missed” (claims 1, 8)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. Indefinite.

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 23 of 26
19

The claim term “detected as missed” does not require construction. HMD cannot show 

that this term is indefinite, and certainly cannot provide such evidence sufficient to meet its 

burden by clear and convincing evidence. Independent claims 1 and 8 include the claim 

language “detect[ing] whether at least one data block to be received from a transmitter is missed” 

and “start[ing] a timer when the at least one data block is detected as missed.” (’396 patent at 

16:42-45; 17:17-20.) HMD asserts only that the claim term “detected as missed” is indefinite, 

but fails to consider this phrase in the context of the entire term. 

The claim language itself confirms the relationship between these terms. The first phrase

above indicates a condition check, namely detecting whether an expected data block is missed. 

The second phrase recites what happens when the condition is met, i.e. when the data bock is 

“detected as missed.” This straightforward process requires no construction, and would be 

readily understood by a POSITA. (Bates Decl. at ¶¶ 64-66.) 

The specification supports this reading. The “ARQ” process disclosed in the ’396 patent 

includes detecting missed data blocks as recited in claims 1 and 8. (Bates Decl. at ¶ 65.) In one 

embodiment, this involves detecting missing “PDUs” in a transmitted sequence. (’396 patent at 

8:67-9:3 (“The receiver 450 sends information on the RLC PDUs not received by the receiver 

450 to the transmitter 400 and the transmitter 400 then transmits the corresponding RLC 

PDUs.”); Bates Decl. at ¶ 64.) A gap in the buffer of the receiver or the sequence number of the 

PDU can indicate that a specific RLC PDU is not received. (’396 patent at 12:34-40; 14:11-15; 

Bates Decl. at ¶ 64.) 

The ’396 patent further teaches that a timer is started when at least one data block is 

detected as missed. (’396 at 14:28-30 (“When a gap is generated in the buffer of the RLC entity, 

the timer is activated at once.”); Bates Decl. at ¶ 65.) When the timer expires, a status report is 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 24 of 26
20

transmitted indicating receipt or non-receipt of a data block. (’396 patent at 8:29-32; 14:30-33; 

Bates Decl. at ¶ 65.) Thus, the specification further establishes reasonable certainty to those 

skilled in the art, and the claim term is not indefinite.

F. ’279 patent: “at an interval of a subframe period” (claims 1, 11)

Plaintiff Sisvel’s Proposed Construction Defendant HMD’s Proposed Construction

No construction needed. “at an interval of one subframe period”

This claim term does not require construction. A POSITA would understand this term as 

used in the ’279 patent. (Bates Decl. at ¶ 67.) This is apparent from HMD’s own proposed 

construction, which merely changes the word “a” to “one” and adds nothing to the construction 

of the term. HMD’s attempt to limit this term to “one subframe period” is contrary to established 

caselaw, which as a rule treats “a” or “an” to mean “one or more.” Baldwin Graphic Sys., Inc. v. 

Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“[t]hat ‘a’ or ‘an’ can mean ‘one or more’ 

is best described as a rule”). 

HMD’s construction should also be rejected because it improperly excludes embodiments 

from the specification. For example, Figure 2 demonstrates radio frames according to time 

division duplexing (“TDD”). (’279 patent at 5:50-51; Bates Decl. at ¶ 69.) In TDD each radio 

frame consists of two half frames. (’279 patent at 1:46; Bates Decl. at ¶ 69.) A POSITA would 

understand that in TDD, the interval of the SPS transmission configured by the RRC can include 

a two subframe period. (Bates Decl. at ¶ 69.) HMD’s proposed construction would exclude this 

embodiment, because it would limit the claims to embodiments with a single subframe period. It 

should therefore be rejected. See SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1378-79 

(Fed. Cir. 2013). There is no basis in the patent to limit the interval to an interval of just one 

subframe period, as proposed by HMD. 

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 25 of 26
21

Dated: March 1, 2021 /s/ Jorge Espinosa

Jorge Espinosa, Esq.

Florida Bar No: 779032

jorge.espinosa@gray-robinson.com

Francesca Russo, Esq.

francesca.russo@gray-robinson.com

Robert R. Jimenez, Esq.

robert.jimenez@gray-robinson.com

GRAY | ROBINSON, P.A.

333 S.E. 2nd Ave., Suite 300

Miami, FL 33131

Tel: 305-416-6880

Fax: 305-416-6887

Attorneys for Plaintiffs

SISVEL INTERNATIONAL S.A.,

3G Licensing, S.A., and SISVEL S.p.A

Case 1:20-cv-22051-DPG Document 47 Entered on FLSD Docket 03/01/2021 Page 26 of 26