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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

NORTHPEAK WIRELESS, LLC,

Plaintiff,

v.

3COM CORPORATION, et al.,

Defendants.

Case No. 09-cv-00602-SI 

CLAIM CONSTRUCTION ORDER FOR 

U.S. PATENT NO. 4,977,577

On August 26, 2015, the Court heard argument on the parties' proposed claim 

constructions. Having considered the arguments made by the parties and the papers submitted, the 

Court construes the disputed terms as follows. 

BACKGROUND

I. Procedural Background

On November 1, 2008, North Peak filed a complaint alleging that defendants infringed US 

Patent Nos. 4,977,577 (the ’577 Patent) and 5,987,058 (the ’058 Patent). Docket No. 1. On 

January 1, 2009 and March 6, 2009 Intel filed motions to intervene. On March 27, 2009, the Court 

granted Intel’s motion. Docket No. 335. In September of 2009, Intel filed an ex parte 

reexamination request for the ’577 and ’058 Patents with the U.S. Patent and Trademark Office 

(“PTO”). Docket No. 489, 7/24/14 Joint Status Report. The examiner found the challenged claims 

of the ’058 patent to be unpatentable. Id. On June 28, 2011, the PTO found that all the challenged 

claims of the ’577 Patent were patentable. Id. On August 30, 2013, Intel initiated a second ex parte 

reexamination request for the ’577 Patent, and on May 20, 2014, the PTO once again confirmed 

the patentability of the challenged claims. Id. Now before the Court, are the parties’ claim 

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construction briefs. Docket Nos. 573, 575, 580.

II. Factual Background

The ’577 Patent, entitled “Wireless Alarm System,” discloses a system which employs 

direct sequence spread spectrum (“DSSS”) technology to transmit radio frequency (“RF”) signals. 

Sensors, placed throughout a building or a room, are used to detect events such as “smoke, heat, 

[or] unauthorized entry.” The ’577 Patent 1:66. The sensors then transmit messages to one-way 

spread spectrum transmitters, which then relay the message to receivers using RF signals. The 

receivers, in turn, relay the message to a computer for display. Id. 5:22-25. 

The transmitters send out data packets which are comprised of a “preamble,” followed by 

an “address,” followed by “data.” The preamble tells the designated receiver to “turn on”; this 

process is known as synchronization. The address identifies which transmitter is sending the 

message, and can sometimes also identify which receiver is the desired recipient. The data 

provides the underlying message (i.e. “smoke detected”). Each component part of the data packet 

is comprised of a series of 0s and 1s, known as “bits.” These bits are stored in designated

“registers” (“preamble register,” “address register,” “data register”). 

The bits move through the registers one at a time, pass through a resistor, and enter into an 

oscillator. As they enter the oscillator, they are modulated using the DSSS technique.1This 

technique involves the use of a “chip code” which takes each individual bit from the preamble, 

address, and data registers, and “spreads” them into a series of 1s and 0s – known as “chips” (the 

chip code is also stored in a dedicated register and passes through a resistor before entering the 

oscillator). For example, let us say that the chip code modulates every 1-bit into a series of five 1s 

(“11111”), and modulates every 0-bit into a series of five 0s (“00000”). The receivers are 

equipped with the same chip code as the transmitters, which allows them to decode the chips back 

into bits.

 

1

The parties disagree as to where the spreading actually occurs. Plaintiff contends that 

spreading occurs where the two resistors meet, see ’577 Patent Fig. 2 at R6, R7, while defendants 

claim that spreading occurs in the oscillator. See id. Fig. 2 at 2.

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An advantage of using the DSSS technique is that it spreads the bits into a longer pattern of 

chips, and thereby increases the likelihood that the intended RF signal makes it to the intended 

receiver. This is because the RF signals have to contend with interference (i.e. other RF signals, or 

electromagnetic waves) which may block part or all of the desired signal. Using the example 

above, if the transmitter were to send the message “11111,” and two of the three 1-chips were 

blocked by interference, the receiver would still be able to decode the message as a 1-bit. 

Conversely, if the transmitter did not employ DSSS, and simply sent a single 1-bit, it carries a 

greater risk that the entire message will be lost to interference. 

This process of using spread spectrum technology to modulate data packets comprised of a 

preamble, address, and data to send RF signals has been in existence for many decades. See e.g. 

Def. Exh. B, Kahn, Robert E., et al., Advances in Packet Radio Technology, Proceedings of the 

IEEE, Vol. 66 No. 11 (Nov. 1978); Def. Exh. C, Dickson, F.H., Packet Radio Communications, 

Quarterly Technical Report, NTIS #AD786155, Collins Radio Company (Sept. 1974). However, 

as will be discussed in further detail below, plaintiffs successfully distinguished the ’577 Patent 

from prior art during both of the reexaminations. 

North Peak asserts Claims 9, 12, 13 and 14 against defendants. These claims cover only 

the transmitters – not the sensors, receivers, or computer. The parties dispute the construction of 

nine terms that appear in these claims.

LEGAL STANDARD

I. Claim Construction Principles

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

372 (1996). Terms contained in claims are “generally given their ordinary and customary 

meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “[T]he ordinary and 

customary meaning of a claim term is the meaning that the term would have to a person of 

ordinary skill in the art in question at the time of the invention.” Id. at 1312. In determining the 

proper construction of a claim, a court begins with the intrinsic evidence of record, consisting of 

the claim language, the patent specification, and, if in evidence, the prosecution history. Id. at 

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1313; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “The 

appropriate starting point . . . is always with the language of the asserted claim itself.” Comark 

Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); see also Abtox, Inc. 

v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997).

Accordingly, although claims speak to those skilled in the art, claim terms are construed in 

light of their ordinary and accustomed meaning, unless examination of the specification, 

prosecution history, and other claims indicates that the inventor intended otherwise. See Electro 

Medical Systems, S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1053 (Fed. Cir. 1994). The 

written description can provide guidance as to the meaning of the claims, thereby dictating the 

manner in which the claims are to be construed, even if the guidance is not provided in explicit 

definitional format. SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 

F.3d 1337, 1344 (Fed. Cir. 2001). In other words, the specification may define claim terms “by 

implication” such that the meaning may be “found in or ascertained by a reading of the patent 

documents.” Vitronics, 90 F.3d at 1584 n.6.

In addition, the claims must be read in view of the specification. Markman, 52 F.3d at 

978. Although claims are interpreted in light of the specification, this “does not mean that 

everything expressed in the specification must be read into all the claims.” Raytheon Co. v. Roper 

Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). For instance, limitations from a preferred embodiment 

described in the specification generally should not be read into the claim language. See Comark, 

156 F.3d at 1187. However, it is a fundamental rule that “claims must be construed so as to be 

consistent with the specification.” Phillips, 415 F.3d at 1316. Therefore, if the specification 

reveals an intentional disclaimer or disavowal of claim scope, the claims must be read consistently 

with that limitation. Id.

Finally, the Court may consider the prosecution history of the patent, if in evidence. 

Markman, 52 F.3d at 980. The prosecution history limits the interpretation of claim terms so as to 

exclude any interpretation that was disclaimed during prosecution. See Southwall Technologies, 

Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995). In most situations, analysis of this 

intrinsic evidence alone will resolve claim construction disputes. See Vitronics, 90 F.3d at 1583. 

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Courts should not rely on extrinsic evidence in claim construction to contradict the meaning of 

claims discernable from examination of the claims, the written description, and the prosecution 

history. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) 

(citing Vitronics, 90 F.3d at 1583). However, it is entirely appropriate “for a court to consult 

trustworthy extrinsic evidence to ensure that the claim construction it is tending to from the patent 

file is not inconsistent with clearly expressed, plainly apposite, and widely held understandings in 

the pertinent technical field.” Id. Extrinsic evidence “consists of all evidence external to the 

patent and prosecution history, including expert and inventor testimony, dictionaries, and learned 

treatises.” Phillips, 415 F.3d at 1317. All extrinsic evidence should be evaluated in light of the 

intrinsic evidence. Id. at 1319.

II. Means-Plus-Function Terms

Means-plus-function terms are governed by 35 U.S.C. § 112(f):

An element in a claim for a combination may be expressed as a means or step for 

performing a specified function without the recital of structure, material, or acts in 

support thereof, and such claim shall be construed to cover the corresponding 

structure, material, or acts described in the specification and equivalents thereof.

Under this “provision, an applicant can describe an element of his invention by the result 

accomplished or the function served, rather than describing the item or element to be used (e.g., ‘a 

means of connecting Part A to Part B,’ rather than ‘a two-penny nail’).” Warner-Jenkinson Co. v. 

Hilton Davis Chem. Co., 520 U.S. 17, 27 (1997). When using the means-plus-function format, 

“[t]he applicant must describe in the patent specification some structure which performs the 

specified function.” Valmont Industries, Inc. v. Reinke Manufacturing Co., Inc., 983 F.2d 1039, 

1042 (Fed.Cir.1993). “The first step in construing such a limitation is a determination of the 

function of the means-plus-function limitation. The next step is to determine the corresponding 

structure described in the specification and equivalents thereof. Structure disclosed in the 

specification is ‘corresponding’ structure only if the specification . . . clearly links or associates 

that structure to the function recited in the claim.” Medtronic, Inc. v. Advanced Cardiovascular 

Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001) (internal quotations and citations omitted). It is 

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therefore not enough that structures be able to perform the corresponding function if they are not 

“clearly linked” in the specification. Id. “The ‘cost’ of using a § 112[f] function statement, 

especially if done unintentionally, is that the scope of the claim is restricted to the particular 

structures or acts disclosed in the specification, as well as their equivalents.” Cardiac Pacemakers, 

Inc. v. St. Jude Med., Inc., No. IP96-1718-C-H/G, 2000 WL 1765358, at *11 (S.D. Ind. Nov. 29, 

2000) (citing Personalized Media Communications, LLC v. International Trade Comm'n, 161 F.3d 

696, 703 (Fed.Cir.1998)). 

The burden of proof that a disputed claim is subject to § 112(f) rests with the party 

asserting the means-plus-function construction. Apex Inc. v. Raritan Computer, Inc., 325 F.3d 

1364, 1372 (Fed. Cir. 2003). While the use of the word “means” creates a presumption of a 

means-plus-function term, it is not by itself sufficient. Allen Eng’g Corp. v. Bartell Indus., Inc., 

299 F.3d 1336, 1347 (Fed.Cir. 2002) (“mere use of the word ‘means’ after a limitation, without 

more, does not suffice to make that limitation a means-plus-function limitation.”). The 

presumption is rebutted if the claim recites sufficient structure to perform the claimed function. 

Id.; Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996).

DISCUSSION

The asserted claims, with the disputed terms in bold are as follows:

9. An apparatus coupled to modulation means having a modulation input for modulating 

an RF signal with spread spectrum for reducing interference, for controlling said spread 

spectrum transmitter, said apparatus comprising:

chip-code-generation means coupled to the modulation input of said modulation 

means for storing a spread spectrum chip code, and outputting the spread spectrum chip 

code as a modulating voltage to the modulation input of said modulation means;

preamble means coupled to the modulation input of said modulation means for 

storing a preamble, and outputting the preamble as a modulating voltage to the modulation 

input of said modulation means;

address means coupled to the modulation input of said modulation means for 

storing a device address, and outputting the device address as a modulating voltage to the 

modulation input of said modulation means; and

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wherein said preamble means, and said address means, sequentially output the preamble, 

and device address, to the modulation input and the spread spectrum chip code from said 

chip code generating means spread the preamble, and device address at the modulation 

input to generate the spread spectrum of an RF signal, and wherein the preamble provides 

acquisition for spread spectrum snychronization of the spread spectrum of the RF signal, 

for demodulating the spread spectrum of the RF signal.

12. The apparatus as set forth in claim 9 further including error-detection means coupled to

said2data register for generating an error detection algorithm.

13. A method using processor means for controlling a spread spectrum transmitter having

an oscillator with a modulation input and an RF power amplifier with a keying input, 

comprising the steps, performed by said processor means, of:

storing a spread spectrum chip code in chip code generation means coupled to the 

modulation input of said oscillator;

outputting, during a transmitting interval, a preamble from a preamble register to 

the modulation input of said oscillator;

outputting, during a transmitting interval, a device address from an address

register coupled to the modulation input of said oscillator;

outputting simultaneously, during the transmitting interval, data from a data

register and the spread spectrum chip code stored in said chip code generation means, to 

the modulation input of said oscillator, thereby generating a spread spectrum signal 

including the data; and

generating an enabling signal and a keying signal during the transmitting interval, 

from a timing circuit coupled to the enable input of said oscillator and to the keying input 

of said RF power amplifier, for activating said oscillator and said RF power amplifier.

14. A method using processor means for controlling a spread spectrum transmitter having 

an oscillator with a modulation input, comprising the steps, performed by said processor 

means, of:

outputting, during a transmitting interval, a preamble from a preamble register to 

the modulation input of said oscillator;

outputting, during a transmitting interval, a device address from an address 

register coupled to the modulation input of said oscillator; and

outputting simultaneously, during the transmitting interval, data from a data 

register and a spread spectrum chip code stored in chip code generation means, to the 

 

2 At oral argument plaintiff noted that Claim 12 should read “a data register,” and that this 

mistake was due to a drafting error. 

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modulation input of said oscillator, thereby generating a spread spectrum signal including 

the data.

I. “Register” (Claims 12, 13, 14)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

“a designated or specific region of memory in a 

computer processor”

“a designated or specific region of memory in a 

computer processor, but not a regular memory, 

random access memory, or memory buffer”

As noted above, the registers referenced in the ’577 Patent store the component bits of the 

preamble, address, and data before they are modulated and sent out as RF signals. Defendants 

argue that the specification and prosecution history reflect the common understanding that 

registers are distinct from regular memory, random access memory, or memory buffers in a 

number of ways. Namely, that “unlike regular memory (which can hold large blocks of 

information), registers are too small to hold more than a few bytes” and are accessed by their name 

rather than through an address. Def. Opp’n at 6. 

During the reexamination process, North Peak was forced to distinguish the claims of the 

’577 Patent from prior art references in the Dickson and Kahn publications, which disclose

wireless transmitters that use DSSS to transmit packets that include a preamble, address, and data 

through RF signals. North Peak then argued that the references to “memory” in Kahn and Dickson 

did not anticipate the “registers” claimed in the ’577 Patent. See e.g. Def. Exh. E, ’577 2nd 

Reexam Response to Office Action at 22 (“The Dickson reference discloses that random access 

memory is used for ‘packet buffers.’ As is clear from the Dickson reference, the packet 

information is not stored in and outputted from the registers are [sic.] required in Claim 2.3”) 

(internal citations omitted); id. at 29 (“[The Kahn] disclosure fails to disclose separate, specific 

memory registers for the preamble, address, and data. It merely indicates that this information is 

in memory without distinguishing whether these three types of information are stored in a single 

register, multiple registers, or in some other memory structure . . . [T]he Kahn reference actually 

 

3 While this passage references Claim 2, this argument is incorporated by reference 

throughout the document as it relates to the claims at issue in this order.

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states: ‘When a packet is transmitted, the preamble, header and text are read from the 

microprocessor memory under direct memory access (DMA) control.’ No reference is made to any

‘register.’”) (emphasis in original); see also id. at 24, 25, 29, 32; Def. Exh. J, 2nd Reexam 

Interview Summary at 2 (“[T]he term ‘register’ has been explained to have a specific meaning 

which allegedly has not been taught by Dickson and Kahn . . . [North Peak] submitted that 

register cannot be any type of memory, hence storing information such as preamble or address in a 

regular memory would not anticipate claimed invention.”).

North Peak’s assertions during the second reexamination make clear that it believed that 

regular memory (including random access memory or memory buffers) was distinct from the 

“registers” claimed in the '577 patent. To argue otherwise would have been tantamount to 

conceding that many of the ’577 Patent’s claims were anticipated by prior art disclosed in the 

Dickson and Kahn publications. Indeed, the definition of “register” used by North Peak in its 

submissions during reexamination emphasizes the very attributes that defendants argue distinguish 

registers from regular memory — namely that registers are much smaller and are accessed by their 

name rather than by an address. North Peak then urged this definition of register:

[a] small, named region of high speed memory located within a microprocessor or any 

electronic device capable of storing binary data. A register is usually large enough to 

hold only a few bytes of information and is referenced in programs by a name such as 

AX or SF. It is used as a holding area for specific, sometimes critical, pieces of data or 

information related to activities going on within the system. For example, a register 

might be used to hold the results of an addition operation or to hold the address of a 

particular location in the computer’s memory.

North Peak’s’577 2nd Reexam Response to Office Action at 11 (citing Computer Dictionary at 

334, Microsoft Press (2d. Ed. 1994)).

A patentee can disavow claim scope “by clearly characterizing the invention in a way to 

try to overcome rejections based on prior art.” Computer Docking Station Corp. v. Dell, Inc., 519 

F.3d 1366, 1374 (Fed.Cir.2008). “Claims may not be construed one way in order to obtain their 

allowance and in a different way against accused infringers.” Spectrum Intern., Inc. v. Sterilite 

Corp., 164 F.3d 1372, 1379 (Fed.Cir.1998); see also Kilopass Tech. Inc. v. Sidense Corp., No. C 

10-02066 SI, 2012 WL 3545286, at *5-6 (N.D. Cal. Aug. 16, 2012) aff'd, 501 F. App'x 980 (Fed. 

Cir. 2013). While a prosecution disclaimer requires a “clear and unambiguous disavowal of claim 

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scope,” Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003), “applicants 

rarely submit affirmative disclaimers along the lines of ‘I hereby disclaim the following . . .’

during prosecution and need not do so to meet the applicable standard.” Saffran v. Johnson & 

Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013). Here, North Peak made numerous statements to the 

PTO which unambiguously reject the notion that “register” may be defined to include regular 

memory.4Its statements also reflect its understanding that one skilled in the art would interpret

registers to be distinct from regular memory, random access memory, or memory buffers.

While the Court generally agrees with defendants’ arguments as to claim scope, it cannot 

adopt defendants' proposed construction. Defendants’ construction is essentially a noninfringement argument under the thinly-veiled guise of claim construction. Moreover, defining a 

term by a non-exhaustive list of the things that it is not, is clumsy and imprecise solution. 

Therefore the Court will rely on the dictionary definition cited by North Peak during the 

prosecution, and define “register” to mean: “a small, named region of high speed memory located 

within a microprocessor or any electronic device capable of storing binary data. A register is 

usually large enough to hold only a few bytes of information and is referenced in programs by a 

name, rather than an address.”

II. “Preamble Register,” “Address Register,” and “Data Register” (Claims 12, 13, 14)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

No construction proposed. “an explicit register that stores and outputs the 

transmitted [data/address/preamble]”

Defendants argue that North Peak relied on the term “explicit register” to overcome prior 

art during the reexamination process, and that it should therefore be included in the definition. 

North Peak argues that the use of the modifier “explicit” is redundant and unnecessary. North Peak 

 

4 While the specification does at one point describe “chip words” being stored in random 

access memory, this portion of the written description relates to receivers, which are not covered 

by the claims at issue. Patent ’577 Patent 10:63-66.

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further argues that the term “transmitted” should be omitted from the definition because it gives 

the misleading impression that the data which is transmitted is the same as the data that is stored. 

While the term “explicit register” does not appear in the patent, the patent clearly 

contemplates the use of three separate registers, each dedicated to storing and outputting the 

preamble, address, and data, respectively. ’577 Patent 6:30-62. North Peak highlighted this feature 

of the invention to distinguish it from prior art throughout the prosecution history. See ’577 2nd 

Reexam Response to Office Action at 29 (“the Kahn reference fails to disclose the explicit register 

structure of Claim 25, which recites separate claim elements for a ‘preamble register,’ an ‘address 

register,’ and a ‘data register.’”); Def. Exh. G, Amendment to Application 3/20/1990 at 11 (“The 

difference between Eden et al. and the claimed invention, as stated by the Examiner, is the use of 

explicit registers to store the preamble, address, chip code and data to modulation.”). Accordingly, 

the use of the modifier “explicit” is not mere surplusage as North Peak suggests.

However, North Peak is correct to assert that “[t]here is no requirement in the claim that

the ‘preamble,’ ‘address,’ or ‘data information’ stored and outputted by those registers is the 

‘transmitted’ version of those values.” Pl. Brf. at 15. Indeed, as noted above, the bits that are 

stored and outputted by the registers are later “spread” using a chip code which converts them into 

a series of chips before they are transmitted. 

Therefore, the Court construes “[preamble/address/data] register” to mean “an explicit 

register that stores and outputs [preamble/address/data] information.” 

III. “Storing/Stored” (Claims 9, 12)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

No construction proposed. “writing/written”

North Peak argues that “stored” is used in its plain and ordinary sense as one skilled in the 

art would understand it. It suggests its plain meaning is “placed, retained, or inserted,” and 

therefore needs no further construction. Pl. Rep. at 7. Defendants propose construing “stored” to 

 

5

See nt. 3, supra.

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mean “written.” They reason that the only components described as performing the “storing” 

function are different types of memory. Defendants argue that “writing” connotes that the 

information is being stored to memory, and is therefore a more appropriate construction because 

every time the word stored is used in the patent it refers to registers or some other type of memory.

Def. Opp’n at 17. North Peak agrees that “writing/written” is a proper way to define storing 

information to memory; however it disagrees that the word “store/stored” is always used to 

describe memory. It cites Claims 13 and 14 which recite “storing” the chip code in a “chip code 

generation means.” North Peak argues that this chip code generation means could encompass a 

non-memory component such as hardware logic, and therefore cannot be characterized as being 

“written” to. However for the reasons stated below, see Section IV(B), infra, the Court disagrees 

that a “chip code generation means” can encompass a non-memory component. Accordingly, the 

Court construes “storing/stored” to mean “writing/written.”

IV. “Chip Code Generation Means” (Claims 9, 12, 13, 14)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

In Claims 9 and 12, means-plus-function:

Function: "storing a spread spectrum chip code, 

and outputting the spread spectrum chip code as 

a modulating voltage to the modulation input of 

said modulation input of said modulation 

means"

Structure: “a recirculating shift register, a shift 

register with exclusive ORed feedback taps, or 

the circuit of Fig. 3B, and equivalents”6

Means-plus-function:

Function: “(1) storing a spread spectrum chip 

code; (2) outputting the spread spectrum chip 

code as a modulating voltage to the modulation 

input of a modulation means or oscillator.”

Structure: “recirculating shift register (10) 

shown in Fig. 2 and described at 6:22-29, 

resistor R7 shown in Fig. 2 and described at 

6:40-42, and 7:64-8:5, and additional circuitry 

 

6

Plaintiff appends “and equivalents” to each of its proposed constructions of means-plusfunction terms. “An accused device with a structure that is not identical to the structure described 

in the patent will literally infringe the patent if the accused device performs the identical function 

required by the means-plus-function claim with a structure identical or equivalent to that described 

in the patent.” PCTEL, Inc. v. Agere Sys., Inc., No. C 03-2474 MJJ, 2005 WL 2206683, at *4 

(N.D. Cal. Sept. 8, 2005) (emphasis added). Structural equivalence under § 112[f] is, as noted by 

the Supreme Court, ‘an application of the doctrine of equivalents . . . in a restrictive role.’”

Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999) (citing Warner–

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In Claims 13 and 14: “circuitry that provides a 

chip code.”

required to store a spread spectrum chip code as 

shown in Fig. 2 and described at 7:20-30”

The parties agree that, as it is used in Claims 9 and 12, “chip code generation means” is a 

means-plus-function term subject to § 112(f); however, North Peak contends that it is not a meansplus-function term as employed in Claims 13 and 14. As to Claims 9 and 12, the parties essentially 

agree on the function, but present different proposed structures. 

A. Claims 9 and 12

Both parties agree that “a recirculating shift register” is a properly disclosed structure. 

However defendants argue that the structure should not include “shift register with ORed feedback 

taps” or “the circuit of Fig. 3B.” ’577 Patent 5:40-42. The specification discloses that a “chipcode-generation means may be embodied as a shift register with exclusive ORed feedback taps.” 

Id. However, “[u]nless the structures are clearly associated with the claimed function, they cannot 

be corresponding structures for purposes of § 112[f].” Omega Eng'g, Inc, v. Raytek Corp., 334 

F.3d 1314, 1332 (Fed. Cir. 2003). Nothing in the specification links a shift register with ORed

feedback taps to the function of storing or outputting a spread spectrum chip code, and it therefore 

cannot be a claimed structure. Cf. ’577 Patent 2:14-18 (“The recirculating register is coupled to the 

modulation input of the oscillator for storing the spread spectrum code. The recirculating register 

 

Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 28 (1997)). While claim construction 

is a matter of law, “[t]he scope of literally infringing ‘equivalents’ under § 112[f] is a factual 

determination” best reserved for a later stage of the litigation. Symbol Technologies, Inc. v. 

Opticon, Inc., 935 F.2d 1569, 1575 (Fed. Cir. 1991). Accordingly, the Court declines to include 

“and equivalents” in the construction of means-plus-function terms. See Carotek, Inc. v. 

Kobayashi Ventures, LLC, No. 07 CIV. 11163 NRB, 2011 WL 4056746, at *16 (S.D.N.Y. Sept. 8, 

2011) (“However, we do not agree that the ‘equivalent structures’ language should be expressly 

included in the definition of the claim term . . . [W]e agree with Kobayashi that the identification 

of equivalent structures is an analytical step that is distinct from the identification of structure in 

the specification and is more appropriately reserved for an infringement analysis.”); see e.g. 

Network Appliance, Inc. v. Bluearc Corp., No. C03-5665MHP, 2005 WL 6225197, at *6 (N.D. 

Cal. Jan. 7, 2005) (omitting “and equivalents” from construction of means-plus function term); but 

see WhatsApp Inc. v. Intercarrier Commc'ns, LLC, No. 13-CV-04272-JST, 2014 WL 5306078, at 

*9 (N.D. Cal. Oct. 16, 2014) (“WhatsApp offers no reason why the statutory language, ‘and 

equivalents thereof’ should not be included in the construction of this term.”).

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also outputs the spread spectrum chip code as a modulating voltage to the modulation input of the 

oscillator.”). North Peak’s desire to include “the circuit of Fig. 3B” as a structure fails for the same 

reason. The portion of the specification cited in support relates to receivers – not the transmitters 

that are covered by the claims at issue – and describes an entirely unrelated function. See id. 9:20-

25.

Defendants argue that North Peak has omitted from its proposed structure certain 

components that are necessary to carry out the disclosed function. Namely, they argue that the 

chip code is stored through “programming circuitry,” and that the chip code is output as a 

modulating voltage to the modulation input through “resistor R7.” In sum, defendants argue that 

resistor R7 is necessary to create the modulating voltage, and the programming circuitry is 

necessary to store the chip code, and therefore they must both be included as part of the structure. 

As it relates to whether resistor R7 is necessary to create modulating voltage, both parties 

cite the same passage: 

Included in the microprocessor 8 is a recirculating register 10 coupled to the 

modulation input of the voltage controlled oscillator through second resistor R7. 

The recirculating register 10 stores a spread spectrum chip code, and outputs, 

during a transmitting interval, the spread spectrum chip code as a modulating 

voltage to the modulation input of voltage controlled oscillator 2.

’577 Patent 6:22-29.

Read in isolation, the second sentence appears to indicate that the recirculating register 

supplies the voltage modulation, because it outputs the chip code “as a modulating voltage to the 

modulation input of voltage controlled oscillator 2.” However, we know from the first sentence 

that before reaching the modulation input, the chip code first passes through resistor R7. Resistor 

R7 is described elsewhere in the specification as playing a role in the voltage modulation process. 

See id. 8:1-5 (“The voltage swing in conjunction with a modulation setting second resistor R7

creates a proportional current which modulates voltage controlled oscillator 2 thereby generating a 

spread spectrum FSK signal.”) (emphasis added). Conversely, the specification never states that 

the recirculating register alone is capable of voltage modulation. Therefore, read in light of the 

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specification as a whole, one skilled in the art would understand that resistor R7 plays an “essential 

part” in creating the modulating voltage; it therefore must be included in the structure. See 

Globetrotter Software, Inc. v. Elan Computer Grp., Inc., 236 F.3d 1363, 1367-68 (Fed. Cir. 2001).

Next, defendants argue that programming circuitry is required to perform the storing 

function. The specification states that “during installation of the transmitter . . . a spread spectrum 

chip code stored in the recirculating register 10 are loaded via programming connector 16.” ’577 

Patent 7:20-24. However, this passage makes clear that the programing circuitry does not play any 

part in the storage process, but rather loads the chip code, which is subsequently stored in the 

recirculating register. While loading the chip code is a condition precedent to its storage, the 

programing circuitry plays no role in the function of storing itself. See Asyst Technologies, Inc. v. 

Empak, Inc., 268 F.3d 1364, 1371 (Fed. Cir. 2001) (“The corresponding structure to a function set 

forth in a means-plus-function limitation must actually perform the recited function, not merely 

enable the pertinent structure to operate as intended.”). 

Accordingly, the Court construes the function of “chip code generation means” to be: 

“storing a spread spectrum chip code and outputting the spread spectrum chip code as a 

modulating voltage to the modulation input of a modulation means or oscillator,” and the structure 

to be: “a recirculating shift register and second resistor R7.”

B. Claims 13 and 14

North Peak argues that “chip code generating means” is not a mean-plus-function term as it 

is used in claims 13 and 14. To prevail on this argument, it must overcome two presumptions: (1) 

the presumption that the word “means” denotes a means-plus-function claim, see Williamson v. 

Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015), and (2) the presumption that any given term 

carries the same meaning when used throughout the patent. “‘[T]he same terms appearing in 

different portions of the claims should be given the same meaning unless it is clear from the 

specification and prosecution history that the terms have different meanings at different portions 

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of the claims.’” Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 

1370, 1377 (Fed. Cir. 2004) (quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 

(Fed.Cir.2001)); Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1371 (Fed. Cir. 2005) (“Of 

course, this court interprets claim terms consistently throughout various claims of the same 

patent.”). North Peak’s only argument for construing the term differently is its unsupported

assertion that, in Claims 13 and 14, there is no corresponding function recited. However, Claims 

13 and 14 recite the same function as Claims 9 and 12, and the Court will therefore construe “chip 

code generating means” in the same fashion. See ’577 Patent 20:27-32, 36-40, 58-61.

V. “Preamble Means” (Claims 9, 12)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Means-plus-function:

Function: “storing a preamble, and outputting 

the preamble as a modulating voltage to the 

modulation input of said modulation means”

Structure: “a preamble register, and 

equivalents”

Means-plus-function:

Function: “(1)storing a preamble; (2) outputting 

the preamble as a modulating voltage to the 

modulation input of said modulation means”

Structure: “shift register 11 shown in Fig. 2 and 

described at 6:30-39, including coarse lock cells 

12 and fine lock cells 24, resistor R6 shown in 

Fig. 2 and described at 6:39-42 and 8:8-9, and 

additional circuitry required to store preamble 

as shown in Fig. 2 and described at 7:20-30”

The parties agree that “preamble means” is a means-plus-function limitation, and also 

agree on the recited function. However, the parties disagree as to the proper corresponding 

structure. At the core of this disagreement is a dispute over whether a preamble register alone is 

able to create a modulating voltage, and then deliver the preamble information as a modulating 

voltage to the modulation input. North Peak contends that it can, while defendants assert that this 

function also requires the use of the R6 resistor and programming circuitry shown in Fig. 2 of the 

specification. These are precisely the same arguments the parties marshaled in their dispute 

concerning the construction of “chip code generation means” in Claims 9 and 12. The only 

difference is that instead of second resistor R7 connecting the register to the modulation input, its 

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first resistor R6. See Section D, supra. 

North Peak relies heavily on the passage in the specification which states that “the 

preamble means can be embodied as a preamble register.” ’577 Patent 2:11-12; id 5:39-40 (same). 

However, this alone is insufficient to disclose structure because it makes no mention of “storing” 

or “outputting as a modulating voltage” and therefore fails to “clearly link[] or associate[] that 

structure to the function recited in the claim.” Medtronic, 248 F.3d at 1311.

Defendants cite the following passage to show that the R6 resistor is a necessary 

component in the voltage modulation process: 

The preamble register 11 is coupled to the modulation input of the voltage 

controlled oscillator 2 through first resistor R6. The preamble includes the coarse 

lock preamble and the fine lock preamble. The preamble register 11 stores a coarse 

lock preamble in cells 12 and a fine lock preamble in cells 24. The preamble 

register 11 outputs during the transmitting interval, the coarse lock preamble and 

the fine lock preamble as a modulating voltage to the modulation input of the 

voltage controlled oscillator 2 through first resistor R6. First resistor R6 and second 

resistor R7 are chosen such that the desired spreading from the chip code and the 

data coming from the preamble register 11 is achieved.

’577 Patent 6:30-42

This passage puts into relief that resistor R6 is indeed necessary to create a modulating 

voltage and ouput the information to the modulation input. Defendants also urge the Court to find 

that the programing circuitry is necessary to accomplish the storing function; however, for the 

reasons stated in its construction of “chip code generation means,” the Court finds this argument 

unpersuasive. 

Accordingly, the Court construes the function of “preamble means” to be: “storing a 

preamble, and outputting the preamble as a modulating voltage to the modulation input of said 

modulation means,” and construes the structure to be: “a preamble register and resistor R6.”

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VI. “Address Means”

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Means-plus-function:

Function: “storing a device address, and 

outputting the device address as a modulating 

voltage to the modulation input of said 

modulation means”

Structure: “an address register, and equivalents”

Means-plus-function:

Function: “(1) storing a device address; (2) 

outputting the device address as a modulating 

voltage to the modulation input of said 

modulation means”

Structure: “shift register 14 coupled through 

preamble register as shown in Fig. 2 and 

described at 6:43-50, resistor R6 shown in Fig. 

2 and described at 6:39-42 and 8:8-9 and 

additional circuitry required to store an address

as shown in Fig. 2 and described at 7:20-30”

As North Peak notes, “[t]he parties’ dispute for the term ‘address means’ tracks the 

disputes for ‘preamble means’ and ‘chip code generation means.’” Pl. Rep. at 12. Accordingly, 

for the reasons stated in construing those two terms, the Court construes the function of “address 

means” as “storing a device address, and outputting the device address as a modulating voltage to 

the modulation input of said modulation means,” and construes the structure to mean “an address 

register coupled through a preamble register and resistor R6.”

VII. “Modulation Means” (Claim 9, 12)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

Means-plus-function:

Function: “modulating an RF signal with spread 

spectrum for reducing interference”

Structure: “a voltage controlled oscillator, a 

tuned oscillator with a PSK modulator, or 

Means-plus-function:

Function: “modulating an RF signal with spread 

spectrum for reducing interference”

Structure: “a voltage controlled oscillator as 

shown in Fig. 2, element 2, and described at 

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equivalents thereof” 5:60-68 and 8:1-8, or a capacitor and inductor 

tuned oscillator with PSK modulator, as 

described at 6:9-10”

The parties agree that “modulation means” is a means-plus-function limitation, and agree 

on the recited function. The parties further agree that one of the recited structures is “a voltage

controlled oscillator.” As to the second structure, North Peak would omit “capacitor and inductor” 

from defendants’ proposed construction. The entire disclosure reads: “The voltage controlled 

oscillator 2 also can be replaced by a capacitor and inductor tuned oscillator and a phase shift 

keyed modulator, or any other means for generating a signal.” ’577 Patent 6:7-11. North Peak 

makes two arguments in support of its proposed construction: (1) it cites comments it made during 

the prosecution supporting its own construction, and (2) it notes that it is proposing a narrower 

construction than what it is entitled to, given that it has omitted the “or any other means for 

generating a signal” language from its proposal. 

During the course of the first reexamination, plaintiff espoused the same construction as it 

does today. See Pl. Exh. C at 23. However, the “the scope of [a means-plus-function] claim is not 

limitless, but is confined to structures expressly disclosed in the specification and corresponding 

equivalents.” Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed. Cir. 1991). 

Therefore, having availed itself of the convenience of expressing a claim element in means-plusfunction format, North Peak cannot now rely on self-serving statements made during the

prosecution to broaden the scope of the structure beyond what was actually disclosed in the 

specification. Next, omitting the vague catch-all “or any other means for generating a signal” from 

its proposed construction is hardly a concession given that it would almost certainly fail meet the 

requisite of § 112(f) which dictates that the “corresponding structure must include all structure that 

actually performs the recited function.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 

1106, 1119 (Fed. Cir. 2002). 

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Accordingly, the Court construes the function of “modulation means” to be: “modulating 

an RF signal with spread spectrum for reducing interference,” and the structure to be: “a voltage 

controlled oscillator, or a capacitor and inductor tuned oscillator with phase shift key (“PSK”)

modulator.”

VIII. “Modulating an RF Signal” (Claims 9, 12)

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

No construction necessary; plain and ordinary 

meaning.

“spreading7preamble, address, and data bits 

with a spread spectrum chip code at RF, not at 

baseband”

North Peak argues that “modulating an RF signal” requires no construction because one of 

ordinary skill in the art would understand what the term means. However, North Peak provides no 

technical evidence in support of this contention, nor does it provide evidence of a definition of 

what one skilled in the art would understand the disputed term to mean. Moreover, given the 

technical nature of the term, failing to construe “modulating an RF signal” would risk falling short 

of the Court’s duty to “ensure that the jury fully understands the court's claim construction rulings 

and what the patentee covered by the claims.” Power-One, Inc. v. Artesyn Technologies, Inc., 599 

F.3d 1343, 1348 (Fed. Cir. 2010), (quoting Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 

1366 (Fed.Cir.2004)).

Claim 9 describes “an apparatus coupled to modulation means having a modulation input 

for modulating an RF signal with spread spectrum for reducing interference, for controlling said 

 

7 Defendants originally proposed to use the word “combining,” but informed the Court at 

oral argument that they would agree to change their proposed construction to “spreading” to 

address North Peak’s concerns. 

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spread spectrum transmitter.” (emphasis added). Claim 9 later describes using the chip code to 

spread the preamble and address to generate an RF signal. See id. (“the spread spectrum chip code 

from said chip code generating means spread[s] the preamble, and device address at the 

modulation input to generate the spread spectrum of an RF signal.”). The plain language of the 

claim describes modulating an RF signal – rather than a base band signal, or some other type of 

signal. It also discloses spreading the preamble and address at the modulation input. Additionally, 

the specification describes the preamble, address, and data information being output sequentially 

and later being modulated by a chip code. See ’577 Patent 6:30-62. Indeed, this is precisely how 

the patentees described the invention during the application process: “The spread spectrum chip 

code from the chip code generating means spreads the preamble, device address, and information 

data, simultaneously, at the modulator to generate the spread spectrum of an RF signal.”

Amendment to Application 3/20/1990 at 11.

Defendants also point to the prosecution history of the continuation ’058 Patent, wherein 

two inventors of the ’577 Patent distinguish their invention from other spread spectrum 

transmitters that spread the signal at baseband. See Def. Exh. H at 26-27 (“Conventional spread 

spectrum transmitters created a spread signal at baseband and then up-converted the signal through 

mixers injected with local oscillators to obtain the desired transmit frequency. This requires 

expensive mixer, filter and local oscillator components or other multiplication devices. The instant 

invention does not require the use of these extra components, and thus has much greater 

commercial practicality.”) (internal citations omitted). Defendants have also introduced evidence 

showing that an inventor of the ’577 Patent agrees that the specification discloses an apparatus that 

creates a spread signal at the RF carrier frequency. Def. Exh. F, Rouquette Depo at 199:1-12 (Q: 

“Now would you agree that what’s shown there in Figure 2 is not creating a spread signal at 

baseband and then upconverting it?” A: “I agree...It is creating the spread signal at the RF carrier 

frequency.”).

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While the Court recognizes that the prosecution history supports the notion that the

modulation occurs at RF, this must be weighed against the language of the patent itself which is 

largely silent on that issue. The patent speaks of modulating “an RF signal” at “the modulation 

input” but does not describe whether that modulation occurs at RF, at baseband, or some other 

frequency. Furthermore, Mr. Roquette’s testimony goes to a preferred embodiment, not the claims 

themselves. Therefore the Court declines to include the “at RF” language proposed by defendants. 

This issue of whether modulation occurs at baseband or at RF is a question of infringement 

rather than of claim construction, and its resolution will require a more fully developed record. 

Accordingly, the Court construes “modulating an RF signal” to mean “spreading the preamble, 

address, and data bits with a spread spectrum chip code to modulate an RF signal.” 

IX. “Oscillator with a Modulation Input”

Plaintiff’s Proposed Construction Defendants’ Proposed Construction

No construction necessary; plain and ordinary 

meaning.

“a voltage controlled oscillator whose 

frequency control input is used as a modulation 

input”

Defendants urge the Court to define “oscillator” to mean a “voltage controlled oscillator” 

with a “frequency control” input. While the specification does disclose this embodiment, it also 

discloses other embodiments, such as a “capacitor and inductor tuned oscillator and a phase shift 

keyed modulator.” ’577 Patent 6:9-10. Defendants' proposed construction would improperly read 

limitations from the specification into the claims. While claims must be read in light of the 

specification, it is “improper[] [to] add a limitation appearing in the specification and the 

drawings, but not appearing in the unambiguous language of the claim.” Gart v. Logitech, Inc., 

254 F.3d 1334, 1343 (Fed. Cir. 2001).

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North Peak urges the Court that “oscillator with a modulation input” needs no 

construction. While the parties do not explicitly agree on this point, defendants’ proposed 

construction makes no attempt to define these terms, but rather parrots the terms and adds 

additional limitations. Therefore, it appears that defendants agree that the term used in its ordinary 

sense would be understood by one skilled in the art.

“In some cases, the ordinary meaning of claim language . . . may be readily apparent even 

to lay judges, and claim construction in such cases involves little more than the application of the 

widely accepted meaning of commonly understood words.” Id. at 1314. However, in many cases, 

the meaning of a claim term as understood by persons of skill in the art is not readily apparent. O2 

Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (citing 

Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed.Cir.2005)). Here, the parties appear to agree 

that the meaning of “oscillator with a modulation input” is “readily apparent.” Therefore, the 

Court will not construe the term beyond its plain and ordinary meaning. However, the Court may 

find it necessary to construe the term at a later stage of the litigation, should the parties find 

themselves in disagreement about its meaning. 

CONCLUSION

The Court construes the disputed terms as follows.

Term Construction

register a small, named region of high speed memory located 

within a microprocessor or any electronic device capable 

of storing binary data. A register is usually large enough to 

hold only a few bytes of information and is referenced in 

programs by a name, rather than an address

[preamble/address/data] 

register

an explicit register that stores and outputs 

[preamble/address/data] information

storing/stored writing/written

chip code generation means Function: storing a spread spectrum chip code and 

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outputting the spread spectrum chip code as a modulating 

voltage to the modulation input of a modulation means or 

oscillator

Structure: a recirculating shift register and second resistor 

R7

preamble means Function: storing a preamble, and outputting the preamble 

as a modulating voltage to the modulation input of said 

modulation means

Structure: a preamble register and resistor R6

address means Function: storing a device address, and outputting the 

device address as a modulating voltage to the modulation 

input of said modulation means

Structure: an address register coupled through a preamble 

register and resistor R6

modulation means Function: modulating an RF signal with spread spectrum 

for reducing interference

Structure: a voltage controlled oscillator, or a capacitor and 

inductor tuned oscillator with PSK modulator

modulating an RF signal spreading the preamble, address, and data bits with a 

spread spectrum chip code to modulate an RF signal

oscillator with a modulation 

input

No Construction; ordinary meaning. However, the Court 

reserves the right to construe the term at a later stage 

should it become necessary.

IT IS SO ORDERED.

Dated: August 28, 2015

______________________________________

SUSAN ILLSTON

United States District Judge

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