In the Matter of 

Certain Wireless Devices With 3G 

Capabilities and Components 

Investigation No. 337-TA-800 

Publication 4475 June 2014 

U.S. International Trade Commission 

Washington, DC 20436 
U.S. International Trade Commission 

COMMISSIONERS 

Irving A. Williamson, Chairman 

F. Scott Kieff, Commissioner 

Rhonda K. Schmidtlein, Commissioner 

Dean A. Pinkert, Commissioner 

David S. Johanson, Commissioner 

Meredith Broadbent, Commissioner 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436 
U.S. International Trade Commission 

Washington, DC 20436 

www.usitc.gov 

In the Matter of 

Certain Wireless Devices With 3G 

Capabilities and Components 

Investigation No. 337-TA-800 

Publication 4475 June 2014 
UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

In the Matter of

CERTAIN WIRELESS DEVICES WITH 3G

CAPABILITIES AND COMPONENTS

THEREOF

Investigation N0. 337-TA-800

NOTICE OF COMMISSION DETERMINATION TO GRANT AN UNOPPOSED

MOTION BY COMPLAINANTS TO WITHDRAW THE COMPLAINT AS TO THE

REMAINING RESPONDENTS; TERNIINATION OF THE INVESTIGATION

AGENCY: U.S. Intemational Trade Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that the U.S. Intemational Trade Commission has

determined to grant an unopposed motion by complainants to withdraw the investigation as to the

following remaining respondents: LG Electronics, Inc. of Seoul, Republic of Korea; LG

Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey; and LG Electronics Mobilecomm

U.S.A., Inc. of San Diego, Califomia (collectively, “LG”). The investigation is terminated in its

entirety.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General

Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,

telephone (202) 205-3042. Copies of non-confidential documents filed in connection with this

investigation are or will be available for inspection during official business hours (8:45 a.m. to

5:15 p.m.) in the Office of the Secretary, U.S. Intemational Trade Commission, 500 E Street, S.W.,

Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the

Commission may also be obtained by accessing its Internet server at httQ://wwwusitc. gov. The

public record for this investigation may be viewed on the Commission’s electronic docket (EDIS)

at httg."//edis.usirc.gov. Hearing-impaired persons are advised that infonnation on this matter can

be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on

Augist 31, 2011, based on a complaint filed by InterDigital Communications, LLC of King of

Prussia, Pennsylvania; InterDigital Technology Corporation of Wilmington, Delaware; and IPR

Licensing, Inc. of Wilmington, Delaware (collectively, “InterDigital”). 76 Fed. Reg. 54252

(Aug. 31, 2011). The complaint alleged violations of section 337 of the Tariff Act of 1930, as

amended 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and

the sale within the United States after importation of certain wireless devices with 3G capabilities
and components thereof by reason of infringement of certain claims of United States Patent Nos.

7,349,540 (terminated from the investigation); 7,502,406 (the ’406 patent); 7,536,013 (the ’013

patent); 7,616,970 (the ’970 patent); 7,706,332 (the ’332 patent); 7,706,830 (the ’830 patent); and

7,970,127 (the ’127 patent). The notice of investigation named several respondents. The

complaint and notice of investigation were subsequently amended to allege infringement of certain

claims of United States Patent No. 8,009,636 (the ’636 patent) and to add the LG entities as

respondents. 76 Fed. Reg. 81527 (Dec. 28, 2011). The complaint and notice of investigation

were further amended to include an additional respondent. 77 Fed. Reg. 26788 (May 7, 2012).

InterDigital Communications, LLC subsequently moved for leave to amend the Complaint

and Notice of Investigation to reflect the fact that it converted from a Pennsylvania limited liability

company to a Delaware corporation, and changed its name to InterDigita1 Communications, Inc.

The ALJ issued an ID granting the motion and the Commission determined not to review. See

Order No. 91 (Jan. 17, 2013); Notice of Conmiission Determination Not to Review an Initial

Determination Granting Complainants’ Motion for Leave to Amend the Complaint and Notice of

Investigation (Feb. 4, 2013).

On J1me4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to

terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June 4,

2012). The Commission determined not to review. InterDigita1appealed LG’s termination from

this investigation, and the Federal Circuit reversed the Commission’s detennination. InterDigital

Commc ’ns, LLC v Int’! Trade Comm ’n, 718 F.3d 1336 (Fed. Cir. 2013). The mandate issued on

October 10, 2013, returning jurisdiction to the Commission.

On June 28, 2013, the ALJ issued his final initial determination (“ID”), finding no violation

of section 337 by respondents whose products were adjudicated (“Adjudicated Respondents”).

On December 19, 2013, the Commission determined to affirm the ALJ’s finding of no violation of

section 337 as to those respondents with the modifications set forth in a Commission opinion that

issued on December 20, 2013. The Commission adopted the ALJ’s findings that the ’970, ’013,

and ’127 patents are invalid in light of the prior art. However, due to the LG remand, the

Commission noted that all other issues, namely, validity of the ’830, ’636, ’406, and ’332 patents,

domestic industry, and FRAND continue to remain under review.

On January 13, 2014, InterDigital moved to withdraw the complaint as to LG. On January

23, 2014, the Commission investigative attorney filed a response in support of the motion. That

same day, LG filed a response stating that it does not oppose the motion.

Having reviewed the motion and responses, the Commission has determined to grant the

motion. The motion complies with the requirements of Commission Rule 210.21 (19 C.F.R

§ 210.21) and includes the required statement that there are no agreements, written or oral, express

or implied, between the parties concerning the subject matter of this investigation. In addition,

there appear to be no extraordinary circumstances that would compel denying the motion.

Certain Ultrafiltration Membrane Sys. and Components Thereoy’,Inv. No. 337-TA-107,

Conunission Action and Order, at 2 (Mar. 11, 1982). As all the parties observe, terminating the

investigation as to LG will conserve substantial public and private resources. Under these

2
circumstances, termination of LG will not adversely affect the public health and welfare,

competitive conditions in the U.S. economy, the production of like or directly competitive articles

in the United States, or U.S. consumers.

In its December 19, 2013, notice terminating the Adjudicated Respondents, the

Commission noted that due to the LG remand, issues pertaining to the validity of the Power Ramp

Up (the ’830 and ’636 patents) and Power Control (the ’406 and ’332 patents) patents as well as

domestic industry and FRAND remained under review. The Commission has determined to

adopt the ALJ’s finding in the final ID that the Adjudicated Respondents failed to establish by

clear and convincing evidence that the ’830, ’636, ’406, and ’332 patents are invalid. The

Conunission has determined to take no position on whether InterDigita1established a domestic

industry as required by 19 U.S.C. § 1337(a)(2). In view of its finding that Adjudicated

Respondents did not violate section 337 because of non-infringement and the withdrawal of the

remaining respondents, the Commission has also determined to take no position on the FRAND

issues. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission.

. . is at perfect liberty to reach a ‘no violation’ determination on a single dispositive issue. That

approach may often save the Commission, the parties, and this court substantial umiecessary

effort”).

The authority for the Commission’s determination is contained in section 337 of the Tariff

Act of 1930, as amended (19 U.S.C. § 1337), and in sections 210.21, 210.42-46 and 210.50 ofthe

Commission’s Rules ofPractice and Procedure (19 C.F.R. §§ 210.21, 210.42-46 and 210.50).

By order of the Commission.

fl@@

Lisa R. Barton

Acting Secretary to the Commission

Issued: February 12, 2014

3
CERTAIN WIRELESS DEVICES WITH 3G CAPABILITIES Inv. N0. 337-TA-800

AND COMPONENTS THEREOF

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand

upon the Commission Investigative Attorney, Brian Koo, Esq., and the following parties as

indicated on February 12, 2014. W/#

Lisa R. Barton, Acting Secretary

U.S. International Trade Commission

500 E Street, SW, Room I12

Washington, DC 20436

On Behalf of Complainants InterDigitaI Communications,

Inc., InterDi2ital Technology Corporation, IPR Licensing,

Inc. and InterDigital Holdings, Inc.:

Maximilian A. Grant, Esq.

LATHAM & WATKINS LLP

555 Eleventh Street, NW, Suite 1000

Washington, DC 20004

) Via Hand Delivery

) Via Express Delivery

) Via First Class Mail

) Other:

On Behalf of Respondents Huawei Technologies Co., Ltd.,

Huawei Device USA, Inc., and FutureWei Technologies. Incj:

Sturgis M. Sobin, Esq.

COVINGTON & BURLING LLP

1201 Pennsylvania Avenue, Nwv

Washington, DC 20004-2401

) Via Hand Delivery

) Via Express Delivery

) Via First Class Mail )Omen?

On Behalf of Respondents ZTE Corporation and ZTE (USA)

Inc.:

Jay H. Reiziss, Esq.

BRINKS GILSON & LIONE

1775 Pennsylvania Ave., Suite 900

Washington, DC 20006-2219

) Via Hand Delivery

) Via Express Delivery

) Via First Class Mail )Otherzg

On Behalf of Respondents Nokia Corporation and Nokia Inc.:

Jamie D. Underwood, Esq.

ALSTON &BIRD LLP

950 F Street, NW

Washington, DC 20004

) Via Hand Delivery

) Via Express Delivery

) Via First Class Mail

) Other:
CERTAIN WIRELESS DEVICES WITH 3G CAPABILITIES Inv. N0. 337-TA-800

AND COMPONENTS THEREOF

Cenificate of Service —Page 2

On Behalf of LG Electronics. Inc., LG Electronics USA. Inc.

and LG Electronics Mobilecomm USA, Inc.:

Richard A. Sterba, Esq.

FISH & RICHARDSON PC

1425 K Street NW, 11“‘Floor

Washington, DC 20005

) Via Hand Delivery

) Via Express Delivery

) Via First Class Mail

) Other:
PUBLIC VERSION

In the Matter of

CERTAIN WIRELESS DEVICES WITH 3G

CAPABILITIES AND COMPONENTS

THEREOF

Investigation No. 337-TA-800

COMMISSION OPINION

I. INTRODUCTION

On June 28, 2013, the presiding administrative law judge (“ALJ”) (Judge Shaw) issued

his final initial determination (“ID”) in this investigation] The ALJ found no violation of

section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, as amended, by respondents Huawei

Technologies Co., Ltd. of Shenzhen, China; Huawei Device USA of Plano, Texas (“Huawei

Device”); FutureWei Technologies, Inc. d/b/a Huawei, Technologies (USA) of Plano, Texas

(together “Huawei”); Nokia Corporation of Espoo, Finland; Nokia Inc. of White Plains, New

York (together “Nokia”); ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of

Richardson, Texas (together “ZTE”) (collectively, “Adjudicated Respondents”) in connection

with claims 1, 2, 3, and 5 of U.S. Patent No. 7,706,830 (“the ’830 patent”); claims 1, 2, 4, and 6­

8 ofU.S. Patent No. 8,009,636 (“the ’636 patent”); claims 6, 13, 20, 26, and 29 ofU.S. Patent

No. 7,502,406 (“the ’406 patent”); claims 2-4, 7-11, 14, 22-24, and 27 of U.S. Patent No.

7,706,332 (“the ’332 patent”); claims 1-7 of U.S. Patent No. 7,970,127 (“the ’l27 patent”);

claims 16-19 of U.S. Patent No. 7,536,013 (“the ’013 patent”); or claims 1-18 of U.S. Patent No.

7,616,970 (“the ’970 patent”). On September 4, 2013, the Commission determined to review the

' The ID was served on July 1, 2013.
PUBLIC VERSION

final ID in its entirety and requested briefing on a single issue concerning domestic industry. 78

Fed. Reg. 55294 (Sept. 10, 2013).

Upon review of the ID, the Commission has determined to affinn the ALJ’s finding of no

violation of section 337 as to the Adjudicated Respondents, i.e., Huawei, Nokia, and ZTE.

Specifically, with respect to the Power Ramp-Up patents (the ’83Oand ’636 patents), the

Commission (1) affirms the ALJ’s findings that the accused products do not satisfy the

“successively sends transmissions” limitation as construed to mean “transmits to the base station,

one after the other, codes that are shorter than a regular length code” to the extent that the

“successively sends transmissions” refer to the short codes and (2) for the ’636 patent vacates the

ALJ’s findings regarding the “subsequent transmission" limitation. With respect to the Power

Control Patents (the ’406 and ’332 patents), the Commission modifies the ALJ’s construction of

the claim temi “power control bit” to mean “single-bit power control information transmitted at

an APC data rate equivalent to the APC update rate” and construes the limitation to encompass

only “single-bit power control infonnation.” The Commission adopts the ALJ’s findings that

the ’127, ’013, and ’970 patents are invalid in view of prior art. The Commission supplements

and modifies the ID as discussed below.

The Commission notes that this investigation is still pending with respect to certain

respondents. Thus, except for non-infringement of Adjudicated Respondents’ products, all

issues pertaining to the Power Ramp-Up patents (the ’406 and ’332 patents) and Power Control

patents (the ’83Oand ’636 patents) including domestic industry continue to remain under review.

2
PUBLIC VERSION

II. BACKGROUND

A. Procedural History

The Commission instituted this investigation on August 31, 2011, based on a complaint

filed by complainants lnterDigital Communications, LLC of King of Prussia, Permsylvania;2

lnterDigital Technology Corporation of Wilmington, Delaware; and IPR Licensing, Inc. of

Wilmington, Delaware (collectively, “InterDigital”). 76 Fed. Reg. 54252 (Aug. 31, 2011). The

complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in the

importation into the United States, the sale for importation, and the sale within the United States

after importation of certain wireless devices with 3G capabilities and components thereof that

infringe one or more of claims 1-15 of U.S. Patent No. 7,349,540 (“the ’540 patent”); claims 1, 2,

6-9, 13, 15-16, 20-22, 26, 28-30, 34-36, and 40 ofthe ’406 patent; claims 1-19 ofthe ’013 patent;

claims 1-18 ofthe ’970 patent; claims 1-27 ofthe ’332 patent; claims 1-3, 5-8, 10, 16-18, 20-23,

and 25 of the ’830 patent; and claims 1-14 of the ’127 patent. Id. The notice of investigation

named the following respondents: Huawei (except Huawei Device), Nokia, and ZTE. Id.

The Office of Unfair Import Investigations (“OUII”) was also named as a party to this

investigation. However, pursuant to the Supplement to the Strategic Human Capital Plan 2009­

2013, issued by the Commission on January 18, 2012, OUII provided notice that its participation

2 lnterDigital Communications, LLC subsequently moved for leave to amend the

Complaint and Notice of Investigation to reflect the fact that it converted from a Pennsylvania

limited liability company to a Delaware corporation, and changed its name to lnterDigital

Communications, Inc. The AL] issued an ID granting the motion and the Commission

determined not to review. See Order No. 91 (Jan. 17, 2013); Notice of Commission

Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave

to Amend the Complaint and Notice of Investigation (Feb. 4, 2013).

3
PUBLIC VERSION

in this investigation “will be limited to issues relating to U.S. Patent Nos. 7,349,540, 7,536,013,

and 7,970,127, as well as issues relating to Respondents‘ patent misuse and/or FRAND defenses.”

See Commission Investigative Staff’s Notice of Partial Participation (Jan 18, 2012).

On December 5, 2011, the ALJ issued an ID, granting a motion by InterDigital to amend

the complaint and notice of investigation (1) to add allegations of infringement of claims 1-4, 6-9,

and 29-31 of the ’636 patent and (2) to name LG Electronics, Inc.; LG Electronics U.S.A., Inc.;

and LG Electronics Mobilecomm U.S.A., Inc. (collectively, “LG”) as respondents. See Order

No. 5 (Dec. 5, 2011). The Commission detennined not to review. See Notice of Commission

Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave

to Amend the Complaint and Notice of Investigation (Dec. 21, 2011); 76 Fed. Reg. 81527 (Dec.

28, 2011).

On April 11, 2012, the ALJ issued an ID, granting a motion by InterDigital to amend the

complaint and notice of investigation to add Huawei Device as a respondent. See Order No. 19

(Apr. 11, 2012). The Commission determined not to review. See Notice of Commission

Determination Not to Review an Initial Determination Granting Complainants’ Motion for Leave

to Amend the Complaint and Notice of Investigation (May 1, 2012); 77 Fed. Reg. 26788 (May 7,

2012).

On June 4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to

terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June

4, 2012). The Commission determined not to review. See Notice of Commission Determination

Not to Review an Initial Detennination Terminating Certain Respondents From the Investigation

4
PUBLIC VERSION

(July 6, 2012). InterDigita1appealed LG’s termination from the investigation, and the Federal

Circuit reversed the Commission’s determination. InterDigital Commc’ns,LLC v Int ’l Trade

Comm ’n,718 F.3d 1336 (Fed. Cir. 2013). LG subsequently filed a combined petition for panel

rehearing and rehearing en bane. On October 3, 2013, the Court denied the petition. 1nterDigiIal

C0mmc’ns, LLC v. Int ’l Trade Comm ’n,No. 12-1628 (Fed. Cir. Oct. 3, 2013). The mandate

issued on October 10, 2013, returning jurisdiction to the Commission. This investigation is still

pending as to LG.

On July 24, 2012, the ALJ granted a motion by InterDigital to terminate the investigation

in part as to claims 1-15 ofthe ‘O13patent; claims 8-14 ofthe ’127 patent; all claims ofthe ’540

patent; claims 1, 2, 9, 16, 28, 30, 34-36, and 40 ofthe ’406 patent; claims 5, 6, 12, 13, 15-20, 25,

and 26 ofthe ’332 patent; and claims 16-18, 20-23, and 25 ofthe ’830 patent. See Order No. 38

(July 24, 2012). The Commission determined not to review. See Notice of Commission

Determination Not to Review an Initial Detennination Terminating Certain Claims From the

Investigation (Aug. 9, 2012).

On January 3, 2013, the ALJ granted a motion by InterDigital to terminate the

investigation in part as to claims 7, 8, 15, 21, and 22 of the ’406 patent; claims 1 and 21 of

the ’332 patent; and claims 6-8 and 10 ofthe ’83Opatent. See Order No. 87 (Jan. 3, 2013). The

Commission determined not to review. See Notice of Commission Determination Not to Review

an Initial Determination Terminating Certain Claims From the Investigation (Jan. 23, 2013).

The ALJ held an evidentiary hearing from February 12, 2013 through February 22, 2013,

and thereafter received post-hearing briefing from the parties.

5
PUBLIC VERSION

On June 28, 2013, the ALJ issued his final ID, finding no violation of section 337 by the

Adjudicated Respondents. Specifically, the ALJ found that the Commission has subject matter

jurisdiction, in rem jurisdiction over the accused products, and inpersonam jurisdiction over the

respondents. ID at 15. The ALJ also found that the importation requirement of section 337 (19

U.S.C. § 1337(a)(1)(B)) has been satisfied. Id. at 16. The ALJ, however, found that the

Adjudicated Respondents’ accused products do not infringe asserted claims 1-3 and 5 of the ’830

patent; asserted claims 1, 2, 4, 6, 7, and 8 of the ’636 patent; asserted claims 6, 13, 20, 26, and 29

of the ’406 patent; asserted claims 2-4, 7-11, 14, 22-24, and 27 of the ’332 patent; asserted

claims 1-7 of the ’127 patent; asserted claims 16-19 of the ’0l3 patent; or asserted claims 10-18

ofthe ’970 patent. See ID at 59-69, 141-168, and 240-257.

The ALJ concluded that the Adjudicated Respondents’ accused products satisfy each

limitation of claims 1-9 of the ’970 patent but found that all the asserted claims, claims 1-18, of

the ’97Opatent are invalid in view of the prior art. See id. at 315-339, 345-381. He also found

that asserted claims 1-7 of the ’127 patent and asserted claims 16-19 of the ’013 patent are

invalid in view of the prior art. See id. at 260-286. The ALJ found that the Adjudicated

Respondents failed to establish by clear and convincing evidence that the asserted claims of

the ’83O, ’636, ’406 or ’332 patents were invalid in light of the cited prior art references. See id.

at 74-94, 191-208. The ALJ also found that the Adjudicated Respondents failed to prove that

they hold licenses under the asserted patents and failed to prevail on their equitable/FRAND

defenses.

The ALJ further found that InterDigita1established the existence of a domestic industry

6
PUBLIC VERSION

that practices the asserted patents under 19 U.S.C. § 1337(a)(2). See ID at 20, 31, 45, and 58.

The ALJ issued his recommended determination on remedy and bonding on July 10, 2013.

On July 15, 2013, InterDigital filed a petition for review of the ID, challenging a number

of the ALJ’s findings. See Complainant InterDigital’s Petition for Review of the Final Initial

Determination (“InterDigital Pet.”). Specifically, InterDigital sought review of the ALJ’s finding

that the accused products do not infringe the asserted claims of the ’830, ’636, ’406, and ’332

patents. Id. InterDigital also challenged the ALJ’s finding that the ’97Opatent is invalid in view

of the cited prior art. Id. Also on July 15, 2013, the Commission investigative attorney and the

Adjudicated Respondents filed separate petitions for review challenging the ALJ’s finding that

InterDigital established the presence of a domestic industry that practices the asserted patents.

See Petition of the Office of Unfair Import Investigations for Review of the Initial Determination

on Violation of Section 337; See Respondents’ Petition for Review on Domestic Industry and

Contingent Petition for Review of Other Issues. Respondents also filed a contingent petition for

review. See id.

On July 23, 2013, the parties filed responses to the petitions for review. See Respondents

Response to InterDigital’s Petition for Review of the Initial Determination on Violation (“Resp.

Rep.”); Respondents’ Response to Office of Unfair Import Investigations’ Petition for Review of

the Initial Determination on Violation of Section 337; Complainant InterDigital’s Response to

the Respondents’ and the Staff s Petitions for Review of the Final Initial Determination;

Response of the Office of Unfair Import Investigations to the Private Parties’ Petition for Review

of the Initial Determination on Violation of Section 337.

7
PUBLIC VERSION

On September 4, 2013, the Commission determined to review the final ID in its entirety

and requested briefing on a single issue concerning domestic industry. 78 Fed. Reg. 55294 (Sept

10, 2013).

On September 27, 2013, the parties filed written submissions on the issue under review.

See Complainant InterDigital’s Response to Notice of Commission Determination to Review,

Dated September 4, 2013; Response of the Office of Unfair Import Investigations to the

Commission’s Question; Respondents’ Brief Addressing Domestic Industry Issues Raised in

Commission’s Decision of September 4, 2013. On October 21, 2013, the parties filed reply

submissions.3 See Complainant InterDigital’s Reply Regarding the Notice of Commission

Determination to Review, Dated September 4, 2013; Reply of the Office of Unfair Import

Investigations to the parties’ Responses to the Commission’s Question; Respondents’ Reply

Brief Addressing Domestic Industry Issues Raised in Commission’s Notice of September 4,

2013.

B. Patents and Technology at Issue

The technology at issue in this investigation generally relates to wireless commtmications

devices with Third Generation (“3G”) cellular capabilities, and components thereof. ID at 7

(citing CX-1310C (Prucnal WS) at Q58). 3G describes a family of technologies that fulfills the

International Mobile Telecommunications-2000 specifications (“IMT-2000”) defined by the

International Telecommunication Union (“ITU”). Id. Two of the most widely adopted 3G

systems are based on code division multiple access (“CDMA”) technology, i.e., Wideband

3The delay in filing responses was due to the govermnent shutdown.

8
PUBLIC VERSION

CDMA (“WCDMA”) developed by the Third Generation Partnership Project (“3GPP”) and

CDMA2000 developed by the Third Generation Partnership Project 2 (“3GPP2”). Id

The ’83Opatent entitled “Method and Subscriber Unit for Performing an Access

Procedure” issued on April 27, 2010. The patent names Fatih M. Ozluturk and Gary R. Lomp as

the inventors. ’830 patent (JX-6). The patent describes a way in which a subscriber unit gains

access to a cellular CDMA system. Id. at Abstract. InterDigital owns the patent and has asserted

independent claim 1 and dependent claims 2, 3, and 5 in this investigation.

The ’636 patent entitled “Method and Apparatus for Performing an Access Procedure”

issued on August 30, 2011. ’636 patent (JX-7). The patent names Fatih Ozluturk and Gary R.

Lomp as the inventors. The patent describes a way in which a subscriber unit gains access to a

cellular CDMA system. Id. at Abstract. InterDigita1 owns the ‘636 patent and has asserted.

independent claim 1 and dependent claims 2 and 4-8 in this investigation. The ’636 patent and

the ’830 patent are related to the same technology, and share a common specification. The

patents are collectively referred to as the “Power Ramp-Up” patents.

The ’406 patent, entitled “Automatic Power Control System for a Code Division Multiple

Access (CDMA) Communications System” issued on March 10, 2009. ’406 patent (JX—l). The

patent names Gary Lomp, Fatih Ozluturk, and John Kowalski as the inventors. The patent

describes automatic power control for a CDMA system. Id. at Abstract. InterDigital owns the

patent and has asserted independent claim 29 and dependent claims 6, 13, 20, and 26, which

depend respectively from independent claims 1, 7, 15, and 21, and dependent claim 22 in this

investigation.

9
PUBLIC VERSION

The ’332 patent entitled “Method and Subscriber Unit for Performing Power Control”

issued on April 27, 2010. ’332 patent (JX-2). The patent names Fatih Ozluturk and Gary Lomp

as the inventors. The patent describes a way in which subscriber units and base stations

communicate to control the power level of transmissions fiom the base station to a subscriber

unit within a cellular CDMA system. Id. at Abstract. InterDigital owns the ’332 patent and has

asserted independent claim 8 with its dependent claims 9, 10, 11, and 14, as well as dependent

claims 2, 3, 4, 7, 22-24, and 27 in this investigation. These claims depend from non-asserted

independent claims 1 and 21. The ’332 patent and the ’406 patent are related, and the two

patents are collectively referred to as the “Power Control” patents.

The ’127 patent, entitled “User Equipment Identification Specific Scrambling” issued on

June 28, 2011. ’127 patent (JX-4). The patent names Stephen G. Dick, Nader Bolourchi, and

Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink

Packet Access (HSDPA) used in 3G WCDMA systems. Id. at Abstract. 1nterDigital owns that

patent and has asserted independent claim 1 and dependent claims 2-7 in this investigation.

The ’013 patent entitled “User Equipment Identification Specific Scrambling” issued on

May 19, 2009. ’O13patent (JX-3). The patent names Stephen G. Dick, Nader Bolourchi, and

Sung-Hyuk Shin as the inventors. The patent describes aspects of the High Speed Downlink

Packet Access (HSDPA) used in 3G WCDMA systems. Id. at Abstract. InterDigital owns

the ’013 patent and has asserted independent claim 16 and dependent claims 17-19 in this

investigation. The ’O13patent is related to the ’127 patent and the two patents are referred to as

the “UE ID” patents.

1 0
PUBLIC VERSION

The ’970 patent entitled “Dual Mode Unit for Short Range, High Rate and Long Range,

Lower Rate Data Communications” issued on November 10, 2009. ’970 patent (JX-5). The

patent names Thomas E. Gorsuch as the inventor. The patent describes short-range, higher speed

and long-range, lower speed wireless communications. Id. at Abstract. The ’97Opatent is

referred to as the “Dual Mode Subscriber” patent. InterDigital owns the patent and has asserted

independent claims 1 and 10, and dependent claims 2-9 and 11-18 in this investigation. 4

C. Products at Issue

lnterDigital has accused about 150 devices of infringement in this investigation. ID at 7.

Each of the accused products is designed to operate with either the WCDMA standard, the

CDMAZOOOstandard, or both standards. Id. The accused products can be grouped into three

categories according to the baseband processor used in the device: the “Qualcomm accused

products” use baseband processors developed by Qualcomm, the “Nokia/TI accused products”

use baseband processors developed by Nokia and manufactured by Texas Instruments, and the

[ ] Id. For a

complete list of accused products, see ID at 7-15.

4As noted above, the ALJ found that the ’970, ’0l3, and ’127 patents are invalid in view

of the prior art. InterDigital petitioned for review of the ALJ’s findings with respect to the ’970

patent but did not petition for review of the findings regarding the ’Ol3 patent or ’127 patent. By

not petitioning for review of the findings pertaining to the ‘O13and ’127 patents, InterDigital has

waived its right to challenge those findings. Allied Corp. v. U S. Int ’l Trade Comm ’n, 850 F.2d

1573, 1580 (Fed. Cir. 1988). With respect to the ’970 patent, the Commission finds

InterDigital’s petition unpersuasive and adopts the ALJ’s findings.

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III. DISCUSSION OF ISSUES UNDER REVIEW

The Power Ramp-Up Patents (’830 & ’636 Patents)

InterD1g1talhas asserted independent claim 1 and dependent claims 2, 3, and 5 of

the ’830 patent 1Ilthis investigation. Claim 1 of the ’830 patent recites:

1 A wireless code division multiple access (CDMA) subscriber unit

comprising:

a transmitter configured such that, when the subscriber unit is first

accessing a CDMA network and wants to establish communications

with a base station associated with the network over a communication

channel to be indicated by the base station, the transmitter successively

sends transmissions prior to the subscriber unit receiving from the

base station an indication that at least one of the successively sent

transmissions has been detected by the base station;

wherein each of the successively sent transmissions is produced using

a sequence of chips, wherein the sequence of chips is not used to

increase bandwidth;

the transmitter further configured such that the transmitter sends to the

base station a message indicating to the base station that the subscriber

unit wants to establish the communications with the base station over

the communication channel to be indicated by the base station, the

message being sent only subsequent to the subscriber unit receiving

the indication;

wherein at least two of the successively sent transmissions are

produced using different sequences of chips;

wherein each of the successively sent transmissions is shorter than the

message; and

wherein each of the successively sent transmissions and the message

are produced using portions of a same sequence of chips, wherein the

same sequence of chips is not used to increase bandwidth.

830 patent, col 10, l. 54 —col. ll, l. 16 (claim 1) (emphasis added).

InterD1g1talalso asserted independent claim 1 and dependent claims 2, 4, and 6-8 of

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the 636 patent in this investigation. Claim 1 of the ’636 patent recites:

1 A wireless code division multiple access (CDMA) subscriber unit

comprising:

a transmitter configured such that, when the subscriber unit is first

accessing a CDMA network, the transmitter successively sends

transmissions wherein each of the transmissions are derived from a

first length of a plurality of chips until the subscriber unit receives

from a base station associated with the network an indication that at

least one of the transmissions has been detected by the base station;

and

the transmitter further configured such that, subsequent to the

subscriber unit receiving the indication, the transmitter sends a

subsequent transmission derived from a second length of the plurality

of chips, wherein the first length is less than the second length.

636 patent, col 10, ll. 48 —64 (claim 1) (emphasis added).

1 Construction of Disputed Claim Terms

a Applicable Law on Claim Construction

Claim construction begins with the plain language of the claim. Claims should be given

their ordinary and customary meaning as understood by a person of ordinary skill in the art,

viewing the claim terms in the context of the entire patent. Phillips v. AWHCorp, 415 F.3d

1303 1312-13 (Fed. Cir. 2005) (en banc).

In some instances, claim terms do not have particular meaning in a field of art, and claim

construction involves little more than the application of the widely accepted meaning of

commonly understood words. Phillips, 415 F.3d at 1314. “ln such circinnstances, general

purpose dictionaries may be helpful.” Id. In many cases, however, claim terms have a

specialized meaning, and it is necessary to determine what a person of skill in the art would have

understood the disputed claim language to mean. Id. “Because the meaning of a claim term as

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understood by persons of skill in the art is often not immediately apparent, and because patentees

frequently use terms idiosyncratically, the coult looks to ‘those sources available to the public

that show what a person of skill in the art would have understood disputed claim language to

mean.’” Id. (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111

1116 (Fed. Cir. 2004)). The public sources identified in Phillips include “the Wordsof the

claims themselves, the remainder of the specification, the prosecution history, and extrinsic

evidence concerning relevant scientific principles, the meaning of technical terms, and the state

of the art.” Id.

In cases in which the meaning of a claim term is uncertain, the specification usually is the

best guide to the meaning of the term. Id. at 1315. As a general rule, the particular examples or

embodiments discussed in the specification are not to be read into the claims as limitations.

Markrnan v. WestviewInstruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), afi”d, 517

U.S. 370 (1996). The specification is, however, always highly relevant to the claim construction

analysis, and is usually dispositive. Phillips, 415 F.3d at 1315 (quoting Viironics Corp. v.

Conceplronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Moreover, “[t]he construction that

stays true to the claim language and most naturally aligns with the patent’s description of the

invention will be, in the end, the correct construction.” Id. at 1316.

Claims are not necessarily, and are not usually, limited in scope to the preferred

embodiment. RF Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1263 (Fed. Cir.

2003); Decisioningcom, Inc. v. Federated Dep ’tStores, Inc., 527 F.3d 1300, 1314 (Fed. Cir.

2008) (“[The] description of a preferred embodiment, in the absence of a clear intention to limit

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claim scope, is an insufficient basis on which to narrow the claims”). Nevertheless, claim

constructions that exclude the preferred embodiment are “rarely, if ever, correct and require

highly persuasive evidentiary support.” Vitronics, 90 F.3d at 1583. Such a conclusion can be

mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a

clear disclaimer by the patentees during patent prosecution. Elekta Instrument S.A. v. 0. U.R. Sci.

Int ’l,Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed.

Cir. 2002).

If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence

may be considered. Extrinsic evidence consists of all evidence external to the patent and the

prosecution history, and includes inventor testimony, expert testimony, and learned treatises.

Phillips, 415 F.3d at 1317. Inventor testimony can be useful to shed light on the relevant art. In

evaluating expert testimony, a court should discount any expert testimony that is clearly at odds

with the claim construction mandated by the claims themselves, the written description, and the

prosecution history. Id. at 1318. Extrinsic evidence may be considered if a court deems it

helpful in detennining the true meaning of language used in the patent claims. Id.

b. Construction of the Claim Term “SuccessivelySends Transmissions”

i. The ID

The claim term “successively sends transmissions” appears in the asserted claims of both

the ’83Oand ’636 patents. See ’830 patent (JX-6) at col. 10,1. 54 —col. 11,1. 16; ’636 patent

(JX-7) at col. 10, ll. 49-63. The ALJ construed the claim term to mean “transmits to the base

station, one after the other, codes that are shorter than a regular length code,” adopting the

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construction proposed by the Adjudicated Respondents. ID at 22-25. In construing the claim

term, the ALJ pointed to the specification and noted that it describes “transmissions” from the

subscriber unit to the base station as follows:

As the base station 14 transmits the pilot code 40 (step 100), the

base station 14 searches (step 101) for an “access code” 42

transmitted by a subscriber unit 16. The access code 42 is a known

spreading code transmitted from a subscriber unit 16 to the base

station 14 during initiation of communications and power ramp-up.

’830 patent, col. 6, ll. 14-20. The ALJ further referenced the specification’s description of a

preferred embodiment:

The preferred embodiment of the present invention utilizes ‘short

codes’ and a two-stage communication link establishment

procedure to achieve fast power ramp-up without large power

overshoots. The spreading code transmitted by the subscriber unit

16 is much shorter than the rest of the spreading codes (hence the

term short code), so that the number of phases is limited and the

base station 14 can quickly search through the code. The short

code used for this purpose carries no data.

Id. at col. 7, lns. 36-44. The ALJ concluded that “[t]hese passages from the ’830 specification

make clear that the claimed ‘transmissions’ from the subscriber unit to the base station comprise

codes” and that at “no point does the specification indicate that the claimed transmissions are

generalized ‘RF emissions,’ as proposed by InterDigital.” ID at 24 (citing Compls. Br. at 38-39).

The ALJ further found that the patents “disclose that the codes successively transmitted

during the random access process (i.e., the short codes) are neither modulated with data, nor used

to modulate data.” ID at 24-25 (citing RX-3526C (Lanning WS) at Q69,Q92-95, Q130-132;

CX-1309C (Jackson WS) at Q625; Jackson Tr. 119, 177, 178; Haas Tr. 1822, 1823-1826; RX3999C (Lanning RWS) at Ql32-134, Ql41-143; see also InterDz'gital C0mmc’ns, LLC v. Int ’l

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Trade Comm ’n,690 F.3d 1318, 1326 (Fed. Cir. 2012) (“As noted, the specification describes

various codes, such as pilot codes and short codes, as ‘spreading codes’ even though they carry

no data and are not intended to do so.”); id. at 1326 ‘(findingthat experts confirmed that the short

codes and the access codes described in the specification do not spread, or modulate, data)).

That is, the ALJ found that the “codes” themselves are what are successively transmitted, not

codes modulated with data.

The ALJ discounted lnterDigital’s argument that “Respondents’ expert Mr. Lanning

defines the term ‘code’ as used in Respondents’ construction as a specific type of code,

specifically one that is “not modulated by data,”’ stating that the phrase “not modulated by data”

does not appear in any of Adjudicated Respondents’ proposed constructions. ID at 25. The ALJ

observed that “Mr. Lamiing does not distinguish codes that can be modulated by data from those

that cannot be modulated by data.” Id. Rather, “Mr. Larming testified that a code modulated by

data is no longer a code, i.e., the transmission of a code modulated by data is not the transmission

of a code.” Id. (citing RX-3999C (Lamiing RWS) at Q152).

ii. InterDigital’s Petition

InterDigital filed a petition for review, challenging the ALJ’s claim construction and

arguing that the ALJ improperly restricts the plain meaning of the word “transmission.”

InterDigital Pet. at 11. According to InterDigital, “transmission” means “RF emissions” or

“signals,” not “codes shorter than a regular length code,” as construed by the ALJ. Id.

Specifically, InterDigital contends that nothing in the intrinsic evidence suggests that the

patentees intended to limit the ordinary meaning of “transmission” and accuses the ALJ of

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violating the basic rule of claim construction by permitting a preferred embodiment to restrict the

ordinary meaning of the claim term. Id. at 17-18 (citing ID at 23-24).

InterDigital further argues that the intrinsic evidence supports its construction and points

to the original application from which the patents derive. Id. at 19. That application included

claims reciting “transmitting a periodic signal” and according to InterDigital shows that the

specification contemplates “transmitting ‘signals,’ which requires a broader construction of the

claim term ‘transmissions’ than the ALJ’s construction of ‘codes that are shorter than a regular

length code.” Id. InterDigital also argues that the ALJ observed incorrectly that under its

proposed construction the claim “tenn ‘transmissions’ can be generalized ‘RF emissions?” Id.

at 21 (emphasis omitted). InterDigital asserts that the claim itself, particularly the surrounding

language, make clear that the RF emissions are specific and not general. Id. (citing ’830 patent,

claim 1).

iii. Adjudicated Respondents’ Response

In response, the Adjudicated Respondents argue that the ALJ’s construction finds support

in the intrinsic evidence, expert testimony, and the Federal Circuit’s opinion in a related

investigation, InterDigital Comma ‘ns,LLC v. Int ’l Trade Comm ’n, 690 F.3d 1318, 1326 (Fed.

Cir. 2012) (“InterDigital I”). Resp. Rep. at 5. Adjudicated Respondents point out that the

Federal Circuit found, consistent with InterDigital’s arguments, that “the specification makes

clear [that the initiation codes] are not used to spread signals.” Id. at 7 (citing InterDigital I, 690

F.3d at 1325; Haas Tr. 1825:17-1826114; Jackson Tr. 178115-21).

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iv. Analysis

The Commission finds InterDigital’s arguments unpersuasive and adopts the ALJ’s

construction of the claim term “successively sends transmissions” to mean “transmits to the base

station, one after the other, codes that are shorter than a regular length code.” This construction

is supported by both the intrinsic and extrinsic evidence of the patents. ID at 22-25.

lnterDigita1 argues that the ALJ’s construction is incorrect because it improperly restricts

the plain meaning of the word “transmissions,” which according to 1nterDigitalmeans “RF

emissions” or signals. InterDigital Pet. at 11. While “transmissions” may mean “RF emissions”

(Lanning Tr. at 1080:3-17; CX-1309C (Jackson WS) at 694, 696-97) the claim limitation in

dispute recites “successively sends transmissions” not merely “transmissions,” and the Federal

Circuit has explained that claims should be given their ordinary and customary meaning as

understood by a person of ordinary skill in the art, viewing the claim tenns in the context of the

entire patent. Phillips v. AWHC0rp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en bane). In the

context of the ’830 and ’636 patents, “successively sends transmissions” refers to transmitting

short codes to the base station. The “summary of the invention” for both the ’830 and ’636

patents states that

The present invention comprises a novel method of controlling

transmission power during the establishment of a channel in a

CDMA communication system by utilizing the transmission of a

short code from a subscriber unit to a base station during initial

power ramp-up. The short code is a sequence for detection by the

base station which has a much shorter period than a conventional

spreading code. The ramp-up starts from a power level that is

guaranteed to be lower than the required power level for detection

by the base station. The subscriber unit quickly increases

transmission power while repeatedly transmitting the short code

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until the signal is detected by the base station.

’830 patent, col. 3, ll. 17-29; ’636 patent, col. 3, ll. 16-28. In other words, the patent teaches that

the “successively sends transmissions” refers to “repeatedly transmitting the short code.”

Consistent with the summary of the invention, the specification describes a preferred

embodiment where

[w]hen a communication link is desired, the subscriber unit 16

starts transmitting a short code at the minimum power level . . . and

continuously increases the transmission power level while

retransmitting the shoit code until it receives an acknowledgement

from the base station 14 that the short code has been detected by

the base station.

’83Opatent, col. 7, ll. 60-65. As the ALJ found, the disclosures of the ramp-up patents “make

clear that the claimed ‘transmissions’ from the subscriber unit to the base station comprise codes,”

in particular short codes, and at “no point do[] the specification[s] indicate that the claimed

transmissions are generalized ‘RF emissions,’ as proposed by InterDigital.” ID at 24.

In addition, the language of the claims provides fLu'thersupport. Claim 1 of the ’83O

patent describes “a transmitter configured such that, when the subscriber unit is first accessing a

CDMA network and wants to establish communications with a base station . . . the transmitter

successively sends transmissions prior to the subscriber unit receiving from the base station an

indication that at least one of the successively sent transmissions has been detected by the base

station,” and that “each of the successively sent transmissions is shorter than the message.” ’83O

patent, col. 10, 11.56-64; col. 11, ll. 11-12. That is, the claim itself establishes that the

“successively sends transmissions” limitation refers to transmitting short codes.

Moreover, the extrinsic evidence also supports the ALJ’s construction of “successively

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sends transmissions” to mean “transmits to the base station, one after the other, codes that are

shorter than a regular length code.” Indeed, InterDigital’s own expert admitted that the

“successively sent transmissions” of claim l refers to the short codes. Jackson Tr. l76:25-177:5

(Q. All right. Now, the successively sent transmissions of claim l, those are the short codes

described in the 830 patent, correct? A. Yes, the repeated transmissions of the short code are the

successively sent transmissions.). *

The ALJ’s construction finds support in both the intrinsic and extrinsic evidence of the

patent. Accordingly, the Commission adopts the construction and declines InterDigital’s

invitation to change it.

2. Whether the Accused Products Infringe the Asserted Claims of the Power

Ramp-Up Patents (’830 & ’636 Patents)

a. Applicable Law on Infringement

Direct infringement of a patent under 35 U.S.C. § 271(a) consists of making, using,

offering to sell, or selling a patented invention without consent of the patent owner or importing

a patented invention into the United States without consent of the patent owner. Section 337

prohibits “the importation into the United States, the sale for importation, or the sale within the

United States after importation . . . of articles that infringe a valid and enforceable United States

patent. . . .” 19 U.S.C. § l337(a)(1)(B).

A detennination of patent infringement encompasses a two-step analysis. Advanced

Cardiovascular Sys., Inc. v. Scimed Life Sys., Ina, 261 F.3d 1329, 1336 (Fed. Cir. 2001). First,

the court detennines the scope and meaning of the patent claims asserted, and then the properly

construed claims are compared to the allegedly infringing device. Id. Each patent claim element

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or limitation is considered material and essential to an infringement determination. See London v.

Carson Pirie Scott & C0., 946 F.2d 1534, 1538 (Fed. Cir. 1991). “Literal infringement ofa

claim exists when each of the claim limitations reads on, or in other words is found in, the

accused device.” Allen Eng. Corp. v. Bartell Indus, 299 F.3d 1336, 1345 (Fed. Cir. 2002). To

prove direct infringement, the plaintiff must establish by a preponderance of the evidence that

one or more claims of the patent read on the accused device either literally or under the doctrine

of equivalents. Scimed, 261 F.3d at 1336.

In a section 337 investigation, the complainant bears the burden of proving infringement

of the asserted patent claims by a preponderance of the evidence. Certain Flooring Products,

Inv. No. 337-TA-443, Commission Notice of Final Determination of No Violation of Section

337, 2002 WL 448690 at 59, (March 22, 2002); Enercon GmbH v. Im"l Trade Comm ’n, 151 F.3d

1376 (Fed. Cir. 1998).

b. Whether the Accused Products Satisfy the “SuccessivelySends

Transmissions” Limitation

i. The ID

The ALJ noted that each asserted claim of the Power Ramp-Up patents recites the

“successively sends transmissions” limitation, construed to mean “transmits to the base station,

one after the other, codes that are shorter than a regular length code.” ID at 53. Under that

construction, the ALJ found that the accused WCDMA Products do not satisfy the limitation and

consequently, found no infringement. Specifically, the ALJ observed that for all the WCDMA

accused products, lnterDigital identifies the PRACH (Physical Random Access Channel)

preambles as the claimed “successively sent transmissions” and found that PRACH Preamble is

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not the transmission of a code. Id. (citing RX-3999C (Lanning RWS) at Q31O-311).

The ALJ explained that, “as set forth in the 3GPP WCDMA standard, the PRACH

preambles are composed of a scrambling code that scrambles a repeated signature” and that each

“repeated signature comprises data, indicating at least the Access Service Class for that particular

handset.” Id. (citing RX-3999C (Lanning RWS) at Q310, Q312-317; RX-3964 (3GPP TS

25.331) at §§ l0.3.6.52-lO.3.6.55; Certain 3G Mobile Handsets and Components Th€V€O_f;Inv.

No. 337-TA-613, USITC Pub. No. 4145, Initial Determination at 92 (“[T]he administrative law

judge finds that the PRACH preamble is modulated by data as the signal as modulated by the

scrambling code uniquely identifies the cell.”). Because the PRACH preamble is modulated by

data, the ALJ found that it did not meet the claim limitation, stating:

Inasmuch as the adopted construction of “successively sends

transmissions” requires that the transmissions comprise codes, and

inasmuch as the PRACH preamble comprises a repeated data

signature scrambled by a code, it is determined that the WCDMA

Accused Products do not satisfy this claim limitation under the

adopted construction because the PRACH preamble is not a code.

ID at 53-54.

ii. InterDigital’s Petition

As noted above, lnterDigital challenges the ALJ’s construction of the claim term

“successively sends transmissions,” and invites the Commission to reject the ALJ’s construction

in favor of its proposed construction. lnterDigital also argues that even under the ALJ’s

construction, the accused WCDMA products infringe. lnterDigital Pet. at 14. Specifically,

lnterDigital contends that the ALJ’s non-infringement finding depends on his view that a code

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modulated by data is outside the scope of the asserted claims. Id. InterDigital disagrees and

points to the Federal Circuit’s decision in 1nterDigital I. InterDigital explains that the patents at

issue in that appeal “share a common specification with the ’830 and ’636 patents” and that the

Federal Circuit found that a “code” is simply “a sequence of bits” or a “sequence of chips.” Id

at 15. InterDigital asserts that the Federal Circuit’s ruling, which is binding on the Commission,

does not suggest that “short codes cannot be modulated by data” but instead ruled that the

intrinsic evidence lacks a restrictive definition or disclaimer for “code.” Id. (citing InterDigital I,

690 F.3d at 1326). Thus, InterDigital states that “[W]henthe Federal Circuit’s controlling

construction of the Word ‘code’ is applied to the ALJ’s construction of the disputed claim term,

the PRACH preambles in the Accused WCDMA Products are ‘successively sent transmissions.’”

Id. at 16.

iii. Adjudicated Respondents’ Response

Adjudicated Respondents contend that the ALJ correctly relied on evidence that the

transmission of a code modulated by data is not the transmission of a code, and because the

accused products [

Resp. Rep. at 2-3. (citing RX-3999C (Lanning RWS) at Q.152).

Adjudicated Respondents further argue that the Federal Circuit’s opinion in Im‘erDigital I

is not to the contrary. Adjudicated Respondents explain that in InterDigi1al I the Federal Circuit

rejected a construction of the claim term “code” that limited the term to spreading codes but that

the Court did not conclude as a factual matter that a code that has been modulated with data is

still a code. Id. at 5 (citing InterDigital I, 690 F.3d at 1326). Adjudicated Respondents further

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point to the Federal Circuit’s statement in InterDigital I, agreeing with InterDigital, that “[t]he

specification makes clear [that the initiation codes] are not used to spread data signal.” Id. at 7

(citing InterDigital, 690 F.3d at 1325; Haas Tr. at l825:17-1826:14; Jackson Tr. at 178:15-21.

Adjudicated Respondents also point to the Federal Circuit’s reasoning that “the specification

describes various codes, such as pilot codes and short codes, as ‘spreading codes even though

they carry no data and are not intended to do so. If a code carries no data, i.e, it is not modulated

with a data signal, there is no signal whose bandwidth is increased or intended to be increased.”

Id. (citing InterDigital I, 690 F.3d at 1326). Adjudicated Respondents note that in its brief to the

Federal Circuit in InterDigital I, InterDigital “emphasized several times that the short codes and

access codes do not modulate data.” Id. at 10. Adjudicated Respondents add that testimony in

this investigation supports the ALJ’s finding that the short codes do not modulate data. Id. at 8

(citing Jackson Tr. at 176125-178124; 178:15-21; Haas Tr. at 1822:l1-182516).

iv. Analysis

In our view, the ALJ’s finding that the accused products do not satisfy the “successively

sends transmissions” limitation as construed to mean “transmits to the base station, one after the

other, codes that are shorter than a regular length code” is correct. This construction recognizes

that the “successively sends transmissions” limitation refers to the transmission of short codes,

and the parties do not dispute that the short codes do not modulate data and are not intended to

do so. The record evidence, however, demonstrates that the [ ].

Thus, in our view, the ALJ’s non-infringement finding is correct.

However, as InterDigital notes, in reaching his non-infringement determination, the ALJ

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PUBLIC VERSION

relied on his understanding that the transmission of a code modulated by data is not the

transmission of a code. See ID at 24-25 (relying on RX-3999C (Lanning RWS) at Q152).

Specifically, the AL] stated that under the adopted construction of “successively sends’

transmissions the WCDMA Accused Products do not infringe this limitation because [

]” ID at 53 (citing RX-3999C

(Lanning RWS) at Q3l0-311). In our view, the ALJ’s distinguishing between transmission of

codes modulated by data and transmission of codes not modulated by data, and referring only to

the latter as “codes” is unnecessary and confusing.

As noted above, we agree with the ALJ’s claim construction, which does not include the

phrase “not modulated by data.” We further agree with the ALJ’s finding that the patents

“disclose that the codes successively transmitted during the random access process (i.e., the short

codes) are neither modulated with data, nor used to modulate data.” ID at 24-25 (citing

RX-3526C (Lanning WS) at Q69,Q92-95, Ql30-132; CX-1309C (Jackson WS) at Q625;

Jackson Tr. 119, 177, 178; Haas Tr. 1822, 1823-1826; RX-3999C (Lanning RWS) at Ql32-134,

Q141-143; see also InterDigital Commc ’ns,LLC v. Int’! Trade Comm ’n,690 F.3d 1318, 1326

(Fed. Cir. 2012) (“As noted, the specification describes various codes, such as pilot codes and

short codes, as ‘spreading codes’ even though they carry no data and are not intended to do so.”);

id. at 1326 (finding that experts confinned that the short codes and the access codes described in

the specification do not spread, or modulate, data)). I

The ALJ concluded that “[i]nasmuch as the adopted construction of ‘successively sends

transmissions’ requires that the transmissions comprise codes, and inasmuch as [

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PUBLIC VERSION

] it is determined that the

WCDMA Accused Products do not satisfy this claim limitation under the adopted construction

because the PRACH preamble is not a code.” ID at 53-54. We agree with the ALJ to the extent

“code” refcrs to “short code,” but not with the ALJ’s conclusion that codes that modulate date

arc not actually codes. The Ramp-Up Patents disclose various “codes,” and do not teach that

codes that modulate data are not codes. For example, the ’83()patent states that “[e]ach

subscriber unit’s baseband data signal is multiplied by a code sequence, called the ‘spreading

code,’ which has a much higher rate than the data” and that “[t]his coding results in a much

wider transmission spectrum than the spectrum of the baseband data signal . . . .” ’83Opatent,

col. 2, ll. 5-11. In other words, the specification discloses spreading codes that modulate data

and refers to them as “codes.” Indeed, in InterDigital I, the Federal Circuit reversed the

Comrnission’s restriction of “spreading codes” to only codes that modulate data, finding that the

shared specifications of the Power Ramp-Up patents also disclose spreading codes that do not

modulate data such as the short codes and pilot codes. InterDigital I, 690 F.3d at 1326. Thus, in

our view, stating that codes that modulate data are not codes creates confusion. Importantly,

such a finding is unnecessary to establish non-infringement in this investigation.

As discussed above with respect to claim construction, the Power Ramp-Up patents, their

common specification, and expert testimony make clear that the “successively sends

transmissions” limitation refers to transmissions of short codes. No credible dispute exists that

the short codes do not modulate data. For example, the Federal Circuit referencing the corrrrnon

specification of the Power Ramp-Up Patents noted that “the specification describes various codes,

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such as pilot codes and short codes, as ‘spreading codes’ even though they carry no data and are

not intended to do so.” InterDigital I, 690 F.3d at 1326; 830 Patent, col. 7, ll. 39-44.

InterDigital’s expert confirmed that “successively sends transmissions” limitation refers to

transmissions of short codes and that short codes do not modulate data:

Q. All right. Now the successively sent transmissions of claim 1,

those are the short codes described in the 830 patent, correct?

A. Yes, the repeated transmissions of the short code are the

successively sent transmissions.

Q. And in the power ramp-up patents, the short code is not applied

to a data signal, correct?

A. Correct.

Jackson Tr. at 176125-177:9. In addition, there is no dispute that in the Adjudicated Respondents’

accused products, [

] RX-3999C (Lanning

RWS) at Q3l0, Q312-317; RX-3964 (SGPP TS 25.331) at §§ l0.3.6.52-l0.3.6.55; ID at 53-54.

Thus, the ALJ’s finding that the accused products do not meet the “successively sends

transmissions” limitation is correct. The Commission therefore affirms the ALJ’s findings with

the clarification provided above.

b. Whether the Accused Products Satisfy the “Subsequent Transmissions”

Limitation

Given the Commission’s findings that the Adjudicated Respondents’ products do not

meet the “successively sends transmissions” limitation recited in the asserted claims of both

the ’830 and ’636 patents, the Commission need not reach whether those products satisfy the

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PUBLIC VERSION

“subsequent transmissions” limitation of the ’636 patent. The Commission thus vacates the

ALJ’s findings with respect to the “subsequent transmissions” limitation. See Beloit Corp. v.

Valmei Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission . . . is at perfect liberty to

reach a ‘no violation’ determination on a single dispositive issue. That approach may often save

the Commission, the parties, and this court substantial unnecessary effort”).

B. The Power Control Patents (’406 & ’332 Patents)

InterDigital has asserted the following claims of the ’406 patent in this investigation:

independent claim 29; claim 6, which depends from independent claim 1; claim 13, which

depends from independent claim 7; claim 20, which depends from independent claim 15; and

claims 22 and 26, which depend from independent claim 21. Claim 29 recites:

29. A method for controlling transmission power levels of a code division

multiple access (CDMA) subscriber unit, the method comprising:

receiving by the subscriber unit a power control bit on a downlink

control channel, the power control bit indicating either an increase or

decrease in transmission power level;

transmitting a plurality of channels by the subscriber unit, the plurality

of channels including a traffic channel and a reverse control channel;

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

separately adjusting the transmission power level of the traffic channel

and the reverse control channel; and

transmitting the traffic channel and the reverse control channel at their

respective adjusted transmit power levels.

’406 patent, col. 17, ll. 5-22 (claim 29) (emphasis added).

InterDigital has asserted the following claims of the ’332 patent in this investigation:

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PUBLIC VERSION

Independent claim 8 together with its dependent claims 9, 10, ll, and 14; claims 2, 3, 4, and 7,

which depend from independent claiml; and claims 22, 23, 24, and 27, which depend from

independent claim 21. Claim 8 recites:

8. A code division multiple access subscriber unit, comprising:

an antenna configured to receive a first radio frequency signal; and

a circuit, operatively coupled to the antenna, configured to generate

power control bits in response to the first radio frequency signal,

wherein the circuit is further configured to establish an in-phase (I)

pre-spread channel and a quadrature (Q) pre-spread channel, such that

the power control bits are included on only one of the I pre-spread

channel or the Q pre-spread channel;

wherein a second radio frequency signal output by the code division

multiple access subscriber unit is derived at least in part from the I and

Q pre-spread channels.

’332 patent, col. 101, ll. 37 ~ 50 (claim 8) (emphasis added).

1. Construction of the Claim Term “Power Control Bit”

a. The ID

The ALJ adopted the Adjudicated Respondents’ proposed construction and construed the

claim term “power control bit" to mean “single-bit power control infonnation transmitted at an

APC data rate equivalent to the APCIS]update rate.” ID at 101. In construing the limitation, the

ALJ observed that neither the specification of the ’406 patent nor the specification of the ’332

patent contain the specific term “power control bit.” Id. The ALJ, however, found that the

specifications “describe the way in which the claimed invention conveys power control, or APC,

5The 406 patent refers to both adaptive power control and automatic power control as

APC. See ’406 patent, col. 4,1. 32; col. 5,1. 50.

30
PUBLIC VERSION

information,” pointing to the following disclosures:

The APC signal is transmitted as one bit signals on the APC

channel. The one-bit signal represents a command to increase

(signal is logic-high) or decrease (signal is logic-low) the

associated transmit power. In the described embodiment, the 64

kbps APC data stream is not encoded or interleaved. ’406 patent,

col. 6, 11.47-51.

APC information is always conveyed as a single bit of information,

and the APC Data Rate is equivalent to the APC update rate. The

APC update rate is 64 kb/s. ’406 patent, col. 9, ll. 46-48; ’332

patent, col. 67, ll. 43-45.

The APC bits are transmitted as one bit up or down signals on the

APC channel. ’332 patent, col. 64, ll. 11-13.

In addition, the ALJ found that the flow chart depicted in Figure 4 of the ’406 patent

indicates that “RCS[6]transmits the APC bit to SUN]in the forward APC channel,” “SU modem

receives the single APC bit,” and “SU increases or decreases its transmit power according to the

APC bit received.” ID at 102 (citing ’406 patent, Fig. 4). Similarly, the ALJ found that Figure

27 of the ’332 patent teaches that “SU modem hard limits the combined error signal to form a

single APC bit,” “SU transmits the APC bit to RCS in the reverse APC channel,” and “RCS

modem receives the single APC bit.” Id. (citing ’332 patent, Fig. 27).

The ALJ found further support for his constmction from the language of the claims. Id.

He noted that claim 1 of the ’406 patent, from which asserted claim 6 depends, requires that the

claimed invention adjust the transmission power of the mobile device “in response to the

received power control bit” and that claim 7 of the ’406 patent, from which asserted claim 13

6“RCS” stands for “radio carrier station.” ’406 patent, col. 3, ll. 48-51.

7“SU” stands for “subscriber unit.” ’406 patent, col. 3, ll. 46-47.

31
PUBLIC VERSION

depends, claims a method in which a subscriber unit receives “a series of power control bits on a

down link channel, each power control bit indicating either an increase or decrease in

transmission power level.” Id. (citing ’406 patent, col. 14, l. 58 —col. 15, 1.8; col. 15, ll. 28-45).

The ALJ rejected lnterDigital’s proposal to construe the claim limitation to mean “binary

information relating to power control,” finding that InterDigital’s proposed construction seeks to

construe the term “bit” to include any type of binary infonnation, even when that information is

not a “bit.” ID at 103.

b. InterDigital’s Petition

InterDigital challenges the AL.T’sconstruction of the claim term, arguing that the plain

and ordinary meaning of the claim term “power control bit” is “binary information relating to

power control.” InterDigital Pet. at 28. According to InterDigital, experts for both sides agreed

that a bit “is simply a representation of a piece of information that has two states,” meaning

information that is “binary.” Id (citing Tr. at 1204222-25, CX-1310C at 1[93). InterDigital also

argues that the ’332 patent claims do not limit the type of binary information that makes up a

power control bit and that the ’406 patent simply requires that the power control indicates either

an increase or decrease in transmission power level. Id. at 28-29 (citing ’406 patent, col. 15, ll.

32-34; col l6, ll. 38-40; CX-1310C at 1l93).

InterDigital points to the dependent claims for further support and asserts that because

some of them require that “the power control bit has a value of +1 or -1,” the claimed invention

“must be broad enough to include implementations for which the power control bit can have a

value of+1 or -1, 0 or 1, and so on.” Id. at 29.

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PUBLIC VERSION

InterDigital explains that the specification uses the phrase “bit,” “single APC bit,” and

“one bit signals” and that use of the modifiers “single” and “one” ‘“strongly implies’ that the

stand-alone and unmodified claim term ‘bit’ is not limited to a single (or one) bit, but instead

encompass many bits as long as those bits ultimately represent only two binary states.” Ia’.at 30.

According to InterDigital, the ALJ’s reliance on the specification’s statement that “APC

information is always conveyed as a single bit of information” is misplaced because the

statement does not use the claim term “power control bit” and does not state that “the present

invention” or “all embodiments” always use a single bit of information to convey APC

information. Id. at 35.

InterDigital accuses the ALJ of erroneously limiting the claim term to disclosures in the

specification. Id. Specifically, InterDigital contends that the ALJ did not “explain his rationale

for imposing a limitation on the entire invention that the APC data rate be equal to the APC

update rate,” and that the ALJ imported this limitation from a preferred embodiment. Id. at 32.

InterDigital asserts that this was a mistake because allegedly the specification describes

embodiments in which the APC data rate is not equivalent to the APC update rate. Id. at 33-34

(citing Tr. at 322:l8-23; 332 Patent, Fig. 29B).

c. Adjudicated Respondents’ Response

Adjudicated Respondents argue that both the intrinsic and extrinsic evidence support the

ALJ’s claim construction. Resp. Rep. at 17. According to Adjudicated Respondents, the patents

describe “transmit[ting] single-bit power control commands, or ‘power control bits,’ with each

one-bit command indicating either an increase or a decrease in the transmission power level” and

33
PUBLIC VERSION

that “[b]y designing their systems to update the power level once for each power control bit

received, the inventors maximized the APC update rate (e.g., update per second), making it

equivalent to the APC data rate (e.g., bits per second).” Id. at 18. Consistent with that objective,

Adjudicated Respondents contend that the patentees defined “the way that is ‘always’ used to

transmit APC infonnation using power control bits”: “APC infonnation is always conveyed as a

single bit of information, and the APC data rate is equivalent to the APC update rate.” Id. (citing

406 Patent, col. 9, ll. 45-52; 332 Patent, col. 67, ll. 43-45). Adjudicated Respondents assert that

the “always” statement “clearly and unmistakably informs one of ordinary skill in the art that the

invention requires that power control commands always consist of a single bit, and that the

power level is updated once per bit received (i.e., the APC data rate is equivalent to the APC

update rate).” Id. at 19 (citing RX-3529C (Williams Stmt.) at QQ. 20, 129-30). Adjudicated

Respondents argue that the inventors disavowed multi-bit power control commands, which

necessarily include more than one bit per power control command and require an APC data rate

higher than the APC update rate. Id.

Adjudicated Respondents dismiss InterDigital’s contention that the “always” statement

does not relate to the claimed “power control bit,” arguing that “[t]he ‘always’ statement begins

with the acronym ‘APC,’ which undisputedly refers to adaptive/automatic power control.” Id. at

22 (citing ’406 patent, col. 2, ll. 29-30; col. 4, l. 23; col. 5, l. 50; ’332 patent, col. 3, ll. 26-27).

Adjudicated Respondents add that the “always” statement “explains that the APC (power control)

information is always conveyed as single-bit information, which is precisely the purpose of the

claimed ‘power control bit.”’ Id. at 22-23.

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PUBLIC VERSION

Adjudicated Respondents further state that lnterDigital’s argument that the “ALJ did not

explain why the APC data rate must be equivalent to the APC update rate . . . ignores the

relevant portion of both the ID and the patent specifications.” Id. at 28. According to

Adjudicated Respondents “[t]he ALJ’s entire construction comes directly from the inventors’

unified, clear, and unambiguous statement about how power control information is ‘always’

conveyed.” Id. at 28-29. Adjudicated Respondents assert that the “always” modifies the entire

sentence: “APC infonnation is always conveyed as a single bit of information, and the APC data

rate is equivalent to the APC update rate” and that the two clauses are “inherently and logically

linked.” Id. at 29. Specifically, Adjudicated Respondents argue that the first clause’s disclosure

that “each power control command or request is conveyed as a single bit of data” “necessarily

means that the APC data rate (e.g., bits per second) at which power control information is sent

will be equivalent to the APC update rate (e.g., updates per second) at which the power level is

updated,” and that second clause merely makes this equivalency explicit. Id. at 29.

d.' Analysis

In our view, the ALJ correctly construed the claim limitation “power control bit” to mean

“single-bit power control information.” ID at 101. However, by also requiring that the “power

control bit” “transmit[] at an APC data rate equivalent to the APC update rate,” the ALJ limited

the construction in a manner not plainly warranted by the specification. See ID at lOl. Thus, we

modify the construction by striking “transmitted at an APC data rate equivalent to the APC

update rate” from the construction.

As the AL] noted, neither the specification of the ’406 patent nor the specification of

35
PUBLIC VERSION

the ’332 patent contains the specific term “power control bit.” [cl However, the specifications

of both the ’406 and ’332 patents describe the manner in which the claimed invention conveys

power control (APC) infonnation. Specifically, the specifications of both the ’406 and ’332

patents teach that

APC infonnation is always conveyed as a single bit of information,

and the APC Data Rate is equivalent to the APC update rate. The

APC update rate is 64 kb/s.

’406 patent, col. 9, ll. 46-48; ’332 patent, col. 67, ll. 43-45 (emphasis added). The specification

of the ’406 patent explains that

The APC signal is transmitted as one bit signals on the APC

channel. The one-bit signal represents a command to increase

(signal is logic-high) or decrease (signal is logic-low) the

associated transmit power. ln the described embodiment, the 64

kbps APC data stream is not encoded or interleaved.

’406 patent, col. 6, ll. 47-5 l. The specification of the ’332 patent also explains that

The APC bits are transmitted as one bit up or down signals on the

APC channel.

’332 patent, col. 64, ll. 11-13. In other words, the specifications make clear that the APC is

conveyed as a single-bit signal. Specifically, by disclosing that “APC infonnation is always

conveyed as a single bit of information,” the patentees acted as their own lexicographers and

defined the precise scope of the power control bit. See ’406 patent, col. 9, ll. 46-48; ’332 patent,

col. 67, ll. 43-45 (emphasis added); Astrazeneca AB v. Mutual Pharm., 384 F.3d 1333, 1338-39

(Fed. Cir. 2004). Consequently, we agree with the ALJ that the claimed “power control bit” is

conveyed as a single bit.

InterDigital argues that a bit “is simply a representation of a piece of information that has

36
PUBLIC VERSION

two states,” meaning “binary” and that the asserted claims do not limit the type of binary

infonnation that makes up a power control bit. IntcrDigital Pet. at 28-29. InterDigital’s

argument is not persuasive. The claims recite “power control bit,” a phrase that does not appear

in the specifications. The only “power control” described in the specifications, however, is the

APC (adaptive or automatic power control), and the specifications state that the “APC is always

conveyed as a single bit of information.” A bit being a representation of a piece of information

that has two states has no bearing on the fact that the patentees acted as their own lexicographers

and defined the scope of the power control bit. In short, the patentees specifically defined the

scope of the power control bit, and their express definition must govem.

However, we find persuasive InterDigital’s assertion that the ALJ did not “explain his

rationale for imposing a limitation on the entire invention that the APC data rate be equal to the

APC update rate.” lnterDigita1 Pet. at 32. Unlike the specific requirement that the APC

information is always conveyed as a single bit of infonnation, which is emphasized in other

portions of the patents (see, e.g., ’406 patent, col. 9, ll. 46-48; col. 6, ll. 47-51; Fig. 4 ’332 patent,

col. 67, ll. 43-45; Fig 27), APC data rate being equal to the APC update rate is not emphasized in

the specifications, and the placement of the comma suggests that the Word“always” does not

modify both clauses. It may be that the two clauses are “inherently and logically linked” as

Adjudicated Respondents argue (Resp. Rep. at 29). However, the Federal Circuit has cautioned

against limiting claim scope to disclosures in the specification absent a clear indication. See

Toshiba Corp. v. Imatizm C0rp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Accordingly, the

Commission strikes that second clause from the construction.

37
PUBLIC VERSION

2. Whether the Accused Products Infringe the Power Control Patents (’406 & ’332

Patents)

a. Brief Summary of the Issue and Parties’ Arguments

InterDigital notes the ALJ’s finding that the accused products infringe the asserted claims

of the ’406 and ’332 patents except for the “power control bit” limitation. lnterDigital Pet. at 37.

InterDigital argues that the accused products infringe the asserted claims if the Commission

adopts the single-bit portion of the ALJ’s construction but rejects the data rate portion. Id. at 38.

InterDigital explains that the ALJ found that WCDMA products do not satisfy the “power

control bit” limitation because [

] and that this finding would be of no

consequence if the Commission rejects the “data rate” portion of the construction. Id. at 38.

Specifically, InterDigital points to the Commission’s finding that the WCDMA products [

] Id. (citing ID at 116-16, 119; CX-0232

(3GPP TS 25.211) at §§ 3.2, 5.3.2.)

Similarly, InterDigital argues that the accused CDMA2000 products infringe because the

ALJ found that those products [

]. Id. at 39 (citing ID at12()-21, 125).

b. Analysis

lnterDigital’s argtunent is not persuasive. The ALJ’s non-infringement conclusion

depends on his findings that “all the accused products [

38
PUBLIC VERSION

]” ID at 126-27 (citing RX-3994C

(Williams RWS) at Q7-18, Q21-27, Q189, Q197, Q199-216, Q400-440, Q528; Goldberg Tr.

249-251; Prucnal Tr. 318-319, 320; RX-3994C (Williams RWS) at Q52-63). The ALJ further

found that “a power control command in WCDMA-compliant devices always consists of at least

2 bits." Id. (citing Prucnal Tr. 318-319; RX-3994C (Williams RWS) at Q1 1-18; see RX-3531

(3GPP TS 25.211) at Fig. 13). The ALJ observed that experts for both sides, Dr. Goldberg and

Dr. Prucnal, agreed that all of the accused WCDMA products [

Id. (citing Goldberg Tr. 249-51; Prucnal Tr. 320). Consequently, the handset [

] Id. The ALJ also noted that the TPC Bit Pattem transmitted by WCDMA-compliant

handsets to the base station also includes two bits. See CX-1310C (Prucnal WS) at Ql89;

Prucnal Tr. 319. With respect to the CDMA2000-compliant devices, the ALJ found that

CDMA2000 standard provides that the power control instruction is

always transmitted as a set of at least 384 chips. See CX-0017

(3GPP2 C.S00O2) § 2.1.3.l.l0.1. In fact, the CDMA2000

specification requires that more than one bit of power control

information is sent to or received from the mobile station to

indicate an increase or decrease in power. The CDMA2000

standard provides that “[t]he duration and power level of power

control bits” is greater than one symbol, where each symbol

consists of at least one bit of information. See Prucnal Tr. 320;

RX-3994C (Williams RWS) at Q24-25; CX-0017 (3GPP2

C.S00O2)§ 3.l.3.1.10. Therefore, none ofthe CDMA2000

accused devices receives or generates single-bit power control

information. See RX-3994C (Williams RWS) at Q21O-213, Q216.

39
PUBLIC VERSION

The record evidence supports the ALJ’s findings that the Adjudicated Respondents’

products do not infringe the modified construction of “power control bit” to mean “single-bit

as s cc 7 power control information. Simply put, modifying the ALJ s construction of power control bit’

to mean “single-bit power control information” does not alter his infringement findings discussed

above because those findings rest on the understanding that the “power control bit” must be a

single bit.

IV. CONCLUSION

Upon review of the ID, the Commission affinns the ALJ’s finding of no violation of

section 337 as to the Adjudicated Respondents, i.e., Huawei, Nokia, and ZTE. Specifically, with

respect to the Power Ramp-Up patents (the ’830 and ’636 patents), the Commission (l) affinns

the ALJ’s findings that the accused products do not satisfy the “successively sends transmissions”

limitation as construed to mean “transmits to the base station, one after the other, codes that are

shorter than a regular length code” to the extent that the “successively sends transmissions” refer

to the short codes and (2) for the ’636 patent, vacates the ALJ’s findings regarding the

“subsequent transmission” limitation. With respect to the Power Control Patents (the ’406

and ’332 patents), the Commission modifies the ALJ’s constmction of the claim tenn “power

control bit,” construes the limitation to encompass only “single-bit power control information,”

and affirms the findings that the accused products do not satisfy those limitations. The

Commission adopts the ALJ’s findings that the ’127, ’Ol3, and ’970 patents are invalid in view

of prior art.

40
By order of the Commission.

Issued: February 19, 2014

PUBLIC VERSION

Wza

Lisa R. Barton

Acting Secretary to the Commission

41
CERTAIN WIRELESS DEVICES VVITH3G CAPABILITIES Inv. No. 337-TA-800

AND COMPONENTS THEREOF

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached COM1\/HSSION OPINION has been

served by hand upon the Commission Investigative Attorney, Brian K00, Esq., and the following

d1at d Februa 19 2014 .. . . .

Lisa R. Barton, Acting Secretary

- U.S. International Trade Commission

500 E Street, SW, Room 112

Washington, DC 20436

On Behalf of Complainants InterDigital Communications,

Inc., InterDi2ital Technology Corporation. IPR Licensing,

Inc. and InterDigital Holdings. Inc.:

Maximilian A. Grant, Esq.

LATHA.M & WATKINS LLP

555 Eleventh Street, NW, Suite 1000

Washington, DC 20004

( ) V' Hand Delivery

( 1/)/gig Express Delivery

( )Via First Class Mail

( ) Other:

On Behalf of Respondents Huawei Technologies C0.. Ltd.,

Huawei Device USA. Inc., and FutureWei Technologies. Inc.:

Sturgis M. Sobin, Esq.

COVINGTON & BURLING LLP

1201 Pennsylvania Avenue, NW\'

Washington, DC 20004-2401. _

(4/g)Lia Hand Delivery ( Via Express Delivery

( ) Via First Class Mail ( )Otherzg

On Behalf of Respondents ZTE Corporation and ZTE (USA)

Jay H. Reiziss, Esq. ( ) ' Hand Delivery

BRINKS GILSON & LIONE ( t/)%7Li/iExpress Delivery

1775 Pennsylvania Ave., Suite 900 ( ) Via First Class Mail

Washington, DC 20006-2219 ( ) Other:

On Behalf of Respondents Nokia Corporation and Nokia Inc.:

‘Jamie D. Underwood, Esq. __,

ALSTON &BIRD LLP

950 F Street, NW

Washington, DC 20004

( ia Hand Delivery

()))\V/'ia Express Delivery

( ) Via First Class Mail

( )Other:___i____
UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

In the Matter of

CERTAIN WIRELESS DEVICES WITH 3G

CAPABILITIES AND COMPONENTS

THEREOF

Investigation No. 337-TA-800

NOTICE OF COMMISSION DETERMINATION TO REVIEW THE FINAL INITIAL

DETERMINATION FINDING NO VIOLATION OF SECTION 337 IN ITS ENTIRETY

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that the U.S. International Trade Commission has

determined to review in its entirety, the final initial determination issued by the presiding

administrative law judge (“ALJ”) finding no violation of section 337 of the Tariff Act of 1930, 19

U.S.C. § 1337, (“section 337”) in the above identified investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General

Counsel, U.S. Intemational Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,

telephone (202) 205-3042. Copies of non-confidential documents filed in connection with this

investigation are or will be available for inspection during official business hours (8:45 a.m. to

5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, S.W.,

Washington, D.C. 20436, telephone (202) 205-2000. General infonnation conceming the

Commission may also be obtained by accessing its Intemet server at httg://www.usitc.g0v. The

public record for this investigation may be viewed on the Commission’s electronic docket (EDIS)

at httg://edis. usilc.gov. Hearing-impaired persons are advised that information on this matter can

be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on

August 31, 2011, based on a complaint filed by lnterDigital Communications, LLC of King of

Prussia, Pennsylvania; InterDigital Technology Corporation of Wilmington, Delaware; and IPR

Licensing, Inc. of Wilmington, Delaware (collectively, “InterDigital”). 76 Fed. Reg. 54252

(Aug. 31, 2011). The complaint alleged violations of section 337 of the Tariff Act of 1930, as

amended 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and

the sale within the United States after importation of certain wireless devices with 3G capabilities

and components thereof by reason of infringement of certain claims of United States Patent Nos.

7,349,540 (terminated from the investigation); 7,502,406; 7,536,013; 7,616,970; 7,706,332;

7,706,830; and 7,970,127. The notice of investigation named the following entities as

respondents: Huawei Technologies Co., Ltd. of Shenzhen, China; FutureWei Technologies, Inc.

d/b/a Huawei, Technologies (USA) of Plano, Texas; Nokia Corporation of Espoo, Finland; Nokia
Inc. of White Plains, New York; ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of

Richardson, Texas (collectively, “Respondents”). The complaint and notice of investigation

were subsequently amended to allege infringement of certain claims of United States Patent No.

8,009,636 (the ’636 patent) and to add the following entities as respondents: LG Electronics, Inc.

of Seoul Korea; LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey; and LG Electronics

Mobilecomm U.S.A., Inc. of San Diego, California (collectively, “LG”). 76 Fed Reg. 81527

(Dec. 28, 2011). The complaint and notice of investigation were further amended to include

Huawei Device USA of Plano, Texas as a respondent. 77 Fed. Reg. 26788 (May 7, 2012).

lnterDigital Communications, LLC subsequently moved for leave to amend the Complaint

and Notice of Investigation to reflect the fact that it converted from a Pennsylvania limited liability

company to a Delaware corporation, and changed its name to InterDigital Communications, Inc.

The ALJ issued an ID granting the motion and the Commission determined not to review. See

Order No. 91 (Jan. 17, 2013); Notice of Commission Determination Not to Review an Initial

Determination Granting Complainants’ Motion for Leave to Amend the Complaint and Notice of

Investigation (Feb. 4, 2013).

On June 4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to

terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June 4,

2012). The Commission determined not to review. See Notice of Commission Determination

Not to Review an Initial Determination Terminating Certain Respondents From the Investigation

(July 6, 2012). lnterDigital appealed LG’s termination from this investigation, and the Federal

Circuit reversed the C0mmission’s determination. InterDigital Commc ’ns,LLC v Int ’l Trade

Comm ‘n,No. 2012-1628 (Fed. Cir. June 7, 2013).

On June 28, 2013, the ALJ issued his final ID, finding no violation of section 337 by

Respondents. Specifically, the ALJ found that the Commission has subject matter jurisdiction, in

remjurisdiction over the accused products, and inpersonam jurisdiction over the respondents.

The ALJ also found that the importation requirement of section 337 (19 U.S.C. § 1337(a)(1)(B))

has been satisfied. The ALJ, however, found that the accused products do not infringe asserted

claims 1-3 and 5 of the ’830 patent; asserted claims l, 2, 4, and 6-8 of the ’636 patent; asserted

claims 6, 13, 20, 26, and 29 ofthe ’406 patent; asserted claims 2-4, 7 - 11, 14, 22 - 24, and 27 ofthe

’332 patent; asserted claims 1-7 of the ’127 patent; asserted claims 16-19 of the ’0l3 patent; or

asserted claims 10-18 of the ’970 patent. The ALJ found that the accused products meet each

limitation of claims 1-9 of the ’970 patent but found that all the asserted claims, claims l-18, of the

’970 patent are invalid in view of the prior art. The ALJ also found that asserted claims 1-7 of the

’127 patent and asserted claims 16-19 of the ’0l3 patent are invalid in view of the prior art. The

ALJ, however, found that Respondents failed to establish by clear and convincing evidence that

the asserted claims of the ’830, ’636, ’406 or ’332 patents were invalid in light ofthe cited prior art

references. The ALJ also found that the Respondents failed to prove that they hold licenses under

the asserted patents and failed to prevail on their equitable/FRAND defenses. The ALJ further

found that InterDigital established the existence of a domestic industry.

On July 15, 2013, lnterDigital filed a petition for review of the ID. That same day, the

Commission Investigative Attorney and Respondents filed separate petitions for review.

2
Respondents also filed a contingent petition for review. On July 23, 2013, the parties filed

responses to the petitions and contingent petition for review.

Having examined the record of this investigation, including the ALJ’s final ID, the

petitions for review, and the responses thereto, the Commission has determined to review the final

ID in its entirety.

In connection with its review, the Commission is particularly interested in responses to the

following question:

Please discuss, in light of the statutory language, legislative

history, the Commission’s prior decisions, and relevant

court decisions, including InterDigital Commc ’ns,LLC v.

Int’! Trade Comm ‘n, 690 F.3d 1318 (Fed. Cir. 2012), and

707 F.3d 1295 (Fed. Cir. 2013), whether establishing a

domestic industry based on licensing under 19 U.S.C.

§ 1337 (a)(3)(C) requires proof of “articles protected by the

patent” (i.e., a technical prong). If so, please identify and

describe the evidence in the record that establishes articles

protected by the asserted patents.

In connection with the final disposition of this investigation, the Commission may (1) issue

an order that could result in the exclusion of the subject articles from entry into the United States,

and/or (2) issue one or more cease and desist orders that could result in the respondent(s) being

required to cease and desist from engaging in unfair acts in the importation and sale of such

articles. The Commission, however, is not interested in receiving written submissions that

address the form of remedy and bonding, if any, or the public interest at this time.

WRITTEN SUBMISSIONS: The parties to the investigation are requested to file written

submissions on the issue identified in this notice. The written submissions must be filed no later

than close of business on September 27, 2013. Initial submissions are limited to 15 pages.

Reply submissions must be filed no later than the close of business on October 4, 2013. Reply

submissions are limited to 10pages. No further submissions on this issue will be permitted unless

otherwise ordered by the Commission.

Persons filing Writtensubmissions must file the original document electronically on or

before the deadlines stated above and submit 8 true paper copies to the Office of the Secretary by

noon the next day pursuant to section 2l0.4(f) of the Commission's Rules of Practice and

Procedure (19 C.F.R. 210.4(f)). Submissions should refer to the investigation number (“Inv. No.

337-TA-800”) in a prominent place on the cover page and/or the first page. (See Handbook for

Electronic Filing Procedures,

http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_e1ectronic_

filingpdt). Persons with questions regarding filing should contact the Secretary (202-205-2000).

3
Any person desiring to submit a document to the Commission in confidence must request

confidential treatment. All such requests should be directed to the Secretary to the Commission

and must include a full statement of the reasons why the Commission should grant such treatment.

See 19 C.F.R. § 201.6. Documents for which confidential treatment by the Commission is

properly sought will be treated accordingly. A redacted non-confidential version of the document

must also be filed simultaneously with the any confidential filing. All non-confidential written

submissions will be available for public inspection at the Office of the Secretary and on EDIS.

The authority for the Commission’s determination is contained in section 337 of the Tariff

Act of 1930, as amended (19 U.S.C. § 1337), and in sections 210.42-46 and 210.50 ofthe

Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.42-46 and 210.50).

By order of the Commission.

Lisa R. Barton

Acting Secretary to the Commission

Issued: September 4, 2013

4
CERTAIN WIRELESS DEVICES WITH 3G CAPABILITIES Inv. No. 337-TA-800

AND COMPONENTS THEREOF

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand upon the

Commission Investigative Attomey, Brian Koo, Esq., and the following parties as indicated on

September 4, 2013

“P A I - ’ "7

<..<;2=-=3, ----­

Lisa R. Barton, Acting Secretary

U.S. International Trade Commission

500 E Street, SW, Room 112

Washington, DC 20436

On Behalf of Complainants InterDigital Communications. LLC. InterDigital Technology

Corporation and IPR Licensing, Inc.:

Maximilian A. Grant, Esq. ( ) Via Hand Delivery

LATHAM & WATKINS LLP ( ) ia Express Delivery

555 llm Street, NW, Suite 1000 ( ,/{Via First Class Mail

Washington, DC 20004 ( ) Other:

On Behalf of Respondents Huawei Technologies Co.. Ltd. and FutureWei Technologies,

Inc. d/b/a Huawei Technologies (USA);

Sturgis M. Sobin, Esq. ( ) Via Hand Delivery

COVINGTON & BURLING LLP ( ) ia Express Delivery

1201 Permsylvania Avenue, NW ( /))V'ia First Class Mail

Washington, DC 20004-2401 ( ) Other:

On Behalf of Respondents ZTE Corporation and ZTE (USA)Inc.:

Jay H. Reiziss, Esq. ( ) Via Hand Delivery

BRINKS HOFER GILSON & LIONE ( ) ia Express Delivery

1775Pennsylvania Avenue, NW ( /al/'ia First Class Mail

Suite 900 ( ) Other:

Washington, DC 20006

On Behalf of Respondents Nokia Corporation and Nokia Inc.:

Jamie D. Underwood, Esq. ( ) Via Hand Delivery

ALSTON & BIRD LLP _ ( ) ia Express Delivery

950 F Street, NW ( %ia First Class Mail

Washington, DC 20004 ( ) Other:
UNITED STATES INTERNATIONAL TRADE COMMISSION

Washington, D.C.

In the Matter of

CERTAIN WIRELESS DEVICES WITH 3G

CAPABILITIES AND COMPONENTS

THEREOF

Investigation No. 337-TA-800

NOTICE OF COMMISSION DETERlVIINATIONTO AFFIRM IN PART, AND MODIFY

IN PART A FINAL INITIAL DETERMINATION FINDING NO VIOLATION OF

SECTION 337 BY CERTAIN RESPONDENTS; TERMINATION OF THE

INVESTIGATION AS TO CERTAIN RESPONDENTS; EXTENSION OF THE TARGET

DATE FOR COMPLETION OF THE INVESTIGATION

AGENCY: U.S. Intemational Trade Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that the U.S. International Trade Commission has

determined to affirm in part and modify in part the final initial determination issued by the

presiding administrative law judge (“ALJ”) finding no violation of section 337 of the Tariff Act of

1930, 19 U.S.C. § 1337, (“section 337”) in the above identified investigation as to respondents

Huawei Technologies Co., Ltd. of Shenzhen, China; Huawei Device USA of Plano, Texas

(“Huawei Device”); FutureWei Technologies, Inc. d/b/a Huawei, Technologies (USA) of Plano,

Texas (collectively, “Huawei”); Nokia Corporation of Espoo, Finland; Nokia Inc. of White Plains,

New York (collectively, “Nokia”); ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of

Richardson, Texas (collectively, “ZTE”). The Commission has extended the target date for

completion date of this investigation until February 17, 2014, to accommodate remand

proceedings concerning other respondents.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the General

Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,

telephone (202) 205-3042. Copies of non-confidential documents filed in connection with this

investigation are or will be available for inspection during official business hours (8:45 a.m. to

5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, S.W.,

Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the

Commission may also be obtained by accessing its Intemet server at httg://www.usitc.gov. The

public record for this investigation may be viewed on the Commission’s electronic docket (EDIS)

at hllg://edis. usitc.gov. Hearing-impaired persons are advised that information on this matter can

be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on

August 31, 2011, based on a complaint filed by InterDigital Communications, LLC of King of
Prussia, Pennsylvania; InterDigital Technology Corporation of Wilmington, Delaware; and IPR

Licensing, Inc. of Wilmington, Delaware (collectively, “InterDigital”). 76 Fed. Reg. 54252

(Aug. 31, 2011). The complaint alleged violations of section 337 of the Tariff Act of 1930, as

amended 19 U.S.C. § 1337, in the importation into the United States, the sale for importation, and

the sale within the United States after importation of certain wireless devices with 3G capabilities

and components thereof by reason of infringement of certain claims of United States Patent Nos.

7,349,540 (terminated from the investigation); 7,502,406 (the ’406 patent); 7,536,013 (the ’013

patent); 7,616,970 (the ’970 patent); 7,706,332 (the ’332 patent); 7,706,830 (the ’830 patent); and

7,970,127 (the ’127 patent). The notice of investigation named the following entities as

respondents: Huawei (except Huawei Device), Nokia, and ZTE. The complaint and notice of

investigation were subsequently amended to allege infringement of certain claims of United States

Patent No. 8,009,636 (the ’636 patent) and to add the following entities as respondents: LG

Electronics, Inc. of Seoul, Republic of Korea; LG Electronics U.S.A., Inc. of Englewood Cliffs,

New Jersey; and LG Electronics Mobilecomrn U.S.A., Inc. of San Diego, California (collectively,

“LG”). 76 Fed. Reg. 81527 (Dec. 28, 2011). The complaint and notice of investigation were

further amended to include Huawei Device as a respondent. 77 Fed. Reg. 26788 (May 7, 2012).

InterDigital Communications, LLC subsequently moved for leave to amend the Complaint

and Notice of Investigation to reflect the fact that it converted from a Pennsylvania limited liability

company to a Delaware corporation, and changed its name to InterDigital Communications, Inc.

The ALJ issued an ID granting the motion and the Commission determined not to review. See

Order No. 91 (Jan. 17, 2013); Notice of Connnission Detennination Not to Review an Initial

Detennination Granting Complainants’ Motion for Leave to Amend the Complaint and Notice of

Investigation (Feb. 4, 2013).

On June 4, 2012, the ALJ granted a motion by LG under 19 C.F.R § 210.21(a)(2) to

terminate the investigation as to LG based on an arbitration agreement. See Order No. 30 (June 4,

2012). The Commission determined not to review. See Notice of Commission Detennination

Not to Review an Initial Determination Terminating Certain Respondents From the Investigation

(July 6, 2012). InterDigital appealed LG’s termination from this investigation, and the Federal

Circuit reversed the Commission’s determination. InterDigital Commc ’ns,LLC v Int ’l Trade

Comm ’n,718 F.3d 1336 (Fed. Cir. 2013). The remand is currently pending before the

Commission.

On June 28, 2013, the ALJ issued his final ID, finding no violation of section 337 by

respondents Huawei, Nokia, and ZTE. Specifically, the ALJ found that the Commission has

subject matterjurisdiction, in remjurisdiction over the accused products, and inpersonam

jurisdiction over the respondents. The ALJ also found that the importation requirement of section

337 (19 U.S.C. § 1337(a)(1)(B)) has been satisfied. The ALJ, however, found that the accused

products do not infringe asserted claims 1-3 and 5 of the ’830 patent; asserted claims 1, 2, 4, and

6-8 of the ’636 patent; asserted claims 6, 13, 20, 26, and 29 of the ’406 patent; asserted claims 2-4,

7 - 11, 14, 22 - 24, and 27 of the ’332 patent; asserted claims 1-7 of the ’127 patent; asserted claims

16-19 of the ’013 patent; or asserted claims 10-18 of the ’970 patent. The ALJ found that the

accused products meet each limitation of claims 1-9 of the ’970 patent but found that all the

asserted claims, claims 1-18, of the ’970 patent are invalid in view of the prior art. The ALJ also

found that asserted claims 1-7 of the ’127 patent and asserted claims 16-19 of the ’013 patent are

2
invalid in view of the prior art. The ALJ, however, found that the respondents failed to establish

by clear and convincing evidence that the asserted claims of the ’830, ’636, ’406 or ’332 patents

were invalid in light of the cited prior art references. The AL] also found that the respondents

failed to prove that they hold licenses tmder the asserted patents and failed to prevail on their

equitable/FRAND defenses. The ALJ further found that InterDigital established the existence of

a domestic industry that practices the asserted patents under 19 U.S.C. § 1337(a)(2).

On July 15, 2013, InterDigital filed a petition for review of the ID. That same day, the

Commission investigative attorney and the respondents filed separate petitions for review.

Respondents also filed a contingent petition for review. On July 23, 2013, the parties filed

responses to the petitions and contingent petition for review.

On September 4, 2013, the Commission determined to review the final ID in its entirety

and requested briefing on a single issue. 78 Fed. Reg. 55294 (Sept. 10, 2013). On September 27,

2013, the parties filed Written submissions on the single issue. On October 21, 2013, the parties

filed reply submissions (the delay in filing replies was due to the government shutdown).

Having examined the record of this investigation, including the ALJ’s final ID, the

petitions for review, and the responses thereto, the Commission has determined to affirm the

ALJ’s finding of no violation of section 337 as to Nokia, Huawei, and ZTE with the modifications

set forth in the Commission opinion, viz., with respect to the Power Ramp Up patents (the ’830 and

’636 patents), the Commission has determined to (1) affirm the ALJ’s finding that the accused

products do not satisfy the “successively sends transmissions” limitation construed to mean

“transmits to the base station, one after the other, codes that are shorter than a regular length code”

to the extent that the “successively sends transmissions” refer to the short codes and (2) for the

’636 patent, the Commission has determined to vacate the ALJ’s findings regarding the

“subsequent transmission” limitation. With respect to the Power Control patents (the ’406 and

’332 patents), the Commission has determined to modify the ALJ’s construction of the claim term

“power control bit” to mean “single-bit power control information transmitted at an APC data rate

equivalent to the APC update rate,” and construes the limitation to encompass only the “single-bit

power control information” portion. The Commission adopts the ALJ’s findings pertaining to the

’970, ’013, and ’127 patents. Due to the LG remand, all other issues, including domestic industry,

continue to remain under review. A Commission opinion will follow issuance of this notice.

The authority for the Commission’s determination is contained in section 337 of the Tariff

Act of 1930, as amended (19 U.S.C. § 1337), and in sections 210.42-46 and 210.50 ofthe

Cormnission’s Rules of Practice and Procedure (19 C.F.R. §§ 210.42-46 and 210.50).

By order of the Commission.

Lisa R. Barton

W%@

Acting Secretary to the Commission

Issued: December 19, 2013

3
CERTAIN WIRELESS DEVICES WITH 3G CAPABILITIES Inv. No. 337-TA-800

AND COMPONENTS THEREOF

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached NOTICE has been served by hand

upon the Commission Investigative Attorney, Brian Koo, Esq., and the following parties as

indicated on December 19, 2013. ,

Lisa R. Barton, Acting Secretary

U.S. International Trade Commission

500 E Street, SW, Room 112

Washington, DC 20436

On Behalf of Complainants InterDigital Communications,

Inc.. InterDigital Technology Corporation. IPR Licensing,

Inc. and InterDigital Holdings, Inc.:

Maximilian A. Grant, Esq. ) Via Hand Delivery

LATHAM & WATKINS LLP ) Via Express Delivery

555EleventhStreet,NW, Suite 1000 M First ClassMail

Washington, DC 20004 ) Other:

On Behalf of Respondents Huawei Technologies Co.. Ltd.._

Hnawei Device USA. Inc.. and FutureWei Technologies. Inc.:

Sturgis M. Sobin, Esq.

COVINGTON & BURLING LLP

1201 Pennsylvania Avenue, NW

Washington, DC 20004-2401

On Behalf of Respondents ZTE Corporation and ZTE (USA)

Inc.:

Jay H. Reiziss, Esq.

BRINKS GILSON & LIONE

1775 Pennsylvania Ave., Suite 900

Washington, DC 20006-2219

On Behalf of Respondents Nokia Corporation and Nokia Inc.:

Jamie D. Underwood, Esq.

ALSTON &BIRD LLP

950 F Street, NW

Washington, DC 20004

( ) Via Hand Delivery

( ) Vi Express Delivery

( First Class Mail ( )Omen?

( ) Via Hand Delivery

( ) V' Express Delivery

( First Class Mail

( ) Other:

( ) Via Hand Delivery

( )V' Express Delivery

( 44: FirstClassMail

( ) Other:
PUBLIC VERSION

UNITED STATES INTERNATIONAL TRADE COMMISSION

WASHINGTON, D.C. 20436

In the Matter of

CERTAIN WIRELESS DEVICES WITH Investigation N0. 337-TA-800

3G CAPABILITIES AND COMPONENTS

THEREOF

INITIAL DETERMINATION

Administrative Law Judge David P. Shaw

Pursuant to the notice of investigation, 76 Fed. Reg. 54252 (Aug. 31, 2011), this is the

Initial Determination in Certain Wireless Devices with 3G Capabilities and Components

Thereofi United States Intemational Trade Commission Investigation No. 337-TA-800.

It is held that a violation of section 337 of the Tariff Act, as amended, has not occurred in

the importation into the United States, the sale for importation, or the sale within the United

States after importation, of certain wireless devices with 3G capabilities, or components thereof,

with respect to asserted claims asserted claims 1, 2, 3, and 5 of U.S. Patent 7,706,830; asserted

claims 1, 2, 4, 6, 7, and 8 of U.S. Patent No. 8,009,636; asserted claims 6, 13, 20, 26, and 29 of

U.S. Patent N0. 7,502,406; asserted claims 2, 3, 4, 7, 8, 9, 10, 11, 14, 22, 23, 24, and 27 of U.S.

Patent No. 7,706,332; asserted claims 1, 2, 3, 4, 5, 6, and 7 of U.S. Patent No. 7,970,127;

asserted claims 16, 17, 18, and 19 of U.S. Patent No. 7,536,013; or asserted claims 1, 2, 3, 4, 5,

6, 7, 8, 9, 10,11,12,13,14,15,16,17, and 18ofU.S. PatentNo. 7,616,970.
PUBLIC VERSION

TABLE OF CONTENTS

Page

Background ....................................................................................................................... .. 1

A. Institution of the Investigation; Procedural History.........

B. The Private Parties; Assignment of Patents ........................................................... ..5

C. The Accused Products............................................................................................ ..6

1. The Accused Nokia Products ..................................................................... ..8

2. The Accused Huawei Products ................................................................ ..1O

3. The Accused ZTE Products ..................................................................... ..13

Jurisdiction ...................................................................................................................... .. 15

Importation ...................................................................................................................... .. 16

The Power Ramp-Up (‘S30 and ‘636) Patents ................................................................ .. 16

A. Overview of the Patents and Asserted Claims ..................................................... ..16

l. The ‘830 Patent ........................................................................................ ..16

2. The ‘636 Patent ........................................................................................ ..l8

B. Claim Construction .............................................................................................. ..19

1. General Principles of Law ....................................................................... ..l9

2. Level of Ordinary Skill ............................................................................ ..22

3. Construction of Disputed Claim Tenns ................................................... ..22

C. Infringement ......................................................................................................... ..38

1. General Principles of Law ....................................................................... ..38

2. The Accused Power Ramp-Up Products.................................................. ..44

3. InterDigita1’s Reliance on the WCDMA Standard .................................. ..46

4. Global Infringement Issues ...................................................................... ..48
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

5. ‘83OPatent —Claim 1 .............................................................................. ..59

6. ‘83OPatent —Claim 2 .............................................................................. ..63

7. ‘83OPatent —Claim 3 .............................................................................. ..64

8. ‘S30 Patent —Claim 5 .............................................................................. ..64

9. ‘636 Patent —Claim 1 .............................................................................. ..65

i10. ‘636 Patent —Claim 2 .............................................................................. ..66

ll. ‘636 Patent YClaim 4 .............................................................................. ..67

12. ‘636 Patent —Claim 6 .............................................................................. ..68

13. ‘636 Patent —Claim 7 .............................................................................. ..68

l4. ‘636 Patent —Claim 8 .............................................................................. ..69

D. Validity ................................................................................................................ ..70

1. General Principles of Law ....................................................................... ..70

2. Anticipation and Obviousness ................................................................. ..74

3. Lack of Written Description .................................................................... ..92

The Closed-Loop Power Control (‘406 and ‘332) Patents ............................................. .. 95

A. Overview of the Patents and Asserted Claims ..................................................... ..95

l. The ‘406 Patent ........................................................................................ ..95

2. The ‘332 Patent ........................................................................................ ..97

B. Claim Construction ..............................................................................................l00

1. Level of Ordinary Skill .......................................................................... ..l00

2. Construction of Disputed Claim Terms ...................................................l00

C. Infringement ....................................................................................................... ..111

1. The ‘406 and ‘332 Accused Products .................................................... ..1l1

ii
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

Operation of the WCDMA Products...................................................... ..114

Operation of the CDMA2000 Products ................................................. ..119

Global Infringement Issues .................................................................... ..125

‘406 Patent —(Nonasserted) Claim 1..................................................... ..141

‘406 Patent —Claim 6 ............................................................................ ..144

‘406 Patent —(Nonasserted) Claim 7 ..................................................... ..144

‘406 Patent ~ Claim 13 .......................................................................... ..146

‘406 Patent —(Nonassened) Claim 15................................................... ..147

‘406 Patent ~ Claim 20 .......................................................................... ..l48

‘406 Patent —(Nonasserted) Claim 21 ................................................... ..149

‘406 Patent —(Nonasserted) Claim 22 ................................................... ..l50

‘406 Patent —Claim 26 .......................................................................... ..l5l

‘406 Patent —Claim 29 .......................................................................... ..151

‘332 Patent —(Nonasserted) Claim l ..................................................... ..l53

‘332 Patent —Claim 2 ............................................................................ ..154

‘332 Patent —Claim 3 ............................................................................ ..l55

‘332 Patent—Claim4 ..............................................................................156

‘332 Patent—Claim7 ..............................................................................l56

‘332 Patent—Claim 8 ............................................................................ ..l57

‘332 Patent —Claim 9 ............................................................................ ..l60

‘332 Patent—Claim 10 .......................................................................... ..l60

‘332 Patent—Claim 11 .......................................................................... ..l6l

‘332 Patent —Claim 14 .......................................................................... ..162

iii
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

25. ‘332 Patent —(Nonasserted) Claim 21 ................................................... ..162

26. ‘332 Patent —Claim 22 .......................................................................... ..l65

27. ‘332 Patent —Claim 23 .......................................................................... ..l66

28. ‘332 Patent—Cla'nn 24 .......................................................................... ..l67

29. ‘332 Patent —Claim 27 .......................................................................... ..167

30. Indirect Infringement (‘406 Patent) ....................................................... ..168

D. Validity ....................................................................................................... .........173

1. Priority Date ........................................................................................... ..173

2. Anticipation and Obviousness ............................................................... ..191

The UE ID (‘127 and ‘0l3) Patents .............................................................................. .. 208

A. Overview of the Patents and Asserted Claims ....................................................208

l. The ‘127 Patent ...................................................................................... ..208

2. The ‘O13Patent ...................................................................................... ..21O

3. Overview of the Technology ................................................................. ..211

B. Claim Construction ............................................................................................ ..213

1. Level of Ordinary Skill .......................................................................... ..213

2. Construction of Disputed Claim Terms ...................................................2l3

C. Infringement ....................................................................................................... ..222

1. The UE ID Accused Products ................................................................ ..222

2. Global Infringement Issues .................................................................... ..23O

3. ‘127 Patent ~ Claim 1 ............................................................................ ..24O

4. ‘127 Patent —Claim 2 ............................................................................ ..25O

5. ‘127 Patent —Claim 3 ............................................................................ ..25l

iv
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

6. ‘127 Patent —Claim 4 ............................................................................ ..251

7. ‘127 Patent —Claim 5 ............................................................................ ..252

8. ‘127 Patent —Claim 6 ............................................................................ ..252

9. ‘127 Patent —Claim 7 ............................................................................ ..253

10. ‘O13Patent —Claim 16 .......................................................................... ..253

11. ‘O13Patent —Claim 17 .......................................................................... ..255

12. ‘O13Patent —Claim 18 .......................................................................... ..255

13. ‘O13Patent—Claim 19 .......................................................................... ..256

14. Infringement of the Accused Products Upon Importation .......................257

D. Validity .............................................................................................................. ..258

1. Priority Date (‘127 and ‘013 Patents) .................................................... ..258

2. Anticipation and Obviousness (‘127 and ‘O13Patents) ......................... ..26O

3. Lack of Written Description (‘127 Patent) ............................................ ..286

4. Indefiniteness (‘127 Patent) ................................................................... ..29O

The Dual Mode Subscriber Unit (‘970) Patent ............................................................. .. 293

A. Overview of the ‘970 Patent and Asserted Claims ............................................ ..293

B. The ‘970 Accused Products ............................................................................... ..295

C. Claim Construction ............................................................................................ ..297

1. Level of Ordinary Skill .......................................................................... ..297

2. Construction oi Disputed Claims........................................................... ..297

D. Infringement....................................................................................................... ..315

1. Claim 1................................................................................................... ..315

2. Claim 2................................................................................................... ..325

V
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

3. Claim 3................................................................................................... ..326

4. Claim 4................................................................................................... ..326

5. Claim 5................................................................................................... ..327

6. Claim 6................................................................................................... ..328

7. Claim 7................................................................................................... ..329

8. Claim 8................................................................................................... ..329

9. Claim 9................................................................................................... ..330

10. Claim 10................................................................................................. ..331

11. Claim 11................................................................................................. ..333

12. Claim 12................................................................................................. ..333

13. Claim 13................................................................................................. ..334

14. Claim 14................................................................................................. ..335

15. Claim 15................................................................................................. ..336

16. Claim 16................................................................................................. ..336

17. Claim 17....................................................................................... ..T.........337

18. Claim 18................................................................................................. ..337

19. Infringement of the Accused Products Upon Importation .......................338

20. Indirect Infringement ............................................................................. ..339

E. Validity .............................................................................................................. ..342

1. Priority Date ........................................................................................... ..342

2. Anticipation and Obviousness ............................................................... ..345

VIII. Domestic Industry ......................................................................................................... .. 382

A. General Principles of Law ................................................................................. ..382

vi
PUBLIC VERSION

TABLE OF CONTENTS (CONT’D)

Page

B. InterDigita1’s Domestic Investments ................................................................. ..385

1. 3G Licensing Investments...................................................................... .385

2. Alleged Investments in the Asserted Patents ......................................... ..392

C. Analysis and Conclusion on the Domestic Industry .......................................... ..397

1. InterDigital’s Reliance on the Asserted Patent Families .........................397

2. The Nexus Between InterDigital’s 3G Licensing Investments and the

Asserted Patents ..................................................................................... ..400

3. InterDigital’s Domestic 3G Licensing Investments Are Substantial .......4l3

Other Defenses.............................................................................................................. .. 417

A. FRAND .............................................................................................................. ..417

1. The Relevant IPR Policies ..................................................................... ..4l8

2. Respondents’ Contentions ..................................................................... ..422

B. License ............................................................................................................... ..44O

l. General Principles of Law ..................................................................... ..44O

2. Factual Background ............................................................................... ..441

3. Analysis and Conclusion ........................................................................ ..442

Conclusions of Law ...................................................................................................... .. 446

Initial Determination on Violation ................................................................................ .. 447

Order ............................................................................................................................. .. 448

vii
PUBLIC VERSION

The following abbreviations may be used in this Initial Determination:

ACK

ALJ

APC

ASIC

CDMA

CDX

CPX

CX

Dep.

DPCCH

DPDCH

EDIS

E-DPDCH

ETSI

FRAND

HSDPA

HS-PDSCH

HS-SCCH

IMT-2000

INPADOC

ITU

JDX

Acknowledgement

Administrative Law Judge

Adaptive Power Control

Application Specific Integrated Circuit

Code Division Multiple Access

Complainants’ Demonstrative Exhibit

Complainants’ Physical Exhibit

Complainants’ Exhibit

Deposition

Dedicated Physical Control Charmel

Dedicated Physical Data Channel

Electronic Document Imaging System

Enhanced Dedicated Physical Data Channels

European Telecommunications Standards Institute

Fair, Reasonable and Non-Discriminatory

High Speed Downlink Packet Access

High Speed Physical Downlink Shared Channel

High Speed Shared Control Channel

International Mobile Telecommunications-2000

Standard

International Patent Document Center

International Telecommunications Union

Joint Demonstrative Exhibit

viii
IPX

JX

MPEP

PRACH

PTO

RAND

RDX

RF

RPX

RWS

RX

SDX

SPX

SX

SSO

TIA

TPC

Tr.

UE

UE ID

UMTS

WCDMA /

W-CDMA

WLAN /

W-LAN

PUBLIC VERSION

Joint Physical Exhibit

Joint Exhibit

Manual of Patent Examining Procedure

Physical Random Access Channel

U.S. Patent and Trademark Office

Reasonable and Non-Discriminatory

Respondents’ Demonstrative Exhibit

Radio Frequency

Respondents’ Physical Exhibit

Rebuttal Witness Statement

Respondents’ Exhibit

Staffs DemonstrativeExhibit

Staff’s Physical Exhibit

Staff‘s Exhibit

Standard-Setting Organization

Telecommunications Industry Association

Transmit Power Control

Transcript

User Equipment

User Equipment Identification

Universal Mobile Telecommunications System

Wideband Code Division Multiple Access

Wireless Local Area Network

ix
PUBLIC VERSION

WS Witness Statement

3G Third Generation

3GPP Third Generation Partnership Project

3GPP2 Third Generation Partnership Project 2

X
PUBLIC VERSION

I. Background

A. Institution of the Investigation; Procedural History

By publication of a notice in the Federal Register on August 31, 2011, pursuant to

subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission instituted

this investigation to detennine:

[W]hether there is a violation of subsection (a)(l)(B) of section 337 in the

importation into the United States, the sale for importation, or the sale

Within the United States after importation of certain wireless devices with

3G capabilities and components thereof that infringe one or more of

claims 1-15 of the ‘540 patent [U.S. Patent N0. 7,349,540]; claims 1, 2,

6-9, 13, 15-16, 20-22, 26, 28-30, 34-36, and 40 of the ‘406 patent [U.S.

Patent No. 7,502,406]; claims 1-19 of the ‘O13 patent [U.S. Patent No.

7,536,013]; claims 1-18 of the ‘97O patent [U.S. Patent No. 7,616,970];

claims 1-27 of the ‘332 patent [U.S. Patent No. 7,706,332]; claims 1-3,

5-8, 10, 16-18, 20-23, and 25 of the ‘830 patent [U.S. Patent No.

7,706,830]; and claims 1-14 of the ‘127 patent [U.S. Patent No.

7,970,127], and whether an industry in the United States exists as required

by subsection (a)(2) of section 337.

76 Fed. Reg. 54252 (Aug. 31, 2011).

The Commission named as complainants InterDigital Communications, LLC of King of

Prussia, Pennsylvania;l InterDigital Technology Corporation of Wilmington, Delaware; and IPR

Licensing, Inc. of Wilmington, Delaware. Id.

The Commission named as respondents Huawei Technologies Co., Ltd. of Shenzhen,

China; FutureWei Technologies, Inc. d/b/a Huawei, Technologies (USA) of Plano, Texas

1InterDigital Communications, LLC subsequently moved to amend the Complaint and Notice of

Investigation to reflect the fact that it converted from a Pennsylvania limited liability company to

a Delaware corporation, and changed its name to InterDigital Communications, Inc. to reflect the

change in corporate form. The administrative law judge granted this motion in an initial

determination. See Order N0. 91 (Jan. 17, 2013), ajjfld,Notice of Cormnission Determination

Not to Review an Initial Determination Granting Complainants’ Motion for Leave to Amend the

Complaint and Notice of Investigation (Feb. 4, 2013).

The InterDigita1 entities will be referred to collectively as “InterDigital.”
PUBLIC VERSION

(together, “Huawei”); Nokia Corporation of Espoo, Finland; Nokia Inc. of White Plains, New

York (together, “Nokia”); ZTE Corporation of Shenzhen, China; and ZTE (USA) Inc. of

Richardson, Texas (together, “ZTE”) (collectively, “Respondents”). Id.

The Office of Unfair Import Investigations (“OUII” or “Staft”) was also named as a party

to this investigation. Id.

The target date for completion of this investigation was set at approximately 18 months,

i.e., February 28, 2013. Order No. 6 at 1 (Oct. 14, 2011), afl"d, Notice of Commission

Determination Not to Review an Initial Determination Setting an 18-Month Target Date for

Completion of the Investigation (Nov. 2, 2011).

InterDigital moved to amend the complaint and notice of investigation (1) to add

allegations of infringement of claims 1-4, 6-9, and 29-31 of U.S. Patent No. 8,009,636 (“the ‘636

patent”) and (2) to name LG Electronics, Inc.; LG Electronics U.S.A., Inc.; and LG Electronics

Mobilecomm U.S.A., Inc. (together, “LG”) as respondents. The administrative law judge

granted InterDigital’s motion in an initial determination. See Order No. 5 (Dec. 5, 2011), afl’d,

Notice of Commission Determination Not to Review an Initial Determination Granting

Complainants’ Motion for Leave to Amend the Complaint and Notice of Investigation (Dec. 21,

2011).

InterDigital, Nokia, Huawei, and ZTE subsequently moved to extend the target date of

this investigation by four months.2 The administrative law judge granted the parties’ motion in

an initial determination, and extended the target date to June 28, 2013. See Order No. 13 (Jan. 6,

2LG did not join or otherwise respond to the motion. See Order No. 13. The Staff did not

oppose the motion. See id.

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PUBLIC VERSION

2012), afl”d, Notice of Commission Detennination Not to Review an Initial Determination

Extending the Target Date for Completion of the Investigation (Jan. 25, 2012).

Pursuant to the Supplement to the Strategic Human Capital Plan 2009-2013, issued by the

Commission on January 18, 201 1, the Staff provided notice that its participation in this

investigation “will be limited to issues relating to U.S. Patent Nos. 7,349,540, 7,536,013, and

7,970,127, as well as issues relating to Respondents’ patent misuse and/or FRAND defenses.”

See Commission Investigative Staffs Notice of Partial Participation (Jan 18, 2012).

InterDigita1 filed a motion to amend the complaint and notice of investigation to add

Huawei Device USA, Inc. as a respondent. The administrative law judge granted InterDigital's

motion in an initial determination. See Order No. 19 (Apr. 11, 2012), aj]”d, Notice of

Commission Detennination Not to Review an Initial Determination Granting Complainants’

Motion for Leave to Amend the Complaint and Notice of Investigation (May l, 20l2).3

LG filed a motion pursuant to 19 C.F.R § 210.21(a)(2) to terminate the investigation as to

LG based on an arbitration agreement. The administrative lawjudge granted LG’s motion in an

initial detennination. See Order No. 30 (June 4, 2012), afl'd, Notice of Commission

Detennination Not to Review an Initial Determination Terminating Certain Respondents From

the Investigation (July 6, 2012). InterDigital appealed LG’s termination from this investigation,

and the Federal Circuit recently issued an opinion reversing the termination. InterDigital

Commc ’ns, LLC v Int’! Trade Comm ’n,No. 2012-1628 (Fed. Cir. June 7, 2013).

InterDigital moved to terminate this investigation in part, i.e., as to claims 1-15 of the

‘O13patent; claims 8-14 of the ‘127 patent; all claims of the ‘540 patent; claims 1, 2, 9, 16, 28,

3“Huawei” hereinafter refers collectively to Huawei Technologies Co., Ltd.; FutureWei

Technologies, Inc. d/b/a Huawei, Technologies (USA); and Huawei Device USA, Inc.

3
PUBLIC VERSION

30, 34-36, and 40 ofthe ‘406 patent; claims 5, 6, 12, 13, 15-20, 25, and 26 ofthe ‘332 patent;

and claims 16-18, 20-23, and 25 of the ‘830 patent. The administrative law judge granted

InterDigital’s motion in an initial determination. See Order No. 38 (July 24, 2012), afi”d, Notice

of Commission Determination Not to Review an Initial Determination Tenninating Certain

Claims From the Investigation (Aug. 9, 2012).

On August 14, 2012, a prehearing conference was held to discuss discovery and

scheduling matters.

In response to a joint motion filed by the private parties, the administrative law judge

issued an initial determination extending the target date for this investigation to October 28,

2013. See Order No. 63 (Sept. 10, 2010), afl’d, Notice of Commission Determination Not to

Review an Initial Detennination Extending the Target Date for Completion of the Investigation

(Oct. 1, 2012). The due date for the Initial Determination on violation is therefore June 28, 2013

Order No. 63 at 2.

InterDigital moved to terminate this investigation in part, i.e., as to claims 7, 8, 15, 21,

and 22 of the ‘406 patent; claims 1 and 21 of the ‘332 patent; and claims 6-8 and 10 of the ‘830

patent. The administrative law judge granted InterDigital’s motion in an initial detennination.

See Order No. 87 (Jan. 3, 2013), aff’d, Notice of Commission Determination Not to Review an

Initial Determination Terminating Certain Claims From the Investigation (Jan. 23, 2013).

A preheating conference was held on February 12, 2013, with the evidentiary hearing in

this investigation commencing immediately thereafter. The hearing concluded on February 22,

2013. See Order N0. 62; Hearing Tr. 1-2542. The private parties were requested to file

post-hearing briefs not to exceed 600 pages in length, and to file reply briefs not to exceed 300

4
PUBLIC VERSION

pages in length. Hearing Tr. 14. The Staff was requested to file a post-hearing brief not to

exceed 200 pages in length, and to file a reply brief not to exceed 100 pages in length. Id.

B. The Private Parties; Assignment of Patents

lnterDigital Communications, Inc. is a Pennsylvania limited liability company with its

principal place of business in King of Prussia, Pennsylvania. See Third Am. Compl. at 2, fl 2.1.

InterDigital Technology Corporation is a Delaware corporation with its principal place of

business in Wilmington, Deleware. Id. at 2, 1]2.2. IPR Licensing, lnc. is a Delaware corporation

with its principal place of business in Wihnington, Delaware. 1d. at 2-3, 1i2.3. InterDigital

Communications, Inc.; lnterDigital Technology Corporation; and IPR Licensing, Inc. are

subsidiaries of lnterDigital Inc., a Pennsylvania corporation. Id.

Huawei Technologies Co., Ltd. is a corporation organized and existing under the laws of

the People’s Republic of China with its principal place of business in Shenzhen, China. Resp. of

Huawei Techs. Co., Ltd. to Third Am. Compl. at 3-4, 1]3.1. FutureWei Technologies, lnc. d/b/a

Huawei, Technologies (USA) is a Texas corporation with a principal place of business in Plano,

Texas. Resp. of Futurewei Techs., Inc. to Third Am. Compl. at 4, 113.2. Huawei Device USA,

Inc. is a Texas corporation with a principal place of business in Plano, Texas. Resp. of Huawei

Device USA, Inc. to Third Am. Compl. at 4, 1]3.3.

Nokia Corporation is a Finnish corporation with its principal place of business in Espoo,

Finland. See Third Am. Compl. at 6, 1[3.4; Nokia’s Resp. to Third Am. Compl. at 4, {I3.3.

Nokia Inc. is a Delaware corporation with its principal place of business in White Plains, New

York. See Third Am. Compl. at 6, 1]3.5; Nokia’s Resp. to Third Am. Compl. at 4, 1}3.4

5
PUBLIC VERSION

ZTE Corporation is a Chinese corporation with a principal place of business in Shenzhen,

China. See ZTE Resp. to Third Am. Compl. at 5, 1]3.6. ZTE (USA) Inc. is a New Jersey

corporation with a principal place of business in Richardson, Texas. See id. at 5, 1]3.7.

The ‘S30 patent is assigned to InterDigital Technology Corporation. JX-0006 (‘83O

patent).

The ‘636 patent is assigned to InterDigital Technology Corporation. JX-OOO7(‘636

patent).

The ‘406 patent is assigned to InterDigital Technology Corporation. JX-0001 (‘406

patent).

The ‘332 patent is assigned to lnterDigital Technology Corporation. JX-0002 (‘332

patent).

The ‘970 patent is assigned to IPR Licensing, Inc. JX-0005 (‘97Opatent).

The ‘O13patent is assigned to InterDigital Technology Corporation. JX-0003 (‘O13

patent).

The ‘127 patent is assigned to InterDigital Technology Corporation. JX-0004 (‘127

patent).

C. The Accused Products

The accused products in this investigation are listed in a joint filing required by the

procedural schedule. See Order No. 18 (requiring a “joint statement regarding identification of

accused products”). By listing a product in the joint filing, Respondents have not admitted

infringement. Nevertheless, the joint filing indicates the final extent of InterDigital’s accusations

in this investigation. See Joint Statement Regarding Identification of Accused Products (EDIS

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PUBLIC VERSION

Doc. No. 486154) (“Joint Statement of Accused Products”); Order No. 86 (granting leave to

amend the Joint Statement of Accused Products); Order No. 94 (same).

The products and technology at issue in this investigation concern wireless

communications devices with Third Generation (“3G”) cellular capabilities, and components

thereof. See, e.g., CX-1310C (Prucnal WS) at Q58. 3G describes a family of technologies that

fulfills the International Mobile Telecommunications-2000 specifications (“IMT-2000”) defined

by the International Telecommunication Union (“ITU”). Id Two of the most widely adopted

3G systems are based on code division multiple access (“CDMA”) teclmology, i.e., Wideband

CDMA (“WCDMA”) developed by the Third Generation Partnership Project (“SGPP”) and

CDMAZOOOdeveloped by the Third Generation Partnership Project 2 (“3GPP2”). Id. at Q59.

InterDigital accuses a total of 150 devices of infringement in this investigation. Each

accused product is designed to operate with either the WCDMA standard, the CDMAZOOO

standard, or both standards. See, e.g., CX-1310C (Prucnal WS) at Q1 18. The accused

functionalities needed to comply with the relevant standards are generally implemented in a

baseband processor, which is also referred to as a baseband ASIC,4 chip, or chipset. See id. The

accused products can be grouped into three categories according to the baseband processor used

in the device: the “Qualcomm accused products” use baseband processors developed by

Qualconnn, the “Nokia/TI accused products” use baseband processors developed by Nokia and

manufactured by Texas Instruments, and the [

]. See Compls. Br. at 13.

4 ASIC is an acronym for application-specific integrated circuit.

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PUBLIC VERSION

1. The Accused Nokia Products

There are 51 Nokia devices at issue in this investigation, and they include Nokia-branded

phones, Vertu-branded phones, and a mini laptop. See Compls. Br. at 13. Of these accused

products, 10 use baseband processors developed by Qualcomm, and 41 use baseband processors

developed by Nokia and manufactured by [ ]. Id. at 13-14. The following

table sets forth the Nokia devices at issue in this investigation, the baseband processor used in

each device, including the baseband manufacturer and model identifier, and whether the device

is designed to operate in accordance with the WCDMA or CDMAZOOOstandards:

Device Name Baseband Processor Baseband Processor Model

Developer

WCDMAand/or

CDMAZOOO

500 ([ WCDMA

700 ( ) WCDMA

701 ( ) WCDMA

s3so( ) WCDMA

6700 Slide ( ) WCDMA

Astound C7 (

)

WCDMA

Astound C7 ( WCDMA

)

cs-01 ( ) WCDMA

C5-O3 ( WCDMA

C5-O4 ( ) WCDMA

cs-01 (

)

WCDMA

E5( l WCDMA

E6( ) WCDMA

E7( WCDMA

)

E72 ( WCDMA

)

E73 ( )1 WCDMA

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PUBLIC VERSION

Device Name Baseband Processor Baseband Processor Model

Developer

WCDMAand/or

CDMAZOOO

N8[( ) WCDMA

n9-00(

l

WCDMA

N900( ) WCDMA

Pureview 808

)

( WCDMA

Vertu (

WCDMA

Vertu (

WCDMA

Vertu (

WCDMA

Vertu (

WCDMA

xa-o2( WCDMA

x1-oo(

)

WCDMA

5230 ( WCDMA

5230(

l

l WCDMA

6790Sfide( WCDMA

6790 Slide ( WCDMA

cs-oo( WCDMA

l

E71(

l

WCDMA

N97(

)

WCDMA

N97 mini (

l

WCDMA

xs(

)

WCDMA

E63-2 ( WCDMA

)

27so(

)

WCDMA

3710(

)

WCDMA

7230 ( ) WCDMA

c2-o1(

l

WCDMA

Vertu ( ) WCDMA

710 Lumia

( )

WCDMA

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PUBLIC VERSION

Device Name Baseband Processor Baseband Processor Model

Developer

WCDMAand/or

CDMAZOOO

[800 Lumia

l

l

WCDMA;

CDMAZOOO

900 Lumia

l

WCDMA

Booklet 3G

( )

WCDMA

Lumia 719

l l

WCDMA;

CDMAZOOO

Lumia 810 (

WCDMA

Lumia 820 (

WCDMA

Lumia 822 (

WCDMA

Lumia 920 (

WCDMA

7705 Twist (

l

l CDMAZOOO

Compls. Br. at 14-15 (citing CX-1065C (7/25/ 12 Nokia’s Resp. to Compls. Interrog. N0. 38);

CX-0104C; CX-0627C; CX-0151; CX-0152; CX-0153; CX-0154; CX-0155; CX-0156;

CX-0158C; CX-0159C; CX-0160C; CX-0161C; CX-0185; CX-0186; CX—0187;CX-0188;

CX-0189; CX-0190; CX-0191; CX-0192; CX-0193; CX-0194; CX-0195; CX-0196; CX-0197;

CX-0198; CX-0199; CX-0200; CX-0201; CX-0202; CX-0203; CX-0204; CX-0205; CX-0206;

CX-0207; CX-0208; CX-0209; CX-0210; CX-0211; CX-0212C; CX-0213C; CX-0214C;

CX-0215C; CX-0216C; CX-0217C; CX-0218C; CX—O219C;CX-0290; CX-0294; CX-0295;

CX-0296; CX-0297; CX-0298).

The Accused Huawei Products

There are 65 Huawei devices at issue in this investigation, and they include smartphones,

feature phones, tablets, Mobile WiFi (a.k.a. “MiFi”) devices, USB laptop sticks, wireless

St ]. CX-0157C (Nokia Booklet

Configuration Chart, at NK80OIDCO4303985).

10
PUBLIC VERSION

gateways, a fixed wireless terminal, and 3G modules. See Compls. Br. at l5-16. Of these

accused products, [

]. Id. at 16. The following table sets

forth the Huawei devices at issue in this investigation, the baseband processor used in each

device, including the baseband manufacturer and model identifier, and whether the device is

designed to operate in accordance with the WCDMA or CDMA2000 standards:

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PUBLIC VERSION

12
PUBLIC VERSION

Compls. Br. at 16-17 (citing by CX-1109C (10/24/12 Huawei’s Resp. to Compls. Interrog. No.

61); CX-1113C (10/29/12 Replacement Ex. D to Huawei’s Resp. to Compls. Interrog. No. 61);

CX-1111C (10/29/12 Huawei’s Resp. to Compls. Interrog. No. 152); CX-1112C (10/29/12

HuaWei’s Resp. to Compls. Interrog. No. 11); CX-0163C; CX-0164C; CX-0165; CX-0166;

CX-0167; CX-O221C; CX-0222C).

3. The Accused ZTE Products

There are 34 ZTE devices at issue in this investigation, and they include smartphones,

feature phones, tables, MiFi devices, USB laptop sticks, 3G modules, and a wireless home phone

device. See Compls. Br. at 18. All 34 ZTE accused devices use baseband processors developed

by Qualcomm. Id. The following table sets forth the ZTE devices at issue in this investigation,

the baseband processor used in each device, including the baseband manufacturer and model

identifier, and Whetherthe device is designed to operate in accordance with the WCDMA or

CDMA2000 standards:

Model NumbéHDévice& ii Baseband Prbcessoraii iBaSebahd 1qwCDMA/Rand/or“ § Name) Developer iiPrqcess',orModel}, j1coMA2opo

AC30 (Fivespot) Qualcomm MSM7625 WCDMA;

CDMA2000

13
PUBLIC VERSION

Model Nurnber (Device, BasebandProcessor

Developer I

Baseband L A

Processor Mode|' LLL

WCDMAand/or

cmvimzoon L

EuFi890 (Jetpack EuFi890) Qualcomm MDM96OO WCDMA;

CDMA2000

F160 / P622F2 (F160) Qualcomm QSC624O or

O.SC627O

WCDMA

F555 / P671A91 (Wombat) Qualcomm QSC6270 WCDMA

MF61 (46 Hotspot) Qualcomm MDM82OOA WCDMA

MF683 (Rocket 3.0) Qualcomm MDM822O WCDMA

P671B3O(Z331/ Morgan) Qualcomm QCS627O WCDMA

P671B4O (Z221 / Michael) Qualcomm QCS627O WCDMA

P736T (Avail) Qualcomm MSM7227 WCDMA

WF720 (WF720) Qualcomm QSC627O WCDMA

Z431 (Spider) Qualcomm QSC627O WCDMA

Z990 (Merit) Qualcomm MSM7227 WCDMA

A210 (CAPTR ll) Qualcomm QSC6055-CS3 CDMAZOOO

A310 (MSGM8 ||) Qualcomm O,SC6055-CS3 CDMAZOOO

A410(rxrms 36) Qualcomm QSC6075 CDMAZOOO

A415 (Memo) Qualcomm QSC6075 CDMAZOOO

A605 Qualcomm QSC6085 CDMAZOOO

AC3781(Cradlepoint) Qualcomm QSC6085 CDMAZOOO

D930 (Chorus) Qualcomm MSM7627 CDMAZOOO

F350 (Salute) Qualcomm Q5C6055-CS3 CDMAZOOO

F450 (Adamant) Qualcomm QSC6155 CDMAZOOO

MC2261 (Wombat) Qualcomm Q5C111O CDMAZOOO

MC2718 (Wombat) Qualcomm MDM6085 CDMAZOOO

N850 (Fury) Qualcomm MSM8655 CDMAZOOO

N859 (Render (aka "Tania" )) Qualcomm MSM7627A CDMAZOOO

N860 (Warp) Qualcomm MSM8655 CDMAZOOO

N910 (Anthem (LTE)) Qualcomm MSM866O CDMAZOOO

vss (Optik) Qualcomm MSM866O CDMAZOOO

X500 (Score (aka "Score

|V|n))

Qualcomm MSM7627 CDMAZOOO

N861 (Warp ll) Qualcomm MSM8655,

MDM96OO

CDMAZOOO

V66 (Turbine 7.0) Qualcomm MSM866O,

MDM96OO

CDMAZOOO

V8000 (Engage) Qualcomm MSM8655 CDMAZOOO

X501 (Groove) Qualcomm MSM7627A CDMAZOOO

N9500 (Flash) Qualcomm MSM8960 CDMAZOOO

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PUBLIC VERSION

Compls. Br. at 18-19 (citing CX-1140C (10/19/12 ZTE’s Resp. to Compls. Interrog. No. 38);

CX-1138C (8/13/12 ZTE’s Corrected Resp. to Compls. Interrog. No. ll); CX-0169C;

CX-0170C; CX-0171C; CX-0172C; CX-0173C; CX-0174; CX-0175C; CX-0176C; CX-0177C;

CX-0178C; CX-0179C; CX-0180C; CX-0181C; CX-0182C; CX-0183C).

II. Jurisdiction

No party has contested the Cornrnission’s personal jurisdiction over it. See, e.g., Compls.

Br. at 19-20; Resps. Br at 22; Staff Br. at 20. Indeed, all parties appeared at the evidentiary

hearing, and presented evidence. It is found that the Commission has personal jurisdiction over

all parties.

No party has specifically contested the Commission’s in rem jurisdiction over the

accused products. See, e.g., Compls. Br. at 19-20; Resps. Br at 22; Staff Br. at 20. InterDigital

has based its importation arguments on completed acts of importation. Further, as discussed

below, Respondents have stipulated to acts of importation with respect to the products accused

LlI1d€I‘the asserted patents. Accordingly, it is found that the Commission has in rem jurisdiction

over all products accused under the asserted patents.

No party has contested the Commission’s jurisdiction over the subject matter of this

investigation. See, e.g., Compls. Br. at 19-20; Resps. Br at 22; Staff Br. at 20. Indeed, as

indicated in the Commission’s notice of investigation, discussed above, this investigation

involves the alleged importation of products that infringe United States patents in a manner that

violates section 337 of the Tariff Act, as amended. Accordingly, it is found that the Commission

has subject matter jurisdiction over this investigation.

15
PUBLIC VERSION

III. Importation

As indicated in the notice of investigation, quoted above, this investigation was instituted

to determine whether a violation of section 337 has occurred in “the importation into the United

States, the sale for importation, or the sale within the United States after importation” of certain

products. See 76 Fed. Reg. 54252 (Aug. 31, 2011); 19 U.S.C. § 1337(a)(1)(B) (making

unlawfitl, in certain circumstances, the “importation into the United States, the sale for

importation, or the sale within the United States afier importation by the owner, importer, or

consignee, of articles that . . . infringe a valid and enforceable United States patent . . . .”). It has

long been recognized that an importation of even one accused product can satisfy the importation

requirement of section 337. See Certain Trolley WheelAssemblies, Inv. No. 337-TA-161,

Comm’n Op. at 7-8, USITC Pub. No. 1605 (Nov. 1984) (deeming the importation requirement

satisfied by the importation of a single product of no commercial value).

In this investigation, it is uncontested that the importation requirement is satisfied with

respect to the products alleged to infringe the asserted patents. See JX-0023C (Joint Stipulation

Between InterDigital Complainants and Huawei Respondents Regarding Importation of Accused

Products); JX-0024C (Joint Stipulation Between Nokia and InterDigital Regarding Importation

of Accused Products); JX-0025C (Joint Stipulation Between ZTE Respondents and InterDigital

Regarding Importation of Accused Products).

IV. The Power Ramp-Up (‘830 and ‘636) Patents

A. Overview of the Patents and Asserted Claims

1. The ‘830 Patent

Asserted U.S. Patent No. 7,706,830 (“the ‘830 patent”) is titled, “Method and Subscriber

Unit for Performing an Access Procedure.” JX-0006 (‘83Opatent). The ‘830 patent issued on

16
PUBLIC VERSION

April 27 2010, and the named inventors are Fatih M. Ozluturk and Gary R. Lomp. Id. The 830

patent relates generally to the way in which a subscriber unit gains access to a cellular CDMA

system Id at Abstract. The ‘830 patent is related to the asserted ‘636 patent; these two patents

together are also referred to as the “Power Ramp-Up” patents. The specifications of the ‘830 and

636 patents are substantially the same.

InterD1g1ta1asserts independent claim l and dependent claims 2, 3, and 5 of the ‘83O

patent These claims read as follows:

1 A wireless code division multiple access (CDMA) subscriber unit

comprising:

a transmitter configured such that, when the subscriber unit is first

accessing a CDMA network and wants to establish communications

with a base station associated with the network over a communication

Cl'13.Ill1€lto be indicated by the base station, the transmitter successively

sends transmissions prior to the subscriber unit receiving from the base

station an indication that at least one of the successively sent

transmissions has been detected by the base station;

wherein each of the successively sent transmissions is produced using

a sequence of chips, wherein the sequence of chips is not used to

increase bandwidth;

the transmitter further configured such that the transmitter sends to the

base station a message indicating to the base station that the subscriber

unit wants to establish the commtmications with the base station over

the communication channel to be indicated by the base station, the

message being sent only subsequent to the subscriber unit receiving

the indication;

wherein at least two of the successively sent transmissions are

produced using different sequences of chips;

wherein each of the successively sent transmissions is shorter than the

message; and

wherein each of the successively sent transmissions and the message

are produced using portions of a same sequence of chips, wherein the

same sequence of chips is not used to increase bandwidth.

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PUBLIC VERSION

2. The wireless code division multiple access (CDMA) subscriber unit of

claim l wherein a beginning of each one of the successively sent

transmissions, other than a first one of the successively sent transmissions,

is at a higher power level with respect to a beginning of a prior one of the

successively sent transmissions.

3. The wireless code division multiple access (CDMA) subscriber unit of

claim 1 wherein each one of the successively sent transmissions, other

than a first one of the successively sent transmissions, is sent at a power

level that is higher than the power level of a prior one of the successively

sent transmissions.

5. The wireless code division multiple access (CDMA) subscriber Luiitof

claim 1 wherein the successively sent transmissions are sent until receipt

of the indication that at least one of the successively sent transmissions has

been detected by the base station.

JX-0006 at col. 10, ln. 54 —col. ll, lI1.28; col. ll, lns. 32-36.

2. The ‘636 Patent

Asserted U.S. Patent No. 8,009,636 (“the ‘636 patent”) is titled, “Method and Apparatus

for Performing an Access Procedure.” IX-0007 (‘636 patent). The ‘636 patent issued on August

30, 2011, and the named inventors are Fatih Ozluturk and Gary R. Lomp. Id. The ‘636 patent

relates generally to the way in which a subscriber unit gains access to a cellular CDMA system.

Id. at Abstract. The ‘636 patent is related to the asserted ‘S30 patent; these two patents together

are also referred to as the “Power Ramp-Up” patents. The specifications of the ‘830 and ‘636

patents are substantially the sa.me.

InterDigital asserts independent claim 1 and dependent claims 2, 4, 6, 7, and 8 of the ‘636

patent. These claims read as follows:

1. A wireless code division multiple access (CDMA) subscriber unit

comprising:

a transmitter configured such that, when the subscriber unit is first

accessing a CDMA network, the transmitter successively sends

transmissions wherein each of the transmissions are derived from a

first length of a plurality of chips until the subscriber Lmitreceives

18
PUBLIC VERSION

from a base station associated with the network an indication that at

least one of the transmissions has been detected by the base station;

and

the transmitter further configured such that, subsequent to the

subscriber unit receiving the indication, the transmitter sends a

subsequent transmission derived from a second length of the plurality

of chips, wherein the first length is less than the second length.

2. The subscriber tmit of claim 1 wherein at least two of the successively

sent transmissions are different.

4. The subscriber unit of claim 1 wherein the plurality of chips are chips

that are not used for spreading.

6. The subscriber unit of claim l wherein the successive transmissions

facilitate power control when the subscriber unit is first accessing the

network.

7. The subscriber unit of claim 6 wherein the power control of the

successive transmissions is not closed loop power control.

8. The subscriber unit of claim 1 wherein the subsequent transmission is

not closed loop power controlled.

JX-0007 at col. 10, lns. 49-65; col. 11, lns. 1-2; col. ll, lns. 5-12.

Claim Construction

1. General Principles of Law6

Claim construction begins with the plain language of the clai1n.7 Claims should be given

their ordinary and customary meaning as understood by a person of ordinary skill in the art,

6

The legal principles set forth in this section apply equally to the construction of the other

patents asserted in this investigation.

7

Only those claim tenns that are in controversy need to be construed, and only to the extent

necessary to resolve the controversy. Vanderlande Indus. Nederland BVv. Int ’l Trade Comm ,

366 F.3d 1311, 1323 (Fed. Cir. 2004); Vivid Tech, Inc. v. American Sci. & Eng ‘g,Inc., 200 F 3d

795, 803 (Fed. Cir. 1999).

19
PUBLIC VERSION

viewing the claim terms in the context of the entire patents Phillips v. AWHC0rp., 415 F.3d

1303, 1312-13 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170 (2006).

In some instances, claim terms do not have particular meaning in a field of art, and claim

construction involves little more than the application of the widely accepted meaning of

commonly understood words. Phillips, 415 F.3d at 1314. “In such circumstances, general

purpose dictionaries may be helpful.” Id.

In many cases, claim tenns have a specialized meaning, and it is necessary to determine

what a person of skill in the art would have understood the disputed claim language to mean.

“Because the meaning of a claim tenn as understood by persons of skill in the art is often not

immediately apparent, and because patentees frequently use terms idiosyncratically, the court

looks to ‘those sources available to the public that show what a person of skill in the art would

have understood disputed claim language to mean?” Id. (quoting Innova/Pure Water, Inc. v.

Safari WriterFiltration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). The public sources

identified in Phillips include “the words of the claims themselves, the remainder of the

specification, the prosecution history, and extrinsic evidence concerning relevant scientific

principles, the meaning of technical terms, and the state of the art.” Id.

In cases in which the meaning of a claim term is uncertain, the specification usually is the

best guide to the meaning of the tenn. Id. at 1315. As a general rule, the particular examples or

embodiments discussed in the specification are not to be read into the claims as limitations.

8Factors that may be considered when detennining the level of ordinary skill in the art include:

“(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior

art solutions to those problems; (4) rapidity Withwhich innovations are made; (5) sophistication

of the technology; and (6) educational level of active Workersin the field.” Environmental

Designs, Ltd. v. Union Oil C0., 713 F.2d 693, 696 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043

(1984).

20
PUBLIC VERSION

Markman v. WestviewInstruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en bane), aff’d, 517

U.S. 370 (1996). The specification is, however, always highly relevant to the claim construction

analysis, and is usually dispositive. Phillips, 415 F.3d at 1315 (quoting Vilronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Moreover, “[t]he construction that

stays true to the claim language and most naturally aligns with the patent’s description of the

invention will be, in the end, the correct construction.” Id. at 1316.

Claims are not necessarily, and are not usually, limited in scope to the preferred

embodiment. RF Delaware, Inc. v. Pacific Keystone Techs, Inc., 326 F.3d 1255, 1263 (Fed. Cir.

2003); Decisioningcom, Inc. v. Federated Dep ’tStores, Inc., 527 F.3d 1300, 1314 (Fed. Cir.

2008) (“[The] description of a preferred embodiment, in the absence of a clear intention to limit

claim scope, is an insufficient basis on which to narrow the c1aims.”). Nevertheless, claim

constructions that exclude the preferred embodiment are “rarely, if ever, correct and require

highly persuasive evidentiaiy support.” Vitronics, 90 F.3d at 1583. Such a conclusion can be

mandated in rare instances by clear intrinsic evidence, such as unambiguous claim language or a

clear disclaimer by the patentees during patent prosecution. Elekta Instrument S.A. v. O.U.R. Sci.

Int’I, Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319 (Fed.

Cir. 2002).

If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence

may be considered. Extrinsic evidence consists of all evidence external to the patent and the

prosecution history, and includes inventor testimony, expert testimony, and learned treatises.

Phillips, 415 F.3d at 1317. Inventor testimony can be useful to shed light on the relevant art. In

evaluating expert testimony, a court should discount any expert testimony that is clearly at odds

with the claim constmction mandated by the claims themselves, the written description, and the

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PUBLIC VERSION

prosecution history, in other words, with the written record of the patent. Id. at 1318. Extrinsic

evidence may be considered if a court deems it helpful in determining the true meaning of

language used in the patent claims. Id.

2. Level of Ordinary Skill

A person of ordinary skill in the art of the asserted ‘830 and ‘636 patents is someone with

an undergraduate degree in electrical engineering, or an equivalent subject, together with three to

five years of postgraduate experience in cellular communications, or comparable training.9 See

CX-1309C (Jackson WS) at Q504-Q505; CX-1524C (Haas RWS) at Q35.

3. Construction of Disputed Claim Termslo

a. “successively sends transmissions” (‘830 and ‘636 patents)

Below is a chart showing the parties’ proposed claim constructions.

C0l1StI‘fl¢l‘l0lJ Claim Term/Ph'f§g¢,“%,, InterDjgi1}fli?;S§§,,,l;*rp V.1.)7Respondents’Construction”" I

successively sends sends transmissions one transmits to the base station, one after the

transmissions after the other other, codes that are shorter than a regular

length code

9Respondents propose that a person of Ordinaryskill in the art at the time of the filing of the

asserted ‘830 and ‘636 patents would have at least a Bachelor’s degree in electrical engineering,

computer science or mathematics, with some working experience in CDMA communications.

Resps. Br. at 285-86. The parties have not identified any way in which differences in their

proposed definitions of the level of ordinary skill in the art affect issues in this investigation. See

Compls. Br. at 35; Resps. Br. at 285-86.

1°This Initial Determination addresses only the disputed claim terms identified by the parties as

needing construction. See Joint Outline of the Issues to Be Decided in the Final Initial

Determination (EDIS Doc. No. 505468) (“GR12 Filing”). The parties identified the claim terms

for construction in a joint filing required by Ground Rule 12, which provides: “On the same day

the initial posthearing briefs are due, the parties shall file a comprehensive joint outline of the

issues to be decided in the final Initial Determination. The outline shall refer to specific sections

of the posthearing briefs. Moreover, the claim terms briefed by the parties must be identical.

The construction of any part of a disputed claim tenn that is not briefed is waived.” Ground

Rule 12 (emphasis original) (attached to Order No. 35 (Issuance of Amended Ground Rules)).

22
PUBLIC VERSION

The claim tenn “successively sends transmissions” appears in asserted independent claim

1 of the ‘830 patent, as well as in asserted independent claim 1 of the ‘636 patent. JX-0006 at

col. 10, ln. 54 —col. 11, ln. 16; JX-0007 at col. 10, lns. 49-63.

InterDigital construes this term to mean “sends transmissions one after the other.”

Compls. Br. at 38-40. Respondents construe this term to mean “transmits to the base station, one

after the other, codes that are shorter than a regular length code.” Resps. Br. at 291-93. The

parties do not dispute the construction of “successively sends,” which the parties agree means

“sends one after the other.” See Compls. Br. at 38-40; Resps. Br. at 291-93. The dispute

between the parties instead centers on the proper construction of “transmissions.”

As proposed by Respondents, the term “successively sends transmissions” is construed to

mean “transmits to the base station, one after the other, codes that are shorter than a regular

length code.”

The intrinsic evidence supports Respondents’ proposed construction. The ‘830

specification describes the claimed “transmissions” from the subscriber unit to the base station as

follows: “As the base station 14 transmits the pilot code 40 (step 100), the base station 14

searches (step 101) for an ‘access code’ 42 transmitted by a subscriber unit 16. The access code

42 is a known spreading code transmitted from a subscriber unit 16 to the base station 14 during

initiation of communications and power ramp-up.” JX-0006 at col. 6, lns. 14-20. With reference

to a preferred embodiment of the claimed invention, the specification further teaches: “The

preferred embodiment of the present invention utilizes ‘short codes’ and a two-stage

connnunjcation link establishment procedure to achieve fast power ramp-up without large power

overshoots. The spreading code transmitted by the subscriber unit 16 is much shorter than the

rest of the spreading codes (hence the tenn short code), so that the number of phases is limited

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PUBLIC VERSION

and the base station 14 can quickly search through the code. The short code used for this

purpose carries no data.” Id. at col. 7, lns. 36-44.

These passages from the ‘830 specification make clear that the claimed “transmissions”

from the subscriber unit to the base station comprise codes. At no point does the specification

indicate that the claimed transmissions are generalized “RF emissions,” as proposed by

InterDigital. See Compls. Br. at 38-39.

The Power Ramp-Up patents also disclose that the codes successively transmitted during

the random access process (i.e., the short codes) are neither modulated with data, nor used to

modulate data. RX-3526C (Lanning WS) at Q69,Q92-95, Q130-132; CX-1309C (Jackson WS)

at Q625; Jackson Tr. 119, 177, 178; Haas Tr. 1822, 1823-1826; RX-3999C (Lanning RWS) at

Q132-134, Q141-143; see also InterDigital Commc ’ns,LLC v. 1nr’l Trade Comm ’n, 690 F.3d

1318, 1326 (Fed. Cir. 2012) (“As noted, the specification describes various codes, such as pilot

codes and short codes, as ‘spreading codes’ even though they carry no data and are not intended

to do so.”); id. at 1326 (finding that experts confirmed that the short codes and the access codes

described in the specification do not spread, or modulate, data). In other words, the “codes”

themselves are what are successively transmitted, not codes modulated with data.

InterDigital argues against Respondents’ proposed construction by contending, inter alia,

that Respondents’ expert Mr. Lanning defines the term “code” as used in Respondents’

construction as a specific type of code, specifically one that is “not modulated by data.” Compls.

Br. at 37. This argument is not persuasive. In particular, the phrase “not modulated by data”

does not appear in any of Respondents’ proposed constructions, and Mr. Lanning does not

distinguish codes that can be modulated by data from those that cannot be modulated by data.

Instead, M.r.Lanning testified that a code modulated by data is no longer a code, i.e., the

24
PUBLIC VERSION

transmission of a code modulated by data is not the transmission of a code. RX-3999C (Lanning

RWS) at Ql52.

lnterDigital further argues that Respondents’ proposed construction excludes a preferred

embodiment of the claimed invention that uses short codes and access codes. See Compls. Br. at

37-38. This argument is also not persuasive. The teachings of the patents make clear that the

claimed “successively sent transmissions” are the short codes of the preferred embodiment, and

that the claimed “same sequence of chips” and “the plurality of chips” are the access code of the

preferred embodiment. See Compls. Br. at 95; Resps. Br. at 295, 362; CX-l309C (Jackson WS)

at Q74O (“The ‘same sequence of chips’ in a preferred embodiment . . . is the access code (i.e.,

LAXPT).”).

Accordingly, the claim term “successively sends transmissions” is construed to mean

“transmits to the base station, one after the other, codes that are shorter than a regular length

code.”

b. “sequence of chips” (‘830 patent)

3 . .C]aim Term/Phrase 1 InterDigital’s Construcfionfjifa-Respondents’ Coiistruction 1

sequence of chips ‘ chips in a particular order I code or portion of a code \

The claim term “sequence of chips” appears in asserted independent claim 1 of the ‘830

patent. JX-0006 at col. 10, ln. 54 —col. ll, ln. l6.

InterDigital construes this term to mean “chips in a particular order.” Compls. Br. at

40-41. Respondents construe this term to mean “code or portion of a code.” Resps. Br. at

293-94.

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PUBLIC VERSION

As proposed by InterDigital, the claim tenn “sequence of chips” is constmed to mean

“chips in a particular order,” which is the ordinary meaning of the term as understood by a

person of ordinary skill in the art. See CX-1390C (Jackson WS) at Q7l4, Q7l9.

A person of ordinary skill in that art would understand that a sequence is “an order,” and

that a CDMA chip is simply a binary value at the chip rate. See Lanning Tr. 1089; CX-1309C

(Jackson WS) at Q714-718. Moreover, the specification of the ‘830 patent does not indicate that

anything other than the plain meaning of the term was intended. See CX-1309C (Jackson WS) at

Q719.

Respondents argue that, inasmuch as the claimed “transmissions” from the subscriber

unit to the base station comprise codes, the codes “corresponding to the successively sent

transmissions under Respondents’ proposed constructions must be created by a ‘code.”’ Resps.

Br. at 294. This argument is not persuasive. Although it has been determined above that the

claimed “transmissions” comprise codes, the intrinsic evidence does not suggest that these

transmitted codes are necessarily “produced using” another code or portion of a code. See

JX-0006 at col. 10, lns. 65-67 (relevant lines of claim 1). The ‘830 specification does not

exclude the possibility that the transmitted codes are producing using a generic sequence of

chips, which is the construction proposed by InterDigital.

Accordingly, the claim term “sequence of chips” is construed to mean “chips in a

particular order.”

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PUBLIC VERSION

c. “same sequence of chips” (‘830 patent)

'IClaim*j;;j' InterDigital’s;7* ; T0 .Respondents’Constructionup 1 i

Tern1[l?ihrase*' Construction T T i L 1 ~ 1 73:;

same sequence of individual sequence a known code containing the different sequences of

chips of chips chips used to produce the at least two successively sent

transmissions

The claim term “same sequence of chips” appears in asserted independent claim 1 of the

‘830 patent. JX-0006 at col. 10, lns. 54 - col. 11, ln. 16.

InterDigital construes this term to mean “individual sequence of chips.” Compls. Br. at

41-42. Respondents construe this term to mean “a known code containing the different

sequences of chips used to produce the at least two successively sent transmissions.” Resps. Br.

at 294-95.

As proposed by InterDigita1,the claim term “same sequence of chips” is construed to

mean “individual sequence of chips,” which is the plain meaning of the term as understood by a

person of ordinary skill in the art. See CX-1309C (Jackson WS) at Q7l4, Q7l9. In particular,

the claim language states that “each of the successively sent transmissions and the message are

produced using portions of a same sequence of chips.” JX-0006 at col. 11, lns. 12-14. The term

therefore refers to an individual sequence of chips, portions of which are used to produce the

successively sent transmissions and the message.

In support of their proposed construction that the claimed “sequence of chips” must

comprise “a known code,” Respondents argue: “[T]he specification of the Power Ramp-up

Patents discloses only one ‘sequence of chips’ -- the access code (LAXPT) —from which the

successively sent transmissions (i.e., the short codes (SAXPT)) are produced. Thus, the ‘same

sequence of chips’ used to produce the message and the successively sent transmissions must be

27
PUBLIC VERSION

the same sequence used to produce the successively sent transmissions.” Resps. Br. at 295

(emphasis original). As discussed above with respect to the claim term “sequence of chips,”

however, the ‘830 specification neither requires that the claimed “transmissions” be “produced

using” a code, nor does the specification exclude the possibility that the transmitted codes are

producing using a generic sequence of chips that do not comprise a code. See IX-0006 at col.

ll, lns. 13-16 (relevant lines of claim 1).

Accordingly, the claim term “same sequence of chips” is construed to mean “individual

sequence of chips.”

d. “wants to establish” (‘830 patent)

A

Wants to establish Vwants to initiate ‘ requests

The claim term “wants to establish” appears in asserted independent claim 1 of the ‘830

patent. JX-0006 at col. 10, lns. 54 —col. 11, ln. 16.

InterDigital construes this tenn to mean “wants to initiate.” Compls. Br. at 43.

Respondents construe this term to mean “requests.” Resps. Br. at 287-88.

As proposed by Respondents, the claim term “wants to establish” is construed to mean

“requests.”

A person of ordinary skill in the art would understand that the word “wants” suggests a

desire, which inanimate objects such as the claimed subscriber unit do not have. RX-3526C

(Lanning WS) at Q101. Therefore, when the claimed subscriber unit “wants to establish a

communications channel,” a person of ordinary skill in the art would understand that it is

requesting a communications channel. Id. By contrast, 1nterDigital’s proposed construction

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PUBLIC VERSION

further anthropomorphizes an inanimate object to suggest that the subscriber unit “wants” to

establish or initiate a commtmications channel.

lnterDigital argues that its proposed construction should be adopted inasmuch as it

reflects the plain meaning of the claim term, but does not identify how Respondents’ proposed

construction is incorrect. See Compls. Br. at 43. InterDigital’s proposed construction fails to

clarify the meaning of the claim tenn, because it merely substitutes the word “initiate” for

“establish,” and does not address the issue of how an non-human, inanimate subscriber unit can

“want” anything.

Accordingly, the claim tenn “wants to establish” is construed to mean “requests.”

e. “communication channel” (‘830 patent)

Y TermlPhrase ii'?T‘l.i",H @§*Y t YT..C0nstructi0n gs Claim. 8BInterDigital§siConstructionYlijif .~,;:i:#;Respondents’42it

communication channel for commmncation between a subscriber two-way voice channel

channel Lmitand a base station

The claim tenn “communication channel” appears in asserted independent claim l of the

‘83Opatent. JX-0006 at col. 10, ln. 54 —col. ll, ln. 16.

InterDigital construes this term to mean “channel for communication between a

subscriber unit and a base station.” Compls. Br. at 43-46. Respondents construe this term to

mean “two-way voice channel.” Resps. Br. at 288-89.

As proposed by InterDigital, the term “communication channel” is construed to mean

“channel for communication between a subscriber unit and a base station.” This construction

comports with the intrinsic evidence and reflects the understanding of a person of ordinary skill

in the art. See CX-1309C (Jackson WS) at Q553-556.

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PUBLIC VERSION

The ‘830 specification does not provide a special definition of “communication channel,”

but often refers to a“con1munication channel” as a “channel for communication” between a

subscriber unit and a base station. See JX-0006 at col. 3, lns. 35-38 (“Accordingly, it is an object

of the present invention to provide an improved technique for controlling power ramp-up during

establishment of a communication channel between a CDMA subscriber unit and base station”);

col. 4, lns. 50-53 (“A two-way communication channel (link) 18 comprises a signal transmitted

21 (TX)from the base station 14 to the subscriber unit 16 and a signal received 23 (Rx) by the

base station l4 from the subscriber unit 16.”). Although the ‘83Ospecification indicates that the

claimed “communication channel” is two-way, the specification does not limit the claimed

channel to a voice channel. See id. at col. 4, lns. 50-53.

Respondents argue that their proposed construction should be adopted because, “[a]t the

time of the invention, a person of ordinary skill in the art would have understood

‘communication channel’ to be referring only to a two-way voice channel.” Resps. Br. at 288

(citing RX-3526C (Lamnng WS) at Q105-115). Respondents further argue:

The Power Ramp-Up Patents are wireless local-loop systems, which

replace the “last mile” connection to the two-way voice channels of the

PSTN (Public Switched Telephone Network). . . . The PSTN, though it

can convey data, is exclusively composed of two-way voice channels and

is the only external network disclosed in the Power Ramp-up and 010

Patents; there is no discussion of a direct connection to any networks other

than two-way voice channel networks. . . . Thus, all data transmissions in

the Power Ramp-Up Patents are accomplished over two-way voice

channels.

Resps. Br. at 288 (citations omitted).

Respondents’ argument is not persuasive, inasmuch as the two-way voice channels of the

PSTN discussed in the ‘83Ospecification are not related to the claimed “communication

channel” between the subscriber unit and the base station. See JX-0006 at col. 4, lns. 21-25

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PUBLIC VERSION

(“The communication network 10 may also be connected to a public switched telephone network

(PSTN) 22, wherein the base station controller 20 also coordinates communications between the

base stations 14 and the PSTN 22.”). The PSTN’s two-way voice channels do not connect the

subscriber unit and the base station, but rather connect the base station with the land lines of the

PSTN. See id. at Fig. 1.

Accordingly, the term “communication channel” is construed to mean “channel for

communication between a subscriber unit and a base station.”

f. “produced using” (‘830 patent)

Trrnwhrasei 1tn¢@rvigir¢1’s 11

produced using 1generated using 1selected from [a] pre-existing

The claim term “produced using” appears in asserted independent claim 1 of the ‘830

patent. JX-0006 at col. 10, ln. 54 —col. ll, ln. 16.

InterDigital construes this term to mean “generated using.” Compls. Br. at 46-49.

Respondents construe this tenn to mean “selected from [a] pre-existing.” Resps. Br. at 296-97.

As proposed by InterDigital, the claim term “produced using” is construed to mean

“generated using.”

Inasmuch as the term “produced using” does not appear in the ‘830 specification, the

plain meaning of the term should control. See Toshiba Corp. v. Imation Corp, 681 F.3d 1358,

1369 (Fed. Cir. 2012) (“Absent disclaimer or lexicography, the plain meaning of the claim

controls”) (citation omitted). “Generated using,” the construction proposed by InterDigital,

reflects the plain and ordinary of the term as understood by a person of ordinary skill in the art.

CX-1309C (Lanning WS) at Q745-747.

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PUBLIC VERSION

Respondents argue that their proposed construction, “selected from [a] pre-existing,” “is

required by the system disclosed in the Power Ramp-up Patents.” See Resps. Br. at 296.

Respondents’ argument is as follows:

The successively sent transmissions (i.e., the short codes) disclosed in the

Power Ramp-up Patents are simply selected from a longer sequence of

chips (i.e., the access code) and must be selected in this manner for the

system to function . . . . In other words, the successively sent transmissions

must be transmitted without being modulated by data in order for any of

the disclosed embodiments to operate. The reason for this is quite simple:

if the sequence of chips for the successively sent transmissions (i.e., the

short codes) are not selected fonn the access code, the base station would

not recognize these transmissions and the disclosed system would not

work . . . . In addition, if the successively sent transmissions and the

longer code from which it is selected are modulated by data (or used to

modulate data) the base station would not recognize them as either the

successively sent transmissions (i.e., short codes) or the access code . . . .

Id. (emphasis original; citations and footnotes omitted). Respondents further argue that their

“proposed construction is further supported by the disclosure in the Power Ramp-up Patents that

short codes are selected from portions of the access code (LAXPT) and stored and repeatedly

transmitted every 3 milliseconds - thus, the short code transmissions or successively sent

transmissions are selected from a ‘pre-existing’ sequence of chips.” Id. at 296 n.4.

Respondents’ primary argument is not persuasive, inasmuch as it relies on a hypothetical

system in which the handset modulates the codes before transmission, even though the base

station can only detect rmmodulated codes. Respondents’ secondary argtunent, that “the short

codes are selected from portions of the access code (LAXPT),” is also Lmavailing,inasmuch as

the LAXPT is generated on the fly, and is not stored either before or after the initial access

procedure has been performed. See CX-1390C (Jackson WS) at Q757. Accordingly,

Respondents’ proposed construction both limits the claims to a hypothetical, undisclosed

configuration, and excludes an embodiment of the invention.

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PUBLIC VERSION

Therefore, the claim tenn “produced using” is construed to mean “generated using.”

g. “message being sent only subsequent to the subscriber unit

receiving the indication” (‘830 patent)

I55iC1fii11iiTe"ii?PliP=1Sei »fIZi1tt>1?Digi,t§lYl’57]iT 11R¢spona¢nts>;c;;;is¢ru¢¢i@n,

* F] K “.Construction . Tfr i it .

message being sent only message is sent only after message being the next

subsequent to the subscriber the subscriber unit receives transmission from the subscriber

unit receiving the indication the indication unit after receiving the indication

The claim term “message being sent only subsequent to the subscriber unit receiving the

indication” appears in asserted claim 1 of the ‘S30 patent. JX-0006 at col. 10, ln. 54 ~ col. 11, in.

16.

InterDigital construes this term to mean “message is sent only after the subscriber unit

receives the indication.” See Compls. Br. at 49-51. Respondents construe this term to mean

“message being the next transmission from the subscriber unit after receiving the indication.”

See Resps. Br. at 297-98.

As proposed by InterDigital, the tenn “message being sent only subsequent to the

subscriber unit receiving the indication” is construed to mean “message is sent only after the

subscriber unit receives the indication,” which reflects the ordinary meaning of the term as

understood by a person of ordinary skill in the art. See CX-1309C (Jackson WS) at Q762-763;

Lanning Tr. 1095.

Respondents argue that InterDigital’s proposed construction “places no temporal

limitation on when the message is transmitted following the indication,” but this argument

ignores the claim language surrounding the disputed tenn. See Resps. Br. at 297. Specifically,

claim 1 of the ‘830 patent provides that the transmitter sends the message “Whenthe subscriber

33
PUBLIC VERSION

unit is first accessing a CDMA network and wants to establish communications with a base

station associated with the network over a communication channel to be indicated by the base

station.” JX-0006 at col. 10, lns. 56-60. Respondents’ argument that adopting InterDigital’s

proposed construction would pennit the subscriber unit from transmitting the message at any

time is therefore incorrect.

Moreover, Respondents’ proposed construction adds a limitation that the subscriber unit

cannot send any transmissions between the indication and the message, but have not shown that

such a limitation is supported by the intrinsic evidence. Therefore, Respondents’ proposed

construction is incorrect.

Accordingly, the claim term “message being sent only subsequent to the subscriber unit

receiving the indication” is construed to mean “message is sent only after the subscriber unit

receives the indication.”

h. “message indicating to the base station that the subscriber unit

wants to establish the communications with the base station”

(‘830 patent)

7Claim T‘gerrnlPhraseVt];¥_ Inte_rDigital’sNQonstruction_ Respondents’ Construction

message indicating to the base transmission having data message indicating to the

station that the subscriber unit indicating to the base station base station that the

wants to establish the that the subscriber unit wants to subscriber unit requests

communications with the base establish communications with commtmications with the

station the base station base station

The claim tenn “message indicating to the base station that the subscriber unit wants to

establish the cormnunications with the base station” is recited in asserted claim 1 of the ‘S30

patent. IX-0006 at col. 10, ln. 54 —col. 11, ln. 16.

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PUBLIC VERSION

InterDigital construes this term to mean “transmission having data indicating to the base

station that the subscriber unit wants to establish communications with the base station.” See

Compls. Br. at 51-54. Respondents construe this tenn to mean “message indicating to the base

station that the subscriber unit requests communications with the base station?“ See Resps. Br.

at 289-91.

As proposed by Respondents, the claim term “message indicating to the base station that

the subscriber unit wants to establish the conmmnications with the base station” is construed to

mean “message indicating to the base station that the subscriber unit requests communications

with the base station,” which reflects the plain and ordinary meaning of this term as understood

by a person of ordinary skill in the art. See RX-3 526C (Lamiing WS) at Q119.

lnterDigital argues that the term “message” should be construed as a “transmission

having data” because the “message” must be sent to the base station, but this argument is not

persuasive. See Compls. Br. at 51-52. As explained by Mr. Lanning, a person of ordinary skill

in the art would understand that the term “message” in the context of the claim refers to the

underlying data that is transmitted, rather than to the actual “transmission.” See RX-3526C

(Lanning WS) at Ql23; RX-3999C (Lanning RWS) at Q115.

Accordingly, the term “message indicating to the base station that the subscriber unit

wants to establish the communications with the base station” is construed to mean “message

indicating to the base station that the subscriber unit requests communications with the base

station.”

ll InterDigital represents that Respondents seeks to construe “message” to mean “data stored in

memory.” See Compls. Br. at 51. Respondents’ proposed construction for “message,” however,

is “message.” See Resps. Br. at 290; Resps. Reply at 117 n.24 (citing JX-0022C (Joint Chart of

Proposed Claim Constructions) at 7).

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PUBLIC VERSION

i. “plurality of chips” (‘636 patent)

Q1;“ClaimTerm/Phrascgf§;Y§i.I%;InterDigital’sConstruction Respondents’Construction

plurality of chips l two or more chips l code or portion of a code

The claim term “plurality of chips” appears in asserted claims 1 and 4 of the ‘636 patent.

JX-0007 at col. 10, lns. 49-63; col. 11,1ns. 1-2.

InterDigital construes this claim to mean “two or more chips.” See Compls. Br. at 54-55

Respondents construe this term to mean “code or portion of a code.” See Resps. Br. at 299;

Resps. Reply at 122-23.

As proposed by lnterDigital, the term “plurality of chips” is construed to mean “two or

more chips,” which is the plain meaning of the term. See Lanning Tr. 10.89.

Respondents argue that their proposed construction should be adopted for the same

reasons that their proposed construction for the ‘S30 claim term “sequence of chips,” discussed

above, should be adopted. Respondents’ arguments are rejected for the reasons set forth

previously with respect to the term “sequence of chips.”

Accordingly, the term “plurality of chips” is construed to mean “two or more chips.”

j. “subsequent transmission” (‘636patent)

;fiT§rli!1Bliiféi$¢f@£iYjj4C0l1STl'll¢tiQ11e§iii?I155: fly“ T 4 4 Im=r1>.igi*.=-i1’§L?i§¥i¥.Flira4. eR°sP°“d°"‘§’C°'¥S‘TF1¢fi9n

subsequent transmission that is later known code transmitted to the base station

transmission in time during power ramp-up

The claim term “subsequent transmission” is recited in asserted claims l and 8 of the

‘636 patent. JX-0007 at col. 10, lns. 49-63; col. ll, lns. ll-12.

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PUBLIC VERSION

InterDigital construes this term to mean “transmission that is later in time.” See Compls.

Br. at 55-58. Respondents construe this term to mean “known code transmitted to the base

station during power ramp-up.” See Resps. Br. at 299-301.

As proposed by Respondents, “subsequent transmission” is construed to mean “known

code transmitted to the base station during power ramp-up.” As discussed above with respect to

the claim tenn “successively sends transmissions,” the claimed invention relates to transmissions

of codes from the subscriber unit to the base station during a power ramp-up sequence. A person

of ordinary skill in the art would therefore understand that the claimed “subsequent

transmission” also takes place during the power ramp-up sequence. See RX-3526C (Lanning

WS) at Q194-198. By contrast, InterDigital’s proposed construction is incorrect to the extent it

leaves open the possibility that the “subsequent transmission” occurs after the power ramp-up

sequence has completed.

Accordingly, the claim tenn “subsequent transmission” is construed to mean “known

code transmitted to the base station during power ramp-up.”

k. “derived from [a]/[the]” (‘636 patent)

Flam

derived from [a]/[the] produced using ‘ selected from [a]/[the] pre-existing l

The claim term “derived from [a]/[the]” appears in asserted claim 1 of the ‘636 patent.

JX-0007 at col. 10, lns. 49-63.

InterDigital constnles this term to mean “produced using.” See Compls. Br. at 58.

Respondents construe this term to mean “selected from [a]/[the] pre-existing.” See Resps. Br. at

298-99.

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PUBLIC VERSION

Respondents argue that the ‘636 term “derived from [a]/[the]” should be construed the

same as the ‘83Oterm “produced using,” discussed above, and for the same reasons. See Resps.

Br. at 298-99. Respondents’ argument is rejected for the same reasons discussed above.

InterDigital’s proposal, that the ‘636 tenn “derived from [a]/[the]” should be construed to

mean “produced using,” would create a circular construction if it were adopted, inasmuch as the

‘830 tenn “produced using” has been construed above to mean “generated using.” Therefore,

InterDigital’s proposed construction of “produced using” will not be adopted. Instead, the term

“derived from [a]/[the]” is construed to mean “generated using.”

C. Infringement

1. General Principles of Lawn

a. Direct Infringement

Under 35 U.S.C. § 271(a), direct infringement consists of making, using, offering to sell,

or selling a patented invention without consent of the patent owner. The complainant in a

section 337 investigation bears the burden of proving infringement of the asserted patent claims

by a “preponderance of the evidence.” Certain Flooring Products, Inv. No. 337-TA-443,

Comm’n Notice of Final Determination of No Violation of Section 337, 2002 WL 448690, at

*59, (Mar. 22, 2002); Erzercon GmbH v. Int’! Trade Comm ’n, 151 F.3d 1376 (Fed. Cir. 1998).

Literal infringement of a claim occurs when every limitation recited in the claim appears

in the accused device, i.e., when the properly construed claim reads on the accused device

12The legal principles set forth in this section apply equally to the infringement analysis of the

other patents asserted in this investigation.

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PUBLIC VERSION

exactly.13 Amhil Enters, Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996); Southwall

Tech. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed Cir. 1995).

If the accused product does not literally infringe the patent claim, infringement might be

found under the doctrine of equivalents. “Under this doctrine, a product or process that does not

literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if

there is ‘equivalence’ between the elements of the accused product or process and the claimed

elements of the patented invention.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co.,

520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. C0. v. Linde Air Products C0., 339 U.S. 605,

609 (1950)). “The determination of equivalence should be applied as an objective inquiry on an

element-by-element basis.”14 Id. at 40.

“An element in the accused product is equivalent to a claim limitation if the differences

between the two are insubstantial. The analysis focuses on whether the element in the accused

device ‘performs substantially the same ftmction in substantially the same way to obtain the

same result’ as the claim limitation.” AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374,

1382 (Fed. Cir. 2005) (quoting Graver Tank, 339 U.S. at 608); accord Absolute Software, 659

F.3d at1139-40.15

13Each patent claim element or limitation is considered material and essential. London v.

Carson Pirie Scott & C0., 946 F.2d 1534, 1538 (Fed. Cir. 1991). lfan accused device lacks a

limitation of an independent claim, the device cannot infringe a dependent claim. See Wahpeton

Canvas C0. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).

14“Infringement, whether literal or under the doctrine of equivalents, is a question of fact."

Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1130 (Fed. Cir. 2011).

15“The known interchangeability of substitutes for an element of a patent is one of the express

objective factors noted by Graver Tank as bearing upon whether the accused device is

substantially the same as the patented invention. Independentexperimentation by the alleged

infringer would not always reflect upon the objective question whether a person skilled in the art

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PUBLIC VERSION

Prosecution history estoppel can prevent a patentee from relying on the doctrine of

equivalents when the patentee relinquished subject matter during the prosecution of the patent,

either by amendment or argument. AquaTex, 419 F.3d at 1382. In particular, “[t]he doctrine of

prosecution history estoppel limits the doctrine of equivalents when an applicant makes a

narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders

subject matter by arguments made to an examiner.” Id. (quoting Salazar v. Procter & Gamble

C0., 414 F.3d 1342, 1344 (Fed. Cir. 2005)).

b. Induced Infringement

With respect to induced infringement, section 27l(b) of the Patent Act provides:

“Whoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C.

§ 27l(b). “To prevail on a claim of induced infringement, in addition to inducement by the

defendant, the patentee must also show that the asserted patent was directly infringed.” Epcon

Gas Sys. v. Bauer Compressors, Ina, 279 F.3d 1022, 1033 (Fed. Cir. 2002). Further, “[s]ecti0n

27l(b) covers active inducement of infringement, which typically includes acts that intentionally

cause, urge, encourage, or aid another to directly infringe a patent.” Arris Group v. British

Telecomms. PLC, 639 F.3d 1368, 1379 n.13 (Fed. Cir. 2011). The Supreme Court recently held

that “induced infringement under § 27l(b) requires knowledge that the induced acts constitute

patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., -- U.S. --, 131 S. Ct. 2060, 2068

(2011). The Court further held: “[g]iven the long history of willful blindness[ ] and its wide

acceptance in the Federal Judicialy, we can see no reason why the doctrine should not apply in

would have known of the interchangeability between two elements, but in many cases it would

likely be probative of such knowledge.” Warner-Jenkinson, 520 U.S. at 36.

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PUBLIC VERSION

civil lawsuits for induced patent infringement under 35 U.S.C. § 271(b).” 131 S. Ct. at 2060

(footnote omitted).

c. Contributory Infringement

As for contributory infringement, section 271(0) of the Patent Act provides: “Whoever

offers to sell or sells within the United States or imports into the United States a component of a

patented machine, manufacture, combination or composition, or a material or apparatus for use

in practicing a patented process, constituting a material part of the invention, knowing the same

to be especially made or especially adapted for use in an infringement of such patent, and not a

staple article or commodity of commerce suitable for substantial noninfringing use, shall be

liable as a contributory infringer.” 35 U.S.C. § 271(0).

Section 271(c) “covers both contributory infringement of system claims and method

claims.” Arris, 639 F.3d at 1376 (footnotes omitted). To hold a component supplier liable for

contributory infringement, a patent holder must show, inter alia, that (a) the supplier’s product

was used to commit acts of direct infringement; (b) the product’s use constituted a material part

of the invention; (c) the supplier knew its product was especially made or especially adapted for

use in an infringement” of the patent; and (d) the product is not a staple article or commodity of

commerce suitable for substantial noninfringing use. Id.

d. Infringement of Method Claims under Electronic Devices

The Comrnission’s opinion in Certain Electronic Devices with Image Processing

Systems, Components Thereof and Associated Software, Inv. No. 337-TA-724, Comrn’n Op.

(Dec. 21, 2011) (“Electronic Devices”), holds that the practice of an asserted method claim

within the United States afier importation cannot serve as the basis for an exclusion order.

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PUBLIC VERSION

Electronic Devices, Comm’n Op. at 17. As discussed in Electronic Devices, section 337

prohibits:

(B) The importation into the United States, the sale for importation, or

the sale within the United States after importation by the owner, importer,

or consignee, of articles that —

(i) infringe a valid and enforceable United States patent or a valid and

enforceable United States copyright registered under title 17; or

(ii) are made, produced, processed, or mined under, or by means of, a

process covered by the claims of a valid and enforceable United States

patent.

19 U.S.C. § 1337(a)(1)(B).

The statute is violated only by the importation, sale for importation, or sale after

importation of articles that either infringe a valid U.S. patent claim or are made by a method

covered by a valid U.S. patent claim. An article, standing alone, cannot directly infringe a

method claim. Electronic Devices, Comm’n Op. at 17; see also Cardiac Pacemakers, Inc. v. St.

Jude Medical, Inc, 576 F.3d 1348, 1364 (Fed. Cir. 2009). A method claim is infringed only

where someone performs all of the claimed method steps. See NTP v. Research in Motion, Lta'.,

418 F.3d 1282, 1318 (Fed. Cir. 2005) (“[T]he use of a [claimed] process necessarily involves

doing or performing each of the steps recited”); Joy Techs, Inc. v. Flakt, Inc, 6 F.3d 770, 775

(Fed. Cir. 1993) (“A method claim is directly infiinged only by one practicing the patented

method”).

In Electronic Devices, the Commission ruled that complainant did not have a legally

cognjzable claim that respondent violated the statute by using articles Withinthe United States

when infringement allegedly occurred by virtue of that use. Electronic Devices, Comm’n Op. at

19 (“domestic use of such a method, without more, is not a sufficient basis for a violation of

Section 337(a)(1)(B)(i)”). Relying expressly on the statutory language of section 337 and

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PUBLIC VERSION

applicable Federal Circuit law, the Commission ruled that the act of importation “is not an act

that practices the steps of the asserted method claim,” and “[m]erely importing a device that may

be used to perform a patented method does not constitute direct infringement of a claim to that

method.” Id. at 17-18 (citing Cardiac Pacemakers, 576 F.3d at 1364; NTP, 418 F.3d at 1319;

Ricoh C0., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1335 (Fed. Cir. 2008) (“[A] party that

sells or offers to sell software containing instructions to perform a patented method does not

infringe the patent under § 271(a).”); Joy Techs., 6 F.3d at 773 (“The law is unequivocal that the

sale of equipment to perform a process is not a sale of the process within the meaning of section

27l(a).”)).

The Commission stated:

[S]ection 337(a)(1)(B)(i) covers imported articles that directly or

indirectly infringe when it refers to “articles that —infringe.” We also

interpret the phrase “articles that —infringe” to reference the status of the

articles at the time of importation. Thus, infringement, direct or indirect,

must be based on the articles as imported to satisfy the requirements of

section 337.

Electronic Devices, Comm’n Op. at 13-14. The Commission determined that the importation

requirement was not met in that case by the resp0ndent’s post-importation performance of a

claimed method. Id. at l8. Nevertheless, the Commission stated that the complainant “might

have proved a violation of section 337 if it had proved indirect infringement” of the method

claim. Id The Commission cited, as an example, Certain Chemiluminescent Compositions, and

Components Thereof and Methods of Using, and Products Incorporating the Same, Inv. No.

337-TA-285, USITC Pub. N0. 2370, Order No. 25 (Initial Determination) at 38 n.l2 (March

1991), in which “the ALJ found that the ‘importation and sale’ of the accused articles constituted

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PUBLIC VERSION

contributory and induced infringement of the method claim at issue in that investigation.”

Electronic Devices, Comm’n Op. at 18 n.l 1.

2. The Accused Power Ramp-Up Products

The devices accused of infringing the ‘830 and ‘636 patents (“WCDMA Accused

Products”) are [ * ] See CX-1309C (Jackson WS) at

Q787-817. The WCDMA Accused Products can be grouped by the manufacturer of the

baseband processor in the device: [ ]. See Compls. Br. at 59

The specific model numbers of the WCDMA Accused Products are listed in the following

[exhibits: CX-0289C ; CX-0291C (

; CX-0292C ); CX-0293C ; CX-0299C

See Compls. Br. at 59, m1.l8-19 ]

InterDigital alleges that [

] See Compls. Br. at 59. [

16

CX-1309C

CX-1309C

16 [

RPX-3 790C,

RPX-3794C

]

44
CX-1309C

PUBLIC VERSION

CX-1309C

CX-1309C

CX-1309C (

CX-1309C

45

CX-0973C

CX-1309C
PUBLIC VERSION

CX-1309C

CX-1309C

CX-1309C

CX-1309C

] Id.

3. InterDigital’s Reliance on the WCDMA Standard

As in initial matter, Respondents argue that InterDigital’s infiingement proof is

insufficient as a matter of law, inasmuch as [

] See

Resps. Br. at 301-03. Respondents argue, inter alia, that “lnterDigital took a shortcut to proving

infringement by arguing [

] Resps. Br. at 301 (citing CX-1309C (Jackson WS) at Q937-939). It is

argued that InterDigita1’s reliance on the 3GPP WCDMA standard is not legally sufficient to

prove infringement because “the 3GPP WCDMA Standard does not provide the level of

specificity required to establish that practicing the standard would always result in

infringement.” Id. at 302. [

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PUBLIC VERSION

]See id.

In response to Respondents’ arguments, InterDigital argues that, “for their ‘failure of

proof defense, Respondents resort to mischaracterizing InterDigital’s infringement evidence.

[

] See Compls. Reply at 12-13 (citing CX-1309C (Jackson

WS) at Q498, Q1131; Jackson Tr. 194, 209; CX-0301C; CX-0324C; CX-0325C; CX-0326C;

CX-0309C (Source Materials Exhibits)) (emphasis original). It is argued that [

] Compls.

Reply at 13; see Compls. Br. at 60-61.

Having considered the arguments of the parties, it is determined that InterDigital has

adduced evidence to support its infringement case in addition to the accused WCDMA Accused

Products’ [ ] Accordingly, Respondents’

argument that reliance on the standard alone is legally insufficient to prove infringement under

the circumstances of this investigation is not persuasive.

Respondents further argue that InterDigital has not met its burden to provide evidence of

infringement because, inter alia, “Dr. Jacks0n’s witness statement (CX-1309C) does not contain

any analysis of the source code that describes the actual design and operation of the Accused

Products.” Resps. Br. at 303. As discussed above, however, Dr. Jackson has testified that he

relied on the source code to determine how the products work. To the extent Respondents argue

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PUBLIC VERSION

that InterDigital is required to provide an infringement analysis based on the source code for

each separate accused product or product grouping, Respondents are incorrect. Source code is

generally useful in proving an infringement case, but it has not been shown in this instance that

documentary and testimonial evidence standing alone, without the addition of source code, is

insufficient to prove infringement by a preponderance of the evidence. Therefore, it is

determined that, to the extent that InterDigital did not provide a source code analysis for every

accused product, that alleged failure is not enough, by itself, to preclude a finding of

infringement. The ultimate burden of proving infringement remains, of course, upon

InterDigital.

4. Global Infringement Issues

In their infringement analyses, the parties address several issues that apply to multiple

claims and/or both the ‘83Oand ‘636 patents. These global issues will be addressed first,

followed by a claim-by-claim infringement analysis.

a. The “sequence of chips” (‘830 Patent) and “plurality of chips”

(‘636 Patent) Limitations

$4 The ‘83Oasserted claims require that each of the successively sent transmissions and the

message are produced using portions of a same sequence of chips.” See, e.g., JX-0006 at col. ll,

lns. 13-16. The ‘636 asserted claims require that each “successively sent transmission” is

“derived from a first length of a plurality of chips,” and that the “subsequent transmission” is

“derived from a second length of the plurality of chips.” See, e.g., JX-0007 at col. 10, lns. 49-63.

InterDigital argues that[

See Compls. Br. at 65-70.

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PUBLIC VERSION

] Id.

Respondents argue that the accused products do not meet the “sequence of chips” and

“plurality of chips” limitations because [

] See Resps. Br. at 307.17

[

] Id. at 308.

[

] Id. at 308 (emphasis original)

Turning first to Respondents’ argument that [

] The 3GPP WCDMA

standard explicitly identifies c|0ng,1,,,as a “long scrambling sequence” and depicts it as an output

of the “uplink scrambling sequence generator.” CX-1309C (Jackson WS) at Q1074 (citing

CX-0023 (BGPPTS 25.213 v5.6.0); CDX-0003.0l73). Respondents’ expert Mr. Lanning, as

17Although Respondents’ brief has a separate section addressing the “plurality of chips”

limitation from the ‘636 patent, that section refers to the section addressing the “same sequence

of chips” limitation from the ‘83()patent. Resps. Br. at 315-16.

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PUBLIC VERSION

Well as several fact witnesses, [ See, e.g.,

[RX-3996C

CX-1241C

CX-1242C

CX-0305C

] Lanning Tr. 1054-1055. [

] CX-1309 (Jackson WS) at Q930; see also CX-0023 (3GPP Standard)

[ ]

Respondents’ other arguments are not persuasive, inasmuch as they rely on Respondents’

proposed construction of “produced using” and “derived from,” 1'.e., “selected from a

pre-existing.” As discussed above, Respondents’ proposed construction was rejected, and

1nterDigital’s proposed construction, i.e., “generated using,” was adopted.

The ‘S30 asserted claims require using “portions of a same sequence of chips,” while the

‘636 asserted claims require using a “first length” and a “second length” of a plurality of chips,

to generate the claimed transmissions. Under InterDigita1proposed constructions, [

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PUBLIC VERSION

The I I WCDMA Accused Products.

RPX-3 837C RX-3999C

RPX-3837C

RPX-3 837C

CX-1309C

The I I WCDMA Accused Products.

51

Jackson Tr. 214-215; RPX-3910C
PUBLIC VERSION

RX-4029C

RX-4029C

CX-1352C CX-1309C

RPX-3730C RX-3999C

(RPX-3727C)

CX-1309C

CX-1309C

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PUBLIC VERSION

RPX-3727C 1

b. The “successively sends transmissions” (‘830 and ‘636 Patent)

Limitations

Each asserted claim of the Power Ramp-Up patents requires that the claimed transmitter

“successively sends transmissions.” Under the adopted construction for this term, the WCDMA

Accused Products do not infringe the “successively sends transmissions” element.“

[ ] InterDigital identifies [

] See, e.g., Compls. Br. at

65-70. Under the adopted construction of “successively sends transmissions,” i.e., “transmits to

the base station, one after the other, codes that are shorter than a regular length code,” [

] do not infringe this limitation [

RX-3 999C .]

[

[

RX-3999C ] RX-3964 (3GPP TS 25.331)

at §§ 1O.3.6.52-10.3.6.55;see also Certain 3G Mobile Handsets and Components Thereofl Inv.

No. 337-TA-613, USITC Pub. No. 4145, Initial Determination at 92 (“[T]he administrative law

judge finds that the PRACH preamble is modulated by data as the signal as modulated by the

scrambling code uniquely identifies the cell.”). Inasmuch as the adopted construction of

18As discussed above, Respondents’ proposed construction of the tenn, i.e., “transmits to the

base station, one after the other, codes that are shorter than a regular length code,” was adopted.

InterDigital’s proposed construction is “sends transmissions one after the other.”

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PUBLIC VERSION

“successively sends transmissions” requires that the transmissions comprise codes, and inasmuch

as [ ] it is

determined that the WCDMA Accused Products do not satisfy this claim limitation under the

adopted construction because the [ ]

Turning now to an analysis under lnterDigital’s proposed construction, it is determined

that the WCDMA Accused Products would satisfy the “successively sends transmission”

limitation if InterDigital’s proposed construction were adopted, [

l

c. The “produced using” (‘830 Patent) and “derived from” (‘636

Patent) Limitations

The ‘830 asserted claims require: (i) that “each of the successively sent transmissions is

produced using a sequence of chips,” and (ii) that “each of the successively sent transmissions

and the message are produced using portions of a same sequence of chips.” See, e.g., JX-0006 at

col. 10, ln. 54 —col. ll, ln. 16. The ‘636 asserted claims require: (i) that “each ofthe

transmissions are derived from a first length of a plurality of chips,” and (ii) “a subsequent

transmission derived from a second length of the plurality of chips.” See, e.g., IX-0007 at col.

10, lns. 49-63. As shown above, [ 19

l

It is therefore determined that the WCDMA Accused Products satisfy these claim

limitations under the adopted claim constructions.

'9 As discussed above, the claim terms “produced using” and “derived from” have been

construed to mean “generated using.”

54
PUBLIC VERSION

Respondents argue that the accused products do not meet the “produced using” / “derived

from” limitations because [

] See Resps. Br. at 312-14. Inasmuch as Respondents’

proposed constructions have not been adopted, Respondents’ arguments fail.

If Respondents‘ proposed constructions were adopted, however, the evidence

demonstrates that these claim limitations would not be satisfied. Specifically, [the

CX-1309C

1

55
PUBLIC VERSION

d. The “message” and “first accessing a CDMA network” (‘830

Patent) Limitations

The ‘830 asserted claims require that when the subscriber unit is “first accessing a

CDMA network,” it sends to the base station a “message indicating to the base station that the

subscriber unit wants to establish the communications with the base station over the

communication channel to be indicated by the base station.” See JX-0006 at col. 10, ln. 54 —col

11, In. 16.

InterDigital argues that “[T]he WCDMA Accused Products meet this limitation because

[

] Compls. Br. at 76 (citing CX-1309C (Jackson WS) at Q1012-1043); see

also id. at 76-83.

Respondents argue that the WCDMA Accused Products do not satisfy the “message”

limitation [

(citing RX-3999C

] Nevertheless, the evidence demonstrates that this claim limitation is satisfied.

[

] See CX-1309C (Jackson WS) at Q1070. [

]Id-[

56
]1d.

PUBLIC VERSION

This process aligns with the preferred embodiments disclosed in the ‘830

specification. Therefore, the WCDMA Accused Products send the claimed “message.”

Respondents also argue that the WCDMA Accused Products do not satisfy the “first

accessing a CDMA network” limitation, inasmuch as [

] See Resps. Br. at 314 (citing RX-3999C

(Lanning RWS) at Q343-359). The record evidence, however, indicates otherwise.

Respondents’ expert Mr. Lanning testified at the hearing that [

at 464-465 [

] Lanning Tr. at 1063; see also CX-1242C (Lanning Dep. from Inv. No. 337-601)

CX-1240C

CX- 1376

57
PUBLIC VERSION

l

]

Mr. Lanning’s testimony is consistent with the testimony of several fact witnesses. See,

e.g., [CX-1356C

CX-0306C

CX-O305C

CX-0304C

]

Accordingly, it is determined that the WCDMA Accused Products satisfy the “first

accessing a CDMA network” limitation of the ’83Opatent.

e. The “subsequent transmission” (‘636 Patent) Limitation

As discussed above, Respondents’ proposed construction of “subsequent transmission,”

i.e., “known code transmitted to the base station during power ramp-up,” was adopted. Applying

this construction, the WCDMA Accused Products do not satisfy this claim limitation.

InterDigital identifies the

] See RX-3999C (Lanning RWS) at

Q377-378.

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PUBLIC VERSION

5. ‘830 Patent —Claim 1

a.

[

“A wireless code division multiple access (CDMA) subscriber

unit comprisingz”

] CX-1309C (Jackson WS) at Q787-818, Q949-950. [

1. Id at Q950. [

]. Id.

[

307-15.

b.

[

]. See Resps. Br. at

a transmitter configured such that, when the subscriber unit is

first accessing a CDMA network and wants to establish

communications with a base station associated with the

network over a communication channel to be indicated by the

base station, the transmitter successivelysends transmissions

prior to the subscriber unit receiving from the base station an

indication that at least one of the successivelysent

transmissions has been detected by the base station;

] CX-1309C (Jackson WS) at

Q951;Lam1ing Tr. 1049-1050. [

CX-0306C

CX-1309C CX-0304C

CX-0950C

59
].

Q1005. [

PUBLIC VERSION

cx-1309c

1

c. wherein each of the successivelysent transmissions is produced

using a sequence of chips, wherein the sequence of chips is not

used to increase bandwidth;

See CX-13(>)9C(Jackson WS) at Q1004-1011. [Specifically, each of the WCDMA

] Id. at

]

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PUBLIC VERSION

[ CX-1351

1

[ 1­

d. the transmitter further configured such that the transmitter

sends to the base station a message indicating to the base

station that the subscriber unit wants to establish the

communications with the base station over the communication

channel to be indicated by the base station, the message being

sent only subsequent to the subscriber unit receiving the

indication;

[

] Lanning Tr. 1054 [

] CX-1309C (Jackson WS) at

CX-0305C

CX-1309C (Jackson WS) at

952-964, Q1014-1020.

[ ]­

e. wherein at least two of the successively sent transmissions are

produced using different sequences of chips;

[

]. cx-1309c (Jackson WS) atQ10S6-1060. [

] Id. at Q1056. The WCDMA

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PUBLIC VERSION

[

1 Ia’.atQ1056-1058;[ ]

[

] CX-1309C (Jackson WS) at Q1056-1058.

[ ]­

f. wherein each of the successivelysent transmissions is shorter

than the message; and

[ 1­

CX-139OC (Jackson WS) at Q1061. [

] Specifically, each [

Id.;cx-1352c

]

g. wherein each of the successively sent transmissions and the

message are produced using portions of a same sequence of

chips, wherein the same sequence of chips is not used to

increase bandwidth.

[

]. CX-1390C (Jackson WS) at Q1062-1081. [

62
CX-1351C

PUBLIC VERSION

CX-13 09C

CX-1309C ]

‘S30 Patent —Claim 2

a. “The wireless code division multiple access (CDMA)

subscriber unit of claim 1”

Inasmuch as the WCDMA Accused Products do not infringe independent claim 1, it is

fiuther determined that they do not infringe dependent claim 2.

[

cx-1309c

b. “wherein a beginning of each one of the successively sent

transmissions, other than a first one of the successivelysent

transmissions, is at a higher power level with respect to a

beginning of a prior one of the successivelysent

transmissions.”

Id

]1d.[

].

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PUBLIC VERSION

7. ‘830 Patent —Claim 3

a. The wireless code division multiple access (CDMA) subscriber

unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim l, it is

fLlI‘lll161‘determined that they do not infringe dependent claim 3.

b. wherein each one of the successivelysent transmissions, other

than a first one of the successivelysent transmissions, is sent at

a power levelthat is higher than the power level of a prior one

of the successively sent transmissions.

[

]. See CX-1309C

(Jackson WS) at Q1084.

8. ‘830 Patent —Claim 5

a. The wireless code division multiple access (CDMA) subscriber

unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim l, it is

further determined that they do not infringe dependent claim 5.

b. wherein the successivelysent transmissions are sent until

receipt of the indication that at least one of the successively

sent transmissions has been detected by the base station.

[

cx-1309c 1

64
[

Q365-387.

[

PUBLIC VERSION

636 Patent —Claim 1

a. A wireless code division multiple access (CDMA) subscriber

unit comprising:

]. See RX-3999C (Lanning RWS) at

b. a transmitter configured such that, when the subscriber unit is

first accessing a CDMA network, the transmitter successively

sends transmissions wherein each of the transmissions are

derived from a first length of a plurality of chips until the

subscriber unit receives from a base station associated with the

network an indication that at least one of the transmissions has

been detected by the base station; and

]

].

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PUBLIC VERSION

[

CX-1309C ]

c. the transmitter further configured such that, subsequent to the

subscriber unit receiving the indication, the transmitter sends

a subsequent transmission derived from a second length of the

plurality of chips, wherein the first length is less than the

second length.

[

cx-1309c

CX-1309C 1

10. ‘636 Patent —Claim 2

a. The subscriber unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim 1, it is

further detennined that they do not infringe dependent claim 2.

66
b.

[

Id.

PUBLIC VERSION

wherein at least two of the successivelysent transmissions are

different.

] CX-1309C

]

11. ‘636 Patent —Claim 4

8. The subscriber unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim 1, it is

further determined that they do not infringe dependent claim 4.

b.

[

]1d.

wherein the plurality of chips are chips that are not used for

spreading.

cx-1309c

1 Id [

67
PUBLIC VERSION

12. ‘636 Patent —Claim 6

a. The subscriber unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim 1, it is

further determined that they do not infringe dependent claim 6.

b. wherein the successivetransmissions facilitate power control

when the subscriber unit is first accessing the network.

[

cx-13090

Id.; CX-0305C

]

13. ‘636 Patent —Claim 7

a. The subscriber unit of claim 6

Inasmuch as the WCDMA Accused Products do not infringe claim 6, it is further

determined that they do not infringe dependent claim 7.

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PUBLIC VERSION

b. wherein the power control of the successivetransmissions is

not closed loop power control.

[

CX-1309C

Id.

1

14. ‘636 Patent —Claim 8

a. The subscriber unit of claim 1

Inasmuch as the WCDMA Accused Products do not infringe independent claim 1, it is

further determined that they do not infringe dependent claim 8.

b. wherein the subsequent transmission is not closed loop power

controlled.

[

69
PUBLIC VERSION

l

D. Validity

1. General Principles of Lawn

One cannot be held liable for practicing an invalid patent claim. See Pandrol USA,LP v.

AirB0ss Railway Prods, Inc., 320 F.3d 1354, 1365 (Fed. Cir. 2003). Nevertheless, each claim of

a patent is presumed to be valid, even if it depends from a claim found to be invalid. 35 U.S.C.

§ 282; DMIInc. v. Deere & Co., 802 F.2d 421 (Fed. Cir. 1986).

A respondent that has raised patent invalidity as an affirmative defense must overcome

the presumption of patent validity by “clear and convincing” evidence of invalidity. Checkpoint

Systems, Inc. v. United States 1nt’l Trade Comm ’n, 54 F.3d 756, 761 (Fed. Cir. 1995).

In this investigation, Respondents raise the following validity defenses: anticipation,

obviousness, indefiniteness, and lack of written description. See GR12 Filing.

a. Anticipation

Anticipation under 35 U.S.C. § 102 is a question of fact. z4 Techs., Inc. v. Microsoft

Corp, 507 F.3d 1340, 1347 (Fed. Cir. 2007). Section 102 provides that, depending on the

circumstances, a claimed invention may be anticipated by variety of prior art, including

publications, earlier-sold products, and patents. See 35 U.S.C. § 102 (e.g., section 102(b)

provides that one is not entitled to a patent if the claimed invention “was patented or described in

2°The legal principles set forth in this section apply equally to the validity analysis of the other

patents asserted in this investigation.

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PUBLIC VERSION

a printed publication in this or a foreign country or in public use or on sale in this country, more

than one year prior to the date of the application for patent in the United States”).

The general law of anticipation may be summarized, as follows:

A reference is anticipatory under § 102(b) when it satisfies particular

requirements. First, the reference must disclose each and every element of

the claimed invention, whether it does so explicitly or inherently. Eli Lilly

& C0. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375

(Fed.Cir.2006). While those elements must be “arranged or combined in

the same way as in the claim,” Net MoneyIN, Inc. v. VeriSign, Ina, 545

F.3d 1359, 1370 (Fed.Cir.2008), the reference need not satisfy an

ipsissimis verbis test, In re Bond, 910 F.2d 831, 832-33 (Fed.Cir.199O).

Second, the reference must “enable one of ordinary skill in the art to make

the invention without undue experimentation.” Impax Labs, Inc. v.

Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed.Cir.2008); see In re

LeGrice, 49 C.C.P.A. 1124, 301 F.2d 929, 940-44 (1962). As long as the

reference discloses all of the claim limitations and enables the “subject

matter that falls within the scope of the claims at issue,” the reference

anticipates -- no “actual creation or reduction to practice” is required.

Schering Corp. v. Geneva Pharms, Ina, 339 F.3d 1373, 1380-81

(Fed.Cir.2003); see In re Donahue, 766 F.2d 531, 533 (Fed.Cir.1985).

This is so despite the fact that the description provided in the anticipating

reference might not otherwise entitle its author to a patent. See Vas-Cath

Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed.Cir.1991) (discussing the

“distinction between a written description adequate to support a claim

under § 112 and a written description sufficient to anticipate its subject

matter under § l02(b)”).

In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).

b. Obviousness

Under section 103 of the Patent Act, a patent claim is invalid “if the differences between

the subject matter sought to be patented and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention was made to a person having ordinary

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PUBLIC VERSION

skill in the art to which said subject matter pertains.”21 35 U.S.C. § 103. While the ultimate

determination of whether an invention would have been obvious is a legal conclusion, it is based

on “underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level

of ordinary skill in the art; (3) the differences between the claimed invention and the prior art;

and (4) objective evidence of nonobviousness.” Eli Lilly and C0. v. Teva Pharmaceuticals USA,

1nc., 619 F.3d 1329 (Fed. Cir. 2010).

The objective evidence, also known as “secondary considerations,” includes commercial

success, long felt need, and failure of others. Graham v. John Deere C0., 383 U.S. 1, 13-17

(1966); Dystar Textilfarben GmbH v. C.H. Patrick C0., 464 F.3d 1356, 1361 (Fed. Cir. 2006).

“[E]vidence arising out of the so-called ‘secondary considerations’ must always when present be

considered en route to a determination of obviousness.” Stratoflex, Inc. v. Aeroquip Corp. , 713

F.2d 1530, 1538 (Fed. Cir. 1983). Secondary considerations, such as commercial success, will

not always dislodge a detennination of obviousness based on analysis of the prior art. See KSR

Int ’lC0. v. Telejlex Inc., 550 U.S. 398, 426 (2007) (cormnercial success did not alter conclusion

of obviousness).

“One of the Waysin which a patent’s subject matter can be proved obvious is by noting

that there existed at the time of invention a known problem for which there was an obvious

solution encompassed by the patent’s claims.” KSR, 550 U.S. at 419-20. “[A]ny need or

problem known in the field of endeavor at the time of invention and addressed by the patent can

provide a reason for combining the elements in the manner claimed.” Id.

Specific teachings, suggestions, or motivations to combine prior art may provide helpful

2' The standard for detennining Whether a patent or publication is prior art under section 103 is

the same as under 35 U.S.C. § 102, which is a legal question. Panduit Corp. v. Dennison Mfg.

Ca, 810 F.2d 1561, 1568 (Fed. Cir. 1987).

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PUBLIC VERSION

insights into the state of the art at the time of the alleged invention. Id. at 420. Nevertheless, “an

obviousness analysis cannot be confined by a formalistic conception of the words teaching,

suggestion, and motivation, or by overemphasis on the importance of published articles and the

explicit content of issued patents. The diversity of inventive pursuits and of modern technology

counsels against limiting the analysis in this way.” Id. “Under the correct analysis, any need or

problem known in the field of endeavor at the time of invention and addressed by the patent can

provide a reason for combining the elements in the manner claimed.” Id. A “person of ordinary

skill is also a person of ordinary creativity.” Ia’.at 421.

Nevertheless, “the burden falls on the patent challenger to show by clear and convincing

evidence that a person of ordinary skill in the art would have had reason to attempt to make the

composition or device, or carry out the claimed process, and would have had a reasonable

expectation of success in doing so.” PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d

1342, 1360 (Fed. Cir. 2007); see KSR, 550 U.S. at 416 (a combination of elements must do more

than yield a predictable result; combining elements that work together in an unexpected and

fruitful manner would not have been obvious).22

c. Indefiniteness

The definiteness requirement of 35 U.S.C. § 112 ensures that the patent claims

particularly point out and distinctly claim the subject matter that the patentee regards to be the

invention. See 35 U.S.C. § 112, 1]2; Metabolite Labs, Inc. v. Lab. Corp. of Am. Holdings, 370

F.3d 1354, 1366 (Fed. Cir. 2004). If a claim’s legal scope is not clear enough so that a person of

ordinary skill in the art could determine whether or not a particular product infringes, the claim is

22Further, “when the prior art teaches away from combining certain known elements, discovery

of a successful means of combining them is more likely to be nonobvious.” KSR, 550 U.S. at

416 (citing United States v. Adams, 383 U.S. 39, 52 (1966)).

73
PUBLIC VERSION

indefinite, and is, therefore, invalid. Geneva Pharm., Inc. v. Glax0SmithKline PLC, 349 F.3d

1373, 1384 (Fed. Cir. 2003).”

Thus, it has been found that:

When a proposed construction requires that an artisan make a separate

infringement determination for every set of circumstances in which the

composition may be used, and when such detenninations are likely to

result in differing outcomes (sometimes infringing and sometimes not),

that construction is likely to be indefinite.

Halliburton Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008).

d. Lack of a Written Description

The issue of whether a patent is invalid for failure to meet the written description

requirement of 35 U.S.C. § 112, 1]1 is a question of fact. Bard Peripheral Vascular, Inc. v. VV.L.

Gore & Ass0cs., Ina, 670 F.3d 1171, 1188 (Fed. Cir. 2012). A patent’s written description must

clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is

claimed. The test for sufficiency of a written description is “whether the disclosure of the

application relied upon reasonably conveys to those skilled in the art that the inventor had

possession of the claimed subject matter as of the filing date.” Id. (quoting Ariad Pharm., Inc. v.

Eli Lilly & C0., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).

2. Anticipation and Obviousness

Respondents assert three references as prior art against the ‘830 and ‘636 patents: a

version of a CDMA standard called IS-95 (RX-0077) (“IS-95”); U.S. Patent No. 5,430,760 to

Dent (RX-0248) (“Dent”); and a document titled “Synchronisation Procedure in Up & DownLink in the CoDIT Testbed” (RX-0250) (“Lucas”).

23Indefiniteness is a question of law. IGT v. Bally Gaming Int ’l,Ina, 659 F.3d 1109 (Fed. Cir.

2011).

74
PUBLIC VERSION

All three references were considered by the PTO, and the asserted claims of the ‘830 and

‘636 patents were determined patentable over each of these references. See CX-1524C (Haas

RWS) at Q46-49; Lanning Tr. 1098.

:1. IS-95-A

i. Overview

In the 1990s, as the telecommunications industry developed a standard for

interoperability of CDMA networks and products, i.e., IS-95, the industry issued interim IS-95

standards, including the TLA-EIA Interim Standard: Mobile Station —Base Station Compatibility

Standard for Dual-Mode Wideband Spread Spectrum Cellular System (May 1995) (RX-0077

(IS-95-A)). Though this standard evolved between the originally proposed and the finally

adopted standard, the sections relevant here remained substantively constant through IS-95-A.

IS-95-A details a random access procedure for a CDMA system, wherein a mobile

transmits access probes at increasing power levels to a base station until acknowledged.

RX-0077 at 6-108-110, 6-112114-20, 6-113:21-25; RX-3526C (Lanning WS) at Q227-230.

Once the mobile receives an acknowledgement it may request a traffic channel. RX-0077 at

6-104:31-33, 6-105211-18, 6-122:30-39, B-1, Appendix B; RX-3526C (Lanning WS) at

Q241-242.

An IS-95-A mobile starts a random access procedure by sending access probes over the

Access Channel. RX-0077 at 6-105111-18, 6-111:7-16. Each access probe has a preamble and a

message capsule. RX-0077 at 6-109; RX-3526C (Lanning WS) at Q210. The maximum number

of frames for a message capsule ranges from 3 to 10. The maximum number of frames is

detennined based on a constant “MAX_CAP_SZ,” which the base station can set from 0 to 7.

75
PUBLIC VERSION

RX-0077 at 6-97, 6-109; RX-3526C (Lanning WS) at Q267, 272; CX-1524C (Haas RWS) at

Q109. The general structure of an IS-95-A access probe is illustrated below:

Alcautflbflilf lblvfllhqo

Dfliiifl

***~*@_@¢mg@§qg@Q,gq

cancm. ‘

firliflfinillfi

Ififigg » ;....;...¢...4 ;--1,-1 >--¢ 1*-4;--t raw

*'----,%.:."*'-<'*......

§§ -—----8‘-1-v-—~h-I

"ii L“H@€I8tOdQI§#M¢@iGIl3fl

IS-95-A Access Probe (RX-0077 at 6-109)

Within an access attempt (e.g., an attempt to register the mobile), access probes are

grouped into access probe sequences, as shown below:

76
PUBLIC VERSION

i mu- '=—“'“,F' ' Am:-Uni: 8q

ATTBKPT

pita: ‘@191! 5&3 30¢! l

t

payilaa

ruldykr irnaaunas

finnallrbw

!e!MK,,$'m!' Iliiflé

'53‘!

ausmmcmmansx &ia:\nn\nflpIw 8;-n

I'i¢In6.$..3.1L.LL-M.Aeeuucbaneilquuauahupoanutmwtn

IS-95-A Access Probes (RX-0077 at 6-108)

Although MAX_CAP_SZ places an upper limit on the maximum possible number of

frames in an access channel message capsule, the actual number of frames in a message capsule

is based on the calculated number “CAP_SZ.” RX-0077 at 6-188; RX-3526C (Lannjng WS) at

Q267, Q272; CX-1524C (Haas RWS) at Q108-09, Q122). Mobiles calculate CAP_SZ

according to the formula below:

77
PUBLIC VERSION

r 8.7.1.2Ancz:s Chamxi Mesaagcstruemm

1 AnA%C1unndmessagempw&ecmwistso!mMc¢samumulm=ssageandpadding.

1 asshovminF1g\:r:$.7.I.2»1.1h:k:\grhofmeAwessChanneimwaeca;:su1eshaHbc

¢ aaintegarnumbcrofhcecssiimnncifnmespvmby , mfl,[ ]_

8achAaccsaCmnn:tmcsugcsh£imnnsioiakng¢h§eMNSG_LENGFHl.amessage

body,andaCRC.Inthatorder.‘l11em:smgeb0dysim:shaHbcs:kcte<§sothatCAP_$Z

dmanotc::c:ed3w!e{.fl.?L,(2AP,_SZ.'i‘hcmob1§:a:aumash&!Hranamli!hcAacessChaImci

rnessagctamediatelyfeflawtagthepmamhic.

w flxmufikflafinndmflfimmzfitpaddflqwiwbflngnfkmwrmmflwmmwmedhtfly

I! fot1owingu1eAw:ssChmndmeasa$:.Thctungthofthcpaddlrlgzhalibesaxnhtialat

u 8+Messag:Bodyl.cngth+3¥§+£1adduzgIz:sgfi1v88xGAP..$£

IS-95-A CAP_SZ (RX-0077 at 6-188)

The following explains the arithmetic used by a mobile to calculate CAP_SZ (line 5 on

page 6-188). The first step is to sum 8 + Message Body Length + 30, where Message Body

Length is the number of bits in the particular message. RX-3526C (Lanning WS) at Q268. This

sum is divided by 88, which is the number of information bits in each access channel frame. Id.

CAP_SZ is finally calculated by rounding the result of this division up to the nearest integer,

e.g., 1.81 is rounded to 2, and 2.31 is rounded to 3. Id.

The second formula shown above in line 12 is used to calculate the value of “Padding

Length,” which is the number of ‘O’bits added to the particular message capsule to complete the

last partial frame that contains message information. Padding Length ensures that the total bits

in the message capsule, i.e., including the padding bits, equals the number of bits needed to fill

CAP_SZ frames. RX-3526C (Lanning WS) at Q27l. For example, a CAP_SZ of two (2) frames

requires 176 total bits (2 x 88). Padding Length will add enough ‘O’bits so that the total bits

equals 176. The formulas above do not depend on the value of MAX_CAP_SZ because “[t]he

message body shall be selected so that CAP_SZ does not exceed 3 + MAX_CAP_SZ.”

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PUBLIC VERSION

RX-0077 at 6-188. Thus, MAX_CAP_SZ only affects the maximum transmission length.

IS-95-A does not have a m.inirnurntransmission length. RX-3526C (Lanning WS) at Q273.

After calculating CAP_SZ and Padding Length, the padded access probes are repeatedly

transmitted until the mobile receives an acknowledgement from the base station. RX-0077 at

6-108-110, 6-112:14-20, 6-113:21-25; RX-3526C (Lanning WS) at Q210, Q227. As shown at

page 6-108, the access probes are transmitted at increasing power levels, without feedback from

a base station. RX-3526C (Lanning WS) at Q210, Q226. Thus, the random access probes are not

closed-loop power controlled, but are instead open-loop power controlled. CX-1524C (Haas

RWS) at Q42.

For every access probe sequence, the mobile device uses a random nmnber called “RA”

as its “Access Channel Ntunber” (“ACN”). RX-0077 at 6-109; 6-111:7-16; RX-3526C (Lanning

WS) at Q252. The ACN determines the starting state of the long PN code, which is used to

spread the access channel information. RX-0077 at 6-111:7-16; RX-3526C (Lanning WS) at

Q254. A different value for ACN will cause the access channel information between successive

access probe sequences to be spread with different chips. Inasmuch as there are 32 possible

values for RA, there is a 31 out of 32 likelihood that the chips of successive access probe

sequences will be different. See RX-0077 at 6-109; RX-3526C (Lanning WS) at Q255.

Once the base station detects an access probe, it sends an acknowledgement. RX-0077 at

6-112114-20, B-1; RX-3526C (Lanning WS) at Q210). In response to the acknowledgement, and

depending on the subsequent task, the mobile can transmit one of several possible messages to

the base station. Two of these messages are relevant to the issues in this investigation:

“Registration” and “Origination.”

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PUBLIC VERSION

A Registration Message is used to register the mobile with the network under various

circumstances. For example, IS-95-A requires a mobile to register with the network when it first

powers up, i.e., is turned on. RX-0077 (IS-95-A) at 6-156122-34; RX-3526C (Lanning WS) at

Q220. The mobile must register on power-up, and the registration must be successfully

completed, before the mobile can receive or originate, i.e., make, a call. RX-0077 (IS-95-A) at

6-156222-34; see also id. at 6-104:3l-33, 6-105111-18; RX-3526C (Lanning WS) at Q21O. An

Origination Message indicates that the subscriber unit wants to establish communications with

the base station. RX-0077 (IS-95-A) at 6-104:31:-33, 6-105:1 1-18; RX-3526C (Lanning WS) at

Q222. The base station responds and allocates a voice communication channel. RX-0077

(IS-95-A) at 6-104:31-33, 6-105:11-18; RX-3526C (Lanning WS) at Q222-223.

As described above, CAP_SZ is the actual number of frames transmitted in a particular

access channel message capsule, and varies with the message type. A Registration Message

results in CAP_SZ of 2 frames, and an Origination Message results in 3 frames. RX-0077

(IS-95-A) at 6-108, 6-199, 6-207-208; RX-3526C (Lanning WS) at Q259-261).

The access probes of Registration and Origination Messages are all spread with the same

spreading code, defined in IS-95-A as the “Long Code,” and scrambled with the same pilot PN

sequences, defined in the IS-95-A as the “Short Code” or short PN scrambling code. RX-0077

(IS-95-A) at 6-8, 6-22-23; RX-3526C (Lanning WS) at Q23l-235, Q284.

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PUBLIC VERSION

ii. Anticipation Analysis of the ‘830 Patent

The “onlv subsequent to the subscriber unit receiving the indication” Limitation.

IS-95 does not anticipate the asserted claims of the ‘830 patent, inasmuch as it does not

disclose the limitation that the supposed “message” is sent “only subsequent to the subscriber

unit receiving the indication.” Both parties’ construction of this limitation, including the

construction adopted above, require a temporal order to these events, i.e., event A occurs before

event B. See Haas Tr. l852-l 853. This temporal order is not disclosed in IS-95.

As taught by IS-95, when a handset wants to establish a channel to make a call, it

transmits an Origination Message. CX-1524C (Haas RWS) at Q88; RX-0077 (IS-95) at 6-122.

In contrast, the handset sends a Registration Message to send registration information to a base

station when registering on the network. CX-1524C (Haas RWS) at Q84. IS-95-A does not

require a separate registration message before a handset can make a call. The handset can send

the Origination Message before the Registration Message, after the Registration Message and

before the acknowledgement, or after the acknowledgement. Id. at 83. Inasmuch as IS-95-A

does not disclose that receiving the acknowledgement of a Registration Message and sending the

Origination Message are interrelated events, i.e., one must occur before the other, the “only

subsequent to” limitation is not disclosed in IS-95. Id.

The “each of the successivelvsent transmissions and the message are produced

using_portions of a same sequence of chips” Limitation.

Respondents point to the I-channel short PN code disclosed in IS-95, or to the Q-channel

short PN code, as being the claimed “same sequence of chips.” RX-3526C (Lanning WS) at

Q282-283. This argument ignores the requirement that “each of the successively sent

transmissions and the message are produced using portions of a same sequence of chips.”

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PUBLIC VERSION

JX-0006 (‘830 patent) at cl. 1. A handset in IS-95-A produces the Registration and Mobile

Origination Message access probes using multiple repetitions of the I and Q-channel short PN

codes, 1'.e., the entirety, and not just portions, of those sequences. CX-1524C (Haas RWS) at

QlO0. Indeed, Mr. Lanning testified that each sequence is repeated 2.25 times when scrambling

the Mobile Origination Message capsule. Lanning Tr. 1106-1107. Assuming that the

Registration Message capsule can be two frames long, even the shorter Registration Message

capsule requires 1.5 repetitions of the short PN code sequence. CX-1524C (Haas RWS) at Q102.

This is because the short PN codes (at 26.667 milliseconds long) are shorter than each access

probe message capsule (40 or 60 milliseconds long). Id. at QIOO,Ql0Z; Lanning Tr. ll03,

1106. Multiple repetitions of a code cannot be considered a “portion” of that code.

The “each of the successivelvsent transmissions is shorter than the message”

Limitation.

IS-95 fails to show, clearly and convincingly, that a person of ordinary skill in the art

would have understood the Registration Message access probes to be shorter than the Mobile

Origination Message access probes. Respondents’ expert Mr. Lamiing testified that the capsule

for the Registration Message is two frames long, and the capsule for the Mobile Origination

Message is three frames long. RX-3526C (Lanning WS) at Q269. This, however, is not the only

reasonable interpretation of the disclosures of IS-95 regarding message length. In fact, the

experts for both parties, textbook authors, and other inventors came to a different interpretation

of what IS-95 discloses regarding the lengths of the Registration and Mobile Origination

Message access probes. CX-1524C (Haas RWS) at Ql03-122. Under this altemate

interpretation, the Registration and Mobile Origination Message access probes are the same

length, because the capsules for both messages are the minimum length of three frames long. Id.

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Inasmuch as person skilled in the art differ as to the message length disclosed in IS-95, the

evidence is neither clear nor convincing that one message length is shorter than the other.

iii. Obviousness Analysis of the ‘830 Patent

Claim 1.

Respondents’ theory that IS-95 alone renders obvious ‘830 Claim l fails for three

independent reasons. First, this argument was expressly rejected by Judge Luckem in the 613

Investigation. Respondents argue that it would be obvious to separate the IS-95 “preamble from

the message capsule . . . result[ing] in the preambles and Registration message being transmitted

separately, such that the Registration message would be sent only subsequent to the indication of

receipt of a preamble.” RX-3526C (Lanning WS) at Q388. This is directly contrary to two

explicit holdings of Judge Luckem in the 613 Investigation: (i) “as the IS-95 references

specifically state that the preamble and message cannot be sent separately, the [ALJ] finds that

the IS-95 references do not make it obvious that the preamble and the message could be sent

separately,” and (ii) “an additional acknowledgement, which does not exist in IS-95, would be

required in the IS-95 system if the access probe preamble and message capsule were separately

transmitted.” CX-0866C (613 ID) at 148. Respondents’ position is therefore merely a

restatement of a previously rejected argument.

Second, Respondents’ theory ignores the express teachings of IS-95, which are the same

teachings on which Judge Luckern relied in finding that “the IS-95 references do not pennit the

UE to first transmit the access probe preamble, then wait for an ‘acknowledgement’ or

‘indication’ from the [base station] before transmitting the access probe message capsule.”

CX-0866C (613 ID) (citing “[IS-95] at 6.7.1.1 (“The mobile station shall transmit an Access

Channel message capsule immediately following the preamble”), 6.7.1.2; [IS-95] at 6, n.16

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(“‘Shall’ and ‘shall not’ identify requirements to be followed strictly to confonn to the standard

and from which no deviation is permitted.”)). Moreover, the system in IS-95 would be

inoperable if the preamble and message were split, because the base station uses the preamble

initially to detect the access code, and then as a timing reference. CX-1524C (Haas RWS) at

QI33-134; see RX-0077 (IS-95) at 6.1.3.2.2.l at 6-28 (“The Access Channel preamble is

transmitted to aid the base station in acquiring an Access Channel Transmission”).

Respondents’ proposed modification contradicts both Judge Luckern’s findings in the 613

investigation and the express teachings of IS-95.

Third, Respondents do not point to a single reference that did, in fact, send the preambles

separately from the message. Both IS-95 and Dent, discussed below, send the random access

message and its preambles together, in a single transmission. Futhermore, Lucas does not even

disclose a message.

Claims 2 and 3.

With respect to Respondents’ argument that claims 2 and 3 of the ‘830 patent are

obvious, their expert Mr. Lanning testified that:

[I]t would be obvious to one of skill in the art that the power ramping

could continue across two different access probe sequences such that the

power of each access probe was constantly increasing. This would have

been quite obvious to one of skill in the art at the time of the invention as

an altemative scheme, and would require insignificant modification to

implement because all of the required functionality is already present in

the mobile device.

RX-3526C (Lanning WS) at Q291, Q296.

Mr. Lanning fails to cite to evidence supporting Respondents’ position. He also fails to

explain Whya person of ordinary skill in the art would have thought to modify IS-95 in this way.

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Accordingly, Respondents have not met their burden to adduce clear and convincing evidence

that claims 2 and 3 are obvious.

Additional claim limitations.

Even if Respondents were correct that it would have been obvious to modify IS-95 as

discussed above, IS-95 as modified would still not disclose several claim elements needed for

invalidation. First, the Registration Message of IS-95 is not the claimed “message.” Claim l

requires that the message indicates that the handset wants to establish a cormnunication channel

with the base station. JX-0006 C830 patent) at cl. l. The Registration Message provides no such

indication. CX-1524C (Haas RWS) at Q124. In fact, Mr. Lanning agrees that “IS-95-A

discloses that a mobile device sends a Mobile Origination Message when the user places a call,”

and that “[t]he Mobile Origination [M]essage sent in IS-95-A results in the establislnnent of a

two-way voice channel,” which “is a channel for communication between a subscriber unit and a

base station.” RX-3526C (Lanning WS) at Q222-223. Conversely, Mr. Lanning agrees that “IS95-A states that registration is the process by which the mobile station notifies the base station of

its location, status, identification, slot cycle, etc.” Id. at Q220 (internal citations omitted).

Therefore, the Registration Message cannot be the claimed “message.”

Second, IS-95 as modified still would not disclose the “portions of a same sequence of

chips” limitation because, as discussed above, the I and Q channel short PN codes need to be

repeated multiple times to produce the Registration Message. CX-1524C (Haas RWS) at QlO2.

Therefore, even with their proposed modifications to IS-95, Respondents have not shown that

IS-95 renders obvious the asserted claims of the ‘S30 patent.

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iv. Anticipation Analysis of the ‘636 Patent

The “subsequent to the subscriber unit receiving the indication” Limitation.

IS-95 does not disclose a transmission sent “subsequent to the subscriber unit receiving

the indication.” The Registration Message and the Mobile Origination Message are independent

events. CX-1524C (Haas RWS) at Q83. As shown above, a handset in IS-95 may send the

Mobile Origination Message before, or independent of, a Registration Message during (i)

implicit registration, (ii) aborted registration, and (iii) disabled/delayed power-up registration.

IS-95 therefore fails to disclose this limitation of the asserted ‘636 patent claims.

The “each of the transmissions is derived from a first length of a plurality of chips”

and “a subsequent transmission derived from a second length of the plurality of chips”

Limitations.

The ‘636 asserted claims require that each of the successively sent transmissions is

“derived from a first length of a plurality of chips,” and that the subsequent transmission is

“derived from a second length of the plurality of chips.” JX-0007 (‘636 Patent) at cl. 1.

Respondents’ arguments regarding the validity of limitations is the same as their theory for the

“portions” limitation of the ’830 patent, and thus fails for similar reasons. Respondents point to

the I or Q-channel short PN code taught in IS-95 as being the “plurality of chips.” See

RX-3526C (Lanning WS) at Q318. As shown above, assuming that the Registration Message

capsule can be two frames long, 1.5 and 2.25 repetitions of the I and Q-channel short PN codes

would be used to produce the Registration and Mobile Origination Message capsules,

respectively. Inasmuch as the claims require that “the first length is less than the second length,”

they also require that the Registration Messages be derived from a portion of the “plurality of

chips” that is shorter than the plurality’s entire length. In fact, each Registration Message is

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derived from multiple repetitions of the I and Q-channel short PN codes, and IS-95 therefore

does not disclose that each of the “successively sent transmissions” is derived from a “first

length” of the “plurality of chips” or that the “subsequent transmission” is derived from a

“second length” of the “plurality of chips.”

The “wherein the first length is less than the second length” Limitation.

Each of the asserted claims of the ‘636 patent requires “a subsequent transmission

derived from a second length of a plurality of chips, wherein the first length is less than the

second length.” As discussed above, Respondents contend that IS-95 teaches this limitation

because the Registration Message capsule is only two frames, whereas the Origination Message

capsule is three frames. RX-3526C (Lanning WS) at Q352. Nevertheless, it has not been shown

that a person of ordinary skill in the art would have understood these message capsules to be

different lengths, inasmuch as the evidence shows disagreement as to the length of these message

capsules. See CX-1524C (Haas RWS) at Q162.

v. Obviousness Analysis of the ‘636 Patent

With respect to Respondents’ obviousness position for the ‘636 claims, it is argued that a

person of ordinary skill in the art would have found it obvious to split the preamble from the

message. See RX-3526C (Lanning WS) at Q388. This argument fails for the same reasons it

failed with respect to the alleged obviousness of the ‘830 claims discussed above, i.e., (i) it Was

rejected by Judge Luckem in the 613 Investigation, (ii) it ignores the express teachings of IS-95,

and (iii) the record evidence does not show, clearly and convincingly, that the claims at issue are

obvious.

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b. Lucas in Combination with IS-95-A

Another reference on which Respondents rely to show invalidity of the ‘83Oasserted

claims is an article teaching a random access procedure, “Synchronisation Procedure in Up &

Down-Link in the CoDiT Testbed Reference” by P. Lucas, which was presented at the RACE

Mobile Telecommunications Workshop in Amsterdam on May 17-19, 1994 (RX-0250)

(“Lucas”).24

Lucas provides a general outline of a synchronization procedure used in a testbed.

CX-1524C (Haas RWS) at Q181. Respondents argue that if IS-95 fails to disclose the “only

subsequent” and “message” limitations of the ‘830 asserted claims, it would have been obvious

to combine Lucas with IS-95 so that the preambles of Lucas are used for the “successive

transmissions,” and the “normal IS-95 procedure” of sending the Registration Message is used

for the subsequently sent “message.” See RX-3526C (Larming WS) at Q527. Respondents’

argument fails for several reasons.

First, combining Lucas With IS-95 creates leads to two deficiencies as to claim

limitations: (i) the preambles of Lucas are not “produced using different sequences of chips,” and

(ii) the preambles of Lucas and the Registration Message of IS-95 are not produced using

“portions of a same sequence of chips.” As detemiined by Judge Luckern in the 613

24The testimony of Dr. Esa Malkamaki (RX-3525), along with the exhibits discussed in his

testimony (RX-0728 (RACE Mobile Workshop, Amsterdam, May 17-19, 1994, Volume 1);

RX-3432 (Preparation of Amsterdam RACE Mobile Workshop); RX-3433 (Facsimile

Confinnation of Registration at RACE Mobile Workshop); RX-3434 (Entry for RACE Mobile

Telecommunications Workshop Publication from Catalog)), demonstrate that the Lucas

reference (RX-0250) was publicly available, inasmuch as it was part of RX-0728 (RACE Mobile

Workshop, Amsterdam, May 17-19, 1994, Volume 1), which was publicly distributed in May

1994. Moreover, Chief Judge Luckern concluded that the Lucas reference (RX-0250) was prior

art to the ‘O04patent (RX-2951), which is a parent patent to the Power Ramp-up patents. See

RX-0183 (613 ID) at ZTE800lDC-EXR00005773. No party contests that the Lucas reference is

prior art to the Power Ramp-up patents in this investigation.

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Investigation, “the Lucas reference discloses a single code sent by the handset during random

access.” CX-0866C (613 ID) at 135; CX-1524C (Haas RWS) at Q185 (the preambles disclosed

in Lucas each use the same Gold code). The Lucas preambles therefore are not produced using

different sequences of chips. In addition, Respondents have not shown how the Lucas preambles

produced with the Gold code, and the IS-95 Registration Message produced with the I and

Q-channel short PN codes, meet the requirement that the “successively sent transmissions” and

the “message” be produced from portions of a “same sequence of chips.” See RX-3526C

(Lanning WS) at Q526-527.

Second, the combination of Lucas with IS-95 still does not satisfy the “portions” or

“message” limitations. As discussed above, the Registration Message capsules of IS-95 are

produced using the entirety of the I and Q-channel short PN codes. Similarly, the Lucas

preambles are produced using the entirety, and notjust a portion of, the Gold code sequence.

RX-0250 (Lucas) at 5-6; CX-1524C (Haas RWS) at Ql82-l 83. Further, as discussed above, the

Registration Message of IS-95 does not indicate that the handset wants to establish a

communication channel. CX-1524C (Haas RWS) at QI92.

Third, as with their IS-95 obviousness theories, Respondents provide no evidence to

show it would have been obvious to a person of ordinary skill in the art to combine IS-95 and

Lucas. It is opined that “it would have been obvious to a person of ordinary skill in the art to try

the random access procedures developed by Lucas with IS-95-A, as the combinations would

have yielded predictable results with reasonable expectations of success,” but this assertion does

not rise to the level of clear and convincing, which is required for a finding of invalidity.

RX-3536C (Lanning WS) at 1]526.

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c. Dent

Respondents also rely on U.S. Patent No. 5,430,760 to Dent (RX-0248) (“Dent” or “Dent

‘760”) to show obviousness of the asserted Power Ramp-Up patent claims. See Resps. Br. at

344-54. Dent was cited by the examiner during the prosecution of the ‘830 and ‘636 patents, and

the asserted claims were found patentable over Dent. See CX-1546 (‘83Ofile history) Notice of

Allowance at 3; CX-1547 (‘636 file history) Notice of Allowance at 2. Indeed, even in

combination with IS-95, Dent discloses the standard prior art approach of sending the preamble

along with the message. See CX-1524 (Haas WS) at Q61, Q2l3.

i. Obviousness Analysis of the ‘830 Patent

The “each of the successivelvsent transmissions is shorter than the message”

Limitation.

The “successively sent transmissions” are not shorter than the “message” because the

“call initiation message” and the “uplink acknowledgement message,” and in fact, every random

access message in Dent, are the same length. RX-0248 (Dent) at col. 8, lns. 38-44; CX-1524C

(Haas RWS) at Q221-223. Respondents admit that the random access messages of Dent are the

same length, but argue that it would be obvious to vary their lengths. RX-3526C (Lanning WS)

at Q459-460. To the contrary, Dent explicitly teaches away from varying the message lengths.

RX-0248 (Dent) at col. 8, lns. 38-44; CX-1524C (Haas RWS) at Q22l-223. Dent teaches that

the messages must all be the same length in order for the messages to match the length of the

speech coder frame and to thereby simplify the system. RX-0248 (Dent) at col. 8, lns. 38-44;

CX-1524C (Haas RWS) at Q22l-223. Respondents point to the codeword “BB” messages that

are shorter in length, but these are irrelevant. RX-3526C (Lanning WS) at Q463. Dent discloses

that these “BB” messages are used only when transmitting speech traffic after the random access

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attempt is complete, not during a random access attempt. RX-0248 (Dent) at col. 8, lns. 41-51;

CX-1524C (Haas RWS) at Q228-229.

The “portions of the same sequence of chips” Limitation.

Dent does not disclose that the “call initiation message” and the “uplink

acknowledgement message” are produced using “portions of the same sequence of chips,” as

required by the asserted ‘S30 claims. Dent instead discloses that “each message is scrambled

before transmission using a scrambling code,” and that different scrambling codes are available.

RX-0248 (Dent) at col. 3, lns. 2-5; Fig. 3B. Respondents’ argument for why the same

scrambling code would be used for both messages is that “[a] person of ordinary skill in the art

would understand that once a mobile selects a scrambling code for a random access procedure,

the subscriber unit would maintain that scrambling code for all of the associated random access

messages.” RX-3526C (Lanning WS) at Q48 1. Notwithstanding the fact that this argument is

not supported by the evidence, Respondents have not shown that each random access message is

scrambled with only a portion of that same scrambling code. CX-1524C (Haas RWS) at Q254.

ii. Obviousness Analysis of the ‘636 Patent

As for the ‘636 patent, Dent does not disclose: (i) that the “successively sent

transmissions” are “derived from a first length of a plurality of chips,” (ii) that the “subsequent

transmission” is “derived from a second length of the plurality of chips,” and (iii) that “the first

length is less than the second length.” The first two limitations are not disclosed for the same

reasons, discussed above, that the “portions of a same sequence of chips” limitation of the ‘830

claims is not disclosed. The remaining limitation is not disclosed for the same reasons that the

limitation “each of the successively sent transmissions is shorter than the message” of the ‘83O

claims is not disclosed, as discussed above.

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d. Secondary Considerations

With respect to secondary considerations of nonobviousness, InterDigital argues the

following:

Even if Respondents could make out a primafacie case of obviousness—

and they cannot—Respondents’ obviousness defense cannot stand in the

face of the overwhelming evidence of secondary considerations of nonobviousness. First, the initial access procedure of asserted claims has been

adopted in the 3GPP WCDMA standard, which shows industry acceptance

and praise. CX-1524C (Haas) at 1]291. Second, there was a “long felt but

unsolved need,” for the claimed inventions as evidenced by the failed

CODIT and ATDMA projects by major telecommunications companies.

Id. at 294-305. The commercial success of the claimed inventions is

evidenced by InterDigital’s ability [

] Id. at 306-308. These secondary

considerations have gone unrebutted by Respondents. See generally RX3526C (Lanning); Resp. PHB.

Compls. Br. at 127.

The evidence cited by InterDigital fails to establish the requisite nexus between the

secondary considerations and the Power Ramp-Up patents. Nevertheless, inasmuch as

Respondents have not shown by clear and convincing evidence that the asserted claims are

anticipated or rendered obvious in light of the cited prior art references, the secondary

considerations play only a minor role in the validity analysis of the ‘S30 and ‘636 patents.

3. Lack of Written Description

Respondents argue that certain claim limitations of the ‘830 and ‘636 patents lack written

description support or are outside the scope of the invention. Resps. Br. at 354-73. These

disputed claim limitations are addressed in turn below.

a. “successively sent transmissions” and “successively sends

transmissions” (‘830 and ‘636 Patents)

Respondents take the position that the claim limitations “successively sent transmissions’

and “successively sends transmissions” of claim 1 of the ‘830 patent and claim l of the ‘636

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patent lack written description support “if they are interpreted to cover transmission of a code

modulated by data.” See Resps. Br. at 362-66. As discussed above, the terms “successively sent

transmissions” and “successively sent transmissions” were construed to mean “transmits to the

base station, one after the other, codes that are shorter than a regular length code.” The adopted

constructions make clear that the claimed “transmissions” comprise codes which, as discussed

above regarding the alleged infringement of these limitations, are not modulated by data.

Inasmuch as the terms “successively sent transmissions” and “successively sent transmissions”

are not interpreted to cover transmission of a code modulated by data, Respondents’ written

description arguments are moot.

Nevertheless, if the tenns “successively sent transmissions” and “successively sent

transmissions” were interpreted to cover transmission of a code modulated by data, it is

detennined that such an interpretation would not be supported by the specification, for the same

reasons discussed above with respect to the construction of the claim tenns.

b. “message . . . produced using . . . a same sequence of chips”

(‘830Patent) and “subsequent transmission derived from a

second length of the plurality of chips” (‘636Patent)

Respondents argue that, inasmuch as the ‘83Oand ‘636 patents are directed to “initial

power ramp-up and synchronization during the establishment of a communication channel,” the

claim terms “message . . . produced using . . . a same sequence of chips” from the ‘83Opatent

and “subsequent transmission derived from a second length of the plurality of chip” from the

‘636 patent are outside the scope of the invention because the claimed “message” and

“subsequent transmission” are not part of the power ramp-up process. See Resps. Br. at 366-67

(citing JX-0006 (‘830 patent) at col. 4, ln. 67 —col. 5, 111.3). Respondents also argue that “there

is no support in the Power Ramp-up Patents for limitations that are directed to complex

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relationships between the chips of a ‘message’ and the chips of a ‘successively sent

transmission,’” inasmuch as “The Power Ramp-up Patents . . . provide no disclosure regarding a

sequence of chips common to a ‘successively sent transmission’ and ‘rnessage.”’ Id. at 367

(emphasis original).

With respect to Respondents’ first argument, that the “message” limitation is outside the

scope of the ‘83Opatent, the specification itself makes clear that the claimed invention is directed

to “initial power ramp-up and synchronization during the establishment of a communication

channel.” See JX-0006 at col. 4, ln. 63 —col. 5, ln. 3. As disclosed by the specification, the

claimed “message” is used during the establislunent of a communication channel between the

subscriber unit and the base station, and is therefore within the scope of the invention. See, e.g.,

col. 10, lns. 44-45. Accordingly, Respondents’ argument is rejected.

As for Respondents’ second argument, the evidence demonstrates that the ‘830 and ‘636

patents do in fact disclose using a portion of the access code to product the message. For

example, Respondents’ expert Mr. Lanning testified that Figure 10 of the patents shows that the

access code is modulated by the data of the call setup message. See CX-1240C (Lanning Dep.

from Inv. No. 337-TA-613) at 204-206; JX-0006 (‘83Opatent) at col. 10, lns. 8-ll (“The signals

output by the data transmitter 88 and the short code and access code transmitter 90 are combined

. . . .”). Moreover, InterDigital’s experts Drs. Jackson and Haas identified passages from the

patents disclosing that the access code and spread call setup message are added together and then

transmitted. See CX-1309C (Jackson WS) at Q620-621, Q623-686; CX-1524C (Haas RWS) at

Q323-357. Accordingly, the record evidence shows that Respondents’ Writtendescription

argument is not persuasive.

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The Closed-Loop Power Control (‘406 and ‘332) Patents

Overview of the Patents and Asserted Claims

The ‘406 Patent

Asseited U.S. Patent No. 7,502,406 (“the ‘406 patent”) is titled, “Automatic Power

Control System for a Code Division Multiple Access (CDMA) Communications System.”

IX-0001 ( 406 patent). The ‘406 issued on March 10, 2009, and the named inventors are Gary

Lomp, Fatih Ozluturk, and John Kowalski. Id. The ‘406 patent relates generally to automatic

power control for a CDMA system. Id. at Abstract. The ‘406 patent is related to the asserted

332 patent, these two patents together are also referred to as the “Power Control” patents.

InterD1g1talasserts independent claim 29 of the ‘406 patent. lnterDigital also asserts

dependent claims 6, 13, 20, and 26, which depend respectively from independent claims 1, 7, 15

and 21, and dependent claim 22. The relevant claims read as follows:

1 A method for controlling transmission power levels of a code division

multiple access (CDMA) subscriber unit, the method comprising:

receiving by the subscriber unit a power control bit on a downlink

control channel, the power control bit indicating either an increase or

decrease in transmission power level;

transmitting a plurality of channels by the subscriber unit, the plurality

of channels including a traffic channel and a reverse control channel;

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

wherein the transmission power level of the traffic channel and the

reverse control channel are different; and

transmitting the traffic channel and the reverse control channel at their

respective adjusted transmit power levels.

6 The method of claim l wherein the reverse control channel carries at

least one power command.

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7 A method for controlling transmission power levels of a code division

multiple access (CDMA) subscriber unit, the method comprising:

receiving by the subscriber unit a series of power control bits on a

downlink channel, each power control bit indicating either an increase

or decrease in transmission power level;

transmitting a plurality of channels by the subscriber unit, the plurality

of channels including a traffic channel and a reverse control channel;

adjusting a transmission power level of both the traffic channel and the

reverse control cham1el in response to the same bits in the received

series of power control bits, wherein the transmission power level of

the traffic channel and the reverse control channel are different; and

transmitting the traffic channel and the reverse control channel at their

respective adjusted transmit power levels.

The method of claim 7 wherein the reverse control channel carries at

least one power command.

A code division multiple access (CDMA) subscriber unit comprising:

a despreading and demultiplexing device configured to recover a

power control bit from a downlink control channel, wherein the power

control bit has a value indicating a command to either increase or

decrease transmission power level; and

gain devices configured, in response to the received power control bit,

to adjust a transmission power level of both a traffic channel and a

reverse control Cl'18.1'l1'1€lprior to transmission by the subscriber unit,

wherein the transmission power level of the traffic channel and the

reverse control channel are different.

20 The CDMA subscriber unit of claim l5 wherein the reverse control

channel carries at least one power command.

A code division multiple access (CDMA) subscriber unit comprising:

a despreading and demultiplexing device configured to recover a series

of power control bits from a downlink channel, wherein each power

control bithas a value indicating a command to either increase or

decrease transmission power level; and

gain devices configured, in response to the received series of power

control bits, to adjust a transmission power level of both a traffic

Cl'13.1111€land a reverse control channel in response to same bits in the

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received series of power control bits prior to transmission by the

subscriber unit, wherein the transmission power level of the traffic

channel and the reverse control channel are different.

22. The CDMA subscriber unit of claim 21 wherein the downlink channel

is a downlink control channel.

26. The CDMA subscriber unit of claim 22 wherein the reverse control

channel carries at least one power command.

29. A method for controlling transmission power levels of a code division

multiple access (CDMA) subscriber unit, the method comprising:

receiving by the subscriber unit a power control bit on a downlink

control channel, the power control bit indicating either an increase or

decrease in transmission power level;

transmitting a plurality of charmels by the subscriber unit, the plurality

of channels including a traffic channel and a reverse control channel;

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

separately adjusting the transmission power level of the traffic channel

and the reverse control channel; and

transmitting the traffic channel and the reverse control chamiel at their

respective adjusted transmit power levels.

JX-0001 at col. 14, ln. 58 —col. 15, ln. 8; col. 15,1ns. 26-45; col. 15, lns. 66-67; col. 16, lns. 4­

16; col. 16, lns. 32-48; col. 16, lns. 63-64; col. 17, lns. 5-22.

2. The ‘332Patent

Asserted U.S. Patent No. 7,706,332 (“the ‘332 patent”) is titled, “Method and Subscriber

Unit for Performing Power Control.” IX-0002 (‘322 patent). The ‘332 patent issued on April

27, 2010, and the named inventors are Fatih Ozluturk and Gary Lomp. Id. The ‘332 patent

relates generally to the Waysubscriber units and base stations communicate to control the power

level of transmissions from the base station to a subscriber unit within a cellular CDMA system.

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Id at Abstract The ‘332 patent is related to the asserted ‘406 patent; these two patents together

are also referred to as the “Power Control” patents.

InterD1gital asserts dependent claims 9, 10, ll, and 14, as well as independent claim 8

from Wl'11Chthe claims depend. InterDigital also asserts dependent claims 2, 3, 4, 7, 22, 23, 24

and 27 These claims depend from non-asserted independent claims 1 and 21. The relevant

claims read as follows:

1. A code division multiple access subscriber unit comprising:

a circuit, operatively coupled to an antenna, configured to generate

power control bits that are included on only one of an in-phase (I)

channel or a quadrature (Q) channel; and

the antenna configured to output a radio frequency signal derived at

least in part from the I and Q channels.

2. A code division multiple access subscriber unit in accordance with

claim 1, wherein the circuit is further configured to combine the I and Q

channels with a complex sequence.

3. A code division multiple access subscriber unit in accordance with

claim 2, wherein the combining is by multiplication.

4. A code division multiple access subscriber unit in accordance with

claim 2, wherein the complex sequence comprises at least two pseudo

noise sequences.

7. A code division multiple access subscriber unit in accordance with

claim 1, wherein the circuit is further configured to generate pilot bits;

wherein the radio frequency signal is derived at least in part from the pilot

bits.

8. A code division multiple access subscriber tmit, comprising:

an antenna configured to receive a first radio frequency signal; and

a circuit, operatively coupled to the antenna, configured to generate

power control bits in response to the first radio frequency signal,

wherein the circuit is further configured to establish an in-phase (I)

pre-spread channel and a quadrature (Q) pre-spread channel, such that

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the power control bits are included on only one of the I pre-spread

channel or the Q pre-spread channel;

wherein a second radio frequency signal output by the code division

multiple access subscriber unit is derived at least in part from the I and

Q pre-spread channels.

9. A code division multiple access subscriber Lmit in accordance with

claim 8, wherein the circuit is further configured to combine the I and Q

pre-spread channels with a complex sequence.

10. A code division multiple access subscriber unit in accordance with

claim 9, wherein the combining is by multiplication.

11. A code division multiple access subscriber unit in accordance with

claim 9, wherein the complex sequence comprises at least two pseudo

noise sequences.

14. A code division multiple access subscriber unit in accordance with

claim 8, wherein pilot bits are included on at least one of the I and the Q

pre-spread channels.

21. A code division multiple access subscriber unit comprising:

circuitry configured to receive a first radio frequency signal and

generate power control bits in response to the first radio frequency

signal; wherein the circuitry is further configured to produce an inphase (I) channel and a quadrature (Q) channel; wherein only one of

the I channel or the Q channel includes the power control bits; wherein

the circuitry is further configured to produce a second radio frequency

signal including an I component and a Q component derived from the I

channel and the Q channel; wherein the circuitry is further configured

to transmit the second radio frequency signal.

22. A code division multiple access subscriber unit in accordance with

claim 21, wherein the circuitry is fl.1I1Il1€I‘configured to combine the I and

Q channels with a complex sequence.

23. A code division multiple access subscriber unit in accordance with

claim 22, wherein the combining is performed by multiplication.

24. A code division multiple access subscriber unit in accordance with

claim 22, wherein the complex sequence comprises at least two pseudo

noise sequences.

27. A code division multiple access subscriber unit in accordance with

claim 21, wherein the circuitry is further configured to generate pilot bits;

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wherein the second radio frequency signal is derived at least in part from

the pilot bits.

JX-0002 at col. 101, lns. 6-22; col. 101, lns. 33-60; col. 102, lns. 4-6; col. 102, lns. 39-63; col.

104, lns. 1-4.

B. Claim Construction

1. Level of Ordinary Skill

A person of ordinary skill in the art in the asserted ‘406 and ‘332 patents would have at

least an undergraduate or postgraduate degree in electrical engineering (or an equivalent subject),

together with at least two years of postgraduate experience in CDMA commtmications, such as

academia or industry, or equivalent training. See CX-l3l0C (Prucnal WS) at Q8425

2. Construction of Disputed Claim Terms

a. “power control bit” (‘406 and ‘332 patents)

, 1i{_C]aim,¢,5,, 9 §;]n'tey])igita1asa;V._E¢. ,1 , ii Q H

power control binary information single-bit power control information transmitted

bit relating to power control at an APC data rate equivalent to the APC update

rate

The term “power control bit” appears in all asserted claims of the ‘406 and ‘332 patents.

See, e.g., JX-0001 (‘406 patent) at col. 14, ln. 58 —col. 15, ln. 8 (claim 1); IX-0002 (‘332 patent)

at col. 101, lns. 6-13 (claim 1).

25Respondents contend that a person of ordinary skill in the art of the ‘406 and ‘332 patents

would have a Ph.D. in electrical engineering or an equivalent degree, with four years of work

experience in the design of wireless communications systems. See Resps. Br. at 168. The

parties have not identified any way in which differences in their proposed definitions of the level

of ordinary skill in the art affect issues in this investigation. See Compls. Br. at 129; Resps. Br.

at 168.

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InterDigital construes this tenn to mean “binary information relating to power control.”

See Compls. Br. at 129-31. Respondents construe this term to mean “single-bit power control

infonnation transmitted at an APCQ6]data rate equivalent to the APC update rate.” See Resps.

Br. at 169-74; Compls. Br. at 129.

As proposed by Respondents, the tenn “power control bit” is construed to mean

“single-bit power control information transmitted at an APC data rate equivalent to the APC

update rate.” This construction is supported by the language of the claims, as well as by the

intrinsic evidence.

Although the specifications of the ‘406 and ‘332 patents do not contain the specific term

“power control bit,” they do describe the way in which the claimed invention conveys power

control, or APC, information:

The APC signal is transmitted as one bit signals on the APC channel. The

one-bit signal represents a command to increase (signal is logic-high) or

decrease (signal is logic-low) the associated transmit power. In the

described embodiment, the 64 kbps APC data stream is not encoded or

interleaved.

JX-0001 (‘406 patent) at col. 6, lns. 47-51.

APC infonnation is always conveyed as a single bit of information, and

the APC Data Rate is equivalent to the APC update rate. The APC update

rate is 64 kb/s.

JX-0001 at col. 9, lns. 46-48; JX-0002 at col. 67, lns. 43-45.

The APC bits are transmitted as one bit up or down signals on the APC

channel.

JX-0002 (‘332 patent) at col. 64, lns. ll-13.

26“APC” is an acronym for “adaptive power control.” See, e.g., JX-0001 at col. 5, lns. 48-50;

JX-0002 at col. 3, lns. 26-28.

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PUBLIC VERSION

Moreover, the flow chart depicted in Figure 4 of the ‘406 patent indicates that “RCS[27]

transmits the APC bit to SUBS]in the forward APC channel,” “SU modem receives the single

APC bit,” and “SU increases or decreases its transmit power according to the APC bit received.”

JX-0001 at Fig. 4. Similarly, Figure 27 of the ‘332 patent teaches that “SU modem hard limits

the combined error signal to form a single APC bit,” “SU transmits the APC bit to RCS in the

reverse APC channel,” and “RCS modem receives the single APC bit.” JX-0,002 at Fig. 27.

Not only do the specifications of the ‘406 and ‘332 patents support Respondents’

proposed construction of “power control bit,” but their proposed construction is also consistent

with the language of the claims. For example, claim 1 of the ‘406 patent, from which asserted

claim 6 depends, requires that the claimed invention adjust the transmission power of the mobile

device “in response to the received power control bit.” JX-0001 at col. 14, ll]. 58 —col. l5, ln. 8

(emphasis added). Further, claim 7 of the ‘406 patent, from which asserted claim 13 depends,

claims a method in which a subscriber unit receives “a series of power control bits on a down

link channel, each power control bit indicating either an increase or decrease in transmission

power level.” JX-0001 at col. 15, lns. 28-45.

Accordingly, the claims and specifications of the ‘406 and ‘332 patents make clear that

the claimed “power control bit” comprises a single bit of power control information, and that this

single bit is transmitted at an APC data rate equivalent to the APC update rate.

InterDigital argues that Respondents’ proposed construction for “power control bit”

improperly imports limitations from the specifications of the ‘406 and ‘332 patents, and that

InterDigital’s proposed construction should be adopted instead. See Compls. Br. at 129. It is

27“RCS” is an acronym for “radio carrier station.” JX-0001 at col. 3, lns. 48-51.

2*“su” is an acronym for “subscriber unit.” JX-0001 at COl.3, lns. 46-47.

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PUBLIC VERSION

argued, inter alia, that InterDigital’s proposed construction represents the plain and ordinary

meaning of “power control bit” as understood by a person of ordinary skill in the art, and that

“even Respondents’ expert (Dr. Williams) agreed that a bit ‘is simply a representation of a piece

of information that has two states.’” Id. at 129-30 (citing Williams Tr. 1204). It is further

argued that Respondents’ reliance on portions of the specifications (quoted above) to support

their proposed construction is improper, inasmuch as the portions “never even [use] the tenn

power control bit or power control bit ‘means.”’ Id. at 130. InterDigital’s argmnents are not

persuasive, however.

InterDigital’s proposed construction seeks to construe the tenn “bit” to include any type

of binary information, even when that information is not a “bit.” InterDigital therefore argues

that “a single bit of information is not limited to a single bit,” but does not explain why the

express language in the claim term “power control bit” should be rewritten to include power

control infomiation that is not in the form of a bit. See Compls. Br. at 131. Moreover, even

though Respondents’ expert Dr. Williams did state that a bit is “a representation of a piece of

information that has two states,” the fact that a bit can represent binary information does not

mean that any representation of binary infonnation comprises a bit. See id. at 130.

Accordingly, the term “power control bit” from the asserted ‘406 and ‘332 patents is

construed to mean “single-bit power control information transmitted at an APC data rate

equivalent to the APC update rate.”

b. “. . . separately adjusting . . .” (‘406 patent)

7 .Clai1nTerm/Phraseff Q InterDigitial’»siC0nstructi0n g ceiResp0ndents?fi&.

Qqly l . ” W R . Construction” c

in response to the received adjusting a transmission power separately adjusting the

power control bit, adjusting a level of both the traffic channel transmission power level

transmission power level of both and the reverse control in of both the traffic channel

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PUBLIC VERSION

the traffic channel and the response to the received power and the reverse control

reverse control channel, control bit and separately channel in response to the

separately adjusting the adjusting the transmission power received power control

transmission power level of the level of the traffic channel and bit

traffic channel and the reverse the reverse control channel

control channel

Asserted claim 29 of the ‘406 patent includes the following two paragraphs:

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

separately adjusting the transmission power level of the traffic channel and

the reverse control channel;

See JX-0001 at col. l7, lns. 5-22.

InterDigital construes the “adjusting” and “separately adjusting” limitations of these

paragraphs to mean “adjusting a transmission power level of both the traffic channel and the

reverse control in response to the received power control bit and separately adjusting the

transmission power level of the traffic channel and the reverse control channel.” See Compls.

Br. at 132-35. Respondents take the position that these limitations should be construed to mean

“separately adjusting the transmission power level of both the traffic channel and the reverse

control channel in response to the received power control bit.” Resps. Br. at 174-78. The

dispute between the parties centers on whether the phrase “in response to” modifies “separately

adjusting” as well as “adjusting.”

As proposed by InterDigital, the claim term “in response to the received power control

bit, adjusting a transmission power level of both the traffic charmel and the reverse control

channel, separately adjusting the transmission power level of the traffic channel and the reverse

control channel” is construed to mean “adjusting a transmission power level of both the traffic

channel and the reverse control in response to the received power control bit and separately

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PUBLIC VERSION

adjusting the transmission power level of the traffic channel and the reverse control channel.”

This construction is supported by the language of the claim itself, as well as by the intrinsic

evidence.

The contested portions of claim 29 comprise two paragraphs: the first requires “in

response to the received power control bit, adjusting a transmission power level of both the

traffic channel and the reverse control channel,” and the second requires “separately adjusting

the transmission power level of the traffic channel and the reverse control channel.” JX-0001 at

col. 17, lns. 15-19. These two paragraphs are separated by a comma, line break, and first line

indent, signifying that the two paragraphs describe separate limitations. See id Accordingly, “in

response to,” which is located in the first paragraph, does not modify “separately adjusting,”

which is located in the second paragraph. Moreover, in the event that “in response to” were read

to modify “separately adjusting,” the “adjusting” step would be rendered superfluous, inasmuch

as requiring both adjustment and separate adjustment in response to the received power control

bit is the same as requiring only the latter. As stated by the Federal Circuit, “claims are

interpreted with an eye toward giving effect to all terms in the claim.” Cat Tech LLC v.

TubeMaster, Ina, 528 F.3d 871, 885 (Fed. Cir. 2008) (citation omitted).

InterDigital’s proposed construction is also consistent with the preferred embodiments of

the ‘406 patent described in the specification. In particular, Figure SB of the ‘406 patent shows

that the reverse traffic and control channels are separately adjusted by amplifiers 555 and 552,

respectively. JX-OOO1at col. 12, lns. 15-20. These channels are then combined by adder 556

and input to variable gain amplifier (“VGA”) 554. Id The VGA adjusts the transmission power

level of the combined signal, i.e., the transmission power level of the reverse traffic and control

channels, in response to the received power control bit based on the output of integrator 543. Id.

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PUBLIC VERSION

at col. ll, lns. 45-49; col. 12, lns. 19-21. By contrast, Respondents’ proposed construction does

not cover this embodiment of the ‘406 invention, and Respondents do not contend otherwise.

See Resps. Br. at 174-78; Resps. Reply at 64-68.

In opposition to InterDigital’s proposed construction, Respondents argue that “[g]iven the

[‘406] patent’s exclusive focus on closed loop power control, one of ordinary skill in the art

would understand that the claimed separate adjustment of the transmission power level of the

traffic channel and the reverse control channel would necessarily be in response to the received

power control bit because responding to such feedback is what distinguishes closed loop power

control from open loop power control.” Resps. Br. at 175. Respondents do not provide,

however, any factual or legal basis for construing claim limitations based on the “exclusive

focus” of a patent. See id.

Respondents also argue that the prosecution history of the ‘406 patent weighs in favor of

adopting their proposed construction rather than InterDigital’s proposed construction, inasmuch

as “the examiner initially allowed the claims on the basis that the prior art did not show ‘in

response to the received power control bit, adjusting a transmission power level of both the

traffic channel and the reverse control channel, wherein the power level of the traffic channel and

the reverse control channel are separately adjusted.” Resps. Br. at 175-76 (citing JX-0008 (‘406

file history) at IDC-ITC-0163 82366-71) (emphasis omitted). A reading of the prosecution

history, however, shows that Respondents’ argument is not persuasive.

On January 29, 2007, the applicants amended original claim 15 of the application for the

‘406 patent as follows:

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

wherein the power level of the traffic channel and the reverse control

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PUBLIC VERSION

channel are separately adjusted

;

JX-0008 (‘406 file history) at IDC-ITC-0163 82354. In the remarks accompanying this

amendment, the applicants stated, “With respect to the new language, separate adjustment of the

channels is supported, such as by, Figure 5b elements 552-555.” JX-0008 at

IDC-ITC-0163 82352. The examiner allowed the amended claim in April 2007, stating as

follows:

The present invention relates to method and apparatus for power

controlling in the reversed channel. Particularly, prior art of record, taking

individually or collectively, fails to fairly teach such method and

apparatus, including “in response to the received power control bit,

adjusting a transmission power level of both the traffic channel and the

reverse control channel, wherein the power level of the traffic channel and

the reverse control channel are separately adjusted”, as claimed in

independent claim 15 . . . .

Id. at IDC-ITC-0163 82370. Neither the applicants nor the examiner indicated that the claim

element required separate adjustment to the traffic channel and the reverse control channel in

response to the received power control bit.

After the allowance described above, but before the ‘406 patent issued, the applicants

amended the pending claims. First, the “separately adjusted” language was removed from

pending claim l5, which was later renumbered as issued claim l. JX-0008 at

IDC-ITC-0163 83499. Second, new claim 29 was added, and included the two paragraphs at

issue in this claim construction dispute. Id. at IDC-ITC-016383505. The examiner allowed

these claims in Januaiy 2008, again without indicating that the claims required separate

adjustment to the traffic channel and the reverse control channel in response to the received

power control bit. Id. at IDC-ITC-016385109.

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PUBLIC VERSION

Accordingly, the claim term “in response to the received power control bit, adjusting a

transmission power level of both the traffic channel and the reverse control channel, separately

adjusting the transmission power level of the traffic channel and the reverse control chamuel”is

construed to mean “adjusting a transmission power level of both the traffic channel and the

reverse control in response to the received power control bit and separately adjusting the

transmission power level of the traffic channel and the reverse control channel.”

c. “in response to . . . wherein the transmission power level of the

traffic channel and the reverse control channel are different”

* Y> ‘ Q ‘ ‘~._i&;1~{&,1,") 51:511c¢,n;¢r11¢11¢,,,~g; ft; » ~ 1, V ‘*1 1

(‘406 patent)

in response to . . . wherein the These claims do not These limitations require setting

transmission power level of require different different transmission power

the traffic channel and the transmission power levels levels for the traffic channel and

reverse control channel are in response to the received the reverse control channel in

different (claims 6, 13, 20, 26) power control bit. response to the received power

control bit(s).

The independent claims from which asserted claims 6, 13, 20, and 26 of the ‘406 patent

depend include limitations specifying that “the transmission power level of the traffic channel

and the reverse control channel are different.” The relevant claim limitations are as follows:

Claim 1 (from which claim 6 depends)_:

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

wherein the transmission power level of the traffic channel and the

reverse control channel are different;

Claim 7 (from which claim 13 depends):

adjusting a transmission power level of both the traffic channel and the

reverse control channel in response to the same bits in the received

series of power control bits, wherein the transmission power level of

the traffic channel and the reverse control channel are different;

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PUBLIC VERSION

Claim 15 (from which claim 20 depends);

gain devices configured, in response to the received power control bit,

to adjust a transmission power level of both a traffic channel and a

reverse control channel prior to transmission by the subscriber unit,

wherein the transmission power level of the traffic channel and the

reverse control channel are different.

Claim 21 (from which claim 26 depends):

gain devices configured, in response to the received series of power

control bits, to adjust a transmission power level of both a traffic

channel and a reverse control channel in response to same bits in the

received series of power control bits prior to transmission by the

subscriber unit, wherein the transmission power level of the traffic

channel and the reverse control channel are different.

See JX-0001 at col. 14, ln. 58 —col. 15, ln. 8; col. 15, lns. 28-45; col. 16, lns. 4-16; col. 16, lns.

34-48.

The parties dispute whether the difference in the transmission power level of the traffic

and control channels must be “in response to” the claimed power control bits. InterDigital takes

the position that “[the] claims do not require different transmission power levels in response to

the received power control bit.” See Compls. Br. at 136-37 (emphasis original). Respondents

take the position that “these limitations require setting dijfierenttransmission power levels for the

traffic channel and the reverse control channel in response to the received power control bit(s).”

See Resps. Br. at 178-80 (emphasis original).

The parties’ arguments with respect to these disputed limitations mirror their arguments

with respect to the “. . . separately adjusting . . .” limitation discussed above. See Compls. Br. at

136-37; Resps. Br. at 178-80. Accordingly, for the same reasons set forth in the section

discussing the “. . . separately adjusting . . .” limitation, these disputed limitations are construed

in accordance with InterDigital’s proposed construction, i.e., they do not require different

transmission power levels in response to the received power control bit(s).

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PUBLIC VERSION

d. “gain devices configured . . . to adjust a transmission power

level of both a traffic channel and a reverse control channel

(‘406 patent)

13;” 1 Construcfionlj,j.,;'3;.V I Claim TermiPhrase } InterDigital’s 1 Respondents’ Construction

gain devices configured . . . to These claims do not

adjust a transmission power require that the

level of both a traffic channel transmission power these limitations require setting

and a reverse control channel levels be adjusted

(claims 20 26) separately.

channel separately.

Claims 15 and 21 of the ‘406 patent, from which asserted claims 20 and 26 depend, recite

the following limitations:

Claim 15 (from which claim 20 depends);

gain devices configured, in response to the received power control bit,

to adjust a transmission power level of both a traffic chamiel and a

reverse control channel . . .

Claim 21 (from which claim 26 depends):

gain devices configured, in response to the received series of power

control bits, to adjust a transmission power level of both a traffic

channel and a reverse control channel . . .

See JX-0001 at col. 16, lns. 4-16; col. 16, lns. 34-48.

With respect to these limitations, lnterDigital argues:

Claims 20 and 26 do not require that the gain devices adjust the

transmission power level of the reverse traffic and control channels

individually in response to one or more received power control bits.

Respondents incorrectly import the word ‘individually’ into the claims.

But nothing in the claims requires the gain devices to adjust the

transmission power level of the channels individually. To the contrary the

claims say ‘gain devices configured, in response to the received [series oi]

power control bit[s], to adjust a transmission power level of both a traffic

channel and a reverse control channel.’”

Compls Br at 138.

110

To the extent the parties dispute the

construction of these limitations,

transmission power levels for the

traffic channel and the reverse control
PUBLIC VERSION

Respondents disagree that these limitations need construction: “Neither party has

proposed a construction of ‘gain devices’, and to the extent the parties dispute the meaning of the

‘gain devices’ limitations as they relate to Respondents’ non-infringement arguments, the dispute

is fully addressed above as part of the ‘in response to’ limitations.” Resps. Br. at 180.

Inasmuch as the parties’ arguments with respect to these limitations mirror their

arguments with respect to the “. . . separately adjusting . . .” and “in response to . . .” limitations

discussed above, these disputed limitations are construed in accordance with InterDigita1’s

proposed construction, i.e., they do not require that the transmission power levels of the traffic

and control channels be adjusted separately.

C. Infringement

1. The ‘406 and ‘332 Accused Products

InterDigital argues that all accused products in this investigation infringe asserted claims

of the ‘406 and ‘332 patents. See Compls. Br. at 139-41. The accused products can be divided

into two groups based on the 3G standard they support, i.e., WCDMA or CDMA2000. See id. at

139. InterDigital accuses the WCDMA products of infringing claims 13 and 26 of the ‘406

patent, and accuses the CDMA2000 products of infringing claims 6, 20, and 29 of the ‘406

patent. Id. InterDigital further accuses all products of infringing claims 2-4, 7-11, 14, 22-24,

and 27 of the ‘332 patent. Id. V

The accused WCDMA products comply with technical specifications set forth by the

Third Generation Partnership Project (“3GPP”), and include Qualcomm-based WCDMA

products, Huawei HiSilicon products, Nokia RapuYama products, Nokia Rapido Yawe Products,

and Nokia R.AP3G products. See Cornpls. Br. at 139 (citing CX-1310C (Prucnal WS) at Q450

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PUBLIC VERSION

(RapuYama), Q763 (RapidoYawe), Q1083 (RAP3G), Q1400, Q1645, Q1655 (Qualcomm),

Q1672 (HiSilic0n)).

The specific model numbers of the Nokia WCDMA products accused of infringing the

‘406 and ‘332 patents are as follows: Vertu (RM-3 89V), Vertu (RM-582V), 6350 (RM-455), C5­

03 (RM-697; RM-719), C5-04 (RM-720), E6 (RM-609), 500 (RM-750; RM-751), C6-01 (RM601; RM-718), 701 (RM-774), n9-00 (RM~696; RM-716), X3-02 (RM-639), E73 (RM-658), C3­

01 (RM-640), N900 (RX-51), E72 (RM-515; RM-529; RM-530), Vertu (RM-681V), X7-00

(RM-659; RM-707), E7 (RM-626; RM-664), Astound C7 (RM-675), Astound C7 (RM-691),

Vertu (RM-589V), N8 (RM-596), E5 (RM-634), 700 (RM-670), 6700 Slide (RM-577), Pureview

808 (RM-807), X6 (RM-559; RM-551), N97 (RM-505; RM-507), 6790 Slide (RM-492), 6790

Slide (RM-599), E71 (RM-346; RM-357), N97 mini (RM-555; RM-553), 5230 (RM-594), 5230

(RM-593), E63-2 (RM-437; RM-449), C6-00 (RM-624; RM-612), C2-01 (RM-721; RM-722),

Vertu (RM-266V), 2730 (RM-579; RM-578), 710 Lumia (RM-809), 800 Lumia (RM-801; RM819), 900 Lumia (RM-808; RM-823), 7230 (RM-598), 3710 (RM-509; RM-510), Lumia 810

(RM-878), Lumia 820 (RM-824), Lurnia 822 (RM-845), Lumia 920 (RM-820), and Booklet 3G

(RX-75). Compls. Br. at 139-40 (citing CX-1310C (Prucnal WS) at Q15-16).

The specific model numbers of the WCDMA Huawei products accused of infringing the

‘406 and ‘332 patents are as follows: U9000, U9000-81 (IDEOS X6, Ascend X), Elom, MU509,

U2800A, U3200, U3200-9, M865, E366, E368, EMSZOU,EM82OW, B683, EM770U,

EM770W, Ernie (UMTS), B890-66, G0bi3000, (UMTS), E392, MediaPAD (S7-303u),

MediaPAD (S7-Pro), U8800, U8800-51, UMG587 (E587u-5), U8680 (MyTouch), U8730

(U8730+), U8651T (Prism), U8652 (Fusion), Ascend Y200 (U8655), Ascend Y201 (U8666),

Y2l0 (U8686), U8500, U8500-3, W1 (U8835), MediaPad 10 FHD (S10-l02u), S7 (S7-104), S7­

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PUBLIC VERSION

Slim (S7-202U), MediaPad 7 Lite (S7-932u), U8651s (Summit), and the U8665 (Fiji). Compls.

Br. at 140 (citing CX-1310C (Prucnal WS) at Q20-21).

The specific model numbers of the WCDMA ZTE products accused of infringing the

‘406 and ‘332 patents are as follows: AC30 (Fivespot), F160 (P622F2), F555/P671A91

(Wombat), MF683, P671B30 (Z331) (Morgan), P671B40 (Z221) (Michael), P736T (Avail),

Z431 (Spider), WF720, MF61 (4G Hotspot), and Z990 (Merit). Compls. Br. at 140 (citing

CX-1310C (Prucnal WS) at Q25-26).

The accused CDMA2000 products comply with technical specifications set forth by the

Third Generation Partnership Project 2 (“3GPP2”), and all include Qualcomm baseband and

radio frequency (“RF”) chips. See Compls. Br. at 140 (citing CX-1310C (Prucnal WS) at

Q2240, Q2510).

The specific model numbers of the CDMA2000 Nokia products accused of infringing the

‘406 and ‘332 patents are as follows: 7705 Twist (RM-526), Lumia 719 (RM-817), and Lumia

800C (RM-802). Compls. Br. at 141 (citing CX-1310C (Prucnal WS) at Q15-16).

The specific model numbers of the CDMA2000 Huawei products accused of infringing

the ‘406 and ‘332 patents are as follows: M865, M920 (Huawei Activa), M650 (Express), M660,

Y210 (C8686), MediaPA_D(S7-303u), MediaPAD (S7-Pro), E397u-53, E397Bu-502, C6070

(M615; Pillar), C6071 (M635), F256, F259, FT2260 (Verizon HomePhoneConnect), M735,

EC5072, EC5805, M886 (C8860), ECl705, EM660, MC509, MC323, Ernie (CDMA), Gobi3000

(CDMA), F253, M835, M931 (sunshine), and Y300C. Compls. Br. at 140-41 (citing CX-1310C

(Prucnal WS) at Q20-21).

The specific model nmnbers of the CDMA2000 ZTE products accused of infringing the

‘406 and ‘332 patents are as follows: A210 (CAPTR II), A310 (MSGM8 II), A410 (TXTM8

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3G), A415 (Memo), A605, AC30 (Fivespot), AC3781 (Cradlepoint), D930 (Chorus), EuFi890

(Jetpack EuFi890), F350 (Salute), F450 (Adamant), MC2261 (Wombat), MC2718 (Wombat),

N850 (Fury), N859 (Render (a.ka“Tania”)), N860 (Warp), N910 (Anthem (LTE)), V55 (Optik),

X500 (Score (aka “Score M”)), N861 (Warp II), V66 (Turbine 7.0), V8000 (Engage), N9500

(Flash), and X501 (Groove). Compls. Br. at 141 (citing CX-1310C (Prucnal WS) at Q25-26).

2. Operation of the WCDMA Products

[

]. See CX-0023 (3GPP TS 25.213) at § 3.2; CX-0234 (3GPP TS 25.214) at § 5.1.2.1

([“

”])- 1

].” CX-0327 (3GPP TR 21.801) at § 3.1,

Annex E.

[

]. CX-0232 (3GPP TS 25.211) at §§ 5.2.1, 5.3.2; Bims Tr. at 1295;

RX-3998C (Bims WS) at Ql02-105, 109, Q112-114. [

]. CX-0232 (3GPP TS 25.211) at § 5.3.2. Any channel transmitted by

subscriber units is an uplink channel. Id. at § 5.2.1. [

1

114
PUBLIC VERSION

rm

um‘-3" .\*.,.an, * mvtu ,4 Qmgg xnvccu: ‘ Ad’ ;

L Dena! ‘ ‘rrc I rm um: mu m<~2§w<m»~.>=.....--~u~2*w»w~<>-.6»

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pawn 9; Fm-M Qifflfllufgfgf flqwn|§|)|(mm}; Figure4:Prune structure for uplinkowucwuwcca

Id. at §§ 5.3.2, 5.2.1. [

]. Id. at §§ 3.2, 5.3.2. [

]:

Table 13:TPC Bit Pattern

TPC BitPattern Transmitter power

N1-PC= 2 ‘ N1-pc = 4 ' N».-PC= 3 control command

11 111‘! 11111111

00 D005 130000000

Id. at § 5.3.2. [

1.

cx-0234 (3GPP TS 25.214) at §§ 5.1.22.1-.3. [

]. la’.at§5.1.2.2.2. [

]. Id. at § 5.1.22.3.

115
PUBLIC VERSION

[

1. Id. at §§ 5.1.22.1, 5.12.5.1.

1. Id.

[

mar

1'>vr>u1} gm W,

4 _ L Mi‘ y 13,, - 3S64J¢hsp-s. M“, ~<I0 I54b;1zu$M2..&)

mu rm rs: I rvr “Wm J raw an I R:x<‘1<has i Nm bi» >1111»M» v 5 4'

75,. 1 ‘$60c§1&p~;.I0 bin

]. Id. at § 5.2.1.2.1

Table 5: TPC Bit Pattern

WU W» TPC Bl! Panem Transmitter power

< mm I J mm‘ ‘ '" > Nwc = 1 NW; = 2 control command - 2

1 1 1 1

Figurci Framestructure foruplinkll ' : PUCNIDPCCH 0 O6 6

cx-0232 (3GPP TS 25.211) at § 5.2.1 (NTPC = 2). [

116

]:
PUBLIC VERSION

cm 50

DPQCH 1 ‘ ~4¢»_.:>_.1­

DPDCH, ‘Cg

DPOCHa ix é 8*”

=4. as €_>__..(>g.__-"’° H$-OPCCH 1 S

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1

Q2 Ba

090014: é % 1 ><

<¢.~ 5:

mow‘ ,1’ ,1 1 X X 1

Q 5

‘FM $4 Z X“ ­

DPDCH5

-—-H%}--—~>(X 5---r

:4 11. *

OPCCH f %

11>‘ 331­

HS-DPCCH % §

i‘9G,'*¢ 11 ZPI‘

Figuro 1: 8prndinq for upilnk DPCCH,DPDCHa.and H5-DPCCH

cx-0023 (3GPP Ts 25.213) at § 4.2.1. 1

1. 1d.at§§4.1

4.2.1. 1

1. Id.

[

1. cx-0023 (3GPP TS 25.213) at §§ 4.1, 4.2.1; see

RX-35290 (Williams ws) at Q100. 1

1. Id. at § 4.2.1; CX-0232 (3GPP TS 25.211) at §s.3.2. 1

117
l

25.213)

PUBLIC VERSION

1. cx-0234 (3GPP TS 25.214) at §§ 5.1.2.1, 5.1.2.5.

1. cx-0234 (3GPP TS 25.214) at §§ 5.1.2.1, 5.1.2.5.

[

at§§ 4.1,4.2.1,4.3.2. [

] Id. at§§ 4.2.1,4.4.2. [

]. CX-0023 (3GPP TS

] Id. at §§ 4.1, 4.2.1; see RX-3994C (Williams RWS) at Q68-69. [

] CX-0023 (3GPP TS 25.213) at §§ 4.1, 4.2.1; see RX-3994C (Williams RWS) at

Q68-69.

l

]

0os(efl)

Complex-valued Split shaping M’ 5*

chipsequence S real 8- Q

from spreading imag. P s

operations parts 6

Figure 7: Uplink modulation

1 18

-$in(c¢-K)
PUBLIC VERSION

CX-0023 (3GPP TS 25.213) at § 4.4.2. [

] See CX-1310C (Prucnal WS) at Q292.

[

] See CX-1310C

(Prucnal WS) at Q2517-2522; CX-1068C (Supp. Ex. A to Nokia’s Resp. to InterDigita1’s lst

Interrogs.); CX-1112C (Ex. C to Huawei Supp. Resp. to InterDigita1’s 1st Interr0gs.); CX-1138C

(Corrected Ex. A to ZTE’s Amended Supp. Resp. to InterDigital’s 1st Interr0gs.); CX-0101

(3GPP TS 34.121-1) at §§ 5.4.2, 7.8. [

]

3. Operation of the CDMA2000Products

[

1 See cx-0017

(3GPP2 c.s0002) at §§ 1.1, 2.1.2.3 1 1

[

] Id. at x1.

[

1 CX-0017 (3GPP2 c.s0002) at § 1.1. [

]1d.at§1.1. [

1

119
PUBLIC VERSION

[

(3GPP2 c.s00o2) at § 1.1 [

1 [

]

Id. at§3.l.3.1.10. [

§ 2.1.23.2 (Closed Loop Output Power). [

Ia’. at § 2.1.2.3.1.5. [

]

1 Id. at § 2.1.2.3.3.2. [

] CX-0017

] Id. at
PUBLIC VERSION

1

Id. at § 2.1.2.3.3.2. [

cx-1310c (Prucnalws) at Q2056. [

] Id.

[

1 cx-0017 (3GPP2 c.s0002) at §§ 1.1,2.1.3.1.10[

114. at§2.l.3.1.10[

]

121

] See, e.g.
PUBLIC VERSION

Not

(ail 17$}

Power Comnol

Bi!

B-ILL‘

a Power @PM ­

am ms Chips “>1; -Q--~

. XPaves" Camrei Gnmp

;”‘"“‘ - was =<:4PMchi,»

Nin nu $pumi£ng Rm: number

Figure 2.1.3.1. 10.1-1. Reverse Pilot Channel Showing the Power ContxolSubchannel

Structure

Id. atfig.2.1.3.1.10.1-1,§§2.1.3.1.10.1,2.1.3.2.2. [

]

122
PUBLIC VERSION

1+§--}0t{+§-~. -**l Gomgimcfluldptits

Wakh Cum‘

Rtwfle A mMw§ ““m,“

._.---.-+

Revezsa ‘

v

Piint chmnai

RC9-'B1'$Q A

Duiimneé a “iii” Conrad ¢ka.m¢1

Walsh®\‘!f I-C‘luz@i

pa-+4 I“

M98250

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Ciqazmd

Wa£snCvm X

“I "V‘§§\§-¢—~4\"§‘§'§—--—~; *

Supfluflmtfl

Cinxmel 1, Hearse Raimiw

C0::monC4zm'o£ Quiz: c=~m¢x.~:-mama i____

Locus: Chnnzci

Q-Cluanel

Waisb Cam" Daw

~+++_-___..--5

Reiafiw

Quiz:

4+

1*"T°fK*‘*"*l hflmam Chmd1

[++--++--1

ierfirnxaéomasozscazwolclunad

a:v.tEahmwa1Awccs:Chmnd

2-Chflnnni

PMSequeace.

owe lamgfindz 5°’! Gmcnmor

“"* (L223EMcp6)

Dacimakor

hyhawr

01'? ­

WFilm: ‘

mgatca

4

1'

I

*ifli2¥f,li

y‘ WalshOov¢1 4- @<--1 We .

i1Bp|a:yd§:nz9:4m9:usgmedmm:1xa1\xu M!1:0Ie1na;q:av:g4i§m"0‘m4-lF01"1‘

Ummdchmndsudwhdwfiqmbohm

aprcsexvadwémnsnvfimu

:2.WBm&se1b:ve¢:sQcmmnnCnnswiC!m:netce

En!1ap|:ed$.wessC_l1-uzneinwemtneonty adchaammlchan-xnnhsth:aMvua:Ps‘lc:C&m:::vcl. &MMm_ opufim:man

’:‘ Pgmmm M\i%CY@Zfi¢$L23Z%)(q&

1-my

Brainy

Figure 2.1.3.1.1.1-10. ! and Q Mapping for Reverse Pilot Channel, Enhanced Access

Channel, Reverse Common Control Channel, and Reverse Traffic Channel

with Radia Cnnfiguzationa 3 and 4

Id. at fig.2.1.3.1.l.1-10. [

[

] Id atfig.2.1.3.1.l.l-10. [

fig.2.1.3.1.l.l-10.

] Id. at fig.2.1.3.1.1 1-10

] Id at

123
PUBLIC VERSION

[

] See RX-3529C (Williams WS) at Q100, Q109. [

] See RX-3994C (Williams RWS) at

Q75; CX-0017 (3GPP2 C.SOO02)at § 2.l.3.1.1O, fig.2.1.3.1.l.1-10. [

] See, e.g., CX-1310C (Prucnal WS) at Q2059-2061, Q2124-2127 (discussing, e.g.,

CX-0017 (3GPP2 C.SO0O2)at §§ 2.12.3, figs.2.1.3.1.l.1-10, 2.1.3.l.1.2-7).

[

] CX-0017 (3GPP2 C.S0O02) at fig. 2.1.3.1.l.1-10. [

]Id. at

fig.2.1 3.1.1.1-10; S66RX-3529C (Williams WS) at Q100, Q109. [

] See RX-3994C (Williams RWS) at Q75-76;

CX-0017 (3GPP2 C.S0OO2)at fig.2.l.3.1.1.l-10. [

at Q75-76; CX-0017 (SGPPZC.S0002) at fig.2.l.3.l.1.1-10.

[

124

1 See RX-3994C (Williams RWS)
PUBLIC VERSION

1 See, e.g.,CX-1310C (Pmcnal ws) at Q2056. [

] CX-0017 (3GPP2 CSOOO2)at §§ 2.l.2.3.l.5, 2.l.2.3.3.2. [

] See CX-1310C (Prucnal

WS) at Q2140-2142.

[

] CX-1310C

(Prucnal WS) at Q2517-2520, Q2523-2524; CX-1068C (Supp. Ex. A to Nokia’s Resp. to

InterDigital‘s 1st Interrogs.); CX-1112C (Huawei Supp. Resp. to InterDigital’s lst Interrogs);

CX-1138C (ZTE’s Amended Supp. Resp. to lnterDigital’s lst Interrogs.); CX-0018C (3GPP2

C.S00ll-B) at §§ 3.4.4, 3.4.5, 3.4.7, 3.4.9, 4.4.4. [

]

4. Global Infringement Issues

In their infringement analyses, the parties address several issues that apply to multiple

claims and/or both the ‘406 and ‘332 patents. These global issues will be addressed first,

followed by a claim-by-claim infringement analysis.

a. The “power control bit” (‘406 and ‘332 Patents) Limitations

All the asserted claims of the ‘406 patent require receiving a “power control bit”

“indicating either an increase or decrease in transmission power level.” See, e.g., JX-0001 (‘406

125
PUBLIC VERSION

patent) at col. 14, ln. 58 —col. 15, ln. 8 (claim 1). All the asserted claims of the ‘332 patent

require the generation of “power control bits” by the subscriber unit. See, e.g., JX-0002 (‘332

patent) at col. 101, lns. 6-13. As explained above, the term “power control bit” is construed to

mean “single-bit power control information transmitted at an APC data rate equivalent to the

APC update rate.” Applying this adopted construction,[

See

RX-3 994C (

RX-3 994C see RX-3531

] Goldberg Tr. 249.

[

126
PUBLIC VERSION

1 Id. 318-320.”

[

1 See cx-0017

(3GPP2 csoooz) § 2.1.3.1.10.1. [

] See Prucnal Tr. 320; RX-3994C (Williams RWS) at Q24-25;

CX-0017 (3GPP2 C.SO002) § 3.1.3.1.10. [

] See RX-3994C (Williams RWS) at

Q21O-213, Q216.

Inasmuch as power is not adjusted more than once every two bits in WCDMA and

CDMAZOOOcompliant devices, “each power control bit” does not “indicat[e] either an increase

or decrease in transmission power level,” as required by the adopted claim construction.

RX-3994C (Williams RWS) at Q14, Q19, Q23-25.

In addition, [

] Prucnal Tr. 320-321; RX-3994C (Williams RWS)

29The TPC Bit Pattern transmitted by WCDMA-compliant handsets to the base station also

includes two bits. See CX-1310C (Prucnal WS) at Q189; Prucnal Tr. 319.

127
PUBLIC VERSION

at Q11, Q15-17, Q20, Q22, Q25-27; see RX-3531 (3GPP TS 25.211) at Fig. 13; CX-0017

(BGPP2 C.S0002) § 3.1.3.1.10.

InterDigital argues that the accused devices satisfy the “power control bit” limitations of

the asserted ‘406 claims even tmder the adopted construction proposed by Respondents. See

Compls. Br. at 157-58. The evidence adduced by InterDigital, however, [ ‘

] Accordingly, it is determined that InterDigital has not met its burden to show that

the “power control bit” limitations are satisfied, as that term is properly construed.

InterDigita1further argues that the WCDMA products “at a minimum practice this

limitation under the doctrine of equivalents because [

] Compls. Br. at 158. It is argued that [

] Id.

InterDigital’s doctrine of equivalents argument is not persuasive, however, inasmuch as

InterDigital disavowed multi-bit power control commands, [

] in both the ‘406 and ‘332 specifications by stating “APC information is always

conveyed as a single bit of information.” See JX-0002 (‘332 patent) at col. 67, lns. 43-45

(emphasis added). Given the clear disavowal of “power control bit,” InterDigita.lis precluded

from extending the ‘332 and ‘406 patent claims to capture [

1

12s
PUBLIC VERSION

Furthermore, the evidence demonstrates that the differences between the claims of the

‘332 and ‘406 patents and the accused products are substantial. One of the main goals for both

the ‘332 and ‘406 patents was to maximize the speed at which the system could update power in

response to power control requests. RX-3529C (Williams WS) at Q131, Q546. The claims for

both patents thus disclose using single-bit power control commands that allow for rapid

adjustment of transmission power and minimize the required bandwidth overhead for

transmitting the power control commands. Id. By contrast, [

1 RX-3994C (Williams RWS) at Q554-546. [

] Id.

Therefore, InterDigital has not shown that the accused products satisfy the “power

control bit” limitation under the doctrine of equivalents.

Analysis under alternate claim constructions.

In the event that InterDigital’s proposed construction of “power control bit,” i.e., “binary

information relating to power control” were adopted, the record evidence demonstrates that the

accused products would satisfy this claim limitation of the ‘406 patent.

[

] See, e.g., CX-1310C (Prucnal WS) at

129
PUBLIC VERSION

Q2045-2050 (standard), Q2256-2266 (Qualcomm); CX-0017 (sort->2 c.s0002) at § 3.1.3.110.

[

] See, e.g., CX-1310C (Prucnal WS) at Q132-145, Q163 (standard),

Q484-488 (RapuYama), Q79O-792 (RapidoYawe), Q1107-1109 (RAP3G), [

] CX-1307C (Goldberg WS) at Q212

(RAP3G/RapidoYawe/RapuYama), [ ] CX-0232 (BGPP

TS 25.211) at § 5.3.2; CX-0234 (3GPP TS 25.214) at §§ 5.1.2.2.1 —.3.

Therefore, it is determined that the accused WCDMA and CDMA2000 products would

satisfy these claim limitations under InterDigital’s proposed construction.

b. The “in response to . . . wherein the transmission power level of

the traffic channel and the reverse control channel are

different” (‘406 Patent) Limitations

The independent claims from which asserted claims 6, 13, 20, and 26 of the ‘406 patent

depend contain the limitation “in response to . . . wherein the transmission power level of the

traffic channel and the reverse control channel are different.” As discussed above, this limitation

is construed to mean that the different transmission power levels of the traffic channel and

reverse control channel do not have to be in response to the received power control bit(s).

Under this adopted construction, the WCDMA and CDMAZOOOproducts satisfy this

claim limitation. [

] See, e.g., CX-1310C (Prucnal WS) at

Q146-152; CX-0232 (3GPP TS 25.211) at § 5.2.1; RX-3994C (Williams RWS) at Q28. [

130
PUBLIC VERSION

] See, e.g., CX-1310C (Prucnal WS) at Q2116-21 18; CX-0017

(BGPP2 C.S0002) at §§ 2.1.3.l.1, 2.1.3.1.10; RX-3994C (Williams RWS) at Q28.

[

] See Resps. Br.

at 186; RX-3994C (Williams RWS) at Q28 [

1 cx-1310c (Prucnal WS) at Q166-185 (WCDMA), Q2059-2064

(CDMA2000); cx-0023 (3GPP rs 25.213) at § 4.2.1; CX-0017 (3GPP2 c.s0002) at

fig.2.1.3.l.1.1-10. [

] CX-0234 (3GPP TS 25.214) at § 5.1.25.1; CX-0017 (3GPP2 C.S0002) at

§§ 2.1.2.3.1.5,2.1.2.3.3.2. [

l

Accordingly, it is determined that the WCDMA Products practice this limitation because

[ ] It is further

determined that the CDMA2000 Products practice this limitation because [

l

Analvsis under alternate claim constructions.

Respondents’ proposed construction of these claim limitations requires that the

transmission power level of the traffic channel and the reverse control channel be different in

131
PUBLIC VERSION

response to the received power control bits. See Resps. Br. at 186. Under Respondents’

proposed construction, the accused WCDMA and CDMA2000 products do not satisfy these

limitations.

[

] See Resps. Br.

at 186. [

] Prucnal Tr. 324-325;

RX-3994C (Williams RWS) at Q28.

For instance, in the WCDMA standard, power control commands received by the

subscriber device result in the overall gain of the transmitted signal by the mobile being adjusted

(Prucnal Tr. 324116—325:7; RX-3994C (Williams RWS WS) at Q. 30-31. Thus, the power

control bits have no impact on whether the separate power levels of the reverse control channel

and traffic channels are different or not.

As for the CDMA2000 standard, the power commands received from the base station

result in power adjustments applied at a gain device appearing after all of the channels have been

summed together, and thus do not affect the individual gains of the individual channels or cause

the power level of one channel to be different from another. See CX-1310C (Prucnal WS) at

Q2056.

Therefore, the accused WCDMA and CDMA2000 products would not satisfy these claim

limitations LmderRespondents’ proposed constructions.

132
PUBLIC VERSION

c. The “gain devices configured . . . to adjust a transmission

power level of both a traffic channel and a reverse control

channel” (‘406 Patent) Limitations

Independent claims 15 and 21 of the ‘406 patent, from which asserted claims 20 and 26

depend, recite “gain devices configured, in response to the received [series of] power control

bit[s], to adjust a transmission power level of both a traffic channel and a reverse control

channel.” JX-0001 at col. 16, lns. 11-13 (power control bit); col. 16, lns. 41-44 (series of power

control bits). As discussed above, this limitation is construed to mean that the transmission

power levels of the traffic and control channels do not have to be adjusted separately. Applying

this construction, the record evidence demonstrates that the accused WCDMA and CDMAZOOO

devices satisfy this claim limitation.

[

] See, e.g., RX-3994C (Williams RWS) at Q30, Q35. [

] Id.

Analvsis under alternate claim constructions.

In the event that Respondents’ proposed construction of this claim limitation were

adopted, such that the transmission power levels of the traffic and control channels must be

adjusted separately in response to the received power control bits, the accused WCDMA and

CDMA2000 products would not satisfy this claim limitation. [

] See, e.g., RX-3994-C

(Williams RWS) at Q30, Q35 . [

133
PUBLIC VERSION

l

d. The “. . . separately adjusting . . .” (‘406 Patent) Limitation

Claim 29 of the ‘406 patent includes the following two paragraphs:

in response to the received power control bit, adjusting a transmission

power level of both the traffic channel and the reverse control channel,

separately adjusting the transmission power level of the traffic channel and

the reverse control channel;

JX-0001 (‘406 Patent) at col. 17, lns. 15-19. As discussed above, this claim language is

construed to mean “adjusting a transmission power level of both the traffic channel and the

reverse control in response to the received power control bit and separately adjusting the

transmission power level of the traffic channel and the reverse control channel.” Applying this

adopted construction, the record evidence shows that the CDMA2000 products satisfy these

limitations.

[

] CX-1310C (Prucnal WS)

at Q2124-2127 (standard), [ ] CX-0017 (3GPP2 C.S0002) at fig.

2.l.3.l.1.l-10; CX-0136C [ ] at 4-491 to 4-494.

Analvsis under alternate claim constructions.

In the event that Respondents’ proposed construction of this claim limitation were

adopted, such that infringement would require “separately adjusting the transmission power level

of both the traffic channel and the reverse control channel in response to the received power

control bit,” the accused WCDMA and CDMA2000 products would not satisfy this claim

134
PUBLIC VERSION

limitation. [

] See, e.g., RX-3994C (Williams RWS) at Q30, Q35. [

l

e. The “only one of an in-phase (I) channel or a quadrature (Q)

channel” (‘332 Patent) Limitations

Independent claims 1 and 21 of the ‘332 patent, from which multiple asserted claims

depend, require including power control bits on only one of an in-phase (I) channel or a

quadrature (Q) channel.

The relevant passage of claim 1 reads as follows:

a circuit, operatively coupled to an antenna, configured to generate power

control bits that are included on only one of an in-phase (I) channel or a

quadrature (Q) channel;

JX-0002 at col. 101, lns. 8-11.

The relevant passage of claim 21 reads as follows:

circuitry configured to receive a first radio frequency signal and generate

power control bits in response to the first radio frequency signal; wherein

the circuitry is further configured to produce an in-phase (I) channel and a

quadrature (Q) channel; wherein only one of the I channel or the Q

channel includes the power control bits;

IX-0002 at col. 102, lns. 41-48.

As discussed above, the power control infonnation generated by the WCDMA and

CDMA2000 products does not satisfy the “power control bit” limitation of these claims under

135
PUBLIC VERSION

the construction adopted above.30 If, however, the limitation “power control bit” were

understood to mean power control information, then the record evidence demonstrates that the

WCDMA and CDMA2000 products would satisfy the “only one of an ir1-phase(I) channel or a

quadrature (Q) channel” limitations.

[

See, e.g., CX-1310C (Prucnal WS) at Q300, Q2146; Williams Tr. 1213-1214 (referring to

WCDMA uplink spreading fig.l); CX-0023 (3GPP TS 25.213) at §§ 4.1, 4.2.1; CX-0017

(3GPP2 C.S0002) at fig. 2.1.3.1.1.1-10. [

1 See cx-1310c (Prucnal WS) at Q300, Q2146; RX-3529C (Williams WS) at

Q100. [

] See CX-1310C (Prucnal WS) at Q285-294,

Q2134-2139; RX-3994C (Williams RWS) at Q67-69, Q75-76. [

] See Compls. Br. at 161-67. [

30As further explained above, the WCDMA and CDMA2000O products would satisfy the

“power control bit” limitation of these claims under 1nterDigital’s proposed construction of the

limitation.

136
PUBLIC VERSION

] See Resps. Br. 202-11; RX-3994C (Williams

RWS) at Q65. The evidence supports InterDigital’s position.

[

] See, e.g., CX-1310C (Prucnal WS) at Q285-294 (standard), Q580—592

(RapuYarna), QSSO-892 (Rapid0Yawe), Q1 192-1203 (RAP3G), [

] cx-13070 (Goldberg ws) at Q21 (RAP3G/RapidoYawe),Q79

(Rapid0Yawe), Q117 (RapuYama), [ ] This proposition IS

supported by the WCDMA standard, including the following Figure 1:

Cm 56

DPDCH; /kf X X

‘Q11 5:

QPDCH9

Cas I3,

DPDCH5 i

x Q5.

‘iii Xiii

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DPDCH; % § )6

121.4 §a

sapem

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5

1

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DFDC!-1: % i —>~ X X

cw 1%

DPCCH % )5’ X}i>

9'5 gm

HS*DPCC H

:~m___,__mud2 = 13 % iX_/

EL?

in

F1§HI‘I‘|ZSpreading foru

CX-0023 (3GPP TS 25.213) at § 4.2.1.

pEnk DPCCH, DPDCHS and HS-DPCCH

137
PUBLIC VERSION

The WCDMA standard itself labels these inputs to complex multiplication I and Q, and

the TPC Bits and TPC Bit Pattems are included only on the Q input. CX-0023 (SGPP TS

25.213) at fig. 1; CX-0232 (3GPP TS 25.211) at fig. 1, table 5. Moreover, only the Q input

includes quadrature (Q) charmels such as DPCCH. CX-0023 (3GPP TS 25.213) at fig. 1. [

See, e.g., CX-1310C (Pmcnal WS) at Q580-592 (RapuYama), Q880-892 (RapidoYawe),

Q1192-1203 (RAP3G),[ ]CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYaWe), Q117 (RapuYarna), [

] CX-0311C (WCDMA TX_r2 Module Spec.) at 72-74, 80-83

(RapuYama); CX-0312C (YAWE TX Module Spec.) at 13-15, 63-65, 70-71 (Rapid0YaWe);

CX-0010C (VooDoo Rel. 3 TX Spec.) at 33-35, 71-74, 80-81 (Rapid0YaWe/RAP3G);

CX-0925C [ ] at 7-28 to 7-32; [CX-0131C

CX-0318C

cx-1307c (

CX-1307C CX-1310C

RX-4029C CX-0318C

1

138
PUBLIC VERSION

The CDMAZOOOproducts also practice this limitation, inasmuch as [

l

See, e.g., cx-1310c (Prucnal ws) at Q2134-39 (standard), [ 1 This

proposition is supported by the CDMA standard:

Weisktovcr

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Rev 4 ‘

&:pfl: f5\—>:

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R='Y="¢ .. + i_ _ Z ; p

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mm L01-a___>( Z, .

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Dedimked lmmckkt’ /

Comm!cmma .. / i 1 » ,

mun own "m“"‘“1D \( \ E ‘ an

((­ F ‘P + + §' 4' + — —- - ———— I Q

Rzvssa _~ Q x-1

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Waist;cm-=1 X i E 5’§;:“'i 3

‘ '7) 0 f + ' 55,5“ (++++_---+++ l-—

lifliflzfgt

Channel! rm Ra! ' , 1xse_ V saw ‘ Comm::nCammlQ ' ‘ om

Chmn:1,c:Enhn:\:ed

A-tf:€nC1:\Inn.el Qcmml

w=a=1=Cum: Dam ,_,<\ "‘°‘?f_C}°‘“ Nam‘

5*'l°‘“”"' nanny‘ n§m&:' r:se_=4 in-nvaxuee

‘°***=**Y=%§';PP1*;*=§='~*,°**~*=*=*=11 ‘W.-rha.mp§§fY’w a7‘m‘ii =7;1: l —— —— 1,,m,,,, _ mm,

fnrR:<1cs:CcImmmCcnhr.»lC1'|nzu'1el Decmmmx ;“""r ‘b“im:vK“fs"5 - "‘°

“‘*E“'““‘”‘*A‘“"‘:h”"“1 “lg?” 2Vi‘?lc1\2heR!vl5!SlC_‘nmmn|:Cnn!xulC.l'mundcrr F4|.hMxz:o¢A.<x.'\:uC!:nr|:1clisused,1i:en!\W

.uddi1xnn::li:i'1am::ltheRnvm's:Rk!C.hann:I.

, 3_Allof the pro-basebuzd-fikar upuxutzansoccur

X~C§|u:n::l g ‘ Q-Chamxd P21Sequence ‘ rm Sequence H

at Ennciipxtte of 1.22asm=gs.

imp

u-my

“*§i**' D ’““¢..H,,. H2258 uq-.4

Figure 2.1.3.1.1.1-10. I and Q Mapping for Reverse Pilot Channel, Enhanced Access

Channel, Reverse Common Control Channel, and Reverse Traffic Channel

with Radio Configurations 3 and 4

CX-0017 (3GPP2 C.S0O02)at fig. 2.l.3.1.1.1-10.

The CDMA2000 standard labels the inputs to complex multiplication I-Channel Data and

Q-Channel Data, and power control information is included only on the I-Channel Data input,

which includes in-phase channels such as the Reverse Power Control Subchannel. CX-0017

139
PUBLIC VERSION

(3GPP2C.SO002)at figs. 2.l.3.l.l.l-l0, 2.l.3.l.lO.l-1. [

] See, e.g., cx-1310c (Prucnal WS) at Q2355-2363; cx-1307c

(Goldberg ws) at Q496; cx-0134c [ 1at 9-2; CX-0136C [

]at 4-491 to 4-494. [

CX-1307C

]

Accordingly, it is determined that the WCDMA and CDMA2000 products include power

control information on only one of an in-phase (I) or quadrature (Q) channel as required by ‘332

patent claims.

f. The “only one of the I pre-spread channel or the Q pre-spread

channel” (‘332 Patent) Limitation

Independent claim 8 of the ‘332 patent, from which multiple asserted claims depend,

requires including power control bits on only one of an in-phase (I) pre-spread channel or a

quadrature (Q) pre-spread channel. As discussed above, the power control information generated

by the WCDMA and CDMA2000 products does not satisfy the “power control bit” limitation of

these claims under the construction adopted above. If however, the limitation “power control

bit” were understood to mean power control information, then the record evidence demonstrates

that the WCDMA and CDMA2000 products would satisfy the “only one of the I pre-spread

charmel or the Q pre-spread channel” limitation.

The evidence shows that WCDMA products practice this limitation because [

140
PUBLIC VERSION

] See, e.g., CX-1310C (Prucnal WS) at Q335-342 (standard), Q653-662

(RapuYama), Q961-970 (Rapid0Yawe), Q1268-1276 (RAP3G), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/Rapid0Yawe), Q79

(RapidoYawe), Q117 (RapuYama), [ ] CX-0023 (3GPP TS

25.213) at fig.1;CX-O232(3GPP TS 25.211) atfig.l, tbl.5. [

]

The CDMA2000 Products practice this limitation because [

] See, e.g., CX-1310C (Prucnal WS) at Q2174-2177 (standard),

[ ] CX-1307C (Goldberg WS) at Q496; cx-0017 (3GPP2 c.s0002) at

fig.2.1.3.1.1O.1-1,§§2.1.3.1.10.1,2.1.3.2.2. [

l

5. ‘406 Patent —(Nonasserted) Claim 1

Claim 1 of the ‘406 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claim 6. The record evidence demonstrates that the accused CDMA2000

products do not satisfy all elements of claim 1.

141
PUBLIC VERSION

a. A method for controlling transmission power levels of a code

division multiple access (CDMA) subscriber unit, the method

comprising:

The parties do not dispute that [

1 See Compls. B1.at 169 (citing cx-1310c (Prucnal WS) at Q2043-2044 (Standard),

[ 1cx-0017 (3GPP2 c.s0002) at § 1.1; cx-0017 (3GPP2 c.s0002) at

§§ 21.2.3.2, 3.1.3.110); Resps. Br. at 180-98.

b. receiving by the subscriber unit a power control bit on a

downlink control channel, the power control bit indicating

either an increase or decrease in transmission power level;

As discussed above, the power control information received by the CDMA2000 products

does not satisfy the “power control bit” limitation of this claim. It is not disputed, however, that

[

]

See CX-1310C (Prucnal WS) at 1]2045-2050 (Standard), Q2256-2266 (Qualcomm); CX-0017

31Five method claims from the ‘406 patent are at issue in this investigation. Asserted claims 6

and 13 are dependent claims that depend from nonasserted independent claims l and 7,

respectively. Claim 29 is an asserted independent claim.

Respondents allege that InterDigital has failed to show direct infringement of asserted method

claims 6, l3, and 29 because, inter alia, “a respondent does not directly infringe a patented

method in violation of Section 337 merely by importing devices capable of performing the claimed

method,” and “InterDigital provides no evidence that ‘the act of importation is [] an act that

practices the steps of the asserted method claim.”’ See Resps. Br. at 180-81 (citing Electronic

Devices at 12, 17).

In response, InterDigital does not contest that Electronic Devices would bar a finding of direct

infringement if there were no record evidence showing that the accused devices practice the

claimed method at the time of importation. See Compls. Reply at 74. lnterDigital does argue

that, inasmuch as “Respondents do not dispute that that the WCDMA and CDMA2000 Products

are actually used in the United States after importation,” “Respondents are at least liable for

indirect infringement that constitutes a violation of Section 337.” Id. (emphasis original). The

issue of indirect infringement will be addressed below.

142
PUBLIC VERSION

(3GPP2 C.S0002) at §§ 1.1, 3.l.3.1.l0;CX-0136C [ ] at 4-242; CX-0132C

[ ] at 12-4 to 12-5, [ ]

c. transmitting a plurality of channels by the subscriber unit, the

plurality of channels including a traffic channel and a reverse

control channel;

The parties do not dispute that the accused CDMAZOOOproducts satisfy the claim

element “transmitting a plurality of channels by the subscriber unit, the plurality of channels

including a traffic channel and a reverse control channel.” See Compls. Br. at 169 (citing

CX-1310C (Prucnal WS) at Q2051-2053 (Standard), [ CX-1307C

( ]CX-0017 (3GPP2 C.SOO02)at §§ 2.l.3.l.1, 2.l.3.1.l0);

Resps. Br. at 180-98.

d. in response to the received power control bit, adjusting a

transmission power levelof both the traffic channel and the

reverse control channel, wherein the transmission power level

of the traffic channel and the reverse control channel are

different; and

For the reasons discussed above in the section addressing global infringement issues with

respect to the “in response to . . . wherein the transmission power level of the traffic channel and

the reverse control channel are different” claim limitation, InterDigita1 has shown that the

CDMAZOOOproducts practice this claim element.

e. transmitting the traffic channel and the reverse control

channel at their respective adjusted transmit power levels.

The evidence adduced at the hearing demonstrates that this claim limitation is satisfied by

the CDMAZOOOproducts. In particular, the CDMAZOOOproducts [

] See, e.g.,

CX-1310C (Prucnal WS) at Q2062-2064 (Standard), [ ] CX-0017

(3GPP2 c.s0002) at § 2.12.3.2; cx-0132c [ 1at 12-4to 12-5.

143
PUBLIC VERSION

6. ‘406 Patent —Claim 6

a. The method of claim 1

Inasmuch as the CDMAZOOOproducts do not infringe independent claim 1, they also do

not infringe dependent claim 6.

b. wherein the reverse control channel carries at least one power

command.

The parties do not dispute that the accused CDMA2000 products satisfy the additional

claim 6 element “wherein the reverse control channel carries at least one power command.” See

Compls. Br. at 170 (citing CX-1310C (Prucnal WS) at Q2065-2067 (Standard), [

CX-1307C ] CX-0017 (3GPP2 C.SO002) at

§2.1.3.1.10.1); Resps. Br. at 180-98.

7. ‘406 Patent —(Nonasserted) Claim 7

Claim 7 of the ‘406 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claim 13. The record evidence demonstrates that the accused WCDMA

products do not satisfy all elements of claim 7.

a. A method for controlling transmission power levels of a code

division multiple access (CDMA) subscriber unit, the method

comprising:

The parties do not dispute that [

] See

Compls. Br. at 170 (citing CX-1310C (Prucnal WS) at Q13O-131 (Standard), Q471-473

(RapuYama), Q780-782 (RapidoYaWe), Q1098-1099 (RAP3G), [

] CX-0232 (3GPP TS 25.211) at § 3.2; CX-0234 (3GPP TS 25.214) at

§§ 5.1.2.1, 5.1.2.2); Resps. Br. at 180-98.

144
PUBLIC VERSION

b. receiving by the subscriber unit a series of power control bits

on a downlink channel, each power control bit indicating

either an increase or decrease in transmission power level;

As discussed above, the TPC Bits received by the WCDMA products do not satisfy the

“power control bits” limitation of this claim. It is not disputed, however, that [

] See, e.g.,

CX-1310C (Prucnal WS) at Q132-145, Q163 (standard), Q474-488 (RapuYama), Q783-792

(RapidoYawe), Q1100-1109 (RAPBG), [ ]

CX-1307C (Goldberg WS) at Q159 (RAP3G/RapidoYawe), Ql95 (RapuYama), Q212

(RAP3G/Rapid0Yawe/ RapuYama), [

] CX-0232 (3GPP TS 25.211) at § 5.3.2; CX-0234 (3GPP TS 25.214) at

§§ 5.1.2.2.1, 5.1.2.22, 5.1.2.23.

c. transmitting a plurality of channels by the subscriber unit, the

plurality of channels including a traffic channel and a reverse

control channel;

The parties do not dispute that the accused WCDMA products satisfy the claim element

“transmitting a plurality of channels by the subscriber unit, the plurality of channels including a

traffic channel and a reverse control channel.” See Compls. Br. at 171 (citing CX-1310C

(Prucnal WS) at QI46-152 (Standard), Q489-497 (RapuYama), Q793-800 (RapidoYawe),

Q1110-1116 (RAP3G),[ ]CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYaWe), Q79 (Rapid0Yawe), Q117 (RapuYama), [

] CX-0232 (3GPP TS 25.211) at § 5.2.1); Resps. Br. at 180-98.

145
PUBLIC VERSION

d. adjusting a transmission power level of both the traffic channel

' and the reverse control channel in response to the same bits in

the received series of power control bits, wherein the

transmission power level of the traffic channel and the reverse

control channel are different; and

For the reasons discussed above with respect to the “in response to . . . wherein the

transmission power level of the traffic channel and the reverse control channel are different”

claim limitation, InterDigital has shown that the WCDMA products practice this claim element.

e. transmitting the traffic channel and the reverse control

channel at their respective adjusted transmit power levels.

The evidence shows that the accused WCDMA products satisfy the claim limitation

“transmitting the traffic channel and the reverse control channel at their respective adjusted

transmit power levels.” See, e.g., CX-1310C (Prucnal WS) at Q146-152 (Standard), Q489-497

(RapuYama), Q793-800 (RapidoYawe), Q1110-1116 (RAP3G), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79

(RapidoYawe), Q117 (RapuYama), Q358 (HiSi1icon), [ ] CX-0232 (3GPP TS

25.211) at § 5.2.1.

8. ‘406 Patent - Claim 13

a. The method of claim 7

Inasmuch as the WCDMA products do not infringe independent claim 7, they also do not

infringe dependent claim 13.

b. wherein the reverse control channel carries at least one power

command.

The parties do not dispute that the accused WCDMA products satisfy the claim limitation

“wherein the reverse control channel carries at least one power command.” See Compls. Br. at

171-72 (citing CX-1310C (Prucnal WS) at Q186-191 (Standard), Q520-526 (RapuYama),

146
PUBLIC VERSION

Q824-829 (RapidoYawe), Q1139-1144 (RAP3G), [

] CX-1307C (Goldberg WS) at Q21 (RAPSG/RapidoYawe), Q79 (RapidoYaWe),

Q117 (RapuYama), [ ] CX-0232 (3GPP TS 25.211) at

§ 5.2.1); Resps. Br. at 180-98.

9. ‘406 Patent —(Nonasserted) Claim 15

Claim 15 of the ‘406 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claim 20. The record evidence demonstrates that the accused CDMA2000

products do not satisfy all elements of claim 15.

a. A code division multiple access (CDMA) subscriber unit

comprising:

The parties do not dispute that the accused CDMA2000 products satisfy the claim

limitation “[a] code division multiple access (CDMA) subscriber unit.” See Compls. Br. at 172

(citing CX-1310C (Prucnal WS) at Q2043-2044 (Standard), [ ] CX-0017

(3GPP2 C.S0O02) at § 1.1); Resps. Br. at 180-98.

b. a despreading and demultiplexing device configured to recover

a power control bit from a downlink control channel, wherein

the power control bit has a value indicating a command to

either increase or decrease transmission power level; and

As discussed above, the power control information received by the CDMA2000 products

do not satisfy the “power control bits” limitation of this claim. The record evidence does show,

however, that [

]See, e.g.,

CX-1310C (Prucnal WS) at Q2088—2094(standard), [ ] CX-1307C

(Goldberg WS) at Q582; CX-0017 (3GPP2 C.S0O02) at § 3.1.3.1.10, figs. 3.1.3.1.1.1-16,

3.l.3.1.1.1-17, 3.1.3.1.1.1-18;CX-0136C [ ] at 4-242; CX-0132C [

147
PUBLIC VERSION

l at [ l [

] See, e.g. ,

CX-1310C (Prucnal WS) at Q2088-2094 (standard), [ ] CX-1307C

(Goldberg WS) at Q623-624; CX-0017 (3GPP2 C.SO0O2)at § 3.1.3.1.10.

c. gain devices configured, in response to the received power

control bit, to adjust a transmission power level of both a

traffic channel and a reverse control channel prior to

transmission by the subscriber unit, wherein the transmission

power level of the traffic channel and the reverse control

channel are different.

For the reasons discussed above in the section addressing global infringement issues With

respect to the “gain devices configured . . . to adjust a transmission power level of both a traffic

channel and a reverse control channel” claim limitation, InterDigital has shown that the

CDMA2000 products practice this claim element.

10. ‘406 Patent —Claim 20

a. The CDMA subscriber unit of claim 15

Inasmuch as the CDMA2000 products do not infringe independent claim 15, they also do

not infringe dependent claim 20.

b. wherein the reverse control channel carries at least one power

command.

The parties do not dispute that the accused CDMA2000 products satisfy the claim

limitation “wherein the reverse control channel carries at least one power command.” See

Compls. Br. at 173 (citing CX-1310C (Prucnal WS) at Q2103-2105 (Standard), [

CX-1307C ] CX-0017 (3GPP2 C.SO0O2)at

§ 2.1.3.1.1O.l); Resps. Br. at 180-98.

148
PUBLIC VERSION

11. ‘406 Patent —(Nonasserted) Claim 21

Claim 21 of the ‘406 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claim 26. The record evidence demonstrates that the accused WCDMA

products do not satisfy all elements of claim 21.

a. A code division multiple access (CDMA) subscriber unit

comprising:

The parties do not dispute that the accused WCDMA products satisfy the claim limitation

“[a] code division multiple access (CDMA) subscriber unit.” See Compls. Br. at 173 (citing

CX-1310C (Prucnal WS) at Q130-131 (Standard), Q471-473 (RapuYama), Q780-782

(RapidoYawe), Q1098-1099 (RAP3G), [ ]

CX-0232 (3GPP TS 25.211) at § 3.2); Resps. Br. at 180-98.

b. a despreading and demultiplexing device configured to recover

a series of power control bits from a downlink channel,

wherein each power control bit has a value indicating a

command to either increase or decrease transmission power

level; and

As discussed above, the TPC Bits received by the WCDMA products do not satisfy the

“power control bits” limitation of this claim. It is not disputed, however, that [

] See, e.g., CX-1310C (Prucnal

WS) at Q239-247 (Standard), Q530-540 (RapuYama), Q833-842 (RapidoYawe), Q1148-1157

(RAP3G), [ ] CX-1307C (Goldberg WS) at

Ql59 (RAP3G/RapidoYawe), Q195 (RapuYama), [ ]

CX-0232 (3GPP TS 25.211) at § 5.3.2; CX-0023 (3GPP TS 25.213) at § 5.1.

149
PUBLIC VERSION

c. gain devices configured, in response to the received series of

power control bits, to adjust a transmission power level of both

a traffic channel and a reverse control channel in response to

same bits in the received series of power control bits prior to

transmission by the subscriber unit, wherein the transmission

power levelof the traffic channel and the reverse control

channel are different.

As discussed above, the WCDMA accused products satisfy this claim limitation under

the adopted constructions proposed by InterDigital. See, e.g., CX-1310C (Prucnal WS) at

Q248-270 (Standard), Q54l-556 (RapuYama), Q843-860 (RapidoYawe), Q1158-1171

(RAP3G), [ ] CX-1307C (Goldberg WS) at

Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), Q2l2

(RAP3G/RapidoYawe/ RapuYama), [

] CX-0023 (3GPP TS 25.213) at § 4.2.1; CX-0234 (3GPP TS 25.214) at

§§ 5.1.2.1, 5.1.2.2, 5.1.2.5, 5.1.2.5.1.

12. ‘406 Patent —(Nonasserted) Claim 22

a. The CDMA subscriber unit of claim 21

Inasmuch as the WCDMA products do not infringe independent claim 21, they also do

not infringe dependent claim 22.

b. wherein the downlink channel is a downlink control channel.

The record evidence demonstrates that the accused WCDMA products satisfy this

additional limitation of claim 22. See, e.g., CX-1310C (Prucnal WS) at Q27l-273 (Standard),

Q560-566 (RapuYama), Q864-867 (RapidoYawe), Q1175-1179 (RAP3G), [

] CX-0232 (3GPP TS 25.211) at § 5.3.2.

150
PUBLIC VERSION

13. ‘406 Patent —Claim 26

a. The CDMA subscriber unit of claim 22

Inasmuch as the WCDMA products do not infringe claim 22, they also do not infringe

dependent claim 26.

b. wherein the reverse control channel carries at least one power

command.

The parties do not dispute that the accused WCDMA products satisfy the claim limitation

“wherein the reverse control channel carries at least one power command.” See Compls. Br. at

174 (citing CX-1310C (Prucnal WS) at Q274-279 (Standard), Q570-576 (RapuYama), Q871-876

(RapidoYawe), Q1183-1188 (RAPSG), [ ]

CX-1307C (Goldberg WS) at Q21 (RAPBG/RapidoYawe), Q79 (RapidoYawe), Q117

(RapuYama), [ ] CX-0232 (3GPP TS 25.211) at § 5.2.1);

Resps. Br. at 180-98.

14. ‘406 Patent —Claim 29

a. A method for controlling transmission power levels of a code

division ‘multipleaccess (CDMA) subscriber unit, the method

comprising:

The parties do not dispute that the accused CDMA2000 products are capable of

controlling transmission power levels of a code division multiple access (CDMA) subscriber

unit. See Compls. Br. at 169 (citing CX-1310C (Pnlcnal WS) at Q2043-2044 (Standard),

[ ] CX-0017 (3GPP2 C.S00O2) at § 1.1; CX-0017 (3GPP2 C.S00O2) at

§§2.1.2.3.2,3.1.3.1.10), 174; Resps. Br. at 180-98.

151
PUBLIC VERSION

b. receiving by the subscriber unit a power control bit on a

downlink control channel, the power control bit indicating

either an increase or decrease in transmission power level;

As discussed above, the power control infonnation received by the CDMA2000 products

does not satisfy the “power control bit” limitation of this claim. It is not disputed, however, that

[

]

See CX-1310C (Prucnal WS) at 1]2045-2050 (Standard), [ ] CX-0017

(3GPP2 C.S0002) at §§ 1.1, 3.1.3.1.10; [CX-0136C CX-0132C

]

c. transmitting a plurality of channels by the subscriber unit, the

plurality of channels including a traffic channel and a reverse

control channel;

The parties do not dispute that the accused CDMA2000 products satisfy the claim

limitation “transmitting a plurality of channel by the subscriber unit, the plurality of channels

including a traffic channel and a reverse control channel.” See Compls. Br. at 175 (citing

CX-1310C (Prucnal WS) at Q2116-2118 (Standard), [

]CX-0017 (3GPP2 C.S0002) at §§ 2.1.3.11, 2.1.3.1.10);

Resps. Br. at 180-98.

d. in response to the received power control bit, adjusting a

transmission power level of both the traffic channel and the

reverse control channel,

For the reasons discussed above with respect to the “in response to . . . wherein the

transmission power level of the traffic channel and the reverse control channel are different”

claim limitation, InterDigital has shown that the CDMA2000 products practice this claim

element.

152
PUBLIC VERSION

e. separately adjusting the transmission power level of the traffic

channel and the reverse control channel; and

For the reasons discussed above with respect to the “. . . separately adjusting . . .” claim

limitation, InterDigital has shown that the CDMA2000 products practice this claim element.

f. transmitting the traffic channel and the reverse control

channel at their respective adjusted transmit power levels.

The accused CDMA2000 products satisfy the claim limitation “transmitting the traffic

channel and the reverse control channel at their respective adjusted transmit power levels.” See

CX-1310C (Pmcnal WS) at Q2128-2130 (Standard), [ ] CX-0017

(3GPP2 C.S0002) at § 2.1.23.2; [CX-0132C ]

15. ‘332 Patent - (Nonasserted) Claim 1

Claim 1 of the ‘332 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claims 2, 3, 4, and 7. The record evidence demonstrates that the accused

WCDMA and CDMA2000 products do not satisfy all elements of claim 1.

a. A code division multiple access subscriber unit comprising:

The record evidence demonstrates that the accused WCDMA and CDMA2000 products

satisfy the claim limitation “[a] code division multiple access subscriber unit.” See, e.g.,

CX-1310C (Prucnal WS) at Q283-284 (WCDMA), Q578-579 (RapuYama), Q878-879

(RapidoYawe), Q1190-1191 (RAP3G), [

] Q2132-2133 (CDMA2000), [ ] CX-0232

(3o1>1>rs 25.211) at § 3.2 (WCDMA); cx-0017 (3GPP2 c.s00o2) at § 1.1 (CDMA2000).

153
PUBLIC VERSION

b. a circuit, operatively coupled to an antenna, configured to

generate power control bits that are included on only one of an

in-phase (I) channel or a quadrature (Q) channel; and

As discussed above, the power control information received by the WCDMA and

CDMA2000 products does not satisfy the “power control bits” limitation of this claim.

For the reasons discussed above with respect to the “only one of an in-phase (I) channel

or a quadrature (Q) channel” claim limitation, InterDigital has shown that the WCDMA and

CDMA2000 products practice this claim element if the claimed “power control bits” were

understood to mean power control infonnation.

c. the antenna configured to output a radio frequency signal

derived at least in part from the I and Q channels.

The record demonstrates that the WCDMA and CDMA2000 products practice the claim

limitation “the antenna configured to output a radio frequency signal derived at least in part from

the I and Q channels.” See, e.g., CX-1310C (Prucnal WS) at Q295-297 (WCDMA), Q593-598

(RapuYama), Q893-900 (RapidoYawe), Q1204-1210 (RAP3G), [

] Q2140-2142 (CDMA2000), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe),

Q1 17 (RapuYama), [

] CX-0023 (BGPP TS 25.213) at §§ 4.2.1, 4.4.2; CX-0265 (3GPP TS 25.101) at

§ 6.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at fig. 2.1.3.1.1.1-10, §§ 1.1, 2.1.2 (CDMA2000).

16. ‘332 Patent —Claim 2

a. A code division multiple access subscriber unit in accordance

with claim 1,

Inasmuch as the WCDMA and CDMA2000 products do not infringe independent claim

1, they also do not infringe dependent claim 2.

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b. wherein the circuit is further configured to combine the I and

Q channels with a complex sequence.

The record evidence shows that the WCDMA and CDMA2000 products satisfy the

additional claim 2 limitation “wherein the circuit is further configured to combine the I and Q

channels with a complex sequence.” See, e.g., CX-1310C (Prucnal WS) at Q298-300

(WCDMA), Q602-606 (RapuYama), Q904-909 (RapidoYawe), Q1214-1218 (RAP3G),

[ ] Q2144-2146 (CDMA2000);

[ ] CX-1307C (Goldberg WS) at Q21

(RAP3G/RapidoYawe), Q79 (RapidoYawe), Q1 17 (RapuYa.ma), [

] CX-0023 (3GPP TS 25.213) at §§ 4.1,

4.2.1, 4.3.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68, § 2.1.3.1.l2

(CDMA2000).

17. ‘332 Patent —Claim 3

a. A code division multiple access subscriber unit in accordance

with claim 2,

Inasmuch as the WCDMA and CDMA2000 products do not infringe claim 2, they also

do not infringe dependent claim 3.

b. wherein the combining is by multiplication.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

satisfy the additional claim 3 limitation “wherein the combining is by multiplication.” See, e.g.,

CX-1310C (Prucnal WS) at Q302-304 (WCDMA), Q610-615 (RapuYama), Q913-919

(RapidoYawe), Q1222-1226 (RAP3G), [

] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), [ ]

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[ 1 CX-0023 (3GPP TS

25.213) at §§ 4.1, 4.2.1 (WCDMA); cx-0017 (3GPP2 c.s0002) at 2-64, 2-as (CDMAZOOO).

18. ‘332 Patent —Claim 4

a. A code division multiple access subscriber unit in accordance

with claim 2,

Inasmuch as the WCDMA and CDMA2000 products do not infringe claim 2, they also

do not infringe dependent claim 4.

b. wherein the complex sequence comprises at least two pseudo

noise sequences.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

satisfy the additional claim 4 limitation “wherein the complex sequence comprises at least two

pseudo noise sequences.” See, e.g., CX-1310C (Prucnal WS) at Q305-311 (WCDMA),

Q619-622 (RapuYama), Q923-928 (RapidoYawe), Q1230-1234 (RAP3G), [

] Q2151-2154 (CDMAZOOO), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79

(RapidoYaWe), Q117 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at §§ 4.2.1, 4.3.2 (WCDMA); CX-0017

(3GPP2 C.S0002) at 2-64, 2-68, § 2.1.3.1.12 (CDMA2000).

19. ‘332 Patent —Claim 7

a. A code division multiple access subscriber unit in accordance

with claim 1,

Inasmuch as the WCDMA and CDMA2000 products do not infringe independent claim

1, they also do not infringe dependent claim 7.

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b. wherein the circuit is further configured to generate pilot bits;

wherein the radio frequency signal is derived at least in part

from the pilot bits.

The record evidence demonstrates that the WCDMA and CDMA2000 products practice

the claim limitation “wherein the circuit is further configured to generate pilot bits.” See, e.g.,

CX-1310C (Prucnal WS) at Q315-317 (WCDMA), Q626-629 (RapuYama), Q932-936

(RapidoYawe), Q1238-1242 (RAP3G), [

] Q2158-2160 (CDMA2000), [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), [

] CX-0232 (3GPP TS

25.211) at § 5.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68, 2-119 (CDMA2000).

The WCDMA and CDMA2000 products also practice the claim limitation “wherein the

radio frequency signal is derived at least in part from the pilot bits.” See, e.g., CX-1310C

(Prucnal WS) at Q3l8-320 (WCDMA), Q630-633 (RapuYama), Q937-941 (RapidoYawe),

Q1243-1248 (RAP3G),[ ] Q2161­

2163 (CDMA2000), [ ] CX-1307C (Goldberg WS) at Q21

(RAP3G/RapidoYawe), Q79 (RapidoYaWe), Q117 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at

§§ 4.2.1, 4.4.2 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68 (CDMA2000).

20. ‘332 Patent —Claim 8

a. A code division multiple access subscriber unit, comprising:

The record evidence demonstrates that the accused WCDMA and CDMA2000 products

satisfy the claim limitation “[21]code division multiple access subscriber Lmit.” See, e.g. ,

CX-1310C (Prucnal WS) at Q283-284 (WCDMA), Q578-579 (RapuYama), Q878-879

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(RapidoYawe), Q1190-1191 (RAP3G), [

] Q2132-2133 (CDMA2000), [ ] CX-0232

(3GPP TS 25.211) at § 3.2 (WCDMA); CX-0017 (3GPP2 C.SOOO2)at § 1.1 (CDMAZOOO).

b. an antenna configured to receive a first radio frequency signal;

and

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

have “an antenna configured to receive a first radio frequency signal.” See, e.g., CX-1310C

(Prucnal WS) at Q324-326 (WCDMA), Q637-642 (RapuYama), Q945-950 (RapidoYawe),

Q1252-1257 (RAP3G), [ ] Q2167­

2169 (CDMA2000), [ ] CX-0232 (3GPP TS 25.211) at §

5.3.2; CX-0265 (3GPP TS 25.101) at § 7.1 (WCDMA); CX-0017 (3GPP2 C.SOOO2)at §§ 1.1,

3.1.3.1 (CDMAZOOO).

c. a circuit, operatively coupled to the antenna, configured to

generate power control bits in response to the first radio

frequency signal, wherein the circuit is further configured to

establish an in-phase (I) pre-spread channel and a quadrature

(Q) pre-spread channel, such that the power control bits are

included on only one of the I pre-spread channel or the Q

pre-spread channel;

As discussed above, the power control information received by the WCDMA and

CDMAZOOOproducts does not satisfy the “power control bits” limitation of this claim. The

evidence does show, however, that [

1 See, e.g., cx-13100 (Prucnal WS) at Q327-334 (WCDMA),

Q643-652 (RapuYama), Q951-960 (RapidoYawe), Q1258-1267 (RAP3G), [

] Q2170-2173 (CDMA2000), [

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PUBLIC VERSION

] CX-1307C (Goldberg WS) at Q204

(RapuYama/Rapid0Yawe/RAP3 G), [

l

[

] See, e.g., CX-1310C (Prucnal WS)

at Q335-342 (WCDMA), Q653-662 (RapuYama), Q961-670 (Rapid0Yawe), Q1268-1276

(RAPSG), [ ] Q2174-2177

(CDMA2000), [ ] CX-1307C (Goldberg WS) at Q21

(RAP3G/Rapid0Yawe), Q79 (Rapid0YaWe), Q117 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at fig. 1;

CX-0232 (3GPP TS 25.211) at fig. 1, table 5 (WCDMA); CX-0017 (3GPP2 C.SO0O2)at fig.

2.1.3.1.10.1-1, §§ 2.1.3.1.10.1, 2.1.32.2 (CDMA2000).

d. wherein a second radio frequency signal output by the code

division multiple access subscriber unit is derived at least in

part from the I and Q pre-spread channels.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

practice the claim limitation “wherein a second radio frequency signal output by the code

division multiple access subscriber unit is derived at least in part from the I and Q pre-spread

channels.” See, e.g., CX-1310C (Prucnal WS) at Q343-345 (WCDMA), Q663-668 (RapuYa.rna),

Q971-977 (RapidoYawe), Q1277-1286 (RAP3G), [

] Q2178-2180 (CDMA2000), [ ] CX159
PUBLIC VERSION

1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama),

[ l

21. ‘332 Patent —Claim 9

a. A code division multiple access subscriber unit in accordance

with claim 8,

Inasmuch as the WCDMA and CDMAZOOOproducts do not infringe independent claim

8, they also do not infringe dependent claim 9.

b. wherein the circuit is further configured to combine the I and

Q pre-spread channels with a complex sequence.

The record evidence shows that the WCDMA and CDMA2000 products satisfy the

additional Claim9 limitation “wherein the circuit is further configured to combine the I and Q

channels with a complex sequence.” See, e.g., CX-1310C (Prucnal WS) at Q346-349

(WCDMA), Q672-675 (RapuYama), Q98l-985 (Rapid0Yawe), Q1287-1291 (RAP3G),

[ ] Q2181-2184 (CDMAZOOO),

[ ] CX-1307C (Goldberg WS) at Q21

(RAP3G/RapidoYaWe), Q79 (RapidoYawe), Q1 17 (RapuYama), [

4.2.1, 4.3.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68, § 2.1.3.1.12 (CDMAZOOO).

22. ‘332 Patent - Claim 10

]CX-0023 (3GPP TS 25.213) at §§ 4.1

a. A code division multiple access subscriber unit in accordance

with claim 9,

Inasmuch as the WCDMA and CDMA2000 products do not infringe claim 9, they also

do not infringe dependent claim 10.
PUBLIC VERSION

b. wherein the combining is by multiplication.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

satisfy the additional claim 1Olimitation “wherein the combining is by multiplication.” See, e.g.,

CX-1310C (Prucnal WS) at Q350-353 (WCDMA), Q679-683 (RapuYama), Q989-993

(RapidoYawe), Q1295-1299 (RAP3G), [

] Q2185-2188 (CDMA2000), [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), ]

] CX-0023 (3GPP TS

25.213) at §§ 4.1, 4.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68 (CDMA2000).

23. ‘332 Patent —Claim 11

a. A code division multiple access subscriber unit in accordance

with claim 9,

Inasmuch as the WCDMA and CDMA2000 products do not infringe claim 9, they also

do not infringe dependent claim 11.

b. wherein the complex sequence comprises at least two pseudo

noise sequences.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

satisfy the additional claim 11 limitation “wherein the complex sequence comprises at least two

pseudo noise sequences.” See, e.g., CX-1310C (Prucnal WS) at Q354-360 (WCDMA),

Q687-690 (RapuYama), Q997-1001 (RapidoYawe), Q1303-1307 (RAP3G), [

] Q2189-2192 (CDMA2000), Q2441-2444

(Qualcomm CDMA2000); CX-1307C (Goldberg WS) at Q21 (RAPSG/RapidoYawe), Q79

(RapidoYawe), Q117 (RapuYama), [

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[ 1cx-0023 (3GPP TS 25.213) at §§ 4.2.1, 4.3.2 (WCDMA); CX0017 (3GPP2 c.s0002) at 2-64, 2-68, § 2.13.1.12 (CDMA2000).

24. ‘332 Patent —Claim 14

a. A code division multiple access subscriber unit in accordance

with claim 8,

Inasmuch as the WCDMA and CDMA2000 products do not infringe independent claim

8, they also do not infringe dependent claim 14.

b. wherein pilot bits are included on at least one of the I and the

Q pre-spread channels.

The record evidence demonstrates that the WCDMA and CDMA2000 products practice

the claim limitation “wherein pilot bits are included on at least one of the I and the Q pre-spread

charmels.” See, e.g., CX-1310C (Prucnal WS) at Q364-367 (WCDMA), Q694-697 (RapuYama),

Q1005-1009 (RapidoYawe), Q1311-1315 (RAPBG), [

] Q2193-2196 (CDMA2000), Q2448-2451 (Qualcomm CDMA2000);

CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q1 17

(RapuYama), [ ]

CX-0232 (3GPP TS 25.211) at § 5.2.1; CX-0023 (3GPP TS 25.213) at § 4.2.1 (WCDMA);

CX-0017 (3GPP2 C.SO002) at 2-64, 2-68, 2-119 (CDMA2000).

25. ‘332 Patent —(Nonasserted) Claim 21

Claim 21 of the ‘332 patent is not asserted in this investigation, but is the parent claim to

asserted dependent claims 22, 23, 24, and 27. The record evidence demonstrates that the accused

WCDMA and CDMA2000 products do not satisfy all elements of claim 21.

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a. A code division multiple access subscriber unit comprising:

The record evidence demonstrates that the accused WCDMA and CDMAZOOOproducts

satisfy the claim limitation “[a] code division multiple access subscriber unit.” See, e.g.,

CX-1310C (Prucnal WS) at Q283-284 (WCDMA), Q578-579 (RapuYama), Q878-879

(RapidoYawe), Q1190-1191 (RAP3G), [

] Q2132-2133 (CDMAZOOO),[ ] CX-0232

(3GPP TS 25.211) at § 3.2 (WCDMA); CX-0017 (3GPP2 C.SO002) at § 1.1 (CDMA2000).

b. circuitry configured to receive a first radio frequency signal

and generate power control bits in response to the first radio

frequency signal; wherein the circuitry is further configured to

produce an in-phase (I) channel and a quadrature (Q) channel;

wherein only one of the I channel or the Q channel includes the

power control bits; wherein the circuitry is further configured

to produce a second radio frequency signal including an I

component and a Q component derived from the I channel and

the Q channel; wherein the circuitry is further configured to

transmit the second radio frequency signal.

As discussed above, the power control information received by the WCDMA and

CDMA2000 products does not satisfy the “power control bits” limitation of this claim. The

evidence does show, however, that [

] See, e.g., CX-1310C (Prucnal WS) at Q371-378

(WCDMA), Q701-710 (RapuYama), Q1013-1022 (RapidoYaWe), Q1319-1328 (RAP3G),

[ ] Q2200-2203 (CDMA2000),

[ ] CX-1307C (Goldberg WS) at Q204

(RapuYama/RapidoYawe/RAP3G), [

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PUBLIC VERSION

] CX-0234 (3GPP TS 25.214) at § 5.2.1.2.1, Annex B.2

(WCDMA); CX-0017 (3GPP2 C.SO002) at § 2.1.3.1.l0 (CDMA2000).

As discussed above, the WCDMA and CDMA2000 products satisfy the claim limitation

“wherein the circuitry is further configured to produce an in-phase (I) channel and a quadrature

(Q) channel.” See, e.g., CX-1310C (Prucnal WS) at Q379-83 (WCDMA), Q711-714

(RapuYama), Q1023-1026 (RapidoYawe), Q1329-1333 (RAP3G), [

] Q2204-2206 (CDMA2000), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (Rapid0Yawe),

Q1 17 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at fig.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at

fig. 2.1.3.1.1.1-10 (CDMA2000).

1

] See, e.g.

CX-1310C (Prucnal WS) at Q384-87 (WCDMA), Q715-719 (RapuYama), Q1027-1032

(RapidoYawe), Q1334-1340 (RAP3G), [

] Q2207-2210 [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/ RapidoYawe), Q79 (RapidoYawe), Q1 17 (RapuYama), [

] CX-0232 (3GPP TS

25.211) at fig.1, table 5 (WCDMA); CX-0017 (3GPP2 C.S0002) at fig. 2.1.3.1.10.1-1

(CDMA2000).

The WCDMA and CDMA2000 products further satisfy the claim limitation “wherein the

circuitry is ftuther configured to produce a second radio frequency signal including an I

component and a Q component derived from the I channel and the Q channel.” See, e.g.,

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CX-1310C (Prucnal WS) at Q388-390 (WCDMA), Q720-725 (RapuYama), Q1033-1039

(RapidoYawe), Q1341-1347 (RAP3G), [

] Q2211-2213 (CDMA2000), [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), [

] CX-0023 (3GPP TS

25.213) at figs.1, 7 (WCDMA); CX-0017 (3GPP2 C.S0002) at fig. 2.1.3.1.1.1-10 (CDMA2000).

Finally, the WCDMA and CDMA2000 products satisfy the claim limitation “wherein the

circuitry is further configured to transmit the second radio frequency signal.” See, e.g.,

CX-1310C (Prucnal WS) at Q391-393 (WCDMA), Q726-729 (RapuYama), Q1040-1045

(RapidoYawe), Q1348-1353 (RAP3G), [

] Q2214-2216 (CDMA2000), [ ] CX-0023

(3GPP TS 25.213) at §§ 4.2.1, 4.4.2 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68

(CDMA2000).

26. ‘332 Patent —Claim 22

a. A code division multiple access subscriber unit in accordance

with claim 21,

Inasmuch as the WCDMA and CDMA2000 products do not infringe independent claim

21, they also do not infringe dependent claim 22.

b. wherein the circuitry is further configured to combine the I

and Q channels with a complex sequence.

The record evidence shows that the WCDMA and CDMA2000 products satisfy the

additional claim 22 limitation “wherein the circuit is further configured to combine the I and Q

chamiels with a complex sequence.” See, e.g., CX-1310C (Prucnal WS) at Q394-396

(WCDMA), Q733-736 (RapuYama), Q1049-1053 (RapidoYawe), Q1357-1361 (RAP3G),

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[ ] Q2217-2220 (CDMA2000),

[ ] CX-1307C (Goldberg WS) at Q21

(RAP3G/Rapid0YaWe), Q79 (Rapid0Yawe), Q117 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at §§ 4.1,

4.2.1, 4.3.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68, § 2.1.3.1.l2

(CDMA2000).

27. ‘332 Patent —Claim 23

a. A code division multiple access subscriber unit in accordance

with claim 22,

Inasmuch as the WCDMA and CDMA2000 products do not infringe claim 22, they also

do not infringe dependent claim 23.

b. wherein the combining is performed by multiplication.

The evidence adduced by InterDigital shows that the WCDMA and CDMAZOOOproducts

satisfy the additional claim 23 limitation “wherein the combining is by multiplication.” See, e.g.,

(IX-1310C (Prucnal WS) at Q397-400 (WCDMA), Q740-743 (RapuYama), Q1057-1061

(RapidoYawe), Q1365-1369 (RAP3G), [ A

] Q2221-2224 (CDMA2000), [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYa.ma), [

] CX-0023 (3GPP TS

25.213) at §§ 4.1, 4.2.1 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68 (CDMA2000).

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28. ‘332 Patent -—Claim 24

a. A code division multiple access subscriber unit in accordance

with claim 22,

Inasmuch as the WCDMA and CDMAZOOOproducts do not infringe claim 22, they also

do not infringe dependent claim 24.

b. wherein the complex sequence comprises at least two pseudo

noise sequences.

The evidence adduced by InterDigital shows that the WCDMA and CDMA2000 products

satisfy the additional claim 24 limitation “wherein the complex sequence comprises at least two

pseudo noise sequences.” See, e.g., CX-1310C (Pmcnal WS) at Q40l-407 (WCDMA),

Q747-750 (RapuYama), Q1065-1069 (RapidoYawe), Q1373-1377 (RAP3G), [

] Q2225-2228 (CDMA2000), [

] CX-1307C (Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79

(RapidoYawe), Q117 (RapuYama), [

] CX-0023 (3GPP TS 25.213) at §§ 4.2.1, 4.3.2 (WCDMA); CX-0017

(3GPP2 C.SO0O2)at 2-64, 2-68, § 2.1.3.1.12 (CDMA2000).

29. ‘332 Patent —Claim 27

a. A code division multiple access subscriber unit in accordance

with claim 21,

Inasmuch as the WCDMA and CDMA2000 products do not infringe independent claim

21, they also do not infringe dependent claim 27.

b. wherein the circuitry is further configured to generate pilot

bits; wherein the second radio frequency signal is derived at

least in part from the pilot bits.

The record evidence demonstrates that the WCDMA and CDMAZOOOproducts practice

the claim limitation “wherein the circuit is further configured to generate pilot bits.” See, e.g.,

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CX-1310C (Prucnal WS) at Q435-437 (WCDMA), Q754-757 (RapuYama), Q1073-1077

(RapidoYawe), Q1381-1385 (RAP3G), [

] Q2232-2234 (CDMA2000), [ ] CX-1307C

(Goldberg WS) at Q21 (RAP3G/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYama), [

] CX-0232 (3GPP TS

25.211) at § 5.2.1 (WCDMA); CX-0017 (3GPP2 C.SO0O2)at 2-64, 2-68, 2-119 (CDMA2000).

The WCDMA and CDMA2000 products also practice the claim limitation “wherein the

second radio frequency signal is derived at least in part from the pilot bits.” See, e.g., CX-1310C

(Prucnal WS) at Q438-440 (WCDMA), Q758-761 (RapuYama), Q1078-1082 (RapidoYawe),

Q1386-1390 [ ]

Q2235-2236 (CDMA2000), [ ] CX-1307C (Goldberg WS)

at Q21 (RAPBG/RapidoYawe), Q79 (RapidoYawe), Q117 (RapuYa1na), [

] CX-0023 (3GPP TS 25.213) at

§§ 4.2.1, 4.4.2 (WCDMA); CX-0017 (3GPP2 C.S0002) at 2-64, 2-68 (CDMA2000).

30. Indirect Infringement (‘406 Patent)

InterDigital also alleges that Respondents have violated section 337 by inducing and

contributing to the infringement of the ‘406 patent. Compls. Br. at 184-93; Compls. Reply at 74.

Respondents oppose the allegations. Resps. Br. at 227-28; Resps. Reply at 193.

a. Induced Infringement

As an initial matter, it was detennined above that there is no direct infringement of any of

the asserted claims of the ‘406 patent, which is a prerequisite to a finding that Respondents are

liable for induced infringement. Ifl however, it were determined that the accused WCDMA and

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CDMAZOOOproducts directly infringe the ‘406 patent, then the record evidence shows that

Respondents would be liable for induced infringement.

i. Nokia

InterDigital argues that Nokia had constructive knowledge of the ‘406 patent by April 8,

2004, when InterDigital disclosed to ETSI the application that matured into the ‘406 patent. See

Compls. Br. at 185. InterDigital also argues that Nokia has actual knowledge of the ‘406 patent

no later than July 26, 2011, Which InterDigital filed the complaint in this investigation and

provided infringement claim charts to Nokia. Ia’.at 185-86. InterDigital further argues that,

“[w]ith knowledge of its infringement of the ‘406 patent, Nokia continues to import, offer for

sale, and sell of each of the Nokia Products and conduct field tests in the United States on those

products,” that “Nokia intends for end-user consumers to use its WCDMA products on WCDMA

networks and CDMAZOOOproducts on CDMAZOOOnetworks in the United States,” and that

“[t]hus Nokia had knowledge that its testing and/or sale of the Nokia Products for use by

end-user customers in the United States constituted patent infringement and actively induces

infringement of the ‘406 patent.” Id. at 186 (citations omitted).

The evidence adduced by InterDigital shows by a preponderance of the evidence that

Nokia would be liable for induced infringement of the ‘406 patent in the event that direct

infringement is found. In particular, the evidence shows that Nokia either had knowledge that

the induced acts constitute patent infringement, or took deliberate actions to avoid confirming a

high probability of wrongdoing. See Global-Tech Appliances, 131 S. Ct. at 2068-71. While it

has not been shown how the disclosure of a related patent application to ETSI informed Nokia of

potential infringement by purchasers of the accused devices, the same cannot be said of the filing

of the complaint in this investigation. If the Commission were to reverse the finding of the

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undersigned that Nokia does not infringe the ‘406 patent, then it would be hard to avoid the

conclusion that the detailed complaint provided knowledge of actual infringement by purchasers

of the accused devices, a kind of knowledge that meets even the heightened standard set forth in

the Global-Tech opinion.

ii. Huawei

The arguments and evidence InterDigital presents in support of its claim that Huawei is

liable for induced infringement of the ‘406 patent parallel the arguments and evidence presented

with respect to Nokia. Compare Compls. Br. at 185-86, with id. at 186-88. Respondents’

answer to those allegations is also the same. See Resps. Br. at 227-28; Resps. Reply at 19. It is

determined that InterDigital has adduced evidence showing by a preponderance of the evidence

that Huawei is liable for induced infringement of the ‘406 patent in the event that direct

infringement is found.

iii. ZTE

The arguments and evidence InterDigital presents in support of its claim that ZTE is

liable for induced infringement of the ‘406 patent parallel the arguments and evidence presented

with respect to Nokia. Compare Compls. Br. at 185-86, with id. at 188-90. Respondents’

answer to those allegations is also the same. See Resps. Br. at 227-28; Resps. Reply at 19. It is

determined that InterDigital has adduced evidence showing by a preponderance of the evidence

that ZTE is liable for induced infringement of the ‘406 patent in the event that direct

infringement is found.

b. Contributory Infringement

As an initial matter, it was detennined above that there is no direct infringement of any of

the asserted claims of the ‘406 patent, which is a prerequisite to a finding that Respondents are

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liable for contributory infringement. If, however, it were determined that the accused WCDMA

and CDMA2000 products directly infringe the ‘406 patent, then the record evidence shows that

Respondents would be liable for contributory infringement.

The record evidence shows that the accused products at issue in this investigation are

components of an apparatus for use in practicing the claimed method in the ‘406 patent, and

constitute material parts of the claimed invention. See CX-1310C (Prucnal WS) at Q2542-2546.

The Nokia products are especially made or adapted for use in practicing the claimed

methods of the ‘406 patent, as indicated by their compliance with the WCDMA and CDMA2000

standards as described above. See, e.g., CX-1054C (July 10, 2012 Nokia’s Supp. Resps. to

InterDigital’s lst Set of Interrogs. (Nos. 8, 38 and 61) at 6-110; Exhibit CX-0289C (Chart

Showing Nokia WCDMA Devices Using Qualcomm Baseband Processors); CX-1068C (Supp.

Exhibit A to Nokia’s Response to Interrog. No. 11, 8/17/2012); CX-0293C (Chart Showing

Nokia WCDMA Devices Using Nokia/TI Processors); see also, e.g., CX-0151C (Nokia Booklet

3G User Guide); CX-0152C (Nokia Lumina 900 Detailed Specifications); CX-0153C (Device

Details Nokia Lumina 810); CX-0154C (Device Details Nokia Lumina 820); CX-0155C (Device

Details Nokia Lumina 822); CX-0158C (Nokia Academy Product Data Sheet Nokia Lumina

710); CX-0159C (Nokia Care Academy, Product Data Sheet Nokia Lumina 800); CX-0160C

(Test Plan for RM-817); CX-0161C (Nokia RM-817 Product Certification Plan); CX-0290C

(Device Details Nokia Lumia 920).

Based on the record evidence, it is determined that there are no substantial non-infringing

uses for the Nokia accused products with respect to the ‘406 patent. Any use of the Nokia

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accused products WithoutWCDMA/CDMA2000 functionality enabled would deprive users of

the benefit that the products were intended to provide.”

Similarly, the Huawei products are also especially made or adapted for use in practicing

the claimed methods of the ‘406 patent. See, e.g., [CX-1111C

CX-1112C

cx-11130

l

As for ZTE, their accused products are also especially made or adapted for use in

practicing the claimed methods of the ‘406 patent.” See, e.g., CX-1138C (ZTE’s Corrected

Amended Supp. Resps. to InterDigital’s Interrog. No. 11); CX-1140C (ZTE’s Supp. Resps. and

Objections to InterDigital’s Interrog. No. 38); CX-1152C (ZTE’s Objections and Resps. to

InterDigital’s 2nd Set of Requests for Admission (Nos. 103-610)).

Moreover, as discussed above, Respondents have known since at least July 26, 2011,

when lnterDigital filed the complaint in this investigation, that their products are alleged to

infringe the ‘406 patent.

32Nevertheless, Respondents argue that some, but not all, of Nokia’s products are sold with

WLAN disabled. See Resps. Reply at 193 & n.53 (citing RX-3998C (Bims WS) at Q443, Q545)

(concerning the Nokia Pureview 808 products). In the event that the Commission were to

reverse the decision of the administrative law judge so as to find infringement by Nokia

products, the Commission may still find that indirect infringement has not occurred with respect

to Nokia’s Pureview 800 products.

33Respondents argue that some, but not all, of ZTE’s products are sold with WLAN disabled.

See Resps. Reply at 193 & n.53 (citing RX-3998C (Bims WS) at Q443, Q545) (concerning the

ZTE‘s Warp products). In the event that the Commission were to reverse the decision of the

administrative law judge so as to find infringement by ZTE products, the Commission may still

find that indirect infringement has not occurred with respect to ZTE’s Warp products.

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Therefore, in the event that the accused products are found to infringe the ‘406 patent, it

is determined that Respondents’ importation and sale of the accused products contribute to the

direct infringement of the infringed claims.

D. Validity

1. Priority Date

The ‘406 and ‘332 patents claim priority to U.S. Provisional Patent Application No.

60/000,775 (“the ‘775 Provisional”), which was filed on June 30, 1995. JX-0001 (‘406 patent) at

col. 1, lns. 8-16; JX-0002 (‘332 patent) at col. 1, lns. 7-16; JX-0026 (‘775 Provisional). For the

reasons explained below, the ‘775 Provisional discloses the asserted claims of the ‘406 and ‘332

patents in a manner consistent with the requirements of 35 U.S.C. § 112, 111. Accordingly, the

‘406 and ‘332 patents have an effective filing date of June 30, 1995 under 35 U.S.C. § 120.

The effective filing date of the ‘406 and ‘332 patents is a key issue in this investigation,

inasmuch as Respondents have argued that two post-provisional references (Odenwalder ‘230

and ‘500) invalidate the asserted claims. InterDigital therefore bears the burden of coming

forward with evidence supporting an effective filing date of June 30, 1995. See Tech. Licensing

Corp. v. Videoiek, Inc., 545 F.3d 1316, 1327-28 (Fed. Cir. 2008).

The parties dispute whether the ‘775 Provisional discloses one element in each of the

asserted claims. The four implicated claim elements are: (i) wherein the transmission power

level of the traffic channel and the reverse control channel are different, (ii) separately adjusting

the transmission power level of the traffic channel and the reverse control channel, (iii) power

control bits that are included on only one of an in-phase (I) channel or a quadrature (Q) channel,

and (iv) power control bits are included on only one of the I pre-spread channel or the Q

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pre-spread channel. The following discussion addresses these limitations first, then turns to

showing support in the ‘775 Provisional for the remaining limitations of the asserted claims.

a. Disputed Elements of the Asserted Claims

The ‘775 Provisional refers to base stations as radio carrier stations (RCSs) and to

subscriber units as FSUs (or, less frequently, as MSUs). See JX-0026 (‘775 Provisional) at 2, 6,

8. Figure 15 of the ‘775 Provisional describes the transmitter section of an enhanced modem

(E-Modem) in the modem interface unit (MIU) of a base station (RCS). JX-0026 (‘775

Provisional) at 42, NK800IDC07356894; Williams Tr. 1228-1229. Figure l6 is the receiver

portion of the same E-Modem. JX-0026 (‘775 Provisional) at 42, NK800IDC07356895. Dr.

Prucnal testified that the ‘775 Provisional teaches in at least two places that the same E-Modem

is used in subscriber units (SUs). Prucnal Tr. 2020-2025, 2027-2029, 2064-2065; see also

CX-1525C (Prucnal RWS) at Q117 (discussing CDX-0008.0001 and JX-0026 (‘775 Provisional)

at 42, 131). More specifically, in the section providing a detailed structural description of the

subscriber unit, the ‘775 Provisional states that the subscriber unit “includes . . . a modem section

(as described as the modem in the MIU of the RCS).” JX-0026 (‘775 Provisional) at 131.

Moreover, under the heading “Enhanced Modem Overview” in the section titled “The CDMA

Modem,” the ‘775 Provisional states that “[t]he e-modem has a common interface to support all

types of FSUs 106 as well as the MIU 1218.” JX-0026 at 42. Accordingly, as a person of

ordinary skill in the art at the time of the inventions would have understood, the ‘775 Provisional

describes that the E-Modem transmitter and receiver sections illustrated in Figures 15 and 16,

and described elsewhere in the ‘775 Provisional, are included in both subscriber units and base

stations. Prucnal Tr. 2020-2025, 2027-2029, 2064-2065; CX-1525C (Prucnal RWS) at Q117.

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i. The “wherein the transmission power level of the traffic

channel and the reverse control channel are different”

Limitation (‘406Patent)

The ‘775 Provisional supports the limitation “wherein the transmission power level of the

traffic channel and the reverse control channel are different” of claims 6, 13, 20, and 26 of the

‘406 patent. CX-1525C (Prucnal RWS) at QI26-131, Q476-485 (referencing CDX-0008.0023).

Respondents argue that the ‘775 Provisional does not support this limitation for two reasons: (i)

power levels of the channels do not differ in response to a power control bit and (ii) the

supporting figures and corresponding text identified by InterDigital relate to a base station

instead of a subscriber unit. See RX-3529C (Williams WS) at Q199. The evidence is to the

contrary.

First, as explained above with respect to the discussion regarding the construction of this

limitation, this limitation does not require different transmission power levels in response to a

power control bit. Second, Figure 15 of the ‘775 Provisional shows an E-Modem transmitter that

transmits traffic channels (Bl and B2) and a control channel (D channel multiplexed with power

control information RAPC). See JX-0026 (‘775 Provisional) at 42-43, NK800IDC07356894.

The ‘775 Provisional describes that each channel is combined at a programmable weight, such as

in Combiner 1524 of Figure l5. Id. at 43. The ‘775 Provisional also describes that the control

channel can be sent at a lower transmission power level compared to the traffic channels because

the power control information is overhead and, unlike traffic data, can be received in error

occasionally (referred to as a higher bit error rate). Id. at 21, 79.

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ii. The “separately adjusting the transmission power level

of the traffic channel and the reverse control channel”

Limitation (‘406 Patent)

The ‘775 Provisional supports the limitation “separately adjusting the transmission power

level of the traffic channel and the reverse control channel” from claim 29 of the ‘406 patent.

CX-1525C (Prucnal RWS) at Q268-275, Q502-505 (referencing CDX-0008.0024). Respondents

argue that the ‘775 Provisional does not support this limitation largely for the same two reasons

as the different power level limitation: (i) there is no separate power adjustment of the channels

in response to a power control bit and (ii) the supporting figures and corresponding text

identified by InterDigital relate to a base station instead of a subscriber unit. See RX-3529C

(Williams WS) at Q2l0. These arguments are not supported by the evidence. First, as explained

above with respect to the claim construction of the asserted claims, this limitation does not

require separate adjustment in response to a power control bit. Second, it is undisputed that the

E-Modem Colnbiner in Figure 15 separately adjusts the transmission power level of the traffic

and control channels by Weighingthese channels with respective programmable Weights and then

combining them. See JX-0026 (‘775 Provisional) at 43; CX-1525C (Prucnal RWS) at Q502,

Q504; RX-3529C (Williams WS) at Q199. As explained at the beginning of the discussion

regarding priority, Figure 15 and corresponding text in the ‘775 Provisional describe the EModem transmitter in both subscriber units and base stations.

iii. The “power control bits that are included on only one of

an in-phase (I) channel or a quadrature (Q) channel”

Limitation (‘332 Patent)

The ‘775 Provisional supports the limitation “power control bits that are included on only

one of an in-phase (I) channel or a quadrature (Q) channel” found in claims 2-4 and 7 of the ‘332

patent, as well as and analogous limitation in claims 22-24 and 27. CX-1525C (Prucnal RWS) at

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Q5195-32 (including demonstratives), Q299-304, Q437-438. The ‘775 Provisional discloses two

embodiments of this limitation in the context of a subscriber unit e-modem in or relating to

Figure 15 and corresponding text. CX-1525C (Prucnal RWS) at Q527-528 (describing time and

code multiplexed embodiments); CX-l525.1C (Prucnal RWS Errata) at 3; CDX-OO08.0017.

Respondents argue that the ‘775 Provisional does not support this limitation for three reasons: (i)

the supporting figures and corresponding text identified by InterDigital relate to a base station

instead of a subscriber unit, (ii) there are no I and Q channels to the left of Combiner 1524 in

Figure 15, and (ii) assuming that the outputs of multiplexer 1520 are I and Q channels, the power

control bits would not necessarily be included on only one of those outputs. See RX-3529C

(Williams WS) at Q155-181. The evidence demonstrates otherwise.

First, Figure 15 and corresponding text describe the E-Modem transmitter in both

subscriber units and base stations as explained above.

Second, as discussed above regarding the construction of the disputed claim terms for this

patent, Respondents misconstrue the terms I and Q channels as referring only to components of a

transmitted analog radiofrequency (“RF”) QPSK signal or, at most, the digital signals that get

upconverted to analog RF components. See, e.g., RX-3 529C (Williams WS) at QIOO. There is

no indication in the ‘775 Provisional that the terms I and Q channels are so limited, particularly

given that the outputs of Combiner 1524 in Figure 15 are labeled I and Q, but are not RF

components. See JX-0026 (‘775 Provisional) at NK800IDC07356894. As InterDigital’s expert

Dr. Prucnal explained in his witness statement and at the hearing, the ‘332 patent consistently

refers to I and Q channels more broadly. For example, claim 21 distinguishes I and Q

components of the transmitted RF signal from I and Q channels in the digital domain. Prucnal

Tr. 345; JX-0002 (‘332 patent) at col. 102, lns. 45-51. Figure 14 includes '/1-rateconvolutional

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encoders, the output of which the specification describes, and Figure 16 shows, as in-phase (I)

and quadrature (Q) channels. See, e.g., Prucnal Tr. 356-359; JX-0002 (‘33Z patent) at Fig.16;

col. 45, lns. 13-21; CX-1525C (Prucnal RWS) at Q518; CX-l525.1C (Prucnal RWS Errata) at 3.

In addition, Dr. Prucnal explained that the following language from the specification describes

the inputs to complex spreading (known also as complex multiplication or scrambling) in Figure

14 as QPSK signals comprised of in-phase (I) and quadrature (Q) charmels:

The logical channels are initially converted to QPSK signals, which are

mapped as constellation points as is well known in the art. The in-phase

and quadrature channels of each QPSK signal form the real and imaginary

parts of the complex data value. Similarly, two spreading codes are used

to form complex spreading chip values. The complex data are spread by

being multiplied by the complex spreading code.

Prucnal Tr. 346-349, 352; see JX-0002 (‘332 patent) at col. 23, lns. 61-67. The evidence shows

that power control bits (labeled APC) are included on a single spreader input in Figure 14 and

thus included on only one of an in-phase or quadrature channel of the QPSK signal. See, e.g.,

CX-1525C (Prucnal RWS) at Q514, Q518; CX-1525.1C (Errata) at 3. The specification even

explicitly describes an embodiment having “APC information on, for example, the in-phase

channel and the OW information on the quadrature channel of the QPSK signal.” JX-0002 (‘332

patent) at col. 67, lns. 61-64; Williams Tr. 1225. Thus there is overwhelming evidence regarding

the broad meaning of I and Q channels in the context of the ‘332 patent claims, and specifically

as these tenns concern inputs to complex spreading (i.e., complex multiplication or scrambling).

Third, Respondents argue that the power control information (labeled RAPC) in Figure

15 is not necessarily included on only one of the multiplexor outputs. See RX-3529C (Williams

WS) at Q171. This argument, however, is contradicted by Dr. Prucnal’s explanation as to why

and how the power control infonnation would be included on only one of the multiplexor

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outputs. See CX-1525C (Prucnal RWS) at Q5l9-527; CX-1525.1C (Prucnal RWS Errata) at 3.

Dr. Prucnal discussed a person of ordinary skill in the art’s understanding that multiplexors

combine multiple inputs to form a single output, as well as engineering textbooks that support his

opinion. See id. (discussing RX-3453 (Introduction to Electronics), RX-3452 (Fundamentals of

Digital Logic), and RX-0924 (Digital Communications)); CX-1525.1C (Errata) at 3; Prucnal Tr.

2030, 2035-2038 (discussing CDX-0008.0007 to .0009). According to Dr. Prucnal, the power

control information would necessarily be included on only one of the multiplexor outputs and

thus on only one of an in-phase (I) or quadrature (Q) channel. See CX-1525C (Prucnal RWS) at

Q5l 9-527; CX-l525.1C (Prucnal RWS Errata) at 3. A contrary result, Dr. Prucnal explained,

would require demultiplexing or creating copies of the power control infonnation. See, e.g.,

Prucnal Tr. at 2040, 2041, 2043, 2048-2049.

Furthermore, Dr. Prucnal described a second (preferred) embodiment in the ‘775

Provisional for which power control bits are included on only one of an in-phase (I) or

quadrature (Q) channel. See CX-1525C (Prucnal RWS) at Q528-532 (discussing

CDX-O008.00ll to .0016). The ‘775 Provisional states that “the preferred way is to put [power

control] on a code multiplexed channel because it allows you to eliminate the latency or the

delay that’s involved in time multiplexing.” JX-0026 (‘775 Provisional) at 114. Referring to

this “code multiplexing approach,” the ‘775 Provisional also states that “putting the power

control on its own code is unique.” JX-0026 (‘775 Provisional) at 21. Both Drs. Prucnal and

Williams testified that this description refers to putting power control on its own spreading code.

See CX-1525C (Prucnal RWS) at Q528; RX-3529C (Williams WS) at Ql57-158. In other

words, Figure 15 would be modified to show RAPC input to its own spreader rather than to

multiplexor 1520. See, e.g., CX-1525C (Prucnal RWS) at Q528. In this embodiment, the power

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control information would be included on a single input to a spreader, and thus on only one of an

I or Q channel, as shown in CDX-O0O8.0015and compared with Figure 14 of the ‘332 patent in

CDX-00080016. See CX-1525C (Prucnal RWS) at Q528.

iv. The “power control bits are included on only one of the

I pre-spread channel or the Q pre-spread channel”

Limitation (‘332 Patent)

The ‘775 Provisional supports the limitation “power control bits are included on only one

of the I pre-spread channel or the Q pre-spread channel” found in claims 8-11 and 14 of the ‘332

patent. CX-1525C (Prucnal RWS) at Q537-546. Respondents argue that the ‘775 Provisional

does not support this limitation by cross-referencing their arguments made regarding the other

’332 patent asserted claims and arguing specifically that none of the charmels prior to the

spreaders in Figure 15 are I or Q channels. See RX-3529C (Williams WS) at Q187. These

arguments fail for all of the reasons discussed above in the context of these other ‘332 patent

asserted claims. Moreover, as Dr. Prucnal explained, the ‘775 Provisional describes that the

spreading codes applied by Spreaders 1522 to the traffic and control channels can be complex or

real sequences. CX-1525C (Prucnal RWS) at Q542-546; see JX-0026 (‘775 Provisional) at

81-82, Fig.15, NK80OIDC07356894, NK80OIDC07357590. This fact is significant because, as

Dr. Prucnal explained, the Spreader outputs must be I and Q channels in order for the Combiner

outputs to be I and Q channels, and they are labeled as such. CX-1525C (Prucnal RWS) at Q546

(“A combiner combines, and in this case weights signals, but a combine[r] does not create I and

Q channels”). “The only way to obtain I and Q outputs from multiplying a real sequence is to

have a complex-valued input. Therefore the two inputs into the spreaders are I and Q pre-spread

channels.” Id. In short, starting from the 1/2-rateconvolutional encoders and moving right or

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starting from the combiner outputs and moving left, a person of ordinary skill in the art would

understand that the intermediate arrows in Figure 15 are in-phase (I) or quadrature (Q) channels.

b. Undisputed Elements of the Asserted Claims

The parties do not dispute that the ‘775 Provisional supports the remaining elements of

the asserted claims of the ‘406 and ‘332 patents. The parties also do not dispute that the ‘775

Provisional discloses the claimed “power control bits” under either both parties’ proposed

construction, including the construction adopted above. JX-0026 (‘775 Provisional) at 79;

CX-1525C (Prucnal RWS) at Q89-92.

i. ‘406 Patent —Claim 6

The ‘775 Provisional discloses claim 6 of the ‘406 patent. CX-1525C (Prucnal RWS) at

Q93-143. The ‘775 Provisional discloses “[a] method for controlling transmission power levels

of a code division multiple access (CDMA) subscriber unit.” IX-0026 (‘775 Provisional) at

80-81; CX-1525C (Prucnal RWS) at Q94-103. The ‘775 Provisional discloses “receiving by the

subscriber tmit a power control bit on a downlink control channel, the power control bit

indicating either an increase or decrease in transmission power level.” JX-0026 (‘775

Provisional) at 79; CX-1525C (Prucnal RWS) at Q104-ll1. The ‘775 Provisional discloses

“transmitting a plurality of channels by the subscriber unit, the plurality of channels including a

traffic channel and a reverse control channel.” JX-0026 (‘775 Provisional) at

NKSOOIDCO7357102; CX-1525C (Prucnal RWS) at Q1l2-117. The ‘775 Provisional discloses

“in response to the received power control bit, adjusting a transmission power level of both the

traffic channel and the reverse control channel.” JX-0026 (‘775 Provisional) at 33, 127, and

NK80OIDC0735689l; CX-1525C (Prucnal RWS) at Q118-125. The next element from claim 6,

“wherein the transmission power level of the traffic channel and the reverse control channel are

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different” is disputed and is disclosed by the ‘775 Provisional as explained previously. The ‘775

Provisional discloses “transmitting the traffic channel and the reverse control channel at their

respective adjusted transmit power levels.” JX-0026 (‘775 Provisional) at 42, 43, 131, and

NK8OOIDCO7356894;CX-1525C (Prucnal RWS) at Q132-135. The ‘775 Provisional discloses

“wherein the reverse control channel carries at least one power command.” JX-0026 (‘775

Provisional) at 42, 43, 131 and NK800IDC07356894; CX-1525C (Prucnal RWS) at Q138-143.

ii. ‘406 Patent —Claim 13

The ‘775 Provisional discloses claim 13 of the ‘406 patent. CX-1525C (Prucnal RWS) at

Q144-180. The ‘775 Provisional discloses “A method for controlling transmission power levels

of a code division multiple access (CDMA) subscriber unit.” IX-0026 (‘775 Provisional) at

80-81; CX-1525C (Prucnal RWS) at Q145, Q94-103. The ‘775 Provisional discloses “receiving

by the subscriber unit a series of power control bits on a downlink channel, each power control

bit indicating either an increase or decrease in transmission power level.” JX-0026 (‘775

Provisional) at 77; CX-1525C (Prucnal RWS) at Ql47-156. The ‘775 Provisional discloses

“transmitting a plurality of channels by the subscriber unit, the plurality of channels including a

traffic channel and a reverse control charmel.” JX-0026 (‘775 Provisional) at 1

NK800lDC07357102; CX-1525C (Prucnal RWS) at Q157-158, Q112-117. The ‘775 Provisional

discloses “adjusting a transmission power level of both the traffic channel and the reverse control

channel in response to the same bits in the received series of power control bits.” JX-0026 (‘775

Provisional) at 74-75, 77, NK8O0IDC07356915; CX-1525C (Prucnal RWS) at Ql59-172. The

next element from claim 13, “wherein the transmission power level of the traffic channel and the

reverse control channel are different” is disputed and is disclosed by the ‘775 Provisional as

explained previously. The ‘775 Provisional discloses “transmitting the traffic channel and the

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reverse control channel at their respective adjusted transmit power levels.” JX-0026 (‘775

Provisional) at 42, 43, 131, and NK800IDC07356894; CX-1525C (Prucnal RWS) at Q175-176,

Q132-135. The ‘775 Provisional discloses “wherein the reverse control channel carries at least

one power command.” JX-0026 (‘775 Provisional) at 42, 43, 131 and NK800IDC07356894;

CX-1525C (Prucnal RWS) at Q179-180, Q138-142.

iii. ‘406 Patent —Claim 20

The ‘775 Provisional discloses claim 20 of the ‘406 patent. CX-1525C (Prucnal RWS) at

Q181-224. The ‘775 Provisional discloses “[a] code division multiple access (CDMA)

subscriber Lmit.” JX-0026 (‘775 Provisional) at 6, 16, NK8()0IDC07356861-862; CX-1525C

(Prucnal RWS) at Ql82-185. The ‘775 Provisional discloses “a despreading and demultiplexing

device configured to recover a power control bit from a downlink control channel, wherein the

power control bit has a value indicating a command to either increase or decrease transmission

power level.” JX-0026 (‘775 Provisional) at 74-75, NK8O0IDC073569l5; CX-1525C (Prucnal

RWS) at Q186-199. The ‘775 Provisional discloses “gain devices configured, in response to the

received power control bit, to adjust a transmission power level of both a traffic channel and a

reverse control channel prior to transmission by the subscriber unit.” JX-0026 (‘775 Provisional)

at 33, 127, or NK8OOIDC0735689l; Williams Tr. 1221-1222; CX-1525C (Prucnal RWS) at

Q200-218, Q506-513; CX-l525.lC (Prucnal RWS Errata) at 2-3; CX-1401 (CGYl20

Description); Williams Tr. 1222, 1223; CX-1456 (Williams Multiple Stage Amplifier Drawing);

CX-1405 (HP GaAs MMIC Amplifiers), CX-1404 (Agilent GaAs MMIC Amplifiers), CX-1403

(Technical and Commercial Aspects of GaAs MMICs), CX-1406 (RF Amplifier Design). The

next element from claim 20, “wherein the transmission power level of the traffic channel and the

reverse control channel are different” is disputed and is disclosed by the ‘775 Provisional as

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explained previously. The ‘775 Provisional discloses “wherein the reverse control channel

carries at least one power command.” IX-0026 (‘775 Provisional) at 42, 43, 131, and V

NK800IDCO7356894; CX-1525C (Prucnal RWS) at Q223-224, Q138-142.

iv. ‘406 Patent —Claim 26

The ‘775 Provisional discloses claim 26 of the ‘406 patent. CX-1525C (Prucnal RWS) at

Q225-258. The ‘775 Provisional discloses “[a] code division multiple access (CDMA)

subscriber unit.” JX-0026 (‘775 Provisional) at 6, 16, NK800IDC07356861-862; CX-1525C

(Prucnal RWS) at Q225, Q182-185. The ‘775 Provisional discloses “a despreading and

demultiplexing device configured to recover a series of power control bits from a downlink

channel, wherein each power control bit has a value indicating a command to either increase or

decrease transmission power level.” JX-0026 (‘775 Provisional) at 74-75, NK800IDC07356915;

CX-1525C (Prucnal RWS) at Q226-241. The ‘775 Provisional discloses “gain devices

configured, in response to the received series of power control bits, to adjust a transmission

power level of both a traffic channel and a reverse control channel in response to same bits in the

received series of power control bits prior to transmission by the subscriber unit.” JX-0026 (‘775

Provisional) at 33, 127, or NK800IDCO7356891; Williams Tr. 1221-1222; CX-1525C (Prucnal

RWS) at Q242-243, Q200-218, Q506-513; CX-1525.1C (Prucnal RWS Errata) at 2-3; CX-1401

(CGY12O Description); Williams Tr. 1222, 1223; CX-1456 (Williams Multiple Stage Amplifier‘

Drawing); CX-1405 (HP GaAs MMIC Amplifiers); CX-1404 (Agilent GaAs MMIC Amplifiers);

CX-1403 (Technical and Commercial Aspects of GaAs MMlCs); CX-1406 (RF Amplifier

Design). The next element from claim 26, “wherein the transmission power level of the traffic

channel and the reverse control channel are different” is disputed and is disclosed by the ‘775

Provisional as explained previously. The ‘775 Provisional discloses “wherein the downlink

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channel is a downlink control channel.” JX-0026 (‘775 Provisional) at 74-75, 80-81; CX-1525C

(Prucnal RWS) at Q249-254, Q186-199. The ‘775 Provisional discloses “wherein the reverse

control channel carries at least one power command.” JX-0026 (‘775 Provisional) at 42, 43, 131

and NK800IDC07356894; CX-1525C (Prucnal RWS) at Q257-258, Q138-142.

v. ‘406 Patent - Claim 29

The ‘775 Provisional discloses claim 29 of the ‘406 patent. CX-1525C (Prucnal RWS) at

Q259-277. The ‘775 Provisional discloses “A method for controlling transmission power levels

of a code division multiple access (CDMA) subscriber unit.” JX-0026 (‘775 Provisional) at

80-81; CX-1525C (Prucnal RWS) at Q26O-261, Q94-103. The ‘775 Provisional discloses

“receiving by the subscriber unit a power control bit on a downlink control channel, the power

control bit indicating either an increase or decrease in transmission power level.” JX-0026 (‘775

Provisional) at 77; CX-1525C (Prucnal RWS) at Q262-263, Ql47-156. The ‘775 Provisional

discloses “transmitting a plurality of channels by the subscriber unit, the plurality of channels

including a traffic channel and a reverse control channel.” JX-0026 (‘775 Provisional) at

NK800lDC()7357102; CX-1525C (Prucnal RWS) at Q264-65, Q112-117. The ‘775 Provisional

discloses “in response to the received power control bit, adjusting a transmission power level of

both the traffic channel and the reverse control channel.” IX-0026 (‘775 Provisional) at 33, 127,

NK8O0IDC07356891; CX-1525C (Prucnal RWS) at Q266-267, Q200-218; CX-1525.lC

(Prucnal RWS Errata) at 2. The next element from claim 29, “separately adjusting the

transmission power level of the traffic channel and the reverse control channel” is disputed and is

disclosed by the ‘775 Provisional as explained above. The ‘775 Provisional discloses

“transmitting the traffic channel and the reverse control channel at their respective adjusted

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transmit power levels.” JX-0026 (‘775 Provisional) at 42, 43, 131, and NK8OOIDC07356894;

CX-1525C (Prucnal RWS) at Q276-277, Q132-135.

vi. ‘332 Patent —Claim 2

The ‘775 Provisional discloses claim 2 of the ‘332 patent. CX-1525C (Prucnal RWS) at

Q283-317. The ‘775 Provisional discloses “[a] code division multiple access subscriber unit.”

JX-0026 (‘775 Provisional) at 6, 16, NK800ITC07356861-862; CX-1525C (Prucnal RWS) at

Q283-287. The ‘775 Provisional discloses “a circuit, operatively coupled to the antenna,

configured to generate power control bits." IX-0026 (‘775 Provisional) at 43, 131,

NK8OOIDCO7356895;CX-1525C (Prucnal RWS) at Q288-298. As explained above, the

disputed limitation from claim 2, power control bits that “are included on only one of an in-phase

(I) channel or a quadrature (Q) channel” is disclosed by the ‘775 Provisional. The ‘775

Provisional discloses “the antenna configured to output a radio frequency signal derived at least

in part from the I and Q channels.” JX-0026 (‘775 Provisional) at 42-43, 131,

NK80OIDC07356894; CX-1525C (Prucnal RWS) at Q305-307. The ‘775 Provisional discloses

“wherein the circuit is further configured to combine the I and Q channels with a complex

sequence.” JX-0026 (‘775 Provisional) at 42-43, 81-82, 131, NK800IDC07356894,

NK80OIDC07357590; CX-1525C (Prucnal RWS) at Q311-317.

vii. ‘332 Patent —Claim 3

Claim 3 of the ‘332 patent depends from claim 2, disclosed as stated previously.

CX-1525C (Prucnal RWS) at Q318-320. The ‘775 Provisional discloses “wherein the

combining is by multiplication.” JX-0026 (‘775 Provisional) at 81-82, NK8OOIDCO7356894,

NK800IDC07357590; CX-1525C (Prucnal RWS) at Q321-327.

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viii. ‘332 Patent —Claim 4

Claim 4 of the ‘332 patent depends from claim 2, disclosed as shown above. CX-1525C

(Prucnal RWS) at Q328-330. The ‘775 Provisional discloses “wherein the complex sequence

comprises at least two pseudo noise sequences.” JX-0026 (‘775 Provisional) at 44, 46,

NK800IDC07356897; CX-1525C (Prucnal RWS) at Q331-337.

ix. ‘332 Patent —Claim 7

Claim 7 of the ‘332 patent depends from claim 1, disclosed as shown above. CX-1525C

(Prucnal RWS) at Q338-340. The ‘775 Provisional discloses “wherein the circuit is further

configured to generate pilot bits; wherein the radio frequency signal is derived at least in part

fiom the pilot bits.” JX-0026 (‘775 Provisional) at 42-43, 131, NK800IDC07356894;

CX-1525C (Prucnal RWS) at Q341-347; CX-1525.lC (Prucnal RWS Errata) at 2-3.

X. ‘332 Patent —Claim 8

The ‘775 Provisional discloses claim 8 of the ‘332 patent. CX-1525C (Prucnal RWS) at

Q348-380. The ‘775 Provisional discloses “[a] code division multiple access subscriber unit.”

JX-0026 (‘775 Provisional) at 6, 16, NK800ITC0735686l-862; CX-1525C (Prucnal RWS) at

Q349-350, Q283-287. The ‘775 Provisional discloses “an antenna configured to receive a first

radio frequency signal.” JX-0026 (‘775 Provisional) at 131, NK800IDC07356941; CX-1525C

(Prucnal RWS) at Q35l-357. The ‘775 Provisional discloses “a circuit, operatively coupled to

the antenna, configured to generate power control bits in response to the first radio frequency

signal.” JX-0026 (‘775 Provisional) at 43, 131, NK800IDC07356895; CX-1525C (Prucnal

RWS) at Q358-366. The ‘775 Provisional discloses “wherein the circuit is further configured to

establish an in-phase (I) pre-spread channel and a quadrature (Q) pre-spread channel.” JX-0026

(‘775 Provisional) at 42-43, 131, NK800lDC07356895; JX-0002 (‘332 patent) col. 45, lns.

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13-22; CX-1525C (Prucnal RWS) at Q367-377, 518; CX-1525.1C (Prucnal RWS Errata) at 3.

The remainder of this element, “such that the power control bits are included on only one of the I

pre-spread channel or the Q pre-spread channel,” is disputed and is disclosed as explained above.

The ‘775 Provisional discloses “wherein a second radio frequency signal output by the code

division multiple access subscriber unit is derived at least in part from the I and Q pre-spread

channels.” IX-0026 (‘775 Provisional) at 42, 43, 131, NK800IDCO7356894; CX-1525C

(Prucnal RWS) at Q 378-380.

xi. ‘332 Patent —Claim 9

Claim 9 of the ‘332 patent depends from claim 8, which is disclosed as stated above.

CX-1525C (Prucnal RWS) at Q38l-3 83. The ‘775 Provisional discloses “wherein the circuit is

further configured to combine the I and Q pre-spread channels with a complex sequence.”

JX-0026 (‘775 Provisional) at 42-43, 81-82, 131, NK800IDC07356894, NK800IDC07357590;

CX-1525C (Prucnal RWS) at Q384-390.

xii. ‘332 Patent —Claim 10

Claim 10 of the ‘332 patent depends from claim 9, which is disclosed as stated

previously. CX-1525C (Prucnal RWS) at Q39l-393. The ‘775 Provisional discloses “wherein

the combining is by multiplication.” JX-0026 (‘775 Provisional) at 81-82, NK8OOIDCO7356894,

NK8OOIDC07357590; CX-1525C (Prucnal RWS) at Q394-400.

xiii. ‘332 Patent —Claim 11

Claim 11 of the ‘332 patent depends from claim 9, which is disclosed as shown above.

CX-1525C (Pmcnal RWS) at Q40l-403. The ‘775 Provisional discloses “wherein the complex

sequence comprises at least two pseudo noise sequences.” JX-0026 (‘775 Provisional) at 44, 46,

NK800IDC07356897; CX-1525C (Prucnal RWS) at Q404-410.

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xiv. ‘332 Patent —Claim 14

Claim l4 of the ‘332 patent depends from claim 8, which is disclosed as shown above.

CX-1525C (Prucnal RWS) at Q411-413. The ‘775 Provisional discloses “wherein pilot bits are

included on at least one of the I and the Q pre-spread channels.” JX-0026 (‘775 Provisional) at

42-43, 131, NK800IDC07356894; CX-1525C (Prucnal RWS) at Q414-420.

xv. ‘332 Patent —Claim 22

The ‘775 Provisional discloses claim 22 of the ‘332 patent. CX-1525C (Prucnal RWS) at

Q42l-445. The ‘775 Provisional discloses “[a] code division multiple access subscriber unit.”

JX-0026 (‘775 Provisional) at 6, 16, NI(800ITC0735686l-862; CX-1525C (Prucnal RWS) at

Q422-423, Q283-287. The ‘775 Provisional discloses “circuitry configured to receive a first

radio frequency signal and generate power control bits in response to the first radio frequency

signal.” JX-0026 (‘775 Provisional) at 43, 131, NK800IDCO7356895; CX-1525C (Prucnal

RWS) at Q424-436. The ‘775 Provisional discloses “wherein the circuit is further configured to

establish an in-phase (I) channel and a quadrature (Q) channel.” JX-0026 (‘775 Provisional) at

42-43, 131, NK800IDC07356895; JX-0002 (‘332 patent) at col. 45, lns. 13-22; CX-1525C

(Prucnal RWS) at Q437-438, Q367-377. The remainder of this element, “wherein one of the I or

the Q channel includes the power control bits” is disputed and is disclosed by the ‘775

Provisional as explained above. The ‘775 Provisional discloses “wherein the circuitry is further

configured to produce a second radio frequency signal including an I component and a Q

component derived from the I channel and the Q channel.” JX-0026 (‘775 Provisional) at 42, 43,

131, NK800IDC07356894; CX-1525C (Prucnal RWS) at Q439-440, Q378-380. The ‘775

Provisional discloses “wherein the circuitry is further configured to transmit the second radio

frequency signal.” JX-0026 (‘775 Provisional) at 42-43, 131, NK8OOIDCO7356894;CX-1525C

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(Prucnal RWS) at Q305-307. The ‘775 Provisional discloses “wherein the circuitry is further

configured to combine the I and Q channels with a complex sequence.” JX-0026 (‘775

Provisional) at 42-43, 81-82, 131, NK800IDC07356894, NK800IDC07357590; CX-1525C

(Prucnal RWS) at Q446-447, Q311-317.

xvi. ‘332 Patent —Claim 23

Claim 23 of the ‘332 patent depends from claim 22, disclosed as stated above.

CX-1525C (Pnicnal RWS) at Q448-450. The ‘775 Provisional discloses “wherein the

combining is performed by multiplication.” IX-0026 (‘775 Provisional) at 80-81,

NK8O0IDC07356894, NK800IDC07357590; CX-1525C (Prucnal RWS) at Q451-452,

Q321-327.

xvii. ‘332 Patent —Claim 24

Claim 24 of the ‘332 patent depends from claim 22, disclosed as shown above.

CX-1525C (Prucnal RWS) at Q453-455. The ‘775 Provisional discloses “wherein the complex

sequence comprises at least two pseudo noise sequences.” JX-0026 (‘775 Provisional) at 44, 46,

NK800IDC07356897; CX-1525C (Prucnal RWS) at Q456-457, Q331-337.

xviii. ‘332 Patent —Claim 27

Claim 27 of the ‘332 patent depends from claim 21, disclosed above. CX-1525C

(Prucnal RWS) at Q458-460. The ‘775 Provisional discloses “wherein the circuitry is further

configured to generate pilot bits; wherein the second radio frequency signal is derived at least in

part from the pilot bits.” JX-0026 (‘775 Provisional) at 42-43, 131, NK80OIDCO7356894;

CX-1525C (Prucnal RWS) at Q461-462, Q341-347; CX-1525.1C (Prucnal RWS Errata) at 2.

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2. Anticipation and Obviousness

Respondents argue that the asserted claims of the ’406 patent are invalid based on three

primary references (Andermo-Brismark,34 Andermo-Ewerb1'ing,35and Tiedemann36) alone or

each in combination with a Dent37or Salmasi” reference. See GRl2 Filing at 7, 8. Respondents

have failed to show clearly and convincingly that the asserted claims are invalid because, at a

minimum, none of these references discloses or renders obvious the limitations (i) “the reverse

control channel carries at least one power command” or (ii) “separately adjusting the

transmission power level of the traffic channel and the reverse control channel.” As an initial

matter, all of these references were disclosed during prosecution of the ‘406 patent, and the

Tiedemann reference was cited by the examiner in an office action rejecting claims.” JX-0008

(‘406 file history) at IDC-ITC-0163 82231. Respondents do not contend that the primary

34RX-0717 (“Andermo-Brismark”) is titled, “CODIT, a Testbed Project Evaluating DS-CDMA

for UMTS/FPLMTS,” was written by PG Andermo and Gustav Brismark, and was available in

1994 through IEEE. See RX-3529C (Williams WS) at Q1486-1488. Since the article was

publicly available in 1994, the Andermo-Brismark reference qualifies as prior art under at least

35 U.S.C. § 102(a).

35RX-0721 (“And6I‘m0—EW6rbring”)is titled, “A CDMA-Based Radio Access Design for

UMTS,” was written by PG Andermo and Lars-Magnus Ewerbring, and was available in the

February 1995 issue of IEEE Personal Communications. RX-3529C (Williams WS) at Q1605­

1607. The Andenno-Ewerbring reference is therefore prior an under 35 U.S.C. § 102(a).

36U.S. Patent No. 5,604,730 to Tiedmann (RX-0731) (“the Tiedemann ‘730 patent” or

“Tiedemann”) Wasfiled July 25, 1994.

37U.S. Patent No. 5,377,183 (RX-0730) (“Dent” or “Dent 183”) is titled, “Calling Channel in

CDMA Conirnunications Systems,” and was filed by Paul Dent on April 11, 1994.

38RX-0718 (“Salmasi”) is an article written by Allen Salmasi and Klein Gilhousen titled, “On

the System Design Aspects of Code Division Multiple Access (CDMA) Applied to Digital

Cellular And Personal Communication Networks,” and was published in 1991.

39The clear and convincing burden “is especially difficult when the prior art was before the PTO

examiner dtuing prosecution of the application.” Hewlett-Packard C0. v. Bausch & Lomb Inc.,

909 F.2d 1464, 1467 (Fed. Cir. 1990).

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references disclose the first of these two limitations, relying instead on Dent or Salmasi to fill in

the missing piece. Williams Tr. 1232.

Respondents also argue that the asserted claims of the ‘332 patent are invalid based on

two primary references (Lucasm and Walton“) alone or in combination with each other or

Salmasi. Respondents have failed to show clearly and convincingly that the asserted claims are

invalid because none of these references discloses or renders obvious the following limitations:

(i) including power control bits on only one of an uplink in-phase (I) or quadrature (Q) channel,

(ii) including power control bits on only one of a pre-spread in-phase (I) or quadrature (Q)

channel, or (iii) combining these channels with a complex sequence. As an initial matter, Walton

and Salrnasi were disclosed during prosecution of the ‘332 patent. Walton in particular was

made of record in the examjner’s first rejection and mentioned explicitly in the examiner’s first

statement of reasons for allowance in April 2009, which the examiner cross-referenced in every

subsequent Notice of Allowability. JX-0009 (’332 file history) at IDC-ITC-016399573,

IDC-ITC-016400782, IDC-ITC-016401480. Furthermore, Respondents rely on Lucas for

allegedly disclosing the limitation of combining the I and Q [pre-spread] channels with a

complex sequence, even though Lucas teaches away from this limitation by advocating replacing

complex sequences with real ones. For these reasons, the asserted ‘332 patent claims are not

invalid.

Respondents further argue that asserted claims of both the ‘406 and ‘332 patents are

invalid based on two Odenwalder patent references that were filed almost a year after the ‘775

4°U.S. Patent 5,544,167 (RX-0696) to Lucas (“Lucas”) was filed on August 12, 1994, and is

therefore prior art to the ‘332 patent under 35 U.S.C. § l02(e).

4' U.S. Patent 5,621,723 (RX-0694) to Walton (“Walton”) was filed on June S, l995, and is

therefore prior art to the ‘332 patent under 35 U.S.C. § l02(e).

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Provisional was filed on June 30, 1995. Odenwalder ‘230 was filed on May 28, 1996, and

Odenwalder ‘S00 was filed on June 7, 1996. See RX-0695 (Odenwalder ‘230); RX-0729

(Odenwalder ‘500). As determined above, the asserted claims are entitled to an effective filing

date of June 30, 1995 based on priority to the ‘775 Provisional. Therefore, the Odenwalder

references are not prior art to the ‘406 and ‘332 patents and do not invalidate the asserted claims.

The following discussion first explains Whyclaims 6, 13, 20, and 26 of the ‘406 patent

are not invalid over the prior art, inasmuch as the asserted references do not disclose or render

obvious the claim limitation “the reverse control channel carries at least one power command.”

The discussion then tums to Respondents’ obviousness combinations for the asserted claims of

the ‘406 and ‘332 patents, and explores secondary considerations of nonobviousness.

a. The “reverse control channel carries at least one power

command” (‘406Patent) Limitation

Experts for the parties testified that Andenno-Brismark, Andermo-Ewerbring, and

Tiedemann do not disclose the limitation “the reverse control channel carries at least one power

command” as required by claims 6, 13, 20, and 26 of the ‘406 patent. See, e.g., Williams Tr.

1232; CX-1525C (Prucnal RWS) at Q627-646, Q655-666, Q720-727; RX-3529C (Williams WS)

at Q1525, Q1643, Q1825. Respondents argue that this limitation would have been obvious

based on each of these primary references in combination with Dent or Salmasi. See Resps. Br.

at 234-51. As Dr. Prucnal explained, however, Dent and Salmasi do not disclose this limitation,

and this limitation would not have been obvious at the time of the ‘406 invention based on Dent

or Salmasi in combination with Anderrno-Brismark, Andenno-Ewerbring, or Tiedemann. See,

e.g., CX-1525C (Prucnal WS) at Q627-639, Q655-666, Q681-687.

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Respondents argue that this limitation would have been obvious based on U.S. Patent No.

5,377,183 to Dent (RX-0730) (“Dent ‘183”) because Dent incorporates by reference an

application that issued as U.S. Patent No. 5,345,598 (RX-1680) (“Dent ‘598”) that allegedly

teaches a different “dynamic power control system.” See RX-3529C (Williams WS) at

Q1105-1107, Q1525; RX-3529.lC (Williams WS Errata) at 2. As an initial matter, Dent ‘183

discloses only an open loop (or duplex) power control system in which power is adjusted based

on received signal strength rather than a closed loop power control system. See, e.g., CX-1525C

(Prucnal RWS) at Q573, Q675, Q692; CX-1525.1C (Prucnal RWS Errata) at 3; RX-0730 (Dent

‘183) at col. 4, ln. 63 —col. 5, ln. 5. Respondents’ argument that Dent ‘183 incorporates the

dynamic power control system of Dent ‘598 is misguided, inasmuch as Dent ‘183 states the

following:

A duplex power control system is disclosed in “Duplex Power Control”,

U.S. patent application Ser. No. 07/866,554, filed Apr. 10, 1992, and is

incorporated herein by reference.

See RX-0730 (Dent ‘183) at col. 5, lns. 2-5; RX-3529C (Williams WS) at Q1107.

The statement of incorporation set forth in Dent ‘183 shows that only the “duplex power

control system” from Dent ‘598 is incorporated, and not a “dynamic power control system.” See,

e.g., CX-1525C (Prucnal RWS) at Q573; CX-l525.1C (Prucnal RWS Errata) at 3; see also Adv.

Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (“[T]he host

document must identify with detailed particularity what specific material it incorporates and

clearly indicate Wherethat material is found in the various documents”).

Moreover, Dent ‘598 does not disclose the claim limitation “the reverse control channel

carries at least one power command,” and instead teaches away from a dynamic power control

system. Dent ‘598, in discussing dynamic power control, discloses sending “a message to the

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base station including a measurement of signal strength” rather than a power command, even

though Dent ‘598 describes sending a command on the forward link. See RX-1680 (Dent ‘598)

at col. 2, lns. 22-41; CX-1525C (Prucnal RWS) at Q694, Q724, Q’/60. Dent ‘598 also does not

disclose sending this message on a reverse control channel. RX-1680 (Dent ‘598) at col. 2, lns.

22-41. Furthermore, Dent ‘598 discourages the use of closed loop power control bidirectional

messages:

The Dynamic Power Control technique has the disadvantage that it is slow

to react because of the cumbersome, bi-directional messages needed

between the base station and the mobile. The bi-directional signaling also

reduces the capacity or quality of the traffic channel.

RX-1680 (Dent ‘598) at col. 2, lns. 35-41.

Dent ‘S98 then states that “it would be desirable” to control power “without the need for

bidirectional power control messages between the base station and mobiles.” See RX-1680

(Dent ‘598) at col. 2, lns. 45-51; Williams Tr. 1233. The remainder of Dent ‘S98 discloses an

alternative system that uses only open loop power control, where power commands and power

control bits are not sent in either direction. See, e.g., CX-1525C (Pmcnal RWS) at Q695.

Accordingly, Dent ‘598 teaches away from a reverse control channel that carries at least one

power command, and there would have been no motivation to combine Dent, and specifically the

dynamic power control system, with any of the primary references, and any such combination

would not render the claim limitation obvious. See, e.g., id. at Q573, Q695-696, Q63l, Q659,

Q727; CX-1525.lC (PrucnalRWS Errata) at 3.

Respondents also argue that this limitation would have been obvious based on an article

authored by Allen Salmasi. RX-0718 (Salmasi); see, e.g., RX-3529C (Williams WS) at Q1108.

Salmasi, however, does not disclose a power command or sending a power command on a

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reverse control channel. See, e.g., CX-1525C (Prucnal RWS) at Q577, Q632-639. Salmasi, for

example, expressly distinguishes between a command and a request by describing a power

adjustment command on the forward link, but only a power adjustment request on the reverse

link. See RX-0718 (Salmasi) at 58, 60. ln addition, Figure l of Salmasi shows forward Traffic

Channels comprised of Traffic Data and a Mobile Power Control Subchannel, whereas Figure 2

shows only Reverse Traffic Channels without any mention of power control, a reverse control

channel, a reverse power control channel, or a Mobile Power Control Subcharmel. See id. at 58.

In other words, the presence of the Mobile Power Control Subchannel in Figure 1 and its absence

in Figure 2 shows that Salmasi never recognized the value of putting its power control requests

onto a reverse control channel. See, e.g., CX-1525C (Prucnal RWS) at Q577, Q634. Salmasi

teaches that, inasmuch as the power adjustment requests are transmitted only “once per vocoder

frame” on a reverse traffic channel, there is no need for a reverse control channel. See id.

Lastly, as detailed below in the context of each primary reference, even if Salmasi transmitted

power adjustment requests on a reverse control channel, Salmasi would not meet the other claim

limitations because (i) Salmasi describes power control infonnation on a subcharmel of the

downlink traffic channel and (ii) even if the power control requests were transmitted on a

subchannel of the reverse traffic channel, the transmission power level of the reverse traffic and

control channels would not be different. See, e.g., id. at Q578, Q635.

In addition, many of the primary references expressly limited power control commands to

the downlink. See, e.g., CX-1525C (Prucnal RWS) at Q565. Drs. Williams and Prucnal testified

that it is desirable for base stations to adjust their transmission power level to adapt to

enviromnental changes, such as for mobile stations to send a power command, and that is why

the accused products implement the claimed functionality. See RX-3529C (Williams WS) at

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Q1100; CX-1525C (Prucnal RWS) at Q566. Dr. Williams concluded that it therefore “would be

obvious for one of ordinary skill in the art to combine the teaching of [Dent and Salmasi] in the

CODIT system as described by any of the CODIT references,” i.e., Andermo-Brismark and

Andermo-Ewerbring. See RX-3529C (Williams WS) at Q1100. This conclusion is unfounded,

however, because the fact that these CODIT references expressly limited their systems to

sending power control infonnation on the downlink despite the advantages of including power

control information on the uplink supports Dr. Pmcnal’s position that the claim limitation would

not have been obvious. See, e.g., CX-1525C (Prucnal RWS) at Q566.

b. (‘406Patent) Andermo-Brismark Alone or in Combination

with Dent or Salmasi

The asserted claims of the ‘406 patent are not invalid based on Andermo-Brismark alone

or in combination with Dent or Salmasi at least for the reasons explained by Dr. Prucnal in his

Rebuttal Witness Statement. See CX-1525C (Prucnal RWS) at Q62l-648.

As summarized above, Andermo-Brismark, Salmasi, and Dent are all missing at least one

limitation from each asserted claim of the ‘406 patent. It is undisputed that Anderrno-Brismark

does not disclose that “the reverse control channel carries at least one power command” as

required by claims 6, l3, 20, and 26. Williams Tr. 1232; CX-1525C (Prucnal RWS) at

Q627-639. Andenno-Brismark expressly includes power commands only on the

forward/downlink despite acknowledging that “[i]n both the up- and down link, the radiated

power per user should be minimised, to minimise interference to others while maintaining an

acceptable link quality.” CX-1525C (Prucnal RWS) at Q628 (quoting RX-0717 (AndennoBrismark) at 23-24). Base station transmission power level, by contrast, “uses quality

measurements of the MSs” instead of power commands. RX-0717 (Andenno—Brismark)at 24.

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Thus this limitation would not have been obvious based on Andermo-Brismark alone or, as

explained above, in combination with Dent or Salmasi.

Anderrno-Brismark also does not disclose or render obvious “separately adjusting the

transmission power level of the traffic channel and the reverse control channel.” CX-1525C

(Prucnal RWS) at Q644-648. Respondents argue that Anderrno-Brismark discloses this

limitation because a traffic channel and control channel can have varying bit rates or spreading

factors. See RX-3529C (Williams WS) at Q1599-1602. As Dr. Prucnal explained, however, the

fact that two channels have different spreading factors and bit rates does not mean that their

transmission power levels are separately adjusted. CX-l 525C (Prucnal RWS) at Q645.

Moreover, the control channel in Andermo-Brismark, called PCCH, has a fixed spreading factor

and data rate (Zkb/s) and thus cannot be separately adjusted, even under Dr. Williams’s own

reasoning. Id. at 1]646 (citing RX-0717 (Andenno-Brismark) at 23).

Lastly, Andermo-Brismark also does not disclose or render obvious a “power control bit”

under the adopted construction. See CX-1525C (Prucnal RWS) at Q64O-643.

c. (‘406Patent) Andermo-Ewerbring Alone or in Combination

with Dent or Salmasi

The asserted claims of the ‘406 patent are not invalid based on Andermo-Ewerbring

alone or in combination with Dent or Salmasi at least for the reasons explained by Dr. Prucnal in

his Rebuttal Witness Statement. See CX-1525C (Prucnal RWS) at Q649-73. As an initial

matter, Anderrno-Ewerbring is very similar to Andenno-Brismark.

As summarized above, Andermo-Ewerbring, Salmasi, and Dent are all missing at least

one limitation from each asserted claim of the "406 patent. It is undisputed that AndermoEwerbring does not disclose the claim limitation “the reverse control channel carries at least one

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power command” as required by claims 6, 13, 20, and 26. Williams Tr. 1232; CX-1525C

(Prucnal RWS) at Q655-666. Andermo-Ewerbring expressly includes power commands only on

the forward/downlink despite acknowledging that “[i]n both the up- and down-link, the radiated

power per user should be minimized, to minimize interference to others while maintaining an

acceptable link quality.” CX-1525C (Prucnal RWS) at Q656 (quoting RX-0721 (AndermoEwerbring) at 52). Thus, this limitation would not have been obvious based on AndennoEwerbring alone or, as explained above, in combination with Dent or Salmasi.

Andermo-Ewerbring also does not disclose or render obvious the claim limitation

“separately adjusting the transmission power level of the traffic channel and the reverse control

channel.” CX-1525C (Prucnal RWS) at Q669-673. Respondents argue that AndermoEwerbring discloses this limitation because a traffic channel and control channel can have

varying bit rates or spreading factors. See RX-3529C (Williams WS) at Q1714-1722. As Dr.

Prucnal explained, however, the fact that two channels have different spreading factors and bit

rates does not mean that their transmission power levels are separately adjusted. CX-1525C

(Prucnal RWS) at Q67O. Moreover, the Andenno-Ewerbring control chatmel, called PCCH, has

a fixed spreading factor and bit rate and thus cannot be separately adjusted even under Dr.

Williams’s own reasoning. Id. at Q67l (citing RX-0721 (Andermo-Ewerbring) at 52).

Lastly, Andenno-Ewerbring also does not disclose or render obvious a “power control

bit” under the adopted construction. See CX-1525C (Prucnal RWS) at Q667-668.

d. (‘406Patent) Tiedemann Alone or in Combination with Dent

or Salmasi

The asserted claims of the ‘406 patent are not invalid based on Tiedemann alone or in

combination with Dent or Salmasi at least for the reasons explained by Dr. Prucnal in his

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Rebuttal Witness Statement. See CX-1525C (Prucnal RWS) at Q7l2-743; CX-l525.lC (Prucnal

RWS Errata) at 3. I

As an initial matter, each asserted claim of the ‘406 patent requires a subscriber unit

transmitting or configured to transmit a plurality of channels including a traffic channel and a

reverse control channel. The evidence does not show that the access chamiel taught by

Tiedemann is the claimed “control channel,” or that Tiedemann transmits the access channel at

the same time as a traffic channel (or a packet channel). See CX-1525C (Prucnal RWS) at

Q730-734; CX-l525.1C (Prucnal RWS Errata) at 3. Rather, Tiedemann sends an access channel

on the reverse link to initiate a call, followed by transmission of a traffic channel. CX-1525C

(Prucnal RWS) at Q732-734. Thus Tiedemann does not disclose this limitation, or that the

transmission power level of the traffic channel and the reverse control channel are different. See

id. at Q740-742.

As summarized above, Tiedemann, Dent, and Salmasi are all missing at least one

limitation from each asserted claim of the ‘406 patent. It is undisputed that Tiedemann does not

disclose the claim limitation “the reverse control channel carries at least one power command” as

required by claims 6, 13, 20, and 26 of the ‘406 patent. See Williams Tr. 1232; CX-1525C

(Prucnal RWS) at Q72O-727; CX-1525. 1C (Prucnal RWS Errata) at 3. The evidence shows that

this limitation would not have been obvious based on Tiedemann alone or in combination with

Dent or Salmasi. Each of these references ignores, for example, “the value of placing a power

control command on a reverse control channel because it allowed the subscriber unit to transmit

power control infonnation at a lower power than the reverse traffic channel.” CX-1525C

(Prucnal RWS) at Q576.

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Tiedemann also does not disclose or render obvious the claim limitation “separately

adjusting the transmission power level of the traffic channel and the reverse control channel.”

CX-1525C (Prucnal RWS) at Q735-739. Tiedema.nndoes not disclose transmission of a traffic

and reverse control channel at all. See, e.g., id at Q730-734; CX-l525.lC (Prucnal RWS Errata)

at 2. Dr. Prucnal further explained that Tiedemann “does not disclose adjustment of power” or

that “this bit rate is changed independent of other channels.” See, e.g., CX-1525C (Prucnal

RWS) at Q738.

Moreover, Tidedemann does not invalidate the ‘406 patent claims because it does not

disclose or render obvious a “power control bit” under the adopted construction. See CX-1525C

(Prucnal RWS) at Q728-729.

e. (‘332 Patent) Lucas Alone or in Combination with Salmasi

The asserted claims of the ‘332 patent are not invalid based on Lucas (RX-0696) alone or

in combination with Salmasi at least for the reasons explained by Dr. Prucnal in his Rebuttal

Witness Statement. See CX-1525C (Prucnal RWS) at Q797-817. As an initial matter, “Lucas

has very limited disclosure of power control” and “does not even disclose the use of power

control bits to control any transmission power level.” Id. at Q802, Q809.

Lucas does not disclose or render obvious a CDMA subscriber Lmitcomprising a circuit

configured to generate power control bits. CX-1525C (Prucnal RWS) at Q80l-807. Lucas’s

disclosure of power control is limited to controlling subscriber unit transmission power, and does

not teach subscriber units generating power control information to control base station

transmission power, which is a requirement of the asserted ‘332 claims. Id. at Q802.

Lucas also does not disclose “power control bits” as that term is used in each asserted

claim of the ‘332 patent. CX-1525C (Prucnal RWS) at Q808-809. Lucas describes power

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control as follows: “As usual in CDMA systems the amplifier 207 [in the mobile station] has an

adjustable gain, to allow for controlling the power of the signal transmitted by the mobile

station.” See RX-0696 (Lucas) at col. l0, lns. 35-38; CX-1525C (Prucnal RWS) at Q809. Lucas

neither discloses how the amplifier controls the mobile station’s transmission power, nor

discloses using power control bits to control any transmission power level. According to

Respondents’ expert Dr. Williams, Lucas discloses a logical service channel DS(t) that would

inherently include power control commands because “power control commands” are a “critical

aspect of CDMA systems.” See RX-3529C (Williams WS) at Q45O. This argument, however, is

based on hindsight. Although the closed loop power control functionality claimed in the ‘332

patent, including generation of power control bits by a subscriber unit, is key to modern CDMA

systems, that fact does not mean the functionality was inherent before or at the time of the ‘332

invention. See CX-1525C (Prucnal RWS) at Q8l0. Moreover, Dr. Williams’s inherency

validity argument contradicts his opinion that the accused CDMA products do not generate

power control bits. See id.; RX-3994C (Williams RWS) at Q51.

Asserted claims 2-4 and 22-24 of the ‘332 patent require that “the circuit is further

configured to combine the I and Q channels with a complex sequence,” and claims 9-ll require

that “the circuit is further configured to combine the I and Q pre-spread channels with a complex

sequence.” Respondents have not shown that this limitation is disclosed by Lucas or would have

been obvious based on Lucas alone or in combination with Salmasi. See CX-1525C (Prucnal

RWS) at Q8l5-816. Lucas teaches away from combining the l and Q channels with a complex

sequence, inasmuch as using real sequences instead of complex sequences is the main point of

Lucas. See id. at Q816; RX-0696 (Lucas) at col. 2, lns. 64-65; col. 3, lns. 4-8; col. 3, ln. 66 —col.

4, ln. l; col. 4, lns. 35-38; col. 9, lns. 33-35. Respondents’ expert Dr. Williams has argued that

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these statements nevertheless disclose using complex sequences even if they are less preferred

options, but merely mentioning the phrase “complex sequence” does not support use of complex

sequences as required by the asserted claims of the ‘332 patent. See RX-3529C (Williams WS) at

Q512. This is particularly true where Lucas actively discourages using complex sequences.

CX-1525C (Prucnal WS) at Q816. For at least this reason, a person of ordinary skill in the art

would not have combined Lucas with any reference that teaches combining the I and Q channels

with a complex sequence to arrive at this limitation of ‘332 patent claims 2-4, 9-11, and 22-24.

Id.

In addition to teaching away from combining the I and Q channels with a complex

sequence, a person of ordinary skill in the art would not have been motivated to combine Lucas

with the references identified by Respondents as discussing power control. CX-1525C (Prucnal

WS) at Q8l7. Lucas focuses not on power control, but on combining and modulating signals.

Id.; see, e.g., RX-0696 (Lucas) at col. 3, ln. 66 —col. 4, ln.1 (object of the invention is to “allow

for the use of real spreading sequences”). Therefore, there would not have been any motivation

to combine Lucas with the other references. CX-1525C (Prucnal RWS) at Q817.

Accordingly, the asserted claims of the ‘332 patent are not invalid based on Lucas alone

or in combination with Salmasi. See CX-1525C (Prucnal RWS) Q797-817.

f. (‘332 Patent) Walton Alone or in Combination with Lucas or

Salmasi '

The asserted claims of the ‘332 patent are not invalid based on Walton (RX-0694) alone

or in combination with Lucas or Salmasi at least for the reasons explained by Dr. Prucnal in his

Rebuttal Witness Statement. See, e.g., CX-1525C (Prucnal RWS) at Q8l8-844. As an initial

matter, the parties agree that Walton does not anticipate asserted claims 2-4, 8-l l, 14, and 22-24.

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See RX-3529C (Williams WS) at Q620; CX-1525C (Prucnal RWS) at Q820; CX-l525.lC

(Prucnal RWS Errata) at 3. Respondents have also failed to show that the limitations missing

from Walton would have been obvious, are disclosed by Lucas or Salmasi, or that one of

ordinary skill would have had any reason to combine Walton with relevant portions of Lucas and

Salmasi. CX-1525C (Prucnal RWS) at QSZO,Q852; CX-l525.lC (Prucnal RWS Errata) at 3.

Walton and Salmasi were both disclosed during prosecution of the ‘332 patent. Walton

in particular was of record in the examiner’s first rejection, and was mentioned explicitly in the

examiner’s first statement of reasons for allowance in April 2009. This paper was later

cross-referenced by the examiner in every subsequent Notice of Allowability. JX-0009 (‘332 file

history) at IDC-ITC-016399573, IDC-ITC-016400782, IDC-ITC-016401480.

Walton discloses a base station generating power control information, but does not

disclose or render obvious a CDMA subscriber unit comprising a circuit configured to generate

power control bits. See, e.g., CX-1525C (Prucnal RWS) at Q823-827; see also RX-3529C

(Williams WS) at Q62]; JX-0009 (‘332 file history) at IDC-ITC-016399573,

IDC-ITC-016400782; RX-0694 (Walton) at Abstract (“A means of power control on the reverse

link of a CDMA network is disclosed”). Walton describes reverse and forward packet data

channels, but the only control channel that includes power control information is the forward

packet data control channel. See RX-0694 (Walton) at col. 2, lns. 53-63; col. 3, ln. 1 —col. 5, ln.

67; col. 6, lns. 57-58; CX-1525C (Prucnal RWS) at Q824. Walton does not describe a reverse

packet data control channel, and thus is not directed to the control of base station transmission

power. CX-1525C (Prucnal RWS) at Q825. To the extent that Respondents rely on Salmasi in

combination with Walton, Salmasi discloses commands only on the forward link and describes

requests on the reverse link. See, e.g., id. at Q854. Although it is argued that, inasmuch as the

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subscriber unit and base station transmitters are designed as duals, one skilled in the art

reviewing the architecture of a base station transmitter would find it obvious to use a similar

architecture in a subscriber unit, this argument does not succeed for the same reasons described

above with respect to Lucas. See, e.g., RX-3529C (Williams WS) at Q637; CX-1525C (Prucnal

RWS) at Q827. For these reasons, it would not have been obvious to modify Walton to have the

subscriber unit generate power control bits, and Respondents do not explain how such a system

would work. CX-1525C (Prucnal RWS) at Q825.

The asserted claims also require “power control bits that are included on only one of an

in-phase (I) channel or a quadrature (Q) channel” in claims 2-4 and 7, that “the power control

bits are included on only one of the I pre-spread channel or the Q pre-spread channel” in claims

8-11 and 14, and that “only one of the I channel or the Q channel includes the power control

bits” in claims 22-24 and 27. The evidence shows that Salmasi does not disclose including

power control bits on only one of an I or Q [pre-spread] channel. RX-3529C (Williams WS) at

QSO9;CX-1525C (Prucnal RWS) at Q855. Respondents’ expert Dr. Williams argues that

Salmasi “does not explicitly disclose the concept of placing power control bits [on] only one of

the in-phase or quadrature channel,” but that “this nuance in CDMA transmission was well

knovm in the art.” See RX-3529C (Williams WS) at Q809. This argument, however, uses

hindsight to piece together aspects of the asserted ‘332 claims from disparate references, i.e., the

requirements that the power control bits are generated by a subscriber unit and that the power

control bits are included on only one of an I or Q channel. Inclusion of power control bits only

one of the I or Q channels is not a “nuance in CDMA transmissions,” but rather provides

significant advantages to the system by reducing transmission overhead and allowing flexibility

in transmission. See CX-1525C (Prucnal RWS) at Q57, Q856. As for Lucas, this reference does

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not disclose the transmission of power control bits, and cannot render this claim limitation

obvious in combination with Walton. See id. at Q808-814.

Asserted claims 2-4 and 22-24 of the ‘332 patent require that “the circuit is further

configured to combine the I and Q channels with a complex sequence,” and claims 9-ll require

that “the circuit is further configured to combine the I and Q pre-spread channels with a complex

sequence.” Neither Walton nor Salmasi discloses this limitation. See, e.g., RX-3529C (Williams

WS) at Q675, Q682; CX-1525C (Prucnal RWS) at Q858. Respondents argue that this limitation

would have been obvious to one of ordinary skill in the art because Walton “itself discloses the

use of complex valued pilot code in IS-95,” and because the concept of combining with a

complex sequence existed at the time, but this argument is wrong for several reasons. See, e.g. ,

RX-3529C (Williams WS) at Q676—678;CX-1525C (Prucnal RWS) at Q830-831. First, Dr.

Williams does not explain the relationship between the use of a complex value pilot code in

IS-95 and combining I and Q channels, or I and Q pre-spread channels, with a complex

sequence. CX-1525C (Prucnal RWS) at Q83l. Nothing about the simple identification of a

complex valued pilot code in IS-95 renders obvious the claimed combining with a complex

sequence. Id. Second, Dr. Williams identifies no motivation for one of ordinary skill to combine

Walton with any CDMA system that combined channels, let alone I and Q [pre-spread] channels,

with a complex sequence. Id. Moreover, Dr. Williams does not explain how Walton could have

been modified to combine I and Q [pre-spread] channels with a complex sequence. Id. Walton

discloses a complete system using Walsh codes, and it would not have been trivial to simply add

a complex sequence as Dr. Williams suggests. Id.

As for Lucas, it does not disclose complex combining, and as explained above,

affirmatively teaches away from combining with a complex sequence. Even if a person of

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ordinary skill were motivated to combine Walton and Lucas, the result would use real spreading

sequences. See RX-0696 (Lucas) at col. 2, lns. 64-65; col. 3, ln. 66 —col. 4, ln. l. Despite the

specific teachings in Lucas against using complex sequences, Respondents’ expert Dr. Williams

claims that a person of ordinary skill would have been motivated to combine Walton and Lucas

because both references attempted to maximize capacity of a CDMA system through the use of

power control bits in a closed loop power control implementation. See CX-1525C (Prucnal

RWS) at Q833; RX-3529C (Williams WS) at Q682. These general statements are insufficient to

show a motivation to combine. CX-1525C (Prucnal RWS) at Q833. For the reasons explained

earlier, Lucas does not describe power control bits used for closed loop power control, and is

instead directed to the use of real spreading sequences. Id. at Q808-809, Q8l7. Therefore, it

would not have been obvious to combine Walton with Lucas. Id. at Q835.

Asserted claims 3, 10, and 23 of the ‘332 patent require that “the combining is by

multiplication.” Walton does not disclose this claim limitation, and neither does Salmasi. See,

e.g., RX-3529C (Williams WS) at Q685; CX-1525C (Prucnal RWS) at Q836, Q860.

Respondents argue that this limitation would have been obvious to one of ordinary skill in the art

because “[u]sing hardware multipliers was a common tool used to combine two signals at the

time of the 723 and 332 Patents,” but do not identify any motivation to combine Walton with any

hardware multiplier or explain whether or how such a combination would work. See, e.g.,

RX-3529C (Williams WS) at Q686; CX-1525C (Prucnal RWS) at Q838. Moreover, as

explained above, there would not have been a motivation to combine Walton with Lucas to

achieve this claim limitation.

Asserted claims 4, ll, and 24 of the ‘332 patent require that “the complex sequence

compris[e] at least two pseudo noise sequences,” but Walton does not disclose this limitation.

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See, e.g., RX-3529C (Williams WS) at Q691; CX-1525C (Prucnal RWS) at Q839. Salmasi does

not disclose this limitation either, but Respondents’ expert Dr. Williams argues that that this

limitation is disclosed in Lucas, and that it would have been obvious to combine this aspect of

Lucas with Walton. See CX-1525C (Prucnal RWS) at Q86l. This limitation would not have

been obvious based on Walton alone or in combination with other references, however, because

a person of ordinary skill in the art would not have been motivated to combine Lucas and

Walton. CX-1525C (Prucnal RWS) at Q84O-841.

g. Secondary Considerations

Considered in their totality, the evidence of secondary considerations adduced by

InterDigital does not weigh heavily for or against a finding that the asserted ‘406 and ‘332

patents are obvious. See Compls. Br. at 232-36.

InterDigital alleges that commercial success, long-felt need, and failure of others are

secondary considerations of nonobviousness with respect to the ‘406 and ‘332 patent. See

Compls. Br. at 232-36. InterDigital has failed, however, to establish the requisite nexus between

the secondary considerations and the asserted patents. Nevertheless, inasmuch as Respondents

have not shown by clear and convincing evidence that the asserted claims are anticipated or

rendered obvious in light of the cited prior art references, the secondary considerations play only

a minor role in the validity analysis of the ‘406 and ‘332 patents.

VI. The UE ID (‘127 and ‘013) Patents

A. Overview of the Patents and Asserted Claims

1. The ‘127 Patent

Asserted U.S. Patent No. 7,970,127 (“the ‘127 patent”) is titled, “User Equipment

Identification Specific Scrambling.” JX-0004 (‘127 patent). The ‘127 patent issued on June 28,

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2011, and the named inventors are Stephen G. Dick, Nader Bolourchi, and Sung-Hyuk Shin Id

The 127 patent relates generally to aspects of the High Speed Downlink Packet Access

(HSDPA) used in 3G WCDMA systems. See id. at Abstract. The ‘127 patent is related to the

J9 asserted 013 patent; these two patents together are also referred to as the “UE ID 42patents

InterD1gital asserts independent claim 1 and dependent claims 2, 3, 4, 5, 6, and 7 of the

127 patent These claims read as follows:

1. A wideband code division multiple access (WCDMA) user equipment

(UE) comprising:

circuitry in the WCDMA UE configured to process a high speed

shared control channel (HS-SCCH); and

circuitry in the WCDMA UE configured to recover payload data from

a high speed physical downlink shared channel (HS-PDSCH)

associated with the HS-SCCH in response to the HS-SCCH including

bits; wherein the bits are a result of a combining of a user specific

scrambling sequence associated with the UE with control information;

and wherein the user specific scrambling sequence is a result of a ‘/2

rate convolutional encoding of a UE identification (ID).

2. The WCDMA UE of claim 1 wherein the control information includes

channelization and modulation information of the HS-PDSCH.

3. The WCDMA UE of claim 1 wherein the user specific scrambling

sequence is a result of rate matching the ‘/2rate convolutional encoded UE

ID.

4. The WCDMA UE of claim 1 wherein the control information is

convolutionally encoded.

5. The WCDMA UE of claim 1 wherein the payload data of the associated

HS-PDSCH is not recovered if the bits were not a result of combining the

user specific scrambling sequence associated with the UE with the control

information.

6. The WCDMA UE of claim l comprising circuitry in the WCDMA UE

configured to produce the user specific scrambling sequence.

“UE ID 1San acronym for user equipment identification.

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7. The WCDMA UE of claim 6 wherein the circuitry in the WCDMA UE

configured to produce the user specific scrambling sequence comprises a

‘/2rate convolutional encoder.

JX-0004 at col. 3, In. 18 ~ col. 4, In. 9.

2. The ‘013 Patent

Asserted U.S. Patent No. 7,536,013 (“the ‘O13patent”) is titled, “User Equipment

Identification Specific Scrambling.” JX-0003 (‘O13 patent). The ‘O13patent issued on May 19,

2009, and the named inventors are Stephen G. Dick, Nader Bolourchi, and Sung-Hyuk Shin. Id.

The ‘O13patent relates generally to aspects of the High Speed Downlink Packet Access

(HSDPA) used in 3G WCDMA systems. See id. at Abstract. The ‘O13patent is related to the

asserted ‘127 patent; these two patents together are also referred to as the “UE ID” patents.

InterDigital asserts independent claim 16 and dependent claims 17, 18, and 19 of the ‘O13

patent. These claims read as follows:

16. A user equipment comprising:

an input configured to accept a 16 bit user identification; and

a 14 rate convolutional encoder for processing the l6 bit user

identification code with eight appended zero bits to produce a 48 bit

code wherein the 48 bit code is used to determine control information

carried over a high speed shared control channel (HS-SCCH).

17. The user equipment of claim 16 further comprising a rate matching

block for puncturing eight bits after the production of the 48 bit code.

18. The user equipment of claim 16 wherein the control information is

used for decoding a high speed physical downlink shared channel (HSPDSCH).

19. The user equipment of claim 18 wherein the HS-PDSCH is associated

with the HS-SCCH.

JX-0003 at col. 4, lns. 33-48.

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3. Overview of the Technology

The inventions claimed in the ‘127 and ‘O13patents relate to aspects of the High Speed

Downlink Packet Access (“HSDPA”) used in 3G WCDMA systems. CX-1309C (Jackson WS)

at Q89. Contemporary 3G WCDMA systems in the United States operate in accordance with the

UMTS standard developed by the 3GPP. Id. at Q41. Release 5 of the standard added HSDPA.

Id. at Q44, Ql56. HSDPA allows for faster “downlink” (i.e., transmissions from the base station

to UEs) data rates for cellular devices such as 3G capable smartphones. Id. at Q44, Q157.

HSDPA was added to the UMTS standard to meet the rising demand for high-speed data

applications, such as web browsing and audio/video streaming on mobile devices. Id. at Q44.

HSDPA uses a variety of techniques to make high-speed data applications feasible in 3G

WCDMA systems. Id.

To support HSDPA, the standard defines two different types of channels that a cellular

base station uses to communicate with each UE that is within range of the base station: (i)

control channels, called “high speed shared control channels” or “HS-SCCHS,” and (ii) data

channels, called “high speed physical downlink shared control channels” or “HS-PDSCHs.”

CX-1309C (Jackson WS) at Ql63.

The data charmels (“HS-PDSCHs”) carry the payload data (e.g., voice signals, web

pages, pictures, video, or music) intended for the user equipment. CX-1309C (Jackson WS) at

Ql63 The control channels (“HS-SCCHs”) carry control information generated by the base

station that is used to tell a UE (i) which specific data channel(s) will be carrying the payload

data intended for it, (ii) when the payload data will be carried on the specific data channel(s), and

(iii) what type of modulation will be used to modulate the data. Id. at Ql 64. Accordingly, each

UE does not have to continuously monitor all of the data channels. Instead, the UE only needs to

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monitor the control channels, which will direct it to the appropriate data channels at the

appropriate times. Id. at Q163-64. This approach requires a methodology for efficiently

communicating to each UE when any of control channels carries control information intended

for that UE. Id. at Ql68.

In the ‘127 and ‘O13patents, InterDigital claimed aspects of such a methodology. See

CX-1309C (Jackson WS) at Q90. As described in an embodiment therein, a UE ID based

specific scrambling sequence is generated by encoding the 16-bit UE ID for a particular UE with

a ‘/1rate convolutional encoder and, subsequently, rate matching (by puncturing) the output to

the desired length (e.g., 40 bits). Id. at Q91. The UE ID specific scrambling sequence is then

mixed or combined with the control information intended for the UE. Id. at Q67; JX-0003 (‘O13

patent) at col. 3, lns. 13-15. This mixing or combining is accomplished, for example, with an

exclusive-OR gate, which is an electronic device that accepts two inputs, applies a mathematical

operation, and outputs the result. See CX-1309C (Jackson WS) at Q67. The result is transmitted

by the base station and received by the UE on the control channels. JX-0003 at col. 3, lns. 15-16.

When the UE ID specific scrambling sequence used by the base station and the UE match

one another, the UE can detect that it is the intended recipient of the control information carried

on a given control channel. JX-0003 at col. 1, lns. 38-41; CX-1309C (Jackson WS) at

Ql94-195. This control infonnation includes the channelization code set and modulation type

used by data channels that cany the HSDPA payload to the UE. JX-0003 at col. 1, lns. 33-36.

The control information is vital to support HSDPA because HSDPA uses adaptive modulation

and coding, i.e., the UE needs the information to decode the data channels. JX-0003 at col. 1,

lns. 36-37; CX-1523C (Jackson RWS) at Q14O.

212
PUBLIC VERSION

B. Claim Construction

1. Level of Ordinary Skill

A person of ordinary skill in the art of the ‘O13and ‘127 patents would have at least a

bachelor’s degree in electrical engineering, computer science, mathematics or a related field, and

some work experience in the area of wireless communications, including issues related to

coding. See RX-3520C (Madisetti WS) at Q64. The amount of work experience possessed by a

person of ordinary skill in the art would vary depending on that person’s degree, i.e., a person of

ordinary skill in the art holding a bachelor’s degree would have approximately four years of

work experience, whereas a person of ordinary skill in the art with a Ph.D. would have

approximately one year of work experience.“ See id.

2. Construction of Disputed Claim Terms

a. “to process a high speed control channel (HS-SCCH)” (‘127

patent)

I p;;[Claim InterDigital"sConstruction it Respondents’ , Staff’s

;.IiTerm[Phrase Y* 5 wfli ifikfi Construction iii; IConstruction

to process a high No construction is necessary, to descramble the high Staff adopts

speed shared but to the extent it would be speed shared control Respondents’

control channel helpful, InterDigita1has channel (HS-SCCH) proposed

(HS-SCCH) proposed that the plain using a user specific construction.

meaning of the term is “to scrambling sequence

perform one or more produced by a ‘/2rate

operations on a received HS- convolutional encoder

SCCH to derive control

information.”

43Complainants take the position that a person of ordinary skill in the art of the ‘O13and ‘127

patents would have an undergraduate degree or master’s degree in electrical engineering (or an

equivalent subject), together with three to five years of experience in cellular communications, or

comparable and/or equivalent training. See CX-1309C (Jackson WS) at Q29-32. The parties

have not identified any way in which differences in their proposed definitions of the level of

ordinary skill in the art affect issues in this investigation. See Compls. Br. at 356; Resps. Br. at

64.

213
PUBLIC VERSION

The claim term “to process a high speed shared control channel" appears in asserted

claim l ofthe ‘127 patent. IX-0004 at col. 3, lns. 18-30.

InterDigital takes the position that this term does not need construction, but has proposed

that the plain meaning of the tenn is “to perform one or more operations on a received HS-SCCH

to derive control information.” Compls. Br. at 375-79. Respondents construe this term to mean

“to descramble the high speed shared control channel (HS-SCCH) using a user specific

scrambling sequence produced by a ‘/2rate convolutional encoder.” Resps. Br. at 66-74. The

Staff adopts Respondents’ proposed construction. Staff Br. at 26-34.

As proposed by Respondents and the Staff, the claim term “to process a high speed

shared control channel (HS-SCCH)” is construed to mean “to descramble the high speed shared

control chamiel (HS-SCCH) using a user specific scrambling sequence produced by a ‘/2rate

convolutional encoder,” a construction that is supported by the intrinsic evidence.

The intrinsic evidence demonstrates that the claimed invention of the ‘127 patent is

directed to the user specific scrambling sequence produced by a '/zrate convolutional encoder for

scrambling or descrambling a high speed shared control channel. See JX-0004 at col. l, lns.

22-25 (“the present invention . . . relates to user equipment identification specific scrambling

sequences for high speed shared control channels”). For instance, the “Summary” section of the

‘127 patent describes the invention as comprising “circuitry configured to process a user

equipment identification (UE ID) by 1/;rate convolutionally encoding the UE ID to produce a

code.” JX-0004 at col. 2, lns. 7-9. This code is then used “for scrambling a high speed shared

control channel (HS-SCCH).” Id. at col. 2, lns. l0-l 1. Inasmuch as claim 1 is directed to a UE,

the sequence produced by ‘/1rate convolutional encoding must be used for descrambling by the

214
PUBLIC VERSION

UE because the ‘127 patent does not disclose any other options for “processing of the

HS-SCCH,” and the ‘127 patent describes only one solution for generating a user specific

scrambling sequence, that of using a 1/2rate convolutional encoder.

InterDigital’s expert does not dispute that the claimed invention of the ‘127 patent

involves creating a scrambling sequence that is used to process a control signal sent via a high

speed shared control charmel. See CX-1309C (Jackson WS) at Q90 (“The inventions claimed in

the ‘O13and ‘127 Patents relate to generating UE ID specific scrambling sequences for use in

what are called high speed shared control channels (HS-SCCHs).”). Both the figures and the

specification of the ‘127 patent depict these scrambling sequences as being used for scrambling

data at the base station before it is transmitted via the HS-SCCH to the user equipment, and for

processing the HS-SCCH by descrambling the information received by the user equipment to

recover the original, pre-scrambled data. JX-0004 at Figs. 3, 4; col. 3, lns. 6-16. The

specification of the ‘127 patent further makes clear that the processing in the user equipment

must be descrambling. The ‘127 patent specification states: “[t]he UE processes each monitored

HS-SCCH Withits UE ID specific scrambling sequence to detect the HS-SCCH intended for the

UE. . . . The UE descrambles the data carried on Part-1 of its HS-SCCH using its scrambling

sequence.” Id. at col. 1, lns. 43-49. Thus, the intrinsic evidence makes clear that the invention

of the ‘127 patent was a method of producing a user specific scrambling sequence by a %rate

convolutional encoder that could be used for both scrambling and descrambling.

The prosecution history of U.S. Patent No. 6,973,579 (“the ‘S79 patent”), a parent patent

to the ‘127 patent, provides additional support for construing “processing” as descrambling. In

U.S. Patent Application No. 10/187,640, which later issued as the ‘579 patent, the applicants

responded to a rejection based on a prior art patent issued to Moon. RX-0503 (‘S79 file history)

215
PUBLIC VERSION

at NK8OOIDCO6445022. To overcome the rejection, the applicants made two relevant

arguments. Id.

First, the applicants argued that “the bits of the user identification are processed by a half

rate convolutional encoder to produce a code used for scrambling or descrambling a high speed

shared control channel (HS-SCCH). . . . Moon does not disclose scrambling or descrambling of a

high speed shared control channel.” RX-0503 (‘S79 file history) at NK8001DCO6445022. These

statements describe the “broad technological basis” of the applicant’s invention, and thus inform

an understanding of the proper scope of the ‘127 patent. See Inpro II Licensing, S.A.R.L. v.

T-Mobile USA,lnc., 450 F.3d 1350, 1357 (Fed. Cir. 2006) (construing tenns based on the

description in the specification and statements made to PTO during prosecution of parent

application). By making these statements to the PTO during the prosecution of the parent ‘579

patent, the patentee distinguished the prior art by stating that the alleged invention requires a

process utilizing a half rate convolutional encoder to scramble or descramble an HS-SCCH.

Second, the ‘S79 applicants distinguished the Moon prior art with additional statements

expressly limiting the scope of the invention to a user specific scrambling sequence produced by

a ‘/2rate convolutional encoder. The applicants described the invention as having:

. . . an input which accepts an L bit user identification, such as a 16 bit

user identification. At least the bits of the user identification are processed

by a half rate convolutional encoder to produce a code used for scrambling

or descrambling a high speed shared control channel (HS-SCCH).

RX-0503 (‘579 file history) at NK80OIDC06445022. The applicants distinguished the Moon

prior art on the ground that it did not disclose the use of a ‘/2rate convolutional encoder; rather,

the applicants argued that Moon used a “long code mask” to generate the scrambling sequence.

Id. The applicants described this approach in Moon as “an entirely different arrangement than

216
PUBLIC VERSION

the present invention, where first, a user identification is used and, second . . . the output of the

half convolutional encoder is used to produce the scrambling code." Id. The evidence shows

that the ‘579 applicants represented to the PTO that the claimed invention required that the user

specific scrambling sequence be produced by V2rate convolutionally encoding a UEID, and it

was on this basis that they distinguished the prior art. Id. Accordingly, these statements

regarding the parent ‘579 patent demonstrate that the claimed invention of the ‘127 patent

includes the use of a ‘/1rate convolutional encoder.

The intrinsic evidence also demonstrates that “processing a[n] . . . HS-SCCH” requires

that the user specific scrambling sequence be used for scrambling or descrambling. JX-0004 at

col. 1, lns. 43-49; col. 3, lns. 6-15; Figs. 3, 4. In particular, the only disclosure in the

specification of the ‘127 patent related to handset “processing” is the descrambling of the

received information. Id. at Fig. 4; col. 3, lns. 6-10; col. 1, lns. 43-49. The “Background”

section of the ‘127 patent explains that the UE must descramble using the scrambling sequence:

“The UE processes each monitored HS-SCCH with its UE ID specific scrambling sequence to

detect the HS-SCCH intended for the UE . . . The UE descrambles the data carried on Part-1 of

its HS-SCCH using its scrambling sequence.” Id. at col. 1, lns. 43-46; col. 1, lns. 48-49. This

descrambling by the UE is not merely a preferred embodiment of the claimed invention, but it is

the only disclosed embodiment of the claimed “processing.”

InterDigital argues that, while no construction of the term “to process a high speed shared

control channel” is necessary, it should nevertheless be construed to mean “to perform one or

more operations on a received HS-SCCH to derive control information.” See Compls. Br. at

375-79. InterDigital’s arguments primarily rely on extrinsic evidence, which is not as persuasive

as Respondents’ claim construction arguments based on the intrinsic evidence. See id. at 375-76.

217
PUBLIC VERSION

InterDigital further argues that the construction proposed by Respondents and the Staff

violates the doctrine of claim differentiation. See Compls. Br. at 378-79. Specifically,

InterDigital argues that “the ‘1/1rate convolutional encoder’ requirement that Respondents want

to read into claim 1 is added by dependent claim 7.” Id. at 378. Notwithstanding InterDigital’s

argument, the doctrine of claim differentiation cannot overcome the fact that the ‘127

specification fails to teach any approach to generating the claimed scrambling sequence aside

from using a 1/;rate convolutional encoder.

Accordingly, the claim tenn “to process a high speed shared control channel (HSSCCH)” is construed to mean “to descramble the high speed shared control channel (HS-SCCH)

using a user specific scrambling sequence produced by a ‘/2rate convolutional encoder.”

b. “in response to the HS-SCCH including bits; wherein the bits

are a result of a combining of a user specific scrambling

sequence associated with the UE with control information”

rt;;;%¢Iaiiii>T=rin/Phrase *iiii.Inrérvigitalmi iv»i:;*%%Res11¢iid¢nté%-it*1

{xii Y °7~Construction 7° i§§'Constrl1ctioni

Staffsliii

Construction 7‘

in reaction to processing

Part 1 of the HS-SCCH to

determine that Part 1 is a

result of a combining of a

user specific Scrambling

sequence associated with

the UE with control

information

in response to the HS- It is not necessary

SCCH including bits; to construe either

wherein the bits are a this entire phrase

result of a combining of a or the phrase “in

user specific scrambling response to.”

sequence associated with

the UE with control

information

Plain and

ordinary

meaning should

apply for “in

response to.”

The claim term “in response to the HS-SCCH including bits; wherein the bits are a result

of a combining of a user specific scrambling sequence associated with the UE with control

information” appears in asserted claim 1 of the ‘127 patent. JX-0004 at col. 1, lns. 18-30.

218
PUBLIC VERSION

InterDigital takes the position that “no construction is necessary, either for the entire

phrase or the sub-phrase ‘in response to.”’ Compls. Br. at 379-81. Respondents construe this

claim tenn to mean “in reaction to processing Part l of the HS-SCCH to determine that Part 1 is

a result of a combining of a user specific Scrambling sequence associated with the UE with

control information.” Resps. Br. at 74-76. The Staff generally agrees with InterDigital’s

position, arguing that “no construction is necessary for the phrase and that the plain and ordinary

meaning, in the context of the asserted claims, should apply for the sub-phrase ‘in response to.”’

Staff Br. at 34-37.

As proposed by InterDigital and the Staff, it is determined that the claim term “in

response to the HS-SCCH including bits; wherein the bits are a result of a combining of a user

specific scrambling sequence associated with the UE with control information” does not need

construction. In addition, a plain and ordinary cause-and-effect relationship will be applied to

the sub-phrase “in response to.” See Staff Br. at 34.

Respondents’ proposed construction is not adopted for the phrase “in response to the

HS-SCCH including bits; wherein the bits are a result of a combining of a user specific

scrambling sequence associated with the UE with control information,” inasmuch as a person of

ordinary skill in the art would have found the phrase clear and not in need of additional

interpretation. See CX-1309C (Jackson WS) at QIO8. In addition, there is no intrinsic support

for replacing “response” in the claim term with “react” or “reaction.” See id. at Q110. A further

reason for declining to adopt Respondents’ proposed construction is that it restricts the claimed

“HS-SCCH including bits” to only “Part l of the HS-SCCH.” Nothing in the ‘l27 patent

indicates that the claim language should be so restricted. See id. at Ql ll-112.

219
PUBLIC VERSION

c. “associated with” (‘127 and ‘013 patents)

. Claim .l.slisiIat¢rDigital’s . <ii~%Re$P"ad¢ii¢$’.-. “Staffs C»ns.*r*1¢ti<>n.tt.

-T¢'m/Phraseimiiflsfistructian

associated with associated with unique to having a particular

relationship with

The claim term “associated with” is recited in asserted claim 1 of the ‘127 patent. See

JX-0004 at col. 3, lns. 18-30. The claim term is also recited in asserted claim 19 of the ‘O13

patent. See JX-0003 at col. 4, lns. 47-48.

InterDigital takes the position that this term does not need to be construed. See Compls.

Br. at 360-62, 383. Respondents construe this claim term to mean “tmique to.” Resps. Br. at

76-79. The Staff contend that this term should be construed to mean “having a particular

relationship with.” Staff Br. at 37-38.44

As proposed by InterDigital, it is determined that the claim tenn “associated with” does

not need construction, inasmuch as a person having ordinary skill in the art would understand the

meaning of the term “associated With.” See CX-1309C (Jackson WS) at Q113. This position is

supported by the fact that, during the relevant time frame, the drafters of the 3GPP technical

specifications used the term “associated With”to describe the relationship between the

HS-PDSCH and the HS-SCCH. Id. at Q114.

d. “user specific scrambling sequence” (‘127 patent)

it Z 1IHt¢PDigit??1’5?i551$?ililiitifltlndefliaiifi

8 T°*mfP1i1?%i$§$i. 1

user specific I a sequence of bits based user specific | a sequence of bits based

44The Staff notes that, “based on the arguments made by InterDigital and Respondents . . .

applying any one of the three proposed constructions does not result in any practical difference

with respect to the infringement and validity analyses.” Staff Br. at 38.

220
PUBLIC VERSION

scrambling on a user equipment scrambling on a user equipment

sequence identification sequence identification

The claim term “user specific scrambling sequence” appears in asserted claims 1, 3, 5, 6,

and 7 of the ‘127 patent. JX-0004 at col. 3, lns. 18-30; col. 3, lns. 34-36; col. 3, ln. 39 —col. 4,

ln. 9.

InterDigital and the Staff propose that this term should be construed to mean “a sequence

of bits based on a user equipment identification.” Compls. Br. at 383; Staff Br. at 79.

Respondents take the position that no construction for this term is needed, but do not disagree

with the construction proposed by InterDigital and the Staff, inasmuch as “use of InterDigital’s

or the Staff‘s proposed construction would not alter Respondents’ position on any material

issue.” Resps. Br. 79.

As proposed by InterDigital and the Staff, the claim term “user specific scrambling

sequence” shall be construed to mean “a sequence of bits based on a user equipment

identification.”

e. “control information” (‘127 and ‘O13patents)

Term/Phrase 1 Construction s Construction 4

control control infonnation Plain and ordinary Plain and ordinary

Claiin§ InterDigital’s7 ‘V q Respondents’ 1 [ Staffs Construction

information l meaning. l meaning.

The claim term “control information” is recited in asserted claims 1, 2, 4, and 5 of the

‘127 patent. JX-0004 at col. 3, lns. 18-33; col. 3, ln. 37 —col. 4 lIl. 3. The term is also recited in

asserted claims 16 and 18 of the ‘O13patent. JX-0003 at col. 4, lns. 33-40; col. 4, lns. 44-46.

221
PUBLIC VERSION

InterDigital contends that no construction for this tennis necessary. See Compls. Br. at

356-60, 382-83. Respondents and the Staff take the position that the phrase should be given its

plain and ordinary meaning in the context of the asserted claims. Resps. Br. at 79-81; Staff Br. at

39-41.

It is argued that the claimed “control information” comprises information that is

scrambled and carried over the HS-SCCH. See Staff Br. at 39-40 (citing RX-3520C (Madisetti

WS) at Q1163-1165; Q1168-1170). Indeed, claim 1 of the ‘127 patent contains a limitation

requiring “bits [that] are a result of a combining of a user specific scrambling sequence

associated with the UE with control information.” JX-0004 at col. 3, Ins. 18-30. It is argued that

the only control information that is combined with a user specific scrambling sequence in the

‘127 patent is the encoded HS-SCCH data, Which is typically 40-bits. Staff Br. at 40 (citing

RX-3520C (Madisetti WS) at Q1172). Similarly, claim 16 of the ‘O13patent refers to “control

information carried over a high speed shared control channel (HS-SCCH).” JX-0003 at col. 4,

lns. 33-40. In fact, the only control infonnation that is carried over a HS-SCCH in the ‘013

patent is the 40-bit encoded sequence that has been scrambled. RX-3520C (Madisetti WS) at

Q1167.

Accordingly, as proposed by Respondents and the Staff, the plain and ordinary meaning

of the term “control infonnation” discussed above shall be adopted.

C. Infringement

1. The UE ID Accused Products

All of the devices accused of infringing the ‘127 and ‘O13patents comprise WCDMA

user equipment and support HSDPA. Madisetti Tr. 894; CX-1309C (Jackson WS) at Q155-156.

The devices include baseband chipsets manufactured by [ ] [

222
PUBLIC VERSION

[ [

]

Grduping by Bjaseband‘Manufactu;rerI 1i Subgrouping by Baseband Model 1f5 Claims Asserted

Group 146

Group 247

The Huawei devices accused of infringing the UE ID patents are:

I

]

45 cx-0150c [

cx-0162c CX-0168C ]

46':

CX-1309C ]

47[

CX-1309C ]

4* [ cx-0184c 1

‘*9 [ cx-0220c 1

223
PUBLIC VERSION

l

See Staff Br. at 18 (citing CX-0162C; CX-0220C). [

-]

The Nokia devices accused of infringing the UE ID patents are

[Device name

224
PUBLIC VERSION

See Staff Br. at 1s-19 (citing cx-01500; cx-01840). [

]

The ZTE devices accused of infringing the UE ID patents are:

l

See Staff Br. at 19 (citing cx-0163c). [

]

The actual operation of the accused devices is largely undisputed. Within each of the

above categories, all of the devices operate in materially the same way with respect to the

functionality relevant to the ‘127 and ‘O13patents. CX-1309C (Jackson WS) at Q228-229,

Q330-311. Three main ftmctional areas are relevant to infringement of the ‘127 and ‘O13

patents: (a) generation of the user specific scrambling sequence, (b) decoding the HS-SCCH, and

(c) recovery of the HS-PDSCH.

a. Generation of the User Specific Scrambling Sequence

[

CX-1309C

225
PUBLIC VERSION

[ ] Devices

1

Nokia/T I Devices

226
[

[

cx-1309c

]

[

PUBLIC VERSION

RX-3990C

CX-1309C

lll. [ ] Devices

RX-3990C

b. Decoding the HS-SCCH

RX-3990C

CX-1309C

[

227

CX-1309C
PUBLIC VERSION

RX-3990C .1

I

cx-1523c RX-3990C

]

228

CX-1309C
[

RX-3990C

[

PUBLIC VERSION

CX-1309C

Recovery of the HS-PDSCH

229

CX-13 09C

CX-1309C
PUBLIC VERSION

[

RX-3990C

]

2. Global Infringement Issues

With respect to the infringement analysis of the accused products, several issues apply

generally to multiple groups of accused products and more than one asserted claim. [

(C)

[

] These global issues will be addressed first, followed by a claim-by-claim

infringement analysis.

a. The Matrix Solution

[

RX-3990C

RX­

]

230
PUBLIC VERSION

I

RX-3684C 5°

5°The confidential version of the Final Initial Determination from the 613 Investigation (“613

Final ID”) was produced in this investigation and accepted into the record as exhibit RX-3684C.

Inasmuch as this Initial Determination cites to confidential portions of the 613 Final ID, citations

will be made to the exhibit number.

231
CX-1309C

RX-3990C

RX-3 990C

RX-3990C

PUBLIC VERSION

RX-3990C

RX-3 990C (

RX-3990C RX-3992C

] Id.

232
] Id.

RX-3990C

PUBLIC VERSION

RX-3990C

233

(citing CX-1309C

]
51

2

PUBLIC VERSION

b. The Zhang Method

RX-3891C

RX-3990C

152

[ ]

]

RX-3990C

RX234

RX-3 990C
PUBLIC VERSION

c. Brute Force Decoders

[

RX-3990C ]

i. Descrambling the HS-SCCH (‘127 Patent)

The record evidence demonstrates that the [

153

The [

RXCX-1309C

RX-3991C

53In a previous investigation, the claim term “descrambling a high speed shared control channel

(HS-SCCH)” was construed to mean “applying a scrambling sequence to process the scrambled

data received on an HS-SCCH to reproduce (recover) the data scrambled prior to transmission.”

Certain 3G Mobile Handsets & Components Thereofl Inv. No. 337-TA—6l3,ID at l9l. That

same construction is hereby adopted in this investigation.

235
PUBLIC VERSION

RX-3990C ]

[

RX-3684C

1

[

]

ii. Deriving Control Information (‘127Patent)

The record evidence demonstrates that the [

' ] do not [

1

RX-3990C (Madisetti RWS) at Q528. Claim 1 of the ‘127 patent refers to bits that are the result

of “a combining of a user specific scrambling sequence associated with the UE with control

information.” JX-0004 at col. 3, lns. 18-30; RX-3520C (Madisetti WS) at Q1168. [

] RX-3520C (Madisetti ws) at Q1168-1169;cx-1309c

236
PUBLIC VERSION

(Jackson WS) at Q204. [

RX-3990C (

] Accordingly, it is determined that the [ ] do not “derive control

infonnation” under the adopted claim constructions.

iii. Determining Control Information Carried Over an

HS-SCCH (‘013 Patent)

The evidence shows that the [

] do not “determine control information carried over a high

speed shared control channel” as recited in asserted claim 16 of the ‘O13patent.“ As mentioned

previously, the [

] RX-3990C (Madisetti RWS) at Q734.

[

RX-3 990C ]

d. Viterbi Decoders

[

RX-3990C ]

i. Descrambling the HS-SCCH (‘127 Patent)

The record evidence demonstrates that the [ ] do not “descramble the

high speed shared control channel (HS-SCCH)” as required by the adopted construction of the

54Only the [ ] are alleged to infringe the asserted claims of the ‘O13patent.

See Compls. Br. at 363.

237
PUBLIC VERSION

claim limitation “circuitry in the WCDMA UE configured to process a high speed shared control

channel (HS-SCCH).”

[

] RX-3990C (Madisetti RWS) at Q536-543. [

1 Id.

[

RX-3990C CXl309C

RX-3990C

RX-3990C

RX-3990C

]

Therefore, it is determined that the [ ] accused of

infringing the UE ID patents do not descramble the HS-SCCH.

ii. Deriving Control Information (‘127Patent)

The record evidence demonstrates that the [Viterbi decoders in the [

] not “derive control information” as required by asserted claims 1-7 of

238
PUBLIC VERSION

the ‘127 patent under the constructions adopted above. See RX-3990C (Madisetti RWS) at

Q559-560. Claim 1 of the ‘127 patent refers to bits that are the result of “a combining of a user

specific scrambling sequence associated with the UE with control information.” JX-0004 at col.

3, lns. 18-30; RX-3520C (Madisetti WS) at Q1168. [

] RX-3520C (Madisetti WS) at Q1168-1169; CX-1309C (Jackson WS) at QZO4. [

RX-3990C ] Accordingly, it is

determined that the Viterbi decoders do not “derive control information” under the adopted claim

constructions.

iii. Determining Control Information Carried Over an

HS-SCCH (‘013 Patent)

Similarly, the [ ] devices does not

[

1” RX-3990C (Madisetti RWS) at Q562. [

1 Id.

at Q562-564.

55Only the [ ] are accused of infringing the ‘O13patent. See Compls. Br. at

363.

239
PUBLIC VERSION

3. ‘127 Patent —Claim 1

As discussed below, it is detennined that the ‘127 accused products do not infringe

asserted independent claim 1 of the ‘127 patent.

a. A wideband code division multiple access (WCDMA) user

equipment (UE) comprising:

The preamble of asserted claim 1 of the ‘127 patent recites: “[a] wideband code division

multiple access (WCDMA) user equipment (UE).” It is undisputed that the devices accused of

infringing the ‘127 patent support HSDPA and are WCDMA user equipment. CX-1309C

(Jackson WS) at Q156-158; Resps. Br. at 106-19; StaffBr. at 63-75.

b. circuitry in the WCDMA UE configured to process a high

speed shared control channel (HS-SCCH); and

Claim 1 of the ‘127 patent recites: “circuitry in the WCDMA UE configured to process a

high speed shared control channel (HS-SCCH).” The parties dispute Whetherthe ‘127 accused

products satisfy this claim limitation.

As discussed above, the claim term “to process a high speed shared control charmel

(HS-SCCH)” is construed to mean “to descrarnble the high speed shared control channel

(HS-SCCH) using a user specific scrambling sequence produced by a V2rate convolutional

encoder.”

Respondents and the Staff contend that the [

] do not satisfy this claim limitation because [

]56 See

56':

] See Madisetti Tr. 895-896.

240
PUBLIC VERSION

Resps. Br. at 106; Staff Br. at 64-66. Respondents and the Staff also contend that none of the

‘127 accused devices descramble the HS-SCCH as required by the claim because [

] See Resps. Br. at 106; Staff Br. at 64-66.

[

RX-3990C ] Therefore, it is

determined that the [ ] accused of infringing the ‘127 patent do

not produce the claimed user specific scrambling sequence by a 1/2rate convolutional encoder.

As for the question of whether the ‘127 accused products’ [

] is “descrambl[ing] the high speed shared control charmel

(HS-SCCH)” as required by the adopted construction of the claim limitation “circuitry in the

WCDMA UE configured to process a high speed shared control channel (HS-SCCH),” the

evidence demonstrates that it is not. [

] RX-3990C (Madisetti RWS) at Q477. [

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PUBLIC VERSION

] RX-3990C (Madisetti RWS) at Q536-543.

[

Analysis under alternate claim constructions.

lnte1'Digital’sproposed construction for the claim term “to process a high speed shared

control channel (HS-SCCH),” i.e., “to perfonn one or more operations on a received HS-SCCH

to derive control information,” was not adopted. If this construction were adopted, however, the

evidence shows that the ‘127 accused devices would satisfy this claim limitation under

2

InterDigital’s interpretation of “control information. ’57Evidence specific to each category of

‘127 accused devices is discussed separately below.

[

cx-1309c

57As discussed above, lnterDigita1 takes the position that the claim term “control information”

does not need construction. Respondents and the Staff argued that the plain meaning of “control

information” should be used, and that the plain meaning of the term in the context of the UE ID

patents means the 40-bit encoded sequence carried on the HS-SCCH. The plain meaning of

“control information” proposed by Respondents and the Staff was adopted above.

Under the plain meaning construction of “control infonnation,” the ‘127 accused devices would

not “perform one or more operations on a received HS-SCCH to derive control information,” as

required by InterDigital’s construction of the claim limitation “to process a high speed shared

control channel (HS-SCCH).” As set forth above, [

1

242
[

Id. [

CX-1351C

CX-0258C

PUBLIC VERSION

]

243
CX-1309C

CX-1317C

PUBLIC VERSION

CX-1309.1

CX-1309C

CX-1316C

CX-0252C

CX-0240C

244
[

RX-3990C

CX-13

RX~3990C

CX-1337C

CX-1317C

CX-1337C

17C

CX-1309C

PUBLIC VERSION

CX- 1309C

CX-1309C (

CX-1309C

]

245
PUBLIC VERSION

[

CX-1352C

CX-1309C

]

In summary, it is determined that the ‘127 accused products satisfy the claim limitations

“circuitry in the WCDMA UE configured to process a high speed shared control channel

(HS-SCCH)” and “control information” under InterDigital’s proposed constructions of the

terms.

c. circuitry in the WCDMA UE configured to recover payload

data from a high speed physical downlink shared channel

(HS-PDSCH) associated with the HS-SCCH in response to the

HS-SCCH including bits; wherein the bits are a result of a

combining of a user specific scrambling sequence associated

with the UE with control information;

Claim 1 recites, “circuitry in the WCDMA UE configured to recover payload data from a

high speed physical downlink shared channel (HS-PDSCH) associated with the HS-SCCH in

response to the HS-SCCH including bits.” JX-0004 at col. 3, Ins. 22-25. The “bits” referred to

in this clause are later defined in the claim such that “the bits are a result of a combining of a

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PUBLIC VERSION

user specific scrambling sequence associated with the UE with control information.” Id. at col.

3, lns. 25-28.

As set forth above, it was determined that the claim tenn “in response to the HS-SCCH

including bits; wherein the bits are a result of a combining of a user specific scrambling sequence

associated with the UE with control infonnation” does not need construction. In addition, it was

detennined that a plain and ordinary cause-and-effect relationship would be applied to the

sub-phrase “in response to.” It was further determined that the claim term “associated with”

does not need construction.

Applying these constructions, the ‘127 accused products do not satisfy this claim

limitation. Specifically, under the plain and ordinary meaning of “in response to,” a

cause-and-effect relationship is required. Therefore, this claim limitation is met only if the

accused products recover payload data from an HS-PDSCH in response to the UE processing bits

in a HS-SCCH that has particular relationship to said HS-PDSCH, wherein the bits in said

HS-SCCH result from a combination of a user specific scrambling sequence associated with the

UE and control information. The cause-and-effect relationship must be maintained in order to

satisfy this limitation. If recovery of payload data from an HS-PDSCH occurs independently of

the results of processing the bits of the HS-SCCH that has the particular relationship with said

HS-PDSCH, this claim limitation is not met. [

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PUBLIC VERSION

[ RX-3771C; RX-3777C; RX-3778C

RX-3 783C; RX-3 826C

RX-3834C

RX-3862C RX-3864C

RX-3865C

RX-3 897 RX-3 898

l

Therefore, all of the ‘127 accused devices [

] and do not practice this limitation

of claim 1.

Analvsis under alternate claim constructions.

In the event that Respondents’ proposed construction of the claim term “in response to

the HS-SCCH including bits; wherein the bits are a result of a combining of a user specific

scrambling sequence associated with the UE with control information,” i.e., “in reaction to

processing Part 1 of the HS-SCCH to determine that Part 1 is a result of a combining of a user

specific Scrambling sequence associated with the UE with control information” were adopted,

the ‘l27 accused products would still not practice this limitation of claim 1, inasmuch as [

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PUBLIC VERSION

1

d. and wherein the user specific scrambling sequence is a result of

a ‘/1rate convolutional encoding of a UE identification (ID).

The final limitation of claim l reads, “and wherein the user specific scrambling sequence

is a result of a ‘/2rate convolutional encoding of a UE identification (ID).” JX-0004 at col. 3, lns.

28-30. As set forth in the above section regarding claim construction, it was determined that the

claim term “user specific scrambling sequence” is construed to mean “a sequence of bits based

on a user equipment identification.”58

According to claim l, the user specific scrambling sequence described in this claim

element is combined with control information. JX-0004 at col. 3, lns. 18-30. The step of

combining control information with a user specific scrambling sequence necessarily takes place

at a base station, which scrambles the encoded Part 1 data using a user specific scrambling

sequence. RX-3990C (Madisetti RWS) at Q679, Q689-690; Jackson Tr. 558. Inasmuch as the

UE does not generate the claimed combined bits, InterDigital bears the burden of showing that

that the scrambling sequence used by the base stations results from ‘/2rate convolutionally

encoding a UEID.

The evidence adduced by InterDigital does not show how the scrambling sequences

received by the ‘I27 accused products are generated. InterDigital argues that [

l

58Respondents do not disagree with this construction. See Resps. Br. 79.

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PUBLIC VERSION

data that has been convolutionally encoded, also proves that the control infonnation is

convolutionally encoded.” See Compls. Br. at 402 (citing CX-l 309C (Jackson WS) at QI79,

QZO4;CX-1523C (Jackson RWS) at Q149-150; Madisetti Tr. 930). The evidence indicates that

the signal received by the ‘127 accused devices could have been generated using a ‘/1rate

convolutional encoder, but does not establish that they actually were so generated.

In particular, base stations are not required by the 3GPP conformance tests to generate a

scrambling sequence using a ‘/2rate convolutional encoder. RX-3990C (Madisetti RWS) at

Q692-693. As a result, base stations can generate the scrambling sequence [

] which are not ‘/2rate convolutional encoders. Id. at Q694. Indeed,

[

] [ RX-3717C

RX-3825C RX1

Accordingly, InterDigital has not shown that this claim limitation is satisfied.

4. ‘127 Patent —Claim 2

a. The WCDMA UE of claim 1

Inasmuch as the ‘127 accused products do not infringe independent claim 1, they also do

not infringe dependent claim 2.

b. wherein the control information includes channelization and

modulation information of the HS-PDSCH.

The record evidence demonstrates [

] Madisetti Tr. 830-831, 832, 833. Accordingly, the

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‘127 accused products satisfy the limitation “wherein the control information includes

channelization and modulation information of the HS-PDSCH.” The parties do not dispute that

this additional limitation of claim 2 is satisfied. See Resps. Br. at 105-19; Staff Br. at 63-76.

5. ‘127 Patent —Claim 3

a. The WCDMA UE of claim 1

Inasmuch as the ‘127 accused products do not infringe independent claim 1, they also do

not infringe dependent claim 3.

b. wherein the user specific scrambling sequence is a result of

rate matching the ‘/1rate convolutional encoded UE ID.

For all the ‘127 accused devices, [

] See CX-1309C (Jackson WS) at Q268, Q269,

Q273. The parties do not dispute that this additional limitation of claim 3 is satisfied. See

Resps. Br. at 105-19; Staff Br. at 63-76.

6. ‘127 Patent —Claim 4

a. The WCDMA UE of claim 1

Inasmuch as the ‘127 accused products do not infringe independent claim l, they also do

not infringe dependent claim 4.

b. wherein the control information is convolutionally encoded.

It is detennined that the ‘127 accused products also do not satisfy the claim limitation

“wherein the control information is convolutionally encoded.” As discussed above with respect

to the claim l limitation “wherein the user specific scrambling sequence is a result of a ‘/1rate

convolutional encoding of a UE identification (lD),” InterDigital has not adduced evidence

showing that the claimed control information is convolutionally encoded. Therefore, this

additional limitation of claim 4 is not satisfied.

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PUBLIC VERSION

7. ‘127 Patent —Claim 5

a. The WCDMA UE of claim 1

Inasmuch as the ‘127 accused products do not infringe independent claim 1, they also do

not infringe dependent claim 5.

b. wherein the payload data of the associated HS-PDSCH is not

recovered if the bits were not a result of combining the user

specific scrambling sequence associated with the UE with the

control information.

The record evidence indicates that [

] RX-3990C (Madisetti RWS) at Q711-712. Accordingly, the ‘127

accused products do not satisfy this additional limitation of claim 5.

8. ‘127 Patent —Claim 6

a. The WCDMA UE of claim 1

Inasmuch as the ‘127 accused products do not infringe independent claim 1, they also do

not infringe dependent claim 6.

b. comprising circuitry in the WCDMA UE configured to

produce the user specific scrambling sequence.

As discussed above with respect to claim 1, the “user specific scrambling sequence” of

claim 6 “is a result of a ‘/1rate convolutional encoding of a UE identification (lD).” [

1

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PUBLIC VERSION

See RX-3990C (Madisetti RWS) at Q419; Jackson Tr. 602-603; 605. Therefore, the [

] do not satisfy this additional limitation of claim 6.

[

l

9. ‘127 Patent —Claim 7

a. The WCDMA UE of claim 6

Inasmuch as the ‘127 accused products do not infringe claim 6, they also do not infringe

dependent claim 7.

b. wherein the circuitry in the WCDMA UE configured to

produce the user specific scrambling sequence comprises a ‘/1

rate convolutional encoder.

It is determined that, [inasmuch as

] they do not satisfy

this additional limitation of claim 7. See RX-3990C (Madisetti RWS) at Q419; Jackson Tr. 602­

603; 605. As for[

] See Madisetti Tr. 893-897.

10. ‘013 Patent —Claim 16

[ 59

l

59[

]

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PUBLIC VERSION

a. A user equipment comprising:

The preamble of 16 recites, “[a] user equipment.” JX-0003 at col. 4, lns. 33-40. It is

undisputed that the [ ] accused of infringing the ‘127 patent support HSDPA

and are WCDMA user equipment. See CX-1309C (Jackson WS) at Q156-158; Resps. Br. at

106-19; Staff Br. at 63-75.

b. an input configured to accept a 16 bit user identification; and

[

1

c. a ‘/1rate convolutional encoder for processing the 16 bit user

identification code with eight appended zero bits to produce a

48 bit code wherein the 48 bit code is used to determine control

information carried over a high speed shared control channel

(HS-SCCH).

[

1

254
PUBLIC VERSION

11. ‘O13Patent —Claim 17

a.

b.

CX-1309C

The user equipment of claim 16 further comprising

]

a rate matching block for puncturing eight bits after the

production of the 48 bit code.

1

12. ‘013 Patent —Claim 18

a.

b.

The user equipment of claim 16

]

wherein the control information is used for decoding a high

speed physical downlink shared channel (HS-PDSCH).

1

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PUBLIC VERSION

] See id. at Q196-97.

13. ‘O13Patent —Claim 19

a. The user equipment of claim 18

[

]

b. wherein the HS-PDSCH is associated with the HS-SCCH.

As discussed previously, it was determined that the claim tenn “associated with” does not

need construction. The record evidence, including the 3GPP technical specifications detailing

the architecture of HSDPA, demonstrates that the HS-PDSCH is associated with the HS-SCCH,

and that the accused [ ] therefore satisfy this additional claim limitation:

] See CX-1309C (Jackson WS) at Q191-193; CX-0232 (3GPP TS 25.211

v5.8.0) at § 7.8. A diagram provided in the 3GPP technical specifications shows the association:

3xT,1,, T3680chips K >

as-sccn ~ ,

iX

, j 3XT,;,, 7630 chips

s '1

HS-PDSC H ‘

D

1H5PmH(:><r¢,,51:0 chips) '

. ­

Figure 33: Timing relation between the HS-SCCH and the associated HS-PDSCH.

CX-0232 (3GPP TS 25.211 v5.8.0) at § 7.8 (underlining added). Moreover, each HS-SCCH

message specifies (i) a set of one or more HS-PDSCH channels that carries infonnation intended

for a particular UE, and (ii) the modulation type used on each HS-PDSCH channel. CX-1309C

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(Jackson WS) at Ql64-166. This association also constitutes “a particular relationship” and

satisfies this additional claim limitation under the Staff’s proposed construction of “associated

with.”

This claim limitation is also satisfied under Respondents’ proposed construction of

“unique to.” The evidence shows that, within a particular time period, there is a [

] CX-l309C (Jackson WS) at Q201.

The [

] Id. at

Ql9l-193.

14. Infringement of the Accused Products Upon Importation

Respondents argue that the products accused of infringing the UE ID patents do not

infringe the ‘127 of ‘O13patents because they do not directly infringe upon importation into the

United States, and therefore do not satisfy the importation requirement of section 337. See

Resps. Br. at 121-22 (citing Electronic Devices at 13-14 (“[I]nfringement, direct or indirect, must

be based on the articles as imported to satisfy the requirements of section 337.”)). Specifically,

Respondents argue that “none of the Accused Devices are configured to use the HSDPA protocol

(e.g., ‘process’ an HS-SCCH) as required by claims at the time of importation.” Id. (citing

RX-3990C (Madisetti RWS) at Q760-762). It is argued that “each cellular network operator

providing HSDPA service in the U.S. requires a handset to have an International Mobile

Subscriber Identity (‘IMSI’) before it can even use an HSDPA service,” and that “InterDigital

did not even attempt to show that any of the Accused Devices are activated prior to importation

into the U.S. or that the Accused Devices are able to use an HSDPA service at the time of

importation into the U.S. in the manner required by the asserted claims of the ‘O13and ‘127

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PUBLIC VERSION

patents.” Id. at 122 (citing RX-3682 (3GPP 23.003 V7.l0.0) at NK800IDC0773 1483; RX-3868

(3GPP 23.018 V6.4.0) at Section 8.1.21; RX-3990C (Madisetti RWS) at Q760-762).

InterDigital does not deny that the accused UE ID devices must be assigned an IMSI

number, but argues that the assignment of an IMSI number is irrelevant to whether the accused

devices satisfy the importation requirement under Electronic Devices. See Compls. Br. at

408-09. InterDigital argues that “[t]he accused devices do not have to be assigned an IMSI

number to infringe the apparatus claims,” inasmuch as “the accused devices infringe if they have

the structures called out in the claims,” and that “[n]one of those structures is an IMSI number.”

Id. InterDigital’s argument is persuasive.60

Notwithstanding the evidence proffered by Respondents regarding assignment of an IMSI

number, the record evidence demonstrates that the accused products are complete when they are

imported, i.e., the components accused of infringing the ‘127 and ‘O13patents are present at the

time of importation. Therefore, it is determined that the products accused of infringing the ‘127

and ‘0l3 patents do satisfy the importation requirement of section 337.

D. Validity

1. Priority Date (‘127 and ‘013 Patents)

The ‘127 and ‘O13patents descend, through a chain of continuation applications, from

U.S. Patent Application No. 10/l 87,640 (“the ‘640 application”) filed on July 1, 2002, and which

later issued as U.S. Patent No. 6,973,579 (“the ‘579 patent”). See JX-0003; IX-0004. Another

6°InterDigital provides an instructive analogy: “The [accused] devices also cannot be used until

their batteries are charged. But no one other than Respondents would make the . . . argument

that an imported device covered by the claims is, nevertheless, non-infringing because its battery

needs charging.” Compls. Br. at 409.

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ancestor application in the UE ID patent family issued as U.S. Patent No. 7,349,540 (“the ‘540

patent”). JX-0003 at 5/19/2009 Certificate of Correction; JX-0004.

Respondents argue that the ‘127 and ‘O13patent are not entitled to claim priority to the

‘579 patent because InterDigital allegedly added new matter to the ‘S40 patent that affects the

validity of the priority claim. See Resps. Br. at 161-63. Respondents’ argument is based on two

sentences in the ‘540 specification: (i) “[t]he user equipment comprises circuitry configured to

receive payload data over a high speed physical downlink shared channel (HS-PDSCH),” and (ii)

“a high speed physical downlink shared channel (HS-PDSCH) associated with the HS-SCCH.”

RX-3520C (Madisetti) at Q1019. The evidence does not support Respondents’ position.

First, InterDigital’s expert Dr. Jackson testified that these two sentences are not new

matter. CX-1523C (Jackson RWS) at Q145-146. They merely restate in slightly different words

the substance of other passages of the original specification recited elsewhere, and they convey

the same meaning to a person of ordinary skill in the art as those passages appearing in the

original specification. Id. at Q146; see Yingbin-Nature (Guangdong) W00dIndus. C0. v. ITC,

535 F.3d 1322, 1329 (Fed. Cir. 2008) (affirming Commission’s determination that “the use of a

new term by the patentee to describe what was already disclosed does not constitute new

matter”).

Even if the two sentences do constitute new matter, Respondents’ argument would

nevertheless fail if it were determined that the original specification, without regard to the

supposed new matter, supports the claims. See Yingbin, 535 F.3d 1322, 1337 (Fed. Cir. 2008)

(noting that the inquiry is whether the later-claimed subject matter is “supported by adequate

written description in the originally-filed disclosure”). In this investigation, Respondents do not

contend that any asserted ‘013 claim is invalid for lack of written description, and therefore have

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PUBLIC VERSION

no basis to dispute the ‘O13patent’s claim of priority to the ‘579 patent. As for the ‘127 patent,

Respondents do argue that certain asserted claims lack written description support. See Resps.

Br. at 157-61. These argtunents will be addressed further below, but based on the record

evidence, it is determined that the disputed claims of the ‘127 patent are supported by the

specification, and therefore claim priority to the ‘579 patent.

2. Anticipation and Obviousness (‘127 and ‘O13Patents)

a. Historical Background

The UE ID patents are directed to a method for producing a sequence for scrambling and

descrarnbling infonnation transmitted from a base station to a handset using a protocol known as

High Speed Downlink Packet Access (“HSDPA”). The Third Generation Partnership Project

(“SGPP”) developed HSDPA to increase data transfer rates from the base station to a handset,

i.e., on the downlink. RX-3520C (Madisetti WS) at Q37, Ql99-210. 3GPP formed a group

called “Working Group 1” to analyze potential implementations and to draft the HSDPA-related

teclmical specifications begimiing in 2001. See id. at Q2l2-214.

By early 2002, Working Group 1 had decided to transmit data from the base station to the

handset via data channels shared by multiple users. RX-3520C (Madisetti WS) at Q215-216.

These channels were named High Speed Physical Downlink Shared Channels (“HS-PDSCH”).

Id. Inasmuch as the data channels were shared, it was necessary to develop a technique that

would allow a given handset to detennine whether data being transmitted on a HS-PDSCH was

intended for it. Id. at Q2l9-220. Working Group l introduced the High Speed Shared Control

Channel (“HS-SCCH”) for this purpose; the HS-SCCH was intended to provide the information

necessary for the handset to obtain data intended for it on a particular HS-PDSCH. RX-3520C

(Madisetti WS) at Q222-Q223; CX-1523C (Jackson RWS) at Q21.

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In early 2002, Working Group 1 debated how to structure the HS-SCCH. RX-3520C

(Madisetti WS) at Q225. To reduce battery consumption, Working Group 1 discussed using the

HS-SCCH to inform the handset, in advance, that data was arriving for it on the HS-PDSCH. Id

at Q227-230. Working Group l decided that the advance warning should arrive in the first part

of the HS-SCCH, referred to as Part 1, and should contain infonnation sufficient for a handset to

determine whether data was arriving for it. Id.

i. The Motorola “Way Forward”

In February 2002, Working Group 1 agreed on an HS-SCCH structure and approved a

proposal from Motorola detailing that structure (“Motorola Way Forward”). RX-0116;

RX-3520C (Madisetti WS) at Q23 1-249; RX-0479 (Mtg. #24 Minutes) at

1DC_ITCCOMP_00103845-47, 57. The Motorola Way Forward discloses that the HS-SCCH is

divided into two parts. RX-3520C (Madisetti WS) at Q252; RDX-1232 (RX-0116 at

IDC_ITCCOMP_00105962). The first part, “Part 1,” is transmitted entirely in the first slot of

the HS-SCCH, and contains information identifying the channelization code set and modulation

scheme for the HS-PDSCI-I. See RX-3520C (Madisetti WS) at Q252. The second part, “Part 2,”

is transmitted in the second and third time slots, and includes additional information needed to

recover the HS-PDSCH payload data. Id. at Q252, Q258-260; RX-0116 (Motorola Way

Forward) at IDC_ITCCOMP_00105962; RDX-1232 (RX-0116 at IDC_ITCCOMP_00105962).

At the base station, the Part 1 information comprises 8 bits: 7 bits for the channelization

code set plus one bit for the modulation scheme. RX-3520C (Madisetti WS) at Q253-257;

RDX-1226 (RX-0116 (Motorola Way Forward) at IDC_1TCCOMP_00l05962, Fig. l). Prior to

transmission, these 8 bits are input to a ‘/2rate convolutional encoder to produce a 32-bit encoded

sequence, which is then rate-matched to generate a 40-bit encoded sequence. RX-3520C

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(Madisetti WS) at Q26l-262, Q268-274; RDX-1226 (RX-0116 (Motorola Way Forward) at

IDC_ITCCOMP_0Ol05962, Fig. 1). The ‘/2rate convolutional encoder described in the

Motorola Way Forward is from a prior version of WCDMA, referred to as Release 99.

RX-3520C (Madisetti WS) at Q264-266; RX-0116 (Motorola Way Forward) at

IDC_ITCCOMP_001 05962.

Motorola Way Forward also discloses the way in which the base station signals a handset

to receive and process incoming HS-PDSCH data. RX-3520C (Madisetti WS) at Q276-281,

Q297-306; RX-0116 (Motorola Way Forward) at IDC_ITCCOMP_00l05962-63. Motorola

proposed scrambling the 40-bit encoded Part 1 sequence with a 40-bit user specific scrambling

sequence generated from the handset’s unique identification number, or “UE ID.” See

RX-3520C (Madisetti WS) at Q276-281, Q297-306; RX-0116 (Motorola Way Forward) at

IDC_ITCCOMP_00l05962—63. The base station performed the scrambling operation by

applying the 40-bit UE ID scrambling sequence to the 40-bit encoded Part l sequence using an

exclusive-OR operation. See RX-3520C (Madisetti WS) at Q276-281, Q297-306; RX-Ol l6

(Motorola Way Forward) at lDC_ITCCOMP_00lO5962-63; see also RX-3520C (Madisetti WS)

at Q281-288. Inasmuch as the Part 1 sequence was scrambled by using the scrambling sequence

for a specific handset, a handset could use specific metrics calculated during the decoding

process to determine whether the HS-SCCH containing that Part l was intended for it.

RX-3520C (Madisetti WS) at Q289-296, Q297-306; RX-0116 (Motorola Way Forward) at

IDC_ITCCOMP_001 05962. The Motorola Way Forward left open, however, design details of

how to generate a 40-bit scrambling sequence from a UE ID having a shorter length. RX—3520C

(Madisetti WS) at Q307; CX-1523C (Jackson RWS) at Q23.

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ii. The Siemens Proposal

The day after the Motorola circulated the Motorola Way Forward, Siemens proposed

using a forward error correction encoder to generate a 40-bit scrambling sequence from a

shorter-length UE ID. RX-0462 (Siemens Proposal); RX-1347 (Mtg. #24 Minutes) at 23, 25;

CX-1523C (Jackson RWS) at Q24. This forward error correction encoder was already part of

the 3GPP technical specifications. RX-0462 (Siemens Proposal); RX-1347 (Mtg. #24 Minutes)

at 23, 25; CX-1523C (Jackson RWS) at Q24. Working Group l immediately adopted Siemens’

proposal without any performance testing. RX-3520C (Madisetti WS) at Q310-316; RX-0462

(Siemens Proposal); RX-0479 (Mtg. #24 Minutes) at 13, 25. The particular encoder proposed by

Siemens was the Release 99 (32,l0) Reed Muller block encoder, which could accept the 10-bit

(the size contemplated at the time) UE ID, and was known to generate good separation due to its

earlier use for forward error correction. RX-3520C (Madisetti WS) at Q322-324; RX-0462

(Siemens Proposal) at NK800IDC23070031. Inasmuch as the block encoder generated only a

32-bit sequence, Siemens proposed using a rate matching block to increase the length of the

scrambling sequence to 40 bits. See RX-3520C (Madisetti WS) at Q322-324.

iii. The 3GPP Release 5 Specification

Shortly after the February 2002 meeting, 3GPP published the “Release 5” HSDPA

technical specifications. RX-3520C (Madisetti WS) at Q332-335, Q357-358, Q36l-362;

RX-0127 (25.212 Release 5); RX-0126 (25.214 Release 5); RX-0435 (25.858 Release 5). The

Release 5 specifications included 3GPP TS 25.212 (“25.212 Release 5”), 3GPP TS 25.214

(“25.214 Release 5”), and 3GPP TS 25.858 (“25.858 Release 5”) (collectively, “Release 5

Specifications”). The Release 5 Specifications incorporated certain functionality that had been

included in the Motorola Way Forward and the Siemens Proposal: (i) encoding of the HS-SCCH,

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(ii) scrambling Part 1 of the HS-SCCH with a user specific scrambling sequence generated using

the (32,1O)Reed Muller block encoder and rate matching, and (iii) determining the validity of

the HS-SCCH. See, e.g., RX-3520C (Madisetti WS) at Q332-365; CX-1523C (Jackson RWS) at

Q24; RX-0127 (25.212 Release 5) at NK80OIDC07593l43-47; RX-0126 (25.2l4 Release 5) at

NK800IDCO6490941-42; RX-0435 (25.858 Release 5) at ZTE800IDC02l44786-89.

iv. The Motorola 610 Submission

At the next meeting in April 2002, Working Group 1 received a Motorola submission

(“Motorola 610 Submission”) that (i) included a complete description of the encoding and

scrambling of the HS-SCCH described in the Siemens Proposal and Release 5 Specifications,

and (ii) evaluated the performance of the scrambling sequence produced by the Reed Muller

block encoder. See, e.g., RX-3520C (Madisetti WS) at Q366-397; CX-1523C (Jackson RWS) at

Q75-76; RX-0496 (Motorola 610 Submission); RX-0125 (Mtg. #25 Minutes) at 6, 10. The

performance evaluation verified Working Group l’s expectations that the good separation

properties of the Reed Muller block encoder produced a scrambling sequence that performed

well for its intended purpose, i.e., allowing a handset to detennine whether Part 1 of the

HS-SCCH was scrambled with that handset’s scrambling sequence by checking certain metrics

generated during the Viterbi decoding process. See, e.g., RX-3520C (Madisetti WS) at

Q379-384, Q388-391; RX-0496 (Motorola 610 Submission) at lDC_lTCCOMP_00006l23. The

Motorola 610 Submission fL1I'i1'1€1'established that a handset could make this determination before

the handset received the HS-PDSCH data. RX-3520C (Madisetti WS) at Q379-384, Q388-391.

v. Changing to a 16-bit UE ID

Following the Motorola 610 Submission, Working Group 1 realized that another working

group, Working Group 2, might be using a 16-bit UE ID instead of a 10-bit UE ID. RX-0125

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(Mtg. #25 Minutes) at 9. Working Group 1 discussed whether it would be preferable to reuse an

existing 16-bit UE ID instead of using a 10-bit UE ID. RX-3520C (Madisetti WS) at Q388-391;

RDX-1255 (RX-0125 (Meeting #25 Minutes) at IDC_ITCCOMP_00103939). The decision

whether or not to change to a 16-bit UE ID, however, was tabled until the next meeting to allow

for discussion and confirmation with Working Group 2. Dick Tr. 2077-2078; RX-0125 (Mtg.

#25 Minutes) at 9. While the decision to move to 16 bits was deferred to the next meeting, it was

nonetheless apparent to Working Group 1 that the method for generating the Part 1 scrambling

sequence would have to change if a 16-bit UE ID was adopted, inasmuch as the Reed Muller

encoder accepted only a 10-bit input. RX-3520C (Madisetti WS) at Q403-405; RDX-1257;

CX-1523C (Jackson RWS) at Q25-26.

vi. InterDigital’s Contributions

Several InterDigital representatives attended the Working Group 1 meeting at which the

possible change from a 10-bit to 16-bit UE ID was discussed. RX-3520C (Madisetti WS) at

Q434-441. [

] 181.;Dick Tr. 2080, 2081; cx-4075c

(4/17/02 Email from Dr. Dick) [

] cx-1523c (Jackson RWS) at Q53

1Dick Tr. 2080-2081

l

l

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Shortly before the next meeting of Working Group 1, 1nterDigital filed the provisional

application nos. 60/378,509 (“S09 Prov. App”) and 60/378,170 (“170 Prov. App”). RX-3520C

(Madisetti WS) at Q442-447; RX-0432 (509 Prov. App.); RX-0115 (170 Prov. App.). The

provisional applications described the structure of the HS-SCCH developed by Working Group

1, including the possibility of a change to use a 16-bit UE ID, and acknowledged that Working

Group l (i) required that the scrambling sequence have good separation properties and (ii) placed

a “high priority on introducing the new, required functionality by straightforward extensions of

existing functionality.” RX-3520C (Madisetti WS) at Q448-465; RDX-1264 (RX-0432 (509

Prov. App.) at ZTE800IDCO2162427); RDX-1265 (RX-0432 (509 Prov. App.) at

ZTE80OIDCO2162427). In total, the applicants disclosed 11 different methods for generating a

UEID-based scrambling sequence from a 16-bit UE ID. RX-3520C (Madisetti WS) at

Q448-465, Q47O-472; RDX-1264 (RX-0432 (509 Prov. App.) at ZTE800IDC02162427); RDX1265 (RX-0432 (509 Prov. App.) at ZTE800IDC02l62427).

At the next meeting in May 2002, Working Group 1 changed the UE ID length from 10

bits to 16 bits, and InterDigital immediately submitted its proposal listing 6 of the 11 altematives

it had developed for generating a UE ID based scrambling sequence, as well as the separation

characteristics, 1'.e., minimum or Hamming distance, for each. RX-3520C (Madisetti WS) at

Q473-489; RX-0117 (lnterDigital Proposal); RX-1348 (Mtg. #26 Minutes) at

1'DC_ITCCOMP_0OOO6316-17.Inasmuch as one of the two options with the greatest Hamming

distance included the reuse of a ‘/2rate convolutional encoder previously used for forward error

correction in the earlier Release 99 and the Release 5 specifications, Working Group 1 adopted

that solution. See RX-3520C (Madisetti WS) at Q473-489; RX-0117 (lnterDigital Proposal);

RX-1348 (Mtg. #26 Minutes) at IDC_ITCCOMP_000063 16, IDC_ITCCOMP_000063 17

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(“Chairman stated that we should stick to something simple and something that is already

existing in R99 specifications unless there is a really really good reason to use new schemes”).

After Working Group 1 accepted InterDigital’s proposal, lnterDigital filed

non-provisional patent application no. 10/187,640, which issued as U.S. Patent No. 6,973,579

(“the ‘579 patent”). The ‘579 patent and its subsequent continuations describe generation of the

scrambling sequence based in part on using the ‘/1rate convolutional encoder from Release 99,

and preferably a rate-matching step. lnterDigital’s proposed solution, however, did not alter any

other aspect of the encoding and scrambling scheme for Part 1. See JX-0034 (‘579 patent);

RX-3520C (Madisetti WS) at Q532.

b. Overview of the Asserted Prior Art

Respondents argue that the asserted claims of the ‘127 and ‘O13patents are anticipated

and/or rendered obvious in light of the Motorola 610 Submission, the Release 5 Specifications,

and U.S. Patent Nos. 6,012,160 (“the ‘160 patent”), 6,081,597 (“the ‘S97 patent”), and 6,170,076

(“the ‘076 patent”). See Resps. Br. at 131-56, 161-62. Respondents’ invalidity positions under

35 U.S.C. §§ 102 and 103 are summarized as follows:

0 The Motorola 610 Submission alone or in combination with one or more of either

RX-0484 (‘160 patent), RX-0486 (‘597 patent), or RX-0497 (‘076 patent) renders

claims 16-19 of the ‘O13patent and claims 1-7 of the ‘127 patent obvious under any

of the proposed constructions. The Motorola 610 Submission also anticipates

claims 1-6 of the ‘127 patent to the extent InterDigita1’s interpretation of the claims

is adopted;

I The Release 5 Specifications alone or in combination with one or more of either

RX-0484 (‘160 patent), RX-0486 (‘597 patent), or RX-0497 (‘O76patent) render

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claims 16-19 of the ‘O13patent and claims 1-7 of the ‘127 patent obvious under any

of the proposed constructions. The Release 5 Specifications also anticipate claims

1-6 of the ‘127 patent to the extent InterDigital’s interpretation of the claims is

adopted; and

0 The ‘579 patent anticipates and/or renders obvious claim 19 of the ‘O13patent and

claims 1-7 of the ‘127 patent under each of the proposed constructions if the ‘O13

and ‘127 patents are not entitled to claim priority to the ‘579 patent.“

Resps. Br. at 131.

The Staff also argues that the asserted claims of the ‘127 and ‘O13patents are invalid

over the prior art. See Staff Br. at 86-109. The Staff’s positions are summarized as follows:

0 The Motorola 610 Submission (RX-0496) alone or in combination with one or more

ofU.S. Patent No. 6,012,160 (RX-0484) or U.S. Patent No. 6,081,597 (RX-0486)

anticipates and/or renders obvious claims 16-19 of the ‘O13patent.

0 The Release 5 Specifications alone or in combination with one or more of U.S.

Patent No. 6,012,160 (RX-0484) or U.S. Patent No. 6,081,597 (RX-0486) anticipate

and/or render obvious claims 16-19 of the ‘O13 patent.

0 The Motorola 610 Submission (RX-0496) alone or in combination with one or more

of U.S. Patent No. 6,012,160 (RX-0484) or U.S. Patent No. 6,081,597 (RX-0486)

renders obvious claims 1-7 of the ‘127 patent under the Respondents’ claim

61Inasmuch as it was determined above that the ‘127 and ‘O13patents are entitled to claim

priority to the ‘579 patent, this Initial Determination will not analyze the validity of the ‘127 and

‘O13patents in light of the ‘579 patent alone.

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constructions and anticipates claims 1-7 of the ‘127 patent tmder InterDigital’s

constructions.

I The Release 5 Specifications alone or in combination with one or more of U.S.

Patent No. 6,012,160 (RX-0484) or U.S. Patent No. 6,081,597 (RX-0486) render

obvious claims 1-7 of the ‘127 patent under the Respondents’ claim constructions

and anticipate claims 1-7 of the ‘127 patent under InterDigital’s constructions.

Staff Br. at 86.

c. The Motorola 610 Submission and Release 5 Specifications

The Motorola 610 Submission is prior art tmder § 102(a) because it was published and

presented at the April Meeting of Working Group 1prior to the alleged date of conception of the

purported invention claimed in the ‘O13and ‘127 patents. See RX-3520C (Madisetti WS) at

Q366-369, Q397. The Release 5 Specifications are prior art under § 102(a) because they were

published prior to the alleged date of conception of the purported invention claimed in the ‘O13

and ‘127 patents. See id. at Q365.

lnterDigital’s expert Dr. Jackson testified that most of the claim elements of the ‘O13and

‘127 patents were known in the art and were disclosed ir1both the Motorola 610 Submission and

the Release 5 Specification. See CX-1523C (Jackson RWS) at Q77, Q89; Jackson Tr.

2181-2183, 2184-2190, 2191-2195. The only disputes are whether the prior art anticipates or

renders obvious the following claim requirements: (i) an encoder capable of accepting a 16-bit

UE ID for use in generating a scrambling sequence (claims 16-19 of the ‘O13patent), and (ii) a ‘/2

rate convolutional encoder used, with or without rate-matching, to generate the scrambling

sequence (all asserted claims). See CX-1523C (Jackson RWS) at Q77, Q89; Jackson Tr. 2195.

The record evidence demonstrates that these elements were known and obvious to those of

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ordinary skill in the art at the time of the UE ID patent inventions. A claim-by-claim analysis of

the validity of the ‘127 and ‘O13patents in light of the Motorola 610 Submission and Release 5

Specifications will follow the discussion of disputed elements below.

i. Disputed Elements

Use of a 16-bit UE ID.

The use of a 16-bit UE ID was inherent and obvious in the context of the problem to be

solved at the time of the ‘127 and ‘O13inventions. See RX-3520C (Madisetti WS) at Q552-558,

Q634-638. The state of the art as described in the Motorola 610 Submission and the Release 5

Specifications required generating a 40-bit scrambling sequence using Reed Muller block

encoding and rate matching. Id. A person of ordinary skill in the art would have understood that

Working Group 1 had proposed to change the length of the UE ID from 10 bits to 16 bits. Id.;

CX-1523C (Jackson RWS) at Q27. As InterDigital’s expert Dr. Jackson testified at the hearing,

the disclosure of an input that accepts a 16-bit UE ID was inherent and obvious from the problem

being addressed. Jackson Tr. 2191-2192; RX-3520C (Madisetti WS) at Q554, Q556, Q736,

Q738; RX-0125 (Mtg. #25 Minutes) at 9. The Motorola 610 Submission and the Release 5

Specifications also each disclose a ‘/1rate convolutional encoder that accepts a 16-bit input

consisting of an 8-bit Part 1 sequence and 8 tail bits. RX-3520C (Madisetti WS) at Q555, Q737.

Inasmuch as InterDigital did not conceive of using a 16-bit UE ID, use of a 16-bit UE ID in the

context of the ‘127 and ‘O13patents is not novel. See Dick Tr. 2078 (testifying that the inventors

did not conceive of the idea of moving from a 10-bit to a 16-bit UE ID).

V1rate convolutionallv encoding a UE ID.

The record shows that employing a ‘/2rate convolutional encoder to generate a user

specific scrambling sequence is obvious in light of either the Motorola 610 Submission or the

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Release 5 Specifications. RX-3520C (Madisetti WS) at Q560, Q74O. The motivation to use the

‘/2rate convolutional encoder stems from the nature of the problem presented by Working Group

1, which would have prompted a person of ordinary skill to search for a method of generating a

scrambling sequence that could accept a 16-bit input, produce a longer output sequence with

good separation properties, and reuse existing technology. Id Q561, Q741; Jackson Tr.

525-526; RDX-1258C (RX-0475 (Dick 800 Dep.) at 117-118.

The Motorola 610 Submission and the Release 5 Specifications each disclose (i) the reuse

of a forward error correction encoder (i.e., the Reed Muller block encoder) to generate a user

specific scrambling sequence, and (ii) that the ‘/2rate convolutional encoding and rate matching

used for forward en'or correction generates a 40-bit sequence from a 16-bit sequence.

RX-3520C (Madisetti WS) at Q56l, Q568, Q74l, Q745; RDX-1275 (RX-0496 (Motorola 610

Submission) at IDC_ITCCOMP_00006l23, FIG. 3); RX-0127 (25.212 Release 5) at §§ 4.6.1,

4.6.5, 4.6.6. Inasmuch as the Reed Muller block encoder was a forward error correcting encoder,

and forward error correcting encoders were known to generate sequences with good separation, it

would have been obvious to a person of ordinary skill in the art to try other known forward error

correction encoders such as a ‘/2convolutional encoder. See RX-3520C (Madisetti WS) at Q56l,

Q568, Q741, Q745; Jackson Tr. 2198, 2210-2211.

The ‘/2rate convolutional encoder used for forward error correction in the prior art was

the obvious and logical choice for generating the scrambling sequence, inasmuch as it satisfied

both criteria identified by Working Group 1 and known to the skilled artisan. Choosing the ‘/2

rate convolutional encoder allowed reuse of existing functionality. Specifically, the Release 5

Specifications and Motorola 610 Submission both disclosed use of a ‘/2rate convolutional

encoder alongside the Reed Muller block encoder as possible forward error correction encoders.

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RX-0496 (Motorola 610 Submission) at l (both encoders on same page); RX-0127 (25.2l2

Release 5) at § 4.6.5 (both encoders in the same section); RX-3520C (Madisetti WS) at Q606,

Q759; Jackson Tr. 2197: 16-20. Ftuther, the disclosed ‘Arate convolutional encoder was already

being used to encode 16 bits (8 bits of Part l infonnation plus 8 tail bits) into output sequences

with good separation. Jackson Tr. at 2199-2200; 2197; Dick Tr. 2100-2101; RX-3520C

(Madisetti WS) at Q579). Additionally, substituting the ‘/1rate convolutional encoder would

have been obvious for at least the following seven reasons.

First, it would have been obvious to a person of ordinary skill in the art to try other

forward error correction encoders known to produce sequences with good separation.

RX-3520C (Madisetti WS) at Q584-586, Q753. As InterDigital’s expert Dr. Jackson testified, a

person of ordinary skill would have understood that good separation was a desirable

characteristic of forward error correction encoders and scrambling sequence generators. Jackson

Tr. 2198. Dr. Jackson also testified that the separation properties of an encoder are the same

whether that encoder is used for forward error correction or generation of a scrambling sequence,

and that there is no characteristic of a forward error correction encoder that would prevent a

person of ordinary skill in the art from considering that encoder for use as a scrambling sequence

generator or from implementing that encoder. Jackson Tr. 2209; 2210; 2190-2191. Indeed, Dr.

Jackson testified that a person of ordinary skill would have considered other forward error

correction encoders rather than looking to encryption or privacy systems when searching for

ways to generate a scrambling sequence:

Q. And, in fact, it’s your opinion that a person of ordinary skill in the art

would be more likely to look at articles describing forward error

correction encoders over articles related to encryption to identify a

scrambling sequence used for the pmpose described in the ‘O13and ‘127

Patents, right?

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A. Yes, yes. Error correcting codes are devoted to a very - in part to the

problem of finding sequences with good separation. Privacy systems are

devoted to finding sequences that are hard to undo or understand.

Jackson Tr. 2210-2211; see RX-3520C (Madisetti WS) at Q585.

Second, a person of ordinary skill in the art would have expected that the ‘/1rate

convolutional encoder used for forward error correction would function well as a scrambling

sequence generator because the purpose of a ‘/2rate convolutional encoder is to generate

sequences with good separation. RX-3520C (Madisetti WS) at Q569, Q58l-582, 7Q46; see Dick

Tr. 2100-2101 (acknowledging known separation properties of convolutional encoders).

Specifically, the Release 99 ‘/2rate convolutional encoder included in the Motorola 610

Submission and Release 5 Specifications was well-known and well-documented as generating

codes having good separation properties. RX-3520C (Madisetti WS) at Q169-198, Q569, Q581,

Q746; RX-0457 (Lin & Costello) at IDC_ITCCOMP_00l05543 (containing tables of

convolutional codes with maximal separation properties that identify the ‘/1rate convolutional

encoder in 25.212 Release 5); RX-455 (Short Convolutional Codes article) (containing the same

table as disclosed in Lin & Costello); RX-0492 (Digital Communications) (same); RDX-1219

(RX-0457 (Lin & Costello) at IDC_ITCCOMP_00l05543); RDX-1220 (RX-0455 (Short

Convolutional Codes article) at NK800lDC06484233). Dr. Jackson testified that a person of

ordinary skill could have determined the separation properties of the ‘/2rate convolutional

encoder using a textbook such as Lin & Costello. See Jackson Tr. 2208-2209, 2256-2257. Thus,

the result of using a ‘/2rate convolutional encoder was entirely predictable and expected to a

person of ordinary skill.

Third, a person of ordinary skill in the art would have understood that the ‘/1rate

convolutional encoder of Release 99 was one of a finite and very low number of preexisting

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options in Release 99 that could generate a scrambling sequence from a 16 bit input and, as

discussed previously, would yield predictable results. RX-3520C (Madisetti WS) at Q572-574;

RX-0127 (25.212 Release 5); Jackson Tr. 2243 (testifying there are about 10 to 12 encoders

disclosed in the prior art specifications).

Fourth, a person of ordinary skill in the art would have understood that a convolutional

encoder that only receives a finite input, such as 16 bits, generates a code that is referred to as a

terminated convolutional code. RX-3520C (Madisetti WS) at Q154, Q583, Q757. It was Well

known that this code could be generated by either a convolutional encoder or a block encoder.

RX-3520C (Madisetti WS) at Ql55-168, Q583, Q757; Jackson Tr. 2196; RDX-1214 (RX-0452

(Rate-Compatible Punctured Convolutional Codes) at NK800IDC05 153287); RDX-1215

(RX-0445(Ma1karnakiDissertation) at NK800lDC06505283); RDX-1216 (RX-0445 (Malkamaki

Dissertation) at NK80OIDC06505268). ln fact, Dr. Jackson testified that a convolutional

encoder that accepts a 16-bit input and generates a fixed output is a type of block encoder.

Jackson Tr. 2196. Thus, it would have been obvious to a person of ordinary skill to substitute a

convolutional encoder that receives a 16-bit input for a block encoder. RX-3520C (Madisetti

WS) at Q583.

Fifth, a person of ordinary skill in the art would have understood that ‘/2rate

convolutional encoders and block encoders are often interchangeable for inputs with a finite

length, as in the context of forward error correction and other applications, such as space

applications in which separation between the code words is important. RX-3520C (Madisetti

WS) at Q587-596, Q758; RX-0474 (R1-01-1030) at ITC_COMP_OOO99870(“[I]n principle,

both convolutional codes as well as block codes come into question for this issue”); RX-0473

(Siemens R1-01-1131) at 2-8 (discussing convolutional codes, Reed Muller codes, and Reed

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Solomon codes as possible channel encoders for the HS-SCCH); RX-0442 (Applications of

Error-Control Coding) at 2531, 2533-36 (noting that convolutional encoders became the

preferred choice in most practical applications)

Sixth, a person of ordinary skill in the art would have expected that a convolutional

encoder could be used as a scrambling sequence generator because it was understood that the

mathematical operation of convolution could be used to generate a scrambling code. RX-3520C

(Madisetti WS) at Q602-605; RX-0438 (Altera App. Note) at 6, FIG. 4 (teaching that one can

design a “scrambling code generator using the same LPM functions used for the convolutional

encoder”).

Seventh, a person of ordinary skill in the art would be motivated to substitute a

convolutional encoder for a Reed Muller block encoder because it was well known that a

convolutional code could be generated from Reed Muller code such that both codes have the

same separation properties. RX-3520C (Madisetti WS) at Q598-601; RX-0460 (A Link Between

Quasi-Cyclic Codes and Convolutional Codes) at NK800IDC05153304-05 (describing how to

generate a convolutional code from a Reed Muller code, while maintaining the separation

property of the code).

For all of these reasons, substituting the preexisting ‘/2rate convolutional encoder for the

Reed Muller encoder to arrive at the ‘127 and ‘O13claimed inventions would have been obvious

to one skilled in the art.62

62Judge Luckern previously found that the “1/2rate convolutional encoder” limitation from the

‘S79 patent, an ancestor patent to the asserted ‘l27 and ‘O13patents, valid over the prior art.

Certain 3G Mobile Handsets and Components, Inv. No. 337-TA-613, Initial Determination at

222-23 (Aug. 14, 2009). The Commission reviewed Judge Luckern’s determination as to the

validity of the ‘579 patent. Notice of Comniission Detennination to Review in Part a Final

Determination Finding No Violation of Section 337 and On Review to Affirm the Administrative

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ii. ‘127 Patent ~ Claim 1

Analvsis under InterDigital’s proposed construction of the claim 1 limitations.

The Motorola 610 Submission and the Release 5 Specifications each disclose a WCDMA

UE. RX-3520C (Madisetti WS) at Q645-647, Q730-733; RX-0496 (Motorola 610 Submission)

at NK800IDC06385227-28; RX-0127 (25.2l2 Release 5) at § 3; RX-0126 (25.214 Release 5) at

§ 7.1. The Motorola 610 Submission and Release 5 Specifications also each disclose and render

obvious circuitry in the WCDMA UE configured to process an HS-SCCH under InterDigital’s

proposed construction. RX-3520C (Madisetti WS) at Q649-663, Q8l7-822; RX-0496 (Motorola

610 Submission) at NK80OIDC06385227-28; RX-0127 (25.212 Release 5) at §§ 4.6.1, 4.6.7;

RX-0126 (25.214 Release 5) at § 7.1; RX-0435 (25.858 Release 5) at §8.1.2.

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious circuitry in the WCDMA UE configured to recover payload data from a high speed

physical downlink shared channel (HS-PDSCH) under all proposed constructions of the

limitation, including the construction adopted above. RX-3520C (Madisetti WS) at Q670-672,

Q824-827; RX-0496 (Motorola 610 Submission) at NK800IDC06385227-28; RX-0127 (25.212

Release 5) at §§ 4.5, 4.6; RX-0126 (25.2l4 Release 5) at § 7.1. The Motorola 610 Submission

and Release 5 Specifications each disclose and render obvious the fact that the HS-PDSCH is

associated with the HS-SCCH under each proposed construction of “associated with.”

Law Judge’s Determination of No Violation, at 2 (Oct. 16, 2009). Upon review, the Commission

took no position with regard to validity. Id.

The fmdings with respect to the validity of the ‘127 and ‘O13patents set forth in this Initial

Detennination do not contradict Judge Luckern’s previous determination, inasmuch as the

invalidity record is more developed in this investigation than was the case in the 613

Investigation, and the combinations of prior art examined in this investigation were not

previously before Judge Luckem.

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RX-3520C (Madisetti WS) at Q633-642, Q673-675, Q828-830. Further, the Motorola 610

Submission and Release 5 Specifications each disclose and render obvious the following element

under all proposed constructions: “in response to the HS-SCCH including bits; wherein the bits

are a result of a combining of a user specific scrambling sequence associated with the UE with

control information.” RX-3520C (Madisetti WS) at Q673-693, Q831-844; RX-0496 (Motorola

610 Submission) at NK800IDC06385227-28, NK8OOIDC06385232;RX-0127 (25212 Release

5) at §§ 4.6.1, 4.6.7; RX-0126 (25.2l4 Release 5) at § 7.1; RX-0435 (25.858 Release 5) at

§8.1.2.

Under InterDigital’s interpretation of claim l, there is no requirement that the user

specific scrambling sequence be generated by a ‘/1rate convolutional encoder. See RX-3520C

(Madisetti WS) at Q700, Q847, Q851-852. InterDigital’s expert Dr. Jackson argues that neither

the base station nor a handset must use a ‘/2rate convolutional encoder to generate the scrambling

sequence. Jackson Tr. 529. InterDigital and Dr. Jackson therefore argue that claim l extends to

a user specific scrambling sequence that could have been generated by a block encoder. Id.

Given this testimony and InterDigital’s broad interpretation, the Motorola 61O

Submission and Release 5 Specifications each disclose the element of “wherein the bits are a

result of a combining of a user specific scrambling sequence associated with the UE with control

information.” RX-3520C (Madisetti WS) at Q702-703, Q854. Inasmuch as claim l as construed

by InterDigital covers scrambling sequences generated by block encoders, the Motorola 610

Submission and Release 5 Specifications anticipate claim 1 under that interpretation.

Analvsis under the adopted construction of the claim 1 limitations.

The only disputed limitation under adopted constmctions is the requirement that the

handset use a user specific scrambling sequence that is a result of a ‘/2rate convolutional

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encoding of a UE ID. For the reasons stated above, the Motorola 610 Submission and Release 5

Specifications each render this element obvious inasmuch as it would have been obvious to

substitute the Release 99 ‘/2rate convolutional encoder for the Release 99 Reed Muller block

encoder. See RX-3520C (Madisetti WS) at Q694-698, Q802-816. Further, the Motorola 610

Submission and Release 5 Specifications each disclose descrambling the HS-SCCH. See id. at

Q652-656, Q803-809.

iii. ‘127 Patent —Claim 2

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the additional requirement that control information include channelization and

modulation information of the HS-PDSCH. RX-3520C (Madisetti WS) at Q704-706, Q855-857

RX-0496 (Motorola 610 Submission) at NK800IDCO6385227-28; RX-0127 (25.212 Release 5)

at §§ 4.6, 4.6.1.

iv. ‘127 Patent —Claim 3

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the additional requirement that a user specific scrambling sequence is a result of rate

matching the ‘/2rate convolutionally encoded UE ID. RX-3520C (Madisetti WS) at Q707-711,

Q858-864; RX-0496 (Motorola 610 Submission) at NK800IDC06385227-28; RX-0127 (25.212

Release 5) at §§ 4.2.7, 4.2.7.5, 4.6.1., 4.6.6, 4.6.7.

V. ‘I27 Patent —Claim 4

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the additional requirement that control information is convolutionally encoded.

RX-3520C (Madisetti WS) at Q712-714, Q865-867; RX-0496 (Motorola 610 Submission) at

NK800IDC06385227-28; RX-0127 (25212 Release 5) §§ 4.6.1., 4.6.5.

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vi. ‘127 Patent —Claim 5

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the additional requirement added by claim 5, inasmuch as they contain more detail

regarding the HS-PDSCI-I than does the ‘127 patent. See RX-3520C (Madisetti WS) at

Q716-717, Q868-870; RX-0496 (Motorola 610 Submission) at NK8O0IDC06385227-28;

RX-0126 (25.214 Release 5) at § 7.1; RX-0435 (25.858 Release 5) at §8.1.2.

vii. ‘127 Patent —Claim 6

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the requirement of circuitry configured to produce the user specific scrambling

sequence. RX-3520C (Madisetti WS) at Q718-719, Q865-867; RX-0496 (Motorola 610

Submission) at NK800IDC063 85227-28; RX-0127 (25.212 Release 5) §§ 4.6.1 ., 4.6.5.

viii. ‘127 Patent —Claim 7

For the reasons stated above, the Motorola 610 Submission and Release 5 Specifications

each render obvious circuitry in the WCDMA UE configured to produce the user specific

scrambling sequence that comprises a 1/2rate convolutional encoder, inasmuch as it would have

been obvious to substitute the Release 99 ‘/1rate convolutional encoder for the Release 99 block

encoder. RX-3520C (Madisetti WS) at Q712-714, Q874-877; RX-0496 (Motorola 610

Submission) at NK80OIDCO6385227-28;RX-0127 (25212 Release 5) §§ 4.6.7.

ix. ‘013 Patent —Claim 16

The Motorola 610 Submission and Release 5 Specifications each disclose “user

equipment.” RX-3520C (Madisetti WS) at Q549-551, Q730-733; RX-0496 (Motorola 610

Submission) at NK800IDC06385227-28; RX-0127 (25.212 Release 5) § 3; RX-0126 (25.214

Release 5) § 7.1. As discussed above, the Motorola 610 Submission and Release 5

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Specifications each disclose and/or render obvious an input configured to accept a 16-bit user

identification. See RX-3520C (Madisetti WS) at Q552-558; RX-0496 (Motorola 610

Submission) at NKSOOIDCO6385227-28; RX-3520C (Madisetti WS) at Q734-738; RX-0127

(25.2l2 Release 5) at §§ 4.6.1., 4.6.5, 4.6.7. Further, as discussed above, the Motorola 610

Submission and Release 5 Specifications each render obvious use of a ‘/2rate convolutional

encoder to produce a code. See, e.g., RX-3520C (Madisetti WS) at Q559-610, Q739-761. The

Motorola 610 Submission and Release 5 Specification each also disclose adding tail bits to

information input into a convolutional encoder and, thus, disclose a 16-bit user identification

code with eight appended zero bits. See, e.g., RX-3 520C (Madisetti WS) at Q563-565, Q743­

744; RX-0496 (Motorola 610 Submission) at FIG. 3; RX-0127 (25.212 Release 5) at § 4.2.3.1.

Thus, the Motorola 610 Submission and Release 5 Specifications each render obvious a 1/1rate

convolutional encoder for processing the 16-bit user identification code with eight zero bits to

produce a 48-bit code.

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the use of a 48-bit code to determine control information (under any proposed

construction) carried over an HS-SCCH. See, e.g., RX-3520C (Madisetti WS) at Q611-619,

Q762-770; RX-0496 (Motorola 610 Submission) at IDC_ITCCOMP_00006l23; RX-0127

(25.212 Release 5) at § 4.6.1; RX-0126 (25.214 Release 5) at § 7.1.

x. ‘013 Patent —Claim 17

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the requirement of a rate matching block for puncturing eight bits after the production of

the 48-bit code. RX-3520C (Madisetti WS) at Q621-626, Q771-778; RX-0496 (Motorola 610

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Submission) at NK800IDC06385227-28, FIGS. 1, 3; RX-0127 (25.212 Release 5) at §§ 4.6.1,

4.6.6, 4.6.7, 4.2.7, 4.2.7.5.

xi. ‘O13 Patent —Claim 18

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the requirement of control infonnation used for decoding the HS-PDSCH. RX-3520C

(Madisctti WS) at Q627-631, Q779-783; RX-0496 (Motorola 610 Submission) at

NK800IDC06385227-28; RX-0127 (25.2l2 Release 5) at §4.6; RX-0126 (25.214 Release 5) at §

7.1.

xii. ‘O13Patent —Claim 19

The Motorola 610 Submission and Release 5 Specifications each disclose and render

obvious the requirement that the HS-PDSCH is associated with (under each proposed

construction) the HS-SCCH. RX-3520C (Madisetti WS) at Q633-642, Q784-794; RX-0496

(Motorola 610 Submission) at NK800IDC06385227-28; RX-0127 (25.212 Release 5).

d. The Motorola 610 Submission or the Release 5 Specifications

in Combination with the “I60 patent, ‘579Patent, or ‘076

patent

InterDigital’s validity case hinges on the use of a ‘/1rate convolutional encoder to

generate a scrambling sequence being the point of novelty of the claimed invention. As

discussed above, it would have been obvious to use a ‘/2rate convolutional encoder based solely

on the Motorola 610 Submission or the Release 5 Specifications and the motivation to reuse

preexisting functionality. Numerous other motivations for making this design choice are also

described above. The motivation to use the preexisting ‘/2rate convolutional encoder over other

encoder options was particularly strong because convolutional encoders were used to generate

scrambling sequences in other contexts in the prior art. Specifically, both U.S. Patent Nos.

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6,012,160 (“the ‘160 patent”) and 6,081,597 (“the ‘597 patent”) explicitly disclose the use of a

convolutional encoder to generate scrambling sequences as explained below. U.S. Patent No.

6,170,076 (“the ‘O76patent”) states that a ‘/1rate convolutional encoder is equivalent to a block

encoder, and provides further motivation for substituting the preexisting convolutional encoder

for the preexisting block encoder.

i. The ‘160 Patent

The ‘160 patent issued on January 4, 2000, and thus constitutes prior art to the UE ID

patents. RX-0484 (‘160 patent). The patent is directed to a method of protecting important data

bits during transmission, and discloses the use of a convolutional encoder to generate a

scrambling sequence. RX-3520C (Madisetti WS) at Q891-931; RX-0484 (‘160 patent) at col. 4,

lns. 1-51; Fig. 1; Fig. 2. In particular, Figure 2 of the ‘160 patent is a scrambling mask generator

that accepts a 16-bit input and uses the mathematical operation ofconvolution to generate the

scrambling mask. RX-3 520C (Madisetti WS) at Q90l-903; RX-0484 (‘160 patent) at col. 4, lns.

1-51 (disclosing generation of a scrambling sequence using a linear feedback shift register);

Jackson Tr. 2216 (testifying that a linear feedback shift register uses the mathematical operation

of convolution). It is undisputed that an encoder using the mathematical operation of

convolution constitutes a convolutional encoder under the parties’ agreed construction, and the

‘160 patent therefore teaches a ‘/1rate convolutional encoder.

One skilled in the art would have been motivated to combine the ‘160 patent with either

the Motorola 610 Submission or the Release 5 Specifications because the ‘160 patent discloses

how to generate a scrambling sequence in the context of wireless communications, and also to

apply that scrambling sequence to data that has been encoded using a ‘/2rate convolutional

encoder. RX-3520C (Madisetti WS) at Q887-890. Thus, all three references address the same

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problem, and one skilled in the art would have been aware of the ‘160 patent when considering

options for generating a scrambling sequence for the HS-SCCH. Id. Given the nature of the

problem, this combination would have further motivated one skilled in the art to use a

convolutional encoder to generate a scrambling sequence, and would have guided the skilled

artisan to the convolutional encoder in the prior art Release 99 specifications.

ii. The ‘597 Patent

The ‘S97 patent was filed on June 27, 2000, and is thus prior art to the UE ID patents.

RX-0486 (‘597 patent). The patent is directed to a public key cryptography system used to

encrypt, z'.e.,scramble, messages. RX-3520C (Madisetti WS) at Q939, Q958-960; RX-0486

(‘S97 patent) at col. 7, lns. 1-57. In this patent, the public key scrambling sequence is generated

using a convolutional encoder that provides a cyclic convolution product of two inputs.

RX-3520C (Madisetti WS) at Q939, Q958-960; RX-0486 (‘S97 patent) at col. 7, lns. 1-57. A

person of ordinary skill in the art would have understood that linear convolution is typically

implemented using cyclic convolution. RX-3520C (Madisetti WS) at Q973-979. Even

InterDigital’s expert Dr. Jackson testified that cyclic convolution and linear convolution generate

the same sequences from the same input as long as appropriate padding is used. Jackson Tr.

2241.

A person skilled in art would have been motivated to combine the ‘597 patent with the

Motorola 610 Submission or the Release 5 Specifications because both relate to methods of

generating scrambling sequences. RX-3520C (Madisetti WS) at Q95l-953. ln fact, the PTO,

when searching for relevant art, looked exclusively in the cryptography field to which the ‘597

patent belongs. Id. at Q949-950.

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iii. The ‘O76Patent

The ‘O76patent issued on January 2, 2001, and therefore constitutes prior art to the UE

ID patents. RX-O497 (‘O76patent). The ‘O76patent discloses that a “rate-l/2 convolutional

code can be interpreted as equivalent to an interleaved linear block code.” RX-0497 (‘O76

patent) at col. 3, lns. 28-30; RX—352OC(Madisetti WS) at Q999-Q1001. Inasmuch as the

Motorola 610 Submission and Release 5 Specifications disclose the use of a block encoder to

generate a scrambling sequence, a person of ordinary skill would have understood that some

block codes are equivalent to convolutional codes, and, thus, would have tried a convolutional

code in place of the block code. RX-3520C (Madisetti WS) at Q999-Q1001. It would have been

obvious for one skilled in the art to consider the ‘O76patent in combination with the Motorola

6lO Submission and Release 5 Specifications because Working Group 1 was searching for a

different scrambling sequence generator to replace the block encoder.

e. Secondary Considerations

No showing of secondary considerations can overcome theprimafacie case of

obviousness detailed above. InterDigital relies on three secondary considerations, i.e., alleged

long-felt but unsolved need, failure of others, and commercial success, but none overcomes the

evidence showing obviousness of the ‘127 and ‘O13patents. See Compls. Br. at 419-21.

InterDigital argues that a long-felt but unsolved need for generating a 40-bit scrambling

sequence from a 16-bit UE ID existed because a month elapsed between the alleged decision to

use a 16-bit UE ID in April and InterDigital’s submission in May. See Compls. Br. at 420-21.

InterDigital’s argument is not supported by the evidence, inasmuch Working Group 1 did not

decide to change to a 16-bit UE ID until the May meeting, which is after InterDigital filed the

provisional applications that later matured into the ‘l27 and ‘O13patents. The inventors’

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conceptions of the claimed inventions were therefore in anticipation of the Working Group’s

actions, and not the result of a long-felt need. InterDigital’s long-felt need theory is also

weakened due to the fact that multiple companies succeeded in developing a solution for

generating a 40-bit sequence from a 16 bit UE ID.

With respect to InterDigital’s argument that others failed to conceive of the invention

claimed in the ‘127 and ‘O13patents, the evidence demonstrates that other companies did, in

fact, devise methods for generating a scrambling sequence from a 16-bit UE ID. Specifically,

the evidence shows that at least LG and Siemens succeeded in solving the same problem

purportedly solved by ‘O13and ‘127 inventions, that of generating a scrambling sequence from a

16-bit UE ID. See, e.g., CX-1523C (Jackson RWS) at Q30-31; RX-1362 (Siemens Proposal) at

IDC_ICCOMP_OO006571 (proposing a BCH encoder with a minimum distance of 8, which is

the same as the ‘/2rate convolutional encoder proposed by InterDigital); see also RX-0475C

(Dick 800 Dep.) at 343-344 (testifying that “[t]here were several other proposals at roughly the

same time frame”). For example, LG proposed using the long scrambling sequence generator

described in the prior an version of 25.213 to generate a scrambling sequence from a 16-bit UE

ID. RX-1202 (R1-O2-0541); RX-1348 (Mtg. #26 Minutes) at IDC_ITCCOMP_00006317.

Notably, InterDigital’s expert Dr. Jackson testified that the long scrambling sequence generator

used the mathematical operation of convolution to generate the scrambling sequence, and is thus

a convolutional encoder under the parties’ agreed construction. See Jackson Tr. 2219. Thus,

among the proposals for generating a scrambling sequence from a 16-bit UE ID, InterDigital was

not the only Working Group 1 participant to propose the use of a convolutional encoder to

generate a scrambling sequence. Id.; CX-1523C (Jackson RWS) at Q30-31. The record

indicates that InterDigita1’sproposal was chosen over LG’s proposal because Working Group 1

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found InterDigital’s approach simpler than LG’s, and not because LG’s approach failed to solve

the problem presented by extending the UE ID to 16 bits. RX-1348 (Mtg. #26 Minutes) at

IDC_lTCCOMP_OOOO6316-17 (adopting the InterDigital proposal over the “concern” that the

LG submission “could cause UE complexity,” inasmuch as “[the] Chainnan stated that we

should stick to something simple and something that is already existing in R99 specifications

unless there is a really really good reason to use new schemes”).

The record evidence also does not support Ir1terDigital’salleged secondary consideration

of commercial success. InterDigital argues that the inventions of the ‘127 and ‘O13patents

achieved commercial success because the claimed invention was incorporated into SGPP

HSDPA specifications. See Compls. Br. at 419-20. HSDPA-compliance, however, is

determined by a handset’s ability to pass certain conformance tests and does not require the use

of a convolutional encoder to generate a scrambling sequence. See RX-3990C (Madisetti RWS)

at Q745-759. Therefore, incorporation of the ‘127 and ‘O13inventions into the HSDPA

specifications is irrelevant. See id. Furthermore, even if HSDPA compliance required devices to

perform the precise steps described in the 3GPP specifications, there is no evidence that the

commercial success of HSDPA devices is attributable to the inventions claimed in the ‘127 and

‘O13patents. InterDigital has failed to show the existence of a nexus between the claimed

invention of using a % rate convolutional encoder to generate a UE ID scrambling sequence and

any commercial success of HSDPA-compliant handsets.

3. Lack of Written Description (‘127Patent)

Respondents contend that claim 1 of the ‘127 patent lacks written description for the

claim limitations (i) “circuitry configured to recover payload data from a HS-PDSCH . . . in

response to the HS-SCCH including bits . . . [that] are a result of a combining of a user specific

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scrambling sequence associated with the UE with control infonnation,” and (ii) “circuitry in the

WCDMA UE configured to process a high speed shared control channel (HS-SCCH).” See

Resps. Br. at 158-61; RX-3520C (Madisetti WS) at Q1032. The evidence does not support

Respondents’ arguments.

First, with respect to “circuitry configured to recover payload data from a HS-PDSCH,”

the ‘127 patent, as well as its ancestor the ‘S79 patent, disclose the following:

To support HSDPA, high speed shared control channels (HS-SCCHs) are

used. The HS-SCCHs are used to signal vital control information to the

user equipments (UEs). Each HS-SCCH has two parts, referred to as

Part-l and Part-2. Part-l carries time critical information needed by the

UE. This information includes the channelization code set and the

modulation type used by the high speed physical downlink shared control

channel (HS-PDSCH) which carries the HSDPA payload. This

information is vital to support HSDPA, since HSDPA uses adaptive

modulation and coding (AMC).

JX-0004 (‘127 patent) at col. 1, lns. 30-39; JX-0034 (‘S79 patent) at col. l, lns. 20-30.

InterDigital’s expert Dr. Jackson explained that a person of ordinary skill in the art would

understand this passage to describe the association between the HS-SCCH and the HS-PDSCH,

including that the HS-PDSCH carries payload data and the particular infonnation carried on the

HS-SCCH that is used to recover that payload data. CX-1523C (Jackson RWS) at Q13‘).

Moreover, Dr. Jackson explained that persons of ordinary skill in the art would not only

understand that the control information is used to recover payload data from the HS-PDSCH, but

that they would also understand how to use the control information in a wireless system

employing adaptive modulation and coding. CX-1523C (Jackson RWS) at Q1138-142,Ql54.

More specifically, Dr. Jackson explained that adaptive modulation and coding was a well-known

technique in wireless communications as of the time of the filing of the application that led to the

‘S79 patent and the provisional applications filed shortly before. Ia’.at Ql40-141; CX-1424

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(Multiuser OFDM with Adaptive Subcarrier, Bit, and Power Allocation (10/1999); CX-1425

(Adaptive Commtmications over Fading Satellite Channels (2001)); CX-1420 (TSGR1#12,

R1-556, Feasibility Study of Advanced Techniques for HSDPA). A person of ordinary skill in

the art would certainly have understood how to use channelization code set and modulation

information to recover payload data carried on a channel in a wireless system using adaptive

modulation and coding. CX-1523C (Jackson RWS) at Q140. In particular, it would have been

well understood that the charmelization code set would be used to identify from which

HS-PDSCH channels to recover data, and that the modulation type would be used to determine

the modulation type to use in demodulating those channels. Id. at Ql42, Ql54. A person of

ordinary skill in the art would readily know what circuitry could be used to perform those

operations, and would not have expected or needed the inventors of the ‘127 patent to include

such Well-known information in the specification. Id. at Ql39-142.

The testimony of Respondents’ expert Dr. Madisetti also supports the validity of the

asserted claims. Dr. Madisetti testified that as of March 2002, the 3GPP Release 5 Specifications

disclosed the element “wherein the control infonnation is used for decoding a high speed

physical downlink shared channel (HS-SCCH)” in connection with the ‘O13patent. RX-3520C

(MaclisettiWS) at Q781. He further testified that in the design of HSDPA, it was contemplated

that a user equipment would use the channelization code set as well as the modulation type, i.e.,

the control information, to recover the payload data from the HS-PDSCH. Madisetti Tr.

985-986. Dr. Madisetti also testified that the intention was for a user equipment to use the

channelization code set information to identify the HS-PDSCHs from which the user equipment

would keep data to pass to the next layer. Madisetti Tr. 986. Inasmuch as there is no dispute

that the details in the 3GPP Release 5 technical specification from March 2002 were already

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well-known to persons of ordinary skill in the art as of March 2002, the claims of the ‘127 patent

are not invalid for lack of written description. See, e.g., Madisetti Tr. 989.

Second, with respect to recovering payload data “in response to the HS-SCCH including

[certain] bits,” the ‘I27 patent, as well as its ancestor the ‘579 patent, disclose as follows:

To obtain its Part-1 information, each HSDPA UE monitors up to four

HS-SCCHs for its information. The infonnation for a particular UE is

distinguished from other UEs by its UE identification (UE ID) specific

scrambling sequence. The UE processes each monitored HS-SCCH with

its UE ID specific scrambling sequence to detect the HS-SCCH intended

for the UE. After processing, the UE determines on which HS-SCCH, if

any, infonnation was carried using its scrambling sequence. The UE

descrambles the data carried on Part-1 of its HS-SCCH using its

scrambling sequence.

JX-0004 (‘127 patent) at col. 1, lns. 40-49; JX-0034 (‘579 patent) at col. 1, lns. 31-41.

This excerpt confirms that the UE uses its UE ID specific scrambling sequence to

determine if control information is intended for it. As discussed above, that control information

is then used to recover the payload data from the HS-PDSCH. 1nterDigital’s expert Dr. Jackson

explained that a person of ordinary skill in the art would understand that the purpose of this

determination is to allow the UE to recover payload data designated by a particular HS-SCCH in

response to detecting that the particular HS-SCCH carries control information combined with

that UE’s user-specific scrambling sequence. CX-1523C (Jackson RWS) at QI43-144.63

Third, with respect to “circuitry in the WCDMA UE configured to process a high speed

shared control channel (HS-SCCH),” Respondents’ expert Dr. Madisetti testified that the ‘I27

patent contains written description support for this limitation under all parties’ proposed

63For the same reasons discussed with respect to “circuitry configured to recover payload data

from a HS-PDSCH,” Respondents argue that similar language in claim 5 of the ‘127 patent lacks

written description support. See RX-3520C (Madisetti WS) at Q1046. As explained above with

respect to claim 1 of the ‘127 patent, it is determined that the relevant language in claim 5 does,

indeed, have written description support.

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constructions. See RX-3520C (Madisetti WS) at Q1048. The evidence demonstrates that Dr.

Madisetti’s opinion that the claim lacks written description support is true only if portions of the

specification supporting the limitation are disregarded. See id. at Q1048 (“The 127 Patent’s

specification describes the processing of the HS-SCCH in the user equipment. . . . One of

ordinary skill in the art at the time of the invention would not have understood the inventors to

have had in their possession any invention comprising circuitry in the WCDMA UE to perform

‘one or more operations on a received HS-SCCH to derive control information’ other than the

disclosed operation . . . .”) (emphasis added). In addition, Dr. Madisetti does not offer any

testimony explaining Whatadditional disclosure he believes a person of ordinary skill in the art

would expect to see under his interpretation of the written description requirement. See

RX-3520C (Madisetti WS) at Q1047-1048.

In light of the arguments and evidence set forth above, it is determined that the disputed

limitations of the ‘I27 patent are supported by the written description of the specification and are

therefore not invalid.

4. Indefiniteness (‘127 Patent)

Respondents allege that dependent claim 3 of the ‘I27 patent is invalid for indefiniteness.

Resps. Br. at 161.

Independent claim 1, from which claim 3 depends, reads as follows:

1. A wideband code division multiple access (WCDMA) user equipment

(UE) comprising:

circuitry in the WCDMA UE configured to process a high speed

shared control channel (HS-SCCH); and

circuitry in the WCDMA UE configured to recover payload data from

a high speed physical downlink shared channel (HS-PDSCH)

associated with the HS-SCCH in response to the HS-SCCH including

bits; wherein the bits are a result of a combining of a user specific

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scrambling sequence associated with the UE with control information;

and wherein the user specific scrambling sequence is a result of a ‘/2

rate convolutional encoding of a UE identification (ID).

JX-0004 at col. 3, lns. 18-30.

Claim 3 recites:

3. The WCDMA UE of claim 1 wherein the user specific scrambling

sequence is a result of rate matching the ‘/2rate convolutional encoded UE

ID.

JX-0004 at col. 3, lns. 34-36.

Respondents argue that the additional limitation of claim 3, “wherein the user specific

scrambling sequence is a result of rate matching the ‘/2rate convolutional encoded UE ID,”

renders claim 3 indefinite. Resps. Br. at 161. Specifically, Respondents argue that the “rate

matching requirement of claim 3 renders the claim indefinite. Id.

Respondents’ argument is as follows:

Rate matching refers to increasing or decreasing the ntunber of bits in a

sequence (RX-3520C (Madisetti WS) at Q1052, 1139). The user specific

scrambling sequence of claim 3 (which is a result of rate matching the ‘/2

rate convolutionally encoded UE ID) thus must be larger or smaller than

the user specific scrambling sequence of claim 1 (which is the result of ‘/2

rate convolutionally encoding the UE ID) (id. at 1051-52). Because claim

1 and claim 3 both refer to the same user specific scrambling sequence and

a sequence cannot be larger or smaller than itselfl the term “wherein the

user specific scrambling sequence is a result of rate matching the ‘/2rate

convolutionally encoded UE ID” is insolubly indefinite. See, e.g., Allen

Eng ’g Corp. v. Bar-tell Indus, Ina, 299 F.3d 1336, 1349 (Fed. Cir. 2002)

(claims indefinite where the claim covered subject matter that was

contrary to a description in the specification).

Resps Br at 161.

Although claim 1 of the ‘127 patent requires that the “user specific scrambling sequence

is a result of a ‘/1rate convolutional encoding of a UE identification,” the claim is silent

regarding whether the sequence also may be a result of rate matching. The rate matching

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limitation is added by dependent claim 3. Inasmuch as claim 3 depends from claim 1, this

necessarily means that claim 1 is broad enough to include, but not require, rate matching. Such

an interpretation is in accord with the principles of claim interpretation, and is consistent with the

way in which a person of ordinary skill in the art would understand claims 1 and 3 in light of the

specification. See SanDisk Corp. v. Kingston Tech. C0., 695 F.3d 1348, 1361 (Fed. Cir. 2012)

(“Where . . . the sole difference between the independent claim and the dependent claims is the

limitation that one party is trying to read into the independent claim, the doctrine of claim

differentiation is at its strongest”); CX-1523C (Jackson RWS) at Q156-157; Madisetti Tr.

872-873.

In particular, the specification for the ‘127 patent states, “[a]fter encoding, based on the

length of the output string, a rate matching stage 12 may be added to puncture bits to obtain a

desired string length.” JX-0004 at col. 2, lns. 56-58 (emphasis added). Similarly, in discussing

an embodiment of the invention, the specification also states, “[t]o reduce the length of the code

to a preferred length of 40 bits, eight bits are preferably punctured.” Id. at col. 3, lns. 1-2

(emphasis added). Therefore, it would be clear to a person of ordinary skill in the art that claim

1 refers to a category of user specific scrambling sequences, and that claim 3 describes a

particular member of that category. See CX-1523C (Jackson RWS) at Q157.

For these reasons, Respondents have not shown by clear and convincing evidence that

claim 3 is “insolubly ambiguous.” It is therefore detennined that claim 3 of the ‘127 patent is

not invalid for indefiniteness.

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VII. The Dual Mode Subscriber Unit (‘970)Patent

A. Overview of the ‘970Patent and Asserted Claims

Asserted U.S. Patent No. 7,616,970 (“the ‘97Opatent”) is titled, “Dual Mode Unit for

Short Range, High Rate and Long Range, Lower Rate Data Communications.” JX-0005 (‘970

patent). The ‘970 patent issued on November 10, 2009, and the named inventor is Thomas E.

Gorsuch. Id. The ‘970 patent relates generally to short-range, higher speed and long-range,

lower speed wireless communications. Id. at Abstract. The ‘970 patent is also referred to as the

“Dual Mode Subscriber” patent.

InterDigital asserts independent claims 1 and 10, and dependent claims 2, 3, 4, 5, 6, 7, 8,

9, 11, 12, 13, 14, 15, 16, 17, and 18 ofthe ‘970 patent. These claims read as follows:

1. A subscriber unit comprising:

a cellular transceiver configured to communicate with a cellular

network via a cellular layered communication protocol;

an IEEE 802 transceiver configured to communicate with a wireless

local area network (WLAN) via an IEEE 802 layered communication

protocol;

a detector configured to detect a signal from the WLAN; and

a circuit coupled to the cellular transceiver and the IEEE 802

transceiver and configured to communicate using the IEEE 802

transceiver in response to the signal;

wherein the cellular layered communication protocol includes a

plurality of layers above a physical layer, and a plurality of physical

layer channels are available for assignment for cornmunication with

the cellular network and a communication session above the physical

layer is maintained when all assigned physical layer channels have

been released.

2. The subscriber unit of claim 1, wherein the IEEE 802 transceiver is

configured to transmit TCP/IP data when the communication session is

maintained and all assigned physical layer channels have been released.

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3. The subscriber unit of claim 1, wherein at least one of the plurality of

layers above the physical layer is any one of a TCP layer, a lP layer, or a

network layer.

4. The subscriber tmit of claim 1, wherein the cellular transceiver and the

IEEE 802 transceiver are provided in a single unit.

5. The subscriber unit of claim 1, wherein the subscriber unit is configured

in a mobile telephone or personal digital assistant.

6. The subscriber Lmitof claim 1, wherein the signal is a beacon frame or

probe response frame.

7. The subscriber tmit of claim 1, wherein at least one of the plurality of

physical layer channels is a data channel.

8. The subscriber unit of claim 1, wherein the cellular network is a

licensed code division multiple access network and the WLAN is an

unlicensed 802.11 network.

9. The subscriber unit of claim 1, wherein the cellular transceiver is a code

division multiple access transceiver and the IEEE 802 transceiver is an

802.11 transceiver.

10. A subscriber unit comprising:

a first transceiver configured to communicate with a first wireless

network;

a second transceiver configured to communicate with an IEEE 802

compliant wireless network; and

a processor coupled to the first transceiver and the second transceiver,

and configured to operate a first protocol stack for the first wireless

network and a second protocol stack for the IEEE 802 compliant

wireless network, wherein a plurality of physical layer channels are

available for assignment for communication with the first wireless

network, and to maintain a communication session above a physical

layer of the first protocol stack when none of the plurality of physical

layer channels are assigned.

11. The subscriber unit of claim 10, further comprising:

a detector configured to detect the IEEE 802 compliant wireless

network; and

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a circuit configured to select the second transceiver in response to

detection of the IEEE 802 compliant wireless network.

12. The subscriber unit of claim 11, wherein detection of the IEEE 802

compliant wireless network is based on receipt of a beacon frame or probe

response frame.

13. The subscriber unit of claim 10, wherein the second transceiver is

configured to transmit TCP/IP data when the communication session is

maintained when none of the plurality of physical layer channels are

assigned.

14. The subscriber unit of claim 10, wherein at least one of the plurality of

layers above the physical layer is any one of a TCP layer, a IP layer, or a

network layer.

15. The subscriber unit of claim 10, wherein at least one of the plurality of

physical layer channels is a data channel.

16. The subscriber unit of claim 10, wherein the first wireless network is a

licensed code division multiple access network and the IEEE 802

compliant wireless network is an unlicensed IEEE 802.11 network.

17. The subscriber unit of claim 10, wherein the first transceiver is a code

division multiple access transceiver and the second transceiver is an

802.11 transceiver.

18. The subscriber unit of claim 10, wherein the first transceiver is a

cellular transceiver.

IX-0005 at col. ll, ln. 5 —col. 12, ln. 43.

The ‘970Accused Products

The Nokia products accused of infringing the ‘970 patent include: C3-01, C5-03, C6-Ol

C7 E5 E6-00 E7-00, E72, E73, N500, N700, N701, N8-00, X3-02, X7-00, 808 Pureview

Vertu Constellation, Vertu Constellation Quest, Lumia 710, Lumia 719, Lumia 800, Lumia 810

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Lumia 820, Lumia 822, Lumia 900, and Lumia 920. See Compls. Br. at 262 (citing CX-0381C

(Stark Nokia Infringement Chart)).64

The Huawei products accused of infringing the ‘970 patent include: M650, M660, M835,

M860, M865, M886 (C8860), M920, M931, MediaPad (S7-Pro, S7-303u), MediaPad 10 FHD

(S10-102u), S7-104, S7-202u, U8665, U8680/U8730, U8800, U8800-51, U9000, U9000-81,

W1/U8835, Y210/C8686, and Y300C. See Compls. Br. at 262-63 (citing CX-0380C (Stark

Huawei Infringement Chart)).

The ZTE products accused of infringing the ‘970 patent include: D930, N850, N859,

N860, N861, N9500, P736T, V55, V66, V8000, X500, X501, and Z990. See Compls. Br. at 263

(citing CX-0382C (Stark ZTE Infringement Chart)).

With respect to the ‘970 accused products, InterDigital’s expert Dr. Stark analyzed

physical samples, design documents, user guides and manuals, deposition testimony from

representatives of Nokia, Huawei, ZTE, Microsoft, HiSilicon, and Qualcomm, Respondents’

discovery responses, and the source code analysis conducted by Drs. Walker and Goldberg.

CX-1306C (Stark WS) at Q619-627; CX-0377 (Stark Materials Considered). Based on his

analysis, Dr. Stark concluded that the Lumia 710 and 800, as well as the 808 Pureview, are

representative of N0kia’s accused products, that the N860 is representative of the ZTE accused

products, and that the U8800-51, U8680/U8730 and M865 products are representative of the

accused Huawei products. CX-1306C (Stark WS) at Q8l3-814, Q2265~2266, Q3121-3122.

In general, Respondents’ expert Dr. Bims admitted that he did not identify any relevant

differences between the ‘970 representative products analyzed by Dr. Stark analyzed and any

64InterDigital no longer asserts that the Nokia N900 or N9-00 products infringe any claim of the

‘970 patent. Compls. Br. at 262 n.35.

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other ‘970 accused products. Bims Tr. at 1264-1265. Dr. Bims further admitted that for

purposes of non-infringement, there are no differences between the Qualcomm chips in this

Investigation. Bims Tr. at 1264. Dr. Bims therefore opines on infringement by Respondents’

products collectively. See Resps. Br. at 398-420.

C. Claim Construction

1. Level of Ordinary Skill

A person of ordinary skill in the art of the ‘97Opatent would have at least a bachelor’s

degree in electrical engineering, computer science, computer engineering or a related field, and

two to three years’ experience in the area of wireless communications. CX-1306 (Stark WS) at

Q17. Altematively, a person of ordinary skill would have a master’s degree in electrical

engineering, computer science, computer engineering or a related field with an emphasis on

communicati0ns.(’5 Id.

2. Construction of Disputed Claims

a. “IEEE 802 transceiver configured to communicate with a

wireless local area network”

IEEE 802 transceiver hardware and/or software operable to l n/a transmit information to and receive confi ured to . . g . . information from an IEEE 802 .

communicate with a . connect directly to a Wireless local area network wireless local area W-LAN66when such a

network connection is possible

configured to automatically

65Respondents propose that a person of ordinary skill in the art of the ‘970 patent would have a

master’s degree or the equivalent in electrical engineering, and three or more years of work

experience relating to data communications over wireless networks. RX-3519C (Bims WS) at

Q73-Q75. The parties have not identified any way in which differences in their proposed

definitions of the level of ordinary skill in the art affect issues in this investigation. See Compls.

Reply at 98.

66“W-LAN” is an acronym for wireless local area network.

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PUBLIC VERSION

The claim term “IEEE 802 transceiver configured to communicate with a wireless local

area network” appears in asserted independent claim 1. JX-OOO5at col. ll, lns. 5-23. _

InterDigital construes this term to mean “hardware and/or software operable to transmit

infonnation to and receive information from an IEEE 802 wireless local area network.” Compls.

Br. at 239-43. Respondents contend that “IEEE 802 transceiver” needs no construction, and

construe “configured to communicate with a wireless local area network” to mean “configured to

automatically connect directly to a W-LAN when such a connection is possible.” Resps. Br. at

396-97.

As proposed by InterDigital, the claim term “IEEE 802 transceiver configured to

communicate with a wireless local area network” is construed to mean “hardware and/or

software configured to transmit information to and receive infonnation from an IEEE 802

wireless local area network.” This construction represents the plain meaning of the temi as

understood by a person of ordinary skill in the art, and is supported by the intrinsic evidence.

Persons having skill in the art recognize that a “transceiver” is a combination of a

transmitter and a receiver. CX-1306C (Stark WS) at Q666. The ‘97Opatent specification

provides that functions of the claimed invention, including that of a transceiver, may be

implemented in hardware and/or software:

Note that the path switches 211A, 211B may be implemented in software

or hardware, or a combination of hardware and software. Other ftmctions

may also be implemented in hardware and/or software which may further

be shared by the W-LAN and CDMA sections where appropriate.

JX-0005 at col. 10, lns. 54-59.

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The plain meaning of “IEEE 802 transceiver" is therefore a transceiver that can

communicate with a wireless local area network operating according to any IEEE 802 standard.

See CX-1306C (Stark WS) at Q669. Moreover, the plain language of the term “configured to

communicate with” means “operable to transmit infomiation to and receive information from.”

See id. at Q670.

In response to the arguments supporting InterDigital’s proposed construction,

Respondents argue that InterDigital’s position is incorrect because, inter alia, the claimed

“transceiver” cannot be implemented purely in software. Resps. Br. at 397 (citing RX-3519C

(Bims WS) at Q38l). Respondents’ argument is not persuasive, however, because it ignores the

express teaching of the ‘970 specification, excerpted above, that functions of the claimed

invention, including that of a transceiver, may be implemented in hardware and/or software.

JX-0005 at col. 10, lns. 54-59.

Respondents also argue that “the 970 Patent is clear that the invention was designed to

solve the problem of manual selection of networks in prior art dual-mode devices and the

specification disclaims solutions that do not automatically cormect to a WLAN when possible,”

and that “[a]ccordingly, all the claims of the 970 Patent must be so limited.” See Resps. Br. at

397 (citing RX-3519C (Bims WS) at Q468-Q473); id. at 394-95. As support for this position,

Respondents cite to the ‘970 specification, which recites, in part:

It would therefore be desirable to have a device which can automatically

select the cheaper and faster W-LAN when possible, e.g., when within its

range, and to resort to the long range cellular network when access to the

W-LAN is not possible or practical. Previously, two devices would have

been required, one for accessing the W-LAN and one for accessing the

long range network. At best, these two devices could fit into two slots in,

for example, a laptop computer, requiring the user to select, either through

software or hardware, which device, and hence, which network to access.

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PUBLIC VERSION

The present invention, on the other hand, is a single device which connects

directly to a W-LAN using a protocol such as IEEE 802.11 when such a

connection is possible, and automatically reverts to connecting to the long

range network only when out of range of the W-LAN base stations.

Thus, the same equipment can be used Without any reconfiguration and

even without knowledge of the user.

IX-OOO5at col. 2, ln. 50 —col. 3, ln.2 (Summary of the Invention).

The cited passage, however, provides that the claimed invention “connects directly to a

W-LAN,” and says nothing about that connection being automatic. Use of the permissive Word

“can” in the statement, “the same equipment can be used without any reconfiguration and even

without knowledge of the user,” demonstrates that such “automatic” behavior is merely desirable

in the claimed invention, and not mandatory. Moreover, even though the ‘970 specification

states that “[i]t would therefore be desirable to have a device which can automatically select the

cheaper and faster W-LAN when possible,” saying that a feature is “desirable” is not the explicit

disavowal of the use of manual selection argued by Respondents. Cf Resps. Br. at 395.

Respondents further argue that InterDigital’s proposed construction is incorrect because it

improperly equates the claim language “configured to” with “operable to.” Resps. Br. at 395-96.

It is argued that “InterDigital’s proposed construction is inconsistent with the claim language,

introduces ambiguity, and lacks support in the intrinsic evidence.” Id. at 395 (citing RX-3519C

(Bims WS) at Q472). It is further argued that “the claims themselves require that the circuit be

‘configured’ to perfonn functionality ‘in response to’ certain events,” and that “‘[i]n response to’

comiotes that the second event occur in reaction to the first event.” Id. (citation omitted).

In response to this argument, InterDigital states that it “believes that [‘configured to’ and

‘operable to’] are synonyms, and is agreeable to leaving the term ‘configured to’ unconstrued.”

See Compls. Reply at 109.

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PUBLIC VERSION

Therefore, the claim term “IEEE 802 transceiver configured to communicate with a

wireless local area network” is construed to mean “hardware and/or software configured to

transmit infonnation to and receive information from an IEEE 802 wireless local area network.”

b. “IEEE 802 layered communication protocol”

I

1 V Claim Iermmhraw” i 0 T 1“‘°'1?igiw.l’s.¢<>n§t1'“¢#i¢v R¢sp»nd(¢.n¢s’t.¥

IEEE 802 layered plain meaning, 1'.e., structured procedures for n/a

communication protocol communicating with an IEEE 802 network

The claim term “IEEE 802 layered communication protocol” appears in asserted

independent claim l. JX-0005 at col. ll, lns. 5-23.

InterDigital construes this term to take its plain meaning to one of ordinary skill in the

art, i.e., “structured procedures for communicating with an IEEE 802 network.” Compls. Br. at

243-44. Respondents do not contest InterDigital’s proposed construction. See Resps. Br. at

376-98; Compls. Br. at 240 n.32.

As proposed by InterDigital, the claim term “IEEE 802 layered communication protocol”

is construed to mean “structured procedures for communicating with an IEEE 802 network.”

This construction represents the plain meaning of the term as understood by a person of ordinary

skill in the art. See CX-1306C (Stark WS) at Q676, Q759.

c. “a circuit coupled to the cellular transceiver and the IEEE 802

transceiver and configured to communicate using the IEEE

802 transceiver in response to the signal”

lo’ hrase? ernternigiialw Const1'u‘citioi1“f*l1eRésp0n;1¢n¢s?itconstmaion

a circuit coupled to the hardware and/or software a circuit coupled to the cellular

cellular transceiver and the coupled to the cellular and IEEE transceiver and the IEEE 802

IEEE 802 transceiver and 802 transceivers and operable to transceiver and configured to

configured to communicate use the IEEE 802 transceiver to automatically connect directly

using the IEEE 802 communicate with the wireless to a W-LAN when such a

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PUBLIC VERSION

transceiver in response to local area network when such a connection is possible in

the signal connection is possible response to the signal

The claim term “a circuit coupled to the cellular transceiver and the IEEE 802 transceiver

and configured to communicate using the IEEE 802 transceiver in response to the signal”

appears in asserted independent claim l. JX-0005 at col. ll, lns. 5-23.

lnterDigital construes this term to mean “hardware and/or software coupled to the cellular

and IEEE 802 transceivers and operable to use the IEEE 802 transceiver to communicate with

the Wireless local area network when such a connection is possible.” Compls. Br. at 244-46.

Respondents construe this term to mean “a circuit coupled to the cellular transceiver and the

IEEE 802 transceiver and configured to automatically connect directly to a W-LAN when such a

connection is possible in response to the signal.” Resps. Br. at 393-96.

As proposed by InterDigital, the claim tenn “a circuit coupled to the cellular transceiver

and the IEEE 802 transceiver and configured to communicate using the IEEE 802 transceiver in

response to the signal” is construed to mean “hardware and/or software coupled to the cellular

and IEEE 802 transceivers and configured to use the IEEE 802 transceiver to communicate with

the wireless local area network when such a connection is possible.”

As discussed above with respect to the claim term “IEEE 802 transceiver configured to

communicate with a wireless local area network,” the ‘970 specification teaches that the “circuit”

coupled to the IEEE 802 transceivers consists of hardware and/or software:

Note that the path switches 21lA, 211B may be implemented in software

or hardware, or a combination of hardware and software. Other functions

may also be implemented in hardware and/or software which may further

be shared by the W-LAN and CDMA sections where appropriate.

JX-0005 at col. 10, lns. 54-59.

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PUBLIC VERSION

As further discussed above with respect to the claim tenn “IEEE 802 transceiver

configured to communicate with a wireless local area network,” the claimed invention is not

limited to a device that automatically connects to a W-LAN when one is available. See JX-0005

at col. 2, ln. 50 —col. 3, ln.2 (Summary of the Invention).

d. “a plurality of physical layer channels are available for

assignment for communication”

, ;;CI=-i111T¢1111/Phrase ;, ls Int¢r1ligita1’@iC@1iS@¢ti¢n 5ls-R§sP@nd@i1tSf.Cons"f9¢ti9n

a plurality of physical layer two or more physical layer

channels are available for channels allocable by the

assigmnent for subscriber Lmitfor data

communication communication

two or more physical layer

channels are available for

assignment for

communication

The claim term “a plurality of physical layer channels are available for assignment for

communications” appears in asserted independent claims 1 and 10. JX-0005 at col. 11, lns. 5-23;

col. 12, lns. 1-16.

InterDigital construes this term to mean “two or more physical layer channels allocable

by the subscriber unit for data communication.” Compls. Br. at 246-53. Respondents construe

this term to mean “two or more physical layer channels are available for assignment for

communication.” Resps. Br. at 376-85.

As proposed by InterDigital, the claim tenn “a plurality of physical layer channels are

available for assigmnent for communication” is construed to mean “two or more physical layer

channels allocable by the subscriber unit for data communication,” a construction that is

supported by the intrinsic evidence.

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PUBLIC VERSION

Figure 6 of the ‘970 patent “shows a tenninal 615 which includes a subscriber unit 101

incorporating the features of the present invention.” JX-0005 at col. 9, lns. 27-28. Regarding

subscriber unit 101, the specification provides:

The subscriber unit 101 itself preferably consists of an interface 120, a

CDMA protocol converter 130 that perfonns various functions including

spoofing 132 and bandwidth management 134 as described earlier, a

CDMA transceiver 140, a W-LAN protocol converter 230, a W-LAN

transceiver 240, a W-LAN detection circuit 201, path selection switches

211A, 211B, and a subscriber unit antenna 150.

Id. at col. 9, lns. 36-41. The specification also teaches that “[t]he bandwidth management

function 134 is responsible for allocating and deallocating CDMA radio channels 160 as

required,” but that “wireless bandwidth is allocated only when there is actual data present from

the terminal equipment to the CDMA transceiver.” Id. at col. 9, lns. 64-66; col. 10, lns. 33-35.

The specification therefore demonstrates that the assignment or allocation of radio channels, as

well as deallocation or release of those channels, is performed by the subscriber unit, and that the

assigmnent occurs when the subscriber unit has data to transmit.

Respondents argue, inter alia, that InterDigital’s proposed construction is incorrect,

inasmuch as “[t]he specification of another patent for which Mr. Gorsuch“ was the inventor . . .

shows that base stations assign channels in either patent regardless of who transmits on the

channel.” See Resps. Br. at 378. Respondents’ argument rests on a false comparison between

the ‘970 patent and U.S. Patent 6,081,536 (“the ‘S36 patent”), a patent for which Mr. Gorsuch is

a named inventor, but that is not related to the ‘970 patent. See id. at 378-380; RX-4065 (‘536

patent). Notwithstanding Respondents’ argument, the teachings of the ‘536 patent do not affect

the claim construction analysis of the ‘970 patent.

67Thomas E. Gorsuch is the sole named inventor of the ‘970 patent. JX-0005.

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PUBLIC VERSION

Respondents further argue in opposition to lnterDigital’s proposed construction that it is

improper to equate “assignment,” which is used in the claim language, with “allocation,” which

is used in InterDigital’s proposed construction. See Resps. Br. at 382-84. Respondents’

argument lacks persuasive force, however, inasmuch as InterDigital established at the hearing

that the terms “assignment” and “allocation” are understood by person of ordinary skill in the art

to be synonyms. See CX-1526C (Stark RWS) at Q300-302; RX-3998C (Bims RWS) at Q60;

Bims Tr. 1290-1292.

Respondents argue that their proposed claim construction should be adopted because,

“[b]y expressing the claim limitation in the passive voice, the patentee did not limit channel

assignment to a particular actor.” Resps. Br. at 380. Respondents also argue that, “[i]n the

prevailing cellular systems at the time of the 970 Patent’s claimed invention, it was the base

station or network, not the subscriber unit, that assigned physical layer channels.” Id. at 380-81

(citation omitted). Respondents further argue that their proposed construction must be correct

because “the specification describes a preferred embodiment ‘in which the channels are allocated

centrally,” and that “[a] person of ordinary skill understands ‘allocated centrally’ means

allocated by the base station or network, not the subscriber unit.” Id. at 381 (citing JX-0005 at

col. 3, lns. 42-44) (emphasis added by Respondents). These arguments by Respondents are not

persuasive, however, inasmuch as they ignore the central fact that the ‘970 claims are directed to

“a subscriber unit,” and that any allocation of channels must therefore be performed by the

subscriber unit, not the base station.

Respondents further argue that the prosecution history “shows that the specification

includes the central allocation of physical layer channels used by the subscriber unit,” and that

their proposed construction should therefore be adopted. Resps. Br. at 381. Respondents rely on

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PUBLIC VERSION

their interpretation of originally submitted claim l9 to show that the specification discloses such

an embodiment. See id. This argument is inapposite, however, because original claim l9 was

not directed to a subscriber unit, but rather to a “wireless data communication interface.” See

JX-0012 (‘970 file history) at IDC-ITC-0163 89797-800. Consequently, original claim 19 sheds

little light as to the construction of asserted claims 1 and 10, which are directed to “[a] subscriber

unit.”

Accordingly, the claim term “a plurality of physical layer channels are available for

assignment for communication” is construed to mean “two or more physical layer channels

allocable by the subscriber unit for data communication.”

e. “a communication session above the physical layer is

maintained when all assigned physical layer channels have

it "Clai1n§fTperm/Phrase ”lInterDp'igital’s, Respondents’ Constructioni

* Cnnstrllctiun"

been released”

a communication session a connection above the the appearance to higher layers in

above the physical layer is physical layer is maintained the cellular layered communication

maintained when all when the assigned physical protocol of an active physical layer

assigned physical layer layer channels are no longer connection is maintained when all

channels have been released in use by the subscriber unit physical layer channels have been

released

The claim term “a communication session above the physical layer is maintained when

all assigned physical layer channels have been released” is recited in asserted claim l of the ‘970

patent. JX-0005 at col. ll, lns. 5-23.

lnterDigital construes this term to mean “a connection above the physical layer is

maintained when the assigned physical layer channels are no longer in use by the subscriber

unit.” Compls. Br. at 254-60. Respondents construe this term to mean “the appearance to higher

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PUBLIC VERSION

layers in the cellular layered communication protocol of an active physical layer connection is

maintained when all physical layer channels have been released.” Resps. Br. at 386-93.

As proposed by InterDigital, the claim term “a communication session above the physical

layer is maintained when all assigned physical layer channels have been released” is construed to

mean “a comection above the physical layer is maintained when the assigned physical layer

channels are no longer in use by the subscriber unit.”

The ‘97Ospecification teaches that the claimed “communication session above the

physical layer” is a “connection above the physical layer.” In particular, the specification

describes the bandwidth management function maintaining both “physical layer and network

layer connections.” JX-0005 at col. 6, lns. 30-39. When there is no data to transmit, the physical

layers are released, or deallocated, thereby making wireless bandwidth available to other

subscriber L11"lllZS.See id. at col. 4, lns. 14-18; col. 10, lns. 37-42. When the physical layers are

released, a logical connection in the form of the communication session is nevertheless

maintained above the physical layer. Id. at col. 4, lns. 6-14. Maintaining this communication

session when the underlying physical layer channels are released avoids “the overhead associated

with having to set up an end-to-end connection each time that data needs to be transferred.” See

id. at col. 4, lns. 19-26. Accordingly, the claimed “communication session” is a connection.

The ‘970 specification also teaches that the claimed “release[]” of the physical layer

channels occurs when the assigned channels are “no longer in use by the subscriber unit.”

Specifically, the physical layer is “released” when it is no longer in use, and wireless channel

bandwidth is consequently made available to other subscriber units. See JX-0005 at col. 4, lns.

19-26. In other words, deallocating, releasing, or no longer using “initially assigned radio

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PUBLIC VERSION

channel bandwidth” makes that bandwidth “available for another transceiver and another

subscriber unit.” Id. at col. 10, lns. 38-43.

In support of their proposed construction, Respondents argue that ‘“[m]aintaining a

communication session’ was defined as maintaining the appearance of a connection during

prosecution of a related application.” See Resps. Br. at 388-89. In support of this argument,

Respondents cite to the prosecution of U.S. Patent Application No. 12/615,098, which is a child

of the application that ultimately issued as the ‘970 patent. See id.; RX-0031. This argument is

not persuasive, however, inasmuch as Respondents have not shown that the prosecution history

of a patent application descended from the asserted patent should take precedence over the

teachings of the asserted patent itself with respect to the construction of the asserted claims.“

Respondents also contend that the ‘970 specification “teaches one ofordinary skill in the

an that ‘[maintaining] a communication session above the physical layer . . . when all assigned

physical layer channels have been released’ has a specific and unique meaning of ‘maintaining

the appearance of an active physical layer connection.” See Resps. Br. at 389-90. Specifically,

Respondents argue that “nothing in the specification suggests that ‘maintaining a communication

session’ means anything other than ‘maintaining the appearance of an active physical layer

connection?” Id. at 390 (citing, inter alia, JX-0005 at col. 3, ln. 56 —col. 4, ln. 5; col. 4, lns.

29-33; col. 9, lns. 58-63; col. l0, lns. 28-42). The portions of the ‘970 specification cited by

Respondents relate to “spoofing,” which is described as “stripping off the lower layers of the

protocol while reformatting higher layer messages for transmission using a more efficient

68Respondents further argue that “[t]he personal notes and deposition testimony of the 970

Patent, Robert Leonard, also support Respondents’ proposed construction.” Resps. Br. at

390-91. This extrinsic evidence, however, does not override the teachings of the ‘970

specification, discussed above, that support InterDigital’s proposed construction.

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CDMA based encapsulated protocol.” JX-0005 at col. 4, lns. 29-33. Another description of

spoofing is “insuring that the subscriber tmit 101 appears, to the terminal equipment ll0, to be

connected to the public network 619 (FIG. 5) on the other side of the base station 605 at all

times.” Id. at col. 9, lns. 58-63. Spoofing is further described as a “function 132 involv[ing]

having the CDMA transceiver 140 loop back synchronous data bits to spoof the terminal

equipment 110 into believing that a sufficiently wide wireless communication link 160 is

continuously available.” Id. at col. 10, lns. 28-33.

Spoofing, as set forth in these descriptions from the ‘970 specification, does not require

providing the appearance of an active physical layer connection. For instance, the first

description is silent as to how the maintained upper layers are to appear. See JX-OOO5at col. 4,

lns. 29-33. The second description cited above states that the subscriber unit presents the

appearance of an available connection, with no mention of activity or inactivity. See id. at col. 9,

lns. 59-63. The third description has the stated goal of presenting the appearance “that a

sufficiently wide Wirelesscommunication link 160 is continuously available,” and not of

presenting the appearance of an “active physical layer connection.” See id. at col. 10, lns. 28-33.

These descriptions of spoofing teach that the appearance of a connection above the physical layer

should be maintained, and are silent as to the appearance of a connection at the physical layer.

Accordingly, the requirement of Respondents’ proposed construction that “the appearance . . . of

an active physical layer” be maintained is incorrect.

Respondents also argue that “the plain language of the limitation requires that ‘all

physical layer channels have been released.”’ See Resps. Br. at 391 (emphasis original). This

argument, however, reads out the word “assigned” from the claim language. Respondents’

position also contradicts the ‘970 specification, which explains that the subscriber unit’s

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“bandwidth management function 134 deallocates initially assigned radio channel bandwidth 160

and makes it available for another transceiver and another subscriber tmit 100.” IX-0005 at col.

10, lns. 37-42. Accordingly, the claimed invention requires that all “assigned physical layer

channels” be released, and not “all physical layer channels,” assigned or unsigned.

An additional argument Respondents make in opposition to InterDigital’s proposed

construction is that “release” of a channel is not the same as a subscriber unit no longer using the

channel: “One of ordinary skill in the art would recognize the difference in meaning between a

channel being ‘assigned’/ ‘released’ and merely being ‘used’/‘no longer in use.”’ See Resps. Br.

at 391-93. Based on their argument, addressed above, that “assignment” and “allocation” have

different meanings, Respondents argue that a charmel can be “assigned,” yet not be “in use.” See

id. Dr. Stark testified, however, that an assigned channel released from a first subscriber unit

cannot be used by a second subscriber unit, inasmuch as a channel includes a time dimension.

See Stark Tr. at 502. That is, only the bandwidth freed from a released channel can be used by

another subscriber unit. See id. Accordingly, Respondents’ position, that release of a channel

requires that the channel can be used by another subscriber tuiit, contradicts the teachings of the

‘97Opatent.

Therefore, the claim tenn “a communication session above the physical layer is

maintained when all assigned physical layer channels have been released” is construed to mean

“a connection above the physical layer is maintained when the assigned physical layer channels

are no longer in use by the subscriber unit.”

f. “second transceiver configured to communicate with an IEEE

802 compliant wireless network”

Claim Term/Phrase i InterDigital’s Construction” l Respondents’ Construction

second transceiver I hardware and/or software l transceiver configured to

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configured to operable to transmit information automatically connect directly to

communicate with an to and receive information from an IEEE 802 compliant wireless

IEEE 802 compliant an IEEE 802 compliant wireless network when such a connection

wireless network network is possible

The claim term “second transceiver configured to communicate with an IEEE 802

compliant wireless network” appears in asserted independent claim 10. JX-0005 at col. 12, lns.

1- 1 6. _

InterDigital construes this term to mean “hardware and/or software operable to transmit

information to and receive infonnation from an IEEE 802 compliant wireless network.” Compls.

Br. at 260-61. Respondents construe this tenn to mean “transceiver configured to automatically

comiect directly to an IEEE 802 compliant wireless network when such a connection is

possible.” Resps. Br. at 396-97.

For the reasons set forth above with respect to the claim term “IEEE 802 transceiver

configured to communicate with a wireless local area network,” the claim term “second

transceiver configured to communicate with an IEEE 802 compliant wireless network” is

construed to mean “hardware and/or software configured to transmit information to and receive

information from an IEEE 802 compliant wireless network,” which is InterDigital’s proposed

construction.

g. “maintain a communication session above the physical layer of

the first protocol stack when none of the plurality of physical

layer channels are assigned”

Term/Plmte; t at sIfi¢¢rDisi¢a1?S*rC""S¢"i¢fi"i1i*ll?R¢$ti¢hI1eH¢s’

maintain a communication a connection above the maintain the appearance to

session above a physical layer physical layer of the first higher layers in the first

of the first protocol stack protocol stack is maintained protocol stack of an active

when none of the plurality of when the allocable physical physical layer connection when

hysical layer channels are layer channels are not in use none of the plurality of

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assigned by the subscriber unit physical layer channels are

assigned

The claim tenn “maintain a communication session above a physical layer of the first

protocol stack when none of the plurality of physical layer channels are assigned” is recited in

asserted claim 10 ofthe ‘970 patent. JX-0005 at col. l2, lns. l-l6.

InterDigital construes this term to mean “a connection above the physical layer of the

first protocol stack is maintained when the allocable physical layer channels are not in use by the

subscriber unit.” See Compls. Br. at 261; Compls. Reply at 104. Respondents construe this tenn

to mean “maintain the appearance to higher layers in the first protocol stack of an active physical

layer connection when none of the plurality of physical layer channels are assigned.” See Resps.

Br. at 386-87. The parties’ arguments with respect to this disputed claim term are the same as

their arguments with respect to the claim term “a communication session above the physical

layer is maintained when all assigned physical layer channels have been released,” discussed

above. See Compls. Br. at 261; Compls. Reply at 104; Resps. Br. at 386.

For the reasons discussed above with respect to the claim term “a cormnunication session

above the physical layer is maintained when all assigned physical layer channels have been

released,” the claim term “maintain a communication session above a physical layer of the first

protocol stack Whennone of the plurality of physical layer channels are assigned” is construed to

mean “a comrection above the physical layer of the first protocol stack is maintained when the

allocable physical layer charmels are not in use by the subscriber unit,” which is InterDigital’s

proposed construction.

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h. “a circuit configured to select the second transceiver in

response to detection of the IEEE 802 compliant wireless

network”

Claim Tr¢r!iiZ1?hrr1$;<%=§§i[|rp2 pIntervisitalsi iC¢nst11I:¢tionci:4; iRe$P0nd,entS’ Construction

a circuit configured to hardware and/or software coupled a circuit configured to

select the second to the first and second transceivers automatically select the

transceiver in response to and capable of selecting the second second transceiver in

detection of the IEEE 802 transceiver when a connection to response to detection of the

compliant wireless the IEEE 802 compliant wireless IEEE 802 compliant wireless

network network is possible network

The claim tenn “a circuit configured to select the second transceiver in response to

detection of the IEEE 802 compliant wireless network” appears in asserted dependent claim ll.

IX-0005 at col. 12, lns. 17-22.

InterDigital construes this term to mean “hardware and/or software coupled to the first

and second transceivers and capable of selecting the second transceiver when a connection to the

IEEE 802 compliant wireless network is possible.” Compls. Br. at 262. Respondents construe

this term to mean “a circuit configured to automatically select the second transceiver in response

to detection of the IEEE 802 compliant wireless network.” Resps. Br. at 396.

For the reasons discussed above with respect to the claim term “IEEE 802 transceiver

configured to communicate with a wireless local area network,” the term “a circuit configured to

select the second transceiver in response to detection of the IEEE 802 compliant wireless

network” is construed to mean “hardware and/or software coupled to the first and second

transceivers and capable of selecting the second trausceiver when a connection to the IEEE 802

compliant Wirelessnetwork is possible,” which is InterDigital’s proposed construction.

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i. “wherein the IEEE 802transceiver is configured to transmit

TCP/IP data when the communication session is maintained

and all assigned physical layer channels have been released”

The claim term “wherein the IEEE 802 transceiver is configured to transmit TCP/IP data

when the communication session is maintained and all assigned physical layer channels have

been released” appears in asserted claim 2 of the ‘970 patent. JX-0005 at col. ll, lns. 24-27; col.

12, lns. 26-29.

Although this claim term appears on the GRl2 filing as a disputed claim term that

requires construction, both lnterDigita1 and Respondents agree that the claim limitation should

be accorded its plain and ordinary meaning. See Compls. Reply at 110; Resps. Br. at 397-98.

Respondents suggest that “the plain and ordinary meaning requires that a specific

component be configured to perform a specific ftmction when certain conditions are met,” and

argue that “InterDigital’s infringement theories would read out these important limitations and

rewrite the claim to require only the capability of transmitting TCP/IP data via a WLAN

connection while a cellular communication session is maintained. Resps. Br. at 397-38

(emphasis original). lnterDigital does not propose a specific plain meaning construction for this

term. See Compls. Reply at ll0.

Having considered the positions of the parties, the undersigned agrees that the plain

meaning of the term “wherein the IEEE 802 transceiver is configured to transmit TCPHP data

when the communication session is maintained and all assigned physical layer charmels have

been released” should apply. The undersigned declines to adopt the “plain meaning” proposal of

Respondents, however, inasmuch as the claim language itself indicates that the claim requires

only that the claimed IEEE transceiver be capable of transmitting TCP/IP data via a WLAN

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connection at the same time a communication session is maintained and all assigned physical

channels have been released.”

j. “subscriber unit”

In their post-hearing brief, Respondents allege that, “[i]n an attempt to avoid the prior art,

InterDigital new seeks new claim constructions that the preambles to claims 1 and 10 are

limitations, and that the tenn “subscriber unit”—Whichonly appears in the preambles~cannot

consist of separate devices connected together.” Resps. Br. at 386. Respondents argue that “N0

such constructions were sought in the parties’ joint proposed claim constructions (JX-0022C),”

and that “[t]his waiver alone should bar construction at this stage.” Id.

InterDigital agrees that “InterDigital has not proposed that the ALJ construe ‘subscriber

unit.”’ Compls. Reply at 103.

Inasmuch as both parties agree that “subscriber unit” should not be construed in this

investigation, this initial determination will not construe the claim term.

D. Infringement

1. Claim 1

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim l.

69A similar claim term, “wherein the second transceiver is configured to transmit TCP/IP data

when the communication session is maintained when none of the plurality of physical layer

channels are assigned,” appears in asserted claim 13 of the ‘97Opatent. For the reasons

discussed above, it is determined that the plain meaning of this limitation requires only that the

claimed second transceiver be capable of transmitting TCP/[P data via a WLAN connection at

the same time a communication session is maintained and none of the plurality of physical layer

channels is assigned.

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a. A subscriber unit comprising:

The preamble of claim 1 recites, “[a] subscriber unit comprising.” The record evidence

accused by InterDigital shows that the ‘970 accused products comprise subscriber units.

Specifically, the ‘970 accused products are mobile, wireless communications devices in the form

of either handsets or tablets. CX-1306C (Stark WS) at Q827, Q832, Q836, Q2282, Q3137,

Q3143, Q3148.

b. a cellular transceiver configured to communicate with a

cellular network via a cellular layered communication

protocol;

Claim 1 recites, “a cellular transceiver configured to communicate with a cellular

network via a cellular layered communication protocol.” The record shows that [

] CX-1306C (Stark WS) at Q826, Q83O, Q835, Q2281, Q3137,

Q3142, Q3147; CX-1306.1C (Stark Errata) at 2. [

] Id. at Q939,

Q942, Q2320, Q2323, Q3196, Q3199. Accordingly, the ‘970 accused products contain “a

cellular transceiver configured to communicate Witha cellular network via a cellular layered

communication protocol.”

c. an IEEE 802 transceiver configured to communicate with a

wireless local area network (WLAN) via an IEEE 8024layered

communication protocol;

Claim 1 recites, “an IEEE 802 transceiver configured to communicate with a wireless

local area network (WLAN) via an IEEE 802 layered communication protocol.” As discussed

above, the claim term “IEEE 802 transceiver configured to communicate Witha wireless local

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area network” is construed to mean “hardware and/or software configured to transmit

infonnation to and receive information from an IEEE 802 wireless local area network,” and the

claim term “IEEE 802 layered communication protocol” is construed to mean “structured

procedures for communicating with an IEEE 802 network.” The record evidence shows that

[

] CX-1306C (Stark WS) at

Q1008, Q2249, Q3226; CX-1306.1C (Stark Errata) at 2. IEEE 802.11 is a layered

communication protocol. CX-1306C (Stark WS) at Q790. Accordingly, under the adopted

constructions of this claim tenn, the ‘970 accused products contain “an IEEE 802 transceiver

configured to communicate with a wireless local area network (WLAN) via an IEEE 802 layered

communication protocol.”70

d. a detector configured to detect a signal from the WLAN; and

Claim 1 recites, “a detector configured to detect a signal from the WLAN.” The ‘970

accused products [

] CX-1306C (Stark WS) at

Q8l4; CX-1306.lC (Stark Errata) at 10. [

] See, e.g., CX-0642 (Nokia Lumia 800 User

70Although Respondents do not dispute directly that this claim limitation is satisfied, their

proposed construction of the claim tenn “IEEE 802 transceiver configured to communicate with

a wireless local area network” requires that the claimed IEEE 802 transceiver be “configured to

automatically connect directly to a W-LAN when such a connection is possible.” See Resps. Br.

at 398-414. This particular argument will be addressed below in conjunction with Respondents’

argument that the ‘970 accused products do not satisfy the claim limitation “a circuit coupled to

the cellular transceiver and the IEEE 802 transceiver and configured to communicate using the

IEEE 802 transceiver in response to the signal.”

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Guide) at 39; CX-0443 (Huawei Impulse User Guide) at 36. Accordingly, the ‘970 accused

products contain “a detector configured to detect a signal from the WLAN.”

e. a circuit coupled to the cellular transceiver and the IEEE 802

transceiver and configured to communicate using the IEEE

802 transceiver in response to the signal;

Claim 1 recites, “a circuit coupled to the cellular transceiver and the IEEE 802

transceiver and configured to communicate using the IEEE 802 transceiver in response to the

signal.” As discussed above, this claim is construed to mean “hardware and/or software coupled

to the cellular and IEEE 802 transceivers and operable to use the IEEE 802 transceiver to

communicate with the wireless local area network when such a connection is possible.”

Analyzing the ‘97Oaccused products under this adopted construction, [

] See, e.g. ,

CX-1306C (Stark WS) at Q812, Q1210-1211, Q1217, Q1220, Q2264, Q2476-2478, Q3120,

Q3341-3342; CX-1306.lC (Stark Errata) at 1, 10.

Respondents dispute that this claim limitation is satisfied, inasmuch as the ‘970 accused

products “are not configured to conununicate with a WLAN whenever a signal is detected from a

WLAN.” Resps. Br. at 410. Respondents note that “both Respondents’ and InterDigital’s claim

construction for this element requires using the IEEE 802 transceiver for communications

whenever such a WLAN connection is possible,”71and argue that “[t]he accused products

operate differently.” Id. It is argued that the ‘97Oaccused products “are incapable of

71Respondents’ proposed construction for this claim term is “a circuit coupled to the cellular

transceiver and the IEEE 802 transceiver and configured to automatically cormect directly to a

W-LAN when such a connection is possible in response to the signal.” See Resps. Br. at 393-96.

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[

] Id. (citing RX-3998C (Bims RWS) at Q431-443; Walker Tr. at 420-421;

[RX-4027C ] [

] Resps. Br. at 411 (citing RX-3998C (Bims RWS)

at Q444-473).

Yet, under both parties’ proposed constructions of “a circuit coupled to the cellular

transceiver and the IEEE 802 transceiver and configured to communicate using the IEEE 802

transceiver in response to the signal,” the claim requires only that the circuit be “configured to

communicate” using the IEEE 802 transceiver “Whensuch a connection is possible.” Such a

circuit would not actually need to use the IEEE 802 transceiver whenever the WLAN signal were

available, but would instead merely need the capability to use the IEEE 802 transceiver. [

] See, e.g.,

CX-1306C (Stark WS) at Q812, Q1210-1211, Q1217, Q1220, Q2264, Q2476-2478, Q3120,

Q3341-3342; CX-1306.1C (Stark Errata) at 1, 10.

Respondents also argue that this claim limitation is not satisfied because they lack “three

separate and distinct hardware components.” See Resps. Br. at 411. Despite Respondents’

arguments, neither the claim itself nor the parties’ proposed construction of this claim limitation

requires that the circuit, cellular transceiver, and IEEE 802 transceiver be comprised of “three

separate and distinct hardware components.” The record shows that Dr. Stark described how

software and shared hardware in the ‘970 accused products defined the claimed circuit and two

transceivers. CX-1526C (Stark RWS) at Q1059-1070; CX-1526.1C (Stark RWS Errata) at

Q1060.

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Accordingly, it is determined that the ‘970 accused products satisfy the claim limitation

“a circuit coupled to the cellular transceiver and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in response to the signal.”72

f. wherein the cellular layered communication protocol includes

a plurality of layers above a physical layer, and a plurality of

physical layer channels are available for assignment for

communication with the cellular network and a

communication session above the physical layer is maintained

when all assigned physical layer channels have been released.

Claim 1 recites, “wherein the cellular layered communication protocol includes a

plurality of layers above a physical layer, and a plurality of physical layer channels are available

for assignment for communication with the cellular network and a communication session above

the physical layer is maintained when all assigned physical layer channels have been released.”

72InterDigital also takes the position that this claim limitation is satisfied under the doctrine of

equivalents should Respondents’ proposed construction of this claim limitation be adopted. See

Compls. Br. at 272-73. InterDigital argues:

Under either interpretation [of the claim language], the ftmction of this

element is to facilitate communication directly with an IEEE 802 WLAN

when possible. CX-1306C (Stark) at 111234. Whether in overlapping or

distinct software and/or hardware'—wl1ich two configurations are

expressly contemplated by the ’97OPatent (JX-0005 (’970 Patent) at 9:41­

43 (“The various components of the subscriber unit 101 may be realized in

discrete devices or as an integrated unit.”))—the function is performed in

substantially the same way. That is, hardware and/or software operate to

preferentially facilitate communication with / connection to an IEEE 802

WLAN when possible. CX-1306C (Stark) at 111234. And the same

result—communication directly with an IEEE 802 WLAN when

possible—is achieved. Id.

It is determined that, should Respondents’ proposed construction for the claim limitation “a

circuit coupled to the cellular transceiver and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in response to the signal” be adopted, the ‘97O

accused products would satisfy this limitation Lmderthe doctrine of equivalents, inasmuch as [

] See, e.g.,

CX-1306C (Stark WS) at Q812, Q1210-1211, Q1217, Q1220, Q2264, Q2476-2478, Q3120,

Q3341-3342; CX-1306.lC (Stark Errata) at 1, 10.

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As discussed above, the claim term “a plurality of physical layer channels are available for

assignment for communication” is construed to mean “two or more physical layer channels

allocable by the subscriber unit for data communication,” and the claim term “a communication

session above the physical layer is maintained when all assigned physical layer channels have

been released” is construed to mean “a connection above the physical layer is maintained when

the assigned physical layer channels are no longer in use by the subscriber unit.”

With respect to the claim limitations “wherein the cellular layered communication

protocol includes a plurality of layers above a physical layer” and “a plurality of physical layer

channels are available for assigmnent for communication with the cellular network,” both of the

cellular technologies used by the ‘97Oaccused products, i.e., WCDMA Release 6 (or later) and

CDMAZOOOEV-DO Revision A (or later), are “cellular layered communications protocols” that

include “a plurality of layers above a physical layer.” CX-1306C (Stark WS) at Q1299-1300,

Q2516-2518, Q3382-3383; CX-l306.lC (Stark Errata) at 2. Accordingly, the ‘97Oaccused

products satisfy these limitations.

The parties do dispute Whetherthe ’97Oaccused products satisfy the limitation “a

communication session above the physical layer is maintained when all assigned physical layer

channels have been released.” See Compls. Br. at 274-86; Resps. Br. at 398-410.

Applying InterDigital’s proposed construction of the claim tenn, i.e., “a connection

above the physical layer is maintained when the assigned physical layer channels are no longer

in use by the subscriber unit,” which was adopted above, the evidence demonstrates that the ‘97O

accused products satisfy this claim limitation. Specifically,[

]

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In the ‘97Oaccused products, [

] CX-1306 (Stark WS) at

Q777; Bims Tr. 1314, 1315-1316. [

] CX-1306C (Stark WS) at Q1334, Q2547,

Q3416. [

] See CX-1526C (Stark RWS) at Q1127 (discussing CX-4149 (AT&T PDP

Connection)), Q1130 (discussing CX-4151 (Android PDP Connection Article)), Q1131

(discussing CX-4152 (Wind River PDP Connection)); [RX-4027C ]

Under InterDigita1’sproposed constmction, assigned physical layer channels in the ‘970

accused products are “released” when they are no longer in use by the subscriber unit, i.e., when

all assigned physical layer channels are released. Applying the adopted claim construction, the

relevant channels are those that are allocable by the subscriber unit for use in data transmission.

See CX-1306C (Stark WS) at Q688. The accused E-DPDCH (Enhanced Dedicated Physical

Data Channels) and Walsh Channels of the ‘970 accused products using WCDMA and

CDMA2000, respectively, are the claimed physical channels. CX-1306C (Stark WS) at Q1306,

Q1320; CX-l306.1C (Stark Errata) at 4; Bims Tr. 1268, 1274.

Turning specifically to the WCDMA ‘97Oaccused products, [

] Bims Tr. 1271-1272. [

] See Bims Tr.

1273-1274.

Testing of the accused products demonstrates that the devices are configured to maintain

a communication session, i.e., a PDP context, above the physical layer when all assigned

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physical layer channels are released (or when none are assigned). Specifically, representative

accused products were tested for confonnance with, and passed, the Service Request / RAB

re-establishment / UE initiated / Single PDP context test defined in RX-3100 (Standard

34.123-1) at pages 2991-2993. Bims Tr. 1325. This testing confirms that the device under test

performs certain operations using a preserved PDP context after (i) a connection release event, as

well as (ii) when radio coverage is lost. Bims Tr. 1327; RX-3100 (Standard 34.123-1) at 2991­

2993. The RRC connection release event releases the one RRC connection between the

subscriber unit and the network, including all radio access bearers and all signaling radio bearers.

Bims Tr. 1327-1328. At this time, any assigned E-DPDCH is also released. Bims Tr. 1321.

Conformance with the testing requires, among other things, that a PDP Context using

background or interactive traffic class is preserved without modification afier an RRC

connection release event, as well as when radio coverage is lost. RX-3100 (Standard 34.123-1)

at 2991-2992; CX-1306C (Stark WS) at Q3819; CX-1306.1C (Stark Errata) at 1. Conformance

is detennined by first establishing a PDP context with traffic class “backgrotmd class,” before a

connection release event is emulated. RX-3100 (Standard 34.123-1) at 2992; CX-1306C (Stark

WS) at Q3819; CX-1306.1C (Stark Errata) at 1. After the RRC connection release event, i.e., the

release of all radio access bearers and all signaling radio bearers, including any E-DPDCH, the

device under test initiates an uplink transmission resulting in the setup of a radio access bearer

for the active, preserved PDP context. Bims Tr. 1321, 1327-1328; RX-3100 (Standard 34.123-1)

at 2992; CX-1306C (Stark WS) at Q3819; CX-1306.1C (Stark Errata) at 1. In other words, the

test confirms that the subscriber not only can maintain a PDP Context when the physical layer

channels are released, but it also confirms the subscriber unit can reestablish physical layer

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channels, 1'.e., radio access bearers, using the preserved PDP Context. See RX-3100 (Standard

34.123—1)at 2992; CX-1306C (Stark WS) at Q3819; CX-1306.1C (Stark Errata) at 1.

In a second test scenario, for the same preserved PDP Context with traffic class

“background class,” the device under test was made to experience an emulated four minute

out-of-coverage event, i.e., a period during which there are no physical layer channels in use

between the subscriber unit and the network. Bims Tr. 1328-1329; CX-1306C (Stark WS) at

Q3819; CX-1306.1C (Stark Errata) at 1. During this out-of-coverage event, the device releases

its radio access bearers, i.e., all physical layer channels, and enters idle mode. RX-3100

(Standard 34.123-1) at 2992; CX-1306C (Stark WS) at Q3819; CX-l306.1C (Stark Errata) at 1.

Following emergence from the out-of-coverage event, the device under test initiates an uplink

transmission resulting in the setup of a radio access bearer for the active, preserved PDP context.

See, e.g., CX-1306C (Stark WS) at Q3819; CX-1306.lC (Stark Errata) at l. Thus, again, this

testing confirms that the subscriber unit not only maintains a PDP Context when the physical

layer channels are released, but it also confinns the subscriber unit reestablishes physical layer

channels, i.e., radio access bearers, using the preserved PDP Context. See RX-3100 (Standard

34.123-1) at 2992-2993; CX-1306C (Stark WS) at Q3819; CX-1306.1C (Stark Errata) at 1. [

] CX-1306C (Stark WS) at

Q1348, Q1355, Q2561-2563, Q3425, Q3428-3430, Q3432, Q3441; CX-1306.1C (Stark Errata)

at 1; CX-1308C (Walker WS) at Ql57, Ql72; CX-1307C (Goldberg WS) at Q705, Q745.

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2. Claim 2

As set forth below, the evidence indicates that the ‘97Oaccused products satisfy all

limitations of, and therefore infringe, asserted claim 2.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘97Oaccused products satisfy

the elements of claim l.

b. wherein the IEEE 802 transceiver is configured to transmit

TCPHP data when the communication session is maintained

and all assigned physical layer channels have been released.

As discussed above, the ‘97Oaccused products are configured to maintain a

communication session when all assigned physical layer channels are released or when none of

the plurality of the physical layer channels is assigned. Moreover, the ‘97Oaccused products are

configured to transmit TCP/IP data via an included second, or IEEE 802, transceiver.

[

RX-3998C

(

RX-4027C ]

[

] See CX-1308C (Walker WS) at

Q83-93 (describing WLAN use case), Q105-125 (describing cellular use case, including steps

relating to WLAN connection).

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Respondents argue that the ‘970 accused products do not satisfy the additional limitation

of claim 2 because “they do not satisfy the additional causal relationship required by the plain

and ordinary meaning of these claims.” Resps. Br. at 291-92. It was determined above,

however, that the claim language itself indicates that the claim requires only that the claimed

IEEE transceiver be capable of transmitting TCP/IP data via a WLAN connection at the same

time a communication session is maintained and all assigned physical channels have been

released. Accordingly, the ‘970 accused products satisfy this additional limitation of claim 2.

3. Claim 3

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 3.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim 1.

b. wherein at least one of the plurality of layers above the

physical layer is any one of a TCP layer, a IP layer, or a

network layer.

The record evidence shows that each of the cellular layered communication protocols

supported by the ‘970 accused products includes one or more of a TCP layer, a IP layer, or a

network layer above the physical layer. See, e.g., CX-1306C (Stark WS) at Q1524-1529;

CX-1306.1C (Stark Errata) at 4. Respondents do not contest that this claim limitation is

satisfied. See Resps. Br. at 418-19.

4. Claim 4

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infiinge, asserted claim 4.

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a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim 1.

b. wherein the cellular transceiver and the IEEE 802 transceiver

are provided in a single unit.

The record evidence shows that the ‘970 accused products include both a cellular

transceiver and an IEEE 802 transceiver. As observed by Dr. Stark, the cellular and IEEE 802

transceivers of the ‘970 accused products are provided in a single unit, i.e., a single handset or

tablet. See, e.g., CX-1306C (Stark WS) at Q1590-1593. Ftnther evidence that the ‘970 accused

products include a cellular and IEEE 802 transceiver in a single unit is evidenced by the ability

of the devices to notify a user of a connection with one or more of a cellular network and a IEEE

802 WLAN. Id. Respondents do not contest that this claim limitation is satisfied. See Resps.

Br. at 418-19.

5. Claim 5

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 5.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim 1.

b. wherein the subscriber unit is configured in a mobile telephone

or personal digital assistant.

Each of the ‘970 accused products includes one or more software applications

configuring the devices to perform common personal digital assistant (PDA) functions including

instant messaging, sending and receiving email, as well as managing a calendar and contacts.

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CX-1306C (Stark WS) at Q1653-1655; Q2700-2702; Q3605-3606; CX-1306.lC (Stark Errata) at

2, 3, 8; CX-0098 (Lumia 710 User Guide) at 31-34, 40-44, 62-63; CX-0688C (ZTE Warp Basics

Guide) at 44-46, 53-59, 78; CX-0455C (M865 User Guide) at 22-26, 30-35, 53. Further, with

few exceptions (e.g., tablets), each of the ‘970 accused products is configured as a mobile phone.

CX-1306C (Stark WS) at Q1653-1655; Q2700-2702; Q3605-3606; CX-1306C (Stark Errata) at

2, 3, 8; CX-0098 (Lumia 710 User Guide) at 29-31; CX-0688C (ZTE Warp Basics Guide) at

37-43; CX-0455C (M865 User Guide) at 17-22. Respondents do not contest that this claim

limitation is satisfied. See Resps. Br. at 418-19.

6. Claim 6

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 6.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim 1.

b. wherein the signal is a beacon frame or probe response frame.

The ‘97Oaccused products are configured to communicate with an IEEE 802.11

compliant WLAN. IEEE 802.11 compliant devices are configured to operate in Passive

Scamnng mode and/or Active Scanning mode. See, e.g., CX-1306C (Stark WS) at Q1713-1714;

CX-0390 (IEEE Std. 802.11-2007) at § 11.1.3. In Passive Scanning mode, the devices scan for

Beacon frames. Id. In Active Scanning mode, these devices generate and transmit Probe

Request frames and subsequently process received Probe Response frames. See, e.g., CX-1306C

(Stark WS) at Q1713-1714; CX-l306.1C (Stark Errata) at 4; CX-0390 (IEEE Std. 802.11-2007)

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PUBLIC VERSION

at § 11.1.3.2. Respondents do not contest that this claim limitation is satisfied. See Resps. Br. at

418-19.

7. Claim 7

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 7.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘97Oaccused products satisfy

the elements of claim l.

b. wherein at least one of the plurality of physical layer channels

is a data channel.

The ‘97Oaccused products are configured to commtmicate with a cellular network via at

least one physical layer data channel. See, e.g., CX-1306C (Stark WS) at Q1780-1781.

Specifically, Dr. Stark testified that[

] Id. at Q1782-1784.

[

] Id. at Q1786-1787. Respondents do not

contest that this claim limitation is satisfied. See Resps. Br. at 418-19.

8. Claim 8

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 8.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim 1.

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PUBLIC VERSION

b. wherein the cellular network is a licensed code division

multiple access network and the WLAN is an unlicensed

802.11 network.

The ‘970 accused products are configured to communicate with CDMA cellular and

IEEE 802.11 networks. In the United States, frequency spectrum used for cellular

communications is regulated, managed, and licensed pursuant to the Communications Act, while

“WLAN [including IEEE 802.11] uses license-exempt spectrum bands [including 2.4 GHZor 5

GHZ] regulated by FCC rules 47 C.F.R. Part 15.” CX-0412 (FCC Webpage) at 2; CX-1306C

(Stark WS) at Q1794-1795, Q2767-2768, Q3686-3687. Respondents do not contest that this

claim limitation is satisfied. See Resps. Br. at 418-19.

9. Claim 9

As set forth below, the evidence indicates that the ‘970 accused products satisfy all

limitations of, and therefore infringe, asserted claim 9.

a. The subscriber unit of claim 1,

For the reasons discussed above, it has been shown that the ‘970 accused products satisfy

the elements of claim l.

b. wherein the cellular transceiver is a code division multiple

access transceiver and the IEEE 802 transceiver is an 802.11

transceiver.

The ’970 Accused Products are configured to communicate with CDMA cellular and

IEEE 802.11 networks. See CX-1306C (Stark WS) at Q826, Q830, Q835, Q1008, Q2249,

Q2281, Q3137, Q3142, Q3147, Q3226; CX-l306.1C (Stark Errata) at 2. Consequently, the ‘970

accused products include “a code division multiple access transceiver” and “an 802.11

transceiver.” Respondents do not contest that this claim limitation is satisfied. See Resps. Br. at

418-19.

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PUBLIC VERSION

10. Claim 10

As set forth below, the evidence indicates that the ‘970 accused products do not satisfy all

limitations of asserted claim 10.

a. A subscriber unit comprising:

The preamble of claim 10 recites, “[a] subscriber unit comprising.” For the same reasons

discussed above with reference to claim l, the ‘97Oaccused products are subscriber units as

recited in the preamble of claim 10.

b. a first transceiver configured to communicate with a first

wireless network;

Claim 10 recites, “a first transceiver configured to communicate with a first wireless

network.” As discussed above with reference to claim 1, each of the ‘97Oaccused products

include a cellular transceiver configured to communicate with either a WCDMA Release 6 or a

CDMAZOOOEV-DO Revision A network.

c. a second transceiver configured to communicate with an IEEE

802 compliant wireless network; and

Claim 10 recites that the claimed subscriber unit includes “a second transceiver

configured to communicate with an IEEE 802 compliant wireless network.” As discussed above

with reference to claim 1, the ‘97Oaccused products include an IEEE 802 transceiver configured

to communicate with an IEEE 802.11-based WLAN.

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PUBLIC VERSION

d. a processor coupled to the first transceiver and the second

transceiver, and configured to operate a first protocol stack for

the first wireless network and a second protocol stack for the

IEEE 802 compliant wireless network, wherein a plurality of

physical layer channels are available for assignment for

communication with the first wireless network, and to

maintain a communication session above a physical layer of the

first protocol stack when none of the plurality of physical layer

channels are assigned.

Claim 10 requires a “processor . . . configured to operate a first protocol stack for the first

wireless network and a second protocol stack for the IEEE 802 compliant Wirelessnetwork.”

The ‘97Oaccused products do not satisfy this requirement. [

] RX-3998C (Bims RWS)

at Q556, Q561. [

] See CX-1306C (Stark WS) at Q2061, Q2863, Q3801; Stark Tr.

491-492. Accordingly, ‘970 the accused products do not satisfy the “processor . . . configured to

operate a first protocol stack for the first wireless network and a second protocol stack for the

IEEE 802 compliant wireless network” limitation ofclaim 10.

Claim 10 also recites, “a processor . . . wherein a plurality of physical layer channels are

available for assignment for communication with the first wireless network, and to maintain a

communication session above a physical layer of the first protocol stack when none of the

plurality of physical layer channels are assigned.” For the reasons stated above in the discussion

of claim 1, the ‘970 accused products also meet this limitation of claim 10.

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11. Claim 11

a. The subscriber unit of claim 10, further comprising:

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 11.

b. a detector configured to detect the IEEE 802 compliant

wireless network; and

Claim ll recites, “a detector configured to detect the IEEE 802 compliant wireless

network.” As discussed above with reference to claim 1, the ‘970 products include “a detector

configured to detect the IEEE 802 compliant wireless network.”

c. a circuit configured to select the second transceiver in response

to detection of the IEEE 802 compliant wireless network.

Claim 11 recites, “a circuit configured to select the second transceiver in response to

detection of the IEEE 802 compliant wireless network.” As discussed above with reference to

claim 1, the ‘970 Accused Products include “a circuit configured to select the second transceiver

in response to detection of the IEEE 802 compliant Wirelessnetwork.”

12. Claim 12

a. The subscriber unit of claim 11,

Inasmuch as the ‘970 accused products do not satisfy the limitations of claim 11, they

also do not satisfy the limitations of dependent claim 12.

b. wherein detection of the IEEE 802 compliant wireless network

is based on receipt of a beacon frame or probe response frame.

The ‘97Oaccused products are configured to communicate with an IEEE 802.11

compliant WLAN. IEEE 802.11 compliant devices are configured to operate in Passive

Scanning mode and/or Active Scanning mode. See, e.g., CX-1306C (Stark WS) at Q1713-1714;

CX-0390 (IEEE Std. 802.11-2007) at § 11.1.3. In Passive Scanning mode, the devices scan for

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Beacon frames. Id. In Active Scanning mode, these devices generate and transmit Probe

Request frames and subsequently process received Probe Response frames. See, e.g., CX-1306C

(Stark WS) at Q1713-1714; CX-1306.1C (Stark Errata) at 4; CX-0390 (IEEE Std. 802.11-2007)

at § 11.1.3.2. Therefore, the ‘970 accused products satisfy this additional limitation of claim 12.

13. Claim 13

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 13.

b. wherein the second transceiver is configured to transmit

TCP/IP data when the communication session is maintained

when none of the plurality of physical layer channels are

assigned.

As discussed above, the ‘970 accused products are configured to maintain a

communication session when all assigned physical layer channels are released or when none of

the plurality of the physical layer channels is assigned. Moreover, the ‘970 accused products are

configured to transmit TCP/IP data via an included second, or IEEE 802, transceiver.

[

RX-3998C

RX-4027C ]

[

] See CX-1308C (Walker WS) at

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PUBLIC VERSION

Q83-93[ ]Ql05-125[

]

Respondents argue that the ‘97Oaccused products do not satisfy the additional limitation

of claim 13 because “they do not satisfy the additional causal relationship required by the plain

and ordinary meaning of these claims.” Resps. Br. at 291-92. It was determined above,

however, that the claim language itself indicates that this limitation requires only that the

claimed second transceiver be capable of transmitting TCP/IP data via a WLAN connection at

the same time a communication session is maintained and none of the plurality of physical layer

channels is assigned. Accordingly, the ‘97Oaccused products satisfy this additional limitation of

claim l3.

14. Claim 14

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 14.

b. wherein at least one of the plurality of layers above the

physical layer is any one of a TCP layer, a IP layer, or a

network layer.

The record evidence shows that each of the cellular layered communication protocols

supported by the ‘970 accused products includes one or more of a TCP layer, a IP layer, or a

network layer above the physical layer. See, e.g., CX-1306C (Stark WS) at Q1524-1529; CXl306.lC (Stark Errata) at 4. Respondents do not contest that this claim limitation is satisfied.

See Resps. Br. at 418-19.

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15. Claim 15

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 15.

b. wherein at least one of the plurality of physical layer channels

is a data channel.

The ‘970 accused products are configured to communicate with a cellular network via at

least one physical layer data channel. See, e.g., CX-1306C (Stark WS) at Q1780-1781.

Specifically, Dr. Stark testified that [

] Id. at Q1782-1784.

[

] Id. at Q1786-1787. Respondents do not

contest that this claim limitation is satisfied. See Resps. Br. at 418-19.

16. Claim 16

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 16.

b. wherein the first wireless network is a licensed code division

multiple access network and the IEEE 802 compliant wireless

network is an unlicensed IEEE 802.11network.

The ‘97Oaccused products are configured to commtmicate with CDMA cellular and

IEEE 802.11 networks. In the U.S., frequency spectrum used for cellular communications is

regulated, managed, and licensed pursuant to the Communications Act, while “WLAN

[including IEEE 802.11] uses license-exempt spectrum bands [including 2.4 GHZ or 5 GHZ]

regulated by FCC rules 47 C.F.R. Part 15.” CX-0412 (FCC Webpage) at 2; CX-1306C (Stark

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PUBLIC VERSION

WS) at Q1794-1795, Q2767-2768, Q3686-3637. Respondents do not contest that this claim

limitation is satisfied. See Resps. Br. at 418-19.

17. Claim 17

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 17.

b. wherein the first transceiver is a code division multiple access

transceiver and the second transceiver is an 802.11 transceiver.

The ’97OAccused Products are configured to communicate with CDMA cellular and

IEEE 802.11 networks. See CX-1306C (Stark WS) at Q826, Q830, Q835, Q1008, Q2249,

Q2281, Q3137, Q3142, Q3147, Q3226; CX-1306.1C (Stark Errata) at 2. Consequently, the ‘970

accused products include “a code division multiple access transceiver” and “an 802.11

transceiver.” Respondents do not contest that this claim limitation is satisfied. See Resps. Br. at

418-19.

18. Claim 18

a. The subscriber unit of claim 10,

Inasmuch as the ‘970 accused products do not satisfy the limitations of independent claim

10, they also do not satisfy the limitations of dependent claim 18.

b. wherein the first transceiver is a cellular transceiver.

The ‘970 accused products are configured to communicate with CDMA cellular

networks. See CX-1306C (Stark WS) at Q826, Q830, Q835, Q2281, Q3137, Q3142, Q3147;

CX-1306. 1C (Stark Errata) at 2. Consequently, the ‘970 accused products include “first

transceiver” that is a “cellular transceiver.” Respondents do not contest that this claim limitation

is satisfied. See Resps. Br. at 418-19.

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19. Infringement of the Accused Products Upon Importation

Respondents argue that, inasmuch as the ‘97Oaccused products do not directly infringe

upon importation into the United States, they do not satisfy the importation requirement of

section 337. See Resps. Br. at 412-14 (citing Electronic Devices at 13-14 (“[I]nfringement,

direct or indirect, must be based on the articles as imported to satisfy the requirements of section

337.”)).

Respondents argue that, at the time of importation, “the WCDMA accused products

require additional SIM card hardware before they can establish a packet data COI1I‘l€C1llO1‘1over a

cellular network,” but that “there is no evidence that the WCDMA accused products are

imported with a SIM card; in fact, the evidence indicates the opposite.” Resps. Br. at 412-13. It

is further argued that, “Without a SIM card, the WCDMA accused products cannot establish a

packet data connection as required by the asserted claims.” Id. at 3.

Respondents also argue that, “as imported, the accused products cannot communicate

with a WLAN as the claims require without additional configuration.” Resps. Br. at 413. In

particular, Respondents contend that “the accused products as imported are not configured to

establish a connection to a WLAN,” and that “at least some of the accused products have the

WLAN functionality disabled when they are imported.” See id It is argued that, “[b]ecause the

accused products must be manually configured after importation in order to be able to connect to

and use a WLAN for data transfer, they cannot infringe claim l as imported.” Id. at 413-14.

In response, InterDigital argues that “the ’97OAccused Products as imported are

configured to connect to a WLAN.” Compls. Br. at 299. ]nterDigital further argues:

[T] he ’97OAccused Products are configured to automatically and directly

communicate with an IEEE 802 WLAN without manual configuration,

thereby satisfying the asserted claim limitations. Id. For example, the

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[

] Id. [

1 Id. at

11986-1987, 2958-2959, 3348, 4182. [

] See CX-1308C

(Walker) at 1[ 48, 77-78; Tr. (Walker) at 419216-420219, 424:19-425:1.

Respondents do not dispute these facts. Having to power on the device,

including powering on an included IEEE 802.11 transceiver in a mere two

devices, does not modify the ’970 Accused Products so as to be

configured to communicate with an IEEE 802 WLAN. And Respondents’

argument—which expressly acknowledges that the IEEE 802.11

transceiver element is included and can be powered on—-confirmsthey are

imported so configured.

Id. (emphasis original).

InterDigital’s position is persuasive. Notwithstanding Respondents’ arguments, the

record evidence demonstrates that the ‘970 accused products, as imported, are configured to

connect to a WLAN. The act of powering-on an accused device, as well as the act of inserting a

SIM card to connect the device to a cellular network, does not change the fact that the accused

products as imported are pre-configured to connect to a cellular network.” It is therefore

determined that the ‘970 accused products do satisfy the importation requirement of section 337.

20. Indirect Infringement

InterDigital also alleges that Respondents have violated section 337 by inducing and

contributing to the infringement of the ‘970 patent. Compls. Br. at 300-03.

a. Induced Infringement

As discussed above, the ‘970 accused products satisfy all limitations of asserted claims

1-10. Moreover, the record shows that Respondents’ customers have used the ‘970 accused

73InterDigital’s analogy regarding the need to charge a cellular phone’s battery before use is also

instructive in this circumstance. See Compls. Br. at 409.

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products in the United States. See, e.g., CX-1332C (Cronin Dep.) at 43; CX-1328 (Jiang Dep.)

at 64-65; CX-1320C (Bright Dep.) at 18. Accordingly, claims 1-10 of the ‘970 patent are

directly infringed by Respondents’ U.S. customers who use the ‘970 accused products in the

manner intended, i.e., to establish cellular communications via a WCDMA Release 6 (or later) or

CDMA2000 EV-DO Rev. A (or later) network. See RX-3998C (Bims RWS) at Q542-545.

InterDigital alleges that “Respondents actively induce this infringement by providing user

manuals and retail support programs instructing end users how to use the ’970 Accused Products

in a manner that infringes the ’970 Patent.” Compls. Br. at 300-01 (citing CX-1332C (Cronin

Dep.) at 52; CX-0098 (Nokia Lumia 710 User Guide) at 8-9, 36-37; CX-0104C (Nokia Lumia

800 User Guide) at 8-9, 41-42; CX-1190C (Nokia 808 Pureview User Guide) at 7-9, 108-109;

CX-0688C (ZTE Warp Basics Guide) at 60-61; CX-0443 (Huawei Impulse 4G User Guide) at 8,

35-36; CX-0506C (Huawei myTouch Q User Manual) at 6, 31; CX-0455C (Huawei M865 User

Guide) at 35-36).

Based on the record evidence, it is determined that Respondents prepare and provide

specific instructions to end-users of the ‘970 accused products, and that these instructions teach

users how to insert SIM cards to communicate with a cellular network and how to use the

products to communicate with a WLAN. See, e.g., CX-1332C (Cronin Dep.) at 52; CX-0098

(Nokia Lumia 710 User Guide) at 8-9, 36-37; CX-0104C (Nokia Lumia 800 User Guide) at 8-9,

41-42; CX-1190C (Nokia 808 Pureview User Guide) at 7-9, 108-109; CX-0688C (ZTE Warp

Basics Guide) at 60-61; CX-0443 (Huawei Impulse 4G User Guide) at 8, 35-36; CX-0506C

(Huawei myTouch Q User Manual) at 6, 31; CX-0455C (Huawei M865 User Guide) at 35-36.

In addition, the evidence shows that Respondents have had actual knowledge of the ‘970

patent, as well as InterDigital’s preliminary claim charts, since InterDigital filed its complaint in

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PUBLIC VERSION

this investigation on July 26, 2011. Since that time, Respondents have continued to import and

sell the ‘970 accused products. See CX-1141C (Nokia‘s Responses to First Set of Requests for

Admission); CX-1148C (Huawei’s Responses to First Set of Requests for Admission);

CX-1151C (ZTE’s Responses to First Set of Requests for Admission). Therefore, it is

determined that Respondents knowingly induce end-user customers to directly infringe claims

1-10 of the ‘97Opatent.

b. Contributory Infringement

As discussed above, end-user customers directly infringe claims 1-10 of the ‘970 patent

when they insert a SIM card or enable EV-DO functionality on the ‘97Oaccused products, and

Respondents had actual knowledge of the ‘970 patent no later than July 26, 2011. In addition,

the ‘970 products supporting WCDMA Release 6 (or later) are specifically designed to be used

with a SIM card and to operate on WCDMA networks. See, e.g., CX-0098 (Nokia Lumia 710

User Guide) at 9; CX-1328C (Jiang Dep.) at 54. To the extent the ‘970 accused products

supporting WCDMA Release 6 (or later) are combined with a SIM card, it is determined that

they constitute a material component of the claimed invention. See CX-1306 (Stark WS) at

Q4178. Similarly, the ‘970 accused products supporting CDMA2000 EV-DO Rev. A are

specifically designed to operate on CDMA2000 networks. See, e.g., CX-1328C (Jiang Dep.) at

52-53. It is further determined that, inasmuch as the ‘970 accused products supporting

CDMAZOOOEV-DO Rev. A do not require additional hardware for EV-DO functionality to be

enabled, they constitute a material component of the claimed invention. See CX-1306 (Stark

WS) at Q4180.

Based on the record evidence, it is also determined that there are no substantial

non-infringing uses for the ‘970 accused products. Any use of the ‘970 accused products without

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PUBLIC VERSION

a SIM card and/or EV-DO functionality enabled would deprive users of the benefit that the ‘970

accused products were intended to provide. Although Respondents’ expert Dr. Bims testified

that the ‘970 accused products have substantial non-infringing uses because the WLAN or

cellular functionality may be disabled on certain devices, the mere fact that a device may be

disabled or powered-off does not establish a non-infringing use. See RX-3998C (Bims RWS) at

Q630. Moreover, Dr. Bims does not identify a specific, substantial non-infringing use of the

‘970 accused products when WLAN or cellular filnctionality is purportedly disabled. Therefore,

it is determined that Respondents’ importation and sale of the ‘970 accused products contribute

to the direct infringement of claims 1-10 of the ‘970 patent.

E. Validity

1. Priority Date

The ‘970 descends, through a chain of continuation and continuation-in-part applications,

from U.S. Patent Application No. 09/400,136, which was filed on September 21, 1999, and

which ultimately issued as U.S. Patent No. 6,526,034. See JX—OOO5.lnterDigital argues that the

‘970 patent should be granted a priority date earlier than its effective filing date of September 21,

1999. Compls. Br. at 303-06. Specifically, InterDigital argues that the ‘970 patent is entitled to

a priority date no later than April 6, 1999. Id.

In order to substantiate a claim of an invention date prior to the filing of the application,

the inventor’s claim “must be corroborated by ‘evidence which shows that the inventor disclosed

to others his completed thought expressed in such clear terms as to enable those skilled in the art

to make the invention.”‘ Spansiorz, Inc. v. U.S. Int’! Trade Comm ’n, 629 F.3d 1331, 1356 (Fed.

Cir. 2010).

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InterDigita1 argues that the testimony of the ‘970 inventor, Mr. Gorsuch, [

CX-1269C

CX-1267C ] along vtdth

the testimony of InterDigital’s expert Dr. Stark, establish that Mr. Gorsuch conceived of his

invention and disclosed his invention to Tantivy’s patent prosecution counsel, Mr. David

Thibodeau, by April 6, 1999. See Compls. Br. at 303-05.

[

CX-1314C

CX-l314.lC CX-1526C

CX-1269C l

With respect to the Thibodeau email, InterDigital argues as follows:

[A] handwritten note by Lisa Kolb, a Tantivy employee present at the

April 6, 1999 meeting, on a copy of Mr. Thibodeau’s April 6, 1999 email

that states “David to write-up for Tom” confinns that by April 6, 1999,

Mr. Gorsuch had disclosed his invention to Mr. Thibodeau; Mr.

Thibodeau was to “write-up” the application of the first member of the

’97O Patent family based on Mr. Gorsuch’s (Tom’s) disclosure.

CX-1267C (Thibodeau 4/6/99 Email) at IDC-ITC-017582808; see also

CX-1526C (Stark RWS) at 11118-123; CX-1526.1C (Stark RWS Errata) at

4; CX-1314C (Gorsuch) at {[29-48; CX-l314.1C (Gorsuch Errata) at 2.

After the April 6, 1999 meeting, Mr. Gorsuch “didn’t provide any further

details needed to disclose [his] invention.” CX-1314C (Gorsuch) at 1[48.

Tantivy gave the application for the ’97O patent a “high priority,” as

indicated in CX-1270C (Patent Application Index, 7/20/99) and

CX-1271C (Patent Application Index, 8/l6/99).

Compls Br at 303-04.

I.nterD1gitalfurther argues that:

[

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CX-1275C CX-1277C

CX-1273C CX-1274C

CX-1314C

CX-1269C

CX-1526C

l

Compls. Br. at 304.

At the hearing, InterDigital’s expert Dr. Stark testified that CX-1269C (Presentation to

U.S. West, 2/19/99), CX-1267C (Thibodeau 4/6/99 Email), CX-1270C (Patent Application

Index, 7/20/99) and CX-1271C (Patent Application Index, 8/16/99) demonstrate that Mr.

Gorsuch was in full possession of his invention by April 6, 1999, and that the application was

diligently filed by September 21, 1999. See CX-1526C (Stark RWS) at Q113, Q114, Q118-143;

CX-1526.lC (Stark RWS Errata) at 4.

Having examined the evidence adduced by lnterDigita1, it is determined that [

] presentation does not set forth details of the WLAN fimctionality or the specific

combination of cellular and WLAN elements claimed in the ‘970 patent. See RX-3519C (Bims

WS) at Q309-347; RX-3998C (Bims RWS) at Q632-657. For example, Mr. Gorsuch testified

that [ CX- ] shows WLAN

features of the conceived dual mode device, but [

] See CX-1314C (Gorsuch WS) at Q78, Q80, Q136; RX-3998C (Bims RWS)

at Q637. [

] is similarly misleading, inasmuch as the circuitry depicts communication with

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base stations, which are features of cellular systems, and not of WLANs. See RX-3998C (Bims

RWS) at Q639-644. [

] Gorsuch Tr. 398-399, 404. Moreover,

Mr. Gorsuch testified that several specific claim elements are not disclosed [

] Gorsuch Tr. at 398-399, 404, 408; RX-3401C (Gorsuch Dep.) at 68-69.

As for the Thibodeau email (CX-1267C), the document itself is dated April 6, 1999, is

heavily redacted, and contains a one-line reference to a meeting to discuss “Dual Mode TAU

(iCDMA/WLAN).” See CX-1267C at IDC-ITC-017582787. This single line of text, without

more, cannot corroborate Mr. Gorsuch’s claim that he had conceived of the ‘97Oinvention as

early as April 6, 1999.

Therefore, based on the evidence and arguments put forth by InterDigital, it is determined

that InterDigita1 has not shown that the ‘97Opatent is entitled to a priority date earlier than

September 21, 1999, which is the effective filing date of the ancestor application to the ‘97(l

patent.

2. Anticipation and Obviousness

Respondents allege that two prior art references, U.S. Patent No. 6,243,581 to Jawanda

(“Jawanda ‘S81 patent” or “Jawanda”) and U.S. Patent No. 6,681,259 to Lemilainen and

Haverinen (“Lemilainen ‘259 patent” or “Lemiléi.inen”),teach or make obvious all limitations of

the asserted claims of the ‘970 patent, inasmuch as they describe dual-mode units using GPRS or

other prior art protocols. See Resps. Br. at 420.

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The Jawanda ‘S81Patent Alone or in Combination with the

GPRS Standards, Draft UMTS Standards, or IS-95/IS-657

Standards

The record evidence demonstrates, by clear and convincing evidence, that the Jawanda

‘581 patent, alone or in combination with the GPRS Standards, draft UMTS Standards, and/or

IS-95/IS-657 Standards, renders obvious the asserted claims of the ‘970 patent.”

The Jawanda ‘S81 patent, on which Respondents rely for their invalidity case, qualifies as

prior art to the ‘970 patent under 35 U.S.C. § 102(e), inasmuch as it was filed on December l 1,

1998, which is even earlier than InterDigital’s alleged conception date of April 6, 1999.

For their invalidity case, Respondents also rely on the following sections of the 1997

Release of the GPRS standards:

Standard Section Exhibit Publicly Testimony from RX-3519C

available by (Bims WS)

GSM 02.60 v. 6.1.1 Rel. 1997 RX-3498 Nov. 1998 1168-75

GSM 03.02 v. 6.1.0 Rel. 1997 RX-0092 July 1998

GSM 03.60 v. 6.1.1 Rel. 1997 RX-0079 Aug. 1998

GSM 04.07 v. 6.1.0 Rel. 1997 RX-0046 July 1998

GSM 04.08 v. 6.1.1 Rel. 1997 RX-0091 Aug. 1998

GSM 04.60 v. 6.1.0 Rel. 1997 RX-0047 Aug. 1998

GSM 04.64 v. 6.1.0 Rel. 1997 RX-0093 July 1998

GSM 04.65 v. 6.1.0 Rel 1997 RX-0048 July 1998

GSM 05.01 v. 6.1.1 Rel. 1997 RX-0045 July 1998

See Resps. Br. at 429.

74To the extent that Respondents argue that Jawanda anticipates the asserted claims of the ‘970

patent, it is determined below that Jawanda does not explicitly or inherently teach the use of an

IEEE 802.11 transceiver as required by the ‘970 claims. See RX-3519C (Bims WS) at

Q555-558; GR12 Filing at 13 (identifying anticipation by Jawanda as an issue to be determined);

Resps. Br. at 425 (heading arguing that Jawanda renders obvious the ‘970 claims, but not arguing

anticipation), 452 (same). Therefore, it is determined that Jawanda does not anticipate the

asserted ‘970 claims.

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PUBLIC VERSION

Respondents further rely on the following sections of the draft UMTS standards

documents and change requests: .

Standard Section Exhibit Publicly Testimony from RX-3519C

available by (Bims WS)

3GPP 25.212 v. 2.0.0 RX-0039 June 1999 Q. 1182-88

3GPP 25.201 v. 2.1.0 RX-0062 June 1999 Q. 1189-95

3GPP 25.211 v. 2.1.0 RX-0063 June 1999 Q. 1196-1202

3GPP 23.121 v. 3.0.0 RX-0085 July 1999 Q. 1203-09

3GPP 25.101 v. 2.0.0 RX-0086 June 1999 Q. 1210-16

3GPP 24.008 v. 3.0.0 RX-0087 July 1999 Q. 1217-23

3GPP 25.301 v. 3.0.0 RX-0088 April 1999 Q. 1224-30

3GPP 25.213 v. 2.1.0 RX-0089 Jtme 1999 Q. 1231-37

3GPP 25.302 v. 2.3.0 RX-0090 Jtme 1999 Q. 1238-44

S2-99712 (Change Request) RX-0038 August 20, 1999 Q. 1245-50

See Resps. Br. at 430.

The GPRS Standards docmnents, as well as the and Draft UMTS Standards documents

and change requests, qualify as prior art printed publications inasmuch as they were widely

available to the interested public prior to the earliest priority date for the ‘970 patent. Relevant

case law specifies that a document that has been made available to interested members of the

public qualifies as a “printed publication” under 35 U.S.C. § 102. In re Hall, 781 F.2d 897,

898-99 (Fed. Cir. 1986). A document is available when persons ordinarily skilled in the subject

matter could obtain the document using reasonable diligence. Id. The documents relied on by

Respondents were promulgated by standards setting organizations, and each document bears a

date that indicates it was widely available to the interested public prior to the September 21,

1999 effective filing date of the ‘970 patent.

InterDigita1 questions whether these publications were available to the public in the

relevant timeframe, but the record evidence does not provide any reason to doubt that these

publications were indeed publicly available on the dates attributed to them. See Compls. Br. at

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PUBLIC VERSION

308-13. Even InterDigital’s expert Dr. Stark testified that, as a member of the interested public

in 1999, he was able to get copies of the standards even though he was not a member of the

relevant standards organization. Stark Tr. 2149-2151.

It is therefore detennined that these standards doctunents are prior art publications with

respect to the ‘970 patent.

Lastly, the IS-95 and IS-657 standards on which Respondents rely for invalidity are also

prior art to the ‘97Opatent. See RX-35l9.2C (Bims Suppl. WS) at Q1848, Q1921.

***

In their post-hearing brief, Respondents assigned alphanumeric identifiers, e.g., “lA” and

“1OD”to the separate limitations of the ‘97Oasserted claims, and provided a chart purporting to

summarize the evidence demonstrating that the elements of the ‘97Oclaims “are taught or made

obvious by Jawanda alone, or in obvious combination with relevant prior art.” See Resps. Br. at

426. This chart is as follows:

Claim Element Summary of Proof of Anticipation/Obviousness

l Preamble: subscriber This is not a limitation; Jawanda teaches and makes obvious a

unit subscriber unit

1A: cellular transceiver _[no constructions sought]: no dispute this is taught by Jawanda.

1B: IEEE 802 Dr. Stark conceded Jawanda makes this limitation obvious

transceiver

1C: WLAN detector Under any construction this limitation is taught or made obvious by

Jawanda

1D: circuit to use [InterDigital construction]: not disputed that Jawanda teaches this

WLAN limitation . [Respondent construction]: Jawanda teaches this

limitation.

1E: plurality of layers [no construction sought]: not disputed this is taught by Jawanda alone

above physical layer or made obvious in combination with one of GPRS, UMTS, IS-95.

1F: plurality of [Respondent construction]: not disputed this is taught by Jawanda

charmels available inherently, or made obvious by Jawanda in combination with one of

GPRS, IS-95, UMTS

[InterDigital construction]: made obvious by Jawanda in combination

with either GPRS or UMTS.

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Claim Element Summary of Proof of Anticipation/Obviousness

1G: maintain session [InterDigita1construction]: taught by Jawanda.

[Respondent construction]: taught by Jawanda.

10 preamble: subscriber See claim 1 Preamble, above

unit

10A: first transceiver [no construction sought]: taught by Jawanda

10B: second transceiver [no construction sought]: taught by Jawanda

10C: processor coupled

can be the “processor”)]: taught by Jawanda

10D: channels available See element 1F

10E: maintain session See element 1G

2, 13: TCP/IP over

VVLAN

[no construction sought]: no dispute this is taught by Jawanda

3, 14: TCP/[P or

network layer

[no construction sought]: no dispute this is taught by Jawanda

4: single unit

it would be obvious to enclose Jawanda system in single unit

5: mobile phone or

PDA

[no construction sought]: obvious over Jawanda.

6: 12: beacon frame [no construction sought]: not disputed this is taught by Jawanda

7, 15: data channel [no construction sought]: not disputed this is taught by Jawanda

8, 16: licensed CDMA,

unlicensed WLAN

[no construction sought]: not disputed this is taught by Jawanda

9, 17: CDMA and

802.11

[no construction sought]: Jawanda teaches CDMA. Conceded at

hearing that 802.11 is obvious over Jawanda

11: detector circuit,

circuit to use WLAN

[no construction sought]: See element 1C, 1D

18: cellular transceiver _[no construction sought]: See element 1A

Resps. Br. at 426-27.

Respondents contend that “very little” of the information in the chart is disputed by the

parties. See Resps. Br. at 425. Specifically, Respondents argue:

Dr. Stark has conceded that the following elements are disclosed or made

obvious by Jawanda: a subscriber unit composed of separate devices or

combined into single unit (preamble); an IEEE 802.11 transceiver (1A), a

cellular transceiver (1B), a circuit to detect the presence of WLAN (lC), a

circuit that uses WLAN when detected (ID), a session between to two

peer computers over a network using a cellular connection (lG); the

349

[InterDigital infringement theory (PDP context is communication

session)]: Obvious by Jawanda in combination with GPRS or UMTS

[InterDigital infringement theory (collection of hardware and software

[no construction sought]: obvious over Jawanda, conceded at heanng
PUBLIC VERSION

session is at the top of the cellular protocol stack (1G), the session is

preserved When the cellular connection is no longer used; (1G); GPRS had

a layered communication protocol (1A), GPRS had multiple physical layer

channels available for use to transmit data by the subscriber unit (1E),

GPRS had a PDP context (1G), and GPRS maintained the PDP context

when physical layer channels were not in use (IG).

Id at 425-26.

Respondents further argue:

Dr. Stark admitted that at least the following limitations are either

disclosed by or rendered obvious by Jawanda alone or in combination with

GPRS, drafi UMTS, or IS-95/657: 1 Preamble (Stark Tr. 2116:5-21 17:17,

212522-2126117), 1A and 18 (id. 2126118-2127:5, 2168:10-24, 2120:10­

15), 1B (id. 2126:4-17), 1C (id. 212522-2126:17, 2134:13-2135:6), 1D (id.

2134113-2136:22), 1E (id. 212712-8), 1F and 10D (id. at 436:2-637:8,

348:1?-22, 2127:18-2128:2O), 4 (Stark Tr. 2118:19-2119219, 2116:5­

2117:l7), and 11 (id. 212522-2126117, 2134213-213516, 2134:13­

2136:22).

Resps. Br. at 426 n.10.

The specific disclosures of the references relied upon by Respondents are discussed in

further detail on a claim-by-claim basis below. i

i. (Claim 1) A subscriber unit comprising:

As an initial matter, Respondents argue that the preamble of claim 1 is not a limitation,

and that “to invalidate this claim prior art need not anticipate it or make it obvious.” Resps. Br.

at 427.

As discussed above, the term “subscriber unit” has not been construed. Nevertheless,

even if “subscriber unit” were detennined to be a limitation of claim 1, the evidence

demonstrates clearly and convincingly that the Jawanda ‘S81 patent either (i) teaches al

subscriber unit, if a subscriber unit could be composed of discrete or separate devices connected

using an existing conventional computer interface, or (ii) shows that a unitary subscriber unit

would have been obvious to a person of ordinary skill in the art.

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The Jawanda ‘581 patent teaches a compound subscriber unit, which is also called a

“mobile computer tenninal,” having a cellular and a wireless transceiver. RX-0032 (Jawanda

‘S81 patent) at col. 6, lns. 22-35; col. 6, lns. 57-59. Jawanda shows that the mobile computer

terminal can consist of a mobile terminal 14 and the mobile phone 16 of Figure 1, coupled by an

RS-232 connection, which is “an existing conventional computer interface.” Id. at col. 3, lns.

27-65. As lnterDigital’s expert Dr. Stark testified, it would have been obvious in light of

Jawanda to add a card to a laptop for data transmission, producing the result depicted in Figure 5

ofthe ‘97Opatent. Stark Tr. 2116-2117, 2125-2126.

ii. (Claim 1) a cellular transceiver configured to

communicate with a cellular network via a cellular

layered communication protocol;

The parties do not dispute that the Jawanda ‘581 patent teaches a mobile computer

terminal that includes this element, inasmuch as InterDigital’s expert Dr. Stark testified to such

at the hearing. See, e.g., Stark Tr. 2126-2127, 2168, 2120. The Jawanda ‘581 patent discloses a

mobile phone 16 in Figure 1, and a mobile phone inherently includes a cellular transceiver. The

mobile phone can commrmicate with WWAN 110, i.e., the Wireless Wide Area Network, which

is the cellular network, “according to any currently available or future wireless data protocol

such as code division multiple access (CDMA), CDPD, or GPRS.” RX-0032 (Jawanda ‘581

patent) at col. 3, lns. 1-9; col. 4, lns. 31-44. The cellular phone protocols existing at the time of

the Jawanda ‘581 patent, including GPRS, draft UMTS and IS-95/IS-65 7, all used a layered

communication protocol. RX-3519C (Bims WS) at Q999-1009, Q1272-1274; RX-3519.2C

(Bims Suppl. WS) at Q 1788-1789. Thus, the Jawanda ‘S81 patent inherently discloses the

layered communication protocols of those standards. Also, one of skill in the art at the relevant

timeframe knew that the prevailing cell phone protocols provide cellular layered communication

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protocols, so that this limitation would have been obvious based on the Jawanda ‘S81 patent

alone even if were not inherently disclosed. RX-3519C (Bims WS) at Q539-547.

InterDigital argues that the respective standards relied on by Respondents’ expert Dr.

Bims are not a single publication, such that the combinations relied on by Dr. Bims to show

invalidity of the ‘970 patent constitute multiple references. See lnterDigital Br. at 313-16. The

evidence demonstrates, however, that one of ordinary skill in the art would treat these disclosures

as a single cohesive standard. See RX-3519C (Bims WS) at Q296-297, Q1177, Q1406, Q1662;

RX-3519.2C (Bims Suppl. WS) at Q1848, Q1921). Even if InterDigital were correct, the

motivation to combine the selected standards docmnents for a given cell phone standard is

compelling because the documents are designed to work together as a coherent reference.

RX-3519C (Bims WS) at Q296-297, Q1177, Q1407, Q1662; RX-3519.2C (Bims Suppl. WS) at

Q1848, Q1921. The standards sections can be considered different chapters of a constmction

manual for building a standard-compliant cell phone. Id. Moreover, even Dr. Stark conceded

that, in order to build a standard-compliant cell phone, the builder must comply with all the

relevant mandatory standard sections. Stark Tr. 2163. Therefore, it would not only be obvious,

but also necessary, for a person of ordinary skill to read all the related sections of the standard

together as an integrated whole. RX-3519C (Bims WS) at Q296-297, Q1177, Q1407, Q1662;

RX-3519.2C (Bims Suppl. WS) at Q1848, Q1921).

Moreover, the standards docmnents Dr. Bims relies on specifically reference one another.

For example, the GPRS standards document list of normative references, which is at page six of

exhibit RX-0092 (GSM 03.02 v. 6.1.0 Rel. 1997), specifically refers to section 3.60, which is

RX-0079 (GSM 03.60 v. 6.1.0 Rel. 1997). In tum, the list of normative references on pages nine

through ten of RX- 0079 (GSM 03.60 v. 6.1.0 Rel. 1997) specifically refers to standard sections

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4.07, 4.08, 4.60, 4.64, 4.65, and 2.60, which are exhibits RX-0046 (GSM 04.07 v. 6.1.0 Rel.

1997), RX-0047 (GSM 04.60 v. 6.1.0 Rel. 1997), RX-0048 (GSMi04.65 v. 6.1.0 Rel. 1997),

RX-0091 (GSM 04.08 v. 6.1.1 Rel. 1997), RX-0093 (GSM 04.64 v. 6.1.0 Rel. 1997), and

RX-3498 (GSM 02.60 v. 6.1.1 Rel. 1997). The other document Dr. Bims relies on, RX-0045

(GSM 05.01 v. 6.1.1 Rel. 1997), is a general description of the “Physical layer on the radio

path,” and is thus critical to defining and Lmderstandingthe GPRS physical layer channels

referenced in the other documents. Furthermore, the list of nonnative references on page five of

RX-0045 (GSM 05.01 V.6.1.1 Rel. 1997) specifically refers to section 4.08, which is RX-0091

(GSM 04.08 V.6.1.1 Rel. 1997). Dr. Stark agrees that nonnative references listed in a standards

document must be read to understand that document. Stark Tr. 2162-2163. Collectively, the

documents discussed above are all necessary to understand the assignment and use of physical

layer channels as well as the PDP context of the GSM/GPRS standard.”

Inasmuch as the standards documents are meant to be read together by designers of cell

phones and contain internal cross-references identifying specific documents and sections, there is

a powerful motivation to combine and use these documents together. Specifically, each

standards document is part of a standard release, each one specifically identifies other documents

within the release with which it should be combined, and it is effectively impossible for a person

of ordinary skill in the art to build a conforming device without combining those references.

Stark Tr. 2163-2165.

75The same is true of the Draft UMTS standards relied on by Dr. Bims. They are the specific

sections of the UMTS standard available at the time of the ‘970 patents, and are necessary for

understanding the relevant functioning of the UMTS physical layer channels and the PDP

context at that time.

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PUBLIC VERSION

Retuming to a discussion of the Jawanda ‘S81 patent, this reference discloses that the

mobile phone 16 in Figure 1 can communicate “according to any currently available or future

wireless data protocol such as code division multiple access (CDMA), CDPD, or GPRS.”

RX-0032 at col. 3, lns. 1-9 (emphasis added). The GPRS, draft UMTS, and IS-95/IS-657

standards constitute “currently available or future wireless data protocol[s]” as set forth in

Jawanda. For instance, GPRS is explicitly listed. Jawanda also lists CDMA explicitly, and the

only CDMA system in use in the United States at the time was IS-95/IS-657. RX-3519C (Bims

WS) at Q546-547, Q594, Q61 1. Further, the draft UMTS standard is a follow-on to GPRS. It

would have been an obvious design choice for a person of ordinary skill in the art to design the

cell phone system disclosed in Jawanda such that it complied with any of these three

then-existing, well-known cell phone standards. RX-3519C (Bims WS) at Q594, Q605, Q611,

Q615. See KSR lnt'l C0. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“When there is a design

need or market pressure to solve a problem and there are a finite number of identified,

predictable solutions, a person of ordinary skill has good reason to pursue the known options

within his or her technical grasp”). Therefore, with the motivation set forth in Jawanda to use a

cell phone protocol for transmitting data, a person of ordinary skill in the art would have found it

obvious to read and use the cell phone standards describing data transmission channels and data

communications as set forth in the standard sections relied on by Dr. Bims.

iii. (Claim 1) an IEEE 802 transceiver configured to

communicate with a wireless local area network

(WLAN) via an IEEE 802 layered communication

protocol;

The Jawanda ‘581 patent discloses the use of a WLAN transceiver. See CX-1526C

(Stark RWS) at Q329; RX-3519C (Bims WS) at Q548-561). lnterDigital’s expert Dr. Stark

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admitted that it would have been obvious for the WLAN to be an 802.11 network if one knew of

the 802.11 standard. Stark Tr. 2126. Dr. Stark further testified that a person of ordinary skill

would be presumed to know about the 802.11 standard. Id. 2107.

iv. (Claim 1) a detector configured to detect a signal from

the WLAN; and

The Jawanda ‘58l patent discloses this limitation. In particular, Figure 4 of the Jawanda

‘581 patent and the accompanying text teaches that the mobile terminal can detect the presence

ofa WLAN. See RX-0032 (Jawanda ‘581 patent) at col. 5, lns. 20-27; Fig. 4. The Jawanda ‘58l

patent further describes detecting a signal from the WLAN: “[T]he determination illustrated at

block 106 can be made by WLAN interface 96 . . . [by] periodically determining whether an

‘advertisement’ message has been received by wireless LAN adapter 64 from wireless network

adapter 20.” Id. at col. 4, ln. 61 —col. 5, ln. 9. The Jawanda ‘S81 patent therefore inherently

teaches circuitry to carry out this detecting function. Moreover, Dr. Stark also testified that

Jawanda discloses such a detector. Stark Tr. 2134-213.

v. (Claim 1) a circuit coupled to the cellular transceiver

and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in

response to the signal;

There is no dispute that the Jawanda ‘581 patent discloses this claim limitation under the

adopted construction of this claim tenn. See CX-1526C (Stark RWS) at Q 339; RX-3519C

(Bims WS) at Q 577-585.

If, however, Respondents’ proposed construction of this claim limitation were adopted, it

is determined that the Jawanda ‘581 patent would nevertheless disclose this limitation. The only

significant difference between Respondents’ and InterDigital’s proposed constructions is that

Respondents’ construction requires that the subscriber unit automatically connect to a WLAN in

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PUBLIC VERSION

response to detecting a WLAN signal. In other words, the connection is in response to the

signal, and not in response to an intervening act by the user. Dr. Stark admits that Jawanda

discloses exactly this, i.e., a circuit that is configured to communicate using the IEEE 802

transceiver “seamlessly,” or without the user noticing. Stark Tr. 2134-2136.

As shown in Figure 4, in response to detecting the WLAN in box 106, the system will

switch the physical connection on which the communication session is taking place from the

cellular transceiver path to the WLAN transceiver path, and establish a WLAN connection.

RX-0032 at Fig. 4. As discussed above, Dr. Stark testified at the hearing that it would be

obvious that the WLAN could be 811IEEE 802 WLAN.“ Accordingly, the Jawanda ‘$81 patent

teaches this limitation under Respondents’ proposed construction.”

vi. (Claim 1) wherein the cellular layered communication

protocol includes a plurality of layers above a physical

layer,

InterDigital’s expert does not dispute that the Jawanda ‘581 patent discloses this

limitation. See, e.g., CX-1526C (Stark RWS) at Q329. The Jawanda ‘S81 patent discloses this

76There is no dispute that Jawanda teaches the other elements of this limitation. The mobile

terminal has a circuit (the processor 52 in Figure 2) that is running software that makes the

switch to the WLAN in response to detecting the beacon signal indicating a WLAN is present.

“In addition to application 90, mobile terminal 14 executes communication software including

network access arbitrator 92 . . . network access arbitrator 92 routes datagrams output by

application 90 to either CAI 94 or WLAN interface 96.” This circuit is thus coupled to both

transceivers. RX-0032 at col. 4, lns. 2-14. Furthermore, it is inherent that there is hardware

and/or software to carry out the establislnnent of the WLAN cormection in response to detecting

the signal shown in Fig. 4, and it is inherent that, in order to route data over either transceiver,

this hardware and/or software must be coupled to both transceivers. RX-3519C (Bims WS) at

Q581-585.

77InterDigital also argues that this limitation is satisfied under the doctrine of equivalents should

Respondents’ proposed construction be adopted. See Compls. Br. at 272-73. Inasmuch as it is

detennined that the ‘970 accused products literally infringe this limitation under Respondents’

proposed construction, InterDigital’s doctrine of equivalents argtnnent will not be addressed.

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PUBLIC VERSION

limitation in two ways. First, it explicitly discloses the use of multiple protocol layers.”

Moreover, it would have been obvious to combine the Jawanda ‘S81 patent with any one of the

GPRS, draft UMTS, or IS-95/IS-657 standards, inasmuch as these standards all had a plurality of

layers above a physical layer. RX-3519C (Bims WS) at Q 586-615; RX-3519.2C (Bims Suppl.

WS) at Q1788-1789. Further, Dr. Stark testified at the hearing that GPRS teaches this limitation.

Stark Tr. 2127.

vii. (Claim 1) and a plurality of physical layer channels are

available for assignment for communication with the

cellular network

Applying the construction of this claim term adopted above, this limitation is made

obvious by the Jawanda ‘S81 patent in combination with either the GPRS, the Draft UMTS, or

IS-95/IS-657 Standards.

As an initial matter, InterDigital’s expert Dr. Stark testified that “allocation,” as used in

the adopted construction, means the same thing as “use.” Stark Tr. 498-499. GPRS and UMTS

both provide two or more channels to a subscriber unit to use to transmit data. RX-3519C (Bims

WS) at Q623, Q628-629. Additionally, Dr. Stark testified that it was obvious to have an IS-95

subscriber Lmituse two or more channels to communicate data, and that GPRS teaches a plurality

of channels available for a subscriber unit to use to transmit data. Stark Tr. 438, 2127-2128.

Thus, this limitation is obvious in light of either the GPRS or IS-95 standards, even under

Respondents’ construction.

78Jawanda teaches Cellular Access Interface (“CAI”), which is a physical layer that transmits a

control signal via a control channel and transmits datagrams via at least one data channel.

RX-0032 at col. 3, ln. 66 —col. 4, ln. 19; col. 4, lns. 31-60; Fig. 3. Figures 1 and 3 show that the

cellular functionality includes multiple independent blocks, and that communication between

these elements would take place on different protocol layers. RX-3519C (Bims WS) at

Q594-596.

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Moreover, the Draft UMTS Standards disclose this element. Those standards determine

the number of channels (zero or more) assigned to a Layer l connection based on the number of

Transport Blocks in the Transport Block Set. RX-3519C (Bims WS) at Q628-630.

InterDigital’s expert Dr. Stark does not dispute this fact. See CX-1526C (Stark RWS) at

Q330-338) (making no response to Dr. Bims’ proof that the draft UMTS standards disclose

plural uplink channels).

In the event that Respondents’ proposed construction for this claim limitation were

adopted, lnterDigital does not dispute that Jawanda would teach this limitation either alone or in

combination with GPRS, IS-95, or UMTS. CX-1526C (Stark RWS) at Q329; RX-3519C (Bims

WS) at Q 616-631. The Jawanda ‘S81 patent teaches explicitly a plurality of physical layer

channels. RX-3519C (Bims WS) at Q617-618. Jawanda also teaches this limitation inherently

by disclosing use of GPRS or CDMA. Id. at Q617, Q6l9-627; RX-3519.2C (Bims Suppl. WS)

at Q1823-28). As discussed above, it would have been obvious to combine Jawanda with any

one of the GPRS, draft UMTS, or IS-95/IS-657 standards. Moreover, Dr. Stark confirmed that in

IS-95 and GPRS, the base station assigns the physical layer channels. Stark Tr. at 436-637; see

RX-3519C (Bims WS) at Q618-630.

viii. (Claim 1) and a communication session above the

physical layer is maintained when all assigned physical

layer channels have been released.

Respondents have shown, clearly and convincingly, that Jawanda teaches this limitation

under the adopted construction of this claim limitation. RX-3519C (Bims WS) at Q632-644.

Jawanda, similar to the asserted ‘970 patent, teaches that a communication session can be

established between two devices over a network using either a cellular or WLAN communication

path. Specifically, Figure 3 of Jawanda shows an application 90, running on mobile tenninal 14,

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PUBLIC VERSION

and communicating with application 91 running on a remote terminal 24. RX-0032 at col. 4, lns.

2-14. Network Access Arbitrator 92, also running on terminal 14, chooses between two physical

communication paths, i.e., the cellular access interface (CAI 94) or the wireless local area

network interface (WLAN I/F 96), to transmit and receive datagrams during the communication

session. Id.; see RX-3519C (Bims WS) at Q33-37, Q639.

Jawanda further teaches that the mobile computer terminal can “seamlessly” maintain the

existing communication session undisturbed while switching the physical connection from a

cellular network to a WLAN. RX-0032 at col. 5, lns. 34-39; Fig. 4; RX-3519C (Bims WS) at

Q638-639; Stark Tr. 2131. After the hancloff, maintaing the cellular connection is optional.

RX-0032 at Fig. 4 (box 112); col. 5,1n. 64 —col. 6, ln. 1; RX-3519C (Bims WS) at Q 644.

Accordingly, once the session switches to using the WLAN connection, the cellular connection

can be maintained without being used. RX-3519C (Bims WS) at Q644. Therefore, this claim

limitation is satisfied under the construction adopted above.

Moreover, Jawanda in combination with the GPRS, Draft UMTS, or IS-95/IS-657

Standards either inherently discloses this element or renders it obvious under InterDigita1’s

infringement contentions and infringement theories based on the PDP context. These standards

contain the same PDP context functionality InterDigital contends satisfies this limitation for

infringement. See RX-3519C (Bims WS) at Q44-49, Ql78, Q64O-642, Q1053-1055,

Q1343-1347. As Dr. Stark testified at the hearing, a PDP context in a GPRS-compliant network

must be activated when data is to be sent. Stark Tr. 2144. Dr. Stark also testified that a GPRS

mobile station can retain a PDP context in the “active” state indefmitely when all previously

assigned physical layer data transmission channels are not in use. Stark Tr. 2145-2146.

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As Dr. Bims has testified, UMTS is based on GPRS, and it also has a PDP context that is

maintained when the cell phone is not using the data channels to transmit data. RX-3519C

(Bims WS) at Q 642, Q1178-1181. This feature was adopted by 3GPP before the effective filing

date of the ‘970 patent. See RX-3519C (Bims WS) at Q642, Q1245-1252, Q1343-1347;

RX-0038 (3GPP S2-99712).

As for the IS-95/IS-657 Standards, they disclose this limitation for reasons similar to

those discussed above. See RX-3519.2C (Bims Suppl. WS) at Q1840-1848.

In the event Respondents’ proposed construction were adopted for this claim limitation,

Jawanda would nevertheless teach this limitation. As discussed above, Jawanda teaches

maintaining the communication session between applications 90 and 91 on the two terminals 14

and 24 when the physical connection is changed from a cellular path to the WLAN path. Prior

to this switch, the application-layer session is at the top of the cellular protocol stack, and thus is

a “higher layer in the cellular layered comrntmication protocol” as required by Respondents’

proposed construction. Stark Tr. 2131-2133, 2140-2141, 2168-2169; RX-3519C (Bims WS) at

Q276.

As shown in Figure 4, and as Dr. Stark testified, the transfer of datagrams at the

application level is “seamlessly” handed off from the cellular path to the WLAN path. In other

words, by substituting the WLAN path for the cellular path it appears to the application layer that

the physical layer connection is preserved, inasmuch as the application session is not disturbed,

i.e., the applications can continue to send or receive data grams without interruption. The

cellular connection can optionally be terminated. If so, i.e., the cell phone hangs up, then all

cellular physical layer channels are no longer being used and are released. RX-3519C (Bims

WS) at Q38-42, Q639; Stark Tr. 2140-2141. This satisfies Respondents’ proposed construction

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that “the appearance to higher layers in the cellular layered communications protocol of an active

physical layer connection is maintained when all physical layer channels have been released.” In

particular, the “physical layer channels” referenced in claim 1 are those in the cellular layered

protocol that are released when the cell phone hangs up.

ix. (Claim 2) wherein the IEEE 802 transceiver is

configured to transmit TCP/IP data when the

communication session is maintained and all assigned

physical layer channels have been released.

The Jawanda ‘S81 patent inherently discloses this additional limitation of claim 2 when it

discloses the use of Mobile IP and RFC 2002 from the Internet Engineering Task Force, as well

as the design option of only transmitting data to the WLAN network while having a concurrent

comiection to the cellular and WLAN networks. RX-3519C (Bims WS) at Q645-652, Q7l6. A

person of ordinary skill in the art would understand that the use of Mobile IP implies capability

to transmit TCP/IP data across a Wireless network. ld.; RX-0032 at col. 6, lns. 1-20.

x. (Claim 3) wherein at least one of the plurality of layers

above the physical layer is any one of a TCP layer, a IP

layer, or a network layer.

The Jawanda ‘581 patent inherently discloses the additional limitation of claim 3 when it

discloses the use of underlying cellular standards such as GPRS and CDMA, as well as Mobile

IP and RFC 2002 from the Internet Engineering Task Force. RX-3519C (Bims WS) at

Q653-658, Q717; RX-3519.2C (Bims Suppl. WS) at Q1858-1860. A person of ordinary skill in

the art would understand that the use of Mobile IP implies transmission of data using an IP layer,

which is a network layer, and the capability to transmit a TCP layer across a Wirelessnetwork.

Id. at Q648-650.

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xi. (Claim 4) wherein the cellular transceiver and the IEEE

802 transceiver are provided in a single unit.

The Jawanda ‘581 patent discloses or renders the additional limitation in this claim

obvious. RX-3519C (Bims WS) at Q659-671. Claim 1 of Jawanda claims a “mobile computer

terminal” that comprises both a WLAN and a cellular transceiver, is able to communicate data

using either transceiver, and uses the WLAN transceiver to communicate when it detects the

availability of a WLAN. RX-0032 at col. 6, lns. 24-42. Figure 1 of Jawanda shows that this

system includes a mobile terminal 14 and a cellular telephone 16 coupled by an RS-232

connector. RX-0032 at Fig. 1. All of the elements are coupled into one functional unit as shown

in Figure 2, and together comprise a “single unit.” See RX-3519C (Bims WS) at Q666-669.

Furthermore, the teachings of Jawanda render this claim limitation obvious to a person of

ordinary skill in the art. lnterDigital’s expert Dr. Stark testified that a person of ordinary skill

would have known that the system shown in Jawanda could have been implemented by using a

PCMCIA card inserted into the laptop to provide wireless or cellular transceivers in the same

laptop unit, and that there was “nothing novel” about this configuration. Stark Tr. 2116-2117,

21 18-21 19.

xii. (Claim 5) wherein the subscriber unit is configured in a

mobile telephone or personal digital assistant.

Jawanda renders the additional limitation of this claim obvious. See RX-3519C (Bims

WS) at Q 672-675. As shown above for claim 4, it would have been obvious to combine the

components of the system described in Jawanda in a single housing such as a portable computer.

Aside from size and computing power, there is no functional difference between a personal

digital assistant and a portable computer. RX-3519C (Bims WS) at Q666-669, Q674-675). Such

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differences are merely a design choice driven by the availability of small components, price and

demand. Id. Therefore, this claim limitation is rendered obvious in light of Jawanda.

xiii. (Claim 6) wherein the signal is a beacon frame or probe

response frame.

Jawanda discloses the additional limitation of claim 6. RX-3519C (Bims WS) at

Q676-681, Q715. As shown for claim 1, the Jawanda explicitly teaches that detection of the

WLAN is performed by receiving an “advertisement” message from the WLAN, which is the

claimed “beacon frame” of claim 6. Furthemiore, as shown above, it would have been obvious

to combine the system taught in Jawanda with an IEEE 802.11 WLAN. The IEEE 802.11

Standard discloses a beacon frame. RX-0097 (IEEE 802.11-1997) at §11.1.2.2; RX-3519C

(Bims WS) at Q562-576, Q678-681.

xiv. (Claim 7) wherein at least one of the plurality of

physical layer channels is a data channel.

The Jawanda ‘581 patent inherently discloses the claim 7 limitation “at least one of the

plurality of physical layer channels is a data channel” when it discloses datagrams transmitted

across the wireless network. RX-3519C (Bims WS) at Q682-686, Q718; RX-0032 at col. 4, lns.

35-47. Furthermore, the prior art GPRS and CDMA standards disclosed in Jawanda teach using

a data channel. Id. at Q686; RX-35l9.2C (Bims Suppl. WS) at Q1864-1866.

xv. (Claim 8) wherein the cellular network is a licensed

code division multiple access network and the VVLANis

an unlicensed 802.11 network.

Jawanda renders obvious this additional claim limitation. RX-3519C (Bims WS) at

Q687-694, Q719-720. As discussed above, Jawanda discloses a licensed CDMA network.

RX-3519C (Bims WS) at Q691; RX-0032 at col. 3, lns. 6-9. It would have been obvious for a

person of ordinary skill in the an to combine the teachings of Jawanda with the IEEE 802.11

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Standard. See RX-3519C (Bims WS) at Q689. The IEEE 802.11 Standard states that its

intended use is for unlicensed ISM applications. RX-0097 (IEEE 802.11-1997 Standard) at

§15.1; RX-3519C (Bims WS) at Q690.

xvi. (Claim 9) wherein the cellular transceiver is a code

division multiple access transceiver and the IEEE 802

transceiver is an 802.11transceiver.

Jawanda renders obvious this additional claim limitation. RX-3519C (Bims WS) at

Q687-694, Q719-720. As discussed above, Jawanda discloses a licensed CDMA network.

RX-3519C (Bims WS) at Q691; RX-0032 at col. 3, lns. 6-9. It would have been obvious for a

person of ordinary skill in the art to combine the teachings of Jawanda with the IEEE 802.11

Standard. See RX-3519C (Bims WS) at Q689. The IEEE 802.11 Standard states that its

intended use is for unlicensed ISM applications. RX-0097 (IEEE 802.11-1997 Standard) at

§15.1;RX-3519C(Bims WS) at Q690.

xvii. (Claim 10)A subscriber unit comprising:

Jawanda teaches or renders obvious this limitation for the reasons stated above with

respect to the discussion of claim 1. See RX-3519C (Bims WS) at Q695-703; RX-3519.2C

(Bims Suppl. WS) at Q1873-1884.

xviii. (Claim 10) a first transceiver configured to

communicate with a first wireless network;

Jawanda teaches or renders obvious this limitation for the reasons stated above with

respect to the discussion of claim 1. See RX-3519C (Bims WS) at Q695-703; RX-3519.2C

(Bims Suppl. WS) at Q1873-1884.

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xix. (Claim 10) a second transceiver configured to

communicate with an IEEE 802 compliant wireless

network; and

Jawanda teaches or renders obvious this limitation for the reasons stated above with

respect to the discussion of claim l. See RX-3519C (Bims WS) at Q704-706.

xx. (Claim 10) a processor coupled to the first transceiver

and the second transceiver, and configured to operate a

first protocol stack for the first wireless network and a

second protocol stack for the IEEE 802 compliant

wireless network,

The evidence shows that the Jawanda ‘58l patent discloses this element. See RX-3519C

(Bims WS) at Q707-710. Under the claim construction for this limitation adopted above, all that

is required is “hardware and/or software coupled to the first and second transceivers and capable

of operating a first protocol stack for the first wireless network and a second protocol stack for

the IEEE 802 compliant wireless network.” See CX-1306C (Stark WS) at Q743. Given this

interpretation of the claim, the protocol stacks on the two transceivers in the Jawanda system are

operated by hardware alone, or hardware and software, and it is necessarily true that a collection

of hardware and software must be “coupled” to the two transceivers in order to transmit or

receive data. See, e.g., RX-3519C (Bims WS) at Q7l0; RX-0032 at col. 3, lns. 29-55.

xxi. (Claim 10)wherein a plurality of physical layer

channels are available for assignment for

communication with the first wireless network, and to

maintain a communication session above a physical

layer of the first protocol stack when none of the

plurality of physical layer channels are assigned.

Jawanda teaches or renders obvious this limitation for the reasons stated above with

respect to the discussion of the claim 1 limitation “a communication session above the physical

layer is maintained when all assigned physical layer channels have been released.” See

RX-3519C (Bims WS). at Q 71 l-713; RX-35l9.2C (Bims Suppl. WS) at Q 1905-1921.

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xxii. (Claim 11) a detector configured to detect the IEEE 802

compliant wireless network; and a circuit configured to

select the second transceiver in response to detection of

the IEEE 802 compliant wireless network.

Jawanda discloses or renders obvious the additional limitations of this claim for the same

reasons stated in the discussion of the corresponding elements of claim 1: (i) a cellular

transceiver configured to communicate with a cellular network via a cellular layered

communication protocol; (ii) a detector configured to detect a signal from the WLAN; and (iii) a

circuit coupled to the cellular transceiver and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in response to the signal. See RX-3519C (Bims

WS) at Q539-547, Q562-576, Q577-585 Q714, Q721.

xxiii. (Claim 12)wherein detection of the IEEE 802 compliant

wireless network is based on receipt of a beacon frame

or probe response frame.

Jawanda discloses the additional limitation of claim 12. RX-3519C (Bims WS) at

Q676-681, Q715. As shown for claim 1, the Jawanda explicitly teaches that detection of the

WLAN is performed by receiving an “advertisement” message from the WLAN, which is the

claimed “beacon frame” of claim 12. Furthermore, as shown above, it would have been obvious

to combine the system taught in Jawanda with an IEEE 802.11 WLAN. The IEEEA8O2.ll

Standard discloses a beacon frame. RX-0097 (IEEE 802.11-1997) at §11.1.2.2; RX-3519C

(Bims WS) at Q562-576, Q678-681.

xxiv. (Claim 13) wherein the second transceiver is configured

to transmit TCP/[P data when the communication

session is maintained when none of the plurality of

physical layer channels are assigned.

The Jawanda ‘S81 patent inherently discloses this additional limitation of claim 13 when

it discloses the use of Mobile IP and RFC 2002 from the Internet Engineering Task Force, as

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well as the design option of only transmitting data to the WLAN network while having a

concurrent connection to the cellular and WLAN networks. RX-3519C (Bims WS) at Q645-652,

Q716. A person of ordinary skill in the art would understand that the use of Mobile IP implies

capability to transmit TCP/IP data across a wireless network. Id.; RX-0032 at col. 6, lns. 1-20.

xxv. (Claim 14) wherein at least one of the plurality of layers

above the physical layer is any one of a TCP layer, a IP

layer, or a network layer.

The lawanda ‘581 patent inherently discloses the additional limitation of claim 14 when

it discloses the use of underlying cellular standards such as GPRS and CDMA, as well as Mobile

IP and RFC 2002 from the lntemet Engineering Task Force. RX-3519C (Bims WS) at

Q653-658, Q7l7; RX-35l9.2C (Bims Suppl. WS) at Q1858-1860. A person of ordinary skill in

the art would understand that the use of Mobile IP implies transmission of data using an 1Player,

which is a network layer, and the capability to transmit a TCP layer across a wireless network.

Id. at Q648-650.

xxvi. (Claim 15)wherein at least one of the plurality of

physical layer channels is a data channel.

The Jawanda ‘581 patent inherently discloses the claim 15 limitation “at least one of the

plurality of physical layer channels is a data channel” when it discloses datagrams transmitted

across the wireless network. RX-3519C (Bims WS) at Q682-686, Q718; RX-0032 at col. 4, lns.

35-47. Furthermore, the prior an GPRS and CDMA standards disclosed in Jawanda teach using

a data channel. Id. at Q686; RX-35l9.2C (Bims Suppl. WS) at Q1864-1866.

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xxvii. (Claim 16)wherein the first wireless network is a

licensed code division multiple access network and the

IEEE 802 compliant wireless network is an unlicensed

IEEE 802.11 network.

Jawanda renders obvious this additional claim limitation. RX-3519C (Bims WS) at

Q687-694, Q719-720. As discussed above, Jawanda discloses a licensed CDMA network.

RX-3519C (Bims WS) at Q691; RX-0032 at col. 3, lns. 6-9. It would have been obvious for a

person of ordinary skill in the art to combine the teachings of Jawanda with the IEEE 802.11

Standard. See RX-3519C (Bims WS) at Q689. The IEEE 802.11 Standard states that its

intended use is for unlicensed ISM applications. RX-0097 (IEEE 802.11-1997 Standard) at

§15.1;RX-3519C(Bin1s WS) at Q690.

xxviii. (Claim 17)wherein the first transceiver is a code

division multiple access transceiver and the second

transceiver is an 802.11 transceiver.

Jawanda renders obvious this additional claim limitation. RX-3519C (Bims WS) at

Q687-694, Q719-720. As discussed above, Jawanda discloses a licensed CDMA network.

RX-3519C (Bims WS) at Q691; RX-0032 at col. 3, lns. 6-9. It would have been obvious for a

person of ordinary skill in the art to combine the teachings of Jawanda with the IEEE 802.11

Standard. See RX-3519C (Bims WS) at Q689. The IEEE 802.11 Standard states that its

intended use is for unlicensed ISM applications. RX-0097 (IEEE 802.11-1997 Standard) at

§15.1;RX-3519C(Bims WS) at Q690.

xxix. (Claim 18) wherein the first transceiver is a cellular

transceiver.

Jawanda discloses or renders obvious the additional limitation of this claim for the same

reasons stated in the discussion of the corresponding elements of claim 1: (i) a cellular

transceiver configured to communicate with a cellular network via a cellular layered

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communication protocol; (ii) a detector configured to detect a signal from the WLAN; and (iii) a

circuit coupled to the cellular transceiver and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in response to the signal. See RX-3519C (Bims

WS) at Q539-547, Q562-576, Q577-585 Q714, Q721.

b. The Jawanda ‘581Patent in Combination with the IEEE

802.11-1997Standard Alone or with Any One of the GPRS

Standards, the Draft UMTS Standards, or the IS-95/IS-657

Standards

As discussed above, the Jawanda ‘581 patent alone or in combination with any one of the

GPRS Standards, the Draft UMTS Standards, or the IS-95/IS-657 Standards renders obvious all

of the asserted ‘97Opatent claims. Additionally, Jawanda itself in combination with the IEEE

802.11-1997 standard renders all asserted claims of the ‘970 patent obvious. See RX-3519C

(Bims WS) at Q21, Q512-712. The Jawanda Patent inherently discloses all the cellular-related

claim limitations by teaching that the cellular functionality can be compliant with the GPRS or

CDMA (IS-95/IS-657) standards. See id. at Q544-547. The principal claim limitation from the

‘970 patent that Jawanda does not explicitly or inherently teach requires the use of an IEEE

802.11 transceiver to provide the WLAN functionality discussed in Jawanda. See id. at

Q555-558. Such a combination, however, is obvious based solely on Jawanda and the IEEE

802.11 standard.

As noted in the ‘970 patent itself, the IEEE 802.11 standard was the “newly accepted

standard” for WLANs. IX-0005 at col. 2, lns. 26-33. A person of ordinary skill in the art would

have been motivated to use the “newly accepted” IEEE 802.11 standard for WLANs in

conjunction with the WLAN transceiver, inasmuch as this would allow the Jawanda mobile

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tenninal to cornmtmicate with any 802.11 WLAN it encounters when moving from place to

place. See RX-3519C (Bims WS) at Q55l-558.

Inasmuch as InterDigital’s expert Dr. Stark claims that certain dependent claims of the

‘970 patent are not anticipated or rendered obvious by the Jawanda patent because those claims

require IEEE 802.11-specific functionality, the combination of the Jawanda Patent and the IEEE

802.11 standard inherently discloses those limitations. See CX-1526C (Stark RWS) at

Q359-361; RX-3519C (Bims WS) at Q551-576, Q645-652, Q676-681, Q687-694, Q714,

Q7l9-720. For example, claim 6 further claims that the “signal” indicating the presence of a

WLAN in claim 1 is a beacon frame or probe response frame. As noted in the ‘97Opatent itself

the use of a beacon frame to indicate the presence of a WLAN is inherently taught in the IEEE

802.11 standard. See JX-0005 at col. 9, lns. 1-4; RX-3519C (Bims WS) at Q 676-681.

Therefore, the combination of Jawanda and the IEEE 802.11 standard also renders obvious this

claim limitation, as well as similar limitations in claims 8, 9, 12, 16, and 17. Id. at Q676-681,

Q687-694, Q714, Q719-720.

c. The Jawanda ‘581Patent in Combination with the Lemiléiinen

‘259Patent and Any One of the GPRS Standards, the Draft

UMTS Standards, or the IS-95/IS-657 Standards

As discussed above, the Jawanda ‘S81 patent alone or in combination with any one of the

GPRS Standards, the Draft UMTS Standards or the IS-95/IS-657 Standards renders obvious all

of the asserted ‘970 patent claims.

The Lemilainen ‘259 patent also teaches a dual mode terminal having both a cellular

transceiver and an IEEE 802.11 transceiver to pennit data communication over either selected

transceiver. It would have been obvious to combine Jawanda with Lemiléiinen,inasmuch as this

combination is motivated by the fact that both references address the problem of providing

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alternative data communication paths for optimal transmission speed. RX-3519C (Bims WS) at

Q558-560, Q833-835. Both pennit switching from a cellular transceiver to a WLAN transceiver

when one is available to obtain higher data transmission speed. Id. It would have been obvious

to use improvements taught by Lemilainen, such as the use of a transceiver compliant with the

IEEE 802.11 standard, for the WLAN transceiver in the Jawanda mobile computer terminal. Id.

For instance, the additional limitation of dependent claim 6 requires that the “signal”

indicating the presence of a WLAN in claim l is a beacon frame or probe response frame. As

noted in the ‘970 patent itself, the use of a beacon frame to indicate the presence of a WLAN is

taught in IEEE 802.11. JX-0005 at col. 9, lns. 1-4. Therefore, the combination of Jawanda and

the Lemilainen ‘259 patent, which teaches the use of an IEEE 802.11 transceiver, also makes this

claim requirement obvious.”

d. The Lemiliiinen ‘259Patent Alone or Combination with Any

One of the GPRS Standards, the Draft UMTS Standards, or

the IS-95/IS-657Standards

The evidence shows, clearly and convincingly, that the Lemilainen ‘259 patent also

renders obvious all the elements of claims 1 and 10 of the ‘970 patent, both alone or in

combination with any one of the GPRS Standards, the Draft UMTS Standards, or the

IS-95/IS-657 Standards. See RX-3519C (Bims WS) at Q722-924; RX-3519.2C (Bims Suppl.

WS) at Q1807-1809, Q1897-1904, Q1943-1946. The Lemilainen ‘259 patent qualifies as prior

art under 35 U.S.C. § 102(e)(2) inasmuch it is a U.S. Patent that issued from an application filed

79The parties dispute whether Respondents disclosed its arguments regarding the combination of

Jawanda with Lemiléiinenin its pre-hearing brief. See GRl2 Filing at 13. A review of

Respondents’ pre-hearing brief shows that these arguments were disclosed, for example, at page

616, on which Respondents explained that “the Lemilainen 259 Patent (RX-0034) anticipates the

independent claims of the 970 Patent, and renders all of the claims obvious alone or in

combination with other art including the Jawanda 581 Patent, the GPRS Standards, the

IS-95/IS-657 Standards, and the Draft UMTS Standards.”

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on May 10, 1999, which predates the effective filing date of the ‘97Opatent. RX-0034

(Lemiléiinen ‘259 patent).

At a high level, Lemilainen discloses a dual mode device, such as a GPRS/IEEE 802.11

device, that can communicate with multiple types of wireless networks, choose a wireless

network, and then configure itself to select which network to use “without terminating active

connections.” RX-0034 at col. 3, lns. 23-24; RX-3519C (Bims WS) at Q728-775. Lemilainen

also explains that the dual mode device changes between different connection types “in such a

way that the user does not even notice the transition.” RX-0034 at col. 3, lns. 25-26.

As a dual mode cellular/IEEE 802.11 device, much of the same analysis that applied to

the Jawanda ‘581 patent (RX-0032) applies equally to the Lemilainen ‘259 patent (RX-0034).

Compare RX-3519C (Bims WS) at Q512-721, with id. at Q722-924 (discussing Jawanda and

Lemilainen, respectively). For example, both patents disclose that the cellular functionality in a

dual-mode cellular/WLAN device can be compliant with the GPRS standards. Compare

RX-0032 (Jawanda) at col. 3, lns. 1-3, with RX-0034 (Lemiliiinen) at col. 4, lns. 14-32.

Lemilainen, moreover, expressly discloses that the WLAN functionality can be compliant with

the IEEE 802.11 standard. RX-0034 (Lemilainen) at Fig. 4; col. 4, lns. 14-32; see RX-3519C

(Bims WS) at Q743-751. Additionally, Lemilainen also expressly discloses a dual-mode

subscriber unit that consists of a single device. Accordingly, Lemilainen renders obvious each of

the asserted independent claims of the ‘970 patent, as well as asserted dependent claims 2-7 and

1 1 - 1 5.

Asserted dependent claims 8-9 and 16-17 require CDMA functionality, which is not

disclosed by Lemilainen either expressly or inherently. Nevertheless, the evidence shows those

claims are rendered obvious based on combinations of Lemilainen with any one of the several

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references that disclose CDMA functionality, including the Draft UMTS standards and the

IS-95/IS-657 standards. See, e.g., RX-3519C (Bims W) at Q531-538, Q788-795, Q871, Q875,

Q923-924.

The below table was included in the Respondents’ post-hearing brief, and purports to

identify how each limitation of each asserted claim is disclosed or rendered obvious by

Lemiléiinen. As discussed above, InterDigital’s expert Dr. Stark does not dispute that many of

these limitations are taught in the prior art. The remaining limitations will be discussed in more

detail below.

Claim Element Summary of Proof of Anticipation/Obviousness

1 Preamble:

subscriber unit

RX-0034 (Lemilainen Patent) at 2:66-3:4, 4:14-19, Figs 1-2, 6; RX-3519C

(Bims WS) at Q. 728-33; conceded at hearing (Stark Tr. 2118:19-21 19:19);

not a limitation

1A: cellular

transceiver

RX-0034 (Lemilainen Patent) at 1:39-2:4, 4:19-32, 4:61-5:21, 9:41-50, Figs.

1-2, 6; RX-3519C (Bims WS) at Q. 734-42; not disputed

1B: IEEE 802

transceiver

RX-0034 (Lemilainen Patent) at 4:20-32, 4:61-5:5, 6:15-28, 7:55-8:4, 9:14­

32, Figs. 1-2, 4, 6; RX-3519C (Bims WS) at Q. 743-51); not disputed

1C: WLAN

detector

RX-0034 (Lemilainen Patent) at 7:55-8:4, 10:31-51; RX-3519C (Bims WS)

at Q. 752-66; not disputed

1D: circuit to use

WLAN

See below. See also RX-0034 (Lemilainen 259 Patent) at 2:7-3:4, 3:14-41,

4:14-5:32, 10:34-11:6, 12:57-13:42, Figs. 2-3c, 8a; RX-3519C (Bims WS) at

Q. 767-75; not disputed under lnterDigital’s proposed construction

1E: plurality of

layers above

_physical layer

RX-0034 (Lemiléiinen259 Patent) at 5:5-32, 6:25-56, 7:61-67, 7:29-36,

4:20-32; RX-3519C (Bims WS) at Q. 776-95; not disputed

IF: plurality of

channels

available

See below. Inherent in Lemilainen; also obvious in combination with GPRS

UMTS, or IS-95/[S-657. See also RX-0034 (Lemilainen 259 Patent) at

6:29-49, 7:20-28, 4:20-32, 4:61-5:14, 5:19-21; RX-3519C (Bims WS) at

Q. 796-821; RX-3519.2C (Bims Suppl. WS) at Q. 1823-28; Stark Tr.

438:17-22; not disputed under Respondents’ proposed construction

1G: maintain

session

See below. See also RX-0034 (Lemilainen 259 Patent) at 3:7-13, 4:14-32,

8:62-9:13,11:52-56, 12:57-13:11,13:33-42, Figs. 1-2, 6; RX-3519C (Bims

WS) at Q. 822-36; RX-3519.2C (Bims Suppl. WS) at Q. 1840-48.

10 preamble:

subscriber unit

See 1 Preamble; see also RX-3519C (Bims WS) at Q. 877-81.

10A: first

transceiver

See 1A; see also RX-3519C (Bims WS) at Q. 882-90.

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10B: second

transceiver

See 1B; see also RX-3519C (Bims WS) at Q. 891-99.

10C: processor

coupled

RX-0034 (Lemilainen 259 Patent) at 4:33-5:27, 10:53-11:6, Figs. 3a-c, 7-8a;

RX-3519C (Bims WS) at Q. 900-08; not disputed

10D: channels

available

See 1F; see also RX-3519C (Bims WS) at Q. 909-13.

1OE: maintain

S€SS101'1

See 1G; see also RX-3519C (Bims WS) at Q. 914-15.

2, 13: TCP/1P

over WLAN

RX-OO34(Lemiléiinen 259 Patent) at 6:15-278, 8:62-9:13; RX-3519C (Bims

WS) at Q. 837-42, 919; not disputed

3, 14: TCPflP or

network layer

RX-0034 Lemilainen 259 Patent at 5:22-31, 6:25-56, 6:64-7:24, 8:4-6, Fig.

4; RX-3519C (Bims WS) at Q. 843-46, 920; not disputed

4: single unit RX-0034 Lernilainen 259 Patent at Fig. 2, 4:14-32, 1:36-46, 1:59-66; RX3519C (Bims WS) at Q. 847-54; not disputed

5: mobile phone

or PDA

RX-0034 Lemiléiinen 259 Patent at 5:5-12, 1:39-2:4; RX-3519C (Bims WS)

at Q. 855-57; not disputed

6: 12: beacon

frame

See below. See also RX-0034 (Lemilainen 259 Patent) at 10:31-39, 13:25­

26, 10:34-36, 13:16-36; RX-3519C (Bims WS) at Q. 680-81, 743-66, 858­

64, 917-18; CX-1314C (Gorsuch WS) at Q. 115; RX-0097 (IEEE 802.11

Std.) §§ 7.2.3.1, 11.1.

7, 15: data

channel

RX-0034 Lemilainen 259 Patent at 4:61-5:14, 6:29-49, 7:20-28, 9:8-12,

Abstract, 1:59-66.; RX-3519C (Bims WS) at Q. 865-68, 921; not disputed

8, 16: licensed

CDMA,

unlicensed

WLAN

obvious over Lemilainen 259 Patent in combination with any one of the

knowledge of one of ordinary skill in the art, the GPRS standards, UMTS

draft standards, and the IS-95/IS-657 standards; RX-3519C (Bims WS) at

Q. 869-72, 922; not disputed

9, 17: CDMA and

802.11

obvious over Lemilainen 259 Patent in combination with any one of the

knowledge of one of ordinary skill in the art, the GPRS standards, UMTS

draft standards, and the IS-95/IS-657 standards; RX-3519C (Bims WS) at

Q. 873-76, 923; not disputed

11: detector

circuit, circuit to

use WLAN

See 1C, 1D; see also RX-3519C (Bims WS) at Q. 916.

18: cellular

transceiver

See 1A; see also RX-3519C (Bims WS) at Q. 924.

Resps. Br. at 457-58.

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PUBLIC VERSION

i. (Claim 1) a circuit coupled to the cellular transceiver

and the IEEE 802 transceiver and configured to

communicate using the IEEE 802 transceiver in

response to the signal;

InterDigital’s expert Dr. Stark does not dispute that Lemilainen discloses this limitation

under the construction of this claim limitation adopted above, but does contend that there is no

disclosure in the Lemilainen ‘259 patent of “automatically” connecting directly to a WLAN

when such a connection is possible. CX-1526C (Stark RWS) at Q383-390. Lemilainen does,

however, describe switching from communicating with a cellular network to a WLAN network

once it moves within range of the WLAN without intervening intervention from a user:

A reason for the connection change can also be that the terminal A enters

the operation range of such a data network which the user has given a

higher priority than the data network active at that moment. The terminal

A is, for example, connected to a GSM mobile communication network

and the user of the tenninal arrives in an office where a wireless local area

network is available.

RX-0034 at col. 12, ln. 57 —col. 13, ln. 42.

Lemilainen explains that the appropriate network selection takes place “without the

initiator of the communication having to know to which data transmission network the terminal

is coupled at a given time.” RX-0034 at col. 3, lns. 37-41. This is the same “automatic”

connection required under Respondents’ proposed construction of this claim limitation.

Accordingly, Lemilainen discloses this limitation.

ii. (Claim 1) and a plurality of physical layer channels are

available for assignment for communication with the

cellular network

Applying the construction of this claim limitation adopted above, a.ndas explained in

connection with Jawanda, is disclosed in the functionality implicit in a GPRS device. Under the

GPRS standards, a phone can use between one and eight traffic channels to transfer uplink

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PUBLIC VERSION

information. While a network identifies the channels available for use, the mobile station

ultimately decides whether orinot to transmit information on these channels. See, e.g., RX-0034

(Lemiléiinen) at col. 4, lns. 14-32; RX-3519C (Bims WS) at Q740, Q749, Q780-781. Also, as

described above in the context of the Jawanda Patent, Dr. Stark testified that GPRS handsets

could transmit on up to five uplink channels. Stark Tr. 2127-2128.

To the extent that this limitation is not inherent in the disclosure of Lemilainen, it would

be obvious to one of ordinary skill in the art to combine the teachings of Lemilainen with the

multi-chamiel uplink capabilities of GPRS. Lernilainen itself provides strong motivation to

combine, specifically identifying the GPRS standard and its high-speed capabilities. Finally, this

limitation would also be obvious in light of the UMTS draft standards, which are higher-speed

successors to the GPRS standard explicitly disclosed in Lemiliiinen, or the IS-95/IS-657

standards. See RX-3519C (Bims WS) at Q792-795; RX-3519.2C (Bims Suppl. WS) at

Q1823-1828; Stark Tr. 438.8“

iii. (Claim 1) and a communication session above the

physical layer is maintained when all assigned physical

layer channels have been released.

The Lemilainen ‘259 patent teaches this element in two different ways. First, it expressly

discloses using GPRS functionality in a dual-mode device, thereby inherently disclosing this

element. See, e.g., RX-3519C (Bims WS) at Q829-830. Second, the Lemilainen ‘259 patent

also discloses maintaining connections even after releasing the physical layer channels of one

network and changing to another network. RX-3519C (Bims WS) at Q828-829, Q836.

8°For the same reasons set forth in this section, Lemilainen also discloses the claim l0 limitation

“wherein a plurality of physical layer channels are available for assignment for communication

with the first wireless network.” ­

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PUBLIC VERSION

As described above in the context of Jawanda, Dr. Stark testified that GPRS phones

would maintain a PDP context both in between and after transmissions. Stark Tr. 2144-2146.

Lemilainen therefore inherently discloses this claim limitation through its reliance on the GPRS

standards for cellular connectivity. Additionally, this limitation would be obvious in light of the

Lemilainen patent combined with either the Draft UMTS or IS-95/IS-657 Standards for similar

reasons. RX-3519C (Bims WS) at Q796-821; RX-35l9.2C (Bims Suppl. WS) at Q1840-1848.

Lemilainen also discloses maintaining a communications session when terminating a

connection with a cellular network, thereby releasing assigned physical layer channels, by

rerouting network layer information though an IEEE 802.11 WLAN. RX-3519C (Bims WS) at

Q828-829. For example, Lemilainen describes shifting “an active connection from one data

network to another.” RX-0034 at col. 12, ln. 57 —col. 13, ln. 42. That connection consists of a

connection made at the TCP protocol layer, which is the same layer as the network layer

identified in the ‘970 patent. Compare RX-0034 (Lcmilainen) at col. 13, lns. 8-9, with JX-0005

(‘97Opatent) at col. 5, lns. 17-21; col. 6, lns. 20-29. Inasmuch as the connection at the TCP layer

is maintained, data can be transmitted to or from the subscriber unit using the same IP address,

and “the communication network used at a given time can be changed without terminating

active connections.” RX-0034 at col. 3, lns. 22-24.8‘

iv. (Claim 6) wherein the signal is a beacon frame or probe

response frame

Lemilainen teaches this element in two ways. First, it expressly discloses using IEEE

802.11 compliant functionality in a dual-mode device, thereby inherently disclosing this element.

81For the same reasons set forth in this section, Lemilainen also discloses the claim 10 limitation

“and to maintain a communication session above a physical layer of the first protocol stack when

none of the plurality of physical layer channels are assigned.”

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PUBLIC VERSION

See, e.g., RX-3519C (Bims WS) at Q680-681, Q743-766, Q861-862. Second, Lemilainen

discloses the use of WLAN registration messages, which a person of ordinary skill in the art

would recognize as corresponding to beacon frames. RX-3519C (Bims WS) at Q86082

e. The Draft UMTS Standards in Combination with the

Lemiliiinen ‘259 Patent

The evidence also shows that the asserted ‘970 patent claims are rendered obvious in

view of the Draft UMTS standards in combination with the Lemilainen ‘Z59patent. As

discussed above, the Draft UMTS Standards disclose a dual-mode cellular/WLAN device that

switches between the cellular network and WLAN. RX-3519C (Bims WS) at Q1280-1309.

While the Draft UMTS standards do not expressly disclose a dual-mode UMTS/TEEE

802.11 device, such a combination would have been obvious to one of skill in the alt based on

the Lemilalinen ‘259 patent. RX-3519C (Bims WS) at Q1279-1310. In particular, the Draft

UMTS Standards include an express teaching of combining cellular functionality with WLAN

functionality in a single device and switching between them. RX-3519C (Bims WS) at

Q1280-1309. Moreover, one of skill in the art would recognize IEEE 802.11 networks as

substitutes for the HIPERLAN2 networks referenced in the Draft UMTS standards, inasmuch as

both share similar data rates and mobility features. Id. at Q1275-1309, Q1408.

f. The Draft UMTS Standards in Combination with the IEEE

802.11 Standard

The evidence adduced by Respondents also show that the Draft UMTS Standards and

IEEE 802.11 standards render the ‘970 patent claims obvious. RX-3519C (Bims WS) at

Q1178-1179, Q1279-1283. As explained above, the Draft UMTS Standards disclose a

82For the same reasons set forth in this section, Lemilainen also discloses the claim 11 limitation

“wherein detection of the IEEE 802 compliant wireless network is based on receipt of a beacon

frame or probe response frame.”

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PUBLIC VERSION

dual-mode WCDMA/WLAN device that uses the HIPERLAN2 standard. The purpose of the

dual-mode device in the Draft UMTS Standards is to provide higher data rates when the WLAN

is available, i.e., in “hotspot environments.” Id. Q1281. That dual-mode device described by the

Draft UMTS Standards discloses all the elements of the asserted ‘970 patent claims, with the sole

exception of WLAN functionality that is explicitly compliant with the IEEE 802.11 standard. Id.

at Q1178-1409. Replacing the HIPERLAN2 functionality disclosed in the Draft UMTS

Standards with the alternative IEEE 802.11 functionality would have been obvious to one of skill

in the art. Id. at Q1282-1309. Accordingly, the combination of the Draft UMTS Standards and

IEEE 802.11 standards renders obvious the asserted ‘970 patent claims.

g. Secondary Considerations of Nonobviousness

InterDigital argues that secondary indicia support a finding of nonobviousness, including

skepticism in the industry, unexpected results, commercial success, long-felt but unsolved need,

licensing by others, and simultaneous development by others. See Compls. Br. at 339-44.

InterDigital’s arguments are not persuasive, inasmuch as the evidence adduced by InterDigital

does not establish the requisite nexus between the secondary considerations and the ‘97Opatent.

In addition, the evidence does not support lnterDigital’s proposed findings of teaching away,

commercial success, long-felt need and failure of others, unexpected results, licensing, and

simultaneous development by others.

As an initial matter, none of the evidence adduced by InterDigital with respect to

secondary considerations provides a nexus to any allegedly novel aspects of the asserted claims

of the ’970 patent, but rather is directed to dual-mode phones generally. See RX-3519C (Bims

WS) at Q675-1751. It is therefore determined that lnterDigital’s evidence fails to satisfy the

requirement that it have a nexus to the claimed ‘970 invention.

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PUBLIC VERSION

With respect to InterDigital’s claim that there was skepticism in the industry and an

alleged teaching away from the ‘970 invention, the evidence shows that any skepticism in the

industry was based on the financial feasibility of a dual-mode phone, and not on technical

feasibility. See RX-3519C (Bims WS) at Q1675-1696; RX-3401C (Gorsuch Dep.) at 76-77.

Inasmuch as this economic skepticism on behalf of cellular operators shows certainty as to the

technical feasibility, and not skepticism, the evidence weighs in favor of a fmding of

obviousness. See RX-3519C (Bims WS) at Q1688; see also id. at Q1697-1700 (addressing

whether the prior art teaches away).

InterDigital has not shown any nexus between the claimed ‘970 inventions and the

evidence it proffers to show commercial success. InterDigital relies on the commercial success

of the iPhone 4 and iPhone 4S, as well as on general reports about the market penetration of

dual-mode devices, but none of this evidence has a sufficient nexus to the asserted claims of the

‘970 patent. See RX-3519C (Bims WS) at Q1701-1718. It is argued that the commercial

success of the iPhone 4 and iPhone 4S was driven by the invention claimed in the ‘970 patent

because many users wanted to take advantage of the additional speeds the iPhones provided

through HSUPA and EV-DO Rev. A. See CX-1314C (Gorsuch WS) at QZO3-209. lnterDigital

has not shown, however, that the mass adoption of the iPhones in question were due to their

HSUPA or EV-DO capabilities, instead of the many other features that drove iPhone success.

See RX-3519C (Bims WS) at Q1713-1714. Therefore, InterDigital has not demonstrated that the

commercial success of products incorporating a dual-mode capability is necessarily linked to the

‘970 inventions. '

As for InterDigital’s allegations that there was a long-felt need in the industry for the

solutions provided in the ‘970 patent, as well as a failure of others to achieve a dual-mode

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PUBLIC VERSION

device, the evidence shows that, at the time of the ‘97Oinvention, cellular operators were in fact

opposed to heterogeneous networks. CX-1526C (Stark RWS) at Q1010-1011; see RX-3519C

(Bims WS) at Q1719-1726. Moreover, InterDigital’s designated witness testified that he was not

aware of any specific failure of others in the industry with respect to the ‘970 claimed inventions.

RX-3406C (Gorsuch Dep.) at 188-191. Accordingly, InterDigital has not shown either a

long-felt need or failure by others.

The evidence also does not support InterDigital’s claim of unexpected results. In fact,

record evidence demonstrates that the claimed ‘97Oinvention Worksexactly as one of ordinary

skill in the art would have expected it to work in 1999. RX-3519C (Bims WS) at Q1739.

Therefore, InterDigital has not shown unexpected results.

The record evidence fails to show that any third party agreed to license InterDigital’s

patent portfolio based on the ‘97Opatent or any related patent. See RX-3519C (Bims WS) at

Q1741-1751. The fact that the ‘970 patent or a related patent was identified as part of licensing

discussions does not by itself demonstrate the required nexus between the ‘970 patent and the

license. Therefore, the evidence that the ‘97Opatent has been licensed does not weigh in favor

of a finding of nonobviousness.

Inte1'Digital’sfinal argtunent relating to secondary considerations of nonobviousness, that

of simultaneous development by others, is also not persuasive. Specifically, there are multiple

prior art references that disclose the concepts of the ‘97Opatent, and each reference appears to

have independently developed around the timeframe of InterDigital’s alleged conception of the

‘970 patent. See RX-3519C (Bims WS) at Q1752-1759.

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PUBLIC VERSION

VIII. Domestic Industry

A. General Principles of Law

A violation of section 337(a)(1)(B), (C), (D), or (E) can be found “only if an industry in

the United States, with respect to the articles protected by the patent, copyright, trademark, mask

work, or design concerned, exists or is in the process of being established.” 19 U.S.C.

§ l337(a)(2). Section 337(a) further provides:

(3) For purposes of paragraph (2), an industry in the United States shall be

considered to exist if there is in the United States, with respect to the

articles protected by the patent, copyright, trademark, mask work, or

design concemed—

(A) significant investment in plant and equipment;

(B) significant employment of labor or capital; or

(C) substantial investment in its exploitation, including engineering,

research and development, or licensing.

19u.s.c. § 1337(a)(3).

These statutory requirements consist of an economic prong (Whichrequires certain

activities)“ and a technical prong (which requires that these activities relate to the intellectual

property being protected). Certain Stringed Musical Instruments and Components Thereof, Inv.

No. 337-TA-586, Comm’n Op. at 13 (May 16, 2008) (“Stringed Musical Instruments”). The

83The Commission practice is usually to assess the facts relating to the economic prong at the

time that the complaint was filed. See Certain Coaxial Cable Connectors and Components

Thereof and Products Containing Same, Inv. No. 337-TA-560, Comm’n Op. at 39 n.l7 (Apr. 14,

2010) (“We note that only activities that occurred before the filing of a complaint with the

Commission are relevant to whether a domestic industry exists or is in the process of being

established under sections 337(a)(2)-(3).”) (citing Bally/Midway Mfg. Co. v. U.S. Int’l Trade

Comm ’n, 714 F.2d 1117, 1121 (Fed. Cir. 1983)). In some cases, however, the Commission will

consider later developments in the alleged industry, such as “when a significant and unusual

development occurred after the complaint has been filed.” See Certain VideoGame Systems and

Controllers, Inv. No. 337-TA-743, Comm’n Op., at 5-6 (Jan. 20, 2012) (“[I]n appropriate

situations based on the specific facts and circumstances of an investigation, the Commission may

consider activities and investments beyond the filing of the complaint”).

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PUBLIC VERSION

burden is on the complainant to show by a preponderance of the evidence that the domestic

industry requirement is satisfied. Certain Multimedia Display and Navigation Devices and

Systems, Components Thereof and Products Containing Same, Inv. No. 337-TA-694, Comm’n

Op. at 5 (July 22, 2011) (“Navigation Devices”).

“With respect to section 337(a)(3)(A) and (B), the technical prong is the requirement that

the investments in plant or equipment and employment in labor or capital are actually related to

‘articles protected by’ the intellectual property right which forms the basis of the complaint.”

Stringed Musical Instruments at 13-14. “The test for satisfying the ‘technical prong’ of the

industry requirement is essentially same as that for infringement, i.e., a comparison of domestic

products to the asserted claims.” Alloc, Inc. v. Int ’l Trade Comm ’n, 342 F.3d 1361, 1375 (Fed.

Cir. 2003). “With respect to section 337(a)(3)(C), the technical prong is the requirement that the

activities of engineering, research and development, and licensing are actually related to the

asserted intellectual property right.” Stringed Musical Instruments at 13.

With respect to the economic prong, and whether or not section 337(a)(3)(A) or (B) is

satisfied, the Commission has held that “whether a complainant has established that its

investment and/or employment activities are significant with respect to the articles protected by

the intellectual property right concerned is not evaluated according to any rigid mathematical

fonnula.” Certain Printing and Imaging Devices and Components Thereofl Inv. No.

337—TA-690,Comm’n Op. at 27 (Feb. 17, 2011) (“Printing and Imaging Devices”) (citing

Certain Male Prophylactic Devices, Inv. No. 337 TA-546, Comm’n Op. at 39 (Aug. 1, 2007)).

Rather, the Commission examines “the facts in each investigation, the article of commerce, and

the realities of the marketplace.” Id. “The determination takes into account the nature of the

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PUBLIC VERSION

investment andjor employment activities, ‘the industry in question, and the complainanfs

relative size?” Id. (citing Stringed Musical Instruments at 26).

With respect to section 337(a)(3)(C), whether an investment in domestic industry is

“substantial” is a fact-dependent inquiry for which the complainant bears the burden of proof.

Stringed Musical Instruments at 14. There is no minimum monetary expenditure that a

complainant must demonstrate to qualify as a domestic industry under the “substantial

investment” requirement of this section. Id. at 25. There is no need to define or quantify an

industry in absolute mathematical tenns. Id. at 26. Rather, “the requirement for showing the

existence of a domestic industry will depend on the industry in question, and the complainant’s

relative size.” Id. at 25-26.

When a complainant relies on licensing“ to demonstrate the existence of a domestic

industry pursuant to section 33'/(a)(3)(C), the Commission has explained the showing required of

the complainant as follows:

Complainants who seek to satisfy the domestic industry requirement by

their investments in patent licensing must establish that their asserted

investment activities satisfy three requirements of section 337(a)(3)(C).

First, the statute requires that the investment in licensing relate to “its

exploitation,” meaning an investment in the exploitation of the asserted

patent. l9 U.S.C. § l337(a)(3)(C) . . . . Second, the statute requires that

the investment relate to “licensing.” 19 U.S.C. § l337(a)(3)(C) . . . .

Third, any alleged investment must be domestic, i.e., it must occur in the

United States. 19 U.S.C. § l337(a)(2), (a)(3). Investments meeting these

requirements merit consideration in our evaluation of whether a

complainant has satisfied the domestic industry requirement. Only after

- determining the extent to which the complainant’s investments fall within

these statutory parameters can we evaluate whether complainant’s

qualifying investments are “substantial,” as required by the statute. l9

U.S.C. § l337(a)(3)(C). If a complainant’s activity is only partially

84A recent Federal Circuit opinion confirms that a finding of domestic industry under section

337(a)(3)(C) can be supported by licensing activities alone. InierDigitaZ Commc ’ns,LLC v. In1"l

Trade Comm ’n, 690 F.3d 1318, 1329-30 (Fed. Cir. 2012).

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PUBLIC VERSION

related to licensing the asserted patent in the United States, the

Commission examines the strength of the nexus between the activity and

licensing the asserted patent in the United States.

Navigation Devices at 7-8 (footnotes omitted).

In Navigation Devices, the Commission held that, “[w]here the complainant’s licensing

activities and investments involve a group of patents or a patent portfolio, the complainant must

present evidence that demonstrates the extent of the nexus between the asserted patent and the

complainant’s licensing activities and investments.” Navigation Devices at 9. The Commission

provided a non-exhaustive list of factors it may consider to establish the strength of the nexus,

including (1) the number of patents in the portfolio, (2) the relative value contributed by the

asserted patent to the portfolio, (3) the prominence of the asserted patent in licensing discussions,

negotiations and any resulting license agreement, and (4) the scope of technology covered by the

portfolio compared to the scope of the asserted patent. Id. at 10. “A showing that the asserted

patent is relatively important within the portfolio is not required to show a nexus between that

patent and the licensing activities . . . but may be one indication of the strength of the nexus.” Id.

at 11.

For the purposes of satisfying the domestic industry requirement a patentee can rely on

the activities of a licensee. See, e.g., Certain Electronic Devices, Including Handheld Wireless

Communications Devices, lnv. Nos. 337-TA-673, 337-TA-667, Order No. 49C at 4-5 (Oct. 15,

2009).

B. InterDigital’s Domestic Investments

1. 3G Licensing Investments

The record evidence shows that InterDigital licenses its patents on a portfolio-wide basis.

CX-1313C (Brezski WS) at Q43; CX-1311C (Putnam WS) at Ql2l; CX-1312C (Ditty WS) at

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PUBLIC VERSION

Q122. InterDigital does not track, in the ordinary course of business, expenditures related to

licensing specific patents or patent families. CX-1313C (Brezski WS) at Q23-24. InterDigital’s

Chief Financial Officer, Mr. Richard Brezski, sought to detennine InterDigital’s expenditures

related to licensing its 3G patents, which include licensing the patents asserted in this

investigation. To do so, Mr. Brezski first calculated the percentage of time that relevant

InterDigital employees devoted to InterDigital’s 3G licensing efforts. Id. at Q24.

Estimation of InterDigital’s 3G licensing investments was a two-step process. CX-1313C

(Brezski WS) at Q24. For the first step, more than twentyInterDigita1 personnel involved in

licensing were contacted and asked to estimate the percentage of time they spent on 3G licensing

from 2008 through the first half of 2009. Id. at Q25-29; CX-1287C (compilation of email

responses from InterDigital employees) at IDC-ITC-300001564-97. Those employees included:

[

] CX-1313C (Brezski WS) at Q26. Mr. Brezski consolidated

those estimates into one spreadsheet and verified the reasonableness of those estimates with

Larry Shay, who heads InterDigital’s licensing department. 1d. at Q28-30; CX-1284C

(spreadsheet showing licensing efforts costs for InterDigital employees 2008-1H 2009) at

IDC-ITC-300001554-55. Mr. Brezski’s compilation of those estimates, as well as Mr. Shay’s

verification of their reasonableness, were uncontested at the hearing. Brezski Tr. at 630

(forgoing cross-examination of Mr. Brezski).

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PUBLIC VERSION

For the second step, Mr. Brezski interviewed by telephone or in person 1nterDigital’s

persormel involved in licensing from the second half of 2009 through 2011. CX-1313C (Brezski

WS) at Q31-32. Mr. Brezski asked the employees for: (i) their job title and description, (ii) their

department or group, (iii) the name of their supervisor or manager, (iv) the names of employees

they supervise, (v) their telephone extension, (vi) when they started at their current position, (vii)

what prior positions (if any) they held, (viii) the identity of each major area in which they work,

(ix) a short description of their 3G licensing responsibilities, (x) what records they maintained

regarding their 3G licensing activities, and (xi) an estimated percentage of time spent on 3G

licensing activities fiom July 1, 2009 through December 31, 2010. Id at Q36. Mr. Brezski

created a spreadsheet to consolidate the responses to those interviews, and later updated it to

include employee estimations for time spent on 3G licensing from 2010 through 2011. Id. at

Q33, Q36; CX-1286C (licensing efforts notes for InterDigital employees from second half of

2009-2011) at IDC-ITC-3000001559-63.

For an estimate of time spent on 3G licensing during the time period from the second half

of 2009 through 2011, Mr. Brezski interviewed employees

] CX-1313C (Brezski WS) at Q35.

The employees were asked to estimate their time spent on 3G licensing activities, which

included “activities designed to exploit InterDigital’s 3G patents through licensing.” CX-1313C

(Brezski WS) at Q37. For example, InterDigital employees included in their estimates activities

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PUBLIC VERSION

that involved direct licensing negotiations, preparing claim charts to send to potential licensees

for their consideration during the negotiation process, and compliance with license agreements.

Id. Activities expressly excluded from any estimate were activities relating to litigation, patent

prosecution, or due diligence related to patent acquisition. Id. at Q38. In a few instances where

an employee was on extended leave or had left the company, Mr. Brezski interviewed the

employee’s direct manager. Id. at Q40. As with the estimates for 2008 through the first half of

2009, Mr. Brezski verified the reasonableness and accuracy of these later estimates with the head

of the licensing department, Mr. Larry Shay. Id. at Q41. As with the estimates for 2008 through

the first half of 2009, Mr. Brezski’s compilation of the 2009-2011 estimates, as well as Mr.

Shay’s verification of their reasonableness, were uncontested at the hearing. Brezski Tr. 630

(forgoing cross-examination of Mr. Brezski).

In total, the estimates of percentages of their total time each InterDigita1employee spent

on 3G licensing from 2008-2011 is consolidated below:

2008 2009 2010 2011

[ ' _

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PUBLIC VERSION

2008 2009 2010 2011

- 1

Compls. Br. at 434-35 (citing CX-1313C (Brezski WS) at Q42; CX-1284C (licensing efforts

costs for InterDigital employees 2008 - 1H 2009) at IDC-ITC-300001554-55; CX-1286C

(licensing effort notes for InterDigital employees from second half of 2009 through 2011) at

IDC-ITC-300001559-63).

Inasmuch as the table above includes fewer people than those Mr. Brezski interviewed,

InterDigita1explains that this reflects the determination that some interviewees (those not listed

on the table) did not support InterDigita1’s 3G licensing activities, and also reflects and the

change in responsibilities over time for some employees. CX-1313C (Brezski WS) at Q39.

InterDigita1 therefore contends that “each of the InterDigital employees listed in the table above

supported InterDigita1’s licensing activities at some point from 2008 through 2011.” Compls.

Br. at 435 (citing CX-1312C (Ditty WS) at Q11-119).

After Mr. Brezski collected each employee’s estimation of time spent on 3G licensing

from 2008-2011, Mr. Brezski calculated InterDigital’s compensation-related investments in 3G

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licensing based on those estimates. See CX-1313C (Brezski WS) at Q44. To do so, Mr. Brezski

collected the W-2 tax forms for each of those employees from 2008 through 2011 to detennine

the precise compensation paid to them by InterDigital during those time periods. Id. at Q45-56;

CX-1388C; CX-1390C; CX-1282C; CX-1389C (compilation of lnterDigital W-2 tax forms from

2008-2011, respectively). Specifically, those W-2 tax forms identify the total “Medicare wages

and tips” compensation paid by InterDigital to each respective employee that year. CX-1313.1C

(Brezski WS errata) at Q47; CX-1313C (Brezski WS) at Q47.

Inasmuch as not all employees devoted 100% of their time to 3G licensing activities, Mr.

Brezski pro-rated each employee’s total compensation by the percentage of time spent on 3G

licensing for each calendar year. See CX-1313C (Brezski WS) at Q58. Mr. Brezski was thus

able to estimate InterDigital’s compensation-related investments in 3G licensing based on the

percentage of time that the relevant employees devoted to InterDigital’s licensing efforts:

Total 2008-2011 2008 2009 2010 2011 Investment

[ _

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2008 2009 2010 2011 Total ZOOHOI1 Investment

1

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Compls. Br. at 436-38 (citing CX-1313C (Brezski WS) at Q58).

lnterDigital provides a “conservative” estimate that it spent approximately [ ]

on compensation-related investments in its 3G licensing activities from 2008 through 2011.

Compls. Br. at 438 (citing CX-1313C (Brezski WS) at Q58). InterDigital characterizes this

estimate as conservative “because InterDigital also spent approximately [ ]

over that time period on associated payroll taxes and other benefits that are not captured by the

[ ] figure representing InterDigital’s investments in 3G licensing.” Compls. Br. at

438 (citing CX-1313C (Brezski WS) at Q60-61).

During the time period 2008 through 2011, InterDigital also invested approximately [

] in pro-rated facilities-related expenses allocable to InterDigital’s 3G licensing activities.

CX-1313C (Brezski WS) at Q62-74; see also CX-1285C (compilation of facilities expenses) at

IDC-ITC-300001558. Those facilities-related expenses are for 3G licensing expenses related to

only InterDigital’s King of Prussia, Pennsylvania facility, and no other facility. CX-1313C

(Brezski WS) at Q75-77.

In srnmnary, InterDigital estimates that it invested approximately [ ] in its

activities related to 3G licensing. CX-1313C (Brezski WS) Q58-60, Q71-74. As mentioned

previously, Mr. Brezski’s analysis, on which this estimate is based, was not cross-examined at

the hearing. See Brezski Tr. 630 (forgoing cross-examination of Mr. Brezski).

2. Alleged Investments in the Asserted Patents

As discussed above, InterDigital alleges that its estimated investment of [ ]

“represents InterDigital’s compensation-related expenses which can be directly tied to 3G

licensing activities [ ] plus its facility-related expenses attributable to 3G licensing

(about [ ].” See CX-1311C (Putnam WS) at Q59. From that calculation,

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InterDigital’s expert Dr. Jonathan D. Putnam determined InterDigital’s investments in the

exploitation of the asserted patents. Id. at Q60.

In particular, Dr. Putnam examined more than 10,000 documents produced by

InterDigital representing its licensing negotiations with more than 100 different entities.

CX-131lC (Putnam WS) at Q64; CX-1253C (compilation of InterDigital licensing negotiations);

CX-0809C (summary of InterDigital patents identified in negotiations). Dr. Putnam found that

about 70% of those documents did not reference any patents at all, but generally discussed

economic terms such as the portfolio royalty rate, the negotiation of a non-disclosure agreement,

or other activities that were not patent-specific. CX-1311C (Putnam WS) at Q64. In order to

determine what share of InterDigital’s licensing negotiations were devoted to the asserted patents

or related family members, Dr. Putnam “conservatively” estimated that 50% of InterDigital’s

documents contained no reference to any patent at all. Id. at Q64-65.

For the other InterDigital negotiation documents in which at least one patent was

mentioned, Dr. Putnam tabulated whether those negotiations included reference to any of the

asserted patents or a related family member:

The overall objective was to detennine conservatively which patents

appeared most frequently and prominently in negotiations with actual and

prospective licensees.

One difficulty that arises is defining the appropriate unit of observation for

this analysis. On the one hand, it may be useful to measure the quantity of

times each particular patent is discussed in a given negotiation. On the

other hand, that approach gives rise to further difficulties, such as avoiding

double-counting (e.g. if the same email chain referencing a particular

patent is produced multiple times). For this reason, my analysis evaluates

whether or not a particular patent was presented in a given negotiation.

This allowed me to generate a data set containing the identity and count of

unique patents that were identified in any and all InterDigital negotiations

(given the set of documents I was provided). To make this exercise

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tractable and to avoid another potential area of double-counting, I limit the

analysis to U.S. patents.

CX-1311C (Putnam WS) at Q62-63, 101; Putnam Tr. 680-681 (Dr. Putnam “focus[ed] on U.S.

patent numbers so that we wouldn’t be double-counting an invention by also counting a foreign

equivalent patent”).

With respect to his decision to count related family members along with the asserted

patents, Dr. Putnam testified:

Several of the patents asserted in this Investigation represent later

members of a patent family, which InterDigital invested in to capture

additional value not fully realized in the initial application. By evaluating

InterDigital’s licensing practice solely as it relates to the asserted patents

and not to their related family members, one risks improperly ignoring

lnterDigital’s investments in all the members of the same family which, in

one way or another, all built on the initial application, in which

lnterDigital also invested.

CX-1311C (Putnam WS) at Q116. Inasmuch as InterDigital does not license its patents on a

patent-by-patent basis, but rather on a portfolio basis including patent families as a whole, Dr.

Putnam opined that, by featuring a related family member in a negotiation, InterDigital

necessarily features all members of the same family (including the asserted patents). Id at

Ql20-123.

After analyzing the more than 10,000 licensing negotiation documents, Dr. Putnam found

that, for those documents that mentioned at least one patent at all, the median rate at which the

asserted patents or related patents were mentioned was about 1/3. CX-1311C (Putnam WS) at

Q63. With this information, Dr. Putnam calculated the share of InterDigital’s [ ] in

compensation-related investment in 3G licensing that was attributable to the asserted patents:

In sum, I compute X = aX + p(1-a)X, where X I total compensationrelated expenditures devoted to 3G licensing, which is [ ] a

= the share of resources necessary to negotiate a patent license,

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14. at Q66.

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independent of any individual patent, and p = the share of patent-specific

resources that could be plausibly attributed to the asserted patents.

To compute a, I evaluated documents devoted to negotiations with

InterDigital licensees and prospective licensees. In doing so, I recognized

that a large majority of communication and documentation are devoted to

activities other than technical discussions or individual patent analyses.

As a practical matter, this is unsurprising — many patent license

negotiations focus on economic terms or other issues that are independent

of the teclmical merits in any given patent.

To compute p, I relied on my review and analysis of the negotiation

related documents as shown in CDX-OOO7C.0OO3(CX-0809C, summary

of InterDigital patents identified in negotiations). In particular, I

computed the ratio of asserted and related patents to the total number of

patents that were disclosed to each InterDigita1 licensee or prospective

licensee. As shown in CDX-O0O7C.0OO3(CX-0809C, summary of

InterDigital patents identified in negotiations), the median for this ratio

was [ ] while the weighted average across all licenses or prospective

licenses was [ ] To be conservative, I adopted the lower of those

values, [ ] for p.

Applying those findings, I calculated that x, the amount of InterDigital’s

3G licensing expenditures attributable to the asserted patents, equals

approximately [ ]

Dr. Putnam elaborated on his calculations as follows:

I began with X, the [ ] in salaries attributable to 3G licensing

activities from 2008-2011. Half (that is, a) of that, or [ ] is

necessary to negotiating a license but is not specific to any individual

patent. That leaves the other half, or [ ], which can be allocated

based on a detennination of references to specific patents. I calculated

that [ ] (that is, p) of that half should be allocated to the asserted

patents, based on the frequency with which the asserted or related patents

were mentioned in negotiations. [ ] of the [ ] in patent-specific

licensing expenditures is [ ], which is allocated specifically to

the asserted patents. That gives a total of [

].

CX-131 lC (Putnam WS) at Q67.

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According to Dr. Putnam’s analysis, approximately half of InterDigital’s 3G licensing

investments, or approximately [ ], are fixed costs, i.e., the fixed costs of getting into

the business of negotiating any patent in InterDigital’s 3G portfolio. Putnam Tr. 659. As Dr.

Putnam explained:

[l]t’s the entry fee that is necessary to conduct negotiations for InterDigital

because when you produce a license, you don’t necessarily negotiate over

individual patents all the time. You also need to negotiate over other terms

that are not patent-specific. And that’s true regardless of the contribution

of an individual patent.

Putnam Tr. 668.

Dr. Putnam explained that there are certain fixed costs characteristic of any production

activity, including the production of licenses. Putnam Tr. 659 (“[T]his is a completely generic

statement of the difference between fixed and variable costs, which would be characteristic of

the analysis of any production activity, including the production of licenses”). Dr. Putnam

further testified that, “in the same way that when you get into a cab, there’s an entry fee and that

applies regardless of how far I drive the cab, so, yes, there’s a fixed cost of getting into the

business, a fixed cost of getting into the cab, and it applies regardless of the patents that are

actually being licensed.” Putnam Tr. 669.

Dr. Putnam concluded that the remaining half of lnterDigital’s 3G licensing investments,

or approximately [ ], are variable costs, or costs that vary based on which patents are

driving certain licensing negotiations. Dr. Putnam calculated that approximately “[ ] of that

half [or approximately [ ]] should be allocated to the asserted patents, based on the

frequency with which the asserted or related patents were mentioned in negotiations.”

CX-131 lC (Putnam WS) at Q67. InterDigital’s approximately [ ] in fixed licensing

costs, plus approximately [ ] in variable costs relating to “the frequency with which the

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asserted or related patents were mentioned in negotiations,” results in a total of approximately

[ ]. From there, Dr. Putnam added the [ ] in facilities expenses necessary for

the negotiation of any license and determined that InterDigital’s domestic industry investments

allocated to the exploitation of the Asserted Patents is approximately [ ]. Id at

Q68-69.

C. Analysis and Conclusion on the Domestic Industry

1. InterDigital’s Reliance on the Asserted Patent Families

As an initial matter, Respondents’ criticize InterDigital’s reliance on investment figures

for “all seven asserted patents and their purported families combined,” rather than on investment

figures for the seven asserted patents individually. See Resps. Br. at 480-82. It is argued that

InterDigital has not “provided [an] evidentiary basis from which to identify or estimate what

portion of its alleged domestic licensing investments ‘might be allocated’ to each of the asserted

patents,” but has instead “attempted to create a single ‘domestic industry’ comprised of all seven

asserted patents and their extended families of unasserted patents.” See id at 480.

Previous investigations before the Commission suggest that considering the asserted

patents and their related family members is appropriate in the context of evaluating the domestic

industry. For example, in an earlier investigation, InterDigital previously moved for summary

determination that its licensing activities satisfied the domestic industry under 19 U.S.C.

§ l337(a)(3)(C). Certain 3G Wideband Code Division Multiple Access (WCDA/L4) Handsets and

Components Thereof, Inv. No. 337-TA-601, Order No. 20 at 1 (June 24, 2008) (unreviewed)

(produced to Respondents at ITC-IDC-300014731). In granting the motion, Judge Luckem

reviewed InterDigital’s licensing practices and recognized that consideration of InterDigital’s

investments in the asserted patents, as well as in related patents, accurately reflected the realities

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of the licensing marketplace. In particular, when considering the nexus between InterDigital’s

investments in licensing and the asserted patents, Judge Luckern held:

As part of its overall licensing efforts, InterDigital negotiates with

potential licensees, sometimes in long-running and complex discussions.

During those negotiations, InterDigital identifies certain of its more

significant patents or patent families. Said discussions have included one

or more of the five specific patents being asserted in this investigation or

the patent families to which they belong.”

Id at 9.

During InterDigital’s licensing negotiations, it discussed at least one or

more members of the power ramp-up family.

Id. at 10.

In some licensing presentations, InterDigita1 indicated to the prospective

licensees that one or more of the patents in issue or related patents were

essential to practicing certain 3G standards.

Id. at l3.

In addition, as set forth supra, InterDigital in licensing negotiations has

highlighted each of the patents in issue as well as the patent families to

which the asserted patents belong . . . .

Id. at 17.“

The Commission later recognized Judge Luckem’s analysis as an example of previous

instances in which an ALJ has “addressed the issue of whether a nexus between the activities and

the asserted patents exists.” Navigation Devices, Comm’n. Op. at 8 n.5 (Aug.‘8, 2011) (citing

3G Mobile Handsets, Order No. 20).

85In Inv. No. 337-TA-613, to which respondent Nokia was a party, Judge Luckern also granted

sumrnary determination that l.nterDigital satisfied the domestic industry requirement under l9

U.S.C. § l337(a)(3)(C). Certain 3G Mobile Handsets and Components Thereofi Inv. No.

337-TA-613, Order No. 42 (March 10, 2008) (unreviewed) (produced to respondents at

ITC-IDC-300014711). Judge Luckem’s determination was based on a near-identical analysis of

lnterDigital’s licensing program, including the importance of considering the asserted patents

and their related family members. Id. at 9, 10, 13, 16.

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Turning now to the evidence adduced by InterDigital in this investigation, Dr. Putnam

testified that InterDigital does not license its patents on a patent-by-patent basis, but rather on a

portfolio basis including patent families as a whole. CX-1311C (Putnam WS) at Ql2l. Mr.

Ditty, a member of InterDigital’s licensing team, further testified:

We [InterDigital] do not discuss or negotiate about all of the portfolio at

once. Rather, we identify particular patents and families of patents that we

think will be of particular interest to the licensee. These families of patents

are the ones we believe are among the most valuable in our portfolio, and

the negotiation with the potential licensee tends to be centered on those

families. These families really drive the negotiations and the remainder of

the portfolio is licensed as well.

CX-1312C (Ditty WS) at Ql24.

The documentary evidence also demonstrates that InterDigital generally licenses its

patents by family. For example, in an [ ] licensing discussion between InterDigital

and [ ] InterDigital identified particular patents for discussion, as well as their patent

families. CX-1253C (compilation of InterDigital licensing negotiation documents) at

IDC-ITC-016555393 (identifying the ‘O13and ‘406 asserted patents, as well as their families).

Similarly, in [ ] licensing discussions with [ ], InterDigital

again identified particular patents, as well as their patent families. CX-l253C (compilation of

InterDigital licensing negotiation documents) at IDC-ITC-016567310 (identifying the ‘O13and

‘406 asserted patents, as well as their families).

On [ ], InterDigital provided to [ ] a list of

“CDMA2000 Exemplary Families.” Id. at IDC-ITC-01657521 l. Based on the evidence, Dr.

Putnam further testified that “an investment in exploiting a patent family member is necessarily

an investment in exploiting the asserted patent itself.” CX-131lC (Putnam WS) at Q12l.

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Consequently, in considering the nexus between InterDigital’s 3G licensing investments

and the asserted patents in the circumstances of this investigation, it is determined that the

appropriate Lmitof observation is InterDigital’s alleged exploitation of the asserted patents, as

well as those patents related to the asserted patents.

2. The Nexus Between InterDigital’s 3G Licensing Investments and the

Asserted Patents

The following analysis examines the record evidence as it relates to the non-exhaustive

factors set forth in Navigation Devices to detennine Whetherthere is a nexus between

InterDigital‘s licensing investments and the asserted patents.

a. The Number of Patents in InterDigital’s Portfolio

The record evidence shows that, as of February 2011, hrterDigital‘s patent portfolio

comprised about 1,500 U.S. patents among a total portfolio of approximately 19,500 U.S. and

foreign-issued patents and applications. CX-131 1C (Putnam WS) at Q87; see also JX-0049

(InterDigital’s 2011 form 10-K filed Withthe SEC). Only seven of InterDigital’s portfolio of

patents are asserted in this investigation.

b. The Relative Value of the Asserted Patents to lnterDigital’s

Portfolio

The Commission has explained that the asserted patents may be shown to be particularly

important or valuable within the portfolio where there is evidence that: (1) they were discussed

during licensing negotiations, (2) they have been successfully litigated before by the

complainant, (3) they are related to a technology industry standard, (4) they are base patents or

pioneering patents, (5) they are infringed or practiced in the United States, or (6) the market

recognizes the patents’ value in some other way. Certain Integrated Circuits, Chipsets, and

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Products Containing Same Including Televisions, Inv. No. 337-TA-786, C0mm’n Op. at 164

(Sept. 19, 2012) (citing Navigation Devices at 10-11).

i. Whether the Asserted Patents Were Prominently

Discussed During the Licensing Negotiation Process

To determine whether the asserted patents or related family members were discussed in

the licensing negotiation process, Dr. Putnam sought documents demonstrating Inte1'Digital’s

licensing communications. CX-1311C (Putnam WS) at Q100. He received more than 10,000

documents comprising “claim charts, financial spreadsheets, email communications, and related

items that address the issues raised by one party or the other in the course of reaching, or

attempting to reach, agreement as to a license.” Id. In doing so, Dr. Putnam explained that “his

overall objective was to determine conservatively which patents appeared most frequently and

prominently in negotiations with actual and prospective licensees.”86 Id. at Q101.

Dr. Putnam then sought to determine which patents were appropriately considered

“related family members” to the asserted patents. CX-1311C (Putnam WS) at Q129. To do so,

Dr. Putnam relied on the publicly available, independent Intemational Patent Document Center

86In doing so, Dr. Putnam cautioned:

One difficulty that arises is defining the appropriate unit of observation for

this analysis. On the one hand, it may be useful to measure the quantity of

times each particular patent is discussed in a given negotiation. On the

other hand, that approach gives rise to further difficulties, such as avoiding

double-counting (e.g. if the same email chain referencing a particular

patent is produced multiple times). For this reason, my analysis evaluates

whether or not a particular patent was presented in a given negotiation.

This allowed me to generate a data set containing the identity and count of

unique patents that were identified in any and all InterDigital negotiations

(given the set of documents I was provided). To make this exercise

tractable and to avoid another potential area of double-counting, I limit the

analysis to U.S. patents.

CX-1311C (Putnam WS) at Q100 (emphasis original).

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(“INPADOC”) database currently maintained by the European Patent Office. Id. at Ql29-131.

Dr. Putnam specifically relied on INPADOC’s database, rather than on other sources, “[b]ecause

it is the most comprehensive worldwide source of patent family infonnation, and because as an

unrelated party INPADOC offers an objective, reproducible method of defining InterDigital’s

patent families.” Id. at Q13l. INPADOC’s searchable database offers only one definition of

“patent family,” and Dr. Putnam relied on its output of patent families based on the input of the

seven asserted U.S. patents. Id. at Ql33. The U.S. patents that INPADOC recognized as

“related family members” to the seven asserted patents were compiled by Dr. Putnam in

demonstrative exhibit CDX-0007C.O004. Id. at Q93; see also CDX-0007C.OO04(demonstrative

showing InterDigita1’s asserted and related patents).

With his protocols in place, Dr. Putnam then undertook his analysis of InterDigital’s

more than 10,000 licensing negotiation documents. Based on this analysis, Dr. Putnam

concluded that the asserted patents or related family members were indeed “discussed during the

licensing negotiation process.” See CX-1311C (Putnam WS) at Ql02; see also CX-0809C

(summary exhibit providing results of Dr. Putnam’s analysis). Dr. Putnam testified that, based

on the number of times an asserted patent or related family member was identified in a claim

chart during a licensing negotiation, the asserted patents were discussed “prominently” in

licensing negotiations. CX-1311C (Putnam WS) at Ql03, Ql07-108.

With respect to the ‘406 Power-Control patent, InterDigital presented a PowerPoint

presentation to [ ] on [ ] that addressed only that patent. CX-1253C (compilation

of InterDigital’s licensing negotiation documents) at IDC-ITC-016556865-79. In

correspondence with [ ] dated [ ], InterDigital provided a detailed

response to [ ] questions specifically about the ‘406 patent. Id. at lDC-ITC-0l6536088­

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94. Similarly, in [ ] correspondence with [ ], InterDigital responded

to [ ] questions directed specifically to the ‘406 patent. Id. at

IDC-lTC-016521175-78. During ongoing discussions with [ ] lnterDigital again

addressed [ ] specific questions regarding the ‘406 patent on [ ]. Id. at

IDC-ITC-016555482-48 at 527-48. The ‘406 patent has also been featured in licensing

negotiations with the Respondents. CX-1311C (Putnam WS) at Q14O-141(citing CX-0859C;

CX-0851C; CX-0862C; CX-0860C (examples of claim charts for separate claims of the ‘406

patent provided to [ ]); CX-0856C; CX-0861C; CX-0853C; CX-0857C; CX-0852C;

CX-0863C; CX-0855C (examples of claim charts for separate claims of the ‘406 patent provided

to [ ]). The evidence further shows that the ‘406 patent is included in claim charts or lists

of exemplary patents provided to many prospective licensees. See, e.g., CX-1253C (compilation

of lnterDigital’s licensing negotiation documents) at IDC-ITC-016570234 (‘406 patent claim

chart provided to [ ] on [ ]), IDC-ITC-016574903 (‘406 patent claim chart

provided to [ ]), IDC-ITC-016564511 (‘406

patent claim chart provided to [ ]), IDC-ITC-016540912 (‘406

patent claim chart provided to [ _ ]), IDC-ITCOOl65293 74 (‘406 patent

claim chart provided to [ ]), IDC-ITC-016575211 (‘406 patent

included in list of exemplary families provided to [ ]).

As for the ‘332 Power-Control patent, the record evidence shows that the ‘332 patent was

identified during licensing negotiations. For example, on [ ], InterDigital provided

a PowerPoint presentation to [ ] devoted to discussion of the ‘332 patent.

CX-1253C (compliation of lnterDigital licensing negotiation documents) at

IDC-ITC-016534598-607. The ‘332 patent is also frequently included in claim charts or lists of

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exemplary patents provided to prospective licensees. See, e.g., CX-1253C (compilation of

InterDigital’s licensing negotiation documents) at IDC-ITC-016529085 (‘332 patent claim chart

provided to [ ]), IDC-ITC-016528719 (‘332 patent claim chart

provided to [ ]), IDC-ITC-016581868 (‘332 patent claim

chart provided to [ ]), IDC-ITC-016571608 (‘332 patent

claim chart provided to [ ]), IDC-ITC-016564576 (‘332 patent

claim chart provided to [ ]), IDC-ITC-016577127 (‘332 patent

included on “InterDigital Exemplary 3G Patents” list provided to [

].

The record evidence also shows that the ‘830 Power Ramp-Up patent was featured during

licensing negotiations. For example, on [ ], InterDigital provided a PowerPoint

presentation to [ ] devoted to discussion of the ‘830 patent. The ‘S30 patent is

also included in claim charts or lists of exemplary patents provided to prospective licensees. See,

e.g., CX-1253C (compilation of InterDigital’s licensing negotiation documents) at

IDC-ITC-017196254 (‘830 patent claim chart provided to [ ]),

IDC-ITC-016571618 (‘830 patent claim chart provided to [

), IDC-ITC-016564586 (‘830 patent claim chart provided to [

]), IDC-ITC-016531799 (‘830 patent claim chart provided to [

]), IDC-ITC-016530736 (‘830 patent claim chart provided to [

], IDC-ITC-016577401 (‘830 patent included on “InterDigita1 Exemplary Patents - 3G”

list provided to [ ]).

The record evidence demonstrates that the ‘636 Power Ramp-Up patent was identified

during licensing negotiations. For example, on [ ], InterDigital provided a

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PowerPoint presentation to [ ] devoted to discussion of the ‘636 patent. CX-1253C

(compilation of InterDigital’s licensing negotiation documents) at IDC-ITC-017196272-87. On

[ ], in follow-up discussions related to the ‘636 patent, lnterDigital wrote to [ ]

to answer specific questions regarding the ‘636 patent. Id. at IDC-ITC-016519054. The ‘636

patent is also included in claim charts provided to many prospective licensees. See, e.g.,

CX-1253C (compilation of InterDigital’s licensing negotiation documents) at

IDC-ITC-017196315 (‘636 patent claim chart provided to [ ]),

IDC-ITC-016540028 (‘636 patent claim chart provided to [ ]).

The record evidence shows that the ‘O13UE ID patent was also identified during

licensing negotiations. For example, on [ ], InterDigita1 provided a PowerPoint

presentation to [ ] devoted to discussion of the ‘O13patent. CX-1253C (compilation of

InterDigital’s licensing negotiation documents) at IDC-ITC-016556880-95. Similarly, the ‘O13

patent was one of only a handful of patents discussed at length during [ ] licensing

discussions with [ ]. See CX-1253C

(compilation of InterDigital’s licensing negotiation documents) at IDC-ITC-016567310,

IDC-ITC-016555392-481 at 441-56. The ‘O13patent is also included in claim charts or lists of

exemplary patents provided to prospective licensees. See, e.g., CX-1253C (compilation of

InterDigital’s licensing negotiation documents) at IDC-ITC-016574934 (‘O13patent claim chart

provided to [ ]), IDC-ITC-016570243 (‘O13

patent claim chart provided to [ ]), IDC-ITC-016571574

(‘O13 patent claim chart provided to [ ]), IDC-ITC-016564523 (‘O13

patent claim chart provided to [ ]), IDC-ITC-016591273 (‘O13patent

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included on “InterDigital Exemplary Patents Across Technologies” list provided to [

DThe record evidence demonstrates that the ‘127 UE ID patent was also featured during

licensing negotiations. For example, the ‘127 patent is included in claim charts or lists of

exemplary patents provided to many prospective licensees. See, e.g., CX-1253C (compilation of

InterDigital’s licensing negotiation documents) at IDC-ITC-017196242 (‘ 127 patent claim chart

provided to [ ]), IDC-ITC-016559066 (‘127 patent claim chart provided to

[ ]), IDC-ITC-016529553 (‘127 patent claim chart provided to

l l)­

The evidence adduced at the hearing also shows that the ‘970 dual-mode subscriber unit

patent was featured during licensing negotiations. For example, on [ ], InterDigital

provided a PowerPoint presentation to [ ] devoted to discussion of the ‘970 patent.

CX-1253C (compilation of InterDigital’s licensing negotiation documents) at

IDC-ITC-016570005-30. In follow-up discussions with [ ], InterDigital

provided a claim chart mapping claims of the ‘97Opatent to the [ ]. See CX-1253C

(compilation of InterDigita1’slicensing negotiation documents) at IDC-ITC-016572938. On

[ ], InterDigital provided to [ ] a claim chart mapping claims of the

‘970 patent to [ ] wireless device. CX-1253C (compilation of InterDigital’s licensing

negotiation documents) at IDC-ITC-016565761. In follow-up discussions with [

], InterDigital provided to [ ] a PowerPoint presentation devoted to discussion of the

‘970 patent. See CX-1253C (compilation of [nterDigital’s licensing negotiation documents) at

IDC-ITC-016555587-611. 1nterDigital has also provided other potential licensees claim charts

and lists of exemplary patents, including the ‘970 patent, during licensing discussions. See, e.g.,

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CX-1253C (compilation of InterDigita1’slicensing negotiation documents) at

IDC-ITC-0016534039 (‘970 patent claim chart provided to [ ]),

[DC-ITC-016523041 (‘970 patent included on “InterDigital Exemplary Patents —CDMA2000”

list provided to [ ]), IDC-ITC-016567835-39 (‘97Opatent included on

“InterDigital Exemplary Patents —3G” list provided to [ ]).

Moreover, Dr. Putnam testified that for 12 out of l5 executed licenses, InterDigital

disclosed the asserted patents and/or related family members to the eventual licensee.

CX-1311C (Putnam WS) at QI33; see also CDX-OO07C.0005(count of licensees that were

shown patents during negotiations). For the 145 prospective licensees approached by

InterDigital that have yet to execute a license, 71 of them were shown an asserted patent or

related family member during negotiations. CX-13 l lC (Putnam WS) at QI33; see also

CDX-OOO7C.0006(count of prospective licensees that were shown patents during negotiations).

Respondents contend that Dr. Putnam’s use of INPADOC’s database resulted in an

“overbroad” definition of patent families, thus allegedly artificially inflating InterDigital’s

investments ir1exploitation of the asserted patents. Resps. Br. at 485-90. Respondents have

identified two patents, U.S. Patent No. 6,808,825 (“the ‘825 patent") (RX-2869) and U.S. Patent

No. 6,414,951 (“the ‘95l patent”) (RX-4030) as allegedly outside the proper scope of patents

related to the asserted patents. See Resps. Br. at 489. Despite the fact that INPADOC considers

these patents to be related to the asserted patents, the record evidence shows that the ‘825 patent

was referenced only twice among the more than 10,000 InterDigital licensing negotiation

documents analyzed by Dr. Putnam. See CX-l253C (Compilation of InterDigital licensing

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negotiation documents) at IDC-ITC-016551729-44 at 732 and IDC-ITC-016575204-16 at 207.87

The ‘951 patent was not mentioned at all in any of the more than 10,000 licensing documents

analyzed by Dr. Putnam. Thus, as Dr. Putna1n’s analysis relied on median references across all

licensing negotiations, the exclusion of those patents from Dr. Putnarn’s analysis would have had

no effect on Dr. Putnam’s ultimate conclusions.

Having considered the evidence adduced at the hearing, and the arguments of the parties,

it is determined that the asserted patents were discussed during licensing negotiations, and that

they were discussed “prominently.” Therefore, this factor weighs in favor of finding that the

asserted patents are important to InterDigital’s patent portfolio.

ii. Whether the Asserted Patents Have Been Successfully

Litigated Before by the Complainant

InterDigital has twice been recognized as satisfying the domestic industry requirement

based on its substantial investments in the exploitation of patents through licensing. See Certain

3G Wideband Code Divisio Multiple Access (WCDMA)Handsets and Components Thereojf Inv.

No. 337-TA-601 (“the 601 Investigation”), Order No. 20, Initial Determination (June 24, 2008)

(unreviewed); Certain 3G Mobile Handsets and Components Thereofl ITC Inv. No. 337-613

(“the 613 Investigation”), Order No. 42, Initial Detennination (March 10, 2009) (unreviewed).

Moreover, the Federal Circuit recently confinned that InterDigital represents “a classic case for

the application of [19 U.S.C. § 1337(a)(3)] subparagraph (C).” InterDigital Commc ’ns,LLC v.

Int ’lTrade Comm ’n,No. 2010-1093, at 5 (Fed. Cir. Jan. 10,2013).

87One of those documents also refers to the asserted ‘406 patent, and was therefore properly

included in Dr. Putnam’s analysis. See CX-1253C (Compilation of lnterDigital licensing

negotiation documents) at IDC-ITC-016575204-16 at 21 l.

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The 601 Investigation involved five patents related to the six of the seven patents asserted

in the present Investigation. See CX-1311C (Putnam WS) at Q143. On November 24, 2008,

InterDigital and Samsung (a respondent in the 601 Investigation) agreed to a settlement which

included a six-year license covering, among other things, 3G devices. See id. Under the

agreement, Samsung agreed to pay $400 million to InterDigital. See id. That $400 million

license to InterDigital’s patents was signed the same day Judge Lucl<ern’sFinal Initial

Determination was due in the 601 Investigation. See id. InterDigital therefore argues that the

601 Investigation was a successful litigation by InterDigital of patents related to those asserted in

this investigation. Compls. Br. at 469 (citing id. at Q144).

The 613 Investigation involved four patents related to patents asserted in the present

investigation. See CX-1311C (Putnam WS) at Q143. Judge Luckem found that these patents

were “not invalid.” See id. The Commission determined that Nolda’s products did not infringe

the asserted patents, but the Federal Circuit vacated that determination and remanded for

reconsideration applying InterDigital’s claim constructions. See id. On January 10, 2013, the

Federal Circuit denied Nokia’s petition for rehearing and rehearing en banc of that opinion.

Although the 613 Investigation has not yet concluded, InterDigital argues that the ALJ‘s initial

determination that the related patents are not invalid, coupled Withthe Federal Circuit’s final

detennination of a claim construction favoring InterDigital’s position, indicates that

InterDigital’s related patents were successfully litigated in the 613 Investigation. Compls. Br. at

469 (citing id. at Q144).

Inasmuch as none of the patents asserted in this investigation was asserted in the 601 or

613 Investigation, this particular factor is neutral as to whether the asserted patents are important

to InterDigital’s patent portfolio.

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iii. Whether the Asserted Patents Relate to a Technology

Industry Standard

Each of the asserted patents relates to a technology industry standard. In particular, they

relate to the WCDMA and CDMA2000 standards promulgated by ETSI and by the

Telecommunications Industry Association (TIA), respectively. See CX-1311C (Putnam) at

Q146. InterDigital states that the ‘970 patent, or other members of the same patent family, relate

to the GAN/GERAN standard. See id. at Q146-147 (citing JX-0046 (ETSI disclosure document,

IDC-ITC-000069495 - IDC-ITC-000069539); CX-0848C (ETSI disclosure document,

IDC-ITC-010628203 - IDC-ITC-010628203); JX-0047 (ETSI disclosure document,

IDC-ITC-010628204 - IDC-ITC-010628204); CX-0850C (ETSI disclosure document,

IDC-ITC-Ol4215775- IDC-ITC-014215788); CX-0864C (ETSI disclosure document,

IDC-ITC-017242842 - IDC-ITC-017242886)).

Accordingly, this factor weighs in favor of a determination that the asserted patents are

important to InterDigital’s patent portfolio.

iv. Whether the Asserted Patents Are “Base” or

66 ' ' 9! Pioneering Patents

InterDigital has not claimed that the asserted patents are “base” or “pioneering patents.”

See Compls. Br. at 470. The asserted patents are continuations and continuations-in-part of

earlier patents that may or may not be “pioneering” patents. InterDigital argues, however, that

“patents issuing later in time extending the claims of a previous so-called ‘pioneering’ patent

may prove to be more valuable.” Id. As InterDigital’s expert Dr. Putnam testified, “[w]hi1ethe

fact that a patent is considered ‘pioneering’ could provide evidence of its value, a patent that

‘merely’ extends the claims of another patent may be equally or more valuable. In fact, one or

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more such ‘improvement’ patents often bridges the gap between a pioneering initial disclosure

and a viable commercial product.” CX-1311C (Putnam WS) at Q15 1.

Inasmuch as the asserted patents are not “base” or “pioneering” patents, this factor is

neutral as to whether the asserted patents are important to InterDigital’s patent portfolio.

v. Whether the Asserted Patents Are Infringed or

Practiced in the United States

InterDigital alleges that the asserted patents are infringed in the United States. As

detailed above, it is determined that asserted claims 1-9 of the ‘970 patent are infringed in the

United States. It was ftuther detennined that the remaining asserted claims of the asserted

patents are not infringed in the United States. This factor is therefore neutral as to a finding that

the asserted patents are important to InterDigital’s patent portfolio.

vi. Whether the Market Recognizesthe Asserted Patents’

Value in Some Other Way

InterDigital’s expert Dr. Putnam identified additional indicators allegedly showing that

InterDigital’ s patents have substantial market value. In particular, he examined movements in

InterDigital’s share price in response to news about its patents, and has examined the pattern of

citations that InterDigital’s patents have received from other patents. CX-1311C (Putnam WS)

at Q 155.

In analyzing movements in InterDigita1’s share price in response to news regarding its

portfolio or specific patents, Dr. Putnam found 19 qualifying events. CX-1311C (Putnam WS) at

Ql61. For example, on July 8, 2008, the ITC staff recommended a finding that Samsung did not

infringe the patents that InterDigital had asserted against Samsung in the 601 investigation, and

InterDigital’s share price dropped 22.6%. Id. Since the broader market index increased in value

by about 1.7% that day, InterDigita1 earned a daily so-called “excess” retum of -24.3%. Id. In

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dollar tenns, InterDigital’s market capitalization thus dropped by about $258 million based on

the news regarding patents related to those in this investigation. Id. Similarly, on December 21,

2007, an InterDigital patent not asserted in this investigation was found to be essential to a

standard, sending InterDigital’s value up by about $107 million. Id. Dr. Putnam summarized the

complete results of his market analysis in CDX-00O7.0007 and CDX-OOO7.0008. Of the 19

events reviewed in Dr. Putnam’s analysis, 15 produced fluctuations in InterDigital’s value of

$100 million or more. Id. From this uncommon market fluctuation, Dr. Putnam concluded:

InterDigital’s investors carefully follow and trade on news about

individual (or small groups of) InterDigital patents, and that the large

gains and losses indicated by these trades demonstrates the high valuations

that investors place on these individual patents. These findings are

consistent with the conclusion that InterDigital’s exploitation of its most

important patents, as that exploitation evolves through licensing and

litigation, constitutes an economically significant “industry.”

Id. at Ql63. With respect to the asserted patents in particular, Dr. Putnam testified that on

August 1, 2012, InterDigital won an appeal at the Federal Circuit in the 613 investigation

regarding related patents asserted against Nokia. That news increased InterDigital’s stock

market value by $165 million. Id. at Q164. Consequently, based on the market’s reaction to

news regarding InterDigital’s patents and portfolio as demonstrated by correlated and

unexpected fluctuations in share price, the market recognizes the value of InterDigital’s patents,

including the asserted patents.

Inasmuch as the evidence shows that InterDigital’s market value fluctuates when news of

developments in InterDigital’s patent litigations is reported, this factor weighs in favor of a

determination that the asserted patents are important to InterDigital’s patent portfolio.

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PUBLIC VERSION

c. The Scope of the Technology Covered by the Portfolio

Compared to the Scope of the Asserted Patents

lnterDigital’s licensing program covers a relatively narrow range of economic activity,

i.e., sales of mobile devices conforming to particular cellular teclmical standards. See CX-131lC

(Putnam WS) at QI76. By way of comparison, many lnterDigita1 licensees are large electronics

finns with broad patent portfolios that extend not only to Wirelesstechnical standards, but also to

many other areas. See id. Thus, while InterDigital’s patents surely to a range of technical

functions, most or all of these functions enable end-users or consumers to perform a single type

of operation, i.e., to communicate wirelessly in compliance with certain technical standards. The

asserted patents therefore fit “congruently” with InterDigital’s portfolio.

d. Conclusion

Having considered the evidence adduced by InterDigital summarized above, it is hereby

determined that InterDigital has shown the existence of a nexus between the asserted patents and

its U.S. investments in 3G licensing.

3. InterDigital’s Domestic 3G Licensing Investments Are Substantial

The Commission has adopted “a flexible approach whereby a complainant whose

showing on one or more of the three section 337(a)(3)(C) requirements is relatively weak may

nevertheless establish that its investment is ‘substantial’ by demonstrating that its activities

and/or expenses are of a large magnitude.” Navigation Devices at 15. The Commission has set

forth several factors that might be relevant in determining whether a complainant’s investment is

substantial: (i) the nature of the industry and the resources of the complainant; (ii) the existence

of other types of “exploitation” of the asserted patent such as research, development, or

engineering; (iii) the existence of license-related ancillary activities such as ensuring compliance

with license agreements and providing training or technical support to its licensees; (iv) whether

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PUBLIC VERSION

complainant’s licensing activities are continuing; and (v) whether complainant’s licensing

activities are those that are referenced favorably in the legislative history of section 337(a)(3)(C).

Navigation Devices at 15-16. The complainant’s return on its licensing investment (or lack

thereor) may also be circumstantial evidence of the complainant’s investment. Id. at 16.

With respect to these factors, lnterDigital argues that the record evidence supports a

finding that InterDigital’s investments in the exploitation of the asserted patents are

“substantial.” Specifically, it is argued that there exist other types of “exploitation” of the

asserted patent such as research, development, or engineering, inasmuch as lnterDigital invests

significantly in developing the technology that it eventually patents and then seeks to license,

such as the asserted patents. Compls. Br. at 477 (citing CX-1311C (Putnam WS) at Q40-48,

Q182-186). It is also argued that there exist other license-related ancillary activities such as

ensuring compliance with license agreements. Ia‘.(citing CX-1313C (Brezski WS) at Q37).

lnterDigital also argues that its licensing activities are continuing. Id. lnterDigital further argues

that its licensing activities are those that are referenced favorably in the legislative history of

section 337. la’. Specifically, lnterDigital alleges that it engages in production-driven licensing

designed to exploit the significant research and development expended creating and licensing

new technologies to bring new products to market. Id. (citing CX-1311C (Putnam WS) at Q42,

Q50-51, Q183-84). Finally, lnterDigital asserts that it has generated approximately [ ]

in licensing fees from licenses that include 3G patents (including [ ] in 2011 alone)

since 2005, thereby demonstrating additional “circumstantial evidence of the complainant’s

investment.” Id. (citing CX-1311C (Putnam WS) at Q45).

In summary, lnterDigital argues that “[its] investment of approximately [ ] in

the exploitation of the asserted patents is ‘of a large magnitude’ as to constitute ‘substantial’

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PUBLIC VERSION

under any threshold. Compls. Br. at 476 (citing CX-131 1C (Putnam WS) at Q186). ]nterDigital

further argues that, “[e]ven under Dr. Putnam’s alternate analysis, InterDigital’s ‘altemate’

calculation of an investment of [ ] in exploitation of the asserted patents through

licensing meets any minimum threshold of ‘substantia1.”’ Id.

Respondents argue in their post-hearing brief that “InterDigital appears to maintain that

its investments are substantial in an absolute sense, providing little of the required context in

which the substantiality of its investments could be assessed . . . .” Resps. Br. at 501. Moreover,

they argue, InterDigital’s investments are entitled to less weight because they target existing

production, such as that of Respondents, and are therefore revenue-driven, rather than

production-driven. Id. (citing Navigation Devices, Comm’n Op. at 25). Finally, they argue,

“even accepting InterDigita1’s aggregate calculations of licensing expenditures, these

investments are not substantial enough to overcome the extremely attenuated nexus to the

asserted patents that results from aggregation and reliance on patent families.” Id. (citing

Navigation Devices, Comm’n Op. at l5).

In their reply, Respondents argue that for purposes of satisfying the “substantiality”

requirement of the statute, “lnterDigital apparently is unconcerned with the fact that over 75% of

its alleged investment is comprised of ‘fixed costs’ that have no particular connection to

licensing the asserted patents, and the remaining 25% was allocated to the asserted patents based

on a methodology that relied on unjustifiably broad families as a proxy for the asserted patents.”

Resps. Reply at 237. It is further argued that InterDigital inappropriately included expenses

associated with licensing technologies other than 3G, expenses associated with licensing foreign

patents, and expenses that were incurred after filing the Complaint.” Id. Respondents argue that

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PUBLIC VERSION

InterDigital has failed to prove the investments that can be attributed to each of the asserted

patents. Id. at 236-38.

The Staff opposes a finding that InterDigital’s investments are substantial, arguing that

the evidence introduced by InterDigital leaves the Commission “without sound footing” for

evaluating whether the investments are “substantial.” Staff Br. at 132-33 (citing Certain

Semiconductor Chips and Products Containing Same, lnv. No. 337-TA-753, Comm’n Op. at 49

(Aug. 17, 2012)); Staff Reply at 35-36. It is argued that “the evidence does not show what the

dollar amotmt of investment in the domestic industry is, much less what portion of the amount in

total licensing expenditures incurred by InterDigital, or what portion of time or expenses

incurred by the InterDigital employees might be allocated to the asserted UEID patents.” Id.

As indicated above, the evidence offered by InterDigital and analyzed by its expert,

Dr. Putnam, account for the fact that certain expenditures are fixed, as well as the fact that the

expenditures at issue must be associated with 3G licensing and, more precisely, the asserted

patents. For the reasons stated above, the required nexus exists between certain InterDigital

investments and the asserted patents.

Considering the aforementioned factors set forth in the Commission’s Navigation

Devices opinion, it is clear that InterDigital does not rely on many of the investments that

customarily support a finding that investments are “substantial.” Notably, InterDigital’s

investments are exclusively focused on licensing activities, and are not connected to activities

such as current research and development. Nevertheless, a finding of domestic industry Lmder

section 337(a)(3)(C) can be supported by licensing activities alone. See InterDigital, 690 F.3d at

1329-30.

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PUBLIC VERSION

In this case, even looking to Dr. Putnam’s “alternate” estimate, one finds an investment

of [ ]. That estimate accounts only for 3G licensing, and excludes expenditures

linked to licensing discussions that failed to mention specific patents. See CX-1311C (Putnam

WS) at Q 70-71, Q186. Under that more conservative estimate, InterDigita1’s investments in the

domestic exploitation of the asserted patents are “of a large magnitude” and are, therefore,

substantial.

Consequently, it is determined that the domestic industry requirement is satisfied under

19 U.S.C. § 1337(a)(3)(C).

IX. Other Defenses

A. FRAND _

The administrative law judge has not found that Respondents have infringed a valid

asserted patent. Nevertheless, Respondents have raised various defenses based on lnterDigital’s

membership in and FRAND/RAND88commitments to standards-setting organizations (“SSOs”).

See Resps. Br. at 503-74. Respondents’ FRAND arguments include:

I The Commission should refuse to allow licensors to obtain exclusion orders on

FRAND-encumbered patents against willing licensees (id. at 516-20);

o InterDigital has failed to negotiate in good faith with Respondents, and should

therefore be denied injunctive relief (id. at 520-47);

I lnterDigital’s licensing offers to Respondents are discriminatory and therefore do

not qualify as FRAND (id. at 547-66);

88“FRAND” is an acronym for “fair, reasonable and non-discriminatory.” “RAND” is an

acronym for “reasonable and non-discriminatory.”

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0 InterDigital should be equitably estopped from enforcing declared-essential patents

against Respondents (id. at 567-71);

¢ InterDigital has Waived its right to enforce the asserted patents due to its alleged

breach of FRAND commitments (id. at 571);

I InterDigital has granted an implied license to Respondents for the asserted patents

(id. at 572); and

0 InterDigital is barred from enforcing the asserted patents Lmderthe doctrine of

patent misuse (id. at 573-74).

InterDigital denies that it has violated any FRAND obligation, and argues that

Respondents’ requested relief should be denied, inasmuch as InterDigital is not precluded from

enforcing the asserted patents at the Commission. See Compls. Br. at 479-558.

The Staff takes the position that “[t]he evidence does not support the Respondents’

affirmative defense based on InterDigital’s FRAND obligations.” See Staff Br. at I13-21.

1. The Relevant IPR Policies

As discussed above, the products accused of infringing the asserted patents operate in

accordance with one or both of two 3G wireless standards, WCDMA and CDMA2000. The

WCDMA standard was developed by the 3GPP consortium, in which companies participate

through organizational partners. InterDigital participated in 3GPP through its membership in the

European Telecommunications Standards Institute (“ETSI”). The CDMA2000 standard was

developed by the 3GPP2 consortium, for which the relevant organizational partner is the

Telecommunications Industry Association (“TIA”). CDMA2000 was also approved as an

intemational standard by the Intemational Telecommunications Union (“ITU”). Thus, the ETSI

IPR Policy is relevant for FRAND defenses relating to WCDMA accused products, and the TIA

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PUBLIC VERSION

and ITU IPR Policies are relevant with respect to the CDMAZOOOaccused products. See

Compls. Br. at 481-82.

a. The ETSI IPR Policy (WCDMA)

Section 3.1 of the ETSI IPR89Policy states that its objective is to adopt “solutions which

best meet the technical objectives” of the telecommtmications sector, and provides:

In achieving this objective, the ETSI IPR POLICY seeks a balance

between the needs of standardization for public use in the field of

telecommunications and the rights of the owners of IPRs.

CX-1717 (ETSI policy) at § 3.1.

The next section expressly provides:

IPR holders whether members of ETSI and their AFFILIATES or third

parties, should be adequately and fairly rewarded for the use of their IPRs

in the implementation of STANDARDS and TECHNICAL

SPECIFICATIONS.

CX-1717 (ETSI policy) § 3.2.

In addition to providing that IPR owners are entitled to adequate and fair compensation,

the ETSI Guide on IPRs makes clear that the details of compensation paid to IPR owners are

matters for negotiation between individual companies: “Specific licensing tenns and negotiations

are commercial issues between the companies and shall not be addressed within ETSI.

Technical Bodies are not the appropriate place to discuss IPR issues.” RX-0313 (Guide on IPRs)

at § 4.1.

In order to “reduce the risk” that patents are unavailable to those using the standard, but

at the same time provide a mechanism for patent owners to be fairly and adequately compensated

for the use of their IPR, ETSI asks that the owner of “Essential IPR” provide “an undertaking in

89“IPR” is an acronym for “intellectual property right.”

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writing that it is prepared to grant irrevocable licenses on fair, reasonable and non-discriminatory

tenns and conditions under such IPR . . . .” See CX-1717 (ETSI policy) at §§ 3, 6.1. The policy

further makes clear that “[t]he above undertaking may be made subject to the condition that

those who seek licenses agree to reciprocate.” Id. at § 6.1.

Section 6.1 of the ETSI IPR Policy, which relates to FRAND licensing of “Essential”

patents, covers a narrower range of patents than Section 4.1, which covers disclosure of patents

that “might be” Essential. Id. at § 4.1 (member shall “on a bona fide basis, draw the attention of

ETSI to any of that MEMBER’s IPR which might be ESSENTIAL if that proposal is adopted”).

The current form of ETSI IPR Information Statement and Licensing Declaration sets forth the

content and the limits of the undertaking made by the IPR owner. There are two sections to the

form: (i) The “IPR Information Statement,” for disclosing potentially Essential IPR, and (ii) the

“IPR Licensing Declaration,” for making an undertaking to license actually Essential IPR on

FRAND terms. CX-1717 (ETSI policy) at Annex 6, Appx. A. There is a difference in scope

between the IPRs that are disclosed (i.e., those that “may be or may become ESSENTIAL”) and

the IPRs as to which the owner declares it is prepared to grant licenses on FRAND terms and

conditions (i.e., “[t]o the extent that the IPR(s) disclosed . . . are or become, and remain

ESSENTIAL”). Id.; see also CXISZOC(Huber WS) at Q82 (testifying that FRAND declaration

applies to patents that are Essential, and not to every patent that is disclosed); CX 4099C (Ditty

RWS) at Q32.

b. The ITU and TIA IPR Policies (CDMA2000)

The TIA and ITU policies both have provisions with respect to the licensing of Essential

patents. The TIA policy provides that a “license under any Essential Patent(s) . . . will be made

available to all applicants under terms and conditions that are reasonable and

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non-discriminatory,” but “only to the extent necessary for the practice of any or all of the

Normative portions Standards falling within the above indicated Scope for the field of use of the

practice ofsaid Standards.” RX-0400 (TIA policy) at 91. The ITU policy’s licensing

declaration states that for patents “the use of which would be required to implement” the

standard, the patent holder “is prepared to grant a license to an unrestricted number of applicants

on a worldwide, non-discriminatory basis and on reasonable tenns and conditions.” RX-3353

(ITU declaration) at 2. The ITU declaration form further notes that “Negotiations are left to the

parties concemed and are performed outside the [ITU].” Id. The ITU patent policy itself

describes the nature of the licensing undertaking as follows: “the patent holder is willing to

negotiate licenses with other parties on a non-discriminatory basis on reasonable terms and

conditions.” RX-0627 (ITU policy) at 9.

c. The Obligation to Negotiate in Good Faith

The licensing undertakings on which Respondents rely for their FRAND defenses state

that InterDigital is “prepared to grant” licenses to Essential patents on FRAND terms and

conditions. See RX-0147 (InterDigital ETSI Declaration); JX-0046 (InterDigital ETSI

Declaration); RX-3390 (lnterDigital ETSI Declaration); RX-3391 (InterDigital ETSI

Declaration); RX-3208 (lnterDigital ETSI Declaration); RX-3322 (InterDigital ITU

Declaration); RX-3353 (InterDigital ITU Declaration); RX-0681 (InterDigital ITU Declaration).

As stated in the ITU policy, this means that the patent owner is “willing to negotiate” licenses for

the use of Essential patents. RX-0627 (ITU policy) at 9. This commitment means that the IPR

owner must negotiate towards licenses on FRAND tenns, making genuine and good faith efforts

to reach agreement. By so doing, the IPR owner fulfills its FRAND obligation.

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The parties agree that the ETSI IPR Policy is governed by French law. CX-1717 (ETSI

policy) at § 12 & Annex 6, Appx. A. Under French law, the type of obligation set forth in the

ETSI undertaking is best described as un accord deprincipe (agreement in principle).

CX-1518C (Fages WS) at Q70, Q80-84. This imposes on both negotiating parties a duty to

negotiate in good faith. Id; Fages Tr. 2389-2391. It does not, however, impose an obligation

actually to conclude a contract. CX-1518C (Fages WS) at Q70, Q80-84. The remedies available

for breaching an obligation to negotiate consist only of damages; there is no specific

performance available, and there is no remedy consisting of “the forced conclusion of a

contract.” Id. at Q91. In this regard, French law is consistent with U.S. contract law, under

which a generalized “agreement to agree” is unenforceable, but parties may enter into binding

agreements to negotiate. See, e.g., Copeland v. Baskin Robbins USA, 96 Cal. App. 4th 1251,

1256-59 (2002).

2. Respondents’ Contentions

a. Commission Adjudication of Standard-Essential Patents

Respondents argue that the Commission should decline to issue exclusion orders to a

complainant asserting standard-essential patents, inasmuch as that type of equitable remedy

would “assist it in engaging in conduct that competition authorities have deemed unfair

competition.” Resps. Br. at 518. It is argued that other federal agencies such as the Federal

Trade Commission, Department of Justice, and Patent & Trademark Office “have serious

concerns about the lawfulness of companies like InterDigital obtaining exclusion and cease and

desist orders from this Commission against willing licensees, using patents that they had

committed to license on FRAND terms,” and that the Commission should join these agencies in

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PUBLIC VERSION

denying relief to InterDigital, whom Respondents allege comes before the Commission with

unclean hands. See Resps. Br. at 516-18.

As an initial matter, Respondents have not cited any binding legal authority for its

proposition that the Commission should refrain from issuing an exclusion order should it find a

violation of section 337 based on infringement of patents subject to a FRAND undertaking. See

Resps. Br. at 503-74. The Commission “is a creature of statute, and must find authority for its

actions in its enabling statute.” Kyocera v. Int’! Trade Comm ’n, 545 F.3d 1340, 1355 (Fed. Cir.

2008). Section 337 requires the Commission to investigate any alleged violation based upon a

complaint under oath. 19 U.S.C. § 1337(b)(l). If a violation is found, section 337 gives the

Commission authority to exclude articles that infringe valid and enforceable U.S. patents. 19

U.S.C. §§ 1337(a)(1)(B), (d)(1). The statute makes no distinction between patents that have or

have not been declared to be essential to a standard. Respondents have not offered any statutory

construction that demonstrates that the Commission per se cannot issue an exclusion order for

infringement of a declared-essential patent. Moreover, the Commission has not adopted any rule

or policy in response to the FTC statement cited by Respondents (RX-3479).

7

b. InterDigital s Negotiations with Respondents

Respondents argue that InterDigital has breached its FRAND obligations, inasmuch as

InterDigital has negotiated in bad faith with Respondents. Compls. Br. at 520-47. It is argued

that “InterDigital’s entire licensing scheme is grounded in bad faith given that InterDigital in this

and similar proceedings seeks injunctions based on essential patents while knowing full well that

injunctive relief should be available only for non-essential patents.” Id. at 520.

423
[

CX-1530C

CX-1531C

CX-1481C

CX-1459C

PUBLIC VERSION

1 Huawei

cx-1717 cx-1520c

cx-1528c "°cx-1521c

CX-1460C

RX-0013C

CX-4091 C CX-1474C

CX-145 8C

]

90[

] Id.

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PUBLIC VERSION

[

91

CX-1520C CX-1521C

CDX-OO14.00l8Cto CDX-00l4.0022C

(CX-2173C to CX-2178C ] Moreover, the licensing

undertakings submitted by InterDigita1under SSO IPR policies do not require single-country

licenses, but instead contemplate worldwide licenses. See CX-1952 (ETSI report) at

91 [

(RX-4062C),

]

425
PUBLIC VERSION

NK8OOIDC22911209; CX-3711C (submission to ETSI ad hoc gT0uP);CX-1521C (Putnam

RWS) at Q194; CX-3562C (ETSI report) at IDC—ITC-017736679;RX-3353 (ITU declaration)

[

cx-1512c

CX-1511C CX-1516C

CX-1470C ; CX-1460C

CX-1460C

CX-1531C

CX-1465C

CX14640 1

426
PUBLIC VERSION

[

RX-0013C

°2 cx-1481c

CX-1480C ]

Having reviewed the lengthy history of negotiations between lnterDigital and Huawei

adduced by the record evidence, as well as the arguments raised by the parties, it is determined

that Huawei has not shown that lnterDigital has negotiated in bad faith with Huawei.93

ii. ZTE

With respect to ZTE, it is argued that InterDigital breached its FRAND obligations to

negotiate in good faith with ZTE by, inter alia, “surpris[ing] ZTE by filing suit at the ITC” while

“[i]n the midst of negotiations.” Resps. Br. at 529. It is further argued that InterDigital opposed

the determination of a FRAND by the U.S. District Court in Delaware, “forcing ZTE to continue

negotiations with the threat of an ITC exclusion order hanging over its head.” Id at 529-30. The

92 [

CX-l53OC

l

Huawei further argues that InterDigital’s royalty rate demands far exceed the rates paid by

InterDigital’s previous licensees, and that InterDigital has therefore breached its FRAND

obligations. Resps. Br. at 528-29. ]nterDigita1’s allegedly discriminatory royalty rates will be

addressed in a separate section below.

93

427
PUBLIC VERSION

evidence does not support these allegations, however. The record shows that ZTE and

InterDigital had been involved in licensing discussions since 2009, two years before InterDigital

filed the complaint in this investigation, and ZTE’s argument that it was “surprised” by this

lawsuit is therefore not persuasive. [See CX-1461C

CX-1463C CX-1466C ]. Moreover, the fact

that InterDigital opposed a partial lifting of the stay of parallel proceedings in the Delaware

District Court to address only ZTE’s FRAND counterclaims does not merit a finding that

InterDigital acted in bad faith. See InterDigital C0mmunc’ns, Inc. v. Huawei Techs. C0. Ltd.,

NO. 13-cv-00008-RGA, slip op. at 2 (D. Del. Mar. 13, 2013)?“

Indeed, the evidence shows that InterDigital has been working with ZTE to license the

asserted patents since at least 2009. [See CX-1461C

See Compls. Br. at 529.

CX-1463C

CX-1466C

CX-1462C (

CX-1457C See Compls. Br. at

530. CX-1468C

See CX-1473C (ZTE

94ZTE also argues that the royalty rates demanded by InterDigital, as well as the fact that

InterDigital insists on a world-wide license structure, demonstrates a FRAND violation. See

Resps. Br. at 530-32. The argument regarding a world-wide license has previously been

addressed in the context of Huawei negotiations. The issue of royalty rates will be addressed in a

separate section below.

428
PUBLIC VERSION

Id.

CX-1475C

CX-1477C .]

When viewed as a whole, the entire negotiation history between InterDigital and ZTE

fails to support ZTE’s allegations that InterDigital has breached its FRAND obligations to

negotiate in good faith towards a license. [

] Accordingly, it is determined that ZTE has not shown that

InterDigital negotiated in bad faith.

iii. Nokia

Nokia also alleges that InterDigital has breached its FRAND obligation to negotiate a

license in good faith. See Resps. Br. at 533-39. Nokia argues, inter alia, that “InterDigital has

consistently refused to provide Nokia with an offer limited to its essential patents or Nokia’s US

sales.” Id. at 533. It is further argued that “InterDigital’s stream of litigation-driven,

discriminatory behavior is a classic case of bad faith, making it impossible for Nokia to secure a

license on FRAND terms.” Id.

A review of the record evidence shows that InterDigital and Nokia have been involved in

patent disputes for many years. [

429
CX-1521C

PUBLIC VERSION

95 RX-0151C

CX-1519C RX-0643C

]

RX-0151C

See CX-1472C

430

See CX-1519C

CX-1510C

CX-1519C

cx-15190

]
PUBLIC VERSION

[

96

CX-2376C

RX-3 521C

CX-1467C

CX-1471C

CX-1478C

CX-1479C

96[ See cx-1490c

97

cx-1522c

1

431
PUBLIC VERSION

RX-3467C RX-3468C

]

The fact that InterDigital and Nokia have not yet reached agreement on a license does not

mean that InterDigital necessarily breached any FRAND obligation to negotiate in good faith.

As discussed above, InterDigita1’s practice is to license its patent portfolio on a worldwide basis,

and InterDigital’s rejection of Nokia’s U.S.-only license proposal is not an indication of bad faith

on the part of InterDigital.

c. InterDigital’s Licensing Offers

The FRAND nondiscrimination requirement prohibits “unfair discrimination,” but it does

not require uniform treatment across licensees, nor does it require the same terms for every

manufacturer or competitor. See CX-1521C (Putnam RWS) at Q87-89; RX-3521C (larosz WS)

at Q68. Respondents base their argument that InterDigital’s license offers are discriminatory on

their calculation of the “effective royalty rate” of the offers. See Resps. Br. at 547-66. A

nondiscrimination analysis, however, requires an examination of the whole of each license

agreement, and not just the effective royalty rate.

i. InterDigital’s Licenses with Third Parties

InterDigita1’sexpert Dr. Putnam testified, “InterDigital has licensed its patent portfolio of

3G (WCDMA and CDMAZOOO)patents to more than 30 licensees.” CX-1521C (Putnam RWS)

at Q96. As demonstrated by Dr. Putnam, the WCDMA and CDMA2000 royalty rates in

InterDigital’s running royalty licenses range from [ ], and nearly all of

InterDigital’s running royalty licenses include contractual 3G royalty rates of [ ]

CX-1521C (Putnam RWS) at QlO5; CX-2169C (summary of license terms). While the lump

432
PUBLIC VERSION

sum agreements do not have running royalty rates and cannot be directly compared to running

royalty agreements, Dr. Putnarn’s calculation of expected effective royalty rates for the [

] ltunp-sum agreements are between [ I ] for WCDMA and

between [ ] for CDMA2000. CX-1521C (Putnam RWS) at QI26, QI34, Ql52

ii. InterDigital’s Offer to Huawei

[

CX-3751C; CX-1521C

CX-1521C CX-2169C

CX-1521C

433
PUBLIC VERSION

[

l

iii. InterDigital’s Offer to ZTE

Similarly, ZTE has failed to show that InterDigital’s [ ] license offer to ZTE was

discriminatory. [

CX-2621C; CX~l521C ]

ZTE claims that it has been discriminated against because (i) it “offers its handsets at a

lower average selling price relative to other top handset manufacturers,” and should thus be

entitled to a lower royalty rate, and (ii) [

] and ZTE should thus be entitled to a lower rate

in that jurisdiction. Resps. Br. at 563.

There is no basis for ZTE’s argument that its prices or profit margins should affect what

would be a FRAND rate. Moreover, offering a single worldwide rate is not discriminatory, but

434
PUBLIC VERSION

instead is consistent with InterDigital’s standard licensing practice. CX-1521C (Putnam RWS)

at Q238. Accordingly, ZTE’s claims of discrimination are not persuasive.

ZTE also claims that InterDigital has discriminated against ZTE because InterDigital has

not offered ZTE a royalty rate of [ ]. Resps. Br. at 562. ZTE does not explain why or how

Nokia should be considered a similarly-situated licensee, or why InterDigital is required to offer

ZTE identical terms.

iv. InterDigital’s Offer to Nokia

[ ] RX-0616C. [

] See Resps. Br. at 566 n.68. [

]

d. Equitable Estoppel

Respondents argue that InterDigital should be estopped from “using the exclusion order it

seeks in this Investigation.” See Resps. Br. at 567-71. The Federal Circuit’s opinion in A.C.

Aukerman C0. v. R.L. Chaides Conslr. C0., 960 F.2d 1020 (Fed. Cir. 1992) sets forth the

standard to be applied with respect to a defense of equitable estoppel in a patent case. In

Aukerman, the Federal Circuit held, inter alia, that “[e]quitable estoppel is cognizable under 35

U.S.C. § 282 as an equitable defense to a claim for patent infringement,” that “[w]here an alleged

infringer establishes the defense of equitable estoppel, the patentee’s claim may be entirely

435
PUBLIC VERSION

barred,” that three elements must be established to bar a patentee’s suit by reason of equitable

estoppel, and that “[n]o presumption is applicable to the defense of equitable estoppel.”98 960

F.2d at 1028. The three elements that must be established in an equitable estoppel case are the

following: (1) “the statements or conduct of the patentee . . . must communicate something in a

misleading way,” (2) “[the] accused infringer must show that, in fact, it substantially relied on

the misleading conduct of the patentee in connection with taking some action,” and (3) “the

accused infringer must establish that it would be materially prejudiced if the patentee is now

permitted to proceed.”99 Id. at 1042-43. “Finally, the trial court must, even where the three

elements of equitable estoppel are established, take into consideration any other evidence and

facts respecting the equities of the parties in exercising its discretion and deciding whether to

allow the defense of equitable estoppel to bar the suit.100Id. at 1043.

Respondents argue that InterDigital’s statements to ETSI and ITU that InterDigital would

grant licenses on FRAND terms were misleading, inasmuch as “[t]hose statements induced

implementers, including the Respondents, to reasonably rely on those statements and conclude

that FRAND licenses would be available for the Asserted Patents.” Resps. Br. at 567-68. With

respect to reliance, Respondents argue that they have each invested large smns in the

development, manufacture, and sale of products compliant with the relevant standards. Resps.

98The Federal Circuit, contrasting equitable estoppel with laches (also at issue in the Aukerman

appeal) held, “Because the Whole suit may be barred, we conclude that the defendant should

carry a burden to establish the defense based on proof, not a presumption.” Aukerman, 960 F.2d

at 1043.

99“As with laches, the prejudice may be a change of economic position or loss of evidence.”

Aukerman, 960 F.2d at 1043.

100The Federal Circuit also held that “since no special considerations are implicated by the

defense of equitable estoppel as we have defined it herein, we adopt the preponderance of

evidence standard in connection with the proof of equitable estoppel factors, absent special

circumstances, such as fraud or intentional misconduct.” Aukerman, 960 F.2d at l046.

436
PUBLIC VERSION

Br. at 569. Respondents also argue that “Respondents would suffer material prejudice if this

Commission were to issue an exclusionary or cessation order barring the importation of all or a

substantial portion of their products into the United States based on misleading statements made

by InterDigital.” Resps. Br. at 569-70.

The evidence adduced by Respondents fails to show that they relied on InterDigital’s

statements to ETSI and ITU to such an extent that applying an equitable estoppel bar is

warranted in this investigation. It is undisputed that Respondents invested hundreds of millions

of dollars in the mobile handsets at issue in this investigation, but they have not shown that they

relied on any specific statements InterDigital made to the SSOs. Furthermore, it has also not

been shown that the statements made by InterDigital were, in fact, misleading. As discussed

above, InterDigital’s conduct has not been shown to violate the FRAND obligation to negotiate a

license in good faith.

Therefore, Respondents have not prevailed in their equitable estoppel defenselol

e. Waiver

Respondents argue that InterDigital has waived its right to enforce its patents before the

Commission. See Resps. Br. at 571. An implied waiver defense may be applicable against a

party if (i) the party has intentionally relinquished its rights to enforce the patents or (ii) its

conduct was so inconsistent with the intent to enforce its patents as to induce a reasonable belief

101Respondents also argue that lnterDigital’s claims are barred by the doctrine of promissory

estoppel. Resps. Br. at 570-71. A basis for promissory estoppel is established if (i) a promise

was made, (ii) it was the reasonable expectation of the promisor to induce action or forbearance

on the part of the promise, (iii) the promise reasonably relied on the promise and took action to

his detriment, and (iv) the promise is binding because injustice can be avoided only by

enforcement of the promise. See Lord v. Souder, 748 A.2d 393, 399 (Del. 2000). For the

reasons discussed with respect to Respondents’ defense of equitable estoppel, inasmuch as

Respondents have not proven reasonable reliance on InterDigital’s statements to the relevant

SSOs, Respondents have not prevailed in their promissory estoppel defense.

437
PUBLIC VERSION

that the right had been relinquished. See, e.g., Qualcomm Inc. v. Broadcom Corp. , 548 F.3d

1004, 1020 (Fed. Cir. 2008) (upholding application of the implied waiver defense when

Qualconnn had failed to disclose essential patents). It is argued that:

InterDigital’s conduct was intended to assure willing licensees that they

could license the patents-in-suit on FRAND tenns and that they would not

be denied the ability to practice the patents-in-suit through injunctive or

exclusionary relief. InterDigital breached this obligation when

InterDigital failed to offer or accept FRAND terms and by seeking

injunctive relief before the Commission. Likewise, the Respondents have

all relied on InterDigital’s statements in deciding to manufacture products

utilizing the relevant standards.

Resps. Br. at 571.

The Qualcomm case centered on a patent holder that did not disclose essential patents to

the relevant SSO. There is no such allegation in this investigation. In fact, InterDigital did

disclose the asserted patents, but it has not been shown that InterDigital waived its right to assert

the patents by doing so. Accordingly, Respondents have not prevailed in their waiver defense.

f. Implied License

Respondents also argue that InterDigital has granted an implied license to the asserted

patents to Respondents. Resps. Br. at 572. In the context of patent law, an implied license

signifies a patent holder’s waiver of the right to exclude others from making, using or selling the

patented invention. See Wang Labs., Inc. v. Mitsubishi Elecs. Am. Ina, 103 F.3d 1571, 1580

(Fed. Cir. 1997) (citing Spindelfabrik Suessen-Schurr, Stahlecker & Grill GmbH v. Schubert &

Salzer MaschinenfabrikAkttiengesellschafl, 829 F.2d 1075, 1081 (Fed. Cir. 1987)). In support

of their implied license argument, Respondents argue that “InterDigital’s conduct before ETSI

and ITU has plainly manifested its consent to the Respondents’ use of its declared-essential

438
PUBLIC VERSION

patents subject to final agreement on, or determination of, the FRAND compensation to be paid

for such use.” Resps. Br. at 572.

Respondents have provided no authority supporting the proposition that an executed

document, such as an ETSI IPR Information Statement and Licensing Declaration or a similar

declaration to the ITU, resulted in an implied license. In fact, the record evidence shows that

such declarations indicate that InterDigital is merely prepared to grant a license on

FRAND/RAND terms.

In addition, to the extent that Respondents argue that the ETSI IPR undertaking is an

actual license under French law, it is determined that there is not a license from InterDigital to

Respondents, inasmuch as InterDigital has not received compensation for ongoing royalties from

the Respondents. See Resps. Br. at 513-16; Compls. Reply at 244-45.

Accordingly, it is found that Respondents have not carried their burden with respect to

their defense of implied license.

g. Patent Misuse

Respondents argue that “InterDigital is barred from enforcing the patents in suit by the

doctrine of patent misuse.” Resps. Br. at 572-74. “The key inquiry under the patent misuse

doctrine is whether, by imposing the condition in question, the patentee has impennissibly

broadened the physical or temporal scope of the patent grant and has done so in a manner that

has anticompetitive effects.” Princo Corp. v. Im"l Trade Comm ’n,616 F.3d 1318, 1328 (Fed.

Cir. 2010). A finding of misuse renders a patent temporarily unenforceable until the misuse has

been purged. B. Braun Medical, Inc. v. Abbott Labs., 124 F. 3d 1419, 1427 (Fed. Cir. 1997).

Respondents’ patent misuse theory rests on the claim that, by seeking worldwide licenses

for its patent portfolio, InterDigital has impennissibly expanded the scope of its U.S. patents

439
PUBLIC VERSION

outside the United States. See Resps. Br. at 573-74. As discussed above, InterDigita.l’s practice

of licensing its patents on a worldwide basis does not indicate a refusal to negotiate in bad faith.

In fact, the evidence shows that this practice is common among global companies. It is therefore

determined that Respondents have failed to prove patent misuse.

B. License

Respondents allege that they are licensed to four of the seven asserted patents with

respect to the accused products in this investigation [

] See Resps. Br. at 574-86.

Respondents argue:

[

]

Id. at 574-75.

1. General Principles of Law

A license under a patent, whether express or implied, is generally a complete defense to a

charge of infringement, as long as the patent or invention is used in accordance with the license

agreement. Certain Mobile Devices and Related Software, Inv. No. 337-TA-750, Initial

Determination at 186 (Jan. 25, 2012) (“Mobile Devices”) (unreviewed in relevant part); see also

Cytrix Corp. v. Intel C0rp., 77 F.3d 1381, 1385-87 (Fed. Cir. 1996) (affirming smnmary

judgment of non-infringement based on express license). A respondent has the burden to prove

440
PUBLIC VERSION

the affirmative license defense by a preponderance of the evidence. Mobile Devices, Initial

Detennination at 186.

2. Factual Background

[

RX-3441C ;RX-3716C

RX-3441C ; CX-1522C

RX-3441C

RX-3441C

RX-3441C

CX-1522C

RX-3441C ]

441
PUBLIC VERSION

CX-1522C

RX-3454C

RX-3455C

cx-4108

cx-41 10

1

3. Analysis and Conclusion

442

CX-1522C

CX-1522C

See CX-1522C

CX-4109

CX-3 716C

RX-0539C
(JX-0026),

(RX-3441C

PUBLIC VERSION

(RX-0183

(RX-3441C

[ ]

RX-3716C

RX-3441C
PUBLIC VERSION

Id. at 583.

RX-3455C

RX-3441C
RX-3441C

RX-3441C

PUBLIC VERSION

CX-1522C

1

445

RX-3441C
PUBLIC VERSION

X. Conclusions of Law

1. The Commission has subject matter, personal, and in rem jurisdiction in this

investigation.

2. The importation requirement is satisfied as to Nokia, Huawei, and ZTE.

3. Respondents’ accused products do not infringe asserted claims 1, 2, 3, and 5 of

the ‘830 patent; asserted claims 1, 2, 4, 6, 7, and 8 of U.S. Patent No. the ‘636 patent; asserted

claims 6, 13, 20, 26, and 29 ofthe ‘406 patent; asserted claims 2, 3, 4, 7, 8, 9, 10, 11, 14, 22, 23,

24, and 27 of the ‘332 patent; asserted claims 1, 2, 3, 4, 5, 6, and 7 of the ‘l27 patent; asserted

claims 16, 17, 18, and 19 ofthe ‘O13patent; or asserted claims 10, 11, 12, 13, 14, 15, 16, 17, and

18 of the ‘970 patent.

4. Respondents’ accused products infringe asserted claims 1, 2, 3, 4, 5, 6, 7, 8, and 9

of the ‘970 patent.

5. It has not been shown by clear and convincing evidence that any asserted claim of

the ‘830 patent, the ‘636 patent, the ‘406 patent, or the ‘332 patent is invalid.

6. It has been shown by clear and convincing evidence that asserted claims 1, 2, 3, 4,

5, 6, and 7 of the ‘127 patent; asserted claims 16, 17, 18, and 19 of the ‘013 patent; and asserted

claims 1,2, 3, 4, 5, 6, 7, 8, 9,l0,1l,l2,l3,14,15,16,17, and 18ofthe ‘970patent are invalid

in light of prior art references.

7. The domestic industry requirement is satisfied as to all asserted patents.

8. Respondents have not shown that they are licensed under the asserted patents.

9. Respondents have not prevailed on any equitable or FRAND defense.

446
PUBLIC VERSION

XI. Initial Determination on Violation

Accordingly, it is the Initial Determination of the undersigned that no violation of section

337 (19 U.S.C. § 1337) has occurred in the importation into the United States, the sale for

importation, or the sale within the United States after importation of certain wireless devices

with 3G capabilities and components thereof with respect to asserted claims 1, 2, 3, and 5 of U.S.

Patent 7,706,830; asserted claims 1, 2, 4, 6, 7, and 8 of U.S. Patent No. 8,009,636; asserted

claims 6, 13, 20, 26, and 29 of U.S. Patent No. 7,502,406; asserted claims 2, 3, 4, 7, 8, 9, 10, 11,

14, 22, 23, 24, and 27 of U.S. Patent No. 7,706,332; asserted claims 1, 2, 3, 4, 5, 6, and 7 of U.S.

Patent No. 7,970,127; asserted claims 16, 17, 18, and 19 of U.S. Patent No. 7,536,013; and

asserted claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14,15, 16,17, and 18 ofU.S. Patent No.

7,616,970.

Further, this Initial Determination, together with the record of the hearing in this

investigation consisting of (1) the transcript of the hearing, with appropriate corrections as may

hereafter be ordered, and (2) the exhibits received into evidence in this investigation, is hereby

CERTIFIED to the Commission.

In accordance with 19 C.F.R. § 210.93(c), all material found to be confidential by the

undersigned under 19 C.F.R. § 210.5 is to be given in camera treatment.

The Secretary shall serve a public version of this Initial Determination upon all patties of

record and the confidential version upon counsel who are signatories to the Protective Order, as

amended, issued in this investigation.

Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the

detennination of the Commission unless a party files a petition for review pursuant to

447
PUBLIC VERSION

§ 210.43 (a) or the Commission, pursuant to § 210.44, orders on its own motion a review of the ID or

certain issues herein. XII. Order

To expedite service ofihe public version, each party is hereby ordered to file with the

Commission Secretary no later than July 8, 2013, a copy of this Initial Determmation with brackets to

show any portion considered by the party (or its suppliers of mformation) to be confidential,

accompanied by a list indicating each page on which such a bracket is to be found.'°2 At least one

copy of such a filing shall be served upon the office of tlie undersigned, and the brackets shall be

marked in red. If a party (and its suppliers of iriformation) considers nothing in the Initial

Determination to be confidential, and thus makes no request that any portion be redacted from the

public version, then a statement to that effect shall be filed.

rant.

David P. Shaw

Administrative Law Judge

Issued: June 28, 2013

Confidential business infonnation ("CBI") is defined in accordance with 19 C.F.R. § 201 .6(a) and

§ 210.5(a). When bracketing portions of this Initial Determination to indicate CBI, ahigh level of care

must be exercised in order to ensure that non-CBI portions are not indicated. Oflier than in extreniely

rare circumstances, block-bracketing is prohibited. In most cases, bracketing of only discrete CB1

words and phrases will be permitted.

448
CERTAIN WIRELESS DEVICES 3.,_TA_800 WITH so CAPABILITIESAND I“ N°' 3

COMPONENTS THEREOF

PUBLIC CERTIFICATE OF SERVICE

I, Lisa R. Barton, hereby certify that the attached INITIAL DETERMINATION has been

served by hand upon the Commission Investigative Attorney, Brian Koo, Esq., and the

following parties as indicated on JUL " 9 2013 . EM >

Lisa R. Barto , Actixé Secretary

U.S. International Trade Commission

500 E Street, SW, Room ll2A

Washington, DC 20436

FOR COMPLAINANTS INTERDIGITAL COMMUNICATIONS, INC., INTERDIGITAL

TECHNOLOGY CORPORATION, ANDIPR LICENSING, INC.:

Maximilian A. Grant, Esq. ) V' Hand Delivery

LATHAM&WATKINSLLP Aaress Delivery

555 llm Street, NW, Suite 1000 ) Via First Class Mail

Washington, DC 20004 ) Other:

FOR RESPONDENTSHUAWEI TECHNOLOGIES CO., FUTUREWEI

TECHNOLOGIES, INC., AND HUAWEI DEVICE USA, INC.:

Sturgis M. Sobin Esq. ( ) Via Hand Delivery

COVINGTON 41BURLING LLP (~X§?‘Pr?SS Dehvfiry.

1201 Permsylvania Avenue, NW -( ) V“ Fm‘ Class Mafl

Washington,DC20004 ( ) Other:"mi
CERTAIN WIRELESS DEVICES In

WITH 3G CAPABILITIES AND

COMPONENTS THEREOF

v. N0. 337-TA-800

FOR RESPONDENTS NOKIA COPORATION AND NOKIA INC.:

Jamie D. Underwood, Esq.

ALSTON & BIRD LLP

950 F Street, NW

Washington, DC 20004

( ) ' Hand Delivery

( \)))l3L:i)ressDelivery

( ) Via First Class Mail ( )Other:ii

FOR RESPONDENTS ZTE CORPORATION AND ZTE (USA)INC.:

) Via Hand Delivery

( L)/E§<pressDelivery

( ) Via First Class Mail ()Other:i

Jay H. Reiziss, Esq.

BRINKS HOFER GILSON & LIONE

1775 Pennsylvania Avenue, NW, Suite 900

Washington, DC 20006

PUBLIC MAILING LIST

Via Hand Delivery

E press Delivery

First Class Mail

Lori Hofer, Library Services

LEXIS-NEXIS

9473 Springboro Pike

Miamisburg, OH 45342

( ) Via Hand Delivery

Kmmth Clair ( ) xpress Delivery

ThomsonWest j. . .

1100 13“ Street, NW Suite 200 ( F“stCl“SsM““l

Washington,DC20005 ( ) er: —""-—¥

2