UNITED STAT ES DIS TRICT COURT F OR THE DIS TRICT OF COLUM BIA

) HTC CORP ORATION, et al ., ) ) P laintif fs an d ) Counterc laim -De fend ants, ) v. ) Civil Action No. 08-1897 (R MC) ) IP COM G MBH & CO., K G, ) ) Defendan t and ) Counterc laim -P laintif f. ) )

MEMORAN DUM OP INION ON CLAIM CONSTRUCTION HTC Corporation and HTC Americ a, I nc. , seek a decla ratory judgme nt that their telephony products do not infring e U.S. Patent No. 5,390,216 (“ ’216 P at ent”) held by I PCom GMBH & Co., KG. I PCom counter claims that HTC products infring e the ’216 Patent as well as two

o t h er P at ents that I PCom owns — U.S. Patents Nos. 7,043,751 (“ ’751 Patent”) and 6,87 9 , 8 3 0 (“ ’830 Patent”). After discovery and a technolog y tutorial for the Court, the parties prese nted their respe ctive constructions of critica l patent terms in briefs and oral arg uments. Pursuant to Markman

1

v. W estview Instruments, Inc. , 52 F.3d 967 (F ed. Cir. 1995), the Court has consi d er ed the entire

The parties’ briefs include: I PCom ’s Opening Claim Construction Br

. (“I PCom ’s Opening 1 Br .”) [ Dk t

. # 131]; HTC’s Opening Claim Construction Br

. and Mot. for Summ. J

. of I nvalidity (“H TC’s Opening Br .”) [Dkt. # 134] (cor rec ted version of Dkt. # 132); I PCOM’s Resp. [Dkt. # 150]; HTC’s Resp. [Dkt. # 151]; I PCom ’s Reply [Dkt. # 154]; and HTC’s Reply [Dkt. # 156]. Citations to the transcr ipt of the Markman hear ing a re ide ntified as “T r. date at pag e # (Par ty ).” The tutorial hear ing was held on J anuar y 26, 2010, and the Markman hear ings wer e held on Fe bruar y 16, 2010 and May 11, 2010.rec ord and now construes a limit ed number of the c ontested terms fr om the three patents at issue. 2 I

. F ACTS The P atents arise in the t ech n o l o gy of m odern mobil e telephony , i.e. , cell phones. The ’216 Patent is titled, “Sy nchronization Method for a Mobile Radiotelephone.” ’216 Patent; see I PCOM’s Opening Br ., J t. Ex

. 2. I t discloses “sy nchronization methods for mobile radiotele phones in a cellular , digital mobile ra d i o telephone sy stem comprising a plurality of fix ed stations and a plurality of mobile radiotele phones, for example opera ting acc ording to what is known as the GSM Recommenda tion.” ’216 Patent at 1:10-15. Although the “invention is not nece ssarily limit ed to 3 4 the GS M sy stem

. . . and is likely to be useful in more o r less simil ar sy stems,” id. at 8: 53-55, t he specific ation ref

ere nces c hara cter istics of a GSM sy stem. The invention disclosed in the ’216 Patent aimed “to provide a sy nchroni z ati on method that ful fi lls all require ments of digital information transmission with the least possible technica l complication and expense.” Id. at 3 : 5 -8

. T o “take advanta g e of that more economica l sy nchronization technique, there is perf orm ed for the mobile radiotele phone, first, an initial sy nchronization, then a normal sy nchronization and then, an exte n d ed sy nchronization as a

The parties proposed that the Court construe fifty terms from the three Patents at issue. The 2 Court direc ted t hat t hey limit themselves to what were critical terms in dispute and the num ber of terms cove red by

this opini on is lim ited to those twenty -five. “The digital mobile te lephone sy stem which forms the basis for the so-ca lled D-Ne twork 3 used in Ger

many is g ener ically desig nated by the acr ony m GSM, wh i ch comes from the Fr ench phrase for mobile specia l g roup (GROUPE SPEC I AL E MOBI L E). I n t h is sy stem the radio transmission is purely digital, hence the name D-Ne twork. I t is a cellular network in the sense that there are many fix ed stations with which a mobile station can communicate sequentially as it moves from the c ell of one station to the ce ll of the next.” ’216 Patent at 1:24-33. Pinpoint citations to the Patents at issue in this case ar e to column # : line #. 4 -2-backg round proce dure during normal opera tion.” Id. at 3:25- 3 0

. These three main steps include

substeps, see id. at 3:30-43, and “[b] y this p ro ce d u re it is possible to rea liz e sy nchronization of high er prec ision with a rela tively small complication and expense.” Id. at 3:44-46. The point of sy nchronization is, of course , the ability to opera te the cell phone with clea r tran s m i s s i o n and without dropped ca lls.

The ’751 Patent is entitled “M et h od of Allocating Acc ess Rights to a Telec ommunications Channel to Subscriber Stations of a Telec ommunications Net work and Subscriber Station.” ’751 Patent; see I PCOM’s Opening Br ., J t. Ex

. 3. I n the ’751 Patent’s lang uag e, a “subscr iber station” is a cell phone wi t h i n a network. Be cause a broadc ast channe l
cannot acc ommodate an unlimit ed number of cell phones, the ’751 Patent sug g ests a method to distinguish betwee n phones. The ’751 Patent descr ibes a cell phone that has a transce iver to rec eive information signa ls from a network and an evalua tion unit that analy zes “ac cess authorization data” within those signa ls to asce rtain whether the cell phone is authorized to acc ess the common channe l. Only Claim Thirteen of the ’ 751 Patent is asserted by I PCom

. The ’830 Patent is entitled “Method for Handove r, Mobile Station for Handove r and Ba se Station for Handove r.” ’830 Patent; see I PCOM’s Opening Br ., J t. Ex

. 4. The “handove r” in question occur s when a mobile cell phone moves fro m o n e b ase station (ce ll tower) to another ; obviously , a smooth handover avoids dropped calls. The ’830 Patent discloses “a ty pe of handover to be implemented that ca n be per formed w ithout networ k support,” or, if “ the networ k is capa ble

o f s u p p o rt i ng handover , that capa bility can be utiliz ed.” ’830 Patent at 2:31-35. Another aspe ct involves a situation wher e the base s t at ion forc es the cell phone to attempt a handover and, if it
cannot succe ed, “the mobile station [cell phone ] ca n return to the orig inal base station without any

-3-problem.” Id. at 2:12-24. II. LEGAL STANDARDS A. P atent Claim s Construction P rinciples Ge nerally The “cla ims” of a patent are those descr iptions of the invention that are numbere d and follow the introductory phrase , “[w]hat is claimed.” An understanding of a patented invention must start and end with the claims themselves whic h identify and distinguish the inventor ’s invention. To deter mine whether a patent claim has been infring ed, a court must underta ke a two-step proce ss. The court first construes or interpre ts eac h contested claim, or phrase or word within a claim, to deter mine its meaning and scope; only afte rwa rd are the claims compar ed to the acc used device (s). 5 O.I. Corp. v. Tec kmar Co. Inc. , 115 F.3d 1576, 1580 ( Fe d. Cir. 1997).

The interpre tation of patent claims is exclusively a question of law. Markman , 517 U.S. 370. I n claims construction, a court must interpre t the words of eac h contested claim from the perspe ctive of one skilled in the art at the time of invention, in light of the patent documents and the prosec ution history

. Phillips v. AW H C orp. , 415 F.3d 1303, 1313 (F ed. C ir. 2005). Words in the claims of a patent are g iven their ordinary and customary meaning , that is, the meaning that the term would have ha d to a person of ordinary skill in the per tinent art at the time of the invention. Id. at 1312-13. “[T] he ‘ordinar y meaning ’ of a claim term is its meaning to the ordin ar y ar t i s an af ter

rea ding the entire patent.” Id. at 1314. Although words are g ener ally g iven their ordinary meaning , “a patentee may choose to be his own lexi cog raphe r and u se terms in a manner other than their ordinary meaning , as long as the specia l definition of the term is clea rly stat ed i n t h e patent specific ation or file history .” Vitronics Corp. v. Conceptronics Inc. , 90 F.3d 1576, 1582 (F ed. Cir.

This liti g ation is at the first stag e of this proc ess. 5 -4-1996). When a specific ation expressly define s ter m s o r define s terms by implication, the

specific ation will be held to limit the claims acc ording ly

. P h i l lips , 415 F.3d at 1321. Phillips discredited the approa ch of prior case s holding that claim terms wer e to be given the broade st possible ordinary meaning and that the specific ation should only be consulted for a clea r disavowal of such meaning

. Id

. at 1319-21. The Phillips court rea soned that this approa ch resulted in unduly expansive claim construction and improperly restric ted th e ro l e of the specific ation in claim construction. Id. (disavowing Texas Digi tal Systems, Inc. v. Tel eg en i x, Inc. , 308 F.3d 1193 (F ed. Cir. 2002) and c ases f

ollowing its approa ch). Claim construction should be undertaken inde pendent of any consideration of how the claims may or m ay no t be read on the accused product. SRI Int’l v. Matsushi ta Elec. Corp. of Am. , 775 F.2d 1107, 1118 (F ed. Cir. 1985). “[C] laims are not construed to ‘cove r’ or ‘not to cover ’ the acc used device

. That proce dure would make infring ement a matter of judicial whim.” Id .; see also W ilson Sporting Goods Co. v. Hillerich & Bradsby Co. , 442 F.3d 1322, 1326-2 7 (F ed. Cir. 2006) (the court should not prejudg e the infring ement analy sis by construing claims with an aim to include or exclude a particula r product, but knowledg e of the acc used product is helpful to provide context and focus).

I n construing a claim, a court starts with the intrinsic evidenc e of its meaning — the claims, the specific ation, and the prosec ution history

. Vitronics , 90 F.3d at 1582; see Pitney Bowes Inc. v. Hewlett-Pac kard Co. , 182 F. 3 d 1298, 1305 (F ed. Cir. 1999) (the starting point for claim interpre tation must be the claims themselves). The “prose cution history ” of a patent is the complete public rec ord of the proce eding befor e the U.S. Patent and Trade mark Offic e (“PTO” ). Phillips , 415 F.3d at 1317. The publi c record includes the original application and any cl ai m am endments and

-5-explanations made by the applicant. Vitronics , 90 F.3d at 1582. For example, a patent applicant may

limit claims during prosec u t i o n b y modify ing claim lang uag e to overc ome ex aminer rejec tion, by distinguishing a refer ence , or by disavowing claim coverage

. Omega Eng’g Inc. v. Raytek Cor p. , 334 F.3d 1314, 1323-25 (F ed. Cir. 2003). The specific ation of a patent “must include a written descr iption of the invention or discovery and of the m anner and proce ss of making and using the
same, and is require d to be in such full, clea r, co n ci s e, and exact terms as to enable any person skilled in the art or scienc e . . . to make and use the same.” PTO Rules § 1.71(a)

. “The specific ation must set f orth the prec ise invention .

. . in such a manne r as to distinguish it from other inventions and fr om what is old.” Id. § 1.71(b). The specific ation is the “sing le best g uide to the meaning of a disputed term.” Vitronics , 90 F.3d a t 1582.

The Fe dera l Circuit has rec og nized a fine line betwee n rea ding a claim in light of the specific ation and rea ding a limitati on into a claim from the specific ation. Phillips , 415 F.3d at 1323. The former is appropr iate and nece ssary ; the latter constitutes err or. Id. For example, a discussion in a specific ation of a particula r embodiment of an invention does not normally confine the invention
to that particula

r embodiment. Id. (citin g Nazomi Comm., Inc. v. ARM Holdings, PLC , 403 F.3d 1364, 1369 (F ed. Cir. 2005)); see also DSW , Inc. v. Shoe Pavilion, Inc. , 537 F.3d 1342, 1348 (F ed. Cir. 2008) (“w hen claim lang uag e is broade r than the pr efe rre d embodiment, it is well-settled that claims are not to be confine d to that embodi m ent.”)

. “To avoid importing limit ations from the specific ation into the claims, it is important to keep in mind that the purposes of t he s p ec i fi cation

are to teach a

nd enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Phillips , 415 F.3d at 1323. Usually the specific ation clea rly states whether it is setting out specific e x amples of the invention or whether the patentee intends the embodim ents

-6-in the specific ation to be coextensive with the cl ai m s . Id

. A court does not improperly rea d a

limit ation into a claim wher e the claim contains the term and the court looks to the specific ation for

a definition of the term, even if that definition is set forth in a pref err ed embodiment. Curtis s-W right Flow Cont rol Corp. v. Velan, Inc. , 438 F.3d 1374, 1378-80 (Fed. Cir. 2006) ( claim limited by the term “a djustable” a

nd specific ation define d term). B. Avoidance of Redrafting Claim s and Interpre tations that Render a T erm Sup erfluou s A court m ay n o t redr aft claims to make them opera ble or to sustain their validity

. Chef America, Inc. v. Lamb-W

eston, Inc. , 358 F.3d 1371, 1374 (F ed. Cir. 2004). Howeve r, “[w]hen claims are amena

ble to more than one construction, they shoul d wh en rea sonably possible be interpre ted so as to prese rve their validity .” Modine Mfg. Co. v. U.S. Int’l Trade Comm’n , 75 F.3d 1545, 1557 (F ed. Cir. 1996).

Fur ther, a court should avoid interpre ting patent claims in a way that rende rs any term superf luous. See Bicon, Inc. v. Straumann Co. , 441 F.3d 945, 950 (F ed

. C i r. 2 0 06) (“c laims are interpre ted wit h an ey e toward g iving effe ct t o all terms i n the claim”); Merc k & Co., Inc. v. Teva Pharmace uticals USA, Inc. , 395 F.3d 1364, 1372 (F ed. Cir. 2005) (a construction that g ives meaning
to all the terms of the claim is pref err ed over one that does not); Cytologix Corp. v. Ventana Medic al Sys., Inc. , 424 F.3d 1168, 1173 (F ed. Cir. 2005) (if possible, a court should a void a n interpre tation of one claim that rende rs another meaning less). A claim term is considere d invalid for indefiniteness “only if rea sonable eff

orts at claim construction prove fu t i l e. ” Exx on Researc h & Eng’g Co. v. United States , 265 F.3d 1371, 1375 ( Fe d. Cir. 2001).

-7-C. Dependent Claim s “[A] claim in depende nt form shall contain a ref ere nce to a claim previously set forth and then specify a further limit ation of the subject matter claimed. A claim in depende nt form shall be construed to incorpora

te by ref ere nce all the limit ations of the claim to which it ref ers.” 35 U.S.C. § 112. I n other words, a depende nt claim incorporates all of the limit ations of the claim from which it “depe nds” and adds something new; thus, a depende nt claim has a narr ower scope than the claim from which it depends. Fur ther, “the prese nce of a depende nt claim that adds a particula r limit ation g ives rise to a presumption that the limit ation in question is not prese nt in the independe nt claim.” Phillips , 415 F.3d a t 1315. III. ANALYSIS

The Court construes the Patent Terms in the order in which they appea r in the J oint Statement [Dkt. # 159] , Ex . A, Chart of Claim Ter ms and Proposed Constructions (“Char t”). A. The ’216 P atent Claim One of the ’216 Patent contains most o f t h e critica l terms in dispute. I n construing such terms, the na ture of Claim One must be kept in focus: the Claim covers the steps of a me thod of sy

nchronization betwee n a cell phone (mobile station) and one or more c ell towers (base station) but does not fully reve al how such steps are actua lly acc omplished. Subsequent claims

cover the “how” of Claim One’ s method

. HTC makes a fundame ntal err or in its proposed constructions for Claim One — it arg ues for constructions that import into Claim One the specific s of one or more of the subsequent depende nt clai m s o f t h e ’216 Patent. As noted above, “the prese nce of a depe ndent claim that adds a particula r limitation gives rise to a presumption that the limit ation in question is not present in the independe nt claim.” Phillips , 415 F.3d a t 1315.

-8-Claim One is neither so prec ise nor so complex. Claim One states that the inventors

claimed: A m et h od of sy nchronizing a mobile radiotele phone in a cellular digital mobile radiotele phone network comprising a plurality of fix ed radiotele phone stations and a plurality of m o b i le radio stations opera ting in acc ordanc e with a GSM standard or its equiva l en t, in which eac h communication fre quency assig nment is subdivided into interlea ved time slots, a plurality of said time slots toge ther comprising a fra

me, comprising the following steps which are car ried out in the mobile radiotelephone : (1) conducting an initial sy nchroni z at i on by means of a fre quency corr ection burst substantially fully occupy ing a t i m e slot with an unmodulated wave corresponding to repe tition of bits of the same binary logic value; (2) maint ai n i ng normal sy nchronization during communication by means of intersper sed normal sy nchronizat ion bursts, eac h normal sy nchronization burst containing a training sequenc e occupy ing less than a third of a

time slot; and (3) perf orming extended sy

nchronization during communication as a backg round proce dure by means of intersper sed fre quency sy nchronization bursts, eac h fre quency sy nchro nization burst containing an extended training sequenc e occupy in g less than an entire time slot and more than a third of a time slot, and where in: said step of conducting said in i t i al sy nchronization comprises the substeps of: (1.1) c onducting a coa

rse f reque ncy sy nchronization, (1.2) conducting a coar se fra me sy nchronization over a plurality of said time slots which comprise a fra me, (1.3) c onducting a fine fre quency sy nchronization, and (1.4) conduct i n g a fine fra me sy nchronization over said plurality of time slots which comprise a fra me; said step of m aintaining said normal sy nchroniz at ion comprises the

-9-substeps of: (2.1) conducting a fra me sy nchronization with fine fre quency sy nchronization, and (2.2) c arr y ing out pr eliminary

data sig nal proc essing ; and said step of perf

orming said extended sy

nchronization comprises the substeps of: (3.1) c onducting a coa

rse f rame sy nchronization, and (3.2) conducting a fine fra me sy nchronization with fine fre quency sy nchronization. ’216 Patent 8:62-9:46.

The specific ation explains that the digital mobile telephone sy stem used in Ger many has traff ic channe ls and control channe ls. Id. at 1:41-42. “T h e fo rm er wer e sub-divided into encode d speec h traff

ic channels and data

traff ic cha nnels.” Id. at 1: 43-44. “The control channels include fre quency corr ection channe ls for fre quency corr ection of a mobile station, sy nchronization channe ls for a frame sy

nchronization of t he mobi le station and identifica tion of a base transce iver station and broadc ast control channe ls for g ener al information from a base station.” Id. at 1:45-50. The specific ation explains that “[o] ne radio fre quency channe l of the cell allocation is used to car ry sy nchronization information, known as t h e BCCH car rier, and serve s as the broadc ast control channe l.” Id. at 1:56-59. Fur ther, “[a] radio fre quency channe l is partitioned into time slots, so that transmission takes place in time division multipl e acc ess (TDMA) fra mes. There are eig ht time slots to a TDMA f

rame , which has a

duration of a

littl e less than 5 ms.” Id. at 1:61-65. The ti ming of time slots , TDMA fr ames, traffic channe l fra mes and control channe l fr am es are all rela ted to a common set of counter s which run continuously whether the m obile station and base station are transmitting or not. Thus once the mobile station has deter mined

-10-the corr ect setting of these counter s al l its proce ssors are sy nchronized to the cur

rently serving base station. Id. at 2:33-40. The invention is a method of achie ving sy nchronization betwee n a mobile phone and

a base station. Wherea s at the t i m e o f the ’216 Patent, sy nchronization was achie ved throug h a “common set of counter s,” id. , the method of the Patent allowed the use of fre q u en cy co rrection bursts and sy

nchronization bursts from the base station to achie ve sy nchronization more rea dily and with less expense. As the specific ation explains, “[i] t i s an o b j ec t of the invention to provide a sy nchronization method that fulfills all the require ments of digital information transmission with the least possi b l e technica l complication and expense.” Id. at 3:5-8. As noted above, Claim One descr ibes the order of the proce ss, but p ro v i d es l i t tle detail as to how actua lly to achie ve sy nchronization. Claim Two g ives detail as to how to achie ve sy nchronization as g en er al ly descr ibed i n C l ai m On e — by using continuous calc ulations of phase ang les. The specific ation states, “[t] he sy

nchronization method of the invention is based on the evalua tion of a continuously running phase ang le, wh i ch is calc ulated ag ain and ag ain from an in-phase component I and a quadra ture co m p o n ent Q.” Id. at 3: 9-12. “The method of t he invention is based on evalua tion of phase ang le [ s i c] m an y t i mes per bit interval.” Id. at 3:47-48. “F or taking best advanta g e of evalua ting phase angle s by I , Q samples, it is important to uti liz e the va rious differ ent t ransmitted sy nchronization bursts in acc ordanc e with the various steps that usefully make up the various aspec ts of the invention.” Id. at 8:47-52.

1. Synchroni zing The parties ask t he C ourt to construe “sy nchronizing” as u s ed in Claim One of the

-11-’216 Patent, wher e the inventors claimed “[a] method of sy nchronizing a mobile radiotele phone in

a cellular digital mobile radiotele phone network.” ’216 Patent at 8:62-64. I PCom proposes that sy nchronizing means mere ly “[b] ring ing the mobile station’s opera tion in step with the

corr espondi ng opera tion of a base station.” Chart at 1. HTC proposes that sy nchronizing means “[b] ring ing a m obile station’s opera tion in st ep with the cor responding opera tion of a base station by perf orming proce sses that eva l u at e a conti nuously running phase ang le calc ulated from burst signa ls rece ived from the ba se station.” Chart a t 1.

Wh il e H T C’ s p r oposed construction finds support in the sp e c if ic a ti o n , s e e ’ 2 1 6 Pa

te n t at 3:9-1 (“The sy

nchronization method of the invention is based on the evalua tion of a continuously running phase ang le

. . . .”), it confuse Claim One and Claim Two and there fore cannot be adopted. Phillips , 415 F.3d a t 1315. Claim Two of the ’216 Patent depe nds from Claim One and descr ibes the “fur ther steps of: calc ulating (continuous evalua tion of) a phase ang le from sequenc es of pairs of values

. . . and there afte r perf orming a continuous evalua tion of said calc ulated phase ang le.” ’216 P at en t at 9:49-54. Given the specific ity of Claim Two’s disclosed method and the g ener al i t y o f Claim One, HTC’s propose d construction er roneously confla tes the two. HTC arg ues strenuously that the eval u at i o n o f phase ang les is the only disclosed mecha nism for ever

y claimed substep. Whil e this is a slight overstate ment, since substep (1.1) does
not evalua te phase ang les, it rema ins basica lly acc urate

. The point is, howeve r, that Claim One

— t h e only independe nt claim in the ’216 Patent — does not reve al how to acc omplish its metho d

. Those particulars are in the dependent c laims that follow. I ndeed, the prosec ution history ref lects the understanding of the Patent and Trade mark Offic e (PTO) that the invented method resided in the multipl e steps, not in “phase course ” analy sis. I PCom ’s Opening Br ., Ex

. 5, Prosecution History at

-12-1194 (“none of the ref ere nces teac hes or sug g ests t h e arr ang ement of the steps of initial sy nchronization, normal sy

n ch ro nization and extended sy nchronization with the substeps of eac h respe ctive step in order to form a method of sy nchronization”); see also Tr. 2/16/10 at 43 (I PCom ). HTC additionally arg

ues that the inventors clea rly limit ed the scope of the invention by three statements:

• The sy

nchronization method of the inventio n is based on the evalua tion of a continuously running phase ang le, wh i ch i s calc ulated aga in and aga in from an inphase c omponent I

and a qua drature component Q. ’ 216 Patent at 3:9-12.

• The method of t he invention is based on evalua tion of phase ang le m any times per bit interval. Id. at 3:48-49.

• For taking best advanta g e of evalua ting phase ang les by I , Q samples, it is important to utiliz e the various differ ent transmitted sy nchronization bursts in acc ordanc e with the various steps that usefully make up the various aspect s of the invention. Id. at 8:47-52. An inventor may disclaim or disavo w t h e s co p e of a claim in the specific ation. Phillips , 415 F.3d at 1316. To limit the scope of his own patent, a patentee must have had “a clea r intention to limit the claim scope using ‘words or expressions of manifest exclusion or restric tion.’” Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 906 (6th Cir. 2004)

. “I n that instance

. . . the inventor has dictated the corr ect cl ai m s co p e, and the inventor’s intention, as expressed in the specific ation is reg arde d as dispositive.” Phillips , 415 F.3d a t 1316.

Whil e the specific ation in the ’216 Patent descr ibes evalua tion of phase ang les , no expressly limit ing lang uag e is used in Claim One. Th e focus of Claim One is the method of sequential steps and substeps, not the precise contours of how one practice s the i nvention. Claim On e i s n o t b ounded by the limit ations of rely ing on evalua ting phase ang les, as these limit ations appea r in depende nt claims and not in Claim One. Given the structure of the ’216 Patent, the Court

-13-cannot c onclude that Claim One is so limited. The Court construes “ s y

n c h r o n iz in g ” to me a

n “ b r in g in g th e mo b il e s ta

ti o n ’ s o p e ration in step with the fra me and f reque ncy of a ba se station.” 6 2. “Condu cting an initial synchronization by m eans of a frequency c orre ction burst ” 7 Claim One of the ’216 Patent provides for three steps to be car ried out in the mobile radiotele phone: (1 ) initial sy nchronization; (2) normal sy nchronization; and (3) extended sy nchronization. ’216 Patent at 9:4-20. I n step (1), Claim One provides for “conduc ting an initial sy nchronization by means of a frequenc y corr ection burst.” ’2 1 6 Patent at 9: 4-5. The purpose of the initial sy

nchronization is “to provide the initial connec tion betwee n a mobile radiotele phone and a fixed station.” Id . at 5:23-24. The spe cifica tion gives ba ckg round informa tion:

A base station sends signa ls on a broadc ast control channe l to enable a mobile s t at i o n to sy

nchronize itself to the base station and if nece ssary corr ect its fre quency standard so as to put it in line with that of the base station. The signa l[ s] sent b y the base station for these purposes are (a) fre quency corr ection bursts and (b) sy nchronization bursts. A burst is define d as an interval within which the radio fre quency car rier is modulated by

a pre deter

mined data stre am. Id . at 2:7-15. The pa

rties dispute whethe r the ini tial sy nchronization is conducte d befor e or after

Whil e I PCom proposed that sy nchronizing means “[b] ring ing th e mo b il e s ta ti o n ’ s o p e ration 6 in step with the corr esponding opera tion of a base station,” see Chart at 1, at the Markman hear ing, counsel for I PCom conce ded that it is more acc urate to define sy nchronizing as the Court define s it here

. See Tr. 2/16/10 at 40 (I PCom ). “The term ‘burst’ is used in the same sense as in GS M 0 5 .02, signify ing a transmission 7 occupy ing a single time slot.

. . . The fre quency corr ection burst has 142 fix ed identical bits whic h signify a phase course . . . .” ’216 Pate nt at 5:66-68. -14-the mobile station ( i.e. , cell phone) has selec ted a car rier fre quency . HTC maintains that in i tial 8 sy nchronization is conducte d after the cell phone has selec ted a car rier fre quency , asser

ting that the

corr ect construction is: “[h] aving selec ted a car rier fre quency , sy

nchronizing during initial

connec tion by perf

orming the claimed steps (1.1), (1.2), (1.2), an d (1.4) on fre quency corr ection burst 12.” Chart at 1 (re fer ring to Fig

. 1). I PCom proposes a broade r construction: “[c]ontroll ing

9

a proce ss to achie ve an initial, sy nchronized connec tion betwee n a mobile station and a base station throug h use of one or more f reque ncy corr ection bursts.” Char t at 1. HTC’s definition will not suffice beca use it require s substep (1.1), i.e ., “conduc ting

a course fre quency sy

n c h r onization,” see ’216 Patent at 9:24-25, while the specific ation explains that substep (1.1) is not alway s nece ssary . Once the rec eiver in the cell phone detec ts a car rier fre quency , it immediately makes a “first fre quency estimation” to deter mine “whe ther the fre qu en cy o f the discovere d car

rier lies within or outside of a toleranc e reg ion TR (compa re FI G. 3).” Id. at 5:34-39. “With sufficie nt prec ision of car rier fre quency tuning[,] the coar se fre quency deter mination which is burst-indepe ndent can be dispensed with; in conseque nce the s y n c h r o n iz a ti o n s te p s d esig nated 1.2, 1.3 and 1.4 above then suffic e for the initial sy

nchronization.” Id . at 5:48-52. Moreove r, HTC’s definition fails beca use it states that the fo u r s u b steps are perf ormed on “fr equenc y corr ection burst 12” when in fac t not all of the four s u b s t ep s u tiliz e a f r e q u e n c y c o r r e c ti o n burst. Substep (1.1.), course fr e q u e n c y s y n c h r o n iz a ti o n , is “ b u

r s t- in d e p e n d e n t. ” Id

. at 5:49-52. Substep ( 1.4), fine fra me sy nchronization, also does not use a fre quency corr ection

The “ car rier” is the telephone se rvice provider. 8 At times, the specific ation ref ers to the components of the invention by numbers shown in 9 Fig ures 1 a

nd 2. -15-burst; instead it “take s place by the rec og niti o n an d evalua tion of the training sequenc e in the

sy nchronization burst.” Id . at 7:22-24.

“Conducting an initial sy

nchronization by means of a fre quency corr ection burst” is construed to mean “controlling a process t o achie ve an initial sy nchronized connecti on betwee n a mobile station and a base station throug h use of one or more fre quency corr ect i o n b u rs t s and a sy nchronization burst.”

3. “ Condu cting a coar se frequency synchronization ” This phrase comes from substep (1.1) and may not be neede d if the cell phone detec ts

a car rier’ s signa l that has “suff icient prec ision of

. . . fre quency tuning.” Id. at 5:48-49. I f the car rier signa l is lacking sufficie nt prec ision of fre quency tunin g, t h i s substep entails a “first fre quency estimation

. . . by means of the high fre quency rec eption p o rt i o n 21 of the radio rec eiver .” Id. at 5:33-36 (re fer

ring to Fig

. 3). “The result produce s information of [si c] whether the fre quency of the discovere d car

rier lies within or outside of a toleranc e reg ion TR (compa re FI G. 3).” Id. at 5:36-39. “The toleranc e reg ion is varia ble, so that the prec ision of the fre quency estimation incre ases with 1 0

a shrinking of the reg ion for any particula r data stream (compa

re FI G. 3 ag ain).” Id. at 5:44-48. I n lay men’s terms, this means that the strong er the fre quency signa l, the more likely that fr eq u ency tuning be tween the mobile station and the base sta tion occurs without substep (1.1).

I PCom proposes that the term be construed to mean “[c]ontroll ing a proce ss to bring the mobile station’s fre quency into a t least approximate step with the base sta tion freque ncy , such

as by selec ting and tuning to a car rier fre quency .” Chart at 1. HTC counter s with “[h] aving alre ady

See ’ 216 Patent at 3:53-56 (“I t is also possible

. . . for the prec ision of the coar se fre quency 1 0 sy nchronization to be varia

ble ac ross the phase toleranc e re g ion (TR).”)

.

-16-tuned (selec ted) a car rier fre quency , controlling a first fre quency sy nchroniz ing proce ss that estimates and ref

ines the mobile station’s fre quency to within a toleranc e reg ion so as to be in approximate step with the base station’s f reque ncy .” Id. Acco rd ing to the ’216 Patent, coar se frequenc y deter mination and sy

nchronization do not entail “re fining ” the mobile station’s fre quency but, instead, “dete rmin[i ng ],” ’216 Patent at 5 : 3 1 , wh ether a detec ted fre quency signa l from a car rier has “suff

icient prec ision” alre ady , id. at 5:48, or is “within or outside of a toleranc e reg ion TR,” id. at 5:38, to be usable for communication. “[T] uning the coar se fre quency deter mination” is not nece ssary when there is “suff icient prec ision of car rier fre quency .” Id. at 5:48-49. The parties di s agr ee o v er whether , in this context, “dete rmining” and “sy

nchronizing” are the same thing; HTC say s they are and I PCom say s they are not. The Court conclude s that they convey differ ent actions. The high fre quency rec eption 21 of the cell phone first “dete rmines” whether the signa l it detec ts is sufficie nt and then, if need be, “tunes,” or sy nchronizes, to that signa l.

T h e Co u r t c o n s tr u e s th e p h r a s e “ ( 1

. 1 ) c o n d

u c ting a coar se fre quency sy nchroniza ti o n ”
to mean “having detec ted a car rier fre qu en cy , controll ing a proce ss to bring the mobile station’s fre quency into approximate step with the base station fre quency , such as by tuning to a car rier fre quency .” 4. “ (1.2) Condu cting a coarse fram e synchronization over a plu rality of s aid

tim e slots wh ich com prise a fram e ” First, HTC contends that this “limitation is incapa ble o f construction for failure to comply with para g raphs one and two of 35 U.S.C. § 112 beca use the phrase ‘over a plurality of said time slots which comprise a f rame ’ is insolubly

ambig uous.” Chart a

t 1-2. Section 112 provides: The specific at i o n shall contain a written descr iption of the

-17-invention and of the manner and proce ss of maki n g an d using it, in such full, clea

r, concise , and ex ac t t er m s as to enable any person skilled in the a

rt to w hich it pe rtains, or with w hich it is most near ly connec ted, to make and use the same, and s h al l set forth the best mode contemplate d by

the inventor of c arr

y ing out his invention. The specific ation shall conclude with one o r more claims p ar ticularly pointing out and distinctly claiming the subject matter which the a

pplicant re g ards a s his invention.

. . . . 35 U.S.C. § 112, ¶¶ 1 & 2.

“B eca use a claim is presu m ed v al i d , a claim is indefinite only if the “cla im is insolubly ambig

u o u s , a n d n o n a r r o w in g c onstruction can proper ly be adopted.’ ” Honey well Int’l, Inc.

v. Int’l Trade Comm’n , 341 F.3d 1332, 1338-39 (F ed. Cir. 2003) (quoting Exx on Researc h , 265 F.3d
at 1375). Claims are held to be indefinite only wher e a person of ordinary skill in the art could not deter mine the bounds of the claim. Hal liburton Energy Servs., Inc. v. M-1 LLC , 514 F.3d 1244, 1249 (F ed. Cir. 2008). “ [C ]l aims are not indefinite mere ly beca use they prese nt a difficult task of claim construction.” Id

. Finding a claim i n v al i d o n i ndefinitene ss g rounds require s “cle ar and convincing evidenc e that a skilled artisan could not discern the boundarie s of the claim based on the claim l ang uag e, the specific ation, an d the prosecution history , as well as [ the accused infring er’ s] knowledg e of the rele vant art are a.” Id

. at 1249-50; accord Budde v. Harley- Dav i d s o n, Inc. , 250 F.3d 1369, 1377 ( Fe d. Cir. 2001).

The Court declines to find that the cited phrase is incapa ble of co n s t ru ct i o n . The parties ag ree that a “plura lity ” means two or more. Tr. 2/16/10 at 51 (I PCom ) & 52 (HTC); see also Cybersettle Inc. v. Nat’l Arbitrati on Forum, Inc. , 243 Fe d. Appx. 603, 606 (F ed. Cir. 2007) (the term “plura lity ” mea

ns two or more) . The inventors ha ve instructed tha t “ [t ]here are eig ht time slots to

-18-a TDMA fra me.” ’216 Patent at 1:64-65. Thus, “a plurality of said time slots” means two or more of the e ight time slots which comprise a TDMA fr ame. I PCom proposes that the ref ere nced terms be construe d t o mean “[c]ontroll ing a proce ss t o b ri ng the mobile station’s fra me timing into at least approximate step with the base station’s fra

me timing, such as by identify ing a rang e within which the beg inning of a fra me falls.” Chart at 1-2. As an alternative to i ts indefiniteness ar g ument, HTC proposes “ [c] ontrolling a first frame sy nchronizing proce ss that utiliz es a corr ecte d phase course of a detec ted fre quency corr ection burst to identify

a ra ng e within which the be g inning of a fr ame f alls.” Chart a t 2. The ’216 Patent makes clea r that it is necessa

ry “to detec t a

pproxi mately the frame beg inning for a p ar t i cu l ar channe l” in order to achie ve coar se fra me deter mination and frame sy nchronization. ’216 Patent at 5:57-58. As descr ibed in the specific ation, a fre quency corr ection burst is first rec og nized and conver ted to baseba

nd ; t h en the I and Q components are sent to the analog to digital conver

ter, and there afte r to the sy nchronization proce ssor. Id. at 4:66-5:15; see also id

. at 6: 44-45 (“[w] hen the I and Q components are measured [ for coarse fra me s y nchroniz at ion] , the rec eived signa l has been conver ted to the baseba

nd”). “All of the sy

nchronization routines which take place with the help of the sy nchronizing proce ssor 28 are based on the proce ssing of the phase ang les calc ulated from the I and Q components.” Id. at 5:11-15 (re fer ring to F ig. 2); see also id. at 6:12-14 (“the corr ecte d phase course of the rec eived fre quency corr ection burst 12 makes possible the deter mination of the beg inning of a fr ame” ) (r efe rring to Fig . 1). The specific ation explains how to deter mine the beg inning of a fra me. First, the I /Q components’ incoming signa ls must be analy zed to locate the fre quency corr ec t i on burst and deter mine g ener ally when the fre quency corr ection burst beg an. The specific ation discloses that “a

-19-simple criter ion for the sear ch alg orithm for rec og nition of the beg inning of the fre quency corr ection

burst 12 is provided, as shown in Fig

. 5,” which “shows how the corr ecte d phase course of the

re ce i ved fre quency corr ection burst 12 makes possible the deter mination of the beg inning of a frame.” Id

. at 6:8-14 (re fer ring to Fig

. 1). Fig ure 5 depicts a “stea dily rising l i n e [ t h at ] can be calc ulated back to show that the burst beg an at the beg inning of the interval marke d 1 in Fig

. 5,” with the time reg ion shown below the gra p h

. Id. at 6:36-40. “F rom the beg inning of the burst, the beg inning of a TDMA fra

me can be deter

mined with ref

ere nce to the time slot assig ned to the mobile telephone, when nece ssary .” Id. at 6:40-43. Be cause the fre quency correction burst occur s in a known time slot of a fra me, knowing the beg inning of th at b urst allows the mobile station to deter mine when the f

rame itself beg an. Fr om these statements in the specific ation, the Court conclude s that HTC has offe red the better construction. The phrase “(1.2) conducting a coar se fra me sy nchronization over a plurality of said time slots which comprise a fra me” is construed to mean “contr olling a fi rst frame sy nchronizing proce ss that utiliz es a corr ecte d phase course of a detec ted fre quency corr ection burst to identify

a ra ng e within which the be g inning of a fr ame f alls.” 5. “ (1.3) Conducting a f ine f requency synchronization ” HTC asks that this term be construed. I t sug g ests th at it means “[c]ontroll ing a second fre quency sy

nchronizing proce ss that minimi zes the differ ence betwee n actua l and ref ere nce phase course s to br ing the mobile station’s fre quency into prec ise step – within 0.1 ppm – with the base station fre quency .” Chart at 2. I PCom offe rs its own construction: “[c]ontroll ing a proce ss to bring the mobile station’s fre quency in step with a desired opera ting acc urac y with the base station fre quency , such as by

producing a fr equenc y

offse t para meter.” Id.

-20-HTC’s definition comes from the specific ation, which provides, “[a]fter a succe ssful

deter mination of t he beginning of a frame, t he oscill ator freque ncy of t he m o b i l e telephone needs
to be broug ht more pre ci sely (0.1 ppm) into step with the fre quency of the base station.” ’216 1 1 Patent at 6: 62-65. Acc ording ly , “(1.3) conducting a fine fre qu en cy sy nchronization” i s construed
to mean “contr olling a second fre quency sy nchronizing proce ss to bring the oscillator fre quency of the mobile telephone more prec isely into step with the fre quency of the base station, within a desired opera ting a ccur acy .”

6. “(1.4) Condu cting a fi ne fram e synchronization over said pl u ra lity of tim e slots w hich com prise a fram e ” The specific ation explains the need to achie ve fine fra me sy nchronization: to deter mine any “fr ame shift” resulting from delay in a signa l r eac hing the mobile station. See ’216 Patent at 2:33-42, 7:54-55, 8:20-25. “A bit acc urat e fr am e d etermination is possible by a pattern

corr elation proce dure,” id. at 7:24-26, which may be conducte d by evalua ting “the phase course of the training sequenc e within the sy nchronization burst 13.” Id. at 7:35-37 (re fer ring to Fig

. 1)

. By matching the measure d and expected p hase course s of the sy nchronization burst, a “setting mag nitude for bit sy

nchronization” can be provided to “ the centr al control unit 31.” Id. at 7:33-34 (re fer ring to Fi g . 2); id ., Fig s. 4A & 4B. These proce dures produce “nec essar y sy nchronization para meters (fr ame . . . shift).” Id. at 8:23-25. By deter mining how much to “shift” bits encode d in the base station signals, the mobile station ensure s it can prope rly decode the information.

HTC conce ded at the Markman hear ing tha t the ref ere nce to “ 0.1 ppm” could be deleted 1 1 from it s proposed construction. Tr. 2/16/10 at 126 (HTC) (“I actua lly would be fine with striking that out.”). See Conoco, Inc. v. Energy & Envtl. Int’l, L .C. , 460 F.3d 1349, 1358 ( Fe d. Cir. 2006) (“When a claim term is expressed in g ener al descr iptive words, [courts] will not ordinarily limit the term to a numer ical ra

ng e that may

appea r in the written de scription or in other c laims.”). -21-HTC first protests that this phrase is incapa ble of construction for failure to comply with para g ra p h 2 o f 35 U.S.C. § 112 beca use the phrase “over said plurality of time slots which comprise a fra

me” is insolubly ambig uous. The Court reje cts this arg ument as t h e cl aim can be construed a s descr ibed below.

I n the alterna tive, HTC proposes that the phrase be construed to mean “[c]ontroll ing

a second frame sy

nchronizing proce ss that conducts a pattern corr elation of a measure d phase course rela tive to a ref

ere nce phase course to achie ve a bit-acc urate deter mination of the fra me beg inning.” Chart at 2. I PCom proposes, instead, that the proper construction is “[c]ontroll ing a proce ss to bring the mobile station’s fra

me timing into step with a desired opera ting acc urac y with the base station’s frame timing, such a s by

producing bit sy

nchronization setting pa

rame ters.” Id. The Court finds its construction in the lang uag e of the s p ec i fi cation provisions descr ibed above: “(1.4) conducting a fine fra me sy nchronization over s ai d p l u rality of time slots which compr is e a f

r a me ” means “contr olling a second fra me sy nchronizing proce ss that achie ves bitprec ision fra

me sy nchronization by rec o gnizi ng and evalua ting the training sequenc e within the sy nchronization burst.”

7. “2.1 Condu cting a fram e synchronization wi th f i n e f requency synchronization ” The partie s jointly seek a construction of this phrase from Claim One of the ’216 Patent. See ’216 Patent at 9:37-38. I t comes from Step 2 of t he method, normal sy nchronization, substep 2.1, “fr ame sy

nchronization with fine sy nchronization.” Id .; see also id

. at 7:45-47. HTC sug g ests it means “[c]ontroll ing a proce ss that, by evalua ting eac h normal burst, produce s both frame and fre quency shift sy

nchronization para

meters for that burst to bring the fr a me ti mi ng and fre quency of the mobile station in step with the base station.” Chart at 2-3. I PC o m p re fers “[c]ontroll ing a -22-proce ss to monitor and maintain the mobile stat i o n an d b ase station’s fra me timing in step while

h aving the mobile station and base station’s fre quency in step with a desired opera ting acc urac y , such as by producing fra

me shift and fr equenc y

corr ection par ameter s.” Id

. The patent discloses that “continuous monitoring and maintaining of the fra me and fre quency sy

nchronism by the evalua tion of training [si c] sequenc e [si c] within the normal burst 14"

assure s “an e rror

fre e dec oding.” ’216 Patent at 7:49-52 (re fer ring to F ig. 1). The “ encr y pted bits

. . . serve to identify the training sequenc es.” Id. at 7:53-54. “[A]ny fra me shift is first deter mined” beca use the “value produce d (timing pulse shift) is a nece ssary para meter in order to mark the pattern sequenc e with bit-ac cura cy within the data packe t or sentenc e.” Id. at 7:54-58. B eca use I PCom ’s proposal follows the specific ation more closely , the Court construes “(2.1) conducting a frame sy nchronization with fine fre quency sy nchronization” to mean “contr olling a proce ss to monitor and maintain the fra

me timing in step betwee n the mobile station and base station while also maintaining the fre quency within a desired opera ting acc urac y betwee n the mobile sta tion and the base station, by producing fra

me shift and fr equenc y

corr ection par ameter s.” 1 2 8. “(2.2) Car rying out prelim inary data sign al processing” The phrase in qu es t i on comes from Step 2 of t he method, normal sy nchronization, and, in context, reads:

The Court does not adopt I PCom ’s proposal to use the phrase “such a s,” i.e . “such a s by 1 2 producing fra

me shift a nd fre quency corr ection para meters.” Chart at 2-3. As HTC pointed out at the Markman hear ing, “whe n y ou put “such as” in there it doesn’t have to be prac ticed so it doesn’t mean any thing. I n order for it to be a limit ation, in order for it to mean something for the claim y ou have to remove the “such as”

. . . .” Tr. 2/16/10 at 128 (HTC). This is distinguishable from the construction of “(1.1) [c] onducting a course fre quency sy nchronization,” above, wher e “such as” is appropr i at e b ecause “tuning ” may not be neede d if the fre quency signa l has sufficie nt prec ision alre ady

. -23-[M]a in ta in in g s a id n o r

mal sy nchronization comprises the substeps of: (2.1) co n d ucting a framed sy nchronization with fine fre quency sy nchronization, and (2.2) c arr y ing out pr eliminary

data sig nal proc essing

. ’216 Patent at 9:34-40. F urther, the specific ation discloses:

A fre quency corr ection value produce d by the centr al control unit 31 from the actua l (cur

rent) fre quency meas u rement is supplied to the sy nchronization proce ssor 28. By means of this prepr ocessing of the data signa l any impairment of err or-f ree decodin g in the case of fre quency shifts exceeding 200 Hz is completely eli minated. Such fre quency shifts are to be expected from the Doppler eff ect and from oscillator drift. Id. at 7:63-8:2 (re fer

ring to Fig

. 2). “The centr al control unit 31 presc ribes to the sy nchronization proce ssor 28 which sy

nchronization step is to be activate d. The control unit rea ds out the response s

o f th e sy nchronization proce ssor, interpre ts them and supplies the setting values to the corr espondin g components, as for example a corr ection for a local oscillator.” Id. at 5:16-21 (re fer ring to Fig

. 2). HTC assails the lack of any rea l descr iption of what “[c]arry ing out preliminary data signa l proce ssing” means a nd wher e it is perfor

med. HTC contends: The specific ation mere ly discloses that “this prepr ocessing ” results in “[a] fre quency corr ection value produce d by the ce ntral control unit 31.” [’216 Patent at 7:63-8:2]. T h e s pecif ication further discloses that, as a result of this unknown “proc essing ,” the fre quency corr ection value “complete ly eliminates

. . . any impairment of err orfre e decoding in the case of fre quency shifts exceeding 200 Hz.” [ Id. ] T h us, the ’216 patent only descr ibes the goal of substep (2.2)

— an ambitious g oal at that. But neither the ’216 p at ent nor the claims specifie s [si c] what acts implement tha t g oal.

. . . [T] he acts claimed by substep (2.2) a

re impossible to discern. HTC’s Reply

[Dkt. # 156] at 24. I n the alterna tive, HTC proposed that the phr ase be construed a s “pre proce ssing a data signa l to g ener ate a fre quency corr ection value to be u s ed in further signa l

-24-proce ssing of that data signa l.” Chart at 3. I PCom proposes that the phrase means, “pre proce ssing

data sig nals to acc ount for fr equenc y shifts during c ommunication.” Id

. The Court disagre es with HTC’s contention that the phrase is incapa ble of construction. As the specific ation discloses, preliminary data signa l proce ssing is perf ormed by the
centr al control unit 31 when it analy zes the actua l, or rea l-time, fre quency signa l rec eived from the base station and produce s a fre quency corr ection value to the sy nchronization proce ssor 28. Using that fre quency corr ection value, the sy nchro n i z ati on proce ssor 28 can then perf orm whicheve r sy nchronization step the centr al control unit 31 order s. Be cause the centr al control unit 31 supplies

a fre quency corr ection value for eac h step of sy nchronization, fre quency shifts do not impair the cell phone’s a bility to decode the sig nals it rece ives. The Court construes “(2.2) car ry ing out preliminary data signa l proce ssing” to mean “mea suring the actua l fre quency from the base station and calc ulating a fre quency corr ection value for use by the sy nchronization unit.” 9. “(3.2) Condu cting a f i n e fram e synchronization wi th fi ne frequency synchronization” This phrase is the second step of extended sy nchronization, which “provide [s] sy n ch ronization of a mobile radiotele phone to neig hboring cells of a cellular mobile radio communication sy stem as a cell boundary is approa ched and crosse d.” ’216 Patent at 8:5-7. By this proce ss, “it is basica lly assure d that upon leaving one radio cell the base station of that cell will not interfe re with the continuation of the connec tion.” Id. at 8:15-17. I n ot h er wo rds, this proce ss

ensure s that the on-g oing telephone call will not be dropped beca use the user is chang ing cell towers. Ex tended sy

nchronization is pr ovided as a “bac kg round proce dure (proc ess having lower priority ) which produce s the nece ssary sy nchronization para

meters (fr ame and fre quency shift) for the near by -25-cell in contemplation of a crossing from one c ell to another.” Id. at 8:21-27. I n particula

r, the sy nchronization proce dure during normal opera tion perf orms a coar se fra me sy nchronization (fr equenc y burst beg inning) and a fine fram e s y nchronization with fine fre quency 1 3 sy nchronization in which the sy nchronization burst 13 is used for the fra me and f reque ncy sy nchronization. The rele vant alg orithms for the above steps corr espond essentially to those desig nated 1.2, 1.3, 1.4 and 2.1 above, although more bi ts are involved in the extended training sequenc es. Id. at 8:27-37. HTC construes substep (3.2) to mean, “contr olling a proce ss that, by evalua ting eac h of a neig hboring cell’s sy nchronization bursts, prod u ce s both fra me and fre quency shift sy nchronization para

meters for t hat burst in contemplation of crossing a cell boundary

. ” C h art at 3. I PCom , in contrast, asse rts that the l imitation means “ controlling a proc ess to bring the mobile station and neig hboring base station’s fra me timing in step within a desired opera ting acc urac y while bring ing the mobile station and neig hboring base station’s fre quency in step within a desired opera ting a ccur acy , such as by producing fra

me shift and fr equenc y

corr ection par ameter s.” Id

. The specific ation for the ’216 Patent pro v id e s , “ T h e r e le v a n t a lg o r it h ms for [ex tended sy nchronization] corr espond essen t i al l y t o those desig nated 1.2, 1.3, 1.4, and 2.1 above, although

more bits a

re involved in the extended training sequenc es.” ’216 Patent at 8:34-37. Since the two steps for extended sy

nchroni z at i o n “c o rre spond essentially ” to steps 1.2, 1.3, 1.4, and 2.1, the construction of the terms should also corr espond. According ly , the Court construes “(3.2) conducting a fine fra

me sy nchronization with fine fre quency sy nchronization” to mean “contr olling

a proce ss to monitor and maintain the fra me timing in step betwee n the mob i l e s t at i o n an d

A “coa rse fra me sy nchronization” entails deter mining the beg inning of a fre quency burst. 1 3 -26-neig hboring base station w hile also maintaining the fre quency within a desired opera ting acc urac y

betwee n the mobile station and the neig hboring base station, by producing fra me shift and fre quency

corr ection par ameter s when c rossing a ce ll boundary .”

B. Th e ’751 P atent The ’751 Patent is titled, “M et h o d o f Allocating Acc ess Rights to a Telec ommun i cations Channel to Subscriber Stations of a Telec ommunications Networ k and Subscriber Station.” “The invention is based on a method of controlling or administering acc ess to

a telecommunica tions channe l for a subscriber station.” ’751 Patent at 1:9-11. The method disclosed by

the ’751 Patent involves sending information sig nals containing acc ess authorization data f rom a base station to a subscribe d cell phone; upon r ece ipt by the ce ll phone, its “evalua tion unit” deter

mines whether the acc ess authorization data include an acc ess threshold value; if so, the

acc ess t hreshold value is compare d with a ra ndom number or a

pseudo-r andom number; acce ss to the telecommunica tions channe l is g rante d “as a function on [si c] the outcome o f co m p arison, pref era bly on the condition that the random number or pseudo-r andom number is g rea ter than or equal to the acc ess threshold value.” Id. at 1:23-35. I f the compar ison fails, acc ess t o t he
t el ec o m m u nications channe l is denied and the s ubscribed cell phone must awa it new informatio n signa ls. The terms of Claim Thirteen of the ’751 Patent are the only ones in contention here

. Claim Thirteen re ads:

A subscriber station to which an [si c] acc ess to at l ea s t one telecommunica tion channe l usable by a plurality of subscriber stations in common can be g rante d, comprising means for rec eiving information signal s ; an evalua tion unit (60) for asking when information signa ls with acc ess authorization data means (65) as au thorization data (45, 50, 55) are rec eived, whether the acces s -27-authorization da ta (45, 50, 55) include an acc ess threshold value (S) for compar ison of the acc ess t hreshold value (S) with a random number or a pseudo-random number (R), and for asce rtaining , as a function of a

n outcome of a compar ison whether an acce ss of t he at l ea s t one subscriber station (5, 10, 15, 20) to the at least on e telecommunica tions channel is ena bled. Id. at 14: 19-32. I n plainer English, t he ’751 Patent discloses a ce ll phone with potential acc ess t o

a telecommunica tions channe l to which other cell phones have acc ess; the cell phone rec eives information signa ls from the base station; the cell phone has an evalua tion unit which asks whether

acc ess authoriz ation data rece ived by the cell phone conta in an ac cess thre shold value to compar e with a ra ndom number, and the n asce rtains, base d on the compar ison, whether a cce ss is enabled. 1. “ Means for rec eiving in form ation sign als ” Both parties ag ree th at t h is term is a “mea ns-plus-func tion” term subject to the require ments of par ag raph 6 of 35 U.S.C. § 112. That provision of the Patent Act states: An element in a claim for a combination may be ex p re s sed as a means or step for perf

orming a specifie d function without the rec ital of structure , materia l, or acts in support there of, and such claim shall be const rued to cover the corr esponding structure , materia l, or acts descr ibed in the spec ification and e quivalents there of. 35 U.S.C. § 112, ¶6. “De termining whether a claim is de finite require s an analy sis of whether one skilled in the art would understand the bounds of the claim whe n re ad i n the light of the specific ation. I f the claims rea d in lig ht of the specific ation rea sonably apprise those skilled in the
art of the scope of the invention, § 112 demands no more.” Personalized Media Communications, LLC v. Int’l Trade Comm’n , 161 F.3d 696, 705 (F ed. C ir. 1998 ). I n other words, when a claim i s expressed in means-plus-f unction lang uag e and it does not rec ite definite structure in support of its function, the claim must be construed to cover that which is descr ibed in the specific ation and equivalents. Medtronic, Inc. v. Advanc ed Cardiovascular , 248 F.3d 1303, 1311 (F ed. Cir. 2001)

. -28-“The first step in construing such a limit ation is a deter mination of the function of the means-plusfunction li m itation. The next step is to deter mine the corr esponding structure descr ibed in the specific ation and equi v al en t s there of.” Id

. (citations omitted); accord Lockhee d Martin Corp. v. Space Sy stems/Loral, Inc. , 324 F.3d 1308, 1318 ( Fe d. Cir. 2003)

. I f no corr esponding structure is descr ibed in the specific ation or equivalent and one skilled in the art would not understand the bounds of the claim by rea ding the specific ation, a claim that rec ites a means-plus-f unction element without setting forth a structure is indefinite. See Halliburton , 514 F.3d at 1249; Personal ized Media , 161 F.3d a t 705.

HTC descr ibes the specifie d function as “[d] igitizing a rec eived signa l (25) and parsing out acc ess authorization data (45, 50, 55) to pass to the evalua tion unit (60). ” Chart at 3. HTC arg ues, howeve r, that the structure rema ins improperly indefinite beca use none is disclosed in the specific ation, contra

ry to the require ments of para g raph 6. I PCom contends that the function 1 4

at issue is “re ceiving information signa ls.” Chart at 3; see Medtronic , 248 F.3d at 1311 (the function of “mea ns for connec ting adjac ent elements toge ther” is “conne cting adjac ent elements toge ther” ). I PCom asser

ts that the corr esponding structure is a transce iver or its equivalents. The specific ation backs up I PCom ’s asser

tion. “The fi rs t mobile station 5, by means of its transce iver unit 65, 1 5

rec eives the infor

mation signa ls . . .” ’751 Patent at 5:16-17. The Court ag ree s with I PCom

. “Mea ns for rec eiving information signa ls” h as a function (re ceiving information signa ls) and a structure (a transce iver or its equivalents) and thus is

HTC also contends that this claim fails to meet the definitene ss require ment of para g raph 1 4 two of 35 U.S.C. § 112. The specific ation explains that it only descr ibes the first mobile station, but that the second, 1 5 third, and four

th have the sa

me construc tion. ’751 Patent at 5:11-16.

-29-not indefinite. 2. “Evalu ation un it”/ “Evalu ation un it for aski ng w hen . . . , w hether . . . .” I PCom neatly say s that the ’751 Patent’s evalua tion unit is simply a microproc essor. Chart at 4. The ref

ore, it does not ag ree with HTC that this claim l imitation is written as a meansplus-function element subject t o para g raph 6 of 35 U.S .C. § 112. HTC arg ues that the function is ambig uous beca

use it is subject to m u ltiple interpre tations due to g rammatica l err ors, and its
structure is indefinite for f ailure to disclose suc h structure in the specific ation. Ag ain, the Court conclude s t h at I PCom prese nts the much more compelling and logic al construction, g iven the Claim, the specific ation and what would be known to one skilled in the art. “[A] claim term that does not use ‘mea ns’ will trig g er the rebuttable presumption that § 112 ¶ 6 does not apply

. . . the presumption flowing from the absenc e of the term ‘mea ns’ is a strong one that is not rea dily overc ome.” Lighti ng W orld, Inc. v. Birchwood Lighti ng, Inc. , 382 F.3d 1354, 1358 (F ed. Cir. 2004).

He re , the claim does not use the term “mea ns” and HTC has not rebutted the p re s u m p t ion that it is not a means-plus-func tion term. Moreove r, even if it wer e such a term, t h e specific ation descr ibes the corr esponding structure

. Fig ure 2 of the ’751 Patent shows a mobile station (5) with a transce iver (65), and evalua tion unit (60), antenna (70), an d s u b scriber identity module (SI M) card ( 7 5 ). ’751 P atent, Fig. 2. The evaluation unit connec ts to the t ransc eiver and

acc esses the SI M car d. Id

. at 5:4-10 (“The transce iver unit 65 is also connec ted to an evalua tion unit 60, which acc esses an acc ess authorization car d 75, such as a SI M car d.”) I t has memory , id

. at 6:60, and perf orms the steps set forth in Fig ures 4a-4c of the Patent, det er m i n i n g fo r example whether

cer tain data is in the receive d signa ls, obtain i n g a value from the S I M car d or m emory , draw ing a

-30-random number , and compa ring values. Id

. at 8:63-10:10. This descr iption of the evalua tion unit and its int er ac t i o n wi t h other components reve als that it is a microproc essor. Thus, the Court construes “ evalua tion unit” to mean a “micr oproce ssor.”

3. “Askin g wh en inf

orm ation signal s wi th acce ss authorization data m eans (65) as authorization data (45, 50, 55) are rec eived . . . .” HTC contends that the phrase “an evalua tion unit (60) for asking when information signa ls with acc ess authorization data means (6 5 ) as authorization data (45, 50, 55) are rec eived, whether the acc ess authorization data (45,50,55) include an acc ess threshold value (S)” is insolubly ambig uous and fails to c omply with para g raph 2 of 35 U.S.C. § 112. Chart at 4; see ’751 Patent at 14:23-27 (empha sis added)

. Section 112, para g raph 2, provides that the specific at i o n “shall conclude with one or more claims particula rly pointing out and distinctly claiming the subject matter which the appli ca n t re gar ds as his invention.” 35 U.S.C. § 112, ¶ 2. I PCom proposes that the limit ation be construed to me an “the microproc essor is prog rammed to examine, afte r information signa ls having acc ess authorization data ha ve bee n rec eived by the transc eiver

. . . .” Chart a t 4. Whil e this claim limit ation is clumsy , it can be construed. “Ac cess authorization data means,” is “a means to analy ze acc ess authorization data” to determine w hether such data include

an acc ess threshold value for compar ison with a random or pseudo-r andom number. I n Figure 2 of the ’751 Patent, 65 indicates a transce iver, and 60 is the evalua tion unit or microproc essor. Wit h this understanding , “an evalua tion unit (60) for asking when information signa ls with acc ess authorization data means (65) as authori z at i on data (45, 50, 55) are rec eived, whether the acc ess authorization data (45, 50, 55) include an acc ess threshold value (S)” means “a microproc essor for asking , when information signa ls with acc ess authorization data are rec eived by the transceiver, whether the ac cess a

uthorization data include an a cce ss threshold value . . . .” -31-4. “Askin g . . . wh ether acce ss authorization data (45, 50, 55) includ e an acce ss threshold value (S) for com parison of the acce ss threshold value (S) wi th a random or pseudo-random num ber (R ) ” Wit hin the context of the ’751 Patent, HTC say s that this clause is in plain Eng lish and needs no construction from t h e Court. I PCom sug g ests it means that “the microproc essor is prog rammed to e x amine

. . . the acc ess authorization da ta to identify an ac cess thre shold value for compar ison of the acc ess threshold value with a random (or pseudo-r andom) number.” Chart at 4.

Since the inventors indicated that the microproc essor asks “whe ther” the data include

an ac ce s s threshold value, it must be anticipated that some acc ess authorization data would not include an acc ess t h reshold value, or at least not one that the microproc essor could rec og nize. T h er efore, the Court reje cts I PCom ’s use of the word “identify ” beca use that verb presumes that there will a lway s be an acc ess threshold value subject to ide ntification by the microproc essor. The

rema inder of I PCom ’s pro p o s ed construction unnece ssarily restate s the plain meaning of the limit ation. The Court finds that this phrase is construed acc ording to its plain and o rd i n ary meaning , and no further definition is require d. “Asking

. . . whether acc ess authorizati o n data i n clude an acc ess threshold value for compar ison of the acc ess threshold value with a ra n d o m o r pseudo-r andom number” means just what it say s.

5. “Asce rtaining as a fu nction of an outcom e of a com parison wh ether an acce ss of the at least one sub scriber stati o n (5, 10, 15, 20) to the at least one tele com m uni cations channel is enabled” HTC contends t h at t h i s clause should be construed mostly acc ording to its plain meaning as “compa

ring (S) to (R) to deter

mine whether acc ess to the common telecommunica tions channe l is allowed, or whether the subscriber station (ce ll phone) must wa it f or and chec k the next

-32-transmission of acc ess authorization value.” Chart at 5. I PCom asser ts that it means, “the microproc essor is prog rammed

. . . to deter mine, based on an outcome of a compar ison of the acc ess t h re s hold value and the random (or pseudo-r andom) number, whether to authorize the particula r subscriber

station acc ess rig hts to the common telecommunications cha nnel.” Id

. I PCom contends that HTC’s construction improperly imports the conce pt of waiting for and chec king the next t ra nsmissi on. But this conce pt is fully supported by the specific ation, which states, “[a]fter the end of the prog ram, the mobile sta tion infor ms the user that the acc ess to the r30 was not possible, and waits for further inputs from the user. Alternatively , by means of a waiting loop embodied in the mobile station, the prog ram is executed over ag ain, so there is a wait for the next information signa l with the next bit pattern, and the information signa l is then evalua ted

. . . .” ’751 Patent at 10:3-10; see also HTC’s Resp. [Dkt. # 151], Ex. D. (De p. of Martin Hans) at 175-76 (inventor testified that once the mobile station attempts to g ain acc ess and has been denied authorization, it wil l not imm ediately seek r e-a cce ss). The Court conclude s that HTC’s construction is the better one, as it m o re closely follows the claim terms and the specific ation. The phrase “asc erta ining as a function of an outcome of a compar ison whether an acc ess of the at least one subscriber station (5, 10, 15, 20) to the at least one telecommunication channe l is enable d” is const ru ed t o mean “compar ing an access threshold

v al u e to a random or pseudo-r andom number to deter mine whether acc ess to the co m m o n telecommunica tions channe l is allowed or whether the subscriber station (ce ll phone) must wait for and che ck the ne x t transmission.”

6. “Acc ess authorization data” I PCom define s “a cc es s authorization data” as “acc ess rights information t hat m ust

-33-at least include either (1) information indicating whether acc ess is to be authorized based on an

acc ess threshold value or acc ess class information, and at least one of an acc ess threshold value or

acc ess class information or (2) acc ess threshold value and acc ess class information.” C hart at 5. HTC asser

ts that this phrase means “bit patterns (45, 50, 55) which may include an acc ess threshold value or alterna tively differ ent information from which the mobile station can deter mine whether it has ac cess r ights or must wa it until acc ess authorization data a re tra nsmitt ed ag ain.” Id

. T h e s p e c if ic a ti on to the ’751 Patent indicates that acc ess to the RACH (ra nd o m a c c e s s channe l), by which a plurality of mobile stations/cell phones com m u n i cates with a single base station/cell tower, can be restric ted to “ce rtain user classes” or eac h mobile station can “be provided with its own us er class.” ’751 Patent at 4:14, 21. “U ser c lasses with diffe rent number s of m obile stations can also be provided.

. . . The network opera tor can now enable acc ess to the RACH by the individual mobil e stations as a f unction of their membe rship in one of the

. . . user c lasses.” Id . at 4:22-27. “B y means of information s i gn als,” the network opera tor “informs the various mobile stations which rights for transmitting on the RACH ar e g rante d to the applicable mobile station.” Id . at 4:32-36 (numer ical re fer ence s to Fig . 1 omitted).

At pr e d e te r

mi n e d ti me s , th e base station transmits information signa ls to the first mobile station [as an example for all the mobile stations]

. The information signa ls can be t ransmitted, as shown in FI G. 1, via a signa ling channe l 25, here inafter embodied as an examp l e as a broadc ast control cha

nnel or B CCH. . . . Since the bit pattern sent from the base station is sent not only to the first mobile sta tion 5 but also to all the other mobile sta tions 10, 15, 20, and likewise over the signa ling channe l 25, which as descr ibed is embodied as a BCCH, that is, a p o i nt-to-multiple-point channe l, so

-34-that all the m obile stations rec eive the same ink [ i.e . information] 1 6 at the same time, the bit pa ttern includes the acc ess rig hts g rante d to eac h user class, 35, 40, for the sake of informing the mobile stations of the RACH ac cess r ights they have be en allowe d. Id

. at 4:41-45, 59-67. A random distribution of acc ess authorization occur s beca use the base station also sends an acc ess threshold value S. The acc ess threshold value S is “deliver ed” to the evalua tion unit in the mobile station. Id

. at 5 : 1 9

. T hen, the evalua tion unit “dra ws a random or pseudorandom number R a

nd asks whether the random or pseudo-r andom number R is at least as g rea t as the acc ess threshold value S.” Id. at 5:21-2 4. “Only then is an [si c] acc ess to the r30 [R ACH] allowed.” Id. at 5:24-25.

Howeve r, some classes of users may be enable d to acc ess the RACH even when, “on the basis of the random distribution by means of the acc ess threshold value [such u s er s] are not authorized ac cess.” Id. at 1:56-58. “F or instance, subscriber stations of emer g ency service s, such

as the police or fire depar

tment are assig ned to a prede termined user class of this kind and can then

acc ess the telecommunica tions channe l with priority by means of appropr iate acc ess threshold value ink, independently

of the ra ndom distributi on.” Id. at 1:59-64. Fr om these descr iptions, it is evident that the term “ac cess authorization data” repr esents two differ ent ki nds of i nformation sent by a base station: acc ess rights g rante d to eac h

user class and an acc ess threshold value unless the subscriber is, for instance, an emer g ency service in which event its user class has priority and its acc ess threshold value is not depende nt on random distribution. Notably , even emer g ency service s must have both a user class and an acc ess threshold

The word “ink” is a ty

pog raphic al err or in the ’751 Patent, a place holder acc identally left 1 6 behind by the person wh o translated the Patent from Ger man into Eng lish. Tr. 1/26/10 at 115 (I PCom ). “I nk” re prese nts the Eng lish word “informa tion.” Id

. -35-value to g ain ac cess to the ne twork. HTC thus proposes that ac cess a uthorization data is confined to thre e par ticular bit patterns descr ibed as pref err ed embodiments in the specification. There is nothing in the specification, howeve r, that sug g ests that authorization data is limit ed to these three specific bit patterns. To the contra

ry , the specific ation expressly states that these three bit patterns are set forth

as mere examples:

The numbers of bits used for the acc ess threshold value S, the acc ess channe l [information] Z0, Z 1, Z 2, Z 3, the priority threshold value P and the telecommunic at i o ns service [i nformation] D0, D1, D2 are understood to be mere ly examples, and they can also be incre ased, for example for more extensive signa ling, and reduc ed, for the sake of bandwidth reduc tion. I n this case , the total leng th of the bit pa tterns 4 5 , 5 0, 55 may chang e as well. I ndividual components of th e [i nformation] can optionally also be omitted entirely

. ’751 Patent at 8:54-62. Fur ther, HTC’s proposal that t h e bit patterns “may include an acc ess threshold value or alternatively different information, ” Chart at 5, fails to appre ciate that acc ess authorization data include both acc ess threshold values and acc ess rig hts g rante d to eac h user class. Simi larly , I PCom ’s prop o s ed construction would prese nt an either/or scena rio: “informa tion indicating whether acc ess is to be authorized based on an acc ess threshold value or acc ess class information . . . ,” id ., which is not consistent with the specific ation.

The C ourt construes “ac cess authorization data” to mean “ac cess rig hts g rante d to

eac h user c lass and an a cce ss threshold value.”

7. “Acc ess thre shold value” HTC sug g ests “a numerica l value o p ti o n a ll y in c lu d e d in a c c e s s a u thorization data that is transmitted at periodic intervals for controlling network acc ess. I f a mobile phone deter mines that the numerica l value was transmitted, it will d i re ct l y co mpare the value with a random/pseudo- -36-random numerica l value g ener ated within the mobile phone to deter mine whether it can g ain acc ess rig hts or must wait until acc ess authorization data are transmitted ag ain.” C h ar t at 5-6. I PCom offe rs “a value used to deter mine whether the subscriber station is authorized to acc ess the common telecommunica tions channel.” Id . at 5.

Part of HTC’s definition states that “[i] f a mobile phone deter mi n e s th a t th e n u me r ic a l value was transmitted, it will direc tly compar e the value with a random/pseudo- random numerica l value g ener ated within the mobile phone to deter mine whether it can g ain acc ess rig hts or must wait until acc ess authorization data are transmitted ag ain.” There is no need to i m p o rt t h is limit ation ag ain here

. I t can be found in the “asc erta ining” limit ation discussed above. See Section I I I .B.5 of this Opinion. The Court adopts I PCom ’s straig htforwa rd definition: “ac cess threshold value” is “a value used to deter

mine whether the subscriber station is authorized to acc ess the common telecommunica tions channel.”

C. The ’830 P atent The ’830 Patent is titled Method for Handove r, M o b il e St a ti o n f o r H a n d over and Ba se Station for Handove r. I t descr ibes a m ethod for handing over a link betwee n a cell phone and a network from a first base station to a second base station of t he same network. At the t ime of t he ’830 Patent, handover methods “require[d] that the backbone network be able to support the handover

. Howeve r, in the future this cannot be taken for g rante d, as a number of differ ent backbone networks may be connec ted.

. . . [T] he prese nt invention has the advanta ge t h at handover is also possible with networks in which communication betwee n individual base stations is limit ed.” ’830 Patent at 1:57-2:3.

The inventors de fined some of their terms in the spec ification:

-37-Soft handover: Ha nding of f without the loss of individual data. Har d handover : Handing off in which individual data are lost. For war d handover : The mobile station seek s its targ et base station itself and re g isters there direc tly

. Ba ckwa rd handover: The mobi le s tation reg isters HO [ hand o v er] at t he 1 7 old base station, which then perf orms the sear ch for a suitable new b as e station. Non-ne twork supported: (for war d HO only ) W hen reg istering at t he new base station, the mobile station itself is responsible for ensuring that all link para meter se ttings and link setting s are modified. Networ k supported: The network ensure s that the two b ase stations involved can communicate direc tly

. I n this case , the old base station sends the new base station al l re l evant information reg arding the m obile station and its links. Mobile-station-initiated handover : The mobi le s tation determines that an HO is requir ed and initiates this proce ss. Ba se-station-initiated handover (for ced HO): The base station wants to fre e up capa city or it deter

mines that the radio link is deter iorating and informs the MS [ mobile station] that it is t o car ry out an HO. 1 8 Id . at 1:34-57. The ’830 Patent proposed “[n] ew methods that solve some of the exis ting problems rela ting to forwa

rd HO.” Id. at 2:24-25. “The first method allo ws n et work-suppor ted and nonnetwork- supported handover

. The second method allows base- station-initiated and forwa rd HO to be combined.” Id

. at 2:25-28. “The first part of the prese nt invention allows a ty pe of handover to be implemented that can be perf ormed without netwo rk support” or with network support if the

The spec ification abbr eviates “ handover ” as “ HO.” ’ 830 Patent at 1:27. 1 7 The spec ification abbr eviates “ mobile station” as “MS.” ’830 Pate nt at 1:20. 1 8 -38-network is capa ble of providing support, which the network indicates by sending an additional signa l from the base station. Id. at 2:33-36. “The second part rela tes to a method in which a forc ed forwa rd HO is perf

ormed for which it is much less likely that the [m obile station] will have to clea r its link.” Id. at 2:39-41. Claim One claims: A mobile st at i o n for use with a network including a first base station and a second base station that achieve s a handove r fr om the first base sta tion to the second base station by : storing link data

for a link in a first base station, holding in re serve for the link re source s of the first ba se station, and when the link is to be hande d over to the se cond base station: initially maintaining a

storag e of the link data in the first base station, initially causing the re s o u rces of the first base station to rema in held in rese rve, a nd
at a later timepoint deter mined by a fi x ed period of time prede fined at a beg inning of the handover, deleting the link data from the firs t base station and fre ein g u p the resour ces of the first base station, the mobile station comprising :

an arr ang ement for rea ctivating the link with the first base station if the handover is unsucce ssful. ’830 Patent at 8:12-32. Claim Eig hteen is almost identical to Claim One. 1 9

Claim Eig hteen, ’830 Patent at 10:61-12:6, is identical to Claim One, id

. at 8:12-32, except 1 9 that the phrase in Claim One that states, “at a later timepoint deter mined by a fixed period of time predefined at a beginning of the handover , deleting the link d ata from the first base station and fre eing up the re source s of the first ba se station .

. . .” is modified in Claim Eig hteen to state, “a t a later timepoint deter

mined based on a message from one of the mobile station and the second base station regarding a succe ssful com pletion of handing over the link , deleting the link da ta from the first base station and freeing up the resource s of t he first base station . . . .” Compare ’830 P atent at 8:25-28 (Claim One) with id . at 11:7-12:4 (Claim Eight)

.
-39-1. “Arr angem ent for reac tivating” (Claim s 1 and 18) The parties are in ag ree ment that the term “ar rang ement for rea ctivating ” is a meansplus-function term that is subject to the require ments of p ar agr ap h 6 o f 35 U.S.C. § 112, which require s eac h descr ibed function to also have a structure

. The function o f “arrang ement for

rea ctivating ” is “to rec ommence communications with the first base station over the traff ic channe l that alre ady was allocated and used prior to the handover attempt” (as asser t ed b y HT C ) or, m ore b ri ef l y , “to rea ctivate the link with the first base station if the handover is unsucce ssful ” (a s descr ibed by I PCom ). As explained previously , when a claim is expressed in means-plus-f unction lang uag e and it does not rec ite a definite stru ct u re in support of its function, the claim must be construed to cover that which is descr ibed in the specific ation and equivalents, Medtronic , 248 F.3d
at 1311, and if one skilled in the art could not deter mine the bou n d s o f the claim by rea ding the specific ation and equiva lents, the claim is indefinite. See Halliburton , 514 F.3d a t 1249.

HTC asser

ts that this claim is indefinite under p ar agr aphs two and six of § 112. “[C] lear and convincing evidenc e that a skilled artisan could not discern the boundarie s of the claim based on the claim lang uag e, the specific ation, and the prosec ution history , as well as [t he acc used infring er’ s] knowledg e of the rele vant art are a” is require d to find a claim invalid on indefiniteness g rounds. Halliburton , 514 F.3d a t 1249-50. HTC fails to meet this standard.

An analy sis of whether one skilled in the art would understand the bounds of the claim when rea d in the light of the specific ation is nece ssary to deter mine whether a claim is definite. See Personalized Media , 161 F.3d at 705. “I f the claims rea d in light of the specific ation rea sonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Id

. Thus, the question is whether the “ar rang ement” is e ither identified or obvious to one skilled in the art.

-40-I n considering whether a claim term rec ites sufficie nt structure to avoid application of section 112 ¶ 6, we ha ve not r equire d the claim term to denote a specific struct u re . I nstead, we have held that it is sufficie nt if the claim term is used in common parla nce or by persons of skill in the pertinent art to desig nate structure , even i f the term cover s a broad class of structure s and even i f t he term identifies t he structure s by

their func tion.

. . . . Thus, while it is true that the t er m “c onnector assembly ” does not bring to mind a particula r structure , that point is not dispositi ve. What is important is whether the term is one that is understood to descr ibe structure , as opposed to a te rm that is simply a nonce word or a verba l construct that i s n o t re co g nized as t he name of st ructure and is simply

a substitute for the ter

m “means f

or.” Lighti ng W

orld , 382 F.3d a t 1359-60. I PCom say s that the structure repr esente d by the “ar rang ement for rea ctivating ” is “a proce ssor connec ted to a transce iver and prog rammed to formulate and send messag es to rea ctivate the link, if the handover is unsucce ssful.” Chart at 6 (citing ’830 Patent at 6:30-44; 7:48-52; 7:65- 83; Fig

. 1 & Fig

. 5 (steps 406-410))

. I PCom arg ues that one skilled in the art would understand what is “plainly

understood to be pr esent in a mobile station” and that “the descriptions in the patent of

rec eiving messag es over a radio link ( see, e.g. , . . . Fig

. 1; 1:20-21), interpre ting the messag es (F igs. 2-6; 6:34-36), making dec i s i o ns based on the messag es (F ig. 5; 6:37-38), formulating messag es based on the decisions (F ig. 5; 6:37- 38), and sending messag es back over a radio link (F ig. 5, r ef. 408; 6:37)” would indicate to one skilled in the art the require d transce iver and proper ly prog rammed proce ssor. I PCom ’s Resp. [Dkt. # 150] at 49. HTC’s expert, Dr. Christopher Rose, conce ded this point: I ndeed, D r. Rose’s c oncessions that a mobile sta tion “has to be a

ble to talk to the network so y ou’ve g ot to have a transce iver” and would be understood to have “some sort of proc es s o r. Something has to -41-handle the data” ends this dispute as they establish exactly

the same point I PCom made in opening – skilled persons would understand the specific ation to disclo s e s ufficie nt structure

. (Ex. 160B at 15:25- 16:14.) Dr. Rose’s conce ssions are devasta ting to HTC’s position.

2 0 Id. T h e C ourt ag ree s. The word “ar rang ement” by itself has no common or s p ec i al meaning that one skilled in the art of telephony would know meant a proce ssor and transce iver. But in the context of the ’830 Patent and the art, the Court has no doubt that one skilled in the art would immediately deduce that a proce ssor with a transce iver was the structure indicated by the term. The Court construes “ar

rang ement for rea ctivating ” in Claims 1 and 18 as meaning “a proce ssor

connec ted to a tra

nsceive r and pr og rammed to for mulate and se nd messag es to r eac tivate the link, if the handove r is unsucce ssful.”

2. “Mobile stat i o n . . . th a t achieves a hand over by: storing . . . the m obile station com prisin g” (Claim s 1 and 18) Claims One and Eig hteen reci t e a “m o b ile station for use with a network

. . . that achie ves a handover from the first base station to the second base station by : [performing six steps, including storing link data, holding link resour ces in rese rve, and later deleting the link data], the mobile station comprising : an arr ang ement for rea ctivating the link with the first base station if the handover is unsucce ssful.” ’830 Patent at 8:12-25 (Claim One) ; id

. at 10:61-12:6 (Claim Eig hteen)

. HTC contends that these Cl aims are indefini t e u n d er p ar agra ph 2 of 35 U.S.C. § 112 — that they improperly denote both an appar atus (the mobile station) and six method steps (storing , holding, and later deleting ). Parag raph 2 require s that the “spec ification shall conclude with one or more claims

The rele vant portion of the deposition of Dr. Rose was filed with I PCom ’s Response [Dkt. 2 0 # 150], as attachment 21. -42-particula

rly pointing out and distinctly claiming the subject matter which the applicant reg ards as his invention.” 3 5 U. S .C. § 112, ¶ 2. Fur ther, § 2173.05(p)( I I ) of the Manual of Patent Ex amining Procedur e provides that “a single claim which claims both an appar atus and t h e m et h o d steps of using the appar atus is indefinite under 35 U.S.C. § 112, second para g raph.” MPEP § 2173.05(p)( I I ) (8th ed., Aug . 2001, revised July 2010). Ag ain, a claim is indefinite only if the claim is insolubly ambig uo u s and no narr owing construction ca

n be applied, Honey well , 341 F.3d a t 1338-39, and only when a person of ordinary skill in the art could not deter mine t h e m et es and bounds of the claim. Halliburton , 514 F.3d at 1249. Clear and convincing evidenc e is require d to find a claim invalid on indefiniteness g rounds. Id . at 1249-50. HTC ha s met this burden.

A single p at en t may include claims direc ted to one or more of the classes of patentable subject matter, but no single claim may co v er m ore than one class of subject matter. Microproce

ssor Enhance ment Corp. v. Texas Instruments Inc. , 520 F.3d 1367, 13 7 4 (F ed. Cir. 2008). Thus, a claim cover ing both an appar atus and a method of using that appar atus is invalid for indefiniteness. IPXL, Holdings, L.L.C

. v. Amazon.com , I nc., 430 F.3d 1377, 1384 (F ed. Cir. 2005). I n IPXL , the Feder al C ircuit examined a patent claim s tating, “ [t] he system of claim 2 [ ] wher ein the predic ted transac tion information comprises both a transac tion ty pe and transac tion para

meters associate d with that transac tion ty pe, and the user uses the input means to either chang e the predic ted
transac tion information or acc ept the display ed transac tion ty pe and transac tion para

meters.” IPXL , 430 F.3d at 1384 (empha sis in orig inal). The court held that the claim was invalid for indefiniteness b ec au s e i t re ci ted a sy stem (“the sy stem of claim 2”) and a method step (“the user uses the input means” ). The court deeme d this lang uag e indefinite beca use it r esulted in confusion as to whether

-43-infring ement would occur when someone create d such a “sy stem” or when a user actua lly used such

“input means.” Id

. “[A]s a result of the combination of two separ ate statutory classes of invention,

a manufa cture r or seller of the claimed appar atus would not know from the claim whether it mig ht also be liable for contributory infring ement beca use a buy er or user of the appar atus later perf orms the claimed method of using the appar atus.” Id

. at 1384. The IPXL court held that the patent claim

was invalid under section 112, para g raph 2, beca use it rec ited both a sy stem and the method for using that sy stem and thus it did not apprise a person of ordinary skill i n the ar

t of its scope. Id .; accord Ariba, Inc. v. Emptoris, Inc. , No. 0 7 -9 0 , 2008 WL 3482521, at *6-7 (E.D. Tex. Aug

. 7, 2008) (finding a patent claim indefinite and thus invalid beca use it cover ed an appar atus (a bidding device )

as well as a method step (“w here in a bid submitt ed by the p o t en t i al seller opera ting the bidding device is compare d to the corr esponding bid ceiling ”) (empha sis added) ); see also Rembrandt Data T echs., LP v. AOL, LLC , 673 F. Supp. 2d 420, 426 n.3 (E.D. Va. 2009) (par ties agr ee d t h at an appar atus claim that included a method step was dr afte d in error ). Even though no single patent claim may cover more than one class of subject matter,

a method claim is not nece ssarily indefinite when it uses structura l lang uag e and an appar atus claim is not nece ssarily indefinite when it uses functional lang uag e. Microproce ssor, 520 F.3d at 1374-75. For example , i n Microproce ssor the court found an appar atus claim to be valid even though it contained some functional lang uag e. The claim at issue rec ited, in part, “a pipelined proce ssor for executing instructions comprising : . . . fetc hing means for fetc hing source opera nds specifie d by said opera nd specifie rs; opera ting means for perf orming the oper ation specifie d by said opcode ; . . . .” The court held that the claim was “cle ar l y limit ed to a pipelined proce ssor possessing the rec ited
structure and capa

ble of perf

orming the rec ited functions” and was thus not indefinite under IPXL

.

-44-Id . at 1375. I PCom arg ues that Microproce ssor applies, that the method steps in Claims One and Eig hteen are mere functional lang uag e used to de scribe the appar atus itself. I PCom also relies on Intellec t W

ireless Inc. v. Kyoce ra Comm’ns, Inc. , No 08C1350, 2009 WL 3259996, at *5 (N.D. I ll. Oct. 8, 2 0 0 9 ), wh er e t he court reje cted an alleg ation of indefiniteness. The patents at issue in Intellec t W

ireless claimed a “wire less portable communications device for u s e b y a me s s a g e r e c ip ie nt for rec eiving a picture from a messag e orig inator” including a “re ceive r” that is “oper ably coupled
to rec eive a messag e from a messag e cente r over a wirele ss connec tion.” Id

. at *4. The claims descr ibed the messag e the rec eiver was capa ble of rec eiv i n g as “t he messag e including a nonfac simil e picture supplied by the messag e orig inator and a caller I D automatically provided by a communication network that identifies the telephone number of the messag e orig inator, the message originator sending the caller ID with the picture to the message cente r .” Id

. (empha sis in orig inal). The defe ndant contende d that the italicized phrase rec ited a method step in an appar atus claim and was indefinite. The court reje cted this arg ument, explaining t hat t he allege d method lang uag e (1) did not direc tly rela te to the functionality of the claimed appar atus and (2) descr ibed an act by a third party , the messag e orig inator, in sending a messag e to a messa g e ce nter. Id . at *5.

HTC relies on IPXL and Ariba and arg ues that Claims One and Eig hteen of the ’830 Patent are indef

i n i t e s i n ce t hey purport to cover an appar atus but also rec ite a list of steps for achie ving handover from one base station to another

. HTC’s Opening Br

. [Dkt. # 134] at 16. “The claim lang uag e does not clear ly demar cate the invention, and a mobile station ma nufac turer is le ft
to wonder whether infring ement occur s when the mobile station is manufa cture d or when the mobile station perfor

ms the steps rec ited . . .” Id

.

-45-HTC has the better arg ument. The patent claim in Microproce ssor was limit ed to a pipelined proce ssor descr ibed as having cer tain structure to enable it to perf orm cer tain tasks, such

as “fe tching means for fetc hing source opera nds specifie d by said opera nd specifie rs” and “oper ating

means for perf

orming the opera tion specifie d by said opcode.” The functional lang uag e of the claim

was intended to define and limit the rec ited structure

. I n contra st, Claims One and Eig hteen of the ’830 Patent rec ite an appar atus, a “mobile station ,” that achie ves a handover from the first base station to the second base station by perf orming six method steps such as storing link data, holding link res o u rce s in rese rve, and later deleting the link data. The claim descr ibes the appar atus as actua lly perf

orm i n g the method steps; it does not mere ly define the appar atus as a structure has

cer tain means enabling it to perf orm cer tain steps. The claim in the Intellec t W ireless case is also distinguishable. There , the alleg ed method lang uag e did not direc tly rela te to the functionality of the claimed a ppara tus at all. The method lang uag e instead de scribed a n act by a third par

ty

. The prosec ution his t o ry supports the asser tion that Claims One and Eig hteen are appar atus claims containing method steps. I n response to the PTO Ex aminer’ s question reg arding how the ’830 Patent could be distinguished from prior art, the inventors relied on the method steps, the claimed proce ss, as follows, “[T] he Ex aminer once ag ain cites [t he prior art ref er en ce ] fo r teac hing ‘a handover from t h e fi rs t b as e station to the second base station.’ Howeve r, the cited section of [the prior a

rt ref ere nce] clea

rly descr ibes a proc ess that is completely differ ent from the claimed process : [The prior art ref ere nce] descr ibes a so-ca lled ‘semi-ha rd handoff

,’ which occur s within one and the same base station.” HTC’s Reply [Dkt. # 156], Ex

. 1 (Oblon Dec l.), Ex

. C (Jan. 30, 2004 Resp. to Office Action at 8 (e mphasis added) ).

Claims One and Eig hteen rec ite an appar atus and six method steps that the appar atus

-46-perf

orms, direc tly rela ting to the functioning of the appar atus and not rela ting to any act perf ormed by a third party

. I n sum, Claims One and Eig hteen improperly claim both an appar atus and method steps and thus are indefinite and inva lid.

3. “Lin k data” (Claim s 1 and 18) HTC asks t hat t his term be construed and s ug g ests that it means “the data required for a link that both the first base station and the m o b i l e st ation are capa ble of sending to a second base station to achie ve a handover .” Chart at 6. I PCom offe rs “data descr ibing the identit y and fea tures of the mobile station and the ca ll in which the mobile station is enga g ed.” Id.

Dr. Rose, HTC’s expert, t es t i fi ed that link data is a “g ener ic term” that would “desc ribe a number of differ ent ty pes of information, including

. . . a session link, a fix ed link, a data

r a te o r information reg arding channe liz ation, timing, timing offse t, fre quencie s, etc

. ” I PC o m’ s Re s p . [Dkt. # 150] at 52-53 (citing Rose Dec l. ¶ 23). I t is critica l to transfe r “conne ction information” as part of a handover

. Id. (Rose Dec l. ¶ 14). HTC err s by proff ering a co nstruction that define s the
term by using the same term — “ data required fo r a l i nk ” — and then focusing on its use, not its meaning . As a “ g ener ic term,” “link data” cover s many kinds of data nece ssary to maintain a call and nece ssary to a succe ssful handover

. “Lin k d at a” is construed to mean “data descr ibing the identity and fe ature s of the mobile station and the c all in which the mobile station is eng ag ed.” 4. “Holdi ng in rese rve . . . ; Initiall y causing the resourc es of the fi rst base station to re m ain h eld” (Claim s 1 and 18) Claim One states that what is claimed is a “mobile station for use with a network

. . . that achie ves a handover from the first base station to the second base station by : storing link da ta

. . . , holding in rese rve for the link resour ces of the fi rs t b ase station, and when the link is to be handed ove r to the sec ond base station:

. . . initially causing the resour ces of the first base sta tion -47-to rema in held in rese rve . . . .” ’830 Patent at 8:12-25. HTC asks that the Court find this limit ation

incapa ble of construction beca

use “holding in r eser

ve” is indistinguisha

ble from “initially

causing the resour ces of the first base station to rema in held.” I PCom arg ues that “holding in rese rve” means “tempora rily keeping back resour ces of the first base station” and that “initially causing the resour ces of the first base station to be held” means “at least temporar ily keeping back the resour ces of the first base station.” N either is cor rec t. What is claimed, of course , is a cell phone that works within a network that includes
at least two base stations. There fore , the actions of “holding ” and “initia l l y ca u sing” must occur within the mobile station as it implements its handover alg orithms, which are the focus of the ’830 Patent and are descr ibed at leng th in the specific ation. The structure of the Patent makes it clea r that the first base station responds to messag es (sig nals) from the mobile station to “hold in rese rve”

cer tain resour ces and the mobile station “initially cause [s] ” the first base station to continue to hold those resour ces in rese rve during the actua l ha ndover to the second base station. Claim One states that what is claimed is a mobile station that achie ves a handover in a network by “holding in rese rve for the link resour ces of the first base station, and

. . . initially causing the resour ces of the first base station to remain held in re serve . . . .” ’830 Patent at 8:12-25 (empha sis a dded). These messag es from the mobile station to the base station occur at slightly differ ent times during a handover

. The mobile station first cause s the first base station to store link data and to hold resour ces in rese rve for the link; ever so slig htly

later, “ when the link is to be hande d over to the s econd base station,” the mobile station tells the first base s t at i o n t o maintain the storag e of the link data and cause s the

resour ces of the first base station “to rema in held in rese rve” until a fix ed period of time expires and then the link data is dele ted from the f irst base station. See id. at 8:19-27.

-48-Thus, HTC incorre ctly arg ues that these are the same limit ation. I PCom incorre ctly

g ives them the same construction. “Holding in rese rve” is construed to mean “ca using a first base station to prese rve resour ces for a link.” “I nitially causing the resour ces of the fir st base station to

rema in held in rese rve” i s construed to mean “ca using a first base station to continue to hold link

resour ces w hile a handove r to a sec ond base station is attempted.”

5. “At a later tim epoint deter m ined by a fi xed period of ti me p redef ined at a beginn ing of

the hand over” ( Claim 1) The full phrase of t his limit ation states: “at a later tim epoint deter mined by a fixed period of time prede fined at a b egi nning of a handover , deleting the link data from the first base station and fre eing up the resour ces of the first base station

. . . . ” ’8 3 0 Patent at 8:25-29. The specific ation explains:

I t is there fore proposed that in the case of a handover the base station initially continue to hold the data and resour ces. To acc omplish this a timer, for example, is started when the old base st at i o n asks the mobile station to look for a new base station (or when the mobile station confirms t h i s). The base station holds the resour ces of the mobile station in rese rve until it rec eives the reque st to redirect the links or until the timer runs out. During this time the mobile station has time to look for a new base station that is capa ble of car ry ing the traff ic. I f the sear ch fo r a new base station is unsucce ssful, the [m obile station] re- reg isters at its old [base statio n ] an d keeps its previous settings. I f the [m obile station] does not [re-]reg ister within t h e t i m e d efine d by the timer the old base station fre es up the resour ces a

nd deletes the [m obile station] from its lists

. Id . at 7:41-54. HTC proposes that the cited limit ation be construed to be “the base station deleting the link data and fre eing up the link resour ces if a prede termined time passes afte r the mobile station beg an sear ching for a new base station.” This define s more than the limit ed phrase , quoted above. I PCom pref

ers, “whe n the time, which has been prese t and initiated befor e handover , expires.” The -49-Court adopts I PCom ’s more limit ed definition. The phrase “at a later time p o i n t d eter mined by a fix ed period of time prede fined at a beg inning of a handover ” means “whe n the time, which has been prese t and initiated befor e handove r, expires.” IV. CONCLUSION The Claims of the Patents are deeme d to have the meaning s ascr ibed to them above. Fur ther, HTC’s Motion for Summary J udg ment [Dkt. # 132] will be denied. A memorializing Orde r

acc ompanies this Memorandum Opinion.

DATE: Aug ust 25, 2010 /s/ ROSEMARY M. COL L YER United States District J udg e

-50-