IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

MICROSOFT CORPORATION, 

Defendant.

Civil Action No. 6:20-cv-454

Civil Action No. 6:20-cv-461

Civil Action No. 6:20-cv-465

DEFENDANT’S SUR-REPLY MARKMAN BRIEF

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 1 of 33
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TABLE OF CONTENTS

UNCONTESTED TERMS IMPROPERLY BRIEFED BY WSOU..................................... 1

DISPUTED TERMS FOR CONSTRUCTION ..................................................................... 2

A. Terms of U.S. Patent No. 7,106,702 (Case No. 6:20-cv-00461-ADA)............................. 2

1. “active nodes” ................................................................................................................ 2

2. “monitoring the active nodes to determine if one of the active nodes gets 

disconnected from the network”, “said active nodes monitoring one another to detect if 

an active node becomes disconnected from the network”, and “monitoring the active 

nodes to detect if one becomes disconnected from the network”.......................................... 4

3. “each of said nodes having a user database” ................................................................. 6

4. “activating the AAA functions of the active nodes”...................................................... 8

5. “geographic distance therebetween is maximized”, “geographic distance between 

active nodes is maximized”, “geographic distance between it and the active node which 

got disconnected from the network is maximized”, and “node selected in step (d) is 

chosen to maximize a sum of a geographic distance between the active nodes and a 

geographic distance between the node selected in step (d) and the node which got 

disconnected from the network” ............................................................................................ 9

6. “logging changes to the user databases for the active nodes thereby updating the 

same to reflect changes in information contained therein” and “wherein each of the 

active nodes logs changes to its user database thereby updating the same to reflect 

changes in information contained therein” .......................................................................... 11

B. Terms of U.S. Patent No. 7,366,160 (Case No. 6:20-cv-00454-ADA)........................... 12

1. “selecting two or more parameters of a network” and “measuring and/or 

calculating at two or more times values of the network parameters” .................................. 12

2. “network parameter”.................................................................................................... 15

3. “determining at two or more times the value of a service indicator”, “determining 

a trend of the indicator”, and “determining as a function of the trend of the indicator” ..... 16

4. “service indicator” ....................................................................................................... 16

5. “determining as a function of the trend of the indicator a time of the service 

indicator crossing a defined threshold”................................................................................ 17

6. “neural network determines rules of association between a service trend and 

service parameter values” .................................................................................................... 19

7. “calculating a mathematical expectation of financial loss as a function of the 

network service trend determined” ...................................................................................... 20

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 2 of 33
ii

8. “determining a capacity to provide a network service at a given time” ...................... 21

C. Terms of U.S. Patent No. 8,274,902 (Case No. 6:20-cv-00465-ADA)........................... 21

1. “network that branches, downstream of the collection point”..................................... 21

2. “estimating a packet loss rate” and “an estimate of a packet loss rate”....................... 23

3. “packet loss rate” ......................................................................................................... 24

4. “wherein the collected data relate to packet losses on the portion of a GPRS core 

network extending from the collection point to a plurality of [base / mobile] stations” ..... 25

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 3 of 33
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TABLE OF AUTHORITIES

Page(s)

Cases

Abbott Labs. v. Sandoz, Inc.,

544 F.3d 1341 (Fed. Cir. 2008)................................................................................................24

Apple, Inc. v. Ameranth, Inc.,

842 F.3d 1229 (Fed. Cir. 2016)................................................................................................13

Aventis Pharma S.A. v. Hospira, Inc.,

675 F.3d 1324 (Fed. Cir. 2012)................................................................................................18

Boss Control, Inc. v. Bombardier Inc.,

410 F.3d 1372 (Fed. Cir. 2005)................................................................................................19

Cave Consulting Grp., LLC v. OptumInsight, Inc.,

725 F. App’x 988 (Fed. Cir. 2018) .................................................................................. passim

Dow Chemical Co. v. Nova Chemicals Co. (Canada),

803 F.3d 620 (Fed. Cir. 2015)..............................................................................................9, 10

dunnhumby USA, LLC v. emnos USA Corp.,

No. 13-cv-0399, 2015 WL 1542365 (N.D. Ill. Apr. 1, 2015).................................................11

Edwards Lifesciences LLC v. Cook Inc.,

582 F.3d 1322 (Fed. Cir. 2009)................................................................................................19

Embrex, Inc., v. Serv. Eng’g Corp.,

216 F.3d 1343 (Fed. Cir. 2000)................................................................................................23

Fenner Invs., Inc. v. Cellco P’ship,

778 F.3d 1320 (Fed. Cir. 2015)................................................................................................18

Fife & Drum, Inc. v. DelBello Enters., LLC,

No. 17-3676, 2019 WL 5692124 (D.N.J. Nov. 4, 2019) ...........................................................9

Halliburton Energy Servs., Inc. v. M-I LLC,

514 F.3d 1244 (Fed. Cir. 2008)................................................................................................11

Helmsderfer v. Bobrick Washroom Equip., Inc.,

527 F.3d 1379 (Fed. Cir. 2008)..........................................................................................12, 15

Horizon Pharma, Inc. v. Dr. Reddy’s Labs. Inc.,

– Fed. App’x. –, No. 2019-1607, 2021 WL 48428 (Fed. Cir. Jan. 6, 2021)............................25

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 4 of 33
iv

Horus Vision, LLC v. Applied Ballistics, LLC,

No. 13-cv-5460-BLF, 2014 WL 6989233 (N.D. Cal. Dec. 9, 2014).........................................8

Howmedica Osteonics Corp. v. DePuy Orthopaedics, Inc.,

No. 11-CV-6498 SDW MCA, 2013 WL 3455727 (D.N.J. July 9, 2013)..................................6

Inguran, LLC v. ABS Global, Inc.,

No. 17-cv-446-wmc, 2019 WL 943515 (W.D. Wis. Feb. 26, 2019).......................................10

Int’l Test Sols., Inc. v. Mipox Int’l Corp.,

No. 16-cv-00791-RS, 2017 WL 1367975 (N.D. Cal. Apr. 10, 2017)......................................11

Interval Licensing LLC v. AOL, Inc.,

766 F.3d 1364 (Fed. Cir. 2014)..........................................................................................20, 21

Interwoven, Inc. v. Vertical Comput. Sys., Inc.,

No. C 10-4645 RS, 2011 WL 6936186 (N.D. Cal. Dec. 30, 2011).........................................23

Iris Connex, LLC v. Dell, Inc.,

235 F. Supp. 3d 826 (E.D. Tex. 2017).................................................................................2, 23

Kinik Co. v. Int’l Trade Comm’n,

362 F.3d 1359 (Fed. Cir. 2004)............................................................................................7, 13

Light Transformation Techs. LLC v. Lighting Sci. Grp. Corp.,

No. 2:12-cv-826-MHS-RHP, 2014 WL 3402125 (E.D. Tex. July 11, 2014)......................8, 11

M-I LLC v. FPUSA, LLC,

No. 15-cv-406-DAE, 2015 WL 4460305 (W.D. Tex. July 21, 2015) .................................7, 13

MacroSolve, Inc. v. Antenna Software, Inc.

No. 6:11-cv-287-MHS-KNM, 2014 WL 243429, at *4 (E.D. Tex. Jan. 21, 

2014) ........................................................................................................................................13

Nautilus, Inc. v. Biosig Instruments, Inc.,

134 S. Ct. 2120 (2014)...............................................................................................................9

On Demand Mach. Corp. v. Ingram Indus., Inc.,

442 F.3d 1331 (Fed. Cir. 2006)................................................................................................19

Phoenix Licensing, L.L.C. v. Advance Am.,

No. 2:15-CV-1367-JRG-RSP, 2016 WL 6217180 (E.D. Tex. Oct. 25, 2016) ........................20

RideApp, Inc. v. Lyft, Inc.,

No. 18-cv-07152-JST, 2019 WL 7834175 (N.D. Cal. Oct. 16, 2019).......................................9

Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC,

824 F.3d 999 (Fed. Cir. 2016)....................................................................................................5

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 5 of 33
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Saffran v. Johnson & Johnson,

712 F.3d 549 (Fed. Cir. 2013)....................................................................................................5

Sonix Tech. Co. v. Publications Int’l, Ltd.,

844 F.3d 1370 (Fed. Cir. 2017)..................................................................................................8

SpaceTime3D, Inc. v. Samsung Elecs. Co., Ltd.,

No. 2:19-cv-00372-JRG, 2020 WL 7183538 (E.D. Tex. Dec. 7, 2020)............................12, 15

Teva Pharm. USA, Inc. v. Sandoz, Inc.,

789 F.3d 1335 (Fed. Cir. 2015)................................................................................................10

Trs. of Columbia Univ. v. Symantec Corp.,

811 F.3d 1359 (Fed. Cir. 2016)......................................................................................5, 18, 19

Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,

587 F.3d 1339 (Fed. Cir. 2009)................................................................................................20

Watts v. XL Sys., Inc.,

232 F.3d 877 (Fed. Cir. 2000)..............................................................................................7, 23

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 6 of 33
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In its reply brief, WSOU continues to turn the process of claim construction on its head. 

WSOU resists any attempt to attribute a definite meaning to a claim term, ignoring the 

specifications’ descriptions of the problems to be solved, the state of the art, and the inventions 

themselves. WSOU ignores that the purpose of claim construction is to assist the jury, and that 

the specification is the single best guide to the meaning of claim terms. Finally, WSOU 

repeatedly implies that expert testimony is required for claim construction, despite the fact that 

courts routinely resolve claim construction disputes without relying on experts. For these 

reasons and the reasons set forth below, the Court should adopt Microsoft’s proposed 

constructions of the disputed terms.

UNCONTESTED TERMS IMPROPERLY BRIEFED BY WSOU

There is no dispute regarding the first two terms briefed by WSOU. To clarify the 

record, WSOU’s attempt to blame Microsoft for “misunderstanding which terms Microsoft seeks 

to construe” is based on a falsehood and belied by WSOU’s own actions. WSOU Reply Brief 

(“Reply) at 1. Microsoft’s position was not, as WSOU asserts “a shifting target up until the 

week before the opening brief was due to be filed.” Id. Microsoft informed WSOU that it did 

not believe these terms required construction ten days before WSOU’s opening brief was due. 

See Microsoft Responsive Brief (“Resp.”), Ex. 1. Thereafter, WSOU expressly relied on the 

parties’ agreement to drop these terms as a justification for reducing the number of pages 

allocated for Markman briefing. Id., Ex. 2 (“With the recent reduction in claim terms since 

yesterday, we think the briefing limit should revert back to forty [pages]”).

Nor does the parties’ mutual agreement to drop these two terms support the notion that 

“Microsoft believes it alone is allowed to identify terms for construction.” Reply at 1. The fact 

that the parties have briefed multiple terms identified only by WSOU for construction (e.g., 

“active nodes” and “packet loss rate”) clearly disproves WSOU’s nonsensical suggestion.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 7 of 33
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DISPUTED TERMS FOR CONSTRUCTION

A. Terms of U.S. Patent No. 7,106,702 (Case No. 6:20-cv-00461-ADA)

1. “active nodes”

The claimed invention of the ’702 patent is designed to leverage “redundancy in 

functionality and/or resources so that one or more back-ups may take over when functions and/or 

resources are lost due to failure or otherwise.” ’702 patent, 1:23-26. To provide this 

redundancy, and purportedly solve the problem of resource loss, the patent explicitly discloses a 

one-to-one relationship between an active node and a user database. Microsoft’s proposed 

construction captures this relationship. Under WSOU’s interpretation of “active nodes,” the 

claimed invention of the ’702 patent would fail to solve the problem it sets out to address.

The parties agree that the word “active” refers to the state of AAA functionality. But that 

is only half of the term in dispute; “nodes,” a term of art, must be addressed as well. A jury will 

not understand what it means for a node to be in an “active state of AAA functionality” without 

further guidance, and the purpose of claim construction is to assist the jury in understanding the 

scope of the claims. See Iris Connex, LLC v. Dell, Inc., 235 F. Supp. 3d 826, 847 (E.D. Tex. 

2017) (citing Embrex, Inc., v. Serv. Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000)). Only 

Microsoft’s construction achieves this purpose, explaining that “active nodes” carry out the AAA 

functions for the network by employing their respective databases, as described in the 

specification. See ’702 patent, 2:8-11. 

The specification informs a Skilled Artisan that each “active node” has its AAA functions 

turned on (a point on which the parties agree), and that each active node has its own user 

database, as described in Microsoft’s response. Despite its conspicuous brevity, the patent is 

thoroughly consistent in this regard. Specifically, the Abstract states each node “has a user 

database” and that “active nodes use their respective user databases to conduct the AAA 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 8 of 33
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functions for the network.” The specification further describes AAA functional nodes (whether 

active or non-active) as “capable of maintaining a user database associated with the AAA 

functions.” ’702 patent, 3:9-10. And Figure 2 and its corresponding text, which provides the 

sole “detailed description” for a method claim such as claim 1, describes “provid[ing] initial user 

databases for all” nodes. See id., Fig. 2, Item 20.

The requirement that each active node has its own user database is not limited to certain 

embodiments. It is tied to the fundamental purpose of the claimed invention to preserve 

redundancy of AAA functionality even if nodes are “destroyed by an enemy,” while also 

addressing network bandwidth issues that could arise from user database synchronization traffic 

among all of the nodes. See, e.g., id., 1:23-53; see also infra, Section II.A.3 “each of said nodes 

having a user database”). The patent disparages sharing a central database, id., 1:31-35, and 

proposes selecting two of the nodes to be active, and synchronizing the user databases of the 

active nodes, id., 2:17-32. See Cave Consulting Grp., LLC v. OptumInsight, Inc., 725 F. App’x 

988, 995 (Fed. Cir. 2018) (relying on statements about the difficulties and failures in the prior art 

in the absence of express disclaimer where “the specification does more than discuss certain 

disadvantages of the prior art methods. It distinguishes its invention from them, particularly 

pointing out what the invention does not use.”).

WSOU offers no response to the fact that the ’702 patent’s Abstract expressly provides 

that active nodes have their own respective user databases. Moreover, WSOU’s reply brief drops 

its previous untenable argument that Microsoft’s proposed construction would somehow exclude 

a preferred embodiment of the ’702 patent. See WSOU Opening Brief (“Br.”) at 5-6. It does 

not. Instead, WSOU attacks Microsoft’s accurate statement that a “duplicate copy” of a user 

database, as recited in claim 8, is not the same as an initially-provisioned user database. WSOU 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 9 of 33
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willfully misconstrues Microsoft’s construction as requiring two databases per active node. 

Reply at 3. Microsoft has never argued or implied such a requirement. Rather, any node that 

carries out AAA functionality1 by employing its own (singular) user database, satisfies 

Microsoft’s proposed construction of “active node.” 

2. “monitoring the active nodes to determine if one of the active nodes 

gets disconnected from the network”, “said active nodes monitoring 

one another to detect if an active node becomes disconnected from the 

network”, and “monitoring the active nodes to detect if one becomes 

disconnected from the network” 

Microsoft’s proposed construction captures the concept of the decentralized monitoring 

process described in the ’702 patent, in which two active nodes monitor one another to detect if 

one becomes disconnected from the network. The inventors of the ’702 patent identified this 

process as a core aspect of the invention, which represented an advantage over the prior art. The 

Court should not read the “monitoring” phrases to cover embodiments with the purported 

disadvantages that the ’702 patent seeks to overcome.

 In the Background section of the ’702 patent, the inventors explained that the purported 

invention was meant to overcome problems arising from a centralized architecture, whereby the 

failure of a single component could disrupt the entire network. See, e.g., ’702 patent, 1:31-35 

(“Should a node be the only one capable of AAA functionality and/or be the sole location for 

maintenance of the user database, the destruction of that node or its separation from the network 

would undesirably disrupt the entire network.”); 1:51-53 (“The present invention contemplates a 

new and improved method and/or system which overcomes the above-referenced problems and 

 1 WSOU also puzzlingly asserts that Microsoft’s construction would encompass nodes that 

merely “have the capability to carry out AAA functions when required[.]” Reply at 2. Not so. 

Microsoft’s construction plainly establishes that only a node that actually does carry out AAA 

functions by employing its user database is an active node.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 10 of 33
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others.”). The decentralized monitoring process described throughout the rest of the 

specification represents this purported improvement; it is not merely an “exemplary disclosure in 

the specification[,]” as WSOU suggests. Reply at 3.

WSOU does not (and cannot) deny that the only examples of “monitoring” set forth in 

the specification align with Microsoft’s construction. Instead, WSOU simply argues that claims 

are not necessarily limited to subject matter described in a patent’s sole disclosed embodiment. 

See Reply at 3-4 (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 907 (Fed. Cir. 

2004)). But more recent Federal Circuit case law has reinforced that a claim term should be 

construed in accordance with its “[e]xtensive, consistent usage in the specification[.]” Saffran v. 

Johnson & Johnson, 712 F.3d 549, 560 (Fed. Cir. 2013); see also Trs. of Columbia Univ. v. 

Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016) (citing Phillips, 415 F.3d at 1320-21) 

(“Even when guidance is not provided in explicit definitional format, the specification may 

define claim terms by implication such that the meaning may be found in or ascertained by a 

reading of the patent documents.”). And where “the specification makes no mention of” 

particular subject matter, “construing the instant claims to encompass that subject matter would 

likely render the claims invalid for lack of written description.” Ruckus Wireless, Inc. v. 

Innovative Wireless Sols., LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016) (citing Genry Gallery, Inc. 

v. Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998)). Here, where the ’702 patent

consistently and exclusively describes a decentralized monitoring process between the nodes, the 

Court should not expand the meaning of the “monitoring” terms to encompass some undisclosed 

monitoring process (whether centralized or otherwise).

 Nor does the doctrine of claim differentiation impact this analysis. As WSOU 

acknowledges, this doctrine is a rebuttable presumption. Reply at 3. Here, the presumption has 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 11 of 33
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been rebutted, and not “simply because Microsoft says so[,]” as WSOU suggests. Reply at 4. 

Rather, claim differentiation does not apply because “the specification does not provide any 

additional configurations [beyond what Microsoft’s construction captures] that would be 

effective” in achieving the purpose of the ’702 patent. Howmedica Osteonics Corp. v. DePuy 

Orthopaedics, Inc., No. 11-CV-6498 SDW MCA, 2013 WL 3455727, at *13 (D.N.J. July 9, 

2013) (citing O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576 (Fed. Cir. 1997)); see also Cave 

Consulting, 725 F. App’x at 995 (“However, in view of the specification's consistently limiting 

description, we conclude that these interpretive canons, despite the later-added dependent claims, 

cannot overcome the claim scope that is unambiguously prescribed by the specification.”). 

3. “each of said nodes having a user database”

The desired “redundancy” that the ’702 patent purportedly provides stems from the 

requirement that the recited nodes each have their own user database. WSOU’s argument to the 

contrary is based on its misconception that “nothing in the cited disclosures precludes nodes 

from sharing user databases, such as, for example, one pair of nodes sharing one user database 

and another pair of nodes sharing another user database.” Reply at 5. But the patent does 

preclude such an arrangement. 

As explained in Microsoft’s responsive brief, the ’702 patent consistently uses exclusive, 

possessive language to indicate a one-to-one relationship between node and user database. See 

Resp. at 12-13. In response, WSOU argues that the specification’s description of “nodes” and 

“their respective user databases” in the plural form means that this limitation could be satisfied

by a pair of nodes that share a single database. Such a strained reading of the specification 

simply ignores the inventor’s repeated use of the words “each” and “respective.” Together, these 

words indicate that the nodes “each” have a user database and that those databases are separate.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 12 of 33
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The Background section of the ’702 patent also support’s Microsoft’s construction. It 

suggests that a shared database is a disadvantage of other systems in the field because it can

provide insufficient redundancy. See, e.g., ’702 patent, 1:31-39 (“Should a node be the only one 

capable of AAA functionality and/or be the sole location for maintenance of the user database,

the destruction of that node or its separation from the network would undesirably disrupt the 

entire network. Therefore, particularly in military applications, the threat of a focused attack on 

and/or the higher potential for destruction of network nodes (as compared to civilian networks) 

makes redundancy in AAA functionality and/or the user database a real advantage.”).2 The 

discussion of this disadvantage necessarily informs the scope of the ’702 patent. See, e.g., Cave 

Consulting, 725 F. App’x at 995; Kinik Co. v. Int’l Trade Comm’n, 362 F.3d 1359, 1365 (Fed. 

Cir. 2004) (“The inventor’s discussion of the disadvantages of the . . . prior art sheds light on the 

scope of the invention.”); M-I LLC v. FPUSA, LLC, No. 15-cv-406-DAE, 2015 WL 4460305, at 

*6 (W.D. Tex. July 21, 2015) (“The Federal Circuit has held that claims should be construed to

exclude features described in the patent specification as disadvantages of prior art.”) (citing

SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1342-43 (Fed. Cir. 

2001)). 

Finally, WSOU supports Microsoft’s position by reemphasizing the point that the word 

“having” should be given meaning. Reply at 5. The parties agree on this point. The inventors’ 

choice of the word “having,” as opposed to “using,” “having access to,” or “sharing,” reinforces

the specification’s message that each node possesses its own user database. 

2

 The Background section’s use of “and/or” in this passage does not imply that redundancy in the 

user database is optional, in light of the consistent indications throughout the specification of a 

required one-to-one relationship between node and user database. See, e.g., Watts v. XL Sys., 

Inc., 232 F.3d 877, 883 (Fed. Cir. 2000) (rejecting argument based on patent’s use of permissive 

language in light of “the context of this statement and the entirety of the disclosure”). 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 13 of 33
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4. “activating the AAA functions of the active nodes”

Throughout its briefing, WSOU declines to address the substance of Microsoft’s 

indefiniteness arguments, and instead demands that Microsoft was required to produce expert 

testimony proving that the disputed terms would not be reasonably understood by a Skilled 

Artisan. But the law does not impose such a requirement. See, e.g., Sonix Tech. Co. v. 

Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017) (citing Teva Pharm. USA, Inc. v. 

Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (“[a] party cannot transform into a factual 

matter the internal coherence and context assessment of the patent simply by having an expert 

offer an opinion on it. The internal coherence and context assessment of the patent, and whether 

it conveys claim meaning with reasonable certainty, are questions of law.”); Horus Vision, LLC 

v. Applied Ballistics, LLC, No. 13-cv-5460-BLF, 2014 WL 6989233, at *6 (N.D. Cal. Dec. 9, 

2014) (“The court recognizes that expert testimony is not always required to prove 

indefiniteness.”); Light Transformation Techs. LLC v. Lighting Sci. Grp. Corp., No. 2:12-cv826-MHS-RHP, 2014 WL 3402125, at *9 (E.D. Tex. July 11, 2014) (finding that expert 

testimony was not necessary to hold disputed claims indefinite).

In any event, there is no running away from the fact that the phrase “activating the AAA 

functions of the active nodes” is nonsensical because, according to the ’702 patent and WSOU, 

the AAA functions of “active nodes” have already been activated. WSOU characterizes 

Microsoft’s supporting evidence as “attorney argument” (Reply at 6), completely ignoring the 

case law Microsoft cited requiring a patentee’s choice of language to be given weight. See Resp.

at 14-15 (collecting case law). WSOU attempts to sidestep this issue by arguing that the words 

“to be” and “to become” are used interchangeably at one point in the specification. Reply at 6

(citing ’702 patent, 2:13-16). This fails to address Microsoft’s point. In step (e) of claim 1, 

when the patentee wanted to refer back to the node “to become an active node” (recited in step 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 14 of 33
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(d)), the patentee explicitly referred back to “the node selected in step (d).” ’702 patent, Claim 1. 

There is no such antecedent reference in step (b), where the disputed phrase is recited. 

Accordingly, WSOU’s sole explanation for how a Skilled Artisan could understand this phrase 

has no support, and the claim is indefinite.

5. “geographic distance therebetween is maximized”, “geographic 

distance between active nodes is maximized”, “geographic distance 

between it and the active node which got disconnected from the 

network is maximized”, and “node selected in step (d) is chosen to 

maximize a sum of a geographic distance between the active nodes 

and a geographic distance between the node selected in step (d) and 

the node which got disconnected from the network”

It is indisputable that there are multiple ways to measure geographic distance. Contrary 

to WSOU’s assertion, Microsoft is not asking the Court “to take its counsel at their word as to 

the perspective of a ‘Skilled Artisan.’” Reply at 7 n.2. The Court does not need to do so; this is 

a simple fact, which has been acknowledged by multiple courts. See, e.g., RideApp, Inc. v. Lyft, 

Inc., No. 18-cv-07152-JST, 2019 WL 7834175, at *11 (N.D. Cal. Oct. 16, 2019); Fife & Drum, 

Inc. v. DelBello Enters., LLC, No. 17-3676, 2019 WL 5692124, at *2 n.6 (D.N.J. Nov. 4, 2019). 

Furthermore, WSOU’s core argument fails post-Nautilus. WSOU contends that the 

“maximized” terms are definite because a Skilled Artisan can apply “any one of the alleged 

measurement techniques . . . to determine which pair of nodes has the ‘maximized’ distance.” 

Reply at 7 (emphasis original). 

But the Federal Circuit rejected this argument nearly six years ago when it confronted the 

question whether, after Nautilus, “the existence of multiple methods leading to different results 

without guidance in the patent or the prosecution history as to which method should be used 

renders the claims indefinite.” Dow Chemical Co. v. Nova Chemicals Co. (Canada), 803 F.3d 

620, 634 (Fed. Cir. 2015). In Dow, the court found that after Nautilus, a claim is indefinite when 

infringement depends on the selection of different methods that lead to different results. See id. 

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In other words, definiteness now cannot depend on whether a Skilled Artisan can devise some 

method for meeting a claim limitation, as WSOU claims. It now depends on whether the claims, 

specification, and prosecution history provide the required guidance. See id.

Here, the intrinsic record does not provide any guidance on determining when 

“geographic distance” is “maximized.” See also Teva, 789 F.3d at 1344-45 (holding claims 

indefinite because they “do not indicate which measure to use”); Inguran, LLC v. ABS Global, 

Inc., No. 17-cv-446-wmc, 2019 WL 943515, at *8 (W.D. Wis. Feb. 26, 2019) (“While a ‘you’ll 

know it when you see it approach’ may work in other areas of law, this approach is incompatible 

with the requirement that a patent claim informs ‘with reasonable certainty’ those skilled in the 

art about the scope of the invention.”) (citation omitted).

WSOU also misses the mark in asserting that “[i]t is basic geometry that two given points 

will have a distance therebetween.” Reply at 8. As an initial matter, geometry is not the same 

thing as geography; the latter takes into account physical features such as lakes, forests, and 

mountains. Moreover, even in the context of “basic geometry,” distance may vary depending on 

the method of measurement, which the Skilled Artisan has no way of identifying in the context 

of the ’702 patent. For example, two points on a sphere (e.g., the earth) have an infinite number 

of paths that can be used to connect them, and the shortest path connecting them on the surface 

of the sphere is different from the shortest path connecting them through the sphere. 

Finally, WSOU’s repeated invocation of inoperativeness and enablement are a 

distraction. Microsoft has pointed to controlling Federal Circuit law indicating that claims are 

indefinite, not inoperative or lacking enablement, if they fail to inform the Skilled Artisan what 

method of measurement should be used in the context of the challenged claims. WSOU has 

failed to respond to this authority.

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11

6. “logging changes to the user databases for the active nodes thereby 

updating the same to reflect changes in information contained 

therein” and “wherein each of the active nodes logs changes to its user 

database thereby updating the same to reflect changes in information 

contained therein”

Microsoft’s responsive brief sets forth a clear indefiniteness position supported by case 

law. Resp. at 18-20. Where there are multiple plausible meanings of claim terms, as Microsoft 

has demonstrated here, and the patent does not provide guidance for choosing between them, the 

claims reciting those terms are indefinite. See Halliburton Energy Servs., Inc. v. M-I LLC, 514 

F.3d 1244, 1251 (Fed. Cir. 2008); dunnhumby USA, LLC v. emnos USA Corp., No. 13-cv-0399, 

2015 WL 1542365, at *18 (N.D. Ill. Apr. 1, 2015); Light Transformation, 2014 WL 3402125, at 

*9. This is not attorney argument, nor does it go to the issues of inoperativeness or enablement.

WSOU continues to rely on the notion that “breadth is not indefiniteness.” Reply at 9

(quoting BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1367 (Fed. Cir. 2017)). But the 

issue here is not breadth; it is ambiguity. In any event, the “rule” on which WSOU relies applies 

only when the underlying term at issue has a reasonably understood meaning; the “logging” 

terms recited in the ’702 patent do not. See Int’l Test Sols., Inc. v. Mipox Int’l Corp., No. 16-cv00791-RS, 2017 WL 1367975, at *5 (N.D. Cal. Apr. 10, 2017) (“Breadth defined within the 

language of the patent is permitted. . . . Breadth stemming from ambiguity is not.”).

WSOU also repeats its argument that the ambiguous phrase “updating the same” 

necessarily “refers back to ‘the user databases’ term[,]” and falsely states that “Microsoft offers 

no rebuttal to the discussion” allegedly supporting this contention. Reply at 9. This argument 

entirely ignores Microsoft’s explanation of equally plausible terms that “the same” could refer to 

in this context. See Resp. at 19. There is no support in the patent for why a Skilled Artisan 

would understand “the same” to refer to “user databases” that are recited in certain claims but not 

others, when “the same” could reasonably refer to the previously recited “active nodes,” or to the 

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12

“log” of changes discussed in these claim terms. For this reason, the claims reciting the 

“logging” terms are indefinite.

B. Terms of U.S. Patent No. 7,366,160 (Case No. 6:20-cv-00454-ADA)

With regard to the ’160 patent, WSOU’s arguments would collapse multiple claim 

limitations into a single element. According to WSOU, different “network parameters” can be 

the same element, and that element can simultaneously satisfy the separately recited “service 

indicator” limitation. This interpretation cannot be correct, as it would violate the fundamental 

principle of claim construction that different claim terms have different meanings. See, e.g., 

Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); 

SpaceTime3D, Inc. v. Samsung Elecs. Co., Ltd., No. 2:19-cv-00372-JRG, 2020 WL 7183538, at 

*8 (E.D. Tex. Dec. 7, 2020).

1. “selecting two or more parameters of a network” and “measuring 

and/or calculating at two or more times values of the network 

parameters”

The purported invention of the ’160 patent determines communications network service 

trends by measuring multiple different network parameters representative of a given service, 

unlike prior art that determined service trends based on multiple measurements of a single 

network parameter. WSOU wants the ’160 patent’s claims to capture the prior art method. But 

the intrinsic evidence demonstrates that two different types of parameters are required by these 

disputed term phrases. Selecting the same network parameter (such as bandwidth) twice cannot 

satisfy these limitations. As explained in Microsoft’s responsive brief, both the plain language of 

the claims and the discussion of the network parameters in the specification confirm that 

Microsoft’s position is correct. See Resp. at 21-23.

As an initial matter, WSOU offers no response to the point that if measuring the same 

parameter twice could satisfy the “selecting two or more parameters” limitation, it would render 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 18 of 33
13

the separately recited “measuring at two or more times” limitation redundant. Specifically, even 

if one could select the same parameter twice, as WSOU contends, by measuring the same 

parameter one does not “measure and/or calculate . . . values of the network parameters” (plural) 

as the claim requires. This alone is a sufficient basis to reject WSOU’s position. See Apple, Inc. 

v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Ideally, claim constructions give 

meaning to all of a claim’s terms. Construing a claim term to include features of that term 

already recited in the claims would make those expressly recited features redundant.”) (citing 

Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).

Moreover, the ’160 patent explains that prior art in the field covers measuring bandwidth 

twice to determine a bandwidth trend. See ’160 patent, 1:10-13 (“BMC Software’s ‘Patrol 

Dashboard’ product uses a network monitoring method which measures the bandwidth of a 

network at different times and determines a bandwidth trend as a function of the 

measurements.”). According to the patent, this and other monitoring methods do not constitute 

“tools for forecasting accurately the failure of a network service[,]” and “[t]hus there is a need 

for a method that solves this problem.” ’160 patent, 1:24-30. As explained above, the patent’s 

discussion of the shortcomings of the prior art informs the scope of the claims. See, e.g., Cave 

Consulting, 725 F. App’x at 995; Kinik, 362 F.3d at 1365; M-I LLC, 2015 WL 4460305, at *6. A 

construction that would allow for the claims to read onto this purportedly flawed prior art would 

be overbroad. See MacroSolve, Inc. v. Antenna Software, Inc., No. 6:11-cv-287 MHS-KNM, 

2014 WL 243429, at *4 (E.D. Tex. Jan. 21, 2014) (“MacroSolve’s construction is too broad 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 19 of 33
14

because it potentially encompasses the prior art. The Background of the Invention section details 

the disadvantages of the prior art and how the ’816 invention avoids these drawbacks.”).3

Microsoft’s construction clarifies that “two or more different types of network 

parameters” are required to satisfy this limitation. For example, the limitation may be satisfied 

by selecting bandwidth and jitter, but not by selecting bandwidth twice. Whether “bandwidth” 

and “jitter” fall within the same category of “parameters of this kind” does not impact this 

requirement, despite WSOU’s unsupported assertion to the contrary. See Reply at 10.

Similarly, the specification’s use of the word “can” in the passages describing the 

weighting of parameters does not support WSOU’s argument that selecting a single parameter 

twice satisfies the “two or more” limitations. As WSOU admits, parameter weighting is not 

expressed as a limitation in any of the claims. Reply at 10. The only discussion of parameter 

weighting comes from the specification. And the tables and figures in the patent depicting 

weighting would be rendered absurd if a single parameter was measured twice. See, e.g., ’160 

patent, Fig. 2; 4:12-18 (“The measured parameters are represented along three axes defining a 

three-dimensional space, for example an axis x representing time, an axis y for the parameter 

values, and an axis z representing the parameters P0, P1 and P2.”); see also id., 3:30-65 (tables 

indicating “the weighting or sensitivity of each parameter, from 0 for the minimum weighting to 

3 for the maximum weighting.”) (emphases added). For a single parameter (such as bandwidth) 

to be measured twice or to represent multiple parameters in these passages, bandwidth would 

have to be weighted against itself, which is nonsensical. Thus, the specification’s description of 

weighting further supports Microsoft’s construction.

 3 To be clear, Microsoft is not arguing that the disputed phrases should be given a special 

meaning in order to avoid the prior art. Rather, the operation of the prior art confirms the clear 

meaning of the claim language, as supported by the patent’s written description.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 20 of 33
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2. “network parameter”

The key issue to be resolved is whether the “network parameter” limitation is a distinct 

requirement from the “service indicator” limitation. Under controlling law, these terms must be 

distinct. See Helmsderfer, 527 F.3d at 1382; SpaceTime 3D, 2020 WL 7183538, at *8. This 

argument is decidedly not a “new and unexplained fallback position,” as WSOU asserts. Reply

at 12. Rather, Microsoft’s position – which is necessarily correct under fundamental principles 

of claim construction – has been plain since the beginning of the Markman process, when 

Microsoft proposed distinct constructions for “network parameter” and “service indicator.” 

WSOU offers no response to the binding law underlying Microsoft’s position, and 

instead puzzlingly suggests that a “network parameter” could satisfy the separately recited 

“service indicator” element because the patent states that a service indicator may be “a collection 

of parameters.” Id. But “a collection of parameters” is not the same thing as a single “network 

parameter.” Under WSOU’s reasoning, a requirement of a “flock of seagulls” could be satisfied 

by a single bird. That is simply not reasonable.

As to the details of Microsoft’s proposed construction, the specification clearly 

establishes that network parameters are measurable. See Resp. at 24-25. While Microsoft does 

not disagree that the patent recites “calculated” and “measured” parameter values separately, the 

specification makes clear that even where parameters are “calculated,” they may also be 

measured. See ’160 patent, 3:3-4 (“Parameters that have been calculated or extrapolated from 

measurements can therefore be used.”) (emphases added).

The specification also expressly states that network parameters are “also known as 

service level specifications.” ’160 patent, 2:64-65. WSOU offers no legal reasoning against 

including “service level specifications” as part of the construction of network parameters. 

Instead, WSOU simply refers back to its unsupported assertion that this phrase is part of an 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 21 of 33
16

“alternative description.” Reply at 12. But this assertion is at odds with the specification of the 

’160 patent, which consistently describes its invention within the context of service level 

agreements. Resp. at 24; ’160 patent, 1:20-22, 4:53-57. Contrary to WSOU’s suggestion that 

“service level specifications” is a “technical” term that would be “unhelpful” (presumably to a 

jury) (Reply at 12), this is actually a non-technical concept that illuminates the real-world, 

business context for the claimed invention.

3. “determining at two or more times the value of a service indicator”, 

“determining a trend of the indicator”, and “determining as a 

function of the trend of the indicator”

The parties agree that “determining” cannot mean the same thing as either “measuring” 

or “calculating,” which are separately recited. See Br. at 19; Reply at 13. The question for the 

Court to resolve is whether “determining” requires something beyond mere measurement or 

calculation, or whether, as WSOU suggests, it is broader in scope than “measuring” and 

“calculating,” and can therefore be satisfied by meeting either one of those separately recited 

limitations.

Only Microsoft’s position can be squared with the specification’s descriptions of the 

“determining” step. As explained in its responsive brief, the specification consistently describes 

“determining” as involving mathematical functions or other operations using the separately 

recited measurements and/or calculations. See Resp. at 26. WSOU simply ignores the extensive 

intrinsic support for Microsoft’s construction, which confirms that “determining” requires an 

additional step beyond “measuring” or “calculating.”

4. “service indicator”

As WSOU appears to acknowledge, the primary dispute with regard to the “service 

indicator” term is whether it must have a distinct meaning from “network parameter.” Reply at 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 22 of 33
17

13. For the reasons explained above, these two terms must be construed to have different 

meanings.

Moreover, “service indicator” should be construed to refer to the quality of a network 

service. In its responsive brief, Microsoft identified intrinsic evidence from the specification and 

prosecution history confirming that service indicators specifically indicate the level of quality of 

a provided network service. See Resp. at 27-29. WSOU ignores that intrinsic evidence, and falls 

back on the specification’s statement that a service indicator may be made up of a collection of 

network parameters. That statement, however, does not change the patent’s description of what 

a service indicator does. Rather, in the example WSOU highlights, the collection of parameters 

is used to indicate the quality of service. See, e.g., ’160 patent, 2:64-67 (“In this way a number 

of network parameters . . . can be identified for preferential observation in order to determine the 

level of service.”); 3:6-8 (“Parameters of this kind enable the reliability of the network service to 

be determined, for example.”); 3:20-22 (“A plurality of network parameters can be selected to 

define the level of service as a function of the service tor group of services concerned.”) 

(emphases added).

5. “determining as a function of the trend of the indicator a time of the 

service indicator crossing a defined threshold”

The ’160 patent is directed to predicting when a service on a network (e.g., a video call) 

will fail. While the patent acknowledges that the prior art could measure network attributed 

(e.g., bandwidth) to determine a trend, ’160 patent, 1:10-13, it asserts that “[a]t present there are 

no tools for forecasting accurately the failure of a network service.” Id., 1:24-25. The solution 

to this problem, which the patentee described as distinguishing the ’160 patent from the prior art,

is the ability to forecast the time remaining before a service indicator crossed a defined threshold 

(i.e., time until failure). WSOU asks the Court to ignore the express purpose of the ’160 patent, 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 23 of 33
18

and interpret its claims to cover prior art that the patentee explicitly distinguished during 

prosecution.

Microsoft’s responsive brief laid out the extensive body of intrinsic evidence (from both 

the specification and the prosecution history) establishing that the patent requires the invention to 

determine the time remaining before a service indicator crosses a defined threshold. Resp. at 29-

31. WSOU bizarrely dismisses this as “attorney argument,” Reply at 13, even though 

Microsoft’s proposed language comes directly from the patentee’s own statements. Moreover, 

WSOU offers no response whatsoever to Microsoft’s case law holding that “[a]ny explanation, 

elaboration, or qualification presented by the inventor during patent examination is relevant” and 

that “the interested public has the right to rely on the inventor’s statements made during 

prosecution[.]” Fenner Invs., Inc. v. Cellco P’ship, 778 F.3d 1320, 1323, 1325 (Fed. Cir. 2015). 

Instead, WSOU simply argues that Microsoft has not proven “a clear and unmistakable 

[prosecution history] disclaimer[.]” Reply at 13-14 (citing Trivascular, Inc. v. Samuels, 812 F.3d 

1056, 1063-64 (Fed. Cir. 2016)). 

But insisting on disclaimer through a “‘clear and unmistakable’ disavowal is . . .

unpersuasive” where, as here, the specification itself supports limiting a claim term. Cave 

Consulting, 725 F. App’x at 995; see also Trs. of Columbia, 811 F.3d at 1363 (“Our case law 

does not require explicit redefinition or disavowal.”); Aventis Pharma S.A. v. Hospira, Inc., 675 

F.3d 1324, 1330 (Fed. Cir. 2012) (“This clear expression need not be in haec verba but may be 

inferred from clear limiting descriptions of the invention in the specification or prosecution 

history.”). “We have also found that a patent applicant need not expressly state ‘my invention 

does not include X’ to indicate his exclusion of X from the scope of his patent because ‘the 

patentee’s choice of preferred embodiments can shed light on the intended scope of the claims.’” 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 24 of 33
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Trs. of Columbia, 811 F.3d at 1364 (quoting Astrazeneca AB v. Mut. Pharm. Co., 348 F.3d 1333, 

1340 (Fed. Cir. 2004)); see also On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331,

1340 (Fed. Cir. 2006) (“[W]hen the scope of the invention is clearly stated in the specification, 

and is described as the advantage and distinction of the invention, it is not necessary to disavow 

explicitly a different scope.”); Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1333

(Fed. Cir. 2009) (finding disavowal implicitly); Boss Control, Inc. v. Bombardier Inc., 410 F.3d

1372, 1377 (Fed. Cir. 2005) (same).

The consistent disclosures throughout the specification indicating that the ’160 patent

requires determining the time remaining for the indicator crossing a defined threshold, coupled 

with the patentee’s statements during prosecution distinguishing prior art on that very ground, 

clearly establish that Microsoft’s construction is correct.

6. “neural network determines rules of association between a service 

trend and service parameter values”

This phrase is indefinite because “rules of association” does not have a commonly 

understood meaning to a Skilled Artisan, nothing in the patent is described as a “rule of 

association,” and WSOU cannot identify what would constitute such a rule within the context of 

the patent. Instead, WSOU continues its campaign of criticizing Microsoft’s accurate 

observations regarding what is disclosed (or not disclosed) by the specification as “attorney 

argument.” Reply at 14. 

Microsoft’s argument does not hinge on the fact that the term “rules of association” is 

used only once in the patent. This is simply illustrative of the fact that there is no indication of 

what the term means—a fact which is reinforced by WSOU’s failure to identify any such 

meaning. WSOU suggests that the lone example of “weighting” as a possible rule of association 

provides the requisite definiteness for this phrase. See Reply at 14-15. But the Federal Circuit 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 25 of 33
20

has held that a “lone example” of a phrase does not render it definite if “a skilled artisan is still 

left to wonder” what else meets the limitation. Interval Licensing LLC v. AOL, Inc., 766 F.3d 

1364, 1374 (Fed. Cir. 2014); see also Phoenix Licensing, L.L.C. v. Advance Am., No. 2:15-CV1367-JRG-RSP, 2016 WL 6217180, at *36 (E.D. Tex. Oct. 25, 2016) (“However, this example 

does not inform, with reasonable certainty, those skilled in the art about the scope of the 

invention.”). That is precisely the case here.

7. “calculating a mathematical expectation of financial loss as a function 

of the network service trend determined”

WSOU does not dispute that “financial loss” could conceivably refer to any number of 

scenarios. See Reply at 15-16. WSOU only replies that this does not necessarily render the 

claim indefinite. But the case law WSOU cites for this proposition actually supports Microsoft’s

position. See Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. 

Cir. 2009) (“a claim to a formula containing over 5000 possible combinations is not necessarily 

ambiguous if it sufficiently notifies the public of the scope of the claims.”) (emphasis added). 

The ’160 patent does not notify the public of the scope of the term “financial loss,” and WSOU 

has not even attempted to demonstrate otherwise.

As to the similarly ambiguous “calculating” and “mathematical expectation” terms, 

WSOU again offers circular definitions, arguing that “‘calculating’ is plainly directed to a 

‘mathematical expectation[,]’” which is itself “an expression of expected ‘financial loss[.]’” 

Reply at 16. WSOU’s explanation, even if accepted, does not give any meaning to the terms 

“mathematical expectation” or “financial loss”—WSOU has simply “defined” each of these 

ambiguous terms with vague reference to the other.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 26 of 33
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8. “determining a capacity to provide a network service at a given time”

The ’160 patent indisputably uses the word “capacity” to refer to two different scenarios. 

See Resp. at 34-35. WSOU misdirects by arguing that the ’160 patent does not present 

“divergent lexicography.” Reply at 17. But Microsoft has never argued that the ’160 patent sets 

forth any explicit definition of “capacity.” The point is that the specification renders the term 

unclear within the context of the ’160 patent, because the patentee uses “capacity” to refer to two 

distinct concepts, without indicating which concept is encompassed by the claim.

WSOU does not, and cannot, explain whether “capacity,” as used in claim 11, refers to 

the network’s ability to provide a service, or to a service provider’s willingness to provide the 

service. And “[t]he specification offers no indication, thus leaving the skilled artisan to consult 

the unpredictable vagaries of any one person’s opinion.” Interval Licensing, 766 F.3d at 1374

(internal quotation and citation omitted). “Such ambiguity falls within “the innovationdiscouraging zone of uncertainty against which [the Supreme Court] has warned.” Id. (internal 

quotations omitted) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 

(2014)). 

C. Terms of U.S. Patent No. 8,274,902 (Case No. 6:20-cv-00465-ADA)

1. “network that branches, downstream of the collection point”

The inventors of the ’902 patent took care to describe the context in which their invention 

could be employed. Microsoft’s proposed construction is faithful to that description, while 

WSOU suggests that there are no limits on the type of network on which the claimed method 

may be applied. All of the intrinsic evidence, as well as the extrinsic evidence proffered by 

WSOU, supports Microsoft’s position that the recited network in this phrase refers to a tree 

network. This is unsurprising, because the goal of the ’902 patent—to estimate packet loss rates 

throughout a network by measuring it at one point, not everywhere—depends on knowing “the 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 27 of 33
22

topology” of the network. ’902 patent, 2:63-65. That is why the inventors were transparent and 

unequivocal about the limitation of their method to networks that “may be represented by a tree 

graph.” Id., 2:36-37.

WSOU continues to object to the formulation of Microsoft’s construction, which 

specifies what this phrase “refers to,” as opposed to replacing the entire phrase with a different 

set of words. See Reply at 18. Specifically, WSOU asserts, without any supporting authority, 

that such a construction is improper in the absence of an agreement that the term be afforded its 

(unspecified) “plain and ordinary meaning.” Id. But WSOU’s charge that Microsoft’s cited case 

law is inapposite rings hollow. Only one of the three exemplary constructions that Microsoft 

identified in its responsive brief included a construction of “plain and ordinary meaning,” see 

Resp. at 37, and no authority precludes a Court from construing a term in light of what the term 

“refers to.”4

 

WSOU attempts to run away from the specification’s disclosures limiting the scope of the 

invention to a method that can be applied only on a tree network by advancing an unnatural 

interpretation of those disclosures. Specifically, WSOU argues that because the specification 

uses the words “can” and “may” in referring to a tree network, the invention can actually be 

applied on any kind of network. Reply at 18. WSOU’s interpretation would render the relevant 

passage completely meaningless. See ’902 patent, 2:36-37. If the patentee intended to claim a 

method that could be applied on any network, there would be no reason to specify a tree network 

(and no other type of network) within the specification. Moreover, the ’902 patent states that its 

 4 Notwithstanding WSOU’s mischaracterization of the law, Microsoft can agree to construe 

“network that branches, downstream of the collection point” in accordance with its plain and 

ordinary meaning as long as any such construction incorporates the requirement that the recited 

network refers to a tree network. 

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 28 of 33
23

method can be applied to a tree network without reference to any particular embodiment. Under 

these circumstances, the patent’s permissive language does not override the evidence from the 

rest of the disclosure supporting Microsoft’s construction. See, e.g., Watts, 232 F.3d at 883 

(rejecting argument based on patent’s use of permissive language in light of “the context of this 

statement and the entirety of the disclosure”); Interwoven, Inc. v. Vertical Comput. Sys., Inc., No. 

C 10-4645 RS, 2011 WL 6936186, at *10 (N.D. Cal. Dec. 30, 2011) (“Just because terms such as 

‘can’ and ‘may’ appear, does not automatically negate an imposed limitation.”).

Lastly, WSOU’s arguments regarding the extrinsic evidence are once again incorrect. 

WSOU does not dispute that the first definition of “branch” from its cited technical dictionary 

explicitly refers to a “tree structure.” Instead, WSOU attempts downplay the importance of this 

first definition compared to its preferred second definition by incorrectly stating that “the claim 

language recites ‘branch,’ not ‘branching[.]” Reply at 19.

5 In any event, the extrinsic evidence 

provides no basis to deviate from the intrinsic evidence’s overwhelming support for Microsoft’s 

construction. See Phillips, 415 F.3d at 1317 (“[W]hile extrinsic evidence ‘can shed useful light 

on the relevant art,’ . . . it is ‘less significant than the intrinsic record in determining ‘the legally 

operative meaning of claim language.’”) (citations omitted).

2. “estimating a packet loss rate” and “an estimate of a packet loss rate”

The ’902 patent discloses a specific process for “estimating.” Microsoft’s definition 

captures that process. WSOU does not appear to dispute (nor could it) that the plain and 

ordinary meaning of “estimate” is “approximate.” Microsoft’s proposed construction will assist 

the jury by clarifying what the recited “estimating” entails, as described by the ’902 patent. 

Embrex, 216 F.3d at 1347; Iris Connex, 235 F. Supp. 3d at 847. For this reason, WSOU’s 

 5 The claim language actually recites “branches” (the verb form of the word).

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 29 of 33
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criticism that Microsoft “merely seeks to substitute its preferred language for what is recited” 

falls flat. Reply at 20. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008)

(“[C]laim construction often calls upon words other than those of the patent, lest the claim 

simply define itself. ‘Claim construction’ is for the purpose of explaining and defining terms in 

the claims, and usually requires use of words other than the words that are being defined.”) 

(citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998)).

3. “packet loss rate”

The parties agree that the ’902 patent includes explicit lexicography defining the term 

“packet loss rate.” After spending two rounds of briefing criticizing Microsoft for proposing 

clarifying constructions of the claim language, WSOU now pejoratively characterizes adherence 

to explicit lexicography as “slavish[,]” Reply at 20, but provides no rationale for why its 

proposed departure from the lexicography purportedly avoids the problem of having the jury 

determine the meaning of certain terms within the patent. Even under WSOU’s unsupported 

construction, the jury would still be tasked with determining, for example, what the word 

“suitable” means within the context of the ’902 patent. See Resp. at 39. 

The Court should also reject WSOU’s newly-asserted construction based on the patent’s 

use of the symbol “δ.” See Reply at 21. Importantly, the specification discusses a “time interval 

“δ,” not a “time-averaging interval,” which presumably does not carry the same meaning. 

Therefore, the disclosures related to the symbol “δ” do not shed light on the meaning of “a 

suitable time-averaging interval” and should not form the basis of whatever construction the 

Court ultimately adopts.

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 30 of 33
25

4. “wherein the collected data relate to packet losses on the portion of a 

GPRS core network extending from the collection point to a plurality 

of [base / mobile] stations”

This phrase is indefinite because it requires an impossibility—base stations and mobile 

stations are part of the radio access network, and therefore a Skilled Artisan would not 

reasonably understand what is meant by the requirement that they be located on a portion of the 

GPRS network. In its responsive brief, Microsoft explained this impossibility, and supported its 

position with intrinsic evidence and relevant case law. See Resp. at 40. WSOU dismisses 

Microsoft’s evidence as “conclusory attorney argument,” Reply at 21, but notably does not 

dispute that the GPRS core network does not include base stations or mobile stations.

Instead, WSOU sets forth a strained reading of the claim, suggesting that the base stations 

and mobile stations are not actually recited as part of the “portion of a GPRS core network.” See 

id. at 22. WSOU emphasizes that the claim language recites “the portion of a GPRS core 

network extending from the collection point to a plurality of [base stations / mobile stations].” 

Id.(emphasis in original). WSOU apparently reads the claim as requiring a portion of a GPRS 

network that extends right up to the mobile stations, but without actually including the mobile 

stations. But even accepting that interpretation, a GPRS network that extended all the way “to”

the mobile stations would still at least include the base stations, which WSOU does not dispute 

are not part of a GPRS network. Thus, even under WSOU’s own interpretation of the claim 

language, the disputed phrase requires an impossibility. This renders the claim indefinite, not 

merely inoperable. See Horizon Pharma, Inc. v. Dr. Reddy’s Labs. Inc., – Fed. App’x. – , No. 

2019-1607, 2021 WL 48428, at *4 (Fed. Cir. Jan. 6, 2021) (“One circumstance in which claims 

are indefinite is where the claims, as properly construed, are nonsensical.”) (citing Trs. of 

Columbia, 811 F.3d at 1366-67)).

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 31 of 33
DATED: February 24, 2021 By: /s/ Irene Yang

Barry K. Shelton 

Texas State Bar No. 24055029

SHELTON COBURN LLP

311 RR 620 S, Suite 205

Austin, TX 78734

Telephone: (512) 263-2165

Fax: (512) 263-2166

bshelton@sheltoncoburn.com

Of Counsel

Michael J. Bettinger

Irene Yang

SIDLEY AUSTIN LLP

555 California St., Suite 2000

San Francisco, CA 94104

Telephone: (415) 772-1200

Fax: (415) 772-7400

mbettinger@sidley.com 

irene.yang@sidley.com 

Richard A. Cederoth

John W. McBride

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Telephone: (312) 853-7000

Fax: (312) 853-7036

rcederoth@sidley.com 

jwmcbride@sidley.com 

Attorneys for Defendant Microsoft Corporation

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 32 of 33
CERTIFICATE OF SERVICE

I certify that on February 24, 2021, I electronically filed the foregoing with the Clerk of 

Court using the CM/ECF system, which will send notification of such filing to all counsel of 

record as identified below.

/s/ Irene Yang

Irene Yang

Case 6:20-cv-00465-ADA Document 52 Filed 02/24/21 Page 33 of 33