1 

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. § 

 § CIVIL ACTION NO. 6:20-CV-539-ADA 

HUAWEI TECHNOLOGIES CO., LTD., § 

HUAWEI TECHNOLOGIES USA INC., § 

HUAWEI DEVICE CO. LTD. (F/K/A § 

HUAWEI DEVICE (DONGGUAN) CO.), § 

HUAWEI DEVICE (SHENZHEN) CO., § 

LTD. (F/K/A HUAWEI DEVICE CO., § 

LTD.), HUAWEI DEVICE USA, INC. § 

 § 

 Defendants. § 

DEFENDANTS’ SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF 

 REGARDING U.S. PATENT NO. 8,200,224 

Pursuant to the Court’s request, Defendants Huawei Technologies USA Inc., et al.

(collectively, “Huawei”) respectfully submit this Supplemental Claim Construction Brief 

Regarding U.S. Patent No. 8,200,224. 

A claim is indefinite where it recites both a system and a method for using that system. 

IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Such a claim 

is indefinite because it is “unclear whether infringement ... occurs when one creates a[n infringing] 

system, or whether infringement occurs when the user actually uses [the system in an infringing 

manner].” Ultimate-Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016) (alteration 

in original) (quoting IPXL, 430 F.3d at 1384). Pursuant to this authority, certain claims of U.S. 

Patent No. 8,200,224 (“the ’224 patent) are indefinite, as set forth below. 

Case 6:20-cv-00539-ADA Document 64 Filed 05/07/21 Page 1 of 6
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A. Claim 15 of the ’224 Patent is Invalid for Mixing Method Steps with a System Claim 

Claim 1 of the ’224 Patent recites a method comprising a series of steps. Claim 15, 

dependent on claim 1, clearly and intentionally mixes that method with an apparatus, further 

reciting a “computer program product stored on a storage medium” that causes a base station to 

perform the method of claim 1 using “executable program means.” The statutorily required 

interpretation of a dependent claim is that it “shall contain a reference to a claim previously set 

forth and then specify a further limitation of the subject matter claimed,” and that it “shall be 

construed to incorporate by reference all the limitations of the claim to which it refers.” 35 U.S.C. 

§ 112(d). Given that claim 15 must further limit claim 1 and not merely replace it, claim 15 

requires both the performance of the method steps of claim 1 and the further limitation of a 

computer program product with executable means causing a base station to execute those method 

steps. Under the authority of IPXL, claim 15 is therefore invalid for mixing together a system and 

a method for using that system. IPXL, 430 F.3d at 1383-84; In re Katz Interactive Call Processing 

Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011).1

While “apparatus claims are not necessarily indefinite for using functional language,” see 

Microprocessor Enhancement Corp. v. Tex. Instruments Inc. (MEC), 520 F.3d 1367, 1375 (Fed. 

Cir. 2008), this is not simply a case of an apparatus claim using functional language. Instead, 

claim 15 requires both the performance of the method (as recited in claim 1), and an apparatus 

capable of executing that method (as further recited in claim 15). Similarly, this is not a case where 

a claim is only “limited to practicing the claimed method in a” device possessing a certain 

 

1

 Huawei further notes that claim 14 of the ’224 patent likewise requires the “method of claim 1 implemented 

in a base station being operable to perform that method,” and therefore is similarly indefinite and invalid. 

Case 6:20-cv-00539-ADA Document 64 Filed 05/07/21 Page 2 of 6
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structure. Id. Claim 15 is written in apparatus format, indicating capability to perform the claimed 

method in addition to active performance of the method recited in Claim 1. 

Claim 15 recites that the product comprises “means for causing a base station to perform 

the method when the program is run.” ’224 Patent, Claim 15 (emphasis added).2 This language 

recites the capability of causing performance of the method on a base station in the future, which 

requires an apparatus-claim infringement analysis. Meanwhile, Claim 15, by its dependent nature, 

also incorporates the method of claim 1, which requires a method-claim infringement analysis. It 

is therefore unclear to an alleged infringer whether infringement hinges on performance of the 

method steps of claim 1, consistent with the requirements of active performance, or by creation of 

the base station system software of claim 15, requiring merely the sale, use, or importation of that 

system software. This lack of clarity is precisely what the court in IPXL found to be indefinite. 

See e.g., In re Katz, 639 F.3d at 1318 (invaliding claims that “create confusion as to when direct 

infringement occurs because they are directed both to systems and to actions”). 

Either claim 14 or 15 could have been written in independent form, reciting a base station 

or base station system software with similar capabilities as to the steps recited in claim 1, thus 

obviating this issue. However, the patentee failed to properly draft the claims in this form, and the 

Federal Circuit has “repeatedly and consistently has recognized that courts may not redraft claims, 

whether to make them operable or to sustain their validity.” Chef Am., Inc. v. Lamb–Weston, Inc., 

358 F.3d 1371, 1374 (Fed. Cir. 2004); see also Pfizer, Inc. v. Ranbaxy Labs Ltd., 457 F.3d 1284, 

1292 (Fed. Cir. 2006) (“Indeed, claim 6 could have been properly drafted either as dependent from 

 

2

 Indeed, the very nature of implementing something in a “computer program product stored on a storage 

medium” indicates that software has been recorded onto the storage medium so it can be run in the future, as opposed 

to actively performing the steps. 

Case 6:20-cv-00539-ADA Document 64 Filed 05/07/21 Page 3 of 6
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claim 1 or as an independent claim ... But, we ‘should not rewrite claims to preserve validity.’”) 

(quoting Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. 2005)). 

Moreover, redrafting claims 14 and 15 to comprise a base station or system software 

requiring only capability to perform the method steps of claim 1 and not the actual performance

of those steps would broaden those dependent claims and render them invalid for failure to comply 

with required narrowing form of dependent claims. See Pfizer, 457 F.3d at 1291 (finding a 

dependent claim invalid for failure to comply with Section 112 dependent claim format because 

“claim 6 does not narrow the scope of claim 2; instead, the two claims deal with non-overlapping 

subject matter.”). Thus, claims 14 and 15 of the ’224 patent comprise both the method of claim 1 

and the product or system of claims 14 and 15, in violation of IPXL. As such, Huawei respectfully 

requests that this Court hold claims 14 and 15 of the ’224 Patent invalid on that basis. 

B. The Presence of the “Base Station” Does Not Impact the Means-Plus-Function Analysis 

As to the Court’s second question, regarding whether the “base station” in claim 15 can 

provide sufficient structure to overcome the presumption of Section 112, Paragraph 6, Huawei 

does not believe that the base station can serve this purpose. As a preliminary matter, and as noted 

above, the base station of dependent claim 15 must provide some new limitation or functionality—

whether hardware or software—to perform the method steps of claim 1. Further, the agreed 

function of the “executable program means” is that it is “causing a base station” to perform the 

method of claim 1. Thus, even if the base station had the capability to perform the method steps 

of claim 1, claim 15 separately requires “program means” (i.e., software written in means-plusfunction form) to cause that base station to carry out those steps. Therefore, the corresponding 

structure for the means term above cannot be the base station alone, and instead must further be 

the “means for” causing that base station to perform the recited steps. Additional supporting 

structure is therefore required for accomplishing that claimed function to create the system of claim 

Case 6:20-cv-00539-ADA Document 64 Filed 05/07/21 Page 4 of 6
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15, and thus Huawei contends that the “executable program means” term of claim 15 should still 

be construed pursuant to Section 112, Paragraph 6. 

Dated: May 7, 2021 Respectfully submitted, 

/s/ Justin R. Lowery 

Jason W. Cook 

Texas Bar No. 24028537 

Shaun W. Hassett 

Texas Bar No. 24074372 

MCGUIREWOODS LLP 

2000 McKinney Avenue, Suite 1400 

Dallas, TX 75201 

Telephone: (214) 932-6400 

Facsimile: (214) 932-6499 

jcook@mcguirewoods.com 

shasset@mcguirewoods.com 

Tyler T. VanHoutan 

Texas Bar No. 24033290 

MCGUIREWOODS LLP 

600 Travis St., Suite 7500 

Houston, TX 77002 

Telephone: (713) 571-9191 

Facsimile: (713) 571-9652 

tvanhoutan@mcguirewoods.com 

Justin R. Lowery (pro hac vice) 

MCGUIREWOODS LLP 

800 East Canal Street 

Richmond, VA 23219 

Telephone: (804) 775.1000 

Facsimile: (804) 775.1061 

jlowery@mcguirewoods.com 

Kuan-Chieh Tu 

Texas Bar No. 24090443 

MCGUIREWOODS LLP 

2 Embarcadero Center, Suite 1300 

San Francisco, CA 94111 

Telephone: (415) 490-0918 

Facsimile: (415) 844-1928 

gtu@mcguirewoods.com 

Case 6:20-cv-00539-ADA Document 64 Filed 05/07/21 Page 5 of 6
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J. Mark Mann 

Texas Bar No. 12926150 

G. Blake Thompson 

Texas Bar No. 24042033 

MANN | TINDEL | THOMPSON 

300 West Main Street 

Henderson, Texas 75652 

Telephone: (903) 657-8540 

mark@themannfirm.com 

blake@themannfirm.com 

Defendants Huawei Technologies Co., Ltd., 

Huawei Technologies USA Inc., Huawei 

Device Co. Ltd., Huawei Device (Shenzhen) 

Co., Ltd., and Huawei Device USA, Inc.,

CERTIFICATE OF SERVICE

 Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that on May 7, 2021, all counsel of record who have appeared in this case are being served with a 

copy of the foregoing via the Court’s CM/ECF system 

 /s/ Justin R. Lowery 

 Justin R. Lowery 

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