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. 

HUAWEI TECHNOLOGIES CO. LTD., 

et al., 

Defendants. 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

CIVIL ACTION No. 6:20-CV-534-ADA 

CIVIL ACTION No. 6:20-CV-536-ADA 

CIVIL ACTION No. 6:20-CV-538-ADA 

CIVIL ACTION No. 6:20-CV-542-ADA 

 

DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 1 of 37
 -iTABLE OF CONTENTS 

Page 

I. U.S. PATENT NO. 7,872,973 (“THE ’973 PATENT”) (CASE NO. 6:20-CV00538.................................................................................................................................. 1 

A. “a message to the upstream device to reduce a rate at which packets are 

sent to the queuing device to prevent the queue from filling” (claims 1, 9) .......... 1 

i. Huawei’s Proposed Construction Accords with the Specification 

and Prosecution History ............................................................................. 2 

ii. A Construction of “Plain and Ordinary Meaning” is Inadequate for 

the Current Term Because It Cannot Resolve the Parties’ Dispute ........... 4 

a. The Plain and Ordinary Meaning Will Blur the Boundary 

between the Current term (Message 1) and Message 2 ................. 5 

b. The Plain and Ordinary Meaning Cannot Reconcile 

WSOU’s Infringement and Validity Positions .............................. 5 

B. “the message” (claims 1, 9) ................................................................................... 6 

i. “The Message” is Indefinite Because It is Unclear Whether “the 

Message” Refers to Message 1 or Message 2 ............................................ 7 

ii. The Intrinsic Evidence Does Not Support WSOU’s Assertion That 

“The Message” Only Refers to Message 1 ................................................ 9 

C. “a module for, if the depth of the queue passes a predetermined threshold, 

sending a message to the upstream device to reduce a rate at which 

packets are sent to the queuing device to prevent the queue from filling, 

thereby preventing packet discarding and loss by the queuing device” 

(“Module 1”) (claim 9) ........................................................................................ 11 

D. “a module for sending a message reporting the depth of the queue to the 

upstream device to thereby enable the upstream device to determine 

whether to reduce or increase the rate at which the upstream device sends 

packets to the queuing device” (“Module 2”) (claim 9) ...................................... 11 

E. “a module for sending the message from the e stream device to an 

upstream network device to thereby control a rate at which the upstream 

device receives packets from the upstream network device” (“Module 3”) 

(claim 9) ............................................................................................................... 11 

i. The Current Terms Should be Construed under 35 U.S.C. §112, ¶ 

6, Because They Fail to Recite Sufficient Structure For Performing 

the Function in the Claim Language ........................................................ 11 

ii. The Specification Fails to Disclose the Corresponding Structure for 

the Current Terms .................................................................................... 14 

a. The Specification Fails to Disclose any Algorithm for 

Module 1 or Module 2 ................................................................. 15 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 2 of 37
TABLE OF CONTENTS

(continued) 

Page

-iib. The Specification Fails to Disclose any Algorithm for 

Module 3 ...................................................................................... 16 

II. U.S. PATENT NO. 8,249,446 (“THE ’446 PATENT”) (CASE NO. 6:20-CV00542) .............................................................................................................................. 17 

A. “[A method of / Apparatus for] regulating rogue behavior in an [optical

network component comprising an optical transmitter / optical

transmission device]” (claims 1, 15) .................................................................... 17 

i. Regulating a Rogue Behavior is Performed by a Subscriber-based

Component/Device as Repeatedly Characterized by the Patent and

Patent Applicants ..................................................................................... 18 

ii. WSOU Mischaracterizes the Phrase “Subscriber-based” ........................ 22 

iii. Huawei’s Invalidity Arguments in the IPR Petition are Consistent

with Huawei’s Proposed Construction Here ............................................ 24 

B. “output indicator” (claims 1, 15) ........................................................................ 25 

i. Huawei’s Proposed Construction is Supported by the Specification ....... 25 

ii. Construction is Necessary Because the Plain and Ordinary

Meaning as Interpreted by WSOU is Incorrect ........................................ 26 

iii. Huawei’s Proposed Construction Would Not Exclude any

Embodiment ............................................................................................. 27 

iv. Huawei’s Invalidity Arguments in the IPR Petition are Consistent

with Huawei’s Proposed Construction Here ............................................ 27 

C. “output [indicator] threshold (claims 1, 15) ........................................................ 28 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 3 of 37
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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

B. Braun Med., Inc. v. Abbott Labs., 

124 F.3d 1419 (Fed. Cir. 1997)................................................................................................14 

01 Communique Laboratory, Inc. v. Citrix Systems, Inc.

889 F.3d 735 (Fed. Cir. 2018)....................................................................................................6 

Adaptix, Inc. v. AT&T Mobility LLC, 

2014 WL 12622302 (E.D. Tex. May 29, 2014) .................................................................7, 8, 9 

Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 

521 F.3d 1328 (Fed. Cir. 2008)..........................................................................................15, 16 

Edwards Lifesciences LLC v. Cook Inc., 

582 F.3d 1322 (Fed. Cir. 2009)................................................................................................20 

EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 

785 F.3d 616 (Fed. Cir. 2015)..................................................................................................14 

Ergo Licensing, LLC v. CareFusion 303, Inc., 

673 F.3d 1361 (Fed. Cir. 2012)................................................................................................15 

Finjan, Inc. v. Juniper Networks, Inc., 

No. C 17-05659, Dkt. 491 (N.D. Cal. May 8, 2019) ...................................................24, 28, 29 

Function Media, L.L.C. v. Google Inc., 

708 F.3d 1310 (Fed. Cir. 2013)..........................................................................................15, 16 

Huawei Technologies Co., Ltd. v. WSOU Investments LLC d/b/a Brazos Licensing 

and Development, 

IPR2021-00228 ........................................................................................................................24 

HZNP Medicines LLC, et al., v. Actavis Laboratories UT, Inc., 

940 F.3d 680 (Fed. Cir. 2019)....................................................................................................7 

Implicit L.L.C. v. F5 Networks, Inc., 

2015 WL 2194627 (N.D. Cal. May 6, 2015) .............................................................................9 

LG Electronics, Inc. v. Bizcom Electronics, Inc., 

453 F.3d 1364 (Fed. Cir. 2006)................................................................................................14 

Liebel-Flarsheim Co. v. Medrad, Inc., 

481 F.3d 1371 (Fed. Cir. 2007)..........................................................................................22, 27 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 4 of 37
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O2 Micro International Ltd. v. Beyond Innovation Technology Co., 

521 F.3d 1351 (Fed. Cir. 2008)............................................................................................4, 26

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) (en banc) .........................................................................20, 21 

Pitney Bowes, Inc. v. Hewlett-Packard Co., 

182 F.3d 1298 (Fed. Cir. 1999)................................................................................................18 

Rain Computing, Inc. v. Samsung Electronics America, Inc., et al., 

Case No. 20-1646, Dkt. No. 45 (Fed. Cir. Mar. 2, 2021) ..................................................13, 15 

Sensor Electronic Technology, Inc. v. Bolb, Inc., 

2019 WL 4645338 (N.D. Cal. Sep. 24, 2019) ...........................................................................9 

Shire Development LLC, et al., v. Teva Pharmaceuticals USA, Inc., et al., 

2019 WL 969638 (D. DE. Feb. 28, 2019) ...................................................................24, 28, 29 

Techtronic Industries v. International Trade Commission, 

944 F.3d 901 (Fed. Cir. 2019)..................................................................................................20 

Ultravision Techs., LLC v. Lamar Advert. Co., 

2017 WL 3836139 (E.D. Tex. Apr. 18, 2017) .........................................................................11 

Williamson v. Citrix Online, LLC, 

792 F.3d 1339 (Fed. Cir. 2015) (en banc) .............................................................11, 12, 13, 14 

Statutes 

35 U.S.C. 112, ¶ 6 ..............................................................................................................11, 12, 14 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 5 of 37
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TABLE OF EXHIBITS 

Exhibit Description 

Ex. 1 Appl. Ser. No. 11/377,578, 01/06/2009 non-final Office Action 

Ex. 2 Appl. Ser. No. 11/377,578, 03/03/2009 Office Action response 

Ex. 3 Appl. Ser. No. 11/377,578, 04/08/2009 Pre-appeal Brief 

Ex. 4 Appl. Ser. No. 11/377,578, 07/17/2009 Appeal Brief 

Ex. 6 Declaration of Tal Lavian Ph.D. regarding Claim Construction 

Ex. 7 Appl. Ser. No. 11/377,578, 07/27/2010 Office Action response 

Ex. 8 Appl. Ser. No. 12/649,606, 02/07/2012 Office Action response 

Ex. 9 ITU 984.1 (03/2008), “SERIES G: TRANSMISSION SYSTEMS AND 

MEDIA, DIGITAL SYSTEMS AND NETWORKS, Digital sections and 

digital line system – Optical line systems for local and access networks, 

Gigabit-capable passive optical networks (GPON): General characteristics” 

Ex. 10 Huawei Technologies Co., Ltd. v. WSOU Investments LLC d/b/a Brazos 

Licensing and Development, IPR2021-00228, Pet. For Inter Partes Review 

(PTAB filed Nov. 30, 2020) 

Ex. 12 Finjan, Inc. v. Juniper Networks, Inc., No. C 17-05659, Dkt. 491, at 10 (N.D. 

Cal. May 8, 2019) 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 6 of 37
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Pursuant to the deadline set forth in the Scheduling Order (Dkt. 34), and the guidelines 

regarding claim construction set forth in the Order Governing Proceedings in Patent Cases 

(“OGP”) (Version 3.2), Defendants Huawei Technologies Co., Ltd., et al., (collectively, 

“Huawei”) respectfully submit this Responsive Claim Construction Brief to Plaintiff’s 

(“WSOU’s”) Opening Claim Construction Brief (“Opening Brief”) (See, e.g., -00542, Dkt. 43).1 

I. U.S. Patent No. 7,872,973 (“the ’973 Patent”) (Case No. 6:20-cv-00538) 

A. “a message to the upstream device to reduce a rate at which packets are sent 

to the queuing device to prevent the queue from filling” (claims 1, 9) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

“a message instructing the upstream device to 

reduce a rate at which packets are sent to the 

queuing device to prevent the queue from 

filing”2

Plain and ordinary meaning 

 Claims 1 of the ’973 Patent requires, in relevant part: 

 

1

 This Brief addresses the disputed claim terms (that the parties were collectively permitted 

to present to the Court for resolution pursuant to the OGP (Version 3.2)) for Case Nos. 6:20-cv00534, -00536, -00538, and -00542. Given the restrictions in OGP (Version 3.2), the parties are 

not presenting any disputed claim terms for Case No. 6:20-cv-00534 (U.S. Pat. No. 7,095,713) 

and Case No. 6:20-cv-00536 (U.S. Pat. No. 7,515,546). 

2

 Huawei’s proposed construction has been slightly modified to replace “controlling” with 

“instructing” in order to more closely reflect the intrinsic evidence as discussed below. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 7 of 37
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’973 Patent, claim 13

 (annotated). As shown above, the plain claim language creates unresolvable 

ambiguity as to whether the first “a message” appearing in the current disputed term in element 

[1b] (“Message 1”) or the second “a message” appearing in the following element [1c] (“Message 

2”) is “the message” in the last claim element [1d]. See Section I.B. In order to address this issue, 

it is necessary to first construe the current disputed term to clarify its scope and relationship with 

the following elements. 

i. Huawei’s Proposed Construction Accords with the Specification and 

Prosecution History 

 According to the claim language reproduced above, packets are sent from an upstream 

device to a queuing device, which corresponds to the scenario shown in Fig. 1, reproduced below. 

’973 Patent, Fig. 1 (annotated). With reference to this configuration, the specification provides 

that an upstream device may adjust a rate of packets to prevent packet loss in two ways: (1) 

“passively” enforce a command to reduce a rate of the packets, and/or (2) “actively” control a rate 

of the packets by determining whether to reduce or increase the rate based on the received depth 

of the queue in a queuing device. See e.g., id., 5:55-60, 6:3-8, 7:7-9 and 17-21. As to (1), the 

specification states that the upstream device 120 may be instructed to slow down or stop sending 

 

3

 Claim 9 contains similar claim limitations and so only the claim language from claim 1 is 

addressed here. The same arguments would equally apply to claim 9. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 8 of 37
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traffic destined to the queuing device 140 when the queue(s) in the queuing device 140 are 

congested4. See id., 5:55-60 (“Instead of allowing the queuing device 140 to fill its queues and 

discard traffic packets, the queue depth monitoring system alerts an upstream device 

(e.g., 120 in FIG. 1) to slow down or stop sending traffic destined to the congested queue or queues 

in the queuing device 140”). Therefore, Huawei’s proposed construction for the current term 

(Message 1) is fully supported by the above-identified disclosure with respect to the instructing 

message/command. 

The prosecution history of the ’973 Patent further demonstrates the necessity of including 

“instructing” in the construction of the disputed term above because it differentiates Message 1 

from Message 2. Specifically, during prosecution, in order to overcome the Gupta prior art 

reference that taught “a message instructing the ingress queue to slow down the rate at which 

packets are dequeued,” disclosing Message 1, the patent applicants amended the claims to add the 

claim limitation of Message 2 (allowing active control by an upstream device). See Ex. 1, “Appl. 

Ser. No. 11/377,578, 01/06/2009 non-final Office Action,” at 3 and Ex. 2, “Appl. Ser. No. 

11/377,578, 03/03/2009 Office Action response,” at 2, 4. To secure allowance of the ’973 Patent, 

in a Pre-appeal Brief, the patent applicants argued: 

 

4

 With respect to “passively” enforcing a command, the specification also provides that 

another message may be sent to the upstream device 120 to increase the rate of packets when the 

queue(s) in the queueing device 140 are drained. See ’973 Patent, claim 2 and 5:60-62. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 9 of 37
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Ex. 3, “Appl. Ser. No. 11/377,578, 04/08/2009 Pre-appeal Brief,” at 3 (emphasis added). In the 

Appeal Brief, the patent applicants further argued: 

Ex. 4, “Appl. Ser. No. 11/377,578, 07/17/2009 Appeal Brief,” at 11 (emphasis added). 

Tellingly, the patent applicants argued that Message 2 is different from Gupta’s direct 

command that dictates/instructs an ingress queue (the claimed upstream device) to slow down a 

rate of packets, which is Message 1. As such, the patent applicants’ argument evidences that (1) 

Message 1, like Gupta’s direct command, is a message to directly instruct/command an upstream 

device to reduce a rate of packets, and thus the upstream device passively enforces this message, 

and that (2) Message 1, unlike Message 2, is not a message to enable an upstream device itself to 

actively control a rate of packets. 

ii. A Construction of “Plain and Ordinary Meaning” is Inadequate for the 

Current Term Because It Cannot Resolve the Parties’ Dispute

The plain and ordinary meaning is inadequate because it cannot “resolve the parties’ 

dispute” as the current term has “more than one ordinary meaning.” O2 Micro International Ltd. 

v. Beyond Innovation Technology Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). 

 

 

 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 10 of 37
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. Therefore, the plain and ordinary 

meaning, asserted by WSOU, cannot resolve parties’ dispute at least as to whether the scope of the 

current term includes any message that will eventually “reduce a rate at which packets are sent to 

the queuing device,” regardless of directly or indirectly. 

a. The Plain and Ordinary Meaning Will Blur the Boundary 

between the Current term (Message 1) and Message 2

The parties’ dispute as stated above creates another problem – the scope of WSOU’s “plain 

and ordinary meaning” of the current term (Message 1) is too broad to include the scope of 

Message 2 because Message 2 may also result in “reduc[ing] a rate at which packets are sent to 

the queuing device.” However, that is impermissible in view of the prosecution history and 

specification as discussed above, and indeed the claim language itself. For example, claim 1 does 

not recite “the message reporting the depth of the queue to the upstream device, it recites “a

message reporting the depth . . . .” Therefore, the claim language requires that Message 1 in 

element [1b] and Message 2 in element [1c] be two different messages. Moreover, WSOU appears 

to agree with such an interpretation. See, e.g., Opening Brief, at 5-7 (where WSOU specifically 

argues that “the message” in the last claim limitation must be Message 1, and cannot be Message 

2.) 

b. The Plain and Ordinary Meaning Cannot Reconcile WSOU’s 

Infringement and Validity Positions 

WSOU’s interpretation of this claim for its infringement theories as discussed above 

contradicts WSOU’s arguments against indefiniteness. Specifically, in order to claim “the 

message” only refers to Message 1 to avoid indefiniteness, WSOU specifically argues that 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 11 of 37
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Message 1 (like “the message” in claim element [1d]) is to “reduce or control a rate,” and that 

Message 2 does not work because it only indirectly controls a rate by providing a message 

reporting the depth of the queue to “‘enable[]’ the ‘upstream device to determine whether to 

reduce or increase the rate.’” See Opening Brief, at 5, 7 (emphasis added). 

 Thus, WSOU attempts to use the “plain and ordinary meaning” here 

to conveniently manipulate the scope of the current term in a contradictory fashion to satisfy both 

its infringement and validity allegations. See 01 Communique Laboratory, Inc. v. Citrix Systems, 

Inc. 889 F.3d 735, 743 (Fed. Cir. 2018) (“A patent may not, like a nose of wax, be twisted one 

way to avoid anticipation and another to find infringement.” (citations omitted)). 

Based on the above, the Court should adopt Huawei’s proposed construction for this term. 

B. “the message” (claims 1, 9) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

Indefinite Plain and ordinary meaning 

Continuing the discussion of Messages 1 and 2 above, the parties’ dispute here centers on 

which message, namely Message 1 in element [1b] or Message 2 in element [1c], is “the message” 

in element [1d]. WSOU asserted that under the plain and ordinary meaning, “the message” refers 

to Message 1. However, WSOU’s four-page long argument as to why “the message” has to refer 

to Message 1, not Message 2, only serves to demonstrate the unresolvable ambiguity of the 

relationship between and among Message 1, Message 2, and “the message.” See Opening Brief, 

at 4-7. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 12 of 37
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i. “The Message” is Indefinite Because It is Unclear Whether “the 

Message” Refers to Message 1 or Message 2 

One of the cornerstones of the definiteness requirement is “to afford clear notice of what 

is being claimed so as to apprise the public of what is still open to them.” HZNP Medicines LLC, 

et al., v. Actavis Laboratories UT, Inc., 940 F.3d 680, 694 (Fed. Cir. 2019). The meaning of “the 

message” cannot be determined based on the claim language, specification, or prosecution history, 

and so fails to inform, with reasonable certainty, those skilled in the art about the scope of the 

invention. See Ex. 6, Lavian Declaration, at ¶¶ 133-147. 

For example, as compared below, the indefiniteness of “the message” is extremely similar 

to that of “the indication” in Adaptix, Inc. v. AT&T Mobility LLC, where claim 2 of the patent in 

question was found invalid because it “does not specify whether the indication to be sent by the 

subscriber unit is that of element [d] or [e] in claim 1.” See Adaptix, Inc., 2014 WL 12622422, at 

*7-8 (E.D. Tex. March 24, 2014).5

Claim Language in Adaptix, Inc. Claim Language in Claim 16

1. A method for subcarrier selection for 

a system employing orthogonal 

frequency division multiple access 

(OFDMA) comprising: 

. . . 

[d] the subscriber unit receiving an 

indication of subcarriers of the set of 

subcarriers selected by the base station 

for use by the subscriber unit; and 

1. A method for incorporating a queuing device as a 

lossless processing stage in a network device in a 

communications network between an upstream device 

and a downstream device in the network device, 

comprising: 

. . . 

[1b] . . . sending a message to the upstream device to 

reduce a rate at which packets are sent to the queuing 

device to prevent the queue from filling, thereby 

preventing packet discarding and loss by the queuing 

device [(“Message 1”)]; 

 

5

 This Report and Recommendation of the United States Magistrate Judge was later affirmed 

by an Order of granting Defendants’ Motion for Summary Judgement on claims 2-4 based on 

indefiniteness. See Adaptix, Inc. v. AT&T Mobility LLC, 2014 WL 12622302, at *2 (E.D. Tex. 

May 29, 2014). 

6

 Claim 9 requires similar claim limitations and so only claim language in claim 1 is 

addressed here. The same arguments for claim 1 above would equally apply to claim 9. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 13 of 37
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[e] the subscriber submitting updated 

feedback information, after being 

allocated the set of subcarriers to be 

allocated an updated set of subcarriers, 

and thereafter the subscriber unit 

receiving another indication of the 

updated set of subcarriers. 

2. The method defined in claim 1 

further comprising the subscriber unit 

sending the indication to the base 

station. 

[1c] sending a message reporting the depth of the 

queue to the upstream device to thereby enable the 

upstream device to determine whether to reduce or 

increase the rate at which the upstream device sends 

packets to the queuing device [(“Message 2”)]; and 

[1d] sending the message from the upstream device to 

an upstream network device to thereby control a rate 

at which the upstream device receives packets from 

the upstream network device. 

Like in Adaptix, the specification and prosecution history of the ’973 Patent also fail to 

shed light on which of the two messages in elements [1b] and [1c] is “the message” in element 

[1d]. For example, the patent applicants amended the claims to add element [1d] based on the 

disclosure at 6:26-32 during prosecution. See Ex. 7, “Appl. Ser. No. 11/377,578, 07/27/2010 

Office Action response,” at 4, 6, 17. The specification of the ’973 Patent at 6:26-32 recites: 

According to one embodiment, the upstream device 120 may forward or relay a 

message from the queuing device 140 (i.e., with respect to controlling the rate at 

which packets are sent to the queuing device 140) to an upstream network device 

(not shown but similar to network device 110) in the network 100 to thereby 

control the rate that which the upstream device 120 receives packets from the 

upstream network device. 

(emphasis added). However, both Message 1 and Message 2 act “with respect to controlling the 

rate,” because they both can affect a rate of packets (e.g. by Message 1 directly instructing an 

upstream device to reduce a rate of packets or by Message 2 enabling an upstream device to 

actively control a rate of packets ). See Section I.A.i. In fact, the above-identified disclosure 

mostly mirrors the claim language in element [1d]. This disclosure then further confirms that “the 

message” in element [1d] is “forward[ed] or relay[ed]” to an upstream network device, and so it is 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 14 of 37
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not a whole new message created by an upstream device. See ’973 Patent, 6:27-29. Accordingly, 

like “the indication” in Adaptix above, “the message” is indefinite. 

 Likewise, the indefiniteness of “the message” is similar to that of “the material” in Sensor 

Electronic Technology, Inc. v. Bolb, Inc., where claim 26 of the patent reciting “the material” was 

found invalid because claim 11, which claim 26 depends from, “mentions ‘a material’ twice, first 

in reference to ‘a first layer composed of a material,’ and second in reference to ‘a second layer 

composed of a material.’” Sensor Electronic Technology, Inc. v. Bolb, Inc., 2019 WL 4645338, 

at *31-32 (N.D. Cal. Sep. 24, 2019). Accordingly, the court in Sensor concluded that “it is 

ambiguous whether the claim term ‘the material’ refers to ‘a first layer composed of a material,’ 

or ‘a second layer composed of a material,’ or both.” Id.; see also Implicit L.L.C. v. F5 Networks, 

Inc., 2015 WL 2194627, at *11 (N.D. Cal. May 6, 2015) (“the term ‘the packet of the message’ in 

dependent Claim 9 appears to be indefinite as lacking proper antecedent basis, because Claim 1 

recites both ‘a received packet’ and ‘subsequent packets,’ making it unclear which ‘packet’ Claim 

9 references”). The same as in Adaptix, the specification in Sensor Electronic Technology cannot 

solve the puzzle. See Sensor Electronic Technology, Inc., 2019 WL 4645338, at *32. 

ii. The Intrinsic Evidence Does Not Support WSOU’s Assertion That 

“The Message” Only Refers to Message 1 

WSOU contends that “the message” refers to Message 1 because “only elements 1b and 1d 

specify that the sending of the message is to either reduce or control a rate,” and “in element 1c, 

the act of sending of the message itself does not affect rate.” Opening Brief, at 5, 7. However, all 

the intrinsic evidence suggests otherwise. First, element [1d] requires “sending the message from 

the upstream device to an upstream network device to thereby control a rate at which the upstream 

device receives packets from the upstream network device.” Element [1d] itself does not specify 

a way of controlling the rate. The phrase “to thereby control a rate” only expresses an effect 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 15 of 37
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resulted from the operation of an upstream network device after it receives “the message” from an 

upstream device. Second, the claim language and specification explicitly recite that Message 2 can 

enable an upstream device to determine whether to reduce or increase the rate, and, therefore, 

Message 2 is also acts respect to controlling a rate of packets. ’973 Patent, claims 1, 9 and 7:17-

21. In fact, compared to Message 1, which only instructs an upstream device to reduce a rate of 

packets, Message 2 enables the upstream device to “fully control” a rate of packets by either 

reducing or increasing the rate. Third, during prosecution, the patent applicants amended the 

claims to add element [1c] and Message 2 and explicitly argued that “[b]y periodically reporting 

queue depths rather than only reporting threshold crossing events, the system will let the source 

determine an appropriate transmit rate . . . .” Ex. 2, “Appl. Ser. No. 11/377,578, 03/03/2009 

Office Action response,” at 2, 4, 13 (emphasis added). Therefore, Message 1 is not the only 

message that relates to controlling a rate of packets. 

As to WSOU’s contention that “the act of sending of [sic] the message itself [in element 

[1c] with respect to Message 2] does not affect rate,” (Opening Brief, at 7), that claim is incorrect 

for several reasons. First, to be precise, the rate is actually affected by the operation of an upstream 

device after receiving Message 1 and/or Message 2, instead of “the act of sending [] the message 

itself,” as claimed by WSOU. Second, as stated above, the intrinsic evidence shows that Message 

2 also involves rate control. 

 

As such, WSOU’s contention that only Message 1 is “the message” is incorrect. As shown 

above, the meaning of “the message” cannot be determined based on the claim language, 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 16 of 37
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specification, or prosecution history of the ’973 Patent, and therefore claims 1 and 9 are indefinite 

and therefore invalid. 

C. “a module for, if the depth of the queue passes a predetermined threshold, 

sending a message to the upstream device to reduce a rate at which packets 

are sent to the queuing device to prevent the queue from filling, thereby 

preventing packet discarding and loss by the queuing device” (“Module 1”) 

(claim 9) 

D. “a module for sending a message reporting the depth of the queue to the 

upstream device to thereby enable the upstream device to determine whether 

to reduce or increase the rate at which the upstream device sends packets to 

the queuing device” (“Module 2”) (claim 9) 

E. “a module for sending the message from the e stream device to an upstream 

network device to thereby control a rate at which the upstream device receives 

packets from the upstream network device” (“Module 3”) (claim 9) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

Subject to 35 U.S.C. § 112, ¶6 

Indefinite for failure to disclose sufficient 

corresponding structure. 

Plain and ordinary meaning 

The parties dispute whether the limitations above are drafted in a manner that invokes 35 

U.S.C. §112, ¶ 6, and if so, whether there is adequate corresponding structure that is clearly linked 

to and can accomplish the claimed function.7

i. The Current Terms Should be Construed under 35 U.S.C. §112, ¶ 6, 

Because They Fail to Recite Sufficient Structure For Performing the 

Function in the Claim Language 

 

7

 WSOU alleges that Huawei failed to provide arguments in the Preliminary Invalidity 

Contentions to rebut a presumption against applying 35 U.S.C. §112, ¶ 6 due to the lack of the 

word “means.” See Opening Brief, at 8. However, Huawei’s Preliminary Invalidity Contentions 

do not require such a showing. See Ultravision Techs., LLC v. Lamar Advert. Co., 2017 WL 

3836139, at *1 (E.D. Tex. Apr. 18, 2017) (holding that contentions only need to provide “adequate 

notice and information with which each party can litigate their cases”). 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 17 of 37
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In Williamson v. Citrix Online, LLC, the Federal Circuit determined to abandon a strong 

presumption that a limitation lacking the word “means” is not subject to § 112, ¶ 6, and clarified 

that the presumption can be overcome “if the challenger demonstrates that the claim term fails to 

‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure 

for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 

2015) (en banc) (citation omitted). In Williamson, the claim in dispute recited: 

a presenter computer system . . . 

an audience member computer system . . . 

a distributed learnings server . . . comprising: . . . a distributed learning control 

module for receiving communications transmitted between the presenter and the 

audience member computer systems and for relaying the communications to an 

intended receiving computer system and for coordinating the operation of the 

streaming data module . . . . 

(emphasis added). The Federal Circuit held that the claim did not describe “how the distributed 

learning control module interacts with other components in the distributed learnings server in a 

way” that may inform the structure of the module. Id. at 1351. The same as the “distributed 

learning control module” in Williamson, claim 9 also fails to describe how the current modules 

interact with each other or with other modules that are executed by the same processor. As such, 

the current module limitations should also invoke 35 U.S.C. §112, ¶ 6. 

WSOU argues that the claim language recites a specific structure that can perform the 

functions as claimed, including various devices in the preamble, and a processor. See Opening 

Brief, at 8-10. However, in Williamson, the Federal Circuit recognized that the claim “do[es] 

describe certain inputs and outputs at a very high level (e.g., communications between the 

presenter and audience member computer systems),” but determined that those descriptions do not 

inform structure for the distributed learning control module. Williamson, 792 F.3d at 1351. 

Similarly, while claim 9 provides high-level descriptions about various devices and a processor in 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 18 of 37
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a network device, it still fails to inform any structural character between the current modules and 

those devices. See Ex. 6, Lavian Declaration, at ¶¶ 148-150, 152. For example, claim 9 fails to 

inform whether the current modules are located within any of the devices as recited by the 

preamble, or external to all of them. See id., at ¶151. 

WSOU cites Zeroclick, LLC v. Apple Inc., where the Federal Circuit determined that 

“program” and “user interface code” are not per se nonce words. See Opening Brief, at 8-9, citing 

Zeroclick, LLC, 891 F.3d 1003, 1007-09 (Fed. Cir. 2018). However, Zeroclick is distinguishable. 

In Zeroclick, the “program” had an existing/conventional graphical user interface program as its 

antecedent reference, and “user interface code” was “meant to be updated using two configuration 

changes recited in the claim—to the code stored in a memory connected to the 

processor.” Zeroclick, LLC, 891 F.3d at 1008. Importantly, Zeroclick’s context does not exist in 

claim 9. In contrast, in claim 9, the “module” in the current module terms is merely a nonce word 

and does not connote any structure to a person of ordinary skill in the art. See Ex. 6, Lavian 

Declaration, at ¶ 150; see also Williamson, 792 F.3d at 1350 (“the word ‘module’ does not provide 

any indication of structure because it sets forth the same black box recitation of structure for 

providing the same specified function as if the term ‘means’ had been used”); Rain Computing, 

Inc. v. Samsung Electronics America, Inc., et al., Case No. 20-1646, Dkt. No. 45 at 5 (Fed. Cir. 

Mar. 2, 2021) (“‘module’ here [in “user identification module”] does not provide any indication 

of structure.”) 

Next, WSOU cites to Fig. 3 from the ’973 Patent and asserts that the current modules can 

be resident in the memory. See Opening Brief, at 9-10. However, claim 9 does not recite any 

memory. Therefore, WSOU cannot assert that claim 9 has recited sufficient structure based on 

memory that is only disclosed in the specification. See Ex. 6, Lavian Declaration, at ¶ 154. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 19 of 37
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Nevertheless, WSOU appears to argue that as long as the claim language recites a CPU and a 

memory, sufficient structure can be found. See id., at 10 (citing LG Electronics, Inc. v. Bizcom 

Electronics, Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006)). However, in LG Electronics, the claim 

language explicitly recited “the control unit comprises a [central processing unit (‘CPU’)] and a 

partitioned memory system,” and thus the Federal Circuit found “the control unit” was not a 

means-plus-function term and should be construed as “a combination comprising a CPU and a 

partitioned memory system capable of controlling the communication unit.” LG Electronics, Inc.,

453 F.3d at 1372 (emphasis added). To the contrary, claim 9 does not recite that the current 

modules comprise any such structure. See Ex. 6, Lavian Declaration, at ¶ 153. Based on the 

foregoing, 35 U.S.C. 112, ¶ 6 should be invoked. 

ii. The Specification Fails to Disclose the Corresponding Structure for the 

Current Terms 

35 U.S.C. 112, ¶ 6 requires that the court determine “what structure, if any, disclosed in 

the specification corresponds to the claimed function.” Williamson, 792 F.3d at 1351. The 

“structure disclosed in the specification is ‘corresponding’ structure only if the specification or 

prosecution history clearly links or associates that structure to the function recited in the claim.” 

B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). WSOU has failed to 

identify any corresponding structure in the specification for the module limitations in its Opening 

Brief. 

Huawei anticipates that WSOU may argue that a memory (330) and/or a processor (320 or 

160) of a data processing system (300) are the corresponding structure as WSOU relied on those 

disclosures to argue that sufficient structure exists in the claim language. See Opening brief, at 9-

10 (citing ’973 Patent, 4:50-64 and Figs. 1-2). Yet WSOU’s arguments directly contradicts blackletter law relating to claim construction. See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 20 of 37
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785 F.3d 616, 621 (Fed. Cir. 2015) (“this court has consistently required that the structure disclosed 

in the specification be more than simply a general purpose computer or microprocessor”); see also 

Rain Computing, Case No. 20-1646, Dkt. No. 45 at 8 (holding that computer-readable media or 

storage device[s] are not sufficient structure for the “control access” function of “user 

identification module” because “these computer-readable media or storage devices amount to 

nothing more than a general-purpose computer”). Further, when the claim requires a computerimplemented function, the corresponding specification must disclose an algorithm that 

accomplishes the claimed function. See Function Media, L.L.C. v. Google Inc., 708 F.3d 1310, 

1318 (Fed. Cir. 2013); see also Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 

1328, 1332-33 (Fed. Cir. 2008). WSOU has failed to identify any algorithms for performing 

functions as claimed. See Ex. 6, Lavian Declaration, at ¶¶ 156-157. 

a. The Specification Fails to Disclose any Algorithm for Module 1 

or Module 2 

Notably, the specification fails to disclose any algorithm that accomplishes either the step 

of “if the depth of the queue passes a predetermined threshold, sending a message to the upstream 

device to reduce a rate at which packets are sent to the queuing device . . ,” or the step of “sending 

a message reporting the depth of the queue to the upstream device to thereby enable the upstream 

device . . ,” as claimed. WSOU may argue that the flow chart in Fig. 3 and corresponding 

descriptions at 7:1-21 disclose the algorithms. However, those disclosures are insufficient because 

they only mirror the functions as required by the claim language. See Aristocrat Techs., 521 F.3d 

at 1334 (finding insufficient “language [that] simply describes the function to be performed, not 

the algorithm by which it is performed’); see also Ex. 6, Lavian Declaration, at ¶ 158. 

Those disclosures fall far short of disclosing the required “step-by-step procedure” for 

sending a message to an upstream device to reduce a rate of packets to the queuing device thereby 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 21 of 37
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preventing packet discarding and loss by the queuing device. See Ergo Licensing, LLC v. 

CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (“an algorithm is still ‘a step-by-step 

procedure’ for accomplishing a given result”). For example, in order to prevent packet discarding 

and loss, certain coordination must occur among and between the upstream device (packet sender), 

the queuing device (packet receiver), and “certain structure” that sends a message to the upstream 

device. However, there is no disclosure of any algorithm in the specification for performing such 

coordination to accomplish a lossless status. See Ex. 6, Lavian Declaration, at ¶ 159. 

Similarly, to enable the upstream device to determine whether to reduce or increase the 

rate, certain coordination is also needed among and between the upstream device (packet sender), 

the queuing device (packet receiver and a reporter of the depth of the queue within it), and “certain 

structure” that sends a message reporting the depth of the queue to the upstream device (and 

receives the information about the depth of the queue from the queuing device). Again, there is 

no disclosure of any algorithm in the specification for performing such coordination to accomplish 

enablement. See Ex. 6, Lavian Declaration, at ¶ 160. 

b. The Specification Fails to Disclose any Algorithm for Module 3 

The specification also fails to disclose any algorithm that accomplishes the claimed 

function of “sending the message from the e stream device to an upstream network device to 

thereby control a rate . . . .” See Ex. 6, Lavian Declaration, at ¶ 161. There is no flow chart or 

similar description that may possibly disclose algorithms that disclose how to perform the function 

as claimed. See Function Media, L.L.C., 708 F.3d at 1318; see also Aristocrat Techs., 521 F.3d at 

1332-33. Col. 6, lines 26-32 might be the only paragraph from the specification that is at all 

relevant to this function. See ’973 Patent, 6:26-32 (“the upstream device 120 may forward or relay 

a message from the queuing device 140 . . . to an upstream network device”). Accordingly, since 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 22 of 37
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the upstream device is a forwarder of the message, there must be certain coordination between the 

upstream device and “certain structure” that makes the upstream device forward the message to an 

upstream network device to thereby control a rate of packets. However, the specification is wholly 

silent in this regard, much less providing any corresponding algorithm. See Ex. 6, Lavian 

Declaration, at ¶ 162. 

Moreover, the specification discloses that various packets may be sent, such as Internet 

Protocol (“IP”) packets, multiprotocol label switching (“MPLS”) packets, or asynchronous 

transfer mode (“ATM”) packets. See ’973 Patent, 7:27-30. However, there is no disclosure in 

regard to detailed protocols, formats, or encoding/decoding methods of the claimed message that 

are required to carry out a step-by-step procedure with respect to adjusting transmissions of various 

packets between a network device and an upstream network device. See Ex. 6, Lavian Declaration, 

at ¶ 163. Therefore, the specification fails to provide any clue as to how “certain structure” makes 

the upstream device able to forward such an intra-device message (within the network device) to 

an external upstream network device to thereby control a rate of packets. Because the specification 

of the ’973 Patent fails to disclose an algorithmic structure that is clearly linked to the claimed 

functions in the current module limitations, claim 9 is indefinite and therefore invalid. See id. 

II. U.S. Patent No. 8,249,446 (“the ’446 Patent”) (Case No. 6:20-cv-00542)

A. “[A method of / Apparatus for] regulating rogue behavior in an [optical 

network component comprising an optical transmitter / optical transmission 

device]” (claims 1, 15) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

“[A method of /Apparatus for] regulating 

rogue behavior by a subscriber-based [optical 

network component comprising an optical 

transmitter / optical transmission device]” 

Plain and ordinary meaning 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 23 of 37
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The language of the preambles of claims 1 and 15 creates doubt as to whether “regulating 

rogue behavior in” means “regulating rogue behavior by” or “regulating rogue behavior that 

occurred at.” In other words, it is unclear whether the preambles function to inform which entity 

the claimed method/apparatus should be implemented with and through. Huawei’s proposed 

construction answers this question and eliminates this doubt. For this reason alone, Huawei’s 

proposed construction should be adopted by the Court. However, the patent applicants for the 

’446 Patent also disavowed the full scope of these claim terms by repeatedly characterizing these 

terms in the manner construed by Huawei both in the specification and during prosecution. As 

such, WSOU’s proposal of “plain and ordinary meaning” should be rejected, and Huawei’s 

proposed construction adopted.8

 

i. Regulating a Rogue Behavior is Performed by a Subscriber-based 

Component/Device as Repeatedly Characterized by the Patent and Patent 

Applicants 

 Giving the current terms their “plain and ordinary meaning” directly contradicts the 

intrinsic evidence, as doing so may cause the claims at issue to read on a non-subscriber-based 

component/device, which the specification disparages. For example, as shown below, Fig. 1 

illustrates a relationship between subscriber-based devices (e.g., optical network termination 

(“ONT”) 110, 111, 112, 113) and a non-subscriber-based device (e.g., optical line termination 

(“OLT”) 120) in a passive optical network (“PON”) where a non-subscriber-based device that is 

usually located in the network provider’s switching office is connected by fiber optic cable (101) 

to a number of subscriber-based devices serving subscribers. See ’446 Patent, 1:53-59. 

 

8

 Importantly, WSOU does not challenge the fact that these preambles recite essential steps 

and/or are necessary to give life, meaning, and vitality to claims 1 and 15 of the ’446 Patents, and 

are thus should be considered limiting. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 

1298, 1305 (Fed. Cir. 1999) (“In general, a preamble limits the invention if it recites essential 

structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”). 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 24 of 37
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Id., Fig. 1 (annotated). 

In a PON (as shown above), each ONT is assigned time slots for upstream transmission, 

which are tightly scheduled by the OLT to maximize the available transmission time. Id., 2:6-11. 

One problem encountered with an ONT is rogue behavior where one or more ONTs are “overtransmitting, and therefore transmitting, at least part of the time, at the wrong times,” resulting in 

disrupting communications for the entire PON. Id., 2:18-24. To address this issue, the 

specification discloses the existing solution (ONT rogue detection and regulation by a nonsubscriber-based device (e.g., OLT)), and explicitly stresses that the existing solution is 

undesirable because a rogue behavior occurring at a subscriber-based device (e.g., ONT) on the 

other end of PON may have compromised the transmissions between them. See id., 2:32-39 

(“First, the offending ONT must somehow be detected. The OLT will naturally be able to perceive 

in most cases that transmissions on the PON are not occurring normally.” However, “since in this 

event a rogue ONT is likely transmitting at the wrong time, or disrupting the transmissions from 

the ONTs to the OLT, it may be difficult to identify the offending ONT.” As a result, “existing 

solutions that rely on communication between the OLT and one or more ONTs are often not 

satisfactory.”). 

Therefore, the ’446 Patent proposed the alleged invention that is “directed to a manner of 

regulating rogue behavior in optical transmission devices, preferably by the optical transmission 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 25 of 37
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device itself or at least in a way that minimizes the need for communications with other network 

components.” Id., 2:61-65 (Summary) (emphasis added); see also id., 4:39-40 (“regulation of a 

rogue ONT mostly or exclusively by the ONT itself is desirable”) (emphasis added). Also, the 

specification explicitly states that “an object of the present invention is to leave much of this 

function in the respective ONTs themselves.” Id., 4:60-61 (emphasis added). Thus, giving the 

disputed preambles their “plain and ordinary meaning” does not exclude a non-subscriber-based 

device (e.g., OLT), which the specification of the ’446 Patent clearly disfavors. See Phillips v. 

AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (“the specification is ‘the single best 

guide to the meaning of a disputed term’”); Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 

1322, 1333 (Fed. Cir. 2009) (“Where the general summary or description of the invention describes 

a feature of the invention . . . and criticizes other products . . . that lack that same feature, this 

operates as a clear disavowal of these other products” (citation omitted)); Techtronic Industries v. 

International Trade Commission, 944 F.3d 901, 907 (Fed. Cir. 2019) (“patent disavows coverage 

of wall consoles lacking a passive infrared detector because the specification, in each of its 

sections, discloses as the invention a garage door opener improved by moving the passive infrared 

detector from the head unit to the wall console”). 

Accordingly, the specification only teaches how to regulate a rogue behavior by a 

subscriber-based optical network component/device (e.g., ONT) as recited by claims 1 and 15, and 

does not offer any solution on how to improve an existing rogue regulation method performed by 

OLT. See e.g., ’446 Patent, Figs. 2-3 and 5:9-7:61 (“An ONT for regulating rogue behavior will 

now be described in more detail. FIG. 2 is a simplified block diagram illustrating selected 

components of an ONT 200 according to an embodiment of the present invention . . . ,” and “Fig. 

3 is a flow diagram illustrating a method 300 . . . this description will be presented largely in terms 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 26 of 37
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of an ONT.”). In addition to Fig. 3, Fig. 4 further provides that an ONT can determine whether to 

disable its transmitter by additionally evaluating the network status based on OLT’s response to 

its network status query. See id., Fig. 4 and 7:62-9:53 (“FIG. 4 is a flow diagram illustrating a 

method 400 of detecting rogue behavior in an optical transmitter according to an embodiment of 

the present invention. As with the embodiment of FIG. 3, this embodiment will be described in the 

context of an ONT operating in a PON.”). 

Importantly, the specification concludes that “[i]n this manner, the present invention

provides a way to regulate ONT behavior, and rogue behavior in particular, and do so

autonomously—though an attempt is made to communicate with the OLT and take advantage of 

any reply that is received.” Id., 9:49-53 (emphasis added); see also id., 7:59-61. Notably, the 

rogue regulation method as provided in Fig. 4 cannot be performed by an OLT, because if so, it is 

unnecessary to send any network status query (as OLT already knows the network status). 

Therefore, it is clear that the specification has defined “the present invention” to be a subscriberbased device (e.g., ONT) that self-regulates a rogue behavior, which can be done with or without 

knowing the network status from the OLT. 

The claims themselves also show the necessity of construing the preambles as proposed by 

Huawei. See Phillips, 415 F.3d at 1314 (“The claims themselves provide substantial guidance as 

to the meaning of particular claim terms.”). For example, claim 4 recites “determining whether to 

disable the optical transmitter.” ’446 Patent, claim 4; see also id., claims 5, 7-11 (“disable the 

optical transmitter”). Since the preamble of claim 1 recites “an optical network component 

comprising an optical transmitter,” the optical network component cannot be a non-subscriberbased device because only a subscriber-based device may have a rogue behavior and so its optical 

transmitter needs to be disabled as required by claims 4, 5, and 7-11. See id. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 27 of 37
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The prosecution history also confirms Huawei’s proposed construction. During 

prosecution of the application that would eventually issue as the ’446 Patent, the patent applicants 

claimed that the prior art did not recognize “utility in first determining the optical component meets 

the criteria for advance replacement, and then reversing that determination,” and commented that 

“[i]ndeed, one of ordinary skill in such circumstances would likely simply replace the optical 

component since it has been identified as being ready for replacement.” Ex. 8, “Appl. Ser. No. 

12/649,606, 02/07/2012 Office Action response,” at 9. Accordingly, the patent applicants have 

admitted that the “optical component” as claimed is a subscriber-based optical network 

component/device because it is the entity that would be replaced if being identified as being ready 

for replacement (e.g., due to a rogue behavior), or would not be replaced if the determination of 

replacement is reversed. 

Moreover, as stated above, the specification only teaches how to self-regulate a rogue 

behavior by a subscriber-based optical network component/device as recited by claims 1 and 15. 

See ’446 Patent, Figs. 2-4 and 5:9-8:53. Under the plain and ordinary meaning, claims 1 and 15 

will likely be rendered invalid because they cover embodiments not enabled by the patent 

disclosure. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1378-80 (Fed. Cir. 2007) 

(holding that claims covering injectors with and without a pressure jacket were not enabled where 

the patent taught only injectors with a pressure jacket). 

ii. WSOU Mischaracterizes the Phrase “Subscriber-based” 

WSOU argues in its Opening Brief that “in the specification the phrase ‘subscriber-based’ 

is only used in the specification with reference to one type of optical component, an ONT” based 

on the paragraph shown below. Opening Brief, at 13. WSOU then challenged the alleged 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 28 of 37
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unreasonableness of a hypothetical scenario in which the scope of the terms “optical network 

component” or “optical transmission device” are limited to ONTs. See id., at 14. 

The present invention will now be described in terms of detecting rogue behavior 

in an ONT operating within a PON. It should be recognized, however, that the 

present invention has applicability for use in other optical transmission devices and 

in other networks as well. Again, it is noted that herein the term “ONT” is meant to 

include all subscriber-based optical network components. 

See id., at 13-14 (citing ’446 Patent, 4:28-34). WSOU misunderstands the meaning of this 

paragraph. The term ONT is used as a collective noun in the specification of the ’446 Patent for 

all types of subscriber-based optical network components/transmission devices (e.g., ONT device 

itself or any device located at and serving a subscriber, such as ONU or MDU9

). See ’446 Patent, 

4:48-50. Therefore, the excerpt above states “the present invention has applicability for use in 

other optical transmission devices [such as ONU or MDU].” Id., 4:32-34. 

WSOU’s mischaracterization is further evidenced by the description of “subscriber-based” 

devices in the specification. See id., 1:63-2:5 (“‘ONT’ is intended to refer broadly to all 

subscriber-based optical network components. Different ONTs may, for example, be associated 

with a particular residence, while others may be associated with apartment buildings and small 

businesses, and permit access for a number of separate subscribers.”) (emphasis added); and 4:48-

52 (“each of the ONTs are presumed to be located at and serving a different subscriber, perhaps 

at their respective residences. The ONT at each location is connected or connectable to a device 

of the subscriber, or to a network of such devices”) (emphasis added). As such, the “subscriber-

 

9

 ONU stands for optical network unit and MDU stands for multi-dwelling unit. They are 

also subscriber-based optical network devices located at and serving a subscriber. See Ex. 9, ITU 

984.1 (03/2008), “SERIES G: TRANSMISSION SYSTEMS AND MEDIA, DIGITAL 

SYSTEMS AND NETWORKS, Digital sections and digital line system – Optical line systems for 

local and access networks, Gigabit-capable passive optical networks (GPON): General 

characteristics,” at §§ 1, 5.1.1, and 5.2. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 29 of 37
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based [optical network component comprising an optical transmitter / optical transmission 

device],” as construed by Huawei, would include ONT devices themselves (not used as a collective 

noun), but are not limited to them. 

iii. Huawei’s Invalidity Arguments in the IPR Petition are Consistent with 

Huawei’s Proposed Construction Here 

 WSOU further argues that Huawei did not construe this term in the parallel IPR 

proceedings involving the ’446 Patent (“IPR Proceedings”), and that Huawei’s IPR petition failed 

to mention any “subscriber” or “subscriber-based” construction. See Opening Brief, at 14-15. 

However, in Huawei’s IPR petition, Huawei asserted that the O’Byrne prior art reference discloses 

a rogue-behavior regulation by ONT, which according to the specification, is one of the subscriberbased optical network components/transmission devices. See Ex. 10, Huawei Technologies Co., 

Ltd. v. WSOU Investments LLC d/b/a Brazos Licensing and Development, IPR2021-00228, Pet. 

For Inter Partes Review (PTAB filed Nov. 30, 2020) (“IPR Petition”), at 17-18. Therefore, it is 

unnecessary to construe the current term in the IPR proceedings, and WSOU would not be 

prejudiced by any inconsistency as alleged. See Ex. 12, Finjan, Inc. v. Juniper Networks, Inc., No. 

C 17-05659, Dkt. 491, at 10 (N.D. Cal. May 8, 2019) (holding that it is not fatal for the same expert 

to further construe a claim term in the district court case although the same term was not 

specifically proposed for construction in a parallel IPR proceeding); see also Shire Development 

LLC, et al., v. Teva Pharmaceuticals USA, Inc., et al., 2019 WL 969638, at *8 (D. DE. Feb. 28, 

2019) (holding that the statements in IPR proceedings and prosecution history are unenlightening 

when they do not specifically discuss an issue in claim construction). 

Based on the above, the Court should adopt Huawei’s proposed construction for this term. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 30 of 37
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B. “output indicator” (claims 1, 15) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

“indicator indicating an optical output being 

transmitted” 

Plain and ordinary meaning 

Huawei requests that the Court construe this term in order to resolve at the outset any 

dispute as to the scope of the asserted claims, as the meaning of this term is not commonly known 

to a person of ordinary skill in the art. Huawei’s proposed construction clarifies that the term 

“output” in the disputed term “output indicator” is an optical output being “transmitted” by an 

optical transmitter, instead of optical transmissions being received. 

i. Huawei’s Proposed Construction is Supported by the Specification 

Huawei’s proposed construction accords with the specification of the ’446 Patent. For 

example, Fig. 2 (annotated below) illustrates the configuration of ONT 200, which “includes a 

monitor 220 for monitoring one or more output indicators of the transmitter 212,” and Fig. 3 

provides a flow chart of ONT operation, including “[o]nce the device is initialized, one or more 

transmitter output indicators are monitored (step 310).” ’446 Patent, Figs. 2 (as reproduced and 

annotated below) and 3, 5:27-29, and 6:27-28. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 31 of 37
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Accordingly, the output indicator monitored by a monitor (220) indicates an optical output 

being transmitted by a transmitter (212) that is connected with the monitor. Moreover, the 

specification gives two exemplary output indicators: laser bias current (“LBC”) and monitor 

photodiode current (“MPC”). See id., Abstract and 5:29-43. Neither of these can be used to 

indicate an optical output being received by a receiver, as both of them relate to the laser operation 

of a transmitter. Notably, the specification does not provide any disclosure regarding an output 

indicator that can indicate an optical output being received. 

ii. Construction is Necessary Because the Plain and Ordinary Meaning as 

Interpreted by WSOU is Incorrect

Moreover, the alleged “plain and ordinary meaning” is inadequate because it cannot 

“resolve the parties’ dispute” as the current term has “more than one ordinary meaning.” O2 Micro 

International Ltd., 521 F.3d at 1361 (Fed. Cir. 2008). 

 However, 

this “ordinary” meaning is in conflict with the specification. For example, assuming that there has 

been at least one ONT having a rogue behavior in an optical network, a receiver (e.g. OLT) could 

not adequately monitor the optical output being received from the network and identify the 

offending ONT as the optical transmissions would have been compromised by at least one rogue 

ONT. See ’446 Patent, 2:31-39. 

In addition, the specification does not provide any disclosure regarding an optical indicator 

indicating an optical output being received because the patent applicants repeatedly stress that the 

alleged invention of the ’446 Patent is a subscriber-based optical network component/transmission 

device that transmits optical outputs and performs a rogue-behavior regulation itself. See Section 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 32 of 37
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II.A.i. As a result, claims 1 and 15 will likely be rendered invalid because they cover embodiments 

not enabled by the patent disclosure. See Liebel-Flarsheim Co., 481 F.3d at 1378-80. 

iii. Huawei’s Proposed Construction Would Not Exclude any Embodiment 

 WSOU asserts that “the specification expressly states that not all output indicators need to 

be the output transmission itself” based on the specification disclosure at 5:44-47 (“Here it is noted 

that the other output indicator, if any, is something other than the burst enable signal itself . . .”). 

Opening Brief, at 15-16. WSOU thus claims that “Huawei’s proposed construction expressly 

excludes at least a preferred embodiment.” Id., at 16. WSOU’s argument misses the mark, as 

Huawei’s proposed construction never equates “output indicators” to “output transmission itself.” 

Further, even the burst enable signal that is criticized by the specification is still an optical indicator 

that can indicate an optical output being transmitted because it is “for an optical laser or other light 

source.” ’446 Patent, 2:40-42. Therefore, it cannot be inferred from WSOU’s citation that the 

“other output indicator” may include an output indicator indicating an optical output being 

received or any output indicator used by a receiver. As such, Huawei’s proposed construction 

would not exclude any embodiment provided in the specification. 

iv. Huawei’s Invalidity Arguments in the IPR Petition are Consistent 

with Huawei’s Proposed Construction Here 

 Lastly, WSOU once again complains that Huawei did not construe the current term in the 

IPR Proceedings. See Opening Brief, at 16. In particular, WSOU asserts that in the IPR 

Proceedings, Huawei advocated the current term means “amount of optical power, a period of 

time, or an amount of power past a threshold period of time, or other laser errors,” which is 

allegedly inconsistent with Huawei’s currently proposed construction. Id. (citing IPR Petition at 

22). Not so. All of those exemplary optical indicators from the IPR are consistent with Huawei’s 

proposed construction here because they are output indicators that can be used to specifically 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 33 of 37
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indicate the output power, time, or errors of an optical output being transmitted. Therefore, it is 

unnecessary to construe the current term in the IPR proceedings, and WSOU would not be 

prejudiced by any inconsistency as alleged. See Ex. 12, Finjan, Inc., No. C 17-05659, Dkt. 491, 

at 10; see also Shire Development LLC, et al., 2019 WL 969638, at *8. 

Based on the above, the Court should adopt Huawei’s proposed construction for this term. 

C. “output [indicator] threshold (claims 1, 15) 

Huawei’s Proposed Construction WSOU’s Proposed Construction 

“time length or a percentage of a total time 

window duration” 

Plain and ordinary meaning 

WSOU asserts that Huawei imported limitations from an exemplary disclosure in the 

specification into the claims by asserting that other embodiments of “output [indicator] threshold” 

exist. See Opening Brief, at 17 (citing ’446 Patent, 6:60-64). To the contrary, the specification 

discusses the definition of an output (indicator) threshold three times as shown from the excerpts 

below, but all the discussions are directed to only one preferred embodiment in relation to “time 

length or a percentage of a total time window duration.” 

In accordance with this embodiment of the present invention, ONT 200 also 

includes a monitor 220 for monitoring one or more output indicators of the 

transmitter 212. In this embodiment, the transmitter is presumed to include a laser, 

and an LBC is generated to assist in regulating its operation. Monitor 220 monitors 

the LBC, under the control of controller 250, for selected monitoring windows 

and, if the LBC indicates that the laser is ‘on’ for more than a predetermined 

percentage of the monitoring window duration, then controller 250 sets a suspect 

rogue flag in the register 225. . . Another output indicator that may be monitored 

is the MPC, with suspect rogue conditions flagged in register 225 in similar 

fashion. Id., 5:27-40 (emphasis added). 

In a preferred embodiment, the monitoring 310 is performed during ranging 

because then the amount of time that the light source is on is expected to be 

relatively small. Rogue behavior will be relatively easy to detect. Monitoring can 

also be performed at other times as well, however, as will be discussed in more 

detail below. In either case, the monitoring reveals, by tracking one or more of 

the output indicators, the time during the monitoring window that the light source 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 34 of 37
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is on. This can be expressed, for example as a percentage of the total window 

duration. Id., 6:50-59 (emphasis added). 

When the window closes, this percentage is compared (step 315) to a set threshold 

value, for example 50%, to see if the threshold has been exceeded. Note that here, 

50% is used as an example; in other embodiments, the threshold may be set to 

almost any value. In some embodiments, this value may be changed remotely or 

automatically adjusted, or both. Id., 6:60-65 (emphasis added). 

In the context of the above-identified paragraphs, the phrase “the threshold may be set to 

almost any value” actually means that the threshold may be set to almost any time-related value 

with respect to a monitoring window, such as a different percentage other than 50% (e.g., 40%, 

30%) of the window duration, or a time length expressed in another manner. Therefore, the “other 

embodiments” as asserted by WSOU do not exist. For example, the specification does not teach 

how to utilize other output thresholds, such as a laser power threshold, in monitoring an output 

indicator and setting or removing a suspect rogue flag accordingly. Whether a laser power 

threshold has been exceeded can only indicate whether an optical output is being transmitted, but 

cannot indicate whether such an optical output is being transmitted at the wrong times. 

WSOU (once again) contends that Huawei’s interpretation of the current term in the IPR 

Proceedings is inconsistent with Huawei’s proposed construction. See Opening Brief, at 18. 

However, the IPR Petition asserted that the O’Byrne reference teaches an “output [indicator] 

threshold” as construed by Huawei by disclosing a time-related threshold. See IPR Petition, at 21-

22, 28-29, 36. Therefore, it is unnecessary to construe the current term in the IPR proceedings, 

and WSOU would not be prejudiced by any inconsistency as alleged. See Ex. 12, Finjan, Inc.,

No. C 17-05659, Dkt. 491, at 10; see also Shire Development LLC, et al., 2019 WL 969638, at *8. 

Based on the above, the Court should adopt Huawei’s proposed construction for this term. 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 35 of 37
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Dated: March 5, 2021 Respectfully submitted, 

/s/ Jason W. Cook

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 

jcook@mcguirewoods.com 

shassett@mcguirewoods.com 

Tyler T. VanHoutan 

Texas Bar No. 24033290 

McGuireWoods LLP 

600 Travis St., Suite 7500 

Houston, TX 77002 

Telephone: (713) 571-9191 

tvanhoutan@mcguirewoods.com 

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 

Counsel for Defendants 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.) and Huawei 

Device USA

 

 

Case 6:20-cv-00534-ADA Document 48 Filed 03/10/21 Page 36 of 37
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CERTIFICATE OF SERVICE 

I hereby certify that all counsel of record who are deemed to have consented to electronic 

service are being served with a copy of this document via the Court’s CM/ECF system. 

 /s/Jason W. Cook . 

 Jason W. Cook

 

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