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.

DELL TECHNOLOGIES INC., DELL INC., 

EMC CORPORATION, AND VMWARE, 

INC.,

Defendants.

Case No. 6:20-cv-00480-ADA

Case No. 6:20-cv-00481-ADA

Case No. 6:20-cv-00485-ADA

Case No. 6:20-cv-00486-ADA

JURY TRIAL DEMANDED

DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF

REGARDING U.S. PATENT NOS. 7,092,360; 7,539,133; 7,636,309; AND 9,164,800

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 1 of 44
i

TABLE OF CONTENTS

Page

I. INTRODUCTION ...............................................................................................................1

II. U.S. Patent No. 7,092,360 (Case No. -486).........................................................................1

A. “said element comprises: an element for recording whether a queue is 

empty or occupied, an element for recording the [number of data 

cells/quantity of data] contained in a queue, an element identifying a queue 

from which data is to be output, and an element identifying a group of 

queues from which data is to be output” (Claims 1 and 26) .....................................2

B. “expected state for said element”; “predetermined state for said element”; 

“expected value of said parameter”; “expected states for that element”; 

“expected status for said element”; “expected state of said first element” 

(Claims 1, 3, 12, 13, 18, 21, 24, 26, 28, 29, 48, and 49) ...........................................3

C. “computer generated model” (Claims 1, 18, 21, 26, 44, and 45)..............................5

D. “means for . . .” terms................................................................................................7

1. “detection means for detecting a state of an element” (Claims 1 and 18).........8

2. “comparing means for comparing the detected state with a predetermined 

state for said element and for outputting the result of the comparison” 

(Claims 1 and 24).............................................................................................12

3. “determining means for determining an expected value of said parameter” 

(Claim 18)........................................................................................................14

E. “element . . .” or “element for . . .” terms................................................................15

III. U.S. Patent No. 7,539,133 (Case No. -480).......................................................................20

A. “whether a congestion condition exists [on/for] the egress node” (Claims 1, 

12, and 13)...............................................................................................................21

B. “processing the packets” (Claims 1, 12, and 13).....................................................22

C. “such that packets associated with egress nodes for which the congestion 

condition does not exist have a different queuing priority within the load 

balancing network than packets associated with egress nodes for which the 

congestion condition exists” (Claims 1, 12, and 13)...............................................24

D. “means for determining, for each packet, whether a congestion condition 

exists on the egress node” (Claim 12).....................................................................27

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 2 of 44
ii

E. “means for processing the packets such that packets associated with egress 

nodes for which the congestion condition does not exist have a different 

queuing priority within the load-balancing network than packets associated 

with egress nodes for which the congestion condition exists” (Claim 12) .............29

IV. U.S. Patent No. 7,636,309 (Case No. -485).......................................................................30

A. “split ratio vector” (Claims 1, 11, and 16) ..............................................................31

V. U.S. Patent No. 9,164,800 (Case No. -481).......................................................................32

A. “latency cost” (Claims 1, 13) ..................................................................................33

B. “[determining/determine] an assignment objective” (Claims 1, 13).......................35

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 3 of 44
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TABLE OF AUTHORITIES

Page(s)

CASES

Acromed Corp. v. Sofamor Danek Grp., Inc.,

253 F.3d 1371 (Fed. Cir. 2001)..........................................................................................29, 30

Advanced Fiber Techs. v. J & L Fiber Servs., Inc.,

674 F.3d 1365 (Fed. Cir. 2012)..........................................................................................22, 31

Apple, Inc. v. Ameranth, Inc.,

842 F.3d 1229 (Fed. Cir. 2016)................................................................................................26

Curtiss-Wright Flow Control Corp. v. Velan, Inc.,

438 F.3d 1374 (Fed. Cir. 2006)..............................................................................................3, 5

Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc.,

412 F.3d 1291 (Fed. Cir. 2005)....................................................................8, 12, 13, 15, 17, 20

Dyfan, LLC v. Target Corp.,

No. 19-cv-00179-ADA, 2020 WL 8617821 (W.D. Tex. Nov. 24, 2020)..........................28, 29

Edwards Lifesciences LLC v. Cook Inc.,

582 F.3d 1322 (Fed. Cir. 2009)................................................................................................22

Ethicon LLC v. Intuitive Surgical, Inc.,

2018 WL 6831169 (D. Del. Dec. 28, 2018).............................................................................16

Fiber, LLC v. Ciena Corp.,

2017 WL 3896443 (D. Colo. Sept. 6, 2017)............................................................................16

Finisar Corp. v. DirecTV Grp., Inc.,

523 F.3d 1323 (Fed. Cir. 2008)................................................................................................12

Gemtron Corp. v. Saint-Gobain Corp.,

572 F.3d 1371 (Fed. Cir. 2009)................................................................................................10

GPNE Corp. v. Apple Inc.,

830 F.3d 1365 (Fed. Cir. 2016)................................................................................................26

Groove Digital, Inc. v. United Bank,

825 F. App’x 852 (Fed. Cir. 2020) ....................................................................................25, 33

Helmsderfer v. Bobrick Washroom Equip., Inc.,

527 F.3d 1379 (Fed. Cir. 2008)..................................................................................................7

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 4 of 44
TABLE OF AUTHORITIES (continued)

Page(s)

iii

Homeland Housewares, LLC v. Whirlpool Corp.,

865 F.3d 1372 (Fed. Cir. 2017)..................................................................................................4

Interactive Gift Express, Inc. v. Compuserve Inc.,

256 F.3d 1323 (Fed. Cir. 2001)..............................................................................................4, 6

Irdeto Access, Inc. v. Echostar Satellite Corp.,

383 F.3d 1295 (Fed. Cir. 2004)........................................................................................4, 7, 25

Lochner Techs., LLC v. Lenovo (U.S.) Inc.,

2015 WL 293625 (E.D. Tex. Jan. 21, 2015)............................................................................16

Mas-Hamilton Grp. v. LaGard, Inc.,

156 F.3d 1206 (Fed. Cir. 1998)................................................................................................16

Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc.,

248 F.3d 1303 (Fed. Cir. 2001)..................................................................11, 12, 13, 15, 17, 20

MTD Prods. Inc. v. Iancu,

933 F.3d 1336 (Fed. Cir. 2019)................................................................................................15

Multiform Desiccants, Inc. v. Medzam, Ltd.,

1333 F.3d 1473 (Fed. Cir. 1998)..............................................................................................31

N. Am. Container, Inc. v. Plastipak Packaging, Inc.,

415 F.3d 1335 (Fed. Cir. 2005)................................................................................................35

Net MoneyIN, Inc. v. VeriSign, Inc.,

545 F.3d 1359 (Fed. Cir. 2008)............................................................................................9, 10

Nevro Corp. v. Bos. Sci. Corp.,

955 F.3d 35 (Fed. Cir. 2020)....................................................................................................29

Noah Sys., Inc. v. Intuit Inc.,

675 F.3d 1302 (Fed. Cir. 2012)................................................................................................29

Pacing Techs., LLC v. Garmin Int’l, Inc.,

778 F.3d 1021 (Fed. Cir. 2015)................................................................................................23

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)................................................................................................31

Rain Computing, Inc. v. Samsung Elecs. Am., Inc.,

--- F.3d ---, 2021 WL 786361 (Fed. Cir. 2021) .................................................................11, 29

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 5 of 44
TABLE OF AUTHORITIES (continued)

Page(s)

iv

Robert Bosch, LLC v. Snap-On Inc.,

769 F.3d 1094 (Fed. Cir. 2014)......................................................................................8, 13, 14

Sage Prods., Inc. v. Devon Indus., Inc.,

126 F.3d 1420 (Fed. Cir. 1997)..............................................................................................8, 9

Seachange Int’l, Inc. v. C-COR, Inc.,

413 F.3d 1361 (Fed. Cir. 2005)................................................................................................36

SkinMedica, Inc. v. Histogen Inc.,

727 F.3d 1187 (Fed. Cir. 2013)................................................................................................22

Southwall Techs., Inc. v. Cardinal IG Co.,

54 F.3d 1570 (Fed. Cir. 1995)....................................................................................................2

Verizon Servs. Corp. v. Vonage Holdings Corp.,

503 F.3d 1295 (Fed. Cir. 2007)................................................................................................23

Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015)................................................................................................15

WMS Gaming Inc. v. Int’l Game Tech.,

184 F.3d 1339 (Fed. Cir. 1999)..........................................................................................27, 29

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 6 of 44
I. INTRODUCTION

From WSOU’s 111 asserted claims across four patents, 15 terms are presented for 

construction. Nine lack an accepted definition in the art. The intrinsic record, however, either 

expressly defines these terms (which Defendants adopt verbatim) or clearly mandates Defendants’ 

constructions. The remaining six invoke 35 U.S.C. § 112, ¶ 6, and thus must be construed under 

that framework. In response, WSOU offers nothing more than conclusory, non-responsive, or 

false assertions, including arguments that the Federal Circuit has rejected as a matter of law. 

II. U.S. Patent No. 7,092,360 (Case No. -486)

The ’360 patent relates to monitoring whether a scheduler is functioning properly. ’360 

patent, 1:8–9, 6:22–25; 6:45–52. This is depicted in Figure 1 (annotated), with the traffic generator 

(3) generating “test cells” that are passed to a scheduler (11), and a monitor (7) checking the status 

of the scheduler to determine if it is working properly (id. at 4:10–40):

The scheduler “determin[es] the order of queues from which data cells” are to be 

“transmi[tted] onto [a] network.” Id. at 1:26–29. The scheduler can be implemented either “in 

hardware” or “as a software model, before synthesis to silicon.” Id. at 1:33–36. The scheduler 

has “elements” or “parameters” that are monitored to ensure the scheduler is “functioning 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 7 of 44
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properly.” Id. at 6:22–25. These elements are monitored by comparing their “expected” states 

against their “monitored” states; if those states do not match, the scheduler is not “operating 

correctly.” Id. at 6:52–61; see also id. at 2:48–64. For example, one scheduler element (“counter”) 

may indicate the number of items in a particular queue, while another scheduler element (“queue 

status”) may indicate if the queue is empty or occupied. Id. at 8:1–13, 8:18–23; Fig. 3A. If a 

queue counter is zero, the queue status should read empty (i.e., zero); but if the queue counter is 

non-zero (i.e., 5), the queue status should read occupied (i.e., one). Id. at 9:55–10:1. If those 

values do not match their expected states, the scheduler is not operating correctly. Id. at 10:5–10.

A. “said element comprises: an element for recording whether a queue is empty 

or occupied, an element for recording the [number of data cells/quantity of 

data] contained in a queue, an element identifying a queue from which data is 

to be output, and an element identifying a group of queues from which data is 

to be output” (Claims 1 and 26)

Defendants’ Proposal WSOU’s Proposal

“said element includes all of: an element for recording whether a queue is 

empty or occupied, an element for recording the quantity of data contained 

in a queue, an element identifying a queue from which data is to be output, 

and an element identifying a group of queues from which data is to be 

output”

Plain and ordinary 

meaning

The plain language of claims 1 and 26 requires that “said element comprises”—i.e., 

includes—all of the four named elements that follow. 1 Despite refusing to agree to this 

fundamental concept during meet and confers, WSOU now appears to agree—as it must.2

 Br. 1. 

Indeed, WSOU does not appear to dispute Defendants’ construction of the claim 26 term at all. 

 1 Unless otherwise noted, emphasis has been added to quotes included in this brief.

2 Any contrary construction is precluded by the prosecution history, in which the applicants 

explicitly amended these two claims—as the examiner proposed to permit allowance—from 

originally requiring “any one” of the claimed elements to instead requiring all four of the 

enumerated elements. Compare Ex. 1 (12/28/01 App.) at 34, with Ex. 2 (5/18/06 Am.) at 2, 9; Ex. 

3 (6/5/06 Claim Index) at 7–9; Ex. 3 (6/5/06 Interview Summary) at 5–6; Ex. 3 (6/5/06 Notice of 

Allowability) at 1. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 8 of 44
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Instead, WSOU objects only to Defendants’ use of the term “quantity of data” for claim 1, 

as claim 26 recites “the number of data cells” rather than “quantity of data.” Id. Putting aside that 

WSOU never raised this issue during meet and confers, it is a non-issue. It is well settled that 

“claims with different terminology can define the exact same subject matter.” Curtiss-Wright 

Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). WSOU fails to explain 

how “number of data cells” is meaningfully different from “quantity of data.” In any event, 

Defendants do not object to a construction that reflects the specific language of each claim, i.e.,

that “said element” includes all of the explicitly recited elements that follow. 

B. “expected state for said element”; “predetermined state for said element”; 

“expected value of said parameter”; “expected states for that element”; 

“expected status for said element”; “expected state of said first element” 

(Claims 1, 3, 12, 13, 18, 21, 24, 26, 28, 29, 48, and 49)3

Defendants’ Proposal WSOU’s Proposal

“a [state/value] for the [element/parameter] that would be 

expected if the scheduler is functioning properly”

Plain and ordinary meaning

The intrinsic record makes clear that “expected state for said element,” and variants of the 

term, refers to the state of the element that would be expected if the scheduler is “functioning 

properly.” The claims do not provide any context or otherwise clarify what it means for a state to 

be “expected” or “predicted.” For example, the claims do not explain by whom a state would be 

expected or predicted, and for what purpose. Even WSOU agrees that the claims are “agnostic” 

on these points. Br. 3. Thus, because the “claim language is not clear on its face, . . . our 

 3

 WSOU argues for the first time that “Dell improperly groups together each of these” terms for 

counting purposes. Br. 2. WSOU’s objection is not well taken. Defendants proposed these related 

terms as a single term throughout the meet-and-confer process, from the Jan. 6, 2021 Preliminary 

Identification through their Feb. 8, 2021 Identification of Narrowed Proposed Terms. Ex. 4; Ex. 

5; Ex. 6. WSOU itself treated these terms as one term in its Feb. 1, 2021 “Claim Construction 

Summaries” spreadsheet submitted to the Court, Ex. 7 at 2. WSOU never objected to this treatment 

until its opening brief. Br. 2 n.1.

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 9 of 44
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consideration of the rest of the intrinsic evidence is directed to resolving . . . th[is] lack of clarity.” 

Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). 

Here, the patent’s entire disclosure, and purpose, is centered on determining if a scheduler 

is “functioning properly” by examining the state of scheduler elements and comparing the state 

against what would be expected if the scheduler were operating correctly. Homeland Housewares, 

LLC v. Whirlpool Corp., 865 F.3d 1372, 1377 (Fed. Cir. 2017). The patent states:

[T]he scheduler monitor 107 is arranged to receive information concerning the 

status and/or operation of certain elements of the scheduler 111 from which it may 

determine whether a particular element is functioning properly. In one 

embodiment, the monitor 107 may be arranged to monitor the status of two 

scheduler elements where a particular status for one element can be predicted from 

the status of another element, or vice versa, if the elements are functioning 

correctly. On the other hand, if an element adopts a status different from the 

expected status based on the status of the other element, a determination can be

made that either one or the other of the elements is not functioning correctly.

’360 patent, 6:22–33; id. at 9:34–39 (“A register bit of 1 indicates that at this particular instant of 

time, the current pointer and queue status register is functioning properly.”), 6:52–58 (“the 

scheduler monitor 107 may receive information concerning the status of one element at one time 

and information concerning the status of another element at a different time and compare/check 

the detected status of the two elements with the status expected for the elements if the scheduler

is operating correctly”), 11:56–58 (“If the two sequences match, it may be determined that the 

scheduler is operating correctly.”). The Abstract states that the monitor is for “determining 

whether the scheduler is operating as intended based on the detected state of the internal element.”

WSOU argues that the claims cannot be limited to a single embodiment. Br. 3 n.2. 

Defendants do not rely on merely a single embodiment. Instead, the specification “repeatedly, 

consistently, and exclusively” discusses the “expected state” as one that would be expected if the 

scheduler were functioning properly, and therefore compels Defendants’ construction of the 

otherwise unclear claim language. Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 10 of 44
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1303 (Fed. Cir. 2004). WSOU does not and cannot point to any contrary disclosure because the 

only relevant disclosure in the ’360 patent is what Defendants describe above. WSOU furthermore 

argues that the different claims cannot be construed the same way because some recite an 

“expected” state while others recite a “predetermined” state. Br. 3. But “claims with different 

terminology can define the exact same subject matter.” Curtiss-Wright, 438 F.3d at 1380. 

WSOU fails to explain how “expected” and “predetermined” are meaningfully different. Br. 2–3. 

In any event, the critical aspect of Defendants’ construction is that the expected or predicted value 

is the value that would be expected or predicted if the scheduler were functioning properly. 

WSOU also contends that Defendants’ construction would render “superfluous” the 

“parameter” limitation in claim 3 because the construction of “expected state” “necessitates that 

the parameter relate to ‘the scheduler . . . functioning properly.’” Br. 3. WSOU’s contention 

makes no sense. Claim 3 recites “monitoring a parameter relating to the operation of said 

scheduler, and determining means for determining an expected state for said element based on 

said monitored parameter.” The “expected state for said element” in claim 3 refers to the 

“element” in claim 1; “expected state” has nothing to do with, and has no effect on, the separately 

claimed “parameter,” and therefore does not render the “parameter” limitation superfluous. 

Thus, “expected state for said element,” and variations thereof, should be construed to 

mean the state of the element “that would be expected if the scheduler is functioning properly.”

C. “computer generated model” (Claims 1, 18, 21, 26, 44, and 45)

Defendants’ Proposal WSOU’s Proposal

“a simulated computer model of circuitry describing a scheduler” Plain and ordinary meaning

The claims recite that the “scheduler comprises a computer generated model,” but do not 

specify what the model represents. In other words, the claims do not answer the following 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 11 of 44
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question: a model of what? Because the “claim language is not clear on its face,” the specification 

must be analyzed to “resolv[e], if possible, th[is] lack of clarity,” and the cases on which WSOU 

relies do not apply. Interactive Gift, 256 F.3d at 1331; Br. 4.

WSOU argues that this term encompasses any “model generated by a computer,” even one 

unrelated to the recited “scheduler.” Br. 3. But the specification consistently refers to the model 

as representing the circuitry of a hardware scheduler. From the very beginning of the 

specification, the patent states that the scheduler—to which the claimed invention applies—“is 

implemented in hardware, for example, on an application specific integrated circuit.” ’360 patent, 

1:29–32. But the specification also makes clear that one can test such a scheduler “either when 

implemented as a software model, before synthesis to silicon, or when implemented in hardware.” 

Id. at 1:33–36; see also id. at 1:56–59, 6:22–33. In other words, the patent contemplates only two

options: a hardware scheduler, or a software model of such a hardware scheduler. 

With that framework, the patent repeatedly and consistently describes the scheduler as 

being implemented either in hardware or in a software model of such hardware. For example, the 

patent states that “the scheduler may be implemented as a simulated computer model of circuitry 

describing a scheduler, and may for example be described using RTL4 code.” ’360 patent, 12:11–

14. It similarly states that “[i]n testing the performance of a simulated circuit, a stimulus, for 

example, a test signal is applied to the input of the model and the response of the model is 

monitored and verified by monitoring output signals from the device.” Id. at 2:9–12; see also id.

at 12:53–56 (“[T]he scheduler may be implemented and tested as a computer model using a 

language which enables the tested scheduler to be synthesized in hardware.”); 12:53–56 (“In one 

 4

 Register transfer level (RTL) code “specif[ies] the characteristics of a circuit or system by 

operations and the transfer of data between . . . registers.” Ex. 11 (Verilog HDL Design) at 300; 

see also Ex. 12 (RTL (Register Transfer Level)).

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embodiment of the present invention, the scheduler may be implemented and tested as a computer 

model using a language which enables the tested scheduler to be synthesized in hardware.”); Id. at 

12:61–63 (“Although a computer model of a scheduler is preferred for performance testing, in 

another embodiment, the schedule [sic] may be implemented in hardware . . . .”). Thus, the 

specification “repeatedly, consistently, and exclusively” explains that the “computer generated 

model” is “a simulated computer model of circuitry describing a scheduler.” Irdeto, 383 F.3d at 

1303. 

WSOU contends that the specification’s use of “may” precludes a construction based on 

this clear disclosure, arguing that “the scheduler is not necessarily implemented as a similar 

computer model of circuitry describing a scheduler.” Br. 4. This argument is irrelevant. It 

certainly is true that the scheduler need not be implemented by a software model of hardware; as 

shown above, it could instead be implemented directly in hardware, which is how the specification 

begins. ’360 patent, 1:29–32. But, as shown above, the specification unambiguously states that if 

the scheduler is not implemented in hardware, it is implemented in a computer model of such 

hardware. Claims 24 and 25 do not require a “model,” and thus may be satisfied by either a 

hardware scheduler or a computer model of such hardware. The remaining claims, however, 

explicitly recite that the “scheduler comprises a computer generated model,” and thus should be 

construed to require a “simulated computer model of circuitry describing a scheduler.” 

Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) (recognizing 

that “different claims” can be “directed to and cover different disclosed embodiments”).

D. “means for . . .” terms

There are thirteen terms in the ’360 patent that use the phrase “means for,” yet incredibly

WSOU argues that none of those terms should be construed according to Section 112, ¶ 6. Br. 4–

11. “The use of the term ‘means’ triggers a rebuttable presumption that § 112 ¶ 6 governs the 

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construction of the term.” Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1097 (Fed. Cir. 

2014). If the term specifies a function, this presumption can be overcome only if the applicant 

demonstrates that the claim “goes on to elaborate sufficient structure . . . within the claim itself to 

perform entirely the recited function.” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 

1427–28 (Fed. Cir. 1997). If the presumption is not overcome, the term “will be limited” to the 

“corresponding structure . . . described in the specification.” Robert Bosch, 769 F.3d at 1097. That 

corresponding structure “must include all structure that actually performs the recited function.” 

Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). 

If there is no such structure, the term is indefinite. Robert Bosch, 769 F.3d at 1097.

Due to term limits for claim construction, Defendants brief three “means for” terms below. 

As discussed, each should be construed according to Section 112, ¶ 6. 

1. “detection means for detecting a state of an element”5 (Claims 1 and 

18)

Defendants’ Proposal WSOU’s Proposal

This term is subject to 35 U.S.C. § 112, ¶

6.

Function: detecting a state of an element6

Structure: modules 110, 112, 114 . . . to 

130 using a programming language 

interface (PLI) as described in ’360 patent, 

12:11–41

No construction required apart from finding this 

term is not subject to 35 U.S.C. § 112, ¶ 6. 

Alternatively, if deemed subject to 35 U.S.C. § 

112, ¶ 6, then, 

Function: detecting a state of an element of said 

scheduler; 

Structure: monitor having the claimed 

functionality.

 5

 Defendants briefed this term as representative of the following terms that are materially the 

same: “means for requesting said scheduler model to pass the status of said element to said 

monitor” (claim 1); “monitoring means for monitoring a parameter relating to the operation of said 

scheduler” (claim 3); and “means for detecting the state of at least one element of said scheduler 

whose state depends on which queue is selected by said scheduler for outputting a test cell” (claim 

24). The analysis in this section applies equally to these unelected terms.

6

 The parties’ identifications of function are materially the same for purposes of this analysis. 

Defendants do not object to WSOU’s proposed function identification; nor does its inclusion 

change the corresponding structure.

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Section 112, ¶ 6 Applies. WSOU cannot overcome the presumption that Section 112, ¶ 6 

applies, because WSOU fails to identify any structure in the claims that “perform[s] entirely the 

recited function[s].” Sage Prods., 126 F.3d at 1427–28. WSOU argues that the claimed 

“monitor”—which, as shown below, itself includes each of the recited “means”—performs the 

recited function, and thus overcomes the presumption (Br. 4–5):

“1. A monitor for monitoring the operation of a scheduler . . . comprising detection 

means for detecting a state of an element of said scheduler, comparing means for

comparing the detected state with a predetermined state for said element and for 

outputting the result of the comparison.” See, e.g., ’360 patent, cl. 1.

“18. A monitor for monitoring the operation of a scheduler . . . comprising . . . 

determining means for determining an expected value of said parameter based on 

the detected state of said element . . . .” Id., cl. 18.

The Federal Circuit has squarely rejected this very argument, where a patentee attempted 

to rely on a claimed apparatus that itself included the “means,” rather than identify in the claim a 

“component” of the apparatus that performed the recited function. Net MoneyIN, Inc. v. VeriSign, 

Inc., 545 F.3d 1359, 1366 (Fed. Cir. 2008). In VeriSign, the claim recited a “first bank computer

including means for generating an authorization indicia.” Id. at 1364. The court rejected the 

argument that the “first bank computer” provided the requisite structure for “generating means,” 

holding that the “bank computer is not linked in the claim as the ‘means’ for generating an 

authorization indicia. Rather, the bank computer is recited as ‘including’ those means.” Id. at 

1366. The patentee’s argument was “both redundant and illogical,” as it “require[d] the first bank 

computer to include a first bank computer.” Id. “Because the claimed generating means [was] a 

subset of the bank computer, there must be a recitation of structure that is a component of the 

bank computer to rebut the presumption.” Id. Since the claim “contain[ed] no such recitation” of 

a component that performed the recited “generating” function, Section 112, ¶ 6 applied. Id.

Like the “bank computer” in VeriSign, the “monitor” here is “not linked in the claim[s] as 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 15 of 44
10

the ‘means’ for” any of the recited functions associated with the “means” terms discussed below. 

545 F.3d at 1366. Instead, the “monitor” itself includes the claimed “means.” Id. Thus, as in 

VeriSign, WSOU’s argument is “redundant and illogical” because it would require the “monitor” 

to include a “monitor” to perform these recited functions. Id. As the Federal Circuit made clear 

in VeriSign, because the “means” terms in these ’360 patent claims are each a “subset of the” 

“monitor,” there “must be a recitation of structure that is a component of the” monitor “to rebut 

the presumption” that Section 112, ¶ 6 applies. Id. Because the claims recite no component of the 

“monitor” that performs the recited functions, WSOU cannot overcome the presumption.

WSOU relies heavily on its unsworn, unsupported, and false assertion that “Dell admitted 

through counsel (during a . . . meet and confer) that the specification discloses a ‘monitor’ as” the 

corresponding structure. Br. 7. Such “unsworn attorney argument . . . is not evidence.” Gemtron 

Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009). In any event, Defendants’ 

counsel explicitly stated on the meet-and-confer call that they did not agree that “monitor” is 

corresponding structure.7

Finally, WSOU’s argument is the opposite of what it argues with respect to U.S. Patent 

No. 7,212,536 (Case No. 6:20-cv-474). Claim 12 of the ’536 patent recites “[a] bridge . . ., the 

bridge comprising . . . means for reading priorities . . . .” There, WSOU argues that Section 112, 

¶ 6 does apply to the “means” term, even though it is included within a claim limitation reciting 

the “bridge.” No. 6:20-cv-474, D.I. 82 at 7–9. For the reasons explained in this section, WSOU’s 

contrary position on the ’360 patent is wrong and should be rejected.

Corresponding Structure. The only disclosure of structure that performs the recited 

 7

 Rosenthal Decl. ¶¶ 2–6. WSOU should correct this false statement. See Local Rule AT-4(c), 

Appendix M (Section IV(6)); ABA Model Rule 3.3(a)(1). As a result of WSOU’s 

misrepresentation, Defendants reserve the right to record all future meet-and-confer calls.

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 16 of 44
11

function of “detecting a state of an element of said scheduler” is modules 110, 112, 114 . . . to 130 

using a programming language interface (PLI) as described in the ’360 patent at 12:11–41. For 

instance, the specification states that “[r]eferring to FIG. 2, the embodiment of the scheduler 

monitor includes a plurality of modules 110, 112, 114 . . . to 130, adapted to receive information

relating to the operation of the scheduler under test, for example, the state of internal elements of 

the scheduler and parameters relating to operation of the scheduler.” ’360 patent, 6:62–7:28. The 

patent likewise states that the “scheduler monitor may be implemented using any suitable program 

language and the monitor system may include a program language interface (PLI)8 to enable the 

monitor to detect the status and/or operations associated with elements of the scheduler

module. . . . The PLI may be instructed to retrieve information concerning the status of one or 

more elements of the simulated scheduler by calling a file defining the PLI tasks.” Id. at 12:11–

41. Finally, Figure 1, which is “a schematic diagram of an embodiment of the present invention,” 

depicts a “PLI Task Call” between the scheduler (11) and the monitor (7). Id. at 3:61–62.

WSOU’s “position” that the structure is “monitor having the claimed functionality”—

without identifying any specification support—is deficient as a matter of law. There is no 

precedent permitting such a generic statement of a device “having the claimed functionality” as 

somehow satisfying the corresponding structure requirement. Instead, it is well established that 

“[s]tructure disclosed in the specification is ‘corresponding’ only if the specification or prosecution 

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

Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001); Rain 

Computing, Inc. v. Samsung Elecs. Am., Inc., --- F.3d ---, 2021 WL 786361, at *3 (Fed. Cir. 2021).

 8 Programming language interface, or “PLI, provides a means for Verilog HDL [hardware 

description language] users to access and modify data in an instantiated Verilog data structure 

dynamically.” Ex. 13 (Programming Language Interface (PLI) Overview) at 366.

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WSOU agrees in its brief that modules 110, 112, 114 . . . to 130, and the PLI, are 

corresponding structure. Br. 7. But WSOU also incorrectly identifies “monitors 7 and 107,” “rules 

134,” and “a rule checker” as possible structure. Id. None of WSOU’s specification cites, 

however, “clearly links” those structures to “actually perform[ing] the recited function.” 

Medtronic, 248 F.3d at 1311; Default Proof, 412 F.3d at 1298. There is nothing in the specification 

that states that the “monitor” (including for the reasons discussed above, supra, p. 9–10), the 

“rules,” or the “rule checker” “actually perform” the function of detecting the state of an element. 

Instead, the only thing in the specification that actually performs that function is the modules, 

using a PLI. WSOU argues that the PLI is not required merely because the specification uses the 

word “may” in connection with the PLI. Br. 8. But WSOU identifies no disclosed structure that 

is “clearly linked” to the recited function without the PLI. Finally, WSOU argues that Defendants 

seek to “unduly restrict the corresponding structure to a particular embodiment.” Br. 8. But that 

is precisely what Section 112, ¶ 6 requires: “means-plus-function elements . . . are statutorily 

limited to the ‘corresponding structure’” clearly linked in the specification to performing the 

recited function. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).

2. “comparing means for comparing the detected state with a 

predetermined state for said element and for outputting the result of 

the comparison”9 (Claims 1 and 24)

Defendants’ Proposal WSOU’s Proposal

This term is subject to 35 U.S.C. No construction required apart from finding this term 

 9

 Claim 24 recites materially the same limitation as claim 1: “a monitor having . . . comparison 

means for at least one of: comparing the detected element status with an expected status for said 

element based on the detected queue identity and comparing the detected queue identity with an 

expected queue identity based on the detected status of said element.” The analysis in this section 

thus applies equally to: “comparison means for comparing the detected parameter with said 

expected parameter and for outputting the result of the comparison” (claim 18); and “means for 

detecting the state of an element of said scheduler at a plurality of different times and comparing 

the detected states with expected states and outputting the result of said comparison” (claim 21). 

The analysis in this section applies equally to these other terms. Supra, n.5.

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 18 of 44
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§ 112, ¶ 6.

Function: comparing the detected 

state with a predetermined state for 

said element and for outputting the 

result of the comparison

Structure: Indefinite

is not subject to 35 U.S.C. § 112, ¶ 6. Alternatively, if

deemed subject to 35 U.S.C. § 112, ¶ 6, then, 

Function: comparing the detected state with a 

predetermined state for said element and for 

outputting the result of the comparison; 

Structure: monitor having the claimed functionality.

Section 112, ¶ 6 Applies. As discussed above (supra, p. 9–10), WSOU cannot overcome 

the presumption that Section 112, ¶ 6 applies because the “claim itself” lacks any structure “to 

perform entirely the recited” “comparing” function. The claimed “monitor” cannot provide 

sufficient structure for the “comparing means” that the “monitor” itself includes. And because the 

claims recite no component of the “monitor” that performs the “comparing” function, WSOU 

cannot overcome the Section 112, ¶ 6 presumption. Supra, id.

No Corresponding Structure. The specification lacks any structure that performs the 

recited function. Indeed, in every instance that the specification refers to the recited function, no

corresponding structure is identified. Instead, the specification just refers to the function generally 

or a generic “means” to perform the function. ’360 patent, 2:39–41, 2:52–54, 2:62–64, 3:10–11, 

3:32–34, 3:42–44. Thus, this “means” term is indefinite. Robert Bosch, 769, F.3d at 1099–1100 

(holding disclosure that “merely explain[s the] function” is insufficient for the required structure).

WSOU’s position that the structure is “monitor having the claimed functionality” is legally 

deficient, for the reasons stated above. Supra, p. 11. In particular, it is nonsensical and contrary 

to established Federal Circuit law to construe the means, which must be included within the 

monitor, to itself be the monitor. In addition, none of what WSOU cites as specification support 

“clearly links . . . th[ese] structure[s]” to “actually perform[ing] the recited function.” Medtronic, 

248 F.3d at 1311; Default Proof, 412 F.3d at 1298. 

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3. “determining means for determining an expected value of said 

parameter”10 (Claim 18)

Defendants’ Proposal WSOU’s Proposal

This term is subject to 35 U.S.C. § 112, 

¶ 6.

Function: determining an expected 

value of said parameter11

Structure: Indefinite

No construction required apart from finding this term 

is not subject to 35 U.S.C. § 112, ¶ 6. Alternatively, 

if deemed subject to 35 U.S.C. § 112, ¶ 6, then, 

Function: determining an expected value of said 

parameter based on the detected state of said element. 

Structure: monitor having the claimed functionality.

Section 112, ¶ 6 Applies. As discussed above (supra, p. 9–10), WSOU cannot overcome 

the presumption that Section 112, ¶ 6 applies because the “claim itself” is devoid of any structure 

“to perform entirely the recited” function of “determining an expected value of said element.” The 

claimed “monitor” cannot provide sufficient structure for the “determining means” that the 

“monitor” itself includes. And because the claims recite no component of the “monitor” that 

performs the “determining” function, WSOU cannot overcome the presumption. Supra, id.

No Corresponding Structure. The patent lacks any corresponding structure that performs 

the recited “determining” function. In every single instance that the specification refers to this 

function, it merely refers to the function or a generic “means” to perform it. ’360 patent, 2:60–62, 

3:41–42. Thus, this “means” term is indefinite. Robert Bosch, 769, F.3d at 1099–1102 (holding 

disclosure that “merely explain[ed the] function” to be insufficient for the required structure). 

WSOU’s position that the structure is “monitor having the claimed functionality” is 

deficient as a matter of law. Supra, p. 11. In particular, it is nonsensical and contrary to established 

 10 This term is representative of the following terms: “determining means for determining an 

expected state for said element based on said monitored parameter” (claim 3) and “prediction 

means for determining an expected [status/state] [for/of] said [first] element” (claims 12 and 13). 

The analysis in this section applies equally to these other terms. Supra, n.5.

11 The parties’ function identifications are materially the same for purposes of this analysis. 

Defendants do not object to WSOU’s proposed function identification.

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 20 of 44
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Federal Circuit law to construe the means, which must be included within the monitor, to itself be 

the monitor. And none of WSOU’s cites “clearly links . . . th[ese] structure[s]” to “actually 

perform[ing] the recited function.” Medtronic, 248 F.3d at 1311; Default Proof, 412 F.3d at 1298. 

Indeed, there is no discussion whatsoever in the specification of the recited determining function 

that identifies or even suggests what performs it.

E. “element . . .” or “element for . . .” terms12

Section 112, ¶ 6 Applies. “Generic terms like . . . ‘element’ . . . are commonly used as 

verbal constructs that operate, like ‘means,’ to claim a particular function rather than describe a 

‘sufficiently definite structure.’” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) 

(quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015)). Thus, because 

“nonce words” like “element” “typically do not connote sufficiently definite structure,” Section 

112, ¶ 6 applies if a claim recites “element” followed by functional language, “without reciting 

sufficient structure for performing that function.” Williamson, 792 F.3d at 1349–50. A “critical 

question” in this analysis is “whether ‘the claim term is used in common parlance or by persons of 

skill in the pertinent art to designate structure,’ including either a particular structure or a class of 

structures.” MTD Prods., 933 F.3d at 1341. If not, and the patent fails to provide “its own 

structural definition of [the] nonce term” by “clearly express[ing] an intent to redefine the term,” 

Section 112, ¶ 6 applies. Id. at 1342–43. 

Applying these principles, courts have held that recitation of the term “element” in a claim,

followed by functional language without sufficient corresponding structure, invokes Section 112, 

 12 Defendants consistently proposed these terms as a single term throughout the meet-and-confer 

process, from their Jan. 6, 2021 Preliminary Identification through their Feb. 8, 2021 Identification 

of Narrowed Proposed Terms. Ex. 4; Ex. 5; Ex. 6. WSOU never once communicated an objection 

to this proposal until its opening brief. Br. 13. In any event, these terms raise very similar issues 

and should be addressed together.

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 21 of 44
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¶ 6. E.g., Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d 1206, 1213–14 (Fed. Cir. 1998) (“lever 

moving element for”); Fiber, LLC v. Ciena Corp., 2017 WL 3896443, at *16–17 (D. Colo. Sept. 

6, 2017) (“data gathering and transmission element for”); Lochner Techs., LLC v. Lenovo (U.S.) 

Inc., 2015 WL 293625, at *15–16 (E.D. Tex. Jan. 21, 2015) (“display element”); Ethicon LLC v. 

Intuitive Surgical, Inc., 2018 WL 6831169, at *7 (D. Del. Dec. 28, 2018) (“closure element”).

Here, the claims recite no structure that performs the recited function. WSOU offers no 

contrary evidence. WSOU instead argues that Section 112, ¶ 6 cannot apply to these “element 

for” terms because other claims in the patent “do recite ‘means for’ limitations.” Br. 11 (emphasis 

in original). This position is nonsensical, since as shown above WSOU is arguing that Section 

112, ¶ 6 does not apply even where the patent does recite “means for.” Id. at 4–11. In any event, 

the recitation of “means” in certain claims does not immunize other claims reciting nonce words 

like “element” from Section 112, ¶ 6 analysis. 

Corresponding Structure. The structure for each “element” is addressed below.

Defendants’ Proposal WSOU’s Proposal

“element for recording whether a queue 

is empty or occupied” (claims 1, 5, 6, 7–

9, 14–15, 20, 25, 26, 30, 33–35, and 38)

Function: recording whether a queue is 

empty or occupied

Structure: queue status register 165, 

167, 201, or 203

No construction required apart from finding this 

term is not subject to 35 U.S.C. § 112, ¶ 6. 

Alternatively, if deemed subject to 35 U.S.C. § 112, 

¶ 6, then, 

Function: recording whether a queue is empty or 

occupied. 

Structure: scheduler having the claimed 

functionality.

The specification discloses corresponding structure for the recited function: queue status 

register 165, 167, 201, or 203. Referring to Figure 2, the patent states that the “scheduler 111 

further comprises a first queue status register 165 for recording and tracking, for each queue of 

the first storage section 117, whether a particular queue is empty or occupied, and a second queue 

status register 167 for recording and tracking, for each queue in the second storage section 119, 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 22 of 44
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whether a particular queue is empty or occupied.” ’360 patent, 5:4–10. It further states that 

“FIG. 3A shows an example of queue status registers 201, 203 of high and low priority groups of 

queues, respectively. Each register 201, 203 comprises a plurality of 1-bit registers corresponding 

to a particular queue, i.e. 0, 1, 2, 3, 4 . . . 10, where a 1 indicates that a queue is occupied and 0 

indicates that a queue is empty.” Id. at 8:1–6. Finally, the patent states that “[e]ach of the high 

and low priority queue registers indicate with a ‘1’ those queues which are occupied and indicate 

with a ‘0’ those queues 20 which are empty.” Id. at 8:18–21; see also id. at 9:27–11:60.

WSOU’s position, that the structure is “scheduler having the claimed functionality,” is 

deficient as a matter of settled Federal Circuit law. Supra, p. 11. In particular, the claimed 

“element” that is part of the claimed “scheduler” cannot itself be construed to be a scheduler. Id. 

In any event, WSOU then seems to agree that queue status register 165, 167, 201, or 203 is 

corresponding structure. Br. 12. But WSOU also identifies the “scheduler” and “buffer selection 

unit 175” as other possible structure. Id. However, none of what WSOU cites as support “clearly 

links . . . the[se]” additional “structure[s]” to “actually perform[ing] the recited function.” 

Medtronic, 248 F.3d at 1311; Default Proof, 412 F.3d at 1298. 

Defendants’ Proposal WSOU’s Proposal

“an element for recording the [number of [data] 

cells/quantity of data] contained in a queue” 

(claims 1, 5–6, 9, 14–15, 20, 26, 30, 33–35, and 

38)

Function: recording the [quantity of 

data/number of data cells] contained in a queue

Structure: counter 169, 205, or 207

No construction required apart from finding 

this term is not subject to 35 U.S.C. § 112, ¶ 

6. Alternatively, if deemed subject to 35 

U.S.C. § 112, ¶ 6, then, 

Function: recording the [quantity of data / 

number of cells / number of data cells] 

contained in a queue; 

Structure: scheduler having the claimed 

functionality.

The specification discloses the corresponding structure for this function: counter 169, 205, 

or 207. For instance, as to Figure 2, the patent states that “the scheduler . . . includes a counter 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 23 of 44
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169 for each queue of the first and second storage sections 117, 119 for recording and tracking 

the number of cells in a queue. For example, the counter may comprise an eight bit counter 

capable of recording up to 256 cells in each buffer.” ’360 patent, 5:14–19. It also states that 

“[e]ach high priority queue has an associated counter which records and tracks the number of data 

cells in a high priority queue. Similarly, each low priority queue has an associated counter which 

records and tracks the number of data cells in a low priority queue.” Id. at 8:9–13. Finally, it 

states that, as to Figure 3A, “the high and low priority counters 205, 207 indicate the number of 

data cells present in each queue.” Id. at 8:21–23; see also id. at 9:27–11:60.

WSOU’s position that the structure is “scheduler having the claimed functionality” is 

deficient as a matter of settled Federal Circuit law. Supra, p. 11. WSOU then agrees in its brief 

that “one or [more] counters” is corresponding structure, and relies on the same disclosure 

discussed above. Br. 14.

Defendants’ Proposal WSOU’s Proposal

“an element identifying a queue from which 

data is to be output” (claims 1, 26, 5, 20, and 

30)

Function: identifying a queue from which data 

is to be output

Structure: pointer 177, 179, 181, 183, 209, 

211, 213, or 215

No construction required apart from finding 

this term is not subject to 35 U.S.C. § 112, ¶ 

6. Alternatively, if deemed subject to 35 

U.S.C. § 112, ¶ 6, then, 

Function: identifying a queue from which 

data is to be output 

Structure: scheduler having the claimed 

functionality.

The specification discloses the corresponding structure for this function: pointer 177, 179, 

181, 183, 209, 211, 213, or 215. For instance, referring to Figure 3A, the specification states that 

“[e]ach of the high and low priority status registers has an associated current pointer 209, 211

which indicates the queue from which a data cell is to be read out, and a respective next pointer 

213, 215 which indicates the next queue of each of the high and low priority queues from which 

a cell is to be read out after the cell has been read from the queue indicated by the current pointer 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 24 of 44
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209, 211.” ’360 patent, 8:23–29; see also id. at 9:27–11:60. Furthermore, it describes a “first and 

second group of input buffers,” where a “current pointer for each group identifies the input buffer

selected for data readout, and the next pointer for each group identifies the input buffer in each 

group from which a data cell is to be read following readout from the queue selected by the current 

pointer.” Id. at 5:55–61. Referring to Figure 2, the specification states that “current pointer 177

associated with the first group of buffers points to the first occupied buffer, . . . and the next pointer 

179 of the first buffer group points to the next occupied buffer.” Id. at 6:1–5. It also states that 

“the current pointer 181 of the second group of buffers points to the first occupied buffer, . . . and 

the next pointer 183 of the second group points to the next occupied buffer.” Id. at 6:5–8.

WSOU’s position that the structure is “scheduler having the claimed functionality” is 

deficient as a matter of settled Federal Circuit law. Supra, p. 11. WSOU then agrees in the body 

of its brief that “one or more pointers” is corresponding structure. Br. 15.

Defendants’ Proposal WSOU’s Proposal

“an element [identifying/indicating] a group of 

queues from which data is to be output” (claims 

1, 5, 9, 14–15, 20, 26, 30, 33, 35, and 38)

Function: [identifying/indicating] a group of 

queues, from which data is to be output13

Structure: Indefinite

No construction required apart from finding 

this term is not subject to 35 U.S.C. § 112, ¶ 

6. Alternatively, if deemed subject to 35 

U.S.C. § 112, ¶ 6, then, 

Function: identifying a queue from which 

data is to be output 

Structure: scheduler having the claimed 

functionality.

The specification lacks any disclosure “clearly linking” any structure to performing this 

particular function. As detailed above, the patent discloses structure only for identifying a single

queue “from which data is to be output.” ’360 patent, 8:23–29 (“[e]ach of the high and low priority 

status registers has an associated current pointer 209, 211 which indicates the queue from which 

 13 Defendants have conformed their proposed function to match the claim language.

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a data cell is to be read out, and a respective next pointer 213, 215 which indicates the next queue

of each of the high and low priority queues from which a cell is to be read out after the cell has 

been read from the queue indicated by the current pointer 209, 211”), 6:1–5 (“the current pointer 

177 . . . points to the first occupied buffer, . . . and the next pointer 179 . . . points to the next 

occupied buffer”), 6:5–8 (“the current pointer 181 . . . points to the first occupied buffer . . . and 

the next pointer 183 . . . points to the next occupied buffer”). Nothing in the patent “clearly links” 

any structure with the recited function of identifying more than a single queue (e.g., a group of 

queues) “from which data is to be output.” Thus, this “means” term is indefinite. 

WSOU’s position that the structure is “scheduler having the claimed functionality” is 

deficient as a matter of settled Federal Circuit law. Supra, p. 11. WSOU then lists “queue status 

register,” “priority selectors,” “counters,” and “current and next pointers” as possible structure. 

Br. 16. But none of what WSOU cites “clearly links . . . th[ese] structure[s]” to “actually 

perform[ing] the recited function.” Medtronic, 248 F.3d at 1311; Default Proof, 412 F.3d at 1298. 

In fact, the disclosure makes no reference to a “group of queues” at all. 

III. U.S. Patent No. 7,539,133 (Case No. -480)

The ’133 patent relates to “preventing congestion in load-balancing networks.” ’133 patent, 

1:7–9, 1:13–15. For example, Figure 1 (annotated below) depicts a load-balancing network that 

includes networks 102 (blue) and nodes 104 (green). Id. at 3:22–26. Nodes 104, together with 

links 105, “collectively form a load-balancing network.” Id. at 3:53–56. 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 26 of 44
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Each node operates as an “ingress node” for traffic entering the load-balancing network 

from that node’s respective network 102 and as an “egress node” for traffic destined for that node’s 

respective network 102. See id. at 3:65–4:11. For instance, if traffic comes from the top left 

network (102A) destined for the bottom right network (102D), then node 104A would be the ingress 

node, and node 104D would be the egress node for that traffic. When operating as an ingress node, 

if node 104A determines that a packet’s egress node (104D) has a “congestion condition,” node 

104A’s processor may modify (i.e., lower) the queuing priority for the packet. Id. at 5:28–38. 

A. “whether a congestion condition exists [on/for] the egress node” (Claims 1, 

12, and 13)

Defendants’ Proposal WSOU’s Proposal

“whether the egress node is currently congested” Plain and ordinary meaning

The entire patent centers around taking action at an ingress node if a “congestion condition” 

exists on an egress node. The patent explicitly defines what is meant by that phrase:

Using the identified egress node associated with the packet, 

processor 210 determines the egress node congestion status associated with the 

identified egress node. In one embodiment, the egress node congestion status 

provides an indication as to whether the egress node currently has a congestion 

condition (i.e., whether the egress node is currently congested).

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 27 of 44
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’133 patent, 5:17–23. This passage unambiguously defines (via the “i.e.”) a “congestion 

condition” at an egress node to mean “whether the egress node is currently congested.”

SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1202 (Fed. Cir. 2013) (“[W]e give the term ‘i.e.’ 

here its plain meaning—that it ‘signals an intent to define the word to which it refers.’”). The 

specification uses the term “congestion condition” about 70 more times, each with exactly the 

same meaning, and WSOU does not assert otherwise. Br. 17.

WSOU incorrectly urges the Court to ignore the patent’s explicit definition merely because 

it is contained within a description of a preferred embodiment. That is contrary to law. In Edwards 

Lifesciences LLC v. Cook Inc., 582 F.3d 1322 (Fed. Cir. 2009), the Federal Circuit rejected that 

argument, holding instead that “the specification’s use of ‘i.e.’ signals an intent to define the word 

to which it refers, ‘malleable,’ and that definition was not limited to the embodiment being 

discussed.” Id. at 1334. And as the definition passage above illustrates, the embodiment-specific 

feature is the use of a “congestion status” that provides an indication of the congestion condition. 

The definition of “congestion condition” is universal, and is consistent with every use of the term.

Accordingly, this term should be construed based on its express definition. See, e.g., 

Advanced Fiber, 674 F.3d at 1372 (“[I]f the specification or prosecution history defines a claim 

term, that definition shall apply even if it differs from the term’s ordinary meaning.”). 

B. “processing the packets” (Claims 1, 12, and 13)

Defendants’ Proposal WSOU’s Proposal

“modifying, at the ingress node, the queuing priority of 

packets destined for the egress node”

Plain and ordinary meaning

The term “processing the packets” should be construed according to the patent’s express 

limitation of the “present invention” as one that modifies, at the ingress node, the queueing priority 

of packets destined for the egress node. The “Detailed Description of the Invention” begins with 

three paragraphs that explicitly limit the “present invention,” thereby “limit[ing] the scope of the 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 28 of 44
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invention.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007)

(“When a patent thus describes the features of the ‘present invention’ as a whole, this description 

limits the scope of the invention.”); Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 

(Fed. Cir. 2015) (“We have found disavowal or disclaimer based on clear and unmistakable 

statements by the patentee that limit the claims, such as ‘the present invention includes . . .’ or ‘the 

present invention is . . .’ or ‘all embodiments of the present invention are . . .’”). Specifically, the 

patent limits the “present invention” to (1) “modif[ying] the queuing priority of packets on ingress 

nodes” and (2) that modification being a part of “process[ing] the packet” (’133 patent, 2:48–59):

[1] The present invention modifies the queuing priority of packets on ingress 

nodes of the load-balancing network by which the packets enter the load-balancing 

network. [2] The present invention utilizes the egress node information and egress 

node congestion information associated with each packet for determining whether 

to process the packet for modifying the queuing priority of the packet (or for 

dropping the packet at the ingress node). 

The specification also requires that the processed “packets” be “destined for the egress 

node.” Id. at 3:7–8 (“The present invention processes packets destined for congested egress 

nodes.”). The rest of the specification is consistent with these express statements of the “present 

invention.” For instance, Figures 3 and 6 each depict a step in which “the packet is processed for 

modifying the queuing priority associated with the packet” before distributing the packet from the 

ingress node/switch. Id. at 9:50–51, 13:48–49, Fig. 3 (steps 310, 312), Fig. 6 (steps 612, 614). 

WSOU argues that this term requires no construction for four reasons, all of which should be 

rejected. Br. 18. First, WSOU argues that “[t]he ‘such that’ clause . . . provides sufficient context 

for the ‘processing the packets’ term.” Id. The term requires construction not because it lacks 

“context,” but because the specification expressly limits the “present invention.” Defendants’ 

construction also is fully consistent with the “such that” clause.

Second, WSOU argues that the term should not be limited to processing at the “ingress 

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24

node” because “[c]laim 1 (written in method form) is agnostic as to whether the ‘processing’ is 

performed by an ‘ingress node’ in particular.” Id. As noted above, the patent unambiguously 

states that the “present invention” involves performing this processing at the ingress node. The 

natural reading of claim 1 is entirely consistent, as it requires “determining an egress node 

associated with each of a plurality of packets of a traffic flow received at an ingress node.” That 

language, in combination with the whole point of the “present invention” makes clear that the 

processing is done at the ingress node so that the packets can be given appropriate priority as they 

travel through the network to the egress node. 

Third, WSOU also incorrectly asserts that Defendants’ construction is “inconsistent with 

its separate construction for ‘means for processing the packets’” because Defendants’ 

corresponding structure for the latter does not require an “ingress node.” Id. Defendants’ proposed 

structure for the “means for processing . . .” term is processor 210 performing certain steps. But 

the patent states that processor 210 is included within node 104A, which operates as an ingress 

node: “processor 210 receives traffic (e.g., a traffic flow of packets) from network 102A via link 

103A.” ’133 patent, 5:1–2; see also id. at 3:65–4:3. Defendants’ positions are entirely consistent. 

Fourth, WSOU argues that the claims “express[] a relative difference in queuing priority,” 

not “a modification of a given queuing priority,” and without any citation, asserts “[n]othing in the 

remainder of the intrinsic evidence unambiguously requires . . . a modification limitation.” Br. 

18–19 (emphasis by WSOU). But as noted, the “present invention,” repeatedly limits the claims 

to “modifying the queuing priority” and should be so construed.

C. “such that packets associated with egress nodes for which the congestion 

condition does not exist have a different queuing priority within the load 

balancing network than packets associated with egress nodes for which the 

congestion condition exists” (Claims 1, 12, and 13)

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 30 of 44
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Defendants’ Proposal WSOU’s Proposal

“such that packets are marked depending on whether they are 

destined for a congested egress node, such that marked packets 

have a different probability of being dropped”14

Plain and ordinary meaning

The scope of this phrase depends on the meaning of “queuing priority.” The phrase 

requires that packets destined for congested egress nodes differ in their “queuing priority” from 

packets destined for uncongested egress nodes. But the claim language does not define “queueing 

priority,” and there is no indication that it has an established meaning in the art. Thus, the scope 

of the term cannot be broader than the patent’s description of it. Irdeto, 383 F.3d at 1300.

The specification makes clear that a “queuing priority” has at least two characteristics. 

First, it is indicated by marking a packet that is destined for a congested egress node. Second, it 

indicates the probability that the packet will be dropped along the way. Referring to the flowchart 

in Figure 3 (at step 310), the specification states that “the packet is processed for modifying the 

queuing priority associated with the packet.” ’133 patent, 9:51–53. It then defines that step 310: 

“In other words, the packet is marked for identifying the packet as a packet destined for a 

congested egress node.” Id. at 9:53–55; see also id. at 13:48–51 (same for Fig. 6, step 612); 5:24–

28 and 6:59–60 (describing “unprocessed” and “processed” packets as ones that are “unmarked” 

or “marked,” respectively). It also repeatedly and consistently requires that a packet’s “queuing 

priority” indicates the probability that the packet will be dropped. Groove Digital, Inc. v. United 

Bank, 825 F. App’x 852, 856 (Fed. Cir. 2020) (“[R]epeated and consistent description of a claim 

term may inform its construction.”). The specification explains the probability of being dropped 

as the significance of the queuing priority reflected by a packet’s marking. E.g., ’133 patent, 3:9–

13, 6:54–65, 9:56–10:2, 13:56–64, 14:62–65. Shown in Figure 2, each node in the load-balancing 

 14 Defendants added the words “such that” at the beginning of their proposal so that their 

construction aligns with the rest of the claim language.

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network includes three components that output packets to other nodes or networks (distributor 220, 

switch 230, and collector 240), and each includes a respective queue (queues 222, 232, and 242, 

respectively). In nearly identical language, the specification states that the probability that 

distributor 220, switch 230, and collector 240 drop packets depends on whether they are “marked”: 

“[distributor 222/switch 230/collector 240] drops marked packets destined for congested egress 

nodes with a higher probability than [distributor 222/switch 230/collector 240] drops unmarked 

packets destined for uncongested egress nodes.” Id. at 7:26–30, 8:15–17, 8:64–66. 

WSOU’s argument that Defendants seek to add unrecited concepts—“marking packets and 

conditionally dropping packets”—is incorrect. Br. 19 (emphasis in original). The specification 

inextricably links those two concepts to the notion of “queuing priority,” which the specification 

defines to mean a marking of patents that dictates the probability a packet is dropped along the 

way. Both of WSOU’s citations (id. at 19–20) are inapplicable—they merely state that a “queuing 

priority” may be modified. ’133 patent, 5:6–10, 5:33–38. 

WSOU also argues incorrectly that Defendants’ construction “violat[es] the doctrine of 

claim differentiation.” Br. 20. “Claim differentiation is not a hard and fast rule, but rather a 

presumption that will be overcome when the specification or prosecution history dictates a contrary 

construction,” as is the case here. GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 

2016). WSOU first argues that “independent claim 1 is expressly differentiated from dependent 

claims 6−11 in that only those dependent claims (though not claim 1) expressly requir[e] marking 

packets.” Br. 20. The Federal Circuit “has declined to apply the doctrine of claim differentiation 

where ‘the claims are not otherwise identical in scope.’” Apple, Inc. v. Ameranth, Inc., 842 F.3d 

1229, 1238 (Fed. Cir. 2016). Each of claims 6–11 recites various other limitations that distinguish 

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them from claim 1.15 WSOU also argues that “while . . . independent claim 1 does not recite any 

limitations directed to dropping packets, claim 4 depending therefrom does.” Br. 20. But 

Defendants’ construction relates to the “probability of being dropped,” not actually “dropping the 

packets,” as recited in claim 4. The claims are distinct. 

Thus, this term should be construed according to the specification’s clear and exclusive 

requirement that “queueing priority” be achieved through marking packets as described above.

D. “means for determining, for each packet, whether a congestion condition exists 

on the egress node”16 (Claim 12)

Defendants’ Proposal WSOU’s Proposal

This term is subject to 35 U.S.C. § 112, ¶ 6

Function: determining, for each packet, 

whether a congestion condition exists on the 

egress node

Structure: Indefinite

Subject to means-plus-function construction.

Function: “determining, for each packet, 

whether a congestion condition exists on the 

egress node”

Structure: see, e.g., Figs. 1–7; 5:1–6:12; 9:8–

22; 9:41–51; 13:32–47; 14:24–65; 15:12–28.

The parties agree that this term is a means-plus-function term and agree on its function. 

The only dispute is whether, as Section 112, ¶ 6 requires, the specification discloses corresponding 

structure that performs the recited function. But the only corresponding device that the 

specification identifies is a general purpose microprocessor, without the requisite algorithm used 

to perform that function on the microprocessor. Thus, claim 12 is indefinite. WMS Gaming Inc. 

 15 ’133 patent, 17:4–6 (cl. 6) (“allowing pass-through of packet . . .”), 17:8–14 (cl. 7) (“splitting 

the traffic flow . . .”/“distributing the traffic flow parts . . .”), 17:24–27 (cl. 8) (“conveying the 

traffic . . .”), 17:34–45 (cl. 9) (“distributing said traffic . . .”/“receiving first received traffic . . .”), 

17:51–62 (cl. 10) (“distributing second transmitted traffic . . .”/“receiving second received traffic 

. . .”), 18:1–7 (cl. 11) (“splitting the traffic flow . . .”/“distributing the traffic flow parts . . .”). 

16 WSOU briefed the wrong “means for determining” term. In the narrowed list of terms for 

construction, Defendants identified “means for determining, for each packet, whether a congestion 

condition exists on the egress node.” Ex. 5 (2/8/21 email) at 1; Ex. 6 (Attachment to 2/8/21 email) 

at 1. WSOU did not object. Ex. 8 (2/10/21 email). Yet, WSOU instead briefed “means for 

determining an egress node associated with each of a plurality of packets . . . .” Br. 20–21. 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 33 of 44
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v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999); Dyfan, LLC v. Target Corp., No. W19-CV-00179-ADA, 2020 WL 8617821, at *6 (W.D. Tex. Nov. 24, 2020) (“Because § 112, ¶ 6 

applies and the corresponding structure is a special-purpose computer function, the specification 

must provide an algorithm for the software function.”). 

The specification describes the recited function with step 308 of the flowchart in Figure 3, 

and states that “the congestion status of the egress node associated with a packet is determined 

from a processor module of the ingress node (illustratively, processor 210 of Figure 2).” ’133 

patent, 9:41–47. But the “processor module” or processor 210 is nothing more than a general 

purpose microprocessor. E.g., id. at 14:15–16 (describing a “CPU” as an example of “processor 

element 702”), 14:24–28 (“It should be noted that the present invention may be implemented in 

software and/or in a combination of software and hardware, e.g., using application specific 

integrated circuits (ASIC), a general purpose computer or any other hardware equivalents.”). Nor 

can an “ASIC” be the corresponding structure. Aside from this generic description, the 

specification does not describe such an ASIC at all—it is nothing more than a black box. 

The specification fails to disclose an algorithm for “determining, for each packet, whether 

a congestion condition exists on the egress node.” Indeed, the specification fails to disclose an 

algorithm for determining whether a congestion condition exists anywhere—on an egress node or 

otherwise. At most, the specification states that (1) the congestion condition information is 

“indicative of a queue overflow condition (or any other queue utilization condition)” and (2) that 

a congestion condition is “indicative of a hose constraint violation associated with the loadbalancing node.” Id. at 5:53–64. The specification does not state that the congestion condition 

information is determined based on the detection of either of those conditions, let alone how (black 

box) processor 210 determines either condition. This term therefore is indefinite.

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E. “means for processing the packets such that packets associated with egress 

nodes for which the congestion condition does not exist have a different 

queuing priority within the load-balancing network than packets associated 

with egress nodes for which the congestion condition exists” (Claim 12)

Defendants’ Proposal WSOU’s Proposal

This term is subject to 35 U.S.C. § 112, ¶ 6.

Function: processing the packets such that 

packets associated with egress nodes for which 

the congestion condition does not exist have a 

different queuing priority within the loadbalancing network than packets associated with 

egress nodes for which the congestion condition 

exists

Structure: processor 210 which marks the 

packets such that marked packets have a different 

probability of being dropped than unmarked 

packets

Subject to means-plus-function 

construction.

Function: “processing the packets such 

that packets associated with egress nodes 

for which the congestion condition does 

not exist have a different queuing priority 

within the load-balancing network than 

packets associated with egress nodes for 

which the congestion condition exists”

Structure: processor having the claimed 

functionality

The parties agree that Section 112, ¶ 6 applies to this term, on the recited function, and that 

the corresponding structure includes a “processor.” Br. 22. The specification, however, makes 

clear that the “processor” is a general-purpose processor programmed to carry out functions. See, 

e.g., ’133 patent, 14:15–16, 14:28–35. Thus, “the specification . . . must contain an algorithm to 

perform the function associated with the [‘means for processing’] limitation, or the limitation is 

indefinite.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1305 (Fed. Cir. 2012). This rule has 

been undisturbed for the last 20 years. See, e.g., Nevro Corp. v. Bos. Sci. Corp., 955 F.3d 35, 42 

(Fed. Cir. 2020); WMS Gaming, 184 F.3d at 1349; Rain Computing, 2021 WL 786361, at *4; 

Dyfan, 2020 WL 8617821, at *6. 

Nevertheless, WSOU, relying on Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d 

1371 (Fed. Cir. 2001), asserts that this term should not be limited to any algorithm(s) for carrying 

out the claimed function, arguing instead that the structure is merely a “processor having the 

claimed functionality.” Br. 22. But that case had nothing to do with computers as the 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 35 of 44
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corresponding structure. Acromed dealt with a bone screw as corresponding structure, and is thus 

inapposite. Acromed, 253 F.3d. at 1382. Contrary to WSOU’s argument, the “means for 

processing” here must be limited to the one algorithm disclosed in the patent.

The only algorithm that the patent describes to perform the claimed function is marking 

packets such that they have a different probability of being dropped than unmarked packets. The 

patent states that packets destined for a congested egress node are “processed for modifying the 

queuing priority associated with the packet.” ’133 patent, 9:51–53. “In other words, the packet is 

marked for identifying the packet as a packet destined for a congested egress node.” Id. at 9:53–

55. As discussed above, the patent consistently states that marked packets are dropped with higher 

probability than unmarked packets. Id. at 6:54–65, 7:26–30, 8:15–25, 8:64–9:7, 9:56–10:2. Thus, 

this term should be limited to the purported algorithm disclosed in the specification. 

IV. U.S. Patent No. 7,636,309 (Case No. -485)

The ’309 patent relates to splitting traffic flows onto multiple paths of a network. ’309 

patent, 3:5–8. A “traffic flow” “refers to a group (e.g., two or more) of packets that are to be routed 

in [a] network.” Id. at 2:63–65. A “path” “refers to a set of two or more nodes and one or more 

links between the nodes.” Id. at 1:67–3:4. Figure 1B (annotated) explains the claimed invention:

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 36 of 44
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As shown, X1 and X2 represent traffic flows that are to be split onto one of the paths (e.g., 

the upper path or the lower path). Id. at 4:9–12, 4:15–19. Each traffic flow is split “based on a 

given split ratio vector.” Id. at 4:15–19. For traffic flow X1, the “split ratio vector” is represented 

as “q1” and “1-q1.” Id. For example, if q1 were 0.4, then 40% of the X1 traffic would go on the 

upper path and 60% of the X1 traffic (i.e., 1 – 0.4) would go on the lower path. The claims recite 

that, after the traffic flows are split into “sub-flows,” combined sub-flows from at least two traffic 

flows (X1 and X2) are routed onto one path. Id. at 15:38–45.

A. “split ratio vector” (Claims 1, 11, and 16)

Defendants’ Proposal WSOU’s Proposal

“the proportion of the flow routed in 

each path”

“the proportion of the flow routed in a given path relative 

to the cumulative flows on the plurality of paths”

The ’309 patent expressly defines “split ratio vector”: “[A] split ratio vector of a flow is 

defined as the proportion of the flow routed in each path.” ’309 patent, 3:48–49. A “specification 

acts as a dictionary when it expressly defines terms” in this manner. Phillips v. AWH Corp., 415 

F.3d 1303, 1321 (Fed. Cir. 2005). In those circumstances, “there is no need to search further for 

the meaning of the term,” and “that definition shall apply.” See Advanced Fiber Techs. v. J & L 

Fiber Servs., Inc., 674 F.3d 1365, 1372 (Fed. Cir. 2012); Multiform Desiccants, Inc. v. Medzam, 

Ltd., 1333 F.3d 1473, 1478 (Fed. Cir. 1998). This definition of the term is entirely consistent with 

the term’s use in the claims. See, e.g., ’309 patent, 15:1–56, 16:11–56, 17:11–18:20, Figs. 1, 2. 

WSOU agrees that Defendants’ construction is taken from the “specification verbatim.” 

Br. 24. WSOU nevertheless advances the strawman argument that the express definition “could 

be interpreted as requiring that each path must route the same proportion of the flow.” Id. 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 37 of 44
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Defendants’ construction does no such thing, nor will Defendants argue that it does. WSOU’s 

new17 proposal should be rejected and the express definition of the claim term should be adopted.

V. U.S. Patent No. 9,164,800 (Case No. -481)

The ’800 patent addresses using algorithms to match “compute nodes” (such as virtual 

machines) to geographically distributed “data nodes.” ’800 patent, 1:30–32. Data nodes 

sometimes will not be “local to the compute nodes processing the data,” and thus “issues such as 

propagation delay and bandwidth may further impact the communication latency between data 

nodes and compute nodes or between multiple computer nodes cooperating to perform a 

processing task.” Id. at 1:33–41. Figure 2 (annotated) illustrates an “assignment problem for 

solution,” labeling compute nodes with a “C” and data nodes with a “D.” Id. at 6:30–47.

As shown above, the lines between the nodes are “edges,” which are “[p]ossible 

assignments between the data nodes . . . and the compute nodes” and “may be associated with a 

cost representing, for example, a latency or network distance between the two nodes.” Id. at 2:2–

3, 6:49–54. For example, “the cost of assigning compute node 240 to data node 210 may be 

 17 This is a new proposal that WSOU never disclosed during the meet-and-confer process, where 

WSOU argued only that plain meaning should apply. Ex. 9; Ex. 7.

Data Node Compute Node

Costs

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 38 of 44
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represented as ‘2’” (orange), and “the cost of assigning compute node 250 to the same data node 

may be represented as ‘12’” (teal). Id. at 6:57–60. Thus, all else equal, a solution with compute 

node 240 assigned to data node 210 (cost of 2) is preferable to a solution with compute node 250 

assigned to data node 210 (cost of 12). 

A. “latency cost” (Claims 1, 13)

Defendants’ Proposal WSOU’s Proposal

“communication delay between a compute node and a data node” Plain and ordinary meaning

WSOU does not dispute that “latency” refers to a communication delay. Br. 25–26. 

Indeed, through its repeated, consistent, and exclusive disclosure, the specification defines 

“latency” as communication delay. Groove Digital, 825 F. App’x at 856. See, e.g., ’800 patent, 

6:3–6; 6:23–27; 1:32–34; 1:37–41; 4:38–43; 5:49–48; 6:52–54. The only dispute is thus whether 

the claimed latency cost refers to communication delay between any two nodes, or just between a 

compute node and a data node. The claims and specification compel the latter. 

The language of claims 1 and 13 requires that “latency cost” refers to the communication 

delay between a compute node and a data node. Claim 1 recites a method “for assigning compute 

nodes to data nodes,” that includes “obtaining . . . a set of edges between compute nodes and data 

nodes.” The assignment must be based on “the assignment objective and a plurality of costs 

associated with the set of edges.” Id. at 15:31–34. Claim 13 recites nearly identical language for 

a “cloud controller.” Id. at 17:24–26. As such, the claims unambiguously require that the “costs” 

on which the assignment is based are costs associated with the “edges between compute nodes and 

data nodes.” The term “latency cost” in this context can only refer to delays between such nodes. 

The specification similarly describes assignments as limited to those between compute 

nodes and data nodes. See, e.g., id. at 6:30–31 (“optimizing assignment of compute nodes to data 

nodes”), 6:49–50 (“[p]ossible assignments between the data nodes . . . and the compute nodes”), 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 39 of 44
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6:57–58 (“the cost of assigning compute node 240 to data node 210”), 7:10–13 (“determining an 

optimum assignment of compute nodes to data nodes”), 7:51–52 (“[v]arious additional or 

alternative objectives for compute-node-to-data-node assignment”), 7:55–58 (“determin[ation of] 

how a set of compute nodes should be assigned to a set of data nodes”). It discloses only using 

the latency cost between the compute node and data node in making the assignment. See, e.g., id.

at 11:24–26 (“[A] cloud controller may, in assigning compute nodes to data nodes, optimize the 

latencies between such nodes according to various objectives.”). It thus supports only the 

conclusion that the claimed latency costs refer to the delays between compute and data nodes. 

WSOU argues incorrectly that this term should not be restricted to a communication delay 

between a compute node and a data node, but is broad enough to encompass “any sort of delay 

between other nodes.” Br. 25. According to WSOU, the patent “contemplates” communication 

between compute nodes. Id. (citing ’800 patent at 1:37–41, 8:10–12, 11:24–29). But as noted 

above, the requirement that the communication delay be between compute and data nodes is rooted 

in the claims’ requirement that the “latency cost” be “used in obtaining a set of assignments,”

which the claims and specification exclusively describe as being between compute and data nodes. 

None of the passages WSOU cites describes using any communication delay that may exist 

between compute nodes in making an assignment between a compute node and a data node. The 

first passage (1:37–41) does not say anything about assignments at all. The second passage (8:10–

12) describes assignments between one data node and two compute nodes, but says nothing about 

using communication delays between compute nodes to do so. Finally, although the third passage 

(11:24–29) states that “compute nodes may . . . communicate with each other” and describes “intercompute node latencies,” it never describes assigning a compute node to another compute node. 

Thus, because the specification defines “latency cost” as “communication delay” between 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 40 of 44
35

nodes (which WSOU does not dispute), and because the claims require that the “latency cost” must 

be between compute and data nodes, the term should be construed as Defendants propose.

B. “[determining/determine] an assignment objective” (Claims 1, 13)

Defendants’ Proposal WSOU’s Proposal

“select[ing] one of a plurality of assignment objectives” Plain and ordinary meaning

This term should be construed to require selecting from multiple possible assignment 

objectives based on the clear and unmistakable arguments made during prosecution. WSOU does 

not dispute that the applicants distinguished prior art based on this limitation during prosecution. 

Br. 27. Defendants’ construction gives effect to that distinction, whereas WSOU seeks to ignore 

it so that WSOU can impermissibly encompass scope that the applicants explicitly surrendered.

During prosecution, the applicants successfully distinguished the “Palanisamy” reference 

as disclosing a single assignment objective, stating that it does not “disclos[e] . . . a separate step 

of determining an assignment objective,” because it “always follows the same approach to VM 

assignment,” and thus “[t]here is no opportunity to determine which assignment objective is to be 

achieved and apply that algorithm associated with the selected objective because the single 

approach appears to be hard-coded into the system.” Ex. 10 at 15. Effectuating this disclaimer, 

Defendants’ construction requires selection among “a plurality of assignment objectives,” thereby 

properly excluding systems always following “the same approach . . . hard-coded into the system.” 

N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345 (Fed. Cir. 2005) (“[T]he 

applicant distinguished his invention from the Dechenne patent on the basis of the latter disclosing 

inner walls that are ‘slightly concave.’ The inescapable consequence of such an argument is that 

the scope of applicant’s claims cannot cover inner walls that are ‘slightly concave.’”). 

WSOU concedes that the claims cannot cover systems that utilize a single assignment 

objective hard-coded into the system, acknowledging that “the claim language was distinguished 

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 41 of 44
36

from a single approach hard-coded in the system.” Br. 27. WSOU nevertheless asserts that 

Defendants’ construction should be rejected for three reasons, each of which should be rejected.

First, WSOU argues that the applicants’ express disavowal does not “unambiguously 

disclaim all of the several disclosed embodiments save the one which enables a client or operator 

to select one of a plurality of assignment objectives.” Id. But Defendants’ construction is agnostic

as to what selects the objective so long as it is selected from the plurality of objectives. Thus, 

Defendants’ construction properly excludes only single-objective systems. And WSOU identifies 

no embodiment that would be improperly excluded by Defendants’ construction. 

Second, WSOU argues that Defendants’ construction “introduce[es] the extraneous 

requirement ‘one of a plurality of assignment objectives’” and that “the claim language specifies 

that only the determined assignment objective (in the singular) need be based on a latency cost 

used in obtaining a set of assignments by applying an algorithm.” Id. at 27–28. The requirement 

that the objective be selected from a plurality of assignment objectives is based on the undisputed 

file history disclaimer discussed above. Defendants’ construction does not require that all of the 

assignment objectives must be based on a latency cost. WSOU’s strawman should be rejected.

Third, WSOU argues that “not every preferred embodiment necessarily requires that the 

determining of an assignment objective must involve selecting one of a plurality of assignment 

objectives.” Id. at 26–27. The patent describes an “example” in which the cloud controller “may 

only provide a single objective.” ’800 patent, 8:31–34. But it is that very approach—i.e., node 

assignment based on a “single approach . . . hard-coded into the system”—that the applicants

expressly disclaimed. In other words, the applicants surrendered that single embodiment to obtain 

the claims. This term therefore is properly construed as excluding the “single objective” example. 

See, e.g., Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1372–73 (Fed. Cir. 2005).

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 42 of 44
37

Dated: March 17, 2021 By: /s/ Barry K. Shelton

Barry K. Shelton

Texas State Bar No. 24055029

bshelton@sheltoncoburn.com

SHELTON COBURN LLP

311 RR 620, Suite 205

Austin, TX 78734-4775 

Telephone: 512.263.2165

Facsimile: 512.263.2166 

Benjamin Hershkowitz

bhershkowitz@gibsondunn.com

Brian A. Rosenthal

brosenthal@gibsondunn.com 

Allen Kathir

akathir@gibsondunn.com

Kyanna Sabanoglu

ksabanoglu@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Y. Ernest Hsin

ehsin@gibsondunn.com

Jaysen S. Chung

jschung@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

555 Mission Street, Suite 3000

San Francisco, CA 94105-0921

Telephone: 415.393.8200

Facsimile: 415.393.8306

Ryan K. Iwahashi

riwahashi@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Road

Palo Alto, CA 94304-1211

Telephone: 650.849.5300

Facsimile: 650.849.5333

Attorneys for Defendants

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 43 of 44
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CERTIFICATE OF SERVICE

The undersigned certifies that on March 17, 2021, all counsel of record who are deemed to 

have consented to electronic service are being served with a copy of this document through the 

Court’s CM/ECF system under Local Rule CV-5(b)(1). 

/s/ Barry K. Shelton 

Barry K. Shelton

Case 6:20-cv-00486-ADA Document 80 Filed 03/17/21 Page 44 of 44