IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v. 

HUAWEI TECHNOLOGIES USA

INC. ET AL.,

Defendant.

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CIVIL ACTION 6:20-cv-00539-ADA

PLAINTIFF’S RESPONSE TO 

DEFENDANTS’ SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF

ADDRESSING CLAIM 15 OF U.S. PATENT NO. 8,200,224

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I. Dependent claim 15 does not invoke the mixed class concerns of IPXL

Huawei failed to meet its burden to prove, by clear and convincing evidence, that claim 15

is invalid for allegedly mixing classes of subject matter under the reasoning in IPXL Holdings v. 

Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (“IPXL”).1 IPXL ruled that “a single claim 

covering both an apparatus and a method of use of that apparatus is invalid” as indefinite (under 

§ 112, ¶ 2). Id. at 1384. Claim 15, reproduced below, does not invoke this same concern. 

15. The method of claim 1 implemented in a computer program product 

stored on a storage medium, comprising executable program means for 

causing a base station to perform the method when the program is run on 

the base station.

U.S. Patent No. 8,200,224 (“the ’224 patent”), 10:58–61 (claim 15). Unlike IPXL, claim 15 does 

not cover an apparatus and a method of use of that apparatus. Rather, claim 15 recites that the 

method steps of claim 1 must be performed with certain structure. This is a proper and longrecognized limitation on the scope of a method. See Robert A. Matthews, Jr., Annot. Patent Digest 

§ 3:53 (2021) (collecting cases).2

Huawei has not cited any Federal Circuit case law in which the court invalidated a 

dependent claim because it recited structural limitations on its independent method claim. To the 

contrary, Federal Circuit authority indicates that such dependent claiming is permissible. In 

Akamai,

3 for example, the court explained that “[m]ethod claims often include structural details” 

in holding that the district court’s claim construction properly included a structural element as a 

limitation in a method claim. Id. at 1329–30.

1 Prior to the Court raising this issue sua sponte, Huawei had waived the right to pursue this 

invalidity theory by failing to preserve the same in its invalidity contentions and briefing. 

2 Judges from the Federal Circuit and the federal district courts have quoted from and relied on 

Matthew’s Annotated Patent Digest in rendering rulings on dozens of patent matters. See, e.g., 

Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1358 (Fed. Cir. 2017) 

(Reyna, dissenting-in-part); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1318, 1321−22, 1327, 

1330 (Fed. Cir. 2014); Leviton Mfg. Corp. v. Universal Security Instruments, Inc., 606 F.3d 

1353, 1373 (Fed. Cir. 2010) (Prost, J., dissenting); Motiva Patents, LLC v. Sony Corp., 2019 

WL 4737051, *5 (E.D. Tex. Sep, 27, 2019).

3 Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010), vacated 

on other grounds, 419 Fed. Appx. 989 (Fed. Cir. 2011).

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Similarly, in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 

1367, 1374–75 (Fed. Cir. 2008), the court found that a method claim was not invalid for 

impermissibly claiming mixed classes of subject matter even though the claim included structural 

limitations. As the court explained in Microprocessor, “Method claim preambles often recite the 

physical structures of a system in which the claimed method is practiced.” Id. at 1375; see also 

Seachange Int’l, Inc. v. C–COR Inc., 413 F.3d 1361, 1375–76 (Fed. Cir. 2005) (holding that the 

phrase “distributed computer system” in preamble of a method claim was a claim limitation); 

Eaton Corp. v. Rockwell Intern. Corp., 323 F.3d 1332, 1342 (Fed. Cir. 2003) (construing a method 

claim as including steps that require the operation or manipulation of recited structure).

Finally, in SunRace Roots Enterprise Co. v. SRAM Corp., 336 F.3d 1298 (Fed. Cir. 2003), 

the Federal Circuit discussed a dependent claim that added a “structural limitation” to the 

independent method claim. Id. at 1303. The court’s discussion did not question the validity of the 

dependent claim even though that claim “simply add[ed] the structural limitation” to the method 

claim. Id.

Confronted with analogous facts, another court presented a similar analysis of the Federal 

Circuit authority addressed above. McDavid Knee Guard, Inc. v. Nike USA, Inc., 809 F. Supp. 2d 

863, 881–82 (N.D. Ill. Aug. 17, 2011). There, the court cited much of the same authority as 

reaffirming it is permissible to limit method claims to performance with certain structure. The 

court thus upheld the definiteness of dependent claims that only added structural limitations to a 

method claim. Id. Other courts have applied similar reasoning. See, e.g., Steuben Foods, Inc. v. 

Oystar USA, Inc., No. 1:10-CV-00780 EAW, 2021 WL 630906, at *3 (W.D.N.Y. Feb. 18, 2021) 

(instructing that “IXPL Holdings is not implicated where a method claim ‘recite[s] the physical 

structures of a system in which the claimed method is practiced’”) (quoting Microprocessor, 520 

F.3d at 1374); Optimum Imaging Techs. LLC v. Canon Inc., No. 2:19-CV-00246-JRG, 2020 WL 

3104290, at *24 (E.D. Tex. June 11, 2020) (finding IPXL was not invoked by the recitation of 

structure which “permissibly sets forth the environment and context of the [claimed] method.”).

Analogous reasoning refutes Huawei’s deficient indefiniteness theory here.

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In its supplemental brief, Huawei incorrectly interprets claim 15 as being “written in 

apparatus format, indicating capability to perform the claimed method in addition to active 

performance of the method recited in Claim 1.” Dkt. 64 at 3. Huawei is wrong. Claim 15 recites 

at the outset “[t]he method of claim 1 . . .” and thus it clearly is written in method form. ’224

patent, 10:58–61. The remainder of claim 15 is not satisfied by mere capability but rather limits 

the performance of claim 1 to certain structure—i.e., “. . . implemented in a computer program 

product stored on a storage medium, comprising executable program means for causing a base 

station to perform the method when the program is run on the base station.” As explained above, 

the Federal Circuit (and numerous progeny cases) has made it clear that the concern identified in 

IPXL is not implicated where, like here, a method claim recites structure in which the claimed 

method must be implemented. See, e.g., Microprocessor, 520 F.3d at 1374. Because claim 15 

would be infringed only by “practicing the claimed method . . . [using] the requisite structure,” id. 

at 1375, the ambiguity driving the analysis in IPXL is simply not present.4

II. Dependent claim 15 recites sufficient structure to avoid § 112, ¶ 6

The Court also invited the parties (through e-mail dated April 27, 2021, from Dr. Joshua 

Yi, Technical Advisor to the Hon. Alan D. Albright, United States District Court – Western District 

of Texas) to further brief “Whether the claim term is subject to Section 112, Paragraph 6 given 

that the base station performs the method of Claim 1 and may also provide sufficient structure to 

overcome the presumption that 112, 6 applies.” The Court’s “given that” statement correctly 

recognizes that claim 15 expressly requires the base station to perform the method of claim 1. See

’224 patent, 10:60–61 (claim 15). This recitation of definite structure, and the additional structural 

context in which it is recited, does indeed overcome the presumption that § 112, ¶ 6 applies. 

As explained above, dependent claim 15 recites that the method of claim 1 must be 

performed with certain structure—e.g., “. . . a base station to perform the method when the 

program is run on the base station.” Sufficient structure is recited as (1) the executable program

4 Huawei purports to also challenge dependent claim 14 under IPXL. The Court did not grant leave 

for Huawei to newly address claim 14; and Huawei has waived such a challenge. See n.1, supra.

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that must be run on (2) the base station, where the executable program must itself contain 

(3) specific algorithm structure (i.e., the process steps of claim 1). These three structural elements, 

when collectively considered, are sufficient to overcome the presumption that § 112, ¶ 6 applies. 

First, claim 15 recites corresponding structure as an “executable program” of a “computer 

program product stored on a storage medium.” Courts have repeatedly found that the term 

“executable program” itself connotes structure, particularly when embodied “on a storage 

medium.” Dkt. 43 (Op. Br.) at 6 (collecting cases). 

Second, there is also precedent for the conclusion that the term “‘base station’ possessed a 

well defined meaning in the art connoting structure.” EON Corp. IP Holdings, LLC v. Sensus USA 

Inc., 741 F. Supp. 2d 783, 794 (E.D. Tex. Aug. 11, 2010) (“EON”). The court in EON quoted 

multiple dictionary definitions in support of its interpretation that “base station” connotes structure. 

Id. at 793. The court also found the dictionary definitions to be “consistent with the applicant’s 

use of the term throughout the specification. See, e.g., ’101 Patent at 3:32–4:6 (describing the base 

station as transmitting and receiving messages to and from subscriber units).” Id. Here, the ’224 

patent similarly confirms the understanding that “base station” itself connotes structure, including 

by stating “[t]he term ‘base station’ as used herein refers to any type of fixed network element 

capable of exchanging data with a user equipment.” ’224 patent, 2:13–15. As explained above, 

claim 15 structurally limits the method of claim 1 in that it requires the base station to perform

that method, as the Court correctly recognized (in its e-mail concerning supplemental briefing). 

Finally, claim 15 also recites algorithmic structure by expressing the “method of claim 1” 

as certain process steps which the executable program, when run on the base station, must cause 

the base station to perform. This multi-part combination of structure, including (1) the executable

program running on (2) the base station, where the executable program must itself contain 

(3) specific algorithm structure recited as the process steps of claim, is sufficient to overcome the 

presumption that § 112 ¶ 6 applies to this term. See Dkt. 46 at 5 (collecting cases).

As explained in WSOU’s briefing, Huawei has tacitly acknowledged claim 15 recites 

sufficient structure corresponding to the disputed “means for” term. Id.; see also Dkt. 43 (Op. Br.) 

Case 6:20-cv-00539-ADA Document 65 Filed 05/07/21 Page 5 of 8
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at 5–7. Huawei’s original means-plus-function construction identified as corresponding structure 

the “base station” expressly recited in claim 15. Dkt. 43 (Op. Br.) at 4–5 (reproducing Huawei’s 

original position, as disclosed by Huawei prior to the filing of the opening brief). Huawei offered 

no explanation in its briefing for why it abandoned its prior position that the recited “base station”

is itself corresponding structure. It is also independently significant that Huawei still maintains 

the flowchart 100 of Figure 1 is corresponding structure. Id.; see also Dkt. 45 (Resp. Br.) at 10. 

This is because the same language is stated verbatim in both the description of the steps set forth 

in the flowchart 100 of Figure 1 and the steps recited in claim 1, which claim 15 expressly requires 

the “base station to perform . . . when the program is run on the base station.” ’224 patent, 

10:60–61 (claim 15). This overlap is underscored by a side-by-side comparison of claim 1 and 

flowchart 100, which are both reproduced in Table 1, infra, with identical language highlighted. 

If corresponding structure is found in the flowchart 100 of Figure 1, as Huawei contends, then the 

disputed term admittedly avoids § 112, ¶ 6. This is because claim 15 recites this same structure, 

including in its requirement that “the method of claim 1” must be “run on the base station.”

Huawei argues in its supplemental brief that, if this term is subject to § 112, ¶ 6, “the 

corresponding structure for the means term above cannot be the base station alone.” Dkt. 64 at 4. 

This is neither the question the Court invited the parties to brief nor even a dispositive issue here. 

The Court asked the parties to address whether § 112, ¶ 6 is invoked, given that the recited “base 

station” also provides necessary structure for the claimed method implementation. Huawei does 

not dispute, and has advanced no evidence to refute, the understanding that (1) “base station” 

connotes structure to a person of ordinary skill in the art and (2) that the claimed implementation 

requires at least a base station. That claim 15 further recites other structural limitations, in addition 

to the “base station” requirement, only further confirms § 112, ¶ 6 is not invoked here.

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TABLE 1

Steps of the method of claim 1 are reproduced below, which 

claim 15 requires “a base station to perform . . . when the 

program is run on the base station.”

Steps of Fig. 1 of ’224 patent

receiving a first measurement report from said user equipment via 

said telecommunication link, said first measurement report 

containing an evaluation of signal quality from at least one candidate 

base station of said plurality of base stations for a handover;

Step 101: Receiving a first 

measurement report

selecting a first candidate base station using said evaluation of said 

signal quality from said first measurement report;

Step 102: Selecting a first 

candidate base station

initiating a first handover preparation by transmitting a first request 

to said first candidate base station;

Step 103: Initiating a first 

handover preparation

determining if said first handover preparation has failed; Step 104: Determining if said 

handover preparation has failed

selecting a set of candidate base stations including ... some of said 

candidate base stations identified in said first measurement report;

Step 105: Selecting a set of 

candidate base stations

initiating a second handover preparation by transmitting a second 

handover request to a plurality of said set of candidate base stations, 

if said first handover preparation has failed;

Step 106: Initiating a second 

handover preparation

selecting a target base station from said set of candidate base stations, 

if said second handover preparation has not failed;

Step 107: Selecting a target 

base station

initiating said handover of said user equipment from said base station 

to said target base station;

Step 108: Initiating the 

handover of the user equipment

Compare ’224 patent at 10:58–61 (claim 15) with id. at Fig. 1 (highlighting added).

Dated: May 7, 2021 Respectfully submitted,

By: /s/ Ryan S. Loveless

James L. Etheridge 

Texas Bar No. 24059147 

Ryan S. Loveless 

Texas Bar No. 24036997 

Brett A. Mangrum 

Texas Bar No. 24065671 

Travis L. Richins 

Texas Bar No. 24061296 

Jeff Huang 

Etheridge Law Group, PLLC 

2600 E. Southlake Blvd., Suite 120 / 324 

Southlake, TX 76092 

Tel.: (817) 470-7249 

Case 6:20-cv-00539-ADA Document 65 Filed 05/07/21 Page 7 of 8
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Fax: (817) 887-5950 

Jim@EtheridgeLaw.com 

Ryan@EtheridgeLaw.com 

Brett@EtheridgeLaw.com 

Travis@EtheridgeLaw.com 

Jeff@EtheridgeLaw.com 

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive 

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

Counsel for Plaintiff WSOU Investments, LLC

CERTIFICATE OF SERVICE

A true and correct copy of the foregoing instrument was served or delivered electronically 

via U.S. District Court [LIVE]- Document Filing System, to all counsel of record, on May 7, 2021.

/s/ Ryan S. Loveless

Ryan S. Loveless 

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