IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v.

MICROSOFT CORPORATION, 

Defendant.

Civil Action No. 6:20-cv-454

Civil Action No. 6:20-cv-461

Civil Action No. 6:20-cv-465

DEFENDANT’S RESPONSIVE MARKMAN BRIEF

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 1 of 49
i

TABLE OF CONTENTS

I. BACKGROUND ..................................................................................................................... 1

A. The ’702 Patent........................................................................................................................ 1

B. The ’160 Patent........................................................................................................................ 2

C. The ’902 Patent........................................................................................................................ 3

II. LEGAL STANDARDS ........................................................................................................... 4

III. UNCONTESTED TERM OF THE ’702 PATENT IMPROPERLY BRIEFED 

BY WSOU ................................................................................................................................... 5

1. “AAA function capable”, “equipped to carry out authentication, 

authorization and accounting (AAA) functions for the network”, and 

“equipped to conduct authentication, authorization and accounting (AAA) 

functions for the network” ........................................................................................................... 5

2. “the AAA functions”............................................................................................................ 5

IV. DISPUTED TERMS FOR CONSTRUCTION ....................................................................... 6

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

1. “active nodes” ...................................................................................................................... 6

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

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

to detect if an active node becomes disconnected from the network”, and 

“monitoring the active nodes to detect if one becomes disconnected from the 

network”................................................................................................................................... 9

3. “each of said nodes having a user database” ..................................................................... 12

4. “activating the AAA functions of the active nodes”.......................................................... 13

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

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

the active node which got disconnected from the network is maximized”, 

and “node selected in step (d) is chosen to maximize a sum of a geographic 

distance between the active nodes and a geographic distance between the 

node selected in step (d) and the node which got disconnected from the 

network”................................................................................................................................. 15

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

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

each of the active nodes logs changes to its user database thereby updating 

the same to reflect changes in information contained therein”.............................................. 18

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

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 2 of 49
ii

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

calculating at two or more times values of the network parameters” .................................... 20

2. “network parameter”.......................................................................................................... 23

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

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

trend of the indicator” ............................................................................................................ 25

4. “service indicator” ............................................................................................................. 26

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

indicator crossing a defined threshold”.................................................................................. 29

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

service parameter values” ...................................................................................................... 32

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

network service trend determined” ........................................................................................ 33

8. “determining a capacity to provide a network service at a given time” ............................ 34

C. Terms of U.S. Patent No. 8,274,902 (Case No. 6:20-cv-00465-ADA)................................. 35

1. “network that branches, downstream of the collection point”........................................... 35

2. “estimating a packet loss rate” and “an estimate of a packet loss rate”............................. 37

3. “packet loss rate” ............................................................................................................... 39

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

core network extending from the collection point to a plurality of [base / 

mobile] stations” .................................................................................................................... 40

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 3 of 49
iii

TABLE OF AUTHORITIES

Page(s)

Cases

Allen Eng’g Corp. v. Bartell Indus.,

299 F.3d 1336 (Fed. Cir. 2002)....................................................................................................... 17

Amazon.com, Inc. v. Barnesandnoble.com, Inc.,

239 F.3d 1343 (Fed. Cir. 2001)....................................................................................................... 24

Applied Signal Tech., Inc. v. Emerging Markets Comm’cns, Inc., 

No. C 09–2180, 2011 WL 500786 (N.D. Cal. Feb. 9, 2011).......................................................... 41

CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG,

224 F.3d 1308 (Fed. Cir. 2000)....................................................................................................... 29

Chiron Corp. v. Genentech, Inc.,

266 F. Supp. 2d 1172 (E.D. Cal. 2002)........................................................................................... 39

Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,

880 F.3d 1356 (Fed. Cir. 2018)....................................................................................................... 15

In re Corkill,

771 F.2d 1496 (Fed. Cir. 1985)................................................................................................. 18, 19

Engel Indus., Inc. v. Lockformer Co.,

96 F.3d 1398 (Fed. Cir. 1996)......................................................................................................... 29

Eon Corp. IP Holdings v. Silver Springs Networks,

815 F.3d 1314 (Fed. Cir. 2016)....................................................................................................... 40

Faroudja Labs., Inc. v. Dwin Elecs., Inc.,

76 F. Supp. 2d 999 (N.D. Cal. 1999).............................................................................................. 39

Fenner Invs., Inc. v. Cellco P’ship,

778 F.3d 1320 (Fed. Cir. 2015)....................................................................................................... 33

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

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

Fisher-Rosemount Sys., Inc. v. Invensys Sys., Inc.,

No. A–13–CA–587–SS, 2015 WL 1275910 (W.D. Tex.)................................................................ 7

General Am. Trans. Corp. v. Cryo-Trans, Inc.,

93 F.3d 766 (Fed. Cir. 1996)........................................................................................................... 10

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 4 of 49
iv

Greenthread, LLC v. Samsung Elecs. Co., Ltd.,

2020 WL 1911200 (E.D. Tex. Apr. 20, 2020)................................................................................ 43

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

514 F.3d 1244 (Fed. Cir. 2008)....................................................................................................... 20

Harvard Sav. Bank v. Sec. Nat’l Ins. Co.,

No. 15 CV 11674, 2017 WL 2560900 (N.D. Ill. June 12, 2017).................................................... 35

Helmsderfer v. Bobrick Washroom Equip., Inc.,

527 F.3d 1379 (Fed. Cir. 2008)....................................................................................................... 29

Honeywell Int’l, Inc. v. Int’l Trade Comm’n,

341 F.3d 1332 (Fed. Cir. 2003)....................................................................................................... 18

Howmedica Osteonics Corp. v. Zimmer, Inc.,

822 F.3d 1312 (Fed. Cir. 2016)................................................................................................. 11, 12

Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,

381 F.3d 1111 (Fed. Cir. 2004)......................................................................................................... 4

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

No. 16-cv-00791-RS, 2017 WL 1367975 (N.D. Cal. Apr. 10, 2017)................................. 37, 38, 39

Intellectual Ventures II, LLC v. AT&T Corp.,

No. 1:13–CV–116–LY, 2015 WL 4138590 (W.D. Tex. July 8, 2015) .......................................... 16

Invensys Sys., Inc. v. Emerson Elec. Co.,

No. 6:12–cv–799, 2014 WL 3976371 (E.D. Tex. Aug. 6, 2014) ................................................... 43

IPXL Holdings, LLC v. Amazon.com, Inc.,

430 F.3d 1377 (Fed Cir. 2005).................................................................................................passim

Koninklijke Philips N.V. v. Zoll Lifecor Corp.,

No. 2:12-cv-1369, 2016 WL 6917267 (W.D. Pa. Feb. 3, 2016)....................................................... 9

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

No. 2:12–cv–826–MHS–RSP, 2014 WL 3402125 (E.D. Tex. July 11, 2014)............. 21, 22, 23, 37

MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics, LLC,

No. 1:18-cv-01530-JDW, 2020 WL 5994181 (D. Del. Oct. 9, 2020) .......................................... 7, 8

Media Rights Techs., Inc. v. Capital One Fin. Corp.,

800 F.3d 1366 (Fed. Cir. 2015)................................................................................................. 23, 37

Morvil Tech., LLC v. Medtronic Ablation Frontiers, LLC,

No. 10–CV–2088 BEN (BGS), 2012 WL 3277272 (S.D. Cal. Aug. 10, 2012) ............................. 39

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 5 of 49
v

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

572 U.S. 898 (2014).................................................................................................................passim

NCS Multistage Inc. v. Nine Energy Serv.,

6:20-CV-00277-ADA, Dkt. 56 (W.D. Tex. Jan. 14, 2021) ............................................................ 39

Personalized User Model LLP v. Google Inc.,

No. 09–525–LPS, 2012 WL 295048 (D. Del. Jan. 25, 2012)......................................................... 41

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)......................................................................................................... 5

Prism Techs. LLC v. Verisign, Inc.,

512 F. Supp. 2d 174 (D. Del. 2007)................................................................................................ 39

Red Arrow Prods. Co. v. Resource Transforms Int’l, Ltd.,

No. SA–03–CA–751–H, 2008 WL 5088648 (W.D. Tex. Oct. 20, 2008)....................................... 10

RideApp, Inc. v. Lyft, Inc.,

No. 18-cv-07152-JST, 2019 WL 7834175 (N.D. Cal. Oct. 16, 2019)............................................ 17

Sensor Elec. Tech., Inc. v. Bolb, Inc.,

No. 18-CV-05194-LHK, 2019 WL 4645338 (N.D. Cal. Sept. 24, 2019)....................................... 15

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

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

Tate Access Floors, Inc. v. Interface Architectural Res., Inc.,

279 F.3d 1357 (Fed. Cir. 2002)....................................................................................................... 24

Taylor v. Matal,

No. 1:15-cv-1607, 2017 WL 3446532 (E.D. Va. Aug. 10, 2017) .................................................. 20

Teva Pharms. USA, Inc. v. Sandoz, Inc.,

789 F.3d 1335 (Fed. Cir. 2015)................................................................................................. 17, 37

TNS Media Research, LLC v. Tivo Research & Analytics, Inc.,

629 Fed. Appx. 916 (Fed. Cir. 2015).............................................................................................. 22

dunnhumby USA, LLC v. emnos USA Corp.

No. 13–cv–0399, 2015 WL 1542365 (N.D. Ill. Apr. 1, 2015) ....................................................... 21

V-Formation, Inc. v. Benetton Grp. SpA,

401 F.3d 1307 (Fed. Cir. 2005)....................................................................................................... 42

Wang Labs., Inc. v. America Online, Inc.,

197 F.3d 1377 (Fed. Cir. 1999)....................................................................................................... 10

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 6 of 49
vi

Statutes

35 U.S.C.A. § 101................................................................................................................................. 18

35 U.S.C. § 112......................................................................................................................... 17, 18, 35

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 7 of 49
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Microsoft submits this brief in response to WSOU’s Opening Claim Construction Brief 

(Dkt. 49) addressing terms of U.S. Patent Nos. 7,106,702 (“the ’702 patent”), 7,366,160 (“the 

’160 patent”), and 8,274,902 (“the ’902 patent”).

I. BACKGROUND

A. The ’702 Patent

The ’702 patent is directed to ensuring the availability of authentication, authorization 

and accounting (AAA) functionality in a wireless network. AAA is a framework used to, among 

other things, control network access, enforce security policies, and audit network usage. The 

patent contends that if only one “node” on a network is capable of performing AAA functionality 

and/or is the sole location for the AAA user database, “the destruction of that node or its 

separation from the network would undesirably disrupt the entire network.” Id., 1:33-35. The 

patent asserts that duplicating AAA functionality across more than one node can prevent network 

disruptions because “back-ups may take over when functions and/or resources are lost due to 

failure or otherwise.” Id., 1:25-26. However, the patent states that duplicating this functionality 

across every node on the network would be unduly burdensome, because changes to the database 

of one node must be broadcast to the database of every other node. Id., 1:45-50.

With a “Detailed Description Of The Invention” that runs only two columns, the 

specification offers limited information on how to solve these purported problems. What is 

disclosed is the use of a plurality of network “nodes,” each having its own user database and 

capable of independently performing AAA functions. Just two of these nodes (the “active” 

nodes) are used to perform AAA functions at any given time. Id., 3:13-29. These two active 

nodes keep their databases synchronized by communicating relevant changes to each other and 

also monitor one another “to ensure they are both active and/or connected to the network.” Id., 

3:40-55. When one of the nodes detects that the other is offline, “the remaining active node 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 8 of 49
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locates and/or selects another node for activation.” Id., 3:65-4:1. Once the active node has 

selected such a node, the active node synchronizes its user database with the selected node’s 

database and then activates the AAA functions of the selected node, thereby making that node an 

active node as well. Id., 4:33-37. 

B. The ’160 Patent

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

will fail. The patent explains that users and network service providers enter into contracts, 

referred to as service level agreements (SLAs), that specify an acceptable failure level for a 

service, such that if that level is not met the service provider may be required to pay the user. 

’160 Patent, 1:20-23, 5:20-24. While the patent acknowledges that the prior art could measure 

network attributes (e.g., bandwidth) to determine a trend, id. at 1:10-13, the patent asserts that 

“[a]t present there are no tools for forecasting accurately the failure of a network service.” Id., 

1:24-25. The patent proposes to address this purported problem through a mechanism that 

determines “a trend” of a measured “service indicator,” where this “trend can show whether the 

indicator is likely to cross a defined threshold or even determine when it will cross the 

threshold.” Id., 2:15-19.

Specifically, the ’160 patent describes monitoring and measuring multiple “parameters of 

a network,” such as “packet losses; time-delays between packets; jitter or stability; bandwidth; 

bandwidth stability; and the directionality of the communication.” Id., 2:67-3:3. The patent 

suggests that these “parameters of a network” are network-health metrics specified in a Service 

Level Agreement and extrapolated or calculated from directly-measured network-health metrics

– e.g.,“packet loss” is a parameter of a network, determined from directly-measured networkhealth metrics such as the count of packets in and packets out. Multiple “parameters of a 

network” determine the “value of a service indicator” – e.g., packet loss and jitter determine 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 9 of 49
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whether voice call quality is “good.” The patent further explains that by extrapolating a “trend” 

of the “service indicator” a prediction can be made as to when this “service indicator” might 

exceed some defined threshold. This concept of prediction is central to the claimed invention; in 

the Nov. 19, 2007 Response to Final Rejection, the applicant explained that the amended claim is 

limited to “forecasting” the “time remaining for a threshold crossing a level of service,” or “a 

level of service after a predetermined time.”

C. The ’902 Patent

The ’902 patent is directed to estimating the performance of links (e.g., connections 

between servers, routers, base stations) on the “inside” of a network based on measurements 

taken from nodes on the “end” of that network (e.g., mobile phones). In particular, the ’902 

patent is focused on a mechanism whereby a single “point” (e.g., a computer) on the network 

measures the “packet loss rate” of end points and uses those measurements to estimate the packet 

loss rates of network connections or “links” on the inside of the network. Computers in packetswitched networks communicate by exchanging “packets” of information, similar to how letters 

are sent through the postal system. The ’902 patent notes that the “performance of data networks 

is sensitive to the loss of packets” and that to “optimize the performance of a network, the 

operator needs to have information about packet losses on the network.” ’902 patent, 1:12-15. 

The patent suggests that a “[p]articular advantage would be gained by monitoring most or all of 

the links between” the components of a cellular network, id., 1:34-38, but contends that 

performing such monitoring using “conventional methods” would “require a monitoring device 

to be deployed on each of the links that are to be monitored” which the patent contends is not 

feasible. Id., 1:39-44. 

The ’902 patent claims to addresses this purported problem with a system that estimates 

packet loss rates on interior network links by collecting end-to-end packet loss data at a single 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 10 of 49
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point, id., 4:36-45, and using that data to estimate the packet loss rates on individual links 

“downstream” of the collection point. Id., 4:49-56. While the claims of the patent recite the 

general process of “collecting data” and “estimating a packet loss rate,” the specification focuses 

on a particular embodiment of the estimation step. Specifically, the only disclosures provided in 

the specification detail implementing the ’902 patent’s method on a tree network using one of 

two referenced algorithms. Id., 2:66-3:3; 4:57-5:2; FIGs. 3, 4, 6. The tree networks discussed in 

the ’902 patent are a well-known way to structure a network and are distinguished by having a 

hierarchical topology, with each node in the network having an arbitrary number of child nodes.

II. LEGAL STANDARDS

A “court construing a patent claim seeks to accord a claim the meaning it would have to a 

person of ordinary skill in the art at the time of the invention.” Innova/Pure Water, Inc. v. Safari 

Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). In construing the claim, “the 

court looks to those sources available to the public that show what a person of skill in the art 

would have understood disputed claim language to mean. Those sources include the words of 

the claims themselves, the remainder of the specification, the prosecution history, and extrinsic 

evidence concerning relevant scientific principles, the meaning of technical terms, and the state 

of the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (internal quotation 

marks and citation omitted). Dictionary definitions “are often useful to assist in understanding 

the commonly understood meaning of words.” Id. at 1322. However, it is not proper to adopt “a 

dictionary definition entirely divorced from the context of the written description.” Id. at 1321. 

The claims “must be read in view of the specification, of which they are a part.” Phillips, 

415 F.3d at 1315 (citation omitted). “The construction that stays true to the claim language and 

most naturally aligns with the patent’s description of the invention will be, in the end, the correct 

construction.” Id. at 1316 (citation omitted).

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 11 of 49
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“[A] patent is invalid for indefiniteness if its claims, read in light of the specification 

delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those 

skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 

898, 901 (2014). “A claim is considered indefinite if it does not reasonably apprise those skilled in 

the art of its scope.” IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1383–84 (Fed Cir. 

2005). 

III. UNCONTESTED TERMS IMPROPERLY BRIEFED BY WSOU

1. “AAA function capable”, “equipped to carry out authentication, 

authorization and accounting (AAA) functions for the network”, and 

“equipped to conduct authentication, authorization and accounting 

(AAA) functions for the network”

2. “the AAA functions” 

WSOU’s Opening Brief incorrectly characterizes these terms as “disputed” (Dkt. 49 at 

2),1 and repeatedly argues against constructions that Microsoft has expressly stated it is not 

advancing. Id. at 2-4, 9. During the parties’ discussions regarding Markman briefing, Microsoft 

informed WSOU counsel it did not believe these terms required construction, and proposed 

excluding them from the parties’ briefing. Ex. 1 (12/29/2020 Oliver Eml.). WSOU proceeded to 

rely on Microsoft’s representation to justify a five-page reduction in the parties’ agreed-upon 

page limits for their respective briefs. Ex. 2 (12/30/2020 Siegmund Eml.). Microsoft agreed to 

this reduction based on the understanding that these terms would not be submitted to the Court 

for claim construction. The Court should disregard WSOU’s briefing as to these two terms and 

need not construe these terms.

 1 Unless otherwise noted, citations herein are to the docket in Case No. 6:20-cv-00454.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 12 of 49
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IV. DISPUTED TERMS FOR CONSTRUCTION

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

1. “active nodes”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

nodes that carry out the AAA functions for the 

network by employing their respective user 

databases 

Plain and ordinary meaning, where the “active” 

qualifier refers to a state of the node’s AAA 

functionality.

The parties agree that “active nodes” are nodes “in an active state of AAA functionality.” 

The parties, however, dispute what being “in an active state of AAA functionality” entails. 

Consistent with the specification and the claim language, Microsoft’s construction requires 

active nodes to (1) actually carry out AAA functions, and (2) employ their respective user 

databases to do so. In contrast, WSOU contends that a node can be an “active node” without 

having a user database, despite the fact that the patent expressly requires the use of a user 

database to conduct AAA functions.

Microsoft’s construction of “active nodes” comes directly from the specification, which 

discloses “active nodes that in fact carry out the AAA functions for the network by employing 

their respective user database.” ’702 patent, 2:8-11. Accordingly, WSOU’s contention that 

Microsoft’s construction somehow represents a “departure from the specification lexicography” 

is plainly incorrect. See Dkt. 49 at 5. WSOU’s appeal to lexicography is particularly puzzling in 

light of the fact that, as WSOU notes within its own Opening Brief, “[l]exicography only arises 

when the patent drafter ‘clearly, deliberately, and precisely define[s] the term.’” FisherRosemount Sys., Inc. v. Invensys Sys., Inc., No. A–13–CA–587–SS, 2015 WL 1275910, at *11 

(W.D. Tex.); see also Dkt. 49 at 17–18. “Clear definitions are usually set off by quotation marks 

or marked by the word ‘is.’” Rosemount, 2015 WL 1275910, at *11 (citing Sinorghem Co., 

Shangdon v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007)). The patent drafter did 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 13 of 49
7

not provide an express definition for “active nodes” here, so any appeals to lexicography are 

inapposite. 

Only Microsoft’s construction reflects the requirement of the ’702 patent claims that 

“AAA functionality” involves actually carrying out AAA functions using the nodes’ respective 

user databases. This requirement applies to all the patent’s claims, as confirmed by the 

description of every embodiment of the patent, as well as the ’702 patent’s Abstract. See id., 

Abstract (“The active nodes use their respective databases to conduct the AAA functions for the 

network”); 2:8-11 (“The plurality of nodes includes a subset thereof which are active nodes that 

in fact carry out the AAA functions for the network by employing their respective user 

databases.”); 2:22-24 (“The method includes: employing a subset of the plurality of nodes as 

active nodes, the active nodes using their respective user databases to conduct the AAA 

functions for the network”); see also id., Claim 1 (separately reciting “a plurality of nodes which 

are AAA function capable” and “selecting two of the plurality of nodes to be active nodes”).

WSOU relies on excerpts of the specification that support, rather than undercut, 

Microsoft’s construction. For example, WSOU notes the specification’s disclosure that 

“preferably, all of the nodes are initially provisioned with duplicate copies of the user database 

employed to carry out AAA functions.” Dkt. 49 at 5 (quoting ’702 patent, 3:29-31). WSOU 

then argues that under Microsoft’s definition, “all nodes of this embodiment would qualify as 

‘active nodes’—regardless of their present state of AAA functionality. . . .” But this crabbed 

reading incorrectly applies Microsoft’s construction; simply being provisioned with a copy of the 

database that is employed to carry out AAA functions does not make a node “active.” Rather, 

under Microsoft’s construction, regardless of which nodes have a user database, only those nodes 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 14 of 49
8

that in fact carry out AAA functions (i.e., those in an active state of AAA functionality) using 

such a database qualify as “active nodes.”

Moreover, only Microsoft’s construction captures all embodiments of the claimed 

invention because the ’702 patent discloses that the active nodes carry out the AAA functions in 

its descriptions of every embodiment, as shown above. WSOU attempts to distract from the 

straightforward application of this description by pointing to the ’702 patent’s use of the 

conjunction “and/or” to suggest that in an alternative embodiment, an active node’s server 

carries out AAA functionality for that nodes. See Dkt. 49 at 5-6. Assuming arguendo that the 

’702 patent discloses an embodiment in which a server carries out the AAA functions, 

Microsoft’s proposed definition would not exclude it. The patent drafter’s initial description of 

an “AAA server” confirms that the use of an AAA server falls within the scope of the active 

node’s own functions. See ’702 patent, 3:7-9 (“Each node is capable of acting as the AAA 

functional entity for the network, e.g., by including and/or supporting a AAA server”) (emphasis 

added). That is, if an AAA server included on or supported by a node were to conduct AAA 

functions, the patent drafter would understand the process to be carried out by the active node, 

and therefore within the scope of Microsoft’s construction.

Finally, the doctrine of claim differentiation does not proscribe the requirement that 

active nodes must employ a “respective user database.” In support of this specious argument, 

WSOU notes that independent claim 1 does not expressly recite a “user database” element, while 

dependent claim 8 does. See Dkt. 49 at 6–7. But claim 8 specifically requires “provisioning 

each of the plurality of nodes with a duplicate copy of a user database,” which is not the same as 

provisioning a node with a user database. Accordingly, claim differentiation does not apply 

here. See Koninklijke Philips N.V. v. Zoll Lifecor Corp., No. 2:12-cv-1369, 2016 WL 6917267, 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 15 of 49
9

at *51 (W.D. Pa. Feb. 3, 2016) (“[T]he doctrine of claim differentiation only applies if the 

dependent (or other) claim had ‘exactly the same scope’”) (quoting Laitram Corp. v. Rexnord, 

Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)).

The requirement of a “respective user database” is consistent with the specification, 

which, as excerpted above, repeatedly explains that each node is “initially provisioned with a 

user database,” id., 2:5–6, and that active nodes carry out AAA functions using “their respective 

user database,” id., 2:6–11; 2:22–25. Moreover, WSOU cannot credibly argue that this is a 

requirement of only certain embodiments because the ’702 patent’s Abstract, expressly provides 

that active nodes have their own respective user databases. See id., Abstract (“Each of the nodes 

has a user database . . . . The active nodes use their respective user databases to conduct the 

AAA functions for the network.”); see also Red Arrow Prods. Co. v. Resource Transforms Int’l, 

Ltd., No. SA–03–CA–751–H, 2008 WL 5088648, at *1 (W.D. Tex. Oct. 20, 2008) (quoting Hill–

Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1 (Fed. Cir. 2000) (“We have 

frequently looked to the abstract to determine the scope of the invention”)). 

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

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

another to detect if an active node becomes disconnected from the 

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

disconnected from the network”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

two active nodes monitoring one another to detect if 

one becomes disconnected from the network 

Plain and ordinary meaning

The parties dispute whether the “monitoring” phrases should be limited to the 

decentralized monitoring process described in the ’702 patent, or whether “monitoring” can refer 

broadly to any arbitrary monitoring logic, performed by some undisclosed entity. The broader 

reading of these phrases advanced by WSOU would introduce written description problems, as 

the specification sets forth only one method of “monitoring” and one of ordinary skill reading the 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 16 of 49
10

specification would not have understood the inventors to be in possession of other monitoring 

methods. 

Where, as here, the specification describes only one monitoring protocol, the Court 

should limit the “monitoring” phrases to that protocol. See, e.g., Wang Labs., Inc. v. America 

Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999) (because the “only embodiment described in 

the ’669 patent specification is the character-based protocol, [ ] the claims were correctly 

interpreted as limited thereto”); General Am. Trans. Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770, 

(Fed. Cir. 1996) (where the teaching in the specification was “not just the preferred embodiment 

of the invention [but, rather,] the only one described,” the district court erred by interpreting the 

claims as encompassing matter beyond this sole embodiment). In two instances, the 

specification uses the passive phrase “[t]he active nodes are monitored” without identifying what 

entity performs the monitoring. But every time that the specification actually describes the 

monitoring process, it explains that “monitoring,” in the context of the ’702 patent, refers to “two 

active nodes monitoring one another to detect if one becomes disconnected from the network.” 

See ’702 patent, 2:11–13 (“The active nodes monitor one another to detect if an active node 

becomes disconnected from the network.”); 3:40–41 (“two active nodes carry out the AAA 

functions and monitor one another”); 3:56–61 (“At decision step 24, it is determined if one of 

the active nodes is disconnected from or otherwise not available to the network 10. That is to 

say, if one of the active nodes detects that the other is off-line, then the process continues on to 

step 26, otherwise if both detect that the other is still on-line, then the process loops back to step 

22.”); FIG. 2 (“each of the two active nodes monitors the other”). 

Ignoring the clear boundaries of the specification, WSOU again attempts to invoke the 

doctrine of claim differentiation, arguing that because claim 3 of the ’702 patent recites that 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 17 of 49
11

“each active node carries out the monitoring of the other[,]” claim 1 should not be read to include 

such a requirement. See Dkt. 49 at 7. However, “claim differentiation is a rebuttable 

presumption that may be overcome by a contrary construction dictated by the written description 

or prosecution history.” Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1323 (Fed. 

Cir. 2016) (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 

(Fed. Cir. 2011)). Here, the presumption has been rebutted. “The written description reveals 

only instances in which the claim language is satisfied” by two active nodes monitoring one 

another. Howmedica, 822 F.3d at 1323. A patent drafter cannot draft claims that go beyond 

what is taught in the specification, and the Court should not permit WSOU to broaden the scope 

of its independent claims based on clever drafting of the dependent claims. See id. (“Although a 

useful tool, claim differentiation does not require that ‘the dependent claim tail . . . wag the 

independent claim dog’ in this case.”) (quoting N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 

F.3d 1571, 1577 (Fed. Cir. 1993)).

Microsoft’s construction also encompasses every possible embodiment of independent 

claim 11. WSOU’s purported “additional basis to reject Microsoft’s construction,” which it 

characterizes as a separate “claim differentiation” argument, is a mischaracterization of 

Microsoft’s position. See Dkt. 49 at 8. Specifically, WSOU incorrectly suggests that 

Microsoft’s construction covers only embodiments where “precisely” two, and no more than 

two, active nodes are monitoring one another to detect if an active node becomes disconnected 

from the network. But nothing in Microsoft’s construction dictates that only two nodes can be 

active at the same time (although the claims themselves never require more than two nodes be 

active). Under Microsoft’s construction, this particular limitation is met as long as a pair of 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 18 of 49
12

active nodes are monitoring one another, regardless of the total number of active nodes in the 

network. 

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

each of said nodes maintaining its own user database Plain and ordinary meaning

The parties dispute whether the claimed “nodes” of the ’702 patent each have their own 

user database. The specification and claim language clearly establish that there is an exclusive, 

one-to-one relationship between node and user database such that each claimed node has its own 

database. Indeed, in the Abstract, and consistently throughout the specification, the ’702 patent 

frames the invention as requiring this one-to-one relationship. See, e.g., ’702 patent, Abstract 

(“The active nodes use their respective user databases to conduct the AAA functions for the 

network”); 2:3–11 (“In accordance with another aspect of the present invention, a wireless 

communication network includes a plurality of nodes, each node being initially provisioned with 

a user database and equipped to carry out authentication, authorization and accounting (AAA) 

functions for the network by employing their respective user database. The plurality of nodes 

includes a subset thereof which are active nodes that in fact carry out the AAA functions for the 

network by employing their respective user databases.”); 2:22-24 (The method includes: 

employing a subset of the plurality of nodes as active nodes, the active nodes using their 

respective user databases to conduct the AAA functions for the network”); 3:7-10 (“Each node

is also capable of acting as the AAA functional entity for the network, e.g., by including and/or 

Supporting a AAA server, and is capable of maintaining a user database associated with the 

AAA functions.”); 3:50-54 (“To maintain synchronization, any changes to the user database on 

one active node are logged, and the logged changes are communicated to the other active node so 

that its user database is similarly updated.”); 4:33-38 (“At step 28, once the new node has been 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 19 of 49
13

selected, its user database is updated. That is to say, all the logged changes from the remaining 

active node’s user database are communicated to the new node so that its user database can be 

updated.”) (emphases added).

The ’702 patent’s consistent use of exclusive, possessive language (“its,” “their 

respective,” etc.) linking the active nodes to the user databases leaves no doubt regarding the 

one-to-one relationship between those elements. The claim language follows the same pattern. 

See, e.g., id., Claim 8 (“each of said user databases being employed by its respective node”); 

Claim 11 (repeatedly reciting “their [the active nodes’] respective user databases”); Claim 13 

(“the active node logs changes to its user database”); Claim 18 (“said active nodes using their 

respective user databases”) (emphases added). Accordingly, WSOU’s assertion that “[t]he 

intrinsic evidence contains no unambiguous disclaimer of the possibility for two nodes using the 

same user database” flies in the face of a plain reading of the specification and the claims.2

 

The disputed term phrase’s inclusion of the word “having,” as opposed to “having access 

to” or “using,” further supports the concept that each node “has” its own user database. 

Microsoft agrees with WSOU that “the patentee’s word choice here of ‘having’ should be given 

meaningful effect[,]” especially in light of the fact that the patent uses the term “using” 

elsewhere. Dkt. 49 at 9.

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

 2 Microsoft proposed the word “maintaining” within its construction in order to establish that the 

term “having” implies something distinct from “having access to” or “using,” and because the 

specification explains that “[e]ach node . . . is capable of maintaining a user database associated 

with the AAA functions[,] ’702 patent, 3:7-10. Microsoft can agree to a construction of “each of 

said nodes having its own user database,” as long as any such construction incorporates an 

exclusive, one-to-one relationship between node and user database. 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 20 of 49
14

In the context of the ’702 patent, a Skilled Artisan would not be able to reasonably 

understand what is meant by “activating the AAA functions of active nodes,” because, even 

under WSOU’s own definition, “active nodes” are already “in an active state of AAA 

functionality.” See Dkt. 49 at 4; see also ’702 patent, 3:19–20 (“active nodes have their AAA 

functions and/or servers activated or turned on”); 3:22–25 (“Herein, the terms ‘active’ and ‘nonactive’ when used in the context of ‘active node’ and ‘non-active node’ refers to the state of the 

node’s AAA functionality (i.e., its AAA server is active or non-active, respectively).” 

Accordingly, under the ’702 patent specification’s description of “active nodes” (which WSOU 

characterizes as controlling lexicography), “activating” the AAA functions of an active node is 

impossible; only a non-active node can be “activated.” 

WSOU argues that “the use of the article ‘the’ in the phrase ‘the active nodes’ is simply 

an antecedent reference to those nodes selected ‘to be active nodes’ in step (a)” of independent 

claim 1. Dkt. 49 at 9–10. This argument fails for at least two reasons. First, the patent drafter’s 

decision to use two distinct phrases to refer to “selecting . . . nodes . . . to be active nodes” and 

“the active nodes” must be given meaning, and the former phrase cannot be read as providing an 

antecedent basis for the latter. See, e.g., Sensor Elec. Tech., Inc. v. Bolb, Inc., No. 18-CV-05194-

LHK, 2019 WL 4645338, at *31 (N.D. Cal. Sept. 24, 2019) (“For a claim term to have 

antecedent basis support, an indefinite article (for instance, ‘a’ or ‘an’) must precede a claim 

term the first time the claim term is used in the claims. Subsequent references in the claims to 

the claim term must be preceded by a definite article (for instance, ‘the’ or ‘said’).”) (citing 

Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 

2008)). 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 21 of 49
15

Second, where the patent drafter intended to describe the process of selecting an inactive 

node and then activating it, the patent drafter knew how to do so using a proper antecedent 

reference. Indeed, the patent drafter used such language later in the very same claim. Steps (d) 

and (e) of claim 1 each use clear language to describe this process: 

(d) if one of the active nodes gets disconnected from the network; 

selecting another of the plurality of nodes to become an active 

node;

(e) activating the AAA functions of the node selected in step 

(d)[.]”

’702 patent, Claim 1 (emphasis added). Because the patentee specifically chose to use language 

other than “the active nodes” to describe nodes that “will become” active nodes in steps (d) and 

(e), the phrase “activating the AAA functions of the active nodes” recited in step (b) cannot be 

given the meaning that WSOU advances. See, e.g., Core Wireless Licensing S.A.R.L. v. LG 

Elecs., Inc., 880 F.3d 1356, 1366 (Fed. Cir. 2018) (“If the patentee intended ‘unlaunched’ to 

mean ‘not running,’ it knew how to express as much.”); Intellectual Ventures II, LLC v. AT&T 

Corp., No. 1:13–CV–116–LY, 2015 WL 4138590, at *23 (W.D. Tex. July 8, 2015) (“[C]learly, 

the patentee knew how to describe networks operated by a Telco in words that were clear. 

References in the specification, using different combinations of words, to such arrangement are 

numerous. Thus, the patentee’s choice of language must be given weight.”).

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

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

the active node which got disconnected from the network is maximized”, 

and “node selected in step (d) is chosen to maximize a sum of a 

geographic distance between the active nodes and a geographic distance 

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

disconnected from the network”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 22 of 49
16

A Skilled Artisan would not be able to reasonably determine where the “geographic 

distance” between two nodes is “maximized” within the context of the ’702 patent for several 

reasons. First, in the context of a wireless network, as in many other contexts, there are many 

methods to calculate “geographic distance” between two points. For example, as one court 

explained in agreeing with a party’s expert and the Patent Trial and Appeal Board (“PTAB”): 

[T]here are many methods to calculate ‘distance’ between sets of 

coordinates: the system could simply determine a straight-line 

distance (‘as the crow flies’) between two points; the system could 

determine an actual distance to travel based on the layout of the 

underlying street system (such as the so-called Manhattan 

distance); or the system could analyze traffic patterns and use an 

estimated time of travel between the points as an analogue for 

distance based on a least-traffic path, least stop lights path, highest 

speed limit path or many other similar variations.)

RideApp, Inc. v. Lyft, Inc., No. 18-cv-07152-JST, 2019 WL 7834175, at *11 (N.D. Cal. Oct. 16, 

2019); see also Fife & Drum, Inc. v. DelBello Enters., LLC, No. 17-3676, 2019 WL 5692124, at 

*2 n.6 (D.N.J. Nov. 4, 2019) (noting, where parties disagreed on geographic distance between 

two points, that “[t]here are many ways to measure this distance—by GPS, crow and Google 

maps”). 

Here, the specification provides no indication of how to measure “geographic distance” 

between two nodes, leaving the Skilled Artisan to speculate as to whether the phrase refers to the 

length of cables, distance as the crow flies, or some other method of measurement. WSOU 

offers no counter to this point, and instead states in conclusory fashion that “a person of ordinary 

skill in the art would be able to readily determine which pair, if selected as active nodes, would 

result in a maximum geographic distance therebetween[.]” Dkt. 49 at 10. WSOU further argues 

that Microsoft “has failed to explain how any of the purported ‘different methods of calculating’ 

would produce different results here.” Id. This argument misses the point. In order to be valid 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 23 of 49
17

under § 112, the claim “must set forth what the applicant regards as his invention[.]” Allen 

Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1348 (Fed. Cir. 2002) (internal quotation marks 

and citation omitted). It is not up to the person of ordinary skill in the art to determine what the 

appropriate form of measurement is, or whether different measurement methods would produce 

the same result. Indeed, the Federal Circuit has held that when a claim’s scope (and thus 

infringement) turns on selecting one of multiple tests or processes, that claim is indefinite. See 

Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015) (concluding that 

patent was indefinite because it failed to teach which of three methods of measuring ‘molecular 

weight’ should be used).

Second, neither the specification nor any of the claims that include “geographic distance” 

limitations specify how to determine when a geographic distance is “maximized.” The 

specification states “[p]referably, the newly selected node is also as geographically distant as 

possible from the active node which was just disconnect[ed] from or otherwise made unavailable 

to the network.” ’702 patent, 4:13–16. A Skilled Artisan would not reasonably be able to 

determine whether that requires creating a system that maximizes geographical distance to the 

fullest extent possible, or whether (and how much) other factors can be considered when 

determining the maximum “geographic distance” of the nodes (e.g., the latency of 

communications with the new, distant active node). WSOU does not (and cannot) point to 

anything in the ’702 patent that provides any clarity on this point, and instead argues that 

“Microsoft’s objection appears to go to alleged inoperativeness under 35 U.S.C.A. § 101 or lack 

of enablement under 35 U.S.C.A. § 112, ¶ 1[.]” Dkt. 49 at 11. But inoperativeness and 

indefiniteness are not mutually exclusive—a claim can fail from both of these defects 

simultaneously. See, e.g., In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (“Claims which 

include a substantial measure of inoperatives . . . are fairly rejected under 35 U.S.C. § 112.”).

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 24 of 49
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Third, a Skilled Artisan would not be able to select two active nodes such that a 

geographic distance between them is “maximized” because the geographic distance between any 

two nodes is fixed, and therefore cannot be “maximized” or “minimized.” Again, WSOU offers 

no substantive response to this defect, instead repeating its assertion that the inability to 

“maximize” geographic distance between two nodes goes to inoperability rather than 

indefiniteness. Dkt. 49 at 12. But the fact that the ’702 patent does not reasonably apprise a 

Skilled Artisan as to the meaning of “maximized” within the context of the ’702 patent renders 

the claims containing these terms indefinite, not merely inoperable. See Nautilus, 572 U.S. at 

901; IPXL, 430 F.3d at 1383–84. 

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

updating the same to reflect changes in information contained therein” 

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

thereby updating the same to reflect changes in information contained 

therein”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

The “logging” term phrases are indefinite because they contain multiple ambiguities and 

because the ’702 patent provides no clear basis to choose between equally reasonable competing 

interpretations. 

First, neither the claims nor the specification shed light on what is meant by the phrase 

“changes in information contained therein.” The use of this phrase implies the existence of 

changes that have already been made to information contained in a system, which by definition 

must have been recorded somewhere in the system. Accordingly, a Skilled Artisan would not be 

able to ascertain what it means to “log” those changes to “the same” system, in order to 

somehow reflect an update that has already occurred. WSOU does not address the lack of any 

discussion of the logging process in the specification, and instead attacks a strawman, suggesting 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 25 of 49
19

that Microsoft objects generally to the use of the word “logging.” See Dkt. 49 at 13. But 

Microsoft does not take issue with the use of the word “logging” alone—rather, the claims that 

recite logging are indefinite because it is not possible for a Skilled Artisan to understand what 

“logging” entails in combination with the other elements of this limitation.3

Second, one of ordinary skill would not be able to determine which “changes” are to be 

logged. The phrase “logging changes to the user database” provides no basis for determining 

whether this language requires logging when information contained in a user database changes or 

logging changes that are made to a node (or the network) in a user database.

Third, the phrase “updating the same” introduces even more ambiguity into the claims 

because it lacks an antecedent basis. WSOU attempts to dismiss this argument as “conclusory,”

claiming that “a person of ordinary skill in the art would readily recognize that ‘updating the 

same’ refers back to ‘the user databases’ term.” Dkt. 49 at 13–14. But WSOU supports this 

argument by improperly importing language that is explicitly recited in claim 14 (“so that their 

user databases are similarly updated”) into every claim that uses the phrase “updating the same,” 

even though the other claims do not include the same explicit recitation. See id. at 14. It is 

equally plausible that “the same” could refer to “active nodes,” which are recited in claims 9 and 

18, and which are the entities that ostensibly perform the “logging” step in claim 13 (“wherein 

each of the active nodes logs changes to the user database”). Moreover, “the same” could also 

refer to the actual “log” of changes, or wherever the log of changes is stored, which is not 

specified by the ’702 patent. 

 3 WSOU also repeats its argument that the patent’s failure to delineate what is meant by 

“logging” goes to inoperativeness or lack of enablement, rather than definiteness. This argument 

fails for the same reasons described above. See, e.g., Corkill, 771 F.2d at 1501.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 26 of 49
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Where, as here, there are multiple plausible meanings of the terms and the patent does not 

provide guidance for choosing between them, the claims reciting those terms are indefinite. See, 

e.g., Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“The 

fact that [the patent holder] can articulate a definition supported by the specification ... does not 

end the inquiry. ... [T]he claim is still indefinite if a person of ordinary skill in the art cannot 

translate the definition into meaningfully precise claim scope.”); dunnhumby USA, LLC v. emnos 

USA Corp., No. 13–cv–0399, 2015 WL 1542365, at *18 (N.D. Ill. Apr. 1, 2015) (finding claim 

term indefinite because “multiple plausible meanings exist without guidance among them”) 

(collecting cases); Light Transformation Techs. LLC v. Lighting Sci. Grp. Corp., No. 2:12–cv–

826–MHS–RSP, 2014 WL 3402125, at *9 (E.D. Tex. July 11, 2014) (finding 

claims indefinite because disputed term was subject to multiple plausible constructions).

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

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

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

selecting two or more different types of parameters 

of a network / measuring and/or calculating at two 

or more times values of the two or more different 

types of network parameters

Plain and ordinary meaning

The parties dispute whether these limitations can be met when the same network 

parameter is selected (or measured and/or calculated) twice. Microsoft’s construction is 

consistent with the plain meaning of “two or more parameters” and accounts for the fact that 

“parameters” is recited in the plural form in both of these phrases. In contrast, in order to 

overcome the deficiencies in its Complaint, WSOU has adopted the untenable position that these 

limitations are satisfied when the same parameter (such as “Bandwidth”) is selected (or 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 27 of 49
21

measured and/or calculated) twice.4 In an attempt to preserve its implausible infringement 

theory, WSOU urges the Court not to construe these terms. Dkt. 49 at 15.

A plain reading of the claim language supports Microsoft’s construction. Claim 1 

requires determining the “value of a service indicator as a function of . . . parameter values.” 

’160 Patent, Claim 1. Per the claim, a “service indicator” value must be determined from more 

than one “parameter value” because the first two steps require “selecting two or more 

parameters” and measuring or calculating the “values of the [two or more selected] network 

parameters.” Id. (emphasis added). The specification provides further support for Microsoft’s 

construction, as it provides a list of several different types of network parameters from which the 

“two or more parameters” recited in claim 1 may be selected. See id., 2:67–3:3 (“These 

parameters include in particular: packet losses; time-delays between packets; jitter or stability; 

bandwidth; bandwidth stability; and the directionality of the communication.”). The 

specification further explains that “[a] plurality of network parameters can be selected to define 

the level of service as a function of the service or group of services concerned.” Id., 3:21–23. 

Further confirming that claim 1 requires at least two different types of parameters, the 

specification explains that “[t]he parameters can be weighted as a function of their importance 

for a given level of service. Weighting gives dominant importance to the most important 

parameters in determining a given network service trend.” Id., 3:23–29. This weighting process 

would be meaningless if the claimed method could be satisfied using only one type of parameter, 

as that parameter could not be “more important” than itself.

 4 Microsoft has filed a motion to dismiss WSOU’s Complaint based in part on this pleading 

deficiency, as WSOU has not plausibly alleged that Microsoft infringes these limitations. That 

motion is fully briefed. See Dkts. 20, 27, 28.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 28 of 49
22

Additionally, measuring the same parameter twice cannot satisfy the “two or more 

parameters” limitation because the patent separately recites the requirements of “two or more” 

parameters and “measuring and/or calculating” those parameters “at two or more times.” See id., 

Claim 1; see also FIG. 1 (separately depicting steps of “measur[ing] parameters at one time” and 

“measure[ing] parameters at another time”); FIG. 3 (notating separate parameters “P0,” “P1,” 

and “P2” to be measured “at several times”).

WSOU attempts to justify its objection to this plainly-described requirement by arguing 

that the intrinsic evidence does not “unambiguously disclaim[] selecting two or more parameters 

of similar type.” Dkt. 49 at 16. In support of this statement, WSOU points to the specification’s 

list of example parameters and description that “parameters of this kind enable the reliability of 

the network service to be determined, for example.” Dkt. 49 at 16 (citing ’160 patent, 2:64–3:8) 

(emphasis WSOU’s). But the emphasized phrase “of this kind” in the excerpted passage of the 

specification refers to multiple types of parameters (packet losses; time-delays; jitter or stability, 

bandwidth; bandwidth stability; and the directionality of the communication). See ’160 patent, 

2:67–3:3. It does not suggest that selecting one of these types of parameters twice could satisfy 

the limitations of claim 1.

Finally, WSOU’s position should be rejected because it would render the ’160 patent 

invalid, as the patent’s Background section explicitly states that the prior art “BMC Software’s 

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

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

Id., 1:10–13. The ’160 patent’s reliance on multiple types of parameters is a core aspect of its 

purported novelty over the prior art that WSOU cannot read out of the claims in order to 

improperly broaden its infringement allegations. This provides an independent basis to adopt 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 29 of 49
23

Microsoft’s proposed construction. See, e.g., Tate Access Floors, Inc. v. Interface Architectural 

Res., Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002) (“[C]laim language should generally be 

construed to preserve validity, if possible.”) (citation omitted).

2. “network parameter”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

measurable service level specifications from which 

service indicator values can be determined

Plain and ordinary meaning

The parties agree that the words “network” and “parameter” are terms of art. See Dkt. 49 

at 16. The key dispute to resolve with regard to the term “network parameter” is whether a 

single metric can satisfy both the “network parameter” and “service indicator” limitations recited 

in the ’160 patent. The fundamental principles of claim construction demand that this cannot be 

the case, as “[i]t is well understood that ‘different claim terms are presumed to have different 

meanings.’” SpaceTime3D, Inc. v. Samsung Elecs. Co., Ltd., No. 2:19-cv-00372-JRG, 2020 WL 

7183538, at *8 (E.D. Tex. Dec. 7, 2020) (quoting Helmsderfer v. Bobrick Washroom Equip., 

Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)).5

Microsoft proposes a construction of “network parameter” that is directly supported by 

the specification and claim language. The ’160 patent expressly states that “network parameters”

are “also known as service level specifications.” Id., 2:64–65. WSOU suggests, without 

support, that this description “is not offered in the specification as a definition, but rather as an 

alternative description.” Dkt. 49 at 17. But that is a distinction without a difference, and in any 

event, WSOU’s argument ignores the context of the ’160 patent. Microsoft’s definition is 

 5 Microsoft can agree to construe “network parameter” in accordance with its plain and ordinary 

meaning as long as any such construction incorporates the requirement that a network parameter 

(e.g., packet losses; time-delays; jitter or stability, bandwidth; bandwidth stability; and the 

directionality of the communication) cannot also satisfy the “service indicator” element 

separately recited in the claims of the ’160 patent. 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 30 of 49
24

consistent with the intrinsic evidence, which establishes that the particular elements of the 

claimed invention are determined by SLAs. See, e.g., id., at 1:20–22 (“Background” section 

explaining that “[i]n service level agreements (SLAs), between a network service provider and a 

user, the service provider undertakes to provide a network service with a given failure level); 

4:53–57 (“It is therefore possible to establish a time remaining up to a threshold crossing, a level 

of service after a predetermined time period, a service provision capacity before failure, or a 

mathematical expectation of loss as a function of the applicable service agreement.”).

There can also be no dispute that “network parameters” are measurable, as the ’160 

patent repeatedly describes the measurement of network parameter values. See, e.g., id., 

Abstract (“The invention therefore selects two or more parameters of a network representative of 

a network service and variable in time, measures at two or more times values of the network 

parameters, determines at two or more times the value of a service indicator as a function of said 

measured parameter values, and determines a trend of the indicator as a function of said 

determined indicator values.”); 2:54–56 (“In a fourth step, a service trend at the later time is 

determined from the measured parameters. Various types of parameter measured as a function 

of different network services are described below.); 4:14–18 (“The measured parameters are 

represented along three axes defining a three-dimensional space, for example an axis x 

representing time, an axis y for the parameter values, and an axis z representing the parameters 

P0, P1 and P2.”); 5:43–46 (“This method can include a preliminary step of measuring network 

parameters and associating the parameters with network service trends.”) (emphases added). 

Contrary to WSOU’s assertion, the claims’ recitation of “measured and/or calculated parameter 

values” does not “refute[]” Microsoft’s proposed “measurable” requirement. See Dkt. 49 at 16-

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 31 of 49
25

17. That parameter values can be calculated (as opposed to measured) does not negate the 

specification’s requirement that network parameters are measurable.

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

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

function of the trend of the indicator”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

computing [at two or more times the value of a 

service indicator / a trend of the indicator / a time of 

the service indicator crossing a defined threshold] 

using the [measured and/or calculated parameter 

values / determined indicator values / trend of the 

indicator]

Plain and ordinary meaning

The parties agree that “determining” is not interchangeable with either the “measuring” 

or “calculating” terms, which are separately recited. See Dkt. 49 at 19. Microsoft’s construction 

captures the ’160 patent’s requirement that the “determining” step involves more than mere 

“measurement” or “calculation[,]” which WSOU has implicitly disputed through its Preliminary 

Infringement Contentions (“PIC-454”). 

As WSOU notes, Claim 1 of the ’160 patent recites “measuring and/or calculating” in 

addition to the “determining” limitations at issue. Dkt. 49 at 19. Moreover, the claim requires 

determining certain information “as a function” of other information—namely, as a function of 

“measured and/or calculated parameter values[,]” “determined indicator values[,]” and “the trend 

of the indicator.” ’160 patent, Claim 1. Only Microsoft’s proposed construction gives meaning 

to the phrase “as a function of” by clarifying that the “determining step” is fulfilled by a 

computation6 or analysis using the separately recited measurement and/or calculation; it cannot 

be the same thing as that measurement or calculation.

 6 WSOU’s focus on the specific word “computing” is misplaced. An appropriate construction 

need not include the specific word “computing,” but must incorporate the requirement of an 

additional step beyond “measuring” or “calculating” to arrive at “determining.”

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 32 of 49
26

However, WSOU asserts in its Preliminary Infringement Contentions that, for example, 

step (e) of claim 1 (“determining a trend of the indicator as a function of said determined 

indicator values” is satisfied by the display of a chart showing measured bandwidth or latency 

changes over time. See PIC-454 at 12-13. But even assuming arguendo that such a chart shows 

a “trend,” the specification makes clear that a display of measured values cannot satisfy the 

requirement of “determining” a trend “as a function” of those measured values. 

Specifically, the specification confirms Microsoft’s understanding of these phrases by 

repeatedly describing “determining” as involving some mathematical function or other operation 

using the separately recited measurements and/or calculations. See, e.g., ’160 patent, 1:52–54 

(“In a further implementation the method further comprises a step of determining an indicator 

plane by linear regression of the measured and/or calculated network parameters.”); 1:55–57 

(“In a still further implementation determining the service trend includes comparing parameter 

values with predetermined thresholds.”); 3:25–27 (“Weighting gives dominant importance to the 

most sensitive parameters in determining a given network service trend.”); 5:6–9 (“For 

parameters represented with values from 0 to N along the z axis, a time remaining can then be 

determined from the portion of the intersection curve whose values of z are from 0 to N.”); 5:36–

42 (“A second implementation of the method of determining the service level trend, shown in 

FIG. 3, analyses specific instances of a plurality of network parameters to determine a trend. In 

this implementation, various network parameters are compared with predetermined threshold 

logic levels. Boolean criteria can be applied to the parameter values for this purpose.”).

4. “service indicator”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

an indicator of the quality of a network service 

distinct from the network parameters

Plain and ordinary meaning

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 33 of 49
27

The “service indicator” term implicates the same dispute discussed above with regard to 

“network parameter.” These two terms must be construed to have different meanings, and 

cannot both be satisfied by a single “metric.”7

WSOU attempts to confuse this straightforward point by arguing that a requirement that “an 

indicator” must be “distinct from the network parameters” “would risk excluding, for example, a 

preferred embodiment where the service indicator is a ‘plane’ defined by a collection of parameters.” 

Dkt. 49 at 20 (citing ’160 patent, 4:11-33). But Microsoft’s construction would not exclude such an 

embodiment. A service indicator that is “defined by a collection of parameters” is still distinct from 

those network parameters, just as a geometric plane is distinct from a collection of points that might 

be used to describe or define that plane. Particularly because “service indicator” and “network 

parameters” are recited separately in the claims, WSOU cannot credibly dispute that the two terms 

represent distinct elements of the invention. See, e.g., Helmsderfer, 527 F.3d at 1382; 

SpaceTime3D, 2020 WL 7183538, at *8.

The intrinsic evidence further supports Microsoft’s construction by demonstrating that a 

“service indicator” indicates the quality of a network service. The ’160 patent generally relates 

to monitoring a network in order to forecast when a service might fail or when the quality of the 

service might fall below a particular level. For example, the Background section of the patent 

discusses prior art that “discloses a service quality indicator monitoring technique for use in 

telecommunications networks.” ’160 patent, 1:14–16. The purported invention of the ’160 

patent is to determine when certain service violations or service failures (i.e., drop-offs in quality 

 7 Microsoft can agree to construe “service indicator” in accordance with its plain and ordinary 

meaning as long as any such construction incorporates the requirement that a service indicator 

cannot also satisfy the “network parameter” element separately recited in the claims of the ’160 

patent. 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 34 of 49
28

or “level” of the service) will occur. See, e.g., id., Abstract (“The method is used in particular to 

determine a time remaining before a service violation or the crossing of a threshold.”); 1:24–25 

(“At present there are no tools for forecasting accurately the failure of a network service.”); 

4:53–56 (“It is therefore possible to establish a time remaining up to a threshold crossing, a level 

of service after a predetermined time period, a service provision capacity before failure”); 4:60–

63 (“A trend having a high slope may be synonymous with imminent failure of the network 

service, and this kind of signal can enable appropriate preventive measures to be implemented”); 

5:54–55 (“Thus there can be a step of forecasting the network service violation time.”). 

The specification also repeatedly refers to a “level of service” in discussing the claimed 

“service indicator,” further indicating that the service indicators specifically indicate the level of 

quality of the provided network service. See, e.g., id., 2:57–58 (“A level of service indicator can 

be defined on the basis of measured and/or calculated data.”); 2:64–67 (“In this way a number of 

network parameters, also known as service level specifications (SLSs), can be identified for 

preferential observation in order to determine the level of service.”); 3:20–22 (“A plurality of 

network parameters can be selected to define the level of service as a function of the service or 

group of services concerned.”); 4:13–14 (“In a first implementation, shown in FIG. 2, a level of 

service indicator is defined by a geometrical shape”). These characterizations are consistent with 

how the patentee described service indicators to the Patent Office during prosecution. See Ex. 4, 

at 4 (“The trend indicators of the claimed invention are used, for example, to define service 

evolution forecasts, making it possible to establish functions such as time remaining for a 

threshold crossing and a level of service after a predetermined time.”) (emphasis added); see also 

Ex. 5, at 6 (“A service indicator (voice quality) is estimated at regular intervals based on the 

determined parameters.”). The intrinsic evidence thus overwhelmingly demonstrates that the 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 35 of 49
29

“service indicator” is used to indicate the “quality” of a network service, as Microsoft’ 

construction requires.

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

service indicator crossing a defined threshold”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

determining as a function of the trend of the service 

indicator the time remaining for the indicator 

crossing a defined threshold

Plain and ordinary meaning

The parties’ dispute centers on whether claim 1 of the ’160 patent requires determining 

the time remaining for the indicator crossing a defined threshold. As the specification explains, 

and the patentee’s statements during prosecution confirm, this requirement is a defining feature 

of the claimed invention of the ’160 patent. Microsoft’s construction thus requires “a time of the 

service indicator crossing a defined threshold” to refer to the time remaining until the indicator 

crosses the threshold, consistent with the specification and the file history.

The ’160 patent’s disclosure, beginning with the Abstract, makes clear that the ability to 

forecast the time remaining before a service violation occurs is central to the invention. See ’160 

patent, Abstract (“The method is used in particular to determine a time remaining before a 

service violation or the crossing of a threshold.”). The specification proceeds to confirm that this 

is not merely an optional feature that the patent may cover, but a function that is inherent in the 

claimed method. See, e.g., id., 2:15–21 (“Thus the invention indicates a trend of the measured 

indicator, unlike the above-mentioned patent application WO 01/80492, for example. The trend 

can show whether the indicator is likely to cross a defined threshold or even determine when it 

will cross the threshold.”); 4:52–54 (“These trend indicators are used to define service evolution 

forecasts, for example. It is therefore possible to establish a time remaining up to a threshold 

crossing”); 6:9–15 (“The signals 12 can indicate different crossings, for example a warning 

signal can therefore be provided, such as: a trend threshold crossing warning signal; a time 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 36 of 49
30

remaining before a service violation threshold crossing warning signal; or any other appropriate 

warning signal to warn the network operator of how the service is changing.”). Consistent with 

the specification’s focus on the invention’s specific forecasting capabilities, Microsoft’s 

construction requires the disputed claim language to refer to determining a time remaining for 

the indicator to cross a defined threshold.

The prosecution history further supports Microsoft’s construction. The limitation 

“determining as a function of the trend of the indicator a time of the service indicator crossing a 

defined threshold” was originally recited in a dependent claim as a “subsequent step” to 

independent claim 1. See U.S. Patent App. No. 10/307,461, filed Dec. 2, 2002, 12:15-18. The 

Examiner initially rejected this claim (among other claims) as anticipated by the prior art 

reference WO 01/80492 (“Clark”). Following the rejections based on Clark, the patentee 

cancelled the dependent claim reciting the “time of the service indicator crossing a defined 

threshold” limitation and added the limitation as step within independent claim 1. See Ex. 5 at 6. 

Thereafter, the Examiner again determined that this limitation was anticipated by Clark, 

explaining: 

Contrary to Applicant’s interpretation of Clark reference, Clark 

clearly teaches: The value of R (reads on trend) is compared to a 

threshold value and an indication transferred to SNMP Agent (307, 

fig. 3) should the value of R be below said threshold value, 

according to Fig. 7 steps 731 and 734 (page 13 lines 5-6). This 

clearly reads on applicant’s claim limitation such as: determining 

as a function of the trend of the indicator a time service indicator 

crossing a defined threshold.”).

Ex. 6 at 5.

In order to overcome this anticipation rejection, the patentee represented to the Examiner 

that unlike Clark, the claimed method of the ’160 patent allowed for the forecasting of “time 

remaining for a threshold crossing and a level of service after a predetermined time.” Ex. 4, at 3-

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 37 of 49
31

4 (emphasis added). The patentee further explained: “In other words, Clark does not disclose 

determining a time that a service indicator will cross a defined threshold as a function of the 

indicator, as required by the claim.” Id. at 4 (emphasis added). In response to this explanation 

of the distinction between the claimed invention and Clark, the Examiner allowed the ’160 patent 

to issue.

WSOU attempts to downplay the significance of the explanation that the patentee 

provided to the Examiner in order to overcome Clark, which ultimately allowed for the ’160 

patent’s issuance, arguing that the patentee’s remarks do not constitute “a clear and unambiguous 

disavowal of claim scope.” Dkt. 49 at 21–22 (citations omitted). WSOU is wrong. Consistent 

with the patent’s fundamental focus on prediction, the patentee used the future tense and 

mandatory language to explicitly confirm that determining when the threshold crossing will

occur (i.e., “time remaining”) is required by the claim, rather than “a non-limiting and 

exemplary advantage” as WSOU argues. Dkt. 49 at 22. 

Moreover, even if the patentee’s remarks were not clear and unambiguous, “[a]ny 

explanation, elaboration, or qualification presented by the inventor during patent examination is 

relevant, for the role of claim construction is to ‘capture the scope of the actual invention’ that is 

disclosed, described, and patented.” Fenner Invs., Inc. v. Cellco P’ship, 778 F.3d 1320, 1323 

(Fed. Cir. 2015). Furthermore, “the interested public has the right to rely on the inventor’s 

statements made during prosecution, without attempting to decipher whether the examiner relied 

on them, or how much weight they were given.” Id. at 1325. Accordingly, WSOU’s attempt to 

run away from the statements the patentee made during prosecution are improper, especially 

where, as here, such statements are found throughout the disclosures of the patent specification.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 38 of 49
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6. “neural network determines rules of association between a service 

trend and service parameter values”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

The parties appear to agree that “rules of association” is not a term of art within the field 

of network monitoring that would reasonably inform a Skilled Artisan as to the scope of this 

claim limitation absent a meaningful disclosure explaining this phrase. Because the ’160 patent 

does not contain such a disclosure, this phrase is indefinite.

The phrase “rules of association” appears only once in the specification, and is recited 

exactly as it is in claim 7, with no description as to what such rules actually constitute. ’160 

patent, 1:64–67 (“In another implementation the method further comprises a training step in 

which the neural network determines rules of association between a service trend and service 

parameter values.”). Furthermore, the only other instance of the word “association” in the 

specification does not clarify the meaning of the disputed phrase. Specifically, the specification 

includes a table that “sets out one example of association and weighting between a network 

service and service parameters.” Id., 3:27–29 (emphasis added). Again, neither this description 

nor the reference table (see id., 3:35–45) sheds light on what, if any, “rule” of association is 

determined.

The only language of the patent that WSOU identifies as relevant to the recited “rules of 

association” relate to the “training step” separately recited in claim 7. See Dkt. 49 at 23 (citing 

’160 patent, 6:16–36). But this passage does not mention any “association,” and the “rules” 

discussed are “[e]rror gradient backpropagation rules[.]” ’160 patent, 6:23–24. The passage does 

not explain any association between elements, and WSOU offers no explanation as to why a Skilled 

Artisan would understand “error gradient backpropagation rules” or any other undescribed “training 

rules” to constitute “rules of association.”

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 39 of 49
33

WSOU also argues that Microsoft “equivocates” by addressing the specious anticipated 

contention that “weighting” somehow constitutes a “rule of association.” But Microsoft’s 

argument is not an equivocation; the ’160 patent describes weighting in reference to “one 

example” of association, and contains no explanation as to how weighting constitutes a “rule,” or 

what else could conceivably constitute a “rule of association.” Unless WSOU contends that 

“weighting” is the only “rule of association” contemplated by the patent, then the scope of this 

limitation remains indeterminate and therefore indefinite. See Nautilus, 572 U.S. at 901; IPXL, 

430 F.3d at 1383–84.

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

the network service trend determined”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

The phrases “mathematical expectation” and “financial loss” represent vague concepts 

that are not given any meaning by the ’160 patent. “Financial loss” could conceivably refer to 

any number of different scenarios, and the method of calculating different types of financial loss 

could vary dramatically. See, e.g., Harvard Sav. Bank v. Sec. Nat'l Ins. Co., No. 15 CV 11674, 

2017 WL 2560900, at *4 (N.D. Ill. June 12, 2017) (referring to “twenty-four different types of 

financial losses that are insured” in a disputed bond). Moreover, “mathematical expectation” has 

no meaning in the art and, without additional guidance from the specification, appears to be 

duplicative of the “calculating” limitation.

Because WSOU cannot identify anything in the patent’s disclosure informing a Skilled 

Artisan as to the meaning of this phrase, WSOU resorts to attacking the form of Microsoft’s 

challenge, arguing that the deficiencies Microsoft identifies go toward the enablement 

requirement of § 112, rather than indefiniteness. While Microsoft agrees that this limitation 

suffers from multiple deficiencies under § 112, WSOU’s argument is not responsive to the fact 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 40 of 49
34

that the ’160 patent fails to inform a Skilled Artisan as to the scope of this limitation, and is 

therefore indefinite in addition to the other reasons for its invalidity. See Nautilus, 572 U.S. at 

901.

WSOU’s suggestion that “actual claim language” supplies the requisite definiteness 

misses the mark. For example, WSOU notes that “calculating” is recited “in terms of what must 

be calculated (‘a mathematical expectation of financial loss’)[,]” Dkt. 49 at 26, without 

addressing the fact that the phrases “mathematical expectation” and “financial loss” are the 

source of the limitation’s indefiniteness. WSOU further states that “a person of ordinary skill in 

the art would know to look to the specification for examples of how the claimed ‘calculating’ 

may be performed.” Id. But the Skilled Artisan would be unable to do so in this case precisely 

because the specification does not provide examples of how a “mathematical expectation of 

financial loss” is to be calculated. 

Finally, in arguing that the phrase “mathematical expectations” is not duplicative of 

“calculating,” WSOU offers a circular definition of that is not based on any part of the disclosure 

and does not confer meaning to this limitation. See id. (stating that “mathematical expectation” 

“refers to what is being calculated—i.e., ‘calculating a mathematical expectation of financial 

loss as a function of the network service trend determined’.”). Simply repeating the claim 

language does not provide reasonable certainty as to what the language means.

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

Claim 11, which recites the phrase “determining a capacity to provide a network service 

at a given time,” is indefinite because the ’160 patent offers competing meanings for the term 

“capacity” with no guidance as to how to choose between them in the context of the claim. First, 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 41 of 49
35

the specification describes “capacity” in reference to a network’s ability to support a service. See 

’160 patent, 5:26–29 (“Trend determination can also be used to determine the service provision 

capacity at a given date. If the level of service is forecast at a given level of a given time, a 

service provision capacity at that time can be determined.”). Immediately thereafter, however, 

the specification indicates that “capacity” may also refer to a service provider’s willingness to 

provide a service. See id., 5:29–32 (“A capacity to enter into service level agreements before 

reaching a saturation service level can therefore be defined.”). 

Where, as here, there are multiple potential constructions of a term and the intrinsic 

record does not provide a reasonable basis to decide between the constructions, the claim is 

indefinite. See Teva, 789 F.3d at 1341 (Fed. Cir. 2015); Media Rights Techs., Inc. v. Capital One 

Fin. Corp., 800 F.3d 1366, 1371 (Fed. Cir. 2015) (explaining that indefiniteness results when no 

informed and confident choice is available among the contending definitions.”); Light 

Transformation, 2014 WL 3402125, at *9.

WSOU’s appeal to the general proposition that “[b]readth is not indefiniteness” does not 

save the claim. See Dkt. 49 at 27 (citations omitted). “Breadth defined within the language of 

the patent is permitted. . . . Breadth stemming from ambiguity is not.” Int’l Test Sols., Inc. v. 

Mipox Int’l Corp., No. 16-cv-00791-RS, 2017 WL 1367975, at *5 (N.D. Cal. Apr. 10, 2017).

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

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

refers to a tree network Plain and ordinary meaning

The parties dispute whether the recited “network that branches, downstream of the 

collection point” necessarily refers to a tree network, as opposed so some other unidentified 

network structure. Both the specification and WSOU’s own extrinsic evidence confirm that the 

recited network must be a tree network, consistent with Microsoft’s construction.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 42 of 49
36

The specification of the ’902 patent explicitly states, without reference to any particular 

embodiment, that its “method can be applied to any packetized communication network that may 

be represented by a tree graph.” ’902 patent, 2:36–37 (emphasis added). The specification goes 

on to explain that “wireless GPRS networks such as the network of FIG. 1 are one example 

where our method is especially useful. However, applications of our method are not limited to 

GPRS networks or to wireless networks.” Id., 2:37–41 (emphasis added). The patentee was 

careful to expressly set forth which network characteristics (GPRS and wireless) are not 

necessary elements of the invention so as to preserve other embodiments, but included no such 

language with regard to the requirement that the method be applied on a tree network. 

Microsoft’s construction is further supported by the specification’s description of the 

various embodiments of the claimed method, all of which are applied on a tree network. See, 

e.g., 2:63–65 (“The monitoring device needs to know the topology of the tree network

downstream of its location in order to be able to infer packet loss rates according to the method 

to be described.”) (emphasis added); 3:4–8 (“Turning back to FIG. 3, it should be noted that the 

number of levels in the tree graph is arbitrary and a five-level graph has been selected solely for 

purposes of illustration. In some practical applications, our method will be applied to networks 

whose tree graph has fewer than five levels.”); 4:19–24 (“There is a criterion that an intermediate 

node must meet in order for it to be eligible as an inner node. To be eligible, the selected 

intermediate node must be a root node relative to at least two end nodes via distinct branches that 

intersect at the selected node. For example, node n2 of FIG. 3 is a branch point of the tree 

graph.”); 4:57–60 (“We will now describe a procedure, referred to here as Algorithm 2, for 

estimating the packet loss rate on a path P. from a selected intermediate node n, to a selected 

intermediate node n, lying below n, in the tree graph.”). 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 43 of 49
37

The extrinsic evidence that WSOU offers in opposition to Microsoft’s construction 

actually supports Microsoft’s position. See Dkt. 49 at 28 (quoting Blanton, A., and Haynes, S., 

Microsoft Computer Dictionary Fifth Edition, Microsoft Press, 2002, p. 22. (Dkt. 49, Ex. A).). The 

first definition of “branch” in the technical dictionary on which WSOU relies expressly limits the 

term “branch” to a “tree structure.” See Dkt. 49, Ex. A (defining “branch” as “[a] node intermediate 

between the root and the leaves in some types of logical tree structure, such as the directory tree in 

Windows or a tape distribution organization.”) (emphasis added)). The second definition, on which 

WSOU seeks to rely, is inapposite here because it simply describes the connection “between two

items” in a network, rather than the branching of the network itself, as contemplated by the disputed 

claim. See id.

Finally, WSOU’s criticism that Microsoft has proposed a “non-definition” by defining this 

term based on the type of network to which it “refers” is legally baseless. See Dkt. 49 at 28 29. 

Courts, including this Court, routinely adopt claim constructions in this form. See, e.g., NCS 

Multistage Inc. v. Nine Energy Serv., 6:20-CV-00277-ADA, Dkt. 56 (W.D. Tex. Jan. 14, 2021) 

(adopting construction of plain and ordinary meaning “where the plain and ordinary meaning can 

refer to both an inner surface and a measured diameter.”); Morvil Tech., LLC v. Medtronic Ablation 

Frontiers, LLC, No. 10–CV–2088 BEN (BGS), 2012 WL 3277272, at *9 (S.D. Cal. Aug. 10, 2012); 

Prism Techs. LLC v. Verisign, Inc., 512 F. Supp. 2d 174, 184 (D. Del. 2007) (adopting constructions 

setting forth what a disputed term “refers to”).

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

Microsoft’s Proposed Construction WSOU’s Proposed Construction

calculating an approximate packet loss rate / a 

calculation of approximate packet loss rate

Plain and ordinary meaning

Microsoft’s proposed construction for these terms captures the well-understood meaning 

of “estimate” as well as the ’902 patent’s requirement that the process of “estimating” involves 

more than mere measurement. WSOU proposes a construction of “plain and ordinary meaning,” 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 44 of 49
38

but proceeds to argue that “estimate” in the context of the ’902 patent means something other 

than the ordinary meaning of an “approximation.” See Dkt. 49 at 29. 

The specification’s only examples of “estimating” packet loss involve the application of 

algorithms (including a “computation” or “calculation” of some kind) to arrive at the claimed 

“estimate.” See, e.g., ’902 patent, 4:9–13 (“We will now describe a procedure, referred to herein 

as Algorithm 1, for estimating the packet loss rate f0i from a root node n0 to a selected 

intermediate node nj. Thus, for example, Algorithm 1 might be applied to estimate the loss rate 

from the root node to node n2 of FIG. 3”); 4:49–56 (“The next step 140 is to compute an 

estimate of the packet loss rate f0i from the root node n0 to the selected inner node ni using the 

information obtained in step 110. Formulas for making the computation are provided below. In 

the example of FIG. 3, the loss rate f02 is estimated from the end-to-end loss rates Fp, the pair 

fractions Wlm, and F4,6;δ.”); 4:57–60 (“We will now describe a procedure, referred to here as 

Algorithm 2, for estimating the packet loss rate on a path Pjk from a selected intermediate node 

nj to a selected intermediate node nk lying below nj in the tree graph.”).

WSOU’s insistence that an “estimate” of packet loss does not refer to an “approximation” 

is inconsistent with its position that this term be afforded its plain and ordinary meaning. As 

many courts have found, the term “estimate” and variations thereof are ordinarily understood to 

refer to an approximation, as Microsoft’s construction recognizes. See, e.g., Personalized User 

Model LLP v. Google Inc., No. 09–525–LPS, 2012 WL 295048, at *17 (D. Del. Jan. 25, 2012) 

(construing “estimating” to mean “approximating or roughly calculating”); Applied Signal Tech., 

Inc. v. Emerging Markets Comm’cns, Inc., No. C 09–2180 SBA, 2011 WL 500786 (N.D. Cal. 

Feb. 9, 2011) (construing “estimating channel characteristics” to mean “determining approximate 

values of the four channel characteristics . . .”). If the patent drafter wanted to claim an exact 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 45 of 49
39

measurement of packet loss rate, the patent drafter could have recited, for example, 

“determining” the packet loss rate, a term that is used elsewhere in the specification but not 

found in the claims. See, e.g., ’902 patent, 3:45-46 (“There are currently available monitoring 

devices that can determine the packet loss rate”) (emphasis added). 

3. “packet loss rate”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

the fraction of packets that are lost over a suitable 

time-averaging interval

the fraction of packets that are lost over a suitable 

time interval

The parties offer nearly identical constructions for “packet loss rate,” but WSOU’s 

proposal reveals a fundamental problem with the ’902 patent’s description of this term. As 

WSOU recognizes, the ’902 patent expressly describes “packet loss rate” as “the fraction of 

packets that are lost over a suitable time-averaging interval[.]” ’902 patent, 3:46–47. However, 

WSOU recognizes that the term “time-averaging” is ambiguous, and therefore proposes simply 

dropping “averaging” from the specification’s definition to avoid having “the jury determine 

how [time-averaging] . . . might affect claim scope.” Dkt. 49 at 30. WSOU provides no other 

basis for departing from the language of the specification. This position is untenable, as WSOU 

would have the jury determine how the term “suitable,” which is also not recited in the claims, 

would affect claim scope.8 At best, WSOU has not provided a legitimate basis to depart from 

the specification’s explicit language defining “packet loss rate.” Of course, should the Court 

determine that the ’902 patent fails to give meaning to the term “packet loss rate,” or that the 

express definition for this term given by the patent is ambiguous (as WSOU contends), then it 

 8 Moreover, WSOU’s proposal of “plain and ordinary meaning” for the many disputed terms that 

are the subject of this briefing suggests that WSOU intends for the jury to make many 

determinations of claim scope that are not immediately clear from the text of the asserted patents.

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 46 of 49
40

should hold that this term is indefinite. See Nautilus, 572 U.S. at 901; IPXL, 430 F.3d at 1383–

84.

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

GPRS core network extending from the collection point to a plurality of 

[base / mobile] stations”

Microsoft’s Proposed Construction WSOU’s Proposed Construction

Indefinite Plain and ordinary meaning

Claims 4 and 5 recite “base stations” and “mobile stations,” respectively, that are a 

“portion of a GPRS core network.” But this language requires an impossibility because base 

stations and mobile stations are part of the radio access network, not a GPRS core network, as 

one of ordinary skill would understand. The intrinsic evidence confirms that the core network is 

separate from base stations and mobile stations. See, e.g., Ex. 3, US 2010/0165862, FIG. 1 

(showing the core network (“CN”) as entirely separate from the base stations and mobile 

stations).9

 Nothing in the specification suggests that the patent contemplated a special definition 

– contrary to the use of this term in the art – of a core network that would include base stations or 

mobile stations. Claims that require an impossibility, such as claims 4 and 5 of the ’902 patent, 

are indefinite. See, e.g., Invensys Sys., Inc. v. Emerson Elec. Co., No. 6:12–cv–799, 2014 WL 

3976371, at *5 (E.D. Tex. Aug. 6, 2014) (holding claims indefinite because they required 

“performing a calculation that is mathematically impossible”).

 9 This reference is cited in the ’902 patent’s file history and is therefore intrinsic evidence. See 

V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (“This court has 

established that ‘prior art cited in a patent or cited in the prosecution history of the patent 

constitutes intrinsic evidence.”) (citations omitted); Greenthread, LLC v. Samsung Elecs. Co., 

Ltd., 2020 WL 1911200, at *3 (E.D. Tex. Apr. 20, 2020) (“The intrinsic evidence includes the 

claims themselves, the specification, and the prosecution history.”) (citations omitted). 

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 47 of 49
41

DATED: January 29, 2021 By: /s/ Irene Yang

Barry K. Shelton 

Texas State Bar No. 24055029

SHELTON COBURN LLP

311 RR 620 S, Suite 205

Austin, TX 78734

Telephone: (512) 263-2165

Fax: (512) 263-2166

bshelton@sheltoncoburn.com

Of Counsel

Michael J. Bettinger

Irene Yang

SIDLEY AUSTIN LLP

555 California St., Suite 2000

San Francisco, CA 94104

Telephone: (415) 772-1200

Fax: (415) 772-7400

mbettinger@sidley.com 

irene.yang@sidley.com 

Richard A. Cederoth

John W. McBride

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Telephone: (312) 853-7000

Fax: (312) 853-7036

rcederoth@sidley.com 

jwmcbride@sidley.com 

Attorneys for Defendant Microsoft Corporation

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 48 of 49
42

CERTIFICATE OF SERVICE

I certify that on January 29, 2021, I electronically filed the foregoing with the Clerk of 

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

record as identified below.

/s/ Irene Yang

Irene Yang

Case 6:20-cv-00465-ADA Document 48 Filed 01/29/21 Page 49 of 49